Canva Pty Ltd
[2025] APO 10
•9 April 2025
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Canva Pty Ltd [2025] APO 10
Patent Applications: 2023210529 & 2023210538
Title:Systems and methods for processing designs; Systems and methods for processing designs
Patent Applicant: Canva Pty Ltd
Delegate: Dr W.E. Guinea
Decision Date: 9 April 2025
Hearing Date: 17 December 2024, by written submissions
Catchwords: PATENTS – standard patent application – Examiner objections – manner of manufacture – substance of the invention for 2023210529 resides in a scheme for transferring content from one design into a different design – substance of the invention for 2023210538 resides in a scheme for transferring source fills to destination frames – all claims of both applications lack a manner of manufacture – further examination
Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: 2023210529 & 2023210538
Title:Systems and methods for processing designs; Systems and methods for processing designs
Patent Applicant: Canva Pty Ltd
Date of Decision: 9 April 2025
DECISION
None of the claims of 2023210529 or 2023210538, as presently proposed to be amended, are for a manner of manufacture. I consider it appropriate for the Applicant to be provided with an opportunity to pursue patentable claims via further examination of the applications. Pursuant to Reg 13.4(3), the Applicant has six (6) months from the date of this decision to gain acceptance of 2023210529 and 2023210538.
REASONS FOR DECISION
Background
Patent applications 2023210529 (the “529 application”) & 2023210538 (the “538 application”) were both filed on 31 July 2023 in the name of Canva Pty Ltd (the “Applicant”). Neither application claims an earlier priority and thereby the earliest priority date of each is 31 July 2023. I will collectively refer to the 529 application and the 538 application as the “applications”.
Examination of both applications was requested on 21 August 2023. Three adverse examination reports have issued with respect to each of the applications. The only outstanding objection relating to each of the applications is that the claims do not define a manner of manufacture.
On 30 August 2024, the Applicant wrote to the Commissioner requesting to be heard in relation to the outstanding objection for each of the applications. In line with a deadline set by the Commissioner, the Applicant filed written submissions for the hearing on each application on 17 December 2024. I will refer to the written submissions for the 529 application as the “529 submissions”, whilst the written submissions for the 538 application are the “538 submissions”.
I note that a series of amendments were proposed during the course of examination for each application. This decision is written with respect to the specification of each application as proposed to be amended, noting I do not see any allowability issues with the amendments concerned.
The Inventions as Described
Before considering the inventions as described, it is worth noting that, despite not formally being “family members” of any kind, the description and drawings of each application at the time of their filing are identical. It is also worth noting that, despite the filing of amendments, the drawings as they stand after any proposed amendments are unchanged. The descriptions are still identical except for the insertion of consistory clauses that reflect the claims of each application as they stand in view of the proposed amendments, and which do not change subsequent paragraph numbers for either application. Consequently, for convenience, my analysis of the inventions as described for each application will proceed by reference to the description and drawings of the 529 application as proposed to be amended. I will simply refer to these as the “description” and “drawings” without distinction or together as the “application”, except where it may be necessary to refer to the unique consistory clauses concerned.
The application is rather lengthy, extending to some 230 pages and 30 drawings. These comprise, as will be seen below, a veritable labyrinth of various ways in which the transformation of content between different designs/formats may be achieved, explained at length by reference to a manifold of interconnected flowcharts that make up the bulk of the drawings. This presents some challenges in analysing the inventions as described. Consequently, while there are different inventions claimed in each application, I will simply discuss the disclosure of the description and drawings that relates, as best understood, to the inventions as claimed in either application.
Turning now to the disclosure of the application, this may be (very) broadly understood by reference to paragraph [0001]:
“The present disclosure is directed to various systems and methods for processing designs.”
However, it is apparent from the “Background”, at [0002] to [0004], that the application specifically deals with creating document format designs or deck format designs and with using a design to generate further designs:
“Computer applications for creating and working with designs exist. Some such applications may provide users with the ability to create designs in different formats.
As one example, an application may provide functionality for a user to create what will be referred to as document-format designs – e.g. designs that store content and associated metadata in a word-processing document type format. As another example, an application may provide functionality for a user to create what will be referred to as deck-format designs – e.g. designs that store content and associated metadata in a slide deck type format.
In some situations, a user may wish to use a design they have created as the basis for generating another design. For example, a user may wish to use content prepared in an original document-format design as the basis for a deck-format design.”
The “Detailed Description” commences at [0041] and includes a number of consistory type statements covering various aspects or embodiments of the invention. These “consistory statements” include [0042] to [0047]:
“As discussed above, computer applications for use in creating and working with designs exist. Such applications may provide mechanisms for a user to create a design, edit the design by adding content to it, and output the design in various ways (e.g. by saving, displaying, printing, publishing, sharing, or otherwise outputting the design).
As also discussed above, an application may provide a user with the ability to create and work with designs of different formats. For example, the present disclosure described two different design formats that will be referred to as document-format designs (documents for short) and deck format designs (decks for short). Documents and decks are described in detail below).
Certain embodiments of the present disclosure are directed to systems and methods for generating a new deck-format design based on a source document-format design.
As one example, a user may have source content in a document but want to convert that document design into a deck. For example, a user may initially prepare a document that includes an outline (or other content) for a deck. Techniques described herein operate to automatically identify a matching template design and then generate a new deck-format design that is based on the template but that includes the source content from the original document.
Other embodiments of the present disclosure are directed to systems and methods for generating a new deck-format design based on a source deck-format design.
As one example, a user may generate a source (deck-format) design but wish to change the layout of the elements in the design page(s). In this case, the techniques described herein operate to automatically identify a matching template design and then generate a new deck-format design that is based on the template but that includes the source content from the original deck.”
10. Relevantly to the claims of both applications as they stand, particularly the 529 application, and using the terminology of the application, most of the description and drawings deals with ways and means of generating a new slide deck format design (“deck”) from either a document format design (“document”) or an existing (source) deck. Congruent with this, the remainder of the consistory like statements, which extend from [0048] to [0062], essentially outline methods or means that can be used in generating a new deck from a source document or source deck. It may be said that, in a general sense, much of these methods concern analysing the content/structure of the source document/deck and of the destination/template deck that may be used to generate the new deck using content from the source document/deck.
11. Before continuing to consider specific aspects of generating a new deck from a source document/deck, it will be helpful in understanding the subsequent disclosure of the application to outline the nature of certain elements involved in, or forming part of, the deck generation process as explained in the application. In that regard, it will be helpful to firstly canvass the systems used to achieve the deck generation methods discussed in the application. I will then consider some specific methods/elements that are used for, or form part of the broader methods of deck generation before continuing to the deck generation methods per se.
12. In that regard, an example of a system used to achieve the deck generation methods, termed a design platform, is discussed at [0125] to [0145]. The design platform is discussed by reference to figure 2, which is reproduced below.
13. As can be seen from figure 2, the design platform comprises a networked environment 200 including a server environment 210 and a client system 230 connected via network 240. Server environment 210 comprises computer processing hardware 212 which allows for various server-side applications 214 to 222 to execute and data storage 224. The server-side applications 214 to 222 allow for the performance of the various methods used in deck generation as discussed in the application (these methods being discussed further below in this decision) via the client application 232 and the content transfer module 234. The content transfer module 234 can form part of the client application 232 or comprise an extension thereto.
14. However, where and how processing to execute the disclosed methods occurs is not necessarily limited to the precise system as outlined in figure 2. As indicated at [0142]:
“In the environment of figure 1, and the embodiments described below, various processing is described as being performed by different applications and modules thereof - e.g. the server application 214, the design analysis application 216, the pagination application 218, the template matching application 220, the data storage application 222, the client application 232, and the content transfer module 234. It will be appreciated, however, that in most cases the processing that is described could be performed by alternative applications or modules, and that such applications or modules may run either at a client system such as 230 or at a server environment such as 210. As one example, the techniques described herein may be provided as part of a stand-alone application in which case all processing and data storage may be performed by a single computer processing system (which is configured by one or more applications or modules).”
15. Similarly, the precise nature of the server environment 210 is not particularly limited and may involve a variety of client-server techniques or architecture as known in the art as determined by the skilled addressee. This is apparent from [0134] and [0135]:
“As noted, the server environment 210 applications run on (or are executed by) computer processing hardware 212. Computer processing hardware 212 includes one or more computer processing systems. The precise number and nature of those systems will depend on the architecture of the server environment 210.
For example, in one implementation each server environment application may run on its own dedicated computer processing system. In another implementation, two or more server environment applications may run on a common/shared computer processing system. In a further implementation, server environment 210 is a scalable environment in which application instances (and the computer processing hardware 212 - i.e. the specific computer processing systems required to run those instances) are commissioned and decommissioned according to demand - e.g. in a public or private cloud-type system. In this case, server environment 210 may simultaneously run multiple instances of each application (on one or multiple computer processing systems) as required by client demand. Where server environment 210 is a scalable system it will include additional applications to those illustrated and described. As one example, the server environment 210 may include a load balancing application which operates to determine demand, direct client traffic to the appropriate server application instance 214 (where multiple server applications 214 have been commissioned), trigger the commissioning of additional server environment applications (and/or computer processing systems to run those applications) if required to meet the current demand, and/or trigger the decommissioning of server environment applications (and computer processing systems) if they are not functioning correctly and/or are not required for current demand.”
16. Further, the nature of the computing systems that comprise server environment 210 or client system 230 can simply be whatever the skilled addressee chooses from known computing systems:
“[0143] As noted, the techniques and operations described herein are performed by one or more computer processing systems.
[0144] By way of example, client system 230 may be any computer processing system which is configured (or configurable) by hardware and/or software - e.g. client application 232 - to offer client-side functionality. A client system 230 may be a desktop computer, laptop computer, tablet computing device, mobile/smart phone, or other appropriate computer processing system.
[0145] Similarly, the applications of server environment 210 are also executed by one or more computer processing systems. Server environment computer processing systems will typically be server systems, though again may be any appropriate computer processing systems.
[0146] FIG. 3 provides a block diagram of a computer processing system 300 configurable to implement embodiments and/or features described herein. System 300 is a general purpose computer processing system. It will be appreciated that FIG. 3 does not illustrate all functional or physical components of a computer processing system. For example, no power supply or power supply interface has been depicted, however system 300 will either carry a power supply or be configured for connection to a power supply (or both). It will also be appreciated that the particular type of computer processing system will determine the appropriate hardware and architecture, and alternative computer processing systems suitable for implementing features of the present disclosure may have additional, alternative, or fewer components than those depicted.
