T 0135/94 12-06-1995

1. The appeal (cf. III) is admissible.

2. The first question to be answered is whether the amendments made to Claim 1 (main request) are admissible.

2.1. In substance, Claim 1 is based on the original Claim 6; that claim was the broadest of the three independent claims filed originally.

2.2. Where Claim 1 is more specific than the original Claim 6, in this respect it is clearly derivable from the (still original) description.

3. Following the reason for the decision under appeal, the issue now to be decided is whether Claim 1 (main request) is allowable, in particular whether its subject-matter involves an inventive step.

3.1. As a preliminary remark, it should be mentioned that no translation of the text of D0 is on file, that D1b is not on file, that D2b is not on file save for the submitted drawings (cf. IV), and that D3b and D5b are not on file.

Therefore, only the D0 drawings, D1a, D2a, Figures 3 to 9. of D2b, D3a, D4 and D5a can, in the present state of affairs, be considered as prior art.

Incidentally, this would apply also to the other four pairs of JP (abstract and patent) documents cited in the Search Report.

3.2. Of the documents which were cited, D1 in the form of D1a was considered in the first instance procedure as the document coming nearest to the claimed invention.

The Board agrees with this view because D1a not only discloses a contact-type image reading device comprising the elements defined in the pre-characterising part of Claim 1 but, in addition, some information about the usefulness or not of stray light.

3.3. More particularly, D1a discloses that the properties of the protective layer (8) are deliberately selected so as to scatter a substantial amount of light (10 to 100% of the light (11) reflected from the original (9) into the photo sensor (5) for the purpose of biasing it.

Since the said biasing light is light which is not modulated by the reflectivity variations of the original, it makes no difference whether it is scattered light stemming from the light entering via the lighting window (3) or stray light entering from anywhere else. The conclusion the Board draws from this fact is that D1a would teach that stray light entering from anywhere is not at all something to be avoided but, even in considerable amounts, something useful.

3.4. The claimed device differs from this prior art device, shown in D1a and defined in the preamble of Claim 1, by the characterising features of Claim 1 (cf. V) and is thus new.

3.5. It follows from the above analysis of D1a (cf. 3.3) that the skilled person knowing this prior art document would have no reason to consider doing the exact opposite of what is disclosed there, namely preventing stray light from entering the image reading device.

3.6. D2 (in the form of D2a and Figs. 3 to 9 of D2b) would not change his mind.

For a non-contact-type image reading device such as one with an elongated optical system (204 in Fig. 7 of D2b) between the original (301) and the photo sensor (205) it is plainly necessary and self-evident that the large amounts of light that might fall from the surroundings onto the side end surfaces of the housing (201) are prevented from impinging upon the sensor section. The skilled person knowing D2 would not therefore find there any incentive for considering the very much smaller amounts of stray light which might enter from the side end surfaces of the transparent substrate of a contact- type image reading device such as that of D1a to cause any problem.

3.7. It is therefore not obvious to apply the teaching of D2, viz. to provide a light shielding hood, or more generally: a light shielding means, around a non- contact-type image reading device, to a contact-type image reading device, and more specifically, it is not obvious to do this in the way claimed in the application, viz. by providing such means directly on a side end surface of the transpartent substrate and protective layer.

3.8. Of course, if the skilled person, implementing the device of D1a had any reason to suspect that stray light might cause a problem, the solution to this problem would be obvious, even in the absence of a document such as D2.

However, this is not the case here. According to the disclosure in the application documents, the claimed invention is based on the recognition that, contrary to the teaching of D1a, stray light does deteriorate the function of the photo sensor of a contact-type image reading device. Since this effect of stray light is not pointed at in the prior art, the claimed invention is to be regarded as being based on a new recognition, and the underlying problem is thus also new. However, having regard to the teaching of D1a this new recognition or new problem, must also be considered as being not obvious to a skilled person. This renders the claimed invention also non-obvious even irrespective of whether or not the solution as such would be obvious were the problem given.

It may therefore, in the present case, be said that the required inventive step lies in the recognition of the problem rather than in its solution.

3.9. There is nothing in the D0 drawings or in D3a, D4 and D5a to lead the Board to a different conclusion.

These documents do not disclose the above-mentioned deteriorating effect of stray light in a contact-type image reading device and do not therefore anticipate the afore-mentioned non-obvious recognition on which the claimed invention is based.

3.10. For these reasons, the subject-matter of Claim 1 is regarded as involving an inventive step, and this claim is allowable.

4. In the decision under appeal, Claim 7 was stated to be an independent claim. As an independent claim, it would have to be examined, independently of Claim 1, in respect of the issue of inventive step.

4.1. However, as correctly also stated in the decision under appeal, this claim corresponds, with only minor amendments, to the original independent Claim 12. In fact, although the technical features of the image reading device as they were expressly defined in the original Claim 12, are not expressly recited in present Claim 7, this latter claim does include these features by virtue of the reference in its preamble to Claim 1 where the said features are defined.

As to substance, therefore, the reference in Claim 7 to Claim 1 makes this claim dependent upon Claim 1.

4.2. For the issue to be decided, this means that the subject-matter of Claim 7 involves an inventive step by the very fact that the device of Claim 1 comprised, according to Claim 7, in the claimed apparatus involves an inventive step, irrespective of whether any of the additional features claimed would contribute to the inventive step (which is clearly not the case with the characterising features of Claim 7).

5. As regards the Appellant's main request, it remains to be decided whether the claims, the description and the drawings on file can serve as a basis for the grant of a patent.

5.1. It is not clear that this is the case with respect to all claims.

Even though, in the decision under appeal, the dependent claims were discussed in relation to lack of inventive step of their subject-matter, it would appear that no particular attention was given to more formal requirements such as, for instance, support for, and clarity of, Claims 5 and 6.

5.2. Furthermore, it would appear that amendments are required in the description (Rule 27(1)(b) and (c) EPC).

The Appellant has indicated (letter of 5 January 1995, page 2), that such amendments are intended, but they have not so far been submitted.

5.3. The Board therefore concludes that the case is not ready for grant, and that it would therefore be appropriate, having regard to the Board's discretion under Article 111(1), second sentence, EPC, to remit the case to the first instance department in order to give the Appellant an opportunity to render the application suitable for grant.

6. Conclusions

6.1. The Appellant's request that the decision under appeal be set aside is allowable.

6.2. The Appellant's main request being allowable as far as the subject-matter of Claim 1 is concerned (cf. 3.10), the auxiliary request for oral proceedings ("if there are still fundamental objections as to the subject- matter of the Claim 1 according to the main request") does not need to be considered.

6.3. The Appellant's request that a patent be granted cannot, however, be allowed in the present circumstances, but requires remittal of the case to the first instance (cf. 5.3).

Reference is made to Article 111(2), first sentence, EPC.

6.4. In these circumstances, there is no need to consider subsidiary requests I and II.