HRB Innovations, Inc.
[2018] APO 63
•14 September 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
HRB Innovations, Inc. [2018] APO 63
Patent Application: 2018200942
Title:Simplified tax interview
Patent Applicant: HRB Innovations, Inc.
Delegate: Isaac Tan
Decision Date: 14 September 2018
Hearing Date: Written Submissions filed 20 July 2018
Catchwords: PATENTS – section 45 – examiner objection hearing – manner of manufacture – computer implemented invention – preparation of a tax return – substance of the invention relates to a scheme of sorting information – use of cluster analysis – invention does not result in improvement in the functioning of the computer – application refused
Representation: Charles Yip, Patent Attorney of FB Rice Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018200942
Title:Simplified tax interview
Patent Applicant: HRB Innovations, Inc.
Date of Decision: 14 September 2018
DECISION
I find that the claimed invention is not for a manner of manufacture.
I direct that the application be refused.
REASONS FOR DECISION
Background
HRB Innovations, Inc. (applicant) filed patent application 2018200942 (application) on 8 February 2018. The application is a divisional of 2016201095, and claims a priority date of 24 February 2015.
On 6 April 2018, the Applicant requested full examination. The request was accompanied with a statement of proposed amendments to the description and claims. On 24 April 2018, before an examination report had been issued, the Applicant requested to be heard. As this is an unusual situation, a delegate of the Commissioner contacted the Applicant to advise that an examination report will first be issued before commencing the process for a hearing.
A first examination report (examination report) was issued on 16 May 2018. On 24 May 2018, the Applicant was invited to provide written submissions by 20 July 2018.
The Applicant’s submissions were filed on 20 July 2018, and are accompanied with further proposed amendments to the description and claims of the specification.
The specification
The invention relates generally 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 such that a computer system presents only those relevant portions of the tax interview to the user without presenting the full tax interview.
As background, the specification states that:[1]
Traditionally, preparing a tax return by or on behalf of a taxpayer has been a laborious task. Because the same basic return (with minor variations) serves for all taxpayers, it must necessarily be comprehensive to address the various sources of income, deductions, and credits that any taxpayer might claim.
Technological approaches to preparing tax returns have ordinarily involved merely presenting tax returns that were traditionally done on paper in much the same way on a computer. However, this approach means that there is little advantage to using a computer because the tax return process remains just as burdensome to a user. These computer based approaches to tax interviews further assume that the tax interview cannot be customized for the user, which is a significant limitation of the prior art.
Some services have attempted to abbreviate a tax interview but such services in the art are performed by humans and human error can lead to omissions with serious consequences to the user.
Therefore there is a need for a technological approach to performing tax interviews efficiently and effectively and more than simply presenting a tax interview on a computer. That is, there is a need for an automated computer based generation of tax interview that reduces the burden on a user but at the same time analyse the data required such that all the necessary information can be included in a particular return and human error is avoided.
[1] Specification, [0003]-[0006].
To address these issues, the specification describes a system for presenting a simplified tax interview to a taxpayer. In a first embodiment:[2]
…the invention includes 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…
[2] Ibid [0010].
The plurality of tax returns may comprise a plurality of previously prepared tax returns, are specially prepared training data representing typical taxpayer profiles, or a combination of actual and synthetic returns. Two embodiments are illustrated in Figure 3 and 4, both figures have been reproduced below:
At item 306, a statistical analyser is used to analyse the imported data using some form of cluster analysis. While it is possible to utilise many different clustering algorithms in various embodiments of the invention, some specific examples described in the specification includes density based clustering techniques such as DBSCAN and OPTICS in situations where tax interview response data is not available. Alternatively biclustering techniques such as SAMBA and FABIA may be appropriate in situations where response data is available as well.
At 308, prototypes are generated and stored. These prototypes will contain information usable to determine a set of interview questions to present to user, or they may be the interview questions themselves. Alternatively, the prototypes may contain information to identify a cluster or clusters of returns, which can subsequently be used to determine the relevant interview questions to present to the user. The indicators variables are broadly one or more pieces of prescreen data, binary variables, or continuous variables. Where the data store is insufficient, or does not contain a robust set, additional prototypes and indicators may be added to augment the data store.
Finally, at 312, relevant questions are generated in order to comprise the tax interview.
