ACN 004 552 363 Pty Ltd v ICM Airport Technics Australia Pty Ltd
[2020] APO 3
•21 January 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ACN 004 552 363 Pty Ltd v ICM Airport Technics Australia Pty Ltd [2020] APO 3
Patent Application: 2015222687
Title:Luggage processing station and system thereof
Patent Applicant: ICM Airport Technics Australia Pty Ltd
Opponent: ACN 004 552 363 Pty Ltd
Delegate: Dr V. Z. Kolev
Decision Date: 21 January 2020
Hearing Date: 22 October 2019, in Canberra
Catchwords: PATENTS – section 59 opposition to grant of a patent – novelty – inventive step – manner of manufacture – regulation 5.23 – luggage processing station – dynamic virtual zone around the piece of luggage – adjusting the volume of the zone to accommodate different sizes of luggage – opposition unsuccessful on all grounds – material not consulted under regulation 5.23 – costs awarded
Representation: Counsel for the applicant: Mr Ian Horak
Patent attorney and solicitor for the applicant: Mr Anthony Alder of Alder IP Pty Ltd, IP Lawyers and Patent Attorneys
Observer for the applicant: Mr Rainer Dinkelmann of ICM Airport Technics Australia Pty Ltd
Counsel for the opponent: Ms Clare Cunliffe
Patent attorney and solicitor for the opponent: Mr Stuart D’Aloisio and Mr Tim Rankin of Ashurst Australia
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015222687
Title:Luggage processing station and system thereof
Patent Applicant: ICM Airport Technics Australia Pty Ltd
Date of Decision: 21 January 2020
DECISION
The opposition is unsuccessful on all grounds. Subject to appeal, I direct that the patent application proceeds to grant.
I award costs according to the amounts specified in Schedule 8 against ACN 004 552 363 Pty Ltd.
REASONS FOR DECISION
Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations). In addition, any reference to the Commissioner refers to the Commissioner of Patents.
BACKGROUND
The matter relates to patent application 2015222687 (the Application) in the name of ICM Airport Technics Australia Pty Ltd (the Applicant). The Application is the national phase of international application PCT/AU2015/000114, published as WO 2015/127503. The Application was filed on 27 February 2015 and claims a priority date of 28 February 2014.
The Application was advertised as accepted on 21 December 2017. A notice of opposition to grant was filed on 21 March 2018 by Mr Stuart D’Aloisio who later requested an amendment to the notice of opposition. On 7 November 2019, the parties were notified by a Delegate of the Commissioner that the notice of opposition was amended such that the name of the person opposing the grant reads ACN 004 552 363 Pty Ltd (the Opponent).
The statement of grounds and particulars (the SGP) was filed on 21 June 2018, together with the three documents mentioned in the SGP and referred to as D1 to D3. On 22 June 2018, a Delegate on the Commissioner issued a direction that “the documents that accompanied the Statement of Grounds and Particulars are treated as evidence in support of the opposition”.
The evidence in support was completed on 21 September 2018. The evidence in answer was completed on 13 December 2018. The evidence in reply was completed on 15 February 2019.
The “Opponent’s Outline of Submissions” (the Opponent’s Summary or OS) was filed on 08 October 2019. The “Applicant’s Outline of Submissions” (the Applicant’s Summary or AS) was filed on 15 October 2019.
Relevantly, the present opposition is with respect to the Application as accepted and is based on the SGP as filed.
APPLICABLE LAW AND ONUS
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations affecting, inter alia, the standard of proof required for an opposition to succeed. For patent applications filed on or after the above commencement date, subsection 60(3A) applies:
“If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.” (underlining added)
The Application was filed on 27 February 2015, hence subsection 60(3A) applies to the instant opposition. In addition, the filing date of the Application being after 15 April 2013 also means that the Application was examined under the amended provisions of the Act and Regulations following the Raising the Bar Act and the same are also applicable to the present opposition proceedings.
10. It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition, and this applies even though the standard of proof is “the balance of probabilities”. Because of this, given the outcome of the opposition reflected in my decision above, I will focus my discussions primarily on the Opponent’s case.
GROUNDS OF OPPOSITION AND EVIDENCE
Grounds of opposition
11. The SGP lists the following grounds of opposition and they were also the grounds pressed by the Opponent during the hearing:
·Not a manner of manufacture – paragraph 18(1)(a);
·Lack of novelty – subparagraph 18(1)(b)(i); and
·Lack of inventive step – subparagraph 18(1)(b)(ii).
Evidence on file
12. The evidence filed in the opposition consists of the following documents:
Evidence in support consisting of:
· Documents WO 2012/012841 A1 (D1), US 6,476,812 B1 (D2), and US 2009/0268029 A1 (D3) as per the Delegate’s direction of 22 June 2018 mentioned above;
· A declaration by Mr Rowan Leslie Cranmer dated 20 September 2018 (Cranmer-1) with exhibits RLC-1 to RLC-9;
· A declaration by Mr André Louis Bergé dated 20 September 2018 (Bergé) with exhibits AB-1 to AB-5.
Evidence in answer consisting of:
· A declaration by Mr Richard Dinkelmann dated 10 December 2018 (Richard D) with exhibits RD-1 to RD-3;
· A declaration by Mr Rainer Rudolf Dinkelmann dated 12 December 2018 (Rainer D) with exhibits RA-1 to RA-3;
· A declaration by Mr Cornel Nunes dated 06 December 2018 (Nunes) with exhibit CN-1.
Evidence in reply consisting of:
· A declaration by Mr Rowan Leslie Cranmer dated 15 February 2019 (Cranmer-2) with exhibits RLC-10 to RLC-21, excluding paragraphs [7]-[17] of Cranmer-2 and exhibits RLC-10 to RLC-18 for the reasons explained immediately below.
13. Following a correspondence with the parties initiated by the Applicant, a Delegate of the Commissioner issued on 16 April 2019 a direction that “paragraphs 7-17 of the declaration by Rowan Leslie Cranmer dated 15 February 2019 [Cranmer-2] and Annexures RLC-10 to RLC-18 are not properly in reply”. For convenience, I will refer collectively to this material filed by the Opponent as evidence in reply but found by the Delegate not to be properly in reply as the New Material. It is clear that following the Delegate’s direction, the New Material is not in evidence.
14. However, in the above-mentioned correspondence between the Delegate and the parties, the Opponent requested that, if the New Material is found not to be part of the evidence in reply, this material is admitted in the opposition under regulation 5.23. Introducing material under the provisions of this regulation was discussed in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 (Merial):
“I conclude that a decision under regulation 5.23 must have regard to the nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.” (at [24])
With the above test in mind, the Delegate considered it unhelpful to issue a direction on the matter and deferred the decision to the opposition hearing. It follows that I will need to consider the nature of the information contained in the New Material and decide on its admission in the opposition under regulation 5.23. I will do that later in this decision.
THE SPECIFICATION OF THE APPLICATION
15. The technical field of the invention is described as:
“[0001] The present invention relates to luggage processing station or device adapted for use with booking, processing and loading of airport luggage throughout an airport and onto an associated airplane. The recent invention may also include a system and/or method as embodied within the said station or device.”
16. This is followed by the section “Background” which begins by explaining that:
“[0002] Previously, there has been a long felt need for a system or device that it is [sic] capable of safely and efficiently booking and processing passenger luggage in the airport environment.”
17. The section continues with a brief discussion of two prior art systems:
“[0003] A previous system is the BagDrop Standard Unit or system which is disclosed in detail at The BagDrop system is generally bulky and has severe limitations in terms of ease and/or speed of usage which is generally connected with the overall layout of the machine and location of the passenger loading luggage onto the machine.
[0004] PCT Published Patent Application No. WO2012012841 [i.e. document D1] describes an earlier disclosed system that includes many improvements in ease of usage over the BagDrop Standard Unit. However, this disclosed system may generally lack adaptive features that allow for bulky passenger items or luggage to be processed. Additionally, the system may be improved with better systems. The disclosed system also has limitations in regard to the processing of airport tubs.” (original underlining)
18. The section “Summary”, explicitly discusses the problems in the prior art systems and the object of the present invention:
“[0006] PROBLEMS TO BE SOLVED
[0007] Many earlier attempts have had issues in relation to airport security or passenger safety and it is an object of the present invention to at least address or ameliorate some of the issues. It is also an aim or objective of the present invention to provide an improved processing, system and/or method for processing luggage wherein reliability, convenience, and/or ease of usage is at least addressed or improved.
[0008] It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.”
19. This is followed by a series of consistory statements. I note that some consistory statements also relate to a second aspect of the invention concerned with the use of luggage transportation tubs, however this second aspect is not defined in the claims. This section of the description also provides a definition of a term appearing in some of the dependent claims:
“[0021] Please note that the definition of the ‘centre of the injector’ is intended to include the hypothetical centre or locations proximal to; and/or the equivalent point of the approximate centre of the floor or any approximate point rising from the centre of the floor of the injector.”
20. The section ends with the statement that:
“[0024] The invention is to be interpreted with reference to the at least one of the technical problems described or affiliated with the background art. The present aims to solve or ameliorate at least one of the technical problems and this may result in one or more advantageous effects as defined by this specification and described in detail with reference to the preferred embodiments of the present invention.”
Given the brief and somewhat generic description of the prior art problems (see the earlier quotations), I find the above statement to be of limited assistance.
21. The preferred embodiments of the invention are described with reference to the drawings which consist of figures 1 to 5. I consider that figures 3 and 4, depicting respectively “a front perspective view of a second preferred embodiment of the present invention” (see [0027]) and “a front perspective view of the second preferred embodiment wherein a piece of luggage has been loaded into the injector” (see [0028]), are the drawings most illustrative for the claimed invention, and they are reproduced below.
