4.4.1 Reformulation if the problem is not solved

The technical problem may have to be reformulated, in particular in less ambitious terms, if the combination of features in the claim does not solve this problem over the whole area defined in the claim (T 39/93, OJ 1997, 134; T 400/98; T 235/04; T 96/06; T 1159/12; T 2001/12; T 1279/14; T 44/17).

In T 87/08 the board stated that Art. 56 EPC required that the assessment of inventive step was made "having regard to the state of the art". The board stated it was established in the case law of the boards of appeal that a decision was not sufficiently reasoned in the sense of R. 68(2) EPC 1973 (R. 111(2) EPC) if the chain of reasoning to justify the finding of lack of inventive step merely stated that a purported effect had not been achieved, i.e. this technical problem had not been solved, without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art. See also T 306/09, T 2375/10, T 1212/11, T 2186/11.

In T 143/13 the board observed that, according to the problem and solution approach, it was the problem described in the patent application that was normally used as the starting point for assessing inventive step. It noted that in the appealed decision, the step of assessing whether the problem defined in the application had been solved had been omitted. Nevertheless, the problem had been reformulated in terms that had not been invoked by the appellant (applicant). The justification provided for the reformulation of the problem was that the originally defined problem was artificial. However, the board could not see why and considered the reformulation of the problem in the appealed decision was not appropriate.