Apple Inc.
[2018] APO 91
•17 December 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2018] APO 91
Patent Application: 2016201444
Title:Unified communication application
Patent Applicant: Apple Inc.
Delegate: Isaac Tan
Decision Date: 17 December 2018
Hearing Date: Written Submissions filed 21 September 2018
Catchwords: PATENTS – section 45 – examiner objection hearing – computer implemented invention – novelty and inventive step under section 18(1)(b) – amendments considered under section 102 – evidence submitted – graphical user interface – invention allows communication between different instant messaging services and aggregation of the communication history – claims are novel – unable to be satisfied that on balance, the claims are inventive – application to be remitted back to examination – applicant is provided a period of six (6) months to attain acceptance pursuant to sub-regulation 13.4(3)
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: 17 December 2018
DECISION
All of the claims are novel. None of the claims are inventive.
Under sub-regulation 13.4(3), the applicant has six (6) months from the date of this decision to attain acceptance of the application.
REASONS FOR DECISION
Background
Apple Inc. (Applicant) filed patent application 2016201444 (application) on 4 March 2016 as a divisional of patent application 2013214758 (‘758 application). The ‘758 application was filed on 4 February 2013 as international application PCT/US2013/024653 filed under the Patent Cooperation Treaty, and claims a priority date of 5 February 2012.
The Applicant requested examination of the application on 4 March 2016, and has been subjected to four (4) examination reports respectively dated 9 March 2017, 1 August 2017, 18 December 2017 and 16 February 2018. On 6 March 2018, three days before the final date of acceptance, the Applicant requested to be heard.
In response to the request to be heard, the Applicant was invited to provide written submissions. The Applicant’s written submissions were filed on 21 September 2018, and are accompanied with proposed amendments to the description and claims of the specification.
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 applications.
Evidence and Submissions
The written submissions filed on 21 September 2018 were accompanied with a declaration by Professor Scott R. Klemmer, declared and dated 10 September 2018 (Klemmer).
The examiner objections
According to Examination Report number 4, which was issued on 16 February 2018 (examination report), the examiner raised an objection under the heading ‘Novelty and inventive step’. The objection is based on the following two prior art document:
·United States Patent Application 2004/0054737 A1 entitled ‘Tracking Email and Instant Messaging (IM) Thread History’, in the name of W. Todd Daniell, with a publication date of 18 March 2004 (Daniell).
·United States Patent 7783023 B2 entitled ‘Systems and Methods for Providing Unified Collaboration Systems with Conditional Communication Handling’, with a publication date of 24 August 2010. The patent lists Igor Balk and David Michael Choupak as inventors, and Unison Technologies, Inc. as the assignee (Unison).
In essence, the examiner report states that at least the independent claims are not novel and lacks an inventive step in light of Unison, and that the independent claims lacks an inventive step in light of Daniell. Moreover, the examiner considered that the integers incorporated by the dependent claims are well known, and thus they lack an inventive step in light of Unison or Daniell individually.
The amendments
Section 102 of the Act deals with what amendments are not allowable, and provides as follows:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).I have reviewed the proposed amendments of 21 September 2018, and am satisfied that the amendments are allowable.[1]
[1] See Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814; 87 IPR 516 at [38]-[40] for a summary of the relevant principles which apply to section 102.
Specification
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:[2]
[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.
[2] Specification, [0002]-[0005].
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.[3] 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’,[4] and figure 4 is ‘a flow diagram of a process for identifying a set of candidate account addresses for a set of candidate recipients.’[5]
[3] Ibid [0005c]-[0005e].
[4] Ibid [0012].
[5] Ibid [0014].
The specification provides the following explanation of the flow diagram of figure 2:[6]
[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.
[6] Ibid [0045]; at [0047]-[0049].
Figure 4 operates in a similar manner to the flow diagram of figure 2. However, where item 410 results in no matches:[7]
[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.
[7] Ibid [0067]-[0068].
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.[8]
[8] Ibid [0080].
One example of how the communication session may be presented to a user is illustrated in figure 9.
As shown in figure 9:[9]
[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.
[9] Ibid [0092]-[0095].
The claims
The specification as filed ends with 30 claims. On 29 January 2018, the Applicant proposed amendments which requested that all of the claims presently on file be substituted with a new claim set consisting of 35 claims. Claims 36 and 37 are added in the proposed amendments of 21 September 2018. Claims 1, 18, 28, 36 and 37 are independent claims, and have been reproduced below:
Claim 1
A method comprising:
receiving, by a computer that includes a display, a request for a communication history between a first user and a 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.
