T 0461/88 (Microchip) 17-04-1991

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is admissible.

2. Claim 1 according to the main request differs from the claim as granted in that the following feature has been added: "and that the length of the scanning cycle, taking into account the speed of rotation of the respective servo motor (9), is such that the motor will also come to a standstill if, during a scanning operation, it is within the range of the predetermined minimum deviation". This feature is disclosed on page 4, second paragraph, of the original description and in column 2, lines 46 to 52, of the description as granted, and constitutes a limitation of the extent of protection conferred by Claim 1 as granted (Article 69 EPC).

In the text granted, Claim 1 differs from the original text in respect of the feature indicating how the comparing device functions, and with regard to the information that the actual values are repeatedly interrogated during an adjusting operation of a servo motor. To the skilled person, the functional principle of the comparing device is clearly and unambiguously indicated by the information on pages 16 (sixth line from the bottom) to 18 (first paragraph) of the original description. The feature of repeated interrogation is apparent, for example, from the information on page 32, first paragraph, of the original description.

Except for the addition of reference marks, the dependent claims are the same as their original predecessors.

The claims according to the main request do not therefore infringe the provisions of Article 123(2) and (3) EPC.

3. The additional feature now included in Claim 1 according to the main request serves, in both the original and granted versions of the description, to elucidate further the subject- matter of Claim 1. The choice of wording and the context in which the feature is mentioned make it quite plain that the latter is essentially not intended to be a particular embodiment of the invention; instead, it has a decisive importance for the functioning of the subject-matter as claimed in Claim 1. Under Article 69 EPC, this feature would in any event have to be taken into consideration when interpreting Claim 1.

Respondents I could not therefore have been surprised by this more specific version of Claim I, which was not presented until the day of oral proceedings.

Article 113(1) EPC has not therefore been infringed.

4. In their written rejoinder, dated 19 April 1989, to the statement of grounds for appeal (see p. 3, penultimate paragraph) respondents I alleged that in December 1981, i.e. after the validly claimed priority date of the contested patent, a printing press manufactured by M.A.N.-Roland had been supplied with an MPS system in which the ink keys were controlled by individually switchable servo motors. This machine, which had been delivered to Lille in France, had been ordered in January 1981, i.e. before the priority date of the contested patent. The first mention of this alleged prior use - on page 10, third paragraph, of the notice of opposition filed by respondents I - is even more incidental and non-specific. The testimony of the witness Mr Koch before the Opposition Division (see p. 6, second paragraph, of the minutes of the hearing) also failed to yield any more concrete information.

Even in oral proceedings before the Board of Appeal, respondents I were unable to produce any documents or information regarding the type of machine which had allegedly been delivered or ordered. They were unable to name the customer to whom the machine had been delivered, or who had ordered it, nor could they specify the action - e.g. ordering or delivery - which had supposedly rendered the object accessible to the public.

Even less information was produced to substantiate the allegation, also in the notice of opposition filed by respondents I, that prior use had occurred in Apeldoorn in the Netherlands.

Since no concrete facts or evidence regarding the supposed public prior uses in Lille and Apeldoorn were produced during opposition or appeal proceedings, this submission has not been sufficiently substantiated for the Board to take it up.

In its communication of 8 January 1991, issued under Article 11(2) of the Rules of Procedure of the Boards of Appeal, the Board gave notice of its intention to disregard the submission on the grounds of lack of relevance (Article 114(2) EPC).

5. The three prior uses (V1 to V3) which are still claimed to have occurred are all linked, since each of them refers to an MPS automation system developed by Brown Boveri & Cie (now known as ASEA-BBC), Baden, Switzerland.

Messrs Koch and Furrer, the witnesses heard during oral proceedings before the Opposition Division, are both employees of ASEA-BBC. Mr Koch himself said that, at the time when prior uses V1 and V2 occurred, he was in overall charge of customer relations, and he was also responsible for providing interested members of the public with general technical information about the products on display at trade fairs and exhibitions. At the time in question, Mr Furrer was working in the division of the company which deals with control systems for printing machinery, and this is still the case. He is familiar with all the technical details of the developments involved in the prior uses and knows how the order was handled. However, it was not his responsibility to make these details known to the general public, nor was he authorised to do so.

The alleged prior uses (V1 to V3) represent different stages in the development and disclosure of a single printing press.

