CareFusion 303, Inc. - [2024] APO 50

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CareFusion 303, Inc. [2024] APO 50
Patent Application: 2019218793

Title:Pharmacy predictive analytics

Patent Applicant:                   CareFusion 303, Inc.
Delegate:  Andrew Burgess
Decision Date:  6 December 2024
Hearing Date:  Written submissions filed on 13 August 2024

Catchwords: PATENTS – Examiner objection – section 45 and 49 – manner of manufacture – predication of medical prescription – use of locator to update location – administrative and logistics scheme – invention not to a manner of manufacture – no patentable subject matter disclosed – application refused

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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019218793

Title:Pharmacy predictive analytics

Patent Applicant: CareFusion 303, Inc
Date of Decision: 6 December 2024
DECISION
The invention defined in each of claims 1-17 as proposed to be amended is not a manner of manufacture. Furthermore, after consideration of the material disclosed in the specification as a whole, I am of the opinion that no allowable amendment can overcome this finding. In light of this, I have not decided with respect to inventive step.
I refuse the application.
REASONS FOR DECISION
Background

Patent application 2019218793 (the application) was filed by CareFusion 303, Inc (the Applicant) on 07 February 2019 under the provisions of the Patent Cooperation Treaty. The application claims priority from US15/891809 which was filed on 08 February 2018, and entered national phase in Australia on 29 July 2020.
On 02 February 2022, the Applicant requested expedited examination. A first examination report was issued on 27 January 2023, objecting on the grounds of lack of manner of manufacture and lack of inventive step. The Applicant filed amendments (the first amendment) and responding comments on 27 September 2023. A second examination report issued on 25 October 2023, maintaining objections of lack of manner of manufacture and inventive step, and in addition objecting that the first amendment was not allowable. The Applicant filed further amendments (the second amendment) and responding comments on 08 December 2023. A third examination report was issued on 12 January 2024, maintaining objections of lack of manner of manufacture and inventive step. The Applicant filed further amendments (the third amendment) and responding comments on 23 January 2024. On 29 January 2024, the Applicant called the examiner to see if the third amendment would be successful, but the examiner advised that there would not be time to consider the response in full within the remaining time. On the same day, the Applicant requested to be heard in relation to the outstanding objections from the third examination report.
The Applicant filed their written submissions (Applicant’s submissions or AS) on 13 August 2024.
Applicable Law and the Standard of Proof
The examination of the present application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). The standard of proof that applies to the examination of the present application is…

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 CareFusion 303, Inc.

Details

AGLC: CareFusion 303, Inc. [2024] APO 50
Case: [2024] APO 50
Decision Date: 6 December 2024

CaseChat Overview and Summary

This case involved an application for patent filed by CareFusion 303, Inc. The application related to a system for predicting medications likely to be prescribed at a healthcare facility, and stocking automated dispensing machines (ADM) accordingly. The examiner objected to the application on the basis that the invention did not constitute a manner of manufacture within the meaning of the Patents Act 1990, and therefore was not patentable subject matter. The applicant submitted that the invention involved technical aspects, including the use of a locator to determine the location of the ADM, and a lockable drawer to store medications. The delegate disagreed with the applicant. The invention was directed to a method of predicting what medications are likely to be prescribed, and stocking ADMs accordingly. While the system may use physical elements such as a locator and lockable drawers, the substance of the invention was an administrative or logistical scheme. The delegate found that the invention did not involve a manner of manufacture, and therefore was not patentable. The applicant did not identify any way in which the claims could be amended to overcome this objection, and the application was refused.

Orders