T 0945/13 18-10-2016

1. Main request - Added subject-matter (Article 123(2) EPC and 100(c) EPC 1973)

1.1 In his grounds for appeal, appellant I (opponent 1) raised an objection of added subject-matter (Article 100(c) EPC 1973), amongst others, against functional statements ("...for identifying colour errors/print defects in an image...") of claim 1 accor­ding to the second auxiliary request. Since these same statements are also present in claim 1 according to higher ranking requests, the board must investigate these requests with respect to the ground of opposition under Article 100(c) EPC 1973.

1.2 Claim 1 according to the main request combines the subject-matter from independent claims 1 and 5 as filed including some additional amendments and reads as follows (the additions in bold and deletions in cross-out with respect to originally filed claim 1 have been added by the board):

"1. A control system (130) for a printing press, said control system comprising:

a colour control subsystem (312) for identifying colour errors in an image; and

a defect detection subsystem (316) for identifying print defects in an image;

wherein said colour control subsystem (312) and defect detection subsystem (316) are [deleted: adapted] configured to share image data obtained from [deleted: a] the printing press to identify print defects or identify colour errors in the image; and

characterised by

an integration subsystem (320) in operational communication with the colour control subsystem (312) and the defect detection subsystem (316), wherein said integration subsystem selectively enables and disables the colour control subsystem and the defect detection subsystem".

This latter paragraph was the subject-matter of independent claim 5 as filed.

1.3 In decision G 2/10 of 30 August 2011 (point 4.3 of the Reasons, first paragraph), the Enlarged Board of Appeal stated the following: "The importance and the applica­bility, without exception, of Article 123(2) EPC was underlined in the jurisprudence of the Enlarged Board of Appeal as early as in its opinion G 3/89 and deci­sion G 11/91 (OJ EPO 1993, 117 and 125, relating to amendments by way of correction). From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points 1., 1.3 and 3. of the Reasons" (em­pha­sis added by the board). The underlined text is fre­quently referred to as the "gold standard" for asses­sing any amendment for its compliance with Article 123(2) EPC (see G 2/10, point 4.3 of the Reasons, last paragraph).

Thus, the question to be answered is whether claim 1 comprises subject-matter which a skilled person would not derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application documents as filed.

1.4 The following will focus in particular on the amendment "image" in the feature "said colour control subsystem (312) and defect detection subsystem (316) are configured to share image data obtained from the printing press" (emphasis added by the board). This amendment constitutes added subject-matter for the following reasons.

1.4.1 The feature that the subsystems "are configured to share" data includes two different interpretations which differ with respect to where the shared data comes from and where the shared data goes to, namely:

(a) that "image data obtained from the printing press" from the acquisition module 308 of figure 8 is provided to both subsystems 312 and 316 which can therefore be said to "share" this data - this point was emphasised by the patent proprietor; and

(b) that one of the subsystems 312, 316 allows the other of the subsystems 312, 316 to use data it obtained by further processing from the "image data obtained from the printing press" (application as filed, page 15, lines 29 and 30: "The defect locations reported by the defect detection subsystem 316 may be used to decide which pixels are used by the color control subsystem 312"; page 21, lines 7 and 8: "The defect detection system processor 416 then transfers the defect locations to a color control system processor 420").

FORMULA/TABLE/GRAPHIC

According to the patent proprietor, insofar as inter­pretation (a) is concerned, the subsystems 312 and 316 are "configured to share image data" in the sense that both subsystems expect to obtain the same image data. However, such an "expectation" is not embodied by any particular technical features in the subsystems themselves. Instead, it is the control system as a whole which has to be configured so as to ensure that the appropriate data is supplied to its subsystems. Thus, according to understanding (a), the subsystems 312 and 316 both receive data from the acquisition subsystem 308 (as shown in the flow chart of figure 8). This interpretation is supported by the first embodiment (page 4, line 24 to page 20, line 24, figures 1 to 9) but not by the second embodiment (page 20, line 25 to page 21, line 29, figure 10), because in the latter each of the two subsystems has its own scanner 408, 424 for acquiring image data (figure 10).

FORMULA/TABLE/GRAPHIC

According to interpretation (b), one of the subsystems 312 and 316 is configured to use data obtained by further processing from the "image data obtained from the printing press" by the other one of the subsystems 312 and 316, i.e. data is shared between the subsystems 312 and 316 in the sense that data from one subsystem can be used by the other. This interpretation is supported by both embodiments (see citations above and, for example, the arrow linking boxes 380 and 370 in the flow chart of figure 8 and the arrow linking processors 416 and 420 in figure 10).

1.4.2 The amendment "image" in the feature "said colour control subsystem (312) and defect detection subsystem (316) are configured to share image data obtained from the printing press" (emphasis added by the board) further requires that the data which is shared is "image data". This requirement must be met for both interpretations (a) and (b). For interpretation (a) this is clearly the case, since the data obtained from the printing press is image data, even after the processing steps of the acquisition subsystem 308 of the flow chart of figure 8.

