T 0803/93 (Theft-detection system/BOGASKY) 19-03-1997

Summary of Facts and Submissions

I. European patent No. 0 169 649 was revoked by a decision of the Opposition Division pursuant to Article 102(1) EPC, on the ground that the patent as granted and as amended according to an auxiliary request did not comply with the requirement of inventive step having regard to the following prior art documents:

E1 FR-A-2 252 069 (= E1' - English translation supplied by the Opponent) and

E2 US-A-3 534 358.

II. The patent Proprietor lodged an appeal against the above decision. As a first ground of appeal the Proprietor contended that a substantial procedural violation had occurred during the oral proceedings before the Opposition Division, because the entire case of the Opponent had been presented by a Mr. Blecker, an American patent attorney who is not entitled under the EPC to represent a party to proceedings before the EPO or otherwise to make oral submissions during oral proceedings.

As a further ground of appeal the Proprietor contended that the patent should be maintained in accordance with the main request filed with the grounds of appeal. The Proprietor further requested that in the event that the main request was not allowable the case should be remitted to an Opposition Division with a new composition for a re-hearing, that the costs incurred by the Proprietor in the oral proceedings before the Opposition Division should be paid by the Opponent, and that the appeal fee should be refunded. Oral proceedings were requested in the event that the Board intended not to allow any of the above requests. In reply, the Opponent contended inter alia that there had been no substantial procedural violation at the oral proceedings before the Opposition Division, and requested that the appeal be dismissed and the patent be revoked, since claim 1 is not novel over either E1 or E2, and is also not inventive over E1 or E2 taken alone or in combination. Oral proceedings were requested as an auxiliary request.

In a Decision dated 19 July 1995, the Board of Appeal referred the following questions of law to the Enlarged Board of Appeal.

(1) During oral proceedings before the EPO under Article 116 EPC, and in the context of opposition or opposition appeal proceedings, having regard to the provisions of Article 133 EPC, may a person who is not qualified in accordance with Article 134 EPC to represent parties to proceedings before the EPO, but who is accompanied by a person who is both qualified and authorised to represent a party to the proceedings, make oral submissions on behalf of that party on legal issues which arise in the case?

(2) During oral proceedings before the EPO under Article 116 EPC, and in the context of opposition or opposition appeal proceedings, having regard to the provisions of Articles 117 and 133 EPC, may a person who is not qualified in accordance with Article 134 EPC to represent parties to proceedings before the EPO, but who is accompanied by a person who is both qualified and authorised to represent a party to the proceedings, make oral submissions on behalf of that party on technical issues which arise in the case otherwise than by giving evidence orally in accordance with the provisions of Article 117(3) EPC?

(3) In relation to each of questions (1) and (2) above taken separately:

(a) If the answer is "yes", can such oral submissions be made on behalf of the party as a matter of right, or can they be made with the permission of and under the discretion of the EPO?

(b) If such oral submissions can only be made under the discretion of the EPC, what criteria should be considered when exercising such discretion?

(c) Do special criteria apply to qualified patent lawyers of countries which are not Contracting States to the EPC?"

These questions were answered in Decision G 4/95 issued on 19 February 1996 as follows:

(1) and (2) During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Article 117 EPC, in addition to the complete presentation of the party's case by the professional representative.

(3) (a) Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.

(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:

(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.

(iii) A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested.

(iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.

(c) No special criteria apply to the making of oral submissions by qualified patent lawyers of countries which are not Contracting States to the EPC.

III. Following the above Decision of the Enlarged Board of Appeal, the Board issued a communication which informed the parties of its provisional view that the hearing by the Opposition Division of oral submissions from Mr. Blecker had been in accordance with the current practice of the Opposition Division, and that according to Decision G 4/95 such hearing of oral submissions was not contrary to law but was a matter of discretion, so that a substantial procedural violation of such a nature had not occurred as to justify a finding that the decision of the Opposition Division was null and void, and an order for a re-hearing before a different Opposition Division. The Board therefore suggested that the appeal should proceed to the appointment of oral proceedings.

In response, the patent Proprietor contested the above provisional view, but nevertheless waived the request for a re-hearing before the Opposition Division and agreed to the appointment of oral proceedings before the Board in order to expedite the proceedings.

