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Sheng-Ping Fang

Sheng-Ping Fang

Case [2011] APO 102 20 December 2011

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sheng-Ping Fang [2011] APO 102

Patent Application: 2010230079

Title:A Method and System To Represent and Identify Prizes

Patent Applicant:  Sheng-Ping Fang
Delegate:  R Subbarayan
Decision Date:  20 December 2011
Hearing Date:  6 October 2011, Canberra
Catchwords:  PATENTS – examiner’s objections – representing and identifying prizes in online award system – whether manner of manufacture – mere scheme or abstract idea involving presentation of information – no patentable subject matter disclosed – claimed invention not inventive – application refused

Representation: Patent applicant: Sheng-Ping Fang

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010230079

Title:A Method and System To Represent and Identify Prizes

Patent Applicant: Sheng-Ping Fang
Date of Decision: 20 December 2011
DECISION

Patent application 2010230079 is refused pursuant to subsection 49(2) of the Act.
REASONS FOR DECISION
This matter concerns examiner’s objections in respect of the application and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.
Background
Patent application AU2010230079 was filed on 13 October 2010 and claims priority from provisional patent application AU2009905059 filed on 19 October 2009. The patent applicant was initially represented by Patent Attorney Madhu Kant Jogia, but on 16 June 2011 the applicant advised that his address would now be the address for legal service for all future correspondence.

The first of five adverse examination reports on this application was issued on 9 March 2011 and the main grounds of objection were those relating to not being a manner of manufacture and lack of novelty and inventive step. The final date for acceptance of this application is therefore 9 December 2012.

Although the applicant filed submissions and amended claims in response to each of these adverse reports the examiner was not persuaded that they overcame the objections of manner of manufacture and lack of inventive step. In the fifth report the examiner further advised the applicant that the matter would be set for a hearing. Subsequent to the hearing advice, the applicant filed another set of amended claims on 25 August 2011 which have not been considered by the examiner.

The hearing was held in Canberra on 6 October 2011. The applicant represented himself and appeared over the telephone. While most of the submissions that the applicant made at the hearing reiterated his written responses to the various examination reports, some of the submissions helped to clarify certain issues that I raised. I will refer to some of the more pertinent submissions later in my decision.
The patent specification
The subject matter of the application concerns a system to represent and identify prizes for an online award or loyalty program.

Existing award and loyalty programs use symbols such as award points to calculate and represent prizes. For example, the frequent flyer program uses “mileage points” to make calculations for all the prizes. In these types of award programs, the user is not given a prize each time the user performs an activity, instead they are given general award symbols…

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 Sheng-Ping Fang

Details

AGLC: Sheng-Ping Fang [2011] APO 102
Case: [2011] APO 102
Decision Date: 20 December 2011

CaseChat Overview and Summary

The matter concerns the objections raised by the examiner to patent application AU2010230079 which claims a method and system to represent and identify prizes in an online award system. The applicant, Sheng-Ping Fang, sought to have the objections withdrawn and the application granted. The main legal issues were whether the invention was a manner of manufacture and whether it involved an inventive step. The applicant argued that the invention was a manner of manufacture and that it involved an inventive step. The examiner maintained the objections, finding that the invention was not a manner of manufacture and lacked an inventive step. The court found that the claims were not directed to a manner of manufacture as they did not achieve an artificially created state of affairs in the field of economic endeavour. The court also found that the invention lacked an inventive step when compared to prior art document D1 in light of common general knowledge. The application was therefore refused.

The court found that the invention was not a manner of manufacture as it was a mere scheme or abstract idea that did not achieve an artificially created state of affairs in the field of economic endeavour. While the invention was implemented using a computer, it did not bring about any substantial physical effect or transformation. The use of computer systems in online award programs was common general knowledge and did not make the claimed invention patentable.

The court also found that the invention lacked an inventive step when compared to document D1 in light of common general knowledge. The use of unique and shared award symbols in online award programs was common general knowledge and it would have been obvious for a person skilled in the art to arrive at the claimed invention using routine steps. The applicant's argument that the invention was technically complex was not persuasive as the specification did not provide any evidence to support this claim.

The final order was that the application was refused pursuant to subsection 49(2) of the Patents Act.

Orders