Mine RP Holdings (Pty) Limited
[2018] APO 41
•27 June 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mine RP Holdings (Pty) Limited [2018] APO 41
Patent Application: 2016200936
Title:A system and a method for depletable, natural asset management, accounting and analysis
Patent Applicant: Mine RP Holdings (Pty) Limited
Delegate: Greg Powell
Decision Date: 27 June 2018
Hearing Date: 21 March 2018, in Canberra
Catchwords: PATENTS – examiner’s objections – resource data management system – scheme – no technical effect in implementation of the scheme – application refused.
Representation: Patent attorney for the applicant: Carl Harrap, FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016200936
Title:A system and a method for depletable, natural asset management, accounting and analysis
Patent Applicant: Mine RP Holdings (Pty) Limited
Date of Decision: 27 June 2018
DECISION
The claimed invention, as proposed to be amended, is not for a manner of manufacture.
I refuse the application.
REASONS FOR DECISION
Background
Mine RP Holdings (Pty) Limited (the applicant) filed patent application 2016200936 (the present application) on 12 February 2016. The present application is a divisional application based on parent application PCT/ZA2014/000036 (the parent). While the parent did not enter the national phase, as it is a PCT application it is treated as an application for a standard patent (see subsection 29A(1) of the Patents Act 1990), and it follows that a divisional application may be filed from it under section 79B of the Patents Act 1990 prior to the parent lapsing.
The present application was subjected to three examination reports dated 31 January 2017, 5 May 2017 and 14 September 2017. All three reports contained a manner of manufacture objection. Following the third report, on 31 October 2017 the applicant requested to be heard. For the avoidance of doubt, this decision is based upon the claims as proposed to be amended in the applicant’s response of 4 August 2017.
In response to the request to be heard, the applicant was informed that it was believed that the matter could be heard by way of written submissions. The applicant was invited to provide written submissions by 19 January 2018. In response, the applicant requested that the matter proceed by way of oral hearing. While it was not clear to the Commissioner why an oral hearing was necessary, an oral hearing was set and the applicant provided submissions.
The examination of 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 present application was filed after 15 April 2013.
Specification
The specification states that the invention relates generally to a method of translating depletable natural resources and reserves, such as mineral deposits, into inventory and stock items. These items, once translated are then manageable within an inventory management system. While the specification defines natural resources fairly generally, its focus is on the mining industry.
The specification notes that proper management of non-renewable natural resources requires proper assessment of their state. The specification notes many natural resources and reserves are generally not easily be quantified and, thus, required estimates based on the evaluation of technical data which provided evidence of the amount of the natural resource present. This technical data was available within disparate technical disciplines, and could be reported in (i) technical parameters such as ore tonnages, slurry densities and mineral grades, (ii) operational based values such as power consumptions, (iii) geological based values such as interpretation of major geological faults and (iv) other values like commodity prices. The specification notes that, historically, mining technical data remained unamalgamated and untransformed into a globally standardized format and that amalgamation and transformation could provide enhanced decision making based on a better understanding of the financial consequences of a technical activity or changes in the state of a mineral deposit.
The specification notes that the modern mining industry has widely adopted enterprise resource planning (“ERP”) systems typically for integrating information from a range of internal and external systems, but these are primarily limited to financial and transactional management of the business and related resources. As such, this offers only a nominal benefit to the core business of the mining industry. In contrast, management of mineral assets using mining technical systems is observed to be performed within disparate, proprietary mining technical systems which each serve a discrete need. There is no integrating of the data from the separate systems which are related to the natural resource. Therefore, there is limited integration between mining technical systems and ERP systems, so that the relationships between activities from a technical perspective and a financial transaction are not clear. Consequently, decisions regarding the application of capital to the mineral assets are hampered by the lack of integration between the financial and mining technical domains.
To address this concern, the specification states that the invention is a resource management system which amalgamates and integrates data from disparate mining technical systems into a common, spatially-referenced database so that technical information effectively becomes inventory and/or stock records for use by at least one commercially available inventory management application, in order to provide integrated natural asset management in a natural resource inventory.
