Facebook, Inc. - [2020] APO 19

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Facebook, Inc. [2020] APO 19

Patent Application: 2014209546

Title:Conversion tracking for installation of applications on mobile devices

Patent Applicant:                   Facebook, Inc.
Delegate:  K. Wagg
Decision Date:  21 April 2020
Hearing Date:  21 November 2018, further submissions filed on 5 December 2018 and 30 January 2019.

Catchwords: PATENTS – examiner objection – manner of manufacture – conversion tracking is an outcome enabled by the substance – substance of the invention – technical limitations in the architecture of apps have been overcome – allowability of the amendments to be considered by the examining section.

Counsel for the Applicant: Julian S. Cooke
Patent Attorney for the
Applicant:Paul J. Mahony of Cotters Patent and Trademark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014209546

Titles:Conversion tracking for installation of applications on mobile devices

Patent Applicant: Facebook, Inc.
Date of Decision: 21 April 2020
DECISION
I find that the manner of manufacture objection cannot be maintained in view of the proposed amendments. Furthermore, I direct the specification return to the examination section for examination of the amendments. The application has 3 months from the date of this decision to be accepted.
REASONS FOR DECISION
Background

Patent application number 2014209546 was filed by Facebook, Inc. on 22 January 2014. The earliest priority date claimed is 23 January 2013 based on US application 13/748,560.
The applicant requested expedited examination under the Global Patent Prosecution Highway on 31 August 2017 and sought leave to amend the specification. Consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to this case, including that the Commissioner must accept a patent request and specification if she is satisfied, on the balance of probabilities, that it meets the requirements of s 49. If she is not satisfied, then she may refuse the application.
A delegate of the Commissioner of Patents issued the First Examination Report on 7 September 2017. In that examination report, the examiner raised two objections: that the claims do not define a manner of manufacture; and that the claims do not involve an inventive step. The applicant responded with arguments and the Examiner maintained the objections in the second examination report of 31 January 2018. The applicant again responded with arguments. Then in the third report dated 14 May 2018, the examiner only maintained the objection that the claims failed to define a manner of manufacture. After a further response from the applicant and a fourth examination report, dated 8 August 2018, was issued maintaining the sole objection of manner of manufacture, the applicant filed a request to be heard on 23 August 2018. The applicant requested leave to amend the specification on 14 November 2018 and it was agreed that these would be considered at the hearing. A hearing was held in Sydney on 21 November 2018.
At the hearing, the Rokt cases[1] were discussed, and I allowed the applicant further time to file submissions in relation to them. The Federal court decision[2] on this case was handed down on 12 December 2018 and in view of this a Delegate of the Commissioner of Patents allowed the applicant until 1 February 2019 to file further submissions concerning that case. These were received on 30 January 2019.
[1] Rokt Pte Ltd [2016] APO 66; Rokt Pte Ltd [2016] APO 34.
[2] Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988.
The specification
The specification begins by outlining the field of the invention and states that:
“The present disclosure relates to conversion tracking, and in particular to tracking installations of native applications on mobile devices, in particular to a computer-implemented method.”[3]
[3] Specification at [0001].
This section is then followed by the background which provides more context and meaning to the field. More specifically, the field relates to the advertisement of applications (apps) within a social networking app and the specification notes that a problem exists where the advertisement takes the user to the app store for download:
“Often, an advertisement includes a link to download the client application for installation. However, users increasingly interact with content using mobile devices, which frequently use an application store or other program to manage retrieval and installation of applications on the mobile device.
Hence a user may access a link to download a client application from an advertisement using a mobile device, causing the client application to be installed via the application store. However, this installation through the application store does not provide information to the third-party system or advertiser promoting the application that the user interacted with the advertisement and subsequently installed the application. For example, a user may interact with an advertisement for a client on a mobile device, which subsequently accesses the application store of the mobile device, and elect not to install the application. Because the installation occurs through the application store, the third-party system or advertiser promoting the client application does not receive information whether the client application was installed on the mobile device.”[4]
[4] Specification at [0002]-[0003].
