Dropbox, Inc.
[2021] APO 26
•30 June 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dropbox, Inc. [2021] APO 26
Patent Application: 2017385025
Title:Creating Projects In A Content Management System
Patent Applicant: Dropbox, Inc.
Delegate: M. G. Kraefft
Decision Date: 30 June 2021
Hearing Date: Written submissions filed on 3 May 2021.
Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – managing projects and project data through content management system – no unusual technical effect in system or in system carrying out method – application refused.
Representation: Patent attorney for the applicant: FPA Patent Attorneys.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017385025
Title:Creating Projects In A Content Management System
Patent Applicant: Dropbox, Inc.
Date of Decision: 30 June 2021
DECISION
The claims of the present application, as proposed to be amended, do not define a manner of manufacture. Moreover, there is nothing of substance in the body of the specification to overcome this finding.
The application is refused.
REASONS FOR DECISION
BACKGROUND
Dropbox, Inc. (“the applicant”) filed patent application 2017385025 as an international application under the Patent Cooperation Treaty (“PCT”) on 12 November 2017. The application is based on three US applications, the earliest of which was filed on 29 December 2016 (“the priority date”).
The application has been subjected to five examination reports. Throughout the examination history of the application, the examiner has maintained that the claims, including claims as proposed to be amended, do not define a manner of manufacture.
On 26 November 2020, the applicant requested to be heard.
While the final date for acceptance of the application was 28 November 2020, patent sub-regulation 13.4(1)(g) may be available to extend the time for gaining acceptance to 3 months from the date of the present decision.
SPECIFICATION
The alleged invention relates to software applications for project management. The specification indicates that, many times, several different software applications are required to manage the various tasks, document types, schedules, communications, and other project related activities and files. Using these existing systems to manage a project can be difficult to learn, burdensome to use, and time consuming for the user.
The alleged invention involves managing projects using references between projects and project items. Project items may be synchronised content items, collaborative content items, other projects, folders, tasks or user accounts. A content management system can create a project identifier for managing data and/or people associated with a project.
When a project is selected by a user, the content management system can generate a project view that presents various project items associated with the project in a graphical user interface (“GUI”). A project view can provide access to many different types of content items that may be stored in many different locations while simultaneously providing information about the users associated with a project and what actions these users have performed in relation to project items.
The system also involves monitoring user behaviour and automatically suggesting project affiliations amongst users.
The specification, as most recently proposed to be amended on 23 November 2020, ends with 18 claims. Claims 1, 11 and 15 are independent claims. Claim 1 reads as follows.
1.A computer-implemented method comprising:
storing, in a content management system, a first content item at a first location associated with a first user account, the first location internal to the content management system;
receiving, by the content management system, a request to create a first project, the request specifying the first content item as a project item for the first project; and
in response to receiving the request, generating the first project with project data associated with the first project, the project data associated with the first project including:
a first reference to the first content item, wherein the first reference to the first content item refers to the first location at which the first content item is stored and wherein the first reference to the first content item provides access to the first content item, and
the first user account as a member of the first project;
monitoring, by the content management system, user behavior with respect to one or more content items managed by the content management system;
in response to the monitoring, recommending, by the content management system, an affiliation between a second content item and the first project, the second content item stored at a second location external to the content management system; and
upon receiving an approval to create an affiliation between the first project and the second content item, adding to the project data associated with the first project a second reference to the second content item, wherein the second reference to the second content item refers to the second location at which the second content item is stored and wherein the second reference to the second content item provides access to the second content item.
Claim 11 is directed to a non-transitory computer-readable medium including one or more instructions that, when executed by a computing system, cause the computing system to perform the operations like those of claim 1.
Claim 15 is directed to a content management system comprising one or more processors and a non-transitory computer-readable medium like that of claim 11.
APPLICABLE LAW
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act. The application was filed after 15 April 2013.
Thus, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
Section 18 of the Patents Act 1990 relevantly provides that:-
(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 …
CASE LAW
The principles of law in respect to manner of manufacture, arising from the High Court decisions in National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, and D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, are well-documented in previous office decisions. The authorisation of a case-by-case methodology would also be apparent from the High Court decisions.
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
Moreover at [98]:-
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
In Research Affiliates LLC v Commissioner of Patents (“Research Affiliates”), [2014] FCAFC 150, the Full Court of the Federal Court noted a distinction between mere implementation of an abstract idea in a computer and implementation of the idea in a computer that created an improvement in the computer. At [103]:-
“… there is a distinction, between mere implementation of an abstract idea in a computer and implementation of an abstract idea in a computer that creates an improvement in the computer”.
