Saturday, 9 April 2011

T 658/06 – Innovative Is Not Enough

Innovation is one of the mantras of modern life, one of the key words any self-respecting politician has to place in any speech on the future of our societies. As far as patents are concerned, invoking innovation will not do – what is needed is inventive stuff.

The present appeal was against the decision of the Examining Division (ED) to refuse the European patent application under consideration for lack of inventive step.

Here is my translation of Claim 1 of the main request before the Board:
Method for operating a bonus treatment system of a telecommunication network for subscribers to the telecommunication network, in particular a mobile communication network, wherein, on call of a subscriber to the telecommunication network to another subscriber to a telecommunication network via this telecommunication network the bonus treatment system checks, immediately or at a later time, whether the calling subscriber to the telecommunication network is stored in a bonus participant list and wherein, if he is stored in the bonus participant list, a bonus entry is stored in a bonus list of the bonus treatment system as a consequence of his call to the other subscriber to a telecommunication network, characterised in that
  • the identity of subscribers to the telecommunication network is stored in a list (55) of potential participants stored in the bonus treatment system (1),
  • when a subscriber (8) calls or dials in at a unit (10,11) of the bonus treatment system for receiving new participants to the bonus system, after his identity, and in particular the identity that had been declared when calling, has been checked, the identity of this subscriber is stored in the bonus participant list only if at least one comparison of his identity with identities stored in the list (55) of potential participants is positive, i.e. his identity is stored in this list, and
  • in case the identity of a subscriber to the telecommunication network is stored in the bonus participant list (52) of the bonus treatment system, a code number is determined, wherein this code number is stored in his entry in the bonus participant list and the mailing of the code number to him is prompted, wherein in a future call of this subscriber to the telecommunication network, actions concerning this subscriber are accepted by the bonus treatment system only if a comparison of the code number supplied by the user and the code number stored in his entry is positive.
The Board finds this subject-matter to lack inventive step:

*** Translated from the German ***

[6.2] The method according to claim 1 differs from the bonus treatment system of D5 in that:

[6.2.1] a client of the network provider is inserted into the group of bonus participants by dialling in at a unit for receiving new participants to the bonus system, which incorporates his identity data into the bonus participant list if he is found in the list of potential participants (i.e. is indeed a customer of the network provider), and

[6.2.2] a code number is determined for the newly admitted participant to the bonus programme, the number is mailed to him and the subscriber to the telecommunication network is requested to supply it when calling the bonus treatment system at a later time before actions concerning this subscriber are accepted.

A 56 EPC 1973 – Inventive step

Only contributions having technical character are taken into account in the assessment of inventive step (T 641/00 [headnote 1]). The existence of an inventive step can only be asserted when the claimed method comprises at least one technical contribution solving a technical problem. Non-technical contributions do not have to be examined in regard to obviousness or non-obviousness (and, therefore, cannot be used for the formulation of the problem, T 641/00 [headnote II]). When discussing the subject-matter of the claim with the [applicant], the Board has made a detailed search for an inventive technical teaching.

[7.1] The application as such does not disclose an explicitly technical background to the motives for subscriptions to the bonus programme on behalf of customers. The incentive for a caller to become a customer in order to be allowed to participate in the bonus programme, is a matter of sales psychology. The simplification that is aimed at is of an administrative nature; it transfers the expenditure of time from the provider to the customer.

“Great security in view of access restrictions” […] may constitute a technical aspect, but it is already present in D5, where the potential participation to the bonus programme us also limited to the clients of the network […].

[7.2] The appeal points out that the technical effect consists in that the expenditure of the network provider for selecting customers that are entitled to the bonus programme is omitted because the entry into the bonus participant list is triggered by the customer, and that the use of a compact bonus participant list (instead of a complete customer data base) simplifies all subsequent treatment steps.

As far as the latter point is concerned, the Board points out that the bonus participant list according to D5 does not comprise all the customers of the network provider, either. Therefore, the subsequent treatment steps are already facilitated to the same extent as in the method according to the application. Consequently, this facilitation is not a contribution of the application and, incidentally, it would only qualify as an administrative circumvention of a technical bottleneck; the bottleneck remains unchanged (T 258/03 [headnote II]).