22. The reference numerals correspond to the following system elements: 10 – a processing station for registering a passenger’s luggage for a trip; 14 – an injector of the processing station for receiving a piece of luggage associated with the passenger; 6 and 7 – a plurality of sensors associated with the injector; 16a, 16b, 16c, and 16d – additional sensors (16a and 16b are not visible in the figures, as they are positioned on the opposed respective inner side on the injector proximal to the access opening); 16g – bar code scanners for detecting whether the piece of luggage has a bag tag applied; 18 – a weighing machine associated with the injector for weighing the piece of luggage whilst on a bottom or lower surface of the injector; 20 – a user interface of the processing station for receiving various inputs for confirming that a passenger has checked-in; 22 – an electronic card reader in the form of an RFID card scanner; 24 – a scanner for scanning various types of passenger boarding passes, such as paper boarding passes with magnetic strips and printed boarding passes with barcodes; 26 – a touch screen display; 28 – a controller associated with the sensors, the weighing machine, and the user interface; 30 and 32 – physical sidewalls, e.g. comprising vertical glass panels to prevent unauthorised access to the piece of loaded luggage whilst still allowing the piece of loaded luggage to be viewed; 34 – a floor of the injector; 36 – a virtual sidewall generated by sensors; 38 – a virtual top generated by sensors; 39 – a side access opening to the injector, generated by the virtual sidewall and the virtual top; 44 – a printer; 50 – an injector conveyor provided in the floor of the injector; 52 – a downstream collector conveyor system; 55 – a piece of luggage.
23. Importantly:
“[0036] … the sensors 16a, 16b, … 16c and 16d, in combination with walls 30, 32 and a floor 34 of the injector 14, create a six-sided virtual box around a loaded piece of luggage. Sidewall 36 and top 38 of the virtual box are generated by the combination of sensors, respectively, such that no physical barrier is provided on these sides of the injector 14, and thereby define a side access opening 39 to the injector 14 to facilitate a passenger side loading luggage into the injector 14 from a position adjacent the user interface 20. The combination of sensors facilitate determination of whether the height and width of the loaded piece of luggage are within predetermined limits for acceptance. Sensors 16c and 16d (in cooperation with 16a and 16b respectively) include photo eyes for facilitating positioning of the piece of luggage in the injector 14 and determining whether the length of the piece of luggage is within predetermined limits for acceptance. However, in alternate embodiments, 3D imaging using cameras may be used to detect the length and width of the piece of luggage.”
“[0053] Monitoring devices may be provided around the injector 14 to detect when luggage is placed on the bottom surface of the injector 14 as well as intrusion during processing of the piece of luggage and delivery of the piece of luggage to the downstream collector conveyor system. The monitoring devices may comprise one or more of lasers, photo eyes 16c and 16d and light curtains 16i.”
“[0072] Generally, an Intrusion Processing Module consisting of one or more depth image sensors, but preferably 3 sensors [sic]. The sensors may be light curtains, stereotypic cameras including but not limited to Microsoft KinectTM devices, photo eyes. At least one default depth image sensor that has adequate field of vision of the injector [sic]. The Intrusion Processing Module is connected to a controller which may be able to allow or limit movement on the injector conveyor 50 and dispatch/downstream conveyor 52.”
24. The specification ends with 14 claims. Claim 1 is the only independent claim and is reproduced below (some formatting added to assist readability):
“1. A processing station for registering a piece of passenger’s luggage for a trip, wherein the processing station comprises:
an injector for receiving the piece of luggage associated with the passenger;
a group of sensors comprising a first sensor associated with the injector,
the group of sensors, in combination with at least the floor of the injector, creating a zone around the piece of luggage; and
a controller associated with the group of sensors being adapted to:
monitor, via the group of sensors, intrusions through the zone to determine one or more of
whether a predetermined limit on dimensions of the piece of luggage has been exceeded or
whether a foreign object has intruded the zone from outside, and
allow further processing of the piece of luggage only if no intrusion of the zone is detected;
and wherein the controller dynamically adjusts the volume of the zone to accommodate different sizes of luggage.”
CLAIM INTERPRETATION
25. It does not appear that claim 1 contains any words or phrases that would have a meaning in the specific art of luggage processing systems that would be different from the commonly understood plain meaning. The evidence on file also does not appear to suggest otherwise. The claim interpretation appears relatively straightforward and the Opponent did not raise clarity as a ground of opposition. In addition, I was not under the impression that there are any substantial disagreements between the parties on the question of claim interpretation. Nonetheless, I believe there are a couple of comments to be made.
“a group of sensors comprising a first sensor associated with the injector”
26. The only reason why this expression deserves some attention is the fact that the first sensor is not mentioned any further, neither in claim 1 nor in any one of the dependent claims. All references to sensors are, in fact, directed to the group of sensors and not specifically to the first sensor. A question then arises about the reason for the presence of the first sensor in claim 1 and how this presence affects the claim construction.
27. The lack of commas in the expression in question means that the first sensor is associated with the injector, but this does not necessarily apply to any other sensor(s) in the group (if present). On the other hand, the potential omission of the wording related to the first sensor from the expression in question, would result in the modified expression “a group of sensors associated with the injector”, and this modified expression would imply that all sensors in the group are associated with the injector. Hence, the presence of the first sensor does affect the meaning, in that the present expression allows the existence of sensors in the group that are not associated with the injector.
“the controller dynamically adjusts the volume of the zone to accommodate different sizes of luggage”
28. From the parties’ submissions, it appears that the above expression defines a feature that is of pivotal importance for the outcome of this opposition, at least with respect to the grounds of novelty and inventive step. For brevity, I will refer to this feature as defined in claim 1 as the Pivotal Feature.
29. The first consideration in relation to this expression involves the presence of the adverb “dynamically”. Macquarie Dictionary (online edition viewed on 30 October 2019) does not specifically provide the meaning of “dynamically”, however the meaning of the adjective “dynamic” is given as (original emphasis):
“1. Physics of or relating to force not in equilibrium (opposed to static).
2. relating to dynamics.
3. relating to or characterised by energy or effective action; active; forceful.
4. full of energy and enthusiasm: a dynamic personality.
–noun 5. a particular state of social or personal interaction: the interesting dynamic between actor and audience.
Also, dynamical. [Greek dynamikos powerful]
–dynamically, adverb”
30. Based on the above, in the context of the claim, I consider the most relevant meaning of the word “dynamically” to be “actively” and I also note that “dynamically” would be the opposite of “statically”. Again, Macquarie Dictionary (online edition viewed on 30 October 2019) provides only the meaning of the adjective “static” (original emphasis):
“Also, statical. 1. relating to or characterised by a fixed or stationary condition.
2. of or relating to static electricity.
3. Physics acting by mere weight without producing motion: static pressure.
4. Sociology denoting or relating to a condition of social life in which no changes are taking place.
5. Economics relating to fixed relations, or different combinations of fixed quantities: static population.
–noun 6. Electricity static or atmospheric electricity.
7. Radio extraneous noises, crackling, etc., caused by electrical currents from storms or other atmospheric disturbances picked up by the receiver; atmospherics.
[New Latin staticus, from Greek statikos]
–statically, adverb”
31. Again, in the context of the claim, I consider the most relevant meaning of “static” to be “fixed”, “stationary”, “not changing”. Therefore, “the controller dynamically adjusts the volume of the zone” should be interpreted as meaning that the controller actively adjusts the volume of the zone by changing it, thus making it not fixed or stationary.
32. Another important consideration is that the controller adjusts the volume of the zone “to accommodate different sizes of luggage”. Importantly, the claim defines (underlining added) “[a] processing station for registering a piece of passenger’s luggage …, wherein the processing station comprises: an injector for receiving the piece of luggage …; a group of sensors …, the group of sensors, in combination with at least the floor of the injector, creating a zone around the piece of luggage…”. Therefore, I consider that the defined processing station registers the passenger’s luggage one piece at a time. This means that the active adjusting by the controller of the volume of the zone by changing it (thus making it not fixed or stationary) to accommodate different sizes of luggage could be done only once for each piece of luggage received in the injector. In other words, the volume adjusting could be performed only when a new piece of luggage is received in the injector and the zone is created around this new piece of luggage. Thus, the volume of the zone would be adjusted to accommodate the different size of the new piece of luggage; however, the volume of the zone may or may not be subsequently adjusted (or re-adjusted) while a particular piece of luggage is still in the injector.
33. I did not occur to me that any significant disagreements exist between the parties on that point. For brevity, I will refer to such a zone, having its volume adjusted as discussed above, as a Dynamic Virtual Zone.
THE PERSON SKILLED IN THE ART AND THE EXPERTS FOR THE PARTIES
34. The hypothetical “person skilled in the art” is a well-established legal concept and I do not consider it necessary to discuss the relevant Authorities.
35. The Opponent submits:
“21. The person skilled in the relevant art is the person to whom the patent specification is addressed, or a person with a ‘practical interest’ in the subject matter of the invention. The opponent submits that the skilled addressee is a skilled but non-inventive worker or team with training as an electrical engineer, and with particular experience with autonomy and control solutions, particularly in automatic baggage-handling and check-in systems. Mr Rowan Cranmer has experience in developing autonomy and control solutions in the field of airplane passenger and baggage processing as at the earliest priority date (28 February 2014). So does Mr André Bergé.
22. Mr Richard Dinkelmann appears to have relevant experience, but very little detail is provided. Mr Rainer Dinkelmann provides insufficient information as to his qualifications to allow a conclusion to be drawn as to whether he has the relevant experience. Mr Nunes’ experience is similarly described at a level of detail that makes it impossible to conclude whether he has the relevant expertise. Although it is apparent that Mr Nunes’ company developed software to work with BCS BagGate systems, it appears that Mr Nunes’ involvement was at the level of executive management. Mr Nunes refers to ‘extensive background as a software engineer working with airport luggage systems’, but no detail is provided in either his declaration or his CV. The only detail which is given as to Vedaleon’s business suggests that it focuses on reservations systems and booking engines.” (OS, reference(s) omitted)
36. The Applicant submits that:
“25. … That person [i.e. the person skilled in the art] is a non-inventive skilled worker in the relevant field with an understanding of the common general knowledge. Such a person was described by Finklestein J in Root Quality v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at [70-71] whereby he discussed the authorities noting that the skilled addressee would be:
‘Those likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.’
26. The Applicant relies upon the evidence of Mr Nunes, Mr Richard Dinkelmann and Mr Rainer Dinkelmann. Those witnesses discuss the invention and interpret the prior art. Their evidence should be preferred as each has significant experience and qualifications in the field of airport luggage bag drop systems.
