T 0387/04 () of 17.12.2007

Summary of Facts and Submissions

I. This appeal is against the refusal of application 99 914 837 on the ground that the claimed subject matter was not an invention within the meaning of Article 52(1) EPC.

Prior art documents cited in the examination procedure included

D1: WO 96 11 453 A;

D2: WO 97 19 568 A and

D3: WO 97 35 283 A.

II. In response to communications of the board, the appellant applicant filed amended application documents with letters dated 5 September 2007 and 14 December 2007. The appellant applicant requests that the decision under appeal be set aside and a patent granted on the basis of the following documents:

Claims 1 to 9 filed with the letter dated 14 December 2007

Description

pages 1, 2 and 4 to 11 as originally filed

page 3AA filed with the letter dated 14 December 2007

page 3B filed with the letter dated 5 September 2007

Drawings Sheet 1/1 as originally filed

III. Claim 1 reads as follows (board's emphasis showing the differences with respect to claim 1 which formed the basis for the decision under appeal):

"1. A parking system in which a mobile telephone is used to commence and terminate a parking period and in which a user sends at least a user specific reference to a receiving computer at the commencement and termination of a parking period of a vehicle via a mobile telephone system, where at least said user specific reference is caused to be stored in a database (4) belonging to the computer (5) of the parking company and where the user specific reference is caused to be transmitted via the telephone system in question to the database when commencing the parking, characterised in,

that when a user shall connect himself/herself to the parking system for the first time in order to be able to commence and terminate parking of his/her vehicle and to be able to validate payment via a cash card with the aid of a telephone (6), either a pay meter (1) having a keyboard, a cash card terminal or a cash card reader is caused to read mechanically a cash card owned by the user and accepted by the parking system as a means of payment and is caused to enter the user specific reference via said keyboard, and in which read cash card data is stored in said database (4) and tied to said data, i.e. said user specific reference; in that the user specific reference is transmitted via the telephone system in question to the database when commencing the parking in order to validate billing on the said cash card and in that the computer of the parking company (5) is caused to calculate the fee for every parking period and thereafter is caused to generate a billing order to the respective cash card company."

Reasons for the Decision

1. The appeal is admissible.

2. Amendments

Claim 1 is based on claim 1 as filed and page 4, lines 5 to 23 of the application as filed. Dependent claims 2 to 9 correspond to claims 2 to 9 as filed.

Therefore, in the board's judgement, the claims as amended comply with Article 123(2) EPC.

3. "Invention" within the meaning of Article 52(1) to (3) EPC

3.1 In T 931/95 (OJ EPO 2001, 441) it was held that an apparatus constituting a physical entity or concrete product, suitable for performing or supporting an economic activity, is to be considered an invention within the meaning of Article 52(1) EPC (reasons 5; see also T 258/03 (OJ EPO 2004, 575)).

3.2 In the present case the claims are directed to a parking system comprising apparatuses such as a computer and a cash card reader. Therefore on the view taken in those decisions the claimed subject matter in the present case would be said to define an invention within the meaning of Article 52(1) EPC.

3.3 In the decision under appeal, the examining division rejected the principles set out in T 931/95 as it appeared to confer technical character to a system claim by virtue of its mere formulation without regard to its substance. Instead the examining division referred to T 769/92 (OJ EPO 1995, 525) and examined whether the claimed system made a technical contribution to the state of the art in a field not excluded from patentability. Thereby it found that the claimed parking system specified the following technical elements: A computer and a database, a telephone system for making contact and transmit data, a cash card reader for transmitting data related to an account to be charged, and software in the computer for carrying out the billing activities. The examining division argued that since computers, databases and networks were as such commonplace, these technical features did not confer technical character on the claimed subject matter, as there was no technical contribution to the state of the art in a field not excluded from patentability.

This conclusion of the examining division was not well founded: although a computer with a database, a mobile telephone system, and a cash card reader were as individual integers notorious, it was not shown that the combination was old.

Thus, regardless of whether one follows the approach advocated in T 931/95 and T 258/03 or the "technical contribution" approach used in inter alia T 769/92, the question of technical character of claim 1 is, in the board's judgement, to be answered in the affirmative.

3.4 For the above reasons, the subject matter of claim 1 is to be regarded an invention within the meaning of Article 52(1) EPC.

4. Novelty and Inventive step

4.1 Document D1 which is the only prior art document cited in the decision under appeal discloses a parking system in which a mobile telephone is used for commencing and terminating a parking period (cf. abstract; Figures 1 and 2; page 3, line 17 to page 4, line 14). The user commences the parking period by contacting the service unit 3, 8 via his mobile telephone. A PIN number or user specific reference is used to validate billing to the user's account (page 3, lines 19 to 25; page 6, lines 6 to 19). In this process of commencing the parking period, user information such as subscriber code 9, vehicle registration number 10, starting time of parking 11, and the code of the car park 12 are transmitted from the mobile telephone to the service unit which registers the information (Figure 4; page 5, line 31 to page 6, line 5). After that the user has terminated the parking period by contacting the service unit a second time, the service unit calculates the resulting parking fee and either charges the parking fee to the user's mobile telephone account or charges the user on a separate bill (page 6, lines 20 to 34).

