DEI GRATIA PTY LTD
[2021] APO 14
•16 March 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
DEI GRATIA PTY LTD [2021] APO 14
Patent Application: 2019200581
Title:LAST MILE LOGISTICS
Patent Applicant: DEI GRATIA PTY LTD
Delegate:Mr Kevin Restrick
Decision Date: 16 March 2021
Hearing Date: Written submissions filed on 10 December 2020
Catchwords: PATENTS – standard patent – examiner objection – collocation – inventive step – combination, mosaic, of two documents and common general knowledge – claims allowable in light of examiner citations – application returned to examination to consider additional citation and patentable subject matter – final date for acceptance extended
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: 16 March 2021
DECISION
The claims of the application are not directed to a collocation and are inventive over the prior art presented during examination. The application is to be returned to examination to consider an inventive step objection in light of a further citation identified whilst preparing this decision. Consideration should also be given by examination to whether the claimed invention is directed to a computer implemented scheme or business method. The period to gain acceptance is to be extended by six months from the date of this decision so that an examination report can issue and the applicant has an opportunity to respond.
REASONS FOR DECISION
Background
1.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.
2.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. The most recent six 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.
3.The application has been the subject of three examination reports. The examiner has continued to maintain the lack of inventive step objection as well as the objection the claims are not to a manner of manufacture because the claimed invention is a collocation. No amendments have been proposed to the filed specification.
4.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 not to a manner of manufacture and lacked an inventive step.
5.On 13 November 2020 the Commissioner wrote to the Applicant indicating that the hearing would be conducted by way of written submissions due to be filed by 11 December 2020. The applicant filed the submissions in this regard on 10 December 2020 (“the applicant’s submissions”).
6.The final date for acceptance of the application is 25 March 2021, however patent subregulation 13.4(1)(g) may be available to extend the time for gaining acceptance.
The invention as described
7.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.
8.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 the 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 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 system. 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.
9.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.
10.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.
11.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.
12.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.
13.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 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
14.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 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. I have reproduced claim 1 – the method claim – below and this claim will form the basis for my considerations. Having considered claim 1, and if necessary, I will then turn my attention to the subsequent independent claims and dependent claims.
15.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.
16.There are no Section 40 matters outstanding from the examination process and neither does the applicant present any such issues in their submissions. However, for the purpose of this decision I do want to dwell on a number of features and give them some consideration.
17.The term “modified local outlet” doesn’t appear to have a plain meaning insofar as the term is not included in any dictionary or appears in the results of an internet searches for that term. Consistent with the rules of construction endorsed in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224, I can use the body of the specification to qualify or define what this term means. Whilst there is no dictionary definition as such, page 12 lines 9 – 20 describes:
“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.”
Hence I 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.
18.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.
19.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.
20.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.
21.There is no indication of how the customers decides to pick up their order or have it delivered. However, I don’t 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
22.As noted, there are two outstanding objections; whether the claimed invention involves an inventive step and whether the claimed invention is a collocation.
23.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 and most recently with D2. The full citation of D1 and D2 is:
D1: US 2003/0177072 A1 (BARED) 18 September 2003
D2: US 2003/0036848 A1 (SHEHA et al) 20 February 2003
and I will continue to refer to these documents as D1 and D2 through this decision.
24.The inventive step objection in the present application is a mosaic, a combination, of D2 with the teachings of D1. In summary, D2 teaches being able to select a point of interest in a navigation system whilst D1 teaches grocery ordering and drive-through pickup. The objection argues that the system and method of D2 can be applied to any point of interest and that the particular of point of interest selected by the user is arbitrary in nature and that D1 teaches a relevant grocery pickup business that could be one of the choices the user can select in D2. I will discuss each of these documents in more detail later in this decision.
25.In addition, an objection to the claims not being a manner of manufacture because they are directed to a collocation has also been maintained. The examiner’s objection is that the claimed is directed to a number of known schemes for selling particular categories of products. The examiner considered all the individual schemes are known and did not consider there to be a new or improved result arising from any working inter-relationship between these schemes.
The submissions
26.The applicant cited the relevant law from the same cases that I refer to below. There appears to be nothing contentious about the appropriate principles of law.
27.The submission spends time discussing the disclosure of D2 and in particular why the person skilled in the art would not consider the document relevant when investigating problems related to logistics and good delivery. The submissions provide some commentary around the examination process and the examiner’s inventive step objections. Whilst this material is interesting, I will be starting from first principles when I consider whether the claimed invention involves an inventive step.
