Intuit Inc. - [2022] APO 27

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Intuit Inc. [2022] APO 27

Patent Application: 2018276026

Title:System for accessing transactional data

Patent Applicant: Intuit Inc.

Delegate: Dr W.E. Guinea

Decision Date: 8 April 2022

Hearing Date: Written submissions filed 10 March 2022

Catchwords: PATENTS – standard patent – Examiner objections – manner of manufacture – substance of the invention resides in a scheme for storage and access of financial transaction data – all claims lack a manner of manufacture – no patentable subject matter in application – application refused.

Representation: Patent attorney for the applicant: Davies Collison Cave Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2018276026

Title:System for accessing transactional data

Patent Applicant: Intuit Inc.

Date of Decision: 8 April 2022

DECISION

None of the claims are for a manner of manufacture. There is no material within the application that would lead to a manner of manufacture if made the subject of a claim. The application is refused.

REASONS FOR DECISION

Background

Patent application 2018276026 (the “application”) entered national phase from PCT/US2018/030141 on 15 October 2019, in the name of Intuit Inc. (the “Applicant”). The application has an earliest priority date of 31 May 2017.
Examination of the application was requested on 15 October 2019. The first of six adverse examination reports issued on 21 August 2020, with the second examination report issuing on 6 November 2020, the third examination report issuing on 9 February 2021, the fourth report issuing on 12 April 2021, the fifth report on 15 June 2021 and the sixth report on 29 July 2021. All these reports objected to the claims as not being for a manner of manufacture, and this remains the only objection outstanding on the application.
On 19 August 2021, the Applicant wrote to the Commissioner requesting to be heard in relation to the outstanding objection. On 20 January 2022, the Commissioner wrote to the Applicant, advising them that the hearing would be by way of written submissions due to be filed five weeks from that date. The Applicant requested, on 15 February 2022, a further two weeks for filing submissions, this request being granted. The Applicant subsequently filed their submissions on 10 March 2022 (the “submissions”).
The Applicant also filed proposed amendments with the submissions. As I see no issue with the allowability of these proposed amendments, this decision is made with respect to the specification as currently proposed to be amended.

The Invention as Described

The application deals with what may be broadly understood as a method and system for storing and accessing financial transaction data. As discussed at paragraphs [0001] to [0003A] of the description, the invention apparently seeks to address existing deficiencies regarding access to financial transaction data:
“Current standards for exchanging transactional information (e.g., the Open Financial Exchange (OFX), a framework for exchanging financial transactional data and instructions between customers and their financial institutions) do not support the capability to obtain detailed transactional information associated with users. That is, while aggregate-level transactional information may be accessible (e.g., a payment amount of a transaction), transaction details (e.g., line items purchased) are typically unavailable.
In addition, current standards for exchanging financial transactional data typically require point-to-point connections, which grow proportionally with the number of participating organizations, thereby creating bottlenecks. For example, while a point-to-point architecture may be sufficient to support a user’s interactions with a few financial institutions, when the architecture is opened to an arbitrary number of service providers, a point-to-point architecture may become unwieldy. Furthermore, substantial overhead may be required to authenticate numerous participants and maintain participant accounts.
Accessing detailed transactional information associated with users is typically based on a ‘pull’ model driven by explicit requests (e.g., to financial institutions). The detailed transactions may be dispersed across multiple service providers, and it may be difficult or impossible to collect such detailed transactions in a timely manner. This hinders access to detailed transaction information, which could be used to support analytics and insights.
It is desired to address or ameliorate one or more disadvantages or limitations associated with the prior art, or to at least provide a useful alternative.”
The nature of the invention as described is best understood by reference to figures 1 to 6B, which are reproduced below where appropriate.
As can be seen on figure 1, the invention comprises a system 100 that links together, for the purposes of storing and accessing financial transaction data, users 102a-102n, service providers 104a-104n and financial institutions 114a-114n using a registry 106 and transaction storage devices 108a-108n. The users 102 may be any entity that purchases goods and services from any entity that provides such goods and services i.e. the service providers 104. The financial institutions 114 comprise banks, credit card issuers and the like that provide financial services to the user 102 as known in the art. The transaction storage devices 108 may comprise any type of data storage and can include multiple different storage units or devices. Each of the transaction storage devices 108 may have a data store 118 that stores information about transactions. The registry 106 may also include any type of data storage known in the art. Each of these components of the system 100 may communicate using a computer network, as outlined, for example, on figure 6B.

Importantly for the working of the invention, the registry 106 comprises a data store map 112 that maps secure identifiers 116a-116x, for each of the users 102a-102n, to respective universal resource identifiers (“URIs”) 120a-120n. The URIs 120 provide some means, for example a network location, for determining a location of a data store 118. The data store 118 stores detailed transactions 250 associated with a secure identifier 116, as can be seen on figure 2B, which is reproduced below. The secure identifiers 116 could nominally be anything that identifies a user 102 in some way, such as a credit card number, telephone number or email address, and could be generated using encryption techniques, for example hashing, or via other ways of processing a user identifier, for example removing whitespace or special characters spaces in an email address. The use of encryption techniques means sensitive user information is not at risk if the registry 106 is compromised.
Example data items included in a detailed transaction 250 are given on figure 2C, which is reproduced below. Most of these data items are self-explanatory and need not be elaborated on. Suffice to state that each line item 260a-260n in each detailed transaction 250 may comprise additional data as indicated in the figure.

10. Thus, it can be seen that a user 102 may be associated with a secure identifier 116, which in turn is associated with a URI of a data store 120 that provides the location of a data store 118 comprising detailed financial transaction 250 information associated with the user 102. As discussed further below, the system 100 provides for storage of, and access to, detailed transactions 250 of a user 102 in data store 118 via provision of the relevant URI 120.

11. In use the registry 106 can process a variety of requests that enable or make use of the system 100. With reference to figure 3, the registry 106, at step 302, may receive from a user 102, a secure identifier 116 generated from a user identifier, for example a credit card number, using an encoding function. In step 304 a selection of a data store 118 for storing detailed transactions 250 is received by the registry 106, which subsequently stores a registration of the data store 118 with secure identifier 116 at step 306. A service provider 104 may then provide a request, to the registry 106, to look up a data store 118 registered with the secure identifier 116 at step 308. The registry 106 then retrieves the registration of a URI of the data store 120 at step 310 and subsequently transmits the URI 120 to the service provider 104 at step 312, thereby allowing the service provider 104 to look up or store detailed transactions 250 associated with secure identifier 116. It is also possible that the service provider 104 may only be permitted write access to store detailed transactions 250 in the data store without being able to read detailed transactions 250 in the data store 118. Further particular examples of how the system 100 may be used to store and provide access to a detailed transaction 250 are given on figures 4A and 4B.

