Caroma Industries Limited
[2024] APO 55
•23 December 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Caroma Industries Limited [2024] APO 55
Patent Application: 2021245125
Title:Maintenance management system and method
Patent Applicant: Caroma Industries Limited
Delegate:Anish Singh
Decision Date: 23 December 2024
Hearing Date: Written submissions filed on 1 March 2024
Catchwords: PATENTS – section 45 – examiner’s objection – maintenance management system – components usage data – location – minimise travel time – geographical mapping – manner of manufacture – invention in substance directed to an administrative scheme – application refused – inventive step not considered
Representation: Patent attorney for the applicant: Spruson & Ferguson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2021245125
Title:Maintenance management system and method
Patent Applicant: Caroma Industries Limited
Date of Decision: 23 December 2024
DECISION
The invention defined in each of claims 1-14, as proposed to be amended, do not define a manner of manufacture. Furthermore, after consideration of the material disclosed in the specification as a whole, I am of the opinion that no allowable amendment can overcome this finding. In light of this, it is unnecessary to make a decision with respect to inventive step.
I refuse the application.
REASONS FOR DECISION
Background
Patent application 2021245125 (the application) by Caroma Industries Limited (the applicant) was filed on 6 October 2021 as a divisional application from parent application 2018221877. Consequently, the application claims an earliest priority date of 16 February 2017. Examination on the application was requested on 22 December 2021.
There were three adverse examination reports on the parent application. These three adverse examination reports on the parent application together included objections with respect to manner of manufacture, novelty, inventive step, and s40. The parent application lapsed for failing to gain acceptance by the due date.
Examination report No. 1 on the application was issued on 30 November 2022. The report contains objections with respect to manner of manufacture, novelty, inventive step, and an objection under Subsection 64(2). A response to Examination report No. 1 was filed on 4 August 2023 with proposed amendments. In the first statement of proposed amendments to the specification of the application (the specification), the applicant proposed, under items 1 and 2, amendments to the description and claims.
Examination report No. 2 on the application was issued on 29 August 2023. The report contains objections with respect to allowability of proposed amendments, manner of manufacture, clarity, and inventive step. A response to Examination report No. 2 was filed on 13 October 2023 with proposed amendments. In the second statement of proposed amendments to the specification, the applicant proposed, under items 3 and 4, amendments to the description and claims.
Examination report No. 3 on the application was issued on 7 November 2023. The report contains objections with respect to manner of manufacture and inventive step. A response to Examination report No. 3 was filed on 15 November 2023 with proposed amendments. In the third statement of proposed amendments to the specification, the applicant proposed under item 5, amendments to the claims.
Examination report No. 4 on the application was issued on 23 November 2023. The report contains objections with respect to manner of manufacture and inventive step. A request for a hearing was filed on 30 November 2023.
The hearing was conducted by way of written submissions. On 1 March 2024, the applicant filed written submissions.
The final date for acceptance of the application was 30 November 2023. However, paragraph 13.4(1)(g) of the Patents Regulations 1991 (the Regulations) may be available to extend the time for gaining acceptance to three (3) months (or longer under subregulation 13.4(3)) from the date of the present decision.
The specification
The proposed amendments
The amendments proposed on 4 August 2023 are directed to deleting description page 2 as filed and substituting it with new pages 2 and 2a, and deleting all claims pages as filed and substituting them with new pages 9 to 12.
10.The amendments proposed on 13 October 2023 are directed to deleting description pages 2 and 2a and substituting them with new pages 2 and 2a and deleting all claims pages and substituting them with new pages 9 to 12.
11.The amendments proposed on 15 November 2023 are directed to deleting claim page 9 and substituting the page with new page 9.
12.I do not need to decide conclusively whether the proposed amendments are allowable as it will not affect the outcome of my decision. In Examination report No. 4, the examiner took no issue of allowability of amendments in accordance with section 102. Thus, the claims as proposed on 13 October 2023 and 15 November 2023 appear allowable. For the benefit of the applicant, I will consider the specification as proposed to be amended as per items 3, 4 and 5 in the second and third statement of proposed amendments.
The body of the specification
13.The application relates to a maintenance management system and method. As a background to the alleged invention (paragraphs [0003]-[0005] of the specification), components of most systems require regular maintenance. This may include replacement, inspection, or cleaning of components or sub-components of a system. The maintenance may be performed on a demand basis or as a matter of routine. The problem identified in the background, with different components having different maintenance requirements, is the scheduling of the maintenance. The specification identifies that the scheduled maintenance is not adaptive to the system’s status or frequency of use. Consequently, this results in either too much maintenance or not enough maintenance.
14.The background of the alleged invention in the specification (paragraph [0005]) indicates that a “need exists for a maintenance management system to assist in the scheduling of maintenance”.
15.In general terms in addressing the problem, the alleged invention relates to a system or method that utilises multiple interrelated components such as a server, location determining device, sensors, display, and timer, along with certain processes to identify an efficient order in which components are to be maintained, and maintenance tasks are removed from a maintenance schedule.
