T 1140/14 (Aggregation template/VISTAPRINT) of 26.3.2015

Summary of Facts and Submissions

I. European Patent Application No. 01903233.3 published as International Publication (WO 01/55869 A1) relates to a print job management method and system, in which discrete print jobs are individually received from multiple customers and aggregated into a digital aggregate print job printable by a high-end offset printer on a standard substrate or print medium.

II. The examining division refused the application for lack of inventive step, citing a printer control system from 1981 disclosed in patent application FR 2 458 834 A1(document D1). The examining division argued that the differences between the invention and the known system were trivial and did not involve more than the straightforward implementation using a common large-scale printing and a network environment.

III. The appellant (applicant) lodged an appeal against the refusal of the application. By a letter dated 24 March 2014 the appellant filed the grounds of appeal and different sets of claims as main and auxiliary requests, respectively.

IV. The Board issued summons to oral proceedings and a communication, expressing doubts concerning the admissibility of the amendments, the allowability of the claims, the disclosure of the invention, and the presence of inventive step.

V. By a letter dated 26 February 2015, the appellant replaced the requests on file by a new main request and new auxiliary requests 1, 2A, 2B, 3A, 3B, 4A, and 4B, including respective sets of amended claims and adapted pages of the description.

VI. Claim 1 of the new main request reads as follows (numbered square brackets 1[], 2[], ..., 6[] added for convenience of reference):

"A method for managing individual print jobs (50, 53, 55) from multiple customers (12), the method comprising

providing, to multiple electronic devices (11, 15) associated respectively with said multiple customers (12), selection data defining a limited selection of standardised papers, formats in the form of templates with user-specified data fields, colours and 1[quantities];

operating said multiple electronic devices (11, 15) to generate said individual print jobs on the basis of selection from said selection data by said customers, said individual print jobs corresponding to items to be printed and comprising graphical print job data and commercial print job data;

transmitting, via a telecommunications network (14), said multiple individual print jobs from said multiple electronic devices (11, 15) to an electronic print job managing system (10);

operating said print job managing system (10) to perform the steps of:

electronically receiving said multiple individual print jobs;

electronically storing said multiple individual print jobs;

electronically searching said stored individual print jobs to locate individual print jobs having common printing requirements and originating from different customers;

electronically aggregating at least some of the located individual print jobs to create a plurality of larger aggregate print jobs each comprising a meta file and a layout file, the meta file comprising the commercial print job data of the aggregated located individual print jobs and the layout file comprising the corresponding graphical print job data such that:

(a) each aggregate print job can be printed in a respective print run, and

(b) each aggregate print job is arranged to be printed as a consolidated print sheet with a two-dimensional layout having a plurality of individual print job locations arranged in each of its two dimensions, wherein:

(i) the individual print job locations in said layout are defined by a 2[standard aggregation template],

(ii) the individual print job locations on the layout characterise where cuts are to be made after printing the consolidated print sheet in order to separate items printed on the consolidated print sheet, 3[and]

(iii) items corresponding to the individual print jobs are positioned in the individual print job locations of the 4[layout;]

5[and] electronically transmitting said aggregate print jobs for printing of the aggregate print 6[jobs.]"

In auxiliary requests 3A, 3B, 4A, and 4B, the text in brackets 1[] reads "quantities of fewer than 5000 copies for each individual print job".

In auxiliary requests 1, 2B, 3B, and 4B, the text in brackets 2[] reads "selected one of a plurality of standard aggregation templates".

In auxiliary requests 2A, 2B, 3A, 3B, 4A, and 4B, the text in brackets 3[] is deleted.

In auxiliary requests 2A, 2B, 3A, 3B, 4A, and 4B, the text in brackets 4[] reads as follows:

"layout, and

(iv) said electronically searching of said stored individual print jobs is continued until enough of said individual print jobs have been located to fill the individual print job locations of said aggregation template;".

In auxiliary requests 4A, and 4B, the text in brackets 5[] is deleted.

In auxiliary requests 3A, and 3B, the text in brackets 6[] reads as follows:

"jobs; and

printing each said aggregate print job on an offset printing press."

In auxiliary requests 4A, and 4B, the text in brackets 6[] reads as follows:

"jobs; and

printing each said aggregate print job on an offset printing press on paper of a sufficiently large size to accommodate the simultaneous printing of all individual print jobs in the aggregate print job, wherein either:

the paper is in the form of cut sheets of 530 x 740 mm or larger and the printer prints is at a printing rate of 12,000 sheets per hour or higher, or the paper is in the form of a roll of paper and the printer is a web press printer with a roll width of 20 inches or higher and prints at the rate of 40,000 inches per hour."

VII. In the oral proceedings held on 26 March 2015 the appellant requested that the decision under appeal be set aside and a patent be granted on the basis of the new main request or one of the new auxiliary requests 1, 2A, 2B, 3A, 3B, 4A, or 4B as filed with the letter of 26 February 2015. The essence of the invention, the clarity of the claims and their support by the description, and inventive step were discussed with the appellant.

VIII. According to the appellant, the object addressed by the invention was high-quality, low-cost printing of "short run" print jobs (less than thousand print items per order). This was achieved by bringing together a large number of print jobs through a networked printing management system and electronically aggregating a number of print jobs having common printing requirements into a layout defined by a standard aggregation template so that they could be printed in a common printing operation by large volume printing equipment like automated large-scale offset printing presses. The decisive technical advance over the prior art was the use of one or more standard aggregation templates to "gang" together the individual print jobs received from multiple customers. This was novel and in clear contrast to the prior art of document D1, in which a unique layout had to be calculated in an iterative mathematical process individually for each layout of print jobs.