27. Both Mr Cranmer and Mr Berge are employees or affiliates of BCS Group Limited (BCS), which produces systems in competition with the Applicant. Each of these persons is associated with the Applicant’s competitor which operates the prior art system referred to as the BCS Group Limited’s BAGGate System...” (AS, original italics)
37. Although the Applicant does not appear to have described more specifically the person skilled in the art in the present case, I was not under the impression that there are any major disagreements on the issue between the parties. I generally agree with the Opponent and consider that the person skilled in the art is a person (or a team) having knowledge and expertise in the field of electrical and electronics engineering “with particular experience with autonomy and control solutions, particularly in automatic baggage-handling and check-in systems”.
38. I consider that each one of the Experts appears sufficiently qualified to give evidence in this opposition (in particular, I do not find it necessary to doubt the “relevant experience” of an inventor listed in the Application), subject to appropriate weighing. The fact that the Experts may potentially not be completely independent and not without any interest in the outcome of the opposition is also something that can be addressed by appropriate weighing of the evidence. It was not my understanding that either of the parties seriously contended something different.
THE COMMON GENERAL KNOWLEDGE
39. The common general knowledge is also a well-established legal concept associated with the person skilled in the art and, again, I do not consider it necessary to discuss the relevant Authorities.
40. The Opponent submits that:
“73. … The common general knowledge is that of the person skilled in the relevant art.
74. The notion of common general knowledge is well-established. It is the background knowledge and experience used by those in the field in considering the making of new products or the making of improvements in old: Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 292.” (OS, original italics)
41. The Applicant warns that:
“29. Information cannot be treated as part of the common general knowledge unless there is ‘evidence of its general acceptance and assimilation’ by persons skilled in the art. See Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 (Alphapharm) at [31]].” (AS, original emphasis)
42. I agree with the parties and emphasise that the common general knowledge must be established by suitable evidence.
The evidence filed to establish the common general knowledge
43. In this opposition, the Opponent relies on three declarations: Cranmer-1, filed as evidence in support; Cranmer-2, filed as evidence in reply; and Bergé, filed as evidence in support.
44. Bergé is a relatively short declaration which “describe[s] a number of self-service check-in and bag drop systems that existed prior to July 2010” (see Bergé at [5]). It also describes the development of the BCS BAGgateTM system and the public presentation of a prototype of the system. Although this appears to be somewhat related to the common general knowledge, in the section “F. The Common General Knowledge” of OS, the Opponent does not refer to this declaration.
45. Cranmer-1 does not include any statements that could provide some insight about the questions Mr Cranmer was asked when preparing this declaration. The declaration also does not contain any information allowing the clear determination of which parts of Cranmer-1 reflect Mr Cranmer’s views before he was shown the specification of the Application. Although none of the above is a mandatory requirement to the evidence presented before the Commissioner, these facts inevitably diminish the value of such evidence in establishing what was part of the common general knowledge at the priority date.
The relevant common general knowledge – the parties’ submissions
46. With reference to Mr Cranmer’s evidence, the Opponent submits:
“76. The following matters formed part of the common general knowledge before the claimed priority date of 28 February 2014:
(a) The use of an injector to receive luggage for processing, including incorporating a conveyor and/or weigh scale sensing equipment.
(b) The use of sensors, including light curtains, lasers (including laser eyes and rotating lasers), and other opto electronic sensors (including cameras), to define a virtual zone and detect intrusions into a monitored area. Sensors could be used alone or in combination with physical walls.
(c) The use of stereoscopic and 3D camera systems (including the Microsoft KinectTM and systems incorporating infrared sensors) for object recognition, and to set a virtual zone.
(d) The use of a controller to process the inputs from camera sensors and, among other things, set or adjust a virtual zone based on a subject object in the field of view of the cameras.
(e) The use of a controller to process the inputs from sensors to allow or halt subsequent processing of luggage.
(f) The use of barcode scanners and/or RFID antennas to detect the presence of appropriate tags on luggage and read those tags, or write to them in the case of RFID.” (OS, reference(s) omitted)
47. The Opponent also asserts that the contents of document D1 was part of the common general knowledge (see OS at [98]).
48. Importantly, the Opponent does not appear to suggest that the use of a controller to dynamically adjust the volume of the zone to accommodate different sizes of objects (i.e. a feature similar to the Pivotal Feature of claim 1) was part of the common general knowledge. In that regard, I consider that to “set or adjust a virtual zone based on a subject object in the field of view of the cameras” is clearly a broader concept. For example, it does not necessarily involve the adjustment of the volume of the zone, nor does it necessarily use the sizes of the objects as a basis for adjustment.
49. In response, the Applicant points out that:
“31. The use of a controller to dynamically adjust the volume of a zone to accommodate different types of luggage in the context of processing luggage was [not] done anywhere else much less done sufficiently widely to have passed into the common general knowledge. At its highest, each of the prior art systems used in airports around the world, which might have come into the common general knowledge as of the priority date, utilised a static pre-determined zone.
32. It is not shown on evidence that the Microsoft Kinect 3D camera was widely used or known in respect of the processing of luggage. The Opponent’s case is predicated on the bold assertion that the Microsoft KinectTM camera had entered the common general knowledge. Even if the fact and existence of that 3D camera might have passed into the common general knowledge in this field (which is not established), this only tells the person skilled in the art, at its highest, that there might be technical products that would allow for the creation of a dynamic zone. The uses of the camera were still being investigated and use in a system contemplated by the Opposed Application had never been envisaged.
…
140. It has not been shown that it was part of the common general knowledge to dynamically adjust the volume of a zone for scanning luggage.
141. It has not been shown that the configuration of a processing station for registering a piece of passenger’s luggage was part of the common general knowledge. Even if it was, the configuration that was part of the common general knowledge included a static pre-determined zone in which the luggage was placed.
142. It has not been shown that there was any motivation to improve existing luggage processing stations and, importantly, to arrive at the present invention by modifying it to dynamically adjust the volume of the zone. The mere fact that a 3D camera might have, if deployed, allowed this to be done is beside the point. The invention rests in the particular combination and operation of the processing station and includes as part of the recognition that a dynamic zone could be employed.” (AS, underlining added)
The relevant common general knowledge – consideration
50. I note that a lot of attention is given to the use of cameras in general, and more specifically to the use of stereoscopic camera systems and 3D camera systems. The evidence suggests (see e.g. Cranmer-1 at [24]-[26] as discussed below) that although these two types of camera systems are technically different, they both offer similar 3D functionality. In this decision, purely as a matter of convenience, I will use the phrase “3D cameras” to refer collectively to both stereoscopic camera systems and 3D camera systems. For the same reasons, I will refer to any camera sensors or systems simply as “cameras”.
Document D1
51. I will start with the Opponent’s submission that the contents of document D1 was part of the common general knowledge. For support, the Opponent relies on Cranmer-1 at [42] (see OS at page 21, footnote 99), however it appears that this reference was meant to be to [43] instead as quoted below:
“43. In summary, based on my extensive experience gained during my long career working in the automation and control industry, I consider that each of the features and concepts described in paragraphs 27 to 42 [i.e. the discussion of document D1 in Cranmer-1] are existing and well-understood technologies. I was aware of each technology in use in automation and control solutions, especially in self service check in and bag drop systems, including the BAGgate System.”
52. While I have some concerns as to the weight I can give to such overarching statements as evidence for the common general knowledge where the evidence is based on features found in a document apparently provided to the Expert, without conclusively deciding the issue, I am prepared to notionally proceed on the basis that the information contained in document D1 was part of the common general knowledge. As it will become apparent later, this will not affect the outcome of my decision.
The Opponent’s submissions at paragraph [76] of OS
53. It appears that the most important considerations with respect to [76] of OS (quoted above) are those related to items (c) and (d). From the outset, without conclusively deciding the issue, I am again prepared to notionally accept in part the Opponent’s contention at item (c), namely that “[t]he use of stereoscopic and 3D camera systems (including the Microsoft KinectTM and systems incorporating infrared sensors) for object recognition” was part of the common general knowledge.
54. Item (c) also includes the contention that the use of 3D cameras “to set a virtual zone” was part of the common general knowledge. In addition, item (d) refers to setting or adjusting a virtual zone based on an object in the field of view of cameras, by processing the inputs from the cameras. While I note that these two concepts do not appear identical, the Opponent relies on somewhat overlapping parts of the evidence to support both (see OS, page 17, footnotes 76 and 77), hence the following analysis of the evidence will cover both concepts.
55. The Opponent relies on Cranmer-1 at [24]-[26] and [45]-[46] as well as on Cranmer-2 at [19] and [32] to support its contentions at items (c) and (d).
56. Paragraphs [24]-[26] of Cranmer-1 form the section “Cameras in the BAGgate product”, and discuss that, at the relevant time, “both stereoscopic camera systems, and ‘3D’ camera technology were widely available” (at [24]) and their use “for object recognition and other functions [Mr Cranmer does not specify what other functions] was widespread before February 2014” (at [26], underlining and comments in italics added). Paragraph [25] simply explains the main features and differences between the “stereoscopic” and the “3D RGB/D” camera systems. Mr Cranmer also notes in these paragraphs of Cranmer-1, the generic interest of Daifuku BCS in this technology (underlining and comments in italics added):
“24. Before February 2014, BAGgate systems (both those deployed and in development by Daifuku BCS) included the use of sensors of various kinds, including cameras [Mr Cranmer does not specify whether 3D or not], in association with a controller to assess luggage and detect intrusions [not necessarily for setting/adjusting a virtual zone]…
…
26. … 3D camera technology was Daifuku BCS’ preferred selection for the ongoing development of the BAGgate Self service bag drop product. This is reflected in the General and Technical Specifications (RLC-2), which was amended on 2 December 2013 to note that 3D camera capability [Mr Cranmer does not specify for what purpose] was an optional inclusion for the BAGgate sensor arch from June 2014.”
Based on my comments within the above quotations, I do not consider that these support the Opponent’s contention except for its part related to object recognition that I already notionally accepted.
