Apple Inc. - [2022] APO 83

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2022] APO 83
Patent Application: 2019268070

Title:Device, method, and graphical user interface for manipulating user interfaces based on unlock inputs

Patent Applicant: Apple Inc.

Delegate:R Subbarayan

Decision Date: 22 December 2022

Hearing Date: Written submissions completed on 30 September 2022

Catchwords: PATENTS - examiner’s objection – biometric authentication for revealing redacted content – manner of manufacture – computer implemented invention – some of the claims are for a manner of manufacture – opportunity to amend – final date for acceptance reset

Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019268070

Title:Device, method, and graphical user interface for manipulating user interfaces based on unlock inputs

Patent Applicant: Apple Inc.
Date of Decision: 22 December 2022
DECISION

The invention of each of the amended claims 1-10, 13-17 and 18-19 (when not dependent on claims 11 or 12) is not a manner of manufacture.
The invention of each of the dependent claims 11 and 12 is for a manner of manufacture.
As the adverse findings can be overcome through amendment, pursuant to sub-regulation 13.4(3), the final date to gain acceptance is extended to three (3) months from the date of this decision.
REASONS FOR DECISION
BACKGROUND

Patent application AU 2019268070 in the name of Apple Inc. (the “applicant”) was filed on 19 November 2019 as a divisional application of AU 2018202712 in a line of divisional applications and claims an earliest priority date of 9 September 2013 through these parent applications.
Examination of the application was requested on 24 January 2020.
Amendments in anticipation were filed 4 February 2020 which comprised a new claim set.
A first examination report was issued on 29 January 2021 objecting that the claimed invention was not for a manner of manufacture and was not inventive.
The applicant responded on 24 August 2021 without any proposed amendments to the claims arguing that the examiner’s objections were not well founded.
A second examination report was issued on 21 September 2021 maintaining both the manner of manufacture objection and the inventive objection.
The applicant responded on 21 December 2021 with proposed amendments to the claims that they submitted overcame the inventive step objection. They also submitted that the manner of objection was not well founded and should be withdrawn.
A third examination report was issued on 27 January 2022 withdrawing the inventive step objection but maintaining the manner of manufacture objection.
On 31 January 2022, which was the effective final date for acceptance of the application, the applicant filed a request to be heard in relation to the outstanding examiner objection.
On 16 June 2022, the applicant filed written submissions for the hearing.
On 29 August 2022, the Office invited the applicant to file any further submissions for the hearing in light of the recent High Court decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29.
The applicant filed their further submissions on 30 September…

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 Apple Inc.

Details

AGLC: Apple Inc. [2022] APO 83
Case: [2022] APO 83
Decision Date: 22 December 2022

CaseChat Overview and Summary

Apple Inc. filed a patent application for a device, method, and graphical user interface for manipulating user interfaces based on unlock inputs. The Australian Patent Office issued an examination report objecting that the claimed invention was not for a manner of manufacture. The applicant responded without amending the claims but argued that the objection was not well founded. Further amendments were made, but the examiner again objected that the invention was not for a manner of manufacture. The applicant filed a request to be heard, and the delegate considered the matter. The delegate found that the invention of amended claims 1-10, 13-17, and 18-19 (when not dependent on claims 11 or 12) is not a manner of manufacture. However, the invention of each of the dependent claims 11 and 12 is for a manner of manufacture. The applicant has the opportunity to amend the claims and gain acceptance of the application within three months of the decision.

The delegate found that the substance of the invention relates to the redaction of electronic documents that is being viewed on an electronic device with a display and a biometric sensor, wherein first and second information items of the document that are being viewed on the display are redacted in a manner so that only identifying information of both the information items is displayed while the content information of both the information items are hidden from view and while viewing the redacted document the user can unhide and view the content information of both information items simply by authenticating their credentials using the biometric sensor of the device. The delegate found that while the invention is embodied in a physical device in the form of an electronic device with a display and a biometric sensor, the problem being addressed is one that relates to the mode of authenticating a user’s credentials for the purpose of revealing redacted content. The delegate found that the invention does not solve any technical problem within or outside the computer. The delegate also found that the invention provides no improvement to the computer itself. The delegate found that the invention is a mere scheme for improving the efficiency of the authentication process required for unredacting electronic information presented on the display of the electronic device.

The delegate found that claims 11 and 12, however, provide a technical means for the user to choose how long they wish to view the information items in their unredacted form. It also improves the security of the redacted content by only displaying it while biometric input of an authorised user is being continually sensed. These are technical effects that elevate the invention to something more than a business innovation. The delegate found that claims 11 and 12 are directed to a manner of manufacture.

Orders