Intuit Inc. - [2021] APO 51

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Intuit Inc. [2021] APO 51

Patent Application: 2015412785

Title:Escrow personalization system.

Patent Applicant:                   Intuit Inc.
Delegate:  M. G. Kraefft
Decision Date:  10 December 2021
Hearing Date:  Written submissions filed on 28 October 2021.

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – online tax return preparation – structure or arrangement of tax return topics at user interface based on topic ranking – execution of model to generate topic ranking based on escrow data satisfying predetermined criteria – no unusual technical effect – application refused.

Representation: Patent attorneys for the applicant: Davies Collison Cave.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015412785

Title:Escrow personalization system.

Patent Applicant: Intuit Inc.
Date of Decision: 10 December 2021
DECISION
The claimed invention is not for a manner of manufacture. Moreover, there is nothing of substance in the body of the specification to overcome this finding.
The application is refused.
REASONS FOR DECISION
BACKGROUND

Intuit Inc. (“the applicant”) filed patent application 2015412785 as an international application under the Patent Cooperation Treaty (“PCT”) on 30 October 2015 (“the priority date”).
The application has been subjected to six examination reports. Throughout the examination history of the application, the examiner has maintained that the claims, including claims as proposed to be amended, do not define a manner of manufacture.
On 7 May 2021, the applicant requested to be heard.
While the final date for acceptance of the application was 8 May 2021, paragraph 13.4(1)(g) of the Patent Regulations may be available to extend the time for gaining acceptance to 3 months from the date of the present decision.
SPECIFICATION
At a broad level, the alleged invention relates to personalised electronic tax return preparation. The specification states that embodiments in this case are related around computer-centric and Internet-centric technologies such as an online tax return preparation application. Embodiments also involve user interfaces generated during preparation of electronic tax returns and personalising user interfaces for individual users relative to electronic tax return data.
Embodiments also involve data escrow systems. These systems may interface with the online tax return preparation application to respond to an application’s request for results generated by the data escrow system. Such results may be in the form of a personalised tax return topic ranking that is incorporated into an interview screen presented to a user. As a user navigates the interview screens, tax topics that are able to be selected within the interview screens are arranged according to the determined ranking rather than according to a static, default or fixed sequence. Examples of tax return topics that may be integrated into a personalised tax return topic ranking include income, deductions, and taxes paid.
The specification, as most recently proposed to be amended on 30 April 2021, ends with 33 claims. Claim 1 is the only independent claim. This claim reads as follows.
1.A computerized tax return preparation system, comprising:
an on-line tax return preparation application accessible by user computing devices executing browsers to prepare electronic tax returns, the on-line tax return preparation application being configured to write electronic tax return data to a first data store; and
a tax return topic ranking system in communication with the on-line tax return preparation application and the first data store, the tax return topic ranking system being operable independently of the on-line tax return preparation application and configured to:
retrieve from the first data store specified types of electronic tax return data from in-progress tax return calculations of users logged into the tax return preparation application;
create escrow records for users including data describing the in-progress electronic tax return calculations of specified types of logged-in users;
store escrow records to a second data store; and
in response to the data describing the in-progress electronic tax return calculations of at least one escrow record satisfying pre-determined criteria, execute a model utilizing the specified electronic tax return data of the at least one escrow record to generate a tax return topic ranking and provide the generated tax return topic ranking to the on-line tax return preparation application; and,
generate an interview screen including tax return topics structured according to the generated tax return topic ranking,
wherein the interview screen is presented through a screen of a computing device of the logged-in user associated with the at least one escrow record.
APPLICABLE LAW
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act. The application was filed after 15 April 2013.
Thus, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
MANNER OF MANUFACTURE
Section 18 of the Patents Act 1990 relevantly provides that:-
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and …
Case Law
The principles of law in respect to manner of manufacture, arising from the High Court decisions in National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, and D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, are well-documented in previous office decisions. The authorisation of a case-by-case methodology would also be apparent from the High Court decisions.
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
Moreover at [98]:-
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
In Research Affiliates LLC v Commissioner of Patents (“Research Affiliates”), [2014] FCAFC 150, the Full Court of the Federal Court noted a distinction between mere implementation of an abstract idea in a computer and implementation of the idea in a computer that created an improvement in the computer. At [103]:-
