DEI GRATIA PTY LTD - [2023] APO 50

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
DEI GRATIA PTY LTD [2023] APO 50
Patent Application: 2019200581

Title:LAST MILE LOGISTICS

Patent Applicant: DEI GRATIA PTY LTD

Delegate:Mr Kevin Restrick

Decision Date: 3 October 2023

Hearing Date: Written submissions filed on 30 August 2022

Catchwords: PATENTS - standard patent – examiner objection – inventive step - manner of manufacture – substance of the invention resides in a logistics scheme whose effectiveness relies upon business innovation rather than technical intervention - all claims lack a manner of manufacture – no patentable subject matter in application – application refused

Representation: Patent attorney for the applicant: FAL IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019200581

Title:LAST MILE LOGISTICS

Patent Applicant: DEI GRATIA PTY LTD
Date of Decision: 3 October 2023

DECISION
The claims of the application do not lack an inventive step in light of the documents raised during examination. However, the claimed invention is not for a manner of manufacture, and I see no patentable subject matter in the specification. I refuse the application.
REASONS FOR DECISION
Background

The present matter concerns patent application 2019200581 (“the application”) by Dei Gratia Pty Ltd. (“the applicant”). The application was filed 30 January 2019 as a divisional application. The application is the fourth incarnation in the family including parent application 2017201029, grandparent application 2015201344, and great-grandparent application 2012229868 itself a national phase entry of PCT/AU2012/000161 consequently providing the application with a priority date of 17 March 2011.
Prior to the present application, there have been eight adverse reports on the various parent applications. All eight adverse reports raised an objection for lack of inventive step. Six recent reports have also raised an objection that the claimed invention is not to a manner of manufacture because the claimed invention is a collocation. All three earlier applications lapsed due to failure to gain acceptance with the prescribed time period.
The application has been the subject of three examination reports, after which on 21 September 2020 the applicant wrote to the Commissioner requesting to be heard in relation to the matter in the third report, namely the outstanding objection that the claimed invention was to a collocation and lacked an inventive step. I heard this matter via written submissions filed 10 December 2020 and my decision issued on 16 March 2021, DEI GRATIA PTY LTD [2021] APO 14; 163 IPR 282 (the first decision). My first decision found the claimed invention involved an inventive step over D1 and D2 cited during examination and determined the claimed invention was not a collocation. However, I identified additional prior art that appeared relevant for inventive step assessment and referred the application back to examination. In addition, I requested consideration of whether the claimed invention is directed to a computer implemented scheme or business method and hence not a manner of manufacture. Following Reg 13.4(1)(g) and (3) the period to gain acceptance was extended by 6 months to 16 September 2021.
A fourth and a fifth adverse examination report were issued. The examiner raised and maintained that the substance of the claimed invention was not directed to patentable subject matter and also raised an inventive step objection making use of the newly identified citation. No amendments to the claims were proposed.
On 13 August 2021 the applicant wrote to the Commissioner requesting to be heard in relation to the matter in the fifth examination report, namely the outstanding objection that the claimed invention was not to a manner of manufacture and lacked an inventive step. On 30 June 2022 the Commissioner wrote to the Applicant indicating that the hearing would be conducted by way of written submissions due to be filed by 30 August 2022. The applicant filed their submissions in this regard on 30 August 2022 (“the applicant’s submissions”).
The request for examination of the application was filed on 29 March 2019. The application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) as the application was filed after 15 April 2013. The standard of proof that applies is the balance of probabilities (subsection 49(1)). The application must be accepted if on the balance of probabilities the application complies with the Act. If the application does not comply with the Act then it can be refused pursuant to subsection 49(2). The final date for acceptance of the application was 16 September 2021, however patent subregulation 13.4(1)(g) may be available to extend the time for gaining acceptance from the date of the present decision.
The invention as described
The following section draws from my first decision and is provided here for completeness. The application is directed to the field of logistics, and more specially to last mile logistics. The art of logistics refers to managing the movement of goods between a point of origin, such as a factory, and the end user, such as a customer. Logistics typically involves the integration of technologies such as material handling, packaging, warehousing, inventory, transportation, information, security and financial transactions. Often there can be numerous activities and stages that form the logistics process. Last mile logistics refers to the portion of the logistics process that is the final stage of delivery to the customer.
The background section of the specification provides an extensive discussion of the logistics, supply chain distribution, the role of warehouses and distribution centres, the returning of goods, and recent advances in online retailing. The specification provides a comparison between supply chain distribution for traditional bricks-and-mortar retail and that for electronic commerce and states that the current distribution models will not be the most efficient to satisfy customer demand. The background section of the specification, at page 5 line 1 through to page 6 line 30, presents an example scenario whereby a generic consumer (denoted “Consumer D” in the specification) has three particular needs and associated problems with the existing “to your door” delivery arrangements (note, the term “to your door” was introduced in the applicant’s submissions to the first decision to conveniently describe the prior art practice of delivering items to the consumer’s home):
·The consumer purchases online an expensive product that is delivered to the consumer’s address using a courier service or the regular postal system. If there is no one at home to sign for the parcel then the item is taken back to the nearest Post Office or distribution centre. A calling card is left for the consumer to collect the item or arrange for redelivery. The consumer is inconvenienced because they have to be present for delivery and if not present for the delivery then they need to make a special trip to pick up the parcel.
·The consumer shops for groceries online. The groceries, including perishables, are often delivered in polystyrene containers at an unspecified time. If the consumer is not present at the time of delivery the polystyrene container is left outside the residence leading to risk of theft and spoiling of the groceries. Alternatively, the order may be delivered within a specified delivery window such as a morning or afternoon. Whilst providing flexibility for the delivery service there is inconvenience for the consumer who must wait for the delivery. Shorter delivery windows are sometimes offered which may be more convenient for the consumer but often a delivery fee is levied commensurate with the specificity of the delivery window.
·The consumer purchases an article online and has it delivered using conventional courier or postal systems. The consumer is not satisfied with the product and wishes to return the product. The only way to do that is to repack the product and return it via the regular postal system or a similar delivery service. This requires the consumer to make a special trip to a post office or courier depot to facilitate the return of the goods.
The specification explains that with the increase in online ordering, this type of consumer is likely to exist with increasing frequency. Under the present logistics models, the last mile logistics will be performed by several independent operators each attempting to solve their own individual problems for the customer and creating several interfaces that may or may not work.
The specification continues, at Page 6 through Page 7 line 27, with a discussion of the prior art “drive up” solutions (alternatively described as “near to your door” solutions in the applicant’s submissions) such as drive-through and drive-up centres where a consumer places an order online and/or in person and picks the order up from a kiosk; pack stations where customers can pick up and drop of mail and parcels in dedicated lockers; and supermarkets offering refrigerated lockers from which online grocery orders can be picked up at a designated time. The same portion of the specification identifies various problems with each of the existing solutions namely limited range of products available in a drive-up concept, the customer still needs to make a special journey to the drive-up centre, pack stations can experience traffic problems and congestion, and supermarket pickup still requires a designated pick-up time that may not always be convenient.
The applicant approaches these problems by describing a logistics method and system that delivers to a single collection point the various goods the consumer has ordered online as well as additional items they may wish to purchase with the ordered items. The single collection point is a specific modified local outlet that has been automatically calculated from a plurality of such outlets such that the collection point creates the least deviation from a route input by the customer on a communication device. The consumer can then pick up their goods from this location or they can be delivered from this location to their home address.
