Amadeus Global Travel Distribution S.A. v GetThere L.P - [2008] APO 7

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 720671 in the name of GetThere L.P.

Title: System for Corporate Traveller Planning and Travel Management

Action: Request under section 104 to amend the specification and opposition thereto by Amadeus Global Travel Distribution S.A.

Decision: Issued 03 March 2008.
Abstract

Amendments allowable.
While the claims are certainly very different to what was on file before the amendment, their features are present in the originally filed specification. Therefore, the claims are not claiming matter not in substance disclosed and do not fall foul of s40(2) and (3) of the Patents Act. It is also clear from the amendments that the scope of the claims is narrower from that which existed prior to the amendment. The opposition does not succeed.
No award of costs. Each party should bear its own costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 720671 by GetThere L.P. and request under section 104 to amend the specification and opposition thereto by Amadeus Global Travel Distribution S.A.

DECISION

Patent application 720671 was filed on 6 September 1996 by Sabre Inc (hereafter “Sabre”). While the application has since been assigned to GetThere L.P., as Sabre was the owner at the relevant times, I will refer to the applicant as Sabre rather than GetThere L.P.
Following acceptance of the application an opposition was filed by Amadeus Global Travel Distribution S.A. (hereafter “Amadeus”) and a decision issued on 19 July 2004 finding that the opposition succeeded in that the invention claimed was not novel and that the claims were not clear and succinct and did not define the invention or otherwise lacked fair basis. The applicant was given 60 days to file proposed amendments.
Amendments were duly filed on 17 September 2004, leave to amend was granted and leave was advertised on 21 April 2005. Amadeus filed a notice of opposition to the allowance of the amendments and a statement of grounds and particulars. Following several evidentiary stages, including the filing of further evidence, a hearing was set down in Sydney on 16 August 2007.
Sabre attended the hearing and provided written submissions. They were represented by Andrew Christie and Chris Jordan, patent attorneys of Davies Collison Cave, and Tracy Pylant of Sabre. The morning of the hearing Amadeus advised that they would not be attending the hearing and would provide no submissions. An observer turned up for Amadeus but took no part in the hearing.
During the hearing Sabre made submissions as to why the opposition by Amadeus could not be successful. At a point in the hearing I observed that, as set out in paragraphs 35–37 of the statement of ground and particulars filed by Amadeus, “new” claims 5, 27 and 38 appeared to claim matter “not in substance disclosed” in the originally filed specification. That is, the ground and particulars set out in paragraphs 35–37 would appear to have been made out.
Following the hearing Sabre filed new pages containing amended claims 5, 27 and 38 and asked that they be substituted for the corresponding pages in their amendment request. By a letter of 23 August 2007 I informed Sabre that this could not be done and, to have the new pages incorporated into the amendments, they would have to withdraw their request of 17 September 2004 and file a new amendment request containing the new pages. I informed both Sabre and Amadeus that, in the event of this happening, I would issue a decision on the “new” amendment request following the usual statutory time limits for advertisement of amendments, and I would base my decision on the statement of grounds and particulars, the evidence filed on the opposition to the amendments of 17 September 2004 and I the submissions made at the hearing of 16 August 2007. No new hearing would be held.
On 4 September 2007 Sabre filed a new request for an amendment. The amendments were sent to Amadeus for comment on their allowability on 18 September 2007. No comments were received.
DECISION
I considered the amendments filed on 4 September 2007 in light of the statement of grounds and particulars and the evidence filed by Amadeus for the opposition to the amendments of 17 September 2004.
Turning to the grounds of opposition and evidence, they assert that many features that were included in the claims were not disclosed in the originally filed specification, were not within the scope of the claims immediately before amendment and/or, as a result of the amendments, the specification would not comply with s40(2) or (3) of the Patents Act.
I have considered these grounds and evidence. While the claims are certainly very different to what was on file before the amendment, their features are present in the originally filed specification. I find the arguments and evidence presented by Sabre to be persuasive. Sabre provided an appendix to their submissions. I have attached a copy of the words of the appendix (but not the formatting) to this decision. The appendix provided references to at least one area of the description and drawings of the specification where the features of the claims are apparently disclosed. I am in agreement with the appendix.
Therefore, the claims are not claiming matter not in substance disclosed and do not fall foul of s40(2) and (3) of the Patents Act. It is also clear from the amendments that the scope of the claims is narrower from that which existed prior to the amendment. The opposition does not succeed. I am of the opinion that the amendments are allowable.
Therefore, unless the Commissioner is served with a notice of appeal within 28 days of this decision, I will allow the amendments.
COSTS
On the question of an award of costs, it could be argued that Sabre is entitled to costs because the opposition by Amadeus did not succeed. On the other hand, it could be argued that Amadeus is entitled to costs because their opposition to the amendments filed on 17 September 2004 would have been successful against claims 5, 27 and 38. In such a circumstance, I conclude that each party should bear their own costs. Therefore, I make no award of costs.
GREG POWELL
Delegate of the Commissioner of Patents
03March 2008
Patent attorneys for the applicant : Davies Collison Cave, Brisbane
Patent attorneys for the opponent : Fisher Adams Kelly, Brisbane
AU 720671 -Appendix to Applicant's Submissions in Chief