…
[0154] System 300 maybe any suitable computer processing system, for example, a server computer system, a desktop computer, a laptop computer, a netbook computer, a tablet computing device, a mobile/smart phone, a personal digital assistant, or an alternative computer processing system.”
I have not reproduced figure 3 here, because as is apparent from [0146], this is merely a block diagram of a generic computing system as well known in the art. Figure 3, however is reproduced at Annex A to this decision.
17. Having considered the systems used to achieve the deck generation methods discussed, I will now consider some specific methods/elements that are used for, or form part of the broader methods of deck generation that are relevant for present purposes. To that end, although perhaps already covered to some extent above, the application discusses “Designs” at [0063] to [00117]. Generally speaking, designs are said to include content and have a design format, which could be a document format or a deck format, which, as noted above, the application refers to simply as a document or a deck as the case may be. The content of a design may be varied, and could include fills that define a solid colour, colour gradients or various graphics, images or video. Content could also be text, tables or charts, although the application indicates that there may be alternative content types.
18. Paragraphs [0066] to [0068] explain decks in general terms as follows:
“In the context of the present disclosure, a deck includes an ordered set of one or more explicitly defined pages. The pages of a deck may be referred to as slides. The content of a deck is defined by one or more deck elements (elements for short). Generally speaking, each element defines (or is associated with) content (e.g. text, one or more fills, a chart, a table, or other content) as well as data that defines which page of the deck the element (and, therefore, its associated content) is on, where on that page the content is positioned, and how the content is displayed.
In a deck, each element is associated with explicit position data. An element’s position data includes a particular page and a particular position on that particular page that the element’s content is to be displayed at. In a deck, adding a new element or removing an existing element does not generally change the position of other elements in the deck. Moreover, unless element’s [sic] are grouped together (or automatic reflow operations are implemented), adjusting the position of one element will not generally cause the positions of other elements to change.
Generally speaking, decks may be appropriate for content that is predominantly visual and has relatively low amounts of text. Decks may also be appropriate where specific and precise positioning of content (independently of other content) is of particular importance. Examples of such designs may include, for example, presentation decks (also referred to as slide decks) and posters. A deck could, however, be used to display large amounts of solely text content if desired.” (emphasis added)
19. Similarly, paragraphs [0069] to [0072] explain documents in general as follows:
“[0069] In the context of the present disclosure, the content of a document is defined by an ordered set of one or more document items (items for short). Generally speaking, each item defines (or is associated with) content (e.g. text, a fill, a chart, or other content) as well as data that defines how that content is displayed.
[0070] In a document, items are not generally associated with explicit position data. Instead, the position at which the content of an item is displayed is relative to any preceding items in the document’s ordered set of items. Accordingly, in a document adding a new item or removing an existing item generally will change the position of other (subsequent) items in the document. To illustrate this, consider a first item that defines the text ‘TEXT’. If a second item defining (for example) the text ‘PLACEHOLDER’ is added to the document before the first item, the second item will (in a standard English language context) cause the text of the first item to be displayed further to the right and/or further down the page. Similarly, if the second item was then deleted from the document, this would cause the text of the first item to be shifted to the left and/or up the page.
[0071] Generally speaking, documents may be appropriate for content that includes relatively large amounts of text and/or where the independent positioning of content desirable [sic]. This may be the case where relative positioning is preferable - for example to allow for content to move (or reflow) as new content is added, content is deleted, and/or the size of the document (e.g. its width - or the size of a window in which the document is displayed) changes. Examples of such designs may include, for example, letters, descriptions, papers (and other ‘word-processing’ type documents).
[0072] Documents may also be used, however for other purposes. For example, a user wishing to create a deck for a particular purpose may initially create a document that provides an outline of the deck.” (emphasis added)
20. A discussion of an “Example deck-format design” (i.e. a deck) is provided at [0074] to [0100]. Note this is not an example of a deck as it might appear to an end user, but rather how such a deck might be defined using structured data, in this case via a deck record that defines a deck. An example of a deck record is given at [0075] and is repeated below.
21. The nature of each of the attributes from the deck record is self-explanatory, however as apparent from the deck record, page data comprises its own array of page records. The page records define each page of the deck via page attributes for that page. This includes, for example, such things as the page’s position in the deck (by virtue of the position of the page record in the page record array), the page background and element data comprising design element records that serve to define respective elements that have been added to the page. Each element is associated with or defines content that has been added to a page of the deck, such as text etc., as outlined above. An example page record is provided at [0078] and is reproduced below:
22. As further explained at [0081] to [0100], the design element records may define each element using a variety of attributes. These include:
· identification of the element by virtue of the position of its design element record in the array of design element records;
· the depth of the element on the page;
· position of the element on the page;
· size data for the element;
· bounding box data for the element (based on size); and
· rotation data for the element, with respect to the bounding box.
23. Other attributes may be recorded in a design element record for an element depending on the type of element concerned. For example, where the element is a text element, the design element record may include “content data” that defines the text content itself, “format data” such as font type and colour and “text alignment data” defining the alignment of text in a bounding box. Similarly, “shape elements” that are used to display “fills” may comprise “fill role data” that indicates whether the fill is a complete fill or a partial fill. Further examples specific to “shape elements”, “table elements”, “chart elements” and “group elements” are also provided. Further or alternative element types are possible, presumably to accommodate types of content not specifically discussed. Similarly it is noted at [0099] that “…a given element type may include attributes defining additional or alterative features of the element”. Although not stated as such in the application, essentially, I take it that the attributes of a design element record simply comprise data that is necessary to define/replicate its associated element (and therefore the content associated with that element) in a deck.
24. An “Example document-format design” (i.e. a document) follows at [0101] to [0112]. Conceptually, this is rather similar to the “Example deck-format design”, with there being a document record that defines the document via structured data (rather than being an example of what a document actually looks like to an end user). The document record comprises an array of document element records that define respective document elements, with the document elements defining content that has been added to a document. The application observes that, whilst similar, document element records are not the same as the design element records for a deck. In line with the discussion above, to avoid confusion, the application refers to document element records as item records and document elements as items. Similarly as for elements in a deck, different item types may be provided for different types of content, and thereby the items may be associated with attributes appropriate for generating the content in a document. For example, there may be text, shape, table and chart items each associated with attributes for defining the content concerned. Aa text item may be associated with “text data” and “text format data” similarly as for “text elements” discussed above. As noted above, there would be no defined position data for items in a document.
25. Specific representations of what an example document 100 and deck 150 look like (in general terms) to an end user are provided by figure 1, which is reproduced below.
26. As explained at [0114]:
“Document 100 includes the following content:
text 102 that includes the typographic characters ‘This is a title’, bold, centred, Calibri 18 point font (which is assigned or determined to be text hierarchy level 1);
text 104 that includes the typographic characters ‘This is a subtitle’, centred, Calibri 10 point font (which is assigned or determined to be text hierarchy level 2);
a table 106 with two columns and two rows, centred; additional content 108 that is not shown (this may, for example, be line breaks or other content that causes the vertical space between content 106 and 110);
text 110 that includes the typographic characters ‘This is [sic] a another subtitle’, left justified, Calibri 10 point font (which is assigned or determined to be text hierarchy level 2);
image 112, centred.”
27. Noting how items and item records are discussed above, [0115] provides a simplified example of what a document record would look like for document 100:
It is apparent that each item record for items 102 to 112 would comprise specific data defining that item. For example for item 102, the item record would show that the item comprises text content, the actual content of that text, the fact the text is in bold Calibri 18 point font and has a text hierarchy of 1.
28. Deck 150 also comprises content 102 to 112 which corresponds to content 102 to 112 of document 100, with the exception that there is no additional content 108. The content of deck 150 also extends over two pages 152 and 154. A simplified example of page data (or a pages array) for deck 150 is provided at [0116] and is reproduced below:
It is apparent that each design element record would comprise data defining the element concerned.
29. Paragraphs [0172] to [0178] discuss “Deck-format design templates”. As stated at [0172] to [0175]:
“[0172] Certain embodiments described herein make use of a set of deck-format destination designs. In the present disclosure, such destination designs are referred to as template designs (or templates for short). In the present embodiment, each template in the set of design templates is a deck-format design. Templates may, for example, be stored at (and accessed from) at [sic] data storage 224 (and accessed via data storage application 222).
[0173] Each template is a deck that includes one or more pages. Any existing deck maybe used as a template. Typically, however, a deck will be selected as a template (by a human or automatic selection process) based on various criteria - e.g. the aesthetics of the deck, its format consistency, and/or other criteria.
[0174] As described in detail below, certain embodiments of the present disclosure involve identifying a template that matches a source design and then generating a new deck based on the source design and the template.
[0175] In order to facilitate these embodiments, a set of templates is identified and each template is analysed to generate corresponding analysis data. Generally speaking, the analysis data in respect of a template provides information in respect of the content that the template can accommodate.” (emphasis added to show certain terms being defined for the purposes of this decision)
30. The analysis data referred to in [0175] is generated via the “Deck-format design analysis” method outlined at [0179] to [0226]. As noted at [0180] and [0181]:
“Method 500 may be performed in respect of a destination deck-format design, such as a template design, that content is to be transferred to (for example in a document to deck generation method such as method 600 or a deck to deck generation method such as method 2800, both described below).
Method 500 may also be performed in respect of a source deck-format design that content is to be transferred from (for example in a deck to deck generation method such as method 2800 described below).”
