Myall Australia Pty Ltd and RPL Central Pty Ltd [2011] APO 48

In the second of our two reports on software patent decisions, the Australian Patent Office (APO) has intervened in a patent
opposition by requesting that the parties consider whether the invention related to patentable subject matter (i.e., was a “manner
of manufacture”), and then finding that it did not. This finding was determinative, as the other ground of opposition was not
made out. The decision is another attack on broad computer-implemented method and system claims and has been appealed.

FACTS OF THE CASE


The patentee, RPL Central Pty Ltd (“RPL
Central”), is an Australian company that
assists its customers in determining whether
their existing skills and experience can be
used to acquire recognised qualifications,
e.g., from a registered training organisation
(RTO) or a Technical and Further Education
(TAFE) institution. The process is referred to
as Recognition of Prior Learning (RPL).
 

RPL Central applied for an Australian Innovation
Patent (“the Innovation Patent”)
in June 2009 for an invention relating to
their business: gathering evidence relevant
to an assessment of an individual’s
competency relative to recognised qualification
standards.
 

The Innovation Patent was examined and
subsequently certified in October 2009.
 

The Innovation Patent as certified had five
claims, including an independent method
claim and an independent system claim.
The system claim specified standard computing
and communications technology
for performing the method.
 

The independent method claim in the
certified Innovation Patent was as follows:
 

  1. A method of gathering evidence relevant to an assessment of an
    individual’s competency relative to
    a recognised qualification standard,
    including the steps of:


a computer retrieving via the internet
from a remotely-located server a
plurality of assessable criteria associated
with the recognised qualification
standard, said criteria including one or
more elements of competency, each
of which is associated with one or
more performance criteria;


the computer processing the plurality
of assessable criteria to generate automatically
a corresponding plurality
of questions relating to the competency
of an individual to satisfy each
of the elements of competency and
performance criteria associated with
the recognised qualification standard;


an assessment server presenting the
automatically-generated questions
via the internet to a computer of an
individual requiring assessment; and
 

receiving from the individual via
said individual’s computer a series
of responses to the automaticallygenerated
questions, the responses
including evidence of the individual’s
skills, knowledge and/or experience
in relation to each of the elements of
competency and performance criteria,


wherein at least one said response
includes the individual specifying one
or more files stored on the individual’s
computer, which are transferred to the
assessment server.


The Innovation Patent was opposed in
March 2011 by Myall Australia Pty Ltd.
Myall is also an Australian company who,
trading as Jigsaw Publications, provide RPL
services for students and registered training
organisations.
 

Initially, the only ground of opposition was
that of novelty, i.e., that the invention was
published or used in Australia before the
priority date of the claims. However, the
Patent Office Delegate (Dr. S. K. Aggarwal)
advised the parties that he wished to hear
submissions in respect of a ground of lack
of manner of manufacture. This ground
had not been suggested by Myall, nor
had it been raised during examination.


THE DECISION
 

In considering the ground of lack of novelty,
the Delegate applied the traditional
tests, and found at least one feature in the
certified claims that was not in the prior art
disclosures. Accordingly, the claims were
found to be novel, and the opposition
failed on this ground.
 

In considering the ground of lack of a
manner of manufacture, the Delegate
considered recent court decisions involving
business method and software patents,
including Welcome Real-Time SA v Catuity
Inc, [2001] FCA 445 and Grant v Commissioner
of Patents, [2006] FCAFC 120. In
Catuity a method of tracking customer
behaviour with a smart card was found
to be patent eligible, whereas in Grant a
method of asset protection including steps
of ownership transfer was not.
 

The Delegate summarised the manner
of manufacture requirements post-Grant
as follows:
 

“It is clear from the above decisions that for
an invention to be a manner of manufacture,
it must give rise to an artificially created state
of affairs in the sense of a concrete, tangible,
physical or observable effect. Particularly,
what is required is a physical effect in the
sense of a concrete effect or phenomenon
or manifestation or transformation.”

 

The Delegate then considered a string
of recent Patent Office decisions, starting with Inventions Pathways Pty Ltd [2010]
APO 10 in July 2010, that have found
inventions relating to business methods
and software to lack a manner of manufacture.
This string of decisions includes
Iowa Lottery [2010] APO 25, and Research
Affiliates, LLC [2010] APO 31.


