T 1171/97 (Collation record generation/PITNEY BOWES) 17-09-1999

1. The appeal is admissible.

2. The Board notes that in the decision of the opposition division, which rejected the opposition, document D2 was considered to represent the closest prior art. It was, however, concluded that the teaching of D2 neither alone, nor in combination with the teaching of D1 would affect the inventive step of the invention as claimed.

The Board can only agree with the decision of the opposition division (cf. under. III above). Thus D2 is not at all concerned with the processing of the material or the separate processing steps as is the invention. Instead it teaches how a material needed for a machine tool subsystem is transported and in particular requested, tracked and delivered to the subsystem. The Board can, therefore, see no direct connection with the present invention. Also, it cannot be seen how the combination of the subject-matter of D2 and D1 could lead the skilled man to the invention. As made clear by the opposition division, the cooperation of processing units described in D1 relates to a master-slave arrangement. Moreover, in contradiction to the invention the apparatus of D1 does not work in an asynchronous way, but performs at least the transport operations from station to station simultaneously (cf. Figure 2 in D1), e.g. clamp bar 61 engages the workpieces at all stations simultaneously and the transfer bar 75 simultaneously transfers them to the next work station.

3. The Board notes that the respondents consider that documents D4 and D5 cited for the first time before the Board are not relevant and should not be considered at all by the Board (see under VI above). They, however, express the opinion, that if the Board should consider these documents to be relevant, the case should be remitted to the first instance for further prosecution.

The Board, in fact, considers the two documents to be prima facie relevant, at least to such an extent that the inventive step of the subject-matter of claim 1 could possibly be challenged.

(a) The Board agrees with the appellants that the arrangement of D4 (described by the respondents under VI above) appears to comprise a system as defined by the precharacterising portion of claim 1 as well as the characterising feature (e). It, thus, appears that each of the stations of D4 (feeder 50, weighing module 20, postage meter 15) have a control processor (transport control 38, scale electronics 36) and it is made clear in column 17, lines 10 to 13 that the software of the meter may be modified which apparently means that also the postage meter has access to a processor). All these stations are apparently interconnected with each other in a given order.

According to the appellants also the characterising feature (f) is disclosed by D4, at column 9, lines 33 to 35, where it is described how the feeder 50 feeds mailpieces only in response to a signal from scale module 20. Thus the operation is a demand feed operation. Only after a request from the scale module is the operation performed. The appellants also refer to column 15, lines 12 to 16 and lines 49 to 55 in D4. The references made by the appellants are included in bold in the following two extracts from column 15 of D4 (the Board uses the wording of GB-A-2 195 603, publ. 13 April 1988 which corresponds to D4).

First extract: "By time T4 scale module 20 will determine the weight of mailpiece mp 1 and compute the corresponding postage amount. Scale module 20 then transmits this postage amount to postage meter 15 over link 15A and postage meter 15 then sets its indicia correspondingly. When the indicia are properly set postage meter 15 signals transport control 38 at time T5 through link 15 A and scale electronics 36."

Second extract: "It should be noted that it is a feature of the present embodiment that each stage of the above described cycle is initiated by completion of the preceding stage. Thus transport of mailpieces from feeder 50 to scale module 20 and from scale module 20. to mailing machine 12 is initiated when meter 15. signals that it is appropriately set, and the setting of meter 15 is initiated only when scale module 20 signals the proper postage amount for the mailpieces. Such asynchronous operation allows system 10 to take advantage of the normal situation where even in batches of mixed weight mail successive mailpieces will frequently have similar weights and postage amounts. In a synchronous system each cycle must be allotted sufficient time for the worst case situation."

The Board agrees with the appellants that it can be seen from both extracts that feature (f) is at least separately disclosed. From the second extract, moreover, it is understood that the scale module 20, in similarity with the processor according to the characterising feature (g) of claim 1, directs data (weight of the mailpiece) to the data control processor of the next succeeding station, i.e. the postage meter 15.

(b) The Board agrees with the appellants' opinion that document D5 discloses the system of the prior art portion of claim 1 and the characterising feature (e), or at least discloses a system that is organised in a very similar way. In that respect the appellants argue in the following way:

D5 discloses a production line transport for a plurality of workpiece carriers (11,11a,12,12a). The respective carriers carry different workpieces. Along the production line for workpiece carriers there are at least a feed station and several assembly stations (Figure 1). All stations apparently have corresponding write/read transducer stations 19, 20 (see page 11, last part of the first paragraph). All transducer stations are interconnected over a cable 21 and with a data processing control unit 22. The write/read transducer stations cooperate with information code carrier units 23 on the workpieces or their carriers. The data stored in the memories of the information code carrier is related to the information data concerning the different working steps that were performed at a station or are going to be carried out at the next station. In order to be able to read out and write the information in the respective transducer stations there must apparently be microprocessors available for those stations. It is also self-evident that every production station must have a processor for controlling the production steps to be performed.

