T 0744/12 (EXCHANGE OF FINANCIAL INSTRUMENTS/CREDIGY) of 1.12.2017

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division, posted on 22 September 2011, refusing European patent application No. 06720973.4 pursuant to Article 97(2) EPC on the ground of lack of inventive step (Article 56 EPC).

II. In the statement setting out the grounds of appeal, the appellant requested that the appealed decision be set aside and that a patent be granted on the basis of the set of claims of the main request or of the first or second auxiliary requests, all submitted with the statement setting out the grounds of appeal. Oral proceedings were requested on an auxiliary basis.

III. In an annex to the summons to oral proceedings, the Board expressed its preliminary opinion that all requests lacked inventive step (Article 56 EPC).

IV. Claim 1 according to the main request reads:

"1. A system supporting an online marketplace of transacting for a financial instrument, comprising:

a reporting agency database (104), including account data related to the financial instrument, wherein the account data is personally identifiable in the reporting agency database (104);

an account database (106); and

a processor configured to carry out the steps of:

receiving the account data from the reporting agency database (104) to the account database (106), wherein the received account data in the account database (106) is not personally identifiable but is related to the account data in the reporting agency database (104) by one or more unique identifiers;

selecting a financial instrument that satisfies a selection criteria;

outputting data indicative of an offered transaction for at least one selected financial instrument; and

in a case of an acceptance of the offered transaction:

receiving the acceptance to the offered transaction; and

performing the accepted transaction for the at least one selected financial instrument."

The Board could not identify any substantial difference in claim 1 according to the first auxiliary request in comparison with claim 1 of the main request.

The additional features of claim 1 according to the second auxiliary request are listed in section 6 below.

V. The appellant essentially argued that the invention did not claim just the protocol of the transactions, but rather the unique logic implemented by the databases and operations carried out by the processor. The invention went beyond a mere automation of mental acts by addressing issues like computational intensity and transaction security. The problem to be solved was phrased as "how to enable an integration of account data available in a reporting agency database into transaction of financial instruments based at least in part on data available in the account data, and thus the data available in the reporting agency database" and was said to be solved by providing a more efficient database management scheme.

VI. Oral proceedings were held in absentia on 1 December 2017. After consideration of the appellant's written arguments the Chair announced the decision.

Reasons for the Decision

1. Non-attendance at oral proceedings

Nobody attended on behalf of the appellant. The Board verified that the appellant had been duly summoned: with fax dated 31 October 2017, the appellant had confirmed receipt of the summons to the oral proceedings.

Article 15(3) RPBA stipulates that the Board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned who may then be treated as relying only on its written case.

Hence, the Board was in a position to announce a decision at the end of the oral proceedings.

2. The assessment of inventive step in the decision under appeal considered a general purpose networked computer as described in the description of the present application to be the closest prior art (see point 1.3 of the decision). Document D1 (WO 00/67177 A") was referred to merely for showing that the use of unique identifiers in place of personally identifiable identifiers was notoriously known in the art (see last par. of point 1.7.2 of the decision under appeal).

3. Article 56 EPC - Inventive step

The Board agrees with the decision under appeal that the subject-matter of independent claim 1 lacks an inventive step. The Board essentially concurs with the reasoning in the contested decision.

3.1 The claim is directed to a mix of technical and non-technical features. The Board does not dispute that the invention according to claim 1 appears in a technical context. The claimed system 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").

3.2 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).

3.3 The Board agrees with the Examining Division that the features outlined in point 1.3.2 of the decision pertain to an administrative method "per se", i.e. to the non-technological part of claim 1.

3.4 The contribution of the invention does not lie in a more efficient database management scheme (as argued by the appellant, see bottom of page 3 of the statement setting out the grounds of appeal). The infrastructure used, according to claim 1, is that of a general purpose computer, which was common general knowledge before the priority date. The contribution lies rather (see description page 3, lines 3 to 12, of the published application) in the way accounts from multiple sources are consolidated to facilitate servicing efficiency, to reduce transaction costs, and to analyse account data with respect to business or legal rules. The type of data processed, in the Board's view, is not technical either, since it is cognitive, not functional, data (see T 1194/97 Data structure product/PHILIPS, OJ EPO 2000, 525). Storing, selection and processing such data are administrative measures, such as would be performed by a human being when consolidating accounts, making use of general purpose computer functions (e.g. storing and retrieving information and image content in electronic form) without creating a further technical effect.

