Apple Inc.
[2023] APO 14
•3 March 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2023] APO 14
Patent Application: 2018271366
Title:Continuity
Patent Applicant: Apple Inc.
Delegate:Neil Miller
Decision Date: 3 March 2023
Hearing Date: Written submissions filed on 16 March 2022
Catchwords: PATENTS – Examiner’s objection – inventive step – common general knowledge – claims do not lack an inventive step – clear enough and complete enough disclosure – incorporation by reference – undue burden – disclosure satisfactory – objections not sustainable – application accepted
Representation: Patent attorney for the applicant: FPA Patent Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018271366
Title:Continuity
Patent Applicant: Apple Inc.
Date of Decision: 3 March 2023
DECISION
The examiner’s objections are unsustainable.
The specification as proposed to be amended provides a clear enough and complete enough disclosure.
The invention so far as claimed is considered to not lack an inventive step.
I allow the amendments up to and including amendment item 7 as proposed on 23 February 2021. I accept the application.
REASONS FOR DECISION
Australian patent application 2018271366 (“the instant application”) was filed on 30 November 2018. The application is a divisional application of 2016266010, which is a divisional application of 2015201884 (“the grandparent”). The earliest priority date claimed is 30 May 2014.
A request for examination was filled on 11 February 2019. The first examination report issued on 25 February 2020. Subsequent examination reports were issued on 26 October 2020 and 19 January 2021 following responses from the applicant. On 25 February 2021 the applicant requested a hearing on the matter.
A fourth examination report was issued on 17 May 2021. The objections were raised in the fourth report relating to a lack of a clear enough and complete enough disclosure and a lack of a support. In addition to these objections, the examiner also raised an objection for a lack of an inventive step.
The Specification
The description
The specification as currently proposed to be amended sets out at paragraphs [0001]-[0005A] a listing of related or co-pending applications. The specification also states that the contents of the identified documents are incorporated by reference in their entirety.
The field and background of the invention are then discussed at paragraphs [0006]-[0008]. The invention concerns techniques for permitting a user to transition from one device to another. The specification acknowledges at paragraph [0007] that, typically, users may own multiple electronic devices and the suitability of these devices for particular tasks may change. The specification then states that it would be useful to transition from one device to another device that is better suited to performing the desired tasks; the transition occurring in a seamless and cognitively continuous manner.
A set of consistory statements are then provided at paragraphs [0008A]-[0012]. The statement provided at paragraph [0008A] mirrors claim 1 as set out below. The statements provided at paragraphs [0009]-[0012] relate to the use of electronic devices and/or computer readable media for performing the method of the instant invention. The statements at paragraphs [0009]-[0012] are essentially the subject of claims 27 and 28 as now presented.
At paragraph [0013] a definition of the term “comprising” has been provided. The definition seeks to ensure that the term “comprising” is not read in in a limiting sense. That is, the provided definition seeks to align the meaning of the term “comprising” with that of more inclusive terms such as “including”.
The specification at paragraphs [0072]-[0688] provides discussion on a number of embodiments of the instant invention. The use of the continuity function per the invention as claimed is discussed with reference to Figs 5A-5N and Fig 9 at paragraphs [0193]-[0223] and [0268]. In this embodiment a user using a first electronic device such as a cellular phone which is running a particular application can switch the same application another electronic device without loss of continuity. The overall functionality of this embodiment is best shown in Fig 5C reproduced below. As shown the application being utilised is a messaging application where the message transcript includes a series of message bubbles. While the limited screen size may suit such a messaging application, it may prove inefficient for other applications.
In the discussed embodiment a website URL has been requested by one of the participants (“user A”) in the conversation. Opening the requested URL on the cellular phone may not be efficient given its limited screen size. Accordingly, user A may wish to view the requested information on a secondary device having a larger display that is better suited to the task. In this case the secondary device is a tablet computer. When user A brings their phone within communications range of the tablet computer, the tablet is able to detect the presence of the phone via the use of a low energy wireless protocol. Using the low energy wireless protocol, the tablet is also able to obtain usage information from the cellular phone. In this example the usage information indicates to the tablet that the messaging application is active on the cellular phone. The usage information also includes data relating to the state of the current message transcript.
10. Based on the usage information, the tablet computer displays an “affordance” to user A, the affordance indicating to user A that it is possible to continue the conversation via the messaging application on the tablet. The specification explains at paragraph [0196] that the term “affordance” as used here refers to a user-interactive graphical user interface object such as icon, button text, etc. In the discussed embodiment the affordance is displayed as an icon on the lock screen of the tablet computer. User A may then select the affordance to launch a corresponding messaging application on the tablet.
11. In the case of the embodiment as depicted in 5D (reproduced below) the user, i.e. user A, is required to perform a swipe gesture in a particular direction to launch the corresponding messaging application on the tablet. The messaging application that is launched on the tablet computer also displays the same message transcript that is shown on cellular phone, however, owing to the increased screen size, the displayed transcript may show additional message bubbles to that as shown on the cellular phone. Once in the message application, user A can access the received URL, e.g. by selecting the displayed URL, which then initiates a web browsing application. Thus, the provision of the affordance in this manner enables user A to seamlessly switch from their phone to the tablet without losing the context, or, as this is phrased by the applicant, continuity is maintained.