Claim 18
A computer readable storage medium encoded with program instructions that, when executed, cause a processor in a computing device including a display to execute a method, the method comprising:
receiving a request for a communication history between a first user and a 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 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.
Claim 28
An electronic device, comprising:
a display;
a processor;
a memory device coupled to the processor, the memory device including instructions to be executed for facilitating communication, wherein the instructions, when executed by the processor, cause the processor to:
receive a request for a communication history between a first user and a 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, obtain 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;
generate 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, display, on the display:
at least a portion of the combined communication history including the aggregated and interleaved messages.
Claim 36
A method comprising:
receiving, by a computer that includes a display, a request for a communication history between a first user and a second user, the communication history including communications between the first user and a 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 servers to uniquely identify the first user to the first communication service and the second user is identified with a second user identifier that servers 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 displaying at least a subset of the aggregated and interleaved messages.
Claim 37
A method comprising:
receiving, by a computer that includes a display, a request for a communication history between a first user and a 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 servers 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 displaying conversation lines corresponding to at least a subset of the aggregated and interleaved messages.
The law
Section 18(1)(b) 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
At the relevant time, the ‘prior art base’ is for novelty 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 terms 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.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the skilled addressee as:[10]
...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.
[10] 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:[11]
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.
[11] 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:[12]
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.
[12] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23].
The sole piece of evidence in the present matter is a declaration provided by Professor Scott R. Klemmer. Professor Klemmer’s declaration also includes a copy of his curriculum vitae.[13] The Applicant submits:[14]
Professor Klemmer is an appropriate person to give relevant expert evidence. For example, Professor Klemmer has relevant qualifications, training and experience in the field of human-machine interactions and design, such as those used in electronic communication sessions.
[13] Klemmer, Annex A.
[14] Applicant Submissions, Page 2.
Professor Klemmer’s experience is set out in his declaration as follows:[15]
I am a Professor of Cognitive Science and Computer Science & Engineering at University of California, San Diego. I started my faculty appointments in 2004 as an Assistant Professor in Computer Science at Stanford University, where I co-directed the Human-Computer Interaction Group. Before joining University of California San Diego, I was an Associate Professor of Computer Science at Stanford University and held the Bredt Faculty Scholar development chair.
I received dual B.A. degrees in Art-Semiotics and Computer Science from Brown University, and M.S. and Ph.D. degrees in Computer Science from University of California, Berkeley. My Ph.D. dissertation from University of California Berkeley was on computer tools and techniques for processing user interface inputs.
My research includes human-computer interaction, user-centered design, usability, design thinking, prototyping, and iterative design, among other topics. For my research, I received the Katayanagi Emerging Leadership Prize, Sloan Fellowship, NSF CAREER award, and Microsoft Research New Faculty Fellowship.
[15] Ibid [1]-[3].
Having reviewed Professor Klemmer’s curriculum vitae, I am satisfied that Professor Klemmer is suitable to provide evidence as a person skilled in the art.
Novelty
It is well established that the test for novelty is as described by Besanko J in Aspirating IP Limited v Vision Systems Limited:[16]
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.
[16] 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.’[17] As stated by the Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited:[18]
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.
[17] 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.
[18] 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:[19]
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.
[19] Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 at [127].
Unison
According to the abstract of Unison, the disclosed invention relates to:[20]
A communication system provides integrated email, telephone and instant messenger communication including a common address book, a common log of communication history and shared presence information. A user can respond to a communication according to any format, email, telephone or instant messenger, with a response using the same format or any other format. The response may be initiated by a single command.
[20] Unison, Abstract.
Figure 1 of Unison, shown below, illustrates a system organisation according to an embodiment of the disclosed invention.
Generally, Unison describes a system which is capable of integrating existing communication formats, via a series of dedicated servers, such that a user is provided with the ability to select the manner which a user may wish to communicate with another user. In one example, such as shown in Figure 1:[21]
a server portion consists of several software servers on a single hardware platform, each server performing a different function. In the present example, server portion includes an email server, an instant messenger (IM) server, a Private Branch Exchange (PBX) server, a file manager server, an address book server and a calendar/task server. Other servers may also be provided in some cases. The servers are operated in an integrated manner to provide a user with integrated communication capability.
(references to figures omitted)
[21] Ibid Column 3 Lines 27 – 36.
