Accenture Global Solutions Limited
[2022] APO 49
•11 July 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Accenture Global Solutions Limited [2022] APO 49
Patent Application: 2019261672
Title:Cryptologic Coordinated Symmetric Conditional Key Release
Patent Applicant: Accenture Global Solutions Limited
Delegate: Dr V. Z. Kolev
Decision Date: 11 July 2022
Hearing Date: Written submissions filed on 16 November 2021 and 27 January 2022
Catchwords: PATENTS – sections 45 and 49 – hearing with respect to examiner’s objection – manner of manufacture – asset exchange – cryptologically-locked asset transaction – coordinated, symmetric release of exchange key and locked asset transaction – security improvement to the operation of electronic transaction systems – business innovation – the claimed invention is not a manner of manufacture – no patentable subject matter described in the specification – application refused
Representation: Patent attorney for the applicant: Murray Trento & Associates Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019261672
Title:Cryptologic Coordinated Symmetric Conditional Key Release
Patent Applicant: Accenture Global Solutions Limited
Date of Decision: 11 July 2022
DECISION
The invention claimed in each one of the claims, as proposed to be amended, is not a manner of manufacture. Furthermore, based on the matter described in the body of the specification, I am of the opinion that no allowable amendment could result in claiming a patentable invention.
I refuse the application.
REASONS FOR DECISION
Throughout this decision, unless explicitly stated otherwise, any reference to the Act, or to a specific section or subsection, refers to the Patents Act 1990, and any reference to the Regulations, or to a specific regulation or subregulation, refers to the Patents Regulations 1991. In addition, any reference to the Commissioner refers to the Commissioner of Patents as per the Act.
BACKGROUND
The matter relates to patent application 2019261672 (the Application) in the name of Accenture Global Solutions Limited (the Applicant). The Application was filed on 04 November 2019 as a Convention application claiming priority from US 16/668,829. The earliest claimed priority date is 30 October 2019.
The request for examination was filed on 04 November 2019. On 29 May 2020, the Applicant filed a request to expedite the examination “as it is of commercial importance to the Applicant and the Applicant seeks to ascertain the validity of the claims of the application”. The Application was subject to three examination reports as detailed below.
Examination report No. 1 was issued on 27 July 2020. The report contained the sole objection with respect to manner of manufacture. Search and examination with respect to novelty and inventive step was reserved. A response to the report was filed on 22 December 2020. No amendment was proposed at that time.
Examination report No. 2 was issued on 27 January 2021. In the report, the Examiner maintained the objection with respect to manner of manufacture. No other objections were raised, and search and examination with respect to novelty and inventive step was again reserved. A response to the report was filed on 18 May 2021 together with a set of proposed amendments to the specification of the Application (the Specification). In this first statement of proposed amendments, the Applicant proposed, under item 1, amendments to the description and, under item 2, amended claims.
Examination report No. 3 (the Last Report) was issued on 16 June 2021. In the report, the Examiner again maintained the sole objection with respect to manner of manufacture. In addition, the claims were searched, examined, and found to be novel and inventive. As per the Commissioner’s practice, before being issued, the report was reviewed by the Examiner’s supervisor.
On 27 July 2021, the Applicant requested a hearing, which was conducted by way of written submissions.
SUBMISSIONS
On 16 November 2021, the Applicant filed a document titled “Submission to Accompany Request for Hearing – Section 216(1) and Reg 22.22” (the Applicant’s Submissions or AS). At the same time, the Applicant filed a set of proposed amendments to the description and the claims.
Given the Applicant’s reliance in AS on Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (Aristocrat 20), and the fact that Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat 21) overturned Aristocrat 20, a Delegate of the Commissioner wrote to the Applicant on 03 December 2021 “to provide the Applicant with an opportunity to, if it wishes, provide further submissions addressing the relevance of [Aristocrat 21] to the present application”. Following this invitation, on 27 January 2022, the Applicant filed a document titled “Further Submission to Accompany Request for Hearing – Section 216(1) and Reg 22.22” (the Applicant’s Further Submissions or AFS).
APPLICABLE LAW
10. On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations. The Application was filed on 04 November 2019; hence the amended provisions of the Act and Regulations apply to the examination of the Application and to the instant hearing decision. This means that I must accept the Application if I am satisfied, on the balance of probabilities, that the application complies with the Act. If I am not so satisfied, I may refuse the Application. In such a situation, the extended period for gaining acceptance provided under reg 13.4(1)(g) will make no difference if the Application is refused. However, I consider that it is only appropriate to refuse the Application if I am satisfied that providing the Applicant with an opportunity to overcome any negative finding(s) would serve no useful purpose; in other words, if I consider that any potential negative findings are fatal to the Application.
The law on manner of manufacture
11. The relevant parts of s 18 stipulate:
“(1) 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; and
…
(2) Human beings, and the biological processes for their generation, are not patentable inventions.”
12. A number of Court decisions have discussed and determined whether the particular invention in each case “is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”. These Court decisions constitute a significant body of case law that the Commissioner must follow. For the purpose of this decision, I do not consider it necessary to provide a comprehensive review of the case law and I will only point to Court decisions which I consider pertinent to the instant considerations.
13. National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 (NRDC) is a key original authority on the issue, establishing, inter alia, the general approach for deciding the question of manner of manufacture at [14] (at p 269):
“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?’”
14. D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) is the most recent High Court decision on manner of manufacture. However, I note that both NRDC and Myriad are not related to inventions implemented on computing devices, hence they do not discuss some of the more specific issues associated with such inventions. In contrast, the decisions of the Full Court of the Federal Court in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (Research Affiliates) and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL Central) were made with respect to business methods implemented on computing devices. In particular, in RPL Central the Full Court, having considered in some detail the decisions in Research Affiliates and Myriad, developed an approach to determining the issue of manner of manufacture for inventions implemented using computers. This approach of RPL Central was later approved in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass), which was a decision by an enlarged bench (consisting of five judges) of the Full Court. The approach was also relied on in subsequent Full Court decisions, including Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt) and Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223 (Repipe). The cases in Encompass, Rokt, and Repipe also involved inventions implemented using computer technology.
15. For the purpose of deciding on manner of manufacture, I consider it helpful to provide a brief overview of some of the main guiding principles that could be extracted from the above Court decisions. Below, I will present those principles, in italic, as separate paragraphs supported by relevant quotations from the decisions. Where the breadth of some quotations makes them relevant to more than one principle, for brevity, I will not repeat those quotations in different paragraphs (underlining added in all quotations).
