T 0436/12 (Matching electronic proposals to electronic requests/GENESYS) of 31.5.2018

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 06024090.0 pursuant to Article 97(2) EPC on the ground of lack of inventive step (Article 56 EPC).

The following prior-art publications were cited in the first instance proceedings:

D1: IETF: "RFC 3261: SESSION INITIATION PROTOCOL"[Online], June 2002, Retrieved from the Internet:

URL:http://www.ietf.org/rfc/rfc3261.txt>,

D2: GB-A-2 386 994 and

D3: EP-A-1 624 410.

II. With the statement setting out the grounds of appeal, the appellant requested that the decision to refuse the application be set aside and that a patent be granted on the basis of a new set of claims, and that the Board either hold oral proceedings or confer with the appellant by telephone.

III. The appellant's arguments can be summarised as follows:

The amended independent claims had a basis in paragraphs 20, 21, 29, 30, and 37 of the published application.

The claims had been amended in order more clearly to show the technical character of the invention, and in order to add technical features.

The transmission, reception, and storage of data were technical. The matching of bids with bid requests was also technical because it involved querying a database.

There was a technical problem in that bid requesters and bidders might use idiosyncratic formats to enter their requests and bids. The technical contribution of the invention was to provide an interface, so that the requester (or bidder) only had to enter the data needed to define the request, the remainder being supplied by a template. This was a highly technical solution that supported a rich technical contribution. A mere automation of business-related steps would not comprise the use of a template.

IV. The Board arranged to hold oral proceedings and set out its provisional view in a communication sent with the summons.

V. The Board made the following provisional remarks:

Paragraphs 20, 21, 29,30, and 37 of the published application did not seem to provide a basis for the combination of features defined in the independent claims.

The Examining Division was entitled to approach the invention as an automation of non-technical steps, and had correctly applied that approach. The additional provision of interactive interfaces was inevitable, because the users had to be able to enter bids and requests; and, even assuming that the provision of a template was technical, it amounted to no more than computerised form-filling. The Board could not, therefore, see an inventive step.

VI. The appellant queried the date set for oral proceedings, because the European Patent Office had previously always observed the Bavarian state holiday of Corpus Christi, and subsequently indicated that the appellant would not attend. The appellant made no further substantive submissions.

VII. Oral proceedings were held as scheduled on 31 May 2018.

VIII. Claim 1 according to the sole request reads as follows:

A system for brokering an electronic bidding process over a network (102), comprising:

- a server (103) connected to the network (102), the server (103) having at least one input/output port (201a, 201b) for receiving over the network (102) bid requests (Rl, ..., Rn) from network-connected requestor devices (110, 111) and bids (Bl, ..., Bn) in response to the bid requests (Rl, ..., Rn) from network-connected bidder devices (108, 109);

- at least one memory utility (106, 107) coupled to the network-connected server (103) for storing the bid requests (Rl, ..., Rn) and the bids (Bl, ..., Bn) made in response to the bid requests (Rl, ..., Rn),

characterized by

- a set of machine-readable instructions for enabling automatic matching of the stored bids (Bl, ..., Bn) to the stored bid requests (Rl, ..., Rn), the set of machine-readable instructions being implemented as a software or firmware executable on the server (103),

- a database (105) with lookup data and rules stored therein for use in the matching process,

- a first client interface (112a, 112b) for generating and submitting the bid requests (Rl, ..., Rn) and for displaying results of matching; and

- a second client interface (113a, 113b) for generating and submitting bids (Bl, ..., Bn) and for displaying results of matching,

wherein a required bid template is provided by the server (103) to be used in the first interface (112a, 112b) at the network-connected requestor devices (110, 111) for providing bid requests (Rl, ..., Rn) to the server (103), and subsequently in the second interface (113a, 113b) at the network-connected bidder devices (108, 109) for providing bids (B1, ..., Bn) in response to the bid requests (Rl, ..., Rn), and wherein the server (103) accesses the memory utility (106, 107) to apply enterprise rules and algorithms to compare bids (Bl, ..., Bn) to requests (Rl, ..., Rn), and provides results of the comparisons back to the first and second interfaces (112a, 112b, 113a, 113b) at the requestor and bidder devices (110, 111, 108, 109).

Reasons for the Decision

1. The invention is concerned with matching requests with bids. A company, for example, might put out a tender for some particular work, while other companies make offers to do some work.

2. As explained in paragraph 0003 of the published application, this

... involves identification of certain standards of quality, procedure, and like attributes imposed by the project requestor [sic] on those entities that might be accepted to fulfill all or a portion of a project ... navigating through all of those requirements can be a challenge for some bidders. Moreover, the process of selecting which submitted bids fit all of those criteria is also a very challenging, complex, and time-consuming task.

