OneMap Pty Ltd
[2021] APO 37
•27 September 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
OneMap Pty Ltd [2021] APO 37
Patent Application: 2015330969
Title:Geographical information system and method for searching land parcels
Patent Applicant: OneMap Pty Ltd
Delegate: Dr V. Z. Kolev
Decision Date: 27 September 2021
Hearing Date: Written submissions filed on 30 March 2020
Catchwords: PATENTS – sections 45 and 49 – hearing with respect to examiner’s objection – manner of manufacture – system and method for generating real-time adjustable web map – providing business information to property developers searching for suitable sites to develop – pre-processing and storing data – dividing data for more efficient searching – the claimed invention is not a manner of manufacture – no patentable subject matter described in the specification – application refused
Representation: Patent attorney for the applicant: Davies Collison Cave Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015330969
Title:Geographical information system and method for searching land parcels
Patent Applicant: OneMap Pty Ltd
Date of Decision: 27 September 2021
DECISION
The invention claimed in any one of the claims, as proposed to be amended, is not a manner of manufacture. Furthermore, based on the matter described in the body of the specification, I am of the opinion that no allowable amendment could result in claiming a patentable invention.
I refuse the application.
REASONS FOR DECISION
Throughout this decision, unless explicitly stated otherwise, any reference to the Act, or to a specific section or subsection, refers to the Patents Act 1990, and any reference to the Regulations, or to a specific regulation or subregulation, refers to the Patents Regulations 1991. In addition, any reference to the Commissioner refers to the Commissioner of Patents as per the Act.
SUMMARY OF THE REASONS
Despite the Expert’s statements, on proper consideration, the evidence on file does not establish the existence of prior art technical limitations that have been overcome by the instant invention. As a matter of substance, the invention can be characterised as a scheme for providing business intelligence to a particular group of users, not dissimilar to the case in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass), where the Full Court decided that the invention was not for a manner of manufacture. The instant scheme operates as a dedicated interactive web map, specifically designed to cater for the needs of the particular group of users, and routinely implemented using generic computer technology.
The utilisation of some suitable design solutions gave rise to a well-designed dedicated web map that should perform better than a hypothetical poorly designed dedicated web map with identical functionality. The instant web map also appears to be performing better than some existing more universally applicable web maps that could potentially be used as an alternative for the purpose of gathering the same or similar business intelligence. However, this apparently superior performance of the instant web map is attributable solely to the design of the scheme and not to any technological innovation worthy of patent protection.
BACKGROUND
The matter relates to patent application 2015330969 (the Application) in the name of OneMap Pty Ltd (the Applicant). The Application was filed on 08 October 2015 as international application PCT/AU2015/050612, later published as WO 2016/054694. The earliest claimed priority date is 10 October 2014.
The request for examination was filed on 18 May 2018, and the Application was subject to four examination reports as detailed below.
Examination report No. 1 was issued on 23 April 2019. The report contained objections with respect to manner of manufacture, lack of unity, and novelty. A response to that report was filed on 05 July 2019, together with a set of proposed amendments to the specification of the Application (the Specification). In this first statement of proposed amendments, the Applicant proposed, under item 1, amendments to the description and, under item 2, amended claims.
Examination report No. 2 was issued on 16 July 2019. In the report, the Examiner maintained the objection with respect to manner of manufacture. No other objections were raised or maintained. In addition, in view of the prosecution history of several related innovation patents, the Applicant was invited to consider requesting a hearing and was informed that:
“If a response overcoming the objections are [sic] not filed within two months of the date of this report, the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If intending to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above.”
A response to that report was filed on 09 August 2019. No amendment was proposed at that time.
On 30 August 2019, the Applicant’s representative discussed the case over the telephone with the Supervising Examiner responsible for the examination section.
Examination report No. 3 was issued on 12 September 2019. In the report, the Examiner again maintained the sole objection with respect to manner of manufacture. As per the Commissioner’s practice, before being issued, the report was reviewed by the Examiner’s supervisor. In addition, in the report the Applicant was again invited to consider requesting a hearing. A response to that report was filed on 23 October 2019. No amendment was proposed at that time.
10. Examination report No. 4 (the Last Report) was issued on 14 November 2019. In the report, the Examiner again maintained the sole outstanding objection with respect to manner of manufacture. As per the Commissioner’s practice, before being issued, the report was reviewed by the Supervising Examiner responsible for the examination section. In addition, the report contained the following text (original emphasis):
“My report below includes objections that are equivalent to objections raised in the examination of the related parent [sic] application which is directed to the same or essentially the same subject matter. As there has now been several adverse reports in relation to this subject matter, the application will be referred to a Hearing Officer to consider whether to accept or refuse the application under s49 or to direct amendment under s107. If you wish to be heard on this matter, you have 1 month from the date of this report to request a hearing. Fee item 230 applies.
If you request a hearing you will be contacted regarding the relevant deadlines in due course. Hearings in relation to examination objections are normally by way of written submissions. If you disagree with the Hearing Officer’s decision you may appeal the decision to the Federal Court of Australia.
…
The Applicant has been given an opportunity to request a hearing for the past two reports. It is noted that this is the 10th report issued on essentially the same set of claims (when counting the reports issued on this application and family applications). Further, all reports have maintained that the claims lack a manner of manufacture. As such, this application will now be passed to a Hearing Officer to consider whether to accept or refuse the application.”
11. On 21 November 2019, the Applicant’s representative discussed the case, and in particular the Last Report, with the Examiner over the telephone. On 22 November 2019, the Applicant’s representative further discussed the case over the telephone with the Supervising Examiner responsible for the examination section.
12. On 05 December 2019, a letter was sent reminding the Applicant that they had one month from the date of the Last Report to request a hearing. A copy of the Last Report was also attached to the letter. On 09 December 2019, the Applicant filed a request for extension of time in which to request a hearing, and an extension until 24 December 2019 was provided on 10 December 2019. On 24 December 2019, the Applicant requested a hearing by way of written submissions.
SUBMISSIONS AND EVIDENCE
13. On 30 March 2020, the Applicant filed a document titled “Hearing Submissions” (the Applicant’s Submissions or AS), together with a declaration by Mr Michael Cushen dated 17 March 2020 (Cushen), accompanied by exhibits MC-1 to MC-13.
14. At the same time, the Applicant filed a second statement of proposed amendments, in which they proposed, under item 3, amendments to the description and, under item 4, amended claims.
APPLICABLE LAW
15. 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.
16. According to the Applicant, this means that I must accept the Application if I am satisfied, on the balance of probabilities, that the application complies with the Act (AS at [11]). While this is correct, s 49 also provides that, if I am not so satisfied, I may refuse the Application. In such a situation, the extended period for gaining acceptance provided under reg 13.4(1)(g) and referred to by the Applicant (AS at [12]) will make no difference if the Application is refused. However, I consider that it is only appropriate to refuse the Application if I am satisfied that providing the Applicant with an opportunity to overcome any negative finding(s) would serve no useful purpose; in other words, if I consider that any potential negative findings are fatal to the Application.
The law on manner of manufacture
17. The relevant parts of s 18 stipulate:
“(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
…
(2) Human beings, and the biological processes for their generation, are not patentable inventions.”
18. A number of Court decisions have discussed and determined whether the particular invention subject to each decision “is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”. These decisions constitute a significant body of case law that the Commissioner must follow.
19. It appears to me that the main disagreements between the Applicant and the Examiner are not related to the law on manner of manufacture itself, but rather to the application of the law to the facts of the case. Therefore, I do not consider it necessary to provide a comprehensive review of the case law and I will only point to Court decisions which I consider pertinent to the instant considerations.
20. National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 (NRDC) is the original authority on the issue, establishing, inter alia, the general approach for deciding the question of manner of manufacture at [14] (at p 269):
“The right question is: ‘Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?’”
21. D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) is the most recent High Court decision on manner of manufacture. However, I note that both NRDC and Myriad are not related to inventions implemented on computing devices, hence they do not discuss some of the more specific issues associated with such inventions. In contrast, the decisions of the Full Court of the Federal Court in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (Research Affiliates) and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL Central) were made with respect to business methods implemented on computing devices. In particular, in RPL Central the Full Court, having considered in some detail the decisions in Research Affiliates and Myriad, developed an approach to determining the issue of manner of manufacture for inventions implemented using computers. This approach of RPL Central was later approved in Encompass, which was a decision by an enlarged bench (consisting of five Judges) of the Full Court. The approach was also relied on in another recent Full Court decision, Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt). Both cases in Encompass and Rokt also involved inventions implemented on computers.
22. For the purpose of deciding on manner of manufacture, I consider it helpful to provide a brief overview of some of the main guiding principles that could be extracted from the above Court decisions. Below, I will present those principles, in italic, as separate paragraphs supported by relevant quotations from the decisions. Where the breadth of some quotations makes them relevant to more than one principle, for brevity, I will not repeat those quotations in different paragraphs (underlining added in all quotations).