28.Having reviewed the examination process and the submissions it is quite clear that the outstanding issue for this decision revolves around the teachings of D1 and D2 and whether the person skilled in the art would be motivated in light of the problem to be solved to use the disclosures in a logistics and goods delivery system.
Applicable law for inventive step
29.The request for examination of the application was filed 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”).
30.The standard of proof that applies 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 pursuant to subsection 49(2).
31.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.”
32.The question of obviousness has been extensively considered by the courts. 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.”
33.The concept of “a matter of routine” was approved by the High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]-[53] (Aktiebolaget Hässle), 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]?”
34.In situations where the invention may lie in a combination of features, it is appropriate to consider whether the combination is obvious, not whether each of the separate integers of the combination is 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
35.The test outlined in Wellcome Foundation is demonstrative of the approach frequently taken to assess lack of inventive step or obviousness, being the so called problem-solution approach. This is the approach taken during examination, addressed in the applicant’s submission, and which I will use in determining the inventiveness of the claims below.
The Problem
36.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.”
37.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.
38.I have discussed in detail at Paragraph 8 – 10 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 customers 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.
39.During the examination process there has been considerable discussion between the examiner the applicant as to the problem to be overcome and hence the motivation to modify and/or combine the teachings of D1 and D2. My identification of the problem appears consistent with the applicant’s submissions at Paragraph 13:
“The applicant for the present specification identifies shortcomings with each of these methods, which in particular include issues with the purchaser not being home to accept ‘to your door’ delivery; and the purchaser being required to make a special trip to pick up goods for ‘near to your door’ delivery.”
Inventive Step with regards to D1 and D2
Discussion of D1 (US 2003/0177072)
40.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.”
41.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.
42.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.
43.The disclosure of D1 is consistent with the applicant’s discussion of the prior art in the background section of the application. D1 clearly 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 D2 (US 2003/0036848)
44.Document D2 is directed to a system and method for searching and retrieving location information associated with one or more points of interests, whereby the search criteria are dependent upon the location of a point of interest (POI) with respect to the real-time position of the user. The application of the method is for use with navigational systems and specifically in-vehicle navigation devices. Paragraph 0009 provides a convenient summary of the invention and the benefits D2 attempts to provide:
“A need exists for users to have the ability to rate and conduct a spatial search for all POI information, such as golf courses, restaurants, home addresses, hotels, hair salons, bowling allies, etc., and items associates with various POIs based on the users' current position information and utilizing various search metric queries. These search metric queries can include, for example, searching based on one's own personally highest-rated choices, searching for ratings compiled by various other users, such as people with a common interest about a particular POI, or searching based on an aggregate average user rating response. Thus, there is a need for providing these spatial searches and rating capabilities based on various metrics, all of which is configurable by the user. These spatial searches and ratings are based on the knowledge of the user's position information and can provide the means to navigate to such desired POI's location, since the user may require the best travel route possible from the user's current position. Routes can be calculated using real-time traffic information and the highest speed-rated street or highway with the fewest stops to determine the shortest possible travel route.”
45.The body of the citation discloses a large range of embodiments and applications related to its broad teachings of providing a user with a system to identify, search and navigate to ranked POIs as part of a navigation system. A consistent teaching of D2 is that fact that the POIs have been ranked, rated, or scored in some way and the user can set search queries for a category of POI that has a certain ranking. Each of the “objects of the present invention” section of D2, Paragraph 0010 – 0035, explain how the system operates in respect to the ranked POIs. For example, Paragraph 0010:
“The search method incorporates a categorical rating metrics search engine for providing the searcher with an indexed response of the highest rated POI information within the spatial search zone based on the user's search criteria. The POI ratings are based on various quantitative factors or user's experiences, such as decor, service, food, location, etc., or based on various pricing structures, such as the estimated cost of the POI service, such as an average restaurant meal price or typical amusement park gate fee.”
and Paragraph 0011:
“…provide a method for allowing a user to rate POIs based on various quality factors, such as decor, service, food, price, location, etc.”
and at Paragraph 0012:
“…provide a plurality of methods for searching various items associated with various POIs within a given search zone, such as a radial search, boxed boundary search, or a zip code or city search, based on position information. The search method can incorporate various rating search methods, such as a categorical rating metrics search for providing the searcher with an indexed response of the highest rated PO Is within a given area that are associated with a specific searched item.”
