James McHarg Fitzsimons
[2023] APO 67
•22 December 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
James McHarg Fitzsimons [2023] APO 67
Patent Application: 2017201980
Title:System of advanced features for email
Patent Applicant: James McHarg Fitzsimons
Delegate:Anish Singh
Decision Date: 22 December 2023
Hearing Date: Written submissions filed on 29 August 2023
Catchwords: PATENTS – section 45 – examiner’s objection – advanced features for email – management of emails – reply to all – manner of manufacture – invention in substance directed to a scheme – application refused – lack of unity and inventive step not considered
Representation: Patent attorney for the applicant: Wallington-Dummer
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017201980
Title:System of advanced features for email
Patent Applicant: James McHarg Fitzsimons
Date of Decision: 22 December 2023
DECISION
The claims, as proposed to be amended, do not define a manner of manufacture. The matter
described in the body of the specification provides no material that could result in allowable amendments to the claims overcoming this finding.
I refuse the application.
REASONS FOR DECISION
Background
Patent application 2017201980 (the application) by James McHarg Fitzsimons (the applicant) was filed on 23 March 2017.
The application was subjected to one examination report only. Examination report no. 1, issued on 23 February 2022, contains objections with respect to manner of manufacture, lack of unity, and inventive step. The applicant did not respond to this report. Instead, on 23 February 2023, the applicant requested to be heard with respect to examination report no. 1.
The hearing was conducted by way of written submissions. On 29 August 2023, the applicant filed written submissions (the applicant’s submissions) and proposed amendments to the specification.
The final date for acceptance of the application was 23 February 2023, however, paragraph 13.4(1)(g) of the Patents Regulations 1991 (the Regulations) may be available to extend the time for gaining acceptance to three (3) months (or longer under subregulation 13.4(3)) from the date of the present decision.
The specification
The proposed amendments
The amendments proposed on 29 August 2023 are directed to deleting all description pages 1 to 21 as filed and substituting them with new pages 1 to 15, and deleting all claim pages 22 to 27 as filed and substituting them with new pages 16 to 18.
I do not need to decide conclusively whether the proposed amendments are allowable as it will not affect the outcome of my decision. Nonetheless, the amendments appear allowable, and for the benefit of the applicant, I will consider the specification as proposed to be amended.
The body of the specification
Paragraph [0001] of the specification outlines the field of the alleged invention. In particular, it states:
"The present invention relates to the field of email transmission and, more particularly, but not exclusively, to the transmission and reception of emails whereby access to and/or transmission of data associated with selected parties to the transmission is controlled.”
Several issues with the existing email systems have been identified in the specification and summarised in (a) to (c) below. The specification also outlines a desired feature of the email system in (d) below.
(a)The use of Blind Carbon Copy (BCC)
Typically, a BCC recipient sees the details (i.e., the identities and email addresses) of public recipients (i.e., recipients listed by the sender in the “To:” and “CC:” fields), however, the public recipients are unable to see the details of the BCC recipient. The issue arises when the BCC recipient replies to all recipients by using the “Reply to All” function as this makes all public recipients aware that the BCC recipient was copied in the original email. This may be undesirable for the sender of the original email.
(b)Forwarding of an already sent email to another recipient
The background of the invention in the specification indicates that when a sender forwards an already sent email to another recipient (the forward recipient) and the forward recipient uses the “Reply to All” function, only the original sender will receive the reply. However, the specification states that the forward recipient will see the details of all recipients of the original email including public and BCC recipients, which again may be undesirable.
(c)Customisation of messages
In cases where a sender sends an email to multiple recipients but wishes to customise the email message depending on the recipient, the specification notes that the sender would need to copy and paste content from a master email, customise the email for each recipient, and send each email to respective recipients. The specification notes that “this process is long winded, complicated and time consuming” in paragraph [0006] of the amended description.
