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Apple Inc.

Apple Inc.

Case [2018] APO 54 20 August 2018

Patent Law

Computer Implemented Inventions

Patent Examination

Opportunity to Amend

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2018] APO 54

Patent Application: 2015298710

Title:Context-specific user interfaces

Patent Applicant:                   Apple Inc.
Delegate:  Isaac Tan
Decision Date:  20 August 2018
Hearing Date:  17 May 2018 in Melbourne, VIC

Catchwords: PATENTS – section 45 – examiner objection hearing – manner of manufacture under section 18(1)(a) – computer implemented invention – graphical user interface – substance of the invention relates to the generation of a user interface object – production of an animation sequence – the computational burden in producing a user interface object is optimised – state of the art undetermined – unable to determine if the invention described in the specification are directed towards a manner of manufacture – claims are not directed towards a manner of manufacture – opportunity to amend – applicant is provided a period of three (3) months to attain acceptance

Representation: Thor North, Patent Attorney of FPA Patent Attorneys
Anthony Selleck, Patent Attorney of FPA Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015298710

Title:Context-specific user interfaces

Patent Applicant: Apple Inc.
Date of Decision: 20 August 2018
DECISION
The claimed invention is not for a manner of manufacture.
Under sub-regulation 13.4(1)(g), the applicant has three (3) months from the date of this decision to attain acceptance of the application.
REASONS FOR DECISION
Background

Australian patent application 2015298710 (the “application”) was filed on 7 June 2015 in the name of Apple Inc. (the “Applicant”). The application claims a priority date of 2 August 2014 from international application PCT/US2015/034604 filed under the Patent Cooperation Treaty (“PCT”) with an international filing date of 7 June 2015.
On 20 January 2017, the Applicant filed a request for accelerated examination under the Global Patent Prosecution Highway program (“GPPH”). The GPPH request refers to examination conducted by the Danish Patent and Trademark Office, and is accompanied with a Statement of Proposed Amendments to amend the claims of the application to correspond to one or more of the claims indicated as allowable by the Danish Patent and Trademark Office.
A first examination report was issued on 15 February 2017. On 13 April 2017, without any response from the applicant in relation to the first report, a second examination report was issued. The second report maintained all of the objections raised in the first report while adding a new ground of objection under the heading “Patentable subject matter”. The report also contains the following explanation:
“I note that a first report on this application was issued on 15 February 2017. This second report has been issued as a result of an internal review process. The results of the internal review have been fully considered and as a result this report has been generated. You only need to respond to the issues raised in this report.
I apologise for any inconvenience that raising new objections at this stage may have caused.”
On 14 February 2018, the Applicant filed proposed amendments to address the objections raised in the first…

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. [2018] APO 54
Case: [2018] APO 54
Decision Date: 20 August 2018

CaseChat Overview and Summary

Apple Inc. sought to patent a computer-implemented invention involving a graphical user interface, specifically focusing on the generation of a user interface object and the production of an animation sequence. The dispute was heard in the Australian Patent Office, where the examiner raised objections to the patent application under section 45. The primary issue for the court was whether the invention described in the patent specification met the criteria of a "manner of manufacture" under section 18(1)(a) of the relevant legislation. This required the court to determine if the invention's substance related to the generation of a user interface object and whether it addressed the optimisation of the computational burden in producing the user interface object.

The court examined the specification to ascertain if the invention was indeed a manner of manufacture. It was noted that the state of the art was undetermined, making it challenging to assess if the invention was novel and inventive. The court concluded that the invention described in the specification did not appear to be directed towards a manner of manufacture. The claims were not explicitly directed to this aspect, leaving room for ambiguity. The court acknowledged that the applicant had an opportunity to amend the claims and specifications to clarify the nature of the invention. Consequently, the court granted the applicant a period of three months to revise the application and attain acceptance.

The court's reasoning was grounded in the need for clarity and precision in patent applications. By granting a three-month period for amendment, the court provided Apple Inc. with an opportunity to address the examiner's concerns and ensure that the patent application met the statutory requirements. This decision underscored the importance of specificity in patent claims, particularly in complex technological fields. Ultimately, the court's ruling aimed to facilitate a fair and thorough examination of the patent application, aligning with the objectives of patent law to promote innovation while ensuring clarity and precision.

Orders