Salim Abdul-Malik
[2022] APO 54
•18 July 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Salim Abdul-Malik [2022] APO 54
Patent:2018100245
Title:Universal Digital Addressing & Pinpoint System or UDAPS
Patentee: Salim Abdul-Malik
Delegate: Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date: 18 July 2022
Hearing Date: Written submissions completed 29 April 2022
Catchwords: PATENTS – section 101B – examiner’s objection – improved geographical location encoding and use of encoding on location-based signage – amendment allowability – clarity – manner of manufacture – novelty – innovative step – key elements of described invention in substance directed to a mere scheme – technical subject matter present in specification – amendment not allowable – claims not clear – not clear that any material is ultimately patentable – referred to examination – opportunity to amend
Representation: Self-represented patentee
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2018100245
Title:Universal Digital Addressing & Pinpoint System or UDAPS
Patentee: Salim Abdul-Malik
Date of Decision: 18 July 2022
DECISION
The currently proposed amendments are not allowable, and they present claims that are not clear (at each stage of examination the claims have been similarly unclear). The UDAPS platform involving the conversion of location information to an alphanumeric coding is a mere scheme.
Due to the nature of the outstanding issues, I will return the matter for further consideration in examination which will require Mr Abdul-Malik to file proposed amendments that will be passed to an examiner.
I provide 3 months from the date of the present decision for the gaining of certification. If certification does not occur in this time, the patent will cease.
REASONS FOR DECISION
SUMMARY OF REASONS
The invention is directed towards the use of code to identify addresses or locations. Such a code may include a person’s own address or username and has the ability to represent a certain geographical location and can be placed on signage type devices such as placards and drone landing pads to designate location. This aspect of the invention, termed the UDAPS platform, is not directed towards a manner of manufacture as it is a mere scheme for location identification that is designed for the purpose of user-friendliness and personalisation. While the described invention includes physical devices such as placards with physical features, it is not clear if these physical features add to the state of the art such they may enable the claiming of an invention directed towards a manner of manufacture, as a matter of substance.
The considerations within this decision have been made with regard to proposed amendments filed on 1 March 2022. I consider that these amendments are not allowable because they include subject matter that was not clearly and unambiguously disclosed in the originally filed documentation. Mr Abdul-Malik essentially argues that the amendments are allowable because they are for means of clarification of the claims and are within the conceptual scope of the features already presented, but this falls short of the necessary disclosure.
The claims as proposed to be amended are not clear and I note that earlier proposed amendments are similarly unclear. In general, the specification and the claims contain much commentary and difficultly worded features that ultimately result in an inability for the person skilled in the art to determine the bounds of the claimed invention.
I add a general comment with respect to my construction of the specification in that the language used by the Mr Abdul-Malik is often very difficult to decipher. I have made my best attempt to understand the meanings intended.
I also note the Mr Abdul-Malik prefers reference to his invention as an “innovation”. In this regard, I note that the Patents Act uses the term “invention” equivalently in the context of an innovation patent. In this regard, it is valid to say that an “invention” is the subject of an innovation patent.
BACKGROUND
Salim Abdul-Malik filed innovation patent application 2018100245 on 15 February 2018 as a convention application claiming priority from Liberian application AP/P/2017/00002 dating back to an earliest priority date of 15 February 2017. After filing and withdrawing a request for examination in 2018, Mr Abdul-Malik requested examination on 2 June 2021. A first report was issued on 29 July 2021 and this report was followed by a further two reports before the matter was set for hearing due to a lack of progress with the case, and in light of certain assertions made by Mr Abdul-Malik.
The general theme across each of the examination reports is that the claims suffer from significant clarity issues making it difficult to determine the nature of the invention and accurately determine compliance under grounds such as manner of manufacture, novelty and innovative step. Regardless, the examiner has sought to identify the nature of the invention from a wholesome consideration of the specification in order to provide helpful assessments relevant to the grounds of manner of manufacture, novelty and innovative step. Mr Abdul-Malik has filed amendments in response to the examination reports and in the latest report the proposed amendments have been indicated by the examiner as not being allowable.
I note that the standard of proof that applies in the present case is the balance of probabilities. I must certify the patent if satisfied on the balance of probabilities that the patent complies with the Patents Act. If I am not so satisfied, then I can revoke the patent. Also, the final date for certification of the patent was 29 March 2022, this having been extended beyond the usual 6-month period via a section 223 extension of time. At this point, paragraph 9A.4(f) of the Patent Regulations is available to extend the time for gaining certification to 3 months from the date of the present decision.
SPECIFICATION
The specification as filed and accepted in the large part comprises a significant degree of commentary as to the circumstances of development of the invention, political observations, and general discussion of the virtues and benefits of the invention. At times it is difficult to determine what the specification is trying to articulate due to the nature of the language used both in commentary and discussing features of the invention. I will not seek to discuss this commentary in detail and will instead focus on what appears to be the invention that has been devised by Mr Abdul-Malik.
With reference to paragraph [0001] of the description there is discussion of the use of a “cipher key” to identify addresses or locations that may include a person’s own selection of address or username. It appears that such a key has the ability to represent a certain geographical location. Paragraph [0002] adds that the invention allows viewers of a “digital address or digital pinpoint” to instantly determine location including details such as country, state, county, province, city or town. The paragraph continues by seemingly noting that GPS systems are used for location identification and that there exists other, already known, GPS conversion systems for conveniently indicating location. From my understanding, it is in this context that the present invention seeks to provide an improved digital addressing codification of locations. The specification refers to this invention as the UDAPS (Universal Digital Addressing and Pinpointing System).
At paragraph [0004] there is some discussion of the manner in which the UDAPS cipher may be placed on a placard or a drone landing pad with other information in order to facilitate location identification. This paragraph also gives a sense of the nature of the drafted specification.
“Further in the appraisal of the UDAPS platform setup here, the- SIM card type chip lodged in the placard itself-right along with a barcode and QR square stamped on such for posting to the structure-or somewhere about if there is no structure associated with the location. In addition to almost certain huge advertisement bonanza in having the space for pay that are next to the logos of internet giant Google® and such individual GSM carriers displayed world over on this sign board, such placard is to additionally generate handsome revenues as a popular post board. Increasing substantially here are the capital gains to be made-this when the placard's use is coupled with the various services that are supplied into homes and offices around the globe for which the placard may form another medium for linkage besides the smart phone and actual wired connectivity. These services would include digital/satellite television on the high end where placard hardware could in addition to cable lines still tap into antennas. Still yet again and on the more petty matters such navigation feature of the placard the likes of the delivery of goods and hot food such as pizza-spicy cinch where in addition to humans you actually have drones filling such drop off orders.”
Figure 2 as accepted (reproduced below) provides a depiction of a placard that may be used for example in relation to real estate, and Figure 3 (also reproduced below) is a depiction of a drone landing pad. Figures 1, 4 and 5 are essentially schematic depictions of the business operation and app-based operation of elements of the invention and are not of significant further assistance.
Figure 2 shows a placard that includes an embedded sim-card type chip. On the placard is various information regarding the location, also including advertisements. In the centre of the depicted placard is shown geo-code information that represents the location. Portions of the geo-code are provided representing the country, town, city, or district with a central “truncated digital address” also forming part of the location identification. Similar can be said of Figure 3 which shows a drone landing pad with a sim-card in some kind of encased housing unit. Further discussion of these figures is provided in the specification as accepted at page 15:
“b) Figure #2 PLACARD PANE UNIT- for the assembly of 1st of 2 of such hardware/software itemization which see field placement at a residential or business location to mounted onto an exterior wall, gate or fence or interior wall or door. Each pane would require materials of vinyl, thinned Plexiglas, Encoded SIM Card type chip, and QR/bar code stamps with again utility access interface
c) Figure #3-ENCASED HOUSING UNIT for the assembly of 2nd of 2 of such hardware/software itemization which would see field placement in a likely open area that may be inserted into the center of a drone landing pad, mounted within a recessed concrete slab on the ground (most times-vertical up, but may horizontally affixed). Each pane would require materials of vinyl, thinned Plexiglas, Encoded SIM Card type chip, and QR/bar code Each pane would require materials of vinyl, thinned Plexiglas, Encoded SIM Card type chip, and QR/bar code stamps with utility access interface.”
There is also further discussion in the specification regarding the placard that “On most of the placards themselves is the set of items that will allow for the registered digital address to be homed in on by GSM triangulation/GPS interrogation by the mobile devices handled by the foot pedestrians or motorist attempting to navigate the course to location”. The function of this feature is not entirely clear. Also, in relation to the drone landing pad it is noted that “While not always the case the encased housing in a good number of instances is to be placed in a recessed slot in the centre of the landing pad-marked with the “D” at the centre”. This is largely the extent of the discussion of the physical arrangement of the placard and drone landing pad. At this point it is useful to continue discussion of the described invention by reference to the UDAPS information.