16.Paragraphs [0013]-[0032] of the specification discusses the invention with respect to Figures 1 – 3. Fig. 1 illustrates a Bathroom Maintenance Management System according to the disclosure of the alleged invention. Figure 1 is reproduced here:
17.Figure 1 and its associated description disclose a system 100 that includes a server 110 (having one or more processors and data storage devices) connected to a network 120. The network connects a number of bathroom components 150, such as tapware, toilets, paper towel dispensers, soap dispensers etc., wherein each component has a processor and is connected to the network, to a sub-network connected to the network through a gateway 125, or directly to the gateway. Each component additionally has an identifier that is unique in the system and has an associated location. The location may be ascertained using floor plans or maps, or a handheld location determining device, such as a Global Positioning System (GPS) device or Indoor Positioning System (IPS).
18.Each of the components additionally has one or more sensors that enables the system to determine the usage data of the respective components. This data can be used to inform a particular event, such as the maintenance or cleaning.
19.The system also includes devices 180 that are in communication with the server via a suitable network. As an example, these devices may be a mobile phone or tablet computer connected to the server via the Internet. The mobile device or tablet computer may include a self-contained program (an App) customised to include actions and tasks for specific maintenance persons. The mobile device or tablet computer may also be capable of displaying directions from a location of a maintenance person to a location of a component that may require maintenance, using location determining systems such as IPS or GPS.
20.Figure 2 illustrates a flow diagram of a method of managing maintenance. Fig. 2 is reproduced below:
21.Upon receiving usage data from the components 150, the server determines whether any of the components require maintenance. The need for a repair or clean may be determined at step 220 and achieved by determining whether usage of a component exceeds a predetermined threshold. For example, the need to replace paper towel supply can be ascertained by sensing the number of paper towels that have been used and determining whether the remaining supply is below a threshold. I note that different types of sensors can be utilised for components. For example, to determine whether soap in a soap dispenser is below a threshold, a weight sensor, a visual sensor or a count sensor may be used. The “weight sensor may sense the weight of the soap in the soap dispenser”, the “visual sensor may sense when the soap level drops below a certain level”, and the “count sensor may sense the number of times the soap dispenser has been used” (paragraph [0016] of the specification).
22.At steps 230 and 240, the component requiring maintenance is matched to a relevant maintenance person. The matching may be done using a look-up table. The maintenance task, including details of the component, location of the component, and details of the maintenance is then added to a list and allocated to the relevant maintenance person.
23.At step 240, the maintenance task is communicated to the user device 180 of the relevant maintenance person along with the relevant maintenance information.
24.Figure 3 illustrates a three-dimensional schematic of a building where locations of components that require maintenance are displayed. Fig. 3 is reproduced below:
25.A detailed geographical mapping of the building schematic as shown in Fig. 3 may be presented to, and may be viewed on, the device 180 of the relevant maintenance person when a component in a building requires maintenance. The App or server utilises the detailed geographical map, together with location determination systems such as IPS or GPS, to provide directions to the relevant maintenance person from their current location to the component requiring maintenance.
26.The specification notes that the App on each device 180 presents a list of maintenance tasks that is ordered to optimise the maintenance by considering travel time between locations of the components requiring maintenance. The ordering may also take into account the location of maintenance persons, capability of maintenance persons, and the urgency of maintenance tasks to optimise the maintenance of the components.
27.The relevant maintenance person may deactivate the component during maintenance and, upon completion, notify the server that the maintenance task has been completed, thus triggering the removal of the component from the maintenance list and resetting of the time and count since the last maintenance. Optionally, the relevant maintenance person may deactivate one or more components and start a timer counting down a pre-determined period. Upon the expiry of said period, the components may automatically be re-activated, notifying the server that the task has completed and is removed from the maintenance list.
The claims
28.The specification, as proposed to be amended ends with 14 claims. Independent claims 1 and 8 are as follows:
1.A maintenance management system, comprising:
a server including a processing device;
a plurality of components in communication with the processing device, each component having a unique identifier and an indoor positioning system device that determines a three dimensional location associated with the component, and one or more sensors for capturing usage data associated with the component; and
one or more user devices in communication with the processing device, the user device including a display and a location determining system;
wherein the usage data of components is communicated to the processing device and the processing device determines from the usage data whether any of the components requires maintenance, where the location of each respective component requiring maintenance is communicated to at least one of the one or more user devices from the processing device;
wherein, when more than one component requires maintenance, a list ordered in an order to optimize maintenance of the respective components is presented on the user device, wherein an App or the server determines the order which minimizes travel time for maintenance of the respective components, and
wherein the server generates a detailed geographical mapping in a three-dimensional schematic of the building being monitored that is displayed on the user device with directions from a current location, determined using the location determining system of the user device, to the three-dimensional location of the bathroom component to be maintained;
wherein the system further comprises:
a timer, the timer counting down from a pre-determined amount of time, wherein the timer is started when the one or more sensors of a component requiring maintenance are de-activated, and wherein, when the timer has elapsed, the one or more sensors are re-activated, the server is notified that maintenance of the component has been completed and the component requiring maintenance is removed from the list.
