This decision concerns an European patent application relating to cardless payment. Here are the practical takeaways from the decision T 1413/07 of the Technical Board of Appeal 3.4.03.
Key takeaways
The formulation of the appellant contains pointers to the solution in that it is specified that the customer should not carry any special equipment. This is to be avoided.
The invention
The invention relates to a method for assigning an alias, such as a phone number and a Personal Identification Number (“PIN”), to a credit card so as to eliminate the need for the physical presence of the card during a transaction.
Figure 1 of EP1200926
Here is how the invention was defined in claim 1:
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Claim 1 (sole request)
Is it patentable?
The examining division refused this European patent application for lack of novelty and lack of inventive step in view of the following document:
D3: WO 98/37524 A1.
The Board had a different opinion. In detail, the sixth embodiment of D3 was considered the closest subject-matter and does not disclose the following features of claim 1:
3.3 In relation to its sixth embodiment document D3 does not disclose the following features of claim 1:
(i)” the credit card number also having an associated PIN;
(ii)” linking the alias with the PIN in the database;
(iii)” entering the PIN into the device upon initiation of a transaction without receipt of the credit card number;
(vi) authenticating the transaction by retrieving the PIN in the database and comparing the retrieved PIN with the received PIN.
The Board found that the differing features indeed solve a technical problem and considered claim 1 inventive:
4.2 Objective technical problem
…
4.2.2 The features of claim 1 which are not disclosed in document D3 in relation to the sixth embodiment are those relating to a PIN, namely features (i)”, (ii)”, (iii)”, and (vi) … The use of a PIN ensures that the method is secure. Furthermore, these features allow the customer to dispense with the mobile telephone since the alias and the PIN are entered into the same device. Instead of carrying the mobile telephone, the customer merely needs to remember the alias and the PIN. This is more convenient.
4.2.3 … Furthermore, in view of the above effects of the differing features, the technical problem cannot be regarded to be merely to provide an alternative solution to a known problem. Such a formulation would not be ambitious enough.
It is therefore appropriate in the present case to reformulate the objective technical problem. The formulation of the appellant contains pointers to the solution in that it is specified that the customer should not carry any special equipment. This is to be avoided.
The objective technical problem is therefore regarded to be how to implement the method in a way which is more convenient to use but still secure.
4.3 Obviousness
…
4.3.3 Therefore, in the fifth embodiment the customer still has to carry his mobile telephone. In addition he has to remember the PIN. The fifth embodiment is therefore not more convenient for the customer than the sixth embodiment. The skilled person would therefore not consider the fifth embodiment when attempting to implement the method of the sixth embodiment in a way which is more convenient to use but still secure.
4.3.4 Furthermore, the fifth embodiment involves entering the PIN into the mobile device 1. Even if the skilled person were to consider incorporating the teaching of the fifth embodiment into the sixth embodiment he would therefore be led to have the PIN entered (by the customer) into the mobile device 1, e.g. as part of the confirmation message sent from the mobile device 1 to the financial server 4′. The PIN would thus not be entered into the same device as the alias, which is entered into the terminal 2 (by the salesperson). However, it follows from the wording of claim 1 (see point III., feature (iii)), which has been amended during the appeal proceedings, that the alias and the PIN are entered into the same device (to be performed by the customer). Therefore, the combination of the teachings of the fifth and sixth embodiments of D3 would not lead the skilled person to the claimed subject-matter.
4.3.5 Accordingly, the subject-matter of claim 1 involves an inventive step over document D3.
Consequently, the case was remitted to the department of first instance and a patent (EP 1 200 926 B1) was granted afterwards.
More information
You can read the whole decision here: decision T 1413/07 of the Technical Board of Appeal 3.4.03.