Canva Pty Ltd [2025] APO 10 (9 April 2025)

2. Paragraphs [62] to [77] put forward the Applicant's views on the substance of the invention, including consideration of the Examiner's assessment of the substance. The Applicant, at [62], refers to 5.6.8.1 of the Manual as providing "...useful guidance for determining the substance of a claimed invention". Paragraph [62] repeats the "relevant factors" from the Manual:

"Relevant factors to consider and weigh up may include:

• The contribution to the art asserted by the specification;
• The level of detail provided in the specification with regard to various aspects of the invention;
• How does the invention work;
• The form of words, breadth and emphasis of the claim;
• What problem does the invention address;
• What are the actual or alleged advantages of the invention; and
• What does the invention add to the state of the art as at the priority date?"

1. There is also some discussion of the case law at [80] to [90] of the 529 submissions, in the context of considering whether the claimed invention is patentable by reference to the Aristocrat Factors. These include Grant v Commissioner of Patents [2006] FCAFC 120; 154 FCR 62; 234 ALR 230; 69 IPR 221 ("Grant"), Burroughs Corporation (Perkins') Application [1974] RPC 147 ("Burroughs"), Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; 227 FCR 378; 109 IPR 364 ("Research Affiliates") and International Business Machines Corporation v Commissioner of Patents [1991] FCA 811; 33 FCR 218; 105 ALR 388 ("IBM").
2. Overall, I did not take the Applicant as putting forward principles to be applied regarding manner of manufacture that are materially different from those I have adopted below. I will, however, address some areas of apparent disagreement below where appropriate. I will also consider, where necessary, some of the Applicant's submissions concerning the case law in connection with my assessment of the patentability later in this decision.
3. Before continuing, it is worth noting that the relevant factors cited by the Applicant from the Manual are general principles to be used when considering the substance of the invention for any type of claimed invention; this much is apparent from the title at 5.6.8.1 - "General Principles - Assessing Manner of Manufacture". Consequently, while of general applicability, and noting that each matter must be assessed on its merits, it may be seen that the relevant factors from the Manual may be expressed for computer implemented inventions using the Aristocrat Factors or, those from Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988; 139 IPR 1 ("Rokt Pte Ltd") outlined below.
4. The Applicant discusses the Examiner's assessment of the substance of the invention at [64] to [69] of the 529 submissions. Whilst there are some further criticisms of the Examiner's analysis, the core of the Applicant's submissions on the Examiner's views on the substance of the invention is reflected at [64] to [67], which are reproduced below:

"64. In Report 2, the Examiner states that: > > The substance of the invention is a set of abstract, administrative, logistical and/or aesthetic rules or a scheme to arrange content in a particular style. > > 65. It is submitted that this appears to be a conclusion on the issue of patentable subject matter, rather than a proper identification of the substance of the invention as claimed. Specifically, in seeking to answer the question of whether the substance of the invention is (for example) an abstract idea or a mere scheme (and therefore unpatentable), the Examiner states that the substance of the invention is a set of abstract rules or a scheme. > > 66. Even if this is not the case, the Examiner's determination of the substance of the invention does not appear to take any of the 'relevant factors' discussed above into account. > > 67. Furthermore, the Examiner's reference in Report 2 to the substance of the invention involving arranging content in a particular style sits uneasily with the invention as claimed. At best, the 'arrangement of content' may be seen (at a very general level) as a result of the claimed invention. That said, the invention does not really involve arranging content. Rather, the invention involves generating a new design in which a new element is generated based on first source design content and a first destination design element. It is not clear where the Examiner's reference to 'a particular style' comes from or what it is intended to convey." (emphasis in original)

I note that the reference at [66] to the relevant factors refers to those from the Manual as repeated as [62] of the 529 submissions or [80] of this decision.

1. What the Applicant considers to be the actual substance of the 529 invention is outlined at [70] to [77] of the 529 submissions. The Applicant's discussion proceeds by way of reference to the "relevant factors" from the Manual outlined above, as apparent from [71] to [75] of the 529 submissions:

"71. As discussed at section 6.1 above, one relevant factor for determining the substance of a claimed invention is 'the contribution to the art asserted by the specification'. With respect to this factor: > > a. The Application at the outset identifies the technology that the invention relates to - 'Computer applications for creating and working with designs' (see paragraph [0002] of the Application). It also identifies a relevant problem 'In some situations, a user may wish to use a design they have created as the basis for generating another design. For example, a user may wish to use content prepared in an original document-format design as the basis for a deck-format design' (see paragraph [0004] of the Application). > > b. At paragraphs [0044] and [0045], the Application describes the following: > > [0044] Certain embodiments of the present disclosure are directed to systems and methods for generating a new deck format design based on a source document-format design. > > [0045] As one example, a user may have source content in a document but want to convert that document design into a deck. For example, a user may initially prepare a document that includes an outline (or other content) for a deck. Techniques described herein operate to automatically identify a matching template design and then generate a new deck-format design that is based on the template but that includes the source content from the original document.

c. At paragraph [0046] and [0047], the Application goes on to describe that

[0046] Other embodiments of the present disclosure are directed to systems and methods for generating a new deck-format design based on a source deck-format design.

[0047] As one example, a user may generate a source (deck-format) design but wish to change the layout of the elements in the design page(s). In this case, the techniques described herein operate to automatically identify a matching template design and then generate a new deck-format design that is based on the template but that includes the source content from the original deck.

d. The art may be described as a computer application for creating and working with designs configured to automatically create a new design based on an existing (source) design. This is apparent from the claims and from specification as a whole.

72. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above is 'the level of detail provided in the specification with regard to various aspects of the invention'. With respect to this factor:

a. The claimed invention is described in detail in the Application.

b. Paragraphs [0272]-[0298] of the Application describe relatively high-level processing that may be performed in a method (600) for generating a new deck-format design based on a document-format design. Paragraphs [0795]-[0817] of the Application describe high level processing that may be performed in a method (2800) for generating a new deck-format design based on an existing deck-format design.

c. The Application also describes in detail additional, and more specific/lower-level processing that may be performed as part of the high-level processing described for methods 600 and 2800.

d. For example, with reference to the claim feature of 'processing the first set of source design elements to generate source design analysis data in respect of the source design' the Application describes in detail:

i. an example method 500 for processing a deck-format design to generate corresponding analysis data (see paragraphs [0179]-[0266] of the Application); and

ii. an example method 800 for processing a document-format design to generate corresponding analysis data (see paragraphs [0299]-[0345] of the Application).

e. By way of further example, with reference to the claimed source design analysis data itself (and the source design analysis objects and analysis object attributes thereof) the Application describes:

i. examples of data structures that may be used for the source design analysis objects that are generated in processing a deck-format design an example method for (see paragraphs [0235]-[0237] of the Application); and

ii. examples of data structures that may be used for the source design analysis objects that are generated in processing a document-format design (see paragraphs [0343]-[0345] of the Application).

f. By way of further example, with reference to the claim feature of 'identifying, based on the source design analysis data, a destination design' the Application describes example processing that may be performed to do this in detail with reference to example processing blocks 1401 and 1420 (see paragraphs [0410]-[0461] of the Application).

g. By way of further example, with reference to the claim feature of 'generating a new design based on the source design, the destination design, and the source design analysis data' the Application describes in detail

i. An example method 1500 for generating a 'new deck descriptor' (see paragraphs [0464]-[0487]) of the Application. As described at paragraph [0480] of the Application, example method 1500 includes processing block 1518 at which 'content map data' is generated - i.e. data that maps each relevant source object (and, therefore, the source design content that source object is associated with) to a destination object of a destination page (and, therefore, the element of the destination page that destination object corresponds to). The Application provides further detailed examples of how this content map data is generated with reference to methods 2100 and 2200 (see paragraphs [0488]-[0531] of the Application).

ii. An example method 1600 for generating a new deck-format design based on a deck-descriptor (see paragraphs [0532]-[0579]) of the Application. In the context of generating a new deck-format design, the Application provides detailed descriptions processing that may be performed to: transfer fills (see paragraphs [0544]-[0551] and [0710]-[0745]) of the Application; transfer text content (see paragraphs [0552]-[0567] of the Application); transfer tables (see paragraphs [0569]-[0571] and [0746]-[0794] of the Application); transfer charts (see paragraphs [0572]-[0574] and [0836]-[0863] of the Application); detect and resolve undesirable element collisions (see paragraphs [0576]-[0578] and [0581]-[0709] of the Application).

73. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above, is 'how does the invention work'. With respect to this factor:

a. As set out in claim 1, the invention works by initially analysing a source design to generate source design analysis data. The source design analysis data is data that describes specific information that is relevant to the content of the source design. In addition to an identifier attribute, the source design analysis data includes both a type attribute and a reading order attribute. Following this, the source design analysis data is used to identify a destination design and generate a new design. In generating a new design, the source design analysis data is further used to map specific content of the source design (e.g. a first source design content) to specific elements of the destination design (e.g. a first destination design element). When the new design is generated it then includes 'new' elements that are based on the destination design's original elements but instead of including the original content of those destination design elements they include content from the source design (e.g. a first new design element is based on the first destination design element and includes content based on the first source design content instead of the first destination design content).

74. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above is 'the form of words, breadth and emphasis of the claim'. With respect to this factor:

a. It is submitted that the wording of claim 1 is such that its breadth is appropriate for the contribution that the invention makes. The wording of claim 1 and the features defined capture the features of the invention that are concerned with processing a source design to generate source design analysis data and then using that source design analysis data to i) identify a destination design and ii) generate a new design based thereon. The claim is not directed to an abstract idea that covers all or most solutions to the problem. Instead, the claim is directed to a specific solution, one that involves (inter alia) generating source design analysis data as described above.

75. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above is 'the actual or alleged advantages of the invention'. With respect to this factor:

a. The invention allows one - or multiple - new designs to be automatically generated based on minimal user input and interaction. Specifically, and as described at paragraphs 33 to 41 above, the invention allows new designs to be automatically generated with the sole user interactions of selecting an existing (source) design and initiating the design generation process. Contrary to the examiner's apparent assertion, the advantages are not aesthetic (indeed the claim is entirely silent on anything that directly affects the aesthetics of the new design). Instead the advantages reside in the transfer of content from a source design to a new design element that was an element in an existing deck-format design."

1. Not all the "relevant factors" from the Manual are explicitly discussed by the Applicant - there is no discussion of "What problem does the invention address?" or "What does the invention add to the state of the art as at the priority date?". However, I do note that there is some discussion of the problems addressed at [71] of the 529 submissions. After this, the Applicant does not seem to identify an actual substance of the invention as such, but rather a series of things the Applicant apparently considers must form part of the substance. I will consider this as part of my discussion of the substance of claim 1 of the 529 application below.
2. Similarly, as for the legal principles outlined above, I did not take the Applicant's discussion of the invention, either as claimed or described, to extend to anything materially beyond what is discussed earlier in this decision, although the characterisation and effect of some features of the invention as asserted by the Applicant I may disagree with. To the extent necessary I will address these where appropriate in my consideration of patentability of the invention below, including what is the substance of the invention.

1. As noted, the only objection outstanding for the 538 application is that the claims are not for a manner of manufacture. This objection was first raised with the second report. The reasoning presented by the Examiner across the second and third reports has remained substantially consistent and is very similar to the Examiner's reasoning provided with respect to the 529 application. This is unsurprising given both applications were examined by the same Examiner. It is apparent, from the reports, that the objection may be summarised, in a general way, as alleging that the claimed invention is, in substance, a scheme that provides for arranging content in a certain way based on particular rules:

"The claimed invention (e.g., claim 1) uses well known hardware (a computer) and software (moving source images to destination frames). The substance of the invention is a set of abstract, administrative, logistical and/or aesthetic rules or a scheme to arrange images in a particular style. There is no technical problem being solved. > > Even assuming the claimed invention has not been done before (i.e., assuming it is novel) it does not mean that the application has necessarily solved technical issues or done so in a way that comprises some technical improvement or does anything other than simply making use of the well-known abilities of computers. I do not see that the combination of features currently claimed do something with a computer which could not already be done. > > Once the rules of the scheme are defined, the implementation merely requires simple and well known mathematical and geometrical techniques used in computer software. There is no ingenuity evident in the implementation and no technical problem is being solved. > > To the extent that the resulting output is more aesthetically pleasing or eye catching to a user, or that the user may prefer a different layout, such concepts are merely abstract notions. I would also argue that such notions, if anything, would more correctly be seen as part of the fine arts as opposed to the useful arts. > > As such, the claimed invention is not patentable subject matter." (second examination reports, emphasis in original)

2. In response to the Applicant's submissions on the second examination report, the Examiner essentially maintained their position in the third examination report, albeit putting aside any discussion of "aesthetics" from the 538 application:

"The discussion below will refer to two Hearing decisions, namely: the Hearing decision in Grand Performance Online Pty Limited [2023] APO 20 (12 June 2024) [sic 17 April 2023]; and the Hearing decision in Apple Inc. [2024] APO 23 (12 June 2024). These decisions will be referred to as GPO and Apple respectively. Each of these cases involved computerized algorithms for arranging and rearranging objects onto a layout based on a set of rules, and in each case were found to not define a manner of manufacture and not be suitable subject matter for a patent. > > ... > > I maintain that the substance of the invention is a set of abstract, administrative, and/or logistical rules used in a scheme to arrange content in a document. The claimed steps appear to me to simply be expanding the functionality of the computer to make it do something it has not done before as opposed to doing something that allows the computer to do something it could not do before. If there are advantages to the claimed invention, they are innovations in the scheme, not innovations in computer technology. There are no technical problems being solved. (third examination report, emphasis in original)

1. The 538 submissions, like the 529 submissions, cover a number of matters, including the procedural background, an outline of what might broadly be called "similar" applications (if not actual family members) and a discussion of the invention as described and claimed. I did not take the procedural background to deviate in any significant manner from what I have outlined above.
2. Much of the discussion in the 538 submissions of the invention as described covers very similar ground to the 529 submissions. However, in keeping with the claims of the 538 application, the 538 submissions tend to focus on the mapping of source fills to destination frames. The Applicant discusses this, firstly in the alternative context provided by figure 29, as apparent from [25] to [27] of the 538 submissions:

"25. As explained in paragraph [0510] of the Application, when generating a new deck-format design source fills (that is, fills of a source design from which content is being transferred) are transferred to frames (that is, shape-type elements) of a destination design. This requires the generation of content map data that maps each source fill to a particular destination frame (e.g. per processing block 1518 of FIG 15). > > 26. The Application also describes a 'fill transfer' method 2900 from paragraph [0818] and with reference to Fig. 29. By way of overview, the 'fill transfer' method 2900 includes: > > a. Identifying a set of design elements that can accommodate fills (see processing block 2902). As described at [0821] of the Application, the set of design elements may be identified by user inputs selecting elements of a design that is displayed in a user interface. > > b. Identifying a set of fills (e.g. source fills) that are to be transferred (see processing block 2904). As described at [0825] of the Application, the set of fills may be identified by user inputs selecting the fills in an appropriate UI. > > c. Performing processing to map the source fills to the design elements (see processing block 2908). As described at [0827] of the Application, this mapping may be performed using the invention of claim 1. > > d. Once the source fills have been mapped to the design elements, the fills are then 'transferred' to those design elements based on the mapping that has been determined (see processing block 2910). This may involve, for example, replacing the fills of the original design elements with the source fills. > > 27. As one example, therefore, this method enables a user to select a set of fills (e.g. a set of photos or the like) and initiate a transfer process in which the selected fills are transferred to appropriate elements on a page of an existing design (for example shape-type elements of a template design). Due to the invention of claim 1, this transfer can be effectively performed even if the number of source fills selected by the user exceeds the number of shape-type elements in the existing design."

