Australian Postal Corporation v David John Holton - [2016] APO 65

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Australian Postal Corporation v David John Holton [2016] APO 65

Patent Application: 2012200309

Title:Method and System for Electronic Delivery of Essential Mail Items

Patent Applicant:  David John Holton
Opponent:  Australian Postal Corporation
Delegate:  M. G. Kraefft
Decision Date:  4 October 2016
Hearing Date:  14 July 2016, in Melbourne

Catchwords: PATENTS – section 59 – opposition to grant of a patent – whether claimed invention is novel – prior use in Denmark – information of Danish electronic delivery system deemed at once perceived, understood and able to be practically applied by person skilled in the art in Australia - whether claimed invention has inventive step – whether Danish system and information pertaining to Danish system could be reasonably expected to have been ascertained before the priority date - whether invention a manner of manufacture – whether claims are clear – opposition failed on all grounds.

Representation: Counsel and patent attorney for the applicant: Dr Mark Summerfield of Watermark.
Counsel for the opponent: Mr Ian Horak.
Patent attorney for the opponent: Mr Anthony Selleck of Allens.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012200309

Title:Method and System for Electronic Delivery of Essential Mail Items

Patent Applicant: David John Holton
Date of Decision: 4 October 2016
DECISION
The opposition fails on all grounds raised in this opposition.
Subject to appeal, I direct the application proceed to grant.
Costs in accordance with Schedule 8 awarded against the opponent, Australian Postal Corporation.
REASONS FOR DECISION
BACKGROUND