and at paragraph 0013:
“In one embodiment, a user wanting to find the highest rated stores (i.e., POIs) in a given area that carry a particular item that he or she wishes to purchase or view may want the search to be based on his or her current position information, such as by utilizing a navigational device or manually inputted address information, and possibly determine if the specific rated stores have the item in stock and how many are remaining.”
and at Paragraph 0024:
“… to provide geo-triggered notifications to a navigational device based on the stored POI's position information and the navigational device's position. In one embodiment, a user on travel may want to plan the trip by using various rating searches or address information to identify various POIs, such as a historical landmark, famous restaurant, etc.”
a final example from the invention summary section is of more interest to the application, at Paragraph 0029:
“…provide a method of indexing desired POIs based on their location relative to a pre-defined route and the user's current position information provided by a navigational device, such that POIs that are closer to the pre-defined route are given a higher priority index than POIs that are off the current pre-defined route and would require a considerable detour from the pre-defined route, or near the pre-defined route, but that have been passed by the navigational device.”
46.The example given in Paragraph 0029, and which follows this extract, is directed to a user following a predefined route from point A to point B and wants to find the highest rated restaurant in the nearby area. The system of D2 alerts the user to the restaurant that meets the user’s search query and that is located nearest the route. An extension of this example is provided in Paragraph 0030 where the user is travelling a route and has selected a number of POIs they would like to visit whilst following the route. The system determines the optimal order in which to visit the POIs based on their location and the start/end points of the route.
47.It is apparent from the background to the invention and the summary of the invention that D2 is directed to improvements to in-car navigation systems. The applicant’s submissions characterise the system of D2 as a “journey planner tool” and a “vacation journey planner”. Whilst I don’t necessarily agree with the vacation aspect of the moniker, I do agree that D2 is directed to navigation systems and specifically to identifying pre-ranked POIs that the user can select through some search criteria. There is no information within D2 to indicate that it is directed in any way to the field of logistics and goods delivery and there is no disclosure that relates to the field of automatically determining the location to deliver products that have been ordered online. I cannot identify any teaching in D2 that would mean the document was relevant to the problem being addressed in the application.
48.There was discussion during examination and in the applicant’s submissions regarding the embodiment of Paragraph 0029 and which also appears with more information at Paragraph 0076. This embodiment of D2 is directed to identifying POIs closest to a route and thus appears might be relevant. Paragraph 76 provides a worked example of a user wanting to find restaurant whilst travelling a route:
“In this embodiment, a user has a defined route from a start position 1301 to an end position 1302, and, while navigating on the predefined route 1303, the user may want to find the highest-rated restaurant in the nearby area 1300 and closest to the user's current position minimizing the drive time off the route.”
49.Further to my comments above, once again this teaching is to an improved in-car navigation system and there is no suggestion or motivation that the system could be applied to a logistics and goods delivery system. Notwithstanding this point, I find the embodiment quite interesting from a technical perspective because the restaurant that is selected by the navigation system is selected based on a calculation that takes into account the customer reviews of the restaurants as well as the distance from the route. The document is silent as to how it indexes the restaurants based on user reviews, neither does it discuss the weightings it provides to restaurants close to or far from the route, nor how it performs its calculations to select the restaurant that it recommends. Hence it is difficult to fully understand what and how the navigation system is operating. However, what is shown in the example in Paragraph 76 and Figures 12 and 13 is that the restaurant with the lower customer reviews (‘Sandpiper’s seafood house’, item 1305 in Figure 13) is picked because it located ahead of the user’s route; whereas the restaurant with the higher customer reviews (‘Angie’s seafood restaurant’, item 1306 in Figure 13) is behind the user and so not recommended by the system because the navigation system’s algorithms scores it lower. It is apparent that depending on how good the customer reviews are will directly impact how the restaurants are ranked. Thus, it is quite feasible that the navigation system’s top ranked restaurant has the worst reviews but is close to the route. Similarly, one could imagine driving past a “bad” restaurant that was directly on the route and turning off the route to get to a “superior” restaurant that had vastly better customer reviews but is located further away.
50.This is quite a significant difference to what the present invention is doing. The present invention is taking a user’s route and identifying the multiple modified local outlets that are located in the vicinity of the user’s route. The system of the present invention then identifies which of the modified local outlets that creates the least deviation from a route.
