T 0591/08 (Prepaid services/VERIZON) of 11.5.2010

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 01939825.4 (publication number EP 1295461) which was originally filed as international application PCT/US01/17785 (publication number WO 01/93559 A).

II. The reason given for the refusal was that the subject-matter of claim 1 of a main request and two auxiliary requests did not involve an inventive step, Articles 52(1) and 56 EPC, having regard to the disclosure of the following document:

D2: WO 97/04579 A.

III. With the statement of grounds of appeal the appellant requested that the decision under appeal be set aside and a patent be granted on the basis of claims of a main request or, in the alternative, on the basis of claims of an auxiliary request, referred to by the appellant as the "second auxiliary request", both requests as filed with the statement of grounds of appeal. Arguments in support of these requests were also submitted. Oral proceedings were conditionally requested.

IV. Claim 1 of the main request reads as follows:

"An information processing system for offering prepaid services via a network connection comprising:

website system hardware (120) connected to a network via the network connection for maintaining at least one web site,

a first plurality of databases (140, 150, 160, 170, 175) connected to the system hardware (120) and containing prepaid services end-user usage information transferred thereto by the web-site system hardware, including prepaid accounts for a particular prepaid service, the end-user usage information being accessible by a set of end-users of the plurality of end-users via the at-least one web-site,

a customer profile database (130) connected to the web-site system hardware (120) and containing information pertaining to the set of end-users,

characterized in that

the at least one web-site is adapted to offer a plurality of prepaid services offered by a plurality of prepaid service providers and accessible by a plurality of end-users via the network connection for purchasing one of at least one of the plurality of prepaid services and usage rights for a plurality of prepaid services, and

the system further comprising network hardware (180) connected to the web-site system hardware (120) via a dedicated link for enabling at least one end-user of the plurality of end-users to access a web-site of the at least one web-site via a second network connection, wherein a second plurality of databases (140a, 150a, 160a, 170a, 175a) is connected to the network hardware (180) and contains prepaid services end-user usage information, including prepaid accounts for a particular prepaid service, and

wherein the network hardware is configured for enabling at least one customer of a system operator to utilize the system for offering the plurality of prepaid services to at least one of the plurality of end-users, said system operator having a website that has a link to web-site system hardware (120)."

Claim 1 of the auxiliary request differs from claim 1 of the main request in that it additionally includes the following feature:

", and wherein the website system hardware is configured for communicating with a prepaid services allocation system for receiving the prepaid services end-user information for storage within the plurality of databases (140, 150, 160, 170, 175; 140a, 150a, 160a, 170a, 175a) according to whether the customer is a customer of the system operator or an outside system operator".

V. The appellant was summoned by the board to oral proceedings. The summons was accompanied by a communication in which the board gave its preliminary opinion, raising objections under Articles 84 and 123(2) EPC and Article 52(1) in combination with Article 56 EPC. Those parts of the communication which are relevant to the present decision are reproduced below, in which "D1" is a reference to international application publication number WO 98/54679 A.

Points 4 to 6 of the communication read as follows:

"4. Article 123(2) EPC

4.1 Independent claims 1 and 14 of the main request each refer to a first and a second plurality of databases. In the application as filed, however, a second plurality of databases is disclosed only in the context of customer profiles and prepaid online accounts of customers of so-called "outside system operators", see page 18, lines 7 to 10 and 14 to 16. Since claims 1 and 14 are not restricted accordingly, they define an intermediate generalisation. A basis for this intermediate generalisation cannot however be found in the application as filed.

4.2 The above objection applies, mutatis mutandis, to independent claims 1 and 13 of the auxiliary request. Further, no basis in the application as filed can be found for the last feature of these claims, i.e. the storage of prepaid services end-user information within "the plurality of databases ... according to whether the customer is a customer of the system operator or an outside system operator".

