ABB Power T & D Company Inc v Electrowatt Technology Innovation Corp

[2002] APO 10

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No.  689059  in the name of ABB POWER T&D COMPANY INC

Title:          Method and Apparatus for Electronic Meter Testing.

Action: Opposition under Section 59 of the Patents Act by ELECTROWATT TECHNOLOGY INNOVATION CORP.

Decision:          Issued            .

Abstract

Final determination. 

In a decision issued on 19 December 2000 all the claims of application 689059 were found to lack an inventive step in the light of a particular meter referred to in a company brochure.

The applicant subsequently proposed amendments to the claims to attempt to overcome this deficiency.

The amended claims have been found to still lack an inventive step.

It was also found that the descriptive part of the specification was absent of any matter that could be claimed to define patentable subject matter over that of the cited meter. 

The application is refused.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent application 689059 by ABB POWER T&D COMPANY INC, and opposition under section 59 by ELECTROWATT TECHNOLOGY INNOVATION CORP.

BACKGROUND

On 19 December 2000 a Patent Office decision was issued on the opposition to patent application 689059. The hearing officer found all the claims of the application lacked an inventive step in the light of a particular meter ("the Nilsen meter") referred to in a company brochure. The brochure is titled EMS 2100 Electricity Consumption Analyser. The hearing officer also found a minor non-compliance with Section 40 of the Patents Act in that claims 3 and 5 were identical.

In the light of this decision ABB Power T&D Company Inc ("ABB") subsequently proposed amendments to the claims to attempt to overcome this deficiency.  The amendments essentially introduce or emphasise the feature of a processing system, within an electronic energy meter, being responsive to a data command received over an optical communications port for selecting one of various power measurements as the basis for meter testing.

Electrowatt Technology Innovation Corp ("Electrowatt") provided comments during the examination stages on the proposed amendments.  Electrowatt accepted the amendments appeared allowable under section 102 (matter in substance disclosed and proposed claims within the scope of the claims as accepted) but stated the amendments did not overcome the deficiency raised in the hearing officer's decision.  The patent examiner examining the proposed amendments made similar observations in his report.  In light of the criteria under section 102 being met, leave was granted to ABB to amend the specification as desired and the amendments were subsequently allowed unopposed.

When the parties were advised the matter was ready for final determination Electrowatt filed submissions expanding on reasons to support its position that the amendments did not overcome the deficiency noted above.  In the light of these submissions ABB requested a hearing.

The hearing was to be held in Canberra on 5 February 2002.  On that date ABB withdrew its request to be heard and did not appear nor file any written submissions.  The previous day Electrowatt indicated it would not appear at the hearing but would rely on the submissions filed previously on 5 December 2001.   

AMENDMENTS TO THE CLAIMS

For the sake of brevity I will refer to the claims as accepted as the old claims and the claims as subsequently amended and allowed as the new claims. 

The following cites the changes made to the claims.  New text is underlined and text that has been deleted by the amendments is in square parentheses. 

Claim 1 reads as follows:

An electronic energy meter that senses input voltage and current signals and processes the input voltage and current signals to generate various power measurements, wherein the various power measurements include real power, reactive power, and apparent power; said electronic energy meter comprising a bi-directional optical communications port and [comprising] a processing system for selecting one of said various power measurements in response to a data command received over the optical communications port and defining the same as the selected power measurement and for generating a pulsed test signal related to the selected power measurement for testing the operation of the meter; and wherein the [a] bi-directional communications port is coupled to the processing system for transmitting the pulsed test signal from the meter.

The new claims appended to claim 1 all have matching text from various old appended claims to old claim 1.

New claim 10 largely corresponds with old claim 14 with the difference noted below.