12. At paragraph [0202] the specification discusses, with reference to Fig 5E, a further embodiment of the continuity function of the instant invention. In this case user A’s phone is displaying a webpage via a web browsing application. As the phone has a relatively limited display, user A may wish to transition to a device that has a larger screen that is within range, such as a tablet computer. As the devices are in range of each other, the tablet computer can wirelessly detect the phone and receive usage information including information regarding the active web browsing application. In response to received usage information, the tablet displays a continuity affordance on the tablet’s lock screen. In this case the affordance is a thumbnail image indicating that the application to be launched is a web browsing application.
13. When user A invokes the continuity affordance by swiping the affordance in a particular direction, the tablet launches its version of the web-browsing application. The web browsing application displays the portion of webpage that is being displayed on the phone, allowing user A to continue reading from where they left off. As in the above discussed embodiment, owing to the fact that the tablet has a larger display, additional portions of the web page may also be displayed for viewing.
14. At paragraph [0203] the specification states that a tap on the affordance is insufficient to invoke the continuity feature. Rather, the user is required to perform the required swipe gesture in an upward direction. The swipe gesture may also be required to be of a certain duration or length in order to register activation of the affordance. Per the discussion at [0203], a threshold distance for the swipe gesture may be utilised. In this instance the user is required to swipe the affordance beyond a predetermined distance to register selection of the affordance item. If the swipe is not of sufficient length, the device may bounce back the affordance thereby suggesting to the user that a longer swipe is required to activate the affordance. In the event that the user fails to successfully activate the affordance after a number of attempts, the device may display instructional text to assist the user.
15. Additional embodiments concerning the placement of the continuity affordances in various user interfaces are then discussed at paragraphs [0205]-[0223]. In the discussed embodiments, the affordance is incorporated at various locations on the lock screen. In some embodiments the affordance is incorporated into a multitasking screen, positioned permanently on the lock screen, incorporated with the device’s biometric reader, etc. At paragraph [0223] the specification discusses a push operation. In this instance, when the phone is within communications range of the secondary device, the user is presented with an affordance for pushing the application that is currently being run on the phone to the secondary device. If the user selects “yes” to the push prompt, a continuity affordance for the application is presented on the secondary device. The user is then able to select the affordance to launch the corresponding application on the secondary device.
16. At paragraph [0236]-[0238] provide further discussion on how continuity between the applications is achieved. More specifically, state information is passed to the secondary device, i.e. tablet, as part of the usage data that is transmitted by the phone. The state information provides the tablet with an indication of the state of the active application. The state information can include the condition of showing a particular screen, a mode or configuration setting in which the application is operating, the condition of displaying a particular location within a navigational hierarchy of the application, the condition of displaying a particular part of or location within a document, etc. The tablet uses the state information to launch a corresponding application in the same application state.
17. For example, the tablet launches a corresponding messaging application and displays the same message transcript. If the messages transcript is sufficiently lengthy to require scrolling, the tablet displays the message transcript at the same scrolling position based on position information provided by the usage data. In the embodiment provided at paragraph [0238] the phone is playing a video in (i) landscape orientation, (ii) at a 16:9 aspect ratio, (iii) with audio muted, and (iv) with closed captioning enabled. This data is passed to the tablet and, when continuity is invoked on tablet, the tablet is able to launch the corresponding video at the same position with settings (i)-(iv).
18. The specification provides detail on the wireless protocol used between the devices at paragraphs [0263]-[0269]. At paragraph [0263] it is stated that, for the purpose of continuity functionality, wireless communications occur over a peer-to-peer communication protocol such as Bluetooth and/or Bluetooth Low Energy (BTLE). In some embodiments, a combination of wireless communication protocols can be used to implement continuity, i.e. BTLE in conjunction with WiFi. In such cases the initial exchange is over the lower speed BTLE connection and, once continuity is established, data can be exchanged between the devices over the higher speed WiFi connection.
19. At paragraph [0264] one example of how continuity between a laptop computer and a cellular phone is established using two wireless protocols is discussed. In this example usage data is exchanged between the laptop and cellular phone via a BTLE connection. The usage information indicates that the phone is within range and that it is being utilised to draft an email. When continuity is invoked the two devices exchange data relating to the draft email over WiFi. The specification then explains that, utilising this bifurcated approach, devices may poll for other compatible devices that are in-range without excessive power consumption. Reducing power consumption rates also permits for more frequent polling. At the same time, a faster channel is reserved for more data intensive communications, such as the communication of application data and/or application state information.
20. Authentication information may be transmitted as part of the usage information that is transmitted over the BTLE connection. The authentication information may include a token or other identifier that is calculated, e.g. hashed, at least in part based on a user ID. The use of the authentication information also enables compatible device to decide to allow or deny use of continuity functionalities based on whether the devices are associated with the same user ID.
21. The specification then details further power conservation techniques that can be employed in the present invention at paragraphs [0266]-[0267]. In this embodiment further power savings can be gained by enabling the user to designate how much information is automatically exchanged with compatible devices within communication range. Where the device detects a compatible device within range, an initial amount of data (i.e. the data specified by the user) is exchanged over the BTLE connection. The device may then display an affordance that informs the user as to the availability of continuity features, and that the features are as yet not fully enabled due to the limited data exchange. That is, after the initial exchange, the device refrains from exchanging additional usage and/or application data information from the compatible devices until activation of the continuity function by the user, i.e. the user interacts with the affordance currently displayed. After activation the device obtains the additional usage and/or application data information to permit the device to launch a corresponding application in a proper application state. The device then updates the displayed affordance to indicate that continuity is now enabled and that the user can invoke continuity by use of the required swipe gesture.
