AirService Digital Pty Ltd
[2018] APO 39
•19 June 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
AirService Digital Pty Ltd [2018] APO 39
Patent Application: 2017201360
Title:Retail Venue Ordering System And Method
Patent Applicant: AirService Digital Pty Ltd
Delegate: M. G. Kraefft
Decision Date: 19 June 2018
Hearing Date: 8 May 2018, in Melbourne
Catchwords: PATENTS – section 45 – examiner’s objections – system for placing orders at retail venue through mobile order application – whether invention is a manner of manufacture – venue data device allocated unique customer identification code to each customer – corresponding code stored in mobile device of corresponding customer – access to venue menu and ordering process enabled through mobile device – claimed invention not a manner of manufacture – whether claimed invention has inventive step – claimed invention differed from prior art through routine steps – claimed invention does not have an inventive step
Representation: Patent attorneys for the applicant: Mr Manuel Schmidt and Ms Madeleine Kelly, FB Rice.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017201360
Title:Retail Venue Ordering System And Method
Patent Applicant: AirService Digital Pty Ltd
Date of Decision: 19 June 2018
DECISION
The claimed invention, as proposed to be amended, is not for a manner of manufacture and does not have an inventive step. Moreover there is nothing in the specification that could overcome the finding of lack of manner of manufacture.
The application is refused.
REASONS FOR DECISION
BACKGROUND
AirService Digital Pty Ltd (“the applicant”) filed patent application 2017201360 on 28 February 2017. The application is a divisional application based on application 2015201340 (“the parent application”). The latter application is a divisional application based on application 2012239843. This application in turn is based on an Australian provisional application 2011901252. The earliest claimed priority date is 5 April 2011.
On the date of filing of application 2017201360, the applicant also proposed amendments to the description and claims of the specification.
An examination report was issued on 23 January 2018. The report contained objections that the claims of the application did not define a manner of manufacture, lacked an inventive step, and that certain claims did not comply with Section 40. The report also included the following passage.
“My report below includes objections that are equivalent to objections raised in the examination of the related parent application which is directed to the same or essentially the same subject matter. As there has (sic) 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.” (emphasis in the original).
The applicant subsequently requested to be heard. Also at the request of the applicant, the hearing was conducted orally.
A week before the hearing, the applicant made further proposed amendments to the description and claims of the specification. The applicant also filed a statutory declaration and submissions for the hearing. In respect to the declaration filed as evidence in this case, it may be noted that this clearly is material that the examiner would not have been privy to at the time of the examination report.
SPECIFICATION
The specification describes the invention as relating to an ordering system and method for a retail establishment such as those which sell food and drink. As background, the specification discusses traditional methods of ordering food and drink. One involves waiters or waitresses taking orders from customers at restaurant tables. Another involves the taking of orders at a central location with the customer then being given a table number to display at a chosen table.
In an effort to reduce the number of waiting staff, the specification also mentions the allocation of a radio device to a customer to page the customer to collect their ordered meal when ready. Furthermore the specification mentions home delivery services which provide an Internet based service to facilitate order and payment of food.
The specification then states that the genesis of the invention is a desire to utilize the proliferation of personal mobile data devices such as smart phones to assist in the ordering of food and/or drinks.
The specification, as proposed to be amended, ends with 18 claims. Claims 1 and 9 are independent claims. These claims read as follows.
1.A method of placing orders at a retail venue including a venue data device and having a plurality of customers each of whom has a mobile data device, said method comprising the steps of:
(i)said venue data device uploading a venue menu to an internet site;
(ii)downloading an order application from said site to the mobile data devices of said customers;
(iii)said venue data device allocating a customer unique customer identification code to each said customer such that only one customer unique customer identification code is allocated to each said customer and storing said code in said mobile data device of the corresponding customer, and
(iv)displaying the venue menu on said mobile data device to allow a customer allocated a corresponding one of said customer unique customer identification codes to access said menu via his mobile data device to order one or more items from said menu.
9.A system for placing orders at a retail venue having a plurality of customers each of whom has a mobile data device, said system comprising
a venue data device of said retail venue that is programmed to perform the following:
to upload a venue menu to an Internet site,
to allocate a customer identification code allocated to each said customer such that only one customer unique customer identification code is allocated to each said customer and
to store the customer identification code in said mobile data device of the corresponding customer and,an order application downloaded from said Internet site to the mobile data device;
said order application being programmed to display the venue menu to allow a costumer (sic) to utilize the mobile data device to access said venue menu, and the stored customer identification code and to order one or more items from said venue menu.APPLICABLE LAW
Section 18 of the Patents Act 1990 relevantly provides that:-
(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
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; …
The relevant part of Section 40 provides as follows.
