Accenture Global Services Limited
[2017] APO 9
•24 February 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Accenture Global Services Limited [2017] APO 9
Patent Application: 2015203884
Title:Adaptive marketing using insight driven customer interaction
Patent Applicant: Accenture Global Services Limited
Delegate: Dr S.D. Barker
Decision Date: 24 February 2017
Hearing Date: Written submissions were due to be filed by 22 December 2016, but were not filed.
Catchwords: PATENTS – examiner objections – manner of manufacture, inventive step and section 40(3A) – substance of the invention is a scheme – all grounds of objection made out – application refused
Representation: Patent attorney for the applicant: Murray Trento & Associates Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015203884
Title:Adaptive marketing using insight driven customer interaction
Patent Applicant: Accenture Global Services Limited
Date of Decision: 24 February 2017
DECISION
I refuse to accept the application.
REASONS FOR DECISION
Patent application 2015203884 was filed by Accenture Global Services Limited (the applicant) on 10 July 2015.
The application is a divisional application of 2012200695 (the parent application). The parent application lapsed without gaining acceptance. The parent application is a divisional application of 2008255276 (the grandparent application). The grandparent application lapsed without gaining acceptance. The grandparent application is a divisional application of 2003302762 (the great-grandparent application). The great-grandparent application lapsed without gaining acceptance. The great-grandparent application claimed priority from US 10/302,395 (filed on 22 November 2002).
An examination report on the present application[1] issued on 16 March 2016 raising the grounds of manner of manufacture, novelty and inventive step. Amendments were filed on 26 October 2016, and a second examination report issued on 22 November 2016 maintaining the grounds of manner of manufacture and inventive step and raising the new ground of section 40(3A). That report also included the observation:
"My report includes objections that are equivalent to objections raised in previous examination reports. As there has now been several adverse reports in relation to this subject matter, the application will be referred to a Hearing Officer to consider whether to accept or refuse the application under s49 or to direct amendment under s107. If you wish to be heard on this matter, you have 1 month from the date of this report to request a hearing. Fee item 230 applies.
If you request a hearing you will contacted regarding the relevant deadlines in due course. Hearings in relation to examination objections are normally by way of written submissions. If you disagree with the Hearing Officer's decision you may appeal the decision to the Federal Court of Australia.
Subject to the outcome of the Hearing decision:
You have until 16 March 2017 to overcome all my objection(s) otherwise your application will lapse."
[1] Throughout this decision, where I refer to "the present application", that is the application as proposed to be amended.
The applicant did not ask to be heard.
In deciding this matter I have had regard to the submissions provided by the applicant in relation to the present application, and also the various predecessor applications.
The relevant law
The examination of the present application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act – the application was made after 15 April 2013.
The standard of proof that applies to the examination of the present application is the balance of probabilities – I must accept the present application if satisfied on the balance of probabilities that the application complies with the Act.[2] If I am not so satisfied, then I can refuse the application.[3]
[2] Section 49 of the Act as amended.
[3] Explanatory Memorandum to the Raising the Bar Bill at page 54.
THE SPECIFICATION
The specification as filed states that the field of the invention is:
"The invention relates to adaptive marketing, and more particularly to adaptive marketing using insight driven customer interaction."
The specification does not provide a definition of adaptive marketing. However, I consider that it is understood that adaptive marketing refers to changing or reforming (adapting) a company's marketing mix to suit to the particular geography in which they are is operating.
By way of background, I note that modern marketing has moved away from marketing by mass media (television, radio, newspapers) towards customer centric marketing using channels like direct mail. Customer centric marketing involves targeting selected customers with tailored communication, such as a selected channel of communication and a selected message at a selected time. Critical to this approach is information about customers and analysing that information to select and tailor (or model) the marketing.
The present application states that it addresses the problem of modelling for marketing processes:
"The time-consuming conventional modelling and marketing processes cannot support rapid test and learn iterations that could ultimately improve offer acceptance rates. After completing a marketing campaign, the personnel may gather the results of the campaign to determine a success rate for the campaign. The results, however, are typically not effectively fed back into the customer information database and used to re-analyze predictive customer behaviour."[4]
[4] The present application at page 3.
The application also notes that "targeting models are costly",[5] and it is problematic that:
"the data used to create the predicted models, and ultimately define and execute the marketing campaigns is old by the time models are run, leading to out of date model results and poor offer acceptance rates for the resulting marketing campaigns".[6]
[5] The present application at page 3.
[6] The present application at page 3.
