T 0152/05 04-12-2007

1. The appeal complies with the requirements of Article 106 to 108 and Rules 1(1) and 64 EPC. It is therefore admissible.

2. Main request - claim 1 - inventive step

2.1 The closest prior art is known from document D3 as agreed by the parties. It relates to a scraper for removing an opaque coating of removable material from the surface of lottery tickets. A typical lottery ticket is shown in Figures 1 to 3 and described in column 2, lines 3 to 21. In addition to the ordinary lottery numbers or symbols, it is provided with a serial number or other markings for ascertaining its validity. In the general portion of this document, it is stated in that the serial number may be covered by the removable coating (column 3, lines 16, 17). In the preferred embodiment (column 3, lines 15 to 23), the serial number is covered by a portion of the coating.

The Appellant's argument that the prior art did not disclose bar codes under a scratch-off layer, is not convincing in view of D7, column 5, lines 22 to 24 in connection with lines 56 to 61 and Figure 4 or D1, Figure 4 which disclose hidden bar codes.

Thus this citation discloses, in the wording of claim 1, a printed document T comprising a substrate, game data (lottery numbers or symbols) imaged on the substrate and covered by a scratch-off layer adapted to be removed by the user to reveal the game data and thereby determine if a prize has been won, and authentication means in the form of a serial number or other validation marking imprinted on the substrate. A scratch-off layer is placed over the entire authentication means and adapted to be removed to reveal the authentication means so that the printed document can be validated.

2.2 Derivation of the technical problem

2.2.1 It is established case law of the Boards of Appeal that an objective definition of the technical problem to be solved should normally start from the technical problem that is described in the patent in suit. Only if it turns out that an incorrect state of the art was used to define the technical problem or that the technical problem disclosed has in fact not been solved, can an inquiry be made as to which other technical problem objectively existed (see e.g. T 644/97 of 22 April 1999, point 2.3, not published in the OJ EPO).

The technical problem that can be derived from the introductory portion of the patent (see in particular paragraphs 7 to 10) is based on the document mentioned in paragraph 6 of the patent which discloses a different prior art as document D3. Hence, it is necessary to reformulate the technical problem.

2.2.2 The subject-matter of claim 1 is distinguished from this closest prior art only by the feature that the authentication means is a two dimensional bar code. In the context of this patent, this term should mean a so-called stacked or matrix bar code (see patent, paragraph 8).

2.2.3 The distinguishing feature has the effect of a faster and more accurate authentication, it allows for an increase in the amount of data encoded into a given space (see patent, paragraphs 8, 10, 13) and makes it more difficult to decode the authentication data.

Thus, the technical problem to be solved may be seen in providing a printed document with authentication means which enable a faster and more accurate authentication, provides higher security and saves space on the printed document for purposes other than authentication.

The Appellant's argument of an unrecognised technical problem in the prior art is not convincing, because it is known, see e.g. D7, column 5, lines 65 to 67 in connection with lines 22 to 35, 56 to 65 and, in addition, because it is not disclosed in the patent at all.

2.2.4 In light of the above problem to be solved, the person skilled in the art is seen as a physicist or engineer with knowledge in the field of authentcation of printed documents.

2.3 Obviousness of the solution

2.3.1 Document D10* relates to one and two dimensional bar codes. Bar codes are described of being much more prevalent than optical character recognition because they can be scanned faster and more accurate (see page 10, lines 2 to 6 from the bottom, page 12, third paragraph). For including more data, two dimensional bar codes, such as stacked and matrix bar codes are suggested (see pages 36 to 39).

Document D13 relates to techniques for encoding data into machine readable form for automatic entry into various systems and machinery and in particular to bar codes (see column 1, lines 14 to 59). In order to cope with the need for increasing the amount of data encoded in a given space for quick and easy decoding, two dimensional or stacked bar codes are disclosed (see column 2, lines 12 to 14). These bar codes provide higher security in the transmission of information (see column in, line 16 to 21). Therefore, the Appellant's argument that no one had ever thought of addressing the issue of security by presenting the authentication means in bar code form is not convincing.

2.3.2 The above documents relate to the same technical field as the opposed patent, i.e. the field of document authentication, and address in essence the same technical problem so that it is obvious to the skilled person to consider them for the solution of the problem stated above.

Applying their teaching on the ticket of document D3, the skilled person would substitute the ticket's serial number by the two dimensional bar code known from either D10* or D13 and thus arrive at the subject-matter of claim 1. A skilled person would not deviate from the general concept of D3 to hide the authentication means under a scratch-off layer, because this would reduce the security and is not necessary for solving the problem specified.

