T 0427/11 17-07-2014

Reasons for the Decision

1. Reimbursement of the appeal fees and remittal of the case

1.1 Both appellants argue that, in the impugned decision, the opposition division did not give due consideration to all relevant the submissions presented during the opposition proceedings on the issue of inventive step, thereby violating the right to be heard as laid down in Article 113(1) EPC 1973. In particular, the submission that the subject-matter claimed merely corresponded to the automation of an officer's tasks when issuing a passport was not adequately addressed. Moreover, it did not give any reasons why the public prior use according to documents D7 and D8 was closer to the subject-matter of claim 1 as maintained than the other prior art documents on file, in particular document E5', which appellant I had used as a starting point in the opposition proceedings for challenging the inventiveness of the subject-matter claimed.

1.2 The board notes that the right to be heard generally requires that those involved in proceedings before the European Patent Office be given an opportunity not only to present comments on the facts and considerations pertinent to the decision but also to have those comments demonstrably heard and considered, that is, reviewed with respect to their relevance for the decision on the matter. In general, Article 113(1) EPC 1973 guarantees a party's right to have the relevant grounds, i.e. the party's arguments raising reasonable doubts as to the legal or factual basis underlying the reasons for the decision, fully taken into account in the written decision, even though this can be done implicitly (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) edition, 2013, chapter III.B.1.1.).

1.3 Applying these principles to the case in issue, the board judges that the appellant's submissions mentioned above in paragraph 1.11.1 are not irrelevant given the opposition division's positive decision on inventive step of the subject-matter of claim 1 of the (then) second auxiliary request, which corresponds to the main request in the present appeal proceedings. Moreover, the opposition division manifestly took note of these inventive step objections and summarised them in the contested decision (cf. points 6.3.1 and 6.3.2 of the reasons). In its reasoning on why the subject-matter claimed involved an inventive step it started from the public prior use according to documents D7 and D8 as the closest prior art, however, without giving any reasons for doing so (cf. point 6.3.3 of the reasons):

"The Opposition Division holds that the public prior use as disclosed in D7 and D8 represents the most relevant prior art for the contested invention."

More particularly, in the contested decision the opposition division remained silent both on why it considered the public prior use according to documents D7 and D8 a more promising starting point than document E5', which appellant I had relied upon, and on why a combination of the system of document E5' with the self-contained page-turning mechanism of document E4 did not involve an inventive step. Moreover, it did not provide any arguments on why the subject-matter claimed did not merely correspond to the automation of an officer's tasks when issuing a passport. Regardless of the merits of the above objections, the decision is formally defective in that it is tainted by a lack of reasoning on a point relevant for the dispute, thereby resulting in a violation of the appellants' right to be heard guaranteed by Article 113(1) EPC 1973. This amounts to a substantial procedural violation justifying the reimbursement of the appeal fees of both appellants in the event that their appeals are allowable, Rule 67, first sentence, EPC 1973 (which continues to apply, cf. Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000 published in Special Edition No. 1 of OJ EPO 2007, 197; Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the European Patent Convention 2000 published in OJ EPO 2007, 8; decision J 10/07, OJ EPO 2008, 567, Reasons No. 7).

1.4 Article 11 RPBA provides that a case shall be remitted to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

The board holds that special reasons speak against a remittal of the present case to the opposition division, in particular the length of the proceedings to date and the considerable further delay which would ensue from a remittal. Additionally, the opposition division evidently took note of all the inventive step objections raised, even though the corresponding reasoning in the decision under appeal is incomplete. Consequently, considering all the relevant facts, the board concludes that a remittal of the case to the department of first instance would be inequitable. The board thus exercises its discretion under Article 111(1) EPC 1973 and Article 11 RPBA in the sense that it will itself decide on the merits of the appeals.

2. Admission of late-filed document E20

2.1 In the contested decision, the opposition division found that the subject-matter of claim 1 according to the present main request was based on an inventive step, in particular in view of the fact that the features of the claimed system are modular and that the first leafing module is adapted to turn to any page within the passport.

Together with the statement setting out the grounds of appeal, appellant I filed, inter alia, document E20 which shows leafing modules adapted to turn to any page within the passport, thereby allegedly rendering the subject-matter of the contested claim obvious.

2.2 The admission of a late submission is at the discretion of the board, Article 12(4) RPBA. Following established case law, a late filing of evidence together with the statement setting out the grounds of appeal can be exceptionally justifiable if it is an appropriate and immediate reaction to developments in the previous proceedings, in particular a finding in the contested decision, since the appellant who lost the opposition proceedings should be given the opportunity to fill a gap in its arguments by presenting further evidence before the second instance. Moreover, the board can take into account whether the late-filed evidence is prima facie highly relevant for the issues to be decided (cf. Case Law of the Boards of Appeal of the European Patent Office, 7th edition, 2013, IV.C.1.).

The board remarks that none of the features on which the opposition division based its decision on inventive step formed part of the claims as granted; they were introduced into the claims from the description and the drawings during the opposition proceedings. Document E20 was filed together with appellant I's statement setting out the grounds of appeal. It is directed to a leafing apparatus which is modular and adapted to turn to any page within the passport. The content of document E20 is thus prima facie highly relevant for the controversial issue of inventive step. The board is satisfied that its late filing constitutes an appropriate and immediate reaction to the findings in the contested decision. Document E20 is hence admitted into the appeal proceedings, Article 12(4) RPBA.

