Catchwords: PATENTS – section 45 – examiner objection hearing – computer implemented invention – manner of manufacture under section 18(1)(a) – request to be heard after being remitted to examination following an earlier decision – graphical user interface – definition of user interface objects – starting point depends on a construction of the relevant claims read in light of the specification as a whole and the relevant prior art – assessment of the substance should be approached with a holistic point of view – substance of the invention relates to how a user interface object is generated – the computational burden in producing a user interface object is optimised – state of the art suggests that the invention described in the specification is technical – application directed to proceed to acceptance
Anthony Selleck, Patent Attorney of FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015298710
Title:Context-specific user interfaces
Patent Applicant: Apple Inc.
Date of Decision: 19 July 2019
DECISION
The claimed invention is directed towards a manner of manufacture.
I direct that the application be accepted.
REASONS FOR DECISION
Background
Australian patent application 2015298710 (application) was filed on 7 June 2015 in the name of Apple Inc. (Applicant) and pursuant to section 29A of the Patents Act 1990 (the Act), is taken to be equivalent to PCT/US2015/034604 filed under the Patent Cooperation Treaty (PCT) with an international filing date of 7 June 2015. Thus, the application claims priority from one of three US priority documents of which, the earliest one was filed on 2 August 2014.
On 20 August 2018, Apple Inc. (earlier decision) was issued pursuant to section 45 of theAct, and provides an outline of the history of the application up to this date.[1] Due to a lack of evidence as to the state of the art at the priority date, the question as to whether the invention as described in the specification, is directed towards a manner of manufacture, was left undetermined. Specifically, the state of the art at the priority date, relating to producing user interface objects using animation sequences was left open. Therefore, I considered it appropriate that examination of the application continued and hence, I remitted the application back to examination.[2]
Following the earlier decision, two examination reports were issued, respectively, on 24 September 2018 and 6 November 2018. However, for reasons that will discussed later, the examiner remained unsatisfied that the sole objection, that the claims was not directed towards patentable subject matter, had been overcome. On 20 November 2018, the Applicant requested to be heard and on 27 November 2018, was advised that 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 32
Case
[2019] APO 32
Decision Date
CaseChat Overview and Summary
In the matter of Apple Inc., the dispute centred on a patent application for a computer-implemented invention related to a graphical user interface. The case was heard by the Administrative Review Division of the Australian Patent Office. The primary issue before the court was whether the invention was a manner of manufacture under section 18(1)(a) of the relevant legislation. The court had to determine if the invention was a technical process given the background knowledge and the claims made in the patent application.
The court began by examining the claims and the specification to ascertain the substance of the invention. It was noted that the starting point for this analysis was the construction of the claims in light of the specification and the relevant prior art. The court highlighted the importance of adopting a holistic approach in assessing the substance of the invention. It was determined that the invention related to the generation of a user interface object in a way that optimised the computational burden. The court found that the state of the art indicated that the invention described in the specification was indeed technical in nature.
Having considered the evidence and the arguments presented, the court concluded that the invention met the criteria for being a manner of manufacture under section 18(1)(a). The court found that the invention involved a technical process that was not excluded under the relevant provisions of the legislation. Consequently, the application was directed to proceed to acceptance.