(d)Sending equivalent of a blind forward of an email
The definition of a blind forward of an email is provided in paragraph [0007] of the amended description as “where the recipient sees that they are receiving a copy of an email that the sender has already sent to another person”. It is desired that the blind forward email recipient does not see email addresses of the people who received the original email, is only able to reply to the original sender, and that the sender is able to set a default message to the recipient.
In addressing the issues listed above, the specification turns to embodiment 1 as illustrated by the Fig. 1-3 in the specification. Fig. 1 is reproduced below:
10. Fig. 1 discloses an example user interface of the email system comprising traditional fields, such as “To:”, “CC:” and “BCC:”. The figure further shows an additional field titled “Blind Fwd:”, which, when used, only allows the respective recipient to receive a copy of a sent email “in a format that would mimic the way a standard forwarded email would look with the exception that all email addresses except for the sender’s address would be suppressed” (paragraph [0021]).
11. The user interface as illustrated in Fig. 1 includes two additional functions titled “Customize” and “Disable Reply to All” with respective check boxes (19 and 20) to select respective functions.
12. Function 20 allows the sender of the email to disable “Reply to All” function that may otherwise be available to all BCC recipients of the email. By checking the respective check box, the system suppresses the publication of each recipient’s email address in the email. In other words, by suppressing all email addresses, even if a recipient of the email selects the “Reply to All’ function, the email will only be sent to the original sender and not all recipients.
13. Function 19 allows for customisation of an email where a master email is treated as a template from which multiple versions of the email are presented to the sender, allowing for individual versions of the email to be sent to different recipients. Said multiple versions of the email are presented to the sender when the “Send” button 14 is selected and “Customize” function is also selected.
14. The description focusses on the customisation function 19 of the invention which allows the sender to customise the master email in multiple ways to address the issues identified in paragraph 8 of this decision above. I, therefore, find it necessary to expand on this function.
15. In one embodiment, each one of the multiple versions of emails from the master email includes space in which the sender could add a customised message. The body of the email, subject of the email, and recipients are duplicated in designated spaces in the multiple versions. When a version of the email from the multiple versions with customisation is sent to a recipient, another version for the next recipient from the master recipient list is presented to the sender for customisation and eventual sending. Through this process, each recipient in the master recipient list may receive a customised email from the sender. In this way, the process also allows the sender to work off a master email with a complete list of recipients to create customised emails with modified messages for each recipient. Fig. 2 and Paragraphs [0028], [0029] highlight these features:
“[0028] In this example the body from the original template email 43 is moved down on the email page 49 to allow space at the top of the email 48 for the sender to add a customized message. A duplicate 46 of all recipients itemized in the original email 41 is sent with the email. The subject 47 is also duplicated from the original template email 42. When the email with customization 48 is sent, then an email for the next recipient from the master recipient list 41 is presented to the sender for customization 52 and sending.
[0029] Each additional recipient 51 53 itemised in the original recipient list 41 receives a customized email from the sender as the sender modifies and customizes the email and sends them.”
16. The specification follows on to provide an overview of the email system which may be utilised to realise the effects of the embodiments described. The system utilised is illustrated in Fig. 4 in the specification, and is reproduced below:
17. The system (100) comprises at least one transmission email server (101) for transmitting and receiving emails over the Internet (102) to servers (103, 104). The servers may include a receiving email server (103) and a blind forward server (104). An application (110, 111, 112) may run on a digital device (105, 106, 107) to enable communication with respective servers.
18. In operation, the sender creates an email (using the “original sender template”) by populating the target address of recipient and blind forward recipient in the respective fields “To:” and “Blind Fwd:” and adding content in the message field of the template. This email is transmitted by an application on a first digital device to a transmission email server. The transmission email server then transmits the email to the receiving email server which then forwards the email to a second digital device for display.
