MineRP IP Inc.
[2022] APO 48
•7 July 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
MineRP IP Inc. [2022] APO 48
Patent Application: 2015376865
Title:A system and a method for life of mine planning and cost control
Patent Applicant: MineRP IP Inc.
Delegate:Clinton McCarthur
Decision Date: 7 July 2022
Hearing Date: Written submissions filed on 1 November 2021
Catchwords: PATENTS – section 45 – examiner’s objection – manner of manufacture – controlling costs in a mining operation – claims directed as a matter of substance to a mere scheme – application refused
Representation: Patent attorney for the applicant: FPA Patent Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015376865
Title:A system and a method for life of mine planning and cost control
Patent Applicant: MineRP IP Inc.
Date of Decision: 7 July 2022
DECISION
The claims of the application, as proposed to be amended, do not define a manner of manufacture. I do not see any subject matter of substance in the body of the specification from which valid claims could be drafted to overcome this finding.
I refuse the application.
REASONS FOR DECISION
BACKGROUND
MineRP IP Inc. (“the applicant”) filed patent application 2015376865 (“the application”) on 10 April 2017. The application is a national phase entry of an international Patent Cooperation Treaty (“PCT”) application, PCT/ZA2015/000058 (“the PCT application”). The PCT application is based on a South African national application, ZA201406820 filed on 10 September 2014 (“the priority date”).
The applicant was directed to request examination by IP Australia on 12 June 2019 and subsequently filed a request for standard examination on 9 August 2019.
IP Australia issued a first examination report on 19 June 2020. The examination report raised the following objections:
(i) Claims 1 – 41 (all claims) did not comply with Section 18 (1)(a) because they are not a manner of manufacture.
(ii) Claims 1 – 41 (all claims) did not comply with Section 40 (4) because they did not relate to one invention only.The examination report reserved opinion on the grounds of novelty and inventive step because, in the examiner’s opinion, there was no patentable subject matter in the claims or specification although the examiner did direct the applicant towards the citations raised in the International Search Report.
The applicant filed a first response to the first report on 26 May 2021. The response included a request to amend the specification asking that all claims on file be deleted and replaced with a single new claim 1, although I note that two (2) claims were filed and both were considered by the examiner. The response provided reasons as to why, in the applicant’s opinion, claim 1 as proposed to be amended was a manner of manufacture.
IP Australia issued a second examination report on 15 June 2021. The examination report objected that both of claims 1 and 2 as proposed to be amended were not a manner of manufacture. The examination report maintained the reservation of opinion on the grounds of novelty and inventive step, again opining there was no patentable subject matter in the claims or specification.
The applicant filed a request to be heard on 18 June 2021. IP Australia advised the applicant that hearings relating to examiner’s objections are normally heard by way of written submissions and invited the applicant to provide submissions by 1 November 2021.
The applicant filed written submissions on 1 November 2021 which included a request that the specification be amended. The amendments introduced additional features to claim 1 and new claims 3 to 5 which were not considered by the examiner during examination. The applicant’s submissions in part relied on Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (“Aristocrat ‘20”) which found that an Electronic Gaming Machine (EGM) as defined by claim 1 of that application was a manner of manufacture. Since the submissions were provided, the Commissioner’s appeal of Aristocrat ‘20 was successful. The Full Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd[2021] FCAFC 202 (“Aristocrat ‘21”) overturned the earlier decision, finding that claim 1 was not a manner of manufacture. On 3 December 2021, IP Australia subsequently invited the applicant to provide further submissions by 28 January 2022.
The applicant filed subsequent amendments and submissions on 28 January 2022. I consider the amendments to be allowable and they will be the basis upon which this decision is made.
CURRENT APPLICATION
The field of the invention as described on page 1 lines 5 – 7 generally relates to a system and a method suitable for planning and controlling the costs of a multi-facet operation such as a mining operation for life of mine from concept and pre-feasibility assessment to closure. The Background of the invention at page 1 lines 11 – 13 lines explains:
The concept of enterprise resource planning (ERP) and the incorporation of software and hardware related components and databases in support thereof is common practice in modern business society.
