Apple Inc. - [2018] APO 54

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2018] APO 54

Patent Application: 2015298710

Title:Context-specific user interfaces

Patent Applicant:                   Apple Inc.
Delegate:  Isaac Tan
Decision Date:  20 August 2018
Hearing Date:  17 May 2018 in Melbourne, VIC

Catchwords: PATENTS – section 45 – examiner objection hearing – manner of manufacture under section 18(1)(a) – computer implemented invention – graphical user interface – substance of the invention relates to the generation of a user interface object – production of an animation sequence – the computational burden in producing a user interface object is optimised – state of the art undetermined – unable to determine if the invention described in the specification are directed towards a manner of manufacture – claims are not directed towards a manner of manufacture – opportunity to amend – applicant is provided a period of three (3) months to attain acceptance

Representation: Thor North, Patent Attorney of FPA Patent Attorneys
Anthony Selleck, Patent Attorney of FPA Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015298710

Title:Context-specific user interfaces

Patent Applicant: Apple Inc.
Date of Decision: 20 August 2018
DECISION
The claimed invention is not for a manner of manufacture.
Under sub-regulation 13.4(1)(g), the applicant has three (3) months from the date of this decision to attain acceptance of the application.
REASONS FOR DECISION
Background

Australian patent application 2015298710 (the “application”) was filed on 7 June 2015 in the name of Apple Inc. (the “Applicant”). The application claims a priority date of 2 August 2014 from international application PCT/US2015/034604 filed under the Patent Cooperation Treaty (“PCT”) with an international filing date of 7 June 2015.
On 20 January 2017, the Applicant filed a request for accelerated examination under the Global Patent Prosecution Highway program (“GPPH”). The GPPH request refers to examination conducted by the Danish Patent and Trademark Office, and is accompanied with a Statement of Proposed Amendments to amend the claims of the application to correspond to one or more of the claims indicated as allowable by the Danish Patent and Trademark Office.
A first examination report was issued on 15 February 2017. On 13 April 2017, without any response from the applicant in relation to the first report, a second examination report was issued. The second report maintained all of the objections raised in the first report while adding a new ground of objection under the heading “Patentable subject matter”. The report also contains the following explanation:
“I note that a first report on this application was issued on 15 February 2017. This second report has been issued as a result of an internal review process. The results of the internal review have been fully considered and as a result this report has been generated. You only need to respond to the issues raised in this report.
I apologise for any inconvenience that raising new objections at this stage may have caused.”
On 14 February 2018, the Applicant filed proposed amendments to address the objections raised in the first examination report, and requested to be heard in respect of the patentable subject matter objection raised in the second examination report. The request notes “[c]orresponding objections have also been raised against innovation patents 2015101019, 2016100411 and 2016100765.” In response to the request to be heard, the Applicant was informed on 8 March 2018, that the matter would be heard by way of written submissions. The Applicant was invited to provide written submissions by 13 April 2018.
The Applicant responded on 11 April 2018, requesting that the matter proceed by way of an oral hearing. A hearing was held in Melbourne, VIC on the 17 May 2018 at the offices of FPA Patent Attorneys.
The specification
The invention relates generally to computer user interfaces, and more specifically to context specific user interfaces for indicating time. As background, the specification states that:[1]:
“Users rely on portable multifunction devices for keeping time, among a variety of other operations including running software applications. It is desirable to allow the user to access information through a single user interface while keeping the interface simple and intuitive to use. Further, a user may want to access different types of information, such as various aspects related to keeping time, or different application data points, in different contexts. It is therefore also desirable to allow the user to customize the user interface and the types of information provided through the user interface.”
[1] The specification as filed at [0004]
However, existing techniques for managing context-specific user interfaces for indicating time using electronic devices are generally cumbersome and inefficient, requiring more time for a user to perform a specific action, and resulting in wasting user time and device energy. In order to address this problem, the specification is said to provide portable electronic devices with faster, more efficient methods and interfaces for managing context-specific user interfaces.