(page numbers refer to the specification before amendment)
Claims 1, 15, 23, 30, 35
Page 11, line 29 – “Advantageously the Travel Planning Module of a preferred embodiment of the invention provides the corporate traveller with a desktop system that provides a graphical user interface to real-time Computerized Reservation Service (CRS) Data for efficient travel planning and booking.” (page 6, line 12 of specification as filed).
Page 12, line 8 – “The present invention enables the traveller to complete the entire booking process, which results in creation of a Personal Name Record (PNR), or to create a PNR with a booking request which a travel agency completes.”
Page 15, line 6; Fig 2 – “From the client workstation 12, the Travel Planning module 40 receives and sends availability, fare and booking data 46 from the CRS 30.”
Page 16, line 3; Fig 4 – “The build itinerary process 100 allows the traveller 86 to enter basic trip parameters and either request a booking or make a booking with direct access to CRS 30 availability and fare information … ”.
Page 16, line 14; Fig 4 – “The build itinerary process 100 via communication with CRS 30 displays flight availability data 108, fare data 110 and highlights preferred vendor data from the corporate travel policy 112.”.
Page 16, line 18; Fig 4 – “As selections are made, an in-process itinerary will be built and displayed to the traveller 86 showing information as it is selected or adding to what has been previously selected. The in-process itinerary will display the associated cost of each item as well as a running total of the entire trip, including air, hotel, car and a grand total.”
Page 17, line 1; Fig 4 – “The build itinerary process 100 returns a queued PNR 118 including air, hotel and car requirements to CRS 30.”
See also the discussion of Figs 14A-14X on pages 28-30, particularly Figs 14C-E (booking flight segment I), 14F-H (booking flight segment 2), 14I-K (booking hotel), 14L-N (booking car), 14O-S (finding cheaper alternatives), 14T-X (confirmation and ticketing).
Previous claim 21 – “...providing access to a computerised reservation system includes booking at least a portion of travel plan through the computerised reservation system.”
See also previous claims 32, 36, 37, 46, 75 etc.
Claims 2, 10, 16, 20, 24, 31, 36
Page 12, line 8 – “The system enables the traveller to complete the entire booking process, which results in creation of a Personal Name Record (PNR), or to create a PNR with a booking request which a travel agency completes.”
Page 14, line 24; Fig 1 – “The E-mail server is in communication with any conventional travel agency 26 via a telecommunication link 28.”
Page 14, line 26; Fig 1 – “The travel agency is in communication with any airline computerised reservation system such as American Airlines SABRE Computerised Reservation System 30 via a telecommunication link 32.”
Page 26, line 18; Fig 14T – “The traveller may confirm ticketing by energising the Confirm Ticketing icon 412. From the Confirmation-Ticket Delivery window 414, the traveller 86 may choose a method for obtaining tickets by energising Okay button 416.”
Fig 14T – “Choose a method for obtaining your ticket: Pick up ticket at Company Travel Agency, Pick up ticket at Airline Counter, Send ticket to person/location listed below”.
Page 26, line 22; Figs 14V, 14W – “The traveller 86 may create a reservation by pressing the Finish icon 420. If the traveller wishes to finish the reservation process and send it on to the travel agency for processing, the traveller 86 may energize Yes button 422 in the Finish Reservations window 424.”
Fig 14W – “Do you wish to finish your reservation and send it on to your travel agency for processing?”
Claims 3, 11, 17.21.25, 32, 37
Page 16, line 14; Fig 4 – “The build itinerary process 100 via communication with CRS 30 displays flight availability data 108, fare data 110 and highlights preferred vendor data from the corporate travel policy 112.”
Page 16, line 30; Fig 4 – “Special negotiated rates for a vendor in a specific city stored in local car table 116, when present, will override the data returned from CRS 30.”
Previous claim 81 – “the set of policy preferences include a negotiated hotel rate policy preference that takes precedence over a corporate-preferred vendor policy preference.”
See also previous claim 88, 92 etc.
Claims 4, 26
Page 15, line 8; Fig 2 – “The Travel Planning module 40 receives policies and preferences data 48 from the corporate database 18 and sends authorisation request data 50 to the corporate database 18.”
Page 19, line 6; Fig 7 – “The PNR's which pass the validation data fields process 222 are assigned a unique trip number that does not already exist in the trip table 128 and such valid trips are inserted into the trip table 128.”
Page 19, line 9; Fig 7 – “The check policy process 224 has a hierarchical order of application, for example, project policy takes precedence over employee policy and a negotiated hotel rate takes precedence over a company preferred vendor.”
Page 19, line 16 – “Data from trip table 128 is compared against data from the travel policy table 98, the local car table 116, the local property table 114, and the airline agreement table 200.”
Previous claim 25 – “...the step of determining whether the travel plan complies with travel policies includes comparing information in the traveller's requested travel plan with a set of rules associated with the enterprise and the traveller.”
Also previous claims 26, 40 etc
Claims 5, 27, 38
Page 17, line 14; Fig 4 – “If the approver does not approve the request, the authorised trip request process 120 requires that the approver input a description of the reason for disapproval. The trip request is then routed back to the originator of the request.”
Page 19, line 13; Fig 7 – “Depending on how the violation is set up in the policy record, the violation will either simply be an item on a report or it may be queued to an individual specified in the employee or project record for approval or rejection.”
Previous claim 19 – “… notifying the traveller of whether the traveller's requested travel plan complies with travel policies;”.
See also previous claims 14, 16, 50, 58 etc.
Claims 8, 14, 18, 22, 29, 34, 40
Page 30, line 12; Fig 14X – “The resulting display shows the Trip Activity Log 374 and the Calendar 376 with current travel information.”
Claims 9, 19
See notes relating to claims 1, 15, 23, 30, 35 above.
Claim 44
Refer to claim 19.