AMADEUS s.a.s.
[2016] APO 55
•17 August 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
AMADEUS s.a.s. [2016] APO 55
Patent Application: 2014202150
Title:An Agreement Method and System to Consent to a Prorated Value of a Coupon of an Interline E-Ticket
Patent Applicant: AMADEUS s.a.s.
Delegate: Dr W.E. Guinea
Decision Date: 17 August 2016
Hearing Date: Written submissions filed 10 June 2016
Catchwords: PATENTS – standard patent – Examiner objections – manner of manufacture – claims are not for a manner of manufacture – application refused
Representation: Patent attorney for the Applicant: Watermark Patent and Trade Marks Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014202150
Title:An Agreement Method and System to Consent to a Prorated Value of a Coupon of an Interline E-Ticket
Patent Applicant: AMADEUS s.a.s.
Date of Decision: 17 August 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. Subject to appeal, the application is refused.
REASONS FOR DECISION
Background
Patent application 2014202150 (“the application”) was filed on 17 April 2014, being a divisional of application 2008294874 (“the parent application”). Consequently the earliest priority date of the application is 4 September 2007.
AMADEUS s.a.s. (“the Applicant”) requested examination of the application on 2 June 2014, and the first of three adverse examination reports issued on 21 May 2015. The third report issued on 11 May 2016. All of these reports objected to the claims as not being for a manner of manufacture, this being the only remaining objection taken in the third report. Notably four adverse reports issued with regard to the parent application, with all of these reports objecting to the claims as not being for a manner of manufacture.
On 13 May 2016 the Applicant wrote to the Commissioner asking to be heard in relation to the remaining objection on the application, on the basis of written submissions.
On 17 May 2016, the Commissioner wrote to the Applicant indicating that the hearing would be conducted by way of written submissions due to the filed on 10 June 2016. The Commissioner also indicated that via Regulation 13.4(1)(g), the time to gain acceptance would be extended to three months from the date that the present decision is made, presuming that the present decision did not result in refusal of the application.
The Applicant’s written submissions (“Applicant’s submissions”) were received on 10 June 2016. These submissions also included further proposed amendments to the claims (“the claims”). These do not materially alter the nature of the claims as they stood immediately prior to the Applicant’s request for a hearing.
The Invention as Described
The application deals with methods and systems that allow for the sharing of revenue from an interline E-ticket. Interlining comprises a passenger itinerary for a transportation service that involves several different carriers, where each carrier provides for transportation over a particular segment of the itinerary. Perhaps the most familiar form of interlining is associated with international air travel, where a person may fly to several different locations with each segment of travel between these locations being provided by an appropriate carrier who services a particular segment. The application provides a flight from Paris to Sydney as an example, with Air France providing the Paris to Singapore flight segment and British Airways providing the Singapore to Sydney Flight segment. In the following I will refer to the “carriers” as airlines for convenience, though I note that neither the claims nor the application is limited to a particular form of transportation.
After a traveller books an interline ticket, one of the airlines is designated as a validating carrier (“VC”), while the other airlines providing travel on a segment of the E-ticket are designated participating carrier (“PCs”). At the time of booking of the interline E-ticket, the VC collects all the revenue associated with the interline E-ticket. At the same time the flight inventory of the VC and the PCs are updated to reflect the interline E-ticket. However the revenue for each segment supplied by each PC (corresponding to a respective coupon of the E-ticket) is not distributed to the PCs until the traveller actually flies on the segment concerned.
It is apparent from the application that there are a number of problems with the existing agreements and methods used to apportion interline revenue between airlines. These may be summarised as: PCs not knowing what revenue that will accrue from an interline coupon at the time the segment is booked, the imposition of a coupon value on one airline by another and protracted and costly procedures for reaching agreement where the coupon value is in dispute.
The stated objects for the application are then given at page 8, lines 1 to 11, which are repeated below:
“Therefore, there exists a significant need to provide a method enabling to limit at least some of the above-mentioned drawbacks of the existing methods. In particular, it would be very profitable for airlines to be provided with a method that significantly speeds up the procedure for reaching an agreement regarding coupon prorated value, without having recourse to restrictive solutions leading to independence abandonment.
It is another object of the invention to reduce the number of dispute cases without increasing administrative charges.
A further object of the invention is to know earlier the revenue expected from a given coupon before the service corresponding to this coupon is actually provided.
It is a further object of the invention to reduce the duration of dispute.”
10. The remainder of the specification then deals with how these objects are achieved. In general the application provides for methods and systems that allow the VC and PCs to exchange information on the E-ticket and associated coupons and to allow for agreement on the value of the coupons, or for a dispute process to be initiated, before travel on the coupons occurs. The methods and systems are best understood by reference to figures 1 to 7, which are reproduced below.
11. Figure 1 represents an example of an agreement system according to the application. The system comprises an E-ticket server system VC 1V and an E-ticket server system PC 1P (“servers”) which can communicate with each other via connection 14. The E-ticket server VC is also connected to a ticketing server 2. Each of the servers comprises respective coupon databases 3V, 3P (“coupon databases”) as well as being connected to respective departure control systems 4V, 4P (“DCSs”). Both servers also comprise a series of respective modules including a consolidator module 11V, 11P, an acceptance module 8V, 8P, a proration module 6V, 6P and revenue accounting 13V, 13P (“modules”). Each of the servers and each of the modules can communicate via respective online connections means 5V, 5P, 7V, 7P, 9V, 9P, 12V, 12P (“connection means”). A variant of this system is demonstrated in figure 7, which will be discussed later.
12. Figures 2 to 6 illustrate the manner in which the agreement method of the application is implemented using the agreement system of figure 1. Although these figures represent the disclosed method in some detail, I will provide a summary of the salient features of the method in the following.
