HRB Innovations, Inc.
[2019] APO 30
•3 July 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
HRB Innovations, Inc. [2019] APO 30
Patent Application: 2018206822
Title:Simplified Tax Interview
Patent Applicant: HRB Innovations, Inc.
Delegate: M. G. Kraefft
Decision Date: 3 July 2019
Hearing Date: Written submissions completed on 30 January 2019
Catchwords: PATENTS – section 45 – examiner’s objection – proposed amendments filed with submissions – whether invention is a manner of manufacture – use of cluster analysis to filter information and determine appropriate indicator variables and prototypes for simplified tax interview purposes – generating a plurality of clusters, wherein each cluster based on identified plurality of previously prepared tax returns sharing one or more indicator variables – improvement in computer technology or technical contribution to the art not apparent – application refused.
Representation: Patent attorney for the applicant: FB Rice
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018206822
Title:Simplified Tax Interview
Patent Applicant: HRB Innovations, Inc.
Date of Decision: 3 July 2019
DECISION
The claimed invention is not for a manner of manufacture. Moreover, there is nothing in the body of the specification that could overcome this finding.
The application is refused.
REASONS FOR DECISION
BACKGROUND
HRB Innovations, Inc (“the applicant”) filed patent application 2018206822 (“the current application”) on 20 July 2018. The application is a divisional application based on application 2018200942 (“the parent application”). The parent application in turn is a divisional application based on application 2016201095. The latter application is based on a US application filed 24 February 2015 (“the priority date”).
The parent application was the subject of a decision, HRB Innovations, Inc., [2018] APO 63 (“the first decision”). In that decision, the delegate found that the claims of the parent application were not for a manner of manufacture and refused the application.
The current application was the subject of an examination report dated 16 October 2018. In that report, the examiner raised the objection that the application was not for a manner of manufacture for the reasons set out in the first decision as the application, at that time, was in the same terms as the parent application.
The applicant subsequently requested to be heard. Together with filing written submissions for the hearing, the applicant also filed a statement of proposed amendments to the description and claims of the specification.
SPECIFICATION
The specification describes the alleged invention as relating to accurately predicting the information that is necessary and relevant for the purpose of determining the relevant questions for a tax interview for a given user. In this way, a computer system presents only those relevant portions of the tax interview to the user without presenting the full tax interview. Paragraphs [6] and [7] of the first decision, with reference to the specification, provide further background to the alleged invention, and discuss the objective and a solution of a technological approach for performing efficient, effective and more simplified tax interviews for taxpayers.
The specification, as proposed to be amended, concludes with nine claims. Claims 1 and 3 are independent claims. Claim 9 is an appended claim to one or more computer readable media storing computer executable instructions. These claims may be found at Annex A at the end of this decision.
APPLICABLE LAW
The application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to Sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d), of the Raising the Bar Act. The application was filed after 15 April 2013.
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 …
The standard of proof that applies is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
CASE LAW
In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in this regard. 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 (“Myriad”), [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 Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
Moreover at [98]:-
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
In Research Affiliates LLC v Commissioner of Patents, [2014] FCAFC 150, the Full Court of the Federal Court noted that a consistent approach in UK decisions, as distinct from previous Board of Appeal decisions of the European Patent Office, could be of assistance in the Australian context. At [23] of Research Affiliates:-
“In our opinion, it is more helpful to consider the analysis of the issue in the UK decisions which, with respect, provide a consistent approach. Despite being in the context of the statutory exclusion of computer programs ‘as such’, the UK decisions are of assistance in understanding the distinction to be drawn in the Australian context between an unpatentable business method and a claimed invention which may be patentable if the invention results in an ‘artificial effect’, within the understanding of that concept as explained in NRDC.”
At [36], the court further indicated that applying a test of a “technical contribution”, as opined for example in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371; [2007] RPC 7 (“Aerotel”), can be useful in an analysis of an “artificial effect”.