22. The specification then discusses at paragraphs [0268]-[0291] the process diagrams depicted in Figs 9-15 and 43-53. The process diagrams detail the various process step that are implemented to bring about the embodiments as discussed in relation to Figs 5A-5N, 7A-7G and 8A-8C. In the present case I will focus on the discussion of Fig 9 (reproduced below) which outlines the general process employed by the instant invention to implement the continuity functionality. The remaining process diagrams follow similar operating procedures.
23. As with the above embodiments, the process set out in Fig 9 begins with the device wirelessly detecting an external device. The device then receives from the external device usage information indicating usage of the first application. The usage information also includes information on the state of the first application and how recently the first application was used. Based on this information the device displays an affordance on its screen, the device is then able to receive input data representing the selection of the affordance. In response to the selection of the affordance the device launches a second application that corresponds to the first application being run on the external device. The first and second applications may correspond in that the second application is a version of the first application that is available on the device. Once the device launches the second application, the device also places the second application into the same application state as the first application using the received state information.
24. Finally, it is noted that the specification at paragraphs [0078]-[0192] provides details on the various types of device that can be utilised in conjunction with the instant invention, including discussion of various user interface techniques employed and various software modules that can be run on such devices. On the whole the discussion details general arrangements common to most portable computing devices such as tablet computers, laptops, mobile/cellular phones, etc that were readily available as at the priority date.
The claims
25. The claims under consideration are the claims as proposed to be amended on 23 February 2021. The claims number 28 in total of these claims 1 is the only truly independent claim and is directed to a method for enabling continuity between devices in accordance with the instant invention. Claims 27 and 28 are directed to an electronic device and computer readable storage media storing computer programs implementing the method of claim 1. Claim 1 as currently proposed is reproduced below:
1. A method, comprising:
at an electronic device coupled with a display screen and an input device:
detecting an external device based on the external device being within a proximity of the electronic device, wherein the proximity is within a threshold range, and wherein the external device is executing an external application, the external application in a state;
displaying, in a portion of the display screen, a plurality of application icons for launching a plurality of applications on the electronic device, wherein the plurality of application icons are being displayed in a row on the display screen;
while the electronic device is in an unlocked state, and while displaying, in the portion of the display screen, the plurality of applications icons for launching a plurality of applications on the electronic device:
in response to receiving information indicating recent use of the external application at the external device and based on the external device being within the proximity of the electronic device, initially displaying, adjacent to the plurality of application icons, a local application icon for launching a local application corresponding to the external application wherein the local application icon is being displayed in the row on the display screen, and, wherein:
in accordance with a determination that the external application is a first external application that has executed on the external device more recently than a second external application, the local application icon is a first local application icon corresponding to a first local application; and
in accordance with a determination that the external application is the second external application that has executed on the external device more recently than the first external application, the local application icon is a second local application icon corresponding to a second local application, wherein the second local application is different from the first local application and the second local application icon is different from the first local application icon;
detecting, via the input device, an input directed to a location corresponding to the displayed local application icon; and
in response to detecting the input:
in accordance with the local application icon being the first local application icon, launching the first local application, wherein the state of the first local application corresponds to the state of the external application; and
in accordance with the local application icon being the second local application icon, launching the second local application, wherein the state of the second local application corresponds to the state of the external application.
26. Dependent claims 2-26 recite additional limitations relating to the display of one or more icons on the screen of a device, features relating to the launched application, e.g. manner in which program is displayed on opening, the type of state information transmitted between devices, the type of devices utilised, etc.
Allowability of the amendments
27. The amendments up to and including amendment item 7 as detailed in the statement of proposed amendments filed 23 February 2021 add additional limitations to the claims. The features added by these amendments are supported by the discussion at paragraphs [0194], [0205]-[0223], the discussion relating to disambiguation at paragraphs [0251]-[0262] and paragraphs [0263]-[0269]. Consequently, the proposed amendments do not appear extend beyond the scope of the specification as filed. The proposed amendments therefore comply with s102(1) and are allowable. Accordingly, this decision is being made on the basis of the amendments filed up to and including those made on 23 February 2021.
The Examiner’s Objections
28. At item 7 of the fourth report the examiner contends that the specification does not provide a clear enough and complete enough disclosure as required by subsection 40(2)(a). More specifically, the examiner formed the view that the specification does not provide sufficient information regarding the automatic exchange of data between the devices. Moreover, the examiner believed that the specification does not provide sufficient information on how the state information is passed to enable the local application on the device to be in the same state. In the examiner’s opinion, the lack of guidance by way of instructions, examples and/or a disclosure of a general principle within the specification places an undue burden on the person skilled in the art to perform the invention. In view of the subs 40(2) objection the examiner also noted that an objection under subsection 40(3) is also applicable as the invention as defined in the claims is not enabled across its entire scope by the disclosure in the description.