The application sums up the problem it addresses as follows:
"However, since traditional methods prevent the business from quickly generating reliable, targeted offers for customers based upon predictive analytical models and refined through rapid test and learn iterations, they are unable to deliver optimized marketing offers tailored to their customers and prospects across all forms of customer interaction; best offer to the right customer through the best channel."[7]
[7] The present application at page 4.
The solution presented in the present application is a computer implemented method of targeting appropriate customers. Different aspects of the method are described at pages 4 – 5c. The way in which the adaptive marketing is carried out is broadly shown in Fig 1A of the application, which provides
"a block diagram of a method for adaptive marketing using insight driven customer interaction according to one embodiment of the invention."[8]
[8] The present application at page 6.
Fig 1A is shown here:
The elements of this approach are explained in the application. I will quote some useful parts of the description to aid understanding of the invention as described.
The database (10): The specification explains that the database is any known data storage mechanism:
"Initially, a database may be created to store customer data, step 10. The customer data may be collected through internal, external, and/or business partner data sources. The database used for storing customer data may be any known data storage mechanism, generally a relational database often referred to as a data warehouse. According to one embodiment of the invention, the data warehouse platform used for storing the customer data is powered by NCR's Teradata system."[9]
[9] The present application at page 7.
Extract customer data (12): Customer data can be extracted by any database management tool. In the present case that tool is a Customer Analytic Record (CAR) application because the resulting information is a Customer Analytic Record (CAR). However, that is the name that is given to the resulting information because it is information about customers:
"The data may be extracted from the database, step 12. In one embodiment, a CAR/PAR application may be used to extract data from the database and then transform, aggregate, and combine the data into standardized virtual flat file records for each customer, such as a customer analytic record (CAR) for existing customers and a Prospect Analytic Record (PAR) when the targeted consumers are not current customers of the company. The step of transforming the data may include custom transformations to fill the calculated CAR fields."[10]
[10] The present application at page 7.
Segment customers (14): The extracted data is filtered based on criteria in the database:
"Segmentation may be performed based on the data extracted, step 14. The segmentation process may establish customer segments, for example, 6-9 groups of customers that are used to drive the campaign strategy and design. The customer segments may be created based on similar characteristics among a plurality of customers. Segmentation is usually based on a random sample set of customer records extracted through the CAR views."[11]
[11] The present application at page 10.
Define campaign (16): Based on the information in the database, a marketing approach is identified:
"After segmenting the customer records, a marketing campaign may be defined for one or more customer segments based upon what's known about the customers in the segment, step 16. For example, referring to Fig. 1B, the lift value may indicate a likelihood for a customer segment to redeem an offer. The lift value may be calculated by dividing a number of accounts held by a predetermined number of customers divided by the number of customers. The lift value provides a factor that may be used to target specific segments and reduce the total number of customers to whom an offer is to be communicated. A reduction in costs is achieved because fewer telephone calls or mailings are necessary to achieve substantially the same or higher response. For example, if a marketing campaign results in 100 new accounts for a bank out of the 1,000,000 customers contacted with the marketing offer, 0.0001 is the calculated lift. By using adaptive marketing through the present invention, 100 new accounts may be opened by contacting just the 400,000 customers most likely to respond (as determined by the model). In Fig. 1B, because segments 2, and 6 have a high lift value, these 10 segments may be targeted for a marketing campaign. By using adaptive marketing, a 0.0025 lift results, which means that for the same number of sales, 600,000 fewer customers needed to be contacted. Because, each contact has a cost, a reduction of 600,000 contacts in an outbound telemarketing context may save millions of dollars in marketing costs."[12]
[12] The present application at page 10 – 11.
Clearly this is merely a prediction of what might be achieved, and is in no way a guarantee of success. Fig 1B is an example of how a campaign could be designed, and there is no suggestion that the invention is limited to this process. There is no reason to think that designing a campaign is unusual.
Create/train the predictive model (18): A prediction is made as to how successful the campaign is likely to be. This is done using known tools:
"Next, a predictive model may be created/trained to determine the specific offers to provide to customers based on the data extracted, step 18. Predictive models may be created when a first marketing campaign is defined. Predictive models are often developed using statistical methods like logistic regression, but data mining technologies like neural nets, decision trees may also be used."[13]
[13] The present application at page 11.
In the first instance a model is created to estimate how successful the marketing is likely to be:
"The predictive model may be created when a first marketing campaign is defined and trained when subsequent marketing campaigns are defined using insight obtained from the first marketing campaign. The predictive model may be used to predict customer behaviour regarding one or more offers communicated to the customer. The predictive model may indicate, for example, that the customer is highly likely, likely, unlikely, or very unlikely to accept the offer. This assists in defining targeted treatments, offers, and marketing campaigns based upon an integrated view of the customer resulting in improved marketing campaigns."[14]
[14] The present application at page 13.
