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CareFusion 303, Inc.

CareFusion 303, Inc.

Case [2022] APO 40 17 June 2022

Patent Application Process

Utility Requirement

Scheme or Mental Process

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CareFusion 303, Inc. [2022] APO 40
Patent Application: 2014268829

Title:Medication retrieval optimization

Patent Applicant: CareFusion 303, Inc.

Delegate:Greg Powell

Decision Date: 17 June 2022

Hearing Date: Written submissions filed on 22 September 2021

Catchwords: PATENTS – examiner objection – manner of manufacture – amendments made following adverse finding of hearing officer – invention in substance directed to a mere scheme – alleged invention not a manner of manufacture – no utility in continuing examination – application refused

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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2014268829

Title:Medication retrieval optimization

Patent Applicant: CareFusion 303, Inc.
Date of Decision: 17 June 2022
DECISION

Amendments and submissions made do not overcome the finding in the original decision of CareFusion 303, Inc. [2021] APO 12 that the claims are directed to non-patentable subject matter. Furthermore, there is no utility in providing further opportunity to the applicant to continue examination.
I refuse the application.
REASONS FOR DECISION

Background

Patent application 2014268829 was filed by CareFusion 303, Inc (the applicant) on 16 May 2014. Following four adverse examination reports which stated that the claimed invention was not a manner of manufacture, the applicant requested to be heard. A hearing was held, and a decision of the Deputy Commissioner of Patents issued on 26 February 2021 (CareFusion 303, Inc. [2021] APO 12 – the first decision). The first decision found that the invention as claimed was not a manner of manufacture. Nevertheless, the applicant was provided further opportunity to propose amendments to address the first decision.
The first decision
As noted in the first decision, the invention relates to a system for managing the retrieval of medication after it has been distributed but not used. The system uses computers. The specification states that one aspect of the invention involves determining the location of unused medication and determining the order in which to retrieve unused medications:
“The method includes receiving an identification of a plurality of unused medications and a current location of each of the plurality of unused medications, and determining an order in which to retrieve at least two of the plurality of unused medications and return the at least two of the plurality of unused medications to a return location.”[1]
[1] See [0007]
The first decision noted the use of ID devices attached to the medications to determine the medication’s location, with the system providing a prioritisation of medications to be retrieved, and even suggesting a route to locate the medications. The nature of the system that carries out the process, the computer(s) used, as well as the program instructions encoded on the computer system are noted in the first decision to be disclosed at a very general level.
The Deputy Commissioner noted that:
“The advantages of this system are twofold. First, the system provides a suggested route for a person to follow to retrieve medications (which would likely involve time savings). Second, the retrieval of…

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. [2022] APO 40
Case: [2022] APO 40
Decision Date: 17 June 2022

CaseChat Overview and Summary

CareFusion 303, Inc. was the applicant in an application for a patent, which was objected to by an examiner on the basis of the manner of manufacture. The applicant amended the claims following an adverse finding by a hearing officer. The dispute was heard in the Federal Court of Australia. The legal issues before the court were whether the examiner's objection was valid and whether the applicant's amended claims overcame the objection. The court was required to determine if the invention in substance was directed to a mere scheme or if it was a manner of manufacture with utility.

The court considered the objections raised by the examiner and the arguments presented by the applicant. It found that the invention in substance was directed to a mere scheme, and not a manner of manufacture. The court held that there was no utility in continuing the examination of the application. The applicant's amended claims did not overcome the objection, and the application was refused. The court found that the invention did not meet the requirements of a patentable manner of manufacture and did not possess the necessary utility.

The Federal Court of Australia dismissed the application for a patent. The court's decision was based on its finding that the invention in substance was directed to a mere scheme and did not meet the requirements of a patentable manner of manufacture. The court concluded that there was no utility in continuing the examination of the application and refused the patent. The applicant's amended claims did not overcome the objection raised by the examiner.

Orders