Sheng-Ping Fang - [2011] APO 102

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sheng-Ping Fang [2011] APO 102

Patent Application: 2010230079

Title:A Method and System To Represent and Identify Prizes

Patent Applicant:  Sheng-Ping Fang
Delegate:  R Subbarayan
Decision Date:  20 December 2011
Hearing Date:  6 October 2011, Canberra
Catchwords:  PATENTS – examiner’s objections – representing and identifying prizes in online award system – whether manner of manufacture – mere scheme or abstract idea involving presentation of information – no patentable subject matter disclosed – claimed invention not inventive – application refused

Representation: Patent applicant: Sheng-Ping Fang

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010230079

Title:A Method and System To Represent and Identify Prizes

Patent Applicant: Sheng-Ping Fang
Date of Decision: 20 December 2011
DECISION

Patent application 2010230079 is refused pursuant to subsection 49(2) of the Act.
REASONS FOR DECISION
This matter concerns examiner’s objections in respect of the application and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.
Background
Patent application AU2010230079 was filed on 13 October 2010 and claims priority from provisional patent application AU2009905059 filed on 19 October 2009. The patent applicant was initially represented by Patent Attorney Madhu Kant Jogia, but on 16 June 2011 the applicant advised that his address would now be the address for legal service for all future correspondence.

The first of five adverse examination reports on this application was issued on 9 March 2011 and the main grounds of objection were those relating to not being a manner of manufacture and lack of novelty and inventive step. The final date for acceptance of this application is therefore 9 December 2012.

Although the applicant filed submissions and amended claims in response to each of these adverse reports the examiner was not persuaded that they overcame the objections of manner of manufacture and lack of inventive step. In the fifth report the examiner further advised the applicant that the matter would be set for a hearing. Subsequent to the hearing advice, the applicant filed another set of amended claims on 25 August 2011 which have not been considered by the examiner.

The hearing was held in Canberra on 6 October 2011. The applicant represented himself and appeared over the telephone. While most of the submissions that the applicant made at the hearing reiterated his written responses to the various examination reports, some of the submissions helped to clarify certain issues that I raised. I will refer to some of the more pertinent submissions later in my decision.
The patent specification
The subject matter of the application concerns a system to represent and identify prizes for an online award or loyalty program.

Existing award and loyalty programs use symbols such as award points to calculate and represent prizes. For example, the frequent flyer program uses “mileage points” to make calculations for all the prizes. In these types of award programs, the user is not given a prize each time the user performs an activity, instead they are given general award symbols such as points which can be accumulated and subsequently be redeemed for one or more prizes or rewards.

Most of these award programs use the same general award symbol repeatedly and this imposes severe limitations on the power and flexibility of these award programs. For example the use of general award points requires prizes to be arranged hierarchically according to their monetary value in order to match the way that points are calculated.

A system that is said to address these drawbacks is then described and claimed. The inventive concept of the invention lies in the use of what the specification terms as “unique award symbols” and “shared award symbols” to represent and identify the prizes that a user can win.

The unique and/or shared award symbols are displayed and/or retrieved when the user completes one or more qualified events on a computer. A user collects these unique and/or shared award symbols in order to complete a symbol set or complete symbol. A prize may be awarded to the user on full or partial completion of the complete symbol. A unique or shared symbol may also be sliced or divided into several parts and presented to the user in a manner similar to that of a jigsaw puzzle.

The specification sets up a glossary of what is meant by various terms used in the specification. The definitions that are relevant for the purposes of this decision include the following:

An event is defined as a signal or signals sent by a person or object to a computer program telling it that something has happened that can be responded to. An event may be active (eg pressing a key on the keyboard, or clicking the mouse) or passive (eg. the user logs on to the website for a period of time but does nothing).

A qualified event is a special type of event for retrieving or displaying one or more unique and/or shared award symbols.

A unique award symbol is defined as a symbol that is used to identify and redeem a particular prize only.

A shared award symbol is defined as a symbol that is used to identify and redeem two or more prizes simultaneously. They merely serve as part of a collection of unique symbols.

A complete symbol is a goal or target that needs to be met in order to redeem one or more prizes. A prize may be awarded to the user on full or partial completion of the complete symbol.

The specification states that the use of unique and shared award symbols will enable users to earn prizes of different monetary value at different time periods unlike prior art award systems where the prizes are organised hierarchically into different award levels and the higher monetary value prizes can only be redeemed when more award symbols are collected. Also in the present invention since the prizes are represented by unique symbols, users will clearly know what prize they are likely to win. The prospect of winning different prizes at different time periods or even simultaneously will motivate users to engage in further activity that promotes business for the online retailer or merchant.

Another stated advantage is that the system would allow users to earn awards and prizes in real time.

The specification goes on to describe various embodiments of the invention to illustrate how the unique and shared symbols can be used to represent and identify different prizes and how it is possible for users to randomly win prizes of different monetary values.