31. The method 500 proceeds by reference to figure 5, which is reproduced below.
32. As can be seen from figure 5, each page of the input deck is processed to generate page analysis data for that page. The application indicates that where the input deck is a template (destination) deck the page analysis data may be called template analysis data, while for an input source deck the page analysis data may be called source analysis data. Creating the page analysis data for each page involves generating:
(steps 506 to 510) analysis objects for each element of the page, where each object provides information regarding its corresponding element;
o“objects” here means a data set with respect to the element – where elements comprise separable content, such as a shape element that defines several fills, an analysis object will be generated for each fill;
ofor a source deck, the analysis objects are called source objects and define source content that is to be transferred from a source deck;
ofor a template/destination deck, the analysis objects are called destination objects and generally define a destination into which source content may be transferred;
(step 512) a page partition key (or PK) that provides a (first) general measure of the types and amount of content a page can handle;
ofor a template/destination deck, this may be called the template partition key;
othe PK includes values for text, fills, charts and tables (although other values are possible); these indicate the number/amount of these content types on the page e.g. the PK text value is the number of text elements on the page, whilst the PK fills value indicates the number of fills on the page;
othe PK values are used to determine whether the page of a destination deck is a match for a source content candidate page;
(step 514) a page vector (or PV) that provides a (second) more specific measure of the types and amount of content a page can handle;
ofor a template/destination deck, this may be called the template page vector;
oPV “characters” specifies the number of text characters at a certain text hierarchy;
oPV “lines” indicates the number of lines of text at a certain text hierarchy;
oPV “fills” provides information on a pages ability to accept fill content (destination decks) or on fill content to be transferred (source decks);
oPV “complete fills” indicates the proportion of a page’s fills that are complete fills;
oPV “partial fills” indicates the proportion of a page’s fills that are partial fills;
oPV “tables” provides information on a page’s ability to accept table content (destination decks) or on its table content to be transferred (source decks);
oPV “charts” provides information on a page’s ability to accept chart content (destination decks) or on its chart content to be transferred (source decks); and
(step 516) page content metrics (or CM) are only generated for template/destination decks and provide a (third) measure of the types and amount of content a page can handle;
oCM “characters” provides an indication of the number of characters on a template page;
oCM “lines” provides an indication of the number of lines of text on a template page;
oCM “fills” provides an indication of the number of fills on a template page;
oCM “tables” provides an indication of the number of tables on a template page; and
oCM “charts” provides an indication of the number of charts on a template page.
33. Generating the analysis object for an element is further explained at [0195]:
“Generating an analysis object corresponding to an element involves determining and recording values for one or more analysis object attributes. In the present embodiments, the analysis object attributes that are generated for a given analysis object depend on the type of the element that the analysis object corresponds to (and the type of content that element defines) and whether the input deck is a source deck (and, therefore, source objects are being generated) or a destination deck (and, therefore, destination objects are being generated).” (emphasis added)
34. An example of analysis object attributes with respect to destination objects and source objects is provided at [0196], and is reproduced below:
35. Of the attributes concerning the elements only content type is self-explanatory. The remaining attributes require some explanation to properly understand their significance.
36. In this regard, target identifier identifies the element concerned, and potentially the content of the element. The target identifier may also comprise:
· further data that identifies each constituent of an element comprising separable or grouped content of some kind (e.g. for each fill where a shape element defines several fills); and
· a page identifier that identifies the page to which the element belongs.
For source objects the target identifier may be called a source identifier, the element concerned a source element and the content of the source element a source content segment. Similarly, for destination objects, the target identifier may be called a destination identifier, the element concerned a destination element and the content of the destination element a destination content segment.
37. Receive-content indicates, for an element of a destination/template deck, whether or not the element concerned can receive source content of a source deck when a new deck is generated. For example, a receive-content value of “true” means the associated element can receive source content. Similarly, transfer-content indicates, for a source deck, whether or not the content of the element concerned is to be transferred when a new deck is created.
38. The reading order attribute specifies the reading order position of the element on the deck page to which it belongs. A reading order is only generated for those elements that have a receive-content or transfer-content value of “true”.
39. The text hierarchy level specifies the hierarchy level of text defined by the element concerned and is only generated for elements that comprise text content (i.e. have a content type of text). A text hierarchy level is only generated for those elements that have a receive-content or transfer-content value of “true”.
40. The num lines indicates the vertical size (e.g. in lines or pixels) of the element concerned and is only generated for text content that has a receive-content or transfer-content value of “true”.
41. The num chars indicates the number of characters in the text content of the element concerned and is only generated for source objects comprising text content.
42. The appropriate for fill roles or fill role attribute is only created for analysis objects relating to shape elements that have a receive-content or transfer-content value of “true”. For an input destination deck, the appropriate for fill roles attribute is created for complete fills and indicates whether the complete fill can be replaced by partial or complete source fills or only complete source fills. For an input source deck, the fill role attribute indicates whether the shape element concerned relates to a partial or complete fill.
43. The aspect ratio indicates the aspect ratio of the content defined by the element concerned. It is only created for analysis objects comprising chart, fill or table elements and which have a receive-content or transfer-content value of “true.”
44. Some examples of analysis objects are provided at [0235] to [0237]. Reproduced below are example analysis (source) objects for a shape (fill) type element and a text type element from a source deck:
45. The page analysis data for each page is stored at step 520 after all pages have been processed. However, no analysis data is generated for deck pages discarded at step 504. Various criteria could be used to determine whether deck pages should be discarded; for example those exceeding a certain number of elements or element types. An example of a page record format where the page analysis data is associated with the page record is provided at [0266] and is repeated below:
46. Noting that the disclosure also deals with the generation of a new deck based on a source document, it is helpful to consider the “Document-format design analysis” outlined at [0299] to [0345]. This provides for the generation of analysis data with respect to a source document. The method 800 is explained by reference to figure 8, which is reproduced below:
47. As apparent from figure 8, the method 800 provides for the generation of analysis data for a source document in a manner analogous to that for source decks as outlined above with respect to figure 5. Document items (or just items) are processed to generate source objects. Again, the “objects” define a set of data, including object attributes similarly as discussed for figure 5. However in this case each source object is associated with a source content segment, rather than the item per se. In this context, source content segments simply refer to part of the source content of the source document. The association of source objects to source content segments (rather than directly to items) appears to stem from the fact that items comprising text may, in effect, comprise multiple distinct text components and thereby require their own objects (see, for example steps 808 to 812). Non-text items, such as tables or charts, are said to define a single source content segment in each case (see step 806). I also note that the analysis data of figure 8 is inherently source analysis data as documents in the disclosure are only ever the source in generating a new deck, and that figure 8 does not comprise any calculation of PKs, PVs or CMs.
48. I will now consider the methods discussed for generating a new deck from a source document/deck relevant for present purposes, by reference to the drawings where appropriate. In terms of generating a new deck, figure 6 illustrates a method 600 for “Generating a deck-format design based on a document format design”; i.e. generating a new deck based on a source document. Figure 6 is reproduced below.
49. As can be seen from figure 6, certain steps are indicated as taking place at the server environment 210 or the client system 230 (respectively mislabelled as “110” and “130” on figure 6). I will not explicitly point out which steps are taken by the server environment 210 or the client system 230 where this is apparent from figure 6. However, in line with the above discussion of the platform design 200, paragraph [0273] observes that: “In alternative embodiments, however, the operations of method 600 could be coordinated and/or performed by alternative applications or could be performed by a single stand-alone application.”
50. At step 602 initiation of the deck generation process is detected. The deck generation request is then communicated at step 604, with the deck generation request being received at step 606. The communication at 604 comprises information that allows the source document to be identified in some way. Source analysis data is then generated for the source document at step 608, for example by using the method as outlined with respect to figure 8.
51. Pagination data for the source document is created at step 610 – this proceeds, for example, via the method outlined with respect to figure 9. It is not necessary to discuss this method in any detail here. For present purposes it is sufficient to note that this involves processing the source analysis data from step 608 as discussed at [0283]:
“Generally speaking, the pagination data includes a set of one or more pagination candidates for the source document. Each pagination candidate includes a set of one or more candidate pages. Each candidate page is associated with a subset (one or more) of the source objects from the source analysis data (generated at 608) - and, therefore, with the document content that the source object(s) correspond to. Accordingly, each candidate page may be considered to correspond to a page of source content. Each pagination candidate represents a complete pagination solution for the source document. That is, for a given pagination candidate each relevant source object in the source analysis data (and, therefore, all relevant source document content) is associated with at least one candidate page of that pagination candidate.” (emphasis added to define terms for the purposes of this decision)
52. At step 612, deck generation data is created. This is explained at [0285] and [0286] as follows:
“At 612, deck generation data is generated. Generally speaking, the deck generation data includes data that can be used to generate a new deck based on relevant source content of the source document, a template, and in some cases one or more additional fallback or new deck pages.
In the present embodiments, server application 214 passes the pagination data generated at 610 (or a reference thereto) to the template matching application 220 to generate the deck generation data. An example method for processing pagination data to generate deck generation data is described below with reference to FIG. 14.”
53. As was the case with figure 9, I will not discuss the method outlined on figure 14 in detail here. For present purposes it is sufficient to note that this involves processing the pagination data to identify matching templates (i.e. destination/template decks in this case) for each pagination candidate and template scores for each pagination candidate/template match. Matching may be done using PKs and PVs for template and candidate pages. In general terms, the template score can be understood as broadly characterising how well each template accommodates the source content of the source document, based on providing how many matches the template provides for candidate pages in a pagination candidate. One or more pagination candidate/template matches are chosen based on the template score.
54. For each pagination candidate/template match chosen a new deck descriptor is created. As explained at [0463]:
“Generally speaking, the new deck descriptor for a particular (pagination candidate, template) pair includes data that allows a primary template to be identified (which may be referred to as the style template). In addition, for each candidate page of the pagination candidate, the new deck descriptor includes:
data that allows a specific template page to be identified (which may be referred to as the destination page); and
content map data that maps source content segments (which in this implementation are defined by the candidate page's source objects) to destination elements of the destination page (which in this implementation are defined by the destination page's destination objects).
As discussed further below, the destination page that is identified for given candidate page may be a page of the primary template, but need not be.” (emphasis added to define terms used throughout this decision)
55. The generation of a new deck descriptor, as utilised within figure 14 is outlined on figure 15, however it is not necessary to go into all the details of figure 15 here. For present purposes I note that, for the method of figure 15, the template being processed in each pagination candidate/template match is referred to as the primary template, with the identifier of this template being the primary template identifier. Figure 15 also comprises the creation of a new deck page dataset for each candidate page of a pagination candidate. As noted at [0484], this comprises:
· A candidate page identifier, which is essentially the number of the candidate page in the pagination candidate;
· A destination page identifier, which identifies the destination page that has been determined for the candidate page; and
· Content map data for the candidate page.
56. I also note that further methods may be used within figure 15 with respect to the mapping of source content of candidate pages to the destination objects of destination pages. Broadly speaking, mapping comprises matching source objects to destination objects based on the associated source/object attributes. For example, where a source object relates to a content type of “text” this will be mapped to a destination object relating to a content type of “text”, and with regard to the reading order attribute. The specific method outlined with respect to figure 22 is particularly relevant to the claims of the 538 application, and I will consider this method in further detail later in this decision.
