Caroma Industries Limited - [2024] APO 55

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Caroma Industries Limited [2024] APO 55

Patent Application: 2021245125

Title:Maintenance management system and method

Patent Applicant: Caroma Industries Limited

Delegate:Anish Singh

Decision Date: 23 December 2024

Hearing Date: Written submissions filed on 1 March 2024

Catchwords: PATENTS – section 45 – examiner’s objection – maintenance management system – components usage data – location – minimise travel time – geographical mapping – manner of manufacture – invention in substance directed to an administrative scheme – application refused – inventive step not considered

Representation: Patent attorney for the applicant: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2021245125

Title:Maintenance management system and method

Patent Applicant: Caroma Industries Limited
Date of Decision: 23 December 2024
DECISION

The invention defined in each of claims 1-14, as proposed to be amended, do not define 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, it is unnecessary to make a decision with respect to inventive step.

I refuse the application.
REASONS FOR DECISION

Background

Patent application 2021245125 (the application) by Caroma Industries Limited (the applicant) was filed on 6 October 2021 as a divisional application from parent application 2018221877. Consequently, the application claims an earliest priority date of 16 February 2017. Examination on the application was requested on 22 December 2021.

There were three adverse examination reports on the parent application. These three adverse examination reports on the parent application together included objections with respect to manner of manufacture, novelty, inventive step, and s40. The parent application lapsed for failing to gain acceptance by the due date.
Examination report No. 1 on the application was issued on 30 November 2022. The report contains objections with respect to manner of manufacture, novelty, inventive step, and an objection under Subsection 64(2). A response to Examination report No. 1 was filed on 4 August 2023 with proposed amendments. In the first statement of proposed amendments to the specification of the application (the specification), the applicant proposed, under items 1 and 2, amendments to the description and claims.

Examination report No. 2 on the application was issued on 29 August 2023. The report contains objections with respect to allowability of proposed amendments, manner of manufacture, clarity, and inventive step. A response to Examination report No. 2 was filed on 13 October 2023 with proposed amendments. In the second statement of proposed amendments to the specification, the applicant proposed, under items 3 and 4, amendments to the description and claims.
Examination report No. 3 on the application was issued on 7 November 2023. The report contains objections with respect to manner of manufacture and inventive step. A response to Examination report No. 3 was filed on 15 November 2023 with proposed amendments. In the third statement of proposed amendments to the specification, the applicant proposed under item 5, amendments to the claims.
Examination…

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.

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Details

AGLC: Caroma Industries Limited [2024] APO 55
Case: [2024] APO 55
Decision Date: 23 December 2024

CaseChat Overview and Summary

The case involves a patent application by Caroma Industries Limited for a maintenance management system and method. The application was filed on 6 October 2021, with an earliest priority date of 16 February 2017. The application faced multiple examination reports raising objections regarding manner of manufacture, novelty, inventive step, and other issues. The applicant proposed several amendments to the claims and description, but the examiner maintained that the claims did not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. The examiner concluded that the invention was essentially an administrative scheme for managing maintenance based on sensor data, lacking any inventive step.

The court considered the relevant principles from several case decisions, emphasizing that a patentable invention must involve more than an abstract idea or scheme and must demonstrate technical ingenuity in its implementation. The applicant argued that the invention produced several technical effects, but the court found that these effects were administrative in nature and did not represent improvements in the functioning of the computer or the technology involved. The court concluded that the invention was a mere administrative scheme implemented using generic technology for well-known purposes, and therefore did not define a manner of manufacture.

Based on this finding, the court decided to refuse the application, noting that further examination would not serve any useful purpose. The court's decision hinged on the interpretation of the invention as a matter of substance rather than form, and the absence of any technical ingenuity in the use of the computer technology. The court did not find it necessary to determine the inventive step as the primary issue was the patentable subject matter.

Orders