CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1441/21 – When it comes to Art 123(2) a board is allowed to apply a "semantic" or "linguistic" analysis of a claim

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The patent in suit pertains to a print supply cartridge comprising a microcontroller and dedicated hardware logic which is adapted to perform mathematical calculations according to a received timing challenge. The result of the calculations and the time taken are evaluated by a host device and used to authenticate the cartridge.

Brief outline of the case

The proprietor appealed the decision to maintain the patent in amended form according to AR2.

The opponent did not participate in the appeal procedure and did not file any request/submission.

For the proprietor, the MR filed in opposition did not contravene Art 123(2).

The board disagreed.

AR 1-5 were not admitted in the proceedings pursuant Art 12(6) RPBA.

The board dismissed the appeal and hence confirmed the maintenance according to AR filed before the OD.

The interest in the case relates to the reasons why the MR contravened Art 123(2).

The problem with Art 123(2).

Claim 1 as amended states that the characterization data “enables an expected time window for completing the challenge response to be determined for a given calculation count“.

Claims 3 and 4 as filed refer to a plurality of time windows: “expected time windows” and “each time windows”.

The proprietor’s point of view

The proprietor submitted that the formulation “an expected time window” meant “one or more time windows” and notonly one time window“.

The proprietor referred to paragraph 23, in particular the penultimate sentence, and to a number of other paragraphs (12 to 14, 17, 19 to 22, 31, 33 and 34) as a basis for the wording “an expected time window“.

The proprietor argued that a skilled person would clearly and unambiguously derive, using common general knowledge, that, if a third party “counterfeit” were to fabricate its own dedicated hardware logic to meet the time requirements for one calculation count, after that it could be presumed to be of little extra effort to meet response times for other calculation counts.

What was taught in the overall disclosure was that the response time, or speed, of the dedicated logic to complete the particular mathematical calculation that iterates a number of times as determined by the calculation count was difficult for standard microcontrollers to meet, and that the quotient “time vs count” could be stored on the microcontroller as characterization data to eliminate the need for reference logic and provide forward compatibility. That was the main teaching that would be derived by the skilled person.

In a letter, the proprietor quoted in part a sentence from paragraph 23 of the application as filed “for a given calculation count value, x, an expected time, y, can be determined”.

The proprietor made the repeated criticism that the board allegedly performed “semantic” or “linguistic” analysis only and disregarded the technical teaching of the application as a whole.

The board’s decision

The board agreed that the formulation “an expected time window” meant “one or more time windows“, but considered that there was no basis in the application as filed for “one time window“.

For the board, the sentence paragraph 23 discloses that an expected time window can be determined for a given calculation count. This determination is disclosed only in combination with a mathematical relation, i.e. a formula. However, claim 1 is not limited to any mathematical relation.

Paragraphs 12 to 14, 17, 19 to 22, 31, 33 and 34, to which the proprietor referred, do not disclose a single expected time window in combination with the characterisation data. The board noted that clearly only one calculation count and one expected time window play a part during the execution of one timing challenge.

However, according to claims 3 and 4 as filed and paragraph 23, the characterisation data relates to time windows, each associated with a calculation count. Furthermore, according to claim 1 the characterisation data is stored on the microcontroller.

Finally, paragraph 32 confirms that “the characterization data includes expected time windows for receiving a challenge response from the supply device that are associated with different calculation count values“.

The board agreed that the person skilled in the art would understand from the overall disclosure of the application as filed that the main difficulty for a third party striving to fabricate a print supply cartridge lies in providing a dedicated hardware logic which is able to meet the time requirements, i.e. to perform the mathematical calculation sufficiently fast. It is also correct that the information “time vs count” could be stored as characterization data on the microcontroller.

However, with regard to the content of the characterization data stored on the microcontroller, the application as filed discloses two alternatives:

  • expected time windows and corresponding calculation count values (claims 3 and 4 as filed; paragraph 23 on page 10, lines 2 to 10; paragraph 32, last three lines on page 16) or
  • mathematical relation (paragraph 23 on page 10, lines 10 to 13).

None of these alternatives provides a basis for deriving, directly and unambiguously, characterization data which enables a single expected time window to be determined for a given calculation count value.

By quoting only part of a sentence from paragraph 23, the proprietor omitted the preceding word “thus“. The adverb “thus” clearly indicates a logical conclusion which follows from the previous sentence which defines the mathematical relation.

The board further noted that the common general knowledge does not supplement the disclosure as filed, but may be used only to understand and interpret the disclosure by the skilled person.

In the board’s view, semantic and linguistic analysis is important and proper, because it pertains to the meaning of the text of the application as submitted by the applicant on the filing date. It goes without saying that the technical content of the application as filed, from the point of view of the skilled person, was addressed in the discussion with the proprietor.


Whilst common general knowledge might be able to supplement the disclosure as filed when it comes to sufficiency, this is not the case when it comes to added subject-matter. It can only be used only to understand and interpret the disclosure by the skilled person.

Telling a board that its approach of the claim language issemantic” and “linguistic” might not be the best way to convince the board.

If as a representative, I want a positive decision for my client, it is best not to start brushing up the deciding body the wrong way.


Art 123(2)

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