EP 3 268 667 B1 relates to a gas burner with at least two flame rings (not represented here).
Brief outline of the case
The patent claimed an Italian priority and was filed in Italian. In the translated description, the term “scodellino” (12+15) was translated as “dish”.
The OD considered that claims 1 and dependent claims 2-4 were infringing Art 123(2) and decided maintenance according AR1 as “dish” was broader than “scodellino“.
According to the OD, the claim wording according to AR1, “small bowl” instead of “dish” was found to be in line with the requirements of Art 123(2).
Proprietor and opponent appealed.
The board decided, in writing, maintenance as granted.
The opponent’s point of view
The opponent argued that the main request was indeed not allowable since the term “dish” in the claims as granted did not comply with the requirements of Art 123(2) since it is broader than the original Italian term “scodellino” and thus extends the subject-matter compared with the content of the application as filed.
The opponent further argued that the “amended” term “small bowl” in AR 1 was, due to its relative nature, not in line with the requirements of Art 84. The patent could thus not be maintained, neither as granted, nor in the version of AR 1 even though the latter was found allowable by the OD.
The board’s decision
Even if the general, abstract meaning of the term “dish” might be broader than the general, abstract meaning of “small bowl”, “small bowl” being a translation of the Italian term “scodellino” which is closer to the literal meaning in the opponent’s view, this does not necessarily imply – in the context of the further features of the “dish shaped” injection holder in claim 1 as granted – that the subject-matter is extended. It is not the single word which is decisive, but the subject-matter defined by the entire context of the claim.
The injection holder of claim 1 is thus required to have a concave shape with a lateral wall extending from the base forming an enclosed volume into which a tubular conduit can be inserted. There is thus no technical difference between the subject-matter claimed and a possible explicit definition of the injection holder being of a small bowl shape.
Consequently, the subject-matter of claim 1 does not extend beyond the disclosure of the Italian application as originally filed.
The same applies for dependent claims 2 to 4 and the term “dish” as used in the description.
As the main request does not extend beyond the original disclosure, there is no need to examine whether the replacement term “small bowl” in AR 1 is clear. The term “dish” in the MR and dependent claims 2 to 4, is used in the version as granted and cannot therefore be examined for compliance with the requirements of Art 84 in accordance with G 3/14.
Comments
Translating a document into an official language does always imply the risk of an error in translation.
The present board found very pragmatic way out of the problem. Stick to the translated term and consider that it, in view of its function, it does not represent an extension beyond the original disclosure.
Another possibility would have been for the proprietor to request amending dish by small bowl. Such a request would have been admissible, even by the OD, in view of Art 14(2) and 70(2).
The translation from the original language can, in principle, be corrected should it be shown that it contains errors, cf. Guidelines A-VII, 7.
In the context, the relative wording “small bowl” would have been clear for the same reasons the board consisered “dish” allowable.
It could have been advisable to bring in an Italian native speaker as examiner in the OD.
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