16. A determination on manner of manufacture must be done on a case by case basis, having regard to the substance of the invention not merely the form of the claims; there are no strict rules or a precise formula to be applied mechanistically:
“The purpose of s. 6, it must be remembered, was to allow the use of the prerogative to encourage national development in a field which already, in 1623, was seen to be excitingly unpredictable. To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound. It would be unsound to the point of folly to attempt to do so now, when science has made such advances that the concrete applications of the notion which were familiar in 1623 can be seen to provide only the more obvious, not to say the more primitive, illustrations of the broad sweep of the concept.” (NRDC at [15]; at p 271)
“This Court in NRDCdid 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.” (Myriad at [23])
“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.” (Myriad at [144], reasons by Gageler and Nettle JJ)
“The approach to be taken to deciding whether a claimed method or product is properly the subject of letters patent must be flexible and must allow for new technologies presently unknown … There is no formula to be mechanically applied …
… in examining whether a claimed invention is properly the subject of letters patent, it is necessary to look not only at the integers of that claimed invention but also at the substance of that invention.” (Research Affiliates at [116]- [117])
“The determination … is made not by some mechanistic application of the criterion of artificiality or physical effect, but by an understanding of the claimed invention itself. The invention is to be understood as a matter of substance and not merely as a matter of form.” (Research Affiliates at [106])
17. The characterisation as “an artificially created state of affairs of economic significance” is useful, but not ultimately determinative for manner of manufacture; to be patentable, a process must belong to the useful arts:
“The point is that 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.” (NRDC at [22]; at p 275)
“… the view which we think is correct in the present case is that the method the subject of the relevant claims has as its end result an artificial effect falling squarely within the true concept of what must be produced by a process if it is to be held patentable … 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 … It achieves a separate result, and the result possesses its own economic utility consisting in an important improvement in the conditions in which the crop is to grow, whereby it is afforded a better opportunity to flourish and yield a good harvest.” (NRDC at [25]; at p 277)
“If a process is to be patentable, it must offer some advantage which is material, in the sense that the process belongs to a useful art. The characterisation of patentability by reference only to the description in NRDC of a product which consists of an artificially created state of affairs of economic significance was part of the High Court’s reasoning but did not represent a sufficient or exhaustive statement of the circumstances in which a claimed invention is patentable.” (Research Affiliates at [101])
“In this context, their Honours emphasised [in Myriad] (at [20]) that, while satisfaction of an ‘artificially created state of affairs of economic significance’ as stated in NRDC may ‘suffice for a large number of cases in which there are no countervailing considerations’, this terminology is not to be treated as a formula exhaustive of the concept of manner of manufacture, or a formula which alone captures the breadth of the ideas to which effect must be given. Similarly, Gageler and Nettle JJ noted (at [125]) that the holding in NRDCdoes not mean that an ‘artificial state of affairs’ and ‘economic utility’ are the only relevant considerations in this context. However, the majority and Gageler and Nettle JJ acknowledged the usefulness of such characterisation in appropriate circumstances.” (RPL Central at [116])
18. In deciding on manner of manufacture, it is important to identify where the inventor’s ingenuity lies:
“It is a question of understanding what has been the work of, the output of, and the result of, human ingenuity, and to apply the principles that have been developed and explained so well in NRDC.” (Research Affiliates at [116])
“Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie.” (RPL Central at [112])
19. Technological innovations are patentable, whereas business innovations are not; a business method implemented on computing devices could be patentable if it involves ingenuity in the computer implementation:
“Relevantly, the Full Court in Research Affiliates said (at [94]) that the distinction to be drawn was between the employment of an abstract idea or law of nature and the idea or law itself and that there is a distinction between a technological innovation which is patentable and a business innovation which is not. Their Honours repeated an observation from Grant (at [29]) ‘[a] product of a method is something in which a new and useful effect may be observed. For claimed computer programs, the courts looked to the application of the program to produce a practical and useful result, so that more than “intellectual information” was involved.’ A technological innovation is patentable; a business innovation is not, although a business method may be the subject of letters patent.” (RPL Central at [100])
“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.” (RPL Central at [96])
“RPL Central does not claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Accordingly, the ingenuity of the inventors must be in the steps of the method itself. The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to implement a business method …
The problem may be one of confronting the ‘maze’ of available information concerning the RPL of different Units of Competency in different institutions, but the solution to that problem, to be patentable, must involve more than the utilisation of the well-known search and processing functions of a computer, for example an invention in the way in which the computer is utilised.” (RPL Central at [110]-[111])
“There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation. Rather, it is apparent that the scheme is merely implemented in a computer and a standard computer at that. It is no part of the claimed method that there is an improvement in what might broadly be called ‘computer technology’.” (Research Affiliates at [118])
“In Research Affiliates, looking at the claimed method as a matter of substance, the Full Court concluded that, in that case, the computer was merely the means by which the analyst accessed data to generate an index, that being the work of the analyst rather than a technical generation by the computer. There was no suggestion of the utilisation of an unusual technical effect. The inventors made changes to the computer program to cause the program to gather and process data and perform data manipulations and calculations, including macros to manipulate and refine data. Such use of algorithms was not ‘foreign’ to the normal use of computers.” (RPL Central at [102])
“To reiterate some of the matters discussed in Research Affiliates:
·It is necessary to ascertain whether the contribution to the claimed invention is technical in nature. In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2007] 1 All ER 225, the subject matter was an interactive system whereby questions were asked, the answers incorporated in a draft and, depending on some particular answers, further questions were asked. It was held that, apart from the fact of running a computer program, there was nothing technical about the contribution and the method was for the business of advising upon and creating appropriate company documents.
·One consideration is whether 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.
·Does the claimed method merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea? In Alice Corporation, the method was for exchanging financial obligations in which the computer was used to create records, track multiple transactions and issue simultaneous instructions. The majority in the Supreme Court of the United States concluded that the use of the computer added nothing to the substance of the abstract idea of reducing settlement risk in exchanging financial obligations.” (RPL Central at [99])
20. Whether a method can or cannot be practically implemented without a computer is not determinative for manner of manufacture:
“Simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method. Is the fact that the scheme cannot practically be implemented without a computer, that is, that the computer is integral to the working of the scheme, sufficient to make it patentable? The answer is not straightforward because this is not a case where the computer simply processes the information entered by the user, for example by using an algorithm, or retrieves information from the Internet in response to a user’s question.” (RPL Central at [107])
“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.” (RPL Central at [97]-[98])
“It is stated in the specification, and was accepted by the primary Judge, that the method could not be carried out without the use of a computer. This alone cannot render the claimed invention patentable if it involves simply the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself. A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. This necessitates some ingenuity in the way in which the computer is utilised (Research Affiliates).” (RPL Central at [104])
21. The case law on manner of manufacture was extensively discussed in prior decisions on the matter by the Australian Patent Office, including in Aristocrat Technologies Australia Pty Limited [2016] APO 49, where the Delegate provided a general indication, distilled from the case law, as to the matters relevant to a determination on manner of manufacture for inventions implemented on a computer:
“35. 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.” (underlining added)
22. It is clear from the Delegate’s wording that the above list is not a “check-list” to determine whether a particular claimed invention is a manner of manufacture. Instead, the list includes, in a non-exhaustive manner, relevant considerations or “touch stones” helpful in the decision process. This was also noted in Todd Martin [2017] APO 33:
“47. With this list of points, the delegate in the Aristocrat case was not intending to indicate a list of conditions, for computer-implemented cases, to be met to define a manner of manufacture. That is evident from the delegate’s statement that the list was not intended to be exhaustive. Moreover, it would appear improper to find there was a manner of manufacture simply on the basis that one or more points could be answered in favour. In the present case for example, it may be that at least the fifth dot-point, regarding whether the application of the method produces a practical and useful result, is satisfied. On the other hand, that consideration on its own would be insufficient in the present case. Conversely it would also appear improper to find there was no manner of manufacture simply on the basis that one or more points could not be answered favourably. Rather than these points being seen as conditions to be met, they should be seen as relevant matters to consider, as the delegate stated at [35]. The substance and contribution of the claimed invention in each case should be considered on its merits overall and various points under the law would appear to have varying degrees of relevance depending on the case.”
