Apple Inc. [2019] APO 45 - [2019] APO 45

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2019] APO 45

Patent Application: 2016201444

Title:Unified communication application

Patent Applicant:                   Apple Inc.
Delegate:  Isaac Tan
Decision Date:  15 October 2019
Hearing Date:  3 August 2019 by written submissions.

Catchwords: PATENTS – section 45 – examiner objection hearing – computer implemented invention – graphical user interface – instant messaging – request to be heard after being remitted to examination following an earlier decision - invention allows communication between different instant messaging services and aggregation of the communication history – claims are novel and inventive under section 18 – prior art appears to described a unified inbox – the scope of examination under regulation 13.4(1)(g) is not restricted – application to proceed to acceptance

Representation: Carl Harrap, Patent Attorney of FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016201444

Title:Unified communication application

Patent Applicant: Apple Inc.
Date of Decision: 15 October 2019
DECISION
All of the claims are novel and have an inventive step.
I accept the patent request and complete specification.
REASONS FOR DECISION

Australian patent application 2016201444 (application) was filed on 4 March 2016 in the name of Apple Inc. (Applicant) as a divisional application of parent application 2013214758. The parent application is the national phase of PCT/US2013/024653 filed under the Patent Cooperation Treaty (PCT) with an international filing date of 4 February 2013. The application claims priority from three US priority documents, the earliest one of which was filed on 5 February 2012. On 17 December 2018, my decision on this application, Apple Inc. [2018] APO 91 (earlier decision), was issued pursuant to section 45 of the Patents Act 1990 (the Act) and provides an outline of the history of the application up to that date.[1] However, in the earlier decision, as I was of the view that certain issues were not adequately addressed during examination,[2] I considered it appropriate that the application be remitted back, so that examination could continue,[3] and provided the application with a period of six months to attain acceptance.[4]
[1] Apple Inc. [2018] APO 91 at [1]-[3].
[2] Ibid [58].
[3] Ibid [61].
[4] Ibid [62].
Following the earlier decision, three examination reports were issued, on 15 January 2019, 29 April 2019 and 13 June 2019 respectively. Notably, the examiner conducted a prior art search anew and raised new against the claims. On 17 June 2019, the Applicant requested to be heard and on 3 July 2019, was advised that the hearing related to the examiner’s objection was to be heard by way of written submissions due on 3 August 2019. The Applicant’s submissions were filed early, on 30 July 2019.
Evidence and Submissions
In the earlier decision, the Applicant’s submissions were accompanied with a declaration by Professor Scott R. Klemmer, declared and dated 10 September 2018 (Klemmer). While not strictly filed in respect of the present matter, the Applicant has made reference to the evidence of Professor Klemmer. Consequently, it is appropriate that I have regard to Professor Klemmer’s evidence to the extent that it is analogous to the facts of the present matter.[5]
[5] As the present matter is not an opposition under Chapter 5 of the Patent Regulations 1991 (Cth) (Regulations), Regulation 5.23 does not apply. For an overview of Regulation 5.23, see, eg, Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16; Reflex Instruments Asia Pacific Pty Ltd v Minnovare Ltd [2017] APO 8; 128 IPR 173; Inter Aqua Advance A/S v Bent Urup Holding ApS [2018] APO 43; 142 IPR 344.
The law
Section 18 of the Act provides as follow:
Patentable inventions for the purposes of a standard patent
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step
(c) is useful;
At the relevant time, the ‘prior art base’ is provided by section 7(1):
(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
Schedule 1 provides a dictionary of expressions and relevantly, ‘prior art information’ is defined as information that is part of the prior art base at the relevant time as:
“prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
The specification
An overview of the alleged invention, as outlined in the earlier decision, is provided as follows:[6]
[6] Ibid [11]-[17].
The specification states that the invention relates generally to facilitating a communication session in an electronic environment. As background, the specification provides an overview of electronic instant messaging services, how a user would generally interact with such services, and issues which may arise:[7]
[7] Specification, [0002]-[0005].
[0002]   Typically, in order to initiate an electronic communication session, a user can log into an instant messaging service using a username and a password. After the user logs into the instant messaging service, the user can view a contacts list that shows the status of the user's established contacts on that service. When the user desires to establish a communication session with a particular contact on the user's contacts list, the user can select an identifier representing the particular contact, or the intended recipient, from the user's contacts list, create a message in a message box that appears when the user selects the identifier, and send the message to the recipient. Upon receiving the message, the recipient can either respond to the sender or decline to respond. If the recipient responds to the sender, a communication session is established and communication between the sender and the recipient (referred to as "participants of the communication session") begins. In some instances, the participants of the communication session can invite other contacts to join the communication session.
[0003]   A number of instant messaging services have become widespread, with some being more popular with certain groups of users. Users are often registered with several instant messaging services and communicate with other users who are also registered with a number of instant messaging services, some of instant messaging services of which do not overlap. Moreover, users registered with several instant messaging services often have different usernames for some of those services. A user can have trouble keeping track of which contacts are on which services and under which usernames.
[0004]   In some instances, a user can he [sic] logged into several instant messaging services. If the user is not currently logged into a service that an intended recipient is currently using, the user must log into that service before the user is able to send messages to the intended recipient. In other instances, a user can be logged into several instant messaging service but only actively using some of those services. If the user is not currently actively using the service that the intended recipient is using, then the user must switch to the service that the intended recipient is using to be able to send messages to the intended recipient. It can be cumbersome for the user to constantly have to log into and/or switch between different services when the user desires to communicate with different contacts.
[0005]   Further, the user might desire to view a communication history with another user. For instance, the user might be searching for a particular dialogue between the user and another user. However, with each user having multiple usernames associated with multiple instant messaging services, it can be difficult to find the particular dialogue.
