Apple Inc. - [2019] APO 44

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2019] APO 44

Patent Application: 2017202587

Title:Portable multifunction device with interface reconfiguration mode

Patent Applicant:                   Apple Inc.
Delegate:  Isaac Tan
Decision Date:  8 October 2019
Hearing Date:  Written Submissions filed on 28 August 2019

Catchwords: PATENTS – section 45 – examiner objection hearing – computer implemented invention – configuration of an iPhone graphical user interface – touchscreen navigation – distinct sets of icons on different screens – consideration of inventive step under section 18 – combination of document – consideration of what constitutes common general knowledge – benefit of hindsight – ubiquitousness of invention – Wayback Machine evidence – application to be accepted.

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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017202587

Title:Portable multifunction device with interface reconfiguration mode

Patent Applicant: Apple Inc.
Date of Decision: 8 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
Background

Apple Inc. (Applicant) filed Australian patent application 2017202587 (application) on 19 April 2017 and pursuant to section 29A of the Patents Act 1990 (the Act), is taken to be equivalent to PCT/US2008/074625 filed under the Patent Cooperation Treaty (PCT) with an international filing date of 28 August 2008. Thus, the application claims priority from US priority document 11/849,938 having an early priority date of 4 September 2007. On 19 April 2017, the Applicant requested examination and has been subjected to three examination reports respectively dated 4 July 2018, 26 April 2019 and 4 July 2019.
On 4 July 2019, the Applicant requested to be heard. On 11 July 2019, a Delegate of the Commissioner provided the Applicant with seven days to indicate whether the Applicant wishes to be heard orally in person, or via written submissions. On 18 July 2019, the Applicant confirmed that they wished to proceed by way of written submissions. The Applicant’s written submissions was filed on 28 August 2019, and is accompanied by the following annexures:[1]
Annexure A – “iPhone User Guide”. Annexure A was also cited as D1 by the Examiner.
Annexure B – “First Look iPhone 1.1.3” posted on Macworld on 16 January 2008
Annexure C – “iPhone User Guide” archived on the Wayback Machine on 11 September
2008
[1] Applicant’s Submissions, Page 2. While WayBack evidence may be treated as hearsay and hence inadmissible in Court, the rules of evidence do not apply to Australian Patent Office matters. See, eg, Voxson Pty Ltd v Telstra Corporation Limited (No 10) [2018] FCA 376; 134 IPR 99 at [33]-[41]. See also Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) [2019] FCA 1552.
Annexure D – “iPhone User Guide” archived on the Wayback Machine on 16 February 2008
Applicable Law
The application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 (the Regulations) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.
Thus, the standard of proof that applies in the present case is the balance of probabilities. I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
The examiner objections
According to examination report number 3, which was issued on 4 July 2019 (examination report), the examiner raised an objection under the heading ‘Novelty and inventive step’. The objection is primarily based on a combination of the following prior art documents.
·Apple, Inc., iPhone’s User’s Guide (2007) < (user guide)
·DFmedia, ‘[HD] Steve Jobs – iPhone Introduction in 2007 (Complete)’ (YouTube, 10 January 2013) < (Jobs)
·United States Patent Application Publication US 2006/0197753 A1 in the name of Steven P. Hotelling and having a publication date of 7 September 2006. (Hotelling)
The objection is as follows:[2]
The applicant’s submissions were considered carefully, but were not persuasive. The inventive step objection is maintained.
The applicant argues that it would not be obvious to specifically replace a first set of icons while keeping other icons unchanged, when there is a finger swipe gesture.
The problem to be solved is to provide a more convenient arrangement of icons for display on the screen, particularly noting the small screen space ([0002]-[0007]). The applicant claims that [User Guide and Jobs] do not teach having separate groups of icons whereby one group can change in response to a swipe gesture, and another group, for frequently used icons, that do not change.
At the time of the priority date, it was well-known for touchscreens to respond to swiping, and the use of swiping to scroll through icons was well-known (as exemplified in [Hotelling]: [0085]-[0087]). In light of the problem to be solved of saving screen space, it would be obvious to a skilled addressee familiar with computer applications and systems to have some kind of scrolling mechanism when not all the icons will fit on a screen (whether this is a regular computer or a mobile phone), and given that swiping was a well-known mechanism, using this on a touchscreen would be obvious.
Further, with respect to the applicant’s claim that at best, the skilled addressee would only consider changing all the icons in a swipe, the examiner disagrees. It was well-known at the time of the priority date to bookmark or pin certain frequently used items to a graphical user interface, while allowing other items to be moved around. As such, the selective holding of certain items, while moving other items would be an obvious choice in prioritising the location of items to optimised limited space, and cannot give rise to an inventive step.
