T 0196/08 (Placing an order/Amazon) of 8.6.2011

Summary of Facts and Submissions

I. The appeal is against the Examining Division's decision to refuse European patent application 00989552.5.

II. The Examining Division took its decision on the basis of a main and an auxiliary request. They found the subject matter defined by claim 1 to lack inventive step in both cases, and for the same reasons. They considered the claims to consist of a mixture of technical and non-technical features. The non-technical features defined a business scheme. The only technical features were a computer system comprising a display component, and a further component able to send data to a server computer. At point 3.2(c), they noted that neither the claim nor the application as a whole describe any technical interaction between the features constituting the business scheme ... and the technical features ... which would go beyond the mere automation of the business related steps.

III. Together with the statement setting out the grounds of appeal, the appellant filed new main and first auxiliary requests. The requests underlying the Examining Division's decision were maintained as second and third auxiliary requests. The appellant requested that the Examining Division's decision be set aside, and that the Board decide on the allowability of the main request, or, alternatively, on the allowability of the first to third auxiliary requests, or, as a final alternative, that oral proceedings be arranged.

IV. Claim 1 according to the main request reads as follows.

A method for ordering at least one item using a client system, the method comprising:

displaying information to a second user identifying at least one item which has been selected from a wish list containing one or multiple items desired by a first user; for each of multiple procurement options having information related to ordering, displaying an indication of the procurement option such that selection of the displayed indication represents using the information of the procurement option for ordering of the identified item with at least one indication of a procurement option containing delivery information associated to the first user as well as payment information associated to the second user; and after selection of said displayed indication, sending to a server system a request to order the identified item using the information of the procurement option for the selected indication, leading to delivery of the item to the first user and payment of the item by the second user.

V. Claim 1 according to the first auxiliary request reads as follows.

A method for ordering an item using a client system, the method comprising:displaying information identifying the item; for each of multiple procurement options having information related to ordering, displaying an indication of the procurement option such that selection of the displayed indication represents using the information of the procurement option for ordering of the identified item; and after selection of a displayed indication, sending to a server system a request to order the identified item using the information of the procurement option for the selected indication;

wherein the identified item is indicated to be desired by a first user, wherein the multiple procurement options are associated with a second user to whom the information identifying the item is displayed, wherein the selection of a displayed indication of one of the procurement options is by the second user, and wherein the sent request is to order the identified item for the first user such that payment information of the procurement option associated with the selected indication will be used to purchase the identified item and such that delivery information associated with the first user will be used to deliver the to identified item to the first user, said delivery information being part of at least one of said procurement options.

VI. Claim 1 according to the second auxiliary request reads as follows.

A computer system for ordering an item, comprising:

a display component able to display information identifying the item and able to display an indication of multiple procurement options each having sufficient information to complete an order for the identified item, each procurement option such that selection of the procurement option represents using the information of the procurement option for ordering of the identified item; and

an item ordering component able to, after a procurement option is selected, send to a server computer a request to order the identified item using the information of the selected procurement option, where in the identified item is indicated to be desired by a first user, wherein each of the multiple procurement options are associated with a second user to whom the information identifying the item is displayed, wherein the selection of a displayed indication of one of the procurement options is by the second user, and wherein the sent request is to order the identified item for the first user such that payment information of the procurement option associated with the selected indication will be used to purchase the identified item and such that delivery information associated with the first user will be used to deliver the identified item to the first user; and the payment information of the procurement option associated with the selected indication will be used to purchase the identified item for the first user only when a cost of the identified item is below a specified threshold.

VII. Claim 1 according to the third auxiliary request reads as follows.

A method for ordering an item using a client system, the method comprising:

displaying information identifying the item; for each of multiple procurement options having information related to ordering, displaying an indication of the procurement option such that selection of the displayed indication represents using the information of the procurement option for ordering of the identified item; and after selection of a displayed indication, sending to a server system a request to order the identified item using the information of the procurement option for the selected indication;

wherein the identified item is indicated to be desired by a first user, wherein each of the multiple procurement options are associated with a second user to whom the information identifying the item is displayed, wherein the selection of a displayed indication of one of the procurement options is by the second user, and wherein the sent request is to order the identified item for the first user such that payment information of the procurement option associated with the selected indication will be used to purchase the identified item and such that delivery information associated with the first user will be used to deliver the to identified item to the first user;

and

where in the payment information of the procurement option associated with the selected indication will be used to purchase the identified item for the first user only when a cost of the identified item is below a specified threshold.

VIII. In the statement of grounds, the appellant was of the view that the Examining Division had incorrectly understood the general idea of the invention. On page 3, the appellant expressed it in this way:-

The Examining Division seems to consider each element separately without taking into account the interrelation of the different elements and thus has not honored the technical contribution achieved by the present invention.

