Google LLC
[2018] APO 44
•4 July 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Google LLC [2018] APO 44
Patent Application: 2016203470
Title:Systems, Methods, and Computer Program Products for Providing a Contactless Protocol
Patent Applicant: Google LLC
Delegate: Xavier Gisz
Decision Date: 4 July 2018
Hearing Date: Written submissions filed on 1 March 2018, 3 April 2018, and 20 April 2018
Catchwords: PATENTS - examiner’s objections – system for payment transactions and for transmitting commerce data between mobile device and payment terminal –invention claimed is not a manner of manufacture – applicant given the opportunity to amend - applicant has 3 months from the date of this decision to gain acceptance.
Representation: Patent attorney for the applicant: Pizzeys Patent and Trade Mark Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016203470
Title:Systems, Methods, and Computer Program Products for Providing a Contactless Protocol
Patent Applicant: Google LLC
Date of Decision: 4 July 2018
DECISION
The claimed invention is not for a manner of manufacture.
The Applicant is given an opportunity to amend the claims. Pursuant to Regulation 13.4(g), the Applicant has 3 months from the date of this decision to gain acceptance.
REASONS FOR DECISION
Background
This matter relates to patent application 2016203470 in the name of Google LLC (the Applicant), and examiner’s objection thereto on ground of manner of manufacture.
The present application has been the subject of three examination reports issued on 1 March 2017, 21 November 2017, and 22 November 2017. The outstanding objection being that the claimed invention is not a manner of manufacture.
The Applicant requested a hearing on 22 January 2017.
A hearing notice was issued on 16 February 2018, allowing the applicant until 5 March 2018 to file submissions to the hearing. Written submissions were filed on 1 March 2018.
On 1 March 2018 I wrote to the applicant asking questions about the technical contribution of the invention and allowed the applicant two weeks to file further submissions. On 13 March 2018 the Applicant requested more time to prepare their further submissions. I allowed the Applicant a further three weeks to file their further submissions. The further submissions were filed on 3 April 2018.
On 4 April 2018 I wrote to the Applicant asking further questions about the technical contribution of the invention and allowed the applicant three weeks to file further submissions. The further submissions were filed on 20 April 2018.
APPLICABLE LAW
The request for examination of the patent application was filed on 31 May 2016. As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application.
Thus the standard of proof that applies in the present case is the balance of probabilities. 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 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
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; …
The specification
The present invention relates to a system for managing contactless transactions. The transaction includes payment data and other information. The system is specific to transactions between mobile devices and payment terminals.
The description states at paragraph 5 states:
One technical challenge associated with utilizing payment and commerce technologies cooperatively involves the ability to allow the same tap event that sends payment information to include additional information associated with merchant loyalty cards, offers, rewards, and the like. To this end, messaging technologies in existing NFC readers or NFC-enabled payment POS terminals stand to be upgraded to effectively support a messaging technology that retrieves and/or receives both payment credentials (using the aforementioned payment protocols) and additional commerce data (loyalty, offers, rewards, etc.) from mobile devices used to perform the transactions. Yet another technical challenge involves publishing commerce elements (e.g., offers, loyalty card credentials, rewards, and the like) into a mobile device such that those commerce elements may, in turn, be presented as part of a typical POS transaction (e.g., a purchase).
The specification as proposed to be amended on 24 October 2017 ends with 12 claims, including three independent claims. Claim 1 is reproduced below:
1. A system for managing contactless commerce transactions and payment transactions between mobile devices and payment terminals, comprising:
a mobile device comprising at least one memory operable to store commerce data and financial instrument data;
one or more processors coupled to the at least one memory, the one or more processors being operable to:
detect a first tap, the first tap occurring when the mobile device is placed within a proximity to the payment terminal;
in response to detecting the first tap, receive from the payment terminal a first select commerce command including an application identifier (AID) corresponding to a first commerce application;
transmit to the payment terminal a first response based on the first select commerce command;
receive from the payment terminal a data request including merchant specific information comprising a merchant identifier; and
transmit to the payment terminal a second response based on the data request, the second response including commerce elements corresponding to the merchant identifier, wherein the commerce elements include at least a portion of the commerce data stored in the at least one memory;
detect a second tap, the second tap occurring when the mobile device is placed within the proximity to the payment terminal;
in response to detecting the second tap, receive from the payment terminal a payment AID request;
transmit to the payment terminal the AID corresponding to a second application;
receive from the payment terminal a second select command including the AID corresponding to the second application;
transmit to the payment terminal file control information (FCI) corresponding to the second application;
transmit payment data to the payment terminal, the payment data including at least a portion of the financial instrument data stored in the at least one memory;
receive from the payment terminal a third select commerce command including an AID corresponding to the first commerce application;
transmit to the payment terminal a third response based on the third select commerce command;
receive from the payment terminal enhanced commerce data; and
transmit to the payment terminal a fourth response based on the enhanced commerce data.