57. At step 614 deck generation data in the form of deck descriptors for each pagination candidate/template is transmitted, and subsequently received at step 616. This then leads to steps 618 and 620, which are discussed as follows at [0289] to [0291]:
“At 618, one or more new decks are generated. Each new deck that is generated is based on the deck generation data generated at 612 (or part thereof) and (in the present embodiments) the source analysis data (generated at 608) and the content of the source document itself.
In the present embodiments, a new deck is generated by the content transfer module 234. An example method for generating a new deck is described below with reference to FIG. 16.
At 620, client application 232 outputs at least one of the one or more decks generated at 618. Client application 232 may be configured to output a (or multiple) decks in various ways.”
58. Whilst figure 16 again provides for its own lengthy segue, for present purposes it is helpful to note that the method of figure 16 creates a new deck using the deck generation data; i.e. the new deck descriptors. A new deck is created based on the primary template, with each new deck page being a copy of the respective destination pages from the new deck page dataset. In terms of mapping content to the new deck/destination pages, paragraph [0542] explains that:
“Generally speaking, the content transfer process uses the content map data to map source objects (and, therefore, the corresponding source content segments) to destination objects (and, therefore, the corresponding destination elements). Each destination element is then edited (or replaced with one or more replacement elements) based on the source content segment(s) that correspond to the destination element. The content map is then used to map source objects to destination objects of the new deck/destination page.”
59. Whilst figure 6 illustrates a method of generating a new deck based on a source document, figure 28 illustrates a method of “Generating a deck-format design based on a deck-format design”; i.e. generating a new deck based on a source deck. Figure 28 is reproduced below.
60. As can be seen, the method of figure 28 essentially mirrors that of figure 6, and I will therefore not go into method 2800 in any detail. Notable differences are that the generation of source analysis data at step 2808 proceeds by way of the method 500 of figure 5 and that a pagination procedure is not needed as the source analysis data will already define discrete pages.
61. As foreshadowed, I turn now to figure 22. As briefly noted above, method 2200 may be used as part of mapping source content segments to destination elements, for example, as part of the method defined by figure 15, however it is not necessarily limited to use in the context of figure 15. As explained at [0491]:
“In the present embodiments, method 2100 and method 2200 each generate content map data that includes a set of content map items. Each content map item identifies a source content segment and a destination element. Where source content segments have corresponding source objects and destination elements have corresponding destination objects, each content map item may be a (source object identifier, destination object identifier) pair. Source content segments and destination elements may, however, be identified in other ways - e.g. by array index (or other) values that identify the source content segments and destination elements.”
62. I have reproduced figure 22 below. From figure 22, it is apparent that the method 2200 more specifically deals with the mapping of source fill type content segments or source fills to destination elements. As explained at [0509] “Method 2200 may be performed in scenarios where the number of source fills that need to be mapped exceeds the number of destination elements that can accommodate fills.”
63. At step 2202, non-fill source content segments are mapped, potentially using the method outlined on figure 21 which I will not discuss in detail here. Step 2203 defines a fill mapping process as given via steps 2204 to 2220. At step 2204 a set of source fills are identified; in some embodiments, the source fills may be user-identified. At step 2206 the method identifies one or more destination elements or frames that can accommodate a source fill. For example, a shape destination element is a frame, and where the shape destination element defines multiple separable fills (e.g. a grid) each separable fill is a frame.
64. At step 2208 an ideal size for each source fill is calculated. As explained at [0516]:
“A source fill’s ideal size is a measure of the proportion of space the source fill would ideally occupy given the available space provided by the frames and the space required by the set of source fills. In the present embodiment, a source fill’s ideal size is calculated as:
Ideal size = source fill size * (sum frame sizes / sum source fill sizes)
Where:
Source fill size = the size of the source fill for which the ideal size is being calculated. A source fill's size is calculated as (source fill width * source fill height).
Sum frame sizes = the sum of the frame sizes for all frames identified at 2206. A frame's size is calculated as (frame width * frame height).
Sum source fill sizes = the sum of the source fill sizes for all source fills identified at 2204.”
65. At step 2210, the remaining capacity for each frame is determined. To begin with, this is simply the frame size, as determined using the formula outlined for step 2208; i.e. before a source fill has been allocated to the frame, all of its size is available.
66. At step 2212, the next (or, initially, first) source fill to be allocated to a frame is chosen. Source fills are chosen in order of largest to smallest ideal size. At step 2214 a frame is selected for the source fill chosen at 2212, this being the frame with the largest remaining capacity.
67. The chosen source fill is mapped to the chosen frame at step 2216. As explained at [0520] the mapping:
“…may be performed in various ways but generally involves associating an identifier of the selected source fill with an identifier of the selected frame. As one example, in the context of the present disclosure, application may map the source object that corresponds to the source fill to the destination object that corresponds to the destination frame. In this case, mapping is performed by creating a (source object identifier, destination object identifier) content map item and adding this to a result set.”
68. At step 2218, the frame’s remaining capacity is updated, by subtracting the ideal size of the source fill just added to the frame from the remaining capacity prior to mapping the source fill to the frame. At step 2220, it is determined whether there are any more source fills to be allocated. If so, steps 2212 to 2218 are repeated for all source fills that require allocating. If there are no further source fills to be allocated, the method 2200 is finished and content map data for non-fill sources from 2202 and fill sources from 2203 can be returned.
69. The preceding discussion covers those aspects of the application salient to the claims of both applications. For completeness, I will briefly canvass the remainder of the application in a general fashion. These include:
· Various examples of user interfaces, as exemplified by figures 4 and 7 that could be used in connection with the methods described in the application – these are reproduced at Annex A to this decision. As best understood, the user interfaces reflect a conventional or standard rendering of the methods outlined in the application using graphical user interface methods known in the art, particularly given the fact that their implementation is left entirely to the skilled addressee; and
· Further details of the methods already discussed above, with some of these already mentioned. These include, with the relevant figures reproduced at Annex A to this decision:
o a method for generating pagination data (figure 9);
o a method for calculating page scores (figure 10);
o a method for splitting pages (figure 11);
o an example document for generating pagination data, for example in the context of figure 9 (figure 12);
o an example of generating pagination data based on figure 12 (figure 13);
o a method for generating deck generation data, which includes new deck descriptors (figure 14);
o a method for generating the new deck descriptor, for example in the context of figure 14 (figure 15);
o a method for generating a new deck design based on a source document or source deck, including transferring of source fills, source text, source tables and source charts and detecting undesirable collisions; i.e. where elements are too close to each other or undesirably overlap or extend too close to or over a page (figure 16);
o a method for detecting and resolving undesirable collisions, for example in the context of figure 16 (figure 17);
o examples of undesirable collisions before and after their resolution (figure 18);
o a method for identifying undesirable collisions (figure 19);
o a method of resolving the undesirable collisions identified, for example in the context of figure 19 (figure 20);
o a method to map source content segments to destination elements, for example as part of the method of figure 15 (figure 21);
o a method for generating a set of design elements where multiple source fills map to a single destination fill using grid arrangements which define a set of grid sections that define a certain arrangement for a number of fills, for example as part of the method of figure 16 (figure 23);
o example grids showing grid arrangements (figure 24);
o a method for generating a new table based on a source table and a destination table, for example as part of the method of figure 16 (figure 25);
o a method for generating cell styles for a source or destination table, for example within the context of figure 25 (figure 26);
o examples of cell styles (figure 27);
o an alternative context for fill transfer methods 2200 and 2300 besides processing block 1518 of figure 15 or processing block 1608 of figure 16, by reference to the user interface of figure 4 (figure 29);
o an alternative table transfer method, and by reference to the user interface of figure 4 (figure 30);
o a method for generating a new chart based on a source chart and a destination chart, for example as part of the method of figure 16 (figure 31);
o a method for determining whether a destination fill can be replaced by a partial fill, for example as part of the method of figure 5 (figure 32);
o a method for processing input paragraphs to determine a set of text hierarchy levels defined by those paragraphs, for example as part of the method of figure 5 or 8 (figure 33); and
o an example page of paragraph text hierarchies used to illustrate the method of figure 33 (figure 34).
The Claims
The 529 claims
After the latest proposed amendments, the 529 application comprises twenty-two claims, of which claim 1 is the only independent claim. Claim 1 is reproduced below. The entire claim set is given at Annex B to this decision. Dependent claims will be discussed where necessary in the remainder of this decision.
“A computer implemented method including:
accessing source design data in respect of a source design, the source design data defining a first set of source design elements, wherein the first set of source design elements defines one or more source design elements and wherein each source design element is associated with source content of the source design;
processing the first set of source design elements to generate source design analysis data in respect of the source design, wherein the source design analysis data includes a set of source design analysis objects, wherein each source design analysis object corresponds to a source design element in the first set of source design elements, and wherein processing the first set of source design elements to generate the source design analysis data includes:
selecting a first source design element from the first set of source design elements, wherein the first source design element is associated with first source design content; and
generating a first source design analysis object corresponding to the first source design element, the first source design analysis object including a first set of analysis object attributes, the first set of analysis object attributes including:
a first target identifier attribute that identifies the first source design element;
a first type attribute that identifies a content type of the first source design content; and
a first reading order attribute that identifies a position of the first source design element in a reading order of the first set of source design elements;
identifying, based on the source design analysis data, a destination design, wherein the destination design is an existing deck-format design; and
generating a new design based on the source design, the destination design, and the source design analysis data, wherein the new design is a deck-format design and generating the new design includes:
identifying, based on the first source design analysis object, a first destination design element, wherein the first destination design element is an element of the first destination design and is associated with first destination design content;
generating a first new design element, wherein the first new design element is based on the first destination design element and includes content based on the first source design content instead of the first destination design content; and
including the first new design element in the new design.”
The 538 claims
After the latest proposed amendments, the 538 application comprises seventeen claims, of which claim 1 is the only independent claim. Claim 1 is reproduced below. The entire claim set is given at Annex C to this decision. Dependent claims will be discussed where necessary in the remainder of this decision.
