T 1026/08 () of 8.9.2011

Summary of Facts and Submissions

I. This is an appeal against the refusal of application 05 006 738 for lack of an inventive step, Article 56 EPC 1973, over documents

D1: US 2002/0161711 A and

D2: US 5 819 226 A.

II. With the statement setting out the grounds of appeal dated 29 April 2008, the appellant requested that the decision under appeal be set aside and a patent granted on the basis of the following:

Main request: claims 1 to 79 filed with the statement setting out the grounds of appeal, or

First auxiliary request: claims 1 to 72 filed with the statement setting out the grounds of appeal, or

Second auxiliary request: claims 1 to 66 filed with the statement setting out the grounds of appeal.

III. The summons to oral proceedings requested by the appellant were provided with an annex in which a provisional opinion of the board on the matter was given, according to which the subject-matter of claim 1 of all requests appeared to lack an inventive step, Article 56 EPC 1973.

No arguments were provided by the appellant in response to the board's observations.

The appellant merely informed the board that it would not attend the scheduled oral proceedings and requested a decision according to the state of the file.

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

"A method performed by a computer-implemented information handling system (200) for determining whether a financial transaction request is likely to be fraudulent, the method comprising:

receiving a first financial transaction request over a network (112);

executing a scoring process (306) to apply a plurality of rules to the first financial transaction request in order to determine a first score for the first financial transaction request, each of the plurality of rules, having a weight;

executing a decision process (310) to output a first indication (314, 315, 318) over the network of whether the first financial transaction request is likely to be fraudulent based on the first score;

executing a subsequent transaction review process (322) to determine an actual outcome of the first financial transaction request and to determine a result (324, 326, 328, 330) indicating whether the first indication was correct based on the actual outcome; and

executing an adaptive adjustment process (336) to automatically modify the weight of at least one of the plurality of rules based on the result in order to improve a predictive accuracy of the scoring process."

V. Claim 1 of the first auxiliary request corresponds to claim 1 of the main request, in which, however, the second and the last feature read as follows:

"obtaining a plurality of rules from a rules database (302), wherein each rule of the plurality of rules has an associated first number representing a number of past, actual fraudulent financial transaction requests satisfying the respective rule and the plurality of rules comprises a plurality of negative rules indicating whether the financial transaction request is likely to be fraudulent;", and

"executing an adaptive adjustment process (336) to automatically modify the weight of at least one of the plurality of rules based on the result in order to improve a predictive accuracy of the scoring process, wherein modifying the weight of at least one of the plurality of rules includes increasing the weight of one of the plurality of negative rules that is associated with a larger first number than other rules included in the plurality of rules."

VI. Claim 1 of the second auxiliary request corresponds to claim 1 of the first auxiliary request, in which, however, the second and the last feature read as follows:

"obtaining a plurality of rules from a rules database (302), wherein each rule of the plurality of rules has an associated first number representing a number of past, actual fraudulent financial transaction requests satisfying the respective rule and an associated second number representing a number of past, actual non-fraudulent financial transaction requests satisfying the respective rule, and wherein the plurality of rules comprises a plurality of negative rules indicating whether the financial transaction request is likely to be fraudulent and a plurality of positive rules indicating whether the financial transaction request is likely to be non-fraudulent;", and

"executing an adaptive adjustment process (336) to automatically modify the weight of at least one of the plurality of rules based on the result in order to improve a predictive accuracy of the scoring process, wherein modifying the weight of at least one of the plurality of rules includes increasing the weight of one of the plurality of negative rules that is associated with a larger first number than other rules included in the plurality of rules or increasing the weight of one of the plurality of positive rules that is associated with a larger second number than other rules included in the plurality of rules."

VII. Furthermore, all requests include an independent claim for a corresponding system for determining whether a financial transaction request is likely to be fraudulent, and for a corresponding computer program product.

VIII. The appellant in substance provided the following arguments:

The subject-matter of claim 1 of all requests involved an inventive step over both documents D1 and D2 referred to by the examining division. In particular, both documents failed to disclose a number of features specified in claim 1 according to the main request or any of the auxiliary requests.

Reasons for the Decision

1. The appeal is admissible.

2. In the annex to the summons to the oral proceedings referred to above, the board noted that the subject-matter of claim 1 according to the main request, as well as according to the first and second auxiliary requests, appeared not to involve an inventive step in the sense of Article 56 EPC 1973.

No arguments were submitted by the appellant in response to the board's observations provided in the annex to the summons to oral proceedings referred to above.

3. Main request

3.1 As noted in the annex to the summons to the oral proceedings, the invention concerns the technical implementation of what is essentially a method for doing business.

According to established jurisprudence, an invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features, which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step. Where the claim refers to an aim to be achieved in a non-technical field, eg in the field of business methods like in the present case, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00, OJ 2003, 352).

Thus, in the present case all steps of the underlying business method are part of the information provided to the technician in charge of the technical implementation and do as such not contribute to inventive step.

The technical problem to be solved may, thus, be formulated as to implement technically the method for determining whether a financial transaction request is likely to be fraudulent, using technical means.

The technical implementation consists in that the method is performed by a computer-implemented information handling system (as far as this expression is clear and originally disclosed) and in that a network is involved for receiving a financial transaction request and for outputting an indication whether the financial transaction request is likely to be fraudulent.

This technical implementation is, however, entirely common in the technical field at issue of financial transactions and, thus, obvious to a person skilled in the art.

Accordingly, the subject-matter of claim 1 of the main request lacks an inventive step (Article 56 EPC 1973).

3.2 Incidentally, it is noted that the underlying business method at any rate simply corresponds to what a merchant using common sense would do. The rules as provided eg in figure 4 of the application correspond to common criteria for evaluating fraud. Moreover, reviewing whether the assessed fraud risk is in agreement with reality, ie with whether the transaction actually turned out to be fraudulent, and to draw conclusions from it whether certain applied rules indicative of fraud (or not) are over- or undervalued, and thus need a weight adjustment, corresponds to what daily life experience suggests.

3.3 The appellant submitted in the statement setting out the grounds of appeal that a number of distinguishing features over documents D1 and D2 were defined in claim 1. It is, however, noted that these distinctions concern non-technical features of the claim pertaining to the underlying business method and are, thus, irrelevant as to their contribution to inventive step, in view of the argumentation above.

4. First and second auxiliary request

The technical implementation according to claim 1 of the first and second auxiliary request involves additionally the provision of a rules database and of a number associated to each rule representing a number of past, actual fraudulent financial transaction requests satisfying the respective rule.

Providing the rules in a rule database is generally obvious when technically implementing the underlying business method.

The number associated to each rule as claimed merely expresses numerically the relevance of the rule as assessed in the review process. To use a number to indicate the relevance of a parameter and ultimately increase its weight is also generally obvious when technically implementing the underlying business method.

Accordingly, the subject-matter of claim 1 of the first and second auxiliary request also is obvious to a person skilled in the art (Article 56 EPC 1973).

ORDER

For these reasons it is decided that:

The appeal is dismissed.