AAV Australia Pty Limited v Cintel International Limited

[1998] APO 4

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 651983 in the name of AAV AUSTRALIA PTY LIMITED

Title:          Telecine Chains

Action:          Opposition under section 59 (Patents Act 1990) by CINTEL INTERNATIONAL LIMITED

Decision:          Issued            .

Abstract

Opposition successful; all claims but one are not novel and are obvious.  That one has major section 40 defects which are incapable of being avoided by amendment.  The application is refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 651983 by AAV AUSTRALIA PTY LTD and opposition thereto by CINTEL INTERNATIONAL LIMITED

background

Patent application 651983 (the application) was filed as 81720/91 on 9 August 1991 by SYME ELECTRONIC COMMUNICATIONS PTY LIMITED (Syme), claiming priority from an Australian provisional specification filed 9 August 1990. The application was advertised accepted on 11 August 1994.

On 11 January 1995 a notice of opposition was lodged by RANK CINTEL LIMITED, together with an application for a section 223 extension of time of two months in which to do so.  This extension was granted, with no objection.

A statement of grounds and particulars was lodged on 11 April 1995; the grounds relied on are sections 18(1)(a) and (b), and sections 40(2) and (3), Patents Act 1990. A request to amend the statement was lodged on 6 July 1995, and allowed without objection on 22 February 1996.

Service of the evidence in support was completed on 5 July 1995.

The time for serving evidence in answer expired on 11 October 1995.  On 5 October 1995 Syme applied for three months extension of time in which to serve this evidence, which was subsequently completed on 4 December 1995.  This extension was opposed; after a hearing, the delegate allowed an extension to this date of completion.

Service of the evidence in reply was completed on 13 June 1996.

On 10 March 1997 the Commissioner directed that the opposition proceed in the name of CINTEL INTERNATIONAL LIMITED (the opponent), and on 26 March 1997 Syme advised a change of name to AAV AUSTRALIA PTY LIMITED (the applicant).

A hearing was set for 3 December 1997 in Canberra.  The applicant was represented at the hearing by Mr Tatlock, patent attorney, of A Tatlock & Associates, and the opponent by Messrs Pippard and Sweetman, patent attorneys, of Spruson and Ferguson.

TECHNICAL

Movie Film and Persistence of Vision

The invention relates to telecine apparatus; this apparatus is used to scan optical movie film so as to convert it into a television standard suitable for recording, transmission, or distribution.  In both movie and television imaging, important requirements are that movement is perceived to be smooth and the image essentially free of flicker.  This perception is dependent on the eye’s “persistence of vision”.

Movie film is usually exposed at 24 or 25 frames per second (fps), and of course projected at the same rate, though in order to reduce flicker to an acceptable level, each frame is projected twice.  In addition, if the movie camera pans across a scene, or if there is movement in the scene, each of the film frames is slightly blurred due to the slow shutter speed often used - about 1/50 second at 25 fps.  If the shutter speed was high, and the frames consequently sharp, the pan would tend to appear jerky to the eye.

The resulting 50 or so slightly blurred projected images per second, with the eye’s persistence of vision, provides in most circumstances the impression of smooth motion and flicker-free pictures.

Television Standards

In Australia the television standard requires 625 horizontal scanning lines per “frame” (analogous to a film frame), though not all of these are displayed, at a frame rate of 25 frames per second.  Originally, the frame rate was chosen to be related to the AC mains frequency, in Australia 50 Hz, as it permitted simplification of some of the circuitry.  Conveniently, the TV frame rate is also the same as or very close to the film frame rate, which simplifies the scanning requirements.  In the USA, for example, the AC mains frequency is 60 HZ, requiring a more complex scanning process.

However, a rate of 25 fps is usually insufficient to reduce flicker to an acceptable level.  This is resolved by what is known as “interlaced scanning”.  In this method each TV frame consists of two “fields”, one made up of the odd numbered scanning lines, and the other of the even numbered scanning lines, each field being produced/reproduced consecutively.  This produces an effective image rate of 50 per second, without the added bandwidth that would be required if the scanning occurred at 50 fps.

