T 0917/11 03-06-2016

1. The appeal is admissible.

2. Novelty (Article 54 EPC)

The appellant did not dispute the novelty of the claimed subject-matter.

3. Inventive step (Article 56 EPC)

The board considers D1 as representing the closest prior art. The board understands the relevant disclosure of this document to be as follows.

3.1 The mail system of D1 comprises mail processing plants 51, 53, 55 connected to each other through a delivery transport mechanism 52 (see page 11, lines 1 to 4 and figure 3).

Each processing plant comprises one or more originating mail processing apparatuses 50 and one or more destination mail processing apparatuses 54 (see page 11, lines 6 to 10).

Each of the processing apparatuses 50 and 54 comprises a system for verifying a digital mark on a document (see page 12, lines 21 to 25 in combination with figure 4 for the originating mail processing apparatus and page 16, lines 18 to 22 in combination with figure 8 for the destination processing apparatus).

The board agrees with the respondent that D1 does not explicitly disclose that the originating mail processing apparatus shown in figure 7 in connection with the disclosure of the second embodiment comprises the features of the originating mail processing apparatus of the first embodiment shown in figure 4. However, almost all the features of the apparatus shown in figure 4, such as the deviator control, the deviators 65 and the short paid bin 64A as well as the fraudulent stamps bin 64B are also shown in figure 7. If no local check were to be implemented in the second embodiment of D1 corresponding to figure 7, these deviators and bins would serve no purpose. The board considers therefore that the second embodiment of D1 is a further development of a system based on the originating mail apparatus shown in figure 4.

It follows that the originating mail processing apparatus shown in figure 7 checks in real time (see page 19, lines 29 to 31) the deposited mails and establishes a log file comprising the IDtags of the valid stamps, the other invalid stamps (short paid mails and stolen mails) being diverted to the said bins (see page 13, lines 16 to 26 and page 14, lines 8 to 14). The log file is therefore a file comprising verifications results, even if comprising only the positive results, namely the Idtags of the forwarded mails.

The board therefore understands that each processing plant 51, 53, 55 is a system comprising

at least one originating mail processing apparatus (DPMVM) which reports results of local verifications to a national circulation database 78, and at least one destination processing machine verification module (DPMVM) 54, responsive to information obtained from the documents (see paragraph bridging pages 18 and 19), performing local verification of the documents according to a control file received from a data centre verification module comprising the national circulation database 78 (see page 19, lines 11 to 23).

D1 is silent about the updating of the stolen stamps table 72 at the originating mail processing apparatus (see page 14, lines 8 to 14). Nevertheless, each plant sends a log file comprising the results of the local verification to the national circulation database 78, which is implicitly part of a data centre verification module (DCVM). The DCVM of D1 is responsive to information about the documents obtained from each mail processing plant (cf. page 17, lines 7 to 14). It analyzes the information from the documents, stores in a log file for each stamp a record of the mail pieces (in the format shown in figure 9), which are put in circulation by the originating mail processing apparatus (see page 15, lines 30 and 31 and page 17, lines 7 to 14), and periodically updates the list 88 of information tags sent to the mail processing plants, in particular to the destination mail processing apparatuses (see page 17, line 31 to page 18, line 25). The list can be seen as an updated log file based on the results of collectively analyzing the information obtained about all documents processed by the originating mail apparatuses.

The records in the log file may correspond to either valid or fraudulent mail stamps. The log file is also a control file in the sense that the process implemented at the national circulation database 78 (see figure 11B) may send a message to the destination mail processing apparatus to extract fraudulent mail pieces for sorting to a special stacker bin (see page 17, line 31 to page 18, line 25).

The records created at the originating mail processing apparatus and corresponding to mails which are in circulation, are then deleted in national circulation database 78 after a certain time (see page 17, lines 17 to 30).

The board also does not agree with the respondent that the verification results are not sent back to the originating mail processing apparatus. At least in cases where the origin and destination of a mail piece fall in the same geographical area, the control file is sent back to the processing plant where the mail piece was deposited.

3.2 Thus the subject-matter of claim 1 differs from document D1 only in that:

- only a sample of documents is verified (at the originating mail processing apparatus 54), and

- the log file is a control file specifying patterns of sampling and responses to sampling results.