Claim 1, as proposed to be amended sets out, to my mind, the best example of what the applicant is seeking to achieve. Claim 1 states:
“1. A non-transitory computer readable storage medium storing computer executable instructions for implementing a natural resources and reserves management system, the computer-executable instructions configured to cause a data processing system to:
receive, amalgamate and integrate disparate technical dimension and fact data defining spatial, design, descriptive or quantification geometries and attributes of a geospatial element in a natural resource or reserve, wherein
the received technical data is disparate without a common spatial index for enabling integration of the geometries and attributes to reasonably describe the collective technical perspective of the resource or reserve in relation to a specific spatial location to allow at least semi-continual tracking over time of changes in the logical status or physical state of the resource or reserve at that location;
define a common spatial index with a specific level of granulation and geospatial orientation for the received, amalgamated and integrated data to enable such description of the resource or reserve and allow such tracking in relation to that location;
maintain the received, amalgamated and integrated data in an integrated database with reference to the common spatial index at least semi-continually to track the changes in the logical status or physical state of the resource or reserve over time at such granular, spatially indexed level;
translate the maintained data, based on predetermined criteria for the synthesis of the technical and financial controls and the regulatory codes and generally accepted best practices, to form data for an inventory related to the natural resource or reserve,
wherein
the translated data is compatible with a predetermined inventory management application and constitutes inventory and stock items and transactions manageable within the inventory management 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; and
the translated data retains the spatially indexed, technical geometries and attributes of the geospatial element.”
That is, data from disparate technical systems is received, a “common spatial index” is defined for the data (with the index allowing a description of a resource at a particular location), a spatial database is created, and the data in the spatial database is translated into “translated data” to form an inventory. This inventory is compatible with inventory management application(s).
Notwithstanding that claim 1 is directed to a “non-transitory computer readable storage medium”, the invention is to be properly understood to be directed to a method. I did not take the applicant to contend that the construction of claim 1 was anything other than standard, or that there were terms present that required detailed analysis. I would also observe that claim 7 is in terms of “A computer-implemented method” with the same steps. I do not take this, from a pragmatic point of view, to be anything different to what is in claim 1. In this regard, the language of the claims is quite clear – the method consists of a sequential process whereby data is taken from disparate systems and transformed into a form that can be used by inventory management application(s).
Figure 2 shows the overall process:
In the process, mining data 7 is amalgamated 9 on a spatial basis in which, although this was by no means clear from the specification, a “block” of the subsurface was divided into smaller chunks at a required level of granularity to create what was labelled as a “geo-x cube” 12. I take this geo-x cube to be at least part of the spatial database. The various cubes and their attributes are assigned to a bin location within the inventory system based on considerations of mineral content quality ranges and confidence levels of the information supplied. The cube can be interrogated to translate 16 the attributes of the cube into a transaction type 17. Analysis 21 of the transactions allows the inventory management system to report 22 on an asset’s status and to update 19 the status based on monitoring of the database. The report considers the resource as an attributed inventory and stock item such that the system 26 can illustrate the financial impact of the changed states of these resources (now recorded as assets) using standard analytical tools and techniques, resulting in better decisions 27 because the financial consequences of certain technical activities is better understood. Each step in the process uses various factors, definitions, function, etc (8, 10, 11, 13–15, 18–20, 23–25). The details of these are not important for this decision and I will not spend any further time on them.
The examiner’s objection
The examiner objected in the first, second and third examination reports that the present application was not for a manner of manufacture. The objection in the third report reads as follows:
“Objection 3 from the previous report is maintained. Claims 1–13 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990.
The applicant’s proposed amendments and comments have been carefully reviewed; however, they are not considered persuasive in overcoming the objection.
In considering manner of manufacture, the approach that has been taken is:
1.Construe the claim.
2.Identify the substance of the claim (what is the alleged or actual contribution?)
3.Ask whether the substance of the claim lies within established principles of what does not constitute a patentable invention (e.g. is it merely a scheme, plan, rules of gameplay, intellectual or genetic information?)
4.If not, consider whether the substance otherwise lies outside of existing concepts of manner of manufacture and is to be treated as a “new class” of subject matter.
Having construed the claims and from reading your application as a whole I maintain that the substance of the alleged invention is a scheme for amalgamating and integrating information from disparate expert technical sources and translating data into inventory and stock items within one common database for use by a commercially available inventory management system. The applicant's amnedments [sic] and comments have not changed this view. The scheme results in an improved way of organising and conducting a business. This, per se, is not patentable subject matter.
In the applicant's letter dated 4 August 2017, on page 2, para. 4, I do not agree that the claimed computer is integral to the invention. The perceived contribution is nothing more than generic and hence the computer is acting merely as a facilitating tool.
