T 0924/09 (KONICA MINOLTA / Multifunction printer) of 6.3.2013

Summary of Facts and Submissions

I. The appeal is against the decision by the examining division, with reasons dispatched on 20 November 2008, to refuse European patent application 06251411.2, on the basis that the independent claim 1 in the main request did not satisfy the requirements of Rule 43(2) EPC and that the subject-matter of that claim was not novel, Article 54 EPC 1973, and the subject-matter of claim 1 of the auxiliary request not inventive, Article 56 EPC 1973, in view of the following document:

D1: EP 0 929 023 A.

The appealed decision also mentioned obiter that claim 1 of the auxiliary request did not satisfy the requirements of Article 84 and 83 EPC.

II. A notice of appeal was received on 12 January 2009, the appeal fee being paid on the same day. A statement of the grounds of the appeal was received on 17 March 2009.

III. The appellant requested that the decision be set aside and a patent granted on the basis of the main request that was the subject of the refusal or on the basis of one of auxiliary requests 1 and 2 filed with the grounds for the appeal.

IV. The board issued a summons to oral proceedings. In an annex to the summons, the board set out its preliminary opinion on the appeal.

V. In reply to the summons, the appellant filed a new main and auxiliary request, replacing all previous requests. During the oral proceedings, the appellant filed a new single request.

VI. The appellant requested that the decision under appeal be set aside and a patent granted on the basis of claims 1 to 6 filed on 6 March 2013, description pages 1 and 51 filed on 6 March 2013, page 3a filed on 30 January 2013, pages 2, 3 and 4 filed on 29 September 2008, pages 5 to 7 filed on 14 February 2009 [sic] and pages 8 to 50 as originally filed, and drawing sheets 1 to 26 as originally filed.

VII. The current request contains only one independent claim, viz. claim 1, which is a system claim and reads as follows:

System comprising a network and at least two image data processing apparatuses (100) connected to the network (2), each image data processing apparatus (100) comprising:

a user data storage portion (107) to store user data including user identification information for identifying each user;

a data input portion (100A,100B,100C,109,113,117) into which image data is inputted;

a relation portion to associate the image data with the user identification information stored in the user data storage portion; and

a destination designation portion (206) to designate a user identified by the user identification information as a destination;

and further

a data processing method designation portion to designate a data processing method for the image data, wherein the data processing method is designated by the user designated as the destination;

a user identification information input portion to accept an input of user identification information;

a data extracting portion to extract image data for the user specified by the user identification information inputted in the user identification information input portion; and

a data processing portion to process the image data extracted by the data extracting portion based on the data processing method designated in the data processing method designation portion.

VIII. At the end of the oral proceedings, the chairman announced the board's decision which has to be corrected insofar as it contained an obvious mistake (Rule 89 EPC 1973). It referred to the non-existing "description pages 5 to 7 filed on 14 February 2009". The correct filing date of the aforementioned pages 5 to 7 is 15 February 2008.

Reasons for the decision

1. Reference is made to the transitional provisions in Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, for the amended and new provisions of the EPC, from which it may be derived which Articles of the EPC 1973 are still applicable to the present application and which Articles of the EPC 2000 shall apply. As far as the Implementing Regulations are concerned, the board refers to Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations of the European Patent Convention 2000.

2. The admissibility of the appeal

In view of the facts set out at points I and II above, the appeal is admissible, since it complies with the EPC formal admissibility requirements.

3. Added subject-matter; Article 123(2) EPC

The board is satisfied that the requirements of Article 123(2) EPC have been met.

4. Closest prior art

The board considers D1 to represent the closest prior art. It discloses a system that is very similar to the system defined by the wording of claim 1, except that the system of D1 has only one image data processing apparatus.

More precisely, D1 discloses a system comprising a network and an image data processing apparatus (comprising local computer 100, directory server 120, document store 130 and printer 140), the image data processing apparatus comprising:

a user data storage portion (database 125) to store user data including user identification information for identifying each user ("user identity");

a data input portion into which image data is inputted (column 7, line 26: "the document details"); a relation portion to associate the image data with the user identification information stored in the user data storage portion (it is open to debate which passage of D1 best discloses such a relation portion; one passage is column 7, lines 26 to 27, according to which the "relation" follows from selecting image data and recipient as part of the same process; the other passage is column 7, lines 33 to 35, according to which the association takes place in the form of a public key that is returned for the intended recipient); and a destination designation portion to designate a user identified by the user identification information as a destination (column 7, lines 26 to 27: "to enter...the identity of the intended recipient");

and further

a data processing method designation portion to designate a data processing method (encryption) for the image data, wherein the data processing method is designated by the user designated as the destination (i.e. it depends on that user's public key);

a user identification information input portion to accept an input of user identification information (column 8, lines 26 to 30: a smart card reader);

a data extracting portion to extract image data for the user specified by the user identification information inputted in the user identification information input portion (column 8, lines 44 to 46: "the document store...searches the hard disk for any documents having the same identity"); and

a data processing portion to process the image data extracted by the data extracting portion based (at least in an indirect manner) on the data processing method designated in the data processing method designation portion (column 9, lines 29 to 31: "the printer 140 receives the document and...deciphers it back...using the session key").

5. Inventive step, Article 56 EPC 1973

The difference between the subject-matter of claim 1 and the system disclosed by D1 is that the latter has only one image data processing apparatus (which is distributed over several devices). The objective problem solved by having more than one image data processing apparatus is to provide more possibilities for a user of the system to have his or her image data processed.

It is considered obvious for the skilled person to want to solve this problem. The most straightforward manner to achieve this would be by duplicating the secure printer 140 of D1. However, that printer does not have all the features of the image data processing apparatus as it is defined in the present claim 1. An apparatus corresponding to that definition appears in the disclosure of D1 as a combination of several elements which are distributed over several devices, viz. local computer 100, directory server 120, document store 130 and printer 140. Whereas it could be said that a duplication of the directory server, i.e. storing the directory information in each of the data processing apparatuses, is a common measure in the technical field concerned, e.g. to achieve faster access to these data, this is certainly not true for the document store. Duplicating the latter would indeed cause unnecessary synchronisation problems between the multifunction printers, one MFP having to notify the other ones when it has printed a document, so as to avoid double printing.

For this reason, the board judges that it would not be obvious for the skilled person to duplicate the entire combination of elements disclosed in D1 that corresponds to the image data processing apparatus as it is defined in the present claim 1. The subject-matter of claim 1 is therefore considered inventive; Article 56 EPC 1973.

6. Clarity and sufficiency of disclosure, Articles 84 and 83 EPC 1973

The appealed decision mentioned obiter (under section III "Further remarks") that the method steps of claim 1 of the auxiliary request were not ordered, as a consequence of which the claim did not comply with the requirements of Articles 84 and 83 EPC 1973. Given that the current request no longer contains method claims, this objection is no longer relevant.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Examining Division with the order to grant a European patent on the basis of claims 1 to 6 filed on 6 March 2013, description pages 1 and 51 filed on 6 March 2013, page 3a filed on 30 January 2013, pages 2, 3 and 4 filed on 29 September 2008, pages 5 to 7 filed on 15 February 2008 and pages 8 to 50 as originally filed, and drawing sheets 1 to 26 as originally filed.