Apple Inc.
[2021] APO 17
•14 April 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. 2021 APO 17
Patent Application: 2017203579
Title:Magnetic connector with optical signal path
Patent Applicant: Apple Inc.
Delegate: Dr W.E. Guinea
Decision Date: 14 April 2021
Hearing Date: Written submissions filed 1 November 2019 and 27 March 2020
Catchwords: PATENTS – section 45 – Examiner objections – standard patent – patent of addition – divisional application –– inventive step – inventive step objection not sustainable – whether valid patent of addition – novel and inventive features of main invention considered – validity of main invention in doubt – consideration of additional status suspended pending re-examination of main invention – time to gain acceptance extended pursuant to Regulation 13.4(3)
Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017203579
Title:Magnetic connector with optical signal path
Patent Applicant: Apple Inc.
Date of Decision: 14 April 2021
DECISION
I am satisfied that the application comprises an inventive step over the prior art cited during examination.
I direct that consideration of whether 2017203579 is properly a patent of addition to 2009298735 is deferred until after re-examination of 2009298735 concludes.
Pursuant to Regulation 13.4(3), I direct that the period for acceptance of 2017203579 is three months from the earliest date that any one of the following actions occurs, subject to any further decision that may be relevant to Regulation 13.4:
·the Commissioner informs the Applicant that re-examination of the additional parent has concluded; or
·the additional parent is no longer in force (i.e. surrendered, revoked, ceased or expired).
REASONS FOR DECISION
Background
Patent application 2017203579 (the “application”) was filed on 29 May 2017 and claims an earliest priority date of 30 September 2008.
Notably the application is the latest in a line of divisional applications and claims divisional status to 2015264922 (the “divisional parent”). The penultimate ancestor of the family of divisionals is 2009298735, being the great grandparent of the application, with the application also claiming patent of addition status from 2009298735 (the “additional parent”). It is indubitable that this is a rare type of application. A full tabulation of the patent family, including exam request dates, is given in Annex A to this decision.
Apple Inc. (the “Applicant”) requested examination of the application on 29 May 2017. The first of two adverse examination reports issued on 3 August 2018, with the second examination report issuing on 2 August 2019. The reports objected to the claims as lacking in clarity, novelty or inventive step, although all reports maintained that the application was not entitled to patent of addition status.
On 5 August 2019 the Applicant wrote to the Commissioner requesting to be heard in relation to the outstanding objections, these being lack of inventive step and not being entitled to patent of addition status. On 19 August 2019 the Commissioner wrote to the Applicant, advising them that the hearing would be by way of written submissions due to be filed on 1 November 2019. The Applicant filed their submissions in this regard on the due date (the “Applicant’s submissions”).
On 30 January 2020 I wrote to the Applicant providing an opportunity for further submissions. Specifically, I suggested that the approach from Elliot Brother (London) Limited’s Application (1967) RPC 1 (“Elliot Brothers”) was more appropriate than the approach I took recently in SNF (Australia) Pty Ltd v BASF Australia Ltd [2018] APO 26 (“SNF”). I invited the Applicant to comment on this and also on the nature of the novelty conferring features in the application and the additional parent in view of the prior art available from examination. The Applicant filed these submissions (the “further submissions”) on 27 March 2020.
The Applicant also requested voluntary amendment of the specification on 12 August 2019, these being allowed and incorporated into the specification on 19 August 2019.
The Invention as Described
The application deals with various connector arrangements that are used for portable computing devices, such as laptops. The specification notes that there is a problem in the prior art in that the portable computing devices require a cable to supply power and a second cable for transfer of data, and the need to have two or more connectors increases cost, takes up more space and adds to user inconvenience. The specification notes that what is needed are apparatus and systems that allow for the transfer of both data and power, and that it is desirable that the connector easily disengages when tripped over so as to avoid pulling on the portable computing device.
To that end the specification provides for a number of connector configurations providing both power and data pins and having magnetic engagement means. The nature of these as described is best understood by reference to figures 1 and 17A which are reproduced below.
Figure 1 provides overall illustration of power and data transfer systems as per the described invention. I note that figures 3, 4, 11 and 12 provide for some variation of figure 1, however these are not material for present purposes.
10. As can be seen from figure 1, the system comprises a power and data adapter 110 and a portable computing device, such as a laptop 130. The power and data adapter 110 comprises power terminals 112 for connection to mains (not shown) and a series of data ports, including a USB port 114, an Ethernet or RJ-45 port 115, a DVI port 116 and an optical port 118.
11. A fibre optic and DC power cable 124 is connected to the power and data adapter 110. The fibre optic and DC power cable 124 comprises a connector insert 120 and a connector insert housing 122.
12. The connector insert 120 is received in a connector receptacle 132 of the laptop 130. In this manner power can be delivered to the laptop 130 from the power and data adapter 110. Similarly data can be sent to/from the laptop 130 via fibre optic and DC power cable 124, to/from the power and data adapter 110, which arranges for the data to be sent/received through the data ports 114, 115, 116, 118.
13. Much of the specification is given over to various configurations of the connector insert 120 and the connector receptacle 132, as well as methods regarding the connection/sensing of power when connecting the power and data cable 124 to the connector insert 132. However, for present purposes the example given in figure 17A is the most relevant, as the claims reflect the embodiment of this figure. Figure 17A is reproduced below.
14. Figure 17A illustrates front views of a connector insert 1710 and a connector receptacle 1760. As can be seen the connector insert 1710 comprises a recess 1735 surrounded by a raised guide 1750. The connector receptacle 1760 comprises a recess 1790 surrounding a raised guide 1795, these being respectively complementary to the raised guide 1750 and the recess 1735 of the connector insert 1710 to facilitate mating of the connector insert 1710 to the connector receptacle 1760.
15. The connector insert 1710 and connector receptacle 1760 may be held in contact via magnetic attraction. This can be achieved by magnets being placed in the connector insert 1710 and/or the connector receptacle 1760. Alternatively, the connector insert 1710 and connector receptacle 1760 may comprise an attraction plate instead of magnets, for example as a raised guide 1750 on the connector insert or behind recess 1790 of the connector receptacle 1760.
16. The connector insert 1710 comprises a series of pins 1720 located in recess 1735. These pins are generally described as being associated with power or signals, for example for a positive power supply, a ground or a connection detect pin, although it is stated that “other power supplies or signals may be provided”. Fibre optic pins 1730 are used to transfer optical data, these being located in openings on the raised guide 1750. While the figure shows the fibre optic pins 1730 located at the corners of the raised guide 1750 they can also be located along the top and sides thereof instead. The connector receptacle 1760 comprises a series of contacts 1770 which are complementary to the pins 1720 of the connector insert 1710. Similarly, fibre optic pins 1780 are complementary to fibre optic pins 1730 of connector insert 1710.
17. Each of the connector insert 1710 and connector receptacle 1760 comprise a major axis of symmetry “A” and a minor axis of symmetry “B”. Depending on the nature of the pins/contacts 1720, 1730, 1770, 1780 the connector insert 1710 may be inserted into the connector receptacle 1760 either way with respect to major axis of symmetry “A” – that is they are “rotatable”.
The Claims
18. . After the voluntary amendments the application comprises 23 claims, of which claims 1 and 10 are the only independent claims. These are reproduced below. The entire claim set is given at Annex B to this decision.
“1. A connector system comprising:
a first connector comprising:
a ferromagnetic attraction plate forming a raised guide having a first opening forming a recess;
a first pin to provide an electrical connection for a first power supply voltage;
a second pin to provide an electrical connection for a second power supply voltage, where the first pin and the second pin are located in the recess;
a third pin to transmit optical data, the third pin located in a second opening in a first corner of the ferromagnetic attraction plate;
a fourth pin to transmit optical data, the fourth pin located in a third opening in a second corner of the ferromagnetic attraction plate, the second corner diagonally opposite the first corner;
a fifth pin to receive optical data, the fifth pin located in a fourth opening in a third corner of the ferromagnetic attraction plate; and
a sixth pin to receive optical data, the sixth pin located in a fifth opening in a fourth corner of the ferromagnetic attraction plate, the fourth corner diagonally opposite the third corner.
…
10. A connector system comprising:
a first connector comprising:
a raised guide surrounded by a recess;
a first pin to provide an electrical connection for a first power supply voltage;
a second pin to provide an electrical connection for a second power supply voltage, where the first pin and the second pin are located on the raised guide;
a third pin to transmit optical data, the third pin located in the recess;
a fourth pin to transmit optical data, the fourth pin located in the recess; a fifth pin to receive optical data, the fifth pin located in the recess;
a sixth pin to receive optical data, the sixth pin located in the recess, where the third, fourth, fifth, and sixth pins are arranged to be symmetrical about a major axis and minor axis of the first connector; and
a magnet to be magnetically attracted to a magnetic element in a second connector such that the second connector is magnetically held to the first connector when the second connector and first connector are coupled.
…”
The Remaining Objections
19. The remaining objections from the second examination report are that none of the claims comprise an inventive step and that none of the claims meet the criteria for a patent of addition. I will briefly outline the nature of these objections below.
Inventive Step
20. The objection that none of the claims comprise an inventive step has been pursued across both examination reports. At the second report stage the Examiner considered that all the claims were novel but lacked inventive step in view of US 2015/00349457 A1 (“D6”), published on 3 December 2015.
21. Notably D6 was cited for the purposes of inventive step despite being published well after the EPD of this application. This is due to the fact that the Examiner considered that the invention as claimed obtained its EPD from the filing date of the divisional parent, this being 4 December 2015.
22. The inventive step objection was based on figures 3 and 5 from D6, which are reproduced below.
23. The actual objection from the second examination report regarding independent claims 1 and 10 is as follows:
“The invention defined in independent claims 1 and 10 does not involve an inventive step in light of D6.