The other two independent claims, claims 4 and 8, define a method and computer program that while a little broader, respectively contain essentially the same features as claim 1. The claims are annexed to this decision.
Examiner objection
The examiner objection from the report of 1 March 2017 stated:
“Claims 1-13 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. From reading your application as a whole the substance of the alleged invention is a scheme for managing contactless commerce transactions and payment transactions.
Key factors to considering patentable subject matter identified by the Full Court in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 at [099] include whether the contribution of 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."
The present invention solves the problem of how to provide additional information with a payment transaction. This is not a problem of technical nature.
Given the generic description of the computer implementation in your application , I do not consider that your application involves more than a generic utilisation of well-known functions of a computer, including the particular arrangement/combination of functions, and therefore does not involve any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Consequently, as per Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 the alleged invention is not a manner of manufacture.”
In the second and third reports, the examiner objections stated:
“Objection item 1 of the first report is maintained. The application is not for a manner of manufacture within the meaning of paragraph 18(1)(a) of the Patents Act because the subject matter of the claims 1-12 represents nothing more than a scheme, considered to be not patentable.
In your last response, on pages 1-2 you have submitted that, "As stated in the specification at paragraph [0005], "[o]ne technical challenge.......Yet another technical challenge involves publishing commerce elements (e.g., offers, loyalty card credentials, rewards, and the like) into a mobile device such that those commerce elements may, in turn, be presented as part of a typical POS ....... We respectfully submit that these are technical problems in managing contactless commerce transactions.
We respectfully submit that the claims of the current application address these technical problems with the technical solution of "receiv[ing] from the payment terminal a data request including merchant specific information comprising a merchant identifier," and "transmit[ting] to the payment terminal a second response based on the data request, the second response including commerce elements corresponding to the merchant specific information, wherein the commerce elements include at least a portion of the commerce data stored in the at least one memory." This is clearly an artificially created state of affairs, that results in a change in state in the computational environment."
However, combining offer, loyalty card credentials is not considered to be a technical problem, rather a mere business decision to provide that information during a transaction. Your alleged invention is directed to providing such information via a change of business process in a POS transaction which is tapping multiple times for providing other information as referred to. The actual contribution of your alleged invention is to change the tapping required and information provided in a POS transaction, which is considered a variation in an existing business scheme of POS transaction, which may provide more information, but does not improve any technical aspects of a general purpose computer.
You have further submitted on page 3, "Furthermore, we respectfully submit that the.........application involves [no] more than a generic utilisation of well-known functions..... as the invention involves steps that are foreign to the normal use of .......computers. Additionally on this point, and as conceded by the examiner, the ................... are novel and inventive in view of the state of the art at the time of the invention and, specifically, recite an inventive concept. It follows that if the....... invention did not exist at the time of filing and describes an inventive concept, the functions described within the currently amended claims were not previously performable by a computer. Thus, the currently amended claims are .......... was not previously performable by a computer. However, the consideration of manner of manufacture is separate from novelty and inventive step; an alleged invention may be inventive but still could be not a manner of manufacture. See further in Aristocrat Technologies Australia Pty Limited [2017] APO 1 (5 January 2017), it was said at para 72,
'I must emphasise that the requirement for the claimed invention to be a manner of manufacture under paragraph 18(1A)(a) is independent from the requirement for it to be novel and to involve an innovative step under paragraph 18(1A)(b). The fact that the claimed invention was considered novel and innovative is not relevant to the consideration of manner of manufacture'.
Furthermore, as mentioned before the actual contribution of your alleged invention appears to be a change in tapping process in a POS transaction, which is a mere change in a business process. The specification is silent about any new hardware that may be integral to the alleged invention nor does it specify any new technology to implement as such. The ingenuity of the alleged invention appears to be a business scheme which is implemented on a generic computer system and does not improve such computer system.
Consequently, as per Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 the alleged invention is not a manner of manufacture.”
Manner of Manufacture
Case law
With respect to manner of manufacture, subsection 18(1) of the Patents Act 1990 states:
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;…
In National Research Development Corporation v Commissioner of Patents [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in respect to manner of manufacture. At page 275, “… a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art …- that its value to the country is in the field of economic endeavour”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:
“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 … 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.”