8.A maintenance management method comprising the steps of:
accessing a server including a processing device, the processing device in communication with one or more user devices, the user device including a display and a location determining system;
capturing usage data, via one or more sensors, associated with respective components, each component having a unique identifier and an indoor positioning system device that determines a three dimensional location associated with the component;
determining from the usage data whether any of the components requires maintenance; and
communicating the location of each respective component requiring maintenance to at least one user device;
wherein, when more than one component requires maintenance, the method further comprises presenting on the user device a list ordered in an order to optimize maintenance of the respective component,
wherein an App or the server determines the order which minimizes travel time for maintenance of the respective component, and
generating a detailed geographical mapping, via the server, in a three-dimensional schematic of the building being monitored that is displayed on the user device with directions from a current location, determined using the location determining system of the user device, to the three-dimensional location of the bathroom component to be maintained, and
counting down from a pre-determined amount of time using a timer, wherein the timer is started when the one or more sensors of a component requiring maintenance are deactivated, and wherein, when the timer has elapsed, the one or more sensors are re-activated, the server is notified that maintenance of the component has been completed and the component requiring maintenance is removed from the list.
29.Both independent claims 1 and 8 lack clarity because I cannot find an antecedent to “the bathroom component” within the claims respectively. For the purposes of this decision, I have construed the terms as “the component”.
Manner of manufacture
The examiner’s objection
30.Examination report No. 4 contains the following objection (numbered 10) in respect to manner of manufacture:
“I have carefully considered your arguments regarding patentable subject matter received on 15 November 2023, but they are not persuasive.
Claims 1-14 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990, as discussed in the previous examination reports for this application. In particular, the substance of the claimed invention is an administrative scheme for managing maintenance of components based on the component’s usage data obtained from well-known sensors.
You argue that ‘the substance of the invention is the use of multiple interrelated components to produce an advantageous effect’. However, as discusses [sic] in my previous report, the location identification uses standard indoor positioning system technology which was well-known at the priority date of this application, and similarly the sensors which identify that a component requires maintenance were well-known. The substance of your claimed invention lies therefore in the analysis of the sensor and positioning data to determine a maintenance sequence, and such a sequence is considered to be a scheme. I do not see that there is any advantageous effect which extends beyond the advantages of each of the individual elements. As discussed in objection 11 below, your invention appears to be the combination of a number of separate solutions to separate problems. While this combination may well be useful, this is not sufficient for patentability. Essentially all that is defined by your invention is a collocation of elements wherein all of the elements are known. I do not see any new or improved result arising from any working inter-relationship between these elements.
You also argue that ‘the reliance on Rokt is not valid as that decision merely relates to the use of marketing software (only) being used in a computer and is not relatable to an entire system with interrelated components as claimed in the present invention’. However, even though Rokt relates to marketing, the quoted paragraph remains relevant to your application. I am not simply relying on Rokt - rather the courts have made it clear that it is the substance of the invention which must be determined when considering computer-implemented inventions, and this is the case irrespective of whether or not the application is marketing-related. In particular, I do not see that the invention results in an improvement or adaptation to the functioning of the computer or any unusual or unconventional technical method or effect in its implementation.
Therefore I maintain that the claimed invention, as a matter of substance, does not define subject matter suitable for a patent.”
31.Objection number 10 refers to parts in objection 11. Objection 11 from Examination report No. 4 is also presented below:
“I have carefully considered your arguments regarding inventive step received on 13 October 2023, but they are not persuasive.
The invention defined in claims 1-14 does not involve an inventive step in light of D2, in further light of common general knowledge.
You argue that ‘In the inventive step objection, the Examiner has failed to disclose where the timer feature is disclosed in D2.’ I agree that D2 does not disclose the use of a timer - however the use of a timer is notoriously well-known in a wide variety of applications, and I cannot see that using a timer to re-activate a sensor is in any way inventive. A sensor which has been de-activated clearly needs to be re-activated at some subsequent time, and I cannot see that there is any invention in making this decision time-based (i.e. the sensor is simply de-activated for a pre-determined period of time). I also note that the re-activation does not depend on the maintenance having being completed, and furthermore the claims do not specify when the sensors are de-activated.
You also argue that I ‘appear to be arguing that three other features (minimising travel time, use of an indoor positioning system and displaying directions on a 3D schematic) are not inventive because they are a mere design choice’. This is correct. As I see your invention, there are four separate and largely independent elements:
1) the use of sensors to indicate the need for component maintenance, and based on this sensor information the determining of a sequence for the maintenance to be performed by a user, and where the sequence is determined so as to minimise travel time of the user in performing the maintenance sequence.