23. A determination on manner of manufacture must be done on a case by case basis, having regard to the substance of the invention not merely the form of the claims; there are no strict rules or a precise formula to be applied mechanistically:
“The purpose of s. 6, it must be remembered, was to allow the use of the prerogative to encourage national development in a field which already, in 1623, was seen to be excitingly unpredictable. To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound. It would be unsound to the point of folly to attempt to do so now, when science has made such advances that the concrete applications of the notion which were familiar in 1623 can be seen to provide only the more obvious, not to say the more primitive, illustrations of the broad sweep of the concept.” (NRDC at [15]; at p 271)
“This Court in NRDCdid 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.” (Myriad at [23])
“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.” (Myriad at [144], reasons by Gageler and Nettle JJ)
“The approach to be taken to deciding whether a claimed method or product is properly the subject of letters patent must be flexible and must allow for new technologies presently unknown … There is no formula to be mechanically applied …
… in examining whether a claimed invention is properly the subject of letters patent, it is necessary to look not only at the integers of that claimed invention but also at the substance of that invention.” (Research Affiliates at [116]- [117])
“The determination … is made not by some mechanistic application of the criterion of artificiality or physical effect, but by an understanding of the claimed invention itself. The invention is to be understood as a matter of substance and not merely as a matter of form.” (Research Affiliates at [106])
24. The characterisation as “an artificially created state of affairs of economic significance” is useful, but not ultimately determinative for manner of manufacture; to be patentable, a process must belong to the useful arts:
“The point is 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 … that its value to the country is in the field of economic endeavour.” (NRDC at [22]; at p 275)
“… the view which we think is correct in the present case is that the method the subject of the relevant claims has as its end result an artificial effect falling squarely within the true concept of what must be produced by a process if it is to be held patentable … 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, indeed to the lay mind a sensational 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 … It achieves a separate result, and the result possesses its own economic utility consisting in an important improvement in the conditions in which the crop is to grow, whereby it is afforded a better opportunity to flourish and yield a good harvest.” (NRDC at [25]; at p 277)
“If a process is to be patentable, it must offer some advantage which is material, in the sense that the process belongs to a useful art. The characterisation of patentability by reference only to the description in NRDC of a product which consists of an artificially created state of affairs of economic significance was part of the High Court’s reasoning but did not represent a sufficient or exhaustive statement of the circumstances in which a claimed invention is patentable.” (Research Affiliates at [101])
“In this context, their Honours emphasised [in Myriad] (at [20]) that, while satisfaction of an ‘artificially created state of affairs of economic significance’ as stated in NRDC may ‘suffice for a large number of cases in which there are no countervailing considerations’, this terminology is not to be treated as a formula exhaustive of the concept of manner of manufacture, or a formula which alone captures the breadth of the ideas to which effect must be given. Similarly, Gageler and Nettle JJ noted (at [125]) that the holding in NRDCdoes not mean that an ‘artificial state of affairs’ and ‘economic utility’ are the only relevant considerations in this context. However, the majority and Gageler and Nettle JJ acknowledged the usefulness of such characterisation in appropriate circumstances.” (RPL Central at [116])
25. In deciding on manner of manufacture, it is important to identify where the inventor’s ingenuity lies:
“It is a question of understanding what has been the work of, the output of, and the result of, human ingenuity, and to apply the principles that have been developed and explained so well in NRDC.” (Research Affiliates at [116])
“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.” (RPL Central at [112])
26. Technological innovations are patentable, whereas business innovations are not; a business method implemented on computing devices could be patentable if it involves ingenuity in the computer implementation:
“Relevantly, the Full Court in Research Affiliates said (at [94]) that the distinction to be drawn was between the employment of an abstract idea or law of nature and the idea or law itself and that there is a distinction between a technological innovation which is patentable and a business innovation which is not. Their Honours repeated an observation from Grant (at [29]) ‘[a] product of a method is something in which a new and useful effect may be observed. For claimed computer programs, the courts looked to the application of the program to produce a practical and useful result, so that more than “intellectual information” was involved.’ A technological innovation is patentable; a business innovation is not, although a business method may be the subject of letters patent.” (RPL Central at [100])
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions.” (RPL Central at [96])
“RPL Central does not claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Accordingly, the ingenuity of the inventors must be in the steps of the method itself. The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to implement a business method …
The problem may be one of confronting the ‘maze’ of available information concerning the RPL of different Units of Competency in different institutions, but the solution to that problem, to be patentable, must involve more than the utilisation of the well-known search and processing functions of a computer, for example an invention in the way in which the computer is utilised.” (RPL Central at [110]-[111])
“There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation. Rather, it is apparent that the scheme is merely implemented in a computer and a standard computer at that. It is no part of the claimed method that there is an improvement in what might broadly be called ‘computer technology’.” (Research Affiliates at [118])
“In Research Affiliates, looking at the claimed method as a matter of substance, the Full Court concluded that, in that case, the computer was merely the means by which the analyst accessed data to generate an index, that being the work of the analyst rather than a technical generation by the computer. There was no suggestion of the utilisation of an unusual technical effect. The inventors made changes to the computer program to cause the program to gather and process data and perform data manipulations and calculations, including macros to manipulate and refine data. Such use of algorithms was not ‘foreign’ to the normal use of computers.” (RPL Central at [102])
“To reiterate some of the matters discussed in Research Affiliates:
·It is necessary to ascertain whether the contribution to the claimed invention is technical in nature. In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2007] 1 All ER 225, the subject matter was an interactive system whereby questions were asked, the answers incorporated in a draft and, depending on some particular answers, further questions were asked. It was held that, apart from the fact of running a computer program, there was nothing technical about the contribution and the method was for the business of advising upon and creating appropriate company documents.
·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 Alice Corporation, the method was for exchanging financial obligations in which the computer was used to create records, track multiple transactions and issue simultaneous instructions. The majority in the Supreme Court of the United States concluded that the use of the computer added nothing to the substance of the abstract idea of reducing settlement risk in exchanging financial obligations.” (RPL Central at [99])
27. Whether a method can or cannot be practically implemented without a computer is not determinative for manner of manufacture:
“Simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method. Is the fact that the scheme cannot practically be implemented without a computer, that is, that the computer is integral to the working of the scheme, sufficient to make it patentable? The answer is not straightforward because this is not a case where the computer simply processes the information entered by the user, for example by using an algorithm, or retrieves information from the Internet in response to a user’s question.” (RPL Central at [107])
“Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
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.” (RPL Central at [97]-[98])
“It is stated in the specification, and was accepted by the primary Judge, that the method could not be carried out without the use of a computer. This alone cannot render the claimed invention patentable if it involves simply the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself. A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. This necessitates some ingenuity in the way in which the computer is utilised (Research Affiliates).” (RPL Central at [104])
28. The case law on manner of manufacture was extensively discussed in prior decisions on the matter by the Australian Patent Office, including in Aristocrat Technologies Australia Pty Limited [2016] APO 49 (Aristocrat), where the Delegate provided an indication as to the matters relevant to a determination on manner of manufacture for inventions implemented on a computer:
“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.” (underlining added)
29. It is clear from the Delegate’s wording that the above list is not a ‘check-list’ to determine whether a particular claimed invention is a manner of manufacture. Instead, the list includes, in a non-exhaustive manner, relevant considerations or ‘touch stones’ helpful in the decision process. This was also noted in Todd Martin [2017] APO 33:
“47. With this list of points, the delegate in the Aristocrat case was not intending to indicate a list of conditions, for computer-implemented cases, to be met to define a manner of manufacture. That is evident from the delegate’s statement that the list was not intended to be exhaustive. Moreover, it would appear improper to find there was a manner of manufacture simply on the basis that one or more points could be answered in favour. In the present case for example, it may be that at least the fifth dot-point, regarding whether the application of the method produces a practical and useful result, is satisfied. On the other hand, that consideration on its own would be insufficient in the present case. Conversely it would also appear improper to find there was no manner of manufacture simply on the basis that one or more points could not be answered favourably. Rather than these points being seen as conditions to be met, they should be seen as relevant matters to consider, as the delegate stated at [35]. The substance and contribution of the claimed invention in each case should be considered on its merits overall and various points under the law would appear to have varying degrees of relevance depending on the case.”
30. As a further observation, it appears to me that the Court decisions on manner of manufacture for computer-implemented inventions do not always contain the full list of the above relevant considerations, which would appear to suggest that, depending on the circumstances of the case, not all of the relevant matters included in the list need to be considered in order to reach a conclusion.
THE SPECIFICATION
The proposed amendments
31. It would appear that amendment item 1 affected only the consistory statements to reflect the proposed amendments (under item 2) to the claims. Those amendments to the claims reduced the number of independent claims as well as the total number of claims. The remaining independent claims were also amended in a way that appears to be limiting the defined invention to resemble more closely what is described in the body of the Specification.
32. Under proposed amendment item 3, together with aligning the consistory statements with the newly proposed amendments (under item 4) to the claims, the Applicant proposed to alter the technical field from “geographical information systems and methods for searching land parcels, e.g., to identify appropriate land parcels for property development” to “geographical information systems and methods for online mapping or Internet-based mapping” (at [01]). Some further amendments were also proposed to emphasise the problems with “pre-existing online mapping technology or Internet-based mapping” related to the “abundance of data”, and leading to the “processing required tak[ing] too long”, especially “where the system must accommodate the processing demands of using raw street network data representing coordinates of a street network”, which makes it “not feasible for convenient and/or flexible use in some situations, e.g., use by property developers” (at [04]). In addition, the proposed amendment results in promoting certain features from the dependent claims into the independent claims as well as further reducing the total number of claims. Some minor clarifying alterations also appear to have been proposed.
33. While it may be argued that the proposed amendments do not introduce new matter (see AS at [3]), it may also be debatable whether the problems with the “pre-existing online mapping technology or Internet-based mapping”, so clearly articulated in paragraph [04] as proposed to be amended (quoted below), is information that the skilled addressee would have ascertained by reading the specification as originally filed. However, in this decision I do not need to give a definitive answer to that question and, for the benefit of the Applicant, I will consider the Specification as proposed to be amended up to and including item 4. As it will become apparent later, any potential non-compliance with s 102 that may or may not exist would not change the outcome of this decision.
The invention as described
Overview
34. As I already mentioned, the technical field as now stated at [01], “geographical information systems and methods for online mapping or Internet-based mapping”, is slightly broader than the original. The section “Background” explains that:
“[02] Traditionally, in order to identify appropriate sites for potential property development, property developers have identified sites by visual inspection of the sites (e.g., by visiting sites), and inspection of maps (e.g., commercially available street maps). Once potential sites were identified, the property developers would then need to request relevant records from governments and authorities (e.g., planning agencies), to determine information of interest, e.g., recent sale prices, land sizes, zoning requirements, etc.
[03] Although it has recently become possible to view maps on real-estate websites that provide additional property information on the maps (e.g., recent prices, number of bathrooms, etc.), such maps are designed for individual property purchases, and thus are not sufficiently fast, efficient, flexible and relevant for some property developers.