In an alternative embodiment, physical servers may be utilised instead of software servers.[22] Relevantly, the system contains an address book server which maintains an e-mail, telephone, and instant messenger information for individuals.[23] A common communication log may also be maintained which includes, in a single list, all communications with a particular individual including e-mail, telephone and instant messenger communication.[24] Alternatively, the system may be integrated such that information gained from one communication format is used to manage other communication formats. For example, if a user’s instant messaging status is set to ‘away’, any telephone calls may be forwarded to the user’s cell phone or voicemail, or emails may be redirected to another location. Moreover, rather than set up individual accounts for each communication format, a single user account may be set up and automatically assigned to all relevant communication formats.
[22] Ibid Column 5 Lines 56 – 64.
[23] Ibid Column 5 Line 65 – Column 6 Line 9.
[24] Ibid Column Column 6 Lines 34 – 46.
In my view, Unison differs from the independent claims in that it does not disclose a combined communication history, which includes aggregating and interleaving messages from, for example, a first communication history and a second communication history. However, the examination report suggests that the ‘combined communication history’ as claimed is disclosed in figure 4 of Unison, which is reproduced below:
Figure 4 of Unison illustrates a common communication log that includes telephone, instant messenger and e-mail communication history, and is described in the specification as follows:[25]
In general, a log may be sorted according to different parameters. A common log may contain all communications according to all communication formats. For example, the log may include a telephone communication history for both telephone conversations that were terminated in a client device and a telephone. A common log may be sorted to be in chronological order or by name. In the present example, common log 460 is searched to show only correspondence between the user and a particular contact in the address book on a particular day. Common log 460 includes a telephone communication 462 (a voicemail) at 9.00. This is followed by an instant messenger exchange 464 starting at 10.00, a telephone call 466 at 11.00 and an email 468 at 11.30. Thus, a complete record of correspondence with this contact is provided to the user on one page.
(emphasis in quote)
[25] Ibid Column 9 Lines 45 – 61.
Professor Klemmer disagrees that figure 4 of Unison discloses the ‘combined communication history’ as claimed and explains that:[26]
Fig. 4 shows the metadata of communications, not their content. This is analogous to having a record of what phone numbers were called, when, and how long they lasted, but not the content of the conversation. Compactly presenting such metadata is obviously both distinct and easier than effectively presenting the content.
[26] Klemmer, [7].
I agree with Professor Klemmer. Unison states that in one embodiment, ‘a user can configure the system to store the content of the communication in addition to the communication record.’[27] Moreover, a user is provided with the ability to create, modify or eliminate tags associated with the communication record in the log, allowing a user to better organise and search through a communication log quickly and conveniently.[28] Clearly, the communication log is simply a list which indicates that at a particular time, a communication event has occurred in a specific format. While the user has the option of recording the contents of the conversation associated with a communication event, Unison does not suggest that the contents are aggregated and interleaved with any other communication event. Moreover, Unison does not suggest combining the conversation history between different communication formats.
[27] Unison, Column 9 Line 66 – Column 10 Line 1.
[28] Ibid Column 10 Lines 9 – 19.
Consequently, I find that claims 1, 18, 28, 36 and 37 are novel in light of Unison. It follows that the same consideration also applies to all of the dependent claims.
Daniell
As background, Daniell sets out that:[29]
[0005] Instant messaging (IM) is a real-time based communications system while email is more of a correspondence form of messaging. Upon receiving an email message, rather than replying to the listed recipients via email, a user may wish to expedite communications by chatting via IM with the sender of the email or with other people (e.g., other contacts) addressed in the email message.
[0006] In the past, vendors have offered an IM roster as a single pane in the main email window, thereby permitting a user to launch a separate IM client to chat with a contact that is listed on the IM roster. However, this type of environment provided nothing more than a single view of two separate clients (e.g., an email client and an IM client).
[0007] In view of this deficiency, a heretofore-unaddressed need exists in the industry for greater integration between email and IM.
[29] Ibid [0005]-[0007].
This integration between e-mail and instant messaging is facilitated by generating a first globally-unique identifier (GUID) associated with an email message. The email message may be further associated with an instant messaging (IM) session, which would be assigned with a second GUID. Thus, the first GUID is linked with the second GUID. Daniell further discloses, in one embodiment, the creation of a thread history database to store the first GUID and the second GUID.[30] Therefore, email messages and IM chat session transcripts are threaded to each other so that an email thread history may be traced back to an IM chat session transcript and, conversely, an IM thread history may be traced back to an email message. One example of the component architecture related to both instant messaging and email services is illustrated in Figure 7, and described as follows: [31]
As shown in FIG. 7, the address book object 108, the address book database 110, the address book user interface 404, and the tray manager 102 provide an interface between the various email components 106, 204, 206, 210, 212, 412, 408 and the various IM components 104, 304, 308, 310, 614, 612. In other words, integration of email and IM may be achieved by having a central address book database 110 that is accessible through an address book object 108 to both the various IM components 104, 304, 308, 310, 614, 612 and the various email components 106, 204, 206, 210, 212, 412, 408.
