Troy Andison - [2022] APO 63

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Troy Andison [2022] APO 63

Patent Application: 2020257067
Title:Location-based Collection of Recyclable or Reusable Items

Patent Applicant:                   Troy Andison
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  12 September 2022
Hearing Date:  Written submissions period completed 13 July 2022

Catchwords: PATENTS – section 45 – examiner’s objection – method and system for arranging for collection and deposit of recyclable items – invention in substance directed to a mere scheme – alleged invention not a manner of manufacture – application refused

Representation: Patent attorneys for the applicant: Wallington-Dummer

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2020257067
Title:Location-based Collection of Recyclable or Reusable Items

Patent Applicant: Troy Andison
Date of Decision: 12 September 2022
DECISION
The claims of the application, as proposed to be amended, do not define a manner of manufacture.

I refuse the application.
REASONS FOR DECISION
BACKGROUND

Troy Andison (“the applicant”) filed patent application 2020257067 on 20 October 2020, requesting expedited examination 30 October 2020. After filing amendments in anticipation of examination, a first examination report issued on 30 December 2020. Troy Andison responded with amendments and arguments, and a second examination report issued on 7 April 2021. The second examination report contained a single objection that the claimed invention was not directed towards a manner of manufacture. Following this report, a hearing was requested. Opportunities were provided for the filing of written submissions to assist the hearing officer determine the matter on the written record, however none were provided.
The examination of the present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) as the application was filed after 15 April 2013. Thus, I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
The final date for acceptance of the application was 30 December 2021, however paragraph 13.4(1)(g) of the Patent Regulations 1991 is available to extend the time for gaining acceptance to 3 months (or longer if appropriate under sub-regulation 13.4(3)) from the date of the present decision.
SPECIFICATION
The specification begins by discussing glass bottle recycling in the early 20^th century which has ultimately led to the implementation of legislation across the States of Australia regulating container deposit schemes. It is noted that historically a consumer is generally required to deposit bottles, and that this can lead to non-optimal effectiveness of the schemes. The present invention is said to address barriers regarding recycling rates which may have positive effects in the recycling ecosystem by:
…simplifying the deposit process and clarifying the recycling eligibility of items for Users, thereby saving the User time and effort, reducing mixing error, and supporting initiatives of government(s) to reduce the impact of waste on the environment, reduce society's carbon footprint, and support a greener future. Other outcomes may be the creation of employment opportunities, reduction in transport costs, etc.
The specification describes a number of figures which largely amount to technology enabled collection methodologies for recyclable items in addition to a physical recyclable material collection station that may be constructed from a modified shipping container. It is the collection methodology that is the focus of this application by way of claim 1 as proposed to be amended on 9 March 2021. Fig. 10 provides a depiction of the invention that is related to claim 1.
Claim 1 as proposed to be amended is as follows:
A control system for pickup and drop-off of at least one recyclable item; the at least one recyclable item located at a user location; the control system identifying a relocatable receivable depot from a plurality of geographically separated relocatable receivable depots dispersed within a collection area;
           said control system comprising:
           (a) a roving pickup control apparatus in the form of a collector digital device;
           (b) relocatable receival depot control apparatus;
           (c) a user digital device;
           said roving pickup control apparatus, co-located with a collector; the collector effecting transport of at least one recyclable item from the user location at the direction of the control system;
           said relocatable receival depot control apparatus collocated with a relocatable receival depot;
           whereby said collector travels to the location of said recyclable item; said roving pickup control apparatus then reads the identity of said recyclable item; and said recyclable item is then picked up by said collector and transported to said relocatable receival depot on receipt of a pickup signal by said roving pickup control apparatus; said pickup signal including route information and location information of said recyclable item and location information of said relocatable receival depot thereby to permit said roving pickup control apparatus to guide said collector to the location of said recyclable item and to the location of said relocatable receival depot; and
           a. the user digital device configured to:
i.Scan an electronically readable element associated with the Recyclable Items:
ii.Send the details of the scan to a remote server:
iii.Display the details of the collection request on a display of the user digital device:
iv.Request confirmation to make the collection request:
v.Upon receiving confirmation, transfer stored geographical location to a system gateway:
vi.Receive notifications of the collection process using the collection request having occurred:
b. one or more computer-executable instructions stored in the user digital device and executable by the one or more processors to perform operations comprising:
i.receiving, via a mobile application that is associated with the system and that resides on a User Device of a User, a current geographic location of the User Device and a maximum amount of time for fulfilling the collection request to the current geographic location;
ii.identifying a plurality of the recyclable items that are ready for collection,
iii.receiving, via the mobile application and from the User, the details of the recyclable items,
iv.identifying a Collector to execute the collection based on a plurality of factors:
v.facilitating the collection request from the current geographic location by transmitting an instruction to collect the recyclables to the identified Collector.
The claimed invention is for a control system that facilitates picking up and dropping off recyclable items. The control system identifies one of a plurality of relocatable receivable depots that are within a geographical collection area.
There are three key elements to the control system. A first is a collector digital device which is used by a collector who is instructed to pick up recyclable items and move them from a user location. It is clear from the specification that this digital collector device maybe a mobile phone. A second element is a control apparatus that is associated and collocated with a relocatable receival depot. Similarly, it is clear from the specification that this is simply some generically described computer apparatus that may have network capability. Thirdly, a user digital device is present, which again may be a mobile phone, this time associated with a user, being a person who generates a collection request for recyclable items.
Thus, ultimately the physical apparatus or “architecture” of the claim comprises a networked arrangement of generic or standard computer devices. This networked arrangement can be seen in further detail later in the claim to generate, send, and receive different data and thereby arrange for instructions for the pickup and drop-off of recyclable items.
Turning now to the specifics of the methodology implemented using the control system it is claimed that, with respect to actions relevant to the collector:
·     A collector travels to the location of the recyclable item.
·     The collector can use their device to read the identity of the recyclable item.
·     The recyclable item is then taken by the collector to a relocatable receival depot when a signal is received by the device of the collector.
·     The signal received by the device of the collector includes route information and location information that will guide the collector to the location of the recyclable item and to the location of said relocatable receival depot.
In other words, the dot points describe a procedure wherein location instructions are sent to a collector to guide them to particular places for scanning, collection, and delivery to a receival depot of a recyclable item.
The claim also discusses actions performed at the digital device of the user who is requesting pickup of recyclable items. Steps taken are as follows:
·The user scans an electronically readable element associated with the recyclable device which would appear to include such standard elements such as a QR code.
·The user then sends information from the scan to a remote server.
·The user device shows collection request details on its display and enables a collection request to be made.
·After making a collection request, confirmation is received, and the user device then sends a geographical location to some kind of system gateway which would appear to merely be some kind of element of the relevant operating system. This geographical location would appear to facilitate the collector travelling to pickup the recyclable item.
·The user device is also configured to receive updates as to the progress of the collection request.
The digital device of the user requesting collection is also claimed to include a mobile application that facilitates a number of steps related to the steps in the above paragraph. These include:
·Receive the geographical location of the user device and a maximum time for fulfilling the collection request to the current location. In other words, the application seeks information as to where the pickup is to occur, and when it should occur by.
·Identify items and information about items ready for collection. In other words, the application seeks information as to what is to be collected.
·Identify an appropriate collector to execute the collection.
·Send an instruction with all necessary information to the identified collector to facilitate collection.
The claim is thus quite straightforward to understand. Standard computing devices are used in a networked manner to identify and share information on the basis of certain entities being a user and a collector. The user generates information regarding a desire for pickup of recyclable items and this information is packaged and provided to the collector such they can be guided as to their travels so as to complete the collection process and deposit the collected items at a suitable location.
MANNER OF MANUFACTURE
In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law regarding manner of manufacture. At page 275:-
“… a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art …- that its value to the country is in the field of economic endeavour”.
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
Thus, the assessment as to patentable subject matter in this context requires a consideration of the substance of the invention. To further guide the determination of patentable subject matter in the context of computer implemented inventions, a range of principles have been developed. The principles of law that apply to the present matter are themselves substantially uncontroversial, noting however that on a case-by-case basis at times they can be difficult to apply. These principles were usefully summarised and generally accepted at [200]-[201] by Robertson J in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (Rokt 1) at [189] as follows:
“17.1 The Court must decide, as matter of substance not form, whether the claimed invention is the proper subject-matter for a patent: RPL Central at [99]; Research Affiliates at [106], [117].
17.2       This requires consideration of both the claims of the Application and the invention described in the body of the specification: RPL Central at [114].
17.3       The assessment is not done mechanically. There are no precise guidelines or mathematical formula. It is ‘a question of understanding what has been the work of, the output of, and the result of, human ingenuity’ and then applying the developed principles: Research Affiliates at [116]. See further RPL Central at [112]:
Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie ...
17.4       One well-settled principle is that a distinction exists between a technological innovation and a business innovation. A technological innovation is patentable. A business innovation is not: Research Affiliates at [94]; RPL Central at [100]. Consequently, a business method or scheme is not, per se, a proper subject for letters patent: RPL Central at [96]. Nor are abstract ideas, mere intellectual information or mere directions for use patentable: Research Affiliates at [101]; RPL Central at [100].
17.5       A computerised business method or scheme can, in some cases, be patentable. However, ‘[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation’: RPL Central at [96] (emphasis added). This requires ‘some ingenuity in the way in which the computer is used’: RPL Central at [104]. It is not a patentable invention ‘to simply “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions’: RPL Central at [96]. In other words, if the ingenuity lies in the business method or scheme alone, the invention will not be patentable despite the computer-implementation.
17.6       Thus, a claimed invention must be examined to ascertain whether it is in substance a scheme or plan, or whether it can broadly be described as an improvement in computer technology: RPL Central at [96]. Contrary to [the applicant’s submissions at [49]], this is a binary distinction: the invention is either an unpatentable scheme or plan, or it is a patentable improvement in computer technology. In conducting the analysis, it is useful to:
17.6.1      ascertain whether the contribution to the claimed invention is technical in nature: RPL Central at [99], Research Affiliates at [114];
17.6.2      consider whether the invention solves a ‘technical’ problem within the computer or outside the computer: RPL Central at [99], Research Affiliates at [103];
17.6.3      consider whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed: RPL Central at [99], Research Affiliates at [118];
17.6.4      consider whether the invention requires merely ‘generic computer implementation’, as distinct from steps which are ‘foreign’ to the normal use of computers: RPL Central at [99], [102]; Research Affiliates at [101]; and
17.6.5      consider whether the computer is merely the intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea: RPL Central at [99].”
The Full Federal Court decision in Commissionerof Patents v RoktPte Ltd (Rokt 2) [2020] FCAFC 86 confirmed and applied these principles. It appears a sensible approach, consistent with the above principles for considering patentability, to consider whether the invention constitutes a technical solution and/or solves a technical problem.
This approach remains relevant in view of subsequent decisions. In Commissioner of Patents v Aristocrat Technologies Pty Limited (Aristocrat ’21) [2021] FCAFC 202, it was found that a game implemented on an electronic gaming machine was not patentable. After first identifying the claimed invention as involving a mere game which was unpatentable, the Full Court asked whether the claimed invention was a computer-implemented invention before determining that for the claims to be patentable, there needed to be “an advance in computer technology”. On appeal to the High Court, in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 the Court was evenly split, and via section 23(2)(a) of the Judiciary Act1903 affirmed the Aristocrat ’21 decision, while appearing to confirm that an advance in computer technology is not a useful test for patentability. Additionally, the High Court appeared to confirm the decisions of the Full Federal Court in RPL Central, Research Affiliates, Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, and Rokt 2 were correct.
APPLICANT’S SUBMISSIONS
The applicant did not file any submissions for the hearing of the matter. I refer to the submissions filed in response to the first report of the examiner, to which the examiner responds in his second report:
“Examiner will note that claim 1 have now been amended to include three components, namely
(a) a roving pickup control apparatus in the form of a collector digital device;
(b) relocatable receival depot control apparatus;
(c) a user digital device.
Each of the components (a), (b), (c) has functionality as specified in the claim so as to provide a control system for efficient pickup and drop-off of at least one recyclable item. There is no ‘administrative scheme’ as such claimed in the claim as proposed. On the contrary there is very specific functional interrelationship between the specified components (a), (b), (c). In terms of utility the end result of operating the control system of claim 1 is the efficient pickup and drop-off of at least one recyclable item at a relocatable receival depot, the item having been picked up from a user location as specified by the user digital device.
The examiner will note that previous independent claim 31 directed at a method for operating one or more servers is now made dependent from proposed claim 1. In any event it is respectfully submitted that a method of operating servers is, prima facie, suitable subject matter for a patent in Australia which has not been precluded by the Research Affiliates decision.”
EXAMINER’S OBJECTION

