9.2. Problem-solution approach when applied to mixed-type inventions
9.2.8 Credible technical effects
In T 258/97 the board held that an assessment of inventive step could only be based on those elements and aspects of the invention in respect of which a technical effect could be established (see also T 1461/12). Whether an invention caused a technical effect was essentially a question of fact. While the EPO has a duty to determine such facts in examination proceedings, the onus is upon the applicant to cooperate in said determination, in particular in the event of doubt (see also T 953/04, T 1958/13).
In T 27/97 the board held that an abstract algorithm was relevant to inventive step only if a technical effect could be established which was causally linked to the algorithm, such that the technical effect provided a contribution to the solution of a technical problem and thereby conferred a "technical character" on the algorithm.
In T 953/04 the board followed decision T 258/97 in this respect and noted that if the doubts about the technical character of the invention could not be resolved, the features in question had to be ignored in assessing inventive step (see also T 27/97).
In T 823/07 the board, following decision T 1143/06, stated that the manner how cognitive content is presented to the user may only contribute to the technical solution of a technical problem if the manner of presentation (exceptionally) shows a credible technical effect (see also T 1575/07, T 1741/08, T 1562/11). In T 116/20, a feature defining presentation of information was deemed to contribute to inventive step, since it enabled a practitioner X-raying an implanted port to unambiguously determine the orientation of the port, including whether the port was being viewed from above or below.
In T 1958/13 the invention was concerned with copying and pasting on a touchscreen display by means of a "single-drag gesture". Although the board deemed those effects, in principle, to be technical effects, since in the end they aim at providing tools which serve or assist user activities (see e.g. T 643/00), the question whether they were actually achieved depended exclusively on subjective user skills or preferences. Therefore, the board was not satisfied that they could be regarded as objectively credible technical effects for the purpose of formulating the objective problem to be solved (see also T 1567/05, T 1841/06 and T 407/11; see also T 77/14 on gesture-based functions).
- T 2010/22
In T 2010/22, the opposed patent concerned a headphone. It aimed at providing a headphone that does not completely shield the wearer off from the outside acoustic environment (referred to by the appellant as an "open headphone"). Given that the appealed decision only concerned novelty in relation to claim 1 of the main request, the board conducted its own inventive-step analysis.
The technical problem as formulated by the parties could not, according to the board actually be derived from effects directly and causally related to the technical features of the claimed invention.
The technical problem as formulated by the opponent relied on the implicit assumption that the closer "high-frequency driver" position as per feature (d1) directly translated to a closer acoustic source as perceived by the user’s ear. This assumption was reasonable in a basic, direct-radiating open headphone, but this was not explicitly required by claim 1.
In relation to the technical problem as formulated by the appellant, the board found that none of the other features specifically concerned an open headphone, contrary to the proprietor’s allegations. The proprietor claimed that some limitations that both drivers are located "off of the ear" of the user necessitated an open arrangement.
While the board acknowledged that it was a plausible understanding that there may be an open arrangement, it was not the only one that was technically sound. The skilled reader would in particular be aware that the phrase "off of the ear" did not necessarily exclude the presence of circumaural or supra-aural earcups. The board wished to clarify that the derivability of a credible technical effect (for the purposes of assessing inventive step) from the original description may, if at all, only be seen as a necessary requirement but not a sufficient one in view of e.g. G 1/19, point 124 of the Reasons (in particular the sentence: "[...] only those technical effects that are at least implied in the claims should be considered in the assessment of inventive step"). This means that the conclusions of G 2/21 cannot be used to bypass the fundamental requirement that the claimed features must credibly achieve the asserted technical effect: the decisive question remains whether the claimed features themselves, as understood by the skilled person, credibly bring about the technical effect over the entire scope claimed.
The board found it difficult to discern a technical effect which feature (d1) would credibly achieve over the whole scope claimed. As indicated by the board during the oral proceedings before it, this feature provided, at most, a practical arrangement of the high- and low-frequency acoustic drivers in terms of their relative positions. This meant however that the objective technical problem could, at best, be formulated as "how to practically arrange the high- and low-frequency acoustic drivers in the 'alternate embodiment' of D1 in terms of their relative positions". After its assessment of obviousness, the board concluded that the claims lacked inventive step.