T 1746/16 () of 4.3.2021

Summary of Facts and Submissions

I. The appeal is against the decision of the Examining Division to refuse European patent application No. 12 425 123 on the basis of added subject-matter (Article 123(2) EPC) and lack of inventive step (Article 56 EPC).

II. Reference is made to the following documents:

D1 = US 2008/222048 A1

D2 = EP 2 128 809 A1

D6 = EP 1 528 518 A1

III. During oral proceedings held on 4 March 2021 the Appellants filed new claims according to a new Main Request. They declared that this request constituted their sole request. The Appellants requested that the decision under appeal be set aside and a European patent be granted in the following version:

Description: Pages 1 to 12 received during the oral proceedings of 4 March 2021;

Claims: Nos. 1 to 8 of the new Main Request received during the oral proceedings of 4 March 2021;

Drawings: Sheets 1/3 and 3/3 as originally filed and sheet 2/3 received during the oral proceedings of 4 March 2021.

IV. Claim 1 of the Main Request reads:

1. Method for transferring a money amount by using a two-dimensional image code (3') between a paying party provided with a payment device (42) and a recipient party provided with a payment receiving device (41), wherein both the paying party and the recipient party

A. Register as a new user at a money transfer managing entity on a server (2), which provides for the management and verification of the paying party and the recipient party and is responsible of the authorization to the transfer of money amounts and their payment; and the method further comprising:

B. Request of the recipient party to the paying party of a money amount, executed between the payment receiving device (41) and the payment device (42);

C. order from the paying party to the money transfer managing entity to pay said money amount to the recipient party, after the insertion of an authorization PIN in the payment device (42) and information communication from the payment device to the server (2);

D. authorization of the payment from the transfer managing entity to the recipient party, with information communication from the server (2) to the payment receiving device (41);

E. payment of said money amount to the recipient party and sending of a confirmation information of effected money amount transfer to the payment device (42) and payment receiving device (41) concerning the effected payment of the money amount, or possible writing off or cancellation of an already effected payment operation;

the method being characterized in that said payment device (42) is a payment mobile phone and said payment receiving device (41) is a payment receiving mobile phone, and in that:

a mobile phone software module is installed on both the payment mobile phone and the payment receiving mobile phone,

- in step B, the recipient party generates through the mobile phone software module installed on the payment receiving mobile phone a two-dimensional image code (3') containing the money amount, a USER-ID of the recipient party from a personal details archive (14) on the payment receiving mobile phone and further containing information characterizing the transaction retrieved from an operations archive (16) in the payment receiving mobile phone and visualizes the two-dimensional image code on the display of the payment receiving mobile phone;

- in step B, the payment mobile phone of the paying party captures the two-dimensional image code (3') from the display of the recipient party mobile phone;

- in step C, the mobile phone software module on the payment mobile phone analyzes the two-dimensional image code and the payment mobile phone sends to the server (2) of the money transfer managing entity an encrypted authorization SMS message, the encrypted authorization SMS message including data contained in the two-dimensional image code (3'), comprising the indication of said money amount,

- in step D, the server (2) receives said encrypted authorization SMS message and authorizes or not the payment of the money amount,

- the payment receiving mobile phone of the recipient party restricting itself in step B to the generation and visualization of said two-dimensional image code (3'), without sending any relevant information to the server of the money transfer managing entity, wherein

the two-dimensional image code (3') presented by the payment receiving mobile phone and captured by the payment mobile phone, provides as guarantee of the privacy only the user-ID of the recipient party, an operation number, the money amount, the phone number of the payment receiving mobile phone and wherein,

the payment mobile phone visualizes on the display the transaction money amount and requests the typing of the authorization PIN, extracts from a "personal details" archive the user-ID of the paying party, extracts from a "keys" archive the encryption key for the authorization PIN, encrypts the authorization PIN, composes an authorization SMS message and sends the authorization SMS message to the server (2).

Reasons for the Decision

1. The invention as claimed

1.1 The invention concerns a payment method via mobile phone. The objective is that sensitive data does not need to be sent from the merchant's device to the server, to eliminate expensive and dedicated Point Of Sale (POS) devices (devices used by the merchant at the checkout) and to unload the network.

1.2 The invention proposes using two mobile phones. The merchant's mobile phone transfers all data relevant for the payment transaction via QR code to the customer's mobile phone. The payment data is then transmitted from the customer's mobile phone to the server via encrypted SMS including the authorisation PIN.

1.3 The method has the advantage that for the transaction only one single SMS message has to be sent via the mobile phone network. The customer can also play the role of the merchant by using the same software application. The personal information of the customer does not need to be given to the merchant during the transaction.

