Mine RP Holdings (Pty) Limited - [2020] APO 17

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mine RP Holdings (Pty) Limited [2020] APO 17

Patent Application: 2018200990

Title:A System and a Method for Depletable, Natural Asset Management, Accounting and Analysis

Patent Applicant:                   Mine RP Holdings (Pty) Limited
Delegate:  M. G. Kraefft
Decision Date:  8 April 2020
Hearing Date:  Written submissions filed on 13 December 2019

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – translating data across different file formats – data integration from multiple disparate sources – spatial data structure – no manner of manufacture apparent on the face of specification – it is possible there may be patentable subject matter – applicant allowed three months under sub-regulation 13.4(1)(g) to obtain acceptance of application.

Representation: Patent attorney for the applicant: FPA Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018200990

Title:A System and a Method for Depletable, Natural Asset Management, Accounting and Analysis

Patent Applicant: Mine RP Holdings (Pty) Limited
Date of Decision: 8 April 2020
DECISION
On the face of it, the claims of the present application, as proposed to be amended, do not define a manner of manufacture.
Moreover, on the face of it, I am unable to identify anything of substance in the body of the specification to overcome this finding.
On the other hand, I am not entirely certain that there is a lack of patentable subject matter in respect to claims 1-10. The applicant will be allowed a further opportunity to amend the specification and/or file further submissions.
The final date for acceptance of the application at present is 9 May 2020. However, under sub-regulation 13.4(1)(g), the applicant has three (3) months from the date of this decision to obtain acceptance of the application.
REASONS FOR DECISION
BACKGROUND

Mine RP Holdings (Pty) Limited (“the applicant”) filed patent application 2018200990 on 9 February 2018. The application is a divisional application based on application 2016200936 (“the parent application”). The parent application is itself a divisional application based on an international Patent Cooperation Treaty (“PCT”) application, PCT/ZA2014/000036 (“the PCT application”). The PCT application is based on a South African application filed on 22 July 2013 (“the priority date”).
While the PCT application did not enter the national phase, as a PCT application, it is treated as an application for a standard patent through subsection 29A(1) of the Patents Act 1990. It follows that a divisional application may be filed from the PCT application (section 79B of the Patents Act).
In a decision dated 27 June 2018, Mine RP Holdings (Pty) Limited, [2018] APO 41 (“the previous decision”), a delegate of the Commissioner of Patents refused the parent application on the ground that the claimed invention, as proposed to be amended, was not for a manner of manufacture. Moreover, at [44] of the decision, the delegate indicated that this situation could not be overcome by suitable, allowable amendment.
The present application has been subjected to two examination reports. In both reports, the examiner has maintained an objection that the application is not for a manner of manufacture for similar reasons as set out in the previous decision. While acknowledging that the claims were not exactly the same as for the previous decision, including claims as proposed to be amended, the examiner stated that they pertained to similar subject matter and were of broader scope. The examiner further indicated that the matter would be referred to a hearing officer with a view to refusing the application.
The applicant subsequently requested to be heard. Together with its written submissions for the hearing, the applicant filed a further statement of proposed amendments to the description and claims of the specification.
SPECIFICATION
From paragraph [0002] of the specification as filed, the alleged invention relates to translating depletable natural resources and reserves, such as mineral deposits, into inventory and stock items. These items in turn are then stated to be manageable within an inventory management system. That paragraph, as presently proposed to be amended, has altered the nature of the alleged invention to introduce a focus on alleged technical aspects in relation to resources at a mine site. Specifically, the alleged invention is presently stated to relate to processing technical data relating to the amount, volume or concentration of a natural resource at a mine site.
Nonetheless, from the subsequent description of the background to the alleged invention, the broad nature of the alleged invention appears to seek an integrated solution to the disparate nature of technical data, of mineral assets, acquired and managed across multiple technical disciplines of mining operations. From [0005] of the specification, these disciplines are typically classified as geosciences, survey, planning, rock engineering, mine environmental, mine design and schedule, amongst others. At [0008], the specification indicates that systems-based management of mineral assets is typically performed within disparate, expert and usually proprietary mining technical systems, applications and software, specifically designed to service the discrete needs of specific mining technical disciplines within mining operations. These systems and software typically provide a single expert discipline perspective of a mineral asset, without integration to and amalgamation of data from other separate mining technical disciplines related to the mineral asset.