3. I have not canvassed figure 29 in any detail earlier in this decision, but as noted at [69] above this is reproduced at Annex A to this decision. The method of figure 29 per se is not overly complex and does not comprise a significant number of steps. The Applicant's discussion of it above provides an adequate understanding. However, it is important to appreciate that figure 29 comprises an alternative to, for example, performing the fill mapping and/or transfer step 1518 of figure 15 or 1608 of figure 16, which step occurs within the source document to new deck process 600 of figure 6 or the source deck to new deck process 2800 of figure 28. The Applicant has not included step 2906, but this is a self-explanatory initiation step: "Initiate fills transfer".
4. The second context discussed by the Applicant, at [29] to [30] of the 538 submissions, simply relates to the deck generation processes as previously discussed:

"29. By way of high-level description, methods 600 and 2800 as described in the Application are each performed in respect of a source design that defines source content (in the context of method 2800 the source design is a deck-format design and in the context of method 600 the source design is a document-format design). Staying at a high level, each method then operates to: > > a. Analyse the source design to generate source analysis data. > > b. Process the source analysis data to identify and select at least one destination design - for example one or more template designs that are determined (based on processing of the source analysis data) compatible with the source content of the source design. > > c. For a particular destination design that has been identified and selected: > > i. The source content from the source design is mapped to the elements of the destination design. Where the source content includes fills, this mapping includes mapping those source fills to appropriate elements of the destination design. > > ii. A new design is generated based on the source design (or the source content thereof), the mapping data, and the destination design. > > 30. In this context, the invention of claim 1 allows a destination design to be identified for the source design even if that destination design includes fewer elements that can accommodate fills (e.g. shape-type elements) than the number of fills that are defined by the source design. This, in turn, means that the number of template designs that can be identified as being compatible with the source design content is increased. In some cases, this may make the difference between not identifying any suitable templates for a source design (in which case no new design could be created). In other cases, it may mean that more templates can be identified and selected as being compatible with the source design than would otherwise be the case and, in turn, more new designs can be generated based on those templates."

5. The Applicant characterises the fill mapping process as follows at [31] of the 538 submissions:

"As noted, the 'fill transfer' method (discussed at paragraphs 26 and 27 above) and both methods for generating a new deck-format design (discussed at paragraphs 28 and 29 above) all involve mapping source fills to appropriate elements of a destination design. In this regard, the Application describes a method for mapping a set of source fills to a set of destination elements in a scenario where the number of source fills is greater than the number of destination elements: see method 2200 described from paragraph [0509] and with reference to Fig. 22."

6. The Applicant then provides some discussion of claim 1, with respect to the invention as described, at [35] to [40] of the 538 submissions:

"35. The invention operates to map a set of source fills to a set of destination frames in a scenario in which the number of source fills is greater than the number of destination frames. > > 36. Paragraph [0509] of the Application provides an exemplary condition when the invention may be applied: > > [0509] ... Method 2200 may be performed in scenarios where the number of source fills that need to be mapped exceeds the number of destination elements that can accommodate fills. For example, when content mapping is performed at 1518 described above, method 2200 may be performed when the primary key fills values are Booleans and a candidate page rewrite's number of fill-type source objects with a transfer content value of true of [sic] exceeds the destination page's number of fill-type destination objects with a receive content value of true. > > 37. To the extent it is needed, relevant context for the 'source fills' and 'frames' can be found at least at paragraph [0510] of the Application: > > [0510] Method 2200 is described with reference to source fills and frames. When method 2200 is performed at 1518, a source fill is a fill of the source design from which content is being transferred (and will have a corresponding fill-type source object) and a frame is a shape-type destination element (which will have a corresponding fill-type destination object). > > 38. Claim 1 also includes the operation of 'calculating an ideal fill size'. Relevant context for this aspect of claim 1 can be found in paragraph [0516] of the Application: > > [0516] ... A source fill's ideal size is a measure of the proportion of space the source fill would ideally occupy given the available space provided by the frames and the space required by the set of source fills" [sic]. > > 39. Paragraph [0516] of the Application also describes the following as an exemplary method for calculating an ideal size for a source fill: > > Ideal size = source fill size * (sum frame sizes / sum source fill sizes) > > Where: > > Source fill size = the size of the source fill for which the ideal size is being calculated. A source fill's size is calculated as (source fill width * source fill height). > > Sum frame sizes = the sum of the frame sizes for all frames identified at 2206. > > A frame's size is calculated as (frame width * frame height). > > Sum source fill sizes = the sum of the source fill sizes for all source fills identified at 2204. > > 40. Further details of a specific embodiment relating to claim 1 is provided at paragraphs [0509]- [0531] of the Application and with reference to Fig. 22."

It is quite clear that the Applicant, as do I, considers that the method of figure 22 is relevant to claim 1 of the 538 application.

1. Relevant legal principes on manner of manufacture are discussed at [41] to [49] of the 538 submissions. These are identical to the submissions made on the legal principles at [52] to [60] of the 529 submissions, and I refer to my comments in connection with these above.
2. There is also some discussion of the case law at [70] to [80] of the 538 submissions, in the context of discussing whether the claimed invention is patentable by reference to the Aristocrat Factors. While made with respect to a different invention, the case law therein and discussion thereof is very similar to that provided at [80] to [90] of the 529 submissions. I refer to my comments in connection with the corresponding 529 submissions above, as well as further discussion of these with regard to determining the substance of the claimed invention for the 538 application later in this decision.
3. Although perhaps superfluous, overall, I did not take the Applicant as putting forward principles to be applied regarding manner of manufacture that are materially different from those I have adopted below. I will, however, address some areas of apparent disagreement later in this decision where appropriate. I will also consider, where necessary, some of the Applicant's submissions concerning the case law in connection with my assessment of patentability later in this decision.
4. As with the 529 submissions, paragraphs [51] to [67] of the 538 submissions put forward the Applicant's views on the substance of the invention, including consideration of the Examiner's assessment of the substance. The Applicant, at [51], refers to 5.6.8.1 of the Manual in an identical fashion to [62] of the 529 submissions, and I refer to my comments in connection with these above.
5. The Applicant discusses the Examiner's assessment of the substance of the invention at [53] to [58] of the 538 submissions. Whilst there are some criticisms of the Examiner's analysis, the core of the Applicant's submissions on the Examiner's views on the substance of the invention are reflected at [53] to [56]:

"53. In Report 2, the Examiner states that: > > The substance of the invention is a set of abstract, administrative, logistical and/or aesthetic rules or a scheme to arrange images in a particular style. > > 54. It is submitted that this appears to be a conclusion on the issue of patentable subject matter, rather than a proper identification of the substance of the invention as claimed. Specifically, in seeking to answer the question of whether the substance of the invention is (for example) an abstract idea or a mere scheme (and therefore unpatentable), the Examiner states that the substance of the invention is a set of abstract rules or a scheme. > > 55. Even if this is not the case, the Examiner's determination of the substance of the invention does not appear to take any of the 'relevant factors' discussed above into account. > > 56. Furthermore, the Examiner's reference in Report 2 to the substance of the invention involving arranging images in a particular style sits uneasily with the invention as claimed. Arguably the arrangement of images is a result that the claimed invention facilitates - at least insofar as the invention maps source fills to destination frames which facilitates the transfer of those source fills to the destination frames. It is entirely unclear where the Examiner's reference to 'a particular style' comes from or what it is intended to convey." (emphasis in original)

I note that the reference at [55] to the relevant factors refers is to those from the Manual as repeated as at [51] of the 538 submissions.

1. What the Applicant considers to be the actual substance of the 538 invention is outlined at [59] to [67] of the 538 submissions. As with the 529 submissions, the Applicant's discussion proceeds by way of reference to the "relevant factors" from the Manual outlined above, as is apparent from [60] to [65] of the 538 submissions:

"60. As discussed at section 6.1 above, one relevant factor for determining the substance of a claimed invention is 'the contribution to the art asserted by the specification'. With respect to this factor: > > a. The Application at the outset identifies the technology that the invention relates to - 'Computer applications for creating and working with designs' (see paragraph [0002] of the Application). It also identifies a relevant problem 'In some situations, a user may wish to use a design they have created as the basis for generating another design. For example, a user may wish to use content prepared in an original document-format design as the basis for a deck-format design' (see paragraph [0004] of the Application). > > b. At paragraph [0047], the Application explains that the techniques described 'operate to automatically identify a matching template design and then generate a new deck-format design that is based on the template but that includes the source content from the original deck'. > > c. Paragraph [0509] of the Application describes that 'Method 2200 may be performed in scenarios where the number of source fills that need to be mapped exceeds the number of destination elements that can accommodate fills.'. > > d. The art may be described as a computer application for creating and working with designs configured to automatically create a design based on a source design. This is apparent from the specification as a whole - the claimed invention is a component part of the functionality of the computer application that achieves this. The contribution is explicitly recited in the claim - a method for automatically transferring source fills to destination frames when the number of source fills exceeds the number of destination frames. > > e. That the invention is a component part and one that is conditionally engaged (when the number of source fills exceeds the number of destination frames) does not weigh against patentability. By way of analogy the differential is a component part of a drivetrain and has no impact on the drivetrain when the torque load on each of the two output shafts are equal, but comes into play when these two torque loads differ, resulting in one shaft rotating faster than the other. > > 61. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above is 'the level of detail provided in the specification with regard to various aspects of the invention'. With respect to this factor: > > a. The claimed invention is described in detail in the Application, for example at paragraphs [0509]-[0524] which describe method 2200 with reference to the flowchart of Fig. 22. The specification provides a detailed description of the overall method [sic] the claimed invention, including detailed examples of: > > i. How ideal fill sizes may be calculated (see [0516] of the Application). > > ii. How remaining frame capacities are initially calculated (see [0517] of the Application). > > iii. How a source fill can be mapped to a destination frame - for example by generating a content map item and adding the content map item to a result set (e.g. content map data) (see [0520] of the Application). Paragraph [0506] of the Application further describes example data structures - namely that each content map item may be a (source object, destination object) tuple and the content map data may be an array of such tuples. > > iv. How a selected destination frame's remaining capacity is updated after a source fill has been mapped to it (see [0521] of the Application). > > b. In addition, the Application provides a detailed disclosure of various contexts in which the claimed invention may be performed. For example: > > i. Paragraphs [0525]-[0531] of the Application describe a worked example of method 2200. > > ii. Paragraphs [0818]-[0829] of the Application describe a 'fill transfer' method 2900. As described at paragraph [0827], method 2900 makes use of method 2200 in processing block 2908. > > iii. of [sic] the Application Method 600 includes a 'generate deck generation data' processing block 612. The processing involved in generating deck generation data at 612 includes generating content map data, which may be generated in accordance with method 2200. Specifically:

• Paragraph [0285] of the Application describes that the 'deck generation data' may be generated in accordance with method 1400.
• Method 1400 is described at paragraphs [0405]-[0487] of the Application and includes a 'generate new deck descriptor' processing block 1422.
• Generating a new deck descriptor is described at paragraphs [0464]-[0486] of the Application and includes a 'generate content map data for destination page' processing block 1518.
• Paragraph [0480] of the Application describes that content map data may be generated in accordance with method 2200.

iv. Paragraphs [0795]-[0817] of the Application describe a method 2800 for generating a deck-format design based on a source deck-format design. Method 2800 includes a 'generate deck generation data' processing block 2810. As described in the preceding bullet point, generating deck generation data includes generating content map data and this may be done in accordance with method 2200. > > 62. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above, is 'how does the invention work'. With respect to this factor: > > a. As set out in claim 1, the invention works by progressively mapping source fills from a set of source fills to destination frames from a set of destination frames. In order to do this, an ideal fill size is calculated for each source fill and a remaining capacity is calculated for each destination frame. At each processing loop: the source fill that has the largest ideal fill size and that has not been mapped to a destination frame is selected; the destination frame with the largest remaining capacity value is selected; the selected source fill is mapped to the selected destination frame; and the remaining capacity value for the selected destination frame is updated by subtracting the ideal fill size of the selected source fill from the existing remaining capacity value of the selected destination frame. > > 63. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above is 'the form of words, breadth and emphasis of the claim'. With respect to this factor: > > a. It is submitted that the wording of claim 1 is such that its breadth is appropriate for the contribution that the invention makes. The wording of claim 1 and the features defined limit the claim to a process for mapping source fills to destination frames that involves specific operations that are well defined in the claim and described in detail in the specification as filed. > > 64. Another relevant factor for determining the substance of a claimed invention discussed at section 6.1 above is 'the actual or alleged advantages of the invention'. With respect to this factor: > > a. When transferring source fills to destination frames (e.g. as described in method 2900 of the Application) the invention addresses the problem of a user wishing to transfer a number of source fills that exceeds the number of destination frames. > > b. When generating a new design based on a source design (e.g. as described in methods 600 and 2800 of the Application) the invention allows existing designs (e.g. templates) to be selected as 'destination designs' even if they do not include as many fill-accommodating elements as the number of fills that are to be transferred from the source design. This, in turn, means that the number of template designs that can be identified as being compatible with the source design content is increased. In some cases, this may make the difference between not identifying any suitable templates for a source design (in which case no new design could be created). In other cases, it may mean that more templates can be identified and selected as being compatible with the source design than would otherwise be the case and, in turn, more new designs can be generated based on those templates. As discussed above, the problem addressed by the invention is in facilitating the transfer of source fills to destination frames. > > 65. As is clear, the proper inquiry with respect to the substance of a claimed invention is much more involved than considering a result that is provided or facilitated by the invention and concluding from this that an invention is (as a matter of substance) 'a set of abstract, administrative, logistical and/or aesthetic rules or a scheme to arrange images in a particular style'." (emphasis in original)

1. The relevant factors discussed here by the Applicant are identical to those as discussed at [70] to [75] of the 529 submissions. It follows that not all the relevant factors from the Manual are explicitly discussed by the Applicant - there is no discussion of "What problem does the invention address?" or "What does the invention add to the state of the art as at the priority date?". However, I do note that there is some discussion of the problems addressed at [60] of the 538 submissions.
2. After this, the Applicant firstly identifies certain things that the substance of the invention must include, followed by an "example" substance, at [66] and [67] of the 538 submissions. I will reproduce these later in the decision as part of my consideration of the substance of the claimed invention.
   1. Similarly, as for the legal principles outlined above, I did not take the Applicant's discussion of the invention, either as claimed or described, to extend to anything materially beyond what is discussed earlier in this decision, although I may disagree with the characterisation and effect of some features of the invention as asserted by the Applicant.. To the extent necessary I will address these where appropriate in my consideration of patentability of the invention below, including what is the substance of the invention.

