T 2662/16 06-09-2021
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SYSTEM FOR PROVIDING A LOTTERY GAME
Inventive step - mixture of technical and non-technical features
Inventive step - technical prejudice in the art (no)
Reimbursement of appeal fee - (no)
Reimbursement of appeal fee - appealed decision sufficiently reasoned (yes)
Reimbursement of appeal fee - substantial procedural violation (no)
I. The appeal concerns the decision of the Examining Division to refuse European patent application No. 11730779. The Examining Division argued that the subject-matter of all claims of the sole request then on file lacked inventive step (sections 1.1 to 1.5 of the Reasons) and that the subject-matter of claim 8 lacked novelty (section 2.1).
II. The appellant requested throughout the statement of grounds of appeal (page 1, first paragraph; page 4, first paragraph; page 5, second paragraph; page 9, second paragraph; page 11, last paragraph; page 12, last paragraph; page 13, third paragraph; page 14, first and last paragraphs) that the decision under appeal be set aside and that the "examining of the application" be remitted to the first instance, or a remittal "to instruct proper examination" or "for further and proper examination and grant of a patent".
On an auxiliary basis, oral proceedings were requested.
Further, the appellant requested that the appeal fee be refunded because "at least some of the four issues addressed above constitute substantial procedural violations" (grounds of appeal, page 13, last paragraph and page 14, second paragraph).
III. The appellant did not explicitly mention in the statement of grounds of appeal the application documents on the basis of which "proper examination" should be instructed or a patent should be granted. However, the appellant referred throughout the grounds of appeal to claims which were interpreted by the Board in its communication pursuant to Article 15(1) RPBA 2020 preparing the oral proceedings as the ones on which the contested decision is based.
Further, in this communication the Board indicated that it assumed that the appellant requested the Board, if the appeal was allowable, to remit the case to the Examining Division for further prosecution under Article 111(1) EPC, second sentence, second alternative (leading to the Examining Division having to re-examine the case on the basis of the application documents on which the contested decision is based, being bound by the ratio decidendi of the Board, see Article 111(2) EPC).
Claims 1 to 15 on which the contested decision is based were filed with a letter dated 12 August 2013.
IV. With a letter dated 14 May 2021, the appellant withdrew its request for oral proceedings and requested a decision "on the current dossier of the application".
The appellant did not object to the interpretations and assumptions made by the Board in its communication pursuant to Article 15(1) RPBA 2020 in relation to the requests of the appellant.
V. The following documents are referred to:
D1: WO 03/039697 A1
D2: US 6 119 099 A
D3: US 2005/170880 A1
VI. Claim 1 has the following wording:
Terminal (102, 104, 112) for instructing payment transactions comprising:
a) a visual communication unit (210, 212);
b) an input unit (206, 208) for receiving identification comprising account information of a customer and a confirmation of requesting entry of the customer to a lottery game;
c) a remote communication unit (214, 216); and
d) a processing unit (202) for controlling operations of elements of the terminal;
wherein the processing unit is arranged to:
e) display a first transaction amount for goods or services to be purchased by the customer by means of the visual communication unit;
f) propose entry in a lottery game to the customer by means of the visual communication unit;
g) upon receiving a confirmation of requesting entry of the user to a lottery game by means of the input unit, display a second transaction amount being the first amount plus an amount for entry in the lottery game;
h) control the remote communication unit to
i) send out an instruction for executing payment of the second amount to a banking server (160);
ii) communicate the request of entry in a lottery game to a lottery server (150), the request comprising the account information; and
iii) receive lottery information sent by the lottery server in response to the request;
i) upon receiving the lottery information, display at least part of the lottery information to the customer by means of the visual communication unit.
VII. Claim 8 has the following wording:
Lottery brokerage server (130) comprising:
a) a communication unit (306, 308);
b) a storage unit (304); and
c) a processing unit (302) for controlling elements of the lottery brokerage server;
wherein the communication unit is arranged to communicate with a customer terminal (102, 104, 112) for receiving customer lottery entry requests comprising account information of a customer and with a lottery server (150) for sending server lottery entry requests, wherein the storage unit has validation data stored on it and wherein the processing unit is arranged to:
d) extract identification data and account information of the customer from a customer lottery entry request received from the customer terminal;
e) if the identification data corresponds to at least part of the validation data, control the communication unit to send a server lottery entry request to the lottery server, the server lottery entry request corresponding to the customer lottery entry request;
f) in response to receiving server lottery information sent by the lottery server in response to receiving the server lottery entry request, sending customer lottery information to the customer terminal, the customer lottery information corresponding to the server lottery information; and
g) if the server lottery information indicates that the lottery entry request resulted in winning a prize, instruct, via the communication server, a banking server (160) to pay a prize amount to an account of the customer identified by the account information.
