BAILII [Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]

England and Wales High Court (Patents Court) Decisions


You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Cappellini & Bloomberg, Re [2007] EWHC 476 (Pat) (13 March 2007)
URL: http://www.bailii.org/ew/cases/EWHC/Patents/2007/476.html
Cite as: [2007] FSR 26, [2007] Info TLR 97, [2007] EWHC 476 (Pat)

[New search] [Printable RTF version] [Help]


Neutral Citation Number: [2007] EWHC 476 (Pat)
Case Nos: (1) CH/2006/APP/0487
(2) CH/2006/APP/0481

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

(2) CH/2006/APP/0481
Royal Courts of Justice
Strand, London, WC2A 2LL
13th March 2007

B e f o r e :

THE HONOURABLE MR JUSTICE PUMFREY
____________________

IN THE MATTER OF THE PATENTS ACT 1977

- and -

(1) IN THE MATTER OF UK Patent Application No. GB 2381884A in the name of PABLO CAPPELLINI
AND IN THE MATTER OF AN APPEAL from the decision of the Comptroller-General of Patents dated 13 June 2006
-and-
(2) IN THE MATTER OF UK Patent Application No. GB 2395941A in the name of BLOOMBERG LP
AND IN THE MATTER OF AN APPEAL from the decision of the Comptroller -General of Patents dated 15 June 2006

____________________

Mr Cappellini in person
Richard Davis (instructed by Marks & Clerk Patent Attorneys) for Bloomberg LP
Michael Tappin (instructed by Treasury Solicitor) for the Comptroller-General
Hearing dates: (1) 11 December 2006 (2) 12 December 2006

____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

    Mr Justice Pumfrey :

    Introduction

  1. On 11th and 12th December 2006, I heard two appeals, respectively by Mr Cappellini and by Bloomberg LP, against the refusal by the Comptroller-General of their applications, serial numbers GB 2381884A and GB 2395941A. Mr Cappellini's application was refused on the basis that it comprised "methods for performing mental acts, doing business or programs for computers as such" and was accordingly excluded from patentability by section 1(2) of the Patents Act 1977 by the Hearing Officer, who was Mr Stephen Probert, a deputy director acting for the Comptroller. Bloomberg LP's application was rejected by Mr H Jones, also a deputy director acting for the Comptroller, on the footing that the "advance made by the applicant lies wholly within the meaning of a computer program set out in [section] 1(2)(c) and is, therefore, not patentable". These decisions raise similar legal questions, and it is convenient to deliver this single judgment in respect of those legal issues. I shall deal with the facts of the individual cases after I have considered the law.
  2. Section 1(2) – the Law