[04] Currently, to gain a better understanding of available properties across large areas, property developers may engage professional urban planning consultants to prepare reports using professional analysis of large data sets, using complicated geographical information system (GIS) tools, based on predefined criteria (e.g., a minimum lot size) from the developers. However one problem with pre-existing online mapping technology or Internet-based mapping is that due to the abundance of data, the processing required takes too long. This is particularly apparent where the system must accommodate the processing demands of using raw street network data representing coordinates of a street network. This long processing time is not feasible for convenient and/or flexible use in some situations, e.g., use by property developers.” (underlining added)
35. I note that, despite the proposed under item 3 amendment, it is abundantly clear that the above background describes the problems faced by property developers in their attempts to identify suitable potential sites for development.
36. The next section, “Summary”, provides consistory statements corresponding to the independent claims as well as to the last claim in the set defining a computer-readable storage with machine-readable instructions for controlling computer processors to perform the previously defined methods.
37. The detailed description of the invention is presented with reference to the drawings consisting of Figure 1 to Figure 9. A concise but informative overview is provided in the beginning:
“[27] Described herein is a system and a method that can enable a user (e.g., a property developer) to search for land parcels (also referred to as ‘properties’) based on relevant selection criteria, selected by the user, and to display the search results comprising the selected land parcels on a map in near real time, all with a user-friendly user interface (UI) accessible in a web browser over the internet … The user can control and modify the selection criteria with the user interface, and the modified selection criteria can be used to generate a new set of selected land parcels for display in near real time.” (underlining and italic added, except for “e.g.” where italic is original)
38. With respect to the possible relevant selection criteria, these:
“[28] … can include distance values representing on-street distances between the land parcels and predefined locations of publicly accessible destinations (which may be facilities). The distance from the land parcel may be determined based on a coordinate in the land parcel, which may be a centroid, or a street-frontage point. The pre-defined locations may include public transport stops, or public destination access points, defined by coordinates. The distance values may be referred to as ‘proximities’, ‘proximity values’ or ‘accessibility values’. The distance values can be valuable in determining how quickly a person can travel (by foot, bike and/or car) from the land parcel to the destination, and/or back.” (underlining added)
39. This functionality is achieved via:
“[27] … pre-process[ing] information from a plurality of data sources to provide processed data representing the land parcels … in association with values of the potential search criteria for each land parcel, on an internet server system. On receiving user input from an internet client system, the system and method can rapidly select or filter the relevant land parcels by comparing the search criteria values to the values in the processed data.” (underlining and italic added)
40. Relevantly:
“[30] … The processed data may include, for each processed land parcel, information relating to accessibility distances, planning controls, land features, and at least one pre-calculated weighted accessibility score.”
41. The benefits of the invention appear to be identified as:
“[31] … the user may rapidly filter out irrelevant land parcels from a very large dataset, which may represent an entire municipality or local government area, and quickly adjust the values of the search criteria to find potential development sites and to view them on a map in near real time over the internet …
[32] Compared to real-estate websites, for example, the system and method is not limited to properties that are advertised for sale, and allows for filtering to immediately select and display only relevant properties, based on different selectable criteria, on an enhanced map (e.g., colour-coded, and/or not displaying irrelevant properties). Furthermore, the criteria can be adjusted quickly by the user, and the enhanced map updated in near real time, allowing the user to gain a thorough understanding of the availability of sites having various levels of desirability (and thus which potential properties to consider for development).” (underlining added)
The user interface
42. Figures 8A, 8B, and 8C represent “wire-frame diagrams of a user interface of the system” (see [25]). For the reasons of clarity and readability associated with the scale of reproduction, slightly cropped versions of the drawings are reproduced below, omitting the reference numerals 800 (referring to the whole diagram of the interface) and 802 (referring to the map region of the display).
43. The user interface:
“[81] … includes a map display 802 [which is presented in a landscape orientation and appears as the largest rectangular region] showing the land parcels as polygons on map tiles, and relevant map features, including open spaces, public transport stops, public facilities, and roads”.
44. The user interface also “includes a plurality of user controls 804 [see Figure 8A] that receive input from a user” (at [82]). As further explained, the user controls are divided into several functional categories and are used to set the selection criteria and (where necessary) their associated values:
“[82] … the controls 804 include location controls that can receive a street address (as text), a suburb identifier (as text), or a local Government authority (as text). These values are used to generate data queries to select only land parcels … with values corresponding to these control values …
[83] The controls 804 include accessibility controls, which can define a range of values, which may be based on a lower numerical limit and an upper numerical limit, for the following: the access rating, the train distance, the tram distance, the bus distance, the activity centre distance, school distance, the business district distance and the open space distance; lot size; the average land slope; and the allowable building height. These numerical or value-based controls can include graphical sliders showing a range of values represented by a line, with markers that can be moved … to define the lower and upper limit for the values (and thus a range of acceptable values for the data queries). The controls 804 can include binary-input controls, including a laneway access control that can be selected to select only land parcels with laneway access. Similarly, a flood control can be selected to exclude flood prone land parcels, a heritage control can be selected to exclude heritage overlay land parcels, and road zone controls can be selected to include land parcels abutting a selected road zone (e.g., road zone 1 or road zone 2).
…
[85] The controls 804 associated with accessibility, lot size, land use and planning may be referred to as the ‘filtering controls’ because these controls generate values used to filter the land parcels by the data query. The filtering controls are used to generate a plurality of criteria that are applied simultaneously in the data queries, thus the filtered land parcels filter all of the criteria defined by the filtering controls ...
[86] The controls 804 may include layer controls (or ‘layering controls’), which control the user interface … to display layers on top of the land parcels in a map display 802, including a planning control that can display the areas or polygons of the different planning layers. The layers controls generate the layer queries.
[87] The controls 804 include colour controls that allow the land parcels to be coloured according to a selected attribute. The selectable attributes include an access rating, a distance from train stop, a distance from tram stop, a distance from bus stop, a distance from shops, a distance from schools, a distance from the central business district, and etc., as described hereinbefore. The colours applied to the land parcels are generated based on the relevant value of each land parcel for that attribute … and a colour map associating the different values with different colours or colour temperatures …” (underlining and italic added, except for “e.g.” and “etc.” where italic is original)
45. In addition, the user interface:
“[92] … may include a multi-attribute control that generates filter queries with alternatives for different land-parcel properties. In contrast to the other filter controls, this [sic] for land parcels to be selected that fulfil only one of a plurality of requirements (i.e., ‘OR’ filtering, rather than ‘AND’ filtering). One such control is the Transport Present control that provides a plurality of preset criteria, including: (1) nearest train stop, or nearest tram stop, less than or equal to 200 m; (2) nearest train stop, or nearest tram stop, less than or equal to 400 m; (3) nearest train stop less than or equal to 800 m, or nearest tram stop less than or equal to 400 m; (4) nearest train stop less than or equal to 800 m, or nearest tram stop or smart-bus stop less than or equal to 400 m; (5) nearest train stop less than or equal to 800 m, or nearest tram stop, smart-bus stop or sub stop less than or equal to 400 m; and (6) nearest train stop less than or equal to 1.2 km, or nearest tram stop or smart-bus stop less than or equal to 800 m, or nearest bus stop less than or equal to 400 m …” (underlining and italic added, except for “i.e.” where italic is original)
46. Figures 8A and 8B illustrate the difference in the land parcels displayed on the map, being the results from corresponding queries, due to the difference in the values of the selection criteria in these queries as set by the controls. As it can be seen from the two sliders labelled “TRAIN” and “TRAM” in the “ACCESSIBILITY” category, both figures display on the map only the land parcels “with a minimum value (0 metres) [and] a maximum value of the distance to nearest train [stop] (800 metres)” (at [84]); however, in Figure 8B the displayed land parcels are additionally filtered such that they are also “with a minimum value (0 metres) and a maximum value (200 metres) to the nearest tram stop” (at [84]), thus the smaller number of displayed land parcels.
47. Figure 8C illustrates an additional functionality whereby:
“[88] A user can … select an information window control for each displayed land parcel (or property), e.g., by selecting the land parcel polygon with a mouse cursor or touch screen … The user interface … can thus display the values and attributes of each of the selected land parcels … and this information may be displayed in a pop-out display 806 that is linked to the selected land parcel 808 …”
The implementation using computer technology
48. The system implementation is described mainly with reference to Figures 1 and 2, where “Figure 1 is a block diagram of a system” (see [16]) and “Figure 2 is a block diagram of computational modules of the system” (see [17]). While Figure 1 is reproduced below in full, for the same reasons as explained above, a slightly cropped version of Figure 2 is reproduced, omitting the reference numeral 200, which refers to the whole drawing.
49. The reference numerals on Figure 1 refer to the following components (see [33]-[39]): 100 – a system for searching land parcels; 104 – accessible databases that store published raw GIS data; 102 – a pre-processing computer system that accesses the published raw GIS data in the accessible databases, and processes that data to generate processed GIS data and imported GIS data; 106 – a GIS server that communicates with the pre-processing computer system to receive the processed GIS data and the imported GIS data, and stores the received data; 108 – an application server (e.g. an Internet cloud-based web server platform, which may be provided by a commercial provider) that is in communication with the GIS server (e.g. using an Internet protocol) to send data queries and receive the corresponding response data; 112 – a data network (e.g. the Internet); 110 – one or more user devices (i.e. smartphones, tablet computers, desktop computers, laptop computers) that communicate with the application server through the data network, each device providing a client (e.g. in the form of a web browser) for the application server, the client allowing user authentication with quasi-unique user credentials (e.g. a user name and password) and providing the user interface; 114 – a map provider (e.g. the Google Maps server) that serves map data to the user devices; 116 – public content delivery networks (CDNs, e.g. Amazon’s CloudFront) that may be included in the system to serve publicly available data libraries to the user devices; however, instead of, or in addition to, using the CDN, “the application server 108 can download data representing some or all of the required libraries, compress the downloaded data, compile the downloaded data offline, and deliver this pre-compiled data to the client” (at [39]).
