Alcatel v British Telecommunications Public Limited Company
[2006] APO 33
•22 September 2006
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 714088 in the name of British Telecommunications Public Limited Company
Title :Peripheral Control in an Intelligent Network
Action :Opposition by Alcatel under s 59 of the Patents Act 1990
Decision : Issued 22 September 2006.
Abstract
Claim 14 of the present application lacks novelty and an inventive step in light of either ETS 300 374-1 or ITU-T Q.1218.
Regarding the ground of lack of fair basis, it was found that though the terms of claim 14 were reproduced identically in a consistory clause on page 3b, this in turn was not supported by the specification when read as a whole. Claim 14 is in the result not fairly based (per Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58).
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 714088 by British Telecommunications Public Limited Company and opposition under Section 59 of the Patents Act 1990 by Alcatel.
BACKGROUND
British Telecommunications Public Limited Company (“BT”) filed patent application 714088 (20380/97) on 21 March 1997 through the provisions of the Patent Co-operation Treaty. The application claims priority from an application made to the European Patent Office, which was filed on 29 March 1996. Following examination, the application was advertised as accepted on 16 December 1999.
Alcatel filed notice of opposition on 14 March 2000 followed by a Statement of Grounds and Particulars on 13 June 2000. After several unopposed extensions of time, evidence in support was completed on 5 July 2001. BT was due to serve its evidence in answer by 5 October 2001. After several extensions of time, this was served on 21 October 2002. The evidentiary stage was completed by the filing of evidence in reply on 7 June 2003.
As a consequence of Alcatel’s request to amend the Statement of Grounds and Particulars (allowed on 17 July 2003) and BT’s request to amend the specification (allowed on 30 April 2004), both parties were afforded the opportunity to file further evidence, and this was completed on 12 July 2005.
The opposition came to hearing in Canberra on 30 March 2006. The applicant was represented by Mr David Yates of counsel, instructed by Mr Peter Heathcote of the patent attorney firm Shelston IP. The opponent was represented by Mr Greg Noonan, patent attorney of the firm Freehills. Dr Mark Searle, Chief Executive Officer and founder of INSIG Ltd, was also in attendance as an observer for the applicant.
THE SPECIFICATION
The present invention relates to a telecommunications system using an intelligent network architecture, and in particular to the control of a peripheral in such a network. In conventional public switched networks (PSTNs), the functions the network is able to perform depend on the design of the switch which handles basic call-routing. Introducing any new functionality requires the switch to be redesigned, with the provision of new software and possibly also new hardware. For a large network this process can take one or more years.
An intelligent network (IN) is a service-independent telecommunications network. That is, intelligence is taken out of the switch and placed in computer nodes that are distributed throughout the network. This provides the network operator with the means to develop and control services more efficiently. New capabilities can be rapidly introduced into the network, and these can be easily customised to meet individual customer's needs.
In an IN the control of the basic call routing is carried out at a service switching point (SSP) and is kept functionally separate from the control of call progression by a service control point (SCP). The SCP contains programmable service-independent capabilities (or service logic) that is under the control of service providers. The SCP is also able to access functions provided by an intelligent peripheral (IP). An intelligent peripheral might be equipped, for example, to play pre-recorded announcements to a subscriber. To ensure that the interworking of networks and components of different operators and suppliers is possible, the architecture and protocols of the IN are required to conform to internationally agreed standards.
The International Telecommunications Union (ITU) developed a signalling protocol called Intelligent Network Application Part (INAP) used in the intelligent network architecture. The ITU defines several “capability levels” for this protocol, starting with Capability Set 1, or CS‑1. The standard defines a complete architecture including the architectural view, state machines, physical implementations and protocols.
However, the need to conform to internationally agreed standards tends to negate the very flexibility which the IN architecture was intended to provide. The specification provides as an example the voice messaging service known as “Call Minder”, and describes the desirability of incorporating this service on an intelligent peripheral within an intelligent network system. However, the Call Minder functions do not correspond to either of the two relevant classes of IP functions which the relevant standards, such as INAP, provide for.