After the campaign has been executed, results of the campaign are gathered and this enables the predictive model to be refined (or trained):
"The campaign results may be used to refine additional customer interactions with the customers."[15]
[15] The present application at page 13.
Developing a predictive model seems to be a normal step that does not require any detailed explanation in the description. The application indicates that training of models "is well known in the art".[16]
[16] The present application at page 11.
Execute campaign (20): It goes without saying that at some point the marketing campaign will be put into practice:
"After training a predictive analytic model, a marketing campaign for one or more customer segments may be executed, step 20. The marketing campaign may be run by communicating offers to the customers through a customer interaction. The customer interaction may be, for example, a telephone call to the home of a customer or a mailing of an offer to the customer's home."[17]
[17] The present application at page 11.
It is self-evident that this is normal practice.
Gather campaign results (22): The results of the marketing campaign are captured (and recorded in the database in step (24) below):
"As the campaign is executed, the results of the campaign may be captured, step 22. It should be noted that the invention reduces marketing campaign cycle times and provides adjustments for competitive positioning in a changing market. The invention achieves this by not requiring an arduous data extraction, transformation, modeling, and scoring process to have to be repeated each time a marketing campaign is desired as discussed above. Marketing cycle times are reduced by simplifying the extraction and transformation of all the customer data elements needed for analytic modeling."[18]
[18] The present application at page 12.
Gathering results appears to be a normal step. The above quote suggests that the invention is centred on a simplified data extraction and transformation (i.e. steps 12 and 14) and not the step of gathering results.
Database updating (24): Finally, the outcome of the marketing is entered in the database as new data:
"The results may include, for example, the number of offers redeemed, which customers redeemed the offer, the time elapsed between the offer presentation and redeeming of the offer, and other information. The database may then be updated automatically with the results of the marketing campaign, step 24. This update may be done via a series of SQL update statements, for example."[19]
[19] The present application at page 12.
It is optional that the whole process can then be rerun.
An example of the invention
The patent application contains an example of the way that the invention works. It is helpful to reproduce it here:
"The marketing promotion may be offered as follows. Assume that a bank has executed the adaptive marketing steps described above to the point of defining a marketing campaign whereby on-line banking customers with a combined family income exceeding $100,000 per year will be offered a Platinum Mastercard™. The marketing offer may be defined in an offer database when the campaign is to be executed. The customers who are the target of the offer may be flagged. This information may be accessed and used when a targeted customer engages with the bank for any sort of transaction.
If the customer calls one of the bank's call centers to make a service request (e.g., validate the balance in an account, make an inquiry about a bank statement, etc), the call center agent may be given information that this customer is the target for the Platinum Mastercard™ promotion which could be offered after the service request is fulfilled. Similarly, if the customer is servicing an account using an on-line banking application, a web-based application may determine that the customer is the target of the marketing promotion and deliver the offer to the customer. If the customer visits a bank branch to open an account or buy a Certificate of Deposit, a sales agent may determine that the customer is the target of the promotion and offer the promotion to the customer.
Therefore, the adaptive marketing flow could affect all forms of customer interaction across multiple customer interaction channels. Note that the result of any interaction may be loaded into the customer data warehouse and later extracted to retrain the analytical models and either define new, improved marketing campaigns or to better target existing campaigns. All forms of interaction may benefit from and contribute to the iterative nature of the adaptive marketing process.
It is clear from this example that the method is very generic, and has not actually been put into practice in any situation. The computer facilitates the process, but is not the focus of the process.
Technical features of the invention as described
There are several technical features that are mentioned in the specification. I will briefly explain my understanding of these features.
Virtual tables
The present application provides very little discussion of virtual tables. It is understood in the art that a virtual table (otherwise known as a database view) is an interface to an external storage, and that while it appears to be a table it does not actually store information. The virtual table essentially contains links to information in the database. I consider that this is the meaning that applies to the present application.
The specification provides a reason for using virtual tables:
"a query automatically returns the latest values that have been loaded into the database. If the information in the view was stored in a permanent table (the same or different name), a special update process would be necessary in order to capture changes made to the database table, txn_table."[20]
[20] The present application at page 23.