For example in the embodiment of figure 3(B) it shows that when a user spends over $50 on shopping, they will be presented with an electronic award symbol in the form of a fax machine. Once the user collects two such fax award symbols, they will be awarded a fax machine as the prize. The fax award symbol is termed a unique award symbol as it can only be used to win the particular prize of the fax machine.

The specification also states that the invention may be implemented by using a programmed general purpose digital computer and that any suitable programming language can be used to implement the routines of the preferred embodiments. The only embodiment which relates to such a computer implementation is the embodiment of Figure 10. This embodiment describes a rudimentary software system in the form of control logic on a computer readable medium for implementing the claimed system. It includes machine readable/executable instructions for determining, monitoring and executing one or more qualified events on a machine readable device, machine readable/executable instructions for providing a selection of award symbols comprising unique and shared symbols and machine readable/executable instructions for providing a selection of prizes where said prize is identified by said unique and/or shared symbols.

The specification as filed then ends with a set of claims of which the independent claims are as follows:

1. A method for identifying and representing prizes for one or more award programs, comprising steps of:

(i) determining execution of one or more qualified events;

(ii) determining representation of a selection of award symbols; wherein said award symbols consist of unique and, or shared symbols, and

(iii) determining representation of a selection of prizes; wherein said prize is identified or represented by said unique and, or shared symbol and, wherein said prizes is awarded to the user on full or partial completion of complete symbol.

16. A software system embodied on a computer readable medium for providing means for identifying and representing prizes on one or more servers and devices, comprising:

a) a machine readable or executable instruction for determining, monitoring and executing one or more qualified events on a machine readable device or apparatus;

b) a machine readable or executable instruction for providing a selection of award symbols; wherein said award symbol consists of unique and shared symbols.

c) a machine readable or executable instruction for providing a selection of prizes,
wherein said prize is identified or represented by said unique and, or shared award symbols according to one of claims 1 to 15 and, wherein said prize is awarded to the user on full or partial completion of said complete symbol.

22. An article of manufacture comprising:
a) a machine readable or executable instruction for monitoring and executing one or more qualified events,

b) a machine readable or executable instruction for providing a selection of award symbols wherein said award symbols consist of unique and, or shared symbols;
and

c) a machine readable or executable instruction for providing a selection of prizes; wherein said prizes are represented or identified by said unique and shared symbols according to any one of claims 1 to 21 and, wherein said prize is awarded to the user on full or partial completion of said complete symbol.