INAP includes an unassigned field, called the “ExtensionField”, in messages passed between the IP and SCP. Conventionally, the extension field is used for passing additional data or parameters to one of the standard functions of the IP supported by INAP. However, it has been recognised by the applicant that the extension field can be used to invoke one or more additional (non-standard) functions available on the IP. What the invention provides is a method of accessing additional functions (not provided for in a standard protocol) which may be provided on a given IP whilst maintaining conformity with the standards of the protocol. This is achieved by effectively disguising calls to the additional functions on the IP as messages for invoking the standard functions defined in the protocol. The IP then responds by executing application code performing the additional functions instead of the relevant standard function.
There are 17 claims, of which claims 1, 10, 11, 13 and 14 are independent claims. These independent claims read as follows:
A method of operating an intelligent peripheral (IP) under the control of a service control point (SCP) in a telecommunications network, the method comprising:
a)passing standard format control messages having a predetermined format defined according to a standard protocol from the service control point to the intelligent peripheral, the predetermined format including an extension field capable of providing one or more additional parameters for an operation defined in the standard protocol for the intelligent peripheral to execute as a standard defined function,
at least one standard format control message being characterised by:
having the predetermined format associated with the operation defined in the standard protocol; and
including sub-field means in the extension field to indicate that the intelligent peripheral should not invoke a dialogue relating to the standard defined function but should instead invoke one or more custom dialogues at the intelligent peripheral using implementation means provided by the intelligent peripheral addressed by said subfield means within the extension field;b)executing on the intelligent peripheral, when a standard format control message is received without said sub-field means in the extension field, a standard defined function to provide an operation defined in the said standard protocol; and
c)invoking on the intelligent peripheral, when a standard format control message is received with said sub-field means in the extension field, the implementation means to implement the one or more custom dialogues on the intelligent peripheral, wherein the implementation of each custom dialogue executes a function which is not defined in the standard protocol.”
An intelligent peripheral (IP) for use in a telecommunications network under the control of a service control point (SCP), the intelligent peripheral comprising:
a) means for reading standard format control messages having a predetermined format defined according to a standard protocol received from the service control point, wherein the predetermined format includes an extension field capable of providing one or more additional parameters for an operation defined in the standard protocol for the intelligent peripheral to implement as a standard defined function, at least one standard format control message being characterised by having the predetermined format associated with the operation defined in the standard protocol and further including sub-field means in the extension field to indicate that the intelligent peripheral should not invoke a dialogue relating to the standard defined function but should instead invoke one or more custom dialogues at the intelligent peripheral using implementation means provided by the intelligent peripheral to implement the custom dialogue, said implementation means being addressed by said subfield means within the extension field;
b) means for executing, when a standard format control message is received without said sub-field means in the extension field, a standard defined function to provide an operation defined in the said standard protocol;
c) means for recognising in the said messages when said subfield means in said extension field is present;
d) implementation means for invoking the custom dialogue, said implementation means being addressed by said subfield means and responsive to the said means for recognising when a standard format control message is received with said sub-field means in said extension field.
A service control point far use in a telecommunications network which includes an intelligent peripheral (IP) which is arranged to function under the control of the service control point, the service control point comprising:
a) a control processor which is arranged to execute a standard defined service control function;
b) a signalling interface which is connected to the control processor and which is arranged to generate standard format control messages having a predetermined format defined according to a standard protocol for transmission to an intelligent peripheral, wherein said predetermined format includes an extension field capable of providing one or more additional parameters for an operation defined in the standard protocol, the said signalling interface including means for writing in the extension field of some of the said standard format messages sub-field means to indicate that the intelligent peripheral should not invoke a dialogue relating to the standard defined service control function but should instead invoke one or more custom dialogues at the intelligent peripheral using implementation means addressed by said sob-field means within the extension field.