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc [2015] HCA 35, at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
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 Research Affiliates LLC v Commissioner of Patents [2013] FCA 71 Emmett J, in seeking to apply the NRDC test, stated at [22] that:
“For a method to be patentable, it must produce a product in which a new and useful effect may be observed. In the case of computer programs, it is necessary to look to the application of the program to produce a practical and useful result, so that more than mere information is involved. The method of a claimed invention will not be patentable if it does not produce an artificial state of affairs, in the sense of a concrete, tangible, physical or observable effect. Even if there is not a physically observable end result, in the sense of a tangible product, a claimed invention that is a method may nevertheless be patentable if it applies the method in a physical device. In such a case, an artificial state of affairs is produced in the physical device by the claimed method. Thus, a physical effect, in the sense of a concrete effect or phenomenon or manifestation or transformation, is required. It is sufficient if there is a component that was physically affected or a change in state or information in part of a machine. They can be regarded as physical effects. However, if the claimed invention is a mere scheme, an abstract idea or mere information, it will not be patentable as there is no physical consequence (Grant v Commissioner of Patents (2006) 154 FCR 62 at 70-71).”
In Grant v Commissioner of Patents [2006] FCAFC 120; 154 FCR 62 Justices Heerey, Kiefel and Bennet stated at [29] and [30]:
“NRDC emphasised the need for the adaptability of the law of patents to cover technological developments. In NRDC the High Court looked to the application of the claimed method. That is similar to the approach of courts in the United States. A product of a method is something in which a new and useful effect may be observed. For claimed computer programs, the courts looked to the application of the program to produce a practical and useful result, so that more than ‘intellectual information’ was involved. CCOM provides a useful analysis of the development of patent law in this context. The underlying principle, developed from the Statute of Monopolies, that business, commercial and financial schemes, which are ‘intellectual information’ are not themselves properly the subject of letters patent, was maintained. As Gyles J concluded in Arrow Pharmaceuticals Ltd v Merck & Co Inc (2004) 213 ALR 182 at [87], cited by the Full Court in Merck at [23], a method that is in the nature of directions for use does not constitute an invention or a manner of manufacture. Neither in Merck, nor here, has some previously unrecognised property of an aspect of the method been discovered.
Contrary to Mr Grant’s submission, the method of his patent 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. Within the concept of NRDC an artificial state of affairs was produced, a state of affairs created by the application or effect of the method.”
In Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 it was stated at [94]:
“When the authorities in Australia prior to and including Grant are considered, a consistent approach emerges as to the relevance of:
·a distinction between a claim to a business scheme and claims to methods which in practice result in a new machine or process or an old machine giving a new and improved result – that is, a distinction between mere intellectual information and a method that affects the operation of an apparatus in a physical form (Grant at [18]);
·the fact that the claimed steps are foreign to the normal use of computers, such as the production of an improved curve image (IBM 2 at 225-226);
·the particular mode or manner of achieving an end result which is an artificially created state of affairs, such as the storage of data as to Chinese characters and retrieval of graphic representations to enable word processing (CCOM at 295);
·whether part of the invention is an inventive method which includes the application and operation in a physical device (Grant at [30]);
·the distinction drawn in Catuity, as explained in Grant (at [24]), between ‘a technological innovation which is patentable and a business innovation which is not’. In Catuity, Heerey J did not accept that a physically observable effect was necessarily required (at [128]) but the Full Court in Grant expressed the opinion that a physical effect in the sense of a concrete effect or phenomenon, or manifestation or transformation is required (at [32]).
·the fact that a physical effect is required does not make it sufficient to confer patentability;
·the fact that a method may be called a business method does not prevent it being properly the subject of letters patent (Grant at [26] citing Catuity at [125]-[126]);
·the fact that for claimed computer programs, the courts look to the application of the program to produce a practical and useful result, so that more than ‘intellectual information’ is involved (Grant at [29]). A method that is in the nature of directions for use does not constitute an invention or a manner of manufacture in the absence of some previously unrecognised property of an aspect of the method (Grant at [29]).”
In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”), the Full Court of the Federal Court stated at [96] and [98]:
“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.
…
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”.
The Full Court of the Federal Court in RPL then detailed a number of considerations relevant to the determination and coming from earlier decisions of the Court. Summarising from [99] of RPL:
- 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 submissions of 1 March 2018 state:
“As stated in the specification at paragraph [0005], “[o]ne technical challenge associated with utilizing payment and commerce technologies cooperatively involves the ability to allow the same tap event that sends payment information to include additional information associated with merchant loyalty cards, offers, rewards, and the like. To this end, messaging technologies in existing NFC readers or NFC-enabled payment POS terminals stand to be upgraded to effectively support a messaging technology that retrieves and/or receives both payment credentials (using the aforementioned payment protocols) and additional commerce data (loyalty, offers, rewards, etc.) from mobile devices used to perform the transactions. Yet another technical challenge involves publishing commerce elements (e.g., offers, loyalty card credentials, rewards, and the like) into a mobile device such that those commerce elements may, in turn, be presented as part of a typical POS transaction (e.g. a purchase)” (our emphasis added). We respectfully submit that these are technical problems in managing secure contactless commerce transactions in an online or electronic environment (an industrial science). Accordingly, we respectfully submit that the consideration from the Aristocrat decision described above of does the invention solve a technical problem within the computer or outside the computer has been met.”
