T 0345/18 10-05-2022

Reasons for the Decision

1. Admissibility of the appeal

1.1 For the appeal to be admissible it must, inter alia, meet the requirements of Article 108, third sentence, EPC and Rule 99(2) EPC.

Rule 99(2) EPC provides that in the statement of grounds of appeal the appellant must indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended and the facts and evidence on which the appeal is based.

It is an established general principle that the grounds of appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases its arguments, without first having to make investigations of its own (see "Case Law of the Boards of Appeal of the European Patent Office", 9**(th) edition, 2019, V.A.2.6.3 a), and the cases cited therein, see in particular T 573/09, Reasons, point 1.1).

The examination of whether the requirements of Article 108, third sentence, and Rule 99(2) EPC are met has to be made on the basis of the statement of grounds of appeal and of the reasons given in the contested decision (see T 162/97, Reasons, point 1.1.2; T 2556/16, Reasons, point 4).

1.2 In the decision under appeal, the opposition division found the subject-matter of claim 1 of the patent as granted to be new over the disclosure of document D1 (see point 2.1 of the grounds for the decision under appeal). The opposition division then determined all the features that distinguished the subject-matter of granted claim 1 from the disclosure of documents D1 to D4 and D7. It established that neither of the most relevant documents D1 and D7 disclosed features F15 and F16, and found the subject-matter of granted claim 1 to involve an inventive step because:

- none of documents D1 to D4 disclosed features F17 to F23,

- the skilled person starting from document D4 would not have been led to the claimed invention by document D3 (and in particular its Fig. 3)

- the combination of documents D1 to D4 and D7 would not have led the skilled person to the invention in an obvious way either (see point 2.2.5 of the grounds for the decision under appeal).

1.3 In its statement of grounds of appeal, the appellant:

- requested that document D9, and the English translations of documents D1 and D5 filed by letter dated 7 February 2018, be admitted,

- argued that granted claim 1 differed from the disclosure of documents D4 and D9 only in that a collect-printing unit was included in the press, and that this feature was obvious to the skilled person in view of the common technical knowledge in the relevant technical field. Document D3 was cited as evidence for this common technical knowledge.

There was one objection that was examined by the opposition division and raised again in the statement of grounds of appeal, namely the objection that a combination of documents D4 and D3 would have led the skilled person to the invention in an obvious way.

It is true that the statement of grounds of appeal is very concise and does not explicitly refer to the grounds for the decision under appeal. However, it is clear from the statement of grounds of appeal that the appellant disagreed with the opposition division's conclusion on the objection based on the combination of documents D4 and D3 and why the appellant believed the subject-matter of granted claim 1 to be obvious over this particular combination of documents.

1.4 The board is satisfied that the opponent's statement of grounds of appeal enables the board to establish the reasons why the decision under appeal is alleged to be incorrect. Therefore, the statement of grounds of appeal complies with Article 108, third sentence, and Rule 99(2) EPC. Since it is uncontested that the further admissibility requirements set out in Articles 106 to 108 EPC and Rules 97 and 99(1)(b) and (c) EPC are met, the appeal is admissible.

2. Admittance of document D9

The appellant filed document D9 together with its statement of grounds of appeal.

In the case in hand, the statement of grounds of appeal was filed before the date on which the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force, i.e. 1 January 2020 (see OJ EPO 2021, A35). Thus, pursuant to Article 25(2) RPBA 2020, Article 12(4) to (6) RPBA 2020 does not apply. Instead, Article 12(4) of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007 - see OJ EPO 2007, 536) continues to apply.

Document D9 was first filed on 23 October 2017, about

ten months after the opposition division had summoned the parties to oral proceedings to be held on 23 November 2017 (summons dated 21 December 2016). The appellant (then: opponent) requested that the document be admitted because of its relevance to the assessment of inventive step. The appellant also stated that a parallel US patent application had been rejected in view of this document in combination with document D3 (see penultimate paragraph on page 1 of the opponent's written submission dated 23 October 2017).

According to point 5 of the minutes of the oral proceedings before the opposition division, the correctness of which was not contested, the request that document D9 be introduced into the proceedings was withdrawn during the oral proceedings.

The appellant has not provided any justification for the requested introduction of document D9 at the appeal stage other than the relevance of the document to the examination of the inventive step involved in the subject-matter of claim 1.

By withdrawing its request for document D9 to be admitted during the oral proceedings before the opposition division, the opponent (now: appellant) prevented the opposition division from deciding on the objection based on that document. Consequently, the board exercised its discretion under Article 12(4) RPBA 2007 and decided not to admit document D9 into the appeal proceedings.