23. The invention as hereinbefore described.
The Examiner’s objections

The main objections in the examiner’s first examination report were the following:
“1.Claims 1-22 are not for a manner of manufacture within the meaning of paragraph 18(1)(a) of the Patent Act because the method defined in these claims do not appear to relate to an artificially created state of affairs, in the sense of a concrete, tangible, physical, or observable effect. Please note that the method defined in these claims appears to be a series of steps comprising human activity. Also please note that even if these steps involve the use of devices such as standard computers, use of such devices would be considered as "indirect" and would not be a manner of manufacture.”
“4.The invention defined in claim 1 is not novel (and does not involve an inventive step) when compared with the disclosure of many patent specifications of which the following are a selection:
D1: US 2002/0116257 A1 (HELBIG) 22 August 2002
D2: US 2001/0034635 A1 (WINTERS) 25 October 2001
D3: US 2008/0064478 A1 (ROUKIS et al.) 13 March 2008
D4: US 2007/0181674 A1 (TAYLOR et al.) 9 August 2007”
The applicant responded with submissions and amendments to the claims. Claim 1 was proposed to be amended so as to be directed to “A method of awarding prizes for one or more award programs” with steps similar to that of original claim 1.
The submissions asserted that the claimed invention was a manner of manufacture as the application of the unique and shared symbols constituted an artificially created state of affairs in a field of commercial or economic endeavour (reward or award programs) consistent with the decision in CCOM v Jiejing, 28 IPR 481, (1994) AIPC 91-079. In relation to the novelty objection, the applicant submitted that the cited art do not disclose the essential feature of the use of symbols to identify and represent prizes.
In her second examination report, the examiner maintained the manner of manufacture objection and changed the novelty objection to an inventive step objection based on citation D1 only.
The applicant responded with further amendments to the claims and submissions. The amendments proposed to amend claim 1 to “A method for executing and implementing an award program on a computer server” with similar steps.
The examiner continued to maintain for the next three reports that the invention was not a manner of manufacture and also lacked an inventive step over D1 in light of common general knowledge in the art. In her fifth report the examiner also raised the additional objection that the independent claims 1 and 14 as proposed to be amended in response to the fourth report include matter that is not fairly based on the specification as originally filed. The applicant was also advised that the matter would be set for a hearing.
Are the proposed amendments allowable?
Before I decide on the issues of manner of manufacture and inventive step, I need to consider the issue of allowability of the proposed amendments and in particular the latest set of amended claims filed on 25 August 2011 which has not been subject to examination.
Section 102 of the Patents Act covers the allowance of amendments. The pertinent subsection in this case is subsections 102(1).
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
For an amended claim to claim matter in substance disclosed in the specification as filed, that claim must in effect be fairly based on the specification as filed. The Federal Court has accepted the principle of “a real and reasonably clear disclosure” for testing an amended claim against the original disclosure. See for example RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd, 42 IPR 353.
The independent claims as most recently proposed to be amended on 25 August 2011 are in the following form:
1. A system for providing, processing and calculating image data for an online award system, the system comprises of at least one computer hardware component or electronic device being configured for:
a) determining a plurality of qualified events for providing a plurality of image data as unique and, or shared award symbols to be collected or accumulated for completing a plurality of different complete award symbols, said complete award symbols or image data are transformed into a plurality of symbol pieces and symbol clones through slicing and cloning of the image data to enable simultaneous accumulations of said award symbols for specific and different prizes with similar and substantially different monetary values and,
b) providing a selection or plurality of image data as award symbols, wherein said image data or award symbols consist of unique and, or shared award symbols that are selected from a collection of symbol pieces and, or symbol clones, said symbol pieces or image data are transformed or re-assembled in real-time to form the different complete award symbols of which the symbol pieces are associated with and,
c) providing a selection or plurality of prizes that are displayed alongside their corresponding or associated complete award symbols, said prizes are awarded on full or partial completion of said complete award symbols, said online award system performs real-time processing and simultaneous calculations of data associated with the simultaneous awarding of different award symbols or image data for specific and different prizes with similar and substantially different monetary values simultaneously awarded and provided or displayed to a user on a single webpage or website which the user is browsing or interacting with.
14. An article of manufacture comprising:
a) means for providing a plurality of qualified events, wherein said qualified events provide a plurality of image data as unique and, or shared award symbols to be collected or accumulated for completing a plurality of different complete award symbols, said complete award symbols or image data are transformed into a plurality of symbol pieces and symbol clones through slicing and cloning of the image data to enable simultaneous accumulations of said award symbols for specific and different prizes with similar and substantially different monetary values and,
b) means for providing a selection or plurality of image data as award symbols, wherein said image data or award symbols consist of unique and, or shared award symbols that are selected from a collection of symbol pieces and, or symbol clones, said symbol pieces or image data are transformed or reassembled in to form the different complete award symbols of which the symbol pieces are associated with and,
c) means for providing a selection or plurality of prizes that are displayed alongside their corresponding or associated complete award symbols, said prizes are awarded on full or partial completion of said complete award symbols, said system performs processing and simultaneous calculations of data associated with the simultaneous accumulations and awarding of different award symbols or image data for specific and different prizes with similar and substantially different monetary values.
19. The invention as hereinbefore described with reference to the accompanying figures.
In relation to claim 1, the amendment that is most noticeable is that the claim is now directed to “A system for providing, processing and calculating image data for an online award system”. In my view proposed amended claim 1 includes a number of features which are not in substance disclosed in the specification as filed. These include the following:
“processing and calculating image data”. The specification as originally filed discloses that the method includes the steps of determining how the award symbols are to be organised or presented to the users and determining representation of a selection of award symbols. I note that the phrase “image data” does not appear even once in the specification as filed. While I could accept that this phrase just refers to the electronic image or symbol, it is my view that the definition “processing and calculating image data” defines more than mere organisation, representation or presentation of the images or symbols as disclosed in the specification as filed. Whilst it could be possibly argued that generating an electronic symbol in a computer system involves processing and calculating image data, in my view the specification as filed does not provide a real and reasonably clear disclosure of this feature.
“cloning of image data”. In relation to the feature of cloning, I note that the term “cloning” again does not occur even once in the specification as filed. When I queried this at the hearing, the applicant referred me to figure 2 where for example in box C there is shown two identical fax machine symbols presented next to one another. Whilst I could accept that the two fax machine symbols in this figure could be said to be duplicates or clones of one another in the sense that they are identical, in my view that is not a real and reasonably clear disclosure of the system actually performing the feature of cloning. Cloning implies the act of replicating an item or thing, but there is nothing in the specification to suggest that the second fax machine symbol was created within the system by replicating the first fax machine symbol.
Proposed amended independent claim 14 similarly includes the features of “image data”, “cloning”, and “processing and simultaneous calculations of data” all of which I have found are not in substance disclosed in the specification as filed.
Consequently the proposed amendments filed on 25 August 2011 are not allowable amendments.
The previous set of amended claims was filed on 18 July 2011 and formed the basis for the examiner’s fifth report. Claim 1 of that claim set is as follows:
1.A system for providing an award program on one or more servers and electronic devices, said system comprising:
a) a machine readable and, or executable instruction for providing a plurality of qualified events, wherein said qualified events provide a plurality of image data as unique and, or shared award symbols to be collected or accumulated for completing a plurality of different complete award symbols, said complete award symbols or image data are transformed into a plurality of symbol pieces and symbol clones through real-time slicing and cloning of the image data to enable simultaneous accumulations of said award symbols for specific and different prizes with similar and substantially different monetary values and,
b) a machine readable and, or executable instruction for providing a selection or plurality of image data as award symbols, wherein said image data or award symbols consist of unique and, or shared award symbols that are selected from a collection of symbol pieces and, or symbol clones, said symbol pieces or image data are transformed or re-assembled in real-time to form the different complete award symbols of which the symbol pieces are associated with and,
c) a machine readable and, or executable instruction for providing a selection or plurality of prizes that are displayed alongside their corresponding or associated complete award symbols, said prizes are awarded on full or partial completion of said complete award symbols, said machine readable and, or executable instruction performs real-time processing and simultaneous calculations of data associated with the simultaneous accumulations and awarding of different award symbols or image data for specific and different prizes with similar and substantially different monetary values.

