Apple, Inc.
[2019] APO 32
•19 July 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple, Inc. [2019] APO 32
Patent Application: 2015298710
Title:Context-specific user interfaces
Patent Applicant: Apple, Inc.
Delegate: Isaac Tan
Decision Date: 19 July 2019
Hearing Date: 7 May 2019, in Melbourne VIC
Catchwords: PATENTS – section 45 – examiner objection hearing – computer implemented invention – manner of manufacture under section 18(1)(a) – request to be heard after being remitted to examination following an earlier decision – graphical user interface – definition of user interface objects – starting point depends on a construction of the relevant claims read in light of the specification as a whole and the relevant prior art – assessment of the substance should be approached with a holistic point of view – substance of the invention relates to how a user interface object is generated – the computational burden in producing a user interface object is optimised – state of the art suggests that the invention described in the specification is technical – application directed to proceed to acceptance
Representation: Thor North, Patent Attorney of FPA Patent Attorneys Pty Ltd
Anthony Selleck, Patent Attorney of FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015298710
Title:Context-specific user interfaces
Patent Applicant: Apple Inc.
Date of Decision: 19 July 2019
DECISION
The claimed invention is directed towards a manner of manufacture.
I direct that the application be accepted.
REASONS FOR DECISION
Background
Australian patent application 2015298710 (application) was filed on 7 June 2015 in the name of Apple Inc. (Applicant) and pursuant to section 29A of the Patents Act 1990 (the Act), is taken to be equivalent to PCT/US2015/034604 filed under the Patent Cooperation Treaty (PCT) with an international filing date of 7 June 2015. Thus, the application claims priority from one of three US priority documents of which, the earliest one was filed on 2 August 2014.
On 20 August 2018, Apple Inc. (earlier decision) was issued pursuant to section 45 of the Act, and provides an outline of the history of the application up to this date.[1] Due to a lack of evidence as to the state of the art at the priority date, the question as to whether the invention as described in the specification, is directed towards a manner of manufacture, was left undetermined. Specifically, the state of the art at the priority date, relating to producing user interface objects using animation sequences was left open. Therefore, I considered it appropriate that examination of the application continued and hence, I remitted the application back to examination.[2]
[1] Apple Inc. [2018] APO 54 at [1]-[5].
[2] Ibid [75]-[78].
Following the earlier decision, two examination reports were issued, respectively, on 24 September 2018 and 6 November 2018. However, for reasons that will discussed later, the examiner remained unsatisfied that the sole objection, that the claims was not directed towards patentable subject matter, had been overcome. On 20 November 2018, the Applicant requested to be heard and on 27 November 2018, was advised that the hearing related to the examiner’s objection was to be heard by way of written submissions due on 1 February 2019. The deadline for written submissions was later revised to the 1 March 2019. On 1 March 2019, the Applicant requested to be heard by way of an oral hearing in person, for the same reasons set out in their letter of 11 April 2018 filed in respect of the earlier hearing. A hearing was held on 7 May 2019 in Melbourne VIC, at the offices of FPA Patent Attorneys Pty Ltd.
Deferment of Decision
On 24 December 2018, the Applicant requested that the due date for filing submissions be extended until the earlier of 30 June 2019, or one month from the issuing of the Full Federal Court’s decision on an appeal (NSD 734/2018) to Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (Encompass).[3] The Applicant’s submissions are as follow:
We submit that an extension is in order so that both the Commissioner and the Applicant have the benefit of the Full Court’s decision. In particular, we submit that the hearing of the current application would benefit by having guidance from the Full Court about the correct approach in identifying the ‘substance’ of the invention when assessing manner of manufacture.
The ‘substance’ issue is of particular significance to the current application, having already been the subject of a decision of a Hearing Officer [the earlier decision] that returned the application to examination in order to determine the substance of the invention by reference to the ‘state of the art at the priority date’. To our knowledge, this is the first time that such an approach has been taken to the assessment of manner of manufacture by a Hearing Officer.
We submit that this novel course of action is reflective of the lack of clarity around the correct approach to determine the substance of an invention. In particular, we submit that there is a lack of clarity about whether, and the extent of which, prior art can be taken into account when identifying substance during a manner of manufacture assessment. For example, is the same prior art base taken into consideration when assessing manner of manufacture as is used when assessing inventive step?
We understand that the correct approach to substance identification is also an issue in [Encompass], and that the Full Federal Court’s decision should thus provide clarification. Having the benefit of that guidance, both parties can have confidence that their respective approaches are correct.
[3] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421; 130 IPR 387.
In Rational Intellectual Holdings Limited, a request was made that, ‘if despite the submissions the Commissioner was minded to maintain the [manner of manufacture] objection, the decision be deferred pending resolution of the appeal of the [Encompass] decision.[4] In this instance, the Delegate considered a number of authorities related to the deferral of proceedings,[5] and was unconvinced that a deferment was appropriate noting that ‘the applicant is not a party in the appeal. Moreover the subject matter lies in an unrelated field. Consequently the Federal Court appeal cannot be said to be of direct relevance to the present matter. The applicant’s request appears to be merely based on the contentions in the two cases relating to the same statutory basis of law.’[6]
[4] Rational Intellectual Holdings Limited [2018] APO 89 at [25].
