Myall Australia Pty Ltd v RPL Central Pty Ltd
[2011] APO 48
•12 July 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48
Patent2009100601
Title:Method and System for Automated Collection of Evidence of Skills and Knowledge
Patentee: RPL Central Pty Ltd
Opponent: Myall Australia Pty Ltd
Delegate: Dr S. K. Aggarwal
Decision Date: 12 July 2011
Hearing Date: 18 May 2011, in Canberra
Catchwords: PATENTS – opposition to innovation patent – lack of novelty of claims not established – invention monopolises a scheme for gathering information – internet and computer used for mere convenience for operating the scheme – no concrete effect or phenomenon or manifestation or transformation resulting from the claimed invention - invention lacks a manner of manufacture – patentee allowed to propose suitable amendments within 60 days – costs not awarded.
Representation: Patentee: Watermark, Melbourne
Opponent:Collison & Co, Adelaide
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2009100601
Title:Method and System for Automated Collection of Evidence of Skills and Knowledge
Patentee: RPL Central Pty Ltd
Date of Decision: 12 July 2011
DECISION
All the claims as presently drafted are novel. None of the present claims is considered to be a manner of manufacture.
As I consider that there is patentable subject matter within the specification, I allow the patentee 60 days from the date of this decision to propose suitable amendments. If no amendments are proposed, I will revoke the patent.
I make no award of costs.
REASONS FOR DECISION
Background
Innovation patent application 2009100601 directed to a Method and System for Automated Collection of Evidence of Skills and Knowledge was filed on 22 June 2009 by RPL Central Pty Ltd (“patentee”). The patent was advertised as certified on 22 October 2009 following a request for examination by the patentee.
A notice of opposition to the patent accompanied with a statement of grounds and particulars and complete evidence in support was filed on 22 March 2011 by Myall Australia Pty Ltd (“opponent”).
No evidence in answer and reply were served by the patentee and the opponent respectively.
On 7 April 2011, the patentee filed a request for dismissal of the opposition proceedings in respect of the patent. They also indicated in their dismissal request that if the Commissioner were to give an opportunity to the opponent to make submissions and to be heard before deciding on the patentee’s request, then the patentee would instead request that the matter be set down for hearing in Canberra on the substantive ground of opposition.
On 15 April 2011, a delegate of the Commissioner advised the patentee that the patent office could not move to consider dismissal of opposition without giving an opportunity for a hearing to the opponent. Therefore, a hearing on substantive ground of opposition was set.
The matter was heard in Canberra on 18 May 2011. Dr Mark Summerfield of the patent attorney firm Watermark, Melbourne represented the patentee. Mr Simon Smith, a representative of the patentee, also attended the hearing. The opponent did not attend the hearing but instead filed their written submissions via their patent attorney, Collison & Co, Adelaide.
The Statement of Grounds and Particulars
The only ground of opposition specified in the statement of grounds and particulars relates to novelty and reads as follows:
“That the invention, so far as claimed in any claim in the innovation [sic], was published and also in prior use in Australia before the priority date of that claim.”
The statement of grounds and particulars lists twelve declarations in support of the opponent’s case, each of the declarations illustrating how the invention as defined in each and every one of the claims of the patent was either in prior use or had been prior published before the relevant priority date.
The Specification
The present invention relates to assessing competency or qualification of individuals with respect to recognised standards and is particularly applicable to improving the manner in which Recognition of Prior learning (RPL) is conducted within the Australian Vocational Education and Training (VET) sector. The specification states that in order to complete the RPL assessment, a training organisation assesses evidence of the individual’s competency to determine whether they are able to meet the requirements, skills, knowledge and/or other expectation of a person who has completed an equivalent training course, or who has gained relevant practical experience in the workforce. If so, the individual may be awarded the equivalent qualification, or statement of attainment, by the training organisation.