“… there is a distinction, between mere implementation of an abstract idea in a computer and implementation of an abstract idea in a computer that creates an improvement in the computer”.
Moreover, at [114] of Research Affiliates:-
“The invention set out in the specification is directed to the index itself. The method of the invention is not one that has any artificial or patentable effect other than the implementation of a scheme, which happens to use a computer to effect that implementation. There is no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors.”
In also discussing the requirement for the contribution to be technical, the Full Court in RPL stated as follows, amongst other things, at [99]:-
·“It is necessary to ascertain whether the contribution to the claimed invention is technical in nature …
·One consideration is whether the invention solves a ‘technical’ problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
·Does the claimed method merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea? …”
In Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (“Aristocrat”), [2021] FCAFC 202, the majority (Middleton and Perram JJ) posed the following two questions. At [26] and [27]:-
“(a) Is the invention claimed a computer-implemented invention?
(b) If so, can the invention claimed broadly be described as an advance in computer technology?
If the answer to (b) is no, the invention is not patentable subject matter. Of course if the answer to (a) is no, one must then consider the general principles of patentability.”
Similarly, in Repipe Pty Ltd v Commissioner of Patents (“Repipe”), [2021] FCAFC 223, Perram J indicated that an advance or improvement in computer technology was required.[1]
[1] Repipe at [8] to [10].
Both RPL and Research Affiliates suggest, in consistent though perhaps less stringent terms than (b) above, that a patentable invention involves the utilisation of an unusual technical effect.[2]
[2] RPL at [102] and Research Affiliates at [108].
Submissions
In large part, the applicant relied on the Advanced New Technologies Co., Ltd (“ANT”) decision, [2021] APO 29. The applicant stated that decision cumulated the laws from a number of Federal Court decisions into a structured test which allowed for more clarity when assessing patentability of software-based inventions.
The applicant presented the following considerations from the ANT decision.
·Evaluating the substance of the invention;
·Determining if the invention solves a technical problem;
·Determining if the invention provides a technical solution;
·Determining if the invention requires generic computer implementation;
·Practical and useful result;
·Intellectual information; and
·Balance of considerations.
In evaluating the substance of the invention, and with reference to [0042] of the specification, the applicant submitted there were at least two problems which the present invention sought to address. These were a static user experience and inefficient utilisation of computer/data processing resources.
The applicant then referred to several paragraphs of the specification to identify proposed solutions.[3] The applicant thus concluded the substance of the invention lay in at least one of:
·how the invention provides a more dynamic user experience; that is, by generating results rankings in response to user activity;
·how the invention reduces the data and interactions required by the computing system; that is, by only utilising a small portion of the master data store; and
·how the invention allows interaction with locally stored escrow records to reduce network utilisation and latency involved in data retrieval.
[3] Specification at [0005], [0006], [0039] – [0042], [0046] and [0047].
In respect of the remaining considerations from the ANT decision, the applicant referred to a number of principles and statements from that decision to support the position that the present invention should be viewed favourably. Comparisons of operational aspects of the present, alleged invention against the blockchain system in the ANT case were also made. Essentially, the applicant emphasised the dynamic nature of the user experience, improved computing efficiencies and the reduced latency in the present case.
The applicant concluded by providing similar statements against the majority of the factors from the Aristocrat Technologies Australia Pty Limited decision, [2016] APO 49 at [35].
Substance Of Invention
The claimed invention defines a computerised tax return preparation system. There is an online tax return preparation application accessible by users to prepare electronic tax returns. The tax return preparation application is configured to write tax return data to a first data store, also referred to as a master or persistent data store in the descriptive part of the specification.
There is also a tax return topic ranking system in communication with the online tax return preparation application and the first data store. The tax return topic ranking system is configured to retrieve, from the first data store, specified types of tax return data, from in-progress tax return calculations, of users logged into the tax return preparation application.
Within the tax return topic ranking system, or at least associated with it, there is a data escrow system. Conventionally, data escrow systems involved the storage of data with a neutral third party that is released to rightful owners upon certain conditions being met. For example, data escrow services may provide secure, independent protection of data related to transacting parties pending finalisation of transactions. Between contracting parties, such services may be temporary or ongoing, and data may be periodically updated.