Moreover, at [114] of Research Affiliates:-
“The invention set out in the specification is directed to the index itself. The method of the invention is not one that has any artificial or patentable effect other than the implementation of a scheme, which happens to use a computer to effect that implementation. There is no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors.”
In also discussing the requirement for the contribution to be technical, the Full Court in RPL stated as follows, amongst other things, at [99]:-
·“It is necessary to ascertain whether the contribution to the claimed invention is technical in nature …
·One consideration is whether the invention solves a ‘technical’ problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
·Does the claimed method merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea? …”
SUBMISSIONS
The applicant provided a discussion of the relevant issues in this case, of the background art, and of parts of the body of the specification and the claims pertaining to the alleged invention. In then responding to the latest examination report, the applicant provided a convenient summary to support submissions that the substance of the claimed invention was technical in nature.
The applicant stated that, when the claims are properly construed based on established principles, it becomes clear that the claimed invention is directed to a new and improved content management system, which in itself is computer technology and not a business method or mere scheme. The claimed content management system uses references between a project and content items associated with the project. Further, the content management system is capable of including content items in a project folder, maintained by the content management system, that are stored externally to the content management system. The system can also automatically recommend content items for projects in a content management system based on monitored user behaviour when interacting with the content management system.[1]
[1] Applicant’s submissions [26].
The applicant thus submitted that the ability to provide users with a single platform by which they can access content items stored on different devices is a technological innovation. Furthermore, the applicant stated that the predictive functionality that automatically identifies and recommends content items for inclusion in a specific project based on remote monitoring of user behaviour with respect to content items managed by the content management system cannot be construed as anything other than a technological innovation.[2]
[2] Ibid [30] and [31].
In following the technological innovation theme, the applicant further emphasised that the above characteristics of the claimed invention were technical in nature and were not known when included in a content management system and made a contribution to the state of the art. The applicant asserted that the use of references, in the specific way disclosed and claimed in the present application, was not known at the relevant time and further that it was not known to use such references to associate content items to projects maintained by content management systems. Similarly, the applicant further submitted that there was no indication in the state of the art of on-line or cloud content management systems being able to access content items that were not synchronised or uploaded or saved on the content management system.
In terms of the alleged invention solving a technical problem, the applicant mentioned the use of reference links requiring fewer memory and processing resources to store and manage project data as there is no need to store copies of content items in multiple locations. The applicant concluded that reducing the storage requirements of a content management system, allowing the addition of incompatible content items to a project via the use of references to external content items, and reducing the cognitive burden on users by intelligently identifying suitable content items amounted to solutions to technical problems, constituted technical subject matter and/or resulted in improvements in the computer.
SUBSTANCE OF INVENTION
The content management system is central to the claimed invention in the present case. It is the data storer, receiver, generator and recommender of several elements related to a project. At the broadest level, the system stores a first content item associated with a user account. The system receives a request to create a project, with the request specifying the first content item as a project item for the project. In response, the system generates the project with project data. The project data includes reference to where the first content item is stored and accessed, and with the user account being a member of the project.
The content management system also monitors user behaviour with respect to one or more content items managed by the system. In response, the system recommends an affiliation between a second content item and the project. Upon receiving an approval to create an affiliation, a reference, to where the second content item is stored and accessed, is added to the project data.
The body of the specification additionally describes several GUIs enabling user interactions with the system to obtain or provide several types of information related to one or more projects. Content items are one type of information. They may be quite variable in terms of project information and in terms of formats. For example, content items may include digital data, documents, collaborative content items, text files, audio files, image files, video files, web pages, executable files, binary files, and placeholder files that reference other content items. The content items can also include collections for grouping content items together with different behaviours, such as folders, playlists, and albums.[3]
[3] Specification [0037].
The specification discloses and illustrates GUIs for presenting a project list, for presenting a project view, for adding a link to a project, for adding a content item to a project, for creating a new project, for presenting suggested content for a project, for presenting pinned content and/or related projects, and for suggesting content items and/or project members for a selected project.
Clearly, the substance of the alleged invention broadly resides in the presentation, input/output and management of project data. The latter aspect is also clearly highlighted in the specification.[4]
[4] Ibid [0029].
In submissions, the applicant made much of the content management system enabling the creation, addition or accessibility of content items, and the like, by multiple clients independently of storage location, and with appropriate reference links as required. The applicant also noted the system efficiencies of managing project data using links, particularly the lack of a need to make copies of project data. Moreover, the applicant highlighted content management systems as a specific area of technology with specific, complex technical problems and solutions. These included issues with synchronising documents, allowing multiple users to access and edit content items simultaneously. Furthermore, the applicant noted the automatic suggestion of project affiliations by the system.