The impetus for the present invention appears to have come from the difficulty for an individual to identify a particular qualification to which they may be entitled under an RPL program, along with an institution or organisation that is able to perform the required RPL assessment. This is particularly so because there are in excess of 35,000 qualifications and 34,000 units in the Australian VET sector and there is no single point of access to RPL in Australia.
The specification indicates that an objective of the present invention is to provide an improvement to the existing situation through technological means. It is further stated that the invention recognises the need for an automated tool that can facilitate the centralised collection of assessment information from individuals, and provide improved access to RPL processes independently of the particular organisation that is chosen to issue a corresponding qualification or statement of attainment.
The specification concludes with five claims of which only claims 1 and 5 are independent. The claims read as follows:
1.A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, including the steps of:
a computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and
receiving from the individual via said individual’s computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria,
wherein at least one said response includes the individual specifying one or more files stored on the individual’s computer, which are transferred to the assessment server.2.The method of claim 1, wherein the recognised qualification standard includes one or more Units of Competency registered with an official training information service, such as the Australian National Training Information Service or equivalent, the assessable criteria includes elements of competency and performance criteria associated with said Units of Competency, and the remotely-located server is operated by or on behalf of the official training information service.
3.The method of claim 1 or claim 2, wherein the steps of presenting the questions and receiving responses are performed via an automated computer interface, such as a web-based interface or a standalone computer interface.
4.The method of claim 3, wherein the computer interface provides an input field that enables the user to enter a text-based response in reply to each automatically-generated question.
5.A system for gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, the system including:
at least one server computer having a microprocessor, an associated memory or storage device, and network interface providing access to the internet;
the memory or storage device including a data store which contains a plurality of questions relating to the competency of the individual to satisfy each of a plurality of assessable criteria associated with the recognised qualification standard said criteria including one or more elements of competency, each of which is associated with one or more performance criteria, wherein the assessable criteria are retrieved via the internet from a remotely-located server, and the questions have been automatically-generated by computerised processing of said elements of competency and performance criteria; and
the memory or storage device further including instructions executable by the microprocessor such that the server computer is operable to:
present the questions via the internet to a computer of an individual user;
receive from the individual user via said indivdual’s [sic] computer a series of responses to the questions, the responses including evidence of the individual’s skills, knowledge and experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files stored on the individual’s computer for transfer to the server computer; and
store the responses of the individual user within the associated memory or storage device.Evidence
The evidence in support consists of a single statutory declaration each from:
· Ms Shelley Eitzen with exhibits SE1 and SE2,
· Mr Bob Burton,
· Mr Alex Dighton,
· Ms Denise Janek,
· Ms Carmel-Ann Dahl,
· Mr Colin Cook,
· Ms Jen Rodger,
· Mr David Morgan with exhibits DM1 to DM5,
· Ms Bethanie Madigan with exhibits BM1 to BM6
· Mr Timothy Howard Goldsmith with exhibits TG1 to TG8,
· Ms Marlene Gail Ramsay with exhibits MR1 to MR17, and
· Mr Alexander Barry Piltz with exhibits BP1 to BP31.
As indicated earlier, no evidence in answer and hence no evidence in reply was filed in the present case.
Submissions
On 29 April 2011, the patent office advised the parties that I wished to hear submissions in respect of a further possible ground of lack of manner of manufacture. Therefore, the parties provided their submissions on the ground of manner of manufacture in addition to the ground of novelty.
I will provide the details of what is contained in the evidence, and the details of parties’ submissions, where relevant, later in my decision.
Decision
Onus of Proof
In proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd's Application [1979] RPC 523). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini Edison S.p.a. v Eastman Kodak (1971) 45 ALJR 593).
Furthermore, as a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992).
Novelty
Law Relating to Novelty
Section 7 of the Patent Act 1990 provides that
(2) For the purpose of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than mentioned in paragraph (c)) made publicly available in a single document or through doing a single Act;
(b) prior art information (other than mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
The test for novelty has been discussed in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [ 2005] FCAFC 224 (see paragraphs 311 et seq) and Bristol-Myers Squibb Company v FH Faulding & Co Limited (2000) 97 FCR 524. As noted in both the decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 at page 235 where Aickin J stated:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would if the patent were valid, constitute an infringement.”
