T 1984/14 24-10-2018

Reasons for the Decision

1. Public availability of D28a

1.1 The appellant argued that the evidence submitted by the respondents, who were not directly involved in the prior use of the 1-cut software 3.0, was not evaluated in the appealed decision applying a sufficiently strict standard of proof.

The public availability of D28a was in fact acknowledged in the absence of documents showing when, by whom, where and how exactly publication was made.

The appellant also argued that, since the alleged public prior use of the i-cut software 3.0 completely fell within its sphere, the testimony of its witnesses proved beyond any reasonable doubt that strict non-disclosure rules were always in place.

1.2 The Board disagrees for the following reasons.

1.2.1 Standard of proof

According to the established case law (see Case Law of the Boards of Appeal, 8th edition 2016, III.G.4.3.1), evidence is to be assessed in terms of what seems most probable (balance of probabilities), whereby an exception is to be made for public prior use objections where practically all the supporting evidence lay within the power and knowledge of an opponent (see also supra, III.G.4.3.2 "Public prior use").

As in the present case the opposite is true, because practically all the supporting evidence lay within the power and knowledge of the patent proprietor (i.e. the appellant), the "balance of probabilities standard", as distinct from "beyond all reasonable doubt" or "absolute conviction" is to be applied.

1.2.2 Allowable forms of evidence

The opposition division was not prevented from deciding on the public availability of D28a by taking into account the testimonies of Mr. Bendixen, Mr. Andersen and Mr. Potebnya.

Because the EPC does not require that certain questions of fact may only be proven by certain means of evidence, the assessment and evaluation of evidence concerning when, by whom, where and how exactly document D28a was made available to the public was not to be made exclusively on the basis of written pieces of evidence.

1.2.3 Testimonies of Mr. Bendixen, Mr. Andersen and Mr. Potebnya

Mr. Bendixen had direct experience of the development and commercialisation of the i-cut software before the priority date and was in a position to remember detailed and concrete information in this respect.

He wrote D28a (see page 34 of the minutes of the taking of evidence) when he was still working for MGE (before November 2000), and stated that this help page related to the i-cut version 3.0.

D28a was made available, according to Mr. Bendixen, when he sold this software as this help page was part of the installation package thereof (as confirmed by M. Andersen). The sale is confirmed by Mr. Bendixen who named several buyers (see the second paragraph at page 13, first paragraph at page 16 of the minutes, the last two paragraphs at page 34). The Board notes that the appellant did not contest these particularly important statements of the witness.

Mr. Bendixen also clearly refuted the existence of non-disclosure agreements signed by his customers.

As Mr. Bendixen left MGE in November 2000, the above sales occurred before the priority date.

The Board notes that in spite of the fact that the prior use completely fell within the sphere of the appellant, this party failed to submit evidence putting into doubt the credibility of the above statements of Mr. Bendixen, by showing, for example, that the end customers named by Mr. Bendixen were bound by non-disclosure agreements.

The testimony of the witnesses offered by the appellant (Mr. Andersen and Mr. Potebnya) also did not raise doubts on the crucial points of the testimony of Mr. Bendixen.

Mr. Andersen indicated to be aware of the existence of a confidentiality policy at MGE, but also clearly confirmed that he had no direct knowledge of customers or potential customers who signed non-disclosure agreements.

Mr. Potebnya confirmed that he had no direct experience on the existence of non-disclosure agreements signed by the customers to which Mr. Bendixen sold the software before the priority date, because he started working for the appellant after that date.

The Board sees therefore no reason to question the credibility of Mr. Bendixen and cannot identify mistakes in the evaluation of evidence made and the conclusions drawn by the opposition division.

Document D28a is thus considered as being part of the state of the art under Article 54(2) EPC.

2. Claim 1 of the main request - Lack of novelty

2.1.1 It is common ground between the parties that D28a discloses a method for cutting at least one graphics area from a sheet of material which includes such graphics area, comprising:

applying a plurality of registration marks on the sheet of material at and about the graphics area in predetermined positions with respect thereto at the time the graphics which define such graphics area are applied and

sensing the precise positions of the registration marks on the sheet of material; and

cutting the graphics area from the sheet of material in response to the precise positions of the registration marks with respect to the graphics area at that time,

whereby cutting occurs precisely despite two-dimensional distortion of the sheet of material prior to cutting.

It is also acknowledged by all parties that D28a discloses that the plurality of registration marks includes an initial subset, because in this document a first and a second register marks are mentioned, which are used to ascertain the position and orientation of the sheet of material (see the third paragraph of this document).

D28a therefore also discloses the following steps of the method of claim 1 of the main request:

placing the sheet of material on a sheet-receiving surface (see the first two lines of D28a);

sensing the registration marks of the subset to ascertain the position and orientation of the sheet of material and to infer approximate positions of the plurality of registration marks thereon.

2.2 The appellant referred to paragraph [53] of the patent in suit and argued that D28a failed to disclose that the initial subset was located on no more than one side of the graphics area.

This was because, according to the appellant, the interpretation given to this feature by a skilled reader was that two marks were located on the same side of a graphics area only if the segment connecting them did not intersect said area, as clearly shown, for example, in figure 2 of the patent in suit.

