T 1576/06 (Storing agents coupons/BURROWS) of 22.6.2007

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse the application on the ground that claims 10 and 15 contained subject-matter that extended beyond the content of the application as filed (Article 123(2) EPC). In an extensive "obiter dicta", the examining division inter alia also gave reasons why the new drawing on page 2/3 was an extension of subject-matter and why claims 1 to 18 did not involve an inventive step (Article 56 EPC) over the common knowledge of a software programmer as the skilled person.

II. In the grounds of appeal, the appellant requested that a patent be granted on the basis of the originally filed application with an additional claim 19, and new pages 1 and 2 of the description.

III. In the communication accompanying the summons to oral proceedings, the Board summarised the issues to be discussed and expressed some doubts about the admissibility under Article 123(2) EPC of a feature introduced into the description, and the inventive step of the claims.

IV. In the response to the communication, the appellant filed a new main and auxiliary request and submitted the "IATA BSP Manual for Agents" (hereinafter D1), published before the priority date of the application as evidence of the thinking in the airline industry at the time the invention was made. The appellant further requested postponement of the oral proceedings scheduled for 22 June 2007, until the following year.

V. At the oral proceedings, which the Board did not postpone, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 18 of the main request, or claims 1 to 17 of the first auxiliary request, both filed with the response to the communication, dated 6 June 2007, or claims 1 to 17 of the second auxiliary request filed during the oral proceedings. The third auxiliary request was remittal to the examining division for further prosecution. At the end of the oral proceedings, the Chairman announced the decision.

VI. Claim 1 of the main request reads as follows:

"A computer implemented method for electronically generating, storing and retrieving data inputted for electronic generation of a structured document image including said data in a selected format as in a ticket or like article, comprising the steps of:

- generating and capturing said data with the printing of the same while simultaneously transmitting said data to data storage apparatus;

- providing said data transmitted to the data storage apparatus with an identifier;

- storing said transmitted data in a director/directory/image file arrangement; and

- retrieving said electronically stored data for display, electronic transfer or printout in the format of an agent coupon."

Claim 1 of the first auxiliary request reads:

"A computer implemented method for electronically generating storing and retrieving airline ticket agency coupon data, comprising the steps of:

- generating and capturing agent coupon data with the printing of an airline ticket presenting same while simultaneously transmitting said agent coupon data to data storage apparatus;

- providing each agent coupon data with an identifier;

- storing said agent coupon data in a director/directory/image file arrangement; and

- retrieving said electronically stored agent coupon data and printing the same."

Claim 1 of the second auxiliary request corresponds to claim 1 of the first auxiliary request with the first feature amended to read:

"generating agent coupon data and transmitting said agent coupon data to data storage apparatus simultaneously with printing of an airline ticket presenting same"

VII. The appellant argued essentially as follows:

The invention had two key aspects. Firstly, the well-established paper system for travel agent coupons was replaced by an electronic repository. Secondly, the agent coupons were stored simultaneously with the printing of the ticket.

The invention solved the problem of improving the previous system of physically storing the agent coupons. According to decision T 422/93, the skilled person was the travel agent faced with this problem and not someone with computer knowledge. The examining division's line of argument was therefore incorrect.

D1 disclosed at page 69 that the physical agent coupons had to be stored for five years. There was thus a prejudice in the field against the claimed solution. In fact, it had been very difficult to convince the IATA and other authorities to use the new electronic system.

None of the prior art prompted the skilled person to use a computer. The invention was also not a typical implementation of a paperless office because paper was needed in the case of a dispute and a hard copy of the agent coupon had to be printed. Nevertheless, not all ideas involving the concept of a paperless office were obvious and there was room for further invention.

The output from the standard ticket reservation system was plugged into the system of the invention, which replaced the printer. The system captured the agent coupon data from the print signal (thus simultaneously) and stored it. The feature of "capturing" was supported by Figure 1 and the passages on page 7, lines 9 to 12 and lines 16 to 18.

Even if there was no support for the term "capturing", the generating and transmitting of the coupon data "simultaneously" with printing, as specified in the second auxiliary request, had the effect of making this possible.

After overcoming the prejudice against storing the agent coupons electronically, the invention enjoyed considerable commercial success in Europe and the US.

Reasons for the Decision

1. The appeal complies with the requirements referred to in Rule 65(1) EPC and is therefore admissible.

2. The Board did not allow the appellant's request for postponement of oral proceedings since the reason given, i.e. because of a corresponding case pending before the Court of Appeal of the Federal Circuit in the United States, was not considered convincing. Firstly, the request for postponement was only filed about two weeks before the date fixed and was for a considerable, albeit not precisely determined deferral ("until next year"). Secondly, it was neither explained, nor apparent to the Board whether and how the result of oral proceedings in the United States to be held before the end of the year might have rendered the present proceedings more efficient, as the appellant suggested. The Board therefore considered that the request was rather of a speculative nature and would have merely resulted in an undue delay of the proceedings.

Background to the invention

3. It is acknowledged prior art that an airline ticket contains various coupons, including an audit coupon, an agent coupon and a flight coupon and possibly a credit card charge form. The agent coupon contains data associated with the ticket, such as the name and address of the passenger, travel dates, the name of the airline, etc. The coupons may be issued manually and then validated by a ticket imprinter, or issued automatically by a printing device (see e.g. application, description of prior art and D1, page 13, points 1.2.3 and 1.2.4).

4. The application concerns the problem of storing the agent coupons, which travel agents file and keep for a certain amount of time in case there is a dispute (see application, description of prior art).

