WiseTech Global (Licensing) Pty Ltd - [2024] APO 37

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
WiseTech Global (Licensing) Pty Ltd [2024] APO 37
Patent Application: 2022203109

Title:Systems and methods for compilation and distribution of air cargo security information

Patent Applicant: WiseTech Global (Licensing) Pty Ltd

Delegate:Mr Kevin Restrick

Decision Date: 28 August 2024

Hearing Date: Written submissions filed on 7 June 2024

Catchwords: PATENTS – standard patent – examiner objection – clarity – manner of manufacture – substance of the invention resides in an administrative process that compiles and checks whether security related data of a consignment is not faulty, or if faulty allows faults to be corrected, and creates a form that signals to the user the consignment can progress without inspection – claims are clear – all claims lack a manner of manufacture – no patentable subject matter in application – application refused

Representation: Patent attorney for the applicant: FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2022203109

Title:Systems and methods for compilation and distribution of air cargo security information

Patent Applicant: WiseTech Global (Licensing) Pty Ltd
Date of Decision: 28 August 2024

DECISION
The claims of the application, as proposed to be amended, do not define a manner of manufacture. Furthermore, there is nothing of substance in the body of the specification from which valid claims could be drafted to overcome this finding. The application is refused.
REASONS FOR DECISION
Background