David John Holton (“the applicant”) filed patent application 2012200309 on 19 January 2012. The application is a divisional application based on application 2007204609. That application in turn is based on two Australian provisional applications, 2006900287 and 2006901450. The earliest priority date of the present application is 19 January 2006. Application 2012200309 was advertised accepted on 22 January 2015.
Australian Postal Corporation (“the opponent”) filed a notice of opposition on 22 April 2015. A statement of grounds and particulars followed on 22 July 2015.
The parties completed the evidentiary stages on 24 March 2016.
The present application is similar to an Australian innovation patent 2007100419, now ceased, that was also based on the two above-mentioned Australian provisional applications. Furthermore the innovation patent was the subject of an opposition between the same parties as in the present case. The decision in the innovation patent opposition (“the previous decision”) is Australian Postal Corporation v David John Holton, [2010] APO 22. Significant aspects of the subject matter in that case overlap with the present case.
SPECIFICATION
The specification describes the alleged invention as relating to a method and system for electronically delivering financial statements, invoices and other essential mail items. The stated problems with conventional mailing of invoices and statements and with the electronic delivery of the same are consistent with the description in the innovation patent specification. That description is discussed at paragraphs [6] – [9] of the previous decision.
The present specification ends with 16 claims. Aside from the omnibus claims at the end, there are three independent claims. They are claims 1, 8 and 13. These claims are recited below.
1.A method of providing a trusted electronic mail service by a system including a delivery server having an associated database containing subscriber details the method comprising the steps of:
receiving a registration application from a prospective subscriber, the registration application including predetermined minimum subscriber information and being associated with corresponding proof-of-identity data and/or documentation;
authenticating the identity of the prospective subscriber using the proof-of-identity data and/or documentation;
creating for the authenticated subscriber a unique subscriber account, and storing corresponding subscriber details in the database;
the delivery server subsequently receiving from the subscriber a nomination of at least one service provider which the subscriber considers to be a source of essential mail items, and storing said nomination in the database in association with the subscriber details;
establishing a trusted communications channel between the delivery server and a service provider computer system;
the delivery server receiving mail data for delivery to the subscriber from the service provider via said trusted communications channel;
the delivery server verifying that the subscriber wishes to receive a mail item corresponding with the mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and
in the event that said verification is successful, the delivery server delivering the mail item to an electronic mailbox of the subscriber.
8.A delivery server for providing a trusted electronic mail service to a subscriber, the delivery server including:
at least one processor;
a database containing subscriber details including at least one nominated service provider from which the subscriber wishes to receive mail items in electronic form, wherein the subscriber details are obtained by:
receiving a registration application from the subscriber, the registration application including predetermined minimum subscriber information and being associated with corresponding proof-of-identity data and/or documentation;
authenticating the identity of the subscriber using the proof-of-identity data and/or documentation;
creating for the authenticated subscriber a unique subscriber account, and storing corresponding subscriber details in the database; and
receiving from the subscriber a nomination of at least one service provider which the subscriber considers to be a source of essential mail items, and storing said nomination in the database in association with the subscriber details;
at least one data communications interface operatively coupled to the processor; and
at least one storage medium operatively coupled to the processor, the storage medium containing program instructions for execution by the processor, wherein the program instructions cause the processor to execute the steps of:
establishing via the data communications interface a trusted communications channel with a service provider computer system;
receiving mail data for delivery to the subscriber from the service provider via said trusted communications channel;
verifying that the subscriber wishes to receive a mail item corresponding with the mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and
in the event that verification is successful, delivering the mail item to an electronic mailbox of the subscriber.
13.A method of a subscriber receiving an electronic mail item from a service provider, the method including the steps of:
the subscriber submitting a registration application including predetermined minimum subscriber information along with associated corresponding proof-of-identity data and/or documentation, whereby the identity of the subscriber is authenticated using the proof-of-identity data and/or documentation, a unique subscriber account is created, and corresponding subscriber details are stored in a mail service database;
the subscriber transmitting, to a delivery server associated with the database, a nomination of at least one service provider which the subscriber considers to be a source of essential mail items, wherein the delivery server stores said nomination in the database in association with the subscriber details; and