Telecines

Various types of telecine have been developed over the years.  I understand that a very early type used an intermittent film movement, as in a projector, but that all modern machines use a continuous film movement.  In the commonly known flying spot telecine the film scanning is achieved by optically imaging a scanning spot of light, produced on the screen of a special cathode ray tube, onto the film via a lens.  Interlace can be achieved directly by moving the scanning spot to cover odd lines and then even lines (a “jump scan”), or indirectly by scanning all lines in sequence (a “sequential scan”), and separating them into odd line and even line fields electronically, using a frame store.  Another telecine uses a stationary solid state line-array sensor, the movement of the film in relation to which effects the scanning.  This of course is sequential scanning, and interlace is achieved electronically.

In all cases however, what is produced is a TV frame which consists of a field of odd scanning lines and another field of even scanning lines, produced consecutively.

Aspect Ratio

The aspect ratio (width:height) of the standard TV image is 4:3, which is nearly the same as the standard 35mm film frame, and so the full film frame can be scanned and displayed.  However many films are made in some form of widescreen format, typically around 2:1 and as high as 2.35:1.  If the whole film frame is scanned and reproduced on a standard TV screen, it appears with a wide black band above and below the image, sometimes called “letterbox format”.  This is often not regarded as satisfactory.  On the other hand, if the telecine is set to scan a fixed part of the film frame, inevitably important parts of the image will be missed.

The practice usually adopted is for an operator to view the whole image, and set the telecine to scan the film region considered by the operator to be of most interest - a “pan and scan”.  This will be done off-line; once set, telecine operation is automatic during actual (eg) transfer to videotape.

This introduces the issue mentioned earlier in connection with panning a movie camera across a scene.  Whereas in that case each film frame is slightly blurred and the perception is of smooth movement, this is not the case when a telecine is panned.  While interlacing solves the problem of flicker, since each of the fields of a frame are practically identical, the viewer is still only presented with 25 new images per second, and as the telecine pan is stepped, these images are all sharp.  The effect as viewed is likely to be a jerky pan.

This is the problem to which the present invention is directed.

THE SPECIFICATION

The specification includes about 14 pages of description and 4 sheets of drawings.  Rather confusingly, most of it is concerned with other unrelated aspects of telecine circuitry, and there is practically no useful reference from the text to the drawings.  However, it is clear enough from the introduction and the relevant description what the prior art problem is, and the way in which the invention solves it, and the claims are limited to this.

Briefly, the invention lies in effectively shifting the telecine scanning raster for the second field of a given frame, corresponding to a given film frame, relative to its position for the first field of that frame, to a position intermediate that first position and its position in the first field of the immediately succeeding frame.

The specification states that the preferred way of doing this is to apply appropriate signals to the telecine deflection circuitry so as to actually shift the field scanning lines.  Another method, not further explained, is to vary the clock timing of a frame store.

The specification concludes with the following claims.

“1. In a telecine chain in which the optical film is continuously scanned, means for effecting de-strobe compensation by a displacement of scan lines of alternate fields developed from a single frame of optical film before the frame is recorded onto videotape, wherein said displacement decreases an image interlace error between adjacent images formed from groups of fields from different frames of a film image by introducing a scanning interlace error between fields in the groups from one frame, these fields being controlled independently.

2. Means in a telecine chain, as claimed in claim 1, wherein two of said fields are developed from each frame of the optical film.

3. Means in a telecine chain, as claimed in claim 2, wherein said de-strobe compensation is horizontal compensation and the displacement of the scan lines is effected by providing a leading or lagging store clock timing away from a standard reference timing with a variation in timing being equal to a rate of image movement between successive film frames.