VIII. Claim 11 has the following wording:
System for providing a lottery game, comprising:
a) the terminal (102, 104, 112) according to claim 1;
b) the lottery brokerage server (130) according to claim 8; and
c) a lottery server (150) operatively to the lottery brokerage server [sic];
wherein the terminal is arranged to communicate with the lottery server via the lottery brokerage server.
IX. Claim 13 has the following wording:
Method of operating a terminal (102, 104, 112) for instructing payment transactions comprising:
a) display (406) a first transaction amount for goods or services taken by a customer by means of a visual communication unit (210, 212);
b) propose (408) entry in a lottery game to the customer by means of the visual communication unit;
c) upon receiving a confirmation of requesting entry of the user to a lottery game from the customer, display (416) a second transaction amount being the first amount plus an amount for entry in the lottery game;
d) send out (420) an instruction for executing payment of the second amount to a banking server (160);
e) communicate (436) the request of entry in a lottery game to a lottery server;
f) receive (476) lottery information sent by the lottery server in response to the request; and
g) upon receiving the lottery information, display (478) at least part of the lottery information to the customer by means of the visual communication unit.
X. Claim 14 has the following wording:
Method of operating a lottery brokerage server (130) comprising:
a) extracting (440) identification data from a customer lottery entry request received from a customer terminal (102, 104, 112);
b) if the identification data corresponds to at least part of the validation data, controlling (458) the communication unit to send a server lottery entry request to a lottery server (150), the server lottery entry request corresponding to the customer lottery entry request;
c) in response to receiving server lottery information sent by the lottery server in response to receiving the server lottery entry request, sending (474) customer lottery information to the customer terminal, the customer lottery information corresponding to the server lottery information.
XI. The arguments of the appellant set out in the statement of the grounds of appeal are referred to in the part "Reasons for the Decision" below.
1. The appeal is admissible.
2. Substantial procedural violation / request for refund of the appeal fee
Separating technical features from non-technical features, identifying the closest prior art, defining the skilled person's common general knowledge and considering its application for solving the posed technical problem cannot be considered procedural tasks. Instead, these activities relate to judging in substance whether or not an invention involves an inventive step. Consequently, whenever one of these activities was performed incorrectly, this would pertain to an error of judgement rather than to a procedural violation.
The first three issues addressed by the appellant in the last paragraph of page 13 of the grounds of appeal (incorrectly separating technical features from non-technical features for assessing novelty and inventive step of claim 1; not properly identifying the closest prior art for assessing inventive step of claim 1; incorrectly applying the definition of common general knowledge) therefore do not relate to procedural aspects.
Concerning the fourth issue addressed by the appellant (i.e. not providing sufficiently reasoned statements for refusing the grant of a patent "for some claims"), the Board notes that decisions of the European Patent Office which are open to appeal shall be reasoned under Rule 111(2) EPC. This is a procedural requirement and the lack of such a reasoning would be considered a substantial procedural violation within the meaning of Rule 103(1)(a) EPC.
However, the requirement that the decisions shall be reasoned applies to the decision as a whole. Rule 111(2) EPC does not require that a reason be given for each individual claim of an application, in particular not at the same level of detail. In this context, the Board points out that the whole application is already to be refused under Article 97(2) EPC if only one single claim of a sole claim set does not meet the requirements of the EPC.
In the present case, the contested decision substantiates in detail why the subject-matter of claims 1 and 13 is not considered inventive (sections 1.1 to 1.3 of the Reasons). Further, the contested decision comprises a detailed reasoning why the subject-matter of claim 8 is not considered new (sections 2.1 to 2.4). In addition, the contested decision indicates that "the subject-matter of all claims lacks an inventive step" (section 1.5) and gives some reasons therefore concerning claims 8, 11 and 14 (section 1.4). For the reasons set out above, it is irrelevant that the latter reasons are given at a lower level of detail than the substantiations given in sections 1.1 to 1.3.
Thereby, the contested decision is sufficiently reasoned within the meaning of Rule 111(2) EPC, contrary to the submission of the appellant.