From this background, the problem the specification is proposing to address can be gleaned. It appears to operate in an online app environment, such as on a social media app. In the social media app a user is shown an advertisement for another app. If the user clicks on that advertisement they are taken to the app store. The app store is a “different entity” to the social media app, and it follows there is no way of knowing if the app, which was the subject of the advertisement, is downloaded or not by the user.
The specification refers to a client application as a downloadable application that runs on a mobile device and is unable to access cookies by stating that:
“The client application is a native application executed by an operating system of the mobile device, so the client application is unable to access cookies.”[5]
[5] Specification at [0004].
An application is said to be a “native” applications because it is built to run on a particular operating system, such as iOS™ or Android™. In the current specification, when an app is downloaded data containing a set of instructions is also downloaded:
“data comprising the client application includes one or more instructions from the social networking system that store an indication in a shared memory location of the mobile device that the client application was installed on the device.”[6]
[6] Ibid.
The above sentence makes it clear that in an embodiment of the current invention data is stored in a “shared memory location” using instructions from the social networking system, the data being an indication regarding the installation of a client application. After the above step, the information about the installation is fed back to the social networking system via a social networking application:
“A social networking application executing on the mobile device and associated with the social networking system retrieves the indication from the shared memory location that the client application was installed on the device.”[7]
[7] Ibid.
Further information about the user is transmitted:
“User identifying information used by the social networking application and the indication the client application was installed are transmitted to the social networking system by the social networking application.”[8]
[8] Ibid.
The following pages 2-5 provide more detailed embodiments of what I have outlined above, and wherein user information can be anonymized[9], or a user profile associated with user identification information is maintained by an online system[10]. A social network is simply a specific example of an “online system”.
[9] Specification at [0005].
[10] Specification at [0007].
Detailed description
The specification then goes on to describe the invention using figures. I have repeated FIG. 1A below:
FIG 1A outlines a system environment for the user to receive advertisements (115) in a client application (110).[11] The display of an advertisement occurs on a mobile device (105) were with a social networking application (120) and through the social networking wherein user ID information (125) is shared between the client application and social networking application, and further shared by a client application with an external social networking system.[12] The social networking system (130) interacts with the advertiser (135) and ad exchange (140) and can deliver targeted ads based on user information.[13] The mobile device (105) is said to include a personal digital assistant, a mobile telephone, a smart-phone or other device without using cookies describing user actions.[14] I note that in the above embodiment, the client application communicates directly with the social networking system rather than through the social networking application, which differs from the claimed invention.
[11] Specification [0034]-[0037] and FIG 1A.
[12] Ibid.
[13] Ibid.
[14] Specification at [0052].
Below is FIG 4 of the specification. Figure 4 is a flow chart of an embodiment for retrieving targeted advertisements (415) from an advertiser. After the advertisement is presented (420), the user interacts with the advertisement (425). Then if the interaction led to the user installing an application which was the subject of the advertisement (430) then a relevant indication is stored in the shared memory (435). This indication is then retrieved and transmitted.[15]
[15] Specification at [0078]-[0085] and FIG 4/4.
The claims
The specification as proposed to be amended on 14 November 2018 contains 18 claims. Claims 1, 4 and 17 are independent. I have repeated claim 1 below with the amendments indicated.
A method comprising:
receiving, from an online system, data comprising: (i) a client application for installation as a native application for execution by an operating system of a mobile device on which native applications are unable to access cookies, and (ii) one or more instructions from the online system that, when executed, writes data to a shared memory location included in the mobile device indicating the client application was installed on the mobile device;
executing the data comprising the client application to install the client application as a native application on the mobile device;
responsive to installing the client application on the mobile device, executing the one or more instructions received from the online system;
storing, in the shared memory location on the mobile device, an indication the client application was installed on the mobile device;
retrieving from the shared memory location the stored indication that the client application was installed on the mobile device and a user identification associated with a user of the online system and used by the online system to maintain data associated with the user, the stored indication and the user identification retrieved by an online system application installed as a native application and operating on the mobile device; and sending from the online system application to the online system, the stored indication that the client application was installed on the mobile device and the user identification.
