Amsted Rail Company, Inc.
[2022] APO 56
•22 July 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Amsted Rail Company, Inc. [2022] APO 56
Patent Application: 2019271970
Title:Rail Car Terminal Digital Data Hub
Patent Applicant: Amsted Rail Company, Inc.
Delegate:R Subbarayan
Decision Date: 22 July 2022
Hearing Date: Written submissions filed on 16 December 2021 and 21 April 2022
Catchwords: PATENTS - examiner’s objection – digital control hub for rail car terminal – manner of manufacture – computer implemented invention – whether it solves a technical problem – whether the contribution is technical in nature – business innovation – invention not for a manner of manufacture – application refused
Representation: Patent attorney for the applicant: IP Gateway Patent & Trade Mark Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019271970
Title:Rail Car Terminal Digital Data Hub
Patent Applicant: Amsted Rail Company, Inc.
Date of Decision: 22 July 2022
DECISION
None of the claims are for a manner of manufacture. Furthermore, I do not see any subject matter in the specification that could be considered patentable. I therefore refuse the application.
REASONS FOR DECISION
BACKGROUND
Patent application 2019271970 currently in the name of Amsted Rail Company, Inc. (the applicant) was filed on 27 November 2019 as a divisional application of AU 2016203728 and through this parent application claims an earlier priority date of 1 June 2016.
The first examination report was issued on 16 September 2020 with objections that the claimed invention was not for a manner of manufacture and that it also lacks an inventive step in light of the combined disclosure of 2 prior art documents.
The applicant responded on 12 January 2021 with proposed amendments to the specification including a new claim set that they submitted overcomes the objections raised. They also highlighted that a US application had recently been allowed in the USPTO based on claims that were of similar scope to the proposed amended claims.
A second examination report was issued on 12 February 2021 maintaining the manner of manufacture objection but withdrawing the inventive step objection.
On 7 September 2021, the applicant requested to be heard on the remaining examiner objection.
The applicant was advised that the hearing would be done through written submissions and invited to file written submissions.
The applicant’s written submissions were filed on 16 December 2021.
In the course of my deliberations, I became aware of certain new prior art documents that had not been raised during examination and which I considered were highly relevant in understanding the state of the art in relation to the field of the invention at the priority date. I therefore wrote to the applicant on 23 March 2022, stating that these prior art documents strongly suggest that computerised operations management systems for transitioning rail cars through a plurality of stages in a rail car terminal/yard were well known at the priority date and provided the applicant an opportunity to provide any further submissions they may wish to make. The prior art documents that I identified in this letter are as follows:
US 7813846 B2 (Wills et al.)
US 6437705 B1 (Barich et al.)
US 6377877 B1 (Doner)
Each of these prior art documents relates to a computerised operations management system for transitioning rail cars through a plurality of stages in a rail car terminal/yard.
The applicant filed further submissions in relation to these documents on 21 April 2022.
SPECIFICATION
10. The present invention relates to a system and method of monitoring, staging and sequencing the movement of rail cars through different stages within a rail car operations terminal so that various operations can be performed on the rail cars.
11. The specification provides a brief overview of a typical operations terminal.
“The rail car terminal provides a facility for the loading, offloading, handling and storage of rail cars which may include loading and unloading stages and also possibly a trans-loading stage which is the process of transferring product or cargo from one vessel to another, such as to or from a rail car, tanker truck, pipeline, storage tank, barge or other containers. Trans-loading may also involve the measurement of the transfer, including such parameters as weight, volume, temperature, density, product components and more”.[1]
[1] Specification at page 1, line 22 – page 2, line 5
12. It then notes that the current rail car inspection and staging systems at terminals are “manual and paper-based” and that that “the rail industry is seeking computerized solutions to tracking rail cars through their terminals, capturing all data elements and storing in a secure environment”.[2]
[2] Specification at page 1, lines 18-21
13. The object of the invention is to therefore “to provide an improved method and apparatus for controlling the stages through which cars pass during their operations in a rail car handling terminal”.[3]
[3] Specification at page 2, lines 7-9
14. A broad consistory statement of the invention is then given.
“According to the disclosure there is provided a method for transporting bulk goods, comprising:
providing a plurality of rail cars arranged to be transported on a rail network to a rail car handling terminal;
each rail car having unique identification indicia identifying the rail car;
at the handling terminal providing an apparatus for loading into and/or unloading the bulk goods from each of the rail cars, the apparatus including a metering device for measuring an amount of the bulk goods loaded or unloaded;
at the handling terminal providing a plurality of portable hand held field computers, each comprising:
an input interface for manual input by a worker of data relating to the rail cars;
a display for displaying data to the worker;
a camera module for obtaining images of the rail cars by the worker;
at the handling terminal providing a center control data hub in communication with the said apparatus and said portable computers;
communicating from said center control hub to a communication system of the rail network to obtain from the communication system a Car Location Message (CLM) for each of the rail cars prior to arrival of the rail cars at the rail car handling terminal;
communicating from said center control hub to a communication system of the rail network to obtain from the communication system a way bill for each of the rail cars prior to arrival of the rail cars at the rail car handling terminal;
the center control hub obtaining, from a data base using the unique identification indicia, mechanical data relating to each of the rail cars including at least a weight and capacity of the rail car;
at the handling terminal establishing a plurality of stages of operation on the rail cars, the stages including at least the following:
arrival from rail network,
loading/unloading; storage; cleaning and/or repair; release to rail network;
in between at least some of the stages causing the worker to carry out an inspection of the rail car and to enter data relating to the inspection into the input interface of the portable computer;
the center control hub generating data indicating a current stage of each of the rail cars in the rail car handling terminal;
the central control hub providing a signal indicative that a rail car can be transferred from one stage to another stage based on at least some of the data relating to the Car Location Message, the way bill, the mechanical data and the inspection;
the central control hub communicating the signal indicative that a rail car can be transferred from one stage to another stage to the portable computers to control transfer of the rail car from said one stage to said next stage”.[4]
