T 0368/05 (Integrated account/CITIBANK) of 15.5.2007

Summary of Facts and Submissions

I. European patent application No. 96917993.6 (international publication No. WO-A-96/41287) claims priority from 1995 for an integrated financial system that allows the customer to open a single account and to access a range of financial services using a variety of access points.

II. At the end of oral proceedings dated 29 September 2004, the examining division refused the application for lack of inventive step, essentially considering the following claim filed during the oral proceedings:

"8. An integrated financial system of the type comprising a single integrated account (17) that includes at least a checking component, a savings component and a brokerage component, the system comprising means for opening the single integrated account (17) in one session comprising:

a computer system having a communication device and specially programmed to: collect salient data; assemble a personal profile from the salient data; build the single integrated customer account (17) that includes at least a checking component; a savings component and a brokerage component; receive a customer selection of at least one of the components of the single integrated account (17); perform a needs analysis based on information collected; recommend an account based on the needs analysis; present information concerning the selected component of the single integrated account (17) to the customer; and allows [sic!] data collected to flow to all other points where the data is required so that data need not be entered more than once."

The decision in writing was posted on 27 October 2004. According to the reasons of the decision, prior art document D1 (US-patent No. 5 220 501 published in 1993) disclosed an integrated financial system of the type comprising a single integrated account and means for opening the single integrated account in one session comprising a specially programmed computer system having a communication device. Data fields were linked such that data entered once could be reused. The claimed system was distinguished from the computer system of document D1 by functional features implementing the essentially business-related aspects and features of opening an account. The technical features of the implementation followed directly from the requirements specification concerning the common banking practice of opening an account and did not go beyond the concept of a mere automation of such a non-technical activity. The examining division concluded from decisions T 641/00 - Two identities/COMVIK (OJ EPO 2003,352) and T 172/03 - Order management/RICOH (not published in OJ EPO) that the claimed system did not meet the requirement of inventive step.

III. The applicant (appellant) lodged an appeal against the decision. The notice of appeal including a debit order in respect of the appeal fee was filed on 5 January 2005. The grounds of appeal were set out in a written statement dated and filed on 7 March 2005 and including amended claims. Amended claim 8 reads as follows:

"8. An integrated financial system of the type comprising a single integrated account (17) that includes at least a checking component, a savings component and a brokerage component having linked data fields, the system comprising means for opening the single integrated account (17) in one session comprising:

a computer system having a communication device and specially programmed to: collect salient data; assemble a personal profile from the salient data; build the single integrated customer account (17) that includes at least a checking component; a savings component and a brokerage component; receive a customer selection of at least one of the components of the single integrated account (17); perform a needs analysis based on information collected; recommend an account based on the needs analysis; present information concerning the selected component of the single integrated account (17) to the customer; and allow data collected to flow to all other data fields where the data is required so that data need not be entered more than once."

IV. In a communication annexed to the summons to oral proceedings requested by the appellant as an auxiliary measure, the Board expressed its doubts as to whether the claimed subject-matter was patentable. In particular, many of the essential claim features seemed to lack any clear technical meaning or were the result of non-technical considerations. Neither obscure features nor such non-technical aspects of an invention could be accepted as a valid basis for novelty and inventive step. Hence, the findings of the decision under appeal seemed to be basically correct.

V. The appellant reacted to this communication by a letter dated 16 April 2007. The request for oral proceedings was withdrawn and continuation of the procedure in writing was requested. Two further amended sets of claims were filed, of which respective claims 8 having the same wording read as follows:

"8. A financial system of the type comprising a single account (17) that includes at least a checking component, a savings component and a brokerage component having linked data fields, the system comprising means for opening the single account (17) in one session comprising:

a computer system having a communication device and specially programmed to:

- collect salient data;

- assemble a personal profile from the salient data;

- build the single customer account (17) that includes at least a checking component, a savings component and a brokerage component;

- receive a customer selection of at least one of the components of the single account (17);

- perform an analysis of a customer's desired account or account components based on information collected;

- recommend an account based on the analysis;

- present information concerning the selected component of the single account (17) to the customer; and

- allow data collected to flow to all other data fields where the data is required so that data need not be entered more than once."

