AirService Digital Pty Ltd - [2018] APO 39

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
AirService Digital Pty Ltd [2018] APO 39

Patent Application: 2017201360

Title:Retail Venue Ordering System And Method

Patent Applicant:  AirService Digital Pty Ltd
Delegate:  M. G. Kraefft
Decision Date:  19 June 2018
Hearing Date:  8 May 2018, in Melbourne

Catchwords: PATENTS – section 45 – examiner’s objections – system for placing orders at retail venue through mobile order application – whether invention is a manner of manufacture – venue data device allocated unique customer identification code to each customer – corresponding code stored in mobile device of corresponding customer – access to venue menu and ordering process enabled through mobile device – claimed invention not a manner of manufacture – whether claimed invention has inventive step – claimed invention differed from prior art through routine steps – claimed invention does not have an inventive step

Representation: Patent attorneys for the applicant: Mr Manuel Schmidt and Ms Madeleine Kelly, FB Rice.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017201360

Title:Retail Venue Ordering System And Method

Patent Applicant: AirService Digital Pty Ltd
Date of Decision: 19 June 2018
DECISION
The claimed invention, as proposed to be amended, is not for a manner of manufacture and does not have an inventive step. Moreover there is nothing in the specification that could overcome the finding of lack of manner of manufacture.
The application is refused.
REASONS FOR DECISION
BACKGROUND

AirService Digital Pty Ltd (“the applicant”) filed patent application 2017201360 on 28 February 2017. The application is a divisional application based on application 2015201340 (“the parent application”). The latter application is a divisional application based on application 2012239843. This application in turn is based on an Australian provisional application 2011901252. The earliest claimed priority date is 5 April 2011.
On the date of filing of application 2017201360, the applicant also proposed amendments to the description and claims of the specification.
An examination report was issued on 23 January 2018. The report contained objections that the claims of the application did not define a manner of manufacture, lacked an inventive step, and that certain claims did not comply with Section 40. The report also included the following passage.
“My report below includes objections that are equivalent to objections raised in the examination of the related parent application which is directed to the same or essentially the same subject matter. As there has (sic) now been several adverse reports in relation to this subject matter, the application will be referred to a Hearing Officer to consider whether to accept or refuse the application under s49 or to direct amendment under s107. If you wish to be heard on this matter, you have 1 month from the date of this report to request a hearing.” (emphasis in the original).
The applicant subsequently requested to be heard. Also at the request of the applicant, the hearing was conducted orally.
A week before the hearing, the applicant made further proposed amendments to the description and claims of the specification. The applicant also…

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.

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Details

AGLC: AirService Digital Pty Ltd [2018] APO 39
Case: [2018] APO 39
Decision Date: 19 June 2018

CaseChat Overview and Summary

AirService Digital Pty Ltd applied for a patent in respect of a system and method for placing orders at a retail venue using mobile data devices. The application was objected to by the examiner on the basis that the claims did not define a manner of manufacture, lacked an inventive step, and did not comply with section 40 of the Patents Act 1990. The applicant made proposed amendments to the claims in response to the objections, but the objections remained. The applicant requested a hearing. The applicant submitted that the claims included technical features not well-known at the relevant time. The applicant further submitted that the claimed invention had an inventive step. The delegate found that the claimed invention was not for a manner of manufacture. The delegate also found that the claimed invention did not have an inventive step. The delegate found that there was nothing in the specification that could overcome the finding of lack of manner of manufacture. The application was refused.

Orders