The described invention introduces the concept of a modified local outlet. A modified local outlet is described as being a local outlet such as the neighbourhood convenience store or petrol station, that has taken on the new role of a local distribution centre for last mile logistics. Local outlets efficiently serve their local surrounding area and in most instances there typically will be at least one such outlet, if not many, in a given local area.
By having the various items the consumer has purchased co-located at a collection point identified as having the least deviation from a route input by the customer means that if the customer does pick up the goods, then the pick-up point is a location that is most convenient for them. Alternatively, if the goods are to be delivered from the selected modified local outlet to the customer’s home then the delivery distance is shorter resulting in lower delivery costs and reduced pollution. If the consumer is not available to receive the delivery, the goods only need to be returned a short distance to what should be a convenient pick-up for the customer.
The claims
The claims being considered are those as originally filed. The application includes twenty-one claims. Claims 1, 13, and 18 are independent and directed respectively to a method for delivering to a selected modified outlet, a logistics system for delivering to a customer, and a selected modified local outlet when used for delivering to a customer. Aside from the preamble of the independent claims the features and scope of these claims are essentially equivalent to each other. Where claims 13 and 18 differ from claim 1 is that they include the physical and functional features of the method steps of claim 1. Claim 1 – the method claim – is reproduced below and this claim will form the basis of this decision’s considerations. Having considered claim 1, and if necessary, the subsequent independent claims and dependent claims can be considered.
Claim 1 reads as follows:
A method for delivering to a selected modified local outlet
(i) goods from a core range of products carried by the selected modified local outlet;
(ii) goods from a further-extended range of products that can be unrelated to the core range of products; and
(iii) goods that have been ordered directly by a customer over a communications network from one or more of a plurality of other vendors unrelated to the selected modified local outlet,
the method comprising:
providing the (i) goods from a core range of products that are carried for daily consumption at an availability that is order today, deliver today at the selected modified local outlet for purchase by the customer;
automatically calculating the selected modified local outlet to be a collection point that creates the least deviation from a route input by the customer on their communication device, wherein the selected modified local outlet is selected from a plurality of modified local outlets serving their local surrounding area, wherein the automatic calculation is
performed by a processor coupled to be in communication with a website or other suitable interface over a communications network for receiving orders for the (ii) goods and the (iii) goods from the customer via their communication device;
receiving at the selected modified local outlet the (ii) goods from a further extended range of products that have been ordered directly by the customer over the communications network wherein the (ii) goods have an availability that is order today, deliver tomorrow and wherein the (ii) goods are ordered by the customer and the selected modified local outlet is automatically calculated and specified to be the collection point; and
receiving at the selected modified local outlet the (iii) goods ordered directly by the customer over the communications network from the one or more of a plurality of other vendors wherein the (iii) goods ordered directly by the customer include the selected modified local outlet as a destination specified by the customer; and
providing at the selected modified local outlet the (i) goods from a core range of products; the (ii) goods from a further-extended range of products; and the (iii) goods that have been ordered directly by the customer over a communications network to the customer.
There are no Section 40 objections outstanding from the examination process. However there does appear to be some misalignment in thought between the examiner and the applicant with regards to the term ‘least deviation from a route’. The applicant submits at Paragraph 31 and 32 of the applicant’s submissions:
“… in the context of the claimed invention the term ‘the least deviation’ clearly relates to the collection point enabling the customer to travel the least distance from and to the route in order to collect ordered goods.
32. As such, the calculation of the collection point providing ‘the least deviation’ involves calculation of the travel distance between available collection points and respective points of departure from and return to the designated route, to determine the collection point for which collection of goods would involve the least additional travel distance with regard to the route.”
I am in agreement with this understanding and have no issue with the term.
Whilst there are no Section 40-type matters, it is worth dwelling on several features and give them some consideration ahead of the more substantive inventive step and manner of manufacture issues where they may become more relevant.
The term “modified local outlet” does not appear in any dictionary and does not appear to be a term used in the art. Applying the plain meaning of the term “modified” and “local” to what the person skilled in the art would understand to be an outlet, I can interpret the term “modified local outlet” to be an existing outlet in the local area that in addition to performing its normal function is also performing the role of a logistics facility. This accords with how the description at page 12 lines 9 – 20 describes such outlets:
“In preferred embodiments, the logistics facility 10 is accommodated within a modified local outlet, such as a modified convenience store. Other examples of modified local outlets include, but are not limited to a modified shop, such as a modified shoe repair store and/or key cutting store, a modified petrol station, a modified fishing tackle store or other business. Local outlets efficiently serve their local surrounding area and at least one such outlet is typically provided per local area.
Hence, by virtue of the present invention, a convenience store operation, petrol station or the like is turned into a multi-faceted clicks and mortar online store with a traditional bricks and mortar retail operation that also conducts the last mile logistics of warehousing, consolidations, cross docking, "reverse logistics" etc.”
It is interesting to note that the application does not go into detail as to how existing outlets such as a convenience store or a petrol station is selected or adapted into a ‘modified local outlet’. At its barest level a local outlet can become a “modified” local outlet based on nothing more than, for example, the owner of a petrol station entering into a contractual relationship with a logistics company based upon a financial benefit they expect to receive. I do find it interesting that the claimed method presupposes at least one modified local outlet in the vicinity of the user’s route.
The “(i) goods” are not necessarily pre-ordered by the customer. Claim 1 (and the other independent claims) requires only that these products are delivered to and available from the selected modified outlet. Claim 6 adds the method step of receiving a customer order for (i) goods and consolidating this order with the (ii) and (iii) goods.
The automatic identification of the selected modified outlet occurs at the point in time where the consumer purchases their (ii) goods. The selected modified local outlet is automatically calculated as the collection point that creates the least deviation from a route input by the customer on their communication device. When the consumer purchases their (iii) goods they need to specify the collection point themselves.
The final step of method claim 1 is “providing at the selected modified local outlet” the various goods that are available for purchase and collection. I consider the term “providing” to be quite broad and encompasses the many means known in the art by which a consumer can pick up their order in person, for example drive though pickup or a locker pickup. The term providing also encompasses the modified local outlet sending a delivery driver from the outlet to the consumer’s home (or other agreed location) to deliver the purchased goods. Claim 2 explicitly provides the definition of this delivery step.
There is no indication of how the customer decides to pick up their order or have it delivered. However, I do not think this is important because the claims are directed to the method, systems and outlet that the goods are delivered too, rather than how the goods get to the customer per se.
The remaining objections
There are two outstanding objections; whether the subject matter of the claimed invention is directed to a manner of manufacture and whether the claimed invention involves an inventive step.
The objection to the claimed invention not being directed to a manner of manufacture is based on an assessment by the examiner that there is no improvement in the functioning of the computational aspects of the claimed invention and that the invention is directed to the particular set of products and services offered by the business whereby the customer is conveniently directed to an appropriate outlet for delivery. The examiner explains that there is no ingenuity in how a practical and useful result is achieved (minimum deviation from a route) and consequently the substance of the invention lies in the logistics scheme and hence not directed to patentable subject matter.