3. Main request, Inventive step

3.1 The parties do not contest the opposition division's finding that the public prior use according to documents D7 and D8 formed the closest prior art and that the subject-matter of claim 1 of the main request differed therefrom in that

(1) the system is a modular one and its input hopper, first and second leafing mechanisms, first and second personalization mechanisms and output mechanism are modules; and in that

(2) the first leafing module is adapted to turn to any page within the passport.

3.2 Regarding feature (1), the board holds that the VISA system which is the subject of the public prior use as shown in documents D7 and D8 is generally made up of self-contained units, and is thus modular. Moreover, a person skilled in the art would understand from documents D7 and D8 that station A (corresponding to the claimed input hopper module), printing stations 11 and 16 (corresponding to the claimed first and second personalization modules) and station R (corresponding to the output module) are designed as self-contained modules. However, the available evidence is not sufficient to establish clearly and unambiguously that the leafing mechanisms of documents D7 (see page 1, items A.5 and A.6, page 2, items B.5 and B.6) and D8 (reference signs 7 to 9 and 13 to 15) are designed as modules.

Regarding differing feature (2), the board is in agreement with the parties that the leafing mechanisms of documents D7 and D8 are not suitable to turn to any page within the passport.

The board concludes that the subject-matter of claim 1 according to the main request differs from the public prior use according to documents D7 and D8 in that the leafing mechanisms have a modular design and in that the first leafing module is adapted to turn to any page within the passport.

3.3 The objective technical problem to be solved can thus be seen in providing a leafing mechanism for a system that can be easily assembled and configured to different passport requirements (cf. patent in suit, paragraphs [0009] and [0042]).

3.4 The solution to the problem is not based on an inventive step. Reference is made for instance to document E14, which belongs to the same technical field as the patent in suit and discloses in Figure 13 a page-turning mechanism 203 with a modular design. According to the corresponding passage in the description of document E14 (cf. column 13, lines 3 to 13), "there is provided a page turning mechanism which can turn over the leaves of an inserted passport in either direction. The use of such mechanism brings a solution to the following problem. That is, a user might insert his passbook opened at a wrong page into the depositing machine, requiring a leaf of the passbook to be turned over in the opposite direction within in the machine. Otherwise, a plurality of leaves might be turned over at a time by mistake during forward page turning, requiring the additional leaf or leaves to be returned in the reverse direction." In order to achieve the above purpose, the leafing module of document E14 must be adapted to turn to any page within the passport.

Alternatively, reference is made to document E20, which is directed to an apparatus for turning pages of a book used in many kinds of applications, inter alia, in passbook printers (E20, column 1, lines 13 to 16). The fact that this page-turning apparatus is supposed to be integrated into various applications implies that it is designed as a self-contained unit and thus modular. Moreover, the apparatus is suitable to turn one or more pages in the forward and reverse directions (E20, column 5, lines 25 to 34). In column 6, lines 57 to 64, it is stated that in "many applications, the turning of several pages simultaneously is not intended but can be accepted in order to quickly reach a certain page number. The value to which the contact force and/or contact time is decreased is therefore dependent on whether the turning of multiple pages is acceptable. In any case, the turning of multiple pages should be avoided, since the book can be damaged thereby.". A skilled person would understand from this that the leafing module of document E20 is also adapted to turn to any page within the passport.

In view of the advantages cited above and the modular design of the prior art system of documents D7 and D8, a person skilled in the field of passport production would consider increasing the flexibility of the passport production system of documents D7 and D8 by using the leafing modules of documents E14 or E20. The subject-matter of claim 1 according to the main request is therefore not based on an inventive step, Article 56 EPC 1973.

4. First auxiliary request, Inventive step

4.1 Based on the above assessment of inventive step with respect to the main request, the board judges that the subject-matter of claim 1 according to the first auxiliary request differs from the public prior use according to documents D7 and D8 in that

- the leafing mechanisms have modular design, and in that

- the first leafing module comprises a camera system is adapted to read an appropriate marker on the passport which indicates the current page at which the passport is open, and wherein the first leafing module is adapted to turn from the known current page to a pre-selected other page in the passport which can be any page within the passport.

4.2 The objective technical problem problem to be solved can thus be seen in providing a leafing mechanism for a system that can be easily assembled and configured to different passport requirements (cf. patent in suit, paragraphs [0009] and [0042]).

4.3 In view of the teaching of document E20, the solution to the above problem is not based on an inventive step. As already established for claim 1 of the main request, the leafing apparatus of document E20 is modular and adapted to turn to any page within the passport. Furthermore, it is equipped with optical checking means 104 for reading the current page number during the page-turning operation (E20, column 4, lines 23 to 27 and column 5, lines 25 to 34), thereby anticipating the additional feature of a camera.

