T 1027/06 (Reward programs / MARITZ) of 16.4.2009

Summary of Facts and Submissions

I. European patent application number 01 304 126.4 (publication number EP-A-1 158 437) claimed priority from 2000 and 2001 for a method and system for electronically selecting, modifying, and operating a motivation or recognition program.

II. The application was refused by the examining division in oral proceedings held on 4 November 2005. According to the reasons of the decision given in writing by letter posted on 8 December 2005, the claimed invention was essentially an obvious computer implementation of a business model and did thus not meet the requirements of inventive step. The implementation did not involve more than standard network and web technologies, normal multitasking and multithreading methods for the concurrent execution of programs, and the use of conventional client-server architectures. As examples for such standard architectures, the examining division cited prior art documents WO-A-96/29668 (D1) and US-A-5 970 475 (D2).

III. The appellant (applicant) lodged an appeal against the decision on 7 February 2006. On 12 April 2006, the appellant filed a statement setting out the grounds of appeal, including two sets of amended claims headed MAIN REQUEST and AUXILIARY REQUEST, respectively.

IV. Together with summons to oral proceedings requested by the appellant as an auxiliary measure, the Board issued a preliminary opinion that expressed doubts about the patentability of the claimed invention on grounds of inventive step. The Board cited document D3: Ali Arsanjani, "Service Provider: A Domain Pattern and its Business Framework Implementation", Proceedings of Pattern Languages of Programs (PLoP'99), Monticello, Illinois, USA, August 15-18, 1999, pages 1 to 24 as an example of the prior art in the development and implementation of business applications and the services provided to customers in respect to the modification and customisation of such business applications.

V. By letter dated 12 March 2009, the appellant filed a further set of amended claims headed AUXILIARY REQUEST 2.

VI. At the oral proceedings held on 16 April 2009, the Board discussed the matter with the appellant. After deliberation, the Board announced its decision on the appeal.

The appellant requested at the oral proceedings that the decision under appeal be aside and a patent be granted on the basis of claims 1 to 35 according to the main request or the first auxiliary request, both requests filed with letter dated 13 April 2006 or alternatively on the basis of claims 1 to 11 filed with letter dated 12 March 2009.

The respective claims 1 of these requests have the following wording:

Main request:

"1. A supplier-provided method for allowing multiple customers of the supplier to each create an individual, modified motivation or recognition program having participants, each program permitting the participants to earn awards on the basis of the participants' performance, each said program of a particular customer operating according to preferences selected by the particular customer, said method comprising the steps of:

allowing each customer to electronically access via a customer processor (104) a browsable catalog (110) of predefined programs stored in a supplier storage device (112);

allowing each customer to electronically select (202) via the customer processor one of the predefined programs stored in the supplier storage device;

allowing each customer to electronically modify (202) via the customer processor at least one component of the selected predefined program stored in the supplier storage device, wherein the modification of a component includes at least one of the following: selecting a rules structure, defining a program duration, selecting an award type, defining the number of participants, determining the value of an award, and modifying a communications campaign theme and components;

allowing each customer to electronically store via the customer processor the modified program in the supplier storage device for access by such customer;

allowing each customer to operate (208) the modified program; and

providing each customer's participants with access via a participant processor (106) and via a program processor of the supplier to the modified program stored in the supplier storage device, wherein the program processor (108) loads an image of code of the stored modified program and which is non-executable outside of the program processor into a local memory area of the program processor for execution by an image of the operating software of the program processor."

First auxiliary request:

" 1. A supplier-provided method for allowing multiple customers of the supplier to each create an individual, modified motivation or recognition program having participants, each said program permitting the participants to earn awards on the basis of the participants' performance, each said program of a particular customer operating according to preferences selected by the particular customer, said method comprising the steps of:

allowing each customer to electronically access via a customer processor (104) a browsable catalog (110) of predefined programs stored in a supplier storage device (112);

allowing each customer to electronically select (202) via the customer processor one of the predefined programs stored in the supplier storage device;

allowing each customer to electronically modify (202) via the customer processor at least one component of the selected predefined program stored in the supplier storage device, and so as to allow customisation of the selected predefined program through the modification and set-up of the program;

allowing each customer to electronically store via the customer processor the modified program in the supplier storage device for access by such customer;

allowing each customer to operate (208) the modified program; and

providing each customer's participants with access via a participant processor (106) and via a program processor of the supplier to the modified program stored in the supplier storage device, wherein the program processor (108) loads an image of code of the stored modified program and which is non-executable outside of the program processor into a local memory area of the program processor for execution by an image of the operating software of the program process [sic!]."

