Apple Inc. - [2021] APO 18

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2021] APO 18
Patent Application: 2018201089

Title:Context-specific user interfaces

Patent Applicant: Apple Inc.

Delegate:R Subbarayan

Decision Date: 20 April 2021

Hearing Date: Written submissions filed on 12 February 2021

Catchwords: PATENTS – Examiner Objections – editing clock face in a smart watch – whether the claims are for a manner of manufacture – whether the claims are inventive – neither objection can be maintained – application to proceed to grant

Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018201089

Title:Context-specific user interfaces

Patent Applicant: Apple Inc.
Date of Decision: 20 April 2021
DECISION

The claimed invention is to a manner of manufacture and does not lack an inventive step in light of the cited prior art.
I am also satisfied that no other ground of objection applies. I therefore direct that the application proceeds to acceptance.
REASONS FOR DECISION

BACKGROUND

Application 2018201089 was filed on 14 February 2018 by Apple, Inc. (the Applicant) as a divisional application of 2015298710 (the Parent) and through this Parent claims an earlier priority date of 2 August 2014. A request for examination of the application was filed with the patent request.
The first examination report issued on 11 October 2019 raising objections on the grounds of manner of manufacture and inventive step. The applicant responded on 26 June 2020, proposing amendments to the claims that they submitted overcomes the objections raised. A second examination report issued on 23 July 2020, maintaining the manner of manufacture objection alone. The Applicant responded to this report on 25 September 2020 with submissions rebutting the examiner’s objection. On 12 October 2020, the applicant wrote to the Commissioner that as the examiner had verbally indicated that he intends to maintain the manner of manufacture objection, they wish to be heard in this matter through written submissions. The Commissioner wrote to the applicant on 10 November 2020 setting a period of 4 weeks for the applicant to file their written submissions. In that same letter the Commissioner also reintroduced an inventive step objection based on new prior art.
Upon request by the applicant the deadline for filing written submissions was extended in light of the new inventive step objection. The written submissions for the hearing were filed on 12 February 2021.
While not directly relevant to the present decision, I note that the Parent was also the subject of a written hearing decision[1] in relation to an examiner objection on the ground of manner of manufacture, with the delegate finding that the claimed invention was for a manner of manufacture. The Parent has since been granted.
[1] Apple, Inc. [2019] APO 32
APPLICABLE LAW
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. As the application was filed on 14 February 2018, the amended provisions of the Act and Regulations apply to the examination of the Application and to the instant hearing. This means that if I am satisfied, on the balance of probabilities, that a ground of objection exists, I can refuse the Application. However, I will only refuse the Application if I am also satisfied that providing the applicant with an opportunity to amend will serve no useful purpose; for example, if I consider that any potential negative findings are not rectifiable by an allowable amendment.
SPECIFICATION
The present invention generally relates to a user interface for indicating time in portable multifunction devices that have a touch sensitive display (touch screen) such as mobile phones, tablets and smart watches. The specification however notes that the device can also be a non-portable device such as a desktop computer with a touch screen display.
The specification notes that users often rely on their portable multifunction devices to know the time and therefore it is desirable to allow the user to access this information through an interface that is simple and intuitive to use and that can be easily customised in relation to the user’s preferences and the information they provide, based on the context.
The specification then mentions some drawbacks of known interfaces for keeping time.
“Some techniques for managing (e.g., editing) context-specific user interfaces for indicating time using electronic devices, however, are generally cumbersome and inefficient. For example, existing techniques use a complex and time-consuming user interface, which may include multiple key presses or keystrokes. Existing techniques require more time than necessary, wasting user time and device energy. This latter consideration is particularly important in battery-operated devices”[2].
[2] Specification at [0006]
The present invention is stated to provide portable electronic devices with faster, more efficient methods and interfaces for managing context specific user interfaces that are “easy and intuitive to use”[3], “reduce the cognitive burden on a user and produce a more efficient human-machine interface”, “reduce the number of unnecessary, extraneous, repetitive, and/or redundant inputs” and that “conserve power and increase the time between battery charges”[4].
[3] Specification at [0489]
[4] Specification at [0007]
The specification then describes various embodiments of the invention, a majority of which relate to methods of animating the interface to reflect the passage of time from an earlier time to the present time and were the claimed subject matter of the Parent. The invention as claimed in the amendments proposed on 26 June 2020, however, defines an embodiment that relates to how a user can edit the clockface that is displayed on the touch sensitive display through a series of specific user interactions with the touch-sensitive display.
The specification provides the following definitions of the term ‘clockface’, ‘affordance’ and ‘complication’ in the context of the invention.
[0491] It is to be further appreciated that references to a "clock face" with respect to clock face editing and/or selection as described herein are not in any way limited to a traditional notion of a "clock face," e.g., a circular display with hour indications and one or more hands to indicate time, or a representation of a digital clock. Any context-specific user interface with an indication of time described herein may properly be termed a clock face.