Claim 1 is a method claim. This method starts with the action of “receiving” the items (i) and (ii) from an online system. They are a client application for installation and further instructions for execution which are both limited to a mobile device environment. In my view “receiving the client application for installation” means that an installable version of a client application is downloaded that when run on a mobile device will result in the application being installed. With these instructions are further code that when executed, causes an indication of successful installation to be recorded in a shared memory location. This indication is then sent back to the online system through an online system application. Independent claim 4 is similar but begins from the perspective of sending from an online system to a mobile device, being also amended to limit the mobile device to be one on which native applications are unable to access cookies. Claim 17 is directed to a “non-transitory computer-readable storage medium” that has “executable computer program instructions embodied” in it that when executed by the processor cause the processor to receive, execute, respond, store, retrieve and send as per the method of claim 1.
The examiner’s objection
The objection in the fourth examination report argues that the claims lack a manner of manufacture. Here the examiner has construed the substance of the invention to be:
“The substance of the invention lies in the conveying of a particular message (that an application has been installed) to a particular computer (the online system).”
The examiner then states that this is not patentable:
“An invention defined in substance by the specific information it transmits, as opposed to the manner in which that data is transmitted, is not patentable subject matter.”
The examiner then addresses the response which the applicant had filed after the third report. He stated that the response argued that:
“the substance of the invention lies in the manner in which the transmission of the data is enabled independently of the specific data being transmitted and that this is a patentable invention.”
The examiner’s report then addresses the applicant’s next argument: the separate features should be regarded as a combination, rather than a collocation, because different steps have a working interrelationship amongst them. The examiner disagreed with this by stating that it is analogous to:
“Williams v Nye, where the invention was defined by two well-known machines where the output of one was the input to the next. Analogous to the present case each step merely operates on its standard inputs (noting that the specific data claimed is not in any technical sense distinct from a generic piece of data and acts on those inputs in the standard way.”
The applicant purported that a technical limitation in the device had been overcome. The examiner responded by arguing that the mobile device as defined, did not always have this limitation:
“the user’s device is a mobile device. This feature does not appear to have any explicit definition beyond that found at [0052] of the description however this does not limit the application of the method to systems possessing the limitations that are sought to be overcome. Accordingly the claims still include within their scope claims where the combination of steps serves no technical purpose.”
The examiner then states that in the context of this device:
“the response is not to overcome a technical limitation but to circumvent a business rule.”
And this is because:
“The only reason shared storage is used to communicate information between those processes is because other methods of communication are not allowed.
Then stating that:
“the only limitations to be overcome are the deliberately set permissions rather than any architectural limitation.”
There is then a reference to
“the selection of the shared memory as a means of interprocess communication is an obvious selection that flows from other methods not being permitted.”
The arguments about the device being undefined were based on the claims before the proposed amendments before me. However, a device being mobile does not limit it to being a mobile phone and could include a laptop. These include limitations on the application being a native application and that they are unable to access cookies. These are the underlined sections shown in claim 1 and have been added to claims 4 and 17 as well.
In this decision, I will decide the outstanding objection based on the proposed amendments and the written submissions and oral submission made by the applicant.
The Applicant’s Submissions
The Applicant’s submissions begin by noting that the proposed amendments are made to make expressly clear that the claimed invention is limited to the use of the method concerning native applications on mobile devices that are unable to access cookies. They submit that cookies are:
“small text files stored on a user’s browser which are created when users use the browser to visit websites. Cookies can be used to store information, such as what advertisements were recently seen by the user, when the advertisements were seen and what websites the advertisements were displayed on.”