4.2 It is implicit from the disclosure of document D1 that the service unit employs a computer with a database for processing the information and calculating the parking fees for each user. A cash card reader on the other hand is not disclosed in document D1, since the billing system disclosed in document D1 does not foresee the use of cash cards as means of payment (page 6, lines 24 to 34).

4.3 The subject matter of claim 1 differs from that of document D1 in that when the user connects himself to the parking system for the first time, a pay meter having a keyboard is caused to read mechanically a cash card of the user and accepted by the parking company as a means of payment and is caused to enter the user specific reference via the keyboard, in that the user specific reference is transmitted via the telephone system to the database when commencing the parking in order to validate billing on the cash card, and in that the computer of the parking company generates a billing order to the user's cash card company after that the parking period is terminated.

In the system of document D1 on the other hand, the handling of the parking fees is either carried out by the telephone operator of the user's mobile telephone, in which case the parking fees are added to the telephone bill, or managed via a separate operator which bills the user separately. The system of document D1 thus works under the presumption that the user either is connected to a telephone operator which can collect parking fees for the parking company or that the user has been registered directly with the parking company (D1, page 5, lines 20 to 30; page 6, lines 24 to 34). Once registered with the system of document D1, the user only has to use his telephone when paying for parking.

4.4 Document D2 discloses a parking system in which a mobile telephone is used for commencing and terminating a parking period by sending short messages (SMS) to a parking database to which the user has been registered previously (see abstract; paragraph bridging pages 2 and 3). The user can be billed directly from the parking company or via the telephone bill (paragraph bridging pages 4 and 5).

In contrast to the parking system of claim 1, the parking system of document D2 does not disclose the possibility of having the user registering via a pay meter and using a cash card as means of payment.

4.5 Document D3 discloses a parking system comprising at least one pay meter BA1 having a keypad 2, 3 and a card reader 1 (see abstract). When commencing parking, the user enters the vehicle registration number on the keypad 3 and inserts a cash card into the card reader. The vehicle registration number and cash card number are stored in a central computer. Parking is terminated by inserting the cash card in any of the pay meters available on the parking premises (see page 6, line 6 to page 7, line 29).

In contrast to the parking system of claim 1, document D3 does not disclose the use of a mobile telephone for commencing and terminating parking.

4.6 Document D1 is considered the closest prior art as it relates to a parking system allowing users to commence and terminate the parking period with the aid of a mobile telephone.

4.7 The present application addresses the problem of allowing users who are new to the parking system to be able to have access to the service of commencing and terminating the parking period with the aid of a mobile telephone and being automatically billed for the parking period (see page 2, lines 2 to 8).

4.8 The objective technical problem thus relates to adapting the known parking system so that users can register with the parking system themselves ie join the club of mobile phone parkers on their first use of the parking system.

4.9 The claimed solution to this problem is based on the insight that the prospective user who wishes to register with the parking system would be overwhelmingly likely to have a cash card as well as a mobile phone and that the provision of a pay meter having a card reader and keyboard can provide the dual function of facilitating one-off cash card parkers and facilitating the instant registration of those who wish to join the club of mobile phone parkers: the cash card reader for authenticating the cash card as means of payment and for transmitting data relevant for conducting payment using the cash card; the keypad for entering user specific reference, such as the user's mobile telephone number or vehicle registration number, which ties the data collected from the cash card to the user. This user specific reference authenticates the user when contact is made to the parking company (D1, page 3, lines 21 to 31; page 5, line 31 to page 6, line 5; Figure 4), and therefore has to be determined upon registration.

4.10 Although document D3 discloses a pay meter having a keyboard and a card reader, this pay meter is a component of a parking system where the commencing and terminating of the parking period is effected by inserting the user's cash card into the pay meter (see item 4.5 above). A mere aggregative combination of the parking system of document D1 with that of document D3 would be conceivable; it would bring the benefit of catering for both conventional cash card parkers and mobile phone parkers. The realisation on the other hand, that the pay meter of document D3 on its own could be utilised to improve the parking system of document D1 requires in the board's judgement inventive skills as it involves a use of the pay meter which is different from that envisaged in document D3 resulting in a synergistic combination of the elements of D1 and D3.

4.11 For the above reasons, in the board's judgement, the subject matter of claim 1 involves an inventive step within the meaning of Article 56 EPC.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of the first instance with the order to grant a patent in the following version:

Claims 1 to 9 filed with the letter dated 14 December 2007

Description

pages 1, 2 and 4 to 11 as originally filed

page 3AA filed with the letter dated 14 December 2007

page 3B filed with the letter dated 5 September 2007

Drawings Sheet 1/1 as originally filed