The use of standard aggregation templates was only possible since the inventive print job management system provided a browser-based design and order software which constrained the available design formats and printing parameters from which the customers could select when designing the desired printed items. The standard aggregation template was selected by the management system and specified where the cuts had to be made on the big paper sheets or rolls at the ultimate printing operation. Accordingly, there was a triple identity, namely between the design formats available to the customers, the formats defined by the standard aggregation templates, and the cut lines. This triple identity allowed the efficient aggregation and high-quality printing of thousands of short run print jobs in quasi real-time at relatively low cost. Support for this novel and inventive concept could be found in the application, in particular at page 7, lines 1 to 11, page 11, line 11 to page 12, line 30, and page 24, line 15 to page 25, line 31 of the International publication.

Reasons for the Decision

1. The admissible appeal is not allowable since none of the respective claims 1 filed with the present requests meets the requirement of clarity of Article 84 EPC.

2. Article 84 in combination with Rule 43 EPC requires that an independent claim explicitly specify all essential features which are necessary for clearly and completely defining the invention and that the meaning of these features should be clear for the person skilled in the art from the wording of the claim alone. These requirements serve the overriding purpose of legal certainty. (see G 1/07 -Treatment by surgery/MEDI-PHYSICS, point 4.3.1 of the Reasons; G 1/04 - Diagnostic methods, point 6.2 of the Reasons). The claims should clearly define the technical features of the invention in order that, inter alia, a comparison can be made with the prior art (see G 2/88 - Friction reducing additive / MOBIL OIL III, point 7 of the Reasons). Novelty and inventive step can be based only on technical features, which thus have to be clearly defined in a claim (T 154/04 - Estimating sales activity / DUNS LICENSING ASSOCIATES, point 5(F)).

3. In the present case, all of claims 1 include the following features, which turn out to be essential to the invention, but nevertheless unclear regarding the technical subject matter that they define (see point V above for the full wording of the definitions):

"electronically aggregating at least some of the located individual print jobs to create a plurality of larger aggregate print jobs each comprising a meta file and a layout file, ... the layout file comprising the corresponding graphical print job data such that:

(a) ...

(b) each aggregate print job is arranged to be printed as a consolidated print sheet with a two-dimensional layout having a plurality of individual print job locations arranged in each of its two dimensions, wherein:

(i) the individual print job locations in said layout are defined by a (selected one of a) standard aggregation template,

(ii) the individual print job locations on the layout characterise where cuts are to be made ...".

4. According to the appellant, using a standard aggregation template for defining the print job locations in the layout (feature (i)) is a decisive difference over the prior art system of document D1. Hence, this is an essential technical feature of the claimed invention.

5. However, the definitions in the context of this feature are unclear. The claims eventually relate to an automated method defined by electronically performed steps, and, according to the appellant's arguments most importantly by the step of electronically aggregating individual print jobs which results in the creation of a "meta file" and a "layout file", the layout file comprising the graphical print job data (see above). The layout file hence precisely defines the individual print job locations on the print sheet and thus the layout. Feature (b) is apparently redundant.

6. By the conjunctive word "wherein" (see above), feature (i) is grammatically subordinated to the redundant feature (b) and accordingly gives a more specific definition of the layout. The layout is the result of the aggregation step ("such that", see claim wording above) and not a technical feature of the claimed method: a layout is simply a spatial arrangement of graphical elements, which provides per se no technical effect whatsoever. Hence, it is unclear which technical feature or aspect of the claimed method should be defined by feature (i). Neither a technical advantage nor any technical effect are derivable or plausible for defining the individual print job locations by an aggregation template.

7. According to the application as originally filed, a "digital aggregation template" represents the locations of cuts that will be needed to separate the discrete print jobs from the aggregate print job (see for example page 7, line 4 ff., page 12, line 27 ff., original version of claim 35). Hence, an aggregation template is essentially a digital representation of a cutting template and does not necessarily contain more information than the positions of cutting lines.

8. However, the application also indicates that the "placement" ("organisation") of the discrete print jobs on the layout is "defined" by the digital aggregate template that represents the locations of cuts (see application, loc. cit.). However again, this is not a technically relevant teaching just as arranging patterns for sewing on a piece of paper lacks technical character. For the cutting and print operations, it makes no difference whether the print items have been arranged in accordance with a predefined template and/or under application of a rule or algorithm. The application, page 25, line 22 ff. indeed states that "(a)ggregation may be performed in accordance with one of a number of standard aggregation templates,..., or can be done 'on the fly', in any arrangement that will fit within the bounds of the paper sheet to be printed". This supports the conclusion that any consistent arrangement will do the job. The possible technical effect of using an aggregation template remains unclear.

9. The appellant argued that the triple identity of limited number of print designs and templates available to the customers, standard aggregation templates, and cutting templates allowed the low cost print of short run print orders on high-volume and high quality offset printing machines. This might indeed be the case. However, the result is also achieved if the printing items are placed "on the fly" in any arrangement that will fit within the bounds of that paper sheet to be printed. Using an aggregation template in arranging the print items seems to be a more planned and systematic approach, but has no clear technical effect. The paper waste and the processing time could be more or less than an "on-the-fly" approach. A technical effect which could be linked to feature (i) is neither plausible nor derivable from said application and it is also not clear in how far this feature relates to the technical subject matter of the claimed method.

10. It follows that, notwithstanding possible other deficiencies, there is lack of clarity in claim 1 of all requests so that there is no allowable request before the Board.

Order

For these reasons it is decided that:

The appeal is dismissed.