1. The statutory basis for manner of manufacture is found at s18(1)(a) of the Patents Act 1990 (the "Act") which states:

"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."

1. Fundamental principles with respect to manner of manufacture were outlined by the High Court in NRDC at [14]:

"It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: 'Is this a manner (or kind) of manufacture?' It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because 'manufacture' as a word of everyday speech generally conveys that idea. The right question is: 'Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the 'Statute of Monopolies?'"

1. The NRDC decision related to a process for eradicating weeds from crop areas. A test applicable to the facts of this case was given in NRDC at [22]:

"The point is that 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 (see Re Virginia-Carolina Chemical Corporation's Application (1958) RPC 35, at p 36) - that its value to the country is in the field of economic endeavour."

1. In Grant, the court considered the patentability of what may be generally described as a business system or method directed towards protecting assets via the creation of a trust, this method not involving any computer implementation. Their Honours in Grant (at [26]) did not consider the question as to whether a business system is or is not patentable. Rather they found (at [47]) Mr Grant's claimed systems and methods were not for a manner of manufacture in the sense described in NRDC:

"It has long been accepted that 'intellectual information', a mathematical algorithm, mere working directions and a scheme without effect are not patentable. This claim is 'intellectual information', mere working directions and a scheme. It is necessary that there be some 'useful product', some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent. That is missing in this case."

1. More recently the authorities have directly considered the patentability, or otherwise, of computer implemented business methods, most notably in Research Affiliates and RPL. The discussion in RPL referred to the terminology from NRDC, with the observation at [117] that such terminology was apposite but "...not conclusive of patentability". As noted by the majority in 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. Consistently with that approach, and without resort to the 'generally inconvenient' proviso in s 6 of the Statute of Monopolies, there may be cases in which the court will decide that the implications of patentability of a new class of invention are such that the invention as claimed should not be treated as patentable by judicial decision".

1. It was in this light that their Honours, at [96] to [98] of RPL, 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."

1. Thus, in relation to computer implemented inventions (and indeed any type of invention), 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. Relevantly RPL and Research Affiliates provided principles that assist in determining where the substance of these types of inventions resides and whether that material is patentable. In particular at [99] to [107] of RPL, their Honours reiterated a series of these principles from Research Affiliates (in particular at [94]). I note that the principles from Research Affiliates and RPL were cited with approval in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86; 277 FCR 267; 379 ALR 86; 152 IPR 1 ("Rokt") at [69], in Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223 ("Repipe2") at [4], in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 ("Aristocrat 21") at [29] and [106], and by an expanded Full Court in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161; 372 ALR 646; 145 IPR 1 ("Encompass) at [77] et seq.
2. Conveniently the principles concerned have been summarised at [189] of Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988; 139 IPR 1 ("Rokt Pte Ltd"):

"The respondent submitted that the law as laid out in Research Affiliates and RPL Central held that:

'17.1 The Court must decide, as matter of substance not form, whether the claimed invention is the proper subject-matter for a patent: RPL Central at [99]; Research Affiliates at [106], [117].

17.2 This requires consideration of both the claims of the Application and the invention described in the body of the specification: RPL Central at [114].

17.3 The assessment is not done mechanically. There are no precise guidelines or mathematical formula. It is "a question of understanding what has been the work of, the output of, and the result of, human ingenuity" and then applying the developed principles: Research Affiliates at [116]. See further RPL Central at [112]:

Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie ...

17.4 One well-settled principle is that a distinction exists between a technological innovation and a business innovation. A technological innovation is patentable. A business innovation is not: Research Affiliates at [94]; RPL Central at [100]. Consequently, a business method or scheme is not, per se, a proper subject for letters patent: RPL Central at [96]. Nor are abstract ideas, mere intellectual information or mere directions for use patentable: Research Affiliates at [101]; RPL Central at [100].

17.5 A computerised business method or scheme can, in some cases, be patentable. However, "[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation": RPL Central at [96] (emphasis added). This requires "some ingenuity in the way in which the computer is used": RPL Central at [104]. It is not a patentable invention "to simply 'put' a business method 'into' a computer to implement the business method using the computer for its well-known and understood functions": RPL Central at [96]. In other words, if the ingenuity lies in the business method or scheme alone, the invention will not be patentable despite the computer-implementation.

17.6 Thus, a claimed invention must be examined to ascertain whether it is in substance a scheme or plan, or whether it can broadly be described as an improvement in computer technology: RPL Central at [96]. Contrary to [the applicant's submissions at [49]], this is a binary distinction: the invention is either an unpatentable scheme or plan, or it is a patentable improvement in computer technology. In conducting the analysis, it is useful to:

17.6.1 ascertain whether the contribution to the claimed invention is technical in nature: RPL Central at [99], Research Affiliates at [114];

17.6.2 consider whether the invention solves a "technical" problem within the computer or outside the computer: RPL Central at [99]; Research Affiliates at [103];

17.6.3 consider whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed: RPL Central at [99], Research Affiliates at [118];

17.6.4 consider whether the invention requires merely "generic computer implementation", as distinct from steps which are "foreign" to the normal use of computers: RPL Central at [99], [102]; Research Affiliates at [101]; and

17.6.5 consider whether the computer is merely the intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea: RPL Central at [99].'"

1. I note that the above principles were explicitly accepted by Robertson J at [201] of Rokt Pte Ltd. While the decision in Rokt Pte Ltd was overturned in Rokt, it was not on the basis of any error in the principles listed above, which I accept are correct, noting that [189] of Rokt Pte Ltd represents a convenient summary of the principles from Research Affiliates and RPL. I also note that essentially identical principles were adopted by McKerracher J in Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 ("Repipe1") at [39(5)], which was upheld in Repipe2, with there being, as I understand it, no fundamental disturbance of the principles enunciated in Repipe1 as a result of Repipe2.
2. I also observe that, whilst the words from Rokt Pte Ltd are not identical to those from Aristocrat, the considerations in a general sense are the same. It is reasonable to believe that the differences in wording between the two will not lead to any material difference in outcome, particularly given there is a degree of redundancy between the factors outlined in Aristocrat. However, I do agree with the Applicant (for example, at [59] and [60] of the 529 submissions, and [48] and [49] of the 538 submissions) that one needs to be careful to ensure that a proper approach is taken to ensure that the substance of the invention is correctly identified and characterised.
3. It is perhaps convenient here to observe that Aristocrat 21 was appealed to the High Court with the result that the High Court delivered a split decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 ("Aristocrat 22"). This meant that Aristocrat 21 was affirmed pursuant to s23(2)(a) of the Judiciary Act 1903. While essentially leaving existing and well-established jurisprudence on the patentability of computer implemented inventions undisturbed, it is worthwhile repeating the observations of the Deputy Commissioner in Diogenes Limited [2023] APO 8 at [26] that Aristocrat 22 appeared...:

"...to confirm that an advance in computer technology is not a useful test for patentability. Additionally, the High Court confirmed the decisions of the Full Federal Court in RPL Central, Research Affiliates, Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, and Rokt 2 [Rokt2] were correct. The High Court at [77] also discussed the idea that an 'adaptation or alteration of, or an addition to, technology otherwise well-known in the common general knowledge to accommodate the exigencies of a new idea or plan or game' would give rise to patentable subject matter. Such an idea appears consistent with the principles articulated in Rokt 1 [Rokt Pte Ltd] which seeks patentability in the form of something, for example, more than merely generic computer implementation; generally being steps which are foreign to the normal use of computers and where the computer is more than merely the intermediary, adding substance to the idea."

1. As examination was requested after 15 April 2013, the substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the present applications. In particular the amendments to s49 of the Act allow the Commissioner to refuse an application if he is not satisfied on the balance of probabilities that the invention, so far as claimed, satisfies the criteria of s18(1)(a). Notably, as I have already mentioned, the criteria outlined at s18(1)(a) is that 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".

Do the claims of the 529 application comprise a manner of manufacture?

1. I will initially consider this question with regard to independent claim 1 and will further consider the dependent claims as appropriate.

1. It is perhaps trite, but the fundamental question I need to answer is what does the claimed invention comprise as a matter of substance? I will now consider whether the claimed invention is patentable by recourse to the considerations at [189] of Rokt Pte Ltd. I will also consider, where appropriate, the Applicant's submissions regarding these factors. References to the "claim" in the following discussion means claim 1 of the 529 application.
2. Where reasonable to do so, I have tried to address the Applicant's submissions in relation to each of the factors I have outlined below, even where the Applicant has discussed these in connection with a different factor. It is important to note, as observed above, that the words from Rokt Pte Ltd are not identical to those from Aristocrat.
3. There is an affinity between the relevant factors of the Manual on the one hand, and the Aristocrat Factors and the considerations from Rokt Pte Ltd on the other_._ The Applicant has used the relevant factors to identify those things that it considers form part of the substance of the invention, whilst the Applicant used the Aristocrat Factors to characterise this "substance". In practical terms, utilising the Aristocrat Factors or those from Rokt Pte Ltd (or any other particular approach adopted by the authorities) to identify the substance tends to simultaneously reveal the character of that substance in terms of patentable subject matter. I do not intend to directly consider each of the relevant factors posed by the Applicant in determining the substance at [71] to [75] of the 529 submissions, because both the Aristocrat Factors and the considerations from Rokt Pte Ltd provide for essentially the same acceptable, if differently worded, framework for determining the substance of the invention. I may, however, address some matters put in the Applicant's discussion of the relevant factors in undertaking my analysis where I consider it appropriate to do so. It is also the case, as will be seen, that I rather unsurprisingly arrive at a substance of the invention that is not materially different to that posed by the Applicant.

Is the contribution to the claimed invention technical in nature?

1. To assess this requires an understanding of the technical features of the invention, both individually and collectively, and the effect of carrying out the invention.
2. There are clearly some individual features encompassed within each of the integers of the claim as identified above, that are either technical in nature or make use of technical features. The claim comprises a computer of some kind by virtue of defining a "computer implemented method". Most of the various sub-elements within the claim make use of computer technology, in that there is:
   • identification of what may be generally called data based on certain criteria (e.g. identifying a destination design based on the source analysis data);
   • accessing or reading data (e.g. accessing source design data); and
     • processing of data to generate further data (e.g. processing the first set of source design elements to generate source design analysis data).
3. However, the computerised systems or device(s), are not specified in any way in the claim. Selection of these, and the creation of any software, to achieve the claimed invention is entirely up to the skilled addressee, who may utilise any such device or devices as known in the art using any suitable arrangement of these that may be devised by the skilled addressee in carrying out the claimed invention. Similarly, the actions performed using the computerised device(s) simply relate to the identification, reading, processing or generation of data using the capabilities of computer systems as known in the art, particularly in view of the entirely non-descript nature of the computerised devices as defined in the claim. I therefore take it that performing the actions concerned within the claim merely extends to the use of computer technology as well known in the art. Consequently, to the extent there are individual technical features in, or made use of by, the claim, these merely extend to "...computer technology that is utilised for its basic, typical or well-known functions" (Rokt at [89]), and do not provide in substance a technical contribution to the invention.
4. It is now necessary to consider whether the claim as a whole provides, or several sub features of the claim otherwise interact to provide, a technical contribution. That is, in the words of Aristocrat 22, is there an "...adaptation or alteration of, or an addition to, technology otherwise well-known in the common general knowledge to accommodate the exigencies of a new idea or plan or game". The actual steps per se of the claim, when considered as a whole, may be broadly understood to generate a new deck design from an existing source design by:
   • accessing data concerning the content of a "source design" ("source design data" comprising the "first set of source design elements");
   • processing the "first set of source design elements" of the "source design" to generate data (e.g. the "target identifier", "type attribute" and "reading order attribute" of the "analysis object attributes" for a "source design element") about the content of the source design ("source design analysis data"), the "source design analysis data" being used to identify a "destination design" (e.g. a template design); and
   • generating the new deck design using the "source design", the "destination design" and the "source design analysis data", including:
     • using the "analysis object attributes" to identify a "destination design element"; and
     • generating a "new design element", which is included in the new deck design, based on the "destination design element" and includes content based on the "source design content" associated with the "source design element" instead of the content associated with the "destination design element".
5. It is quite clear from both the invention as claimed and described that the new deck design process is nothing more than an algorithm that allows content from a source design to be automatically transferred to a destination/template deck design. More specifically, this is done via analysing the content of the source design to provide for metadata for that content that is then used to identify a suitable destination/template deck, and for the source content to be transferred to the destination/template design. This may be understood as a series of steps or instructions to be followed in carrying out the transfer of source content into a destination/template design. Whilst there is technology present in the claim as discussed above, it is not apparent that there is anything about the method of claim 1 that is technical in nature as such, as opposed to simply using the well-known capabilities of computers to read, process and generate data.
6. The Applicant discussed an essentially identical Aristocrat Factor at [84] of the 529 submissions. This paragraph is reproduced below:

"Another Aristocrat Factor raises the question of 'is the contribution of the claimed invention technical in nature'. In this regard: > > a. Given the context of the claimed invention - namely processing and manipulating designs, where the manipulating is by the computer itself, not as a mere intermediary for a person (e.g. as may be the case if the claims were to a 'wizard') - we submit that the contribution of the claimed invention is technical in nature. > > b. Furthermore, the invention addresses a particular problem faced by the computer, which does not possess creativity to deal with such problems - in particular, how to take a source design (which may include practically any amount and arrangement of content of different types), identify an existing (e.g. destination) design that is compatible with that source design, determine which bits of content from the source design map to which elements of the destination design, and then generate a new design based on the source design and the destination design. > > c. The problem of how to go about configuring or programming a computer to automatically perform such operations itself, rather than be a mere intermediary for some other process to achieve a similar result, can only be considered a technical one. > > d. Furthermore, and as discussed at paragraph 72 above, the Application provides detailed examples of how the claimed invention may be implemented and these details relate to the specific way that designs are defined by a computer." (emphasis in original)