57. In the other paragraphs of Cranmer-1 relied on by the Opponent, Mr Cranmer comments on the disclosure of document D2:
“45. I notice in particular that D2 describes that a virtual zone or space may be set by the controller on the basis of three-dimensional information created around objects in the relevant area, such that the virtual zone or space is created ‘automatically’. D2 goes on to explain that the virtual zone or space may be set progressively, and may be ‘updated’ by the controller or processing unit where, as an example, the virtual zone or space is set with reference to a subject object and the subject object moves.
46. I note that D2 is dated from 2002. Before February 2014, the technologies described in D2 were offered as part of standard industry practice in automation and control solutions. As I noted above, I was aware of the use of cameras of various kinds in this application since at least the mid-2000s.” (underlining added reference(s) removed)
58. At [45] above, Mr Cranmer simply explains what he considers that document D2 is describing. Then, at [46], he provides some general comments about the document. It is not entirely clear to me what exactly Mr Cranmer refers to by “the technologies described in D2”. Document D2 discloses (I will discuss this in more detail later in this decision) several specific embodiments including the use of cameras to create virtual zones of different configurations and with different functionality for detecting a collision in a three-dimensional space between a virtual zone and an object or body. Importantly, unlike document D1, document D2 is not in the field of luggage processing. Mr Cranmer does not specifically identify as a technique known to him and to other practitioners in the field before the priority date any of the specific techniques described in document D2. Indeed at [46] Mr Cranmer only makes the overarching statements that these technologies “were offered as part of standard industry practice” and that he “was aware of the use of cameras of various kinds in this application since at least the mid-2000s”, again without clarifying what does “this application” encompass. This lack of language precision, combined with the weaknesses of Cranmer-1 as discussed earlier, means that I cannot be satisfied that these paragraphs of Cranmer-1 support the view that any one of the specific techniques disclosed in the embodiments of document D2 was part of the common general knowledge.
59. In the paragraphs of Cranmer-2 relied on by the Opponent, Mr Cranmer states in reply to the evidence in answer (underlining and comments in italics added):
“19. … Object detection and assessment was a standard feature of 3D camera technology before February 2014, including to create and dynamically adjust a ‘sterile zone’ around an area/item to detect and prevent intrusions [I note that this statement was made in reply, i.e. clearly after Mr Cranmer reviewed the Application]. In my opinion, the ICM process described by Richard Dinkelmann at [13] was a standard and routine process that was being followed by many companies operating in the field of baggage handling systems before February 2014. Namely, such companies were seeking to utilise widely available industrial sensing technologies (in this case, 3D cameras) for their marketed features and capabilities, and considering whether to replace the former sensor technologies being utilised for this purpose (in this case, stereoscopic cameras and light curtains). The use of 3D cameras for intrusion detection in dynamically adjusted sterile zones or protection areas, as that technology became available, was a natural design progression in baggage handling systems.
…
32. As I have stated above, 3D cameras such as Kinect were widely known in the field of airline passenger and baggage processing and handling, and many other industries, well before February 2014. Companies within that field such as Dalfuku BCS were all investigating the use of 3D cameras as part of the routine development of their baggage handling systems before February 2014. The uses being investigated included programming the system controller to use live data from 3D cameras to make automatic adjustments to the output of the system, such as raising an alarm that an inappropriate item was in the processing area [Mr Cranmer does not mention anything about the creation of a Dynamic Virtual Zone or a similar concept].”
60. In addition to the above comments in the quotation, it is not clear to me what exactly Mr Cranmer considers to be “dynamically adjusted sterile zones or protection areas”. In any case, nothing in these paragraphs of Cranmer-2 suggests that these zones or areas are dynamically adjusted ‘based on a subject object in the field of view of the cameras’ as stated by the Opponent at item (d).
61. I conclude that the above analysis of the evidence relied on by the Opponent does not appear to convincingly justify the Opponent’s view (see OS at [76]). Nonetheless, without conclusively deciding the issue, I am prepared to notionally proceed on the basis that some of the information at items (c) and (d), as indicated in the next section below, was part of the common general knowledge. As it will become apparent later, this will not affect the outcome of my decision.
The relevant common general knowledge – summary
62. In summary, without conclusively deciding the issue, I am prepared to notionally proceed on the basis that the following was part of the common general knowledge:
(a) The use of 3D cameras for object recognition.
(b) The use of 3D cameras to set a virtual zone.
(c) The use of sensors, either alone or in combination with physical walls, to define a virtual zone and detect intrusions into a monitored area.
(d) The use of a controller to process the inputs from cameras.
(e) The contents of document D1.
63. Based on the evidence, I am not satisfied that the Opponent has established that the following was part of the common general knowledge:
(a) The use of a controller to set or adjust a virtual zone based on an object in the field of view of the cameras, insofar as this means that the characteristics of the zone (e.g. shape, size, position, etc.) in some way depend on some properties of the object.
(b) The use of a controller to dynamically adjust the volume of a virtual zone to accommodate different sizes of objects.
NOVELTY UNDER SUBPARAGRAPH 18(1)(b)(i)
64. The well-established test for novelty can be found in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 137 CLR 228 at 235:
“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.”
65. This test requires that all essential features of the claimed invention are disclosed in the prior art document. The level of disclosure in the prior art document was considered in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 486 as “… must contain clear and unmistakeable directions to do what the patentee claims to have invented”.
66. The Opponent relies on a single prior art document for novelty and this is discussed below.
Novelty in light of document D1
67. As already mentioned, document D1 is referred to in the background part of the present specification. The Opponent argues that:
“60. D1 and the 687 Application [i.e. the Application] disclose the same processing station for luggage, designed to facilitate self-service check-in of luggage for airline passengers.
61. Claim 1 of D1 is in near identical terms to claim 1 of the 687 Application, save that:
(a) Claim 1 of the 687 Application refers to a ‘group of sensors’ rather than ‘at least one sensor’; and
(b) Claim 1 of the 687 Application includes an additional integer ‘and wherein the controller dynamically adjusts the volume of the zone to accommodate different sizes of luggage’.
…
63. The specification of D1 is largely identical to the 687 Application.
64. The only issue, therefore, is whether the dynamic adjustment integer is disclosed by D1.” (OS, original emphasis, reference(s) omitted)
68. To support their contention that all essential features of claim 1 are disclosed in document D1, the Opponent, by reference to the Authorities, relies on the following points:
“56. Where a documentary disclosure is relied upon, questions of clarity of disclosure may arise…
(a) commonly the only question may be whether the prior publication describes the claimed invention with sufficient clarity;
(b) the disclosure is assessed by reference to a person of ordinary skill in the art, and the question is whether the prior publication is sufficient to make the claimed invention apparent to that skilled addressee;
(c) something less than a full description of the invention may be sufficient to render it not novel, and something less than a full description of an effective means by which the claimed combination may be produced may be sufficient to a reader equipped with the common general knowledge; and
(d) a direction, recommendation or suggestion may be inherent or implicit (as opposed to being express) in what is described.
57. It is accepted that the common general knowledge can be used to construe a prior art document. If the document, properly construed in light of the common general knowledge, discloses the claimed invention, there is anticipation.” (OS, reference(s) omitted)
69. In light of the above, the Opponent explains their view on the disclosure of document D1:
“65. As is made clear in the specification of the 687 Application [i.e. the Application], the ‘dynamic adjustment’ integer is achieved by using a 3D camera system, or arrays.
…
69. The only explanation of how the dynamic system may be created is that this may be done ‘using the Microsoft KinectTM 3D camera system’. The 687 Application also explains that other stereotypic camera systems may also be used.
70. Accordingly, the 687 Application discloses that the dynamic adjustment integer is achieved through the use of 3D cameras and known processing techniques.
71. D1 teaches the use of cameras. The skilled addressee would understand that these cameras include 3D cameras, such as Microsoft KinectTM:
(a) D1 teaches that image capturing devices may be used to identify intrusions into the virtual box. D1 further teaches that image capturing devices may facilitate determination of the size of a piece of luggage in the injector.
(b) D1 teaches the use of cameras to record images of luggage, and to detect the location of intrusions. The skilled addressee would understand that cameras included stereoscopic cameras.
(c) Mr Cranmer considers this passage in D1 discloses the use of cameras and a controller to determine three dimensional spatial data about a zone or object, then to assess whether an object is within or outside of the relevant zone. He considers that D1 teaches the use of a controller and cameras to determine the dimensions and location of objects with reference to a pre-determined zone, and that this teaches the same processes and technology required to set and modify a virtual zone with reference to an object, as described in the 687 Application.” (OS, underlining added, reference(s) omitted)
70. I am unsure how the above arguments support the conclusion reached by the Opponent (see OS at [72]) that “D1 discloses a luggage processing station or device that incorporates all of the features of the 687 Application” and hence “[c]laim 1 is anticipated”. Even if I assume that document D1 does indeed disclose “the same processes and technology required to set and modify a virtual zone” (i.e. to create a Dynamic Virtual Zone as per claim 1), this does not mean that this document actually discloses setting and/or modifying of the virtual zone as defined in claim 1.
71. I am not presented with any evidence that the person skilled in the art reading the disclosure of document D1 in light of the common general knowledge would consider that the Pivotal Feature (i.e. “wherein the controller dynamically adjusts the volume of the zone to accommodate different sizes of luggage”) is disclosed, inherently or implicitly, as apparently asserted by the Opponent. It follows that, on the balance of probabilities, I cannot be satisfied that the Opponent has discharged their onus to demonstrate that claim 1 is not novel in light of document D1.
Novelty – summary
72. Since document D1 is the only document raised by the Opponent for novelty, I am not satisfied that claim 1 is not novel. Claims 2 to 14 are ultimately appended to claim 1 and add further features to those already defined, hence I have no reason to consider that any one of these claims is not novel. Therefore, in conclusion, I am not satisfied that any one of claims 1 to 14 is not novel.