“A computer implemented method for mapping a set of source fills to a set of destination frames, wherein the number of source fills in the set of source fills exceeds the number of destination frames in the set of destination frames, the method including:
calculating an ideal fill size for each source fill in the set of source fills;
calculating a remaining capacity value for each destination frame in the set of destination frames; and
mapping the set of source fills to the set of destination frames, wherein mapping the set of source fills to the set of destination frames includes:
selecting a first source fill, the first source fill being the source fill that has the largest ideal fill size and that has not been mapped to any destination frame;
determining that a first destination frame has a largest remaining capacity value;
and in response to determining that the first destination frame has the largest remaining capacity value;
mapping the first source fill to the first destination frame; and
updating the first destination frame’s remaining capacity value to a current remaining capacity value by subtracting the ideal fill size of the first source fill from the remaining capacity value of the first destination frame.”
The Remaining Objection – the 529 application
As noted, the only objection outstanding for the 529 application is that the claims are not for a manner of manufacture. This objection was first raised with the second report. The reasoning presented by the Examiner across the second and third reports has remained substantially consistent. It is apparent, from the reports, that the objection may be summarised, in a general way, as alleging that the claimed invention is, in substance, a scheme that provides for arranging content in a certain way based on particular rules:
“The claimed invention (e.g., claim 1) uses well known hardware (a computer) and software (moving elements from a source design or template to a destination design or template). The substance of the invention is a set of abstract, administrative, logistical and/or aesthetic rules or a scheme to arrange content in a particular style. There is no technical problem being solved
Even assuming the claimed invention has not been done before (i.e., assuming it is novel) it does not mean that the application has necessarily solved technical issues or done so in a way that comprises some technical improvement or does anything other than simply making use of the well-known abilities of computers. I do not see that the combination of features currently claimed do something with a computer which could not already be done.
Once the rules of the scheme are defined, the implementation merely requires simple and well-known mapping and manipulation techniques used in computer software. There is no ingenuity evident in the implementation and no technical problem is being solved.
To the extent that the resulting output is more aesthetically pleasing or eye catching to a user, or that the user may prefer a different layout, such concepts are merely abstract notions. To the extent that the method rearranges a design layout more quickly that if done manually by a human, this merely takes advantage of the computer for its known benefit of automating and speeding up the processing of data, including where such data is in the form of documents or presentations.
As such, the claimed invention is not patentable subject matter.” (second report, emphasis in original)
73. In response to the Applicant’s submissions on the second examination report, the Examiner essentially maintained their position in the third examination report, albeit putting aside any discussion of “aesthetics” from the 529 application:
“The discussion below will also refer to two Hearing decisions, namely: the Hearing decision in Grand Performance Online Pty Limited [2023] APO 20 (12 June 2024) [sic 17 April 2023]; and the Hearing decision in Apple Inc. [2024] APO 23 (12 June 2024). These decisions will be referred to as GPO and Apple respectively. Each of these cases involved computerized algorithms for arranging and rearranging objects from one layout to another based on a set of rules, and in each case were found to not define a manner of manufacture and not be suitable subject matter for a patent.
…
As can be seen from GPO and Apple (whose claims are very similar in nature), automatically generating a new design is not, in itself, sufficient to be considered a manner of manufacture, and while there may be advantages in the scheme, they are not necessarily technical advantages.
…the claimed steps appear to me to simply be expanding the functionality of the computer to make it do something it has not done before as opposed to doing something that allows the computer to do something it could not do before. If there are advantages to the claimed invention, they are innovations in the scheme, not innovations in computer technology. There are no technical problems being solved.” (emphasis in original)
The 529 Submissions
The 529 submissions cover a number of matters, including the procedural background, an outline of what might broadly be called “similar” applications (if not actual family members) and a discussion of the invention as described and claimed. I did not take the procedural background to deviate in any significant manner from what I have outlined above.
The Applicant’s discussion of the invention as described is similar to my discussion of the same above, if generally in less detail, although I note that the Applicant explicitly discusses the graphical user interfaces from figures 4 and 7. This, and the Applicant’s views on the effect of the invention described are perhaps best illustrated by [33] to [41] of the 529 submissions. I have reproduced these paragraphs below:
“33. A new deck-format design that has been generated can then be output (see, for example, processing block 620 of method 600 and processing block 2818 of method 2800). The Application describes various examples of how a new deck-format design may be output, including displaying the new design in a user interface (such as the example user interface described at paragraphs [0292]-[0295] of the Application and depicted in Fig. 7).
34. In this context, therefore, the disclosed embodiments summarised above allow new designs to be generated based on a single existing (or source) design. For a user wishing to generate new designs based on an existing design, the only input that is required is the selection of a particular source design and a user input that initiates design generation.
35. The user experience provided by the invention can, perhaps, be most easily illustrated with reference to the example methods and graphical user interfaces.
36. Paragraph [0276] of the Application provides an example of how a design generation process may be initiated. In this example, the design generation process is initiated on detection of a user input activating a user interface control such as control 430 of example user interface 450 (reproduced below):
37. Paragraph [0276] of the Application goes on to describe that If [sic] the relevant UI control (430 in the example) is activated while a document is currently open (and, for example, displayed in preview area 402), the open document is then determined to be the source document for the design generation process (which is then performed).
38. Once one or more new designs have been generated based on the source design, paragraphs [0291]-[0295] of the Application describe an example of how the generated design(s) may be displayed to a user. This example is described with reference to example user interface 700 of Fig. 7 (reproduced below):
39. In the example user interface 700, a new design that has been generated (or, more specifically, a particular page 704A-1 of a new design 704A that has been generated) is displayed in a preview area 710. A user can then navigate between pages of the new design 704A via navigation controls such as next/previous page controls 712/714.
40. Example user interface 700 also includes a ‘deck selection area’ 702. Which displays previews (or thumbnails) of new designs that are generated. If multiple new designs are generated, a user can select a different new design thumbnail (e.g. 704B) to view a preview of that design in the preview area 710.
41. From a user perspective, therefore, the design generation methods described by the Application allow a user to generate a (or multiple) new designs by simply selecting an existing (source) design and selecting to generate new designs.”
76. At [42] to [51] of the 529 submissions, the Applicant canvasses claim 1 as proposed to be amended. At [43], after listing claim 1, the Applicant observes:
“At a very high level, therefore, the invention of claim 1 operates to automatically process a source design in order to generate a new design. As discussed further below, while ‘processing a source design in order to generate a new design’ is an accurate description of what the invention achieves or a result of the invention, it is not in any way a reasonable exposition of the substance of the claimed invention (which includes the particular processing that is performed in order to generate a new design).” (emphasis in original)
77. Paragraphs [44] to [51] then outline and refer to what is stated to be “relevant context” for the invention of claim 1, by reference to two disclosed embodiments, namely generating a new deck design based on a source document and generating a new deck design based on a source deck. The “relevant context” includes various elements forming part of the invention disclosed, as discussed earlier in this decision, including source design elements, generating source design analysis data, attributes, reading order, identifying a destination design, generating a new design based on a source design, and identifying a first destination design element based on the first source design analysis object.
78. Relevant legal principes on manner of manufacture are discussed at [52] to [60] of the 529 submissions. These were based on the Full Court of the Federal Court in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”), as well as the High Court in National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (“NRDC”) and D'Arcy v Myriad Genetics Inc [2015] HCA 35; 258 CLR 334; 89 ALJR 924; 325 ALR 100; 115 IPR 1 (“Myriad”). However, the Applicant, as I understand it, primarily relies upon the “range of matters” outlined in Aristocrat Technologies Australia Pty Limited [2016] APO 49; 123 IPR 341 (“Aristocrat”) at [35] relevant to determining patentability:
“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.” (reproduced at [57] of the 529 submissions)
79. The Applicant refers to the above “range of matters” as the “Aristocrat Factors”. While adopting these factors, the Applicant is keen to point out that these are not necessarily exhaustive:
“59. In considering the patentability of a computer implemented invention it is important to keep in mind that the Aristocrat Factors are not – and were never intended to be – exhaustive. It is also important to keep in mind that consideration of the Aristocrat Factors is only appropriate if they assist in answering the question whether the invention is patentable subject matter. This is apparent from Myriad (which, as discussed above, stresses a case-by-case approach to manner of manufacture) and also from Section 5.6.8.6 of the Manual of Practice and Procedure (the Manual) which provides (emphasis added) that:
From the decision of the Full Federal Court read in light of the decision in Aristocrat ’22 [Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29], there are a number of considerations that may be relevant to whether a computer implemented invention is in substance a manner of manufacture.
60. Accordingly, care must be taken not to substitute the Aristocrat Factors for the ultimate inquiry of whether an invention is patentable subject matter if they do not assist in or are not appropriate for that inquiry.” (emphasis in original)
80. Paragraphs [62] to [77] put forward the Applicant’s views on the substance of the invention, including consideration of the Examiner’s assessment of the substance. The Applicant, at [62], refers to 5.6.8.1 of the Manual as providing “…useful guidance for determining the substance of a claimed invention”. Paragraph [62] repeats the “relevant factors” from the Manual:
“Relevant factors to consider and weigh up may include:
·The contribution to the art asserted by the specification;
·The level of detail provided in the specification with regard to various aspects of the invention;
·How does the invention work;
·The form of words, breadth and emphasis of the claim;
·What problem does the invention address;
·What are the actual or alleged advantages of the invention; and
·What does the invention add to the state of the art as at the priority date?”
81. There is also some discussion of the case law at [80] to [90] of the 529 submissions, in the context of considering whether the claimed invention is patentable by reference to the Aristocrat Factors. These include Grant v Commissioner of Patents [2006] FCAFC 120; 154 FCR 62; 234 ALR 230; 69 IPR 221 (“Grant”), Burroughs Corporation (Perkins’) Application [1974] RPC 147 (“Burroughs”), Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; 227 FCR 378; 109 IPR 364 (“Research Affiliates”) and International Business Machines Corporation v Commissioner of Patents [1991] FCA 811; 33 FCR 218; 105 ALR 388 (“IBM”).
82. Overall, I did not take the Applicant as putting forward principles to be applied regarding manner of manufacture that are materially different from those I have adopted below. I will, however, address some areas of apparent disagreement below where appropriate. I will also consider, where necessary, some of the Applicant’s submissions concerning the case law in connection with my assessment of the patentability later in this decision.
83. Before continuing, it is worth noting that the relevant factors cited by the Applicant from the Manual are general principles to be used when considering the substance of the invention for any type of claimed invention; this much is apparent from the title at 5.6.8.1 – “General Principles – Assessing Manner of Manufacture”. Consequently, while of general applicability, and noting that each matter must be assessed on its merits, it may be seen that the relevant factors from the Manual may be expressed for computer implemented inventions using the Aristocrat Factors or, those from Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988; 139 IPR 1 (“Rokt Pte Ltd”) outlined below.
