Amsted Rail Company, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Amsted Rail Company, Inc. 2021 APO 25

Patent Application: 2016204148

Title:Apparatus for Managing Transportation Vehicles

Patent Applicant: Amsted Rail Company, Inc.

Delegate: Dr W.E. Guinea

Decision Date: 23 June 2021

Hearing Date: Written submissions filed 16 September 2019, 27 February 2020 and 28 August 2020

Catchwords: PATENTS – standard patent – Examiner objections – manner of manufacture – substance of the invention resides in a scheme for, providing vehicle cargo packing slip information and cargo safety information with the vehicle, such that the vehicle cargo packing slip information can be read remotely only by an authorised user, while the cargo safety information can be read remotely by other users, within the in the context of transportation of cargo by vehicles – all claims lack a manner of manufacture – no patentable subject matter in application – inventive step not considered – application refused.

Representation: Patent attorney for the applicant: IP Gateway Patent and Trade Mark Attorneys Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2016204148

Title:Apparatus for Managing Transportation Vehicles

Patent Applicant: Amsted Rail Company, Inc.

Date of Decision: 23 June 2021

DECISION

None of the claims are for a manner of manufacture. There is no material within the application that would lead to a manner of manufacture if made the subject of a claim. The application is refused.

REASONS FOR DECISION

Summary of Reasons for the Decision

The invention, both as claimed and described, concerns the use of computer technology to allow for the storing and wireless access of certain information from a container attached to a transportation vehicle, where certain types of information, such as manifest information is secured so it can only be read by an authorised party, while other information, such as MSDS information, is non-secured and may be read by anyone. The invention, both as claimed and as described, comprises technical features in the form of the transportation vehicles, container and the computerised equipment used to store and access the information concerned.

However, it is quite clear from D’Arcy v Myriad Genetics Inc. [2015] HCA 35, amongst other authorities, that, whatever the subject matter, the question of patentability is one that must be assessed as a matter of substance. Thus, the mere presence of technical integers may not necessarily be sufficient to confer patentability where an objective assessment of the invention indicates that the substance thereof does not lie in the technical integers, but rather in an effect or result that has traditionally been held unpatentable, such as schemes, plans or the mere provision of intellectual information.

The application, when properly understood in the context of the state of the art, does not comprise any technical improvement or advance of the technical or practical features concerned. Rather these, in forms that they are well known and used for, simply form the background context to the substance of the invention, this being in the context of transportation of cargo by vehicles, providing vehicle cargo packing slip information and cargo safety information with the vehicle, such that the vehicle cargo packing slip information can be read remotely only by an authorised user, while the cargo safety information can be read remotely by other users (and authorised users).

I consider that the substance clearly amounts to a scheme that does not result in any technical benefit. It amounts to little more than the convenient placement of particular information for remote access to particular persons in a particular environment. Consequently, the invention, both as claimed and as described, is not for a manner of manufacture.

Background

Patent application 2016204148 (the “application”) was filed on 20 June 2016 in the name of Albert James Benedict and has an earliest priority date of 15 July 2015. I note that the application was assigned to Amsted Rail Company, Inc. on 27 May 2021. Hereinafter references to the “Applicant” refer to the Applicant of record as at the relevant time.
Examination of the application was requested on 12 October 2016. The first of three adverse examination reports issued on 24 September 2018, with the second examination report issuing on 16 November 2018 and the third examination report issuing on 1 July 2019. All these reports objected to the claims as not being for a manner of manufacture, and this remains the only objection outstanding on the application.
On 9 July 2019, the Applicant wrote to the Commissioner requesting to be heard in relation to the outstanding objections. On 15 August 2019, the Commissioner wrote to the Applicant, advising them that the hearing would be by way of written submissions due to be filed on 20 September. The Applicant filed their submissions in this regard on 16 September 2019 (the “submissions”).
On 18 December 2019, I wrote to the Applicant regarding apparent matters of common general knowledge (“CGK”) that might be significant to the decision and some documents regarding the same. I considered that these matters may be significant to assessing the patentability of the invention as claimed and potentially bring into question whether the application comprised an inventive step. The Applicant was provided an opportunity to make further submissions in view of this. The Applicant filed these written submissions (the “further submissions”) on 27 February 2020. For reasons that will become apparent, it is unnecessary to consider the question of inventive step in this decision.
On 28 July 2020 I again wrote to the Applicant inviting submissions in view of the recent decisions in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (“Rokt”) and Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (“Aristocrat”). The Applicant filed these submissions (the “second further submissions”) on 28 August 2020.

The Invention as Described

The application deals with apparatus and systems that allow for certain information to be made available or stored on vehicles transporting goods. Specifically, the apparatus concerned provides for storage of information regarding the goods being transported on the transportation vehicle, with this information being made available to persons external to that vehicle via computer technology. The system can store different types of information such that some information which is confidential may only be accessible to authorised users, while other information, like safety data, would be generally available to anyone. The nature of the invention as described is best understood by reference to figure 1, being the only figure of the application, which is reproduced below.

Figure 1 illustrates the system and apparatus of the invention and how this works as described. The system includes several transportation vehicles 12A, 12B, 12C, which in general could comprise any vehicle that is used for transportation purposes, for example trains, trucks, aircraft etc. Each vehicle 12A, 12B, 12C comprises respective containers 10A, 10B, 10C which are mounted onto the vehicles via a suitable arrangement 11.
Each of the containers 10A, 10B, 10C includes an outer shell 106 which houses a memory 101, wireless receiver 102, wireless transmitter 103, control unit 104, GPS 105 and power supply 107. The control unit 104 reads or writes information from/to the memory 101 upon requests to do so from first reader devices 13, these being in wireless communication with the control unit via wireless receiver 102 and wireless transmitter 103.
The memory 101 is arranged to have a secure or encrypted portion of data and a non-secure portion of data. The secure portion of data comprises vehicle cargo packing slip information, while the non-secure portion comprises safety information relating to the goods being transported. In use the first reader devices 13 make use of suitable encryption techniques such that they can access and display the secure information in addition to the non-secure information. As noted above the first reader devices 13 can both read and write to the memory 101. I also observe that the information stored can go beyond packing slip information and safety information, and could include data on the transportation vehicle, location, pressure, temperature, speed, maintenance reports, fittings etc.

10. In use the first reader devices 13 are employed by authorised persons at shipping and receiving locations to access the packing slip information and, based on its read/write abilities, to generally manage the information on the memory 101. The first reader devices 13 are also able to display to the authorised user the imminent arrival of all vehicles utilising the system that are within transmission range of the first reader devices 13, where the proximity of the vehicles is determined using GPS 105. There is no explicit statement regarding the portability or otherwise of the first reader devices 13, however it is reasonable to believe that they could be implemented in either a portable or non-portable format.

11. Conversely the second reader devices 14 are only able to access/read and display the non-secure information and, as depicted and described, do not appear to have the ability to write to the memory 101. The second reader devices 14 are said to be portable, such that they can be carried by first responders in an emergency who can thereby access the non-secure safety information.