The examination reports for the parent, grandparent, and great grandparent have all pursued various forms of an inventive step objection using as a minimum D1 (listed below) combined in various forms with common general knowledge or a second patent document, most recently with D3. The full citation of D1 and D3 is:
D1: US 2003/0177072 A1 (BARED) 18 September 2003
D3: US 2004/0153370 A1 (YANG) 5 August 2004
and I will continue to refer to these documents as D1 and D3 throughout this decision.
The inventive step objection in the present application is a mosaic, a combination, of D3
with the teachings of D1. In summary, D3 teaches the user being able to select a delivery location based upon a route they enter (e.g. the commute home from work) whilst D1 teaches grocery ordering and drive-through pickup. The objection argues that D1 teaches a relevant grocery pickup business that could be one of the choices the user can select using the method of D3. I will discuss each of these documents in more detail later in this decision.
Summary of the applicant’s submissions
The applicant’s submissions with regard to manner of manufacture explains how the applicant believes the examiner has mischaracterised the invention as relating to a computer-implemented business method. The applicant explains (at paragraph 3 of their submissions) they consider the substance of the invention relates to a method of transporting goods:
“(b) The substance of the invention relates to a method of transporting goods and necessarily involves:
(i)        a user inputting a route on a communication device;
(ii)      a local outlet being automatically selected from among other local outlets which provides the least deviation from the route input by the user; and
(iii)       goods being delivered to the local outlet identified as providing the least
deviation from the route input by the purchaser.
(c) The claimed invention necessarily involves transport and delivery of goods to a different physical location to that which would have been selected and utilised according to prior art methodologies.
(d) The fact that goods are delivered to a different location involves:
(i)       a physical phenomenon in which the effect, be it creation or merely alteration, may be observed and which has utility in practical affairs (applying National Research Development Corporation v Commissioner of Patents); and
(ii)      concrete, tangible, physical and observable effect which is in turn more practical and convenient to the user (applying Grant v Commissioner of Patents).”
that enables the customer to collect goods with reduced effort, cost, time, and resource consumption:
“(k) The Applicant contends that the substance of the invention relates to an improved logistics system involving the transport and delivery of goods, such system including the calculation of, and transport and delivery to, a collection point for goods which is different to that otherwise utilised according to the state of the art. This in turn enables for the customer to collect goods with reduced: effort, cost, time, and resource consumption (applying Bio-Rad Laboratories, Inc.).
(l) Further, and more generally, the Applicant contends that a method of determining the best location among alternatives for a customer to collect ordered goods involves a practical and useful result in exactly the same way as a method of determining the best route to a location taking account of congestion related issues was found to involve a practical and useful result (applying eBay, Inc.).”
and explains that the invention is directed to a “logistics systems which provide useful and practical convenience to a customer receiving goods” and in their view is a patentable invention.
The applicant submits that the examiner has incorrectly applied principles from Commissioner of Patents v RPL Central Pty. Ltd. [2015] FCAFC 177 (“RPL”) and Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”) to exclude the claimed invention as a manner of manufacture because it includes computer technology. The submissions place weight on Bio-Rad Laboratories, Inc [2018] APO 24 (Bio-Rad) and the Patents Manual of Practice and Procedure (PMPP), with further references to eBay Inc. [2020] APO 49 (eBay) to explain that because a material effect is created outside of the computer that it is then not necessary to consider whether there has been any improvement in computer technology:
“the Examiner acknowledged that the invention claimed gives rise to a physical effect outside a computer relating to the transport of goods, the Examiner nevertheless applied principles laid out in Research Affiliates and RPL, in respect of computer-implemented methods, to determine that the invention claimed was not for a manner of manufacture.
In effect, the Examiner appears to contend that the principles of Research Affiliates and RPL would apply any time a computer is referenced in a claim.
It is impossible to reconcile the Examiner’s arguments with section 2.9.2.7 of the Manual, which states (our emphasis):
Bio-Rad [Laboratories, Inc. [2018] APO 24] clarifies that in the circumstances where the material effect of an invention lies outside the computer, it is not necessary to separately consider any technical improvement to computer technology.”
It is apparent from the applicant’s submissions that the question of whether there is a practical and useful result arising from the claimed invention, the nature of any such result, and whether this effect lies outside the computer will be an important consideration that I will discuss later.
The applicant’s submissions with regard to whether the claimed invention includes an inventive step focuses on whether the person skilled in the art would combine the teachings of D1 and D3, whether either of these documents disclose the submitted important feature of automatically calculating a goods collection point providing the least deviation from a route input by a user, and whether the examiner has used the appropriate legal tests for assessing inventive step. I will certainly address the first two points in this decision as much importance is made of the automatic nature of identifying a collection point with least deviation from the customer’s route. The commentary around the examination process and the examiner’s inventive step objection is interesting but I will be starting from first principles when I consider whether the claimed invention involves an inventive step.
Applicable law for manner of manufacture
I am grateful for the applicant’s summary of the law on manner of manufacture set out in Bio-Rad. My summary of the law is below. Both my summary and the applicant’s summary follow the same principles and are aligned with the authorities’ decisions in RPL and Research Affiliates.
The statutory basis for manner of manufacture is found at s18(1)(a) of the Act which states:
“(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and ...”
In National Research Development Corporation v Commissioner of Patents, [1959] HCA 67, (1959) 102 CLR 252 (“NRDC”), the High Court provided a statement of the law in this regard. At page 275:
“... 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”.
At page 276, the High Court in NRDC further observed that what is meant by a “product” in relation to a process is only something in which a new and useful effect may be observed. More specifically:
“Sufficient authority has been cited to show that the ‘something’ need not be a ‘thing’ in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed”.
As stated in D’Arcy v Myriad Genetics Inc. [2015] HCA 35 (“Myriad”), at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
In Myriad, Gageler and Nettle JJ. at [144] stressed the importance of having regard to the substance of the claimed invention, not simply the form of the claim:
“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.”
More recently the authorities have directly considered the patentability of computer implemented business methods, most notably in Research Affiliates and RPL. These decisions eschewed a standardised approach and instead require one to adopt a case-by-case approach to identifying the substance of the invention.
Their Honours in RPL at [96] – [98] explained the importance of identifying the substance of the invention and outlined considerations useful in determining whether a computer implemented business method is patentable:
“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.
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 wifi, 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?
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.”
Thus, in relation to computer implemented inventions, it is necessary to look at the invention as a matter of substance, rather than as a matter of form. Upon doing so one will then be able to ascertain if this substance provides for a manner of manufacture using the established authorities.
