|European Case Law Identifier:||ECLI:EP:BA:2021:T156719.20211122|
|Date of decision:||22 November 2021|
|Case number:||T 1567/19|
|IPC class:||G06F 3/12|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||Workflow generation in a print shop environment|
|Applicant name:||Ricoh Company, Ltd.|
|Relevant legal provisions:||
|Keywords:||Inventive step - (no)
Inventive step - lack of technical effect
Amendment to case - requirements of Art. 12(2) RPBA met (no)
Amendment after summons - exceptional circumstances (no)
Amendment after summons - suitability to resolve issues (no)
Summary of Facts and Submissions
I. The appellant appealed against the examining division's decision refusing the European patent application in suit.
II. The examining division decided that the subject-matter of the independent claims of the main request and auxiliary requests 1 to 3 did not involve an inventive step. Moreover, it decided that the main request and auxiliary requests 2 and 3 did not meet the requirements of Article 123(2) EPC.
III. The examining division made reference, inter alia, to the following documents:
D1 US 2004/111430
D2 US 2009/201531.
IV. With the statement setting out the grounds of appeal the appellant submitted a main request and auxiliary requests 1 to 3 and stated that these requests corresponded to auxiliary request 1, the main request and auxiliary requests 2 and 3, respectively, underlying the contested decision.
V. The board summoned the appellant to oral proceedings.
In a communication pursuant to Article 15(1) RPBA 2020, the board set out its provisional opinion on the case.
VI. With a letter dated 22 October 2021, the appellant submitted auxiliary request 4 and arguments pertaining to this request.
VII. Oral proceedings took place on 22 November 2021.
VIII. The appellant's final requests were that the decision under appeal be set aside and that a patent be granted on the basis of the main request or alternatively on the basis of any of auxiliary requests 1 to 4, said main request and auxiliary requests 1-3 having been filed with the statement setting out the grounds of appeal and said auxiliary request 4 having been filed with the appellant's letter dated 22 October 2021.
IX. Claim 1 of the main request and of auxiliary request 3 reads as follows:
"A system (102) comprising:
a memory (123) configured to store different workflow rules that describe logical relationships of activities at a print shop;
an interface (121) configured to receive print jobs for each of the multiple different customers;
a workflow generator (124) configured to identify the customer and, for each of the print jobs, access the memory to identify the particular workflow rules defined for the customer that the print job is for based on the identifying of the customer and retrieve the rules for the customer, receive a set of device capabilities from resources (130) of the print shop, the capabilities indicating the status of the resources and their available activities, identify from the device capabilities the activities available at the print shop, and generate a custom workflow for the print job based on the identified particular workflow rules defined for the customer, the available activities, and a job ticket of the print job, wherein the custom workflow comprises an ordered set of activities; and
a resource manager (125) configured to direct resources of the print shop to perform the activities of the custom workflow."
X. Claim 1 of auxiliary request 1 is based on claim 1 of the main request. Additionally, it states that the workflow rules are "defined individually for each of multiple different customers".
XI. Claim 1 of auxiliary request 2 is based on claim 1 of auxiliary request 1. It comprises the following further clauses:
"wherein information describing a historical performance of the available activities is used to determine a predicted load and wherein the workflow server (120) is configured to determine that a function should be performed with off-site resources when certain load balancing criteria are met,
wherein the workflow generator (124) is further configured to identify resources used for the activities in the workflow, identify sets of independent activities in the workflow based on the resources used by the workflow activities, and parallelize the workflow by scheduling the sets of independent activities to be performed in parallel".
Furthermore, the claimed system comprises a workflow server and the custom workflow is additionally based on "information describing a historical performance of the available activities".
XII. Claim 1 of auxiliary request 4 is based on claim 1 of the main request. It comprises the following further clause:
"wherein the rules for the customer define priority, resources and dependency of printing activities at the print shop".
Reasons for the Decision
1. The present application pertains to a method and to a device for generating and executing workflows in a print shop. Workflow rules are stored. Print job requests are received from a customer. Rules defined for the customer, capabilities of the resources of the print shop and information from the print job are used to generate a customer workflow for the print job.
2. Document D1 discloses generating a workflow for a printing service, based on available services and data from a received job request.
3.1 The claims of the main request correspond to the claims of the first auxiliary request underlying the contested decision.
3.2 The board confirms the outcome and the main line of argument of the inventive-step analysis in the decision under appeal.
3.3 The appellant argued that, in addition to the features indicated in section 2.2 of the impugned decision, document D1 did not disclose
- an interface configured to receive print jobs for each of the multiple different customers;
- a workflow generator configured to identify the customer and retrieve the rules for the customer.
3.4 With regard to the first feature, the board considers that it is disclosed in document D1. According to claim 2 and paragraph 59, one or more clients may originate job requests and a human user may use the client 31.
3.5 D1 does not disclose the second feature listed above.
3.6 The appellant submitted in the statement setting out the grounds of appeal, in the first paragraph on page 4, that "the distinguishing features have a technical effect in that the rules used to generate the workflow will be different all things being equal".
The board does not agree that such an effect is achieved.