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367).
However, as Pfizer (supra) noted, it is not sufficient for a citation to contain all the essential features of the claim, there must be "clear and unmistakable" directions to the claimed invention. Lack of novelty can however be found where a feature is not explicitly mentioned but nonetheless present as an inherent feature as an inevitable result of the disclosure.
I note that prior use requires a relatively high standard of proof. The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application [1970] RPC 103. At page 106, Graham J. stated:
“In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case.”
The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd (1984) AIPC 90-135. Towards the end of section 8.38, Waddell J. states:
“It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation.”
Novelty Determination in the Current Case
The opponent’s RPL Evidence Collection Tool (“RPL Tool”) is the only item of prior art advanced by the opponent as rendering the present invention not novel. The RPL Tool was subsequently renamed as SkillsTracker and SkillsTracer, and appears to be integrated with the opponent’s ResourceBuilder application.
From the evidence on file, I understand that the ResourceBuilder application was developed by the opponent to allow users to build print-based and online resources for the delivery of specific training courses. The concept involves reducing training to small, stand-alone blocks of learning (mini publications) that can be mixed and matched to meet the requirements of any training course. A user of the ResourceBuilder application searches an online data base using keywords or specific pieces of curriculum to display matching mini publications, which are selected by the user, given a flavour relating to a specific industry (e.g. Health, Tourism, Horticulture) and arranged in a required order in the form of a book known as a “Resource”. The user can place an on-line order for a hard copy of the Resource. The advantages of the ResourceBuilder application include reducing development costs for teaching/training resources to a minimum.
The RPL Tool provides an online interface for students requiring recognition of their prior skills relative to a particular competency against mini publications included in a Resource. A student would log on to a website and select a particular unit for which they wish to have their skills recognised. Questions would then be automatically generated and presented back to the student which they would then need to answer. Some of the answers may require uploading of additional documents to support a particular answer. This information would then be reviewed by an assessor/lecturer who could then grant recognition or alternatively provide some type of gap training in order for the requisite level to be achieved.
There was no disagreement between the opponent and the patentee in regards to the date of disclosure and prior use of the RPL Tool. Dr Summerfield, on behalf of the patentee, submitted that they do not dispute that the features of the RPL Tool were in use prior to the date of filing of the opposed patent.
Dr Summerfield asserted that there was nothing in the opponent’s evidence to support the contention that prior use of the RPL Tool anticipates the claims of the opposed patent. He submitted that although he did not dispute that from the perspective of an end-user, both the RPL Tool and the opposed patent perform the functions of presenting questions for the purpose of assessing competency of an individual to satisfy the requirements of a particular training unit, and receiving responses to the questions including uploading of documentary evidence, there is no evidence of the following steps of claim 1 in the RPL Tool:
(a) computer retrieving via the internet from a remotely located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
(b) the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard.
Dr Summerfield stated that the automation provided by steps (a) and (b) of the claimed invention comprises a new contribution to the field. He argued that in the ResourceBuilder application, a resource is first built from available mini publications to meet specified training requirements, and all further activities, including RPL, are based upon this resource. He particularly directed my attention to paragraphs 6 and 7 of the Eitzen declaration and paragraph 23 of the Piltz declaration where it has been indicated that resources were being built online that would meet the training requirements of a certificate or a unit of competency, and that questions are automatically created from a resource and thereafter presented online to enable students to submit evidence electronically.
Taking the matter further, Dr Summerfield argued that although a number of opponent’s declarants attest to having been present at various demonstration of the RPL Tool, it was impossible for them to conclude from the demonstration whether questions were generated in accordance with steps (a) and (b) of claim 1 of the opposed patent. He contended that since the questions are not generated in accordance to the above steps of the patent claims, the claims are not anticipated.