84. The Applicant discusses the Examiner’s assessment of the substance of the invention at [64] to [69] of the 529 submissions. Whilst there are some further criticisms of the Examiner’s analysis, the core of the Applicant’s submissions on the Examiner’s views on the substance of the invention is reflected at [64] to [67], which are reproduced below:
“64. In Report 2, the Examiner states that:
The substance of the invention is a set of abstract, administrative, logistical and/or aesthetic rules or a scheme to arrange content in a particular style.
65. It is submitted that this appears to be a conclusion on the issue of patentable subject matter, rather than a proper identification of the substance of the invention as claimed. Specifically, in seeking to answer the question of whether the substance of the invention is (for example) an abstract idea or a mere scheme (and therefore unpatentable), the Examiner states that the substance of the invention is a set of abstract rules or a scheme.
66. Even if this is not the case, the Examiner’s determination of the substance of the invention does not appear to take any of the ‘relevant factors’ discussed above into account.
67. Furthermore, the Examiner’s reference in Report 2 to the substance of the invention involving arranging content in a particular style sits uneasily with the invention as claimed. At best, the ‘arrangement of content’ may be seen (at a very general level) as a result of the claimed invention. That said, the invention does not really involve arranging content. Rather, the invention involves generating a new design in which a new element is generated based on first source design content and a first destination design element. It is not clear where the Examiner’s reference to ‘a particular style’ comes from or what it is intended to convey.” (emphasis in original)
I note that the reference at [66] to the relevant factors refers to those from the Manual as repeated as [62] of the 529 submissions or [80] of this decision.
85. What the Applicant considers to be the actual substance of the 529 invention is outlined at [70] to [77] of the 529 submissions. The Applicant’s discussion proceeds by way of reference to the “relevant factors” from the Manual outlined above, as apparent from [71] to [75] of the 529 submissions:
“71. As discussed at section 6.1 above, one relevant factor for determining the substance of a claimed invention is ‘the contribution to the art asserted by the specification’. With respect to this factor:
a. The Application at the outset identifies the technology that the invention relates to – ‘Computer applications for creating and working with designs’ (see paragraph [0002] of the Application). It also identifies a relevant problem ‘In some situations, a user may wish to use a design they have created as the basis for generating another design. For example, a user may wish to use content prepared in an original document-format design as the basis for a deck-format design’ (see paragraph [0004] of the Application).
b. At paragraphs [0044] and [0045], the Application describes the following:
[0044] Certain embodiments of the present disclosure are directed to systems and methods for generating a new deck format design based on a source document-format design.
[0045] As one example, a user may have source content in a document but want to convert that document design into a deck. For example, a user may initially prepare a document that includes an outline (or other content) for a deck. Techniques described herein operate to automatically identify a matching template design and then generate a new deck-format design that is based on the template but that includes the source content from the original document.
c. At paragraph [0046] and [0047], the Application goes on to describe that
[0046] Other embodiments of the present disclosure are directed to systems and methods for generating a new deck-format design based on a source deck-format design.
[0047] As one example, a user may generate a source (deck-format) design but wish to change the layout of the elements in the design page(s). In this case, the techniques described herein operate to automatically identify a matching template design and then generate a new deck-format design that is based on the template but that includes the source content from the original deck.
d. The art may be described as a computer application for creating and working with designs configured to automatically create a new design based on an existing (source) design. This is apparent from the claims and from specification as a whole.
72. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above is ‘the level of detail provided in the specification with regard to various aspects of the invention’. With respect to this factor:
a. The claimed invention is described in detail in the Application.
b. Paragraphs [0272]-[0298] of the Application describe relatively high-level processing that may be performed in a method (600) for generating a new deck-format design based on a document-format design. Paragraphs [0795]-[0817] of the Application describe high level processing that may be performed in a method (2800) for generating a new deck-format design based on an existing deck-format design.
I do not consider that the invention of the claim comprises a contribution that is technical in nature.
Does the invention solve a “technical” problem within the computer or outside the computer?
It is not apparent that the claim solves a technical problem within or without the computerised apparatus or systems concerned. Merely providing the function of scaling a number of source fills so that they can fit into a smaller number of destination frames and where the mapping order is based on the sizes of the source and destination frames with updating of the capacity of the destination frame concerned is not addressing any technical difficulty as such. Rather, it appears to simply be a manner, in terms of following a set of steps or instructions, of arranging the source fills so they fit into the destination frames. As discussed above, I remain unconvinced that the claim comprises anything of a technical nature, other than the use of computer technology as such. Nothing within the claim appears to address or overcome any technical difficulties.
The Applicant has provided some consideration of the problems addressed by the invention, as apparent from my discussion above at [187] et seq above. As noted there, I do not consider these to be technical problems as such.
There is also some mention of problems said to be addressed by the 538 application at [60] and [64] of the 538 submissions. These refer to a user wishing to use an existing design as the basis for a new design (at [60]) and a user wishing to transfer a number of source fills that exceeds the number of destination frames (at [64]). I do not consider that either of these are technical problems as such.
The corresponding Aristocrat Factor was discussed, amongst other considerations, at [79] of the 538 submissions:
“Several other Aristocrat Factors are discussed (and arise in the context of) Research Affiliates. These include the questions of: ‘does the invention solve a technical problem within the computer or outside the computer’ (discussed in the context of European and UK law); ‘does the method merely require generic computer implementation’ (discussed in the context of US law); ‘can it be broadly described as an improvement in computer technology’; and ‘is there ingenuity in the way in which the computer is utilised’. With respect to these Aristocrat Factors:
a. In the opening paragraph of Research Affiliates the Full Federal Court identified that the question being addressed in that case was ‘whether computer implementation of an otherwise unpatentable business scheme is sufficient to make the claimed method properly the subject of letters patent’ (emphasis added).
b. Indeed, and as set out at paragraph 82 of Research Affiliates, this question mirrors the question that was asked by the Commissioner of Patents: Is that sufficient? As the Commissioner puts it: is an ‘invention’ which is in the nature of a business, commercial or financial scheme rendered patentable ‘merely’ by reason of the fact that it is implemented by means of a computer?
c. Accordingly, the inquiries raised by these particular Aristocrat Factors may be apt for an invention that is identified (as a matter of substance) to be the computer implementation of an otherwise unpatentable ‘business’, ‘commercial’ or ‘financial’ scheme.
d. The substance of the present invention is not, however, computer implementation of an otherwise unpatentable business/financial/commercial scheme. Given this, it is submitted that these particular Aristocrat Factors are neither useful nor relevant to determining whether the present invention is a manner of manufacture.
e. Even if the Hearing Officer disagrees with this, it is again noted that the Aristocrat Factors are not exhaustive. Furthermore, even if the Aristocrat Factors do apply the requirement is not – and cannot be – a requirement that each and every one of the Aristocrat Factors is satisfied. Instead, it is submitted that if an invention satisfies even one of the Aristocrat Factors this should point towards that invention being a manner of manufacture.” (emphasis in original, references to footnotes removed)
These submissions are identical to those at [89] of the 529 submissions. My comments concerning [89] of the 529 submissions at [133] et seq apply equally here.
Is there an improvement in the functioning of the computer, irrespective of the data being processed?
I cannot ascertain any improvement in the functioning of any of the computerised features used within the claim, irrespective of the data being processed. As discussed above, the computerised features present in the claim are merely used for their standard or known abilities to identify, process, read and generate data. Any improvement, to the extent one can be identified, appears to reside in the fact that the claimed invention (once put into practice via a suitable computer program, with such programming left entirely up to the skilled addressee) is in the automatic scaling/resizing of a number of source fills so that they can be fit into a smaller number of destination frames, with the order of mapping of source fills to destination frames proceeds from the largest to smallest source fill into the largest (calculated) capacity destination frame available, and with the capacity of the destination frame concerned then being updated.
The Applicant discussed an essentially identical Aristocrat Factor at [75] of the 538 submissions, which is reproduced below:
“Another Aristocrat Factor raises the question of ‘does the invention result in improvement in the functioning of the computer, irrespective of the data being processed’. In this regard:
a. Yes, the present invention operates to provide a useful tool for a design application, irrespective of the source design and irrespective of the destination frames. Instead, the invention functions based on physical parameters represented by the data, such as fill size and capacity.” (emphasis in original)
I fail to see how the claimed invention improves the function of the computer as such. It is quite clear that any generic computer system may be used to perform the invention, with the details of that implementation in both hardware and software being entirely left to the skilled addressee. It is hard to see how the mere use of such generic technology for its well-known and understood capabilities can be understood to comprise an improvement in computer technology as such. If the invention as it stands provides some technical benefit or improvement to computer technology, for example in terms of being able to create designs irrespective of the number of source fills and the destination frames which could not previously be achieved with computer technology, then this does not emerge from the claim as it stands or from reading the specification. Rather, the ability to process and generate data within the bounds of the claim appears to extend from the processing abilities of computers as known in the art.
The fact that the invention provides a “useful tool” is relevant to considerations of patentability and will be discussed further below. However, the notion of “usefulness” does not necessarily answer questions regarding whether there has been any improvement in the functioning of the computer as such.
Similarly, to the extent that fill size and frame capacity can be considered “physical parameters”, the fact a claim comprises “physical parameters” does not necessarily make it for a manner of manufacture. While I am cognisant of my own words above concerning analogies, one can easily draw a physical analogue to the present invention based on arranging books on shelves, where the total volume taken up by your books exceeds the (known/calculated) capacity of your shelves, so to remedy the situation you replace your existing book set with scaled/smaller versions of the same and then fill your bookshelves in order of the size of the books starting with the shelf with the largest capacity, and then updating the capacity of the shelf concerned. Such a process for simply arranging items has never been held to be patentable.
As apparent from [195] et seq above, the Applicant also included “can it be broadly described as an improvement in computer technology” at [79] of the 538 submissions. This consideration is relevant to the present consideration from Rokt Pte Ltd, and I refer to my comments on [89] of the 529 submissions at [133] et seq above. Whilst the Applicant has not provided any comment on this Aristocrat Factor, it should be apparent that I do not consider that the claim comprises any improvement in computer technology.
Does the invention require merely “generic computer implementation”, as distinct from steps which are “foreign” to the normal use of computers?