THE FIRST DECISION
As mentioned above, in the first decision, the delegate found that the claims of the parent application were not for a manner of manufacture. Moreover, at [48], the delegate also concluded there was nothing of substance in the specification, as a whole, which would overcome this finding. Thus, assuming the proposed amendments applying to the current application do not contravene subsection 102(1), the first decision remains highly persuasive to the present claims, as proposed to be amended.
THE EXAMINATION REPORT
While the claims, as proposed to be amended, are different from those the subject of the examination report, it would nonetheless appear helpful to outline the objection from that report in this case.
The relevant content of the report is as follows:-
“The application is not for a manner of manufacture within the meaning of paragraph 18(1)(a) of the Patents Act for the reasons set out in HRB Innovations, Inc. [2018] APO 63 as the application is in the same terms. This matter will now be referred to a Hearing Officer with a view to refuse this application. You have seven (7) days from the date of this report to request to be heard.
As per the above hearing decision there is no patentable subject matter present within the entire specification. As such there is no need to consider other grounds for objection and opinion on novelty and inventive step is reserved.” (Emphasis in the original)
SUBMISSIONS
The applicant filed three sets of written submissions for the present matter. The first set was responsive to the original hearing notice and also included the above-mentioned proposed amendments.
The second set referred to and discussed the subsequent allowance of a corresponding US application. Moreover, that set also referred to the guidance on IP Australia’s website in respect to the patenting of computer software. More specifically, the applicant noted the discussion therein around the patentability of an improved user interface, and submitted the improvement to the user interface in the present case would similarly render the presently claimed subject matter patentable.
The third set was responsive to an invitation from the Patent Office to address any relevance to the present matter arising from a Federal Court decision, Rokt Pte Ltd v Commissioner of Patents, [2018] FCA 1988 (“Rokt”).
With reference to the specification, the applicant described the problems existing in the art at the relevant time as technical problems. In solving these problems, the applicant described the claimed generation of prototypes as involving particular and specific technical steps and, specifically, that the statistical analyser performs specific technical steps to generate the plurality of prototypes. Moreover, the applicant stated that the contribution is in the technical field of analysis, prototyping and modelling techniques to provide an improved machine to predict the necessary and relevant information for presentation to a user. Thus, the applicant submitted that the inventive contribution to the art was more than a scheme requiring generic computer implementation.
In the first set of submissions, the applicant also generally followed the four-step approach outlined in Aerotel. See [42] of the first decision for an elaboration of that approach.
The applicant stressed the importance, under the law, of construing the claimed features, and identifying the contribution to the art, as a whole. With reference to [41] of the first decision, the applicant acknowledged the delegate’s statement that cluster analysis techniques were part of the state of the art, but submitted this single feature should not be considered in isolation. That is, the claimed invention includes a combination of features and steps.
In determining the actual contribution to the art, the applicant suggested there was insufficient evidence of the state of the art, either from the specification itself or presented from elsewhere, to show that the presently claimed features did not provide an actual contribution to the art. Moreover, in terms of excluded subject matter, the applicant referred to RPL to indicate that a patentable invention may include claims having both technical and non-technical features. Furthermore, a computer-implemented method can be patentable where the invention lies in the way the method is carried out in the computer. The applicant submitted the present invention fell into these patentable categories. Finally, in arguing the actual contribution was technical in nature, the applicant referred to the defined operational features of the statistical analyser, the data importing features, the pre-screen determinations, the classifier and the user interface to submit that this included a combination of technical steps performed by a computer.
In the second set of submissions, the applicant presented a notice of allowance from the US Patent Office for the corresponding US application. The applicant indicated that the presently proposed claims were directed to substantially the same subject matter as allowed in the corresponding US application. Moreover, the applicant referred to the US examiner’s finding that reducing the number of interview questions appeared to be solving a technical problem. The applicant also referred again to the absence of evidence of prior art or of the state of the art, in the present case, to submit that the claimed technical features provided a contribution to the state of the art.
