T 0658/18 (Aggregated soft card/MASTERCARD) of 13.6.2022

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse the European patent application No.12846583.8 pursuant to Article 97(2) EPC on the ground of lack of inventive step (Article 56 EPC).

II. In this decision reference is made inter alia to the following documents :

US 2010/0041368 (D1),

US 2011/0131107 (D5),

US 2008/0255942 (D6),

Anwendungen und Technik von NFC (D10)

III. The appellant requests that the decision be set aside and a patent be granted on the basis of the main request which was submitted on 18 July 2017 or of the auxiliary request submitted with the statement of grounds. Oral proceedings were requested should a patent not be granted as requested.

IV. In a communication the Board set out its preliminary opinion that it was inclined to remit the case to the first instance to carry out a search and further examination. The appellant was asked whether it agrees the case to be referred back and, if necessary to withdraw the request for oral proceedings.

V. In its reply, dated 3 May 2022, the appellant agreed with the case being referred back to the first instance for search and examination. The request for oral proceedings was withdrawn.

VI. Independent claim 1 of the main request reads as follows:

"1. A system for provisioning and utilizing an aggregated soft card on a mobile device, the system comprising:

a plurality of soft card issuing system servers configured to store component soft card data; and

a trusted service manager (TSM) server configured to receive a request for an aggregated soft card from a mobile device, to access a mapping database to identify a primary component soft card and at least one secondary component soft card that constitutes the aggregated soft card using an aggregated soft card identifier contained in the request from the mobile device and to identify addresses of the soft card issuing system servers hosting the component soft card data associated with each of the primary component soft card and at least one secondary component soft card, to request the component soft card data associated with each of the primary component soft card and the at least one secondary component soft card from the plurality of soft card issuing system servers, to generate aggregated soft card data by establishing a link among the component soft card data received from the plurality of issuing system servers, and to send the aggregated soft card data to the mobile device, wherein the link includes an application identifier list that contains application identifiers that identify the primary component soft card and the at least one secondary component soft card and are loaded into a proximity payment system environment (PPSE) application of the mobile device in accordance with a predefined preference order in which the primary component soft card and the at least one secondary component soft card are attempted to be used in a wireless transaction between the mobile device and a wireless device reader upon selection of the aggregated soft card to conduct the wireless transaction with the wireless device reader, wherein each of the application identifiers for the primary component soft card and the at least one secondary soft card includes a field that includes an indicator that respectively designates each of the primary component soft card and the at least one secondary soft card as a component of the aggregated soft card."

Reasons for the Decision

1. Background of the invention

1.1 The invention concerns wireless devices conducting payment and non-payment transactions, in particular an aggregated soft card on a mobile device, see page 1, second paragraph, of the application.

1.2 Conventionally, consumers carry several plastic payment and non-payment cards in their wallets, such as debit and credit cards, transit tickets, identification cards, or club membership cards, see page 1, third paragraph. To reduce the number of physical cards, many consumers, page 2, first paragraph, have provisioned their mobile devices with soft card versions. However, different soft cards may be used separately in sequence during a single wireless transaction. Although the issuing of a dual purpose soft card is desirable, communication and compatibility problems can arise when utilizing a soft card version.

1.3 The invention addresses the technical problem of how to provide and utilize an aggregated soft card on a near field communication (NFC) enabled mobile device with which it interfaces with a passive wireless transceiver.

1.4 The solution is an aggregated or multi-component soft card which is a combination of two or more electronic or virtual cards that are logically linked as a single aggregated soft card that is depicted/displayed on a mobile device as a single visual representation. By logically linking the two or more soft cards into an aggregated one allows to use them in a single payment transaction (without multiple taps on a card reader).

1.5 The mobile device transmits a request for a multi-component soft card to a service provider trusted service manager SP-TSM or TSM which then requests the component soft card data from the plurality of soft card issuing system servers, and which creates the aggregated soft card by creating a mapping table on behalf of a primary card issuer that establishes an association between the primary component card and the secondary component card, see page 17, third paragraph. The table stores a list of application identifiers (AIDs), an AID linking list, that respectively identify and correspond to transaction applications (e.g., component soft cards and aggregated soft cards) stored in secure memory, see page 7, first paragraph. The aggregated soft card is transmitted to the mobile device which stores it in memory. Upon payment the component soft card AIDs indicated in the stored AID linking list are then loaded into the proximity payment system environment (PPSE) application in accordance to the defined priority order.

