Apple Inc.
[2022] APO 83
•22 December 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2022] APO 83
Patent Application: 2019268070
Title:Device, method, and graphical user interface for manipulating user interfaces based on unlock inputs
Patent Applicant: Apple Inc.
Delegate:R Subbarayan
Decision Date: 22 December 2022
Hearing Date: Written submissions completed on 30 September 2022
Catchwords: PATENTS - examiner’s objection – biometric authentication for revealing redacted content – manner of manufacture – computer implemented invention – some of the claims are for a manner of manufacture – opportunity to amend – final date for acceptance reset
Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019268070
Title:Device, method, and graphical user interface for manipulating user interfaces based on unlock inputs
Patent Applicant: Apple Inc.
Date of Decision: 22 December 2022
DECISION
The invention of each of the amended claims 1-10, 13-17 and 18-19 (when not dependent on claims 11 or 12) is not a manner of manufacture.
The invention of each of the dependent claims 11 and 12 is for a manner of manufacture.
As the adverse findings can be overcome through amendment, pursuant to sub-regulation 13.4(3), the final date to gain acceptance is extended to three (3) months from the date of this decision.
REASONS FOR DECISION
BACKGROUND
Patent application AU 2019268070 in the name of Apple Inc. (the “applicant”) was filed on 19 November 2019 as a divisional application of AU 2018202712 in a line of divisional applications and claims an earliest priority date of 9 September 2013 through these parent applications.
Examination of the application was requested on 24 January 2020.
Amendments in anticipation were filed 4 February 2020 which comprised a new claim set.
A first examination report was issued on 29 January 2021 objecting that the claimed invention was not for a manner of manufacture and was not inventive.
The applicant responded on 24 August 2021 without any proposed amendments to the claims arguing that the examiner’s objections were not well founded.
A second examination report was issued on 21 September 2021 maintaining both the manner of manufacture objection and the inventive objection.
The applicant responded on 21 December 2021 with proposed amendments to the claims that they submitted overcame the inventive step objection. They also submitted that the manner of objection was not well founded and should be withdrawn.
A third examination report was issued on 27 January 2022 withdrawing the inventive step objection but maintaining the manner of manufacture objection.
On 31 January 2022, which was the effective final date for acceptance of the application, the applicant filed a request to be heard in relation to the outstanding examiner objection.
On 16 June 2022, the applicant filed written submissions for the hearing.
On 29 August 2022, the Office invited the applicant to file any further submissions for the hearing in light of the recent High Court decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29.
The applicant filed their further submissions on 30 September 2022.
APPLICABLE LAW
The examination of the present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) as the application was filed after 15 April 2013. Thus, I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application. Although the effective final date for acceptance of the application was 31 January 2022, paragraph 13.4(1)(g) of the Patent Regulations 1991 is available to extend the time for gaining acceptance to 3 months (or longer if appropriate under sub-regulation 13.4(3)) from the date of the present decision.
SPECIFICATION
The specification describes electronic devices with biometric sensors in which the biometric sensor is used as an input to manipulate user interfaces on the display screen of the electronic device.
More specifically, the invention as claimed in the present divisional application relates to the use of the biometric sensor to reveal redacted content of information displayed on the screen. The specification identifies the deficiencies with the known methods of revealing redacted information.
“[0491] Many electronic devices have graphical user interfaces that contain private
information (e.g., information that a user of the device may not want to be viewed by others). Redacting private information prevents other people from viewing the private information; however, redacting private information also prevents the user of the device from viewing the private information. Some methods require a user to perform a complicated sequence of steps (e.g., navigating to a settings menu and/or entering a pass code or password) to reveal redacted information (e.g., by unlocking the device or changing redaction settings). This makes it difficult and time consuming for the user to quickly review an unredacted version of the information”.In the same paragraph, the specification therefore notes that “it would be advantageous to provide a way for a user to quickly and intuitively remove redaction from information displayed by the device so that the private information is hidden from other people but is still readily accessible to the user of the device”.
The present invention provides an improved method for revealing redacted content of information displayed on a display of an electronic device in which input from a biometric sensor of the electronic device is used to authenticate the credentials of a user and based on that authentication reveal the redacted content.
The specification then describes various embodiments of the invention, with the embodiment of figures 20A-20T being particularly relevant to the claimed invention. The applicant has provided a useful summary of this embodiment of the invention which I have reproduced below rather than write my own.
“An exemplary embodiment of the invention is shown in, and described with reference to, Figures 20D and 20H (provided below) of the specification.
Figure 20D illustrates an electronic device 100 including a touch screen 112 and a fingerprint sensor 169. The device displays a plurality of information items, including a first information item and a second information item (e.g. email notifications 2012-3 and 2012-4).