4. Means in a telecine chain, as claimed in claim 3, wherein said de-strobe compensation is effected by defining one of said fields as being comprised of all even lines and another of said fields as being comprised of all odd lines, with a half-line rate square wave signal being used so that said fields are controlled independently.

5. Means in a telecine chain, as claimed in claim 1 or claim 2, wherein the de-strobe compensation is vertical de-strobe compensation and is effected by displacement of scan lines of alternate fields developed from a single frame of optical film before said single frame is recorded onto videotape, said displacement comprising the step of displacing the scan lines of one field of a pair of fields by a distance equal to the distance between a full number of said scan lines for said field.

6. In a telecine chain in which the optical film is continuously scanned, means for effecting de-strobe compensation substantially as hereinbefore described with reference to the accompanying drawings.”

EVIDENCE

The evidence in support consists of:

1. A declaration by Julian Asquith, a Technical Assistant in the employ of the opponent’s attorneys, with exhibit JPA-1.  This exhibit is a copy of the operational handbook for the BBC’s Cinetrace System, dated 1988 and written by Simon Parnall and another.  This System is essentially software which is designed to operate with and prepare data for the control of a telecine machine.

Mr Asquith states in his declaration that he met Mr Parnall in Australia in 1995, when he was given a copy of this Manual, and told that it had been regarded by the BBC as a non-confidential document at all times.

2. A declaration by Eric Hitchen, with exhibits 1-7.  In his declaration Mr Hitchen states that he has been employed, in the UK and in Australia, in a variety of television engineering positions, including senior positions, from 1953 to date.  The exhibits consist of several patent specifications, notably US 4164761(Matchell), a journal article, and what appear to be some internally generated BBC documents.

3. A declaration by Mr Parnall with exhibits A-E.  Mr Parnall indicates in his declaration that he has been employed for many years by the BBC, presently as Project Manager, Broadcast Systems Section, in the R & D department, and in particular that he has considerable experience working with telecine equipment.  The exhibits consist of excerpts from an odd Australian film, “Razorback”, showing in slowed-down manner the application of a known technique to the presently addressed problem, and evidence of broadcast of this film by the BBC in 1988.  Exhibits C-E duplicate some of those of Mr Hitchen.

The evidence in answer consists solely of a declaration by Anthony Corcoran, employed as Group Chief Engineer by the applicant, and one of the inventors of the present invention.  In his declaration Mr Corcoran critically comments on some of the opponent’s evidence.

The evidence in reply also consists of a sole declaration by Mr Hitchen, in which he responds to Mr Corcoran.

SUBMISSIONS

In the following I briefly summarise the main issues raised.

From the Applicant

· The evidence does not establish what was the common general knowledge in the art in Australia at the relevant date.

· The applicant disputes what is actually disclosed by the non-patent evidence.  In particular, though there may be references to the production of 50 images from 25 frames, there is no direct disclosure of how this is done.

· Queries whether much of the non-patent evidence has been published in the relevant sense.

· Though the specification may not be perfect, it must be sufficient as the opponent has had no great difficulty in understanding it.

· Though admittedly the document of most relevance, and notified to the Australian Patent Office during the course of examination, the Matchell patent US 4164761 was not cited in an examiner’s report.

· The claims are at least novel in view of Matchell, as this document does not disclose “continuous scanning”.

From the Opponent

· The invention lacks the necessary threshold of inventive merit to be a manner of manufacture.

· Matchell fully discloses claims 1 and 2, except possibly for sequential scanning, but this is now standard practice.  In the alternative, claims 1 and 2 are obvious in view of Matchell.

· As the applicant’s sole declarant is one of the inventors and is employed by the applicant, there is the potential for partiality.

· Argues that some of Mr Corcoran’s statements regarding the evidence in support are simply wrong.

· Regarding “publication”, all that needs to be shown is that information in a document is available to at least one person not under a duty of confidentiality; it is not required that any such access has ever actually occurred.