In another embodiment, the tax return may be based on responses to interview questions provided by a user. This is shown in Figure 4. Similar to the embodiment shown in Figure 3, a statistical analyser based on a clustering algorithm is used to assign a score to a cluster. Any prototypes associated with cluster scores above or below a threshold may be determined to be relevant to the return being prepared. Ultimately, the object of the system is to present a user with a minimal set of questions while still eliciting all information needed to correctly prepare the return, without presenting a full tax interview.
Lastly, a non-inclusive list of examples of the indicator variables for a selection of prototypes and the corresponding portions of the tax interview associated with those prototypes are shown in table 1 below:
Values for Indicator Variables Corresponding Interview Portions Rural zip code with deductible expenses but no farm income Prompt for farm income Homeowner claiming mortgage interest deduction Prompt for cash charitable deductions Filing a regular 1040 (non-EZ, non-A) Prompt for cash item expense deductions Household income above a threshold Prompt for charitable deductions Paid locality tax and live in a different state Prompt for vacation days Taxpayer or spouse is over age 65 Prompt for social security income Taxpayer is head of household and doesn’t have any earned income Prompt for alimony income Returning taxpayer has a new address vs. prior year Prompt for moving expenses and/or noncash donations Taxpayer is a noncustodial parent Prompt for alimony payments Taxpayer lives in a non-tax state Prompt for sales tax deduction Taxpayer lives in a location impacted by a major natural tragedy (storm, tornado, hurricane) Prompt for casualty loss Taxpayer has unemployment income Prompt for job-hunting expenses Taxpayer had a W-2 withholding for a different state Prompt for a credit for taxes paid to another state Taxpayer has a dependent that is over age 19 Prompt for tuition and fees and/or education credit Table 1
The claims
The specification, as proposed to be amended, ends with 18 claims. Claims 1, 8 and 15 are independent claims. These claims read as follows:
Claim 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 analyze 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; and
a 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.Claim 8
A method of presenting a simplified tax interview to a taxpayer, comprising the steps of:
importing prescreen data associated with a tax return for the taxpayer;
comparing said prescreen data to a plurality of indicator variables, wherein each of said plurality of indicator variables is a specific type of tax data item;
automatically identifying at least one prototype based on said comparing,
said at least one prototype corresponding to an underlying characteristic of the tax return that influences the tax interview;
said prototype comprising a plurality of indicator variables;
identifying a first portion of the full tax interview based on the at least one prototype; and without presenting the full tax interview, presenting the identified portion of the full tax interview to the taxpayer.Claim 15
One or more computer-readable media storing computer-executable instructions which, when executed by computer perform a method of determining a simplified tax interview for a taxpayer, the method comprising the steps of:
importing tax data relating to a plurality of previously prepared tax returns from a data store storing said tax data;
applying cluster analysis to said tax data to generate a plurality of clusters, each of said clusters including a plurality of previously prepared tax returns;
based on said clusters, automatically determining a plurality of prototypes,
each of said plurality of prototypes corresponding to an underlying characteristic of the tax return that influences the tax interview;
for each prototype, determining plurality of indicator variables corresponding to said prototype, wherein each of said plurality of indicator variables is a specific type of tax data item; and
storing said prototypes and said indicator variables in a prototype data store.Examiner Objections
The examiner objection from the report of 16 May 2018 (examination report) raised objections under the headings ‘Patentable subject matter’, ‘Section 40 (support, disclosure, clarity, lack of unity)’ and ‘Novelty and inventive step’.
Under ‘Patentable subject matter’, the examiner raised an objection indicating that the claims do not define a manner of manufacture. The relevant parts of this objection states:
From reading your application as a whole, the substance of your invention relates to presenting a personalised tax interview for a tax return which is simpler than a full tax interview. The claims define the use of a computer to collect/import data, analyse said data, and determine a prototype for a tax return in order to present a portion of a full tax interview. The present invention solves the problem associated with complex and burdensome tax return interviews with irrelevant categories of questions presented to users.
In weighing up the variety of factors which indicate what the substance of the claimed invention is and whether or not the claimed invention as a matter of substance relates to patentable subject matter, I have concluded that the claimed invention, as a matter of substance, does not relate to patentable subject matter. The substance of your invention is merely a scheme for presenting a simplified personalised tax interview for a tax return.
The nature of the invention uses computers as a matter of form, however, as a matter of substance the invention does not solve a “technical” problem within the computer or outside the computer. Rather, as a matter of substance the invention solves an administrative problem. The invention does not improve the functioning of the computer (irrespective of the data being processed), and only requires a generic computer implementation of a scheme in collecting data, analysing data and displaying simplified personalised tax interviews based on the analysed data. The computer is merely an intermediary tool configured to carry out the scheme as stated above, but adds nothing to the substance of the idea.