From Mr Koch's statement, the following picture emerges of the sequence of events involved in the development of the machine. The starting point was evidently the order placed on 22 April 1976 by the industrial printer Tampereen Kirjapaino OY with the company Koenig & Bauer AG (Koebau) for the latter to supply a "Koebau Commander" press (see document D2, p. 19, final paragraph). The electrical equipment for this machine was ordered in May 1976 by Koenig & Bauer (Koebau) from the company known at the time as Brown Boveri & Cie (BBC). The BBC representative in charge of the sales negotiations with Koebau was Mr Koch, who subsequently also assumed responsibility for ensuring that the timetable laid down for the processing of the order was adhered to. Mr Koch also contacted the end-user in Finland. At the time when the order was placed, the MPS control system for printing presses was a new development, and this was the first occasion on which it was used in normal service. Instead of being developed for a particular machine made by a specific firm, the MPS was designed to be flexible and adaptable to various types of machines made by different manufacturers. BBC therefore had a vested interest in advertising the control system to manufacturers of printing presses, as well as to printing companies, in order to secure further orders.

For this reason, BBC made an early application, in May 1977, for permission both to exhibit, at the DRUPA in Düsseldorf, the main workstation, the control desk and the CPU of the machine which was later delivered to Finland and formed prior use V1, and to distribute brochures (D4) about this system. This exhibition constitutes alleged prior use V3.

The electrical equipment for the printing press was delivered to Koebau in July 1977.

In October 1977, partial functions, i.e. the setting of the ink keys using the MPS system, were exhibited at the IFRA in Nice, on which occasion the latest information (document D3) regarding these functions was distributed to interested members of the public. The ink keys were operational, to the extent that, having been displaced by hand, they were automatically reset to their original value. This exhibition constitutes the alleged prior use V2.

At both the abovementioned exhibitions, appointments were made with potential clients to inspect the machine at a later date after it was installed in Finland.

By mid-1978, the machine was operational, the installation work having been carried out in Tampere, Finland, by BBC engineers. At the same time, the end-user's service engineers, who had been specially trained by BBC, were given the final version of the circuit diagrams, stamped with a notice in several languages prohibiting the unauthorised disclosure of the diagrams to third parties. Demonstrations of the machine were given to interested persons from outside the company. The alleged prior use V1 is constituted by the delivery of the machine to the industrial printing works in Finland and its use there, the on-site maintenance work and the demonstrations which took place on the end-user's premises.

At both exhibitions, and during the on-site demonstrations, Mr Koch was on hand to answer questions. By his own testimony, he was "not familiar with the details of the electronics involved in the circuit", and the explanations he gave were more or less as in the brochures which were distributed at the time.

In assessing the nature of the disclosure by prior use according to V1, the circumstance therefore has to be taken into account that, at the time in question, the person skilled in the art was already in possession of knowledge concerning some subsidiary components of the printing press and was familiar with its general functional principle, having gleaned such information from the previous prior uses V2 and V3, as well as from the documents (D1 to D4) published while the machine was under development and construction.

6. Examination of the extent of disclosure by prior uses V1 to V3

6.1 Having regard to the above, an analysis of the case shows that the following features of the printing press involved in prior use V1 were disclosed by descriptions in printed documents and/or the verbal explanations supplied by Mr Koch:

- The machine in prior use is a rotary offset printing press (see document D2, p. 20, Fig. 25).

- For the setting of positioning systems other than those relating to the ink keys, the machine in question is provided with a plurality (the witness Mr Furrer gives the number as twenty: see p. 2, final paragraph, of his statement) of individually switchable servo motors, each of these being connected to a transmitter which generates electrical signals (actual values) that are characteristic of the respective actual position of the servo motor (see p. 3, second paragraph, of Mr Furrer's statement). Although Mr Furrer says that he was not authorised to give explanations to the public, the Board is satisfied that these individually switchable servo motors were definitely disclosed at the printworks in Finland. However, instead of being controlled by individual servo motors, the ink keys were provided with couplings which connected them, as required, to a central servo motor (see p. 5, penultimate paragraph, of the statement by the witness Mr Koch, and p. 4 of document D3, passage extending from the penultimate paragraph of the left-hand column to paragraph four of the right-hand column).

- The "Procontic" control system of the printing press in prior use is equipped with an electronic comparing device which is supplied with the actual and nominal values for the positions of a servo motor and which compares the actual value with the nominal value and which, as a function of the result of the comparison, causes the servo motor to travel forwards or backwards or to come to a standstill. The said comparing device successively interrogates the actual values in a repeated query cycle (see brochure D4, block diagram of the Procontic control system ("Pultstation" and "Unterstationen") and document D3, p. 5, section headed "Voreinstellung (Preset)").

The Board is therefore satisfied that, regarding the positioning systems other than those which relate to the ink keys, the printing press involved in prior use V1 embodied all the features listed in the prior art portion of Claim 1 according to the main request, and, furthermore, that these features have been disclosed.

6.2 The Procontic control system fitted to the printing press in prior use is freely programmable (see document D2, p. 20, right- hand column, penultimate paragraph) and can therefore be adapted to various types of machines made by different manufacturers. The heart of the control system is a microprocessor (see the statement by the witness Mr Furrer, p. 3, third from last paragraph).

