Commonwealth Scientific and Industrial Research Organisation
[2021] APO 43
•01 November 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Commonwealth Scientific and Industrial Research Organisation [2021] APO 43
Patent Application: 2019373402
Title:Monitoring a manufacturing process
Patent Applicant: Commonwealth Scientific and Industrial Research Organisation
Delegate:R Subbarayan
Decision Date: 01 November 2021
Hearing Date: Written submissions filed on 12 August 2021
Catchwords: PATENTS – section 45 – examiner’s objections – smart contracts in blockchain – whether invention is a manner of manufacture – whether invention lacks inventive step – claimed invention provides a technical solution – manner of manufacture objection cannot be maintained – claimed invention cannot be arrived as a matter of routine from cited prior art on its own – possibility of existence of better prior art – application to be referred back to examination for further investigation
Representation: Patent attorney for the applicant: FB Rice Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019373402
Title:Monitoring a manufacturing process
Patent Applicant: Commonwealth Scientific and Industrial Research Organisation
Date of Decision: 01 November 2021
DECISION
The examiner’s manner of manufacture objection in the third examination report cannot be maintained and should therefore be withdrawn.
The claimed invention does not lack an inventive step over prior art D4 per se and the common general knowledge. However, there is a strong possibility that additional prior art exists that may cast doubts on the inventive step of the claimed invention. Application is therefore referred back to examination section for further investigation. If no additional relevant prior art is found, the application should be accepted.
In the circumstances, pursuant to sub-regulation 13.4(3), the final date to gain acceptance is set at four (4) months from the date of this decision.
REASONS FOR DECISION
BACKGROUND
Patent application AU 2019373402 in the name of Commonwealth Scientific and Industrial Research Organisation (the “applicant”) was filed on 23 October 2019 as a PCT application (PCT/AU2019/051158) and claims an earlier priority date of 31 October 2018.
Following a request for expedited examination, the application was examined, and a first examination report issued on 16 December 2020. The sole objection in that report was that the claimed invention was not for a manner of manufacture. The applicant responded on 8 February 2021 with some minor amendments to the specification along with submissions as to why the examiner’s objection should be withdrawn. A second examination report issued on 4 March 2021 maintaining the manner of manufacture objection. The applicant responded on 16 April 2021 with submissions again rebutting the examiner’s objection. A third examination report issued on 10 May 2021 maintaining the manner of manufacture objection and also introducing a new objection setting out a lack of inventive step in light of a prior art document and the common general knowledge in the art. The applicant responded on 18 May 2021 with a request to be heard on the outstanding examiner objections.
The applicant was advised that the hearing would be through written submissions. The applicant filed their written submission on 12 August 2021.
APPLICABLE LAW
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Thus, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
THE INVENTION
The present invention “relates to monitoring processes and in particular, but not limited to, monitoring a current operation of a pharmaceutical manufacturing plant”[1].
[1] Specification at [0002]
The specification notes that in a multi-party process that involves a number of businesses or organisations, there are difficulties in monitoring the compliance of the process, especially if the trust between the parties is limited and where one or more parties want to keep their proprietary process information confidential.
[0006] In a multi-party process, organisations may delegate certain parts of process to external parties. Different parts of the process may be executed by different organisations. Often in such a situation, trust among the involved parties may be limited. In most cases proprietary information regarding individual business processes should remain private. Execution of activities and transfer of data is subject to conditions governing such activities. Each party wants to ensure that the "outsourced" part of the process is executed as agreed and according to the conditions that apply. Due to the lack of trust and insight in each other's processes, current process execution tools cannot ensure compliance across such a service chain.
The specification notes that the process can also be a manufacturing process like drug manufacturing where a number of parties may be involved in the supply chain and one or more parties may not want to disclose certain information relating to their part of the process.
[0004] …..In particular, there is a concern about confidentiality between a multitude of parties in a supply chain. There is currently a challenge of ensuring that the processes by all entities are compliant with an overarching rule set. At the same time, however, the actual process together with nominal process parameters and a nominal sequence of steps should not be disclosed to third parties. Therefore, there is a need for a computer system that underlies the supply chain and/or the manufacturing process and that can check for compliance of the process without disclosing the "secret recipe".
The present invention seeks to adopt blockchain technology as a technical enabler to address these challenges.
The specification then provides a broad summary of the invention where one aspect is directed to a method of manufacturing a pharmaceutical compound and another aspect is directed to a method of monitoring a current operation of a process.