In Figure 20D, a redacted version of each information item (e.g. each email notification 2012-3, 2012-4) is displayed. The redacted version of each information item includes identifying information which is not redacted (e.g. subject, sender and time of the email notification) and content which has been redacted (e.g. the content of the email).
As depicted in Figure 20H, while displaying the redacted versions of the information items (e.g. email notifications 2012-3 and 2012-4), the device detects a biometric input (for example a finger input 2030 on the fingerprint sensor 169). If the device determines that the biometric input includes biometric information that matches previously enrolled biometric information that is authorised to revel (sic) the content of the information items, the device concurrently displays unredacted versions of the information items – e.g. unredacted versions of both of email notifications 2012-3 and 2012-4 in which both the identifying information and the content can be read.
Alternatively, if the device determines that the biometric input does not include biometric information that matches previously enrolled biometric information that is authorised to reveal the content of email notifications 2012-3 and 2012-4, the device maintains the redacted versions of the information items as depicted in Figure 20D – e.g. so that the content of those information items (e.g. email notifications 2012-3 and 2012-4) cannot be read.”
The specification highlights that the use of the biometric sensor reduces the burden on a user by “eliminating the need for extra, separate, steps to reveal redacted information”[1] and that “enabling a user to revealing redacted information faster and more efficiently conserves power and increases the time between battery charges”[2].
[1] Specification at [491]
[2] Specification at [508]
The specification also notes that “Providing a plurality of notifications that each include a redacted portion and an unredacted portion provides the user with the ability to quickly view at least some information about multiple different events or communications and determine whether or not it is necessary to view the unredacted versions of the notifications and/or unlock the device to display additional information that corresponds to the notifications”[3].
[3] Specification at [0514]
The claims as proposed to be amended includes 19 claims of which claims 1, 18 and 19 are reproduced below. A full set of the amended claims is given in the Annex at the end of this decision.
1.A method, comprising:
at an electronic device with a biometric sensor and a display:
displaying, on the display, a redacted version of a first information item and a redacted version of a second information item, wherein the redacted version of the first information item includes identifying information corresponding to the first information item and
excludes respective content corresponding to the first information item, and wherein the redacted version of the second information item includes identifying information corresponding to the second information item and excludes respective content corresponding to the second information item;while concurrently displaying, on the display, the redacted version of the first information item and the redacted version of the second information item, detecting a biometric input using the biometric sensor; and
in response to detecting the biometric input using the biometric sensor:
in accordance with a determination that the biometric input includes a set of biometric information that matches a previously enrolled set of biometric information that is authorized to reveal the respective content corresponding to the first information item and the second information item, concurrently displaying, on the display, an unredacted version of the first information item and an unredacted version of the second information item, wherein the unredacted version of the first information item includes the identifying information corresponding to the first information item and the respective content corresponding to the first information item, and wherein the unredacted version of the second information item includes the identifying information corresponding to the second information item and the respective content corresponding to the second information item; and
in accordance with a determination that the biometric input does not include a set of biometric information that matches a previously enrolled set of biometric information that is authorized to reveal the respective content corresponding to the first information item and the second information item, maintaining display, on the display, of the redacted version of the first information item without displaying the respective content corresponding to the second
information item.18. A computer-readable storage medium storing one or more programs configured to be
executed by one or more processors of an electronic device with a display and a biometric
sensor, the one or more programs comprising instructions for performing any one of the methods of claims 1-17.
19. An electronic device, comprising:
a display;
a biometric sensor;
one or more processors; and
memory storing one or more programs configured to be executed by the one or more
processors, the one or more programs including instructions for performing any one of the
methods of claims 1-17.LEGAL PRINCIPLES
Section 18(1)(a) of the Act provides that 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.
The classic statement of the law on manner of manufacture is set out in National Research Development Corporation v Commissioner of Patents [1959] HCA 67, 102 CLR 252 (NRDC) at 269:
"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?' "
The Court then went on to set out a test in terms applicable to the facts of that case:
"a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour."
The Court, however, cautioned that any attempt to state the ambit of section 6 of the Statute of Monopolies by precisely defining “manufacture” is likely to fail and, further, “to attempt to place upon the idea the fetters of an exact verbal formula...would be unsound to the point of folly” (at 277). These cautionary observations were later reinforced 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.”
This case-by-case methodology must have regard to the substance of the claimed invention, not simply the literal form of the claim. As stated in Myriad at [144]:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
The construction of the specification to identify the substance of the invention should be done in light of the common general knowledge. This was affirmed recently by the High Court in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat) at [73]:
“In accordance with the approach in Myriad, it is necessary to characterise Aristocrat's claimed invention by reference to the terms of the specification having regard to the substance of the claim and in light of the common general knowledge”.