[4] Specification at page 2, line 10 – page 4, line 7
15. The specification explains what a CLM is and its significance to the present invention.
“The Car Location Message (the ‘CLM’) is a data message in the form of a single line of text that captures the events in the staging of a rail car to, within and departure from a facility. The CLM data message is a composite of several data elements, including but not limited to a) rail car identification code; b) load or empty status; c) state or situation of rail car, such as arrived, placed or released; d) date and time of CLM event; e) the stage event code; f) the source of the information of the event, such as the railroad, the trackside scanner or the hand held computer device; and g) other information that may be related to the CLM event.
The CLM message itself has been in the industry for over a century, dating back to the days of telegraph. However, the creation and use of CLM's for staging of rail cars within the rail car handling terminal is unique. That is the process of the present disclosure includes as a key point the creating a CLM upon a rail car moving from one stage to another. This is part of the uniqueness of this application”.[5]
[5] Specification at page 4, lines 8-22
16. The specification also notes that the CLM of a rail car will change as the rail car transitions through the different stage in the terminal.
“As a part of the operation of the control hub 17, the hub generates a CLM for each stage which is internal to the terminal rather than external to the rail network for use in managing the rail cars as they pass through the different stages of the terminal 13”.[6]
[6] Specification at 20, lines 18-21
17. A preferred embodiment of the invention is then described with reference to certain drawings of which figure 1 is reproduced below.
18. Figure 1 is a schematic illustration of the components of an inspection and staging system according to the present invention. It shows a rail network 10 with a plurality of rail cars 11, 12 and a rail car terminal 13. Each of the rail cars includes a unique identification indicium which can be read by scanners that are placed in various locations in the rail network. The rail system includes a communication system 14 which can receive and transmit various information from and to different users across the rail network including the rail car terminal 13.
19. The rail terminal 13 includes a central data hub 17 which is “a programmed computer system operable to manage the different aspects of the terminal on the rail cars passing through the terminal”[7]. The central data hub 17 can communicate with the communication system 14 of the rail network to obtain various information including the CLM and the way bill.
[7] Specification at page 16, lines 12-14
20. The staging system also includes a plurality of hand-held field computers for use by operators in the rail terminal. Each of these field computers can communicate with the data hub and includes a display 23A, a keyboard input 23B and a camera module 23C. The operators receive instructions through these field computers to carry out inspections of a rail car and then transmit the inspection report to the data hub.
21. The terminal also has a cargo loading and unloading station 24 that includes loading apparatus 24a and unloading apparatus 24b.
22. The terminal comprises a number of stages such as an arrival stage 25 where rail cars enter the terminal, a cleaning/repair stage 27, a storage stage 26, a loading/unloading stage 24 and a release stage 28 where the rail cars are released back into the rail network.
23. The specification notes that the central hub controls the entire staging operation of the rail cars in the terminal based on various factors such as the CLM, the way bill, the rail car information associated with the rail car identification indicia, the rail car inspection report provided by yard operators through the field computers, the facilities at the terminal and the configuration of the terminal.
“From the information defined above which has been collected by the central hub 17 from the various sources defined above, the central hub generates data indicating current stage of each of the rail cars within the rail car handling terminal 13. The central hub thus monitors the passage of the rail car through the terminal from one stage to another depending upon the processes required on that particular rail car for the load concerned. In particular the central hub 17 generates a signal indicative of the rail car can be transferred from one stage to the stage based upon the data defined above concerning the CLM, the waybill, the mechanical data and the inspection or inspections”.[8]
[8] Specification at page 19, lines 8-16
24. The specification provides the following description of the operation of the control hub with respect to figure 2 which is also reproduced below.
“As shown in figure 2 there is a schematic illustration of the operation of control hub 17 in transfer of a rail car from a previous stage of (sic) to a next stage. In this case the control hub obtains information relating to various parameters of the rail car as defined above to get the tasks necessary for that rail car. This information is related to a series of rules, taking into account the history of operation of the rail car concerned to establish whether the rail car concerned, moved to the next stage. In addition the same algorithm can determine which stage should be entered next. As set forth above in some cases a rail car may be moved from unloading to repair or to storage or to the loading station. The selection is made by the control hub 17 depending upon the above conditions and parameters”.[9]
“The sequence of the rail cars through the stages at a terminal is controlled by rules that are pre-set by the operators at the terminal”.[10]
[9] Specification at page 21, lines 12-22
[10] Specification at page 22, lines 19-20
25. The present invention is stated to improve the safety and efficiency of the rail terminal operations.
“This Terminal Staging Process is a method of improving the safety and the efficiency of a rail car operations terminal (‘the terminal’) by means of collecting key information from various operations in digital formats, storing the information in a central data hub and then using that information for safety, security and optimizing purposes.