It is not that the present invention simply suggests the desire that a second user selects and pays an item that is delivered to a first user. Instead, the present invention provides a technical solution for realizing such a method. It is by providing the procurement options that can be selected by the second user that allow for such flexibility. In accordance with a preferred embodiment reflected by the main request, it is in particular the presence of the wish list, previously established by the first user that allows the second user to select an item that is actually desired by the first user. In other words, the fact that an electronically available wish list that is prepared by the first user is made available for the second user for selecting the item, provides a technical solution how to communicate an actual desire of the first user to the second user who carries out the selection.

IX. The Board scheduled oral proceedings for 8 June 2011. Together with the summons, the Board sent a communication, in which its provisional analysis was set out.

In that analysis, the Board presented a list of features which it regarded as non-technical. In effect, those features described non-technical methods. The remaining, that is, technical features defined in claim 1 according to the main request and to each of the three auxiliary requests, were said to have been obvious to the skilled person faced with the task of implementing those non-technical methods.

X. The appellant sent no arguments, amendments, or requests in response to the summons, and was not represented at the oral proceedings.

Reasons for the Decision

1. The invention concerns a system permitting a second user to order items which are desired by a first user.

1.1 In claim 1 according to the second auxiliary request, the system is specified to be a computer system; in the other requests, it is simply a client system. In the following the Board will interpret client system as client computer system, in accordance with the description.

2. The Board regards the following features as non-technical.

a) Displaying (here in the sense of "presenting") information identifying items which may be ordered.

b) Displaying information identifying procurement options, for example, how payment can be made, or delivery effected (see the paragraph bridging pages 28 and 29 of the application as published).

c) Ordering an item, once the customer has selected a procurement option.

d) Identifying items desired by a (potentially) different person.

e) Purchasing an item, and requesting that it be delivered.

f) Using payment information to make a purchase only if the cost is below a threshold.

3. The main request

3.1 The features mentioned under 2 a) - e) are not technical, and so the technical content of claim 1 is a method, implemented on a client computer system which has a display component, and a component which can send data to a server. The display must be capable of displaying information identifying at least one item and a plurality of procurement options. The component which can send data to a server must be capable of sending an order.

3.2 The Examining Division did not address this request, but it is evident that they considered such client computer systems to have been well known before the priority date. The appellant has not taken issue with that. Neither does the Board.

3.3 The assessment of inventive step starts from the skilled person who is faced with the task of automating features 2 a) - e). The question comes down to this: would the skilled person, faced with this task, arrive at the use of a computer system with display means, and with a component able to communicate with a server?

3.4 The Board's preliminary answer to that question, as communicated to the appellant with the summons to oral proceedings, was that she would. In particular, she would recognize that a client computer system has all the components required. She would also recognize, that, although a degree of programming is involved, that would not present any technical difficulty.

3.5 The appellant has presented no arguments against that preliminary answer, and the Board sees no reason to deviate from it.

3.6 The Board, therefore, considers that the subject matter of claim 1 does not involve an inventive step, in the sense defined in Article 56 EPC 1973.

4. The first auxiliary request

4.1 The Board's preliminary view, as communicated to the appellant together with the summons, was that claim 1 according to this request was a rewording of claim 1 according to the main request, and that the rewording did not affect the assessment of inventive step.

4.2 The appellant has presented no arguments against that view, and the Board sees not reason to change it.

4.3 The Board, therefore, considers that the subject matter of claim 1 does not involve an inventive step, in the sense defined in Article 56 EPC 1973.

5. The second auxiliary request

5.1 Claim 1 according to this request, unlike claim 1 according to the other requests, defines a computer system.

5.2 The features defined in Claim 1 all correspond to features defined in claim 1 according to the main request, except that now payment information ? will be used to purchase ? only when a cost ? is below a specified threshold. That corresponds to feature 2 f).

5.3 That feature refers to a decision which is taken outside the computer system defined by claim 1, and which could even be a pure mental act. However, even if the stated condition were to be evaluated by part of the computer system, it would imply, technically, at most, that the computer system is able to compare a cost with a threshold, and perform different actions depending on the result. That is something any general purpose computer can do.

5.4 The Board, therefore, considers the subject matter of claim 1 not to involve an inventive step (Article 56 EPC 1973).

6. The third auxiliary request

6.1 As the Examining Division stated, claim 1 is essentially claim 1 according to the second auxiliary request, recast as a method.

6.2 The Board's preliminary view, as sent to the appellant together with the summons, was that the argument regarding inventive step for the second auxiliary request, applied equally well here. The appellant has presented no arguments against that view, and the Board sees no reason to change it.

6.3 The Board, therefore, considers the subject matter of claim 1 to lack inventive step (Article 56 EPC 1973).

Order

For these reasons it is decided that:

The appeal is dismissed.