Amadeus S.A.S
[2016] APO 71
•17 October 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Amadeus S.A.S [2016] APO 71
Patent Application: 2014262288
Title:Search engine for identifying business travel proposals
Patent Applicant: Amadeus S.A.S
Delegate: Dr S. K. Aggarwal
Decision Date: 17 October 2016
Hearing Date: Submissions filed on 28 July 2016
Catchwords: PATENTS – examiner’s objection – search engine for identifying business travel proposals – whether claimed invention directed to a manner of manufacture – specification presents a mathematical solution – mere scheme – claims are not for a manner of manufacture – application refused
Representation: Patent applicant: Dr Mark Summerfield, Special Counsel, Watermark Patent and Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014262288
Title:Search engine for identifying business travel proposals
Patent Applicant: Amadeus S.A.S
Date of Decision: 17 October 2016
DECISION
None of the claims are for a manner of manufacture. There is no material within the application that would lead to a manner of manufacture if made the subject of a claim. The application is refused.
REASONS FOR DECISION
1. Patent application 2014262288 (“the application”) was filed by Amadeus S.A.S (“the applicant”) on 17 November 2014. The application claims priority from US basic application 14/082,292 and EP basic application 13290288.3 both filed on 18 November 2013. Thus the application has a priority date of 18 November 2013.
2. The applicant has been subjected to two examination reports. After the first examination report was issued on 29 June 2015 raising objections to the claimed invention, the applicant proposed amendments and provided a response to examiner’s objections. However, in the second examination report issued on 28 June 2016, an objection was maintained that none of the claims defined a manner of manufacture within the meaning of paragraph 18(1)(a) of the Patents Act 1990.
3. As a result of the second examination report against the application, the applicant requested to be heard on 29 June 2016.
4. On 7 July 2016, a delegate of the Commissioner wrote to the applicant indicating that the hearing could be conducted based on written submissions. The delegate also informed the applicant that the time to gain acceptance would be extended to 3 months from the date the present decision is made under paragraph 13.4(1)(g) of the Patents Regulations1991.
5. The applicant filed their written submissions for the hearing on 28 July 2016.
6. I will provide the details of what is contained in the examination reports and the applicant’s submissions, where relevant, later in my decision.
The specification
7. The invention generally relates to computers and computer software, and in particular to methods, systems, and computer program products for providing search results in response to search queries for travel-related products.
8. The specification indicates that:
“[0002] Travelers engaging in business-related travel for a corporation or other business entity may search for and book travel products through a computerized reservation system. To find travel products that satisfy the traveler's trip requirements, the traveler will typically provide search terms in the form of a search query to the reservation system. In response to receiving the search query, the reservation system may search one or more databases to identify travel products that match the parameters in the search query. Matching travel products may then be displayed as part of one or more travel proposals that can be reserved or purchased by the traveler.
[0003] Depending on the search terms provided by the traveler, the search engine of the reservation system may return a large number of travel proposals. Typically, the search results are provided as a list of travel proposals, with only a portion of the list being displayed at a time. If the traveler does not find a satisfactory travel proposal in the initially displayed search results, the traveler may scroll down the list or otherwise request another portion of the list be displayed. The traveler is therefore presented with the task of sorting through a large number of travel proposals to find travel proposals that satisfy their needs.
[0004] Travelers overwhelmed by the number of travel proposals presented may have a difficult time selecting a travel proposal, or may give up and select a less than optimal travel proposal near the top of the list. Search results presenting too many options to the traveler may also confuse the traveler, increasing the amount of time taken to complete the booking process. Business travelers in particular may be presented with many irrelevant options, such as travel proposals including flights that are incompatible with their schedules or that are too lengthy. The business entity paying for the trip may also prefer that employees choose travel options which comply with corporate travel policies and/or that have lower negotiated rates. At the same time, the corporation may wish to maintain employee satisfaction by taking into account the preferences of the employee.”
9. Consequently, the specification aims to provide improved system, method and computer program products for searching and booking travel proposals that improve the ability of travellers to identify travel proposals that both meet their needs and those of the business entity for which they are traveling.