With reference to Patent Office guidance on the IP Australia website around the patentability of an improved user interface, the applicant particularly highlighted the discussion that the improvement to the interface, in that example, provided a technical benefit as it allowed actions to be completed in a more efficient manner without clicks. In the present case, the applicant noted that the presently claimed invention similarly provided an improvement to the user interface as it provided a user interface that presented a relevant portion of a tax interview, without presenting the full tax interview. The applicant stated that this increased the efficiency of using the tax interview.
In the third set of submissions, the applicant relied generally on three principles, said to come from the Rokt decision, to support the presently claimed invention. Firstly, that a technological innovation may be patentable if it solves an overall business problem and also solves a technical problem, or if the business problem was translated into a technical problem. The applicant presented the analogy that Rokt related to ingenuity in computer operation to determine when and what to display so that users were not shown advertisements indiscriminately, and compared that with the present case of users being presented with a relevant, simplified tax interview rather than the full tax interview. Secondly, that the use of the computer is integral rather than incidental to the invention. Thirdly, that the new, claimed combination of features was foreign to the normal use of a computer at the priority date.
DISCUSSION
In view of the persuasive nature of the first decision, it would be useful to compare the claims of the current application, as presently proposed to be amended, against the claims the subject of the first decision. Claim 1 of the parent application may be found at Annex B.
The first claims in each case appear to be most closely aligned. For instance, claim 1 in each case is directed to a system for generating or presenting a simplified tax interview to a taxpayer. The system in each case comprises substantially the same features, albeit those features are ordered differently across the two claims. Amongst those features, the only substantive differences appear to be as follows. Firstly, the result of the cluster analysis in claim 1 of the current application is more detailed. That is, the application of cluster analysis to the tax data generates a plurality of clusters, wherein each cluster is based on an identified plurality of previously prepared tax returns sharing one or more indicator variables. Secondly, claim 1 of the current application defines the storing of a plurality of prototypes for tax returns and the corresponding indicator variables. Such a storage feature is not present in claim 1 of the parent application. Thirdly, the system of claim 1 of the current application results in generation of a simplified tax interview based on a plurality of portions of the full tax interview, wherein the plurality of portions are selected based on the prototype identified by the classifier. Claim 1 of the parent application defines the presentation of a portion of the full tax interview.
Amongst the claims of the parent application dependent on claim 1, only claim 7 may be said to generally cover any of the above three points. Claim 7 in that case relates to presenting a plurality of portions of the full tax interview to the taxpayer.
Independent claims 8 and 15 of the parent application are noticeably broader than claim 1 of the parent application. For instance, claim 8 is silent in respect to the application of cluster analysis to analyse the plurality of tax returns. Claim 15 is silent in respect to associating or comparing pre-screen data for a tax return with the indicator variables. Consequently, claims 8 and 15 need not be considered further for comparative purposes. Moreover, the claims of the parent application dependent on claims 8 or 15 do not otherwise go towards claim 1 of the current application any more than claims 1 and 7 of the parent application.
In summary, claim 1 of the current application, and similarly claims 3 and 9, principally differ from the claims of the parent application in respect to the first two differences mentioned above. The question then is whether those two differences add in such a way to the combination of claimed features refused in the first decision that there is now a manner of manufacture in the present claims.
In the first decision at [37], the delegate formed the view that the substance of the claimed invention in that case appeared to lie in the manner in which the user interface was generated. More specifically, the substance lay in the use of cluster analysis to sort or filter tax-related information. At [39] - [41] of the first decision though, the delegate noted passages of the specification to find that the use of cluster analysis was part of the state of the art at the relevant time. The delegate thus re-stated at [41] that the substance of the invention related to the use of cluster analysis to filter information and determine appropriate indicator variables and prototypes for simplified tax review purposes. The delegate then further stated that, whilst a computer system may be used to perform this in a quicker, more efficient manner, that outcome is not predicated by any enhancement in the computer system itself.
