T 0953/07 () of 17.11.2010

Summary of Facts and Submissions

I. This is an appeal of the applicant against the decision of the examining division to refuse European patent application No. 96 301 696.9.

II. The reasons given for the refusal were that the application did not meet the requirements of Article 123(2) EPC and that the subject-matter of the claims did not meet the requirements of Article 56 EPC.

III. The following document of the state of the art has inter alia been cited during the procedure before the first instance:

D4: EP 0 400 917 A.

IV. In a communication under Article 15(1) RPBA accompanying the summons to oral proceedings of 12 March 2010 the board indicated that certain definitions in the independent claims of each of the appellant's requests did not appear to have a clear and unambiguous basis in the application as originally filed, as required by Article 123(2) EPC, that the independent claims of both requests seemed to lack clarity and support in the description within the meaning of Article 84 EPC, and that it tended to the conclusion that the subject-matter of the independent claims of both requests did not involve an inventive step within the meaning of Article 56 EPC.

Oral proceedings before the board took place on 17 November 2010, at which, as he had previously informed the board, the appellant was not represented.

The appellant requested in writing that the decision under appeal be set aside and that a patent be granted based either on claims 1 to 3 filed with letter dated 6 May 2005 (main request), or on claims 1 to 3 filed with letter dated 10 April 2007 (auxiliary request). The board notes that in paragraph X. of the decision under appeal (as referred to by the appellant in his grounds of appeal) the claims are stated as having been filed with letter of 6 May 2006, whereas it is clear from the file that they were in fact filed with letter of 6 May 2005, as is also apparent from paragraph VI. of that decision.

V. Claim 1 according to the appellant's main request reads as follows:

"A method of verifying postage charges used by a mail sender against postage purchased by the mail sender, comprising the steps of:

storing a current transaction identity number at a remote centre (47);

generating a new transaction identity number, as a current transaction identity number, at the remote centre (47) each time a transaction to purchase postage is effected between the remote centre (47) and a postage meter used by the mail sender;

transmitting the generated current transaction identity number to the postage meter;

generating at the postage meter a serial number for each mail item (10) processed by the postage meter;

using a key uniquely associated with the postage meter to generate an encrypted code from the serial number and the transmitted current transaction identity number;

printing information on each mail item (10), the printed information including a franking impression (16), the encrypted code and a meter identification number identifying the postage meter;

and, at a postal authority mail handling centre (37), comprising the steps of:

reading the printed information from a mail item (10) received at the postal authority mail handling centre (37);

using the meter identification number read from the mail item (10) to determine the unique key and the current transaction identity number stored in respect of the postage meter;

using the determined key to decrypt the encrypted code to yield a transaction identity number from the encrypted code; and

comparing the determined current transaction identity number with the transaction identity number yielded from the encrypted code printed in the printed information on the mail item (10)."

Claim 3 according to the appellant's main request reads as follows:

"A system for verifying postage charges used by a mail sender against postage purchased by the mail sender, comprising:

a remote centre (47) including:

memory means (50) storing a current transaction identity number; and

means operative each time a transaction to purchase postage is effected between the remote centre (47) and the postage meter located at the mail sender to generate a new transaction identity number, as a current transaction identity number stored in the memory means (50), and transmit the generated current transaction identity number to the postage meter;

the postage meter including:

a mail item counter operative to generate a serial number for each mail item (10) processed by the postage meter;

coding means operative to use a key uniquely associated with the postage meter to generate an encrypted code from the serial number and the transmitted current transaction identity number;

printing means (27) for printing information on each mail item (10); and

control means operative to control the printing means (27) to print, on each mail item (10), printed information including a franking impression (16), the encrypted code and a meter identification number identifying the postage meter;

and a postal authority mail handling centre (37) including:

reading means (31) to read the printed information on each mail item (10);

means responsive to the reading means (31) and operative in response to the meter identification number read from a mail item (10) to determine the unique key and the current transaction identity number stored in respect of the postage meter;

decoding means responsive to the determined key to decrypt the encrypted code to yield a transaction identity number; and

comparison means to compare the determined current transaction identity number with the transaction identity number yielded from the encrypted code printed in the printed information on the mail item (10)."

