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CareFusion 303, Inc.

CareFusion 303, Inc.

Case [2023] APO 17 30 March 2023

Patentable Subject Matter

Manner of Manufacture

Technical Solution

Intellectual Property Law

Patent Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CareFusion 303, Inc. [2023] APO 17
Patent Application: 2020210162

Title:Medication preparation queue

Patent Applicant: CareFusion 303, Inc.

Delegate:Greg Powell

Decision Date: 30 March 2023

Hearing Date: 14 February 2023, by Video Conference. Further submissions filed 24 February 2023

Catchwords: PATENTS – examiner objection – whether claims are for a manner of manufacture – substance of the invention is a scheme – claims are not for a manner of manufacture – no patentable subject matter identified in the specification – application refused – issue estoppel

Representation: Patent attorneys for the applicant: Michelle Catto, Manuel Schmidt and Rowena Wilson of FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2020210162

Title:Medication preparation queue

Patent Applicant: CareFusion 303, Inc.
Date of Decision: 30 March 2023
DECISION

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 2020210162 (the present application) was filed by CareFusion 303, Inc. (the applicant) on 27 July 2020. It was filed as a divisional application of patent application 2014268828 (the parent application), shortly after the applicant requested to be heard on the parent application. The parent application was filed as a PCT application (PCT/US2014/038497) on 16 May 2014. Ultimately, the present application claims priority from US application 13/901501 filed on 23 May 2013.
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 subsection 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 22 September 2021 raising objections in relation to manner of manufacture and inventive step. The applicant responded to the first examination report on 28 March 2022 by way of written submissions and proposed amendments to the description and claims. A second examination report issued on 3 May 2022 maintaining only the objection to manner of manufacture. Another response was filed on 14 September 2022 with further arguments and amendments to the description and claims. On 21 September 2022 a third examination report issued maintaining the manner of manufacture objection. On the same day, the applicant requested to be heard. On 7 February 2023 the applicant filed written submissions (“written submissions”) for the hearing along with another set of amendments to the claims. Following the hearing, and as signalled by them during the hearing, the applicant filed another further set of amendments to the claims on 24…

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. [2023] APO 17
Case: [2023] APO 17
Decision Date: 30 March 2023

CaseChat Overview and Summary

The applicant, CareFusion 303, Inc. filed an application for a standard patent for a system for managing preparation and remote verification of a medication for a patient. The application was examined by the Australian Patent Office, and an objection was raised that the claims did not define a manner of manufacture. The applicant argued that the invention was a technical contribution that addressed a technical problem, producing a practical and useful result in the technical field of medication preparation. The delegate disagreed and found that the invention was, in substance, a mere scheme and not directed to a manner of manufacture. The applicant's submission that the claimed invention was not a mere collocation of known elements, but instead, was a cohesive system, was rejected. The delegate found that the claimed invention resulted in the presentation of administrative or business information and then the performance of an administrative verification scheme once an element of the presented information was selected. The claims did not define a manner of manufacture. The application was refused.

Orders