For at least claims 1, 3 and 9 of the current application, one may add that the substance of the claimed invention further lies in the cluster analysis generating a plurality of clusters, wherein each cluster is based on an identified plurality of previously prepared tax returns sharing one or more indicator variables, and that the plurality of prototypes and corresponding indicator variables are stored. For completeness, one may also add the resultant generation and presentation to the taxpayer of a simplified tax interview based on a plurality of portions of the full tax interview, wherein the plurality of portions are selected based on an identified prototype. On the other hand, these aspects merely relate to generating specific groupings of data, how those groups are generated and what they represent, and to the storing of associated data types, and to the generation and presentation of the appropriate simplified tax interview. In combination with the remainder of the features defined in the current claims 1, 3 and 9, there is nothing of substance evident that relates to any enhancement of computer functionality, either amongst devices individually or collectively. That is, there is no improvement evident in the computer technology as such. Alternatively, there is no technical contribution evident to the art.
In submissions, the applicant made much of the absence of evidence of relevant prior art or the state of the art in this case to indicate that the applicant had made a pertinent contribution to the art. On the other hand, the claimed invention does not qualify where, as in this case and in following the Aerotel approach for example, the actual or alleged contribution is non-technical.
In a similar way, the present case may be distinguished from some user interface examples, such as on the IP Australia website. The relevant webpage ( discusses an improved user interface where a user moves a cursor with a mouse over designated areas of a screen to select items rather than clicking. The improvement to the interface is stated to provide a technical benefit as it allows actions to be completed in a more efficient manner without clicks. In the present independent claims though, the alleged improvement, regarding the interface, is merely in the presentation of information. That is, the improvement lies in the user merely being presented with less of a tax interview than a full tax interview. There is no reduced, or more efficient, technical activity arising from the user interface in this case.
The applicant further made the analogy of the present, alleged invention with Rokt. The applicant stated that case involved ingenuity in computer operation to determine when and what to display so that users were not shown advertisements indiscriminately. It may be said that this is a similar concept to the generation of a simplified tax interview to specific taxpayers in the present case. The Rokt case went further though. In preferring the evidence of Professor Verspoor in Rokt, Robertson J stated, at [203], that there was an improvement in computer technology that involved a new layer of engagement offers and the insertion of a widget, or computer program code, into publisher content to serve the engagement offer. Moreover, upon the widget in the client device determining an acceptance of the engagement offer by the user, a selected advertising message was presented to the user. Furthermore, Robertson J noted, at [205], that the invention “provided a single platform in which user engagement data could be coupled with transactional data and user context data to provide a personalised ranking of engagement offers to the user”. In this regard, it was found that there was a technical solution provided by this platform or, alternatively, that a business problem was translated into a technical one. No such decided improvement in computer technology or technical activity is evident in the present independent claims.
The dependent claims of the current application, aside from claim 8, substantially repeat features of dependent claims of the parent application, which were found in the first decision to be not for a manner of manufacture. Claim 8 merely adds the further step of augmenting the identified prototype with an additional prototype and corresponding indicator variable not based on one of the plurality of prototypes determined by the plurality of generated clusters. I see nothing in these claims drawing them closer to defining a requisite technical contribution to the art or improvement in the computer technology.
The body of the specification describes and illustrates computer architectures and functionality to provide the operational aspects of the claimed invention. Moreover, various additional data and data types and additional sourcing of data are described to enhance the tax interview presented to the taxpayer. On the other hand, the computer design and functionality to enable the inputs and processes to achieve the claimed or described outcomes do not appear to go beyond standard computing capabilities and interactions at the priority date. Again, an improvement in the computer technology or a technical contribution to the art is not apparent in this case.
CONCLUSION
I conclude the claimed invention is not for a manner of manufacture. Moreover, I consider there is nothing in the body of the specification that could overcome this finding.
In the present case, it is appropriate that the application be refused.