[0009] There is provided a method for manufacturing a pharmaceutical compound by monitoring a current operation of a pharmaceutical manufacturing plant. The method comprises:
creating a numerical representation of a nominal operation of the pharmaceutical manufacturing plant;
encrypting the numerical representation using homomorphic encryption to determine an encrypted numerical representation that blocks access to the numerical representation but allows calculations on the numerical representations;
creating smart contracts on a blockchain platform using the encrypted numerical representation as a first input to the calculations of the smart contract;
attempting execution of the smart contract using the current operation of the pharmaceutical manufacturing plant as a second input to the calculations of the smart contract, execution of the smart contract generating an output result by performing the calculations on the encrypted numerical representations;
based on the output of the execution of the smart contract determine that the
current operation is outside the nominal operation.[0010] A method for monitoring a current operation of a process comprises:
creating a numerical representation of a nominal operation of the process;
encrypting the numerical representation using homomorphic encryption to determine an encrypted numerical representation that blocks access to the numerical representation but allows calculations on the numerical representations;
creating smart contracts on a blockchain platform using the encrypted numerical representation as a first input to the calculations of the smart contract;attempting execution of the smart contract using the current operation of the
process as a second input to the calculations of the smart contract, execution of the
smart contract generating an output result by performing the calculations on the
encrypted numerical representations;based on the output of the execution of the smart contract determining that the
current operation is outside the nominal operation.The specification then describes certain preferred embodiments of the invention including one for the method of monitoring a current operation of a process with reference to figure 2 that I have reproduced below.
As can be seen from the above, the method broadly involves five steps 210, 220, 230, 240 and 250.
Step 210
The first part of this step comprises creating a numerical representation of the nominal operation of the process that comprises the different states of the nominal operation and valid transitions between these states. According to specification the term ‘nominal operation’ refers to the process variables/parameters and the sequences of steps that are prescribed for the process. Creating a numerical representation involves writing the nominal operation of the process as digital code that can be processed by a computer. The specification notes that this step preferably involves the use of a Petri net to capture the steps of the nominal operation and then creating a numerical representation of the Petri net.
A brief explanation of Petri nets is also given.
[0090] The nominal operation may be represented by a Petri net. Petri nets are directed bigraphs with nodes consisting of places and transitions. A place represents a condition. The distribution of tokens over the full set of places in a net describes the state. A transition in a transition system represents the move from one state to the next one. In a Petri net, a transition may represent a task or the transition may be "silent" ("tau" transition), which means it does not correspond to a task, but is used to enforce a certain control flow. The execution of such a task results in a new state, which is represented by a new marking. Petri nets can be converted to a state transition system and vice versa.
Step 220
In this step, the digital representation of the nominal operation is converted using homomorphic encryption into an encrypted numerical representation that will block access to the numerical representation but will allow calculations on the numerical representation.
[0103] Homomorphic encryption is a form of encryption that allows computation on ciphertexts, generating an encrypted result which, when decrypted, matches the result of the operations as if they had been performed on the plaintext. The purpose of homomorphic encryption is to allow computation on encrypted data.
[0104] In this disclosure it is preferred that a process state be encrypted with homomorphic encryption such that the process state is available to the owner of the process but not available to other participants of the process.
Step 230
The next step 230 comprises creating a smart contract on a blockchain platform using the encrypted numerical representation as a first input to the smart contract. The smart contract contains the description of the process to be executed by each participant, and the rules that apply to that process in order for the process to be compliant.
[0070] The smart contract may contain a set of rules which the process will be measured against for the purpose of determining compliance. These compliance rules 150 may comprise a larger number of rules. For example they may be company policies 162 or regulations 164 or they may simply be rules that define guidelines that require various levels of strict adherence. There could be for example a concern for privacy compliance, which is a company's accordance with established personal information protection guidelines, specifications or legislation. Privacy compliance is an increasing concern due to an increasing number of regulations designed to protect unauthorized access to personally identifiable information.
Step 240
The next step 240 comprises attempting execution of the smart contract using the current operation of the system as a second input to the smart contract and where the execution of the
smart contract generates an output result by performing calculations on the encrypted numerical representations.
Step 250
The final step 250 comprises determining whether the current operation is outside the nominal operation based on the output of the execution of the smart contract. If the smart contract does not execute correctly or does not execute at all, this is an indication that the current operation is outside the nominal operation.
If the current operation is not compliant with the nominal operation, either the current operation will be terminated or can be allowed to continue with the generation of a non-compliance report.
Implementing the method
The whole process may be implemented using a computer system that comprises a blockchain platform such as Ethereum, a smart contract and an execution engine. Each participant in the process will require a computer node that can interact with the blockchain system. The node will generally include a processor 802, a memory 810, a blockchain interface device 806 and network interface device 807.
The Claims
The specification as proposed to be amended ends with 22 claims of which independent claims 1, 2 and 22 are as follows:
1. A method for manufacturing a pharmaceutical compound by monitoring a current operation of a pharmaceutical manufacturing plant, the method comprising:
creating a numerical representation of a nominal operation of the pharmaceutical manufacturing plant;
encrypting the numerical representation using homomorphic encryption to determine an encrypted numerical representation that blocks access to the numerical representation but allows calculations on the numerical representations;
creating smart contracts on a blockchain platform using the encrypted numerical representation as a first input to the calculations of the smart contract;
attempting execution of the smart contract using the current operation of the pharmaceutical manufacturing plant as a second input to the calculations of the smart
contract, execution of the smart contract generating an output result by performing the
calculations on the encrypted numerical representations;based on the output of the execution of the smart contract determine that the current operation is outside the nominal operation.