[7.3] Therefore, only the feature that the bonus participant list is established by registering calling customers as participants to the bonus programme remains to be discussed.

[7.3.1] The patent application does not disclose any detailed implementation, which implies that it is the skilled person who is in charge of the technical implementation. The [applicant] admits that the individual means of implementation (i.e. for taking calls and storing customer data) have not been invented by it, and stresses that it does not want to protect the means as such, but the general application that customers have themselves registered in the bonus participant list.

[7.3.2] The Board is of the opinion that the basic idea does not have any inventive technical contribution. The idea that not all of the existing customers of the network provider participate in the bonus programme is known from D5 […]. The Board does not see any technical criterion for selecting the participants in the present application (either). The offer according to the application that any client, without any restriction of number, can enlist in the bonus programme is not of a technical nature. That the bonus programme is open to customers who enlist themselves is a decision of administrative nature.

[7.3.3] From the point of view of the network provider, the registration process comprises the following basic steps:
  • a call is taken;
  • it is checked whether the caller is an admissible “potential” participant (i.e. customer);
  • if so, his identity is added to the bonus programme.
(a) The (manual or automatic) answering of a call and the examination of the identity of the caller contain technical aspects, but they do not go beyond actions of the skilled person. The skilled person is always inclined to automate human activities. The applicant has not asserted that a specific technical difficulty has been overcome in the present case, and the Board cannot see any, either.

(b) The decision to add a calling customer to a known bonus programme may be innovative, but it is of an administrative nature and does not require any inventive technical consideration. From a technical point of view, this addition means that a subset of (customer) data is formed, which can be treated in a way that is different from the treatment of the remaining (customer) data. This, however, is a foreseeable filtering effect of any information in a data base. Such an effect is already given in D5: the selected customers are treated differently from customers that have not been selected. The only difference is that the selection is done differently in the present application, based on a different administrative decision.

[7.3.4] The argument of the [applicant] according to which there was no model for automatic subscription of customers to a bonus programme in the prior art, directs the examination of inventive step to viewing the claimed subscription process as a whole. However, the Board is of the opinion that the overall purpose of opening the known bonus programme to customers that enlist is precisely a consideration of administrative nature, which cannot contribute to inventive step, whereas the problem-solution-pairs that are found on the level of implementation only reflect the knowledge of the skilled person (automatic taking of calls, storing the identity of a customer/caller).

[7.4] The method step that follows the registration, i.e. that a code number is established for each new participant to the bonus programme in view of authorising access to his bonus account, is a technical means of access control, but it is a known means (password, PIN) for protecting accounts. Therefore, its use for bonus accounts of a provider of telecommunications is an obvious answer to the obvious risk of abusive access.

[7.5] The “urgent need” for the creation of a powerful and safe bonus system which has been pointed out in the statement of grounds of appeal refers to a non-technical problem (opening the bonus system) and concerns, from a technical point of view, system features that are obvious in view of D5 and considerations of the skilled person.

Moreover, an “urgent need” is not to be equated with a long-standing need, which could be taken into account as an indication of inventive step. In the present case, the solution of technical problems was obvious as soon as the administrative need arose.

[7.6] The assessment of the present case is in line with the case law of the Board, which states that the simplification of the man-machine-interaction can comprise a non-obvious technical contribution. However, as far as man-machine-interaction is concerned, the present claim 1 only requires the use of an interface technique between a telephone and a data base of the provider (which has not been invented by the [applicant]), whereas the data that are transmitted differ from conventional data by their cognitive content (the calling customer wishes to participate in the bonus programme) only. The claim is directed neither to an inventive interface technique nor to an inventive functional data structure; the description sketches the interface only as an element to be programmed by the skilled person.

[7.7] Therefore, the Board does not see any inventive contribution to the art in the main request.

The auxiliary requests failed for the same reason; the appeal was dismissed.

Should you wish to have a look at the whole document (in German), just click here.

The file wrapper can be found here.