Abstract on Article 056 EPC for the decision T0769/23 of 01.10.2025

In T 769/23 the board was not convinced that the alleged effect was credibly achieved over the whole scope of claim 1, based on fundamental ambiguities in the claim language which prevented the skilled reader from objectively deriving a technical function for feature (e). Consequently it found that feature (e) did not produce a credible technical effect over the whole scope of the claim. It therefore regarded its as a non-functional modification of the disclosure in document D2. The board noted that the absence of a credible technical effect over the whole range claimed had direct consequences for the application of the problem-solution approach in the assessment of inventive step. It acknowledged that the case law had developed two main approaches for assessing inventive step in such situations. The board identified the first approach, seen in decisions such as T 1179/16 and applied by the opposition division in the present case, as to formulate the objective technical problem as "providing an alternative". However, the board considered this approach problematic, at least in the present case, as it could lead to paradoxical outcomes. The "teaching away" exception mentioned in Reasons 3.4.4 of T 1179/16, presupposed a technical, i.e. functional, reason for avoiding a feature. Yet, this created a logical inconsistency if the feature itself had been determined to genuinely have no technical effect. In the board's view, the "teaching away" concept, when assessing inventive step under Art. 56 EPC, must be based on technical reasons, but a feature that is truly non-functional could not be the subject of a technical "teaching away". The board therefore held that a distinction had to be made between "functional alternatives" and "non-functional modifications". The formulation of the objective technical problem as "providing an alternative" was only appropriate for the former. For the latter, it held a different approach was warranted. The board found that where distinguishing features constituted non-functional modifications, the problem-solution approach could be concluded without the formulation of an (artificial) objective technical problem (see also the board’s earlier decision T 1465/23). Accordingly, it held that an arbitrary and non-functional modification of the prior art could not support an inventive step. Applying this latter approach to the present case, the board concluded that feature (e) was a non-functional modification of the system of D2. Consequently, it could not contribute to an inventive step.