To address this, the present invention provides in one aspect, a method which allows communication to be initiated and established between a first user and a second user across a plurality of electronic communication services. Each communication service may be associated with a user identifier for the first user and the second user. Alternatively, or additionally, a user may be associated with a different unique user identifier for each communication service. Once the users of the conversation have been identified, the computer generates a combined communication history which aggregates messages from conversations associated between the first user and the second user, across all relevant user identifiers.[8] Some embodiments of how the present invention may be performed are depicted in figures 2 and 4. Figure 2 is said to be ‘a flow diagram of a process for facilitating a communication session’,[9] and figure 4 is ‘a flow diagram of a process for identifying a set of candidate account addresses for a set of candidate recipients.’[10]
[8] Ibid [0005c]-[0005e].
[9] Ibid [0012].
[10] Ibid [0014].
The specification provides the following explanation of the flow diagram of figure 2:[11]
[11] Ibid [0045]; at [0047]-[0049].
[0045]   At block 202 of FIG 2, unified messaging app 145 can receive a user input including a partial identifier for an intended recipient of a message to be sent by a sender. In some embodiments, the partial identifier can be a portion of a contact’s first name, a portion of a contact’s last name, a portion of one of a contact’s usernames or aliases, etc. Some embodiments allow the sender to perform the user input through a keyboard input, a gesture input, a cursor controller input, a gaze input, a voice command, etc.
[0047]   Referring again to FIG. 2, at block 204, unified messaging app 145 can search a database of user contacts to determine whether a match with the user input exists. In some embodiments, the database of user contacts can include an electronic address book stored locally on user device 100 [not shown]. In some embodiments, the database of user contacts can include an electronic address book stored at a remote server accessible by user device 100. The electronic address book can store a number of contacts and their information (e.g., first name, last name, e-mail address, phone number, address, gender, instant messaging user identifiers, etc.). User device 100 in some embodiments determines whether a match with the user input exists by comparing the partial identifier with the first names of contacts in the electronic address book, with the last names of contacts in the electronic address book, with e-mail addresses of contacts in the electronic address book, with instant messaging account identifiers, etc. This enables the user device…to identify a number of contacts who match the partial identifier.
[0048]   In some embodiments, unified messaging app 145 [not shown] can determine whether a match with the user input exists by comparing the partial identifier with one or more instant messaging user identifiers in a service-specific contacts list. In some embodiments, a user can have a service-specific contacts list for some or all of the electronics communication services with which the user is registered. Each service-specific contacts list (e.g., a “buddy list” on some IM services) can include a number of user identifiers for other users on the same service with whom the user communicates (e.g., a “buddy list” on some instant-messaging services). While in some embodiments, the service-specific contacts list can be stored locally on user device 100, the service-specific contact list in some embodiments can be stored in a remote server managed by a provider of the associated communication service. Some embodiments perform this comparison against instant messaging identifiers only when a match was not identified when the partial identifier was compared against the first names and/or last names of contacts in the user’s electronic address book. Some embodiments perform this comparison regardless of whether a match was found in the address book.
[0049]   At block 206, unified messaging app 145 can identify a set of candidate account addresses for a set of candidate recipients. Each candidate account address can include a user identifier and an identifier of the electronic communication service where the user identifier is valid. At block 208, unified messaging app 145 can present a list of candidate account addresses to the sender. In some embodiments, the list can be displayed on a screen image displayed on a display screen of user device 100. Some embodiments can present this list to the sender by generating audio signals that delivers the list to the sender.
Figure 4 operates in a similar manner to the flow diagram of figure 2. However, where item 410 results in no matches:[12]
[12] Ibid [0067]-[0068].
[0067]   If unified messaging app 145 determines that a match has not been found, at block 412, unified messaging app 145 of some embodiments can determine a set of electronic communication services that the sender is currently logged into. In some embodiments, unified messaging app 145 can also determine the electronic communication services that unified messaging app 145 is capable of logging the sender into (e.g., when the username and password of the sender is already stored on user device 100 and is accessible to unified messaging app 145).
[0068]   At block 414, unified messaging app 145 can identify one or more matches with account addresses (or account identifiers) in a service-specific contacts list for each of the electronic communication services identified at block 412. In some embodiments, unified messaging app 145 can match the partial identifier against account addresses of contacts by retrieving the sender’s service-specific contacts list for each of the electronic communication services and determining whether any of the account identifiers on the server-specific contacts list matches the partial identifier input by the user. The sender’s service-specific contacts list for each electronic communication service can be stored locally at user device 100 or at a remote server (e.g., managed by a provider of a communication service). The identified matches can then also be included in the set of candidate account addresses to be presented to the sender.
It is worth noting that while the above examples refer to a conversation between two users, in some embodiments, a communication session can be initiated with multiple participants.[13]
One example of how the communication session may be presented to a user is illustrated in figure 9.
As shown in figure 9:[14]
[0092]   FIG. 9 is an example of creating a communication history page 900 by aggregating multiple communication session files according to an embodiment of the present invention. In this example, a user has requested the communication history with another user (Johnny Appleseed). In response to receiving the user’s request, user device 100 can obtain communication session files between the user and the other user. The files can be obtained for any electronic communication service that the requesting user has used to communicate with the other person. Different files can be obtained for different services, and one or more files can be obtained from the same service. In the example of FIG. 9, the communication history includes three communication session files: a chat session file from an instant messaging service 910, an instant message/VOIP service 915, and a text message (SMS) service 920. While only three communication session files are retrieved for this particular example, there could be many more session files included in two users’ communication history across various electronic communication services.
[0093]   In some embodiments, unified messaging app 145 can arrange individual communications from the communication session files in an order (e.g., a chronological order) such that the generated page displays the communication history in the order in which the communication between the two users took place. As shown in FIG. 9, each communication line (corresponding to a message) in a communication session file can have a timestamp indicating when that message was sent. Based on the timestamps, unified messaging app 145 can sort the communication lines from all the communication session files across the different communication services and present a single page with the entire communication history arranged in chronological order. (In some embodiments, the communication lines can be sorted in a reverse chronological order or any other order, as desired.)