The central digital data hub is a database repository with designated formats of electronic data interface (EDI) standards for the input and output of events and records. The data hub has the ability to relate various rail car and terminal events so that all of the activity of any vehicle approaching, moving through or departing from a terminal can be captured and reported at any time.
By utilizing field wireless computer technology on and near the vehicles, real-time data can be collected into the data hub so that the terminal can then be optimized for efficiency, safety, security and performance”.[11]
[11] Specification at page 12, lines 1-13
26. The specification as filed included 23 claims all of which were method claims. However as noted earlier, amendments have been proposed to the claims during examination and all of the new 13 claims are now directed to an apparatus. Proposed amended claim 1 which is the only independent claim reads as follows. The entire amended claim set is given at Annex A to this decision.
1. Apparatus for managing rail cars in a rail car handling terminal comprising:
a plurality of rail cars arranged to be transported on a rail network to a rail car handling terminal;
each rail car having unique identification indicia identifying the rail car;
the rail network having a communication system defining a Car Location Message (CLM) for each of the rail cars;
the rail car handling terminal including a plurality of rail tracks onto which the rail cars can be moved;
a center control data hub at the rail car handling terminal;
the center control data hub and the communication system being arranged to communicate from said center control hub to the communication system of the rail network to obtain from the communication system the Car Location Message (CLM) for each of the rail cars prior to arrival of the rail cars at the rail car handling terminal;
the center control data hub and the communication system being arranged to obtain from the communication system a way bill for each of the rail cars prior to arrival of the rail cars at the rail car handling terminal, the way bill including information on a point of origin of the rail car and on goods contained within the railcar;
the center control hub being arranged to obtain from a database using the unique identification indicia, mechanical data relating to each of the rail cars including at least a weight and capacity of the rail car;
a plurality of portable hand held field computers at the rail car handling terminal, each comprising:
an input interface for manual input by a worker of data relating to the rail cars;
a display for displaying data to the worker;
camera module for obtaining images of the rail cars by the worker;
the rail car handling terminal being divided into a plurality of separate stages of operation on the rail cars, the stages including at least the following:
arrival from rail network,
loading/unloading;
storage;
cleaning and/or repair;
release to rail network;
a loading apparatus at the rail car handling terminal for loading bulk goods into selected ones of the rail cars;
the center control hub including an output for providing a load signal to a loading apparatus for measuring an amount of the bulk goods to be loaded by the loading apparatus;
an unloading apparatus at the rail car handling terminal for unloading bulk goods from selected ones of the rail cars;
the center control hub including an input for receiving an unload signal from an unload metering device of the unloading apparatus for measuring an amount of the bulk goods unloaded;
the center control hub storing in the center control hub data indicating a current stage and condition of each of the railcars in the rail car handling terminal;
the center control hub being arranged, before moving a selected rail car from a first stage of the separate stages, to communicate from the center control hub to a selected one of the portable computers a prompt requiring the worker to carry out an inspection of the selected rail car in the first stage and to enter data relating to the inspection of the rail car into the input interface of the portable computer;
the field computers being arranged to enter mechanical data on physical properties and condition of the selected rail car;
the field computers being arranged to enter data to determine whether a railcar is situated and in a suitable condition to safely move into the second stage;
the center control hub containing established rules to provide a signal indicative of a selected one of the stages as a next stage into which the rail car should be transferred from said first stage based on at least some of the data relating to the Car Location Message, the way bill, the mechanical data and the inspection;
the center control hub using said established rules to provide a signal indicative that a rail car meets the rules to be transferred from said first stage to said next stage based on at least some of the data relating to the Car Location Message, the way bill, the mechanical data and the inspection;
the center control hub communicating the signal indicative that a rail car is to be transferred from said first stage to said next stage to the portable computers to control transfer of the rail car from said first stage to said next stage;
the center control hub providing a signal allowing operation of the loading apparatus to load a rail car in the loading apparatus;
the center control hub providing a signal indicative of a loading amount of bulk goods to be metered to a full condition of the selected rail car;
the center control hub providing a signal to prevent loading of a rail car with product that is not compatible with previous contents in the rail car.
THE EXAMINER OBJECTION
27. The only objection maintained in the second examination report relates to the ground of manner of manufacture.
28. In the first examination report, the relevant objection reads as follows:
“Claims 1 - 13 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. In general, the principles set out in D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases require analysing whether the claimed invention, as a matter of substance rather than form, is suitable subject matter for a patent.
The substance of the claimed invention is to be determined by considering the claimed invention’s actual or alleged contribution to the art. Factors relevant to consider when identifying the substance of the claimed invention include:
·How does the claimed invention work?
·What problem does it address?
·What is the result of performing the claimed invention?
·What was the state of the art as at the priority date?
·What does the claimed invention add to the state of the art?
