T 0934/13 (Information processing server, and information processing method / … of 20.6.2018

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division, refusing European patent application No. 06797440.2 pursuant to Article 97(2) EPC on the ground of lack of inventive step (Article 56 EPC), citing EP-A-1 610 245 (D1) as an example of a known computer network.

II. In the statement setting out the grounds of appeal, dated 15 March 2013, the appellant requested that the appealed decision be set aside and that a patent be granted on the basis of the main request or one of the first to third auxiliary requests, all submitted with the statement setting out the grounds of appeal. The main request essentially corresponded to the main request before the examining division, the first to third auxiliary requests corresponded to the first, second and fourth auxiliary request before the examining division. Oral proceedings were requested on an auxiliary basis.

III. In the annex to the summons to oral proceedings, the Board expressed its preliminary opinion that all requests lacked inventive step (Article 56 EPC). The Board also introduced US 2006/0084410 (D2) into the proceedings according to Article 114(1) EPC.

IV. In a reply dated 16 May 2018, the appellant reordered the requests and provided further arguments in favour of an inventive step. The appellant requested that the decision under appeal be set aside and a patent be granted on the basis of the main request or, alternatively, one of auxiliary requests 1-3, all filed with the letter dated 16 May 2018 (previously as main request, and third, first and second auxiliary requests, respectively).

V. Oral proceedings were held on 20 June 2018. After due consideration of the appellant's arguments the Chairman announced the decision of the Board.

VI. Independent claim 5 according to the main request reads as follows:

"5. An information processing method performed by an information processing server (2) used in an information processing system comprising a monetary terminal (3) that is specified by a monetary terminal ID associated with an advertising information destination, that stores an amount of monetary value as electronic data, and that is configured to change the stored amount using amount changing information, an amount changing information input terminal (5) that inputs the amount changing information into the monetary terminal (3), and an information processing server (2) that is configured to communicate with the monetary terminal (3) and the amount changing information input terminal (5),

wherein the information processing server (2) comprises advertisement transmitting means, associating means, ID information receiving means, log storage means (15), checking means, and amount changing information transmitting means,

wherein the information processing method comprises:

an advertisement transmitting step of transmitting the advertising information to the advertising information destination by the advertisement transmitting means;

an associating step of associating the monetary terminal ID associated with the advertising information destination to which the advertising information is transmitted, and an advertising ID of the advertising information to be transmitted with each other by the associating means to store them in advertisement destination storage means (13);

an ID information receiving step of receiving from the amount changing information input terminal (5) log information including the monetary terminal ID of the monetary terminal (3) that has inputted the amount changing information, and advertising ID specifying information for specifying the advertising ID, by the ID information receiving means;

storing the monetary terminal ID of the monetary terminal (3) in the log storage means (15);

a checking step of checking a first group composed of the monetary terminal ID and the advertising ID stored in the advertisement destination storage means, and a second group composed of the received monetary terminal ID stored in the log storage means (15) and the advertising ID specified by the received advertising ID specifying information, by the checking means; and

an amount changing information transmitting step of transmitting to the monetary terminal (3) specified by the associated monetary terminal ID the amount changing information for adding a prescribed amount, by the amount changing information transmitting means, if the first group and the second group are coincident with each other in the checking means."

Claim 1 is directed to a corresponding information processing server.

Claims 1 and 5 of auxiliary request 1 add to the associating step that "the associations being narrowed down corresponding to target information included in an advertisement request received from an affiliated store server." In addition, claim 5 of auxiliary request 1 adds to the end of the associating step "wherein during the advertisement transmitting step the advertising information is transmitted to the advertising information destination stored in the advertisement destination storage means (13) only".

Claims 1 and 5 of auxiliary request 2 add at the end of the corresponding claims of the main request "the amount changing information including a link for connecting to a website established by the information processing server (2)".

Claims 1 and 5 according to auxiliary request 3 add to the main request that the ID information receiving means are configured to receive the log information by "batch processing".

VII. The appellant argued essentially that the claimed invention allowed a user to purchase goods advertised in a store without revealing his or her identity. This was achieved, because of a synergetic effect between a value stored in the mobile phone (serving as an electronic wallet and having a monetary terminal ID) and a sales promotion (e.g. using email function). The terminal ID allowed verification that the user had previously received the advertisement in an electronic message based system. Cashback could be achieved even though there was no continuous server connection of the monetary terminal (e.g. mobile phone) or the amount changing information input terminal (e.g. store terminal). The method could be implemented on a central server and there was no need to implement it on the store terminal. This enabled it to be implemented in a cheap and efficient way having technical advantages in comparison to the disclosure of D1.

Reasons for the Decision

1. The claimed invention is directed to a cashback scheme which is implemented on an electronic payment infrastructure. The Board essentially considers the cashback scheme to be comparable to traditional cashback or payback schemes using a cashback card and vouchers.