Paragraph [0005] begins the discussion of the digital addressing and pinpointing method by seemingly identifying issues with current methods in stating: “Where on Earth is that location – I just see numbers or vague terms.” Continued reading makes clear that the reference to numbers appears to be a reference to GPS coordinates where the specification notes at [0017]:
“While the use of GPS coordinates to identify a stationary or moving person, object or point is just fine and dandy for locating solutions in terms of transport/navigation as well as defense/ offense purposes, in the more casual framework-addressing, of more so stationary points -where structures, pad or just a empty land point would go it is quite awkward to say something of the likes of 5033'0"N-0012'0"W or (5.513848074979261, -0.3051826549870351) as being such address for the location as it sounds to the ear way too ‘scientific’ and blandly impersonal. By delegating the ‘digital address’ set up its functional purposes-that is location designation based GPS positioning of a location, enhanced navigation to such location, delivery trip verification, and a household connectivity aide, therein sees the bare objectivity here-simplicity through digitization.”
Regarding the reference to “vague terms” I note that the specification refers to a pre-existing tool known as what3words®. Looking at this tool ( accessed 3 June 2022) the website notes that:
“Street addresses aren’t accurate enough to specify precise locations, such as building entrances, and don’t exist for parks and many rural areas. This makes it hard to find places and prevents people from describing exactly where help is needed in an emergency.”
“We divided the world into 3 metre squares and gave each square a unique combination of three words. It’s the easiest way to find and share exact locations.”
As an example, on the website it is shown that the three metre square that includes the location of the statue of Shane Warne at the Melbourne Cricket Ground is identified by the three word string “rocket.senior.string”.
Similar to the what3words® concept, the specification also discusses the failings of conventional street addressing that may be used for the delivery of “snail mail”, i.e., postal mail. The specification appears to seek to improve on the known “addressing” methods, by providing more “information rich” location designations that show information relevant to particular locations (e.g. country, state, county, province, city or town) along with a personalised component and an indication of whether the designation is a digital address or it is a digital pinpoint. Mr Abdul-Malik attempts to outline this concept at [0018] - [0020] (first instances of these paragraph numbers as paragraph numbers are repeated in the specification) as follows:
“Seen here such tentative and standby designations ‘GHlACC6da3mujattia38@ gmail.dad’, ‘GHlACC6da4mujattia38@ udaps.dad’ as the digital' address fill-in would seem to fit to tee and every other alphabet letter the need for precise addressing to seek out such location. Just as well in the coordinative vein to pump in that of two possible alternates in seeking to be a final pick is what is ‘GHlACC6dp3mujattia3838.dip’ or ‘GH1ACC6dp4mujattia3838.ppd’ as a digital pinpoint 11 format finalist of the same GPS coordinates set is ably as well tailor made to form the apparel and accessorize the drone phenomenon which is in vogue at present. If a call comes for more brevity to this digital address/pinpoint it is noteworthy that the plain peering down the such path to the future the drone will be for aerial to ground tasking what the telephone was for ear to ear communication in which advance will continue for which the UDAPS program/app is there to help pave and seal such fortuitous way to a dream fulfilled.
Positively, these paired set of formats where brainstormed with astounding duality sounding on monopolizing the GPS coordinate conversion to user friendly alpha-numeric phrasing with geo-code. Forever then such is a formulation and an expansion model that is very fit for the times. As must such geo-code as intended is set to incorporate that of denoting country, city and district along such-where imagine then as other sites which might focus on ‘location identification’ but for which another user party-in initially perusing over such identifying moniker of such a specific location would leave that person at a wonder to know immediately where on Earth the location is located!
Decidedly, the UDAPS platform had been created to contain a very robust designation arrangement that all hinges on the GPS coordinate sub processing output to make such as friendly as reciting an email-however allowing another party whom would be given such assign to recognize instantly where the place is. As rehearsed all throughout this piece an ‘address’ in it classic sense once written on a piece of paper somehow someway must allow the rational viewer of such to be able to identify roughly where on Earth such point lies. Descriptive terms substituted for the GPS coordinate points (which themselves in a output configuration do not give a clue as to where the intended location is) such ersatz ‘address’ which had been converted from such geodesic prompts-absent some geographical references would not meet the bar of geographical recognition and fails at being a valid ‘address’”
A clearer understanding is gleaned with reference to charts provided in the accepted specification which have been subsequently later provided by the applicant in colour. I reproduce the colour version of the charts below for ease of interpretation.
Turning first to CHART B which is represented by the first two depictions below, a digital address format is presented. This digital address is generally a codification of the location of a geographical place which includes various codes representing location information in the form of the “geo-code”. This geo-code is accompanied by a username that is user selected. Following this is the “@” symbol that is used as a standard format constant. The “@” symbol is followed by the phrase “UDAPS” which appears to be a reference to the addressing scheme provided, this phrase further followed by an extension (for example “.dad”) that along with the phrase “UDAPS” is also a format constant. Altogether, the information represents a particular address that may be a general address representing a larger location, within which more specific locations may exist. The user selected name may be substituted with the name of a particular location (e.g., “independence arch”) if there is a desire for the location to represent a geographical place which includes a landmark as opposed to representing a geographical place associated with a person. It is clear that the codification is used as a representative substitute for a geographical coordinate, that representation including some indication of the “nature” of that location.
Of note is that the specification does not envisage any “email-like” function of this UDAPS codification. The use of the “@” symbol appears to be for the purpose of presenting a codification that looks similar to an electronic mail address. CHART C is similar to CHART B but instead it does not use the “@” symbol or the UDAPS phrase, and this is to present a format that appears more like a website. For this format, a different terminal format constant is proposed as a “.dip” or “.ppd” designation. What I consider can be clearly drawn from the discussion above is that the UDAPS codification platform appears to be “clothed differently from all others in terms of this GPS conversion theme”, as noted in the specification. The specification emphasises that the platform provides a “user friendly phraseology” that may be more appealing than for example what3words®.
Finally, also present in the specification is the discussion of an application (“app”) for creating the UDAPS codifications. Steps are discussed that involve downloading the app, entering GPS coordinate locations and having these converted to a suitable digital address or digital pinpoint. Touch screens are discussed as being used to implement the application with 6 different screen pages presented in the specification as follows:
1) “Selection of Desired UDAPS Platform Tasking Operation User Would Like to Explore--Screen 1
2) Digital Address/Pinpoint Assignment &Designation, Check on Utilities-Cable Status and/or Browse Directory Screen 2
3) Verification by a Operation Administrator of Claimed Routing by Delivery Person or Courier-Screen 3
4) Confirmation of What Is the Intended Digital Address/Pinpoint by Scanning Placard or Encased Housing Screen 4
5) Navigation Prompting for Digital Address/Pinpoint Location and/or Browse Screen#5
6) UDAPS Program Geared Towards Desktop/Laptop Use with DRONENAVSTAT-Screen #6
As for the screen selection on each one of such pages here it becomes a matter of the most basic just point and click to the flashing cursor in which a first grader would get it right on the first go. Emphasis is placed here in alerting users that the need not be computer savvy-but only minimally literate to operate the UDAPS platform through the facile flipping across the fun-filled pages of the program/app.”
As I have already noted, the specification contains much commentary, this being all summed up in the closing paragraph as follows:
“When seeing such entire saga here from a scope of its totality it may not then fare so much swell again as a fiery conflagration of rebuke is set to take place. Sagaciously, it must be said that fire and ice are like truth and falsehood where one must give way to the other. This in which that perpetrators of the attempted IP theft-who see themselves as perhaps being deities among those of dire straits living in privation, are out to soon to be befallen by a most embarrassing fall from grace as if a Greek tragedy or better yet of that of almost Dickensian proportions. Such being where it was a far, far better thing that the applicant had set out to do for the 3rd World than what Vokacom® was hell bent to do for the sake of its own selfish desires. So it is then- it would take a wintery Olympic leap of faith to even consider that the Vokacom® group had invented, innovated or even had on its mind the digital address concept until the parties connected to the entity caught a glimpse of the applicant's Power Point® presentation and took to plagiarism with no compunction or hesitation.”