[0094]   Page 900 in FIG. 9, which is generated by aggregating communication session files from instant message service 910, VOIP service 915, and text message service 920, shows the aggregated communication history between the user and Johnny Appleseed. The aggregated communication history shows all chat lines and text exchanges between the user and Johnny Appleseed, sorted by timestamps, without regard for which service was used. Because “Hey Mandy” from VOIP service 915 has a timestamp of 10:56:33 and is the first communication between the user and Johnny Appleseed, it is displayed as the first chat line in the aggregated communication history. The next communication occurred when Johnny Appleseed sent “Hello!” to the user via instant message service 910 at 13:20:05. Hence, it is displayed as the second chat line in the aggregated communication history. In this way, all the chat lines from instant message service 910 and VOIP service 915 are sorted by each of their associated timestamp. Communication lines from the different communication session files can be interleaved depending on each communication line’s timestamp. Moreover, page 900 also includes the communication history between the user and Johnny Appleseed from SMS service 920. As indicated by their associated timestamps, the text messages were exchanged later in the day. Consequently, the text message exchanges are displayed at the bottom of page 900, below the communication history from instant message service 910 and VOIP service 915.
[0095]   It will be appreciated that page 900 is illustrative and that variations and modifications are possible. In some embodiments, messages sent using different services can be visually distinguished from each other, e.g., by font, background color, service-identifying annotations (as shown in FIG. 9), and so on. In some embodiments, a communication history can include other message formats in addition to or instead of text. For example, if a record of an audio conversation is available, the record can be inserted at an appropriate point in the communication history page (e.g., based on a timestamp associated with the beginning or end of the record). This can be indicated, e.g., by providing a visual cue at the appropriate location in the page and/or playback control elements to allow the user to play the audio. Video can be handled similarly, and a frame from the video can be included as an indicator that video is available.
[13] Ibid [0080].
[14] Ibid [0092]-[0095].
The claims

The specification as filed ended with 30 claims. Since the earlier decision was issued, the Applicant proposed two sets of amendments to the specification, respectively on 28 March 2019 and 28 May 2019. This decision is in relation to the claims as proposed to be amended on 28 May 2019. Claims 1, 29 and 30 as proposed to be amended are independent claims. Relevantly, independent claim 1 is provided below:
Claim 1
A method comprising:
receiving, by a computer that includes a display, a request, from a first user of the computer, that specifies a second user and that is a request for a communication history between the first user and the second user, the communication history including communications between the first user and the second user across a plurality of electronic communication services associated with different user identifiers for the first user;
in response to receiving the request, obtaining a set of communication session information for the plurality of electronic communication services, including a first communication history and a second communication history, wherein:
the first communication history includes a plurality of messages between the first user and the second user via a first communication service, of the plurality of electronic communication services, in which the first user is identified with a first user identifier that serves to uniquely identify the first user to the first communication service and the second user is identified with a second user identifier that serves to uniquely identify the second user to the first communication service, the first communication history being obtained without regard to messages in the second communication history; and
the second communication history includes a plurality of messages between the first user and the second user via a second communication service, of the plurality of electronic communication services, in which the first user is identified with a third user identifier that serves to uniquely identify the first user to the second communication service independently of the first user identifier and is different from the first user identifier and the second user is identified with a fourth user identifier that serves to uniquely identify the second user to the second communication service independently of the second user identifier and is different from the second user identifier, the second communication history being obtained without regard to messages in the first communication history;
generating, by the computer, a combined communication history based on timestamps associated with messages from the first communication history and the second communication history, wherein generating the combined communication history includes aggregating the messages from the first communication history and the second communication history into the combined communication history based on the timestamps associated with the messages, wherein the plurality of messages between the first user and the second user in the first communication history and the plurality of messages between the first user and the second user in the second communication history are interleaved based on the timestamps; and
in conjunction with generating the combined communication history, displaying, on the display, at least a portion of the combined communication history including the aggregated and interleaved messages, wherein:
displaying at least the portion of the combined communication history includes concurrently displaying messages from the first user and the second user;
the messages from the first user include:
a communication from the first user via the first communication service; and
a communication from the first user via the second communication service; and
the messages from the second user include:
a communication from the second user via the first communication service; and
a communication from the second user via the second communication service.
Claim Construction
The rules of construction are well established. In Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd, Stone J set out that:[15]
[i]t is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim.
[15]Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd [2006] FCA 261 at [16] citing Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; Decor Corporation Pty Ltd (formerly Brian Davis & Company Pty Ltd) & Anor v Dart Industries Inc. [1988] FCA 682; Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890.
If the claims are clear and unambiguous, ‘[i]t is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification’.[16]
[16] Ibid [17] citing Welch Perrin &Co. Pty. Ltd. v. Worrel [1961] HCA 91. See also Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2010] FCA 1318, [39]; Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC (No 2) [2006] FCA 1787; 71 IPR 46.
Moreover, as noted by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:[17]
the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification.
[17] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [118] citing Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155 at [67].
On the face of it, it is my opinion that the claims are clear. Nevertheless, turning to claim 1, the method commences with a request from a first user, for the system to obtain a set of communication session information for the plurality of electronic communication services, including a first communication history and a second communication history. The specification defines a communication session in figure 3 as:[18]
Referring to FIG. 3, an initial screen 305 can be associated with a communication application (e.g., unified messaging app 145). Initial screen 305 includes a description section 325, a search box 330, a communication exchange display area 335, and a message entry box 340. Description section 325 indicates that the user is in the process of creating a new message to be sent to an intended recipient for a communication session. Search box 330 allows the sender to input a sequence of characters (e.g., a portion of a first name, a last name, a nickname, etc.) to identify the intended recipient. Communication exchange display area 335 displays the communication exchange between the sender and the recipient, which can include various text data, hyperlinks, image data, video data, audio data, etc. Text entry box 340 allows the sender to send a message that the sender would like to communicate to the recipient.
[18] Specification, [0046]; Figure 3.
