Freeport-McMoRan Inc. - [2025] APO 23

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Freeport-McMoRan Inc. [2025] APO 23

Patent Application: 2023203092

Title:Methods and systems for deploying equipment required to meet defined production targets

Patent Applicant:                   Freeport-McMoRan Inc.
Delegate:  Tim Gillett
Decision Date:  18 July 2025
Hearing Date:  Written submissions filed on 18 December 2024

Catchwords: Patents – section 45 – examiner’s objection – not a manner of manufacture – mining equipment – Monte Carlo – simulation – forecasting – production target – remit to examination – inventive step

Representation: Patent attorney for the Applicant: GLMR

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2023203092

Title:Methods and systems for deploying equipment required to meet defined production targets

Patent Applicant:                   Freeport-McMoRan Inc.
Date of Decision:                   18 July 2025
DECISION
Claim 1 of the application, as proposed to be amended is not for a manner of manufacture.
The application is remitted for further examination with a focus upon inventive step and manner of manufacture.
REASONS FOR DECISION
Background

Patent application 2023203092 (‘the present application’) was filed on 17 May 2023 in the name of Freeport-McMoRan Inc. (‘the Applicant’). The application was filed as a divisional application of 2021204532 (‘the parent’), the national phase entry of PCT/US2021/022494.
Four examination reports have been issued for the present application, each with a single objection that the application is not for a manner of manufacture. Similarly, four examination reports were issued for the parent application with each one objecting that the application is not for a manner of manufacture.
One inventive step objection was raised in the first report for the parent application. The Applicant responded to that objection, and it has not been raised since.
Amendments to the present application have been proposed on 20 June 2023, 9 April 2024, and 26 August 2024 with no objection taken. I have no reason to believe that those amendments are not allowable and as such, all further references will be to the specification as proposed to be amended on 26 August 2024.
The Applicant requested to be heard on 4 September 2024 and was invited to provide submissions by 20 December 2024. The Applicant provided submissions on 18 December 2024.
The examination of the present application is governed by the Patents Act 1990 (‘the Act’) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (‘the Raising the Bar Act’) as the application was filed after 15 April 2013. Thus, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application (subsection 49(2)).
Description
The description begins by setting out the technical field as follows on page 1:
The present invention relates to mining operations in general and more particularly to
methods and systems for deploying equipment required to meet defined production targets.

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: Freeport-McMoRan Inc. [2025] APO 23
Case: [2025] APO 23
Decision Date: 18 July 2025

CaseChat Overview and Summary

The case involves a patent application by Freeport-McMoRan Inc. for a system and method for deploying equipment to meet production targets in mining operations. The application was objected to by the examiner on the basis that it was not for a manner of manufacture as required by section 18(1)(a) of the Patents Act 1990. The Applicant appealed this decision and the matter was heard on written submissions. The delegate found that the application was not for a manner of manufacture and remitted the application for further examination.

The key issue was whether the claimed invention was a manner of manufacture. The applicant argued that the substance of the invention was the optimal deployment of mining equipment to meet production targets, which occurred outside of the computer. The delegate found that the claimed invention was not a manner of manufacture because it lacked a technical contribution. While the invention used a stochastic simulator, the claims lacked detail on what was being simulated and how it was done. The delegate concluded that the claimed invention was not patentable subject matter.

The delegate also noted that the claimed invention may not be inventive over the prior art. The delegate provided references for the applicant to consider during further examination. The delegate remitted the application for further examination and gave the applicant six months to amend the application and address the issues raised.

Orders