10. The solution presented in the specification is to use a composite utility function, a weighted sum of value and price utility functions, to select search results for display to the traveller. As indicated in the specification:
“[0006] In an embodiment of the invention, a method of characterizing a plurality of travel proposals that satisfies a travel request is provided. The method includes receiving first data identifying a preferred travel proposal for each of a plurality of travelers. Each preferred travel proposal is selected from within the plurality of travel proposals, and the first data is analyzed to define a first utility function that quantifies a value of each travel proposal. The method further includes receiving second data relating to a price sensitivity from a payer, and analyzing the second data to define a second utility function that quantifies a price of each travel proposal. A third utility function having an output that quantifies a composite utility for each travel proposal may then be defined as a weighted sum of the first and second utility functions.”
The claims
11. The claims were proposed to be amended on 23 June 2016 in response to the first examination report. After the proposed amendment, there are 13 claims out of which only claims 1 and 9 are independent. Claims 1 and 9 read as follows:
“1. A computer-implemented method of retrieving travel-related search results, the method comprising:
receiving, at a computer system, traveler preference data identifying a preferred travel proposal for each of a plurality of first travelers, each preferred travel proposal being selected from a first plurality of travel proposals;
the computer system analyzing the traveler preference data to define a value utility function that quantifies a value of each travel proposal in relation to preferences of the plurality of first travelers;
receiving, at the computer system, payer sensitivity data relating to a price sensitivity from a payer;
the computer system analyzing the payer sensitivity data to define a price utility function that quantifies a price of each travel proposal in relation to the price sensitivity of the payer; and
the computer system defining a composite utility function as a weighted sum of the value utility function and the price utility function, the composite utility function thereby providing an output that quantifies a composite utility for each travel proposal,
whereby travel-related search results are subsequently retrieved by:
receiving, at the computer system, a travel-related search request of a second traveler;
the computer system querying one or more databases to retrieve a second plurality of travel proposals responsive to the travel-related search request;
the computer system applying the composite utility function to the second plurality of travel proposals whereby each travel proposal is assigned a quantified composite utility; and
the computer system returning one or more travel-related search results selected from the second plurality of travel proposals based upon the corresponding quatified composite utilities.
“9. A computer-implemented system for retrieving travel-related search results, the system comprising:
at least one processor; and
a memory operatively coupled with the processor, the memory including program instructions that, when executed by the processor, cause the system to:
receive traveler preference data identifying a preferred travel proposal for each of a plurality of first travelers, each preferred travel proposal being selected from a first plurality of travel proposals;
analyze the traveler preference data to define a value utility function that quantifies a value of each travel proposal in relation to preferences of the plurality of first travelers;
receive payer sensitivity data relating to a price sensitivity from a payer;
analyze the payer sensitivity data to define a price utility function that quantifies a price of each travel proposal in relation to the price sensitivity of the payer; and
define a composite utility function as a weighted sum of the value utility function and the price utility function the composite utility function thereby providing an output that quantifies a composite utility for each travel proposal,
whereby travel-related search results are subsequently retrieved by:
receiving a travel-related search request of a second traveler;
querying one or more databases to retrieve a second plurality of travel proposals responsive to the travel-related search request;
applying the composite utility function to the second plurality of travel proposals whereby each travel proposal is assigned a quantified composite utility; and
returning one or more travel-related search results selected from the second plurality of travel proposals based upon the corresponding quantified composite utilities.”
The Examiner’s Objections
12. Regarding manner of manufacture, the first examination report stated in respect of the originally filed claims 1-15 as follows:
“Claims 1 – 15 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. From reading your application as a whole the substance of the alleged invention relates to a travel planner that compares travel data to form a “score” or “rating”. The decision is merely made through comparing data stored in a data repository with data received from a user. In this instance, there is no new use of a computer or change to the data. Furthermore, the output is merely a “score” which is not a defined thing. This is an esoteric intellectual curiosity. The claims only evaluate the relevance of different travel proposals. There is no physical application of this output value. This is not patentable subject matter.
The claim(s) define(s) the use of a computer. However, the use of the computer is nothing more than the mere implementation of the scheme and the computer operates in the normal or expected way. The invention does not result in an improvement in the operation of, or effect of the use of, the computer. Consequently, as per Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, the alleged invention is matter which is not patentable as it does not have an artificial effect falling within that concept as expressed in NRDC [1959] HCA 67.”