Guidance as to the determination of patentable subject matter in the context of computer implemented inventions can be found in a range of principles that have been developed by the Full Federal Court. Recently, consideration has been given to these principles in the High Court decision in Aristocratwhere the Court was evenly split regarding a finding of patentability. While split, the High Court affirmed the correctness of decisions in Commissioner of Patents v RPL Central Pty Ltd (RPL Central) [2015] FCAFC 177, Research Affiliates LLC v Commissioner of Patents (Research Affiliates) [2014] FCAFC 150, Encompass Corporation Pty Ltd v InfoTrack Pty Ltd(Encompass) [2019] FCAFC 161, and Commissioner of Patents v Rokt Pte Ltd (Rokt 2) [2020] FCAFC 86.
The principles of law that apply to the present matter in the context of computer implementation appear to be well reflected in that summarised and generally accepted at [200]-[201] by Robertson J in Rokt Pte Ltd v Commissioner of Patents [2018] (Rokt 1) FCA 1988 at [189] as follows:
“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].”
THE EXAMINER’S OBJECTION
In all three examination reports, the examiner has objected that the claims are not for a manner of manufacture.
In the first examination report the examiner stated as follows:
“Claims 1 to 19 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. In general, the principles set out in D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases require analysing whether the claimed invention, as a matter of substance rather than form, is suitable subject matter for a patent.
The substance of the claimed invention is to be determined by considering the claimed invention’s actual or alleged contribution to the art.
Relevant factors to consider and weigh up when identifying the substance of the claimed invention include:
How does the claimed invention work?
What problem does it address?
What is the result of performing the claimed invention?
What was the state of the art as at the priority date?
What does the claimed invention add to the state of the art?
What are the advantages of the claimed invention?
The present invention relates to a user interface whereby a redacted version of a display provides a user with particular information and upon authenticating with an appropriate biometric an unredacted version with previously missing information is displayed.
Biometric authentication was well known at the time of the invention and the use of biometric authentication specifically (i.e. over other types of authentication) produces no particular result in the context of redacted data. The claims clearly contemplate that the technical processes of acquiring and validating a biometric are performed in merely standard ways.
Given the above, the substance of the invention lies in displaying particular information (identifying information corresponding to the first information item) prior to authentication and displaying additional information (respective content corresponding to the first information item) subsequent to authentication.
In RPL [099], the Full Federal Court indicated several factors relevant to consider when determining whether a claimed invention as a matter of substance relates to patentable subject matter. These included:
·Is the contribution to the claimed invention technical in nature?
·Does the claimed invention solve a “technical” problem within the computer or outside the computer?
·Does the claimed invention result in an improvement in the functioning of the computer, irrespective of the data being processed?
·Does the claimed invention merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea?
Displaying information and changing the information displayed by a computer are routine functions, as is the capacity to change the information displayed based on particular conditions or inputs. The claims specify nothing about how the redacted information is managed by the interface, beyond that after authentication, the extra information is displayed.
Given the above, I do not consider that the claimed invention relates to an improvement in the functioning of a computer and merely implements a scheme that conditions a presentation of information on authentication. Such a claimed invention, as a matter of substance, does not define subject matter suitable for a patent”.
In the second examination report the examiner has stated as follows:
“The response argues that the previous report inappropriately determined the substance of the invention by excluding known features rather than considering the invention as a combination. The invention has been considered as a combination of features, and the conclusion was reached that that combination of features defines a scheme with routine technical implementation.
For example, the response places emphasis on the benefits associated with the use of biometric authentication over other authentication methods (e.g. power usage). These benefits are the benefits of biometric authentication per se. They are not the benefits of the combination of biometric authentication with the particular presentations of information contemplated. They are the well known benefits of well known technological implementation of the scheme. This much is clear from the claims' failure to specify how the biometric authentication operates (e.g. how biometric information is received and assessed) in order to achieve objectives such as lower power usage. When the claimed invention is considered as a combination of features, then the invention is analogous to that considered in RPL Central, a scheme implemented using well known technologies, for no more than the well known benefits those technologies are known to provide independently of the scheme that comprises the substance of the claimed invention.
The response further argues that "[t]he specific implementation and technical steps are clearly integral to the operation of the electronic device". This is not the test. The relevant question is whether that use of technology involves any ingenuity that improves the operation of the device beyond merely implementing a particular non-patentable scheme or presentation. For the reasons discussed in this and the previous report, it does not”.
In the third examination report, the examiner has stated as follows:
“The response once again points to the efficiency benefits provided by substituting more complex authentication methods for biometric authentication. These benefits must flow from the invention when considered as a matter of substance. However the benefits the response discusses do not flow from any particular working interrelationship between biometric authentication and the display of redacted data, instead the benefits are product of biometric authentication per se, used as a mere dropin replacement for other forms of authentication independent of the environment in which that authentication is performed and the broader process of which the authentication is a part. Biometric authentication and its benefits was well known at the priority date of the present application and the present application uses those known process for no more than their known benefits. Also, given the breadth of implementations of biometric authentication contemplated by the claimed invention, it is not clear that all of the benefits alleged are substantiated across the full scope of the claims.