In reply to a request from the Opponent that Mr. Blecker be permitted to make oral submissions at the oral proceedings before the Board, in addition to the complete presentation of the Opponent's case by the professional representative of the Opponent, the Proprietor submitted that such permission should not be granted. The Board issued a communication which informed the parties that provided that any oral submissions by Mr. Blecker would be completely under the control of the Professional representative who would present the complete case of the Opponent, the Board might allow some additional oral submissions by Mr. Blecker at the discretion of the Board.

Prior to the oral proceedings, the patent Proprietor submitted amended sets of claims forming the basis of first and second auxiliary requests, respectively. In response, the Opponent cited inter alia the following further documents

E3 US-A-3 088 544 cited in the European search report, and

E4 US-A-4 097 729

IV. At the oral proceedings held on 19 March 1997, the patent Proprietor requested as a main request the maintenance of the patent on the basis of the claims forming the previously filed first auxiliary request, and as a first auxiliary request the maintenance of the patent on the basis of the claims forming the basis of the previously filed second auxiliary request.

Claim 1 according to such main request reads as follows:

"A checkout station (200) for reducing theft from a store containing items bearing theft prevention indicators, the checkout station comprising means through which a shopper must pass to leave the store, for dispossessing the shopper from those of the items bearing the theft prevention indicators which the shopper designates for purchase; a secure area (210, 310) into which the shopper enters after the items identified for purchase have been dispossessed from the shopper; a pickup area (255, 355) in which the items identified for purchase are returned to the possession of the shopper; exit means (240), located between the secure area and the pickup area, for permitting the shopper to leave the secure area without the items designated for the purchase, the exit means including sensing means (230) for detecting the presence of any items bearing theft prevention indicators remaining with the shopper as the shopper leaves the secure area through the exit means, and cashier stations (140), physically separated from the sensing means to a sufficient extent to avoid electrical or magnetic interference with the sensing means, for printing the total cost of the items identified by the shopper for purchase and for receiving payment from the shopper corresponding to the total cost after the items identified by the shopper for purchase have been dispossessed from the shopper characterised in that the store is a supermarket; in that the dispossessing means includes a plurality of separate aisles (85) opening into the same secure area and through which shoppers pass upon entering the checkout station and a corresponding plurality of scanners (82) to compute the total price of the items identified for purchase; in that the arrangement is such that the shopper and the items identified for purchase enter the secure area after the items identified for purchase have been dispossessed from the shopper and that the shopper pays a cashier at the cashier stations for the items purchased before the items identified for purchase and the shopper separately enter the pickup area; in that shoppers having entered the secure area through any one of the plurality of aisles (85) leave the secure area through the exit means (240); and in that egress means (250, 352) are located between the secure area and the pickup area (255, 355) for removing the items identified for purchase from the secure area without the shopper.

In relation to claim 1 above, claim 1 according to the first auxiliary request contains the following additional subject-matter between "in that egress means (250, 352)" and "are located between the secure area..." ( see the last statement in claim 1 of the main request):

"including a conveyor system (250) operating between the interior and exterior of the store to carry the items identified for purchase out of the store or including basket doors (350) in an exterior wall of the store"

V. The patent Proprietor made essentially the following submissions in support of patentability of the subject-matter of claim 1 of the main and first auxiliary requests, respectively.

The invention as claimed is limited to a checkout station for a supermarket and its important features are:

(i) The provision of dispossessing means including a plurality of separate aisles opening into the same secure area, the term "secure area" meaning a common area in which the aisles open and in which the shopper and items enter after the shopper has been dispossessed of the items identified for purchase and before the items and the shopper separately enter the pick-up area.

(ii) The dispossessing means include a plurality of scanners to compute the total price of the items.

(iii) The arrangement is such that the shopper pays a cashier at a cashier station before he leaves the secure area through the exit means which is provided with sensing means for detecting the presence of any unauthorised items, and before the items identified for purchase and the shopper separately enter the pick-up area.

(iv) The cashier stations are physically separated from the sensing means to a sufficient extent to avoid electrical or magnetic interference with the sensing means.

Because of feature (iv), the sensitivity of the sensing means can be set to a relatively high level without running the risk of any false alarm due to electrical or magnetic interference. Also, the overall arrangement as set out in features (i),(ii) and (iii) enables to have less number of checkout stations and exit means (each including sensing means) respectively than the number of aisles, thereby reducing the overall costs, and requires minimal redesign of the existing checkout stations. Thus the invention provides an effective and inexpensive technique to reduce theft from supermarket.

