PayPal, Inc. - [2023] APO 54

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
PayPal, Inc. [2023] APO 54
Patent Application: 2019395313

Title:System and method for obtaining recommendations using scalable cross-domain collaborative filtering

Patent Applicant: PayPal, Inc.

Delegate:Dr S. J. Smith

Decision Date: 27 October 2023

Hearing Date: Written submissions filed on 28 July 2023

Catchwords: PATENTS – examiner’s objection – whether invention is a manner of manufacture – system for providing recommendations for transactions to a user using machine learning – alleged invention not a manner of manufacture – application refused

Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019395313

Title:System and method for obtaining recommendations using scalable cross-domain collaborative filtering

Patent Applicant: PayPal, Inc.
Date of Decision: 27 October 2023
DECISION
The claimed invention is not for a manner of manufacture.
I refuse the application.
REASONS FOR DECISION
Background

Patent application 2019395313 (the application) in the name of PayPal, Inc. (the applicant) was filed on 3 December 2019 under the provisions of the Patent Cooperation Treaty. The application claims priority from US 16/215,808 filed on 11 December 2018.
Examination was requested on 3 June 2021, and a first examination report was issued on 19 May 2022 raising objections of lack of manner of manufacture, clarity, novelty and inventive step. A response to the examination report, accompanied by amendments to the specification, was filed on 23 November 2022, and a second examination report, maintaining the objection to lack of manner of manufacture and objecting to lack of clarity and inventive step, was issued on 12 December 2022. A response to the second examination report, again accompanied by amendments to the specification, was filed on 16 February 2023. A third examination report, maintaining only the objection to lack of manner of manufacture, was issued on 9 March 2023. On 24 March 2023 the applicant requested to be heard in relation to the outstanding objection. The matter was heard by written submissions filed on 28 July 2023. I note that no objections were raised to the allowability of the amendments proposed during examination, and this decision relates to the specification as proposed to be amended.
The application was filed after 15 April 2013 and therefore is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The standard of proof that applies to examination is the balance of probabilities – if satisfied on the balance of probabilities that the application complies with the Act I must accept the application.[1] If I am not so satisfied, then I can refuse the application.[2]
[1] Section 49 of the Act as amended.
[2] The Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 54.
Pursuant to regulation 13.4(1)(g) when the Commissioner gives an applicant an opportunity to be heard in relation to an examiner’s objection and issues a written decision, the period for gaining acceptance of the application may be extended until three months…

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 PayPal, Inc.

Details

AGLC: PayPal, Inc. [2023] APO 54
Case: [2023] APO 54
Decision Date: 27 October 2023

CaseChat Overview and Summary

This case involved a patent application filed by PayPal, Inc. seeking to patent a system and method for obtaining recommendations using scalable cross-domain collaborative filtering. The application was objected to on the basis that the claimed invention was not a manner of manufacture within the meaning of the Patents Act 1990. The key issue before the court was whether the invention was a manner of manufacture. The court considered the principles established in previous case law, which held that a manner of manufacture must involve more than merely a novel use of computer technology and must represent an improvement or adaptation to computer function. The applicant argued that the invention involved a technical contribution and solved a technical problem, but the court found that the claimed combination of machine learning models was not foreign or unconventional to the normal use of computers. The court concluded that the invention was in substance a scheme for providing tailored transaction recommendations to a user and did not involve a technical contribution. Accordingly, the application was refused as the invention did not satisfy the requirement of being a manner of manufacture.

The final orders were that the application be refused. The applicant was granted leave to amend the specification, but the court considered it appropriate to refuse the application to avoid any uncertainty. The applicant had filed a divisional application, through which prosecution would continue.

Orders