Some 2013 hints of where we’re headed on computer-implemented inventions in Canada
November 28, 2013
2013 saw the release of four Commissioner’s Decisions (Patent Appeal Board cases) that offer a glimpse of how the Amazon.com, Inc. v. Canada decision of the Federal Court of Appeal is being applied by the Canadian patent office. The decisions largely turn upon claim construction. If the claim construction results in the computer elements or implementation being seen to be an “essential element”, then the claim is considered to be statutory; whereas, in the cases where the computer elements are not found to be an essential element, the claims are held to be non-statutory. The short take-away is that computer-implemented processes that take place on a multi-node “system” are going to be easier to defend than a process that takes place entirely within a single processor/computer. Here are details:
Re Patent application ‘834
A system for selectively interacting with postage meters, each meter associated with an inserter system, comprising a plurality of inserter systems, each having a control system; a central computer coupled to each control system; a plurality of inserter system converters; and the central computer being adapted to selectively interact with the postage meters provided on the inserter systems. The claims also recite a method for selectively replenishing postage funds in the meters, via communication between the central computer, a data center having stored postage funds, and transmitting the selected postage funds from the central computer to one of the inserter systems. The Examiner had rejected the method claims as being non-statutory.
The claims were rejected as being obvious, so the subject-matter analysis by the Appeal Board in this decision is cursory. The Board finds that the method steps “utilize technology” and “achieve the practical result of selectively interacting with, and replenishing, postage meters from a central computer”. The method claims fall within the statutory categories of “art” and “process” since they relate to a useful art as distinct from a fine art, and the claims are not abstract since they cover a method requiring “the use of technical features”, providing a mode of practical application. The Board held the claims to be statutory subject-matter.
The Board’s claim construction analysis is contained in the obviousness section. Of note is the fact that the claims clearly require interactions and transmissions amongst a file server, central computer, inserter system control system, and at least one postage meter.
Patent application ‘195
A method for producing a standard bill of resources, involving “computer-implemented” steps that include “developing a model … including values which correspond to the number of units of given resources …; manipulating said models mathematically to highlight similarities and dissimilarities of defined characteristics …; expressing the manipulated models …; analyzing said selected bills of resources based upon the expression ..; and producing the at least one standard bill of resources based on the analysis …”
Some of the claims specify the use of “electronic bills of resources”, a “computer model”, “a database program” or “a computer generated matrix”.
The Board noted that the specification provided little detail regarding the computer implementation. The background section, summary, and “object” clauses do not focus on computer implementation. The steps performed by the computer are all steps which could also be performed by a human being. Although some described embodiments are computer-implemented, they need not have been. The Board acknowledged that implementation without a computer could have been complex and time-consuming, but that does not on its own make the computer essential. The advantages of using a computer flow from the known capabilities of computers in performing calculations and do not point to the computer implementation as an essential feature.
Having construed the claims, the Board cited Schlumberger and found that the claims here are for a method of organizing, mathematically manipulating, and expressing data associated with bills of resources. As such, the claims are a series of calculations and mental operations performed to produce an output, which run afoul of the section 27(8) exception excluding mere scientific principles and algorithms. Accordingly, the claims were rejected as non-statutory.
Patent application ‘068
Automated process and system to detect fraudulent financial transactions in a computer-controlled transaction processing system including predictive modeling means for receiving current transaction data, processing the current transaction data, and outputting a plurality of output values including a score value representing a likelihood of a fraudulent transaction. The method claim includes “generating a consumer profile…; training the predictive modeling means …; storing the obtained predictive model …; receiving current transaction data …; receiving the consumer profile …; pre-processing …to derive current fraud-related variables…; determining the likelihood of fraud …; and outputting from the predictive modeling means an output signal indicating the likelihood that the current transaction is fraudulent”.
The Appeal Board first addressed the “computer-controlled transaction processing system” recited in the preamble, and whether that is an essential element of the claim:
“The skilled person would consider these computerized features as material to the operating environment of the conventional fraud transaction system, but not essential to the solution of providing a training data set which can be applied to a neural network predictive model algorithm (neural network). Instead, these features define the specific working environment for the invention.
We therefore find the feature of “a computer-controlled transaction processing system”does not materially affect the working of the invention (solution to the problem), and thus is not an essential element of the claim.”
The Appeal Board then assessed whether the term “computer-implemented process” rendered computer implementation of the method steps essential. While acknowledging that neural networks are normally implemented by computer, the panel noted that the practical convenience of using a computer does not make it essential. Citing Schlumberger, the Appeal Board held that the computer-implemented feature is for the purpose of making calculations, but is not an essential to making those calculations. The Board also noted that the “output signal” is a mere score value and is not meaningful without an analyst interpreting that value. They concluded that the output signal is not something “with a physical existence or something that manifests a discernible effect or change, but is …simply… a numerical value”, which is abstract and has only intellectual meaning. The method claims were rejected as being non-statutory subject-matter.
The system claim (structured in “means for” format) was also held to be non-statutory on the basis that there was no difference in features between the system claim and the method claim and any computer components in the system claim are not essential.
The Applicant tried to argue that the claims recite “a complex process” to indicate the likelihood of fraud, and therefore are not abstract. The Board held that although there are complex method steps in the application, complexity in and of itself is not a test for statutory subject-matter.
Patent application ‘229
A system and method for electronic commerce that separates detailed merchant content from transaction functionality over separate servers. A transaction server that is connected over a network to one or more merchant servers provides purchasers with information on subscribing merchants and the products they offer. Once the purchaser selects an item for purchase from a merchant site, the request is transmitted from the merchant server to the transaction server which processes the transaction for the selected item. By separating transaction from merchant content over separate servers, there is greater efficiency for both merchants and market providers as they are able to offer services within their areas of expertise.
The preamble of the method claim recites a transaction server connected over a network to a merchant server and steps of “searching …; displaying results …; providing reference …stored on the merchant server; receiving a purchase request from the merchant server…; and processing the purchase request to form a purchase transaction.”
In the obviousness analysis, the Board construed the inventive concept as: “providing from a transaction server, reference to detailed merchant information stored on a merchant server and receiving, at the transaction server, a purchase request from the merchant server for processing”. This was an alternative to the conventional approach of using a single complex server having both content and transaction functionality. Here, the involvement of a computer is material to the working of the invention (two servers in communication over a network). Accordingly, the Board found that having servers in communication over a network is therefore essential to the invention. As a result, the claimed subject-matter is not merely abstract and is not excluded from patentability.
The claims were nonetheless rejected as being obvious.