Although, as argued by the Appellant, it might be true that the claimed subject-matter requires that a fraudster has to remove a more considerable part of the scratch-off layer, this does not affect the obviousness of the claimed subject-matter.

2.4 In view of the foregoing, the Board concludes that the subject-matter of claim 1 does not involve an inventive step as required by Articles 52(1) and 56 EPC. Consequently, the main request is not allowable.

3. Auxiliary request 1 - claim 1 - inventive step

3.1 In the context of the examination of novelty and inventive step requirements of the EPC, it is of importance whether each feature of the claimed subject-matter can be inferred directly and unequivocally from that disclosure, including features which for the skilled person are implicit in what is explicitly disclosed (see e.g. T 465/92, OJ 1996, 32). In this respect, the Board concurs with the findings in T 823/96 (mentioned in Case Law of the Boards of Appeal, 5th English edition, page 261) that "implicit" matter must be a clear and unambiguous consequence of what is explicitly disclosed for the skilled person.

3.2 As stated above, it is known from document D3 that the serial number or other markings are to assist in ascertaining the validity of the ticket, i.e. they are used for authentication. However, it is not explicitly described how the validity of the ticket is ascertained. Hence, it has to be evaluated whether this is implicitly disclosed in this document.

3.2.1 As appreciated by the Appellant, it is common general knowledge that authentication involves generally the steps of reading data attributed to a specific characteristic, of comparing this data with predetermined data and of ascertaining the result of the last step, see e.g. D7, column 5, lines 22 to 35 and 56 to 67.

3.2.2 Thus, in the wording of claim 1, it is implicitly known from document D3, to remove the scratch-off layer to reveal the entire authentication means (if the scratch-off layer was not removed entirely, the serial number could not accurately be read), reading the (data of the) authentication means and comparing the same with (those in) a predetermined list such that if the authentication means appears on the predetermined list, the printed document is authentic.

3.3 Hence, also the subject-matter of this claim is only distinguished from the method of document D3 by the feature that the authentication means is a two dimensional bar code.

3.4 Since the subject-matter of claim 1 is thus distinguished from the closest prior art by the same feature and the objective technical problem is in essence the same, the same argumentation and conclusions as for the main request apply.

4. Auxiliary request 2 - claim 1 - inventive step

4.1 In addition to what is stated above, document D3 also discloses that the scratch-off layer covers both, the game data (column 2, lines 12 to 15) and the authentication means (column 3, lines 16, 17) so that the scratch-off layer is adapted to be removed to reveal the authentication means and the printed document T can be validated.

4.2 Also the subject-matter of this claim is thus only distinguished from the printed document of D3 by the feature that the authentication means is a two dimensional bar code.

4.3 Since the subject matter of claim 1 is thus distinguished from the closest prior art by the same feature and the objective technical problem is the same insofar as it provides a method of authenticating a printed document, the same argumentation and conclusions as for the main request apply.

5. Consequently, also the auxiliary requests 1 and 2 are not allowable.

6. Decision of the Opposition Division

6.1 It does not appear to the Board that the Opposition Division had considered the "representations" of lottery tickets, although the admissibility of this material had been questioned by the Appellant, then Opponent. The Opposition Division is competent in the field of lottery tickets and, thus, can understand the effects of "pinholing" carried out either on numerical codes or on bar codes without this material. Therefore, this material was not necessary for the Opposition Division to reach its conclusions.

6.2 With the statement in the decision that "different types of bar codes and their interpretation are readily available to everyone on the Internet", the Opposition Division tackled an argument of the patent proprietor. Even if it was based on wrong assumptions, it does not affect the substance of the decision.

6.3 From the minutes of the oral proceedings of the Opposition Division it does neither result that the Patent Proprietor did not accept that the prior use according to document D5 had been established nor that he was informed that detailed arguments regarding the non-establishment of this document were not necessary. On the contrary, it is stated on page 1, items 3 and 4 that D5 and D5A-G were in fact discussed. Thus, no loss of instance has occurred.

Moreover, the decision of the Opposition Division sets out two lines of argumentation. The first one is based on the closest prior art as known from document D3, the second one on the closest prior art known from document D5. Even if the mention of document D5 was an error, this error would not have been causal to the decision. In fact, the first line of argumentation fully supports the decision.