S40(3)The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
EXAMINATION REPORTS
As mentioned above, the examination report for the present application contained objections that the claims of the application did not define a manner of manufacture, lacked an inventive step, and that certain claims did not comply with Section 40.
On manner of manufacture, the report referred to the reports on the parent application for the substantive reasons of the objection. At the outset, the latter reports stated that, from reading the application as a whole, the substance of the alleged invention is a scheme for placing of orders for goods/services such as food/drink at retail venues; i.e. mere business administration/scheme and mere working directions/instructions for operating the scheme. The reports then stated that this was not patentable subject matter.
In support of that contention, the reports stated that 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 whether the contribution 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. In general, the reports on the parent application asserted that the applicant’s purported technical advantages or solving of a technical problem were inconsequential as they related to generic, standard or very well-known applications of standard computer technology.
In respect to inventive step, the report for the present application indicates that claims 1, 5-9, 12-14 and 16-18 lack an inventive step in the light of US 2009/0119183 (“D1”) together with common general knowledge. The report further indicates that claims 2-4, 10, 11 and 15 lack an inventive step in the light of the combination of D1 and WO 2007/041672 (“D2”) together with common general knowledge.
Under Section 40, the report stated that claims 1 and 9 did not comply with regard to clarity because of the reference to the following trade names. These were iOSTM, BlackBerry®, Windows MobileTM, Nokia® and AndroidTM. The report stipulated that the use of a trade name to identify an integer causes difficulties in the construction of the claim and gives rise to uncertainty about its scope, especially given the changing nature of these operating systems and their corresponding constituents/attributes over time.
PROPOSED AMENDMENTS AND SECTION 40
As may be seen from the claims recited above, the most recent proposed amendments remove references to trade names. Consequently the Section 40 objection in the examination report would now be overcome.
EVIDENCE
The applicant filed a statutory declaration from Mr Lucio Piccoli. He is an information technology (“IT”) specialist with extensive experience in applications and systems architecture and development. Mr Piccoli stated that his most relevant experience to the present matter, before the priority date, was in the technical design implementation and marketing for a mobile social networking app. He concluded that role provided him with a deep technology view on what existed in the app technology sphere as well as the server side technology around 2011.
Mr Piccoli stated that around 2011, the app market was dominated by apps that could be installed from Apple’s App Store®. Most apps would have been installed on Apple’s iPhones® at that time. In relation to linking an app to a particular user, Mr Piccoli stated that the normal process was that the user downloads the app, starts the app, clicks on a ‘sign-up’ or ‘create account’ button in the app or an associated web service. In the absence of an external authorisation system, the apps typically asked for an email address or user identification (“ID”) and password. Mr Piccoli further stated that, typically, most apps communicated with a server, referred to as the ‘backend server’. The backend server created a record in a database for a new user. The user was then able to provide log-in credentials in the future to sign into the app. Mr Piccoli also indicated that user identifiers were ‘platform unique’ meaning that the user ID only occurs once in the platform. This was achieved by the database checking whether a generated user ID, arising from the creation of a new account, existed already by comparing the generated ID against all stored user IDs.
In respect to apps for ordering food in 2011, Mr Piccoli recalled the existence of only one food ordering app. He did not expect it to be a good idea or successful. Mr Piccoli stated that the app allowed users to order food from restaurants and that the app aggregated different restaurants for users. In terms of creating an app for different venues, Mr Piccoli suggested the user would initiate the order to the backend server. Then the venue would simply be given an order from the backend server with a customer ID and the name of the person.
Mr Piccoli further indicated that he would have set up the database centrally on a database server and not put the database on the venue device. The restaurants would only have a screen for acknowledging the order, submitting details and a form to submit data to the backend server. Mr Piccoli would also not have implemented the system in a way that the restaurant device performs any user management tasks. This would be centralised by the backend for security. From an architect’s view, Mr Piccoli indicated that one would not trust the venue device with the most critical data, that is, the user name and identifier.
SUBMISSIONS
On manner of manufacture, the applicant submitted the claimed invention was more than a mere scheme because there was a technical contribution to the art. The applicant stated the application related to placing orders at a retail venue using mobile data devices. The technical problem with using mobile data devices for placing orders was that it was difficult to identify customers as they move together with their mobile devices between different venues.
The applicant referred to Mr Piccoli’s evidence to state that if a person skilled in the art was given the problem of designing an application for ordering food, the chosen solution would have been to have a central server managing customer identification codes. This was different to the claimed invention where the venue device dealt with customer identification codes.
