T 0574/12 () of 28.6.2016

Summary of Facts and Submissions

I. The appeal is against the refusal of application No. 99 931 386 for lack of an inventive step, Article 56 EPC (main request and first and third auxiliary requests) over documents:

D1: US 5 671 282 A

D2: US 4 949 256 A.

The second auxiliary request was not admitted into the proceedings under Rule 137(3) EPC for lack of compliance with Article 123(2) EPC.

II. With the statement setting out the grounds of appeal of 28 February 2012, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the following:

Main request:

Claims 1 to 15 according to the appellant's "Main request" filed with the statement setting out the grounds of appeal, corresponding to the main request as refused by the examining division;

First auxiliary request:

Claims 1 to 15 according to the appellant's "First Auxiliary Request" filed with the statement setting out the grounds of appeal, corresponding to the first auxiliary as refused by the examining division;

Second auxiliary request:

Claims 1 to 14 according to the appellant's "Second Auxiliary Request" filed with the statement setting out the grounds of appeal, corresponding to the third auxiliary as refused by the examining division.

III. A summons to oral proceedings appointed for 28 June 2016 was issued by the board, provided with an annexed communication in which a provisional opinion of the board on the matter was given.

In particular, the appellant was informed that it was not apparent on which parts of the original application the amended claims were based. Accordingly, the requirement of Article 123(2) EPC would not appear to be met.

Moreover, a number of features of the claims lacked clarity in the sense of Article 84 EPC 1973.

It was noted that an amended claim 1 including the local comparison of the serial number of a banknote with a locally stored list of serial numbers of banknotes, redrafted so as to meet the requirements of Articles 84 and 123(2) EPC could be considered allowable with respect to novelty and inventive step over the available prior art.

IV. With letter dated 21 June 2016, the board was informed that the representative had not yet received instructions from the client to attend oral proceedings.

No arguments were provided by the appellant in response to the board's observations.

V. Oral proceedings were held on 28 June 2016 in the absence of the appellant.

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

"A method of recognising the authenticity of a document, the method employing a central processing unit connected in a data exchanging network and including the steps of:

using optical scanning means for obtaining a digitized

picture of the document;

using a software program for optically recognizing characters printed on the document;

generating and attaching an electronic identification file (TAG) providing information regarding the location of the document and the time of adding the electronic identification file (TAG);

storing the recognised characters and electronic identification file (TAG) in a local CPU;

using bi-directional communication means to establish bi-directional communication in the data exchanging network between the local CPU and the central processing unit;

characterised in that the method further includes the steps of:

comparing the recognised characters of the document and electronic identification file (TAG) with previously stored information in the local CPU; and

updating all stored information in the local CPU with information received from the central processing unit;

and wherein the document is paper currency."

VII. Claim 1 according to the first auxiliary request corresponds to claim 1 according to the main request, however with the first feature of the characterising portion reading as follows (amendments highlighted by the board):

"comparing the recognised characters of the document and electronic identification file (TAG) with previously stored information in the local CPU independently of the central processing unit".

VIII. Claim 1 according to the second auxiliary request corresponds to claim 1 according to the main request, however with the first feature of the characterising portion reading as follows (amendments highlighted by the board):

"comparing the recognised characters of the document and electronic identification file (TAG) with previously stored information in the local CPU concerning serial numbers, date of printing or denomination;

further comparing the recognised characters of the document with previously stored information in the local CPU concerning wanted serial numbers".

IX. The appellant submitted in substance the following arguments:

It would not be obvious to the skilled person to adapt the system of document D1 to give the system of the present invention. There was nothing in Dl to suggest that document information might be stored locally, that locally-stored information be updated, nor that any authentication might be performed using locally-stored information as opposed to in communication with the central server.

Moreover, document D2 did not provide evidence that the use of local authentication was part of the common general knowledge.

Accordingly, the subject-matter of claim 1 was not obvious with respect to documents D1 and D2.

Reasons for the Decision

1. The appeal is admissible.

2. Main request

2.1 Amendments

It is not apparent which part of the original application provides a basis for the third step of claim 1

Regarding the fourth step of claim 1, the appellant referred to page 5, lines 24 to 25 of the application as filed (cf reply of 20 November 2006). This passage, however, does not provide a basis for the claimed step. In particular, there is no mention of storing an electronic identification file.

Regarding the sixth step of claim 1, the appellant referred to page 2, lines 33 to 35 of the application and the disclosure of figure 4. These passages, however, do not provide a basis for the claimed step, as there is no mention of comparing anything other than a banknote serial number.

Regarding the seventh step of claim 1, it is not apparent which part of the original application provides a basis for updating all stored information.

These issues were raised by the board in the communication annexed to the summons to oral proceedings. No arguments were provided in reply by the appellant.

Accordingly, the amendments do not meet the requirement of Article 123(2) EPC.

2.2 Clarity

Moreover, claim 1 lacks clarity in the sense of Article 84 EPC 1973.

The abbreviation "CPU" generally stands for Central Processing Unit and refers to the processor within a computer. The use of this abbreviation for referring to local unit (3), as well as the expression "central processing unit" for referring to central unit (13 or 2) is inappropriate and confusing, rendering claim 1 unclear.

The purpose of and limitation provided by the expression "TAG" in brackets in claim 1 is unclear.

Moreover, it is unclear to what the file is attached.

No arguments were provided by the appellant in this respect either.

2.3 The appellant's main request is, therefore, not allowable.

3. First and second auxiliary request

The amendments to claim 1 according to the first and second auxiliary request do not meet the requirement of Article 123(2) EPC for the same reasons given above for the main request.

Moreover, claim 1 according to the first and second auxiliary request is not clear for the same reasons given above for the main request, contrary to the requirement of Article 84 EPC 1973.

The appellant's first and second auxiliary request are, therefore, not allowable either.

Order

For these reasons it is decided that:

The appeal is dismissed.