The specification, as presently proposed to be amended, ends with 24 claims. Claims 1, 7, 11 and 18 are independent claims. Claim 7 and 11 appear to be representative of the set of claims, as a whole. These claims read as follows:-
7. A natural resource or reserve monitoring system for maintaining a model of a site, the monitoring system comprising:
a first geophysical information toolset configured to generate a first set of technical data of observations of the site relating to a physical state of a natural resource or reserve at the site, wherein the physical state includes an amount, volume or concentration of the natural resource or reserve;
a second geophysical information toolset configured to generate a second set of technical data of observations of the site relating to the physical state of the natural resource or reserve at the mine site, wherein the physical state includes an amount, volume or concentration of the natural resource or reserve, wherein the second set of data is in a different file format to the first set of data;
a computational interface in communication with the first and second geophysical information toolsets, including:
computer data storage including a three-dimensional spatial data structure corresponding to the site, the three-dimensional spatial data structure comprising geophysical information relating to the physical state of the natural resource or reserve at the site, the geophysical information derived by the computational interface from the first and second sets of technical data, wherein the geophysical information is stored in the three-dimensional spatial data structure such that location of the geophysical information in the three-dimensional spatial data structure corresponds to the physical location of the natural resource or reserve within the site to which the geophysical information relates;
computational means for extracting and translating the three-dimensional spatial data structure and associated geophysical information based on the first set of technical data into the file format of the second set of data and providing the resulting extracted and translated data to the second geophysical information toolset;
computational means for extracting and translating the three-dimensional spatial data structure and associated geophysical information based on the second set of technical data into the file format of the first set of data and providing the resulting extracted and translated data to the first geophysical information toolset;
computational means for receiving, from the first geophysical information toolset an update of the first set of technical data (updated technical data), representing a change in an observation of the physical state of the natural resource or reserve at the site, identifying, within the three-dimensional spatial data structure the geophysical information associated with the updated technical data and modifying the associated geophysical information, without performing a complete re-population of the computer data storage; and
computational means for extracting and translating the three-dimensional spatial data structure and associated geophysical information based on the updated technical data into the file format of the second set of data and providing the resulting extracted and translated data to the second geophysical information toolset.
11.A computer-implemented natural resource and reserve management system suitable for use with disparate expert technical systems and applications that are unable to integrate the geometries and attributes at any specific spatial location in such natural resource or reserve, to reasonably describe a collective, multi-disciplinary technical perspective of the resource or reserve in relation to a specific spatial location or to allow tracking over time of changes in the logical status or physical state of the resource or reserve at that location, the management system comprising:
a non-transitory computer readable storage medium storing computer-executable instructions;
at least one common, integrated, spatially-referenced database configured to retain spatially indexed, technical geometries and attributes of a specific spatial locations (sic) therein;
a non-transitory computer accessible extractor, configured to extract disparate, technical data, defining technical discipline spatial geometries and attributes of a specific spatial location in a natural resource or reserve, from disparate expert technical databases of such technical systems and applications without a common, spatial reference;
a common spatial index, with a specific level of granulation and spatial location, configured to enable integration of the geometries and attributes of the resource or reserve in relation to a specific spatial location, and reasonable description of the collective technical perspective of the resource or reserve in relation to that location;
a non-transitory computer accessible amalgamator, configured to amalgamate and integrate the technical data, including computer developed or generated data, into the spatially-referenced database to track changes in the logical status or physical state of the resource or reserve over time at such granular, spatially indexed level in relation to that location; and
a non-transitory computer accessible translator, configured to translate the amalgamated, integrated and spatially-referenced, technical data, synthesizing technical and financial controls, regulatory codes and generally accepted best practices by means of a set of business rules to ensure optimal exploitation of an asset, into attributes of inventory or stock within a resource inventory,
wherein:
the spatially-referenced database is usable by a commercially available inventory management system or application and the translated technical data constitutes inventory and stock items and transactions manageable within the inventory management systems or application that track over time the change in the logical status or physical state of the resource or reserve at such granular, spatially indexed level in relation to that location, and
the spatially-referenced database and the translated technical data retain the spatially indexed, technical geometries and attributes at such spatial location enabling:
the integration and amalgamation of such data into a single spatially-indexed data structure encapsulating the spatial, design, descriptive and quantification attributes related to the source data, providing a multi-collective, multi-disciplinary technical perspective of a given spatial location in the resource or reserve, and
interoperability between the technical systems and applications, by allowing extraction and reconstitution of such integrated and amalgamated spatial and attribute data from the spatially-referenced database into the file format and structure required by the technical systems and applications and the inventory management system.