7. In relation to the argument at [84]a, I fail to see how the processing and manipulation of designs elevates the computer to something other than an intermediary for a person. As discussed above, the computer technology present in the claim is non-descript and is present at no higher level than the well-known functionality in processing and generating data that computers provide, which indicates that the computer is indeed acting as an intermediary. The fact that the invention does not define a "wizard" as such does not detract from the fact that it is for no more than an algorithm for generating a new deck design from a source design and a template deck as discussed above.
8. With regard to items b. and c., the problems outlined are not, per se, technical problems. Nor is the "relevant problem" outlined at [71]a of the 529 submissions (see my discussion at [85] above). Although it is possible that a (secondary) technical problem might be overcome in solving such non-technical problems, no such technical problems are apparent in the specification and if there are any technical problems in actually implementing the invention, these are not disclosed in the specification. Nor is it apparent that, in substance, any technical solution has been provided by the invention in solving these or any other problem. The claimed invention is simply a series of high-level steps to be followed as part of generating the new deck design. How the computer system is configured to achieve the invention, in terms of hardware and software, is entirely left up to the skilled addressee, which suggests that the computer is merely acting as an intermediary in performing the claim. It is not otherwise apparent how a high-level set of instructions to generate a new deck from existing source and destination/template decks solves any technical problem at all. There do not appear to be any problems associated with computer technology that have been overcome, and on the contrary it is a case of coming up with an algorithm that can be used to process the data without a mind doing so, e.g. automated.
9. With respect to item d., putting aside the fact that much of the discussion at [72] of the 529 submissions concerns features or embodiments not actually in the claim, none of the features concerned change the character of the invention even if they formed part of the claim. These features simply define further or additional steps of the high-level algorithm comprising the reading, processing and generation of data, for example how to process a deck format design as per figure 5 or how to process a document format design as per figure 8. Other features referred to include data structures characterised by their purely information content as discussed earlier in this decision, which simply outline what may be understood as metadata concerning the content of source or destination/template designs. The fact that a scheme has many, and even apparently quite detailed steps, does not necessarily make it any less a scheme and certainly does not imbue it with technical character.
10. I do not consider that the invention of the claim comprises a contribution that is technical in nature.

Does the invention solve a "technical" problem within the computer or outside the computer?

1. It is not apparent that the claim solves a technical problem within or without the computerised apparatus or systems concerned. Merely providing an algorithm for automatically transferring source content to a new deck design via analysing the content of the source design to identify a suitable deck design and transferring the source content thereto is not addressing any technical difficulty as such. As discussed above, I remain unconvinced that the claim comprises anything of a technical nature, other than the use of computer technology as such. Nothing within the claim appears to address or overcome any technical difficulties. In summary, I do not consider that the claim solves any technical problem, either within or without the computerised apparatus of the claim.
2. The Applicant has provided some consideration of the problems addressed by the invention, as apparent from my discussion above at [128]. As noted there, I do not consider these to be technical problems as such.
3. The corresponding Aristocrat Factor was discussed, amongst other considerations, at [89] of the 529 submissions:

"Several other Aristocrat Factors are discussed [in] (and arise in the context of) Research Affiliates. These include the questions of: 'does the invention solve a technical problem within the computer or outside the computer' (discussed in the context of European and UK law); 'does the method merely require generic computer implementation' (discussed in the context of US law); 'can it be broadly described as an improvement in computer technology'; and 'is there ingenuity in the way in which the computer is utilised'. With respect to these Aristocrat Factors: > > a. In the opening paragraph of Research Affiliates the Full Federal Court identified that the question being addressed in that case was 'whether computer implementation of an otherwise unpatentable business scheme is sufficient to make the claimed method properly the subject of letters patent' (emphasis added). > > b. Indeed, and as set out at paragraph 82 of Research Affiliates, this question mirrors the question that was asked by the Commissioner of Patents: > > Is that sufficient? As the Commissioner puts it: is an 'invention' which is in the nature of a business, commercial or financial scheme rendered patentable 'merely' by reason of the fact that it is implemented by means of a computer? > > c. Accordingly, the inquiries raised by these particular Aristocrat Factors may be apt for an invention that is identified (as a matter of substance) to be the computer implementation of an otherwise unpatentable 'business', 'commercial' or 'financial' scheme. > > d. The substance of the present invention is not, however, computer implementation of an otherwise unpatentable business/financial/commercial scheme. Given this, it is submitted that these particular Aristocrat Factors are neither useful nor relevant to determining whether the present invention is a manner of manufacture. > > e. Even if the Hearing Officer disagrees with this, it is again noted that the Aristocrat Factors are not exhaustive. Furthermore, even if the Aristocrat Factors do apply the requirement is not - and cannot be - a requirement that each and every one of the Aristocrat Factors is satisfied. Instead, it is submitted that if an invention satisfies even one of the Aristocrat Factors this should point towards that invention being a manner of manufacture." (emphasis in original, references to footnotes removed)

4. The point of the Aristocrat Factors and those I have adopted from Rokt Pte Ltd is to assist in properly identifying and characterising the substance of computer implemented inventions; see, for example, point 17.6 from [189] of Rokt Pte Ltd and Encompass at [94] to [96]. In this regard the suggestion that the considerations concerned are inapplicable in present circumstances because the present invention is (allegedly) not in substance a "business, commercial or financial scheme", unlike the case in Research Affiliates, is to misunderstand both Research Affiliates and the existing authorities on the patentability of computer implemented inventions. The statement from Research Affiliates at [1] that the question raised is "...whether computer implementation of an otherwise unpatentable business scheme is sufficient to make the claimed method properly the subject of letters patent" simply reflects the facts of that case - their honours were literally considering whether the otherwise unpatentable business method defined in the application of Research Affiliates became patentable by virtue of computer implementation. That was a consideration that rose and fell on the facts of Research Affiliates per se - their honours were hardly indicating that the considerations they had adopted were only ever applicable where the invention concerned was a business, commercial or financial scheme.
5. As apparent from Myriad, at [94] and [144], Encompass at [81] and RPL at [96], whatever the subject matter, the question is one of identifying the substance of the invention at hand. The principles to achieve this in the context of computer implemented inventions have been reflected in several decisions of the Full Court, for example as outlined at [105] et seq of this decision above. It is antithetical to ascertaining that substance to artificially constrain the analysis based on the "type" of scheme, or otherwise based on the nature of an invention, which is implemented using a computer. Schemes, however they may be categorised, have never been held to be patentable, and it would be very odd indeed if mere computer implementation of a scheme that is something other than a business, commercial or financial scheme would become patentable solely by virtue of not being a business, commercial or financial scheme.
6. Noting that the authorities urge a "case by case" approach (see Myriad at [23]), I am prepared to accept that there may be situations where it could be necessary to tailor the approach of assessing the substance of an invention to the facts at hand. However, the invention in the present matter is clearly a computer implemented invention, and, absent any countervailing indications to the contrary, I see no reason to depart from the approach taken by the existing authorities concerning computer implemented inventions. It should be apparent from the preceding paragraphs that simply pointing to a different category or type of "scheme" in no way provides such countervailing reasons.
7. The above paragraphs dispose of [89]a to [89]d of the 529 submissions. With respect to [89]e, I am prepared to accept that the Aristocrat Factors may not be exhaustive. As noted above there is a degree of redundancy in the Aristocrat Factors, such that one may achieve, in my view, an appropriate analysis by considering, in effect, a subset thereof, as per the authorities, for example from Rokt Pte Ltd. I am also prepared to accept that the Aristocrat Factors are non-exhaustive for the reasons as given in the preceding paragraph; namely in some circumstances different considerations may be appropriate.
8. I also agree that not all the Aristocrat Factors need be met before an invention can be considered to comprise a manner of manufacture. It is a matter of assessing the relevant considerations in view of the facts of each case and collectively weighing the outcomes in an appropriate manner to arrive at a result concerning manner of manufacture. In that regard, I cannot agree with the Applicant's suggestion that "...if an invention satisfies even one of the Aristocrat Factors this should point towards that invention being a manner of manufacture" (529 submissions at [89]e). Such an approach simply reduces the assessment to a mechanistic outcome devoid of nuance and appropriate weighing of the various considerations.

Is there an improvement in the functioning of the computer, irrespective of the data being processed?

1. I cannot ascertain any improvement in the functioning of any of the computerised features used within the claim, irrespective of the data being processed. As discussed above, the computerised features present in the claim are merely used for their standard or known abilities to identify, process, read and generate data. Any improvement, to the extent one can be identified, appears to reside in the fact that the claimed invention (once put into practice via a suitable computer program, with such programming left entirely up to the skilled addressee) automatically transfers content from a source design to a destination/template deck.
2. The Applicant discussed an essentially identical Aristocrat Factor at [85] of the 529 submissions, which is reproduced below:

"Another Aristocrat Factor raises the question of 'does the invention result in improvement in the functioning of the computer, irrespective of the data being processed'. In this regard: > > a. Yes, the present invention operates to provide a useful tool for a design application. The invention operates to take a source design (which, as noted, may have practically any amount and arrangement of content of different types) and, irrespective of the specific content of the source design, process it to identify a suitable destination design (provided such a destination design exists within a library of existing designs - see, for example, paragraphs [0172]-[0177] of the Application) and generate a new design based thereon."

3. I fail to see how the claimed invention improves the function of the computer as such. It is quite clear that any generic computer system may be used to perform the invention, with the details of that implementation in both hardware and software being entirely left to the skilled addressee. It is hard to see how the mere use of such generic technology for its well-known and understood capabilities can be understood to comprise an improvement in computer technology as such. If the invention as it stands provides some technical benefit or improvement to computer technology, for example in terms of being able to take practically any amount and arrangement of different content types and generate a new design that computer technology could not previously achieve, then this does not emerge from the claim as it stands or from reading the specification. Rather, the ability to practically take any amount, type or arrangement of content would seem to extend from the processing abilities of computers as known in the art.
4. The fact that the invention provides a "useful tool" is relevant to considerations of patentability and will be discussed further below. However, the notion of "usefulness" does not necessarily answer questions regarding whether there has been any improvement in the functioning of the computer as such.
5. As apparent from [133] et seq above, the Applicant also included "can it be broadly described as an improvement in computer technology" at [89] of the 529 submissions. This consideration is relevant to the present consideration from Rokt Pte Ltd, and I refer to my comments on [89] of the 529 submissions above. Whilst the Applicant has not provided any comment on this Aristocrat Factor, it should be apparent that I do not consider that the claim comprises any improvement in computer technology.

Does the invention require merely "generic computer implementation", as distinct from steps which are "foreign" to the normal use of computers?

1. For reasons as discussed above, it is quite clear that all the computerised features of the claimed invention are being used in a generic sense in that use is merely made of the well-known functions and abilities of the same, or of techniques that are well known to be used in reading, processing or generating data in a computerised system. There is nothing in the use of any of the computerised features which is foreign to the normal use of computers.
2. The Applicant provided submissions on a related Aristocrat Factor at [87] of the 529 submissions, reproduced below:

"Another Aristocrat Factor raises the question of 'does the invention involve steps that are foreign to the normal use of computers'. In this regard: > > a. In many situations, the consideration of 'does the invention involve steps that are foreign to the normal use of computers' seems to be interpreted as a consideration of 'does the invention involve any steps that could not be performed using known (or "generic") computer hardware'. It is submitted, however, that this is not a reasonable interpretation of the actual question. In Research Affiliates, the Full Federal Court noted, > > When the authorities in Australia prior to and including Grant are considered, a consistent approach emerges as to the relevance of:

• ...
• the fact that the claimed steps are foreign to the normal use of computers, such as the production of an improved curve image (IBM 2 at 225-226);

Accordingly, the origin of the 'steps foreign to the normal use of computers' consideration has its origin in the IBM decision [International Business Machines Corporation v Commissioner of Patents [1991] FCA 811; 33 FCR 218; 105 ALR 388, referred to as IBM 2 in Research Affiliates]. In IBM, however, the steps that were found to be 'foreign' to the normal use of computers were: > > the application of the selected mathematical methods to computers, and in particular, to the production of the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers > > Clearly, therefore, the invention in IBM did not involve steps that 'could not be performed using known (or "generic") computer hardware'. Rather, the invention of IBM involved steps that were foreign to the normal use of computer in the sense that they had not been (rather than could not be) performed by a computer. > > b. With this in mind, the answer to this Aristocrat Factor is 'yes': the claimed invention (as a matter of substance) involves a number of steps that are foreign to the normal use of a computer. Furthermore, the present invention combines those steps in a way that is also foreign to the normal use of a computer. At the priority date it was not normal to configure a computer system to perform the various operations that are claimed in order to generate a new design based on a source design." (emphasis in original, references to footnotes removed)

1. It is apparent that the Applicant's submissions above reduce considerations of "foreign to the normal use of computers" to nothing more than whether the invention is novel over the state of the art. Not only is this a conflation of grounds, but it also cannot be correct. To begin with, a careful consideration of IBM does not, in fact, support the proposition put by the Applicant. In this regard it is worth reproducing IBM at [3] and [16]:

"3. In the present case, the complete specification related to what was described as a 'method and apparatus for producing a curve image', regarding which it stated: 'The present invention relates to computer graphics and more specifically to a method and apparatus for generating curves on computer graphics displays.' The recital of the prior art commenced by pointing out that the 'evolution of computer technology has resulted in the creation of a sophisticated technical area devoted to the representation of graphical information generated by computers', an area termed computer graphics. The method generally used for the generation of smooth curves in computer graphics is then said to have the disadvantage that a curve 'will in general have perceptible discontinuities in slopes of curvature at joints between successive curve segments unless specific curve types or forms are used'. Difficulties 'in generating the coordinate values' are also mentioned, and compounded inaccuracies resulting from accepted techniques. The nature of the solution described in the specification has been summarised by the Delegate, as follows: > > 'The invention involves the use of forward differencing or incrementing techniques to produce sets of integral numbers for the control points in each dimension. The numbers are produced by incremental scaling of initial parameters using integer arithmetic, which increases the speed and accuracy of the computations. Integer arithmetic multiplication operations are performed by binary shifting operations in paths connecting registers in computer curve generator circuits, and integer arithmetic adding operations are performed by adders placed serially with the registers such that the computations may be performed in a pipelined fashion. A final computational stage includes a division operation only requiring binary shifting and adding rather than a floating point operation.' > > ... > > 16. In the present case, it seems to me that the use of the algorithm is not different conceptually from the use of the compounds involved in National Research and Development Council. Just as those compounds were previously known, so here, it is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers, and in particular, to the production of the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers and, for that reason, to be inventive. The production of an improved curve image is a commercially useful effect in computer graphics." (emphasis added)

2. Thus, it can be seen from IBM that the method concerned there was considered "foreign to the normal use of computers" because it involved the application of certain mathematical techniques in the operation of the computer, hitherto unused in the generation of curves on a display, that allowed for smoother curves to be generated compared to known methods while using computational resources more efficiently. That is, the invention allowed for computers to generate smoother curves in a way that they could not have done so previously without the methods defined by the invention.
3. It can be seen that the above submissions only refer to "known (or 'generic') computer hardware". This ignores the fact that the "normal use of computers" also includes the software aspects of computing technology. It is apparent that the invention in IBM comprised methods that are implemented in computer software to allow the computer hardware to draw a smoother curve in a way that could not be technically achieved previously, and is thereby "foreign to the normal use of computers" in view of computer technology as it stood at the time.
4. It follows from the above that I disagree with the Applicant's assertion at [87]b that the claimed invention comprises steps that are foreign to the normal use of computers. In particular the suggestion that the invention combines the steps in a way that is foreign to the normal use of computers, or that it was not normal to configure a computer system to perform the operations concerned to generate a new design based on a source design, is clearly based on the Applicant's views that simply doing something novel leads to patentable subject matter. Putting that aside, I otherwise fail to see how there is anything "not normal" or "foreign" to the use of computers in the invention as claimed, or for that matter as described. As I have already observed, the actual configuration of the computer system, in terms of both hardware and software, to achieve the invention is entirely left up to the skilled addressee.
5. I note that the Applicant also addresses "does the method merely require generic computer implementation" at [89] of the 529 submissions. These submissions have already been discussed above at [133] et seq, and I refer to my comments there, noting that the Applicant did not directly comment on whether the method merely required generic computer implementation.

