T 1430/13 (Contactless payment card / Mastercard) of 24.5.2019

Summary of Facts and Submissions

I. This appeal is against the decision of the Examining Division to refuse European patent application 05773486.5. The application was refused by reference to the Examining Division's communication dated 14 May 2012. The grounds for refusal were that claim 1 did not comply with Articles 52(1) (novelty and inventive step) and 123(2) EPC.

II. In the statement of grounds, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of a single request, filed at the same time. The appellant identified the claims of this request were as those underlying the impugned decision. Oral proceedings were conditionally requested.

III. The appellant's substantive request has remained unchanged and Claim 1 reads as follows:

A method for integrating proximity payment card transaction parameters for a payment-by-proximity-card transaction in industry standard ISO 7811 formatted magnetic card data structures, wherein said magnetic stripe card data structures comprise Track 1, Track 2 and Track 3 magnetic stripe card data structures, such that said proximity payment transaction parameters are in a format compatible with an electronic payment system infrastructure for processing magnetic stripe card payment transactions, the method comprising the steps of:

(a) providing in a data field on a proximity payment card a static bitmap which identifies unused positions in a discretionary data field of said magnetic stripe card formatted data structure associated with said proximity payment card; and

(b) the proximity payment card contactlessly transmitting said bitmap to a proximity payment terminal for placing the proximity payment card transaction parameters in the discretionary data field of said industry standard magnetic stripe card formatted data structure at positions identified by the bitmap,

the resulting electronic proximity payment transaction processing message generated by said proximity payment terminal using said bitmap is in a standard magnetic stripe format compatible with electronic payment system infrastructure for processing magnetic stripe card payment transactions and so that the payment-by- proximity-card transaction is processed by said electronic payment system infrastructure as if the payment-by-proximity-card transaction is a standard magnetic stripe card payment transaction.

IV. In a communication in preparation of oral proceedings, the Board raised objections of lack of clarity and support (Article 84 EPC), added subject-matter (Article 123(2) EPC), and inventive step (Article 56 EPC).

V. As regards lack of clarity, the Board's objection was as follows:

It appears that the method of claim 1 is solely limited by the features labeled as (a) and (b). The introductory paragraph includes references to industry standard ISO 7811 as regards the data structures and further stipulates that the proximity payment transaction parameters are in a format "compatible" with an electronic payment system infrastructure for processing magnetic stripe card payment transactions. The method is not limited by this. Further, the various parts of ISO 7811 do not seem to relate to data structure and so the limitation the appellant seeks to define is unclear. It is also unclear because there have been various revisions, some after the priority date. Therefore, the reference to ISO 7811 appears to introduce non-compliance with Article 84 EPC as regards clarity."

VI. As its only response to the summons, the appellant submitted a letter in which the request for oral proceedings was withdrawn and "an appealable decision on the state of the file" was requested.

VII. Accordingly, the oral proceedings were cancelled.

Reasons for the Decision

The appellant did not contest any of the objections raised in the Board's communication. Furthermore, by withdrawing its request for oral proceedings and submitting a request for a decision on the file as it stands, the appellant expressly waived any remaining chance to argue its case, orally or in writing. The Board sees no reason to depart from its preliminary opinion. Therefore, claim 1 does not comply with Article 84 EPC for the reasons set out in point V above, and the appeal cannot be allowed.

The remaining objections (see point IV above), notwithstanding their continuing relevance, need not be further discussed.

In respect of the request for an appealable decision, decisions of the Boards of Appeal are not appealable. A limited review procedure is, however, foreseen in Article 112a EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.