In the present case, the tax return topic ranking system is configured to create escrow records for logged-in users. The records include the data describing the in-progress tax return calculations. The escrow records are stored in a second data store, also referred to as a cache. In response to the escrow data of at least one escrow record satisfying pre-determined criteria, a model is executed, utilising the specified tax return data of that escrow record, to generate a tax return topic ranking. The ranking is provided to the online tax return preparation application. Subsequently, an interview screen is generated including tax return topics structured according to the generated tax return topic ranking. The interview screen is presented on a computing device of the logged-in user associated with that escrow record.
In summary, the substance of the invention appears to reside in an online tax return preparation application, which users may access, and a separate tax return topic ranking system that retrieves tax return data associated with those users logged into the online tax return preparation application. Within or associated with the tax return topic ranking system, there is a data escrow system that creates and retains escrow records associated with the tax return data of logged-in users. Upon pre-determined criteria being met for an escrow record, a model is executed to generate a tax return topic ranking. That ranking determines the structure or arrangement of tax return topics presented to a user at the user interface.
Figure 1 of the patent application illustrates the system architecture and is reproduced below for convenience.
Consideration
It would be apparent from the above arrangement that the architecture involves multi-computers communicating directly or across a network. Similarly, users may interface with the computing systems across respective networks. Moreover, the present field relates to application programs or software enabling specific computer functionality. As such, I would consider the relevant person skilled in the present art to comprise a team skilled in multi-computing, network architecture and applications development.
The alleged invention, in this case, clearly involves computing systems enabling tax return preparation and presentation online for and to users. That is, the systems have particular application for the filing of tax returns. At their core though, the systems involve a host computer interacting with another computing system. Each performs its own designated functions. The host computer supports the tax return preparation application which enables users to prepare their tax returns online. The other computing system facilitates the presentation of tax returns, through the host, in specific ways to individual users at the user interface. The host and the topic ranking system amount to a conventional front-end and back-end architecture.
The latter system additionally though runs a data escrow service such that, when pre-determined criteria for an escrow record are met, a ranking is generated and applied to present tax return topics to the appropriate user in a particular structure or arrangement according to the ranking. Moreover, the first or master data store hosts tax return data or tax returns of respective users of the tax return preparation application. The store may include data for millions of tax returns for many users for many years.[4] When a user has initiated an on-line session, the topic ranking system retrieves a small portion of the first data store data for that particular user and caches the retrieved data locally until the ranking system determines that conditions, reflected in a specification file or escrow contract concerning an executable model, are satisfied such that the model can be executed.[5]
[4] Specification at [0045].
[5] Specification at [0047].
The applicant emphasised the provision of a more dynamic user experience by generating rankings in response to user activity. On the face of it, the nature of this dynamic may not be apparent. The body of the specification is more informative. As a user enters or changes data during preparation of a tax return, the ranking, sequence or order of tax return topics, presented to the user, may change to reflect changes or updates to the tax return data.[6] When a user navigates to other interview screens, tax topics that can be selected within the interview screens are arranged according to the determined ranking rather than a static, default or fixed sequence. As a simplified example, based on the data retrieved from the master data store, execution of a model may change the order of “income” topics from a default or static order beginning with “wages” to a new order of dividends, capital gains, business income, interest, rental income, etc. This not only results in modification of the user interface but also provides the user with a more personalised and pertinent tax return preparation experience. As the user continues to prepare the tax return, the user’s data changes may result in re-execution of the same model or execution of other models which, in turn, may result in changes to how tax topics are presented in various interview screens.[7]
[6] Specification at [0038].
[7] Specification at [0040] and [0041].
A user experience where the user interface evolves in effective real-time with structured tax return topics, consistent with the user’s entries as the user enters data, might be a laudable outcome. On the other hand, such real-time processing and output, responsive to data inputs, has been a feature of computer processing for a considerable period before the priority date. Similarly, iterative processing or re-execution of computer processes have been ubiquitous in computing systems for a long time. There is no unusual technical effect evident or arising from the computer systems, in this case, operating in these ways. There may well also be conditional execution and re-execution of topic ranking models in the present case, dependent on escrow data satisfying pre-determined criteria. Again though, such operations in the present case do not appear to result from any unusual technical effect, or improvement, in computer functionality. Such operations may be derived from conditional expressions in computer programming and are akin, in the present case, to the conventional “if-then” construct that is common across many programming languages.