Thus, document E20 provides the skilled person with a clear teaching for modifying the apparatus known from documents D7 and D8 in order to arrive at the subject-matter of claim 1 according to the first auxiliary request, which is therefore not based in an inventive step, Article 56 EPC 1973.

5. Second, third and fourth auxiliary requests, Admissibility

5.1 Under Article 13(1) RPBA, it is at the board's discretion to admit any amendment to a party's case after it has filed its grounds of appeal or reply:

"Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy."

In addition to the non-exhaustive list of criteria referred to in Article 13(1) RPBA, the following factors may, according to settled case law, be particularly decisive: there must be sound reasons for filing a request at a late stage in the proceedings, as may be the case where amendments are occasioned by developments during the proceedings. Besides the timing of the filing of the request, important aspects are whether the amended claims converge with or diverge from the subject-matter previously claimed and whether the amendments are prima facie clearly allowable (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) edition, 2013, chapter IV.E.4.4.1).

As a rule, a board's decision should be based on the issues in dispute at first instance, which does not rule out the admission of new submissions, but does subject it to the fulfilment of certain criteria, given that no entirely "fresh case" should be created on appeal.

It is worth noting that the admission of an amendment to a party's case remains at the board's discretion under Article 13(1) RPBA even if it has been submitted within the time period set in a communication under Article 15(1) RPBA, the purpose of which is generally to give guidance for the oral proceedings in order to allow the parties to focus their arguments on issues that the board considers crucial for reaching its decision.

5.2 In the present case, the board's preliminary opinion as set out in its communication under Article 15(1) RPBA did not raise new questions but was essentially based on issues and arguments submitted by the appellants in their respective statements setting out the grounds of appeal. In fact, the respondent knew the decisive inventive step objections based on the public prior use and documents E20 or E14 already from the outset of the appeal proceedings.

5.3 Moreover, the amended claims of the newly filed second and third auxiliary requests are directed to the aspect of a personalization module maintaining a generally constant thickness between the first and second passport halves and the print head during printing. Those claims therefore diverge from the subject-matter of the previously filed first auxiliary request, which focuses on the first leafing module comprising a camera system adapted to read an appropriate marker on the passport in order to indicate the current page at which the passport is open.

Beyond that, the independent claim of the fourth auxiliary request is aimed at an embodiment with a combined leafing/personalization module 24, which the respondent has explicitly stated is not covered by the claims during first instance proceedings. In that respect reference is made to paragraph [0053] of the description of the present main request as maintained by the opposition division:

"The leafer/printing module 24 according to an example not covered by the claims will now be described in reference to Figures 15-20."

Hence, the amended claims of the late-filed second, third and fourth requests do not converge with the subject-matter previously claimed but open new lines of defence at the final stage of the appeal proceedings.

5.4 Finally, the amended claims do not result from a combination of granted claims, as suggested by the respondent. In fact, independent claim 1 and dependent claim 2, on which the respective independent claims of the newly filed auxiliary requests are at least partially based, were substantially amended during the opposition proceedings by addition, inter alia, of the limitations regarding the modular set-up and the exact sequence of modules in the claimed system.

Common to the new second and third auxiliary requests is the amendment that it is one of said personalization modules which comprises the means for maintaining a generally constant distance between the first and second halves and the print head during printing. This was introduced after grant and is to be fully examined as to its compatibility with the requirements of the EPC, notably of Article 123(2) EPC (cf. decision G 9/91, OJ EPO 1993, 408, Reasons No. 19). In that respect, the board notes that a skilled person could derive from the published PCT application that the above "means" were originally foreseen either in a combined leafer/printer module 24 or a printer module 20 (cf. page 14, lines 17 to 20 as well as Figures 1, 2, 17 and 18). In the terminology of the contested claims, the latter corresponds to the second personalization module. The application as originally filed does not, however, provide any basis for generalising this disclosure, so that any of the personalization modules can be equipped with the disputed means for maintaining a generally constant distance between the first and second halves and the print head during printing. The proposed amendment therefore violates the requirements of Article 123(2) EPC.

Turning to the fourth auxiliary request, the amendments to claim 1 not only comprise the reintroduction of a previously excluded embodiment as mentioned above, but also the addition of a considerable number of corresponding design details taken from the description which were previously never claimed, namely "wherein each of the first and second rollers (250) is separately rotatably mounted on H-shaped supports (254a, 254b), the gap (256) defined between ends of the first and second rollers (250) and ends of the H-shaped supports (254a, 254b), wherein the opposite ends of the H-shaped supports (254a, 254b) are pivotably mounted on a shaft (258), and bias springs (260) are disposed around the shaft (258) with one end engaged with the single module (24) and an opposite end engaged with the H-shaped supports (254a, 254b) such that the rollers (250) are resiliency biased in a direction toward the third and fourth rollers (248)".

These amendments shift the subject-matter claimed in a divergent manner, the impact of which is impossible to assess without further investigations such as a new study of the prior art and potentially even an additional search.

The amended claims of the late-filed second, third and fourth auxiliary requests are thus not prima facie clearly allowable.

5.5 In view of the above, the board exercises its discretion under Articles 13(1) RPBA in the sense that it does not admit the second, third and fourth auxiliary requests into the appeal proceedings.