T 1203/20 - Using the description to broaden the claim - for validity

Key points

•  This is an appeal against a refusal. The application is about a system for post (physical posts) with compartments, e.g. lockers.
• "  According to the appellant, the definition "the recognition means provided at one or more compartments (8) and adapted to recognise if a package is deposited in a compartment" in the claim indicated that the recognition means of the claimed system were able to determine whether a package was actually deposited inside the compartment."
• "In contrast to that, the system of D1 used a sensor to determine when the door of the compartment was opened and closed in order to determine whether there was anything deposited inside the compartment. This determination, however, was based only on an assumption about the deposit of a package inside the compartment. It was possible for example that a user opened and closed the door of the compartment without depositing anything inside."
• The Board: "according to paragraph [0019] of the published application, the recognition means is not particularly limited to any specific component or software configuration. As described in this paragraph, the recognition means can be a sensor adapted to detect the opening of the door to the compartment, or the actuation of actuation means controlling the door. The recognition means may alternatively include a light sensor located in the compartment such that, when a light beam is broken by the presence of a package, the recognition means detects that a package is deposited therein. "
• "as the above-cited paragraph describes, the application does not limit the recognition means to any specific implementation. On the contrary, it is also envisaged that the recognition means can be a compartment door sensor as in the system of D1."
• The claim has some other differences with D1. Turning to inventive step: "the claimed system does not bill the users for their reservation(s) [as in D1] and thus it sets time limits to the reservation of the compartments so that users reserve them only for as long as they need them. The system monitors the time and when the reservation time (period) ends, it renders the compartments available for reservation (unless a package is detected inside the compartment)."
• "the claimed system differs from D1 only in the way the compartments and their reservations are managed. This is an administrative/business scheme defined by the manager of the post (locker) system."
• The claim is held to be obvious. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t201203eu1

2. Main request

2.1 It is common ground that D1 represents a suitable starting point for the assessment of inventive step.

D1 describes a locker system and how it is controlled (see Figure 1). The system comprises several locations with lockers where users can store items. Users can reserve lockers in the system using a terminal, such as a mobile phone (see Figure 7 and paragraph [0140]). The system keeps a status table (database) where the current status of each locker is shown ("available", "occupied"), see Figure 5.

A user can reserve a locker from a specific time onwards. When the locker is freed, the system determines the time period the user kept the locker reserved and bills them a fee (see Figure 15).

2.2 The board agreed with the appellant that the claimed system differed from the system of D1 by the following three features:

(i) the post system is adapted to identify at least one record within the reservation table of the database associated with a reserved compartment having a reservation time that is past a current time, and to update the record of the reservation table corresponding to the identified compartment to available;

(ii) wherein the identifying at least one record further includes comparing the reservation time with the current time and data from a recognition means, the recognition means provided at the one or more compartments and adapted to recognise if a package is deposited in a compartment, wherein the record corresponding to the reserved compartment is updated to available if the recognition means do not detect that a package has been deposited in the reserved compartment within the reservation time; and

(iii) the post system is adapted to update the reservation table by storing data indicating a reserved status associated with the at least one available compartment to be reserved and a reservation time to establish a compartment reservation.

2.3 The appellant also argued that D1 did not disclose any "recognising means" in the sense of claim 10 of the main request.

2.3.1 According to the appellant, the definition "the recognition means provided at one or more compartments (8) and adapted to recognise if a package is deposited in a compartment" in the claim indicated that the recognition means of the claimed system were able to determine whether a package was actually deposited inside the compartment.

In contrast to that, the system of D1 used a sensor to determine when the door of the compartment was opened and closed in order to determine whether there was anything deposited inside the compartment. This determination, however, was based only on an assumption about the deposit of a package inside the compartment. It was possible for example that a user opened and closed the door of the compartment without depositing anything inside.

The determination by the recognition means of the claimed system reflected the "real state of the world", since they recognised (were "adapted to recognise") that there was indeed a package inside the compartment and did not only make an assumption based on the opening and closing of the compartment door. It could thus not be reasonably be said that D1 disclosed the claimed recognition means.