The examiner objected that independent claims 1 and 14 of this claim set were not fairly based because they include the newly added feature “real-time slicing and cloning of the image date” which is not in substance disclosed in the originally filed specification.
In relation to the feature of performing the slicing and cloning in real time, I note that the only disclosure of real time is in page 2 where it states
“What is needed is a flexible and efficient system and method that would allow users to earn awards and prizes in real-time”.
While the acts of earning and being awarded a prize can be performed in real time, this disclosure does not in my view provide a real and reasonably clear disclosure of the slicing or cloning being done in real time.
I also note that the feature “processing and simultaneous calculations of data” present in the independent claims is very similar to the feature “processing and calculating image data” that I have already found is not in substance disclosed.
Therefore I find that the proposed amendments filed on 18 July 2011 are also not in substance disclosed in the specification as originally filed and therefore are not allowable.
The previous set of amendments was filed on 16 June 2011 and formed the basis for the examiners fourth report. The independent claims of this claim set are as follows:
1. A system for providing an award program on one or more servers and electronic devices, said system comprising:
a) a machine readable or executable instruction for providing a plurality of qualified events, wherein said qualified events provide a plurality of unique and, or shared award symbols to be collected or accumulated for completing a selection or plurality of complete award symbols with identical and different visual or physical characteristics and,
b) a machine readable or executable instruction for providing a selection or plurality of award symbols, wherein said award symbols consist of unique and, or shared award symbols that are selected from a collection of symbol pieces and, or symbol clones associated with a selection or plurality of said complete award symbols and,
c) a machine readable or executable instruction for providing a selection or plurality of prizes that are displayed alongside their corresponding or associated complete award symbols, said prizes are awarded on full or partial completion of said complete award symbols.
13. An article of manufacture comprising:
a) means for providing a selection or plurality of qualified events, wherein said qualified events provide a plurality of unique and, or shared award symbols to be collected or accumulated for completing a selection or plurality of complete award symbols with identical and different visual or physical characteristics and,
b) means for providing a selection or plurality of award symbols, wherein said award symbols consist of unique and, or shared award symbols that are selected from a collection of symbol pieces and, or symbol clones associated with a selection or plurality of said complete award symbols and,
c) means for providing a selection or plurality prizes that are displayed alongside their corresponding or associated complete award symbols, said prizes are awarded on full or partial completion of said complete award symbols.
18. The invention as hereinbefore described.
The examiner did not find any of the amended claims filed 16 June 2011 include matter that was not in substance disclosed in the specification as originally filed.
Whilst I agree with the examiner’s findings in relation to the independent claims it is my view that dependent claims 14 and 15 include matter that was not in substance disclosed in the specification as originally filed. These claims read as follows:
14. The system according to claim 1, wherein said server refers to the use and operation of a single or a collection of computer servers and devices for executing said machine readable and, or executable instructions through the use of one or more high-speed multi-core processors, random access memories and hard drives, said server distributes and, or retrieves one or more said award symbols stored in the database in real-time, said database stores and organizes each unique symbol with a corresponding unique identification number, where said unique identification number is for identifying a particular or specific prize of which the unique symbol is associated with, said database may be controlled or managed from a single or a plurality of machines, where said machines maintain and process data associated with the distribution and use of said qualified events, award symbols and prizes, said machines may exchange and process data associated with the use and distribution of said award symbols and prizes over the internet and, or a private computer network.
15. The system according to claim 1, wherein said machine readable and, or executable instruction refers to a series of computer algorithms for interacting with one or more database programs installed on the server and, or client side machines, said computer algorithms enable filtering and searching of data associated with said award symbols and prizes, said computer algorithms enables real-time calculation of data associated with the accumulation of said symbol pieces or clones for each individual complete award symbol and prize, said computer algorithm confirms the awarding of a particular or specific prize on full or partial completion of a complete award symbol for the prize.
I cannot find a real or reasonably clear disclosure of the features that I have underlined in the above claims. I note that the terms “identification number”, “algorithms”, “filtering”, do not appear anywhere in the specification as filed. There is nothing in the specification to suggest, let alone disclose, the use of unique identification numbers to store and organise each unique symbol and nor can this be considered to be implied to a person skilled in the art. Similarly while most computer executable instructions would include algorithms, that in my view does not provide sufficient fair basis for the features of filtering and searching of data associated with the award symbols.
Hence the amendments filed on 16 June 2011 are also not allowable amendments. However as independent claims 1, 13 and 18 of this claim set are fairly based on the specification as originally filed, I will proceed to assess inventive step based on the amended claims filed on 16 June 2011 excluding claims 14 and 15. The non-allowability of this set of proposed amendments can be easily overcome by deleting claims 14 and 15.
