Catchwords: PATENTS – examiner objections – clarity – inventive step – manner of manufacture – amended claims overcome examiner’s clarity objection but remain unclear – amended claims overcome examiner’s inventive step objection – claims are not directed to a manner of manufacture – no patentable subject matter identified in the specification – application refused

Representation: Patent attorney for the applicant: FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2021200597

Title:Processing a mobile payload

Patent Applicant: Block, Inc.
Date of Decision: 10 May 2023
DECISION

The clarity and inventive step objections raised by the examiner cannot be sustained in light of the amended claims.
Claims 3, 9 and 15, as proposed to be amended, are not clear.
The claims of the application, as proposed to be amended, do not define a manner of manufacture.
I do not see any subject matter in the body of the specification from which valid claims could be drafted to overcome this finding.
I refuse the application.
REASONS FOR DECISION

Background

Patent application 2021200597 (the present application) was filed by Square, Inc. on 29 January 2021. Square, Inc. subsequently changed its name to Block, Inc. (the applicant). The present application was filed as a divisional application of patent application 2017322412 (the parent application). The parent application was filed as a PCT application (PCT/US2017/050719) on 8 September 2017. Ultimately, the present application claims priority from several US applications, with the earliest being filed on 12 September 2016.
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 13 September 2021 raising objections in relation to section 40 and inventive step. The applicant responded to the first examination report on 12 January 2022 by way of written submissions and proposed amendments to the description and claims. A second examination report issued on 9 February 2022 containing a section 40 objection but reserving opinion on novelty and inventive step. A response was filed on 20 May 2022 with further arguments and amendments to the claims. On 1 June 2022 a third examination report issued containing objections with respect to manner of manufacture, section 40, and inventive step. On 12 September 2022, the applicant requested to be heard. On 5 April 2023 the applicant filed written submissions (“written submissions

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 Block, Inc.

Details

AGLC: Block, Inc. [2023] APO 27
Case: [2023] APO 27
Decision Date: 10 May 2023

CaseChat Overview and Summary

Block, Inc. is the applicant for a patent for a method for processing a payment request between two parties. The application was filed as a divisional application of an earlier patent application and claims priority from several US applications. The invention provides a payment request scheme where the payor sends a message to a payment processing server (PPS) with the details of the payment. The PPS generates a payload with a hyperlink and sends this to the payor’s mobile device. The payor sends this payload to the recipient’s mobile device. When the recipient activates the payload, this triggers the PPS to complete the transaction. The examiner raised objections to the application on the grounds that the claims were unclear, lacked an inventive step, and were not directed to a manner of manufacture. The applicant responded to these objections by amending the claims and submitting arguments in support of the application. The delegate found that the amended claims overcame the objections of clarity and inventive step but found that the claims were not directed to a manner of manufacture. The delegate refused the application. The applicant may appeal the decision to the Full Federal Court.

Orders