The present matter concerns patent application 2022203109 (“the application”) by WiseTech Global (Licensing) Pty Ltd (“the applicant”). The application was filed 10 May 2022 as a divisional application of 2016292952 (“the parent application”) itself a national phase entry of PCT/AU2016/050622 consequently providing the application with a priority date of 16 July 2015.
The parent application was the subject of one examination report that raised a series of objections as to why the application could not be accepted. The applicant did not respond to the report and the application lapsed because it failed to gain acceptance within the prescribed time period.
The application has been the subject of a first adverse examination report, a set of proposed amendments, and a second adverse examination report. After which on 18 April 2024 the applicant wrote to the Commissioner requesting to be heard in relation to the matters of the second examination report, namely the outstanding objections that the claims were not clear, the claimed invention was not to a manner of manufacture, and the claimed invention lacked an inventive step. On 30 April 2024 the Commissioner wrote to the applicant indicating that the hearing would be conducted by way of written submissions due to be filed by 11 June 2024. The applicant filed their submissions in this regard on 7 June 2024 (“the applicant’s submissions”). At the same time the applicant filed a statement of proposed amendment asking to replace all the pages of the description and claims with new pages. The applicant’s intent of the amendment is to address issues of clarity raised in the second adverse examination report. I am satisfied that the amendments are allowable and this decision will proceed on the basis of the specification as proposed to be amended on 7 June 2024 (the specification).
The request for examination of the application was filed on 12 July 2022. The 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. The standard of proof that applies is the balance of probabilities (subsection 49(1)). The application must be accepted if on the balance of probabilities the application complies with the Act. If the application does not comply with the Act then it can be refused pursuant to subsection 49(2). While the final date for acceptance of the application was 15 June 2024, when the Commissioner decides in writing in relation to an Examiner’s report, the time of gaining acceptance may be extended by 3 months from the date of the present decision (see subregulation 13.4(1)(g)) or longer if appropriate (see subregulation 13.4(3)).
The invention as described
The application is directed to the compilation and distribution of air cargo security information.
The background section of the specification explains that the air transport industry is particularly concerned with cargo and shipment security where the movement of goods is heavily regulated and security of shipments is of high importance; countries want assurance that goods are as listed and secured to prevent nefarious activities, whilst consignees and carriers require assurances that the shipment is as declared and as expected. Further complexities arise when freight forwarders consolidate a number of customer’s shipments. Comingled shipments present difficulties to demonstrate secure shipment assurance because not all items within the shipment travelled the same path.
Assuring security of a shipment is commonly achieved either through screening or via a trusted supply chain entity. Screening involves inspecting the shipment to ensure it is as declared and has not been tampered with. Screening can take time resulting in delays to the shipment. A trusted supply chain entity is a system of approved vendors who adhere to procedures designed to ensure that the consignment is not tampered with as it moves through various shipping processes. Maintaining and sharing up to date security related data on the entities and logistics providers in the supply chain is a necessity otherwise further inspections are required, and delays can ensue.
A security declaration form accompanies a shipment in order to provide an auditable history of the security of the shipment. The form contains relevant security information regarding the cargo, including how the cargo was secured, when the cargo was secured and who secured the cargo. Whilst there are internationally standardised forms, such as IATA’s electronic consignment security declaration (e-CSD) form, the present application explains that it is not limited to this form and any other type of form is within the scope of the disclosure.
Paragraph 0007 of the specification provides the broad problem statement that the application is directed to:
“There exists a need in the transport industry for a system that can easily and accurately generate and transmit a master security declaration, taking into account the individual security status of the elements of the shipment.”,
whilst Paragraph 0056 of the specification discusses some of the problems if there are incomplete or faulty security details from a logistics service provider:
“As is described in detail below, if there are any issues security details of a logistics service provider the system will indicate or alert. In particular, the security details of a logistics service provider may be faulty. … In such a case, if not remedied otherwise, the goods must be inspected or other relevant action must be taken before they can proceed along the supply chain. A consequence is that inspections mid-path in the shipping of goods is both time-consuming and expensive so issuing an indication or alert is preferably avoided. For example, if the goods or any aspect of the shipping of the goods are found not to comply with any required regulations along the shipping path, heavy fines or additional inspection fees may be imposed on any one or more of the shippers, the carriers, the freight forwarders, and/or the receivers of the goods.”
The applicant’s submissions summarise the problems that can arise in a complex global supply chain:
“The problem that is being addressed is that security inspections hinder the movement of goods in global supply chains. This problem is solved by the claimed combination of databases, embedded forms, determinations, alerts, electronic messages and so on.”,
and they go on to provide a convenient summary of the invention:
“The current invention provides a solution to the problem of delays in shipments in the form of a freight forwarding system that determines if security details are faulty and triggers a security inspection process if that is the case. The system further determines rectification of faulty security details and in response, creates a trusted chain of custody, which can then be used to issue a security declaration. The shipment then passes through the shipping path without undergoing security inspection.”
The application approaches this problem by providing a freight forwarding process and system for security validation of a consignment to determine whether to issue a security declaration form. Figure 1 (reproduced below) shows how freight management and logistics computing system 101 is part of a large scale and integrated freight management and logistics system that includes a range of geographically distributed freight security systems each being engaged with local logistics service providers such as freight forwarders, shippers, freight consolidators or agents handling the goods to be shipped. The freight security systems include modules that captures and saves data about each service provider and the consignment and goods transfer, in particular information to confirm that goods have been transferred under secure conditions, store security details of the logistics service providers, and includes data on whether providers have a trusted entity status. The data, including the data related to security, is made available and stored in the freight management and logistics computing system’s database and can be accessed by users via client computing system 105 (Paragraphs 0053 – 0057 of the specification).
As a cargo shipment moves through its transit pathway it will pass between logistic service providers. At each transfer point, the freight forwarding system has the necessary security related data so that it can verify for the user that the cargo shipment is secure. Figure 8 (reproduced below) provides the key steps in this process where available security data is complied, accessed, reviewed, and assessed whether the data is faulty. If the security details associated with the cargo shipment’s logistics service provider is determined to be faulty then the system triggers a security inspection process including issuing an alert to the user and the system will not issue a security declaration form (Paragraph 0016 of the specification). Examples of the logistics service provider’s details being faulty can include having an untrusted rating, being mal-formatted, have a missing or expired trusted entity identifier, or incorrect or missing security inspection method or exemption (Paragraph 0029 of the specification). The consignment is then held up until the faulty security details can be rectified. Once the faulty security details have been rectified, for example by a particular logistics provider renewing their trusted status and updating their data in the freight system’s database, the freight forwarding system can acknowledge there is no longer any faulty security related data and can issue the security declaration form. Once in place, the cargo shipment passes through the shipping path without undergoing any security inspection process.
