I owe the knowledge of the present decision – which had escaped my scrutiny - to the Kluwer Patent Blog. It is one of those decisions where one can see that the problem-solution approach sometimes leads to, um, surprising results.
The Board had to deal with the refusal of an application by the Examining Division. Claim 1 on file read :
A transaction system (100) for providing a financial transaction service to a subscriber, said transaction system (100) comprising:(a) a service control unit (120) which processes financial transaction services for the subscriber;(b) a subscriber service interface (160) for providing a service menu to a mobile terminal of the subscriber through a communication network (200) and for outputting (S110; S210) a corresponding charging or realization service request message to said service control unit (120) to provide a corresponding financial transaction service when an item of said service menu is selected;(c) a transaction service interface (150) connecting said service control unit (120) by means of a financial network (300) to at least one bank settlement system (410; 420) which upon a settlement request message transmitted by said service control unit (120) by means of said financial network (300) to said bank settlement system (410; 420) processes a first transfer of money between a bank account of the juridical body providing the financial transaction service opened in said bank settlement system (410; 420) and a bank account of the subscriber; and(d) a database (110) for storing data processed in said service control unit (120), said database (110) including a service account of the juridical body providing the financial transaction service and a mobile account granted to a cellular phone number of a mobile terminal of the subscriber, wherein the service control unit (120) processes a second transfer of a corresponding amount of money between the service account of the juridical body providing the financial transaction service and the mobile account of the subscriber.
Having found this claim to be novel, the Board assesses its inventive step :
[3.2] Document D2 discloses a secure payment system allowing a user (payer) to pay, using e.g. a mobile phone, a service provider (payee) via a host computer.
[…] at least the following features of claim 1 are not disclosed in D2:
- a subscriber service interface for outputting a corresponding charging or realization service request message to said service control unit to provide a corresponding financial transaction service when an item of said service menu is selected (cf feature (b));
- a transaction service interface (150) connecting said service control unit (120) by means of a financial network (300) to at least one bank settlement system (410; 420) which upon a settlement request message transmitted by said service control unit (120) by means of said financial network (300) to said bank settlement system (410; 420) processes a first transfer of money between a bank account of the juridical body providing the financial transaction service opened in said bank settlement system (410; 420) and a bank account of the subscriber (cf feature (c));
- a database including a service account of the juridical body providing the financial transaction service (cf feature (d));
- wherein the service control unit processes a second transfer of a corresponding amount of money between the service account of the juridical body providing the financial transaction service and the mobile account of the subscriber (cf feature (d)). […]
[4.1] The closest prior art is considered to be provided by document D2. The above distinguishing features over D2 allow a user (subscriber) to load money on his account in the host computer.
Accordingly, the objective problem to be solved relative to D2 is to provide the system with means allowing a user to load money on his account in the host computer (or realise money from his account).
[4.2] As none of the documents cited in the search report or otherwise cited in the course of the examination procedure address the above objective problem to be solved or contain any indication as to its solution, the subject-matter of claim 1 is not considered to be obvious to a person skilled in the art.
[4.3] In the decision under appeal the claim then under consideration was in substance held to be the straightforward technical implementation of an administrative banking procedure lying outside the patentable regime.
The board generally agrees that reloading the host computer account fundamentally constitutes (part of) a business method and, thus, would lack technical character.
However, insofar as administrative banking procedures indeed lack technical character, present claim 1 is not confined to merely reciting an administrative banking procedure alongside straightforward technical means for its implementation, but rather provides a technical solution, involving technical means to the technical problem of how to reload such an account. The solution as claimed is, as discussed above, not considered obvious.
Accordingly, the subject-matter of claim 1 involves an inventive step in the sense of A 56.
Should you wish to download the whole decision, just click here.
To have a look at the file wrapper, click here.
The decision has also been commented on Visae Patentes.
3 comments:
Interesting decision. There is no doubt in my mind that Board 3.5.01 would have dismissed the appeal.
I wonder what Board 3.4.03 finds non-trivial about the implementation defined by the distinguishing features. These features essentially specify suitable software modules for performing non-technical functions. I don't find the reasoning in point 4.2 acceptable in a case like this one.
The allocation of the case to a given board is based on the leading IPC code given to the application, according to the business distribution scheme of the BoAs. This allocation is AFAIK automatic.
In 2010, board 3.4.03 was in charge for IPCs B06; C25; C40B20/04, 70/00; F03H; G01V; G03 (exc. C); G07 (exc. B); G09B, F, G; H01C, G, J, L, M, S; H05B, F, K. (I didn't bother looking up the scheme for 2007 when the case arrived before DG3; I'd be surprised if it was very different).
Looking up these codes in ECLA (which essentially subsumes the IPC), you will see that this board is probably more versed in more tangible subject-matter, including "basic electrical elements" or "electric heating", with the exceptions of fields such as "combinatorial chemistry", and "education, cryptography, display, advertising, seals".
The application was initially classified under exactly one IPC, G07F19, whose definition rather sounds like mechanical implements (i.e. ATMs) rather than a business method (G06Q).
This IPC was in all probability allocated by an EPO pre-classifier, who's in charge of routing incoming applications to a competent examiner.
Pre-classification is usually an empirical and approximative endeavour generally accomplished in just minutes (if not seconds), and a significant proportion (say, 25 to 50%) of applications arriving in a group responsible for a given technical field will be sent on to another field. The pre-examiner cannot possibly have the expertise of the classification specialists or know the organically grown working arrangements between directors or examiner groups.
In this case, the application was published without a search report ("A2 publication"). It is probable that the examiner responsible for establishing the publication data, including IPC, did not spend much time, and simply translated the titles and maintained the pre-classification corresponding to his field of competence. This IPC will remain frozen for eternity.
Only at a later date, i.e. after publication 18 months after priority, will the document be circulated amongst examiners for an accurate classification according to ECLA, which contrary to IPC is continually maintained. This particular application received several codes under G06Q for business methods. This scheme is relatively new, it was probably formerly classified in an ad hoc scheme under G06F, data processing equipment, but still designating a business method.
I think this case is illustrative of the importance of a quality patent classification. The DG3 allocation scheme is not ideal, as it is potentially dependent on a rather approximate classification allocated at a very early stage. I'm not sure how this could be improved, as appellants must not have the sensation that their case is routed to a prejudiced board by an arbitrary allocation.
I am nevertheless of the opinion that the Search and Examining divisions nevertheless did an acceptable job overall in this case.
Je vous souhaite une onne et heureuse année, einen guten Rutsch, et beaucoup de petits brevets.
I think its important decision. its change the mind.
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