The applicant then states that:
“This can be helpful to advertisers in managing campaigns as it allows for, for example, conversion tracking.”
The applicant then defines conversion tracking as:
“Conversion tracking refers to the ability of advertisers to track events that occur after a user has seen an advertisement (referred to as an “impression”).”
They submit that the claimed invention is not a scheme or business method implemented on a computer but instead solves a technical problem. They provide a figure to explain the invention as claimed in the proposed amendments. This figure is not in the specification. It is useful to look at that figure now.
This figure is explained as follows:
“In the example of Fig. 2, when the user clicks on the link 122 in the Newsfeed 120, the line 122 sends (step (1)) the user to the Facebook online system 150, which sends data 170 to the one or more instructions from the Facebook online system 150, that when executed, write data to a shared memory location 160 indicating whether or not the Uber client application 116 was installed in the native application 110 of the mobile device 100 and the executed instructions from the Facebook online system 150 write data (step (3)) to the shared memory 160. The shared memory 160 is included in the mobile device 100 and is outside the respective sandboxes in which each of the native applications 110 resides. Each of the installed native applications 112, 116 is able to access the shared memory 116.”[16]
[16] Applicant’s submissions at 25.
The native applications, in this case, Facebook and Uber, when ordinarily installed, are “sandboxed” meaning that they are not able to communicate information with each other. The Applicant submitted that:
“The ‘sandboxing’ of native applications on a mobile device creates a technical problem in the architecture of the mobile device.”[17]
[17] Applicant’s submissions at 30
The method as defined in the proposed amendments
“overcomes this technical problem”[18]
[18] Ibid.
They submit that the invention involves the steps of (i) packaging data capable of installing a native application on a mobile device with code which, (ii) when executed writes information to a shared memory location on the mobile device[19]. That information includes an indication that the native application was installed on the mobile device.
[19] Ibid.
I noted that the examiner stated that this:
“is not to overcome a technical limitation but to circumvent a business rule”…”the only limitations to be overcome are the deliberately set permissions rather than nay architectural limitation.”[20]
[20] Examination report No. 5 fifth paragraph.
The Applicant is addressing this statement in their submissions.
The Applicant then submitted that the invention clearly creates an artificial state of affairs where the computer is integral to the invention with the communication between the native application, the information about installation and the online system did not exist before the invention.
The Applicant then submitted that the invention could broadly be described as an improvement in computer technology. In this submission, the invention is said to provide the mobile device with functionality that was unknown prior and that it offers economic utility which is particularly beneficial to advertisers.

This contribution is more than “conveying of a particular message to a particular computer”, and the applicant states that this was overly simplistic and ignored the fact that combination of technical features that made it possible.
The Applicant’s final submission points to the fact the that the examiner has now determined that the invention is novel and inventive as not prior art objection remains and therefore the determination of the manner of manufacture should be made without requiring consideration of the state of the art in this case. At the hearing, they reserved their right to file evidence if I considered it necessary to determine the state of the art.
The law
Examination of the patent application has been carried out under Section 45, and an impasse has occurred in relation to s 45(1)(b) concerning Section 18(1)(a). Under section 49 the Commissioner must accept a patent if the Commissioner is satisfied, on the balance of probabilities, that the invention, so far as claimed, meets the criteria mentioned in paragraph 18(1)(a) of the Act.[21] Thus, the standard of proof is that if I am satisfied, on the balance of probabilities.
[21] s 49(1)(b).
Section 18(1)(a) states 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…
I also note that Schedule 1 defines an invention as:
invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.
The s 6 of the Statute of Monopolies 1624 (imp) has always been a part of patent law in Australia with seminal early cases being “The NRDC case”[22] with reference to the following extract:
"The point is that 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." (citations omitted) [23]
[22] National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252.
[23] Ibid at 15.