The claims according to the appellant's auxiliary request differ from those of his main request only in that in each of claims 1 and 3 the expression "a key uniquely associated with the postage meter" is replaced by the expression "a unique key associated with the postage meter".

VI. The appellant's arguments in his grounds of appeal, to the extent that they are relevant to the present decision, are essentially as follows:

The definition of the unique association of the key with the postage meter in the independent claims of the main request had a basis in claims 1 and 3 as originally filed, supported by the disclosure of page 11, lines 20, 21 and 25 to 28 of the application as filed.

The document D4 was concerned with the checking of batches of mail, and therefore did not provide any suggestion of a link between the coding/decoding of the printed information in the franking impressions and the identification of the terminal which produced those franking impressions.

The appellant did not file any substantive response to the communication from the board of 12 March 2010.

Reasons for the Decision

1. The appeal is admissible.

2. Amendments (Article 123(2) EPC)

2.1 The application as filed does not directly and unambiguously disclose that the key used for the encryption process is "uniquely associated with the postage meter", as defined in the independent claims 1 and 3 of the main request. The appellant has argued that the references in original claims 1 and 3 to the unique key and the two references to the meter licence number on page 11 of the original description provide a basis for this definition. The board notes however that the original claims defined at most that the meter identification number could be used to determine the unique key, which would not require a unique (i.e. one-to-one) association between the two, and that the cited passage on page 11 has the same meaning, except that it uses the term "meter license number" instead of "meter identification number". Both of these passages are thus equally consistent with the unique key being associated with a particular user or user account, which could cover a plurality of individual postage meters, so that neither discloses that the key is uniquely associated with the meter.

2.2 Furthermore, there is no clear and unambiguous basis in the application as filed for the feature of claims 1 and 3 of both the main and the auxiliary request that the transaction which causes a transaction identity number to be generated is a "transaction to purchase postage".

2.3 Therefore, the main request does not meet the requirements of Article 123(2) EPC for the first of these reasons, and the auxiliary request does not meet those requirements for both of these reasons.

3. Clarity and Support in the Description (Article 84 EPC)

3.1 The first two method steps defined in claim 1 of each request comprise storing a current transaction identity number, then generating a new transaction identity number (which is subsequently transmitted to the postage meter). This is clearly in itself not logical, and is moreover not consistent with the description of column 7, lines 15 to 17 (of the published application), since the functioning of the overall method clearly requires that the stored transaction identity number should be the newly generated one, not the previous one. The order of these two steps in the claimed method is therefore both unclear and inconsistent with the description.

3.2 The third from last step of the method of claim 1 of each request comprises "using the meter identification number read from the mail item" to determine the unique key and the current transaction identity number "stored in respect of the postage meter", but does not define how the meter identification number can be used for this purpose. From the description of this embodiment in column 7 of the published application it appears that this process requires that a database be established at the remote centre in which not only is the current transaction identity number stored (as already defined in the claim), but also the meter identification number of the postage meter to which that transaction identity number applies, and the unique key associated with that postage meter, neither of which is defined in the claim (in particular since this section of the claim does not define where this step is carried out), and that the "using" comprises consulting that database. These claims therefore do not include all of the technical features which according to the application are essential for the claimed invention, so do not clearly define the invention. A similar objection applies to the corresponding definition in claim 3 of both requests.

3.3 Thus for both of the above reasons the claims of both requests do not satisfy the requirements of Article 84 EPC concerning clarity and support in the description.

4. Inventive step (Article 56 EPC)

4.1 The document D4 describes (see e.g. column 1, lines 1 to 6) a method of verifying postage charges used by a mail sender against postage purchased by the mail sender. The method of the main embodiment of that document comprises the following steps:

(a) generating a new transaction identity number (referred to there as a transaction confirmation number), which functions as a current transaction identity number, this being generated at a remote centre (computer system 18 at the Postal Authority computer centre) when a transaction to purchase postage is effected between the remote centre and a postage meter used by the mail sender (see D4, column 3, line 38 to column 4, line 7, describing that the computer system 18 generates a "set of instructions", which includes the transaction confirmation number, in response to a request for postage from the terminal 10 at the mail sender's office);