29. On a review of the reasoning set down in item 7 the following passages are of note:
“…there is not enough information regarding the process of passing the information automatically from one device to another without user action to enable continuity. …
… The complete specification must provide clear enough and complete enough disclosure on how this automatic information transfer is done such that a person skilled in the art can perform the automatic information transfer between the two devices without undue burden. Conventionally, when the two devices are in close proximity to each other, they don’t share data/information unless the user(s) manually allow them to do so. There must be some mechanism/requirement in place to gain automatic access to other device as claimed as the automatic information sharing between the two devices would require certain connectivity requirements to be met for security. Similarly you have in your claim the feature ‘wherein the state of the first or second local application corresponds to the state of the external application’, however, there is not enough information in the specification on how the information is passed from external device to electronic device such that the state of the first or second local application corresponds to the state of the external application….” (emphasis added)
30. In item 8 of the report the examiner contends that the invention as defined in claims 1-28 lacks an inventive step in light of the disclosure of D3. The examiner is of the view that D3 discloses two devices/terminals T1 and T2 being in proximity of each other within a threshold region to begin wireless communication. D3 further discloses launching the currently displayed application from terminal T2 to terminal T1 via wireless communication to continue working on the same content from the display terminal T1. D3 therefore discloses that the application which is open on terminal T2 is transferred to terminal T1 in order to allow continuity. In support of the objection the examiner references Figs. 4, 5, 9-11 and 17 and paragraphs [0068]-[0084], [0106-0115], [0150]-[0154] of D3.
31. On a review of the reasoning provided, the apparent difference identified by the examiner is that D3 does not disclose determining the most recently executed application and launching the recently executed application on the screen of the device. This in the examiner’s view would be obvious to one of skill in the art.
32. It is noted that in their assessment of lack of inventive step the examiner has sought to utilise the problem solution approach, of interest are the following passages:
“The problem addressed by the current application is providing continuity across multiple
devices. The solution provided by the current invention is to allow seamless transition from one device to another.I maintain that the person skilled in the art equipped with D3 and the common general
knowledge in the art, in seeking a solution to providing seamless continuity across multiple devices would be motivated to include determining the recency of an external application as an obvious step because this would provide benefit of allowing a seamless transition of information between the two devices and therefore the claimed invention does not involve an inventive step.” (emphasis added)The Applicant’s Submissions
33. The applicant provided written submission addressing the outstanding objections on 16 March 2022. In items [1]-[18] of the written submissions, the applicant set out the context leading to the present proceedings, I have dealt with these matters above.
34. At items [19]-[30] the applicant presents argument in rebuttal of the subs 40(2)(a) (i.e. sufficiency) objection. At [21] the applicant advances that the examiner has postulated subsidiary use cases for the claimed invention. The applicant notes that claim 1 is written from the perspective of one electronic device only, so that all that is required is reception of usage information, without this necessarily being automatic.
35. The applicant then points to the specification at paragraph [0244] where information contained in US Patent Application Serial No. 62/005,781, entitled “Activity Continuation Between Electronic Devices” (“the ‘781 application”) is incorporated in its entirety. The remainder of the argument advanced by the applicant focuses on the disclosure in the ‘781 application regarding the process of passing information automatically from one device to another without user action to enable continuity and how the state information is passed from the external device to the electronic device.
36. The applicant presents argument in relation to the issue of inventive step at items [31]-[52] of the written submissions. At [31] and [37] the applicant identifies a number of salient features that, in their view, are not disclosed or taught by D3. These features of claim 1 are as follows (applicant’s emphasis):
·…[responsive] to receiving information indicating recent use of the external application at the external device and based on the external device being within the proximity of the electronic device, initially displaying, adjacent to the plurality of application icons, a local application icon;
·…in accordance with a determination that the external application is a first external application that has executed on the external device more recently than a second external application, the local application icon is a first local application icon corresponding to a first local application; and
·…in accordance with a determination that the external application is the second external application that has executed on the external device more recently than the first external application, the local application icon is a second local application icon corresponding to a second local application…
37. The applicant then notes that the examiner has failed to establish that the identified features were disclosed in any other prior art reference or were part of the common general knowledge (CGK) at the priority date of the present application. Moreover, the applicant submits that the examiner has not provided any evidence concerning the question of motivation. The applicant also submits that there was no special inducement either in D3 or the CGK that would lead a person of skill in the art to the claimed invention.
38. Finally, the applicant mentions that substantially similar claims were found to be non-obvious in the US in light of the same prior art reference in combination with other references. The applicant does however acknowledge that the decision made in respect of the corresponding US case is non-binding.
Applicable Law and Scope
39. On 15 April 2013, the Intellectual Property Laws Amendment (“Raising the Bar”) Act 2012 (the Raising the Bar Act) commenced which resulted in significant amendments to the Patents Act 1990 (“the Act”) and Patents Regulations 1991 (“the Regulations”). The instant application was filed on 30 November 2018, hence the amended provisions of the Act and Regulations apply to the examination of the instant application and to these proceedings.
40. This means that I must accept the instant application if I am satisfied, on the balance of probabilities, that the instant application complies with the Act. If I am not so satisfied, I may refuse the instant application or remit it back to examination for further consideration. I will only refuse the instant application if I am also satisfied that providing the applicant with an opportunity to amend will serve no useful purpose; for example, if I consider that any potential negative findings are not rectifiable by an allowable amendment.
41. Moreover, the present proceedings are in respect to the outstanding objections raised in the fourth examination report and are based on the specification and claims as detailed above, i.e. specification and claims as proposed to be amended on 23 February 2021. Following the principles of natural justice, my decision is limited only to matters covered by the instant hearing. Where I have made comments in relation to other examination matters, these comments serve only the purpose of facilitating further examination of the instant application if so required and, as such, should not be regarded as conclusive findings on those other matters.
Person skilled in the art
42. In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481; 71 IPR 615 Kiefel J identified ([16]) the person skilled in the art (“PSA”) as:
“...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.”
43. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated at [70]:
“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.”
