T 0767/99 13-03-2002

1. The appeal is admissible.

2. Method of doing business as such (Articles 52(2)(c) and (3) EPC )

2.1. The patent relates generally to a system for processing mail. As described in the patent this involves mechanical sorting of mail pieces, which are physical entities such as envelopes or packages, into which various materials have been inserted by the mailer, in accordance with address information (zip codes) on the mail pieces with a view to producing trays of labelled mail appropriate for shipping to respective destinations. The specific inventive teaching recognises and addresses the problem that the prior art practice of processing the mail pieces in zip code numerical order, as generated by a mailing list, results in a lower effective throughput in a given time period, because time spent processing local mail unnecessarily early tends to prejudice the early delivery of non-local mail which needs to be dispatched sooner to make a flight connection. In broad terms, the solution proposed is to replace the numerical zip code processing order by a just-in-time sequence thus increasing the number of early non-local deliveries without prejudice to the timely delivery of local mail.

2.2. The appellant opponent's objection under Article 52(2)(c) EPC is twofold, (i) that the "means for shipping non-local mail" in claim 1 and the corresponding step in claim 6 refers to the van driver acting under business management instructions and (ii) that a just-in-time sequence is a typical administrative measure of modern business methods.

2.3. As regards the role of the van driver, the board accepts the respondent proprietor's interpretation of claim 1 according to which the "means for shipping non-local mail" includes means for printing labels, means for labelling trays as well as the van and driver, the driver being involved only in a "mechanical" way, ie doing what a driver usually does when collecting labelled trayed mail. The driver does not determine the just-in-time sequence; he simply implements the sequence determined by the computer controlling the mail processing apparatus and expressed in the trays labelled with destinations and times of departure. There is no question of the driver exercising a judgement of the kind usually involved in doing business. In the judgement of the board, this part of the appellant opponent's objection is not well-founded.

2.4. As regards the just-in-time sequence itself, it is true that it can be fairly said to be a measure inspired by that mathematically based approach to planning and resource allocation known as operational research or logistics which is nowadays a typical management "tool" used in running a business. In the opposed patent however it has a practical application to mail processing, which is itself, in essence, a particular kind of mechanical handling and selective conveying of articles to respective destinations under given time constraints. The established jurisprudence of the EPO Boards of Appeal has construed Articles 52(2) and (3) EPC to mean that the fact that a measure may have been derived from or inspired by an insight originating in an activity which is per se excluded from protection - be it a discovery, a mathematical method, a mental act or a method of doing business - does not imply that a claim including the material expression or embodiment of such a measure in its specific practical application in the solution of a technical problem is a claim to the excluded activity as such; cf decision T 208/84 Vicom OJ EPO 1987,14, Headnote I.

2.5. The respondent proprietor has admitted, and the board does not disagree, that the claims could have been drafted more clearly. Given that lack of clarity is not a ground of opposition under the EPC, the board has, of necessity, had considerable recourse to the description in coming to its conclusion about the proper construction of the claims, including the meaning to be given to the term "just-in-time". Having done this, however, the board has no doubt as to the effect of the just-in-time measure in controlling a technical process of mechanical handling and conveying.

2.6. As is confirmed below in the consideration of the issue of inventive step, the skills exercised in solving the problem addressed by this invention are those of a person skilled in the art of mail sorting, not those of a manager or businessman. Hence, in the judgement of the board, the apparatus and method claimed should be regarded as a (potentially patentable) invention within the meaning of Article 52(1) EPC and not as a method for doing business as such within the meaning of Articles 52(2)(c) and (3) EPC.

3. Order of discussion of requests

In the deliberation following oral proceedings, the board considered and decided on the requests of the parties in the standard order of main request followed by first auxiliary request. Nevertheless, for reasons which will become clear, in the interests of a perspicuous presentation, this decision will, exceptionally, give the reasons for granting the respondent proprietor's first auxiliary request before giving the reasons for refusing the latter's main request.

4. Novelty over D10 (1st auxiliary request)

As pointed out by the respondent, D10 is not a mailer-based system; the first paragraph of column 6 makes it clear that the machine described is located at a post office. Given that the feature of being mailer-based is a feature of independent claims 1 and 6 of the first auxiliary request the novelty objection is unfounded.

5. Inventive step

5.1. Closest prior art and objective technical problem

5.1.1. As correctly pointed out by the respondent proprietor, the delimitation of claim 1 of the granted patent was based on prior art document US-A-5 072 401 referred to in the specification of the opposed patent at column 2, line 23 ff. Nevertheless it was common ground in the opposition procedure, and it also the view of the board, that document D1 represents the closest prior art. It describes a mailer-based system. Mail is generated and processed at the mailer's premises in accordance with a mail list program; it is zip-coded, weighed, franked, bar-coded, sorted, and placed in trays which are labelled in accordance with the zip code and destination to be sent to the post office; D1, column 1, lines 1 to 8, column 4, line 23 to column 5, line 11. As stated at D1, column 6, lines 21 to 27: "As the post office receives the validated labelled trays from the mailer, no sorting or other processing is required by the post office and the mailing clerk can forward the trays directly to the appropriate distribution centers. This saves time and effort on the part of the post office for which the mailer is given a postal discount."

5.1.2. The apparatus specified in claim 1 (1st auxiliary request) is distinguished from that known from D1 by the following features:

(i) means for separating local mail from non-local mail,

(ii) (computer)processor means containing time of departure data for a transportation system, and

(iii) means for shipping non-local mail to the common carrier (38) in accordance with the times of departures of the transportation system so as to meet a just-in-time sequence for the mail.

