T 1051/07 () of 24.9.2010

Summary of Facts and Submissions

I. This is an appeal against the refusal of application No. 02 021 882 for added subject-matter, Article 123(2) EPC, and for lack of inventive step, Article 56 EPC 1973, over document

D1: WO 00 31699 A.

II. The appellant applicant requested in the oral proceedings before the board that the decision under appeal be set aside and a patent granted on the basis of the following documents:

Claims: Claims 1 to 12 filed during the oral proceedings;

Description: Pages 1 to 7, 9 and 44 filed during the oral proceedings; Pages 8 and 10 to 43 as originally filed;

Drawings: Figures 1 to 32 as originally filed.

III. Claim 1 reads:

"A transaction system (100) for providing a financial transaction service to a subscriber,

said transaction system (100) comprising:

(a) a service control unit (120) which processes financial transaction services for the subscriber;

(b) a subscriber service interface (160) for providing a service menu to a mobile terminal of the subscriber through a communication network (200) and for outputting (S110; S210) a corresponding charging or realization service request message to said service control unit (120) to provide a corresponding financial transaction service when an item of said service menu is selected;

(c) a transaction service interface (150) connecting said service control unit (120) by means of a financial network (300) to at least one bank settlement system (410; 420) which upon a settlement request message transmitted by said service control unit (120) by means of said financial network (300) to said bank settlement system (410; 420) processes a first transfer of money between a bank account of the juridical body providing the financial transaction service opened in said bank settlement system (410; 420) and a bank account of the subscriber; and

(d) a database (110) for storing data processed in said service control unit (120), said database (110) including a service account of the juridical body providing the financial transaction service and a mobile account granted to a cellular phone number of a mobile terminal of the subscriber, wherein the service control unit (120) processes a second transfer of a corresponding amount of money between the service account of the juridical body providing the financial transaction service and the mobile account of the subscriber."

IV. Reference is also made to the following prior art document:

D2: WO 97 45814 A.

V. The appellant essentially argued as follows:

In document D1, the switch merely forwarded the transaction data sent by the mobile telephone of the user to the financial institution. Accordingly, there were no user accounts, or service accounts for that matter, in the switch, and accordingly no need for any charging (or realisation) operations on these accounts. Document D2 mentioned user accounts in a host computer, however failed to provide any details as to how money (telecash) was loaded on these accounts. Accordingly, the subject-matter of claim 1 involved an inventive step over the cited prior art.

Reasons for the Decision

1. The appeal is admissible.

2. Amendments

Claim 1 is based on claims 1 to 3 as originally filed and on the description as originally filed (page 14, line 25 to page 16, line 21).

Dependent claims 2 and 3 are based on the original description (page 10, line 24 to page 11, line 4).

Dependent claims 4 to 12 correspond to those originally filed.

The amendments, thus, comply with Article 123(2) EPC.

3. Novelty

3.1 Document D1

Document D1 discloses a system for conducting electronic transactions comprising the steps of: storing an encryption key in a memory means of a mobile telephone; selecting a financial transaction with the mobile telephone from a number of available financial transactions; providing transaction information; generating a transaction message from the selected financial transaction and transaction information; encrypting at least part of the transaction message; transmitting the transaction message from the mobile telephone, over a wireless network to a switch (cf page 2, line 23 to page 4, line 27).

On receiving the transaction message, the switch validates the accuracy of the transaction message and relays the instruction to the appropriate content provider and/or financial institution (page 8, lines 14 to 17). The payment of the seller (content provider) is apparently settled by the financial institution.

There is no mention in D1 of any account of the user in the switch, or corresponding means for transferring money to/from this account.

The subject-matter of claim 1 is, thus, new over document D1 (Articles 54(1) and (2) EPC 1973).

3.2 Document D2

Document D2 discloses a secure payment system allowing a user (payer) to pay, using eg a mobile phone, a service provider (payee) via a host computer. According to D2, "the host computer includes, as much as required, the users' details, data, accounts, the service provider's details etc. When the user purchases something for example in a shop by means of his/her MWP [Mobile Wallet Phone], the seller's terminal can send the bill and payment to the host computer where users have accounts" (page 4, line 38 to page 5, line 1). Furthermore, "the exchange of the money [ie debiting of the payer's account and paying to the payee's account] is done in a real time and then both the payee's/payer's terminals are acknowledged by a short message" (page 5, lines 16 to 17; see also page 6, lines 33 to 37).

In document D2, according to one alternative "user's money can be only kept in his account and the required bills be sent to the host computer (4) where the payer's account can be debited" (page 12, lines 8 to 9).

Not disclosed in D2, however, is how a user (payer) can "load" money to his host computer account.

Accordingly, at least the following features of claim 1 are not disclosed in D2:

- a subscriber service interface for outputting a corresponding charging or realization service request message to said service control unit to provide a corresponding financial transaction service when an item of said service menu is selected (cf feature (b));

- a transaction service interface (150) connecting said service control unit (120) by means of a financial network (300) to at least one bank settlement system (410; 420) which upon a settlement request message transmitted by said service control unit (120) by means of said financial network (300) to said bank settlement system (410; 420) processes a first transfer of money between a bank account of the juridical body providing the financial transaction service opened in said bank settlement system (410; 420) and a bank account of the subscriber (cf feature (c));

- a database including a service account of the juridical body providing the financial transaction service (cf feature (d));

- wherein the service control unit processes a second transfer of a corresponding amount of money between the service account of the juridical body providing the financial transaction service and the mobile account of the subscriber (cf feature (d)).

Accordingly, the subject-matter of claim 1 is also new over document D2 (Articles 54(1) and (2) EPC 1973).

3.3 The subject-matter of claim 1 is also new over the remaining cited prior art which is more remote.

4. Inventive step

4.1 The closest prior art is considered to be provided by document D2. The above distinguishing features over D2 allow a user (subscriber) to load money on his account in the host computer.

Accordingly, the objective problem to be solved relative to D2 is to provide the system with means allowing a user to load money on his account in the host computer (or realise money from his account).

4.2 As none of the documents cited in the search report or otherwise cited in the course of the examination procedure address the above objective problem to be solved or contain any indication as to its solution, the subject-matter of claim 1 is not considered to be obvious to a person skilled in the art.

4.3 In the decision under appeal the claim then under consideration was in substance held to be the straightforward technical implementation of an administrative banking procedure lying outside the patentable regime.

The board generally agrees that reloading the host computer account fundamentally constitutes (part of) a business method and, thus, would lack technical character.

However, insofar as administrative banking procedures indeed lack technical character, present claim 1 is not confined to merely reciting an administrative banking procedure alongside straightforward technical means for its implementation, but rather provides a technical solution, involving technical means to the technical problem of how to reload such an account. The solution as claimed is, as discussed above, not considered obvious.

Accordingly, the subject-matter of claim 1 involves an inventive step in the sense of Article 56 EPC 1973.

4.4 Claims 2 to 12 are dependent on claim 1, providing further limitations. The subject-matter of these claims, therefore, also involves an inventive step.

5. The patent application as amended also meets the remaining requirements of the EPC, so that a patent can be granted on the basis of these documents.

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 first instance with the order to grant a patent in the following version:

Claims: Claims 1 to 12 filed during oral proceedings;

Description: Pages 1 to 7, 9 and 44 filed during oral proceedings; Pages 8 and 10 to 43 as originally filed;

Drawings: Figures 1 to 32 as originally filed.