In my letter of 1 March 2018 I stated:
“Prior art document US 2011/0244796 (KHAN et al) 6 October 2011 was raised in the corresponding application in the US (US patent application number 13/901,188 with publication number US 2013/0317927). This prior art document states in the background at paragraph 3:
“Conventional systems and methods which use an NFC device to complete these transactions require at least a two-step approach with a separate tap for each transaction. For example, the first step can include tap ping the NFC device to the NFC wireless device reader to communicate value added applications including, for example, the order and/or coupon transactions. The second step can include tapping the NFC device to the NFC wireless reader for communicating the payment transaction. That is, more than one NFC tap is necessary to convey information for the order, coupon, and payment transactions in the sandwich example.”
The Applicant is invited to provide submissions regarding the technical contribution in light of this prior art document.
...
I note that merchant identifiers or merchant ID were a well-known, and perhaps ubiquitous, element of electronic transactions (such as credit card transactions) at the priority date. However, prior art document US 2011/0244796 (KHAN et al) does not explicitly disclose a system incorporating merchant identifiers.
There may be some technical difficulty or technical contribution in the incorporation of a well-known feature into existing prior art. The Applicant is invited to provide submissions on whether a technical contribution has been made by the incorporation of a merchant identifier into the existing prior art and, if so, what that technical contribution is.”
In the response submissions of 3 April 2018 the Applicant stated:
“An example of merchant specific information comprising a merchant identifier is described at paragraph [0112] of the current specification where it is stated:
A merchant identifier (Merchant_ ID (DF31)) can be loaded onto reader 120. Merchant ID is a value assigned by a service provider. In one embodiment, this value is assigned by the MoCom platform operator. This is required to allow commerce applet 113 to filter the loyalty and coupon data, and send the appropriate items to the reader 120 (our emphasis added).
The Hearing Officer notes that “merchant identifiers ... were a well-known ... element of electronic transactions” (Hearing Officer’s correspondence, page 2). Traditional merchant identifiers are commonly used to tag a specific transaction and to identify the merchant point of sale device. The merchant identifier is docile data that is not used or processed for any functionality. As the name suggests, merchant identifiers are simply used to identify the transaction and associated device. Traditional merchant identifiers could not be used to adjust transaction behaviour.”
In my letter of 4 April 2018 I stated:
“The use of merchant identifiers to adjust transaction behaviour appears to be known in the prior art. For example, US 2011/0251892 A1 (LARACEY) 13 October 2011 (at paragraphs 137, 165, and 168) and US 2012/0005076 A1 (DESSERT et al) 5 January 2012 (at paragraphs 80-82) disclose the use of merchant identifiers to identify relevant loyalty or coupon information in mobile device payment systems.”
In the response submissions of 20 April 2018 the Applicant stated with reference to the Laracey prior art document:
“In an example transaction of Laracey, a “user interface ... shows a customer a number of available payment options ... in the order of preference or desirability based on ... customer preferences or rules established by the customer ... by the merchant, or by the payment system operator” (see Laracey at paragraph 165). In the transaction of Laracey, “the user [may] specif[y] a single ‘default’ payment account to use for all transactions ... [or] the customer [may] select[] a desired payment account” (see Laracey at paragraph 165 – our emphasis added).
We respectfully submit that the user setting a default payment account or the user selecting a payment account, as disclosed in Laracey, is not equivalent to the use of merchant identifiers to adjust transaction behaviour, as defined in the claims. A merchant identifier is received in Laracey; however the merchant identifier is not used by a mobile device to automatically select transaction data. The transaction data is selected by the user. Accordingly, we respectfully submit that Laracey does not teach, suggest, or render obvious the use of merchant identifiers to select applicable transaction data.”
In the response submissions of 20 April 2018 the Applicant stated with reference to the Dessert prior art document:
“Dessert is directed to “verifying credentials for gaining access to a transaction controller with [a] portable computing device” (see Dessert at Abstract). A “tag ... may comprise machine readable data such as a two dimensional barcode that contains a unique identifier associated with a particular electronic cash register ... and a particular merchant” (see Dessert at paragraph 77). That is, we respectfully submit that Dessert requires the scanning of a barcode or QR-code (see for example, Dessert, Figure 2D) to obtain the merchant identification. We respectfully submit that this merchant identification is not used by a mobile device to automatically select transaction data.”