Under ‘Section 40 (support, disclosure, clarity, lack of unity)’:
Claim 14 is not clear because I cannot find an antecedent to “the typecasting engine” when the claim is appended to claim 9. For the purpose of this examination, I have construed claim 14 to be appended to claim 10.
Under ‘Novelty and inventive step’:
Claims 1 - 14, 16 - 19 are not novel when compared with D1. Although it was published after the priority date of the present claims, its information has an earlier priority date than the present claims.
D1 relates to international application WO 2016/105584, which was published on 30 June 2016 and claims an early priority date of 23 December 2014. I am satisfied that the claims, as proposed to be amended, have addressed the objection under section 40.
Applicable Law
The request for examination of the present application was filed on 6 April 2018. As a consequence, substantive amendments to the Patents Act 1990 (the Act) bought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 applies to the present application.
Therefore, the standard of proof that applies in the present case is the balance of probabilities. I must accept the application if I am 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 Act provides for a standard patent:
(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; and
(c) is useful; and
(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in title to the invention.The relevant part of Section 40 provides as follows:
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
Case Law on Manner of Manufacture
In National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (NRDC), the High Court provided a statement of the law in this regard:[3]
...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.
[3] National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252, [22].
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:[4]
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.
[4] Ibid [25].
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 (Myriad) the court considered that:[5]
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.
[5] D'Arcy v Myriad Genetics Inc [2015] HCA 35, [23].
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:[6]
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.
[6] Ibid [144].
In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL), the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme:[7]
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. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions.
[7] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, [96].
and that:[8]
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.
[8] Ibid [98].
In Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (Research Affiliates), the Full Court of the Federal Court noted that:[9]
[9] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, [94] citing Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62; Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1991) 33 FCR 218; CCOM Pty Limited v Jiejing Pty Limited [1994] FCA 1168; (1994) 51 FCR 260; Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110.
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 determining whether an invention contains patentable subject matter, the delegate in Aristocrat Technologies Australia Pty Limited [2016] APO 49 (Aristocrat) provided the following summarisation:[10]
[10] Aristocrat Technologies Australia Pty Limited [2016] APO 49, [35].
I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information.
However, in Todd Martin [2017] APO 33, the delegate made the following comments regarding the ‘range of matters’ set down in Aristocrat:[11]
With this list of points, the delegate in the Aristocrat case was not intending to indicate a list of conditions, for computer-implemented cases, to be met to define a manner of manufacture. That is evident from the delegate’s statement that the list was not intended to be exhaustive. Moreover, it would appear improper to find there was a manner of manufacture simply on the basis that one or more points could be answered in favour. In the present case for example, it may be that at least the fifth dot-point, regarding whether the application of the method produces a practical and useful result, is satisfied. On the other hand, that consideration on its own would be insufficient in the present case. Conversely it would also appear improper to find there was no manner of manufacture simply on the basis that one or more points could not be answered favourably. Rather than these points being seen as conditions to be met, they should be seen as relevant matters to consider, as the delegate stated at [35]. The substance and contribution of the claimed invention in each case should be considered on its merits overall and various points under the law would appear to have varying degrees of relevance depending on the case.
[11] Todd Martin [2017] APO 33 at [47]; Similar consideration was also applied in Bio-Rad Laboratories, Inc. [2017] APO 38, [37].
Manner of Manufacture Submissions and Considerations
In setting out their case, the Applicant submits that:[12]
The present invention provides a technical contribution by, inter alia, providing an improved user interface. The improvements to the technology of the graphical user interface are technological in nature by virtue of using the claimed prototypes and cluster analysis techniques (described in the novelty section below) that are employed on large data sets of past returns to identify the underlying characteristics of the taxpayers that inform which questions are relevant to them. This improves the graphical user interface by making it less laborious to complete the tax interview, thereby addressing the problems identified with the prior art. As such, the present claims incorporate specific technologic modifications to improve the functioning of computer technology.
[12] Applicant Submissions, [22].
The Applicant is also of the view the examiner has oversimplified the substance of the invention to relate to ‘presenting a personalised tax interview for a tax return which is simpler than a full tax interview.’ In any event, the Applicant submits that
…even under this characterization of the claims (which we do not admit), displaying only the most relevant information in a graphical user interface (as provided by the present invention) is an improvement of the user interface.