2. The assessment of inventive step in the decision under appeal considered a general purpose networked computer as described in the description of the application to be the closest prior art, but also contained an inventive step objection based on D1 as closest prior art. In the statement setting out the grounds of appeal and in its letter dated 16 May 2018, the appellant only argued against the decision on the basis of D1 as closest prior art. The Board in the appeal proceedings dealt with the appellant's arguments based on D1. However, in its preliminary opinion and during the oral proceedings the Board regarded the objection in the contested decision based on a general purpose networked computer as closest prior art also to be a valid approach for assessing inventive step.

Main request

3. Article 56 EPC - Inventive step

3.1 The independent claims are directed to a mix of technical and non-technical features. The Board does not dispute that the server according to claim 1 and the method according to claim 5 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").

3.2 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 essentially concurs with the reasoning in the contested decision. In particular, the Board agrees that the cashback concept defines a non-technical administrative scheme, i.e. it is the non-technical part of claim 1 or claim 5.

In the Board's view the cashback scheme according to claim 5 (see also figure 3 of the application) could be realised without any electronic processing and achieve the same effects, in particular the anonymity of the purchaser as follows (the terms below in brackets refer to the corresponding features of the claims):

A store issues an advertisement (advertisement request) and sends it to a cashback provider (electronic money server), who looks up a card index with potential customers (user information database), sorts out cards matching the advertisement criteria (narrowing down), and sends a voucher to each potential customer/user (advertising mail transmission). Each user has been equipped with an individualized cashback card (electronic money terminal with terminal ID). A user purchasing the advertised product presents the voucher to the store (advertising ID), which registers the client's cashback identification (log information). At the end of the day, each store sends the collected cashback identification information to the cashback provider, who compares this information with the index cards sorted out earlier (matching first and second groups). In case of a match, it is concluded that the client purchased the product in reaction to the advertisement and a cashback (amount changing information) is provided by issuing a monetary voucher to the client or, alternatively, by crediting his cashback account (adding a prescribed amount).

The Board has no doubts that such a cashback scheme was pre-existing (e.g. Payback), but this question is not decisive, since such a scheme is non-technical anyway and, hence as mentioned above, cannot provide an inventive technical contribution.

3.4 The Board does not consider anonymity to be per se a technical effect. Furthermore, the Board does not see that the claimed system provides improved data security either, as was alleged by the appellant during oral proceedings. While each store no longer knows about the identity of its purchasers (given that the terminal IDs are kept secret which is not specified in the independent claims), the result of the claimed cashback scheme is that a central entity (electronic money server) has knowledge about the purchases of all users in the system. This shift from a distributed knowledge over a plurality of stores to combined knowledge in a central entity rather raises concern regarding data security policy and, from a technical perspective, does not involve an inventive technical contribution.

3.5 The appellant further argued that the invention was based on the basic idea that only users matching the target information should receive emails, while other users should not (see e.g. page 4, second paragraph of the statement setting out the grounds of appeal). This allegedly solved the problem of reducing email traffic without any loss of information.

3.6 The contribution of the invention, however, does not appear to lie in an improved and more efficient transmission of data as argued by the appellant. In contrast to, for example, data compression or a more efficient protocol, which allow the same amount of data to be transmitted in a more efficient way, the transmission used according to claim 1 or claim 5 is that of a general purpose computer system which was notorious knowledge before the priority date. What makes the difference is the decision not to send the information to a certain group of users (second group) depending on parameters, which the Board considers to depend on business related non-technical information. The contribution lies rather in the way of associating information with existing user data, namely advertisement target information on the one hand, and a purchase history of users on the other hand. 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). The same is true for the amount changing information according to the last feature of claims 1 and 5. Storing, processing, comparing or transmitting such data are self-evident implementations of the non-technical activities of a business person or administrator when matching purchase history data with advertisement target data or when performing cashback, making use of general purpose computer functions without creating a further technical effect.

The fact that the steps of storing, processing, comparing or transmitting are performed automatically is an obvious consequence of using a computer system.

3.7 The appellant further referred to case T 258/03, point 5.8 of the Reasons, and argued that the steps of the method of claim 5, which were not shown in D1, were designed in such a way as to be particularly suitable for being performed on a server (see page 5, section I.4.3 of the statement setting out the grounds of appeal) and therefore had a technical character and could not be ignored when assessing inventive step (see page 7, third paragraph of the statement setting out the grounds of appeal).

3.8 In the Board's view, the steps specifying the cashback scheme of claim 5 do not require technical considerations, since they do not require a change of the working principles of the computer or computer networks. Those steps would be performed the same way by a human when looking for matches and sorting out users who do not match the advertisement ID (see point 3.3 above). Implementing those steps on a computer system as commonly known in the art or as disclosed in D1, the Board regards as routine programming measure. In particular, D1 is referred to by way of example that the use of a mobile phone as an electronic wallet in a networked computer system was known in the art before the priority date of the present application (see D1, figures 1 and 3). The skilled programmer would implement the individualised payback card in form of a terminal ID and the voucher in form of an advertising ID without the need for inventive skills. The application does not give any details of any technical hurdles which would have to be overcome in this regard.

