4.4.3 Limitations to the reformulation of the technical problem
As a rule, additional advantages not mentioned in the application as originally filed but relating to a mentioned field of use can also be considered for the purpose of assessing inventive step, provided such advantages do not alter the character of the invention (T 440/91; see also T 1062/93, T 1983/07, T 1422/12,T 1450/14, T 321/16). The character of the invention is not altered if the technical problem specified in the application as filed is supplemented by such advantages, since the skilled person could consider them on account of their close technical relationship to the original problem (T 440/91, T 1062/93, T 1983/07, T 1450/14, T 321/16).
On the other hand, an alleged technical effect of a described feature cannot be taken into account when determining the problem underlying the invention for the purpose of assessing inventive step, if it cannot be deduced by the skilled person from the application as filed considered in relation to the nearest prior art (T 386/89), or if it is not at least hinted at in the originally filed documents (T 321/16; in T 344/89 "foreshadowed in the originally filed application"). See also T 440/91, T 532/00, T 867/13.
In T 1188/00 the board found that a reformulation relating to an effect first alleged in appeal proceedings (a more ambitious problem) could not be used to substantiate inventive step unless it was credibly demonstrated that the alleged effect could be achieved across the whole scope of the claim. The burden of proof for this lay with the patent proprietor. See also T 134/00, T 815/16 (referred to in terms of plausibility in T 253/02, T 172/07, T 366/12, T 438/16, T 815/16, T 987/17).
In T 235/04 the board did not accept the formulation of the technical problem since the purported improvement had not been demonstrated to arise within the whole area that was claimed. The abord explained that when defining the technical problem, an effect could not be retained if the promised result was not attainable throughout the entire range covered by the claimed subject matter. Therefore, the technical problem needed to be redefined in a less ambitious way (T 626/90, T 1057/04, T 824/07).
In T 259/05 too the board held the claimed improvement to be unproven; it had not been substantiated by tests or plausibly shown in any other way. The ambitious problem formulated could therefore not be considered successfully solved. As a result, the claimed improvement in the method's efficiency could not be taken into account for assessing the objective problem which the patent in suit sought to solve, or the inventiveness involved. The technical problem therefore had to be reformulated less ambitiously.
According to T 155/85 (OJ 1988, 87), it was not acceptable to rely on an effect which had previously been described as undesirable and of no value by the applicant, to present it suddenly as possibly representing an advantage from another point of view, and thereby to imply that the technical problem and the considerations of inventive step should take this reversal into account. A redefinition of the technical problem should not contradict earlier statements in the application about the general purpose and character of the invention. See also T 115/89, T 2245/10.