In the applicant's response dated 26 October 2016 they expanded on the significance of the virtual tables:
"the present specification provides details regarding the capture of customer data by creating a 'virtual table' or 'view' in the database and in this regard, we suggested to the Examiner that the programming of a computer to include this additional limitation is clearly directed to addressing a technical problem associated with predictive models comprising 'old' customer data and should be considered to comprise a programming step in the method which has the requisite ingenuity to qualify as patent eligible subject matter"
I accept that virtual tables are a well understood database management tool, and as a consequence it is not necessary for the specification to provide any detailed instruction on how to create or use them. They are a technical device, and are created by programming of the computer. There is no suggestion that the present applicant invented virtual tables, or invented the use of virtual tables with databases. I consider that the applicant may be suggesting that they invented the use of virtual tables in the context of marketing databases. However, the specification provides no basis to consider that the use of virtual tables was anything other than routine, since there is no explanation of how to do it. This appears to be simply the use of a generic database management tool with a specific database.
The Customer Analytic Record (CAR) application
The CAR is an application that "uses the capabilities of a database management system and a structured query language (SQL)"[21] in order to extract data from the database:
"The CAR is a method of setting up virtual stored queries that include table fields as well as calculated fields created using capabilities of a Data Base Management System (DBMS) and a structured query language (SQL) such that the stored queries present to the user a virtual flat file that may be used as input to an analytic engine."[22]
[21] The present application at page 5.
[22] The present application at page 16.
The application provides little technical information on the CAR, because it is a standard piece of database management technology. The detail that is provided is as follows:
"According to one embodiment of the invention, the CAR may be produced via a view. A database view is a virtual query. The CAR is usually written as a set of views that do all the 'flattening out' of the data and also computes the ratios, etc. that may be used in modeling. Consider the following SQL statement:
select cust_id,
acct_ balance_RTM,
max( account_balance)
from txn table
where behavior_segment =I
and acct_balance_RTM <I
order by cust_id;This statement may be executed by a database system to return a sorted list of customer ids, account balance ratio-to-mean and their maximum account balances. The result may be a table if left in the database or a flat file if exported. The query may be changed to generate a view using, for example, the following:
create view CAR- rtmmax- balance as
select cust_id,
acct_ balance_ RTM,
max( account_ balance)
from txn_tableThis creates a virtual table or 'view' in the database. The CAR prefix indicates that the view CAR_rtmmax_balance is a component of the overall CAR application. A user may now query CAR_rtmmax_balance as though this component was a table in the database:
select* from CAR- rtmmax- balance
where behavior_segment =I
and acct_balance_RTM <IThe view looks just like a table to the user. Because CAR_rtmmax_balance is a view, a query automatically returns the latest values that have been loaded into the database. If the information in the view was stored in a permanent database table (of the same or different name), a special update process would be necessary in order to capture changes made to a base table, txn_table. The optimal configuration for the CAR development is to define is a set of dynamic views of the customer data within the data warehouse. This enhances data integrity in the resulting analytic data set."[23]
[23] The present application at page 7 – 8.
It is clear that this is a general discussion designed to show the reader the general way to go about producing a virtual table using existing and well understood tools.
I conclude that the CAR is a specific name for a well understood database management concept.
Training
The specification says that there is "a training module configured to train the predictive model with campaign results data".[24] This is elaborated later:
"After the first campaign is executed, the predictive model may be trained using insight obtained from the first marketing campaign. Such training of analytic models is well known in the art, as are the tools to accomplish the modeling. For example, software developed and sold by KXEN, Inc. (Knowledge Extraction Engines) of San Francisco, CA may be used."
[24] The present application at page 5a.
It is clear that training is a standard process that can be carried out using routine software.
The claims
Claim 1 as proposed to be amended reads:
"A computer-implemented method for rapid and dynamic data extraction from a database to improve execution of a targeted marketing campaign by using virtual tables, including:
extracting customer data using an extraction module of a computer system for a plurality of customers from at least one database of customer data using a Customer Analytic Record (CAR) application;
generating a targeted marketing campaign including a selected targeted marketing offer, a selected targeted interaction channel, and a targeted set of customers most likely to accept the targeted marketing offer via the targeted interaction channel, wherein the targeted set of customers is determined by:
selecting, through the CAR application, a random selection of a plurality of customers wherein customer data is captured from a plurality of views of customer data in a database management system, the views forming virtual tables in the database;
segmenting a sample set of the customers within the random selection into a plurality of customer segments, wherein the customer segments are created based on similar characteristics among multiple customers;
assigning each of the customer segments with lift values indicating a likelihood of positive response by a selected customer segment to a selected marketing offer via the targeted interaction channel;
selecting, based on the lift values, a prospect set from the customer segments for potential inclusion in a selected marketing campaign;
assessing with a predictive model a likelihood of acceptance of each customer in the selected prospect set of the selected marketing offer via the targeted interaction channel;
scoring each customer in the selected prospect set with a customer score indicating the likelihood of acceptance; and
selecting the targeted set of customers based on the scoring; and
executing, by a processor, the targeted marketing campaign by offering the targeted marketing offer to the targeted set of customers via the targeted interaction channel;
gathering, using a campaign tracking module, campaign results data from the executed targeted marketing, the campaign results data including a count of customers accepting the targeted marketing offer via the targeted interaction channel, and a length of time between the making of the targeted marketing offer and the accepting of the targeted marketing offer;
training, the predictive model with the campaign results data, wherein the training is based on how the customers respond to various types of marketing offers and to various types of interaction channels used in the targeted marketing campaign; and
updating, customer data based on actual marketing campaign results."