2. Main Request

2.1 Technicality

All the features of claim 1 are implemented on a mobile phone and are therefore technical. Some features, when not executed on the mobile phone, are related to a business method. Therefore they may be included into the formulation of the problem.

2.2 Closest prior art

Closest prior art is document D1, because it has the most features in common and relates to a similar payment method using a mobile phone and bar codes.

2.3 D1

2.3.1 D1 discloses a payment method, where the payment device is a mobile phone and the payment receiving device is a point-of-sale (POS) device. The objective in D1 is to avoid the installation of specific software and sensitive codes on the mobile device. Therefore communication "route A" (see amended Fig. 1 below) is chosen. D1 discloses encrypting information in one-dimensional bar codes. D1 teaches in the context of the discussion of the prior art the use of encoding information in mobile phones by using (two-dimensional) QR codes.

2.3.2 In D1 the transaction needs at least five communications via the Intranet (see figure below):

(1) payment data is transmitted from the merchant's

device to a server via Internet;

(2) a bar code is transmitted to the merchant's device

and shown to the client's mobile phone;

(3) the bar code received by the client is forwarded to

the server, decoded and verified there;

(4) the server then requests via the network a PIN code

for finally authorising the financial transaction;

(5) the client transmits the PIN to the server.

FORMULA/TABLE/GRAPHIC

D1, Fig. 1; bold arrows ("route A") added by the Board for illustrating the routes of communication during the financial transaction.

2.4 Difference

2.4.1 The preamble of claim 1 is disclosed in D1 in paragraphs [0018] to [0040] and in Figs. 1 to 4. In particular, registering of the parties is disclosed in paragraphs [0021] and [0022] and Fig. 4.

2.4.2 D1 fails to disclose (using the claim wording of claim 1, but referring to D1; the distinguishing features not disclosed in D1 are highlighted using underlining by the Board)

(A) that said payment receiving device (11a) is a payment receiving mobile phone;

(B) a [i. e. the same] mobile phone software module is installed on both the payment mobile phone and the payment receiving mobile phone (referring back to "the" software module further below in the claim for both the payment mobile phone and the payment receiving mobile phone implies that the same software module is installed on both devices),

(C)- in step B, the recipient party generates through the mobile phone software module installed on the payment receiving mobile phone device a two-dimensional[deleted: ]image code (D1 only discloses a one-dimensional bar code generated by the server and transmitted via the POS device)

(D) containing the money amount, a USER-ID of the recipient party from a personal details archive (D1 fails to disclose such an archive) on the payment receiving mobile phone

(E) and further containing information characterizing the transaction retrieved from an operations archive (D1 fails to disclose such an archive) in the payment receiving mobile phone and visualizes the two-dimensional image code on the display of the payment receiving mobile phone; - in step B, the payment mobile phone of the paying party captures the two-dimensional image code from the display of the recipient party mobile phone;

(F) in step C, the mobile phone software module on the payment mobile phone analyses the two-dimensional image code (in D1, paragraph [0036], it is mentioned that only decoding the UPC code may take place in the mobile phone; interpretation, i. e. decoding and analysing the encoded information, is however always performed in the server 25, see paragraph [0039] and Fig. 3 of D1)

(G) and the payment mobile phone sends to the server of the money transfer managing entity an encrypted authorization SMS message (D1 does not mention an encryption of the SMS in the general sense of understanding encrypting SMS messages with an encryption key; D1 discloses in paragraph [0036] that either the bar code image or the decoded UPC code is sent via an unsecured network), the encrypted authorization SMS message including data contained in the two-dimensional image code, comprising the indication of said money amount, - in step D, the server (25) receives said encrypted authorization SMS message and authorizes or not the payment of the money amount,

(H) - the payment receiving mobile phone of the recipient party restricting itself in step B to the generation and visualization of said two-dimensional image code (in D1 the recipient party sends all relevant data to the server 25 requesting the generation of a bar code, see paragraphs [0034] and [0035]),

(I) without sending any relevant information to the server of the money transfer managing entity (the server 25 receives inter alia the amount and encodes it into the bar code sent back to the merchant), wherein

(J) the two-dimensional image code presented by the payment receiving mobile phone and captured by the payment mobile phone, provides as guarantee of the privacy only the user-ID of the recipient party, an operation number, the money amount, the phone number of the payment receiving mobile phone (in D1, paragraph [0035], not the phone number, but other parameters such as the currency and VAT tax being charged are mentioned) and wherein,