The principles of law that apply to the present matter in the context of computer implementation appear to be well reflected in the principles summarised at [189] and generally accepted [201] by Robertson J in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (“Rokt1”);
“The respondent submitted that the law as laid out in Research Affiliates and RPL Central held that:
17.1 The Court must decide, as matter of substance not form, whether the claimed invention is the proper subject-matter for a patent: RPL Central at [99]; Research Affiliates at [106], [117].
17.2 This requires consideration of both the claims of the Application and the invention described in the body of the specification: RPL Central at [114].
17.3 The assessment is not done mechanically. There are no precise guidelines or mathematical formula. It is “a question of understanding what has been the work of, the output of, and the result of, human ingenuity” and then applying the developed principles: Research Affiliates at [116]. See further RPL Central at [112]:
Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie ...
17.4 One well-settled principle is that a distinction exists between a technological innovation and a business innovation. A technological innovation is patentable. A business innovation is not: Research Affiliates at [94]; RPL Central at [100]. Consequently, a business method or scheme is not, per se, a proper subject for letters patent: RPL Central at [96]. Nor are abstract ideas, mere intellectual information or mere directions for use patentable: Research Affiliates at [101]; RPL Central at [100].
17.5 A computerised business method or scheme can, in some cases, be patentable. However, “[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation”: RPL Central at [96] (emphasis added). This requires “some ingenuity in the way in which the computer is used”: RPL Central at [104]. It is not a patentable invention “to simply ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions”: RPL Central at [96]. In other words, if the ingenuity lies in the business method or scheme alone, the invention will not be patentable despite the computer-implementation.
17.6 Thus, a claimed invention must be examined to ascertain whether it is in substance a scheme or plan, or whether it can broadly be described as an improvement in computer technology: RPL Central at [96]. Contrary to [the applicant’s submissions at [49]], this is a binary distinction: the invention is either an unpatentable scheme or plan, or it is a patentable improvement in computer technology. In conducting the analysis, it is useful to:
17.6.1 ascertain whether the contribution to the claimed invention is technical in nature: RPL Central at [99], Research Affiliates at [114];
17.6.2 consider whether the invention solves a “technical” problem within the computer or outside the computer: RPL Central at [99]; Research Affiliates at [103];
17.6.3 consider whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed: RPL Central at [99], Research Affiliates at [118];
17.6.4 consider whether the invention requires merely “generic computer implementation”, as distinct from steps which are “foreign” to the normal use of computers: RPL Central at [99], [102]; Research Affiliates at [101]; and
17.6.5 consider whether the computer is merely the intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea: RPL Central at [99].’”
This approach remains relevant in view of subsequent decisions. In Commissioner of Patents v Aristocrat Technologies Pty Limited [2021] FCAFC 202 (Aristocrat21), it was found that a game implemented on an electronic gaming machine was not patentable. After first identifying the claimed invention as involving a mere game which was unpatentable, the Full Court asked whether the claimed invention was a computer-implemented invention before determining that for the claims to be patentable, there needed to be “an advance in computer technology”. On appeal to the High Court, in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents[2022] HCA 29 Aristocrat22) the Court was evenly split, and via s 23(2)(a) of the Judiciary Act1903 affirmed the Aristocrat ‘21 decision, while appearing to confirm that an advance in computer technology is not per se a useful test for patentability. Nevertheless, the High Court confirmed the decisions of the Full Federal Court in RPL, Research Affiliates, and Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt2) were correct.
It is important to note that the Applicant has made arguments, for example at Paragraph 3(l), 38 and 86 of their submissions, that their claimed invention produces a practical and useful result and that this is sufficient for patentability. By virtue of its absence the consideration of whether there is “a practical and useful result” does not explicitly appear in Rokt1. I will address this issue in more detail below. I will also review and make comments below regarding the Applicant’s reference to the Bio-Rad and eBay decision.
Considerations for manner of manufacture
With the considerations of Rokt1 in mind I will first turn my attention to analysing the claimed invention.
It is my understanding of the specification that the invention is carried out using generic computing technology. The applicant’s submissions do not support a contrary view. The applicant’s submissions are clear they do not consider there to be any advance in computer technology, the problem being addressed lies outside of the computer, and there is no ingenuity with respect to computer technology. At Paragraph 3(j) the applicant submits:
“The Applicant does not contend that the substance of the invention lies in the difficulty of implementing the claimed process on a computer.”
and at Paragraph 46:
“When relevant factors are considered, including through review of the Application and the field of the invention and problems in respect of the prior art described in the Application, it is apparent that the substance of the invention is not directed to the improved operation of a computer. While operation of a computer forms part of the invention, it does not exclusively constitute the substance of the invention.”
and further at Paragraph 49:
“This is consistent with the invention not being directed toward the improved operation of a computer but rather with providing increased practical convenience to customers receiving delivery of goods.”.
In this sense, applying the considerations presented by Rokt1 clearly lead to the conclusion that that the substance of the invention does not reside in overcoming any technical problem or difficulty within the computer, or in any improvement in the functioning of the computer.
The applicant’s submissions draw upon Bio-Rad and the PMPP 2.9.2.7 to explain that “in the circumstances where the material effect of an invention lies outside the computer, it is not necessary to separately consider any technical improvement to computer technology”. The applicant also refers to the Delegate’s decision in CareFusion 303, Inc. [2021] APO 12 and suggests that the determination of reduced wastage of medications (provided that reduced wastage us assured) is a practical and useful result has relevance to whether the current claimed invention is directed to a manner of manufacture. The applicant also refers to eBay and concludes “that a claim, even if involving what may be described by some as a scheme, will nevertheless be patentable if the substance of the invention gives rise to a physical, practical and useful effect”.
With respect to the current application, the applicant submits at Paragraph 38:
“A claimed invention will nevertheless be patentable if the substance of the invention gives rise to a physical, practical and useful effect.”,
and at Paragraph 47:
“Application makes it clear that the invention is directed to logistics systems which provide useful and practical convenience to a customer receiving goods.”,
further at Paragraph 50 and 51:
“Noting that the invention is directed to providing increased practical convenience to customers receiving delivery of goods, the claimed invention includes the feature of:
(a) a user inputs a route on a communication device;
(b) a local outlet is automatically selected amongst other local outlets as providing the least deviation from the route input by the user; and
(c) goods are delivered to the local outlet providing the least deviation from the route input by the purchaser.
It is therefore apparent that these features form part of the substance of the invention, and cannot be disregarded from an assessment of whether the invention relates to a manner of manufacture.”,
and finally at Paragraph 86:
“In summary, the Applicant submits that the invention does not relate to the mere generic implementation of a scheme on a computer, but to an improved logistics methodology involving the calculation of a collection point and transport of goods to that delivery point thereby giving rise to a practical and useful effect.”.
Consideration of practical and useful result