3.9 The Board is not convinced that the alleged synergetic effect between a value stored in the mobile phone (serving as an electronic wallet and having a monetary terminal ID) and a sales promotion (e.g. using email function) is actually achieved. Rather it is merely a juxtaposition of an electronic wallet and emails. The Board does not see any combinative effect going beyond the dedicated effect of using emails for communication and of using an electronic wallet, which were each well known in the art.

Furthermore, the conditions for checking for matches only concern non-technical data like customer-ID and advertisement-ID.

3.10 The Board therefore agrees with the decision under appeal that the closest prior art can be considered to be a general purpose networked computer system (see point 1.2 of the contested decision), which was generally known before the priority date; alternatively and for the purpose of example, such a computer system was disclosed in D1. The problem to be solved is the implementation of the claimed business related administrative cashback concept on such a 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 considered the claimed implementation obvious in view of the normal skills and the general knowledge of computer programming.

3.11 The appellant's arguments to the contrary do not convince for the aforementioned reasons.

3.12 In the absence of any technical contribution beyond the straight-forward computer-implementation, the subject-matter of claims 1 and 5 does not involve an inventive step (Article 56 EPC).

Auxiliary request 1

4. Claim 1 of this request adds to claim 1 of the main request that the associations are narrowed down corresponding to target information included in an advertisement request received from an affiliated store server.

4.1 The Board agrees with the contested decision that the additional feature merely further refines the business related non-technical cashback concept and, hence, forms part of the specification requirement that the skilled person is provided with for implementation. Therefore, no inventive technical contribution is involved.

4.2 For the same reason, the Board does not agree with the appellant's argument that the narrowing down directly results in a technical effect. Rather, it further refines the basic administrative idea of matching advertisement IDs and target group. The Board regards implementing the step of narrowing down on a computer system as commonly known in the art or as disclosed in D1, as a routine programming measure. The application does not give any details of any technical hurdles which would have to be overcome in this regard.

Auxiliary request 2

5. Claim 1 of this request further adds to claim 1 of the main request that the amount changing information includes a link for connecting to a website established by the information processing server.

5.1 The Board agrees with the contested decision that the information referred to by such a link (URL) is non-technical. It is considered to be part of the non-technical approach of providing cashback.

5.2 D1 already discloses the use of a URL of a service site ("Web site for providing the service on the electronic money") of the electronic-money server (see e.g. [0078]). When looking for a flexible way of implementing a cashback, the skilled person knowing about this well-known standard technique would therefore consider the use of URLs for this purpose without the need for inventive skills.

Auxiliary request 3

6. Claim 1 of this request further adds to claim 1 of the main request that the ID information receiving means are configured to receive the log information by batch processing.

6.1 This feature goes beyond the pure non-technical business concept, as it concerns an implementation detail. The Board does not doubt that batch processing in general was known in the art. However, the appellant challenged this argument of the contested decision (see point 5 of the decision) and complained that the examining division failed to provide any proof in this regard (see page 10, third paragraph of the statement setting out the grounds of appeal). In fact, neither D1, nor any of the JP publications cited in the International Search Report (ISR) disclose such a batch processing.

6.2 In reaction to the appellant's argument, the Board introduced D2 into the proceedings (Article 114(1) EPC) by way of example that it was known in the art to perform financial processes either in real-time or as batch processing (see [0022] "The captured billing data 44 or 46 may be delivered to a network operator computer either in a batch (e.g. file-based) or real-time (e.g. streaming) format"; see also [0040]). Even the description of the application itself describes as pure alternatives performing cashback either in real-time or by batch processing (see [0025]). It is therefore considered to be an obvious design alternative within the common general knowledge of the skilled person to implement a batch processing instead of real-time processing.

6.3 The appellant argued that the technical effect of this feature was that a continuous server connection of the store terminal was not necessary. Starting from D1, the skilled person would not implement a batch processing, because in a payment process it was generally required that money values are immediately adjusted in case of a payment.

6.4 The Board does not agree with this point of view. D1 discloses an infrastructure from which the skilled person starts when trying to implement the business related concept provided by the non-technical person. However, it is not the concrete payment process of D1 that the skilled person would consider in this regard, and he consequently would not be limited by shortcomings of this payment process in D1 when implementing the claimed business related concept.

In the Board's view the appellant's arguments do not overcome the objection in the contested decision that the batch processing alternative actually does not provide any effects other than those which a skilled person would appreciate in advance.

7. Accordingly, neither the subject-matter of the claims of the main request nor of any of auxiliary requests 1-3 involves an inventive step.

Order

For these reasons it is decided that:

The appeal is dismissed.