T 0005/11 () of 15.12.2015

Summary of Facts and Submissions

I. The appeal concerns the decision of the examining division refusing the European patent application No. 01 913 300 for lack of novelty in relation to the former main request in view of document

D7: WO 98/58356

and for lack of clarity and insufficient disclosure in relation to the former first auxiliary request.

II. Oral proceedings before the board of appeal took place in the appellant's absence, of which the board had been notified beforehand.

III. The appellant requested in writing that the decision under appeal be set aside and that a patent be granted on the basis of the main request or - alternatively - on the basis of the first auxiliary request, both filed with letter dated 30 November 2010.

IV. In the communication pursuant to Article 15(1) RPBA accompanying the summons to attend oral proceedings, the board stated inter alia that it was of the provisional opinion that the subject-matter of claim 1 of the main request contravened Article 123(2) EPC. Further­more, it was stated that this issue was also concerned in relation to the first auxiliary request. The following document was cited and annexed to the communication:

D8: B. Schneider: "Applied Cryptography", second

edition, John Wiley, 1996, pages 223-225.

V. The wording of claim 1 of the main and first auxiliary requests is as follows (board's labelling "(i)" and "(ii)"):

Main request:

"1. An integrated transaction management system (100) operable to act as an intermediary between a plurality of financial institutions and a plurality of service end points, the transaction system comprising:

an application system (120), and

at least one interface server (130), said interface server providing interfaces between said application system and said plurality of service end point devices;

characterised in that:

the transaction management system further comprises a communication gateway (110) operable to communicate transaction data to and from said plurality of financial institutions,

(i) the communication gateway being operable to communicate transaction data to and from any of a plurality of financial data networks utilizing any of a plurality of electronic financial data transfer protocols as appropriate to each financial institution; and

the application system comprises a plurality of interchangeable, standard-interface modular financial service applications each operable to provide a different respective financial service, said application system communicating transaction data for at least one of the plurality of modular financial service applications to and from said plurality of financial data networks through said communication gateway."

First auxiliary request:

Claim 1 of the first auxiliary request differs from claim 1 of the main request in comprising the following additional feature:

(ii) "the transaction management system further comprises a hardware cryptography system (121) configured to allow the transaction data to be decrypted from a first encryption standard into a hardware form and then encrypted into a second encryption standard from the hardware form."

VI. The appellant argued essentially as follows in relation to the basis for the amendments:

In the main request and the first auxiliary request claim 1 had been amended to read "electronic financial data transfer protocols". This wording was supported by page 1, line 16; page 2, line 7; and page 5, lines 16-17.

Reasons for the Decision

1. Amendments

1.1 Main request

1.1.1 Claim 1 of the main request has been amended in that it is speci­fied that the communication gateway is operable to communicate transaction data to and from any of a plurality of financial data networks "utilizing any of a plurality of electronic financial data transfer proto­cols as appropriate to each financial institution" (see point V. above, feature (i)).

1.1.2 The appellant cited as a basis for the amendment page 1, line 16; page 2, line 7; and page 5, lines 16-17 of the application as filed.

However, the first passage merely relates to a general statement concerning certain companies whose business relates to the transfer of electronic financial data without any reference to the protocols used in the data transfer. The second passage relates to the advantage of the use of proprietary data transfer protocols in the prior art. Finally, in the beginning of the paragraph containing the third passage it is stated that the communication gateway 110 of the system of Figure 1 includes switching and monitoring hardware and software for directing communication relating to the user's banking services to a financial institution according to the communications protocols appropriate to that financial institution. Subsequently, it is mentioned that the communication gateway may include a number of communication channels and network connections using electronic funds transfer (EFT) standards, Internet-based standards, proprietary standards and other standards for secure data transfer (page 5, lines 18-21).