In summary, the claim is directed to a method implemented using a computer in the area of marketing. The method is characterised by several processing steps:
- extracting data from a database,
- generating a marketing campaign,
- selecting a random selection of customers,
- segmenting the sample set of customers,
- assigning the segments of customers a lift value,
- selecting a prospect set,
- predicting the likelihood of acceptance by the customers,
- scoring each customers likelihood of acceptance,
- selecting a target set of customers,
- executing the campaign,
- tracking the campaign,
- training the model using the results of the campaign, and
- updating the database.
Claims 2 – 6 are appended to claim 1. Claim 7 is directed to a "computer-implemented system". The system has a processor, a memory and a series of modules. The modules are defined as a customer data extracting module, a marketing campaign generating module, a customer data selecting module, a segmenting module, a segment description module, a prospect set selecting module, a predictive model module, a prospect set scoring module, a customer selection module and execution module, a campaign tracking module, a training module and an updating module. While claim 7 uses language different to that of claim 1, it is clearly directed to the same process. Claims 8 – 13 are appended to claim 7.
Claim 14 is directed to a computer program embodied on a non-transitory computer readable medium. The program is defined as instructing a processor to carry out a series of steps that reflect the steps in claim 1. Claims 15 – 18 are appended to claim 14.
Claim 19 is an omnibus claim.
THE GROUNDS OF OBJECTION
I will now consider each of the grounds of objection that are raised in the most recent examination report.
1. Manner of manufacture
The examiner has raised an objection that the invention as claimed in claims 1 – 19 is not a manner of manufacture.
The law
Section 18(1) of the Act relevantly reads:
Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies:
The classic definition of "manner of manufacture" is set out in National Research Development Corporation v Commissioner of Patents[25] (NRDC):
"The right question is: 'Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?' "[26]
[25] [1959] HCA 67; 102 CLR 252.
[26] NRDC at 269, [14].
The court then went on to set out a test in terms relevant to the facts of that case:
"a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art … that its value to the country is in the field of economic endeavour."[27]
and
"The effect produced by the appellant's method exhibits the two essential qualities upon which 'product' and 'vendible' seem designed to insist. It is a 'product' because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage, indeed to the lay mind a sensational advantage, for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits."[28]
[27] NRDC at 275, [22].
[28] NRDC at 277, [25].
However, the High Court was not laying down a precise formulation that can be applied unthinkingly:
"This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of 'manner of manufacture' in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology."[29]
[29] D'Arcy v Myriad Genetics Inc [2015] HCA 35(Myriad) at [23].
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim.[30] The point is made most succinctly by Gageler and Nettle JJ in the Myriad case:
"Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim."[31]
[30] Myriad at [6] and [88].
[31] Myriad at [144].
In Commissioner of Patents v RPL Central Pty Ltd[32] (RPL) the Full Court of the Federal Court said the same thing in the context of an invention that was in substance a scheme:
"A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to 'put' a business method 'into' a computer to implement the business method using the computer for its well- known and understood functions.
Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent."[33]
[32] [2015] FCAFC 177.
[33] RPL at [96] – [98].
The Court then detailed the considerations that are relevant to the determination, summarising the important principles coming out of the earlier decisions of the Court. In Aristocrat Technologies Australia Pty Limited[34] I summarised these principles as:
[34] [2016] APO 49.
"I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information."
The objection
The examiner's objection on this ground reads as follows:
"Claims 1 – 19 are not a manner of manufacture. Please note that the claims only define “using virtual tables” without explaining how these are used in the context of the claimed invention. Nonetheless, for the applicant’s benefit, I have reported on the claims as though they were limited to defining the Customer Analytic Record (CAR) being stored in virtual tables and the updated customer data is stored in the CAR meaning the virtual table is also updated. However, the applicant should be aware that the claims in fact are not limited to this interpretation as is implied by the response.
