Commissioner’s Decision # 1369
EBAY’s Patent Application No. 2,263,903 for a system that automatically notifies customers by email of changes in the delivery status of their packages was found to be nonobvious as of its 1996 claim date. Two elements of the invention had been rejected for obviousness by the examiner but were found to be inventive in this decision: (1) the “push” process for keeping status information up-to-date, and (2) the automatic notification system that automatically sends an email message only when a delivery status has changed. In making these findings, the Commissioner made a distinction between the mere automation of a manual process, which can be obvious, and the automation of a manual process where some technical innovation occurs in automating it, which can be inventive. The Application will be allowed, provided that claim 1 is amended so that it claims a statutory manufacture, and that other claims are amended for clarity.
Required Amendments to the Claims
Before proceeding with the obviousness inquiry, the Commissioner addressed a number of defects with the claims.
EBAY had submitted amendments to the independent claims 1 and 7 in response to several requests by the Commissioner to define the subject matter of the invention “distinctly and in explicit terms” as required by subsection 27(4) of the Patent Act. [37-42] The changes are numerous and appear to be minor. The Commissioner accepted these amendments and noted that they confirmed its understanding of the proposed invention.  The new version of claims 1 and 7 are given below.
1. A computer readable memory having recorded thereon machine executable instructions to cause for storing programmable instructions for use in an execution by a computer to carry out a method to collect order processing status over a network and to update users with the collected order processing status, said method comprising:
(a) storing order information relating to an order submitted by a user computer, said order information comprising information relating to order processing status for said order, said order being processed by a service provider;
(b) automatically and periodically requesting status information reflecting order processing status for said order from said service provider across said network, and receiving in response collected status information for said order;
(c) automatically determining whether the collected status information includes new status information relative to said order processing status pertaining to said stored information;
(d) automatically updating said order processing status relating to said order based on said new status information reflecting order processing status collected across said network;
(e) automatically generating messages including said updated order processing status responsive to a change in said order processing status collected from said service provider; and
(f) transmitting said messages to said user computer across said network.
7. In a computer network enabling communication between a plurality of computers, a system comprising:
storage means associated with a first computer for storing order information relating to an order submitted by a user computer;
requesting means associated with said first computer for automatically and periodically requesting order processing status for said order from a second computer, and receiving in response collected status information for said order;
processing means associated with said first computer for determining, automatically, whether the collected status information is new relative to said order processing status pertaining to said stored information;
updating means associated with said first computer for receiving said collected status information from said second computer, and for automatically updating said order processing status with said new status information;
message generating means for automatically generating a message containing said updated order processing status responsive to a change in said order processing status collected for said order from said second computer; and
message transmission means for automatically transmitting said message across said network to said user computer associated with the user without interaction from the user.
As part of its recommendation the Commissioner also required that two further amendments be made. Firstly, it required one minor change to the phrasing in claim 7 for clarity.  Secondly, it required that claim 1 be amended so that it claims a statutory manufacture by conforming to the rule that “a valid claim to a computer readable memory or medium requires that the computer readable memory has machine-executable (i.e. computer executable) instructions stored on it to cause a computer to carry out the method of the invention.”  The amended portion of claim 1 follows.
1. A computer readable memory having recorded thereon machine executable instructions to cause for storing programmable instructions for use in an execution by a computer to carry out a method to collect order processing status over a network and to update users with the collected order processing status… 
The Commissioner focuses on claims 1 and 7 which were rejected for obviousness by the examiner. The Commissioner reversed this finding. It follows that dependent claims 2-6 and 8-12, which include all the essential features of claims 1 and 7 respectively, are also unobvious. 
1) The Skilled Person and their Common General Knowledge
The Commissioner defined the relevant skilled person to be “a team of electronic commerce specialists, comprising not only information technology professionals, but also business professionals familiar with mail order and electronic commerce business practices.” [15, 54] EBAY initially argued that Sanofi-Synthelabo Canada Inc v Apotex Inc, 2008 SCC 61, necessarily requires that the skilled person be an individual rather than a team for the purpose of obviousness.  However, the Commissioner disagreed on that interpretation, and pointed to Whirlpool Corp v Camco Inc, 2000 SCC 67, regarding the skilled person being the same for validity and infringement issues,  and Merk & Co v Pharmascience Inc, 2010 FC 510, by way of example, [17-18] to reject the argument. 