the subscriber subsequently receiving a mail item from the nominated service provider via an electronic mailbox,
wherein delivery of the mail item to the subscriber is (sic) comprises the delivery server executing the steps of:
establishing a trusted communications channel with a service provider computer system;
receiving mail data for delivery to the subscriber from the service provider via said trusted communications channel;
verifying that the subscriber wishes to receive a mail item corresponding with the mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and
in the event that verification is successful, delivering the mail item to the electronic mailbox of the subscriber.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent listed four grounds of opposition. The grounds were that the claimed invention was not a manner of manufacture, was not novel, did not involve an inventive step and that the specification did not comply with subsections 40(2) or 40(3) of the Patents Act 1990. The opponent further provided particulars to support each of these grounds of opposition. At the hearing the opponent pressed the grounds of lack of manner of manufacture, lack of novelty, lack of inventive step and lack of clarity.
EVIDENCE IN SUPPORT
The opponent filed evidence in support from Mr Giovanni Belli and Mr Mark Ames. At the time of his declaration Mr Belli was employed as Head of eCommunication by PostNord Danmark A/S, previously Post Danmark A/S. His declaration (“Belli #3”) expands on features of that organisation’s “e-Boks” system which he described in two earlier declarations in respect to the innovation patent opposition. Those two declarations, dated 16 April 2008 (“Belli #1”) and 6 April 2009 (“Belli #2”), are exhibits with Mr Ames’ declaration in the present opposition.
At the time of his declaration Mr Ames was an Associate Director with a multinational professional services firm in Singapore. At the priority date of the present application, Mr Ames was employed by Telstra in Australia as a security architecture consultant. Prior to that, he operated his own technology and security consulting company and held various roles in areas of information technology (“IT”) project management, security and risk management. In his declaration (“Ames #1”), Mr Ames principally discussed terminology used in the claims of the present application, the background art and the relevance of prior art to the present case.
EVIDENCE IN ANSWER
The applicant filed evidence in answer from Dr Roger Clarke. At the time of his declaration Dr Clarke had amassed more than 40 years of professional, consultancy and academic experience in the IT industry. In a technical respect Dr Clarke’s skills and experience particularly lay in databases, data communications, security, portals, email, webmail and Internet payments. In his declaration (“Clarke #1”), Dr Clarke principally presented his understanding of the terminology of the claims, the background art and the relevance of the prior art cited by the opponent.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Mr Ames. In this evidence (“Ames #2”), Mr Ames principally expanded on his evidence in support in respect to the claims terminology and the background art in response to Dr Clarke’s evidence. Furthermore, where Dr Clarke had identified points of difference between the claimed invention and the prior art, Mr Ames either did not accept they were substantive points of difference or, if they were, then there was either implicit disclosure of the differences or the differences would have been obvious to the person skilled in the art at the relevant time.
APPLICABLE LAW
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012 (“the Amendment Act”), there are substantial changes to the Patents Act 1990. The date of effect of those changes was 15 April 2013. The application of the Amendment Act in the present case depends on the date of the request for examination. The applicant filed his request for examination on 10 April 2013. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
This means the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted (F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Section 18 of the Patents Act 1990 relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and ………
Subsection 40(3) at the relevant time was as follows.
(3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
INTERPRETATION OF TERMS
As in the innovation patent opposition, there was discussion in the present case in the evidence and at the hearing on several terms used in the specification.
“Trusted Electronic Mail Service” and “Trusted Communications Channel”
At [27] of Ames #1, Mr Ames expressed the opinion that the word “trusted”, when appearing in the claims, was not being used in a technical sense to refer to an electronic mail service or communications channel that could be relied on to enforce particular security policies. He based this conclusion on the absence in the specification of any references to security policies regarding implementations of the claimed invention. Moreover Mr Ames noted that the implementations illustrated in Figures 8B, 8C and 8D are of communication over a “trusted communications channel” between a delivery server and a service provider. The described and illustrated options are, respectively, by way of the File Transfer Protocol (“FTP”), Hyper-text Transfer Protocol (“HTTP”) and an email protocol such as the Internet standard Simple Mail Transfer Protocol (“SMTP”). Mr Ames stated that none of these protocols necessarily utilise encryption of the data that are to be communicated, but the communications channels are nevertheless referred to as “trusted”. Consequently Mr Ames adopted an ordinary meaning rather than a technical meaning, namely something in which trust is reposed (Ames #1 at [29]). For example, a trusted communications channel is one that is trusted by the communicating parties to deliver services in a reliable and consistent manner.
