T 0415/04 () of 28.4.2006

Summary of Facts and Submissions

I. The appellant (applicant) lodged an appeal against the decision of the Examining Division refusing European patent application No. 98 949 629.4.

The Examining Division held that claim 1 of both a main request and an auxiliary request lacked novelty in view of the disclosure of document D3 (see section III below) and hence did not comply with the requirements of Article 54 EPC.

II. The appellant requests that the decision under appeal be set aside and that the case be remitted to the first instance for further prosecution on the basis of claims 1 to 18 filed on 20 April 2006.

III. The following documents are referred to in the present decision:

D1: US-A-5,465,213

D2: US-A-3,982,744

D3: US-A-4,839,829

D4: US-A-4,528,643

D5: WO 97/30425

IV. Claim 1 of the sole request of the appellant reads as follows:

"1. A system for distributing and manufacturing books, comprising:

a plurality of vending machines each comprising an input means for inputting requests for books, and printing and binding means for printing and binding books upon receipt of book text data and control data, the printing and binding means comprising

a receiving means for receiving data corresponding to the content of a book;

a formatting means for formatting the text of the book into a book distribution;

a printing means for printing the content of the book on paper sheets upon receipt of a signal from said receiving means;

a clamping means for clamping the printed pages into a book block; and

a glueing means for applying glue to the spine of the book block, the system further comprising

at least one central distribution unit which receives requests for selected book texts and causes said book text and control data to be transferred as an electronic text file to at least one of said plurality of vending machines, wherein said central distribution unit and one or more of said plurality of vending machines are geographically separated."

V. The appellant argued that the amendments made to claim 1 do not extend beyond the content of the application as filed and that the subject-matter of claim 1 is novel, in particular having regard to the disclosure of document D3.

Reasons for the Decision

1. Amendments

Claim 1 of the sole request of the appellant is based on claim 15 as originally filed (see WO 99/17934). The features of the printing and binding means as defined in claim 1 are specified in claim 1 as filed. The feature of claim 1 according to which the printing and binding means is comprised in vending machines is disclosed at page 3, lines 15 to 17 and 25 to 28 of the application as originally filed.

The subject-matter of claim 1 thus complies with the requirements of Article 123(2) EPC.

2. Novelty

Document D3 discloses a printing control system comprising at least one user facility 12 and at least one printer facility 36, 46, 68, both the user facilities and the printer facilities being connected to a remote central computer 10. This allows the user at the user facility to specify the printing parameters of a book printed at the printer facility. There is not, however, any disclosure of printing and binding means comprising clamping means and glueing means as specified in claim 1.

Document D1 relates to a system for distributing and manufacturing books, in which manufacture of a book, including printing and binding takes place at selling points connected to a remote central distribution unit. There is not, however, any disclosure of formatting means at the selling points. Rather, as disclosed at column 2, lines 63 to 67 of the description, the book text is stored in the central distribution unit in a digital book-description format. Document D5 discloses a similar system.

Document D2 is concerned with a method of preparing a personalised book, but does not disclose the combination of a central distribution unit and a plurality of vending machines.

Document D4 discloses a system in which objects, including books, are manufactured at a point of sale, that is, in the terms of claim 1, a vending machine. There is, however, no disclosure of the point of sale incorporating a formatting means for formatting the text of a book into a book distribution.

The subject-matter of claim 1 according to the sole request of the appellant is thus novel within the meaning of Article 54 EPC having regard to the cited prior art.

3. The Examining Division has not yet had the opportunity of considering the question of whether the application meets the remaining requirements of the EPC, including the question of inventive step. It is thus considered appropriate to remit the case to the department of first instance for further prosecution.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the first instance for further prosecution.