Key factors to considering patentable subject matter identified by the Full Court in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 at [099], include determining whether the contribution of the invention (ie. the substance of the invention) “solves a technical problem within the computer or outside the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.”
Therefore the substance of the invention may be determined based on the applicant’s contribution to the art. In other words, the contributions of the invention which are not implemented using generic technology in a generic manner are where the substance lies.
With reference to the RPL decision, the applicant appears to be submitting the following. The present invention solves the technical problems of:
a. Reducing the cost of targeting models Reducing the financial cost of developing a model is not solving a technical problem. Rather, the invention according to the applicant is more efficient at modelling through the use of virtual tables which as discussed below are generic in their existence and how they are used. Therefore the increased efficiency of developing a model is not in substance solved by the present invention.
b. Providing more up to date data for processing than is possible with other systems The present invention uses virtual tables (ie. views) to allegedly solve this problem. However, virtual tables were generic in Database Management Systems (DBMS) before the priority date of the present invention as exemplified in D3. Further, there is nothing within the specification or responses which provides any evidence that the virtual tables being used are not generic. On the contrary, page 8 of the specification as filed exemplifies the SQL statements used to read from and write to virtual tables, demonstrating that their existence was well integrated (ie. generic) in the art.
Nonetheless, if the virtual tables were not considered to be generic, then the specification could not be considered to comply with Section 40(2)(a) because it provides insufficient instructions to the person skilled in the art on how to implement a non-generic virtual table or database view; or how to read data from or write to virtual tables in a non-generic manner.
Therefore since the virtual tables including the manner in which they are used is generic, they cannot form part of the substance of the invention and therefore the benefits of using these do not in substance solve a technical problem or involve ingenuity in their implementation within a computer system.
c. The current system avoids the need to update the database when accessing data The current system uses generic virtual tables as discussed above. By the applicant's own admission on page 8 of the specification as filed, it is an inherent property that virtual tables (or views) do not require the use of a special update process. The applicant is not using any non-generic tables nor are they being used in a non-generic sense.
Therefore the virtual tables of the present invention do not provide any benefit which “reduces the need to provide a special update to capture changes made to the database” which does not exist with the use of generic virtual tables, or views. Therefore since the virtual tables including the manner in which they are used is generic, they cannot form part of the substance of the invention and therefore the benefits of using these do not in substance solve a technical problem or involve ingenuity in their implementation within a computer system.
The present invention involves ingenuity in the computer implementation of:
d. The use of virtual tables to enable:
i.more up to date data to be accessed;
ii.data to be more quickly accessed;
iii.reduces the load on the database;
iv.reduces the need to provide a special update to capture changes made to the database.
As discussed above with reference to points (a) to (c), since the virtual tables including the manner in which they are used is generic, they cannot form part of the substance of the invention and therefore the benefits of using these do not in substance solve a technical problem or involve ingenuity in their implementation within a computer system.
The training model itself is generic (as also admitted on for example page 11 of the specification as filed) and is used to store customer information resulting from executed marketing campaigns.
In light of the above, it is maintained that the present invention in substance is the implementation of a particular scheme for determining which customers to target in a marketing campaign using generic computer technology and the invention defined by claims 1 – 19 is therefore not a manner of manufacture."
The applicant's responses
In the applicant's first response in relation the parent application, [35] they stressed that the modules of the computer system automatically execute the method:
"The Applicant proposes amendments to the claims to clearly specify the interconnected modules which automatically execute the method of amended claims 1 – 9 and which are configured to perform the functions of the system of claims 10 – 19".
[35] Dated 9 January 2014.
In the applicant's second response in relation to the parent application,[36] they stressed that the method led to a modified marketing campaign:
"The Applicant proposes amendments to the claims to clearly specify that the method and system claimed responds to the analysis by providing and implementing a modified marketing campaign."
[36] Dated 18 June 2014.
In the applicant's third response in relation to the parent application,[37] the applicant drew analogies between the present invention and that in the CCOM case and the RPL case:
"there is a [sic] clearly defined a computer implemented invention which results in an artificially created state of affairs in which a new and useful effect may be observed, and in which the use of a computer processor is described in such terms that they are inextricably linked to the invention itself."
[37] Dated 13 May 2015.