13. The manner of manufacture objection was maintained in the second examination report in respect of the amended claims 1-13 as follows:
“I am maintaining the objection (no.1) from the previous report. With regard to the amendments, the claims still define a generic use of a computer that has database functionality. The application as a whole still defines a scheme to retrieve matching data from various data storages [see para 0002, para 0017, para 0021]. This is considered to be a generic use of a computer that is doing its normal standard operation. From reading your application as a whole, the substance of the invention still lies in retrieving travel related data based on an input form [sic] the user [see para 0021]. This process simply involves retrieving data from a data repository based on a search request or preferences [see para 0018, para 0019]. This is not a manner of manufacture. The steps defined in the claims do not alter the way the computer operates in an everyday environment. Hence, the contribution of the claimed invention is neither in an improvement to the operation of the computer nor in its application in the working of the travel data retrieval scheme.
As implied in RA, it is the substance of the invention that must be directed to patentable subject matter. A travel related scheme, which is the substance of the invention in this case, that is merely implemented in a computer, no matter how essential to the claimed invention that implementation may be, is not a manner of manufacture.
With regard to your response, it is necessary to consider the substance of the invention claimed in light of the description, including the role and effect of computer implementation, which in this instance is merely to facilitate the implementation of a travel related scheme.”
Law Relating to Manner of Manufacture
14. Section 18 of the Patent Act 1990 provides that:
(1) Subject to subsection (2), an invention is a patentable invention for the purpose 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.
15. The High Court in National Research Development Corp (NRDC) v Commissioner of Patents [1959] 102 CLR 252, has provided a statement of the law in this regard. At page 275, it was stated 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".
16. The decision of the High Court has since been applied in numerous cases including computer related inventions. For example, the inventions in International Business Machines Corporation v Commissioner of Patents [ 1991] FCA 625 (method and apparatus for producing curves on a computer graphics display) and CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 (apparatus for assembling text in Chinese language characters) were found to be patentable. Also in Welcome Real-Time SA v Catuity Inc [2001] FCA 445, a method involving smart cards storing traders' loyalty programs, and monitoring customer entitlements through a behaviour file in the cards relating to the behaviour (for example, spending history) of card holders towards the traders was found to be patentable.
17. However, in Grant v Commissioner of Patents [2006] FCAFC 120, the Court found that a method of protecting an asset including the steps of establishing a trust, making a gift of a sum of money to the trust, making a loan of that money from the trust and securing the loan was not a manner of manufacture. While observing that the fact that a method may be called a business method does not prevent it being properly the subject of letters patent, the Court indicated that for an invention to be a manner of manufacture, it must give rise to an artificially created state of affairs in the sense of a concrete, tangible, physical or observable effect.
18. Recently, in Research Affiliates (supra), the Full Federal Court considered a computer implemented method for generating a financial index and made the following observation at [106]:
“The determination whether the claimed invention is truly “an artificially created state of affairs” in satisfaction of NRDC 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.”
19. The need to consider the substance of the claimed invention was reiterated by the High Court in D’Arcy v Myriad Genetics Inc [2015] HCA 35, where it was observed at [94]:
“Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic acids, embodies a product created by human action, that is not sufficient to support its characterization as a manner of manufacture. The substance of the invention as claimed and the considerations flowing from its substance militate against that characterization.”
20. It is clear from the above decisions that for a claimed invention to define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990, it is important to go beyond the form of words used and consider the substance of the claimed invention in the context of the specification as a whole.
21. Most recently, the Full Federal Court considered a computer implemented method and system for automatic collection of evidence of skills and knowledge in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAC 177, and concluded that the claimed invention was to a scheme or a business method that was not properly the subject of letter patents. In the above case the Full Court made several important observations which are pertinent in the present matter. It was observed 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.”
22. The Full Court further went on to observe at [96]:
“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.”
Applicant’s Submissions
23. The applicant submitted that the invention takes into account a combination of a value utility function and a price utility function by way of a weighted sum to define a composite utility function. It analyses actual selections of travel proposals made by a group of travellers, such as a group of employees of a particular corporate entity, in order to infer traveller preferences and thus define the value utility function. The price utility function is determined by presenting the payer with a number of different scenarios such that payer sensitivity data is obtained which is analysed to determine relevant parameters of the price utility function. Once a suitable composite utility function has been defined for a particular group of travellers and the corresponding payer, it is then used to rank the results returned to a user in response to a search query thereby simplifying the task of the user in identifying a preferred travel proposal that best meets the user's preferences.