12. The effect of the invention is probably self-evident from the discussion above, nevertheless the following passages from the application are instructive in this regard:

“The arrangement described herein therefore provides a method of attaching a virtual packing slip to a moving vehicle whereby the loading terminal can convey information relating to the cargo being carried so that the receiving terminal and one or more points along the way can have access to shipping information directly from the vehicle.
The cargo packing slip information, including but not limited to the waybill, the bill of lading, loading and offloading instructions, product description, hazardous materials warnings, is electronically stored in a wireless device, providing the onboard device, to be attached to the moving vehicle. This wireless device has the capability of communicating by radio signals to stationary communications boxes, or ‘access points’. The loading terminal access point is able to transfer or ‘download’ the packing slip information into read /write memory into the onboard device. The receiving terminal, or cargo offloading terminal, can transfer the packing slip utilizing a local access terminal and capture the information into appropriate applications used for accounting, product inventory, sales and similar functions.
The advantage with this process is that the packing slip information travels with the cargo and vehicle without the need for a physical paper or manual attachment of material or information to the vehicle. The receiving terminal is assured that the cargo information is correct and complete, as it has travelled with the cargo, rather than arriving indirectly by mail, facsimile or by electronic internet means.” (page 4, line 21 to page 5, line 19).
“This patent has further benefit to first responders. For example, emergency crews who are called out for incidents on railcars have no way to determine what is on board the railcars, other than through the placards attached to the railcars. The placards may already be damaged or in a hazardous condition, or might even be incorrect. If the first responders have an access point available to them, they are able to remotely read the packing slip on each railcar, before approaching the incident area and be better positioned to set up an emergency response plan.
Applicant believes that it would be beneficial to have every rail tank car in North America equipped with an onboard device, as a safety feature, and to have access points at all rail loading and offloading terminals for the interchange of electronic packing slips. The arrangement herein can protect the business process of uploading, conveying and downloading of the information inside the onboard device.” (page 6, line 10 to page 7, line 2)

The Claims

13. Several proposed amendments have been made to the application during examination. After the latest proposed amendments, the application comprises 15 claims, of which claim 1 is the only independent claim. Claim 1 reproduced below. The entire claim set is given at Annex A to this decision.

“1. Apparatus comprising:
a plurality of transportation vehicles each arranged to transport contents contained therein;
a plurality of containers each having a mounting arrangement by which the container is attached to a respective one of the transportation vehicles;
the container containing a data control system comprising:
a memory for storing received information; and
a transmitter for wirelessly transmitting required information from the memory when requested;
a receiver for receiving a wireless request signal;
a power supply;
a writer for storing data in the memory, the writer being arranged to create in the memory of a respective one of the transportation vehicles data including:
a secure section of data defining for the respective one of the transportation vehicles cargo packing slip information; and
a non-secure section of data defining for the respective one of the transportation vehicles safety information relating to the contents currently contained in the respective transportation vehicle;

at least one first reader device arranged to generate a first request signal sent by the first reader device to the receiver of the data control system;
and a plurality of second portable reader devices each arranged to generate a second request signal sent by the second reader device to the receiver of the data control system;
the first reader device and the data control system operating to transmit to the first reader device in response to said first signal the vehicle cargo packing slip having at least said information from the secure section of data for the vehicle which information is disclosed on a first display of the first reader device to an authorized person in possession of the first reader device; and
the second reader devices and the data control system operating in response to said second signal to disclose on a second display of the second reader device to a person in possession of the second reader device only data from the non-secure section defining for the vehicle said safety information relating to the current vehicle contents and not the data from the secure section.”

The Remaining Objection

14. As noted, the only objection outstanding is that the claims are not for a manner of manufacture.

15. This objection has been pursued throughout all three examination reports. The reasoning presented by the Examiner has remained generally consistent across the reports, with some apparent fine tuning of the arguments in view of amendments and submissions made by the Applicant. By the third report the objection may be summarised, in a general way, as alleging that the claimed invention is nothing more than a scheme for allowing access to certain information to certain persons, with nothing more than the routine use of computer technology to facilitate the scheme. This is perhaps best illustrated by the following passages from the third examination report:

“The substance of the invention lies in the presentation of packing slip and safety information to people based on certain rules. This represents no more than a scheme, the product of which is a presentation of information defined by its contents. Although the claims specify the use of a computer to implement the scheme, the use of technology contemplated is entirely routine and is not part of the substance of the invention…
…As discussed in the previous reports there is no ingenuity in the particular technology involved such that it could be fairly considered to be the substance of the invention. The components involved are not ‘very specific’, and at the level of detail at which the claims define them (e.g. a memory) it appears to include a standard computer, differentiated only by the specific location where it is provided and the conditions under which it provides certain information. However useful (in the ordinary sense of the word) such an arrangement may be in an emergency situation that usefulness does not derive from any improvement in the useful arts.”

The Applicant’s Submissions

16. The Applicant’s submissions comprise a procedural background of the application, a discussion of the specification, an outline on the claims and the nature of the remaining objection. I did not take these as diverging in any material sense from the earlier discussion of these in this decision. There was also an outline on the standard of proof and some discussion of the case law on manner of manufacture in Australia, which is best dealt with later in this decision.

17. The remainder of the Applicant’s submissions related to the patentability of the invention in the context of the remaining objection from examination. It is apparent that the Applicant does not disagree, in any fundamental sense, with the principles regarding patentability as outlined by the Examiner, but rather takes issue with the Examiner’s characterisation of the substance of the invention. This is apparent from [7.3] of the Applicant’s submissions:

“…if, in assessing the patentability of the invention defined in current claim 1 of the present Application, the Examiner intended to begin by identifying what in substance the claim is for, then the Applicant agrees that this, at least, is the correct starting point for the analysis. However, the Applicant submits that the Examiner appears to have fallen into error in the way in which he went about this analysis, with the consequence that the Examiner has misunderstood or mischaracterised what in substance is claimed in claim 1. In particular, the Examiner appears to have made the mistake which Robertson J warned of in Rokt by focusing only on certain elements of the claim in isolation, rather than focusing on what the claim as a whole is for as a matter of substance.”

18. The issue of the substance and its characterisation is more fully expanded upon in the Applicant’s submissions. It would seem that two issues are raised by the Applicant’s submissions. Firstly, the Applicant considers that the Examiner did not identify, the substance of the invention with sufficient precision, and secondly, the effect and characterisation of the substance.

19. The first issue is apparent at [7.9], [7.14] and [7.15] of the Applicant’s submissions:

“Following on from the above, the Applicant submits that the invention defined in claim 1 is not merely concerned with the mere presentation of information, or even just with what information is provided to different persons according to certain rules. In other words, the invention is not merely concerned with presenting different piece(s) of information to different people in different positions, or who have different authorizations to receive certain information, or the like. And it is certainly not the case that the invention is merely equivalent to one person simply verbally disclosing the relevant information to another, as the Examiner has implied…
…
And as mentioned above, the invention is concerned with which specific piece(s) of information are able to be accessed, how, and by which reader device(s), in the real-world application in which the invention is used, namely in the transportation of cargo by vehicle. Indeed, the apparatus defined in claim 1 (and therefore in all of the current claims) explicitly requires, not only the data storage and signalling features utilised by the data control system and the readers (which is all the Examiner appears to have focused on), but also:

-    a plurality of transportation vehicles each arranged to transport contents (i.e. cargo) contained therein,
-    a plurality of containers each having a mounting arrangement by which the container is attached to a respective one of the transportation vehicles, and
-    ‘a data control system’ contained in each container, which is what stores and transmits the above-mentioned secure information, and non-secure information.

The Examiner has apparently disregarded the fact that the invention defined in claim 1 is required to be used in the context of transporting cargo by vehicle. However, the Applicant submits that it simply cannot be correct to ignore this fact (i.e. that the claimed invention is required to operate in the context of the transportation of cargo by vehicle) in characterising what in substance the claim as a whole is for, as required by Myriad.” (emphasis in original)

20. The second issue is apparent at [7.17] of the Applicant’s submissions:

“The Applicant further submits that the Examiner’s apparent failure to recognise or acknowledge, or perhaps the Examiner’s decision to disregard, the above fact (i.e. that the invention operates in the context of transportation of cargo by vehicle) in attempting to define or characterise the substance of the presently claimed invention also lead the Examiner to overlook several of the benefits and advantages of the invention, which are only apparent/meaningful in the context of this real-world application in which the invention operates. Or, perhaps the Examiner’s apparent failure to recognise or acknowledge (or the decision to disregard) the above fact is what, in turn, led to the Examiner’s failure to recognise that these real-world benefits and advantages are inherently and inextricably linked to what the claimed invention is as a matter of substance.”