D6 discloses a connector system (D6, Figure 3), comprising a first connector comprising a ferromagnetic attraction plate forming a raised guide having a first opening forming a recess (D6, Paragraph [0032], Figure 3 {312}), a first pin to provide an electrical connection for a first power supply voltage (D6, Figure 5 {VBUS}), a second pin to provide an electrical connection for a second power supply voltage (D6, Figure 5 {GND}), where the first pin and the second pin are located in the recess (D6, Figures 3, 4A, 5), a third pin to transmit optical data (D6, Figure 5 {two D+ pins}), a fourth pin to transmit optical data (D6, Figure 5 {two D+ pins}), a fifth pin to receive optical data (D6, Figure 5 {two D- pins}), and a sixth pin to receive optical data (D6, Figure 5 {two D- pins}).
The claimed invention differs from D6 in the placement of the optical data pins (i.e. third, further, fifth, sixth) in recesses in the corners of the magnetic plate, rather than in a row with the power supply voltage pins.
However, I consider that this difference (seemingly arbitrary/aesthetic placement of pins in various recesses in the raised guide magnetic plate) constitutes no more than a mere workshop improvement. It is an arrangement that any competent worker in the art would be expected to make directly and without difficulty and by routine steps alone. Therefore the claimed invention does not involve an inventive step.”
24. The Examiner considered that there was no inventive contribution in any of the dependent claims.
Patent of Addition
25. The Examiner’s objection to patent of addition status is based on their being no common novelty conferring features between the additional parent and the invention as claimed in the application:
“The proper basis for determining if an application for a patent of addition is an improvement in, or modification of, the main invention is a comparison between the novel contribution which each claim makes over the prior art.
In other words, the feature(s) which are novel and inventive in the main invention must also be defined in the claims for the patent of addition
The features that claim 1 of the present application and claim 12 of the granted application (the main invention) have in common is a connector system comprising a first connector comprising: 2 pins to provide an electrical connection for a first and second power supply voltage; and 2 pins to provide an optical data connection (1 to transmit optical data plus 1 to receive optical data).
However, this arrangement is not novel in light of US 2002/0044746 A1 (KRONLUND et al.) 18 April 2002 (see Figures 2-3, first and second electrical connection pins [VBUS +5V and GND] and transmitting and receiving optical data pins [D+ and D-]). [Furthermore, this arrangement does not appear to be novel in light of US 5884086 A (AMONI et al.) 16 March 1999, which came to my attention during a quick top-up search (see Column 3, Line 34 to Column 4, Line 11, Figures 1 & 7, which discloses a connector comprising more than one power connector/pin for delivery of at least a first and second power supply voltage, as well as two optical data pins, all within a recess created by a raised guide].
Therefore, with the exception of the feature considered to be an improvement or modification to the main invention (ferromagnetic attraction plate forming a raised guide), the present invention does not define the novel and inventive features of the main invention. Please note that although claim 12 of the parent (as a whole - including all of its features) has been granted, in light of the two above documents coming to my attention I may need to consider the relevance of this citation to the claims of the granted application (AU2009298735) and make an assessment as to whether re- examination is warranted. If acceptance of the claims of the main invention was revoked then this would of course have follow on implications on any claims which claim a patent of addition status.
Therefore your application is not entitled to a status of Patent of Addition.”
The Applicant’s Written Submissions
26. The Applicant’s submissions comprise a procedural background of the application, an outline of the issues for consideration, a discussion of the specification, an outline of the claims, a discussion of inventive step in view of D6 and a discussion regarding the application proceeding as a patent of addition. As noted earlier the issues in dispute relate to the question of inventive step and patent of addition status. I will briefly consider the Applicant’s submissions on these below.
Inventive Step
27. The Applicant began by considering the relevant legal principles, which I did not take to be in dispute. The Applicant then discussed the claimed invention in the context of the embodiment from the specification to which the claims relate, namely figure 17A.
28. There was then some discussion of the inventive step objection in view of D6, where the Applicant accepted, for the purposes of this decision, that D6 formed part of the prior art base for the purposes of s7.
29. With respect to the inventive step objection per se, the Applicant disputes the Examiner’s mapping of features from the claims onto figures 3 and 5 of D6 as follows at [19] to 22] of the Applicant’s written submissions:
“Applicant respectfully disagrees with examiner’s mapping, either on the basis that it misinterprets the claims or misinterprets the disclosure of D6 (or both).
With reference to the electrical connections, the basis for examiner’s mapping of a ground wire to a pin to provide an electrical connection for a power supply voltage is unclear. It is respectfully submitted that these are different connections. For example, with reference to Figure 17A, the specification of the current application describes that the connector has two pins that may be used to provide a positive power supply and another two pins may be used for ground.
The basis for examiner’s assertion that the voltage signal wire and ground wire of D6 are located in the recess of the front surface 312 is also unclear. Paragraph 32 of D6 referred to by the examiner refers to a protrusion, rather than a recess:
‘…Front surface 312 may be a magnetically attractive surface and may include a stage 314 protruding from a central, depressed region of the surface. The stage 314 may protrude from a front surface of the connector housing and/or from an internal component of the connector head 302. A plurality of electrical contacts 316 may protrude through openings in the stage 314…’
With reference to the optical connections, the basis for examiner’s mapping of pins to transmit and receive optical data to wires for positive and negative data signals is unclear. As stated in D6, paragraph [0039] ‘Each signal wire may be electrically connected to an associated contact pad on a substrate (e.g., a printed circuit board) in the connector head 302 (e.g., within a housing of the connector head)’. A wire that is electrically connected is clearly not suitable for optical data.”
30. The Applicant then argues at [24] to [27] of the written submissions that…
“…the differences and alleged inventive step in claims 1 and 10 reside in a combination of features. For example with particular reference to claim 1, the differences include:
Two power supply pins located within a recess of a ferromagnetic attraction plate;
The ferromagnetic attraction plate forms a raised guide with an opening that forms the recess;
Two pins to transmit optical data, located in diagonally opposite corners of the ferromagnetic attraction plate;Two pins to receive optical data, located in diagonally opposite corners of the ferromagnetic attraction plate.
As the context from the patent specification referred to above shows, many, if not all, of the differences facilitate embodiments with particular functionality. The connector therefore is clearly an alternative that is useful and may provide an improved connector over the prior art.
There is no obvious path from D6 to an embodiment within the claimed invention. For example, D6 does not even mention an optical connection, let alone an optical connection formed by a connector with two transmit and receive pins, placed in diagonal corners of a raised guide ferromagnetic attraction plate.
Examiner asserts that the claimed location of the optical data pins is seemingly arbitrary/aesthetic and constitutes no more than a mere workshop improvement. This is also clearly incorrect. First, it is respectfully submitted that alignment of optical connectors is of particular importance and that the claimed invention provides relevant structure for alignment. Further, the relevant structure is substantially different from the structure of D6. Assuming D6 has a relevant recess (which as indicated above is not clear), D6 places all its wires within the recess. There is no suggestion of use of the structure around the recess for another wire, let alone use of the structure for an optical data pin. Similarly, in relation to claim 10, there is no suggestion in D6 of use of the recess around the structure for another connection.”
Patent of Addition
31. This appears to be an area where there are differences between the Applicant and the Examiner in the principles to be applied. While the Examiner has applied principles substantially similar to those from Elliot Brothers, the Applicant appears to favour a rather more ab initio approach as taken in SNF. In particular, the Applicant had recourse to s81 and then to a discussion of the additional parent and the application. The Applicant referred to, and reproduced figure 17A from the application and figures 5A to 5D of the additional parent, in the following terms:
“It is relevant, in identifying the main invention, to consider the Additional Parent. The Additional Parent is directed to a magnetic connector with optical signal path (e.g. title) and includes various claims to a power and data transfer system. The Additional Parent includes several independent claims, including independent claims with features directed (sic) a connector including an optical connection in combination with electrical connection pins and a raised guide.
Embodiments of the connector insert disclosed in the Additional Parent are shown in Figures 5A to 5D, copied on a separate page in these submissions.
The Application discloses an additional embodiment, shown in Figure 17A, reproduced again below.” (submissions [31] to [33])
32. As best understood the Applicant contends that figures 5A to 5D of the additional parent represent the “main invention” and that certain embodiments of the application represent an improvement or modification over the same:
“The words ‘improvement in’ and ‘modification of’ are plain English terms. While they don’t appear to need explanation, the Macquarie Dictionary, fifth edition includes for improvement ‘a change or addition whereby a thing is improved’ and includes for modification ‘the state of being modified; partial alteration’ and in relation to modify ‘to change somewhat the form or qualities of; alter somewhat’.
The diagrams from the Additional Parent and Figure 17D from the Application clearly show that the Application discloses an improvement or modification in relation to the connector insert of the Additional Parent. For example, with reference to Figure 5D of the Additional Parent, in Figure 17D of the Application the optical pins have been relocated from within the recess to a location on the raised guide. There are further improvements or modifications as between Figures 5A to 5C and Figure 17D. These are of course also relevant, merely requiring more or different words to describe.
Figures 5A to 5D show embodiments of the ‘main invention’, i.e. the invention that is the subject of the claims (as per SNF (Australia) Pty Ltd v BASF Australia Ltd [2018] APO 26 at paragraphs 59 to 62). For example: Figure 5A relates to at least the connector insert of claims 1 and 17; Figures 5B to 5D relates to at least the connector insert of claim 9; Figures 5A to 5D relates to at least the connector of claim 12. Claim 14 does not include an optical connection, but is still also relevant as the optical connection may be an improvement or modification, as demonstrated for example by dependent claim 23 which adds an optical connection (different to the optical connection of Figure 17D of the Application).
It is respectfully submitted that it is clear that the statutory test has been satisfied and the request for patent of addition status is in order for acceptance.” (submissions [34] to [37], emphasis in original).
33. These submissions, are, on the face of it, slightly confusing in that the Applicant has begun by referring to figure 17A, but then repeatedly refers to figure 17D, especially noting that the claims of the application reflect a generalisation of the embodiment of figure 17A not 17D. It may be that figure 17A was meant, but ultimately nothing turns on this.