13. Figure 2 provides an initial part of the method that occurs on purchase of an interline E-ticket, from the point of view of the VC. The VC first validates the E-ticket (step 21) and stores an image of it in the coupon database VC (step 22). The proration module VC then calculates a prorated value for each coupon of the E-ticket, which is designated PCVC (step 25). In the event that the E-ticket server system VC decides to notify the PC(s) of the issuance of the E-ticket (or update thereof), an Unsolicited Airport Control (“UAC”) message is sent to each of the PC(s) (step 28), the UAC message being an industry standard message. The UAC message includes the E-ticket image and the PVVC for each of the coupon(s) for which the PC is expected to provide a travel service.
14. In the alternative the PC can obtain the E-ticket and coupons by sending a Request Airport Control (“RAC”) message to the VC, the VC then sending this information in a RAC response message. The RAC message is also an industry standard message.
15. Figure 3 illustrates steps that occur from the perspective of the PC when the E-ticket server system PC receives the UAC message from figure 2. Similar to figure 2, the proration module PC calculates a coupon value PVPC for the relevant coupon(s) of the E-ticket (step 31). If a PVVC value is available the acceptance module PC determines whether the difference between the PVVC and the PVPC is acceptable (step 34). This leads to either a KO first flag indicator if the difference is unacceptable or an OK first flag indicator if the difference is acceptable (“first flag indicators”). In the event that no PVVC is available a KO first flag indicator is automatically set.
16. Figures 2 and 3 illustrate steps that occur before any travel on the coupon(s) concerned has occurred. Figure 4 illustrates steps in the method that occur when a passenger wants to travel on the PC. Here the DCS PC informs the E-ticket server system PC that a change in the coupon status is requested, in these circumstances usually designated as “flown”. The E-ticket server system PC then determines if a prorated value is available for the coupon in question (step 43); this may occur for example if the PC has not been previously provided with information to calculate a prorate value. If not, the E-ticket server system PC sends a Settlement Authorization Code (“SAC”) request message to the E-ticket server system VC – this allows the PC to request a code from the VC that approves the use of the coupon and authorization for future settlement (step 44), the SAC request message being an industry standard message. If yes, the E-ticket server system PC also sends a SAC request message to the E-ticket server system VC, this message also including the first flag indicator (step 45). For a KO flag indicator the message also includes the value PVPC.
17. Figure 5 illustrates the steps that occur from the perspective of the VC when the E-ticket server system VC receives the SAC request message discussed with regard to figure 4. The E-ticket server system determines whether use of the coupon is allowed (step 51). If no, the E-ticket sever system VC notifies the PC of this (step 52). If yes, the E-ticket sever system VC creates a SAC to be conveyed in a SAC response message (step 53) and updates the coupon status (step 54). In the event that the received SAC request message comprises a KO second flag indicator or a PVPC value different from the coupon value calculated by the VC, the acceptance module VC determines whether the difference between the PVPC and the PVVC is acceptable (step 55). This leads to either a KO second flag indicator if the difference is unacceptable or an OK second flag indicator if the difference is acceptable (“second flag indicators”). The second flag indicator is added to the SAC response message (steps 56 or 57), along with the PVVC in the event of a KO second flag indicator. The SAC response message is then sent to the E-ticket server PC (step 59), the SAC response message being an industry standard message.
18. Figure 6 illustrates the steps that occur from the perspective of the PC when the E-ticket sever PC receives the SAC response message discussed in relation to figure 5. If a SAC is received the coupon status is updated (step 63). In the event the received SAC comprises a KO second flag indicator, the acceptance module PC determines whether the difference between the PVPC and the PVVC is acceptable (step 64). This leads to either a KO third flag indicator if the difference is unacceptable or an OK third flag indicator if the difference is acceptable (“third flag indicators”). If acceptable, the SAC, the OK third flag indicator and the PVVC are sent to the revenue accounting PC (step 65). If not acceptable the SAC, the KO third flag indicator and the PVPC to the revenue accounting PC (step 66). After the coupon transport has taken place, the revenue account PC will invoice the VC.
19. Although not provided in the details above, it should be apparent that the above method involves the communication of and/or storage of the E-ticket, prorated coupon values PVVC, PVPC, the flag indicators and other information between different parts of the system illustrated in figure 1. For example the E-ticket image, prorate coupon value(s) and flag indicators are stored at appropriate times in the coupon databases 3V, 3P for retrieval in later steps of the method.
20. Although the consolidator modules 11V, 11P in the method are shown to play a central role in communication between the other modules and the E-ticket sever systems 1V, 1P (see figure 1), this need not be the case. Figure 7 demonstrates a variant of the system wherein there is no consolidator module, and all communication between the modules occurs via the E-ticket serve systems or through optional connections 15V, 16V, 17V.
21. The advantages of the method are outlined at page 30, line 16 to page 31, line 4, which are repeated below:
“In view of the above, it can be seen that the present invention presents a significant advancement in the interline revenue administration of carriers.
In particular, by moving the cycle of agreement on a coupon prorated value to a sales-based concept instead of a travel-based concept, the invention enables most of the time to reach an agreement before passenger travels. Therefore, the duration of settlement is significantly decreased for most E-tickets.
Proration is performed online and triggered by E-ticket processes, which makes available planned revenue value earlier for revenue accounting, enhancing therefore the efficiency of revenue accounting.
Whenever an agreement is reached during the invention process, it removes the need of further evaluating and checking incoming invoices. The invention therefore reduces time and removes time and money-consuming disputes.
Moreover, since it is fully automated, the invention does not increase administrative charges.
As the prorated values and flag indicators are conveyed along with the standard messages the number of communications between carriers is not increased and the process according to the invention is not significantly more complicated than the already existing processes.