By way of example, the lengthy specification describes a number of different embodiments in which this context specific user interface can be presented. In one embodiment, the interface screen includes[2] “a first affordance representing a simulation of a first region of the Earth as illuminated by the Sun at a current time; and a second affordance indicating the current time; receiving a user input; and in response to receiving the user input: rotating the simulation of the Earth to display a second region of the Earth as illuminated by the Sun at the current time.” This is shown in Figure 8, which has been reproduced below:
[2] Ibid at [0011]
The specification describes what figure 8 illustrates as follows[3]: “[d]evice 800 receives user input representing a movement of the rotatable input mechanism (e.g., movement 830), and in response, device 800 updates first affordance 822 to represent a simulation of the first region of the Earth as illuminated by the Sun at a non-current time. This is shown on screen 840 with first affordance 842 and second affordance 844. Comparing screens 820 and 840, the simulation of the Earth has been updated (cf. 822 and 842) from indicating a region of the Earth at the current time (10:09, indicated by 824) to indicating the same region of the Earth at a non-current time (12:09, indicated by 844). This feature provides the user access to further geographic and time-related information by allowing the user to view the Earth, as illuminated by the Sun, at various times throughout the day.”
[3] Ibid at [0298]
However, figure 8 is merely just one embodiment of a multitude of options for customising user interfaces. It is also important that these interfaces are presented in a manner that is readily comprehensible and intuitive to the user. Additionally, these user interfaces are usable with a wide variety of electronic devices such as portable communication devices that also contains other functions, such as PDA and/or music player functions. Some examples provided includes, but not limited to, the iPhone®, iPod Touch®, and iPad® devices from Apple Inc. of Cupertino, California.
Relevant to the invention as claimed, is the embodiment shown by Figure 13A and 13B, which are reproduced below.
Figure 13A and 13B are illustrated using an animation of a butterfly. According to the specification[4]:
“As shown in FIG. 13A, device 1300 displays user interface screen 1302 in response to detecting user input 1304 at 10:09. Screen 1302 includes user interface object 1306, which indicates the time, as well as user interface object 1308, which depicts a butterfly. After displaying screen 1302, device 1300 animates butterfly 1308 by sequentially displaying three animated sequences that are all different from each other. The first animated sequence is shown by butterfly 1308, which depicts the butterfly opening its wings. Next, screen 1310 displays the second animated sequence, which depicts butterfly 1314 flying from right to left on the display. Note that screen 1310 also displays user interface object 1312, which indicates the time. Finally, screen 1320 displays the third animated sequence, which depicts butterfly 1324 closing its wings. Screen 1320 again displays user interface object 1322 indicating the time.
Later in the day, as shown in FIG. 13B, device 1330 detects a second user input 1332. In response, device 1300 accesses data representing the previously displayed animated sequence (i.e., the sequence shown by butterfly 1314). Device 1300 displays screen 1330. Screen 1330 includes user interface object 1334, which indicates the time in now 2:09, and user interface object 1336, which depicts a butterfly.”
[4] Ibid at [0379] to [0380]
It is worth noting that butterfly 1308 and butterfly 1336 is animated using the same sequence. Similarly, butterfly 1324 and butterfly 1354 are also animated using the same sequence. In this respect, by only replacing the animation for butterfly 1314 and butterfly 1344, two different animation sequences are generated without having to create six distinctly unique animation sequences. The specification also states that this animation appears more realistic and/or engaging to the user as this variation imparts a more random, lifelike quality to the animated user interface objection.
The specification goes on to describe that variety can be created in the animated sequence generated by applying variations in the user interface object. Specifically[5]:
“For example, a user interface object may be reflected (e.g., about a horizontal and/or vertical axis), flipped, and/or rotated to create a new user interface object. This is a source of variety for the displayed user interface object and the animated sequences. For example, by rotating a single object horizontally, vertically, and horizontally and vertically creates four new objects, which when coupled with an animation that directs the movement of the object creates even more variations. These aspects add combinatorial possibilities which greatly increase the number of animations for a single object, thus reducing the number of pre-programmed animated sequences. It also helps animate objects with fewer intrinsic features and/or movements, such as a jellyfish.”