2.3 The Board sees no reason for considering that this rather restrictive interpretation, which is by the way also not supported by paragraph [53] and figure 2 of the patent in suit, because no connecting segment is mentioned or shown therein, would be the one chosen by a skilled reader of claim 1 of the main request.

As established in the case law (supra, II.A.6.1), a broad term used in a claim is not to be construed narrowly, even if, as in the case at issue, the narrower interpretation would refer to a structure which is common (see figure 2 of the patent in suit), but not exclusive, in the technical field concerned.

Reading a broadly formulated claim only technically illogical interpretations should be excluded.

As argued by respondent I, followed by the Board, two registration marks are on the same side of a graphics area when, drawing a line crossing on the graphics area and defining two sides thereof, they are located on the same side of the line (and of the graphics area).

D28a discloses an initial subset consisting of two diagonally opposed registration marks, as well as the presence of a graphics area on the sheet of material to be cut.

The first and second registration marks of this subset are inevitably, as discussed above, located on the same side of said graphics area, because based on the above interpretation two marks always satisfy the requirement of being on the same side of a graphics area, as the "side" of a graphics area can be arbitrarily defined.

D28a therefore discloses that the initial subset is located on no more than one side of the graphics area.

2.4 The appellant also argued that as D28a clearly disclosed that the method started by moving the main sensor to the mark at the top right of the sheet to first identify this mark, and then to the second mark, this document failed to disclose that the sheet was placed on a sheet-receiving surface with the initial subset adjacent as a whole to a registration mark main sensor and that the subset was sensed as a whole.

Paragraph [50] of the patent in suit made clear in this context, that that the initial subset had to be processed (positioned and sensed) as a whole.

The appellant also stated, by referring to paragraph [53] of the patent in suit (where "rapid determination" is mentioned) that "adjacent to a registration mark main sensor" did not mean "in the field of view thereof", but rather "close enough thereto, so that it can be quickly reached and sensed by moving the main sensor".

2.5 The Board disagrees again.

2.5.1 D28a clearly discloses that the sheet is placed in such way that both registration marks (at the top right, at the bottom left) are within the work area of the main sensor, so that they can be reached and sensed after movement thereof.

This corresponds to the interpretation given by the appellant, and shared by the Board, to this feature.

This document therefore discloses that the sheet is placed on a sheet-receiving surface with the initial subset adjacent to a registration mark main sensor.

2.5.2 Claim 1 of the main request does not, based on a proper interpretation of its wording (see point 2.3 above) imply that the subset is to be sensed as a whole.

In this context the Board notes that this limitation is also not mentioned in paragraph [50] of the description, which only states that the main sensor may be an optical device responsive to registration marks, which does not mean an optical device able to read two marks at the same time.

D28a discloses that the two marks constituting the initial subset (and therefore the subset) are sensed by the main sensor, one after the other.

This document therefore discloses that the subset is sensed by the main sensor.

2.5.3 The subject-matter of claim 1 of the main request is therefore not novel over the content of the disclosure of D28a.

3. Auxiliary requests - Unallowable amendments

3.1 The appellant argued that the statement at page 5, lines 1-3, of the description of the application as filed, mentioning a step of placing the graphics sheet with the initial position orientation determining subset adjacent to a registration mark sensor, was to be read in combination with all the embodiments subsequently described, and in particular with the passage at page 6, lines 24-31, of said original description where the step of automatically determining the coordinate region of the subset on the sheet-receiving surface was mentioned.

3.2 The Board disagrees, and considers that these two steps relate to two distinct embodiments, the one at page 5 requiring that the initial subset is initially positioned adjacent to the main sensor, the other one also working with other initial positions of the initial subset.

This is made evident by the fact that in the passage at page 6, lines 24-31, the step of placing the sheet on a sheet receiving surface is re-formulated without the limitation that the initial positioning orientation determining subset is to be adjacent to a registration mark sensor such that it can be quickly reached.

This is because this passage relates to a different method where this feature is no longer necessary, because the method now comprises a step of automatically determining the coordinate region of the subset on the sheet receiving surface.

3.3 The appellant also argues that the step of placing the graphics sheet with the initial position orientation determining subset adjacent to a registration mark sensor was implicitly present also in the method described at page 6, lines 24-31, because of the "expected location" mentioned in lines 27 and 28.

3.4 The Board disagrees again, because this "expected location" is completely independent from the position of the main sensor when the sheet is placed on a sheet receiving surface and therefore does not correspond to the initial position mentioned at page 5, lines 1-3 ("adjacent to a registration mark sensor") which is clearly linked to the position of main sensor.

3.5 Based on the above the subject-matter of claim 1 of both auxiliary requests contravenes the requirements of Article 123(2) EPC because it comprises the following two steps in combination:

- placing the sheet of material on a sheet-receiving surface with the initial subset adjacent to a registration mark main sensor;

- automatically determining the coordinate region of the subset on the sheet-receiving surface.

4. In view of the Board's findings with regard to the non-compliance with Article 123(2) EPC of the claimed subject-matters according to the two auxiliary requests, the request by respondent I that these requests not be admitted into the appeal proceedings does not need to be formally decided upon. Even if these requests were to be admitted, they could not constitute a basis for the maintenance of the patent, because they contravene, as discussed above, the requirements of Article 123(2) EPC.

Hence, the present decision can be and is taken irrespective of the result of the discussion on admissibility of the two auxiliary requests.