19. At substantially the same time as the transmission email server sends the email to the receiving server, the transmission email server also sends the contents of the email to the blind forward server which then forwards a version of the email including any customised information applied by the original sender using the “Customize” function shown in Fig. 1 and templates shown in Fig. 2 to a third display device. If the original sender originally selected “Disable Reply to All” by selecting box 20, email addresses of all recipients except the sender’s email would be suppressed. In this case, even if the recipient of the email uses the “Reply to All” function, the reply is only transmitted to the original sender. Consequently, the alleged invention is providing more control of email management within the emailing system.
The claims
20. The specification, as proposed to be amended on 29 August 2023, ends with four (4) claims. The claims are as follows:
1. A method of preparing an e-mail for forwarding to a blind forward addressed recipient at the same time as preparing the e-mail for sending the e-mail to a target addressed recipient; said method comprising preloading a target addressed recipient field of an e-mail template with the e-mail address of the target addressed recipient; preloading a separate blind forward addressed recipient field of the e-mail template with the e-mail address of a blind forward addressed recipient; whereby on causing the e-mail thus preloaded to be sent, the contents of the e-mail template are transmitted by e-mail to the target addressed recipient and at substantially the same time and as part of the same e-mail transmission operation contents of the e-mail template are transmitted by e-mail to the blind forward addressed recipient; and wherein the identity of the target addressed recipient is transmitted to the blind forward addressed recipient, but the e-mail address of the target addressed recipient is not transmitted to the blind forward addressed recipient.
2. The method of claim 1 wherein prior to transmission of the e-mail template to the blind forward addressed recipient a customised forward message field template is presented for insertion of a customised forward message prior to transmission for subsequent presentation to the blind forward addressed recipient together with the contents of the email template.
3. The method of claim 1 or 2 wherein the identity of the target addressed recipient is not transmitted to the blind forward addressed recipient.
4. A method of transmission of an e-mail from a transmission e-mail server to a receiving e-mail server; said method comprising presenting an e-mail template to a user; said template including a target addressed recipient field and a separate blind forward addressed recipient field; said user preloading the target addressed recipient field of the e-mail template with an e-mail address of the target addressed recipient; said user preloading the separate blind forward addressed recipient field of the e-mail template with an e-mail address of a blind forward addressed recipient; said transmission e-mail server sending contents of the e-mail template as a blind forward e-mail transmission to a receiving e-mail server of the blind forward addressed recipient after first stripping the e-mail address of the target addressed recipient from data comprising the blind forward e-mail transmission.
Manner of manufacture
21. I will now consider the objection with respect to manner of manufacture.
The examiner’s objection
22. Examination report 1 contains the following objection in respect to manner of manufacture:
Claims 1-25 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990 according to the principles set out in D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass), Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat), Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases. The claimed invention, as a matter of substance rather than form, is not suitable subject matter for a patent.
The substance of the claimed invention is to be determined by considering the state of the art and the true nature of the invention.
Broadly, the claimed subject matter relates to an abstract scheme of preparing emails for transmission.
In RPL [099], the Full Federal Court indicated several factors relevant to consider when determining whether a claimed invention as a matter of substance relates to patentable subject matter. These included:
·Is the contribution to the claimed invention technical in nature?
·Does the claimed invention solve a “technical” problem within the computer or outside the computer?
·Does the claimed invention result in an improvement in the functioning of the computer, irrespective of the data being processed?
·Does the claimed invention merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea?
In weighing up the variety of factors which indicate what the substance of the claimed invention is and whether the claimed invention as a matter of substance relates to patentable subject matter, I have concluded the claimed invention, as a matter of substance, does not relate to patentable subject matter.
The technical features of the alleged invention (e.g. emails), at the priority date were considered to be generic in the art. The claimed invention does not result in an improvement in the functioning of the general purpose computer system, irrespective of the data processed. The contribution to the art and substance of the invention thus appears to lie in a (sic) an abstract scheme of preparing emails for transmission.
Therefore, the claimed invention, as a matter of substance, does not define subject matter suitable for a patent.
23. It would appear that the examiner considered that the contribution lay in a scheme for preparing emails for transmission and that the alleged invention is an “administrative” innovation rather than a “technical” innovation.