The applicant has placed great weight on there being a practical and useful result, and that this confers patentability. While not irrelevant to the analysis, the presence of such a result does not necessarily mean the claimed invention is directed to patentable subject matter. If it was sufficient to solely provide a practical and useful result then it is arguable that any of the inventions in Full Court precedents cited in this decision may in fact be patentable. In this sense, one can consider the requirement of a practical and useful result as kind of threshold to pass. For example, the Delegate of the Commissioner at [38] of Amsted Rail Company, Inc. [2021] APO 25 (“Amsted”) concluded:
“a “practical and useful result” can be viewed as a kind of threshold requirement that is perhaps of greater utility where a claimed invention is entirely and manifestly an abstraction of the kind in Grant. The absence of any “practical and useful result” in a claimed invention is indicative of a pure abstraction and it is likely that one need go no further in considering patentability.”.
Being an invention that provides a practical and useful result one still needs to consider more completely whether the substance of the invention lies within the subject matter than patents are granted for. Paragraph [114] in Research Affiliates explains, with my emphasis in bold, the artificial effect needs to arise from ingenuity in more than just the scheme:
“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).”
A useful consideration of ‘practical and useful result” occurs in Paragraph [49] to [51] of F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2) [2022] FCA 96 (F45) where Nichols J. explained, with my emphasis in bold, that a physical effect is not necessarily sufficient and importantly that the substance of the invention needs to be directed to subject matter that is patent eligible;
“49 The physical effects relied upon by F45 are those achieved using a computer implemented scheme for the configuration of exercise stations. The substance of the invention resides not in the actual physical arrangement of the exercise stations but in the computer implemented scheme which enables those physical arrangements to be made. Although claim 1 of the 604 patent may be understood as requiring that exercise stations be actually configured in accordance with the studio information program file, the substance of the invention disclosed and claimed resides in the computer implemented scheme which enables such configuration to occur on a periodic basis in accordance with the content of the studio information program files.
50 The authorities make clear that the demonstration of a “physical effect” does not necessarily mean that an invention satisfies the NRDC requirement that the invention result in an “artificially created state of affairs”. For example, a scheme for maritime navigation does not satisfy the relevant requirement merely because navigation buoys are required to have particular shapes, colours or other markings or to be located in particular positions relative to channels or hazards. Similarly, a scheme for the management of aircraft during take-off so as to reduce noise would not satisfy the NRDC requirement merely because the aircraft are required to be operated in the particular manner: see TA Blanco White, Patents for Inventions, 5th ed. Stevens & Sons, London, 1983 at 4-903, 4-911 citing Rolls Royce Ltd’s Application [1963] RPC 251 and In the Matter of an Application for a Patent by W (1914) 31 RPC 141.
51 Further, the more recent authorities concerned with computer implemented inventions do not deny the existence of some “physical effect” which can plainly be seen in the workings of computers by the storage of information in RAM and, in many cases, its communication over the internet. But as the Full Court’s decision in RPL Central makes clear, these physical effects are not themselves sufficient to satisfy the NRDC requirement for an “artificially created state of affairs”: see especially [96]-[98]. In the present case the mere fact that the invention contemplates (F45 would say, requires) that exercise stations be physically configured with fitness equipment is not in itself sufficient to result in the required “artificially created state of affairs” any more than would a scheme for the layout or configuration of a sports field or children’s playground which is changed periodically to take account of the seasons. It is the kind of scheme that has historically never been regarded as patentable subject matter. The scheme is not made patentable merely because it is implemented using generic computing technology.”
I am also drawn to two recent office decisions. In CareFusion 303, Inc. [2021] APO 10 the Delegate found that whilst the invention provided for more efficient delivery of medication, the invention as a matter of substance, lay in the realm of merely organising human activity. Similarly, in Grzegorz Malewicz [2022] APO 11 the Deputy Commissioner identified that an algorithm provided a useful and practical output by enabling time saving, however this was a tenet of effective organisation of activity and not a manner of manufacture.
The applicant’s submissions direct my attention to certain passages of the PMPP, specifically PMPP 2.9.2.7 and the references to the decision in Bio-Rad. The Bio-Rad application was directed to a system for optimising a quality control (“QC”) strategy. The delegate stated at [57]:
“However when this identified QC rule is put into effect during testing, the resulting reduction in the number of tests to be carried out and the reduction in the number of reference samples that are used are, in my view, ‘artificial effects’. Furthermore the contribution of the claimed invention is clearly technical in nature as it has application in the technology of medical diagnostic devices and their testing.”
I consider the present application is distinguished from Bio-Rad. In Bio-Rad, the Delegate identified the character of the invention was the real-world impact of reducing the quantity of samples required for quality control and lay in the technical field of medical diagnostic devices and their testing, and as such was more than the result of implementing a business process within a computer. This is quite different to the present application that relates to an improved logistics system involving the transport and delivery of goods to a collection point which is different to that otherwise utilised according to the state of the art; all of which is, in my view, commercial innovation to make the delivery of goods more convenient and is not technical in nature.
The applicant’s submission also makes reference to the eBay decision where the Delegate, at [41], indicated that the result in the form of physical directions for a recommended route to avoid congestion provided to a user, was “…a practical and useful result that is not related to a business process or business rules…” and concluded at [43]:
“In contrast to that defined in Research Affiliates, RPL, Encompass, and Rokt, the claims of this application clearly define more than an abstract idea. In combination the claims define changing the physical directions provided to a user based on at least the current time, a time to start or restart of the event and congestion along the route to get to the point of interest. The provision of physical directions for the user to take, as claimed, is not considered to be abstract or implementing a business process, but rather a physical and technical solution to a physical and technical problem that provides a practical and useful result.”
I note that the facts of the case in eBay are different to the present case. In eBay the delegate identified that obtaining congestion information during the course of an event is a technical problem requiring a technical solution. It is apparent that the Delegate considered the “practical and useful result” achieved from the scheme to be more than simply the result of implementing a business process within a computer and instead recognised the practical and useful result to have arisen from technical innovation. This is quite different to the present application where the applicant’s submission state there is in fact no technical innovation.
Having reviewed the case law it is important to consider how the claimed invention may produce a practical and useful result. The applicant expresses that calculating a convenient location i.e. a collection point that creates the least deviation from a route input by the customer, and delivering goods to that location is a practical useful result in that there is a reduced "effort, cost, time, and resource consumption”. This seems a somewhat superficial result in that it is a basic principle of a logistics scheme to deliver goods to where they need to be. There certainly would not be much benefit for anyone to deliver goods to a location where they are not wanted.