2.3.2 The board does not find this argument persuasive. The claim wording does not provide any information about the recognition means other than that they are provided in each compartment. The same is valid for the door sensors in D1 (see e.g. paragraphs [0183]-[0184]).

Moreover, according to paragraph [0019] of the published application, the recognition means is not particularly limited to any specific component or software configuration. As described in this paragraph, the recognition means can be a sensor adapted to detect the opening of the door to the compartment, or the actuation of actuation means controlling the door. The recognition means may alternatively include a light sensor located in the compartment such that, when a light beam is broken by the presence of a package, the recognition means detects that a package is deposited therein. The recognition means can also be the user interface of the post box terminal.

2.3.3 The appellant argued that the expression "adapted to recognise if a package is deposited in a compartment" in the claim implied a limitation to recognising means that were actually sensing the package inside the compartment, i.e. to the light beam sensor. However, as the above-cited paragraph describes, the application does not limit the recognition means to any specific implementation. On the contrary, it is also envisaged that the recognition means can be a compartment door sensor as in the system of D1.

The board's view is therefore that the claim wording does not support a limitation of the recognition means to a specific implementation and considers that this feature is disclosed in D1.

2.4 The board agrees with the appellant that there is a difference between the claimed system and the system of D1 in that the claimed system receives requests for the reservation of a specific time (period), i.e. with a start and end time, or more precisely at least with an end time. This feature is not explicitly defined in claim 10 of the main request, but the definition that the system compares the current time with a reservation time implies that at least an end time of the reservation must be specified (see also paragraph [0077] of the application).

2.4.1 In D1 there is no (end) time associated with the request for a reservation. The concept of the system in D1 is different from the one of the present application, since the system of D1 bills the user for the time a compartment (locker) was reserved. The system logs the start time of the reservation and the time when the user frees the compartment, and calculates a fee to be billed to the user (see paragraphs [0186] to [0199]). In the board's view, there is no interest in the system of D1 to limit the reservations for a specific time (period) since the user pays for the time of the reservation.

In contrast to that, the claimed system does not bill the users for their reservation(s) and thus it sets time limits to the reservation of the compartments so that users reserve them only for as long as they need them. The system monitors the time and when the reservation time (period) ends, it renders the compartments available for reservation (unless a package is detected inside the compartment).

2.4.2 In the board's opinion the claimed system differs from D1 only in the way the compartments and their reservations are managed. This is an administrative/business scheme defined by the manager of the post (locker) system.

Part of this management scheme is also the feature of not rendering a compartment available if it is detected that there is a package in it, even if the reservation time has ended. To the board this is only an aspect of the administrative scheme under which the compartments in the system of claim 10 are managed and does not relate to any technical problem.

2.4.3 The system of D1 comprises means for logging the start and end time of a reservation/occupation of a compartment (paragraphs [0193] and [0194]), as well as means for determining whether there is a package inside a compartment. The system of D1 comprises thus all the technical means necessary to implement the management/administration scheme underlying the claimed invention, if the owner/manager wished to change the administrative scheme of managing the compartments.

2.5 The appellant argued that the distinguishing features of the claimed system solved the technical problem of how to overcome the inefficiency of the post system described by D1 (see for example the statement of the grounds of appeal, paragraph [38]).

The board considers this problem to be defined vaguely in the present context, as there is no indication of why the system of D1 is inefficient and which features of the claimed system might render it more efficient than the system of D1. The board thus does not accept this formulation of the technical problem.

2.5.1 As stated previously, the board considers that the difference between the claimed system and the system of D1 lies in the way they are managed. The identified distinguishing features represent thus an implementation of an administrative scheme for managing the compartments.

According to established case law and practice, the board considers that the administrative scheme of managing the compartments will be provided to the skilled person as non-technical constraints for implementation. Any technical problem present would relate merely to how these non-technical constraints are (to be) implemented.

As stated previously, the system of D1 comprises all the necessary technical means for implementing the administrative (business) scheme underlying the claimed system. The board's view is therefore that such an implementation would be obvious to the skilled person using common general knowledge.

2.6 In conclusion, the board agrees with the examining division that the subject-matter of claim 10 of the main request does not involve an inventive step (Articles 52(1) and 56 EPC). The same applies for the subject-matter of claim 1 which defines the corresponding method.