INVENTIVE STEP UNDER SUBPARAGRAPH 18(1)(b)(ii)
73. The test for obviousness was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 (Wellcome Foundation):
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” (at [45], underlining added)
74. In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated at [53]:
“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the “2” position in place of the -Cl atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)
That approach should be accepted.” (original emphasis, reference(s) omitted)
75. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, it was stated:
“In Alphapharm, this Court reiterated that ‘obvious’ means ‘very plain’, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge…
Further, as recognised in Beecham Group Ltd’s (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (at [51]-[52], underlining added, reference(s) omitted)
76. It is important to note that obviousness is a question of fact that is to be established by evidence.
The evidence filed to establish obviousness
77. In this opposition, in addition to documents D1 to D3, the Opponent relies on three declarations: Cranmer-1, filed as evidence in support; Cranmer-2, filed as evidence in reply; and Bergé, filed as evidence in support.
78. Bergé does not include any comments on the Application or on documents D1 to D3.
79. Mr Cranmer does not comment on the instant claims at all. In addition, as I already noted earlier, Cranmer-1 does not include any statements that could provide some insight about the questions Mr Cranmer was asked when preparing this declaration. The declaration also does not contain any information allowing the clear determination of which parts of Cranmer-1 reflect Mr Cranmer’s views before he was shown the specification of the Application. Although I already acknowledged that none of the above is a mandatory requirement to the evidence presented before the Commissioner, these facts inevitably diminish the value of such evidence in establishing obviousness, especially in light of the test developed in Wellcome Foundation.
80. Based on the evidence of Mr Cranmer, the Opponent puts a lot of emphasis on its contention that 3D cameras (and in particular Microsoft Kinect™ 3D cameras) were part of the common general knowledge and, because of their well-known and understood properties, their use in a luggage processing system would be obvious to the person skilled in the art. I will return to the Pivotal Feature of claim 1, namely “wherein the controller dynamically adjusts the volume of the zone to accommodate different sizes of luggage”, and I will emphasise that this feature defines certain functionality of the system and not the technology necessary to implement this functionality. There is no suggestion in the specification that the use of 3D cameras is the only way in which this functionality can be achieved and, accordingly, claim 1 does not define the use of a camera at all. In that regard, I also note that the Opponent does not raise any grounds of opposition related to potential section 40 deficiencies and no evidence on such potential issues is presented.
81. It is important to note that the key question of obviousness does not arise with respect to the use of 3D cameras in a luggage processing system per se (or even with respect to such use for creating a virtual zone in general), but with respect to the claimed functionality itself (which may or may not be achieved by using 3D cameras). The question of whether the use of 3D cameras (e.g. Microsoft Kinect™ or different 3D cameras) is obvious or not becomes relevant only if it can be shown on the evidence that the claimed functionality is an inevitable or routine consequence of such use of 3D cameras.
Inventive step in light of the common general knowledge together with document D1
82. Cranmer-1 contains only four paragraphs (i.e. [50]-[53]) commenting on the Application as a whole and this is done exclusively with reference to document D1. I will discuss these paragraphs in some detail below.
83. The first three of the four paragraphs are reproduced below:
“50. Considering D1 against Australian Patent Application No. 2015222687 (the 687 Application) [i.e. the Application], many sections of the 687 Application are word for word identical with D1.
51. The 687 Application contains an expanded discussion of the use of cameras, and also refers to a dynamic virtual zone. The 687 Application describes the virtual zone as a ‘dynamic virtual box or shape’, that is ‘preferably formed around or about a piece of luggage to be processed’. It also refers to other virtual shapes, including spheres, and that in some embodiments the walls of the zone may be bent where the controller recognises an irregular shaped piece of luggage. At paragraph [67] of the 687 Application, it is noted that this virtual zone may be modified to be dynamic using the Microsoft Kinect™ 3D camera systems or arrays, or other stereoscopic camera systems.
52. The 687 Application states that either 3D or stereoscopic camera systems may be used in conjunction with a controller to create a dynamic virtual zone, or a virtual zone of irregular shape (ie, not a square or cube). This is nothing more than the implementation of the standard camera systems that I describe at paragraphs 24 to 26 above.” (Cranmer-1, underlining added, reference(s) omitted)
84. The above quoted part of Cranmer-1 refers to paragraphs [24]-[26] of the same declaration. I have already provided some comments about these paragraphs in my discussion of the common general knowledge. Paragraph [24] states that “[b]efore February 2014, BAGgate systems (both those deployed and in development by Daifuku BCS) included the use of sensors of various kinds, including cameras, in association with a controller to assess luggage and detect intrusions… At the time, both stereoscopic camera systems, and ‘3D’ camera technology were widely available”. Paragraph [25] provides a brief description of the stereoscopic cameras as well as the 3D RGB/D systems. This concludes with the statement that:
“26. The use of stereoscopic and 3D camera systems (including Infrared) for object recognition and other functions was widespread before February 2014. This was particularly the case with the Microsoft Kinect 3D camera system, which was very cost effective at the time. I recall reading about many discussion papers and examples of the object detection uses of these devices before 2014. 3D camera technology was Daifuku BCS’ preferred selection for the ongoing development of the BAGgate Self service bag drop product. This is reflected in the General and Technical Specifications (RLC-2), which was amended on 2 December 2013 to note that 3D camera capability was an optional inclusion for the BAGgate sensor arch from June 2014.” (Cranmer-1, original emphasis)
85. Importantly, paragraphs [24]-[26] of Cranmer-1 do not mention anything about the creation of a Dynamic Virtual Zone. Therefore, I must conclude that the underlined expression in Mr Cranmer’s statement:
“52. … This is nothing more than the implementation of the standard camera systems that I describe at paragraphs 24 to 26 above.”
must be referring to “the standard camera systems” and not to “the implementation” of these systems to create a Dynamic Virtual Zone. In other words, the statement “[t]his is nothing more than the implementation” does not say anything about the obviousness or otherwise of this “implementation”, i.e. about the obviousness or otherwise of the creation of a Dynamic Virtual Zone. In addition, as I mentioned earlier, the Opponent does not contend that such creation of a Dynamic Virtual Zone as defined in claim 1 was part of the common general knowledge.
86. In the last of the four paragraphs mentioned above, Mr Cranmer continues:
“53. At page 6, lines [17]-[19], D1 describes the use of cameras to:
facilitate determination of intrusions, including the location of intrusions, into the virtual box, and/or may facilitate determination of the size of a piece of luggage in the injector and/or its suitability for handling by a downstream luggage processing system.
I understand this to describe the use of cameras and a controller to determine three-dimensional spatial data about a zone and/or object, to then assess whether an object is within or outside of the relevant zone. D1 teaches the use of a controller and cameras to determine the dimensions and location of objects with reference to a predetermined zone (as described in D1). I understand this to be teaching the same processes and technology required to set and modify a virtual zone with reference to an object, as described in the 687 Application [i.e. the Application].” (underlining added)
87. Importantly, as I already discussed with respect to novelty, Mr Cranmer does not mention that the teaching of document D1 includes the creation of a Dynamic Virtual Zone. In addition, I do not consider that his underlined statement immediately above supports the view that it would be obvious for the person skilled in the art “to set and modify a virtual zone with reference to an object, as described in the 687 Application” (i.e. the closest reference in Cranmer-1 to the Pivotal Feature of claim 1). The meaning of this statement appears more supportive of the view that the technology and the data acquisition processes described in document D1 would be suitable to implement the invention defined in claim 1. The statement says nothing about the obviousness of the invention as claimed in claim 1.
88. In Cranmer-2, filed as evidence in reply, Mr Cranmer comments:
“19. At paragraph [13] of the Richard Declaration [i.e. Richard D], Mr Dinkelmann states that after ICM had introduced Kinect sensors to determine bag conveyability, ICM ‘realised’ that the same sensors could be used to perform the virtual box function. Rainer Dinkelmann states that this was in fact his realisation at paragraph [14] of the Rainer Declaration [i.e. Rainer D]. Object detection and assessment was a standard feature of 3D camera technology before February 2014, including to create and dynamically adjust a ‘sterile zone’ around an area/item to detect and prevent intrusions. In my opinion, the ICM process described by Richard Dinkelmann at [13] was a standard and routine process that was being followed by many companies operating in the field of baggage handling systems before February 2014. Namely, such companies were seeking to utilise widely available industrial sensing technologies (in this case, 3D cameras) for their marketed features and capabilities, and considering whether to replace the former sensor technologies being utilised for this purpose (in this case, stereoscopic cameras and light curtains). The use of 3D cameras for intrusion detection in dynamically adjusted sterile zones or protection areas, as that technology became available, was a natural design progression in baggage handling systems.” (underlining added)
89. As best understood, Mr Cranmer considers that investigating the possibilities for utilisation of new sensor technology in the field of baggage handling systems “was a standard and routine process”, and that the claimed invention “was a natural design progression in baggage handling systems”. Indeed, it is not unreasonable to expect that companies would be continuously looking for new technologies and routinely assessing their suitability for the specific applications of interest; however, it is unclear to me what Mr Cranmer was trying to encompass with the expression “natural design progression”. Often, the progression of technology is driven by non-obvious inventions and it could be argued that this is a natural process. One possible interpretation that could support the Opponent’s position is that Mr Cranmer was expressing his view that this was an obvious or routine design progression. However, even if this is indeed the case (of which I am not entirely convinced), I note that Mr Cranmer does not point to any system or development that contemplates the use of a Dynamic Virtual Zone. I cannot exclude the real possibility that the above statements are strongly influenced by Mr Cranmer’s knowledge of the Application and its specification.
90. Cranmer-2 further states:
“31. I understand from the ICM Evidence that the only difference between D1 and the 687 Application [i.e. the Application] is the addition of the 3D camera: Richard Declaration at [24] - [25]; Rainer Declaration at [27] - [28]; Nunes Declaration at [14]. For example, at paragraph [14] of the Nunes Declaration, Mr Nunes states that:
[t]he novelty and inventiveness of the claimed invention in ‘687 generally relates to the feature of dynamic adjustment of the virtual detection zone.