  3. When Mr Jones decided Bloomberg's case, the Court of Appeal had not given judgment in Aerotel/Macrossan [2006] EWCA Civ 1371. Mr Probert's decision was equally delivered before that discussion of the relevant principles in the Court of Appeal. Both hearing officers based themselves upon the approach set out by Mr Peter Prescott QC in CFPH LLC's Applications [2005] EWHC 1589 (Pat). The Aerotel/Macrossan case is now the starting point for any discussion of this area of the law.
  4. Section 1(2), which is intended to have the same effect as the corresponding provisions of Article 52(2) and 52(3) of the European Patent Convention ("EPC"), excludes from patentability a heterogeneous selection of potential subject matter. It is convenient to work from the provisions of the EPC directly, for the reasons set out in [6] of the Aerotel judgment. In that case, it is apparent from the analysis of the English cases in the Court of Appeal (Genentech's Patent [1989] RPC 147, Merrill Lynch's Application [1989] RPC 561, Gale's Application [1991] RPC 191 and Fujitsu's Application [1997] RPC 608) that the Court of Appeal had both difficulty and doubts about two questions in particular: the first was the adequacy of the so-called "technical contribution" test and the correctness or otherwise of the decision in Merrill Lynch, by which, of course, they were bound. It is not necessary, for the purpose of this decision, to go back over the reasoning of the Court of Appeal in Aerotel, bound as I am by their statement as to the correct approach to the statutory exclusions. Nor am I concerned about the obvious disparity between the more recent decisions of the Technical Boards of Appeal of the European Patent Office on this question and the older ones such as T208-84 Vicom/Computer-related Invention [1987] OJEPO 14. The approach approved by the Court of Appeal in [42] to [46] of Aerotel has four stages:
  5. "42. No-one could quarrel with the first step – construction. You first have to decide what the monopoly is before going on to the question of whether it is excluded. Any test must involve this first step.
    43. The second step – identify the contribution – is said to be more problematical. How do you assess the contribution? [Counsel] submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.
    44. [Counsel] added the words "or alleged contribution" in his formulation of the second step. That will do at the application stage – where the Office must generally perforce accept what the inventor says is his contribution. It cannot actually be conclusive, however. If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim. In the end the test must be what contribution has actually been made, not what the inventor says he has made.
    45. The third step – is the contribution solely of excluded matter? – is merely an expression of the "as such" qualification of Art.52(3). During the course of argument [Counsel] accepted a re-formulation of the third step: Ask whether the contribution thus identified consists of excluded subject matter as such? We think either formulation will do – they mean the same thing.
    46. The fourth step – check whether the contribution is "technical" – may not be necessary because the third step should have covered that. It is a necessary check however if one is to follow Merrill Lynch as we must."
  6. [47] provides an important gloss on the decision of the Court of Appeal in Fujitsu, which is equally binding upon me:
  7. "[The four steps ask] the same questions but in a different order. Fujitsu asks first whether there is a technical contribution (which involves two questions: what is the contribution? is it technical?) and then added the rider that a contribution which consists solely of excluded matter will not count as a technical contribution."
  8. Mr Davis, who argued the case on behalf of Bloomberg, submitted that generally Step Three is easier to answer than the Merrill Lynch-mandated test of Step Four. I agree with this, largely for the reasons which I endeavoured to explain in Shopalotto.com's Application [2005] EWHC 2416 (Pat), [2006] RPC 293, where I suggested that it is plain that not all "technical effects" are relevant, and, in particular, that where computer programs are under consideration, the fact that a computer with an ex hypothesi new program will be a new machine and so a technical effect. I suggested that the technical effect to be identified had to be a technical effect over and above that to be expected from the mere loading of a program into a computer, and I do not understand the Court of Appeal, who considered this judgment, to have disapproved of that statement.
  9. My brief quotation above from the reasons for rejection of Mr Cappellini's application shows that it is necessary to venture into two of the other classes of subject matter expressly excluded by Article 52 from patentability: methods for performing mental acts and methods of doing business.
  10. It is plain that the Court of Appeal in Aerotel thought that the "mental act" exclusion was a narrow one. The rival views are summarised in the appendix to the judgment at [94] to [98]. In summary, the rival contentions are that of Aldous LJ in Fujitsu ("Methods of performing mental acts, which means methods of the type performed mentally, are unpatentable, unless some concept of technical contribution is present") and that of the Court of Appeal in Aerotel: "There is no particular reason to suppose that "mental act" was intended to exclude things wider than, for example, methods of doing mental arithmetic (every now and then someone comes up with a trick for this, for instance Trachtenberg's system) or remembering things (e.g., in its day, Pelmanism)."
  11. As a matter of precedent, I am free to choose between these alternatives, while acknowledging that the second comes with a clearly expressed doubt as to the correctness of the first. As a practical matter, I doubt whether the difference will normally be of concern. The views of the Court of Appeal in Aerotel make it quite clear that, like most other problems that arise with a patent, the question of patentable subject matter is essentially a question of the scope of the claim. If the claim covers a method of arriving at a particular result by the exercise of rational processes alone, then it is, in my view, a claim to a "scheme, rule or method for performing a mental act". I adhere to the view that I expressed in Halliburton v. Smith [2005] EWHC 1623 (Pat). That case was a case of a claim to a method of design, in which certain calculations were to be carried out recursively, modifying the results each time until a particular criterion was satisfied. Obviously, such a method was particularly susceptible to performance by a computer, but as a matter of principle the claim was not so limited. Nor was the claim limited to the employment of such a method in the production of a physical article. It would have been infringed had the person employing the method stopped at the end of the necessary calculations. Such a case, in my view, can be saved by limiting it to a method of manufacture of the resulting article. I do not think it can then be objectionable. But standing alone, I would respectfully suggest that an algorithm capable of being performed by a human being mentally, and complete (so far as the claim is concerned) when the algorithm terminates, is, as a matter of literal meaning, a scheme … for performing a mental act. If the physical article resulting from this design process becomes a feature of the claim, it cannot, in my judgment, be objectionable. But it is objectionable, in my view, unless "tethered" to that result. I do not, of course, say that every result must be a physical article before the claim is allowable. But if I revert for a moment to the four-stage test, there is no contribution lying outside excluded matter until the claim also covers the physical result of performing the claimed algorithm.
  12. Business methods are rather easier. It is only necessary to emphasise that I consider that Case T0931/95 Pension Benefits, while correct in the result, is incorrectly reasoned. The case is summarised in Aerotel at [100] to [106]. This was a case of a computer program to perform a particular business method, the business method itself being held to be excluded subject matter, but the computer so programmed held to be patentable subject matter but to be obvious. The basic reasoning appears to have been that the Technical Board of Appeal considered that contributions to inventive step lying in excluded matter should not be taken into account in considering the obviousness of the claim. I really cannot see how this is permissible reasoning, if only because a vast class of inventions depend for their non-obviousness on a new discovery of some property of nature – such a discovery being excluded subject matter. I prefer to approach this problem from the direction indicated by the Court of Appeal in Aerotel: what is the claimed invention as a matter of substance? A claim to a programmed computer as a matter of substance is just a claim to the program on a kind of carrier. A program on a kind of carrier which, if run, performs a business method adds nothing to the art that does not lie in excluded subject matter.
  13. Bloomberg LP's Application

