T 0221/20 07-10-2022

1. Main request: inventive step of the subject-matter of granted claim 1 in view of the combination of documents K3/K3' and K5/K5' (ground for opposition under Article 100(a) EPC and Article 56 EPC)

1.1 Disclosure of document K3/K3'

Document K3/K3' is a document from the same field as the patent in suit. It discloses a combination printing press comprising a double-sided offset printing part 60 and a number printing part 3 connected via a transfer cylinder 20 (see document K3/K3', paragraphs [0036] to [0038] and Figure 2, reproduced below). Thus, features [M1], [M2] and [M4] are anticipated by document K3/K3'. This was not disputed by the parties.

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In view of these similarities with the subject-matter of granted claim 1, document K3/K3' is a suitable starting point for the assessment of inventive step.

The respondent argued that "[i]n any case, K1 is the closest prior art document, not any of the other documents". In this regard, the board refers to the case law (see Case Law of the Boards of Appeal of the European Patent Office, 10**(th) edn., July 2022, I.D.3.1. and I.D.3.4.) and points out that the starting point for the assessment of inventive step should be at least "promising", i.e. there is some probability of a skilled person arriving at the claimed invention. However, if the skilled person has a choice of several workable routes, i.e. routes starting from different documents which might lead to the invention, the rationale of the problem-solution approach requires that the invention be assessed relative to all these possible routes before an inventive step can be acknowledged. Consequently, there is no reason to exclude document K3/K3' as a starting point for the assessment of inventive step.

1.2 Differences

In point 3.3.3 of the decision under appeal, the opposition division concluded that the subject-matter of granted claim 1 differed from the disclosure of document K3/K3' in that there is a double-sided coating part (feature [M3]) and that the number printing part and the coating part are connected to each other only by a cylinder (feature [M5]). This finding was not contested by the parties.

1.3 Objective technical problem

There is no dispute that the objective technical problem to be solved by the differentiating features [M3] and [M5] is to improve the quality and protection of a numbered sheet (see decision under appeal, Reasons, point 3.3.3).

1.4 Obviousness for the person skilled in the art

The board has reached the conclusion that the subject-matter of granted claim 1 lacks an inventive step over the combination of documents K3/K3' and K5/K5' for the reasons set out below.

Document K5/K5' discloses a varnish coating device in a double-sided sheet-fed printing part (see document K5/K5', title). According to paragraph [0001] of document K5/K5', this document is related to a varnish coating apparatus that prevents stains and scratches while improving the appearance of printed matter by applying a varnish to a printed sheet in a double-sided sheet-fed printing press. As an example, plastic banknotes are mentioned (see document K5/K5', paragraph [0002]). Since document K5/K5' is from the same field and addresses the above-mentioned objective technical problem, the person skilled in the art would have considered document K5/K5'.

Document K5/K5' discloses in Figure 1 (reproduced below) surface printing units 4, 6, 8 and 10 and back side printing units 5, 7, 9 and 11. There are transfer cylinders 12 to 19 and, downstream, a surface varnish coating device 20 and a back side varnish coating device 30.

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It is not disputed that document K5/K5' discloses a coating part according to feature [M3] and transfer cylinders. The board shares the appellant's view that the person skilled in the art would have incorporated the coating part of document K5/K5' into the one-pass printing press of document K3/K3' by using a transfer cylinder according to feature [M5]. Since transfer cylinders are used in both documents K3/K3' and K5/K5', the person skilled in the art would not have deviated from this concept. Thus, the person skilled in the art would have arrived in an obvious way at the subject-matter of granted claim 1, as illustrated by the appellant in the figure below (see statement of grounds of appeal, annex 1).

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1.5 Counter-argument: increased space contrary to the principle disclosed in document K3/K3'

The opposition division argued as set out below (see decision under appeal, Reasons, point 3.3.3):

"When finding a solution to this problem the skilled person must also take into account the principal goal of K3 in §[0007] to reduce an installation space and an operator's burden.