44. In AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 (at [23]), the High Court additionally noted that:
“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.”
45. In the present case the instant application is directed to the exchange of data between electronic devices. Detail is also provided concerning various input techniques utilised with such devices including the use of gesture-based controls. The specification also refers to the use of a number of communication technologies such as Bluetooth and other wireless protocols. Consequently, the PSA would require an understanding of these technologies.
46. Given the above, the PSA is likely to be an electronic and communications engineer. Such an engineer would be versed in the construction of portable computing device, as well as having an understanding of the various communications protocols utilised by such devices. Alternatively, the notional PSA could be a team of engineers, including software engineers, communications engineers, and electrical engineers, etc.
Inventive Step
47. The statutory basis for inventive step is set out at subsection 7(2) and subsection 7(3) of the Act as it stood after commencement of the Raising the Bar Act, and is reproduced below:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
48. The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
49. In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [53] (“Aktiebolaget Hassle”), the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187] where Graham J posed the reformulated Cripps question:
“Would the notional research group at the relevant date, in all the circumstances, ... directly be led as a matter of course to try [the claimed combination] in the expectation that it might well produce a [useful or better result]?”
50. A common approach to determining inventive step is the problem-solution approach as per Wellcome Foundation. Once the problem has been formulated and the CGK and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
51. I am however mindful that the use of the problem solution may not be always applicable. It is well established in patent law that an invention need not solve or address a particular problem. In such relatively rare cases one must be cautious in the use of the problem solution approach. Moreover, the Full Bench of the Federal Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (“AstraZeneca”) at [202]-[203], effectively stated that, when formulating the problem, it is not permissible to incorporate information that is not available to the PSA as either common general knowledge or information available under s7(3).
52. In relation to what level of inventiveness is required to sustain a patent, the Full Federal Court in Garford Pty Ltd v Dywidag Systems International Pty Ltd [2015] FCAFC 6 (“Garford”) stated at [44] as follows:
“The inventiveness required to sustain a patent for a claimed invention is quite small. A ‘scintilla’ of inventiveness is all that is required: Alphapharm at [195]. However, there must still be ‘some difficulty overcome, some barrier crossed’ (per Lockhart J in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 57; (1989) 25 FCR 565 at 574) or some contribution to the art ‘beyond the skill of the calling’ (Allsop Inc v Bintang Ltd [1989] FCA 297; (1989) 15 IPR 686 at 701)”.
The problem
53. On a review of the prosecution history of the instant application I note that the applicant in their response of 23 February 2021, with reference to paragraph [0007] of the specification, phrased the problem as follows:
“… the problem the claimed invention solves — that of providing seamless and cognitively continuous continuity across two or more devices.”
54. As I have noted above the examiner states that the problem being addressed by the current application is providing continuity across multiple devices. The examiner also states that solution provided by the invention is to allow seamless transition from one device to another.
55. It is no coincidence that the problem as identified by the applicant and the examiner are similar. It is apparent that the examiner’s formulation of the problem has been influenced by the applicant’s articulation of the problem per the response of 23 February 2021.
56. The specification does not directly state the problem being addressed. However, as noted above, the specification states at paragraph [0006] that the present disclosure concerns techniques for permitting a user to transition from use of one device to another, seamlessly. Further, paragraph [0007] also notes, given the propensity for users to own more than one electronic device, i.e. mobile phone, tablet, laptop, etc, it would useful for users to transition from one device to another in a seamless and cognitively continuous manner. Put another way, it would be useful for a user to transition, in a continuous manner, tasks being performed on one of their devices to any other device they may own, or is otherwise associated with the user.
57. Given the above, in my view the problem being addressed is how to transition a task performed on a first device in a seamless and cognitively continuous manner to other devices associated with the user.
The Common General Knowledge (CGK)
58. In the present proceeding no evidence has been advanced on the state of the CGK in the art as at the priority date. It is also noted that the specification does not make any explicit admission as to the state of the CGK in the art at the priority date. Nevertheless, the specification does provide indictors as to the state of the CGK at the priority date.
59. Firstly, as I have noted above, the specification contains discussion of devices such as cellular or mobile phones, tablet computers, and laptop computers. Such devices were in widespread usage as at the priority date. The specification also discusses the use of various user interface techniques, including well known items such as keyboards and pointing devices such as a mouse. These technologies have been available since the late 1960’s see for example the “Mother of All Demos” presented on December 9, 1968 at Computer Society's Fall Joint Computer Conference in San Francisco, by Douglas Engelbart. As a consequence the usage of such interface technologies was ubiquitous in the computing arts as at the priority date.
60. The specification refers to the use of affordances in the forms of icons, images, etc; i.e. the use of a graphical user interface (GUI). GUIs first appear in the late 60’s and early 70’s with the advent of the Xerox WIMP based systems. GUIs were further popularised in the 1980s with the advent of the Apple Lisa and Macintosh operating systems and the Windows family of DOS based systems such as Windows 3.1 and Windows 95. Consequently, the use of GUIs that displayed actionable icons, images, etc was, at the priority date, a well-established form of user interface for human-computer interactions.
61. Additional interface techniques including the use of touch screens and gesture controls such as swipes, tabs, pinches, etc are also discussed. There was a wide-spread acceptance of such gesture based control as at the priority date. For example, the applicant’s own line of cellular phones employed such functionalities before the priority date; i.e. such interfaces were available in the iPhone, iPhone 3G and 3GS and 4, with these various products being commercially available at various stages from June 2008 through to September 2013, while the iPhone 4s was commercially available from October 2011 to September 2014. The rapid commercial success of this line of cellular phones led to other major manufacturers adopting similar interfaces. Consequently, such interface techniques were well-established and well-accepted in the art at the priority date.
