T 1585/12 - A123(2) and the description

Key points

• The application was filed in Dutch, and the opponent asserts that the claims involve added subject-matter due to an imprecise translation of a term from the Dutch application as filed. The Board finds the term (as translated) to be unclear, but not to involve added subject-matter. 
• The Board also indicates that for Article 123(2) EPC, in case on unclear terms, the description has to be taken into account. 
• " As follows from above the unclear term "shielder" only derives its full meaning in the light of the description and figures, and therefore cannot have a broader meaning than what can be inferred therefrom." 

EPO T 1585/12 - link


Reasons for the Decision

3. Added subject-matter

3.1 The present application Nr 07075198.7 was originally filed in the Dutch language and subsequently translated into English pursuant to Art. 14(2) EPC.

Pursuant to Art 70(2) EPC the Dutch filing therefore constitutes the authentic text of the application as filed. For the purpose of determining whether the patent extends beyond the application as filed, it should be examined whether the subject-matter of claims 1 and 22 has a basis in the original Dutch application. In particular, does the use of the term "shielders" introduce subject-matter not originally disclosed in the application as filed in Dutch.

3.2 Using the above understanding of the claims in the light of the description, the skilled person does not recognise any new subject-matter arising from the device or method defined in claims 1 and 22. Other than the translation of Dutch "af-/tegenhouders" by "shielders/retainers" there are no apparent discrepancies between the description of the original application in Dutch and its translation into English which also contains identical drawings. Both documents convey to the skilled person the same teaching of the invention, in particular regarding the action of its various components. Specifically, it is clear from both texts and figures that that the "af-/tegenhouders " from the Dutch application and the "shielders/retainers" of the patent as granted are identical, having identical structure and operating in an identical manner. From the patent specification and from the claims when read in the light of the description the skilled person receives the same information as from the authentic Dutch text. Consequently, no information has been added to the patent that extends beyond the disclosure of the original application as filed, Article 123(2) EPC.

3.3 The Appellant further submits that the terms "shielders" and the function of "shielding" would introduce an unallowable intermediate generalisation between the general function of holding apart as originally found in the application in Dutch and the shielding as now claimed. The term "shielders" would also allow for shielding for example by a foil whereas simple rods can keep the packages away within the original meaning of "afhouden" (keep off). Furthermore, the description would not provide a suitable source for the shielding function since the plate 44 according to paragraphs [0041] and [0046] has a sliding and supporting function only.

3.4 The Board does not concur with this view. As follows from above the unclear term "shielder" only derives its full meaning in the light of the description and figures, and therefore cannot have a broader meaning than what can be inferred therefrom. Nor is this in conflict with the sliding and supporting function of plate 44, which in fact contributes to the insertion between carcass and package, cf paragraph [0045], last sentence. The example of a foil would not fulfill the function of holding apart and separate, and therefore does not fall within the technical meaning given to this term.

3.5 Thus, the subject-matter of Claims 1 and 22 of the patent as granted does not extend beyond the content of the application as filed and the ground for opposition mentioned in Article 100(c) EPC does not prejudice the maintenance of the patent as granted.