[5] Ibid, [26] citing High Tech Auto Tools Pty Ltd v. Ferocem Pty Ltd [1993] APO 58; 29 IPR 144; Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126; 107 ALR 316; 77 IPR 608.
[6] Ibid [27].
In the present matter, on 14 January 2019, a Delegate of the Commissioner responded stating that he considered that the role that prior art plays in assessing the state of the art does not appear to be a play in Encompass. In this regard, the Delegate remained unsatisfied that an extension of essentially five months, or a vague deadline associated with a decision which may or may not be relevant, is appropriate.[7] However, the delegate noted that another matter, Rokt Pte Ltd v Commissioner of Patents (Rokt),[8] was handed down after the Encompass hearing. On this basis, the Delegate considered that an extension to file written submissions of one month from the original date of 1 February 2019 was appropriate. Consequently, the deadline for written submissions was revised to the 1 March 2019.
[7] See also ExxonMobile Chemical Patents Inc v The Associated Octel Company Limited [2002] APO 34; ABB ENGINEERING CONSTRUCTION PTY LTD v. A. GONINAN & CO LIMITED [1998] APO 46.
[8] Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988; 139 IPR 1.
In any event, at the hearing I informed to the Applicant that should the appeal to Encompass be decided and handed down in the period leading up to when I issue my decision on the present matter, I will allow the Applicant an opportunity to provide further submissions on the relevance of the Encompass decision.
The specification
An overview of the alleged invention, as outlined in the earlier decision, is provided as follows:[9]
[9] Apple Inc. [2018] APO 54 at [9]-[15].
The invention relates generally to computer user interfaces, and more specifically to context specific user interfaces for indicating time. As background, the specification states that:
“Users rely on portable multifunction devices for keeping time, among a variety of other operations including running software applications. It is desirable to allow the user to access information through a single user interface while keeping the interface simple and intuitive to use. Further, a user may want to access different types of information, such as various aspects related to keeping time, or different application data points, in different contexts. It is therefore also desirable to allow the user to customize the user interface and the types of information provided through the user interface.”
However, existing techniques for managing context-specific user interfaces for indicating time using electronic devices are generally cumbersome and inefficient, requiring more time for a user to perform a specific action, and resulting in wasting user time and device energy. In order to address this problem, the specification is said to provide portable electronic devices with faster, more efficient methods and interfaces for managing context-specific user interfaces.
By way of example, the lengthy specification describes a number of different embodiments in which this context specific user interface can be presented. In one embodiment, the interface screen includes “a first affordance representing a simulation of a first region of the Earth as illuminated by the Sun at a current time; and a second affordance indicating the current time; receiving a user input; and in response to receiving the user input: rotating the simulation of the Earth to display a second region of the Earth as illuminated by the Sun at the current time.” This is shown in Figure 8, which has been reproduced below:
The specification describes what figure 8 illustrates as follows: “[d]evice 800 receives user input representing a movement of the rotatable input mechanism (e.g., movement 830), and in response, device 800 updates first affordance 822 to represent a simulation of the first region of the Earth as illuminated by the Sun at a non-current time. This is shown on screen 840 with first affordance 842 and second affordance 844. Comparing screens 820 and 840, the simulation of the Earth has been updated (cf. 822 and 842) from indicating a region of the Earth at the current time (10:09, indicated by 824) to indicating the same region of the Earth at a non-current time (12:09, indicated by 844). This feature provides the user access to further geographic and time-related information by allowing the user to view the Earth, as illuminated by the Sun, at various times throughout the day.”
However, figure 8 is merely just one embodiment of a multitude of options for customising user interfaces. It is also important that these interfaces are presented in a manner that is readily comprehensible and intuitive to the user. Additionally, these user interfaces are usable with a wide variety of electronic devices such as portable communication devices that also contains other functions, such as PDA and/or music player functions. Some examples provided includes, but not limited to, the iPhone®, iPod Touch®, and iPad® devices from Apple Inc. of Cupertino, California.
Relevant to the invention as claimed, is the embodiment shown by Figure 13A and 13B, which are reproduced below.
Figure 13A and 13B are illustrated using an animation of a butterfly. According to the specification:
“As shown in FIG. 13A, device 1300 displays user interface screen 1302 in response to detecting user input 1304 at 10:09. Screen 1302 includes user interface object 1306, which indicates the time, as well as user interface object 1308, which depicts a butterfly. After displaying screen 1302, device 1300 animates butterfly 1308 by sequentially displaying three animated sequences that are all different from each other. The first animated sequence is shown by butterfly 1308, which depicts the butterfly opening its wings. Next, screen 1310 displays the second animated sequence, which depicts butterfly 1314 flying from right to left on the display. Note that screen 1310 also displays user interface object 1312, which indicates the time. Finally, screen 1320 displays the third animated sequence, which depicts butterfly 1324 closing its wings. Screen 1320 again displays user interface object 1322 indicating the time.