The appended claims only add additional features on the different sets of icons that can be moved, or accompanying them with routine features such as animations, and cannot give rise to an inventive step.
[2] Examination Report No. 3 dated 4 July 2019, Objection 8.
Specification
As background, the specification provides an overview of the challenges in designing user interfaces for handheld portable devices, which have much smaller screens than desktop or laptop computers.[3] Some portable communication devices have resorted to adding more push buttons, which increases the density of push buttons, overloading the functions of push buttons, or using complex menu systems to allow a user to access, store and manipulate data.[4] However physical buttons are inflexible, and may prevent a user interface from being configured and/or adapted by either an application running on the portable device, or by users.[5] While some conventional user interfaces have allowed users some degree of customisation, this is often cumbersome and complicated as such conventional user interfaces are said to be often counterintuitive and the corresponding indicators guiding user actions are often difficult to understand.[6] Therefore, the alleged invention seeks to provide a more transparent and intuitive user interface for portable devices that enable a user to easily configure the user interface.[7]
[3] Specification as filed, [0002].
[4] Ibid.
[5] Ibid [0003].
[6] Ibid [0004].
[7] Ibid [0005].
In this respect, one embodiment of the alleged invention is shown in Figures 8A to 8C, shown below:[8]
[8] Ibid Figures 8a-8c.
Figure 8A depicts a graphical user interface 804-1 showing two sections of icons 408 and 802. Upon performing a swiping action 808 or 810, the icons shown in section 802 changes to user interface 804-2. Notably, section 408 remains. Performing a further swiping action 812, changes section 802 to user interface 804-3, which displays a different distinct set of icons.
The claims
The specification contains ten claims, of which five are independent. Independent claims 1, 7, 8, 9 and 10 are reproduced below:
Claim 1
A computer-implemented method, comprising:
at a computing device with a touch screen display:
displaying a first set of a first plurality of icons in a first area of the touch screen display, wherein the first plurality of icons includes a plurality of sets of icons that are separately displayed in the first area of the touch screen display;
displaying a second plurality of icons in a second area on the touch screen display, wherein:
the second area is different from the first area, and
both of the first plurality of icons and the second plurality of icons includes application launch icons, wherein each application launch icon represents a particular application, and activation of a respective application launch icon causes activation of the particular application represented by the activated application launch icon;
while displaying the first set of the first plurality of icons in the first area of the touch screen display, detecting a first finger gesture on the touch screen display in the first area in a first direction;
in response to detecting the first finger gesture, replacing display of the first set of the first plurality of icons with display of a second set of the first plurality of icons in the first area on the touch screen display while maintaining the display of the second plurality of icons in the second area on the touch screen display, wherein the second set of the first plurality of icons is distinct from the first set of the first plurality of icons.
Claim 7
A computing device, comprising:
            a touch screen display;
            one or more processors;
            memory; and
            one or more programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the one or more programs including:
  instructions for displaying a first set of a first plurality of icons in a first area of the touch screen display, wherein the first plurality of icons includes a plurality of sets of icons that are separately displayed in the first area of the touch screen display;
  instructions for displaying a second plurality of icons in a second area on the touch screen display, wherein:
  the second area is different from the first area, and
  both of the first plurality of icons and the second plurality of icons includes application launch icons, wherein each application launch icon represents a particular application, and activation of a respective application launch icon causes activation of the particular application represented by the activated application launch icon;
  instructions for, while displaying the first set of the first plurality of icons in the first area of the touch screen display, detecting a first finger gesture on the touch screen display in the first area; and
  instructions for replacing display of the first set of the first plurality of icons with display of a second set of the first plurality of icons in the first area on the touch screen display while maintaining the display of the second plurality of icons in the second area on the touch screen display, in response to detecting the first finger gesture on the touch screen display in the first area, wherein the second set of the first plurality of icons is distinct from the first set of the first plurality of icons.