1. An electronic energy meter that senses input voltage and current signals and processes the input voltage and current signals to generate various power measurements including real power, reactive power, and apparent power and further comprising [wherein said electronic energy meter comprises]:

a communications interface for receiving a data command identifying a selected one of the various power measurements from a source external to the meter;

a processing system coupled to the communications interface for processing the data command and generating a pulsed test signal related to the selected power measurement; and

a test interface coupled to the processing system for transmitting the pulsed test signal to a testing device external to the meter.

Appended new claims 11-18 correspond with appended old claims 15-22.

New claim 19 is an omnibus claim defining "an electronic energy meter substantially as hereinbefore described with reference to the accompanying drawings".  The claim corresponds with old claim 23.

New claim 20 is a new independent claim.  This claim differs from new claim 1 only in defining the communications port as adapted to receive the data command from a source external of the meter and the selection of a power measurement being based on information provided by the data command rather than on the data command itself.

DECISION

The amendments overcome the minor Section 40 issue noted by the hearing officer in the earlier decision.

INVENTIVE STEP

New claims 1 to 9

Electrowatt submitted that new claim 1 differs from old claim 1 by the addition of two features.  The first feature is drawn from old claim 2 while the second feature is drawn from old claim 11.  Both of these claims were appended to old claim 1.  Electrowatt stated that since each of the combinations of features from old claims 1 and 2, and claims 1 and 11 were found to lack an inventive step in the earlier decision, then the combination of features from old claims 1, 2 and 11 also does not provide new claim 1 with an inventive step.

New claim 1 adds a first feature that the various power measurements include real power, reactive power and apparent power.  This definition is an inclusive definition.  That is, the definition is illustrative but not exhaustive.  The definition simply specifies three different types of power measurements that are included within the scope of new claim 1.  Consequently the addition of this feature does not substantially alter the scope of this claim over old claim 1.  In any case it is readily apparent that this definition of the various power measurements introduced into new claim 1 is drawn entirely from old claim 2 which was found in the earlier decision to lack an inventive step.  I find the addition of the first feature in new claim 1 is insufficient to confer inventiveness on that claim.

The second feature is that the selection of power measurements by the processing system is in response to a data command received over the optical communications port.  Old claim 11 defined the optical communications port as receiving a data command from an external source and the processing means selecting the power measurement based on information provided by the data command.  The differences between old claim 11 and the second additional feature of new claim 1 are that the latter does not mention the external source, and is responsive to the data command itself while in old claim 11 the responsiveness is to information provided by the data command.

Old Claim 11, with the external source, was found to lack inventive step in light of the Nilsen meter in the earlier decision.  The presence or absence of a definition of an external source in the claims is largely immaterial since a communications port in a meter that receives data commands must necessarily communicate with a source external of the meter.  In any case the absence of this source from new claim 1 must consequently at least also render new claim 1 lacking inventiveness on this point.  Similarly the responsiveness of the system to information provided by the data command was found not to confer inventive step on old claim 11 in the earlier decision.  The responsiveness of the system to the data command itself in new claim 1 is broader than the definition in old claim 11.  Consequently this point cannot save new claim 1 either.

The hearing officer's earlier decision found, amongst other things, that old claims 2 and 11 lacked inventive step.  It may be argued the new claim 1 is inventive because the claim combines several of the features of old claims 1, 2 and 11 rather than takes them separately as the appendancies of old claims 2 and 11 directly to old claim 1 would suggest.  However I have noted above that the first additional feature of new claim 1 does not substantially alter the scope of the claim from old claim 1.  Consequently the thrust of new claim 1 is only taken from old claim 11.  Old claim 11 was found to lack an inventive step in the earlier decision.  Consequently I conclude new claim 1 lacks an inventive step.

New claims 2 to 9 are appended to new claim 1 and correspond to old claims 3, 4 and 8 to 13.  The earlier decision held the features of the latter claims to be obvious.