·What are the advantages of the claimed invention?-
The claimed invention relates to a method for monitoring and determining the location, movement, status, loading, unloading, cleaning/repair, staging and other sequencing of operations of cars at a rail car terminal. It uses entirely conventional software and hardware to achieve this. There is no ingenuity in the claimed invention in relation to the working of computer technology. The technical features of your claims are all individually well known. Moreover I consider that the way these technical features work together to carry out your invention is also well known.
In RPL [099], the Full Federal Court indicated several factors relevant to consider when determining whether a claimed invention as a matter of substance relates to patentable subject matter. These included:
·Is the contribution to the claimed invention technical in nature?
·Does the claimed invention solve a “technical” problem within the computer or outside the computer?
·Does the claimed invention result in an improvement in the functioning of the computer, irrespective of the data being processed?
·Does the claimed invention merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method, but adding
·nothing to the substance of the idea?
In weighing up the variety of factors which indicate what the substance of the claimed invention is and whether or not the claimed invention as a matter of substance relates to patentable subject matter, I have concluded that your claimed invention, as a matter of substance, does not relate to patentable subject matter.
The problem solved by the claimed invention, i.e. automating of paper based monitoring/inspection process using computer systems, is not a technical problem. The technical features of the claim, considered in combination, were generic in the art at the priority date. The claimed invention does not result in an improvement in the functioning of the computer, irrespective of the data processed. The contribution to the art and substance of the invention thus appears to lie in the scheme for automating railcar management system.
Therefore the claimed invention, as a matter of substance, does not define subject matter suitable for a patent”.
29. In the second examination report, the examiner maintained the objection despite the proposed amendments and the objection reads as follows:
“Claims 1-13 as proposed to be amended do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990 according to the principles set out in D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL), Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161(Encompass), Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt), and other cases. The claimed invention, as a matter of substance rather than form, is not suitable subject matter for a patent.
Applicant's submissions and amendments filed on 12 January 2021 have been carefully considered but were not found to be persuasive. Applicant submits that the instant claims have been accepted in US, Canada and Mexico and thus should be accepted in Australia. The applicant is reminded that acceptance in one jurisdiction does not guarantee automatic acceptance in other countries. Hence this argument is moot.
Applicant's other argument that the claimed invention is similar to Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (Aristocrat) is not considered to be persuasive either. In his considerations, Justice Burley identified that the invention ‘is to a mechanism of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome in the form of an EGM that functions in a particular way.’ [95] “Simply put, the machine that is the subject of the claims is built to allow people to play games on it. That is its only purpose. … It is a device of specific character.” [98]
Consequently, electronic gaming systems which are well-specified and include all necessary hardware to operate them, and are designed for only that one purpose (the playing of the game) may be considered to be ‘specific-purpose device’ and are patentable. Clearly, the claimed invention is not analogous to the specific-purpose device as defined in Aristocrat.
As explained in the earlier report, an assessment of whether or not a claimed invention is proper subject matter requires an assessment of what the claimed invention, as a matter of substance, relates to. Substance of the invention needs to be assessed based on a variety of factors (for example by considering the contribution to the art and the problem being solved) and it is therefore incorrect to conclude that every feature of a claim forms part of the substance. Applicant disagrees with the examiner's characterization of the substance of the invention. However the applicant fails to explicitly identify the substance of the invention or the ‘technical’ problem being overcome by the claimed invention.
As part of the process of assessing the substance each and every feature must be considered independently to determine if there is any technical contribution in that feature. The assessment also involves consideration of the claim as a whole to determine any technical contribution in the combination, or arrangement of features. This approach was used in the examination of your application. That is, the features of the claimed invention have been considered independently and as a whole to determine the contribution to the art, hence the substance. In this case the ingenuity lies in the automation of a manual process, through the use of a work flow checklist that uses manual data entry, automated data entry to compare against set criteria to initiate [by a signal] a manual work flow task for a worker to progress a rail car to a next work flow stage.
Furthermore, the combination of technical computer steps implementing these non-technical features does not result in any improvement to the computer or the functioning or architecture of a computer. The specification does not provide specific technical details to indicate how the combination of the well-known functions of a computer result in the claimed invention contributing to a technical or material improvement in the computer or functioning of the computer. The combination of features is merely linked so as to implement the scheme, wherein the inventor's contribution is considered to lie.
Therefore the claimed invention, as a matter of substance, does not define subject matter suitable for a patent”.
The Applicant’s Submissions
30. The applicant’s submissions can be summarised as follows:
The decision of the Full Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (“Aristocrat”) is the most relevant statement of the law in Australia relating to how the patentability of inventions in this area should be assessed and hence the principles set out therein should be adopted in assessing the patentability of the presently claimed invention.
The claimed invention is not a computer or a “computer-implemented invention” and hence the assessment of manner of manufacture must be made by considering the general principles of patentability.
Although it includes a number of integers that are computers or define functions performed by computers, the claimed invention is directed to an “apparatus for managing rail cars in a rail car handling terminal”, and its substance does not just relate to the field of computers.
Although a key feature of the claimed invention is the central control hub that functions to obtain various information to perform a number of functions such as providing instructions to move the rail cars through the different stages of operation within the terminal including loading/unloading of bulk goods, the substance of the invention is not just the control hub itself.
