In this recent decision, the Board of Appeal (BoA) had to consider the suitability of a machine translation of a cited document which had been used to refuse a claim for lack of inventive step.
Claim 1 under appeal was directed to an oil for dust absorption comprising, amongst other things, a nonionic surfactant (B), where B comprises two components B11 and B2 and where the quantity of B is in the range of 10 to 30% by mass of the oil.
The validity of the claims was assessed in view of two Japanese documents D1 (JP 2002-069436 A) and D4 (JP 2003-055122 A) for which machine translations into English were used.
The BoA found that, according to the problem-solution approach, the problem to be solved over D1 was the provision of an oil for dust absorption having comparable properties to D1's oil but additionally exhibiting an allergen inactivation effect.
The BoA found that the outcome of the inventiveness assessment would in effect hinge on whether modifying D1's oil by incorporating an anti-allergenic composition as described in D4 and at the same time increasing the concentration of B was obvious to the skilled person trying to solve this problem.
Lost in translation
D1 discusses the incorporation of non-ionic surfactants B11 and B2 in the oil and the incorporation of B2 is discussed in paragraph . The machine translation of the next paragraph  reads: "The amount of the surface-active agent used besides the above of below 10 mass % is 0.1 to 8 mass % still more preferably preferably [sic] among the oils of this invention."
In view of the evident lack of clarity of this sentence, the BoA found that it could be not derived unambiguously whether:
- the total amount of non-ionic surfactants (B11 plus B2) has to remain below 10 wt% and the range 0.1 to 8 wt% refers to a preferred embodiment within this broader range, or
- a content of more than 10 wt% of non-ionic surfactants is also possible, eg, in the sense of less than 10 wt% (B11) plus 0.1 to 8 wt% (B2), due to the wording "besides the above".
In the first case, D1 would teach away from using 10 to 30 wt% for B while in the second case D1 would imply a teaching towards oils falling under the terms of claim 1 at issue.
The BoA therefore found that the machine translation of D1 was too ambiguous and therefore not suitable for the assessment of D1.
Remittal to first examination was therefore ordered, along with an order to reconsider inventive step "in the light of a certified translation of D1" (BoA's emphasis).
Limitations of machine translation for assessing content
On one hand, the decision was to be expected, as it corresponds to the current practice at the European Patent Office (EPO) regarding machine translation. In effect, the true content of a disclosure in a foreign language is always that of the document in its original language and the translation only serves the purpose of making this content available in a different language. It is therefore clear that if a translation is ambiguous, it cannot serve its purpose of rendering the meaning of the text (see for example the guidelines, section G-IV 4.1) and is therefore not suitable for assessing the content of the original document.
Board of Appeal orders examination division to provide certified translation
On the other hand, this decision is very unusual in that the examining division has now been ordered to obtain a certified translation of D1 to assess inventive step of the claim. The provision of a professional translation instead of a machine translation has long been used by patentees and opponents in opposition proceedings, and by applicants who believe that a machine translation provided by the examining division does not in fact accurately reflect the content of the citation. This however appears to be the first time that the EPO is being held to its own standard regarding translation of citations and that the burden of providing a reliable translation has now been shifted to the examining division itself.
Of course, it may well be that the original disclosure of D1 was ambiguous to start with, but this was impossible to determine with the machine translation previously available and the question of the actual disclosure of D1 should now be clarified soon, once the certified translation of D1 will be provided to the applicants for this case.
Full decision of T 1343/12 (Dust adsorbing oil/UNI-CHARM) of 10.10.2014: http://dycip.com/machinetranslation