[0235] As used here, the term "affordance" refers to a user-interactive graphical user interface object that may be displayed on the display screen of devices 100, 300, and/or 500 (FIGS. 1, 3, and 5). For example, an image (e.g., icon), a button, and text (e.g., hyperlink) may each constitute an affordance.
[0248]…… As used here, consistent with its accepted meaning in art, a complication refers to any clock face feature other than those used to indicate the hours and minutes of a time (e.g., clock hands or hour/minute indications). Complications may provide different types of information to a user, such as data obtained from an application, and the information conveyed to a user by a complication is also customizable, as described below.
The embodiment of the claimed invention is described in the specification with reference to figures 15,16 that are reproduced below. Please note that not all of the reference numerals mentioned below can be identified in these figures.
These figures show a portable electronic device 1500/1600 with a touch sensitive display 1502/1602 that displays a clock face 1504/1604 and a complication 1506 that displays weather related information. If a user wishes to edit some aspect of the clock face including choosing a different clock face or a specific element of the displayed clock face, this is done by touching the touch sensitive display with a characteristic intensity that is above a threshold intensity, which then prompts the device to enter a clock face selection mode, shown on screen 1510/1610. The selection mode is indicated by visually distinguishing the clock face such as displaying a smaller version of the clock face (e.g. 1512/1612) that is centred on the display. The user may then choose a different clock face by swiping the display.
The selection mode also displays user interface objects or paging affordance 1518/1646 below the reduced size clock face. In the embodiment shown, if the user now touches the display on the paging affordance 1646, the clock face will enter the clock face edit mode, wherein the user may edit one or more elements of the displayed clock face.
When the user then touches the displayed clock face for editing, device 1500 visually indicates an element of the clock face for editing, for example by providing an outline 1534 around the position of the hour indications (screen 1530), indicating that the hour indications have been selected for editing. The three dots in the affordance 1538 indicate that there are three editable aspects of this particular clock face.
Device 1500 also has rotatable input mechanism 1540, using which the user may cycle through different options for editing different aspects of the clock face, such as in this instance, selecting different options for the hour indications. For example, one of the options shown is increasing the number of indications 1552, while other elements of the clock face remain the same.
After editing the clock face, the user may exit the clock face editing mode by again contacting the display with a characteristic intensity above a threshold intensity.
The specification notes that this aspect of the invention provides significant benefits.
The techniques described above allow for a single user interface for selecting and modifying images to generate an image-based context-specific user interface of the present disclosure. Providing a single user interface for these functionalities reduces the number of user inputs required to accomplish these tasks, thereby reducing battery consumption and processor power.[5]
These features help tie the context-specific user interface selection and editing functionalities into a single interface that is user-friendly and intuitive.[6]
Coupling clock face edit and selection modes in a single interface allows the user to select different clock faces and edit them quickly and easily.[7]
[5] Specification at [0563]
[6] Specification at [0564]
[7] Specification at [0527]
The specification then shows in figure 61 an exemplary functional block diagram of an electronic device 6100 configured in accordance with the principles of the invention.
As shown in this figure the electronic device 6100 includes display unit 6102 configured to display a graphic user interface, a rotatable input mechanism unit 6104 configured to receive rotational inputs, a touch-sensitive surface unit 6106 configured to receive contacts and a processing unit 6108 coupled to the display unit 6102, the rotatable input mechanism unit 6104, and the touch-sensitive surface unit 6106. The functional blocks of electronic device 6100 are configured to perform the invention by a combination of hardware and software.
The specification as proposed to be amended ends with 36 claims of which independent claim 1, and pseudo-independent claims 34 and 35 read as follows:
1. A method, comprising:
at an electronic device with a touch-sensitive display:
displaying on the touch-sensitive display a user interface screen including a clock face;
detecting a first contact on the touch-sensitive display corresponding to a user request to select a clock face, and in response to detecting the first contact:
entering a clock face selection mode of the electronic device;
visually distinguishing the displayed clock face to indicate the clock face selection mode, wherein the displayed clock face is centered on the display;
displaying on the touch-sensitive display an affordance representing clock face edit mode; and
while concurrently displaying the visually distinguished clock face and the affordance representing clock face edit mode:
detecting a second contact on the touch-sensitive display, wherein the second contact is on the displayed affordance representing clock face edit mode; and
in response to detecting the second contact:
entering a clock face edit mode of the electronic device; and
concurrently displaying the clock face and visually indicating an element on the clock face for editing to indicate the clock face edit mode.