A method of operating an intelligent peripheral (IP) under the control of a service control point (SCP) in a telecommunications intelligent network, the method including the steps of:
passing formatted control messages having a predetermined format from the service control point to the intelligent peripheral, the predetermined format including an extension field capable of providing one or more additional parameters or data to an operation which the intelligent peripheral can implement as a predefined function, at least one formatted control message being characterised by maintaining the format associated with the predefined operation and including sub-field means in the extension field to indicate that the intelligent peripheral should not invoke the dialogue relating to the predefined function but should instead invoke one or more custom dialogues at the intelligent peripheral using implementation means provided on the intelligent peripheral addressed by said sub-field means within the extension field; and
executing on the intelligent peripheral. when a message is received without said sub-field means in the extension field, said predefined function indicated by the predefined operation; and invoking on the intelligent peripheral, when a message is received with said sub-field means in the extension field, the implementation means to the execute one or more custom dialogues on the intelligent peripheral, wherein said predetermined format is a format which conforms to a standard protocol, said predefined operation is an operation which conforms to the said standard protocol, said predefined function is a function which conforms to the said standard protocol, and the execution of the one or more custom dialogues provides one or more functions not provided for in the said standard protocol.
A method of operating an intelligent peripheral (IP) under the control of a service control point (SCP) in a telecommunications network, the method comprising:
a) passing control messages conforming to a standard protocol from the service control point to the intelligent peripheral, at least one of the said control messages including an extension field having at least one subfield, each sub-field identifying the said at least one message as relating to a function not provided for in the standard protocol, the sub-field addressing means provided on the said intelligent peripheral to implement the function;
b) executing on the intelligent peripheral, in response to messages received without said sub-field, pre-determined functions which are provided for in the said standard protocol; and
c) executing on the intelligent peripheral, in response to a message including the said extension field, a routine which implements the function.”
STATEMENT OF GROUNDS AND PARTICULARS
The Statement of Grounds and Particulars asserts that the claims of the specification are not clear, succinct or fairly based, and that the claimed invention is not a manner of manufacture, is not novel and does not involve an inventive step.
EVIDENCE
The evidence in support comprises two statutory declarations by Evelyn Maime Swenson (“Swenson No. 1”) and Yim Lee (“Lee No. 1”). Ms Swenson is a Member of the Australian Institute of Physics and a Member of the Institute of Electrical and Electronics Engineers. She states that between 1990 and 1997 she worked on the specification of IN Standards at Telstra Research Laboratories, and was also the senior or sole Telstra delegate at most relevant ITU ‑ Telecommunications Standardisation Sector (ITU‑T) and ETSI meetings. Ms Swenson has been the joint or general editor of ITU‑T Recommendations Q.1214, Q.1218, Q.1224 (IN Capability Set 2) and Q.1224 (Standards CS-2), as well as a general contributor to several other related Recommendations. A copy of the opposed patent is appended to her declaration as exhibit EMS-1, along with the following ITU-T Recommendations:
· ITU-T Recommendation Q.1400, “Architecture Framework for the Development of Signalling and OAM Protocols using OS1 Concepts”, published March 1993 (exhibit EMS-2)
· ITU-T Recommendation Q.1214, “Distributed Functional Plane for Intelligent Network CS-I”, first published March 1993 and published in a revised version October 1995 (exhibit EMS-3)
· ITU-T Recommendation Q.1205, “Intelligent Network Physical Plane Architecture”, published March 1993 (exhibit EMS-4)
· ITU-T Recommendation Q.1215, “Physical Plane for Intelligent Network CS-1”, first published March 1993 and published in revised form in March 1995 (exhibit EMS-5)
· ITU-T Recommendation Q.1218, “Interface Recommendation for Intelligent Network CS-1”, first published March 1993 and in a revised version in October 1995 (exhibit EMS-6)
· ITU-T Recommendation Q.1219, “Intelligent Network Users Guide for Capability Set 1”, published April 1994 (exhibit EMS-7)
· European Telecommunication Standard ETS 300 374-1, “Intelligent Network (IN); Intelligent Network Capability Set 1 (CS1): Core Intelligent Network Application Protocol (INAP): Part 1: Protocol Specification”, published September 1994 (exhibit EMS-8)
Mr Lee holds a Bachelor of Engineering (Electrical) and a Graduate Diploma (Data Processing), and has been employed by Telstra (Telecom) since 1983. He states that since 1992 he has worked in the field of CCS 7 standardisation and product customisation, and from 1995 to the present day has participated in “Study Group 11 of the ITU-T, in relation to ISUP, MTP, SCCP, BICC, and IN CS1 & 2”. A copy of the opposed patent, along with several Recommendations relevant to IN, are appended to his declaration as exhibits YL‑1 to YL‑8. I note that these exhibits correspond to exhibits EMS‑1 to EMS‑8.