The Commissioner found the common general knowledge of the skilled person to include “how to develop, implement, and operate electronic communications systems (using email, websites, etc.) to keep customers or other participants in a business process informed,”  and “the practices of keeping customers informed and the common mail order practice of notifying customers of updates in the status of their orders or shipments.”  However, it does not include “push” technology,  which is the name commonly given to the sort of technology in the present invention.  In “push” technology, the delivery of updated information is automatically initiated (or “pushed”) by an information server to a computer. 
2) The Inventive Concept
The problem in the prior art, as EBAY describes, is lack of updated order information and heavy reliance on human customer service representatives and customers themselves for manual update notifications, which may be time consuming, error prone, costly, and inefficient. 
The skilled person would understand that the solution is to use software to cause a network-connected computer system to automatically and periodically collect certain information, determine if this collected information is newer than already stored information, and accordingly update the stored information if necessary. Then, the software causes the system to generate and transmit electronic messages containing the updated information to a customer.  This solution was also considered to be the essential elements of both claim 1 and claim 7, [45, 48] and the inventive concept. 
3) Difference between the State of the Art and the Inventive Concept
The principal piece of prior art cited, the Kehnemuyi disclosure, discloses a method and apparatus for automatically contacting customers and reporting customer order status data.  The present invention was found to be different from it in that (a) the new information is gathered using software and a network (as opposed to manually), (b) the status information is kept up-to-date automatically, and (c) messages containing the updated information are automatically generated and transmitted to a user. 
A second piece of prior art, the Walden disclosure, which discloses a system for assisting the computer operations of an organization, could not bridge the differences between the Kehnemuyi disclosure and the present invention. [73-74]
4) Were the Differences Obvious?
The Commissioner found that automating the collection of updated status information with software was obvious as of the claim date, as it was merely an automation of a known administrative procedure. 
On the other hand, keeping the status information up-to-date automatically was inventive. The Commissioner was of the view that although a mere automation of a manual process can be obvious, it may be inventive where some technical innovation occurs in automating it.  In this case, the “push” technology used in the present invention was not common general knowledge by 1996.  Furthermore, even if “push” technology had been known to the skilled person, the prior art was not clear as to how “push” technology would be adapted to arrive at the inventive concept in the claims. [84-85] Thus, some inventive effort was required to arrive at the invention.  The Commissioner was also convinced by the argument that EBAY’s invention was based on a push-pull architecture, incorporating a “push” aspect in using automated notifications and a “pull” aspect in automatically and periodically requesting status information, which was the earliest or nearly the earliest of its kind. 
The Commissioner also found the automated messaging process to be inventive, finding a degree of ingenuity in the idea of designing the electronic mail messenger so that it pushes a message only when a record has been flagged indicating a change in status. 
The Commissioner also considered there to be an inventive step in the combination of the features set out in differences (a), (b), and (c). 
The first key takeaway from this decision is the amendment to claim 1 that the Commissioner required. As a matter of claiming a statutory manufacture, it was necessary that claim 1 claim a computer readable memory “having recorded thereon machine executable instructions” rather than computer readable memory “for storing programmable instructions for use in an execution”. This point does not seem to be argued in the case. The Commissioner simply cites the requirement that “a valid claim to a computer readable memory or medium requires that the computer readable memory has machine-executable instructions stored on it to cause a computer to carry out the method of the invention.” 
A second key takeaway is the distinction the Commissioner makes between “a mere automation of a manual process”, which can be obvious, and the automation of a manual process “where some technical innovation occurs in automating it”, which can be inventive.  It would seem that the automation of collecting updated status information fell into the former category, as that element of the invention was considered obvious.  However, the automation of keeping the delivery status information up-to-date, which employed the new (at the time) “push” technology (or “push-pull” technology, as eBay would call it), seems to have involved the requisite technical innovation in its automation. The technical innovation seems to come from the fact that push technology was not common general knowledge before the priority date,  and that even if it were, the manner in which information is collected and determined if it is newer before it is pushed to a user is not clear in the prior art.