34. A non-transitory computer-readable storage medium comprising one or more programs for execution by one or more processors of a first device with a display, the one or more programs including instructions which, when executed by the one or more processors, cause the first device to perform the method of any one of claims 1-33.
35. A device comprising a display, one or more processors, a memory, and one or more
programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the one or more programs including instructions for performing the method of any one of claims 1-33.
MANNER OF MANUFACTURE
Section 18(1)(a) of the Act provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
The classic statement of the law on manner of manufacture is set out in National Research Development Corporation v Commissioner of Patents [1959] HCA 67, 102 CLR 252 (NRDC) at 269:
"The right question is: 'Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?' "
The Court then went on to set out a test in terms applicable to the facts of that case:
"a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour."
The Court, however, cautioned that any attempt to state the ambit of section 6 of the Statute of Monopolies by precisely defining “manufacture” is likely to fail and, further, “to attempt to place upon the idea the fetters of an exact verbal formula...would be unsound to the point of folly” (at 277). These cautionary observations were later reinforced in D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
This case-by-case methodology must have regard to the substance of the claimed invention, not simply the literal form of the claim. As stated in Myriad at [144]:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL), the Full Court stated at [96]:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions”.
In Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA
77 (Aristocrat), Burley J having considered the authorities, identified a two-step test for determining whether a claimed invention is a manner of manufacture.
a)An initial question whether the claimed invention is for a mere scheme or business method of the type that is not the proper subject matter of a grant of letters patent;
b)Only if the first question is answered in the affirmative and where the invention is a computerised implemented method, a second question whether the computer implemented method is one in which invention lies in the computerisation of the method as opposed to merely plugging an unpatentable scheme into a computer requiring only "generic" computer implementation.
In relation to computer implemented inventions, the Full Court in RPL at [99-100] reiterated a number of considerations arising from the earlier Full Court decision in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150:
·Is the contribution to the claimed invention technical in nature?
·Does the invention solve a ‘technical’ problem within the computer or outside the computer?
·Does it result in an improvement in the functioning of the computer?
·Does the claimed method merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
·Is the invention for a technological innovation which is patentable or for a business innovation which is not?
In Aristocrat, the Court found that an electronic gaming machine having hardware, firmware and software is a device of a specific character that yields a practical and useful result and the fact that it uses software programming to give it a new functionality does not make it any less patentable than if the device were to achieve the same functionality using mechanical components.
"Simply put, the machine that is the subject of the claims is built to allow people to play games on it. That is its only purpose. In this regard, the physical and virtual features of the display, reels, credit input mechanism, gameplay mechanism and game controller combine to produce the invention. It is a device of a specific character." [098]
Secondly, as the Commissioner accepts, were the EGM of claim 1 to have been implemented mechanically, the old-fashioned way, without using software but instead using cogs, physical reels and motors to create the gameplay, there is no doubt that it would be a manner of manufacture. There would be no occasion to disaggregate the game features from the combination of physical parts. It is difficult to see why the development of an implementation of an EGM that utilises the efficiencies of electronics technology would be disqualified from patent eligibility, when the old-fashioned mechanical technology was not. Such an approach would be antithetical to the encouragement of invention and innovation. To adapt the analogy used in CCOM, a ball point pen that used computerised components to enable it to function more efficiently would be no less a manner of manufacture now than the original ball point pen was when it was first invented. Whether or not it is novel or involves an inventive step is, of course, for separate enquiry. [102]
In Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421, Perram J considered the question of what constitutes an improvement of a computer and noted:
“Where a method utilising a computer is involved it may be more useful to ask whether the invention involves the mere implementation of an abstract idea in a computer (not patentable) or whether it involves the implementation of an abstract idea that creates an improvement in the computer (patentable): Research Affiliates at 400 [104] citing Thomas J in Alice Corporation Pty Ltd v CLS Bank International 134 S Ct. 2347 (2014)”. [191]
“In some senses, any form of software residing in a computer which performs a task is an improvement in the computer because without it the computer could not perform the task. Plainly, that is not what was intended. Certainly, ‘improvement’ seems designed to capture the computer performing some activity which it was not possible to perform prior to the method. Thus in IBM the method for drawing the curves without using floating point arithmetic opened the way for the computer to be used more efficiently than had been previously possible and, I suppose, the method for using Chinese characters in CCOM might arguably be seen the same way (although that seems less clear to me)”. [194]
The Examiner’s Objection