Relevantly, as shown in the image 320 of figure 3, once a communication session, a chat session, has been established, the user is then able to send an instant message to the recipient. Message 360 has been sent, a reply 362 has been received, and the sender is currently typing message 365.[19] Thus, a communication session corresponds conversation conducted via a communication service between a first user and a second user, at a point in time. Where a conversation is conducted over several communication services:[20]
Each of the communication session files can include a set of conversation lines that are each associated with a timestamp. In some embodiments, the conversation lines in different communication session files may have been transmitted using different ones of several electronic communication services. The unified communication application arranges the conversation lines from all of the set of communication session files in an order based on the associated timestamps and presents at least a portion of the arranged conversation lines to the user.
(my emphasis added)
[19] Ibid [0058].
[20] Specification, [0007].
The communication session information may be hosted by several providers and may be stored on different servers. This is illustrated in figure 8, reproduced below:[21]
FIG. 8 is a system diagram 800 that illustrates local and remote storage of electronic communication session files that can be located and aggregated to generate a communication history between users. In some embodiments, user device 100 can communication via a wide area network 805 (e.g., the Internet) with various servers. As shown, the servers can include instant messaging service #1 server 810, SMS service server 815, and instant messaging service #2 server 820. Other servers (not shown) hosted by other providers of electronic communication services can also be connected to network 805. In this embodiment, each of servers 810, 815 and 820 stores communication history files in an associated data repository 825, 830, 835.
[21] Ibid, [0088]; Figure 8.
Thus, in my view, a communication history corresponds to a conversation between a first user and a second user and may be composed from a plurality of conversation sessions corresponding to several communication services.
Next, turning to the first and second communication history, claim 1 describes the first and second communication history to include a plurality of messages between the first user and the second user. The first and second communication history includes an identifier which uniquely identify messages associated with the first user, and messages associated with the second user. Notably, each communication history only includes messages which corresponds to a single communication service. In this regard, each communication history includes a plurality of communication sessions associated with a single communication service, between a first user and a second user, and includes a set of conversation lines each associated with a timestamp.[22]
[22] Ibid [0114].
A combined communication history is then generated, from the timestamps associated with messages from the first communication history and the second communication history. One example of how this is performed is shown in Figure 9 above, which depicts a combined communication history generated by aggregating communication session files from an instant messaging service, VOIP service, and text message service, between a user and Johnny Appleseed.[23] Relevantly, the aggregated communication history shows all chat lines and text exchanges between the user and Johnny Appleseed, sorted by timestamps, without regard for which service was used.[24] In embodiments where the communication history includes other message formats in addition to or instead of text:[25]
For example, if a record of an audio conversation is available, the record can be inserted at an appropriate point in the communication history page (e.g., based on a timestamp associated with the beginning or end of the record). This can be indicated, e.g., by providing a visual cue at the appropriate location in the page and/or playback control elements to allow the user to play the audio. Video can be handled similarly, and a frame from the video can be included as an indicated that video is available.
[23] Ibid [0094].
[24] Ibid.
[25] Ibid [0095].
Relevantly, the system allows the user to readily view the entire conversation history between two users in a single page:[26]
This allows the user who requested the communication history to be able to readily view the entire communication history between the two users in a single page, regardless of the account addresses or the communication service used by either party when each communication took place. Further, the user can perform searches within the page to identify a dialogue the user is looking for, instead of having to open each communication session file and search the content of each file individually. In some instances, the communication history can be quite long and might not fit in the available display space. Page 900 can be scrollable to allow the user to view different portions of the history.
[26] Ibid [0096].
In short:
·     A communication session corresponds to a conversation conducted via a communication service, between a first user and a second user, at a point in time and may include a set of conversation lines that are each associated with a timestamp. It should be noted that this includes messages sent by the first user and the second user.
·     A first and second communication history is composed of a plurality of communication sessions and corresponds to conversations conducted at different points in time via a specific communication service.
·     A combined communication history consists of at least a first and second communication history, and thus corresponds to a conversation between a first user and a second user, conducted at different points in time over several communication services. In essence, a combined communication history is an aggregation of a plurality of communication sessions. Notably as outlined above, the combined communication history allows a user to readily view an entire communication history between two users on a single page, regardless of the communication service, without having to open each communication session file.
Person Skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the skilled addressee as:[27]
...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.
[27] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481;71 IPR 615 at [16].
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:[28]
He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.
[28] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70].
However, in AstraZeneca AB v Apotex Pty Ltd, the High Court noted that:[29]
The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.
[29] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23].
Having previously reviewed Professor Klemmer’s background and experience in the earlier decision,[30] I am satisfied that Professor Klemmer is suitable to provide evidence as a person skilled in the art.
[30] Apple Inc. [2018] APO 91 at [25]-[27].
Examiner Objections
Since the earlier decision, three examination reports have been issued in respect of the present claims. The sole objection remaining, is that the claims lack an inventive step. This objection is based on the following two prior art documents:
·United States Patent Application 2004/0137884 A1 entitled ‘Unified communication thread for wireless mobile communication devices’, with a publication date of 15 July 2004. The patent application lists G. Eric Engstrom, Tyrol R. Grahm, Jonathan O. Nelson and Eric J. Hull as inventors (Engstrom).
·United States Patent Application 2011/0130168 A1 entitled ‘Universal call management platform’, with a publication date of 2 June 2011. The patent application lists Vlad Vendrow, Vi Chau, Praful Shah and Vladimir Shmunis as inventors, and Ringcentral, Inc. as the assignee (Ringcentral).
Generally, the examiner report states that Engstrom ‘does not explicitly disclose interleaving content of message for both the first and second communication service’ but instead, ‘discloses a communication log that integrates the content of (SMS/Text) message with metadata associated with another message (email or voice mail).’[31] Similarly, Ringcentral ‘does not explicitly disclose interleaving content of message for both the first and second communication service’, however in the Examiner’s view, Ringcentral ‘discloses interleaving content of message for both the first and second communication service’.
[31] Examination Report No. 7 issued on 13 June 2019.
Novelty
Although the examiner had conceded that the issue of novelty is not an outstanding objection, and therefore does not apply to the present matter, it is my view that a determination of inventive step will become clearer once novelty has been properly assessed. Thus, for simplicity and completeness, I will proceed to consider this ground.[32]
[32] I took a similar approach in determining Safran Electronics & Defense [2019] APO 17.