The substance of the invention lies in the overall combination of integers claimed, including the “central control hub” and the way this interacts with the other parts of the apparatus to achieve a number of beneficial outcomes.
The claimed invention is a combination patent in which the physical and functional features interact with one another in a novel and inventive way. To disregard the physical features would be “denuding the invention of patentability by prematurely discounting elements of the claim” as cautioned in Aristocrat.
The invention enables throughput of the rail yard to be monitored, measured and points of improvement identified and helps to better manage the operation of the yard and the use of resources within a yard.
It clearly provides a means of achieving an end result which is an artificially created state of affairs in the sense of a tangible, observable effect, which has utility in a field of economic endeavour.
THE RELEVANT LAW
31. In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in respect to manner of manufacture. At page 275, “... a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ...- that its value to the country is in the field of economic endeavour”.
32. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:-
“The effect produced by the appellant’s method exhibits the two essential qualities upon which “product” and “vendible” seem designed to insist. It is a “product” because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage ... for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”
33. The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, at [23]:-
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of “manner of manufacture” in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
34. That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in Myriad by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
35. The patentability, or otherwise, of computer implemented business methods has been considered in a number of cases, 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”).
36. In RPL the Full Federal Court stated at [96]-[98]:
“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.”
37. Thus, in relation to computer implemented 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. At [99] to [107] of RPL, their Honours reiterated a series of these principles from Research Affiliates (in particular from [94]). I note that the principles from Research Affiliates and RPL were recently cited with approval in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (“Rokt”) at [69] and by an expanded Full Court in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (“Encompass”) at [77] et seq.
38. Conveniently the principles concerned have been summarised at [189] of Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (“Rokt Pte Ltd”):
“The respondent submitted that the law as laid out in Research Affiliates and RPL Central held that:
17.1 The Court must decide, as matter of substance not form, whether the claimed invention is the proper subject-matter for a patent: RPL Central at [99]; Research Affiliates at [106], [117].
17.2 This requires consideration of both the claims of the Application and the invention described in the body of the specification: RPL Central at [114].
17.3 The assessment is not done mechanically. There are no precise guidelines or mathematical formula. It is “a question of understanding what has been the work of, the output of, and the result of, human ingenuity” and then applying the developed principles: Research Affiliates at [116]. See further RPL Central at [112]:
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 ...17.4 One well-settled principle is that a distinction exists between a technological innovation and a business innovation. A technological innovation is patentable. A business innovation is not: Research Affiliates at [94]; RPL Central at [100]. Consequently, a business method or scheme is not, per se, a proper subject for letters patent: RPL Central at [96]. Nor are abstract ideas, mere intellectual information or mere directions for use patentable: Research Affiliates at [101]; RPL Central at [100].
17.5 A computerised business method or scheme can, in some cases, be patentable. However, “[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation”: RPL Central at [96] (emphasis added). This requires “some ingenuity in the way in which the computer is used”: RPL Central at [104]. It is not a patentable invention “to simply ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions”: RPL Central at [96]. In other words, if the ingenuity lies in the business method or scheme alone, the invention will not be patentable despite the computer-implementation.
17.6 Thus, 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: RPL Central at [96]. Contrary to [the applicant’s submissions at [49]], this is a binary distinction: the invention is either an unpatentable scheme or plan, or it is a patentable improvement in computer technology. In conducting the analysis, it is useful to:
17.6.1 ascertain whether the contribution to the claimed invention is technical in nature: RPL Central at [99], Research Affiliates at [114];
17.6.2 consider whether the invention solves a “technical” problem within the computer or outside the computer: RPL Central at [99]; Research Affiliates at [103];
17.6.3 consider whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed: RPL Central at [99], Research Affiliates at [118];
17.6.4 consider whether the invention requires merely “generic computer implementation”, as distinct from steps which are “foreign” to the normal use of computers: RPL Central at [99], [102]; Research Affiliates at [101]; and
17.6.5 consider whether the computer is merely the intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea: RPL Central at [99].’”
39. In Aristocrat, which is relied on by the applicant, the Full Court suggested at [26]-[27] the following approach to decide whether an invention relates to patentable subject matter.
“(a) Is the invention claimed a computer-implemented invention?
(b) If so, can the invention claimed broadly be described as an advance in computer technology?If the answer to (b) is no, the invention is not patentable subject matter. Of course if the answer to (a) is no, one must then consider the general principles of patentability”.
40. However, where the invention is a computer implemented invention, the principles from Rokt Pte Ltd that I have noted above, have not been disturbed in Aristocrat.
41. It is also clear from the above authorities that the mere presence of physical integers is not necessarily sufficient to confer patentability. The claimed invention must be considered as a matter of substance and not of form. Furthermore, it is also apparent from these authorities that, in order to properly understand the substance of the claimed invention, regard may be had to relevant prior art including the common general knowledge:
“That inquiry requires a definition of the allegedly patentable invention. That definition depends upon the construction of the impugned claims read in the light of the specification as a whole and the relevant prior art...” (Myriad at 12)
“The present appeal also calls attention to the single enquiry identified in this passage, namely whether, upon construction, claim 1 as read in the light of the specification as a whole in the light of the relevant prior art, which in the present case is the common general knowledge, is a manner of manufacture”. (Rokt at 68)
The Common General Knowledge (CGK)
42. It is clear from the authorities that in order to determine the substance of the invention, it is legitimate to have regard to the prior art including the CGK in the art at the priority date of the application. It is evident from the specification of the present application and the prior art that the following information formed part of the CGK in the art at the priority date.