· Broadcasting the movie “Razorback” on TV constitutes publication of information in a “document”, as that is defined in the Acts Interpretation Act.

· Such broadcasting also discloses the principle used in the production of the TV signal, which can be seen by slowing the video down.

· It was submitted that in a number of aspects the claims lacked clarity in respect of various terms used, and are inadequately supported by description, including the drawings.

· Also, it was said, the description was so poor that the invention was not fully described, and the best method of performance was not given.

I will refer to these matters where necessary in my decision.

DECISION

Section 40

A number of issues were raised under this heading; the significant ones with which I agree are as follows.

Claim 1 refers to optical film which is “continuously scanned”, and I think this expression is unclear in the context of scanning.  However reference to the description shows at pages 9-10:

“ Telecines scan the films sequentially.  So each film frame is scanned only once.  The odd even line fields are generated by manipulation of the store control.”

I understand that most telecines now in use, and certainly the newer models, use sequential scanning.  Therefore I construe “continuously scanned” to mean “sequentially scanned”.  This is relevant to my findings under novelty, and is not to the applicant’s disadvantage.

Independent claim 3 states that the displacement of the scan lines is effected:

“ by producing a leading or lagging store clock timing away from a standard reference
timing with a variation in timing being equal to a rate of image movement between successive film frames.”

In my opinion this is wholly unclear.  Reference to the description reveals only the following, at page 10:

“ For horizontal de-strobe one possibility is to wobble store clock timing.  Whilst vertical axis correction can be applied this is very complicated as store addressing has to wobble.”

This is not helpful.  I find that claim 3 is not clear, not supported by the description, and I consider that no allowable amendment could be proposed which would provide that support.  As claim 4 is appended only to claim 3, it also fails for the same reasons.

Claim 5 is also not clear.  It states:

“....said displacement comprising the step of displacing the scan lines of one field of a pair of fields by a distance equal to the distance between a full number of said scan lines for said field.” (emphasis added)

It is not clear to me what this distance is; while it could be the full scanned height, that does not seem to be correct either.

Novelty

The test for want of novelty is the “reverse infringement test” as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at 235 where Aickin J said:

“ The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement...”

The general rule as to what constitutes an infringement has been expressed by Lord Upjohn in Rodi & Weinenberger AG v Henry Showell Ltd (1969) RPC 367 at 391 as follows:

“The essential integers having been ascertained, the infringing article must be considered.  To constitute infringement the article must take each and every one of the essential integers of the claim.”

Non-Patent Documents

I consider that the most relevant parts of the non-patent evidence in support are the following.

Exhibit JPA-1 of Mr Asquith is a copy of the Cinetrace Operational Handbook, dated July 1988.  Cinetrace is a software system for controlling a Rank Cintel Mk 3 Digiscan telecine (page 5).  It refers (page 23) to executing a pan in “ 50 movements per second, one for every television field”.  Exhibit 6 of Mr Hitchen at page 4 makes a similar statement.

Exhibit 5 of Mr Hitchen is an article titled “The Presentation of Cinemascope Films on Television”, PJ Jones, The BKSTS Journal, June 1980.  It refers at pages 269-270 to the need for 50 images per second during panning.

Exhibit A of Mr Parnall is a videotape of extracts from the film “Razorback”, stated to have been broadcast by the BBC in 1988.  The film was transferred to video for broadcast using a Rank Cintel Mk3 Digiscan telecine (para 3) and BBC Cinetrace (para 15).  It appears that this machine uses sequential scanning (para 15).  The exhibit shows, it was submitted, several instances of a pan being executed, displayed in a slowed-down manner, field by field, with an on-screen indicator showing which field of a given frame is then being displayed.

On viewing this exhibit it can be seen that at times picture movement occurs only every second field, ie once per frame, and at other times movement occurs every field, ie twice per frame or 50 per second.

