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.