Is the computer merely an intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea?

1. As discussed above, the computerised features are specified at only a generic level to merely facilitate the reading, identification, processing and generation of data so as to enable automatic transfer of content from a source design to a destination/template design. That is, they are merely an intermediary facilitating the reading, identification, processing and generation of data within the claim and add nothing of substance to the same.
2. Although the Applicant did not address this consideration separately, some comments on the computer being more than an intermediary are present at [83]b of the 529 submissions in the context of discussing "there must be more than an abstract idea, mere scheme or mere intellectual information". Paragraph [83]b is reproduced below:

"It is submitted that even on a cursory consideration the claimed invention cannot, as a matter of substance, be reasonably considered to be 'an abstract idea', a 'mere scheme', or 'mere intellectual information'. The substance of the claimed invention is clearly 'more than' this. For example, it includes generating attributes identifying a content type and a reading order and using those attributes to both identify a destination design and to generate a new design based on the destination design. Importantly, these generated attributes are specific to the way that source designs are defined by a computer in order to allow the computer to generate a new design according to the claimed invention. In other words, the claimed method is specific to computers and as such cannot be a mere abstract idea or mere scheme or mere intellectual information in which the computer is nothing more than an intermediary."

3. I will consider whether there is more than an abstract idea, mere scheme or mere intellectual information later in this decision. In terms of the computer being an intermediary, I cannot agree with the Applicant's characterisation at [83]b. The fact that a method may be specific or involve the use of computers in no way answers the question of whether the computer concerned is acting as nothing more than an intermediary. The Applicant's submissions here are little more than an argument that in any computer implemented invention, the computer never acts as an intermediary. This is clearly incorrect in view of the authorities, such as Myriad, RPL, RA and Encompass which emphasise the need to assess patentability as a matter of substance.
4. Similar arguments were made at [84]b and [84]c of the 529 submissions. These are cited and discussed above at [126] et seq, and I refer to the comments made there in connection with the computer merely being an intermediary.

1. Beyond the submissions put by the Applicant discussed above in connection with the factors from Rokt Pte Ltd, the Applicant also provided submissions on other Aristocrat Factors, including:
   • "there must be more than an abstract idea, mere scheme or mere intellectual information;
   • "does the application of the method produce a practical and useful result";
   • "does the invention lie in the generation, presentation or arrangement of intellectual information"; and
   • "is there ingenuity in the way the computer is utilised".

For completeness, I will consider each of these considerations below.

There must be more than an abstract idea, mere scheme or mere intellectual information

1. The Applicant discusses this at [83] of the 529 submissions:

"One of the Aristocrat Factors is that 'there must be more than an abstract idea, mere scheme or mere intellectual information'. In this regard: > > a. In Grant, the Full Federal Court discussed these types of 'inventions' as follows: > > It has long been accepted that 'intellectual information', a mathematical algorithm, mere working directions and a scheme without effect are not patentable. > > (This quote is referred to in section 5.6.8.8 of the Manual.) > > b. It is submitted that even on a cursory consideration the claimed invention cannot, as a matter of substance, be reasonably considered to be 'an abstract idea', a 'mere scheme', or 'mere intellectual information'. The substance of the claimed invention is clearly 'more than' this. For example, it includes generating attributes identifying a content type and a reading order and using those attributes to both identify a destination design and to generate a new design based on the destination design. Importantly, these generated attributes are specific to the way that source designs are defined by a computer in order to allow the computer to generate a new design according to the claimed invention. In other words, the claimed method is specific to computers and as such cannot be a mere abstract idea or mere scheme or mere intellectual information in which the computer is nothing more than an intermediary. > > c. By way of further comment in this regard, the following statement of the Full Federal Court in Grant is relevant: > > There must be more than 'a mere method or mere idea or mere desideratum' (Burroughs Corp Application at 160). > > Consideration of the Burroughs decision as referred to by the Full Federal Court provides additional and useful context to this statement - and, in particular, to the concepts of 'mere' methods/ideas/desiderata and the comment that there must be 'something more' than this. > > d. In Burroughs, Graham and Whitford JJ provide the following comments concerning the word 'mere' (emphasis added): > > Mr. Aldous' argument, that the claim was unpatentable because the only result of it was intellectual information, has been mentioned above, and in support of it he cited a number of cases, often referred to as those 'for schemes or plans', where patents have in the past been refused. We will deal with a number of these cases. Ward's Application [1912] 29 R.P.C. 79 was for a method of indexing. In refusing the application Sir John Simon, S.G., said '. . . you may rightly patent that which, when the invention is applied, produces an article of manufacture, the novelty of which consists in the manufacture, on the other hand you cannot of course patent an idea or scheme or a mere method'. The emphasis, however, to our mind must be on the word 'mere' which excludes the case where the example of the method as embodied in practice is also adequately disclosed and described. The word 'mere' in the above quotation should we think equally be applied to the examples 'idea' and 'scheme'. > > e. With respect to the requirement that an invention must be 'more than' a mere method/idea/desideratum, Burroughs is again relevant (emphasis added): > > It is plain that the question of patentability must in every case be considered on the facts before a conclusion can be reached as to whether the claim covers a mere idea or method, or is more than that and results in fact in some improved or modified apparatus, or an old apparatus operating in a novel way, with consequent economic importance or advantages in the field of the useful as opposed to the fine arts. > > f. It is submitted that the claimed method is clearly 'embodied in practice' and 'adequately described and disclosed'. Following the rationale in Burroughs, therefore, the invention cannot be considered a 'mere' scheme (or a 'mere' idea, or 'mere' intellectual information, or 'mere' working directions). Furthermore, the claimed invention does result in 'some improved or modified apparatus, or an old apparatus operating in a novel way' and the invention has 'consequent economic importance or advantages in the field of the useful as opposed to the fine arts'." (emphasis in original, references to footnotes removed)

2. I tend to agree with the Applicant that the invention as claimed (or as described for that matter) is, as matter of form, more than an abstract idea, a mere scheme or mere intellectual information. The analysing of the content of the source design to provide for metadata for that content that is then used to identify a suitable destination/template deck, and for the source content to be transferred to the destination/template design, this being performed by computer, apparently elevates the claimed invention to something more than an abstract idea, mere scheme or mere intellectual information. It is not as though the claimed invention is just a thought bubble in someone's mind, instructions for a juggling routine or characters on a billboard.
3. However, it does seem that a consequence of the Applicant's submissions here is that anything which avoids the prohibition on abstract ideas, mere schemes or mere intellectual information as a matter of form must necessarily be for a manner of manufacture. That cannot be correct. Their honours in Grant could hardly be taken as adverting that anything which is more than an abstract idea, mere scheme or mere intellectual information must be patentable. In this regard, the discussion of Burroughs in Grant was in the context of Mr Grant's asset protection scheme which was entirely disembodied from any technology, and which predated, not least because it did not require, any consideration of the notion of substance of the invention concerned as established by subsequent jurisprudence. Mr Grant's invention was a mere scheme as that concept had been well understood by the authorities for quite some time and their honours needed to go no further.
4. Similar may be said for Burroughs itself. The fact that there may be something that is new or improved with economic importance is simply insufficient to necessarily confer patentability. To consider otherwise would be to reduce questions of patentability to little more than an assessment of novelty and inventive step, whether the invention is vendible and whether the invention is within the fine arts per se. Such an approach is to simply ignore the requirements from Myriad and the Full Court authorities that the question is one of substance.
5. In summary, while I agree that the claimed invention appears to be, as a matter of form, more than an abstract idea, mere scheme or mere intellectual information, I cannot agree that this means it must be for a manner of manufacture. This is particularly so where other considerations as discussed above strongly indicate that the claimed invention is in substance a scheme.

Does the application of the method produce a practical and useful result?

1. The Applicant addresses this consideration at [86] of the 529 submissions, reproduced below:

"Another Aristocrat Factor raises the question of 'does the application of the method produce a practical and useful result'. In this regard: > > a. It is submitted that any application of the invention as claimed produces a practical and useful result: namely, the generation of (at least) one new design based on a source design."

2. I agree that the claimed invention produces a practical and useful result. However, as for the discussion above concerning abstract ideas, mere schemes and mere intellectual information, it is not necessarily sufficient to point to a practical and useful result as evidence that an invention is for a manner of manufacture. In this regard I refer to what was said in GPO at [145] and references therein.
3. In summary, while I agree that the claimed invention provides for a practical and useful effect, I cannot agree that this means it must be for a manner of manufacture. This is particularly so, where other considerations as discussed above strongly indicate that the claimed invention is in substance a scheme.

Does the invention lie in the generation, presentation or arrangement of intellectual information?

1. The Applicant provides submissions on this consideration at [88] of the 529 submissions, reproduced below:

"Another Aristocrat Factor raises the question of 'does the invention lie in the generation, presentation or arrangement of intellectual information'. In this regard: > > a. Firstly, it is submitted that a 'design' as generated by the claimed invention is not 'intellectual information' as contemplated in this Aristocrat Factor. > > b. Secondly, the invention does not lie in the generation, presentation or arrangement of intellectual information - it concerns the transfer of content from one design (previously generated) to a new design, based on a destination design (previously generated). The invention lies in a tool for generating a new design, not in design generation per se. > > c. Moreover, it is submitted that the real consideration of this Aristocrat Factor is 'does the invention lie solely in the generation, presentation or arrangement of intellectual information'. In the present case this is clearly not the case (with the claimed invention relating to a particular set of operations that are performed in order to process a source design to generate analysis data and then use that analysis data to identify a destination design and generate a new design based thereon). (emphasis in original)

2. With respect to [88]a, it is hard to see how a generated design per se, as outlined in the claim is not mere intellectual information. That is precisely what designs do - they present intellectual information. However, I can accept, in line with my discussion above at [157] et seq, that the claimed invention does not lie in the mere generation, presentation or arrangement of intellectual information, even if it appears to come perilously close to doing so. While the source and deck designs merely comprise a presentation or arrangement of intellectual information, the claim also comprises steps of analysing the source design to generate data that is then used to identify a suitable destination/template deck and to transfer the content from the source design to the destination/template deck.
3. It is not clear to me on what basis the Applicant inserts "solely" into the consideration as per [88]c of the 529 submissions. It is also the case that it is not overly clear what material difference would result from this inclusion. If the invention comprises something more than the generation, presentation or arrangement of intellectual information, then it seems likely that the invention cannot be said to lie in the generation, presentation or arrangement of intellectual information, but, as noted above, this is not necessarily sufficient to provide for patentability. In every case the question is one of substance, and even if an invention is not merely the generation, presentation or arrangement of intellectual information, this does not mean it must be for a manner of manufacture. As discussed above, there are other considerations which strongly suggest that the substance of the invention is not patentable.

Is there ingenuity in the way the computer is utilised?

1. The Applicant provided submissions on this consideration at [89] of the 529 submissions, when discussing "does the invention solve a technical problem within the computer or outside the computer" and "does the method merely require generic computer implementation". These submissions have been addressed earlier in this decision at [133] et seq. Although the Applicant submitted that this consideration was not applicable, I fail to see how this is the case. It should be apparent from the above discussion that I do not see there being any ingenuity in the way the computer is utilised - it is simply used for its inherent capabilities to analyse, process and generate data.

What is the substance of the invention in claim 1 and is this patentable?

1. On weighing up the above considerations, these suggest that the substance does not reside in any technical features present in the claim, nor in any working interrelationship between these or others features that provide for a patentable effect. In general terms, the substance of the claimed invention resides in a scheme for processing a source design to generate data concerning the content of the source design, using this data to identify a destination/template deck and creating a new deck design using the source design, the destination/deck design and the generated data concerning the content of the source design. This may be more specifically expressed as including the elements outlined at [77] of the 529 submissions or as outlined at [124] above, but neither of these expressions of the substance changes the character of the invention as claimed - these both still represent unpatentable schemes.
2. The Applicant states at [90] of the 529 submissions that:

"As discussed above, when the substance of the claimed invention is properly considered it is submitted that a number of relevant Aristocrat Factors are answered in the affirmative. While the Aristocrat Factors are not exhaustive it is submitted that this does point to the claimed invention being a manner of manufacture."

It should be apparent from my discussion of the considerations from Rokt Pte Ltd and of the Applicant's submissions on the Aristocrat Factors that I cannot agree with the Applicant's suggestion that the claim is for a manner of manufacture. As discussed, the mere fact that some considerations may point towards patentability, such as there being a practical and useful effect, does not mean that invention must be for a manner of manufacture. Other considerations clearly indicate that there is no technical improvement, technical solution or technical problem solved as a consequence of the claim, with the computer technology being used for its well-known functions to analyse, process and generate data.

