Friday, 1 August 2014

T 1944/10 - A sensor for secure delivery

In this opposition appeal the board had to decide if an amendment allowed by the opposition division was an intermediate generalization or not. The opposition division had allowed the following claim. (Changes are shown with respect to Claim 1 as granted; formatting has been added for clarity.)

Apparatus for the secure delivery of an article having a readable codebarcode, which apparatus comprises
-              a box (9; 70; 80; 209; 309) having a door (30; 30a; 30b; 230; 330) and locking means for locking the door,
-              an input device (362) capable of enabling a deliverer to enter a delivery code,
-              a controller for controlling access to the box having a pre-programmed code stored therein and capable of verifying the delivery code with the pre-programmed code characterised in thatwherein there further comprises
-              an article codebarcode reader (361) for reading the article codebarcode (253) to verilyverify delivery of the article, the controller being arranged to control the locking means and to release the locking means if at least a part of the article barcode read by the article barcode reader (361) matches the pre-programmed code stored in the controller, and
-              a transmitter (363) arranged to transmit the article codeidentity of the article, the identity of the deliverer, the time and/or date of delivery and the identity of the box to a desired location after the door is locked.

Support for this claim had to come from the 'fifth embodiment'.  This part of the application text refers also to a sensor, which is not in this claim. For example:  (page  16, lines 1-3)

The presence of the article is detected by sensor 367 thereby causing sensor 367 to signal to the controller 365 that an article has been placed in the box 309. When the door closes, the controller 365 signals the lock 311 to lock the door 330.

On the other hand, the text also contains suggestions that the sensor is optional. For example: (page 15, lines 18-20)

The box is preferably further provided with one or more article sensors (for example infra red/optical sensors) 367 and a transmitter/receiver 36.

 The Board had to decide if the sensor could be omitted without violating article 123.

Reasons for the Decision

1. The appeals are admissible.

2. Background of the invention

2.1 The present patent is concerned in the first place with "secure article delivery", see title, and first line of claim 1. In particular, as already stated in the original application as published, see page 1, 2**(nd) and 3**(rd) paragraphs, it addresses problems in secure delivery of items requiring recipients to be at home to sign for them.
The application as published, see claim 1, and the general statements on page 1, lines 23 to 27, and page 8, lines 1 to 5, describe the proposed solution in general terms: namely a box with a door that is openable by a deliverer when empty but which, once closed with an article inside, can only be opened by the recipient of the article.

2.2 The original description presents a number of distinct embodiments of this idea, some of which are mechanical and others electronic. For example, in the purely mechanical embodiment of figures 1 to 10, the bottom of the box is provided with a sprung platform. As long as no article is in the box a deliverer can open the door. When an article is in the box it weighs the platform down, the deliverer then shuts the door. Thus lowered with the door shut, the platform activates a latch which prevents the deliverer from reopening the box. See for example page 8, line 6 to page 9, line 5 and figure 1. Secure delivery is thus achieved by denying the deliverer access to the box after he has placed the item inside and shut the box.

The electronic embodiments are described in the application as published, page 15, line 6 to page 19, line 13 in conjunction with figures 11a, 11b and 12. These embodiments, referred to as the "fifth embodiment" offer an electronically controlled version of the box, page 15, lines 6-9. Here secure delivery is achieved by a controller 365 locking the door after an article has been placed in the box and the door closed (application as published, page 16, lines 1 to 6). Delivery verification takes place in a remote server based on delivery information sent once the article is secure in the closed box (application as published, page 16, lines 8 to 18).

3. Added subject matter, Article 123(2) EPC

3.1 As acknowledged by the respondent, claim 1 as granted and the amended version upheld by the decision under appeal claim are directed at the embodiment shown in figures 11 and 12 and described in detail as the fifth embodiment on pages 15 to 19 of the published application. Thus, claim 1 as upheld is directed at an apparatus for the secure delivery of an article having a readable code, and includes (amongst others) the features of a box with a locking means, an article barcode reader, a controller for controlling access to the box and a transmitter. According to the claim the controller controls access to the box by releasing the locking means when part of the article barcode read by the reader matches a stored pre-programmed code, the transmitter transmitted relevant delivery data after the door is locked. The description of the article barcode reader, the controller and the transmitter, and their operation using the pre-programmed codes is found specifically in the published application on page 15 , last paragraph, and the 2nd paragraph on page 16.

In addition to these features that are present in claim 1 as upheld, the description of the fifth embodiment on pages 15 to 17 also mentions other features that have not been included. In particular it mentions a sensor detecting the presence of an article in the box, see page 16, first paragraph ("the presence of the article is detected by sensor 367 ... to signal ... that an article has been placed in the box 399"), and shown at 367 in figures 11 and 12. This feature disclosed in combination with those mentioned above on pages 15 to 18 has thus been omitted from the combination of features appearing in claim 1 as upheld. Claim 1 as upheld thus lifts some but not all features from the specific combination of features originally disclosed in relation to the fifth embodiment.

3.2 According to established jurisprudence, it is normally not allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination, e.g. a specific embodiment in the description, see Case Law of the Boards of Appeal, 7th edition, 2013, II.E.1.2 and the decisions cited therein. Such an amendment results in an intermediate generalisation, in that it further limits the claimed subject-matter, but is nevertheless directed at an undisclosed combination of features broader than that of its originally disclosed context, see for example T1408/04 and T461/05. It is justified only in the absence of any clearly recognisable functional or structural relationship among the features of the specific combination, see T1067/97, and if the extracted feature is thus not inextricably linked with those features, see T714/00.