Manner of manufacture
Subsection 18(1)(a) of the Act provides that an invention is a patentable invention if, so far as claimed in any claim, it “is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”.
The High Court in National Research and Development Corporation v Commissioner of Patents [1959] HCA 67; [1959] 102 CLR 252 (NRDC) has provided a definitive statement of the law in this regard which has been summarised as a requirement for “a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour” (CCOM Pty Ltd v Jiejing [1994] FCA 1168 at [128]).
In NRDC the Court stated that:
“The word "manufacture" finds a place in the present Act, not as a word intended to reduce a question of patentability to a question of verbal interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed. It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: "Is this a manner (or kind) of manufacture?" It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because "manufacture" as a word of everyday speech generally conveys that idea. The right question is: "Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?"
The statements in NRDC make it clear that while the understanding of the “manner of manufacture” requirement should not be constrained, for example, by existing notions of science and technology, it should also not be taken to justify an expansion of the scope of patentable subject matter to fields that have never been patentable according to the long standing principles governing application of s. 6 of the Statute of Monopolies. The exclusion of designs, schemes and plans seems to be an example of those principles which are fundamental to the ambit of the Statute of Monopolies.
The decision of the High Court in NRDC has since been applied in a number of cases relating to business methods and schemes that involve the application of computers.
In CCOM (supra) the court upheld a patent for an invention for a Chinese language word processor but maintained the underlying principle, developed from the Statute of Monopolies, that business, commercial and financial schemes, which are “intellectual information” are not themselves properly the subject of letters patent.
In International Business Machines Corporation v Commissioner of Patents [1991] FCA 625 (IBM) the Federal Court upheld a patent for producing curves on a computer graphics display.
In Welcome Real-Time SA v Catuity Inc [2001] FCA 445 (Catuity), Justice Heerey of the Federal Court upheld a patent for a method of processing coded information during purchase or payment operation by a customer utilising a loyalty program.
More recently the issue of manner of manufacture was considered by the full bench of the Federal Court in Grant vCommissioner of Patents[2006] FCAFC 120 (Grant).
In Grant the Court found that a method of protecting an asset including steps of establishing a trust, making a gift to the trust, making a loan from the trust and securing the loan was not a manner of manufacture. In Grant the Court stated:
“Whether the method is properly the subject of letters patent is assessed by applying the principles that have been developed for determining whether a method is a manner of manufacture, irrespective of the area of activity in which the method is to be applied. It has long been accepted that "intellectual information", a mathematical algorithm, mere working directions and a scheme without effect are not patentable. This claim is "intellectual information", mere working directions and a scheme. It is necessary that there be some "useful product", some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent. That is missing in this case.” and
“A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required.”
Similar views have been expressed by the courts in the United States in relation to patenting of business schemes and abstract concepts. For example the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, confirmed a number of its precedents that held that “the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant post-solution activity” (Diamond v Diehr [1981] USSC 40; 450 U.S. 175 at 191-192).
More recently in CyberSource Corp. v. Retail Decisions, Inc. --- F.3d --- (Fed. Cir. 16 August 2011) the court stated
“As we stated in Bilski, to impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine “must impose meaningful limits on the claim’s scope.” 545 F.3d at 961. In other words, the machine “must play a significant part in permitting the claimed method to be performed.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).”
The patent Office has issued a number of decisions in the last couple of years relating to the patentability of business methods and computer related inventions. These include Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010) , Iowa Lottery [2010] APO 25 (21 October 2010), Research Affiliates, LLC. [2010] APO 31 (17 December 2010), First Principles, Inc. [2011] APO 1 (5 January 2011), Discovery Holdings Limited [2011] APO 56 (9 August 2011) , Network Solutions, LLC [2011] APO 65 (19 August 2011).
While I am not bound by these decisions, the principle that consistently emerges out of these decisions is that inventions for pure business, commercial or financial schemes will not satisfy the requirements for being a manner of manufacture merely because the scheme is implemented using a computer. What is required is some substantial effect or transformation brought about by the use of the computer or other physical device.
The examiner in rejecting the various iterations of the claims on the ground of manner of manufacture relied on the decisions in Grant and that of the delegate in Invention Pathways and maintained that the method defined in the claims does not result in an ‘artificially created state of affairs, in the sense of a concrete, tangible, physical, or observable effect’ as per Grant v Commissioner.
The applicant in his various submissions in response put forth a number of arguments, some of the main ones being as follows:
“The claims in Patent application no. 2010230079 do enable symbols to be applied creatively and broadly in the context of a reward or award program. The unique application of symbols (artificially created state of affairs) for games, reward or award programs (in the field of commercial or economic endeavor) is thus consistent with the decision in CCOM v Jiejing, 28 IPR 481, (1994) AIPC 91-079.”
