T 1438/07 (Managing a transaction II / INTERTRUST TECHNOLOGIES) 01-12-2011

1. The appeal, although admissible, is not successful since none of the appellant's requests is allowable.

2. Remittal to the examining division

2.1 The Board has decided to reject the request for remittal of the case to the examining division.

2.2 Pursuant to Article 111(1) EPC 1973, a board must decide, after assessment of the due circumstances of the case, whether it will rule on the case itself or remit the matter for further prosecution to the examining division (cf. G 10/93, par. 5 of the Reasons). However, there is ipso iure no obligation for a board to remit a case, even if so requested by the parties. The decision is a matter of discretion. In exercising its legal power of discretion, a board must take the relevant circumstances of the case into account. In ex parte proceedings, the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based (see G 10/93, par.3 of the Reasons). The power of discretion encompasses also the subset of 'loss of instance' where a board considers a requirement of the EPC not to be met which has not been taken into consideration by the examining division before, and confirms the impugned decision on the basis of the 'new' ground. Although such a circumstance may justify remittal, the imperative of procedural efficiency has still to be taken into account and justifies in the present case a final decision of the Board.

2.3 Nevertheless, for reasons of completeness the Board notes that the allegedly 'new' ground argued by the appellant is in fact not new, since the objection of lack of inventive step has already been raised and considered in the impugned decision. Contrary to the appellant's reading of the decision as being exclusively based on a statutory exclusion of subject matter from patentability under Article 52(2) EPC 1973, the ground for refusing the application is actually lack of inventive step. The introductory paragraph of the Reasons for the decision reads as follows:

Claim 1 relates to a business method since it does not contain any subject-matter not falling under the exclusions of Article 52(2)(c) EPC which would contribute to the state of the art.

It is true that, read in isolation, this statement may be understood in the way that the subject matter of claim 1 is a business method excluded from patentability. However, the decision also acknowledges that the method claimed is implemented on and executed by means of a computer system ("Ignoring for the moment …", see 1.1). Therefore, the introductory paragraph should be construed to mean that the business method per se "does not contain any subject-matter ... which would contribute to the state of the art". The statement should thus be regarded as part of an inventive-step argument leading to the conclusion in 1.5 that "the subject-matter defined in claim 1 does not satisfy Article 56 EPC". Considering and deciding the appeal on the basis of inventive step hence does not create the type of 'loss of instance' situation argued by the appellant.

2.4 Considering that there are no other particular circumstances apparent from the submissions which may outweigh the drawbacks of further procedural delays if the case were remitted, the Board has decided to reject the appellant's request for remittal.

3. Lack of inventive step

3.1 The invention to which the main request and the first, second and third auxiliary requests relate does not meet the requirement of inventive step as set out in Articles 52(1) EPC and 56 EPC 1973.

3.2 Claim 1 of the main request is directed to a method for managing the transmission of transactional audit records from a first (consumer's) computer system to a clearinghouse.

The term "audit records" is not self-explaining; according to the European patent application, page 10, paragraph 0059 f., audit records 122 are created "detailing, among other things, the price the consumer paid for the content, the identity of the clearinghouse 106 to which the audit records should be sent for processing, and the like. … audit records 122 may reference one or more clearinghouse information (CHInfo) objects 510 and/or budgets 512... ". A CHInfo object 510 "identifies the clearinghouse associated with the content, the forms of payment accepted by the clearinghouse, and a list of thresholds that control the delivery of payment or audit records to the clearinghouse" (ibid.).

A "threshold" is a data construct as shown in figure 4, "specifying age, record count, financial value, average age, age-weighted value, and other predefined characteristics" (cf. application, page 3, paragraph 0013).

Apparently, none of these data and functions serves any specific technical purpose, or provides for a technical effect. The method claimed relates rather to the exchange of purely business-related data between the consumer and the clearinghouse. The only arguably technical aspect results from an implicit understanding of the invention that the data exchange takes place via the Internet under computer program control (cf. application, e.g. page 2, paragraph 0003 and page 5, paragraph 0024).