The applicant's evidence in answer consists of a statutory declaration by the inventor, Martin David Cookson (“Cookson No. 1”). Mr Cookson states that he has read the first Swenson and Lee declarations, and in response provides some further clarification on the use of the extension field in INAP. His curriculum vitae is attached as exhibit MDC‑1.
The evidence in reply consists of further declarations by Swenson (“Swenson No. 2”) and Lee (“Lee No. 2”). Lee No. 2 is accompanied by two exhibits:
· ITU-T Recommendation Q.931, “Digital Subscriber Signalling System No. 1 Network Layer”, published March 1993 (exhibit YM-1)
· ITU-T Recommendation Q.767, “Specifications of Signalling System No. 7”, published 1991 (exhibit YM-2)
A statutory declaration by Amy Jane Sawyer, Patent Scientist at Freehills, has also been filed. Annexed to Ms Sawyer’s declaration are exhibits AJS‑1 and AJS‑2 which establish the publication dates of some of the material referred to in the first declarations by Swenson and Lee.
The applicant’s further evidence comprises two further declarations by Mr Cookson (“Cookson No. 2” and “Cookson No. 3”) and statutory declarations by Dr Mark Searle (“Searle no. 1” and “Searle No. 2”), who is the Chief Executive Officer and founder of INSIG Ltd, a consultancy specialising in wireless internet solutions. The opponent’s further evidence consists of a third statutory declaration by Swenson (“Swenson No. 3”).
I will discuss the evidence in more detail, where appropriate, in my decision.
SUBMISSIONS
The submissions made were extensive and I will refer to them where necessary in my decision. However it became clear during the hearing that the main ground of contention was the fair basis of the independent claims. So far as the grounds of novelty and inventive step were concerned, the arguments focussed on only some of the cited particulars, namely ETS 300 374-1, ITU-T Q.1400 and ITU-T Q.1218.
DECISION
Onus of proof
In proceedings such as these before the Commissioner the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd's Application (1979) RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T A Miller Ltd v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). In F Hoffman-La Roche AG v New England Biolabs Inc (2000) FCA 283, Emmett J of the Federal Court found that in opposition proceedings the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
Fair Basis
The opponent submitted that the specification does not comply with section 40(3) since independent claims 1, 10, 11, 13 and 14 are not fairly based on the matter described in the specification. In particular, the claims are unsatisfactory because they are not limited by the requirement that a custom dialogue is implemented or invoked instead of a standard dialogue. According to Mr Noonan, the absence of this feature is contrary to the “Summary of the Invention” at page 2, lines 26 to 33 which states:
“The present invention provides for the first time a method of accessing any additional functions which may be provided on a given intelligent peripheral whilst maintaining conformity with standard protocols. This is achieved by effectively disguising calls to the additional functions as messages for invoking the standard functions, but with a field included in the message identifying the disguised nature of the message. The intelligent peripheral then responds by executing application code performing an appropriate one of the additional functions instead of the relevant standard function.”
It is to be noted that the terms of independent claims 1, 10, 11, 13 and 14 are reproduced identically in the consistory clauses on pages 2 to 3b. Nevertheless, the employment of consistory clauses equivalent to the widest claims does not compel the finding that the claims are fairly based. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (18 November 2004) the High Court said that the words “fairly based” in section 40(3) refer to a relationship between what is claimed in the claims and what is described in the body of the specification. The court emphasised that in assessing whether the invention claimed is fairly based, it is necessary to take into account the construction of the specification as a whole. Thus at [99]:
“… the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.”