1. The Applicant has also provided some arguments, from [91] to [106] of the 529 submissions concerning the alleged similarity (or not) of the claim to certain other inventions or example inventions. These include a modified example from the Manual ([99] to [106]) and GPO and Apple (in response to, and disagreeing with, the Examiner's contentions that the claim is similar to the invention of those cases). Whilst it can be conceptually helpful to ascertain whether a claim in question is more (or less) like certain other example or real cases, the correct approach is to assess a claimed invention as a matter of substance based on the factual circumstances concerned. Such analysis, properly undertaken, cannot be defeated by drawing analogies to other matters, whether in the case law or as a thought experiment. Where Applicants or Examiners draw tenuous analogies to real or example inventions to buttress their position, this, in my view, tends to obscure rather than assist proper analysis.
2. Having said that, whilst I tend not to agree with the Examiner's assertion from the third report that the 529 claims are "very similar in nature" to those of GPO and Apple, at a conceptual level the Examiner is, in my view, entirely correct. Both GPO and Apple, while relating to different subject matter to each other and to the 529 application, concerned steps, instructions or rules that are taken or used to organise or arrange objects or things in a certain way. In GPO, as noted at [184], the invention concerned:

"...the autonomous allocation of objects to an area at a defined time that are subject to requests, with the allocation of the objects being undertaken iteratively, when new requests are received, subject to dimensional constraints of the objects and the area and request constraints, thereby enabling, at least, efficient allocation of the objects at the defined time or according to a desired outcome or strategy"

In Apple, as noted at [150], the invention concerned:

"a set of logical rules, utilised to produce software in unspecified manner employing known user interaction techniques, including the well-known and well-understood transitional feature of a pinch gesture, the software to run on well-known electronic computing devices having touch-sensitive surfaces, the software having functionality for:

• organising a collection of media items into a hierarchy of at least two granularity levels, each corresponding to a different timescale;
• displaying a plurality of representations of media items corresponding to one of the granularity levels, the representations grouped into a plurality of groups, each corresponding to the timescale of the granularity level; and
• in response to receiving an appropriate user input via a touch-sensitive surface, displaying another plurality of representations of media items corresponding to another of the granularity levels, the representations grouped into a plurality of groups each corresponding to the timescale of the granularity level.

Noting that the latter timescale is longer than the former, and the latter plurality of representations of media items is more numerous than the former."

1. In my view it is quite clear that claim 1 of the 529 application is for a set of steps, rules or instructions that are followed to analyse source content from a source design and use data obtained from that analysis to select an appropriate destination/template deck design, and then to transfer the source content into the destination/template deck design.
2. The Applicant's arguments at [99] to [106] of the 529 submissions concentrates on demonstrating how the 529 invention is different to the inventions in GPO and Apple. Whilst I tend to agree with these submissions by the Applicant, they do in no way in no way provide sufficient reasons establishing that the 529 invention is for a manner of manufacture.
3. The submissions at [91] to [98] provide some arguments as to why the substance of the invention is patentable, but these go no further than arguing that the substance of the claim includes the way a new design is generated from the source design, and thereby the claim is not for a mere scheme. As per the previous discussion in this decision, I have no fundamental disagreement with what the Applicant identifies as the substance of the invention. However, it should be apparent that I am of the view that the "way" the new design is created, even if comprising a number of steps, is, in substance, a scheme.

Are any of the 529 dependent claims for a manner of manufacture?

1. I have also considered each of the dependent claims. These comprise additional features that amount to adding additional steps to the scheme of claim 1 or other dependent claims, or in specifying the nature of certain elements that form part of the scheme:
   • claim 2: that the first source design content includes first and second separable content items, the first source design analysis object corresponds to the first separable content item and the first target identifier attribute identifies the first source design element and the first separable content item (for example if a shape defines a plurality of fills in generating the analysis objects at step 508 of figure 5, with the first fill commensurate with the first separable content; see also [0192] to [0200] of the description);
   • claim 3: as per claim 2, where a second source design analysis object is generated in relation to the second separable content item, with the second source design analysis object including a second set of analysis object attributes that comprise a second target identifier that identifies the first source design element and the second separable content item (for example as per claim 2, with the second fill being commensurate with the second separable content item);
   • claim 4: as per claims 2 or 3, where the first source design element is a shape and the first and second separable content items are respectively first and second fills (see, for example, [0192] to [0200] of the description and step 508 of figure 5);
   • claim 5: as per claims 2 or 3, where the first source design element is text and the first and second separable content items are respectively first and second vertically delineated blocks of text (see, for example, [0192] to [0200], [0307], [0319], [0343] and [0344] of the description, step 508 of figure 5 and step 808 of figure 8);
   • claim 6: as per claims 1 to 5, where the first set of analysis object attributes includes a transfer content attribute, the first source design element is analysed to determine that the first source design content is to be transferred to the new design and assigning a transfer content attribute value indicating that the first source content is to be transferred (see, for example, the description at [0196] and [0214]) ;
   • claim 7: as per claims 1 to 6, where the first source design element is a text type element, the first source design content is text, the text has a text hierarchy level and the first set of analysis design object attributes includes a text hierarchy level attribute that records the text hierarchy of the text (see, for example, [0196], [0205] and [0223] of the description);
   • claim 8: as per claims 1 to 7, where the first source design element is a text type element, the first source design content is text, the first set of analysis object attributes includes a characters attribute and analysing the text content to calculate a characters value based on a number of characters of the text and recording the characters value using the characters attribute (see, for example, [0228] and [0229] of the description);
   • claim 9: as per claims 1 to 8, where the first source design element is a text type element, the first source design content is text, the first set of analysis object attributes includes a lines attribute and analysing the text content to calculate a lines value indicating the vertical space occupied by the text and recording the lines value using the lines attribute (see, for example, [0225] to [0227] of the description);
   • claim 10: as per claims 1 to 9, where the first set of analysis object attributes includes a fill role attribute, and the first source design element is analysed to determine if a fill of the first source design element is:
     • a partial fill with one or more transparent regions; or
     • a complete fill with no transparent regions;

and, where the fill comprises a partial fill, assigning a fill role attribute indicating that the first design element is a partial type fill (see, for example, the description at [0232]);

• claim 11: as per claims 1 to 10, where the source design is a deck format design with one or more pages, the first set of source design elements corresponds to the first page and each source design element of the first set of source design elements defines a position at which the source design element is positioned on the first page (see, for example, [0066], [0067], [0081] and [0084] of the description);
• claim 12: as per claim 11, where the processing of the first source design elements to generate source design analysis data includes generating a PK for the first page, the PK including PK values that provide a first measure of the type and amount of content defined by the first set of source design elements (see, for example, [0186] and [0239] of the description and figure 5 item 512);
• claim 13: as per claim 12, where the PK includes generating one or more PK values selected from a group including:
  • a PK texts value that indicates a number of text type elements in the first set of source design elements;
  • a PK fills value that indicates fill content defined by the first set of source design elements;
  • a PK charts value that indicates a number of charts defined by the first set of source design elements; and
  • a PK tables value that indicates a number of tables defined by the first set of source design elements (see, for example, the description at [0240] to [0244]);
• claim 14: as per claims 11 to 13, where processing the first source design elements to generate source design analysis data includes generating a PV, the PV including PV values that provide a second measure of the type and amount of content defined by the first set of source design elements (see, for example, [0186] and [0247] of the description and figure 5, item 514);
• claim 15: as per claim 14, where generating the PV includes generating a set of one or more PV characters values, and where a first page PV characters value is associated with a first text hierarchy and is based on a number of text characters in the first set of source design elements at that first text hierarchy (see, for example, [0250] and [0251] of the description);
• claim 16: as per claims 14 or 15, where generating the PV includes generating a set of one or more PV lines values and where a first page PV lines value is associated with a first text hierarchy and is based on a number of lines of text in the first set of source design elements at that first text hierarchy (see, for example, [0250] of the description);
• claim 17: as per claims 14 to 16, where generating the PV includes generating PV values selected from the group including:
  • a fills aspect ratio value based on the aspect ratios of fills in the first set of source design elements;
  • a partial fills value based on the number of partial fills in the first set of source design elements;
  • a complete fills value based on the number of complete fills in the first set of source design elements;
  • a charts aspect ratio value based on the aspect ratios of charts in the first set of source design elements; and
  • a tables aspect ratio value based on the aspect ratios of tables in the first set of source design elements (see, for example, [0248] and [0255] to [0260] of the description);
• claim 18: as per claims 11 to 17, where processing the first source design elements to generate source design analysis data includes generating a set of CM values for the first set of source design elements, the CM values providing a third measure of the type and amount of content defined by the first set of source design elements (see, for example [0186] and [0358] of the description, and figure 5, item 516);
• claim 19: as per claim 18, where generating the CM values includes generating one or more such values from a group including:
  • a CM characters value based on the number of characters defined by the first set of source design elements;
  • a CM lines value based on the number of lines of text defined by the first set of source design elements;
  • a CM fills value based on the number of lines of fills defined by the first set of source design elements;
  • a CM tables value based on the number of tables defined by the first set of source design elements; and
  • a CM charts value based on the number of charts defined by the first set of source design elements (see, for example, [0263] and [0359] of the description);
• claim 20: as per claims 1 to 10, where the source design is a document format design, the first set of source design elements is an ordered sequence of elements and each source element's display position is based on its position in the ordered sequence (see, for example, [0070], [0102], [0302] and [0332] of the description);
• claim 21: a computing system with computer readable instructions that when executed by the computer cause it to perform a method as per claims 1 to 20; and
• claim 22: storage media comprising instructions that cause a computer to perform a method as per claims 1 to 20.

1. I do not see anything in the additional features provided by claims 2 to 22 that materially varies the substance of claim 1. These simply add additional steps further specifying how source content of the source design is to be transferred to the destination design or further outline or define elements used as part of those further steps. These do not provide for any material advantage that would confer patentability. It follows that none of the dependent claims are for a manner of manufacture.

Do the claims of the 538 application comprise a manner of manufacture?

1. I will initially consider this question with regard to independent claim 1 and will further consider the dependent claims as appropriate.

1. It is perhaps trite, but the fundamental question I need to answer is what does the claimed invention comprise as a matter of substance? I will now consider whether the claimed invention is patentable by recourse to the considerations at [189] of Rokt Pte Ltd. I will also consider, where appropriate, the Applicant's submissions regarding these factors. References to the "claim" in the following discussion means claim 1.
2. Where reasonable to do so, I have tried to address the Applicant's submissions as relevant for each of the factors I have outlined below, even where the Applicant has discussed these in connection with a different factor, noting, as observed above, that the considerations from Rokt Pte Ltd are not identical to those from Aristocrat.
3. As discussed in connection with the 529 submissions, there is an affinity between the relevant factors of the Manual on the one hand, and the Aristocrat Factors and the considerations from Rokt Pte Ltd on the other, and my comments on this regarding the 529 submissions may be taken to equally apply here. Similarly, as for the 529 submissions, I do not intend to directly consider each of the relevant factors posed by the Applicant in determining the substance at [60] to [64] of the 538 submissions, although I may discuss aspects of these during my considerations where I consider this appropriate.

Is the contribution to the claimed invention technical in nature?

1. To assess this requires an understanding of the technical features of the invention, both individually and collectively, and the effect of carrying out the invention.
2. There are clearly some individual features encompassed within each of the integers of the claim as identified above, that are either technical in nature or make use of technical features. The claim comprises a computer of some kind by virtue of being a computer implemented method. Most of the various sub-elements within the claim make use of computer technology, in that there is:
   • calculating an ideal fill size for each source fill;
   • calculating a remaining capacity for each destination frame; and
   • mapping source fills to destination frames by;
     • selecting the frame with the largest ideal fill size that has not yet been mapped to a destination frame;
     • determining the frame with the largest remaining capacity value;
     • mapping the source fill to the frame with the largest remaining capacity value; and
     • subtracting the ideal fill size of the source fill from the destination frame's remaining capacity to update the remaining capacity of the destination frame;
   • processing of data to generate further data (e.g. processing the first set of source design elements to generate source design analysis data).
3. However, the computerised systems or device(s), are not specified in any way in the claim. Selection of these, and the creation of any software to achieve the claimed invention, is entirely up to the skilled addressee, who may utilise any such device or devices as known in the art using any suitable arrangement of these that may be devised by the skilled addressee in carrying out the claim. Similarly, the actions performed using the computerised device(s) simply relate to the identification, reading, processing and generation of data using the capabilities of computer systems as known in the art, particularly in view of the entirely non-descript nature of the computerised devices as defined in the claim. I therefore take it that performing the actions concerned within the claim merely extends to the use of computer technology as well known in the art. Consequently, to the extent there are individual technical features in, or made use of by, the claim, these merely extend to "...computer technology that is utilised for its basic, typical or well-known functions" (Rokt at [89]), and do not provide in substance a technical contribution to the invention.
4. It is now necessary to consider whether the claim as a whole or several sub features of the claim otherwise interact to provide a technical contribution. That is, in the words of Aristocrat 22, is there an "...adaptation or alteration of, or an addition to, technology otherwise well-known in the common general knowledge to accommodate the exigencies of a new idea or plan or game". The actual steps per se of the claim, when considered as a whole, may be broadly understood to map a set of source fills to a set of destination frames where the number of source fills exceeds the number of destination frames via the steps outlined above at [182].
5. It is quite clear that the invention as claimed resides in an algorithm that maps source fills to destination frames, where the fact the source fills outnumber the destination frames is remedied by calculating an ideal fill size for each of the source fills, calculating the capacities of the destination frames, mapping the source fills to destination frames in order of largest to smallest ideal fill size and into the destination frame with the largest remaining capacity, and thereafter updating the remaining capacity of the destination frame concerned. I note that while the claim notionally deals with the excess of source fills over destination frames via calculating an "ideal size" for each source fill, it is not entirely clear within the terms of the claim exactly what an "ideal size" is or how it is determined - these details are left to the imagination of the skilled addressee. Nor for that matter is it clear how the use of the "ideal size" necessarily overcomes the fact that there are more source fills than destination frames.
6. Putting this aside, and in view of the discussion of method 2200 earlier in this decision, it does seem that the "ideal size" may be taken to relate to some means of scaling the source fills so they may be all mapped into the smaller number of destination frames available. Based on this, the invention as both described and claimed may be understood to comprise an algorithm that maps source fills to destination frames, where the fact the source fills outnumber the destination frames is remedied by scaling each of the source fills (calculating an ideal fill size), calculating the capacities of the destination frames, then mapping the scaled source fills to destination frames in order of largest to smallest scaled size by transferring the fill into the destination frame with the largest remaining capacity first and then updating the capacity of the destination frame concerned. Whilst there is technology present in the claim as discussed above, it is not apparent that there is anything about the method of claim 1 that is technical in nature as such, as opposed to simply using the well-known capabilities of computers to read, process and generate data. It is also the case that, even on this assessment of what the claim defines, the calculations are still left up to the skilled addressee.
7. The Applicant discussed an essentially identical Aristocrat Factor at [74] of the 538 submissions. This paragraph is reproduced below:

"Another Aristocrat Factor raises the question of 'is the contribution of the claimed invention technical in nature'. In this regard: > > a. Given the context of the claimed invention - namely processing and manipulating designs, where the manipulating is by the computer itself, not as a mere intermediary for a person (e.g. as may be the case if the claims were to a 'wizard') - we submit that the contribution of the claimed invention is technical in nature. > > b. Furthermore, the invention addresses a particular problem faced by the computer, which does not possess creativity to deal with such problems - what to do when the number of source fills exceeds the number of destination frames. The solution involves the application of mathematical algorithms, further confirming the technical nature of the invention."