51.Compare this to D2. The system of D2 can send the user to a POI that might not be the closest to the route. The user of D2 will be sent to the POI that has the highest score from the calculation it does, one factor in the calculation is the proximity to the route. The concept of customer reviews and ranking of POIs would need to be removed from the teaching of D2 in order to apply the idea of identifying a POI that creates the least deviation from a route as per the claimed invention. User reviews and customer rankings of POIs, and being able to search and set a journey by them, is so fundamental to D2 that I don’t consider the person skilled in the art would ever be motivated to adapt D2 in such a way. Therefore, in addition to there being no suggestion in D2 that it’s teachings can be applied to a logistics system, I do not consider the technical solution presented by D2 to be a viable solution to the problem being addressed by the present application.
Discussion of the person skilled in the art and common general knowledge in the art
52.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).
53.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.
54.The subject of the common general knowledge in the art (CGK) did arise during examination and in the applicant’s submissions and the topic does warrant consideration.
55.Emmett J considered common general knowledge in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112]:
“The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled worker’s mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course.”
And as discussed in Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCA 163 at [104] common general knowledge is established by evidence:
“it is necessary to establish common general knowledge by appropriate evidence. Evidence that consists of generalised and sweeping statements of opinion or recollection, unsupported by secondary material such as text books, trade journals and technical publications, should be treated with caution and given little weight.”
56.The use of CGK arose in the examiner’s inventive step objection because there is no disclosure in either D1 or D2 of the following feature of claim 1:
“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 … and the (iii) goods that have been ordered directly by the customer over a communications network to the customer.”
This feature was considered to be part of the CGK and the examiner’s objection reads:
“Outlets that receive packages from unrelated businesses in order to provide them to the customer who actually ordered them are extremely well known in the art (e.g. providers of post office boxes).”
Whilst there was no evidence presented to establish (iii) goods are treated this way, my personal experience is that purchase and delivery of such goods to a specified destination is part of the CGK. There are no statements nor evidence from the applicant’s submissions to indicate this is not the case.
57.The question of CGK also arose in the applicant’s submissions regarding identification of the problem to be overcome and the motivation to adopt a particular solution. The submissions quote the AstraZeneca decision that I have provided above in Paragraph 36.I have addressed the issue in Paragraph 38 as to what is the problem to be overcome by reference to the CGK that is apparent from the background portion of the specification.
58.Finally, the CGK will have a role to play when considering the motivation to combine documents as part of the inventive step considerations in the paragraphs below. 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 D2 to be part of the CGK in the art. Of particular relevance is that there is no indication from these three 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 D1 and D2?
59.The consideration of whether the person skilled in the art could reasonably be expected to have combined two documents is part of the overall consideration of whether the claimed solution is obvious. Wellcome Foundation uses the test of whether one would arrive at the claimed invention as a matter of routine, Aktiebolaget Hässle refers to one being directly be led as a matter of course and Minnesota Mining & Manufacturing Co. refers to the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. Each of these approaches requires there to be some suggestion or motivation, either in the documents themselves or in the knowledge generally available to the person skilled in the art, to combine the disclosures of the documents. Put alternatively, and following the problem-solution approach, the issue here is what would the skilled worker have done given the problem?
60.In the absence of case law specifically directed to an inventive step objection based on a combination of two documents I refer to the Patents Manual of Practice and Procedure for guidance. Chapter 2.5.2.5.5A discusses combining prior art information in general:
“In determining whether the person skilled in the art could be reasonably expected to have combined two or more distinct pieces of information, examiners should focus on the problem faced by the skilled worker and whether, in light of that problem, there is a reasonable basis (or some motivation) for the skilled worker to combine the two disclosures.”
and Chapter 2.5.2.5.6 provides instruction on combining two documents:
“In order to establish lack of an inventive step based on a combination of documents, there must be some suggestion or motivation, either in the documents themselves or in the knowledge generally available to the person skilled in the art, to combine the disclosures of the documents.”
61.As discussed above, I consider D1 to be typical of the prior art of online ordering and drive-in collection. However, the document and its teachings is not directed to solving the applicant’s problem. In fact, the disclosure of D1 is precisely what the background section of the present application describes as being the problem and is directed at solving.
62.As discussed above the subject matter of document D2 is not directed to the applicant’s problem and neither does it teach any benefit that reads across to a logistics or good delivery process. There is no suggestion or motivation within the document to show how it could be relevant to the applicant’s problem. Furthermore, I do not believe that D2 teaches a technical solution that can be directly applied onto a logistics and goods delivery scheme to automatically identify a pick-up point that has the least deviation from a route.
