T 0868/07 () of 16.3.2010

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division to refuse European patent application No. 04 012 122.0, which is a divisional application of European patent application No. 99 112 976.8.

II. The present divisional application was refused on the ground that the subject-matter of independent claims 1 and 4 lacked an inventive step (Article 56 EPC 1973).

III. The appellant appealed and filed replacement claims 1 and 4 with the statement of grounds of appeal. The appellant requested oral proceedings as an auxiliary measure.

IV. The board issued a communication dated 2 November 2009 and, pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), annexed to a summons to attend oral proceedings. In this communication the board expressed doubts whether the application complied with Article 76(1) EPC 1973 and with Article 123(2) EPC. The board also made remarks concerning the appellant's arguments as to inventive step given in the statement of grounds of appeal.

V. In response, the appellant filed respective claims 1 to 5 according to a main and an auxiliary request with a letter dated 16 February 2010.

VI. Oral proceedings were held on 16 March 2010. In the oral proceedings the appellant filed claims 1 to 5 and description pages 2, 2a, 2b, 7, 10, 11, 13 and 15 of a single request.

VII. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 5 according to the single request, filed in the oral proceedings.

VIII. Claim 1 of the single request reads as follows.

"A network facsimile apparatus (201) connectable to a terminal apparatus (202) via a network, comprising:

a printer (6),

storing means (4) for storing different status image files for visually indicating a respective one of a plurality of possible statuses of the printer (6),

obtaining means (1) for obtaining periodically or on real time current status information of the printer (6),

generating means (41) for generating an HTML file for a webpage, wherein the HTML file includes a name of a first status image file of the status image files stored in the storing means (4) that is corresponding to the current status information of the printer (6) obtained by the obtaining means (1),

transmitting means (31) for transmitting, in response to a request from the terminal apparatus (202), the HTML file that has been generated by the generating means (41) to the terminal apparatus (202) so that the webpage including a status image of the status image file indicating the status information is displayed at the terminal apparatus (202),

wherein the generating means (41) is adapted to update, in response to the obtaining means (1) detecting that the status information of the printer (6) has changed, the HTML file according to the current status information of the printer (6) by changing the name of the first status image file to a name of a second status image file of the status image files corresponding to the current status of the printer (6), and

wherein the transmitting means (31) is adapted to transmit the HTML file updated by the generating means (41) to the terminal apparatus (202) in response to the user at the terminal apparatus (202) selecting a predetermined icon displayed in the webpage, whereby the status image of the second status image file is displayed at the terminal apparatus (202)."

Claim 5 of the single request reads as follows.

"A method for checking a status of a network facsimile apparatus (201) connectable to a terminal apparatus (202) via a network, the method comprising the steps of:

storing in storing means of the network facsimile apparatus (201) status image files for visually indicating a respective one of a plurality of possible statuses of a printer (6) of the network facsimile apparatus (201),

obtaining by obtaining means (1) of the network facsimile apparatus (201) periodically or on real time current status information of the printer (6),

generating by generating means (41) of the network facsimile apparatus (201) an HTML file for a webpage, wherein the HTML file includes a name of a first status image file of the status image files stored in the storing means (4) that is corresponding to the current status information of the printer (6),

transmitting in response to a request from the terminal apparatus (202) the HTML file that has been generated to the terminal apparatus so that the webpage including a status image of the status image file indicating the status information of the printer (6) is displayed at the terminal apparatus (202),

detecting by the obtaining means (1) that the status information of the printer (6) has changed, and in response thereto updating the HTML file according to the current status information of printer (6) by changing the name of the first status image file to a name of a second status image file of the image files corresponding to the current status of the printer (6), and

transmitting the updated HTML file to the terminal apparatus (202) in response to a user at the terminal apparatus (202) selecting a predetermined icon displayed in the webpage, whereby the status image of the second status image file is displayed at the terminal apparatus (202)."

IX. At the end of the oral proceedings the chairman announced the board's decision.

X. The reasons for the decision under appeal which are applicable to the present amended claims can be summarised as follows.

The relevant prior art documents were

D1: EP 0 874 306 A2,

D3: EP 0 867 817 A2 and

D5: EP 0 886 206 A2.

