T 1990/07 (Online coupons / CATALINA) 13-06-2012

Reasons for the decision

1. The application

The application aims at an effective way to distribute and redeem coupons online in a network environment (A1, page 2, lines 1 to 8), and proposes to transfer an electronic token (e.g. in the form of a "cookie") from a server system to a client system. The token may constitute the coupon, i.e. it may include all the data necessary for processing the coupon (page 2, lines 28 to 30; page 6, paragraph 2), or the token is only a pointer to the actual coupon data stored on a server system (page 3, lines 10 to 14; page 7, lines 9 to 15; original claims 31/32). The handling of the token and coupon (generation, storage, detection, authentication, authorisation, redemption, accounting) may be distributed over several servers (see e.g. page 2, line 24 to page 3, line 9).

Main Request and First Auxiliary Request

2. Construction of claim 1

2.1 The Board interprets the first characterising feature "said first server system (120) including means for associating an electronic coupon (304) with said client system (110)" broadly. For example, the fact that a coupon is sent to the client system entails an associating step as the server must address the coupon to the client system. Any association of a coupon with a client is covered by the claim wording; whenever a component of the system knows that a coupon is related to a specific client, the coupon and the client have been associated with each other.

The description of the application supports such a broad understanding: according to the Summary of the Invention, the server merely "transfers" coupons to the client system and the client system stores the coupon (A1, page 2, lines 15/16 and 28/29; page 3, lines 10 to 12; etc). See also original claim 1 ("transmitting").

The specific embodiment of Figure 3 (to which claim 1 is not restricted) mentions that a first server (advertising website 120) may store coupon information "associated with the Client (110)" into the database of another server (clearinghouse 150). Again, this wording covers any manner in which the overall system establishes a relationship between a coupon and a client.

2.2 The second characterising feature, "providing an electronic token to said client system (110) without regard to predetermined client criteria" generally means that the claimed system does not comprise means for filtering clients when tokens are transferred to client systems. In other words, any client is allowed to request and receive a token. No other explanation is provided by any part of the description.

2.3 The third characterising feature, "said token having a data structure associating said client system (110) with said electronic coupon", can be embodied by any pointer which is stored on the client system and points to a storage location of the actual coupon data (e.g. to a server).

3. Closest prior art according to Article 54(2) EPC 1973

3.1 D1 is entitled "Controlled transfer of information in computer networks" and discloses a first server system (Figure 3: coupon-providing server 102) which sends a digital, i.e. electronic, coupon to the client computer 100 (see also Figures 4A/4B; page 12, from line 6 onwards), i.e. the first server (102) associates the coupon with the client system in a general manner by addressing it to the client system.

The coupon may be a digitally signed set of inputs sent from the first server (102) to a program residing at the client computer (page 12, lines 28 to 30). This is an additional, specific way of associating the coupon with the (resident program of the) client system.

3.2 The coupon may simply contain a coded number that can be understood by a program (smart digital offer object) which the client computer may activate at the client computer or at a second server (offer-providing server 106) (page 12, lines 33 to 35; page 14, lines 3 to 12; Figure 4A, steps 120/122/126; claim 29).

3.3 The smart digital offer object (program) examines the "coupon and other user-specific information" and presents an offer to the user based on the coupon and other information (Figure 4A, step 126), resulting in a redemption of the coupon by the user accepting a granted discount (page 12, lines 30 to 32; Figure 4B).

3.4 The embodiment of D1 which activates the smart digital offer object (program) at the second (offer-providing) server includes server means for retrieving the coupon from the client system, see D1, page 14 (lines 3 to 12): "to observe the parameters of the execution environment at the client machine, including the presence of coupons".

3.5 Where the coupon consists of a coded number, it implicitly acts as a pointer (token) to the full coupon information. Otherwise, the smart digital offer object activated at the offer-providing server (106) would not be able to examine the coupon.

At the same time, the offer-providing server (106) knows that the coupon (or pointer or token) under examination originates from the client system which activated the smart digital offer object (Figure 4A, steps 120, 126). Thus, the coupon structure as a whole is associated with the client system (100).

3.6 The token is provided to the client system "without regard to predetermined client criteria". There is no filtering of clients who are allowed or disallowed to request electronic coupons; none of the restrictions mentioned at page 12 (lines 30 to 32) relates to clients.

3.7 Basic technical components (computer processor and associated memory) are implied in the client and server systems of D1.