21. The putative benefits concerned are discussed further at [7.18] to [7.22]. These are perhaps best illustrated by [7.19], [7.21] and [7.22]:

“An important function (and indeed a real-world benefit) provided by the above features of the claimed invention is that the cargo packing slip information is stored electronically in the data control system associated with each container, and because the data control system associated with each container travels with the container and remains physically present with the container, it follows that the (electronically stored) cargo packing slip information contained in the data control system also travels with the container, rather than being sent separately via fax or post or email, as was the case in the prior art. This in turn means that, where the present invention is used, the cargo packing slip information will always arrive when the container arrives, so there will never be a situation where a container arrives before it’s (sic) associated cargo packing slip information has been received. Consequently, the present invention ensures that the cargo packing slip information will always be available to be accessed and used as required when the container containing the cargo arrives. This also removes (or it at least significantly reduces) the possibility of the packing slip information associated with the cargo contained in a particular container being lost, or the packing slip information not correctly matching the cargo in the container to which it is supposed to correspond. Thus, the above aspects of the invention clearly help to overcome “real-world” technical problems associated with the way these things were previously done. Also, there is clearly much more to what the invention does to enable these real-world problems to be overcome than the mere contents of the information itself (cargo packing slip information) provided, contrary to the Examiner’s comment in ER3
…
An important aspect (and indeed a real-world benefit) of these further features of the claimed invention is that wireless transmitters and receivers are used to transmit the safety information to persons in possession of the portable ‘second reader devices’. This enables e.g. first responders or emergency responders who are in possession of such a second reader devices (sic) to gain information about the contents or other safety-related information pertaining to the cargo in a particular container without having to physically approach (i.e. get close to) the container to inspect it. Without the present invention, a first responder might not have been able to know anything about the contents of a particular container at an accident or emergency site without approaching and inspecting the container, as there may often have been no information whatsoever about this provided on the container (or otherwise provided with the container and easily accessible in an emergency situation). Or, even if certain safety information were to be physically printed on or otherwise somehow attached to the container, there is a possibility that this might often be damaged or destroyed or dislodged or not accessible or not readable in the event of an accident or other emergency, and so this information still would not be able to be used by a responder. Furthermore, even if such safety information physically printed on or otherwise attached to the container could be accessed and read by a responder in the event of an emergency (i.e. even if this information was not damaged or destroyed or dislodged or unreadable, etc), this would still require the responder to approach (i.e. go right up to) the container to read the information, thereby possibly exposing the responder to danger (depending on the contents of the container). Thus, the above further aspects of the invention clearly also help to overcome other “real-world” technical problems associated with the way things were previously done. And again, there is much more to what the invention does to enable these other real-world problems to be overcome than the mere contents of the information itself (safety information) provided, contrary to the Examiner’s comment in ER3.
At the same time, the secure packing slip information stored in the secure section of the data, which is not required by emergency responders or the like, is not accessible by the second reader devices (and hence not available to persons in possession thereof, like e.g. emergency responders), so the invention still ensures that this secure or commercially sensitive information is only provided to the first reader device (and it will generally be the case that only certain authorised persons, typically at a delivery terminal or the like, will be in possession of, or have access to, or be able to view, the first reader device).”

22. Overall, it would seem that the Applicant does not argue that there is any ingenuity in the computerised technology used in performing the invention. Rather it appears that the Applicant argues that patentability is conferred as the invention provides a new or improved result, as indicated at [7.27] of the Applicant’s submissions:

“…it is unclear what the Examiner means by “the particular technology involved”. If by this the Examiner means to refer only to the data storage and data signalling aspects of the present invention, the Applicant accepts that he has not invented any new means or techniques for actually storing or transmitting data. However, for the reasons explained above, this does not mean that the claimed invention is not patentable because, where a combination of old integers is provided which, when placed together have a working inter-relation producing a new or improved result (which is certainly the case here, as discussed above), there is patentable subject-matter in the idea of the working inter-relation brought about by the combination of the integers. Thus, the fact that the presently claimed invention makes use of previously known data storage and transmission devices and techniques does not mean that the combination of these with other previously known integers in a new combination (as claimed) is not patentable.” (italics in original)

23. However [7.27] is perhaps qualified by [7.28]:

“Alternatively, if what the Examiner meant by “there is no ingenuity in the particular technology involved” is that there is no ingenuity in providing the particular new combination of integers that the Applicant has provided in claim 1, then this is really an allegation that the claimed invention lacks an inventive step (under subparagraph 18(1)(b)(ii) of the Act). However, if this is what the Examiner meant (i.e. that the claimed invention lacks an inventive step), firstly, such an objection has not been properly raised, and in any case, the Examiner has provided no evidence whatsoever to support (let alone properly make out) such an objection.”

This perhaps suggests that the Applicant may believe that there was some ingenuity in creating a combination of known integers of computer technology to as per the claimed invention. However, I consider it more likely that what is meant here is that the ingenuity resides in the matters discussed at [19] of this decision above, rather than in technical implementation of the claim per se.

Relevant Legal Principles

Manner of Manufacture

24. The statutory basis for manner of manufacture is found at s18(1)(a) of the Patents Act 1990 (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.”

25. 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’”

26. 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.”

27. 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 (at [47]) Mr Grant’s claimed systems and methods were not for a manner of manufacture in the sense described in NRDC:

“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.”

28. 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 (“Myriad”) 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 invention are such that the invention as claimed should not be treated as patentable by judicial decision”.

29. It was 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.”

30. 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. In particular at [99] to [107] of RPL, their Honours reiterated a series of these principles from Research Affiliates (in particular at [94]). I note that the principles from Research Affiliates and RPL were recently cited with approval in 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.

31. Conveniently the principles concerned have been summarised at [189] of Rokt Pte Ltd v Commissioner of Patents (“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].’”

32. I note that the above principles were explicitly accepted by Robertson J. at [201] of Rokt Pte Ltd. While the decision in Rokt Pte Ltd was overturned in Rokt this was not on the basis of any error in the principles listed above, which I accept are correct, noting that [189] of Rokt Pte Ltd represents a convenient summary of the principles from RA and RPL. I also note that essentially identical principles were adopted by McKerracher J in Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (“Repipe”) at [39(5)].

33. It is clearly worth noting that the invention as claimed and described is not as much a “computer implemented” invention as per RPL Central and Research Affiliates. Unlike those cases the claimed invention comprises transportation vehicles and containers as physical components beyond computerised hardware and software. However, as noted in Encompass, at [80] to [81] in commenting on Myriad, whatever the subject matter, the question of patentability is to be answered as one of substance:

“Thus, when determining whether a claimed invention is a manner of manufacture, a question of characterisation of the invention is involved. However, the question of characterisation is the broad question posed by the High Court: whether the invention is proper subject matter according to the principles developed for the application of section 6 of the Statute of Monopolies.
Secondly, this question of characterisation is to be addressed as a matter of substance, not merely as a matter of claim form. In Myriad, Gageler and Nettle JJ so held at [145], adopting an observation by the Full Court to that very effect in Research Affiliates at [107]. The plurality in Myriad at [87] – [88] and [94] also emphasised the need to approach the characterisation of the invention as a matter of substance, saying:
94 Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic acids, embodies a product created by human action that is not sufficient to support its characterisation as a manner of manufacture. The substance of the invention as claimed and the considerations flowing from its substance militate against that characterisation. To include it within the scope of a ‘manner of manufacture’ involves an extension of that concept, which is not appropriate for judicial determination. …”

34. Thus, it is apparent that the mere presence of physical integers, whether computerised or otherwise, is not necessarily sufficient to confer patentability. The claimed invention must be considered as a matter of substance.

35. Based on the Applicant’s submissions it would seem that there was no real dispute regarding the legal principles involved, as apparent at [5.3] and [5.4]:

“In Rokt Pte Ltd v Commissioner of Patents (Rokt), Robertson J held that a digital advertising and method was a “manner of manufacture within the meaning of section 6 of the Statute of Monopolies” under paragraph 18(1)(a) of the Act. In coming to this decision, Robertson J observed at paragraph 200:
‘200 Turning to the substance of the appeal, in my opinion, despite the copious reference to the authorities in the submissions of the parties, the resolution of the appeal lies largely in the realm of facts. I did not discern any substantial relevant differences between the positions of the parties as to the legal principles to apply.’

