First Principles, Inc.
[2011] APO 1
•5 January 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
First Principles, Inc. [2011] APO 1
Patent Application 2007221889
Title:Rational inquiry method
Patent Applicant: First Principles, Inc.
Delegate: P M Spann - Deputy Commissioner of Patents
Decision Date: 5 January 2011
Hearing Date: Heard by written submission
Catchwords: PATENTS – examiner’s objections –method of psychological analysis and therapy - whether a manner of manufacture – change in emotional state not a “physical phenomenon or effect” – method solely concerns human interactions and behaviours within the fine rather than useful arts – proposed amendments not allowable – no patentable subject matter disclosed – application refused.
Representation: Patent applicant: Mr J Arrouk, patent attorney, Pizzeys, Canberra
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007221889
Title:Rational inquiry method
Patent Applicant: First Principles, Inc.
Date of Decision: 5 January 2011
DECISION
Patent application 2007221889 is refused pursuant to subsection 49(2) of the Act.
REASONS FOR DECISION
This matter concerns examiner’s objections in respect of the application and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.
Background
Keith Raniere on 5 September 2000 filed international application PCT/US00/40818 in relation to a “Rational inquiry method”. This application claimed priority from US application 09/654,423 filed on 1 September 2000 and, pursuant to section 88, proceeded in Australia as complete application number 2001213650. After the application entered the national phase it was assigned to First Principles, Inc. and was subject to three adverse examination reports maintaining, ultimately, an objection on the basis of lack of novelty. Acceptance of the application was not obtained in the prescribed period and the application lapsed. However this was not before the present application was filed as a divisional application on 9 October 2007.
The present application has been subject to three adverse examination reports with the most recent maintaining objections of lack of clarity, that the claims are not directed to a manner of manufacture and that they do not involve an inventive step. The applicant in turn has filed a number of submissions and proposed amendments in response. In addition to the grounds already mentioned, the examiner in the last report further finds that the amendments proposed in the second statement of proposed amendments are not allowable. Submissions on the matters raised by the examiner and a third statement of proposed amendments were filed for my consideration on 20 December 2010. The final date for acceptance of the application is 5 March 2011.
The patent specification
The subject matter of the application is said to relate to educational methods for personal improvement and more specifically for detecting and removing “disintegrations”. These according to the specification include “ineffective non-transcendent emotions”. By removing disintegrations a person’s personal effectiveness is said to be improved.
More specifically, according to the alleged invention disintegrations can be removed or integration encouraged by a method of rational enquiry. The specification indicates that this:
“includes a plurality of questions, methods and observations leading to answers, meanings, ethics, personal essence, purpose and a greater awareness. The questions and observations in the method are provided to the individual in a matrix or a plurality of modules, including practices and inquiries. The matrix or modules, including practices and inquiries are used to assists the individual in determining a minimally assumptive matrix of consistent human internal existence and determining a minimally assumptive matrix of consistent reality. If through comparison of the minimally assumptive matrices, a difference is detected, a disintegration is said to occur. The disintegration is removed by allowing the individual to integrate through a more complete awareness of a limiting belief.”
The detailed description focuses on elaborating this methodology or theory of enhancing personal effectiveness but I note that it briefly, in relation to figure 2, indicates that the rational enquiry method can be interfaced with a computer system, audio visual system, the internet, hard copy or a seminar. Apparently these are used to teach the method to pupils including the asking or presenting of the questions indicated above. However figure 2 merely shows boxes labelled “computer system”, “audio visual”, etc, linked by a line to a box labelled “rational inquiry method”. Apart from the sentence “The rational inquiry method 10 may interact with a student through a computer system 100 giving questions and answers leading to predetermined results” there is in fact nothing to suggest how a computer might be used to implement the rational inquiry method disclosed.