In the NRDC case the claims were to a method for controlling weeds. The result was said to have an artificial effect and with Dixon CJ, Kitto and Windeyer JJ stating:
“The effect produced by the appellant's method exhibits the two essential qualities upon which “product” and “vendible” seem designed to insist. It is a “product” because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage, indeed to the lay mind a sensational advantage, for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits. Recognition that the relevance of the process is to this economic activity old as it is, need not be inhibited by any fear of inconsistency with the claim to novelty which the specification plainly makes. The method cannot be classed as a variant of ancient procedures. It is additional to the cultivation. It achieves a separate result, and the result possesses its own economic utility consisting in an important improvement in the conditions in which the crop is to grow, whereby it is afforded a better opportunity to flourish and yield a good harvest.”[24] (my emphasis).
[24] Ibid at 16.
The terminology of an ‘artificially created state of affairs of economic significance’ is to be understood in the context in which it was used in NRDC. It was not intended as a formula exhaustive of the concept of manner of manufacture. The Court made that point emphatically: ‘To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound.”[25] I note that the court, in that case, stated that a hard and fast rule, if applied literally to all cases would have a narrowing effect.[26]
[25] Ibid at 13.
[26] Ibid.
This principle was developed with “an artificially created state of affairs” taken to be understood in the sense of a concrete, tangible, physical, or observable effect.[27]
[27] Grant v Commissioner of Patents [2006] FCAFC 120; 234 ALR 230 at [30], 237.
More recently, the High Court in D'Arcy v Myriad Genetics Inc[28] the case related to isolated nucleic acid sequences and the courted noted that the artificiality of a product may be perceived by a number of factors and that it is necessary that the inventive concept be seen to make a contribution to the essential difference between the product and nature.[29] The enquiry is one of substance over form:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”[30]
[28] [2015] HCA 35.
[29] Ibid at [128].
[30] Ibid at [144].
The court noted that the step of isolation was not invented in that case and instead was long was longstanding technology well known to those skilled in the science.[31] This led to the finding that the substance of those claims to isolated nucleic acid sequences was the information embodied in the arrangements of nucleotides; the information was not “made” by human action and therefore was not suitable subject matter for a letters patent.[32]
[31] Ibid at [146].
[32] Ibid at [6].
The Full Federal Court decisions of Commissioner of Patents v RPL Central Pty Ltd[33] (RPL Central) and Research Affiliates LLC v Commissioner of Patents[34] (Research Affiliates) were both the focus patent applications which used computers but were subsequently found to not involve a manner of manufacture. There is a “distinction between a technological innovation which is patentable and a business innovation which is not”. Mere economic significance is not enough to confer patentability. The fact that a method can only be performed in a computer(s) is also insufficient in itself to confer patentability.
[33] (2015) 328 ALR 458; (2015) 115 IPR 461.
[34] (2014) 227 FCR 378.
The substance of the invention needs to lie in computer implementation to elevate a claim above a mere scheme/business method.
·“The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme.” Research Affiliates at [118]
·RPL Confirmed that “simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method”. RPL at [107]
·“RPL Central does not claim any invention or ingenuity in any program or operation of a computer… Accordingly, the ingenuity must be in the steps of the method itself… [this being] a scheme or business method”. RPL at [110]
The Deputy Commissioner summarised the legal principles from those cases in Aristocrat Technologies Australia Pty Limited:
“I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information.”[35]
[35] [2016] APO 49; 123 IPR 341 at [35], 353.
I note that in that case the Deputy Commissioner found that the Examiner’s characterisation of the substance of the invention was not correct[36] and instead a manner of manufacture lied in what once took two actions, or two choices, was combined into one single action.[37] Furthermore, unlike Research Affiliates, the computer was not intermediary.[38]
[36] Ibid at [44], 355.
[37] Ibid at [48], 356.
[38] Ibid at [51], 356.