Contribution to the art
The Applicant’s submissions are that the contribution to the art is the system transmits the merchant identifier to the user’s mobile device. This information is then used to transmit back to the payment terminal the appropriate commerce data (e.g. loyalty data). I will now consider this alleged contribution the prior art.
US 2011/0251892 (LARACEY)
Laracey states at paragraph 137 (with my emphasis in bold):
“The transaction process continues at step “10 where the transaction management system 630 transmits a request to the merchant management system module 618 to authenticate the merchant and obtain merchant information associated with the merchant at which the POS 609 or shopping cart 640 transaction is taking place. At step “11”, the merchant management system 618 transmits an authentication success or failure message back to the transaction management system 630, along with merchant information if the authentication request is successful. The merchant information may include detailed information associated with the merchant (such as, for example, the merchant name, address, and, in some embodiments, a unique merchant identifier which may be used to identify any relevant loyalty, rebate or other information that may be matched to the present transaction).”
Laracey states in the second half of paragraph 110:
“The transaction information (including merchant name and location and the transaction amount, for example) and the available payment account information, are transmitted to the customer's mobile device 202 at 468.”
Thus Laracey discloses “receiving ... merchant specific information comprising a merchant identifier”.
Laracey states at the second half of paragraph 173(with my emphasis in bold):
“In some embodiments, systems of the present invention provide customer initiated delivery of both payment and loyalty credentials to online and/or physical POS using a mobile device. For example, during processing of a transaction, both loyalty and payment account information associated with the customer may be retrieved and presented to the customer during a transaction (and, in some embodiments, the loyalty account may be automatically applied to all transactions at a participating merchant) allowing ready and efficient insertion of loyalty and payment information in a single transaction.”
Thus contrary to the Applicant submissions, Laracey discloses the loyalty information to be automatically applied to the transaction.
US 2012/0005076 (DESSERT et al)
Dessert discloses at paragraph 87:
“FIG. 2I is a diagram of an exemplary machine readable tag 124A that may be coupled to an electronic cash register 126 of a merchant. The machine-readable tag 124A may comprise a bar code 222 which may be scanned with a camera 348 of the PCD 100. The transaction software 501 running on the PCD 100 may be able to process the scanned barcode 222. As noted above, the bar code 222 may comprise either a one dimensional or two-dimensional barcode. Further, other machine-readable codes are included within the scope of the invention and may include contactless technologies, such as near-field communications (NFC) which may or may not be linked to a secure-element, and RFID cards as understood by one of ordinary skill in the art. For these contactless technologies, the tag 124A may comprise an antenna 224 coupled to an integrated-circuit chip (not illustrated). As described above, the tag 124A may provide a unique identifier associated with the electronic cash register 126 and a unique identifier associated with a merchant that operates the electronic cash register 126. These unique identifiers may be contained within the machine-readable code and/or associated with the code. The tag 124A may also comprise a human-readable code 223 that may be keyed-in by the user of the PCD 100 instead of scanning the machine readable code 224 with the PCD 100.”
Paragraph 87 discloses the machine readable tag 124A to be near-field communication (NFC). Dessert further discloses the machine readable tag comprises a unique merchant identifier (paragraph 42). Dessert thus discloses “receiving ... merchant specific information comprising a merchant identifier”.
Dessert further discloses the action of the phone transmitting the enhanced commerce data automatically at paragraph 135:
“Another beneficial feature of the client profiles maintained by the second storage device 146B is the loyalty account data 806. The loyalty account data 806 may track various loyalty accounts that correspond with different merchants. The loyalty account data 806 may also track loyalty points earned by a user of PCD 100 when certain purchases are made at particular merchants corresponding to the loyalty account. When a user of the PCD 100 has elected to use the system 101 for processing payments of purchases, the transaction controller 144 may retrieve loyalty account data 806 after the information from the tag 124 is collected from the PCD 100. This retrieval of the loyalty account data 806 may occur prior to or during the generation of product scan data by the product scanner 132 so that appropriate discounts corresponding to the loyalty account data 806 may be applied by the POS controller 134.”
The difference between the claimed invention and the prior art
Prior art documents US 2011/0251892 (LARACEY) and US 2012/0005076 (DESSERT et al) disclose the invention at a ‘conceptual level’/‘high level’, however do not explicitly disclose the ‘detail level’/‘low level’ features such as the specific communication protocol between the mobile phone and payment terminal. This suggests that the substance of the invention lies in the communication protocol, and not in the particular hardware present in the claims. I will approach the formulation of the substance of the invention now in further detail.
