T 2271/16 (Book-binding application/CANON) of 23.9.2020

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 05008167.8.

II. The decision cited, inter alia, the following documents:

D1:|US 2003/0056176 A1, 20 March 2003;|

D7:|US 2003/0056179 A1, 20 March 2003.|

The Examining Division decided that the subject-matter of the independent claims of the main request and first to third auxiliary requests and of claims 1 and 16 of the fourth auxiliary request lacked inventive step in view of document D1. The fifth and sixth auxiliary requests were not admitted into the proceedings under Rule 137(3) EPC.

III. In its statement of grounds of appeal, the appellant maintained the requests considered in the decision under appeal as a main request and second to seventh auxiliary requests and filed a new first auxiliary request. It submitted copies of the text of the claims of all requests.

IV. In a communication accompanying the summons to oral proceedings, the Board introduced the following documents:

D8:|US 2003/0208565 A1, 6 November 2003;|

D9:|US 6 429 947 B1, 6 August 2002. |

The Board raised a number of clarity objections and expressed the preliminary opinion that the subject-matter of claim 1 of all requests lacked inventive step.

V. By letter of 20 December 2019, the appellant replaced its first to seventh auxiliary requests with amended first to seventh auxiliary requests.

VI. During oral proceedings held on 23 September 2020, the appellant filed a new second auxiliary request and maintained its previous second to seventh auxiliary requests as third to eighth auxiliary requests. 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, of one of the first to eighth auxiliary requests.

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

"A document processing apparatus which creates a book file managed by a hierarchical structure and formed from document data, characterized by comprising:

setting means (1400) for setting an attribute for a folder (4001, 4002);

detection means (4200) for detecting storage of data into the folder (4001, 4002);

creation means (4300) for, when said detection means detects that data is stored into a first folder (4001, 4002) set by said setting means, creating document data based on a setting of the first folder (4001, 4002), and

import means for importing the document data on any layer of a book file which has already been created."

IX. Claim 1 of the first auxiliary request reads as follows:

"A document processing apparatus which creates a book file managed by a hierarchical structure of three layers and formed from document data, the book file corresponding to a first layer and having at least one chapter, which corresponds to a second layer, where the chapter includes at least one page, which corresponds to a third layer, characterized by comprising:

setting means (1400) for selecting a folder and setting an attribute for a folder (4001, 4002), the attribute relating to layout information and printer setting information;

detection means (4200) for detecting storage of data into the folder (4001, 4002);

creation means (4300) for, when said detection means detects that data is stored into a first folder (4001, 4002) for which an attribute is set by said setting means, creating document data from the data stored into the folder based on a setting of the attribute for the first folder (4001, 4002), and

import means for importing the document data on any layer of a book file which has already been created."

X. Claim 1 of the (new) second auxiliary request reads as follows:

"A document processing apparatus configured to create a book file and to manage an existing book file having a hierarchical structure of three layers and formed from document data, the book file consisting of a book as a first layer, and at least one chapter, which corresponds to a second layer, where the chapter includes at least one page, which corresponds to a third layer, characterized by comprising:

setting means (1400) for setting an attribute for a folder (4001, 4002), the attribute relating to layout information and printer setting information;

detection means (4200) for detecting storage of data into the folder (4001, 4002);

creation means (4300) for, when said detection means detects that data is stored into a first folder (4001, 4002) for which an attribute is set by said setting means, creating document data from the data stored into the folder based on the attribute set for the first folder (4001, 4002),

means for selecting a book file into which the document data is to be imported, wherein the book file is a newly created book file or an existing book file, and

import means for importing the document data on any layer of the book file."

Claims 2 to 15 are directly or indirectly dependent on claim 1.

Claim 16 reads as follows:

"A method of controlling a document processing apparatus configured to create a book file and to manage an existing book file having a hierarchical structure of three layers and formed from document data, the book file consisting of a book as a first layer, and at least one chapter, which corresponds to a second layer, where the chapter includes at least one page, which corresponds to a third layer, characterized by comprising:

a setting step of setting an attribute for a folder, the attribute relating to layout information and printer setting information;

a detection step of detecting storage of data into the folder;

a creation step of, when data is detected in the detection step to be stored into a first folder (4001, 4002) for which an attribute is set in the setting step, creating document data from the data stored into the folder based on the attribute set for the first folder (4001, 4002),

a selecting step of selecting a book file into which the document data is to be imported, wherein the book file is a newly created book file or an existing book file, and

an importing step of importing the document data on any layer of the book file."

Claims 17 to 31 are directly or indirectly dependent on claim 16.