Besides, the invention maintains carrier independence and freedom regarding proration algorithm, fare audit etc.”
The Claims
22. There are 24 claims, with claims 1 and 21 being the only independent claims. These respectively embody a method to agree to consent to a prorated value of coupon of an E-ticket and a system comprising the same. Claims 1 and 21 are repeated below. The dependent claims will be introduced later if this proves necessary.
“1. An agreement method to consent to a prorated value of a coupon of an E-ticket, wherein the E-ticket corresponds to a transport service involving a validating carrier and at least one participating carrier expected to provide a transportation service on said coupon, the method comprising, from issuance and before a usage of said coupon or from modification of the E-ticket and before the usage of said coupon:
generating or updating by an E-ticket server system related to the validating carrier the E-ticket and sending by the E-ticket server system related to the validating carrier to an E-ticket server system related to the participating carrier information regarding said E-ticket and said coupon,
calculating by a server system of a first carrier, taken among the validating carrier and the at least one participating carrier, through a proration module related to said first carrier, a prorated value PV1 corresponding to said coupon based on predefined prorating rules and on said information regarding said E-ticket and said coupon, where the prorated value for a given coupon is a share of the E-ticket revenue that is attributed to the participating carrier providing the transportation service on said coupon, a remainder of the E-ticket revenue being distributed to the validating carrier and eventually to participating carriers different from the at least one participating carrier,
sending by the server system of said first carrier to a second carrier server system the prorated value PV1 the second carrier being taken among the validating carrier and the at least one participating carrier, and being different from the first carrier, and
calculating by the server system of said second carrier, through a proration module related to said second carrier, a prorated value PV2 corresponding to said coupon based on predefined prorating rules and on said information regarding said E-ticket and said coupon,
wherein before usage of said coupon, launching an agreement process by any one of the server system of said first carrier and the server system of said second carrier regarding the prorated value corresponding to said coupon,
wherein if no agreement is reached through the agreement process then launching by any one of the server system of said first carrier and the server system of said second carrier a dispute process between the validating carrier and the participating carrier, and
wherein if an agreement is reached through the agreement process then allowing distribution of the prorated value to the participating carrier and distributing the remainder of the E-ticket revenue to the validating carrier and eventually to other participating carriers different from the at least one participating carrier.”
“21. An agreement system to consent to a prorated value of a coupon of an E-ticket, wherein the E-ticket corresponds to a transport service involving a validating carrier and at least one participating carrier expected to provide the transportation service on said coupon, the system comprising:
an E-ticket server system and a proration module related to the validating carrier,
an E-ticket server system and a proration module related to the at least one participating carrier,
wherein the E-ticket server system related to the validating carrier and the E-ticket server system related to the at least one participating carrier being configured to contain, send and receive information regarding said E-ticket and said coupon,
wherein the proration module related to the validating carrier and the proration module related to the at least one participating carrier being configured to calculate a prorated value PV corresponding to said coupon based on predefined prorating rules and said information, where the prorated value for a given coupon being the share of the E-ticket revenue that is attributed to the participating carrier providing the transportation service on said coupon, the remainder of the E-ticket revenue being distributed to the validating carrier and eventually to other participating carriers that are different from the at least one participating carrier,
wherein the E-ticket server system related to the validating carrier is configured to send said information, from issuance or modification of the E-ticket and before usage of said coupon, to the E-ticket server system related to the at least one participating carrier,
wherein the server systems are configured to calculate and to send from a first carrier, from issuance and before usage of said coupon or from modification of the E-ticket and before usage of said coupon, a prorated value PV1 to a second carrier, wherein said first carrier and said second carrier being taken among the validating carrier and the at least one participating carrier and wherein the second carrier is different from the first carrier,
wherein the server system of said second carrier is configured to, upon reception of said information and of the prorated value PV1, calculate in real time through its proration module its own prorated value PV2 and compare the calculated prorated value PV2 to the prorated value PV1 received from the first carrier,
wherein the server systems are further configured to, before usage of said coupon, launch an agreement process regarding the prorated value corresponding to the coupon,
wherein the server systems are further configured to, if no agreement is reached through the agreement process, launch a dispute process between the validating carrier and the at least one participating carrier, and
wherein the server systems are further configured to, if an agreement is reached through the agreement process, allow distributing the prorated value to the participating carrier and distributing the remainder of the E-ticket revenue to the validating carrier and eventually to other participating carriers that are different from the at least one participating carrier.”
23. The independent claims may be summarised in the following way:
· before a coupon of an interline E-ticket is used for transportation, the following steps occur:
(a)an interline E-ticket comprising coupons is created or modified by the VC;
(b)information about the E-ticket is sent to a PC that is expected to provide a transportation service based on a coupon of the E-ticket;
(c)a first carrier server system (belonging to either the VC or the PC) calculates a prorated value (“PV1”) of the coupon;
(d)the first carrier server system sends the prorated value PV1 to a second carrier server system (belonging either to the VC or a PC different from the first carrier);
(e)the second carrier server system calculates a second prorated value (“PV2”) of the coupon;
(f)before the coupon is used for transportation an agreement process is initiated by one of the first and the second carrier server systems, and if:
i.no agreement is reached, one of the first and second carrier server systems initiates a dispute process between the VC and the PC; or
ii.if agreement is reached distributing the agreed prorated value to the PC, with the remaining value of the E-ticket being distributed to the VC and in time to other PCs who provide a transportation service based on other coupons of the E-ticket.
24. The net result of the claims is that prior to any travel on the coupon in question, agreement on the coupon value can be reached between the VC and the PC. In the event that there is no agreement, a dispute process can be initiated prior to travel on the coupon.