[5] Ibid at [387]
This specific order of generating an animation sequence is further illustrated in Figure 26 reproduced below:
Examiner Objections
The examiner objection from the report of 13 April 2017 stated:
“Claims 1 to 14 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. From reading your application as a whole the substance of the alleged invention is a presentation of specific aesthetic content.
Key factors to considering patentable subject matter identified by the Full Court in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 at [099] include whether the contribution of the invention “solves a technical problem within the computer or outside the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed”.
The present invention solves the problem of providing users with something engaging to look at. This is not a problem of a technical nature.
I do not consider that your application involves more than a generic utilisation of well-known functions of a computer, and therefore does not involve any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method.“
The report also raised an objection under section 40, and that amendment item 1 (filed on 20 January 2017) does not meet the requirements of Schedule 3 (part 1, section 5, subsection 2) of the Patent Regulations 1991.
However these objections were addressed with the Applicant’s amendments of 14 February 2018 leaving only the Manner of Manufacture objection remaining.
Applicable Law
The request for examination of the present application was filed on 7 June 2015. As a consequence, substantive amendments to the Patents Act 1990 (the “Act”) bought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 applies to the present application.
Therefore, the standard of proof that applies in the present case is the balance of probabilities. I must accept the application if I am 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.
Section 18 of the Act provides for a standard patent:
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step; and
(c) is useful; and
(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in title to the invention.
The relevant part of Section 40 provides as follows:
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
Case Law on Manner of Manufacture
In National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (“NRDC”), the High Court provided a statement of the law in this regard[6]:
“... 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”.
[6] National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 at [22]
In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose[7]:
“The effect produced by the appellant’s method exhibits the two essential qualities upon which “product” and “vendible” seem designed to insist. It is a “product” because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage ... for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”
[7] Ibid at [25]
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc [2015] HCA 35 (“Myriad”) the court considered that[8]:
“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.”
[8] D'Arcy v Myriad Genetics Inc [2015] HCA 35 at [23]
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ[9]:
“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.”
[9] Ibid at [144]
In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”), the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme[10]:
“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.”
[10] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 at [96]
and that[11]:
“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”.
[11] Ibid at [98]
In Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”), the Full Court of the Federal Court noted that[12]:
[12] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 at [94] citing Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62; Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1991) 33 FCR 218; CCOM Pty Limited v Jiejing Pty Limited [1994] FCA 1168; (1994) 51 FCR 260; Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110
When the authorities in Australia prior to and including Grant are considered, a consistent approach emerges as to the relevance of:
a distinction between a claim to a business scheme and claims to methods which in practice result in a new machine or process or an old machine giving a new and improved result – that is, a distinction between mere intellectual information and a method that affects the operation of an apparatus in a physical form (Grant at [18]);
the fact that the claimed steps are foreign to the normal use of computers, such as the production of an improved curve image (IBM 2 at 225-226);
the particular mode or manner of achieving an end result which is an artificially created state of affairs, such as the storage of data as to Chinese characters and retrieval of graphic representations to enable word processing (CCOM at 295);
whether part of the invention is an inventive method which includes the application and operation in a physical device (Grant at [30]);
the distinction drawn in Catuity, as explained in Grant (at [24]), between “a technological innovation which is patentable and a business innovation which is not”. In Catuity, Heerey J did not accept that a physically observable effect was necessarily required (at [128]) but the Full Court in Grant expressed the opinion that a physical effect in the sense of a concrete effect or phenomenon, or manifestation or transformation is required (at [32]).
the fact that a physical effect is required does not make it sufficient to confer patentability;
the fact that a method may be called a business method does not prevent it being properly the subject of letters patent (Grant at [26] citing Catuity at [125]-[126]);
the fact that for claimed computer programs, the courts look to the application of the program to produce a practical and useful result, so that more than “intellectual information” is involved (Grant at [29]). A method that is in the nature of directions for use does not constitute an invention or a manner of manufacture in the absence of some previously unrecognised property of an aspect of the method (Grant at [29]).

