Catchwords: PATENTS - standard patent – examiner objection – inventive step - manner of manufacture – substance of the invention resides in a logistics scheme whose effectiveness relies upon business innovation rather than technical intervention - all claims lack a manner of manufacture – no patentable subject matter in application – application refused

Representation: Patent attorney for the applicant: FAL IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019200581

Title:LAST MILE LOGISTICS

Patent Applicant: DEI GRATIA PTY LTD
Date of Decision: 3 October 2023

DECISION
The claims of the application do not lack an inventive step in light of the documents raised during examination. However, the claimed invention is not for a manner of manufacture, and I see no patentable subject matter in the specification. I refuse the application.
REASONS FOR DECISION
Background

The present matter concerns patent application 2019200581 (“the application”) by Dei Gratia Pty Ltd. (“the applicant”). The application was filed 30 January 2019 as a divisional application. The application is the fourth incarnation in the family including parent application 2017201029, grandparent application 2015201344, and great-grandparent application 2012229868 itself a national phase entry of PCT/AU2012/000161 consequently providing the application with a priority date of 17 March 2011.
Prior to the present application, there have been eight adverse reports on the various parent applications. All eight adverse reports raised an objection for lack of inventive step. Six recent reports have also raised an objection that the claimed invention is not to a manner of manufacture because the claimed invention is a collocation. All three earlier applications lapsed due to failure to gain acceptance with the prescribed time period.
The application has been the subject of three examination reports, after which on 21 September 2020 the applicant wrote to the Commissioner requesting to be heard in relation to the matter in the third report, namely the outstanding objection that the claimed invention was to a collocation and lacked an inventive step. I heard this matter via written submissions filed 10 December 2020 and my decision issued on 16 March 2021, DEI GRATIA PTY LTD [2021] APO 14; 163 IPR 282 (the first decision). My first decision found the claimed invention involved an inventive step over D1 and D2 cited during examination and determined the claimed invention was not a collocation. However, I identified additional prior art that appeared relevant for inventive step assessment and referred the application back to examination. In addition, I requested consideration of whether the claimed invention is directed to a computer implemented scheme or business method and hence not a manner of manufacture. Following Reg 13.4(1)(g) and (3) the period to gain acceptance was extended by 6 months to 16 September 2021.
A fourth and a fifth adverse…

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: DEI GRATIA PTY LTD [2023] APO 50
Case: [2023] APO 50
Decision Date: 3 October 2023

CaseChat Overview and Summary

This decision concerns a patent application filed by Dei Gratia Pty Ltd for a last mile logistics system. The application was refused by the delegate who found that the invention was not a manner of manufacture and did not involve an inventive step. The applicant appealed the decision but the appeal was dismissed by the Commissioner. The key issues were whether the claimed invention was directed to a manner of manufacture and whether it involved an inventive step. The court found that the invention was not a manner of manufacture as it did not involve a technical innovation, but rather a logistics scheme based on business decisions to improve customer experience. The court also found that the claimed invention did not involve an inventive step as it would have been obvious to combine the prior art references D1 and D3. The application was therefore refused.

Orders