Nature of the Remaining Objection
25. As noted the only remaining objection is that the claims were not for a manner of manufacture. Though put in slightly different ways across the three examination reports, in essence the Examiner argued that the fundamental nature of the claimed invention is a business scheme providing for the agreement of a prorated value of a coupon of an E-ticket between two parties. The Examiner reasoned, with recourse to the authorities, that mere computer implementation of an abstract idea, as they alleged in the present circumstances, did not confer patentability. To that extent it is clear that the Examiner did not see any of the alleged inventive merit of the application as residing in the computer systems as such. This is attested by the following paragraph from the third examination report:
“It is clear in the claims as proposed to be amended that the steps are to be performed by the computer, however it is not sufficient to meet the requirement of manner of manufacture that the machine be an essential feature of the invention as claimed (see Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (RA):[117]). RA makes clear that it is the substance of an invention that must be directed to patentable subject matter and that an abstract scheme 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 (RA: [118]). It is clear from the description that the invention for which protection is sought is concerned with a standard computer implementing an abstract idea.” (emphasis in original)
The Applicant’s Submissions
26. The Applicant argues that the invention is more than a mere business method or scheme, in that the computer systems involved are more than conventional hardware and software. The Applicant argues that the substance of the invention lies in the computer system per se, and not in the mere idea of reaching an agreement over the value of an E-ticket coupon in a certain way. This is illustrated at [14] and [15] of the Applicant’s submissions, which are reproduced below:
“The applicant disagrees with the characterisation of the invention in the terms set out in the three examination reports. The applicant considers that the invention resides not merely in a business method or scheme, but in a particular implementation, within complex global distributed computer systems, of a specific process enabling an agreement to be reached between carrier computer systems in a fully automated and timely manner. The fact that this agreement relates to pricing, i.e. financial terms of a business arrangement, is incidental to the technical solution provided by the invention.
Furthermore, the computer systems involved in the implementation of the invention are 'standard' only in the sense that they comprise conventional hardware and operating system platforms commonly deployed in server systems. They are, however, specifically programmed with complex and sophisticated software in order to implement an embodiment of the invention in the context of advanced global travel booking and management.”
Relevant Legal Principles
Manner of Manufacture
27. The statutory basis for manner of manufacture is found at s18(1)(a) of the Act which states:
“an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.”
28. Fundamental principles with respect to manner of manufacture were outlined by the High Court in National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (“NRDC”) at [14];102 CLR 252 at 275:
“It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: "Is this a manner (or kind) of manufacture?" It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because "manufacture" as a word of everyday speech generally conveys that idea. 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?"”
29. The NRDC decision related to a process for eradicating weeds from crop areas. A test applicable to the facts of this case was given in NRDC at [22], 275:
“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 (see Re Virginia-Carolina Chemical Corporation's Application (1958) RPC 35, at p 36) - that its value to the country is in the field of economic endeavour.”
30. In Grant v Commissioner of Patents [2006] FCAFC 120 (“Grant”) the court considered the patentability of what may be generally described as a business system or method directed towards protecting assets via the creation of a trust, this not involving any computer implementation. Their Honours in Grant (at [26]) did not consider the question as to whether a business system is or is not patentable. Rather they found Mr Grant’s claimed systems and methods were not for a manner of manufacture in the sense described in NRDC at [47]:
“It has long been accepted that "intellectual information", a mathematical algorithm, mere working directions and a scheme without effect are not patentable. This claim is "intellectual information", mere working directions and a scheme. It is necessary that there be some "useful product", some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent. That is missing in this case.”
31. More recently the authorities have directly considered the patentability, or otherwise, of computer implemented business methods, most notably 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”). The discussion in RPL referred to the terminology from NRDC, with the observation at [117] that such terminology was apposite but “…not conclusive of patentability”. This observation was given with respect to consideration of a similar conclusion by the majority in D’Arcy v Myriad Genetics Inc. [2015] HCA 35 (“D’Arcy”) 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. Consistently with that approach, and without resort to the "generally inconvenient" proviso in s 6 of the Statute of Monopolies, there may be cases in which the court will decide that the implications of patentability of a new class of inventionare such that the invention as claimed should not be treated as patentable by judicial decision”.
32. It in this light that their Honours, at [96] to [98] of RPL, outlined considerations useful in determining whether a computer implemented business method is patentable:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions.
Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.”
33. Thus in relation to so-called business related inventions, it is necessary to look at the invention as a matter of substance, rather than as a matter of form. Upon doing so one will then be able to ascertain if this substance provides for a manner of manufacture using the established authorities. Relevantly RPL and Research Affiliates provided principles that assist in determining where the substance of these types of inventions resides and whether that material is patentable. In particular at [99] to [107] of RPL, their Honours reiterated a series of these principles from Research Affiliates (in particular at [94]).
34. Conveniently these principles have been summarised by the Delegate in Aristocrat Technologies Australia Pty. Ltd. [2016] APO 49 at [35], which I repeat below:
“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.”
35. The relevant legal principles as cited by the Applicant do not appear to be materially different to those I have identified above, except for a particular issue that I will discuss below. At [46] to [60] of their submissions the Applicant discusses the law in terms of both RPL and Research Affiliates. In particular at [48], [49] and [51] the Applicant states:
“The RPL Central Court drew a distinction between 'an artificial state of affairs' as understood through cases such as NRDC and D'Arcy, and the 'mere presence of an artificial effect', that might arise because, for example, a scheme or business method happens to be implemented in a well-known machine (at [97]).