Applicable law
24. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) came into effect on 15 April 2013. As the application was filed after 15 April 2013, the application is subjected to the amended provisions of the Patents Act 1990 (the Act) and the Regulations. Under subsection 49(1) of the Act the standard of proof that applies to the application is the balance of probabilities. This means that I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. Alternatively, I can refuse the application if not so satisfied on the balance of probabilities.
25. Paragraph 18(1)(a) of the Act reads:
“(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”
Case law
26. There are several Court decisions that considered whether patent applications satisfied s18(1)(a), however for this case, the following Court decisions appear most relevant:
National Research Development Corporation v Commissioner of Patents [1959] HCA 67, (1959) 102 CLR 252 (NRDC)
Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (Research Affiliates)
D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad)
Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL Central)
Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt)
Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass)
Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat 22)
27. In NRDC the High Court provided a statement of the law on manner of manufacture at p269:
“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 Court further, in NRDC at p275, set out a test applicable to the facts of that case:
“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.”
29. The High Court though was not laying down a precise formulation that can be applied unthinkingly. In Myriad at [23] it was emphasised that:
“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.”
30. The Court in Myriad at [144] provided that case-by-case approach must have regard to the substance of the claimed invention, not simply the form:
“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.”
31. The Court in Research Affiliates also stressed on the importance of understanding the invention as a matter of substance and not as a matter of form at [106]:
“The determination whether the claimed invention is truly ‘an artificially created state of affairs’ in satisfaction of NRDC is made not by some mechanistic application of the criterion of artificiality or physical effect, but by an understanding of the claimed invention itself. The invention is to be understood as a matter of substance and not merely as a matter of form.” (original italic)
32. The Court in RPL Central, having considered Research Affiliates and Myriad, further confirmed the approach of understanding the invention as a matter of substance and provided guidance in determining manner of manufacture for inventions implemented using computers at [96] – [98], [104] and [107]:
“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.” [96]
“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 Wi-Fi, 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?” [97]
“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.” [98]
“It is stated in the specification, and was accepted by the primary Judge, that the method could not be carried out without the use of a computer. This alone cannot render the claimed invention patentable if it simply involves the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself. A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. This necessitates some ingenuity in the way in which the computer is utilised (Research Affiliates).” [104]
“Simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method. Is the fact that the scheme cannot practically be implemented without a computer, that is, that the computer is integral to the working of the scheme, sufficient to make it patentable? The answer is not straightforward because this is not a case where the computer simply processes the information entered by the user, for example by using an algorithm, or retrieves information from the Internet in response to a user’s question.” [107]
33. The Full Federal Court in Rokt confirmed the principles. Similarly, an expanded bench of the same Court confirmed the principles in Encompass.
34. The principles from RPL Central and Research Affiliates were summarised by the Delegate in Aristocrat Technologies Australia Pty Limited [2016] APO 49 (Aristocrat 16) at [35]:
“I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information.”
35. Arisocrat 22 is a recent High Court decision on manner of manufacture. The six judges of the High Court were evenly divided, therefore, there was no majority and no usual binding precedent set. As a result of the operation of s23(2)(a) of the Judiciary Act 1903, the decision of the Full court of the Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 that the invention concerned was not for a manner of manufacture was affirmed. Importantly, the above mentioned decisions of the Full Court were not criticised and remain undisturbed.
The applicant’s submissions
36. In the written submissions, the applicant provided a response to the section 40, inventive step and patentable subject matter objections that were raised in the Examiner’s first report. I will initially concentrate on the response to patentable subject matter and refer to other parts of the response as I find relevant for patentable subject matter.
37. The applicant submitted that the claims as proposed to be amended are now more focused than the originally filed claims. In particular, the applicant emphasised on the TAR (i.e., target address recipient) e-mail address non-transmission feature. The applicant defined the TAR email address non-transmission feature as “the email address of the target address recipient is not available to the blind forward addressed recipient” under the “Section 40” response of their submissions. Consequently, the applicant submitted that what is claimed now “cannot be described as ‘generic in the art’” and “is clearly of a technical nature and is a technical advance in the art of email transmission”.