It is well established that the test for novelty is as described by Besanko J in Aspirating IP Limited v Vision Systems Limited:[33]
The test for anticipation or want of novelty is the same as that for infringement and generally it is appropriate to ask whether the alleged anticipation would, if the patent were valid, constitute an infringement. That was the test enunciated in Harwood v Great Northern Railway Co (1865) 11 HLC 654; 11 ER 1488 and it has been applied ever since (see, for example, Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 per Aickin J). To satisfy the test, the prior document or act must involve or incorporate all of the integers of the claim under consideration.
[33] Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [165]. See also Bristol-Myers Squibb Co. v FH Faulding & Co. (2000) 97 FCR 524 at [66]. Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (2005) 68 IPR 1 at [313].
However, the reverse infringement test is not applied by simply asking whether something within the prior art document would, if carried out after the grant of the patent, infringe the invention as claimed. Rather, ‘[i]t must also be shown that the Specification contains clear and unmistakable directions so to use it.’[34] As stated by the Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited:[35]
A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
[34] Flour Oxidizing Company Ltd v Carr & Co Ltd [1908] 25 RPC 428 at 457; See also Canadian General Electric Co Ltd v Fada Radio Ltd (1930) 47 RPC 69.
[35] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]. See also ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc (2000) 106 FCR 214 at [51].
The ‘stringency’ upon which a prior art document is to be assessed in relation to novelty is set out in Samsung Electronics Co. Limited v Apple Inc. where the Full Court stated:[36]
It is trite law that, if the alleged paper anticipation is to deprive an invention of novelty, it must clearly disclose each and every essential feature of that invention, as claimed. This principle has its genesis in Lord Westbury’s seminal statement in Hill v Evans (1862) 4 De GF & J 288; 1A IPR 1 at 7 that “the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent”, a statement which Lord Reid described in C. Van der Lely N.V. v Bamfords Limited [1963] RPC 61 at 72 as “universally accepted”. The stringency with which the prior disclosure is to be assessed in order to be novelty-destroying has been discussed in a number of decisions in this Court, most notably in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 and Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 and, more recently, in H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151. It is not necessary to set out the discussion in those cases of the relevant principles. It is enough to note that a prior publication will not amount to an anticipation of an invention claimed as a combination if it discloses some, but not all, of the essential features of that combination.
[36] Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 at [127].
Engstrom

According to the abstract of Engstrom, the disclosed invention relates to:[37]
A mobile communication device, such as a wireless mobile phone, is provided with a unified message function equipped to facilitate a user in interacting with a communication partner including messages of different message types supported by the mobile communication device via a unified thread.
[37] Engstrom, Abstract.
As background, Engstrom provides an overview of wireless mobile phones, noting that some wireless mobile phones incorporate many features originally provided for in handheld electronic devices, such as personal digital assistants.[38] However, Engstrom notes that wireless mobile phones are inherently limited by the size of the devices, the display, and how such devices can be navigated by a user.[39]
[38] Ibid [0003]-[0004].
[39] Ibid [0005].
To this end, Engstrom describes a communication environment which allows a user of a wireless mobile phone to communicate with another wireless mobile phone user, or a computer user.[40] Relevantly, communication may comprise different messaging formats, including but not limited to voice mails, missed call notifications, emails, text messages and so forth from different communication partners.[41] In one embodiment, a unified thread of communication is displayed which includes messages of different message formats with a communication partner, or a group of communication partner.[42] By way of example, an end user interface is illustrated in figures 3a and 3b. Turning first to Figure 3a, shown below:[43]
[40] Ibid [0017].
[41] Ibid [0018].
[42] Ibid [0019].
[43] Ibid Figure 3a.
Figure 3a depicts a unified message stack or box on a screen 270.[44] Column 320 identifies the caller or sender using an icon or digital image and is used to identify messages 310 and 312 from the same contact.[45] Unknown callers or senders are identified with a question mark. Column 322 identifies the message type. Going down column 322, the messages are an email, a text message, a voice mail, another text message, and two missed calls.[46] Column 324 displays the subject. Different information is displayed depending on the type of message, and its length.[47] When a message is highlighted, the subject line automatically extends up to a certain number of lines to allow the message to be displayed.[48] Where an entire message is too long, the message may be opened up by a command, in the same fashion that an email message can be opened.[49] Column 326 and 328, respectively, display the date and time a message is received, or alternatively, when a message is sent.[50] Next, turning to Figure 3b:[51]
[44] Ibid [0028].
[45] Ibid [0029].
[46] Ibid [0030].
[47] Ibid [0031].
[48] Ibid.
[49] Ibid.
[50] Ibid [0032].
[51] Ibid Figure 3b.
Figure 3b depicts an alternative embodiment of how the interface may be presented in response to a user input to restrict what is displayed in the unified message box of Figure 3a to a particular communication partner.[52] The unified message function lists messages of all message types with a communication partner in chronological order, and may include messages across multiple chat sessions.[53] Each message is accompanied with an image icon 332 or 334 depicting the communication partner or the user, and an icon depicting the message type.[54] Voice messages 342 may include the communication partner’s phone number, text messages 344, as they are typically short, may display some of the, or the entire, message.[55] For an email 346, only the subject line might be included.[56] To reply to a message, a user can select the desired message and this could open a new email or text message addressed to the sender, or dial the caller’s phone number.[57] Alternatively, the user does not need to reply using the same protocol of the original message. For example, a user may decide to reply to an email message with a phone call.[58]
[52] Ibid [0035].
[53] Ibid [0037].
[54] Ibid.
[55] Ibid.
[56] Ibid.
[57] Ibid [0044].
[58] Ibid [0045].
In relation to Engstrom, the Applicant submits:[59]
[Engstrom] does not permit a user to readily perceive the messages (i.e. the content of the communications between the users) from the first communication history obtained via the first communication service and the second communication history obtained via the second communication service. The display of the subject information is not equivalent to and does not suggest displaying the actual conversation or dialogue between the first and second users.