The documents K4 and K5, which do not disclose numbering devices, propose to enlarge the sheet printing apparatus with coating devices for coating both sides of the sheet.

This solution increases the space and complication of the apparatus and is therefore in conflict with the requirements of K3 to reduce space and operator's burden.

The skilled person would therefore not consider the solution of K4 and K5 to solve the problem posed."

The board cannot accept this reasoning. It is true that the principal goal of document K3/K3' is the reduction of installation space and operator's burden (see document K3/K3', paragraph [0007]). This is solved in document K3/K3' by performing the different steps in one pass instead of using a plurality of dedicated machines for each purpose (see document K3/K3', paragraphs [0003] and [0007]). In document K5/K5', the different process steps, namely offset printing and coating, are also performed in one pass (see document K5/K5', Figure 1). Therefore, the teaching of document K5/K5' is not in contradiction to that of document K3/K3'. By implementing the double-sided coating unit of document K5/K5' in the process of document K3/K3', the person skilled in the art would not have deviated from the principle of production in one pass. On the contrary, it would have applied this principle also for the coating unit. Thus, the length of the machine would have increased. However, in comparison with single machine components, space and operator's burden would have been reduced. This being in line with the principal teaching of document K3/K3'.

1.6 Counter-argument: document K5/K5' does not disclose a number printing part

The argument that the person skilled in the art would not have considered document K5/K5' because it did not refer to number printing is not convincing. Although the respondent emphasised the importance of the relationship between the number printing part and the coating part, no specific arguments for this allegation were provided. The number printing unit is already known from document K3/K3'. Thus, the objective technical problem is not aimed at number printing but at the protection of the number-printed sheet. In addition, both documents K3/K3' and K5/K5' disclose printing units and a one-pass process. Since these documents disclose the combination of a printing unit and a further unit via a transfer cylinder, the person skilled in the art would have had further incentive to consider document K5/K5'. Additionally, document K5/K5' addresses the objective technical problem of protection of sheets, such as plastic banknotes. Therefore, there was enough motivation for the person skilled in the art to consider document K5/K5'. Whether these sheets are numbered beforehand does not significantly influence the coating step. Consequently, it does not constitute a technical barrier that document K5/K5' does not disclose a number printing part.

1.7 Counter-argument: document K1 instead of document K5/K5'

The board does not agree with the respondent that the person skilled in the art would have instead turned to document K1, which disclosed both a number printing part and a coating part. Document K3/K3' discloses a number printing part. Number printing is not part of the objective technical problem. The person skilled in the art was not looking for a solution to number printing but for an improvement of the quality and protection of a numbered sheet. Moreover, the question is not whether the person skilled in the art, starting from document K3/K3', would have considered document K1, but whether they would have considered document K5/K5' and whether the teaching of this document would have rendered obvious the subject-matter of claim 1. Since this is indeed the case as explained above, it is not relevant whether the conclusion would be different for a combination of documents K3/K3' and K1.

1.8 Counter-argument: high register accuracy for number printing

According to the respondent, a number printing part had high demands on accuracy and was not compatible with the printing unit of document K5. The board observes that in the current case the number printing part is already known from document K3/K3' and that the kind of printing upstream of the coating does not have any significant influence on the transfer of the sheet to the downstream coating unit, as submitted by the appellant. Apart from this, high-accuracy registration is not part of the objective technical problem.

1.9 Counter-argument: separate offline coating station

The board cannot share the respondent's view that the person skilled in the art combining the teachings of documents K3/K3' and K5/K5' would have provided a protective layer over the printed area in a separate offline coating station to solve the above-mentioned objective technical problem. Since document K3/K3' teaches a one-pass machine instead of single units (see document K3/K3', paragraphs [0007], [0031]), the person skilled in the art would not have had any reason to provide an offline coating station.

1.10 Counter-argument: coating on only one side

Document K3/K3' discloses a double-sided printed sheet. Even if the number printing is done only on one side (see document K3/K3', Figure 2: 3, 30), there is a double-sided offset printing unit (see document K3/K3': Figure 2: 60; paragraph [0036]). Therefore, the person skilled in the art would have coated the sheet on both sides to protect both sides of the printed sheet as this is also done in document K5/K5' (see document K5/K5, paragraph [0009]).