2. Main request - Article 56 EPC

2.1 Claim 1 of the main request was refused for a lack of inventive step over D1 (US2010/0041368), from which it was distinguished according to the examining division by the following features, see point 14 of the decision under appeal :

(i) the soft card is an aggregated soft card,

(ii) a plurality of soft card issuing servers,

(iii) to access a mapping database to identify a primary component soft card and at least one secondary component soft card that constitutes the aggregated soft card using an aggregated soft card identifier contained in the request from the mobile device and to identify addresses of the soft card issuing system servers hosting the component soft card data associated with each of the primary component soft card and at least one secondary component soft card,

(iv) to request the component soft card data associated with each of the primary component soft card and the at least one secondary component soft card from the plurality of soft card issuing system servers,

(v) wherein the link includes an application identifier list that contains application identifiers that identify the primary component soft card and the at least one secondary component soft card and are loaded into a proximity payment system environment (PPSE) application of the mobile device in accordance with a predefined preference order in which the primary component soft card and the at least one secondary component soft card are attempted to be used in a [wireless] transaction with the aggregated soft card,

(vi) wherein each of the application identifiers for the primary component soft card and the at least one secondary soft card includes a field that includes an indicator that respectively designates each of the primary component soft card and the at least one secondary soft card as a component of the aggregated soft card.

2.2 The examining division considered that features (i, iii to vi) relate to business aspects solving no technical problem and that their implementation was a mere automation of constraints imposed by business aspects, whereas feature (ii) was a standard alternative in network processing to either centralize or decentralize a predetermined functionality, see point 14 of the decision; D1 was disclosing a single server.

2.3 The appellant in summary argues that D1 deals with the provisioning of soft cards which are single component cards used in payment transactions whereas the invention proposes an aggregated or multi-component soft card, which is a combination of two or more component electronic or virtual cards that are logically linked as a single card, on a mobile device. The aggregated soft card is provided by a a trusted service manager (TSM) server upon request from the mobile device. This is an additional difference (ia) compared to D1.

This TSM server does not contain a limited number of different component soft cards, but it is configured, based on the received requests, to identify different addresses of the soft card issuing system servers hosting the component soft card data and thereafter combine component soft cards to obtain a large variety of aggregated soft cards.

2.4 The features which distinguish claim 1 from D1 are therefore features (i), (ia) and (ii) to (vi) which all together have the technical effect that with a single request an aggregated soft card can be provided that comprises a plurality of soft cards. This leads to the technical problem of "how to improve the provisioning and use of a soft card on a mobile device", such as the one known from D1.

2.5 The appellant then argues that based on D1, the skilled person might use a single issuing server for hosting a variety of single-component, single-issuer soft cards, wherein the single issuing server would be configured for storing, maintaining and updating, if needed, of the data relating the stored single-component, single-issuer soft cards. However, the skilled person would not be motivated to use a multitude of issuing system servers in combination with a TSM server for the claimed purpose of an aggregated, multi-component soft card by establishing a link among the soft card data received from the plurality of issuing system servers.

2.6 The Board agrees with the distinguishing features as set out by the appellant.

D1 discloses the provision of soft cards to a mobile device in replacement of physical cards, see [0012], which can be payment cards, loyalty cards, member cards, identification cards and other payment and non-payment cards. [0027] discloses a wallet client application on the NFC-enabled mobile device 114 which manages multiple soft cards stored in a secure element on the mobile device. Prepaid soft cards (or gift cards) are provided by an OTA provisioning server 112, see [0029] and [0030], to a recipient of a mobile device upon request by a purchaser. Requester and recipient are different persons and the location for requesting a gift card is disclosed to be done from a merchant website or at a merchant point of sale, see [0016] [0023]. The merchant server receives the purchase data and requests the OTA provisioning server to deliver the prepaid soft card to the mobile device, see [0025] and [0026], if the mobile device is NFC-enabled. When payment is made at a cashier, a user selects the payment soft card from the wallet, see [0051], and brings the NFC enabled mobile device in close proximity to the wireless device reader.