34. It also seems that the Applicant is comparing disclosed (rather than claimed, although that appears to be qualified in the further submissions) embodiments of the additional parent and the application and asserts that certain embodiments of the application (i.e. figure 17D or 17A) comprise an improvement or modification to the embodiments from figures 5A to 5D of the additional parent. The Applicant then appears to map figures 5A to 5D onto the claims of the additional parent, thus, it would seem in the Applicant’s view, vicariously demonstrating how the application comprises an improvement or modification over the main invention.
35. This appears to be in line with the Applicant’s views on the operation of s81, which are based on an ab intio approach:
“Examiner appears to have embarked on an inquiry into 1) what features are common between the independent claims of the Application and the independent claims of the Additional Parent and then 2) whether any of those common features are novel over a particular cited document (i.e. US 2002/0044746 A1 or US 5,884,086). With respect, as explained in SNF at paragraphs 90 to 94, this inquiry is not correct. The consideration to be taken from Elliot Brothers is concerned with whether there has been a ‘radical transformation ab initio using the interpretation of “modification” or “improvement” from Elliot Brothers’ (SNF at paragraph 91). As explained in SNF at paragraph 66, in that case there was a radical transformation because it was clear that the main invention was directed to a magnetic pick-up whereas the later application was directed to an optical pick-up. There is no such radical transformation here.
With respect, the approach of Delegate Guinea in SNF is the correct approach. Section 81 refers to the ‘main invention’. Of the four uses of ‘invention’ identified in Kimberly Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8, it is clear that section 81 must be a reference to ‘The embodiment which is described, and around which the claims are drawn’, the same meaning attributed by the High Court to s 40(2). The ‘main invention’ is not ‘The inventive step taken by the inventor’, let alone the inventive step of one of the independent claims over a particular cited document, which appears to be the inquiry adopted by the examiner in the second examination report. It is not helpful to apply a requirement that ‘the feature(s) which are novel and inventive in the main invention [over the particular cited document] must also be defined in the claims for the patent of addition’ as per page 5 of the second examination report.” (submissions at [38] and [39], emphasis in original).
36. It is also consistent with additional statements made in the further submissions at pages 2 to 3:
“In the present case, a consideration (through the eyes of the relevant skilled person) of Figures 5A to 5D of the additional parent reveals that the invention is directed to a range of novel and inventive combinations of features forming a connector, including an optical connection in combination with electrical connection pins and a raised guide. The various embodiments around which the claims are drawn and the various combinations present in the independent claims demonstrate that the main invention is directed to a range of new combinations of connector. This is the relevant contribution/novelty conferring features of the additional parent.
A consideration of Figure 17 of the present application clearly shows an invention that is consistent with Figures 5A to 5D. Figure 17 also includes an optical connection in combination with electrical connection pins and a raised guide. Figure 17 could readily appear as Figure 5F and be considered to be consistent with the inventive concepts of Figures 5A to 5D (and therefore the present invention shares the relevant contribution of the additional parent). It also clearly shows relevant modification or addition relative to the embodiments of Figures 5A to 5D (see the previously filed submissions, which we do not understand from the examination history or the latest communication to be in contention).
Particular care needs to be taken that an approach of 1) embarking on an inquiry to what features are common and not common between particular claims as opposed to the invention that is the subject of the claims and 2) picking particular art in relation to that inquiry, does not result in an unjust result not in line with the long-standing statutory inquiry. It needs to be remembered that within a combination claim of features A to E, one particular piece of prior art may be distinguished by features A, C, D and E, another by features B to D and so forth.”
37. While the Applicant clearly favours an ab initio approach, even adopting the Examiner’s view on the correct principles, it disagreed with the analysis undertaken by the Examiner:
“In the alternative, Applicant reiterates paragraphs 40 and 41 from its original submissions. Neither citation discloses or suggests the features of the main invention as defined by one or more of claims 1, 9, 12, 14 and 17 and the common features in any of the claims of the present application. The present invention, as described above includes a combination of optical connection and electrical connection pins with a raised guide. US 2002/0044746 (Kronlund) merely shows an electrical connector of the USB type (see USB bus 23 and connector 4) and a connector with an optical input and optical output (see 6a and 6b and connector 7).” (further submissions, page 3)
38. Before continuing to the outstanding objections, I will first consider the priority date of the claims. I will then consider the outstanding objections from examination, beginning with inventive step and after this move onto the question of patent of addition status.
Priority Date of the Claims
39. In the second examination report the Examiner indicated that for the purposes of examination the earliest priority date of the claims (“EPD”) was considered to be the filing date of the divisional parent, being 4 December 2015. Although it was not elaborated upon in the second examination report, one may infer that the Examiner had formed the view that the claimed invention was first disclosed in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art in the divisional parent and was therefore, not entitled to the nominal earliest priority date of 30 September 2008.
40. The Applicant has not contested the Examiner’s assertions regarding the EPD in its submissions or further submissions. At [14] of the submissions, the Applicant indicated that for “…the purposes of this hearing only, Applicant assumes that D6 is part of the prior art base for the purposes of section 7”. I note the Applicant’s statements at [7] of the submissions about not making any concessions or admissions where an issue from the second examination report has not been directly addressed. However, the acceptance of D6 as prior art is suggestive that the Applicant tacitly accepts the Examiner’s contentions regarding the EPD. This is especially notable, given that if the invention was in fact clearly disclosed in the additional parent, then the application would not be entitled to patent of addition status, and the Applicant maintains that the application is in fact entitled to patent of addition status.
41. Whatever the case, as the Applicant has accepted that D6 forms part of the prior art base for the purposes of this decision, I do not consider I need to precisely determine the priority date of the claims. For the purposes of this decision only I will take the earliest priority date of all the claims to be 4 December 2015.
Inventive Step
Relevant Legal Principles
42. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) For the purposes of this Act, an invention is to be 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 relevant art in the 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.”
43. Although not expressly referred to in the Act, it has been accepted by the authorities that lack of inventive step in the Act is commensurate with the previous concept of obviousness under the Patents Act 1952 (albeit relying on a different prior art base); see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140. The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
44. The test outlined in Wellcome Foundation, frequently referred to as a version of the “reformulated or modified Cripps question” is demonstrative of the approach frequently taken to assess lack of inventive step or obviousness, being the so called problem-solution approach, which I will use in determining the inventiveness of the claims below.
Who is the Skilled Addressee?
45. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the CGK in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular, in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”
46. I consider that the skilled addressee is a person or team of persons involved in the designing, construction or use of power and data cables for mobile computing devices.
47. Despite inventive step being one of the remaining objections, the identity of the skilled addressee rates barely a mention in the Examiner’s reports or in the Applicant’s submissions or response to the Examiner’s reports. Despite this I did not take there to be any argument over the identity of the skilled addressee, nor do I take my construction thereof to be controversial in any manner.
The Problem
48. The specification deals with particular issues regarding the transmission of power and data to/from (as the case may be) mobile computing devices. Specifically, it is noted in the background section of the specification at [0004] and [0005] that typically two connections are needed for these purposes, one for power and one for data. It is observed that this is undesirable as having two connections:
· increases cost;
· takes up space along the side of the mobile computing device;
· increases workstation clutter;
· requires the user to make two separate connections; and
· requires the use of two cables and the user may become entangled or trip up on one of these.
49. The background part of the specification then ends with paragraphs [0006] and [0006A] which read as follows:
“Thus, what is needed are circuits, apparatus, and methods that provide a power and data transfer system that can supply both power and data to a laptop or other mobile computing device using a single connection. To reduce the clutter caused by multiple cables, it is further desirable to have a power and data adapter that can provide power and data to the mobile computing device using a single cable. It is also desirable to have a connector system that can connect this single cable to the mobile computing device. To avoid the consequence of laptops being pulled to the ground when a cable is tripped over, it is desirable that the connector system easily disengages when the cable is pulled away from the mobile computing device.
Reference to any prior art in the specification is not an acknowledgment or suggestion that this prior art forms part of the common general knowledge in any jurisdiction or that this prior art could reasonably be expected to be understood, regarded as relevant, and/or combined with other pieces of prior art by a skilled person in the art.”
50. Similarly, as for the identity of the skilled addressee, there is a dearth of discussion regarding the problem to be solved both in the examination reports and in the Applicant’s response/submissions. This has only been addressed in any manner by the Applicant at [11] of the submissions:
“The Full Court has recently confirmed that the ‘useful alternative’ and ‘useful for any other purpose’ are to be understood in the context of a comparison with the prior art (see Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 at [80]). It is therefore not essential to identify a particular problem with the prior art that is addressed or essential to identify any improvement over the prior art to support an inventive step, although such an improvement may satisfy a ‘better thing than the prior art’. It can be inventive to devise an alternative that is useful.
51. It is not clear to me that [80] of Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 (“Nichia”) necessarily stands for the proposition that it is not essential to identify a particular problem with the prior art, or to identify an improvement over the prior art. Nevertheless, I do accept that whether a claimed invention comprises an inventive step need not always be answered by reference to the problem solution approach. This much is apparent from [71] of Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73 (“Generic Health”) in discussing Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59 (“Alphapharm”):
“We do not think that the plurality in Alphapharm were saying that the reformulated Cripps question was the test to be applied in every case. Rather, it is a formulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm. The plurality did not reject as an alternative expression of the test the question whether experiments were of a routine character to be tried as a matter of course (The Wellcome Foundation Limited v VR Laboratories (Aust) Proprietary Limited (1981) 148 CLR 262, at 280‑281, 286, per Aickin J). We do not think there is a divide here in terms of whether an expectation of success is relevant between a test which refers to routine steps to be tried as a matter of course and the reformulated Cripps question. It is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterisation of steps as routine and to be tried as a matter of course. On the other hand, we think a test formulated in terms of worthwhile to try was firmly rejected by the High Court in Alphapharm (see also Pfizer, at 476, [287], per French and Lindgren JJ). The fact (if it be the fact) that the position in the United States may have shifted does not affect the binding nature of what the plurality said in Alphapharm.”