In traversing the specification, I sought to identify what appeared to be the key information that encapsulated the essence of the invention. Prior to the hearing, the Mr Abdul-Malik was asked whether the following was in agreement with what he essentially saw as the invention. Correspondence to Mr Abdul-Malik read as follows, to which Mr Abdul-Malik did not appear to specially respond in his submissions:
“To assist the hearing officer further, you are also invited to specifically comment on what you consider to be the key aspects of the invention. The specification as originally filed appears to contain content related to the context of the development of the present invention however it appears that the key aspects of the invention can be summarised like the delegate in the third examination report being:
· Using an app on a computerised device to create a ‘“digital address’ in a format like an email address using different special characters. The digital address is an alphanumeric geocode that uniquely identifies a particular geographic coordinate by virtue of the included geocode (for example [CHART B and CHART C])
· The alphanumeric geocode is a specific alphanumeric encoding converted from a supplied geographic coordinate
· The digital address is presented on a placard suitable to be affixed at a geographic location, for example a property or a drone landing pad.
· The placard also includes a SIM - card type chip that may be used for GSM location triangulation.”
The claimed invention
The specification, as presently proposed to be amended on 1 March 2022 includes the following claim 1 which corresponds to the claim that was before the examiner (NOTE: I have added a number of spaces to various words for ease of reading but have not indicated this in the version reproduced below. I have also underlined some text for reasons that will become apparent):
A system of at least one computer device-or human hand, implemented platform comprising:
a) a server, base station, desktop, laptop, tablet, or handheld mobile phone as processor transposing Global Positioning System coordinates herein claimed by terms into alphabetic with numeric expressionism with no particular language in mind where all the world may universally indulge such by utilizing a 3 phased geocoding scheme;
b) said device of Claim 1(a) -by prefixing in automatic fashion onto virtual placeholders of alphabetic and numeric codes that give to the user cognizance of approximate geographic placement in terms of country, ocean sea. city and state/region therein such in Phase 2 is to see the suffixing of the 26 upper case along with the 26 lower case letters of Latin script, interposing with repetition a set of 10 that is 0-9 of the Hindi-Arabic number system and again at least `one of six special characters that is that of _, !, #, $, & or @ all in a plurality of alphanumerically geo-coded phrases with permutation enhanced-exponentially-wherein synthesis of the linear comes a single alphanumeric phrase as the output that in Phase 3 links with herein claimed ICANN issued web extension - dga or dgp;
c) said device as recited in Claim 1(a) revealing such end-product is to be tagged to a plurality of address and geo-point spots as the newest art of GPS conversion to alphanumeric phrase geocoding and hence lies the innovative step underpinning the sub-claim here:
d) said device as recited in Claim 1(a) as processor capable of GPS in utility delivery reading & gauging along with property title abstracting in innovatively linking device data exchange to the land on user’s ingress in geofencing perimeters made in polygonal shapes in applying to ray casting/winding casting algorithm;
e) a situation with least two below claimed pieces of apparatus- placard -for digital addressing, and the plate in there each performing at least three operations that includes a plurality of activities disclosed herein of the Complete Specification that in which touches on digital addressing as fielded in but not limited to IPC to G01S19/14,G06F16/29 H04W6400L, digital geo-pointing (pinpointing), location placement i.e. location identification as fielded but not being limited to IPC classification cache G08G/0069, G05D1/0016, B64C2201/127and B64 C2201/123 and utility reading & gauging along with property title abstracting features as fielded but not limited to IPC classification of G0122/00 G0 F15/003 H0W4/021, H04W68/00 G06Q50/16 groupings;
f) a primary device that is situate as fixed at some location or structures is accessible by scanner equipped/virtual key possessing third party in overseeing capacity to verify all postal mail delivery of bar/QR codes in digital addressing mode of UDAPS operation;
g) a device that is a variation of the said device recited in Claim 1c that is fixed by able to be shifted in placement of open field setting has a logistical purpose as well as technical function that remains accessible by interactive with base station personnel and as well with drone/quadcopter craft in data exchange and aiding the tasking:
h) a placard as seen in Figure 2 an apparatus integral to said system on said primary device as recited in Claim 1c is vertically affixed as mounted interactive gadgetry as well as address signboard is integral to inter alia the combinative geo-coding process;
i) said placard according to Claim 2(a) of a vinyl body fabricated with Plexi glass resistant to all outside elements containing a battery, computing hardware and: all where again on the face side panel barcode/ QR code reader and Geofence enabling in GPS mode;
j) said placard as recited in Claim 2(b) is also set handle data tapping/input and human guidance to and fro of the structure that all of such underlying activity is emanates from the geocode where all where logistics-wise such is vital to efficient delivery of postal mail and other deliveries to said structure for which this lies as the spinal cord or vertebrae of the digital addressing and utility delivery reading & gauging reading along with property title abstracting features;
k) a plate as seen in Figure 1 is a variation of said placard as recited in Claim 2a the said largely horizontally aligned interactive gadgetry where such is essential to navigational ease, path routing accuracy. efficient tasking of drone/quadcopter craftl) said plate as recited in Claim 2(d) is fabricated of a polyurethane body resistant to all outside elements and contains a rechargeable solar battery and a permanent internal clock: all where again there is on the face side panel barcode / QR codec reader;
m) said plate according to Claim 2(d)is set for data tapping and navigational connectivity in remotely placed sorties and the sort; all again on the logistical plane there where said plate is to serve as a neat hive-nest on the drone/quadcopter non claimed here landing pad works as the vertebrae of all said drone-craft activity.
I will seek to approach this claim in the context of the specification as already discussed above as it is hardly an overstatement to say the claim is difficult to construe. I will deal with specific issues of amendment allowability and clarity of the claim in detail later in the decision.
Firstly, the claim appears directed towards a system that may use a computer device or human hand to implement a platform. In a general sense it is clear that the claim seeks to describe this platform as being the UDAPS platform discussed in the specification. At feature a) a computer processor converts global positioning system coordinates into a “3-phased geocoding scheme” further described in feature b). Feature b) appears to be an attempted description of the form of the UDAPS code that is represented in Chart B and Chart C. Feature c) appears to simply discuss virtues of the UDAPS coding and does not appear to be materially impacting the scope of the claim beyond the use of the coding in b) as a tag/identifier for geographical locations. Feature d) appears to express the processor of feature a) as being capable of sharing some kind of data in relation to a geofencing function, although such linking, and function is not entirely clear.
Feature e) refers to a placard and a plate which perform at least three operations in relation to digital addressing. These operations are not plainly apparent and the references to the specification and IPC classification marks are not helpful in further confining the scope of the claim. Following this feature, at f) a further device is in some way used in the verification of postal mail using bar or QR codes in cooperation with UDAPS. In this sense it appears that the claim may be seeking to pick up on the described idea of placing a UDAPS code on a placard with other information including a bar code, which may be scannable by a person with a device in the presence of the placard. Feature g) appears to further characterise a device bearing a UDAPS code as being movable to various locations but remaining in some way interacting with base station personnel and a drone/quadcopter craft. This appears to seek to characterise the inclusion of a drone landing pad that may communicate in some way with a base station.
Feature h) again picks up on the placard similarly to feature e) and appears to discuss its vertical orientation including geo-coded address information and interactive gadgetry which I assume may include a SIM card. Physical features of the placard are discussed at i) in that it is said to be made of vinyl and plexi glass, and that it includes electronic componentry in addition to bar code type information and geofencing enablement. Feature j) further discusses the placard seemingly suggesting it’s use as a modifiable display of data that can be used as key addressing tool for mail and other delivery system.
The claim then refers to a plate at k) which is said to be in Figure 1, although I cannot decipher a plate in this figure. This plate seems to be performing the task of a drone landing pad with horizontal mounting to function accordingly. Physical characteristics and function of the plate are discussed at l) and m) and these appear to be largely reflective of the physical form and function of the placard, although used in a context of drone landing and not for example, mail delivery.
To summarily bring my understanding of the claim together, it appears that claim 1 seeks to claim the computerised generation of a UDAPS code for a geolocation and present this on a number of placards and drone landing pads to assist in geolocation. The placards may be mounted vertically and serve to assist in delivery of items such as mail and may include other information such as barcodes. The placard may also include computerised technology to enable communication outwardly. In a similar manner drone landing pads will also include computerised technology and bar code information. In associating location identifying UDAPS codes with placards and landing pads, a network of accessible locations may be provided to enable improved logistics. At such a broad level, the claim is consistent with that which I have already discussed in the specification. This also appears broadly consistent with the key aspects of the invention discussed above at paragraph 24.
For present purposes, it is sufficient to present and discuss currently proposed claim 1 only, with similar language used in claims 2-4.
SUMMARY OF PATENTEE’S SUBMISSIONS
Mr Abdul-Malik has provided substantial written submissions totalling 68 pages with an additional record of the email correspondence with the examiner. Much of the submissions constitutes commentary of the innovation patent application, granting, and examination process, along with commentary regarding development of the invention itself. I will not address this content in any particular detail because it is unrelated to the outcome of my decision.
