T 0771/09 () of 10.9.2013

Summary of Facts and Submissions

I. The appeal is against the decision of the Examining Division refusing European patent application

No. 01 967 914 on the ground that the subject-matter of claim 1 did not involve an inventive step within the meaning of Article 56 EPC.

II. Together with the letter stating the grounds of appeal, the appellant filed claims 1-7 and requested in writing:

- "that the decision to refuse the patent application is set aside and that the application is remitted to the Examining Division for continued prosecution based on the enclosed set of amended claims and that the application then is granted".

The appellant also requested oral proceedings on a conditional basis.

III. Together with a summons to oral proceedings, the Board sent the appellant a communication under Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA) setting out the provisional view of the Board that claim 1 did not appear to meet the requirements of Article 123(2) EPC, and that the same appeared to apply to dependent claims 2-7. A preliminary discussion of the question of inventive step was also included.

IV. In a fax dated 9 August 2013 the Board was informed that the appellant had decided not to participate in the oral proceedings.

V. Oral proceedings were held before the Board on 10 September 2013. Nobody appeared for the appellant. At the end of the oral proceedings the chairman announced the decision of the Board.

VI. Claim 1 filed with the letter stating the grounds of appeal reads (reference numbers have been omitted):

Banknote handling machine for feeding banknotes into and out of one banknote magazine included in the banknote handling machine,

characterised in that said banknote handling machine comprises

- at least one deposit location,

- at least one withdrawal location,

- at least one combined deposit/withdrawal location,

- banknote detecting means for identifying deposited banknotes, and

- banknote packaging means to package any forged and unusable banknotes that may have been detected,

and that said banknote magazine comprises a number of sub-magazines, wherein all said locations being served by said one banknote magazine.

Reasons for the Decision

1. The appeal is admissible.

2. As announced in advance, the duly summoned appellant did not attend the oral proceedings. According to Rule 71(2) EPC 1973, the proceedings could however continue without the appellant. In accordance with Article 15(3) RPBA, the board relied for its decision only on the appellant's written submissions. The board was in a position to decide at the conclusion of the oral proceedings, since the case was ready for decision (Article 15(5) and (6) RPBA), and the voluntary absence of the appellant was not a reason for delaying a decision (Article 15(3) RPBA).

3. Article 123(2) EPC

3.1 Claim 1 as filed with the letter stating the grounds of appeal is directed to a banknote handling machine comprising inter alia:

"at least one deposit location, at least one withdrawal location" and "at least one combined deposit/withdrawal location".

No restriction is imposed by the claim on the positions of these respective "locations". The claimed subject-matter therefore covers banknote handling machines having at least one of each of a deposit location, a withdrawal location and a combined deposit/withdrawal location, with these locations being situated at any position whatsoever on the machine. It must therefore be asked whether there is an adequate basis in the application as filed for a banknote handling machine defined in this manner.

3.2 Turning first to the claims of the application as filed, claim 1 concerns an "arrangement or system for maximum cost-effective handling of banknote flows within a given geographically restricted area". The arrangement or system comprises inter alia an inner wall which divides a locality into an outer room and an inner room. Within the context of this arrangement, a banknote handling machine is disclosed which is orientated through the said inner wall, i.e. one part of the banknote handling machine is situated in the inner room and another part is situated in the outer room.

Claim 1 as originally filed also defines that the banknote handling machine includes "an infeed or deposit location and at least one outfeed or withdrawal location in the outer room and a combined infeed/outfeed location in the inner room". This feature clearly imposes a limitation on the banknote handling machine in that the deposit, withdrawal and combined deposit/withdrawal locations are not positioned in an arbitrary fashion, but must be disposed in a manner which, when the machine is oriented through an inner wall, permits a deposit location and a withdrawal location to be situated on one side of the wall and a combined deposit/withdrawal location to be situated on the opposite side of the wall.

It is not difficult to conceive of positional arrangements of deposit, withdrawal and combined deposit/withdrawal locations on a banknote handling machine which would not permit the requirements set out in the previous paragraph to be met. Banknote handling machines having such arrangements are not disclosed in claim 1 as originally filed. They are, however, included within the ambit of present claim 1.

3.3 Similarly, the principal embodiment disclosed in the description and drawings (depicted in figures 1 and 2) includes a banknote handling machine (1) having a deposit location (111) and two withdrawal locations (112,113) situated on one side of the machine and a combined infeed/outfeed (i.e. deposit/withdrawal) location (121) situated on the other side. As a result, when the machine is orientated through the inner wall (211), the deposit and withdrawal locations are positioned on one side of the wall and the combined deposit/withdrawal location is positioned on the opposite side of the wall (figure 2).

Again, what is disclosed is a banknote handling machine having deposit and withdrawal arrangements which are not arbitrarily positioned, but are specifically adapted to the requirements of the invention. In particular, both deposit and withdrawal may be effected from both sides of an inner wall through which the machine is orientated in its operational position. No other deposit and withdrawal arrangements are disclosed.

The remaining examples disclosed in the description and drawings correspond to those of figures 3A - 3B. It is not necessary for the Board to decide to what extent these examples actually correspond to embodiments of the claimed invention. For present purposes it is sufficient to note that these figures disclose only arrangements of deposit, withdrawal and/or combined deposit/withdrawal locations in which at least one of the said locations appears on one side of the banknote handling machine and a second one of the said locations appears on the opposite side. More general arrangements are not disclosed.

3.4 Moreover, there is nothing in the originally filed description, claims or drawings to suggest to the skilled person that the deposit and withdrawal arrangements disclosed in the application are merely exemplary and that other, more general, deposit and withdrawal arrangements can be used instead. On the contrary, it is clear from the application as filed that an essential aspect of the invention is that when the machine is orientated through an inner wall, both infeed and outfeed (i.e. deposit and withdrawal) locations must be present on both sides of the wall (see page 2, lines 5-14).

3.5 In summary, present claim 1 defines a banknote handling machine having at least one of each of a deposit location, a withdrawal location and a combined deposit/withdrawal location. No limitation on the positions of these locations is defined. For the reasons set out above, a banknote handling machine defined at this level of generality is not disclosed in the application as originally filed.

3.6 The Board therefore judges that claim 1 fails to comply with the requirements of Article 123(2) EPC.

Hence, the appellant's requests cannot be allowed.

Order

For these reasons it is decided that:

The appeal is dismissed.