The amendments, and the corresponding arguments in relation to the newly added features, are also instructive about the nature of the claimed invention. The response places emphasis on the newly added feature of concurrently displaying two information items, both of which contain redacted information. This casts the invention as a mere presentation of information. The claims provide no particular mechanism to enable two information items to be displayed concurrently where previously this was not possible, nor do they specify any arrangement of the information that might give rise to some mechanical advantage. The claims also provide no mechanism for independently dealing with the information items (e.g. unredacting a specific information item but not the other) which means that the distinction between one and two information items is academic, with no effect on the working of the invention.
The amendments also add features whereby the claims specify that the "identifying information" for a content item is always displayed and the "content information" is redacted. This is also a distinction that casts the invention as a presentation of information, specifying that particular information is to be presented to a user and particular information is not with reference only to the information content of that information.
The response again presses arguments specific to dependent claim 8. The response points to the benefits of displaying information on a lock screen of a device, presenting a user with information to enable a decision about unlocking the device. But this is a benefit of displaying information on a lock screen per se, an arrangement that was commonplace before the priority date of the present invention.
In the present context these benefits also appear to be speculative, dependent on what particular information is redacted and what information is not. Even if the claims were limited in a way that makes these benefits concrete, they would still be the benefits of a specific presentation of information, rather than any improvement in the capability of the device to provide information.
The response discusses a lock screen as being a screen where "the ability to access applications on the device has been disabled" but this, in contrast to the alleged invention considered in Facebook ([2020] APO 19), does not impede the capability of the device to provide the desired presentation of information. Although the functions of a lock screen may be limited, they do not present limitations that the inventor has overcome. If it did, in which case providing the desired presentation might involve a technical problem, it is not clear that the specification provides a solution, and it is clear that the claims do not.
The response points to benefits in the security and privacy of a user's data but these benefits are achieved in the same way as they have long been achieved: by conditioning access on authentication.
With regard to security and privacy, the claims offer little more than that a well known class of authentication methods (biometrics) is used to transition from one presentation of information to a presentation of more information. Such an invention provides no ingenuity in the solving of any technical problem associated with security or privacy.
The response argues that it was not normal to configure an electronic device in the way claimed. To the extent that this is accurate, these differences do not lead to any conclusion that the invention relates to an advance in computer technology for the reasons above”.
CONSIDERATION
Common General Knowledge
The examiner is of the view that electronic devices with a display and fingerprint sensor were well-known at the priority date of the claimed invention. Although the applicant has submitted that they do not concede this, in my view this is mere assertion without any basis.
A cursory search of the internet reveals that mobile phones with a fingerprint sensor to authenticate a user’s credentials and unlock the phone were introduced into the market by both Toshiba (G500 and G900) and HTC (P6500) back in 2007[4] and in the mobile phone technology area, it does not take very long for new innovative features such as the inclusion of a fingerprint scanner to become part of the common general knowledge in the art. Similarly, laptops with biometric sensors were also introduced into the market around the same time. Unlocking such electronic devices, enables a user to access and view various information that they would otherwise not be able to.
[4] >
Redaction of documents which involve the editing of the document to remove or mask sensitive information is a process that has been used for a very long time. The redacted content would only be made available to authorised persons such as a legal entity upon meeting certain conditions such as a confidentiality undertaking and establishment of their credentials. It is also clear from the specification and a cursory search of the internet that redaction of documents in an electronic form was also a well-known technique at the priority date[5].
[5] >
However, I accept that there is nothing to suggest that the use of fingerprint scanners in an electronic device as a means of authentication for the purpose of viewing redacted content of information was common general knowledge.
Substance of the Invention
The invention as claimed in claim 1 relates to an electronic device with a display and a biometric sensor such as a fingerprint sensor which is used to authenticate a user’s credentials. As discussed above, such devices were common general knowledge in the art at the priority date.
The specification notes that sometimes information presented on the display, for example email messages, may be in a redacted form wherein certain content of the information, such as private or sensitive information, is normally hidden. This is to ensure that this private information is not available to anyone in possession of the electronic device. The redacted content of the information will only be revealed to an authorised user upon authentication of their credentials as an authorised user of the electronic device.
It would certainly appear from the specification that all of this was very much part of the state of the art at the priority date. The applicant’s submissions also do not appear to dispute this.
The specification notes that the authentication of credentials typically requires “a user to perform a complicated sequence of steps (e.g., navigating to a settings menu and/or entering a pass code or password) to reveal redacted information (e.g., by unlocking the device or changing redaction settings)”[6]. These typical methods are stated to be difficult and time consuming for the user who wants to quickly and easily read all of the information in its unredacted form. Furthermore, if the device is battery operated, this can also lead to increased power consumption and the need to charge the device more frequently.