5.1.3. As explained in the description (column 4, lines 30 to 35),"a transportation system" is typically an aeroplane, but also includes a truck or any form of transportation that a common carrier would use. The phrase "just-in-time sequence" is supported by a number of passages in the description, eg at column 4, lines 36 to 47: "The shortcoming of the prior practice was that mailing lists are normally in numerical order according to the zip code and there is no relationship to the schedules of the common carrier. For example, the first mail being processed by the mailer may be addressed to the state of Maine whose zip code (first two digits) is 03. The first plane departure for the common carrier may be California, zip code 92, and the flight for Maine may be many hours away. Clearly, under these circumstances it would be advantageous to process the mail for California first and the mail for Maine at a later time in accordance with the next flight departure for that state." The just-in-time program of the processor is explained in detail at column 8, lines 1 to 44, a key step being (line 27 et seq.) that "An inquiry is made 83 whether the job being processed can meet the due time at the common carrier, which will give the common carrier time to process and deliver the mail in time to meet the CET"(critical entry time). "All jobs that cannot meet the due time are placed at the end of the queue..."

5.1.4. Starting from D1 the objective technical problem solved by the claimed apparatus and method is, therefore, to increase the useful throughput of a D1 type mailer-based system.

5.2. Solution

The above problem is solved by enabling the mailer's processing system to take account of the common carrier departure timetable to produce and operate a just-in-time scheduling of the mail processing in the sense explained above.

5.3. Obviousness over D1 and common general knowledge in the art.

It is common ground that the general principle of just-in-time operation was known and applied before the priority date to such operations as stock control and delivery of components or goods to assembly sites, D2 being a typical example. The board is, however, not persuaded by the appellant opponent's contention that it was obvious for the person skilled in the mail processing art to apply this principle to a mailer-based system of the kind known from D1. The motivation for just-in-time operation, eg in component delivery is the benefit to the assembler of less storage space and later payment. The consideration in the present patent is almost the opposite, here the "supplier" (mailer) benefits by delaying the hand-over to the "assembler" (common carrier). It also runs counter to the traditional separation of functions between the mailer and the post office according to which the timetable of the common carrier would be a typical concern of the post office, the mailer confining his role to meeting the collection time set by the former. Hence, in the judgement of the board, the idea of choosing at the mailer level which mail processing job to complete and which to defer on the basis of destination and an associated common carrier timetable relating to transfer operations well downstream of the mailer's own sphere of operations cannot be considered to be a routine application of a well-known just-in-time principle.

5.4. Obviousness over D10 and common general knowledge in the art.

As noted above, the mail processing machine described in D10 is not located at the mailer. Neither is the mail processing operation described therein "just-in-time" in the sense of the opposed patent. The closest it comes to it is that in D10 mail processing for a given destination is continued right up to the last possible minute which still enables the common carrier connection to be made. D10, column 11, line 12ff: "As the time schedule programmed within the computer signals that any mail to go along the dispatch...must be pouched for delivery to that train by a given hour, it may call out all mail along that dispatch ... In this manner, both mail to a specific end-point destination, and dispatch (or secondary scheme) coded mail can be bundled in sufficient time to meet a carrying means, such as the train cited, for prompt deliver." There is, however, no suggestion in D10 that processing jobs which are not time-critical should be identified and deferred in favour of jobs which are time-critical as illustrated in the Maine/California example above. A leitmotif in D10 is that "the mail must be kept in motion and moving toward its ultimate destination with the least amount of delay in the post office" (D10, column 6, lines 19 to 21). In contrast, the opposed patent recognises that delaying some jobs in favour of others can increase effective throughput. For these reasons the board is not persuaded by the appellant's contention that there is no real difference between "just-in-time" as used in the opposed patent and the older colloquial use of the phrase to mean "with no time to spare". If there were only a single departure time for all destinations, it would amount to the same thing, but different departure times for different destinations provides the possibility of selective processing on which the opposed patent is based and the board sees no reason to construe the claim in the simplistic colloquial sense, since it would mean that something quite banal was being claimed and it would not reflect the teaching of the description of the opposed patent.

5.5. Obviousness over the combination of D1 and D10

Given that D10 does not teach the key features distinguishing the apparatus and method in accordance with claims 1 and 6 of the first auxiliary request, viz mailer based and "just-in-time" in the selective processing sense, the person skilled in the art, starting from the closest prior art D1 and addressing the objective technical problem identified above would not derive the claimed solution from consideration of D10.

6. The board thus concludes that the subject-matters of the claims of the patent as amended in accordance with the respondent proprietor's first auxiliary request granted are to be considered as new within the meaning of Article 54 EPC and as involving an inventive step within the meaning of Article 56 EPC.

7. Main request

Claim 1 of the main request does not include an explicit specific limitation to mailer-based operation, although the description leaves very little room for doubt that this limitation is to be read into the claim. The respondent proprietor agreed with this view of the claim and the only reason he gave for maintaining the main request was that his client's instructions required him to request dismissal of the appeal as main request. In the judgement of the board this situation amplifies a residual doubt about what claim interpretation might be argued for in possible infringement proceedings and indeed compels the board, in order to avoid the unreasonable conclusion that the first auxiliary request is in substance the same as the main request, to interpret claim 1 of the main request in a literal way as not being necessarily mailer-based. This then means that the claim is wider than justified by the respondent proprietor's argument as far as inventive step is concerned, ie the respondent has not sought to defend this claim on its wider interpretation. Neither does the board consider it defensible, since, in its view, the location of the just-in-time processing at the mailer level is essential for inventive step. In the judgement of the board, therefore, the subject-matter of claim 1 of the main request does not involve an inventive step having regard to D10, and the main request accordingly falls to be refused.