52. While I agree with the Applicant that one may not necessarily utilise the problem-solution approach to answer questions of inventiveness, the Applicant’s representations do not assist in answering the question as to whether it is appropriate or not to do so for the present application. In many instances the problem-solution approach is an attractive, if not preferred, way to attack the question of obviousness as it sets up an objective framework, which, when utilised properly, avoids the scourge of ex post facto analysis. In the present case, the fact that the specification refers to a series of well-defined issues or problems to be addressed, at least superficially, adds impetus to the use of the problem-solution approach.
53. In the present case, while the problems listed at [0004] and [0005] of the specification are not explicitly acknowledged as being CGK or known in the prior art, and notwithstanding the statements at [0006A], the discussion of these is highly suggestive that these are known in the prior art or are CGK:
“Presently, satisfying these two needs requires at least two connections to the mobile device; one for power and one for data transmission. But including two (or more) connectors increases cost and consumes space, typically along the side of the mobile device. It also requires the user to make two separate connections, thus limiting the usefulness and desirability of the mobile computing format.
These two connections also require the use of two cables. This in turn clutters a user's workspace, further degrading the mobile computing experience. Another way that a user's experience can quickly become unpleasant is when the user trips or otherwise becomes entangled with one of these cables, thereby pulling the laptop to the ground.”
There is also no suggestion in the specification that identification of these problems formed part of the inventive process that led to the claimed invention, which lends further impetus to the problems listed at [0004] and [0005] being suitable as the problem to be solved.
54. I also observe that the problems as discussed in the specification, as outlined at [61] above, are also apparent in some of the documents cited during examination. These include US 2012/0183261 A1 at [0003], which essentially discloses all the problems concerned, and US 2007/0072443 A1 at [0004] which discusses the problem of inadvertent disconnection.
55. Consequently, I consider the problem to be solved to:
“Deal with problems that arise in having separate power and data cables for mobile computing devices, namely:
· increased cost;
· taking up space along the side of the mobile computing device;
· increasing workstation clutter;
· requiring the user to make two separate connections; and
· requiring the use of two cables and the user may become entangled or trip up on one of these.
56. I am satisfied that the problem as I have formulated it does not breach the principles outlined in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202] to [203] (“AstraZeneca”), to the extent that it does not comprise information that is not either CGK or known from the prior art, based on the above discussion.
Stringency of Tests
57. As examination was requested after 15 April 2013, the substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the present application. In particular, the amendments to s49 of the Act allow the Commissioner to refuse an application if she is not satisfied on the balance of probabilities that the invention, so far as claimed, satisfies the criteria of s18(1). Notably the criteria outlined at s18(1)(ii) is that the invention, so far as claimed in any claim “involves an inventive step”.
Consideration – Inventive Step
58. To my mind, for reasons that I will discuss below, the inventive step objection as outlined in the examination report is not sustainable.
59. Firstly, it is not clear that there are any, let alone four, pins capable of transmitting/receiving optical data. The “D” pins referred to by the Examiner for this purpose appear to be connected to electrical wires and are described as such in D6 at [0039]. There is no disclosure whatsoever in D6 of a connector suitable for transmitting or receiving optical data.
60. Secondly, even if these were disclosed in D6, I cannot agree with the Examiner’s assertion that the placement of the pins in various recesses of the raised guide amounts to a “…seemingly arbitrary/aesthetic placement of pins…”. Varying the position of the pins in D6 would clearly require some effort in that a different structure for the connector would have to be designed and made, and this would have consequences for the cable associated with the connector and likely any devices that utilise the connector. It is difficult to believe that the pin arrangement is merely arbitrary or aesthetic.
61. While it is conceivable that optical pins could be added, there appears to be no motivation to fiddle with the pin arrangement of D6 so as to read onto the claims in suit. D6 appears to have already solved most, if not all, of the problem to be solved, and so it is not apparent why the skilled addressee would expend time and effort adding what appears to be needless complexity to the connector of D6 so as to arrive at the invention in question. Nor is there any apparent reason why, if they were so motivated to make further modifications, the skilled addressee would choose the particular arrangement of pins as claimed.
62. In conclusion I do not consider that the invention as claimed lacks an inventive step in view of D6.
63. As it may be of some assistance in discussing the patent of addition issue, I note that I agree with the Examiner’s assessment that there is a second pin to provide an electrical connection for a second power supply voltage. Notably the use of “for” means that the pin and electrical cable concerned need only be suitable for a second power supply voltage. Contrary to the Applicant’s assertions, the fact that the pin referred to in D6 by the Examiner for this feature is given on figure 5 as “GND” (i.e. ground) indicates that the pin and electrical connection concerned is in fact suitable for a power supply voltage. To be a ground line it must clearly comprise an insulated conductor with an electrical contact, and, as such, would generally be suitable for a power supply voltage in this art which would not use high voltage power supplies.
Patent of Addition
Relevant Legal Principles
64. . Section 81(1) of the Act provides for the granting of a patent of addition to a main invention, and reads as follows:
“Where:
(a) a patent for an invention (in this Chapter called the main invention) has been applied for or granted; and
(b) the applicant or patentee (or a person authorised by the applicant or patentee) applies for a further patent for an improvement in, or modification of, the main invention; and
(c) the application for that further patent is made in accordance with the regulations;
the Commissioner may, subject to this Act and the regulations, grant a patent of addition for the improvement or modification.” (bolding in original)
65. As I noted in SNF at [60], arguably there is some ambiguity in s81(1) as to whether the main invention refers to an invention disclosed, as opposed to claimed, in the additional parent. After a brief discussion of the case law in this regard, I noted that contemporary understanding appears to indicate that the main invention refers to the invention claimed, but was “…unable to ascertain any subsequent jurisprudence on this specific point since Georgia Kaolin” (at [61]) (being Georgia Kaolin Co. Ltd’s Application (1957) RPC 143). I then undertook an analysis of s81 at [62] and concluded that the main invention must refer to the invention as claimed.
66. Perhaps embarrassingly, I have since become aware that this point was addressed in Monsanto Chemicals Ltd.’s Application (1968) AOJP 348 (“Monsanto”) in connection with s72 of the Patents Act (Cth) 1952, this being the equivalent to the s81 in the 1952 Act. In Monsanto it was concluded that the “main invention” refers to the invention as claimed, and it is perhaps comforting to know that in reinventing the wheel one arrives at the same shape for it as previously determined. Consequently, I take the “main invention” to refer to the invention as claimed in the additional parent and not merely an invention described in the same.
67. It was also held in Welwyn Electrical Laboratories Ld’s Application (1957) RPC 143 (“Welwyn”) at 146 that a valid patent of addition cannot merely claim something disclosed, but not claimed, in the parent application, or merely claim the parent invention from a different aspect, since these would not constitute an improvement or modification to the main invention:
“In my view Sec. 26 only enables an applicant or a patentee to protect some further disclosure over and above that of the main invention, a disclosure which must be in the nature of an improvement in or modification of that invention. The mere claiming in a later application of the main invention from a different aspect, or of subject matter contained in the earlier specification but not claimed therein does not in my opinion fulfil the purpose of the Section.”
68. What comprises an “improvement or modification” to the main invention has previously been considered by Lloyd-Jacob J in Elliot Brothers at 4:
“The meaning of the words ‘modification’ and ‘improvement’ is clear enough. A modification is an alteration which does not involve a radical transformation and an improvement is a variation, whether by addition, omission or alteration, to secure a better performance, whilst retaining some characteristic part.”
69. In determining whether the transformation concerned was radical or whether there was retention of a characteristic part, Lloyd-Jacob J noted the difficulty in applying the definition given of an improvement or modification to s26 of the Patents Act 1949 (UK), this being equivalent to s81 of the Act. However, in considering the authorities as available at that time (see Sadgrove v Godfrey (1920) 37 RPC 7 at 20 to 21, although this was not in the context of an application for a patent of addition) he noted that:
“What seems to be abundantly clear is that the mere presence of a number of elements common to both inventions, if common also in the known art, is not sufficient to make one invention an improvement of or an addition to the other” (at 5)
ultimately concluding that:
“In my judgement the consideration to be given must take into account the novelty of the manner of manufacture to which the patent applications were directed.” (at 5)
70. In Elliot Brothers the inventions concerned related to a rate of turn indicating device. The only common features between the putative patent of addition and the main invention was a magnetic pick up bar known from the prior art. The novel feature from the main invention was a type of magnetic pick up, while the putative patent of addition utilised a type of optical pick up instead. Unsurprisingly Lloyd-Jacob J, in finding that the application was not a valid patent of addition, considered that the putative patent of addition completely removed the novel features of the main invention, a circumstance that (at 5) was said to be “…the most complete form of radical alteration possible”.
71. While in SNF I utilised the test for an improvement or modification from Elliott Brothers I did so using an ab initio approach rather than by considering the prior art as undertaken in Elliot Brothers. The reasons for doing so emerge from [90] to [96] of SNF and are predicated on the fact that not all the relevant prior art of record was available to me. As I noted at [94] of SNF, the skilled addressee, in assessing a patent of addition, should not be, in terms of the prior art, confined “…to a narrowly constrained box of the Opponent’s choosing”. That is, in line with Lloyd-Jacob J’s comments in Elliot Brothers about undertaking the assessment in a state of “notional ignorance”, in SNF I was at pains to ensure the assessment of patent of addition status was undertaken in an objective fashion. Hence, the absence of prior art that was otherwise raised during examination of the additional parent to make that assessment in effect deprived me of the objective means to assess the patent of addition via consideration of the novelty conferring features. Hence the ab initio approach I took.
72. It is also worth noting that SNF was made in the context of a s59 opposition and as such I was necessarily constrained by what was in evidence – I could not simply inform myself of prior art that was not in evidence. It was, of course, open to me to potentially incorporate further material in the opposition via Regulation 5.23 but ultimately that did not occur, and I utilised an ab initio approach instead. Although not stated in SNF, I consider that it is fair to characterise the situation as one where that I was comfortable with the ab initio approach taken due to the fact the subject matter concerned had already been the subject of extensive litigation before the Patent Office and the Federal Court such that I had a significant factual background from previous decisions to be confident of reaching an objective conclusion using an ab initio approach.