With the term sample the board understands that only a subset of documents and not the whole group of documents is verified, as understood by the opposition division (cf. item 7.6 of the minutes of the oral proceedings before the opposition division and item 5.2.1 of the contested decision).

3.3 It is not apparent to the board what purpose might be served by incorporating information about sampling patterns in the log file of D1, because that log file is used only by the destination mail processing apparatus, and not by the originating mail processing apparatus.

Rather than tracking all fraudulent mail pieces, the invention of the patent in suit aims at detecting suspect meters or suspect postal security devices (see published patent sections [0008], [0017] to [0019] and [0021]). In such a context the use of sampling has a technical purpose and cannot be ignored when assessing inventive step. The board therefore considers that the subject-matter of claim 1 is not derivable in an obvious manner from D1 and that it thus involves an inventive step in the sense of Article 56 EPC having regard to D1.

3.4 The appellant has not shown that any of the documents D2 to D4 suggests the features recited under item 3.2 above. Document D4 could be used to show that some control operation done at the data centre verification module and at the originating and receiving mails processing apparatuses could be exchanged. Nevertheless it does not render the two features mentioned under item 3.2 above obvious. A combination of any of the documents D2 to D4 with D1 therefore does not lead to the invention as claimed.

3.5 According to the claimed invention the control file is sent from a data centre verification module to document processing machine verification modules (which are called field modules by the appellant). The control file would have the effect of reconfiguring these field modules.

The appellant did not propose any motivation for a person skilled in the art to reconfigure the field modules of D1 in the manner claimed. The argument of the appellant that a person skilled in the art would recognise the need for reconfiguring the mail processing plants of D1, in particular the mail destination mail processing apparatuses, appears therefore to be one resulting from an ex-post facto analysis.

3.6 The appellant alleges in a separate line of argument that it would be known in a ticketing system to report the results of the check of the tickets done at the entrances of a stadium to a data centre, which in return would give instructions to modify or reinforce the control at the particular entrances where fraud is noticed. The appellant did not provide any evidence which could support this allegation. Furthermore the appellant did not give any information about the kind of instruction which would be issued by the data centre. Notwithstanding the lack of evidence, it could be accepted that new instructions for ticket checking might be transmitted to an entrance checking point where fraud is detected. However, the distinguishing features mentioned under item 3.2 would not be rendered obvious by any arbitrary type of instruction, and the board does not see any reason why that instruction should be to check only a sample of the tickets. It seems to the board that the aim of a ticketing system is to check all tickets, in the same way that the mail transporting system of D1 aims at checking every mail piece. Hence starting from a manual ticketing system, a person skilled in the art could be tempted to combine hardware like that used in D1 with software for automating the ticketing process. He would however not have had any incentive to develop software comprising the two features mentioned under item 3.2 above.

3.7 The appellant regards the features relating to the sampling as being irrelevant for the assessment of inventive step, because it considers them as being administrative measures not contributing to any solution of a technical problem. The two features relating to the control file and its sampling instructions do however contribute to the solution of at least one technical problem, namely that of detecting suspect meters or suspect postal security devices (see item 3.3 above). The distinguishing features relating to the sampling cannot therefore be ignored and do involve an inventive step in the sense of Article 56 EPC having regard to D1 or to a ticketing system or a combination of D1 with the knowledge of a person skilled in the art of checking tickets.

3.8 Finally, the appellant alleged that systems for supervising corrupted data in computers or detecting viruses or false money, discussed under the references G10 to G12 in the statement of grounds of appeal, involved a sampling method. The appellant did not provide any proof of this allegation. The board considers it to be doubtful that any of these systems would involve sampling, as opposed to checking 100% of the items. Therefore, as far as sampling is concerned, this alleged prior art is not considered as belonging to the common general knowledge.

Nevertheless, according to the appellant a person skilled in the art would apply the teachings of G10, G11 or G12, in which a central database records incidents (corrupted data or viruses or false money papers), to a system according to D1 to reconfigure the system of D1. The appellant however did not give any reason as to why a need would exist to reconfigure the system of D1 or change the control of the field modules i.e. the modules of the originating mail processing apparatuses of D1. In particular, since the system of D1 tracks each mail piece and records at a central database the valid items which are in circulation, it is unclear which need would be fulfilled by sampling the mail pieces at the originating mail processing apparatuses of the system of D1.