On the other hand, the opponent stated that although from a literal point of view there may be a slight difference in terminology used to describe their RPL Tool, the claims of the opposed patent provide a method which encompasses within its scope the same online recognition of prior learning software tool that they have presented for a long period of time before the priority date of the patent. They indicated that each of their declarants acknowledges that they were using an uploading facility requesting information before the priority date of the opposed patent.
The opponent stated that the basis of any online recognition of prior learning software application is to generate questions to the inquirer so that those questions can be answered in order for some review to be undertaken, so verification or acceptance of RPL can be determined. It was argued that the opponent has done this by mapping skills to the units of competency, wherein once the inquirer selects a particular unit of competency, questions are automatically generated from the skills mapped to the unit of competency. The opponent suggested that to automatically generate questions, a preloaded database of questions is required.
The opponent further stated that the only difference between the RPL Tool and the patent is of the feature of “the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual”. They asserted that it is achieved in the RPL Tool by taking those generated questions from a database of previously complied questions relative to skill which is linked to a unit of competency.
I note that the evidence presented by the opponent in respect of the RPL Tool appears to be fairly consistent and that a number of declarants have expressed the opinion that the invention as claimed in the opposed patent was publically available and in prior use through the RPL Tool. However, the evidence does not show as to how the questions are generated.
From the evidence including the exhibits accompanying the various declarations, I cannot find the features of steps (a) and (b) of the claimed invention in the RPL Tool. In particular, there is no disclosure of a computer retrieving a plurality of assessable criteria associated with recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria, and the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions.
In view of this, I conclude that claim 1 and the appended claims 2-4 are novel in light of the RPL Tool.
Independent claim 5, although directed to a system, repeats the subject matter of the method claim 1. Consequently, claim 5 is also novel.
Manner of Manufacture
Law Relating to Manner of Manufacture
Section 18 of the Patent Act 1990 provides that:
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purpose of an innovation 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.
The High Court in National Research Development Corp (NRDC) v Commissioner of Patents [1959] 102 CLR 252, has provided a definitive statement of the law in this regard. At page 275, it was stated that "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".
The decision of the High Court has since been applied in numerous cases including computer related inventions. For example, the inventions in CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 (apparatus for assembling text in Chinese language characters) and International Business Machines Corporation v Commissioner of Patents [ 1991] FCA 625 (method and apparatus for producing curves on a computer graphics display) were found to be patentable. In CCOM (supra), the Federal Court in further referring to the NRDC (supra), summarised the requirement of manner of manufacture as "a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour".
More recently, in Welcome Real-Time SA v Catuity Inc [2001] FCA 445, a method involving smart cards storing traders' loyalty programs, and monitoring customer entitlements through a behaviour file in the cards relating to the behaviour (for example, spending history) of card holders towards the traders was also found to be patentable.
However, in Grant v Commissioner of Patents decision [2006] FCAFC 120, the Court found that a method of protecting an asset including the steps of establishing a trust, making a gift of a sum of money to the trust, making a loan of that money from the trust and securing the loan was not a manner of manufacture. The Court made several important observations in the above case which are relevant in the present matter. While indicating that the fact that a method may be called a business method does not prevent it being properly the subject of letters patent, the Court found at [30] that Mr Grant’s method:
"does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect. It is quite different `components such as smart cards and point of sale terminals, and produced tangible results in the writing of new information to the Behaviour file and the printing of the coupon (at [128]). While there was not a physically observable end result in the sense of a tangible product, the invention involved an application of an inventive method where part of the invention was the application and operation of the method in a physical device."
The Court further observed at [32]:
"A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required. In NRDC, an artificial effect was physically created on the land. In Catuity and CCOM as in State Street and AT&T, there was a component that was physically affected or a change in state or information in a part of a machine. These can all be regarded as physical effects. By contrast, the alleged invention is a mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable, despite the existence of such schemes over many years of the development of the principles that apply to manner of manufacture. There is no physical consequence at all."