Concerning the characterising steps (g) and (h) the appellants refer to the description of D5, the bridging paragraph between pages 4 and 5, which describes the memory of the information code carrier unit. It is said that it is preferable to have a memory consisting of a PROM as well as a RAM. The PROM will have written coded information relating to the particular workpiece carrier or workpiece. The RAM may contain information which changes as production proceeds, i.e. this information may be added at the different production stations.

From this the appellants, therefore, draw the conclusion that the characterising steps (g) and (h) are disclosed by D5. The Board feels that this interpretation of D5 is supported by the embodiment shown in Figure 4, which discloses an information code carrier unit. On page 11 of D5 (the last part of the first paragraph) an associated text passage states that, "the memory unit 40, thus, can be brought up-to-date at any one of the stations where it cooperates with a transducer, and progress in respective production steps or measured results or the like can be entered in RAM 42 at suitable stations in the form of binary information" (the Board has used the English text of US-A-4 588 880, published 13 May, 1986 which corresponds to D5).

4. As can be understood from the respondent's arguments (see under VI above) they consider that the skilled man would not combine D4 and D5. They point out that the machine according to D4 consists of only three stations and are of the opinion that data like that identified in the characterising features (g) and (h) of claim 1 cannot be derived from D4. Moreover, they cannot understand how D4 could be combined with D5 and question the motivation to "document the processes at the individual stations" in the system of D4 (see under VI above).

The Board, however, is of the opinion that these two documents disclose features which at least at first sight appear to be very relevant. First it appears to be possible to extract from D5 the general principle that at each production station the data information of the step performed or to be performed at the next station on a workpiece can be added to the record of that workpiece. D4 in turn appears to disclose the advantage of using asynchronous operations (cf under 3(a), second extract), i.e. it discloses that every station performs its production steps independently. This would imply that the stations have to cooperate with each other and must exchange data, e.g. to get information about whether the next station is prepared to receive material to be processed.

5. Whilst acknowledging the relevance of D4 and D5, the Board does not consider it appropriate that the Board itself makes a final assessment of the inventive step having regard to the two new documents. The respondents have requested that, if the Board comes to the conclusion that the documents are relevant, the case should be remitted to the first instance for further prosecution. The Board agrees that the request indicates the correct procedure in this case, since after a remittal according to Article 111(1) EPC the invention could be properly examined by two instances.

In this respect the Board notes that the appellants not only considered the combination of D4 and D5 to lead to the invention, but also the combination of the documents D2, D4 and D5.

6. The Board, therefore, deems it appropriate to remit the case to the first instance for further examination. The opposition division should in a new decision consider the points mentioned above (cf. under reason 5 above).

7. No oral proceedings are necessary, given that both parties withdrew their requests for oral proceedings in the case of remittal to the first instance.

8. As can be seen under VI to IX above (see in particular respondents' "outcome" point (b) under VI) the respondents consider that if the documents D4 and D5 are deemed to be relevant "an award of costs should be made in the proprietor's favour".

Article 104(1) EPC states the principle that each party to the proceedings shall meet the costs he has incurred and that different apportionment of costs can only be ordered for reasons of equity. In the present case the Board has come to the conclusion that the two new cited documents are relevant and that the appellants filed new documents because the documents cited during the opposition proceedings were not considered by the opposition division to be sufficiently strong to affect the patentability of the invention. Thus, the Board is satisfied that the new documents, which became known to the appellants in the course of another search, have not been filed in order to obstruct the proceedings, but because they contain aspects which the opposition division said it did not find in the previously available references: asynchronous processing (D4) and passing along from station to station of a data record of processing steps taken (D5).

For the above reasons the Board is of the opinion that the additional costs the respondents have incurred should at this stage not be held against the appellants, who, in fact, have acted in a quite normal and fair way. Therefore, the Board considers that the question of equity does not arise and there is no reason to deviate from the principle stated above.

It is true, that in the case T 326/87 (OJ 1992, 522), referred to by the respondents, a Board has deemed it appropriate to apportion the costs which were incurred by the respondent's representative in connection with the oral proceedings in the appeal, because the appellant had filed a document too late, i.e. together with the grounds of appeal as in the present case. However, the Board points out that, according to the cited decision, the costs have been apportioned in the absence of any convincing explanation for the late introduction of the document; for the reasons explained above such a situation is not present in the case under consideration.

In the case T 611/90 (OJ 1993, 50), also referred to by the appellants, indeed, the costs in the future proceedings before the opposition proceedings as well as in any subsequent appeal proceedings were apportioned so that the opponent had to pay the patentee the whole of the costs which were to be legitimately incurred by the patentee in dealing with the case. However, also in that case, where the appellant really raised a fresh case based on prior public use, which was clearly very different from prior publication which had been the basis of the first instance decision, the Board decided on the basis of the principle that the late filing party should bear all the additional costs caused by his tardiness in the absence of strong mitigating circumstances for the late filing of facts, evidence or other matter. It follows that also the latter decision does not apply to the present case.