2. A method for monitoring a current operation of a process, the method comprising:
creating a numerical representation of a nominal operation of the process;encrypting the numerical representation using homomorphic encryption to determine an encrypted numerical representation that blocks access to the numerical representation but allows calculations on the numerical representations;
creating smart contracts on a blockchain platform using the encrypted numerical representation as a first input to the calculations of the smart contract;
attempting execution of the smart contract using the current operation of the process as a second input to the calculations of the smart contract, execution of the smart contract generating an output result by performing the calculations on the encrypted numerical representations;
based on the output of the execution of the smart contract determining that the current operation is outside the nominal operation.
22. A system for monitoring a current operation of a process, the system comprising:
a data store;
a processor configured to:
create a numerical representation of a nominal operation of the process and store the created numerical representation on the data store;
encrypt the numerical representation using homomorphic encryption to determine an encrypted numerical representation that blocks access to the numerical representation but allows calculations on the numerical representations;
create smart contracts on a blockchain platform using the encrypted numerical representation as a first input to the calculations of the smart contract;
attempt execution of the smart contract using the current operation of the process as a second input to the calculations of the smart contract, execution of the smart contract
generating an output result by performing the calculations on the encrypted numerical representations;based on the output of the execution of the smart contract determining that the current operation is outside the nominal operation.
Claim 21 relates to a computer program and is as follows:
21. Software that, when executed by a computer, causes the computer to perform
the method of any one of the preceding claims.
MANNER OF MANUFACTURE
Case Law
The principles of law in respect to manner of manufacture, arising from the High Court decisions in National Research Development Corporation v Commissioner of Patents [1959] HCA 67, (1959) 102 CLR 252 (“NRDC”) and D’Arcy v Myriad Genetics Inc [2015] HCA 35 (“Myriad”), are well-documented in previous office decisions. The authorisation of a case-by-case methodology would also be apparent from the High Court decisions.
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim, as stated in the Myriad case by Gageler and Nettle JJ at [144]:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim”.
In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”), the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:
“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”.
Moreover at [98]:
“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”.
In Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”) the Full Court of the Federal Court noted a distinction between mere implementation of an abstract idea in a computer and implementation of the idea in a computer that created an improvement in the computer. At [103]:
“… there is a distinction, between mere implementation of an abstract idea in a computer and implementation of an abstract idea in a computer that creates an improvement in the computer”.
Moreover, at [114] of Research Affiliates:
“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”.
In also discussing the requirement for the contribution to be technical, the Full Court in RPL stated as follows, amongst other things, at [99]:
·“It is necessary to ascertain whether the contribution to the claimed invention is technical in nature …
·One consideration is whether the invention solves a ‘technical’ problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
·Does the claimed method merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea? …”.
In Aristocrat Technologies Australia Pty Ltd [2016] APO 49 (“APO Aristocrat”) at [35], a delegate of the Commissioner set out the following non-exhaustive summary of the issues to be considered when applying these principles.
·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.
In Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (“Aristocrat”), Burley J formulated a two-stage process as follows. At [91]:-
“... an initial question of whether the claimed invention is for a mere scheme or business method of the type that is not the proper subject matter of a grant of letters patent. Once that question is answered in the affirmative, the subsequent inquiry becomes whether the computer-implemented method is one where invention lay in the computerisation of the method, or whether the language of the claim involves (to use the language employed in Rokt at [84]) ‘merely plugging an unpatentable scheme into a computer’.”
The Examiner’s Objection
I have reproduced below relevant passages from each of the three examination reports that have been issued.
Report No 1
Claims 1 - 22 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. In general, the principles set out in D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases require analysing whether the claimed invention, as a matter of substance rather than form, is suitable subject matter for a patent.
Based on a reading of the specification as a whole, it appears that the problem being addressed by the claimed invention relates to concerns about confidentiality between a multitude of parties in a supply chain.
It is evident from a reading of the specification as a whole, and the lack of technical detail disclosed therein, that the claimed invention does not contribute any technical ingenuity with regards to how the computer performs any of the aforementioned steps, either individually or in combination. For example, the specification does not provide any technical details relating to inventor ingenuity with respect to aspects such as encryption of the numerical representations, or implementation of blockchain or smart contract technology, with the person skilled in the art being required to rely on known and expected techniques to perform these aspects of the claimed invention. Furthermore, the combination of features is so linked as to merely rely on these computing techniques to implement a method for securely managing the monitoring of a process.
It is therefore concluded that the claimed invention, in substance, is directed to an administrative scheme for securely managing the monitoring of a process….
The claimed invention does not solve a technical problem, the problem relating to administrative concerns regarding confidentiality and non-disclosure between parties in a supply chain; nor does it provide any contribution to the art that is considered to be technical in nature. The contribution resides merely in an administrative scheme for securely managing the monitoring of a process, implemented using known computing techniques, and therefore does not involve any invention or ingenuity in any program, operation of a computer or device, or implementation by a computer to operate a method irrespective of the data being processed.
Therefore the claimed invention, as a matter of substance, does not define subject matter suitable for a patent.
Report No 2
The cited problem of implementing a manufacturing process on the blockchain, including “how to implement a required sequence of events of the process”, and “how to implement smart contracts without disclosing the actual process specification”, is not considered to be an inherently technical problem. The specification does not provide details relating to any particular technical limitations or difficulties in the underlying technology, such as blockchain/smart contract technology, that the claimed invention has sought to overcome in order to solve this problem. As such, it is considered that the problem of implementing a manufacturing process on a blockchain and maintaining confidentiality when implementing smart contracts is an administrative problem relating to the use of known technology to better manage a business process, and in particular to managing confidentiality when performing business transactions.