2) the use of an indoor positioning system to indicate the locations of the components
3) displaying directions on a 3D schematic of the building, in conjunction with a user device which includes a location determining system
4) the use of a timer to re-activate the sensors after a pre-specified time
Item 1) appears to be the key focus of this application, as discussed in the Description (e.g. paras [0003]-[0005]). Citation D2 discloses the scheduling of maintenance of components based on sensor information, with real-time updates displayed to a user on a user device (D2: e.g. paras [0038]-[0041]). D2 does not disclose that the schedule is based on minimising travel time for maintenance; however, as discussed in my previous examination reports, such minimisation is an obvious design criterion, and furthermore you have not disclosed any particular methodology for performing such a minimisation. As such, I cannot see that the choice of minimisation of travel time as an optimisation objective function is anything more than an obvious design choice. As discussed in my previous report, all that is disclosed in your application is that ‘the App or server 110 may determine an order which minimizes travel time between locations. The travel time between the locations is determined using the abovementioned detailed geographical mapping’ (Description: para [0025]) and ‘the list of cleaning tasks is ordered in order to optimize the maintenance by taking in consideration the travel time between locations. The order is determined, at least, by the location of the relevant maintenance person and location of each cleaning task (e.g. the distance)’ (Description: para [0027]) and therefore I must assume that the travel time minimisation methodology is common general knowledge for a person skilled in the art.
Regarding item 2), I cannot see that the use of an IPS is other than a design choice. In particular, the Description is primarily directed to the maintenance of bathroom components which are inherently fixed in position, and therefore their position is known. Even for components whose locations may change, I cannot see that the use of an IPS is in any way inventive, as this is a standard way of tracking the locations of things within buildings. Your specification does not disclose any problem which has been overcome by the use of IPS to locate the components requiring maintenance, nor does it disclose any particular IPS which is tailored in any way to the problem of locating the components or sensors. As discussed in my previous report, the location of the device must be known for the claimed invention to determine travel times for maintenance, and whether that location is determined by an IPS device, or by other means is considered to be simply a matter of non-inventive design choice, [sic]
Regarding item 3), displaying directions on a 3D schematic on a tracked user device are well-known, see e.g. D7 and the references provided in D7. Your specification does not disclose any problem which has been overcome in displaying directions on a 3D schematic, nor does it disclose any particular methodology for determining directions which is tailored in any way to the problem of providing directions to the components or sensors.
Regarding item 4), as discussed above, the timer merely re-activates the sensor after a predetermined time after the sensor is de-activated. Furthermore, the claims do not specify when the sensor is de-activated. Therefore, I do not see how this use of a timer relates to items 1) to 3) above. You argue that the previous amendments showed the interrelationship with the timer, the server and the component maintenance, but I still do not see that there is any relationship, and you have merely asserted a relationship, without providing any supporting argument.
Each of items 1) to 4) appear to address separate problems - those of scheduling a maintenance sequence, locating components, displaying directions, and re-activating sensors - and the solution is simply a collation of either known or obvious solutions to these separate problems.
You also argue that ‘taking the features individually to object to a lack of inventive step in this way does not take into account that all of the features are inter-related and produce a useful effective that is not, as a whole, non-inventive.’ However, as discussed above, I do not see that the individual features contribute in any synergistic way to solving the same problem, but rather address separate and independent problems using separate and independent solutions. While the combination is novel in light of the cited prior art, I cannot see that there is any invention in combining these separate solutions to separate problems.”
Applicable law
32.The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) came into effect on 15 April 2013. As the application was filed after 15 April 2013, the application is subjected to the amended provisions of the Patents Act 1990 (the Act) and the Regulations. Under subsection 49(1) of the Act the standard of proof that applies to the application is the balance of probabilities. This means that I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. Alternatively, I can refuse the application if not so satisfied on the balance of probabilities.
33.Paragraph 18(1)(a) of the Act reads:
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies
34.There are several Court decisions that considered whether patent applications satisfied s18(1)(a); however, for this case, the following Court decisions appear most relevant:
National Research Development Corporation v Commissioner of Patents [1959] HCA 67, (1959) 102 CLR 252 (NRDC)
Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (Research Affiliates)
D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad)
Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL Central)
Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt)
Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 Encompass)
Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat 22)
35. In NRDC the High Court provided a statement of the law on manner of manufacture at p269:
“The right question is: ‘Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?’”
36. The Court further, in NRDC at p275, set out a test applicable to the facts of that case:
“a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour.”
