HRB Innovations, Inc. - [2019] APO 30

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
HRB Innovations, Inc. [2019] APO 30

Patent Application: 2018206822

Title:Simplified Tax Interview

Patent Applicant:                   HRB Innovations, Inc.
Delegate:  M. G. Kraefft
Decision Date:  3 July 2019
Hearing Date:  Written submissions completed on 30 January 2019

Catchwords: PATENTS – section 45 – examiner’s objection – proposed amendments filed with submissions – whether invention is a manner of manufacture – use of cluster analysis to filter information and determine appropriate indicator variables and prototypes for simplified tax interview purposes – generating a plurality of clusters, wherein each cluster based on identified plurality of previously prepared tax returns sharing one or more indicator variables – improvement in computer technology or technical contribution to the art not apparent – application refused.

Representation: Patent attorney for the applicant: FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018206822

Title:Simplified Tax Interview

Patent Applicant: HRB Innovations, Inc.
Date of Decision: 3 July 2019
DECISION
The claimed invention is not for a manner of manufacture. Moreover, there is nothing in the body of the specification that could overcome this finding.
The application is refused.
REASONS FOR DECISION
BACKGROUND

HRB Innovations, Inc (“the applicant”) filed patent application 2018206822 (“the current application”) on 20 July 2018. The application is a divisional application based on application 2018200942 (“the parent application”). The parent application in turn is a divisional application based on application 2016201095. The latter application is based on a US application filed 24 February 2015 (“the priority date”).
The parent application was the subject of a decision, HRB Innovations, Inc., [2018] APO 63 (“the first decision”). In that decision, the delegate found that the claims of the parent application were not for a manner of manufacture and refused the application.
The current application was the subject of an examination report dated 16 October 2018. In that report, the examiner raised the objection that the application was not for a manner of manufacture for the reasons set out in the first decision as the application, at that time, was in the same terms as the parent application.
The applicant subsequently requested to be heard. Together with filing written submissions for the hearing, the applicant also filed a statement of proposed amendments to the description and claims of the specification.
SPECIFICATION
The specification describes the alleged invention as relating to accurately predicting the information that is necessary and relevant for the purpose of determining the relevant questions for a tax interview for a given user. In this way, a computer system presents only those relevant portions of the tax interview to the user without presenting the full tax interview. Paragraphs [6] and [7] of the first decision, with reference to the specification, provide further background to the alleged invention, and discuss the objective and a solution of a technological approach for performing efficient, effective and more simplified tax interviews for taxpayers.
The specification, as proposed to be amended, concludes with nine claims. Claims 1 and 3…

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: HRB Innovations, Inc. [2019] APO 30
Case: [2019] APO 30
Decision Date: 3 July 2019

CaseChat Overview and Summary

In this case, HRB Innovations, Inc. filed a patent application for a simplified tax interview system, which was ultimately refused by the Australian Patent Office. The primary issue before the delegate was whether the claimed invention constituted a "manner of manufacture" as required by section 18 of the Patents Act 1990. The delegate found that the claims did not meet this criterion, and there was no technical contribution or improvement in computer technology that would render the invention patentable.

The applicant argued that the invention involved technical steps and provided an improved user interface, which they submitted would make the invention patentable. However, the delegate found that the claimed invention merely involved generating specific groupings of data, storing associated data types, and presenting a simplified tax interview to the taxpayer. There was no enhancement of computer functionality or technical contribution to the art evident in the claims.

The delegate considered the first decision regarding the parent application, which found the claims of that application were not for a manner of manufacture. The current application, despite proposed amendments, did not change this outcome. The delegate concluded that the claimed invention was not for a manner of manufacture, and there was no patentable subject matter present in the specification. As a result, the application was refused.

The final orders of the decision were to refuse the patent application. The applicant may still have options to amend the claims and specification to attempt to meet the requirements for patentability, or appeal the decision to a higher court. However, based on the analysis in this decision, the delegate found that the claimed invention did not constitute a manner of manufacture and lacked the necessary technical contribution to warrant a patent.

Orders