It is clear that a number of Mr Abdul-Malik’s frustrations stem from the nature of the innovation patent system, and I appreciate the difficulties that have presented for Mr Abdul-Malik. As a brief overview, the innovation patent system was introduced as a second-tier patent right in 2001. As noted in the Patent Examiners Manual of Practice and Procedure at 2.31.1.1, the system enabled applicants and inventors to obtain quick and inexpensive patent protection when compared to standard patents. This was achieved in two main ways:
- For innovation patents, grant occurs without examination, unlike standard patents where examination is a prerequisite for grant. Examination of an innovation patent (and the associated costs) only occurs when initiated by the patentee, third parties or the Commissioner. However, it should be noted that, in contrast with standard patents, the grant of an innovation patent does not bestow any enforceable rights and privileges upon the patentee. This only occurs after examination has been carried out and the innovation patent is certified in accordance with the Act. Thus, even if patentees threaten to enforce their rights before certification, this is considered to be an unjustified threat. Therefore, the crucial role of examination in the patent system is retained.
- It is not necessary for an innovation patent to be in respect of an inventive step, as is the case with standard patents. Rather, an innovation patent need only be in respect of an innovative step, in accordance with the Act.
It is also the case that the term of an innovation patent is limited to 8 years, and the specification is limited to a maximum of 5 claims.
Following much analysis of the system’s effectiveness, phase out of the innovation patent system began on 25 August 2021. To the extent that Mr Abdul-Malik contends inappropriateness of steps taken in examination to refuse to certify an already granted patent, I simply note that this is a consequence of the nature of the innovation patent system as defined in the Act. The inability to enforce a granted innovation patent until such time that certification occurs has always been and continues to be a well-known and well publicised feature of the innovation patent system. I appreciate that difficulties in understanding the complicated workings of a patenting system such as the innovation patent system are elevated in the case of a self-represented filer, of which Mr Abdul-Malik is one. It is regrettable that Mr Abdul-Malik has not to date sought assistance from a patent attorney, or at early stages sought further assistance or information from IP Australia. In this context Mr Abdul-Malik notes:
“To these ends if Patentee would have been aware beforehand of the filing that IP Australia had such off beat definition of “grant[ed]” he would NOT followed in submitting such papers with such registry and was to seek out another patent office.”
On this I briefly note that a patent is only enforceable in the jurisdiction in which it is granted.
A further aspect of Mr Abdul-Malik’s submissions is a focus upon the what3words® concept which I have discussed above. Mr Abdul-Malik makes clear that he considers his UDAPS platform to be an improvement upon what3words®. He refers to granted Australian standard patent AU 2014255510 entitled “A Method and Apparatus for Identifying and Communicating Locations” in the name of What3words Limited. Without going into any details regarding the nature of the invention in that patent specification I note that it is a matter of public record that a re-examination report has been issued in respect of that patent. All this aside, I consider it clear that Mr Abdul-Malik’s patent advances the state of the art when compared to AU 2014255510 in that the UDAPS platform and coding itself as represented in CHART B and CHART C is clearly a leap beyond what3words®. A question must be answered however, as to whether the nature of this invention is suitable subject matter for the grant of a patent (i.e., whether there is a manner of manufacture present).
Regarding the request for comments above at paragraph 22, Mr Abdul-Malik’s submissions do not specifically address these points. However, I note that the general focus of his submissions is upon the nature of the UDAPS platform as an improvement to known location identification methods. Thus, Mr Abdul-Malik’s focus appears to essentially be upon the first two elements of the described invention that I identify above at 24. Regardless, I will seek to address the entirety of the content of the specification including the nature of the placard or drone landing pad and their potential use. I will also present specific submissions from Mr Abdul-Malik regarding the relevant grounds in the examination report.
As a final note, Mr Abdul-Malik places emphasis in his submissions upon circumstances of the selected classification marks that have been applied to his patent application. On this I note that patent classification systems are simply a hierarchical tool designed to help group similar inventions in a uniform manner. Classification marks that are applied to a patent application in accordance with the IPC (International Patent Classification) or CPC (Cooperative Patent Classification) systems are of no impact on the patentability requirements before me for consideration. I will not address this further in the decision.
Finally, Mr Abdul-Malik makes many remarks in relation to the examiner and other delegates of the Commissioner of Patents at IP Australia. I appreciate the frustrations of Mr Abdul-Malik in the circumstances, but ad hominem statements made against these delegates are not helpful. I shall only consider whether the innovation patent is in a state such that it can be certified.
SUMMARY OF ISSUES
After gaining an understanding of the invention and the nature of Mr Abdul-Malik’s submissions it is possible to summarise the issues that are for me to consider.
Firstly, the specification as proposed to be amended contains a number of differences to the material originally filed. I must consider whether the amendments add any new matter as an amendment adding new matter to a specification is generally not allowable. Secondly, the claims are very difficult to construe. A claim must be clear to be considered acceptable by an examiner and to allow proper assessment of the claimed invention. I will thus consider whether a clarity objection should be applied to the claims and whether there are any other problems with the claims. Thirdly, I will consider the subject matter of the present invention and consider whether the claims could be directed towards a manner of manufacture. Finally, while novelty and innovative step are also relevant grounds that were discussed by the examiner in his latest report, I will not comment on these substantively the reason for which will become apparent in the light of my findings in respect of the other issues.
ALLOWABILITY OF AMENDMENTS
Under section 102(1) of the Patents Act, an amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in relevant filed documents, including the complete specification as originally filed. The Patent Examiner’s Manual at 2.23.8.1A explains the meaning of this provision in that an amendment must not add new matter that a hypothetical skilled person could not directly derive by reading the relevant documents. In other words, material provided by amendment must be clearly and unambiguously disclosed either explicitly or implicitly. The examiner noted in his most recent examination report, the following features of claim 1 as not being disclosed in the specification as filed:
·Part (b): Web extension dga or dgp
·Part (d): ray casting/winding casting algorithm
·Part (e): References to IPC symbols including but not limited to G01S19/14
·Part (f): Virtual key
·Part (j): Data tapping and “spinal cord or vertebrae”
·Part (l): rechargeable solar battery and a permanent internal clock
These elements correspond to elements I have underlined above at my introduction of claim 1, and there are also further elements I have underlined which do not appear to have explicit or implicit basis in the specification as filed. This also includes some equations in claim 2 that I have not shown. There are further elements in other claims and aspects of the description that appear to have the same issue but for brevity I will not list them here. I summarise key elements of Mr Abdul-Malik’s response:
“Indeed [the examiner] simply has a computer check such Response/Response Letter packet and amend section checks for new words and phraseology only to get the gooey gumption to declare such new matter but there is not prohibition on using new work that has linkage to already broached subjects, facts and issues.”
“…Indeed there lies in Claim 1 Sections (a)-(f) there is almost exclusive pleading of the
geo-coding in terms of digital addressing/pinpointing some 51 times. Similarly so there is
peppering of such subject matter in Description Pgs 1-19. With respects to utilities reading/gauging there is the broaching of the activities in Claims 5 (f) at least twice. This
in which paralleled in mention with Description Pg. 18 Par 28 Sect. (b) And again
Abstract touched on at least once. Lastly there is outlining of ‘property title’ abstracting
including holographic hologramic wills or ‘abstract[ing]’ in Claims 5 (g) at least twice
otherwise in Description Pg.17 Par 26 Pg. 18, Par 27, and Sect. 4B as seen. This is to say
that the voluntary amendments do not present ‘new matter’ but rather a ‘clarification’ –
that ironically [examiner] himself maintains are ‘vague’.”
“…In the clarification process terms such ‘ray casting/winding casting’ admittedly were not in the original submission however ‘geo-fencing’ which such phraseology comes across as underlying function of such activity.”
“…Here the inclusion of formulae and equations go to the corresponding written text to the same effect that such linearization. This which embodies of as to how the methods are to be carried out so as to arrive at such tasking end product. In other words a formula or
equation turns the written request into a ‘recipe’ figuratively put but being put as a term
in computer speak is that that of ubiquitous algorithm. Whereas the scope of subject changes is not here but rather such gives clarity and standardizes the methodology such. One that a person skilled in a given art could readily integrate the means of manufacture to bring the patent to life.”
The amendment also seeks to amend the title and abstract which are not allowable amendments. A patent request cannot be amended to change the title after grant, and an amendment to the abstract is not permissible in accordance with regulation 10.3(2) of the Patent Regulations.
I interpret the general approach to Mr Abdul-Malik’s submissions as suggesting that the amendments are for means of clarification of the claims and are within the conceptual scope of the features already presented. While this may be the case, it is important to note that subject matter provided in an amendment must be clearly and unambiguously disclosed in the relevant filed documentation. I cannot view the present amendments as meeting this criterion.