8. Very similar, if not identical submissions were provided at [84]a and [84]b of the 529 submissions, so, unsurprisingly, my consideration of the above submissions is rather similar to those given with respect to the 529 submissions.
9. In this regard, in relation to the argument at [74]a, I fail to see how the scaling and mapping of source fills to destination frames in order of source fill size and destination frame capacity (where the capacities of the destination frames are calculated), with updating of the destination frame capacity, elevates the computer to something other than an intermediary for a person. As discussed above, the computer technology present in the claim is non-descript and is present at no higher level than the well-known functionality in processing and generating data that computers provide. The fact that the invention does not define a "wizard" as such, or potentially involves the processing of designs, does not detract from the fact that it is for no more than an algorithm for mapping of source fills to destination frames in order of source fill size and destination frame capacity, with updating of the destination frame capacity as discussed above.
10. With regard to item [74]b, the problem outlined is not, per se, a technical problem. Nor is the "relevant problem" outlined at [60]a of the 538 submissions. Although it is possible that a technical problem might be overcome in solving such problems, no such problems are apparent in the specification and if there are any technical problems in actually implementing the invention, these are not disclosed in the specification. Nor is it apparent that, in substance, any technical solution has been provided by the invention in solving these or any other problem. The claimed invention is simply a series of steps to be followed as part of mapping a set of source fills that outnumber a set of destination frames by scaling the source fills and mapping the source fills in order of largest to smallest source fills into the destination frame with the largest calculated capacity, with the destination frame capacity being updated. How the computer system is configured to achieve the invention, in terms of hardware and software, is entirely left up to the skilled addressee. It is not otherwise apparent how a set of steps to generate a scale and map source fills into a smaller number of destination frames by size into the largest available destination frame and updating the capacity of that frame solves any technical problem at all.
11. I do not consider that the invention of the claim comprises a contribution that is technical in nature.

Does the invention solve a "technical" problem within the computer or outside the computer?

1. It is not apparent that the claim solves a technical problem within or without the computerised apparatus or systems concerned. Merely providing the function of scaling a number of source fills so that they can fit into a smaller number of destination frames and where the mapping order is based on the sizes of the source and destination frames with updating of the capacity of the destination frame concerned is not addressing any technical difficulty as such. Rather, it appears to simply be a manner, in terms of following a set of steps or instructions, of arranging the source fills so they fit into the destination frames. As discussed above, I remain unconvinced that the claim comprises anything of a technical nature, other than the use of computer technology as such. Nothing within the claim appears to address or overcome any technical difficulties.
2. The Applicant has provided some consideration of the problems addressed by the invention, as apparent from my discussion above at [187] et seq above. As noted there, I do not consider these to be technical problems as such.
3. There is also some mention of problems said to be addressed by the 538 application at [60] and [64] of the 538 submissions. These refer to a user wishing to use an existing design as the basis for a new design (at [60]) and a user wishing to transfer a number of source fills that exceeds the number of destination frames (at [64]). I do not consider that either of these are technical problems as such.
4. The corresponding Aristocrat Factor was discussed, amongst other considerations, at [79] of the 538 submissions:

"Several other Aristocrat Factors are discussed (and arise in the context of) Research Affiliates. These include the questions of: 'does the invention solve a technical problem within the computer or outside the computer' (discussed in the context of European and UK law); 'does the method merely require generic computer implementation' (discussed in the context of US law); 'can it be broadly described as an improvement in computer technology'; and 'is there ingenuity in the way in which the computer is utilised'. With respect to these Aristocrat Factors: > > a. In the opening paragraph of Research Affiliates the Full Federal Court identified that the question being addressed in that case was 'whether computer implementation of an otherwise unpatentable business scheme is sufficient to make the claimed method properly the subject of letters patent' (emphasis added). > > b. Indeed, and as set out at paragraph 82 of Research Affiliates, this question mirrors the question that was asked by the Commissioner of Patents: Is that sufficient? As the Commissioner puts it: is an 'invention' which is in the nature of a business, commercial or financial scheme rendered patentable 'merely' by reason of the fact that it is implemented by means of a computer? > > c. Accordingly, the inquiries raised by these particular Aristocrat Factors may be apt for an invention that is identified (as a matter of substance) to be the computer implementation of an otherwise unpatentable 'business', 'commercial' or 'financial' scheme. > > d. The substance of the present invention is not, however, computer implementation of an otherwise unpatentable business/financial/commercial scheme. Given this, it is submitted that these particular Aristocrat Factors are neither useful nor relevant to determining whether the present invention is a manner of manufacture. > > e. Even if the Hearing Officer disagrees with this, it is again noted that the Aristocrat Factors are not exhaustive. Furthermore, even if the Aristocrat Factors do apply the requirement is not - and cannot be - a requirement that each and every one of the Aristocrat Factors is satisfied. Instead, it is submitted that if an invention satisfies even one of the Aristocrat Factors this should point towards that invention being a manner of manufacture." (emphasis in original, references to footnotes removed)

5. These submissions are identical to those at [89] of the 529 submissions. My comments concerning [89] of the 529 submissions at [133] et seq apply equally here.

Is there an improvement in the functioning of the computer, irrespective of the data being processed?

1. I cannot ascertain any improvement in the functioning of any of the computerised features used within the claim, irrespective of the data being processed. As discussed above, the computerised features present in the claim are merely used for their standard or known abilities to identify, process, read and generate data. Any improvement, to the extent one can be identified, appears to reside in the fact that the claimed invention (once put into practice via a suitable computer program, with such programming left entirely up to the skilled addressee) is in the automatic scaling/resizing of a number of source fills so that they can be fit into a smaller number of destination frames, with the order of mapping of source fills to destination frames proceeds from the largest to smallest source fill into the largest (calculated) capacity destination frame available, and with the capacity of the destination frame concerned then being updated.
2. The Applicant discussed an essentially identical Aristocrat Factor at [75] of the 538 submissions, which is reproduced below:

"Another Aristocrat Factor raises the question of 'does the invention result in improvement in the functioning of the computer, irrespective of the data being processed'. In this regard: > > a. Yes, the present invention operates to provide a useful tool for a design application, irrespective of the source design and irrespective of the destination frames. Instead, the invention functions based on physical parameters represented by the data, such as fill size and capacity." (emphasis in original)

3. I fail to see how the claimed invention improves the function of the computer as such. It is quite clear that any generic computer system may be used to perform the invention, with the details of that implementation in both hardware and software being entirely left to the skilled addressee. It is hard to see how the mere use of such generic technology for its well-known and understood capabilities can be understood to comprise an improvement in computer technology as such. If the invention as it stands provides some technical benefit or improvement to computer technology, for example in terms of being able to create designs irrespective of the number of source fills and the destination frames which could not previously be achieved with computer technology, then this does not emerge from the claim as it stands or from reading the specification. Rather, the ability to process and generate data within the bounds of the claim appears to extend from the processing abilities of computers as known in the art.
4. The fact that the invention provides a "useful tool" is relevant to considerations of patentability and will be discussed further below. However, the notion of "usefulness" does not necessarily answer questions regarding whether there has been any improvement in the functioning of the computer as such.
5. Similarly, to the extent that fill size and frame capacity can be considered "physical parameters", the fact a claim comprises "physical parameters" does not necessarily make it for a manner of manufacture. While I am cognisant of my own words above concerning analogies, one can easily draw a physical analogue to the present invention based on arranging books on shelves, where the total volume taken up by your books exceeds the (known/calculated) capacity of your shelves, so to remedy the situation you replace your existing book set with scaled/smaller versions of the same and then fill your bookshelves in order of the size of the books starting with the shelf with the largest capacity, and then updating the capacity of the shelf concerned. Such a process for simply arranging items has never been held to be patentable.
6. As apparent from [195] et seq above, the Applicant also included "can it be broadly described as an improvement in computer technology" at [79] of the 538 submissions. This consideration is relevant to the present consideration from Rokt Pte Ltd, and I refer to my comments on [89] of the 529 submissions at [133] et seq above. Whilst the Applicant has not provided any comment on this Aristocrat Factor, it should be apparent that I do not consider that the claim comprises any improvement in computer technology.

Does the invention require merely "generic computer implementation", as distinct from steps which are "foreign" to the normal use of computers?

1. For reasons as discussed above, it is quite clear that all the computerised features of the claimed invention are being used in a generic sense in that use is merely made of the well-known functions and abilities of the same, or of techniques that are well known to be used in reading, processing or generating data in a computerised system. There is nothing in the use of any of the computerised features which is foreign to the normal use of computers.
2. The Applicant provided submissions on a related Aristocrat Factor at [77] of the 538 submissions, reproduced below:

"Another Aristocrat Factor raises the question of 'does the invention involve steps that are foreign to the normal use of computers'. In this regard: > > a. This Aristocrat factor arises out of IBM. In IBM Burchett J found that 'application of [a] selected mathematical methods to computers, and in particular, to the production of the desired curve by computer' did involve steps that were 'foreign to the normal user of computers'. > > b. For similar reasons, it is submitted that the operations of the present invention (which include a specific algorithm with specific mathematical calculations) do 'involve steps that are foreign to the normal user of computers'." (references to footnotes removed)

3. I have already discussed above, in connection with the 529 submissions, how IBM involved steps that are foreign to the normal use of computers. It is not clear to me how merely using non-descript computer technology for its well-known abilities to analyse, process and generate data in any way comprises something that is foreign to the normal use of computers. Carrying out the algorithm simply involves, as noted above, the rescaling of a number of source fills so that they can fit into a smaller number of destination frames, filling in order of source fill size into the largest (calculated) capacity destination frame available and updating the capacity of the destination frame concerned. While the Applicant refers to "specific mathematical calculations" these do not appear in the claim. There is a determination/calculation of destination frame capacity and updating of destination frame capacity, but how this is achieved is left entirely up to the skilled addressee. As discussed above at [185] et seq, the "ideal fill size" is an even more nebulous term/value to be worked out by the skilled addressee and may be best appreciated as some means of scaling the source fill sizes so they may fit into the destination frames.
4. I note that the Applicant also addresses "does the method merely require generic computer implementation" at [79] of the 529 submissions. These submissions have already been discussed above at [133] et seq, and I refer to my comments there, noting that the Applicant did not directly comment on whether the method merely required generic computer implementation.

Is the computer merely an intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea?

1. For reasons as discussed above the computerised features are specified at only a generic level to merely facilitate the reading, identification, processing and generation of data so as to enable the mapping of a number of source fills into a smaller number of destination frames by resizing the source fills and where the mapping order proceeds on source fill size into the largest (calculated) capacity destination frame and updating of the destination frame capacity. That is, the computer technology is merely an intermediary facilitating the reading, processing and generation of data within the claim and adds nothing of substance to the same.
2. Although the Applicant did not address this consideration separately, some comments on the computer being more than an intermediary are present at [84] of the 538 submissions in the context of discussing "there must be more than an abstract idea, mere scheme or mere intellectual information". Paragraph [84] is reproduced below:

"In the hypothetical wizard example (and assuming there isn't 'something more' in the implementation), the computer is clearly an intermediary in the sense discussed in RPL Central. This is not, however, analogous to the present invention. The present invention does not guide a user through a process of mapping source fills to destination frames. Rather, the present invention provides a specific set of computer-implemented steps to automatically do this. It shifts the burden of determining how to map (and ultimately transfer) a set of source fills to a set of destination frames from a human operator into the computer. To achieve that, the invention involves a new and practical use of an algorithm to result in a commercially useful effect in computer graphics or in computer applications for generating designs." (references to footnotes removed)

3. I will consider whether there is a useful and practical effect later in this decision. In terms of the computer being an intermediary, I cannot agree with the Applicant's characterisation at [84]. The fact that a method may provide specific computer implemented steps to automatically map fills as per the claim in no way answers the question of whether the computer concerned is acting as nothing more than an intermediary. Indeed, the Applicant's submissions here, if anything, reinforce the impression that the computer is simply being used for its well-known abilities to process data so as to automate the transfer of source fills into destination frames as per the claim. That is, it is apparent that the computer is nothing more than an intermediary in performing the claim_._
4. Similar arguments were made at [74]a of the 538 submissions. These are cited and discussed above at [187] et seq above, and I refer to the comments made there in connection with the computer merely being an intermediary.

1. Beyond the submissions put by the Applicant discussed above in connection with the factors from Rokt Pte Ltd, the Applicant also provided submissions on other Aristocrat Factors, including:
   • "there must be more than an abstract idea, mere scheme or mere intellectual information";
   • "does the application of the method produce a practical and useful result";
   • "does the invention lie in the generation, presentation or arrangement of intellectual information"; and
   • "is there ingenuity in the way the computer is utilised".

For completeness, I will consider each of these considerations below.

There must be more than an abstract idea, mere scheme or mere intellectual information

1. The Applicant discusses this at [73] of the 538 submissions:

"One of the Aristocrat Factors is that 'there must be more than an abstract idea, mere scheme or mere intellectual information'. In this regard:

a. It is submitted there is clearly more than an abstract idea, mere scheme, or mere intellectual information.

b. In Grant, the Full Federal Court discussed 'schemes' as follows: 'It has long been accepted that 'intellectual information', a mathematical algorithm, mere working directions and a scheme without effect are not patentable.'

(This quote is referred to in section 5.6.8.8 of the Manual.)

c. While the claimed invention includes a mathematical component (see paragraphs 66-67 above), the invention cannot be considered unpatentable subject matter because of this. In this regard, Section 5.6.8.8 of the Manual provides the following:

For example, in the matter International Business Machines Corporation v Commissioner of Patents (1991) FCA 625 the Court, in considering a method for producing an improved (that is, smoother) visual representation of a curve, found (at paragraph 16) that:

'In the present case, it seems to me that the use of the algorithm is not different conceptually from the use of the compounds involved in National Research and Development Council. Just as those compounds were previously known, so here, it is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers, and in particular, to the production of the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers ....'