At each stage of the process the system checks to see whether the analysis of the security related data (and hence generation of the security declaration form) is “mandatorily required”. This step is required as different jurisdictions may have different requirements on whether a declaration form is required based on the shipment’s origin or transhipment location.
One example implementation of the applicant’s process and system is presented in Figure 9 and reproduced below. Paragraphs 0134 – 0138 of the specification explain that the claimed process and system is implemented over a network (900) including a client computer and database (901 and 902 respectively) that I understand to align with the client computing system (105) of the more schematic representation shown in Figure 1. Central to the network is logistics server (911) and logistics database (912) that I understand aligns with the freight management and logistics computing system (101) of Figure 1. The logistics server communicates with multiple individual local jurisdiction data provider computer systems (921, 931, 941) each with an associated local jurisdiction database (922, 932, 942). Each of these local providers reflects the individual freight security systems (110, 120) shown in Figure 1 through which will interact with local logistics service providers involved in the shipment of goods. The description explains that the security details and trusted status documents of a local logistics service provider can be collected via the local jurisdiction data provider computer systems, uploaded to the logistics server and stored with a trusted status on the logistics database in a trusted status table. The trusted status of the specific logistics service provider is made available to the client computer where the claimed process can be implemented including presenting an embedded form to the user replete with data about the consignment and logistics service provider. The server is also able to extract information from the documents such the expiry date of a trusted status certificate and can send a renewal notice to the providers such that their trusted status can be maintained. This allows automatic and timely processing of trusted status requests.
In terms of practical implementation, for example Paragraphs 0064 and 0073 of the specification, the application explains that the databases can be SQL databases executing SQL queries, the embedded forms can be created using HTML code and which can be accessible on the browser application of the client computer system. The applicant intends the claimed process and system to be performed by modules operating on hardware, virtual machines, in a web server, ASICs, FPGAs, CPUs and GPUs. The description recognises, for example at Paragraph 0102 of the specification, that there are IATA industry standards in the form of Cargo-IMP and Cargo-XML for providing the electronic cargo message that communicates the security declaration form (the e-CSD) included in the industry accepted electronic air waybill. Whilst Paragraph 0127 of the specification explains that data can be structured and represented in XML and JSON formats and shared between elements of the system. It is apparent from the description that the claimed process and system is implemented using industry standard protocols and commonly available computing resources.
The claims
The claims being considered are those as proposed to be amended and dated 7 June 2024. The application includes fifteen claims. Claim 1 is an independent claim directed to a computer implemented process of a freight forwarding system for security validation of a consignment for determining whether to issue a security declaration form, whilst independent claim 6 is directed to an analogous freight forwarding system for security validation of a consignment to determine whether to issue a security declaration form. The remaining claims are claims that are dependent to either the process of claim 1 or the system of claim 6. I note that claims 14 and 15 use the language “The method of any one of the preceding claims…” (my emphasis in bold). I understand these two claims to be refer to the process claims.
Aside from the preamble, the features and scope of the two independent claims are essentially equivalent to each other. Where claim 6 differs from claim 1 is that it includes the physical and functional features of the process steps of claim 1. Claim 1 – the process claim – is reproduced below and this claim will form the basis of this decision’s considerations. Having considered claim 1, and if necessary, claim 6 and the dependent claims can be considered. The applicant’s submissions denote the various sections of claim 1 using an alphanumeric character. For consistency I have adopted the same (see below).
Claim 1 reads as follows:
A computer-implemented process of a freight forwarding system for security validation of a consignment for determining whether to issue a security declaration form, comprising:
[A] receiving logistics service providers’ security related data on a client computer system;
[B] pre-populating an embedded form of a logistics system with the security related data and visually presenting the pre-populated embedded form of a system of freight forwarding on a user’s graphical system interface of the client computer system;
[C] determining whether the embedded form is mandatorily required by determining the jurisdiction of the origin or transhipment location of the consignment based on the security related data, wherein the embedded form includes available fields for security details, such being pre-populated for identifying logistics service providers who deliver goods to freight forwarders, logistics service providers having associated security details;
[D] if the form is mandatorily required, accessing from a database stored on a server, security details of at least one particular logistics service provider from a plurality of logistics service providers that will handle the consignment during a shipping path of the consignment, and providing the security details of the at least one particular logistics service provider to the form,
[E] wherein the server is configured to receive trusted status documents from the plurality of logistics service providers and maintain a trusted status table based on the trusted status documents;
[F] determining if the security details of the at least one particular logistics service provider associated with a particular consignment security details are faulty, wherein the security details are based on the trusted status table and faulty is at least one of an untrusted rating, mal-formatted, missing or expired trusted entity identifier or incorrect or missing security inspection method or exemption;
[G] triggering a security inspection process of the particular consignment, in response to determining that the security details are faulty;
[H] upon triggering the security inspection, issuing an alert in the visual presentation of the pre-populated embedded form on the user’s graphical system interface of the client computer system, if it is determined that the security details are faulty;
[I] if in determining whether an embedded form is mandatorily required, the determination is that the embedded form is mandatory, obstructing the issuance of a security declaration form until the faulty security details are rectified;
[J] determining that the faulty security details of the at least one particular logistics provider are rectified responsive to receiving a trusted rating of the at least one particular logistics provider or the trusted entity identifier of the at least on particular logistics provider;
[K] responsive to the faulty security details of the at least on particular logistics provider being rectified, creating a trusted chain of custody defining the shipping path of the particular consignment, the trusted chain of custody indicating that all of the plurality of logistics service providers that handle the particular consignment in the shipping path and pass the particular consignment from one logistic service provider to a next logistic service provider in the trusted chain of custody are trusted;
[L] upon creating the trusted chain of custody, issuing the security declaration, in an electronic form;
[M] updating the faulty security details on the database by communicating, to the database, the rectified security details in response to the faulty security details being rectified; and
[N] creating and sending an electronic message, comprising the electronic form of the security declaration and the trusted chain of custody; and
[O] wherein the particular consignment passes through the shipping path defined by the trusted chain of custody without the particular consignment undergoing the security inspection process in response to issuance of the electronic form of the security declaration and the trusted chain of custody.