Page 2 lines 1 – 9 summarily describes that, notwithstanding the capability of modern information technology, many facets associated with the planning, execution, and decommissioning of mining operations are hamstrung by the unavoidable and extensive yet disconnected planning and costing systems and processes.
11.The summary of the invention, at pages 3 to 3B, provides consistory statements consistent with the claims. The Detailed Description on page 11 line 28 – page 12 line 7 summarises Figures 1 and 2 and explains:
Figure 1 illustrates some of the physical componentry and non-transitory computer readable storage mediums, with preselected toolsets, of particular functionality, and corresponding libraries, with collections of resulting preselected compiled outcomes, for occasional application in a system and a method map for the planning and controlling of multi-facet business activities, in the form of mining technical activities, and of enterprise support processes, including costing and financial reporting, such as its chart of accounts (COA), concurrently and over extended time periods, during life of mine, such as from concept and pre-feasibility assessment to closure, in the mining of a mineral deposit, in a direct substantially real-time manner and in accordance with the invention; and
Figure 2 illustrates the system and the method as illustrated in Figure 1 comprehensively, incorporating an inventory management system, as disclosed in PCT Patent Application PCT/ZA20141000036, in accordance with the invention.
Figure 1 has been reproduced below.
The steps discussed with reference to Figure 1 on pages 12 – 14 can be summarised, referencing the parts of the specification directly as follows:
13.1The creator 1 transforms a work method into the work breakdown structure which involves creating a programmable, comprehensive, repeatable design templates that represent specific mining technical activities, geometry and sequence of activities.
13.2 The resulting work breakdown structure is then codified by means of the codifier 2, into a cost code structure.
13.3 The cost code structure is assimilated by means of the assimilator 3 to reflect the equivalent granularity changes in state and status of the mining workspace and, more particularly, of the change in state and status of the mineral deposit being mined. The assimilator 3 further collects and assimilates data continuously during the execution of the mining technical activities to determine, classify and track the resultant changes in the state and status of the mineral deposit being mined, thereby formalizing the corresponding changes of the mining workspace, upon the execution of the mining technical activities.
13.4 The generator 4 transforms the changes in the state and status of the mineral deposit being mined into corresponding inventory and stock items that are manageable within the inventory management system. The generator 4 further generates the associated inventory management system transactions.
13.5 The inventory management system transactions are then compared, with the use of the comparator 5, with reference to the particular mining company's master data governance and at a pre-determined and selected equivalency in granularity between the mining technical activities.
14. According to the Detailed Description on pages 14 – 15, Figure 2 shows the integrated Life of Mine Planning and Cost Control system and method, for Template integration of Mining Technical and Financial Domains together with the inventory management system, as disclosed in PCT Patent Application PCT/ZA2014/000036, and is detailed in accordance with the invention.
There are no numerical references on Figure 2, and the specification does not appear to make further reference to Figure 2.
15. The above outlines the primary features of the invention described.
Claims
16.The specification concludes with the following five (5) claims. As noted above, these claims were filed with the submissions on 28 January 2022 along with a Statement of Proposed Amendments asking to delete all claims presently on file and replace with these new claims. Independent claim 1 relates to a method of controlling at least one mining operation at a mineral deposit with the use of an enterprise resource planning system; and independent claim 5 relates to a method of controlling at least one mining operation. Claims 2 to 4 are dependent upon claim 1.
Claim 1
A method of controlling at least one mining operation at a mineral deposit with the use of an enterprise resource planning (ERP) system, the ERP system comprising functionality to:
issue a plurality of different process works orders for mining technical activities with the use of associated mining technical equipment during a mining operation; and
maintain, in a database, data defining inventory items and issue inventory movement transactions with respect to the inventory items;
the method comprising:
configuring the ERP system to:
map the plurality of different process works orders to a corresponding plurality of different mining technical activities with the use of associated mining technical equipment during a mining operation at a mineral deposit;
receive, via a computational interface, technical data indicative of the state and status of the mineral deposit being mined and identify from the received data a change in state or status of the mineral deposit;
map with preselected granularity the state and status of the mineral deposit to inventory items in the database and transform the identified change in state or status into one or more inventory movement transactions, representing changes in a plurality of the inventory items;
compare the inventory movement transactions with accrued metrics for the mining operation;
based on the comparison, select and issue at least one of the process work orders for a mining technical activity with the use of the mining technical equipment;
initiating a process for the at least one mining technical activity with the use of associated mining technical equipment to further change the state or status of the mineral deposit in accordance with the process work order; and
receiving, by the ERP system from the computational interface, technical data indicating completion of a said process work order and generating at least one said inventory movement transaction based on the received technical data.
