EP 3 607 651 A1 relates to Control electronics for refrigeration systems. It stems from the PCT application PCT/EP2018/056793 published as WO 2019/015812.
Brief outline of the case
The application was refused for lack of IS of all the requests on file, and the applicant appealed.
The board confirmed the refusal, but for lack of clarity.
The board’s communication under Art 15(1) RPBA
In a communication pursuant to Art 15(1) RPBA attached to the summons to OP, the board informed the applicant of its preliminary view that, before examining IS, it would first have to discuss the clarity of claim 1, cf. Art 84.
The Board expressed detailed concerns about the clarity of various terms and structural features, including ‘commutation electronics’.
The Board further noted that it was not obliged to interpret an unclear claim by making assumptions and that an examination under Art 56 could not be carried out on that basis.
The board’s decision
The board held that the term ‘commutation electronics’ in claim 1 of the MR is so vague that it does not meet the clarity requirement of Art 84.
The claim contains neither structural nor functional features that would enable a skilled person to recognise what is meant by ‘commutation electronics’ and which embodiments are to be covered by this term.
Nor can any clear technical teaching with regard to ‘commutation electronics’ be derived from the context of the claimed subject-matter. In addition, neither the description nor the figures provide a technical definition or generally accepted specification of this term.
The board was convinced that ‘commutation electronics’ is not an established technical term with a clear meaning in the relevant technical field of control electronics for refrigeration systems.
In particular, a skilled person would not understand from its CGK that the ‘commutation electronics’ within the meaning of claim 1 is to be understood as EC commutation electronics, i.e. EC = electronic commutation, for an electronically commutated motor.
Neither the term ‘EC commutation electronics’ nor ‘EC motor’ is disclosed anywhere in the application. Nor are there any other indications that would immediately make it clear to a skilled person, in the course of a normal, reasonable reading, that the ‘commutation electronics’ referred to in claim 1 are to be understood as EC commutation electronics.
Even if this were assumed in favour of the applicant, it would remain unclear whether, without further explanation in the application, the term should be understood in a narrow sense, only power commutation, i.e. inverters with gate drivers, or in a broad sense, complete drive electronics including drivers, control, sensors, protection and interfaces.
Skilled persons are familiar with at least two fundamentally different types of commutation electronics: on the one hand, the power-carrying circuit component, e.g. DC/AC converter, which switches currents and physically effects commutation, and on the other hand, the control level consisting of control/sensor technology and logic, which specifies the timing and function of commutation.
The varying interpretations presented by the applicant in the proceedings, firstly the power section, later the control electronics, demonstrate this objective ambiguity.
For the sake of completeness, the board noted that the breadth of the term might not be detrimental if there were a recognised, clearly defined technical meaning or if the application itself provided a technical definition or implementation details that supported the broad term claimed.
However, it is precisely this clarity that is lacking here. The skilled person would thus be forced to develop their own specifications in order to determine the limits of the subject matter of the claim, which undermines the necessary legal certainty of the claim limits.
The contested decision already recognised the lack of clear technical meaning and the lack of a defining disclosure of the term in question as a problem of clarity, even though this aspect was not used as an independent ground for refusal. The ED decided lack of IS separately for both possible interpretation of ‘commutation electronics’, the power-carrying circuit component one the one hand, and complete drive electronics on the other hand.
The board did not agree with the ED’s approach in this respect, since no substantive objection as to clarity was raised despite the recognised considerable conceptual vagueness.
In view of the obligation to examine under Art 94(1) and the importance of clarity for the distinctiveness of the claimed subject-matter, see Guidelines F-IV, 4.1 and of G 1/24, OJ EPO 2025, A60, reasons 20, a final assessment should and must have been made already in the proceedings before the ED.
Comments
In the presence of a severe lack of clarity, the board made clear, that a lack of clarity can be an obstacle on deciding upon N and IS of the subject-matter of a claim.
Rather than deciding on IS with two possible interpretations, the ED should have refused the application for lack of clarity.
Reasons 20 of G 1/24 read:
“The above considerations highlight the importance of the ED carrying out a high quality examination of whether a claim fulfils the clarity requirements of Art 84. The correct response to any unclarity in a claim is amendment. This approach was emphasised in the Comments of the President of the EPO”.
We can expect boards quoting regularly Reasons 20 of G 1/24. This was already the case in T 866/24, commented in the present blog.
The board’s comment, that it was not obliged to interpret an unclear claim by making assumptions is equivalent to the statement of the board in T 2027/23, commented in the present blog, that a board is not prepared to carry out interpretative summersaults when examining a claim G 1/24, see Catchword .
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