63.In summary, I see no motivation in either of D1 or D2 or in the knowledge generally available to the person skilled in the art that would lead them as a matter of routine to combine the teachings of these two documents and as such I consider the invention defined by claim 1 to be inventive. Independent claims 13 and 18 are inventive for the same reasons whilst all the dependent claims add further features and hence are also inventive.
Applicable law and consideration for manner of manufacture (collocation)
64.The relevant legal test for a collocation is stated in British Celanese Ltd. v Courtaulds Ltd. [1935] RPC 171 (British Celenese):
“It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers.”
In a similar manner the High Court in Welch Perrin & Co Pty Ltd v Worrell [1961] HCA 91; (1961) 106 CLR 588 (Welch Perrin) stated:
“It was not seriously disputed that it is for a combination, in the sense that word bears in patent law. That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing.”
65.The applicant submits at [35]:
“We further reiterate that the claimed combination of features leads to a new or improved result, in that the method enables goods to be delivered to a destination different than that which would be provided by prior art methodologies. This is a new physical result obtained through the interaction of features claimed. It is not a collocation, it is a combination in the sense well understood within patent law.”
66.I agree with this submission. The claimed invention brings together the delivery of three types of goods into a single location determined through a novel and inventive process. Whilst the delivery of each of three types of goods is a separate activity, the bringing them together at a single automatically specified location for the purpose of providing them simultaneously to the customer is an interworking relationship and one that is new and improved over the prior art that has been presented during examination. The claimed invention is not a collocation.
Further outstanding issues
67.This decision is directed to the issues outstanding from the examination process. It is not appropriate to determine the outcome of this application at this stage if there are new issues to consider. Where new issues are identified then the application can be referred back to examination for consideration. This provides the applicant with an opportunity to respond.
68.The following document was identified whilst researching the field of technology for this decision:
D3: US 2004/0153370 A1 (YANG) 5 August 2004
Document D3 is in the same field as the present application and discloses a method and apparatus for facilitating selection of a pickup location by a user who is purchasing an item online. Of particular importance is that D3 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.”
69.D3 presents a solution where the customer can have their goods shipped to a location that is not their home, not 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.”
70.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 a route (Paragraph 0057). Figure 9 adds that the customer is able to select a ‘channel width’ boundary around the selected route that the customer is willing to deviate from in order to go to a pickup location. Various automated route analysis methods are presented including at Paragraph 0075 the calculation of a least travel time route which I consider to be directly relevant to the claimed “least deviation from the route”. I do recognise that D3 requires the user to select the pickup point that has been identified for them rather than it being automatically calculated and specified by the vendor’s website used to purchase the goods. However, I see little distinction between whether the user selects the closest pickup location or whether it is done for them. In fact page 13 lines 20 – 23 of the specification as filed reads:
“The customer can select, or the system can automatically designate, the logistics facility 10 from which to collect their order, or at which they can drop off their returned goods, which causes the least deviation from the entered route.”
It is apparent that automatically selecting for the user the most convenient point is not necessarily where the invention lies, it is with the steps that identify the most convenient pickup point based on a user’s route.
71.D3 is directed to overcoming the same problem as the applicant and has a solution that appears similar to the present application. The remaining features of claim 1, at least, appear to be part of the common general knowledge for example purchasing (i) goods and having (iii) goods delivered to a third-party pick-up point. Thus, it appears that claim 1, at least, is not inventive. The appropriate course of action is to refer this application back to examination where D3, and any other documents that can be located, can be considered in full. This approach also provides the applicant with an opportunity to respond and provide counter argument.
72.Having regard to recent developments in case law arising from various Federal Court decisions in the field of computer implemented inventions I recommend that consideration is also given during examination to whether the claimed invention is directed to patentable subject matter and not simply a computer implemented scheme or business method.
Conclusion
73.The claimed invention involves an inventive step over D1 and D2 cited in the examination report. Furthermore, the claimed invention is not a collocation.
74.Normally I would accept the patent request and complete specification relating to the application. In this instance I refer the application back to examination to consider an inventive step objection in light of D3 and any further documents that may be located. Consideration should also be given to whether the claimed invention is directed to a computer implemented scheme or business method. Following Reg 13.4(1)(g) and (3) I extend the period to gain acceptance by six months from the date of this decision so that an examination report can issue and the applicant has an opportunity to respond.
Mr Kevin Restrick
Delegate of the Commissioner of Patents
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