The court also quoted with approval a passage taken from the judgment of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 (at 95), where his Honour said, inter alia:
"... the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
These authorities suggest that in assessing whether the claimed invention is fairly based, it is necessary to construe the specification as a whole, putting aside particular parts which are in truth only loose or stray remarks. A perusal of the body of the specification leads plainly to the conclusion that the invention concerns the provision of additional functionality on an IP. According to the various recommendations relating to INAP, such functionality is conventionally invoked only after a change of application context is arranged between the SCP and the IP. However, according to the invention, the SCP makes a disguised call to the additional function, with the benefit that there is no need to change the application context of the control messages sent by the SCP to the IP prior to the SCP invoking the additional functionality on the IP. The control messages disguise the invocation of the additional function by flagging the IP to load new application code to implement the function. The flag causing the new function to be invoked on the IP is either the extension field of the control messages conforming to INAP or by any unassigned field of a network-level protocol which support the INAP interactions between the IP and the SCP (see page 10, lines 8 to 17).
Mr Yates submitted that the opponent had engaged in an overly meticulous and strained construction of the specification “…without embracing the substance of what was taught”, and stated that there is nothing in the specification that requires a custom dialogue to be run exclusively. Rather, by use of the phrase “additional function”, the specification envisages the possibility that a non-standard function could be run as well as a standard function.
In the context of the description, the phrase “additional function” clearly refers to a function not explicitly provided for by the INAP standard, and not, as Mr Yates intimated, a function that runs contemporaneously in addition to a standard function. As noted by Mr Noonan, the specification at page 2 discloses the use of standard control messages conforming to INAP to invoke additional functionality. In doing so it makes clear that the additional functions are run in lieu of the standard functions. It does not suggest that the additional functions are run as well as the standard functions. The phrase “instead of” reappears later in the specification at page 7, where it is said:
“In systems embodying the present invention, the IP and SCP are programmed to treat this field as a flag identifying a message as relating to a custom dialogue rather than a standard resource. The IP then runs the dialogue indicated by the sub-field ‘dialogue identifier’ contained within the extension field, instead of the standard dialogues the operation carrying this extension suggest (ie PA or P&C).”
Perhaps more determinative of the issue is the absence of any statement in the description to support the contention that the IP runs any function other than the additional function indicated by the sub-field “dialogue identifier” contained within the extension field. There is simply no basis, upon a reasonable reading of the specification, for the invention to be construed as extending beyond the invocation of an additional function instead of a standard function. For this reason, the applicant’s argument that there is nothing in the specification that requires a custom dialogue to be run exclusively must fail. As an aside, I note that the inventor at paragraphs 5.1 and 5.4 of Cookson No.2 confirms that the IP runs the dialogue indicated by the sub-field identifier instead of the standard dialogues.
This leaves me to determine whether the claimed invention is wider than what is disclosed by the specification when read as a whole. Claim 1 speaks of a method of operating an IP such that when a standard format control message is received with sub-field means in the extension field, one or more custom dialogues are invoked. As noted by Mr Noonan, step (c) of the claim does not explicitly state that a custom dialogue is implemented instead of a standard dialogue, and in his view the claim does no more than “obliquely refer” to such a feature.
I believe that this contention pays insufficient regard to the wording of claim 1. In construing the claim it is improper to read step (c) in isolation from the steps preceding it. Step (a) includes the phrase “including sub-field means in the extension field to indicate that the intelligent peripheral should not invoke a dialogue relating to the standard defined function but should instead invoke one or more custom dialogues”. In my opinion, the first use of the preposition “to” in this phrase expresses purpose, while the auxiliary verb “should” is clearly being used in the indicative or imperative mood rather than the subjunctive. In the context of claim 1, the terms “to” and “should” signify that when a standard format control message is received with sub-field means in the extension field, a custom dialogue instead of the standard dialogue is invoked. It follows that the phrase defines an absolute obligation, rather than a mere capability (cf the phrase “including sub-field means in the extension field for indicating…”). Contrary to the opponent’s assertion, I consider that there is more than an oblique reference to the step of invoking a custom dialogue instead of a standard dialogue.