A rail car terminal or yard is an infrastructure with railway lines where rail cars are brought for performing various operations such as loading, unloading, transloading, repairs, storage and classification.
The rail cars coming to a rail terminal will be sequenced through one or more of such operations before being classified and depart from the terminal back to the railway line.
43. Although the specification states that current rail car inspection and staging systems at terminals are “manual and paper-based”, it is evident from the prior art (including the new prior art documents that I brought to the applicant’s attention) that computerised management of movement of the rail cars through the different stages within a terminal was also well-known in the art. While the applicant has only conceded in their submissions that the new prior art documents indicate that “mere use of computerised operations management systems in rail car or railway facilities, or the use of computer technology generally in the management of rail car or railway facilities” was not novel at the priority date, they have not explicitly refuted my contention that the prior art documents clearly suggest that computerised operations management systems for transitioning rail cars through a plurality of stages in a rail car terminal/yard were well known in the art at the priority date. As a mechanical engineer with over 30 years of experience as a patent examiner in vehicle technologies including railway technology, I can confidently state that computerisation of rail car movements, whether in the rail network or in the marshalling yards, has been commonplace for a few decades. This is also evident from even a cursory search of the internet. I am therefore satisfied that computerised automation of the staging of rail cars in rail car terminals/yards was CGK at the priority date. Any assertions to the contrary in the specification has, in my view, no basis.
Is the invention a computer implemented invention?
43. While I accept that the presently claimed invention relates to a system/apparatus for managing rail cars in a rail car handling terminal that includes physical features such as railway tracks, rail cars, loading and unloading apparatus and one or more computers that communicate with the rail network, as discussed above these physical features are nothing more than standard features in any modern rail car terminal.
44. The contribution of the claimed invention to the art therefore lies in the computerisation of the staging operations in the rail car terminal and more specifically how a central control hub of the terminal that communicates with the railway communications network utilises various data including the CLM to improve the efficiency of staging operations. This in my view is the substance of the invention. I also note that even the specification admits that the present invention seeks to provide a computerised solution to overcome the problems with manual and paper based staging systems[12] and more specifically the uniqueness of the invention lies in the use of the CLM by the control hub for staging[13].
[12] Specification at page 1, lines 18-21
[13] Specification at page 4, lines 17-22
45. I do not accept the applicant’s submission that ignoring these standard physical features of the terminal is tantamount to “denuding the invention of patentability by prematurely discounting elements of the claim” (Aristocrat). As noted in the authorities including Myriad the characterisation of the invention should be one of substance and not one of form and in the present invention the control hub of the terminal and the information that it processes is the substance of the invention.
46. When the substance of the invention is characterised as above, it is clear that the invention is very much a computer implemented invention for staging rail cars through a terminal. The computer system is at the heart of the invention as it communicates with the railway network communication system and the field computers to obtain various information that is then processed to provide signals for staging the rail cars through the terminal. I cannot agree with the applicant’s view to the contrary.
47. Having decided that the claimed invention is indeed a computer implemented invention, I need to determine whether the claimed invention can broadly be described as an advance in computer technology. The considerations noted in Rokt Pte Ltd that I have stated earlier are relevant for this assessment.
Does the invention solve a technical problem?
48. Although the specification notes problems with manual and paper based staging systems for staging rail cars within a rail terminal and that the present invention seeks to provide a computerised system, as discussed earlier, computerised staging systems were clearly known in the art at the priority date and hence the problem that the claimed invention seeks to address is to provide an alternative computerised staging management system for a rail terminal that allegedly provides for more efficient staging of rail cars through the terminal. There is nothing in the specification to suggest that there were any technical limitations in known computerised terminal management systems. The present invention is not directed to solving a technical problem.
Is the contribution to the claimed invention technical in nature?
49. As discussed above, the solution provided by the claimed invention is to acquire information relating to the CLM and way bill prior to the arrival of the rail cars in the terminal and use these along with other information relating to mechanical data and inspection data on the rail cars to determine a staging schedule for the rail cars. The use of the CLM is clearly highlighted in the specification as being at the heart of the invention:
“The CLM message itself has been in the industry for over a century, dating back to the days of telegraph. However, the creation and use of CLM's for staging of rail cars within the rail car handling terminal is unique. That is the process of the present disclosure includes as a key point the creating a CLM upon a rail car moving from one stage to another. This is part of the uniqueness of this application”.[14]
[14] Specification at page 4, lines 17-22
50. As acknowledged in the specification, the CLM is nothing more than an EDI message that is used by the railroad industry to track the movements of railcars. It provides information on reported events such as arrival at transit location, arrival at destination, ETA, bad order (reported defects) and storage.
51. What the present invention does is to utilise the information provided by CLMs, whether the CLM is one that is received from the rail network or one that is created within the rail terminal, along with other information such as way bills, rail car mechanical data and inspection reports to develop a staging schedule for the rail car and use this to decide whether the rail car is ready to be moved from one stage to the following stage within the terminal. This staging schedule is generated by the central control hub using various rules and algorithms programmed into the control hub.