In the applicant's first response in relation to the present application,[38] the applicant again drew attention to the technical aspects of the invention:
"the present specification provides details regarding the capture of customer data by creating a 'virtual table' or 'view' in the database and in this regard, we suggested to the Examiner that the programming of a computer to include this additional limitation is clearly directed to addressing a technical problem associated with predictive models comprising 'old' customer data and should be considered to comprise a programming step in the method which has the requisite ingenuity to qualify as patentable eligible subject matter according to the current requirements in Australia."
[38] Dated 26 October 2016.
The applicant further stated that the use of virtual tables led to a technical advantage:
"In any event, the applicant respectfully submits that the present claims (as amended) clearly address a technical problem in the field of executing a marketing campaign which is reliant upon data extracted from a database and the claims of the present application (as amended) are directed to a method for rapid and dynamic data extraction from a database to improve execution of a targeted marketing campaign by using virtual tables which addresses the technical problem of seeking to use the most up to date data available from a database whilst also seeking to avoid the need to execute a special update process that would otherwise be necessary in order to capture very recent changes that have yet to be captured and stored formally in the database."
What is the substance of the invention
When determining the substance of the invention it is important to consider the claimed invention as a whole, not just the individual parts. The applicant has suggested that the use of virtual tables enables the computer to operate more effectively. I agree that there are technical effects that arise from the use of virtual tables (as discussed previously). But the presence of a technical effect is not enough to resolve the question of what is the substance of the invention.
The invention only requires generic computer implementation, and uses generic computing elements such as a database, virtual tables and training modules. Each of these elements is used in their normal way.
In the present case I do not consider that the contribution to the art is the particular combination of generic computing elements. The combination of all of the elements, other than the use of virtual tables, is apparent in the prior art document D1 (discussed below under the ground of inventive step). There is no reason to think that the use of a generic database management tool in the specific environment of a database containing marketing information would have been regarded as a contribution to the art, or an addition to human knowledge. The contribution to the art is not in the computing aspect of the invention, but in the alleged improvement in the way in which marketing is carried out, leading to the possibility of more effective marketing. The computer is merely the tool for performing the method, and the contribution to the art is not technical in nature.
On balance I consider that the substance of the invention is a scheme for carrying out marketing. The substance of each of the claims is the same, regardless of the different aspects that claims 7 and 14 are directed to.
Conclusion
It is well established that schemes are not patentable.[39] Since the substance of the invention is a scheme for carrying out marketing, it follows readily that this is not patentable subject matter.
[39] Grant v Commissioner of Patents [2006] FCAFC 120, 69 IPR 221.
2. Omnibus claim
The examination report states:
Claim 19 does not comply with Section 40(3A) because it relies on references to the description which are not necessary to define the invention.
Subsection 40(3A) reads:
The claim or claims must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.
This subsection was inserted into the Act by the Raising the Bar Act, and its purpose is explained in the Explanatory Memorandum:
"The amendment relates to restricting the use of omnibus' claims, which define an invention by reference to the whole or part of the specification … The amendment prevents the use of omnibus claims except where the invention can only be defined by reference to a specific detail in the specification – for example, where reference to a spectroscopic profile or reference to a specific feature in a figure or drawing is the only way of defining a chemical composition or apparatus."
Claim 19 as proposed to be amended reads:
"A computer-implemented method for insight-driven, adaptive marketing according to claim 1, or a computer-implemented system for insight-driven adaptive marketing according to claim 7, or a computer program according to claim 14, substantially as herein described with reference to the accompanying drawings."
It is clear that the use of an omnibus claim is not absolutely necessary. This objection is properly raised.
3. Inventive step
The examiner has objected that claims 1 – 19 do not involve an inventive step. In view of my conclusion that the invention is not directed to a manner of manufacture it is not necessary to consider this ground in order to resolve the fate of the application. Consequently will only briefly consider the ground.
The law
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with relevant information. A document is relevant information if it is a single piece of prior art, or a combination of any 2 pieces of prior art that the skilled person could reasonably have been expected to combine (subsection 7(3)).
The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd[40] Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
[40] [1981] HCA 12; 148 CLR 262 at 286 [45].
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd[41] (Alphapharm) approved this approach. Matters of routine are to be distinguished from other courses of action:
"The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course."[42]
[41] [2002] HCA 59; 212 CLR 411.
[42] [2002] HCA 59; 212 CLR 411 at 436 [58].
The Alphapharm court also approved the so-called Cripps question:[43]
Would the notional research group at the relevant date, in all the circumstances, directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?
[43] [2002] HCA 59; 212 CLR 411 at 433 [53].
Common general knowledge is the background knowledge and experience available to all those working in the relevant art:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."[44]
[44] Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at 292 [115].