12. As illustrated by figure 2A, which is reproduced below, the registry 106 may also comprise a linkage manager 204 and validator 206. The linkage manager 204 comprises linkage lists 208a-208n. Each linkage list 208 comprises a set of secure identifiers 116 associated with a user 102, for example linkage list 208a comprises secure identifiers 116a-116h associated with user 102a. One of the secure identifiers 116 in a linkage list 208 may be designated the master secure identifier 210 that is linked to the other “slave” secure identifiers 116. The validator 206 provides functionality to validate the secure identifiers 116 and may specify a type of validation rule or procedure 212 to be followed for a type of secure identifier 214. For example, where the secure identifier 116 corresponds to an email address, the validation rule 212 may specify validation by confirming that an email sent to the address is received by the user 102.

13. The preceding discussion outlines the salient features of the invention as described. As indicated, figures 4A and 4B provide flowcharts outlining steps for managing a detailed transaction 250 according to the invention described, for example using the system 100. These figures are reproduced below. I consider that these are largely self-explanatory, in view of the discussion of the system 100 provided above. Suffice to state that figure 4A comprises, for example, a process of registering a secure identifier 116 of a user 102 generated from a user identifier using an encoding function and performing validation of the user identifier, whilst figure 4B involves, for example, a process comprising the user 102 requesting to assign a secure identifier 116 as a master secure identifier 210, requesting to link a first secure identifier 116a with another secure identifier 116h or requesting the linkage corresponding to a first secure identifier 116a , and then transmitting the second secure identifier 116h based on the linkage

14. Figures 5A to 5C illustrate an example of a particular implementation of the invention described. As discussed at [0077] of the description:

“FIG. 5A illustrates, in accordance with one or more embodiments, the relative timing of steps performed by one or more components described in reference to FIG. 1, FIG. 2A, FIG. 2B, and FIG. 2C, in accordance with the flowcharts in FIG. 3, FIG. 4A, and FIG. 4B. These components include: Bright Bookworm, a small bookseller that is a user (502) ((102a-102n) in FIG. 1), Real Retail, a service provider (504) ((104a-104n) in FIG. 1), a registry (506) ((106) in FIG. 1), Finance Galaxy (508), a financial application with data store capabilities, and a financial institution (510) ((114a-114n) in FIG. 1).”

15. Figures 5A to 5C are reproduced below and are, in my view, largely self-explanatory in view of the preceding discussion of the invention as described. Suffice to note that, as seen from figure 5B, registry 506 comprises a data store map 570 (commensurate with data store map 112) including a secure identifier 572a (commensurate with secure identifier 116) associated with Bright Bookworm 502 and a URI of Finance Galaxy 574 (commensurate with URI of data store 120, noting that Finance Galaxy provides data store capabilities). It should be noted that figure 5C illustrates the data store map 570, after a further secure identifier 572b has been associated with Bright Bookworm 502. Figure 5C also shows a linkage list 578 (commensurate with linkage list 208) demonstrating how secure identifier 572a and secure identifier 572b are linked via a master-slave relationship after a request from Bright Bookworm 502, wherein secure identifier 572b is the master secure identifier 595.

16.

Figure 5D, reproduced below, also provides an example of a particular implementation of the invention described. As indicated at [0091] of the description:

“FIG. 5D illustrates, in accordance with one or more embodiments, the relative timing of steps performed by one or more components described in reference to FIG. 1, FIG. 2A, FIG. 2B, and FIG. 2C, in accordance with the flowcharts in FIG. 3, FIG. 4A, and FIG. 4B. FIG. 5D continues the scenario that was begun in FIG. 5A.”

Figure 5D illustrates a request by Real Retail 504 (commensurate with service provider 104) to look up with the Registry 506 a data store associated with secure identifier 572a. Figure 5D also shows Bright Bookworm 502 querying Registry 506 regarding secure identifier(s) that are linked to secure identifier 572a.

It is quite clear from the discussion of the invention as described that the implementation of the system 100 is not particularly limited, in terms of structure or function, by this discussion or by the particular examples provided in figures 3 to 5D and is left entirely up to the skilled addressee. This is exemplified by the following passages:
“While FIG. 1, FIG. 2A, FIG. 2B, and FIG. 2C show configurations of components, other configurations may be used without departing from the scope of the present disclosure. For example, various components may be combined to create a single component. As another example, the functionality performed by a single component may be performed by two or more components.” ([0049])
“FIG. 3 shows a flowchart in accordance with one or more embodiments of the present disclosure. The flowchart depicts a process for accessing transactional data. In one or more embodiments, the process described in reference to FIG. 3 is practiced using the system (100) (e.g., the registry (106), a transaction storage device (108), and a data store (118),) described in reference to FIG. 1, FIG. 2A, FIG. 2B, and FIG. 2C above, and/or involving the computing system (600) described in reference to FIG. 6A. In one or more embodiments of the present disclosure, one or more of the steps shown in FIG. 3 may be omitted, repeated, and/or performed in a different order than the order shown in FIG. 3. Accordingly, the scope of the invention should not be considered limited to the specific arrangement of steps shown in FIG. 3.” ([0050])
“FIG. 5A illustrates, in accordance with one or more embodiments, the relative timing of steps performed by one or more components described in reference to FIG. 1, FIG. 2A, FIG. 2B, and FIG. 2C, in accordance with the flowcharts in FIG. 3, FIG. 4A, and FIG. 4B.” ([0077])

A virtually identical characterisation to that of figure 3 is provided for figures 4A and 4B, while it can be seen that [0077] with regard to figure 5A is virtually identical to [0091] regarding figure 5D.

18. It is also clear from the specification as a whole, that the technical means used to implement the invention is entirely up to, and is only limited by, what is at the disposal of the skilled addressee. This is quite apparent from the discussion of figures 6A and 6B, which are reproduced below:

“Embodiments disclosed herein may be implemented on a computing system. Any combination of mobile, desktop, server, router, switch, embedded device, or other types of hardware may be used. For example, as shown in FIG. 6A, the computing system (600) may include one or more computer processors (602), non-persistent storage (604) (e.g., volatile memory, such as random access memory (RAM), cache memory), persistent storage (606) (e.g., a hard disk, an optical drive such as a compact disk (CD) drive or digital versatile disk (DVD) drive, a flash memory, etc.), a communication interface (612) (e.g., Bluetooth interface, infrared interface, network interface, optical interface, etc.), and numerous other elements and functionalities.” ([0099])
“The computing system (600) in FIG. 6A may be connected to or be a part of a network. For example, as shown in FIG. 6B, the network (620) may include multiple nodes (e.g., node X (622), node Y (624)). Each node may correspond to a computing system, such as the computing system shown in FIG. 6A, or a group of nodes combined may correspond to the computing system shown in FIG. 6A. By way of an example, embodiments disclosed herein may be implemented on a node of a distributed system that is connected to other nodes. By way of another example, embodiments disclosed herein may be implemented on a distributed computing system having multiple nodes, where each portion disclosed herein may be located on a different node within the distributed computing system. Further, one or more elements of the aforementioned computing system (600) may be located at a remote location and connected to the other elements over a network.” ([00104])

“The above description of functions present only a few examples of functions performed by the computing system of FIG. 6A and the nodes and/ or client device in FIG. 6B. Other functions may be performed using one or more embodiments disclosed herein.” ([00110])

The Claims

19. Several proposed amendments have been made to the application during examination. After the latest proposed amendments, the application comprises 15 claims, of which claims 1, 7 and 12 are independent claims. Claim 1 is reproduced below. The entire claim set is given at Annex A to this decision.