Thus, the four issues raised by the appellant (grounds of appeal, page 13, last paragraph) do not constitute substantial procedural violations and the requirements of Rule 103(1)(a) EPC for a refund of the appeal fee are not fulfilled.
3. Article 84 EPC, claim 8
Claim 8 refers to "the communication server" in feature g). However, no communication server is mentioned as part of the lottery brokerage server in the preceding features of claim 8. Thereby, claim 8 does not fulfil the requirements of Article 84 EPC.
In the following, as in the Board's communication preparing the oral proceedings, the term "communication server" in feature g) of claim 8 will be interpreted as "communication unit" as defined in features a) and c) of claim 8.
4. Inventive step, claims 1, 8, 11, 13 and 14 - technical features / conventional payment processing systems
The appellant does not contest that the Examining Division separated the technical features from the non-technical features (grounds of appeal, page 2, lines 13 to 16).
It submits, however, that when separating the technical from the non-technical features, the features providing a technical contribution should be identified instead of the features not providing a technical contribution (grounds of appeal, page 2, lines 18 to 22).
This will be done in the following for the independent claims.
4.1 Claim 1
The Board agrees with the appellant's identification of the following technical features of claim 1 (grounds of appeal, page 3, second paragraph):
1 a terminal with
2 a visual communication unit,
3 an input unit for receiving information,
4 a remote communication unit and
5 a processing unit,
6 the various modules of the terminal being arranged to communicate with a banking server
7 as well as with a lottery server, and
8 the visual communication unit being arranged for displaying particular information.
In the contested decision (section 1.1 of the Reasons), the Examining Division indicates that the claims concern known payment processing systems composed of POS terminals and banking servers.
The POS terminals of such systems commonly comprise visual communication units/displays, input devices (such as keypads, card readers and bar code readers), remote communication units and processing units. Further, such terminals conventionally communicate with the banking servers of such known payment processing systems.
Thereby, known payment processing systems undoubtedly disclose features 1 to 6.
Further, such payment processing systems, at the priority date of the present application, usually involved a number of banking servers of different payment processing companies, for instance, different credit or banking card companies.
Therefore, the only aspect of feature 7 that is not disclosed by a commonly known payment processing system is that one of the servers to which the terminal is connected performs lottery instead of banking functions (see also grounds of appeal, page 4, lines 20 to 23).
In a similar manner, the only aspect of feature 8 that is not disclosed by a commonly known payment processing system is the particular information displayed, i.e. the content of what is displayed, relating to a lottery game (ibid.).
4.2 Claim 8
Claim 8 is directed at a lottery brokerage server and comprises the following technical features:
9 an intermediate server with
10 a communication unit arranged to receive data from and send data to a terminal and a server, the communication unit being further arranged to send data to another server
11 a storage unit,
12 a processing unit.
Intermediate servers according to feature 9 and further comprising features 10, 11 and 12 were, however, generally known at the priority date of the present application (28 June 2010), for various aspects of data processing. One of these generally known aspects of data processing is to provide interfaces in order to remove the need for individual computers to be able to communicate with multiple other computers (see grounds of appeal, page 6, lines 15 to 20). Examples would be gateways or proxy servers. The Board does not believe that it is necessary to provide written evidence in the form of e.g. a textbook excerpt therefor.
Thus, the only technical aspects of claim 8 going beyond what was generally known from intermediate servers at the priority date of the present application are those aspects relating to the lottery game.
The Board notes as an aside that documents D1 to D3 represent further examples of intermediate processing by such intermediate servers, even in the context of lottery systems, in line with the Examining Division's reasoning in section 1.4 of the contested decision.
4.3 Claim 11
Claim 11 essentially combines the features of claims 1 and 8 to a system. The Board notes that the use of intermediate servers in the framework of payment processing systems was also generally known at the priority date of the present application.
For the reasons set out above, the only technical aspects of claim 11 going beyond what was generally known from payment processing systems with terminals, banking servers and intermediate servers at the priority date of the present application are those aspects relating to the lottery game.
4.4 Claims 13 and 14
Claims 13 and 14 relate to methods of operating a terminal and a server for the purpose of conducting a lottery game. The technical aspects of the terminal and server referred to were generally known at the priority date of the present application as set out above with respect to claims 1 and 8. The methods themselves do not add any technical aspects not already comprised in claims 1 and 8.
Thus, the only technical aspects of claims 13 and 14 going beyond what was generally known from payment processing systems with terminals, banking servers and intermediate servers at the priority date of the present application are those aspects relating to the lottery game.