38. The applicant further referred to the European problem solution approach and submitted that the problem being addressed is of a technical nature and the solution to the technical problem also “has technical characteristics sufficient to qualify as a manner of manufacture”.
39. In particular, the applicant highlighted that the “technical area of email transmission may be characterized as a form of routing” where the “routing is highly specific based on source and destination information and the end result is a system which permits messaging close to the speed of light from one virtual location on the planet to another”.
40. The applicant further submitted that the “TAR e-mail address non-transmission feature is in effect a selective switching function”.
41. The applicant then referred to factors from the RPL Central decision that were used by the Examiner in determining whether the claimed invention as a matter of substance is patentable subject matter. The factors and response from the submissions are reproduced below:
· “Is the contribution to the claimed invention technical in nature?
Applicant argues it is – see above.
· Does the claimed invention solve a ‘technical’ problem within the computer or outside the computer?
Applicant argues it solves a perceived problem that extends well beyond any one computer – see above.
· Does the claimed invention result in an improvement in the functioning of the
computer, irrespective of the data being processed?
The invention results in improvement in the operation of an email system rather than a computer per se.
· Does the claimed invention merely require generic computer implementation?
The invention may be implemented using digital data processing components. In one form this can be an appropriately programmed computer but is not limited to such and is part of a network. The claimed invention will not work merely by the programming of a single PC. Refer (sic) routers and similar components which are digital data processing components of sufficiently specific purpose that they (sic) are not termed a ‘computer’ as such. All are necessary working in interconnected concert to give effect to an email system.
· Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea?
The claimed invention will not work merely by the programming of a single PC. Refer routers (sic) and similar components which are digital data processing components of sufficiently specific purpose that they (sic) are not termed a ‘computer’ as such. All are necessary working in interconnected concert to give effect to an email system.”
Consideration
42. I find it convenient to first address the factors from the RPL Central decision that were found in the Examination report 1 and applicant’s submissions, noting that some of them may involve somewhat overlapping considerations.
Does the alleged invention solve a technical problem within the computer or outside the computer?
43. The applicant submits that the problem as identified at paragraph [0004] of the specification is:
“A little understood but significant problem within email systems is that if a person sends a BCC and the BCC Recipient uses the functionality commonly known as ‘Reply to All’, then all the Public Recipients of the original email receive a reply as well as the Sender. This problem results in Public Recipients receiving a message that was sent by a BCC recipient using (either deliberately or inadvertently) ‘Reply to All’ becoming aware for the first time that the BCC recipient was copied in originally. This can lead to embarrassing and complicated situations potentially with legal ramifications; if the Sender had wanted the Public Recipients to know that a BCC Recipient was receiving the message (s)he would have made the BCC Recipient a Public Recipient”.
44. Indeed, a fair read of the specification clearly outlines the issue that arises when a BCC recipient uses the “Reply to All” function and replies to all recipients of the original email. I acknowledge the fact that this may lead to “embarrassing and complicated” situations. However, at its core, I do not consider that the alleged invention solves a problem that is caused by any technical limitations. Rather, the problem only arises when a user of the email system, i.e. the BCC recipient, uses the function(s) (i.e. “Reply to All”) of the email system in a less than desirable manner, which then may result in “embarrassing or complicated” situations for the sender or other recipients of the email.
45. The applicant further in their submissions for “Novelty and Inventive Step” submits that “…the present application seeks to avoid the need for any such ‘management’ of a response by ensuring that the email address of target address recipient is not available at all” to address the problem stated at paragraph [0004] of the specification. I agree with the applicant that the alleged invention may avoid such “management” oversight, however, the problem, once again, is the less than desirable use of the “Reply to All” function. Avoiding or removing a management burden to ensure desirable recipients receive response emails is of an administrative nature.