Similarly, on page 24, lines 3-10, it is mentioned that the gateway system 350 of the system of Figure 3 may include an EFT protocol module 351, an Internet protocol module 352 and a proprietary connection protocol module 353. Accordingly, in original claim 15 it is stated that the plurality of communication channels includes a standard EFT pipeline, a B2B connection using Internet transaction protocols, and a dedicated line connection.

1.1.3 In view of the above it is considered to be disclosed in the original application documents that the communi­ca­tion between the transaction management system and the financial institutions is based either on Internet proto­cols, the electronic funds transfer (EFT) protocols or proprietary protocols.

However, there is no disclosure that the communica­tion gateway communicates with the plurality of financial networks using any of a plurality of elec­­tronic finan­cial data transfer protocols as appropriate to each finan­­cial institution. This is not considered to be im­plicit in the original application documents, either. Therefore, feature (i) is not directly and unambiguously derivable from the application as filed.

Consequently, the subject-matter of claim 1 of the main request extends beyond the content of the application as filed contrary to the requirements of Article 123(2) EPC.

1.2 First auxiliary request

Claim 1 of the first auxiliary request differs from claim 1 of the main request in comprising the additional feature of a hardware cryptography system (see point V. above, feature (ii)). In particular, claim 1 of the first auxiliary request contains feature (i), which was found to contain subject-matter that is not directly and unambiguously derivable from the application as filed.

Therefore, the subject-matter of claim 1 of the first auxiliary request extends beyond the content of the application as filed contrary to the requirements of Article 123(2) EPC.

1.3 Conclusion

As none of the present requests fulfills the require­ments of Article 123(2) EPC the appeal is to be dis­missed.

2. Novelty / inventive step

2.1 In the following the board notes by way of an obiter dictum that the subject-matter claimed according to the main request and first auxiliary request lacks novelty and inventive step, respectively.

2.2 Main request - novelty

The examining division held in the appealed decision that the subject-matter of claim 1 of the former main request lacked novelty over document D7 (point 2 of the Reasons).

The appellant argued that document D7 disclosed neither feature (i) nor "a plurality of interchangeable, standard-interface modular financial service applications".

However, the board agrees with the examining division that application modules for providing financial services, e. g. depository services, loan management, payment and transfer capabilities, are disclosed in document D7 on page 18, third paragraph; page 22, first paragraph; and page 54, lines 12-21.

As to feature (i), various legacy systems are described on page 29 of document D7. In particular, the National Automated Clearinghouse Association (NACHA), the Society for Worldwide Interbank Financial Telecommunication (SWIFT), and Electronic Data Interchange / Electronic Funds Transfer (EDI/EFT), are mentioned as examples. Specific protocols for transferring financial data are utilized by these legacy systems. It is also stated that, with the system of document D7, it was "possible both to add to or modify the interfaces to an external system with minimum changes, and to integrate new technologies seamlessly" (page 29, last sentence of paragraph 3). From this it follows that it is not necessary that the financial institutions adapt their systems to conform to the system of document D7 (see also D7, pages 94-95). Consequently, feature (i) is considered to be disclosed in document D7.

Therefore, the subject-matter of claim 1 of the main request lacks novelty over document D7.

2.3 First auxiliary request - inventive step

The subject-matter of claim 1 of the first auxiliary request differs from the transaction management system known from document D7, which is regarded the closest state of the art, in that the system further comprises a hardware cryptography system configured to allow the transaction data to be decrypted from a first encryption standard into a hardware form and then encrypted into a second encryption standard from the hardware form (see point V. above, feature (ii)).

It is already known from document D7 to encrypt / decrypt the transferred data (see the section "Network Security" on pages 108-111). The objective technical problem is therefore merely to implement this security measure. The solution of feature (ii) is however such a security measure that is well-known to the skilled person (see document D8, pages 223-225). It would therefore be obvious for the skilled person to implement the encryption / decryption of the transferred data using specialized hardware thereby arriving at the subject-matter of claim 1 of the first auxiliary request, which therefore lacks inventive step (Article 56 EPC 1973).

Order

For these reasons it is decided that:

The appeal is dismissed.