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360 Knee Systems Pty Ltd

360 Knee Systems Pty Ltd

Case [2024] APO 39 11 September 2024

Patent Law

Manner of Manufacture

Inventive Step

Novelty

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
360 Knee Systems Pty Ltd [2024] APO 39

Patent Application: 2022202026
Title:Graphical representation of dynamic knee score for a knee surgery

Patent Applicant:                   360 Knee Systems Pty Ltd
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  11 September 2024
Hearing Date:  by written submissions filed 26 June 2024

Catchwords: PATENTS – section 45 – examiner’s objection – modelling of possible outcomes for patients for knee surgery under varying surgical parameters – clarity – novelty – inventive step – manner of manufacture – examiner’s novelty objection is unsustainable - inventive step objection is sustainable – invention in substance appears to be directed to a mere scheme/algorithm lacking technical effect – opportunity to amend – time provided for further examination

Representation: Patent attorneys for the applicant: FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2022202026
Title:Graphical representation of dynamic knee score for a knee surgery

Patent Applicant: 360 Knee Systems Pty Ltd
Date of Decision: 11 September 2024
DECISION
The examiner’s objections that the claims lack an inventive step and are not for a manner of manufacture is sustainable. I provide the applicant an opportunity to amend and provide six (6) months from the date of this decision to amend and gain acceptance.
REASONS FOR DECISION
BACKGROUND

360 Knee Systems Pty Ltd (“the applicant”) filed patent application 2022202026 on 23 March 2022 as a divisional application of application AU 2016411801. This parent application is the national phase entry of application PCT/AU2016/050483 filed under the Patent Cooperation Treaty. It has an earliest priority date of 14 June 2016.
A first examination report issued on 11 May 2023 including objections under the grounds of manner of manufacture, clarity, novelty, and inventive step. The applicant filed a response with amendments and a second adverse report issued including these same grounds. Following this report and a telephone discussion with the examiner, the applicant filed a request to be heard. With their written submissions for the hearing of the matter the applicant also filed amendments addressing the clarity issue in the second report.
The examination of the present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) as the application was filed after 15 April 2013. Thus, I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application. Furthermore, the final date for acceptance of the application was 11 May 2024, however paragraph 13.4(1)(g) of the Patent Regulations 1991 is available to extend the time for gaining acceptance to 3 months (or longer if appropriate under sub-regulation 13.4(3)) from the date of the present decision.
SPECIFICATION
The specification[1] begins by discussing the condition of osteoarthritis noting that it is the degenerative loss of cartilage tissue in a joint and…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading 360 Knee Systems Pty Ltd

Details

AGLC: 360 Knee Systems Pty Ltd [2024] APO 39
Case: [2024] APO 39
Decision Date: 11 September 2024

CaseChat Overview and Summary

This decision relates to patent application 2022202026 by 360 Knee Systems Pty Ltd ("the Applicant") for a "Graphical representation of dynamic knee score for a knee surgery". The Applicant filed the application as a divisional application of AU 2016411801. The Applicant sought a patent for a system that enables a surgeon to receive information from a CT scan of a patient's knee and determine optimal parameters for a knee surgery based on the analysis of the scan data. The application was examined by Dr N. R. Madsen ("the Examiner") and objections were raised by the Examiner under the grounds of manner of manufacture, clarity, novelty and inventive step. The Applicant responded to these objections by filing written submissions and proposing amendments to the claims. The Applicant then requested to be heard regarding the objections. The Applicant was provided with an opportunity to be heard on the objections, and did so by filing further written submissions and amendments to the claims. The Applicant submitted that the Examiner's objections were not sustainable and sought for the objections to be dismissed. The Applicant argued that the claims were clear, novel and inventive. The Applicant also argued that the invention was technical in nature and therefore satisfied the requirement for a manner of manufacture. The Examiner maintained their objections. The Applicant sought a hearing to consider the objections. The Applicant argued that the Examiner's objections were not sustainable and sought for the objections to be dismissed. The Applicant argued that the claims were clear, novel and inventive. The Applicant also argued that the invention was technical in nature and therefore satisfied the requirement for a manner of manufacture. The Applicant further submitted that the Examiner's objections were not sustainable and sought for the objections to be dismissed. The Applicant argued that the claims were clear, novel and inventive. The Applicant also argued that the invention was technical in nature and therefore satisfied the requirement for a manner of manufacture. I find that the Examiner's objections under the grounds of manner of manufacture and inventive step are sustainable. I find that the Examiner's objections under the grounds of clarity and novelty are not sustainable. I provide the Applicant with an opportunity to amend and provide six (6) months from the date of this decision to amend and gain acceptance.

Orders