It is considered to have been well known in the art to determine numerical representations of processes, including the use of Petri-nets to model processes; use one-hot encoding techniques to encode modelled aspects of processes, such as states and transitions; and use matrices and Boolean logic to verify aspects of modelled processes (see D6 – D10, for example). Similarly, it is considered to have been well known in the art to obfuscate data for the purpose of maintaining confidentiality through the use of techniques like homomorphic encryption (see D4 and D11, for example). The specification, including passages highlighted by the Applicant, does not provide any technical detail relating to inventor ingenuity that contributes towards improvements in the implementation of these known techniques.
It is maintained that the claimed invention, in substance, is directed to the use of these known techniques and technologies to implement an abstract, administrative scheme for monitoring the operation of a manufacturing plant.
I respectfully disagree with the Applicant’s assertion that there is an improvement to computer technology. Any benefit resulting from implementation of the claimed invention is limited to improvements in the administrative scheme for monitoring a process, such as improving the confidentiality of a secretive manufacturing processes when performing business transactions, like compliance checking, related to the process.
Report No 3
The Applicant’s submissions appear to assert that the problem being addressed by the claimed invention relates to overcoming technical limitations with public blockchain technology that make it unsuitable for use with secret data. I respectfully disagree with this assertion.
It is acknowledged that processing of confidential data on a public blockchain is a known problem, however, it is a problem that has been addressed and overcome by a number of prior art solutions that obfuscate the data using various encryption techniques to maintain confidentiality (see for example, D1: Paras 0147 - 0149; D2: Abstract; D3: Paras 0053 – 0054; D4: Abstract; Section III; D5: Section IV; D11: Abstract; Paras 0031, 0064 - 0068), including the use of homomorphic encryption as per the claimed invention (D4: Section III; D5: Section IV; D11: Abstract; Paras 0031, 0064 - 0068).
The specification does not appear to be directed towards any improvement to these known techniques for overcoming this problem. As such, it is considered that the problem being addressed by the claimed invention relates to the particular use of a public blockchain to monitor compliance and/or conformance of confidential operations of a distributed process where mutual trust is lacking between parties. This is considered to be an administrative problem that relates to maintaining confidentiality in a particular business scenario, being the monitoring of a distributed process in the public domain (i.e. on a public blockchain).
The Applicant submits that 'the inventors have devised a technical improvement to blockchain technology…'. While I accept that there is technical content in the claim, that technical content, for example the use of homomorphic encryption to obfuscate data input to calculations of a smart contract, is well known (see, for example, D4: Section III, D5: Section IV and D11: Abstract; Paras 0031, 0064 - 0068). As such, that technical subject matter is not the substance of the invention, and the substance of the invention therefore lies elsewhere.
The Substance of the Invention
As discussed earlier, the specification notes that where different parts of a business or manufacturing process are to be executed by several parties or organisations, it may be difficult to monitor that the process has been implemented according to the prescribed nominal process especially where there is of lack of trust between the parties or where one or more parties do not want to disclose proprietary information regarding their part of the process to the other parties to the process. The claimed invention addresses this problem by the use of a specific smart contract or computer program in a blockchain platform running on a generic computer system that can compare the executed process with the nominal process and determine whether the executed process is compliant, without revealing details of certain parts of the process which one or more parties does not wish to disclose.
None of the steps of the claimed method include any details of the actual business or manufacturing process, with the claims being drawn up very much at an abstract or schematic level. This appears to be the basis for the examiner taking the stance that the substance of the invention is an abstract administrative scheme for monitoring the compliance of a process. I am generally in agreement with that. However, as noted by the authorities, there is still a second inquiry that requires “consideration of whether the invention claimed involved the creation of an artificial state of affairs where the computer was integral to the invention, rather than a mere tool in which the invention was performed” (Aristocrat). I therefore need to have regard to some of key considerations noted by the delegate in APO Aristocrat.
The applicant has focussed their submissions in relation to manner of manufacture on claim 2 on the basis that this is the broader claim and that if I find that claim 2 is a manner of manufacture then it follows that claim 1, which is directed to a method of monitoring a pharmaceutical manufacturing plant, is also a manner of manufacture. I agree that this is the right approach noting that, if I find claim 2 is not a manner of manufacture, it does not necessarily follow that claim 1 is also not a manner of manufacture and that I may have to do further analysis in relation to claim 1.
Does it solve a technical problem?
As the applicant notes the claimed invention seeks to solve the problem of present monitoring systems not being able to monitor compliance of a process where one or more parties do not wish to divulge the proprietary information relating to their part of the process. The applicant has submitted that “The technical problem addressed by the current invention is how to computerise the monitoring of processes in a way that does not disclose the actual process definition”. While I accept this proposition generally, I consider the problem as being more than just computerisation of the monitoring of a process. Computerised monitoring of processes is well known. What the present invention seeks to do is to improve existing computerised monitoring of processes involving a number of parties that allows the monitoring to be done without disclosing the actual process definition. This in my view, is the substance of the problem that is sought to be addressed. Although the applicant refers to it as “technical problem”, given the broad nature of claim 2, the problem to be solved by that invention could well relate to administrative or business rules that are to be set up to achieve this goal of monitoring without disclosing the process definition. Clearly that would then be a business problem rather than a technical one. In my view, the problem that the claimed invention seeks to address could be technical or non-technical.
