MasterCard International Incorporated - [2022] APO 80

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
MasterCard International Incorporated [2022] APO 80

Patent Application: 2019272056

Title:A system and method of managing data injection into an executing data processing system

Patent Applicant:                   MasterCard International Incorporated
Delegate:  Dr A. Lim
Decision Date:  7 December 2022
Hearing Date:  Written submissions filed on 04 April 2022

Catchwords: PATENTS – examiner objection – whether the invention is a manner of manufacture – claim language does not definitively claim a way in which the method is carried out by the computer – defining an idea of using computer technologies without further definition of how the technologies facilitate performing the claimed method remains an idea – balance of considerations indicates that the substance of the invention as claimed is an idea – possibility of disturbing the balance of considerations due to the way the invention is described in the specification – opportunity to amend

Representation: Patent attorney for the applicant: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019272056

Title:A system and method of managing data injection into an executing data processing system

Patent Applicant: MasterCard International Incorporated
Date of Decision: 7 December 2022
DECISION
I find the invention claimed in each of claims 1-20 of patent application 2019272056 is not for a manner of manufacture. However, it may be possible to amend the claims to correct this deficiency. In accordance with regulation 13.4, the final date of acceptance of this application is six (6) months from the date of this decision.
REASONS FOR DECISION
Background

Patent application 2019272056 (the present application) was filed by MasterCard International Incorporated (the applicant) on 29 November 2019. The patent request claims divisional status from patent application 2016291639 (the parent) which has lapsed because of failure to gain acceptance by the final date for acceptance. The parent is a national phase entry of international patent application PCT/US2016/041964 filed on 13 July 2016. The present application claims priority from US patent application 14/798,191, filed on 13 July 2015.
Since the present application was filed after 15 April 2013, this application 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 to the examination of the present application is the balance of probabilities. I must accept the present application if satisfied on the balance of probabilities that the application complies with the Act.[1] If I am not so satisfied, then I can refuse the application.[2]
[1] Section 49 of the Act as amended.
[2] Explanatory Memorandum to the Raising the Bar Bill, item 14.
A first examination report was issued on 14 December 2020 raising a lack of manner of manufacture, regarding all the claims, as the only objection. The Examiner noted in the first examination report that the applicant’s submissions and amendments in the parent application had been considered and the Examiner maintained the objection from the second examination report (which was also the last examination report)…

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

Case: [2022] APO 80
Decision Date: 7 December 2022

CaseChat Overview and Summary

The decision concerns a patent application filed by MasterCard International Incorporated for a method of managing data injection into an executing data processing system. The application was examined by the Australian Patent Office, and the Examiner raised an objection that the invention did not constitute a manner of manufacture. The applicant argued that the invention was patentable subject matter, but the Examiner maintained the objection, and the applicant requested a hearing. The Delegate considered the objection and found that the invention claimed in the application did not constitute a manner of manufacture, but it may be possible to amend the claims to correct this deficiency. The Delegate considered the scope of the claims and the description of the invention in the specification and concluded that the claims did not definitively claim a way the conventional technical means were utilised to facilitate the method in a computer. The Delegate found that the substance of the invention as claimed did not rise above an idea and did not provide a technical solution to the stated problem. The Delegate concluded that the balance of considerations indicated that the substance of the invention as claimed was an idea and not a manner of manufacture. The Delegate allowed the applicant an opportunity to propose amendments to the claims to more definitively link the way the computer technologies were utilised in the method to address the stated problems. The final date for acceptance of the application was extended to six months from the date of the decision.

Orders