There were 73 claims in the specification as filed including an omnibus claim (claim 37). Claims 1 and 23 are independent claims. In the first statement of proposed amendments filed on 3 June 2010 those claims were expressed as follows:
“1. A rational inquiry method for facilitating a person to integrate an inconsistency by comparison, said method comprising:
compiling a matrix of data indicative of internal existence within a person;
compiling a matrix of consistent data; and
comparing the matrix of internal existence with the matrix of consistent data to determine whether there exists an inconsistency selected from the group consisting of:
a first inconsistency between the matrix of internal existence and the matrix of consistent data; and a second inconsistency in the matrix of internal existence; and
facilitating the person to integrate the inconsistency.”
“23. A method, comprising the following steps:
having a person become consciously aware of internalized conceptions within the person, said internalized conceptions relating to a subject area;
facilitating the person's awareness of alternative conceptions relating to the subject area, said alternative conceptions existing outside of the person; and
determining whether a disintegration exists, said disintegration comprising at least one inconsistency selected from the group consisting of an inconsistency between the person's internalized conceptions and the alternative conceptions, an inconsistency within the person's internalized conceptions in light of the alternative conceptions, and a combination thereof.”
In the second and third statement of proposed amendments these claims were altered to include elements of computer implementation and renumbered to take into account deletion of certain dependant claims. Consequently, the independent claims as proposed to be amended in the third statement are:
“1. A computer-implemented rational inquiry method for facilitating a person to integrate an inconsistency by comparison, said method comprising:
compiling data with a computer system to form a matrix indicative of internal existence within a person through an interaction between the person and the computer system;
compiling data with the computer system to form a matrix of consistent data;
comparing, using the computer system, the compiled data of the matrix of internal existence with the compiled data of the matrix of consistent data to determine whether there exists an inconsistency selected from the group consisting of: a first inconsistency between the compiled data of the matrix of internal existence and the compiled data of the matrix of consistent data; and a second inconsistency in the compiled data of the matrix of internal existence;
wherein the inconsistency is manifested by the person in one of an emotional response, a bodily response, and an intellectual response; and
facilitating the person to integrate the inconsistency based on the compiled data obtained by the computer system.”
“20. A computer-implemented method, comprising the following steps:
having a person become consciously aware of internalized conceptions within the person, said internalized conceptions relating to a subject area, which are obtained through a series of questions and answers during a first interaction between the person and a computer system, the computer system prompting the questions of the series of questions and answers and storing the answers to the series of questions and answers;
facilitating the person's awareness of alternative conceptions relating to the subject area, said alternative conceptions presented to the persons by the computer system during a second interaction between the person and the computer system, said alternative conceptions existing outside of the person and stored on the computer system for presentation to the person; and
analyzing the first series of questions and answers obtained during the first interaction between the person and the computer system and comparing the alternative conceptions presented to the person by the computer system during the second interaction between the person and the computer system to determine whether a disintegration exists, said disintegration comprising at least one inconsistency selected from the group consisting of an inconsistency between the person's internalized conceptions and the alternative conceptions, an inconsistency within the person's internalized conceptions in light of the alternative conceptions, and a combination thereof.”
Are the proposed amendments allowable?
Under section 102 of the Act an amendment of a specification is not allowable if as a result the specification would claim matter not in substance disclosed in the specification as filed. This has been taken to require "a real and reasonably clear disclosure" of the subject matter of the amended claim in the original specification (RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353).
10.In response to the examiner’s view that the amendments proposed in the second statement were not allowable, the applicant’s attorney has submitted that the disclosure at page 16 “fully supports and enables the computer system being used in the rational inquiry method to facilitate a person to integrate an inconsistency”. This is a reference to the description in relation to figure 2 I have noted above. As such I find that it is fanciful to suggest that there is any real or reasonably clear disclosure for the compiling and comparing steps now proposed to be included in claim 1 or of the storing and presentation steps in claim 20. Therefore I find that the amendments proposed in the second and third statements of proposed amendments are not allowable and will proceed to consider the application on the basis of the first statement of proposed amendments.