Does it provide a technical solution?
The applicant has submitted that the solution provided by the claimed invention is a technical solution.
38. It is noted that encryption can be used to hide information, but that does not enable another party without the key to check the encrypted data. Further, homomorphic encryption enables operations on encrypted data, but it does not enable any operations or checking of processes, which typically include transitions. Finally, smart contracts can be used to automatically perform operations on input data, but they do not enable the monitoring of processes with corresponding transitions.
39. Therefore, the state of the art, even if it did include homomorphic encryption and smart contracts (which it does not), does not enable the monitoring of a process. It does enable various data processing and calculation steps, but the monitoring of a process was not possible because it was not known how to encode the process in a way that enables the use of the above technologies.
40. The technical solution is to create a numerical representation of the process. This is a significant step because it transforms the process definition, which would typically be a graph, into a dataset that enables arithmetic or Boolean operations. Now, with the numerical representation at hand, these numbers can be encrypted homomorphically and used in smart contracts. If those smart contracts execute, the process is nominal, if they do not execute, the process is outside nominal.
41. It can be said that the creation of the numerical representation transforms the “process” into a computer representation. It is then possible to use the claimed computer functions on that computerise process representation.
I find the applicant’s submissions persuasive. The examiner accepts that creating numerical representations and homographic encryption of information are techniques in the field of information technology, but has argued that as these are well-known techniques, the solution is not technical.
In my view, the examiner has adopted an erroneous approach in dissecting the claims into its individual features and then assessing whether each of these features is well known in the art. The authorities have clearly warned against this approach. What needs to be assessed is the solution provided by the claim as a whole with due regard being given to the way the individual features interact with each other in addressing the problem that is sought to be addressed.
The solution provided by the claimed invention involves transforming the nominal operation of the process into a numerical representation on which mathematical computations may be performed and then homomorphically encrypting this numerical representation that still allows mathematical computations to be performed on it by one or more parties to the process but the nominal process itself cannot be reversely obtained by the parties without knowledge of the underlying methodology used to create the numerical representation. It clearly involves the use of computing technology to protect the confidentiality of any proprietary information contained within the nominal process even from other parties to the process, while at the same time allowing the parties to make mathematical computations on the process. I would not categorize this solution as a mere administrative or business scheme for monitoring the conformance of a process to the nominal process.
There are a number of technical elements to the claimed invention. Firstly, it defines the creation of a numerical representation of the nominal process so that mathematical/computing operations can be performed on the numerical representation. This involves the use of petri nets to create a graph model of the nominal process and then converting this into a numerical representation, both of which involve the use of information technology techniques. The numerical representation is then homomorphically encrypted enabling mathematical calculations to be performed on the encrypted process by one or more parties to the process; however, the details of the actual process itself cannot be determined without knowledge of the underlying petri net. This step of the method involves encryption technology.
The fact that each of these techniques per se may be known technology is not relevant to the question of whether the solution is technical. The critical thing is how these known techniques are applied in the context of obscuring the visibility of the nominal operation of the computerised process while at the same time allowing computations to be performed on it during the execution of the process. In the present invention, both the conversion of the nominal process into a numerical representation and then the homomorphic encryption of this numerical representation work in combination in providing a solution to the problem that is being addressed. The fact that these steps only require suitable computer programming does not mean that the solution is non-technical. The claimed invention is not just a computer program. It makes use of a blockchain platform that is programmed with a smart contract based on the encrypted numerical representation of the nominal process so that when the process is actually executed it can compare the executed process with the nominal process and determine whether the executed process conforms to the nominal process. The present case is not dissimilar to that in Advanced New Technologies Co., Ltd. [2021] APO 29, where I found that the use of known cryptographic and digital signature techniques in blockchains to prevent the breach of privacy information within a blockchain was a technical solution. Similarly, I am satisfied that the presently claimed invention also provides a technical solution.
Does the claimed method require only generic computer implementation?
The specification notes that the claimed invention can be performed on a blockchain platform such as Ethereum running on a network of computers or nodes. Each node or computer will generally include a processor 802, a memory 810, a blockchain interface device 806 and network interface device 807. There is nothing in the specification to suggest that each node is nothing other than a generic computer. All that is required is a suitable software program that when executed by the processor can carry out the steps of the claimed invention. The computer system for implementing the claimed invention cannot considered to be a device of a specific character that is designed solely for the carrying out of the claimed method.
Clearly the invention requires only generic computer implementation.
Is there a practical and useful result?
The purpose of the claimed method is to enable compliance monitoring of the execution of a process involving a number of parties without revealing confidential information of the process itself. In my view, this is a practical and useful result.
Does the invention lie in the generation, presentation or arrangement of intellectual information?