The applicant places great weight on the automatic selection of a modified local outlet that provides the least deviation from the route input by the user. As the applicant has admitted (paragraph 43 above), there is no technical ingenuity involved in this selection. One can imagine that such a location would be more convenient for a customer in that it saves time and effort compared to travelling further afield or making an additional journey. However, I cannot reconcile that convenience on its own is a patentable result per se. Opening extra check-outs at the supermarket or having additional staff at the hardware store on weekends all improve convenience but are clearly not patentable technical innovations and instead lie in the realm of commercial or business innovation. In the present application the improvement to the user’s experience – the saving in their travel time or fuel costs– by way of having modified local outlets proximate the user’s journey is a business innovation in that a commercial decision has been made by the logistics company to distinguish their service over their competitors by allowing customers to pick up goods from a modified local outlet. It is apparent that in the absence of technical ingenuity to identify which outlet provides the least deviation from the route in making a decision to have customer’s goods sent to the closest location simply arises from a business decision to ensure good customer service.
One could imagine that departing from a route and travelling to a local outlet selected from others because it has the least deviation from the user’s route would save fuel compared to travelling to a local outlet that was further away. Fuel savings can be achieved through innovation that belongs to patentable subject matter such as fuel injectors for combustion engine vehicles or higher charge batteries for electric vehicles. The fuel saving in the present application comes about from a business innovation to set up modified local outlet closer to the user’s commuting route compared to the distance to the supplier’s main warehouse. This is merely an organisational or logistical arrangement.
As I explained in Paragraph 22, the method of claim 1 only requires the goods to be delivered to the selected modified local outlet and then “providing” the goods from the outlet. There is no requirement for the customer to necessarily pick up the goods. This is a further distinction from the scenario of eBay. In the scenario (for example one alternative in claim 2 or claim 6) where the goods are to be delivered from the modified local outlet to the customer’s home it is far less clear why selecting a modified local outlet that is the least deviation from the customer’s route is required. Depending upon the user’s route, for example their daily commute, one can imagine there will be use cases where the most appropriate (in terms of reducing time, effort, and resource consumption) modified local outlet is one that is closest to the customer’s home location and not the closest to the route. Furthermore, in the scenario where the goods are delivered to the modified local outlet and then delivered in an additional secondary step from the modified local outlet to the user home it is less apparent whether there is a reduction in effort, cost, time, and resource. In this scenario the goods are still being delivered from point A to point B, with the modified local outlet an additional point that has little to do with how close it is to the user’s, for example, route to work.
A further quandary that I have with the claimed invention’s alleged benefit is that it is entirely dependent on the availability (number of) of modified local outlets as well as their location. Consider the scenario where there is a single modified local outlet in the vicinity of the user’s route. Regardless of how far it is away from the route it will still be the only location the user can visit or have their goods delivered from. In this use case the system of claim 1 does not provide any practical and useful result above any other prior art last mile logistics scheme. Another scenario may occur where there is a modified outlet located on the user’s route. Given the prevalence of strip malls, petrol stations, and local “corner stores” adjacent to major thoroughfares this scenario is likely to be very common. In this use case the claimed methodology provides no further convenience over prior art last mile logistics schemes that already allow goods to be picked up locations such as convenience stores or petrol stations.
Admittedly, if there are a number of modified local outlets in the vicinity of the user’s route, then selecting the one that requires the least deviation certainly serves a purpose and would benefit both the user and/or the logistics company in terms of travel time, fuel, and general convenience. However, even this scenario is problematic in that if all of the modified outlets are far from the user’s route then the relative benefit of having goods delivered to one modified local outlet over another modified local outlet is far less than if there is one specific local modified outlet that stands out from the others are being more convenient.
It is apparent to me that the claimed invention may produce a practical and useful result in some circumstances, but it is not assured. The success whether there is a practical and useful result relies on two factors: the availability i.e. number of, and the location of the modified local outlets. These factors relate to commercial decisions by the operator of the logistics scheme and the owners of the modified local outlets who contractually agree to be goods delivery and pick up locations. These factors may be business innovations, but they are not innovations that one considers patentable.
Balance of considerations
The applicant has stated that the substance of the invention relates to an improved logistics system involving the transport and delivery of goods, such system including the calculation of, and transport and delivery to, a collection point for goods which is different to that otherwise utilised according to the state of the art. Having stepped through Paragraphs 7 – 15 above I agree with the applicant’s position. However, such systems typically do not belong to subject matter that one grants patents for as they often lie in the realm of organising human activity. As the Full Court stated in Research Affiliates [57], processes for organising human activity are not patentable.
The applicant has argued that the method of determining the best location among alternatives to deliver ordered goods to involves a practical and useful result and that this is sufficient to confer patentability. Firstly, this argument is not supported by the decisions of the authorities cited above. Secondly, as discussed above, I am not persuaded that there will always be a practical and useful result. Finally, if there is a practical and useful result arising from having goods delivered to a modified local outlet that involves the least deviation from a customer’s route, then this result has not arisen from the technical ingenuity of the inventors; the result has been achieved through a business decision to improve customer services in the scenarios where a range of existing businesses have been contracted to be modified local outlets. In a similar manner to the Research Affiliates and F45 decisions discussed above at Paragraph 45 and 46 the ingenuity is occurring in the sense of business schemes and business innovations and not through the technical ingenuity of the inventors.
It follows that the invention as claimed in independent claim 1 is not a manner of manufacture. It is, in substance, a logistics system directed to organising and administering human activity based on business decisions to improve customer experience. Independent claims 13 and 18 are directed to a logistics system for delivering to a customer, and a selected modified local outlet when used for delivering to a customer. The substance of these claims is the same as that for claim 1 and therefore claims 13 and 18 are also not for a manner of manufacture.
I have also considered each of the dependent claims. The applicant has made no specific submissions regarding the dependent claims. The dependent claims simply further define the method and systems of the independent claims in more detail by defining further steps in the logistics scheme or aspects of online ordering of goods. None of the dependent claims add anything of substance that fundamentally escapes the patentability issues of the independent claims. It follows that none of the dependent claims are for a manner of manufacture.
Applicable law for inventive step
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) For the purposes of this Act, an invention is to be 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 relevant art in the 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 courts have grappled with the term “obviousness” and have arrived at a number of tests. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“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.”