[6] Specification at paragraph [0491]
The invention of claim 1 addresses this problem by allowing the user, while viewing the redacted information on the display, to authenticate their credentials and then reveal the redacted content using a single interaction of the user with the biometric sensor. In the preferred embodiment, this is done by the user placing their finger on the fingerprint sensor of the electronic device.
It is clear that this biometric authentication for revealing the redacted information is at the heart of the invention and the contribution to the invention of claim 1.
The applicant has submitted that the substance of the invention should also take into account the other aspect of the claimed invention relating to the displaying of redacted versions of first and second information items that each include only identifying information but not content information as this aspect provides the user with additional benefits as noted in paragraph [0514] of the specification.
“…..In some embodiments, the device displays a plurality of notifications including one or more redacted notifications and one or more unredacted notifications (e.g., notifications of email messages are redacted, while notifications from a game are not redacted). Providing a plurality of notifications that each include a redacted portion and an unredacted portion provides the user with the ability to quickly view at least some information about multiple different events or communications and determine whether or not it is necessary to view the unredacted versions of the notifications and/or unlock the device to display additional information that corresponds to the notifications. Thus, providing a plurality of notifications with both redacted and unredacted content maintains the ease of use of the device for the user while improving the security of private information (e.g., content of email messages, content of text messages, and/or the identity of callers)”.
I accept that these features relating to what parts of the information are redacted and what parts are not also form part of the alleged contribution to the invention of claim 1.
In my view, the substance of the invention relates to the redaction of electronic documents that is being viewed on an electronic device with a display and a biometric sensor, wherein first and second information items of the document that are being viewed on the display are redacted in a manner so that only identifying information of both the information items is displayed while the content information of both the information items are hidden from view and while viewing the redacted document the user can unhide and view the content information of both information items simply by authenticating their credentials using the biometric sensor of the device.
Is the invention a mere scheme?
The examiner is of the view that the substance of the invention is nothing more than a mere scheme for revealing redacted information subsequent to authentication.
While at first glance, the substance of the invention does appear to be a redaction scheme that relates to what content of information in an electronic document is redacted and how a user’s credentials are authenticated in order to reveal the redacted content of the information, the claimed invention is clearly embodied within a physical device in the form of an electronic device with a display and a biometric sensor. This electronic device clearly includes a computer and therefore the invention is very much a computer implemented invention. It is therefore appropriate to have regard to the various considerations for computer implemented inventions that I have identified earlier.
Does the invention solve a technical problem?
The problem that the invention of claim 1 seeks to solve is given at paragraph [491] of the specification.
“[0491] Many electronic devices have graphical user interfaces that contain private information (e.g., information that a user of the device may not want to be viewed by others). Redacting private information prevents other people from viewing the private information; however, redacting private information also prevents the user of the device from viewing the private information. Some methods require a user to perform a complicated sequence of steps (e.g., navigating to a settings menu and/or entering a pass code or password) to reveal redacted information (e.g., by unlocking the device or changing redaction settings). This makes it difficult and time consuming for the user to quickly review an unredacted version of the information”.
Therefore, the problem being addressed is that typical methods of authenticating a user’s credentials for the purpose of viewing redacted content of the information that is displayed on the display are cumbersome and time consuming.
The applicant also highlighted that this reduction of steps for authentication credentials helps to conserve power and increase the time between battery charges. They further submitted that another problem that is being addressed is that if the information item is redacted in its entirety, a user will not know whether the redacted information is actually important or not and the only way to determine this is to go through the unredacting process to find out.
Although the applicant referred to these as technical problems, I am not convinced. While the invention is embodied in a physical device in the form of an electronic device with a display and biometric sensor, as discussed earlier, such devices in which the biometric sensor was specifically used for authenticating a user’s credentials were common general knowledge at the priority date. Hence, the problem is one that relates to the mode of authenticating a user’s credentials for the purpose of revealing redacted content. I fail to see how this is a technical problem, especially when there is no suggestion in the specification that there were any technical limitations in the prior art devices which would prevent them from adopting other well-known methods of authentication including biometric sensing.
In regard to the conservation of battery power, I note that this benefit would only apply to battery operated devices and such a limitation is not present in claim 1. Regardless, any potential savings in energy of the device only really goes to less steps in the authentication process and not necessarily to any improved computer function. I do not consider this as solving any technical problem within or outside the computer.
Similarly, I fail to see how any problem that may arise from redaction of the information in its entirety can be considered a technical problem, when all it relates to is how information is presented. The purpose of redaction is to specifically to hide only information which is considered sensitive or private and that is what the claimed invention does as well.
In my view, the problems being addressed are to do with the access rules that were programmed into the device that decide which parts of the information are redacted and which method of authentication is required for verifying the user’s credentials in order to reveal redacted part of the information. They are in the nature of a scheme that relates to the redaction and unredaction of certain content of electronic documents that is clearly non-technical.