Furthermore, the applicant indicated from Mr Piccoli’s evidence that a skilled person would have decided to store all data on a central server and it was not well-known to store the user ID code on the mobile device.
In summary the applicant submitted the claims included the following technical features that were not well-known according to Mr Piccoli’s evidence:-
(a)using downloadable applications on mobile devices in the technical field of ordering items;
(b)a venue device performing ID management;
(c)a venue device allocating ID codes; and
(d)ID codes being stored on mobile devices.
On this basis, the applicant submitted the claimed invention constituted a technical contribution to the art and that, consequently, the claims were directed to a manner of manufacture.
In respect to inventive step, the applicant noted that the examiner conceded that D1 did not disclose the allocation of unique customer ID codes by the venue data device. With reference to The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited, [1972] RPC 457, the applicant then criticised the examiner’s reliance on a further patent specification as evidence that such an arrangement was part of the common general knowledge at the relevant time. Instead, in the light of Mr Piccoli’s evidence, the applicant submitted that it was not obvious to the skilled person to have the venue data device allocate the ID code. Furthermore, it was not obvious to store the customer ID on the mobile device. In terms of the uniqueness of the customer ID, the applicant noted that D1 disclosed the capability for a consumer to create several different consumer profiles. D1 exemplified the consumer’s different profiles having different preferences and methods of payment, for example with different service providers. The applicant thus indicated that D1 taught away from unique customer IDs.
MANNER OF MANUFACTURE
Case Law
In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in this regard. At page 275, “… 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”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:-
“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 … 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.”
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, at [23]:-
“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.”
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“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.”
In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-
“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.”
Moreover at [98]:-
“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”.
In Research Affiliates LLC v Commissioner of Patents, [2014] FCAFC 150, the Full Court of the Federal Court noted that a consistent approach in UK decisions, as distinct from previous Board of Appeal decisions of the European Patent Office, could be of assistance in the Australian context. At [23] of Research Affiliates:-
“In our opinion, it is more helpful to consider the analysis of the issue in the UK decisions which, with respect, provide a consistent approach. Despite being in the context of the statutory exclusion of computer programs ‘as such’, the UK decisions are of assistance in understanding the distinction to be drawn in the Australian context between an unpatentable business method and a claimed invention which may be patentable if the invention results in an ‘artificial effect’, within the understanding of that concept as explained in NRDC.”
At [36], the court further indicated that applying a test of a “technical contribution”, as opined for example in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371; [2007] RPC 7, can be useful in an analysis of an “artificial effect”.
Substance of the Invention
The presently claimed invention is directed to a method and system for placing orders at a retail venue. The venue retains a venue data device for uploading a venue menu to an Internet site. The venue data device also allocates unique customer identification codes to customers of the venue. The customer identification code for each customer is stored in a mobile data device of each corresponding customer. An order application may be downloaded from the Internet site to the mobile devices of customers. The venue menu may also be displayed on the mobile devices. Such display allows a customer to access the menu via the mobile device to order one or more items from the menu.
At the foot of page 1 of the specification, the applicant appears to accept that home delivery services were known that provide an Internet-based service to enable customers to order and pay for food. Over the page, the applicant then describes the desire to utilise the proliferation of mobile devices such as smart phones to assist in ordering food and/or drinks.
The applicant further suggested in submissions, with reference to Mr Piccoli’s evidence, that the invention contributed in the use of downloadable applications on mobile devices in the technical field of ordering items. In this respect though, it may be noted that Mr Piccoli, at [14] of his declaration, indicated that apps existed at the relevant time for download to mobile devices. Specifically, he stated that the app market was dominated by apps that could be installed from Apple’s App Store® and most apps would have been installed on Apple’s iPhones® at that time. Thus, in the present case, there can be no contribution to the art in using downloadable applications to mobile devices. Moreover, it is not readily apparent what is specifically technical about ordering items as distinct from other uses of apps.
At the hearing the applicant indicated that the ordering process necessarily involved specific technical implementation, and that this was reflected in the present claims. That is, while the technical contribution to the art may not necessarily be in downloading an order application to a mobile data device as claimed, such contribution may be found in the specifically defined functionalities attributed to the venue data device and the mobile data device.
In the claims the venue data device, that uploads a venue menu to an Internet site, is also responsible for allocating unique customer identification codes to each customer. The corresponding code for each customer is then stored in the mobile device of the corresponding customer.