3.3 The further features of claim 1 do not change this picture: accumulating and transmitting a number of audit records to the clearinghouse, book-keeping, and processing the audit records according to business criteria implemented by means of the threshold objects are not part of a technical solution of a technical problem. The general idea to use computer and computer networks to implement business and financial methods had been a well-known approach long before the priority date of the present application. The present method, therefore, lacks any technical contribution over the prior art which could be considered to involve an inventive step.

3.4 The claims according to the auxiliary requests do not give a markedly different picture of the patentability of the invention.

In the first auxiliary request the term "audit" has been deleted. However, a novel scheme of processing and communicating unspecified data ("records") over a computer network does not automatically qualify as a technical invention. According to the constant case law of the boards of appeal, features may contribute positively to inventive step only to the extent that they contribute in a direct and causal manner to the technical solution of a technical problem. Exchanging records between the first computer and a clearinghouse computer, incrementing and decrementing counts, etc do not serve any such technical purpose.

The circumstance that such functions are computer-implemented and that records are stored in a "secure, tamper-resistant storage" renders the claimed method (as a whole) potentially patentable; in the absence of any inventive implementation features, however, this technical contribution does not involve an inventive step. The use of computers and computer networks to process and to exchange data is common practice. The desire to store certain information at a safe place is, if not related to a specific technical purpose, irrelevant to inventive step. Using a digital storage, and any digital storage is to some extent secure and tamper-resistant, is in the present general context only an obvious implementation feature.

3.5 The second and third auxiliary requests introduce "thresholds" into claim 1, each comprising a type definition, at least one trigger, and state information including value information, a count, and a last acknowledgement.

Figure 4 illustrates this data structure and the associated functionality. The application, page 10 ff., starting with paragraph 0062 ff. explains the meaning of the data encoded in such threshold objects. These threshold objects specify the last date and time the consumer's system communicated with the clearinghouse (ibid., paragraph 0062), the monetary value of the records (ibid., paragraph 0067), and other predefined characteristics indicating the status of the purchasing process. The triggers implement a logical scheme how to decide purchasing requests on evaluation of the business risk. None of these aspects of the claimed invention serves a technical purpose.

The circumstance that a method for managing business transactions online requires a clearly and logically organised business scheme if the business process is to be executed automatically by a computer system does not change the business character of such a method or the activities involved: Creating a business scheme defining the business process in a form that is appropriate to be used by a programmer as a starting point to design and implement the software system requires only knowledge in business matters plus some common sense and capacity of abstract thinking. Such aspects and features of the claimed method can not contribute to inventive step. There are no technical features in claim 1 which go beyond the normal use of common computer means and programming techniques.

3.6 Claim 1 of the third auxiliary request cites three additional steps of the claimed method, none of which leads to a more positive assessment of inventive step.

First, claim 1 defines a step of "indicating a record of the type defined by the type definition of the threshold". It might be arguable whether this feature is unambiguously disclosed in the application as filed. In any case, however, this feature does not serve any meaningful technical purpose. As follows e.g. from Table 1 at page 11 of the application, the type definitions are rather determined by the kind of business operations implemented. To notify the business partner about the type of business operation the communication concerns is a business matter, and thus irrelevant to inventive step.

Furthermore, claim 1 defines the steps of "receiving a signal from the clearinghouse computer... including a time indicator" and "sending a request to the clearinghouse computer" at the time specified by the time indicator.

The idea behind the time indicator becomes clear from paragraph 0077 at page 13 of the application, namely to inform the consumer's system when the clearinghouse is again able to communicate with the consumer if for any reason the clearinghouse is temporarily unreachable. It is general custom and practice, and only courteous between business partners, to inform the other side about opening (or closing) times. Except for using common electronic means for this purpose, there is no technical aspect involved in this feature.

The last step in the method claimed, sending a request to the clearinghouse at the time specified by the clearinghouse, apparently serves to exchange data between the business partners "whenever communication is convenient" (cf. application, page 3, paragraph 0013). The claimed solution is an obvious variant of the common pull technique for communications control where clients are responsible for accessing (polling) and requesting a server to send information from the server to the client. The skilled person would consider this last step in claim 1 as a matter of common practice and general technical knowledge.

3.7 In summary, none of the present requests is related to an invention which complies with the requirement of inventive step. The few technical aspects and features present in the claims are obvious in the light of common computer and communications control techniques.