On this construction, claim 1 defines a monopoly which is coterminous with the invention described in the body of the specification. There has been a real and reasonably clear disclosure of the invention as claimed, and I thus find claim 1 to be fairly based.
With regard to claims 10, 11 and 13, it can be seen that these are couched in similar terms to claim 1. Each use the construction “…sub-field means...to indicate…should not invoke…but should instead…” and I am satisfied that they do not travel beyond the invention disclosed by the specification. I conclude that these claims are also fairly based.
Claim 14 does not employ this construction. Rather, it merely states that a routine which implements a non-standard function is executed in response to a message including an extension field. There is no limitation, either explicit or implicit, which defines that a non‑standard function should be run instead of a pre‑defined function. It is clear that the claim is for a wider monopoly than the invention which is described in the specification. Accordingly, I conclude that claim 14 is not fairly based.
Novelty
The courts have made clear that, in general terms, the test to be applied in respect of lack of novelty is the reverse infringement test, that is, "whether the alleged anticipation would, if the patent were valid, constitute an infringement" (see Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 per Aickin J at 235 cited by Lockhart J in R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 568). The reverse infringement test requires that the prior publication contain "clear and unmistakable directions to do what the patentee claims to have invented" (see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 per Sachs LJ at 486). In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is possessed by the prior disclosure (see Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367).
I do not think there is any doubt that every feature of the independent claims should be considered essential. A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183), and this seems to me to be the case here. Neither party expressed a contrary view.
At the hearing, the opponent conceded with respect to claims 1, 10, 13 and 14 that:
“…the invention would be rendered novel if the claims properly defined the step of carrying out the non-standard function instead of a standard function defined in the protocol, or in the instance of claim 10, if the implementation means clearly included that feature.”
Of the eight ITU-T Recommendations and one ETS Standard relied upon for want of novelty (EMS-2 to EMS-8, YM-1 and YM-2), ETS 300 374-1, ITU-T Q.1400, ITU-T Q.1218 appear to be the most relevant in their discussions regarding INAP. Section 4.6 of ETS 300 374-1 describes how functional changes should be implemented in INAP CS‑1 in the following terms:
“4.6.2.2 Procedure for major additions to ETSI INAP
In order to support the introduction of major function changes, the protocol allows a synchronisation between the applications with regard to which functionality is to be performed. This synchronisation takes place before the new function is invoked in either application entity, in order to avoid the complicated fall-back procedures. The solution chosen to achieve such a synchronisation is use of the AC negotiation provided in ETS 300 287.
4.6.2.3 Procedures for minor additions to ETSI INAP
The extension mechanism marker shall be used for future standardised minor additions to INAP. This mechanism implements extensions differently by including an “extensions marker” in the type definition. The extensions are expressed by optional fields that are placed after the marker. When an entity receives unrecognised parameters after the marker, they are ignored.
4.6.2.4 Procedures for inclusion of network specific additions to ETSI INAP
This mechanism is based on the ability to explicitly declare fields of any type via the Macro facility in ASN.1 at the outermost level of a type definition. It works by defining an “ExtensionField” that is placed at the end of the type definition. This extension field is defined as a set of extensions, where an extension can contain any type. Each extension is associated with a value that defines whether the terminating node should ignore the field if unrecognised, or reject the message, similar to the comprehension required mechanism described in the previous subclause. Refer to ITU-T Recommendation Q.1400 for a definition of this mechanism.”