62. It is also noted that the specification refers to the use of Bluetooth, Bluetooth low energy (BTLE) and WiFi, with these technologies being covered by IEEE standards as at the priority date. In the case of Bluetooth and BTLE, these were officially adopted into Bluetooth version 4 which was adopted on 30 June 2010; these technologies being covered by the IEEE 802.15 standard series. Likewise, WiFi is governed by IEEE standard 802.11 first adopted in 1997 (802.11 legacy) with 802.11n being adopted in 2009, which underwent subsequent revision in 2012 (802.11-2012).
63. On a review of the art of record, including D3, I note that it was a common-place practice during the synchronisation of a process/application across devices to pass to the receiving device information relating to the state of the application being synchronised. This is also a logical inference to draw since, without such necessary application state information, it would not be possible to synchronise the applications across the devices.
64. In summary I do not think it to be in doubt that the following information was GGK as at the priority date:
·Portable computers such as laptops, tablet computers and cellular/mobile phones and their usage to perform various tasks across a range of applications was well known.
·Gesture based interface techniques were widely in use as at the priority date.
·The use of GUIs and the display of icons, etc for human-computer interaction was a well-accepted and established practice in the art as at the priority date.
·Bluetooth, Bluetooth low energy (BTLE) and WiFi standards were well-known and accepted in the art as at the priority date.
·It was known for state information to be exchanged between devices in order to synchronise applications across devices.
Consideration of inventive step
65. As noted above at [30]-[31], the examiner contends that the invention so far as claimed lacks an inventive step in light of the disclosure of D3. In summary, the examiner asserts that, given the disclosure D3 and the CGK, the invention would be obvious to the PSA. In the reasoning provided by the examiner, reference is made to the motivation of the PSA as to why one or more identified features would be obvious.
66. The applicant in their submission argues that D3 fails to disclose a number of key features as outlined above at [36]-[37]. The applicant also argues that the examiner has failed to establish that the identified features formed part of the CGK and, in the event that these features were considered to be CGK, the examiner has not established that it would be obvious for the PSA to include such features in the arrangement disclosed in D3.
Consideration of inventive step in light of the CGK
67. The invention as claimed recites that an electronic device (i.e. the receiving device) receives information from an external device when the devices are within proximity of one another. The exchanged information includes information on one or more applications that have recently executed on the external device (i.e. state information). The receiving device then displays an affordance to enable the user to launch a local application that corresponds to the affordance. The affordance displayed is based on a determination of the which application of a first or second application was most recently executed on the external device. On activation of the affordance, the corresponding local application is launched and is synchronised with the version of the application on the external device.
68. As noted above, the information as to the state of the CGK in the art as at the priority date is limited. What can be said is that there were various standards available to permit the interconnection of devices. This interconnection permitted devices to synchronise applications and/or data through the exchange of state information. The display of one or more icons (affordances), etc for the launching of a given application was also well known.
69. There is nothing in the materials before me that suggests that determining at the receiving device which application was recently utilised by the external device and then prioritising the display of the icon associated with the most recently used application was well known.
70. I am therefore satisfied given the information before me that the invention as claimed involves an inventive step in view of common general knowledge alone.
Consideration of inventive step in light of D3
71. The applicant in their submissions at [40] acknowledges that D3 solves a problem of providing continuity across devices. That is, D3 is directed to the same problem as the instant application. The applicant states that, while D3 solves the same problem, it does so without requiring the step of determining which application is the most recently executed application. To summarise the applicant’s position, while D3 and the instant application concern the same problem, the instant application provides an alternate solution that is neither taught nor contemplated by D3.
72. D3 is directed to systems and methods for the synchronisation of data between a mobile terminal and an external terminal. The operation of the invention of D3 can be best understood with reference to Figs 5-8 which depict the general process steps for synchronization of data between the mobile terminal, such as a mobile phone or laptop computer (D3 paragraph [0018]), and an external device such as a personal computer or similar devices (D3 paragraph [0077]). D3 explains that the mobile terminal and external device may be connected wirelessly by communication standards such as Bluetooth, IR and WiFi. D3 further discloses that the mobile terminal and the external terminal may be coupled together via a web server via the internet, the server being utilised to forward data from the external terminal to the mobile device (D3 paragraph [0076]).
73. At paragraph [0078] et seq, D3 details the synchronisation process, the external terminal denoted as T2 may be running an active web browsing session where one or more web pages may be displayed. Information regarding the accessed webpages is saved. That is, T2 maintains a web browsing history which includes the relevant page URLs and the dates, times and text input into the web page or browser, etc on which they were accessed. T2 may also have a messenger application that is concurrently active with the web browsing session. T2 also records information on the text input into the messenger application.
74. Per the system of D3, the user is able to input a sync command and, on determining that the sync command has been input, T2 transmits sync data to the mobile device (T1) over the established connection. The sync data transmitted to T1 includes the web history data and text data that has been, or is currently being, input into the webpages and messenger application. On receipt of the sync data, mobile terminal T1 extracts data regarding the webpage or the messenger application. Terminal T1 then utilises the extracted data, to display the same webpage or the same messenger application that is currently being displayed by the external terminal T2.