The claims do present some issues that are worth consideration ahead of the more substantive matters below.
I note that the application is directed to the logistics industry with its own specific terms and language. Paragraphs 0019 to 0038 of the specification provide extensive dictionary definitions of many terms and which assist the reader interpret the specification.
The claims, and the specification as a whole, use the terms “security declaration form” and “the security declaration” interchangeably and to mean the same thing. I understand the applicant to always be referring to the security declaration form that the process and system generates once all the security related data has been confirmed and found not faulty (Paragraph 0011 of the specification). The claims refer to an “embedded form”. Para 0019 provides a definition as “when invoked produces the security declaration form compiled in accordance with IATA Recommended Practice 1630 Cargo Security other practice. Any other type of form is within the scope of this disclosure.”. I understand “embedded form” to be an intermediate form that the system creates for the purpose of populating and presenting to the user during the claimed process. The final security declaration form is then created from the data contained in the embedded form. Finally, I note that the claims, and the specification as a whole use the terms “security data”, “security related data”, “security details”, and “security information” interchangeably (for example see Paragraph 0027 and 0028 of the specification) and to refer to the same concept, namely any data required to complete the embedded form and in turn the issued security declaration form.
Claim 1 focuses on the system and process steps for the scenario where the security declaration form is mandatorily required and there is a fault in the security data. To understand all the options that can occur in the process one needs to refer to claims 2, 3, and 5 that define the steps that occur when a form is not mandatorily required or where the security data is not faulty.
Lastly, I do have some concerns around how to interpret feature [G] and [O]. I will discuss and resolve this matter below as the examiner’s report also raised issue with the language of these features.
The remaining objections
There are three outstanding objections; whether the claims are clear and meet the requirements of s40 of the Act, whether the subject matter of the claimed invention is directed to a manner of manufacture, and whether the claimed invention involves an inventive step.
The examiner’s objection to the claims not being clear was directed at claims 1, 6, 12, 13, and 16 that existed prior to amendment. The objections are largely directed to the language and the consistency of terms.
The objection to the claimed invention not being directed to a manner of manufacture is based on an assessment by the examiner that there is no technical improvement in the functioning of a computer, a technical problem outside the computer is not being solved, and whilst there might be a practical and useful result it is achieved through a scheme. The examiner concludes that the substance of the invention is a business scheme for compiling, validating, and distributing security information of a consignment, and is consequently not patentable subject matter.
The examiner’s inventive step objection relies on the following prior art document:
US 7129837 B2 (SAVI TECHN INC) 31 October 2006
The document has been designated “D2” in the examiner’s report and the applicant’s submissions have followed this nomenclature. I will continue to refer to it this way. The examiner’s objection identifies the following features are missing from D2:
a.the step of determining whether to issue the security declaration depending upon whether the embedded form is mandatorily required by the jurisdiction of the origin or transhipment location of the consignment.
b.the step of validating the security details provided by logistics service providers to determine whether they are faulty, and updating the faulty security details before issuance of the security declaration.
The examiner explains that the addition to D2 of feature a) is simply a mere workshop improvement, and that feature b) is known in the art. Consequently, the examiner argues that independent claims 1 and 6 are not inventive over the disclosure of D2 in combination with common general knowledge in the art.
Summary of the applicant’s submissions
The applicant has submitted a statement of proposed amendments to address the clarity objections raised by the examiner.
The applicant’s submissions with regard to manner of manufacture argue that the “claimed invention has advantages that are practical, useful and technical”, stating that:
“The problem that is being addressed is that security inspections hinder the movement of goods in global supply chains. The system further determines rectification of faulty security details and in response, creates a trusted chain of custody, which can then be used to issue a security declaration. The shipment then passes through the shipping path without undergoing security inspection.”,
and
“The present invention provides for faster transportation and improved utilisation of resources, reducing emissions and other costs”.
The applicant draws my attention to Commissioner of Patents v RPL Central Pty. Ltd. [2015] FCAFC 177 (“RPL”) and Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”) and argues the present application is distinct from these decisions in that the present application has an underlying technical problem and the solution includes a technical and physical effect:
“However, it is also important to point out at this point that the current invention is different from the two cases above in the sense that the underlying problem is technical.
That is, the underlying problem of delays and inaccuracies in ETA estimates relates to movement of actual goods (containers, boxes, packages, etc.). These movements are certainly physical and there is nothing abstract about them. Having a shipment arrive later or earlier is definitely a physical effect. Further, having an accurate ETA is also a prediction on a physical phenomenon and therefore a technical endeavour. In this sense, the current case is clearly distinguished from RPL Central and Research Affiliates which did not have any physical phenomena in the underlying problem.”
The submissions press the applicant’s position that the claimed invention “leads to a practical and useful effect” and provides a series of submissions presented in paragraphs largely aligned with how I have structured my considerations below in Paragraphs 52 - 75.
The applicant’s submissions with regard to inventive step are directed to how the examiner’s inventive step objection has not established any evidence nor substantiated allegations of common general knowledge and thus the objections are not appropriate:
“We note that this conclusion by the Examiner is not based on any evidence, nor is it based on prior art or any indication of common general knowledge. It is merely a conjecture made by the Examiner.
The Examiner’s Manual at section 5.6.6.3 sets out three bullet points where a workshop improvement can occur. All of these bullet points relate to the prior art. However, the Examiner has not referred to the prior art. It is therefore clear that this objection has not been raised appropriately and should be dismissed.”.
The applicant also submits that the following feature is not disclosed by D2, that it provides an inventive step in its own right, and appears to have been overlooked in the examiner’s analysis and objection:
“determining that the faulty security details of the at least one particular logistics provider are rectified responsive to receiving a trusted rating of the at least one particular logistics provider or the trusted entity identifier of the at least one particular logistics provider; responsive to the faulty security details of the at least one particular logistics provider being rectified, [creating a trusted chain of custody defining the shipping path of the particular consignment…]”.
Clarity considerations
The applicant has submitted a statement of proposed amendments to address the clarity objections raised by the examiner. The proposed amendment deletes claims 12, 13, and 16 and in doing so has addressed the examiner’s objections against these claims. The matter regarding claim 1 and 6 is more substantial and requires some consideration.
Claim 1 (claim 6 has similar features, but directed to a system) prior to amendment includes the following features:
[G] triggering a security inspection process of the particular consignment, in response to determining that the security details are faulty;