23. As a further observation, it appears to me that the Court decisions on manner of manufacture for computer-implemented inventions do not always contain the full list of the above relevant considerations, which would appear to suggest that, depending on the circumstances of the case, not all of the relevant matters included in the list need to be considered in order to reach a conclusion.
THE SPECIFICATION
The proposed amendments
24. As I already mentioned, together with the Applicant’s Submissions, the Applicant proposed amendments to the Specification. It would appear that the amendment to the claims (under item 4) proposes only to add to the independent claims a feature that was previously defined in dependent claims, and to delete those dependent claims. The amendment to the description (under item 3) appears to affect only the consistory statements to reflect the proposed amendment to the claims.
25. While I cannot see any immediate reasons why the amendments would not be allowable, I do not need to decide this conclusively as it will not affect the outcome of my decision. Suffice to say that, for the benefit of the Applicant, I will consider the Specification as proposed to be amended by the amendment items up to and including item 4.
The invention as described
26. The technical field is stated to be “relate[d] to key release operations that are conditional and coordinated” (paragraph [002]). Perhaps it is worth clarifying that the release operations are not related to a physical key.
27. The section “Background of the Invention” is reproduced below in its entirety:
“[003] Rapid advances in electronics and communication technologies, driven by immense customer demand, have resulted in newly emerging secure network transactions. Improvements in the hardware and software implementations of the underlying processing and privacy features for the transactions will increase the security, reliability, and speed of the implementations.” (underlining added)
28. The next section “Summary of the Invention” consists entirely of consistory statements corresponding to the independent claims. The section “Detailed Description of Embodiment(s) of the Invention” describes the invention by reference to the drawings consisting of Figures 1 to 5. The beginning of the section provides a more general overview of the invention, example embodiments of which are then described with the help of the drawings.
Overview
29. It appears that the invention relates to an asset exchange between two parties through a neutral third party that provides an exchange platform:
“[012] Exchange parties may determine to perform an asset exchange. The asset exchange may be facilitated through pre-selected exchange platform. For example, the exchange parties may lack commonality in asset types among their respective holdings or commonality in asset geography. Additionally or alternatively, the exchange parties may lack commonality in transaction networking, transaction relationships, and/or transaction infrastructure. Thus, a third party may provide a platform on which the exchange parties may provide assets in types and geographies and through relationships available to them and receive assets in the types and geographies that have value to them. …
…
[016] When exchanging parties lack mutual trust, a trusted third intermediary may take control of the assets in the exchange. Without the third party, the first party to relinquish control of their asset risks being cheated by the exchange counterpart. Hence, the parties are left in a stalemate both being unwilling to be the first actor and unable to move forward with the transaction. Accordingly, the conventional wisdom is a solution in which each party relinquishes control to a mutually trusted third party that verifies that both parties have acted.” (underlining added)
30. The present invention proposes limiting the control over the asset that is given to the third party. Although not explicitly stated, this would appear to make the requirement for trusting the third party less important:
“[013] In some cases, the exchange parties may prefer to avoid placing assets in the control/custody of a third party even in scenarios where executing the transaction through a third party (e.g., due to asset commonality issues) may be expedient. …
…
[016] … The architectures and techniques discussed herein represent a departure from the conventional wisdom by instead retaining control and direction of the assets with the exchanging parties. Specifically, the reciprocal exchange party locks an asset transaction and sets conditions for release to the leading party. The third party is called to verify the locking, verify the satisfaction of conditions, and symmetrically finalize the exchange. However, contrary to conventional wisdom control/custody of the assets may not necessarily be given to the third party. Rather, the third party’s control is circumscribed to include the locked asset transaction and not the asset itself.” (underlining added)
31. It is worth noting that the “reciprocal party” is the party transferring an asset, whereas the “leading party” is the party receiving the asset (paragraph [012]). The control of the third party over the asset is proposed to be limited, for example, in the following way:
“[013] … a reciprocal exchange party may setup the cryptologically-locked asset transaction such that the exchanged asset is addressed to the leading exchange party at the outset. Accordingly, the third party is not necessarily provided with the ability to redirect assets at any point in the transaction. Like an intermediate network transporting encapsulated VPN packets, the third party may either (when proper conditions are met) release the asset to the transaction addressee or decline to do so. In some cases, revocation of a transaction may occur without input by the third party (e.g., through time locks as discussed below). Hence, the exchange platform may not necessarily be give [sic] even the authority to redirect an asset to its sender (as opposed to the addressee). Rather, the trust placed in the exchange platform is to fully and fairly execute release of the locked asset transaction and to release the transaction and exchange key symmetrically. Accordingly, upon finalization by the exchange platform, the reciprocal party has knowledge of the exchange key and the leading party and control of the asset is transferred to the leading party.” (underlining added)
32. The benefit achieved through the working of the present invention is stated to be in the improved security of the assets exchange process, which leads to an improvement to the state of the art:
“[015] In some cases, placing trust in interested parties in an exchange provides competing points of security failure. Coordinated, symmetric release of the exchange key and locked asset transaction provides a security improvement to the operation of electronic transaction systems. Accordingly, the techniques and architectures discussed herein provide improvement over existing solutions in the market.” (underlining added)
Example embodiments
33. An example exchange environment, item 100, between the reciprocal party and the leading party is illustrated on Figure 1, reproduced below.
34. The example exchange environment of Figure 1 is explained in the following way:
“[017] … In the example exchange environment 100, a reciprocal exchange party 110 may receive a challenge puzzle 112 from a leading exchange party 120 in a pre-exchange proposal. An exchange key 122 presumably controlled and/or known by the leading exchange party corresponds to the solution to the challenge puzzle 112. In various implementations, the challenge puzzle 112 may include a cryptologic puzzle. ‘Cryptologic’ may be used to describe any technology or algorithm based on encryption, obfuscation, hashing, or other cipher-based system. The reciprocal party may, based on the challenge puzzle 112 generate a peer challenge 114 to which the exchange key 122 corresponds to a solution. The peer challenge 114 may, upon solution, complete one of the conditions for release of a cryptologically-locked asset transaction 116 that, upon release, transfers ownership/control of an asset 118 to an addressee, which may be the leading exchange party or associated with the leading exchange party 120. In some cases, an additional condition for release of the cryptologically-locked asset transaction may be a signature 124 of the cryptologically-locked asset transaction 116 by the exchange platform. The reciprocal peer challenge may be provided (e.g., by a reciprocal node associated with the reciprocal exchange party 110) such that exchange logic 199 operating on an exchange execution platform 198 as discussed below, may access the peer challenge 114.” (underlining added)
35. The exchange logic, item 199, operating on an exchange execution platform, item 198, is illustrated on Figure 2, reproduced below. Having obtained at item 202 of Figure 2 the peer challenge, item 114, and the cryptologically-locked asset transaction, item 116, by, e.g., receiving them over a communication link from a reciprocal node associated with the reciprocal exchange party (paragraphs [021]-[022]), the exchange logic, item 199:
“[026] … may send a request 115 for the exchange key to the leading party (204). For example, upon receiving the cryptologically-locked asset transaction 116, the exchange logic 199 may obtain an address for the leading exchange party, for example, by reading the address to which the asset is to be sent. The request 115 may include a reference to the peer challenge or portions (e.g., reproductions) of the code of the peer challenge itself. Further, the request may include a reference to the cryptologically-locked asset transaction 116 or portions (e.g., reproductions) of the code of the cryptologically-locked asset transaction 116 itself. Additionally or alternatively, the request 115 may include an identifier or reference to the asset 118 (e.g., rather than the cryptologically-locked asset transaction 116). Various implementations may support different request content – where the request content allows the leading exchange party 120 to identify the asset 118 being transferred and the exchange key 122 needed to release the transaction. The request 115 may further include security elements, such as signatures from the exchange execution platform 198 or reciprocal party 110, to help the leading exchange party determine the authenticity of the request 115.
