4. Technical problem
According to the problem and solution approach, objective criteria must be used to determine the technical problem (see e.g. T 1/80, OJ 1981, 206; T 24/81, OJ 1983, 133; T 39/93, OJ 1997, 134), i.e. the problem which can be seen to have been actually solved in the light of the closest prior art which may be different from the prior art which was at the disposal of the inventor (T 576/95, T 420/14, T 1148/15). This requires the assessment of the technical effect vis-à-vis the closest state of the art (T 148/05, T 1422/12, T 141/16).
A comparison of the problem indicated in the application with that indicated in a prior document must avoid an unduly abstract approach far removed from the practical thinking of the person skilled in the art (T 5/81, OJ 1982, 249; T 150/89; T 417/94; T 177/98; T 263/99; T 1093/04).
The definition of artificial and technically unrealistic problems is to be avoided (see T 495/91, T 741/91, T 334/92, T 708/96, T 257/98, T 1967/08, T 98/16).
For the purpose of the problem and solution approach, the problem must be a technical one that a skilled person in the particular technical field might be asked to solve at the priority date. (see e.g. G 1/19, OJ 2021, A77; T 385/89; T 641/00, OJ 2003, 352; T 154/04, OJ 2008, 46). In identifying the problem it is not permissible to draw on knowledge acquired only after the date of filing or priority (T 268/89, OJ 1994, 50; T 365/89). However, see in this chapter I.D.4.3.3 "Post-published evidence".
When defining the objective technical problem, an effect cannot be retained if it is not credible that the promised result is attainable throughout the entire range covered by a claim (T 626/90; T 583/93, OJ 1996, 496; T 25/99; T 71/09; T 824/07; T 447/10; T 1837/13, T 340/13). In T 939/92 (OJ 1996,309) the board concluded that a technical effect which justified the selection of the claimed compounds in the case in hand must be one which could be fairly assumed to be produced by substantially all the selected compounds (see also T 489/14 of 22 February 2019 date: 2019-02-22, OJ 2019, A86; T 41/16).
In T 161/18 the claimed method was distinguished from the prior art only by an artificial neural network; however, the training of this network was not disclosed in detail. The board was not convinced that the asserted effect was achieved by the claimed method across the whole scope of the claim. This effect therefore could not be taken into account as an improvement over the prior art when assessing inventive step.
In T 1639/07 the board held that the objective technical problem must be derived from physical, chemical etc. effects directly and causally related to the technical features of the claimed invention (see also T 2297/10, T 1199/16, T 1341/16). An effect could not be validly used in the formulation of the technical problem if the effect required additional information not at the disposal of the skilled person even after taking into account the content of the application in question. See also T 584/10.
In T 377/14 the board, referring to T 344/89, held that the problem did not have to be explicitly disclosed in the application as filed; it sufficed if it was foreshadowed therein (see also T 478/17).
In T 1841/11 the board held that a problem which is not mentioned in the application in relation to the claimed feature, and which would not arise over the whole ambit of the claim, or even for those embodiments described in detail in the application, cannot be considered to be a suitable choice.
In T 943/13 the board came to the conclusion that the causal relationship between the substance or composition on the one hand and the therapeutic effect achieved on the other hand was decisive for the assessment of inventive step of further-medical-use claims. This causal relationship constitutes the claim's contribution over the prior art. Accordingly, the inventive step of such a claim hinges on the question as to whether this causal relationship, and not just the substance or composition as defined in the claim, is obvious. Hence, in the case in hand the board considered that the objective technical problem was the provision of the claimed therapeutic effect by a different means.
- T 2622/19
Catchword:
As to the application of the problem-solution approach, in particular the determination of the objective technical problem and the choice of the "second document", see points 6.3.2 and 6.3.4 of the Reasons.