Later in the day, as shown in FIG. 13B, device 1330 detects a second user input 1332. In response, device 1300 accesses data representing the previously displayed animated sequence (i.e., the sequence shown by butterfly 1314). Device 1300 displays screen 1330. Screen 1330 includes user interface object 1334, which indicates the time in now 2:09, and user interface object 1336, which depicts a butterfly.”
It is worth noting that butterfly 1308 and butterfly 1336 is animated using the same sequence. Similarly, butterfly 1324 and butterfly 1354 are also animated using the same sequence. In this respect, by only replacing the animation for butterfly 1314 and butterfly 1344, two different animation sequences are generated without having to create six distinctly unique animation sequences. The specification also states that this animation appears more realistic and/or engaging to the user as this variation imparts a more random, lifelike quality to the animated user interface objection.
The specification goes on to describe that variety can be created in the animated sequence generated by applying variations in the user interface object. Specifically:
“For example, a user interface object may be reflected (e.g., about a horizontal and/or vertical axis), flipped, and/or rotated to create a new user interface object. This is a source of variety for the displayed user interface object and the animated sequences. For example, by rotating a single object horizontally, vertically, and horizontally and vertically creates four new objects, which when coupled with an animation that directs the movement of the object creates even more variations. These aspects add combinatorial possibilities which greatly increase the number of animations for a single object, thus reducing the number of pre-programmed animated sequences. It also helps animate objects with fewer intrinsic features and/or movements, such as a jellyfish.”
This specific order of generating an animation sequence is further illustrated in Figure 26 reproduced below:
Examiner Objections
Following the earlier decision, the examiner raised the following documents as evidence of the state of the art at the priority date, relating to producing user interface objects using animation sequences.
·US 2007/0239754 A1 (Schnitman) 11 October 2007 (D1)
·WO 2007/01881 A2 (Walker Digital, LLC) 15 February 2007 (D2)
·US 7,203,380 B2 (Chiu et al.) 10 April 2007 (D3)
·US 2003/0027621 A1 (Libby et al.) 6 February 2003 (D4)
·US 2008/0127268 A1 (Bergeron et al.) 29 May 2008 (D5)
The examiner objection from the report of 24 September 2018 states:
Noting the decision issued with regard to this application on 20 August 2018, objection 3 from the previous report is maintained. Claims 1 to 14 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. From reading your application as a whole the substance of the alleged invention is a presentation of specific aesthetic content.
It has been argued, both in examination responses across various applications and in the hearing on this application that the substance of the invention lies in the reuse of animation sequences in order to generate varied presentations while using less memory to store the animations used as compared to individually storing each full presentation (and thus storing duplicated content multiple times).
As discussed in the previous reports I do not consider that the reuse of animated sequences (and the consequential saving of memory) is the substance of the invention because it is known to generate multiple presentations as required from a set of animated sequences. Documents D1 through D5 are a non-exhaustive list of documents that illustrate such reuse occurring in the process of generating various animated presentations from component animation sequences.
I further note the conclusion by the delegate that the substance of the invention cannot lie in the more efficient use of memory (flowing from the reuse discussed above) because the claims do not require the storage of only the four animation sequences used in the claim (see [58] of the [earlier] decision).
The Applicant disagrees, and submits that they ‘do not believe that the examiner has identified a single instance of animated sequences being reused and/or reordered to produce user interface objects. In other words, while the cited documents may describe the creation of various kinds of presentations by rearranging pre-stored elements (such as text, images, sounds or video sequences), the elements of those presentations are not user interface objects.’ The Applicant addressed each of the documents cited by the examiner as follows:
D1 (US2007/0239754) describes the creation of a ‘custom mix’ composed of audio and video segments played seamlessly in a particular order. Individual files of audio and video material are not user interface objects.
D2 (WO2007/018881) is concerned with mass producing distinct video (or other) clips that vary from copy to copy within a production run. Distinctness is provided by combining pre-encoded common elements with varying dynamic elements in various ways. The elements of D2’s clips are not user interface objects.
D3 (US 7,203,380) describes a video production system in which a video collage is created from an existing video. The collage is created with the assistance of a collage template into which individual segments of the existing video (such as frames) can be inserted. D3 is concerned with the processing and creation of video files and not with user interface objects.
D4 (US2003/0027621) describes the making and broadcasting of an animated presentation to depict the outcome of a wagering event, such as the drawing of lottery balls or an animated horse race. Although the document does discuss user interfaces (see paragraph [0057]), it is in the context of specifying and/or selecting certain parameters to composite or blend the elements of the animated lottery result. The animated lottery result itself is a video presentation rather than an animation of a user interface object.
