Wednesday, 5 October 2011

T 458/08 – Everyday Experience

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application.

The application concerned a method for authenticating and/or authorising in the context of Internet transactions. The ED and the Board both came to the conclusion that the claimed subject-matter did not involve an inventive step. The applicant felt that the way in which one of the features under consideration was treated by the Board was inadequate and voiced a R 106 objection (paving the way for a petition for review).

Here is what the Board had to say:

*** Translation of the German original ***

[7] The Board is of the opinion that it is generally known that telephone orders – which existed long before the Internet business and which still exist alongside it – do not require prior registration.

[7.1] The appellant opposes this assumption and contests that the Board was allowed to base its reasoning on it without there being any written evidence.

[7.2] The Board, on the contrary, is of the opinion that the assumption refers to something everybody experiences every day and which needs no proof, in particular because it is known to members of the Board, who are also members of the public. In this respect, all the members of the Board can remember without doubt having booked say a hotel room without having registered at the hotel beforehand.

[7.3] This was announced during the oral proceedings (OPs) and the appellant had the opportunity to present comments. However, it still requested written proof.

[7.4] In view of said generally known fact the Board is of the opinion that, starting from D1, it is obvious not to require a prior registration whenever there is no need to require the safety level which is guaranteed upon registration […]. A user who is not registered and whose personal data cannot be extracted from a data base has to provide them – in particular the telephone number – in case of need […]. Therefore, in the case of an online transaction it is obvious to provide these data online as well.

[7.5] Therefore, the Board comes to the conclusion that claim 1 of the main request is obvious over D1 together with the general knowledge available on the priority date and, as a consequence, does not involve an inventive step within the meaning of A 56 EPC 1973. […]

[17] Together with the summons to OPs the Board had informed the appellant on the assumption of the Board as presented under point [7].

[17.1] During the OPs the appellant contested that the Board could base its analysis on this assumption without there being any written evidence. It referred to decision T 939/92 [2.3] which states that “in the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact under contention, has to be proved, e.g. by documentary or oral evidence” and requested such evidence for the contested assertion.

[17.2] The Board notes that the appellant has not even mentioned the contested assumption in its response to the summons to OPs. At this stage of the proceedings it would have been very easy to provide written proof.

[17.3] This notwithstanding, the Board is of the opinion that it is justified, for the reasons given above (see point [7.2]) to maintain its assessment even without there being written evidence.

[18] The Board is of the opinion that the question of whether an object can be deemed to be so widely known that it can be considered proven even without written evidence, is a substantive question and not a question of procedural law. Therefore, the Board cannot see any deficiency pursuant to A 112a(2).

[19] As a consequence, the Board dismisses the objection of a procedural violation pursuant to R 106.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.


Anonymous said...

Worth comparing with T1411/08?

oliver said...

Just do it!

Myshkin said...

I wonder why the Board did not simply treat feature a) ("dass der Benutzer beim Anbieter nicht vorab registriert sein muss") as non-technical. The question whether this business feature is well-known would then not have arisen.

Quite a large part of the Board's reasoning seems to be on business concepts and could have been left out by simply applying Hitachi (T 258/03). But maybe Board 3.5.06 wants to reverse much of the case law of Board 3.5.01?

Anonymous said...

nice caselaw, nice pic, nice girl, i love this blog

pat-agoni-a said...

@Myshkin: may the board did not want to enter the discussion whether this feature contributed to the technical character of the invention. This is always a tricky question in my opinion.