In the Rokt decisions before the Commissioner, the delegate found that the substance lay in a scheme for advertising to a customer such that they are more inclined to positively interact with advertisements.[39] The effect on the customer was measurable, however, this was considered by the delegate as akin to human interaction or activity and not in the realm of patentable subject matter.[40] Rokt appealed that decision with Robertson J finding that the substance of the invention “was to introduce a dynamic context-based advertising system, introducing a distinction between an engagement offer, without a direct advertising benefit, and an advertisement designed to lead directly to the sale of the product.”[41] This resulted in “an improvement in computer technology”. This case is presently the subject of an appeal. I requested further submissions in relation to this case.
[39] Rokt Pte Ltd [2016] APO 66 at [46]; Rokt Pte Ltd [2017] APO 34 at [30].
[40] Ibid.
[41] Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 at [203].
Consideration
Firstly, I note that “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”. And secondly “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 nvention is performed.[42]
[42] RPL Central at 96.
In the current case, the invention results in conversion metrics for advertising being collected. I do not believe there has been disagreement on this. The Applicant submitted:
“the invention is economically useful in the field of advertising because it allows conversion tracking for advertisements, this is not the substance of the invention, rather it is one of the reasons why the invention has economic utility.”
In my view, advertising metrics are clear, not technical in nature. However, the result the invention provides is different from the substance of the invention. I, therefore, agree with the above submission.
The examiner was of the view that the substance of the invention merely overcame a business rule and stated in the fourth report:
“The substance of the invention lies in the conveying of a particular message (that an application has been installed) to a particular computer (the online system).”
This position was formed when the claims were not limited to native applications which did not have access to cookies. Furthermore, the definition of the mobile device at that stage did not lead the examiner to sandboxed native applications but was something broader. It is, according the Applicant, the sandboxing of native applications that is a technical barrier which was overcome.
The examiner construed the substance of the invention as follows:
“The substance of the invention lies in the conveying of a particular message (that an application has been installed) to a particular computer (the online system).”
This construction was before the currently proposed amendments and before the claims were limited to native applications which do not have access to cookies. The applicant submitted that:
“the invention claimed in the Application solves a technical limitation within the mobile device that then allows conversion tracking of native application installed on mobile devices.”
The applicant submitted that native applications cannot communicate information about other native applications which do not have access to cookies because they are “sandboxed” and this limitation is overcome in the current application through code that uses the shared memory.
In the image in the Applicant’s submissions the user is presented with the advertisement in a separate application (Facebook) to the one being installed (Uber), and the user information that is sent back would be that associated with the Facebook account. The claim does not require the presentation of the advertisement to be in the online system application, and that is not limited to a social networking application. The claim only refers to the client application and an online system application.
The current claims do not mention sandboxing; instead they are native applications unable to access cookies.
After communication with the shared memory, the online system application installed as a native application retrieves the indication and sends it back. Communication between apps is not apparent to me in claim and instead the information is retrieved from the shared memory.
The Applicant further submitted, in view of Rokt, that the substance of the invention overcomes the technical limitation within the architecture of a mobile device. The applicant did not submit that any improvements are being made in conversion tracking but rather that it solves a technical limitation within the device itself and overcoming this allows for conversion tracking.
The Applicant did not make submissions on the state of the art. However, it is my view that this is a relevant consideration here. I note that in Todd Martin[43] the Delegate noted what was known before the priority date when assessing the contribution, and this was done using expert evidence in Rokt. I put it to the applicant in a letter of 10 May 2020 in that letter. I stated my understanding as:
“As I understand it, the process of downloading instructions to install an application, and at the same time download instructions that when executed record an indication of installation in a shared memory location was well known at the priority date. To me this is how Add/Remove Programs works for example, in the Windows installer program. The installer program creates a record in a “shared” location, outside of the downloaded native application. In other words, the application itself, at installation, makes a record of installation. This record states what it is and how to remove it. This process appears to be part of the state of the art. Furthermore, it appears that such a process is also used in mobile devices, where turning access to cookies on and off is merely a routine option for managing applications. For example, in the European prosecution, prior art document US 2014/0129503 A1[4] (US ‘503) has been cited that appears to disclose such a process.”
