T 0737/14 - Analyzing the business method

Key points

• In this examination appeal for a patent application directed to an "authorisation system", claim 1 specifies that the terminal rather than a person is authorized. The Board finds that in the business method of D1 (cited by the Examining Division), authorizing the terminal makes no sense.
• The Board then assesses inventive step. "It is clear that the transaction scenario in the invention is crucial to the question of inventive step because this sets the framework of the technical problem given to the skilled person to solve (see e.g. T 1463/11 - [])). In the communication, the Board raised the question what that scenario was in view of the widely different embodiments disclosed in the application. The appellant neither replied, nor attended the oral proceedings. Thus, the Board has to find a reasonable interpretation based on the examples in the application." 
• The Board turns to the description and finds on page 11 a few sentences discussing that in an embodiment, the "third party" provides funds to the credit card user instead of the "agent". 
• " The description suggests that this idea allows a third party to offer a new type of financial service using existing point-of-sale systems" 
•  "The functions performed by those entities in claim 1 [access terminal at the side of the agent, an account server at the side of the credit card issuer/processor, and an authorisation server on the side of the third party] follow directly from the business scenario. " 

EPO Headnote
The proper application of the COMVIK approach requires a thorough analysis of the business constraints when formulating the problem to be solved before investigating what the skilled person would have done to solve it. The failure to reflect all aspects of the business method in the problem to be solved led the examining division to argue unconvincingly that the inconvenient distinguishing feature of authorising the access terminal was an alternative whose choice was governed by unspecified business constraints (see reasons 4.2).

EPO T 0737/14 -  link

IV. Claim 1 reads:
An authorisation system comprising:
an authorisation server (140);
an account server (120) for storing account data relating to a plurality of accounts;
an access terminal (100), including:
a token reader (106) for inputting token data from a selected one of a plurality of tokens, the token data identifying one of the plurality of accounts; and input means (108) for inputting transaction data;
wherein the access terminal (100) is operable: to receive token data from the token reader (106) and to receive transaction data from the input means (108); to transmit to the account server (120) a first transaction request containing the token data and the transaction data; and to transmit to the authorisation (140) server a second transaction request including access terminal identification data identifying the access terminal;
the account server (120) is operable to receive the first transaction request; to process the token data to generate account identification data, the account identification data being associated with a portion of the account data; and to transmit a third transaction request to the authorisation server, the third transaction request including the transaction data;
the authorisation server (140) is operable to receive the second transaction request and to receive the third transaction request; to process the transaction data and the access terminal identification data to determine whether the access terminal (100) is authorised to enable the transaction; and, if applicable, to transmit to the account server (120) an authorisation request to indicate that the access terminal is authorised; and
in response to receipt of the authorisation request from the authorisation server, the account server (120) is operable to process the transaction data and to modify the account data associated with the account identification data in dependence on the processing.

Reasons for the Decision

1. Background

1.1 The invention concerns an authorisation system for authorising a transaction on an account. Looking at Figure 7, there are three entities in this system: an access terminal 100, an account server 120, and an authorisation server 140. The access terminal sends a first transaction request 204 to the account server that forwards this, as the third transaction request 208, to the authorisation server. The access terminal also sends a second transaction request 206, including a terminal identifier, to the authorisation server. Based on the transaction data, the authorisation server determines whether the access terminal is authorised to enable the transaction, and sends the response 210 to the account server that carries out the transaction on the account.

1.2 The independent claims do not define what sort of transaction is processed by the system. As it turned out, this caused some difficulties in the assessment of the invention, both in examination and appeal proceedings.

[...]

3. The transaction scenario in the invention

3.1 It is clear that the transaction scenario in the invention is crucial to the question of inventive step because this sets the framework of the technical problem given to the skilled person to solve (see e.g. T 1463/11 - Universal merchant platform/CARDINALCOMMERCE, points 12 and 13). In the communication, the Board raised the question what that scenario was in view of the widely different embodiments disclosed in the application. The appellant neither replied, nor attended the oral proceedings. Thus, the Board has to find a reasonable interpretation based on the examples in the application.

3.2 The claims cover the example of the transaction scenario, in which the access terminal is used to load money onto a custom pre-paid credit card. Also, the appellant's arguments in the grounds of appeal focus on this scenario.

3.3 According to the description, a customer who wants to load money onto a pre-paid card goes to a conventional point-of-sale system (access terminal) and swipes the card (see page 10, lines 5 to 11). The customer also presents funds, corresponding to the amount that he wants to load onto the card, to the point-of-sale system that acts as an agent.

The point-of-sale system requests that the credit card issuer or processor credit the pre-paid card with the specified amount. This corresponds to the claimed first transaction request to the account server. The account server redirects the details of the swipe to a third party computer system for authorisation (lines 32 to 34). This corresponds to the claimed third transaction request to the authorisation server. The point-of-sale system also transmits details of the transaction and identification of the access terminal to the third party computer system (page 11, lines 6 to 11). This corresponds to the second transaction request to the authorisation server.

3.4 At first glance, it may appear that the third party is there just to authorise the agent on behalf of the credit card issuer/processor (account server). However, the description goes on to state (page 11, lines 11 to 15):

"In this embodiment, when a user presents funds to an agent, no transfer of funds occurs between the agent and the credit card issuer or processor, but funds are instead provided by the third party to the credit card issuer. The funds are then reimbursed by the agent to the third party in due course. The authorisation process can be used to ensure that only transactions from trustworthy agents are processed."(Board's emphasis)

In the Board's assessment, this means that the role of the third party is actually to guarantee the money vis-à-vis the credit card issuer. In other words, the third party is not only acting as the authorisation server, but also as a financial middleman between the agent and the credit card issuer/processor. It follows that, since the third party needs to recover the funds from the agent, it has to trust the agent. The description suggests that this idea allows a third party to offer a new type of financial service using existing point-of-sale systems (page 11, lines 2 and 3) without requiring a bank account (lines 16 and 17).

4. Inventive step

4.1 The Board takes the view that the pre-paid scenario, including the relationship between the point-of-sale/agent, the credit card issuer/processor, and the third party, is a business idea. According to decision T 641/00 - Two identities/COMVIK, this type of subject-matter cannot contribute to inventive step. Instead, as mentioned above, it is considered to be part of the problem that the skilled person has to solve.

4.2 In the Board's view this case is a good example of why the proper application of the COMVIK approach requires a thorough analysis of the business constraints when formulating the problem to be solved before investigating what the skilled person would have done to solve it. The failure to reflect all aspects of the business method in the problem to be solved led the examining division to argue unconvincingly that the inconvenient distinguishing feature of authorising the access terminal was an alternative whose choice was governed by unspecified business constraints.

4.3 Instead, the skilled person should have been given the problem of implementing a business model on the conventional transaction processing system, as exemplified in D1, in which the third party carries the financial risk and needs to safeguard itself from fraud and recover the funds from the agent. The skilled person would have assigned the necessary technical means, namely an access terminal at the side of the agent, an account server at the side of the credit card issuer/processor, and an authorisation server that carries out the task of the third party. The functions performed by those entities in claim 1 follow directly from the business scenario. Since the third party needs to safeguard itself, rather than the agent, from fraud, the skilled person would realise that the third party has to authorise the agent. Performing the authorisation based on the terminal identifier of the access terminal would have been an obvious implementation.

4.4 Furthermore, as already concluded in point 2.4 above, the skilled person would have provided the terminal with a card reader for reading the card data.

4.5 Thus, the Board judges that subject-matter of claim 1 lacks an inventive step (Article 56 EPC).

Order

For these reasons it is decided that:

The appeal is dismissed.