Claim 2
The method of claim 1, wherein the change in state or status of the mineral deposits is from a first state or status, to a second state or status and wherein:
the process of receiving the technical data indicative of the state and status of the mineral deposit being mined comprises:
receiving first technical data from a first mining technical system;
receiving second technical data from a second, disparate mining technical system or from the first mining technical system, at a later time relative to a time of receipt of the first technical data, wherein the first state or status is based on the first technical data and not the second technical data and wherein the change in state or status of the mineral deposit is identified based on an amalgamation of the first and the second technical data;
the process of mapping with preselected granularity the state and status of the mineral deposit to inventory items comprises:
defining at least one inventory item attribute, wherein the inventory item attribute is an attribute of at least one of the inventory items, wherein the inventory item attribute is initially defined based on the first technical data and not the second technical data;
and updating the at least one inventory item attribute based on the second technical data.
Claim 3
The method of claim 2, wherein the process of mapping with preselected granularity the state and status of the mineral deposit to inventory items comprises:
reading from the first technical data spatial information defining a first spatial location for the first technical attribute;
reading from the second technical data spatial information defining a second spatial location for the second technical attribute;
and matching the first spatial location in the first technical data with the second spatial location in the second technical data.
Claim 4
An ERP system comprising functionality to issue a plurality of different process works orders and maintain data defining inventory items and issue inventory movement transactions with respect to inventory items, configured in accordance with the method of any one of claims 1 to 3.
Claim 5
A method of controlling at least one mining operation at a mineral deposit, the method comprising:
a) receiving first technical data from a first mining technical system;
b) receiving second technical data from a second, disparate mining technical system;c) determining, based on the first and the second technical data, a change in the state or status of the mineral deposit due to a mining operation by at least one mining technical activity with the use of associated mining technical equipment;
d) mapping the change in state or status of the mineral deposit to at least one inventory movement transaction of an ERP system;
e) compare the inventory movement transactions with accrued metrics for the mining operation defined with respect to inventory items subject to the at least one inventory movement transaction; and
f) based on the comparison, initiating a process for the at least one mining technical activity with the use of associated mining technical equipment to further change the state or status of the mineral deposit.
17.While the claims referred to in the submissions of 28 January 2022 are amended from those referred to in the submissions of 1 November 2021, I believe there to be some inconsistencies between the two submissions. In the submissions first filed on 1 November 2021, the applicant argued that the present claimed invention was computer-implemented. The applicant explained, by way of example “…The technical problems within the computer include the formation of new data structures…” and “…that an Enterprise Resource Planning (ERP) system is not and cannot be called a mere “generic use of computer systems”. However, in the second set of submissions filed 28 January 2022, the applicant argued that the claim was not to an ERP system and was not a computer-implemented invention.
18.Regardless of this inconsistency, for reasons explained further on this decision, I consider that the claimed invention can broadly be classified as computer implemented. Furthermore, this inconsistency seems due to the nature of the decisions made respectively by the Burley J and the Full Federal Court in the “Aristocrat” matters.
19. On the face of the claims and specification, what appears to be present in the claimed invention is a generic description of what can be done within the ERP but not a disclosure of how the ERP can be configured to achieve these outcomes. For example, claim 1 defines and provides broad, generic examples for the following features but fails to define (and the specification fails to describe) how these features are put into effect:
· issuing process work orders, which are broadly exemplified in the specification (e.g. page 14 lines 22 – 25 of the specification as filed);
· receive…technical data indicative of the state and status of the mineral deposit (the specification as filed on page 17 lines 10 – 19 describes that data is collected during activities in a mining technical context, and that changes in state and status are tracked. However the specification doesn’t describe what the data contains, how it is structured, how it is received.)