Claim 18 is principally a method version of claim 11.
Claim 1 is directed to the computational interface itself, for operating between a plurality of disparate geophysical information toolsets. The interface includes the storage and computational means to receive updated technical data, modify the associated geophysical information within a spatial data structure without performing a complete re-population of computer storage, and extract and translate the spatial data structure into a number of different file formats. This may be contrasted with claim 7 which is directed to a natural resource or reserve monitoring system for maintaining a model of a site. The monitoring system comprises first and second geophysical information toolsets configured to generate technical data of the site in different file formats, and the computational interface that includes the storage and computational means to extract and translate the geophysical information between the different file formats, and receive updated technical data to modify the associated geophysical information within a spatial data structure without performing a complete re-population of computer storage.
Claims 1 and 7 thus, more specifically, relate to the receiving of data from multiple disparate geophysical information toolsets, extracting and translating the data across different file formats, and identifying updated data to modify associated geophysical information in the spatial data structure without completely re-populating the computer storage. Claims 11 and 18 relate to a broad focus of integration of data, related to a natural resource or reserve, from a multiple of disciplines into a common, spatially-referenced database for use by an inventory management system.
In the present case, it would be fair to say that the outcome for claim 7 would similarly apply to claims 1-6 and 8-10, and that the outcome for claim 11 would similarly apply to claims 12-24.
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
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? …”
SUBMISSIONS
In respect to the specification, the applicant initially noted that the specification describes several innovations. For the purposes of at least claims 1-10, the applicant stated the relevant disclosure of the specification was that surrounding the interoperability of disparate mining technical systems. By example, the applicant mentioned that one such system may operate to collect topographical information by a survey and another system may operate to collect geotechnical information around the distribution of ore below ground.
For convenience, the applicant referred to claim 7. The applicant stated that this claim provided additional context for the technical use of the computational interface of claim 1. The applicant described claim 7 as relating to two geophysical toolsets configured to generate respective sets of technical data. This data is characterised as relating to physical characteristics of the mine site, including amount, volume or concentration of the natural resource or reserve. The applicant also indicated that the claim further defines the two geophysical toolsets as producing technical data in different file formats.

The applicant stated that a relevant technical problem that the invention addresses is data integration from multiple heterogeneous databases to form an accurate picture of the nature and extent of the natural resource or reserve. The applicant provided and referred to several research papers and articles in the field of data integration. The applicant stated that the papers and articles highlighted the technical nature of the difficulties in integrating such data into a unified view. Accordingly, the applicant submitted that it was apparent that the claimed invention is directed to a technical field, and particularly to an improved computational interface and monitoring system for integrating disparate data from multiple toolsets into a unified view.
The claimed solution involves transforming different formats of technical data received from the different toolsets into a specific integrated data structure. That data structure is a spatial (for example, three-dimensional) data structure corresponding to the mine site.
The applicant stated that the claimed system, having the specific spatial data structure, further allowed the system to update without performing a complete re-population of computer data storage, which overcomes the further problem of a complete re-population of vast data sets, for a mine site, for each update which can be prohibitively computationally expensive.
In respect to claims 11-24, the applicant noted that these claims corresponded to claims allowed in relation to a corresponding US patent application. Furthermore, the applicant referred to the prosecution before the US Patent Office to state that the matters arising therein aligned with the relevant considerations under Australian law.
