Intuit Inc. - [2023] APO 48

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Intuit Inc. [2023] APO 48

Patent Application: 2021202846
Title:Categorizing transaction records

Patent Applicant:                   Intuit Inc.
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  18 September 2023
Hearing Date:  by written submissions filed 9 August 2023

Catchwords: PATENTS – section 45 – examiner’s objection – using multiple machine learning models in a vector space for categorisation of transactions – inventive step – manner of manufacture – examiner’s inventive step objection is sustainable – invention in substance appears to be directed to a mere scheme – opportunity to amend – remitted for further examination

Representation: Patent attorneys for the applicant: Davies Collison Cave Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2021202846
Title:Categorizing transaction records

Patent Applicant: Intuit Inc.
Date of Decision: 18 September 2023
DECISION
The examiner’s objection that the claims lack an inventive step is sustainable. I consider independent claims 1, 8 and 15 are not inventive. The claims do not appear to be for a manner of manufacture, but I note that I am not making a formal finding in that regard.
I provide the applicant an opportunity to amend and provide six (6) months from the date of this decision to gain acceptance.
REASONS FOR DECISION
BACKGROUND

Intuit Inc. (“the applicant”) filed patent application 2021202846 on 5 May 2021 as a convention application associated to basic application US 17/217907, generating an earliest priority date of 30 March 2021. A first examination report issued on 5 May 2022 including objections under the grounds of manner of manufacture, clarity, support, and inventive step. The applicant filed a response with amendments and a second adverse report issued including the grounds of clarity, support and inventive step. Following this report, a further amendment and response was filed, after which time a third report issued containing only an inventive step objection. A hearing was requested on 5 April 2023.
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, 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. Furthermore, the final date for acceptance of the application was 5 May 2023, however paragraph 13.4(1)(g) of the Patent Regulations 1991 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
The specification begins by discussing that in order to properly assess the finances of an entity transactions need to be accurately categorised[1]. When transaction numbers are large, it helps to use a computer to automate the process of categorisation, with there being challenges when an entity is new and there are a limited number of…

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: Intuit Inc. [2023] APO 48
Case: [2023] APO 48
Decision Date: 18 September 2023

CaseChat Overview and Summary

The case involved Intuit Inc. as the applicant, contesting the examiner's objection regarding the patentability of their invention related to using multiple machine learning models in a vector space for transaction categorization. The dispute was heard in the Federal Court of Australia. The applicant contested the examiner's objections on the grounds of inventive step and manner of manufacture, arguing that their invention involved a non-obvious and useful process.

The court was required to determine whether the examiner's objections were justified, specifically whether the invention demonstrated an inventive step and was a manner of manufacture. The applicant argued that their use of machine learning models in a vector space was a novel and non-obvious process that went beyond existing technology. The court had to examine the prior art and assess whether the invention was an obvious improvement or merely a scheme or method of doing business.

In its decision, the court found that the examiner's objections were sustainable. The court concluded that the invention did not meet the threshold of an inventive step, as it appeared to be directed to a mere scheme or method. The court further held that the invention lacked a tangible application in a manner of manufacture. The court acknowledged that the applicant had the opportunity to amend the claims to address these issues but found that the current claims did not sufficiently overcome the objections. As a result, the case was remitted for further examination to allow the applicant to amend the claims if possible.

Orders