On page, 2, para. 5, the applicant argues that the invention involves the creation of a new database. However, the described 'newness' of the database is in terms of the nature of the data which is stored thereon. As per RPL Central at [099], the nature of the data being processed is an irrelevant consideration.
On page 2, last paragraph, the applicant points to some alleged features which are argued not to be generic in the art. In this regard, I note that all of these features were disclosed in D1, as discussed in objection 2 of the first examination report. Consequently, such known features cannot provide a contribution to the substance of the invention and are disregarded.
The highlighted features appear to be nothing more than common, generic computing features as at the time of the priority date. As a consequence, such features do not provide an actual contribution to the alleged invention over the common general knowledge or the prior art and, therefore, do not affect the consideration that the substance of the alleged invention is merely a scheme
Relevant to this, I refer to Aristocrat Technologies Australia Pty Limited [2017] APO 1 at [039]-[040]:
Notwithstanding the relevant Authorities, I must emphasise that the specification is to be read through to eyes of the skilled addressee which involves analysing the text in light of the knowledge of the art that the skilled addressee would have. To the extent that the Patentee might appear to suggest that the specification is to be read in complete isolation, I disagree.
A patent specification would seldom directly admit in a clear and unambiguous terms that the computer implementation relies solely on known uses of the computer. Hence in most cases, it is the knowledge that the skilled addressee would bring to the specification that will allow a determination to be made of whether the described computer utilisation is merely relying on known uses of the computer or not. Furthermore, I consider that the concept of “well-known and understood functions” of the computer (as per RPL Central as quoted by the Patentee) in itself implies a degree of knowledge and understanding extending beyond any disclosure in the specification when read in isolation. In other words, for the purpose of deciding the issue of manner of manufacture, the claimed invention is to be considered as a matter of substance as determined through the eyes of the skilled addressee. If the specification were to be read in complete isolation, the outcome becomes dependent on the form of the specification or the specific style of drafting, which may point towards a fictional “substance” with the true substance of the invention remaining concealed.
In the absence of evidence to the contrary, and on the balance of probabilities, I must consider the claimed computing features to be nothing more than well-known computing features at the time of the priority date which, due to their generic nature, do not provide an improvement in the computer or computing elements and therefore do not contribute to a patentable invention.
Given the present generic description of any form of computer implementation in your application, I do not consider that your application involves more than a generic utilisation of well-known functions of a computer, including the particular arrangement/combination of functions, and therefore does not involve any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Consequently, as per Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 the alleged invention is not a manner of manufacture.”
The law
With respect to manner of manufacture, subsection 18(1) of the Patents Act1990 states:
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;…
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”. 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 [2015] HCA 35, (“Myriad”)at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
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 [2015] FCAFC 177 (“RPL”), 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. … 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”.
The Full Court of the Federal Court in RPL detailed a number of considerations relevant to the determination and coming from earlier decisions of the Court. Summarising from [99] of RPL:
- It is necessary to ascertain whether the contribution to the claimed invention is technical in nature.
- One consideration is whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
- Does the claimed method merely require generic computer implementation?
- Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
In this regard I would also note the now oft-quoted paragraph [35] from Aristocrat Technologies Australia Pty Limited [2016] APO 49 in which, after reviewing the authorities, including RPL and Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”), the delegate stated:
“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.”
Discussion
Having already noted that the construction of the claims presents no matters of difficulty, it seems clear to me that it is the substance of the invention that must be considered when determining if an invention is directed to patentable subject matter. The approach set out in the four steps of the examiner’s report provide an appropriate process to follow in deciding whether a manner of manufacture was present in the claims. I note that the first three steps are what is set out verbatim in paragraph [58] of my decision of Sportsbet Pty Ltd v Diogenes Limited [2017] APO 60 (“Sportsbet”).
The applicant does not disagree with this. The applicant took issue with what it saw as the examiner’s reliance upon D1 (US 2003/0139983) to identify the substance of the invention. They noted that the examiner stated in his objection that:
“… the applicant points to some alleged features which are argued not to be generic in the art. In this regard, I note that all of these features were disclosed in D1, as discussed in objection 2 of the first examination report. Consequently, such known features cannot provide a contribution to the substance of the invention and are disregarded.”
