T 2318/13 (Method for obtaining cash at cardless teller machines, using a … of 26.9.2019

Summary of Facts and Submissions

I. This appeal is against the examining division's decision refusing the European patent application 04742050.0 pursuant to Article 97(2) EPC on the ground of lack of inventive step (Article 56 EPC).

The examining division found that claim 1 of the main and auxiliary request did not involve an inventive step (Article 56 EPC) over US2002/069170 (D1) in combination with common general knowledge, for example, WO02/41271 (D5).

II. In the statement setting out the grounds of appeal, dated 11 October 2013, the appellant requested that the decision be set aside and that a patent be granted on the basis of the main or auxiliary request filed therewith. Oral proceedings were requested on an auxiliary basis.

III. In the annex to the summons to oral proceedings, the Board expressed its preliminary view that the refusal of the application for a lack of inventive step was justified. In addition, claim 1 of the main request appeared not to comply with the requirements of Article 123(2) EPC.

IV. Oral proceedings were held on 26 September 2019. At the end of the oral proceedings the Chairman announced the Board's decision.

V. Claim 1 of the main request reads as follows:

"Method for the withdrawal of cash at automatic telling machines for the withdrawal of funds without the need for the beneficiary to be the holder of an account or card, which is characterized by comprising the following stages:

a) a first stage (1a), in which an issuing entity (3) receives a request for acceptance / cancellation of a payment order from a principal or client (2);

b) a stage (1b) where the issuing entity (3) arranges the acceptance / cancellation of the order on-line with a national central module (4), where all the orders are processed;

c) a stage (1c), in which an SMS acceptance / cancellation message is sent by way of the communications structure for sending SMS messages, and in the event of acceptance of the service the transmission of the respective authorization of payment, which will have to be validated by the requester, all this being arranged from the national central module (4);

d) a stage (1d), in which the national central module (4) uses the communications structure to send an SMS message to the beneficiary (6) of the operation, containing both the identification particulars of the principal (2) and the amount of the transaction, together with a code or PIN;

e) a stage (1e), where the beneficiary (6) makes the request for cash at an ATM (7) enabled for this purpose, without the need to use an instrument of payment, but only the code or PIN which has been supplied to the beneficiary (6);

f) a stage (1f), in which an authorization / correction request is made from the ATM (7) to the acquiring entity (8), by way of the communication networks of the actual acquiring entity (8);

g) a stage (1g), where the authorization / correction request is effected, this time by the acquiring entity (8) to the afore-mentioned national central module (4);

h) a stage (1h), in which the national central module (4) authorizes / denies the request of the previous stage and communicates this decision to the acquiring entity (8);

i) a stage (1i), where the acquiring entity (8) authorizes / denies the operation, sending the respective notification by way of the internal communication network to the cash dispenser (7);

j) a stage (1j), in which delivery of the cash to the beneficiary (6) via de (sic) cash dispenser (7) is confirmed / denied, making use of the cash delivery device of the ATM (7) if delivery has been confirmed, so that the beneficiary (6) may proceed to its withdrawal;

k) a stage (1k), where an off-line communication is effected from the national central module (4) to the issuing entity (3) that has carried out the payment order;

l) a stage (10a), in the execution of which a presentation of certain data concerning the payment is made by the acquiring entity (8) to the national central module (4), showing the payment orders processed, fees, operating expenses and charges generated in the handling of the operation;

m) a stage (10b), where the national central module (4) submits the payment orders, fees, operating expenses and charges to the issuing entity (3);

n) a stage (10c) in which the issuing entity (3) presents the principal (2) with the settlement and collection of charges for the operation carried out;

n) a stage (10d), where the acquiring entity (8) effects the relevant settlement with the cash dispenser (7) used in the transaction;

o) a stage (10e), in which access takes place via a liquidating entity (11) to the national electronic clearing system (12), where the respective clearing actions relating to the operation processed are carried out;

p) a stage (10f), where the appropriate pay-backs take place between the issuing entity and the national central module (4) take place (sic), and

q) a stage (10g), in which the appropriate pay-backs take place between the national central module (4) and the acquiring entity (8),

where the national central module (4) does not belong to the issuing entity (3) or the acquiring entity (8)."