In the second examination report the examiner has raised the following objection.
“Claims 1 – 36 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. In general, the principles set out in D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases require analysing whether the claimed invention, as a matter of substance rather than form, is suitable subject matter for a patent.
The substance of the claimed invention is to be determined by considering the claimed invention’s actual or alleged contribution to the art.
Relevant factors to consider and weigh up when identifying the substance of the claimed invention include:
How does the claimed invention work?
What problem does it address?
What is the result of performing the claimed invention?
What was the state of the art as at the priority date?
What does the claimed invention add to the state of the art?
What are the advantages of the claimed invention?
The claims define a touch-sensitive display that allows the user to access information through a single user interface when it detects a first contact on the touch-sensitive display corresponding to a user request to select a clock face. It then displays on the touch-sensitive display an affordance representing clock face in edit mode while waiting to detect a second contact on the touch-sensitive display, wherein the second contact is on the displayed affordance representing clock face edit mode.
Based on the specifications the present invention provides, the benefit of portable electronic devices with faster, more efficient methods and interfaces for managing context specific user interfaces. As stated in the description the interfaces reduce the cognitive burden on a user and produce a more efficient human-machine interface. This is not a technical problem. Managing context-specific user interfaces for indicating time using a standard computing device is not a technical limitation. The specification when read as a whole, does not provide any discussion relating to particular technical limitations that the claimed invention seeks to overcome, nor does the specification provide any details that relate to an inventor contribution that involves any technical ingenuity or results in an improvement to any technical aspect of the claimed invention.
Therefore, the substance of the invention is merely a scheme to manipulate user-interfaces on portable multifunction devices and as such does not result in an improvement in the functioning of the computer irrespective of the data being accessed or processed.
I acknowledge your assertions with regard to Rokt [2020] FCAFC 86 (Rokt). However, on contrary to your assertions the present invention is merely rendering the user-interface using a standard computer. This is merely a generic implementation of the computer. This is not a technical improvement. It simply uses standard processing capabilities of a computer to manipulate the user-interface on a touch-sensitive display. The computer or processor is operating in a standard fashion by executing a set of instructions (which a generic computer does normally). Hence, in view of the above there is no “a specific effect being generated” as such.
In RPL [099], the Full Federal Court indicated several factors relevant to consider when determining whether a claimed invention as a matter of substance relates to patentable subject matter. These included:
Is the contribution to the claimed invention technical in nature?
Does the claimed invention solve a “technical” problem within the computer or outside the computer?
Does the claimed invention result in an improvement in the functioning of the computer, irrespective of the data being processed?
Does the claimed invention merely require generic computer implementation?
Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea?
In weighing up the variety of factors which indicate what the substance of the claimed invention is and whether or not the claimed invention as a matter of substance relates to patentable subject matter, I have concluded that your claimed invention, as a matter of substance, does not relate to patentable subject matter.
Managing context-specific user interfaces using standard computer apparatus is not an improvement in the art. It is still considered a generic implementation in the field of computing or user-interface engineering. It is merely using the well-known properties of the computer to implement this. Hence, the specification, when read as a whole, does not provide specific technical details to indicate how the combination of known functions of a computer result in the claimed invention contributing to an improvement in the computer or functioning of the computer. The combination of features is merely linked so as to implement the user-interface manipulating scheme, wherein the inventor's contribution is considered to lie, with any benefit or advantage resulting from its implementation being limited to improvements in the scheme, such as manipulating the user-interface of a portable electronic device.
Therefore, the claimed invention, as a matter of substance, does not define subject matter suitable for a patent. It is not a manner of manufacture”.
Manner of Manufacture Considerations
It is clear from the specification, and the prior art, that multifunction devices having user selectable and user customisable clock faces were well known at the priority date. The specification notes that existing techniques for editing clock faces however require multiple user actions and can therefore take more time as well as consume more power from the device battery.
The specification addresses this drawback by suitable programming of the multifunction device such that the user is presented with a series of user interfaces through which the user can edit one or more elements of the clock face in a more efficient and intuitive manner that requires less user interaction on the touch screen. More specifically, this is done by enabling a clock face element edit mode to be accessed and edited from within the clock face selection mode.
The examiner is of the view that the substance of the invention is “merely a scheme to manipulate user-interfaces on portable multifunction devices”.
The applicant has argued that the claimed invention is not a mere scheme or abstract idea. Their submissions in this regard can be summarised as follows:
·The method is performed on an electronic device having defined physical characteristics, namely a touch-sensitive display.
·The method includes steps related to detecting physical contact on the touch-sensitive display.
·In response to detecting physical contact, the device renders on the display specific user interface elements and also places the device into defined modes.
·The level of detail in the claims relating to the elements of the graphical user interface, the user interactions and the device modes, clearly demonstrate that it is not an abstract idea for a computer program or a list of steps of a scheme to be implemented using computer technology.
·The claimed invention is a precisely delineated series of operations performed by a particular type of electronic device and this is the antithesis of a mere scheme or business method.
·It is clear from the authorities that issues of “generic computer implementation” only arise when the alleged invention lies in an area that is an exception to patentability, for example a “business method” or mere scheme.