73. Consequently, I am of the view that the approach taken in SNF was peculiar to the circumstances of that case, was not setting up new general principles to be subsequently followed for all patents of addition and, although not necessarily suggested by the Applicant, certainly was not eclipsing Elliot Brothers.
74. It follows that I cannot agree with the Applicant’s suggestion that both Elliot Brothers and SNF stand for an ab initio approach as such in assessing a patent of addition. As noted, the approach in SNF was peculiar to the circumstances of that case, and I cannot see any basis for an ab initio approach in Elliot Brothers – there was, quite clearly, explicit consideration of the prior art, as opposed to the case in SNF. Rather, as noted above, what should be taken from SNF and Elliott Brothers when viewed together is that the assessment must be, as far as reasonably possible, undertaken on an objective basis. One may take it that how such an assessment is made may vary depending on the circumstances of the case in question. That being said, for reasons as discussed further below, I am of the view that, generally, consideration should be given to those features, or combination of features, that avoid the prior art and so lead to the main invention being granted.
75. In terms of an objective assessment, I note that the Applicant refers to the dangers of “cherry picking” prior art in the further submissions and also cited the following passage from Elliot Brothers (at 4):
“The applicants also confused the issue by contending that the hearing officer should dismiss from his mind all consideration of the prior art, and he not unnaturally rejected the implication that he should discharge his statutory duty in a state of notional ignorance. If by their submission the applicants only meant that the ‘main invention’ must be gathered from the specification which described and claimed it, they were not in error, but this exercise is one required to be discharged by a person skilled in the art and such a person is deemed to be acquainted with the matters of public knowledge, so that he will construe the specification and claims with all appropriate references to the prior art as published in documents of earlier date.”
The Applicant also referred to passages from D’Arcy v Myriad Genetics Inc [2015] HCA 35 at [12] and Kimberly Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [24] regarding the fact that specifications need be understood in light of the CGK and the prior art. This appears, on the face of it, to be acceptance by the Applicant that an objective assessment of patent of addition status is appropriate.
76. Turning to the nature of a parent of addition, it may be seen that Lloyd-Jacob J’s understanding of what constitutes a valid “improvement or modification” are predicated on the patent of addition retaining what may be understood as some “characteristic part” from the main invention, which I take to effectively mean some fundamental nature or essence of the main invention. Logically the characteristic part must exist and, therefore, is to be found in the independent claim of the main invention or, where there are multiple independent claims, is something that is common to all those claims.
77. As opposed to this the Applicant appears to urge a plain reading of the terms “improvement” and “modification” based on the definition of these from the Macquarie Dictionary (see [32] above) with reference to the main invention, although I note that the Applicant, rather confusingly, appears to accept the interpretation of “improvement” or “modification” from Elliot Brothers at [38] of the submissions.
78. Whatever the case I do not agree that a patent of addition should be assessed merely based on the plain meaning from the Macquarie Dictionary (or any other dictionary for that matter) of “improvement” or “modification” in isolation from chapter 7 of the Act or the Act more broadly. That is, any “improvement” or “modification” to the main invention as claimed will not suffice in the abstract from the prior art and the knowledge of the skilled addressee.
79. Rather I consider that the definition of “modification” or “improvement” from Elliot Brothers and the approach taken there is to be preferred. As noted above it can be seen that what Lloyd-Jacob J was undertaking was looking to extract the characteristic part of the main invention by reference to those features in the claims which provided for patentability over the prior art of record. I consider that such an approach is apposite given the legislative framework – patents are granted for claimed inventions that appropriately avoid, amongst the other requirements of the Act, the prior art. In that context it is entirely incongruous for a patentee to be able to base a patent of addition on features in the main invention that do not avoid the prior art as opposed to those which do and resulted in the grant of a patent in the first place. If this was so then it would lead to situations where the patentee would be rewarded with a patent of addition for providing, what is, in reality, a distinct development of the prior art as opposed to an improvement or modification of the main invention – in other words, a patentee could obtain a patent of addition for an invention that in reality is entirely distinct from the main invention in material terms. It is difficult to see how such a situation can be validly characterised as an improvement or modification of the main invention in the sense meant in s81(1), even where it could be characterised as an “improvement” or “modification” in the plain meaning of those words.
80. Further, taking a plain meaning of “improvement” or “modification” approach as apparently urged by the Applicant also sits rather awkwardly in the broader context of chapter 7 as a whole. Notably:
· a patent of addition must be applied for by the same applicant or patentee as for the main invention, or have their authorisation (s81(1)) – it is not clear why this is necessary if the patent of addition need not retain anything from the main invention as claimed that led to the main invention being granted and could be based on elements of prior art in the main invention not attributable to any invention owned or developed by the applicant or patentee;
· a patent of addition cannot be examined or granted before the same occurs on the additional parent (s81(2) and s81(3)) – these appear to be redundant where the patent of addition need not retain anything from the main invention as claimed that led to the main invention being granted;
· a patent of addition generally only remains in force for as long as its additional parent (s83(1)) – it is not clear why this should be so if the patent of addition need not retain anything from the main invention as claimed that led to the main invention being granted;
· even if the main invention is revoked and the patent of addition becomes an independent patent, its term is still no more than the unexpired term of the patent for the main invention (s85(2)) – again it is not clear why this should be so if the patent of addition need not retain anything from the main invention as claimed that led to the main invention being granted; and
· renewal fees are not payable for the patent of addition (s86) – it is difficult to see why a patentee should be able to avoid renewal fees where a patent of addition fails to retain anything from the main invention that led to the main invention being granted in the first place, such that what they have is an invention entirely distinct in material terms from the main invention as claimed.
81. In summary, despite any suggestions to the contrary by the Applicant, I am satisfied that it is appropriate to determine the characteristic part of the main invention by understanding which features of the main invention as claimed avoid the prior art and lead to grant of the main invention. To be clear, I do not agree with the Applicant’s contention that the present case “…has background facts consistent with those in SNF” (further submissions at 2). As discussed above, in SNF the Opponent in effect truncated the available prior art and there was a significant factual background due to extensive litigation available to help make an objective assessment ab initio. The same cannot be said here – there is no previous litigation at all for this application, or any of its family. In addition, I can avail myself of the examination history of the additional parent subject to principles of natural justice. I observe that in my letter of 30 January 2020 the Applicant was explicitly invited to comment on, in view of the prior art cited during examination of the application and the additional parent, what were the common novelty conferring features in the main invention as claimed and in the claims of the application that would lead to an improvement or modification in the sense of Elliott Brothers. Overall, I am of the view that it is appropriate for me to undertake the assessment as per Elliott Brothers. As noted above this is undertaken by the skilled addressee by reading the specification armed with the CGK and with knowledge of the relevant prior art.
82. It is worth noting precisely what is meant by avoiding the prior art. Elliot Brothers was considered in the context of the Patents Act 1949 (UK) as applicable in the United Kingdom at that time. Like the Patents Act 1952 (Cth), inventive step as presently understood was not a ground of objection available to an Examiner in the Patents Act 1949 (UK). Rather, considerations of whether a claimed invention avoided the prior art base during examination were limited to essentially what is now understood as novelty, although lack of inventive step was a ground of opposition in both the Patents Act 1952 (Cth) and the Patents Act 1949 (UK). In view of the fact that, to proceed to grant, a claimed invention under the Act must be considered both novel and inventive with respect to the prior art by an Examiner, I am of the view that consideration should be given to those features or combination of features from the main invention that provide for both novelty and inventive step over the prior art.
83. A final question is what constitutes the relevant prior art for the analysis and the significance of how this is discovered to the analysis. Clearly this will come from the relevant prior art base for novelty and inventive step. I agree with the Applicant that this should not be “cherry picked” as to do so will inherently lead to an assessment lacking in objectivity. There is some force to the Applicant’s contentions that “An approach of cherry picking or relying on one or more particular pieces of prior art that the examiner considers to most strongly support an argument of lack of common novel features between the claims of an additional parent and child, has a real danger of leading to an unjust result, particularly in relation to combination claims.” (further submissions at 2). This simply begs the question of what prior art would be suitable to undertake an objective assessment. The Applicant does not address this, likely because their view is that an ab initio approach should be taken and I infer from the submissions that the Applicant probably views that any consideration of any prior art is inevitably tainted by “cherry picking”.
84. It is trite to state that any survey of the prior art undertaken during examination cannot be considered exhaustive. Examiners inevitably retrieve, and rely upon, search results that are targeted to find the most relevant prior art with respect to the claims before them. Those most relevant to the claims at hand are cited for the purposes of novelty and inventive step in an examination report. It may be stated that Examiners undertake this to discharge the Commissioner’s obligations under s45 (or s98 in the context of re-examination) of the Act in an objective and impartial manner and with what may be assumed to be a reasonable degree of competence and diligence. I do not consider the discovery and citing of the most relevant body of prior art during examination, can, in any way, generally be characterised as a form of “cherry picking” that is objectively unfair to an Applicant.
85. It is likely, following examination, that there may be a small selection of documents from those cited by an examiner that are closest to the claims in question and for which there may be only a single feature in the claims under examination that provides for novelty and inventive step over those documents. This leads to questions of how one utilises the prior art cited by an Examiner in ascertaining the “characteristic part” of the main invention. For example, does one need only look to the item of prior art; that is, that item that differs from the claims by, for example, only a single inventive feature? Does this feature become the “essence” of the main invention? Is there need for recourse to the other prior art? To my mind I do not think the enquiry can be limited to only the closest item of prior art. The reason for this is that the single difference may well be a feature that is well known in the art, but for which it is not obvious to substitute into the closest prior art because of the nature of that item or the prior art document concerned. In these circumstances it is conceivable that the feature distinguishing the claimed invention from this item of closest prior art is either disclosed in, or obvious, in light of other items of prior art cited, but where different features in the claim provide for inventive step over those prior art items. This highlights the necessity of considering the cited prior art as a whole when viewed through the eyes of the skilled addressee when armed with the CGK.
