T 1524/11 (Content access/ELECTRONICS FOR IMAGING) of 14.3.2017

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 05785291.5, filed as international application PCT/US2005/028439 and published as WO 2006/026098.

II. According to the contested decision, the subject-matter of claims 1 and 16 of the then main request infringed Article 123(2) EPC, claims 2, 4, 9, 10 and 16 were not clear within the meaning of Article 84 EPC, and the subject-matter of claim 1 lacked inventive step over the following document:

D2: EP 1 274 017 A1, 8 January 2003.

Since the subject-matter of claim 1 of the then auxiliary request was identical to that of claim 1 of the main request, the objections raised under Articles 123(2) and 56 EPC against claim 1 of the main request applied likewise to claim 1 of the auxiliary request.

III. With the statement of grounds of appeal, the appellant filed an amended main request and an amended auxiliary request.

IV. In a communication accompanying a summons to oral proceedings, the Board inter alia expressed the preliminary opinion that the subject-matter of claim 1 of both the main request and the auxiliary request extended beyond the content of the application as filed, contrary to Article 123(2) EPC.

V. By letter of 22 February 2017, the appellant informed the Board that it would not be represented at the oral proceedings. It did not comment on the Board's communication.

VI. Oral proceedings were held on 14 March 2017 in the appellant's absence. At the end of the oral proceedings, the chairman pronounced the Board's decision.

VII. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of the main request or, in the alternative, on the basis of the claims of the auxiliary request.

VIII. Claim 1 of the main request reads as follows:

"A mobile printing system comprising:

a mobile client device comprising: a message transceiver configured with an [sic] text messaging address adapted to receive text messages; and a web browser;

a printer server coupled to said mobile client device via a wireless telephone network, said printer server comprising: a touch screen user interface comprising: means for accepting user identification information from a user; means for accepting the text messaging address by retrieving it based on the user identification information from said user, forming a user specified text messaging address; and means for accepting user authentication information in the form of a digital fingerprint reading; a web server; and one or more printer drivers, wherein the web server comprises a plurality of web pages identified with web addresses, wherein each web page from among the plurality of web pages is adapted to access particular printer drivers and a text message sender integral to the print server wherein the print server is adapted to cause the text message sender to send an [sic] text message to the user specified text messaging address of the client device through the message transceiver, wherein the text message includes the web address of the one or more web pages, thus providing the user with a means for accessing the one or more printer drivers on said mobile client device using the web browser."

IX. Claim 1 of the auxiliary request differs from claim 1 of the main request in that the last two paragraphs read as follows:

"one or more printer drivers, wherein the web server comprises a plurality of web pages identified with web addresses, wherein each web page from among the plurality of web pages is adapted to provide access to particular printer drivers and a text message sender integral to the print server wherein the print server is adapted to cause the text message sender to send an [sic] text message to the user specified text messaging address of the client device through the message transceiver, wherein the text message includes the web address of the one or more web pages, thus automatically providing the user with a means for accessing the one or more printer drivers on said mobile client device without requiring a user of said mobile client device to locate network address information of the print driver via said the [sic] web browser."

X. The appellant's arguments as relevant to this decision are discussed in detail below.

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. The application

2.1 The background section of the application explains on page 2, first three paragraphs, that a user who wishes to download a data file or application from a web page must first know, or somehow find out, the web address or URL of the web page.

2.2 The invention as claimed is concerned, more specifically, with the problem of locating the web page from which a printer driver can be downloaded to a mobile device. It essentially proposes a mobile printing system comprising a print server having a user interface for obtaining a text messaging address of a user's mobile client device on the basis of user identification information received from the user. The print server informs the user of the web page address by sending the address as a text message to the text messaging address, thus providing him with a means for accessing the printer driver with a browser of the mobile client device.

3. Main request - added subject-matter

3.1 Claim 1 of the main request specifies that the print server comprises "a touch screen user interface comprising: ... means for accepting user authentication information in the form of a digital fingerprint reading". In the contested decision, the Examining Division decided that the identically worded features of claim 1 of the then main request had no basis in the application as filed.

3.2 In the statement of grounds of appeal, the appellant argued that the application as filed on page 7, third paragraph (i.e. page 7, second full paragraph), disclosed a content server having a user interface 38, including a touch screen interface. The application as filed also disclosed on page 10, third paragraph, a need to provide additional authentication via a user interface and, accordingly, via a touch screen interface. The same passage disclosed the use of a fingerprint as authentication.

3.3 The relevant passages from the originally filed description read as follows:

"Content server 16a also includes user interface 38, which may include a touch screen, keyboard, monitor, mouse, display, speaker, microphone, card reader, voice recorder, biometric input device, or other similar user interface." (page 7, second full paragraph)

"For additional security, networked computer system 10b may require that users provide authentication information, such as a password, personal identification number ('PIN'), fingerprint, voiceprint, retinal scan, or other similar user authentication information, prior to obtaining access to data files 28 and/or application programs 30. For example, user interface 38 may prompt the user to provide both a user ID and password. In reply, the user may enter a user ID and password via a keyboard. User interface 38 may then provide the received user ID and password to access control application 40, which may verify the user's identity by comparing the provided password with password information stored in user registry 42." (page 10, third paragraph)

3.4 The Board agrees with the appellant that these passages disclose that the user may be required to provide authentication information via user interface 38. They also disclose that the user interface may be one of a touch screen, keyboard, monitor, mouse, display, speaker, microphone, card reader, voice recorder or biometric input device, and that the authentication information may be a password, personal identification number, fingerprint, voiceprint or retinal scan. But not every combination of items from these two lists makes sense: a voiceprint can be entered via a microphone or voice recorder but normally not via a keyboard, and a fingerprint can be entered via a biometric input device but normally not via a touch screen. The skilled reader of the application will therefore not directly and unambiguously derive from these passages the specific combination of a touch screen for inputting a fingerprint.

3.5 Claim 1 of the main request in fact does not specify a touch screen for inputting a fingerprint but a touch screen user interface comprising "means for accepting [the user's fingerprint]". But neither the passages cited by the appellant nor any other passages of the application as filed disclose a touch screen with special "means" for accepting a fingerprint.

3.6 Hence, the features of claim 1 "a touch screen user interface comprising: ... means for accepting user authentication information in the form of a digital fingerprint reading" introduce subject-matter extending beyond the content of the application as filed. The main request therefore does not comply with Article 123(2) EPC.

In its communication, the Board raised a number of further concerns relating to added subject-matter. Although the application as filed mentions - among many other possibilities - print servers, printer drivers, examples of client devices that qualify as mobile, message receivers configured with a text messaging address, message receivers being included in a client device, and touch screen user interfaces, it is questionable whether the skilled person would unambiguously and directly derive from it the specific combination of choices leading to a mobile printing system as set out in claim 1. The Board continues to have doubts on this point, but it is not necessary to pursue the issue further.

4. First auxiliary request - added subject-matter

Since claim 1 of the first auxiliary request also specifies that the print server comprises "a touch screen user interface comprising: ... means for accepting user authentication information in the form of a digital fingerprint reading", the first auxiliary request likewise infringes Article 123(2) EPC.

5. Conclusion

Neither of the requests on file is allowable. The appeal is therefore to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.