“A system for storing and accessing transactional data representing financial transactions, the system comprising:
a plurality of transaction storage devices, each transaction storage device of the plurality of transaction storage devices comprising a data store configured to store the transactional data; and
a registry configured to:
receive, from a user, a first secure identifier, wherein the first secure identifier is generated, using an encoding function, from a first user identifier of the user, wherein the encoding function is a one-way hash function which converts a variable-length input into a fixed length binary sequence;
receive, from the user, a first selection of a first data store configured to store the transactional data of a first transaction storage device of the plurality of transaction storage devices;
store, in response to receiving the first selection, a first registration of the first data store with the first secure identifier in a data store map of the registry, wherein the first registration comprises a universal resource identifier (URI) of the first data store, and wherein the data store map includes a mapping of secure identifiers to URIs of data stores;
receive, from a service provider, a first request to lookup a data store registered with the first secure identifier, wherein the service provider generates a detailed commercial transaction between the user and the service provider, and wherein the detailed commercial transaction corresponds to the first secure identifier;
retrieve, in response to the first request, the first registration from the data store map; and
transmit, to the service provider and using the first registration, the URI of the first data store, wherein the service provider, in response to receiving the first registration, transmits the detailed commercial transaction to the first data store to be stored in the first data store,

wherein the registry comprises a linkage manager configured to:
receive, from the user, a second request to link the first secure identifier to a second secure identifier, wherein the second secure identifier is generated, using the encoding function, from a second user identifier of the user;
store in the registry, in response to the second request, a linkage between the first secure identifier and the second secure identifier,
receive, from the user, a third request to assign master status to the first secure identifier; and
store in the registry, in response to the third request, an assignment of master status to the first secure identifier,
wherein storing the linkage is based on the assignment of master status to the first secure identifier, and

wherein the first data store is configured for the user to disallow read access to the transactional data stored in the data store such that the service provider can push data to the data store but not read the transactional data stored in the data store.”

The Remaining Objection

20. As noted, the only objection outstanding is that the claims are not for a manner of manufacture. This objection has been pursued throughout all six examination reports. The reasoning presented by the Examiner has remained consistent throughout all of the reports. The first report provides a detailed basis for the objection, while reports two to six fine tune the arguments in view of amendments and submissions made by the Applicant. It is apparent, from the reports, that the objection may be summarised, in a general way, as alleging that the claimed invention is, in substance, a scheme that provides for storing financial transaction data based on associating a URI of the location where the financial transaction data is to be stored with an identifier of the user and then providing the URI on request so the data can be stored. This is perhaps best illustrated by the following passages from the sixth examination report:

“In this case the ingenuity lies in the scheme for looking up where to store detailed commercial transaction data. Said scheme involves the conventional use of a hash function, URI, relational database, and datastores, which are characterised by the particular data, and relationships between said data, which are utilised. The combination of this conventional computer technology amounts to the exploitation of this technology for its well-known functions in the service of the scheme. Furthermore, the combination of features claimed does not result in any improvement to the computer or the functioning or architecture of a computer. The Applicant asserts that the claimed system reduces network bottlenecks. However, any such reduction is only relative to an allegedly less efficient scheme of the prior art. Improving a non-technical administrative scheme with an allegedly more efficient non-technical administrative scheme is not subject matter suitable for a patent. Furthermore, as discussed in the previous report, any improvement to network bottlenecks is not guaranteed by the claimed system.
The problem addressed by the invention is to facilitate the collection of transaction data from multiple entities at a user-designated data store. This is an administrative problem, rather than one which can be considered technical in nature.
The solution presented by the invention is the claimed system/method for registering a user’s secure identifier with a data store and an associated URI, so that the URI can be looked up using the secure identifier, and transaction data can be stored at the location indicated by the URI. This solution makes use of the involved computer technology in the normal and expected way in order to implement the claimed administrative arrangement. Therefore the solution does not make a contribution to the art which is technical in nature. Consequently the solution presented is in substance a scheme.”

The Applicant’s Submissions

21. The submissions cover a number of matters, the bulk of which comprise a discussion of the invention as described and claimed, including the background to the invention, and a discussion of why, in substance, the Applicant considers that the invention is patentable contrary to the Examiner’s conclusions. The submissions on patentability were based, as I understood it, on Full Court authorities such as Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”) and Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (“Aristocrat”), as well as the High Court in National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (“NRDC”) and D'Arcy v Myriad Genetics Inc [2015] HCA 35 (“Myriad”).

22. There was also some discussion of recent patent office decisions, notably Commonwealth Scientific and Industrial Research Organisation [2021] APO 43 (“CSIRO”), Advanced New Technologies Co. Ltd. [2021] APO 29 (“ANT”), Jagwood Pty Ltd [2020] APO 38 (“Jagwood”) and Apple Inc. [2021] APO 18 (“Apple”). However, I simply took these, and the discussion thereof by the Applicant, as applications of the established principles from Research Affiliates, and other established authorities, to the particular facts of the cases concerned.

23. Besides this, the Applicant made specific reference to the two-step test proposed by the majority in Aristocrat at [26] and applied this to the facts of this matter. Although I will discuss the Applicant’s application of this test later in this decision, I consider that the two-part assessment by Middleton and Peram JJ in Aristocrat is consistent with previous Full Court authority in this area, including the expanded Full Court in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (“Encompass”). In this regard the step of “can the invention claimed broadly be described as an advance in computer technology?” is understood as incorporating the various considerations established in earlier Full Court authorities in answering the question posed. In substance, I am of the view that Aristocrat is not creating a “new” test per se, other than perhaps putting forward the rather uncontroversial proposition that one should first understand whether an invention is computer implemented. This much is apparent where one broadly considers the reasoning of the majority in Aristocrat, where earlier Full Court authorities are cited to support the reasoning given and the conclusions reached; see for example the citing of: RPL at [18], [22] and [29]; Rokt at [22] and [29]; Encompass at [22] and [29] and Research Affiliates at [29].

24. Overall, I did not take the Applicant as putting forward principles to be applied that are materially different from those I have adopted below. I will address the Applicant’s submissions regarding the application of the relevant principles to the facts of this matter in my assessment of the substance below. Similarly, I did not take the Applicant’s discussion of the invention, either as claimed or described, to extend to anything materially beyond what is discussed earlier in this decision. To the extent necessary I will address these where appropriate below.

25. The remainder of the submissions deal with the allowability of the amendments and a request for further examination if this decision is adverse to the Applicant. As noted, I consider the amendments are allowable, so nothing further need be said on the Applicant’s submissions in that regard. As to the possibility of further examination pursuant to Reg 13.4, I will address that later in this decision if this proves necessary.

Relevant Legal Principles

Manner of Manufacture

26. The statutory basis for manner of manufacture is found at s18(1)(a) of the Patents Act 1990 (the “Act”) which states:

“an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.”