4. Article 54(1) EPC 1973 - Lack of novelty

Therefore, the Board judges that all the features of claim 1 (main request, auxiliary request 1) are present in D1.

Consequently, the system according to claim 1 lacks novelty (Article 54(1) EPC 1973).

Auxiliary Requests 2 and 3

5. Article 54(1) EPC 1973 - Lack of novelty

5.1 Claim 1 according to auxiliary requests 2 and 3 adds that "a third server system" communicates with "a second server system" over a communications channel for identifying and authorising the redemption of the electronic coupon.

5.2 D1, Figure 4B (steps 130/132) refers to a third server (intermediary server, see also Figure 3, reference numeral 111) in addition to the coupon-providing server 102 and the offer-providing server 106. As a coupon represents financial value, it needs to be protected from fraud and the redemption of coupons resumes security features of conventional online payment schemes. A conventional security measure is the use of a trusted intermediary server as set out by D1 (page 6, lines 31 to 33: "notification server 16 that acts as a trusted intermediary"; page 15, lines 6 to 25).

The communications channel used by the three servers may be embodied by the world wide web (D1, e.g. page 2, paragraph 2).

5.3 Therefore, the Board judges that also claim 1 according to auxiliary requests 2 and 3 contains no novel feature over D1.

Admissibility of Auxiliary Request 4

6. Claim 1 according to auxiliary request 4 was filed three working days before the oral proceedings appointed by the Board of Appeal.

However, under the provision of Article 12(2) RPBA the statement setting out the grounds of appeal shall contain a party's complete case.

According to Articles 12(4) and 13(1)(3) RPBA, the Board has a discretion to disregard requests, facts and evidence filed after the statement setting out the grounds of appeal has been filed.

The discretion shall be exercised in view of inter alia the complexity of the amended subject-matter, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA).

7. As far as procedural economy is concerned, an amendment at a late stage in the proceedings is justifiable if it is an appropriate and immediate reaction to unforeseeable developments in the previous proceedings which do not lie in the responsibility of the party submitting the amendment.

In the present case, the Board's annex to the summons stated that an inventive step required a technical solution rather than a commercial innovation. However, an objection on that basis had been raised by the examining division and was the substantive ground for refusal (decision under appeal, points II.2 to II.4).

The issue was therefore not surprising to the appellant and it could have filed auxiliary request 4 even during the first-instance proceedings. Nevertheless, the appeal refrained from introducing the subject-matter which auxiliary request 4 now highlights as a technical solution to a technical problem.

Also the change of representatives does not constitute an unforeseeable development lying outside the sphere of responsibility of the appellant. On the contrary, it was an internal decision of the appellant (cf. Case Law of the Boards of Appeal of the EPO, 6th edition 2010, section VII.C. 1.5.3, for jurisprudence on this point).

Therefore, the Board holds that there was no procedural justification for filing this request at so late a stage of the proceedings.

8. As far as the complexity of the new subject-matter is concerned, according to the established jurisprudence of the boards of appeal, amendments submitted at, or a few days before, oral proceedings should only be admitted if they are clearly allowable (cf. Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII.E. 16.1.1 and 16.4.1).

Claim 1 entails considerable amendments including deletions of features (with respect to the main request) and insertions of features based exclusively on the description (A1, page 9, line 17 to page 11, line 5).

As the claim resumes only part of the features of the main request and is shifted to a different group of features (cookie generation rather than server structure), the Board considers the claimed system as diverging subject-matter (claim hopping) which in general should not be admitted into second-instance proceedings, in particular at its final stage.

Furthermore, the amendments are based on features from the description which may not have been searched.

Moreover, the deletion of features in claim 1 creates inter alia a clarity problem or a lack of support by the description (Article 84 EPC 1973): the redeeming step has been deleted (from the end of claim 1 of the main request) although the application and all previous versions of claim 1 relate to a "system for distributing and redeeming electronic coupons".

Thus, the claims of auxiliary request 4 are not clearly allowable. The Board is not in a position to come to a substantive conclusion on the request without extending the procedure by a considerable amount of time, which would be detrimental to procedural economy and legal certainty. No procedural circumstances would justify such a conduct of the proceedings.

9. After having taken all these circumstances into account in exercising the discretion given to it in Articles 12(2)(4) and 13(1) RPBA, the Board did not admit the late-filed auxiliary request 4 into the proceedings.