(emphasis in quote)
[30] Ibid [0008]-[0012].
[31] Ibid [0081].
Chat window 614 is shown in greater detail in Figure 15, reproduced below:
As shown in Figure 15, the chat window 614 comprises a transcript display window 1530, a user input window 1540, a first roster window 1555 and a second roster window 1565. Relevantly, Daniell states that ‘[a]lthough chatting between multiple participants from a common IM service is known in the art, the embodiment of FIG. 15 permits chatting between multiple participants from different IM services.’[32] This process operates as follows:[33]
[0111] In operation, when the user types an IM message at the user input window 1540, the typed message is translated into the native protocol associated with each of the other participants’ IM services. Thus, any message typed by the user is displayed to each of the other participants in the IM chat session. Similarly, when the other participants type messages from their native IM windows, these messages are translated from the native protocols to an abstraction protocol, and the translated messages are displayed to the user at the IM chat window 614.
[32] Ibid [0108].
[33] Ibid [0111].
Where an email message is threaded to an IM session, the user is afforded the ability to launch an IM chat session directly from an email read window, or send an email to another participant in a chat session. When either action is performed, the email message or IM chat session is tagged, so that all relevant correspondence is linked together.[34] This link is facilitated with a plurality of generated GUID. This thread history is depicted in Figure 16, and described below:[35]
[0118] In operation, when a child email message is generated from a parent IM chat window 614 (or a parent compose window 408), a globally unique identifier (GUID) is generated along with the child email message. Similarly, for each reply or forwarded email message, a GUID is generated. A pointer to the generated GUID is also created in the parent IM chat window, thereby linking the parent IM chat session to the child email message. Similarly, a pointer to the GUID of the parent IM chat session is created in the child email message, thereby linking the child email message to the parent IM chat session. In an example embodiment, the GUID is a 128-bit number that is unique to that message.
[0119] Likewise, when an IM chat session is established…a corresponding chat session transcript is generated for that IM chat session. Similar to the generation of GUIDs for email messages, a GUID is generated for each chat session transcript. Thus, regardless of whether an email message is generated or whether a chat session is initiated, each message or transcript is associated with a GUID. Additionally, when a child IM chat session is established or launched from a parent email window, a pointer to the GUID of the child IM chat session is created in the parent email message, thereby linking the child IM chat session to the parent email message. Similarly, a pointer to the GUID of the parent email message is created in the child IM chat session, thereby linking the child IM chat session to the parent email message.
[0120] Each of the email message or chat transcript are stored in the thread history database 1610, along with its GUID, in a tree structure. As shown in FIG. 16, each email message is displayed with an email icon 1620, while each IM chat transcript is displayed with an IM icon 1630, thereby distinguishing email threads from chat threads.
[0121] In operation, when a user selects one of the email messages in the thread history, the selected email message is displayed to the user in an email read window 412. The email read window 412 also includes the pointer to the parent email message (or parent IM chat session) so that the user may track the history of the message. Similarly, the email read window 412 includes the pointer to any child email message (or child IM chat session) so that the user may track subsequently email messages (or subsequent IM chat sessions) that were launched from the displayed email message.
[0122] Likewise, when the user selects one of the IM chat sessions in the thread history, a transcript of the selected IM chat session is displayed to the user in an IM chat window 614. The IM chat window 614 also includes a pointer to the parent email message (or parent IM chat session) so that the user may track the history of the IM chat session. Similarly, the IM chat window 614 includes the pointer to any child email message (or child IM chat session) so that the user may track subsequent email messages (or subsequent IM chat sessions) that were launched from the displayed IM chat session transcript.
[34] Ibid [0116]-[0117].
[35] Ibid [0118]-[0122].
In the examination report, the examiner considered that Daniell does not disclose that the communication history between two users is chronologically ordered. The Applicant agrees, but further submits that in a similar manner to Unison, Daniell ‘fails to teach or suggest, at least, aggregating messages from a first and second communication history into a combined communication history and displaying aggregated and interleaved messages that form part of the combined history.’[36]
[36] Applicant Submissions, Page 8.
From my discussion above, it appears clear to me that figure 15 of Daniell allows at least two users to communicate, using different IM services. It is also clear, that a history of the communication session is recorded with a unique GUID generated. However, in my view, this is distinctively different to the present application, which requires that messages from a first communication history and messages from a second communication history are aggregated into a combined communication history.
