T 1734/17 (Managing multiple subscriptions in a UICC/GEMALTO) of 21.5.2019

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 11810811.7, with international publication number WO 2012/076485 A1. The refusal was based on the ground that the subject-matter of independent claim 1 lacked inventive step having regard, inter alia, to the disclosure of document D2 (= US 2002/0186845 A1) and taking into account the common general knowledge of a skilled person.

II. Initially, the appellant requested in its statement of grounds of appeal that the decision under appeal be set aside and that a patent be granted on the basis of a main request, dated 26 July 2016, or alternatively either auxiliary request 1 or auxiliary request 2, both auxiliary requests as filed with the statement of grounds of appeal.

III. In a communication following a summons to oral proceedings, the board, without prejudice to its final decision, gave its preliminary opinion on the issue of inventive step of claim 1 of all requests when starting out from D2 and using common general knowledge.

IV. Oral proceedings were held on 21 May 2019.

The appellant withdrew the main request at the beginning of the oral proceedings and requested that the decision under appeal be set aside and a patent granted on the basis of either auxiliary request 1 or auxiliary request 2.

V. Claim 1 of auxiliary request 1 reads as follows:

"System for managing multiple telecommunication subscriptions in a UICC (91), said system comprising a central server (90) able to manage a plurality of telecommunication subscriptions stored on a UICC (91) comprised in a mobile terminal (92) in the field in a manner to block all telecommunication subscriptions stored on said UICC (91), at the request of a subscriber of one of these plurality of telecommunication subscriptions."

VI. Claim 1 of auxiliary request 2 differs from claim 1 of the first auxiliary request in that the following wording has been added at the end:

", said central server (90) being connected to a plurality of mobile network operators (MNOs)"

Reasons for the Decision

1. Auxiliary request 1 - claim 1 - inventive step

1.1 The present application concerns a system for managing a plurality of telecommunication subscriptions stored on a UICC (Universal Integrated Circuit Card) comprised in a mobile terminal. In essence, the system comprises a central server able to block all subscriptions at the request of a subscriber of one of these plurality of subscriptions.

1.2 D2 is considered to represent the closest prior art. It relates to a method of remotely disabling and enabling access to payment and user authentication functions in a security element (SE) of a mobile terminal (abstract, paragraph [0006]). The security element may be, for example, a SIM card (paragraph [0002], second sentence). The authentication functions are provided by means of at least one key pair (paragraph [0010], second and third sentences). One key pair may be assigned to multiple service certificates which may be used as credit cards in mobile e-commerce (paragraph [0003], third and seventh sentence). The service certificates, as conceded by the appellant, may be considered as subscriptions. The mobile terminal also implicitly has a telecommunication subscription with a network provider.

By means of a push message to the mobile terminal, a specific key pair on the security element and, consequently, the service certificates assigned to it, or the entire security element may be disabled (paragraph [0009], second and third sentences). The disablement concerns the access from the mobile terminal to the security element which is selectively blocked for certain functions (paragraph [0020], third sentence) or entirely blocked (paragraph [0021], first sentence).

The disablement occurs upon request of the user who implicitly is the subscriber of the payment or authentication function provided by the service certificates (paragraph [0006], first sentence). The push message may be sent by a push initiator 401 (paragraph [0026]). The push initiator 401 is depicted as a computer which is connected via the internet to a gateway (FIG. 4). D2 further discloses that the method may be implemented in software on a server (paragraph [0057], first sentence), and that the service can be provided by entities such as network operators and financial institutions (paragraph [0023]).

1.3 An essential aspect of D2 is that the system may either block access to the entire SE (i.e., implicitly, block the telecommunication subscription with the network provider, cf. paragraph [0021]), or block access only to one or more financial service subscriptions (i.e. credit card applications, idem).

1.4 The system of claim 1 thus differs from the system disclosed in D2 in that the security element is a UICC and that the UICC stores a plurality of telecommunication subscriptions which can be blocked centrally.