·The substance of the present invention resides in the user interface and computing operations defined in the claim to provide a useful product in the form of a configurable clock. It does not seek to computerise a separate scheme or business method.
I accept that there is merit in the applicant’s submissions. The claimed invention clearly relates to a method of selecting and editing a configurable clock that will be displayed on the display screen of an electronic device. The display screen is a touch sensitive display screen through which the user interacts with the device by touching or swiping the user interface displayed on the display. In response to the user’s touches on the display screen the electronic device presents different clock user interfaces on the display screen whereby the user may choose and/or edit elements of the clock face. The presentation of the different clock faces and the editing of the elements of the clock face is implemented by suitable programming of the electronic device. I agree with the applicant that the user interfaces that are presented to the user and the computing operations in the background that enable the clock face of the portable multifunction device to be more easily reconfigured constitute the substance of the invention.
As submitted by the applicant, the electronic device is clearly central to the invention as all of the steps of the claimed invention are performed on the device and using the device. Such electronic devices are physical devices having a touch sensitive display and a processor that can be used to perform various computing activities as well as display the time. The present invention is focussed on the time displaying feature of the device.
While the examiner is of the view that the claimed invention can be performed on any well-known electronic device by suitable programming of the device and that the substance of the invention is therefore an abstract scheme for choosing how to present a clock face for editing, in my opinion that view ignores steps of the method that clearly need physical interactions of the user with the user interface of the electronic device. While the main benefits of the invention are to make the process of choosing and editing a clock face more intuitive and requiring lesser user interactions, that does not necessarily make it an abstract idea or scheme. On the contrary, the requirement for lesser user interactions to do the same or similar thing that required more interactions previously amounts to an improvement in the functioning of the device. I have no doubt that if the presentation of the different clock faces and the ability to change elements of the clock face were to be performed by mechanical means within the electronic device, the invention would be considered to be patentable. As noted in Aristocrat, an invention does not become an unpatentable invention merely because it is performed using the advantages of electronics technology.
On balance, I am of the view that the claimed invention in substance is not an abstract idea or a scheme. As noted in Aristocrat, since the initial question has been answered in the negative, there is no requirement to deliberate on the other considerations. However, I will also consider whether the contribution of the claimed invention is technical in nature as the applicant has provided submissions on this point.
The applicant has submitted that the claimed invention solves a technical problem.
“In contrast to the examiner’s contentions in the second report, we submit that designing functional elements of clock faces, designing graphical user interfaces for electronic devices, and especially user interfaces for devices with limited screen size, all involve a myriad of technical considerations. In the context of the present invention, the technical challenge facing the inventors can be seen as having the idea of producing a selectable and editable clock face, determining how to provide the selectable and editable clock face, how to make the user aware of the device’s clock face editing capabilities in a general sense, and then how to step the user through an editing operation.
The claimed invention addresses these problems primarily through the specific user interface elements that are rendered on the touch-sensitive device in response to detecting particular user interactions. For example, according to the invention, an affordance representing clock face edit mode is displayed on the device after the device is placed in clock face selection mode and the clock face selection mode is indicated to the user (namely by visually distinguishing the selected clock face).
The invention also guides the user through a clock face editing operation by the physical phenomenon of visually indicating an element on the displayed clock face that can be edited.
We also note that user interface design is a subject taught in computer science courses. Although some aspects of user interface design does have aesthetic elements, it undoubtedly also has technical elements. None of the claims of the present application relate to the aesthetic elements of the relevant user interface. For example, no claim is directed to use of a particular font for indicating time, a particular shaped minute hand or other aesthetic considerations (acknowledging that sometimes these can also have technical elements, eg. to improve visibility etc)”.[8]
“The claimed invention, by concurrently displaying the clock face and visually indicating an element on the clock face for editing, also realises a tangible advantage by providing context to the user during the editing process by displaying the clock face that is being edited while concurrently indicating an element on the clock face that is being edited”.[9]
[8] Applicant’s written submissions at [115] – [118]
[9] Applicant’s submissions of 25 September 2020
Again, I am inclined to agree with the applicant. The present case has similarities with the invention in Aristocrat Technologies Australia Pty Ltd [2016] APO 49 where in an EGM with a touch sensitive display, the selection of a single bet denomination on the touch sensitive display had the effect of also selecting one of the displayed game selection elements. In that decision, the delegate noted at [48]:
“It is reasonable to view the substance of the invention as the presentation of game information in a way that allows the game and bet denominations to be selected in a single action... Here information is located in a particular position and functionality is generated by the use of this positional location to improve the gaming machine. The contribution is technical in nature, and achieves a practical and useful result.”
In a similar vein I would consider the provision of the interfaces that permit entering the clock face edit mode from within the clock face selection mode and editing one or more elements of the clock face, while concurrently displaying the clock face and the element for editing, with fewer user interactions on the touch sensitive display as technical improvements that provide a practical and useful result. It also leads to an improved computer which in this case is a multifunction device with a touch sensitive display.
I therefore find that the claimed invention is for a manner of manufacture and the examiner’s objection on this ground cannot be maintained.
INVENTIVE STEP
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claims, involves an inventive step. Subsection 7(2)-(3) states:

