T 1683/21 25-10-2024

1. The appeal is admissible.

2. Main request - inventive step in view of either document D1 or document D2 (Article 56 EPC)

2.1 Document D1 discloses a method of checking producibility of a composite design of a document on a line of production equipment (see Figure 2: 30, 32), the composite design being the product of a combination of multiple sets of design features (see paragraph [0035]: "multiple colorant (color) marking devices, such as CMYK devices [...] A print job may include one or more images. An image generally may include information in electronic form which is to be rendered on the print media by the image forming device and may include text, graphics, pictures, and the like.") that are to be provided on a substrate as a result of a plurality of successive production operations carried out by means of the line of production equipment (see paragraph [0067]: "a charging station for each of the colors to be applied ... four in the case of a CMYK marking device"), the method comprising the steps of:

(a) providing digital design data representative of the composite design of the document (see Figure 2: "PRINT JOB" 12 and paragraph [0038]: "retrieving a print job 12 from memory");

(b) modelizing, in a computer environment, the line of production equipment by means of which the composite design is intended to be produced (see Figure 2: "PRINTER MODEL" 18 and paragraph [0038]: "The memory 44 may store models 18 from two or more marking devices 30, 32");

(c) performing a computer simulation of production results of the plurality of successive production operations on the basis of the digital design data and the modelized line of production equipment (see Figure 2: "JOB SIMULATOR" 22 and paragraph [0038]: "The job simulator 22 includes instructions for ... modifying the print job based on the stored model 18 ... to produce a merged image");

(d) evaluating the computer simulated production results and determining, on the basis of these computer simulated production results, whether the composite design can be produced on the line of production equipment (see paragraph [0032]: "The print job simulator enables the user to evaluate any print defects associated with the marking device before sending the print job to the marking device for printing."; paragraph [0079]: "if the customer determines, based on the print job simulation, that the marking device 30 will provide a satisfactory rendering of the print job 12, the print job may be sent to an appropriate printer 14 for rendering on the selected marking device ... the customer may delay printing until a cause of an image defect has been remediated, e.g., by the printer 14 itself, the customer, or other repair service.").

2.2 Document D2 discloses a method of checking producibility of a composite design of a document on a line of production equipment, the composite design being the product of a combination of multiple sets of design features that are to be provided on a substrate as a result of a plurality of successive production operations carried out by means of the line of production equipment (see paragraph [0041]: "the press typically comprises several printing groups, i.e., a printing group for each elementary color, black, cyan, magenta, and yellow"), the method comprising the steps of:

(a) providing digital design data representative of the composite design of the document (see Figure 3: "Structural data for the product" 10 and paragraph [0051]: "receiving 10 of data ... concerning the structure of the sheet product");

(b) modelizing, in a computer environment, the line of production equipment by means of which the composite design is intended to be produced (see paragraph [0042]: "functional modeling of the press" and paragraph [0044]: "Unit 3 models the folding machine");

(c) performing a computer simulation of production results of the plurality of successive production operations on the basis of the digital design data and the modelized line of production equipment (see paragraph [0047]: "press simulator ... image simulator ... 3D simulator", paragraph [0048]: "three-dimensional modeling of an object for simulation and rendering of objects in three dimensions" and paragraph [0071]: "An image and display 36 on the monitor of the simulated product are formed");

(d) evaluating the computer simulated production results and determining, on the basis of these computer simulated production results, whether the composite security design can be produced on the line of production equipment (see paragraph [0048]: "display of the finished product and its faults in three dimensions in order to facilitate the perception of the structure of the product by the user" and paragraph [0068]: "The face images include printing faults calculated by the 'image simulator', and are generated for each impression of the product").

2.3 As indicated by the examining division in point 1.1 of its communication dated 2 June 2021, the terms "in particular of a composition banknote design" do not limit the claimed subject-matter. This was not contested by the appellant.

Therefore, the subject-matter of claim 1 differs from the disclosure of either document D1 or document D2 in that the former specifies that the composite design of the document is a composite "security" design of a "security" document.

2.4 According to point 1 of its communication dated 2 June 2021, the examining division considered that the term "security" was so vague in nature that it did not need to be taken into account in the assessment of novelty.

2.5 The board agrees with the examining division (see the communication dated 2 June 2021, point 2, second paragraph) that the term "security document" is broad and encompasses documents that can be produced by a conventional multi-colour printer. To the board, markings on such documents may include a serial number, may be encrypted, or may contain a digital signature. These markings can be used in security applications. Therefore, a document bearing them would be considered a "security document" by the person skilled in the art. A practical example is a boarding pass which provides access to a secured area and can be printed on a conventional printer.