[43][2017] APO 33 at [40].
I also requested submissions as to the inventiveness of the claims in view of US ‘503. The applicant kindly responded to my letter of 11 June 2019.
In their response, the applicant contended that the systems I highlighted that log installation, such as the add/remove program in Windows operate in a communal sandbox in the Windows operating system. They further that this system does not have the same limitations as a mobile device and the technology involved is distinguishable. I accept that the Windows operating system on a desktop computer or laptop is different from a mobile device and in this scenario sandboxing would be different.
Regarding the user ability to turn off and on cookies on a mobile device, the applicant submitted that this does not apply to native applications on a mobile device and explained it by stating:
“on a mobile device a native application cannot turn on or off cookies stored by another application installed on the same device.”
They go on to state that:
“The claimed invention seeks to overcome the limitations of the architecture of a mobile device by storing an indication that an application has been installed on the mobile device in a shared memory location outside of the application’s sandbox which can then be accessed by another native application installed on the mobile device.”
The applicant argued that:
“The sharing of an indication that a native mobile application has been installed is distinct from authorising or de-authorising a native application to store or to access cookies.”
The applicant annexed some information about cookies in a mobile environment and given current claims do state that the application is unable to access cookies, so I accept their submission.
Disclosure of US ‘503
US ‘503 discloses an online tool for managing apps on phones remotely, such as an employer sending apps to employee issued phones. It includes tracking and cataloguing the apps on those phones through the online system [0050]-[0051]. Relevantly at [0079], US ‘503 discloses downloading and installing an application for execution from an enterprise application store, the installation is stored in a log and a control client returns that data to the device management system.
I consider that the document discloses that the enterprise application store and the device management system are sufficiently closely related that they can be considered components of the same system. However, even if this were not the case, I would not regard the limitation that both components be part of the same system to involve any meaningful effect on how the invention works. Because of this, I do not see that the issue of Sandboxing stopped this information from being retrieved.
The nature of the invention
The current claims address a business problem, how to measure a conversion event. In mobile devices, applications are sandboxed and as proposed to be amended cannot access the cookies of other apps. When advertising apps, this presents a problem as one app, which communicates to an online system, cannot tell if a user has downloaded another app as a result of an advertisement. The state of the art does not involve the steps downloading a set of instructions that includes instructions to writes into a shared memory and another app accessing that and sending it back to an online system along with user data. This does not, in my view, break through the sandboxing, the sandbox is still there, instead it provides a workaround for the barrier of both sandboxing and the inability of native applications to access the cookies of other applications using the instructions that are provided with the app download that write into the shared memory and are then accessible by the first app. And indeed the business advantage is that it allows for the attribution of conversion events to specific advertisements. It does appear to be novel and inventive; it has not been done before.
What is the substance patentable subject matter?
Is the contribution to the claimed invention technical in nature?
On the one hand, the attribution of advertisements and conversion metrics that the invention allows being collected is not technical in nature and instead lies in the field of advertising attribution. On the other hand, it is a field of economic endeavour. I do not consider the metric itself to be the substance of the invention. I am not convinced that native applications which do not have access to cookies are sandboxed so that an indication of installation cannot be written, stored and transmitted. Instead, the substance lies in a series of steps where data is received, executed, an indication is stored, and then that indication is transmitted through a different app along with user information. The claims allow for advertising attribution and conversion tracking. In my view advertising attribution and conversion tracking is not technical in nature.
Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea?

I accept that the use of the computer is intrinsic to the method currently claimed. The invention operates entirely between a mobile device and an online system and therefore requires the use of a computer. It can collect user identification and conversion metrics to create a profile associated with that user.
The Applicant submitted that the claims create an artificial state of affairs where the information about the installation of a native client application can be communicated to an online system native application and then to an online system. They submit that this did not exist prior to the implementation of this invention
Does the claimed invention merely require generic computer implementation?