First, "all things being equal" is not correct. "All things but the customer identification being equal" is probably what the appellant meant.
Second, the same rules may be used for a customer with a different identification, e.g. three different customers may be treated as loyal customers, for which the same "loyal customer" rule is foreseen (Figure 3 of the application in suit, item 308).
Third, while the resulting workflow may be different, the differences are not necessarily of technical character. The rules for loyal customers vs. new customers (see Figure 3 and pages 13, 16 and 17 of the description) lead to differences in billing (discount and full price) and in the presence of a credit check and "send promo" for a new customer. Defining and using rules concerning business aspects for different customers or types of customer is a business decision. The implementation of this in a computer system involves technical considerations; however, these considerations do not pose any difficulties for the skilled person.
The board notes that differences in the workflow which are of technical character (e.g. that a dry run print is to be performed) are not based on the rules, but on the print job being identified as large print job (see Figure 3 and page 16).
3.7 The appellant argued on page 2 of the statement setting out the grounds of appeal that "it is absolutely clear that if workflow generation is technical (and that appears to be indisputable) in the type of system under consideration, then the fact that the workflows will differ (based on the identity/type of the customer) would appear to mean that there is a technical result even if the motivation for the technical result was non-technical (commercial); in other words, in order to achieve the result technical means are required and the technical means result in a technical solution. All inventions are motivated by commercial reasons the question is only whether the invention is technical".
The board disagrees. Workflow generation is not technical per se. In the case at hand, the differences between the generated workflows pertain to business aspects, as explained above in section 3.6. Furthermore, it is correct that technical means are involved in the billing process, for example; however, the board holds that such means would be foreseen by the skilled person, based on the business requirements and in an obvious way.
3.8 The appellant submitted that rules were customer-specific and were set once and then reused, which increased efficiency and flexibility.
This argument is not persuasive. Document D1 similarly discloses rules which are stored in a database and thus reused; see the abstract and paragraphs 60 and 61. Furthermore, the fact that the rules are customer-specific does not lead to a technical effect, as explained in section 3.6 above.
3.9 For these reasons, the board holds that the distinguishing features do not lead to technical effects but to business-related effects and that a skilled person, faced with the problem of adapting the system in document D1 to provide rules and to consider them depending on the customer identification, would arrive at the subject-matter of claim 1 without any need for inventive activity.
Consequently, the subject-matter of claim 1 of the main request does not involve an inventive step.
Auxiliary requests 1 to 3
4.1 Auxiliary requests 1 to 3 closely correspond to the main request and auxiliary requests 1 and 3 on which the contested decision was based.
4.2 The examining division decided that these requests did not meet the requirements of the EPC.
4.3 According to Article 12(2) RPBA 2007, the statement of grounds of appeal shall contain a party's complete case and shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed or amended.
4.4 Despite the obligation to present its complete case, the appellant did not submit any reasons or arguments as to why the first-instance decision regarding auxiliary requests 1 to 3 was to be reversed.
4.5 Furthermore, claim 1 of auxiliary request 3 is the same as claim 1 of the main request. Hence, it does not meet the requirements of patentability for the reasons given above for the main request.
4.6 Consequently, the board has not taken auxiliary requests 1 to 3 into account, pursuant to Article 12(4), last subclause, RPBA 2007.
Auxiliary request 4
5.1 This request was filed after the notification of the summons to oral proceedings and after the board issued the communication pursuant to Article 15(1) RPBA 2020. Claim 1 has been amended by adding features from the description of the application in suit. Therefore, it is at the discretion of the board whether or not to admit this request, based on Article 13(2) RPBA 2020.
5.2 The appellant explained that auxiliary request 4 could not have been filed earlier, e.g. immediately after the preliminary opinion of the board was received, because discussions between the representative and the applicant were taking place.
5.3 This is not a convincing argument. The board's preliminary opinion essentially confirmed the findings in the decision under appeal. Therefore, there were no exceptional circumstances. Additionally, requests filed immediately after the board's preliminary opinion was received equally fall within the ambit of Article 13(2) RPBA 2020.
5.4 The appellant argued that claim 1 as amended was prima facie allowable because the lack of technical effect objected to by the examining division and by the board was overcome. The efficiency and flexibility of printing operations were improved.
5.5 The appellant's main argument with regard to inventive step is that "claim 1 excludes the non-technical, business-related rules to which item 8.7 of the communication refers", also referring to the second full sentence on page 10 of the description of the application in suit.
5.6 The board is not convinced. The wording added to claim 1 (see section XII. above) does not exclude business-related rules. The sentence on page 10 mentions printing and non-printing activities, but does not refer to, and much less excludes, business-related rules. Furthermore, in view of Figure 3, for a new customer the printing activity "print pages" depends on the non-printing activity "credit check". This is clearly based on business considerations. The objection regarding a lack of technical effect is thus not overcome and claim 1 is not clearly allowable.
5.7 For these reasons, auxiliary request 4 was not admitted into the appeal proceedings, pursuant to Article 13(1) and 13(2) RPBA 2020.
For these reasons it is decided that:
The appeal is dismissed.