At [100] the Full Court reiterated its previous position that 'a technological innovation is patentable; a business innovation is not, although a business method may be the subject of letters patent' (citing Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 ('Research Affiliates') at [93]; Grant v Commissioner of Patents [2006] FCAFC 120 ('Grant') at [24]). And at [112] the Full Court directed that '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.' Here, the applicant submits, the use of the phrase 'is said to lie' (rather than simply 'lies') is of particular importance…
…Accordingly, the determination of where the invention 'is said to lie' is necessarily based upon a proper construction of the claims, in the context of the patent specification as a whole when viewed from the perspective of the skilled addressee, i.e. the person skilled in the art ('PSA'), in light of the relevant common general knowledge ('CGK') possessed by that person.” (emphasis in original)
36. I note that the Applicant has placed emphasis on the phrase “is said to lie” from [112] of RPL. It would seem that the Applicant is placing emphasis on where the application states that the ingenuity is said to lie in determining the substance of the invention. This is apparent, for example, at [72] and [99] of the Applicant’s submissions. It is true that their Honours in RPL considered where the ingenuity was said to lie, for example at [110] and [112]. However both Research Affiliates and RPL made it clear that the fundamental question to be answered, from the point of view of the skilled addressee, is where does the substance of the invention reside? In view of this, statements in the application or assertions by the Applicant as to where the ingenuity is said to lie merely comprise one consideration amongst others outlined by their Honours in determining where the substance resides. Consequently I reject any assertion that such statements are, in a general sense, determinative with respect to manner of manufacture as this would simply obviate the principal considerations laid down in Research Affiliates and RPL.
The Skilled Addressee
37. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the CGK in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”.
38. Given the nature of the opposed application, I consider that the skilled addressee is a person or a team of persons comprising computer programmers, software developers, computer engineers and hardware architects with experience and knowledge in developing and implementing software systems for the global travel industry. I note that this is similar to the skilled addressee as identified at [30] of the Applicant’s submissions, however I have also included persons with experience in implementing hardware as well since the implementation of the invention will clearly require such knowledge.
Do the Claims Comprise a Manner of Manufacture?
39. I will initially consider this question with regard to the independent claims (claims 1 and 21), and will only consider the dependent claims if this proves necessary.
Claims 1 and 21
40. For ease of discussion I will only refer to claim 1 in the following. Given that claim 21 in effect defines a system that carries out the method of claim 1, it follows that whatever conclusion I reach with regard to claim 1 will apply mutatis mutandis to claim 21. I note that the Applicant’s submissions follow a similar approach.
41. As will be noted below, some of the features discussed in the following do not form part of either claim 1 or 21. However these features relate to the primary arguments put forward by the Applicant so I consider it convenient to consider these here, rather than with respect to the dependent claims that introduce these features.
42. Clearly if, as a matter of substance and not form, there is “some physical phenomenon or effect” resulting from the working of the method of claim 1, as outlined in Grant, then claim 1 will be for a manner of manufacture. It would appear that claim 1, as such, is directed towards a business method wherein an agreement or dispute process on the value of interlining coupons occurs prior to usage of the coupon. This point appeared to be conceded by the Applicant at page 3 of their response to the third examination report:
“It may be true that there is a business 'idea' underlying the invention, which is to conduct the prorating negotiation via automated processes between the time at which a coupon is issued (or an E-ticket is modified) and the time at which the coupon is used (i.e. when the passenger travels). It may be that this idea constitutes a business method, however, as the Full Court said in RPL Central Pty Ltd v Commissioner of Patents [2015] FCAFC 177, at [96], 'the fact that it is a scheme or business method does not exclude it from properly being the subjects of letters patent'. However, as the Court also noted, '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.'”
43. At [61] to [73] of their submissions the Applicant argues that the technical ingenuity resides in the methods and systems of the invention as such, in the very fact of implementing an automated agreement method in a certain technical environment as embodied in the particular forms of the server systems and the proration modules. This is perhaps best reflected at [65] and [68] to [73] of the Applicant’s submissions:
“It is clear from the discussions in Section V above that the specification describes the implementation of an automated agreement method. Furthermore, the specification makes clear that the invention resides in this implementation, and not merely in the underlying business issue that it addresses. This implementation is tied to the specific environment of the distributed computer systems used within the global travel industry. In particular, the processes described and claimed in the specification may be carried out for each boarding passenger, e.g. up to 24 times per second on a worldwide basis, when averaged over the entire 2015 calendar year in the case of the Amadeus GOS platform. This context constrains the implementation, such that technical ingenuity is required in order to implement the automated agreement method. The technical solution is reflected in the system architecture, as illustrated in Figure 1, and the specific process and messaging flows, as illustrated in Figures 2 to 6…
…In a number of passages throughout the specification the applicant clearly states that ingenuity resides in various aspects of the implementation. These include:
• the provision of communication links among the various modules, enabling real-time operation of the agreement method (e.g. page 18 lines 12 to 14, page 18 lines 21 to 22, and page 18 line 31 to page 19 line 4);
• the alignment of messaging with existing industry standard message flows, maximising compatibility and ensuring that additional communications and complexity are not incurred (e.g. page 24 lines 23 to 27 and page 26 lines 25 to 28); and• the generation and transmission of flag indicators, which enable agreement outcomes and/or dispute risk to be identified at the earliest possible stage (e.g. page 23 lines 4 to 6, page 28 lines 17 to 21, and page 28 lines 26 to 30).
Elements of the specific system architecture, and other implementation details, are variously recited within the claims, each of which comprise a distinct combination of integers, and should be properly construed and analysed in its own right.
Turning to claim 1, on a proper construction the claim may be summarised as comprising at least the following features:
• an E-Ticket server system related to the validating carrier sending a new or updated E-Ticket to an E-Ticket server system related to a participating carrier;
• a server system of one of the carriers calculating using a proration module a prorated value PV1 using predefined prorating rules;
• the server system of the first carrier sending to a server system of the second carrier the prorated value; and
• the server system of the second carrier calculating using its own proration module a prorated value PV2 using its own predefined prorating rules,
• wherein one of the carrier server systems subsequently launches an agreement process (e.g. operation of the acceptance module under direction of the consolidator module and E-Ticket server),
• wherein a dispute process may ultimately be launched if no agreement is reached, and• wherein the prorated value may be distributed to the participating carrier if an agreement is reached through the agreement process.
