Sheng-Ping Fang

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 that claims 1 – 19 are not directed to a manner of manufacture. The reasons for the objection refer to the decision in Sheng-Ping Fang [2011] APO 102. The second objection is that claims 1 – 19 do not involve an inventive step in the light of US 2002/0116257 (referred to as D1).
Manner of manufacture
The delegate of the Commissioner found that the claims of the parent application were not directed to a manner of manufacture. The applicant has not provided any submissions as to why the present claims overcome that objection. I have considered the reasons of the delegate at paragraphs [43] to [66] of his decision. I agree with what he said, and consider that the conclusion is applicable to the claims I am considering. I particularly note and agree with paragraph [59]:
"From reading the specification as a whole, it is clear that the core of the invention lies in the use of the unique and shared symbols … These symbols enable users to win different prizes at different time periods, without prizes being grouped and awarded hierarchically according to monetary value. Whilst I accept that the use of these symbols may provide advantages in relation to how prizes are won and thereby motivate users to engage in further activity beneficial to the online retailer, it does not alter the fact that what is claimed is a scheme for awarding prizes in a loyalty program. The unique and shared award symbols are merely information generated in the operation of the scheme … Although the invention can clearly be said to be in a field of economic endeavour, namely retail trading, the use of different types of award symbols in a loyalty scheme is in my view an abstract idea, mere intellectual information involving new symbols, which had never been held to be patentable subject matter."
I consider that claims 1 – 19 are not directed to a manner of manufacture.
Inventive step
D1 discloses an award system in which a user is awarded an electronic incentive on the occurrence of a qualified event while browsing an ecommerce site. The electronic incentive can be an award symbol. The user collects symbols and can use them to collect prizes. The delegate of the Commissioner found that the claims of the parent application lacked inventive step in the light of D1 when combined with the common general knowledge. The applicant has not provided any submissions as to why I should reach a different conclusion in relation to the present claims. While the claims before me are drafted in slightly different terms, I am not satisfied that these differences lead to a different outcome. I believe that claims 1 – 19 lack an inventive step.
Conclusion
I am satisfied that the application is not directed to a manner of manufacture and lacks an inventive step. I do not believe these objections could be overcome by amendment.
I will refuse to accept the request and specification.
Dr S.D.Barker
Delegate of the Commissioner of Patents

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.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established