At [6.5] of Clarke #1, Dr Clarke stated that, for a channel to be trusted, each party needed to have concrete assurances through technical safeguards, legal safeguards such as warranties and indemnities, and organisational safeguards such as institutional and brand reputation. The safeguards needed to provide adequate protections against all relevant risks, not only in relation to reliability and consistency, but also against interception, non-delivery and masquerade. Dr Clarke noted for example at [6.7] that the patent application addressed at length, at page 8 line 28 to page 9 line 24, the need for safeguards against masquerade in the form of authentication of the service provider.
It would be clear from the specification that secure transmission protocols are not mandatory. Furthermore the claims define a trusted communications channel only between the delivery server and the service provider. Nonetheless the specification at a minimum contemplates an environment of some form of protections and assurances for users of the system. Technical features include password-based authentication and digital signatures for service providers at page 9. Additionally, to reinforce the technical features and enhance a sense of trust for consumers, the claimed method and the delivery server may be operated or backed by a trusted entity such as a national postal service provider (page 5 line 29 to page 6 line 3). In this context, Mr Ames’ definition of a trusted communications channel being one with reliable and consistent service delivery is somewhat insufficient. It would seem that provisions for users to have faith in the entities they are dealing with are also part of the efficacy of the system. I see little reason to depart from the approach I adopted in the previous decision at [39]. That is, a trusted communications channel is one where the sender’s bona fides can be accepted.
“Essential” Mail Items
Both parties linked the essentiality of mail items to subscriber nominations of service providers. That is, if the subscriber nominated a service provider then mail items from that provider were deemed essential to the subscriber. Dr Clarke went further to suggest that for each particular subscriber, some mail items from any particular service provider may be essential but others may not be. Hence a subscriber may choose to receive none, some or all items from each service provider (Clarke #1 at [6.16]). The former position may have some merit. See for example claim 1 lines 13-15 and page 6 lines 20-27. Dr Clarke’s position though appears to lack support from the specification. There appears to be minimal, if any, discussion that subscribers may determine receipt of only a subset of mail items from a nominated service provider. The overwhelming position from the claims and from the descriptive part of the specification is that if the subscriber has nominated a service provider then the subscriber considers that provider to be a source of essential mail items, and all mail items from that provider will be delivered electronically. It may also be noted that the claimed verifying process does not distinguish individual mail items for electronic delivery or otherwise, but distinguishes on the basis of service provider nominations stored in the database.
The above may somewhat explain the applicant’s treatment of the expression “essential mail items” in at least the independent claims. In those claims the expression “essential mail items” is used just once in each claim. Subsequent references in those claims are to a “mail item” omitting the word “essential”. This may be contrasted with the claims in the innovation patent where the word “essential” was associated with “mail items” and “mail data” throughout. In the present case the applicant’s position may suggest the repeated use of the word “essential” with “mail items” would be redundant. On the other hand, in the previous decision I found there was more to an “essential” mail item (at [33]). The opening paragraph in the innovation patent, as in the present case, refers to financial statements, invoices and other essential mail items. I concluded in the previous decision that a broader definition of “essentiality” should prevail. That is, essential mail items are defined by particular classes of items exemplified by financial statements and invoices. I see insufficient reason to adopt a different position in the present case.
The consequence of this is that a plain reading of the claims renders any mail items, essential and inessential, from a nominated service provider being delivered in electronic form to the subscriber. Put another way, the mere consideration by the subscriber that a nominated service provider is a source of essential mail items is no barrier to the claimed process that includes essential and inessential mail items, such as promotional material and even junk mail, being delivered by the delivery server from the nominated service provider to the subscriber in electronic form.
“Proof-of-Identity” Data and/or Documentation
This term was not part of the claims in the innovation patent. At page 17 lines 27-30 of the specification, suitable details for validation of the subscriber’s identity include passport details, tax file number, social security number, date of birth and/or other information or documents suitable for validating or authenticating identity. I conclude the term in the present claims simply defines data provided by a subscriber that verifies the identity of the subscriber.
PERSON SKILLED IN THE ART