[027] Responsive to the request 115, the leading exchange party 120 may provide the exchange key 122 to the exchange logic (205). In some implementations, the leading exchange party 120 may sign the exchange key 122 upon provision to the exchange logic 199.
[028] The exchange logic 199 may execute release of the cryptologically-locked asset transaction 116 once the exchange key 122 is received from the leading exchange party 120. The exchange logic 199 may verify the exchange key against the reciprocal peer challenge (206). For example, the exchange logic 199 may apply the exchange key 122 to the peer challenge 114 to verify that the exchange key 122 is a solution to the peer challenge 114.
…
[030] After verification, the exchange logic 199 may finalize execution of the response by facilitating release the cryptologically-locked asset transaction (e.g., transferring ownership/control of the asset 118 the leading exchange party). To facilitate release of the cryptologically-locked asset transaction 116, the exchange logic 199 (e.g., acting on behalf of the exchange platform) may apply a signature 124 to the cryptologically-locked asset transaction, and release the key to the reciprocal exchange party (210). With the conditions of the cryptologically-locked asset transaction 116 fulfilled, the exchange logic 199 may execute a symmetric release by, for example, releasing the exchange key 122 to the reciprocal party (210) at the same time as (or within a particular time window) the signature 124 applied to the cryptologically-locked asset transaction is sent to an [sic] verification authority (208). In some cases, the signed transaction may be published (e.g., on a distributed ledger) as a part of sending the transaction to the authentication party. Releasing the exchange key 122 / signed 124 transaction include publicizing the exchange key 122 / signature 124 and, as a result, entitling the leading exchange party to release of the cryptologically-locked asset transaction 116, publicizing the exchange key also operates to release / furnish the exchange key to the reciprocal exchange party (e.g., resulting in coordinate, symmetric release). In some cases, the authentication party may include a neutral third party other than the exchange platform, the reciprocal party, the leading partying [sic], one or more peer nodes on a distributed network, or some combination thereof.
[031] As an effect of the finalization (assuming successfully release of the locked asset transaction 116), ownership/control of the asset 118 is transferred to the leading party 120 through release of the cryptologically-locked asset transaction 116 (212). As discussed above, the exchange logic 199 may lack the authority to control the results of releasing the cryptologically-locked asset transaction 116. Rather, the exchange logic 199 may either facilitate the completion of the conditions for release of the cryptologically-locked asset transaction 116 or fail/decline to do so.” (underlining and italic added)
36. A slight variation of the exchange logic, item 199, is illustrated on Figure 5, also reproduced below. It would appear that the difference with the exchange logic of Figure 2 is in items 504, 505, and 515. Namely, having obtained at item 202 of Figure 5 the peer challenge, item 114, and the cryptologically-locked asset transaction, item 116, “the exchange logic 199 may obtain a request 515 to release the cryptologically-locked asset transaction (504)” (paragraph [035]). Then, “[i]n response to the request 515 to release the cryptologically-locked asset transaction, the exchange logic 199 may obtain the exchange key 122” (paragraph [036]), and this apparently happens at item 505. After that point, the example exchange logic appears to be the same as the one shown on Figure 2.
37. Figure 4, reproduced below, illustrates an example execution scenario, item 400. This execution scenario, in somewhat similar terms to what was described so far, explains the consecutive actions performed by the leading exchange party, item 120, the reciprocal exchange party, item 110, and the exchange logic, item 499, in order to realise the exchange of the asset, item 118. The new reference numerals on Figure 4 refer to the following (paragraphs [041]-[047]):
402 – pre-exchange proposal, in which the reciprocal and leading exchange parties agree to exchange the asset and the leading exchange party sends a challenge puzzle, item 112, to the reciprocal exchange party;
404 – reciprocal establishment, during which the reciprocal exchange party cryptologically locks an asset transaction, item 116, using a peer challenge, item 114, based on the challenge puzzle, and addresses the cryptologically-locked asset transaction such that the asset is transferred to the leading exchange party upon release of the cryptologically-locked asset transaction; the reciprocal party may digitally sign the cryptologically-locked asset transaction;
406 – request establishment, during which the exchange logic obtains the peer challenge and the cryptologically-locked asset transaction; the exchange platform may send a request for the exchange key, item 122, to the leading exchange party and/or the leading exchange party may send a request to the exchange platform to initiate finalization of the cryptologically-locked asset transaction;
408 – key provision, during which the leading exchange party sends the exchange key to the exchange logic; the leading exchange party may sign the exchange key, which must remain private and unexposed by, e.g., encrypting or otherwise obfuscating the exchange key transfer;
410 – verification, during which the exchange logic applies the exchange key to the peer challenge to verify that the exchange key is a solution to the peer challenge (it would appear that “112” in block 410 on Figure 4 should read “122” instead); the leading exchange party may review the cryptologically-locked asset transaction to ensure that it is configured to release the same asset that was agreed to in the pre-exchange proposal; and
412 – finalization, during which, if the exchange key corresponds to a solution to the peer challenge and any compulsory signatures are provided by the reciprocal and/or leading parties, the exchange logic signs the cryptologically-locked asset transaction to provide the final condition for release of the transaction; the release of the cryptologically-locked asset transaction, including provision of the signature, item 124, and provision of the exchange key to the reciprocal exchange party, may be executed symmetrically; the symmetric execution may include provision of knowledge/status to the parties within time windows setup by the peer challenges or other time period calculated to ensure the interests of the parties are equally (e.g., symmetrically) protected.
38. In summary, it is clear from the above-discussed overview and high-level explanations of example embodiments that the Specification describes an invention providing a specific transactional arrangement between the two parties that are exchanging an asset and the third party that provides the exchange platform to facilitate the exchange. This specific transactional arrangement allows the reciprocal exchange party to keep control or custody of the asset until the exchange is finalised. The third party’s control is limited only to releasing, or not, the locked asset transaction, with no control or custody over the asset itself.
Implementation
39. While the concept of cryptologically locking the asset transaction appears to be of key importance to the invention, this seems to be implemented via the utilisation of various known security enhancing techniques. Such techniques are also suggested for other parts of the transactional arrangement as it could be expected given the nature of the arrangement. The Specification proposes that:
“[018] In some cases, cryptologically-locked asset transactions 116 may be locked through schemes including hashed locks and hashed time-locks. However, other key-based asset locking schemes may be used. In some cases, such locking schemes may support timeout windows, which upon expiry, may revert an asset to the asset originator, in some cases this may be interpreted as the cryptologically-locked asset transaction 116 expiring without altering ownership of the asset. A timeout window may protect the asset originator from an asset loss incurred if an exchange does not go through to finalized execution. For example, this may prevent an asset from being permanently tied to a never-expiring cryptologically-locked asset transaction, thus robbing the asset originator of full use of the asset.