Each of the bolded elements in the above summary corresponds with a specific hardware and/or software module, or associated data structures, of the carriers' global information systems. These are specific, not generic, modules. Furthermore, as has been discussed, elements such as the 'proration modules' and the relevantly programmed/modified server systems, are plainly presented as new and innovative contributions to the art. (It is noted that, to the extent that it is relevant, withdrawal of objections relating to lack of novelty and/or inventive step confirm that this is also objectively the case, upon consideration of the prior art.) It is further submitted that, in the context of the present invention, none of the claimed functionality is implemented via 'standard operation of generic computers with generic software' (RPL Central at [110]). As has been explained, the systems in which the invention is implemented are highly specialised, and comprise thousands of servers with tens of petabytes of storage, capable of processing tens of thousands of transactions per second relating to hundreds of millions of bookings per year.
The applicant therefore submits that claim 1 is, in fact, directed to a technological innovation, and not to a business innovation. It is not said that the ingenuity of the inventors resides in the general concept of negotiating prorated values between interlining carriers. Nor is it asserted that there is innovation even in the idea of performing this negotiation between the generating or updating of an E-Ticket, and the time at which a coupon of the E-Ticket is used. This is, as has already been stated, self-evidently desirable, and is not in itself the kind of idea for which a patent could be granted. What has been contributed to the art is a practical method of implementing such an agreement process within the existing technical context of the carriers' global information and server systems. This is the invention to which the claim is directed, by way of a series of concrete technical steps.
The applicant's primary submission is therefore that claim 1, along with claim 21 (directed to an agreement system having corresponding integers), and all of the dependent claims, are directed to a technological innovation, and not a business innovation, and therefore define a manner of manufacture without the need to proceed to the step of considering whether the ingenuity in the claimed invention is said to lie in the technical implementation.” (emphasis in original)
44. I find these statements by the Applicant to be somewhat contradictory. At [73] the Applicant appears to be submitting that the method of claim 1 is, as such, a technological innovation and therefore for a manner of manufacture, but in coming to this conclusion continually refers to the technical aspects of claim 1 as providing for a manner of manufacture, rather than to the method per se. Indeed the Applicant’s statements at [72] that the innovation is not in the idea of reaching agreement but in the “…practical method of implementing such an agreement…” appears to be an admission that the very method or idea of reaching agreement, outside of any technical aspects, is not for a manner of manufacture. In any event I consider that claim 1, as such, is directed towards a business method wherein an agreement or dispute process on the value of interlining coupons occurs prior to usage of the coupon. This is clearly a business or financial method, and does not, of itself, result in a manner of manufacture using the principles outlined in Grant.
45. Of course it is now a separate question as to whether there is material that as a matter of substance results in claim 1 being for a manner of manufacture, irrespective of the fact that it relates to a business method. The Applicant goes on to assert at [74] that “…even if the claims are considered to be directed to a business method, the applicant submits that they meet the requirement of reciting an invention in which ingenuity resides in the technical implementation, i.e. in the 'computerisation' of the method.” I consider that it is appropriate to consider the Applicant’s submissions at [61] to [73] in this light, in addition to the further arguments presented at [75].
46. In summary the Applicant asserts that the following items provide material, which as a matter of substance, results in claim 1 being for a manner of manufacture:
i.in the implementation of the method itself due to the environment of implementation ([65]);
ii.the specific architecture involved ([65] and [69]);
iii.the use of communication links between various modules, enabling real-time operation of the agreement method ([68] and [75]);
iv.the use of messaging in conjunction with existing industry standard messages, thus maximising compatibility and ensuring that additional communications and complexity are not incurred ([68] and [75]);
v.the generation and transmission of flag indicators, enabling agreement outcomes and/or dispute risk to be identified at the earliest possible stage ([68]) and;
vi.the specific hardware and/or software used to implement the invention ([15], [45], [70], [71] and [75])
47. I will now consider whether each of the items above contributes subject matter to claim 1 that in substance provides for a manner of manufacture as outlined by the authorities in Research Affiliates and RPL.
48. In relation to item i, I do not consider that this provides material that as a matter of substance results in claim 1 being for a manner of manufacture. The Applicant argues at [65] of their submissions that the context of the invention “…constrains the implementation, such that technical ingenuity is required in order to implement the automated agreement method.” The difficulty for the Applicant, and the reason why I do not agree, is that there is nothing in the application when read through the eyes of the skilled addressee that suggests this is the case.
49. The application outlines the present methods and systems used to determine interline coupon values and the shortcomings of these at pages 1 to 8. However none of these shortcomings are discussed in terms of the technical difficulties that are encountered with the present methods. The focus is on the time, cost and restrictive nature of the present methods. In addition there are no precise details of what technical difficulties were overcome in implementing the invention, or what ingenuity was exercised in relation to the computer systems as such. No improvement in computer technology per se or steps that are foreign to the normal use of computer systems already existing in the art are apparent to the skilled addressee, noting that that large networked computer systems are standard in the art; see for example page 2, line 31 to page 3, line 7. In this regard I see no more than the connection of the VC and PC computer systems as they are generally in the art. One therefore concludes that the substance of the invention does not lie in the computerisation of the method as such, but rather in the agreement method and dispute process. This, as discussed previously does not provide for a manner of manufacture. It follows that item i does not contribute material that as a matter of substance would lead to claim 1 being for a manner of manufacture.