In support of their position, the Applicant refers to Aristocrat, where the hearing officer held (emphasis added by the Applicant):[13]
It is reasonable to view the substance of the invention as the presentation of game information in a way that allows the game and bet denomination to be selected in a single action. It is apparent that this would achieve a practical and useful result by simplifying the use of the gaming machine by the player. Looking at the relevant considerations, the invention appears to require only generic computer implementation. However, it does not appear that it was normal (at the priority date) to configure a gaming machine interface in this particular way. Here information is located in a particular position and functionality is generated by the use of this positional location to improve the gaming machine. The contribution is technical in nature, and achieves a practical and useful result. On balance, I am satisfied that the claimed invention is a manner of manufacture.
[13] Aristocrat Technologies Australia Pty Limited [2016] APO 49, [48] with reference to Rhodes' Application [1973] RPC 243.
Drawing on delegate’s determination in Aristocrat, the Applicant submits that:
Turning to the presently claimed invention, we submit that similarly, by displaying only the relevant questions to the tax preparer, this increases efficiency over a conventional user interface. In particular how the user only needs to answer relevant questions presented to them that reduces the number of corresponding answers along with corresponding user interactions. For example, the user would not need to enter “no” or “not relevant” for a question that does not apply to them. Such improvement clearly provides a technical contribution and provides a practical useful result. Furthermore, this is analogous to Aristocrat where the inventive contribution provided, and resulted, in simplified use of a gaming machine.
I do not disagree that by presenting, and requiring a user to only answer relevant questions, the number of corresponding answers along with corresponding user interactions would be reduced. However, if this was where the substance of the invention lies, then it would appear to me that the claimed invention is directed towards no more than the mere presentation of intellectual information. In any event, it seems clear to me, that the substance of the invention lies in the manner upon which the user interface is generated. That is, in the use of cluster analysis to sort or filter information. Specifically, tax related information.
According to the specification, cluster analysis is defined as ‘the study of how to group a set of objects in such a way that similar objects are placed in the same group. These categories need not be known a priori, or even have any semantic meaning associated with them.’[14] While the claims do not restrict cluster analysis to any specific technique, it is worth noting that the specification does provide a brief explanation of various techniques which could be used.
[14] Specification, [0035].
In one embodiment, a cluster analysis technique such as density-based clustering can be employed. In another, biclustering may be used. Both techniques are described in the specification as follows:[15]
Density-based clustering defines clusters to be areas of higher density in a higher-dimension space representing the various features of the objects. Thus, clusters in this application will contain tax returns that share many similar features. As such, the portions of the tax interview that are relevant will be common among the returns in a cluster.
Biclustering allows the simultaneous clustering of the dependent and independent variables of a data set. In this way, a set of dependent variables (here, tax-data items) that exhibit similar behaviour across a set of independent variables (here, for example, stored responses to interview questions) can be identified, and vice versa. These biclusters can then be used to predict the interview questions that will be relevant for a given set of prescreen data.
[15] Ibid [0035]-[0036].
Specifically:[16]
One of skill in the art will appreciate that many different clustering algorithms are possible and may be employed in various embodiments of the invention. For example, density-based clustering techniques such as DBSCAN and OPTICS may be appropriate where tax interview response data is not available, while biclustering techniques such as SAMBA and FABIA may be appropriate where response data is available as well. Other cluster analysis and non-cluster analysis techniques, now known or later discovered, may also be used to generate prototypes and indicator variables, and are considered to be within the scope of the invention.
[16] Ibid [0051].
From the above, it appears clear to me that cluster analysis techniques were part of the state of the art at the relevant time. In this respect, the substance of the invention must therefore relate to the use of cluster analysis to filter information and determine appropriate indicator variables and prototypes, for simplified tax review purposes. 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. That is, the act of using cluster analysis, generally, for its intended purpose, cannot be said to result in improvement in the functioning of the computer.
For completeness of the relevant consideration, the Applicant has provided submissions addressing the issue of manner of manufacture under the approach taken by the UK Court of Appeal in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2006] EWCA Civ 1371 (Aerotel).[17] Aerotel sets out an approach in four steps:[18]
1. properly construe the claim;
2. identify the actual contribution;
3. ask whether it falls solely within the excluded subject matter; and4. check whether the actual or alleged contribution is actually technical in nature.[17] Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2006] EWCA Civ 1371; [2007] 1 All ER 225.