In this regard they referred to Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 (“MLA”). They noted that at [449], Beach J stated:
“Further, MLA says that to the extent that the invention claimed in claim 1 is considered in substance to be a method, that method is not new and it has not been invented by the inventors named in the 253 Application. It says that the use of DNA markers, including SNPs, associated with traits to predict genetic potential has been well-known since before December 2002. I would note at this point that this high and wide submission travels well beyond the two types of objection, in the context of ‘manner of manufacture’, that I am considering, however much MLA would seek to finesse from its optimistic reading of the reasoning of Gageler and Nettle JJ on the question of ‘inventiveness’.”
The applicant noted that at [454] of MLA it was stated:
“…it is inappropriate to fasten upon individual elements of the claims, such as SNPs and their association with the trait. Of course these are naturally occurring phenomena. SNPs are naturally occurring. And the associations are objectively ascertained correlations between naturally occurring phenomena, that is, the genotype (used in the narrow sense) and the phenotype (used in the narrow sense). But the claims are not merely directed to the SNPs or their association with the trait per se. It is impermissible to disregard the wording of the claims and diminish their formal content under the guise of having regard to the ‘substance’ of what is claimed. There is no suggestion in Myriad that claims to methods involving the practical application of nucleic acids could be dismissed as being in substance just directed to genetic information.” (applicant’s bolding)
The applicant submitted that a claimed invention was only not patentable if it was solely, or nothing but, or merely excluded matter. As such, step 3 of the examiner’s report required the alleged contribution to lie solely within an excluded area before it could be concluded that what was defined was not patentable subject matter. The applicant also submitted:
“Applicant also respectfully refers to and adopts the reasoning in paragraph 82 of Sportsbet, that it is an incorrect approach to exclude from patentability an invention on the basis that it is a computer running an algorithm. Instead, something else is needed for a claim to a computer implemented method to be excluded.”
Substance of the invention
It seems clear to me that the substance of the invention lies in the creation of a spatial database amalgamating and integrating data from disparate systems so as to allow for the translation of the data into inventory and stock items within one common database, so that the data can be used by at least one commercially available inventory management system. The database is created using a common spatial index which associates data with subsurface locations.
The applicant did not disagree that a spatial database was created, but submitted that the claimed invention related to new apparatus that enabled previously independent pieces of apparatus to interoperate. They likened the invention to one of creating:
“a ‘bridge’ between computer processes, in particular a specific and concrete technology bridge between a plurality of disparate expert technical systems, databases and data, on the one side, and an inventory management system, on the other side.”
Be that as it may, the invention clearly lies in the creation of a specific database. During the hearing I noted that it was not at all clear to me what was happening in the creation of the index and the amalgamation and integration of the data into a spatial database. I noted that I visualised the creation of the database as something like defining a volume (e.g. a cube) of earth and then, for discrete “sub-cubes” (which I equated to a “geo-x cube”), taking the technical data from each separate technical system and determining which sub-cubes of the overall cube that data related to. Once that was done then, using the spatial index, I visualised the process as assigning what I would call a number (or series of numbers) that would allow the specific sub-cube to which the particular technical data relates, to be identified. The applicant responded after the hearing with a figure which follows that represented their understanding. The understandings match:
While it is certainly true that such a database would be extremely useful, to my mind its usefulness lies in business. The “bridge” of the applicant is a database.
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. That is, the idea of using a spatial index to create a spatial database whereby technical data could be used by an inventory management system is solving a business problem and the innovation is a business innovation.
The applicant submitted that the claimed invention was not merely a scheme. Rather they submitted that it was directed to a specific and concrete implementation and, by being directed to a specific manner of achieving an end result, the claim was clearly not an idea simpliciter, nor a mere scheme or plan or abstract idea. The applicant submitted, adopting the language of RPL at [96], the invention was clearly “more than that” and the bridge that was the subject of claim 1 was an artificial state of affairs where the computer is integral to the invention.
I disagree. I wish to be clear that I am not stating that the invention lacks an inventive step, or that it is not a good idea. But, at its heart, the substance of invention lies in the amalgamation of data which is then useful to an inventory management system so that better business decisions can be made.
The contention that the computer is integral to the invention can only be sustained if, prior to this invention, a computer was incapable of carrying it out and something more than merely defining that a computer carries out the scheme is needed.
There appears to have been no difficulties in having a computer system carry out the integration. An example of the type of language used in the specification to describe the operation of the scheme can be seen in paragraphs [65]–[69]:
“[0065] Inter-operability between disparate expert proprietary systems and applications and solutions reverses the deconstruction process by extracting and reconstituting both spatial and attribute data from the amalgamated databases into the file format and structure required by the specific expert proprietary software system or application or solution.