32. As I have stated above, 3D cameras such as Kinect were widely known in the field of airline passenger and baggage processing and handling, and many other industries, well before February 2014. Companies within that field such as Daifuku BCS were all investigating the use of 3D cameras as part of the routine development of their baggage handling systems before February 2014. The uses being investigated included programming the system controller to use live data from 3D cameras to make automatic adjustments to the output of the system, such as raising an alarm that an inappropriate item was in the processing area.” (underlining added)
91. Here, Mr Cranmer is clearly focussing his attention on the utilisation of the 3D cameras per se at the expense of the creation of a Dynamic Virtual Zone (e.g. virtual zone creation is not mentioned among “[t]he uses being investigated” as per [32]). From the underlined parts of [31], it appears that he even somewhat equates this 3D cameras utilisation with the creation of a Dynamic Virtual Zone.
92. The Opponent provides expansive submissions contending that 3D cameras were part of the common general knowledge and that their utilisation in the baggage processing systems would be obvious for the person skilled in the art. Then, as best understood, it relies on the evidence in answer and the specification of the Application to establish that developing a Dynamic Virtual Zone would be an obvious design consequence of the use of 3D cameras:
“87. The only feature that is not expressly disclosed by D1 is the dynamically adjusted virtual zone (although the opponent submits that there is an implicit disclosure of this feature, for the reasons set out under novelty, above).
88. All three of the applicant’s witnesses, including both of the inventors of the 687 Application [i.e. the Application], appear to concede that D1 discloses the remaining integers.
89. The opponent submits that it was obvious to try to improve the system disclosed in D1 by using sensor technology which allowed tubs to be determined and which allowed irregularly shaped objects to be readily detected. D1 had identified that cameras could be used for this purpose, and stereoscopic or 3D cameras were widely known to be suitable for object recognition. Indeed, Mr Richard Dinkelmann’s evidence is consistent with the proposition that it was obvious to use Microsoft KinectTM sensors to determine which bags could be conveyed.
90. Since it was common general knowledge that 3D cameras could be used to set (and adjust) a virtual zone, it was also obvious to use 3D cameras for this purpose in the context of baggage handling, particularly given the desirability of being able to identify intrusions into the baggage field. Neither the 687 Application, nor even the inventors giving evidence in the context of this opposition, assert that this was a surprising realisation.
91. Consistently with this conclusion, Daifuku BCS, who was a major provider of baggage handling systems, had independently identified the suitability of 3D cameras to detect tubs and perform conveyability checks before the priority date, as is apparent from RLC-2 at page 36. Daifuku BCS had also identified the use of live data from 3D cameras to detect intrusion.
92. Given that the KinectTM system was widely used and affordable, and had been well researched and was well understood, the skilled addressee would be directly led to try the Microsoft KinectTM for this purpose, and would have expected that it might well produce a useful result.
93. Indeed, the use of the KinectTM system for this purpose can fairly be characterised as ‘standard and routine’, and a natural design progression in baggage handling.” (OS, underlining added, reference(s) omitted)
93. It was not immediately clear to me what exactly the Opponent means by “this purpose” as underlined in the concluding paragraphs [92] and [93]. I asked for clarification during the hearing. As best understood, by “this purpose” the Opponent means, in essence, the creation of a Dynamic Virtual Zone. I am unsure that I am convinced by the Opponent’s submissions. Even if I am to agree with the Opponent that
(i) it was obvious to use 3D cameras in a luggage processing station for other purposes (e.g. such as those underlined in paragraphs [89] and [91] above), and
(ii) given (i), it was then obvious to use 3D cameras “to set (and adjust) a virtual zone” in the luggage processing station (since this was not “a surprising realisation”),
I will still end up with a luggage processing system using 3D cameras to set and adjust a virtual zone. This is well short of the functionality of a Dynamic Virtual Zone as defined in claim 1.
94. I have already discussed Mr Cranmer’s evidence, now I will turn to the parts of the evidence in answer and the specification of the Application referred to by the Opponent (see OS at page 20, footnote 87):
“13. ICM was the first to develop the virtual box and it was the subject of our patent ‘841 in 2010, but then we continued the innovation and we developed and improved the 3D imaging capability in 2014. The purpose of the 3D imaging capability was to determine bag conveyability, that is to identify which bags should and which should not be conveyed as is into the baggage system. It made use of Microsoft™ Kinect one sensors, which are also known as cameras, and once we had developed that capability to determine bag conveyability, we then realized that the same sensors, these Microsoft™ Kinect one sensors, could be used to perform the virtual box function which we’d previously used other sensors for. There were three main benefits of this approach.
14. A first benefit is that the size of the virtual box could now be adjusted dynamically because the 3D imaging system or reading knew the exact size of the bag, so that the virtual box could be sized according to the size of the bag, which prevented accidental intrusions into the zone, and that had a major operational benefit.
15. The second benefit was cost saving as the two previous sensors that were previously used for the fixed virtual box, were no longer required. There was a significant cost saving which makes ICM more competitive in the market.
16. The third benefit was that tubs could be detected by the 3D imaging sensors as well. This additionally saved cost because the RFID tags (previously we used RFID inlays in the tubs to detect the presence of tubs) were no longer required. Both the tubs and the processing stations were thus cheaper to manufacture.” (Richard D, underlining added)
“[0067] The virtual zone system may be modified to be dynamic using the Microsoft KinectTM 3D camera systems or arrays instead of relying on the fixed laser sensing devices. The default max height may be reduced to 750mm (or another value if required). Please note that other stereotypic camera systems may also be used, but the preferred systems include an array of at least two cameras to provide a three dimensional image via stereotypically linking the cameras. Preferably, the cameras or camera arrays may be mounted on motorised mounts to allow for rotation, if required. Additionally, the cameras may be positioned near or proximal to the upper limit of the virtual zone and may be oriented at an angle towards the centre of the injector wherein the luggage is received. Additionally, the preferred sensors or cameras may be adapted to operate in the infrared frequency so that they are either: not visible to passengers and to reduce noise based interference; or less susceptible to light fluctuations in the airport facility within which they are positioned.” (the specification of the Application, original italics, underlining added)
95. In my view, fair reading of the above parts of the evidence in answer and the specification does not suggest that the step from using a 3D camera for unrelated purpose (i.e. “to determine bag conveyability”) to creating a Dynamic Virtual Zone is an obvious or routine step. Mr Dinkelmann firstly mentions that it was “realized” that the same 3D cameras “could be used to perform the virtual box function” and I am unable to find any suggestions that this realisation was obvious or routine. Then, he describes the ability to adjust the virtual box dynamically as a “benefit” of the use of 3D cameras to perform the virtual box function, and I am again unable to find any suggestions that this “benefit” would be immediately apparent or obvious to the person skilled in the art so as to motivate the development of the Dynamic Virtual Zone.
96. Based on the above analysis of the evidence and the Opponent’s submissions, I am not satisfied that the Opponent has established that the Dynamic Virtual Zone functionality as defined in claim 1 is an inevitable or routine consequence of the use of 3D cameras even if this use is related to the creation and adjustment of a virtual zone. On the balance of probabilities, the evidence does not establish that a “static” virtual zone created by the use of other sensors will necessarily (or as a matter of routine) become a Dynamic Virtual Zone once these other sensors are replaced by 3D cameras. Nothing prevents these 3D cameras from creating the same “static” virtual zone as before. Therefore, the question of whether such use of 3D cameras is obvious or not cannot affect my decision in relation to the obviousness of claim 1, hence I do not need to answer this question.
97. On the balance of probabilities, I am not satisfied that the evidence on file is sufficient to establish that the invention claimed in claim 1 is obvious in light of the common general knowledge together with document D1.
Inventive step in light of the common general knowledge together with document D2
98. Document D2 is concerned with “an information processing system, an information processing method, and a supplying (distribution) medium, … capable of presenting various kinds of applications, for example, by detecting a collision between an optional or arbitrary space in a three-dimensional space and an object or body” (column 1, lines 9-16). The system is explained with reference to figure 1 reproduced below.
99. Document D2 explains:
“This spatial collision judging system is designed to make a decision on whether or not a collision between a virtual space set in a three-dimensional space and an actual object occurs, thereby detecting the intrusion of an object such as an intruder into the interior of the virtual space.” (column 3, lines 55-59)
“The three-dimensional information creating section 4 uses an image (reference camera image) outputted from the reference camera 1 constituting the camera set 3n (n=l, 2, ... , N) and an image (detection camera image) outputted from the detection camera 2 to conduct the so-called stereo processing for creating three-dimensional information indicative of a distance from one reference point with respect to one object (for example, a desk, a chair, a wall, a floor, a person, an animal, and others) existing within a three-dimensional space, with this three-dimensional information being supplied to a collision judging section 5. Additionally, the three-dimensional information creating section 4 supplies the three-dimensional information on (related to) the object within the three-dimensional space to a virtual space setting section 6, when needed.” (column 4, lines 8-22, underlining added)
“The virtual space setting section 6 is made to set a virtual space within a three-dimensional space in accordance with an operation by the user or on the basis of the three-dimensional information from the three-dimensional information creating section 4. That is, for example, the virtual space setting section 6 is made to produce three-dimensional information defining a virtual space set within a three-dimensional space and to supply it to the collision judging section 5.” (column 4, lines 38-45, underlining added)
100. It is clear that document D2 does not disclose a luggage processing station and the Opponent does not appear to contend otherwise. Since claim 1 defines that the virtual zone is created “around the piece of luggage”, I will focus my attention to the embodiments which could be considered as disclosing a virtual zone that is around the object (e.g. this is clearly not the case on figure 1). The first such embodiment is illustrated on figure 15. I note that document D2 appears to be using the words “object” and “subject” somewhat interchangeably to denote the actual physical body that may potentially collide with the virtual space.
101. Figure 15 illustrates that “when a subject to be protected (monitored) is put on a floor, a hollow semi-spherical virtual space surrounding the subject is set on the basis of the three-dimensional information on the subject” (column 16, lines 21-25). Further,
“… the virtual space setting section 6 obtains the central point (for example, the center of gravity of the configuration of the floor portion with which the subject comes into contact) O of the subject on the floor surface on the basis of the three-dimensional information on the subject from the three-dimensional information creating section 4. Furthermore, the virtual space setting section 6 supposes a semi-sphere with a radius of R and a semi sphere with a radius of R-W in a state where the point O is taken as their centers, and sets, as a virtual space, a space (space with a width of W) surrounded by the two semi spheres… Incidentally, the radius R-W is required to be longer than the distance from the point O to the furthest point of the subject (otherwise, the subject and the virtual space collide against each other so that the collision judging section 6 outputs the collision detection signal at all times.)” (column 16, lines 39-57, underlining added).