27. Fundamental principles with respect to manner of manufacture were outlined by the High Court in NRDC at [14]:

“It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: ‘Is this a manner (or kind) of manufacture?’ It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because ‘manufacture’ as a word of everyday speech generally conveys that idea. The right question is: ‘Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the ‘Statute of Monopolies’”

28. The NRDC decision related to a process for eradicating weeds from crop areas. A test applicable to the facts of this case was given in NRDC at [22]:

“The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art (see Re Virginia-Carolina Chemical Corporation's Application (1958) RPC 35, at p 36) - that its value to the country is in the field of economic endeavour.”

29. In Grant v Commissioner of Patents [2006] FCAFC 120 (“Grant”) the court considered the patentability of what may be generally described as a business system or method directed towards protecting assets via the creation of a trust, this not involving any computer implementation. Their Honours in Grant (at [26]) did not consider the question as to whether a business system is or is not patentable. Rather they found (at [47]) Mr Grant’s claimed systems and methods were not for a manner of manufacture in the sense described in NRDC:

“It has long been accepted that ‘intellectual information’, a mathematical algorithm, mere working directions and a scheme without effect are not patentable. This claim is ‘intellectual information’, mere working directions and a scheme. It is necessary that there be some ‘useful product’, some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent. That is missing in this case.”

30. More recently the authorities have directly considered the patentability, or otherwise, of computer implemented business methods, most notably in Research Affiliates and RPL. The discussion in RPL referred to the terminology from NRDC, with the observation at [117] that such terminology was apposite but “…not conclusive of patentability”. This observation was given with respect to consideration of a similar conclusion by the majority in Myriad 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. Consistently with that approach, and without resort to the ‘generally inconvenient’ proviso in s 6 of the Statute of Monopolies, there may be cases in which the court will decide that the implications of patentability of a new class of invention are such that the invention as claimed should not be treated as patentable by judicial decision”.

31. It was in this light that their Honours, at [96] to [98] of RPL, outlined considerations useful in determining whether a computer implemented business method is patentable:

“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.
Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
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.”

32. Thus, in relation to computer implemented inventions, it is necessary to look at the invention as a matter of substance, rather than as a matter of form. Upon doing so one will then be able to ascertain if this substance provides for a manner of manufacture using the established authorities. Relevantly RPL and Research Affiliates provided principles that assist in determining where the substance of these types of inventions resides and whether that material is patentable. In particular at [99] to [107] of RPL, their Honours reiterated a series of these principles from Research Affiliates (in particular at [94]). I note that the principles from Research Affiliates and RPL were recently cited with approval in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (“Rokt”) at [69], in Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223 (“Repipe2”) at [4], in Aristocrat at [29] and [106], and by an expanded Full Court in Encompass at [77] et seq.

33. Conveniently the principles concerned have been summarised at [189] of Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (“Rokt Pte Ltd”):

“The respondent submitted that the law as laid out in Research Affiliates and RPL Central held that:
‘17.1 The Court must decide, as matter of substance not form, whether the claimed invention is the proper subject-matter for a patent: RPL Central at [99]; Research Affiliates at [106], [117].
17.2 This requires consideration of both the claims of the Application and the invention described in the body of the specification: RPL Central at [114].
17.3 The assessment is not done mechanically. There are no precise guidelines or mathematical formula. It is “a question of understanding what has been the work of, the output of, and the result of, human ingenuity” and then applying the developed principles: Research Affiliates at [116]. See further RPL Central at [112]:
Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie ...
17.4 One well-settled principle is that a distinction exists between a technological innovation and a business innovation. A technological innovation is patentable. A business innovation is not: Research Affiliates at [94]; RPL Central at [100]. Consequently, a business method or scheme is not, per se, a proper subject for letters patent: RPL Central at [96]. Nor are abstract ideas, mere intellectual information or mere directions for use patentable: Research Affiliates at [101]; RPL Central at [100].
17.5 A computerised business method or scheme can, in some cases, be patentable. However, “[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation”: RPL Central at [96] (emphasis added). This requires “some ingenuity in the way in which the computer is used”: RPL Central at [104]. It is not a patentable invention “to simply ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions”: RPL Central at [96]. In other words, if the ingenuity lies in the business method or scheme alone, the invention will not be patentable despite the computer-implementation.
17.6 Thus, 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: RPL Central at [96]. Contrary to [the applicant’s submissions at [49]], this is a binary distinction: the invention is either an unpatentable scheme or plan, or it is a patentable improvement in computer technology. In conducting the analysis, it is useful to:
17.6.1 ascertain whether the contribution to the claimed invention is technical in nature: RPL Central at [99], Research Affiliates at [114];
17.6.2 consider whether the invention solves a “technical” problem within the computer or outside the computer: RPL Central at [99]; Research Affiliates at [103];
17.6.3 consider whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed: RPL Central at [99], Research Affiliates at [118];
17.6.4 consider whether the invention requires merely “generic computer implementation”, as distinct from steps which are “foreign” to the normal use of computers: RPL Central at [99], [102]; Research Affiliates at [101]; and
17.6.5 consider whether the computer is merely the intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea: RPL Central at [99].’”

34. I note that the above principles were explicitly accepted by Robertson J. at [201] of Rokt Pte Ltd. While the decision in Rokt Pte Ltd was overturned in Rokt this was not on the basis of any error in the principles listed above, which I accept are correct, noting that [189] of Rokt Pte Ltd represents a convenient summary of the principles from RA and RPL. I also note that essentially identical principles were adopted by McKerracher J in Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (“Repipe1”) at [39(5)], which was upheld in Repipe2, nor was there, as I understand it, any fundamental disturbance of the principles enunciated in Repipe1 as a result of Repipe2.

35. It is perhaps convenient here to note that the Applicant has made arguments, for example at paragraphs [136] to [141] of the submissions, about whether the invention produces a practical and useful result. It is perhaps of some note that “a practical and useful result” does not explicitly appear as one of the considerations in this decision, by virtue of its absence in Rokt Pte Ltd, and what this might mean in terms of this decision. In that regard I refer to what I said at [37] to [40] of Amsted Rail Company, Inc. [2021] APO 25 (“Amsted”) and by the Deputy Commissioner in Grzegorz Malewicz [2022] APO 11 at [71] (“Grzegorz Malewicz”), as to the view that “a practical and useful result”, while not irrelevant to the analysis, is not necessarily determinative of patentability in a positive sense. I will return to this later in the context of the submissions concerned.

36. As indicated above, overall, I took the Applicant as accepting that the question is to be answered as a matter of substance, particularly in view of the considerations listed by the Applicant which appear to come from RA, RPL and similar authorities cited by the Applicant, as well as the further discussion of the principles at [14] to [18]. While the precise considerations used by the Applicant, at [109] to [144], are expressed rather differently from the considerations in Rokt Pte Ltd, I do not take this to lead to material differences in terms of the conclusion to be drawn, noting that the principles from Rokt Pte Ltd are also distilled from RPL and similar authorities. I will address the Applicant’s reliance on the two step test from Aristocrat later in this decision.