Supplementing the evidence given by Mr Furrer before the Opposition Division, respondents I explained during the oral proceedings before the Board that, in the case of the printing press involved in prior use V1, the control principle realised by the program written in machine language and stored on the microchip had embodied precisely the features set out in the characterising portion of Claim 1 according to the main request. However, the programming of the microchip, including the setting of the minimum deviation for each servo motor, had been carried out by BBC under the supervision of Mr Furrer, who - at least until the priority date of the contested patent - had not been authorised to disclose the knowledge at his disposal to third parties.

In his testimony before the Opposition Division, the witness Mr Koch said that BBC had supplied circuit diagrams, which took account of the amendments made at the construction stage, to the engineering company Koenig & Bauer (Koebau), which passed these diagrams on to the printworks - or to its service engineers - in Finland where the printing press involved in prior use V1 was installed. Logic diagrams and block diagrams relating to the design of the circuit were also supplied. Since copies of these diagrams were not produced or were not available during the appeal or opposition proceedings, the Board was unable to form an opinion of their content or significance.

It has not therefore been proven to the Board's satisfaction that the diagrams given to the end-user, or to its service engineers, disclosed details - as per the characteristic features of Claim 1 according to the main request - of the functioning of the program stored on the microchip. The fact that respondent I, which is one of Koebau's competitors and therefore a member of the "interested" public, did not manage to obtain such documents would also tend to indicate that the diagrams were treated in confidence.

6.3 In view of these circumstances, the question arises whether it was possible, in connection with prior use V1, for skilled members of the interested public, having no knowledge of the logic and block diagrams specific to the program, to recognise immediately the program written in machine language and stored on the microchip, and thereby infer how it functioned. Even if the Koebau engineering company and the end-user in Finland are counted as members of the "interested public", the following picture emerges:

In theory, it is possible to reconstruct the contents of a program stored on a microchip, for example by using a "disassembler" program or by so-called reverse engineering. However, these procedures require an expenditure of effort on a scale which can only be reckoned in man-years, during which time the chip is only available for examination purposes and cannot be put to the productive use for which it was intended. Depending on the method of investigation used, there is also a danger that the chip may be destroyed.

The electrical equipment for the printing press was at the disposal of the Koebau engineering company from about the middle of 1977 onwards, i.e. for approximately one year before delivery to the end-user. This is a relatively short period in which to build a large machine, and experience suggests that it would be a very busy time, with strenuous efforts being made to meet the agreed delivery date and avoid penalties for breach of contract. Subsequently, the machine was in normal service in a newspaper printworks (see document D2), whose expenditure on the plant represented a major investment, the presetting devices alone having cost DEM 450 000 (see p. 22, right-hand column, of document D2). The printworks would therefore only be interested in ensuring that its periodical publications appeared on time, and it would not be prepared to countenance lengthy interruptions in production.

For both companies, the usefulness of the knowledge to be gained by investigating the microchip would therefore have been entirely disproportionate to the economic damage caused by the time spent on such an investigation. Thus the possibility can be ruled out that the public gained knowledge of the program via Koebau or the end-user by investigating the chip. Having regard to the circumstances of the present case, it can be said that the program was not disclosed by the delivery of the microchip on which it was stored and does not therefore form part of the state of the art within the meaning of Article 54 EPC.

6.4 The Board can therefore only regard certain features of the control and presetting principles embodied in the printing press involved in prior use V1 as having been disclosed to the public, i.e. those features which, taking into account the publication in the meantime of documents D2 to D4 and the explanations given by the witness Mr Koch, could be inferred by skilled persons (including employees of the end-user) from an inspection of the machine while it was in operation.

From document D3, p. 4, section headed "Druckwerkstation", the observer would know that the control and presetting system controls 250 positioning systems per printing unit, 90% (i.e. 225) of these systems being concerned with the ink key setting and the remaining 25 with the ink and cut-off register settings, the metering of the dampening solution and a number of individual control commands. Regarding the functioning of the microcomputer program, he would know (see document D3, p. 5, section headed "Voreinstellung (Preset)") that a microcomputer program exists which cyclically interrogates the actual values from this plurality of systems, compares the actual with the nominal values and calculates the difference between them. The difference between the actual and nominal values determines the speed of the servo motors and the direction in which they travel. Although the interrogation and comparison are done on a cyclical basis, all the servo motors are triggered in parallel, so that the length of the entire presetting operation depends purely on the adjustment time for the slowest servo motor (see document D3, p. 3, left- hand column, paragraph three). Fig. 3 in this document merely supplies the even more general information that the servo component is activated when the result of the cyclical comparison between the actual and nominal value is other than nil; otherwise, the component is switched off. A similarly perfunctory description of the functional principle is given in the diagram of the "Unterstationen" in document D4. In document D2 (see, in particular, p. 24, second paragraph), the same technical content is described thus: "The printing units compare the nominal and actual values and determine, on this basis, the direction and extent of the movement of the servo motors."