  14. This is a very substantial document. The Hearing Officer was asked to consider claims 1, 2 and 14 filed with the letter from the applicant's agents dated 13th February 2006. This set of claims was the final round in a series of formulations, each of which had been objected to by the Examiner on the grounds that they related to excluded subject matter. Mr Davis submits that I need only consider claim 1, but it is helpful also to set out claims 2 and 14 (as dependent upon claims 5 or 6) to obtain further insight into the nature of the invention. The claims are as follows:
  15. "1. A method of distributing data to users of a computer system, comprising:
    identifying, from a plurality of formatted financial data records, data records to be electronically transferred to a plurality of users of the computer system in accordance with data indicating the data record or records that are to be delivered to respective users; and
    mapping each identified data record for each user to whom the record is to be transferred in accordance with data indicating mapping of the respective data record for at least one application operable on a computer terminal accessible by the user to whom the data record is to be delivered.
    2. A method according to claim 1, wherein the step of mapping each identified data record comprises mapping each identified data record in accordance with data specific to each of the plurality of users.
    …
    5. Computer readable medium or media having programming stored thereon for causing a computer system to:
    identify, from a plurality of formatted financial data records, data records to be electronically transferred to a plurality of users of the computer system in accordance with data indicating the data record or records that are to be delivered to respective users; and
    map each identified data record for each user to whom the record is to be transferred in accordance with data indicating mapping of the respective data record for at least one application operable on a computer terminal accessible by the user to whom the data record is to be delivered.
    …
    14. The medium or media of claim 5 or claim 6, wherein the programming causes the computer system to map data records in accordance with data indicating different mappings for a plurality of applications."

    What does Claim 1 cover?

  16. The terminology used in claim 1 and the other claims that I have quoted is straightforward. The claim is to a method of distributing data in which the data transmitted to a user is mapped (using a record relating to the applications that that user has access to) to a form suitable for the application to be used by the user in question. As a matter of substance, such a method is to be performed in software only. The data is put into a form ("mapped") that is suitable for the specific application which the particular user wishes or is authorised to use. The result is said to be improved interoperability, in the sense that the application at the user's terminal is not called upon further to map the raw data: rather, it is processed on the server side before transmission. Viewed at this degree of generality, it has certain structural similarities to the system that I considered in RIM v. Inpro [2006] EWHC 70 (Pat). That case contains a statement of the law which is substantially identical to that which I set out in Halliburton and Shopalotto and which was considered in the appendix to the Aerotel judgment by the Court of Appeal. While I freely acknowledge that there are points of similarity between the two inventions, I do not consider it profitable to try to draw up a score sheet of similarities and differences. In context, the problems with which the RIM invention was concerned were essentially physical ones, resulting from the various bandwidth restrictions that the patented invention was supposed (had it not been obvious) to overcome. The context of the present invention is somewhat different, being concerned largely with the mere identification of data as suitable for a client's needs. Thus, at page 3 line 8 of the specification the following occurs:
  17. "One or more programs installed in the computer system or network, for example on traders' terminals and/or trading firms' network computers, e.g., servers and host computers, and/or on servers provided by financial information providers, receive input from the respective clients, or users, (or from one or more user sub-systems associated with such clients, for example individual traders' terminals installed for trading firm clients), specifying those portions of the data stream the client or each subclient (user) wishes to receive (in the case of a larger client system, the union of all subclient requests), and a format (or table of formats) in which the user wishes the data to be mapped. Mapping can include both the order of data subrecords (a subrecord comprising one or more data elements) within individual data records and the format of the subrecords (e.g., typeface, decimal placement, scientific notation, etc.), as well as the order in which the records are routed to and stored by the requesting user. Alternatively or in addition, mapping may include the filtering of individual elements or subrecords, so that only selected elements or record subsets are received by a given user."