DISCUSSION
Background Context
The set of claims, as presently proposed to be amended, are significantly different from those most recently before the examiner. Claims 7 - 24 are new. Claim 1 has a few minor textual changes.
The claims, as presently proposed to be amended, are also somewhat different from those considered in the previous decision. At [9] of the previous decision, the claim recited there relates to the amalgamation and integration of disparate technical data to form data compatible with a predetermined inventory management application. That claim has a number of features consistent with those of claims 11 and 18, as proposed to be amended, of the present application, although there are significant differences as well. Thus, a comparison of the claims, as presently proposed to be amended, against the claims before the previous delegate would appear to be of little assistance in the present case.
On the other hand, the body of the specification and the drawings of the parent application are substantially the same as the present specification and drawings as filed. Consequently, the statement at [44] of the previous decision appears to be rather telling for the present case. Quoting from [44]:-
“It follows that the invention, both as defined in the claims and as described in the specification, is not a manner of manufacture. At present I cannot see how this state of affairs could be avoided by a suitable, allowable amendment.”
Substance of Claimed Invention
The previous decision outlined the substance of the invention as follows. Quoting from [29] of that decision:-
“In my opinion, the substance of the invention is a scheme implementing the idea to amalgamate and integrate information from disparate expert technical sources and translate data into inventory and stock items within one common spatial database for use by a commercially available inventory management system.”
The claimed invention in the present case is more elaborate in the detail.
As mentioned earlier, claims 1 and 7, more specifically, relate to the receiving of data, related to a natural resource or reserve, from multiple disparate geophysical information toolsets, extracting and translating the data across different file formats, and identifying updated data to modify associated geophysical information in the spatial data structure without completely re-populating the computer storage.
Claims 11 and 18 relate to the integration of data, related to a natural resource or reserve, from a multiple of disciplines into a common, spatially-referenced database for use by an inventory management system. The database is configured to retain spatially indexed, technical geometries and attributes of a specific spatial location. The spatial index is with a specific level of granulation and spatial location, and is configured to enable integration of the geometries and attributes of the resource or reserve in relation to a specific spatial location. The amalgamated, integrated and spatially referenced data is translated into attributes of inventory or stock within a resource inventory.
Claims 11 and 18 define further features of the spatially-referenced database and the translated technical data. These features appear to be characterising features of the claims and, in some respects, are different from the claim considered by the previous delegate at [9] of the previous decision. Firstly, the spatially-referenced database is usable by a commercially available inventory management system or application. Secondly, the spatially-referenced database and the translated technical data retain the spatially indexed, technical geometries and attributes of a spatial location to enable the integration and amalgamation of data into a single, spatially-indexed data structure, and the interoperability between the stated technical systems and applications. The latter is claimed to be achieved by allowing extraction and reconstitution of such integrated and amalgamated spatial and attribute data from the spatially-referenced database into the file format and structure required by the technical systems and applications and the inventory management system.
The claims clearly include significant computer system features. The computer interface, the information toolsets, the data storage including a spatial data structure or spatially-referenced database, the computational means for extraction, amalgamation, integration or translation of data, and the interactions therebetween, clearly cannot be discounted. On the other hand, the claims do not appear to suggest or define any aspects of those features as being anything beyond standard at the relevant time.
Taking all of the above together, I would find the substance of claim 7 is about the general nature of the data, its storage in a three-dimensional spatial data structure, the extraction and translation of that data in the data structure across different file formats commensurate with first and second geophysical information toolsets, and the management of updates of that data to modify the associated geophysical information in the data structure without performing a complete re-population of computer storage. In respect to claim 11, I would find the substance of that claim relates to the extraction of disparate data from disparate technical sources, the amalgamation and integration of that data into a spatially-referenced database, the translation of the amalgamated, integrated and spatially-referenced data into attributes of inventory or stock for use by an inventory management system, and the enabling of interoperability across the relevant systems and applications with appropriate file formatting and structuring.