Does the invention provide a technical solution to the problem?
The applicant has submitted as follows in relation to this consideration.
“The claimed invention addresses at least these problems by providing a new and improved human computer interface. In particular, the present invention provides a streamlined authentication process for revealing redacted information for multiple information items without having to perform additional, separate, inputs. For example, the streamlined authentication process may enable a user to provide a single biometric input to reveal the redacted information, thereby eliminating the need for additional, separate, inputs. This is particularly beneficial for battery-operated electronic devices as enabling the display of unredacted information with a single input may conserve power and increase the time between battery charges.
In addition, prior to performing biometric authentication the claimed invention displays redacted versions of information items that include identifying information that is not redacted (but redacting the content of each information item). As described at [0514] of the specification, this:
… provides the user with the ability to quickly view at least some information about multiple different events or communications and determine whether or not it is necessary to view the unredacted versions of the notifications and/or unlock the device to display additional information that corresponds to the notifications.
In other words, this provides the user with information to allow them to determine whether they want to unredact the information items (via the biometric authentication process) or not. This information is provided without displaying potentially sensitive information that could be seen by other, non-authorised users.
Applicant submits that the contribution of the claimed invention, provided by at least the specific implementation steps identified above, provide a technical solution to various technical problems faced by conventional electronic devices. Further, the contribution of the claimed invention of an improved human computer interface represents an improvement in the functioning of the electronic device, which has long been recognised to be patentable subject matter.”.[7]
[7] Applicant’s written submissions on page 10
Electronic devices with a user interface in the form of a biometric sensor were common general knowledge in the art at priority date and there is nothing in the specification to suggest that the electronic device of the claimed invention is technically any different to these well-known electronic devices. The biometric sensor of these known electronic devices was provided specifically for the user to authenticate their credentials in order to unlock the device so that they may then use the device to perform various actions including being able to access and view information that they would otherwise not be able to. What the present invention of claim 1 does is to use this well-known method of authenticating credentials as also a means for accessing and viewing redacted content of information that is displayed on the screen. The biometric authentication is no more than a substitute for allegedly more onerous authentication methods such as the use of passwords. So, while the method of the claimed invention is being performed on a computer in the form of an electronic device, the method merely uses the computer to perform its well-known functions such as authentication of a user through biometric sensing and manipulating information that is displayed on the screen. Clearly there is no improvement to the computer itself. The invention lies in what is displayed before and after authentication, not how the display or authentication occurs.
While I accept that it provides for a streamlined process that enables the authentication for the purpose of revealing redacted content to be done in a single step, I do not consider it as a technical solution as the method of authenticating a user’s credentials using the biometric sensor remains unchanged. All that the claimed invention does is to use the existing biometric authentication capability of the device in place of other authentication methods such as passwords to reveal redacted content. It does not result in an improved computer or an improved computer interface. It remains a scheme for improving the efficiency of the authentication process required for unredacting electronic information presented on the display of the electronic device. All that is required is a suitable computer program to execute the method on a well-known computer device. This is clearly reflected in claim 18 which defines the invention as “A computer-readable storage medium storing one or more programs configured to be executed by one or more processors of an electronic device with a display and a biometric sensor, the one or more programs comprising instructions for performing any one of the methods of claims 1-17”.
In relation to the submission regarding the ability to quickly view at least some information about more than one communication and determine whether it is necessary to view the unredacted versions, these are again clearly non-technical steps that relate to how many and what kind of information is presented in a redacted form. While it may well provide practical benefits to the user, they are clearly business improvements that pertain to the presentation of information.
Does the claimed method require only generic computer implementation?
The present invention is specifically for implementation in an electronic device which has a display and a biometric sensor, but as noted before, there is nothing in the specification to suggest that any prior art electronic device with a biometric sensor would not be able to perform the claimed method with suitable programming of the device. The specification does not provide any code for such programming, leaving it entirely up to the skilled person.
It is clear that the invention of claim 1 only requires generic computer implementation in any electronic device that has a display and biometric sensor.
Is the computer merely the intermediary, configured to carry out the method
The applicant has submitted as follows in relation to this consideration.