The Applicant submits that the same is probably true of the present situation concerning the examination of the present Application. That is, there does not appear to be any disagreement between the Applicant and the Examiner regarding what legal principles should be applied to the assessment of whether the invention claimed in the present Application relates to patentable subject matter. Therefore, the differences (disagreement) between the Applicant and the Examiner relate not to the legal principles that should be applied, but to the way in which those legal principles are applied to the facts (and specifically to the particular invention claimed) in the present Application.” (emphasis in original)

36. Notably the principles alluded to here by the Applicant are clearly those developed for computer implemented inventions as outlined in RA, RPL and Encompass for example.

37. It is perhaps convenient here to note that the Applicant has made submissions, for example at [7.17], [7.19] and [7.21] of the submissions, about the alleged effects or advantages of the claimed invention in terms of real-world benefits or advantages. I take these to be commensurate with assertions of there being “a practical and useful result” as per the considerations outlined at [35] of Aristocrat Technologies Australia Pty Limited [2016] APO 49 (“Aristocrat Technologies”). Notably this was one of the considerations, distilled from the authorities by the Delegate, given as part of a non-exhaustive list of relevant considerations in assessing the substance of computer implemented inventions. I understand that the plain meaning of the phrase “practical and useful result” was used in Aristocrat Technologies, which is how it has been interpreted where used in this decision.

38. It is of perhaps of some note that “a practical and useful result” does not explicitly appear as one of the considerations in this decision, by virtue of its absence in Rokt. This perhaps begs the question of the relevance of “a practical and useful result” in assessing the substance. As far as that goes I am of the view that the explicit absence of “a practical and useful result” from Rokt (and in this decision) should not be taken as positive evidence that considerations of “a practical and useful result” are now entirely irrelevant in assessing the substance of an invention in all cases or circumstances. Rather, it may be suggested that a “practical and useful result” can be viewed as a kind of threshold requirement that is perhaps of greater utility where a claimed invention is entirely and manifestly an abstraction of the kind in Grant. The absence of any “practical and useful result” in a claimed invention is indicative of a pure abstraction and it is likely that one need go no further in considering patentability.

39. However, it is also apparent that a “practical and useful result” is not necessarily determinative of patentability in a positive sense. Notably in RA at [114] it was stated that:

“The invention set out in the specification is directed to the index itself. The method of the invention is not one that has any artificial or patentable effect other than the implementation of a scheme, which happens to use a computer to effect that implementation. There is no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors. To take the words of NRDC at 268, the process does not produce ‘either immediately or ultimately, a useful physical result in relation to a material or tangible entity.’ The claimed method, the result of the ingenuity of the inventors, does not produce such a result; the ingenuity is in the scheme. Again, drawing from NRDC at 270, there is a useful result of the claimed process but there is no physical thing ‘brought into existence or so affected as the better to serve man’s purposes’. There is no ‘physical phenomenon in which the effect, be it creation or merely alteration, may be observed’ (NRDC at 276).” (emphasis in original)

Similarly, the presence of an uncontested “useful effect” in RPL (at [40]) did not prevent a conclusion that that invention was not for a manner of manufacture.

40. Both these cases, and especially RA, suggest that the nature of any “practical and useful result” needs to be understood before any positive conclusions on patentability can be reached. Thus, where the claim is to more than a manifest abstraction it is likely that further analysis beyond considerations of a “practical and useful result” will be needed before a proper conclusion on patentability can be reached. In such cases it is reasonable to believe that such further analysis, when undertaken appropriately, would in any case expose a “practical and useful result” that is of the correct nature as understood in the authorities to confer patentability, even where no explicit consideration of a “practical and useful result” has been undertaken.

41. Despite the Applicant apparently agreeing on the principles concerned, I observe that the Applicant stated the following in the further submissions at [13.88]:

“We also refer the Hearing Officer to the recent case of Technological Resources Pty Limited v Tettman [2019] FCA 1889 which provides an example of the dangers of (and the incorrect results that can flow from) attempting to apply legal principles relating to “manner of manufacture” that have been developed in cases concerning purely computer-implemented inventions to cases and inventions (like the present) where the invention makes use of electronic data storage and transmission technology but the substance of the invention (and contribution it provides to the relevant art) does not actually lie in the use of that technology. The present Application is just such a case, and therefore the Applicant submits that attempting to apply manner of manufacture principles that have been developed in (and which are applicable only in) cases concerning purely computer-implemented inventions (like e.g. the cases of Research Affiliates and RPL Central) is highly likely to lead to an incorrect finding in relation to whether the present invention relates to patentable subject matter.”

42. This suggests that the Applicant now questions the applicability of principles developed for computer implemented inventions to the present Application. However, the invention in Technological Resources Pty Limited v Tettman [2019] FCA 1889 (“Tettman”) did not concern in any way the use of, or the implementation of anything by the means of, computerised technology, nor did it involve a business method or scheme of some kind. It was on this basis that Jagot J distinguished (at [154]) Tettman from RA et al. It is quite clear that the situation in the present invention cannot be compared to that in Tettman given the presence and use of computerised technology and of the provision of information per se in the claim, such that the apparent “exclusion” in Tettman of considerations from RA et al does not apply. In this respect I note that the Applicant’s submissions here are rather mercurial in that they presuppose that the reason why the principles from RA et al are inapplicable is due to the fact that, despite the presence of computer technology, the substance does not reside in the use of computer technology, without actually identifying what principles were used to identify that substance.

43. I also note the Applicant’s submissions regarding Aristocrat at [17.2] of the second further submissions. As observed by the Applicant, in Aristocrat Burley J considered that assessment of the substance of the invention proceeded by way of, firstly, asking whether the claimed invention was for a mere scheme and, then, if the initial question is answered in the affirmative, to determine (at [91]) “…whether the computer-implemented method is one where invention lay in the computerisation of the method, or whether the language of the claim involves (to use the language employed in Rokt at [84]) ‘merely plugging an unpatentable scheme into a computer’”. It is clear, however, that Justice Burley’s answering of the initial question in the negative in Aristocrat was based on the fact that he considered the electronic gaming machine (“EGM”) to comprise a device of particular construction with a specific character; see Aristocrat at [95] to [98]. It is not apparent to me that the present application either claims or describes a device of particular construction comparable to the EGM from Aristocrat; there is no recognisably well-defined or predefined device of a certain character or construction, more of which I will discuss later in this decision. Therefore, I do not consider it appropriate to conclude that the invention is not for a mere scheme as per Aristocrat.Beyond this I did not take Aristocrat as necessarily varying the fundamental requirement to assess a claimed invention as a matter of substance as established in RA, RPL, Encompass and Rokt, and, for that matter, the High Court in Myriad as noted above.

44. Overall, I do not take the Applicant to be disputing that the question of patentability, as outlined by the High Court and the Full Court, is one to be answered as a matter of substance. I note that the present invention clearly makes use of computer technology, which suggests that the principles from Rokt Pte Ltd are appropriate. However, I also observe that the claimed invention extends to technical features which do not comprise computer technology. If the question is one of substance (and I maintain that it is), then what principles are to be utilised to assist in determining whether these non-computer technical features form part of the substance of the invention or not?

45. Although not framed in exactly this way, it can be seen that the previous authorities recognised that computers and associated technology were technical in nature as opposed to schemes, ideas and plans which are not. For example, in RA the Full Court stated (at [118]) that “It is no part of the claimed method that there is an improvement in what might broadly be called ‘computer technology’”, whilst “The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme” (at [118]). In RPL, at [96], the Full Court stated that “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”. In Encompass the expanded Full Court reiterated [96] of RPL (at [95]) and later stated (at [99]) that “…we accept the respondent’s submission that the method claims in suit are, in truth, no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology.” In Rokt the Full Court noted, at [93], that “The proper question is whether that scheme has simply been put into effect using computer technology, a subject to which we return below.”.