[0066] The system interrogates the composite geo-x cube 12 at the lowest level of applied granularity in terms of 29-33A, i.e. per geo-x block, within 55, 56 the bounds and definitions 13 of the relevant regulatory reporting code 56 and extended to include the company information requirements 58 required for further inventory and stock analysis 57, based on books of standards 53 & 54 mapped as the filters to the amalgamated attributes relevant to the mining technical disciplines, persisted 59 in the mining features database 52. The resultant attributes are persisted 59 as inventory or stock descriptive and quantification data. [0067] The system contains a spatial database 10 and mining feature attribute set, which implements a configuration capability as a mineral parameter meter that sets firm perspectives on variables which are acceptable between specific bounds 40, relative to an academic mean 41. This includes parameters such as density 42, interpretation 43 of major faults as geological loss factors, commodity price 44, mine call factor 45, pothole losses 46, mining overbreak 47, labor efficiency 48, etc. This relates to a configurable interpretation of mining factors that becomes a constant through which translation occurs. This allows it to be configurable per ore body, commodity or legal entity such as a company to align classification of inventory and stock in an inventory management application platform to the related resource and reserve reporting codes.
[0068] The system derives a classification of inventory or stock through analysis utilizing emergent 14 big data analytics technology at a geo-x block level, interrogating the current state and status of the block, represented by a permutated interpretation of the attributes in the amalgamated database, which describe the features of the geology as mapped to the spatial constant 8, creating a data set from which the detailed requirements for creating an inventory journal transaction can be constructed.
[0069] The system creates journal transactions for execution within an inventory management system to place a reference to the specific geo-x block, based on the classification of inventory or stock which is derived, in a storage bin location within the inventory system along with associated attributes defined in 54, 55, 56. This step relates to translating 15 a set of attributes and attribute information into a financial journal transaction 16, passed to the inventory management application for execution as the initial population of the inventory management application. Journal transactions 16 are processed in one of five transaction types 17, and are extensible to more if needed. This process, at take-on, is repeated for each relevant geo-x block within the database.”
To be sure this is a complex scheme, but the level of detail with respect to the computer implementation makes it clear that the computer is being used as a tool, or intermediary, for creating the database that is used in a business sense.
The applicant’s submission that [82] of Sportsbet requires something more than the mere fact that a computer is running an algorithm before a computer implemented method can be excluded from patentable subject matter does not, to my mind, quite capture what was said in that decision. Paragraph [82] of Sportsbet states:
“…I am not saying that the present invention is not a manner of manufacture because it is simply a computer running an algorithm. Rather I am saying that the algorithm that is being run embodies a business method, and the implementation of that business method does not involve operations that are foreign to the usual operation of the system components that have been employed to implement the business method. As such, the substance of the invention is a business method which, as the courts have said time and again, is not patentable.”
Clearly this is saying that a computer running an algorithm is not patentable if the algorithm embodies a business method, and the implementation of that algorithm does not involve operations that are foreign to the usual operation of the computer. To say that this paragraph requires “something more” to be done I think unnecessarily confuses the issue. Nothing more needs to be done.
The converse to [82] of Sportsbet is that a computer running an algorithm is patentable if the algorithm improves the operation of the computer, involves operations that are foreign to the normal use of a computer, or solves a technical problem. However, the scheme in the present application, while it involves operations that are different to the operations carried out by a computer running a different scheme, does not appear to use operations that are foreign to a computer, Rather, the scheme uses the normal capabilities of a computer.
If it was the case that this algorithm did in fact involve operations that were foreign to the usual operation of the computer, then I would have expected the specification to have included information that would allow the person skilled in the art to implement the invention on a computer that did not have the capability to, in its normal operation, run the algorithm. Such information is not present.
Creation of a spatial database is explained in the specification in the most general of terms. An example of what the common spatial index might look like is not provided. The steps of integrating data and transforming data into database entries uses terms like “translate”, “transform”, “criteria” and the like. There is no structure. While the applicant submitted that a general lack of detail does not indicate a lack on manner of manufacture, it certainly does not help in a circumstance where the implementation of a scheme is said to be, as was submitted by the applicant, “a specific and concrete implementation” ([33] of the applicant’s summary of submissions).