3.5 The technical problem of the invention is regarded as how to implement an administrative method on a general purpose data processing system.

3.6 The fact that the steps of retrieving, selecting and creating are performed automatically is an obvious measure when using a computer system.

3.7 Claim 1 is drafted in such a way that it describes the aim to be achieved by using a computer, but does not give the technical implementation details of how such a computer has to achieve this goal.

3.8 The Board therefore agrees with the decision under appeal that:

- the closest prior art can be considered to be a general purpose, networked computer (see point 1.3.3 of the decision), which was generally known before the priority date;

- the problem to be solved is the implementation of an administrative method (see point 3.3 above and points 1.3.2 and 1.3.4 of the impugned decision) on such a general purpose networked computer;

- 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 found the claimed implementation obvious in view of his normal skills and general knowledge of computer programming.

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

The appellant referred to decision T 258/03 (Auction method / HITACHI, OJ EPO 2004, 575), but the Board does not see how that decision speaks against the reasoning of the contested decision. In the present case, it is possible to divide the features of the claimed subject-matter into those contributing to the technical character and non-technical features (see points 1.3.2 and 1.3.3 of the decision under appeal).

Decision T 1053/98, not published in the OJ EPO, to which the appellant also refers, is in line with the COMVIK-approach (T 641/00 Two identities/COMVIK, OJ EPO 2003, 352) since a non-technical constraint can be part of the problem to be solved, as it is not part of the technical solution.

Decision T 1002/92, Queueing system/PETTERSSON, OJ EPO 1995, 605, deals with the whole contents approach to technical character. In the present case, however, no objection for lack of technical character was raised. In contrast, the subject-matter of claim 1 has explicitly been regarded as technical (see e.g. point 3.1 above).

3.10 The Board does not agree with the technical problem formulated by the appellant. The appellant did not identify distinguishing technical features on which such a problem could be based.

In particular, the Board does not see, from the wording of claim 1, that there are technical features providing for improving computational intensity and transaction security as argued by the appellant.

3.11 The Board agrees with the decision under appeal as to the question of whether or not data are made available to a business entity in a personally identifiable manner does not relate to a technical problem, but to a business decision. While the protection of personally identifiable data could indeed involve technical considerations (e.g., data encryption, secure data transmission, etc.) none of said considerations are envisaged in the application. The solution proposed by the invention, namely to use unique identifiers not revealing personal information, circumvents the technical problem itself and was everyday knowledge. Reference was made, for example, to the use of pseudonyms or anonymous identifiers for examination papers and "double-blind" reviews (see point 1.7.1 of the impugned decision). The appellant did not address this argument of the contested decision.

3.12 The Board further agrees that the technique of using unique identifiers in place of personally identifiable identifiers was notoriously known in the art and everyday knowledge (e.g., the usage of pseudonyms). In addition, it does not solve a technical problem but is derived directly from business considerations, i.e. a business entity is not given access to personally identifiable data.

3.13 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).

First auxiliary request

4. The Board could not identify any substantial difference in claim 1 according to this request in comparison with claim 1 of the main request. The above reasoning, therefore, applies.

Second auxiliary request

5. The objection for lack of clarity (Article 84 EPC) raised in point 3.2 of the contested decision has been overcome by deletion of the feature in question.

6. Claim 1 according to the second auxiliary request essentially differs from the main request in that:

- the processor performs the selecting step by performing the steps of

- displaying, on a user interface, a selection criteria listing at least one parameter associated with the account data;

- receiving a system user input of a parameter selection;

- receiving a system user input of a value for the selected parameter;

- updating the account database with the selection criteria;

- retrieving account data from the account database;

- processing the selection criteria against the retrieved account data;

- creating selection flags based on selection criteria; and

- updating the account database with the created selection flags.

6.1 The Board agrees with the decision under appeal (see point 3.6) that the additional features are directly derivable from the business concept of selecting a financial instrument satisfying selection criteria and the technical considerations involved do not go beyond well-known implementation options regarding a user interface for inputting or selecting parameters and the use of databases for retrieving business related financial data according to selected business criteria.

7. Thus, none of the requests involves an inventive step and the requirements of the EPC are not fulfilled.

Order

For these reasons it is decided that:

The appeal is dismissed.