Second auxiliary request:

"1. A method comprising:

allowing multiple customers to each create an individual, modified motivation or recognition program having participants, said programs of said multiple customers supplied by a program supplier, each said program permitting the participants to access their program via a participant processor and to earn awards through the program in which they participate on the basis of the participants' performance, each said program of a particular customer operating according to preferences selected by the particular customer;

allowing a first customer via a first customer processor (104) and allowing a second customer via a second customer processor (104) to each electronically access a browsable catalog (110) of predefined programs stored in a storage device (112) connected to the program processor, said storage device and said program processor being remote from said customer processors and remote from said participant processors, wherein the first customer´s access and program is independent of the second customer´s access and program;

allowing the first customer and the second customer to each electronically select (202) one of the predefined programs stored in the storage device via their customer processor, wherein the first customer´s selection is independent of the second customer´s selection;

allowing the first customer and the second customer to each electronically modify (202) their selected predefined program via their customer processor, wherein the first customer's modifications are independent of the second customer's modifications;

allowing the first customer to electronically store the first modified program in the storage device for access by the first customer via the first customer processor;

allowing the second customer to electronically store the second modified program in the storage device for access by the second customer via the second customer processor;

allowing the first customer to operate (208) the first modified program via the first customer processor;

allowing the second customer to operate (208) the second modified program via the second customer processor, wherein the operation of the first modified program is independent of the second modified program; and

providing the first customer's participants with access via their participant processor to the first modified program stored in the storage device, said first modified program executed by the program processor,

permitting the second customer's participants with access via their participant processor (106) to the second modified program stored in the storage device, said second modified program executed by the program processor wherein the execution by the program processor of the second modified program is independent of the execution by the program processor of the first modified program, and wherein access by the first customer's participants to the first modified program is independent of access by the second customer's participants to the second modified program."

VII. The arguments advanced by the appellant may be summarised as follows:

The prior art in the field of motivation and recognition programs, as disclosed for example in document D1, offered only a relatively inflexible and restrictive way how the customer could shape and operate such programs. The present invention provided a novel and inventive tool for electronically creating and operating award programs in an efficient, reliable, and secure manner.

The invention clearly involved technical means and processes, like the various processors and storage means as well as an operating software and business logic for executing the program code locally in the program processor in such a manner that the program code was not executable outside of the program processor. Although some aspects of the invention, like the selection of an award type or the definition of the number of participants seemed, on the face of it, to be rooted in a business method, they all interacted strongly with the technical features of the invention, providing the flexibility, efficiency, reliability and security the invention wanted to achieve in customising and operating award programs.

Taking account of this strong interaction, it would be clear that the non-technical aspects could and should not be ignored in assessing inventive step according to the case law as set out in the decision DUNS LICENSING ASSOCIATES (T 154/04 - Estimating sales activity / DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46) for example.

In answering questions raised by the Board about the auxiliary requests and the meaning of some of the claim definitions, the appellant explained at the oral proceedings that the amendments submitted with the auxiliary requests should clarify the inventive concept of the invention but there was no intention to make any substantial changes. In particular, the definitions of "independent" operation, execution, and access in claim 1 of the second auxiliary request were only a clarification that the reward programs could be created, modified, operated, and accessed individually for each, and independently from any other, customer and participant.

The appellant also explained that the term "non-executable" was to be construed in the light of the description as published, column 9, line 17 ff., i.e. the term "non-executable" meant that the programs remained local to the program processor and were not distributed to the customer as standalone programs for example as in the prior art.

Reasons for the Decision

1. The appeal although admissible is not allowable since on the basis of the present requests the requirements of inventive step as set out in Articles 52 (1) EPC and 56 EPC 1973 are not met.

2. The respective claims 1 of the present requests define a method for allowing customers to create and operate an individual motivation or recognition program. As pointed out in the description at column 1 paragraph 0002 ff., such motivation and recognition programs provided companies or resellers with a method for attracting, retaining, rewarding, and recognising employees, members, volunteers, contractors, distribution-channel personal, and consumers (called "participants"). The programs were available to customers as either standard off-the-shell programs, or as customised programs to suit the particular needs of a business.

For example, the enterprise Maritz Inc. provided such programs for customers off-line by conversing with the customer and then designing, implementing, and operating a program for that customer based on the expressed needs of the customer. For the customer who preferred a do-it-yourself approach, some systems offered software that run on a personal computer and allowed the customer to design, set up, and/or operate a program according to customer-selected preferences.

However, there was a need for a system which allowed customers, via a customer processor connected to a global computer network, to select a program from a plurality of predefined programs and to modify and operate the selected, predefined program.

3. In fact, "motivation and recognition programs" are common instruments in personnel management and marketing for fostering interests and raising motivation within a target group of people, e.g. employees, customers, etc, by rewarding desired behaviour in the target group in the framework of a dedicated incentive scheme or reward program. Offering, as "(program) supplier" like Maritz Inc., the set-up and execution of customised motivation and recognition programs as a service to its customers on the basis of remuneration is apparently part of a business model. The above-cited passages make clear that the invention is directed to automating such a business model and its processes using a "global computer network", essentially the Internet and World Wide Web (see e.g. description, col.1, para. 0004, col. 7 f., para. 0030, col. 9, para. 0034, and col. 20, para. 0076).