Claim 8
A computer readable storage medium having stored therein instructions, which when executed by a device with a touch screen display, cause the device to:
            display a first set of a first plurality of icons in a first area of the touch screen display, wherein the first plurality of icons includes a plurality of sets of icons that are separately displayed in the first area of the touch screen display;
            display a second plurality of icons in a second area on the touch screen display, wherein:
  the second area is different from the first area, and
  both of the first plurality of icons and the second plurality of icons includes application launch icons, wherein each application launch icon represents a particular application, and activated of a respective application launch icon causes activation of the particular application represented by the activated application launch icon;
            while displaying the first set of the first plurality of icons in the first area of the touch screen display, detect a first finger gesture on the touch screen display in the first area; and
            replace display of the first set of the first plurality of icons with display of a second set of the first plurality of icons in the first area on the touch screen display while maintaining the display of the second plurality of icons in the second area on the touch screen display, in response to detecting the first finger gesture on the touch screen display in the first area, wherein the second set of the first plurality of icons is distinct from the first set of the first plurality of icons.
Claim 9
A graphical user interface on a computing device with a touch screen display, comprising:
            a first set of a first plurality of icons displayed in a first area of the touch screen display, wherein the first plurality of icons includes a plurality of sets of icons that are separately displayed in the first area of the touch screen display; and
            a second plurality of icons displayed in a second area on the touch screen display, wherein:
  the second area is different from the first area, and
  both of the first plurality of icons and the second plurality of icons includes application launch icons, wherein each application launch icon represents a particular application, and activation of a respective application launch icon causes activation of the particular application represented by the activated application launch icon;
            wherein:
            while displaying the first set of the first plurality of icons in the first area of the touch screen display and in response to detecting a first finger gesture on the touch screen display in the first area, display of the first set of the first plurality of icons is replaced with display of a second set of the first plurality of icons in the first area on the touch screen display while maintaining the display of the second plurality of icons in the second area on the touch screen display, wherein the second set of the first plurality of icons is distinct from the first set of the first plurality of icons.
Claim 10
A computing device with a touch screen display, comprising:
            means for displaying a first set of a first plurality of icons in a first area of the touch screen display, wherein the first plurality of icons includes a plurality of sets of icons that are separately displayed in the first area of the touch screen display;
            means for displaying a second plurality of icons in a second area on the touch screen display, wherein:
  the second area is different from the first area, and
  both of the first plurality of icons and the second plurality of icons includes application launch icons, wherein each application launch icon represents a particular application, and activation of a respective application launch icon causes activation of the particular application represented by the activated application launch icon;
            means for, while displaying the first set of the first plurality of icons in the first area of the touch screen display, detecting a first finger gesture on the touch screen display in the first area; and
            means for replacing display of the first set of the first plurality of icons with display of a second set of the first plurality of icons in the first area on the touch screen display while maintaining the display of the second plurality of icons in the second area on the touch screen display, in response to detecting the first finger gesture on the touch screen display in the first area, wherein the second set of the first plurality of icons is distinct from the first set of the first plurality of icons.
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.[9]
[9] 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:[10]
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.
[10] 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.’[11] As stated by the Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited:[12]
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.
[11] 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.
[12] 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:[13]
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.
[13] Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 at [127].
User Guide