[019] In various implementations the peer challenge 114 may be unambiguously and (in some cases) trivially derived from the challenge puzzle 112. For example, clear derivation from the challenge puzzle 112 may increase confidence and verifiability that the solution of the peer challenge 114 is the exchange key 122.
[020] In various implementations, the reciprocal exchange party 110 may require a signature 124 (e.g., on the cryptologically-locked asset transaction 116 and/or accompanied by the released transaction) from the exchange platform as a condition of release of the cryptologically-locked asset transaction 116.” (underlining and italic added)
40. In addition:
“[013] … in various embodiments, the operations of the exchange platform may be defined using executable code provisioned and/or audited by the exchange parties. In some cases, trustless auditing schemes may be used to implement the code on the exchange platform.
[014] In some cases, various operations of the exchange may be performed in a distributed framework with a centralized authority coordinating actions between the distributed nodes performing the exchange. In some cases, various ones of the peer nodes may implement a distributed ledger technology (DLT) or blockchain operations forming a peer network. In some cases, a blockchain and/or distribution on a peer network may be used to release exchange keys / locked transactions when finalizing transactions.” (underlining and italic added)
41. Furthermore, the exchange logic “may be implemented on circuitry”, and “e.g., via network interface circuitry, may obtain the peer challenge 114 and the cryptologically-locked asset transaction 116 (202)” (paragraph [021]). In addition, the exchange logic may be “accessing the peer challenge 114 and the cryptologically-locked asset transaction 116 on a blockchain; receiving the peer challenge 114 and the cryptologically-locked asset transaction 116 from a peer node within a peer network; assessing [sic] the peer challenge 114 and the cryptologically-locked asset transaction 116 on a distributed ledger; accessing the peer challenge 114 and the cryptologically-locked asset transaction 116 on shared storage; or via other data communications/operations” (paragraph [022]). For example, the exchange logic “may execute within one or more peer nodes on a peer network hosting a distributed ledger”, wherein “[t]he reciprocal exchange party 110 may provide the peer challenge 114 to one or more peer nodes within the peer network, which may generate a record of the peer challenge 114 on the distributed ledger. …, the peer challenge 114 may be accessed by the peer nodes” (paragraph [023]). While “[i]n some cases, the distributed ledger may be implemented on blockchain-based storage”, it is worth noting that “[i]n some implementations, the exchange logic may operate in a non-distributed and/or non-blockchain environment” (paragraph [023]).
42. It is also explained that “[i]n some implementations, the peer challenge 114 may be digitally signed using a reciprocal private key associated with (e.g., under the control of) the reciprocal exchange party” and that “[t]he reciprocal private key may be paired with a reciprocal public key that may be used to verify the authenticity of the digital signature” (paragraph [024]).
43. An example exchange execution platform is illustrated on Figure 3, reproduced below.
44. I consider this figure more or less self-explanatory and it appears to show a standard computing device or system. The only thing specific to the present invention is the content of the memory, which includes pieces of information labelled as “Challenge Data”, “Hash Parameters”, “Network Data”, and a set of “Applications and Structures”, including the previously discussed exchange logic. It is worth noting that:
“[039] … The example exchange execution platform 198 may also include a user interface 318 that may include human-to-machine interface devices and/or graphical user interfaces (GUI). The user interface 318 may be used to support and/or implement local or localized operation (noting that the example exchange execution platform 198 itself may be distributed) of the example exchange execution platform 198. In various implementations, the example exchange execution platform 198 implemented as the exchange circuitry and may be distributed over one or more physical servers, be implemented as one or more virtual machines, be implemented in container environments such as Cloud Foundry or Docker, and/or be implemented in Serverless (functions as-a-Service) environments.
[040] In some cases, the example exchange execution platform 198 may be a specially defined computational system deployed in a cloud platform, with a localized control terminal. In some cases, the parameters defining the execution environment may be specified in a manifest for cloud deployment. The manifest may be used by an operator to requisition cloud based hardware resources, and then deploy the software components, for example, the applications and structures 366, of the example exchange execution platform 198 onto the hardware resources. In some cases, a manifest may be stored as a preference file such as a YAML (yet another mark-up language), JSON, or other preference file type.” (underlining and italic added)
45. In addition to the high-level functional explanations, the phrases in italic in the above quotations suggest that the majority of the described implementation techniques are, in fact, optional and not necessarily required for the working of the invention. This is further re-enforced later in the Specification:
“[048] The methods, devices, processing, circuitry, and logic described above and in the specific illustrative examples below may be implemented in many different ways and in many different combinations of hardware and software. For example, all or parts of the implementations may be circuitry that includes an instruction processor, such as a Central Processing Unit (CPU), microcontroller, or a microprocessor; or as an Application Specific Integrated Circuit (ASIC), Programmable Logic Device (PLD), or Field Programmable Gate Array (FPGA); or as circuitry that includes discrete logic or other circuit components, including analog circuit components, digital circuit components or both; or any combination thereof. The circuitry may include discrete interconnected hardware components or may be combined on a single integrated circuit die, distributed among multiple integrated circuit dies, or implemented in a Multiple Chip Module (MCM) of multiple integrated circuit dies in a common package, as examples.
[049] Accordingly, the circuitry may store or access instructions for execution, in hardware, or may implement its functionality in hardware alone. The instructions may be stored in a tangible storage medium that is other than a transitory signal, such as a flash memory, a Random Access Memory (RAM), a Read Only Memory (ROM), an Erasable Programmable Read Only Memory (EPROM); or on a magnetic or optical disc, such as a Compact Disc Read Only Memory (CDROM), Hard Disk Drive (HDD), or other magnetic or optical disk; or in or on another machine-readable medium. A product, such as a computer program product, may include a storage medium and instructions stored in or on the medium, and the instructions when executed by the circuitry in a device may cause the device to implement any of the processing described above or illustrated in the drawings.
[050] The implementations may be distributed. For instance, the circuitry may include multiple distinct system components, such as multiple processors and memories, and may span multiple distributed processing systems. Parameters, databases, and other data structures may be separately stored and managed, may be incorporated into a single memory or database, may be logically and physically organized in many different ways, and may be implemented in many different ways. Example implementations include linked lists, program variables, hash tables, arrays, records (e.g., database records), objects, and implicit storage mechanisms. Instructions may form parts (e.g., subroutines or other code sections) of a single program, may form multiple separate programs, may be distributed across multiple memories and processors, and may be implemented in many different ways. Example implementations include stand-alone programs, and as part of a library, such as a shared library like a Dynamic Link Library (DLL). The library, for example, may contain shared data and one or more shared programs that include instructions that perform any of the processing described above or illustrated in the drawings, when executed by the circuitry.” (underlining added)
Examples
46. The last portion of the description contains examples in labelled paragraphs A1 to A10; B1 to B7; C1 and C2 (paragraph [071] is not labelled but it could probably be regarded as C3); D1 to D10; E1 to E8; F1 and F2; G1; and H1. These paragraphs define various example embodiments of the invention, in language ordinarily used to draft patent claims, and no further details of the invention are provided.
