Title:Portable multifunction device with interface reconfiguration mode
Patent Applicant: Apple Inc.
Delegate: Isaac Tan
Decision Date: 8 October 2019
Hearing Date: Written Submissions filed on 28 August 2019
Catchwords: PATENTS – section 45 – examiner objection hearing – computer implemented invention – configuration of an iPhone graphical user interface – touchscreen navigation – distinct sets of icons on different screens – consideration of inventive step under section 18 – combination of document – consideration of what constitutes common general knowledge – benefit of hindsight – ubiquitousness of invention – Wayback Machine evidence – application to be accepted.
Representation: Carl Harrap, Patent Attorney of FPA Patent Attorneys Pty Ltd
Stuart Irvine, Patent Attorney of FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017202587
Title:Portable multifunction device with interface reconfiguration mode
Patent Applicant: Apple Inc.
Date of Decision: 8 October 2019
DECISION
All of the claims are novel and have an inventive step.
I accept the patent request and complete specification.
REASONS FOR DECISION
Background
Apple Inc. (Applicant) filed Australian patent application 2017202587 (application) on 19 April 2017 and pursuant to section 29A of the Patents Act 1990 (the Act), is taken to be equivalent to PCT/US2008/074625 filed under the Patent Cooperation Treaty (PCT) with an international filing date of 28 August 2008. Thus, the application claims priority from US priority document 11/849,938 having an early priority date of 4 September 2007. On 19 April 2017, the Applicant requested examination and has been subjected to three examination reports respectively dated 4 July 2018, 26 April 2019 and 4 July 2019.
On 4 July 2019, the Applicant requested to be heard. On 11 July 2019, a Delegate of the Commissioner provided the Applicant with seven days to indicate whether the Applicant wishes to be heard orally in person, or via written submissions. On 18 July 2019, the Applicant confirmed that they wished to proceed by way of written submissions. The Applicant’s written submissions was filed on 28 August 2019, and is accompanied by the following annexures:[1]
Annexure A – “iPhone User Guide”. Annexure A was also cited as D1 by the Examiner. Annexure B – “First Look iPhone 1.1.3” posted on Macworld on 16 January 2008 Annexure C – “iPhone User Guide” archived on the Wayback Machine on 11 September 2008
Annexure D – “iPhone User Guide” archived on the Wayback Machine on 16 February 2008
Applicable Law
The application was filed after 15 April 2013 and is governed by the
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. [2019] APO 44
Case
[2019] APO 44
Decision Date
CaseChat Overview and Summary
This decision concerns Australian patent application 2017202587, filed by Apple Inc. The invention relates to a portable multifunction device with interface reconfiguration mode. The applicant sought to overcome the limitations of conventional user interfaces for handheld portable devices by providing a more intuitive user interface for portable devices that enables a user to easily configure the user interface. The delegate accepted the patent application and determined that all claims were novel and had an inventive step. The examiner had previously raised objections to the patentability of the application on the basis that the invention lacked an inventive step. This decision sets out the reasons for the delegate's determination.
The primary legal issues in the case were whether the invention was novel and whether it had an inventive step. The delegate found that the invention was novel in light of the user guide provided to the applicant. The delegate found that the user guide did not suggest that a user could perform a swipe action to change the set of icons displayed on the user interface from a first set to a second set. The delegate also found that the invention had an inventive step in light of the user guide, alone or in combination with the other prior art documents. The delegate found that there was no suggestion that it would be routine to allow a user to perform a swipe action to change the set of icons displayed on the user interface from a first set to a second set. The delegate found that the other prior art documents did not indicate that the claimed invention would be obvious.
The delegate's determination was based on the evidence and arguments presented by the applicant. The delegate found that the applicant's arguments were persuasive and that the invention met the criteria for patentability. The delegate found that the invention was novel and had an inventive step, and that no other ground of objection applied. The delegate accepted the patent application and directed that the application be accepted.
This decision provides useful guidance for patent applicants seeking to obtain patent protection for computer-implemented inventions. The delegate's determination highlights the importance of establishing the problem to be solved by the invention and the common general knowledge at the priority date. The decision also demonstrates the need for patent applicants to provide clear and compelling evidence to support their arguments for patentability.