T 0802/16 () of 20.10.2020

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division refusing European patent application No. 06 823 337.8 on the grounds that the subject-matter defined in the main request and the auxiliary request did not fulfil the requirements of Article 52(1) EPC in combination with Article 56 EPC 1973.

II. Although the appellant requested in the notice of appeal to base the appeal on "the documents currently on file" consisting of the main and one auxiliary request on which the examining division decided, it limited its request in the statement of the grounds of appeal to the grant of a patent solely based on the main request currently on file, with claim 1 submitted on 1st October 2015 and claims 2 to 11 submitted on 24 February 2014. Oral proceedings were requested as an auxiliary measure.

III. In a communication according to Article 15(1) RPBA 2020 the Board gave its provisional opinion that claim 1 of the only request on file did not comply with Article 52 (1) EPC in combination with Article 56 EPC 1973.

IV. In a reply dated 6 August 2020, the appellant withdrew its request for oral proceedings and requested a decision according to the state of the file.

V. Reference is made to the following document:

D1: EP 1 271 425 A2

VI. Claim 1 reads as follows:

A bill handling device (11) having a plurality of bill storage portions (30a to 30h) that can store bills by type and that can feed the bills one by one and a bill dispensing portion (17) in which bills fed from the bill storage portions are stacked, the bill handling device comprising:

a transporting portion (32, 33) that transports bills;

a memory (34) that stores both storage destination information including information related to types of the bills stored in the bill storage portions and priority order information related to a priority order for the types of the bills fed from the bill storage portions;

a setting/changing portion (34) that sets or changes the priority order information stored in the memory, the bill handling device being characterized by further comprising:

a bill collection portion (31b) that collects the bills stored in the bill storage portions; and

a control portion (34) for controlling, based on the storage destination information and the priority order information stored in the memory, an operation of transporting the bills stored in the bill storage portions either to the bill dispensing portion or to the bill collection portion, wherein

the priority order information includes a first table (34z) used in a bill dispensing process and a second table (34w) used in a collection process, and

the control portion (34) controls transport based on the first table (34z) in the bill dispensing process, and controls transport based on the second table (34w) in the collection process.

VII. The appellant's arguments, as far as they are relevant for the decision, are summarised as follows:

The examining division's interpretation of the term "bill collection portion" was unreasonably broad, because a bill collection process presented an alternative process and should be regarded as being different to a bill dispensing process. The bill dispensing portion related to customers who receive bills directly from the "bill handling device" and the bill collection portion related to a process wherein bank clerks or tellers took bills (or a bundle of bills) out of the bill handling device once stored in a specific cassette. Neither a "bill collection portion (31b)" nor the "collection process" and the thereto linked second table as defined in claim 1 were disclosed in D1.

Reasons for the Decision

1. The appellant withdrew its request for oral proceedings with letter dated 6 August 2020 and requested a decision according to the state of the file. The Board does not see any reason to deviate from its preliminary opinion presented in the communication according to Article 15(1) RPBA 2020 and consequently considers the case ready for decision according to Article 12(8) RPBA 2020.

2. Inventive step

2.1 Closest prior art

Document D1 is considered to represent the closest prior art with respect to the subject-matter defined in claim 1.

D1 discloses the following features of claim 1 (features in strikeout are those which the appellant argued were not disclosed in D1; references in parentheses in this paragraph refer to D1):

A bill handling device (Figs. 2, 10, abstract) having a plurality of bill storage portions (Fig. 2; 11 to 14) that can store bills by type and that can feed the bills one by one and a bill dispensing portion in which bills fed from the bill storage portions are stacked (Fig. 2; 1), the bill handling device comprising:

a transporting portion (Fig. 2; 2) that transports bills;

a memory ([0031]) that stores both storage destination information including information related to types of the bills stored in the bill storage portions ([0037]; Fig. 3; 107) and priority order information related to a priority order for the types of the bills fed from the bill storage portions ([0037]; Fig. 3; 108);

a setting/changing portion that sets or changes the priority order information stored in the memory ([0031], [0038], [0039], abstract; Fig. 3; 106), the bill handling device further comprising:

[deleted: a bill collection portion that collects the bills ][deleted: stored in the bill storage portions][deleted: ; and ] a control portion ([0031], [0039]; Fig. 3; 103) for controlling, based on the storage destination information and the priority order information stored in the memory ([0010], [0011]), an operation of transporting the bills stored in the bill storage portions [deleted: either] to the bill dispensing portion [deleted: or to the bill collection portion] ([0046]), wherein the priority order information includes a first table (Fig. 3; 108) used in a bill dispensing process [deleted: and a second table used in a collection process], and the control portion controls transport based on the first table in the bill dispensing process (Fig. 3; 108)[deleted: , and controls transport based on the second table in the collection process (Fig. 3; 108)].

The appellant argues that D1 does not disclose "a bill collection portion that collects the bills stored in the bill storage portions".

The view of the Board, however, is that the "temporary bill-cassette 4" shown in figure 2 of D1 may be identified with the "bill collection portion (31b)" defined in claim 1.

A "bill collection portion" is not mentioned literally in the description of the application. However, it appears from the use of the same reference sign "31b" that the "bill collection portion" is called a "collection box" in the description. This "collection box" collects bills which are not counterfeit bills ([0021] of the description) and receives bills from the storage portions during the collection process ([0059] of the description). Contrary to the argument of the appellant that the content of the collection box is intended to be taken out of the bill handling device by a clerk/teller, the description does not explain the purpose of the collection process.

However, even if the argument of the appellant were accepted in relation to the purpose of the collection box of the description, this purpose is not reflected in the wording of claim 1, according to which it is not excluded that the content of the claimed bill collection portion may be collected only temporarily before being dispensed via the standard outlet. Hence, the defined bill collection portion can be identified with the temporary bill cassette 4 shown in D1. In that case, the associated bill collection process shown in D1 functions in the same manner as defined in claim 1 (transporting bills from the storage portions to the bill collection portion). Hence, D1 discloses "a bill collection portion that collects the bills stored in the bill storage portions".

D1 discloses that the temporary bill-cassette 4 stores bills in the transportation process. In order to arrive at the temporary bill-cassette 4, the bills need to pass gate 5. D1 furthermore indicates in [0029], that gate 5 switches the destination between the temporary bill-cassette 4 and the stacker 1. Hence, gate 5 must be controlled by control means in order to switch between the two destinations and to feed the bills coming from the discrimination unit 3 along the conveyor 2 either to stacker 1 or to the temporary bill-cassette 4.

2.2 Distinguishing feature

From the above it follows that the subject-matter defined in claim 1 differs from the teachings of document D1 only by controlling the conveying process using "a second table" which is used to determine the priority order in which the bills will be delivered to the bill collection portion.

In D1 "the bill handling machine 10 can flexibly set the delivery order of the bills by changing the delivery order setting table 108" (paragraph [0047]). In order to provide the same flexibility in setting the order of the bills routed by gate 5 to the temporary bill-cassette 4 it would be obvious to provide a second table analogous to the order setting table 108.

In this way, the control portion (gate 5) would control transport based on the first table in the bill dispensing process, and would control transport based on the second table in the collection process, as set out in claim 1.

Consequently, the subject-matter defined in claim 1 does not involve an inventive step.

3. It follows from the above that the only request on file does not fulfil the requirements of Article 52(1) EPC in combination with Article 56 EPC 1973.

Order

For these reasons it is decided that:

The appeal is dismissed.