D5 [US 2008/0127268] is concerned with the creation of custom content compilations from input digital videos. The compilations are created by locating and tagging particular segments of the input video which are then played back in a particular order. As with D1, the elements of D5’s compilations are segments of video or audio content rather than user interface objects.
The examiner remained unsatisfied and on 6 November 2018, maintained the objection from the previous report. The relevant parts of the objection states:
Further, in response to the remitted consideration of whether the reuse of animated sequences, and thus the benefit of reduced storage requirements, was known in the art, the response argues that the art raised in the third report is inapplicable because the question is limited to a context of 'user interface objects'. The response does not appear to consider that the designation of the resulting animations as 'user interface objects' requires any functionality beyond that which is claimed and on that basis the following observations are applicable:
·The animations are not interactive, that is to say that the objects do not receive any input that prompts the device to action.
·As an output mechanism the animations do not provide any specific information so as to be communicating useful information from the device.
·The display of the animation is not the result of any specific input such that there is a useful non-arbitrary link between the action of the user and the response of the device.
·Although the animation is not the only object displayed on the interface there is no inter-relationship between the different displayed objects such that they represent a single, combined, interface.
A 'user interface object' in the sense claimed includes as little as an arbitrary presentation on a display. In all the documents cited above, the video files/presentations are produced for eventual display and therefore are relevant to the creation of 'user interface objects'.
Applicable Law
The present application was filed on 7 June 2015. As a consequence, substantive amendments to the Patents Act 1990 (the Act) bought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 applies to the present application. Therefore, the standard of proof that applies in the present case is the balance of probabilities according to section 49(1) of the Act. I must accept the application if I am 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.
Section 18 of the Act provides for 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; and
(c) is useful; and
(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in title to the invention.Section 6 of the Statute of Monopolies provides as follows:[10]
Provided also and be it declared and enacted that any declaration before mentioned shall not extend to any letters patent and grants of privilege, for the term of 14 years or under hereafter to be made of the sole working or making of any manner of new manufacture within this realm to the true and first inventor and inventors of such manufactures which others, at the time of making such letters or grant, shall not use, so as also they be not contrary to the law, nor mischievous to the state, by raising prices of commodities at home or hurt of trade or generally inconvenient.
[10] Statute of Monopolies 1623, 21 Jac 1 c 3.
Case Law on Manner of Manufacture
The principles relating to Manner of Manufacture of computer implemented inventions has been discussed in the earlier decision,[11] and in a number of recent decisions.[12] Relevantly, these principles rely on D’Arcy v Myriad Genetics Inc (Myriad),[13] Commissioner of Patents v RPL Central Pty Ltd (RPL)[14] and Research Affiliates LLC v Commissioner of Patents (Research Affiliates)[15] and I see no need to repeat these principles here.[16]
[11] Apple Inc. [2018] APO 54 at [23]-[31].
[12] See, eg., Bellator Pty Ltd [2018] APO 93 at [21]-[29]; Patent Investment & Licensing Company [2018] APO 1 at [12]-[22]; Joy Global Surface Mining Inc [2018] APO 68 at [27]-[34]; Repipe Pty Ltd [2018] APO 42 at [9]-[16]; Google LLC [2018] APO 13 at [12]-[26]; Aristocrat Technologies Australia Pty Limited [2018] APO 45 at [14]-[22]; Amplero, Inc. [2018] APO 59 at [20]-[28].
[13] D’Arcy v Myriad Genetics Inc [2015] HCA 35.
[14] Commissioner of Patents v RPL Central PtyLtd [2015] FCAFC 177.
[15] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150.
[16] See, eg, Aristocrat Technologies Australia Pty Limited [2016] APO 49 at [35] where Deputy Commissioner Barker set out a range of matters to be considered, when determining whether a claim is directed towards patentable subject matter. See also National Research Development Corporation v Commissioner of Patents [1959] HCA 67; 102 CLR 252.
Although the Act provides no explicit restriction defining what falls strictly within excluded subject matter,[17] in Watson v Commissioner of Patents, Rares ACJ noted that policy reasons may play a part in making this determination.[18] However, his honour cautioned against according patentability to inventions ‘that could have a chilling effect on activities beyond those formally the subject of the exclusive rights granted to a patentee’.[19]
[17] Cf Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application [2006] EWCA Civ 1371.
[18] Watson v Commissioner of Patents [2019] FCA 1015 at [17]. See also Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011 at [345]-[348].
[19] Watson v Commissioner of Patents [2019] FCA 1015 at [17].
On the question of the starting point for assessing manner of manufacture, in Sequenom, Inc. v Ariosa Diagnostics, Inc, Beach J determined that non-invasive prenatal genetic testing based on maternal blood sampling was patent eligible subject matter, by first identifying what the substance of the invention is, in each relevant claim:[20]
Myriad confirms that the starting point for the resolution of the “manner of manufacture” issue is the identification of what in substance each relevant claim is for. And relevant to this inquiry is the definition of the invention, which in turn depends upon the construction of the relevant claims read in light of the specification as a whole and the relevant prior art.