The User Guide is an instruction manual, which accompanies the purchase of an Apple iPhone and provides a user with an overview of how to set up the iPhone and to perform basic functions.[14] While the exact model of the iPhone is not specified, this would be the model of the handset available around 2007 and is shown below:[15]
[14] User Guide, Pages 5-14.
[15] Ibid Page 10.
As shown above, the user interface of the iPhone consists of a service of icons corresponding to iPhone applications, and a home button. Pressing the home button allows a user to view iPhone applications. Tapping any icon allows the user to activate an iPhone application. The functions of some of these iPhone applications are shown below:[16]
[16] Ibid Page 12.
Pressing the home button at any time returns the device to the home screen displaying all the iPhone applications. To navigate, a user may flick or drag up or down to scroll on some pages, such as when viewing a contacts list or webpage. However, flicking or dragging a user’s finger won’t choose or activate anything on the screen. This is shown below:[17]
[17] Ibid Page 15.
Relevantly, there are sixteen applications shown both on the user interface of the iPhone and described in the user guide.[18] There is nothing within the user guide which suggests that, in response to detecting a gesture, ‘the display of the first plurality of icons is replaced with display of a second set of the first plurality of icons in the first area on the touch screen display while maintaining the display of the second plurality of icons in the second area on the touch screen display, wherein the second set of the first plurality of icons is distinct from the first set of the first plurality of icons’, as required by the independent claims. Rather, as all available iPhone applications are already shown on the user interface of the iPhone, there appears to be no need for a second display containing a second set of icons.
[18] Ibid Page 12 - 13
This appears consistent with the Applicant’s submission which states:[19]
As shown in [user guide], which is a User Guide of the iPhone, there was no description of a function or ability for a person to add icons to a “Home” screen or display additional icons. If there was such a provision it may be inferred that the User Guide would provide some guidance on how to utilise it. Instead, it may be concluded that the devices were provided with a default number of application icons and the “Home” button was used to return to the “Home” screen to see all the applications available to the user (see Page 15 of the [user guide]). The use of a swipe gesture to perform scrolling was only provided in relation to navigating through a list within an application GUI, such as a list of artists, album covers or photos (see pages 15-16, 62 and 75 of [user guide]). A swipe gesture was also used to navigate through a series of open webpages and in order to view portions of a webpage on the display (see pages 16 and 55 of [user guide]). [Jobs] does not remedy this deficiency of [user guide].
[19] Applicant’s Submissions, Page 5.
Consequently, I find that claim 1 is novel in light of the user guide. It follows that the same consideration applies to the other independent claims, 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:[20]
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]?
[20] 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:[21]
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.
[21] 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:[22]
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?
[22] 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:[23]
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.
[23] 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:[24]
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.
[24] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [688].
As outlined above, the specification provides an overview of the challenges in designing user interfaces for handheld portable devices. The specification then explains the downsides of using physical buttons or implementing a system which a user may perceived to be too complicated. Consequently, I am satisfied that the problem to be solved, stems from the desire to design a graphical user interface which allows a user to navigate it in a simple and intuitive manner.
Inventive Step in light of User Guide
As outlined above, there is nothing in the user guide which suggests allowing a user to perform a swipe action, to change the set of icons displayed on the user interface from a first set to a second set. Moreover, noting that the iPhone appears to be limited to sixteen applications which are all displayed on the user interface, there appears to be no reason for having separate sets of icons on different screens. To do so would, in my view, further complicate the user interface described in the user guide.
While I accept that it may be commonplace to sort applications into folders, or to have distinct sets of icons on different screens, this conclusion only stems from knowledge gleaned from the modern age. It is well accepted that common general knowledge must be established, as it existed, at the priority date.[25] By way of example, the Applicant points to the following extract obtained from a 2008 version of the iPhone user guide:[26]
[25] General Electric Company v Ausrail Technologies Pty Ltd [2015] APO 67 at [88]-[92].
[26] Applicant’s Submissions, Page 10.
To this end, in my opinion, modifying the user guide in a manner which leads to the claimed invention, can only be formed with knowledge which has been impermissibly tainted, with the benefit of hindsight.[27] However with that said, it is understandable that the ubiquitousness of the invention now, may create difficulty for an examiner to be satisfied that such a feature would be not be obvious.