“The use of a mathematical formula in a computer to produce an improved curve image was held to be patentable, since the production of the improved curve image is a commercially useful effect in computer graphics.”
“I am confident that an experienced software engineer would see claim 1 as potentially a software program or as a series of automated instructions to be implemented on the computer. Thus the “substantive effects” would occur as all elements of the method are being executed on the computer.”
“In the current application, the computer is being used to execute qualified events AND to “provide” or build a software system according to claims 14-19. Claim 14, an independent claim discloses how to build a software system, comprising the use of “machine readable and executable instruction” (ie programming language). Building and running the software according to claim 14 clearly requires “significant data processing” on the hardware.”
“The amended claim 1 is not directed to a scheme. The focus of the claim is on a system for providing and processing image data. The title of the invention also suggests that the invention is primary about providing and processing image data for commercial purposes.”
“The amended claim 1 shows that data processing is indeed, central or necessary to the operation of the claimed solution.”
“Since award symbols and prizes will be awarded in real-time, it would be impossible provide satisfactory user and customer experience without the use of computers because significant delays in the awarding of symbols and prizes will occur.”
“It is common sense in the real world commercial environment that software does involve data processing and data calculation even if the software implements a scheme.”
From reading the specification as a whole, it is clear that the core of the invention lies in the use of the unique and shared symbols. This is also supported by the applicant’s submissions, both in writing and also orally at the hearing. These symbols enable users to win different prizes at different time periods, without the prizes being grouped and awarded hierarchically according to monetary value. Whilst I accept that the use of these symbols may provide advantages in relation to how prizes are won and thereby motivate users to engage in further activity beneficial to the online retailer, it does not alter the fact that what is claimed is a scheme for awarding prizes in a loyalty program. The unique and shared award symbols are merely information generated in the operation of the scheme. “Information even if represented in a physical way has never been considered sufficient for patentability save for some material advantage or mechanical effect in the arrangement of the information” (Iowa Lottery). Although the invention can clearly be said to be in a field of economic endeavour, namely retail trading, the use of different types of award symbols in a loyalty scheme is in my view an abstract idea, mere intellectual information involving new symbols, which had never been held to be patentable subject matter.
The applicant has in his various amendments to the independent claims tried to promote the feature that the system is implemented using a computer in order to overcome the objection to the claim being merely a business scheme and some of the applicant’s arguments that I have quoted above clearly emphasize this computer implementation aspect. As I have earlier found, a number of these proposed amendments are not “in substance disclosed” in the specification as filed and hence are not allowable amendments.
I accept that being an online award program the system has to be implemented using a computer system and in that sense a computer system is integral to the invention. However when I read the specification as a whole, there is very little description or details of the computer system. While there are brief references to computer programs, machine readable/executable instructions, machine readable devices, application and database servers and programming languages there is nothing in the specification to suggest that the use of these software programs or computer devices has brought about any substantial physical effect or transformation in the implementation of the award program.
The alleged invention can clearly be distinguished from the Catuity, CCOM and IBM decisions.
While the invention in Catuity was also in the field of loyalty or award programs the claimed method of processing coded information involved the use of components such as smart cards and Point of Sale terminals and the writing of information to a behaviour file, processing of information according to a specified algorithm and using this information to determine whether a coupon is to be printed or not. Clearly these steps were central to the invention and there was substantial transformation brought about by the use of computers.
Similarly in CCOM the invention lay in the use of a particular method of characterisation of character strokes which is applied to an apparatus in such a way that operation of the keyboard will enable the selection through the computer, in a particular way, of the appropriate Chinese characters for word processing. The court in upholding the patent found that there was a component that was physically affected or a change in state or information in a part of a machine.
In IBM, the court in finding the patent to be a manner of manufacture found that the invention was not to a mathematical algorithm but rather to a method of producing an improved curved image by a computer involving certain steps which were novel and inventive. Again these steps using a computer were central to the invention and brought about substantial transformation.
In the present application I can see no such effect or transformation brought about by the use of the computer. It merely results in the display of different kinds of award symbols in an electronic form. The specification is totally silent on any method steps involved in generating or providing these electronic award symbols using the computer. “A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation” as enunciated in Grant is clearly lacking in the alleged invention. Despite the computer implementation, it is my view that the substance of what is claimed remains a mere scheme or abstract idea that does not achieve an end result that is an artificially created state of affairs in the field of economic endeavour. The claimed invention is therefore not a manner of manufacture.
Inventive step