[20] Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011 at [465] based on Beach J discussion in Meat & Livestock Australia Limited v Cargill, Inc (2018) 354 ALR 95; (2018) 129 IPR 278; [2018] FCA 51. Cf Ariosa Diagnostics v Sequenom 788 F.3d 1371 (2015).
In Encompass, Perram J considered the question of what constitutes an improvement of a computer and noted:[21]
Where a method utilising a computer is involved it may be more useful to ask whether the invention involves the mere implementation of an abstract idea in a computer (not patentable) or whether it involves the implementation of an abstract idea that creates an improvement in the computer (patentable): Research Affiliates at 400 [104] citing Thomas J in Alice Corporation Pty Ltd v CLS Bank International 134 S Ct. 2347 (2014).
[21] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 at [191].
Perram J goes on to explain that:[22]
In some senses, any form of software residing in a computer which performs a task is an improvement in the computer because without it the computer could not perform the task. Plainly, that is not what was intended. Certainly, ‘improvement’ seems designed to capture the computer performing some activity which it was not possible to perform prior to the method. Thus in IBM the method for drawing the curves without using floating point arithmetic opened the way for the computer to be used more efficiently than had been previously possible and, I suppose, the method for using Chinese characters in CCOM might arguably be seen the same way (although that seems less clear to me).
(emphasis added)
[22] Ibid [194] citing International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; 33 FCR 218; CCOM Pty Limited v Jiejing Pty Limited [1994] FCA 1168; (1994) 51 FCR 260.
On 12 December 2018, in Rokt Pte Ltd v Commissioner of Patents, Robertson J held that a digital advertising system and method was considered to be a manner of manufacture.[23] In coming to this determination, Robertson J agreed with the parties that the matter had to be addressed as a matter of substance, however:[24]
I also accept that there is no formula to be mechanically applied, and that it is necessary to understand where the inventiveness or ingenuity is said to lie. A mere business innovation is insufficient and a business method or scheme is not, per se, a proper subject for letters patent. Nor are abstract ideas. The issue is whether there is a technological innovation. Where, as here, the claimed invention is to a computerised business method, the invention must lie in the computerisation and it is not enough simply to put a business method into a computer. The search is for an improvement in computer technology.
[23] Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988; 139 IPR 1.
[24] Ibid [201].
Robertson J noted that ‘[a] focus on elements known [at the priority date] in isolation tends to lose sight of the combination of techniques or components in an innovative and previously unknown way.’[25] His Honour was satisfied that, based on expert evidence,[26] the invention in Rokt addressed a business problem, which was translated into a technical problem of how to utilise computer technology to address the business problem[27] and therefore, introduced a method foreign to the use of computers at the priority date.[28]
[25] Ibid [202].
[26] Ibid [203]-[204]; [214]-[215].
[27] Ibid [206]-[207].
[28] Ibid [205]-[213].
I do not disagree with these principles, noting that they are not dissimilar to what I previously stated:[29]
[71] The present case provides an example of why it is crucial, when assessing the substance of the invention, that one should not apply too narrow a view. This is particularly important where the general tasks performed by the computer system may be one external to the computer, or if it solves a technical problem related to the running of computers generally.
[74] I agree. That is, one should not immediately conclude that an application is not for a manner of manufacture just because it may fall, generally, within what typically constitutes excluded subject matter. Rather, an assessment of where the substance of the invention may lie should be approached, with a holistic point of view.
[29] Apple Inc. [2018] APO 54 at [71]; [74].
The claims
The specification, as proposed to be amended on 14 February 2018, ends with fourteen (14) claims of which claims 1, 12, 13 and 14 are independent claims. Claim 1 provides as follows:
A method of animating user interface objects on a user interface screen, the method comprising:
at an electronic device with a touch-sensitive display:
detecting a user input, wherein the user input is detected at a first time, and in response to detecting the user input:
displaying a user interface screen, the user interface screen including:
a first user interface object indicating the first time; and
a second user interface object; and
animating the second user interface object, by sequentially displaying a first animated sequence, a second animated sequence after the first animated sequence, and a third animated sequence after the second animated sequence, wherein the first animated sequence, the second animated sequence, and the third animated sequence are different;
after animating the second user interface object, detecting a second user input, wherein the second user input is detected at a second time, wherein the second time is after the first time, and in response to detecting the second user input:
accessing data representing the previously displayed second animated sequence;
selecting a fourth animated sequence, wherein the fourth animated sequence is different from the first animated sequence and the second animated sequence;
displaying a second user interface screen, the second user interface screen including:
the first user interface object, wherein the first user interface object is updated to indicate the second time; and
a third user interface object related to the second user interface object; and
animating the third user interface object by sequentially displaying the first animated sequence, the fourth animated sequence after the first animated sequence, and the third animated sequence after the fourth animated sequence.