50. With regard to item ii, I do not consider that this provides material that as a matter of substance results in claim 1 being for a manner of manufacture. It is apparent that the application, when read as whole by the skilled addressee, does not indicate that the precise architecture as such is important to the implementation of claim 1. For example figure 1 illustrates a certain system architecture, while figure 7 illustrates a different system architecture. In particular the system architecture of figure 7 does not comprise a consolidator module, and has communication between the modules being routed via the servers in question and/or via optional communication links between the servers. Further the system architecture discussed in relation to figures 1 and 7 merely refers to the “modules” as such. However no more information is given as to the arrangement of the “modules”, which in view of the application may all reside as software and/or hardware within the server systems, some of which may be software and/or hardware within the server systems and others are external modules, or perhaps all of which are implemented as hardware and/or software external to the server systems. These possibilities would be apparent to the skilled addressee as at the priority date, and the application provides for no particular preference or advantage that one of these potential architectures may have over any other architecture. It is apparent that the architecture is only limited to any extent by the nature of the functions necessary to perform the agreement method and dispute process; for example there need be something within the architecture that calculates prorated values, i.e. a proration module. No improvement in computer technology per se, ingenuity in the use of the computer systems or steps that are foreign to the normal use of computer systems already existing in the art is suggested in the application or is apparent to the skilled addressee in relation to the architecture.
51. I note that the language of claim 1 refers to “calculating by a server system of a first carrier…through a proration module related to said first carrier…” Claim 1 also recites the same feature in relation to the second carrier. The language of the claim indicates that the calculation is actually performed by the server system through a proration module. This suggests that the proration module in this case actually forms part of each server system. This leads to a particular architecture selected from the possibilities discussed above. However the skilled addressee would understand that it is necessary to choose an architecture in implementing the invention, and there is nothing apparently special or advantageous about this choice in claim 1, nor is this represented as such by the application or the Applicant. Thus the more precise architecture outlined in claim 1 does not detract from the overall picture presented to the skilled addressee, that being that the precise architecture is only limited to any extent by the functionality that it need provide to the agreement method and dispute process. There is no contribution that can be regarded as technical provided by the architecture.
52. In view of the above I conclude that the precise architecture is only limited to the extent that it provides functionality for the agreement method and dispute process. The ingenuity of the invention does not lie in the architecture. Thus the substance of item ii lies in the steps of the agreement method and dispute process. As discussed previously this does not provide for a manner of manufacture.
53. With regard to item iii, I do not consider that this provides material that as a matter of substance results in claim 1 being for a manner of manufacture. Firstly the requirement to have at least some of the data being sent in real time does not exist in claim 1 (or 21); it is introduced, in various aspects, by claims 2, 4, 5, 9, 18, 22 and 24. Notwithstanding this, it is not suggested anywhere in the application, nor is it otherwise apparent to the skilled addressee, that the use of such “real-time” communication means between computer servers is “foreign” to the use of computer systems as known in the art as at the priority date, or represents an advance in computer technology. Indeed this would be an incredible suggestion given the state of computerised systems in general as at the priority date, and particularly given the discussion of such systems as known in the art at pages 1 to 8 of the application, with particular emphasis on page 2, line 31 to page 3, line 7. I conclude that the substance of item iii resides in the very idea of sending and receiving information in real-time so as to facilitate the agreement method and dispute process. It is beyond question that such ideas are not, as such, for a manner of manufacture.
54. It is true, as noted by the Applicant in their submissions at [68], that the application refers to the use of the communication links between the servers and/or the modules as enabling real-time updating of data associated to an E-ticket and its coupons. However these statements, upon consideration in context by the skilled addressee, merely reflect utilisation of the generic properties and abilities of communication links in standard computer systems as known in the art as at the priority date. On the face of the specification I see no ingenuity in these communication links. Thus contrary to the Applicant’s assertions there is no ingenuity in merely utilising generic communication links for the benefit of their known and generic properties. Consequently the statements provided in the application do not detract from the conclusion I have reached above with regard to the real-time communication links. I therefore conclude that item iii does not contribute, or potentially contribute if it was made the subject of claim 1, material that as a matter of substance would lead to claim 1 being for a manner of manufacture.
55. With regard to item iv, I do not consider that this provides material that as a matter of substance results in claim 1 being for a manner of manufacture. Firstly this feature is not present in claim 1 (or 21); it is introduced, in various aspects, by claims 3, 10, 15, 18 and 24. Notwithstanding this item iv would initially appear to maximise compatibility and avoid having to provide additional communications and complexity in implementing the agreement method, as asserted in the applicant at [68] of their submissions. Notably the Applicant points out at [77] of their submissions that the application expressly states that the ability to send additional information along with an industry standard message is an innovative feature of the invention.
56. However, while item iv conveys particular advantages, those advantages arise from the very idea of appending additional information to an industry standard message. No improvement in computer technology per se, ingenuity in the use of the computer systems as such or steps that are foreign to the normal use of computer systems already existing in the art is suggested in the application or apparent to the skilled addressee in relation to simply adding additional information to an industry standard message. It is apparent that large complex computer systems comprising intercommunications are generic in the art; again see pages 1 to 8 of the application and also [19] to [22] of the Applicant’s submissions, and that such systems are already available for sending and receiving industry standard messages in a manner that ensures compatibility. Consequently item iv is merely making use of the known properties of these systems, namely the ability generate, send and receive large amounts of data. This all suggests that the substance of item iv resides in the idea of appending additional information to an industry standard message, rather than in any aspect of computer technology used to implement this idea.
57. This conclusion is reinforced by the fact that there is no precise discussion of the technical features or ingenuity used to implement item iv – the idea is merely presented with all details as to how to achieve this being left up to the skilled addressee. I see no technical problem addressed, or particular material advantage provided, by this feature. Consequently I conclude that the substance of item iv resides in the very idea of appending additional data to an existing industry standard message. I therefore conclude that item iv does not contribute, or potentially contribute if it were to be made the subject of claim 1, material that as a matter of substance would lead to claim 1 being for a manner of manufacture.
