CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 544/20 - Art 84 – The replacement of “the” by “an” does not improve clarity

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The application relates to a method and a system for generating an animated electrophysiological map, for example for visualising cardiac timing information on the surface of a three-dimensional heart model

Brief outline of the case

The application was refused by the ED for lack of N, and of IS as obiter dictum, of claim 1 of the various requests on file. A lack of clarity was never raised

The applicant appealed the decision.

In a communication under Art 15(1) RPBA20, the Board expressed the view that none of the requests on which the decision of the ED was based, were allowable, inter alia due to an objections of lack of clarity for claim 14 of all requests.

In reply, the applicant filed a new MR, new AR1-2 and kept the AR1-3 filed with the statement of grounds and renumbered as AR3-5. .

The new MR as well as the new AR1-2 were not admitted and AR3-5 were not allowable.

The application was thus refused for good.

The objectionable part of claim 14 Claim 14 of the new MR

A system for generating an animated electrophysiological map by superimposing an animated timing sequence onto an electrophysiological map, the system comprising:


superimpose, for each frame, an [deleted: the] active timing marker onto the electrophysiological map; and …..

The applicant’s position

In reply to the communication under Art 15(1) RPBA20, the applicant merely stated that claim 14 of the new MR had been “clarified” in reaction to the board’s preliminary opinion. The applicant also referred to paragraph [0044] of the description as originally filed, to which the Board had referred in its communication – in connection with inventive step – and essentially repeated a sentence from point 1.1.2 of the board’s communication.

The board’s position

The board reminded that it may, in the exercise of its discretion, rely on the criteria set out in Art 13(1) RPBA20, including the suitability of the amendment to resolve the issues which were raised by the board, and, in the present case of an amendment to a patent application, whether the applicant has demonstrated that any such amendment, prima facie, overcomes the issues raised by the board.

These criteria were not fulfilled by any of these new requests.

In its communication under Art 15(1) RPBA20, the board stated that claim 14 of the MR was contradictory. The board was of the view that part of the claim conveyed the impression that each timing marker was associated with one specific frame and was superimposed on that frame only, whereas another part of the claim suggested, on the contrary, that the timing marker was visible on more frames than just the frame on which it had been superimposed.

Claim 14 of the new MR differed from claim 14 of the original MR only by an amended article in the penultimate step defined in the claim, which reads “superimpose, for each frame, an [deleted: the] active timing marker onto the electrophysiological map”.

For the board, the applicant did not explain, and the board saw no reason, why the substitution of the definite article the” by the indefinite article an would overcome the clarity objection raised by the Board in its communication. On the contrary, the indefinite article “anprima facie reinforces the impression that each frame contains only its own distinct active timing marker.

The MR was thus not admitted. The same applied to the new AR1and AR2, the amendments of which were not overcoming objections of added matter.

The new AR3-5 were not allowable at least for the reasons, which were already set out in the communication under Art 15(1) RPBA20.

The applicant has not submitted any arguments on these issues in response to the board’s communication.


In principle, submissions filed after a communication under Art 15(1) RPBA20 are not taken into account under Art 13(2) RPBA20.

The only chance for an applicant to get a patent granted or a proprietor a patent maintained is at least to try to overcome the new objections raised in the communication of the board.

The present decision reminds that even at the third level of convergence (Art 13(2) RPBA20), a board can apply the criteria valid at the second level of convergence (Art 13(1) RPBA20). The newly raised objections should be overcome without giving raise to new objections. Here the first condition was not fulfilled.

There is thus a chance for the applicant/proprietor to grab, but for this chance to materialise good reasons are required.

It cannot be decided that, in general, the replacement of the definite article “the” by the undefined article “an” is always detrimental to clarity, but the chances that it is so are nevertheless extremely high. This is the more so, if no real explanations for the change are actually given.

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