T 0021/21 (Gift card network/IMIDUS) 13-06-2024

The invention

1. The invention relates to a reward system that utilises prepaid gift cards. The primary advantage of the system is that customers can acquire a gift card from one of the participating merchants, such as at a point of sale (POS), and use it at any other participating merchant - see paragraph [0006] of the published application.

2. As shown in Figure 3, the user obtains and activates the gift card at POS station 301, located in store A. A gateway server (kernel) 309 transmits card-related data, such as activation data ("the transaction message being to activate a gift card and set an initial balance" in claim 1), from the POS to card management server 313, and sends a response message back.

3. The path between the gateway server and the card management server ("authorization route") is established based on the card's Bank Identification Number (BIN).

Main request, inventive step (Article 56 EPC)

4. Claim 1 essentially corresponds to claim 1 of the refused main request.

As outlined in its preliminary opinion (see points 6 and 7), the Board is of the view that the claim adds subject matter and lacks clarity.

During oral proceedings, it was decided that these issues would only be addressed if an inventive step could be acknowledged. Since this was not the case, they were not further discussed and are, therefore, not relevant to this decision.

5. The examining division held that claim 1 was not inventive over D2. They identified the following distinguishing features (see point 1.3.2.4 of the decision):

1. the system of D2 is adapted to perform the administrative method identified in section 1.3.2.2;

2. the routing function of the authorization system of D2 is implemented as part of a gateway kernel and based on a card bank identification number; the computer associated with the first POS device is configured to receive data from the first POS device via a driver; the authorization route comprises another driver.

The examining division concluded that the skilled person, a programmer, would implement the administrative method (distinguishing feature 1) without involving an inventive step, by making obvious implementation choices (distinguishing feature 2).

6. In its preliminary opinion, the Board identified four distinguishing features (see point 11) and tended to agree with the conclusion of the examining division.

7. During oral proceedings, the appellant argued that there were structural differences between the invention and D2.

As shown in Figure 3, the gateway kernel acted as a firewall providing for additional security by removing sensitive transaction data at the gateway. As a result, the card management server only received and stored non sensitive data, such as loyalty points, functioning as a simple ledger. This was in contrast to the system of D2 where the pooled rewards system, which corresponds to the card management server, stored all transaction data including credentials such as payment card account numbers - see [0031], [0036], [0037] and [0041].

According to the invention, the stripping of sensitive data was based solely on a card BIN number, which was not a typical bank identification number but a number associated with the card management server.

The appellant further argued that the skilled reader would infer the "stripping of data", although not explicitly defined by the claim, from the expression "the gateway kernel (309) configured to match the transaction message", which implied that the response message from the card management server did not contain any transaction data (see also [0025] and [0026]). This interpretation was also supported by [0006], which stated that "[t]he system can be implemented by a third party without storing or managing account information of customers of the member merchants."

8. The Board is not persuaded by these arguments.

First, the removal of transaction data at the gateway cannot be directly and unambiguously derived from the claim or description. On the contrary, the card management server must identify a customer to determine his loyalty point's account and therefore must possess such identification data - see [0007]. Additionally, [0026] states that the same message received by the gateway server is forwarded to the card management server, supporting the Board's view that the gateway server merely routes the message based on the BIN number without otherwise altering it.

Second, if it were obvious to the skilled reader to infer such security feature from the claim and implement it, it could hardly be considered inventive as it is obvious.

9. The appellant further argued that creating a non-bank BIN number, i.e. a BIN number associated with the card management server, and routing messages based on it was not obvious. D2, at most, hinted at using a conventional BIN number for routing a credit card transaction to a card issuer.

10. The Board notes that D2 discloses the concept of routing messages based on an identifier. For example, [0023] and [0042] make it clear that a primary account number (PAN) is used for routing credit card transactions to the appropriate card issuer. In [0062] and [0063], the use of a "reward identifier" is described, which indicates whether a message should be forwarded to the pooled rewards system or not.

The specific nature of the identifier - whether it be a BIN, a flag, or any other suitable identifier - is not relevant from a technical point of view and, therefore, cannot contribute to inventive step.

Moreover, [0023] of the description defines a BIN as the first six digits of a PAN. This seems to contradict the appellant's interpretation that the BIN represents a non-bank identification number specifically assigned to the card management server.

Finally, [0078] of D2 states that payment cards can also be gift cards, and thus, in such cases, routing would likely be based on (parts of) a gift card number, similar to the BIN in claim 1. The Board also agrees with the examining division that D2 at least suggests routing of messages based on bank identification numbers, "all the more so because D2 already discloses the routing of transaction messages containing a primary account number ([0022], [0041], [0042]), which therefore already implicitly contain a bank identification number" (see point 1.3.2.6 of the decision).

11. In the appellant's view, D2 offered an alternative solution to the problem posed, namely "how to deploy a gift card point of sale reward system for both credit card and gift card transactions whilst ensuring that these different types of transaction are separated and do not conflict with each other" (see statement of grounds of appeal, page 7, second paragraph). In D2, the BIN was only used for forwarding a credit card transaction to the correct credit card issuer once the reward flag was set. In contrast, forwarding a gift card transaction to the card management server based on a non-bank BIN was not obvious.

12. In the Board's view, the above mentioned objective technical problem is not derivable from claim 1.

The claim merely defines sending a gift card transaction message from the POS to the gift card management server and receiving a reply message at the POS from the server. This does not involve sending a credit card transaction message and, consequently, does not address the relationship between credit card and gift card transaction messages.

The appellant's argument that this was derivable from the feature "the gateway server being connected to a credit card formatter" is not convincing. The mere fact that the gateway server is connected to other components, such as a credit card formatter, says nothing about how these components are used in the transaction process.

13. Finally, the appellant argued that D2 did not disclose routing messages to internal and external entities, but only to an external payment network.

14. The Board notes that claim 1 does not distinguish between "internal" and "external" entities. D2 discloses that transaction messages are routed to credit card issuers such as MasterCard (see [0022] and [0023]). The term "credit card formatter" in claim 1 can be equated with such an issuer, since it has no recognisable technical function.

Furthermore, as mentioned earlier at point 10, the Board judges that D2 discloses the use of an identifier for routing messages between entities, for instance from the POS to the pooled rewards system or credit card issuer (see Figure 7 and accompanying description from [0059] to [0063]).

15. In view of the above, the Board judges that claim 1 of the main request does not involve an inventive step (Article 56 EPC).

Auxiliary request, inventive step (Article 56 EPC)

16. Claim 1 of the auxiliary request removes two features from claim 1 of the main request to address the objections under Articles 84 and 123(2) EPC, which the Board raised for the first time in its communication under Rule 100(2) EPC.

17. The Board admits the auxiliary request into the appeal proceedings because it appears to be a bona fide attempt to overcome these objections and can be easily handled by the Board (Article 13(1) RPBA).

18. In fact, the deleted features were used by the appellant to argue that claim 1 of the main request was inventive.

The feature "the gateway server being connected to a credit card formatter", in the appellant's view, indicated that the objective technical problem was derivable from claim 1 (see point 12, above).

The feature "to match the transaction message" suggested that sensitive data was removed by the gateway and not transmitted to the card management server (see point 7, above).

Since the appellant's arguments were unconvincing even with these features, removing them does not make the arguments more convincing.

19. Therefore, the Board judges that claim 1 of the auxiliary request is not inventive for the same reasons given for the main request (Article 56 EPC).