86. Consequently, in assessing patent of addition status, I consider that it is appropriate to understand what provides for patentability of the main invention over the prior art cited during examination as a whole. That is, the assessment should be made in view of all the prior art raised, not merely a selection thereof, or merely the closest item or items of prior art from those cited during examination. To do otherwise risks “cherry picking” as outlined by the Applicant and failing to properly appreciate the “characteristic part” of the main invention, particularly where the invention may lie in a combination of features.
87. A final observation is that assessment of patent of addition status as I have outlined it requires at least forming a nominal view of what feature or features of the additional parent provide for novelty and inventive step over the prior art of record. Such an assessment does not, and cannot, determine or affect the validity of the additional parent in a formal sense. However, where there are significant doubts as to the validity of the additional parent, I am of the view that these should be resolved, for example via re-examination under s97(2), before any concrete determination of patent of addition status is made with regard to the additional child. This is due to the fact that, firstly, a patent cannot be a patent of addition to an invalid patent. Secondly, an apparently invalid patent may be amended during the course of re-examination, or in response to a decision in relation to the same, and any such amendment is liable, if not likely, to impact on any assessment of the characteristic part of the main invention.
Patent of Addition – Consideration
88. To determine whether the application is legitimately a parent of addition I will first consider what are the common features of the main invention as claimed in the independent claims that avoid the prior art cited during examination of the additional parent. The additional parent comprises 23 claims of which claims 1, 9, 12, 14 and are independent. The independent claims from the main invention are repeated below. The full claim set of the main invention as it presently stands is given at annex C to this decision.
“1. A power and data transfer system comprising:
a power and data adapter comprising:
a first port for receiving a first power supply;
a second port for a data connection; and
a third port for a second power supply voltage, a ground, and an optical data signal;
a connector insert comprising:
a first pin to provide an electrical connection for the second power supply voltage;
a second pin to provide an electrical connection for the ground;
a third pin to provide an optical connection for the optical data signal;
a fourth pin to provide an electrical connection for the ground;
a fifth pin to provide an electrical connection for the second power supply voltage, and
a raised guide around the first, second, third, fourth and fifth pins,
wherein the first, second, fourth, and fifth pins are arranged substantially in a line; and
a cable coupled between the third port of the power and data adapter and the connector insert and having a first conductor for the first power supply, a second conductor for the ground, and a fiber-optic cable for the optical data signal.
…
9. A power and data adapter comprising:
a housing comprising:
a first power connector for receiving a first power supply;
a first data connector for a data connection; and
a first port for a second power supply, a ground, and an optical data signal;
a cable connected to the first port for the second power supply, the ground, and the optical data signal,
a connector insert connected to the cable and comprising:
a first pin and second pin for the second power supply, a third pin and fourth pin for the ground;
a fifth pin for the optical data signal; and
a raised guide around the first, second, third, fourth, and fifth pins,
wherein the first, second, third, fourth, and fifth pins are arranged in a single line.
…
12. A connector system comprising:
a first connector comprising:
a first pin to provide an electrical connection for a first power supply voltage;
a second pin to provide an electrical connection for a second power supply voltage;
a third pin to receive optical data;
a fourth pin to transmit optical data;
a fifth pin to provide an electrical connection for the first power supply voltage; and
a sixth pin to provide an electrical connection for the second power supply voltage; and
a raised guide around the first, second, third, fourth, fifth, and sixth pins,
wherein the first, second, fifth, and sixth pins are arranged in a single line.
…
14. A connector comprising:
a first pin to provide an electrical connection for a first power supply voltage;
a second pin to provide an electrical connection for a second power supply voltage;
a third pin to provide an electrical connection for the first power supply voltage;
a fourth pin to provide an electrical connection for the second power supply voltage; and
a fifth pin to provide an optical connection for data,
wherein the first, second, third, fourth, and plurality of pins are located in a recess on a face of the connector, the recess surrounded by a raised guide, and
wherein the first, second, third, and fourth pins are arranged substantially in a line.
…
17. A connector system comprising:
a first connector comprising:
a first surface;
a raised guide extending from the first surface;
a connection surface at a terminal end of the raised guide, the connection surface being symmetrical about a first axis and symmetrical about a second axis perpendicular to the first axis; the first axis and the second axis being perpendicular to a connection axis of the connection surface;
a first pin on the connection surface, the first pin aligned with the first axis and spaced a first distance away from the second axis, the first pin to provide an electrical connection for a first power supply voltage;
a second pin on the connection surface, the second pin aligned with the first axis and spaced the first distance away from the second axis opposite the first pin such that the first pin and the second pin are symmetrical about the second axis, the second pin to provide an electrical connection for the first power supply voltage;
a third pin to provide an optical connection for a data signal;
a fourth pin on the connection surface, the fourth pin aligned with the first axis and spaced a second distance away from the second axis, the fourth pin to provide an electrical connection for a second power supply voltage; and
a fifth pin on the connection surface, the fifth pin aligned with the first axis and spaced the second distance away from the second axis opposite the fourth pin such that the fourth pin and the fifth pin are symmetrical about the second axis, the fifth pin to provide an electrical connection for the second power supply voltage.”
89. A single examination report issued on the additional parent prior to acceptance and this cited several items of prior art, being patent documents that were cited during examination of the US equivalent. Specifically, these documents are:
· US 2002/0044746 A1 (Kronlund et al) 18 April 2002 (Mitel Semiconductor AB);
· US 2006/0067690 A1 (Tatum et l) 30 March 2006 (No assignee);
· US 2006/0164447 A1 (Poole et al) 27 July 2006 (ZIH Corporation);
· US 2007/0072443 A1 (Rohrbach et al) 29 March 2007 (Apple);
· US 4844582 B2 (Giannini) 4 July 1989 (No assignee); and
· US 6466718 B2 (Linnell) 15 October 2002 (EMC Corporation)
I will now consider which features of the main invention as claimed avoid each of these items of prior art.
US 2002/0044746 A1
90. This document is titled “Self Powered Data Communication Optical Fiber Cable Extender”. The nature of the connector and data adapter disclosed in US 2002/0044746 is perhaps best understood by reference to figures 1a, 2 and 3 which are reproduced below.
91. Figure 1a shows an extender 1 comprising electrical bus connectors 2, 3 terminating a USB (for example) comprising respective connector housings 4, 5. The connector housings are connected by an optical fibre cable 6. As understood from [0008] and figures 2 and 3, the connector housings 4, 5 comprise two signal lines D+ and D-, a ground line GND and a +5V power line VBUS, with conversion between optical and electrical signals by transmitter 26 or receiver 29 as discussed at [0023] to [0025]. The contacts (D+, D-, GND and VBUS) are all arranged in a line.
92. There is no clear disclosure of a raised guide surrounding the power pins, of any pins for optical data or of more than one power and/or ground pins. I note that it is not necessarily inherent that D+, D-, GND and VBUS comprise pins as opposed to other forms of contacts. While the alternate end of the extender 1 (e.g. connector 3 is the alternate end to connector 2) can be considered a power and data adapter with a port or connection for receiving a first power supply and a port or connection for data, there is no port as such for a second power supply, a ground and an optical signal as per claims 1 and 9, noting that the connectors are interconnected by a fibre optic cable only. There is also no disclosure of the pins concerned being in a recess on a face of the connector as per claim 14.
US 2006/0067690 A1
93. This document is titled “Optical Cables for Consumer Electronics”. The most relevant disclosure from this document for present purposes relates to figure 6, which is reproduced below.
94. Figure 6 illustrates a bidirectional digital and optical cable 600 terminating in connectors 304 and 605. The optical cable 601 allows for optical signals to be sent from the source device 640 to the sink device 620, while the electrical cable 610 allows communication of data signals from the sink device 620 to the source device 640 or if desired from the source device 640 to the sink device 620. I accept that there must be an inherent disclosure of contacts of some sort in the connectors to facilitate communication of data between the source device 640 and the sink device 620 and the relevant connector 304, 605, although these need not necessarily be pins as such.
95. On considering the document it is apparent that there is no clear disclosure of pins, of a raised guide surrounding any electrical contacts that exist in the connectors 304, 605 or of any of the electrical contacts concerned being arranged in a line or substantially in a line, or, for the purposes of claim 12, a second optical pin for transmitting/receiving optical data. There is no port as such for a second power supply, a ground and an optical signal as per claims 1 and 9. There is also no disclosure of the pins concerned being in a recess on a face of the connector as per claim 14.
US 2006/0164447 A1
96. This document is titled “Ethernet and USB Powered Printers and Methods for Supplying Ethernet and USB Power to a Printer”. The most relevant disclosure from this document for present purposes is perhaps best understood by reference to figure 1 which is reproduced below.
97. Figure 1 illustrates a printer 10 comprises an interface 30 connected to a power ethernet or USB port 20 via cable 22. I infer that the cable 22 must terminate in a connector of some kind that mates with the interface 30. There must be both power and data pins contacts in this connector noting that the cable 22 is connected to a power ethernet or USB port.
98. However, there is no clear disclosure of a raised guide surrounding any data or power contacts that exist in the connectors. There is also no disclosure of any optical pins or of the number and type of power and/or ground contacts in the connector, of the contacts being arranged in a line or substantially in a line or of the contacts being pins. There is no port as such for a second power supply, a ground and an optical signal as per claims 1 and 9. There is also no disclosure of the pins concerned being in a recess on a face of the connector as per claim 14.
US 2007/0072443 A1
99. This document is titled “Magnetic Connector for Electronic Device”. The most relevant disclosure from this document for present purposes relates to figures 8A, 8B and 13B, which are reproduced below.