2.6 Documents D1 and D2 disclose printing text and images (see D1, Figure 3 and D2, Figure 15). The difference from text and images used in a security application is merely the cognitive content of such text and images. Indeed, markings of the types mentioned in the previous point have no bearing on the function or structure of the production line and can thus be considered of a cognitive nature. According to paragraph 76 of G 1/19 (OJ EPO 2021, A77) "[i]t is generally recognised in the case law of the boards of appeal that the cognitive content of data is not technical in nature". Therefore, the limitation implied by the term "security" is not technical in nature.

2.7 It is established case law that non-technical features, to the extent that they do not interact with the technical subject-matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing inventive step (see G 1/19, point 30, principle (F)).

2.8 In view of the above, the board is of the opinion that the distinguishing feature identified in point 2.3 above is to be ignored in assessing inventive step.

2.9 The appellant argued that the person skilled in the art would have understood the terms "security design" and "security document" to exclude documents producible by a conventional multi-colour printer. Instead, the person skilled in the art would have understood these terms to only refer to documents producible by special and complex production processes which required government authorisation.

In particular, the appellant referred to:

- IPC class B42D25/00,

- WO 2009/106107 A1, pages 1 and 2,

- https://de.wikipedia.org/wiki/Sicherheitsmerkmal, and

- document D3, second paragraph (see statement of grounds of appeal, page 3).

The board is not convinced by these arguments for the following reasons.

(a) The heading of the cited IPC class B42D25/00 reads: "Information-bearing cards or sheet-like structures characterised by identification or security features; Manufacture thereof". This class includes identity cards, passports and bank notes as well as security features using special materials or inks; however, the same class also includes entrance cards (B42D25/26) and lots (B42D25/27) as well as security features such as photographs (B42D25/309) and signatures (B42D25/318). The board is thus not convinced that the person skilled in the art would have understood that, for example, an entrance card containing a photograph and a signature could not be produced by a conventional multi-colour printer.

(b) The published international patent application WO 2009/106107 A1 states on page 1, third paragraph: "Wert- und/oder Sicherheitsdokumente umfassen Reisep sse, Personalausweise, Identifikationskarten, Zugangsberechtigungskarten, Kreditkarten, Geldkarten, Telefonkarten, Banknoten, F hrerscheine usw.". Hence, this patent application sets out examples of security documents ("umfassen"); however, it neither states that the set of examples provided is complete ("usw.") nor does it give a general definition of the term "security document".

(c) The web page https://de.wikipedia.org/wiki/Sicherheitsmerkmal provides examples of security features. Most of them do require special printing facilities, but one example of a security feature is the numbering of each piece for individual identification and traceability. The person skilled in the art would have understood that such numbering could be achieved by a conventional printer.

(d) Document D3, second paragraph does not refer to a "security document" in general but to a special class of them, namely "Wertpapiere, z.B. Banknoten". In any case, referring to a single patent document cannot be regarded as a proof of common general knowledge or of the general understanding of a certain term by the person skilled in the art.

2.10 The appellant further argued that both document D1 and document D2 had a purpose other than the present application. Document D1 did not relate to "checking producibility", but to detecting image non-uniformity due to printer defects. Document D2 related to training a user in the use of press for printing products, which had nothing to do with checking producibility of a composite security design of a security document (see statement of grounds of appeal, page 4, first and second full paragraphs).

The board is not convinced by these arguments for the following reasons.

The board agrees with the examining division that the concept of "checking producibility", as used in the application, is broad and includes the identification of "limitations" or bottlenecks in the line of production equipment (see page 3 of the communication dated 2 June 2021). The board also agrees with the examining division that the step of "checking producibility", which is understood to include step d), encompasses a mental act by the operator (ibid.).

Both document D1 and document D2 simulate an output of a printing facility.

Document D1 discloses an evaluation, by the user, of any print defects associated with the marking device (see paragraphs [0032] and [0079]). Print defects associated with the marking device are representative of limitations or bottlenecks in the marking device. In any case, document D1 also discloses that, on the basis of their evaluation, the user may decide to delay printing until a cause of an image defect has been remedied (ibid.). This decision implies evaluating whether the print job can be produced. Therefore, the board finds that the evaluation disclosed in document D1 anticipates the step of checking producibility specified in claim 1, including step d).

Document D2 discloses an image simulator calculating printing faults (see paragraph [0068]). Printing faults are representative of limitations or bottlenecks in the press. Therefore, the board is of the view that the calculation disclosed in document D2 anticipates the step of checking producibility specified in claim 1, including step d).

2.11 The appellant argued (see statement of grounds of appeal, the paragraph bridging pages 5 and 6) that the determination of whether a composite security design could be produced was carried out by a computer system. The role of the operator was restricted to controlling the production on the basis of these determinations carried out by the computer system. In this regard the appellant referred to the following passages of the description:

(a) page 13, lines 22 to 29

(b) page 18, lines 23 to 25

(c) page 19, lines 1 to 6

(d) page 19, lines 13 to 18

(e) page 20, lines 4 to 7

(f) page 24, lines 7 to 9

The board is not convinced by these arguments for the following reasons.

