T 0348/09 (Roaming reload manager/SICAP) of 11.8.2011

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 01274471.0 (publication number EP 1425901), which was originally filed as international application PCT/CH01/00729 (publication number WO 03/024081 A).

II. The reason given for the refusal was that the subject-matter of claim 1 as published lacked an inventive step (Articles 52(1) and 56 EPC).

III. The following document referred to in the impugned decision is relevant to the present decision:

D2: WO 00/33264 A.

IV. In the statement of grounds of appeal the appellant requested that the decision be set aside and a patent be granted on the basis of the claims on file, i.e. claims 1 to 18 as published. By way of a first auxiliary request the appellant requested "an opportunity to file a further set of amended claims". By way of a second auxiliary request oral proceedings were requested.

V. The appellant was summoned to oral proceedings. In a communication accompanying the summons the board gave its preliminary opinion that the subject-matter of claim 1 as published did not involve an inventive step (Articles 52(1) and 56 EPC). Further, the appellant's attention was drawn to Article 13(1) and (3) RPBA relating to amendment to a party's case.

VI. No substantive submissions in reply to the communication were filed.

VII. Oral proceedings were held on 11 August 2011.

The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 18 as published.

At the end of the oral proceedings, after deliberation, the board's decision was announced.

VIII. Claim 1 as published reads as follows:

"A method for loading and reloading an account (411, 611a), assigned to a mobile communication terminal (4), with a monetary amount, in which method a reload request including a value code and an identification of the mobile communication terminal (4) are transmitted over a communication channel (7c, 8c, 9) to a computerised reload unit, in which method the reload unit transfers a monetary amount corresponding to the value code to the account (411, 611a) assigned to the identified mobile communication terminal (4), wherein the method includes

transmission of a first reload request (S2) including a value code associated with a first mobile radio network (2c) and of an identification of a mobile communication terminal (4) to be credited, registered in a home location register of a second mobile radio network (2a), over a communication channel (7c, 8c, 9) to a computerised central unit (1),

transmission by the computerised central unit (1) of a second reload request (S5) including the value code associated with the first mobile radio network (2c) and of an identification of a proxy mobile communication terminal (12c), registered in a home location register of the first mobile radio network (2c), over a communication channel (10c) to a first reload unit (6c) associated with the first mobile radio network (2c),

transmission by the computerised central unit (1) of a third reload request (S10) including a proxy value code associated with the second mobile radio network (2a), and of the identification of the mobile communication terminal (4) to be credited over a communication channel (10a) to a second reload unit (6a) associated with the second mobile radio network, and

transfer by the second reload unit (6a) to the account (411, 611a) assigned to the identified mobile communication terminal (4) to be credited of [sic] a monetary amount corresponding to the proxy value code.".

Reasons for the Decision

1. Inventive step

1.1 The board's starting point for assessing whether the subject-matter of claim 1 involves an inventive step is the voucher-based prepayment system known from document D2. It was not contested by the appellant that at the claimed priority date such a system was common general knowledge in the art. In such a known system the provider of a mobile radio network, hereinafter referred to as network A, may wish to offer to his customers, i.e. those having a mobile terminal registered in network A, a new service which enables them to reload their prepaid mobile terminal accounts by using a voucher which is not for use in network A but for another network, network B, e.g. a mobile radio network of another provider. Such a service in essence consists of a commercial transaction and does not inherently involve technical considerations.

As an example of each of the networks A and B, the board notes that D2 discloses a mobile radio network 2 (Fig. 1), in which a prepaid account 66 (Fig. 1) assigned to a mobile terminal 1 can be loaded or reloaded with a monetary amount. More specifically, a reload request, which includes a value code 93 (Fig. 2) of a voucher (page 5, 2nd paragraph) and an identification 94 (Fig. 2) of the mobile terminal to be credited (page 4, 2nd paragraph), is transmitted over a communication channel of a network 2 to a "Reload-System" 6. The "Reload-System" 6 determines whether or not the voucher is valid (page 9, line 29, to page 10, line 5, "Validierungsmodul" 63) and, if valid, a reload unit ("Prepaid-Billing-Modul" 65) of the "Reload-System" 6 transfers a monetary amount corresponding to the value code of the voucher to the account assigned to the identified mobile terminal (page 10, lines 11 to 30).

In such a system the above-mentioned new service could function as follows:

When a customer presents to a service employee at a service point of network A a "wrong" voucher, i.e. a voucher for use in another network, here network B (as indicated on the voucher), the service employee takes the following steps in order to credit the customer's prepaid account despite the fact that the voucher is not for use in network A:

He firstly determines the validity and monetary value of the voucher. If the voucher is valid, he then credits the monetary value to the customer's prepaid account by using a "correct" voucher, i.e. a voucher for network A with the same monetary value.