Stringency of Tests

37. As examination was requested after 15 April 2013, the substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the present application. In particular the amendments to s49 of the Act allow the Commissioner to refuse an application if she is not satisfied on the balance of probabilities that the invention, so far as claimed, satisfies the criteria of s18(1)(a). Notably the criteria outlined at s18(1)(a) is that the invention, so far as claimed in any claim “is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”.

Do the Claims Comprise a Manner of Manufacture?

38. I will initially consider this question with regard to independent claim 1 and will further consider the other independent claims and dependent claims as appropriate.

Claim 1

39. It is perhaps trite, but the fundamental question I need to answer is what does the claimed invention comprise as a matter of substance? I will now consider whether the claimed invention is patentable by recourse to the considerations at [189] of Rokt Pte Ltd. I will also consider, where appropriate, the Applicant’s submissions regarding factors outlined in the submissions. Where appropriate, I have tried to address the Applicant’s submissions as relevant for each of the factors I have outlined below, even where the Applicant has discussed these in connection with a different factor. References to the “claim” in the following discussion means claim 1.

Is the contribution to the claimed invention technical in nature?

40. To assess this requires an understanding of the technical features of the invention, both individually and collectively, and the effect of carrying out the invention.

41. There are clearly individual features encompassed within each of the integers of the claim as identified above, that are either technical in nature or make use of technical features. For example, there are various sub-elements within the claim that are expressions of computerised technology, in the form of hardware and/or software, such as the transaction storge devices and the registry. There are also actions undertaken within the claim that make use of the ability of computers to exchange, process and store data, for example receiving from the user a first secure identifier, the creation of the secure identifier by hashing a user identifier and transmitting a URI of the relevant data store to a service provider.

42. However, the computerised device(s) in the form of the transaction storage devices and the registry are not specified in any way in the claim. Selection of these is entirely up to the skilled addressee, who may utilise any such device or devices as known in the art using any suitable arrangement of these that may be devised by the skilled addressee. Similarly, the actions performed using the computerised devices simply relate to the processing, exchange or storage of data using the capabilities of computer systems as known in the art, particularly in view of the non-descript nature of the computerised devices as defined in the claim. I therefore take it that performing the actions concerned merely extends to the use of computer technology as well known in the art.

43. Consequently, to the extent there are individual technical features in, or made use of by, the claim, these merely extend to “…computer technology that is utilised for its basic, typical or well-known functions” (Rokt at [89]), and do not provide in substance a technical contribution to the invention.

44. It is now necessary to consider whether the claim as a whole or several sub features of the claim interact to provide a technical contribution. I do not see any collection of sub features that interact in such a way to provide for this. There is clearly interaction between several of the sub features in that some actions are dependent on other actions for example registration of the URI of a first data store with a secure identifier needs to occur before that URI can be transmitted to the service provider. However, at the level of generality provided in the claim, these are merely logical dependencies between quite generalised steps in the claimed invention, in much the same way one needs to unlock their door before entering their house. No technical effect per se is apparent in such dependencies, merely steps or procedures to be followed. In addition, none of the interactions between or within the steps requires anything beyond the use of standard computing technology.

45. This leaves whether the claim, when considered as a whole, provides for a technical contribution. It is quite clear that the claim comprises a series of steps that involve the exchange, processing and storage of data that allows for financial transaction data of a user to be stored and accessed. This is achieved using a system whereby a secure identifier is generated by hashing a user identifier and a URI of the storage location where financial transaction data associated with a user is stored or is to be stored is linked to the secure identifier of the user. Registering of a URI with the secure identifier allows a service provider to look up the URI to thereby store financial transaction data at the storage location in a write only manner. There is a linkage manager that allows the user to link different secure identifiers and assign one of these as the “master” secure identifier.

46. Based on the discussion above, the claim appears little more than a system that provides in a certain way, and subject to a particular access rule, for financial transaction data to be stored or accessed using computer technology as known in the art. While much use is made of computerised devices and systems as known in the art, no technical contribution is apparent.

The Applicant did not appear to make any submissions that were specifically directed to this consideration, but I would take submissions made with regard to the other factors as being generally relevant to this factor as well. To the extent this is the case, I refer to my discussion of the Applicant’s submissions below.

Does the invention solve a “technical” problem within the computer or outside the computer?

48. It is not apparent that the claim solves a technical problem within or without the computerised apparatus or systems concerned. Merely providing a way of storing and accessing financial transaction data, subject to denying read access to certain entities, in the manner indicated using known or standard computing technology is not addressing any technical difficulty as such. Nothing within the claim appears to address or overcome any technical difficulties. In summary, I do not consider that the invention solves any technical problem, either within or without the computerised apparatus of the claim.

49. I note that the Applicant addresses this consideration at [109] to [131] of the submissions. The Applicant argues, at [110] to [112] that:

“The invention addresses the problem of existing systems for managing and sharing financial transaction data having limited scalability in relation to accommodating an increasing number of participating entities, recognising that this problem arises due to the reliance on point-to-point connections that typically characterises current standards for exchanging financial transaction data. As the number of participants increases, these kinds of architectures are susceptible to bottlenecks and become difficult to manage as they become increasingly dispersed. Furthermore, as the system grows, the computational resources required to maintain the system, including to authenticate all participating nodes (sic). This is plainly a problem of a technical nature, as it arises due to the physical structure of a system that requires direct point-to-point connections between all participants that wish to exchange data. The consequential difficulties such as bottlenecks and the requirement for greater processing resources relate to the functionality of the computer system and can be easily understood as bearing a technical character.
The invention also addresses the technical problem of how to access detailed transactional information from multiple service providers without using an inefficient pull/request-based approach.
The invention further addresses the technical problem how to allow service providers to locate and send detailed transactional information to a data store designated by the user participating in each transaction, while also maintaining the security of user identifiers involved in the transaction and the data that is stored in the user designated data store. Creation of a data storage/access system that allows different participants to store and access data in different manners, while also ensuring that potentially sensitive data is not made undesirably vulnerable is a task that clearly requires technical considerations.”

50. However, it should be apparent that I do not consider that there is any technical contribution provided as such in the claim via the various technical features, whether considered individually or in combination, for reasons as discussed above. I am unconvinced that the claimed invention in any way necessarily addresses the problems of bottlenecks/scalability or pull request inefficiencies. Regarding bottlenecks, the fact that the precise architecture, in terms of hardware and software, is entirely up to the skilled addressee on implementing the invention means that there is no reason to suppose that the claimed invention necessarily addresses or overcomes bottleneck issues in existing systems. The skilled addressee may very well implement the claimed invention in a point to point like manner (which seems likely in view of the nature of the claimed invention) that may suffer from the similar issues as existing systems. Similar can be said for the inefficiencies said to arise from existing systems using pull requests.