The distinction to be drawn is between a claim to an algorithm (or scientific principle or natural phenomenon) in the abstract sense and the application of the formula to a process such that it produces 'some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art'.

d. While the claimed invention may be considered to involve 'mathematical methods', we submit the claimed invention is clearly directed to the 'application of the selected mathematical methods to computers' (per IBM). The claim is not directed to an algorithm in the abstract sense and produces a practical and material advantage." (references to footnotes removed)

1. I tend to agree with the Applicant that the invention as claimed (or as described for that matter) is, as matter of form, more than an abstract idea, a mere scheme or mere intellectual information. The scaling/resizing of the source fills, calculating of the destination frame capacities and the mapping of the source fills into destination frames based on size/capacity of the source fills/destination frames and updating of destination frame capacity being performed by computer elevates the claimed invention to something more than an abstract idea, mere scheme or mere intellectual information. It is not as though the claimed invention is just a thought bubble in someone's mind, instructions for a juggling routine or characters on a billboard.
2. However, it does seem that the Applicant is, in effect, submitting that anything which avoids the prohibition on abstract ideas, mere schemes or mere intellectual information as a matter of form must necessarily be for a manner of manufacture. That cannot be correct, for reasons as discussed earlier in this decision with respect to the 529 submissions at [158] et seq.
3. For reasons that should be apparent from the preceding discussion, I do not consider that the claimed invention leads to a material advantage in the sense of IBM. As per the discussion above at [185] and [186], the mathematical methods used in the claim are quite general in nature and it is essentially left to the skilled addressee to work out how they will implement these in performing the claim. The mathematical methods of the claim simply exist to facilitate the transfer or organisation of the source fills into a smaller number of destination frames. Such methods of organising or arranging objects, whether real or virtual do not provide for a material advantage as that phrase is understood in the authorities.
4. In summary, while I agree that the claimed invention is, as a matter of form, more than an abstract idea, mere scheme or mere intellectual information, I cannot agree that this means it must be for a manner of manufacture. This is particularly so, where other considerations as discussed above strongly indicate that the claimed invention is in substance a scheme.

Does the application of the method produce a practical and useful result?

1. The Applicant addresses this consideration at [76] of the 538 submissions, reproduced below:

"Another Aristocrat Factor raises the question of 'does the application of the method produce a practical and useful result'. In this regard: > > a. It is submitted that any application of the invention as claimed produces a practical and useful result: namely, the mapping of a set of source fills to a set of destination frames. As discussed above, this result has various uses in the context of a computer application for processing designs."

2. I agree that the claimed invention produces a practical and useful result. However, similarly as discussed in connection with the 529 submissions above at [161] et seq, it is not necessarily sufficient to point to a practical and useful result as evidence that an invention is for a manner of manufacture.
3. In summary, while I agree that the claimed invention provides for a practical and useful result, I cannot agree that this means it must be for a manner of manufacture. This is particularly so where other considerations as discussed above strongly indicate that the claimed invention is in substance a scheme.

Does the invention lie in the generation, presentation or arrangement of intellectual information?

1. The Applicant provides submissions on this consideration at [78] of the 538 submissions, reproduced below:

"Another Aristocrat Factor raises the question of 'does the invention lie in the generation, presentation or arrangement of intellectual information'. In this regard: > > a. The key words here are 'lie in'. Claim 1 is silent on the content and presentation or arrangement of the frames and fills in both the source and the destination. It cannot therefore 'lie in' this field. Furthermore, it is submitted that the real consideration here is 'does the invention lie solely in the generation, presentation or arrangement of intellectual information' - and in the present case this is clearly not the case (with the claimed invention relating to a particular process that involves application of a mathematical algorithm in order to map source fills to destination frames)." (emphasis in original)

2. I can accept, in line with my discussion above at [213], that the claimed invention does not lie in the mere generation, presentation or arrangement of intellectual information as such. While the source fills are mapped or arranged into the destination frames, the claim also comprises steps of finding the ideal size of the source fills, calculating capacities of the destination frames, using the ideal fill size to transfer the source fills in order of ideal size to the destination frame with the largest available capacity and updating the destination frame capacity.
3. As per my discussion in connection with the 529 submissions it is not clear to me on what basis the Applicant inserts "solely" into the consideration as per [78] of the 538 submissions, and I refer to comments above at [166].

Is there ingenuity in the way the computer is utilised?

1. The Applicant provided submissions on this consideration at [79] of the 538 submissions, amongst "does the invention solve a technical problem within the computer or outside the computer" and "does the method merely require generic computer implementation". These submissions have been addressed above at [195] et seq. Although the Applicant submitted that this consideration was not applicable, I fail to see how this is the case. It should be apparent from the above discussion that I do not see there as being any ingenuity in the way the computer is utilised - it is simply used for its inherent capabilities to analyse, process and generate data.

What is the substance of the invention in claim 1 and is this patentable?

1. On weighing up the above considerations, these suggest that the substance does not reside in any technical features present in the claim, nor in any working interrelationship between these or others features that provide for a patentable effect. In general terms, the substance of the claimed invention resides in a scheme for mapping source fills to destination frames by scaling a number of source fills so that they can fit into a smaller number of destination frames and where the mapping proceeds in order from largest to the smallest of the source fills and into the destination frame with the largest (calculated) capacity, with the capacity of that destination frame being updated. This may be more specifically expressed as including the elements outlined at [182] above, but neither of these expressions of the substance changes the character of the invention as claimed - these both still represent unpatentable schemes.
2. As noted earlier in this decision, the Applicant indicates elements that it considers form part of the substance and an "example" substance at [66] and [67] of the 538 submissions, reproduced below:

"66. Acknowledging, once again, that the specific identification of the substance of the invention may have many answers, it is submitted that the substance of the present invention clearly must: > > a. include reference to the practical result of a machine mapping source fills to destination frames, thereby allowing the transfer of fills to those frames; > > b. include reference to the algorithm and the calculations involved in the algorithm that are claimed and that lead to the practical result; and > > c. recognise that the invention is a component part of a machine or process that transfers a set of selected fills to a set of selected frames (in one context) and automatically creates a new design from a source design (in another context). > > 67. An example 'substance' of the invention, therefore, may be something like 'The use or application of a specific mathematical equation (the claim features relating to calculating an ideal fill size, calculating frame capacity, and updating frame capacity) in a practical manner (the claim features relating to mapping the source fills using the claimed selection and determination processes), to produce particular effects (the mapping of source fills to destination frames, thereby enabling various applications such as those described at 26 to 29 above, and including transferring source fills to destination frames, which is the subject of claim 15)'." (emphasis in original)

3. The only material difference between the Applicant's "example" substance and the one identified above at [224] relates to the Applicant's assertion of their being "a specific mathematical equation". However, I am of the view that this is a mischaracterisation of claim 1 (at least), because, as discussed earlier in this decision, no specific mathematical equation is actually identified or used in claim 1.
4. The Applicant states at [80] of the 538 submissions that:

"As discussed above, when the substance of the claimed invention is properly considered it is submitted that a number of relevant Aristocrat Factors are answered in the affirmative. While the Aristocrat Factors are not exhaustive it is submitted that this does point to the claimed invention being a manner of manufacture."

5. It should be apparent from my discussion of the considerations from Rokt Pte Ltd of the Applicant's submissions on the Aristocrat Factors that I cannot agree with the Applicant's suggestion that the claim is for a manner of manufacture. As discussed, the mere fact that some considerations may point towards patentability, such as there being a practical and useful effect, does not mean that invention must be for a manner of manufacture. Other considerations clearly indicate that there is no technical improvement, technical solution or technical problem solved as a consequence of the claim, with the computer technology being used for its well-known functions to analyse, process and generate data.
6. The Applicant has also provided some arguments, from [81] to [85] of the 538 submissions concerning the "line between patentable and unpatentable subject matter". The Applicant cites Justice Emmett in Research Affiliates LLC v Commissioner of Patents [2013] FCA 71; 300 ALR 724 at [16] before stating the following at [83] to [85] of the 538 submissions:

"83. Turning to the present matter, at one end of the scale are inventions which are not patentable, such as those that relate to purely artistic or literary endeavours or which are mere schemes. Methods of using a computer to arrange or rearrange contents in an artistic or literary way or which use a wizard approach that steps a user through a process may be unpatentable if there is not 'something more' in the specific implementation. At the other end of the scale, perhaps, is the invention of the graphics processing unit (GPU) and software to optimise the use of the GPU. There is an entire spectrum between these ends of the scale and the present task is to decide where on that scale the claimed invention lies. > > 84. In the hypothetical wizard example (and assuming there isn't 'something more' in the implementation), the computer is clearly an intermediary in the sense discussed in RPL Central. This is not, however, analogous to the present invention. The present invention does not guide a user through a process of mapping source fills to destination frames. Rather, the present invention provides a specific set of computer-implemented steps to automatically do this. It shifts the burden of determining how to map (and ultimately transfer) a set of source fills to a set of destination frames from a human operator into the computer. To achieve that, the invention involves a new and practical use of an algorithm to result in a commercially useful effect in computer graphics or in computer applications for generating designs. > > 85. The present invention is, therefore, an example patentable invention of the type contemplated by Justice Emmett." (emphasis in original, references to footnotes removed)

7. As noted earlier in this decision, the fact that the claimed invention is not a "wizard" in no way indicates that it must necessarily be for a manner of manufacture. Similarly, for reasons as already discussed (for example at [189] above), I am of the view that the computer only appears in the claim as an intermediary, used for its well-known abilities to process and generate data to facilitate automation of the transfer of source fills to destination frames as otherwise defined in the claim. As also explained earlier in this decision, simply providing a series of steps to transfer or arrange something (whether real or virtual), while practical and useful, does not provide for a material advantage as understood by the authorities.
8. Similarly, as for the 529 submissions, the 538 submissions at [86] to [92] provide some arguments as to why the substance of the invention is patentable, but these go no further than arguing that the substance of the claim includes the way the source fills are mapped to destination frames, and thereby the claim is not for a mere scheme. I have no fundamental disagreement with this general assessment of what the substance of the claimed invention is. However, it should be apparent that I am of the view that the way the source fills are mapped to destination frames, even if comprising a number of steps, is, in substance, a scheme.

Are Any of the Dependent Claims for a Manner of Manufacture?

1. I have also considered each of the dependent claims. These comprise additional features that amount to adding additional steps to claim 1 or other dependent claims, or in specifying the nature of certain elements that form part of claim 1:
   • claim 2: as per claim 1, where the ideal fill size for the first source fill is based on a size of the first source fill (see, for example, [0516] of the description and step 2208 of figure 22);
   • claim 3: as per claim 1, where the ideal fill size for the first source fill is based on a size of the first source fill, the total frame capacity value and a total fill size value (see, for example, [0516] of the description and step 2208 of figure 22);
   • claim 4: as per claim 3, where the total frame capacity value is the sum of the capacity values of the destination frame (see, for example, [0516] of the description and step 2208 of figure 22);
   • claim 5: as per claims 3 or 4, where the total source fill size value is the sum of the size values of the source fills (see, for example, [0516] of the description and step 2208 of figure 22);
   • claim 6: as per claims 3 to 5, where the ideal fill size for the first source fill is calculated as the first source fill's size multiplied by (the total frame capacity divided by the total source fill size) (see, for example, [0516] of the description and step 2208 of figure 22);
   • claim 7: as per claims 1 to 6, where the first destination frame is identified as having the largest remaining capacity, an unmapped second source fill is identified as having the largest ideal fill size and the second source fill is then mapped into the first destination frame in a similar manner as per claim 1 (see, for example, [0518] to [0522] description and 2212 to 2220 of figure 22);
   • claim 8: as per claims 1 to 6; where a second destination frame is identified as having the largest remaining capacity, an unmapped second source fill is identified as having the largest ideal fill size and the second source fill is then mapped into the second destination frame in a similar manner as per claim 1 (see, for example, [0518] to [0522] of the description and 2212 to 2220 of figure 22);
   • claim 9: as per claims 1 to 8, where a document format design is automatically processed to extract source fills from the document format design (see, for example, [0305], [0306], [0510], [0513] and [0822] of the description, steps 804 and 806 of figure 8, step 2204 of figure 22 and step 2904 of figure 29);
   • claim 10: as per claims 1 to 8, where a page of a deck format design is automatically processed to extract source fills from the page (see, for example, [0191], [0192], [0510], [0513] and [0821] of the description, step 508 of figure 5, step 2204 of figure 22 and step 2902 of figure 29);
   • claim 11: as per claims 1 to 8, where user input selects the source fills (see, for example, [0717], [0822] and [0824] of the description and step 2904 of figure 29);
   • claim 12: as per claims 1 to 11, where the destination frames correspond to an element of a deck format design page (see, for example, [0510] and [0818] of the description, noting that deck format designs may in general comprise frames);
   • claim 13: as per claims 1 to 12, where a page of a deck format design is automatically processed to determine the set of destination frames (see, for example, [0191], [0192], [0510], [0514] and [0821] of the description, step 508 of figure 5, step 2206 of figure 22 and step 2902 of figure 29);
   • claim 14: as per claims 1 to 12, where user input selects the destination frames (see, for example, [0717], [0821] and [0824] of the description and step 2902 of figure 29);
   • claim 15: as per claims 1 to 14, where the set of source fills is transferred to the destination frames (see, for example, [0829] of the description and step 2910 of figure 29);
   • claim 16: a computing system with computer readable instructions that when executed by the computer cause it to perform a method as per claims 1 to 15; and
   • claim 17: storage media comprising instructions that cause a computer to perform a method as per claims 1 to 15.
2. I do not see anything in the additional features provided by claims 2 to 17 that materially varies the substance of claim 1. These simply add additional steps further specifying how the source fills are to be transferred to the destination frames or further outline or define elements used as part of those further steps. In particular the fact that some of the dependent claims, for example claim 6, comprises certain mathematical expressions that are used to determine the ideal fill size in no way changes the substance of the invention - these reflect quite simple mathematical expressions to determine variables used as inputs in the scheme for mapping source fills to destination frames. The dependent claims do not provide for any material advantage that would confer patentability. It follows that none of the dependent claims are for a manner of manufacture.

1. None of the claims as defined in either of the 529 or 538 applications are for a manner of manufacture. Based on my consideration of the specification, it is not clear to me that there is any subject matter within the applications that could be made the subject of a claim that would be for a manner of manufacture. Nevertheless, in view of the considerable variety of various methods within the applications, each application may contain potentially patentable material. I consider it appropriate for the Applicant to be provided with an opportunity to attempt to craft patentable claims via further examination of the applications. Pursuant to Reg 13.4(3), the date to gain acceptance for each application has been reset to six (6) months from the date of this decision. The Applicant has this time to respond to attempt to gain acceptance of the applications in light of my decision.