46. It is thus apparent that the principles adopted in RA, RPL, Encompass and Rokt were effective in helping to determine the substance of the invention where there were schemes (non-technical features) and computerised apparatus or functions (technical features) present in the claimed invention. Given this, while I do not consider it in any way to be definitive, I am of the view that, where a claimed invention comprises aspects that are both technical and non-technical in nature, the principles that have been established for assessing the substance of computer implemented inventions, as summarised in Rokt Pte Ltd above, may be appropriately generalised to non-computerised technical features, namely:

·     Is the contribution to the claimed invention technical in nature?
·     Does the invention solve a technical problem with respect to the technical features?
·     Is there an improvement in the functioning or abilities of the technical features?
·     Are the technical features merely used for their generic functions or abilities or are there steps foreign to the normal use of the technical features?
·    Are the technical features concerned merely an intermediary or provides a context for carrying out a method but adds nothing to the substance of the idea concerned?

47. The above does beg the question as to what comprises technical as opposed to non-technical material? Attempts at a definitive definition, at least in the patent sense, are fraught with difficulty and probably doomed to failure. However, it can be said, based on the authorities in RA et al and the traditional understanding of “technical” in the case law, that there is, broadly speaking, a dichotomy between things like computerised apparatus, tools, solar cells and processes for creating the same being technical or practical in nature while mere schemes, plans, ideas, information and artistic and literary works are viewed as non-technical. In many cases where a feature lies in that dichotomy will be manifest and uncontroversial. Where there is some difficulty it is likely that recourse to the relevant authorities will assist in helping to determine whether something is technical or practical in nature or not.

Stringency of Tests

48. As examination was requested after 15 April 2013, the substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the present application. In particular the amendments to s49 of the Act allow the Commissioner to refuse an application if she is not satisfied on the balance of probabilities that the invention, so far as claimed, satisfies the criteria of s18(1)(a). Notably the criteria outlined at s18(1)(a) is that 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”.

Do the Claims Comprise a Manner of Manufacture?

49. I will initially consider this question with regard to independent claim 1 and will further consider the dependent claims if necessary.

Claim 1

50. It is perhaps trite, but the fundamental question I need answer is what does the claimed invention comprise as a matter of substance? To assist in answering that question I note that claim 1 can be summarised as follows:

i.there are a plurality of transportation vehicles ;

ii.there are a plurality of containers each having a mounting arrangement by which the containers are attached to a respective one of the vehicles, each container containing apparatus;
iii.the apparatus comprises memory, a data control system, a power supply, a data writer and wireless transmitter and receiver;
iv.the writer stores data in the memory, this data comprising secure data encoding vehicle cargo packing slip information, and non-secure data encoding safety information relating to the cargo;
v.at least one first reader device that is able to wirelessly access and display the secure data to an authorised person in possession of the first reader device; and
vi.a plurality of portable second reader devices that are able to wirelessly access and display only the non-secure data to a person in possession of a second reader device.

51. I will now consider whether the claimed invention is patentable by recourse to the considerations at [189] of Rokt Pte Ltd.

Is the contribution to the claimed invention technical in nature?

52. To assess this requires an understanding of the technical features of the invention, both individually and collectively, and the effect of carrying out the invention.

53. There are clearly individual technical features encompassed within each of integers i to vi identified above. It is clear that these work together to allow the provision of cargo packing slip information to only those who are authorised while safety information is available to other persons, this being in the context of transportation vehicles.

54. To understand what the technical features contribute to the invention, it is useful to understand what is common general knowledge (“CGK”) in the art, although I note that the High Court majority in Myriad held (at [12]) that assessment of patentability of a claimed invention is made with reference to the relevant prior art, of which the CGK is a subset – that is it is not strictly necessary to establish something as CGK in assessing patentability of a claimed invention.

55. In terms of the CGK, I note that in my letter to the Applicant of 18 December 2019 I wrote as follows:

“In considering this matter it would seem that there are several items of apparent CGK that may be of some significance in determining whether the invention as claimed or as described comprises a manner of manufacture.
Firstly, containers having a mounting arrangement by which they can be attached to a transportation vehicle would seem to be well known in the art. This is evidenced by the fact that there is an IPC symbol present in the 2006 version of the IPC as follows: B60R 9/055 - supplementary fittings on the exterior of vehicles for carrying loads associated with the vehicle roof and being enclosure type carriers e.g. containers or boxes. Although it is not stated in the title of the IPC symbol, it would seem reasonable to infer that such containers or enclosures as per B60R 9/055 do in fact comprise mounting arrangements to attach the container or enclosure to the exterior of the vehicle.

Secondly claim 15 specifies that the container includes an exterior weatherproof and secure shell. It seems reasonable to conclude that it was well known for containers as known in the art to have an exterior weatherproof and secure shell. This is especially so in view of the fact that the containers from B60R 9/055 are attached to the exterior of vehicles.
Thirdly, it would seem that the association or integration of computerised apparatus or systems with transportation vehicles for the purposes of storing data on (or in) and wirelessly accessing/transmitting such data to/from a transportation vehicle is well known in the art. This is evidenced by the following:
i.D1: The guide “Information Technology for Efficient Road Freight Operations” by Freight Best Practice of the United Kingdom. This document was published in 2006 and makes it clear that the use of wireless information technology onboard transportation vehicles was well known in 2006 for: Paperless Manifest/Proof of delivery Systems (page 17); in-cab communication systems (page 25); vehicle tracking systems using GPS (page 26) or combinations of these systems (see the aforementioned pages). Pages 45 and 46 of this document also make it clear that both active and passive RFID systems are well known in the art for the purposes of tracking goods that are being transported;
ii.D2: Harris et al “ICT in multimodal transport and technological trends: Unleashing potential for the future” in the International Journal of Production Economics, volume 159, January 2015, pp88-103. This document states at page 91 that “ICT management systems enable the tracking monitoring, and controlling of cargo and vehicles; they are underpinned by the appropriate reporting tools and based on real-time related information through the integration of various technologies such as on-board computers, web-based tools and short range identification technologies”.
iii.D3: Grabara, J. et al “The Role of information System in Transport Logistics” in the International Journal of Education and Research, volume 2, 2 February 2014, pp 1 to 8. This article indicates, at page 5, that the use of electronic and wireless technology to exchange information between the vehicle and external devices was already well known in the art.
iv.D4: “Cybersceurity of Freight Information Systems – A scoping study” Committee on Freight Transportation Information Systems Security, Computer Science and Telecommunications Board and Transportation Research Board 2003. This document, in discussing existing IT applications, indicates that it was known for trucking companies to use GPS and digital telephones for confirming pick up, tracking and delivery confirmation of goods (page 22). This document also indicates that it was well known for all locomotives and rail cars to be tagged with automatic identification transponders to facilitate tracking of shipments (page 23).
v.D5: Webpage 21 June 2015, accessed from as well as Chapters 1, 5 and 14 from “A Comprehensive Guide to Fleet tracking Systems” 21 June 2015 accessed from (chapter 1); (chapter 5) and (chapter 14). These documents make it clear that the use of telematics was well known for fleet tracking and management before the priority date.

Fourthly, it seems reasonable to believe that the following items were well known in the art as at the priority date:
·     portable computerised devices, such as smartphones, tablets, laptops etc.;
·     data encryption techniques; and
·     transportation vehicles per se.”