The invention involves the generation and presentation of information relating to a process by converting the nominal process data into an encrypted numerical representation on which mathematical computations can be made without knowledge of the original process data in order to monitor compliance of the executed process to the nominal process. While the steps involve generation and manipulation of data, it is not fair to say that the invention lies merely in the generation and arrangement of intellectual information.
Balance of considerations
The present invention relates to the use of blockchain platforms to perform mathematical computations on data relating to a process. Blockchains are a computer implemented technology that, in my view, are not inherently unpatentable.
While the potential for breach of proprietary or confidential information within a process may be considered as an administrative or business problem, the claimed solution involves the application of cryptographic techniques to mask details of the process while at the same time allowing computations to be performed, thereby providing a technical solution to the problem of revealing proprietary information. Moreover, the invention yields a practical and useful result in providing a method of monitoring a current operation of a process without revealing confidential information of the process even to the parties involved in carrying out the process. It is also not merely for the generation and/or presentation of intellectual information.
While the claimed invention only requires generic computer implementation, the focus of the invention is not just the computer program to carry out the method. Hence the weight that I give to this consideration is quite minimal.
In my view, the balance of considerations weigh in favour of finding that the claimed invention is a manner of manufacture.
Conclusion in relation to Manner of Manufacture
The invention of claims 1 and 2 is for a manner of manufacture.
Claim 21 relates to software that when executed by a computer causes the computer to perform the method of any one of the preceding claims. I am therefore satisfied that the same finding in relation to claim 1 can be applied to this claim.
Claim 22 relates to a system comprising a data store and a processor that executes a method that comprises all of the features of claim 1. Again, I have no reason to depart from my finding in relation to claim 1.
INVENTIVE STEP
Law on Inventive Step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claims, involves an inventive step. Subsection 7(2)-(3) states:
“(2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the art in light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”
The test for obviousness was stated in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at [45]:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
In relation to what level of inventiveness is required to sustain a patent, the Full Federal Court in Garford Pty Ltd v Dywidag Systems International Pty Ltd [2015] FCAFC 6 stated as follows at [44]:
“The inventiveness required to sustain a patent for a claimed invention is quite small. A “scintilla” of inventiveness is all that is required: Alphapharm at [195]. However, there must still be “some difficulty overcome, some barrier crossed” (per Lockhart J in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 574) or some contribution to the art “beyond the skill of the calling” (Allsop Inc v Bintang Ltd [1989] FCA 297; (1989) 15 IPR 686 at 701)”.
The Examiner’s Objection
The examiner has in his third report raised for the first time a lack of inventive objection in light of the following document that was cited as an “A” category prior art in the International-Type Search Report that was established on the provisional application of the present application.
D4: CARMINATI et al., "Confidential business process execution on blockchain", 2018 IEEE International Conference on Web Services (ICWS, (20180702), doi:10.1109/ICWS.2018.00015, pages 58 – 65.
The examiner’s inventive step objection reads as follows:
Regarding claims 1 – 2 and 21 - 22, D4 discloses a computer implemented method and system for monitoring a process (Abstract; Section II – use of smart contracts to broker/monitor a process), the method including:
creating a numerical representation of a process (Section II - converting a BPEL document into a smart contract according to the workflow encoded in the BPEL. It is inherent that data encoded into a smart contract will comprise a computer executable numerical representation);
encrypting a numerical representation of process related data using homomorphic encryption to determine an encrypted numerical representation that blocks access to the numerical representation but allows calculations on the numerical representation (Section III – it is inherent that the process related data being encrypted comprises computer executable numerical representations of the data);
creating smart contracts on a blockchain platform using the encrypted data as an input to the calculations of the smart contract (Section IV – smart contract is modified to perform homomorphic operations using encrypted input values); and
attempting execution of the smart contract, execution of the smart contract generating an output result by performing the calculations on the encrypted input values (Section III).D4 does not disclose:
i. creating a numerical representation of a nominal operation of the process
ii. encrypting the numerical representation of a nominal operation of the process using homomorphic encryption
iii. using the encrypted numerical representation of a nominal operation of the process as a first input to the calculations of the smart contract
iv. using the current operation of the process as a second input to the calculations of the smart contract; or
v. based on the output of the execution of the smart contract determining that the current operation is outside the nominal operationFeatures (i) – (iv) are directed to the use of known techniques for creating a numerical representation of process related data, and homomorphically encrypting the numerical representation for input to calculations of a smart contract, as disclosed in D4. The only difference between claimed features (i) – (iv) and D4 is the particular data that is numerically represented and subsequently encrypted (a nominal operation of a process); and the particular data that is input to the calculations of the smart contract (the encrypted numerical representation of a nominal operation of a process and a current operation of a process).
Feature (v) is directed to known techniques for executing a smart contract to produce an output, as disclosed in D4, wherein the difference between the claimed invention and the prior art resides in the particular determination that is made, being that the current operation is outside the nominal operation.
It is considered that the person skilled in the art, in seeking a solution to the problem of maintaining confidentiality of a process while using a public blockchain and smart contracts to monitor conformance of a current operation of a process against a nominal operation of the process, would have been led directly to the use of these known techniques for creating a numerical representation of the nominal operation of a process that is to be monitored, such that it may be homomorphically encrypted for input to calculations of a smart contract in order to obfuscate the confidential process related data, and to use routine rule processing and logic operations to make the particular determination, based on the outcome of the smart contract execution, to evaluate the conformance of a current operation of the process to the nominal operation.