Substance of the claimed invention
The invention of claim 1 can be well understood with the assistance of figure 4:
There are a number of factors that can be drawn from decisions such as RPL, Research Affiliates and Myriad that are useful for determination of the substance of the claimed invention. Such factors include:
· How does the claimed invention work
· What problem does it solve?
· What is the result of performing the claimed invention?
· What was the state of the art as at the priority date?
· What does the claimed invention add to the state of the art?
· What are the advantages of the claimed invention?
Claim 1 is directed to a system for managing contactless commerce transactions. The claim involves communication between a mobile device and a payment terminal. Importantly I note that there does not appear to be any presence of a merchant POS system or payment platform within the claim. Instead the claim essentially covers only the communication between a mobile device 110, and payment terminal 401 that is reflected in figure 4. In this regard, the mobile device and the payment terminal “speak to each other” facilitated by two taps. After each of these taps, a series of data requests and data responses are provided in a particular order.
For example, after a first tap the payment terminal sends a “select commerce” command which includes the identification (AID) of a first commerce application (app). The mobile device then provides a response. According to claim 1, the payment terminal then sends a data request that includes a merchant identifier. The mobile device then responds with a commerce element that corresponds to the merchant identifier. This commerce element corresponds to data locally stored on the mobile device. This may for example constitute loyalty information for a specific merchant/retailer.
A second tap then occurs which initiates a second procedure. This procedure involves steps of:
· The payment terminal sends a payment AID request
· The mobile device responds with an AID for a second application
· The payment terminal sends a select command for the second application
· The mobile device transmits file control information to the terminal
· The mobile device transmits payment information to the terminal
· The payment terminal sends a third command to select commerce including an AID for the first commerce application
· The mobile device transmits a response based on the third command
· The payment terminal sends enhanced commerce data to the mobile device
· The mobile device transmits a response based on this enhanced data to the payment terminal
Clearly there is a relatively complex process within the claim for sharing information between the payment terminal and the mobile device. Broadly, it appears that the claim is aimed towards the concept of after first tap, getting information about what loyalty memberships the customer has with a particular merchant, and then after a second tap, facilitating a payment and further information sharing which involves information related to the loyalty membership. The result of performing the invention appears to me to be a potentially improved transaction protocol between a mobile device such as a near field enabled mobile phone, and a payment terminal such as those standard devices used to conduct contactless transactions e.g. “tap and go™” or “payWave®” type technology.
The earliest priority date of the present claim is 24 May 2012. At that time, I consider that it is reasonable to suggest that the use of mobile phones and near field communications to conduct financial transactions using contactless technology was well known in the art. At the same time, storing and accessing payment information via applications on a mobile device was known, as was the use of “digital wallets” to manage a person’s loyalty and membership cards. The applicant has clearly not invented the concept of initiating financial data transactions using a “tap”. I also note that document US 2011/0251892 (LARACEY) discloses near field “tap” type communication between a mobile device and a payment terminal.
In summary it is my understanding that the “technical architecture” of claim 1, being a mobile device that “taps” with a payment terminal, is generic technology in the art. It follows that the substance of the invention is in fact the particular communication protocol between the two devices. This communication protocol can be best understood as a two stage information sharing process. A first data sharing process is initiated (using generic technology) containing four particular steps of information sharing. This first data sharing process is then followed by a second data sharing process containing a further nine data sharing steps. Those steps are in accordance with that which I have discussed above. I must now consider whether this two stage data sharing process is patentable in accordance with traditional principles.
Relevant to my further consideration are:
·Is the contribution to the claimed invention technical in nature?
·Does the claimed invention solve a “technical” problem with the computer or outside the computer?
·Does the claimed invention result in an improvement in the functioning of the computer, irrespective of the data being processed?
·Does the claimed invention merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea?
The essence of the Applicant’s submission appears as follows:
“As stated in the specification at paragraph [0005], “[o]ne technical challenge associated with utilizing payment and commerce technologies cooperatively involves the ability to allow the same tap event that sends payment information to include additional information associated with merchant loyalty cards, offers, rewards, and the like. To this end, messaging technologies in existing NFC readers or NFC-enabled payment POS terminals stand to be upgraded to effectively support a messaging technology that retrieves and/or receives both payment credentials (using the aforementioned payment protocols) and additional commerce data (loyalty, offers, rewards, etc.) from mobile devices used to perform the transactions. Yet another technical challenge involves publishing commerce elements (e.g., offers, loyalty card credentials, rewards, and the like) into a mobile device such that those commerce elements may, in turn, be presented as part of a typical POS transaction (e.g. a purchase)” (our emphasis added). We respectfully submit that these are technical problems in managing secure contactless commerce transactions in an online or electronic environment (an industrial science). Accordingly, we respectfully submit that the consideration from the Aristocrat decision described above of does the invention solve a technical problem within the computer or outside the computer has been met.”