75. D3 further details that the data extracted in relation to the messenger application may include text data, a still image, a moving image and audio data displayed or output. Given this data, the mobile terminal T1 is able to allow the user to participate in the same chat session on the external terminal and the mobile device.
76. At paragraphs [0084]-[0085] D3 discloses that, as part of the synchronisation process, the mobile terminal T1 may display an icon corresponding to the webpage or the messenger application. On selection of the displayed icon by the user, the mobile terminal displays the information corresponding with the icon; i.e. either the specified webpage or the messenger application. The icon may also be set to automatically disappear once the relevant webpage or messenger application is displayed.
77. The converse operation of the mobile terminal transmitting synchronisation data to the external terminal is also detailed in D3 at paragraphs [0091]-[0105]. At paragraph [0102], D3 discloses that mobile terminal T1 may display a sync icon on the touch screen of the mobile device to initiate the synchronisation with external terminal T2. On selection of the sync icon, synchronisation data is transferred to the external terminal T2. The synchronisation data is then utilised by the external terminal to display the relevant webpage and/or messenger application.
78. As I have noted above the applicant states in their written submissions that D3 fails to disclose “receiving information indicating recent use of the external application at the external device and based on the external device being within the proximity of the electronic device, initially displaying, adjacent to the plurality of application icons, a local application icon” (applicant’s emphasis). I do not believe that the arguments presented on this feature advance the applicant’s case in this instance for the following reasons.
79. It is clear that D3 teaches the connection of the mobile terminal and the external terminal via a short-range wireless connection, i.e. Bluetooth. In order for the mobile terminal to connect to the external terminal via Bluetooth, the terminals must be with range of one another. The maximum range for Bluetooth has often been quoted as being no more than 10m. Thus, a Bluetooth connection naturally has a threshold range. Consequently, D3 provides for an embodiment where the external device and mobile device are in proximity.
80. Secondly, D3 discloses the provision of an icon on the screen of the mobile device or external device based on the received sync data. Thus, D3 teaches the display of an icon relating to the application to be synchronised when the devices are in proximity. It is noted that D3 does not mention a plurality of icons or the positioning of the icons. However, the arrangement of the icons in my view does not contribute to providing an inventive step. As I have noted above, the use of GUIs as a means of human-computer interaction was exceedingly well known at the priority date. Such interfaces allow for the arrangement of icons in a myriad of ways. To display an icon on the relevant device in the manner as claimed would be trivial to one of skill in the art given the CGK.
81. The applicant’s next points were that D3 does not disclose or teach determining which of the first or second application were recently utilised and then prioritising the display of the icon associated with the most recently used application. The examiner contends that such features would be obvious to one of skill in the art given the state of the CGK. There is nothing in the CGK as set out above that points toward such functionality. Moreover, when I review the art of record, they generally relate to transferring a task or application between devices, with the transfer being achieved by passing state information on the actively running application to the second device. There is nothing in the art of record that points towards determining which of the first or second application were recently utilised and then prioritising the display of the icon associated with the most recently used application.
82. As previous noted, the examiner stated that the person of skill in the art would be motived to include such features in the system of D3. The applicant rebutted this assertion by noting that there is no motivation in D3 or in the knowledge directly available to the person skilled in the art that would direct the skilled person to the claimed invention. Moreover, there is no special inducement to arrive at the claimed invention from reference D3. The applicant’s understanding is that D3 is configured to allow continuity from one terminal to another based on user input. That is, a user manually decides to synchronize a web browser or chat messenger on an external terminal with the mobile terminal. There is no teaching in D3 regarding a determination on what application was most recently active, as D3 transmits the data corresponding to the application that is currently active.
83. D3 discloses displaying an icon on the screen of the mobile device or external device based on the received sync data. The icon corresponding to the webpage, or the messenger, is included in the sync data provided by the external terminal (D3 paragraphs [84] and [85]). D3 states that the user chooses in advance what is to be displayed on the display (D3 paragraph [0082]). Based on this I am inclined to agree with the applicant’s understanding; the sync data provided in this instance specifies the program and/or icon to be display. Additionally, D3 allows for the user to specify what information is to be displayed by the receiving device. That is D3 teaches providing information that dictates the display of a particular icon and program at the request of a user. Consequently, D3 teaches away from making a determination at the receiving device (i.e. the electronic device per claim 1) about which of a first or second application was recently active and displaying the appropriate icon based on this determination.
84. Moreover, there is nothing in the information before me to suggest that the determining which application was more recently utilised formed part of the CGK at the priority date of the present application. Even if such a determination formed part of the CGK, there is nothing to suggest that the making such a determination would be utilised in the provision of continuity.
85. I am therefore satisfied that the invention as claimed involves an inventive step in view of the disclosure of D3 when considered together with the CGK.
Sufficiency subsection 40(2)(a)
86. Subsection 40(2)(a) requires that a complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. The requirements of subs 40(2)(a) must be satisfied at the time of filing the complete specification. That is the relevant date for assessing compliance with the necessary disclosure requirements is the filing date of the instant application.
87. Guidance on the assessment of sufficiency under subs 40(2)(a) was provided in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (“CSR”) as follows
i.construe the claims to determine the scope of invention as claimed,
ii.construe the description to determine what it discloses to the person skilled in the art, and
iii.decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
88. An expanded approach was taken in Evolva SA [2017] APO 57 (“Evolva”). Per the decision in Evolva, the third consideration of enablement set out in CSR was assessed according to the following criteria:
iv.Is it plausible that the invention can be worked across the full scope of the invention?
v.Can the invention be performed across the full scope of the claims without undue burden?
