T 0428/15 - Novelty attack based on machine translation

Key points

• " The [opponent's] objection that D3 anticipates the subject-matter of claim 1 is based on passages of a computer-generated translation whose quality does not allow the Board to understand with a sufficient degree of certainty what is in fact described in D3. 

• Furthermore, the [opponent] did not submit a man-made translation of the relevant passages which would have clarified the issue, or provide technical explanations which would render credible that the true meaning of the vague passages concerning the use of chloroform [...]
   On that basis, the Board can only come to the conclusion that no case has been made that the subject-matter of granted claim 1 lacks novelty over the disclosure of Example 6 of D3." 

EPO T 0428/15 -  link

2.1 The footnote of Table 1 in paragraph [0057] of the translation of D3 defines A1 to be "The preliminary reaction thing of bis-(beta-epithiopropyl)surfide and 2-MINOBENZENthiol (sic)". 

According to paragraph [0049] after addition, mixing and reaction of the reactants "The reaction mixture was dissolved in chloroform, the after-rinsing chloroform layer was dried, the solvent was removed and 101.81 g of 1,9-bis(2-aminophenyl)-3,7-dimercapto 1,5,9-trithianonane which is an object was obtained (95% of yield)." 
It is not clear from that passage whether the expression "The preliminary reaction thing" used in the translation should be understood to refer to the reaction mixture as obtained during the preliminary reaction step described in paragraph [0049] before apparently the mixture is dissolved in chloroform or to the product obtained after all theses additional steps, which also would constitute a reaction product which needs to be first prepared for the formulation described in Table 1 and accordingly could be understood to be the "preliminary reaction thing".

Consequently, the objection that D3 anticipates the subject-matter of claim 1 is based on passages of a computer-generated translation whose quality does not allow the Board to understand with a sufficient degree of certainty what is in fact described in D3. 

Furthermore, the appellant did not submit a man-made translation of the relevant passages which would have clarified the issue, or provide technical explanations which would render credible that the true meaning of the vague passages concerning the use of chloroform and the apparently described rinsing step would be immaterial to the conclusion to be drawn in respect of the nature of product A1 obtained.

[...]
2.4 On that basis, the Board can only come to the conclusion that no case has been made that the subject-matter of granted claim 1 lacks novelty over the disclosure of Example 6 of D3.