Since at the service point there is typically no information available about the validity and monetary value of vouchers for networks other than network A, the service employee checks the validity of the voucher by using a mobile terminal registered with network B and making a reload request call in network B, using the customer's voucher, for crediting a prepaid account which is held by the provider of network A in network B. If no validity failure is reported, the service employee knows that the voucher was valid and he subsequently credits the customer's prepaid account as described above.

1.2 The board notes that the above-mentioned new customer service does not require any technical considerations since it does not require any technical modifications of existing mobile radio networks A and B, each of which already offers the possibility of reloading prepaid mobile terminal accounts by means of a value code of a voucher. The board additionally observes that a similar service could be offered by a customer of network B to a friend who is a customer of network A and who has bought a voucher for the wrong network, network B, by mistake.

1.3 The method of claim 1 differs from the above-mentioned customer service in that, instead of carrying out the procedure manually at a service point, it is carried out by a "computerised central unit". In the board's view, this distinguishing feature merely implies that the service is thereby automated. Hence, the technical problem may be formulated as automating the proposed customer service. The formulation of this problem does not involve an inventive step, since at the priority date it was a common aim of industry to automate manual procedures.

1.4 When faced with the above technical problem, a person skilled in the art would, taking again the network of D2 as an example of each one of the networks A and B, include, e.g. in the "Reload-System" 6 of network A, a means for automatically determining the network for which the value code of the voucher can be used. If it is determined that the value code is for use in network A, the normal reloading method as disclosed in D2 is carried out. If the value code is not for network A but for, e.g., network B, a reload request call to the reload system of network B is automatically set up by using, in accordance with D2, a terminal registered with network B, referred to in claim 1 as "a proxy mobile communication terminal", and transmitting the identification of this terminal and the value code. If no reloading failure is reported by the reload system of network B, the account identified by the customer is credited with the same monetary amount by using, again in accordance with the method of D2, a value code for use in network A and the identification of the customer's mobile terminal.

1.5 The skilled person would thereby arrive at a method which includes all the features of claim 1. Since the above-mentioned technical features, i.e. the use of a means for automatically determining the network and a means for automatically setting up a reload request to the other network, are the result of a one-to-one implementation of the above-described procedure carried out at the service point by the service employee and merely involve the use of well-known technical means for their intended purposes, the solution does not require the exercise of inventive skill.

1.6 In connection with the above reasoning, which is essentially as set out in the annex to the board's summons to oral proceedings and which is in line with the reasoning given by the examining division in the impugned decision, the appellant argued at the oral proceedings that the board did not apply the problem-and-solution approach correctly in that the formulation of the technical problem contained pointers to the solution since it included the new customer service.

Further, it was argued that the present invention was not only concerned with a situation in which a "wrong" voucher was to be used in the user's home network, as in the customer service, but was also relevant to a situation in which a user tried to reload its account by transmitting its reload request to a reload unit in another network, e.g. while being abroad, which network did not have access to the user's account. In support, the appellant referred to page 15, lines 3 to 11, of the application as published.

The appellant further argued that, by providing an external computerised central unit, all mobile radio networks needed to communicate only with the central unit, thereby avoiding communication traffic between the networks themselves. Consequently, no separate agreements between the network providers were necessary and, instead, each network provider only needed an agreement with the operator of the central unit.

1.7 Turning first to the problem-and-solution approach, other than the mere automation of a manual process the board is unable to identify any technical problem, see point 1.3. In the board's view, the proposed customer service per se does not imply the use of means for automating the service or imply any technical considerations which would suggest the use of these means.

Further, the board notes that the method of claim 1 is not concerned with reloading, using a value code for the first (or second) network, the account of a mobile terminal registered with the second network specifically via a reload unit of the first network, e.g. while being abroad. Rather, the claimed method is merely concerned with (re )loading an account of a mobile terminal registered in the second network by using a value code for use in the first network. Further, since the claim defines only one account, i.e. an account of a mobile terminal registered with the second network, the claimed method is not concerned with reloading, using a value code for use in the second (or first) network, an account of a mobile terminal which is registered in the first network. This, in turn, implies that the computerised central unit may be located within the second network and be accessible only when the user is in this network.

As to the number of agreements between network providers, the board notes that the claim is silent on whether or not the first and second mobile radio networks and the computerised central unit belong to different providers or operators. As discussed at the oral proceedings, in large countries such as India or China a network operator may choose to partition the country into regions each of which requires a different prepaid voucher. In any case, a reduction in the number of agreements between providers or operators would merely be an administrative consideration which does not imply a technical effect which otherwise would have to be taken into account when examining inventive step.

The board does not therefore find the appellant's arguments convincing.

1.8 In view of the above, the board concludes that the subject-matter of claim 1 does not involve an inventive step (Articles 52(1) and 56 EPC).

1.9 The appellant's request is therefore not allowable.

2. There being no allowable request, it follows that the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.