In his second examination report, the examiner included the following objection:
“The applicant points to the recitation of a roving pickup control apparatus in the form of a collector digital device, a relocatable receival depot control apparatus and a user digital device and claims that this provides for the existence of a control system and a ‘very specific functional interrelationship’ leading to an efficient pick-up and drop off. However, there is no technical specificity in the way the technology interacts and they are simply remote control devices that report to each other in a generic way to keep track of and organise the collection of objects and there is no technical advance elucidated in the claims. Whatever functional result that is derived from the claims is due to the administrative procedures recited in facilitating the transportation and pickup of the goods. As such, the manner of manufacture objection is maintained.”
CONSIDERATION
Generally speaking, the claimed invention includes a service driven recycling scheme that, to achieve patentability, would appear to require the invention lie in computer implementation. As can be seen from my discussion of the invention above, present in the claim are three clearly generically described computing devices, one each associated with a user requesting collection, a collector, and a receipt depot. The applicant, in their most recent response to an examination report, argues that each device has functionality as specified in the claim so as to provide a control system for efficient pickup and drop-off of at least one recyclable item. This is true. Each device, but more so the user device and the collector device, performs certain actions and thereby possess specific functionality.
However, that each device possesses certain function is not sufficient of itself to confer patentability. This is made entirely clear in the matters that have been considered by the Full Federal Court in the area of computer implemented inventions that I have identified above. Relevantly it is identified in RPL Central at [111] that in implementing an otherwise unpatentable process in computer technology to solve a problem, the solution:
“…to be patentable, must involve more than the utilisation of the well-known [functions] of a computer, for example an invention in the way in which the computer is utilised.”
Thus, in terms of functionality, what I must look for is whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed. Another way of phrasing this consideration is to ask whether there is, at a broad level, an improvement to computer technology involved. Turning back to the claimed invention, what is apparent in my analysis at paragraphs 7 to 13 is the use of generically defined computing devices, such as a mobile phone, to receive, process, present, and share particular data. The functioning of those devices rises no higher than this and is thus analogous to the functioning of the devices in RPL Central that took advantage of the search and processing functions of a computer. To this extent, the devices serve to merely automate data processing steps identified in my dot points of paragraphs 10 to 12, the data processing steps performed in relation to an entity being a user or a collector. These data processing steps are embedded within a method or scheme which facilitates efficient collection of recyclable items.
On this I note that the applicant argues that there is a “very specific functional interrelationship between the specified components (a), (b), (c)”. The problem here is that I see absolutely no specifics present in terms of the functional relationship between the components aside from the sharing of data. No benefits of the invention appear to arise from the interworking of devices aside from the benefit of computer bound automation and performance of a process, which naturally provides for convenience and efficiency.
It is true that the end result of operating the control system of claim 1 is the efficient pickup and drop-off of at least one recyclable item at a relocatable receival depot, the item having been picked up from a user location as specified by the user digital device. However, beyond mere automation using a digital device, this effect does not rise any higher than the efficient pickup and drop-off by specification of pickup and drop-off instructions by an entity in the form of a user. There is simply no ingenuity present in the computerised implementation of the claimed method.
In the most general sense of the idea, I accept that the invention provides a computer implemented method that is practical and useful. The effect of the invention as put forward by the specification and applicant’s submissions is the efficient pickup and drop-off of at least one recyclable item at a relocatable receival depot, and given the nature of the computer implementation this is not in my reckoning, sufficient to confer patentability. The effect is not technical in nature, being of the nature of logistical benefits of good process operation.
