T 1946/21 - (II) A case where the OTP is not how to achieve the technical effect

Key points

• The objective technical problem can usually be formulated as "how to achieve the technical effect" (see e.g. G 2/21, r. 24). See also T1148/15: "In most cases, the objective technical problem can be formulated as how to achieve the technical effect. "
• However, the Report for Paper C of the EQE often states that the objective technical problem and the technical effect are not the same. ( "typically, the objective technical problem and the technical effect are not identical."- 2023 Report)
• The present case provides an illustration. 
• "the technical effect of the distinguishing features is [an] increased strength of the hanging parts, resulting in the ability [of the claimed swimming pool] to withstand higher internal pressures of the inflatable air chamber."
• "The [opponent] argued that the objective technical problem - according to the problem-solution approach - was thus "how to achieve the technical effect of the distinguishing features".
• "However, the technical effect invoked by the [opponent] (i.e. the hanging element can withstand higher internal pressures) does not solve a technical problem per se but has to be considered in context. Increasing the strength of the hanging parts is not an end in itself but leads to a technical effect whereby the device is able to improve the maintenance of the pool's shape, e.g. when a user is sitting on the top wall or in the pool, as explained in paragraphs [0043] and [0047] of the patent specification."
• The objective definition of the problem to be solved by the invention should normally start from the problem described in the contested patent (Case Law, I.D.4.2.2). The (subjective) problem formulated in paragraphs [0043] and [0047] of the patent, namely to maintain the shape of the pool, is convincingly solved. It is true that D28 already provides an inflatable pool constructed in such a way that it does not easily collapse when external pressure is applied. However, in view of [the CPA] D28 and the technical effect of the distinguishing features, the objective technical problem is to provide a pool with further improved maintenance of its shape when external pressure is applied (e.g. by a user sitting on it).
  
• "For inventive step to be assessed fairly and objectively, it is important not to formulate the objective technical problem either too narrowly or too broadly. The same is true for the technical effect to be considered. The Board finds no justification for formulating the objective technical problem in the narrow terms proposed by the [opponent] since this would take the effect out of its technical context and imply that increasing the strength of the hanging parts is an aim in itself for the skilled person without further considerations [incorrectly, I understand]. This already points to the solution and results in an analysis tainted by an ex-post facto approach."
• As a comment, the technical effect could perhaps also have been formulated as "improved maintenance of the swimming pool's shape when external pressure is applied".

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://new.epo.org/en/boards-of-appeal/decisions/t211946eu1.html

3.3.4 There is consensus that the technical effect of the distinguishing features is increased strength of the hanging parts, resulting in the ability to withstand higher internal pressures of the inflatable air chamber.

The appellant [opponent] and the intervener argued that the objective technical problem - according to the problem-solution approach - was thus "how to achieve the technical effect of the distinguishing features".

However, the technical effect invoked by the appellant/intervener (i.e. the hanging element can withstand higher internal pressures) does not solve a technical problem per se but has to be considered in context. Increasing the strength of the hanging parts is not an end in itself but leads to a technical effect whereby the device is able to improve the maintenance of the pool's shape, e.g. when a user is sitting on the top wall or in the pool, as explained in paragraphs [0043] and [0047] of the patent specification.

D28 discloses hanging parts which partially address this problem (see D28.1, paragraph under the heading "Operational advantage of the invention" on page 5). However, this does not change the fact that the distinguishing features in question further improve on the aim of D28, i.e. the maintenance of the pool's shape "when external pressure is applied from the top side".

The objective definition of the problem to be solved by the invention should normally start from the problem described in the contested patent (Case Law, I.D.4.2.2). The (subjective) problem formulated in paragraphs [0043] and [0047] of the patent, namely to maintain the shape of the pool, is convincingly solved. It is true that D28 already provides an inflatable pool constructed in such a way that it does not easily collapse when external pressure is applied. However, in view of D28 and the technical effect of the distinguishing features, the objective technical problem is to provide a pool with further improved maintenance of its shape when external pressure is applied (e.g. by a user sitting on it).

For inventive step to be assessed fairly and objectively, it is important not to formulate the objective technical problem either too narrowly or too broadly. The same is true for the technical effect to be considered. The Board finds no justification for formulating the objective technical problem in the narrow terms proposed by the appellant and the intervener since this would take the effect out of its technical context and imply that increasing the strength of the hanging parts is an aim in itself for the skilled person without further considerations. This already points to the solution and results in an analysis tainted by an ex-post facto approach.