1.11 Conclusion on inventive step

The subject-matter of granted claim 1 is not inventive over the combination of documents K3/K3' and K5/K5'.

Consequently, the ground for opposition pursuant to Articles 100(a) and 56 EPC prejudices the maintenance of the patent as granted. The respondent's main request cannot be allowed.

2. Admittance of auxiliary requests 1 and 2 and documents K7 and K8

2.1 Auxiliary requests 1 and 2 were filed on 12 September 2019 within the time limit set by the opposition division in its summons to attend oral proceedings. Documents K7 and K8 were filed on 27 September 2019 by the opponent. The documents and auxiliary requests were re-filed in the statement of grounds of appeal and the reply to it, respectively.

2.2 The statement of grounds of appeal was filed on 24 January 2020, i.e. after the date of entry into force (1 January 2020) of the revised Rules of Procedure of the Boards of Appeal (RPBA 2020). Pursuant to Article 25(1) and (2) RPBA 2020, Article 12(4) to (6) RPBA 2020 applies to the case in hand.

2.3 Under Article 12(2) RPBA 2020, "a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based." Furthermore, Article 12(4) RPBA 2020 states that any part of a party's appeal case which does not meet the requirements in Article 12(2) RPBA 2020 is to be regarded as an amendment unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal.

2.4 The decision under appeal was not based on auxiliary requests 1 and 2 under Article 12(2) RPBA 2020, and documents K7 and K8 were not discussed by the opposition division. However, as auxiliary requests 1 and 2 were filed within the time limit set by the opposition division in its summons and because the filing of documents K7 and K8 two weeks later constitutes a direct reaction to the submission of these amended requests, the board is satisfied that auxiliary requests 1 and 2 as well as documents K7 and K8 were admissibly raised in the proceedings leading to the decision under appeal. Moreover, auxiliary requests 1 and 2 and documents K7 and K8 were maintained until the department of first instance took its decision.

Therefore, in accordance with Article 12(4) RPBA 2020, auxiliary requests 1 and 2 and documents K7 and K8 are not to be regarded as an amendment to the parties' respective appeal cases. Since they are part of the appeal proceedings, the board has no discretion not to admit these requests and documents.

2.5 This conclusion is not only uncontested by the parties but also confirmed in the explanatory remarks to Article 12(4) RPBA 2020, which read:

"According to proposed new paragraph 4, parts of the statement of grounds of appeal or the respondent's reply, i.e. parts of a party's appeal case, which are not directed to requests, facts, etc. on which the decision under appeal was based (see proposed new paragraph 2), are regarded as an amendment. In general, this definition of "amendment" also encompasses requests, facts, objections, arguments and evidence which the party submitted before the department of first instance but on which that department did not base its decision. However, if, on appeal, the party demonstrates that those requests, facts, etc., were admissibly raised, and were also maintained until the department of first instance took its decision, they will not be considered an amendment and, therefore, will be part of the appeal proceedings. Otherwise, this part of the appeal case will be regarded as an amendment and may only be admitted at the discretion of the Board." (see section VI. of document CA/3/19, Supplementary publication 2 - OJ EPO 2020, 56.)

3. Remittal

Auxiliary requests 1 and 2 and documents K7 and K8 filed in reaction to these requests were not assessed by the opposition division. The respondent requested that under these circumstances the case be remitted to the opposition division. The appellant had no objections against the requested remittal. The board, having considered the circumstances of the case, the parties' requests and their written submissions on auxiliary requests 1 and 2, concluded that there are special reasons within the meaning of Article 11 RPBA 2020 for remitting the case to the opposition division, in accordance with the request of the respondent.

Therefore, it is appropriate to remit the case to the opposition division for further prosecution under Article 111(1), second sentence, EPC and Article 11 RPBA 2020.