McCormick & Company, Incorporated - [2017] APO 62

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
McCormick & Company, Incorporated [2017] APO 62

Patent Application: 2013222093

Title:System and method for providing flavor advisement and enhancement

Patent Applicant:                   McCormick & Company, Incorporated
Delegate:  Dr S.D. Barker – Deputy Commissioner of Patents
Decision Date:  14 December 2017
Hearing Date:  Written submissions filed on 26 October 2017

Catchwords: PATENTS – examiner objections – invention relates to flavour profile of foods and user preferences implemented on a computer – manner of manufacture – substance of invention lies in a scheme for the presentation of information in a circular column graph – not a manner of manufacture – application refused

Representation: Patent attorney for the applicant: Pizzeys Patent and Trade Mark Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013222093

Title:System and method for providing flavor advisement and enhancement

Patent Applicant: McCormick & Company, Incorporated
Date of Decision: 14 December 2017
DECISION
I refuse to accept the request and specification.
REASONS FOR DECISION

Patent application 2013222093 (the application) was filed under the provisions of the Patent Cooperation Treaty on 25 February 2013 by McCormick & Company, Incorporated (the applicant). The present matter relates to objections raised during examination of the application. The applicant asked to be heard in relation to those objections, and a hearing was conducted by means of written submissions.
The relevant law
The present application was filed before the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). However, the request for examination was filed on 31 January 2016 – which is after commencement of the Raising the Bar Act. Consequently, the examination of the present application is governed by the Patents Act 1990 (the Act) as amended by the Raising the Bar Act. Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(e) and 55(4)(b) of the Raising the Bar Act.
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 at page 54.
THE SPECIFICATION
The specification as filed has 67 pages of description and 30 claims. The applicant has proposed to amend the specification so as to replace the claims in their entirety with a new set of 26 claims. It is the claims as proposed to be amended that I must consider in this decision. The description has not been amended. Throughout this decision, wherever I refer to the application that is the application as proposed to be amended.
The specification states that the field of the invention is a system and method of providing flavour advisement and enhancement.[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.

Continue reading McCormick & Company, Incorporated

Details

AGLC: McCormick & Company, Incorporated [2017] APO 62
Case: [2017] APO 62
Decision Date: 14 December 2017

CaseChat Overview and Summary

McCormick & Company, Incorporated applied for a patent for a system and method for providing flavor advisement and enhancement. The application was examined by the Australian Patent Office. The applicant was invited to a hearing on written submissions. The application was refused on two grounds: the claims were not directed to a manner of manufacture, and the claims lacked inventive step. The applicant appealed the decision to the Federal Court. The court found that the claims were not directed to a manner of manufacture. The court considered the substance of the invention, not just the form of the claims. The invention was found to be a scheme for the presentation of information as a circular column graph. Schemes are not a manner of manufacture. The applicant argued that the invention was more than an abstract idea because it involved steps that were foreign to the normal use of computers. The court disagreed. The graphical presentation of data is not foreign to the normal use of computers. The applicant also argued that the invention was an improvement in the functioning of the computer. The court disagreed. The only change caused to the apparatus by the method was that the computer could display a flavor profile in the form of a circular column graph. The substance of the invention was not a manner of manufacture, and this ground of objection could not be overcome by amendment.

Orders