3. The independent claims are directed to a mix of technical and non-technical features. The Board does not dispute that the system according to claim 1 and the method according to claim 12 appear in a technical context. The method can be considered to be performed by technical means, because it involves a computer with means for storing data, means for processing data and means for transmitting and receiving data, and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 "Auction method/HITACHI").

3.1 However, the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step (see T 641/00 "Two identities/COMVIK", Headnote I).

3.2 The Board agrees that the features outlined in point 2.2 of the decision "per se" pertain to an administrative method, i.e. to the non-technical part of the claim.

4. Claim 1 further defines a system with a server, requester devices, and bidder devices, connected by a network. Users enter requests using an interface, and bids using another interface. The interfaces also show the results of a matching process. The server provides the interfaces with a template for entering requests and bids. The bare bones of all this in claim 1 is as follows:

- a server ... receiving ... bid requests ... and bids in response to the bid requests ...;

- [a] memory utility for storing the bid requests and the bids ...,

characterized by

- ... matching of the stored bids to the stored bid requests ... on the server ... using a database with ... data and rules,

- a first client interface for generating and submitting the bid requests and for displaying results of matching; and

- a second client interface for generating and submitting bids and for displaying results of matching,

wherein a ... template ... for providing bid requests, and subsequently ... for providing bids in response to the bid requests,

and wherein the server accesses ... enterprise rules and algorithms to compare bids to requests, and provides results of the comparisons back to the first and second interfaces.]

5. By the priority date, the Internet was notorious, as was its use for making requests and bids, if only by email. Each requester and each bidder would use a device with an interactive interface for entering data. Requests and bids would ordinarily be stored and results would be sent back. Reference is made to prior art publication D2.

6. What the invention purports to add are templates and means for matching requests to bids. Previously, matching would have been done by the users. The means for matching are located in a server, and matches are found by looking up and applying "enterprise rules". The templates are provided from the same server.

7. The appellant argued that the invention did away with the time consuming process of matching requests and bids (see page 3 of the statement setting out the grounds of appeal). However, the step of matching and decisions leading thereto are in the non-technical domain (Article 52(2)(b) EPC) and do not support an inventive technical contribution. The problem of finding which bids match which requests is not a technical one. It is a mental act performed by the users, carried out by applying "enterprise rules". The technical problem is to do it automatically.

The fact that the steps of receiving, storing, matching and conveying are performed automatically, however, is an obvious consequence of using a computer system.

8. The skilled person would have had no choice about providing means for matching. Any technical solution must do so. Arguably, there would be choice about whether the "enterprise rules" should be explicitly stored so the means for matching could look them up, or whether they might be implicit in some processing that the means apply, but explicit storage would have been an obvious option. It would have the well-known advantage that the rules could be easily inspected and modified when necessary.

8.1 The contribution of the invention does not lie in an improved interactive interface as argued by the appellant (see e.g. pages 3 and 6 of the statement setting out the grounds of appeal). The man-machine interface used according to claim 1 is that of a general purpose computer which was notorious knowledge before the priority date. The contribution lies rather in the way of associating information related to requests and bids. Such data, however, in the Board's view, is not technical, since it is cognitive data, not functional data (see T 1194/97 Data structure product/PHILIPS, OJ EPO 2000, 525). Storage, selection and processing of such data is the implementation of an administrative measure, such as would be performed by a human when filling a form with paper and pencil, making use of general purpose computer functions (e.g. storing and retrieving information in electronic form) without creating a further technical effect.

9. The provision of a template in this regard is considered to be inevitable. Some technical means of performing the very challenging, complex, and time-consuming task (published application, paragraph 0003) of interpreting requests, bids, and requirements in idiosyncratic forms could be envisaged. The more prosaic expedient of requiring requests and bids be submitted on a standard form would be an obvious alternative option.

10. The Board is, therefore, of the view that the two purported differences are obvious measures (Article 56 EPC).

11. The appellant's arguments to the contrary provided with the statement setting out the grounds of appeal do not convince for the aforementioned reasons.

12. The Board therefore agrees with the decision under appeal that:

- the closest prior art can be considered a distributed information system (see point 2.3 of the decision), which was generally known before the priority date;

- the problem to be solved is the implementation of the claimed administrative concept of matching requests and bids on such a distributed information system;

- the person skilled in the art within the meaning of Article 56 EPC, a computer expert provided with the complete description of the non-technical abstract administrative concept, would have considered the claimed implementation obvious in view of the normal skills and the general knowledge of computer programming.

13. In the absence of any technical contribution beyond the straight-forward computer-implementation, the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC). The appellant's sole request, therefore, cannot be allowed.

Order

For these reasons it is decided that:

The appeal is dismissed.