These Patent Office decisions have
relied on Grant to reject claims that only
relate to abstract steps, but go further by
discounting any computer technology—
which would normally force a claim to
be “concrete”—as not being “central to
the purpose or operation of the claimed
process or otherwise arising from the
combination of steps of the method in a
substantial way”. For example, the claim
in Invention Pathways was found to be insufficiently
“concrete” because it required
only arrangement, gathering, storage and
display of information by the computer.
 

RPL Central argued that their invention
was distinguished from the inventions in
Grant, Invention Pathways, Iowa Lottery
and Research Affiliates because these
had “merely [related] to legal, financial or
commercialisation advice, schemes, or arguments”,
whereas “the claims of the opposed
patent define a concrete application
of information processing: retrieval of
information from one source; processing
of that information into an alternative form
in which it is suitable for presentation to
an RPL candidate; provision of [an] online
interface for presentation of the information
to a user; and collection, transfer and
storage of relevant information provided
by the user.”
 

This argument attempted to show, by reference
to “concrete […] information processing”,
that the certified claims fulfilled
the manner of manufacture requirements
post-Grant.
 

The Delegate held, however, that the information
processing in the claimed invention
was insufficiently “substantial”. In this,
he relied on Invention Pathways, in which
the Deputy Commissioner of Patents had
stated:
 

In applying the decision in Grant I
therefore consider that the “concrete
effect or phenomenon or manifestation
or transformation” referred to
must be one that is significant both
in that it is concrete but also that it is
central to the purpose or operation of
the claimed process or otherwise arises
from the combination of steps of
the method in a substantial way. Consequently
while the step of building
a house involves a concrete physical
effect it is peripheral to the method of
acquiring a house and indeed could
hardly be said to characterise the subject
matter of the method such that
it is considered an artificially created
state of affairs. I consider the same to
apply to a business scheme implemented
in some part by computer
and do not believe the patentability
of such a method can arise solely from
the fact that, in a general sense, it is
implemented in or with the assistance
of a computer or utilises some part a
computer or other physical device in a
incidental way.
 

The Delegate held that the retrieval,
storage, and processing of information in
the claimed invention “appeared to have
no physical effect other than that [which]
would arise in a computer with standard
software and a conventional use”.
The Delegate stated “while the internet
and the computer facilitate the operation
of the claimed method by retrieving,
generating and conveying information,
they are not essential to the purpose of
the claimed invention”.
 

In particular, referring to claim 1, the
Delegate decided that the step of “processing
the plurality of assessable criteria
to generate automatically a corresponding
plurality of questions relating to the
competency of an individual to satisfy
each of the elements of competency and
performance criteria associated with the
recognised qualification standard” could
be performed by simply concatenating
a standard text string to the text of the
assessable criteria, and that “there is no
substantial effect or transformation in generating the questions by concatenating
text matters”. Later, the Delegate referred
to this as a “mere cut and paste”, which he
did not regard as a substantive transformation
of data.
 

The Delegate dismissed the independent
system claim for “substantially defining
a mere system variant for operating the
method of claim 1”.
 

Finally, the Delegate indicated that he believed
that the claims could be amended
to include a manner of manufacture if
more specific details of the data processing
were required in the claims, such as
generation of the questions based on
identification of particular keywords within
the assessable criteria and additional
contextual information associated with the
qualifications. Accordingly, the patentee
was allowed 60 days to propose suitable
amendments.


COMMENTARY
 

This decision is another in a string of Patent
Office decisions rejecting broad computer-
implemented method and system
claims for lacking a manner of manufacture
based on discounting of the computerrelated
features for being incidental.
 

The decision also rejected data transformation
steps, such as the automatic
generation of the questions, for being
insufficiently “substantive”. The Delegate
may have found the transformation insufficient
because it seemed to be too trivial
(a “mere cut and paste”).
 

Patent applicants with computer-implemented
inventions should be careful to
include as much relevant and unique
technical detail as practicably possible
in their patent specifications to address
the increasing requirements for manner
of manufacture set out by the Australian
Patent Office. Patent opponents, on the
other hand, may take every opportunity to
argue that “concrete” subject matter in a
claim is insubstantial or peripheral to the
purpose of the invention.
 

In this regard, however, we note that this
decision may soon be clarified or overturned
because RPL Central has appealed
to the Federal Court.