Intuit Inc. - [2020] APO 23

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Intuit Inc. [2020] APO 23

Patent Application: 2017201962

Title:Identifying Business Type Using Public Information

Patent Applicant:                   Intuit Inc.
Delegate:  M. G. Kraefft
Decision Date:  20 May 2020
Hearing Date:  Written submissions filed on 29 November 2019

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – configuring business management application – identifying business type of user from data from online social network to generate configuration setting of business management application – abstract idea – alleged invention not a manner of manufacture – application refused.

Representation: Patent attorney for the applicant: Davies Collison Cave

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017201962

Title:Identifying Business Type Using Public Information

Patent Applicant: Intuit Inc.
Date of Decision: 20 May 2020
DECISION
The claims of the application, as proposed to be amended, do not define a manner of manufacture.
Moreover, there is nothing of substance in the body of the specification from which valid claims could be drafted to overcome this finding.
The application is refused.
REASONS FOR DECISION
BACKGROUND

Intuit Inc. (“the applicant”) filed patent application 2017201962 on 23 March 2017. The application is a divisional application based on application 2013393324. That application has lapsed. The latter application in turn is based on two overseas applications. The earlier of those is an Indian patent application filed on 1 July 2013 (“the priority date”).
The present application has been subjected to three examination reports. In those reports, the examiner has maintained an objection that the claims of the application, including claims as proposed to be amended, do not define a manner of manufacture.
The applicant subsequently requested to be heard.
While the final date for acceptance of the application was 18 June 2019, patent sub-regulation 13.4(1)(g) may be available to extend the time for gaining acceptance to 3 months from the date of the present decision.
SPECIFICATION
The alleged invention relates to business management applications. Such applications may include accounting software, personnel software, payroll software, financial software, contract management software, amongst other things. In general, business management applications manage the financial aspects of a business entity.
The specification acknowledges that business management applications are typically user configurable. For example, one or more configuration settings of a business management application (“BMA”) may be determined based on user provided inputs, such as business name, business type, geographic location, language, culture related business processes, etc.
The specification, as presently proposed to be amended, ends with 18 claims. Claims 1, 7 and 13 are independent claims. These claims read as follows:-
1.A method for configuring a business management application (BMA) for managing financial aspects of a business entity, comprising:
obtaining a business name of an unconfigured user of the BMA using a computer processor that accesses a data entry field, wherein the unconfigured user is associated with the business entity, and wherein the BMA is a software as a service (SaaS) accessed by multiple users on a subscription basis;
retrieving, by the computer processor, a search result from an Internet search engine using the computer processor to make an application programming interface call with the business name as a search keyword, wherein the retrieving is accomplished through an application programming interface that is associated with the Internet search engine, and wherein the search result is in a machine readable and structured format according to the application programming interface of the Internet search engine;
analysing, by the computer processor, the search result to identify a business type of the unconfigured user by:
determining whether the search result includes a hyperlink to a page of an online social network used by the unconfigured user,
in response to determining that the search result includes the hyperlink to the page of the online social network, retrieving, by calling an application programming interface that is associated with the online social network, content from a field of structured data of the page based on a pre-determined format of the structured data, wherein the retrieved content includes the business type of the unconfigured user, and
extracting the business type from the retrieved content;
generating, by the computer processor, a configuration setting of the BMA to enable a module of the BMA based on the business type, wherein the configuration setting is used by the BMA to generate a customized result specific to the business type as determined by a specified percentage of previous users of the business type; and
presenting, in response to generating the configuration setting, a message confirming the module is enabled.