VI. At oral proceedings taking place on 15 May 2007, the present decision was announced.

VII. The appellant did not appear at the oral proceedings. According to the submissions in the letter dated 16 April 2007, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 19 filed with letter dated 16 April 2007 (main request) or alternatively on the basis of said claims 1 to 19 and amended description page 16 filed with letter dated 16 April 2007 (auxiliary request I) or on the basis of claims 1 to 19 filed with letter dated 7 March 2005 (auxiliary request II) or on the basis of claims 1 to 19 filed with letter dated 7 March 2005 and said amended description page 16 (auxiliary request III).

VIII. The arguments submitted in writing may be summarised as follows:

(a) The invention was related to an integrated financial system comprising a single integrated customer account accessible via a user interface. The concept of a single integrated account was different from the prior art forcing customers to open up individual accounts and having accounts linked only on an ad-hoc basis. The components integrated into the single account shared resources and data structures and provided a consistent presentation to the user. The services provided could now be made available to the customer in a consistent manner at every access point. The technical process involved in opening an integrated account was defined by a semi-automatic configuration of the account components based on the respective customer profile that allowed for individual settings and adjustments to the recommended configuration.

(b) Document D1 cited as closest prior art had been interpreted by the examining division by completely detaching individual parts from the technical context of its overall disclosure. Document D1 did not relate to an integrated financial system, but disclosed a remote delivery system of retail banking services provided for accessing individual, unlinked and separate accounts. For different banks and different accounts, the interface presented to the customer was different. Dealing with existing account systems, the prior art was not about any internals of banking processes, but was rather concerned with the design of a remote delivery system that was completely independent of the bank's internal practice. It did not disclose any steps necessary to set up an integrated account having a plurality of different components. The prior art system did not process any application form and did not open or modify an existing account on the basis of collected information. It only allowed to fill out and mail application forms.

The present invention was a process for semi-automatically configuring the components of a single integrated customer account and not just an implementation of essentially business-related aspects. The claimed computer system was specially programmed to allow the data collected to flow to all other data fields where the data was required so that data did not have to be entered more than once. The single integrated account could be opened in one session. The claimed steps also allowed a semi-automatic configuration of the account components, based on customer data stored in a personal profile and a customer selection of recommended components. Using linked data fields avoided the redundant input and storing of data.

Document D1 allowed for bill paying and funds transfer. It did not allow to change or manipulate an existing bank account via the network. There was no disclosure of any interaction or integration between the individual separate accounts. Data could not flow from one account component to another account component or from one account to another account. Opening an integrated account was completely out of the scope of the prior art system. It depended on financial services provided by separate banks linked at a top level and made available to the user via access terminals.

(c) The present account opening process directly reflected specific technical features of the account to open, namely the account being an integration of different components requiring a configuration by the customer to suit his needs. The invention definitely solved a technical problem, namely to allow the components to share resources, data structures and to provide a consistent presentation, wherein the usability was enhanced. It provided an improved system for seamlessly accessing an integrated financial system. At every access point, all services were made available to the customer. The consistent interface simplified maintenance and improved usability of the system from a customer point of view.

Reasons for the Decision

1. The appeal although admissible is not allowable since neither one of the requests submitted to the Board for consideration overcomes the objection of lack of inventive step already raised in the decision under appeal against the then claim 8.

2. The subject matter of refused claim 8 has been maintained in all subsequent requests with minor amendments only. Respective claims 8 of the present requests differ only in variations of the definition: the "financial system" and the "single account" according to the main and first auxiliary requests are defined as "integrated financial system" and "single integrated account" in claim 8 of the second and third auxiliary requests and the expression "analysis of a customer's desired account or account components" is replaced by "needs analysis" in the second and third auxiliary requests. As these differences are not of substance, the issue of inventive step will be considered commonly for all claims 8 of the present requests.

3. The financial system defined in claims 8 (all requests) is obvious in the light of prior art document D1.

Document D1 discloses, in the terminology of the present application, a financial system ("financial services distribution system", see document D1, figure 1 with the corresponding passage at column 17) comprising a computer system ("central computer 52", see figure 1A) having a communication device ("remote terminal 54", see figures 1 and 1A).

The computer system is specially programmed to collect salient data ("customer database files", "vendor files", "transaction files", see column 20, line 66 ff.), and allows data collected to flow to all other data fields where the data is required so that data need not be entered more than once. These last features follow directly from the description how the "software control modules" provided within the "CPU 80" schedule, coordinate, and control the flow of data through the various system modules and update the database files (see document D1, column 20, line 11 to column 21, line 2).