VI. Claim 1 of the auxiliary request corresponds to claim 1 of the main request without the last feature.

Reasons for the Decision

1. Background of the invention

1.1 The invention addresses the problem of allowing a beneficiary to withdraw cash from automatic teller machines (ATM) using a payment order delivered via SMS without the need for any payment instrument, such as a bank card, and type of account (see paragraph [0001] of the published application).

1.2 An issuing entity (3 in Figure 1) receives a request (1a) for acceptance/cancellation of payment order from a Principal (2). The Principal uses a computer, a mobile telephone or a cash dispenser to enter the request, see paragraph [0014]. The issuing entity (3) communicates the order (1b) to a central unit or national ATMPAY module (4), which is separate from the networks of banking institutions and which handles the acceptance/cancellation requests. Once authorised, the beneficiary (6) receives from the central unit (4), via SMS (1d), a reference number, an amount and a PIN code (individual for each operation) which he or she provides to an ATM (7) for withdrawing money from a acquiring entity (8), which may be a different financial institution.

1.3 The appellant stated that the invention responded to the need of thousands of immigrants living in developed countries who regularly sent money to their relatives in their countries of origin. While SMS services of mobile phones and ATMs were known, no system involving more than one bank had apparently reached the public, due to security drawbacks that arose because two different financial institutions would have needed to exchange client account data.

2. Main request - Article 123(2) EPC

2.1 Claim 1 of the main request essentially corresponds to claim 1 of the refused main request with the following amendments:

(i) deletion of the feature "without a card, by means of a payment order via SMS, suitable for application to" in line 1 of claim 1;

(ii) deletion of the feature "via SMS" in stage (1a);

(iii) addition of the feature "where the national central module (4) does not belong to the issuing entity (3) or the acquiring entity (8)" at the end of claim 1.

2.2 The appellant justified amendment (iii) as being self-evident. The provision of this feature avoided a security conflict, because the sending and receiving of relevant client information data, e.g. an issuing entity's client's personal data, account number, telephone number, etc., never left an entity's network and was never accessible to third parties.

He further explained that the feature "national central module" referred to as the "ATMPAY module" was described as carrying out various functions that implied the amendment, namely: holding cryptographic codes of the banks in safe keeping, page 7, lines 11 and 12, being in communication with issuing entities, page 6, lines 13 to 18, page 7, lines 26 to 29, and with acquiring entities, page 8, lines 20 to 25, and page 9, lines 7 to 10, carrying out the submission by lots of payment orders, operating expenses and charges to issuing entities, page 8, lines 21 to 28.

2.3 The Board is unconvinced by these arguments. The application is silent about the location of the national central module. The passages cited by the appellant, in particular page 6, lines 13 to 18, imply only that the central national module is a central unit which is in communication with acquiring entities and issuing entities, but not that it does not belong to the issuing entity (3) or the acquiring entity (8).

2.4 Claim 1 therefore extends beyond the content of the application as filed contrary to Article 123(2) EPC, because feature (iii) does not find a basis in the application as filed.

3. Auxiliary request - Article 56 EPC

3.1 It is common ground that D1 represents the closest prior art. D1 discloses a method for performing cash transactions between users, paragraphs [0022] to [0025]. A principal, who is client of a financial institution (issuing entity), sets up a money order via a telephone using an interactive voice response (IVR) system, via an ATM access portal or via the Internet. A beneficiary, who does not need to hold a bank card, is allowed to withdraw money from one of a plurality of ATMs (acquiring entity) of the financial institution. The beneficiary receives for that purpose a unique identification code, paragraphs [0013] and [0016]. Successful withdrawal of cash is notified to the principal.

3.2 Claim 1 differs from D1 by the provision of a national central module (4) and the associated interactions with it as defined in features (b), (c), (d), (g) and (h).