In determining whether an invention contains patentable subject matter, the delegate in Aristocrat Technologies Australia Pty Limited [2016] APO 49 (“Aristocrat”) provided the following summarisation[13]:
[13] Aristocrat Technologies Australia Pty Limited [2016] APO 49 at [35]
I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information.
However, in Todd Martin [2017] APO 33, the delegate made the following comments regarding the “range of matters” set down in Aristocrat[14]:
“With this list of points, the delegate in the Aristocrat case was not intending to indicate a list of conditions, for computer-implemented cases, to be met to define a manner of manufacture. That is evident from the delegate’s statement that the list was not intended to be exhaustive. Moreover, it would appear improper to find there was a manner of manufacture simply on the basis that one or more points could be answered in favour. In the present case for example, it may be that at least the fifth dot-point, regarding whether the application of the method produces a practical and useful result, is satisfied. On the other hand, that consideration on its own would be insufficient in the present case. Conversely it would also appear improper to find there was no manner of manufacture simply on the basis that one or more points could not be answered favourably. Rather than these points being seen as conditions to be met, they should be seen as relevant matters to consider, as the delegate stated at [35]. The substance and contribution of the claimed invention in each case should be considered on its merits overall and various points under the law would appear to have varying degrees of relevance depending on the case.”
[14] Todd Martin [2017] APO 33 at [47]; Similar considerations were also applied in Bio-Rad Laboratories, Inc. [2017] APO 38 at [37]
The claims
The specification, as proposed to be amended on 14 February 2018, ends with fourteen (14) claims of which claims 1, 12, 13 and 14 are independent claims. Claim 1 provides as follows:
“A method of animating user interface objects on a user interface screen, the method comprising:
at an electronic device with a touch-sensitive display:
detecting a user input, wherein the user input is detected at a first time, and in response to detecting the user input:
displaying a user interface screen, the user interface screen including:
a first user interface object indicating the first time; and
a second user interface object; and
animating the second user interface object, by sequentially displaying a first animated sequence, a second animated sequence after the first animated sequence, and a third animated sequence after the second animated sequence, wherein the first animated sequence, the second animated sequence, and the third animated sequence are different;
after animating the second user interface object, detecting a second user input, wherein the second user input is detected at a second time, wherein the second time is after the first time, and in response to detecting the second user input:
accessing data representing the previously displayed second animated sequence;
selecting a fourth animated sequence, wherein the fourth animated sequence is different from the first animated sequence and the second animated sequence;
displaying a second user interface screen, the second user interface screen including:
the first user interface object, wherein the first user interface object is updated to indicate the second time; and
a third user interface object related to the second user interface object; and
animating the third user interface object by sequentially displaying the first animated sequence, the fourth animated sequence after the first animated sequence, and the third animated sequence after the fourth animated sequence.”
Claims 12 defines a non-transitory computer-readable storage medium comprising one or more programs for execution by one or more processors of a first device with a touch-sensitive display, the one or more programs including instructions which, when executed by the one or more processors, cause the first device to essentially carry out the method defined by claim 1.
Claims 13 and 14 are directed towards a device, which broadly performs the method set out in claim 1.
While there are no issues or matters of difficulty in the construction of the claims, it is worth noting, for reasons that will become apparent later, that the claims are not limited such that only four animated sequences are present. Rather, it is possible for there to be six animated sequences present in storage, from which only four animated sequences are selected to generate the second user interface object and the third user interface object.
Manner of Manufacture Framework
In setting out their case, the Applicant refers to and submits that the structured approach set out in Sportsbet Pty Ltd v Diogenes Limited [2017] APO 60 (“Sportsbet”) should be adopted. In Sportsbet, the delegate summarised the principles and approach set out in Myriad and RPL and other cases to be[15]:
1.Construe the claim.
2.Identify the substance of the claim (what is the alleged or actual contribution?)