89. The approach taken in CSR and Evolva, received approval in Cytec Industries Inc. v Nalco Company [2021] FCA 970 at [145]- [147] and Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540 at [352]- [369].
90. Additionally underpinning the subs 40(2)(a) consideration is the premise that the PSA who has read the specification knows what is claimed, what is to be achieved, and is approaching the task with the aim of making the invention work per Kirin-Amgen Inc. v Hoechst Marion Roussel Ltd [2005] RPC 9 at [128].
91. The claims at their broadest interpretation are directed to a method for enabling a user to seamlessly transition a task or application from one device to another based on their proximity. The option to transfer the task to a receiving device from an external device is presented as an icon on the display screen of the receiving device. The icon displayed is based on a determination which of a first or second application was most recently executed/active on the external device.
92. The examiner contends that the specification is insufficient as it does not provide enough information regarding the process of passing the information automatically from one device to another without user action to enable continuity. The examiner also states that the specification does not provide sufficient detail on how the state information is passed.
93. The applicant in reply to these assertions notes that claim 1 is written from the perspective of one electronic device only, so that all that is required is reception of usage information, without this necessarily being automatic. The applicant also points to the fact that additional techniques determining relationships between applications are provided in a co-pending US application that is referenced at paragraph [0244] of the specification. The cross-referenced application clearly and completely discloses the process of passing information automatically from one device to another without user action to enable continuity and how the state information is passed.
94. Firstly, with respect to the applicant’s reliance on the cross-referenced application, a specification should provide a full description of the invention without reference to other documents. If the material in a cross-referenced document is required to enable the invention to be performed in any of the forms that are claimed, then the relevant material should be included in the specification in order to satisfy the requirements of subs 40(2)(a) (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [21] and [58]).
95. Generally speaking, an amendment to include the relevant cross-referenced material is allowable, provided that the cross-referenced document is open to public inspection (OPI), and the cross-referenced document was published on or before the OPI date of the instant application under consideration. In the present case the cross-referenced document would seemingly meet these criteria. It was therefore open to the applicant to amend the current specification to insert the relevant materials. It would also seem that such an amendment would render the examiner’s sufficiency objection moot.
96. However, whether the cross-referenced material is present or not, the question to be answered remains the same; namely, does the specification provided sufficient information to enable one of skill in the art to perform the invention? This assessment will necessarily involve determining whether the cross-referenced material is necessary to perform invention.
97. As I have noted above, the specification refers to the use of Bluetooth and BTLE to enable the interconnection of the devices when in proximity (see the instant application at paragraphs [0263]-[0266]). As previously stated, these technologies are standardised technologies both being covered in Bluetooth 4 under the IEEE 802.15 family of standards. These standards provide for the automatic exchange of data between devices through the use of what is known as the “advertising process”. In this process, a Bluetooth device sends out advertising packets and a listening Bluetooth device can then send out a scan response request, which then facilities the advertising device to send out scan response data. Using this process, the devices are able to exchange small amounts of data in the advertising or scan response payloads. The data included in the payloads can be customised through the use of the Generic Attribute Profile (GATT) and Attribute Protocol (ATT) specified by the standard. Such a process is broadly discussed at paragraph [0264]; i.e. devices poll for other compatible devices that are in-range and listening for advertising packets of other devices.
98. In the present case I do not believe that it would be necessary for the PSA to rely on the material in the crossed-referenced application to facilitate the data exchange as claimed. The invention as described uses well-known and well-established communication standards for such interconnection. Moreover, these standards provide for automated data exchange. As the PSA would be readily familiar with these standards, it also follows that they would have little difficulty in facilitating the data exchange in the manner as claimed.
99. In relation to the issue of undue burden, the question to be answered is whether the specification requires the skilled addressee to carry out tests or developments that go beyond mere routine or reasonable trial and error involving no inventive step (see Eli Lilly & Co. v Human Genome Sciences, Inc. [2008] EWHC 1903 (Pat); (2008) RPC 29 at [241] and Halliburton Energy Services Inc v Smith International (North Sea) Ltd (2006) RPC 2.)
The specification gives a number of examples of the type of state information that may be recorded by the devices when running an application. For example, the states include conditions such as showing a particular screen, a mode or configuration setting in which the application is operating, the condition of displaying a particular location within a navigational hierarchy of the application, the condition of displaying a particular part of or location within a document, etc. Additional examples of the state information are provided at paragraph [0238]. Furthermore, the passing of state information between devices was a common-place process required to enable synchronisation of the applications. Moreover, the use of the Bluetooth connection provides for the exchange of data payloads that can contain customised data.
Armed with the information in the specification, and given the state of the art at the relevant date, I do not believe it would be a burdensome task for the skilled addressee to insert the required data into a data packet for transmission over a suitable wireless connection such as Bluetooth or the like.
Consequently, I am of the opinion that the specification provides a clear enough and complete enough disclosure for the purposes of subs 40(2)(a).
Conclusion
I have found that the examiner’s objections are not sustainable. I am satisfied that the invention as presently claims involves an inventive step over the art of record. I am also satisfied that the specification as filed provides a clear enough and complete enough disclosure to enable the skilled address to perform the invention.
I allow the proposed amendments up to and including amendment item 7 as proposed on 23 February 2021. I accept the application.
Neil Miller
Delegate of the Commissioner of Patents
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