7. A system for configuring a business management application (BMA) for managing financial aspects of a business entity, comprising:
a computer processor;
memory storing instructions executable by the computer processor, wherein the instructions comprise:
a BMA interface configured to:
provide a data entry field;
obtain, via the data entry field, a business name of an unconfigured user of the BMA, wherein the unconfigured user is associated with the business entity, and wherein the BMA is a software as a service (SaaS) accessed by multiple users on a subscription basis;
provide a business type of the unconfigured user to the BMA; and
present a message confirming a module of the BMA is enabled based on the business type;
a search engine interface configured to:
retrieve a search result from an Internet search engine using an application programming interface call with the business name as a search keyword, wherein the retrieving is accomplished through an application programming interface that is associated with the Internet search engine, and wherein the search result is in a machine readable and structured format according to the application programming interface of the Internet search engine; and
a search result analyser configured to:
analyse the search result to identify the business type of the unconfigured user by:
determining whether the search result includes a hyperlink to a page of an online social network used by the unconfigured user,
in response to determining that the search result includes the hyperlink to the page of the online social network, retrieving, by calling an application programming interface that is associated with the online social network, content from a field of structured data of the page based on a pre-determined format of the structured data, wherein the retrieved content includes the business type of the unconfigured user, and
extracting the business type from the retrieved content; and
generate a configuration setting of the BMA to enable the module of the BMA based on the business type, wherein the configuration setting is used by the BMA to generate a customized result specific to the business type as determined by a specified percentage of previous users of the business type; and
a repository configured to store the business name, the search result, and the configuration setting.
13.A non-transitory computer readable medium storing instructions for configuring a business management application (BMA), the instructions, when executed by a computer processor, comprising functionality for:
obtaining a business name of an unconfigured user of the BMA by accessing a data entry field, wherein the unconfigured user is associated with the business entity, and wherein the BMA is a software as a service (SaaS) accessed by multiple users on a subscription basis;
retrieving a search result from an Internet search engine using an application programming interface call with the business name as a search keyword, wherein the retrieving is accomplished through an application programming interface that is associated with the Internet search engine, and wherein the search result is in a machine readable and structured format according to the application programming interface of the Internet search engine;
analysing the search result to identify a business type of the unconfigured user by:
determining whether the search result includes a hyperlink to a page of an online social network used by the unconfigured user,
in response to determining that the search result includes the hyperlink to the page of the online social network, retrieving, by calling an application programming interface that is associated with the online social network, content from a field of structured data of the page based on a pre-determined format of the structured data, wherein the retrieved content includes the business type of the unconfigured user, and
extracting the business type from the retrieved content;
generating a configuration setting of the BMA to enable a module of the BMA based on the business type, wherein the configuration setting is used by the BMA to generate a customized result specific to the business type as determined by a specified percentage of previous users of the business type; and
presenting, in response to generating the configuration setting, a message confirming the module is enabled.
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.
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
In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in this regard. At page 275:-
“… a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art …- that its value to the country is in the field of economic endeavour”.
At page 276, the High Court further observed that what is meant by a “product” in relation to a process is only something in which a new and useful effect may be observed. More specifically:-
“Sufficient authority has been cited to show that the ‘something’ need not be a ‘thing’ in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed”.
In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:-