D1 disclosed a facsimile network system wherein HTML webpages were used as an interface for status control. In particular, a user could query the status of each connected facsimile device and receive a reply. The claimed subject-matter differed from the system of D1 in that the status information was provided to the user through image files and in that the status information could be refreshed by clicking a button displayed on the user webpage. A person skilled in the art would have applied the disclosure of D5 in order to improve the facsimile network's user interface and would thus have considered the display of information through images. D5 disclosed a printer network in which a home page transmitted by a server provided printer status data. This home page contained multiple buttons which the user at a terminal apparatus could click. Furthermore the use of refresh buttons was known in the art of HTML pages. Hence the use of refresh buttons to refresh status data was not inventive.

A similar objection could be raised using D3 as the nearest prior art.

XI. The appellant's arguments can be summarised as follows.

D1 did not disclose that a printer status was displayed as a status image. Furthermore D1 did not disclose an independent update of an HTML webpage. According to D1, each time a user requested status information, all the necessary data were collected, and the HTML webpage was newly generated. According to the invention, the updating of the HTML webpage was decoupled from the users' refresh requests. The HTML webpage was updated in response to a status change being detected. Furthermore this update was particularly simple because it was based on a simple exchange of image files. The updated HTML webpage was transmitted to the user in response to a user's refresh request. But the HTML webpage was not newly generated in response to the user's request. This decoupling of the updating of the HTML webpage from its transmission to a requesting user reduced the load on the HTML generating server of the network facsimile apparatus. For instance, if many users simultaneously requested the status of the printer of the network facsimile apparatus, the server was not burdened with the task of repeatedly updating the HTML file as it had already been updated in response to the latest detected change in status.

D5 did not disclose features of the invention which were not already known from D1. In particular, D5 did not disclose how status information was updated. The CGI interface referred to in D5 resulted in users' requests causing the HTML webpage to be newly generated for each request.

D3 was not relevant because it did not concern either a printer or the updating of an HTML webpage. Efficient retrieval of printer status information was not discussed in D3.

Reasons for the Decision

1. The appeal is admissible.

2. Amendments with respect to the parent application as filed (Article 76(1) EPC 1973)

2.1 So far as Article 76(1) EPC 1973 is concerned, a divisional application which at its actual date of filing contains subject-matter extending beyond the content of the earlier application as filed can be amended later in order that its subject-matter no longer so extends, even at a time when the earlier application is no longer pending. Furthermore, the same limitations apply to these amendments as to amendments to any other (non-divisional) applications (see the order and points 7 and 8.2 of the reasons of the decision of the Enlarged Board of Appeal G 1/05 (OJ EPO 2008, 271)).

2.2 In the present case, so far as the claims are concerned, the specific feature "when the predetermined icon displayed at the terminal apparatus (202) is clicked", present in the independent claims of the divisional application as filed, was objected to under Article 76(1) EPC 1973 in the board's communication dated 2 November 2009 and has been replaced. In accordance with the jurisprudence set out in G 1/05 (loc. cit.), the application could be amended under Article 76(1) EPC 1973 so that its subject-matter no longer extended beyond the content of the parent application as filed.

2.3 In particular, the above specific feature was replaced by the more general feature "in response to the [or a] user at the terminal apparatus (202) selecting a predetermined icon displayed in the webpage" in the last paragraph of present claims 1 and 5, which is disclosed in the same context on page 3, lines 4 to 8, and page 13, lines 13 to 28, in conjunction with figures 7, 8 and 11 of the parent application as filed.

2.4 The description and drawings of the divisional application as filed are the same as those of the parent application as filed. Thus the board sees no reason for an objection under Article 76(1) EPC 1973.

3. Amendments with respect to the divisional application as filed (Article 123(2) EPC)

3.1 In accordance with established jurisprudence, confirmed by G 1/05 (loc. cit.), the amendments made to the present divisional application must also comply with Article 123(2) EPC (see also point 2.1 above).

3.2 The subject-matter of present claim 1 is disclosed in claim 10 and in the description of the divisional application as filed. In particular, the features of the storing means are disclosed on page 4, lines 26 to 37, in conjunction with page 12, lines 1 to 11. The features of the obtaining means are disclosed on page 8, lines 3 to 9, in conjunction with page 10, lines 27 to 32. The features of the generating means are disclosed on page 10, line 20, to page 12, line 27. The features of the transmitting means are disclosed on page 8, line 37, to page 10, line 8, in conjunction with page 13, lines 25 to 28.