While this evidence shows that, well before the priority date of the present claims, there was a recognised need, which the evidence shows has been met, to derive 50 images per second, it seems to me that it falls short of what is required to establish anticipation.  Thus in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at 485:

“ To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented...A signpost, however clear, upon the road to the patentee’s invention will not suffice.”

In particular, I do not think that the evidence includes a clear and unmistakable direction to obtain two images per frame by displacement of the scan lines of the successive fields of a given frame, (as distinct perhaps from a necessary inference).

I now turn to exhibit 7 of Mr Hitchen.  This exhibit is a letter dated 5 September 1989 from the BBC to Rank Cintel and includes notes concerning a visit made by a BBC employee to the Rank Cintel factory.  The notes include, inter alia, the following statement at page 5:

“ One of the features of Cinetrace is the ability to create panning steps at field rate (50 Hz)....On our current Mk3 Digiscan telecine, the field rate stepping is produced by adding a variable amplitude line shift at half line rate to the scanning raster via the geometry corrector coils.” (emphasis added)

It seems to me that this disclosure fills the gap which I have found in the previously mentioned references to Cinetrace and the Rank Cintel Mk3 Digiscan, and essentially the same words are used in the specification in suit.  See the description at page 10.

In my opinion this evidence shows that the Rank Cintel Mk3 Digiscan used in conjunction with Cinetrace, as has been declared and not contested by the applicant, corresponds to what is claimed in claims 1 and 2.

However this use does not constitute an anticipation under the Act, which requires a comparison with the "prior art base" (section 7.(1)), defines "prior art base" to mean (for present purposes) information publicly available anywhere in the "patent area", and defines "patent area" in terms of Australia and its close vicinity (schedule 1 of the Act).

The evidence shows only that the use of Digiscan with Cinetrace occurred in the UK, which is not part of the patent area.  So far as the documentary evidence on its own is concerned, exhibit 7 of Mr Hinchin is critical, and on its face it appears to be an internal BBC document, perhaps not publicly available at all, and certainly not in the patent area.

I conclude that the non-patent evidence does not establish that any claim lacks novelty.

Patent Documents

GB 1535563 and 1542213 both disclose flying spot telecines using sequential scanning, and are concerned with issues related to this scanning.  They are not very relevant.

Much more relevant is US 4164769 (Matchell) dated 14 August 1979.  This document states at col 1 lines 6-10:

" This invention relates to a method and apparatus for improving the reproduction of a television picture derived from a cinema film by a telecine apparatus during a period of "panning" or "tilting" in the scene recorded on the film."

And at lines 49-55:

" In one embodiment of the invention the telecine apparatus derives two television fields from each film frame, and the scanning raster is shifted in such manner that in the second field of each film frame the image is reproduced at a position which is intermediate its position in the first field of the same film frame and its position in the first field of the immediately succeeding film frame."

This can be effected as stated at col 3 lines 31-37:

“The shift applied to the telecine scanning raster can be produced by providing an auxiliary or correction voltage to the scanning system of the telecine.  The correction voltage must clearly be a series of pulses at half the field frequency as it must be only in respect of interlaced fields, and the pulses must each have a duration of substantially one field period.”

Significantly, the reason why the application in suit (and Cinetrace) refers to a shift signal at half line rate, while Matchell refers to half field rate, is that the former uses sequential scanning, requiring alternate scan lines to be shifted, while the latter uses jump scanning, requiring alternate fields to be shifted.

And this difference in scanning is the only difference between the disclosure of Matchell and present claim 1.  Is it an essential feature of the present invention?

In deciding this I have taken into account the comments in Catnic Components v Hill and Smith Ltd (1982) RPC 183 and Rodi & Weinenberger v Henry Showell (supra), together with the following considerations.

In the specification as originally lodged there was no explicit reference to the method of scanning, though sequential scanning was implied by the definition of a half line rate shift in one of the dependent claims.  The now included reference to “continuously scanned” was introduced during the course of examination.  I consider that there is no indication in the specification then, or now, or mentioned at the hearing, to suggest that the method of scanning was an important feature of the invention.