Furthermore, it is considered that the features added by appended claims 3 to 20 cannot contribute to providing an inventive step because they relate to arrangements that are merely matters of design choice when the general technical knowledge about the state of the art is used. For example, claim 3 relates to a particular outcome of the smart contract execution upon which the determination is made; claims 4 – 5 relate to particular actions that are performed upon making the determination; claims 6 – 9 relate to routine Petri net implementation with respect to particular data to create the numerical representation; claim 10 relates to a well-known technique (binary state vectors) for representing particular data elements; claims 11 – 17 relate to routine binary and rule processing operations on particular data; and claims 18 – 20 relate to routine blockchain and smart contract functions performed on particular data.
The Applicant’s response
The applicant has submitted as follows in relation to this objection.
66. The Examiner considers that D4 discloses all features of the claims except for the data that is numerically represented and encrypted. We respectfully disagree.
67. D4 does not disclose the use of the disclosed methods for monitoring a process. D4 discloses “process execution”, not monitoring.
68. D4 does mention “The latter approach is the one that better follows the idea of deploying a business process on the blockchain having the smart contract acting as broker/monitor”, but D4 says nothing about how the monitoring is achieved.
69. As described above, the current invention provides a yes/no answer of whether or not the current process is nominal. This cannot be achieved by D4.
70. Further, the examiner considers that “It is inherent that data encoded into a smart contract will comprise a computer executable numerical representation”. This shows a lack of understanding of the invention. The claims actually read “numerical representation of the nominal operation of the process”. Of course, there are many numerical representations for many different things, but the use of a numerical representation of a nominal operation of a process is not inherent in D4.
71. For example, D4 discloses “Total Price = price * quantity”. These values may be numerical. However, this is not a representation of the nominal operation of a process. It is simply a calculation. There is nothing in D4 about how to represent transitions or how to identify whether a current calculation is nominal (“good”) or outside nominal (“bad”).
72. This shows that D4 does not disclose the features of the claims and cannot achieve what the claimed invention achieves. More specifically, D4 does not attempt execution of a process and concludes based on the result whether the process is nominal.
73. The Examiner states:
It is considered that the person skilled in the art, in seeking a solution to the problem of maintaining confidentiality of a process while using a public blockchain and smart contracts to monitor conformance of a current operation of a process against a nominal operation of the process, would have been led directly to the use of these known techniques for creating a numerical representation of the nominal operation of a process that is to be monitored, such that it may be homomorphically encrypted for input to calculations of a smart contract in order to obfuscate the confidential process related data, and to use routine rule processing and logic operations to make the particular determination, based on the outcome of the smart contract execution, to evaluate the conformance of a current operation of the process to the nominal operation.
74. This statement by the Examiner is mere conjecture and has no basis on the prior art. At the least, it involves the benefit of hindsight analysis, where the Examiner starts at the invention and works backwards to identify what was needed.
75. However, the proper test is the other way round. What would a skilled person have done? We submit that there is no evidence to show that a skilled person would have converted a process definition into a numerical representation to then use homomorphic encryption in smart contracts. This cannot be gleaned from D4.
76. Therefore, claims 1-22 are not obvious but constitute an inventive step.
77. Again, it is submitted that the dependent claims are far from what is taught in the prior art. In particular, the Examiner states:
Furthermore, it is considered that the features added by appended claims 3 to 20 cannot contribute to providing an inventive step because they relate to arrangements that are merely matters of design choice when the general technical knowledge about the state of the art is used. For example, claim 3 relates to a particular outcome of the smart contract execution upon which the determination is made; claims 4 – 5 relate to particular actions that are performed upon making the determination; claims 6 – 9 relate to routine Petri net implementation with respect to particular data to create the numerical representation; claim 10 relates to a well-known technique (binary state vectors) for representing particular data elements; claims 11 – 17 relate to routine binary and rule processing operations on particular data; and claims 18 – 20 relate to routine blockchain and smart contract functions performed on particular data.
78. The Examiner provides no reference to the prior art to reject these dependent claims, which is improper. Especially given that the Examiner has raised these objections only in the third report, one would expect that due consideration would be given.
79. In the absence of any evidence, we submit there is no basis to find the claims are obvious.
Consideration
There is no doubt that the disclosure of D4 is highly relevant to the presently claimed invention in that it is also directed to the use of blockchain to manage inter-organizational business process execution, where there is lack of mutual trust among parties and the consequential need to ensure data confidentiality during business process execution.
“Organizations expose their services to be directly invoked by smart contracts, having the smart contract playing the logic of monitoring the overall service composition. Distributed consensus ensures the correctness of smart contract execution, aka their transactions, ensuring thus the correctness of collaborations among different organizations. However, each data in the blockchain, e.g., stored on the chain or simply used in a smart contract, is public. Indeed, the distributed consensus protocol relies on the fact that miners have to re-execute the original smart contract in order to validate the resulting transaction. This poses serious consequence on the confidentiality and privacy of involved data, and thus to the feasibility of the integration of business process execution with blockchain”.[2]
[2] D4 at page 58
The solution proposed in D4 is to create a smart contract from the Business Process Execution Language (BPEL) document of the process and then convert this smart contract to a confidential smart contract where all of the sensitive/confidential information in the smart contract is homomorphically encrypted so that computations can still be performed on the encrypted information during execution of the process without disclosing the confidential information.