Since accounts maintain various pieces of accounting and customer information the user's account files in document D1 have to comprise a corresponding number of data fields. The flow of data through the various software control modules from the input of data to the update of the databases hence requires that the respective data fields are "linked" in the one or other way.

4. The financial system of present claims 8 differs from the prior art only in that the single account is integrated, i.e. that it includes at least a checking component, a savings component and a brokerage component; moreover, the claimed system comprises means for opening the single integrated account in one session and the computer system is specially programmed to assemble a personal profile from the salient data, to build the single customer account that includes at least a checking component, a savings component and a brokerage component, to receive a customer selection of at least one of the components of the single account, to perform an analysis of a customer's desired account or account components based on information collected, to recommend an account based on the analysis, and to present information concerning the selected component of the single account to the customer.

5. The integration of various accounting components in a single account and the opening procedure for such an account are not part of a technical teaching since they are not related to the technical solution of any technical problem. They must thus be ignored in assessing inventive step (see, for example, decision T 154/04 - Estimating sales activity/DUNS LICENSING ASSOCIATES, to be published in OJ EPO, points 5 and 15 f.).

The present application actually features an improvement and innovation in banking and marketing of financial services rather than in a technical field. As explained in the WO-publication at page 1 ff., the invention related generally to financial transaction systems and in particular to an integrated full-service consumer banking system. The traditional marketing approach of banks trying to open and cross-selling new accounts, typically checking or saving accounts, and financial services to the customer was difficult because of the personal efforts involved on the part of the customer. Via opening the single integrated account the customer had access to a full range of financial services at once. The one-step opening process produced obvious efficiencies, but had even more significant advantages in terms of customer loyalty and reduction in customer attrition. Upon opening of the single account, the customer could enter into a comprehensive financial relationship, not just a single account, with their bank and had access immediately to a wide range of financial services. (see the WO-publication page 3, lines 16 to 23 and on page 11, lines 30 ff.).

These, however, are all aspects of banking and marketing, basically without any relationship to the technical implementation of the system. Activities in these fields are as such excluded from patentability under Article 52(2)(c) and (3) EPC as methods of doing business and are not capable of providing a technical contribution to the prior art. The regime of technical and thus patentable subject matter is entered only with the technical implementation on a computer system, i.e. in particular the use of computer and communication devices to provide the required data structures (single integrated account, data fields etc.) and the technical processes to open an account via remote communication devices.

6. This technical implementation as far as it is the subject of claims 8 does not go beyond the application of conventional information technology as disclosed for example in document D1 and does not require more than normal programming practice. Given the business definition of the accounting scheme and the opening process to be implemented, the skilled person, a technical professional, which should be thought in the present case as a team of programmers and system analysts rather than a single person, would consider it common practice in information technology to implement such structures and processes by means of a computer system.

The claimed invention, therefore, does not meet the requirement of inventive step as set out in Article 56 EPC.

7. The appellant argued that the present invention was about the technical processes and structures involved in opening an integrated account and solved the technical problem to allow the components to share resources and data and to provide a consistent presentation to the user (see point VII (c) above).

Technical processes and structures are indeed, explicitly or implicitly, subject of claims 8 and render the claimed financial system an invention within the meaning of Article 52(1) EPC. However, the technical content of these claims is essentially the teaching to use computer and communication means for implementing a particular banking concept, which is "as such" excluded from patentability. To the skilled person, the definition of the accounting structure and the business-related aspects of the opening process have the character of requirement specifications, as rightly pointed out by the examining division, which result from considerations outside the professional expertise of a technical expert and which thus leave no leeway for technical creativity.

8. Furthermore, the appellant disputed the relevance of document D1 (see point VII (b) above).

There may well be considerable differences between the prior art system of document D1 and the present invention as argued by the appellant. However, these differences result from the accounting structure and the business-related features of the opening process that have to be ignored in assessing inventive step. Regarding the technical implementation in so far as it is defined in claims 8, the differences do not go beyond common practice in designing and programming of an information system. The skilled person would regard the technical differences as obvious in the light of the prior art. Document D1 is hence a relevant piece of prior art which cannot be ignored in assessing inventive step.

ORDER

For these reasons it is decided that:

The appeal is dismissed.