2.7 However, D1 is silent about how the other soft cards are provided to and installed on the mobile device.

It may be assumed - reading it implicitly into D1 - that it is the OTA server which provides them. The OTA server would then correspond to the claimed TSM server. It may furthermore be assumed that the "merchant server" in D1 stands for a plurality of merchant servers.

When taking a credit card of D1 as a primary component soft card and a loyalty card of D1 as a secondary component soft card, it may also be seen as a business idea, for example, to link both cards in sort of an aggregated soft card, to make sure that loyalty points are registered after a purchase was made with a particular credit card. Customers might forget to use their loyalty card. Linking these two cards in some way that they are loaded in the payment application in D1 would be a logical technical consequence.

However, the business idea stops here.

2.8 The particular claimed process of requesting and providing an "aggregated" soft card is not disclosed in D1 nor is it rendered obvious, because the features (i), (iii) to (vi), relating to the provision of an "aggregated" soft card were erroneously taken as non-technical whereas they are clearly technical.

2.9 Furthermore, the OTA server of D1 would need to be adapted in the claimed manner, that is, it would need to maintain a mapping database with "aggregated" soft cards, but D1 teaches a different solution: the linking of the different cards in D1 may also be done on the mobile device, simply by allowing a user to combine different cards.

Incorrect application of the COMVIK approach

2.10 The Board observes that the examining division included a trusted service manager (TSM) server accessing a mapping database, the generation of an "aggregated" soft card, the provision of a link including an appli­cation identifier list, in the business method whereas these features have technical character.

2.11 In the Board's view this was an incorrect application of the COMVIK approach, which only permits "an aim to be achieved in a non-technical field" to appear in the formulation of the problem (T 641/00). They can hardly be regarded as notorious (nor did the examining division allege they were, see point 14, page 4, last paragraph). In the absence of prior art proving the contrary, they cannot be assumed to be known as such. Since the decision under appeal does not cover these aspects of the invention, it must be set aside.

Additional search

2.12 Regarding the procedure before the examining division, the Board is of the opinion that the examining division should have performed an additional search since the provision of a trusted service manager (TSM) server accessing a mapping database, the generation of an "aggregated" soft card, the provision of a link including an application identifier list and the other features of claim 1 which relate to the generation of an "aggregated" soft card are neither non-technical nor notorious.

2.13 Following the principles set out in decision T 1242/04, reasons, point 8, the Board considers that it cannot decide without having these features searched which the examining division originally erroneously interpreted to be non-technical or notorious. The term "notorious" should always be interpreted narrowly.

2.14 The examining division briefly noted in paragraph 16 of its decision that the merging or consolidating of several virtual accounts was known in the prior art and referred to the abstracts of D5 and D6. However, there was no detailed discussion about how and why and in which combination this could and would support a lack of inventive step. During the examination procedure, the examining division intro­duced D10 ("Anwendungen und Technik von NFC"), but for a different aspect of the invention, namely for a mobile phone storing several applications having NFC functionality, see point 17 of the decision.

2.15 Although these features were not known from the available prior art, the examining division did not seem to have searched these features at all, which it should have done since these features are of a technical nature. However, a final assessment of the inventive step by the Board is impossible without prior art.

Remittal to the first instance

2.16 Under Article 111(1) EPC, the Board may exercise any power within the competence of the examining division or remit the case to it for further prosecution.

2.17 Article 11 of the Rules of Procedure of the Boards of Appeal (RPBA 2020) means that a board shall refer a matter back to the instance that issued the contested decision for further prosecution if there are special reasons for doing so.

2.18 Since the purpose of the appeal proceedings is primarily to review the decision of the first instance (Article 12(2) RPBA 2020) and the invention was neither searched nor examined for novelty and inventive step on the basis of the features considered technical, there are special reasons justifying remitting the matter to the department of first instance for a search and further examination.

2.19 After the appellant withdrew its request for oral proceedings, the decision to remit the case to the examining division could be made in writing (Article 12(8) RPBA 2020).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the first instance for further prosecution, including an additional search.