T 1630/13 () of 23.10.2015

Summary of Facts and Submissions

I. The appeal is against the refusal of application No. 10 181 830 for added subject-matter, Article 123(2) EPC (main request) and for lack of an inventive step, Article 56 EPC (auxiliary request) over documents:

D5: US 5 144 680 A

D10: JP 1 191 283 A and corresponding Patent Abstracts of Japan

D11: DE 296 04 012 U

II. The present application is a divisional application of earlier application No. 08 150 792, which in turn is a divisional application of earlier application No. 97 934 782.

III. With the statement setting out the grounds of appeal of 8 July 2013, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the following:

Claims 1 to 6 according to the appellant's "Main request" filed with the statement setting out the grounds of appeal.

IV. Reference is furthermore made to the following documents:

D7: US 4 975 969 A

D12: US 4 993 068 A.

V. A summons to oral proceedings appointed for 12 November 2015 was issued by the board, provided with an annexed communication in which a provisional opinion of the board on the matter was given.

In particular, the appellant was informed that it appeared that the subject-matter of claim 1 lacked an inventive step in the sense of Article 56 EPC 1973 both over document D7 in combination with document D5 and over document D5 in combination with document D12.

VI. With a fax dated 7 October 2015, the board was informed that the appellant did not intend to attend the oral proceedings. It was asked that a decision be taken based on the prosecution file as it was.

No arguments were provided by the appellant in response to the board's observations.

VII. The oral proceedings were accordingly cancelled.

VIII. Claim 1 of the appellant's main request reads as follows:

"A method for personal identification of a user, comprising the steps of

- providing an identity card with one or more authenticity features, said identity card comprising an information carrier having an electronically accessible memory, capable of storing personal user data in digital form, and a central processing unit,

- recording personal user data on said identity card, which personal user data comprise personal credentials of the user as well as physical characteristics parameter data of the user;

- capturing on site physical data obtained on site from the user;

- deriving physical characteristics parameter data from said captured physical data as obtained on site from the user;

- on board processing of said generated physical characteristics data on board of said identity card, including the steps of:

- comparing said derived physical characteristics parameter data with said physical characteristics parameter data that are stored in said memory of said identity card; and

- providing a result that indicates if the stored physical characteristics parameter data match the obtained physical characteristics parameter data;

and

- revealing said personal credentials of the user to an observer."

IX. The appellant submitted with the statement setting out the grounds of appeal in substance the following arguments:

Claim 1 as amended was based on claims 1, 4, 7 and 8 as originally filed and on the originally filed description, in particular pages 2, 3, 5, 6, 7 and 9.

Accordingly, it complied with Article 123(2) EPC.

Regarding inventive step, document D7 had more features in common with the invention than document D10. Accordingly document D7 was deemed to be the closest prior art.

Like the invention, document D7 aimed to provide a high degree of security and reliability. However, to be accepted by the public a further important aspect was privacy, especially in an environment were both his personal credentials as well as his unique biometric characteristics were at stake. Another issue raised by D7 was the limited processing power of a conventional identification method or system.

Starting from D7 as closest prior art, the objective technical problem to be solved by the invention could, hence, be identified as protecting sensitive personal data and the user's privacy, in order to gain acceptance by the greater public, in an identification system or method that stored personal credentials of an individual as well as his unique physical characteristics, and to improve the scaling capabilities of such a method or system.

This aim was achieved in that, according to the invention, the sensitive personal data only needed to be stored on board of the identity card and, moreover, the actual verification was being handled completely on board of the card by the on board microprocessor. As a result, no sensitive personal data had to leave the card or had to be stored in a remote database, which protected the privacy of the users. Moreover, because the actual processing was being handled by the card itself, as the number of concurrent users increased, so would the number of processor cards. As result, more processing power would become available and the available processing power of the method would, hence, scale automatically with the demand.

The question to be answered was whether it would have been obvious to a skilled person, in view of D7, to adopt on board storage and matching as taught by the invention.

In the present case there was no such hint or incentive in the prior art that would have prompted a skilled person that on board matching would solve the above-formulated objective technical problem. Apart from D5, there was even no example in the prior art of a chip card performing on board matching of physical characteristics data. D5, however gave no hint or suggestion that this would protect the privacy of the user's or that this would improve the scalability of an identification system.

The invention moreover offered synergetic advantages in particular in terms of enhanced privacy, security, interoperability and scalability. Moreover, it satisfied a long felt need.

Accordingly, the invention was in fact non-obvious at the priority date and, hence, indeed complied with the requirements of novelty and inventive step.

Reasons for the Decision

1. The appeal is admissible.

2. Amendments

Claim 1 as amended is directed at a method for personal identification of a user. The claims as originally filed on the other hand were directed at an identity card, an information carrier for the identity card and a housing for the use of the identity card. The claimed method, however, corresponds to the use of the identity card as implied by the original description and claims. The conversion into a method claim is, therefore, not considered to extend beyond the content of the application as filed.

As to the individual features, claim 1 as amended is based on claims 1, 4, 7 and 8 as originally filed and on pages 2, 3, 5 to 7 and 9 of the originally filed description, as argued by the appellant.

Accordingly, claim 1 as amended complies with Article 123(2) EPC.

Claim 1 as amended also complies with Article 76(1) EPC for the same reasons above, as the description and claims of the earlier applications are essentially identical to those of the present divisional application.