Claims 12 defines a non-transitory computer-readable storage medium comprising one or more programs for execution by one or more processors of a first device with a touch-sensitive display, the one or more programs including instructions which, when executed by the one or more processors, cause the first device to essentially carry out the method defined by claim 1. Claims 13 and 14 are directed towards a device, which broadly performs the method set out in claim 1.
Submissions
The Applicant’s submissions can be separated into two limbs. First, that my approach taken on construction in the earlier decision is incorrect,[30] and second, on the reasons for returning the application to examination.[31] Furthermore, the Applicant disagrees with the examiner’s characterisation, that the substance of the invention ‘is a presentation of specific aesthetic content’ and submits that instead, the characterisation set out in the earlier decision should be adopted.[32]
[30] Ibid [35]; [64].
[31] Ibid [64]-[70].
[32] Ibid [42]-[44].
Having already decided the substance of the invention in the earlier decision,[33] this determination still stands and does not need to be revisited. However, noting that the Applicant has not had any input in relation to issues of construction, in my opinion, the principles of procedural fairness requires that ‘in the absence of a clear, contrary legislative intention, administrative decision-makers must accord procedural fairness to those affected by their decisions.’[34]
Construction
[33] Ibid [42]-[44].
[34] Minister for Immigration and Border Protection v WZARH [2015] HCA 40; 256 CLR 326 at [30].
My approach to claim construction in the earlier decision, is set out as follow: [35]
[35] While there are no issues or matters of difficulty in the construction of the claims, it is worth noting, for reasons that will become apparent later, that the claims are not limited such that only four animated sequences are present. Rather, it is possible for there to be six animated sequences present in storage, from which only four animated sequences are selected to generate the second user interface object and the third user interface object.
[64] As outlined above, I have construed the claims to be sufficiently broad such that there is no restriction as to how many animation sequences are stored. In this respect, it is clear that any memory saving benefits will only exist if only four animation sequences are present. However as I consider this is not what the applicant envisages as the nature of the invention, I will therefore consider the form of the invention in which only four animation sequences are stored.
(my emphasis added)
[35] Apple Inc. [2018] APO 54 at [35]; [64].
The rules of claim construction can be said to be settled law and largely remains uncontested.[36] In particular, the Applicant drew my attention to one principle of claim construction, that is, to reject the absurd which, as stated by Lord Russell in EMI v Lissen is ‘if possible, a specification should be construed so as not to lead to a foolish result or one which the patentee could not have contemplated.’[37] Similarly, as noted in Martin v Scribal Pty Ltd, ‘it is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work - this is an application of the old doctrine ut res magis valeat quam pereat’.[38]
[36] See, eg, Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90 at [67]; 222 ALR 155; 65 IPR 86 at 99-100. See also Foxtel Management Pty Ltd v The Advanced Technology Group Pty Ltd [2018] APO 83 at [28]-[35]. Metso Sweden AB v Outotec Pty Ltd [2019] APO 25 at [40]-[48].
[37] EMI v Lissen 56 RPC 23.
[38] Martin v Scribal Pty Ltd [1954] HCA 48; (1954) 92 CLR 17 at [7]; See also Leonardis, Nicola v Sartas No 1 Pty Ltd & Anor [1996] FCA 449 at [12].
The Applicant submits that while the claims are not limited such that only four animated sequences are present, to adopt an interpretation where, for example, six animated sequences are stored when only four are used would be inconsistent with the specification as a whole. By way of example, the Applicant refers to independent claim 12 which sets out that the second user interface object and the third user interface object, is done so in a very specific manner.
Specifically, the second user interface object is produced by sequentially displaying a first animation sequence, follow by a second animation sequence, and then a third animation sequence. The third user interface object is then produced, sequentially, by displaying the first animation sequence, a fourth animation sequence, and then the third animation sequence. I agree with the Applicant that the claim defines a very specific way of sequentially displaying the second and third user interface object, such that there is no ambiguity as to the order upon which specific animation sequences are used. Moreover, while the claim only provides an example where two user interface objects are produced, this is merely an example of how specific animation sequences may be used and re-used, and the idea of re-using animation sequences is scalable.
In this regard, it matters not whether four, six, or a dozen animation sequences are stored in memory. Put another way, it appears clear in my view, that the applicant could not have contemplated the claims to be directed towards, for example, a scenario where the first animation sequence and the third animation sequence, are stored twice.[39] Moreover, noting the specific manner upon which the animation sequences are referred to and accessed, storing this additional data in memory is redundant. Briefly, while the Applicant also directed me to various passages in the description and figures, I note that these references are consistent with my determination above.[40]
[39] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 177 FCR 151; 81 IPR 228 at [60].
[40] Applicant Submissions, [52]-[59]. See also Specification, [380]-[381]; [688]; Figure 34.
