T 1172/09 (Registered data processing on delivery/KONICA MINOLTA) of 6.3.2013

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining di vision to refuse the European patent application no. 06251395.7 for lack of an inventive step, Ar ticle 56 EPC 1973, in view of

D1: EP 0 929 023 A1.

II. A notice of appeal was filed on 19 February 2009, the appeal fee being paid on the same day. A statement of grounds of appeal was filed on 16 April 2009. It was re quested that the decision be set aside and that a pa tent be granted based on claims according to a main or one of two auxiliary requests, labelled respectively "second" and "third" auxiliary request and filed with the grounds of appeal.

III. With summons to oral proceedings the board informed the appellant about its preliminary opinion according to which all requests lacked clarity, Article 84 EPC 1973, and the main request lacked an inventive step but the auxiliary requests showed the required inventive step, Article 56 EPC 1973. The board also expressed its ten den cy not to admit the main and the "second" auxiliary re quest pursuant to Article 12 (4) RPBA.

IV. In response to the summons, the appellant filed an amen ded set of claims 1-7 as a new main request.

V. Oral proceedings were held as scheduled on 6 March 2013. During the oral proceedings the appellant discarded pen ding claim 7 and requested that a patent be granted based on the following documents:

claims, numbers

1 of the main request as filed with letter of 28 January 2013, in combination with

2-6 as filed with telefax of 25 September 2008

description, pages

1, 2, 2a, 3, 3a, 4, 5

as filed with telefax on 25 September 2008

6-22 as originally filed

drawings, sheets

1-9 as originally filed

VI. Claim 1 according to the main request reads as follows:

"Data processing system (1), comprising a network, a plurality of image processing apparatuses (100, 100A, 100B, 100C) including home terminals each connected to the network (2), and each including an image scanning function, a copying function, and a facsimile transmission and reception function, wherein each image processing apparatus comprises:

a registration portion (S306) to register a processing method including any one of "data storage", "print", "mail reception", and "FAX reception", or a combination of a plurality of them for processing data for each registered user;

a user list creation portion (S210) to create a user list from the registered user information of other image processing apparatus and own image processing apparatus;

a destination designation [sic] (S412) to display the user list in such a manner that the registered user of other image processing apparatus can be designated as destination;

a data designation portion (S404) to designate data to be delivered to the destination designated by the destination portion (S412);

a data transmission portion (S428) to transmit the data designated by the data designation portion to the home terminal of the registered user as a destination designated by the destination designation portion (S412)

and

a data processing portion (S426) to process data by the processing method registered in the registration portion for the user if data whose destination is the user registered in the registration portion (S306) has been delivered."

All claims 1-6 relate to data processing systems.

VII. At the end of the oral proceedings the chairman announced the decision of the board.

Reasons for the Decision

1. The board is satisfied that the present application documents do not go beyond the application as ori gi nally filed, Article 123 (2) EPC: Claim 1 is based on original claims 1-3 in combination with the original description, in particular on page 6, lines 9-13; page 12, lines 23-24; and page 12, line 30 - p. 13, line 7. Present claims 2-6 correspond to ori gi nally filed claims 4-8, respectively. No objections under Article 84 EPC 1973 were raised during examination and the board has no occasion to raise any of its own.

The invention and the prior art

2. The application relates to the transmission of data be tween users of a data processing system, in particular across a network of image processing apparatus such as multi function peripherals (MFP). Each of these image pro cessing apparatus includes a "home terminal" and functions for image scanning and copying as well as for facsimile trans mission and reception (p. 1, lines 10-14; p. 6, lines 9-17; and figs. 1-2). Diffe rent users of such a system may want da ta de li ve red to them in diffe rent forms: They may want it printed, delivered as a fac si mi le or as an email, or they may want it stored at the home terminal for eventual output (see p. 10, lines 29-31; p. 11, lines 4-5). The application re fers to these alter na tives jointly as "processing me thods". Nor mally, sen ders must know the re ceivers' pre fe rences and the re le vant addressing infor ma tion such as fax num ber, email address or server num ber (p. 1, line 14 - p. 2, line 11). This can be inconvenient. The in vention solves this problem by enabling users to re gis ter a pro cessing me thod they want performed on re ceived data, and by enab ling senders to select users as destinations without knowing their preferences. The claimed system will automatically process data accor ding to the re cei ver's registered pro cessing method before delivering it.

3. D1 discloses a mechanism for secure printing in a net work according to which a user at a local computer (see fig. 1, no. 100; par. 20) can send a document to a "se cure" printer (fig. 1, no. 140) so that on ly a speci fied intended re ci pient can print it (see abstract). This avoids the risk of a document being re moved or read by unauthorized persons before the in ten ded reci pi ent can retrieve it (see par. 8).

3.1 A di rec to ry server (fig. 1, no. 120) main tains a data base of user pro files con taining, inter alia, each user's pub lic en cryption key (par. 22). The di rec to ry server may also re flect that a user wants to receive documents only from one specified printer and it may include "prin ter in for mation" which determines how do cu ments are to be for matted, e.g. into PostScript or PCL (see par. 57). In the board's view the skilled per son would understand the required document formatting to depend on the per ti nent printers: For example, Post Script would be de fined only if the printer or printers at which a user wanted to re ceive documents were all Post Script compatible.