The claimed invention
47. The Specification ends with 14 claims, from which claims 1, 8, and 13 are independent. Claim 1 is reproduced below (some formatting added to assist readability):
“1. A system including:
network interface circuitry that:
obtains a peer challenge:
the peer challenge established, at least in part, in a pre-exchange proposal between a reciprocal exchange party and a leading exchange party,
the pre-exchange proposal including: transfer of a cryptologic puzzle from the leading exchange party to the reciprocal exchange party while withholding the exchange key,
the exchange key corresponding to a solution of the cryptologic puzzle;
the peer challenge configured to designate an exchange execution platform for a cryptologically-locked asset transaction,
the exchange execution platform selected during the pre-exchange proposal,
the cryptologically-locked asset transaction configured to, when released, transfer an asset to the leading exchange party;
the peer challenge configured to release the cryptologically-locked asset transaction, after:
an exchange key is provided on behalf of the leading exchange party, and
the cryptologically-locked asset transaction is signed by the exchange execution platform; and
obtains the exchange key to facilitate release of the cryptologically-locked asset transaction,
the exchange key originating from the leading exchange party; and
exchange circuitry in data communication with the network interface circuitry and operating on behalf of the exchange execution platform,
the exchange circuitry: executing the release of the cryptologically-locked transaction asset by:
generating a request for the exchange key from the leading exchange party;
verifying the exchange key against the peer challenge; and
after verification of the exchange key, finalizing by:
facilitating release of the cryptologically-locked asset transaction by signing the cryptologically-locked asset transaction; and
at a time of authorizing release of the cryptologically-locked asset transaction, releasing the exchange key to the reciprocal exchange party;
wherein the exchange circuitry releases the exchange key to the reciprocal exchange party by:
publishing the exchange key on a distributed ledger;
storing the exchange key in a decrypted form;
distributing the exchange key over a peer network;
encrypting the exchange key using a public key associated with the reciprocal exchange party;
addressing the exchange key to the reciprocal exchange party;
sending, via the network interface circuitry, the exchange key to a reciprocal node over a communication link,
the reciprocal node associated with the reciprocal exchange party;
or any combination of the foregoing; and
wherein the network interface circuitry obtains the peer challenge by:
receiving the peer challenge over a communication link from a reciprocal node associated with the reciprocal exchange party;
accessing the peer challenge on a distributed ledger;
receiving the peer challenge from a peer node within a peer network;
or any combination of the foregoing.”
48. Comparing claim 1 with the other independent claims, I note that while claim 1 is directed to a system including network interface circuitry and exchange circuitry in data communication with the network interface circuitry, claim 8 is directed to a corresponding method involving network interface circuitry and exchange circuitry in data communication with the network interface circuitry, and claim 13 is directed to a product including machine-readable media other than a transitory signal and instructions stored on the machine-readable media, the instructions, when executed, causing a machine to perform actions involving network interface circuitry and exchange circuitry in data communication with the network interface circuitry. Except for these differences, the language used to define the corresponding features in the three independent claims is essentially identical, and I do not consider it necessary to reproduce claims 8 and 13.
49. The claim construction does not appear to present any difficulties for the present purposes of characterising the claimed invention to ascertain whether it is a manner of manufacture and, given the wording similarities, claim 1 can conveniently be treated as being representative of the invention claimed in the independent claims.
MANNER OF MANUFACTURE CONSIDERATION
The Examiner’s objection
50. The Last Report contains the following objection (original emphasis):
“Claims 1 - 16 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990.
The Applicant has made the following submissions:
· The Applicant maintains that the claimed invention is directed to solving a technical problem, being ‘security risks associated with online transactions’, asserting that ‘security risks associated with online transactions must be considered to be a problem of a technical nature’.
· The Applicant cites paragraphs [015] – [016] of the specification as describing ‘the present invention providing electronic transaction systems with increased/improved security as compared with existing electronic transaction systems and hence, the substance of the claimed invention cannot reasonably be described as a “scheme”’.
· The Applicant has cited eBay Inc. [2020] APO 49 (EBAY) as establishing that ‘claims in respect of a computer implemented inventions may define patent-eligible subject matter despite the sole use of a generic computer.’ Following the guidance provided in paragraph [043] of the EBAY decision, the Applicant submits that the combination of claimed technical features, albeit individually known, ‘provide a contribution that is technical in nature similar to the threshold established in the EBAY decision.’
I have carefully considered these submissions, but do not find them to be persuasive.
As per Section 2.9.2.7 of the Examiner’s Manual of Practice and Procedure, it is not determinative when construing the substance of the invention that the claimed invention is limited to a computing environment. In the present case, the specification, including cited paragraphs [015] – [016], clearly describes a problem that relates to performing an asset exchange where exchanging parties lack mutual trust. This is a problem that resides outside of the technical environment, relating to administering an asset exchange between parties that do not trust each other. The security risk (lack of trust) exists irrespective of the asset exchange occurring as an online transaction. As such, it is maintained that the problem being addressed is administrative in nature and not a technical problem.
It is further maintained that the combination of claimed features does not result in a contribution that is technical in nature. The combination of claimed features merely amounts to use of known functions of a computer to determine the conditions under which an asset transaction is locked and subsequently released, including the use of a third party to verify the conditions and symmetrically finalise the exchange.
Furthermore, the additional features of the amended claims do not elevate this contribution to something that is considered to be technical in nature. The added features merely relate to the use of known computing techniques for communicating/transferring information (exchange key/peer challenge) between parties to the exchange, and as such are not considered to provide a technical contribution.
As such, it is maintained that the substance of the invention lies in an administrative scheme for managing an asset exchange between parties lacking in mutual trust, including means for determining the conditions under which an asset exchange transaction is to be locked and released by a third party, whereby the third party verifies that the conditions have been met and symmetrically finalises the exchange. Any benefit resulting from the claimed invention is limited to improvements in the asset exchange, being the abstract concept of a reduced risk in performing an asset exchange between exchange parties that do not trust one another, and not something that constitutes a technical or material effect.
In summary, the claimed invention does not solve a technical problem or provide a technical contribution akin to the improved navigation device of the EBAY decision which, at paragraph [40], was found to provide a technical solution to the technical problem of ‘determining not only location and time, but also crowd congestion at a venue and, at specific times during the event, to determine changes to a route to reach a desired point of interest efficiently that are then displayed on the device in a particular manner to benefit the user in navigating to and from the point of interest’.
Therefore, the claimed invention, as a matter of substance, does not define subject matter suitable for a patent.”
51. As I have already mentioned, since the Last Report, the Applicant has filed a new set of proposed amendments and, for the purpose of deciding on manner of manufacture, I am considering the Specification as if amended by this latest set of proposed amendments.