In his evidence, Mr Piccoli stated that he would not have implemented the system in a way that the restaurant device, that is the venue device, performs any user management tasks. He would have the tasks centralised by the backend for security reasons. Mr Piccoli concluded that, from an architect’s view, one would not trust the venue device with the most critical data, that being user data.
In view of Mr Piccoli’s description of the state of the art at the priority date on this point, it may be said that the allocation of unique customer identification codes to each customer by a venue data device is, on the face of it, one contribution to the art in the present case. It is notable that this is a localised allocation of customer data as opposed to a centralised one, such as from within a central server for example. Either way, such functionality of the retailer’s local device or the central server would not have been anything beyond normal operation of such computing devices at the relevant time. The creation, processing and storage of unique customer codes for customers of a business, or at least regular customers thereof, had been long-standing practice before the priority date. While Mr Piccoli has opined a reason for the centralised approach for managing user data at the relevant time, a decision for the alternative localised approach would appear to have been a business decision, where amongst other things, by Mr Piccoli’s evidence, security may be one consideration. There would appear to have been no technical difference with either approach. Consequently I think it cannot be fairly said that the alternative localised approach of allocating unique customer identification codes is a technical contribution to the art.
Mr Piccoli similarly stated that he would not have designed a solution where the user identifier is stored on the mobile device. He stated that he would have dismissed that idea because the mobile device could get lost, destroyed or exchanged for another device, which could happen by the pure nature of mobile devices. On the other hand, the storage of user data on mobile devices was ubiquitous at the relevant time. From the original subscriber identity module (“SIM”) cards for mobile phones, user data such as user identity, phone number, contact lists and stored messages, together with network access and authorisation data, have been stored on mobile phones. The specific claimed storage of unique customer identification codes, allocated by a retailer’s venue device, on a mobile device in the present case is characterised only by the nature and source of the data. While this may again be a contribution to the art, it is not a technical one.
It may be accepted that the functionality defined for the mobile device in the claims, additional to the storage of the corresponding customer identification code, is to enable access to the venue menu and enable the ordering process. The claims link these features in various ways. ln claim 9 for example, the downloaded order application display enables a customer to use the mobile device to access the venue menu and the stored customer identification code and to order one or more menu items. On the other hand, this is merely a programming functionality associated with the order app that enables the user of the mobile device to interact over the Internet with another entity, whilst at the same time making the user identifiable. Such functionality would have clearly been a feature of mobile apps before the priority date. There is nothing specific in the claims or the specification as a whole as to the mobile interface requiring anything different of the user beyond normal interaction with the mobile device.
Moreover as a matter of substance, the system architecture as a whole may be characterised simply by devices in communication with one another over the Internet. More particularly, the claimed system and method are merely directed to which devices create, process, communicate and/or store an app or data, which are aspects that were normal features and functionality of computing devices well before the priority date. There is nothing claimed or in the specification as a whole as to how any device or the system overall operates differently from the norm at the relevant time to implement the retail ordering process. I find the devices and the system overall are mere tools in which the alleged invention is performed.
I conclude the claimed invention is not for a manner of manufacture. Moreover I conclude there is nothing in the specification that could avoid this finding.
INVENTIVE STEP
Subsections 7(2) and 7(3) of the Patents Act 1990 relevantly provide as follows.
S7(2)For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
S7(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
Case Law
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], 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."
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative.
In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99, the court held at [203] that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Alphapharm at [41], the High Court stated:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
Person Skilled In The Art
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, [2000] FCA 980, Finkelstein J stated at [70] and [71] that the skilled addressee is the person to whom the patent is addressed and who must construe it. Such person works in the art or science with which the invention is connected or is likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. Finkelstein J further noted various descriptions given to the skilled addressee. These included the “uninventive skilled worker in the particular field” (Leonardis v Sartas No 1 Pty Ltd, (1996) 67 FCR 126) and the “person skilled in the art” (Genentech Inc v Wellcome Foundation Ltd, (1989) 15 IPR 423).
The present invention is in the field of ordering systems between service providers and customers using mobile apps. I would expect the relevant person skilled in this art to be an applications or systems designer or engineer versed with mobile technologies and their application to facilitate customer and service provider interactions. I would regard Mr Piccoli as representative of the relevant person skilled in the art in the present case.
Common General Knowledge
In discussing the difference between the claimed invention and D1, the examination report for the present application states it was well-known in the art for a service provider to allocate account identification information directly to customers which identification information may be used for subsequent transactions with that provider. An application of online purchasing over the Internet using bank account information and verification information to validate the customer’s order was an example cited by the examiner.