37. The High Court though was not laying down a precise formulation that can be applied unthinkingly. In Myriad at [23] it was emphasised that:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
38. The Court in Myriad at [144] provided that a case-by-case approach must have regard to the substance of the claimed invention, not simply the form:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
39. The Court in Research Affiliates also stressed on the importance of understanding the invention as a matter of substance and not as a matter of form at [106]:
“The determination whether the claimed invention is truly ‘an artificially created state of affairs’ in satisfaction of NRDC is made not by some mechanistic application of the criterion of artificiality or physical effect, but by an understanding of the claimed invention itself. The invention is to be understood as a matter of substance and not merely as a matter of form.” (original italic)
40. The Court in RPL Central, having considered Research Affiliates and Myriad, further confirmed the approach of understanding the invention as a matter of substance and provided guidance in determining manner of manufacture for inventions implemented using computers at [96] – [98], [104] and [107]:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions.” [96]
“Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or Wi-Fi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?” [97]
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.” [98]
“It is stated in the specification, and was accepted by the primary Judge, that the method could not be carried out without the use of a computer. This alone cannot render the claimed invention patentable if it simply involves the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself. A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. This necessitates some ingenuity in the way in which the computer is utilised (Research Affiliates).” [104]
“Simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method. Is the fact that the scheme cannot practically be implemented without a computer, that is, that the computer is integral to the working of the scheme, sufficient to make it patentable? The answer is not straightforward because this is not a case where the computer simply processes the information entered by the user, for example by using an algorithm, or retrieves information from the Internet in response to a user’s question.” [107]
41. The Full Federal Court in Rokt confirmed the principles. Similarly, an expanded bench of the same Court confirmed the principles in Encompass.
42. The principles from RPL Central and Research Affiliates were summarised by the Delegate in Aristocrat Technologies Australia Pty Limited [2016] APO 49 (Aristocrat 16) at [35]:
“I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information.”
43. Aristocrat 22 is a recent High Court decision on manner of manufacture. The six judges of the High Court were evenly divided, therefore, there was no majority and no usual binding precedent set. As a result of the operation of s23(2)(a) of the Judiciary Act 1903, the decision of the Full court of the Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 that the invention concerned was not for a manner of manufacture was affirmed. Importantly, the above-mentioned decisions of the Full Court were not criticised and remain undisturbed.
The applicant’s submissions
44. In their written submissions (the submissions), the applicant provided a response to the inventive step and patentable subject matter objections that were raised in Examination report No. 4. I will initially concentrate on the response to patentable subject matter and refer to other parts of the response as I find relevant for patentable subject matter.
45. The applicant submitted that the “substance of the invention is the use of multiple interrelated components to produces (sic) a number of advantageous effects using the combination of the inter-related technical features discussed herein. This results in a technical system with interrelated elements that solve a technical problem of identifying the most efficient order in which components should be maintained without requiring an overly complex feedback system to identifying when maintenance has been completed by allowing removal of the component from the maintenance list after a timer has finished counting down”.
46. The applicant further submitted that five technical effects are produced by the alleged invention. These, as submitted by the applicant are:
“…a first technical effect of the invention is the provision of a system and method that can automatically identify that a component requires maintenance (based on usage data of the component), identify the location of that component for maintenance purposes.” (referred to as S1 hereon).
“…a second technical effect is that the components that require maintenance are presented in an ordered and updateable list to a user along with directions from a current location using a detailed geographical mapping in a three-dimensional schematic of the building.” (referred to as S2 hereon)
“…a third technical effect is that the timer aspect provides the ability to automatically remove components for maintenance from the list after expiry of the timer to not only reduce travel time but also to avoid complex feedback loops requiring a notification that maintenance has been completed.” (referred to as S3 hereon).
“A fourth technical effect is that the components in the system that require maintenance can be maintained more efficiently, leading to less downtime of the components due to a saving in travel time by the user when maintaining the components.” (referred to as S4 hereon)
“A fifth technical effect is produced by reducing the travel time and ordering the maintenance as recited, the time before a component is maintained is reduced thus reducing the risk of a major fault, e.g. a leak or flood incident.” (referred to as S5 hereon).
47. The applicant referred to the interrelationship among multiple features of the alleged invention when responding to both patentable subject matter and inventive step objections. In particular, the applicant highlighted:
· the use of sensors to identify components that require maintenance and using sensor information to determine a sequence that minimises travel time for the maintenance tasks.
· The use of IPS to determine the location of components.
· The use of 3D schematic of a building in which the components reside wherein directions are displayed on the 3D schematic of the building using the user device.
· The use of a timer to count down a pre-specified period in order to reactivate the sensors.
Consideration
48. Claim 1 is directed to a maintenance management system and claim 8 is directed to a maintenance management method. Except for one independent claim being directed to a system and the other to a method, the remaining features of the claims are corresponding. The considerations given to one of the claims are also intended for corresponding features of the other independent claim.
49. In order to analyse the alleged invention and address S1-S5, I find most appropriate to engage with the principles from RPL Central and Research Affiliates.
Does the alleged invention solve a technical problem within the computer or outside the computer? Does the alleged invention result in an improvement in the functioning of the computer, irrespective of the data being processed? Does the alleged invention merely require generic computer implementation?
50. The applicant submits that the problem of “…of identifying the most efficient order in which components should be maintained without requiring an overly complex feedback system to identifying when maintenance has been completed by allowing removal of the component from the maintenance list after a timer has finished counting down” is a technical problem ([27] of the submissions).