Claim 32 reads as follows:

"A computer program characterized by comprising a function of executing steps in a method defined in any one of claims 16-31."

Claim 33 reads as follows:

"A computer-readable storage medium characterized by storing a computer program defined in claim 32."

XI. The text of the third to eighth auxiliary requests is not relevant to this decision.

XII. The appellant's arguments, where relevant to the 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 invention

2.1 The application is concerned with creating a single electronic document file ("a book file") from one or more electronic document files generated by pre-existing general applications. The structure of such a book file is shown in Figure 3 of the published application. As explained in paragraphs [0034] to [0040], it contains a list of document pages 413 and information organising the document pages into a three-layered hierarchy (401, 405, 409) corresponding to "book"/"document", "chapter" and "page".

2.2 A book file may have attributes that are set at the page, chapter or book level. Such attributes may affect the layout of the page. For example, a "4UP" attribute signifies that a page of the book file corresponds to four document pages in a 2×2 layout (paragraph [0038]). Attributes may also control printer functionality such as the insertion of tabbed index paper for chapter separation and stapling (paragraphs [0043] and [0048]).

2.3 The claimed invention relates to a mechanism by which the user may specify which attributes to apply to document data being imported into the book file. This mechanism is described in paragraphs [0105] to [0115]. It allows the user to set up and assign attributes to one or more "hot" folders in a shared file system. These hot folders are monitored by a "hot folder program". When the hot folder program detects that a new file is stored in a hot folder, the document data in the file is imported into the book file and processed in accordance with the attributes assigned to the hot folder.

Main request

3. Clarity - Article 84 EPC

3.1 Claim 1 of the main request is directed to a "document processing apparatus which creates a book file managed by a hierarchical structure and formed from document data", which expresses that the claimed apparatus creates a book file.

However, the claim defines "import means" for importing document data "on any layer of a book file which has already been created". This feature expresses that the claimed apparatus operates on a pre-existing book file.

Claim 1 contains no features that resolve this discrepancy.

3.2 The appellant explained that the published application, in paragraphs [0054] and [0055], discussed two different cases. In the first case, a book file already existed and the document data was imported into the pre-existing book file. In the second case, the book file did not exist and the book file was newly created. Thus, in both cases, the document data was added to a book file that had already been created.

However, in the Board's view this explanation rather confirms that "which creates a book file", which corresponds to the second case, conflicts with "a book file which has already been created", which corresponds to the first case. While a claim may legitimately be drafted to cover two embodiments, its wording should then make clear that both embodiments are intended to be covered.

3.3 Hence, claim 1 of the main request is not clear (Article 84 EPC).

First auxiliary request

4. Clarity - Article 84 EPC

4.1 Claim 1 of the first auxiliary request is likewise directed to a "document processing apparatus which creates a book file managed by a hierarchical structure of three layers and formed from document data" and defines "import means" for importing document data "on any layer of a book file which has already been created".

4.2 Claim 1 of the first auxiliary request is therefore not clear for the same reasons as given for the main request (Article 84 EPC).

Second auxiliary request

5. Added subject-matter - Article 123(2) EPC

5.1 Claim 1 is based on original claim 1, with a number of amendments taken from the description as discussed below.

5.2 The document processing apparatus is configured not only to create a book file but also "to manage an existing book file", and it comprises "means for selecting a book file into which the document data is to be imported, wherein the book file is a newly created book file or an existing book file" (Figure 7 and paragraphs [0054] and [0055] of the published application). It further comprises "import means for importing the document data on any layer of the book file" (paragraphs [0056], [0113]).

5.3 The hierarchically structured book file consists of a book, representing a first layer, and at least one chapter, representing a second layer. The chapter includes at least one page, representing a third layer (paragraph [0034]).

5.4 The "attribute for a folder" relates to "layout information and printer setting information". This finds a basis in paragraph [0037], which discloses "layout information" and "function setting information of a printing apparatus".

5.5 When the detection means detects that data is stored into a first folder, the creation means creates document data "based on the attribute set for the first folder". This clarifying amendment is based on paragraph [0115].

5.6 Hence, the subject-matter of independent apparatus claim 1 and of the corresponding independent method claim 16 does not go beyond the content of the application as filed (Article 123(2) EPC).

6. Clarity - Article 84 EPC

6.1 Claim 1 of the second auxiliary request clarifies that the document processing apparatus is configured both "to create a book file" and "to manage an existing book file". The claim further defines "means for selecting a book file into which the document data is to be imported, wherein the book file is a newly created book file or an existing book file".

Hence, claim 1 is clearly intended to cover both the case in which document data is imported into an existing book and the case in which document data is imported into a newly created book. The claim therefore overcomes the clarity problem discussed in point 3 above.