The board concludes therefore that the generic prior art as documented in G10 to G12 was no more relevant than the ticketing system and thus could not contribute to establishing the obviousness of the claimed subject-matter.

3.9 Thus, and since for the reasons given below none of the other prior art cited by the respondent (i.e. documents D5 to D12 and G13) was admitted into the proceedings, the board concludes that the subject-matter of the independent claims 1 and 10 of the request as maintained by the opposition division involves an inventive step according to Article 56 EPC.

4. Admittance of late-filed prior art documents

The other documents cited by the appellant (D5 to D12 and G13) were not admitted into the proceedings for the following reasons.

4.1 The opposition division did not admit document D5 into the proceedings because it was filed later than nine months after the publication of the mention of the grant of the European patent in the European patent bulletin and eight months after the summons to oral proceedings before the opposition division were sent, and because no amendment by the patent proprietor had been made which could have justified such late filing. D5 was also considered to be no more relevant than D3 (see item 5.3.3.3 on page 15 of the contested decision).

The opposition division considered that D3 deals with a method and system for detecting fraudulent data updates in networked computer environments, wherein decentralised stations communicate with central stations to get updates from central stations in order to modify fraud detection (see item 5.3.1 on page 14 of the contested decision).

The appellant did not dispute this analysis of D3 and did not present any argument as to why D5, which relates to screening phone calls, would be more relevant than D3 for assessing whether the features distinguishing the subject-matter of claim 1 from D1 would contribute to an inventive step. The appellant also did not indicate any reason as to why D5 was filed at such a late stage in the procedure.

The board therefore sees no reason to overturn the decision of the opposition division exercising its discretionary power according to Article 114(2) EPC not to admit D5 into the proceedings (cf. Case Law of the Boards of Appeal of the European Patent Office, 7th Edition, 2013, IV.E.3.6 at page 983, and in particular decision G 7/93).

4.2 The appellant did not demonstrate that documents D6 to D12 and G13 were prima facie relevant or could contribute to the assessment of inventive step when starting from D1 and having regard to the distinguishing features identified under item 3.2 above.

4.2.1 The Board agrees with the respondent that D6, which concerns biological samples, is far from the field of postal security devices.

4.2.2 The Board agrees partly with the appellant's analysis of document D7 (see column 6, line 42 to column 7, line 31 of that document and the penultimate paragraph of page 10 of the statement of grounds of appeal). D7 seems to disclose a system for verifying a digital mark on a document based on sample analysis. However the system according to D7 does not send a control file in the sense of the present claim 1.

4.3 In D8 the verification process at the post office shown in figure 5 is described in the paragraph bridging columns 13 and 14. Only selected mail pieces, i.e. a sample of mail pieces, are checked (see column 14, lines 10 to 17). The subject-matter of claim 1 differs from D8 in that the information obtained from the sampled documents (mail pieces) is sent to a central unit, and that a replacement control file comprising the results of collectively analyzing the information obtained from the documents (mail pieces) is provided by the central unit (see page 13, paragraph 3 of the statement of grounds of appeal and second feature of item 3.2 above). D8 does not therefore appear prima facie more relevant than D1.

4.4 D9 does not concern mail samples and is therefore not more relevant than D1.

4.5 Documents D10 to D12 were filed after oral proceedings were arranged. The board agrees with the respondent that the field of D10, which relates to analog to digital converters, is too remote from the mail delivering systems of D1. Moreover, D11 and D12 were published after the filing date of the contested patent.

4.6 G13 was cited to prove that holding a downloadable update list at a central computer or automatically downloading a file from a host computer to a client computer was known. This is however not relevant for the assessment of inventive step in the context of the two features mentioned under item 3.2 above.

4.7 The board therefore concluded that documents D6 to D12 and G13 are prima facie not relevant, and hence exercised its discretion under Article 114(2) EPC not to admit documents D6 to D12 and G13 into the proceedings.

5. Since the grounds raised by the appellant do not prejudice the maintenance of the patent in the form proposed in the decision under appeal, the request of the respondent to dismiss the appeal has to be granted.