It is clear from the above decisions that for an invention to be a manner of manufacture, it must give rise to an artificially created state of affairs in the sense of a concrete, tangible, physical or observable effect. Particularly, what is required is a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation.
It is noteworthy that a physically observable end result need not be in the sense of a tangible product, rather it may be in the application and operation of a method in a physical device. Equally, mere presence of a physical effect is not sufficient to confer patentability. Here, the comments made by the Deputy Commissioner in Invention Pathways [2010] APO 10 at [36] are pertinent:
"I do not take it to suggest that patentability is merely determined on the presence of a physical effect. Rather it clearly must be an effect of such substance or quality that the method considered as a whole is “proper subject of letters patent according to the principles which have been developed for the application of s.6 of the Statute of Monopolies”.”
Manner of Manufacture Determination in the Current Case
Dr Summerfield argued that the claims of the opposed patent clearly relate to a manner of manufacture and that there is no aspect of the established test for manner of manufacture which is not satisfied in the present case. Referring to the requirement of manner of manufacture, formulated in CCOM (supra), as ‘a mode or manner of achieving an end-result which is an artificially created state of affairs of utility in the field of economic endeavour’, he submitted that in the present case:
· the field of economic endeavour is the use of online systems to facilitate the collection of information relevant to performing RPL assessment;
· the end result is the presentation of automatically generated questions in the form of a ‘wizard’, for completion by an RPL candidate via an online interface; and
· the mode or manner of achieving this end result is the retrieval of assessable criteria from a remote server and processing these criteria to generate and store the information required to generate the RPL ‘wizard’ upon request by the candidate, whereby information is collected, transferred and stored for later evaluation.
Dr Summerfield stated that the cases in Invention Pathways (supra), Iowa lottery [2010] APO 25, Research Affiliates, LLC. [2010] APO 31, or Grant (supra) merely relate to legal, financial or commercialisation advice, schemes, or arguments. However, the claims of the opposed patent define a concrete application of information processing: retrieval of information from one source; processing of that information into an alternative form in which it is suitable for presentation to an RPL candidate; provision of online interface for presentation of the information to a user; and collection, transfer and storage of relevant information provided by the user.
On the contrary, the opponent asserted that the subject matter of opposed patent merely relate to a scheme and does not give rise to an artificially created state of affairs. It was argued that the claims do not result in a physical effect in the sense of a ‘concrete effect or phenomenon or manifestation or transformation’ as indicated in Grant (supra) at [32]. The opponent stated that by comparison, in NRDC (supra), the physical effect observed was an artificial effect physically created on land, and in CCOM (supra), a physical effect or change in the state or information of a component in a part of a machine was observed.
The opponent further argued that there is simply a transfer and presentation of known and available information from the remotely located server to an individual’s computer. Following this, the information from the individual’s computer is transferred back to the assessment server. They submitted that the use of a computer, the internet and a memory or storage device in the operation of the invention can simply be considered a convenient and conventional manner within which to retrieve, transfer and store information or data.
The opponent also submitted that in Research Affiliates (supra), it was observed that the generation of data in a computer system from other data in accordance with specified operation of the investment and weighting criteria amounted to “little more than enabling the operation of the investment scheme”. They argued that the same can be considered of the opposed patent, wherein the retrieval of known information based on the recognized qualification standards and generation of questions relating to the competency of the individual is nothing more than an operation of the method.
Claim 1 of the opposed patent defines a method of gathering evidence relevant to an assessment of a user’s competency relative to a qualification standard. While it could be accepted that there is some physical effect or transformation in the computer in the way the method of claim 1 is operated, the question before me is whether it involves a physical effect in the sense of a concrete phenomenon or manifestation or transformation in line with the observations made in Grant (supra).