51. A fair read of the specification clearly outlines the difficulties encountered with scheduling of components having different maintenance requirements. I acknowledge the fact that without usage details of the components, maintenance of the components may result in either too much maintenance or not enough maintenance. The claimed invention appears to solve the problem of the scheduling of components requiring maintenance. However, this problem is generally about the management of information, and planning and control of maintenance. It does not represent a problem with a piece of technology and is, at this level, an administrative challenge.
52. I, therefore, do not see the alleged invention solving a technical problem outside the computer.
53. I will now consider whether the alleged invention attempts to solve a technical problem within the computer.
54. I acknowledge the arrangement of technology in the form of a maintenance management system being utilised in arriving to the claimed invention. The technological elements required to implement the claimed invention include a server, network, gateway, mobile phones or tablet computers, self-contained program or App, sensors, location determining systems and timer. The use of these elements to the extent of obtaining, receiving and sending of data is described in the specification in a standard manner. The arrangement of any one component, or the combination of elements, is not described in any further detail beyond the standard use of the elements either alone or in combination.
55. I will elaborate on this by addressing the applicant’s submission as listed in [46] above. The applicant submitted that the alleged invention, taking any one or a combination of the five technical effects (S1-S5 stated in [46] above), based on the interrelationship of the features of the independent claims, “results in far more than a mere ‘administrative scheme for managing maintenance of components based on the components usage data obtained from well-known sensors’” ([34] of the submissions).
S1: “…a first technical effect of the invention is the provision of a system and method that can automatically identify that a component requires maintenance (based on usage data of the component), identify the location of that component for maintenance purposes”
56. The importance of understanding an invention as a matter of substance and not as a matter of form is a well-established principle that has been applied in the context of computer implemented invention in cases such Research Affiliates, RPL Central and Rokt. Merely providing a technological system that can automatically identify that a component requires maintenance based on usage and provide its location, as a matter of form, may not be found sufficient to confer a claim to meet the requirements of patentable subject matter. Ultimately, the nature of the ingenuity involved in the invention, and whether the invention merely uses generic components for their normal purpose, is a relevant part of the consideration.
57. The system of the current invention is described in [16]-[19] above. The extent to which the system identifies that a component requires maintenance is based on the usage data of components captured by a sensor and provided to a server. The server then processes the data to determine whether maintenance is required. The automatic identification of a component requiring maintenance only appears to be comparing usage data (for example, number of times a component has been used) to a threshold. The specification does not delve any further into any improvement in the functioning of the computer irrespective of the data being processed. This aspect of the invention only requires standard implementation of computing devices and sensors to obtain data that is further processed to determine whether a maintenance condition is met, thus comprising an administrative process using generically described technological elements for their well-known purposes.
58. The specification in paragraph [0015] describes how the location of the component is identified. The specification states:
“In one implementation the location is captured during installation. That location may be obtained through consulting a floor plan or ‘maps’ generally, or through the use of a handheld location determining device, such as an Indoor Positioning System (IPS) or a Global Positioning System (GPS) device. In another implementation the component 150, includes an IPS or GPS device for determining the location associated with the component 150n”
The claims are directed to the use of an indoor position system device that determines a three-dimensional location associated with the component.
59. It is clear from the specification that the identification of the location of the component is achieved through the standard use of a generically described indoor positioning system. The specification does not further elaborate on any improvement of the location identification of the components. Identifying that a component requires maintenance (based on usage data of the component) and identifying the location of that component for maintenance purposes is an administrative process that is merely achieved using physical components for their generically described and well-known purposes.
S2: “…a second technical effect is that the components that require maintenance are presented in an ordered and updateable list to a user along with directions from a current location using a detailed geographical mapping in a three-dimensional schematic of the building”
60. The alleged invention presents an ordered list to optimise the maintenance of the components. In order to optimise the list, the alleged invention may consider variables as noted in [26] above and in paragraphs [0025] and [0027] of the specification. Figure 3 illustrates the schematic that is displayed to a user.
61. Each component of the system has a location associated with it and that location may be obtained using a device such as an IPS. The location of components and usage data of components are sent to the processing device of the server. The processing device communicates the location to the user devices. Each user device in the system has a display, a location determining system and an App. The determination of the order based on certain conditions and variables that minimises travel time for maintenance is performed at the App or the server. I note from paragraph [0024] of the specification that the server contains a detailed geographical map of a building being monitored and the App or server uses the detailed geographical map to provide directions to a user.
62. Whilst technological elements have been utilised to obtain and calculate data and then to provide directions from one location to another, I cannot see any improvement in the obtaining of data, determining location of components and mapping of the three-dimensional schematic. The specification also does not delve into the specifics of more accurate data gathering and location determination, or improvements on navigation from one location to another. The system utilises a geographical map which is created using standard means, standard positioning systems to determine the location of components and users, and standard functioning Apps or servers to perform calculations based on certain conditions considering the variables to output an ordered and updateable list to minimise travel time. Again, the effect of the claimed invention in this regard is administrative in nature, relating to information management and presentation, being merely implemented using well-known technology for its well understood purposes.