“The effect produced by the appellant’s method exhibits the two essential qualities upon which ‘product’ and ‘vendible’ seem designed to insist. It is a ‘product’ because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage … for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, at [23]:-
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
Moreover at [98]:-
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
In Research Affiliates LLC v Commissioner of Patents (“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? …”
SUBMISSIONS
The applicant cited the relevant law from the above-mentioned NRDC, Myriad and RPL cases. There appeared to be nothing contentious about the appropriate principles of law that applied in this case.
The applicant further referred to the Federal Court decision in Rokt Pte Ltd v Commissioner of Patents (“Rokt”), [2018] FCA 1988. In respect to that case, the applicant stated that the Federal Court noted that the combination of the claimed techniques or components should be considered as opposed to individual elements. Specifically, from [202] of Rokt:-
“A focus on elements known … in isolation tends to lose sight of the combination of techniques or components in an innovative and previously unknown way.”
Moreover, from [212]:-
“In addition, known components had been integrated into a single system in an innovative and previously unknown way. The invention brought together some new elements and some known elements to form a working combination that had not previously been achieved and involved the use of computers in a way that was foreign to their normal use …”
After quoting a number of passages of the specification, the applicant submitted that it was clear that the present application is directed towards solving difficulties associated with the configuration of computer-implemented BMA software. The applicant further stated that it was also clear from the description that the application is directed towards providing computer-implemented techniques for solving these difficulties.
The applicant further submitted that the claimed invention can be contrasted against traditional techniques for retrieving content for configuring applications. The applicant mentioned such techniques as those involving extracting content by parsing a company web site or the like, and indicated that those were computationally expensive and error-prone because of the vast range of different data structures that may be encountered in these types of content sources. The applicant thus stated that the claimed invention solves the problem of configuring a BMA without the need for computationally expensive techniques for parsing search results and web page data, and that this represents a technical contribution to the art, which results in an improvement in the functioning of the computer, particularly in relation to its configurability.
DISCUSSION
Discussion of the Claimed Invention
From the above-listed independent claims, it would be clear that the alleged invention relates to configuring a BMA for an unconfigured user based on an identified business type of the unconfigured user. According to some of the dependent claims and the body of the specification, the configuration setting may relate to a business workflow and/or business documentation. The unconfigured user would typically be a first-time user of the BMA.
While the applicant stated that the present application was directed towards solving difficulties associated with the configuration of computer-implemented BMA software, the applicant did not specifically indicate what those configuration difficulties may have been. Moreover, any such difficulties, or solutions thereto, do not appear to be borne out in either the claims or in the body of the specification. That is, the specification is not principally about BMA software configuration issues.
On the contrary, the substance of the alleged invention, as claimed, resides in the process by which the business type of the unconfigured user is identified. Specifically, the business name of the unconfigured user is obtained. The business name is used as a search keyword in a search engine to retrieve a search result. That search result is analysed to identify a business type of the user in the following way.
The analysis involves a determination of whether the search result includes a hyperlink to a page of an online social network (“OSN”) used by the unconfigured user. In response to determining that the search result includes the hyperlink, content from a field of structured data of the page is retrieved. The retrieved content includes the business type of the unconfigured user. In essence, the alleged invention, as claimed, involves the use of social media, and specifically sourcing at least a page thereof associated with the user, to extract the business type. In drilling down the substance of the claimed invention to this level, the question then is whether this essence is where the contribution to the art resides in the present case.