Main and first auxiliary request

5. Claim 1 of the main and first auxiliary request both contain the feature of "capturing" the (agent coupon) data with the printing while simultaneously transmitting it to the storage apparatus. It emerged at the oral proceedings that this feature was supposed to reflect a key aspect of the invention whereby, looking at Figure 1, the agent coupon data 13 was derived from the print signal of the ticket reservation system 11. This meant that the existing ticket reservation system did not need to be modified, but could be plugged into the system of the invention, which effectively replaced the printer. This feature of the electronic system apparently ultimately led to its acceptance.

6. However, despite a lengthy discussion during the oral proceedings on this point, the appellant was unable to convince the Board that the feature of "capturing" the data was directly and unambiguously derivable from the original application. Although Figure 1 appears to support the appellant's interpretation, it depicts an "Airline Ticket" at 12 giving the impression that the "Ticket Reservation System" 11 prints it, so that the print data goes in one direction and the "Agent Coupon Data" 13 goes in another direction, thus not being "captured" from the print data. Moreover, the description does not help matters either. The appellant found some support at page 7, lines 9 to 11, which states:

"The reservation system 11 can comprise the electronic apparatus that an agency normally employs to record and generate an airline ticket and the prior art agency coupon."

This could imply that the invention is used with a conventional, i.e. unmodified, ticket reservation system. However, the subsequent passage at lines 16 to 20 states:

"In accordance with the software program 14, agent coupon data 13 is simultaneously generated along with an airline ticket 12. The data 13 generated by the reservation system 11 can comprise all of the data entered onto an airline ticket, ..."

Although this acknowledges a separate program 14, which could derive the coupon data from the output of the ticket reservation system, it is unclear in that in Figure 1 the program 14 actually processes coupon data 13, but does not appear to generate it. Moreover, the passage reinforces the impression that the ticket is printed at 12 and the ticket reservation system separately produces the data for the airline ticket 12 and the agent coupon data 13. This is further reinforced by the fact that the description states, at page 9, line 6 to page 10, line 5, that printer 18 of Figure 1 is provided to print an image of the stored coupon retrieved in case of a dispute, i.e. for an entirely different purpose and not for printing the airline ticket.

7. Accordingly, the subject-matter of claim 1 of the main and first auxiliary request is not directly and unambiguously derivable from and therefore extends beyond the content of the original application (Article 123(2) EPC).

Second auxiliary request

8. Claim 1 specifies a computer implemented method of electronically generating airline ticket agency coupon data that differs from the known procedure by:

generating and transmitting the agent coupon data to data storage apparatus simultaneously with the printing of the airline ticket;

providing each agent coupon data with an identifier;

storing the agent coupon data in a file arrangement; and

retrieving and printing the data.

9. The Board considers that these features lie in the general field of business automation and solve the problem of automating the management of agent coupons under the specific business constraints for such coupons.

10. The appellant essentially argued that the requirement to retain physical copies of the agent coupons for a minimum amount of time was a prejudice against solving this problem in another way, and cited D1 as evidence of this. However, the Board first notes that the cited passage on page 69 only refers to storing the agent coupon and the credit card charge form if there is a signature on file, i.e. in the case of a credit card sale. This appears to be an unsurprising requirement that is probably necessary even with the method of the invention, but the requirement is not generally stated for all ticket sales. The Board therefore does not see the alleged prejudice. On the contrary, the Board considers that D1 rather encourages automation. It mentions at page 4, under the heading "Automation requirements - BSP of the future" that:

"BSPs will continue to invest in new technologies. Salient features of the BSPs of the future will be:

- no longer paper-based. The vast majority of transactions will be processed automatically without handling paper tickets or producing paper output reports;"

In the Board's view, it would therefore be obvious to consider automating the management of agent coupons.

11. Faced with this problem, the Board judges that electronically storing the agent coupons is an obvious possibility. Apart from the fact it is a general trend in all office environments to replace paper documents and records with electronic versions, this is explicitly foreseen in the airline ticket environment as mentioned above. The solution would not necessarily have to be "paperless" as argued by the appellant because it is self-evident that in such an environment, a hard copy of any document can be printed if required. The Board therefore judges that it would be obvious to transmit agent coupon data to data storage apparatus. It follows as a matter of routine design that the data would be provided with an identifier and that it would be stored in a file arrangement, and furthermore that it would be retrieved and printed according to requirements.

12. There are various possibilities for when to store the data. However, the Board considers that storing the data at the same time that it is printed is an obvious possibility given the fact that the stored data must correspond to the data on the customer's ticket in order to be useful for the intended purpose, namely as evidence in the case of dispute. Thus, the Board judges that the feature of generating and transmitting the coupon data "simultaneously" does not involve an inventive step.

13. The appellant argued that "simultaneously" transmitting the data had the effect of making "capturing" of the data possible. However, the Board considers that this does not make sense because it is the (unsupported) feature of the capturing that has the effect of the simultaneous transmitting and not the other way around. The simultaneous transmitting can be considered to have the effect of keeping the stored data in conformity with the printed data, which as explained above, is considered to be an obvious requirement.

14. Concerning the point about who is the appropriate skilled person to take the above steps, the Board considers that the person will generally be an expert in a technical field (see decisions cited in "Case Law of the Boards of Appeal of the European Patent Office", 5th edition 2006, European Patent Office 2006, section I.D.7.1.4). However, in the present case, the Board judges that even the travel agent's technical knowledge would be enough to recognise the problem, which is stated in a disclosure addressed to travel agents, and to realise the claimed solution, which consists of only general well-known features of storing and retrieving data under a filename. It may be that the implementation of the features requires the knowledge of a computer specialist, but these details are not claimed.

15. Accordingly claim 1 of the second auxiliary request does not involve an inventive step (Article 56 EPC).

16. Since there are no further requests, it follows that the appeal must be dismissed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.