3.Ask whether the substance of the claim lies within established principles of what does not constitute a patentable invention (e.g. is it merely a scheme, plan, rules of gameplay, intellectual or genetic information?)
[15] Sportsbet Pty Ltd v Diogenes Limited [2017] APO 60 at [58]
The Applicant submits[16] that the determination of whether the claimed invention is solely excluded subject matter is answered as a matter of substance, not form, and that this is understood to be a distinct inquiry from inventive step, one that is determined on the face of the specification.
[16] The Applicant’s Submissions at [51]
In essence, the Applicant’s position[17] is that it is incorrect, when considering whether an invention constitutes patentable subject matter, to allege that a specific optimisation claimed in that patent is of a known type and hence could not contribute to making an invention a manner of manufacture.
[17] Ibid at [52]
To illustrate, the Applicant refers to Meat & Livestock Australia Limited v Cargill, Inc [2018][18] FCA 51 where the Federal Court stated[19]:
“I would note at this point that this high and wide submission travels well beyond the two types of objection, in the context of “manner of manufacture”, that I am considering, however much MLA would seek to finesse from its optimistic reading of the reasoning of Gageler and Nettle JJ on the question of “inventiveness”.”
and further[20] (emphasis added by the Applicant):
Second, it is inappropriate to fasten upon individual elements of the claims, such as SNPs and their association with the trait. Of course these are naturally occurring phenomena. SNPs are naturally occurring. And the associations are objectively ascertained correlations between naturally occurring phenomena, that is, the genotype (used in the narrow sense) and the phenotype (used in the narrow sense). But the claims are not merely directed to the SNPs or their association with the trait per se. It is impermissible to disregard the wording of the claims and diminish their formal content under the guise of having regard to the “substance” of what is claimed. There is no suggestion in Myriad that claims to methods involving the practical application of nucleic acids could be dismissed as being in substance just directed to genetic information.
[18] Meat & Livestock Australia Limited v Cargill, Inc [2018] at [424], [449], [454], [457] to [459], [499]
[19] Ibid at [449] in reference to [424]
[20] Ibid at [454]
I agree with the Applicant. It is inappropriate to conclude that an invention contains solely excluded subject matter simply on the basis that it is a computer running an algorithm. Nonetheless, RPL[21] sets out that the invention must contain more than an abstract idea, and must involve the creation of an artificial state of affairs where the computer is integral to the invention. Simply said, the computer must be more than a mere tool in which the invention is performed.
[21] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAC 177 at [96]
Similarly, it is also inappropriate to exclude an invention merely because an idea or concept is known. In fact, section 18 sets out that that for an invention to be a patentable invention, it must meet the requirement of manner of manufacture in accordance with section 18(1)(a), and from a comparison with the prior art base as it existed before the priority date of that claim in accordance with section 18(1)(b). In Aristocrat Technologies Australia Pty Limited [2017] APO 1, the delegate came to the same conclusion when considering the same question in relation to an innovation patent[22].
[22] Aristocrat Technologies Australia Pty Limited [2017] APO 1 at [72]; see also Trading Technologies International, Inc [2017] APO 13 at [39] where I came to a similar conclusion
Substance of the Invention
At the hearing, the Applicant disagreed with the examiner’s characterisation that the substance of the invention relates to a presentation of specific aesthetic content, and that the present invention solves the problem of providing users with something engaging to look at. In essence, the examiner’s position appears to be that the claimed invention relates to nothing more than the mere display of intellectual information.
As set out in the claims, the invention is not restricted to what is specifically being displayed. Rather, it concerns the manner in which the object being displayed is generated. Upon detection of a second user input at a second time, the interface displays the first user interface object and a third user interface object. The first user interface object is updated to provide an indication of a time, which may be at a different time to that displayed upon detection of the first user input. The third user interface object utilises the first and third animation sequence and a fourth animation sequence in order to create an animation that is different to the second user interface object. This is illustrated in figures 13A, 13B and 26 which I have reproduced above.