S3: “…a third technical effect is that the timer aspect provides the ability to automatically remove components for maintenance from the list after expiry of the timer to not only reduce travel time but also to avoid complex feedback loops requiring a notification that maintenance has been completed”
63. The removal of a component for maintenance from the list is purely based on the expiration of a timer that is associated with a maintenance task for a component. I acknowledge that by removing a task from the maintenance list, the ordering of the list will no longer need to consider the task when creating the ordered list and this may potentially save time.
64. I note that the determination of whether a maintenance task is to be removed from the maintenance list simply utilises administrative rules. As part of the maintenance scheduling process, selecting to not include feedback loops only amounts to an application of an administrative rule to the process. The technological architecture to implement the application of certain rules to the maintenance processes only require standard implementation of computing technology, noting that timers are critical to computer systems and the elements such as the server, processing device, components, user devices would necessarily have in-built clocks or timers. Similar to S2 above, the impact of the claimed invention in this regard is administrative in nature.
65. I will now address S4 and S5 together given the overlapping nature of the submissions.
S4: “A fourth technical effect is that the components in the system that require maintenance can be maintained more efficiently, leading to less downtime of the components due to a saving in travel time by the user when maintaining the components”
S5: “A fifth technical effect is by reducing the travel time and ordering the maintenance as recited, the time before a component is maintained is reduced thus reducing the risk of a major fault, e.g. a leak or flood incident”
66. As covered under S2 and S3 above, the efficiency due to savings in travel time appears to only be achieved by applying administrative rules to the maintenance scheduling process.
67. Furthermore, paragraph [0027] of the specification states:
“…de-activation of the one or more component 150n may start a timer counting down a pre-determined period of time. The pre-determined period of time may be set to allow for cleaning of the one or more component 150n. When the timer has elapsed, the one or more component 150n may be automatically re-activated, notifying the server 110 that cleaning has been completed and the requirement for cleaning is removed from the list of cleaning tasks.”
The claimed invention includes the feature of:
“…the timer counting down from a pre-determined amount of time, wherein the timer is started when the one or more sensors of a component requiring maintenance are de-activated, and wherein, when the timer has elapsed, the one or more sensors are re-activated, the server is notified that maintenance of the component has been completed and the component requiring maintenance is removed from the list.”
I note that the downtime is directly related to the pre-determined period and there is no feedback on whether the maintenance has actually been completed. Rather, the only feedback in the claimed invention is based on the elapsing of the pre-determined period of the timer. It appears that the pre-determined period is arbitrary. Setting a period of time to reduce the time taken to perform a maintenance task is, again, an administrative decision. Whether this leads to the components being maintained more efficiently is arguable. For example, if the period is set to a shorter period than what is needed to perform maintenance, the quality of the maintenance may be compromised. That is, in the short term the maintenance may appear to be efficient, but this may not necessarily be the case in the longer term. Although the maintenance task is removed from the list, it is unclear how this would guarantee that the components’ maintenance tasks have actually been completed thus resulting in a shorter downtime period.
69. The applicant submitted that S5 also produces a technical effect. I acknowledge that by reducing travel time and ordering the maintenance as per the alleged invention, the likelihood of reducing the risk of a major fault is increased. However, I note that the ordering is based on usage data of the components and may be dependent on other variables such as urgency of the maintenance task, etc. It is clear that in order to include a task on the maintenance list, the processing device looks at the data it receives from the sensors of the components and then determines whether any of the components require maintenance. The specification indicates that actual usage data may be compared to a certain threshold to classify usage as high or low. Although not mentioned in the specification, the thresholds would most likely be set by a maintenance manager or a technician in the field. Therefore, the setting of the thresholds depends on the business or administrative rules and the application of such rules to the maintenance scheduling process only utilises standard computer architecture. I cannot see any ingenuity in the way the computer is utilised in implementing these rules. The reduction of travel time is addressed under S2 and S3 above.
70. The applicant further submitted that:
“…taking any one or a combination of these five technical effects based on the interrelationship of the recited features in claim 1 results in far more than a mere ‘administrative scheme for managing maintenance of components based on the components usage data obtained from well-known sensors’ as stated by the Examiner in the Report.” ([34] of the submissions)
I have addressed above each of the features that the applicant alleged to produce technical effects. I will now address the applicant’s submissions about the interrelationship of the features in claim 1 resulting in far more than a scheme. The computer and processing elements of the architecture are merely standard computers capable of obtaining, receiving, sending and processing data. The claimed invention does not utilise any particular computer system by which the sensing of the components is improved, the analysis of data from the sensors is materially improved, location determination of the components or users is improved, or the navigation of the user from one point to another is improved. Rather data from standard sensors using standard location determination devices is sent over a standard network to standard servers and/or processing units. On the user end, the processed data, including direction data from the user’s current location, is displayed on a standard computing device using an App. The computing elements and the interrelation of the elements in implementing any business or administrative rules to perform the alleged invention only require operations in a standard manner and the alleged invention merely requires generic computer implementation.
