T 1883/09 () of 20.9.2012

Summary of Facts and Submissions

I. On 1 September 2009 the Appellant (Proprietor) lodged an appeal against the Opposition Division's decision of 18 August 2009 to revoke European patent No. 956 118 and simultaneously paid the prescribed appeal fee. The grounds of appeal were received on 28 December 2009.

Two oppositions had been filed against the patent each based among others on Article 100(a) EPC in combination with Article 56 EPC for lack of inventive step.

The Opposition Division held that this ground prejudiced maintenance of the patent in view of the following documents

D1: EP-A-0 620 688

II. The Appellant (Proprietor) requests that the decision under appeal be set aside and the patent be maintained in amended form according to the sole, main request filed with the grounds of appeal.

The Respondents (Opponents I and II) both request that the appeal be dismissed.

III. Oral proceedings before the Board were duly held on 20 September 2012.

IV. The wording of independent claims 1 and 6 of the main request is as follows:

1. "A method by which a player remote from a casino may participate in a live game at that casino comprising the steps of:

establishing an open first information line (101) between said player at an interface station (20) located remote from a casino and the casino;

transmitting a player's financial account information at a third party financial institution from said interface station (20) to said casino over said open first information line (101);

establishing an open second information line (102) between said casino and the player's financial institution;

transmitting from said interface station (20) to said casino bet information over said open first information line (101), and verifying said bet information by utilizing said open second information line (102) between said casino and said third party financial institution to have a central processing unit at the third party verify that the player’s account contains a balance greater than the bet;

transmitting from the casino to the interface station (20) the visual image of a live game at said casino;

determining whether the casino or player won the game, and transmitting from the casino to the third party financial institution over said open second information line either instructions to credit said player’s financial account if said player wins, or instructions to debit said player’s financial account if said casino wins; the method comprising the step of maintaining the second information line (102) in an open condition at least as long as said first information line (101) is open."

6. "A system for permitting a player to wager with funds from the player’s account maintained at a third party financial institution and concerning a live casino game taking place at a remote gaming establishment, the system comprising:

a player interface station (20) including a video screen (22), a central processing unit (28) and means for the central processing unit to receive and transmit data including data corresponding to the player’s selection of a wager on said game;

a host computer to receive and process information transmitted from the player interface station (20);

an open first information line (101) to transmit data between the player interface station (20) and the host computer;

an open second information line (102) to transmit data between the host computer and the third party financial institution;

means for a player from his interface station (20) and over the open first information line (101) to establish communication with the host computer and to transmit player’s account and wager data to the host computer,

means for said host computer, in response to said wager data to establish communication with the third party financial institution for checking that the player’s account contains funds necessary for the wager, by having a CPU at the third party financial institution verify that the player’s account contains a balance greater than the bet, and for electronically debiting the player’s account for losses and crediting the players account for wins;

means for the host computer to transmit over said open first information line (101) live images of said game to the player interface station (20) for display at said video screen (22), said player transmitting data through the interface station (20) to said host computer to participate in the live game to the extent permitted by the rules of the live game, said interface station (20) receiving over the first information line (101) live images of the game until the outcome thereof for the player to confirm the outcome;

means for inputting into the host processor the game outcome; and

means for determining whether the player’s wager is won or lost and transmitting over the open first information line (101) to said interface station (20) data indicative of whether the player has won or lost;

the system further comprising means for maintaining the second information line (102) in an open condition at least as long as said first information line (101) is open.

The invention is defined in alternative terms in further independent claims 8 (method) and 9 (system).

V. The Appellant argued as follows:

The invention is concerned with practical aspects of how to realize value transfer in machine supported gambling, and is thus technical. Game control and value transfer are normally separate concepts. Within gaming credit represents an internal control parameter, but this is divorced of actual payment, the transfer of value that ultimately must take place. Gaming control is thus separate and closed from that of subsequent payment. The invention's central idea is to break through this paradigm of a separate and closed gaming system and bring the external value transfer and internal crediting together. This is achieved by having the player's bank, rather than the casino, perform the step of credit verification. Credit as gaming control parameter is so externalized.

There is no hint in the prior art at such a solution. D1 is not concerned with actual transfer, which is not described in any detail. It does not disclose transmission of a player's account information to the casino, verification by the bank of a player's account, transmission of account information to the bank or the use of open lines. In fact it does not mention player credit as a game control parameter.

Nor is there any incentive to depart from the separate, closed game control of D1 by opening it up as claimed.

Even if the skilled person would consider an alternative value transfer scheme, there is no prior art that suggests separating verification and actual debiting and crediting.

This opening up has clear technical benefits, in that it shifts the computational burden of verification away from the casino, allowing for software and hardware simplification. This burden is easily absorbed by the capacity of a bank's CPU, which is much larger than that at the casino. The use of open lines on the other hand takes into account rapidly changing gaming conditions, such as are prevalent in a game such as Blackjack, and thus allow faster, continuous gameplay. Overall the claimed invention results in a simplified game control system that operates faster and is better adapted to other games.