At best, [Engstrom] discloses a communications log that integrates the content of SMS/text messages with metadata (e.g. subject line or caller’s name and/or phone number) associated with an email or voicemail message. As shown in Figures 3a-3b, this metadata is distinct from content associated with the email or voicemail message. This distinction was confirmed by Professor Klemmer: “Compactly presenting such metadata is obviously both distinct and easier than effectively presenting the content.”
[59] Applicant Submissions, Page 6.
Turning first to the question of whether Engstrom discloses a combined history which includes aggregating and interleaving messages between a first and second user, in my opinion, this only holds true if the messages are text messages. Where a message consists of a record of an audio conversation or a video, as described in the specification of the present invention,[60] Engstrom provides a visual cue at the appropriate location in the page, shown as item 342 of Figure 3b. Presumably, playback control elements are made available once the appropriate voice recording is selected by the user.
[60] Specification, [0095].
The Applicant submits that Engstrom differs from the claimed invention in that it does not disclose a combined communication history which includes aggregating and interleaving messages between a first and second user. Claim 1 requires that the combined communication history between a first user and a second user, is generated by first obtaining a communication history from a first communication service and, a second communication history from a second communication service. Notably, the contents of the messages from the first and second communication history, are concurrently displayed. Instead, Engstrom appears to provide a list of discrete messages which must be opened to be viewed. Moreover, in the earlier decision, Professor Klemmer explains that having a record or log of communication corresponds to the metadata of communications and is distinct from displaying the content of the communication.[61]
[61] Apple Inc. [2018] APO 91 at [36]-[37].
Put another way, the crux of the Applicant’s position appears to be that Engstrom can be described as a unified inbox, which displays a list of icons indicative of types of messages rather than the contents of the messages. While it is possible for Engstrom to display the contents of text messages, this is merely incidental and is limited to short messages. Furthermore, Engstrom appears to only display messages received, rather than displaying messages corresponding to a first user and a second user. Briefly on this point, I accept that although it may be possible to infer that figure 3b shows communications from a first user 332 and a second user 334, Engstrom does not describe figure 3b in any great detail. Even if this inference is appropriate, this example is only in respect of one communication service. It is not apparent if Engstrom also allows all communications, corresponding to a first user and a second user, to be displayed for a second communication service such as email or voice.
In my view, whether Engstrom displays a combined communication history as claimed is unimportant, as Engstrom does not appear to suggest that the communication history is generated by ‘obtaining a set of communication session information for the plurality of electronic communication services, including a first communication history and a second communication history’, as defined by claim 1. Notably, that a combined communication history is generated from a series of specific steps.
First, a communication session is obtained. The communication session corresponds to a single conversation between two users, at a point in time, using one communication service. For example, this could be an email chain on a particular topic. Alternatively, this may correspond to an instant messaging session. A first communication session may correlate to a conversation which occurs in the morning of one day, a second communication session in the afternoon of the same day, and a third communication session on the next day. Relevantly, a communication session can include a set of conversation lines that are each associated with a timestamp.
Second, a first and second communication history is created. Each communication history comprises a plurality of communication sessions. For example, the first communication history may contain a first communication session for a conversation, and a second communication for a conversation on Tuesday. Relevantly, claim 1 state that each communication history, corresponds to a specific communication method. Thus, for example, the first communication history may contain a plurality of communication sessions for an email exchange between two users over a period, and the second communication history for instant messaging.
Third, the combined communication history consists of at least the first and second communication history. Thus, it relates to a conversation between a first user and a second user, over a period, and conducted via two different communication services.
Next, I note that claim 1 requires that in response to receiving a request, the system obtains a set of communication session information for the plurality of electronic communication services, including a first communication history and a second communication history. Notably as discussed above, the communication sessions may be retrieved from local and remote storage sources, such as that hosted by providers of electronic communication services. In this regard, the communication session may be pre-existing, and generated using software of a communication service. It is only when a request is made, that the communication session is obtained, and a combined communication history generated.
However, Engstrom does not retrieve a first and second communication history, which has been created using a different communication service. Instead, Engstrom appears to generate a communication history which commences from the point in time when a user first commences using the platform and begins from when a first message is sent or received.
Consequently, nothing that Engstrom does not appear to describe exactly how the interface of Figure 3b is generated, or that information corresponding to a communication history is retrieved from remote sources such that a communication history does not exist until a request is made, it follows that claim 1 is novel in light of Engstrom. It follows that the same consideration applies to independent claims 29 and 30, and all of the dependent claims.
Ringcentral
In Ringcentral, the disclosed invention is described as a system for enabling integration between various internet- or non-internet based communication services, as provided by different communications platforms and service providers, using a universal platform.[62] As background, Ringcentral states that ‘[a]dvances in wireless networking and messaging technologies have given mobile users many choices to access Internet contents and services.’[63]
[62] Ringcentral, Abstract.
[63] Ibid, [0003].
By way of example, some devices include personal digital assistants (PDAs), cell phones with wireless application protocol (WAP) or short message service (SMS), and email compatible devices supporting Post Office Protocol 3 (POP3) and/or Internet Message Access Protocol (IMAP), and instant messaging.[64] However, these devices do not communicate with each other using the same platform.[65] To this end, Ringcentral describes a number of embodiments upon which conversations between users on one or more platforms can be tracked. The Examiner, in the latest examination report, refers to figure 7 which is reproduced below:[66]
[0150] FIG. 7 shows a call log interface 700 through which calls sent and received call be [sic] recorded in a log. In some implementations, the call log interface 700 can be displayed upon invoking the call log interface element 702 in a panel 708 that contains one or more call-related options.
[0151] In some implementations, the call log interface 700 can receive call log data from a private telecommunication network, a public telecommunication network and/or a mobile telecommunication terminal, and merge the received call logs into a single thread that contains call logs of the user receiving or calling from/to the private telecommunication network, the public telecommunication network and/or the mobile telecommunication terminal.