First, claim 1 does not contain any features that would restrict the evaluation specified in step d) to an evaluation carried out by a machine.

Second, page 13, lines 22 to 29 of the description states: "the computer simulation 30 allows for a direct feedback to be given to the operator as regards the expected producibility of the particular composite security design on the desired line of production". The board is not convinced that the term "direct feedback" must necessarily be understood such that the computer simulation provides a decision as to whether the composite security design is producible. The term "direct feedback" may equally be understood such that, for example, an image of the simulated production result is shown to the operator. It is then up to the operator to interpret that image of the simulated production result to determine whether the composite security design can be produced on the line of production equipment. This understanding is compatible with the passages of the description on pages 18, 19 and 20 cited by the appellant, which just explain what is simulated and how. Furthermore, this understanding is not contradicted by the description on page 24, lines 7 to 9 stating: "the computer simulated results could further be exploited for the purpose of automatically setting up production machines of the line of production equipment". The expression "could be further exploited" includes any manner in which the simulation results could be exploited, for example by using image processing of simulated production results to extract parameters to set up production equipment.

Third, both document D1 (see paragraph [0076]: "the job simulator 22 may select an appropriate region of the image to be displayed, the region being one in which a defect is identified") and document D2 (see paragraph [0068]: "printing faults calculated by the 'image simulator'") disclose an identification, by a computer system, of limitations or bottlenecks in the line of production equipment.

2.12 In view of the above, the board finds that the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC) in view of the disclosure of either document D1 or document D2.

3. Main request - inventive step in view of document D3 (Article 56 EPC)

3.1 Document D3 as "closest prior art"

3.1.1 Claim 1 specifies a "method of checking producibility of a composite security design of a security document".

3.1.2 The examining division used document D3 as a starting point for the assessment of inventive step of the claimed subject-matter (see the communication dated 2 June 2021, point 2.1).

The title of document D3 reads "Verfahren f r Entwurf und Pr fung von Wertpapieren".

3.1.3 The appellant did not contest that document D3 related to a design method of value papers, which were a particular example of security documents (see statement of grounds of appeal, paragraph bridging pages 3 and 4); however, the appellant argued that the method in document D3 did not relate to checking the producibility of value papers, but to checking whether the design of the value papers was suitable for automatic testing (see statement of grounds of appeal, page 4, last paragraph).

3.1.4 Whether document D3 relates to checking producibility of value papers depends on how "checking producibility" is understood. Paragraph [0033] of document D3 reads: "Um die bei realen Wertpapieren auftretenden Effekte wie Drucktoleranzen ... ber cksichtigen zu k nnen, ist es m glich, die CAD-Daten bzw. die daraus umgewandelten Referenzdaten bereits in der Entwurfseinrichtung 50 durch Simulation entsprechend zu ver ndern". This means that a check is performed as to whether a value paper can be automatically tested (see paragraph [0018]: "Die dabei erzeugten CAD-Daten des Designs des Wertpapiers werden anschlie end darauf gepr ft, ob die im Design des Wertpapiers enthaltenen Merkmale f r eine sp tere automatische Pr fung geeignet sind") under the tolerances created by a production line. In the negative, a flaw in the production line may be considered to have been identified. This anticipates "checking producibility" of the value paper (see the board's interpretation of this feature in point 2.10 above).

3.1.5 The previous point notwithstanding, the board in any case endorses the opinion that a document with a different purpose can be selected as a starting point in an inventive-step analysis (see T 1742/12, points 9 and 10 of the Reasons; T 1294/16, point 5 of the Reasons). The technical field of document D3 is closely related to the technical field of the invention. For these reasons alone, the board finds that document D3 is a possible starting point for the assessment of inventive step of the claimed subject-matter.

3.2 Document D3 discloses a method of checking a composite security design of a security document, the composite security design (see paragraph [0017]: "eine Entwurfseinrichtung ... mit deren Hilfe Designs von Wertpapieren entworfen werden k nnen. Insbesondere erm glicht es der Einsatz von CAD Merkmale, die f r die Gestaltung des Designs der Wertpapiere verwendet werden, zu entwerfen bzw. innerhalb CAD gespeicherte, vorgefertigte Merkmale zu verwenden") being the product of a combination of multiple sets of design features that are to be provided on a substrate as a result of a plurality of successive production operations carried out by means of the line of production equipment (see paragraph [0017]: "Unter Merkmalen sollen dabei insbesondere die F lschungssicherheit steigernde Sicherheitselemente wie Wasserzeichen, Sicherheitsf den, Hologramme, Kinegramme usw. aber auch der f r den Druck von Wertpapieren verwendete Spezialdruck verstanden werden"), the method comprising the steps of:

- providing digital design data representative of the composite security design of the security document (see paragraph [0033]: "ist es m glich, die CAD-Daten ... bereits in der Entwurfseinrichtung 50 durch Simulation entsprechend zu ver ndern", implying that the CAD data representative of the composite security design were provided);

- performing a computer simulation of production results of a plurality of successive production operations of a line of production equipment (see paragraph [0033]);

- evaluating the computer simulated production results (see paragraph [0033]).