51. Putting this aside, the discussion of the “technical” issues with existing systems, comprises, in my view, a rather loose use of the term “technical” as discussed at [26] of Accenture Global Solutions Limited [2022] APO 8. The difficulties with prior systems, such as they are, appear to reside in the procedural ways, or rules that specify how, those systems handle the data concerned – it does not reside in any defect or problem in the technology used to implement the processes concerned per se. Indeed, the Applicant makes this clear at [4] of the submissions: “Existing standards for accessing transaction-related information do not facilitate access to detailed transactional information (e.g., beyond the total payment amount of a transaction)” (emphasis added). In addition, simply making data more secure by merely using existing hash functions represents use of existing technology, not a solution of any technical problem in the technology concerned. Hence to the extent that the claimed invention addresses any problem, it is not necessarily technical in nature, nor is any technical solution provided.

52. The Applicant also suggested at [113], with reference to CSIRO, ANT and Jagwood that it is not a requirement that a computer implemented invention solve a technical problem in order to amount to an advance in computer technology. While that may be the case, the problem to be solved is just one consideration among others in determining the substance of the invention, nor has the Applicant precisely explained how this view assists its assertions of patentability in this matter.

53. With respect to the solution, the Applicant argues at [115] and [116] that:

“We submit it is evident that the solution provided by the invention does not pertain to the particular content or presentation of the information stored in the registry or the data store, nor does it relate to an abstract scheme. The invention is not concerned with or affected by what information is specifically stored in the data store (e.g., in terms of particular transactional information such as transaction values, line items, and associated data formatting, etc).
Rather, the focus of the invention is on how certain functional technical features can be combined to achieve an arrangement that allows a service provider with a secure identifier generated from a user identifier to transmit data to a data store of a user’s choice in a manner that addresses the technical problems described above.”

54. I can accept that the invention does not pertain to the particular content or presentation of the data concerned. However, the computerised aspects of the claim, including the use of hashing, are merely utilised for their known functions, abilities or benefits to perform the claimed invention. No actual problem in the technology concerned is identified or addressed. If there is a technical advance or effect, within the invention claimed or described, that provides for overcoming the problems concerned then this remains elusive. At best the claimed invention provides a convenient means or location of storing and accessing financial transaction data, but this is really little more than an arrangement of logistical convenience, in the same way it is more convenient to have books centralised for loan in a library than scattered over many different locations.

55. Further submissions were made at [120] to [125] regarding the patentability of the claimed invention in view of ANT and Jagwood. Specifically, the Applicant noted the observation in ANT (at [60]) that use of well-known encryption technology did not make the encryption technique less technical and how the synergistic use of a URI in Jagwood (at [81] and [83]) provided for a technical solution. However, the statements referred to in ANT are unremarkable in that encryption is technical in nature, but that, per se, does not assist in answering questions of patentability. It is trite to state that the computer in RPL was no less technical than the encryption of ANT, but that was not sufficient to conclude that RPL was for a manner of manufacture. One, of course, must address the question as a matter of substance in view of the factual circumstances concerned. In that regard Jagwood does not assist the Applicant, as unlike in that case, I see no synergistic effect in the claimed invention that provides a technical solution to a problem, technical or otherwise.

56. There was also some exposition at [126] to [130] regarding how the claimed invention allegedly provides for reduction in the number of actions and/or connections needed to achieve the same result as in existing systems. The Applicant argued, at [128], that:

“…this reduction of the number of actions and/or connections required by the claimed invention to achieve the same outcome amounts to an improvement in computer technology and contributes to the technical nature of the invention. This aligns with the delegate’s comment in Apple Inc. [2021] APO 18 that ‘the requirement for lesser user interactions to do the same or similar thing that required more interactions previously amounts to an improvement in the functioning of the device’” (references to footnotes removed)

57. However, unlike Apple, the present invention, either as claimed or described, does not appear to result in a particular advantage in allowing the choosing and editing of a clockface on a device using less interactions and thereby improving the device; see Apple at [39]. That is, there was a quite particular issue in Apple that was addressed with a particular solution that allowed for a material effect to be observed in the device concerned. In this regard, that is not the case here. The Applicant’s assertions that there are less actions and/or connections involved in the process are not necessarily reflected in the claim, nor is there necessarily any improvement or benefit over existing systems in terms of bottlenecks or resources used. This is due to the fact that, as discussed previously, the precise implementation of the invention, in terms of hardware and/or software and the architecture of the same, is entirely up to the skilled addressee. The claimed invention provides for certain functionality in terms of the accessing and storing of data and does not specify how the hardware and/or software achieves this. There is no actual architecture providing for a material advantage.

58. It may also be reiterated here that the issues raised by the Applicant regarding prior systems fundamentally relates to the procedural way those systems are organised to handle, store and access data, and not in any technical issues regarding the systems themselves. Similarly, it has been noted previously that the claimed invention does not provide any technical benefit or advance, it merely provides a different, albeit potentially more logistically convenient, procedure for storing and accessing financial data. The improvement is fundamentally within the arrangements specified for storing and accessing the data at a high level. There is no improvement within or relating to the technology utilised.

Is there an improvement in the functioning of the computer, irrespective of the data being processed?

59. I cannot ascertain any improvement in the functioning of any of the computerised apparatus used within the claim, irrespective of the data being processed. As discussed above, the computerised devices present in the claim are merely used for their standard or known abilities to process, exchange and store data. Any improvement, to the extent one can be identified, appears to reside in the process used to store and access the financial transaction data.

60. In summary I consider that there is no improvement in the functioning of the computerised devices utilised in the claim.

61. The Applicant has provided arguments relevant to this consideration at [142] to [144] of the submissions:

“As has been alluded to above, the substance of the present invention is not found in the generation, presentation or arrangement of the intellectual information that constitutes each detailed transaction. Of course, the specification indicates at [0047] that such information might include the service provider, customer code, transaction amount, transaction date, financial institution, and a set of line items. However, it is evident that this information – nor how it is specifically generated, presented or arranged – in no way forms part of the substance of the invention.
We submit that based on a reasonable construction of the claims, it is clear that the claimed invention defines how data is to be handled, transmitted and stored, and is not characterized by what that data represents in a business sense. For example, the specific links in the claimed URIs (e.g., Web addresses) are not in the substance of the invention, nor are the financial details of any transactions, nor information or of the ‘variable-length input’. Such financial and business information, which is relevant to the business side, forms no part of the substance of amended claim 1.
As there is nothing in the claims which defines how any business or financial information is to be generated or arranged, we submit that the claimed invention does not lie merely in the generation, presentation or arrangement of intellectual information.”

62. I can accept that the invention does not comprise the mere generation of information, and that it “…defines how data is to be handled, transmitted and stored”. However, merely specifying, at the level of generality of the claim, how data is handled, transmitted and stored, where each of those actions merely makes use of the known capabilities of computing technology, does not provide for patentability. It is possible that some material effect or benefit may occur from the handling, storing, and transmitting of data, but as previously discussed, none is necessarily apparent. All that there is, is the possibility of more convenient data access and storage over existing arrangements.

Does the invention require merely “generic computer implementation”, as distinct from steps which are “foreign” to the normal use of computers?

63. For reasons as discussed above, it is quite clear that all the computerised features of the claimed invention are being used in a generic sense in that use is merely made of the well-known functions and abilities of the same. There is nothing in the use of any of the computerised features which is foreign to the normal use of computers.