It is not enough that information is recorded in a document, even one that is widely circulated. It is only part of the common general knowledge when it is generally known and accepted:
"information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art … Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."[45]
[45] Ranbaxy v AstraZeneca [2013] FCA 368; (2013) 101 IPR 11 at 51 [217].
The objection
The objection maintained by the examiner in the last examination report reads as follows:
"Claims 1 – 19 as proposed to be amended do not involve an inventive step when compared with D1 in view of common general knowledge.
The common general knowledge is that which the person(s) skilled in the art would possess. In the present art, the PSAs would include a marketer; mathematician/statistician; and a software developer with in-depth knowledge of databases. Since training and predictive models are based on large sets of stored data which need to be efficiently processed and accessed, it is unlikely that the person(s) skilled in the art would not include a software developer with in-depth knowledge of databases.
With regard to the use of virtual tables in independent claims 1, 7 and 14, as discussed with reference to the manner of manufacture objection, the claims only define “using virtual tables” without explaining how these are used. For the applicant’s benefit, I have reported on the claims as though they were limited to defining the CAR being stored in virtual tables and the updated customer data is stored in the CAR meaning the virtual table is also updated. However, the applicant should be aware that the claims in fact are not limited to this interpretation.
Nonetheless, virtual tables, or views as referred to in parts of the specification were generic in the art of databases as exemplified in D3 and would have been obvious to use by the person skilled in the art who would have understood the advantages and disadvantages of using them and in particular would have understood how data could be accessed more quickly with them (since this is mostly what they were designed for).
As also discussed with the manner of manufacture objection, if the applicant considers that these were not common general knowledge in the art before the priority date, then the specification could not be considered to comply with Section 40(2)(a) because it provides insufficient instructions to the person skilled in the art on how to implement a non-generic virtual table or database view; or how to read data from or write to virtual tables in a non-generic manner.
The features of claims 2 – 6, 8 – 13 and 15 – 19 are either disclosed in D1 or relate to arrangements which are merely matters of design choice and which therefore cannot contribute towards providing an inventive step."
Consideration
The citation (referred to as D1) is the patent specification US 6,073,112. D1 was published on 6 June 2000, so it is part of the prior art.
D1 discloses a communication system for marketing to consumers. Customer information is stored, and data is assembled into subsets based on demographics, shopping activity and/or desired communications.[46] Based on this information, a date of communication and content of communication with the customer is developed (i.e. a campaign is developed). The system continually forms and reforms the subsets of recipients based on recorded shopping behaviour.[47] D1 refers to this as "dynamic behavioural segmentation".[48] The key to the invention in D1 is the dynamic aspect:
"Key to the present invention is its dynamic behavioural segmentation which utilizes different kinds of merchant defined elements such as purchase frequency, purchase volume, compliant behaviour, product category interest, seasonal purchase behaviour, contact preferences (e.g. phone, mail, E-mail) and any other measurable behavioural patterns of customers to segment/group like customers … The dynamic or continual resegmentation of customers based on changes in shopping activity/behaviour ensures that pertinent and timely communications are made (automated) by the present invention system."[49]
[46] D1 at column 1
[47] D1 at column 2.
[48] D1 at column 2.
[49] D1 at column 3.
It seems to be accepted by the applicant that the invention defined by claim 1 differs from the disclosure of D1 in the use of virtual tables. The applicant noted in its response to the first Examination report on the present application:
"D1 neither discloses, teaches or suggests the use of virtual tables to address the technical problem of seeking to use the most up to date data available in a database whilst avoiding the need to perform an update process which would otherwise create further delay and interrupt other users who are [sic] may be using the database to perform their own search queries."
The Examiner has asserted that virtual tables are generic in the art, and made reference to a document D3.[50] D3 opens with the words:
"Views are a core component of relational and object relational databases".
[50] Geschwinde, E. et al "Working with views in PostgreSQL", 28 December 2001.
I note that a view is a virtual table. D3 is consistent with the Examiner's assertion that virtual tables are generic in the art. If it were necessary to decide this ground, I am satisfied that it would have been a matter of routine to use virtual tables, and thus claim 1 (at least) lacks an inventive step.
CONCLUSION
I have found that the following grounds of objection are properly raised: manner of manufacture, section 40(3A), and inventive step. The ground of manner of manufacture goes to the substance of the invention, not merely the form of the claims. The applicant has not suggested any amendments that may be able to overcome this ground of objection, and given the long examination history of the present application and the predecessor applications, and after giving the present application considerable thought, I cannot see that an amendment could overcome the objection.
It follows that I should refuse to accept the application.
Dr S.D. Barker
Delegate of the Commissioner of Patents
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