3.3 The Board must therefore consider whether such a justification exists in the present case. In other words it must examine whether the skilled person would derive directly and unambiguously from the original application documents that those features described in combination on pages 15 to 18 and incorporated into claim 1 of all requests, in particular controller, barcode reader and transmitter, have no clearly recognisable functional or structural relationship with the features of the fifth embodiment not incorporated, in particular that of the article sensor.

3.4 It is true that this part of the description relating to a fifth embodiment, said to be an "electronically controlled version of the [mechanical] box 309, see application as published page 15, lines 6 to 9, in following lines 18 to 24, that certain features, such as "one or more article sensors" may be "preferably" provided. This paragraph opens the description of the fifth embodiment by briefly describing its main features, some of which (article sensors, transmitter/receiver controller, barcode reader and keypad) are presented as preferable or dispensable. The following paragraphs on pages 15 to 18 then give a detailed description of how this particular embodiment is specifically realized, in terms of the interaction between its various features when an article is delivered. It is only then that the skilled person is given a complete teaching as to how the various features cooperate to achieve the stated purpose of the invention, that is secure article delivery. Far from being independent of each other, these paragraphs together describe a complete sequence of steps for securely delivering an article.

3.5 In more detail, a deliverer first unlocks the box by inputting a code or scanning an article barcode with the barcode reader, places the article inside and closes the door (page 15, last paragraph). Next, a sensor 367 detects that an article is in the box and signals this to the controller 365, which signals the lock to lock the door (page 16 first paragraph, which suggests various alternative sensing arrangements). Lastly, when the door is shut and "the package is secure inside the box", information pertaining to the delivery is sent via the transmitter to a central database for delivery verification (page 16, middle paragraph).

From the above sequence, the skilled person understands that the door can only be locked if an article is inside - the sensor must detect an article in the box and appraise the controller thereof which then locks the door. Therefore the skilled person understands the term "secure inside the box" to mean that the door is locked with an article inside. This understanding is consistent with the stated purpose of the invention and with all the other embodiments of the invention, as in the mechanical embodiment mentioned above (see above, section 2.2) in which the article's weight causes the lock to latch against further opening by the deliverer.

3.6 No other interpretation of what is meant by "secure" delivery can be derived from the original application as filed. Notably, the original application does not clearly and unambiguously disclose that "secure" might imply some lesser degree of security, in particular one in which it is ascertained only that the box has been opened with a barcode, but may then have been locked without the article being inside. Although the application does appear to suggest different degrees of secure delivery and ways of achieving this (see application as published page 20, lines 4 to 11), the skilled person will nevertheless understand that the minimum delivery security level consistently disclosed throughout the application as filed is for an article to be confirmed as being inside the box with the box locked.
Thus the skilled person understands "secure delivery of an article" in the context of the fifth embodiment, consistent with the stated aim of the invention (application as published, page 8, lines 1 to 5) and with the remaining embodiments, to mean that an item must be in the box and the box locked.

3.7 The only way to achieve such secure delivery disclosed in the description of the fifth embodiment requires the sensor signaling to the controller that the article is present in the box (application as published, page 16, first paragraph), thus these two features are functionally directly related. Furthermore, according to the fifth embodiment, verification of delivery (also claimed) is achieved by sending information, including that read by the barcode reader, to the controller, which sends it via the transmitter once the package is secure inside the box (page 16, middle paragraph). Consequently, this verification also requires input from the sensor to confirm the presence of the article in the box and cause the processor to lock the door. Thus the sensor is likewise functionally related to the barcode reader and transmitter. Furthermore, as can be seen from the system architecture shown in figure 12, the sensor 367 communicates directly with the controller 365, which in turn communicates with the barcode reader 361 and transmitter 363. The sensor is therefore structurally linked with the controller, barcode reader 361 and transmitter 363.

3.8 From the above it follows that the cited paragraphs provide a direct and unambiguous disclosure in the original application of a specific combination of features of a box with a door and a lock, an article sensor, an article barcode reader, a controller and a transmitter, which all cooperate using a pre-programmed code in the manner described to ensure verifiable secure delivery of the article inside the box. In that specific combination and within the context of achieving such a secure delivery of an article and verifying delivery, the claimed processor, barcode reader and transmitter are originally disclosed cemented in a tight functional and structural relationship, in other words inextricably linked, with the article sensor, which has not been claimed.

Where the published application on page 15, lines 18 to 24, refers to features such as the sensor being "preferably" provided, this is taken to refer to variants of the fifth embodiment for which no complete disclosure exists, in particular as regards how the various remaining features interact to provide for "secure delivery" in the only sense directly and unambiguously derivable from the application as filed. The only detail is provided in relation to the particular combination of specifically interacting features discussed above, in which the article sensor is a central, indispensable element.

3.9 The Board concludes that, by omitting the article sensor from this combination of features that forms the basis for claim 1 of all requests, those features that have been included, in particular processor, barcode reader and transmitter cooperating in the specified manner result in a combination of features for which there is no direct and unambiguous disclosure in the original application documents. Stated otherwise, this new, more general combination of features constitutes a teaching - namely that secure delivery can be achieved using a pre-programmed code and the article barcode read by the reader without a sensor sensing the article placed in the box - which the skilled person cannot derive directly and unambiguously from the application as filed. This results in a new subject matter which extends beyond the original application as filed, contrary to Article 123(2) EPC. This finding applies equally to the main and auxiliary requests 1 to 5, none of which include the feature of an article sensor.


This decision has European Case Law Identifier: ECLI:EP:BA:2014:T194410.20140314. The whole decision can be found here. The file wrapper can be found here. Photo by David Goehring obtained via Flickr.

1 comment :

  1. Compare and contrast ScriptPro v. Innovation Associates (Fed. Cir. 2014) (, also about omitting a sensor in a delivery box, although already int the claims of the patent as filed.