“In the present case the ingenuity is in the operation of an electronic device (e.g. a computer device) and in particular the implementation of the user interface. This includes the display of redacted versions of information items (which include identifying information that is not redacted), the provision of a biometric sensor for receiving user input, and the specific manner in which the device operations on receiving input via the biometric sensor. The contribution is to the operation of the computer itself – there is not a wider scheme to which the computer can be said to be acting as an intermediary”.[8]
[8] Applicant’s written submissions on page 11
I am not convinced. Although the method is implemented in a computer, as discussed above the computer is being used to merely authenticate a user’s credentials using a standard biometric sensor and to manipulate information that is presented on a standard display. Manipulation of data and presenting them on a display based on suitable programming are standard functions of a computer and the displaying of only identifying information and not content information as in the presently claimed invention of claim 1 are no more than the performance of such standard functions. The fact that the method is implemented merely through suitable programming of the computer reinforces the conclusion that the computer is only the intermediary to carry out the method. The present situation has similarities to that in Rokt 2 where even though the invention clearly had to be carried out by computer technology, the scheme was still found to be not patentable, with the Full Court noting at [115]:
Even if the scheme is new and ingenious, it is not made patentable merely because it can or must be implemented using computer technology. Rather, the language of the specification and the broad statements of steps required to be taken in claim 1 do no more than locate the scheme in computer technology, using its well-known and understood functions.
In my view, a similar finding applies to the presently claimed invention.
Balance of Considerations
The invention of amended claim 1 is not directed to solving a technical problem, and nor does it provide a technical solution. Although it provides a practical and useful result by reducing the effort and time required to authenticate a user’s credentials in order to reveal redacted content of information that is displayed on the device, this is done using user authentication technology that already exists within the device and is part of the common general knowledge. While the electronic device on which the claimed method is implemented is central to the performance of the invention, it can be any generic electronic device with a biometric sensor. Furthermore, there is no improvement to the computer itself other than in the way it executes the steps of the method through suitable programming of the device.
On balance, it is clear that the invention does not lie in technical innovation. It merely uses well-known and well-understood computer functionality to implement a redaction scheme for electronic documents that relates to what information is to be redacted and what authentication method is to be employed for subsequent unredaction, being merely fingerprint confirmation. I regard it as an administrative/business innovation which is not patentable. The invention of claim 1 is not for a manner of manufacture.
Dependent Claims
The applicant submitted that all the dependent claims are also directed to a manner of manufacture and provided further submissions in relation to some of these dependent claims. I will briefly consider these submissions.
Claims 4-5
Claims 4-5 add features relating to one or more notifications regarding the first information item. While they may allow the user to quickly view at least some information and to decide whether to view the redacted content, they are clearly not of a technical nature. They are merely further steps in the presentation of information on the display and cannot add anything of substance to the claimed invention.
Claim 8
Claim 8 defines that the redacted version of the first and second information items are displayed on a locked-device. The applicant submitted that this provides the user with the ability to quickly view at least some information while in the locked screen mode to determine whether or not to perform authentication to view the entire message. While they may provide utility to the invention, these features again relate to when and how the information is presented. They are no more than steps in a scheme for redacting and presenting information on a display.
Claims 11 and 12
Dependents claim 11 and 12 further define arrangements in which the biometric input controls the manner in which redacted information is revealed and also the locked condition of the device. In particular, they both define that the unredacted version of the first and second information items is only displayed as long as the biometric sensor continues to detect the biometric input and once the biometric input ceases, the display reverts to the redacted version of the first and second information items.
The applicant has argued that this particular working interrelationship between biometric authentication and the display of unredacted information cannot be described as a mere presentation of information.
I am inclined to agree. According to these claims, the information items in their unredacted form are displayed only as long as biometric input of an authorised user is detected through the biometric sensor. It requires the user to continue to provide their biometric input for as long as they wish to view the unredacted information items. As soon as an authorised biometric input ceases to be detected, the information items revert to their redacted form. There is therefore a definite link between the sensing of the biometric input and duration of the display of the information items in their unredacted form. This is the key distinction between the invention of these claims and that of claim 1 where the biometric input is no more than a substitute for other forms of user authentication to initiate the display of the information items in their unredacted form. The biometric input in claim 1 has no further role to play. On the other hand, the invention of claims 11 and 12 provide a technical means for the user to choose how long they wish to view the information items in their unredacted form. It also improves the security of the redacted content by only displaying it while biometric input of an authorised user is being continually sensed. These are technical effects that elevate the invention to something more than a business innovation.
On balance, I am satisfied that claims 11 and 12 are directed to a manner of manufacture.
Claim 14
This claim further relates the revealing of the redacted content to the occurrence of a predefined event without any hint as to what this predefined event is. Without this information, I cannot be satisfied that it solves a technical problem or provides a technical solution. Claim 14 is not for a manner of manufacture.
CONCLUSION
The invention of each of the amended claims 1-10, 13-17 and 18-19 (when not dependent on claims 11 or 12) is not a manner of manufacture.
However, the invention of each of the dependent claims 11 and 12 is for a manner of manufacture.
I provide the applicant a further 3 months to overcome the adverse findings through amendment and to gain acceptance.