50. In use:
“[38] The user devices 110 send the data queries [containing the search criteria and associated values as generated by the users through interacting with the user interface] to the application server 108, which in turn generates corresponding data queries for the GIS server 106.”
After receiving a data query, “the GIS server [is] configured … to access the proximity data [stored by the GIS server], and to generate the response data” to be sent to the application server, wherein “the application server 108 is configured to … send the response data to the client” (at [36]).
51. In addition:
“[39] … The map provider 114 and the CDNs 116 communicate with the user devices 110 using standard internet protocols to provide the maps and libraries as required by the client.”
52. In this way, the data queries, generated by the user through the user interface controls, result in changes to the user interface display as, e.g., illustrated on Figures 8A, 8B, and 8C.
53. On the basis of my earlier discussions of the described invention, the block diagram of Figure 2 appears somewhat self-explanatory, however some further details are provided in the corresponding part of the description. The reference numerals, associated with items that are not themselves labelled, refer to (see [48]): 212 – the processed GIS data in the form of land-parcels data representing the land-parcels and their respective processed attributes; 214 – the layers data representing the separate layers (based on portions of the imported GIS data).
54. The input module of the pre-processing computer system is configured to access raw GIS data from various sources (accessible databases) and upload the raw GIS data. To do that:
“[40] … The input module 202 includes a plurality of data connectors or input tools that can access, and authenticate (if necessary) with a plurality of data sources that contain information defining the publicly accessible destinations. The data connectors receive the raw data from various sources. The data connectors may allow automatic downloading of the raw data in existing formats. Alternatively, the raw data may be downloaded from the sources using existing website interfaces, and stored in existing formats …”
55. Importantly:
“[41] The raw data include raw land-parcel data, including:
a. land parcel map polygons representing geospatial coordinates (or ‘geometry’) of land parcels (e.g., Vicmap data source for Victoria, Australia);
b. real-estate market data representing identifiers and values or codes of properties for sale, and sold properties; and
c. street address data representing geospatial coordinates of street address of land parcels.
[42] The raw data include raw region data representing regions or areas (including zones or municipal areas), defined by coordinates, polylines, or polygons, and one or more features of attributes of each area (including codes or values):
a. elevation data representing values of elevations of areas defined by geospatial coordinates, and details of contours;
b. topography data, including slope data representing slope analysis plans, including the steepnesses of the respective defined areas (regions);
c. flood data representing values or codes associated with potential flooding effects in respective defined areas (regions);
d. market region data representing identifiers and values of areas and real-estate prices or values in those areas (regions);
e. planning controls data (also referred to as ‘government planning data’) representing planning control codes and descriptions associated with areas (regions) defined by geospatial coordinates (which may include polygons defining the geometry, and attributes represented by characters, following standard protocols within each administrative area, such as a State), including planning zones, planning overlays, planning strategy zones, planning decision zones, and heritage overlays;
f. government boundaries data representing government and administrative boundaries, including state boundaries, council boundaries, and suburb boundaries; and
g. real estate government data representing statistical market prices (values) for the areas (regions), e.g., median suburb house price, median suburb apartment price, from the Australian Bureau of Statistics.
[43] The raw data include raw publicly accessible destination data representing specific locations of the public destinations or facilities, including:
a. tram stop data representing geospatial coordinates of tram stops;
b. train stop data representing geospatial coordinates of train stops;
c. bus stop data representing geospatial coordinates of bus stops;
d. retail data representing geospatial coordinates of shops and shopping precincts;
e. open space data representing geospatial coordinates of open spaces;
f. educational facility data representing geospatial coordinates of schools, colleges, universities, etc.;
g. business district data representing geospatial coordinates of business districts; and
h. foreshore data representing water fronts (e.g., beaches, bays, river banks, etc.).
[44] The raw data include raw street network data representing coordinates of a street network, including streets and laneways (including geometry in the form of lines and polylines), and street attributes in the form of integers representing different street classes (e.g., freeway, highway, major road).” (italic and bold added, except for “e.g.” and “etc.” where italic is original)
56. It is important to note that, in essence, the above long list of different types of raw GIS data appears to contain any piece of information that is publicly available and could be important to a property developer looking for suitable land parcels to develop.
57. Next, the input module 202:
“[45] … combines the accessed [raw] GIS data into a raw GIS database 204 in the pre-processing computer system 102. The raw GIS data may be stored in a format suitable for the pre-processing module 206, and this may be a commercially available table format, e.g., the Maplnfo table (TAB) format.
[46] … assigns quasi-unique identifiers (IDs) to the land parcels, areas, and destinations in the raw GIS data … The IDs can be characters or codes …
[47] … imports and processes some of the raw GIS data to generate the imported GIS data ... The imported data can represent look-up tables of schools (including school names associated with school IDs), look-up tables of supermarkets (including supermarket names associated with supermarket locations), geometries of zones in the whole region, and geometries of overlays in the whole region.” (underlining added)
58. Then, the pre-processing module 206:
“[48] … processes the raw GIS data in the raw GIS database 204 to generate processed GIS data … [and] stores the processed GIS data in a processed GIS database 208 …”
59. Notably, the pre-processing module 206 includes a routing submodule 302 (not shown on Figure 2), wherein:
“[59] … The routing submodule 302 calculates a distance from each land parcel to each of the closest one of each type of the destinations following the street network (or directly for the foreshore), and embeds these distances into the data record for each land parcel.” (underlining added)
60. I find it important that “[t]he routing submodule 302 may be implemented using commercially available software with a commercially available transport routing plugin” (at [59], underlining added), and that some of the pre-processing “may require one or more manual sub-steps, depending on the destination type” (at [63], underlining added).
61. The output module 210:
“[48] … generates output data for the GIS server 106 into formats compatible with the GIS server 106 (which may be the shapefiles): the pre-processing module 206 may generate geospatial data in the form of Maplnfo Tables or Maplnfo TAB files. The generated geospatial data may be converted by the output module 210 into output data (including the ESRI shapefiles) for uploading to the GIS server 106 using a data management interface of the GIS server 106. Alternatively, the generated geospatial data may be the output data, without any need for format conversion: thus, if the GIS server 106 can receive and process the generated geospatial data without conversion, the system 100 may not need the output module 210 for additional format conversion.” (underlining added)
62. Then:
“[48] … The output data are transmitted to the GIS server 106 from the pre-processing computer system 102, and are stored in a GIS server database 218. The output data … and thus the stored GIS data, include the processed GIS data in the form of land-parcels data 212, representing the land-parcels and their respective processed attributes; and the layers data 214 representing the separate layers (based on portions of the imported GIS data).”
63. As further explained:
“[49] The GIS server 106 includes the GIS server module 220 that provides the application program interface (API) for the GIS server 106, and thus receives the data queries and respective access keys from the application server 108, and returns the query results by applying the queries to the stored GIS data in the GIS server database 218. The GIS server 106 generates map tiles from the stored GIS data.”
64. Importantly:
“[49] … If the land-parcels data are divided into a plurality of datasets corresponding to predefined sub-regions of the overall region, these regional datasets are stored separately in the stored GIS data (which may include using separate data structure instances, including tables) for each sub-region. The data queries include sub-region identifiers (Region Geometry IDs) corresponding to the sub-regions so that the GIS server 106 can select one of the regional datasets for each data query (based on the Region ID), and apply the query to only that dataset. This can reduce the time to process the query, particularly for large regions. For frequent data queries (including when the user device 110 zooms in, or out, or pans the view), processing the stored data for only one of the sub-regions can substantively improve performance (e.g., processing 600,000 land parcels rather than 3 million).” (underlining and bold added)
65. In other words, in the above scenario, the GIS server will search for suitable land parcels only in the dataset(s) corresponding to one (or several) of the predefined sub-regions as selected by the user, and will not waste processing resources by searching in the datasets corresponding to other, not selected, sub-regions. As explained later with reference to Figure 9, the selection of the sub-region(s) of interest is done by the client, installed on the user device, on the basis of the boundaries of the area displayed on the map in the user interface. Hence, to the extent possible, the GIS server will only search for suitable land parcels among the land parcels that are within the area that is displayed to the user. Doing otherwise would clearly result in wasted processing resources since, in the described system, the filtered land parcels located outside the map area will not be displayed or otherwise brought to the user’s attention, regardless of how suitable they might be. It would appear that, in this case, the level of granularity of the division into sub-regions would have an impact on the overall performance of the system.
66. The description continues:
“[50] The application server 108 includes the tile proxy module 222 that receives the data queries from the user devices 110, appends or adds the access key data, and sends the data queries with the keys (forming ‘data requests’) to the GIS server module 220. The tile proxy module 222 also receives the query results from GIS server module 220 and serves them to the user device 110 (after removing details of the GIS access keys). The tile proxy module 222 may be implemented using a fast transactional server including a JavaScript-based runtime environment for server-side applications that is very efficient at processing requests and relaying data, e.g., Node.JS. The tile proxy module 222 may be implemented using computer-readable code that filters requests, then relays them to the GIS server 106 after adding the API Key, and then sends the responses to the user device 110.
[51] The application server 108 includes a web server module 224 for communicating with the user device 110, providing authentication of the user details from the user device 110 (based on user data in a user database 226 of the application server 108) … The web server module 224 may use a standard HTTP server. The user database 226 may store site and user data, including user names, passwords, user preferences, user settings, and history data representing favourite sites/locations and previous searches based on the previously generated data corresponding to that user identifier (ID). The web-server data may include scripts and files to support web protocols including personal home page (PHP), HTML, cascading style sheets (CSS), Java Script, and image files. The web-server data may include a Hypertext Transfer Protocol Secure (HTTPS) server, and Secure Socket Layer (SSL) certificates, for authentication between the browser 230 and the web server module 224 and the tile proxy module 222.
