T 1931/06 (Printing control apparatus/CANON) 10-12-2010

I. This is an appeal against the decision of the examining division to refuse the European patent application No. 98 308 585.3 published as No. 0 911 723. The decision was announced in oral proceedings held on 31 May 2006 and written reasons were dispatched on 6 July 2006.

II. The decision under appeal was based on a main request comprising claims 1-17 as filed with a letter dated 28 April 2004 and an auxiliary request comprising claims 1-6 filed during oral proceedings before the examining division.

III. According to said decision, the application did not meet the requirements of Article 84 EPC because the independent claims of the main request were not clear. The decision further stated that claim 1 of the auxiliary request filed during oral proceedings comprised amendments for which the applicant had not indicated a basis in the application as filed. Claim 1 of the auxiliary request was thus found to comprise subject-matter extending beyond the content of the application as filed contrary to Article 123(2) EPC.

IV. The minutes of the oral proceedings before the department of first instance record that during said oral proceedings the examining division proposed a version of claim 1 with amendments based on claim 3 of the then main request and on p.58 l.2-8 of the description as filed. The examining division considered that these amendments would overcome its previously raised objections against claim 1 of the main request under Article 84 EPC (cf. minutes: item 6, p.2-3) but expressed the opinion that the document D1 (EP 0 653 700 A) which was introduced into the proceedings during a telephone consultation on 22 May 2005 appeared to be prejudicial to the inventive step of such an amended claim (cf. minutes: item 8, p.3-4). The examining division also indicated that it considered that D1 would be relevant to the inventive step of claim 1 of the auxiliary request filed during the oral proceedings should the objection under Article 123(2) EPC raised against said claim be overcome.

V. Notice of appeal was received on 7 September 2006 and the appeal fee was paid on the same date. A written statement setting out the grounds of appeal was received on 15 November 2006 along with an amended set of claims 1 to 15 to replace all of the existing claims. A precautionary request for oral proceedings was also submitted with said written statement.

VI. In a communication accompanying a summons to oral proceedings to be held on 8 December 2010 the board gave its preliminary opinion that the applicant's request was not allowable.

In particular, objections were raised against independent apparatus claim 1 due to a lack of clarity and support by the description (Article 84 EPC). The board was of the opinion that the correspondence between the types of data referred to in [0073] and [0141] of the published application, and the terms used in said claim was not clear. The specification in the claim of input data "transmitted via one logic [sic] channel" and a claim feature termed "process means" appeared to lack support by the description. Moreover, the apparent lack of any basis in the application as filed for the aforementioned specification and claim feature also appeared to infringe Article 123(2) EPC. Corresponding objections were raised against the independent method claim 8.

VII. In its communication, the board also referred to what appeared to be an inconsistency between the summary characterisation of the invention in [0186] of the description and the more detailed disclosure of [0165] to [0184] due to uncertainty concerning the scope of the term "printing management data". A further apparent inconsistency was noted between the reference signs used in [0157] to [0164] of the description and those used in Fig. 18. The board expressed the preliminary opinion that these apparent inconsistencies rendered the disclosure unclear and raised the question as to whether the application complied with the requirements of Article 83 EPC.

VIII. The board further advised the appellant that it was inclined to remit the case to the department of first instance for further prosecution in the case that the objections it had raised were overcome.

IX. With a letter dated 6 October 2010, the appellant's representative requested a postponement of the oral proceedings scheduled for 8 December 2010 in view of his being impeded from travelling on that date and the unavailability of a sufficiently experienced substitute to represent the appellant in appeal proceedings. The board decided to allow the request for postponement and the proceedings were rescheduled to take place on 10 December 2010.

X. With a letter dated 10 November 2010, the appellant filed a new main request and an auxiliary request to replace the request filed with the statement setting out the grounds of appeal.

XI. The appellant submitted that claim 1 of the new main request was based on claim 1 as originally filed and incorporated amendments intended to address the objections raised in the board's communication. A table indicating the basis in the application as filed for the amendments to claim 1 was also provided.