4. As explained in DUNS LICENSING ASSOCIATES (supra), point 15 f. of the Reasons for the Decision, the non-technical aspects of an invention to the extent that they do not interact with technical features to produce a technical effect should not be given any weight in establishing novelty or inventive step even if such aspects embody novel and innovative concepts.

5. In the present case, such non-technical aspects result from the business related nature of motivation and recognition programs and certainly from the specific business model of selling as a service provider individually set up reward programs to customers. In fact, the present claims refer to an important extent to business processes involved in such a business model. These non-technical aspects underlying the claim definitions can be summarised as follows, borrowing wording from the claims (numbering added for convenience of reference):

A method provided by the program supplier and comprising the following steps:

(1) for each of the multiple customers of the supplier an individual, modified motivation or recognition program having participants is created, each said program permitting the participants to earn awards on the basis of the participants´ performance, each said program of a particular customer operating according to preferences selected by the particular customer,

(2) each customer accesses a catalogue of predefined programs;

(3) each customer selects one of the predefined programs;

(4) each customer modifies at least one component of the selected predefined program so as to allow customisation of the selected predefined program through the modification and set-up of the program,

(5) wherein the modification of a component includes at least one of the following: selecting a rules structure, defining a program duration, selecting an award type, defining the number of participants, determining the value of an award, and modifying a communications campaign theme and components;

(6) each customer accesses and operates the modified program; and

(7) each customer´s participant has access to the modified program.

6. The Board notes that the second auxiliary request words the claims differently from the other requests by distinguishing activities of a first and a second customer (participant); there is however no change in substance implied as confirmed by the appellant in the oral proceedings (see point VII above).

7. The method steps (1) to (7) above have the character of business processes, the execution of which does actually not require the use of any specific technical means; conversing with the customers (and participants of the reward program) would be sufficient as indicated in the description, col. 1, lines 27-31 (see also col. 7, lines 54-58).

8. Technical aspects of the invention only surface when considering the object of the invention to integrate the business model into a globally accessible information system (see point 3 above). The features of the claimed invention (all requests) related to the technical implementation of such a information system are as follows (numbering added for convenience of reference):

(a) (implicitly) implementing "motivation and recognition programs" in software;

(b) providing an information system, essentially a client/server system comprising at the server ("supplier") site a database ("supplier storage device") and a server processor ("program processor") running an operating software and a business logic layer for executing the programs locally under the control of the supplier and connected via the Internet and World Wide Web (see point 3 above) to client processors ("customer processors", "participant processors") remotely located at the customer´s and participant´s sites (see description, col. 9; paragraph 0032 f.);

(c) storing the predefined programs in the supplier storage device;

(d) loading an image of code of the stored modified program into a local memory area of the program processor for executing the program by an image of the operating software of the program processor;

(e) executing the business processes (1) to (7) electronically, i.e. essentially by means of the said information system.

9. The feature that an image of code of the stored modified program "is non-executable outside of the program processor" (claims 1 of the main request and first auxiliary request) sounds like a technical definition but actually lacks any clear technical meaning. In the light of paragraph 0033 of the description (see also point VII above) this feature should be understood to mean simply that the program code is kept under lock by the program supplier, i.e. it is not made available to the customers or participants, for example it is not sold as a standalone program to the customers. The feature, therefore, phrases rather a general business constraint or requirement than a technical feature of the claimed invention and can thus be excluded from further consideration.

10. Features (a) to (e) all have to do with the implementation of a specific business model including business processes (1) to (7) on a globally accessible information system. The claimed implementation, however, is obvious. Implementing business processes in software as business applications (feature A) and using a Web-based client/server system for running such applications (feature B) are notorious facets of doing e-business. This includes also the implementation of business processes in a business logic layer, an example of which is disclosed in document D3, section 2 and in particular subsection 2.3 at p. 3 of the document. The same holds for feature D: it applies to routine procedures used in concurrent computing as correctly stated in the decision under appeal. Finally, feature E is a direct consequence of implementing and executing the business processes (1) to (7) on an information system and do thus not imply any inventive activities, at least not on the conceptual level at which the invention is claimed.

11. Contrary to the appellant´s submissions, the Board judges that the business processes (1) to (7) if implemented as claimed would not interact with the information system in a manner that results necessarily in a technical effect, contributing to the technical solution of a technical problem. The circumstance that these processes are executed automatically on a information system does not imply that they form part of a particular solution of a technical problem. In the context of the invention, they rather play the role of the specification of business requirements to be met in the technical implementation of the information system. Not providing a technical contribution to the prior art, however, means that such processes cannot claim relevance for the assessment of inventive step.

12. Therefore, the claimed invention is to be considered obvious in the light of the prior art in information technologies and does thus not meet the requirements of inventive step. This applies to all requests. Accordingly, on the basis of the present requests the appeal is not allowable.

ORDER

For these reasons it is decided that:

The appeal is dismissed.