With reference to the examiner’s objection, the specification does not mention the extensions .dga or .dgp. I cannot see how these are directly derivable from the disclosed extensions. There is no mention in the specification as filed of a ray casting or winding algorithm and I cannot see a clear logical basis to accept that the person skilled in the art would directly derive this concept from the broad idea of geo-fencing. The specification as filed does not make mention of IPC marks in the manner proposed by the amendment nor other features identified in the examiner’s objection. I have also identified features of claim 1 as proposed to be amended relating to a code representing an ocean or sea, and reference to a base station. Similarly, I cannot find a disclosure explicit or implicit of this material in the specification as filed. It is not enough that there simply be a linkage between the new matter and already disclosed concepts. It is also not enough for an amended feature to be an embodiment of a broader idea. The Act requires that there be no matter added by amendment that is not clearly and unambiguously already disclosed in the specification as filed. This threshold is not met in the context of the present amendments.
It follows that I consider the examiner’s objection as to the allowability of the amendments is appropriately raised. For simplicity I will proceed with my further analysis on the basis that these newly added features do not form part of the claimed invention. On the basis of my efforts to seek to understand what may be intended to be claimed, it appears reasonable to suggest that it is possible that an allowable amendment could be proposed with a clear claim that includes at least as a starting point, the general features discussed above at paragraph 24.
CLAIM CONSTRUCTION
Legal Principles
The correct application of the rules of construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). To paraphrase, if one can work out whether what they are doing with their product or method is inside of the scope of the claim, then a claim can be considered as clear. Importantly, the description and drawings can be useful for resolving ambiguity in the wording of a claim.
Examiner’s objection to clarity
I summarise the examiner’s objection under the ground of clarity below regarding claim 1:
“I will now list some of the clarity issues that I can identify in the claim. As per the previous report, it is likely that this list will not be exhaustive.
Claim 1
·‘or human hand, implemented platform’ has no clear meaning.
·‘Where all the world may universally indulge such by utilizing a 3 phased geocoding scheme’ does not serve to define the claim and results in a lack of succinctness.
·There is no mention of ‘phase 1’ which results it being unclear what phase 1 entails.
·The claim does not clearly define the three phases and how they serve to produce a digital address, for example, see (1)-(3):
·(1)‘suffixing of the 26 upper case along with the 26 lower case letters of Latin script’. Suffixing to what? How many letters may comprise?
·(2) At times it is unclear whether the number 26 and 10 are referring to the number of characters to be drawn from a set, or whether it is an indication or the number of characters to be placed into the phase 2 portion of the digital address. Does the claim place any limitation on the length of the phase 2 portion?
·(3) How are the strings from phases 1, 2 and 3 combined? The language is vague.
·‘permutation enhanced-exponentially’ is unclear.
·Part (c) refers to ‘such end-product’ but no end product was previously defined in the claim; ‘tagged’ is not understood.
·‘and hence lies the innovative step underpinning the sub-claim here’, as well as the commentary relating to IPC symbols does not serve to define the claim and results in a lack of clarity and succinctness. As mentioned in the previous reports, commentary that does not serve to the define the claim clearly must be kept out of the claims.
·Part (e) defines ‘a situation’. It is not clear what this means; Moreover part (e) does not appear to serve to define the innovation at all.
·The claims refer to the specification and Figures. This is not permissible. The claims are read in view of the specification and drawings, but it is not permitted to explicitly refer to them to define the innovation.
·‘digital addressing mode’ is mentioned but not clearly defined within the claims
·‘a device that is a variation of the said device recited in Claim 1c’ is vague and unclear
·‘is integral to inter alia the combinative geo-coding process’ is another example of commentary that should not be in the claim.
·Claim 1 refers forward to claim 2. This should be avoided as it can result in circular appendences. For example, claim 1 refers to claim 2, and claim 2 refers back to claim 1. This results in a lack of clarity.
·‘data tapping’ is not understood.
·‘for which this lies as the spinal cord or vertebrae of the digital addressing and utility delivery reading & gauging reading along with property title abstracting features’ is not understood. Metaphorical language should be avoided.”
Consideration of the scope of the claims
Mr Abdul-Malik’s submissions do not appear to address each of the issues identified by the examiner under the ground of clarity. An understanding of Mr Abdul-Malik’s position is gained from the following extract of his submissions:
“When a claim is considered to lack of clarity it is not sufficient to merely object that the claim is not clear. The objection will generally need to explain the problem with the meaning of words or phrases or with determining scope of the claim. In the 3rd Examination Report [the examiner] uses this ‘lack of clarity’ assertion as a weapon for which is to further the Deceit of (Fraud in) the /Court all where he feign not understanding contrive phrase that common sense and seeing such phraseology in preceding and following syntax makes such easily comprehensible.”
In making this submission Mr Abdul-Malik refers to the Patent Examiner’s manual at 2.1.6.2.1 correctly identifying the need for the examiner to explain the reasons for a lack of a clarity objection. Turning to the claim itself I note my difficulty in construing the bounds of the claim. I summarised at paragraph 31 above what I believed to be the general subject matter of claim 1 taking broad liberties as to the interpretation I was to place on the difficult language of the claim. I emphasise that the scope of what may be an attempted reference in the claim to the UDAPS platform at 1b) is not clear as to what features of this platform as presented in CHART B and CHART C are present in claim 1. The examiner touches upon these difficulties with explanation in a number of the dot points in his objection.
Mr Abdul-Malik does not appear to respond with specific submissions addressing the range of concerns of the examiner. I concur with the reasoning provided by the examiner as to a lack of clarity of claim 1 in particular with reference to feature 1b) which is a central aspect of the invention as put forward by Mr Abdul-Malik. The claims and specification are worded in a manner that includes much commentary and features that do not appear to provide a limitation upon the claim. It is simply the case that on balance, a person skilled in the art would not be able to work out with sufficient accuracy, whether what they propose to do would fall within the scope of the claim.
I return to my earlier construction of the claim in the context of paragraphs 24 and 31. From a reading of the specification it appears that the following forms the key aspects of the invention:
1. Using an app on a computerised device to create a “digital address” in a format like an email address using different special characters. The digital address includes alphanumeric geocode that uniquely identifies a particular geographic coordinate by virtue of the included geocode (for example CHART B and CHART C, specifically in the format of the type <alphanumeric geocode>.<user chosen username>@<digress phrase>.<digress extension> which uniquely identifies a particular geographic coordinate)
2. The alphanumeric geocode is a specific alphanumeric encoding converted from a supplied geographic coordinate
3. The digital address is presented on a placard suitable to be affixed at a geographic location, for example a property or a drone landing pad.
4. The placard also includes a SIM - card type chip that may be used for GSM location triangulation.
Also, after reviewing proposed claim 1, I arrived at a general characterisation of the computerised generation of a UDAPS code for a geolocation and presentation of this on a number of placards and drone landing pads to assist in geolocation. The placards may be mounted vertically and serve to assist in delivery of items such as mail and may include other information such as barcodes. The placard appears to potentially also include computerised technology to enable communication outwardly. In a similar manner drone landing pads appear to potentially also include computerised technology and bar code information. In associating location identifying UDAPS codes with placards and landing pads, a network of accessible locations may be provided to enable improved logistics. To arrive at this construction, I have stepped outside of the precise wording of the claim due to the nature of its drafting. I consider that the manner in which the claim is drafted would result in excessive difficulty in interpretation for a person skilled in the art. In this sense, while an idea of the invention can be gleaned from the specification, this understanding appears to go well beyond a mere reference to the body of the specification to clarify terms in the claim.
I agree with the examiner that the claims are not clear. For completeness I provide the following brief comments with respect to each of the examiners dot points for claim 1.
·With reference to the discussion of human hand implementation I can give clear meaning to the claim by considering that a computer and human hand work together in some way to facilitate the subsequently defined features because a computer device is explicitly included as a limitation in feature a). In this sense the feature is not materially limiting upon the claim.
·Similarly, the feature “where all the world may universally indulge such by utilizing a 3 phased geocoding scheme” appears to be mere commentary that does not limit the claim aside from providing antecedent to a 3 phased geocoding scheme. While such drafting should be avoided, I do not consider it gives rise to an issue of unclear claim scope.
·The examiner suggests that there is no mention of “phase 1” which results it being unclear what phase 1 entails. I agree, the relationship between the phases and the content of the phases is not clear. It may be the case that the claim could be clarified by substitution with features like points 1 and 2 above in paragraph 56.