The above-described processes, individually and in combination, would appear to have principally relied on standard computer functionality and use at the priority date.
For instance, there would have been nothing out of the ordinary at the priority date in computer systems configuring a BMA for a specific user and/or to a specific business type. This is simply user-specific customisation of an application.
The obtaining of a business name of the user from a data entry field, using that business name as a search keyword in a search engine and retrieving a commensurate search result therefrom were standard functional features of search system inputs, processing and outputs at the relevant time. The only characterising aspect here is in the nature of the data input and output, that being the business name and an output commensurate with that. On the other hand, it has long been held that mere intellectual information is not patentable (Research Affiliates at [93] and [94], and Grant v Commissioner of Patents, [2006] FCAFC 120 at [18], [29], [32] and [47]). The claiming of application programming interfaces (“APIs”) associated with the BMA and/or the search engine to effect such processing also would have added nothing of substance in a technical way to standard functionality of computer systems at the relevant time. APIs have long been used as specifications, for example communication protocols, for external interactions with associated software or applications.
As indicated above, the alleged invention, as claimed in its broadest form, may be characterised in the following way. The analysis of the search result, firstly, involves determining whether the search result includes a hyperlink to a page of an online social network used by the unconfigured user. Secondly, in response to determining that is so, content from a field of structured data of the page is retrieved. Like the APIs discussed above, the claimed use of an API associated with the OSN to effect this process would have added nothing of substance technically at the relevant time. In this respect, it may also be noted that the specification, for example at [0062], acknowledges the prior existence of social network APIs. Similarly, the provision of structured data in a pre-determined field or format has long been standard practice to assist in effective content storage, and in effective, subsequent retrieval from a source, with or without the use of APIs. On the face of it, this leaves the contribution to the art to simply reside in the idea of using the social network to source the content from which the business type of the user is extracted.
This is supported by the title of the patent specification, which is to identifying the business type using public information. Similarly the specification introduces at least Figures 1 and 2 by stating that those figures show, respectively, a block diagram of a system (at [0032]) and a flow chart (at [0048]), for identifying a business type using public information in accordance with one or more embodiments of the invention.
Whether There is a Requisite Technical Effect
The contribution is in essence a programming issue, and specifically a computer program to source content, from an OSN, from which the business type of the user is extracted. While a program could be said to relate to merely a scheme or an abstract idea, that is not necessarily the end of the matter. At [103] of Research Affiliates, 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, or outside the computer. In the present case, the question then is whether there is anything in the result of running or operating the above scheme in a computing environment that elevates the contribution to somewhere beyond being a mere scheme, such as to an improvement in computing.
In particular, it would appear prudent in the present case to consider the effect of the retrieved content from the OSN being from a field of structured data that is of a pre-determined format. It may be said that a process for search and retrieval of such structured data is more efficient on computer processing resources than would be the case for unstructured data. It may then be said that such a process provides a requisite technical effect when extracting the business type of an unconfigured user from such data fields of an OSN. In submissions, the applicant effectively indicated the same thing in comparing traditional techniques for retrieving content, such as by parsing websites with their vast range of different data structures, against the present case which effectively reduces the computational burden of retrieving the content.
The present situation may have similarities with International Business Machines Corporation v Commissioner of Patents (“IBM”), [1991] FCA 625, (1991) 33 FCR 218, and with Bio-Rad Laboratories, Inc. (“Bio-Rad”), [2019] APO 26. In IBM, the invention related to producing a visual representation of a curve image on a display from a set of control points defining the image. The claimed method comprised a number of computing steps. Specifically, scaled vector coefficient integers were computed from a set of input control points for each dimension of a curve, forward difference interval coefficient integers were computed for each dimension for each interval of the curve, and curve coordinate values were computed. Crucially, the computing steps were carried out without the use of floating-point arithmetic. The incremental scaling using integer arithmetic was stated to increase the speed and accuracy of computations to generate an improved curve image.
In Bio-Rad, the invention related to automated testing machines, for example in the medical field, being qualified periodically to maintain confidence that the machines were operating properly. More specifically, the qualification processes involved sampling machine-testing samples, also called quality control materials, against known characteristics, and computing statistically valid means and ranges for particular sampled lots such that confidence levels of proper machine operation were within specified tolerances. In Bio-Rad, the specification mentioned the realisation that, while the mean test result expected from a particular quality control material varied between lots, the variability of the test results tended to remain relatively stable between lots. Embodiments of the invention in that case took advantage of that realisation by using a database of historical test results to establish assay ranges. Thus, relatively few new tests were required to establish assay means and ranges for a new lot of quality control material. Specifically, no more current test sampling was required to obtain a variability estimate than that required to compute the mean.