These clauses reinforce that the conventional use of the extension field is for passing additional data parameters to one of the standard functions of the IP. Only functions which do not require a change in application context should be implemented using the extension field, and it is clear that the INAP architecture supports the provision of additional functions only by using the application context negotiation mechanism. A reading of clause 12.5 of ITU-T Q.1400 to which is referred to in clause 4.6.2.4 of ETS 300 374-1 indicates that the extension field can only be used to implement certain minor or network specific changes in functionality which would not require the SCP and the IP to be synchronised to cope with a new application context. Where such functionality is to be added which does require a new application context, Q.1400 teaches that it must be pre-negotiated prior to the SCP invoking the new function on the IP.
Even though the views of the opponent’s declarants are broadly consistent with this understanding, they nevertheless argued that the use of the extension field in the manner claimed was not novel. Paragraph 15 of Swenson No. 1 states:
“The use of ExtensionField is also explained in similar terms in Recommendation Q.1400, Section 12.5, Recommendation Q.1219, Section 6.5.1 and in Core INAP, Section 4.6. There is no restriction on how the ExtensionField can he used, nor is there any restriction on the type of information that can be placed in the ExtensionField. In other words, the purpose of ExtensionField is to allow complete flexibility to the application designer. During the development of the IN standards in ITU-T the need for the ExtensionField was discussed for every operation and there is widespread knowledge within the IN community of its purpose and use. Thus the first aspect of the invention (Page 2, Line I to Page 3, Line 7) and particularly the method described at in Page 2, Lines 15-22, is not novel, being completely covered by the documents mentioned in paragraph 2 above.”
Similar comments are made at Swenson No. 2 at paragraph 16, Swenson No. 3 at paragraph 7.13 and Lee No. 2 at paragraphs 9 and 10. To some extent, these comments distract from the consideration of novelty. There is no argument that CS-1 is capable of operating in the manner claimed. Nevertheless, the fact that the ITU-T and ETS documents may implicitly support the capability does not mean that they disclose the capability in the sense required to disprove novelty.
Alcatel’s arguments concerning the novelty of claims 1, 10 and 13 are predicated on the belief that these claims do not properly define the step of carrying out a non-standard function instead of a standard function. The opponent has conceded that these claims would be novel if they were so limited, and in my consideration of fair basis I have found that these claims are limited by such a feature. Accordingly, as no citation clearly discloses the invocation of an additional function instead of a standard function on the IP without pre-negotiating a new application context, I conclude that claims 1, 10 and 13 are novel. However, claim 14 is not limited to the invocation of an additional function instead of a standard function, and in my view is therefore anticipated by each of ETS 300 374-1 and ITU-T Q.1218.
With regard to claim 11, the opponent asserted that it was “fundamentally flawed” since:
“…the embodiment of that claim in the specification is Figure 3. Figure 3 is taken straight out of one of the standards. The two integers contained in that claim are present in [the equivalent of] Figure 3 of the prior art. The claim is not rendered novel by reference to a different kind of message…that one could use the equipment for…”
Figure 3 of the specification is a schematic of a SCP, and the relevant standard to which Mr Noonan directed attention to is ITU‑T Q.1218. Figure 1 of the recommendation details the logical architecture of an SCP in identical terms to that of Figure 3 in the specification, and in my view, the figures are functionally equivalent.
Though there is no reason why a drawing alone should not be capable of disclosing an invention (as per C Van der Lely NV v Bamfords Ltd [1963] RPC 61), the authorities have clearly stated that to render a claim not novel the prior art must positively disclose each essential claimed feature. The issue was considered in Canadian General Electric Co., Ltd v Fada Radio Ltd (1930) 47 RPC 69), where it was said:
"Any information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent. The latter invention must be described in the earlier publication that is held to anticipate it, in order to sustain the defences of anticipation. Where the question is solely one of prior publication, it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specifications contain clear and unmistakable directions so to use it. It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own."
Even though I have determined that the figures are functionally equivalent, it does not necessarily follow that claim 11 is anticipated. The claim speaks of three physical features viz “a control processor”, “a signalling interface” and a “means for writing”. Q.1218 does not disclose, either by virtue of Figure 1 or elsewhere in the document, a combination of these three physical features.