Figures 8A and 8B illustrate different perspectives of a plug 310. The plug 310 comprises several pins 320 which extend from a recessed face 318 in plug body 312. A magnetic element 330 surrounds the recessed face 318. The central pin S is used to carry a signal to determine the type of transformer or other device attached by the plug 310. The other pins + are for positive DC power while the return path is via the outer shell 340. However, in alternative embodiments the return path is defined by two additional pins on the plug 310 and it is indicated that these extra pins can be symmetrically arranged on the plug 310 so that the pins would only align with corresponding contacts of a receptable that receives the plug 310 regardless of the orientation in which the plug is coupled to the receptacle.
Axes of symmetry are defined by lines A1 and A2, and it is apparent that the pins 320 are all substantially arranged in a straight line along axis A1. As the embodiment with additional pins is disclosed as being arranged symmetrically so as to allow for coupling with corresponding contacts of a receptacle regardless of the orientation in which the plug is coupled to the receptacle, this means that the additional pins must be arranged along axis A1 or axis A2. Having these along axis A1 results in an embodiment whereby all the pins are arranged substantially in a line. Noting that there are only two choices for arrangement of the additional pins that are immediately apparent to the skilled addressee leads, in my view, to clear and unmistakeable directions for each of these alternatives.
Figure 13B shows a plug insert 510 that plugs into a receptable 550 substantially similar to the receptable used for plug 310; see [0060]. The plug 510 has contacts for conveying power and signal from a power adapter 80.
Consequently, the only difference apparent between US 2007/0072443 A1 and claim 17 of the main invention is the absence of one optical pin for optical data or of an optical pin for receiving and an optical pin for transmitting optical data in the case of claim 12. The only difference between US 2007/0072443 A1 and claim 14 is the absence of an optical pin and the pins concerned being in a recess on a face of the connector, though I note that this feature is disclosed with respect to the embodiment discussed in figure 6 of US 2007/0072443 A1. The differences with claims 1 and 9 amounts to the absence of an optical pin and due to this the precise nature of the power and data adapter concerned is also absent, noting that US 2007/0072443 A1 otherwise appears to disclose the use of a power and data adapter in connection with figure 13B.
US 4844582 B2
This document is titled “Hybrid Electro-Optical Connectors”. The most relevant disclosure from this document for present purposes relates to figures 1 to 3 which are reproduced below.
Figures 1 to 3 illustrate a male connector 1 comprising an electrical terminal 7 having a pin 13 and an optical terminal comprising half of a cylindrical lens 8. The connector 1 has a connecting ring 9 with threads 10 connecting to a complementary female connector (not shown). It can be seen that pin 13 and half cylindrical lens 8 are located in a recess on a face of the connector 1 surrounded by a raised guide formed by the connecting ring 9. Further embodiments are indicated to have multiple electrical and optical fibre connections.
Consequently, the differences between US 4844582 B2 and the main invention as claimed amounts to there being an optical pin (as opposed to a half cylindrical lens), of an optical pin for receiving and an optical pin for transmitting optical data in the case of claim 12, and the electrical contacts all being arranged or substantially arranged in a straight line. There is no port as such for a second power supply, a ground and an optical signal as per claims 1 and 9.
US 6466718 B2
This document is titled “Method and Apparatus for Transmitting Fiber-Channel and Non-Fiber Channel Signals Through Common Cable”. The most relevant disclosure from this document for present purposes is illustrated by figures 5 to 5B which are reproduced below.
Figure 5 illustrates a cable 520 for transmitting data comprising using fibre and non-fibre protocols (note “fibre” here refers to a data transfer protocol, not transmission over an optical fibre; see column 1, lines 27 to 39). The cable terminates in plugs 94a, 94b, the nature of these plugs being shown in more detail in figure 5B. As seen in figure 5A, the cable 520 carries a series of conductors 82a, 82b, 82c, 82d, 88. Each of the conductors 82a, 82b, 82c, 82d, 88 are connected to pins 85 of the plugs 94a, 94b. As can be seen on figure 5B, the pins 85 are surrounded by outer housing 93 of each plug 94a, 94b. Based on the view given in figure 5B it is not clear that the pins 85 are substantially arranged in a straight line – they could, for example be staggered across the face of the plug.
Consequently, the differences between US 6466718 B2 and the main invention as claimed amounts to there being any optical pins and the electrical pins all being substantially arranged in a straight line. There is no port as such for a second power supply, a ground and an optical signal as per claims 1 and 9. There is also no disclosure of the pins concerned being in a recess on a face of the connector as per claim 14.
What Features or Combination of Features Avoid the Prior Art For Novelty?
Based on my analysis above, the following combination of features from the independent claims of the main invention provide for novelty over the prior art of record when considered as a body:
there being at least one optical pin, the electrical pins all being arranged substantially in a straight line and the electrical pins being surrounded by a raised guide.
Do the Novel Features Provide for An Inventive Step Over the Prior Art?
In view of the prior art and the CGK I have grave doubts as to whether the combination of novel features actually provides for an inventive step over the prior art of record. This is particularly so with regard to US 2007/0072443 where the only difference with respect to claims 12 and 17 amounts to the absence of optical pins. It appears reasonable to believe that the provision of an optical data line is well known in the art, in view of the discussion of the use of existing fibre optic connections at [0031] of the additional parent, and of the use of optical fibre lines exemplified in US 2006/0067690 and US 4844582. Similarly, the lack of detail regarding the optical pins in the additional parent is suggestive that the use of such pins was well known in the art before the earliest priority date of the additional parent. There is no apparent difficulty with modifying the device of US 2007/0072443 to include such an optical line and pin. I therefore have significant doubts as to the inventiveness of claims 12 and 17 over US 2007/0072443.
Similarly, based on the disclosure of US 2007/0072443 as discussed above, I also have doubts as to the inventiveness of claims 1, 9 and 14 in view of US 2007/0072443. There are also questions regarding the inventiveness of the independent claims in view of other items of prior art discussed above, although US 2007/0072443 appears to be the closest prior art.
Consequently, I do not consider that I can make a proper assessment of patent of addition status until the additional parent has been re-examined and that re-examination has concluded. Even if this were to result in no more than a “clear” re-examination report, I am of the view that the doubts I have expressed regarding the inventiveness of the claims are such that they warrant proper consideration via re-examination. I note that in the event that the additional parent is re-examined and the claims thereof remain unchanged, the features indicated as providing for novelty (and presumably inventive step in this circumstance) do not appear as a collective in the claims of the application as they presently stand. This would seem to cast doubt on the ability of the application to proceed as a patent of addition in its present form even if the additional parent is in fact valid as it now stands. However, I am not making any actual conclusions on this point in view of my doubts as to the validity of the additional parent noted above.
For completeness I note that the Examiner raised US 5884086 during examination of the application in connection with the patent of addition issue, however as it was not formally raised against the additional parent I have not considered it here. It may be considered during re-examination of the additional parent.
As assessment of patent of addition status is now postponed due to anticipated re-examination of the additional parent, I am of the view that a different period of time to gain acceptance should be substituted for the usual three months allowed pursuant to Regulation 13.4(1)(g). Consequently, pursuant to Regulation 13.4(3), and by analogy to Regulation 13.4(1)(j), I consider that the period for acceptance of the application should be set to three months from the earliest date that any one of the following actions occurs:
·The Commissioner informs the Applicant that re-examination of the additional parent has concluded; or
·the additional parent is no longer in force (i.e. surrendered, revoked, ceased or expired).
I note that the above period may be subject to further modification if a further decision relevant for the purposes of Regulation 13.4 were to issue regarding the application.
Conclusion
I am satisfied that the application comprises an inventive step in view of the prior art raised during examination.
However, I have grave doubts as to the validity of the additional parent. Because of this I consider it appropriate for the Commissioner to undertake re-examination of the additional parent prior to forming a determinative conclusion as to whether the application is validly a parent of addition to the additional parent. Consequently, the period allowed for the application to gain acceptance pursuant to s142(2)(e) will be set via Regulation 13.4(3) to three months from the earliest date that any one of the following actions occurs, subject to any further decision that may be relevant to Regulation 13.4:
·The Commissioner informs the Applicant that re-examination of the additional parent has concluded; or
·the additional parent is no longer in force (i.e. surrendered, revoked, ceased or expired).
Once re-examination of the additional parent has concluded the Commissioner will again reconsider, assuming it is otherwise appropriate to do so, the issue of whether the application is validly a patent of addition.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
Annex A – Family Member Details
| Application Number | Filing Date | Exam Request Date | Divisional of/claims priority from | Earliest Priority Date Claimed |
| 2009298735 | 28 September 2009 | 29 March 2011 | US 12/241036 | 30 September 2008 |
| 2014202137 | 16 April 2014 | 16 April 2014 | 2009298735 | 30 September 2008 |
| 2015264922 | 4 December 2015 | 4 December 2015 | 2014202137 | 30 September 2008 |
| 2017203579 | 29 May 2017 | 29 May 2017 | 2015264922 | 30 September 2008 |
Annex B – Claims for 2017203579
A connector system comprising:
a first connector comprising:
a ferromagnetic attraction plate forming a raised guide having a first opening forming a recess;
a first pin to provide an electrical connection for a first power supply voltage;
a second pin to provide an electrical connection for a second power supply voltage, where the first pin and the second pin are located in the recess;
a third pin to transmit optical data, the third pin located in a second opening in a first corner of the ferromagnetic attraction plate;
a fourth pin to transmit optical data, the fourth pin located in a third opening in a second corner of the ferromagnetic attraction plate, the second corner diagonally opposite the first corner;
a fifth pin to receive optical data, the fifth pin located in a fourth opening in a third corner of the ferromagnetic attraction plate; and
a sixth pin to receive optical data, the sixth pin located in a fifth opening in a fourth corner of the ferromagnetic attraction plate, the fourth corner diagonally opposite the third corner.
The connector system of claim 1 wherein the first power supply voltage is a positive supply voltage and the second power supply voltage is a ground.
The connector system of claim 1 further comprising a seventh pin to provide an electrical connection for the first power supply voltage and an eighth pin to provide an electrical connection for the second power supply voltage.
The connector system of claim 1 further comprising a shield for the third pin to improve an optical connection.
