The invention concerns electronic modules such as the circuits found on smart cards.
[…] Claim 1 of the main request defines in its preamble that the electronic module comprises a lead frame consisting in a metallic layer, wherein the contact layout of the metallic layer is divided into two areas: a central area and an outer area. The central area contains an integrated circuit and conducting connections to the contact surfaces of the lead frame, surrounded by a casting compound. The outer area is largely free from casting compound. The first characterising feature now requires that the metallic layer has relieving areas “in the transition between the central area and the outer area.” [4.1]
This feature is not comprised in the claims as initially filed.
Such an indication is not found expressis verbis in the description as initially filed either. As far as the description as initially filed, according to the published A-document, refers to the location of the relieving areas, it indicates that relieving areas having the shape of punched holes (Stanzungen), perforations or windows in the outer area of the module, preferentially “as close as possible to the central area” or “in the immediate vicinity of the central area”.
As regards the division of the contact layout into a central area and an outer area, the description as initially filed contains the indications that the central area comprises the sensitive parts of the electronic module, which are cast within a casting compound, and that the central area is relatively rigid thanks to the casting compound, whereas the outer area consists in the contact layout and the thin metal layer only and has the function of connecting the module with the data carrier. [4.2]
According to the [patentee] the indications of the present claim have to be interpreted in the light of the whole disclosure provided by the description and the drawing. Such an interpretation using A 69 is necessary if only because of the ambiguity of the relative term “transition”. This term might indeed refer to a border (Grenze), but it could also be a reference to an area of transition on both sides of the border.
[The patentee] pointed out that neither the claim nor the description as initially filed contained a precise definition of the extent of the central area and the outer area. Therefore it would be inadmissible to consider that the outer border (Rand) of the casting compound forms a sharp limitation of the central area. The central area was primarily the area in which the integrated circuit and its conducting connections to the contact surfaces of the lead frame are found. Where the border of the casting compound was located precisely did not matter, as could be seen from the indications of the published application. […]
Therefore, it would be clear for the skilled person from the description as initially filed that there was a transition area between the central area and the outer area, which transition area extended in principle to both sides of the border of the casting compound. This being said, according to the invention, the relieving areas were only provided in the portion that was located outside the casting compound. [4.3]
The Board cannot endorse this opinion.
First, the argument according to which technical information that was incorporated into a claim by an amendment of the application documents could be interpreted onto the initial content of the disclosure of the application so as to avoid a conflict with the requirements of A 123(2), has to fail (cf. also T 1018/02 and T 277/01). A 69(1), which was adduced by the [patentee] in order to justify its opinion, concerns the extent of protection conferred by a patent. When the Boards of appeal refer to this article in their decisions, as a rule they deal with problems related to a modification of the extent of the protection, or, from time to time, with problems related to the clarity of a claim, in cases where the description provides a “lexicon” for the terminology of a claim feature that is to be assessed. This is not the case here, because the expression “transition between the central area and the outer area” is not found in the description and, therefore, is not explained at all.
Moreover, the present claim 1 and, in particular, the criticized feature, have a clear technical meaning and do not have to be interpreted via the description (cf. T 1018/02 [3.8]). Present claim 1 unambiguously defines a metal layer that is divided into two areas by the layout. No further area is mentioned. Therefore, the location “in the transition between” these areas can only mean that the relieving areas are disposed on their common border. That this border is identical with the border of the casting compound can be derived from the indication of claim 1 according to which the outer area is “largely free from casting compound”. Incidentally, this fact is the basis and justification for replacing the term “central area” by “casting compound” in the auxiliary requests filed by the [patentee].
However, a structure wherein the relieving areas are provided on the border between the central area and the outer area are not disclosed in the application documents as initially filed. Rather, as mentioned [above], the relieving areas of the description as initially filed, are provided in the outer area of the metallic layer, “as close as possible to the central area” or “in the immediate vicinity” of the central area.
Finally, the application documents as originally filed do not disclose any “transition area” whatsoever. The indications relied on by the [patentee] are not clear and unambiguous. [4.4]
It follows that the feature of claim 1 of the main request according to which the relieving areas are provided “in the transition” between the central area and the outer area of the metal layer is not disclosed in the initially filed application documents.
Therefore, A 123(2) is opposed to the request to maintain the patent on the basis of the main request. [4.5]
Besides the useful reminder on the role of A 69, this decision illustrates the imperative need to provide clear and delimiting definitions for features (here: “central area” and “outer area” of the metallic layer) that might become crucial for establishing novelty and inventive step.
To read the whole decision (in German), click here.
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