T 0589/03 (Print management/OCÉ-TECHNOLOGIES) of 25.7.2006

Summary of Facts and Submissions

I. European patent application number 99 910 872.3, International publication number WO-A-99/47 997, concerns a print data management system and method.

II. The examining division refused the application by a decision posted 12 August 2002. The invention as claimed was held to lack inventive step over the prior art disclosed in documents US-A-5 706 411 and EP-A-0 585 131.

III. The applicant lodged an appeal against the refusal decision. The notice of appeal, including a debit order for payment of the appeal fee, was filed on 9 October 2002. The written statement setting out the grounds of appeal was filed on 17 December 2002.

IV. The Board summoned the appellant to oral proceedings. In the communication annexed to the summons, the Board indicated as a provisional opinion that the decision under appeal seemed to be correct on the facts and the grounds for refusal.

V. At the oral proceedings held before the Board on 25 July 2006 the appellant filed an amended set of claims including independent claims 1 and 6, which read as follows (underlining added to highlight additions from the description to the original claims):

Claim 1: "A print data management system comprising:

means for receiving print data from a scanning operation corresponding to print documents,

memory means (104) for storing said received print data,

control means (107) for controllably reading out data from said memory means and transferring said print data to printing means, and

visual indication means (208) for informing a user of the degree of occupation of said memory means by said print data, where the visual indication means are provided as a graph showing the percentage of the memory already in use, characterized in that said visual indication means (208) has at least first (209) and second (211) visually distinct forms of indication respectively corresponding to a range of relatively low occupation and a range of relatively high occupation of said memory means (104); and in that the system further comprises setting means (108, 107) for setting the extent of at least one range (211), wherein said setting means comprises a data size determining means (107) operable to set said at least one range (211) based on the size of print documents previously received and wherein said determining means is operative to estimate the size of expected input print documents on the basis of the size of the previously received print documents through a statistical calculation."

Claim 6: "A method of managing print data in a reproduction system comprising the steps of:

receiving print data from a scanning operation corresponding to print documents,

storing said received print data in memory means (104),

controllably reading out data from said memory means and transferring said print data to printing means, and

providing a visual indication (208) for informing a user of the degree of occupation of said memory means by said print data, where the visual indication is provided by a graph showing the precentage [sic] of the memory already in use,

characterised in that said step of providing a visual indication involves providing at least first (209) and second (211) visually distinct forms of indication respectively corresponding to a range of relatively low occupation and a range of relatively high occupation; and further comprising the step of setting the extent of at least one range (211) based on the size of print documents previously received; and the step of estimating the size of expected input print documents on the basis of the size of the previously received print documents through a statistical calculation."

VI. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the set of amended claims as filed during the oral proceedings.

VII. At the oral proceedings, the matter was discussed with the appellant and after deliberation the Board announced the decision.

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rules 1(1) and 64 EPC and is thus admissible.

2. The decision under appeal is to be reversed since the amendments are admissible and remove the objections which are material to the decision under appeal (see points 3 to 6 below). The grant of a patent is not possible at this stage of the proceedings as the amended claims have not yet been the subject of a substantive examination; remittal of the case to the examining division for further prosecution is therefore necessary (see point 7 below).

Admission of the amended claims

3. The amended claims are admitted to the proceedings at the Board's discretion, despite the late filing of the amended claims during the oral proceedings in July 2006. The admission has been allowed since the present appeal case is ex-parte and would have been remitted by the Board even if the amended claims had been filed earlier.

Admissibility of the amendments

4. The Board is satisfied that the amendments comply with Article 123(2) EPC:

4.1 The amended claims result, to a large extent, directly from a combination of original independent claims 1 and 9, respectively, with the subject-matter of dependent claims 6 to 8 and 10, respectively. There are also additions taken from the description: the print data are received from a scanning operation corresponding to print documents; the visual indication is provided by a graph showing the percentage of the memory already in use; and the size of the expected input print documents is estimated through a statistical calculation.

4.2 The amendment concerning the scanning operation was already accepted by the examining division. There is nothing to add to this.

4.3 The additional features that the print data correspond to print documents and the visual means are provided as a graph follow directly from the International publication, for example page 1, lines 23 to 25 and page 3, lines 2 to 3, respectively.

4.4 The statistical calculation of the size of the expected print documents is disclosed as an embodiment on page 4, lines 4 to 6 and on page 7, line 34 to page 8, line 8 of the International publication.

Other claim requirements

5. The claim requirements of Article 84 EPC are fulfilled: the claims are sufficiently clear and supported by the description to allow a substantive examination on novelty and inventive step.

Reversal of the decision under appeal

6. The decision under appeal cannot be maintained in view of the present limitations of the claims. In particular, the estimation of the size of the expected input print documents through a statistical calculation was not (and could not) be taken into account by the examining division in refusing the application. There are also no other grounds apparent from the file which, prima facie, may justify the refusal of the application so that the decision under appeal has to be set aside.

Remittal to the examining division

7. The case is to be remitted to the examining division for further prosecution since the amended claims, in particular in respect to the determination of the size of the expected input print documents, have still to undergo a full substantive examination, which may include a further search in the prior art.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution on the basis of the set of amended claims filed during the oral proceedings before the Board of Appeal.