64. The Applicant has made submissions relevant to this consideration at [132] to [135] of the submissions. At [132] and [133] the Applicant made the following arguments:

“We submit that the invention does not merely require generic computer implementation. It is plain that a generic computer is not capable of implementing the system and method defined by the claims.
In any event, we note that the APO decisions referred to above demonstrate that the fact that a computer-implemented invention requires only generic computer implementation does not prevent it from being a manner of manufacture.”

65. I disagree with the Applicant’s assertions regarding the invention not being able to be implemented using generic computing technology. As discussed, the invention makes mere use of the known capabilities of computing technology to implement the data storage and access procedures concerned, and in this sense the computing technology concerned is, in my view, generic.

66. It is, of course, possible for an invention to comprise generic computer implementation and still be patentable. In that regard, the Applicant’s comments cited above, and at [135] of the submissions, with respect to Justice Nicholas’s reasoning in Aristocrat as to the possibility of an advance in a different area of technology, are unremarkable. The problem for the Applicant is that, as discussed, there is no advance in any aspect of technology, computer or otherwise that is achieved by the claimed invention.

67. The Applicant also suggested, by reference to [35] to [38] of Aristocrat that:

“…we note that Middleton and Perram JJ in Aristocrat indicated that consideration of whether a computer-implemented invention relies on generic computer implementation does not greatly assist the enquiry of whether the invention constitutes an advance in computer technology.”

68. However, I am of the view that the Applicant’s arguments regarding considerations of “…generic computer implementation…” are misconceived. It is apparent that the warning from Aristocrat was regarding the dangers that could arise in not properly defining or characterising what is meant by “generic computing technology”, within the particular context under consideration. Aristocrat was not mandating the relative weight to be given to this consideration per se or suggesting that it was no longer a relevant consideration.

Is the computer merely an intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea?

For reasons as discussed above the computerised features are specified at only a generic level to merely facilitate the storage and access of financial transaction data. That is, they are merely an intermediary facilitating the storage and access of financial transaction data and add nothing of substance to the same.
The Applicant provided some submissions at [107] and [108] that I consider are relevant to this consideration:
“By contrast [to Research Affiliates], the present invention is directed to the functional interaction of technical features such as the registry, secure identifiers, URIs and data stores, rather than the specific content of the data stored in the data store or in the registry. That is, the contribution of the invention is found at the level of the computer architecture, including the internal functioning of the architecture.
Thus, the present invention cannot be reasonably described as the mere implementation of a scheme. The computer is not ‘merely the intermediary, configured to carry out the method … but adding nothing to the substance of the idea’. In the present invention, it is the configuration of computer components that themselves form the substance of the invention.” (references to footnotes removed)

71. It should be apparent that I disagree with these statements by the Applicant for reasons already discussed. Suffice to reiterate that I am of the view that there is not so much a precise computer architecture defined in the claim as simply a series of functionalities implemented using computer systems to carry out the high-level process of data storage and access as per the claim. The actual architecture to achieve this functionality is left entirely up to the skilled addressee.

The Applicant’s Submissions Regarding “Practical and Useful Result” and the Aristocrat Two Step Test

The Applicant has provided arguments regarding there being a practical and useful result at [136] to [140] of the submissions:
“The purpose of the claimed invention is to facilitate the exchange, and collection, of detailed transactions while meeting minimum standards with respect to security of sensitive user information. This is achieved by providing an open architecture in which user data stores are linked to user identifiers by registering secure identifiers with URIs of those data stores. Multiple secure identifiers relating to multiple respective user identifiers of a single user may be efficiently linked to a single datastore, while service providers can rely on any one of such secure identifiers to give the capability to push detailed transactions to the relevant data store.
Being an open system, any entity may transmit new detailed transactions by accessing the registry and finding a link to the data store corresponding to a specific secure identifier, without requiring pre-existing point-to-point connections.
Relying on a push system, rather than a pull system, addresses the structural and architectural bottlenecks in conventional computer systems for exchanging financial transactional data. Moreover, as the user identifier is encoded into a secure identifier prior to being transmitted to the system, sensitive user information is never actually seen or stored on the registry, access controller, or data store.
As outlined above, all of these features can only be achieved using technical means involving techniques in the field of information technology. They cannot be achieved by administrative means, or by changing a business process. For example, in eBay Inc. [2020] APO 49, the delegate concluded that obtaining congestion data to determine an alternative route, was ‘a technical problem that requires a technical solution’ and was not ‘merely implementing a business process’.
Put another way, the delegate correctly recognised that eBay's invention could not be performed by simply provisioning a business process in a computer system, but required ‘a physical and technical solution to a physical and technical problem’.” (references to footnotes removed)
Putting aside questions of a “practical and useful result” for the moment, the problem for the Applicant is the invention as claimed does not necessarily provide a technical solution to any technical problem. As discussed, there are no inherent defects in the computing technology used in existing systems. The issue is simply one of how those systems allow or do not allow data to be stored and handled. The claimed invention simply creates a different, and potentially more convenient, way to store and access data than in the existing systems by using standard computer technology. The mere use or presence of technology does not necessarily provide for patentability.

74. No advance in the computer systems or technology is apparent. Even assuming that previous systems did not provide detailed financial transaction data, it does not amount to an advance in computing technology to merely use standard computing technology to provide such information, directly or otherwise. As observed earlier, implementation of the invention in terms of hardware and/or software is left entirely up to the skilled addressee. This means the “open architecture” is so open as to exist at only a functional level that specifies the procedural way in which the financial transaction data is stored and accessed. It does not provide any intrinsic technical benefit or advantage. The advantage, as discussed, is at best, logistical in nature.

In terms of there being a “practical and useful result”, I am of the view that the claimed invention can be characterised as providing, in the most general sense of the phrase, a “practical and useful result” in that it provides for what is an alternative means of storing and accessing financial transaction data, and which might comprise a more convenient arrangement of doing so as compared to existing systems. However, as discussed elsewhere in this decision, I do not consider this to lead to a technical result or improvement per se. Notably, with reference to the discussion above regarding Amsted and Grzegorz Malewicz, the fact that there is a “practical and useful result” is not necessarily sufficient to confer patentability.

76. The finding in eBay does not assist me in assessing the facts of this matter, which clearly do not relate as such to determining congestion information, processing this information and presenting a recommended route to the user to avoid congestion. Furthermore, the delegate found that eBay was patentable in providing a technical solution to a technical problem, this not being present in this case as per my discussion above.

77. As observed earlier, the Applicant had recourse to the two-step test posed by the majority in Aristocrat. At [96] of the submissions, the Applicant stated that:

“We submit that this [i.e. the invention] can be viewed as a database management system that due to its specific configuration can be used for storing and accessing transactional data in a secure, efficient and scalable manner. It is a system that cannot be simply implemented on a standard or generic computer system. Thus, in this sense, we submit that the present invention cannot be reasonably described as a ‘computer implemented invention’ defined narrowly, meaning that the answer to the first Aristocrat question is no. We note that the present invention can be viewed in contrast with the computer-implemented invention considered in Aristocrat, which Middleton and Perram JJ found to constitute a feature game implemented on a computer that is an electronic gaming machine.”