    The advantage of mapping data in this way is explained earlier in the specification at page 2 line 11:

    "Systems and methods according to the invention facilitate downloading and distribution of streams of financial data, such as information relating to transactions in stocks or bonds, currency exchange, and present and forward interests in energy and other commodities, from a financial data source such as the BLOOMBERG PROFESSIONAL® system to one or more networks or computer systems, for use in and/or further processing by, for example, applications such as spreadsheets run on terminals. Systems and methods according to the invention facilitate the use of such data by mapping data identified for distribution to users of applications such as spreadsheets run on client, or user, terminals into forms specified by the users for use with their applications. Data may be mapped by, for example, modifying identifiers such as record type tags associated with the data according to user specifications, modifying the order and/or format of individual data elements included in data records, deleting portions of records, associating portions of individual records with each other, and assigning to data records specific addresses within data structures usable by the applications for which the data records are mapped."

    The physical aspects of the system are described at page 13 line 1 and the structure of the software at page 8 line 28. It is not suggested, I think, that any of the hardware specified cannot be met by a conventional general-purpose computer programmed to operate in a suitable networked environment.

  18. The contribution of the application accordingly lies in the idea of appropriately treating data to match the requirements of a particular end user prior to its transmission to that end user. The Hearing Officer and the Patentee agreed a slightly different formulation: "the filtration and mapping of financial data prior to transmission to the end user". In substance, these are the same thing. Given that such a filtration and mapping is only to be performed by a computer program or programs, and given that the results to be achieved are entirely specified by that computer program, I have some difficulty with the suggestion that the invention improves interoperability between items of hardware. There is no relevant hardware limitation in the claims. There is no question, I think, of matching the format of the transmitted data to any deficiency or advantageous feature of any item of hardware: it is purely to format the data so as to render it suitable to cooperate with particular software.
  19. Mr Davis submits that the invention reduces network burden. The claim, on the contrary, covers systems in which the amount of data actually transmitted may be raised. Thus it is clear that the whole thrust of the invention is to map the data, at the server end, to a form suitable for the users' software. Regardless of the passages in the descriptive part of the specification which suggest that format conversion can with equal efficacy be carried out at the client-side machine, I am inclined to the view that the claim is limited to server-side processing. Nevertheless, the Hearing Officer was right to draw attention to these passages, in paragraphs 22 to 24 of his decision, because they demonstrate the lack of importance that the physical aspects of the system have to the claimed invention. I entirely agree with the Hearing Officer that the advance made by the applicant is a computer program as such.
  20. I turn now to the fourth question, which, of course, the Hearing Officer did not deal with: is it possible to identify a technical effect? In my view, the clear answer to this is no, it is not. At this point, I do think it is helpful to draw the distinction with the RIM case. In RIM, the whole purpose of the server-side treatment of the data to be transmitted was to reduce the information content to ensure more rapid transmission over reduced bandwidth channels. I adhere to the view that I expressed in that case, that this is a relevant technical effect. If the claim had not been limited to systems in which the downloaded data had its information density reduced and was to be transmitted to a "field computer" which, in context, meant a computer having reduced bandwidth capabilities, the position might well have been different. Here, however, there is no such limitation and no relevant technical effect. I conclude, therefore, that the claimed invention fails to surmount the hurdle placed in its path by Article 52 EPC, and it must be rejected.
  21. Mr Cappellini's Application