4.3 Claims 1 and 14 of the main request and claims 1 and 13 of the auxiliary request do not therefore comply with the requirement of Article 123(2) EPC.

5. Article 84 EPC

5.1 In the board's view, since, in accordance with Article 84 EPC, the claims, rather than the combination of the claims and the description, shall define the matter for which protection is sought, a claim must be clear in itself, i.e. an addressee should be able to understand the claim without a need to refer to the description,.

5.2 In claims 1 and 14 of the main request it is unclear which technical features are implied by the wording "said system operator having a website that has a link to web-site system hardware", since this wording relates to an operator which does not appear to be part of the claimed information processing system.

The above wording also gives rise to inconsistencies between the claims and the description:

According to the description (see page 7, 2nd paragraph, page 16, 2nd paragraph, and page 17, 2nd paragraph) an outside system operator, who is, for example, a wholesaler or online retailer, has a website which is hyperlinked to the website system hardware 120 of the information processing system. According to claims 1 and 14, however, the system operator has a website which is linked to the website system hardware.

Further, the claims refer to a "customer of a system operator", whereas in the description, reference is made to a customer of outside system operators, see page 7, line 13, and page 16, lines 15 and 16.

These inconsistencies make claims 1 and 14 of the main request unclear and not supported by the description (Article 84 EPC).

Further, in claim 1, lines 27 to 29, it is unclear which technical feature is implied by the feature that the network hardware is configured "for enabling at least one customer ... to utilize the system ...". This objection also applies to the corresponding method step in claim 14, last paragraph, i.e. "enabling at least one customer ... to utilize the system ...".

Claim 14, lines 27 to 30, is also unclear in that it is not clear which method step is defined by this website feature. In the board's view, the feature merely defines properties of the website rather than a method step in terms of technical features of an activity.

5.3 The above objections apply, mutatis mutandis, to claims 1 and 13 of the auxiliary request.

Claims 1 and 13 of the auxiliary request are further unclear in that the term "outside system operator" does not have a well-recognised meaning in the relevant field. It is also unclear to what extent, if at all, the fact that the customer is either a customer of the system operator or a customer of an outside system operator restricts the scope of the claims. These considerations also apply to dependent claims 2 and 3 of both the main and the auxiliary request.

5.4 The claims of either request do not therefore comply with the requirements of Article 84 EPC.

6. Inventive step

6.1 Although, as set out above, the claims of either request do not meet the requirements of Articles 84 and 123(2) EPC, it is considered useful to give a preliminary opinion on the question of inventive step in relation to the claimed subject-matter, when read in the context of the description as filed.

6.2 D2, which in the appellant's view represents the closest prior art, discloses (see, in particular, page 5, lines 20 to 22, page 8, lines 10 to 15, page 11, lines 13 to 20, and Fig. 1) an information processing system for offering prepaid services via a network connection (Fig. 1, telephone line 222). The system includes system hardware (host computer/service provider 208) connected to a telephone network via the network connection, a database 210 connected to the system hardware and containing prepaid services end-user usage information transferred thereto by the system hardware 208, including prepaid accounts for particular prepaid services (page 9, lines 13 to 16 (long distance telephone calls), page 11, lines 6 to 20 (downloading of data)), the end-user usage information being accessible by a set of end-users of the plurality of end-users, in which the database contains customer-profile information pertaining to the set of end-users (D2, the abstract). The system hardware is adapted to offer a plurality of prepaid services offered by a plurality of prepaid service providers and accessible by a plurality of end-users via the network connection for purchasing at least one of the plurality of prepaid services and usage rights for a plurality of prepaid services (page 10, lines 12 to 17, and page 10, line 31 to page 11, line 3). The system further includes network hardware connected to the system hardware 208 via a dedicated link for enabling at least one end-user of the plurality of end-users to access the system hardware via a second network connection (page 12, lines 5 and 6 and 15 to 18, and Fig. 3), wherein the network hardware is configured for enabling at least one destination 212, if it is a data or information provider, to utilize the system for offering a plurality of prepaid services to at least one of the plurality of end-users (page 10, line 31 to page 11, line 20).