3. Claim interpretation: "collect-printing unit"

Paragraph [0003] of the patent explains the concept of collect-printing (in German: Sammeldruck) as follows:

"The collect-printing is a printing method in which inks in several different colors are attached onto pattern plate cylinders, respectively, collected on a single collecting blanket cylinder, and transferred onto a collecting plate cylinder, and then multi-color printing is performed on a sheet by the collecting plate cylinder at once. The collect-printing is also referred to as Sammel printing. The collect-printing has a great counterfeit prevention effect, because the collect-printing has such a characteristic that no registration error occurs at all, when the color is changed in an image."

4. Inventive step starting from document D4

Document D4 discloses offset printing machines capable of printing on both surfaces of a sheet through a single sheet feeding operation (see col. 1, lines 7 to 12). The disclosed devices (see Fig. 2 reproduced below) comprise a plurality of top surface printing units 5a to 5d and a plurality of back surface printing units 6a to 6d. The top surface printing units and the back surface printing units are alternately arranged in adjacent pairs with their respective impression cylin­ders in contact with each other such that a line con­nec­ting the axes of each impression cylinder extends horizontally to transfer the sheet from the top to the back surface printing unit (see claim 1).

FORMULA/TABLE/GRAPHIC

4.1 Differences

In point 2.2.3 of the grounds for the decision under

appeal, the opposition division analysed document D4 as follows:

"D4 (the references in parentheses applying to this document) discloses an offset printing press (col. 3, l. 66 - col. 4, l. 51; fig. 2) comprising several offset printing units (5a-5d; 6a-6d), wherein at least four offset printing units (6a-6d) are disposed below a sheet transport path, wherein at least an offset printing unit (6b-6d) is configured to perform offset printing on a lower surface of a sheet subjected to offset printing by at least an offset printing unit (6a), and wherein impression cylinders (12a; 12b-12d) of said offset printing units (6a; 6b-6d) are connected by a single transport cylinder (11b; 11c; 11d).

A collect printing unit is however not disclosed in D4. Thus, an offset printing unit configured to perform offset printing on a sheet subjected to collect-printing by a collect-printing unit is also not disclosed in D4.

The subject-matter of claim 1 as granted differs therefore from the disclosure of D4 in that the printing press is merely an offset printing press (not a combination printing press) including several offset printing units configured to perform offset printing on sheet substrate. In other words, none of the features F1-F23 of granted claim 1 of the opposed patent is disclosed in D4." (underlining and bold lettering as in the original)

The appellant argued that the subject-matter of document D4 differs from claim 1 of the patent in suit only in that no collect-printing unit is provided in document D4. However, the relevant question is not how document D4 differs from claim 1, but how the subject-matter of claim 1 differs from the disclosure of document D4.

Document D4 does not disclose a combination printing press including a collect-printing unit. Therefore at least features F2 to F13 and F23 are not disclosed.

4.2 Objective technical problem

The opposition division did not consider document D4 to be the most promising springboard for examining inventive step. Consequently, it did not formulate any objective technical problem in view of this document.

The precise definition of the objective technical problem was discussed in detail during the oral proceedings before the board. When faced with the board's objection that the objective technical problem originally proposed by the appellant (improving register accuracy) was solved by the distinguishing features only if specific assumptions were made (i.e. that more than one printing unit of the machine disclosed in document D4 was replaced by a collect-printing unit), the appellant reformulated the objective technical problem as an alternative: improving the register accuracy [if more than one offset printing unit is replaced] or increasing the number of colours [if only one offset printing unit is replaced].

This formulation is not satisfactory because it depends on the solution contemplated. The application of the problem-solution approach using an objective technical problem involving alternatives based on the type of solution chosen would involve circular reasoning, so the validity of its conclusion would be doubtful. Therefore the board cannot endorse the appellant's formulation of the objective technical problem.

Moreover, there is no other objective technical problem solved by the distinguishing feature that would have been self-evident to the skilled person.

Even if one were to consider the alternative aspects of the technical problem proposed by the appellant separa­tely (i.e. improving the register accuracy, increasing the number of colours) and take into account paragraph [0003] of the patent specification, it would not be apparent why the skilled person, without hindsight, would have considered to fundamentally change the off­set printing machine of document D4 and replace one or more of the horizontally aligned offset printing units with the collect-printing unit known from the arrange­ment of document D3. Such a reconfiguration would have required substantial structural design modifications going beyond mere routine measures.

It follows that the appellant has not made a convincing case that the subject-matter of claim 1 lacks inventive step in view of documents D3 and D4 in the light of the skilled person's common general knowledge. The appel­lant's objection that the skilled person starting from document D4 would have combined its teaching with the teaching of document D3 in the light of the common general knowledge is based on mere assertions, the merits of which are not apparent to the board.

Consequently, the board concludes that the appellant has not demonstrated that the subject-matter of claim 1 would have been obvious to the skilled person. It follows that the ground for opposition under Articles 100(a) and 56 EPC does not prejudice mainte­nance of the patent as granted, so that the appeal has to be dismissed.