(b) storing the current transaction identity number at the remote centre (this is not stated explicitly in D4, but since the passage at column 5, lines 30 to 35 describes a cross-check between the terminal 23 at the mail centre and the computer system 18 relating to the data stored in the computer for the current mail batch, that data must be stored in that computer system, i.e. at the remote centre);

(c) transmitting the generated current transaction identity number to the postage meter (see column 4, lines 1 and 2);

(d) generating at the postage meter a serial number for each mail item processed by the postage meter (i.e. the item number described at column 4, lines 9 and 10);

(e) printing information on each mail item, the printed information including the current transaction identity number and the serial number (column 4, lines 7 to 13);

and at the postal authority mail handling centre:

(f) reading the printed information from a mail item received there (column 5, lines 20 to 24); and

(g) comparing the read data (indirectly via the comparison of that data with the data on the batch label) with the data stored at the remote centre (column 5, lines 27 to 35).

4.2 The method of claim 1 of the appellant's main request thus differs from what is explicit in the above disclosure of D4 in that:

i. at the postage meter an encrypted code is generated from the serial number and the current transaction identity number using a key uniquely associated with that postage meter;

ii. the printed information includes:

a) also a franking impression;

b) the current transaction identity number and the serial number in the form of the encrypted code; and

c) also the meter identification number;

iii. the meter identification number read at the mail handling centre is used to retrieve the unique key and the current transaction identity number (from the remote centre);

iv. the retrieved unique key is then used to decrypt the encrypted code to yield the transaction identity number; and

v. the comparison includes comparing the decrypted transaction identity number with that retrieved from the remote centre.

4.3 However D4 also describes from column 5, line 50 to column 6, line 2 that the printed information (which from above includes the transaction identity number) can be "coded", and that this can be done using pseudo-random number generators, which implies that the "coding" is actually encryption. The pseudo-random numbers generated can be considered to be unique keys within the meaning of the present application, and are described as being generated identically at both the postage meter (terminal 10) and the postal authority (terminal 23). Since this process is described as being linked to a particular user's terminal, the obtaining of the correct key (pseudo-random number) would require a cross-referencing between the meter identification number and the key, and the subsequent decoding of the printed information read from the mail item using that key would yield the transaction identity number, which would then form part of the comparison data. Moreover, this requirement to cross-reference to the terminal (and thus to the meter identification number) implies that the meter identification number must be printed on the mail item and/or on the associated batch label. Selecting at least the former of these would represent a trivial choice for the skilled person. Thus by implementing this suggestion of D4 in an obvious manner, the skilled person would arrive at a method including not only the steps listed in section 4.1 above, but also all of the features listed in section 4.2 above except feature ii. a), which is however conventional in metered mail systems, so would also be obvious to the skilled person. Therefore the subject-matter of claim 1 of the appellant's main request does not involve an inventive step within the meaning of Article 56 EPC.

4.4 In the context of the above argument the board notes that in his statement of grounds of appeal the appellant states more than once that D4 provides no suggestion of the link between the coding/decoding and the identification of the terminal which produced the franking impressions. However, the board notes that the sentence spanning columns 5 and 6 of D4 suggests exactly such a link, since it indicates that the pseudo-random number generators in the coding device (which is in terminal 10, which corresponds to the postage meter of the present application) and the decoding device (which is in terminal 23 at the postal authority) "step on in synchronism for each batch from a user's terminal". Thus the actions carried out by the decoding device at the postal authority would have to be linked to a particular postage meter (or at least to a particular user).

4.5 The board notes also that the pseudo-random number of D4, as discussed in the previous paragraphs, can be seen as corresponding to the unique key according to the definition in either of the appellant's requests, and that the two requests are otherwise identical, so that the above conclusion concerning lack of inventive step applies also to claim 1 of the appellant's auxiliary request. Moreover, since in each request the independent claim 3 defines merely a system comprising means for carrying out the method steps defined in the corresponding claim 1, this conclusion also applies to both of those claims.

5. Since for the above reasons both requests contravene the requirements of Articles 56, 84 and 123(2) EPC, neither request is allowable.

Order

For these reasons it is decided that:

The appeal is dismissed.