The more general feature "in response to the user at the terminal apparatus (202) selecting a predetermined icon displayed in the webpage" in the last paragraph of present claim 1 is disclosed in the same context on page 3, lines 4 to 8, and page 13, lines 13 to 28, in conjunction with figures 7, 8 and 11.

3.3 The features of claims 2 and 3 are disclosed, for instance, in figure 9 and in claims 14 and 18. They are also disclosed on page 12, lines 22 to 27, and page 12, lines 1 to 11, respectively.

3.4 The features of claim 4 are disclosed in figure 8 and on page 10, lines 17 to 19.

3.5 The method of claim 5 corresponds to the apparatus of claim 1 and is disclosed in the same parts of the (divisional) application as filed.

3.6 The amendments to the description bring the description into line with the claims and acknowledge the prior art.

3.7 Hence the board sees no reason for an objection under Article 123(2) EPC.

4. Novelty (Article 54(1), (2) EPC 1973) and clarity (Article 84 EPC 1973)

The novelty of the claimed subject-matter and the clarity of the claims have not been challenged in the decision under appeal. The board has no objections in this respect either.

5. Inventive step (Article 56 EPC 1973)

5.1 It is undisputed that D1 may be considered as the closest prior art.

D1 discloses a network facsimile apparatus connectable to clients ("terminal apparatus" in the terminology of present claim 1) via a network (page 3, lines 29 and 30 in conjunction with lines 45 to 49, and page 4, lines 23 to 27). Queries are directed from a client to the (network facsimile) apparatus by means of the client's browser and may be processed by use of an HTTP server (page 4, lines 27 to 58). The queries enable the client user to get current status information on the (network facsimile) apparatus (page 5, lines 41 to 49, and page 9, lines 27 and 28). Thus far the board agrees with the decision under appeal.

5.2 However none of the documents on file disclose a generating means for generating an HTML file as specified in present claim 1.

According to D1, a database is updated periodically (page 9, line 49, to page 10, line 1), but D1 does not disclose that an HTML file is updated as well. Instead the HTTP server comprises a Common Gateway Interface (CGI), which allows the creation of HTML webpages in reaction to a browser request.

According to D3, a user may select an "INQUIRE" button regarding the operation state in an operation menu, whereby the server returns the operation state (see figure 22 and column 28, line 26, to column 29, line 25). A job management section keeps track of the operation state (see figure 20 and column 27, line 35, to column 28, line 4). But D3 does not specify how HTML files to be transmitted to the clients are updated.

According to D5, a server maintains a printer home page which provides data regarding the properties of the printer, such as whether it is on-line (column 4, lines 9 to 23). But D5 does not disclose how HTML files to be transmitted to the clients are updated.

5.3 The decision under appeal does not give reasons why updating the HTML file by the generating means as specified in present (amended) claim 1 would have been obvious to a person skilled in the art. The argument that it was obvious to update status information by clicking on generally known refresh buttons does not take into account how, according to amended claim 1, the current status information is obtained periodically or in real time and the HTML file is updated in response thereto, by storing different status image files. A user at the terminal apparatus selecting a predetermined icon causes the updated HTML file to be transmitted. The appellant's arguments as to the technical effects of the generating means in the context of the subject-matter of claim 1 have convinced the board that, having regard to the state of the art on file, the network facsimile apparatus according to claim 1 was not obvious to a person skilled in the art.

5.4 Hence the board judges that the network facsimile apparatus according to claim 1 involves an inventive step (Article 56 EPC 1973). The same reasoning applies to claim 5, which comprises corresponding method features, and to dependent claims 2 to 4.

6. The board sees no other reason why the application with the documents presently on file and the invention to which it relates do not meet the requirements of the EPC.

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 with the order to grant a patent in the following version:

Description:

Pages 1, 3 to 6, 8, 9, 12, 14 as originally filed.

Pages 2, 2a, 2b, 7, 10, 11, 13, 15 filed during

oral proceedings of 16 March 2010.

Claims:

No. 1 to 5 filed during oral proceedings of

16 March 2010.

Drawings:

Sheets 1/12 to 12/12 as originally filed.