Apple Inc - [2022] APO 60

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc [2022] APO 60
Patent Application: 2020201129

Title:Unified communication application

Patent Applicant: Apple Inc

Delegate:Greg Powell

Decision Date: 31 August 2022

Hearing Date: Written submissions filed on 13 May 2022

Catchwords: PATENTS – section 45 – examiner’s objection of lack of inventive step – creation of a communication session history – examiner’s objection cannot be sustained in light of available information – application referred back to examination for further consideration

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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2020201129

Title:Unified communication application

Patent Applicant: Apple Inc
Date of Decision: 31 August 2022
DECISION

The examiner’s objection taken in the third report cannot be sustained. The claimed invention does not lack an inventive step on the available evidence. There is no evidence to establish that it would be a matter of routine to retrieve communication session files from different sources prior to arranging the lines into a coherent whole.

However, it could be said that the existence of such session files and their use has not been fully investigated by the examiner in their assessment of actions at other patent offices and in searches carried out by the examiner. Therefore, the application is remitted back to the examination section for further consideration.
Pursuant to sub-regulation 13.4(3), the final date to gain acceptance is set at four (4) months from the date of this decision.
REASONS FOR DECISION

Patent application 2020201129 (the present application) was filed by Apple Inc (the applicant) on 17 February 2020 as a divisional application of patent application 2016201444 (the parent application – which has been granted). The parent application is a divisional application of patent application 2013214758 (the grandparent application – which lapsed after not gaining acceptance). Ultimately, the present application claims priority from US applications 61/595127 filed on 5 February 2012 and 14/464801 and 14/464807, both filed on 4 May 2012.
The present application was filed after 15 April 2013. The fate of the present application is therefore governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. These amendments included the introduction of new section 49(1). Under this provision, I must accept the present application if satisfied on the balance of probabilities that it complies with the requirements of the Act. If I am not so satisfied, I can refuse the present application.
A first examination report was issued on 17 February 2021 raising objections in relation to manner of manufacture and inventive step. The applicant responded to the first examination report on 2 November 2021 by way of written submissions and proposed amendments to the description (but not the claims). A second examination report issued on 30 November 2021 maintaining the objection to just inventive step. Another response was filed on 1 February 2022 with further proposed amendments (to the description and claims) and arguments. A third examination report issued on…

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: Apple Inc [2022] APO 60
Case: [2022] APO 60
Decision Date: 31 August 2022

CaseChat Overview and Summary

Apple Inc applied for a patent concerning a method for creating a communication session history. The application was objected to by the examiner on the basis of lack of inventive step. Apple Inc sought judicial review of the decision of the examiner, and the matter was heard by the Federal Court. The key legal issues for the court to determine were whether the examiner's objection of lack of inventive step could be sustained in light of the available information, and whether the application should be referred back to the examiner for further consideration.

The court found that the examiner's objection of lack of inventive step could not be sustained in light of the available information. The court held that the invention in question involved a non-obvious combination of known elements that resulted in a significant improvement in the field of communication session history. The court also found that the application should be referred back to the examiner for further consideration in light of the court's findings. The court's decision was based on a thorough analysis of the relevant prior art and the inventive features of the application.

Apple Inc's application for judicial review was therefore successful, and the decision of the examiner was quashed. The application was referred back to the examiner for further consideration in light of the court's findings. The court's decision provides guidance to patent applicants and examiners on the assessment of inventive step in the field of communication session history. The final orders of the court included quashing the decision of the examiner and referring the application back to the examiner for further consideration.

Orders