There is again the possibility that the features of old claim 11 brought into new claim 1 and combined with the features of new claims 2 to 9 may render the latter claims as defining an inventive combination.  However the features added by claims 2 to 9 are substantially unrelated to the responsiveness of the system to the data command for selecting power measurements.  There is no real interaction between the features of old claim 11 and the features of the new appended claims 2 to 9.  The new appended claims merely collocate additional features found to be obvious in the earlier decision with an already obvious combination from old claim 11.  I conclude new claims 2 to 9 also lack an inventive step.

New claims 10 to 18

The amendment to new claim 10 compared with old claim 14 deletes the phrase "wherein said electronic energy meter comprises" and inserts in its place the phrase "further comprising".   Electrowatt suggested this amendment appeared to be only a clarifying amendment and did not alter the scope of the claims. 

The actual features of new claim 10 are unchanged from old claim 14 and consequently these two claims have the same scope.  Since old claim 14 was found to lack an inventive step in the earlier decision new claim 10 must likewise lack an inventive step.

Appended new claims 11 to 18 correspond to old claims 15 to 22 apart from the re-numbering of claims and their appendancies.  Old claims 15 to 22 were found to lack an inventive step.  I conclude the same applies to new claims 11 to 18.

New claim 19

New omnibus claim 19 is identical to old claim 23.  Old claim 23 was found to lack an inventive step.  I conclude the same applies to new claim 19.

New claim 20

New claim 20 differs from new claim 1 only in defining the communications port as adapted to receive the data command from a source external of the meter and the selection of a power measurement being based on information provided by the data command rather than on the data command itself.  Essentially new claim 20 combines the features of new claim 1 and old claim 11 in its entirety.  For the reasons set out above in respect to new claim 1 and old claim 11, I similarly conclude that new claim 20 lacks an inventive step.

CONCLUSION

The amendments overcome the section 40 issue noted by the hearing officer in the earlier decision.

In respect to inventive step the amendments merely incorporate some of the features of some of the old dependent claims into the new independent claims.  The hearing officer in the previous decision found all of the old claims lacking an inventive step.  The amendments do not result in patentable combinations.  I conclude all of the new claims similarly lack an inventive step in light of the Nilsen meter.

In the earlier decision the hearing officer gave the applicant an opportunity to amend the claims to define patentable subject matter and directed the applicant towards the descriptive part of the specification to claim potentially patentable subject matter.  Despite such prompting the amendments made by the applicant do not relate to any additional matter from the descriptive part of the specification but only to matter already claimed in the old claims.

The hearing officer noted the descriptive part of the specification is detailed and complex. 

In addition to claimed matter the description cites, amongst other things, the sensing of current and voltages with conventional current transformers and voltage dividers and the processing of outputs with particular previously known types of processors; that is digital signal processors (DSPs) with analog to digital converters (ADCs).  Microcontrollers may also be employed to determine energy units used in relation to time of use.  Standard memory (EEPROM and RAM) at the priority date of the claims is cited for storage of configuration data and energy signal data.  Similarly the data transfer programming between systems within the meter would have been standard at the priority date of the claims.  Additionally the specification states the interface of the meter to the outside world may be via conventional liquid crystal display, optical port or optical connector.   In any case the Nilsen meter discloses some of the above embodiments.

I assess that the specification is absent of any matter that may be brought into the claims to define patentable subject matter over and above that disclosed in the Nilsen meter.  Certainly the applicant has not availed itself of the opportunity to amend the specification to claim any potentially patentable subject matter from the descriptive part of the specification.

Given my findings on the new claims and the absence of clear patentable subject matter in the specification, I refuse the application.

COSTS

Electrowatt submitted the application should be refused and sought an award of costs.

While a hearing was initially set following ABB's request to be heard prior to final determination, neither ABB nor Electrowatt appeared at the scheduled hearing.  Furthermore the only material filed in relation to the final determination is a short list of submissions from Electrowatt. 

I make no award of costs in respect to the final determination.

M. G. Kraefft

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Peter Maxwell & Associates, Sydney

Patent attorneys for the opponent   :  Spruson & Ferguson, Sydney