78. As indicated, I am of the view that the two-step test is not materially distinguishable from previous Federal Court precedent. But in any case, despite whether the two-step test is somehow different in some way from previous authorities, I still disagree with the Applicant’s characterisation of the invention as a database management system. There is nothing in the invention, either claimed or described, that goes to particular details of database management in any way. There is simply a high-level arrangement that provides for the storage and access of data using well known capabilities of computerised systems.

79. I also disagree with the suggestion that the invention is not computer implemented. It is not entirely clear to me what is meant by defining “computer implementation” in a “narrow sense” as alluded to by the Applicant, but whatever sense is meant, the conclusion that the invention is computer implemented is inexorable.

80. The Applicant then provided arguments as to why the invention was patentable, even if it was considered, contrary to the submissions, to be computer implemented. These led into discussion in view of particular factors at [109] to [144] that have already been considered in this decision. There was, however, several paragraphs, at [98] to [108], that argued that the invention was not in substance a scheme. These largely reiterate, or rely upon, arguments made at [109] to [144], so I see no need for extensive elaboration on these.

81. I do note, however, that at [104] the Applicant argues:

“The invention relies on computer technology and is capable of serving a purpose in relation to financial transactions. Although a finance-related purpose might initially lead a reader to think that the invention could relate to a mere business scheme, we submit this would impermissibly conflate the result or purpose of the invention with its substance. As the delegate emphasised in Facebook, Inc. [2020] APO 19, ‘the result the invention provides is different from the substance of the invention’. We note that the invention determined to be a manner of manufacture in that decision was a method that resulted in the collection of conversion metrics for advertising. The claimed data storage system and method relies on a specific arrangement of separate elements, which are all interrelated and come together in this configuration to bring about the desired effects mentioned above and solve technical problems of security, efficiency and scalability (explained below). These include the ability of entities to access a link to and transmit data to a user-designated data store, while also preventing that entity from accessing sensitive information relating to the user and/or stored in the data store. To achieve this outcome, the invention specifically defines an architecture that relies on a centrally accessible registry that registers secure identifiers with data store URIs.” (references to footnotes removed, emphasis in original)

82. None of this assists the Applicant. The fact the result or purpose of the invention may be different to its substance does not change any of my considerations above. The submissions regarding “…security, efficiency and scalability…” have been materially answered earlier in this decision in the context of the considerations from Rokt Pte Ltd, and nothing further need be added here.

What is the substance of the invention in claim 1 and is this patentable?

On weighing up the above considerations, these all suggest that the substance does not reside in the technical features but rather in a process or arrangement for the storage and access of financial transaction data in certain ways merely using existing computer technology. Put simply, I consider the substance of the invention to be:
·     A system for the storage and access of financial transaction data defined by the following:
o   the generation of a first secure identifier that is generated from a user identifier using a hash function;
o   a user selects a data store in which to store financial transaction data;
o   registering of the data store to the first secure identifier, comprising mapping of a URI of the data store to the first secure identifier;
o   a service provider, that generates financial transaction data corresponding to the first secure identifier, requests to look up the data store registered with the user;
o   retrieving the registration and sending the URI of the data store to the service provider;
o   the service provider transmits the financial transaction data to the data store for storage;
o   the service provider is able to write financial transaction data to the data store, but cannot read transaction data in the store;
o   the user is able to request and effect linkage of a second secure identifier, also generated using a hash function, with the first secure identifier; and
o   the user can request and effect the assignment of master status to the first secure identifier.
The Applicant has provided submissions as to the substance of the invention at [102] to [104] of the submissions. I did not take these as being materially different from the substance I have identified above.
The remaining question now is whether the substance falls within the bounds of patentable subject matter as established by authority. I consider that it does not. The substance clearly amounts to what I consider to be merely an arrangement of steps or processes, in effect a scheme, for storing and accessing financial transaction data. It is apparent that the Applicant disagrees with this characterisation, as apparent from the “Conclusion” at [145] and [146] of the submissions, however the nature and effect of the claimed invention is apparent from considering the relevant factors. In particular, the generality of the computerised technology used, in terms of hardware, software and architecture, elevate the substance to little more than a scheme for accessing and storing financial transaction data. No technical benefit or effect is achieved as a consequence of performing the claimed invention.
The fact that there might be a “practical and useful result” of some broadly considered kind does not change this conclusion. As noted in Amsted at [79] “The difficulty for the Applicant is that this “practical and useful result” is not one that leads to patentability”.

Are Independent Claims 7 or 12 for a Manner of Manufacture?

Claim 7 defines “A method for storing and accessing transactional data representing financial transactions…” in virtually identical terms as for claim 1. Other than being couched as a method, I am unable to ascertain any material difference, in terms of substance, between claim 1 and claim 7. Consequently, claim 7 is not for manner of manufacture for similar reasons as given with regard to claim 1.
Claim 12 provides for “A non-transitory computer readable medium comprising instructions…”, that, other than comprising a non-transitory computer readable medium, is virtually identical to claim 7. It follows that claim 12 is not for a manner of manufacture for similar reasons as given with regard to claim 1.

Are any of the dependent claims for a Manner of Manufacture?

I have also considered each of the dependent claims. These comprise additional features that amount to adding additional steps to the scheme as defined in the independent claims, or other dependent claims, making use of standard computer technology as follows:
o   claims 2, 8 and 13: obtaining a type of the user identifier and based on this, determining a procedure to validate the user identifier;
o   claims 3, 9 and 14: requesting validation of the user identifier from a trusted source;
o   claims 4, 10 and 15: there is a further look up request regarding a secure identifier linked to the first secure identifier, retrieving the linkage and transmitting the second secure identifier;
o   claims 5 and 11: the user provides a second selection of a second, different, data store to store transactional data and a second registration of the second data store with the second secure identifier, comprising a URI of the second data store; and
o   claim 6: the service provider is able to look up a data store registered with the fist secure identifier and receive the URI of the first data store (appears redundant in view of claim 1).
I do not see anything in the additional features provided by claims 2 to 6, 8 to 11 and 13 to 15 that materially varies the substance of the independent claims. These are simply additional rules or procedural steps specifying how and when the financial data may be stored or accessed and do not provide for any material advantage that would confer patentability. It follows that none of the dependent claims are for a manner of manufacture.

Is there anything within the Application that provides for a Manner of Manufacture?

In addition to there being no patentable material in the claims, my perusal of the application does not reveal anything that, as a matter of substance, extends beyond the invention discussed above, either for the invention as claimed or as described. I conclude that there is nothing in the application, beyond that already considered, that could be claimed to result in a manner of manufacture.

Conclusion

None of the claims are for a manner of manufacture. In addition, I see no material in the application that could be made the subject of a claim so as to result in that claim being for a manner of manufacture. Whilst I note the Applicant’s request to address any defects I may identify via further examination, I see no point in doing so where I am of the view that there is no amendment that could be made that would overcome the findings in this decision. I therefore refuse the application.

Dr W.E. Guinea

Delegate of the Commissioner of Patents

Annex A – Claims