· compare the inventory movement transactions with accrued metrics for the mining operation (the specification as filed at page 16 lines 16 – 21 exemplifies the comparison of well known and significantly varying metrics such as volume, mineral grade, and mineral content).
· based on the comparison, select and issue at least one of the process work orders (the specification does not disclose even one complete embodiment explaining a particular process of comparing and issuing work orders, meaning that the initiating of a mining technical activity and receipt of technical data as further described in the claim lacks context and an explanation as to how this step is performed.)
20. The clearest embodiment provided by the specification relates to the first step of Figure 1 from page 12 line 28 to page 13 line 3 which describes that a creator, presumably a human operator, transforms a work method into a repeatable design template having regard for the inherent risks of the mining method and operational guidelines of the mining organisation. The specification does not disclose or suggest:
· what types of work methods are anticipated beyond ‘mining instructions, survey measuring lists, or short term operational plans of activities’
· what inherent risks might include; or
· what operational guidelines are capable of being factored in.
APPLICABLE LAW
The Patents Act 1990 describes the requirements for filing a patent application, and the requirements a patent application must meet for it to be accepted and then eventually granted.
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations. The Application was filed on 08 October 2015; hence the amended provisions of the Act and Regulations apply to the examination of the Application and to the instant hearing decision.
23.One of the amendments introduced was a change to the standard of proof, requiring a ‘balance of probabilities’ approach to be used during examination. As explained at Item 14 of the Explanatory Memorandum:
Historically, the patent legislation required the Commissioner to accept a lower standard of proof than a court. The Commissioner was required to accept a patent application ‘unless it appears practically certain’ or ‘clear’ that it would be invalid.
24. Section 49(1) of the Patents Act 1990 as amended prescribes that the Commissioner must accept a patent request and complete specification relating to an application for a standard patent if the Commissioner is satisfied, on the balance of probabilities:
· that the specification complies with subsections 40(2) to (4); and
· that the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and
· that the invention is a patentable invention under subsection 18(2); and
· as to the matters (if any) prescribed under paragraph 45(1)(d).
The Law on Manner of Manufacture
25.Paragraph 18(1)(a) of the Patents Act 1990 prescribes:
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;
26.The principles of law in respect to manner of manufacture have been guided from the High Court decisions in National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 (“NRDC”) and D’Arcy v Myriad Genetics Inc [2015] HCA 35 (“Myriad”). A body of case law addressing the patent eligibility of computer implemented inventions exists which has adopted and applied these principles from the High Court.
27.In NRDC, the High Court provided a statement of the law regarding manner of manufacture. 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”.
28.The High Court though was not laying down a precise formulation that can be applied unthinkingly. In 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.”
29. 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 Myriad 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.”
30. The principles of law that apply to manner of manufacture can be usefully summarised and were generally accepted by Robertson J in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (“Rokt”) at [189]. While this decision was later overturned, it was not on the basis of these principles, which I accept are correct.
“17.1 The Court must decide, as matter of substance not form, whether the claimed invention is the proper subject-matter for a patent: RPL Central at [99]; Research Affiliates at [106], [117].
17.2 This requires consideration of both the claims of the Application and the invention described in the body of the specification: RPL Central at [114].
17.3 The assessment is not done mechanically. There are no precise guidelines or mathematical formula. It is “a question of understanding what has been the work of, the output of, and the result of, human ingenuity” and then applying the developed principles: Research Affiliates at [116]. See further RPL Central at [112]:
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 ...
17.4 One well-settled principle is that a distinction exists between a technological innovation and a business innovation. A technological innovation is patentable. A business innovation is not: Research Affiliates at [94]; RPL Central at [100]. Consequently, a business method or scheme is not, per se, a proper subject for letters patent: RPL Central at [96]. Nor are abstract ideas, mere intellectual information or mere directions for use patentable: Research Affiliates at [101]; RPL Central at [100].
17.5 A computerised business method or scheme can, in some cases, be patentable. However, “[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation”: RPL Central at [96] (emphasis added). This requires “some ingenuity in the way in which the computer is used”: RPL Central at [104]. It is not a patentable invention “to simply ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions”: RPL Central at [96]. In other words, if the ingenuity lies in the business method or scheme alone, the invention will not be patentable despite the computer-implementation.