“(2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the art in light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

(3) The information for the purposes of subsection (2) is:

(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”
The test for obviousness was stated in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at [45]:
“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.”
The Examiner’s Objection
The inventive step objection newly raised in the Commissioner’s letter of 10 November 2020 reads as follows.
“The Commissioner is also of the view that, in addition to the outstanding manner of manufacture objection, that an inventive step objection is also applicable to the claims as they stand. This objection is given in italics below.
The objection below makes reference to the following documents:
D3: of the claims are considered to lack inventive step in view of D3 when combined with either of D4 or D5 for reasons as discussed below.
Independent claim 1 (and dependent claims 34 and 35) lacks an inventive step when the disclosure of D3 is combined with either D4 or D5.
D3 discloses a method for selecting a clock face on a an Android wear smartwatch, comprising:,
at an electronic device with a touch-sensitive display (title, ‘Android Wear'):
displaying on the touch-sensitive display a user interface screen including a clock face (title, ‘How to Change Watch Faces’);
detecting a first contact on the touch-sensitive display corresponding to a user request to select a clock face, and in response to detecting the first contact (0:28, ‘push and hold’):
entering a clock face selection mode of the electronic device (0:35, ‘card style interface’);
visually distinguishing the displayed clock face to indicate the clock face selection mode, wherein the displayed clock face is centered on the display (The selected clock reduces in size and the user can swipe between the various options);
The claimed invention differs from D3 in:
displaying on the touch-sensitive display an affordance representing clock face edit mode; and
while concurrently displaying the visually distinguished clock face and the affordance representing clock face edit mode:
detecting a second contact on the touch-sensitive display, wherein the second contact is on the displayed affordance representing clock face edit mode; and
in response to detecting the second contact:
entering a clock face edit mode of the electronic device; and
concurrently displaying the clock face and visually indicating an element on the clock face for editing to indicate the clock face edit mode.
These features are however disclosed by both D4 and D5 which relate to the use of mobile phones to manipulate the interface of smart watches.
D4 is an instructional video demonstrating the functionality of the Samsung Galaxy Gear software. D4 discloses while concurrently displaying a visually distinguished clock face and an affordance representing clock face edit mode (1:43, clocks menu in the ‘Gear’ application show available clock faces where some clocks may be edited as indicated by the presence of a gear icon):
detecting a second contact on the touch-sensitive display, wherein the second contact is on the displayed affordance representing clock face edit mode; and
in response to detecting the second contact:
entering a clock face edit mode of the electronic device (1:50, ‘change some shortcuts’, where clock face to be edited is shown at the top of the screen)
D5 is an instructional video demonstrating the functionality of the Sony Smartwatch 2. D5 discloses while concurrently displaying a visually distinguished clock face and an affordance representing clock face edit mode (3:26, watch face selection screen where an edit icon is shown next to the custom face at the top of the list):
detecting a second contact on the touch-sensitive display, wherein the second contact is on the displayed affordance representing clock face edit mode (the person skilled in the art would understand that the edit mode of an existing watch face would be the same as that for new watch face as shown); and
in response to detecting the second contact:
entering a clock face edit mode of the electronic device (3:39)
concurrently displaying the clock face and visually indicating an element on the clock face for editing to indicate the clock face edit mode (3:55, where the ‘analogue’ face is visually indicated).
The problem to be solved is broadly described by the current specification as user interfaces for smartwatches being ’cumbersome and inefficient’ ([0006]). The person skilled in the art, who in this case would include software engineers and computer interface designers, would understand that the methods of D4 and D5 are ‘cumbersome and inefficient’ in that a user cannot edit the watch face of their smartwatch without their phone. They would further understand that many of the functions relevant to smartwatches have previously been integrated in mobile phones due to the limited processing power of smart watches (D6, ‘you should get used to smart “watches” that require tethering (of one sort or another) to a smartphone in order to take advantage of its superior processing power and wireless capabilities’). It would therefore be obvious to the person skilled in the art to add the affordance and functionality shown in D4 and D5 to the watch interface of D3 where the smartwatch had sufficient processing power to comfortably facilitate such functionality. This is an improvement that the person skilled in the art would be expected to make directly and without difficulty and by routine steps alone”.
Problem to be solved