Feature (b) specifies that the issuing entity sends the order to the central module; features (g) and (h) specify that the central module processes requests for authorisation from the acquiring entities; features (c) and (d) specify that the central module uses SMS communication for informing a principal about the authorisation of its order and for sending authorisation information to the beneficiary permitting the withdrawal of money.

3.3 A business person would recognise the limitation of the business concept of the D1 system, because cash withdrawal was possible only from ATMs of the same financial institution, namely of the principal who requested the money order, see paragraphs [0005] and [0014]. In a situation when thousands of immigrants want to send money regularly to their relatives in their countries of origin, different business needs arise, for example, beneficiaries (in countries of origin) would like to withdraw cash from any ATM of any financial institution and principals would not like to be limited to use a particular financial institution. This boils down to the business idea of making money from a new monetary service which combines banking and cash withdrawal services of different financial institutions, under the assumption that contractual agreements have been reached on the payment of fees, operating expenses and charges for the operations to be carried out, as assumed and recognised in the application, see paragraphs [0021] and [0022]. Even the appellant argued during oral proceedings that the term "national central module" could be seen as sort of new "legal entity" which combines financial services.

3.4 Concerning the means for implementing this new business idea, the Board does not see a reason to disagree with the appellant who stated at the bottom of page 8 of the grounds of appeal, that "all the technical knowledge and tools needed for developing the system of the invention were available from at least 15 years ago. Indeed, the system only requires the use of conventional banking networking tools combination with the SMS service of mobile phones".

3.5 Regarding features (b), (g) and (h), the Board considers it to be obvious to implement these functions as a separate module within the banking system of D1. These functions directly result from the business requirements of the new monetary service which permits different financial institutions to interoperate, such as, to arrange the acceptance / cancellation of payment orders, reporting that the payment order was carried out, to receive authorisation / correction requests for cash withdrawal and to grant them. The implementation of these functions as a module within the D1 system, for example, on the network host computer (20), paragraph [0013], would have been obvious for the person skilled in the art. Also its implementation as a separate "unit" (server) within the D1 system is an obvious design alternative, because D1 already discloses using different servers for different purposes, such as the terminal server, IVR server and back office server.

3.6 Turning to the "SMS" feature, see features (c) and (d), the Board agrees with the appellant that the automatic transmission of the code directly to the beneficiary can be seen as being motivated by the desire to avoid fraud of the principal if he or she withdraws the money by himself or herself. The Board judges, however, that such a requirement is also part of the business specification.

The use of SMS communication for the transmission of information to principal and beneficiary was also an obvious implementation of this, because SMS was a well-known communication technology at the priority date of the application.

D5, for example, discloses the use of SMS for electronic financial transactions. Mobile telephones were sufficiently compact and lightweight to be carried around and served as user interfaces; SIM cards offered a secure identification of the user and SMS communication offered a simple and efficient manner of exchanging information; see paragraph bridging pages 2 and 3.

3.7 Claim 1 therefore does not involve an inventive step over D1 in combination with common general knowledge, for example, known from D5.

3.8 The appellant argued that none of the prior art documents disclosed two different banking institutions and, furthermore, at the time when the present application was filed, no neutral entity existed in the banking field. There were only networks belonging to banks which did not want to exchange or share their customer data. Therefore, a skilled person in the art would only have considered using the network and modules of one the banks communicating directly with the acquiring entities of the other banks and improving the usual security schemes employed in the banking field, such as the encryption of data, as mentioned in the application in paragraph [0016].

3.9 However, in the Board's judgement the skilled person would equally well have considered that the encryption of data would have been an appropriate solution for restricting the sharing of customer data when using a neutral entity. The Board is also not convinced that a combination of two or more D1 systems would lead to a solution for an improved cash withdrawal system. In any case, the motivation for providing such a (new) service is rather directed by the business requirements (see 3.3 above), which are not relevant for assessing inventive step.

Order

For these reasons it is decided that:

The appeal is dismissed.