The connector system of claim 1 further comprising a lens for the third pin to improve an optical connection.
The connector system of claim 1 further comprising:
a second connector to couple with the first connector, the second connector comprising:
a first pin to provide the electrical connection for the first power supply voltage;
a second pin to provide the electrical connection for the second power supply voltage; and
a third pin to provide an optical connection for the optical data.
The connector system of claim 6 wherein the second connector comprises a magnet, where the magnet is attracted to the ferromagnetic attraction plate such that the second connector is magnetically held to the first connector when the second connector and first connector are coupled.
The connector system of claim 7 wherein the second connector comprises a plurality of magnets having opposing polarities relative to each other, such that when the first connector is brought in close proximity to the second connector, magnetic field lines travel through the ferromagnetic attraction plate of the first connector from one of the plurality of magnets in the second connector to another one of the plurality of magnets in the second connector, thereby increasing magnetic attraction between the first connector and the second connector.
The connector system of claim 1 wherein the first connector is a connector insert.
10. A connector system comprising:
a first connector comprising:
a raised guide surrounded by a recess;
a first pin to provide an electrical connection for a first power supply voltage;
a second pin to provide an electrical connection for a second power supply voltage, where the first pin and the second pin are located on the raised guide;
a third pin to transmit optical data, the third pin located in the recess;
a fourth pin to transmit optical data, the fourth pin located in the recess; a fifth pin to receive optical data, the fifth pin located in the recess;
a sixth pin to receive optical data, the sixth pin located in the recess, where the third, fourth, fifth, and sixth pins are arranged to be symmetrical about a major axis and minor axis of the first connector; and
a magnet to be magnetically attracted to a magnetic element in a second connector such that the second connector is magnetically held to the first connector when the second connector and first connector are coupled.
11. The connector system of claim 10 wherein the first power supply voltage is a positive supply voltage and the second power supply voltage is a ground.
12. The connector system of claim 10 further comprising a seventh pin to provide an electrical connection for the first power supply voltage and an eighth pin to provide an electrical connection for the second power supply voltage.
13. The connector system of claim 10 further comprising a shield for the third pin to improve an optical connection.
14. The connector system of claim 10 further comprising a lens for the third pin to improve an optical connection.
15. The connector system of claim 10 further comprising:
a second connector to couple with the first connector, the second connector comprising:
a first pin to provide the electrical connection for the first power supply voltage;
a second pin to provide the electrical connection for the second power supply voltage; and
a third pin to provide an optical connection for the optical data.
16. The connector system of claim 15 wherein the second connector comprises an attraction plate comprising a ferro-magnetic material, where the magnet is attracted to the attraction plate such that the second connector is magnetically held to the first connector when the second connector and first connector are coupled.
17. The connector system of claim 16 wherein the first connector comprises a plurality of magnets having opposing polarities relative to each other, such that when the first connector is brought in close proximity to the second connector, magnetic field lines travel through the attraction plate of the second connector from one of the plurality of magnets in the first connector to another one of the plurality of magnets in the first connector, thereby increasing magnetic attraction between the first connector and the second connector.
18. The connector system of claim 10 wherein the magnetic element of the second connector comprises a second magnet, where the magnet of the first connector is attracted to the second magnet such that the second connector is magnetically held to the first connector when the second connector and first connector are coupled.
19. The connector system of claim 10 wherein the first connector is a connector receptacle.
20. The connector system of claim 1 where the first pin and the second pin are located on a bottom surface of the recess.
21. The connector system of claim 10 where the first pin and the second pin are located on a top surface of the raised guide.
22. The connector system of claim 1 wherein the first, second, third, fourth, fifth, and sixth pins are arranged so that a second connector may be mated to the first connector in two different orientations.
23. The connector system of claim 10 wherein the first, second, third, fourth, fifth, and sixth pins are arranged so that the second connector may be mated to the first connector in two different orientations.
Annex C – Claims of 2009298735 (Additional Parent)
A power and data transfer system comprising:
a power and data adapter comprising:
a first port for receiving a first power supply;
a second port for a data connection; and
a third port for a second power supply voltage, a ground, and an optical data signal;
a connector insert comprising:
a first pin to provide an electrical connection for the second power supply voltage;
a second pin to provide an electrical connection for the ground;
a third pin to provide an optical connection for the optical data signal;
a fourth pin to provide an electrical connection for the ground;
a fifth pin to provide an electrical connection for the second power supply voltage, and
a raised guide around the first, second, third, fourth and fifth pins,
wherein the first, second, fourth, and fifth pins are arranged substantially in a line; and
a cable coupled between the third port of the power and data adapter and the connector insert and having a first conductor for the first power supply, a second conductor for the ground, and a fiber-optic cable for the optical data signal.
The system of claim 1 wherein the power and data adapter detects whether the connector insert is connected to a receptacle, when the connector insert is connected to a receptacle, the power adapter supplies the second power supply to the second pin of the connector insert, and when the connector insert is not connected to a receptacle, the power adapter does not supply the second power supply to the second pin of the connector insert.
The system of claim 2 wherein the power and data adapter determines whether the connector insert is connected to a receptacle by providing a current between the first pin and the second pin of the connector and measuring a resulting voltage.
The system of claim 2 wherein the power and data adapter detem1ines whether the connector insert is connected to a receptacle by receiving an identification signal at the third pin of the connector insert.
The system of claim 1 wherein the power and data adapter further comprises:
first circuitry for converting data received at the data connection to the optical data signal.
The system of claim 5 wherein the power and data adapter further comprises:
second circuitry for converting the first power supply to the second power supply.
The system of claim 1 wherein the raised guide is magnetically attracted to a magnet in a connector receptacle such that the connector insert is held to the connector receptacle when the connector insert and connector receptacle are coupled.
The system of claim 1 wherein the third pin is arranged substantially in a line with the first, second, fourth, and fifth pins.
A power and data adapter comprising:
a housing comprising:
a first power connector for receiving a first power supply;
a first data connector for a data connection; and
a first port for a second power supply, a ground, and an optical data signal;
a cable connected to the first port for the second power supply, the ground, and the optical data signal,
a connector insert connected to the cable and comprising:
a first pin and second pin for the second power supply, a third pin and fourth pin for the ground;
a fifth pin for the optical data signal; and
a raised guide around the first, second, third, fourth, and fifth pins,
wherein the first. second, third, fourth, and fifth pins are arranged in a single line.
10. The power and data adapter of claim 9 further comprising: first circuitry in the housing for converting data received at the first data connector to the optical data signal.
11. The power and data adapter of claim 10 further comprising: second circuitry in the housing for converting the first power supply to the second power supply.
12. A connector system comprising:
a first connector comprising:
a first pin to provide an electrical connection for a first power supply voltage;
a second pin to provide an electrical connection for a second power supply voltage;
a third pin to receive optical data;
a fourth pin to transmit optical data;
a fifth pin to provide an electrical connection for the first power supply voltage; and
a sixth pin to provide an electrical connection for the second power supply voltage; and
a raised guide around the first, second, third, fourth, fifth, and sixth pins, wherein the first, second, fifth, and sixth pins are arranged in a single line.
13. The connector system of claim 12 wherein the first power supply voltage is a positive supply voltage and the second power supply voltage is a ground.
14. A connector comprising:
a first pin to provide an electrical connection for a first power supply voltage;
a second pin to provide an electrical connection for a second power supply voltage;
a third pin to provide an electrical connection for the first power supply voltage;
a fourth pin to provide an electrical connection for the second power supply voltage; and
a fifth pin to provide an optical connection for data,
wherein the first, second, third, fourth, and plurality of pins are located in a recess on a face of the connector, the recess surrounded by a raised guide, and
wherein the first, second, third, and fourth pins are arranged substantially in a line.
15. The connector of claim 14 wherein the first power supply voltage is a positive supply voltage and the second power supply voltage is a ground.
16. The connector of claim 14 wherein the fifth pin is one of a plurality of pins to provide optical connections for data, wherein the plurality of pins are symmetrically arranged and include pins to transmit data and pins to receive data.
17. A connector system comprising:
a first connector comprising:
a first surface;
a raised guide extending from the first surface;
a connection surface at a terminal end of the raised guide, the connection surface being symmetrical about a first axis and symmetrical about a second axis perpendicular to the first axis; the first axis and the second axis being perpendicular to a connection axis of the connection surface;
a first pin on the connection surface, the first pin aligned with the first axis and spaced a first distance away from the second axis, the first pin to provide an electrical connection for a first power supply voltage;
a second pin on the connection surface, the second pin aligned with the first axis and spaced the first distance away from the second axis opposite the first pin such that the first pin and the second pin are symmetrical about the second axis, the second pin to provide an electrical connection for the first power supply voltage;
a third pin to provide an optical connection for a data signal;
a fourth pin on the connection surface, the fourth pin aligned with the first axis and spaced a second distance away from the second axis, the fourth pin to provide an electrical connection for a second power supply voltage; and
a fifth pin on the connection surface, the fifth pin aligned with the first axis and spaced the second distance away from the second axis opposite the fourth pin such that the fourth pin and the fifth pin are symmetrical about the second axis, the fifth pin to provide an electrical connection for the second power supply voltage.
18. The connector system of claim 17 further comprising at least one magnetic element located behind the connection surface.
19. The connector system of claim 18 wherein the at least one magnetic element comprises a plurality of magnets arranged to have opposing polarities.
20. The connector system of claim 17, where the first pin and the second pin extend parallel to the connection axis past the connection surface.
21. The connector system of claim 17, wherein the first pin is biased by a spring.
22. The connector system of claim 17, wherein the third pin is aligned with the first axis and the second axis at a centre of the connection surface.
23. The connector system of claim 17 further comprising a sixth pin to provide a second optical connection on the connection surface, the sixth pin aligned with the second axis and spaced a third distance away from the first axis,
wherein the third pin is aligned with the second axis and spaced the third distance away from the first axis opposite the sixth pin such that the third pin and the sixth pin are symmetrical about the first axis.
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