For reasons as discussed above, it is quite clear that all the computerised features of the claimed invention are being used in a generic sense in that use is merely made of the well-known functions and abilities of the same, or of techniques that are well known to be used in reading, processing or generating data in a computerised system. There is nothing in the use of any of the computerised features which is foreign to the normal use of computers.
The Applicant provided submissions on a related Aristocrat Factor at [77] of the 538 submissions, reproduced below:
“Another Aristocrat Factor raises the question of ‘does the invention involve steps that are foreign to the normal use of computers’. In this regard:
a. This Aristocrat factor arises out of IBM. In IBM Burchett J found that ‘application of [a] selected mathematical methods to computers, and in particular, to the production of the desired curve by computer’ did involve steps that were ‘foreign to the normal user of computers’.
b. For similar reasons, it is submitted that the operations of the present invention (which include a specific algorithm with specific mathematical calculations) do ‘involve steps that are foreign to the normal user of computers’.” (references to footnotes removed)
I have already discussed above, in connection with the 529 submissions, how IBM involved steps that are foreign to the normal use of computers. It is not clear to me how merely using non-descript computer technology for its well-known abilities to analyse, process and generate data in any way comprises something that is foreign to the normal use of computers. Carrying out the algorithm simply involves, as noted above, the rescaling of a number of source fills so that they can fit into a smaller number of destination frames, filling in order of source fill size into the largest (calculated) capacity destination frame available and updating the capacity of the destination frame concerned. While the Applicant refers to “specific mathematical calculations” these do not appear in the claim. There is a determination/calculation of destination frame capacity and updating of destination frame capacity, but how this is achieved is left entirely up to the skilled addressee. As discussed above at [185] et seq, the “ideal fill size” is an even more nebulous term/value to be worked out by the skilled addressee and may be best appreciated as some means of scaling the source fill sizes so they may fit into the destination frames.
I note that the Applicant also addresses “does the method merely require generic computer implementation” at [79] of the 529 submissions. These submissions have already been discussed above at [133] et seq, and I refer to my comments there, noting that the Applicant did not directly comment on whether the method merely required generic computer implementation.
Is the computer merely an intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea?
For reasons as discussed above the computerised features are specified at only a generic level to merely facilitate the reading, identification, processing and generation of data so as to enable the mapping of a number of source fills into a smaller number of destination frames by resizing the source fills and where the mapping order proceeds on source fill size into the largest (calculated) capacity destination frame and updating of the destination frame capacity. That is, the computer technology is merely an intermediary facilitating the reading, processing and generation of data within the claim and adds nothing of substance to the same.
Although the Applicant did not address this consideration separately, some comments on the computer being more than an intermediary are present at [84] of the 538 submissions in the context of discussing “there must be more than an abstract idea, mere scheme or mere intellectual information”. Paragraph [84] is reproduced below:
“In the hypothetical wizard example (and assuming there isn’t ‘something more’ in the implementation), the computer is clearly an intermediary in the sense discussed in RPL Central. This is not, however, analogous to the present invention. The present invention does not guide a user through a process of mapping source fills to destination frames. Rather, the present invention provides a specific set of computer-implemented steps to automatically do this. It shifts the burden of determining how to map (and ultimately transfer) a set of source fills to a set of destination frames from a human operator into the computer. To achieve that, the invention involves a new and practical use of an algorithm to result in a commercially useful effect in computer graphics or in computer applications for generating designs.” (references to footnotes removed)
I will consider whether there is a useful and practical effect later in this decision. In terms of the computer being an intermediary, I cannot agree with the Applicant’s characterisation at [84]. The fact that a method may provide specific computer implemented steps to automatically map fills as per the claim in no way answers the question of whether the computer concerned is acting as nothing more than an intermediary. Indeed, the Applicant’s submissions here, if anything, reinforce the impression that the computer is simply being used for its well-known abilities to process data so as to automate the transfer of source fills into destination frames as per the claim. That is, it is apparent that the computer is nothing more than an intermediary in performing the claim.
Similar arguments were made at [74]a of the 538 submissions. These are cited and discussed above at [187] et seq above, and I refer to the comments made there in connection with the computer merely being an intermediary.
Other considerations put by the Applicant
Beyond the submissions put by the Applicant discussed above in connection with the factors from Rokt Pte Ltd, the Applicant also provided submissions on other Aristocrat Factors, including:
· “there must be more than an abstract idea, mere scheme or mere intellectual information”;
· “does the application of the method produce a practical and useful result”;
· “does the invention lie in the generation, presentation or arrangement of intellectual information”; and
· “is there ingenuity in the way the computer is utilised”.
For completeness, I will consider each of these considerations below.
There must be more than an abstract idea, mere scheme or mere intellectual information
The Applicant discusses this at [73] of the 538 submissions:
“One of the Aristocrat Factors is that ‘there must be more than an abstract idea, mere scheme or mere intellectual information’. In this regard:
a. It is submitted there is clearly more than an abstract idea, mere scheme, or mere intellectual information.
b. In Grant, the Full Federal Court discussed ‘schemes’ as follows: ‘It has long been accepted that ‘intellectual information’, a mathematical algorithm, mere working directions and a scheme without effect are not patentable.’
(This quote is referred to in section 5.6.8.8 of the Manual.)
c. While the claimed invention includes a mathematical component (see paragraphs 66-67 above), the invention cannot be considered unpatentable subject matter because of this. In this regard, Section 5.6.8.8 of the Manual provides the following:
For example, in the matter International Business Machines Corporation v Commissioner of Patents (1991) FCA 625 the Court, in considering a method for producing an improved (that is, smoother) visual representation of a curve, found (at paragraph 16) that:
‘In the present case, it seems to me that the use of the algorithm is not different conceptually from the use of the compounds involved in National Research and Development Council. Just as those compounds were previously known, so here, it is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers, and in particular, to the production of the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers ....’
The distinction to be drawn is between a claim to an algorithm (or scientific principle or natural phenomenon) in the abstract sense and the application of the formula to a process such that it produces ‘some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art’.
d. While the claimed invention may be considered to involve ‘mathematical methods’, we submit the claimed invention is clearly directed to the ‘application of the selected mathematical methods to computers’ (per IBM). The claim is not directed to an algorithm in the abstract sense and produces a practical and material advantage.” (references to footnotes removed)
I tend to agree with the Applicant that the invention as claimed (or as described for that matter) is, as matter of form, more than an abstract idea, a mere scheme or mere intellectual information. The scaling/resizing of the source fills, calculating of the destination frame capacities and the mapping of the source fills into destination frames based on size/capacity of the source fills/destination frames and updating of destination frame capacity being performed by computer elevates the claimed invention to something more than an abstract idea, mere scheme or mere intellectual information. It is not as though the claimed invention is just a thought bubble in someone’s mind, instructions for a juggling routine or characters on a billboard.
However, it does seem that the Applicant is, in effect, submitting that anything which avoids the prohibition on abstract ideas, mere schemes or mere intellectual information as a matter of form must necessarily be for a manner of manufacture. That cannot be correct, for reasons as discussed earlier in this decision with respect to the 529 submissions at [158] et seq.
For reasons that should be apparent from the preceding discussion, I do not consider that the claimed invention leads to a material advantage in the sense of IBM. As per the discussion above at [185] and [186], the mathematical methods used in the claim are quite general in nature and it is essentially left to the skilled addressee to work out how they will implement these in performing the claim. The mathematical methods of the claim simply exist to facilitate the transfer or organisation of the source fills into a smaller number of destination frames. Such methods of organising or arranging objects, whether real or virtual do not provide for a material advantage as that phrase is understood in the authorities.
In summary, while I agree that the claimed invention is, as a matter of form, more than an abstract idea, mere scheme or mere intellectual information, I cannot agree that this means it must be for a manner of manufacture. This is particularly so, where other considerations as discussed above strongly indicate that the claimed invention is in substance a scheme.
Does the application of the method produce a practical and useful result?
The Applicant addresses this consideration at [76] of the 538 submissions, reproduced below:
“Another Aristocrat Factor raises the question of ‘does the application of the method produce a practical and useful result’. In this regard:
a. It is submitted that any application of the invention as claimed produces a practical and useful result: namely, the mapping of a set of source fills to a set of destination frames. As discussed above, this result has various uses in the context of a computer application for processing designs.”
I agree that the claimed invention produces a practical and useful result. However, similarly as discussed in connection with the 529 submissions above at [161] et seq, it is not necessarily sufficient to point to a practical and useful result as evidence that an invention is for a manner of manufacture.
In summary, while I agree that the claimed invention provides for a practical and useful result, I cannot agree that this means it must be for a manner of manufacture. This is particularly so where other considerations as discussed above strongly indicate that the claimed invention is in substance a scheme.
Does the invention lie in the generation, presentation or arrangement of intellectual information?
The Applicant provides submissions on this consideration at [78] of the 538 submissions, reproduced below:
“Another Aristocrat Factor raises the question of ‘does the invention lie in the generation, presentation or arrangement of intellectual information’. In this regard:
a. The key words here are ‘lie in’. Claim 1 is silent on the content and presentation or arrangement of the frames and fills in both the source and the destination. It cannot therefore ‘lie in’ this field. Furthermore, it is submitted that the real consideration here is ‘does the invention lie solely in the generation, presentation or arrangement of intellectual information’ – and in the present case this is clearly not the case (with the claimed invention relating to a particular process that involves application of a mathematical algorithm in order to map source fills to destination frames).” (emphasis in original)
I can accept, in line with my discussion above at [213], that the claimed invention does not lie in the mere generation, presentation or arrangement of intellectual information as such. While the source fills are mapped or arranged into the destination frames, the claim also comprises steps of finding the ideal size of the source fills, calculating capacities of the destination frames, using the ideal fill size to transfer the source fills in order of ideal size to the destination frame with the largest available capacity and updating the destination frame capacity.
As per my discussion in connection with the 529 submissions it is not clear to me on what basis the Applicant inserts “solely” into the consideration as per [78] of the 538 submissions, and I refer to comments above at [166].
Is there ingenuity in the way the computer is utilised?
The Applicant provided submissions on this consideration at [79] of the 538 submissions, amongst “does the invention solve a technical problem within the computer or outside the computer” and “does the method merely require generic computer implementation”. These submissions have been addressed above at [195] et seq. Although the Applicant submitted that this consideration was not applicable, I fail to see how this is the case. It should be apparent from the above discussion that I do not see there as being any ingenuity in the way the computer is utilised – it is simply used for its inherent capabilities to analyse, process and generate data.