1.5 It is firstly undisputed that UICCs as a SIM comprising security elements for mobile terminals in particular for storing telecommunication subscriptions thereon were well-known at the priority date of the present application. Using a UICC in the system of D2 therefore does not contribute to an inventive step.

1.6 Starting out from D2, the technical problem underlying the subject-matter of claim 1 may be seen in extending the system to mobile phones having multiple telecommunication subscriptions. The problem itself does not contribute to inventive step, since, as is stated in the description, it is commonplace to store multiple subscriptions on a mobile telephone (cf. page 2, line 29 to page 3, line 3).

1.7 An essential element of a telecommunication subscription stored on a smart card like a SIM card or a UICC is an authentication key or PIN (cf. D2, paragraph 0021] used to authenticate a subscriber on the network. By disabling this authentication key or access to the PIN the telecommunication subscription can be blocked.

Hence, by disabling the access to the respective key or key pair as disclosed in D2, not only the user authentication for financial/e-commerce applications but also the authentication for a telecommunication subscription can be disabled.

Given this fundamental common element, the board considers that the skilled person who wishes to solve the above-mentioned problem would extend the teaching of D2, which discloses blocking centrally user authentication functions for e-commerce by disabling the access to a respective key pair and/or to block a single telecommunication subscription, by providing for the central blocking of all telecommunication subscriptions stored on the UICC or SIM, which analogously to the e-commerce subscriptions can be achieved by disabling access to the respective authentication key or PIN, thereby arriving at a system which includes all the features of claim 1 without exercising inventive skill.

1.8 Appellant's arguments

1.8.1 The appellant argues that in the system of D2 only a subscription of a single service provider or respectively mobile network operator is present on the SIM card whereas in the system of claim 1 a plurality of subscriptions are installed on the security element by different mobile network operators, the subscriptions being telecommunication subscriptions and not payment or user authentication functions.

The board refers in this respect to the argumentation above.

1.8.2 The appellant further argues that blocking the access to the security element in the system of D2 is equivalent to blocking the subscription present on the security element which means that the solution provided by the system D2 is equivalent to blocking a single subscription.

However, D2 discloses the possibility of disabling the security element entirely (cf. paragraph [0021], lines 9-15). By blocking the access to the whole security element, apparently all telecommunications subscriptions would be blocked.

1.8.3 The appellant further argues that D2 does not address or solve the problem that it is cumbersome for a user to remember which subscriptions were present on a security element because the user with respect to the system of D2 would know which entity to contact.

However, by extending the principle of central blocking to telecommunications subscriptions as explained above, this problem is automatically solved, analogous to the user not needing to contact the individual credit card providers when using the system disclosed in D2.

1.9 In view of the above, the subject-matter of claim 1 of auxiliary request 1 does not involve an inventive step (Articles 52(1) and 56 EPC). The request is therefore not allowable.

2. Auxiliary request 2 - claim 1 - inventive step

2.1 Claim 1 of auxiliary request 2 differs from claim 1 of auxiliary request 1 in that the central server is connected to a plurality of mobile network operators.

2.2 In the system of claim 1, the UICC may be connected to the telecommunications network by means of one of the multiple telecommunication subscriptions which are stored on it, wherein the different telecommunication subscriptions may correspond to different mobile network operators.

When starting out from the system of D2, the subscriptions are blocked by sending a push message from the central server to the mobile terminal over the air or, in other words, via the public land mobile network PLMN (paragraph [0023], first sentence, paragraph [0054], FIG. 4). This implies the use of a mobile network operator.

If the push message is to be sent to a UICC, on which multiple telecommunication subscriptions are stored and which may be connected to the mobile network through different mobile network operators, it is obvious for the skilled person that the server must be able to send the push message through the different possible mobile network operators if it is to be avoided that the UICC cannot be reached because the server is not connected to the mobile network operator the UICC is using.

To connect the central server to a plurality of mobile network operators therefore does not contribute to an inventive step.

2.3 In view of the above, the subject-matter of claim 1 of auxiliary request 2 does not involve an inventive step (Articles 52(1) and 56 EPC). The request is therefore not allowable.

3. Conclusion

There being no allowable request, it follows that the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.