56. The Applicant responded to this at [13.1] to [13.38] of the further submissions. Broadly speaking I consider that it is fair to characterise the Applicant’s statements here as not necessarily disagreeing with the fact that the above items were known (if not well known) but disputed the relevance of these to an assessment of the patentability to the present invention. This is apparent, for example, at [13.3] to [13.4]:

“The Applicant agrees that the existence of IPC symbol B60R 9/055 in the 2006 edition of the IPC suggests that these kinds of car rooftop cargo boxes (and the like) were generally known prior to the (2015) priority date of the claims in the present Application. The Applicant also agrees that such car rooftop cargo boxes (and the like), as may have been known before the priority date, would generally have included mounting means to allow them to attach to the roof (or to some other portion of the exterior) of a car or other private vehicle.
However, as discussed above, the substance of the present invention and the contribution it makes to the art, has nothing whatsoever to do with private cars (or other private vehicles) or the kinds of rooftop boxes (or other attachable cargo carrying devices) that may have been used with such private vehicles. On the contrary, the invention is concerned with things like trains, trucks, container ships, etc, and the kinds of containers used with these kinds of large commercial cargo transportation vehicles.”

57. I can accept that the claims, via the recital of packing slip information, are directed to commercial transportation vehicles. However, these submissions otherwise ignore the fact that the “container” recited need not be a bulk cargo type of container as suggested by the Applicant. More generally the “container” could simply be a rather smaller container comprising the features of integer iii where this container is mounted to the roof (or elsewhere) of the transportation vehicle. The submissions also ignore the fact that the IPC symbol concerned is with regard to all vehicles without distinction – that is it encompasses cargo transportation vehicles as well as vehicles for private use.

58. A further example of how the Applicant disputed the relevance of the items discussed in my letter, beyond the alleged distinction for commercial vehicles, is apparent from the Applicant’s further submissions at [13.38] (cited above) and also at [13.36]:

“Once again, the Applicant agrees that these things probably were at least known before the priority date. However, once again, although the presently claimed invention makes use of portable electronic data storage and transmission devices, data encryption techniques, and transportation vehicles, these things alone are not part of what makes up true substance of the present invention or the contribution it makes to the art. Therefore, even though the invention makes use of these things, the fact that these things were already known actually has no bearing on the question of whether the invention (when it is true substance and the contribution it makes to the art are considered) relates to patentable subject matter. Basically, these things are not actually related to the substance of the invention or the contribution it makes.”

It would seem that what the Applicant is saying in these paragraphs (and elsewhere) is that while the features concerned may be known and used in the claimed invention, they do not form part of the substance of the claimed invention.

59. Turning now specifically to what is well known in the art, I was of the opinion that the following forms part of the CGK:

a)   the association or integration of computerised apparatus or systems with transportation vehicles for the purposes of storing data on (or in) and wirelessly accessing/transmitting such data to/from a transportation vehicle (based on items D1 to D5 from my letter to the Applicant;
b)     portable computerised devices, such as smartphones, tablets, laptops etc.;
c)   data encryption techniques;
d)     containers having a mounting arrangement by which they can be attached to a transportation vehicle, and having an exterior weatherproof and secure shell; and
e)   transportation vehicles per se.

60. I note that the Applicant, while accepting that the above items were probably known before the priority date, does not necessarily accept that these were CGK, as evident from [14.2] of the Further Submissions:

“The Applicant strongly disagrees with the Hearing Officer’s several statements above suggesting that the subject matter claimed in (any of) the current claims of the present Application lacks an inventive step. However, before discussing the reasons why, the Applicant proposes to first set out certain points in relation to which the Applicant actually agrees with the Hearing Officer, specifically in relation to things that probably would have been known before the priority date. In this regard, the Applicant agrees that the things listed below would all probably have been known before the priority date of the claims in the present Application. It is possible that these things may also have been sufficiently widely known, in the field to which the present invention relates, to have been common general knowledge. However, for all of the various things the Hearing Officer has referred to, further evidence would be required to prove this last point. That is, further evidence would be required to prove that these things were, in fact, so widely known as to have become part of the common general knowledge known to all in the specific field to which the invention relates. Therefore, for the avoidance of doubt, whilst the Applicant agrees that all of the things listed below would probably have been known before the priority date, the Applicant does not necessarily concede that these things (or all or any of them) were common general knowledge in the relevant art before the priority date.
(a)Use of wireless information technology in commercial road freight operations (and probably also in e.g. rail freight operations and the like too);
(b)Tracking of cargo on commercial cargo transportation vehicles;
(c)Communication between vehicles (including commercial cargo transportation vehicles) and external device by wireless and electronic devices;
(d)Use by trucking companies (and probably also rail companies, etc) of GPS and digital telephones for tracking of commercial cargo;
(e)Use by fleet systems of telematics for tracking commercial cargo;
(f)Use of a weatherproof shells on cargo-carrying containers;
(g)Portable computerized devices;
(h)Data encryption techniques; and
(i)Use of commercial cargo transportation vehicles (and containers therefor) for the commercial transportation of cargo.” (emphasis in original)

While these statements were made in the context of a discussion on inventive step, I take the fact that the Applicant does not consider these items to be CGK to be equally relevant to the question of what was CGK or generic in the art for the purposes of assessing the substance of the invention.

61. Despite the Applicant’s suggestions to the contrary, I do not consider that further evidence is necessary to establish the items indicated at [59] and [60] as CGK. Indeed, the items given at [59(b)] to [59(e)] may be accepted as CGK with little controversary. For [59](a)], I consider that D1 to D5 provides sufficient evidence of this being CGK in the art. In this regard these documents discuss the use of wireless information technology in the context of transportation in a manner that indicates use of the systems and apparatus concerned were well known before the priority date, especially when D2 to D5 are considered in toto. For example, D1 is a guide published in 2006 that discusses information technology solutions already available for use at that time. Similarly, D5 discusses off the shelf products and systems available for selection before 21 June 2015. In addition, these documents provide further impetus to concluding that [59(b)] and [59(c)] are CGK, noting that these comprise a subset of technology that falls within the ambit of what is discussed in D1 to D5. I observe that a finding of CGK is indicative of something that is more widespread in the art beyond merely being state of the art.

62. I also note that the Applicant’s contentions regarding CGK appear to be rather misconceived. The question of whether something has become CGK is not whether it has become CGK to all working the relevant field – rather it is whether it has become CGK to the person skilled in the art, noting that such a person is a legal fiction created for the purposes of the Act.

63. Given the nature of the CGK above, it is quite clear that the inclusion of features iii to vi in combination within the bounds of the claim to provide cargo packing slip information only to an authorised party and safety information to other parties extends to nothing more than a generic use of computing technology as well known in the art.

64. Similarly, the other technical aspects of the claimed invention, in the form of the transportation vehicles and the containers are merely defined and utilised in the claim at a generic level for their usual functions. It is also clear that the combination of all the technical elements of the claim, both computerised and non-computerised, does not result in any technical contribution in that they are only brought together, without any apparent technical difficulty overcome or technical improvement, for the purposes of facilitating the provision of the types of information to certain persons as discussed above.

65. Consequently, it is clear that the contribution to the claimed invention relates to the provision of cargo packing slip information only to an authorised party and safety information to other parties. This, as it stands, is not a technical contribution as it simply relates to providing certain types of information and who is able to access this information.

Does the invention solve a “technical” problem with respect to the technical features?

66. As best understood from the Applicant’s submissions at [7.17] to [7.22] that the claimed invention overcomes problems regarding:

packing slip information being sent separate to the cargo via fax, post or email and being lost or incorrect; and
providing cargo safety information to emergency services without needing to come close to the cargo in the event of an accident.

I can accept that solving these problems might involve solving a technical problem, but I do not necessarily consider that these are technical problems per se.

67. In any case, based on my discussion above, it is quite clear that the technical aspects of the claim comprise well known features that are simply plucked off a shelf and arranged and utilised for their well-known properties. There is no technical problem or barrier that is overcome within or without of the computerised technology involved. The same applies to the transportation vehicles and the containers.

Is there an improvement in the functioning or abilities of the technical features?

68. There is no apparent improvement in the functioning of the computerised apparatus as such – it is merely used for its well-known abilities of being able to store and retrieve information wirelessly. The computerised apparatus is merely distinguished by the nature of the information it comprises and who is able to access this information.