Manner of manufacture
11.Subsection 18(1)(a) of the Act provides that an invention is a patentable invention if, so far as claimed in any claim, it “is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”. The High Court in National Research and Development Corporation v Commissioner of Patents [1959] 102 CLR 252 has provided a definitive statement of the law in this regard which has been summarised as a requirement for “a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the fields of economic endeavour” (CCOM Pty Ltd v Jiejing [1994] FCA 1168 at [128]). Relevantly, in Grant vCommissioner of Patents [2006] FCAFC 120 the Court found that a method of protecting an asset including steps of establishing a trust, making a gift to the trust, making a loan from the trust and securing the loan was not a manner of manufacture. The Court observed at [26] that “The fact that a method may be called a business method does not prevent it being properly the subject of letters patent; see Catuity at [125]–[126]” however it also found at [30] that Mr Grant’s method:
“does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect. It is quite different from the invention in Catuity, which was a method involving components such as smart cards and point of sale terminals, and produced tangible results in the writing of new information to the Behaviour file and the printing of the coupon (at [128]). While there was not a physically observable end result in the sense of a tangible product, the invention involved an application of an inventive method where part of the invention was the application and operation of the method in a physical device.”
and at [32]:
“A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required. In NRDC, an artificial effect was physically created on the land. In Catuity and CCOM as in State Street and AT&T, there was a component that was physically affected or a change in state or information in a part of a machine. These can all be regarded as physical effects. By contrast, the alleged invention is a mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable, despite the existence of such schemes over many years of the development of the principles that apply to manner of manufacture. There is no physical consequence at all.”
12.Furthermore in its conclusion at [47] the Court stated:
“Whether the method is properly the subject of letters patent is assessed by applying the principles that have been developed for determining whether a method is a manner of manufacture, irrespective of the area of activity in which the method is to be applied. It has long been accepted that "intellectual information", a mathematical algorithm, mere working directions and a scheme without effect are not patentable. This claim is "intellectual information", mere working directions and a scheme. It is necessary that there be some "useful product", some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent. That is missing in this case.”
13.In answer to the examiner’s objection on this point the applicant’s submissions suggest that the method of the claims produces an “observable effect” because it results in a change in the emotional and, consequently, the physiological state of the subject. However this is clearly not the sort of “physical phenomenon or effect” anticipated in Grant or indeed is in any way an artificially created state of affairs within the meaning of NRDC. While difficult to understand, the method claimed appears to be merely a process of psychological analysis and therapy based on analysing the subject’s responses to questions. It solely concerns human interactions and behaviours and is distinguishable from, for example, a method of treating a psychological condition with a drug producing a particular physiochemical interaction with the human body. Consequently in my view the subject matter of the claims clearly falls within the fine rather than useful arts in the same way as legal analysis and reasoning was not found to be patentable in Grant.
14.All of the dependant claims are in the same vein and therefore I find that none of the claims of the specification as filed, or as proposed to be amended, claim patentable subject matter. While I have found that the amendments proposed in the second and third statements are not allowable there remains however the possibility of the applicant claiming a method utilising a computer or other physical apparatus to the limited extent supported by the disclosure at page 16. Nevertheless, following my decision in Invention Pathways Pty Ltd [2010] APO 10 I am not of the view that the peripheral or incidental involvement of a physical device, even if altered to some extent by the operation of the method, is sufficient in itself to bring an otherwise unpatentable method into the realms of patentability. I am therefore of the view that no allowable amendment of the claims could be made such that the claimed method would meet the manner of manufacture requirement of section 18(1)(a) and that therefore the application should be refused.
Other grounds of objection
15.Given my finding above it is not necessary to consider other grounds in detail however prima facie it appears that the examiner is correct in finding that the method claimed, at least as concerns the first statement of proposed amendments, is not novel and lacks an inventive step. While dressed up in somewhat convoluted terminology, what appears from the description is that the claims are directed to very common processes of counselling and therapy or personal motivation that are described in the documents cited and these would clearly form part of the common general knowledge of those practicing in the relevant art.
Conclusion
16.I have found that there are lawful grounds for objection to the present patent application. In particular I find the claims are not directed to a manner of manufacture.
17.Furthermore, I consider that no patentable subject matter is disclosed in the specification such that a further opportunity for the applicant to propose amendments would not serve any useful purpose.
18.Consequently, pursuant to subsection 49(2) of the Act, I refuse the application.
P M Spann
Deputy Commissioner of Patents
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