Arbitrary Modifications and Late Submissions: T 0094/24 on the Problem-Solution Framework
Board 3.5.05 confirms that features failing to credibly achieve a technical effect over the whole claimed scope are arbitrary modifications, requiring no objective technical problem to be formulated.
The doctrinal mechanics of the problem-solution approach have long accommodated variations in how boards handle features that fail to deliver their promised advantages. In T 0094/24, Board 3.5.05 addresses this directly, confirming that when a distinguishing feature does not credibly contribute to a technical effect over the entire claimed scope, it constitutes an "arbitrary modification" of the prior art. Crucially, the panel held that in such cases, there is no obligation to formulate an objective technical problem at all.
The floating terminal and unachieved effects
The opposed patent related to a hearing aid comprising a printed circuit board (PCB) and a flexible printed circuit board carrying an antenna. The core distinguishing features over the prior art (document D2) required the PCB to have an "indentation" accommodating "at least a part of the first terminal" of the antenna. The proprietor argued this geometry inherently provided a reduced physical size and ensured correct placement and alignment of the antenna.
The board, however, looked strictly at the claim wording. Because the claim only required the indentation to accommodate "at least a part" of the terminal, it encompassed "laterally unconstrained" or "floating" embodiments where a narrow terminal sat inside a much wider indentation (reasons 3.4.3). In such configurations, the terminal could act as a pendulum without contacting the sidewalls, meaning no "correct placement" was inherently achieved. Furthermore, the claim covered embodiments where the indentation was located on a raised portion of the PCB, which would not reduce the overall Z-height of the assembly. Consequently, the alleged technical effects were not credibly achieved over the whole scope of the claim.
Arbitrary modifications and the problem-solution framework
Having found no credible technical effect, the board concluded that the indentation features were non-functional or arbitrary modifications of the prior art, rendering them obvious under Article 56 EPC.
The proprietor strongly objected to this methodology, arguing that the board was applying a unique "no objective technical problem" approach that deviated from the conventional problem-solution framework and G 0001/19. They requested a referral to the Enlarged Board of Appeal. The panel refused the referral, meticulously demonstrating that its approach was firmly rooted in decades of established jurisprudence (reasons 5.3.6). The board noted that G 1/19 does not mandate the formulation of an objective technical problem in the absence of a credible technical effect. As a matter of logic, if a claimed invention cannot solve any objective technical problem, there is effectively no distinguishing feature that can contribute to an inventive step.
Dismissing the customary deadline defence
The procedural aspects of the decision are equally notable. In response to a concise preliminary opinion issued nine months prior, the proprietor filed a 68-page submission and new auxiliary requests just one month before the scheduled oral proceedings. When the board declined to admit these under Article 13(2) RPBA, the proprietor raised an objection under Rule 106 EPC, arguing that filing written submissions one month before oral proceedings was a "customary practice" at the EPO.
The board dismantled this argument, stating unequivocally that there is no "customary practice" in appeal proceedings granting a party the right to have submissions filed one month prior to a hearing automatically admitted (reasons 4.4). The proprietor's subjective surprise at the application of the Rules of Procedure did not amount to a violation of the right to be heard under Article 113(1) EPC.
Practical implications
When drafting claims intended to provide spatial or geometric advantages—such as size reduction or alignment—practitioners must ensure the claim language actually constrains the components to deliver that effect. Broad language like "accommodating at least a part" will be interpreted to include technically unhelpful embodiments (like floating terminals) unless positive limitations dictate a commensurate fit.
Procedurally, this decision underscores that the boards will not entertain the notion of an informal one-month safe harbour for late submissions. A change in focus from one prior art document to another during appeal does not justify a piecemeal presentation of a party's case. If a feature mapping in a statement of grounds of appeal appears confusing, it must be challenged in the written reply, not held back until the eve of oral proceedings.