Sheng-Ping Fang - [2013] APO 48

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sheng-Ping Fang [2013] APO 48

Patent Application: 2011211467

Title:A Method and System to Represent and Identify Prizes

Patent Applicant:  Sheng-Ping Fang
Delegate:  Dr S.D.Barker
Decision Date:  21 August 2013
Catchwords:  PATENTS – divisional application – parent refused – same objections apply to the divisional – manner of manufacture and inventive step –– no response by applicant – application refused

Representation: Patent applicant: Sheng-Ping Fang

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011211467

Title:A Method and System to Represent and Identify Prizes

Patent Applicant: Sheng-Ping Fang
Date of Decision: 21 August 2013
DECISION
I refuse to accept the request and specification.
REASONS FOR DECISION

Patent application 2011211467 (the application) was filed by Sheng-Ping Fang as a divisional of application 2010230079 (the parent application) on 16 August 2011. A delegate issued a decision on 20 December 2011 refusing to accept the request and specification of the parent application on the basis that the claims were not directed to a manner of manufacture and did not involve an inventive step (see Sheng-Ping Fang [2011] APO 102).
An examination report in relation to the application issued on 10 July 2013. The report stated that the claims were not directed to a manner of manufacture and did not involve an inventive step. The report also included the following statement:
"The present application is a divisional of application 2010230079, which was refused by the Commissioner following a hearing (see [2011] APO 102). This decision was not the subject of appeal. It is not apparent that the invention in the present application is relevantly different to that in the parent application, and equivalent objections apply. In this situation, the Commissioner has decided to immediately set a hearing by way of written submissions (regulation 22.22(2)(a)) … It is a possible outcome of the hearing process that the Commissioner will refuse the present application."
The applicant was given a period of one month to file submissions. No submissions were filed.
The application
The application lies in the field of loyalty programs for online businesses. The specification says that existing loyalty programs are based on customers accumulating points. The present application is based on customers receiving symbols which may vary depending on their activity. A reward is determined based on combinations of symbols, not the number of points accumulated.
Claim 1 defines a prize awarding system utilising a "computational device" that can receive input from a user, determine an award symbol for the user, display the award symbol to the user, and determine whether a prize is associated with the symbol. This claim is clearly directed to a computer based system. Claims 2 – 9 are appended to claim 1. Claim 10 defines a method of awarding a prize that effectively restates the system defined in claim 1 in operation. Claims 11 – 18 are appended to claim 10. Claim 19 is directed a system "substantially as herein described with reference to the accompanying drawings".
The objections
The first objection is…

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: Sheng-Ping Fang [2013] APO 48
Case: [2013] APO 48
Decision Date: 21 August 2013

CaseChat Overview and Summary

Sheng-Ping Fang applied for a patent for a method and system to represent and identify prizes in a loyalty program. The application was a divisional of a parent application that had already been refused. The delegate refused the divisional application on the basis that the claims were not directed to a manner of manufacture and did not involve an inventive step. The applicant did not respond to the objections. The court upheld the delegate's decision and refused the application.

The legal issues before the court were whether the claims of the patent application were directed to a manner of manufacture and whether they involved an inventive step. The court found that the claims were not directed to a manner of manufacture, as they related to an abstract idea rather than a physical process or device. The court also found that the claims did not involve an inventive step, as they were similar to a prior art disclosure. The applicant did not provide any submissions to rebut these objections.

The court considered the reasons given by the delegate for refusing the parent application and found them to be applicable to the divisional application. The court agreed with the delegate's finding that the invention was an abstract idea and not a physical process or device. The court also considered the prior art disclosure and found that it disclosed a similar system to the one claimed in the application. The court found that the differences between the claims and the prior art were not sufficient to establish an inventive step.

The court concluded that the application was not directed to a manner of manufacture and lacked an inventive step. The court did not believe that these objections could be overcome by amendment. The court upheld the delegate's decision and refused the application.

Orders