T 1365/21 02-02-2024
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Method for uniquely identifying mailpieces having non-personalized enclosures
I. The appeal of the applicant is against the decision of the examining division with which European patent application no. 17306112.8 was refused.
II. The following documents are relevant for the present decision:
D1: WO 2004/089646 A1
D2: WO 00/25200 A1
D3: EP 0 804 974 A1
D4: US 2012/066060 A1
D5: US 8 856 046 B1
D6: GB 2 535 704 A
D7: EP 1 986 160 A2
III. With its grounds of appeal the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request or on the basis of the first auxiliary request, both underlying the decision under appeal, or alternatively, on the basis of the second auxiliary request, filed for the first time with the statement of grounds of appeal.
IV. In a communication under Rule 100(2) EPC, the board informed the appellant of its preliminary opinion according to which claim 1 of all requests on file did not meet the requirements of Article 123(2) EPC, but that a suitably amended claim 1 would appear to fulfil the requirements of Articles 84 and 123(2) EPC. The board further found that the subject-matter of such a suitably amended claim 1 would appear to meet the requirements of Article 56 EPC.
V. With letter of 4 December 2023 (but dated 1 December 2023), the appellant submitted a new set of claims 1 to 10 and requested that a patent be granted on the basis of this set of claims.
VI. Claim 1 of the set of claims filed on 4 December 2023 reads as follows:
"A method for associating a non-personalized enclosure with a mailpiece during an inserting and printing process in a mailpieces production system, the method comprising the following successive steps of:
- creating a Job file containing at least a mailing list of addresses to be printed on mailpieces,
- allocating a distinct mailpiece identifier for a mailpiece,
- allocating a temporary machine identifier to the non-personalized enclosure extracted from an insert feeder of the mailpiece production system, the temporary machine identifier being unique to a mailpiece within a Job file,
- capturing an insert identifier on the non-personalized enclosure or printing an insert identifier on the non-personalized enclosure and associating said insert identifier with said temporary machine identifier allocated to the non-personalized enclosure,
- associating said temporary machine identifier with said distinct mailpiece identifier and recording the mailpiece identifier as being in process,
- creating the mailpiece by inserting at least the non-personalized enclosure into an envelope,
- printing on the envelope an address associated with the mailpiece identifier, and
- recording the mailpiece identifier as being inserted."
Claims 2 to 10 are dependent on claim 1.
VII. The appellant's arguments which are relevant for the present decision will be considered in the reasons below.
1. Clarity (Article 84 EPC)
1.1 "Non-personalized enclosure"
The term "non-personalized enclosure" used in claim 1 is clear within the meaning of Article 84 EPC. The person skilled in the art of mailpiece processing systems would be able to distinguish sufficiently clearly between a "non-personalised" and a "personalised" enclosure as these terms are common expressions in this specific technical field. The common meaning of the term is also reflected in the description. The original description on page 2, third paragraph describes a "non-personalized enclosure" as "simple enclosures" and further as "pre-printed and there is no way of uniquely identifying them". On page 7, last paragraph, reference is further made to "standard (non-personalized) letters accompanying the enclosures, which are neither personalized nor identified". It is thus clear that, unlike personalised enclosures that contain information specifically relevant to the recipient, non-personalised enclosures are designed to reach a wider audience without customisation for individual preferences or details. They serve promotional or informational purposes for a broader set of recipients.
The examining division also considered the term as such to be clear. However, they considered that it did not meet the requirements of Article 84 EPC because a "non-personalized enclosure" was considered to be a negative feature which was a mere administrative aspect of the claimed invention and as such made no technical contribution to the claimed invention (see point 4 of the examining division's communication of 23 September 2019).
The board considers that the expression "non-personalized enclosure" has a technical meaning, as the type of enclosure may have an influence on the type and structure of the processing system and thus constitutes a technical feature as a whole.
Therefore, also against this background, the board considers the subject-matter of claim 1 to be sufficiently clear within the meaning of Article 84 EPC.
1.2 "Temporary machine identifier"
The term "temporary machine identifier" is defined in the first paragraph on page 13 of the description as an identifier that is temporarily assigned and is valid as long as the mailpiece is being processed by the production system. This definition is consistent with the general meaning of the term, and the person skilled in the art would therefore understand that a "temporary machine identifier" is temporary in the sense that it no longer exists once the processing is complete, as opposed to other identifiers that may be printed on the mailpiece or on the enclosure.
The board therefore considers the term "temporary machine identifier" to be sufficiently clear within the meaning of Article 84 EPC.