VI. The Respondent-Opponent I argued as follows:

The patent is effectively about establishing a remote player's solvency before extending credit to him. This is inherently a non-technical, business concept. It may be that the use of the bank's CPU confers technicality, the balance check at the player's bank itself is a non-technical aspect of the solution. A bank is in fact not permitted to transmit confidential account information, such as a balance, without consent. This is why it is standard practice in electronic debit/credit card transactions to balance check at the financial institution and only issue an authorization code without balance information.

The claims also do not exclude that the balance check and funds transfer are carried out together. Claims 8 and 9 suggest as much, when they have the casino retaining the wager.

The open information lines could refer to information exchange with a bank manager over a telephone line and this feature is thus also not necessarily technical. In any case it reflects the obvious desire to maintain continuity during game play. As for it allowing more stream-lined gameplay, this is not a technical objective.

Transmission of account information to a bank via open lines is also already suggested in D1, which mentions payment via credit card, even if the exact mechanism is not expressly described.

VII. The Respondent-Opponent II added the following arguments:

The key features of the invention are non-technical and cannot contribute to inventive step. It relies on the simple choice between two alternatives for checking balance. That choice is a purely business consideration. Using the bank's CPU may then be technical per se, but the way it is used to balance check solves the purely administrative problem of how to use the player's bank account rather than a casino account to place bets. The very idea of externalizing the credit check is non-technical and cannot form the basis for inventive step. The way that non-technical idea is then implemented is straightforward and obvious.

Maintaining open lines does not in itself secure funds. Technically, it is an arbitrary feature. It corresponds to the well-known use of a modem.

Also, there are no clear benefits in computation or encryption. Any gains in computational burden are offset by that involved in communication with the bank.

Reasons for the Decision

1. The appeal is admissible.

2. Background & Mixed Inventions

2.1 The patent concerns a remote betting scheme in which a player can place bets on a game at a casino from a remote interface station via an information line during live transmission of the game to the player. Along with betting information the player transmits financial account information with a third party financial institution, i.e. the player's bank. The casino relays the betting and account information to the bank over another open information line so as to verify the player's balance in a CPU. After game play the casino instructs the bank to credit or debit the player's account depending on game outcome.

This scheme is described as being immune to communications being lost between player and the casino (once he has placed his bet), see patent specification paragraphs [0053] and [0054]. Claim 1 is to the method by which the scheme operates and claim 6 to the corresponding, functionally defined system.

2.2 Following the established approach of T 258/03 regarding technicality, the claimed method and system, which include technical means in the form of inter alia information lines, a CPU and an interface station, have technical character and therefore are not statutorily excluded from patent protection. In fact all parties acknowledge the technical character of the invention and this is no longer in debate.

However, the claimed method and system also have non-technical aspects, in that they relate to games as well as the way the game is financially accounted, i.e. a method of doing business. Games and business schemes fall under the statutory exclusion from patentability of Article 52(2)(c) EPC, essentially because they are not considered to be technical per se.

2.3 The claimed method and system thus include both technical and non-technical aspects. In assessing inventive step for such "mixed" inventions the Board adopts the approach set out in T 336/07, see in particular reasons 2, which is based primarily on T 641/00 (OJ EPO 2003, 352). Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step. This means that for subject-matter to be considered inventive in a technical sense it cannot rely on excluded (non-technical) subject-matter alone, however original it may be. The mere fact that excluded subject-matter has been given a technical implementation cannot therefore form the basis for inventive step. Rather, it is necessary to consider in detail how that matter has been technically implemented.

3. Inventive Step

3.1 It is undisputed that D1 represents the closest prior art. Figure 4 in particular shows a scheme in which a subscriber to a CATV (i.e. cable) network can participate in live or real-time gaming from his subscriber unit at 58 including TV 56 over the CATV network 10 which includes a computer system shown within dashed box 10. This computer system comprises an accounting apparatus 24, see also column 8, lines 44 to 57, which administers financial transactions to the subscriber's CATV account and which may include a credit card interface 102, see further figure 5. The various transactions are described in connection with the flowchart of figures 31A-C, see column 33, lines 24 onwards. Column 33, lines 43 to 44 in particular describes the subscriber wagering a sum which is checked against available credit. Additional gaming selections may be made, after which the accumulated cost is subtracted from the subscriber's credit. The subscriber must then confirm and authorize payment, as in figure 29, before gaming data is finally transmitted, see column 34, lines 28 to 41. Payment options include credit card, smart card or payment by instalment, column 31, lines 25 to 33. After the game is played any wins are credited to a smart card or cable interface, or, if above a limit, to the subscriber's bank or credit card account, column 35, lines 6 to 15.