“The latter approach is the one that better follows the idea of deploying a business process on the blockchain having the smart contract acting as broker/monitor. To the best of our knowledge, the first proposal in this line is presented in [4]. The key idea is to convert a BPEL document into a smart contract that, according to the workflow encoded in the BPEL, invokes external web services. As discussed in [4] and [6], the integration of business processes on the blockchain has several benefits, the most relevant one is the overcome of the lack of trust among organizations. Thanks to distributed consensus, the blockchain can be considered trusted w.r.t. the correctness of smart contract execution. However, it lacks the protection of data confidentiality. as every data in the blockchain, e.g., stored on the chain or simply used in a smart contract, is public and for this reason very easy to be retrieved”.[3]
“In order to cope with confidentiality requirements highlighted in the previous section, we propose a solution where sensitive data, contained and used in the smart contract, is encrypted in such a way that can be consumed (aka decrypted) only by authorized organizations by, at the same time, allowing simple computations over it. At this purpose, given a smart contract SC implementing a BPEL process, we propose to generate a new Confidential Smart Contract - CSC, where all sensitive data contained in variables defined in the smart contract are encrypted. As depicted in Figure 2, we assume the presence of an Encrypter that takes as input a smart contract SC and returns the corresponding confidential version CSC. Also, we assume that each organization involved in the business process owns a pair of private and public keys, where public key is known by the Encrypter”.[4]
“Usable variables. This is the case of variables whose content has to be exploited during the execution of the smart contract. This could be done by instructions like
test conditions, e.g., the IF instruction in line 9 of Figure 1, where the value of variable availability, returned by the Manufacturer service, is tested. Also, there could be instructions that perform operations on the variable contents, e.g., the computation of Total price in line 7 as the product of two sensitive data, aka variables price and quantity. On this kind of variables it is not possible to apply standard encryption techniques, as once they are encrypted they can no more be used. In contrast, the idea is to exploit alternative encryption strategies able to obtain encrypted values on which some basic operations can be executed. Literature offers several encryption scheme with these properties [9]. As a first step, among the available techniques, in this paper we exploit an homomorphic encryption scheme”.[5][3] D4 at page 59
[4] D4 at page 60
[5] D4 at page 60
While D4 does not explicitly use the term ‘numerical representation’, it is clear that the BPEL is a form of numerical representation or at least performs the same function as the numerical representation defined in the claims. In any event, as acknowledged by the applicant, at least some of the confidential information in the BPEL is in numerical form.
However, as submitted by the applicant, there is no disclosure that the entire nominal operation of the process is homomorphically encrypted and that during execution of the process, the executed process is compared with the encrypted nominal process to determine whether it conforms to the nominal process. While the examiner has taken the view, that this would have an obvious thing to do, the applicant refutes this saying that the examiner’s assertion is based on hindsight.
While there is a fleeting reference in D4 to the smart contract acting as a monitor, as submitted by the applicant there is no further detail as to what is monitored and how it is monitored. There is no suggestion in D4 that the entire nominal process is homomorphically encrypted and this is then used as a reference to monitor compliance of an executed process. I am therefore prepared to accept that the skilled addressee would not have as a matter of routine modified the teaching of D4 to arrive at the claimed invention. The claimed invention therefore does not lack an inventive step over D4 and the examiner’s objection based on this document and the common general knowledge should be withdrawn.
Having said that, however, while reading D4 I looked up a few of the references cited in D4 including reference [13] - C. Prybila, S. Schulte, C. Hochreiner, and I. Weber, “Runtime
verification for business processes utilizing the bitcoin blockchain,” Future Generation Computer Systems, 2017. This reference talks about using blockchain platforms to also monitor compliance of a process with a nominal process – see paragraph bridging pages 10-11 (Previous process execution is valid). So, while D4 per se may not make the claimed invention obvious, the combination of D4 and this cited reference within D4 may well make the claimed invention obvious. This reference also strongly suggests that there may be prior art that has not been fully explored by the examiner.
It is therefore my view that the application should be referred back to the examination section for further investigation including consulting all of the references cited in D4, conducting additional searching if required and, if necessary, issuance of another examination report with regards to novelty and/or inventive step.
CONCLUSION
The examiner’s manner of manufacture objection in the third examination report cannot be maintained. The invention defined in the claims as proposed to be amended is for a manner of manufacture.
The claimed invention does not lack an inventive step over the cited prior art D4 per se.
However, I remit the application back to the examination section to conduct further searching including looking at all of the cited references of D4 and, if necessary, issue another examination report in relation to novelty and inventive step based on the results of this further search. If no relevant prior art is found, the application should be accepted.
In the circumstances, pursuant to sub-regulation 13.4(3), the final date to gain acceptance is set at four (4) months from the date of this decision.
R Subbarayan
Delegate of the Commissioner of Patents
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