The applicant submitted at [37] to [39] of their summary:
“37Research Affiliates related to a process for calculating an index, with the invention being the index itself with an associated method in which merely ‘happens to use a computer to effect that implementation’ (see e.g. paragraph 114 in Research Affiliates). For the present application, the invention inextricably and integrally involves a device, as it operates as a technology bridge. This alone is sufficient to demonstrate the invention is patent eligible, as acknowledged in Research Affiliates at paragraph 104.
38RPL Central related to a computer ‘operating as an intermediary in the user’s quest for an evaluation of his or her competency for a particular course and entitlement to obtain a qualification without participating in that course’ (see paragraph 109 of RPL Central). It confirmed that where there is 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, then there is patentable subject matter (see e.g. paragraph 96 in RPL Central). Again, the computer in the invention of RPL Central is not the subject of the invention, but merely a means of carrying out the scheme. This is in contrast to the present invention where there is a technology bridge.
39With respect, Examiner appears to have lost sight of the distinction between claims that result in a new and useful device and claims that merely use a device for a scheme with a result unconnected to the device (e.g. an index, or identification of prior learning information). A result of the present claims is a technology bridge and the claims relate to a specific mode or manner of achieving that result.”
With respect, the applicant appears to have taken the view that a computer programmed with a useful scheme is automatically patentable. This is not an approach supported by the case law. To paraphrase Research Affiliates at [118], if what is defined is a scheme merely implemented in a standard computer, that is not a patentable invention. As I have already said, the language of the specification does not indicate the presence of any implementation issues to the extent that implementation of this scheme was anything other than “mere implementation”. To the extent that the applicant may have relied upon features not currently present in the specification to support their contention that implementation was such that the computer was integral to the invention, I cannot see how I can rely on such features. The specification, while certainly required to be read by a person skilled in the art in possession of the common general knowledge, is to be treated as a complete whole. If a computer-implemented invention exists that does improve the operation of a computer, but the application which describes that invention is missing the information necessary to provide the computer implementation (and, thus, improve the operation of the computer), I do not think it could be said that the application describes a manner of manufacture because the missing information clearly establishes that the invention is a manner of manufacture. What is more, it could also be said that the application does not comply with section 40(2)(a) and/or (aa).
To the extent that applicant may have relied upon features in the claim that they maintained had not been shown to be generic in the art, and disputed that they were present in D1, they appear to have done what they said was not permissible – fastened upon individual elements of the claims. The features noted by the applicant, which they maintained would not be capable of being within the known functions of a computer and databases in general were to:
·receive, amalgamate, integrate and maintain the disparate technical data from the public domain in a database with reference to the common spatial index at least semi-continually to track the changes in the logical status or physical state of the resource or reserve over time at such granular, spatially indexed level; or
·translate such data, based on predetermined criteria to form data for an inventory related to the natural resource or reserve that:
ois compatible with a predetermined inventory management application;
oconstitutes inventory and stock items and transactions manageable within the inventory management 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; and
oretains the spatially indexed, technical geometries and attributes of the geospatial element
However, these are features of the scheme. It is to be expected that computers which have not been programmed to run the scheme will not be capable of carrying out the scheme. Not being able to carry out the scheme because the computer has not been programmed to do it is not the test. The question to be asked is whether, in running the scheme, the computer is carrying out anything other than the usual functions of a computer? In this case, there is nothing in the specification that indicates that this is so. Furthermore, I would note again, if it were truly the case that something more is required I would have expected the specification to have some indication of this.
Conclusion
In my opinion, the creation of a spatial database using a common spatial index to amalgamate and integrate data from disparate technical sources and the use of that database with an inventory management system is a mere scheme which does not provide a technical contribution to the art. It is solving a business problem and the innovation is a business innovation. Moreover, there is no evidence of any technical effect in the implementation of the scheme in the sense of the computer implementing the scheme of operating in an improved manner so as to indicate that the computer is integral to the invention. An invention that is mere implementation of a mere scheme cannot be an invention that is a manner of manufacture under s 18(1)(a).
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.
I note that the applicant filed a divisional application (2018200990) on 9 February 2018 having an identical description to the present application and, furthermore, requested examination on 23 April 2018. Clearly the applicant was seeking to continue prosecution of the present application regardless of my decision. In these circumstances, it seems appropriate to me to refuse the present application in the public interest to avoid any uncertainty and I do so.
Greg Powell
Delegate of the Commissioner of Patents
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