6.3 The subject-matter of claim 1 of the main request, taking into account the relevant passages of the description, in particular page 7, 2nd paragraph, page 16, 2nd paragraph, and page 17, 2nd paragraph, appears to differ from the system disclosed in D2 in that:

- the system hardware maintains at least one website;

- the database consists of two pluralities of databases and a customer profile database; and

- the data or information provider has a website which is hyperlinked to the website of the system hardware.

6.4 The board notes that in D2 the system hardware, i.e. host computer/service provider 208, may be configured to interactively request information from the consumer through the use of icons (page 9, lines 27 to 32), that the calling party module 206 may be a PC or another processing terminal configured to access a data network, and that the destination 212 may be a service provider "configured to download data to PC 206 from a physically distant source, for example in the context of Internet" (page 11, lines 3 to 10). In the board's view, in the context of Internet, it was well-known to a person skilled in the art at the priority date to provide one or more websites, which may include hyperlinks to other websites, in order to visually present information on a PC to an end-user and interact with the end-user. When faced with the problem of implementing the system of D2, it would therefore have been obvious to the skilled person to equip the service provider 208 and those destinations 212 which are data or information providers for the same purpose with websites which include, e.g., selection menus, transaction information overviews, account information overviews, hyperlinks to other websites, etc., see also D1 (page 7, lines 5 to 8 and 12 to 17, and page 12, lines 24 to 30, and Fig. 1) and US 5 963 625 A (the abstract, and col. 16, lines 9 to 22) cited in the international search report.

Further, it is noted that, in D2, no technical details are given in respect of the implementation of database 210, cf. D2, page 11, lines 24 to 29. However, in the board's view, it was well-known at the priority date, depending on availability and costs, to subdivide a database in different sections for different data or even in a plurality of storage devices, e.g. as a distributed database. Hence, implementing the database 210 of the system of D2 by means of a plurality of databases appears to be one of several straightforward design possibilities which the skilled person would select in accordance with the circumstances without the exercise of inventive skill.

6.5 It therefore appears that the subject-matter of claim 1 of the main request does not involve an inventive step having regard to the disclosure of D2 and taking into account the common general knowledge of a person skilled in the art at the priority date.

6.6 The above considerations apply, mutatis mutandis, to independent claim 14 of the main request and independent claims 1 and 13 of the auxiliary request. Further, in view of the above considerations and having regard to the prior art documents on file, the additional features as defined in the dependent claims of each request do not appear to contribute to an inventive step either.

6.7 Hence, it appears that the subject-matter of the claims of the main request and the auxiliary request does not involve an inventive step (Articles 52(1) and 56 EPC)."

VI. In response to the summons to oral proceedings, the appellant informed the board that it would not attend the scheduled oral proceedings. No substantive submissions in reply to the communication were filed.

VII. Oral proceedings were held on 11 May 2010 in the absence of the appellant. After deliberation the board's decision was announced.

Reasons for the Decision

1. Articles 52(1), 56, 84 and 123(2) EPC

1.1 After having reconsidered the objections raised in its communication in respect of claim 1 of both requests and having noted that the appellant did not file any substantive submissions in reply to the communication, the board maintains the reasoning as expressed in its communication in respect of these claims and therefore the objections raised in respect of claim 1 of both requests, see point V above.

1.2 Accordingly, the board concludes that the subject-matter of claim 1 of the main request and claim 1 of the auxiliary request does not comply with the requirements of Articles 84 and 123(2) EPC and, when read in the context of the description as filed, does not involve an inventive step, Articles 52(1) and 56 EPC.

In consequence, as claim 1 of both the main and auxiliary request is not allowable, the respective requests as a whole are not allowable.

2. In the absence of an allowable request the appeal must be dismissed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.