R Subbarayan
Delegate of the Commissioner of Patents
Annex – Amended Claims
1. A method, comprising:
at an electronic device with a biometric sensor and a display:
displaying, on the display, a redacted version of a first information item and a redacted version of a second information item, wherein the redacted version of the first information item includes identifying information corresponding to the first information item and excludes respective content corresponding to the first information item, and wherein the redacted version of the second information item includes identifying information corresponding to the second information item and excludes respective content corresponding to the second information item;
while concurrently displaying, on the display, the redacted version of the first information item and the redacted version of the second information item, detecting a biometric input using the biometric sensor; and
in response to detecting the biometric input using the biometric sensor:
in accordance with a determination that the biometric input includes a set of biometric information that matches a previously enrolled set of biometric information that is authorized to reveal the respective content corresponding to the first information item and the second information item, concurrently displaying, on the display, an unredacted version of the first information item and an unredacted version of the second information item, wherein the unredacted version of the first information item includes the identifying information corresponding to the first information item and the respective content corresponding to the first information item, and wherein the unredacted version of the second information item includes the identifying information corresponding to the second information item and the respective content corresponding to the second information item; and
in accordance with a determination that the biometric input does not include a set of biometric information that matches a previously enrolled set of biometric information that is authorized to reveal the respective content corresponding to the first information item and the second information item, maintaining display, on the display, of the redacted version of the first information item without displaying the respective content corresponding to the first information item and display of the redacted version of the second information item without displaying the respective content corresponding to the second information item.
2.The method of claim 1, wherein:
the redacted version of the first information item includes a plurality of distinct information items; and
each information item in the plurality of information items includes a redacted portion and an unredacted portion.
3. The method of claim 2, wherein displaying the unredacted version of the first information item includes replacing display of the redacted portions of the plurality of information items with corresponding unredacted content while maintaining display of the unredacted portions of the plurality of information items.
4. The method of claim 1, wherein the first information item includes one or more notifications of communications received by the device.
5. The method of claim 1, wherein the first information item includes one or more notifications of social networking updates.
6. The method of claim 1, wherein the redacted version of the first information item includes a copy of the first information item that has been rendered unreadable.
7. The method of claim 1, wherein the redacted version of the first information item includes a predefined redaction object that is displayed in place of the respective content corresponding to the first information item.
8. The method of claim 1, wherein the redacted version of the first information item and the redacted version of the second information item are displayed on a locked-device user interface
of the device.
9.The method of claim 1, wherein the first information item includes a plurality of distinct information items that are redacted.
10.The method of claim 1, further comprising:
while displaying the redacted version of the first information item, displaying the unredacted version of the second information item.
11.The method of claim 1, further comprising:
after displaying the unredacted version of the first information item and the unredacted version of the second information item, continuing to detect the biometric input using the biometric sensor;
while continuing to detect the biometric input using the biometric sensor, maintaining display of the unredacted version of the first information item and the unredacted version of the second information item on the display;
while maintaining display of the unredacted version of the first information item and the unredacted version of the second information item, ceasing to detect the biometric input using the biometric sensor; and
in response to ceasing to detect the biometric input using the biometric sensor:
ceasing to display the unredacted version of the first information item and the unredacted version of the second information item; and
redisplaying the redacted version of the first information item and the redacted version of the second information item.
12.The method of claim 1, further comprising:
prior to detecting the biometric input, displaying a locked-device user interface on the display;
after displaying the unredacted version of the first information item and the unredacted version of the second information item, continuing to detect the biometric input using the biometric sensor;
while continuing to detect the biometric input using the biometric sensor, maintaining display of the unredacted version of the first information item and the unredacted version of the second information item on the display;
while maintaining display of the unredacted version of the first information item and the unredacted version of the second information item, ceasing to detect the biometric input using the biometric sensor; and
in response to ceasing to detect the biometric input using the biometric sensor:
ceasing to display the first information item and the second information item; and displaying an unlocked-device user interface on the display.
13.The method of claim 1, further comprising:
prior to displaying the redacted version of the first information item and the redacted version of the second information item, receiving a request to display the first information item and the second information item, wherein displaying the redacted version of the first information item and the second information item on the display occurs in response to receiving the request to display the first information item and the second information item.
14.The method of claim 1, further comprising:
prior to displaying the redacted version of the first information item and the redacted version of the second information item, detecting an occurrence of a predefined event, wherein displaying the redacted version of the first information item and the redacted version of the second information item on the display occurs in response to detecting the occurrence of the predefined event.
15.The method of claim 1, wherein the biometric sensor is a fingerprint sensor.
16.The method of claim 1, wherein the biometric input is a finger input.
17. The method of claim 1, wherein the set of biometric information corresponds to a fingerprint.
18. A computer-readable storage medium storing one or more programs configured to be executed by one or more processors of an electronic device with a display and a biometric sensor, the one or more programs comprising instructions for performing any one of the methods of claims 1-17.
19. An electronic device, comprising:
a display;
a biometric sensor;
one or more processors; and
memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for performing any one of the methods of claims 1-17.
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