46. I, therefore, do not see the alleged invention solving a technical problem outside the computer. I will now turn to the specification to determine if the alleged invention attempts to solve a technical problem within the computer. In doing so, I will look at the points listed under paragraph 8(b)-(d) above, as paragraphs 43-45 above already discusses the issue identified in paragraph 8(a).
47. Like the issue listed under paragraph 8(a), the problem identified by paragraph 8(b) also appears to be related to the use of the email system and its functions. In this case to avoid any instances where an already sent email with BCC recipients is forwarded to other recipients, the sender may inadvertently disclose address information of public and BCC recipients of the original email to these other recipients. This, once again, is a management and email use issue and only attributes to an administrative problem being solved. I do not find the alleged invention solving a technical problem within a computer or outside the computer.
48. Regarding the issue of paragraph 8(c), the specification notes in paragraph [0006] that when a sender wishes to customise an email message depending on the recipient(s), the sender would need to copy and paste content from a master email, make changes as needed and then send the customised email to the recipient(s). The problem identified here is that the “process is long winded, complicated and time consuming”. The complication appears to be dependent on a user’s proficiency with the email system or client. Regardless of whether the content of the master email and/or its recipients are stored on systems linked within the email system, different templates being in the email system, or sent emails being used to copy content, a user may find the process “long winded, complicated and time consuming”. In addition, this appears to be an issue of administrative convenience unrelated to any technical limitations. I do not find the alleged invention solving a technical problem within a computer or outside the computer.
49. Regarding paragraph 8(d) above, the alleged invention utilises a blind forward of an email message. This also depends on the proficiency of the user with the email system or client. The issue remains essentially the same as 8(a), that is, how to avoid sending emails to all recipients of an email from a blind copied recipient and/or the same as 8(b), that is, how to suppress email address information of recipients in a previously sent email when forwarding the same. I maintain that the problem, at its core, is an administrative problem rather than a technical problem.
Does the alleged invention result in an improvement in the functioning of the computer, irrespective of the data being processed?
50. The applicant submits that the “invention results in improvement in the operation of an email system rather than a computer per se”. I turn to Fig. 1, 2 and 4 and the corresponding disclosure provided in the specification, as these passages best represent the alleged invention.
51. In addition to the traditional “To:”, “CC:” and “BCC:” fields, a sender may compose an email and add recipients to a “Blind Fwd:” field by selecting this additional field and specifying the “blind forward” recipients. The functionality of this field prevents a “blind forward” recipient from responding to the original email in such a way that all other recipients would be alerted that the “blind forward” recipient was added to the email. Suppressing email addresses and/or names of other recipients is a standard function of email systems and/or email clients. The creation of a field, such as the “Blind Fwd:” field and setting instructions to suppress user information only amounts to standard use of known functionality of emailing systems. I do not find that by adding such a field, the alleged invention improves the functions of the computer or the email system.
52. The alleged invention provides an email template which allows a user to add “blind forward” recipient names, create multiple copies of the email with potentially customised input from the sender for each recipient and to disable “Reply to All” function using the template. All these features are achieved using standard functions of a computer (or a computer system) and cannot be considered an improvement in the functioning of the computer. It will be well within the remit for a skilled person to use well-known software techniques to implement any number of templates and fields with functionality already standard to computers. I, therefore, do not find the additional templates with customisation options, creating a “Blind Fwd:” field and setting instructions to control the “Reply to All” functions an improvement in the functions of the computer irrespective of the data being processed, instead they could possibly be considered administrative variations to the email system.
Does the alleged invention merely require generic computer implementation?
53. Following the discussion above and in view of the specification, the alleged invention merely utilises several standard computers that may be connected to each other as per any other well-known email systems. The alleged invention does not demonstrate any ingenuity in the way in which the computer technology is utilised. The specification fails to provide information on how the computer technology functions in an improved (or, in fact, any different) manner.