58. With regard to item v, I do not consider that this provides material that as a matter of substance results in claim 1 being for a manner of manufacture. Firstly this feature is not present in claim 1 (or 21); it is introduced, in various aspects, by claims 8 to 20, 23 and 24. Notwithstanding this, item v represents the idea of generating and sending a flag indicator so as to allow for the advantage of being able to perceive agreement or the potential for a dispute process at the earliest possible stage. No improvement in computer technology per se, ingenuity in the use of the computer systems or steps that are foreign to the normal use of computer systems already existing in the art is suggested in the application or apparent to the skilled addressee in relation to the generation and transmission of the flag indicators. There is no precise discussion of the technical details used or difficulties overcome in the implementation of the flags. Consequently I consider that item v represents utilisation of the generic abilities of computer systems to send and receive flags or notifications in order to achieve the abstract idea of advance notification of agreement or the potential for dispute in determining the value of interlining coupons. Hence the substance of this item resides in the very idea of generating and sending the flag indicators for the reasons previously indicated. I therefore conclude that item v does not contribute, or potentially contribute if it were to be made the subject of claim 1, material that as a matter of substance would lead to claim 1 being for a manner of manufacture.
59. With regard to item vi, I do not consider that this provides material that as a matter of substance results in claim 1 being for a manner of manufacture. The Applicant has argued that there is technical ingenuity in the specific implementation of the hardware and/or software used to implement the invention, for example at [71] of their submissions. However no improvement in computer technology per se, ingenuity in the use of the computer systems or steps that are foreign to the normal use of computer systems already existing in the art is suggested in the application or apparent to the skilled addressee in relation to the hardware and/or software used to implement the invention. No-where is there a discussion of the technical difficulties that exist with known computer systems. Similarly there are no precise details provided as to how to implement the modules used to achieve the invention; these are merely specified by their function within the steps of the agreement method (for example the proration module performs certain calculations). The precise technical details of implementation with respect to the hardware and software used are left up to the skilled addressee. In addition the hardware and software used to implement the invention would be recognised as no more than taking advantage of the known properties of generic computer systems as known in the art, for example the ability to generate, store, send and receive information. It is thus apparent to the skilled addressee that the hardware and software as defined in the application merely comprise generic intermediaries that are used to implement the claimed method, and in effect define no more than the mere automation of the agreement method and dispute process. Thus the substance of item vi lies in the steps of the agreement method and dispute process. As discussed previously this does not provide for a manner of manufacture.
60. In summary none of the aspects of the invention identified by the Applicant contribute as a matter of substance material that results, or potentially results, in claim 1 being for a manner of manufacture according to the principles discussed in both RPL and Research Affiliates. To avoid any doubt I cannot identify any other aspects of claim 1, other than those discussed above, that would contribute, as a matter of substance, material that would result in claim 1 being for a manner of manufacture. One is left with the inexorable conclusion that the substance of claim 1 resides in the provision of a method that allows for either agreement on the value of an interline coupon prior to coupon usage or the initiation of a dispute process on the coupon value if such agreement has not been reached. This is a business innovation as a matter of substance and is therefore not for a manner of manufacture as noted in RPL at [96]. It follows that claim 1, and therefore also claim 21, are not for a manner of manufacture.
The Dependent Claims
61. I have considered the material in the dependent claims, which are discussed at [76] to [93] and [95] to [97] of the Applicant’s submissions. However I consider that these claims contribute nothing as a matter of substance beyond what is in the independent claims. Consequently all of the dependent claims are not for a manner of manufacture for the same reasons as given with regard to the independent claims.
Is there anything within the application that provides for a manner of manufacture?
I have considered the patentability of the invention as claimed in view of the application as a whole and the arguments put forward by the Applicant. I will now consider whether there is any material in the application that may be claimed and result in a manner of manufacture.
The Applicant submitted at [14] of their written submissions that the invention resides “…within complex global distributed computer systems, of a specific process enabling an agreement to be reached between carrier computer systems in a fully automated and timely manner.” Similar statements are provided at [15] of the Applicant’s submissions:
“Furthermore, the computer systems involved in the implementation of the invention are 'standard' only in the sense that they comprise conventional hardware and operating system platforms commonly deployed in server systems. They are, however, specifically programmed with complex and sophisticated software in order to implement an embodiment of the invention in the context of advanced global travel booking and management.”
The difficulty for the Applicant is that the computerised aspects of the invention are only specified to the degree necessary to implement the agreement method per se. Precise technical details representing some ingenuity or advance in computer technology as such, or steps foreign to the normal use of a computer are completely absent in the application. It is apparent that the elements of the computer systems involved relate to features and functionality that is generic to computer systems already known in the art, and the application is merely making use of these to facilitate the agreement method by automation. That is the computer systems are merely an intermediary for performing the agreement method and do not add anything of substance to the invention beyond the agreement method as such.
Consequently I do not consider that there is any material in the application, beyond that already considered, that would lead to a manner of manufacture. It is apparent that the entire application is directed towards obviating difficulties in reaching agreement over the coupon values of an interline E-ticket. These difficulties are solved by arranging for the agreement and dispute processes to occur prior to coupon usage. The difficulties outlined and the solution as embodied in the agreement method are abstract in nature as they merely relate to a way of agreeing on and apportioning revenue. The application is for a business innovation.
Conclusion
None of the claims are for a manner of manufacture. In addition I see no material in the application that could be made the subject of a claim so as to result in that claim being for a manner of manufacture. Therefore, subject to appeal, I refuse the application.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
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