In relation to this submission, I fail to see any improvement in what is occurring in a particular tap event. A tap event as presented within claim 1 appears to be nothing more than an initiator of an information exchange procedure. Standard tap event technology appears to be used in the present invention, with the substance of the invention simply lying in the steps that occur after the tap event. In this sense I see no improvement in the technology of NFC readers or NFC enabled payment terminals.
On the second point presented by the Applicant, it is said that there is a technical challenge in publishing commerce elements into mobile devices such that they can in-turn be presented at a point of sale transaction. Again while this may be the case, the claim does not solve such a problem with any improvement in the relevant computer technology. Instead the claim simply shares information on a mobile device with a payment terminal. At the priority date, such devices were already capable of sharing information of any type. The claimed invention simply appears to present a logistical methodology for sharing particular information between the relevant devices. I see no technical problem within a computer device, in the form of a mobile device or payment terminal that has been overcome. In other words, generic technology is used to implement the information sharing protocol.
The substance of the invention is an ordered set of steps for two entities (a merchant and a buyer) to communicate with each other to share information. Relevant information is commonly held on a mobile device and the claimed invention provides a sequence of steps for retrieving that information. In this sense, the two relevant devices are conducting a conversation, using generic technology, for the purpose of sharing information to conduct a transaction. While there are two taps, I do not consider there to be any material or technical advantage in the division of the communication protocol into two stages. The two stages are conducted to emulate the classical interaction between a merchant and a customer whereby they are first asked if they own a loyalty card (as a first step in a procedure) before they are asked to pay for an item (a second step in a procedure). The “taps” within the claim appear to serve as nothing more than “procedure imitators”. With this understanding it appears to me that that the substance of the invention is nothing more than a mere communication scheme that has been “merely computer implemented”. The invention is well characterised as a “business innovation” as opposed to a technical innovation. Therefore, I find claim 1 is not for a manner of manufacture.
The substance of the invention defined in independent claims 4 and 8 is essentially the same as the substance of the invention of claim 1. The substance of the invention in the dependent claims is also considered to be essentially the same as the substance of the invention of claim 1. Since the substance of the invention of claim 1 is not for a manner of manufacture, it follows that all other claims are similarly not for a manner of manufacture.
Substance of the described invention
The specification relates to the communication of data (and the software that enables the communication of that data) to facilitate financial transactions. A technical contribution within this communication of data (or in some other aspect of the invention) has not been identified by the Applicant. I do not consider, on the face of the specification, there to be any patentable subject matter disclosed. However, given the length of, and detail in, the description it is plausible that one aspect of the invention disclosed provides for patentable subject matter.
Conclusion
I have found that the substance of the invention as claimed is a scheme and thus not a manner of manufacture.
It is not apparent to me that there is patentable subject matter however the Applicant is given an opportunity to amend the claims such that the substance of the invention is a manner of manufacture. Pursuant to Regulation 13.4(g), the Applicant has 3 months from the date of this decision to gain acceptance.
Xavier Gisz
Delegate of the Commissioner of PatentsANNEX
WHAT IS CLAIMED IS:
1. A system for managing contactless commerce transactions and payment transactions between mobile devices and payment terminals, comprising:
a mobile device comprising at least one memory operable to store commerce data and financial instrument data;
one or more processors coupled to the at least one memory, the one or more processors being operable to:
detect a first tap, the first tap occurring when the mobile device is placed within a proximity to the payment terminal;
in response to detecting the first tap, receive from the payment terminal a first select commerce command including an application identifier (AID) corresponding to a first commerce application;
transmit to the payment terminal a first response based on the first select commerce command;
receive from the payment terminal a data request including merchant specific information comprising a merchant identifier; and
transmit to the payment terminal a second response based on the data request, the second response including commerce elements corresponding to the merchant identifier, wherein the commerce elements include at least a portion of the commerce data stored in the at least one memory;
detect a second tap, the second tap occurring when the mobile device is placed within the proximity to the payment terminal;
in response to detecting the second tap, receive from the payment terminal a payment AID request;
transmit to the payment terminal the AID corresponding to a second application;
receive from the payment terminal a second select command including the AID corresponding to the second application;
transmit to the payment terminal file control information (FCI) corresponding to the second application;
transmit payment data to the payment terminal, the payment data including at least a portion of the financial instrument data stored in the at least one memory;
receive from the payment terminal a third select commerce command including an AID corresponding to the first commerce application;
transmit to the payment terminal a third response based on the third select commerce command;
receive from the payment terminal enhanced commerce data; and
transmit to the payment terminal a fourth response based on the enhanced commerce data.
