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Paige.AI, Inc.

Paige.AI, Inc.

Case [2023] APO 44 4 September 2023

Patent Law

Manner of Manufacture

Inventive Step

Sufficiency

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Paige.AI, Inc. [2023] APO 44
Patent Application: 2020276112

Title:Systems and methods for processing images to classify the processed images for digital pathology

Patent Applicant:                   Paige.AI, Inc.
Delegate:  Andrew Burgess
Decision Date:  4 September 2023
Hearing Date:  Written submissions filed on 2 May 2023

Catchwords: PATENTS – Examiner objection – quality assurance of pathology samples with a machine learning model - claims lack manner of manufacture – claims lack inventive step – opportunity to amend

Representation: Patent attorney for the applicant: Davies Collison Cave

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2020276112

Title:Systems and methods for processing images to classify the processed images for digital pathology

Patent Applicant: Paige.AI, Inc.
Date of Decision: 4 September 2023
DECISION
I consider that the invention defined by claims 1-12 do not comprise a patentable manner of manufacture, and claims 1, 5, 7, and 11 do not involve an inventive step.
The Applicant is provided an opportunity to respond to attempt to gain acceptance. Under Regulation 13.4(3) the final date to gain acceptance is extended to six (6) months from the date of this decision.
REASONS FOR DECISION
Background

Patent application 2020276112 (the application) was filed by Paige.AI, Inc (the Applicant) on 15 May 2020 under the provisions of the Patent Cooperation Treaty. The application claims priority from US62/848703 which was filed on 16 May 2019, and entered national phase in Australia on 13 December 2021.
On 31 January 2022, the Applicant requested expedited examination under the provisions of the Global Patent Prosecution Highway (GPPH), and simultaneously proposed amendments in anticipation of examination (the first amendment) to amend the claims to substantially correspond with claims granted in US 10891550 B2. A first examination report was issued on 11 March 2022, objecting on the grounds of lack of manner of manufacture, clarity, novelty, and inventive step. The Applicant filed amendments (the second amendment) and responding comments on 27 July 2022. A second examination report issued on 19 August 2022, maintaining objections of lack of manner of manufacture and inventive step. The Applicant filed further amendments (the third amendment) and responding comments on 23 December 2022. A third examination report was issued on 31 January 2023, maintaining objections of lack of manner of manufacture and inventive step and introducing objections to clarity and lack of unity. The Applicant filed further amendments (the fourth amendment) and responding comments on 15 February 2023. A fourth examination report was issued on 3 March 2023, maintaining objections for lack of manner of manufacture and inventive step. On 9 March 2023, the Applicant requested to be heard in relation to the outstanding objections from the fourth examination report.
Pursuant to Regulation 13.4(1)(b), the final date for gaining acceptance was 11 March 2023. Pursuant to Regulation 13.4(1)(g), when the Commissioner gives the applicant an opportunity to be heard in relation to a report under Section 45 and issues a written decision, the period for gaining acceptance of the application is extended until…

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: Paige.AI, Inc. [2023] APO 44
Case: [2023] APO 44
Decision Date: 4 September 2023

CaseChat Overview and Summary

The application 2020276112, filed by Paige.AI, Inc., pertains to a method and system for using machine learning to process digital pathology images for quality control. The claims define a process where a machine learning model analyzes an image to detect quality issues and recommend remedial actions, and then applies the recommendation to generate a new image. The application was objected to on the grounds that it lacked a patentable manner of manufacture, and did not involve an inventive step. The Applicant was given an opportunity to respond to these objections, and filed submissions on 2 May 2023. The Delegate found that the claims did not involve a patentable manner of manufacture, as they merely used computerisation to implement an administrative quality assurance process. The Delegate further found that the claims did not involve an inventive step, as they were either anticipated by or obvious in light of the disclosure of WO 2018/156133 A1. The Applicant was granted an opportunity to amend the specification and claims to gain acceptance, with the deadline extended to six months from the date of the decision.

Orders