Mr Noonan further suggested that claim 11 was not novel as the “means for writing” might merely comprise a computer keyboard which is well-known in the art. I am not persuaded by this argument. as the requirement that each essential feature be disclosed holds even where the additional matter defined by the claim is common general knowledge or a workshop variation, provided it is an essential feature of the claim in question (per Nicaro Holdings v Martin Engineering 16 IPR 545 and RD Werner & Co Inc v Bailey Aluminium Products (supra)). The opponent has tried to get around this by a process of adding common general knowledge to the disclosure of ITU‑T Q.1218 (although it has attempted to characterise it more as a process of reading the prior art in light of the common general knowledge). This cannot give rise to anticipation, although, as is said in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra), it may cause the claim to fail on the ground of obviousness. The same point is made in Acme Bedstead Co Ltd v Newlands Bros Ltd (1937) 58 CLR 689, except that the term "subject matter" is used rather than "obviousness". I therefore find that claim 11 is not deprived of novelty by this citation.
In summary, I find that on the evidence before me claims 1 to 13 and 15 to 17 are novel. Claim 14, which is not limited to the invocation of an additional function instead of a standard function is anticipated by each of ETS 300 374-1 and ITU-T Q.1218.
Inventive Step
There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
“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.”
More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd 56 IPR 129 at 142-143 referred with approval to this approach and further held:
“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 … directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?’
That approach should be accepted.”
While inventiveness requires more than novelty, even a “scintilla of inventiveness” is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273 at 293-294). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
Though the ground of inventive step was raised in the statement of grounds and particulars, it was not at the forefront of any discussions at the hearing. Mr Noonan confirmed that the opponent was not alleging lack of inventiveness if the claims properly defined the step of carrying out the non-standard function instead of a standard function defined in the protocol. I believe that this is the correct approach, and consider that there is nothing in the citations that would motivate a person skilled in the art to implement an additional function on an IP by disguising a call to such a function within the extension filed of a control message that otherwise conforms to INAP.
The most relevant citation, ITU-T Q.1218 makes a clear distinction between changes requiring a change in application context (which must be pre-negotiated) and changes which do not require an application context change (which can be implemented using the extension field of the control message). The recommendation does not teach that a disguised call can be placed using the extension field of a control message conforming to INAP to invoke an additional function for which INAP requires a change in application context. Furthermore, there is insufficient evidence to establish that a non-inventive person skilled in the art, having ascertained, understood and regarded as relevant Q.1218 would, as a matter of routine, have implemented additional functionality on an IP using a control message conforming to INAP which retains the same application context as the control messages invoking standard functions on the IP. Accordingly, claims 1 to 13 and 15 to 17 must be regarded as inventive over this ITU-T recommendation. Similar shortcomings are evident in the other citations relied upon, and I am also satisfied that claims 1 to 13 and 15 to 17 are inventive over these documents.
However, having determined that claim 14 is not novel by virtue of the disclosures in either of ETS 300 374-1 or ITU-T Q.1218, I am also prepared to find that this claim lack an inventive step in light of these citations.
CONCLUSION
I have determined that the invention defined by claim 14 of the present application lacks novelty in light of either ETS 300 374-1 or ITU-T Q.1218, and that the claim does not possess an inventive step based on these citations. Also, as claim 14 is for a wider monopoly than the invention which is described in the specification, it is therefore not fairly based.
As there is clearly patentable subject matter within the specification I allow the applicant sixty (60) days from the date of this decision in which to file proposed amendments overcoming the problems noted above. If suitable amendments are not proposed within that time I will refuse the application.
COSTS
It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. I have found that the opponent has been partly successful in respect of the fair basis, novelty and obviousness of the claims. I therefore award costs against the applicant, British Telecommunications Public Limited Company.
R W J Finzi
Delegate of the Commissioner of Patents
22 September 2006
Patent attorneys for the applicant: Shelston IP, Sydney
Patent attorneys for the opponent: Freehills Patent & Trade Mark Attorneys, Melbourne
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