M. G. Kraefft
Delegate of the Commissioner of PatentsAnnex A
1.A system for generating a simplified tax interview to a taxpayer that is a subset of a full tax interview, the system comprising:
a data store storing a plurality of tax returns from disparate taxpayers;
a typecasting engine comprising:
a statistical analyser operable to:
import tax data relating to the plurality of tax returns from disparate taxpayers from the data store;
apply cluster analysis to the tax data to generate a plurality of clusters, wherein each cluster is based on an identified plurality of previously prepared tax returns sharing one or more indicator variables;
determine a plurality of prototypes for tax returns based on the plurality of clusters;
determine a plurality of indicator variables corresponding to each prototype, wherein each of said plurality of indicator variables is a specific type of tax data item;
storing the plurality of prototypes and corresponding indicator variables in the data store,
a data import engine, operable to:
import prescreen tax data for the taxpayer from a prior tax return;
download one or more tax forms corresponding to the taxpayer; and
based at least on the prescreen tax data and the tax forms, determine one or more prescreen values for indicator variables of a current tax return being classified;
wherein the typecasting engine further comprises a classifier operable to automatically identify a prototype for a tax return from the plurality of prototypes based on the one or more prescreen values for indicator variables of the tax return being classified, anda user interface engine operable to generate and present a simplified tax interview, based on a plurality of portions of the full tax interview to the taxpayer, without presenting the full tax interview, wherein the plurality of portions are selected based on the prototype identified by the classifier.
3.A computer-implemented method of generating a simplified tax interview to a taxpayer, that is a subset of a full tax interview, the method comprising the steps of:
importing tax data relating to a plurality of tax returns from disparate taxpayers from the data store;
applying cluster analysis to the tax data to generate a plurality of clusters, wherein each cluster is based on an identified plurality of previously prepared tax returns sharing one or more indicator variables;
determining a plurality of prototypes for tax returns based on the plurality of clusters;
determining a plurality of indicator variables corresponding to each prototype, wherein each of said plurality of indicator variables is a specific type of tax data item;
storing the plurality of prototypes and corresponding indicator variables in the data store;
importing tax data for the taxpayer from a prior tax return;
downloading one or more tax forms corresponding to the taxpayer;
determining, based at least on the tax data and tax forms, one or more prescreen values for indicator variables of a current tax return being classified;
automatically identifying a prototype for a tax return from the plurality of prototypes based on the one or more prescreen values for indicator variables of the tax return being classified;
generating a simplified tax interview based on a plurality of portions of the full tax interview to the taxpayer, wherein the plurality of portions are selected based on the identified prototype; and
without presenting the full tax interview, presenting the plurality of portions of the full tax interview to the taxpayer.9.One or more computer readable media storing computer executable instructions which, when executed by a computer performs a method of generating a simplified tax interview to a taxpayer according to any one of claims 3 to 8.
Annex B
1.A system for presenting a simplified tax interview to a taxpayer, comprising:
a data store storing a plurality of tax returns;
a typecasting engine comprising:
a classifier operable to automatically determine a prototype for a tax return being classified based on values of a plurality of indicator variables associated with prescreen data for the tax return being classified,
wherein each of said plurality of indicator variables is a specific type of tax data item and the corresponding values of the indicator variables are the specific tax data item for the tax return being classified;
said at least one prototype corresponding to an underlying characteristic of the tax return that influences the tax interview; and
a statistical analyser operable to apply cluster analysis to analyse the plurality of tax returns and identify the plurality of indicator variables and corresponding prototypes;
a data import engine, operable to:
import tax data for the taxpayer for a prior tax return;
download one or more tax forms corresponding to the taxpayer, and
based at least on the tax data and the tax forms, determine one or more values for the indicator variables for the tax return being classified; anda user interface engine operable to present a portion of the full tax interview to the taxpayer without presenting the full tax interview, wherein the portion is selected based on the prototype determined by the classifier and is personalized to the taxpayer’s tax data.