3. Novelty

3.1 Document D7 discloses a method of uniquely identifying individuals by obtaining and characterizing unique physical characteristics of the individual.

In particular, document D7 discloses, using the terminology of claim 1, a method for personal identification of a user, comprising the steps of

- providing an identity card (85) with one or more authenticity features (cf column 9, lines 53 to 65),

- said identity card comprising an information carrier having an electronically accessible memory, capable of storing personal user data in digital form,

- recording (ie storing) personal user data on said identity card, which personal user data comprise personal data ("credentials") of the user as well as physical characteristics parameter data of the user (cf column 9, lines 35 to 52);

- capturing on site physical data obtained on site from the user;

- deriving physical characteristics parameter data from said captured physical data as obtained on site from the user (cf column 10, line 55 to column 11, line 12; figure 4b);

- processing of said generated physical characteristics data (ie derived physical characteristics parameter data), including the steps of:

- comparing said derived physical characteristics parameter data with said physical characteristics parameter data that are stored in said memory of said identity card; and

- providing a result that indicates if the stored physical characteristics parameter data match the obtained (ie derived) physical characteristics parameter data (cf column 11, line 36 to 48).

3.2 Not disclosed in document D7 is:

- the identity card/information carrier has a central processing unit,

- processing (ie comparing and providing result) is done on board of the identity card, and

- revealing said "personal credentials" of the user to an observer.

Accordingly, the subject-matter of claim 1 is new over document D7 (Article 54(1) EPC 1973).

The subject-matter of claim 1 is also new over the remaining available, more remote prior art.

4. Inventive step

4.1 Document D7 discussed above is considered to provide the closest prior art.

The first two distinguishing features over D7 listed above are unrelated to the third. Accordingly, an assessment on the basis of partial problems is considered appropriate.

According to the application, "This type of identity card itself contains the processing unit required for the comparison to be carried out, and arithmetical ability, so that the identification system does not have to provide for this. The identification system will then only comprise registration means in order to incorporate specific physical characteristics of a user of the identity card, which registration means are linked up to the above-mentioned terminal unit from which the recorded data can be read by the processing unit of the identity card and subsequently, can be compared with the stored data in the identity card itself. This does not only simplify the infrastructure required at the check point location, but is also beneficial to the processing speed if various checks which otherwise possibly were to be managed by one processing unit only, are now executed in a parallel manner" (cf page 5, lines 12 to 21).

Accordingly, having regard to the above first two distinguishing features, the objective partial problem to be solved relative to document D7 is to simplify the infrastructure required at the check point location.

It is noted that D7 discloses the use of fingerprint information for identification (cf column 9, lines 37 to 45), so that the skilled person would also consider documents in this field. In particular, the skilled person tasked with solving the above problem would consider document D5.

Document D5 concerns a method for personal identification of a user using fingerprint data as physical characteristic data of the user (cf column 3, line 65 to column 4, line 24 and figure 3). Moreover, D5 addresses the problem of providing a simple card reader (cf column 4, lines 19 to 24).

The solution suggested in D5 is to provide the characteristics extraction function and the comparison function on the card (cf column 4, lines 9 to 17).

It is noted that D5 is considered to derive and compare characteristics such as depths and intervals of the fingerprint and thus physical characteristic parameter data within the meaning of claim 1 (cf D5, column 3, lines 29 to 39) (see also decision T 1235/10 on the earlier application).

The solution as claimed to the above problem is, thus, rendered obvious by document D5.

Having regard to the above last distinguishing feature, the objective partial problem to be solved relative to document D7 is to allow a manual identification control (cf page 9, lines 21 to 29).

Document D7 already provides for storing in the card's memory personal information and a picture of the card owner. Making use of this data for manually identifying the card owner by revealing the data to an observer would be obvious to a skilled person.

4.2 The appellant argued that starting from D7 as closest prior art, the objective technical problem to be solved by the invention was to protect sensitive personal data and the user's privacy, in order to gain acceptance by the greater public and to improve the scaling capabilities of such a method or system.

There was no hint or incentive in the prior art that would have prompted a skilled person that on board matching would solve this problem. Apart from D5, there was even no example in the prior art of a chip card performing on board matching of physical characteristics data. Document D5, however gave no hint or suggestion that this would protect the privacy of the user's or that this would improve the scalability of an identification system.

4.3 It is, however, noted that providing the identity card/information carrier with a central processing unit and processing (ie comparing and providing result) on board of the identity card, besides better protecting the privacy of the users and improving the scalability of the system, also simplifies the infrastructure required for using the card as discussed above.

The problem-solution approach used for assessing inventive step involves determining the effect achieved by the distinguishing features of the claim over the closest prior art. Where more than one effect is achieved, any one thereof may serve as a basis for defining the objective problem to be solved with respect to the closest prior. Obviously, if, when considering one of the effects, the claimed solution is found to be rendered obvious, the other effects are also automatically achieved and thus merely represent bonus effects, which as such do not support the presence of an inventive step.

The objective problem to be solved relative to document D7 accordingly may fairly be identified based on the effect of simplification of the required infrastructure. When considering this problem, the claimed solution is obvious as discussed above.

4.4 The subject-matter of claim 1, therefore, lacks an inventive step in the sense of Article 56 EPC 1973.

Order

For these reasons it is decided that:

The appeal is dismissed.