52. It is therefore clear that the contribution to the claimed invention relates to the information that is used by the control hub to generate the staging schedule and to provide various signals such as when a rail car can be moved to the next stage, the amount of bulk cargo to be loaded or unloaded, what maintenance needs to be carried out, etc. I can see nothing technical in the use of additional information such as CLM and way bill in the generation of a staging schedule or to provide signals for activities such as loading or unloading. Furthermore, the specification is totally silent on the rules or algorithms used by the control hub or how these algorithms use information such as the CLM and way bill in rail car staging process and, hence, there is nothing to even suggest that there is anything technical in applying such algorithms. In my view, the use of various information such as CLMs, way bills and inspection reports to develop an allegedly more efficient staging schedule is nothing more than a scheme.
53. The contribution to the claimed invention is therefore not technical in nature.
Is there an improvement in the functioning of the computer, irrespective of the data being processed?
54. I cannot ascertain any improvement in the functioning of any of the control hub or the field computers of the claimed apparatus. The computers are used for their standard or known abilities to process and store data. Any improvement in the way the computer provides instructions for staging the rail cars through different operations resides in the programming of the computer and the rules entered into the system by the operators.
Does the claimed method require only generic computer implementation?
55. The computer system that underpins the invention comprises the central control hub and the hand-held field computers. The central control/data hub is described as follows.
“The control system of the terminal 13 includes a central data hub 17 which is a programmed computer system operable to manage the different aspects of the terminal on the rail cars passing through the terminal. The central data hub 17 includes a communication system 18 for communication with the exterior including particularly the communication system 14 of the rail network and also where necessary with exterior sources of information using a required communication system such of the Internet. The central hub 17 further includes access to a database 19 of information either as part of the central hub 17 or at a remote location through communication systems. The computer system further includes a memory 24 storing and retrieving information generated by the other components of the system for use in the management of the whole system is controlled by the central hub 17. The control system further includes displays including display 21 and display 22 for displaying information to various users of the current status of the system and all the specific instructions and requirements as generated by the control system”.[15]
[15] Specification at page 16, line 12 – page 17, line 2
56. It is quite evident that the central hub can be a generic computer that is programmed to carry out the various functions of the claimed invention.
57. The hand-held field computers are stated to be computer tablets which include “built-in GPS locating, camera, calendar/clock, bar code scanner, wireless communications and proprietary inspection sheet software”[16]. There is, again, nothing in the specification to suggest that these are anything other than generic computer tablets.
[16] Specification at page 23, lines 13-14
58. As noted earlier, although the specification states that the central hub uses various rules and algorithms to generate the staging schedule, no further details of these rules or algorithms are given, with this being left to the person skilled in the art to develop based on various requirements.
59. It is therefore clear that the present invention only requires a generic computer system connected to any suitable network for its implementation.
Is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea?
60. The present invention lies in utilising various information relating to the rail cars in order to stage rail cars through different operations in the rail car terminal. As noted earlier, the computer that is used appears to be no more than a generic computer that has been programmed to decide when a rail car be moved to a next stage of operation within the terminal based on certain rules and algorithms that are pre-set by the operators in the terminal. The computer is clearly an intermediary or tool for efficient staging of rail cars through different operations in the terminal without adding anything of substance to the invention. Similar can be said for the hand held field computers and broader aspects of computerised technology, such as wireless or wired data transfer, data storage, databases etc..
Balance of Considerations
61. Turning to the factors discussed above, the fact that the invention does not solve a technical problem and the contribution is not technical in nature weighs strongly in finding that the claimed invention is not for a manner of manufacture. Furthermore, the system of the claimed invention only requires suitably programmed generic computers and tablets to implement the invention and also there is no improvement to the computers themselves.
62. In summary, the present invention is to a computer implemented scheme to generate a staging schedule for movement of rail cars within a rail terminal, with no improvement to computer technology. It is a business innovation and not a technical innovation. I therefore find that the claimed invention is not for a manner of manufacture.
63. I am also unable to find any subject matter in the dependent claims or in the entire specification that could be considered patentable. There is therefore no prospect of overcoming my adverse finding by amendment. In the circumstances, it is appropriate that I refuse the application.
OTHER OBSERVATIONS
64. Since my earlier communication to the applicant identifying three new prior art, another highly relevant prior art has come to light which in my view casts doubts on the inventive step of the claimed invention. This prior art is
US 2015/0066561 Al (Wills et al.) 5 March 2015
65. As I have already found that the lack of manner of manufacture finding cannot be overcome, I do not intend on remitting the application back to the exam section for reassessing the ground of inventive step. However, I consider that it is appropriate that I bring it to the applicant’s attention.
CONCLUSION
66. None of the claims are for a manner of manufacture. Furthermore, I do not see any subject matter in the specification that could be considered patentable. I therefore refuse the application.