17.6 Thus, 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: RPL Central at [96]. Contrary to [the applicant’s submissions at [49]], this is a binary distinction: the invention is either an unpatentable scheme or plan, or it is a patentable improvement in computer technology. In conducting the analysis, it is useful to:
17.6.1 ascertain whether the contribution to the claimed invention is technical in nature: RPL Central at [99], Research Affiliates at [114];
17.6.2 consider whether the invention solves a “technical” problem within the computer or outside the computer: RPL Central at [99], Research Affiliates at [103];
17.6.3 consider whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed: RPL Central at [99], Research Affiliates at [118];
17.6.4 consider whether the invention requires merely “generic computer implementation”, as distinct from steps which are “foreign” to the normal use of computers: RPL Central at [99], [102]; Research Affiliates at [101]; and
17.6.5 consider whether the computer is merely the intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea: RPL Central at [99].”
31.Most recently, in Aristocrat ‘21, in finding that the Electronic Gaming Machine (EGM) of claim 1 was not a manner of manufacture, Middleton and Perram JJ explained at [26]:
“In cases such as the present we would therefore respectfully favour the posing of these two questions in lieu of those advanced by the primary judge:
(a) Is the invention claimed a computer-implemented invention?
(b) If so, can the invention claimed broadly be described as an advance in computer technology?
I do not see this formulation as a departure from the principles outlined with respect to other Full Federal Court decisions.
32. While it is well established that, for the purposes of assessing whether a claimed invention is a manner of manufacture, the assessment must be made as a matter of substance, the process itself must be taken on a case by case basis, and the process does not mean discounting or disregarding individual integers. This was most recently affirmed in Aristocrat ‘21 at [22] and [52]. But, as accepted by Robertson J in Rokt [189] when explaining the process to determine the substance of an invention:
“There are no precise guidelines or mathematical formula. It is “a question of understanding what has been the work of, the output of, and the result of, human ingenuity” and then applying the developed principles.”
33.Nicholas J in Aristocrat ‘21 at [117] provided some guidance explaining:
“For the purpose of determining whether the invention produces the artificially created state of affairs referred to in NRDC and considered in Research Affiliates at [115]-[119], it will often be useful to ask whether the invention solves a technical problem or makes some other technical contribution to the field of the invention. In particular, it may be useful to consider whether the invention solves a technical problem including one that exists “outside the computer”, whether the computer is utilised to produce “an unusual technical effect” or whether there is some ingenuity in the way in which the computer is utilised (RPL Central at [99], [104] and [109]).”
THE EXAMINER’S OBJECTIONS AND THE APPLICANT’S SUBMISSIONS
34.To provide more context to the applicant’s submissions it is useful to elaborate further on what was said within the examiner’s objections and responses during examination.
35.In the first examination report the examiner objected that the claims were not a manner of manufacture, arguing that the substance of the claimed invention lay in a scheme for planning and controlling business activities through making use of the conventional properties of computer systems. The examiner referred to the principles of Myriad and RPL to explain the reasons for his objection.
36.In the first response the applicant did not directly address the reasons for the examiner’s objections, instead arguing that the claims as proposed to be amended were a manner of manufacture because they amounted to a “New Use of an Old Contrivance”, explaining on page 2:
“…the old use of the known contrivance (by which the applicant was referring to an ERP system) is (stated at a very high level) to use an ERP system for management of business resources. It can issue work orders and maintain inventory items.”