XII. With respect to the objections under Article 84 EPC, the appellant submitted, inter alia, that the "printing management data" and "print data" specified in claim 1 corresponded respectively to the "data for managing a print job" and the "document data to be printed" as referred to in the description (cf. [0073], [0141]). According to the appellant, the term "data for printing control" used in the aforementioned passages of the description denoted a further type of data which corresponded to the "job control commands"/"job control data" referred to elsewhere in the description (e.g. [0166], [0192]). This further type of data was designated in the claims by the term "job control data", e.g. in dependent claim 5.

XIII. The appellant further submitted that in view of the long time that the case had been pending, and the fact that the claims of the main request were much closer now to the claims as originally filed which were searched, a remittal to the first instance could be avoided and that this would be fairer to the appellant.

XIV. With a letter dated 3 December 2010, the authorised representative notified the board that he would represent the appellant at the scheduled oral proceedings and that an accompanying person from Canon Europe Ltd. would likewise attend the proceedings. A reformatted version of the table indicating the basis in the application as filed for the amendments to claim 1 was also submitted with said letter.

XV. During oral proceedings held as scheduled on 10 December 2010 the appellant filed a new request to replace the requests on file.

The appellant further submitted that the inconsistency between the reference signs used in [0157] to [0164] of the published application and those used in Fig. 18 which had been noted in the board's communication had in fact been resolved by the amendments to pages 43-46 of the description as filed with the letter dated 28 April 2006.

XVI. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims 1-35 as filed during oral proceedings before the board.

The further documents on which the appeal is based are as follows:

Description, pages:

3-10, 17, 19, 21-24, 26-36, 38-42, 47, 49-53, 55, 56, 58, 60-66, 68-70, 72, 73, 75, 77 as originally filed;

1, 11, 16 as filed with the letter of 28 July 2004;

2, 18, 20, 25, 37, 43-46, 48, 54, 57, 59, 67, 71, 74, 76, 78, 79 as filed with the letter of 28 April 2006;

Drawings, sheets: 1/23-23/23 as originally filed.

XVII. Claim 1 of the appellant's request reads as follows:

"A printing control apparatus adapted to be connected to a client (109) for analyzing a print job (301) received from the client in units of job packets and printing the print job, the print job (301) including printing management data (303, 305, 309) for managing the print job and also including print data (307) representing document data to be actually printed, and the printing management data of the print job being included in printing-management—data job packets and the print data of the print job being included in print-data job packets so that the printing management data and print data are set separately from one another in the job packets of the print job, and each said job packet having a packet header, the packet header (302, 304, 308) of each printing—management- data job packet including identification information for identifying the printing management data (303, 305, 309) included in the job packet concerned, and the packet header (306) of each print—data job packet including

identification information for identifying the print data (307) included in the job packet concerned;

the printing control apparatus (110) comprising:

input means (101) for receiving the job packets of such a print job (301);

analyzing means (1510) for analyzing the identification information included in the packet header (302, 304, 306, 308) of each input printing-data-management job packet and print-data job packet, the analyzing means being operable, when a result of the analysis of the identification information is that the received job packet is such a printing-management—data job packet, to analyse the printing management data (303, 305, 309) included in the received job packet and to store in management information storage means (1509) of the printing control apparatus printing management data (401-406) for controlling the print job on the basis of a result of the analysis of the printing management data included in the received job packet, and the analyzing means being further operable, when the analysis result of the identification information is that the received job packet is such a print—data job packet, to store the print data in a reception buffer (1511) without analysis of the print data, so that received print jobs whose said print data has not yet been analysed are controllable based on the printing

management data (401—406) stored in said management information storage means (1509)."

Claim 18 of the request is a further independent claim directed towards a corresponding method of controlling a printing apparatus which is connected to a client.

Claim 34 of the request is directed towards a storage medium storing a computer-readable printing control program which causes a printing control apparatus to carry out all of the steps of the method of any one of claims 18 to 33.

Claim 35 of the request is an independent system claim which reads as follows:

"A printing control system including a host computer (109) and also including the printing control apparatus (109) [sic] of any one of claims 1 to 17, said host computer comprising:

generating means (1502) for generating a print job; and

a job packet generating unit (1507) for generating job packets of the print job, the generated job packets comprising said printing-management—data job packets, each including printing management data and identification information for identifying the printing management data, and the generated job packets also comprising said print—data job packets, each including print data and identification information for identifying the print data."

XVIII. At the end of the oral proceedings the chair announced the board's decision.