Groupon, Inc.

[2022] APO 30

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Groupon, Inc. [2022] APO 30

Patent Application:                2020200206

Title:Consumer device payment token management

Patent Applicant:                   Groupon, Inc.

Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents

Decision Date:  28 April 2022

Hearing Date:  Written submissions completed 24 March 2022

Catchwords:  PATENTS – section 45 – examiner’s objection – a method using tokens to facilitate point-of-sale transactions using electronic devices – manner of manufacture – invention in substance directed to a mere scheme – application refused

Representation:  Spruson & Ferguson

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2020200206

Title:Consumer device payment token management

Patent Applicant:                   Groupon, Inc.

Date of Decision:                   28 April 2022

DECISION

The claims of the application are not directed to a manner of manufacture, and I see no patentable subject matter in the specification.  The application is refused.

REASONS FOR DECISION

BACKGROUND

1. Groupon, Inc. (the applicant) filed patent application 2020200206 on 10 January 2020 as a divisional application of application 2014214650.  It has an earliest priority date of 11 February 2013.  The parent application was subject to two examination reports before lapsing, while the present application received three adverse examination reports.  At all times the claims have received objection under the ground of manner of manufacture.   On 18 November 2021, following the latest report on the present application, the applicant requested to be heard.  In that report, objections that the claims were not clear and that the claims were not for a manner of manufacture were present.  The applicant was invited to file written submissions which were duly filed on 24 March 2022 along with proposed amendments.

2. 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.  Also, the final date for acceptance of the application is 5 March 2022, however paragraph 13.4(1)(g) of the Patent Regulations is available to extend the time for gaining acceptance to 3 months (or longer if appropriate under sub-regulation 13.4(3)) from the date of the present decision.

   SPECIFICATION

3. According to the specification at [0002], the embodiments of the invention relate, generally, to token management for secure transactions using a secure device.  While the “BACKGROUND” section of the specification provides little discussion of the state of the art at the priority date of the present invention, it notes that financial transactions between merchants and consumers typically require a form of payment to be presented to the merchant.  The specification discusses devices may be used at a point-of-sale (e.g., point-of-sale devises, such as cash registers, credit card readers, etc.).  It is noted that there is a desire for improvement in current systems.  The specification then follows with a number of paragraphs and consistory statements essentially broadly summarising the invention.  At paragraph [0045] an “Overview” section of the specification provides a neat summary of the concepts of the…