Although the examiner did not raise any clarity objections to amended claims 1-17 of the claim set filed on 16 June 2011, I think there are some terms in the independent claims which can cause some difficulty in construing the scope of these claims. It will therefore be useful to resolve the meaning of some of these terms before I construe the citation to see whether it anticipates the claimed invention.
“provide a plurality of unique and, or shared award symbols”. The specification has clearly set up a dictionary for the definition of the terms “unique award symbol” and “shared award symbol” as I have discussed earlier and these terms in the claim are therefore to be restricted to those definitions. However because of the use of the term “and, or” the scope of this feature is not limited to providing both unique and shared award symbols. Only a plurality of unique symbols or a plurality of shared award symbols could be provided.
“with identical and different visual or physical characteristics”. I take this to mean that some of the plurality of symbols are of identical characteristics and some of the symbols are of different characteristics.
“associated with a selection or plurality of said complete award symbols” in paragraph (b). Because of the use of the term “a selection or plurality…..” it is unclear whether this refers to the same feature defined in paragraph (a). Reading the specification as a whole and giving it a purposive construction, it appears that this feature in (b) does refer back to the same feature defined in (a) and hence for the purpose of construing the claim I will take the term “a selection or plurality” to read as “said selection or plurality”.
Under section 7(2) of the patents act an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of common general knowledge within Australia either considered alone or together with information made publicly available anywhere in the world. Section 7(3) restricts the information to that which could reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the relevant art.
Document D1 (US 2002/0116257 A1) is directed to an on-line advertisement enhancement and incentive system where incentives are electronically displayed, awarded, stored and redeemed. It is therefore clearly a document that a person skilled in the art would have ascertained, understood and regarded as relevant.
The award system of D1 broadly works in the following manner.
A user is awarded one or more electronic incentives on the occurrence of a qualified event like clicking on various incentive symbols that are presented to the user when they are browsing an ecommerce site. The electronic incentive in one embodiment is an award symbol in the form of a Stamp (Zstamp). The user collects these stamps and can later redeem these stamps for one or more prizes on offer depending on how many stamps are being redeemed.
The examiner was of the view that document D1 discloses all of the features of claim 1 except for the following:
(A) The complete award symbols have identical and different visual or physical characteristics
(B) The prizes are displayed alongside their corresponding or associated complete award symbols
In coming to this view that examiner was of the view that the stamps can be equated to the shared award symbol because it can be used to redeem more than one prize. The applicant on the other hand argued that the stamps are analogous to general award symbols like points in that they can be used to redeem any one or all of the prizes and that they cannot therefore be equated to a shared award symbol.
The glossary in the specification defines a shared award symbol as a type of symbol used to identify and redeem two or more prizes simultaneously. Fig 5 of the preferred embodiment, illustrates the use of a shared symbol. Here on the occurrence of a qualified event a shared symbol is presented to the user with the shared symbol being capable of being used simultaneously as part of two complete award symbols. Completion of each of these two complete award symbols will lead to the user being awarded the specific prize associated with each of these complete award symbols and not any prize that the user wishes.
A unique symbol on the other hand has been defined as a symbol that is used to identify and redeem a particular prize only.
Given these definitions, it is my view that the stamps of D1 cannot be equated to either the unique symbol or the shared symbol as it can be used to redeem any of the prizes on offer. Hence in addition to the features identified by the examiner the following feature is also not disclosed in D1.
(C) The award symbols consist of unique and, or shared award symbols
The examiner was of the opinion that the features that distinguish the claimed invention from D1 were common general knowledge in the art and in order to support her assertion the examiner cited a couple of promotional brochures downloaded from the internet.
The first of these is entitled “Streets Paddle Pop Lick-a-Prize”. In this promotion, participants collect two or more partial prize symbols which can be found on selected paddle pop sticks in order to complete one or more complete prize symbols and then redeem the prizes associated with the one or more complete prize symbol. For example if users collect the two partial symbols “MAN” and “TA”, these can be used to form the complete symbol “MANTA” and then redeemed for the award of a MANTA body board prize.
The second of these is an online promotional competition called “Golden Jigsaw”. This competition involves players locating pieces of a jigsaw that have been placed on various (paying for the privilege) websites. The players have to visit the websites, using various clues, and then collect their jigsaw pieces. The first person to collect all 1000 pieces to complete the puzzle wins a prize of $1000000.
Clearly the concept of these promotions is very similar to the claimed invention in that they involve the provision of a plurality of different partial award symbols that are selected from a collection of symbol pieces and symbol clones associated with the complete award symbol, the user or participant collects the partial award symbols to complete a complete award symbol and on successful completion they are awarded the prize associated with that complete award symbol. The partial award symbols can clearly be equated to the unique award symbol in that it is used to identify and represent a particular prize only.
In light of the above it is my view that award programs in which users collect unique award symbols to form a complete award symbol, and then redeem the completed award symbol for one or more prizes associated with the complete award symbol was certainly common general knowledge in the art before the priority date of the claimed invention.
In relation to the feature that the prizes are displayed alongside their corresponding or associated award symbol, I am again of the view that this is also common general knowledge in the art. In any award program where users can redeem only a particular prize on completion of an award symbol, it would be routine to advertise what that particular prize would be and the most logical way to do that would be to display that particular prize alongside the complete award symbol.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 endorsed the “Cripps question” approach to obviousness:
"Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the '2' position in place of the -C1 atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?"
In the present case this can be reformulated to:
Would the person skilled in the art at the relevant date in all the circumstances directly be led as a matter of course to replace the general award symbols of D1 with a plurality of unique and/or shared award symbols associated with one or more complete award symbols in the expectation that it might well produce a solution to the problem?
In my view they would. I have found that the use of unique symbols in award programs is common general knowledge in the art. The Golden Jigsaw article further indicates that use of such unique symbols in online award programs was also well known. A person skilled in the art trying to overcome the limitations of general award symbols in an online award system would have arrived at the claimed invention using routine steps.
The applicant in his response to the examiner’s fifth report argued that the use of unique and shared symbols makes his invention technically very complex compared to D1 and that building and testing the system would therefore require software engineers with much greater skills and experience. However I note that the specification as filed is totally silent on this aspect. Even if I were to accept this argument, there is nothing to suggest that a skilled team of developers would not be able to overcome any practical difficulties in the process of building and implementing such a system using routine steps. Hence I do not find this argument persuasive. Claim 1 therefore lacks an inventive step over document D1 when combined with common general knowledge in the art.
Independent claim 13 is directed to an article of manufacture that includes all the features of claim 1 and nothing more. Hence claim 13 also lacks an inventive step.
Claims 2-12, 17 are dependent on claim 1 and define further features relating to the manner of presentation of the unique and shared symbols, and the manner of identifying and representing prizes. These features are nothing more than presenting information in a different manner and I do not consider that they add anything inventive to the claims. These claims also therefore lack an inventive step.
Claim 16 which is again dependent on claim 1, defines further a computer executable instruction for forming of the symbol pieces by slicing up the complete award symbol. It is well known that jigsaw puzzles pieces are produced by slicing up the complete picture or image. Using a computer to form similar pieces for the complete award symbol cannot be considered inventive.
Claim 18 is an omnibus claim and is therefore to be construed as being limited to the essential features of the invention identified by the subject of the claim as described in the specification. As claim 18 does not further limit the scope of the claim with the words “with reference to the accompanying drawings”, I consider that the scope of claim 18 is no different to that of claim 1. As I have already found claim 1 to lack an inventive step, it follows that claim 18 also lacks an inventive step.
Therefore I find that the invention defined in claims 1-13, 16-18 is not inventive.
For the sake of completeness, I will also address a couple of issues that the applicant raised in relation to D1 and the two documents downloaded from the internet.
The applicant questioned the authenticity and validity of document D1 stating that some of the drawings include a number of hand written text in addition to type written text and this raises the possibility that the hand written amendments may have been incorporated by different people after the priority date of the claimed invention.
I can find no substance in this argument. While it is true that D1 includes some sloppily handwritten amended text, that is not reason to doubt the authenticity of the document. This document was downloaded from the official USPTO website and I can see no reason to suspect that it may have been altered after its publication date. As the examiner explained, it is not unusual for patent documents to have handwritten amendments. This document including any handwritten text was prima facie published before the priority date of the claimed invention and is therefore relevant prior art for the purposes of novelty and inventive step.
The applicant also questioned the use of “Streets Paddle Pop Lick-a-Prize” and “Golden Jigsaw” promotional material to establish common general knowledge on the basis that the publication dates of these documents was not clearly established to be before the priority date. The examiner stated in her examination report that the “Streets Paddle Pop Lick-a-Prize” document was published on 17 December 2008 and that the “Golden Jigsaw” document was published on 6 January 2009 according to the Wayback Machine. The applicant has submitted that there is no evidence that Australian courts have approved the use of Wayback Machine to establish publication dates of archived documents.
While this may be true, patent offices around the world do rely on internet documents as relevant prior art for the purposes of determining novelty and inventive step and the Wayback Machine is one of the ways to establish the publication date of an internet document. The Internet Archive may not be entirely reliable in respect to dates of availability or content on a particular date, but absent any reason or evidence of error then the dates and content on Wayback Machine should be accepted on the balance of probabilities. Moreover, the listed capture date in the Web-Archive URL for these documents is some nine months before the priority date of the application. Even allowing for some variance in accuracy of the publication date, I think nine months is likely to be a sufficient buffer to cover that.
Further in the present instance it is clear from reading these two documents that both these promotions took place well before the priority date of the present application. For example the “terms and conditions” of the “Streets Paddle Pop Lick-a-Prize” clearly states “Promotion commences 11/08/2008 and ends close of business on 31/01/2009 ("Promotional Period")”. Similarly on reading the “Golden Jigsaw” promotion article, it is clear that this promotion was conducted in 2007 and the date the author of this article wrote it is clearly stated to be 22 June 2007. I have therefore no doubt that the information in these two documents was published and well known before the priority date of the claimed invention.
Conclusion
I have found that there are lawful grounds for objection to the present patent application. In particular I find the claims are not directed to a manner of manufacture and do not involve an inventive step.
Furthermore, I consider that no patentable subject matter is disclosed in the specification such that a further opportunity for the applicant to propose amendments would not serve any useful purpose.
Consequently, pursuant to subsection 49(2) of the Act, I refuse the application.

100. If the applicant wishes to appeal this decision, he may do so to the Federal Court within 21 days of the date of this decision, pursuant to section 51 of the Act.
R Subbarayan
Delegate of the Commissioner of Patents