Furthermore, there was the information imparted orally by the witness Mr Koch, who said that he was "not familiar with the details of the electronics involved in the circuit", and that the explanations he gave were "as in" the brochures distributed at the time (see testimony Koch). An observer, looking at the printing press, saw that the servo components were in motion for a period of time and then came to a standstill. If the servo component thus observed were driven by a three-phase motor, the person skilled in the art would be able to infer that the movement occurred at an even speed. This would also be the case if, for example, in the context of prior use V2, he had manually displaced the ink blade supports which were on display and they had then automatically moved back to their original position, as described by repondents I during oral proceedings before the Board.

On the other hand, given the description in the documents cited above, the person observing the machine exhibited in the context of prior use V3 would gain the impression that the presetting system was based on the principle which was familiar from document D5, and which the appellants, in the description of the contested patent (see column 1, lines 5 to 21) and the prior art portion of Claim 1 according to the main request, took to be the closest prior art. Here too, the actual value is cyclically interrogated and compared with the nominal value, and the difference between the two values, indicating the extent of the necessary adjustment, is calculated and stored on a counter. If the stored value, representing the difference between the actual and nominal values, is equivalent to nil, the servo motor remains at a standstill; otherwise it runs in the direction determined by the difference between the two values. With this prior art, too, all the presetting operations occur simultaneously, and the time required for setting the entire machine depends purely on the adjustment period for the slowest servo component.

6.5 The features in the characterising portion of Claim 1 according to the main request have not been publicly disclosed by prior uses V1 to V3 and the accompanying publications.

The subject-matter which has been publicly disclosed by prior use V3 and the accompanying publications, and which thereby forms part of the state of the art within the meaning of Article 54(1) and (2) EPC, is therefore no closer to the subject-matter of Claim 1 according to the main request than is the subject-matter of document D5, from which the subject-matter of the said Claim 1 differs in respect of the features in its characterising portion.

6.6 It was possible to draw this conclusion without taking (further) oral evidence from the named witnesses, since all the necessary facts were already contained in the minutes of oral evidence given before the Opposition Division and in documents D1 and D4.

Messrs F. Schmid and György Balazs, the witnesses who had not yet been heard, are employees of respondents I who are alleged to have attended a demonstration, conducted by the witness Mr Koch on 6 November 1978, of the machine involved in prior use V3. They cannot therefore have gained any knowledge beyond the information which Mr Koch, by his own testimony, imparted to them.

7. Since the remaining documents D6 to D8 are no closer than document D5 to the subject-matter of Claim 1 according to the main request, the subject-matter of this claim is new within the meaning of Article 54 EPC.

8. The decision of the Opposition Division to revoke the contested patent was based on the view that the subject-matter of Claim 1 as granted was anticipated by prior use V3, which was held to be novelty-destroying. For the reasons set out above, the Board was unable to concur with this view. However, its examination of the appeal is based on a state of the art which differs from that taken into account by the department of first instance. In order to ensure that the appellant is not deprived of the possibility of subsequent review, the Board therefore considers it appropriate to remit the case for further prosecution, under Article 111(1) EPC, to the Opposition Division, thereby giving the latter an opportunity to examine, in particular, the question of the existence or non-existence of inventive step with regard to the subject-matter of Claim 1 according to the main request.

9. Decision on costs

In opposition proceedings, each party is expected to meet the costs it has incurred during the taking of evidence. However, under Article 104(1) EPC, a different apportionment of costs may be ordered for reasons of equity. This applies in cases where costs arise in whole or in part as a result of the conduct of one party which is not in keeping with the care required to assure the effective exercise of the rights involved or which stems from culpable actions of an irresponsible or even malicious nature (Singer, "Europäisches Patentübereinkommen", Carl Heymanns Verlag KG, Cologne, Berlin, Bonn, Munich: 1989, Art. 104, No. 6).

In the present case, this consideration does not apply. On the contrary, given the facts of the case, the appellants' insistence on calling witnesses to give oral evidence is clearly in keeping with the principle that responsibility must be exercised in the defence of rights, since the taking of such evidence might well have made it possible to prove the allegation that prior use V3 was public. The request of respondents I that the costs incurred during the taking of evidence be awarded against the appellants is therefore refused.

10. Referral to the Enlarged Board of Appeal

Since the Board takes the view that the computer program involved in prior use V1 does not in this case form part of the relevant state of the art, there is no need to examine the appellants' second auxiliary request (see section VII above), made with the intention of securing the referral to the Enlarged Board of Appeal (Article 112(1)(a) EPC) of certain points of law relating to this matter.