  22. Mr Cappellini's application is a remarkable piece of work. It consists of some 214 pages of text and 127 pages of diagrams, and it relates to what must be assumed to be a novel algorithm for determining the routes to be taken by a carrier when delivering packages, the permitted routes being variable to allow two carriers to deviate, meet and transfer one or more packages. Problems of this description are notoriously mathematically difficult, or even analytically intractable. Mr Cappellini's method is summarised on page 6 of the specification as follows:
  23. "A computer implemented search and retrieval system of trajectory-related capabilities, which can be represented by flexibly-defined paths applicable to the search of transportation-related routes representing available transportation-related capabilities, providing also for these an optional reservation system. A location system is used to define locations and to define loci in the proximity of these locations in order to represent catchment operation areas. The system can search for single independent service providers as well as a combination of two or more independent service providers, capable of fulfilling the transport-related requirements specified by a service user or an information seeker. The transportation-related paths representing available transportation related capabilities are defined by elements comprising waypoints and associated spaces or areas, as well as with other constraints such as time windows and capacity, which are input into path database as well as organized and associated in a series of indexes in a structure format, typically with the aid of a spatial or geographical information system. The associated spaces or areas of the transportation-related paths permit the system to find matches by proximity between the service provider and the transport requirements of the service user, or combinations by proximity, of service providers between each other, to fulfil a specified transport requirement."
  24. My understanding is that by employing a database of available transport, defined in the sense of start point, end point and time, the users' requirements may be matched by, as it were, joining up these elements of a transport trajectory to make the whole trip, permitting, moreover, a degree of flexibility to accommodate deviations and package transfer. As I understand it, these points are referred to as "flexible nodes". The Hearing Officer summarised the position, in paragraph 10ff of the Decision, as follows:
  25. "10. … But to avoid any misunderstanding over what I have considered the advance to be, I shall restate it using my own words. As I understand it, Mr Cappellini's invention is a new algorithm for planning a delivery route for a package, using a network of carriers. The algorithm is said to be new and not obvious because it permits the individual carriers in the network to deviate from their normal, predefined route in order to create new meeting places (called "nodes" or "relay points") where (in practice) two or more carriers can exchange one or more packages.
    11. The movement and/or delivery of the packages themselves is not part of the invention as claimed, but nothing rests on this distinction. When the claims are correctly construed, the heart of the invention, and the contribution to the art, is the algorithm that works out where potential nodes or relay points in a distribution network could be generated.
    12. According to the prior art, as Mr Cappellini explained it to me, the algorithm would only have searched for relay points among existing nodes – i.e. times and places where the different carriers were routinely scheduled to meet. In order to expand such an algorithm to include the additional flexibility that is provided by allowing the carriers to deviate from their normal routes, Mr Cappellini has had to redesign the interface that is used to input the flexible paths to the algorithm, as well as the core of the algorithm that searches for potential relay points."

    The Hearing Officer set out claim 1 of the specification. I think it is helpful to consider the claims of the specification as they are annexed to the Decision. I shall, accordingly, consider the family of claims set out below:

    "1. A relay detection and coordination system for a computer-implemented geographically-simulated network of flexibly-defined paths, said paths corresponding to paths of real transportation carriers each having a predefined degree of geographical operational flexibility, which are to be coordinated, said system comprising:
    (a) a computerised geographical information system comprising a location system
    [(b)] a computerised relational path database, wherein for each flexibly-defined path there is provided:
    at least a waypoint or node,
    at least an associated area related to said waypoint or node, said area representing a predefined degree of geographical operational flexibility, both said waypoints and said areas, identifiable by coordinates in said location system, and
    a linkability condition,
    (c) an interface means for the input of a first location and at least a second location which need to be connected together by means of a relay,
    (d) a computer-implemented detection algorithm that, in use, uses data obtained from the interface means, the relation path database and from the geographical information system, said detection algorithm arranged to detect a relay according to a predefined criteria, wherein a set of detected paths constituting the relay is linked between each other by using at least one associated area of at least one of said detected paths,
    (e) an output means set up to transmit operational coordination data to each real transportation carrier represented by each of the detected paths, whereby each real transportation carrier can, in use, be coordinated using this data, within its predefined area of geographical operational flexibility, so as to become a functional part of a real transport relay operation that mimics the relay detected in the geographically-simulated network.
    …
    11. A method of coordinating a transportation process involving a relay, based on detection of a relay in a computer-implemented geographically-simulated network of flexibly-defined paths, said paths corresponding to paths of real transportation carriers each having a predefined degree of geographical operational flexibility, which are to be coordinated, said method comprising:
    providing a computerised geographical information system comprising a location system,
    providing a computerised relational path database, wherein for each flexibly defined path there is provided:
    at least a waypoint or node,
    at least an associated area related to said waypoint or node, said area representing a predefined degree of geographical operational flexibility, both said waypoints and said areas, identifiable by coordinates in said location system, and
    a linkability condition,
    providing an interface means for the input of a first location and at least a second location which need to be connected together by means of a relay,
    providing a computer-implemented detection algorithm that uses data obtained from the interface means, the relation path database and the geographical information system
    detecting with said computer-implemented detection algorithm a relay according to a predefined criteria, wherein a set of detected paths constituting the relay is linked between each other by using at least one associated area of at least one of said detected paths,
    providing an output means set up to transmit operational coordination data to each real transportation carrier represented by each of the detected paths,
    transmitting operational coordination data to each said real transportation carriers, whereby each said real transportation carriers can be coordinated using this data, within its predefined area of geographical operational flexibility, so as to become a functional part of a real transport relay operation that mimics the relay detected in the geographically-simulated network,
    the operational coordination data for use in the coordination or control of an industrial transportation process involving a relay.
    12. A network relay transportation system comprising a distributed management and coordination system and a plurality of transport carriers that form a network, the management and/or control system comprising:
    a communications means (066, 053),
    spatial information and location means (059, 058) capable of discrete storage, retrieval, manipulation and computation of spatial or geographic data related to spatial or geographically-coded elements capable of identifying a location in the said location means
    an operative link to an electronic relational database (5106, 075) representative of the network to be managed, the database having stored therein a plurality of carrier transport paths representing the functional operation or future functional operations of said plurality of transport carriers said paths defined by at least one waypoint parameter (031, 2736), at least an associated area/space (030, 106, 108, 2754) and at least a link ability condition (110 in part, 2756) both said area/space and link condition related to said at least one waypoint parameter (110)
    computerised search and retrieval means (065) operatively linked to said database for finding and assembling combinations of said paths or partial parts of said paths which linked together can perform the said requested task
    input/output means (053) operatively linked to first interface means (2700-2954) arranged for inputting data, relating to at least [one] of said transport paths, into said electronic relational database, said interface means comprising means for defining:
    a waypoint parameter (2736)
    an associated area/space (2746)
    and a link ability (2748) condition,
    said input/output means (053) further operatively linked to second interface means (2955-2994) arranged for inputting data, relating to a transport connection task between a first location and at least a second location, into said electronic relational database, said interface means comprising:
    means for defining said first location (5110),
    means for defining one of (i) a second location (5112) or (ii) a function parameter (5140)
    means for default selection, or third interface means for active selection (1434) of at least one possible option (1430) available for the requested task, said third interface means operatively linked to said input/output means,
    said input/output means (053) further capable, upon active or default selection on said selection means, of conveying carrier task instructions (1460, 1462, 1468, 1470, 3010, 3012, 3016, 3018, 2994, 095, 1462, 3012), for the execution of a connection task,
    said communication means arranged, in combination with said output means, and upon said active or default selection, to relay a plurality of connection task instructions, to a plurality of system-selected carriers involved in the selected possible option(s) (1420),