The written submissions of the Applicant
52. The Applicant’s Submissions briefly explain the proposed amendments, then discuss the contents of the three examination reports issued so far and, mostly by reference to Jagwood Pty Ltd [2020] APO 38 (Jagwood), Advanced New Technologies Co., Ltd. [2021] APO 29 (ANT), eBay Inc. [2020] APO 49 (eBay), and to some extent Apple Inc. [2021] APO 18 (Apple), state the Applicant’s understanding of the relevant legal principles:
“… a claimed invention is not required to solve a technical problem to be considered to comprise patent-eligible subject matter, and it is generally sufficient to establish the presence of patentable subject matter if a claimed invention provides a technical solution to a problem faced by the inventors and also provides a practical and useful result or an ‘artificially created state of affairs’ …” (AS, page 3)
“… the ingenuity of a claimed invention can reside in a known feature …” (AS, page 3)
“… provided a claimed invention is not in respect of a scheme (i.e., it provides a technical solution to the problem faced by the inventors and yields at least one practical and useful result), then the claimed invention should be considered directed to patent-eligible subject matter.” (AS, page 3)
“… there is no requirement for an improved computer or an improvement in the functioning of the computer … for the presence of patent-eligible subject matter.” (AS, page 3)
“… the substance of a claimed invention can be directed to patent-eligible subject matter despite the presence of solely generic computing implementation, and despite a lack of any perceived improvement in the standard computer or functioning of the standard computer.” (AS, pages 3-4)
53. As I already mentioned, the Applicant’s Submissions also rely on Aristocrat 20, a single judge decision that was subsequently overturned by the Full Court in Aristocrat 21, and that prompted an invitation for further submissions. Insofar as the Applicant’s Further Submissions are related to Aristocrat 21, the submissions focus mostly on the majority’s views on the use of the word “generic” in various expressions describing the computer utilisation, and on the point that implementation of an abstract idea on a generic computer does not necessarily result in a lack of an advance in computer technology:
“… reference to concepts such as ‘generic computer technology’ when assessing whether or not a claimed invention involves patent-eligible subject matter is not helpful since it is unclear what this term actually means (refer ARISTOCRAT21, paragraph 35).” (AFS, page 2, original emphasis)
“… the comments of the Full Court in ARISTOCRAT21 make it clear that consideration regarding whether a claimed invention involves generic computing implementation does not assist when assessing whether a claimed invention represents an advance in computing technology and there is a danger of ‘talking loosely’ with an expression such as ‘generic computing technology’ since the meaning of this phrase is unclear. Accordingly, in view of ARISTOCRAT21, consideration regarding whether an invention uses ‘generic computing technology’ should be avoided when assessing whether a claimed invention comprises patentable subject matter.” (AFS, page 2)
“Clearly there can be an ‘advance in computer technology’ despite the implementation of an abstract idea on a generic computer provided the implementation of the abstract idea by the computer provides a practical and useful result as confirmed by the Full Court in ARISTOCRAT21. In other words, if a computer’s only purpose is to give effect to the abstract ideas embodied in the code which it executes, without more, this would not warrant the grant of a monopoly (refer, ARISTOCRAT21, paragraph [89]).” (AFS, page 5)
54. Importantly, the Applicant submits that:
“… it is well established that even though a claimed invention involves the implementation of an abstract idea solely on a generic computer, the claimed invention may still comprise patentable subject matter provided the abstract idea involves ‘sufficient inventive concept’ such that the computer is considered ‘improved’. In this regard, the Applicant respectfully refers the Hearing Officer to paragraph 85 of RPL2 [i.e., RPL Central] in which the Full Court provided an outline of the Commissioner’s submissions regarding the claimed invention considered in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (CCOM):
The Commissioner distinguished CCOM and International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218 (IBM 2), as the difference between the implementation of an abstract idea in the computer and the implementation of an abstract idea in the computer to create the improvement in the computer; that is, there needed to be sufficient ‘inventive concept’ to transform an unpatentable abstract idea (or scheme) into a patent eligible application (cf. the US Supreme Court reasoning in Alice Corporation). Further, the Commissioner points out, the speed and power of modern computers make them a fast and efficient tool for businesses and few business processes are performed without the use of a computer. In this way, computers can be said to be essential and integral to, and inextricably linked with, the majority of new business methods. She submits that this alone cannot be sufficient to make otherwise unpatentable business methods proper subject matter.” (AFS, pages 6-7, bold and italic in the original, underlining added)
55. While the point made in the above submission is not entirely clear to me, I must emphasise that the level of ingenuity or sufficiency of the inventive concept in the abstract idea per se is not determinative. For cases like CCOM and IBM 2, mentioned by the Applicant, it is important to note that some ingenuity was directed to, and resulted in, the improvement of the computer.
56. Since I have already discussed the relevant legal principles earlier in this decision, I do not consider it necessary to provide any further comments on the Applicant’s views on the law on manner of manufacture. With respect to the Applicant’s reliance on several prior decisions i.e., Jagwood, ANT, eBay, and Apple), it is perhaps worth noting that the decisions issued by the Australian Patent Office do not form part of the case law and, as such, do not establish any legal principles or precedent. In each individual decision, a Delegate of the Commissioner applies the principles developed by the Courts to the facts of the case to reach a conclusion. While I acknowledge that, in each of the decisions relied on by the Applicant, the respective Delegate reached the conclusion that, in that particular case, the invention was a manner of manufacture, I cannot see how this could help the Applicant given that each case is decided on its own merits in light of the legal principles developed by the Courts.
57. The Applicant also provided submissions related to the application of the legal principles to the instant invention and I will discuss these in my considerations below.
The substance of the invention
58. The claimed and described invention is related to an exchange or transfer of an asset between two parties, namely the leading exchange party and the reciprocal exchange party. The problem addressed by the instant invention appears to be related to security concerns associated with the lack of mutual trust between the exchange parties and certain reluctance by the parties to place assets in the control/custody of a neutral third party facilitating the exchange (e.g., paragraphs [012]-[013] and [015]-[016], parts of which were quoted earlier).
59. It is important to note that the concept of security in general is an abstract concept. Hence, security problems per se are not necessarily technical problems. The important question is how the security problems are solved to achieve improved security. A potential solution can involve solving secondary technical problems or solving secondary administrative problems.
60. For example, if the insufficient security of a commercial premises is the problem to be addressed, this in itself is not a technical problem. Whether a potential solution to this problem would be patentable or not will depend on the nature of the solution. A solution based on a new and improved locking device for the entry door may well be patentable. On the other hand, a solution based on employing security personnel to guard the door would clearly be unpatentable, despite undoubtedly resulting in improved security of the premises.
61. In the present case, the essence of the proposed solution appears summarised in the description as follows:
“[015] … Coordinated, symmetric release of the exchange key and locked asset transaction provides a security improvement to the operation of electronic transaction systems. …
[016] … The architectures and techniques discussed herein represent a departure from the conventional wisdom by instead retaining control and direction of the assets with the exchanging parties. Specifically, the reciprocal exchange party locks an asset transaction and sets conditions for release to the leading party. The third party is called to verify the locking, verify the satisfaction of conditions, and symmetrically finalize the exchange. However, contrary to conventional wisdom control/custody of the assets may not necessarily be given to the third party. Rather, the third party’s control is circumscribed to include the locked asset transaction and not the asset itself.” (underlining added)
This is also reflected in the language of the independent claims.