Consideration
There would appear to be little doubt of the complexity of implementing such arrangements at the relevant time, particularly in the context of assets of a mine site or of mineral deposits in general. The delegate at [34] of the previous decision similarly accepted as much. On the other hand, with reference to [0065] – [0069] of the specification in that case, the delegate also stated that the level of detail with respect to the computer implementation made it clear that the computer was being used as a tool, or intermediary, for creating the database. The same content may be found at [0065] – [0069] of the present specification.
At a broader level, the present specification also contains a number of passages relating the applicant’s characterisation of the invention, including where the substance of the invention would appear to lie. Examples of relevant passages include [0013], [0053], [0065], [0079], [0082], [0090] and [0092] – [0095]. There is nothing of substance in these passages beyond the above descriptions of the substance of claims 7 and 11.
Claim 7 is principally about storing data derived from two information toolsets in a three-dimensional spatial data structure, the subsequent extraction of data from the data structure and its translation across the two different file formats of the toolsets such that each toolset then receives the data from the other toolset in its own format. On the face of it and at that level of generality, that is an abstract idea. One may even question how the overall data integration objectives are satisfactorily achieved since the translation result seemingly maintains the position that each toolset retains the totality of both toolset datasets in its own file format. The abstractness of the claim is not helped by the additional feature of managing file formatting of updated data in the same way. The claim does not define any specific computational features of formatting that may elevate the claim beyond defining a mere scheme.
Moreover, the discussion in the specification in this context is also largely in the abstract. Paragraph [0065] states that inter-operability between disparate expert proprietary systems, etc., reverses the de-construction process by extracting and reconstituting data from amalgamated databases into the file format and structure required by the specific expert proprietary software system. There appears to be little that follows in the specification in the formatting or structured processing that “offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art” (NRDC at page 275). At page 277, NRDC also discusses the provision of a remarkable advantage. Similarly, 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, the specification appears to claim and describe standard file formatting in the most general terms across toolsets without there being any arising material effect. There seems to be nothing particular about the file formatting processes. Moreover, as mentioned above, the result may simply be each toolset retaining the totality of both toolset datasets in its own format. In this context, the following passage at [108] of Research Affiliates is also pertinent:-
“The computer that may be utilised is described in general terms, without an indication that any unusual technical effect is utilised.” (my emphasis).
Claim 11 would appear to have similar difficulty. That is, while the specification may claim and describe features of extracting, amalgamating, integrating and translating data across disparate systems, the specification appears to be devoid of any specifics in this respect that could indicate that the invention involves an improvement in the functioning of the computer apparatus itself, or that the invention may be technical in nature in this respect. While the applicant’s submissions portrayed the alleged invention as providing technical solutions for solving technical problems, such is not evident in the specification. In the main, it is principally the data that may be considered technical.
For example, the applicant made much of data integration being a major part of data science and that the field highlighted the technical nature of the difficulties in integrating data into a unified view. Undoubtedly the problems of integrating data, from inconsistent data sources or formats, or where the data differs semantically or is unstructured or semi-structured, may be real and challenging, and may require complex solutions to solve them. The articles provided by the applicant discuss some of these issues in some detail. The field is replete with complex data integration software and algorithms that deal with these types of issues, and that for example may convert data silos into database structures that are highly structured and consistent. The question may still remain as to whether such solutions amount to a technical contribution and that may depend on individual circumstances.
In any case, the present specification is devoid of any solutions of such nature. As far as it goes effectively, the specification describes a common spatial index defined with a specific level of granulation and spatial location. By example, the specific level of granulation may be that required to encapsulate the necessary reporting detail for a specific volume or spatial location [0056]. The common spatial index is then configured to enable data integration at such granular, spatially indexed level in relation to a specific spatial location. The thrust of the specification effectively is that the initial data sets are simply disparate and that integration is consequently required and performed.
The applicant also described the claimed solution in the present case as involving the creation and use of a specific, integrated, spatial data structure with transformed data from different formats from different sources. The applicant stated that specific data structure was a spatial, three-dimensional data structure corresponding to the three-dimensional dimensions of the exploration, for example, the mine site. The applicant further stated that this spatial data structure therefore provided a common reference for the different sets of technical data and that, by using this common reference, data from one toolset can be used to supplement data of another toolset, and vice versa.