2. The system of Claim 1, wherein the first tap and the second tap occur in response to a first tap request and a second tap request, respectively, received from the payment terminal.
3. The system of Claim 1, wherein the payment terminal comprises a contactless reader and/or a point of sale terminal.
4. A method for managing contactless commerce contractions and payment transactions between mobile devices and payment terminals, the method comprising steps of:
detecting a first tap, the first tap occurring when a mobile device is placed within a proximity to a payment terminal;
receiving from the payment terminal a first select commerce command including an application identifier (AID) corresponding to a first application;
transmitting to the payment terminal a first response based on the first select commerce command;
receiving from the payment terminal a data request including merchant specific information; and
transmitting to the payment terminal a second response based on the data request, the second response including commerce elements corresponding to the merchant specific information, wherein the commerce elements include at least a portion of commerce data stored in at least one memory;
detecting a second tap, the second tap occurring when the mobile device is placed within a proximity to the payment terminal;
receiving from the payment terminal a payment AID request;
transmitting to the payment terminal the AID corresponding to a second application;
receiving from the payment terminal a second select commerce command including the AID corresponding to the second commerce application;
transmitting to the payment terminal file control information (FCI) corresponding to the second commerce application; and
transmitting payment data to the payment terminal, wherein the payment data includes at least a portion of the financial instrument data stored in the at least one memory.
5. The method of Claim 4, wherein the first tap and the second tap occur in response to a first tap request and a second tap request, respectively, received from the payment terminal.
6. The method of Claim 4, further comprising the steps of:
receiving from the payment terminal a third select commerce command including an AID corresponding to the first commerce application;
transmitting to the payment terminal a third response based on the third select commerce command;
receiving from the payment terminal enhanced commerce data; and
transmitting to the payment terminal a fourth response based on the enhanced commerce data.
7. The method of Claim 4, wherein the payment terminal comprises a contactless reader and/or a point of sale terminal.
8. A computer program product, comprising:
a non-transitory computer-reader medium having stored thereon sequences of instructions that when executed by a computer cause the computer to manage contactless commerce transactions and payment transactions between mobile devices and payment terminals, the computer-executable program instructions comprising:
computer-executable program instructions to detect a first tap, the first tap occurring when a mobile device is placed within a proximity to a payment terminal;
in response to detecting the first tap, computer-executable program instructions to receive from the payment terminal a first select commerce command including an application identifier (AID) corresponding to a first application;
computer-executable program instructions to transmit to the payment terminal a first response based on the first select commerce command;
computer-executable program instructions to receive from the payment terminal a data request including merchant specific information; and
computer-executable program instructions to transmit to the payment terminal a second response based on the data request, the second response including commerce elements corresponding to the merchant specific information, wherein the commerce elements include at least a portion of commerce data stored in at least one memory;
computer-executable program instructions to detect a second tap, the second tap occurring when the mobile device is placed within a proximity to the payment terminal;
in response to detecting the second tap, computer-executable program instructions to receive from the payment terminal a payment AID request;
computer-executable program instructions to transmit to the payment terminal the AID corresponding to a second application;
computer-executable program instructions to receive from the payment terminal a second select commerce command including the AID corresponding to the second commerce application;
computer-executable program instructions to transmit to the payment terminal file control information (FCI) corresponding to the second commerce application; and
computer-executable program instructions to transmit payment data to the payment terminal, wherein the payment data includes at least a portion of the financial instrument data stored in the at least one memory.
9. The computer program product of Claim 8, wherein the first tap and the second tap occur in response to a first tap request and a second tap request, respectively, received from the payment terminal.
10. The computer program product of Claim 8, further comprising:
computer-executable program instructions to receive from the payment terminal a third select commerce command including an AID corresponding to the first commerce application;
computer-executable program instructions to transmit to the payment terminal a third response based on the third select commerce command;
computer-executable program instructions to receive from the payment terminal enhanced commerce data; and
computer-executable program instructions to transmit to the payment terminal a fourth response based on the enhanced commerce data.
11. The computer program product of Claim 8, wherein the payment terminal comprises a contactless reader and/or a point of sale terminal.
12. The system of Claim 1, wherein the one or more processors are further operable to:
receive from the payment terminal a third select commerce command including an AID corresponding to the first commerce application;
transmit to the payment terminal a third response based on the third select commerce command;
receive from the payment terminal enhanced commerce data; and
transmit to the payment terminal a fourth response based on the enhanced commerce data.
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