62. The Applicant argues that:
“… the claimed solution includes a number of technical features that, in combination, provide a coordinated, symmetric release of the exchange key and locked asset transaction without the need for the sending party to relinquish control of their asset to an intermediary third party during the exchange. It is respectfully submitted that this is not a standard operation in conventional asset exchange methods using blockchain. Accordingly, the claimed invention provides a technical solution to a problem faced by the inventors and also provides a practical and useful result.” (AS, page 4)
Similar arguments are also provided in AFS on page 3.
63. I must emphasise that not every solution involving technical features (or even a combination of technical features) is necessarily a technical solution. To illustrate, in the above commercial premises example, a solution to the problem of insufficient security could be provided by an administrative direction to staff members, requiring them to lock the padlock on the entry door with their keys when leaving the premises unattended even for a very short time. Such a solution is unlikely to be considered a technical solution despite involving the combination of technical features of a padlock and keys, and clearly improving the security in comparison to the previous arrangement where the padlock on the door was locked only at the end of each day.
64. In cases like RPL Central, Rokt, and Repipe for example, the alleged inventions involved suitably programmed networked computing devices, and these did represent a combination of technical features used in the provision of a solution to a problem. Despite this, those alleged inventions were not providing technical solutions and were not found patentable.
65. Relatedly, while the Applicant emphasises, with reference to ANT, that “the application of cryptographic techniques [is] technical in nature” (AS, page 5) and that “the claimed invention is technical in nature at least on the basis that the application of cryptographic techniques is technical” (AFS, page 6), strictly speaking, the programming and operation of computing devices is also technical in nature. The mere fact that technical in nature processes or techniques are involved does not necessarily make a proposed solution or a claimed invention technical.
66. In the present case, the specific security techniques to be utilised when implementing the invention could be varied as considered appropriate by the skilled addressee. I note that even the apparently important cryptologically-locked asset transaction is still a high-level concept encompassing a plurality of specific implementation possibilities. This, for example, is suggested in paragraph [018] (quoted in full earlier): “In some cases, cryptologically-locked asset transactions 116 may be locked through schemes including hashed locks and hashed time-locks. However, other key-based asset locking schemes may be used”. Paragraph [017] (also quoted earlier) explains that: “‘Cryptologic’ may be used to describe any technology or algorithm based on encryption, obfuscation, hashing, or other cipher-based system”.
67. The same finding is also applicable to the use of computer technology, which appears to be described entirely in general terms, the specifics being left to the skilled addressee. There is no suggestion that the networked computing devices are anything else than well-known standard computing devices, or that those are used for anything other than to perform their well-known and understood functions. Indeed, the majority of the described computer implementation techniques appear to be optional and not necessarily required for the working of the invention.
68. The invention appears to be exclusively about the particular transactional arrangement between the parties, which results in the exchange of the asset. I consider that the content of the body of the Specification strongly suggests that the implementation aspects do not form part of the invention. This is also somewhat acknowledged by the Applicant:
“… the focus of the invention is not in the computer program to carry out the method, and hence minimal consideration should be given to the fact that the invention involves only generic computing implementation.” (AS, page 4)
69. I am unable to identify any technical aspects to the proposed solution itself. It is no more than an arrangement that allows for the “coordinated, symmetric release of the exchange key and locked asset transaction without the need for the sending party to relinquish control of their asset to an intermediary third party during the exchange” (AS, page 4). The fact that “this is not a standard operation in conventional asset exchange methods using blockchain” (AS, page 4) and that “[t]he claimed solution thereby provides a specific improvement as compared with prior systems and methods when coordinating an asset exchange between two parties” (AFS, page 6) only reinforces my view that what is proposed is related to new asset exchange methods based, however, on well-known computer technology and encryption techniques. I do not consider this to be a technical solution, rather the solution represents a new administrative arrangement utilising existing technology for its well-known and understood functions. Any potential improvement is not in the computing technology but in the administrative arrangement.
70. As for the submission that “[t]he claimed invention further provides at least the practical and useful result in the form of the provision of a coordinated, symmetric release of the exchange key and locked asset transaction without the need for the sending party to relinquish control of their asset to an intermediary third party during the exchange all of which are effected by technical features” (AFS, page 6), I consider the statements of Perram J in Repipe highly relevant to the present case:
“4 The invention thus consists of the use of the features of GPS-enabled mobile devices to communicate with a central server which handles information in a particular way. Whilst I have no difficulty in accepting that the invention is useful and represents a clever use of mobile devices and a server, I am unable to see how it constitutes an advance in computer technology. Rather, it is a deployment of existing computer technology for a useful purpose.”
71. Indeed, the instant invention appears useful and may well represent “a clever use of” the existing computer technology but, similarly to the case of Repipe, I am also “unable to see how it constitutes an advance in computer technology”, despite the Applicant’s assertions to the contrary (e.g. AFS, page 6).
72. The Applicant also insists that “the combination of technical features recited in the claims not only provides a technical solution to the problem(s) faced by the inventors, but also provides at least the technical effect of a more secure asset exchange between parties” (AFS, page 6). Based on my discussion of the concept of security above, I cannot see how “a more secure asset exchange between parties”, on its own, could constitute a technical effect.
73. In conclusion, I consider that the substance of the claimed invention resides in the new and inventive (as per the Last Report) arrangement, involving networked computers, to execute an asset exchange transaction in a particular way through “coordinated, symmetric release of the exchange key and locked asset transaction without the need for the sending party to relinquish control of their asset to an intermediary third party during the exchange”.
74. I note that this finding is applicable to each one of the claims, given that the dependent claims only provide further details of the arrangement.
Does the Specification claim an invention that is a manner of manufacture?
75. Having identified the substance of the invention as above, it is clear that, as a matter of substance, the claimed invention cannot be characterised as a patentable technological innovation. Instead, I would characterise it as an unpatentable business innovation in the realm of electronic commerce. In substance, the claimed invention could be described as a business scheme. Therefore, I consider that none of the claims in the Specification defines an invention that is a manner of manufacture.
Can an allowable amendment overcome the negative finding?
76. Earlier in this decision, I have discussed the body of the Specification in sufficient detail, and I am unable to identify any material that could form the basis for a claim that defines a patentable invention. The disclosure is limited to the high-level operational details of various possible implementations of the business scheme.
77. I acknowledge the Applicant’s submission that:
“In the event the Hearing Officer proposes to refuse the application, the Applicant requests return of the application to the Examination Division to afford the Applicant further time in which to consider further amendments and/or arguments before the Examination Division.” (AFS, page 9)
78. However, it should be emphasised that a hearing decision with respect to an examiner’s objection is not simply a more detailed examination report providing automatically for continued examination with possible further amendments and/or submissions addressing the findings in the decision. The objection with respect to manner of manufacture was raised and consistently maintained in all examination reports. The Applicant voluntarily requested to be heard and, with their written submissions, already proposed amendments (under items 3 and 4), which I have considered in this decision. It is not unreasonable to assume that the Applicant already had the opportunity to present their best case before the Commissioner. In the circumstances where I can see no clear way to overcome my negative finding, and in view of the public interest in certainty as to the status of the Application, I consider that providing the Applicant with a further opportunity to amend and continuing the examination would serve no useful purpose.
CONCLUSION
79. I have found that no claim of the Application, as proposed to be amended, defines an invention that is a manner of manufacture. Furthermore, I formed the view that no allowable amendment could result in claiming a patentable invention. It follows that the Application should be refused.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
2
2