4.4.3 Limitations to the reformulation of the technical problem
As a rule, additional advantages not mentioned in the application as originally filed but relating to a mentioned field of use can also be considered for the purpose of assessing inventive step, provided such advantages do not alter the character of the invention (T 440/91; see also T 1062/93, T 1983/07, T 1422/12, T 1450/14, T 321/16). The character of the invention is not altered if the technical problem specified in the application as filed is supplemented by such advantages, since the skilled person could consider them on account of their close technical relationship to the original problem (T 440/91, T 1062/93, T 1983/07, T 1450/14, T 321/16).
On the other hand, an alleged technical effect of a described feature cannot be taken into account when determining the problem underlying the invention for the purpose of assessing inventive step, if it cannot be deduced by the skilled person from the application as filed considered in relation to the nearest prior art (T 386/89), or if it is not at least hinted at in the originally filed documents (T 321/16; in T 344/89 "foreshadowed in the originally filed application"). See also T 440/91, T 532/00, T 867/13.
In T 1188/00 the board found that a reformulation relating to an effect first alleged in appeal proceedings (a more ambitious problem) could not be used to substantiate inventive step unless it was credibly demonstrated that the alleged effect could be achieved across the whole scope of the claim. The burden of proof for this lay with the patent proprietor. See also T 134/00, T 815/16 (referred to in terms of plausibility in T 253/02, T 172/07, T 366/12, T 438/16, T 815/16, T 987/17).
In T 235/04 the board did not accept the formulation of the technical problem since the purported improvement had not been demonstrated to arise within the whole area that was claimed. The abord explained that when defining the technical problem, an effect could not be retained if the promised result was not attainable throughout the entire range covered by the claimed subject-matter. Therefore, the technical problem needed to be redefined in a less ambitious way (T 626/90, T 1057/04, T 824/07).
In T 259/05 too the board held the claimed improvement to be unproven; it had not been substantiated by tests or plausibly shown in any other way. The ambitious problem formulated could therefore not be considered successfully solved. As a result, the claimed improvement in the method's efficiency could not be taken into account for assessing the objective problem which the patent in suit sought to solve, or the inventiveness involved. The technical problem therefore had to be reformulated less ambitiously.
According to T 155/85 (OJ 1988, 87), it was not acceptable to rely on an effect which had previously been described as undesirable and of no value by the applicant, to present it suddenly as possibly representing an advantage from another point of view, and thereby to imply that the technical problem and the considerations of inventive step should take this reversal into account. A redefinition of the technical problem should not contradict earlier statements in the application about the general purpose and character of the invention. See also T 115/89, T 2245/10.
- T 1465/23
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.