69. Similarly, the container is merely utilised for its well-known abilities to hold things and is only distinguished from an otherwise “naked” container by the fact that it comprises computerised apparatus characterised by the nature of the information it comprises and who is able to access this information. No improvement in the actual functioning or abilities of the container are apparent in carrying out its role in the claim, which as stated is to be nothing more than a container.

70. With respect to the transportation vehicles, the inherent function and abilities of these (as transportation vehicles per se) remains unchanged as a result of the claimed invention. They are not, for example, structurally improved. However, it is clear that as a result of the claim they now comprise packing slip information which can be remotely accessed only by an authorised user as well as cargo safety information which can be remotely accessed by other users, particularly emergency services in the event of an accident. Noting the CGK as discussed earlier in this decision, there is no improvement in terms of allowing for remote access of information from transportation vehicles as such, this already being well known in the art; that is the remote access here is merely conceptual in nature and does not offer anything of substance to the claimed invention

71. This can be broadly understood as providing an improvement over previous transportation vehicles in that it provides these with something that was not previously available, at least based on the available prior art. As observed earlier in this decision, the Applicant has alluded to this throughout their submissions by reference to “real-world benefits” or a “real-world benefit” which I consider amount to, in effect, submissions that the invention produces a “practical and useful result”.

72. Overall, there is no improvement in the functioning and abilities of the technical features, at least in a technical sense. The transportation vehicles, computerised apparatus and container, are in terms of their inherent functioning and abilities, are indistinguishable from those well known in the art. Rather the transportation vehicles, computerised apparatus and container are distinguished by the nature of the information carried on/with the same and who can access these different types of information as discussed at [64]. This can be accepted as an improvement, in a general sense, if not in a technical sense. Consequently, there is no relevant improvement for the purposes of conferring patentability.

Are the technical features merely used for their generic functions or abilities or are there steps foreign to the normal use of the technical features?

73. For reasons as discussed above, it is quite clear that all the technical features of the claimed invention are being used in a generic sense in that use is merely made of the well-known functions and abilities of the same. There is nothing in the use of any of the technical features which is foreign to the normal use of these.

Are the technical features concerned merely an intermediary or provide a context for carrying out a method but adds nothing to the substance of the idea concerned?

74. For reasons as discussed above the computerised features are specified at only a generic level to merely facilitate the idea of providing packing slip information to only authorised persons and having cargo safety information which can be accessed by other persons. That is, they are merely an intermediary facilitating the idea concerned and add nothing of substance to the same.

75. Similarly, it is quite clear that the container merely serves as an entity in which the relevant computerised apparatus, such as a memory, wireless transmitter, wireless receiver, a power supply and a writer for writing to the memory are held. The container does not modify the function of the computerised apparatus in any way. It merely performs its normal or usual function of holding things. Thus, it is apparent that the container is merely an intermediary that is specified only to a generic degree to facilitate the provision of the information concerned and who can access this information, without adding anything of substance to the invention.

76. The transportation vehicles, while merely present in a generic sense, are perhaps more to provide context to the idea to provide certain information and who can access it. That is these provide a genesis to the idea and provide a real-world context to the same. However other than this the transportation vehicles add nothing of substance to the claimed invention.

The Applicant’s Submissions and the Nature of the Result

77. I consider it appropriate to now consider the Applicant’s submissions on manner of manufacture before continuing. As observed earlier in this decision, the Applicant’s contentions of patentability effectively reside in assertions that the effect of the claim, in terms of the end result renders the claim patentable:

“…Indeed, as discussed in detail above, the invention enables the correct (packing slip and/or safety) information to be provided to the correct reader devices much more safely and easily and more reliably than previous printed or paper-based methods used for this. Therefore, to say that the invention does not provide an improvement in the useful arts is, in the Applicant’s respectful submission, plainly wrong.” (Applicant’s submissions at [7.32])

78. This argument appears to highlight that the invention is making use of the well-known properties of computerised devices to access, receive and store data remotely and to restrict access to data to certain users if so desired. Similarly, the statements at [7.24] to [7.27] that the invention comprises a combination of old integers producing a new or improved result would seem to also highlight that, the substance of the invention does not lie in the creation of the combination of integers as such, but rather is as identified above.

79. Turning to the present claims, I consider that it is apparent that these comprise technical and physical features, as opposed to the situation in Grant and in Watson v The Commissioner of Patents [2020] FCAFC 56 where the claims in both those cases were manifestly directed to an abstraction. Consequently, in the present case I am of the view that consideration of a “practical and useful result” is of comparatively limited utility in comparison to those from Rokt and does not materially add anything to the analysis that cannot be gleaned from the Rokt considerations. In this respect it is apparent that the general improvement discussed at [68] above can be viewed as a “practical and useful result”. The difficulty for the Applicant is that this “practical and useful result” is not one that leads to patentability.

What is the substance of the invention and is this patentable?

80. On weighing up the above considerations, which all suggest that the substance does not reside in the technical features but rather in the provision of and access to certain types of information, it follows that the substance of the invention does not reside in the computerised technology utilised, either alone or in combination, nor in the transportation vehicles or the container or the combination of all these technical features in the claim. Rather the substance of the invention resides in a scheme for achieving the effect or result of the claimed invention. Put simply this is:

· in the context of transportation of cargo by vehicles, providing vehicle cargo packing slip information and cargo safety information with the vehicle, such that the vehicle cargo packing slip information can be read remotely only by an authorised user, while the cargo safety information can be read remotely by other users (and authorised users).

81. I observe that this is rather similar to the substance as discussed in the Applicant’s submissions. One difference to note is that the Applicant referred to the “how” (for example at [7.12] of their submissions) as relating to the use of wireless signal transmission. Noting my comments above, I do not consider that wireless technology forms part of the substance – rather it is simply used for its well-known properties as an enabler to allow for different “levels” of remote access to the data.

82. It is perhaps helpful at this point to further consider the Applicant’s comments regarding Aristocrat from the second further submissions at [17.3] to [17.7]:

“The Applicant submits that this reasoning of Burley J in Aristocrat (and specifically His Honour’s finding that the invention described and claimed in the case, when properly understood as a matter of substance, is not a mere scheme or plan but rather a mechanism of particular construction, the operation of which involves a combination of physical parts and computer-implemented elements to produce a particular outcome) applies equally to the present Application, and for exactly the same reasons.
In other words, the Applicant submits that, just like the invention in Aristocrat, the invention in the present Application also relates to a physical apparatus of a particular construction, the operation of which involves a combination of physical parts and computer implemented elements, and it achieves useful and commercially valuable results which are of particular significance for first responders.
We also draw the Hearing Officer’s attention to paragraph 96 of the Aristocrat decision, where Burley J discusses the various physical features of the invention involved in that case, their function and significance, and after discussing these things Burley J concluded that:
98. The result is that to the person skilled in the art, the invention may be characterised as a machine of a particular construction which implements a gaming function. It yields a practical and useful result. 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. In this regard, the physical and virtual features of the display, reels, credit input mechanism, gameplay mechanism and game controller combine to produce the invention. It is a device of a specific character.

The Applicant submits that exactly the same reasoning should apply to the present Application.
In this regard, the Applicant also points out that the analysis by Burley J of the various physical features of the invention involved in the Aristocrat case, their function and significance, and the impact of this on the determination of patent eligibility, is exactly analogous to the Applicant’s analysis relating to the physical features of the present invention, as was presented previously in paragraphs 7.17 – 7.22 of the Applicant’s ‘Original Submissions’ dated 16 September 2019 and paragraphs 12.10-12.19 of the Applicant’s ‘Further Submissions’ dated 27 February 2020.” (emphasis in original)

83. However as discussed earlier in this decision, Aristocrat does not detract from the fact that the claimed invention must be assessed as a matter of substance. In Aristocrat the substance of the invention was a device (i.e. a gaming machine) of particular construction that was made and constructed to perform a specific purpose as defined in the claims where it is not possible to customise the device to undertake other functions. This is unlike the case in RA, RPL and Encompass which involved the implementation of schemes in general purpose computing devices. As should be apparent from my discussion earlier in this decision, the fact that the present invention only utilises general purpose and well-known aspects of computing technology and other technology, for example the container concerned, for implementation purposes means that there is no device of particular construction and the substance as properly understood is as outlined at [80] above.

