James McHarg Fitzsimons - [2023] APO 67

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

James McHarg Fitzsimons [2023] APO 67

Patent Application: 2017201980

Title:System of advanced features for email

Patent Applicant: James McHarg Fitzsimons

Delegate:Anish Singh

Decision Date: 22 December 2023

Hearing Date: Written submissions filed on 29 August 2023

Catchwords: PATENTS – section 45 – examiner’s objection – advanced features for email – management of emails – reply to all – manner of manufacture – invention in substance directed to a scheme – application refused – lack of unity and inventive step not considered

Representation: Patent attorney for the applicant: Wallington-Dummer

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2017201980

Title:System of advanced features for email

Patent Applicant: James McHarg Fitzsimons
Date of Decision: 22 December 2023

DECISION

The claims, as proposed to be amended, do not define a manner of manufacture. The matter

described in the body of the specification provides no material that could result in allowable amendments to the claims overcoming this finding.

I refuse the application.

REASONS FOR DECISION

Background

Patent application 2017201980 (the application) by James McHarg Fitzsimons (the applicant) was filed on 23 March 2017.

The application was subjected to one examination report only. Examination report no. 1, issued on 23 February 2022, contains objections with respect to manner of manufacture, lack of unity, and inventive step. The applicant did not respond to this report. Instead, on 23 February 2023, the applicant requested to be heard with respect to examination report no. 1.
The hearing was conducted by way of written submissions. On 29 August 2023, the applicant filed written submissions (the applicant’s submissions) and proposed amendments to the specification.
The final date for acceptance of the application was 23 February 2023, however, paragraph 13.4(1)(g) of the Patents Regulations 1991 (the Regulations) may be available to extend the time for gaining acceptance to three (3) months (or longer under subregulation 13.4(3)) from the date of the present decision.

The specification

The proposed amendments

The amendments proposed on 29 August 2023 are directed to deleting all description pages 1 to 21 as filed and substituting them with new pages 1 to 15, and deleting all claim pages 22 to 27 as filed and substituting them with new pages 16 to 18.

I do not need to decide conclusively whether the proposed amendments are allowable as it will not affect the outcome of my decision. Nonetheless, the amendments appear allowable, and for the benefit of the applicant, I will consider the specification as proposed to be amended.

The body of the specification

Paragraph [0001] of the specification outlines the field of the alleged invention. In particular, it states:

"The present invention relates to the field of email transmission and, more particularly, but not exclusively, to the transmission and reception of emails whereby access to and/or transmission of data associated with selected parties to the transmission is controlled.”

Several issues with the existing email systems have been identified in the specification and summarised in (a) to (c) below.…

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: James McHarg Fitzsimons [2023] APO 67
Case: [2023] APO 67
Decision Date: 22 December 2023

CaseChat Overview and Summary

The applicant, James McHarg Fitzsimons, filed an application for a patent for a system of advanced features for email. The application was refused by the Delegate, Anish Singh, on the basis that the invention was not for a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. The applicant did not respond to the examiner's report but requested a hearing. The hearing was conducted through written submissions. The applicant proposed amendments to the specification and claims but did not address the examiner's objection with respect to manner of manufacture. The Delegate found that the alleged invention was not for a manner of manufacture as it did not result in an improvement in the functioning of the computer, irrespective of the data being processed. The alleged invention merely required generic computer implementation and the computer was merely an intermediary configured to carry out the method, but adding nothing to the substance of the idea. The Delegate concluded that the alleged invention was simply instructions to apply an abstract administrative idea utilising what is characterised as standard computer technology. The Delegate refused the application.

Orders