1.4.3 However, with respect to interpretation (b), the original disclosure of the subsystems 312 and 316 sharing "defect loca­tions" which are under­stood as "(x,y) locations" (appli­cation as filed, page 15, line 3) does not constitute image data. This was not contested by the parties.

1.4.4 The patent proprietor (appellant II) further referred to the passage page 14, lines 20 to 24 which describes the "comparison step 368" which is shown in the flow chart of figure 8 as belonging to both subsystems 312 and 317 of the flow chart of figure 8. This passage reads:

"Once the colorimetric values have been normalized for illumination in step 360, the data is sent to a comparison step 368 which generates results that are shared by both the color control subsystem module 312 and the defect detection subsystem module 316. In step 368, the corrected and color converted acquired image is subtracted from the template image 340".

This passage discloses that the results of the compari­son step 368 are shared by both the color control sub­sys­tem module 312 and the defect detection subsystem module 316 and that this step also involves subtracting the corrected and color converted acquired image from the template image 340.

It was not contested by the parties, that the skilled person expects as part of his common general knowledge that the result of a comparison step will at least consist of a binary answer to the question of whether the two images are the same or whether they differ. It was also not contested by the parties, that the result of subtracting the corrected and color converted acquired image from the template image 340 does not answer the question of whether the two images are the same or whether they differ, since the latter requires performing some kind of test on the images rather than an arithmetic operation such as a subtraction.

Furthermore, the application as filed is silent about whether the result of the subtraction is related to, or part of, the results generated by the comparison step 368. It follows that the results of comparison step 368, which according to the passage page 14, lines 20 to 24 "are shared by both the color control subsystem module 312 and the defect detection subsystem module 316" do not necessarily comprise image data.

Therefore, the patent proprietor's argument that the result of subtracting the corrected and color converted image from the template image results in image data which is shared by the subsystems 312 and 316 cannot be accepted, because the passage page 14, lines 20 to 24 does not directly and unambiguous disclose that the shared data corresponding to the results of comparison step 368 necessarily includes (such) image data.

1.4.5 In consequence, with respect to interpretation (b) of the above amended feature, the amendment that the sub­systems share "image data" constitutes added subject-matter with respect to the application as filed, con­trary to the requirements of Articles 123(2) EPC and Article 100(c) EPC 1973.

2. Auxiliary requests 1 to 4

The amendments to claim 1 according to auxiliary requests 1 to 4 do not affect the features objected to in claim 1 according to the main request (section 1.4). In consequence, the arguments set out in section 1.4 above apply likewise to these claims which thus do not meet the requirements of Article 123(2) EPC and Article 100(c) EPC 1973.

3. Auxiliary request 5

The amendment made to claim 1 does not address or overcome the objection set out in section 1.4. The passage (application as filed, page 14, lines 20 to 24) advanced by appellant II (patent proprietor) as basis for the additional amendment to claim 1 was already discussed in the context of the main request (see sections 1.4.4 and 1.4.5).

The additional passage (page 10, lines 20 to 21 of the application as filed) indicated by appellant II as a basis for the text "indicating differences" refers to the manner in which "the defect detector subsystem will apprise the operator of any defects that have been detected" and thus concerns the output of the defect detector subsystem to the operator and does not necessarily relate to data that is shared by the two subsystems.

In consequence, the objection set out in section 1.4 in the context of the main request applies likewise to claim 1 according to auxiliary request 5.

Therefore, the subject-matter of claim 1 according to auxiliary request 5 does not meet the requirements of Article 123(2) EPC and Article 100(c) EPC 1973.

4. Auxiliary requests 6 to 8

Although the amendments respectively made to claim 1 gradually approach or use the actual wording from the passage in the application as filed, page 14, lines 20 to 24, this does not address or overcome the objection set out in sections 1.4.4 and 1.4.5.

In consequence, the objection set out in section 1.4 in the context of the main request applies likewise to claim 1 according to auxiliary requests 6 to 8.

Therefore, the subject-matter of claim 1 according to auxiliary requests 6 to 8 does not meet the requirements of Article 123(2) EPC and Article 100(c) EPC 1973.

5. Auxiliary requests 9 to 14

The respective amendments made to claim 1 according to auxiliary request 9 to 14 do not address or overcome the objection set out in section 1.4. The passage (application as filed, page 14, lines 20 to 24) advanced by appellant I as basis for the additional amendments to claim 1 was already discussed in the context of the main request (see sections 1.4.4 and 1.4.5).

In consequence, the objection set out in section 1.4 in the context of the main request applies likewise to claim 1 respectively according to auxiliary request 9 to 14.

Therefore, the subject-matter of claim 1 respectively according to auxiliary request 9 to 14 does not meet the requirements of Article 123(2) EPC and Article 100(c) EPC 1973.