24. The applicant further submitted that claim 1 recites a particular sequence of steps which receive and analyse preference and price sensitivity data from travellers and payers, and that the specification contains extensive teaching in relation to the manner of putting these steps into effect by way of a computer implementation, which the person skilled in the art would clearly understand to be a new approach to ranking or selecting the most relevant search results for a traveller. The problem of ranking or selecting search results arises in the context of computer-implemented search engines, and the computer is therefore inherently integral to the invention.
25. The applicant stated that the implementation of an improved ranking system for a search engine self-evidently solves a technical problem within the computer system, and results in an improvement in the functioning of the search engine. Furthermore, the implementation of the present invention is not 'generic', but is highly specific to the particular field within the travel industry to which it is applied.
26. Responding to the second examination report, the applicant submitted that the invention operates in the environment of information technology systems used in the global travel industry and that a reading of the specification as a whole makes it clear that the invention provides new and improved functionality in this environment. The applicant also stated that in RPL (supra), the Court is clear that the fact that an invention may be characterised as “a scheme or business method does not exclude it from properly being the subject of letters patent” if it involves “the creation of an artificial state of affairs where the computer is integral to the invention” and/or if “the implementation of [the] idea formed part of the invention”.
Determination of Manner of Manufacture in the Present Case
27. As discussed before, the specification relates to computing a composite utility function for a particular group of travellers and the corresponding payer, and then using the composite utility function to rank and display the results to a user who is searching for a suitable travel proposal. The composite utility function is computed from a weighed sum of a value utility function and a price utility function. All of the utility functions are computed using mathematical equations. The value utility function is computed from a weighted sum of a plurality of traveller preferences such as flight length, flight arrival time, distances between hotels and meeting place, etc. The price utility function is computed to reflect the payer’s sensitivity to price such as price differences between different travel proposals. In its simplest form, a price utility function may have a linear relationship with price with $0.00 having a utility of zero and the highest price which the payer is willing to pay having a utility of one. It is apparent that a mathematical solution to the problems of the prior art has been presented in the specification.
28. Considering the claimed invention in the context of the specification as a whole and in light of the common general knowledge in the art, it is clear that claim 1 is directed to a computer implementation of a method for providing ranked travel proposals to a user.
29. The applicant’s submissions are that the substance of the claim 1 resides in a new and useful ranking method for use within a domain-specific search engine in the travel industry and that the claimed invention directed to the implementation of such as a method for a search engine self-evidently solves a technical problem within the computer system.
30. To the extent that newness and usefulness of the method within a domain specific search engine are concerned, I note that the lack of objections relating to novelty and usefulness of the invention in the second examination report confirm that this is also the case. The question before me is whether the implementation of the above method in a computer as claimed is for a manner of manufacture.
31. While asserting that the implementation of such as a method for a search engine self-evidently solves a technical problem within the computer system, the applicant has failed to identify any ingenuity or advances in technology that arise in the use of a computer. It is noteworthy that technical details representing some ingenuity or advance in computer technology as such, or steps foreign to the normal use of a computer, are also completely absent from the specification. One therefore concludes that the computer implementation of the method has been left to the skilled addressee.
32. It is thus apparent that the substantive effect of the claimed invention lies in a mere scheme for providing ranked travel proposals to a user employing the computer for its well- known and understood functions wherein the computer is simply being used as an intermediary or a tool for putting the scheme into effect while adding nothing to the idea of providing ranked travel proposals to a user. In my opinion, the substance of the claimed invention is not technical and does not involve the solution of a technical problem. Therefore claim 1 is not for a manner of manufacture.
33. The independent claim 9, although directed a system, essentially carries out the method of claim 1. Therefore for similar reasons, claim 9 is also not for a manner of manufacture.
34. The subject matter of dependent claims 2-8 and 10-13 is very similar of the respective independent claims 1 and 9. In my view, these claims contribute nothing as a matter of substance beyond what is in the independent claims. Therefore these claims are also not for a manner of manufacture for the same reasons as given with regard to the independent claims.
CONCLUSIONS
35. I have found that none of the claims are for a manner of manufacture. Additionally I see no patentable subject matter within the specification that could be made the subject of a claim so as to result in that claim being for a manner of manufacture. Therefore I refuse the application.
Dr S.K Aggarwal
Delegate of the Commissioner of Patents
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