3.2 The method of claim 1 differs from this known scheme in the bet verifying step, in which the casino relays the bet over an open information line between the casino and the player's third party financial institution (his bank) and a CPU at the institution checks the bet against the balance on the player's account at the institution, and in the transmitting step, in which the casino instructs the institution over the open line to credit or debit the account with any wins or losses in the game, and in the final step of keeping the two lines between casino and player on the one hand and the casino and the institution on the other open at the same time. In the system of claim 6 the main (host) computer has correspondingly configured means with additional means for keeping the lines from player to casino and casino to third party financial institution open at the same time.

3.3 Underlying the above differences is a different scheme of credit administration. Whereas in D1 a subscriber plays his bets off a credit account held with the gaming authority and administered by it, the present scheme allows the gaming authority to operate directly from the subscriber's bank account. In this way these financial tasks are delegated to the external financial institution. Importantly, any financial risk is also shifted onto the financial institution, see also the patent specification paragraph [0056].

This underlying scheme is inherently financial in nature, as are its benefits. The scheme is indeed a business scheme, which is per se excluded from patentability. This follows also from the fact that the scheme is not bound to any particular form of implementation. In principle it could also be realized by say a croupier who, having received a bet from a player, contacts the player's bank manager to check whether the bet is covered by sufficient funds in the player's account and, once the game is played, requests any gains to be credited to or losses to be debited from the account.

3.4 Adopting the approach indicated earlier, inventive step in the technical sense of Article 56 EPC cannot be based on this statutorily unpatentable business scheme, or the mere fact that it has been technically implemented. What is decisive in assessing technical inventive step of the claimed method and system is the particular technical form the implementation takes. This is to be assessed from the point of view of the relevant technically skilled person, who is a systems developer, specialized in the development of casino gaming systems, and who is tasked by the gaming authority or its financial analyst to implement the new business scheme. The objective technical problem that he faces can be formulated accordingly as how to implement in a remote live gaming system such as that of D1 a business or financial transaction scheme according to which bets can be played directly off a player's bank account rather than from a credit account held with the gaming authority.

3.5 In the Board's view the implementation as defined in claims 1 and 6 is entirely straightforward. The systems engineer asked to implement the above scheme would as a matter of obviousness simply transfer all those tasks that were hitherto performed in the accounting apparatus 24 in the CATV computer system shown in figure 4 of D1, such as checking a bet against balance before game play, and debit and credit transactions once the bet has been played, to the existing financial institution's CPU. Its specific purpose is to perform accounting computations and for the systems developer it is therefore a prime candidate for carrying out these tasks according to the scheme.

It will also be immediately obvious to the systems developer that he will need to establish a communications link or information line to connect the casino gaming system with the financial institution and its CPU, so that all relevant information can be exchanged. The accounting apparatus 24 is already shown as connected by various communication lines in figure 4 of D2 and all the skilled person needs to do is to adopt the same connection arrangement to the external institution CPU which, according to the business scheme that he must implement replaces the accounting apparatus. As he is implementing the scheme in a live, i.e. real-time gaming system it stands to reason that all system elements should be on-line and all lines therefore open during game play. This is the most obvious way of ensuring live, real-time gaming.

None of the features of this particular mode of implementation requires skills or abilities that go beyond those of the normally skilled systems developer defined above. The Board can but conclude that the particular implementation of the business scheme does not involve an inventive step.

3.6 That this particular mode of implementation would lead to a reduction in computational load and corresponding simplification of hardware and/or software on the casino side is an immediate consequence of the non-technical idea of delegating the accounting tasks away from it. This effect is intrinsic to the idea and arises automatically in any technical implementation of it. It does not represent a special technical effect that goes beyond what can be expected from its mere technical implementation.

Such a special technical effect also does not reside in the faster and continuous game play that is possible with open lines. If not a direct consequence of realizing the business scheme on a live, real-time gaming system it is an inevitable bonus effect, which cannot in itself justify inventive step.

Nor is there any special insight involved in simply adopting the sequence of separate steps of balance checking before game play and debiting/crediting after game play as already practised in D1. There is no technical prejudice or recognized technical incompatibility that would bar the systems developer from what is indeed the most obvious thing to do. Nothing prescribes the adoption of a sequence as in point-of-sale electronic transactions. These replace cash payment, and the skilled person recognizes that a different type of transaction such a placing a bet may well require a different sequence or set of steps.

Finally, it may well be that the underlying business scheme represents a paradigm shift from separate gaming and financing systems to a more unified system. Such a shift, however ingenious it may be, is not per se technical in nature and following established case law can therefore not form the basis for inventive step. For the same reason the fact that credit now acts as an external "control" parameter of the combined systems rather than an internal one of the gaming system is of no import. In either case it is nothing more than a non-technical variable within a system that it is in essence non-technical.

4. The Board concludes that the subject-matter of claims 1 and 6 of the main request lacks an inventive step. The Board thus confirms the Opposition Division's decision to revoke the patent.

ORDER

For these reasons it is decided that:

The appeal is dismissed.