I agree with the Applicant that this is a fair characterisation of the substance of the invention. The substance of the claimed invention is directed towards an interface which, upon detection of a user input, is designed to generate and display a second user interface object and a third user interface object in the specific manner described in the previous paragraph.
Discussion
Before addressing the question of whether the substance of the claim lies within established principles of what does not constitute a patentable invention, it is worth touching briefly on the context within which the claimed invention is performed. As set out above, the claimed invention is implemented on an electronic device with a touch sensitive display.
One example of the electronic device is shown in Figure 41 of the specification[23]. Figure 41 sets out the device with the components labelled using terms such as “Processing Unit”, “Display unit”, “Animation Enabling Unit”. There is nothing in this section which strikes me as something which could cause any difficulty for a person skilled in the art, or suggests that the electronic device is not conventional.
[23] The specification as filed at [0721] to [0725]
The Applicant explained that these electronic devices are typically hindered with limited memory, processing capacity and battery resources.
While these devices are capable of performing a wide range of different functions, the function that is relevant to the invention as claimed, is the use of portable electronic devices for keeping time. Although claim 1 only refers to an electronic device and does not indicate whether said device is portable, this difference is of little importance as non-portable devices may still be resource constrained.
I will also note that a Graphical user interface (“GUI”) will, by its very nature, allow users to interact with electronic devices through graphical icons and visual indicators as opposed to text based user interfaces.
In this respect, the Applicant submits that the claimed invention allows for the creation of a wide range of compelling and constantly-updated displays from a minimal set of stored animation sequences and user interface objects. This feature is of particular importance in memory-constrained devices that are used for time keeping which must, in some instances, frequently respond to user input when the time is checked.
One caveat, which was reiterated by the Applicant, is that while the animation sequence may be aesthetic in nature, it may also provide useful information to a user. However, the contents and relevance of the animation sequence is irrelevant to manner in which said animation sequences are generated.
By way of example, the Applicant refers to Figure 13A and Figure 13B which relates to how a user interface object is produced. Figures 13A and 13B are shown above. Figure 13A relates to a user interface object of a butterfly consisting of animation sequence 1308, 1314 and 1324, while Figure 13B relates to a different user interface object consisting of animation sequence 1336, 1340 and 1354. It is also worth noting that each animation sequence may further consist of multiple frames.
In my view, the Applicant’s submissions indicates that traditionally, or as it was commonly done, six animation sequences would be required in order to produce the two user interface objects. In contrast, with the claimed invention, animation sequence 1308 can be reused as animation sequence 1336. Similarly, animation sequence 1324 is reused as animation sequence 1354 in what the Applicant defines as a “bookend” approach. In this respect, only the middle animation sequence 1314 and 1340 is unique.
The Applicant submits that by producing user interface objects in this manner, this would result in a number of benefits set out in the specification[24], and summarised as follows[25]:
1.Provision of a faster, more efficient method for managing context-specific user interfaces.
2.A reduced cognitive burden on a user.
3.A more efficient human-machine interface.
4.Reduce the number of unnecessary, extraneous, repetitive, and/or redundant inputs.
5.A faster and more efficient user interface arrangement, which may reduce the number of required inputs, reduce processing power, and reduce the amount of time for which user interfaces need to be displayed in order for desired functions to be accessed and carried out.
6.A conservation of power and increase in the time between battery charges for battery powered devices.
[24] The specification as filed at [0007]
[25] The Applicant’s Submission at [88]
Noting that the nature and design of the animation sequences produced is irrelevant to the manner in which said animation sequences are generated, I do not agree that the invention as claimed could be said to provide the benefits listed in points 2, 3 and 4. In using the system, a user would be oblivious to the system processing four animation sequences instead of six.
With point 5, I agree only to the extent that it may reduce processing power. Put another way, the computational burden in producing two user interface objects is optimised. However, this is inconclusive. To my mind, in view of the computer processing capabilities in existence at the priority date, any differences in speed to render or produce the animation sequence would be substantially indiscernible. Similarly, from the perspective of a user, there is no difference in how a user interacts with the user interface, nor is there any discernible difference in the speed of the system to render or produce the animation sequence.