What is the substance of the invention in claim 1 and is this patentable?
On weighing up the above considerations, these suggest that the substance does not reside in any technical features present in the claim, nor in any working interrelationship between these or others features that provide for a patentable effect. In general terms, the substance of the claimed invention resides in a scheme for mapping source fills to destination frames by scaling a number of source fills so that they can fit into a smaller number of destination frames and where the mapping proceeds in order from largest to the smallest of the source fills and into the destination frame with the largest (calculated) capacity, with the capacity of that destination frame being updated. This may be more specifically expressed as including the elements outlined at [182] above, but neither of these expressions of the substance changes the character of the invention as claimed – these both still represent unpatentable schemes.
As noted earlier in this decision, the Applicant indicates elements that it considers form part of the substance and an “example” substance at [66] and [67] of the 538 submissions, reproduced below:
“66. Acknowledging, once again, that the specific identification of the substance of the invention may have many answers, it is submitted that the substance of the present invention clearly must:
a. include reference to the practical result of a machine mapping source fills to destination frames, thereby allowing the transfer of fills to those frames;
b. include reference to the algorithm and the calculations involved in the algorithm that are claimed and that lead to the practical result; and
c. recognise that the invention is a component part of a machine or process that transfers a set of selected fills to a set of selected frames (in one context) and automatically creates a new design from a source design (in another context).
67. An example ‘substance’ of the invention, therefore, may be something like ‘The use or application of a specific mathematical equation (the claim features relating to calculating an ideal fill size, calculating frame capacity, and updating frame capacity) in a practical manner (the claim features relating to mapping the source fills using the claimed selection and determination processes), to produce particular effects (the mapping of source fills to destination frames, thereby enabling various applications such as those described at 26 to 29 above, and including transferring source fills to destination frames, which is the subject of claim 15)’.” (emphasis in original)
The only material difference between the Applicant’s “example” substance and the one identified above at [224] relates to the Applicant’s assertion of their being “a specific mathematical equation”. However, I am of the view that this is a mischaracterisation of claim 1 (at least), because, as discussed earlier in this decision, no specific mathematical equation is actually identified or used in claim 1.
The Applicant states at [80] of the 538 submissions that:
“As discussed above, when the substance of the claimed invention is properly considered it is submitted that a number of relevant Aristocrat Factors are answered in the affirmative. While the Aristocrat Factors are not exhaustive it is submitted that this does point to the claimed invention being a manner of manufacture.”
It should be apparent from my discussion of the considerations from Rokt Pte Ltd of the Applicant’s submissions on the Aristocrat Factors that I cannot agree with the Applicant’s suggestion that the claim is for a manner of manufacture. As discussed, the mere fact that some considerations may point towards patentability, such as there being a practical and useful effect, does not mean that invention must be for a manner of manufacture. Other considerations clearly indicate that there is no technical improvement, technical solution or technical problem solved as a consequence of the claim, with the computer technology being used for its well-known functions to analyse, process and generate data.
The Applicant has also provided some arguments, from [81] to [85] of the 538 submissions concerning the “line between patentable and unpatentable subject matter”. The Applicant cites Justice Emmett in Research Affiliates LLC v Commissioner of Patents [2013] FCA 71; 300 ALR 724 at [16] before stating the following at [83] to [85] of the 538 submissions:
“83. Turning to the present matter, at one end of the scale are inventions which are not patentable, such as those that relate to purely artistic or literary endeavours or which are mere schemes. Methods of using a computer to arrange or rearrange contents in an artistic or literary way or which use a wizard approach that steps a user through a process may be unpatentable if there is not ‘something more’ in the specific implementation. At the other end of the scale, perhaps, is the invention of the graphics processing unit (GPU) and software to optimise the use of the GPU. There is an entire spectrum between these ends of the scale and the present task is to decide where on that scale the claimed invention lies.
84. In the hypothetical wizard example (and assuming there isn’t ‘something more’ in the implementation), the computer is clearly an intermediary in the sense discussed in RPL Central. This is not, however, analogous to the present invention. The present invention does not guide a user through a process of mapping source fills to destination frames. Rather, the present invention provides a specific set of computer-implemented steps to automatically do this. It shifts the burden of determining how to map (and ultimately transfer) a set of source fills to a set of destination frames from a human operator into the computer. To achieve that, the invention involves a new and practical use of an algorithm to result in a commercially useful effect in computer graphics or in computer applications for generating designs.
85. The present invention is, therefore, an example patentable invention of the type contemplated by Justice Emmett.” (emphasis in original, references to footnotes removed)
As noted earlier in this decision, the fact that the claimed invention is not a “wizard” in no way indicates that it must necessarily be for a manner of manufacture. Similarly, for reasons as already discussed (for example at [189] above), I am of the view that the computer only appears in the claim as an intermediary, used for its well-known abilities to process and generate data to facilitate automation of the transfer of source fills to destination frames as otherwise defined in the claim. As also explained earlier in this decision, simply providing a series of steps to transfer or arrange something (whether real or virtual), while practical and useful, does not provide for a material advantage as understood by the authorities.
Similarly, as for the 529 submissions, the 538 submissions at [86] to [92] provide some arguments as to why the substance of the invention is patentable, but these go no further than arguing that the substance of the claim includes the way the source fills are mapped to destination frames, and thereby the claim is not for a mere scheme. I have no fundamental disagreement with this general assessment of what the substance of the claimed invention is. However, it should be apparent that I am of the view that the way the source fills are mapped to destination frames, even if comprising a number of steps, is, in substance, a scheme.
Are Any of the Dependent Claims for a Manner of Manufacture?
I have also considered each of the dependent claims. These comprise additional features that amount to adding additional steps to claim 1 or other dependent claims, or in specifying the nature of certain elements that form part of claim 1:
· claim 2: as per claim 1, where the ideal fill size for the first source fill is based on a size of the first source fill (see, for example, [0516] of the description and step 2208 of figure 22);
· claim 3: as per claim 1, where the ideal fill size for the first source fill is based on a size of the first source fill, the total frame capacity value and a total fill size value (see, for example, [0516] of the description and step 2208 of figure 22);
· claim 4: as per claim 3, where the total frame capacity value is the sum of the capacity values of the destination frame (see, for example, [0516] of the description and step 2208 of figure 22);
· claim 5: as per claims 3 or 4, where the total source fill size value is the sum of the size values of the source fills (see, for example, [0516] of the description and step 2208 of figure 22);
· claim 6: as per claims 3 to 5, where the ideal fill size for the first source fill is calculated as the first source fill’s size multiplied by (the total frame capacity divided by the total source fill size) (see, for example, [0516] of the description and step 2208 of figure 22);
· claim 7: as per claims 1 to 6, where the first destination frame is identified as having the largest remaining capacity, an unmapped second source fill is identified as having the largest ideal fill size and the second source fill is then mapped into the first destination frame in a similar manner as per claim 1 (see, for example, [0518] to [0522] description and 2212 to 2220 of figure 22);
· claim 8: as per claims 1 to 6; where a second destination frame is identified as having the largest remaining capacity, an unmapped second source fill is identified as having the largest ideal fill size and the second source fill is then mapped into the second destination frame in a similar manner as per claim 1 (see, for example, [0518] to [0522] of the description and 2212 to 2220 of figure 22);
· claim 9: as per claims 1 to 8, where a document format design is automatically processed to extract source fills from the document format design (see, for example, [0305], [0306], [0510], [0513] and [0822] of the description, steps 804 and 806 of figure 8, step 2204 of figure 22 and step 2904 of figure 29);
· claim 10: as per claims 1 to 8, where a page of a deck format design is automatically processed to extract source fills from the page (see, for example, [0191], [0192], [0510], [0513] and [0821] of the description, step 508 of figure 5, step 2204 of figure 22 and step 2902 of figure 29);
· claim 11: as per claims 1 to 8, where user input selects the source fills (see, for example, [0717], [0822] and [0824] of the description and step 2904 of figure 29);
· claim 12: as per claims 1 to 11, where the destination frames correspond to an element of a deck format design page (see, for example, [0510] and [0818] of the description, noting that deck format designs may in general comprise frames);
· claim 13: as per claims 1 to 12, where a page of a deck format design is automatically processed to determine the set of destination frames (see, for example, [0191], [0192], [0510], [0514] and [0821] of the description, step 508 of figure 5, step 2206 of figure 22 and step 2902 of figure 29);
· claim 14: as per claims 1 to 12, where user input selects the destination frames (see, for example, [0717], [0821] and [0824] of the description and step 2902 of figure 29);
· claim 15: as per claims 1 to 14, where the set of source fills is transferred to the destination frames (see, for example, [0829] of the description and step 2910 of figure 29);
· claim 16: a computing system with computer readable instructions that when executed by the computer cause it to perform a method as per claims 1 to 15; and
· claim 17: storage media comprising instructions that cause a computer to perform a method as per claims 1 to 15.
I do not see anything in the additional features provided by claims 2 to 17 that materially varies the substance of claim 1. These simply add additional steps further specifying how the source fills are to be transferred to the destination frames or further outline or define elements used as part of those further steps. In particular the fact that some of the dependent claims, for example claim 6, comprises certain mathematical expressions that are used to determine the ideal fill size in no way changes the substance of the invention – these reflect quite simple mathematical expressions to determine variables used as inputs in the scheme for mapping source fills to destination frames. The dependent claims do not provide for any material advantage that would confer patentability. It follows that none of the dependent claims are for a manner of manufacture.
Conclusion
None of the claims as defined in either of the 529 or 538 applications are for a manner of manufacture. Based on my consideration of the specification, it is not clear to me that there is any subject matter within the applications that could be made the subject of a claim that would be for a manner of manufacture. Nevertheless, in view of the considerable variety of various methods within the applications, each application may contain potentially patentable material. I consider it appropriate for the Applicant to be provided with an opportunity to attempt to craft patentable claims via further examination of the applications. Pursuant to Reg 13.4(3), the date to gain acceptance for each application has been reset to six (6) months from the date of this decision. The Applicant has this time to respond to attempt to gain acceptance of the applications in light of my decision.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
Annex A – Certain Drawings
Annex B – Claims of the 529 application
Annex C – Claims of the 538 application
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