6.2 The remaining clarity objections raised in the Board's communication against claim 1 of the main request have also been overcome by amendment and therefore no longer apply to claim 1 of the second auxiliary request.

6.3 Hence, the Board sees no reason to object to the clarity of the independent apparatus claim 1 of the second auxiliary request. The same applies to the clarity of the independent method claim 16.

7. Inventive step - Article 56 EPC

7.1 Document D1 discloses a document processing system for producing a single electronic "book file" from one or more electronic document files generated by "general" applications (paragraphs [0053] and [0058]). The book file has a hierarchical structure. It includes a number of chapters, each chapter including a number of pages (paragraph [0067]).

The structure of a book file is described in paragraphs [0065] to [0069] with reference to Figures 3A and 3B and corresponds to the structure described in the present application.

The system includes a "bookbinding" application that allows a user to choose between creating a new book file and opening an existing book file (paragraphs [0099] and [0100]; Figure 13).

Once a book file has been created or opened, application data can be converted into an electronic original file and imported as a new chapter of the book file (paragraph [0104]). The value of a chapter attribute of the new chapter is set to the value of the corresponding book attribute if it exists and to a default value otherwise (paragraph [0107]). Paragraphs [0073] and [0075] give examples of attributes relating to layout settings and printer settings.

7.2 The apparatus of claim 1 differs from the system of document D1 in that it includes:

- setting means for allowing the user to configure/set an attribute for a folder; and

- detection means for detecting storage of data into the folder.

In addition, when the detection means detects that data is stored into a first folder, the data is processed on the basis of the attributes set for the folder and imported into a layer of the book file.

7.3 In its decision, the Examining Division argued that whether to add data to an existing book file via a drag-and-drop operation (as disclosed in paragraph [0104] of document D1) or by storing it in a folder with predefined attributes was not a technical consideration but a question of user preferences. The objective technical problem could therefore be formulated as "how to provide a UI to select folder and attributes".

7.4 The Board does not agree. In certain cases the choice between two known input mechanisms may be a matter of subjective user preference. However, in the present case the distinguishing features do not relate to such a choice but define a specific mechanism that is implemented with technical means in the form of a file system and which solves the technical problem of allowing the user to specify an input data file together with attributes to be applied to the data in the file.

7.5 In its communication, the Board suggested that the skilled person would have found the claimed solution to this problem both in documents D8 and D9.

Document D8 discloses "hot folders 24", which are storage areas for receiving and temporarily storing image files (paragraph [0027]). When an image file is copied into one of the hot folders, the file is automatically processed by an image processing program and outputted on a printer in accordance with settings that are specific to that hot folder (paragraphs [0029] and [0058]).

Document D9, in column 28, line 63, to column 29, line 3, likewise discloses a "hot folder" implementation. Parameter files are placed in appropriate folders, and then an input file is dropped into a "waiting" folder. When the input file is detected, the parameters and the file are communicated to a ("Trapwise") software tool. The parameter files are placed by a "trapping processor" (column 28, lines 27 to 30).

7.6 Neither document discloses means for allowing the user to configure attributes for a ("hot") folder. In the Board's view, the skilled person, faced with the objective technical problem, would therefore not consider adding the "hot folders" of document D8 or D9 to the document processing apparatus of document D1 in the expectation of solving the problem.

Hence, the subject-matter of claim 1 and of the corresponding claims 16, 32 and 33 is not rendered obvious by a combination of documents D1 and D8 or D9.

7.7 In its communication, the Board also drew the appellant's attention to document D7, which appeared to have even more overlap with the present application than document D1. In particular, Figure 3 of document D7, depicting the structure of a book file, was identical to Figure 3 of the application.

Since document D7 does not disclose any of the features distinguishing the subject-matter of claim 1 from the disclosure of document D1, it does not render the claimed invention obvious, either.

8. Remittal

8.1 In view of the above, the decision under appeal is to be set aside. However, the dependent claims and the description and drawings may still need adaptation. In this respect, the Board notes that the drawings as listed in the Examining Division's decision ("Drawings, Sheets 1/43-43/43 as originally filed" and "Drawings, Figures 14-18, 35, 41 filed on 08-03-2016") appear to contain duplicate figures. Since these are matters that are more appropriately dealt with by the Examining Division than by the Board in the framework of a judicial review of the contested decision (Article 12(2) RPBA 2020), a remittal is justified (Article 11 RPBA 2020).

8.2 Hence, the case is to be remitted to the Examining Division for further prosecution on the basis of the second auxiliary request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution on the basis of the second auxiliary request filed during the oral proceedings.