[0152] To improve and provide user-friendliness, each of the entries displayed in the call log interface 700 can be displayed according to specific criteria. For example, call entries can be arranged according to date and time of the call, and can be displayed in distinct graphical representation indicating their call log source (e.g., call log entries originating from the call log of a private telecommunication network can be presented in red color while call log entries originating from a public telecommunication network can be presented in black color). Distinct graphical representation also can be used to indicate whether the call entry is associated with a transmitted call (e.g., to a called party) or a received call (e.g., from an outside caller). Furthermore, other information on the entries can be mirrored by specific types, fonts, icons or other visuals (e.g., missed and un-answered calls can be set in bold face while incoming and outgoing calls can be indicated by arrows to the right and the left, respectively).
[0153] In some implementations, in addition to call entries, the call log interface 700 also can display outgoing or incoming messages sent or received by the user (e.g., sent and received instant messages, sent and received faxes, sent and received comments to social networks). In so doing, the call log interface 700 can maintain a comprehensive call log that allows the user to determine if and when a particular call or message is sent or received without querying multiple sources for these information.
[64] Ibid.
[65] Ibid.
[66] Ibid, Figure 7; [0150]-[0153].
I agree with the examiner and the applicant that Ringcentral does not disclose combined communication history which includes aggregating and interleaving messages between a first and second user. However, the examiner has suggested that Figure 5c discloses ‘interleaving content of messages for both the first and second communication services.’[67] Figure 5c is shown and described below:
[0146] FIG. 5C shows an example of a history interface 520. As shown in FIG. 5C, the history interface 520 can display all messages sent by a particular sender in a single thread. The messages displayed in the history interface 520 can include messages of various types from various communication platforms. The history interface 520 can display a time and date for each sent by the sender, and control elements (e.g., a “Play” button) to facilitate the presentation of the messages. Optionally, the history interface 520 can also display information such as the origin of the message (e.g., whether a particular message originates from a mobile phone or home phone), message type (e.g., whether the particular message is an instant message or voice message), message count (e.g., indicating the total number of messages sent by the sender) and the like. The messages displayed in the history interface 520 also can be sorted if desired.
[67] Examination Report No. 7 issued on 13 June 2019.
In my opinion, Figure 5c provides an interface from which a user may select messages to view. When a message is selected, the user may play or open the message, which will then facilitate the presentation of the message. Put another way, Figure 5c contains a list of messages, albeit from different messaging platforms. In my view, Ringcentral appears to describe a unified inbox, which is dissimilar to having the contents of each message displayed, and interleaved, such that a user is provided with an overview of a conversation, without having to individually select and open each message.
Moreover, like with Engstrom, Ringcentral does not appear to suggest that the communication history is generated by ‘obtaining a set of communication session information for the plurality of electronic communication services, including a first communication history and a second communication history’, as defined by claim 1. Rather, the communication history appears to be generated from scratch, beginning from when a first message is sent or received.
Consequently, I find that claim 1 is novel in light of Ringcentral. It follows that the same consideration applies to independent claims 29 and 30, and all of the dependent claims.
Inventive Step
In Albany Molecular Research Inc v Alphapharm Pty Ltd, Jessup J conveniently laid out the relevant principles applying to Section 18(1)(b)(ii) for lack of inventive step:[68]
Armed with common general knowledge, and possibly also with one of the kinds of information referred to in s 7(3), the invention in question will have been obvious to the skilled person referred to in s 7(2) if he or she “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”: Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, 286; Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411, 432 [50]. The content of the concept of “a matter of routine” approved by the High Court in the latter case was that provided by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157, 187-188:
Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art … directly be led as a matter of course to try [that which was invented under the patent in suit] … in the expectation that it might well produce [the solution to the problem which gave rise to the invention in suit]?
[68] Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120; 90 IPR 457 at [152].
Where the invention involves a combination of integers, obviousness is to be determined by reference to the combination as a whole and not each integer individually:[69]
the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of "perhaps many possibilities" which must be shown by [the Respondent] to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.
[69] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [41]; See also Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253.
Problem to be solved and Common General Knowledge
In order to determine whether an invention would be obvious in light of common general knowledge, a useful test that should be applied is the Cripps question which can be simplified to:[70]
Would the person skilled in the art (in all the circumstances) directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?
[70] Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187]-[188]; The question was endorsed in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 as a ‘reformulation of the Cripps question’.

Moreover, it is not sufficient to establish common general knowledge solely by reference to a publication. Rather, it must be shown that the information contained in the publication formed part of the common general knowledge. This principle is set out in Ranbaxy Laboratories Limited v AstraZeneca AB where Middleton J stated:[71]
As I noted in Eli Lilly [2013] FCA 214, information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art: see Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496; [2011] FCA 1002 at 514 [96], citing British Acoustic Films (1936) 53 RPC 221 at 250 (which was also affirmed in General Tire (1971) 1A IPR 121 at 135). Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.
In Alphapharm (2008) 76 IPR 618; [2008] FCA 559, Lindgren J observed that (at 667 [221]):
[I]t was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is “‘generally accepted without question”‘ or “‘generally regarded as a good basis for further action”‘ by the bulk of those in the art.
[71] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368 at [217]-[218].
This concept was reiterated in Meat & Livestock Australia Limited v Cargill, Inc, where Beach J stated:[72]
There is also a further point to be made concerning common general knowledge. There is no general principle permitting admissions in the specification of a patent to be used to establish in and of themselves that information is common general knowledge. Whether information has become so widely assimilated that it forms part of common general knowledge must be determined on the evidence, although admissions can be considered as part of that evidence.
[72] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [688].
Having previously determined the problem to be solved in the earlier decision,[73] in the absence of new evidence or submissions suggesting otherwise,[74] I see no reason to depart from my previous determination. That is:[75]
In my view, the specification clearly sets out that the problem to be solved stems from the widespread availability of different instant messaging services. Due to this, the specification indicates that there is a difficulty for users to have to constantly log into and/or switch between different communication services. Moreover, each distinctively separate instant messaging service would be associated with a username, and maintain its own communication history. In this respect, it may become difficult to find a particular dialogue. I am satisfied that the problem to be solved is as provided in the specification. While there is a lack of evidence as to what constitutes common general knowledge, I am of the view that the specification is sufficiently detailed, from which I can make a reasonable inference if required.
