Mastercard International Incorporated - [2023] APO 42

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mastercard International Incorporated [2023] APO 42
Patent Application: 2020239627

Title:ACH transaction authentication systems and methods

Patent Applicant: Mastercard International Incorporated

Delegate:B. Norman

Decision Date: 2 August 2023

Hearing Date: Written submissions filed on 2 March 2023

Catchwords: PATENTS - examiner objection – whether claims are for a manner of manufacture – substance of the invention is a scheme – claims are not for a manner of manufacture – no patentable subject matter identified in the specification – application refused

Representation: Patent attorney for the applicant: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2020239627

Title:ACH transaction authentication systems and methods

Patent Applicant: Mastercard International Incorporated
Date of Decision: 2 August 2023

DECISION
The claims of the application, as proposed to be amended, do not define a manner of manufacture.
I do not see any subject matter in the body of the specification from which valid claims could be drafted to overcome this finding.
I refuse the application.

REASONS FOR DECISION
Background

Patent application 2020239627 (the application) was filed on 21 September 2020 by Mastercard International Incorporated (the applicant) as a divisional application of 2018247245 (the parent). The parent claims priority from US Application 15/806,113 which was filed on 7 November 2017. Hence, the earliest claimed priority date of the application is 7 November 2017.
A request for examination of the application was filed on 2 December 2020, along with a request for the postponement of acceptance.
The first examination report was issued on 26 November 2021 raising objections regarding both manner of manufacture and inventive step, the applicant responding with submissions and proposed amendments to the claims on 20 July 2022. After a second examination report maintaining the objection regarding manner of manufacture was issued on 18 August 2022, the applicant requested to be heard on 3 November 2022.
The applicant was invited to provide written submissions on 2 February 2023, and the applicant subsequently provided them on 2 March 2023.
For the benefit of the applicant, this decision is written with respect to the specification as proposed to be amended, without conclusively considering the allowability of the amendment as this will not affect the outcome of the decision.
Applicable Law
Because the application was filed after 15 April 2013 examination is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Accordingly, the standard of proof that applies is the balance of probabilities. This means that if I am satisfied, on the balance of probabilities, that a ground of objection exists, I can refuse the application. However, I will only refuse the application if I am also satisfied that providing the applicant with an opportunity to amend will serve no useful purpose; for example, if I consider that any potential negative findings are not rectifiable by an allowable amendment.
The Invention as Described
The application is directed to payment transactions made over an automated clearing house…

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: Mastercard International Incorporated [2023] APO 42
Case: [2023] APO 42
Decision Date: 2 August 2023

CaseChat Overview and Summary

Mastercard International Incorporated filed an application for a patent in Australia, directed to a method and system for authenticating ACH transactions. The application was objected to by the examiner on the basis that the claims were not for a manner of manufacture, and the applicant was given the opportunity to be heard. The applicant provided written submissions, but the delegate found that the claims were not for a manner of manufacture and refused the application. The delegate considered the claims to define a method of authenticating ACH transactions using a computer system, but found that the substance of the invention was a business method implemented using generic computing devices and not a manner of manufacture. The delegate found that the claimed invention did not involve any technological problem or improvement in computer technology and was not patentable subject matter. The delegate refused the application and found that any potential amendments would not overcome the deficiencies.

Orders