T 0659/19 - Unambiguously deduced vs. at least hinted at

 Key points

•  The Board, on inventive step: “However, an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art or if it is not at least hinted at in that application” [referring to CLBA]
• As a comment, I would like to recall how different the two alternatives are:
•  " an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art" 
• vs. " an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect ... is not at least hinted at in [the application as filed]".
• 
  

T 0659/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t190659eu1.html

Objective technical problem

9. The appellant relied on two experimental reports ERII and ERIII to derive the technical effects of the differing features, namely a reduction of the opening force which had to be applied to open the container with an opening aid of the puncture-and-cut type, an improvement of puncturing of the hole-covering layers with an opening aid of the puncture-and-cut type, and a reduction of the formation of threads and tongues upon opening the container with an opening aid of the puncture-and-cut type.

10. It is established jurisprudence of the Boards of Appeal that some beneficial effects or advantageous properties, if appropriately demonstrated by means of truly comparable results, can in certain circumstances properly form a basis for the definition of the problem that the claimed invention sets out to solve and can, in principle, be regarded as an indication of inventive step. However, an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art or if it is not at least hinted at in that application (Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019, I.D.4.4.1 and I.D.4.4.2).