I am satisfied with the Applicant’s explanation and agree that any memory saving benefits would still exist, regardless of how many animation sequences are stored. In the earlier decision, I set out the substance of the invention to be:[41]
[42] At the hearing, the Applicant disagreed with the examiner’s characterisation that the substance of the invention relates to a presentation of specific aesthetic content, and that the present invention solves the problem of providing users with something engaging to look at. In essence, the examiner’s position appears to be that the claimed invention relates to nothing more than the mere display of intellectual information.
[43] As set out in the claims, the invention is not restricted to what is specifically being displayed. Rather, it concerns the manner in which the object being displayed is generated. Upon detection of a second user input at a second time, the interface displays the first user interface object and a third user interface object. The first user interface object is updated to provide an indication of a time, which may be at a different time to that displayed upon detection of the first user input. The third user interface object utilises the first and third animation sequence and a fourth animation sequence in order to create an animation that is different to the second user interface object. This is illustrated in figures 13A, 13B and 26 which I have reproduced above.
[44] I agree with the Applicant that this is a fair characterisation of the substance of the invention. The substance of the claimed invention is directed towards an interface which, upon detection of a user input, is designed to generate and display a second user interface object and a third user interface object in the specific manner described in the previous paragraph.
[41] Apple Inc. [2018] APO 54 at [42]-[44].
Noting that the invention relates to how rather than what is being produced, I am inclined to agree with the Applicant, and adopt my earlier view that the substance of the invention is as set out in the earlier decision.[42]
Remitting to examination
[42] Ibid.
Before determining whether the reasons I remitted the application back to examination has been resolved,[43] it is important to first consider what is defined by a ‘user interface object’. The Applicant drew my attention to example depicted in Figure 12, which I have reproduced below:[44]
[361] FIG. 12 shows exemplary context-specific user interfaces that may be operated on device 1200. Device 1200 may be device 100, 300, or 500 in some embodiments. In some embodiments, the electronic device has a touch-sensitive display (e.g., touchscreen 504).
[362] A user may wish to view a certain background image on the user interface screen while retaining as much of the original image as possible. Therefore, it may be advantageous to provide a context-specific user interface that displays the time and/or date not simply as interface objects displayed over the image, but rather interface objects that appear to arise from the image itself, thereby maximizing the user’s view of the image while still providing visible indications of the time and date. This may be particularly true if the user interface is displayed on a reduced-size display.
[363] As shown in FIG. 12, device 1200 is displaying user interface screen 1202, which includes background 1204. Background 1204 is based on an image of a beach. In some embodiments, the image may be a photo.
[364] As used here, consistent with its accepted meaning in the art, the phrase “background” refers to the background of a user interface screen that is visually distinguishable from text and user interface objects also displayed in the user interface screen. Basing a background on an image simply means displaying the image as a background of a displayed screen. In some cases, the image and the background may be identical. In other cases, displaying the image as a background may involve modifying one or more aspects of the image to fit on the display, such as image size, image cropping, image resolution, and so forth.
[365] Screen 1202 also includes user interface objects 1206 and 1208. 1206 indicates a date (the 23rd), whereas 1208 indicates a time of a day (10:09). In some embodiments, the device may indicate the current data and/or the current time of day.
[43] Ibid [64]-[70].
[44] Specification [0361]-[0365]; Figure 12.
In my view, user interface objects are different to, and distinct from, the background being displayed on the user interface screen. That is, a user interface object must be distinguishable from the background, and any other user interface objects which may also be present on the same screen. On this basis, it is possible for a user interface screen to contain a plurality of user interface objects, all operating independently of each other. Put another way, a user interface object forms one element of a graphical user interface. Turning now to the prior art documents, in the earlier decision I stated that:[45]
[67] If one would commonly rearrange and reuse animation sequences to produce user interface objects, then clearly the applicant’s contribution lies in the scheme for ordering the animation sequences, which would not lie within the established principles of what constitutes a patentable invention.
[69] However if the opposite was found, then clearly the Applicant’s contribution lies in the concept or [sic] re-arranging animation sequences, which leads to improvement in the operation of the computer system itself. That is, in performing the steps of the claimed invention, the computational burden in producing a user interface object is optimised. It follows that the applicant’s contribution would be technical in nature, and would lie within established principles of what would constitute a patentable invention.
[45] Apple Inc. [2018] APO 54 at [67]; [69].