3.2 In or der to sub mit a se cure print job, the operator at a lo cal com pu ter (fig. 1, no. 100) enters, via a gra phi cal user in ter face, the document to be printed and the in ten ded re ci pient (par. 38). The secure printer process formats the document, en crypts it with the re ci pi ent's pri vate key retrieved from the directory ser ver (pars. 39-41) and stores the pro cessed document in a central docu ment store (par. 42; fig. 1, no. 130).

3.3 In order to print do cu ments, a user iden tifies himself at a secure printer with a smart card revealing the user's identity and pri vate decryp tion key (pars. 46-47). The document store retrieves docu ments held for that user and trans mits them to the se cure printer, where the document is decrypted and even tually printed (pars. 48 and 52).

The decision under appeal

4. The board interprets the decision under appeal to argue as follows:

a) D1 dis closes the registration of "a processing me thod for processing data for each registered user" because it discloses computers operating under Win dows NT which are known to comprise printing prefe rences such as page orientation or printing quality (see decision, reasons 2, lines 10-14, referring to D1, pars. 20 and 22).

b) D1 dis clo ses a "user list creation portion from the re gis tered user information of other image pro cessing appa ratus" by way of a directory server sto ring "user pro files" (decision, reasons 2, lines 15-18).

c) D1 discloses a "data processing portion to pro cess data by the processing method registered" be cause the document server of D1 "searches the hard disk for any documents having the same identity" (rea sons 2, lines 31-34, onto the following page).

d) And D1 discloses that the user profiles in the directory server of D1 may contain, per user, in for mation about the desired format of the trans mitted docu ment (see decision, section entitled "Further Remarks", point 2).

4.1 As regards a) the board notes firstly that D1 does not explicitly refer to Win dows NT user profiles or their use in the disclosed system, and secondly that the com puter running Windows NT according to D1 is the lo cal com pu ter, i.e. the sending machine (cf. par. 38). Fur thermore, the board agrees with the appellant (see grounds of appeal, p. 3, last par.) that commonly known user profiles nor mally do not de fine deli very pre fe ren ces of the recei ver of a data trans mission. Thus, even if the skilled per son were to read D1 as implying that the user pro file at the local computer was rele vant for the document for mat ting, this would refer to the sen der's preferences and not, as claimed, to a processing method registered by (and for) the receiver.

4.2 As regards b) the board agrees with the decision under appeal that the directory server of D1 maintains a list of user preferences. However, D1 does not dis close that the user profiles on that server are created from the user pro files used under Windows NT (see previous point a).

4.3 As regards c) the board cannot follow the decision un der appeal arguing that the sear ching of docu ments sent to the same recipient amounts to processing documents accor ding to a "processing method" previously regis te red per user. The search itself is the same for every possible recipient and, as such, not re gistered at all.

4.4 As regards d) the board agrees with the decision that the user-defined document formatting qualifies as a "pro cessing method for processing data" which is pre viously registered for each user. However, document for matting is none of the processing methods now spe cifically claimed. More over, according to D1, the for matting of the docu ment takes place at the sender's computer, before en cryp tion and be fore delivery to either the directory server or the secure printer (see pars. 38-39, 44 and 57).

5. In view of the above, the board concludes that the in vention according to claim 1 differs from D1 at least by

i) the registration portion to register a processing method including any one of "data storage", "print", "mail reception" and "FAX reception", or a combination of them,

ii) the data processing portion to process data by the processing method registered ... for the user if data whose destination is the user ... has been delivered, and

iii) the fact that a user list is displayed so that users can be "designated as destination" from a displayed user list.

5.1 As to difference iii) the board considers it ob vious for a person with the necessary skill in user in terface design to simplify the user's work by offering a selec tion for choice rather than requiring direct user input via a keyboard.

5.2 An effect of difference ii) over D1 is to enable users to decide at any point in time whether to receive a do cu ment at a PostScript compatible printer or a PCL com patible printer, in particular after the document had already been sent. To make this possible, the skilled per son would, in the board's judgment, consider the possibility of postponing the document formatting to just before printing. The skilled person would realize this to imply, consistent with the main purpose of D1 to enable "se cure printing", that documents would have to be encryp ted but not formatted at the local computer and for matted at the receiving printer after decryption. The board does not see any particular technical diffi culty in modifying D1 accordingly. There fore, the board concludes that difference ii) alone does not es tab lish an inventive step over D1.

5.3 Difference i) represents the fact that D1 is exclusive ly concerned with printers and printing whereas the invention re la tes to a plurality of networked multi function peri pherals (MFP) and different ways of data delivery at such an MFP. The board deems it obvious to replace the network printers of D1 by more powerful MFPs during a routine hardware upgrade. Depending on the choice of MFP, this would make additional ways of data delivery, e.g. by fax or by email, automatically avai la ble.

5.4 Starting from D1, therefore, the board considers diffe rence i) to solve the problem of adapting the method of D1 to a network of MFPs. Since D1 does not imply any thing about different ways of document delivery, let alone about user preferences in this respect, D1 does not render obvious that users register the "processing methods" according to difference i) by which they want a document processed after "delivery" as specified by difference ii).

5.5 Thus the board concludes that claim 1 shows an in ven tive step in the sense of Article 56 EPC 1973 over D1.

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 based on the following documents:

claims, numbers

1 of the main request as filed with letter of 28 January 2013, in combination with

2-6 as filed with telefax of 25 September 2008

description, pages

1, 2, 2a, 3, 3a, 4, 5

as filed with telefax on 25 September 2008

6-22 as originally filed

drawings, sheets

1-9 as originally filed