[52] The user device 110 includes a client in a web browser 230 that provides a user interface 232 to the user. The web browser 230 receives user-input data from the user interface 232 to define the data queries that the web browser 230 sends to the tile proxy module 222. The web browser 230 communicates with the web server module 224 to send and receive data according to web protocols, including HTTPS and AJAX (Asynchronous JavaScript and XML), which allow web pages to updated [sic] data without reloading the entire page. This allows our users through the interface 232 to change sliders to update data queries, submit the queries to the tile proxy module 222, and then update the map when the new data tiles are ready. The client may be able to generate the data queries with a Region ID by comparing a current requested screen display area or screen extent (e.g., a rectangle, generated by the client) to local Region Geometries data (i.e., a set of geometry for each sub-region in a region represented by the land-parcels data 212, stored in or by the client), representing geometries of the available sub-regions in the stored GIS data with associated Region IDs, and thus match the requested display area with at least one of the sub-region geometries to select the appropriate at least one Region ID for the data queries. As shown in Figure 9 [reproduced below], in an example with six sub-regions (ID 1, ID 2, ID 3, ID 4, ID 5 and ID 6), the client can determine that the screen area 902 (also referred to as a ‘screen extent’) overlaps two of the sub-regions (ID 5 and ID 6), and thus the client can generate a data query specifying the Region IDs for these two sub-regions for use by the GIS server 106 when generating the query results.
[53] The query results from the GIS server module 220, received by the tile proxy module 222, may be returned as text results, numerical values and map tiles. The map tiles may be generated on the fly by the GIS server 106 after processing the data query. The map tiles show the locations of parcels of land that fit the criteria selected in the data queries. The bitmap images are overlaid on the base map. Each map tile is a square bitmap graphic displayed in a grid arrangement to show a map: the standard is to use 256x256 pixel images. The map may be generated by the web browser 230 using public map data accessed from public base map layers 234 in the map provider 114. The base map layers 234, e.g., from Google Maps, include a plurality of map tiles, and various selectable layers (retrieved in query results from the GIS server 106, and generated using the layers data 214) are also in the form of map tiles, with transparency where there is no data to display so that the base map tiles are displayed. The text results and map tiles are processed by the web browser 230 to display them in the user interface 232 on a map. The public map base layers 234 may include satellite images, or street maps, selectable by the user interface 232, which are on the bottom layer of the map displayed, and available from commercial and open-source providers, e.g., Google map servers, Bing map servers, and Nokia map servers. The web browser 230 may generate the user interface 232 using standard hosted web libraries 236 accessed in the CDN 116, or accessed in the application server 108 and served by the web server module 224. The hosted libraries 236 may include open-source Java Script libraries, which may include JQuery, JQuery-UI, leaflet, bootstrap, and Carto-DB.” (underlining and bold added)
Comments on the computer implementation
67. As it can be seen from my earlier summary of the case law, the nature of the computer implementation could be an important factor when deciding on manner of manufacture for inventions such as the one presently described and claimed. In that respect, the Specification suggests that the implementation of the invention relies heavily on publicly/commercially available information, data formats, information transfer protocols, and software. It is also worth noting that the utilised hardware components (i.e.: servers; computer systems; data networks, such as the Internet; user devices, such as smartphones, tablet computers, desktop computers, laptop computers; etc.) appear to be of entirely generic description. In addition, the various described software modules appear somewhat flexible and fluid with respect to their functional boundaries (i.e. which particular module performs exactly what function(s)).
68. For example:
“[57] Each of the pre-processing computer system 102, the GIS server 106, the application server 108, and the user device 110 includes one or more computer processors, which may be referred to as data processors, including microchip computers, and random access memory (RAM) modules, and other computer-readable storage media, that store computer-readable instructions that, when executed, allow these devices to perform the functions and operations described herein. These systems and devices include non-volatile and non-transitory (e.g., hard disk) computer-readable storage with machine-readable instructions for controlling the respective computer processors to perform the methods and processes described herein, and to embody the modules and software components described herein. These systems and devices include external computer interfaces for communicating with each other, including over an electronic network including the internet. The boundaries between the modules and the software components can be altered, and some embodiments may merge modules or impose an alternative decomposition of functionality of modules. For example, the modules discussed herein may be decomposed into submodules to be executed as multiple computer processes, and, optionally, on multiple computers. Moreover, alternative embodiments may combine multiple instances of a particular module or submodule. Furthermore, the operations may be combined or the functionality of the operations may be distributed in additional operations in accordance with the invention. Alternatively, such actions may be embodied in the structure of circuitry that implements such functionality, such as the micro-code of a complex instruction set computer (CISC), reduced instruction set computer (RISC), firmware programmed into programmable or erasable/programmable devices, the configuration of a field-programmable gate array (FPGA), the design of a gate array or full-custom application-specific integrated circuit (ASIC). The data generation, data storage and data communications operations relate to digital data operations. The digital data may include electronic data defined by logic circuits–which may include binary logic circuits–represented by electronic quantities, which may include voltage, current and/or resistance.” (underlining added)
69. I acknowledge the fact that the implementation of some functional elements and method steps is described with a considerable amount of detail. However, while the absence of detailed explanations may indicate a generic implementation, a comprehensive description may also reveal the routine nature of the implementation. In the present case, despite the level of detail, it does not appear to me that the described implementation includes any aspects that the person skilled in the art would find unusual or diverging from the practices established in the art. Following from this and given the explicit focus on the functional capabilities of the system, I have no reasons to consider that the implementation instances described in some detail constitute anything more than mere examples. This view is further re-affirmed when the system defined in claim 1 (reproduced later in this decision) is considered. For example, claim 1 omits altogether the application server (the latter being defined in claim 11). In my opinion, this is a clear indication that the Applicant does not consider that a specific computer implementation involving an application server is essential to the invention, despite the considerable amount of detail in which such an implementation is described (see Figures 1 and 2 as well as the corresponding discussions above).
70. In view of the above comments, I do not consider it necessary to engage in a more detailed discussion of the described implementation examples.
The invention as described – summary
71. In summary, I consider that the body of the Specification describes a computer-implemented system (and a corresponding computer-implemented method) representing an interactive web map that is specifically designed and built for particular users, i.e. property developers searching for land parcels suitable for potential development. The needs of these particular users govern the type and content of information that is stored and processed as well as the search criteria and associated values that can be selected when generating a search query. As a result of its operation, in response to the user’s query, the system provides the plurality of land parcels matching the selection criteria set by the user in the query. The land parcels are visualised on a map display within the user interface and accompanied by further relevant information.
72. The fast (real-time) processing of the search queries is facilitated by utilising two design techniques, which for brevity, I will refer to as “pre-processing” and “data dividing”:
(a) The pre-processing involves:
· gathering, from publicly accessible sources, all raw GIS information that may be directly or indirectly relevant to the possible users’ queries;
· processing the so-gathered raw GIS information to generate processed and ready-to-use information that is directly relevant to the possible users’ queries; and
· storing the so-generated processed and ready-to-use information.
In this way, all information that is needed for responding to possible users’ queries is collected, processed to a suitable form, and stored upfront, so that less information processing is required to respond to these queries. The processed and ready-to-use information is periodically updated to keep it current in view of possible changes to the raw GIS information.
(b) The data dividing involves:
· dividing the overall geographical area, containing all land parcels included in the system, into predefined regions; and
· dividing the information about the land parcels included in the system into separate datasets, each dataset corresponding to one of the predefined regions and containing the information about the land parcels in that region.
In this way, the search for suitable land parcels will be limited only to the dataset(s) corresponding to the predefined region(s) selected in the user’s query. This, in general, is likely to further reduce the processing necessary to respond to users’ queries in comparison to the scenario where the information about all land parcels included in the system is kept in a single dataset, thus always requiring a search over the full extent of the overall geographical area.
73. As it can be seen from my earlier discussions, I have no reasons to conclude that the particular examples of computer implementation of the system (and method), although described in some detail, represent anything other than generic implementation. In other words, the body of the Specification does not suggest the presence of any ingenuity in the way in which the computer technology is employed to implement the described functionality of the system (and method) representing the interactive web map.
The claimed invention
74. The Specification ends with 23 claims, from which claims 1 and 12 are independent and reproduced below (some formatting added to further assist readability):
“1. A system for generating a real-time adjustable map, the system including:
a pre-processing computer system configured to, on a regular and/or periodic basis:
access raw geographical information system (GIS) data from accessible databases, including
land-parcel data defining geospatial coordinates of a plurality of land parcels, and
destination data representing coordinates of publicly accessible destinations,
pre-process the GIS data to generate proximity data by
determining distances between the land parcels and the publicly accessible destinations, and representing the determined distances by the proximity data, including
accessing street data representing coordinates of a street network, and
determining the distances between the land parcels and the publicly accessible destinations by determining shortest routes between the geospatial coordinates of the land parcels and the coordinates of the publicly accessible destinations along the street network, and
communicate with at least one GIS server for the GIS server to receive the proximity data and store the proximity data; and
the at least one GIS server configured to:
receive request data in a data query representing one or more criteria from a user interface (UI) including a displayed map and the publicly accessible destinations,
the user interface having controls that generate the criteria,
the criteria including a plurality of requested distances from selected ones of the publicly accessible destinations for selecting ones of the land parcels,
access the stored proximity data on the GIS server, and
generate response data, from the stored proximity data, by
selecting ones of the land parcels with ones of the determined distances in the proximity data matching the requested distances
for display on the map of the UI.
…
12. A method for generating a real-time adjustable map, the method including:
accessing raw geographical information system (GIS) data from accessible databases, including
land-parcel data defining geospatial coordinates of a plurality of land parcels, and
destination data representing coordinates of publicly accessible destinations;
pre-processing the GIS data to generate proximity data by
determining distances between the land parcels and the publicly accessible destinations, and representing the determined distances by the proximity data, including:
accessing street data representing coordinates of a street network, and
determining the distances between the land parcels and the publicly accessible destinations by determining shortest routes between the geospatial coordinates of the land parcels and the coordinates of the publicly accessible destinations along the street network;
communicating with a GIS server for the GIS server to receive the proximity data and store the proximity data;
receiving request data in a data query representing one or more criteria generated by a user interface (UI) including a displayed map and the publicly accessible destinations,
the criteria including a plurality of requested distances from selected ones of the publicly accessible destinations for selecting ones of the land parcels;
accessing the stored proximity data; and
generating response data, from the stored proximity data,
representing ones of the land parcels with ones of the determined distances in the proximity data matching the requested distances
for display on the map of the UI.”