(K) the payment mobile phone visualizes on the display the transaction money amount (in D1 the amount cannot be decoded and displayed in the customer's mobile phone) and requests the typing of the authorization PIN (in D1 the PIN is requested by the server),

(L) extracts from a "personal details" archive the user-ID of the paying party (D1 discloses neither a "personal details" nor a "keys" archive),

(M) extracts from a "keys" archive the encryption key for the authorization PIN (in D1 encryption takes place in the "Encryption Component 48" on the server 25, see paragraph [0032] and Fig. 2),

(N) encrypts the authorization PIN (in D1 the server sends a separate request for the PIN, see paragraph [0040]),

(O) composes an authorization SMS message (the SMS message sent in D1 cannot be considered to be an authorization message, since authorization takes place in a separate step via entering the PIN into the request form sent by the server to the customer or via a voice call, see paragraph [0040]) and sends the authorization SMS message to the server.

2.5 Effects

In accordance with the submissions of the Appellants in section I.3.2 of the letter dated 12 January 2016 and the discussions during the oral proceedings before the Board, the technical effects of these fifteen differing features can be summarised as follows:

(a) obviating the need for an expensive and dedicated POS device and the relevant connections with the server (Feature (A)),

(b) providing an efficient way of transferring information from the merchant to the buyer (Features (C), (D), (E), (F), (G), (H), and (J));

(c) the same device (mobile phone) being able to carry out both the function of buying and the function of selling depending on the need and according to a precise sequence of steps (Features (B), (C), (D), (E), and (F));

(d) the complete control of the financial transaction being within the paying party, thus guaranteeing the privacy of the paying party (Features (H), (I), (J), (K), (L), (M), (N), and (O));

(e) unloading the server, reducing the number of communications to a minimum and allowing a faster transaction while maintaining a high security level (Features (C), (D), (E), (F), (G), (H), (I), (J), (K), (L), (M), (N), and (O));

(f) making the transaction independent from any network other than the mobile phone network (Features (H), (I), (J), (K), (M), (N), and (O));

(g) the software providing full control of the transaction by analysing/displaying the data (of the two-dimensional image code), displaying the amount, providing archives for keys, PINs, IDs, and encrypting them (Features (B), (C), (D), (E), (F), (G), (J), (K), (L), (M), and (N)).

2.6 Problem

Since Feature (A) on the one hand and Features (B) to (O) on the other hand are not functionally interdependent, it is appropriate to formulate partial problems in relation to these sets of features. The problem can therefore be formulated as achieving effect (a) (first partial problem) as well as effects (b) to (g) (second partial problem).

2.7 Non-Obviousness

(A) First partial problem (effect (a))

2.7.1 Obviating the need for an expensive and dedicated POS device is solved by replacing the POS by a mobile phone. Even though the replacement of a POS is not directly motivated by the teaching of document D1, the skilled person would, when attempting to achieve the technical effect (a), consider the prior art documents discussed in document D1 and in particular the disclosure of document D6 (paragraphs [0023] and [0025]). They would thus be led in the Board's judgment to the solution claimed in Feature (A).

(B) Second partial problem (effects (b) to (g))

2.7.2 The Appellants have argued that whether or not the bar code is generated by a merchant mobile phone or is generated remotely and sent to a mobile phone did not affect a customer experience in any way, and applying the reasoning of e. g. T 2314/16 and T 1463/11 (specifically Reasons 11 to 17) cannot be regarded as part of business considerations of the notional business person.

2.7.3 The Board is of the opinion that using two-dimensional image codes is a well-known alternative to one-dimensional bar codes for the skilled person in the relevant technical field of software engineering. This includes generating and decoding bar codes on a mobile phone. Using a two-dimensional code is furthermore suggested by the prior art discussed in the present description in paragraphs [0004] and [0005], in the prior art discussed in D1 (paragraph [0005]) and in document D2 (paragraph [0057]).

2.7.4 However, using one and the same type of device (mobile phone) and corresponding software for carrying out both the function of buying and the function of selling depending on the need and according to a precise sequence of steps is not suggested in any of the documents cited above. Starting from D1 and complying with the concept that the server controls the transaction and matches both the merchant's and customer's action - while maintaining a high security level -, one and the same software on the mobile devices would be counter-productive. If the skilled person replaced the POS device of document D1 by a mobile phone, they would consider a specific corresponding software tailored to the need of the seller in order to guarantee the required safety level. D1 explicitly teaches to reduce any software to be installed (paragraphs [0008], [0009] and [0018]). In view of the teaching of D1 the skilled person would therefore reduce these modules to a minimum. This teaches away from a more complex universal solution.