From the five prior art documents raised by the examiner, in my view, each of D1, D2, D3 and D5 are not directed towards user interface objects. Rather, these documents appear to show that it is possible to rearrange media content, in the processing of audio-visual productions. However, this is a manual process, requiring a user to consciously select how the content is rearranged, and in which order. In my opinion, it is common practice within the film and music industry, to use editing software to clean up and compile movies, sync audio, or to produce music clips. Moreover, it should be noted that this process, is directed towards and is intended for producing a production, in a manner, such that its final form may later be replayed on another device. It could also be said that production of a film or sound clip, is not apposite in the present context. I am unable to identify anything within these documents which remotely suggests that a production should be split into multiple component, such that these individual components are later recombined or spliced together on another device, to re-create the intended production. It logically follows that none of the benefits I identified in the earlier decision, would be achieved by rearranging media content in this manner,[46] or would be achieved by simply re-playing media content which has been already been rearranged. The Applicant and I share the same view that while these documents do describe various ways which audio visual content may be produced out of individual segments, this is not part of the state of the art when considering an invention relating to re-using animation sequences to produce user interface objects.[47]
[46] Ibid [54]-[58].
[47] Applicant Submissions, [18].
In my opinion, D4 is the more relevant document which could suggests, possibly, that it was known at the priority date to rearrange animation sequences to produce user interface objects. I have some reservations whether this single document is indicative of the state of the art. Nevertheless, D4 refers to a method of ‘graphically portraying a lottery result in animation’,[48] by ‘selecting one or more game events corresponding to [a] randomly selected lottery result, retrieving selected animation sequences according to the selected game events, and compiling the retrieved animation sequences into an animated lottery game video.’[49] Relevantly, D4 ‘includes a library of virtual images, animation elements and/or recorded video images’[50] which corresponds to all possible outcomes for a game. Once a winning combination is selected, ‘selected virtual images and animation elements corresponding to the winning combination and associated game events are retrieved and composed into animation sequences corresponding to the game event.’[51] Alternatively, the same concept may also be applied to other games, such as a horse race,[52] or other games such as Bingo, Battleship or Monopoly.[53] D4 also provides a user interface, which allows a user to specify the manner upon which the timing of video and animation sequences may be spliced or blended.[54] This may be integrated with an announcement of, for example, a lottery result by a real person in one or more pre-recorded video segments.[55] The system also allows the user to configure special effects, or incorporate other known animation and compositing techniques,[56] to ultimately arrive at an animation sequence corresponding to the outcome of a selected game event.
[48] D4, [0010].
[49] Ibid [0018].
[50] Ibid [0043].
[51] Ibid.
[52] Ibid [0047].
[53] Ibid [0094].
[54] Ibid [0057].
[55] Ibid.
[56] Ibid [0058].
There is nothing in D4 which indicates or suggest, that specific animation sequences are re-used, such that at least two user interface objects could be produced without the need to store every animation sequence individually.
I have no reason to believe that the information in D4 was part of the common general knowledge, and I have no evidence which establishes that the re-arrangement of animation sequences, are commonly performed using a bookend approach as claimed,[57] which is responsible for a number of benefits[58] and a nuance easily lost if ignored.[59] It is not as if the user interface objects are merely displayed in a generic manner,[60] or can be fairly characterised as a business or commercial decision[61] of selecting between multiple approaches of producing user interface objects where no technical differences exists with either approach.[62]
[57] Apple Inc. [2018] APO 54 at [53].
[58] Ibid [54]-[58]. Cf HRB Innovations, Inc. [2018] APO 63 upheld in HRB Innovations, Inc. [2019] APO 30.
[59] Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011 at [465].
[60] Trading Technologies International, Inc [2017] APO 13; McCormick & Company, Incorporated [2017] APO 62; 133 IPR 324.
[61] Global Blue S.A. v Visa U.S.A. Inc. [2018] APO 86; Amplero, Inc. [2018] APO 59.
[62] AirService Digital Pty Ltd [2018] APO 39; Konami Gaming, Inc. [2016] APO 46; Aristocrat Technologies Australia Pty Limited [2018] APO 45.
It follows that the contribution to the art is a method of reusing animation sequences. This method enables a technical advantage to be achieved. Consequently, based on the information available to me, it follows that I should find that the claims are directed towards patentable subject matter.[63]
[63] See, eg, Bio-Rad Laboratories, Inc. [2019] APO 26; Bio-Rad Laboratories, Inc. [2018] APO 24; Bio-Rad Laboratories, Inc. [2017] APO 38.
Conclusion
On balance, I am satisfied that the Applicant’s contribution is technical in nature and would therefore lie within established principles of what would constitute a patentable invention. I am satisfied that no other ground of objection applies. It is therefore open for me to direct that the application be accepted.[64] As I have no concerns or issues that require further examination,[65] I will therefore direct the application to proceed to acceptance.
[64] Inguran, LLC [2015] APO 64; Apple Inc. [2018] APO 72; Safran Electronics & Defense [2019] APO 17; ABB Schweiz AG [2019] APO 27.
[65] Cf Apple Inc. [2018] APO 91 at [58]–[62] where I remitted the application back to examination as I considered that the examiner had not actively engaged with the issued addressed in the decision. See also Micro Motion, Inc. [2017] APO 39; eBay Inc. [2019] APO 10 at [37]–[43].
Isaac Tan
Delegate of the Commissioner of Patents
4
48
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