[O] wherein the particular consignment passes through the shipping path defined by the trusted chain of custody without the particular consignment undergoing the security inspection process due to the electronic form of the security declaration and the trusted chain of custody.
The examiner’s report includes the following objection:
Claim 1 is not clear since it is internally inconsistent.
The process of claim 1 involves a step wherein a security inspection of a consignment is triggered if the security details of a logistics service provider are faulty. But the claim also states that the consignment passes through the shipping path defined by the trusted chain of custody without the consignment undergoing security inspections due to the electronic form of the security declaration and the trusted chain of custody.
For the purposes of this report, I have construed the claim to mean that the consignment passes through the shipping path defined by the trusted chain of custody without the consignment undergoing security inspections in cases where none of the security details of the one or more logistics service providers are faulty.
Claim 6 is unclear for the same reason.
The proposed amendment changes feature [O] (bold text to indicate the change):
[O] wherein the particular consignment passes through the shipping path defined by the trusted chain of custody without the particular consignment undergoing the security inspection process in response to issuance of the electronic form of the security declaration and the trusted chain of custody.
I consider the amendment better links the action of not performing a security inspection with the review and correction of faulty security data and the subsequent issuance of the security declaration form. In this sense, the amendment improves the readability of feature [O].
I’ll step through my analysis of the relevant features and assess whether the examiner’s objection of an internal inconsistency is still present and whether the claim is now clear.
One may expect that the process step of [G] and the term “security inspection process” inherently mean that the consignment undergoes a physical inspection or screening. However, I note that [G] does not specifically state that a screening or inspection actually occurs, simply that a step in the process titled “security inspection process” occurs and once this step is triggered subsequent steps [H] to [N] involve the retrieval and analysis of whether security related data is faulty, or not, and then provides the opportunity to rectify faulty data. The actual physical step of performing a security inspection appears to occur in claim 4 that defines the step of “issuing an alert stipulating security inspection process … by one of the methods recognised by the jurisdiction of the origin or transhipment location of the consignment.” when logistics service provider’s security details are faulty.
Turning to the description, Paragraph 0016 of the specification is simply a consistory clause identical to the claim and does not provide any useful context. Paragraph 0056 is more useful and states “In such a case <being faulty security related data>, if not remedied otherwise, the goods must be inspected or other relevant action must be taken before they can proceed along the supply chain.” and at further Paragraph 0091 “Each time the air cargo is transferred between trusted entities, the transferring party is often required to affirm the integrity of the shipment. If the transferring party cannot do so, the air cargo reverts to an unsecured shipment and may require an inspection or screening procedure to reconfirm the security of the air cargo before it can be boarded onto an aircraft.”. It is apparent from the description that a security inspection might only be required if the security related data is faulty and the fault cannot be rectified.
And so it would appear reasonable to interpret claim 1, feature [G], to be a step in the process titled “security inspection process”, however the practical step of inspecting the consignment may not occur if subsequent steps in the process can correct the faulty security data.
Returning to feature [O] it is important to recognise that the claim here refers to “the particular consignment passes through the shipping path”. I understand the term “shipping path” to mean the sequence of points and providers from the very first point where the consignment enters the hands of the first logistics provider (for example a parcel being collected by a courier from a business) to the final destination where the consignment is delivered to the end user (see Paragraph 0054 of the specification). In this sense I understand the claim to define a process where at a point along the shipping path all the security related data is checked and if found not faulty, or faulty data is corrected, then a security declaration form can be issued so that the consignment can continue along the rest of the shipping path without the particular consignment undergoing a security inspection process at each subsequent point on the shipping path.
Following from this analysis I believe the claim provides a reasonable basis by which I can without difficulty, determine the scope of the claim, (Monsanto Co. v Commissioner of Patents (1974) 48 ALJR 59, at page 60), and I can go on to consider the remaining grounds of manner of manufacture and inventive step. Consequently, the applicant’s proposed amendment to the claims addresses the examiner’s clarity objection and I consider all the claims to be clear and meet the requirements of s40 of the Act.
Before moving on, it is important to note that had this amendment been before the examiner it may have changed how the examiner approached their assessment of the claims and the prior art. In the examiner’s most recent report they construed feature [O] to mean that the freight forwarding process does not carry out security inspections when none of the security details are faulty. This is quite different to how I understand the claim. I understand the claim to mean that a consignment will not be inspected along the shipping path because it has a security declaration form, and the reason it has a security declaration form is that previously faulty security data has been corrected via the claimed process/system. I consider this quite a significant difference and because the examiner’s construction of claim 1 would have been applied in their assessment of novelty and inventive step means that previously cited prior art may now be relevant again. I will revisit this issue at the end of this decision and consider what further action may be required.
Consideration of manner of manufacture
Applicable law for manner of manufacture
The statutory basis for manner of manufacture is found at s18(1)(a) of the Act which states:
“(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and ...”
In National Research Development Corporation v Commissioner of Patents, [1959] HCA 67, (1959) 102 CLR 252 (“NRDC”), the High Court provided a statement of the law in this regard. 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”.
And went on at page 276, to further observe that what is meant by a “product” in relation to a process is only something in which a new and useful effect may be observed. More specifically:
“Sufficient authority has been cited to show that the ‘something’ need not be a ‘thing’ in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed”.
As stated in D’Arcy v Myriad Genetics Inc. [2015] HCA 35 (“Myriad”), 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.”
Further in Myriad, Gageler and Nettle JJ. at [144] stressed the importance of having regard to the substance of the claimed invention, not simply the form of the claim:
“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.”
The patentability of computer implemented business methods has received some focus in the Courts, most notably in Research Affiliates and RPL. These decisions have avoided a standardised assessment of the substance of the invention and instead requires one to adopt a case-by-case approach to identifying the substance of the invention. Their Honours in RPL at [96] – [98] explained the importance of identifying the substance of the invention and outlined considerations useful in determining whether a computer implemented business method is patentable:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well- known and understood functions.
Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.”
Thus, in relation to computer implemented inventions, it is necessary to look at the invention as a matter of substance, rather than as a matter of form. Upon doing so one will then be able to ascertain if this substance provides for a manner of manufacture using the established authorities.

