Friday, December 23, 2011

Fang finds no surprises for identifying prizes

PrizesIn Sheng-Ping Fang [2011] APO 102 (20 December 2011) we see another computer-related invention chucked out by the Australian Patent Office.  The applicant represented himself at the hearing on 6 October 2011 so it is not that suprising to see an unsuccessful result.  However, he achieved much the same result as he would have had he been represented professionally.

The patent application

The applicant, Sheng-Ping Fang, filed Australian patent application 2010230079 on 13 October 2010.  There were 5 adverse exam reports during prosecution.  From 16 June 2011 the applicant represented himself up to and including the hearing on 6 October 2011.

There was some dispute over what claim amendments would be allowable.  For the purpose of the hearing the Delegate settled on the version of claim 1 amended on 16 June 2011 as follows:
1. A system for providing an award program on one or more servers and electronic devices, said system comprising:
a) a machine readable or executable instruction for providing a plurality of qualified events, wherein said qualified events provide a plurality of unique and, or shared award symbols to be collected or accumulated for completing a selection or plurality of complete award symbols with identical and different visual or physical characteristics and,
b) a machine readable or executable instruction for providing a selection or plurality of award symbols, wherein said award symbols consist of unique and, or shared award symbols that are selected from a collection of symbol pieces and, or symbol clones associated with a selection or plurality of said complete award symbols and,
c) a machine readable or executable instruction for providing a selection or plurality of prizes that are displayed alongside their corresponding or associated complete award symbols, said prizes are awarded on full or partial completion of said complete award symbols.
Substantial effect or transformation

It will be clear to readers where this is heading.

The Delegate referred to several Australian Court decisions:
  • National Research Development Corporation v Commissioner of Patents ("NRDC case") [1959] HCA 67; (1959) 102 CLR 252 (16 December 1959)
  • CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168; (1994) 122 ALR 417
  • International Business Machines Corporation v Commissioner of Patents [1991] FCA 625
  • Welcome Real-Time SA v Catuity Inc [2001] FCA 445 (17 May 2001)
  • Grant v Commissioner of Patents [2006] FCAFC 120 (18 July 2006)
He referred to the United States decisions Bilski v. Kappos, 130 S. Ct. 3218 and CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post).  Strangely, there is no mention of the more recent case Ultramercial LLC v Hulu LLC (Case No. 2010-1544) (see my blog post).

The Delegate also referred to some (but not all) of the Australian Patent Office decisions relating to the patentability of business methods and computer-related inventions.  Strangely, there is no mention of Visa Inc v CardinalCommerce Corporation [2011] APO 34 (25 May 2011) (see my blog post).

He observes at [56] that, while he is not bound by the Australian Patent Office decisions:
'the principle that consistently emerges out of these decisions is that inventions for pure business, commercial or financial schemes will not satisfy the requirements for being a manner of manufacture merely because the scheme is implemented using a computer. What is required is some substantial effect or transformation brought about by the use of the computer or other physical device.'
Abstract idea

The Delegate oberved at [59] that abstract ideas are not patentable subject matter.  It was clear (to the Delegate):
'that the core of the invention lies in the use of the unique and shared symbols ... These symbols enable users to win different prizes at different time periods, without the prizes being grouped and awarded hierarchically according to monetary value ... Although the invention can clearly be said to be in a field of economic endeavour, namely retail trading, the use of different types of award symbols in a loyalty scheme is in my view an abstract idea, mere intellectual information involving new symbols, which had never been held to be patentable subject matter.'
Use of a computer

The Delegate admits at [61] that "the system has to be implemented using a computer system and in that sense a computer system is integral to the invention".  However, according to the Delegate, this is not the same thing as bringing about a physical effect.

He observes that, reading the specification as a whole:
'there is very little description or details of the computer system. While there are brief references to computer programs, machine readable/executable instructions, machine readable devices, application and database servers and programming languages there is nothing in the specification to suggest that the use of these software programs or computer devices has brought about any substantial physical effect or transformation in the implementation of the award program'. 
The use of the computer, says the Delegate at [66]:
'merely results in the display of different kinds of award symbols in an electronic form. The specification is totally silent on any method steps involved in generating or providing these electronic award symbols using the computer ... Despite the computer implementation, it is my view that the substance of what is claimed remains a mere scheme or abstract idea that does not achieve an end result that is an artificially created state of affairs in the field of economic endeavour'.
The claimed invention, said the Delegate, is therefore not a manner of manufacture.

I wonder whether the result would have been any different if the Delegate had not carefully avoided mention of Ultramercial LLC v Hulu LLC (Case No. 2010-1544) (see my blog post).  Following the reasoning in that case, an invention for which a computer system is integral would surely have qualified  as a practical application of an abstract idea.

Or perhaps the Delegate could have commented on the Australian Patent Office decision Visa Inc v CardinalCommerce Corporation [2011] APO 34 (25 May 2011) (see my blog post) in which the Delegate observed at [97] that the method claims under consideration:
'clearly relate to supporting authentication processing of on-line commercial transactions involving several physical steps in a networked environment. The claims are not directed merely to a scheme.' 
Further steps

I doubt there will be any further steps in this case. It will be interesting to see whether future Delegates will continue this selective approach to the application of United States case law and earlier decisions of  the Australian Patent Office. I think we need more guidance from the Australian Courts.

Photo courtesy of author Victoria Pickering under Creative Commons licence.

1 comment:

  1. the examiners are political activists who have been instructed to reject as many applications as they possibly could....


Related Posts Plugin for WordPress, Blogger...