·I agree that the claim does not clearly define the three phases and how they serve to produce a digital address. In particular:
oA first difficulty is that it is not clear what is meant by “suffixing of the 26 upper case along with the 26 lower case letters of Latin script”. What is being suffixed to? What is the size and nature of this element of the scheme? Any attempt to resolve this question results in a reading into the claim of specific features exemplified in the charts.
oI agree with the examiner where he notes “At times it is unclear whether the number 26 and 10 are referring to the number of characters to be drawn from a set, or whether it is an indication or the number of characters to be placed into the phase 2 portion of the digital address. Does the claim place any limitation on the length of the phase 2 portion?”
oThe examiner also questions “How are the strings from phases 1, 2 and 3 combined?” In this regard, I agree with a general assertion that from a reading of feature 1b) it is generally unclear as to the structure of the geocode scheme. Clarity may be obtained by reference to a specific structure as shown in point 1 in paragraph 56.
·The examiner suggests the phrase “permutation enhanced-exponentially” is unclear. I appreciate the observation of the examiner. In the present context this feature is seemingly referring to the variety of combinations of characters that give a large number of permutations in the geocoding scheme. This appears to be a statement of qualitative aspects of the scheme that arise from the particular format and structure of the scheme, the construction issues of which I discuss above. Regardless, I cannot give a usefully clear meaning to this phrase with reference to the known mathematically concepts of permutation and exponential growth.
·Feature 1c) refers to “such end-product is to be tagged to a plurality of addresses and geo-point spots”. No end-product is previously defined in the claim so the claim lacks strict antecedence. It is not clear what constitutes a specific end product, for example, whether it is single or multiple 3 phased geocode addresses and what it means to be “tagged” to a plurality of addresses. For example, is this intended to mean the geocode addresses are simply associated with physical addresses or are they actually located physically on such addresses?
·The examiner makes reference to the terminology “and hence lies the innovative step underpinning the sub-claim here”, as well as the commentary relating to IPC symbols. While the former commentary does not appear to limit the claim in any way, in the present claim at feature e) reference is made to “three operations” that includes a plurality of activities disclosed in the complete specification that touch on “digital addressing as filed in but not limited to” various IPC marks. In this context it is not clear what these three operations may be.
·In general feature 1e) defines “a situation” which appears to involve a placard and a plate used in the context of the three operations discussed above. For the reasons above it is not clear as to the nature of this “situation”.
·The claims refer to the specification and figures. I agree with the examiner that this is not permissible as section 40(3A) of the Patents Act states that a claim must not rely on references to the description or drawings unless absolutely necessary. I see no necessity in the present circumstances. This is not an issue of clarity as such, nonetheless it needs to be addressed.
·Feature 1f) refers to a “digital addressing mode” which is not discussed in the claims. Furthermore, it is noted that no particular modes or structures of the scheme are discussed previously in the claim, and this leads to a general lack of clarity as discussed above. It appears that the claim may be seeking to refer to the features of the digital address format in CHART B however the claim remains unclear as to the limitations placed upon the geocoding scheme and the relationship with various physical devices.
·Feature 1g) refers to “a device that is a variation of the said device recited in Claim 1c” and I agree that this is unclear because it is not clear what the features of said device are such that one could define a variation, and for that matter whether any variation would be within the scope of the claim.
·The feature at 1h) of “integral to inter alia the combinative geo-coding process” is another example of commentary that on my reading does not impose any meaningful limitation on the claim.
·It is the case that Claim 1 refers to a placard or a plate in referring forward to claim 2 but a placard or a plate is not present in claim 2 so it is not clear what is intended by this reference. Circularity of reference of claim 2 back to claim 1 amplifies this issue.
·The examiner points to the phrase involving “data tapping” as not being understood. More specifically the phrase is “said placard as recited in Claim 2(b) is also set handle data tapping/input and human guidance to and fro…”. Tapping is a word apparently used here interchangeably with input, and on this basis it may be that the feature is simply intended to refer to the placard being capable of some way of handling data input. However it could be argued that tapping is the opposite of input, i.e. output. Therefore, the feature is not clear and the specification does not resolve this issue.
·The examiner notes that “‘for which this lies as the spinal cord or vertebrae of the digital addressing and utility delivery reading & gauging reading along with property title abstracting features’ is not understood. Metaphorical language should be avoided.” I agree that the wording of the phrase is not readily deciphered into identifiable features, and it is unclear whether it is mere commentary or an attempt to limit the claim.
This is not the full extent of clarity issues across the claims identified by the examiner, but for present purposes focus upon claim 1 is sufficient. In considering the ground of manner of manufacture I will proceed with my general understanding of the invention presented in claim 1 so as to guide any potential amendments to the claims.
MANNER OF MANUFACTURE
Legal Principles
The High Court stated in National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252 that for patentability to be found there must be “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 also makes clear at 268 that that a patentable process should produce “either immediately or ultimately, a useful physical result in relation to a material or tangible entity”, or that there should be a physical thing “brought into existence or so affected as the better to serve man’s purposes” (at 270).
These statements are reflective of the ideas that the following have traditionally been regarded as non-patentable subject matter:
·Discoveries with no means of putting them into effect
·Mere ideas
·Mere schemes or plans
·Scientific theories, and
·Mathematical algorithms
In Grant v Commissioner of Patents [2006] FCAFC 120, the Full Federal Court affirmed that “Business, commercial and financial schemes as such have never been considered patentable” and pointed out that patents have been refused for methods of calculation, theoretical schemes, including business schemes and abstract plans. Examples of mere schemes or plans are identified in Rhodes’ Application (“Rhodes”) [1973] 9 R.P.C 243 where reference is made to the decision in W.’s Application (1914) 31 R.P.C 141 where a certain manner of using buoys for navigation was found as not being for a manner of manufacture:
“I cannot see that it is an invention that involves any manner of new manufacture at all. It is nothing but an arrangement of well known forms of signals so that the position of any one of such signals may be known by a number painted on its face. It appears to me no more than if he were to say: 'You may know if a buoy is a buoy outside a particular line of coast by painting the buoy red and whether it is outside another line of coast by painting it blue'. It is in fact, doing nothing but so fixing these buoys as that they show, by their position, sound, or appearance, where they are. In my opinion that is not the subject of any new manufacture. It appears to me that it clearly resembles the case which I put to Mr. Justice of the system of numbering houses and streets in some of the towns of the United States, a system by which you can tell where you are directly you see the number of any street. That does not seem to me to be a manner of new manufacture... Here nothing new is manufactured. Here are the buoys-just as they were before, numbered as they were numbered before. All the applicant does is, he takes a series of known means of directing the sea traffic and denotes it by number or sound, so as to make plain what the position of any such signal or device may be.”
This application was directed towards an invention that involved the implementation of a navigation scheme on well-known articles, with no improvement made to the articles themselves. Such a finding is reflective of the concept of a consideration of the substance of the invention which was articulated by the High Court in D’Arcy v Myriad Genetics Inc (“Myriad”) [2015] HCA 35. The High Court noted at [23] that a “case-by-case” methodology is required, and at [144] that the task of considering manner of manufacture is one to be approached as a matter of substance:
“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.”
To assist in consideration where the invention relates to a computer implemented method, relevant principles (developed in cases Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; (2015) 328 ALR 458 (RPL Central) and Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; (2014) 227 FCR 378 (Research Affiliates)) are those usefully summarised by the delegate in Aristocrat Technologies Australia Pty Limited [2016] APO 49 at [35]. Key considerations include for example: whether the invention solves a technical problem within the computer or outside the computer; whether there is some improvement or advance to computer technology (Commissioner of Patents v Aristocrat Technologies [2021] FCAFC 202); whether there is some improved technical effect; and whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea.
Similar ideas were applied by the delegate in Amsted Rail Company, Inc. [2021] APO 25 to consideration of an invention involving computer technology placed in the context of transportation vehicles. There the delegate was of the view that, where a claimed invention comprises aspects that are both technical and non-technical in nature, the principles that have been established for assessing the substance of computer implemented inventions, may be appropriately generalised to form relevant considerations for non-computerised technical features. At [46] the delegate posed, potentially useful for the present case, considerations such as:
·Does the invention solve a technical problem with respect to the technical features?
·Is there an improvement in the functioning or abilities of the technical features?
·Are the technical features merely used for their generic functions or abilities or are there steps foreign to the normal use of the technical features?
·Are the technical features concerned merely an intermediary or simply provide a context for carrying out a method, but add nothing to the substance of the idea concerned?
Examiner’s objection to manner of manufacture
The examiner’s objection was based upon subject matter in alignment with that identified above at paragraph 24. The examiner focussed upon the first two dot points of this paragraph because this was the focus of the submissions before him and is largely the focus of the specification. The fundamental basis for the examiner’s objection under the ground of manner of manufacture is as follows:
“You mention the ability for a user to select a particular special character or digital address extension, e.g. ‘.dgp’. This amounts to a user preference. As made clear in your submissions and the specification, however, the use of custom domain names, formats and special characters is well known in digital identifiers and widely employed for the purposes of brand recognition or similar. The selection of a specific domain name or format does not alter the way the computer functions, only which particular digital identifier is associated with which data. This does not amount to an advance in computer technology.