54. As previously mentioned, the system comprises at least one transmission email server and other servers connected via the Internet, wherein the other servers may include receiving server and blind forward server, and an application that may run on a digital device (i.e., a standard computing device) to communicate with different servers as per the utilisation of the fields in an email template. I cannot see any improvement or variation in the routing of the email from one server to another, rather, the routing of the email appears to be conducted in a standard manner. The overall architecture is also considered standard, albeit the addition of the “blind forwarding email server”, which in essence is a functional label given to a standard email server. Any number of servers can be added to an email system to perform specific tasks in sending and receiving emails. However, for the current alleged invention, the “blind forwarding email server” is merely operating in standard manner to any other server insofar following the instructions to the server to perform functions that are not foreign to servers.
55. The applicant submits that “The claimed invention will not work merely by the programming of a single PC. Refer (sic) routers and similar components which are digital data processing components of sufficiently specific purpose that they (sic) are not termed a ‘computer’ as such. All are necessary working in interconnected concert to give effect to an email system”. At this juncture, I turn to RPL Central at [112] where the Court developed principles when approaching claims that are a combination of integers supposedly working together:
“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. Turning to the integers of the invention as set out at [36] and [38] and summarised at [37] and [39] above, it is apparent that, other than the integers providing that the computer processes the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer.”
56. Similarly, in Rokt and Encompass the alleged inventions were implemented in a networked computing environment and in each instance the Court found the alleged invention not to be directed to patentable subject matter.
57. It is apparent that presenting a “Blind Fwd:” field that allows for customised messaging, and the ability to disable the “Reply to All” function do not include any steps that are outside the “normal use” of computer technology. As per my discussion earlier on these features, I do not see any ingenuity in the connection of integers forming the email system. I have noted earlier the technology utilised and consider that the email network as described amounts to standard computing functions. The network architecture utilised is what a standard email system would, in a standard format, utilise. The functionality of the system is based on administrative rules, in particular, who should receive the email, who is allowed to see other recipient, who is allowed to reply to all recipients etc. Such improvements of the email system so that it could have a better administrative functionality is not technical in nature. The specification does not disclose any technical limitations that have been overcome in the computer implementation. I, therefore, do not find any ingenuity in the implementation of the (allegedly improved) email system.
58. I consider the substance of the alleged invention to not lie in any improvement or adaptation of a computer or a computer system. I also do not consider any improvement or adaptation of an email network. The alleged invention is simply instructions to apply an abstract administrative idea utilising what is characterised as standard computer technology.
Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea?
59. From the claims and the body of the specification, the purpose of the alleged invention is to not transmit or make available the email addresses of original target recipients to the blind forward addressed recipient. The feature in independent claim 1 states “…wherein the identity of the target addressed recipient is transmitted to the blind forward addressed recipient, but the e-mail address of the target addressed recipient is not transmitted to the blind forward addressed recipient” and independent claim 4 states “…said transmission e-mail server sending contents of the e-mail template as a blind forward e-mail transmission to a receiving e-mail server of the blind forward addressed recipient after first stripping the email address of the target addressed recipient from data comprising the blind forward e-mail transmission”.
60. The specification does not, in any level of technical detail, expand on how the address of the target addressed recipient is stripped or not transmitted to the blind forward recipient. I conclude that the computer technology used to prepare and send emails with the address of the target recipient being stripped or not transmitted further amounts to nothing more than applying administrative rules to well-known computer and email networking technology. The connected computers (including digital data processing components and servers) are employed as an intermediary to carry out the method steps for administrative purposes.
Is the contribution to the claimed invention technical in nature?
61. The applicant submits that the:
“…technical area of email transmission may be characterized as a form of routing. The routing is highly specific based on source and destination information and the end result is a system which permits messaging close to the speed of light from one virtual location on the planet to another.”
and that
“In the present application the TAR e-mail address non-transmission feature is in effect a
selective switching function[.]Put another way the substance of the invention is technical, relating as it does to the routing of emails and more particularly to selective non-transmission of portions of an email template by way of the TAR e-mail address non-transmission feature.”