I note that the court asked the question “Is the artificial effect that arises because information is stored in RAM and there is communication over the internet or wifi sufficient?”[44] Indeed a very similar question arises here. However, instead of RAM we are discussing the shared memory on a mobile device. In this case, the information is retrieved by the online system application and sent back to the online system. I am not convinced that executing data and installing an application, writing an indication of installation in shared memory and sending it back to an online system via an online system application are not generic steps. Therefore, the current claims only require generic computer implementation.
Does the invention result in an improvement in the functioning of the mobile device?
[44] Ibid at 97.
I accept that it can potentially improve the user experience and allows for targeted and specific ad campaigns. However, this is not a limitation in the independent claims. Instead, the claims involve steps of receiving and executing data and sending it back and I cannot see an improvement in how the device functions when storing and sending indications such as these is known. The examiner characterised the substance as “the conveying of a particular message (that an application has been installed) to a particular computer (the online system)”[45]. The applicant stated that this does not reflect the current claims because of the inability of native applications to know of each other’s co-existence because they are “native applications”. I agree. There does appear to be something new being done here. There is no evidence that there is a more efficiently operating. However, the device is now able to do something that it could not do previously. This is a technical improvement.
Does the claimed invention solve a technical problem in the functioning of the computer?
[45] Examiner’s fourth report paragraph 1.
I note the Full Federal Court, reiterating the principles of Research Affiliates, stated that “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.”[46]
[46] Ibid at 99.
In my view, the technical limitation must be that native applications which do not have access to cookies are unable to communicate with other apps and are unable to tell if other apps are downloaded. Therefore, in my view, the sandboxing of native applications is a technical limitation faced by app developers. This sandboxing may indeed be deliberate at the hands of the manufacturer of those particular mobile devices it nonetheless exists. The utilisation of the shared memory requires code that is downloaded with the app itself in order to access the shared memory. The first app then access that shared memory and sends the information back to an online system along with user data. The sandboxing still exists, but the current invention works around it. This is a technical improvement in the device.
Conclusion
The substance of the invention is a technical improvement in the functioning of the device. It follows that the claims as proposed to be amended are a manner of manufacture.
Inventiveness over US ‘503
There is no debate between the office and the applicant on the tests for inventive step. In their submissions the test they applied is the modified Cripps question: would the skilled worker or team, a the priority date, armed with the common general knowledge alone or with the document, be “directly led as a matter of course to try the [claimed invention] in the expectation that the [claimed invention] might well produce a useful alternative”[47]
[47] Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR at 53; AstraZeneca AB v Apotex Pty Ltd (2014) 226 FCR 324 at 533; AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356 at 15 per French CJ, at 67 per Kiefel J (as her Honour was at the time).
The applicant addressed this issue with two main arguments and then presented further differences between the current claims and the invention disclosed in US ‘503. Firstly, the problem addressed by US ‘503 is the security challenges presented to network administrators in relation to the use of mobile devices by employees. Secondly, US ‘503 uses a control client application and control points which are not sent from an online system and do not write data to shared memory and instead uses a file log. I accept that the problem address is different; however, there are similarities between what could be described as a shared memory and a file log.
The Applicant stated that there is no disclosure of receiving data from the online system that includes a client application and the instructions to write into the shared memory.
I understand that using there are operation of the invention in US ‘503 is different to the current claims and addresses a different problem. In my view, the current claims are not a useful alternative to the invention disclosed in US ‘503. A lack of inventive step could not be maintained.
Conclusion
The manner of manufacture objection cannot be maintained in view of the proposed amendments..
The allowability of the amendments has not been considered in this decision. The amendments are to be considered by the examining section. To allow for this, under Reg 13.4(3) and I allow 3 months from the date of this decision for the application to be in order to be accepted.
Keith Wagg
Delegate of the Commissioner of Patents