There would appear to be little doubt that the above processes involving the content management system are laudable. The advantages of working with content items independent of storage location, of users working on content items synchronously and simultaneously, and the presentation of automated content or project suggestions would be plain. In a narrower context, I would accept this is where the substance of the alleged invention may be. In the present case, the issue then is with the disclosure of the computer technology to do this.
TECHNICAL DISCLOSURE
Figure 1A, and the associated description, relates to the interaction of the content management system with client devices and other content and/or service providers through a network. Figure 1B illustrates the sub-modules within a particular module of the content management system. Figure 2 further illustrates hardware and software components of the content management system and of a client device. In a broad sense, the configuration would have been generic in computing at the relevant time and is characteristic only by its applicability in specific ways to project data management. This is reinforced by the descriptive content of the specification.
At the outset, the specification describes Figure 1A as showing an example system configuration wherein electronic devices communicate via a network for purposes of exchanging content and other data. While the illustrated example may be configured for wide area networks, the specification acknowledges the applicability of the principles to a range of network configurations that facilitate the intercommunication of electronic devices. For example, the componentry of the system may be implemented in a localised or distributed fashion in a network.[5] The descriptive content throughout is not particularly technical in this respect. The system would have been easily reconfigurable, as required, at the relevant time. The description related to Figures 1B and 2 is similarly abstract, in the main, in respect to technical content.
[5] Ibid [0031].
Moreover, the integration of project management functionality into fewer software applications, and managing project data using links or pointers, instead of retaining multiple copies of data, is described in the most general of terms as though such functionality were given.[6] The lesser use of computing resources in using links or pointers to data, as distinct from duplicated storage, would also have been entirely expected in generic computing systems that used links or pointers to data in different storage locations at the relevant time. It may also be said there is no unusual technical effect as to whether content items are created, stored or sourced internally or externally of the content management system (my emphasis, see Research Affiliates at [108]). Similarly, there is no specific or unusual technical content in the specification’s disclosure regarding the enablement of document synchronisation and collaborative and simultaneous access to data for multiple clients.[7] The same may be said of automated suggestions of project affiliations based on user behaviour, and subsequent approval of suggestions.[8] Furthermore, the latter arrangement would appear to be similar to systems that, for example, pushed promotional material to users based on their behaviour online at the relevant time.
[6] Ibid [0030] and [0040].
[7] Ibid [0041], [0042] and [0045] – [0048].
[8] Ibid [00118], [00123], [00124], [00125], [00128], [00133], [00135] and [00136].
The disclosed GUIs are merely illustrative of means to facilitate the above project data management for or by users.
The Federal Court has distinguished between inventions characterised as apparatus of a particular construction and general-purpose devices. In Aristocrat Technologies Australia Pty Limited v Commissioner of Patents, [2020] FCA 778, Burley J considered specific functionalities for gameplay on electronic gaming machines. At [98]:-
“… the invention may be characterised as a machine of a particular construction which implements a gaming function. It yields a practical and useful result. Simply put, the machine that is the subject of the claims is built to allow people to play games on it. That is its only purpose. In this regard, the physical and virtual features of the display, reels, credit input mechanism, gameplay mechanism and game controller combine to produce the invention. It is a device of a specific character.”
In the present case, the content management system, or any other network apparatus, could not be said to be such a device. The system is not of a particular configuration interacting with particular software. Rather, the system is in the nature of reconfigurable hardware and software modules suitable for a range of project-related data management. The content management system fits more with general-purpose computing devices as in Research Affiliates and RPL.
It may also be noted that the specification principally concludes with describing and illustrating exemplary possible system embodiments. One embodiment is described as a conventional system bus computing system architecture. The other is an alternative, and also conventional, chipset architecture.[9]
[9] Ibid [00179], [00180] and [00184].
In summary, the present case is concerned with the application of standard computer processing to the field of project data management. That places the alleged invention solely in the realm of business processes. Notably the courts have stated that there is a distinction between a technological innovation which is patentable and a business innovation which is not.[10]
[10] Research Affiliates at [94] and RPL at [100]
CONCLUSION
I conclude the claims of the present application, as proposed to be amended, do not define a manner of manufacture. Moreover, I find there is nothing of substance in the body of the specification to overcome this finding.
It is appropriate that the application be refused.
M. G. Kraefft
Delegate of the Commissioner of Patents
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