102. Although the so created virtual zone or space may be dynamically updated when the subject/object moves (see column 16, lines 58-65), nothing suggest that, in this embodiment, the volume of the zone is adjusted. Indeed, the location of point O is the only parameter that is set “on the basis of the three-dimensional information on the subject”, and it appears that parameters R and W which determine the volume of the zone are suitably pre-set and not changing on the basis of the subject’s/object’s size. I consider this to be conceptually different to the Dynamic Virtual Zone of claim 1.
103. A different embodiment is described with reference to figures 17 and 18A-B reproduced below.
104. According to this embodiment, when “it is desirable to detect even a slight movement of the subject” (column 17, lines 18-19), “a virtual space (in the case of FIG.17, its external shape is a semi-spherical configuration) is set to surround the subject lying on a floor without defining a gap therebetween. Such a virtual space can be set, for example, in a manner that a semi-spherical space accommodating a subject is supposed as shown in FIG. 18A and a space the subject occupies is subsequently removed from that semi-spherical space as shown in FIG. 18B.” (column 17, lines 21-29, underlining added).
105. Since, in this case, the virtual zone “tightly” surrounds the subject/object, and the radius of the zone’s outer surface apparently is fixed and not changing (see e.g. column 17, lines 39-45), subjects/objects of different sizes would result in virtual zones of different volume – the larger the subject/object, the smaller the volume of the zone. Importantly, I note that document D2 does not appear to contemplate or provide any explicit teaching of such a scenario involving subjects/objects of different size. However, it could potentially be argued that this embodiment implicitly discloses the creation of a virtual zone around the subject/object, “wherein the controller [e.g. the virtual space setting section 6 (see column 17, lines 30-64)] dynamically adjusts the volume of the zone to accommodate different sizes of [subjects/objects]”.
106. In addition, a further embodiment described with reference to figures 20 to 23 relates to a system for improving the golf swing of a user by comparing it with the swing of a person (e.g. a professional golfer) acting as a model. The working of the system includes creating, based on the person acting as a model, a virtual zone of predetermined thickness around the user. This embodiment does disclose that “the three-dimensional information creating section 4 produces a distance image as the three-dimensional information on the person acting as a model on the basis of the images from the camera sets 31, to 3N, and supplies it to the virtual space setting section 6” (column 18, lines 41-46, underlining added) and that “the virtual space setting section 6 normalizes the three-dimensional information, obtained from the image…, to the physical build of the user and others, then … the virtual space setting section 6 supposes a space with a predetermined thickness surrounding the configuration defined by the normalized three-dimensional information to leave a margin in some degree, with this space being set and recorded as a virtual space” (column 18, lines 57-65, underlining added). Hence, e.g. the larger “the physical build of the user”, the larger the volume of the virtual space, and it could be argued that the volume of the virtual space or zone would be dynamically adjusted “to accommodate different sizes of [users]”.
107. Mr Cranmer’s comments on document D2 are limited to paragraphs [44]-[46] of Cranmer-1. Although paragraphs [45]-[46] were already quoted in my discussion of the common general knowledge, for convenience, I have reproduced Mr Cranmer’s comments in their entirety below:
“44. D2 is a US Patent entitled ‘Information processing system, information processing method, and supplying medium’ and dated 5 November 2002. D2 describes an information processing system (which I understand to mean a controller), which:
(a) processes inputs from two or more cameras (which I understand to be referring to stereoscopic cameras) to generate three-dimensional information on an object; and
(b) processes that three-dimensional Information to detect collisions between the relevant object and a virtual zone or space.
45. I notice in particular that D2 describes that a virtual zone or space may be set by the controller on the basis of three-dimensional information created around objects in the relevant area, such that the virtual zone or space is created ‘automatically’. D2 goes on to explain that the virtual zone or space may be set progressively, and may be ‘updated’ by the controller or processing unit where, as an example, the virtual zone or space is set with reference to a subject object and the subject object moves.
46. I note that D2 is dated from 2002. Before February 2014, the technologies described in D2 were offered as part of standard industry practice in automation and control solutions. As I noted above, I was aware of the use of cameras of various kinds in this application since at least the mid-2000s.” (underlining added, reference(s) omitted)
108. The Opponent’s contention is based on document D1 being part of the common general knowledge. Then, the Opponent submits that
“98. … D1 discloses every integer of the claim [i.e. claim 1] except the dynamic adjustment of zone. That is, the only feature which is conceivably not common general knowledge is the use of 3D cameras to create a dynamically adjustable zone depending on the size of the object (although, for the reasons set out in relation to novelty, the opponent says that the skilled addressee would understand D1 to disclose this feature). D2 discloses this feature”. (OS, underlining added)
109. Firstly, I must emphasise again that claim 1 does not include any features related to “the use of 3D cameras”. Secondly, I note that claim 1 defines that the dynamic adjustment of the volume of the zone is done “to accommodate different sizes of luggage” which is not the same as “depending on the size of the object”. Thirdly, while, as I noted above, such a feature with respect to a subject/object or a user may potentially be considered disclosed in document D2, this is not what Mr Cranmer’s evidence suggests. The quoted above paragraphs [44]-[46] of Cranmer-1 do not mention the size of the subject/object at all. The concept that “a virtual zone or space may be set by the controller on the basis of three-dimensional information created around objects in the relevant area, such that the virtual zone or space is created ‘automatically’” where “the virtual zone or space may be set progressively, and may be ‘updated’ by the controller or processing unit where, as an example, the virtual zone or space is set with reference to a subject object and the subject object moves” is not the same concept as “wherein the controller dynamically adjusts the volume of the zone to accommodate different sizes of luggage” as defined in claim 1.
110. Based on the evidence on file, on the balance of probabilities, I am not satisfied that the person skilled in the art would fully appreciate the potential disclosure in document D2 of a virtual zone with such properties that, when incorporated into a luggage processing station, it could fell within the scope of the Dynamic Virtual Zone as defined in claim 1. It appears to me that such a potential disclosure could only be appreciated with the benefit of the knowledge of the claimed invention. In addition, based on Mr Cranmer’s evidence, I am not satisfied that the person skilled in the art would be motivated to incorporate any of the teachings of document D2 into a luggage processing station. Therefore, on balance, I am not satisfied that the Opponent has established that the person skilled in the art would adopt, as a matter of routine, any relevant information (potentially) disclosed in document D2 and incorporate it in a luggage procession station (e.g. the one disclosed in document D1, even if such a station could be considered part of the common general knowledge) such that the invention defined in claim 1 would be reached. Therefore, I am not satisfied that claim 1 is obvious in light of the common general knowledge together with document D2.
Inventive step in light of the common general knowledge together with document D3
111. The disclosure of document D3 “relates to a method and an apparatus for monitoring a three-dimensional spatial area. More particularly, the invention relates to a method and an apparatus designed for safeguarding an automatically operating installation which poses a risk to persons or other objects” (at [0002]).
112. Cranmer-1 includes three paragraphs containing all comments with respect to this document:
“47. D3 is a US Patent Application entitled ‘Method and apparatus for monitoring a three-dimensional spatial area’ and dated 29 October 2009. D3 describes a method and apparatus for monitoring a three dimensional spatial area using at least two cameras (which I understand to be stereoscopic cameras), and processing those images to identify potential intrusions to a virtual protection zone.
48. D3 describes the use of the method and apparatus ‘to protect dangerous areas of other installations such as, for example, belt conveyors or assembly cells’. This is a very similar application to monitoring the area on the injector conveyor of bag drop systems, which also utilise a belt conveyor.
49. The stereoscopic camera technology described in D3 was also offered as part of standard industry practice in automation and control solutions before February 2014.” (underlining added, reference(s) omitted)
Notably, no mentioning can be found of a controller adjusting the virtual protection zone, let alone this being done to accommodate different size objects.
113. The Opponent submits:
“103. D3 discloses the use of stereoscopic camera systems to set and monitor a virtual zone.
104. Although D3 relates to a different industrial application, a virtual protection zone, or safe area around automated equipment, D3 also discloses the use of zone setting and monitoring in other industrial applications, such as belt conveyors or assembly cells. It discloses that an operator can ‘draw in graphically virtual protection zones’ inside a true image of the spatial area recorded by means of the sensor.
105. In summary, D3 discloses a camera sensor which can detect an intrusion into a monitored zone and send a signal to a processing unit, which is programmed to make the appropriate response (in the case of D3, to deactivate the system).” (OS, underlining added, reference(s) omitted)
114. Interestingly, it does not appear that the Opponent considers that this document discloses the creation of a virtual zone with similar properties to the Dynamic Virtual Zone as defined in claim 1. Nonetheless, the Opponent concludes:
“106. It appears to be common ground that the common general knowledge included at least all of the integers of the 687 Patent [i.e. the Application], other than the use of stereoscopic cameras to create a dynamic virtual zone (although the opponent says that the use of stereoscopic cameras to create a dynamic virtual zone was disclosed by D1, for the reasons set out above).
107. In light of the agreed common general knowledge, a skilled addressee at the priority date in possession of D3 would have been directly led to try using a stereoscopic camera system or 3D camera to create a virtual dynamic zone in a baggage handling system. The skilled addressee would have a reasonable expectation that using a stereoscopic camera in this way might well produce a useful result.” (OS, underlining added)
115. In view of the limited evidence on the issue and given the lack of relevant disclosure in document D3 as noted above, I cannot find a basis for the Opponent’s contention. Therefore, I am not satisfied that claim 1 is obvious in light of the common general knowledge together with document D3.
Inventive step in light of the common general knowledge together with D4
116. D4 is characterised by the Opponent as “the installation and use of the applicant’s Auto Bag Drop product at airports since at least July 2010” (OS at [6(e)]). During the hearing, the Opponent further explained that D4 is a label given to the information disclosed by the prior use of the Auto Bag Drop product as per the evidence.