The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]-[53] (Aktiebolaget Hässle), acknowledged the concept of “matter of routine” with reference to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
The examiner’s inventive step objection involves a combination of two documents. The key issue here is that the combination of features in the claimed invention is obvious, and not whether the integers in isolation are known or obvious: Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293 (Minnesota Mining & Manufacturing Co.):
"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."
Inventive step considerations
The test outlined in Wellcome Foundation can be applied in practice in the form of the so-called problem-solution approach to assess lack of inventive step.
The Problem
Applying the problem-solution approach for assessing obviousness requires a determination of the problem that the claimed invention seeks to address. In determining the problem or ‘starting point’ for considering inventive step, the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (‘AstraZeneca’) at [202]-[203] stated that it is not permissible to incorporate information that is not available to the person skilled in the art when determining the problem:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
This decision, much like examination, is an ex parte process and thus in the absence of contrary evidence and expert witnesses it is prima facie reasonable to refer to the specification and any discussion of the prior art when determining the common general knowledge in the art and in turn the problem the applicant hopes to overcome.
I have discussed in detail at Paragraphs 7 -13 the background to the invention including problems with to your door delivery as well as the problems with prior art drive up options. The applicant’s discussion of the prior art is quite far ranging and appropriate given the application discusses a number of different consumer types and their needs, and it is quite clear from the discussion of the prior art that there are numerous different approaches to fulfilling the needs of various different customers. I consider that the problem to be overcome is that the final stage of getting a product to the customer requires the customer to go out of their way and make a special journey to pick up their goods. This special journey could either be the customer attending a drive-up location or having to attend a location such as a distribution centre when there has been a failed to your door delivery for example, they are not home to take delivery of a parcel.
Inventive Step with regards D1 and D3.
The examiner’s objection for inventive step is what is termed a ‘mosaic’ of two documents. Typically one document stands out from the prior art and is selected as the starting document. This may be because it discloses more of the features of the claimed invention, it may be more closely aligned with the applicant’s problem, or it may in fact disclose the applicant’s inventive concept. A second document may then be used to, in short, fill in the remaining feature of the claim. Although cited chronologically third, I do consider than D3 is a more relevant document and I will start my considerations here.
Discussion of D3 (US 2004/0153370)
The reason I am drawn to D3 is that it is directed to the same problem the applicant is solving. Paragraph 0002 states:
“In a traditional order/deliver model, a shipper (such as UPS, FEDEX or US Postal Service) delivers a user’s order to a user designated address. Problems occur when there is no one at the delivery address to receive the shipment as the shipper has to drop ship at the user’s door even without someone in attendance. …. As a result, the recipient has to travel to the shipper’s office to pick up the goods to be delivered. The whole experience is inconvenient and frustrating.”
and further at Paragraph 0003:
“Furthermore, under the traditional delivery model, the shipper ships all packages piece by piece, door to door to each recipient’s address. The delivery route is long and so is the delivery cycle (a delivery cycle is the time occurred between the first delivery to the last). A long delivery route means delivery costs, such as fuel, depreciation on delivery equipment, personnel expenses . . . etc, will be high.”
I compare these two paragraphs of D3 with the problem I have identified and discussed above in Paragraph 70 and see little difference; D3 is directed to the same problem as the claimed invention.
Not only is D3 directed to the same problem as the present application, but it also solves the problem in a highly analogous manner. D3 presents a solution where the customer can have their goods shipped to a location that is not their home, nor their office, but instead shipped to a location that is convenient for them. Paragraph 0006 states:
“The place may be an office or an outlay of the shipper and it must be a place where is convenient for the user to travel to. It may be a shipper’s office that is near the user’s home, or near the user’s office. It may also be a place that is along and near the route the user travels daily, e.g. the route the user travels to and from work every day, so that the user can pass by the location and pick the user’s order up conveniently.”
D3 goes on to provide further details at Paragraph 0044 of their system that allows a user to purchase goods online and have them sent to a pickup point that is close to the user’s commute to/from work. D3 is clear on the benefit:
“This going to and coming back from work commuting is the daily “must do” most people repeat every day. Ability to exploit such a highly routine human behavior translates into economic efficiencies. A delivery model that utilizes this routine human behavior by arranging for the goods a user has ordered to be shipped to places near the user’s home or office, or to places the user passes by regularly or frequently so that the user can pick it up during the user’s routine traveling makes commercial sense.”
In terms of the disclosed embodiment, Paragraph 0051 explains that having made a purchase online (type (ii) goods as claimed), the customer is able to enter their commuting route: “the user may enter identifiers to define a beginning and an end of the user's commuting route”.
Various automated route analysis methods are presented including most relevantly at Paragraph 0075 the calculation of a ‘least travel time route’ between the start and end locations selected by the user. The system then identifies delivery locations around the route. In one embodiment the user is able to select a “channel” away from the least travel time route that they are willing to travel to pick up their good. The system presents available delivery locations to the user. The user then selects their preferred pick-up location.
It is important to note that the ‘least travel time route’ refers to the route created by the system between the user’s start and end entry points. The least travel time route does not refer to the route nor the distance/time required for the user to deviate from their route in order to visit the pick-up location. Aside from a visual cue as demonstrated in Figure 10, it does not appear that the user is presented with any travel time information nor any additional route guidance to the pick up location.
The applicant’s submissions make a number of arguments as to the disclosure and importance of D3. In the interest of brevity, I will refer to the closing submission on this matter, at Paragraph 111 the applicant submissions states:
