T 1932/06 (Internet billing method/BCE EMERGIS TECHNOLOGIES) of 16.9.2009

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse European patent application No. 98943241.4.

II. The reason for the refusal was that the subject-matter of the then claim 1 did not involve an inventive step.

III. With the statement setting out the grounds of appeal dated 30 November 2006, the appellant requested that the decision be set aside and a patent be granted based on claims 1-48 filed with the same letter.

IV. Claim 1 reads:

"An automated electronic invoicing and payment instruction system for providing remote customer review of automated billing from an invoicer (10), said system comprising:

(a) invoice presentation electronics (60) adapted to present customer billing data for customer review and to request payment instructions relating to automated billing to said customer (20); and

(b) a remote electronic customer authorization interface (84) adapted to: (i) receive the customer billing data for customer review and the request for payment instructions from said invoice presentation electronics (60); (ii) provide the customer billing data for customer review and the request for payment instructions to the customer (20); and (iii) receive customer payment instructions from the customer (20) in response to the request for payment instructions;

characterised in that:-

said remote electronic customer authorisation interface (84) comprises a customer accessible internet website which manages the data, requests and instructions of items (b) (i)-(iii), and an internet browser enabling customer access to said website and for transmitting, via said website, the customer payment instructions from the customer to said invoice presentation electronics (60), said payment instructions including at least a customer invoice account number and an associated customer payment account".

V. In a communication dated 7 April 2009 the Board issued a summons to oral proceedings and set out its provisional opinion on the appeal, which was that the subject-matter of claim 1 did not involve an inventive step. The technical means in claim 1 consisted of the electronics necessary for transmitting a message from one party to another and back again via an Internet site. The description referred to these means as if they were well known at the time of priority, which the Board assumed was the case. The messages contained "billing data", "requests for payment instructions", and "payment instructions" including a "customer invoice account number" and a "customer payment account". The data was for information only, ie had no direct technical function. The entire information exchange could in principle instead have been performed by telephone (cf the description p. 10, l. 18-24). This led to the question what technical problem the invention solved. The examining division (considering a more general version of claim 1) saw the problem as how electronically to "present" and "get" certain pieces of information (cf the decision under appeal, point 3.1), ie how to transmit data. It appeared to the Board that the present claim 1 solved the same problem. Since the technical features were apparently all known and were being used for their normal purpose, the skilled person would have been able to arrive at the invention starting from the basic structure of an electronic communication system (transmitter - channel - receiver). The appellant had argued (grounds of appeal, point 10) that the characterising features of claim 1 were not part of the general knowledge in the field of automated electronic invoicing and payment. On the other hand, since only the information content of the messages exchanged revealed that the communication related to invoicing, the relevant technical area was electronic communication in general. Furthermore, although the appellant saw the problem as "eliminating the need for specialist user software" (grounds of appeal, points 4 and 10) it was not clear to the Board what prior art was referred to, or why specialist user software should represent close prior art.

VI. By letter dated 14 September 2009 the appellant, in response to an enquiry by the Board, confirmed that it would not be represented at the oral proceedings. It was requested that a decision be issued on the basis of the state of the file at the date of the oral proceedings.

VII. Oral proceedings were held in the appellant's absence on 16 September 2009. The Board verified that the appellant had requested in writing that the decision under appeal be set aside and a patent be granted on the basis of claims 1-48 filed together with the grounds of appeal (cf point III above).

VIII. At the end of the oral proceedings the Board announced its decision.

Reasons for the Decision

1. Inventive step

In its communication, the Board raised objections as to the inventive step of the subject-matter of claim 1 (cf point V above). The appellant made no substantive reply but requested a decision on the basis of the state of the file. The objections being maintained, claim 1 is not allowable for the reasons set out in the Board's communication (Article 56 EPC 1973).

2. Added subject-matter

The Board moreover notes, without deciding the issue, that claim 1 in its present form would contravene Article 123(2) EPC. Claim 1 states that the remote electronic customer authorization interface (84) comprises a website. The original application, however, mentions that "the customer accessible site may reside in an Internet website provided by invoicer for receiving the billing data and payment instructions from the customer. The website will be accessible from the customer electronic authorization interface 84" (p. 10, l. 10-15; italics added). Thus, the website is not comprised in the remote electronic customer authorization interface.

ORDER

For these reasons it is decided that:

The appeal is dismissed.