RPL [99] to [107] and Research Affiliates [94] provide principles that assist in determining where the substance of computer implemented inventions resides and whether that material is patentable. Conveniently these principles have been summarised by the Delegate in Aristocrat Technologies Australia Pty. Ltd. (Aristocrat) [2016] APO 49 at [35]:
“I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·     there must be more than an abstract idea, mere scheme or mere intellectual information;
·     is the contribution of the claimed invention technical in nature;
·     does the invention solve a technical problem within the computer or outside the computer;
·     does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·     does the application of the method produce a practical and useful result;
·     can it be broadly described as an improvement in computer technology;
·     does the method merely require generic computer implementation;
·     is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·     is there ingenuity in the way in which the computer is utilised;
·     does the invention involve steps that are foreign to the normal use of computers; and
·     does the invention lie in the generation, presentation or arrangement of intellectual information.”
This approach remains relevant in view of subsequent decisions. For instance, these considerations appear to be well reflected in the principles summarised at [189] and generally accepted [201] by Robertson J in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (“Rokt1) and more recently the High Court confirmed the decisions of the Full Federal Court in RPL, Research Affiliates, and Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt2) were correct.
I note that the applicant’s submissions are structured around a selection of these considerations and consequently provides a convenient structure that I will adopt in the paragraphs [52 - 75] below.
Considerations for manner of manufacture
Does the invention solve a technical problem within the computer or outside the computer?
In terms of a technical problem within the computer, the applicant’s submissions explain that the claimed invention:
“…creates a “trusted chain of custody defining the shipping path of the particular consignment”. This chain of custody is a new data structure in the computer that can link the multiple entities allow the shipping path. This chain of custody data structure is not a well-known generic function of a computer but is an improvement in the way the invention is implemented. With existing relational databases, for example, it is not possible to represent the shipping path in the same way. Since this implementation detail leads to the advantages of this invention, the problem solved in the computer is technical.”.
There are three concepts in this paragraph that require some analysis; “trusted chain of custody”, “new data structure”, and “With existing relational databases, for example, it is not possible to represent the shipping path in the same way”.
First to be considered is the term “trusted chain of custody”, but perhaps more importantly one needs to understand the concept of “trust” and what means in the context of data and a computer system.
Claim 1 is replete with the term “trust”, as too is the description where there is discussion of “trusted supply chain entity”, “trusted supply chain”, “trusted status documents”, trusted status table” to name but a few applications of the term “trust”. Although the applicant’s submissions did not enter into a discussion regarding “trust” and what it means in the context of a computer system, the matter was discussed during the examination process where the applicant’s response (dated 19 December 2023) to the first examination report explained that:
“Normally, computers are not good at establishing “trust” as it is a human concept based on belief in the reliability, truth, or ability of someone or something that is usually established from human experience. As such, computers have no concept of “trust” as they cannot rely on previous experiences to establish “trust”. In essence, “trust” is not a tangible quantity that a generic computer can measure or determine.”
I agree that “trust” is an innately human trait that is central to our societal interactions. Many psychologists and philosophers have debated at length its ethical and moral underpinnings. However I disagree that trust is not a tangible quantity that a generic computer can measure. I argue that in the computational sense trust is very simple and measurable concept, as the specification itself explains. Starting at Paragraph 0016 of the specification:
“faulty is at least one of an untrusted rating, mal-formatted, missing or expired trusted entity identifier or incorrect or missing security inspection method or exemption”,
and Paragraph 0031 of the specification:
“An untrusted rating status is gained by a consignment with faulty security details”,
and Paragraph 0033 of the specification explains:
“A trusted entity is a supply chain stakeholder known to or registered with a jurisdiction of their geographical location and their registration is up to date;”,
whilst Paragraph 0069 of the specification states:
“Therefore, client computing system 105 determines if the security details of the logistics service provider are faulty. Faulty is at least one of an untrusted rating, mal-formatted, missing or expired trusted entity identifier or incorrect or missing security inspection method or exemption.”,
and Paragraph 0078 of the specification gives some practical examples:
“…consignors can acquire a known consignor (KC) 310 status, which is a trusted entity status. That is, the consignor has successfully demonstrated to an issuing authority that they have developed a security plan and taken the necessary procedures and steps to ensure that their distribution of goods is secure from production to when the goods have left the consignor’s secured facility”,
and an aspect of the embodiment is provided at Paragraph 0138 of the specification that explains:
“server 911 allows the providers to upload trusted status documents 960 and stores the trusted status documents 960 in server database 912. This way, server 911 can extract information from the documents, such as the provider identifier and expiry date of the trusted status certificate.”
It is apparent that trust is achieved in the computer system by an administrative determination that security related data is present, current and as it should be, more specifically that the security related data is non-faulty. It follows that a trusted chain of custody is formed when all the required data is available and not faulty. Thus a trusted chain of custody, in the sense of data, is simply an administrative determination of whether all the necessary pieces of security related data in the supply chain are available and not faulty. Although I can appreciate this may be a large amount of geographically disperse data to compile, this does not detract from the fact the computer is essentially keeping a tally of all of the pieces of data and if all the pieces of data are present and not faulty, then the overall determination is one of “trusted”.
The second issue from the applicant’s submissions on this topic is in regard to the claimed process including a “new data structure”.
The applicant submits that the “chain of custody is a new data structure in the computer that can link the multiple entities allow the shipping path”. I am not persuaded by this statement. The specification explains the process and system include a database and a trusted table is maintained on the database, however the specification does not provide any information at all on a “new data structure” and is in fact entirely silent on the form and structure of the database and tables. Paragraph 0058 - 0064 of the specification provides a very broad and generic disclosure of the database such that I can only conclude that there is nothing new or ingenious in the database and data structures, for instance Paragraph 0064 of the specification states “For example, database 102 may be an SQL database and processor 104 may execute an SQL query on database 102. Other non-relational databases may equally be used.”. I have discussed above that the “trusted chain of custody” is simply an administrative determination that all the security related data that one requires is present and not faulty, meaning that it is trusted. Thus, a corresponding data structure can only be a collection of data corresponding to that binary decision of whether each piece of data is trusted or not trusted.
The third comment in the present submission explains that “existing relational databases, for example, it is not possible to represent the shipping path in the same way”.
Further to my position above in Paragraph [59] I’m not persuaded by this statement. The applicant has not provided any evidence supporting this position and neither is there any disclosure in the specification that the applicant has created a data structure that is anything but using database tables for their normal purpose and that the table includes data reflecting an administrative determination that all the security related data that one requires is present and not faulty, and therefor trusted. Instead the specification at Paragraph 0064 of the specification indicates the claimed process and system can be implemented on the well-known and widely implemented SQL databases:
“The system 101 further includes a processor 104 that controls the communications with the freight security systems 111/121 and queries database 102 for required security declarations, except goods, trusted providers, accepted inspections and other supply chain related data. For example, database 102 may be an SQL database and processor 104 may execute an SQL query on database 102. Other non-relational databases may equally be used.”