CLAIM INTERPRETATION
75. The claim construction does not appear to present any difficulties. While claim 12 omits the explicit definition of a pre-processing computer system (and the associated segregation of functions between that system and the GIS server) as well as the controls of the user interface, I cannot see any substantial differences between these two independent claims for the purpose of deciding on manner of manufacture. For convenience, I will focus primarily on claim 1.
76. In essence, claim 1 defines a system, which includes as elements a pre-processing computer system and a GIS server, these elements configured to perform the following:
(a) The pre-processing computer system:
· periodically accessing data representing the coordinates of
o a plurality of land parcels,
o publicly accessible destinations, and
o a street network;
· calculating the distances between the land parcels and the destinations using the shortest routes between the land parcels and the destinations along the street network; and
· sending the calculated distances to the GIS server.
(b) The GIS server:
· receiving the calculated distances from the pre-processing computer system;
· storing the received calculated distances;
· receiving a query from a user interface, the user interface
o displaying (to a potential user) a map, including the destinations, and
o providing (to the potential user) controls for
§selecting destinations, and
§setting requested distances between the selected destinations and land parcels;
· accessing the stored calculated distances; and
· selecting the land parcels for which the distances to the selected destinations match the requested distances, based on the accessed calculated distances (being the pre-calculated distances between the land parcels and the destinations along the shortest routes on the street network).
Presumably, the selected land parcels are displayed on the map in real time.
MANNER OF MANUFACTURE CONSIDERATION
The Examiner’s objection
77. The Last Report contains the following objection (original emphasis):
“Claims 1-39 [all claims on record at the time] do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. In general, the principles set out in D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases require analysing whether the claimed invention, as a matter of substance rather than form, is suitable subject matter for a patent.
The Examiner thanks the Applicant for their response filed 23 October 2019.
The Examiner has considered the Applicant’s arguments and maintains the manner of manufacture objection. The Examiner is of the opinion that the earlier reports for this application and the reports for 2017101086, 2017101089, and 2018100385 have addressed the Applicant’s arguments. These reports are directed to the same or essentially the same subject matter.
The Applicant has additionally argued, as per the Rokt decision, that the focus must be on the claims as a whole and as a matter of substance in considering manner of manufacture.
The decision in Rokt confirmed that the substance of the invention must be for a Manner of Manufacture. As part of the process of assessing the substance each and every feature must be considered independently to determine if there is any technical contribution in that feature. The assessment also involves consideration of the claim as a whole to determine any technical contribution in the combination, or arrangement of features. This approach was used in the examination of your application. That is, the features of the claimed invention have been considered independently and as a whole to determine the contribution to the art, hence the substance.
As has been set out in previous reports, there is no technical teaching apparent which would go beyond mere automation of the business logic which makes up the solution to the problem using conventional hardware and programming methods. The claims do not involve any invention or ingenuity in any program or operation of a computer or implementation by a computer to operate the method.
It is apparent that the substance of the invention lies in mere presentation of information reflecting business rules specified by the applicant for identifying land parcels (see description paragraph [04]). A mere presentation of information reflecting business rules is not patentable subject matter.
Further, using a computer for its well-known and understood functions to implement identifying information regarding land parcels in a convenient and easy manner does not render the present application patentable subject matter …”
142. Interestingly, the Applicant states that “the problem solved by the claimed invention is in substance more technical than the technical problems found in the Research Affiliates, RPL Central and Rokt decisions” (AS at [57], underlining added). Firstly, the Applicant does not specifically identify “the technical problems” found in these decisions. Secondly, I am unsure how this statement helps the Applicant’s case given that, in all three of these decisions, the Full Court found that the manner of manufacture was lacking.
143. Based on the body of the Specification, I consider that the primary goal of the present invention is to address the general inadequacy of the existing maps to cater for the specific needs of property developers searching for suitable sites to develop. Fast real-time response is generally desirable in any interactive web map (and any searchable information system for that matter), and nothing in the Specification suggests that the present invention is directed to improving the response time of the existing interactive web maps. The Specification describes and claims a completely different web map specifically designed to address the needs of the property developers when searching for suitable sites to develop, and this interactive web map is the proposed solution. Indeed, I consider that if the present invention were to be addressing some general issues or limitations in the field of online mapping technology (e.g. such as those mentioned by Mr Cushen) then, given the broader applicability of such potential improvements, it would be very unusual for the invention to be limited to a very specific use as in the present case.
144. While the instant invention appears to be addressing existing business deficiencies in the art by developing an interactive web map that adequately provides specific business intelligence to a particular category of users, it may still be possible that some secondary technical issues or limitations are overcome during the implementation of the map, which possibility I will consider later.
The result of the working of the invention
145. The Applicant states:
“41. As in Bio-Rad [Bio-Rad Laboratories, Inc. [2018] APO 24], we submit that when the claimed invention is put into practice, it results in a technical contribution to the technology of online mapping or Internet based mapping as it allows a real-time adjustable map to be generated online while accommodating processing demands of using raw street network data and geometrically defined land parcels.” (AS, underlining added, reference(s) omitted)
146. Importantly, in Bio-Rad, the Delegate concluded:
“55. … When one looks at what is involved in this optimization process, it is quite clear that the invention lies in computing a QC [i.e. quality control] utilisation rate for different QC rules so that the QC rule with the lowest QC utilisation rate can then be chosen as the QC strategy as it is this QC rule that uses a minimal number of reference samples for testing while still meeting the chosen performance targets of maximum permissible final errors and maximum permissible correctible errors.” (underlining added)
147. In other words, when put into practice, the invention in Bio-Rad results in reducing the usage of tangible consumables (i.e. reference samples to be tested during quality control events) while keeping the performance of the quality control unaffected. This is an improvement in the quality control, which is a process that is vital for maintaining the diagnostic devices operational. This way of improving the efficiency of a process by which a device is kept operational, produces a technical effect (i.e. the reduced consumption of test samples, while keeping unaffected the performance indicators of the process of maintaining the diagnostic devices operational) and can be characterised as a technological improvement worthy of patent protection. I am struggling to see any parallels between the instant invention and Bio-Rad.
148. The Applicant’s submission somewhat implies that, prior to the instant invention, it was not possible (or at least extremely technically challenging) for “a real-time adjustable map to be generated online while accommodating processing demands of using raw street network data and geometrically defined land parcels”. Earlier in this decision, I discussed the evidence in considerable detail, and I am unable to identify sufficiently convincing support for such a statement. The suggestion that an interactive web map with these characteristics did not exist, even if correct, cannot be considered evidence for the existence of technical obstacles for creating one. There may be various other reasons, such as for example the lack of appreciation for the commercial need for such a web map.
149. I note that Mr Cushen was asked if he “could provide any metrics showing that the OneMap system is faster / better than systems that existed prior to 10 October 2014” (Cushen at [27]). In reply, Mr Cushen refers to a comparison with the Bing Maps API and explains how, in December 2019, OneMap (not necessarily the present invention having much earlier priority date) was shown to be much faster (Cushen at [28]-[31]). Mr Cushen also makes some comparisons with VicPlan, the Victorian State Government planning information platform, launched in 2018/2019 (Cushen at [33]). While such comparisons may be very persuasive from a marketing perspective, I do not consider that they are highly relevant to the question of manner of manufacture. In addition to the simple fact that the response time also depends on the processing power (hence the cost) of the employed computer technology, it appears that none of the systems used for comparison are dedicated to the specific needs of the property developers searching for suitable sites to develop. At best, the comparison is a demonstration of the somewhat trivial point that a dedicated map, containing all specific information necessary to properly address the needs of the property developers, is likely to serve these specific needs better that a web map with a more general purpose, catering for the needs of a variety of users, and thus not necessarily containing the specific information needed by the property developers in the form best suited to their needs.
150. The invention presents a computer system and a computer implemented method for allowing property developers to select suitable sites for development. It provides an interactive web map having a user interface, through which the property developers query the data contained in the server and receive real time responses. The responses contain information assisting the property developers in the making of their business decisions. It is clear that the working of the invention results in the mere provision of specific information useful for specific business purposes. No other direct or indirect consequences of the working of the invention can be identified.
The design and implementation of the invention
151. As I already discussed, Brynard emphasises the importance of the design process and that “[a] pre-requisite for the design of any map is to consider the purpose of the map” and to perform “a proper user requirements analysis” (see the full quotation above). Since the map of the instant invention has a well-defined specific purpose, it is reasonable to infer that the specific requirements of the property developers searching for suitable sites to develop must play a pivotal role in the design of the map.
152. The instant invention is outside the education context of Roth, where the use of existing (mostly open source) technologies was the preferred approach for client maps development. This, in combination with the general inadequacy of the existing maps to cater for the specific needs of property developers searching for suitable sites to develop, suggests that the development of a dedicated interactive web map, purposely designed to cater for these specific needs, would appear to be a straightforward approach to follow. While the potentially higher cost and longer development period associated with such a dedicated map may be an issue, this is purely a matter of business considerations. From the point of view of fulfilling the purpose of the map and the user requirements, I consider that the benefits of a dedicated interactive web map would be easily appreciated by the web map developers. For example, such a dedicated purposely-designed map will not be limited by the functionality offered by existing technologies (e.g. as discussed in Roth) and is likely to be faster in handling the user queries.