5. Inventive step, claims 1, 8, 11, 13 and 14 - problem-solution approach
5.1 Closest state of the art
It follows from the above that a generally known payment processing systems with terminals, banking servers and intermediate servers and the corresponding method is a suitable starting point or closest prior art in the framework of the problem-solution approach.
The Board does not believe that it is necessary here to provide a reference in the form of a patent document to any specific POS terminal or system, contrary to the suggestion of the appellant (grounds of appeal, page 3, lines 25 to 27). This is dispensable since such terminals/systems and the corresponding methods were generally known at the priority date of the present application.
5.2 Difference
The subject-matter of claims 1, 8, 11, 13 and 14 differs from a system/method according to the closest state of the art only by aspects directly related to the creation of a lottery. Considerations which parties and which entities are to perform which tasks in a lottery scheme, and how access to lottery-relevant information is managed are merely implementations of a business idea (see below), contrary to the submissions of the appellant (see grounds of appeal, page 6, lines 20 to 22 and page 10, line 12 to 15).
These aspects are all part of what was listed by the Examining Division in section 1.1 of the contested decision, i.e. steps a) to g) of claim 13 and what is further defined in steps a) to c) of claim 14.
5.3 Objective technical problem
Creating a lottery is per se a business idea, as set out by the Examining Division (section 1.1 of the contested decision). Thereby, the aspects relating thereto may be seen as requirements to be met that are given to the technically skilled person.
The objective technical problem to be solved can thus be formulated as how to implement the aspects relating to the creation of a lottery on a generally known payment processing system with terminals, banking servers and a proxy server, and how to implement the corresponding method.
5.4 Obviousness
5.4.1 Such an implementation does not involve any particular technical problems the solution of which would require the exercise of any inventive skills. The application does not mention any such problem, either. Instead, such an implementation has to be considered to be a straightforward task for the technically skilled person.
5.4.2 The appellant submitted that lottery business was a conservative business and that, in order to prevent fraud, lottery operators had a strong prejudice against system integration (grounds of appeal, page 5, lines 14 to 21), which would have led the skilled person at most to provide a communication link between a lottery terminal and a POS terminal (grounds of appeal, page 6, lines 4 to 6) if they wanted to solve the problem of establishing an exchange of information between the two terminals (grounds of appeal, page 5, lines 9 to 12).
However, the Board doubts that such a prejudice really existed, since D1, D2 and D3 all disclose lottery systems that are in some way integrated into other systems (D1: banking server 50, see figure 1 and page 13, lines 16 to 23; D2 and D3: POS systems, see figures).
In any case, contrary to the arguments of the appellant, if such a prejudice existed, it would have been based on business considerations only and not on technical aspects of the lottery system. Such business considerations would include, inter alia, considerations which parties and which entities are to perform which tasks in a lottery scheme, as noted above.
The technically skilled person, on the other hand, would not have had to overcome a technical prejudice in order to integrate a lottery system into a payment processing system with terminals, banking servers and a proxy server.
5.4.3 The appellant further submitted that in D1, the verification of winning numbers was performed at the agent server and that the skilled person would have had no reason to move this verification to the state lottery administrator (grounds of appeal, page 9, line 20 to page 11, line 8).
However, as mentioned above, considerations which parties and which entities are to perform which tasks in a lottery scheme, and how access to lottery-relevant information is managed are non-technical aspects of such a scheme. Such considerations include determining where winning numbers are drawn and where they are compared with numbers assigned to a lottery participant. Thus, even if the verification of winning numbers was performed in D1 at a different location than in the present application, this difference would reflect a non-technical aspect and could thus be incorporated into the requirement specification given to the technically skilled person.
5.4.4 In view of the above the subject-matter of claims 1, 8, 11, 13 and 14 lacks inventive step (Articles 52(1) and 56 EPC).
6. Other issues
In view of the above, it does not need to be discussed whether D1 discloses in fact all the features of claim 8 of the present application or not. In a similar manner, the objection relating to Article 82 EPC raised in the Board's communication pursuant to Article 15(1) RPBA 2020 need not be discussed, either.
7. Conclusion
Claim 8 does not meet the requirement of clarity (Article 84 EPC). None of claims 1, 8, 11, 13 and 14 meets the requirement of inventive step (Articles 52(1) and 56 EPC). Consequently, the appeal must fail.
For these reasons it is decided that:
1. The appeal is dismissed.
2. The request for reimbursement of the appeal fee is refused.