71. Following the discussion above, and in view of the specification, the claimed invention merely utilises several standard computers that may be connected to each other and a display that is configured to present information. The claimed invention does not demonstrate any ingenuity in the way in which the computer technology is utilised. The specification fails to provide information on how the computing technology functions in an improved manner and I cannot see any reasons that this is the case. In general, the effects of the invention relate to management and scheduling of maintenance, where generic elements are merely used to automate purely administrative, logistical or schematic steps.
Does the alleged invention produce a practical and useful result?
72. The alleged invention attempts to reduce the travel time by using an ordered maintenance list that is based on variables related to the components that may require maintenance. This may be practical and useful to the extent that maintenance tasks may be attended to sooner and potentially the risk for a major fault is reduced. However, at the current level of abstraction, as a matter of substance, the ingenuity lies in a scheme. Any usefulness comes into effect by implementing the scheme on standard computing systems using generic componentry. Consequently, as a matter of substance, the alleged invention does not provide material or useful result in the manner identified by Research Affiliates at [114]:
“The invention set out in the specification is directed to the index itself. The method of the invention is not one that has any artificial or patentable effect other than the implementation of a scheme, which happens to use a computer to effect that implementation. There is no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors. To take the words of NRDC at 268, the process does not produce ‘either immediately or ultimately, a useful physical result in relation to a material or tangible entity.’ The claimed method, the result of the ingenuity of the inventors, does not produce such a result; the ingenuity is in the scheme. Again, drawing from NRDC at 270, there is a useful result of the claimed process but there is no physical thing ‘brought into existence or so affected as the better to serve man’s purposes’. There is no ‘physical phenomenon in which the effect, be it creation or merely alteration, may be observed’ (NRDC at 276).”
Dependent claims
73. I have considered each of the dependent claims and do not see any material within the claims that is directed to patentable subject matter.
74. Dependent claims 2 and 9 are directed to the processing device further determining a maintenance person relevant to the type of maintenance required and consequently providing the relevant maintenance person location of each respective component requiring maintenance.
75. Dependent claims 3, 4, 10 and 11 are directed to determining that at least one of the components requires maintenance when usage data exceeds a predetermined threshold or is outside predetermined parameters.
76. Dependent claims 5 and 12 are directed to determining the order of the list on the basis of the location of the component and the location of a relevant maintenance person. Moreover, dependent claims 6 and 13 are directed to further determining the order on the basis of an urgency such as a time that has elapsed since the component was determined to require maintenance and the usage data captured.
77. Dependent claims 7 and 14 are directed to including plurality of sensors in a single location.
78. I cannot see adaptation or improvement to the normal use of computer technology or componentry in the dependent claims. The matching of maintenance person to a maintenance task is simply a business rule to match a skill to a task, and the matching from a technological point of view and from the specification appears to be a computer utilising a standard look-up table. The determination of initiating a maintenance task based on the usage of a component going beyond a threshold or predetermined parameters is, again, a business or administrative decision and only requires standard computer implementation. Determining the order of the tasks on the basis of location of the component and relevant maintenance persons, and on the basis of certain urgencies only amount to administrative rules without requiring any specific implementation of computer technology beyond its standard use or functions. I do not see any technical problems being solved by any of the features of the dependent claims. The involvement of the technology is only to a degree of a mere tool in which a scheme is performed.
The Substance
79. I have considered the entire specification including the claims. The substance relates to a scheme which involves steps of receiving data from various elements of a system requiring maintenance, performing maintenance scheduling optimisation and managing the scheduling of maintenance by informing maintenance personnel that work is required, that is implemented using generic technology to automate various steps. This generic technology includes components such as a server, location determining device, sensors, display, and timer. The invention is thus a mere administrative scheme implemented using technology for its well-known and well understood purposes.
Inventive step
80. Examination report No. 4 also contains an inventive step objection against claims 1-14 in light of citation, D2 – US 2016/0132839 A1 (FACILITIES MAINTENANCE PLANNING, LLC) 12 May 2016. Noting the finding on patentable subject matter, I do not find it necessary to make a formal determination on inventive step. Any consideration on inventive step would not materially affect the outcome of my decision.
Conclusion
81. I conclude that the claimed invention, as a matter of substance, is not for a manner of manufacture. I have found that none of claims, independent or dependent, define an invention that is for a manner of manufacture. I am also of the view that there is no material in the specification that could result in the applicant overcoming my finding and further examination will not serve any useful purpose. I therefore consider that it is appropriate to refuse the application.
Anish Singh
Delegate of the Commissioner of Patents
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