62. The routing as described is performed using standard source and destination information and transmission steps that would normally occur in any emailing system. The specification does not go into any specific details of the routing that I could consider technical. The routing simply uses at least one transmitting server, at least one receiving server and a blind forward server (these servers operate within standard functions of a standard server as discussed earlier). An email directed to target addresses is transmitted by the transmitting server in a standard manner to the receiving server over the Internet for display on a digital device via an application. Simultaneously, the transmitting server transmits the email via the Internet to the blind forward server if the blind forward field in the email is populated. The blind forward server may then strip certain addresses or limit/disable the “Reply to All” functions for recipients.
63. Selecting portions of an email template as a non-transmission portion, for example de-identifying certain email addresses or stripping out email addresses from email templates, at this level of generality, are administrative functions of email systems. Selecting and implementing these functions (using standard computer technology for its well-known and understood functionality) depends on the administrative (i.e., communication management) needs of the email sender, and is unrelated to overcoming technical limitations in the actual underlying computer technology. All the components of the email system function in a standard manner and there is nothing about the routing of the emails that is improved or changed.
64. The specification also does not, in any detail, describe the messaging speed for emails from one location to another. The transmission speed appears consistent with transmission of email messages over the Internet. The specification fails to demonstrate any ingenuity in which computer technology is utilised to improve the transmission speed of emails from one location to another.
Dependent claims
65. I have considered each of the dependent claims and do not see any material within the claims that is directed to patentable subject matter. Dependent claim 2 is directed to presenting a customised forward message field template that may be populated prior to transmission and presented to the blind forward recipient with the contents of the email template, and dependent claim 3 is directed to not transmitting the identity of the target recipient to the blind forward addressed recipient. I cannot see anything foreign, or any adaptation or improvement, to the normal use of computer technology in the dependent claims. From a technical point of view, the presentation of an additional field/template that is like any other content field/template of an email, where a customised forward message can be included for a recipient prior to the transmission of the email, only requires standard implementation of computing functions. Furthermore, not transmitting or the removal of address(es) is commonly done and are available functions of email systems, for example, when using “blind copy” function. Adding another such field (“Blind Forward”) with similar restrictive functions (i.e. removing email addresses from a field of the email template or not transmitting email address(es) further) when forwarding emails is not considered technical.
The substance
66. I have considered the entire specification including the claims and agree with the examiner’s assessment of the alleged invention. The substance of the invention lies in a scheme of preparing emails for transmission that addresses purely administrative problems, and that is implemented using standard computer technology routinely employed in email systems.
Can an allowable amendment overcome the negative finding?
67. Having identified the substance of the alleged invention and having perused the specification, I cannot find any material that provides disclosure that could be characterised as technical. I cannot find any means in which the negative finding on patentable subject matter could be overcome.
Lack of unity and inventive step
68. Examination report 1 also contains objections that the claims as filed do not relate to one invention only, and that the claims do not involve an inventive step. The applicant provided submissions on these issues and proposed, under items 1 and 2, amendments to the description and claims respectively. It should be noted that the present hearing is with respect to the examiner’s objections, however the specification as proposed to be amended was never considered by an examiner. While, in this instance, this fact may not be of such an importance for the consideration of manner of manufacture, the same is not necessarily true with respect to the other objections raised by the examiner. In view of the proposed amendments, I do not consider it appropriate to decide on those other objections. In addition, given my finding on manner of manufacture, I do not find it necessary to make a formal determination on lack of unity and inventive step. Any consideration of lack of unity and inventive step would not materially affect the outcome of my decision.
Conclusion
69. I conclude that the claimed invention, as a matter of substance, is not for a manner of manufacture. I have found that none of claims, independent or dependent, define an invention that is for a manner of manufacture. I am also of the view that there is no material in the specification that could result in the applicant overcoming my finding and further examination will not serve any useful purpose. I therefore consider that it is appropriate to refuse the application.
Anish Singh
Delegate of the Commissioner of Patents
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