4.1.3 Whole scope of the claim

In case T 1465/23, the opposed patent addressed the problem of securing wireless communications for hearing devices. The board was not satisfied that the technical effects mentioned by the respondent (proprietor) were credibly achieved by the claimed features over the whole scope of claim 1 as granted.

Given that the alleged technical effect was not credibly achieved and the board could not identify an effect either, it was not possible for the board to formulate an objective technical problem that was directly and causally related to the claimed invention, in particular to the alleged distinguishing features (b) to (h). The board recalled the principles established in G 1/19, that the problem-solution approach may be "terminated" at this stage if the distinguishing features do not credibly achieve any technical effect over the whole scope claimed. The introduction of a distinguishing feature having no credible technical effect may then be considered to be no more than an arbitrary modification of the design of a known subject-matter which, being arbitrary, cannot involve an inventive step.

The respondent argued that the principles of G 1/19 were limited to computer-implemented simulations and that the board should instead have applied the "ab initio implausibility" standard addressed in the referral case underlying G 2/21. This line of argument was not persuasive. Recalling the purpose of Art. 112(1) EPC, the board observed that the Enlarged Board in G 1/19 itself designated its findings in point 82 of the Reasons as a "general principle" and this confirmed that a technical effect must be achieved over the whole scope of a claim to be considered as the basis for the objective technical problem. The respondent further argued that the expressions "substantially all embodiments" in G 1/19 and "substantially the whole scope of the claims" in T 814/20 allowed for a more lenient application of the test "credibly achieved over the whole scope claimed". However, the board noted the concept of "substantially over the whole scope claimed" appeared to provide merely a "narrow safe harbour" for well-defined inventions that may have isolated, peripheral flaws; it could not rescue a claim that was fundamentally deficient such that the distinguishing features were considered to have no effect at all.

The respondent also raised specific doubts in view of the board "terminating" the problem-solution approach after the conclusion that there was no credible technical effect over the whole scope claimed. Reflecting on the two paths provided for in the established practice to overcome such an objection: amendment of the claim to a narrower scope by the patentee, or reformulation of the objective technical problem to a less ambitious one by the board, the board noted that in some instances there may be no credible technical effect whatsoever that could be attributed to the distinguishing features. In such a case, the board considered these distinguishing features to be an arbitrary or non-functional modification of the prior art, which cannot support an inventive step. Consequently, this particular way of applying the problem-solution approach did not represent a "failure" or an "incomplete application" of the problem-solution approach, rather it was its logical endpoint: the demonstration that the claimed differences provided no technical effect at all, i.e. no contribution over the prior art, constituted the very proof of their "obviousness". Overall, the board stated that if there was no technical effect that was credibly derivable from the wording of a claim on the basis of its distinguishing features, it was usually unnecessary to – artificially – formulate an (unsolved) objective technical problem, such as finding an "alternative way to achieve a (non-existent) technical effect". In such cases, the distinguishing features simply constituted arbitrary or non-functional modifications of the available prior art which could not involve an inventive step within the meaning of Art. 56 EPC.

In case T 1065/23, the purpose of the invention was the provision of a pea protein composition comprising pea proteins having a low solubility. Such protein extracts had superior properties when used in processes for manufacturing bakery products and beverages.

Opponent 2 argued that as solubility was a relative property, it should not be taken into account for selecting the closest prior art. In the board’s view, this argument was not convincing. From the patent and the documents used for formulating the inventive-step attacks, it was evident that before the relevant date, the skilled person distinguished pea proteins having a "high" versus a "low" solubility. Thus, even in the absence of precise thresholds, the skilled person distinguished these protein forms. The board found that D2, which aimed to obtain proteins having a high solubility, did not represent the closest prior art. D12 could be considered the closest prior art..

Relying on the submission in opponent 1's statement of grounds of appeal, opponent 2 argued that experimental report D30 provided evidence that the alleged effects could not be achieved across the entire scope claimed. The desired nitrogen solubility index of less than 15% was thus not achieved across the entire scope claimed. The board stated, however, that opponent 1's new allegation of facts based on D30 was not only late filed but also raised new complex issues which should have been addressed during the opposition proceedings (not admitted – Art. 12(4) and (6) RPBA).

Opponent 2 considered that the underlying technical problem was merely the provision of an alternative method for extracting pea proteins and an alternative pea protein extract. The board did not agree. Starting from D12 and taking into account the effects shown in the patent, the underlying technical problem was the provision of a pea protein extract and a method for its manufacture, where the extract had a combination of a lower nitrogen solubility index, gel strength and viscosity, resulting in improvements in processes (for bakery products and beverages).

As to obviousness, opponent 2 also argued that the selection of the cut-off values 4.0 and 5.8 defining the claimed pH range was arbitrary and could thus not involve an inventive step. The experimental report D15 showed that the preferred low nitrogen solubility index of less than 15% mentioned in claim 11 was obtained not only when the pH was inside, but also when it was outside the claimed pH range, e.g. at a pH of 6.2. For this reason alone, the claimed subject-matter was obvious over the teaching of D12. The board was not convinced by this argument; Table 2 of D15 showed that all protein extracts heated at a pH of 6.2, i.e. above the claimed range, had a higher nitrogen solubility index than those heated at a pH within the claimed range. The results showed a clear pattern indicating the advantage of working within rather than outside the claimed pH range. For claim 1 to be inventive, it was not necessary to achieve a nitrogen solubility index lower than 15%. This was not an absolute threshold required for the method to be inventive. What was relevant was that the nitrogen solubility index obtained was lower than that obtained at pHs outside the range..

The fact that the cut-off values 4.0 and 5.8 of the claimed pH range might exclude lower or higher pH values suitable for achieving advantageous effects was not, as such, a reason to consider the selection of the claimed cut-off values as "arbitrary" and the claimed subject-matter as obvious in view of the prior art. It would be illogical if a claim defining a feature by reference to a range was considered to lack an inventive step for the sole reason that the invention could have been claimed more broadly, specifying a broader range. This would lead to the absurd situation that a claim defining a broad range involved an inventive step, whereas a claim defining a narrower range, falling within that broad range, did not (see also Catchword). What counts is that the available evidence makes it credible that subjecting a slurry containing precipitated pea protein at a pH within the claimed range to the claimed heating step induces effects which go beyond those obtainable by carrying out the method of the prior art.