R Subbarayan
Delegate of the Commissioner of Patents
Annex A – Amended Claims
1. Apparatus for managing rail cars in a rail car handling terminal comprising:
a plurality of rail cars arranged to be transported on a rail network to a rail car handling terminal;
each rail car having unique identification indicia identifying the rail car;
the rail network having a communication system defining a Car Location Message (CLM) for each of the rail cars;
the rail car handling terminal including a plurality of rail tracks onto which the rail cars can be moved;
a center control data hub at the rail car handling terminal;
the center control data hub and the communication system being arranged to communicate from said center control hub to the communication system of the rail network to obtain from the communication system the Car Location Message (CLM) for each of the rail cars prior to arrival of the rail cars at the rail car handling terminal;
the center control data hub and the communication system being arranged to obtain from the communication system a way bill for each of the rail cars prior to arrival of the rail cars at the rail car handling terminal, the way bill including information on a point of origin of the rail car and on goods contained within the railcar;
the center control hub being arranged to obtain from a database using the unique identification indicia, mechanical data relating to each of the rail cars including at least a weight and capacity of the rail car;
a plurality of portable hand held field computers at the rail car handling terminal, each comprising:
an input interface for manual input by a worker of data relating to the rail cars;
a display for displaying data to the worker;
a camera module for obtaining images of the rail cars by the worker;
the rail car handling terminal being divided into a plurality of separate stages of operation on the rail cars, the stages including at least the following:
arrival from rail network,
loading/unloading;
storage;
cleaning and/or repair;
release to rail network;
a loading apparatus at the rail car handling terminal for loading bulk goods into selected ones of the rail cars;
the center control hub including an output for providing a load signal to a loading apparatus for measuring an amount of the bulk goods to be loaded by the loading apparatus;
an unloading apparatus at the rail car handling terminal for unloading bulk goods from selected ones of the rail cars;
the center control hub including an input for receiving an unload signal from an unload metering device of the unloading apparatus for measuring an amount of the bulk goods unloaded;
the center control hub storing in the center control hub data indicating a current stage and condition of each of the railcars in the rail car handling terminal;
the center control hub being arranged, before moving a selected rail car from a first stage of the separate stages, to communicate from the center control hub to a selected one of the portable computers a prompt requiring the worker to carry out an inspection of the selected rail car in the first stage and to enter data relating to the inspection of the rail car into the input interface of the portable computer;
the field computers being arranged to enter mechanical data on physical properties and condition of the selected rail car;
the field computers being arranged to enter data to determine whether a railcar is situated and in a suitable condition to safely move into the second stage;
the center control hub containing established rules to provide a signal indicative of a selected one of the stages as a next stage into which the rail car should be transferred from said first stage based on at least some of the data relating to the Car Location Message, the way bill, the mechanical data and the inspection;
the center control hub using said established rules to provide a signal indicative that a rail car meets the rules to be transferred from said first stage to said next stage based on at least some of the data relating to the Car Location Message, the way bill, the mechanical data and the inspection;
the center control hub communicating the signal indicative that a rail car is to be transferred from said first stage to said next stage to the portable computers to control transfer of the rail car from said first stage to said next stage;
the center control hub providing a signal allowing operation of the loading apparatus to load a rail car in the loading apparatus;
the center control hub providing a signal indicative of a loading amount of bulk goods to be metered to a full condition of the selected rail car;
the center control hub providing a signal to prevent loading of a rail car with product that is not compatible with previous contents in the rail car.
2. The apparatus according to claim 1 wherein the transfer from the first stage to the next stage includes physical movement of the rail car.
3. The apparatus according to claim 1 or 2 wherein the center control hub controls metering to fill of a rail car by communicating fill information to the hand held computers.
4. The apparatus according to any preceding claim wherein the center control hub creates bill of lading for the rail cars prior to release of the rail car from the release stage of the rail car handling terminal to the rail network.
5. The apparatus according to any preceding claim wherein the center control hub creates a Car Location Message (CLM) for each rail car prior to release of the rail car from the release stage of the rail car handling terminal to the rail network.
6. The apparatus according to any preceding claim wherein the center control hub creates a Car Location Message (CLM) internal to the rail car handling terminal for each rail car prior to release of the rail car from the arrival stage of the rail car handling terminal into the rail car handling terminal and upon transition from each stage to the next.
7. The apparatus according to any preceding claim wherein there is provided track side scanners at or in advance of the rail car handling terminal for reading data from each rail car including a location, way bill and Car Location Message (CLM).
8. The apparatus according to any preceding claim wherein the input interface of the portable hand held field computer creates an inspection check list for the worker.
9. The apparatus according to any preceding claim wherein the center control hub provides signals requiring cleaning of a rail car prior to loading dependent on information relating to a previous load obtained from the previous way bill.
10. The apparatus according to any preceding claim wherein the center control hub provides signals allowing transfer of a rail car to the storage stage dependent on information from the inspection including a requirement for repair and/or an off-lease condition of the rail car.
11. The apparatus according to any preceding claim wherein the center control hub stores for each rail car in the release stage information relating to identification of the rail car, load in the rail car, inspections carried out on the rail car and photographs of inspected parts of the rail car.
12. The apparatus according to any preceding claim wherein the center control hub maintains a list of customer orders.
13. The apparatus according to claim 12 wherein the center control hub selects for each customer order a rail car dependent upon mechanical data obtained from the data base and the previous load obtained from the way bill.
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