T 1981/15 - Rule 49(10) EPC and clarity

Key points

• In this examination appeal, the refusal was based on Article 84 and Rule 49(10) EPC, last sentence. That sentence reads: ""Only the technical terms, formulae, signs and symbols generally accepted in the field in question shall be used."
• The Board clarifies the meaning of the provision as follows: "The intention, in the opinion of the Board, is to prohibit the use of terminology (and formulae, signs and symbols) which would be misleading or unfamiliar to the person skilled in the art." 
• The Board then applies this rule to the term at issue.
• " While the term "leading" [in: "leading-end open line 50"; the invention is about a radio-frequency device], taken in isolation, might appear imprecise, the skilled person would, as set out above, understand from the claim that the open end is the distal end, remote from the pad. Labelling this end as the "leading" end does not add any new technical information, but neither can it be seen as misleading or detracting from the clarity of the claim. Hence, within the context of the subject-matter of claim 1, the Board finds that element 50 is described in a manner which is clear and comprehensible, using terms which would be understood by a person skilled in the technical field. The requirements of Article 84 and Rule 49(10) EPC are therefore met.

Reasons for the Decision

1. The appeal is admissible.

2. Article 84 and Rule 49(10) EPC

2.1 Claim 1 defines that the internal conductor pad includes a "leading-end open line 50". This term, which was present in the translation of the international application into English pursuant to Article 153(4) EPC, was objected to during the examination procedure under Article 84 and Rule 49(10) EPC for being "not generally accepted in the art" (see e.g. communication of 24 July 2014, point 1.1). As a result, this feature was amended to "slot line" in the version of the claims as refused. Since the term "leading-end open line 50" has been re-instated into claim 1 of the present main request, it is necessary for the Board to consider the objections previously raised against it.

2.2 The last sentence of Rule 49(10) EPC reads as follows:

"Only the technical terms, formulae, signs and symbols generally accepted in the field in question shall be used."

The intention, in the opinion of the Board, is to prohibit the use of terminology (and formulae, signs and symbols) which would be misleading or unfamiliar to the person skilled in the art.

2.3 In the present case, the term in question appears in claim 1 as follows:

"the internal conductor pad (5) includes a leading-end open line (50) having a length of a quarter of a wavelength of a radio-frequency signal used in the radio-frequency device (2)."

Hence, it is defined that the internal conductor pad includes the line 50, which is therefore in electrical contact with the remainder of the pad. The line has a length of a quarter of a wavelength, and the skilled person would be aware that such lines are often terminated with a short circuit or an open circuit. In the present case the end is defined to be open ("leading-end open line"), and the open termination must clearly be the distal end of the line, i.e. the end removed from the electrical connection with the pad. The Board sees nothing in this that could be considered unclear or misleading.

While the term "leading", taken in isolation, might appear imprecise, the skilled person would, as set out above, understand from the claim that the open end is the distal end, remote from the pad. Labelling this end as the "leading" end does not add any new technical information, but neither can it be seen as misleading or detracting from the clarity of the claim.

2.4 Hence, within the context of the subject-matter of claim 1, the Board finds that element 50 is described in a manner which is clear and comprehensible, using terms which would be understood by a person skilled in the technical field. The requirements of Article 84 and Rule 49(10) EPC are therefore met.

3. Article 123(2) EPC

3.1 For the purposes of applying Article 123(2) EPC, the application as filed is the PCT application JP 2008/053292 (Article 153(2) EPC), which was published as WO 2008/111391 A1. While the translation provided pursuant to Article 153(4) EPC is normally assumed to be accurate, this matter may be investigated in cases where doubts arise.

3.2 In the present case, the Japanese term for the element 50 was originally translated into English as "leading-end open line 50". The Board noted in its communication pursuant to Article 15(1) RPBA that, in response to objections from the Examining Division, the applicant (now the appellant) had offered other possible English translations, such as "slot line" (which appeared in the claims as refused). As a consequence, it was not certain how the Japanese term should best be rendered into English. The Board suggested that a certified translation would assist in judging this matter.

3.3 The appellant subsequently provided such a certified translation, in which the term was translated as "distal-end-open line 50". The element 83 in D1 which, in the original international application, comprises the same Japanese characters, was similarly translated as "distal-end-open line 83".

3.4 Since the Board judges that, within the context of the present invention, the terms "leading-end open line" and "distal-end-open line" would convey exactly the same technical information to the skilled person (see point 2.3, above), the Board is satisfied that the translation provided pursuant to Article 153(4) EPC can be considered accurate, and that the appearance of the term "leading-end open line" in the claims of the main request does not add subject-matter which extends beyond the content of the application as filed.

3.5 Claims 1 and 2 of the present main request differ from those in the translation provided pursuant to Article 153(4) EPC only in the deletion of "substantially" in the phase "a length of substantially a quarter of the wavelength". The Examining Division had no objection to this amendment and neither does the Board.

The main request therefore meets the requirements of Article 123(2) EPC.