It may be noted that this discussion related to the use of bank account information and other verification information, such as authorised computers for making orders, authorised delivery addresses, or authorised user identification, amongst other things, and not specifically the use of unique customer ID codes, and only one to each customer, from a retailer’s venue data device as claimed in the present case. On the other hand, the long-standing ubiquity of the practice of service providers or entities allocating unique customer ID codes may be evidenced by the following, non-exhaustive examples. Situations where such allocation may be said to have been common at the relevant time include employers allocating unique employee numbers, superannuation funds allocating unique member numbers, sporting clubs or social clubs allocating unique member numbers, retailers allocating unique codes for customers participating in VIP or loyalty programs, etc. The present claims merely define a particular device enabling that practice to be carried out by the relevant entity. I am prepared to find that the allocation of unique customer ID codes by service providers, using appropriate standard computing functionality, was common general knowledge at the relevant time.
US 2009/0119183 (“D1”)
D1 describes a method and system for consumer access to services or goods of service providers. Various aspects of the method and system avoid the need for consumers and service providers to expend resources and time, such as queuing physically or over the phone to place orders with a service provider representative. Various aspects of the method and system also circumvent the need for service providers to create and maintain user-friendly websites, as well as the need for consumers to create accounts or use sophisticated interactive devices.
The invention described in D1 enables a consumer mobile phone or other communications device to interactively access the content of a service provider, such as an eatery. Upon gaining access, the consumer can compose an order for goods and/or services or other request for information via the communications device. Goods and/or services, such as a restaurant menu, may be communicated from the service provider and displayed on the consumer’s communications device. The consumer’s request may then be communicated directly or via a server to the service provider for fulfilment of the order or request.
In one aspect of the disclosure of D1, service providers may subscribe to the services of an independent server and indicate the goods and/or services to offer to consumers. Such server may then convert that information, for example a restaurant menu, into a display format on the consumer’s communications device. The consumer may then select items and indicate specific preferences via the communications device.
D1 further discloses the ability of consumers to create a profile and register the profile with the central, independent server. The consumer may include search criteria in the profile for favourite search items and/or service providers, spending limits to limit the risk of unauthorised use of the consumer’s communications device, and preferences for payment options.
D1 differs from the claimed invention in the following ways. In D1, the consumer may create and register their own profile with the central server and may choose multiple, favourite service providers in their profile. The present claims define the venue data device allocating unique customer identifiers. Above, I found that the allocation of unique customer ID codes by service providers, using appropriate standard computing functionality, was common general knowledge at the relevant time.
Moreover the claims define the storage of the corresponding customer ID code of each customer in the mobile device of the corresponding customer. This is not disclosed in D1. In evidence, Mr Piccoli stated that he would have dismissed that idea at the relevant time. On the other hand, I have also indicated above the ubiquity of the storage of user data, including user identity, on mobile devices at the relevant time. Furthermore, as indicated above, the specification discusses the problems associated with requiring waiting staff, using table numbers or using pagers, and the desire to utilize the proliferation of mobile devices such as smart phones to assist in the ordering of food and/or drinks. To assist users to place orders with service providers via their mobile devices, I would regard the specific claimed storage of unique customer ID codes, allocated by a retailer’s venue device, on a mobile device as having been a routine step at the relevant time.
I conclude that claims 1 and 9 do not have an inventive step over D1.
Dependent claims 2 and 10 add the feature of the customer identifying their venue location whilst ordering. In D1 the consumer may nominate this with their profile. Claims 3 and 15 add the feature of uploading a venue menu characterised by content and appearance, where the latter is unique to the venue location identified by the customer. D1 clearly enables service providers to indicate the goods and/or services to offer to consumers through an independent server. I consider that the matching of the appropriate venue’s appearance, presented to the customer, to the location identified by the customer would have been a routine step at the relevant time. Claims 4, 5, 6, 8, 11-13, 16 and 18 add the features of order delivery to the appropriate customer location, and receipt by the mobile device of acknowledgement of order completion or pending delivery. Similarly I regard that such steps would have been routine at the relevant time. Claims 7, 14 and 17 define the ordering process, or at least parts thereof, involving the use specifically of a smart phone. Again I would regard that as having been routine at the time.
I conclude the claimed invention as a whole does not have an inventive step over D1.
CONCLUSION
In this case, I have found the claimed invention, as proposed to be amended, is not for a manner of manufacture and does not have an inventive step. Moreover I have found there is nothing in the specification that could overcome the finding of lack of manner of manufacture.
In these circumstances, it is appropriate that the application be refused.
M. G. Kraefft
Delegate of the Commissioner of Patents
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