The pre-processing
153. According to Brynard, one of the important design aspects is “[d]esigning the map information – with due consideration to completeness, currency, relevance and source” (Brynard as quoted above, underlining added) and it would appear that this part of the design was given a thorough consideration by the inventors. The completeness of the information is convincingly addressed in the body of the Specification, which comprehensively describes the data and information that is important to the property developers. With respect to the source, the required information is available from publicly accessible (e.g. via the Internet) sources. As to the currency, in view of possible changes to the information contained in the publicly accessible sources, the need for periodic updating of the information stored in the dedicated map (e.g. as claimed in claim 1) is clear. With respect to the relevance, it is interesting to note that Mr Cushen explains:
“… It was the desire of OneMap to compute accurate results (i.e., routing around obstacles such as waterbodies etc.). Calculating network distances are known to be more accurate but are computationally costly …” (Cushen at [35], underlining added)
154. Indeed, the distances from each land parcel to different publicly accessible destinations appear to be highly relevant information to the property developers, and it is trivial that people and land vehicles do not normally move in a straight line, especially in populated areas. Hence, distances calculated along the street network are more relevant in comparison to straight line distances. Therefore, those street network distances are the information that should be made available to the users of the interactive web map, and not necessarily the straight line distances. However, it would appear that the street network distances are not directly obtainable from the publicly accessible sources, instead they could be derived from the available information (e.g. coordinates) through routine calculations (see e.g. the Specification at [59]).
155. It is trivial that, in general, the lower the amount of processing (including any calculations) that is needed to respond to a user query, the faster the response. Therefore, when the response time could be an issue, a good design would require as much as possible of the processing to be done upfront and not in response to a user query. This is more likely to be the case when relatively computationally costly processing (such as calculations of distances along a street network) is involved. Indeed, Mr Cushen considers at [35] that the difference between the street network distances and straight line distances “lies at the core of the need to pre-populate the data”. However, the general design principle should be applicable to all relevant information that is not directly available from the publicly accessible sources in a suitable format, but instead can be derived from the available information through some form of processing. Another possible example of such information is the area or size in square metres of each land parcel (see e.g. the Specification at [80] as well as claims 10 and 21).
156. The above analysis suggests that, on the available evidence, the use of the design technique of pre-processing is simply a result of following good design practices in a situation where not all relevant information is directly available from publicly accessible sources. This, in combination with my earlier finding that pre-processing in general does not appear to be completely unknown in the art, leads to the conclusion that the utilisation of this design technique in the present invention does not require inventor’s ingenuity.
157. In addition, the use of pre-processing appears to be completely unrelated to the computer implementation. I am unable to identify any technical problems or limitations that were overcome through the specific implementation of this technique as described in the Specification. Importantly, the Specification also anticipates that the pre-processing “may require one or more manual sub-steps” (see [63]). Hence, I consider that the use of pre-processing is a design aspect that is part of the scheme for providing a specific type of business intelligence to particular users. It results in a better scheme (in comparison to a hypothetical scheme which does not utilise it).
The data dividing
158. It is interesting to note that the feature of data dividing is not currently included in the independent claims 1 and 12 (it appears defined in claims 2 and 13). This strongly suggests that the Applicant does not consider that this feature is essential to the invention.
159. As described in the body of the Specification, the user interface operates in a way that, following the search triggered by the user query, the land parcels matching the search criteria are displayed on the map that is shown on the user’s device at the time of generating the user query (see Figures 8A and 8B). In other words, this way of operation of the user interface represents the design solution that was adopted for notifying the user of the land parcels matching the search criteria. It is not unreasonable to infer that this design solution was adopted after taking into account the purpose of the map and the user requirements. As a result, of all land parcels potentially matching the search criteria, only those within the area displayed on the map will be presented or otherwise notified to the user. It is manifestly clear that, with such operation of the user interface, searching for land parcels matching the search criteria among the land parcels located outside the area displayed on the map would be a wastage of computational resources that would lead to a slower response time. Indeed, such searching would be a very fitting example of a poor design. A good design practice would require searching that is limited only to the area displayed on the map in the user interface.
160. My earlier discussion of the evidence suggests that the concept of dividing large maps into smaller regions, known as map tiles, was routinely employed in the art. It would appear that the data dividing described in the Specification (see e.g. Figure 9) is a simple application of this concept of dividing a large map (in this case, the overall geographic area covered by the interactive web map) into tiles, including the associated dividing of the map data. There is no evidence that organising large map data in such a way was something unusual in the art at the priority date. On balance, I consider that the use of the design technique of data dividing as described in the Specification is a consequence of routinely following good design practices, and I do not consider that it is something that could be attributed to the inventor’s ingenuity.
161. It is also important to note that the use of data dividing appears to be completely unrelated to the computer implementation. From what is described in the Specification, the utilisation of this design technique does not appear to require resolving any technical problems or overcoming any technological limitations. Hence, I consider that the use of data dividing is a design aspect that is part of the scheme for providing a specific type of business intelligence to particular users. As it was the case with the use of pre-processing, the use of data dividing results in a better scheme (in comparison to a hypothetical scheme which does not utilise it).
The combination of pre-processing and data dividing
162. I have already concluded that the use of either of the described design techniques of pre-processing and data dividing in the present invention is not something that could be attributed to the inventor’s ingenuity. In addition, I note that the techniques appear to be independent of each other and I cannot see any working interrelationships between the two that would warrant a different conclusion for the use of the combination of the two techniques. Mr Cushen states:
“38. The solution was a combination of pre-populating the data [which includes the pre-processing], along with segmenting the data to be queried [i.e. the data dividing]; allowing the system to selectively query only what was desired and therefore present results in near real-time. Use of either technique in isolation would have resulted in increased performance, however, using both in combination results in an even better performance in terms of both query result time and server load.” (Cushen, underlining added)
163. Nothing in the above quotation appears to suggest the presence of any synergetic or unusual effect brought about by combining the two techniques. The same applies to the rest of the evidence and to the Specification. Each technique independently contributes to decreasing the response time. When both techniques are used, the response time would be the shortest, however this is a simple consequence of the lack of interference between the techniques. In other words, each technique results in reducing the response time regardless of whether the other technique is used or not.
164. In the section of AS titled “The Individual Integers” (paragraphs [65]-[69]), the Applicant notes:
“65. Notwithstanding our above submissions, we submit that even if the Delegate were to assess the integers of the claimed invention in isolation (which the Applicant does not agree is permissible), we submit that the Delegate should still find that the claimed invention constitutes patentable subject matter.”
165. Since I have no intention “to assess the integers of the claimed invention in isolation”, I do not consider it necessary to provide further comments. With respect to some other issues mentioned in this section, I will only note that I have already discussed objection 5, document D1, and Mr Cushen’s evidence with respect to the documents raised during examination.
The implementation using computer technology
166. The Applicant submits:
“60. We note that the Examiner alleged that:
As has been set out in previous reports, there is no technical teaching apparent which would go beyond mere automation of the business logic which makes up the solution to the problem using conventional hardware and programming methods. The claims do not involve any invention or ingenuity in any program or operation of a computer or implementation by a computer to operate the method.
61. With respect, we submit that in light of Mr Cushen’s evidence, in the relevant technical field (GIS and online mapping), the Examiner’s assertion cannot be correct. We submit that an assessment of what makes up ‘conventional hardware and programming methods’ must have regard to the context within which the invention operates.
62. Mr Cushen makes it clear that, at the priority date, there were numerous issues with existing online mapping technology [I have already commented on these in some detail]. While technology which could resolve some of these issues may have been available, it was not commonly known within the relevant field of online mapping technology. If it was the case that such technology was conventional (as alleged by the Examiner), then we would expect there to have been an abundance of online mapping services all utilising this technology.
63. In any event, even if it was known to implement pre-population of data so that data anticipated to be queried is pre-processed in preparation, as required in amended independent claims 1 and 12, we submit that it would not have been known to combine this technique along with segmenting the data to be queried as required in amended dependent claims 2 and 13. We also submit that if the data was not pre-processed and segmented in accordance with the claimed invention, it would not be possible to calculate network distances and generate a high-quality real-time map. Thus, using both in combination results in an even better performance in terms of both query result time and server load.” (AS, italic in the original, underlining added, references omitted)
167. It is not perfectly clear to me what is the particular technology referred to in the submission: “[w]hile technology which could resolve some of these issues may have been available, it was not commonly known within the relevant field of online mapping technology”. Based on the context, it is possible that the Applicant refers to the “pre-population of data” and the pre-processing. If that indeed is the case, this amounts to asserting that dedicated web maps having their own data storage were “not commonly known within the relevant field of online mapping technology”. I am unable to find any convincing evidence for that and, in the absence of such evidence, I find it unlikely. Relatedly, it would also appear that the Applicant may be suggesting that the “field of online mapping technology” is completely isolated from the broader field of data/information storage, processing, and querying, despite both using apparently the same data processing techniques – see for example the Specification at [56]: “The GIS server 106 selects a subset of the land parcels (or rows) based on each data query, e.g., using standard SQL processing” (underlining added). Again, I am unable to find any convincing evidence to support such an assertion. Finally, as long as the design techniques of pre-processing and data dividing are concerned, I have already discussed both of them as well as their use in combination.
168. Earlier in this decision, in discussing the implementation using computer technology, I summarised my observations by noting that I have no reasons to conclude that the particular examples of computer implementation of the system, although described in some detail, represent anything other than routine implementation. In other words, the body of the Specification does not suggest the presence of any ingenuity in the computer implementation of the system. I am unable to identify any contribution to the computer technology in general. I am also unable to identify anything in the Specification that would suggest that the computer technology is used in a manner foreign to its normal use. In other words, I agree with the Examiner that “[t]he claims do not involve any invention or ingenuity in any program or operation of a computer or implementation by a computer to operate the method” (the Last Report as quoted above), but I would add that this observation appears applicable to the Specification as a whole. Based on the above analysis, I can conclude that the computer implementation does not contribute to the substance of the invention.
The substance of the invention claimed in the independent claims
169. While the above analysis was not necessarily limited to the claimed invention, I will now restrict my considerations only to what is defined in the independent claims.