And on page 3 the applicant described the alleged new uses of the ERP system:
“…(first) process of mapping the state and status of the mineral deposit to inventory items…
…(second) process to transform the identified change(s) in state or status (of the mineral deposit) into one or more inventory movement transactions, representing changes in a plurality of the inventory items…
…(third) process to issue process work orders, based on a comparison of the inventory movement transactions with accrued metrics for the mining operation……(fourth) process of generating at least one inventory movement transaction based on data indicating completion of a process work order…”
37.In the second examination report, the examiner maintained that the claims as proposed to be amended were not a manner of manufacture. In responding to the applicant’s arguments, the examiner explained:
“…the ‘old contrivance’, as put forward by the Applicant, itself relates to a conventional use of computer systems in order to implement business/administrative functions. Such generic use of computer systems is not considered to be in substance patentable subject matter. Therefore any new use of said old contrivance which also relates to the conventional use of computer technology to implement administrative data processing, as in the present invention, is also not considered to be patentable subject matter. Moreover, when applying this test, it is not accepted that the ‘old contrivance’ in the present case is the ERP system as submitted by the Applicant. Rather, the ‘old contrivance’ is the computer itself, and not the ERP system which is executed by the computer as software. Regardless, however it is framed, it is clear that each of these four processes discussed by the Applicant relate to the implementation of administrative arrangements which are carried out by exploiting the conventional data processing capabilities of the computer, and therefore do not in substance relate to subject matter suitable for a patent…”
38.The applicant filed written submissions on 1 November 2021. These submissions, at least in part, referred to and argued against the objections raised in the second examination report. The submissions included:
·The applicant respectfully believes that it is irrelevant to consider whether or not an “old contrivance” is “conventional”. Whether the contrivance is labelled “old”, “known” or “conventional” is a matter of semantics. None of these in and of itself present a bar to patentability. Instead the inquiry needs to focus on the “new use”.
·The relevant “old contrivance” is an ERP system… Contrary to the examiner’s assertions, the applicant believes that an Enterprise Resource Planning (ERP) system is not and cannot be called a mere “generic use of computer systems”.
·The business/administrative functionality of an ERP system is not the relevant functionality that forms the substance of the present invention. Instead, it is the technical elements of the ERP system relating to its data structures for the formation of a common database that is of relevance
·Second, the examiner describes the four processes as “carried out by exploiting the conventional data processing capabilities of the computer”. The applicant respectfully disagrees. As discussed above, the relevant characteristics of an ERP system to consider include its defined data structures and how they are deployed to form a common database. These characteristics are not conventional data processing capabilities as that term has been used in the context of patentable subject matter. For example, a user cannot utilise the general purpose characteristics of the underlying computer to customise the data structures and the use of the data structures to form a common database.
·the present invention, being directed to at least a new use of an ERP system, uses “conventional” computer equipment no more than computer equipment was used in the process considered in CCOM.
·As established by Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778, the inquiry need go no further, as “The initial question is whether the claimed invention is for a mere scheme or business method of the type that is not the proper subject matter of a grant of letters patent and…” is answered in the negative.
·The contribution relevantly includes a process to “map with preselected granularity the state and status of the mineral deposit to inventory items and transform the identified change in state or status into one or more inventory movement transactions, representing changes in a plurality of the inventory items.
·The technical problems within the computer include the formation of new data structures to enable the common database of the ERP system to accommodate state and status of mineral deposits. This overcomes practical difficulties which the patentee has been first to see and overcome by some ingenuity of his own.
·As discussed extensively above, an ERP system is not a generic computer.
·New claim 5 is directed to a method of controlling mining operations. This claim stands in contrast to the other claims, which are directed to computer implemented inventions.
·As established at least in Technological Resources Pty Limited v Tettman [2019] FCA 1889, the reasoning in the mere scheme cases is inapt when the subject matter of the invention involves physical steps carried out on a physical product using physical apparatus, to produce a physical result. Indeed, the machine of claim 5 may very well be the crusher that was the subject of claim 1 considered in Tettman, or may be another machine of the mine site.
39.The applicant filed further written submissions on 28 January 2022. These submissions included:
·At paragraph 51 of the Aristocrat decision, the Court indicated that the question of whether the claimed invention is a computer-implemented invention is determined by identifying the substance of the invention. It is apparent from paragraph 7 that the common general knowledge was taken into account as part of the determination.
·The common general knowledge will include knowledge that mining operations involve using a range of mining technical equipment that require control in order to effect mining technical activities, such as blasting, excavating, crushing, grinding, sorting, beneficiation and so forth. For present purposes, the specification may also be utilised to indicate that ERP systems were known, but not for the control of mining technical activities, which has been the domain of mining technical database management systems. (emphasis added).
·Utilising the ordinary rules of construction, claim 1 is directed to what its preamble explicitly states it is directed to, namely a method of controlling mining operations.