[73] Apple Inc. [2018] APO 91 at [53].
[74] For example, in Apple Inc. [2018] APO 32 at [27], I considered it appropriate to revisit my previous determination set out in Apple Inc. [2018] APO 54.
[75] Apple Inc. [2018] APO 91 at [53].
Inventive Step in Light of the Prior Art
Turning my mind to the present matter, I will now consider whether the invention would lack an inventive step in light of Engstrom or Ringcentral. The Applicant provides the following submissions in respect of Engstrom:[76]
[Engstrom] therefore fails to teach or suggest displaying a combined communication history that includes displaying the content of messages sent and received using multiple different communication services in combination with the remaining features of pending claim 1. It does not teach or suggest the paradigm shift to the display, in response to a request from a first user that specifies a second user, of messages both sent and received across both a first communication and a second communication service in a combined communication history, in order, based on timestamps.
[76] Applicant Submissions, Page 7.
In relation to Ringcentral, the Applicant submits:[77]
Applicant submits that Figure 7 and paragraph [0150] and [0152] provides no teaching or suggestion of displaying the call log interface in response to receiving a request from a first user of the computer that specifies a second user, where the request is for a communication history between the first user and the second user, as recited by pending independent claim 1. [Ringcentral] merely discloses displaying the entries in the call log according to the criteria, not creating and displaying the different communication history for a selected pair of users as claimed.
[77] Ibid, Page 10.
I agree with the Applicant. In my opinion, there is nothing in either Engstrom or Ringcentral which suggests why a person skilled in the art would be directly led to modify Engstrom or Ringcentral such that it changes the manner upon which multiple communication histories are combined and displayed. For example, as Engstrom and Ringcentral both require a user to open a message before the entire message can be reviewed and responded, it is my view that providing an interface which displays and combines the content of messages sent, would require a degree of inventive input, impermissibly tainted by hindsight.[78]
[78] See, eg, British American Tobacco (Investments) Limited v Philip Morris Products S.A. [2019] APO 40; Metso Sweden AB v Outotec Pty Ltd [2019] APO 25.
Moreover, neither Engstrom or Ringcentral describe creating a combined communication history from communication histories corresponding to a specific communication service, which in turn, is created from a plurality of communication sessions obtained from a plurality of communication services.
Noting the differences in the architecture of Engstrom or Ringcentral with the claimed invention, I am not satisfied that a person skilled in the art would, as a matter of course, alter the continual aggregation of communications of Engstrom or Ringcentral to be the intermittent aggregation of the present application. Therefore, even if it would have been obvious to modify the interface of Engstrom and Ringcentral to the interface as claimed, the prior art still falls short of establishing that the person skilled in the art would be directly led to the precise steps leading to the generation of this interface.
Consequently, I find that all of the claims are inventive in light of Engstrom and Ringcentral.
Scope of examination under regulation 13.4(1)(g)
In the earlier decision, I remitted the application back to examination and provided the Applicant with a period of six months to attain acceptance of the application.[79] To support its position, the Applicant refers to the following explanatory memorandum[80] implementing regulation 13.4(1)(g).[81] The Applicant’s complaint in respect of regulation 13.4 is as follows:[82]
In addition to the inventive step issues discussed above, the present hearing raises a significant issue of procedure. In particular, when the context of regulation 13.4(1)(g) is considered, the present application should have been accepted following withdrawal of the objections based on D1 and D2. Applicant therefore respectfully requests acceptance of this application as a matter of procedure. If the Patent Office or any third party wishes to raise an issue of inventive step over D3 or D4, then there are other mechanisms available.
Regulation 13.4(1)(g) provides for the period for acceptance to be extended in the event of the Commissioner making a decision in writing in relation to an outstanding examination report under section 45 of the Patents Act 1990.
Regulation 13.4(1)(g) is a mechanism to allow an Applicant an opportunity to overcome outstanding objections raised in an examination report under section 45.
[79] Apple, Inc. [2018] APO 91 at [61]-[62].
[80] Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1).
[81] Applicant’s Submissions, Page 12–13.
[82] Ibid Page 12.
Respectfully, I must disagree with the Applicant. First, the explanatory memorandum implementing regulation 13.4(1)(g)[83] merely permits the Applicant with the opportunity to attempt to overcome the objection. Although it is permissible in some circumstances to incorporate a narrow view, I can find nothing in the Regulations or explanatory memorandum to support such an interpretation.[84]
[83] Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1).
[84] See, eg, Michael Kirby, ‘Statutory Interpretation: The meaning of meaning’ (2011) 35(1) Melbourne University Law Review 113.
Therefore, it does not, nor should it be read as such, to prohibit or restrict what actions an examiner may take. Conversely, the Applicant is not prevented from performing any actions that is typically permittable during examination, such as the filing of divisional applications,[85] responding to the examination report, or the filing of amendments.
[85] See, eg., Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 at [33]; Kafataris v Davis [2016] FCAFC 134; 120 IPR 206 at [71].
Consequently, aside from the desirability that examination following a hearing is conducted in a consistent manner,[86] I am not satisfied that there is any basis for the scope of examination under regulation 13.4(1)(g) should be restricted.[87]
[86] See, eg, Apple, Inc [2017] APO 54 which was later resolved in Apple, Inc. [2019] APO 32. See also Global Blue S.A. v Visa U.S.A. Inc. [2018] APO 86.
[87] See also BASF Corporation [2019] APO 34 where the delegate provided a period of six months to attain acceptance.
Conclusion
On balance, I am satisfied that the invention as claimed is novel, and has an inventive step, in light of Engstrom and Ringcentral. I am satisfied that no other ground of objection applies. It is therefore open for me to direct that the application be accepted. As I have no concerns or issues that require further examination, I will therefore direct the application to proceed to acceptance.
Isaac Tan
Delegate of the Commissioner of Patents