Regarding the geocoding, you also mention the number of address permutations or greater accuracy allowed by the present system. I cannot identify any technical aspect of the innovation which provides a more efficient geo-encoding technique, for example allowing encoding of more addresses using less characters or shorter length than previous techniques. Rather, the present application appears to rely on longer addresses or a larger character sets to provide more possible permutations for an address or identifier. The principle that more that an identifier will have more permutations based on the length or character set size is well known and setting these parameters appropriately is an administrative consideration. For these reasons I do not consider the geocoding feature to fall within the category of an advance in computing technology.
You also mention aspects of the innovation related to ‘utility delivery reading & gauging along with property title abstracting’. I cannot find any clear description of how this works, and this includes the technical details. Absent these details I am not persuaded these features contribute to patentable subject matter.
Finally, you refer to the address being more user-friendly. Whether the address is more user friendly is a subjective assessment, and ultimately does not give rise to any technical advantage.
I am not persuaded by the submissions presented, and I thus maintain that the described innovation does not amount to patentable subject matter, as it in substance describes an administrative or business idea.Specifically, the administrative idea is methodology and format for generating unique digital addresses with an included geocode. The format is specific, but it does not serve to provide any new technical advantage and functions only to allow encoding of a GPS location as per any other geocode. This address is displayed or may be read electronically from a placard, however display or providing electronic access to information is not considered to fall within the category of an advance in computing technology.”
Patentee’s Submissions
Mr Abdul-Malik’s submissions are helpful in that they seek to address the specific issues regarding manner of manufacture. The focus of Mr Abdul-Malik’s submissions remains on the UDAPS platform itself, as reflected for example in CHART B and CHART C. I summarise some initial key points of Mr Abdul-Malik’s submissions:
·“…the substantive make up of the patent is that the individual tasking of that of firstly vastly increasing vastly the number of the finest intersection points in such netlike patchwork of imaginary longitudinal and latitudinal line on the globe so as correspondingly ratchet up the number of combinations by and through the Law of Permutation as being a long held mathematical science curriculum specifically by his integrating into the current scheme in the UDAPPS platform numericity, symbols, repetition in character placement upper lower case sensitivity to the current alphabetic only regime for which falls short in alphabetic-only.”
·“Secondly as it relates to utility delivery reading & gauging there lies her substantive
wherewithal in which the utilization of geo-fenced in a virtual perimeter there is rise as a trend of bringing one’s remotely place servicing right to one’s door step and back yard for that matter; then again taking to such new use of an invention therein would see the boom In the operational side effect which the responsible and non-wasteful management of the resource household consumed resources are to have a positive effect the eco-system to make this aspect of the UDAPPS platform worthwhile.”
·“Thirdly as to the title abstracting/protection with the offbeat ideation of some administrative scheme and or business scheme shelved the record here would be there see the; her with both these niches of the UDAPPS platform do enhance the respective tasking operation and again for the electronica enthusiast but also on the microcosmic to proliferate computery in general.”
While difficult to decipher, I interpret these points as suggesting that the invention lies in the scheme of the UDAPS platform which provides benefits such as: a significant number of permutations of coding due to alphanumeric elements; and convenience and avoidance of wasteful operation in the context of service delivery logistics. While the submissions also contain much commentary on decisions of the Federal Court of Australia, I consider the following as best representing Mr Abdul-Malik’s key points regarding specific elements of relevant case law:
·“…the innovation here may be computer implemented or may otherwise not being computer implemented… Indeed once being utilized in the computer implemented framework such would go to vastly improve and ameliorate conductions on global landscape as it as first quicken the tasking process towards the output to exponential proportions… Herewith Patentee opens the door to interpretation of the implemental operation of that has here her this sort of ‘dual mode’ operation in which computer implemented and physically/analogue type invention/innovation that undeniable lies outside of the holdings of the Australian courts in Myriad and Aristocrat [Commissioner of Patents v Aristocrat Technologies [2021] FCAFC 202].”
·Mr Abdul-Malik refers to the Patent Examiner’s Manual at 2.9.2.1 where it is noted that in considering the substance of the claimed invention one must consider the combination of features and whether the substance lies in an individual integer or a collection of integers. He essentially appears to argue that the examiner has not considered the combination of features.
·In addressing whether the claimed invention solves a technical problem Mr Abdul-Malik submits: “In all actuality the innovation here while solving the technical shortcoming to the point of dysfunction of the state of the art that became a head scratcher amongst geodesic experts there comes coincidently as a side effect would comes as such appeasement of the public of the well adverted situation with what3words in such ever-watching segment is assured that the men and women of science are capable of remediating such through innovation of an Earthly problem”.
·In addressing whether a computer adds to the substance of the invention he notes: “In all such computing machine is not designated intercessor as have no other choice to use such but it may play the role of messiah from the mundane tasking labors of executing such by human…”.
The first and last points appear to suggest the use of a computer in the present invention as a tool for automation. The second point correctly identifies the need to consider the combination, which I will endeavour to do below. The third point is relevant to a key consideration of the nature of the problem solved by the present invention.
Consideration
As I noted above, in considering the ground of manner of manufacture I will proceed with my general understanding of the invention presented in claim 1 so as to guide any potential amendments to the claims. My general understanding of the invention that is intended to be claimed and would seem to provide the possibility for allowable amendments is as follows:
1. Using an app on a computerised device to create a “digital address” in a format like an email address using different special characters. The digital address includes an alphanumeric geocode that uniquely identifies a particular geographic coordinate by virtue of the included geocode (for example CHART B and CHART C, specifically in the format of the type <alphanumeric geocode>.<user chosen username>@<digress phrase>.<digress extension> which uniquely identifies a particular geographic coordinate)
2. The alphanumeric geocode is a specific alphanumeric encoding converted from a supplied geographic coordinate
3. The digital address is presented on a placard, plate or drone landing pad.
4. The placard, plate or drone landing pad includes technology (e.g. a SIM card) that may be used for geolocation/triangulation.
5. A number of placards, plates and/or drone landing pads are placed to assist in the logistics of geolocation.
6. The placards may be mounted vertically and serve to assist in delivery of items such as mail and may include other information such as barcodes. The placard may also include computerised technology to enable communication outwardly. In a similar manner drone landing pads will also include computerised technology and bar code information.
7. In presenting the location identifying UDAPS codes on placards and landing pads and distributing the placards and landing pads, a network of accessible locations may be provided to enable improved logistics.
The invention thus comprises a number of features relating to the UDAPS platform and also physical arrangements that depict geocodes. I will first consider the features which define the UDAPS platform itself and decide whether such subject matter itself can provide for patentability. I will then consider the physical features of the placard/plate/drone landing pad technology and consider how these features relate to the patentability of a claimed invention. Finally, I will consider all of these elements in combination.
The UDAPS platform
The UDAPS platform itself is encapsulated by my first two numbered elements above which discuss the scheme for converting a geographic coordinate into an alphanumeric representation. The submissions provided by Mr Abdul-Malik in regard to the general nature of this platform make clear that the purpose of the invention is to change the purely numerical and potentially cumbersome GPS-type representation of a location to something that is more user friendly and has a large number of tailored alphanumeric possibilities. Being a representation of a specific location, the UDAPS based representation can then be used in a logistical setting, essentially as an address identifier for use in an effective logistics system. At this level of understanding, I cannot see the relevant features as providing for an invention that is of a technical nature, or that lies in the material art as it does bring about a new thing or physical result. Similarly to the inventions relating to navigation and street addressing that were presented in the Rhodes judgement above at 61, such an invention does not appear to provide for any elements of new manufacture. It appears to be a mere scheme for identifying locations.
Mr Abdul-Malik submits that the present invention solves a technical problem by reference to what3words®. I must admit I find it difficult to understand the argument made in this regard. However with my understanding of the what3words® scheme, and noting the difference between what3words® and UDAPS as already presented in this decision, I consider it clear that the UDAPS platform does not address what could be called a technical problem in the present art of geolocation naming schemes. The UDAPS platform addresses problems related to user-friendliness and individual customisability. This is not a problem of a technical nature, and the proposed solution does not provide for an improvement of a technical nature. While quite potentially a step beyond the state of the art, the UDAPS platform itself provides an addressing scheme that fails to generate a material, physical or technical result as required by the case law. Such an invention appears to lie merely in the content of the information itself and the scheme that provides such information, and not in a material advantage to a physical object or a physical phenomenon.