[18] Ibid [40]; This four step test has also been referred to in Konami Gaming, Inc. [2016] APO 46, [29]-[31]; Bally Technologies ANZ Pty Ltd [2017] APO 14, [38]; Todd Martin [2017] APO 33, [22]; at [35].
In relation to step 2, the delegate in Elot, Inc. [2017] APO 55 noted (emphasis in quote):[19]
However, it is important to note that, in the above quotation from Research Affiliates, the Full Court stated that “[t]he second step [‘identify the actual contribution’] requires the court to consider what the inventor ‘has really added to human knowledge’, looking at substance and not form” (emphasis in bold added). I have no reasons to consider that the term “human knowledge” is to be interpreted as limited to the common general knowledge in the particular art. Hence following the Aerotel approach to determine the inventor’s contribution, I should not limit my consideration to the advancements made by the inventor with respect to the common general knowledge. In determining the inventor’s actual contribution, I need to consider the state of the art at the priority date, in other words, what was known in the art including with respect to specific pieces of prior art information. I consider that this is the only way in which I could determine “what the inventor ‘has really added to human knowledge’” (emphasis in bold added).
[19] Elot, Inc. [2017] APO 55, [48].
On this point, the Applicant submits:
Therefore the presently claimed invention, and the inventive contribution, must be considered in context of the prior art at the priority date. The claimed invention is not conventional and not routine because it includes a novel use of automatically determined prototypes based on a plurality of indicator variables to, in turn, provide an improved user interface that presents a relevant portion of a tax interview. This increases efficiency of using the tax interview. Importantly, the solution is more than merely a computer automating a known tax interview process which, as noted in the background, had provided little advantage over conventional methods.
I do not disagree that one may form a view of the state of the art, at the priority date of the claimed invention, based on the prior art. However, just as it is inappropriate to exclude an invention merely because an idea or concept is known, one would also not simply conclude that an invention constitutes patentable subject matter just because a specific optimisation claimed in the patent is not known.[20] In my view, the relevant question isn’t whether a computer had been programmed in a manner which granted it functionality it previously did not have but rather, whether said programming results in an improvement to the computer itself.[21]
[20] See generally Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51, [454]; Apple Inc. [2018] APO 54, [40]-[41].
[21] See Trading Technologies International, Inc [2017] APO 13, [31].
In Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421, in considering the question of what an improvement in the computer is, Perram J noted:[22]
In some senses, any form of software residing in a computer which performs a task is an improvement in the computer because without it the computer could not perform the task. Plainly, that is not what was intended. Certainly, ‘improvement’ seems designed to capture the computer performing some activity which it was not possible to perform prior to the method. Thus in IBM the method for drawing the curves without using floating point arithmetic opened the way for the computer to be used more efficiently than had been previously possible and, I suppose, the method for using Chinese characters in CCOM might arguably be seen the same way (although that seems less clear to me).
[22] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421, [194].
In the present case, the specification makes it clear that the use of cluster analysis, generally, or the use of density-based clustering or biclustering, specifically, is part of the state of the art. I do not agree that using cluster analysis, in the manner which it was designed and intended to be used, could be said to have ‘opened the way for the computer to be used more efficiently than had been previously possible.’[23]
[23] Ibid [194]; See also Volbroker.com Limited [2018] APO 53; Amplero, Inc. [2018] APO 59; Lempco Industries, Inc. [2018] APO 61 where the delegate came to a similar conclusion.
Consequently, I am not satisfied that on balance, the present invention as claimed would qualify as being a manner of manufacture. This applies to all of the claims. Furthermore, there is nothing of substance in the specification as a whole which would, in my view, overcome this finding.
Novelty
The examiner objected that Claims 1 - 14, 16 – 19 as filed are not novel when compared with D1
Although the claims as proposed to be amended were not considered during examination, in light of my conclusion in relation to manner of manufacture, it is not necessary for me to consider this ground.
Conclusion
In this case, I have found the claimed invention is not for a manner of manufacture. Furthermore, there is nothing of substance in the specification as a whole which would, in my view, overcome this finding.
I note that the applicant filed a divisional application, 2018206822, on 20 July 2018 having an identical description to the present application. In these circumstances, it seems appropriate to me to refuse the present application in the public interest to avoid any uncertainty and I do so.
Isaac Tan
Delegate of the Commissioner of Patents
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