eBay Inc. - [2019] APO 10

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
eBay Inc. [2019] APO 10

Patent Application: 2015315634

Title:Enhanced Search Query Suggestions

Patent Applicant:                   eBay Inc.
Delegate:  M. G. Kraefft
Decision Date:  19 March 2019
Hearing Date:  Written submissions filed on 7 February 2019

Catchwords: PATENTS – section 45 – examiner’s objection – whether claimed invention is a manner of manufacture – generating enhanced search query suggestions – not evident that claimed enhancement requires more than mere generic computer implementation – claimed invention not a manner of manufacture – possibly patentable subject matter in body of specification – sub-regulation 13.4(1)(g) applied to provide applicant with three months to obtain acceptance of application.

Representation: Patent attorney for the applicant: FPA Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015315634

Title:Enhanced Search Query Suggestions

Patent Applicant: eBay Inc.
Date of Decision: 19 March 2019
DECISION
The claimed invention is not for a manner of manufacture.
There may be patentable subject matter in the body of the specification from which valid claims could be drafted to overcome the above finding.
Pursuant to sub-regulation 13.4(1)(g), the final date for acceptance is three (3) months from the date of this decision. The applicant is invited to file amendments and any supporting submissions addressing the findings in this decision. In the event that such amendments and/or submissions are filed, the response will be dealt with in the normal manner of such responses to an examiner’s report.
REASONS FOR DECISION
BACKGROUND

The present matter concerns a patent application by eBay Inc. (“the applicant”). The applicant filed the patent application on 28 August 2015. The application number is 2015315634. The application is based on two earlier US applications. The earliest claimed priority date is 11 September 2014.
The application has been subjected to four examination reports. The first two examination reports were issued on the same date. Those two reports are substantially the same aside from the second report having some minor changes of wording within an objection, and having corrections of some typographical errors that existed in the first report. The substantive objection in those reports was that the claimed invention lacked an inventive step.
The applicant subsequently filed a statement of proposed amendments to amend the claims of the specification and to amend some pages of the description.
In the third report, the examiner maintained an objection that a number of claims lacked an inventive step and introduced an objection that all the claims did not define a manner of manufacture. Despite responsive submissions from the applicant, the examiner maintained the latter objection in the fourth report.
The applicant subsequently requested to be heard.
While the final date for acceptance of the application was 17 November 2018, patent sub-regulation 13.4(1)(g) may be available to extend the time for gaining acceptance to 3 months from the date of the present decision.
SPECIFICATION
The specification describes the present invention as relating generally to generating search query suggestions and, more particularly, to enhancing search query suggestions. As background, the specification mentions…

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: eBay Inc. [2019] APO 10
Case: [2019] APO 10
Decision Date: 19 March 2019

CaseChat Overview and Summary

In the present matter, the applicant, eBay Inc., has applied for a patent for a method of generating enhanced search query suggestions. The application was objected to by the examiner on the basis that the claims did not define a manner of manufacture. The applicant requested a hearing to contest the examiner’s objections. The court found that the claimed invention was not a manner of manufacture because it was not evident that the claimed enhancement required more than mere generic computer implementation. However, the court recognised that there may be patentable subject matter in the body of the specification from which valid claims could be drafted. Pursuant to sub-regulation 13.4(1)(g), the final date for acceptance of the application is now three months from the date of this decision. The applicant is invited to file amendments and any supporting submissions addressing the findings in this decision.

Orders