It may be said that the contents and the representations of the data structure may be complex. Paragraph [28] of the previous decision is instructive in this respect. On the other hand, and as also noted at [38] of the previous decision, the specification describes the spatial database in the most general of terms. At [0053] for example, data is amalgamated and integrated into a single, spatially-indexed data structure encapsulating all spatial, design, descriptive and quantification attributes related to the source data.
In the present case overall, though the implementation aspects may be complex in respect to the management of the disparate data sets from multiple different disciplines, there appears to be nothing claimed or described in the specification that was outside the normal operational capabilities of computer systems at the relevant time.
A technical contribution to the art is not apparent in the present case.
The Corresponding US Application
In respect to the corresponding US patent application, 15/004743, claims 1-4, 12, 37 and 39, as allowed in the notice of allowance in that case, are substantially the same as claims 11-17 of the present specification, as proposed to be amended. The US application has become US patent 10,521,763 and the allowed claims have been re-numbered as claims 1-7, although the order of some of the dependent claims has been altered.
In the final rejection in the US case, dated 30 October 2018, the claims at that time were rejected on subject matter eligibility grounds on the basis that the claims did not amount to significantly more than the abstract idea itself, citing Alice Corporation Pty Ltd v CLS Bank International (“Alice Corp.”), 134 S Ct 2347 (2014). The similarity of this approach with Australian law would be evident from the above-mentioned extract from RPL. Again, at [96] of RPL:-
“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.”
In the US case, the examiner reasoned that any additional elements recited were generic computer components performing functions similar to the computer functions described in Alice Corp. as being well-understood, routine and conventional. The notice of allowance, dated 9 August 2019, would indicate that some of those claims were subsequently allowed. It may be noted though that the reasons for allowance were that the limitation in respect to the characterising features of the equivalent current claim 11, as proposed to be amended, was not found in the prior art of record. That is, a concluded view on subject matter eligibility is not available in the notice of allowance. In any case, decisions of other patent offices are persuasive, but not binding.
Whether Suitable Amendment is Possible
Whilst I have formed the view that, on the face of it, there is no patentable subject matter claimed or described in the specification, I am not entirely certain that there is a lack of patentable subject matter. As mentioned earlier, claim 11 is broadly focused on integrating data in a common, spatially-referenced database for use by an inventory management system, while claim 7 more specifically relates to translating data across different file formats. In respect to claim 7, and similarly for claims 1-6 and 8-10, it may be said that file formatting or re-formatting generally involves a file or data transformation that may provide a requisite technical effect. As also indicated earlier though, the level of generality in the specification in this respect is of concern. On the other hand, it may be that there is something in the specification that, to a person skilled in the art at the relevant time, would have been regarded as more than mere generic computer implementation, or provided a requisite technical effect. If that is so, then an explanation and/or evidence as to what the person skilled in the art would have understood the technical problem to have been from the specification, and where and what in the specification discloses the unusual or previously unrecognised technical effect, would appear to be of assistance in the present case.
In this light, and whilst being mindful of the possible challenges of compliance with section 40 and/or section 102, it may be possible to draft a valid amendment to the claims and/or descriptive part of the specification.
I consider it appropriate to allow the applicant a further opportunity to amend the specification and/or file further submissions.
CONCLUSION
I conclude that, on the face of it, the claims of the present application, as proposed to be amended, do not define a manner of manufacture.
Moreover, on the face of it, I am unable to find anything of substance in the body of the specification to overcome this finding.
On the other hand, I am not entirely certain that there is a lack of patentable subject matter, in particular in respect to claims 1-10. Hence, I will allow the applicant an opportunity to amend the specification and/or file further submissions in response to my findings in this decision. In the event that such amendment and/or submissions are filed, they will be dealt with in the normal manner by an examiner.
The final date for acceptance of the application at present is 9 May 2020. However, under sub-regulation 13.4(1)(g), the applicant has three (3) months from the date of this decision to obtain acceptance of the application.
M. G. Kraefft
Delegate of the Commissioner of Patents