As discussed earlier, the specification notes that existing techniques for managing context specific user interfaces are complex, require multiple user inputs, time consuming and wastes device power and that the present invention seeks to address these problems. The applicant has not disputed this in their written submissions, and I am therefore satisfied that these are the problems that can be used as the starting point for assessing inventive step.
The Cited Prior Art
The applicant has provided in their written submissions a very useful explanation of the disclosures of the YouTube videos of D3, D4 and D5 that I have reproduced below, noting that I am satisfied that they are an accurate account of the respective disclosures:
“D3
122 D3 is a YouTube video demonstrating how to change the watch face on an “Android Wear” smartwatch.
123 At approximately 0:13 seconds, the video depicts the smartwatch’s initial watch face as follows:
124 The series of steps required to change the watch face are shown from approximately 0:29 onwards. The first step involves the user pushing and holding on the display screen as shown below.
125 The device responds to the user’s push and hold by displaying (at approximately 0.33), the following user interface:
126 The user interface is described as a “card style interface. The interface allows the user to navigate through a number of different watch faces. The user can then select one of the watch faces and apply it to the smart watch. The user scrolls through a number of watch faces including the following watch face at approximately 0.36.
127 The user selects the current watch face at approximately 0.36 by tapping the display, as shown:
128 The watch face is applied to the smart watch at approximately 0.37. This is indicated by the watch face filling the display of the smart watch, as shown.
D4
129 D4 is a YouTube video demonstrating how to install and customize a clock face on a smart watch. In D4, the clock faces are first downloaded from an app store to a smart phone and then transferred from the smart phone to the smart watch.
130 At approximately 1.48, the user is shown accessing settings of a downloaded clock face by selecting from a list of options presented on the smart phone. As shown below, the user is presented with a list of options.
131 Any setting changes made to the clock face in the smart phone are automatically applied to the clock face on the smart watch.
D5
132 D5 is a YouTube video demonstrating how to create a new watch face for a smart watch. Watch faces are added through an app that executes on a smart phone. The interface for creating a new watch face is shown at approximately 3.38, as follows
133 The user is presented with a list of options of user interface elements (such as watch faces and widgets) that can be added to the watch face. User interface elements are added to the watch face by the user tapping on a desired selection. At approximately 3.49 (shown below), the user is shown selecting an analog watch element and adding it to the watch face.
134 At approximately 3.53 the selected user interface element is shown as being added to a representation of the watch face in the smart phone app (see below). The user interface element is also automatically added to the smart watch.
Inventive Step Considerations
D3 as discussed above relates to an Android Wear smartwatch interface. The watch face is changed by pressing the touch sensitive display to enter watch face selection mode, then swiping through different watch face options and after choosing a watch face pressing the touch sensitive display again to exit the watch face selection mode whereafter the selected watch face will be displayed.
As acknowledged by the examiner, D3 fails to disclose the following features of the claimed invention.
·displaying on the touch-sensitive display an affordance representing clock face edit mode; and
·while concurrently displaying the visually distinguished clock face and the affordance representing clock face edit mode:
·detecting a second contact on the touch-sensitive display, wherein the second contact is on the displayed affordance representing clock face edit mode; and
·in response to detecting the second contact:
·entering a clock face edit mode of the electronic device; and
·concurrently displaying the clock face and visually indicating an element on the clock face for editing to indicate the clock face edit mode.
The examiner is of the view that these missing features are disclosed in each of D4 and D5 and that it would have been obvious to incorporate these features from either of D4 or D5 in the watch interface of D3.
D4 relates to an App on the smartphone that can be used to choose different clock faces to be displayed on an Android smartwatch and also edit some elements of the clock face by touching a settings icon for the selected clock face. These settings will be reflected in the clock face displayed on the smartwatch. The applicant has submitted as follows in relation to the disclosure of this video:
143 D4’s disclosure relates to displaying a user interface including a clock face on a smartwatch (see e.g. about 0:15). The disclosure also relates to selecting a “Clock” icon on a smartphone (see e.g. about 0:22), responsive to which a screen is displayed to allow selection from available clock faces (see e.g. about 0:27). The smartphone application the subject of D4 may allow for settings of clock faces to be changed (e.g. at about 1:43 as indicated by the examiner), however, this functionality is not accessed from within a clock face selection mode, which in turn was accessed by touching touch-sensitive display displaying a user interface screen including a clock face. In D4, the clock face selecting and editing functionality is on a smartphone, wholly separate from the display of the clock face on the smartwatch. Furthermore, in contrast to D4, the claimed invention requires "while concurrently displaying the visually distinguished clock face and the affordance representing clock face edit mode: detecting a second contact on the touchsensitive display, wherein the second contact is on the displayed affordance representing clock face edit mode; and in response to detecting the second contact: entering a clock face edit mode of the electronic device.”
144 Notably, however, D4 fails to suggest “concurrently displaying the clock face and visually indicating an element on the clock face for editing to indicate the clock face edit mode” at least because D4 does not suggest visually distinguishing an element on the clock face for editing at all. At best, D4 teaches concurrently displaying an editable clock face and a list of selectable clock face elements for editing, none of which are visually indicated (e.g., D4 at 1:48, displaying a clock face along with “Text color,” “Shortcut application 1,” “Shortcut application 2,” etc.).
I am inclined to agree with the applicant. Although claim 1 does not require the method to be implemented on a smartwatch and could well be implanted within a smartphone itself, the App within the smartphone still does not disclose the features highlighted by the applicant.
D5 similarly relates to an App on the smartphone to create a new watch face to be displayed on an Android smartwatch. The App allows the user to choose a clock face, edit one or more elements of a clock face if required through use of a settings icon and to also add other widgets/icons to the display and thereby create the new watch face comprising the clock face and the added widgets/icons. The applicant has submitted as follows in relation to the disclosure of this video:
“D5’s disclosure is similarly limited to a facility provided through a smart phone application for creating new watch faces for a smart watch. As such, D5 does not disclose or suggest the approach of displaying a clock face, entering a selection mode from the displayed clock face and displaying an affordance representing clock face edit mode after the device has entered a clock face selection mode and the selection mode has been indicated to the user through visual distinction in the user interface”. [145]
“Furthermore, the cited references also fail to disclose or suggest the feature of
‘concurrently displaying the clock face and visually indicating an element on the clock face for editing to indicate the clock face edit mode.’” [153]
“The Hearing Officer relies on D5 to allegedly disclose this feature. D5 however, fails to teach the above feature. In this regard, D5 separately teaches displaying an affordance for editing clock faces (e.g., the gear icon, at 3:28) and, separately, a clock face creation screen that allows a user to create a clock face from scratch by adding clock face elements to a blank screen (e.g., D5 at 3:54). Further, this feature of claim 1 is recited as being performed as part of a sequence of events, which sequence is entirely absent from D5. The sequence includes ‘detecting a first contact on the touch-sensitive display corresponding to a user request to select a clock face, and in response to detecting the first contact: entering a clock face selection mode of the electronic device; visually distinguishing the displayed clock face to indicate the clock face selection mode, wherein the displayed clock face is centered on the display; displaying on the touch-sensitive display an affordance representing clock face edit mode; and while concurrently displaying the visually distinguished clock face and the affordance representing clock face edit mode: detecting a second contact on the touch-sensitive display, wherein the second contact is on the displayed affordance representing clock face edit mode; and in response to detecting the second contact: entering a clock face edit mode of the electronic device.’” [154]
“D5’s editing mode involves the user selecting, in a smartphone app, graphical or text, watch face elements from a list of options and manipulating the selected elements in a representation of the watch face;” [157]
“Editing a clock face by selecting (either an entire clock face or individual elements thereof) from a list of options is distinctly different to inviting the user to perform edits by visually indicating an element on the clock face available for editing”. [158]
In D5, similar to D4, the disclosure is not related to choosing or editing the clock face on the smartphone itself but rather to use an App on a smartphone to choose a watch face for an associated smartwatch from a list of standard watch faces or to creating a new watch face for the associated smartwatch by choosing and arranging different elements to be displayed on the watch face.
In the disclosed example, the user touches a smartwatch watch face edit App on the smartphone to enter the watch face edit mode. The user is then presented with a list of standard watch faces that they can choose or an option to create a customised watch face. The video then demonstrates how the user can create a customised watch face. This is done by touching the watch face edit icon (+) whereby a blank watch face appears centred on the user interface. The watch face is also visually distinguished from the rest of the interface. A number of watch face elements are displayed below the blank watch face. The user can then choose one or more of these elements and touch and drag them on to the blank watch face to create the customised watch face of their liking. In the demonstrated example, the user chooses an analog clock face, a digital clock face and one or more widgets such as date, battery level or Bluetooth for display on the watch face. The watch face thus created is replicated on the associated smartwatch. One of the standard watch faces shown also has a setting/edit affordance icon next to it which the examiner contends would allow for that watch face to be edited in the same manner as creating a new watch face. The applicant has not disputed this, and I agree that this contention of the examiner is a logical conclusion.
The examiner is relying on this video only for the disclosure of the watch face editing steps of the claimed invention. However I am not convinced that each and every claimed watch face editing step is disclosed in D5.
Firstly, the examiner contends that “D5 discloses while concurrently displaying a visually distinguished clock face and an affordance representing clock face edit mode (3:26, watch face selection screen where an edit icon is shown next to the custom face at the top of the list);”. A snapshot of this part of the video is shown below:
While it does show a clock face on the left side of the screen and an edit affordance next to it, the clock face is clearly not centred on the display as required by claim 1 and also it does not appear to be visually distinguished to indicate that it is in a clock face selection mode. Visually it is no more distinguished than the other clock faces seen on the display.
The examiner then contends that D5 discloses the step of “concurrently displaying the clock face and visually indicating an element on the clock face for editing to indicate the clock face edit mode (3:55, where the ‘analogue’ face is visually indicated)”. A snapshot of this part of the video is shown below:
This part shows a highlighted analogue clock face element that has just been dragged and dropped into a desired location on the displayed watch face. There is no disclosure that this analogue clock face element can be further edited as required by claim 1.
I am hence not satisfied that even all the clock face editing steps of claim 1 are clearly and unambiguously disclosed in D5.
Additionally, even if D4 or D5 do disclose all of the claimed clock face editing steps of claim 1 as asserted by the examiner, I am not convinced that it would be obvious to the person skilled in the art to add the affordance and functionality shown in D4 and D5 to the watch interface of D3 where the smartwatch had sufficient processing power to comfortably facilitate such functionality. There is no hint or suggestion in either D4 or D5 that these features could be incorporated into the smartwatch itself. It is not just the processing power that is a factor in choosing to edit a watch face through a phone; the bigger display screen on the mobile phone that makes it easier to perform various operations on the display would also be a strong consideration. As submitted by the applicant, the prior art relied on by the examiner would strongly suggest that the preferred approach at the priority date was to use the smartphone to choose and edit the watch face rather than do it on the smartwatch itself.
I am therefore of the view that the examiner’s inventive step objection cannot be maintained. The claimed invention does not lack an inventive step in light of the cited prior art.
CONCLUSION
The claimed invention is to a manner of manufacture and does not lack an inventive step in light of the cited prior art. The examiner’s objection on the grounds of lack of manner of manufacture and lack of inventive step cannot therefore be maintained.
I am also satisfied that no other ground of objection applies. I therefore direct that the application proceeds to acceptance.
R Subbarayan
Delegate of the Commissioner of Patents