Moreover, figure 16 of Daniell depicts a list of separate communication transcripts, which are linked together via a series of GUIDs. Professor Klemmer explains that:[37]
Figure 16 of [Daniell] presents a metadata through a “universal inbox”. Figure 16 of D1 presents a metadata summary (i.e., a table of contents) of email and voicemail conversations with all parties; it does not disclose who authored which message(s). Obviously, by 2012, there existed email clients that do denote message author.
[37] Klemmer, [9].
On this basis, I am inclined to agree with the Applicant. It follows that claims 1, 18, 28, 36 and 37 are novel in light of Daniell. The same consideration also applies to 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:[38]
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]?
[38] 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:[39]
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.
[39] 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:[40]
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?
[40] 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:[41]
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.
[41] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368 at [217]-[218].
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.
From the above, it is clear that Unison and Daniell both do not describe ‘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’ as required by the independent claims.
On this point, the Applicant submits that:[42]
In fact, the requirement in [Daniell] that the user selects an individual item in the thread history tree structure [of figure 16] for viewing in a separate window would make it impossible for the user to obtain the benefit provided by the pending claims, which enable the user to “readily view the entire communication history between the two users in a single page … [and] perform searches within the page … instead of having to open each communication session file … individually.”
[Unison] fails to disclosure or suggest the deficiencies of [Daniell]. At best, [Unison] discloses a common log displaying communication formats of various communication records and does not disclose or suggest that a respective communication history includes “a plurality of messages between the first user and the second user” and displaying at least a portion of the combined communication history including the aggregated and interleaved messages, as recited by the claims.
(emphasis in quote)
[42] Applicant Submissions, Page 9.
It would appear that both Unison and Daniell provide a manner upon which separate conversations are linked, and for a user to retrieve a conversation history. I am also reasonably confident that when messages are displayed within a communications history, said messages are typically displayed in chronological order. Where a plurality of conversation histories are merged, it logically follows that the individual messages are displayed according to the timestamp of each respective message.
The question, in my view, is whether a person skilled in the art would be directly led as a matter of course to further modify the systems of Unison or Daniell, to produce a combined communications history, produced from a first communication history and a second communication history, where all of the messages between a first user and a second user are interleaved, in the expectation that it would address the problem to be solved. Specifically, where the first and second communication history are already pre-existing. That is, whether this modification would be considered taking the systems of Unison or Daniell one step further, via inventive means.
I do not believe that this point has been adequately addressed during examination. While individual integers of the claims have been determined by an examiner to not involve an inventive step, the claimed combination must be considered as a whole. Conversely, the evidence available to me does not allow me to be satisfied, that the claims contain an inventive step. I acknowledge that Professor Klemmer does point out the differences between claim 1 and the prior art.[43] Professor Klemmer also states that a skilled person in the art would not modify the user interface of Unison or Daniell in the same manner as the embodiment described by the dependent claims.[44] However, nothing further is said. Moreover, I do not have any contrasting evidence, as would be typically available for an opposition under section 59.
[43] Klemmer, [7]-[8].
[44] Ibid [9]-[11].
In this situation, I consider it appropriate that the present application be remitted to examination, in light of my comments above, for further consideration. If the examiner is satisfied that the invention, as presently claimed, does not give rise to any grounds of objection, then it follows that the application should be accepted. In this scenario, no further action will be required of the Applicant. However, should the examiner remain unsatisfied that the present application is in order for acceptance, then I would envisage that an adverse examination report be issued, potentially citing new prior art.
Consequently, on the basis of the evidence before me, I am unable to be satisfied that the invention as presently claimed are inventive in light of Unison or Daniell.
Conclusion
On balance, I am satisfied that the invention as claimed is novel over the prior art. However, I am unable to be satisfied that the claims contain an inventive step. It is possible that the claims include patentable subject matter which, in my view, is best addressed during examination. I consider it appropriate that the examination of this application continue. Typically, pursuant to sub-regulation 13.4(1)(g), the Applicant would be allowed a period of three (3) months from the date of the decision to attain acceptance of the application.[45] However given the time of the year, the impending holiday period, and that an examiner will require some time to consider the present matter, I consider it appropriate that a longer period be substituted.
[45] See, eg. Micro Motion, Inc. [2017] APO 39 at [53]; Kineta, Inc. [2017] APO 45 at [48]-[49]; Google LLC [2018] APO 44 at [57]; Apple Inc. [2018] APO 54 at [78].
Consequently pursuant to regulation 13.4(3), the applicant is allowed a period of six (6) months from the date of this decision to attain acceptance of the application.
Isaac Tan
Delegate of the Commissioner of Patents
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