The problem solved by the present invention is that historically a consumer is generally required to deposit bottles, and that this can lead to non-optimal effectiveness of the deposit schemes. The present invention is said to address barriers regarding recycling rates which may have positive effects in the recycling ecosystem. The problem is clearly not related to an issue with any physical object or physical process, but simply a logistical requirement for a consumer to deposit bottles. The problem is not technical.
I have no doubts that the technology use in the present invention is generic or standard technology. There are clearly no steps that are foreign to computer function, each of the steps performed by the devices being merely non-descript technologically based manipulation of particular data. Clearly there is no ingenuity in the way the individual devices are utilised, and here the technology is simply the means of automation - the intermediary.
With the above consideration in mind, it is clear to me that that substance of the invention is a method for arranging and facilitating pickup and drop-off of recyclable items involving a customer/user and a collector who picks up recyclable items from a customer/user and takes them to a relocatable recycling depot that is merely implemented using computing devices that are held by the customer/user and roving collector. The specific steps of the method are summarised in the dot points in paragraphs 10 to 12. Guided by the decisions of the Full Federal Court, the substance of the invention is clearly a scheme. The innovation does not lie in anything technical. I believe the claimed invention can easily be characterised as business innovation.
Hence, I find that claim 1 is not for a manner of manufacture.
Remainder of the specification and divisional applications
In their response to the first examination report, the applicant points out that “previous independent claim 31 directed at a method for operating one or more servers is now made dependent from proposed claim 1” and that “a method of operating servers is, prima facie, suitable subject matter for a patent in Australia which has not been precluded by the Research Affiliates decision”. Put simply, I do not see anything in the relevant dependent claim that relates to any operation of servers that provides for any improvement to computer function such as to be patentable in accordance with Research Affiliates. The dependent claim merely adds to claim 1 features such as: a server detecting operation of a user application; determining location of a user device on the basis of GPS data; determining locations of available collectors; providing map data to a collector for display on their device; receiving a pickup request with associated data from a user; selecting an available collector; and, tracking a collector as they move to the pickup location. For reasons analogous to those already provided, they do not provide for a manner of manufacture.
The remaining dependent claims simply add further business or administrative features to the scheme. For example: determining a reimbursement amount of the recyclable item; minimisation of route distance and time; and associating reimbursement amount with route distance. The specification largely reflects this array of non-technical features that I have discussed to date in this decision, none of which confer patentability.
Also present in the specification is a modified shipping container which is clearly a physical device that has the capability to satisfy the requirements for manner of manufacture. However, I note that the applicant, in not responding to the invitation to make submissions for this hearing, has chosen not to prosecute this aspect of the specification. Furthermore, this application has two later associated applications. One is divisional standard application 2020267315 which was examined and lapsed for failing to gain acceptance. Outstanding on that application was objection to a claim to the physical construction of a recycling depot. The other is divisional innovation patent 2022100066 of standard application 2020267315 which is not currently under examination and is directed towards the invention that has been claimed in the present application. It follows that I see no rational basis to consider that the intent of the applicant, in respect of the application the subject of this hearing, is to claim a physical device, for example in the form of a modified shipping container, that meets the criteria for manner of manufacture.
CONCLUSION
I agree with the examiner. I conclude that the claimed invention, as a matter of substance is not for a manner of manufacture. I have found that no claim of the application, as proposed to be amended, defines an invention that is a manner of manufacture. Furthermore, while the applicant requested to be heard in relation to the examiner’s objection it is provided no submissions for the hearing disputing the objection and has not proposed any amendments to overcome the examiner’s objection. In these circumstances it appears appropriate that I refuse the application.
Dr N. R. Madsen
Deputy Commissioner of Patents