indicating to me that there is nothing special about how the data is complied, stored and shared.
In summary, I’m not persuaded by the applicant’s submission that the “problem solved in the computer is technical”. The problem of needing to have all the required security related data and for that data to be not faulty i.e. ‘trusted’ is a central tenet of any logistics scheme and in the present application it is being addressed through a process and system of data compilation, data sharing, data storage, and ultimately an administrative determination of a whether multiple pieces of data are present and not faulty. If any data is faulty then there is an opportunity to have it rectified. This is an entirely administrative solution to an administrative problem implemented on a computer.
In terms of problems outside of the computer, the applicant submits that:
“invention solves the problem of shipment delays, inaccurate ETAs and inefficient use of transport resources.”
I can imagine that the claimed process and system has the potential to address these real-world problems. Solutions to these problems can be achieved through innovation that belongs to patentable subject matter such as improved loading machines or reduced fuel burn engines in transport vehicles. However, the present application addresses these problems through a business innovation to set up a system that allows data to be compiled, stored, shared easily, and ultimately verified as being accurate. This is merely a computer implemented administrative solution to these problems.
Does the invention result in improvement in the functioning of the computer, irrespective of the data being processed?
The applicant’s submissions can be characterised as providing a summary of the key components of the claimed process and system, they stress the importance of the “trusted status table” and the “trusted chain of custody”, and ends with the statement:
“In combination, these features improve the functioning of the computer in the sense that they achieve more than well-known generic computer functions. They are specific implementation details that are a real improvement.”
In paragraph 11 - 15 above I have provided a summary of how the claimed process and system are implemented. It is apparent from the specification that the applicant is using known computing resources for their intended purpose. There is nothing in the specification to indicate there is an improvement in the computer. I have discussed the term “trusted chain of custody” in the preceding section and consider this to simply be an administrative determination of whether all the security related data in a shipping path is present and not faulty.
Aside from the recently amended summary of the invention segment of the description at Paragraph 0016 and 0017 of the specification, the only place the description mentions ”trusted status table” is in Paragraph 0137 of the specification that explains:
“The server may maintain a trusted status table on database 912 to reduce the number of queries to the local jurisdiction data providers 921, 931 and 941”,
whilst Paragraph 0064 of the specification discloses that the database of the process and system can be the widely used SQL databases. I have discussed the concept of “trust” above. Therefore, I can only conclude that the “trusted status table” is an entirely conventional database table containing data that is considered to be trusted because the data has been assessed by an administrative determination as not being faulty. This amounts to nothing more than using databases for what they are designed for.
In summary, there is no evidence to indicate the specific implementation of computing resources such as servers, known ways of using XML, SQL databases, embedded forms created using HTML and so on improves the functioning of the computer. I can accept that having all the logistics provider’s security data compiled and held centrally with a sever checking to ensure the data is not faulty may provide an improvement in efficiency and data accuracy. However, this improvement does not come from a technical innovation in the working of the computer, it comes through a business decision to define an administrative process that ensures data is readily available using computers that perform in their usual manner.
Does the application of the method produce a practical and useful result?
The applicant’s submissions in this regard are:
“There is clearly a practical and useful result in that shipments arrive earlier, ETAs are more accurate and fewer vehicles are required to transport a large number of consignments.”
Whilst I acknowledge results such as early arrival of shipments and fewer vehicles is practical and useful, the assessment I need to consider is whether these results arise from an invention that lies within the subject matter that patents are granted for. Paragraph [114] in Research Affiliates explains, with my emphasis in bold, the artificial effect needs to arise from ingenuity in more than just the scheme:
“The invention set out in the specification is directed to the index itself. The method of the invention is not one that has any artificial or patentable effect other than the implementation of a scheme, which happens to use a computer to effect that implementation. There is no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors. To take the words of NRDC at 268, the process does not produce “either immediately or ultimately, a useful physical result in relation to a material or tangible entity.” The claimed method, the result of the ingenuity of the inventors, does not produce such a result; the ingenuity is in the scheme. Again, drawing from NRDC at 270, there is a useful result of the claimed process but there is no physical thing “brought into existence or so affected as the better to serve man’s purposes”. There is no “physical phenomenon in which the effect, be it creation or merely alteration, may be observed” (NRDC at 276).”
A useful consideration of ‘practical and useful result” occurs in Paragraph [49] of F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2) [2022] FCA 96 (F45) where Nichols J. explained, with my emphasis in bold, that whilst there may be a physical effect the substance of the invention needs to be directed to subject matter that is patent eligible:
“49 The physical effects relied upon by F45 are those achieved using a computer implemented scheme for the configuration of exercise stations. The substance of the invention resides not in the actual physical arrangement of the exercise stations but in the computer implemented scheme which enables those physical arrangements to be made. Although claim 1 of the 604 patent may be understood as requiring that exercise stations be actually configured in accordance with the studio information program file, the substance of the invention disclosed and claimed resides in the computer implemented scheme which enables such configuration to occur on a periodic basis in accordance with the content of the studio information program files.”
In a similar manner to the Research Affiliates and F45 decisions the ingenuity of the present application is occurring in the sense of an administrative process that checks the presence and accuracy of user generated and user supplied data, put alternatively, whether the data is faulty. If the data is not faulty it is considered to be trusted. If the data is faulty then there is an opportunity to correct the data and thence a security form created that allows the consignment to proceed without further inspections. Any improvement in delivery ETA or the number of transport vehicles arises because the data in the system is determined to be not faulty. This determination comes about through an administrative scheme and not through any technical ingenuity of the inventors.
Does the method merely require generic computer implementation?
The applicant’s submissions explain that:
“The computers do provide generic functionality, this invention involves specific implementation details relating to databases, forms, user interfaces, electronic documents and the like, which are not generic. The invention does not use generic computer technology because the claims are limited to physical movement of goods and improve that movement by the specific computer functions recited in the claims.”
Following my analysis of the invention as described in Paragraphs 11 – 15 above and my response to the applicant’s submissions, it is readily apparent that the computing resources are generic in nature and each resource whether it be a server, database, transmission modem and so on are each performing their normal and recognised function. There is no evidence from the applicant nor any disclosure in the specification that indicates the overarching system architecture, databases, forms, user interface, etc are being adapted in a manner that one would consider patent eligible.
On their second point of the submission, I disagree with the applicant’s contention that the physical movement of goods and any alleged improvement in that movement comes as a direct result of the computing system. The movement of goods unhindered from security inspections arises because user input and user supplied security data is not faulty, or if the data is faulty then having it rectified through an administrative process and system to allow the data to be corrected, for example by having a logistics service provider upload a new certificate. Whilst global supply chains are vast and may require many pieces of security data to be verified does not detract from the fact that the computing system is simply performing data analysis in a manner that computers are designed for.
Does the invention involve steps that are foreign to the normal use of computers?

