T 0204/23 - The OTP must be deducible from the application as filed

Key points

• The Board is not convinced that the problem of staining (or avoiding negative visual perception and gustatory perception of condensate) is known to the person skilled in the art of heat-not-burn cigarettes from their common general knowledge, because no proof of that knowledge was provided by the appellant. The appellant [opponent] submits in this respect that colourants of tobacco material may also be present in the aerosol of D15, a heat-not-burn device []  but provides no proof that the skilled person would commonly recognise this as causing a staining problem. The Board emphasizes that patent document D19 is no proof of the common general knowledge"
• The Board therefore comes to the intermediate conclusion that the appellant's formulation of the objective technical problem is not deducible by the skilled person from the contested patent considered in relation to [the closest prior art, document D15] and [using their] common general knowledge.
• "According to established case law, see CLBoA, I.D.4.1, the objective technical problem must be derived from [technical ]effects directly and causally related to the technical features of the claimed invention. This is understood by the Boards of Appeal as an effect which is derivable from the application as filed when considered in the light of the closest prior art, see CLBoA, I.D.4.4.2 and 4.4.3 b) and the decision T0386/89 cited therein."
• I think there are a few separate requirements: the technical effect must be actually achieved, and be caused by the distinguishing feature, and be deducible (and plausible/credible) based on the application as filed.
• This decision seems to illustrate that for the 'dedicible' question, the skilled person is given the CPA document and the application as filed, and may use their common general knowledge. The deducible requirement is only relevant if a party invokes an effect that is not explicitly mentioned in the application as filed, it seems to me.
• G 2/21 hn. II speaks of "a patent applicant or proprietor [who] may rely upon a technical effect for inventive step" if certain requirements are met, do these apply equally to the opponent invoking a technical effect in the context of inventive step?
• "neither the contested patent nor the English translation D15a mention staining of the filter, or gustatory perception of the condensate"
• "combination document D19 teaches that "the portion of the wrapper which surrounds the mouth end cavity generally reduces visibility of the downstream end of the first segment of filtration material so that any staining [] is less visible" ([]. The appellant [opponent] did not provide any reason why - in the present case - the objective technical problem may be formulated based on an effect that is only derivable from the combination document D19, and neither does the Board see such reason."
• "As the technical effect resulting from the distinguishing features must be deducible by the skilled person from the contested patent considered in relation to the closest prior art, see above, the Board considers paragraph [0034] of the contested patent as a basis for the formulation of the objective technical problem. That paragraph discloses that "The mouth end segment 111 provides the function of preventing any liquid condensate that accumulates at the exit of the filter segment 109 from coming into direct contact with a user". The Board therefore formulates the objective technical problem underlying the distinguishing features of claim 1 according to Auxiliary Request 1c over document D15 as preventing any liquid condensate that accumulates at the exit of the filter segment from coming into direct contact with a user."
• So, in the end, the Board follows the problem stated in the patent. Does this mean that the opponent tried to run a bonus effect argument in sophisticated form?

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230204eu1