In my opinion the invention essentially consists of (roughly put) shifting the scan lines of alternate fields; the manner or order in which these scan lines are obtained in the first place is not relevant to this.  In using jump scan Matchell was using the technology which was economically viable and thus normal practice at that time.  Some years later the cost of memory and frame storage is much reduced, and sequential scan, which is technically preferable, becomes the norm.  All that the applicant has done is to include in claim 1 a feature which would have been fairly normal practice at the date of the claim, and which does not materially affect the way in which the invention works..

In my opinion this feature is not an essential one, and consequently claims 1 and 2 are anticipated by Matchell.

I turn now to the other claims.  Claim 4 is presently appended only to a fatally defective claim 3, but if appended to another claim it would also lack novelty for reasons given above.  Regarding claim 5, though it is presently unclear what the magnitude of the displacement is, Matchell discloses (col 4 lines 3-10) that the shift pulses can be varied in amplitude, and also discloses correction for vertical movement (col 4 lines 31-42).  Therefore claim 5 is also not novel.  Claim 6 is an omnibus claim, and makes the usual reference to the description and drawings.  However, the limited description, lack of any direct reference to the sole relevant drawing, and the fact that this drawing is of circuit detail which is unrelated to what is described and otherwise claimed, means that nothing can be read into this claim not already considered in an earlier claim.

I conclude that claims 1-2 and 5-6, (and 4 if otherwise appended), are all not novel.

Inventive Step

The question of inventive step or obviousness has to be decided against the background of the common general knowledge in the art, in the patent area, at the priority date.  Also, common general knowledge can be taken with a prior disclosure, so long as a person skilled in the art could be reasonably expected to have ascertained, understood, and regarded it as relevant (section 7(2) and (3)).

While only brief submissions were made regarding the common general knowledge, I think that the threshold required in this case is low.  Movies made for the cinema have been telecast in Australia for decades.  I have no doubt that the person of ordinary skill in the field of television broadcasting equipment would be familiar with telecine machines in various forms, particularly in relation to scanning methods, and most particularly, at the priority date, the availability of and preference for, sequential scanning.  As I have mentioned, sequential scanning is technically superior to jump scanning as it enables improved registration of the scan with the film, but it had been previously expensive to implement.

Prima facie, Matchell is prior art information falling within section 7(3), and this has not been disputed by the applicant.  In my opinion there can be no reasonable doubt that it would occur to a person of ordinary skill in the art, reading Matchell at or before the priority date, to replace the jump scan of Matchell with a sequential scan.  This would be the straightforward application of common general knowledge to solve a recognised weakness in jump scanning, and I think it is in the nature of a mere workshop improvement, as per Lockhart J in Werner RD & Co v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 at 698:

“ ‘Workshop Improvement’ is a convenient expression  to encompass a mechanical improvement to an invention disclosed in a prior specification which involves no inventive quality or ingenuity.”

I conclude that claim 1 is obvious in view of Matchell taken together with the common general knowledge, and as claims 2 and 4-6 (noting the proviso regarding the appendency of claim 4) add features disclosed in Matchell, then so are they.

In view of my findings under the preceding headings, I do not consider it necessary to consider the brief submissions made concerning manner of manufacture.

CONCLUSION

I have found that claims 1-2 and 5-6 are not novel and are obvious.  Claim 3 is not clear and is not supported by the description, and is incapable of being suitably amended.  Claim 4 is presently appended to claim 3 only, and fails for the same reason, but if amended to depend on another claim, as it could be, then it also would be not novel and obvious.

In my opinion the specification does not disclose patentable subject matter, and I refuse the application.

COSTS

As the opposition has been wholly successful, I award costs against the applicant.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  A Tatlock & Associates

Patent attorneys for the opponent   :  Spruson & Ferguson