My comments in response to the applicant’s submission that:
“The steps discussed in these submissions are foreign to the normal use of computers. The normal use does certainly not involve selective security inspections of shipments and the normal use does not involve the reduction of shipment delays or improved ETAs.”
follow immediately on from the previous section in that it is not the computer per se that is performing the selective security inspection nor does the computer itself improve a consignment’s ETA. It is the presence and verification of non-faulty data ultimately supplied by a user, over what admittedly could be a long and complex supply chain, that results in a security inspection not being carried out or a consignment being delivered on time. The computer is simply compiling data and performing analysis of that data in the intended way computers are used.
Does the invention lie in the generation, presentation or arrangement of intellectual information?
The applicant submits that the invention is directed to improving the movement of physical goods. I do not dispute this. The question though lies whether the improved movement of goods arises from patent eligible subject matter, or not. The applicant’s submissions state:
“The information handled by the claimed invention is therefore not intellectual but of a technical and practical nature. Therefore, the invention does not lie in the generation, presentation or arrangement of intellectual information.”
What is important here is not the information per se, but the manner it is generated and used. As per Grant at [18] there needs to be consideration as to whether the information is a product of an idea or whether the information is applied in practice to a new machine or process. In the present application the information is security data associated with a shipping consignment and the respective logistics service providers that the shipment passes through. The logical analysis performed by the computer is simply an administrative one: if the user supplied security related data is not faulty then a security declaration form is generated and the shipments continues on its path; if the security related data is faulty, the claimed process allows it to be corrected before issuing the security declaration form and the shipment passes uncontested along the shipping path. The manner in which the information is used relates to an administrative idea to improve the movement of goods and not to a new machine or process that might be patent eligible.
Balance of considerations
The applicant has stated that the problem being addressed is that security inspections hinder the movement of goods in global supply chains and in turn can result in delays, fuel costs and ineffective use of logistics elements such as trucks. They consequently conclude the current case is clearly distinguished from RPL Central and Research Affiliates which did not have any physical phenomena in the underlying problem.
Whilst there are physical effects arising from the claimed process and system, I consider they arise as an administrative problem and are not addressed using any technical ingenuity. The application makes it clear that these unwanted security inspections arise because security details associated with a shipment, for example the logistics provider’s registration certification, are faulty. The data can be considered faulty by having an untrusted rating, being mal-formatted, have a missing or expired trusted entity identifier, or incorrect or missing security inspection method or exemption. These are administrative data entry faults, for example the logistics provider has simply forgotten to upload a copy of their latest compliance certificate. These are not faults that have arisen from a technical problem. For example, these are not faults that might arise in tangible and technical engineering systems such as transmission corruption, data analytics errors, poor quality computing resources such as an inaccurate OCR tool, or errors arising from ineffective anti-tampering devices. These might all be considered as patent eligible subject matter. However, administrative systems typically do not belong to subject matter that one grants patents for as they often lie in the realm of organising human activity. As the Full Court stated in Research Affiliates [57], processes for organising human activity are not patentable.
I am not persuaded that there is a technical innovation occurring. Where physical technical computing resources are used, they are performing their normal role and whilst the specific steps implemented on the arrangement of computing resources may not be known in the art the computing resources have only been put together to create a system that performs administrative checks on the accuracy, the faultiness if you will, of the data.
It follows that the invention as claimed in independent claim 1 is not a manner of manufacture. It is, in substance, an administrative innovation directed to compiling, administering, and checking user-generated data, making an administrative determination of whether data is trusted, i.e. not faulty, providing a chance to correct the faulty data, and then once all the data is not faulty recording a decision that means security inspections are not needed. Independent claim 6 is directed to a system aligned with the process of claim 1 and hence the substance of this claim is the same as that for claim 1 and therefore claim 6 is also not for a manner of manufacture.
I have also considered each of the dependent claims. The applicant has made no specific submissions regarding the dependent claims. The dependent claims simply further define features in the process and system of the independent claims in more detail either by defining the alternative logic scenarios of claim 1 or features relating to user customization. For example, claim 3 defines the step of generating the security declaration form if the security data considered in claim 1 is not faulty. For example, claim 15 defines the security declaration form is customized based on the user’s geographic location. None of the dependent claims add anything of substance that fundamentally escapes the patentability issues of the independent claims. It follows that none of the dependent claims are for a manner of manufacture.
Conclusion
Claims 1 – 15 as proposed to be amended are clear and meet the requirements of s40 of the Act.
None of the claims are for a manner of manufacture. In addition, I see no material in the application that could be made the subject of a claim so as to result in a claim being for a manner of manufacture.
I note the existence of related family member granted patent 2015221578 directed to similar subject matter as the present application. I recommend the relevant examination section consider re-examination of this patent.
On the matter of inventive step, I have noted in Paragraph 44 above that the proposed amendment to the specification is likely to lead to a different construction compared to what featured in the most recent patent examination report and in turn how the examiner may have considered the prior art base in their assessment of novelty and inventive step during the examination phase. Nevertheless, noting that my manner of manufacture finding is determinative, I do not intend to make any decision in relation to inventive step.
In conclusion, I refuse the application.
Mr Kevin Restrick
Delegate of the Commissioner of Patents