In order to produce the second user interface object, the processor would need to access data representing an animated sequence. While some of the data which represents the second user interface object is reused to produce the third user interface object, the processor is merely repeating the same steps. That is, the processor would yet again need to access data representing an animated sequence in order to produce the third user interface object. In this respect, the processor is essentially performing the same action even if six sequences were used instead of four. That is, it would appear that there would be no difference on the performance of a processor if a comparison was conducted in a situation where some of the data required to produce the user interface object is reused, with a situation where none of the data is reused.
In relation to points 1 and 6, I can only agree that less memory is required to store four animation sequences instead of six. However as noted above, the claims is not limited such that only four animation sequences are stored. In this respect, point 1 does not apply where six animation sequences are stored. It is not apparent how this would result in conservation in power.
At the hearing, the Applicant drew a comparison to the decisions of Sportsbet, RPL, Research Affiliates, and International Business Machines Corporation v Commissioner of Patents (1991) 22 IPR 417 (“IBM”).
With Sportsbet, the substance of the invention relates to a business method, which is an abstract idea, and is merely implemented on a computer system without further explanation on its implementation. The delegate in Sportsbet pointed out one distinction[26]:
“…I am not saying that the present invention is not a manner of manufacture because it is simply a computer running an algorithm. Rather I am saying that the algorithm that is being run embodies a business method, and the implementation of that business method does not involve operations that are foreign to the usual operation of the system components that have been employed to implement the business method. As such, the substance of the invention is a business method which, as the courts have said time and again, is not patentable.”
[26] Sportsbet Pty Ltd v Diogenes Limited [2017] APO at [82]
In contrast, the Applicant’s position is that although the present invention is an algorithm running on a conventional piece of hardware, the focus here is on the underlying manner in which the algorithm has improved the computer system by optimising the manner in which user interface objects are produced. As stated plainly by the delegate in Mine RP Holdings (Pty) Limited [2018] APO 41[27] in reference to the above passage of Sportsbet:
“The converse to [82] of Sportsbet is that a computer running an algorithm is patentable if the algorithm improves the operation of the computer, involves operations that are foreign to the normal use of a computer, or solves a technical problem ... [i]f it was the case that this algorithm did in fact involve operations that were foreign to the usual operation of the computer, then I would have expected the specification to have included information that would allow the person skilled in the art to implement the invention on a computer that did not have the capability to, in its normal operation, run the algorithm.”
[27] Mine RP Holdings (Pty) Limited [2018] APO 41 at [36] to [37]

Turning to RPL[28] and Research Affiliates, the Applicant submits that the role of computer in these cases is not integral to the workings of the invention, nor was there any consideration on how the computer was brought to bear to solve a problem.
[28] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAC 177 at [108] to [110]
Particularly, in the case of RPL[29], “[t]he method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to implement a business method.” With Research Affiliates, the Applicant submits[30] “[t]his concept of a ‘generic computer’ was also referenced in paragraph 0055 of Research Affiliates, when quoting the conclusion of the United States Supreme Court’s Alice Corporation decision that: ‘in light of the foregoing, the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer. They do not’”.
[29] Ibid at [110]
[30] The Applicant’s Submissions at [78] quoting from Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 at [55]
Application of the Manner of Manufacture Framework
As outlined above, I have construed the claims to be sufficiently broad such that there is no restriction as to how many animation sequences are stored. In this respect, it is clear that any memory saving benefits will only exist if only four animation sequences are present. However as I consider this is not what the applicant envisages as the nature of the invention, I will therefore consider the form of the invention in which only four animation sequences are stored.
Before I can answer the question of whether the substance of the claim lies within the established principles of what constitutes a patentable invention, I must first develop an understanding of the state of the art at the priority date of the claimed invention. Typically, one would expect a general overview to be provided as background in the description of the specification. This does not apply in the present case. However due to the breath of the specification, the significance of such information, if present, may not be immediately apparent.