3.3 Document D3 does not disclose steps b) and c) as specified in claim 1 as well as a step of checking producibility which includes step d) as specified in claim 1.

3.4 Irrespective of whether the distinguishing features contribute to the technical character of the invention in light of G1/19, the board notes that any production line is bound to present limitations and bottlenecks. Therefore, the person skilled in the art would have wanted to identify the existence of limitations in the equipment that produces the security documents ("Wertpapiere") disclosed in document D3. Moreover, the person skilled in the art would have realised that similar solutions can be applied for identifying limitations in the equipment producing the security documents disclosed in document D3 as for identifying limitations in conventional printers. Therefore, the board agrees with the examining division that the person skilled in the art would have turned to documents D1 and D2 (see page 7 of the communication dated 2 June 2021, last paragraph). The distinguishing features would have been obvious in view of either of these documents (see point 2. above).

3.5 In view of the above, the board finds that the subject-matter of claim 1 does not involve an inventive step within the meaning of Article 56 EPC in view of the disclosure of document D3 combined with the disclosure of either document D1 or document D2.

4. First auxiliary request - admittance (Article 12(6) RPBA)

4.1 Under Article 12(6) RPBA "[t]he board shall not admit requests ... which should have been submitted ... in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance".

4.2 Claim 1 of the first auxiliary request contains the feature of checking producibility of a "composite banknote design of a banknote".

Compared with claim 1 of the main request, the more general term "security document" is thus restricted to a "banknote".

4.3 The board notes that the meaning of "security document" and whether such a document could be printed on a conventional multi-colour printer were major points of discussion during the first-instance proceedings.

This is evident from:

- the examining division's communication dated 30 October 2014, page 3, first paragraph,

- the appellant's letter dated 15 May 2015, point II.1.1,

- the examining division's communication dated 10 July 2017, page 2, first paragraph,

- the appellant's letter dated 9 November 2017, point I.1.1 and

- the examining division's communication dated 29 May 2019, page 1, point 2.

4.4 Therefore, a claim further restricting the "security document" to a "banknote" should have been filed during the first-instance proceedings.

Furthermore, the board cannot see any circumstances in the appeal case which would justify the admittance of such a request.

4.5 In view of the above, the board exercised its discretion under Article 12(6) RPBA by not admitting the first auxiliary request into the appeal proceedings.

5. Second auxiliary request - admittance (Article 12(6) RPBA)

5.1 Compared with claim 1 of the main request, claim 1 of the second auxiliary request further specifies, inter alia, that step d) is performed by running a software program in the computer system.

5.2 This amendment seems to address the examining division's view that step d) encompasses a mental act; however, if the appellant wanted to exclude an interpretation of step d) that encompassed a mental act, it should have maintained its request for oral proceedings before the examining division and filed a claim including this amendment.

5.3 For this reason, the board exercised its discretion under Article 12(6) RPBA by not admitting the second auxiliary request into the appeal proceedings.

6. Third auxiliary request - admittance (Article 12(6) RPBA)

6.1 Claim 1 of the third auxiliary request combines the features of claims 1 and 8 to 14 of the main request (see statement of grounds of appeal, page 8, first full paragraph).

Claim 1 of the third auxiliary request specifies, inter alia, that the plurality of successive production operations at least include an offset printing operation and an intaglio printing operation, and further include a screen printing operation and/or a typographic printing operation.

6.2 This amendment makes it immediately apparent that the line of production equipment cannot be a conventional multi-colour printer.

6.3 However, whether the line of production equipment could be a conventional multi-colour printer had been a major issue in the first-instance proceedings (see point 4.3 above).

6.4 Therefore, the board is of the opinion that a request restricting the line of production equipment to include special printing techniques should have been filed during the first-instance proceedings.

Furthermore, the board cannot see any circumstances in the appeal case which would justify the admittance of such a request.

6.5 In view of the above, the board exercised its discretion under Article 12(6) RPBA by not admitting the third auxiliary request into the appeal proceedings.

7. Conclusion

The main request is not allowable because the subject-matter of claim 1 of this request does not involve an inventive step within the meaning of Article 56 EPC. The first to third auxiliary requests were not admitted into the appeal proceedings under Article 12(6) RPBA. Since none of the appellant's requests is allowable, the appeal must be dismissed.