84. The Applicant has also supported their allegations of patentability by comparing the present invention with the situation in Fishburn’s Application (1938) 57 RPC 245; Pitman’s Application [1969] 86 RPC 646 and Organon Laboratories Limited’s Application [1970] 87 RPC 574. However, it is apparent that there are material advantages in Fishburn’s Application, Pitman’s Application and Organon Laboratories Limited’s Application that provide for patentability as asserted in the Applicant’s submissions at [7.23], indeed they involve the creation of new physical devices or arrangements that provided for a material advantage that propelled them beyond a mere scheme or the mere provision of information. This contrasts with the present application where the substance of the invention resides in the provision of certain information (vehicle cargo packing slip information and cargo safety information) to certain users (authorised or other users as the case may be) in a certain context (transportation of cargo) and nothing else.

85. To my mind this is rather analogous to the situation in W.’s Application (1914) 31 RPC 141 (“W’s Application”) and Re Brown (1899) 5 ALR 81 (“Re Brown”). W.’s Application comprised an arrangement of buoys comprising a colour or number, for example, on the buoys which would indicate to the captain of a vessel where the vessel is in relation to a fixed point and which was held to not be for a manner of manufacture. In Re Brown the Applicant, Mr Brown, devised a method for preventing the fraudulent reuse of sales book dockets, which was held to be nothing more than a series of instructions to be followed that would prevent fraudulent reuse of known sales docket books and as such was simply a scheme. It can be seen that the present application, W’s Application and Re Brown merely involved schemes utilising known technology or devices.

86. The remaining question now is whether the substance falls within the bounds of patentable subject matter as established by authority. I consider that it does not. The substance clearly amounts to a scheme for providing vehicle cargo packing slip information and vehicle cargo safety information on a transportation vehicle and allowing remote access of the vehicle cargo packing slip information to only authorised users and remote access to vehicle cargo safety information to other users. The substance does not result in any technical benefit and amounts to little more than the convenient placement of particular information for remote access to particular persons in a particular environment.

Are any of the Dependent Claims for a Manner of Manufacture?

87. I have also considered each of the dependent claims. These comprise additional features that amount to:

·     standard uses of well-known technology or specifying well known capabilities of that technology:
o   claims 2 and 13: container include GPS for detecting a current location of the container;
o   claim 3: the range of the transmitter
o   claim 4: the first reader device includes a writer for writing secure and non-secure sections of data;
o   claims 5 to 7: use of encryption to resist disclosure of secure information on the second reader device, this being encrypted by the writer that stores the data, decryption of secure data by the first reader;
o   claim 12: information from the secure data from all vehicles within range of the transmitter is displayed on the first reader device to indicate the imminent arrival of these transportation vehicles at the location of the first reader device;
o   claim 15: the container includes an exterior weather proof and secure shell;

·     specifying the nature of the information concerned:
o   claim 8: the vehicle cargo packing slip information including a waybill, a bill of lading, loading and offloading instructions, a product description or hazardous materials warnings;
o   claim 9: vehicle safety information includes vehicle identification, load-empty status, description and/or code of current or previous cargo or emergency contact information;

·     specifying the whereabouts of the reader devices:
o   claim 10: the first reader device is located at a loading access terminal
o   claim 11: the second reader device is carried by first responders for accessing the vehicles in an emergency;

· specifying the nature of the transportation vehicle:
o claim 14: the transportation vehicle is a rail car, road tanker or barge.

88. In view of the nature of the dependent claims I am of the view that none of these add anything of substance that fundamentally escapes the patentability issues of the independent claims. It follows that none of the dependent claims are for a manner of manufacture.

Is there anything within the Application that provides for a Manner of Manufacture?

89. In addition to there being no patentable material in the claims, my perusal of the application does not reveal anything that, as a matter of substance, extends beyond the invention discussed above, either for the invention as claimed or as described. I conclude that there is nothing in the application, beyond that already considered, that could be claimed so as to result in a manner of manufacture.

Conclusion

90. 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. I therefore refuse the application. As a consequence, it is unnecessary to consider whether the claimed invention comprises an inventive step.

Dr W.E. Guinea

Delegate of the Commissioner of Patents

Annex A – Claims

1. Apparatus comprising:

a plurality of transportation vehicles each arranged to transport contents contained therein;

a plurality of containers each having a mounting arrangement by which the

container is attached to a respective one of the transportation vehicles; the container containing a data control system comprising: a memory for storing received information; and
a transmitter for wirelessly transmitting required information from

the memory when requested;
a receiver for receiving a wireless request signal; a power supply;
a writer for storing data in the memory, the writer being arranged to create in the memory of a respective one of the transportation vehicles data including:
a secure section of data defining for the respective one of the

transportation vehicles cargo packing slip information; and

a non-secure section of data defining for the respective one of the transportation vehicles safety information relating to the contents currently contained in the respective transportation vehicle;

at least one first reader device arranged to generate a first request signal

sent by the first reader device to the receiver of the data control system;

and a plurality of second portable reader devices each arranged to generate a second request signal sent by the second reader device to the receiver of the data control system;

the first reader device and the data control system operating to transmit to the first reader device in response to said first signal the vehicle cargo packing slip having at least said information from the secure section of data for the vehicle which information is disclosed on a first display of the first reader device to an

authorized person in possession of the first reader device; and
the second reader devices and the data control system operating in response to said second signal to disclose on a second display of the second reader device to a person in possession of the second reader device only data from the non-secure section defining for the vehicle said safety information
relating to the current vehicle contents and not the data from the secure section.
2. The apparatus according to claim 1, wherein the container includes a GPS system for detecting a current location of the container.
3. The apparatus according to claim 1 or 2, wherein the transmitter has a range greater than one mile (1609m).
4. The apparatus according to any one of claims 1 to 3, wherein the

first reader device comprises said writer for writing the secure and non-secure sections of the data.
5. The apparatus according to any one of claims 1 to 4, wherein the data in the secure section is protected by encryption to resist it from being

disclosed on the second display of the second reader device.
6.            The apparatus according to claim 5, wherein the data in the secure section is encrypted by said writer which stores the data in the memory.
7.            The apparatus according to claim 5, wherein the data in the secure section is decrypted by the first reader device.
8.            The apparatus according to any one of claims 1 to 7, wherein the vehicle cargo packing slip information includes: a waybill, a bill of lading, instructions for loading and offloading, a product description, and/or any hazardous materials warnings.
9. The apparatus according to any one of claims 1 to 8, wherein the

vehicle safety information includes: a vehicle identification, a load-empty status, a description and/or code of current or previous cargo, and/or emergency contact information.
10. The apparatus according to any one of claims 1 to 9, wherein the

first reader device is located at a loading access terminal.
11. The apparatus according to any one of claims 1 to 10, wherein the second reader device is carried by first responders for accessing the vehicles in an emergency.
12. The apparatus according to any one of claims 1 to 11, wherein the
first reader device is arranged to disclose on said display to said authorized

person, information from the secure section of data of all said transportation vehicles within a range of said transmitter, to indicate imminent arrival of said transportation vehicles at a location of the first reader device.
13. The apparatus according to claim 12, wherein the container

includes a GPS system for detecting a current location of the container.
14. The apparatus according to any one of claims 1 to 13, wherein each transportation vehicle is a rail car, road tanker or barge.
15. The apparatus according to any one of claims 1 to 14, wherein the container includes an exterior weather proof and secure shell.

[2021] APO 25

23 June 2021

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