It is the case that the UDAPS platform uses an application deployed in computer technology to generate an address or pinpoint that is based on geographical coordinates. However, as seemingly admitted in the submissions of Mr Abdul-Malik, the computer technology in this context is used simply to automate the “mundane task” of creating the UDAPS information. To this extent, the use of computer technology for creation of the alphanumeric code is not where any ingenuity lies. The computer in this context is used merely for its well-known function of convenient automation, there being no improvement to computer function as such. No steps foreign to normal computer functions of data processing are present in the invention described in the specification.
Thus, I consider it clear that the UDAPS platform itself cannot provide for a manner of manufacture. This is the approach that has been taken by the examiner in the context of the submissions made by Mr Abdul-Malik. Throughout examination focus has been placed by Mr Abdul-Malik on the virtues of the UDAPS platform and coding system. This system, depicted in CHART B and CHART C of the specification is not itself, patentable subject matter.
While Mr Abdul-Malik has placed minimal focus on the nature of the physical devices described in the specification, I will consider whether they themselves are for a manner of manufacture. I will also consider how the physical devices described in the specification may relate to the substance of the invention.
The physical features of devices depicting data of the UDAPS platform
Points 4-6 of my summary above at paragraph 66 relate to physical features of placards/plates/drone landing pads. There is no doubt that such objects are not fundamentally unpatentable objects in the same way that a computer is a physical and patentable object, and so is a ball point pen. However, it is the case that in determining patentability one must have regard to the substance of the invention. A claimed invention involving a computer implemented scheme is not patentable merely because a computer is present, much like a story is not patentable because it is written in a book and claimed as such. The same idea extends to any information carrying medium where that medium may be used to merely depict different information. In this context the placards/plates/drone landing pads of the invention are used to merely depict the information of the UDAPS platform.
The mere depiction of information on a device aside, a claim will inevitably be for a manner of manufacture if it includes some ingenuity in the physical construction of the device itself to the extent that that device is materially improved. In other words, the substance of the invention in such a case will be directed towards a manner of manufacture. If it is the case that the presently described invention provides for an improvement in such device technology, then a manner of manufacture may be claimed.
I note that the specification does not go into a great amount of detail about the physical construction of the devices used to present the UDAPS platform information. In my discussion of the specification above I identified the physical nature and function of the placards discussed in the specification in the following terms:
“Figure #2 PLACARD PANE UNIT- for the assembly of 1st of 2 of such hardware/software itemization which see field placement at a residential or business location to mounted onto an exterior wall, gate or fence or interior wall or door. Each pane would require materials of vinyl, thinned Plexiglas, Encoded SIM Card type chip, and QR/bar code stamps with again utility access interface…”
“On most of the placards themselves is the set of items that will allow for the registered digital address to be homed in on by GSM triangulation/GPS interrogation by the mobile devices handled by the foot pedestrians or motorist attempting to navigate the course to location.”
I also identified the physical nature of the drone landing pads as follows:
“Figure #3 ENCASED HOUSING UNIT for the assembly of 2nd of 2 of such hardware/software itemization which would see field placement in a likely open area that may be inserted into the center of a drone landing pad, mounted within a recessed concrete slab on the ground (most times-vertical up, but may horizontally affixed). Each pane would require materials of vinyl, thinned Plexiglas, Encoded SIM Card type chip, and QR/bar code Each pane would require materials of vinyl, thinned Plexiglas, Encoded SIM Card type chip, and QR/bar code stamps with utility access interface…”
“While not always the case the encased housing in a good number of instances is to be placed in a recessed slot in the centre of the landing pad-marked with the ‘D’ at the centre.”
To this extent, as a matter of form, the placards and drone landing pads are physical devices with technical characteristics that are not fundamentally unpatentable.
However, I note at this point, the state of the art regarding such devices has not been determined by the examiner and the scope of the claims is not clear. It is thus difficult for me to consider with any precision, where the substance of the invention lies in the context of the use of the claimed devices. I note, as was required in Myraid at [12], that the substance of the invention depends “upon the construction of the impugned claims read in the light of the specification as a whole and the relevant prior art”. The features I discuss above may well simply represent known aspects of physical devices and I consider it likely that this is so. As such, it appears likely that upon a fulsome understanding of the state of the art, the substance of the invention may still lie in a scheme. For these reasons, which I will elaborate further upon below, I will remit the matter to examination for further consideration of the state of the art and substance of the invention in the presence of newly amended claims, assuming Mr Abdul-Malik avails himself of the opportunity to file amendments.
The combination of features
The UDAPS scheme and the physical devices combine in points 3 and 7 of my summary above in the presentation of UDAPS information and the provision of a plurality of such devices to be used in a logistical context. I do not see these elements as providing for a patentable invention any more so than may potentially be already provided in an improvement to a placard/plate/drone landing pad as a device itself. As already discussed, the mere presentation of UDAPS information on a device cannot provide for a manner of manufacture, and the mere provision of multiple independent devices for facilitation of logistics remains a mere scheme. Thus, when I consider the features of the invention collectively it appears clear to me that a manner of manufacture will only be present in a claimed invention if there is some material improvement to a physical device in the form of a placard/plate/drone landing pad. The substance of the invention must lie here, and not simply in the scheme of the UDAPS platform and its general application to a logistics function.
Conclusion
Regarding whether the invention is directed towards a manner of manufacture it appears to me that the substance of the claimed invention is likely to lie in a mere scheme. I do not intend to make a definitive finding because of first of all, the lack of clarity in the claims and issues with allowability of the proposed amendments. Secondly and more importantly, there is a lack of information before me as to the state of the art regarding the physical devices discussed above, and at this stage I cannot conclude as to whether there is innovative technical subject matter present in the specification. Mr Abdul-Malik may seek to clarify the claims through an allowable amendment and put them in a form that would enable the examiner to perform a fulsome consideration of the state of the art and thereby make a conclusive determination as to this ground.
NOVELTY AND INNOVATIVE STEP
Given the nature of my findings in respect of the allowability of the amendments, the clarity of the claims and manner of manufacture, I see no need to further consider the grounds of novelty and innovative step. I note that because of these same issues, the examiner has not performed a substantive analysis of these grounds either. There is the potential for novel and innovative physical features of the described physical devices to be clearly presented in a claim and at that point those features can be effectively searched. At this stage, given the brief and broad manner in which these features are discussed, it appears likely that relevant prior art will be found, however I make no definitive conclusion on this issue.
CONCLUSION
I conclude that the amendments are not allowable, and the claims are not clear and fail s40(3A) for including reference to the body of the specification. The UDAPS platform itself is not for a manner of manufacture. There are devices and associated physical features described in the specification that could form part of an amendment and that could be clearly presented in a claimed invention but are yet to be searched. As such, without a definitive picture of the state of the art, further comment in relation to the grounds of manner of manufacture, novelty and innovative step are not useful.
In closing his submissions, Mr Abdul-Malik requested five actions. I will briefly address all of these.
Firstly, Mr Abdul-Malik has requested cancellation of the three examination reports. This cannot be done. While it has been open to me in this consideration to find each of the objections of the examiner as not maintainable, I have not done so in the decision, but even if I disagreed with the examiner, this would not result in “cancellation” of the reports per se. As discussed below, the matter will return to examination for further consideration.
Secondly, Mr Abdul-Malik has requested that examination continue. This will occur with the matter returning to examination for considerations, supervised according to internal procedures.
Thirdly, Mr Abdul-Malik requests permission for the proposed amendments to be “granted”. For the reasons provided herein, this is not possible.
Fourthly, Mr Abdul-Malik seeks confirmation that the present patent may not cease. I can provide no such assurance as it is the case that, once the examination of a granted innovation patent commences, ceasing occurs if the patent is not certified within the time period stipulated below. Certification is only possible if all objections are overcome.
Fifthly, Mr Abdul-Malik requests immediate certification of the patent with allowance for any minor changes he may need to make. He makes this request in light of, as best understood, unfounded allegations of collusion of IP Australia staff with What3words Limited. As above, certification is only possible if all objections are overcome. This decision makes clear that significant barriers are considered to exist to certification.
In accordance with the discussion above and following paragraph 9A.4(f) of the Patent Regulations I extend the time for gaining certification to three months from the date of the present decision. In this time, it is open to Mr Abdul-Malik to file amendments addressing the various issues. In the present circumstance I see value in Mr Abdul-Malik seeking the assistance of a patent attorney to draft allowable and clear amendments. I note that given the nature of the specification in its focus upon the UDAPS platform itself, and the limited discussion of physical devices implementing the described scheme it appears possible that any invention claimed clearly would remain, in substance directed towards a mere scheme implemented on known physical devices, with ingenuity existing only in the scheme itself.
Dr N. R. Madsen
Deputy Commissioner of Patents
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