2.7.5 Moreover, in order to achieve the technical effects (d) and (e) starting from D1, the skilled person would have to implement "route B" for reducing the number of communications:

FORMULA/TABLE/GRAPHIC

D1, Fig. 1, solid arrows ("route B") added by the Board; dotted arrows illustrate matching of merchant's data with the customer's data on the server.

2.7.6 This "route B" however is against the teaching and objective of D1, i. e. avoiding software to be installed on the mobile phone and avoiding sensitive information like PIN codes or encryption keys being installed on the mobile phone.

2.7.7 "Route B" would first require that the merchant create the two-dimensional image code on their mobile phone. This however would be contrary to the concept of D1, where the server controls the transaction. The prior art also teaches away from encoding sensitive information, such as the authorisation PIN code, into the authorisation SMS message sent to the server:

2.7.8 The skilled person would always seek for a balance between security requirements and unloading the network. In view of the teaching of D1, where security has first priority, the skilled person would not abandon a separate PIN request. Given the teachings of D1 and D2 (see abstracts) the skilled person would not abandon the matching of merchant's and customer's data by the server, either. Therefore, a communication between the merchant's device and the server is always required in addition to the communication from the customer to the server. None of the documents cited above provides any teaching that the transaction is at the same time (1) reduced to one single communication, i. e. the authorisation SMS of the paying party, (2) performed without any message between merchant and server for matching the merchant's and client's request, and (3) performed without a separate authorisation PIN request.

2.7.9 The approach proposed by the invention has the advantage that only one request has to be transmitted via the mobile phone network without connection to the Internet or a similar network. This makes the method independent from any wired structure and insensitive to network interruptions during the transaction or between two transaction transmissions. These interruptions would lead to an insecure situation. The proposed solution is both save and unloads the network by providing only one single communication via the mobile phone network. It considerably reduces data traffic. During shopping events like "Black Friday" or the days prior to Christmas, where there can be thousands or millions of payments being made at the same time, the invention offers the benefit that for each of these transactions only one single data transmission to the server is needed, instead of five or more.

2.7.10 This is realised by decoding and analysing in the customer's mobile phone the two-dimensional image code comprising the transaction data (IDs of merchant and customer, transaction amount, transaction code, phone numbers). The data is encrypted with an encryption key into an encrypted SMS message comprising in addition the authorisation PIN.

2.7.11 If - starting from document D1 - the skilled person considered to replace the POS device by a mobile phone, there would still be a communication between the merchant's device and the server (via the mobile phone network) for matching the data and in total at least one communication in addition to the communication between the customer and the server, thus leading to different subject-matter than defined in the claims.

2.7.12 Document D1 only teaches to decode the UPC code of the one-dimensional bar code in the buyer's mobile phone without analysing the content, i. e. linking the transaction information to the UPC code. This can only be done on the server where the corresponding data is saved. The solution of D1, where the transaction is controlled by the server, therefore teaches away from the present solution which proposes to save the authorisation PIN for the server on the customer's mobile phone together with all the other transaction information in order to reduce the number of transaction communications.

2.7.13 The prior art cited above is completely silent about Features (H) to (M), i. e. the details of the software implementation of the transaction method, handling the data, decoding and encryption. These features contribute to realising a transaction method which effectively unloads the network while maintaining a high security standard and high safety level for the transaction. Therefore, these features contribute to the technical effect of the invention, though some of them may be considered as non-technical features (see G 1/19, point 85 and T 0697/17, point 5.2.5).

2.7.14 In summary, nothing in the prior art would lead the skilled person to the combination of all the features of claim 1. The subject-matter of claim 1 is therefore inventive.

2.7.15 Independent system claim 8 corresponds essentially to method claim 1. Claims 2 to 7 are dependent on claim 1.

2.7.16 Accordingly, the subject-matter of claims 1 to 8 involves an inventive step (Articles 52(1) and 56 EPC).

3. Conclusion

For the above reasons the board is of the opinion that the application and the invention to which it relates, in the version according to the appellant's sole request, meet the requirements of the EPC. Hence, a patent is to be granted on the basis of that version (Articles 97(1) and 111(1) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division with

the order to grant a patent in the following version:

Description: Pages 1 to 12 received during the oral proceedings of 4 March 2021;

Claims: Nos. 1 to 8 of the new "Main Request" received during the oral proceedings of 4 March 2021;

Drawings: Sheets 1/3 and 3/3 as originally filed and sheet 2/3 received during the oral proceedings of 4 March 2021.