The non-use of floating-point arithmetic in IBM and the non-use of current test samples to compute the variability estimate in Bio-Rad may relate with the non-use of unstructured data in the present case when extracting the business type of an unconfigured user. All three situations may be said to result in computer processing efficiencies and thus realise a technical effect. The present case though is different. As claimed, the present case retrieves business type content from a field of structured data from the OSN.
There is nothing particularly claimed or described in the present specification of a technical effect relating to the obtaining or the use of structured data. For example, there is nothing about processes for specifically identifying structured data fields, or distinguishing structured from unstructured data fields, or of any specific issues of a technical nature accordingly related to retrieving content from the structured data fields of the OSN. If such were the case, that may lead one to conclude there was a requisite technical effect in the present case. On the contrary, the specification appears to simply proceed on the premise that the OSN has structured data fields and that is where business type content may be found. Moreover, as indicated above, the provision of structured data in a pre-determined field or format has long been standard practice to assist in effective content storage, and in effective, subsequent retrieval from a source. The resultant efficiencies on computer processing resources when searching and/or retrieving data that is in structured data formats have long been recognised and inevitable. In the above context, the words of the Federal Court in Research Affiliates appear to be pertinent. At [108]:-
“The computer that may be utilised is described in general terms, without an indication that any unusual technical effect is utilised.” (my emphasis).
Similarly, and in a somewhat broader context commensurate with the principles from NRDC, for example at page 277, the concluding point at [94] of Research Affiliates states as follows:-
“A method that is in the nature of directions for use does not constitute an invention or a manner of manufacture in the absence of some previously unrecognised property of an aspect of the method.”
In the present case, I think it cannot be fairly said that the claimed business type retrieval process, including its retrieval of structured data, utilises or results in an unusual technical effect or makes use of a previously unrecognised property of an aspect of the method.
The same may be said of the claimed concluding steps of generating a configuration setting of the BMA to enable a module thereof based on the business type, and of presenting, in response, a message confirming the module is enabled.
I conclude the above independent claims do not define a manner of manufacture.
Dependent Claims
The dependent claims similarly fail for lack of a manner of manufacture, although claims 5, 6, 11, 12, 17 and 18 warrant further elaboration.
These claims relate to the alternative where the search result does not include a hyperlink to a page of an OSN. In that case, as claimed, the search result is matched to one of a plurality of pre-determined keyword lists corresponding to a plurality of business types. A business type is then identified in response to the matching. There does not appear to be anything in this process that involves or realises an unusual technical effect or an improvement in computing.
On the contrary, it may even be said that the matching process would likely involve significant, additional computational burden. The specification contains discussion of the keyword matching process at [0043] – [0045] and at [0054]. For example, in some embodiments, a keyword list, and by inference a corresponding business type, is selected based on that list including the highest number of matching keywords with the search result, compared with any other keyword list. Moreover, the specification does not provide information or guidance as to the nature or extent of keywords that would make up keyword lists, and would thus be useful in the exercise. The process appears to be completely open and limitless in terms of establishing keywords for even any one particular keyword list and corresponding business type, let alone for all keyword lists and business types. In this respect, it may also be that the specification fails under section 40.
Body of Specification
The body of the specification broadly describes and illustrates a system of interconnected parts, coupled via a network. The parts may include a BMA, an OSN application, an unconfigured user, social network friends, a search engine and a BMA configuration tool that includes a data repository. The BMA configuration tool may also have a BMA interface, search engine interface, OSN interface and search result analyser. The network may include a mobile phone network, a wide area network (“WAN”), a local area network (“LAN”), amongst other things, or may be coupled to or overlap with the Internet. All of this represents standard types of computing elements, applications and interconnections with users at the relevant time.
The specification further describes and illustrates screen shots with search keywords, and search results including OSN pages with unstructured and structured data fields. An unconfigured user registration process for the BMA is also described and illustrated. Again, there is nothing here beyond ordinary computer processing functionality at the relevant time.
It may also be noted that the specification states, at [0071], that embodiments of the invention may be implemented on virtually any type of computing system regardless of the platform being used.
I find there is no manner of manufacture evident in the body of the specification as a whole.
CONCLUSION
I conclude the claims of the application, as proposed to be amended, do not define a manner of manufacture.
Moreover, I find there is nothing of substance in the body of the specification from which valid claims could be drafted to overcome this finding.
It is appropriate that the application be refused.
M. G. Kraefft
Delegate of the Commissioner of Patents