[27] Metso Sweden AB v Outotec Pty Ltd [2019] APO 25 at [132]-[134].
Inventive Step in light of User Guide and Common General Knowledge
In the examination report, the examiner asserts that this feature is incorporated by Jobs, and common general knowledge as exemplified by Hotelling to show that it was ‘well-known for touchscreens to respond to swiping, and the use of swiping to scroll through icons’.[28] While, in my view, a single document is not, in and of itself, necessarily indicative of common general knowledge in the art,[29] the disclosure of Hotelling is still worth a brief consideration.
[28] Examination Report No. 3 dated 4 July 2019, Objection 8.
[29] See also Safran Electronics & Defense [2019] APO 17 where I was unsatisfied that individual documents were indicative of common general knowledge. Cf Global Blue S.A. v Visa U.S.A. Inc. [2018] APO 86; Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2018] APO 22; Commonwealth Scientific and Industrial Research Organisation v Technological Resources Pty. Limited [2018] APO 23.
Briefly, I note that Jobs displays operation of the iPhone user interface in the same manner suggested in the user guide and thus, does not suggest utilising a swipe action to change the set of icons displayed. At best, Jobs shows that a user may unlock the iPhone using a swipe action on the lock screen of the device,[30] or to scroll through a play list of songs.[31] Turning my mind to Hotelling, the examiner refers to the following passages:[32]
[0085] FIG. 18 illustrated an exemplary main menu GUI 260 of a multi-functional device. As shown, the GUI 260 includes icons/buttons 262 for launching each of the various device functionalities. In this particular example, the main menu page 260 includes a PDA button 262A, a cell phone button 262B, a music player button 262C, a game player button 262D, a video player button 262E, a GPS button 262F, a remote control button 262G, a camera button 262H and a handtop button 262I. The various buttons 262 are virtual buttons. When a button is pressed, the main page for the selected functionally (e.g., as shown in FIGS. 9-17) is brought into view on the display. To select another device, the user simply selects a soft home button 264 located in the GUI of each device to return to the main menu button 264 located in the GUI of each device to return to the main menu page 260, and thereafter selects the desired functionality in the main menu page 260.
[0086] The selection of alternative functionalities may also be accomplished by flipping (or scrolling) through the various GUIs until the desired GUI is found. For example, the different GUIs may be incrementally brought into view page after page (or frame after frame) when a next (flip) command signal is generated (e.g., slide show effect). The transition between pages may be widely varied. The transition may be from side to side, top to bottom or center to center. The transition may also include fading in and out, popping in and out, or enlarging and reducing. The command signal may be generated by a physical or virtual button or wheel. Using a button, each press may cause a new page to be displayed. Using a wheel, a predetermined amount of rotation may cause a new page to be displayed.
[0087] The command signal may also be generated in a variety of other ways. For example, the command signal may also be generated by gestures initiated on the touch screen. For example, sliding a finger (or stylus) across the display may cause a new page to be displayed. If slid to the right, the next page may be displayed. If slid to the left, the previous page may be displayed. The command signal may also be generated by 3D device gestures created when the entire hand-held device is moved spatially. By way of example, shaking the device may cause a new page to be displayed.
(emphasis in quote)
[30] Jobs, 15:32.
[31] Ibid 15:38.
[32] Hotelling, [0085]-[0087].
Figure 18 of Hotelling is shown below:[33]
[33] Ibid Figure 18.
Notably, pressing any of the icons shown in Figure 18 launches the GUI of the respective application. Once open, the user may flip from one GUI to another. The main page for each GUI is shown in Figures 9-17, shown below:[34]
[34] Ibid Figures 9-17.
On this basis, although Hotelling suggests that it is possible to swap between GUIs using a flip motion, this is in respect of the GUIs of opened applications rather than between two screens, each having a separate set of icons. Furthermore, there is nothing to suggest that it would be routine to allow a user to perform a swipe action, in order to change the set of icons displayed on the user interface from a first set to a second set. Consequently, based on the information available to me, I find that claim 1 is inventive in light of the user guide, alone or in combination with Jobs. The disclosure of Hotelling does not change this determination.[35] It follows that the same consideration applies to the other independent claims, and all of the dependent claims.
[35] See also British American Tobacco (Investments) Limited v Philip Morris Products S.A. [2019] APO 40; Metso Sweden AB v Outotec Pty Ltd [2019] APO 25.
Conclusion
On balance, I am satisfied that the invention as claimed is novel, and has an inventive step, in light of the user guide. 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,[36] I will accept the application.
[36] See, eg, Apple Inc. [2018] APO 54 later resolved in Apple Inc. [2019] APO 32. See also Apple Inc. [2018] APO 91; BASF Corporation [2019] APO 34.
Isaac Tan
Delegate of the Commissioner of Patents