The applicant further emphasised the utilisation of only a small portion of the master data store for particular users logged-in to the tax return preparation application. This was said to reduce the amount of data and interactions required by the computing system, thus leading to an efficiency in use of resources. Such an outcome would have been entirely expected by the relevant person skilled in the art well before the priority date. It has been inherently understood for a long time that using only a small portion of data, and only that data relevant to particular logged-in users, and working with that data when cached locally, would have led to the resource efficiencies described by the applicant. Again, there is no unusual technical effect or improved computer functionality in this arrangement.
There may well also be lower latency with the above arrangement. In computer processing environments at the relevant time though, any differences in latency, between data processing through a local cache selectively compared with a master data store, would have been substantially indiscernible to users. In any case, any such improvement in latency would have been entirely expected by the relevant person skilled in the art at the priority date.
There is similarly nothing unusually technical about the data escrow service within, or at least associated with, the topic ranking system. It is merely an embodiment of conventional, conditional, computer programming operating in its usual, expected way.
In respect to the presentation of tax return topics at the user interface, this is characterised by the ranking system determining a selection or order or sequence of tax topics to be presented to the user. There is nothing unusually technical about the presentation.
On the face of it, the alleged invention is not for a manner of manufacture.
In returning to the considerations mentioned in the applicant’s submissions, the above analysis may be summarised in the following ways.
Whether The Invention Solves A Technical Problem
In the context of the present specification, the problem of a static user experience relates to the content generated and presented at the user interface. That is not a technical problem in the present case. In respect to the inefficient utilisation of computer or data processing resources, that may be a technical problem.
In the latter respect, the applicant offered the solution of reducing the required data transfer. This is through the utilisation of only a small portion of the total data of the master data store, and working with just that portion locally through a cache for the particular logged-in users. At the relevant time, it would have long been entirely natural to selectively call upon and work with only the data that was needed for only currently active users. It is difficult to envisage this solving a technical problem. The computer system, in the present case, would appear to operate substantially in the same way for the same volume of data.
Whether The Invention Provides A Technical Solution
It is not apparent in the present case that there is a technical solution, irrespective of whether that addresses a technical problem or otherwise. On several points, the above analysis discusses an expectation that an unusual technical effect be utilised.
Determining If The Invention Requires Generic Computer Implementation
For a meaning of the term “generic”, it would appear convenient in the present case to refer to the minority judgement of the Federal Court in Aristocrat. In referring to Research Affiliates, Nicholas J appeared to equate “generic computer technology” with “conventional computer technology”.[8] In the present case, the above-described architecture is a conventional front-end and back-end architecture. The functionality to enable the ranking of tax return topics at the user interface and the filing of tax returns by users requires nothing more than generic computer implementation.
[8] Aristocrat at [112] and [120].
Practical And Useful Result
I accept that the ranking of tax return topics commensurate with the circumstances of individual users is a practical and useful result.
Intellectual Information
It is clear the whole of the alleged invention is not just to the presentation or arrangement of intellectual information. On the other hand, the purpose and outcome are the presentation, to the user, of a structure or arrangement of tax return topics at the user interface determined by the tax return topic ranking. In the present case, a consideration of whether the invention lies in the presentation or arrangement of intellectual information does not add substantially to the above analysis.
Balance Of Considerations
While accepting there may be a practical and useful result in the present case, the balance of the above analysis would suggest the alleged invention in this case is not for a manner of manufacture.
CONCLUSION
I conclude the claimed invention in this case is not for a manner of manufacture. Moreover, I see nothing of substance in the body of the specification to overcome this finding.
It is appropriate that the application be refused.
M. G. Kraefft
Delegate of the Commissioner of Patents