“D3 does not teach or suggest any step involving calculating a pick up location providing the least deviation from a route, or even more generally calculating the deviation from a route for each of a group of potential pick up locations. D3 instead more broadly teaches the identification of all locations falling within a specified area so that a set of locations can be presented to the user.”
Per may analysis of D3 above, I agree that D3 does not teach calculating a pick up location providing the least deviation from a user’s route.
Discussion of D1 US2003/0177072)
I found D3 interesting in that it was directed to the applicant’s solution of providing the user with a pickup location conveniently located to their commute. I find D1 interesting as it presents many aspects of the claimed invention’s “modified local outlet”. D1 is directed to an internet-based grocery ordering system and method for providing drive through pickup of groceries ordered online. Paragraph 0014 provides a convenient summary of the invention and the problem D1 attempts to address:
“The present invention has been designed to eliminate the inefficiencies associated with the weekly re-stocking trip to the supermarket. By integrating the benefits of customized online ordering with true drive through (without having to exit one's vehicle) express market pick-up store, the present invention provides an integrated fulfilment system created to deliver value and superior service to today's highly mobile and time starved consumers. The system provides graphical representations of the items available for purchase, enabling purchasers to judge product item size.”
D1 discloses customers purchasing their groceries online and selecting the specific drive through express market pick-up store. At Paragraph 0020:
“The system allows family shoppers to pick up their weekly stock-up groceries ordered online in less than 3 minutes in an exemplary embodiment, in their neighborhoods, without leaving the car. The system provides customers with control and flexibility on what they order, how and when they pay, and where and when their grocery orders are fulfilled.”
and at Paragraph 0021:
“At the system website customers designate the specific drive-through express market pick-up store where they will pick up their orders; select a convenient four-hour pick-up time window; fill their shopping carts; and place their orders online.”
Paragraph 0026 explains that when ordering groceries, the customer can search for and select a pick-up store from which they then attend to pick up their order:
“…customers accessing said database can search for and select for purchase grocery items and can search for and select one or more drive through pick-up stores and dates and times for customer pick-up of grocery orders placed through said website, … and the designated drive through pick-up store location specified by the customer in said order, delivering grocery product orders from said fulfillment centers to the drive-through pick-up store location(s) designated by the ordering customer in advance of said customer's designated pick-up date and time.”
The mechanism by which customers can select a pick-up location is disclosed in Paragraph 0077 and Figures 4 – 6 that explains the user can search for a store by entering their zip code, city, county, or state:
“The system provides a unique feature in that because of the customers can find a store by entering their zip code, city, county or state. The system offers daily pick-up schedules, including weekends, at all express market pick-up store locations.”
After being presented with the available pick-up locations, Paragraph 0075 explains that the customer can select one of the locations as the pick-up point for their order.
In terms of the products that can be ordered and picked up, Paragraph 0066 discloses the user purchasing their weekly groceries. I consider these are equivalent to the (ii) goods that are ordered online by the customer. In addition, Paragraph 0081 discloses that customers can make additional last-minute purchases on site while their order is loaded into their vehicle. I consider these are equivalent to the (i) goods which are not ordered in advance of the pickup but are available for purchase at the modified local outlet.
The disclosure of D1 is consistent with the applicant’s discussion of the prior art in the background section of the application. D1 teaches the customer manually searching for and then selecting a pick-up point for their order and there is no motivation from within D1 to suggest to the reader alternative approaches to selecting a pickup point. I consider D1 to simply disclose the prior art in which the applicant states there is a problem that the applicant is attempting to address.
Discussion of the person skilled in the art and common general knowledge in the art
In general, the skilled person or addressee is the person who works in the art or science with which the invention is connected. He or she is a person, or team, likely to have a practical interest in the subject matter of the invention. While the skilled person may be assumed to be well versed in the relevant art, such a person must be taken to be non-inventive. (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [ 2000] FCA 980 at [71]- [72]; 49 IPR 225 at [71] -[72] referring to Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242 and General Tire (supra) at 485; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 293).
There has been no discussion during the examination process nor in the applicant’s submission regarding the person skilled in the art. I expect this is largely because it is not a contentious topic. For completeness I consider the person skilled in the art to be a team working in the field of online eCommerce systems with experience and expertise in logistics and goods delivery.
The subject of the common general knowledge in the art (CGK) has arisen during the extended examination process; however this does not appear to be in contention at this stage. The only comment I will make is that no evidence has been presented either during examination or in the applicant’s submissions as to what constitutes the CGK. It is considered prima facie reasonable to consider the background section of the application plus the discussion of the prior art and background to the invention provided by D1 and D3 to be part of the CGK in the art. Of particular relevance is that there is no indication from these documents that the problem the applicant is addressing is known and there is also no disclosure that would motivate the person skilled in the art to depart from the solutions existing in these documents.
Could the person skilled in the art be reasonably expected to have combined the disclosures of D3 and D1 and arrive at the claimed invention?
D3 is directed to overcoming the same problem as the applicant and shares some of the route planning elements and modified local outlets. D1 teaches many aspects of how modified outlets operate and how users order goods. Neither document, nor the CGK, teaches automatically calculating the selected modified local outlet to be a collection point that creates the least deviation from a route input by the customer on their communication device. I do not consider the person skilled in the art would be reasonably expected to have arrived at the claimed invention.
Conclusion
Claims 1 - 21 are inventive in the light of D3 and D1. However none of the claims are for a manner of manufacture. In addition, I see no material in the application that could be made the subject of a claim so as to result in that claim being for a manner of manufacture. I therefore refuse the application.
Mr Kevin Restrick
Delegate of the Commissioner of Patents