4.2.1 No pointer to the solution

According to the established case law, the technical problem addressed by an invention has to be formulated in such a way that it does not contain pointers to the solution or partially anticipate the solution, since including part of a solution offered by an invention in the statement of the problem necessarily results in an ex post facto view being taken of inventive step when the state of the art was assessed in terms of that problem (see e.g. T 229/85, OJ 1987, 237; T 99/85, OJ 1987, 413; T 289/91, OJ 1994, 649; T 986/96; T 799/02; T 2461/11; T 1252/14; T 1230/15; T 2690/16, T 686/18, T 3016/18).

In T 800/91 the board emphasised that the formulated problem should be one which the skilled person knowing only the prior art would wish to solve. It should not be tendentiously formulated in a way that unfairly directed development towards the claimed solution. The board in T 605/20 did not recognise any divergence, as alleged by the appellant-opponent, between the considerations in T 800/91 and the more recent decision in T 1087/15 in which it was considered that knowledge of the claimed invention was indispensable in order to formulate the objective technical problem irrespective of the choice of the starting point in the prior art (see also I.D.6 "Ex post facto analysis").

In T 1019/99 the board stated that the correct procedure for formulating the problem was to choose a problem based on the technical effect of exactly those features distinguishing the claim from the prior art that was as specific as possible without containing elements or pointers to the solution (cited as established case law in e.g., T 698/10, T 826/10, T 143/12; see also T 1557/07, T 97/13, T 1230/15, T 67/16, T 1861/16).

In T 910/90 the board stated that the technical task of an invention must be formulated in such a way that it does not contain any solution ideas; when assessing the objective problem, the closest prior art and any technical progress achieved by the characterising features of the invention had to be taken into account. In so doing, it was not important whether the objective problem had already been mentioned in the closest prior art; what mattered was what the skilled person objectively recognised as the problem when comparing the closest prior art with the invention. See also T 214/01.