Failing this, an understanding may be gleamed by reference to external sources. While I do not have any evidence or citations available which I could refer to, I am able to make an inference from the Applicant’s submission that the act of producing two user interface objects from six animation sequences is part of the state of the art. However, this is all I can conclude. I am unable to determine whether it was part of the state of the art at the priority date, to produce user interface objects by rearranging or reusing animation sequences.
If one would commonly rearrange and reuse animation sequences to produce user interface objects, then clearly the applicant’s contribution lies in the scheme for ordering the animation sequences, which would not lie within the established principles of what constitutes a patentable invention.
If the invention relates to the storage of six animation sequences but the use of only four sequences, then there is no technical improvement in the computer, such as the use of less memory. Thus, even if the rearranging and reusing of animation sequences is known in the art, this would not be a patentable invention as it does not lead to an improvement in the computer. The result is aesthetic.
However if the opposite was found, then clearly the Applicant’s contribution lies in the concept or re-arranging animation sequences, which leads to improvement in the operation of the computer system itself. That is, in performing the steps of the claimed invention, the computational burden in producing a user interface object is optimised. It follows that the applicant’s contribution would be technical in nature, and would lie within established principles of what would constitute a patentable invention.
In this situation, I consider it appropriate that the present application be remitted to examination to determine the state of the art. Specifically, this may be determined by a prior art search, or made clear with the filing of further submissions or evidence.
General Comments
The present case provides an example of why it is crucial, when assessing the substance of the invention, that one should not apply too narrow a view. This is particularly important where the general tasks performed by the computer system may be one external to the computer, or if it solves a technical problem related to the running of computers generally.
In a decision issued by the United Kingdom Intellectual Property Office, for Landmark Graphics Corporation[31], the following example was presented to the hearing officer:[32]
“a method for enhancing/modelling image or geophysical data, is the use of a Fast Fourier Transform (FFT) instead of a Fourier Transform (FT), the benefits of doing so being to reduce the processing load of the computer, a narrow assessment of the contribution could lead to a conclusion that what has been added to human knowledge is the mere replacement of a FT with a FFT, and a mistaken assessment that this is nothing more than a mathematical or computational advance. They say that such a narrow approach would be wrong, because the invention remains a method for enhancing/modelling image or geophysical data, which is inherently patentable (per Vicom). Once past the hurdle of section 1(2), they say that the act of replacing the FT with an FFT should then be assessed against the requirement for inventive step, this being the proper place for doing so and not confused with any consideration of whether the invention is within the list of exclusions set out in section 1(2)”
[31] BL O/112/18; see also BL O/155/18; BL O/138/18; BL O/140/18; BL O/143/18; BL O/148/18; BL O/154/18
[32] BL O/112/18 at [29]; reference to Vicom T 0208/84
The hearing officer agreed, stating[33]:
“when assessing the actual contribution in a computer-implemented invention, I shall take proper account of the tasks performed by the computer and determine whether the task falls outside the excluded categories … [i]f the task carried out is within an excluded area, e.g. a computer program … this is not necessarily the end of the matter because a computer program that solves a technical problem relating to the running of computers generally is not excluded by section 1(2).”
[33] Ibid at [32]
I agree. That is, one should not immediately conclude that an application is not for a manner of manufacture just because it may fall, generally, within what typically constitutes excluded subject matter. Rather, an assessment of where the substance of the invention may lie should be approached, with a holistic point of view.
Conclusion
I am satisfied that the invention as presently claimed is not a manner of manufacture. It is possible that the claims include patentable subject matter.
In light of my comments above, I make no determination of whether the invention as described in the specification, is directed towards a manner of manufacture.
However, I am convinced that this problem can be resolved once the state of the art at the priority date of the claimed invention is determined. Specifically, the state of the art at the priority date, relating to producing user interface objects using animation sequences.
I consider it appropriate that the examination of this application continue. Under sub-regulation 13.4(1)(g), the applicant is allowed a period of three (3) months from the date of this decision to attain acceptance of the application.
Isaac Tan
Delegate of the Commissioner of Patents