170. With respect to the substance of the invention, the Applicant submits:
“42. Amended claim 1 defines a system which includes a pre-processing computer system configured to, on a regular and/or periodic basis, access published geographical information system (GIS) data (raw data), and pre-process the GIS data to generate proximity data by determining distances between each land parcel and the publicly accessible destinations, and representing the determined distances by the proximity data. Notably, the calculated distances are based on street data representing coordinates of a street network so that distances are determined along a street network. The calculated distances are also based on the ‘geospatial coordinates’ of the land parcels, i.e., the geometry or polygons defining the land parcel boundaries (see claims 1 and 12, and Cushen’s declaration at [23]). This information is then stored on a GIS server for later retrieval. Once a query representing one or more criteria is received, the system accesses the stored GIS data on the GIS server, and generates response data, from the stored GIS data, representing ones of the land parcels with ones of the determined distances in the proximity data matching the criteria for display on the map on the UI in near real time. Amended claim 12 recites similar features to amended claim 1.
43. We submit that the invention in substance should be framed as being directed to a system for generating a real-time adjustable map, in the field of online mapping, as defined by at least claims 1 and 12.” (AS, underlining added)
171. While I can readily accept that the invention defined in claim 1 is directed to a system for generating a real-time adjustable online map, it appears to me that the Applicant does not attempt to distinguish between the subject matter of the claim as a matter of form and the substance of the claimed invention.
172. In addition, the invention defined in claim 1 is clearly limited to “the at least one GIS server configured to: receive request data in a data query representing one or more criteria … the criteria including a plurality of requested distances from selected ones of the publicly accessible destinations … and generate response data, from the stored proximity data, by selecting ones of the land parcels with ones of the determined distances in the proximity data matching the requested distances for display on the map of the UI” (underlining added). In light of this fact, the Applicant’s submission that “the claimed invention relates to how a real-time adjustable map is generated rather than what is being displayed” (AS at [39], original underlining) does not appear convincing. It is clear that “what is being displayed” is a very specific requirement of the claim, alongside “how” the specific information being displayed is prepared from the specific raw information/data by the “pre-processing computer system” and the “GIS server” for eventual future display. In other words, the “how” is clearly limited to the specific information characterised by its content (e.g. “land-parcel data defining geospatial coordinates of a plurality of land parcels, and destination data representing coordinates of publicly accessible destinations” as well as “the distances between the land parcels and the publicly accessible destinations” determined by the “shortest routes between the geospatial coordinates of the land parcels and the coordinates of the publicly accessible destinations along the street network”).
173. Based on my discussions so far, I consider that the substance of the invention claimed in claim 1 is related to the content of the information handled by the system and the particular processing steps performed with respect to that information and governed by its content. To be more specific, this involves:
(a)Using as raw information (obtainable from accessible databases) the coordinates of each one of a plurality of land parcels, each of one or more publicly accessible destinations, and the street network, calculate (using standard techniques) and store the shortest distances along the street network between each land parcel and the publicly accessible destinations.
(b)Then, upon a query, in which a user sets desired distances between land parcels and selected publicly accessible destinations, generate in real-time a response (for display to the user on a map) being the land parcels having distances matching the set desired distances.
174. As I already noted, the corresponding method claim 12 has a very similar scope, hence I do not consider that the substance of the invention claimed in claim 12 is any different.
Is the claimed invention, as a matter of substance, a manner of manufacture?
The invention claimed in the independent claims
175. It is clear that the invention claimed in claims 1 and 12 is, in substance, directed to a computer implemented interactive web map addressing the needs of property developers searching for suitable properties to develop. In particular, the claimed invention allows the property developers to view on a map the land parcels within certain distance ranges, along the street network, from selected publicly accessible destinations. In other words, as a matter of substance, the claimed invention relates to the idea of providing an interactive web map capable of supplying the required business intelligence information to a specific group of users, following the discovery of a commercial need for such a map. This idea is realised through the respective business intelligence scheme. As I already alluded to, I consider that, from the point of view of manner of manufacture, the claimed invention is not dissimilar to the invention claimed in Encompass, where the Full Court noted at [27] that “[t]he claims of the specification are directed to a method, in an electronic processing device, of displaying information relating to one or more entities (claims 1 to 3), and to an apparatus, which includes an electronic processing device, for displaying information relating to one or more entities (claim 4)”.
176. The Full Court in Encompass also noted that “claim 1 does not characterise the electronic processing device which performs the method” (at [30]) and that “[t]he apparatus of claim 4 is not characterised beyond the fact that it includes an electronic processing device and, in essence, carries out the steps of claim 1 in response to user commands” (at [33]). While instant claims 1 and 12 use what might superficially appear to be more specific terms like “a GIS server” and “a pre-processing computer system”, those are still quite generic and remain uncharacterised beyond their functional abilities to carry out the steps of the scheme necessary to display on the user interface the information requested by the user.
177. In characterising the invention claimed in Encompass, the Full Court observed:
“99 … But even if for present purposes ‘entity matching’ is taken to be a step in the claimed method, neither it nor the other steps, individually or collectively, amount to anything more than a method in which an uncharacterised electronic processing device (for example, a computer) is employed as an intermediary to carry out the method steps—where the method itself is claimed in terms which amount to no more than an abstract idea or scheme.
…
101 … If approached from this point of view, the method is really an idea for a computer program, it being left (as we have said) to the user to carry out that idea in an electronic processing device.”
178. Given the similar way of claiming (see e.g. claim 1 of the 164 Patent decided in Encompass and instant claim 12), I consider that the above characterisation by the Full Court is also applicable to the instant invention. I can find no technological advancement in the invention claimed in claims 1 and 12 that will allow me to characterise this invention as a patentable “technological innovation” (see e.g. RPL Central at [100] quoted earlier).
179. It is worth noting that not all newly developed for a specific purpose computer programs (or sets of such programs) contribute in a technical sense to the field that could broadly be described as computer technology, despite their compelling utility in fulfilling that specific purpose. Cases like RPL Central, Encompass, and Rokt clearly confirm that. In the same way, I do not consider that every newly developed for a specific purpose interactive web map (which, in essence, is a type of a software system) necessarily makes “a technical contribution to the technology of online mapping or Internet based mapping” (see AS at [41], quoted in full earlier), regardless of how well it performs in fulfilling that specific purpose. It follows that I do not agree that the present map, developed specifically to address particular business needs, represents “a technical contribution to the technology of online mapping” or the GIS technology, merely because those business needs were not previously addressed in the field in the same manner. It would appear that the contribution of the invention is limited to the field of property development, or the broader field of real estate, which I consider a field of business endeavour. Therefore, as a matter of substance, regardless of its benefits, the present invention should be properly characterised as an unpatentable “business innovation” (see again RPL Central at [100] quoted above).
180. I conclude that the invention defined in claims 1 and 12 is not a manner of manufacture. Even if I am wrong in considering that the present use of pre-processing does not involve inventor’s ingenuity, I have found that this design aspect is properly characterised as part of the scheme, hence the conclusion with respect to manner of manufacture would still be the same.
The invention claimed in the dependent claims
181. Clams 2 and 13 appear to introduce the additional feature of the data dividing. I have already considered this design technique and concluded that the use of data dividing, either on its own or in combination with the pre-processing, could not be attributed to the inventor’s ingenuity. It follows that the invention claimed in claims 2 and 13 is not a manner of manufacture. Again, if I am wrong in considering that the present use of data dividing in combination with pre-processing does not involve inventor’s ingenuity, I have found that the use of either design technique as well as their combination should be properly characterised as a design aspect that is part of the scheme, hence the conclusion with respect to manner of manufacture would still be the same.
182. Claims 3 to 11 and 14 to 22 add further features related to the functionality of the defined system or method. No technical issues or limitations appear to have been overcome in order to achieve the claimed additional functionality, which is directed entirely towards improvements to the scheme. Where differences, as a matter of substance, exist between these claims and their respective independent claims, these differences reside entirely within the scheme and, thus, cannot result in a different characterisation with respect to manner of manufacture.
183. Claim 23 defines a “[c]omputer-readable storage with machine-readable instructions for controlling computer processors to perform the method of any one of claims 12 to 22”. Clearly, the substance of the invention defined in claim 23 is identical to the substance of the invention defined in claims 12 to 22.
184. In summary, I consider that none of the claims in the Specification defines an invention that is a manner of manufacture.
Can an allowable amendment result in claiming a patentable invention?
185. As I already mentioned, in essence, the Specification describes and claims a dedicated software system designed and developed to fulfil the specific business intelligence needs of property developers searching for suitable sites to develop. Having considered the body of the Specification in sufficient detail, I am unable to identify any matter that, when added to an existing claim, could result in claiming an invention that is a manner of manufacture. Hence on balance, I am not satisfied that an allowable amendment could result in claiming a patentable invention.
186. The Applicant did provide a generic request for an opportunity to address any concerns:
“13. Should the Commissioner remain unsatisfied that the application is in order for acceptance, we request that the Commissioner provides the Applicant with an opportunity to address the Commissioner’s concerns under regulation 13.4.” (AS, underlining added)
187. It should be noted that a hearing decision with respect to an examiner’s objection is not simply a more detailed examination report providing automatically for continued examination with possible further amendments and/or submissions addressing the findings in the decision, and I do not consider that reg 13.4(1)(g) stands for that. With their written submissions, the Applicant already proposed amendments (under items 3 and 4), which I have considered in this decision. It is not unreasonable to assume that the Applicant already had the opportunity to present their best case before the Commissioner. In the circumstances where I can see no clear way to overcome my negative finding, in view of the public interest, I consider that providing the Applicant with a further opportunity to amend and continuing the examination would serve no useful purpose.
CONCLUSION
188. I have found that no claim of the Application, as proposed to be amended, defines an invention that is a manner of manufacture. Furthermore, I formed the view that no allowable amendment could result in claiming a patentable invention. It follows that the Application should be refused.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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