117. The Opponent does not appear to contend that the virtual zone utilised by this system was a Dynamic Virtual Zone (see OS at [110]). Instead, it submits:
“112. Given that the common general knowledge included knowledge of stereoscopic and 3D cameras for the purposes of object detection, it was obvious that using stereoscopic and 3D cameras would allow for the creation of a dynamic virtual zone, which could be adjusted to reflect the properties of each piece of baggage. Such a system would more readily be able to identify oversize luggage, and would be less prone to registering false positives.
113. Given that the KinectTM system was widely used and affordable, and had been well researched and was well understood, the skilled addressee would be directly led to try the Microsoft KinectTM to improve the Auto Bag Drop system, and would have expected that it might well produce a useful result.” (OS, underlining added, reference(s) omitted)
118. I will focus my attention to the underlined statements above. As I noted earlier, the invention defined in claim 1 is about the functionality provided by the Dynamic Virtual Zone and not about the use of 3D cameras. In my discussion of obviousness with respect to document D1, I concluded that I am not satisfied that the Opponent has established that the Dynamic Virtual Zone functionality as defined in claim 1 is an inevitable or routine consequence of the use of 3D cameras even if this use is related to the creation and adjustment of a virtual zone.
119. Therefore, I am not satisfied that the Opponent has established that claim 1 is obvious in light of the common general knowledge together with D4. It follows that I do not need to decide whether the prior use of the Auto Bag Drop product and the exact information ascertainable from this was indeed established on the evidence.
Inventive step in light of the common general knowledge together with D5
120. D5 is characterised by the Opponent as “the installation and use of BCS Group Ltd’s (later Daifuku BCS’) ‘BAGgate’ self-service baggage product at airports since at least March 2012” (OS at [6(f)]). During the hearing, the Opponent further explained that D5 is a label given to the information disclosed by the prior use of the BAGgate product as per the evidence.
121. Regarding D5, the Opponent submits:
“116. Daifuku BCS’ BAGgate product was commercially available before the priority date, and included all integers of the 687 Application [i.e. the Application] save for the use of 3D cameras and the associated dynamic adjustment of the virtual zone (although this feature was under investigation by Daifuku).
117. For the reasons set out in relation to the Auto Bag Drop Product, it was obvious to improve the BAGgate product by incorporating 3D cameras (as is reflected by the fact that Daifuku was investigating that option).” (OS, underlining added, reference(s) omitted)
122. Again, I will focus my attention to the underlined statements above. As I previously noted, based on the evidence, I am not satisfied that the dynamic adjustment of the virtual zone is necessarily “associated” with the use of 3D cameras. To support its statement that the underlined feature “was under investigation by Daifuku”, the Opponent relies on the following evidence (see OS at page 24, footnote 112):
“26. … 3D camera technology was Daifuku BCS’ preferred selection for the ongoing development of the BAGgate Self service bag drop product. This is reflected in the General and Technical Specifications (RLC-2), which was amended on 2 December 2013 to note that 3D camera capability was an optional inclusion for the BAGgate sensor arch from June 2014.” (Cranmer-1, underlining added)
“32. As I have stated above, 3D cameras such as Kinect were widely known in the field of airline passenger and baggage processing and handling, and many other industries, well before February 2014. Companies within that field such as Daifuku BCS were all investigating the use of 3D cameras as part of the routine development of their baggage handling systems before February 2014. The uses being investigated included programming the system controller to use live data from 3D cameras to make automatic adjustments to the output of the system, such as raising an alarm that an inappropriate item was in the processing area.” (Cranmer-2, underlining added)
123. Fair reading of the evidence reveals that while Daifuku BCS was indeed investigating the use of 3D cameras, none of the uses being investigated was related to the creation of a Dynamic Virtual Zone. Based on the evidence on file, I am not satisfied that the Opponent has established that claim 1 is obvious in light of the common general knowledge together with D5. It follows that I do not need to decide on whether the prior use of the BAGgate product and the exact information ascertainable from this was indeed established on the evidence.
Inventive step in light of the common general knowledge considered separately
124. The Opponent has not provided any specific written submissions on the point. During the hearing, it was clarified that this contention is based on the Opponent’s view that the information contained in document D1 was part of the common general knowledge, hence the same reasoning as for document D1 applies. Given my earlier discussion of obviousness in light of document D1, I cannot be satisfied that the Opponent has established that claim 1 is obvious in light of the common general knowledge considered separately.
Inventive step – summary
125. I have not established that the invention defined in claim 1 lacks an inventive step. Claims 2 to 14 are ultimately appended to claim 1 and add further features to those previously defined, hence I have no reason to consider that any one of these claims is obvious. Therefore, in conclusion, I have not established that any one of claims 1 to 14 does not involve an inventive step.
MANNER OF MANUFACTURE
126. To establish this ground of opposition, the Opponent appears to rely on considerations of the type discussed in Commissioner of Patents v Microcell Ltd [1959] HCA 71, and submits:
“124. The High Court observed (at [249]):
Many valid patents are for new uses of old things. But it is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles, and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before.
125. The Court concluded (at page 250) that in the case before them, the specification did not on its face disclose more than a new use of a particular known product. It was apparent from the specification that tubular self-propelled-rocket projectors were well-known articles of manufacture and that synthetic resinous plastics reinforced with mineral fibres, and in particular polyester plastics reinforced with glass or asbestos fibres, were well-known materials. The Court reached this conclusion because the specification contained no suggestion of novelty in relation to the article to be manufactured or the material to be used.
…
128. The Court said at page 251:
We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do.” (OS, original italics)
127. The Opponent also relies on a different case:
“129. In Merck & Co Inc v Arrow Pharmaceuticals Limited [2006] FCAFC 91; 154 FCR 31, the patent incorporated two prior publications by reference. The Full Court observed (at [64]):
Clearly, it is not sufficient that a claimant simply asserts ‘newness’. It is necessary that the specification be ‘construed and understood’. Technical terms may need explanation, but that is by no means uncommon in cases of this kind. We acknowledge the need to avoid incursion into areas correctly addressed under other sections of the Act.” (OS, original italics)
128. Importantly, the Opponent’s application of the case law to the facts of the present case is limited to the following explanations, quoted in their entirety:
“133. In this case, it is apparent that at its highest, the applicant used commercially available and widely known 3D camera systems for a purpose (calculation of a dynamic zone and intrusion detection) for which their marketed features made them suitable. That conclusion is supported by the 687 Application [i.e. the Application] itself, which does not suggest that there is any newly discovered feature of the Microsoft KinectTM (or other 3D or stereoscopic cameras) which make them suitable for this purpose. Indeed, the 687 Application does not even provide any guidance on how to use the cameras, supporting the conclusion that their mode of operation was widely known and understood.
134. Accordingly, each of the claims of the 687 Application are liable to be refused on the ground that they are not to a manner of manufacture[.]” (OS, underlining added, reference(s) omitted)
129. Subsection 18(1) stipulates:
“Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
…” (underlining added)
Therefore, it is the claimed invention that the Opponent needs to establish not to be a manner of manufacture.
130. As I have already noted on several occasions, claim 1 does not include any features related to the use of any type(s) of cameras at all. Even simply due to this fact, it is clear that the Opponent’s contention cannot be accepted. In addition, given the functional technical contribution of the claimed invention related to the creation of a Dynamic Virtual Zone in a luggage processing station which has not been shown on the evidence as being known or obvious at the priority date, I consider that the present case is clearly distinguishable from the cases relied on by the Opponent.
131. On the balance of probabilities, I am not satisfied that the Opponent has established that the invention claimed in any one of claims 1 to 14 is not a manner of manufacture.
THE NEW MATERIAL AND REGULATION 5.23
132. The Opponent’s reasoning as to why the New Material should be consulted by the Commissioner under the provisions of regulation 5.23 is provided below:
“49. A central issue for resolution by the Delegate is the question of whether the Microsoft KinectTM 3D camera system and its features were widely known. The resolution of this issue is critical to the inventive step case…
50. It is apparent from Mr Richard Dinkelmann’s evidence that central to the alleged invention was the realisation that the Microsoft KinectTM one sensors could be used to determine bag conveyability. Mr Richard Dinkelmann explains that the benefits of the sensor were that the size of the virtual box can be adjusted dynamically, there was cost saving, and tubs could be detected by the sensors. Mr Rainer Dinkelmann’s evidence is to similar effect.
51. The opponent says that it was entirely unsurprising that a stereoscopic camera like the Microsoft KinectTM sensors could be used in this way, given that the features of these sensors were widely known (a proposition which does not appear to be disputed by any of the applicant’s witnesses). If the Delegate concludes that Mr Richard Dinkelmann and Mr Rainer Dinkelmann’s evidence filed in answer supports the conclusion that the use of a Microsoft KinectTM one sensor was not obvious, it is appropriate to make an order under Reg 5.23 to admit paragraphs [7]-[17] and RLC-10 to RLC-18 [i.e. the New Material], which demonstrate that the features of this sensor were common general knowledge.” (OS, underlining added, reference(s) omitted)
133. It is important to note that my analysis in relation to the common general knowledge and inventive step does not appear to support the correctness of the first underlined statement above. Indeed, as I have already explained, the outcome of my decision is not affected by “whether the Microsoft KinectTM 3D camera system and its features were widely known”. In addition, my decision is not in any way based on the conclusion “that Mr Richard Dinkelmann and Mr Rainer Dinkelmann’s evidence filed in answer supports the conclusion that the use of a Microsoft KinectTM one sensor was not obvious” (see the second underlined statement above). I do not need to repeat my considerations here.
134. Therefore, in light of the test developed in Merial as quoted earlier in this decision, for the purposes of deciding the opposition, I have no reason to consult the New Material under the provisions of regulation 5.23, hence I will not do so.
CONCLUSION AND COSTS
135. I have not established that any one of the claims is not novel or does not involve an inventive step. In addition, I have not established that the invention claimed in any one of the claims is not a manner of manufacture. It follows that the opposition is unsuccessful on all grounds.
136. It is a normal practice that costs should follow the event and both parties’ submissions are along this line. I have no reasons to depart from the normal practice and, since the opposition is unsuccessful, I will award costs according to Schedule 8 against the Opponent.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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