Hearing Date: Written Submissions filed 21 September 2018
Catchwords: PATENTS – section 45 – examiner objection hearing – computer implemented invention – novelty and inventive step under section 18(1)(b) – amendments considered under section 102 – evidence submitted – graphical user interface – invention allows communication between different instant messaging services and aggregation of the communication history – claims are novel – unable to be satisfied that on balance, the claims are inventive – application to be remitted back to examination – applicant is provided a period of six (6) months to attain acceptance pursuant to sub-regulation 13.4(3)
Representation: Carl Harrap, Patent Attorney of FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016201444
Title:Unified communication application
Patent Applicant: Apple Inc.
Date of Decision: 17 December 2018
DECISION
All of the claims are novel. None of the claims are inventive.
Under sub-regulation 13.4(3), the applicant has six (6) months from the date of this decision to attain acceptance of the application.
REASONS FOR DECISION
Background
Apple Inc. (Applicant) filed patent application 2016201444 (application) on 4 March 2016 as a divisional of patent application 2013214758 (‘758 application). The ‘758 application was filed on 4 February 2013 as international application PCT/US2013/024653 filed under the Patent Cooperation Treaty, and claims a priority date of 5 February 2012.
The Applicant requested examination of the application on 4 March 2016, and has been subjected to four (4) examination reports respectively dated 9 March 2017, 1 August 2017, 18 December 2017 and 16 February 2018. On 6 March 2018, three days before the final date of acceptance, the Applicant requested to be heard.
In response to the request to be heard, the Applicant was invited to provide written submissions. The Applicant’s written submissions were filed on 21 September 2018, and are accompanied with proposed amendments to the description and claims of the specification.
Applicable Law
The application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations1991 (the Regulations) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.
Thus the standard of proof that applies in the present case is the balance of probabilities. I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the applications.
Evidence and Submissions
The written submissions filed on 21 September 2018 were accompanied with a declaration by Professor Scott R. Klemmer, declared and dated 10…
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.
Sign in free to access the full text
Details
AGLC
Apple Inc. [2018] APO 91
Case
[2018] APO 91
Decision Date
CaseChat Overview and Summary
The patent application 2016201444 (application) by Apple Inc. was the subject of an examiner objection hearing. The application claimed an invention for a unified communication application which allowed communication between different instant messaging services and aggregation of the communication history. The application was filed as a divisional of patent application 2013214758. The application has been subjected to four examination reports. The Applicant requested a hearing, and subsequently filed written submissions and proposed amendments to the description and claims of the specification. The Applicant submitted that the claims are novel and inventive over the prior art. The Applicant submitted that the invention is a unified communication application which allows communication between different instant messaging services and aggregation of the communication history. The Applicant submitted that the claims are novel over United States Patent Application 2004/0054737 A1 (Daniell) and United States Patent 7783023 B2 (Unison). The Applicant submitted that the claims are inventive over Daniell and Unison. The Applicant submitted that the prior art did not disclose a combined communication history which includes aggregating and interleaving messages from a first communication history and a second communication history. The Applicant submitted that it is not obvious for a person skilled in the art to combine the systems of Unison or Daniell, in order to produce a combined communications history, produced from a first communication history and a second communication history, where all of the messages between a first user and a second user are interleaved. The Delegate found that all of the claims are novel. The Delegate found that the claims are not inventive. The Delegate was unable to be satisfied that the claims contain an inventive step. The Delegate remitted the application back to examination. The Applicant has a period of six (6) months to attain acceptance of the application.