    said system-selected carriers having their operations represented in said database, instruction receiving means and operator means for modifying their functional operation according to said task instructions in a manner so that said carriers can be linked between each other to form a relay that performs the said transport connection task.
    13. A method of processing of loads comprising the steps of
    Providing a GIS system that converts at least one flexible path planned by a carrier, each path defined by at least one waypoint parameter and at least one associated area parameter, into a set of coordinates that represent the said flexible path,
    Storing said paths along with at least one linking condition for at least one waypoint parameter or associated area, into a searchable database,
    Providing an interface to accept a load processing request from a first location to at least a second location,
    Said GIS system further capable of converting said first and second locations into a second set of coordinates that represent said locations,
    Determining coordinate match between said location coordinates and said flexible path coordinates,
    Retrieving from the said database a set of flexible path coordinates corresponding to each path where at least one coordinate has been matched to the first location and to each path where at least one coordinate has been matched to the at least second location, said set being only of coordinates related to the at least one waypoint or associated area that was stored with at least one linking condition,
    Determining coordinate match between at least two of said set of coordinates corresponding to different paths, at least one matched with the first location and at least another matched with at least one second location,
    Determining a relay between two paths whose flexible area combined matches that of the first location and at least one of the second locations,
    Coordinating the carriers represented by the two paths, by transmitting operative data for mimicking the said relay determined in the above step, so as to process a load according to the said load processing request,
    Said method for use in the coordination, or control-via-operator-or-transducer of the physical processing of loads in relay fashion."
  26. Mr Cappellini objects that the decision in Aerotel has effectively changed the nature of the playing field since he made his application and subsequently defended it before the Examiner, because of its emphasis on the precise form of claims. He contrasts this with the Hearing Officer's view that the precise form of claims does not particularly matter. I think it is important to remember that questions of patentable subject matter are essentially questions relating to the form of claims. It is possible, on the basis of a single disclosure, to draft claims which are supported by the descriptive matter, but which either do or do not relate to excluded subject matter. Like the objections to width of claim (particularly novelty and obviousness) I think objections under Article 52 are primarily objections to width of claim, although it must be remembered that it may be impossible to draft a claim to patentable subject matter that is properly supported by the disclosure. Here, I think it is perfectly plain that claim 1, which is, as Mr Cappellini says, the broadest and most abstract claim, does not relate to patentable subject matter. Feature B and feature D of the claim lie at the heart of it: the former requiring a database containing the data relating to paths, their nodes and their areas of operational flexibility, and the latter an algorithm capable of tying one or more of these paths to make up a relay and so construct a whole path for the carriage of any goods.
  27. This is the pure manipulation of data without the production of any physical or real-world effect. At best, I think that (on the assumption that the process is carried out under the control of a computer program) it results in the presentation of information as a result of the manipulation of the data by the specified computer-implemented algorithm. It is equally, I am satisfied, a mathematical method alone.
  28. More difficult is the invention claimed by claims 11 and 12. Claim 11, which relates to a method of coordinating a transportation process, in essence using the system of claim 1 for generating the necessary data to direct the transport of unspecified articles by coordinating the respective carriers, is, it seems to me, at least potentially a method of producing a particular physical effect. The problem, it seems to me, is that the physical effect that is produced is essentially the movement of known items (viz. lorries, vans, taxis, etc.) over known and existing routes, but equipped with instructions to deviate so as to meet other carriers at the points determined by the algorithmic analysis. The contribution therefore lies in the instructions given to the drivers as to where and when to begin, break and end their journeys, together with instructions, as appropriate, as to the goods to be transhipped at the breaks. The result is therefore a method of performing a set of journeys, and this I consider to be a method of doing business, as Mr Tappin submits on behalf of the Comptroller. The same objection, in substance, may be levelled at the invention of claim 12, which is the claim to a network relay transportation system, essentially characterised in the manner I have already described. So, too, claim 13, which again gives rise to analytical difficulties, the method of processing loads.
  29. Claim 13 is of interest and importance, because it is the claim which, in my view, is closest to comprising patentable subject matter. However, I think that it is important not to be misled by the words "processing of loads". In truth, the loads are not processed at all. They are potentially aggregated, or broken down, distributed to various carriers, transhipped at points on those respective carriers' routes and, ultimately, delivered. Again, all these steps are carried out using conventional equipment, and the inventive contribution lies in the derivation of the order, time and particular route segments concerned. I do not think that this is enough.
  30. I think that it is necessary here to consider whether the invention does, in fact, produce a relevant technical effect. I do not think it does so. The analysis in terms of business method, which commends itself to the Comptroller in this appeal, is, I think, correct. There is, in my judgment, no relevant technical effect in merely moving vehicles and their cargos around according to a routing algorithm. Accordingly, this appeal also must be dismissed. I should add that Mr Cappellini supplied me with a great deal of material after the hearing, which was for that reason not admissible and which I have not considered.


BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII
URL: http://www.bailii.org/ew/cases/EWHC/Patents/2007/476.html