Here I will be guided by the office decision in Invention Pathways (supra), where the Deputy Commissioner stated:
“In applying the decision in Grant I therefore consider that the “concrete effect or phenomenon or manifestation or transformation” referred to must be one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way. Consequently while the step of building a house involves a concrete physical effect it is peripheral to the method of acquiring a house and indeed could hardly be said to characterise the subject matter of the method such that it is considered an artificially created state of affairs. I consider the same to apply to a business scheme implemented in some part by computer and do not believe the patentability of such a method can arise solely from the fact that, in a general sense, it is implemented in or with the assistance of a computer or utilises some part a computer or other physical device in a incidental way.”
It is clear that the claim relates to gathering information where the internet is used for transmitting and receiving data, and a computer is used for data retrieval, processing, presentation and storage of information in a well known manner. The process of automatically generating questions based on assessable criteria, as stated in the description, includes applying a question template into which the text of the relevant assessable criteria may be merged. In a simple form, a question may be generated from the criteria by prepending the text such as ‘How can you show evidence that’.
The claimed invention defines a method for gathering information where the data retrieval, processing and storage of information appear to have no physical effect other than that would arise in the computer with standard software in conventional use. Furthermore, there is no substantial effect or transformation in generating the questions by concatenating text matters. While the internet and the computer facilitate the operation of the claimed method by retrieving, generating and conveying information, they are not central to the purpose of the claimed invention. As opposed to Welcome Real-Time SA (supra), where the method involved smart cards storing traders' loyalty programs, and monitoring customer entitlements through a behaviour file in the cards relating to the behaviour (for example, spending history) of card holders towards the traders, the present method lacks the requisite physical effect. I consider that the claimed invention simply monopolises a scheme where the internet and the computer are used for mere convenience for operating the scheme.
In my view, the invention defined in claim 1 falls short of having the requisite physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation. Therefore I conclude that the claim lacks a manner of manufacture. Claims 2-4 also fall short of defining a manner of manufacture for the same reasons.
Claim 5 substantially defines a mere system variant for operating the method of claim 1. Consequently, I conclude that claim 5 is also not for a manner of manufacture within the meaning of subsection 18(1)(a) the Patents Act 1990.
Conclusion
All the claims as presently drafted are novel. None of the present claims is considered to be a manner of manufacture.
Notwithstanding that the claims as currently constituted do not define a manner of manufacture, the description of the opposed patent contemplates generating the questions automatically based upon the identification of particular keywords within the assessable criteria, and upon additional contextual information obtained from Evidence Guides, Range Statements and Employability Skills associated with Qualifications and Units of Competency without requiring human intervention. I consider that if the present claims were to be amended to include the above feature, the claimed method would result in a substantive transformation of data not amounting to a mere cut and paste, and would thus satisfy the requirements of a manner of manufacture. However, it is noteworthy here that the specification at present lacks an enabling disclosure in respect of the above feature. Consequently, if the patentee were to amend the claims, a possible ground of lack of sufficiency under section 40(2)(a) of the Patents Act 1990 may be applicable at the final determination.
As I consider that there is patentable subject matter within the specification, I allow the patentee 60 days from the date of this decision to propose suitable amendments. If no amendments are proposed, I will revoke the patent.
Costs
Dr Summerfield submitted that the patentee seeks costs above the scale set out in Schedule 8 of the Patent Regulation 1991 because the opposition was misconceived from the outset and the opponent has failed to make out a case of lack of novelty based on the evidence, relying merely on the unsubstantiated conclusions of the witnesses. He stated that there should be some disincentive in engaging in such a behaviour.
Ordinarily in proceedings such as these, costs follow the event. Following this principle, the patentee is not entitled to an award of costs as they have lost the case. On the other hand, the opposition has been successful but not on the ground raised by the opponent. Therefore, the opponent should not be rewarded by an award of costs.
Consequently, I make no award of costs.
Dr S. K. Aggarwal
Delegate of the Commissioner of Patents
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