·Methods for controlling mining technical equipment and the associated mining technical activities, based on physical measurements of the state and status of a mineral deposit stand in direct contrast to methods that have been found to be not patentable subject matter. No claim is made to the business of mining, for example choosing to open or close a mine based on its profitability or to managing legal aspects of the mining operations using a computer.
·Accordingly, as a matter of substance, the claim is directed to a new method of controlling mining operations, in particular for controlling mining technical equipment and the associated mining technical activities. This is neither abstract nor a business scheme… The claim is not however, a claim to an ERP system.
·The applicant respectfully believes that the answer to (a) above is “NO”, i.e. the invention is not a computer-implemented invention, and therefore then that the general principles of patentability must be considered – see paragraph 27 of the Aristocrat decision.
·Whilst ERP systems were known, they were not known to be configured in the manner claimed and applied to the industrially useful process of controlling mining technical equipment (and the associated mining technical activities).
CONSIDERATION
40. While some key points of the Applicant’s submissions have been provided above, I have sought to encapsulate the applicant’s submissions below, but I do not intend for this summary to infer I have not considered all arguments which were provided to me.
The claims are generally directed to a method for controlling mining operations and or technical equipment. The use of the ERP system as claimed is new and is not merely a generic use of a computer system. A generic computer system does not permit a user to utilise the general purpose characteristics of the underlying computer to customise data structures and use data structures to form a common database. The present invention advances computer technology and solves a technical problem through the process of forming new data structures to enable the common database of the ERP system to accommodate state and status of mineral deposits.41.During my consideration, I will answer the following questions:
· What is the substance of the claimed invention?
· Is the invention, as a matter of substance, a manner of manufacture?
42. The Courts have made it clear that there is no mathematical approach to determining substance, and they have cautioned against a simplistic assessment of whether or not computer technology is ‘generic’ to determine where the substance might reside and whether the invention is a manner of manufacture. I must have regard for all factors which may be relevant, including what the applicant has alleged to have invented and the degree to which the specification supports this allegation.
43. The applicant has submitted that the present invention:
(a)is directed to a new method of controlling mining technical equipment; and
(b)advances computer technology and solves a technical problem through the process of forming new data structures to enable the common database of the ERP system to accommodate state and status of mineral deposits.
44. Regarding (a), as discussed earlier in this decision, neither the claims nor the specification define or describe how or what type of mining equipment is controlled. I do not consider that the present invention involves a new use of a computer system or as a matter of substance, relates to a particular means of controlling mining technical equipment.
45. Referenced earlier in this decision, Rokt [17.6.1 to 17.6.5] provided some considerations useful to determining whether a claimed invention is a patentable improvement in computer technology. I have compared the claims against the set of considerations and while the Courts did not intend for them to be exhaustive, they are nonetheless a useful and the applicant has not provided any alternative considerations relevant for me to rely on.
17.6.1 ascertain whether the contribution to the claimed invention is technical in nature: RPL Central at [99], Research Affiliates at [114];
17.6.2 consider whether the invention solves a “technical” problem within the computer or outside the computer: RPL Central at [99], Research Affiliates at [103];
17.6.3 consider whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed: RPL Central at [99], Research Affiliates at [118];17.6.4 consider whether the invention requires merely “generic computer implementation”, as distinct from steps which are “foreign” to the normal use of computers: RPL Central at [99], [102]; Research Affiliates at [101]; and
17.6.5 consider whether the computer is merely the intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea: RPL Central at [99].”
The present invention operates on a computer system, but does not describe how or what type of mining equipment is controlled. The specification does not discuss any specific limitations of computer technology as such that the present invention seeks to overcome. This indicates that the invention, as a matter of substance relates to the use of a standard or well-known computer system to implement a method, and that in as much is not technical in nature nor does it solve a technical problem within the computer system.
46. Regarding (b), the parts of claim 1 which are most relevant to this submission are:
…receive, via a computational interface, technical data indicative of the state and status of the mineral deposit being mined…
…map with preselected granularity the state and status of the mineral deposit to inventory items in the database and transform the identified change in state or status into one or more inventory movement transactions…
47. Technical data indicative of the state and status of the mineral deposit being mined, as explained earlier in this decision with reference to the specification, amounts to generic mining standards which is not in and of itself a new data structure.