2. Amendments (Article 123(2) EPC)
Compared to claim 1 as originally filed, the present claim 1 has been amended to refer to a method for associating a non-personalised enclosure with a mailpiece (see the original description on page 4, second paragraph) and additionally comprises the features of original claims 2 and 3. It also comprises an additional feature according to which "the temporary machine identifier being unique to a mailpiece within a Job file", which is based on the original description on page 9, first paragraph.
In view of the above, the board concludes that the amendments to claim 1 are directly and unambiguously derivable from the original application documents as a whole.
3. Inventive step (Article 56 EPC)
3.1 The subject-matter of claim 1 of the appellant's request involves an inventive step.
3.2 Document D1 was considered by the examining division to be the closest prior art. The subject-matter of claim 1 differs from D1 in that the printing on the envelope of an address associated with the mailpiece identifier is carried out towards the end of the process, in particular, after the mailpiece has been created by inserting at least the non-personalised enclosure into an envelope. By contrast, in document D1, the printing of the envelope is carried out at the beginning of the process.
Further, document D1 does not disclose a temporary machine identifier as defined in claim 1. Rather, in document D1, a unique code identifier is printed on the envelope, while a different unique code identifier is printed on each of the insert sheets (enclosures). It follows that document D1 also does not disclose the association of the insert identifier on the non-personalised enclosure with the temporary machine identifier associated with the non-personalised enclosure. Accordingly, the association of the temporary machine identifier with the mailpiece identifier and the recording of the mailpiece identifier as being in process is also not disclosed in document D1.
These differences reflect the fact that, unlike the present application, D1 is primarily concerned with the preparation of personalised mailpieces.
3.3 By providing the temporary machine identifier, an association between the insert identifier of the enclosure and the mailpiece identifier of the respective mailpiece, which is associated with the address to be printed, can be advantageously ensured for a limited period of time for the insertion process and the printing process. In particular, this makes it possible to manage malfunctions during the insertion stage in the mail preparation system, which precedes the step of printing the address on the envelope.
More specifically, as has been convincingly explained by the appellant, according to the present invention, the temporary machine identifier makes it possible to avoid any loss in the event of a malfunction of the inserting machine because, since in this case only the current temporary machine identifier is lost, but the current address which should have been printed on the envelope and which is associated with the current temporary mailpiece identifier is printed on the next envelope which is then associated with the next temporary machine identifier which is associated with the next insert identifier. In this way, the machine identifier allows the current mailpiece identifier to be linked to the next insert identifier so that the current address is not lost. This post-insertion association, using the temporary machine identifier that links the inserted physical object (and its own identifier) to the address associated with the mailpiece, allows an address to be printed on a closed envelope which has successfully completed the insertion stage. In this way, it is possible to reliably identify and record which insert has been sent to which recipient.
3.4 To the contrary, in document D1, the step of creating the mailpiece by the wrapping machine (wrapping machine 420) is performed after the integrity check, so that in the event of a malfunction, the mailpiece or inserts being processed will be lost (see D1 on page 10, lines 26 to 28).
Therefore, there is no indication in D1 that a temporary machine identifier is provided. This is also not necessary, as in the D1 method the inserting operation is only performed at the end of the process.
3.5 None of the other documents D2 to D7 cited in the decision under appeal discloses or suggests the combination of features of claim 1. In particular, none of these documents discloses or suggests allocating a temporary machine identifier to a non-personalised enclosure extracted from an insert feeder of the mailpiece production system, the temporary machine identifier being unique to a mailpiece within a job file, capturing an insert identifier on the non-personalised enclosure or printing an insert identifier on the non-personalised enclosure and associating said insert identifier with said temporary machine identifier allocated to the non-personalised enclosure,
and associating said temporary machine identifier with said distinct mailpiece identifier and recording the mailpiece identifier as being in process.
3.6 Document D6 may indeed disclose the application of one or more temporary identities to one of more sheet products or groups of sheet products. However, document D6 does not suggest or disclose the above combination of features, in particular as regards the capturing of an insert identifier on the non-personalised enclosure or printing an insert identifier on the non-personalised enclosure and associating said insert identifier with said temporary machine identifier allocated to the non-personalised enclosure, and associating said temporary machine identifier with said distinct mailpiece identifier and recording the mailpiece identifier as being in process.
3.7 The board has therefore arrived at the conclusion that the subject-matter of claim 1 is not rendered obvious by any of the prior art documents cited in the decision under appeal. Consequently, the subject-matter of claim 1 involves an inventive step.
4. Result
Since the application fulfils the requirements of the EPC, the board had to accede to the appellant's request.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the examining division with the order to grant a patent in the following version:
Description:
Pages 1 - 3, 6 - 13 as originally filed
Pages 4, 5 filed in electronic form on 5 March 2021
Claims:
No. 1 - 10 filed in electronic form on 4 December 2023
Drawings:
Sheets 1/3 - 3/3 as originally filed