In document E1, it is absolutely essential that there is no contact at all between the person responsible for billing and the shopper, and to this end the billing area (5) where the total price of the items to be purchased is computed is absolutely inaccessible to the shopper. In the checkout station according to the invention, contrary to the above, the scanner for computing the price is provided at the dispossessing means. Moreover, in contrast to feature (iii) above, in the arrangement according to document E1, the shopper pays at a cash register (9) in a receiving area (7) after it has gone past the theft-detecting system provided in a passageway (8) between a counter (4) and the receiving area (7), whereby the payment at the cash register and the checking of the items purchased take place at the same location, which inevitably slows down the process of checking out the shoppers. Furthermore, document E1 discloses the use of a single aisle and checkout system, and even if it were intended to utilise more than one aisle, this would involve repeating the arrangement of items 8 to 11 elsewhere in the store, and it would not be obvious to modify the arrangement in document E1 so that a plurality of aisles open into the same secure area and the items identified for purchase also enter that secure area.

The primary disclosure in document E2 is in connection with libraries, museums, and the like and is concerned mainly with the mechanism of a tag. A very brief mention in the document that the system is applicable to "articles of merchandise" is not sufficient to imply that the system could be used in the context of supermarket with a high throughput of customers. Also, Figure 8 of document E2 is a diagrammatic view of the principle underlying the detection system wherein the authorised objects bypass a detection area. Such a detection system with a bypass are commonly utilised at airports and typically use individual aisles each provided with its own sensor, so that there is no sensor (or security) after a common area into which the individual aisles open.

Thus neither document E1 nor E2 alone or in combination suggests the invention.

VI. In view of the amendments to the subject-matter of claim 1 of the main and auxiliary requests, the objection of lack of novelty was no longer maintained by the Opponent. During the oral proceedings Mr. Blecker was permitted to make some additional oral submissions, without objection from the patent Proprietor. The Opponent's submissions regarding inventive step can be summarised as follows:

The term "same secure area" in amended claim 1 under consideration is mutually inconsistent in that the area cannot be secure if the items and the shopper enter it (as stated in the claim), since the shopper then would be in a position to place undeclared items on his person into the package containing the items that have been already checked out. The term is therefore to be interpreted broadly in the light of the original disclosure, and is essentially any area where the shopper and the items are separated from each other after the shopper has been dispossessed of the items.

It is evident from references in document E2 to "articles of merchandise", "a conveyor for passage of authorised goods", "purchaser" and "the unit may be employed with a variety of other articles such as by inclusion within the package, wrapping..." that the disclosure in the document is not restricted to libraries, museums, or airport security systems as alleged by the patent Proprietor, but is applicable, for example, to bookshops with a relatively large throughput of customers. Figure 8 is a diagrammatic view of the detection system, according to which a shopper, after he is dispossessed of articles designated for purchase at a checkout desk (17), enters a secure area (i.e. a departure path 18) provided with a detection area (11) for detecting the presence of unauthorised articles and leaves the secure area through an exit means in the detection area to enter a pickup area (the area beyond the detection area where path 10 meets the departure path 18) in which the articles designated for purchase are returned to the shopper. The checkout desk (17) where the shopper is charged for the dispossessed articles is physically separated from the detection area to a sufficient extent to avoid electrical or magnetic interference with the sensing means in the detection area. The features distinguishing the claimed invention over document E2, i.e. (i) plurality of aisles opening into a secure area and (ii) the provision of scanners at the dispossessing means are well known measures as can be seen from Figure 2 and the corresponding description in the patent in suit, which would be obvious to incorporate in the checkout station of document E2 to cope with the business volume.

Similarly, document E1 is concerned with the problem of preventing theft by a customer in a retail shop and discloses the principle underlying the claimed invention, i.e. of dispossessing the articles identified for purchase from the customer at a checkout counter and then directing the customer along a path through a secure area to a theft detecting system, whereby the customer is able to pickup the articles in a pickup area only after passing through the theft detection system. The use of a plurality of aisles and the location of cashier stations equipped with scanners at the dispossessing means are measures well known in the art (see Figure 2 of the patent in suit), and cannot, therefore, be regarded as involving an inventive step.

With respect to the first auxiliary request, a conveyor system for carrying purchased items from the interior to the exterior of a store is known from document E3, column 1, lines 7 to 12 and 53 to 68, so that the addition of this feature does not involve an inventive step.

VII. At the conclusion of the oral proceedings, the decision was announced that the appeal is dismissed.