48. Map…the state and status of the mineral deposit to inventory items in the database and transform the identified change in state or status into one or more inventory movement transactions is also not equivalent to a new data structure formed to enable the storage of state and status of mineral deposits as submitted by the applicant. There is no information claimed or described in the specification which amounts to a specific (or new) type of data structure. Instead, the claim merely defines the storage of data in what can only be assumed is a standard or well-known database. It defines a relationship between data, and not a data structure as such.
49. The most relevant parts of the additional claims include:
· Claim 2 additionally defines that first and second technical data can be sourced from first and second systems and at different times.
· Claim 3, dependent on the method of claim 2, additionally defines that first and second spatial information is read and matched.
· Claim 4 defines issuing work orders in accordance with the method of any of claims 1 to 3.
· Claim 5 is similar to claim 1.
However, for the same reasons as discussed with regard to claim 1, this does not support the applicant’s submission that a new data structure is formed to enable the storage of state and status of mineral deposits.
50. With regard to claim 5, the applicant specifically referred to Technological Resources Pty Limited v Tettman [2019] FCA 1889, explaining that:
“…the reasoning in the mere scheme cases is inapt when the subject matter of the invention involves physical steps carried out on a physical product using physical apparatus, to produce a physical result. Indeed, the machine of claim 5 may very well be the crusher that was the subject of claim 1 considered in Tettman, or may be another machine of the mine site.
51.In contrast to the present invention, that of Tettman was a specific method of producing an upgraded ore whose steps directly led to a production of upgraded ore. I disagree with the applicant that the method of claim 5 produces a physical result and in particular one which is analogous to that of Tettman. Rather, claim 5 establishes a direction to initiate a process for a mining activity in response to a generalised and non-specific sequence of steps. It is not aimed at generating a particular physical result.
52.For the purposes of assessing manner of manufacture, the applicant is not required to describe how the ERP database would be modified to accommodate state and status of mineral deposits. The applicant similarly does not need to describe how the ERP database would be modified if the mere reference to modifying it was sufficient for the person skilled in the art to put this into effect.
53.However, because the specification does not describe how the ERP system works from a technical perspective, I am not persuaded that there is an improvement in the functioning of the computer or that a technical problem within the computer is provided for.
Further, the claimed and described method of controlling mining technical equipment and the subsequent outcomes are so vague and non-specific, I cannot conclude that the invention is technical in nature or otherwise provides for a concrete, tangible, physical or observable effect as a matter of substance.
54. Having regard for what has been claimed and what has been described as I’ve explained earlier in this decision, the weight of considerations leads me to conclude that the invention defined in claims 1 to 5 as a matter of substance relates to the use of an ERP system to store and process particular generic classes of information which relate to mining operations. There is nothing described or claimed which leads me to conclude that the applicant has in any way configured the ERP or improved computer technology in any specific way to store the particular type of information claimed or to control a mining operation in a specific way.
55. I have also read the specification and I cannot find any features which relate to the formation of a new data structure. In particular, I cannot find any explanation about:
· how the new data structures are created or what properties they might have; or
· why a common (ERP) database cannot accommodate state and status of mineral deposits; or
· how the database of the present invention overcomes this alleged problem to facilitate the accommodation of state and status of mineral deposits.
Page 17 lines 6 to 19 of the specification as filed discloses that
“the continual collection and assimilation of data during activities in a mining technical context enables the tracking of change in state and status of space over time.” And “Such state and status are determined and classified in a book of standards by each of the mining discipline as they interact within the mining workspace in the transformation of a mining operation from planning, through execution to closure.”
56.But this still falls short of explaining how the ERP database of the present invention accommodates state and status data of mineral deposits. This disclosure also makes it clear that the collection, assimilation of data and tracking of change in state and status amounts to nothing more than just that – there are no material effects apparent.
57.The claimed invention therefore relates to a scheme for controlling at least one mining operation with the use of standard computer technology.
CONCLUSION
58. I have found that claims 1 to 5 are not directed to patentable subject matter and I do not consider there to be anything within the specification which could be amended into the claims such that they would define patentable subject matter. The application should be refused.
Clinton McCarthur
Delegate of the Commissioner of Patents
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