In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, [2000] FCA 980, Finkelstein J stated at [70] and [71] that the skilled addressee is the person to whom the patent is addressed and who must construe it. Such person works in the art or science with which the invention is connected or is likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. Finkelstein J further noted various descriptions given to the skilled addressee. These included the “uninventive skilled worker in the particular field” (Leonardis v Sartas No 1 Pty Ltd, (1996) 67 FCR 126) and the “person skilled in the art” (Genentech Inc v Wellcome Foundation Ltd, (1989) 15 IPR 423).
The opponent indicated that Mr Ames was an expert in computer technology and security having held various roles in IT project management, security and risk management since at least 1995. On the other hand, the opponent stated that Dr Clarke had not worked in software development or system analysis since 1983, well before the advent of the Internet email technologies the subject of the application, and has not been involved in developing solutions for the delivery of financial statements, invoices or other essential mail items. The opponent submitted the evidence of Mr Ames should be preferred.
The applicant contended that neither Mr Ames nor Dr Clarke were the relevant person skilled in the art. Both had qualifications and experience far in excess of the hypothetical person skilled in the art. Thus both expert witnesses were well-placed to provide evidence as to relevant factual information. The applicant noted though that the person skilled in the art is a “non-inventive worker in the field” (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No. 2), [2007] HCA 21 at [56]).
The applicant further submitted that Mr Ames’ evidence did not make any attempt to identify the person skilled in the art as to the characteristics of the relevant person skilled in the art. On the other hand, Dr Clarke clearly identified the person skilled in the art as a professional in the field of information systems, having a corresponding background and training in relevant business and technical skills, and familiarity with an established project management approach (Clarke #1 at [5.4]). Where there was disagreement between Mr Ames and Dr Clarke, the applicant submitted that Dr Clarke’s evidence should be preferred due to his continuous and extensive experience in consultancy, teaching, postgraduate supervisory roles and technical publication in Australia.
The alleged invention broadly relates to electronic subscriber-business communications and specifically the electronic delivery of financial statements, invoices and the like. The invention seeks to deal with the problems of delay, cost and environmental impact with conventional mailing systems and the problems of security and trust with electronic delivery systems. Clearly the field would require technical skills and experience in data transmission and data security over the Internet or other intermediary, and skills and experience in the business applications of networked computer systems. Mr Ames’ experience before the priority date in the fields of IT project management, security architectures and risk management for a range of corporate and government clients is clearly relevant in the present case. Dr Clarke’s characterisation of the field of the invention as being in the discipline of information systems and requiring a combination of business, technical and project management skills and experience is similarly appropriate. Moreover Dr Clarke’s experience, up to the priority date in both consultancy and academic capacities, in databases, data communications, security, email and electronic business, amongst other things, is also clearly relevant in this case. While I have some reservation that both of the above declarants’ standing appears to be pitched somewhat above that of the ordinary “non-inventive worker in the field” (Lockwood), I also regard them as clearly capable of providing relevant factual information of the state of the art at the priority date. At this general level, I see insufficient reason to give either party’s evidence significantly more weight over that of the other.
NOVELTY
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co, [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited, [1972] RPC 457 at 486). In a similar vein, what a prior art document teaches is to be distinguished from what might be “included” or “encompassed”. “A prior broad disclosure thus may not be sufficient ‘in the absence of the skilled addressee understanding or perceiving’ the later claimed invention therein” (Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No. 3), [2011] FCA 846 at [180]).
Subsection 7(1) also refers to prior art information made publicly available in a single document or through doing a single act for novelty considerations. In respect to doing an act, two types of actions often come to mind in this area. They are prior use, as the opponent has indicated, or prior oral disclosure.
Prior use requires a relatively high standard of proof. The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application [1970] RPC 103. At page 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135. Towards the end of section 8.38 Waddell J. stated:
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation.”
Similarly in Aspirating IP Limited v Vision Systems Limited, [2010] FCA 1061, (2010) 88 IPR 52, at [200], Besanko J stated:-
“The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”
In Damorgold Pty Ltd v JAI Products Pty Ltd, [2015] FCAFC 31, Yates J at [94]-[96] commented on the essential features of the invention (a spring-assisted roller blind mechanism in that case) only being discernible by disassembling the product. Where the evidence pointed to no potential customer having disassembled the product and no complete examination having taken place, then the features of the product were not disclosed to customers. At [96], Yates J stated that the relevant question is not whether the product was made publicly available. In applying the notion of “enabling disclosure”, as explained in Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd, (1995) 33 IPR 1, neither the mere public availability of a product, nor its use in public, necessarily means that the features of the product have been made publically available.
The opponent principally relied on the following prior art.
E-Boks System
The e-Boks system is discussed in some detail at [73] and [74] of the previous decision. The evidence of Mr Belli referred to at those paragraphs corresponds with his evidence presented in the present opposition as exhibits to Mr Ames’ evidence in support. In Belli #1 at [7], the e-Boks application was first launched in 2001. The overall eCommunication solution, including an enhanced ‘ePosthus’ front end, was launched in 2003 (Belli #2 at [22] – [25] and exhibit GB-4 press releases). Notably also, Danish state employees had been required since November 2005 to use e-Boks since this was the exclusive system of delivery of salary statements (Belli #2 at [38] – [42]). As in the previous decision at [80], I am satisfied the e-Boks system was in prior use in Denmark before the priority date of the present application.
In the light of Damorgold, some discussion took place at the hearing in respect to the information that would have been conveyed to the person skilled in the present art by the above prior use. It was accepted by the parties that the legislation at the relevant time defined “prior art base” as information made publicly available through doing an act, whether in or out of the patent area (Schedule 1 of the Patents Act 1990), but the information conveyed was to be assessed from the perspective of the person skilled in the art effectively in Australia.
At [54] of Damorgold, Bennett J stated:-
“… the test for anticipation by use is no less stringent than the test for anticipation in a published document and also requires enabling disclosure of the claimed invention. Further, information made publicly available by the doing of an act must be such as to enable a person skilled in the relevant art to put the claimed invention into practice if it is to amount to an anticipation of a patent claim.”
Further at [57] of Damorgold:-
“In order to destroy novelty, the information must enable the notional person skilled in the art at once to perceive, to understand and to be able practically to apply the discovery without the need to carry out further experiments.”
In respect to the issue of information being publicly available, in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd, [2008] FCAFC 139, the Full Federal Court listed several principles at [124] that emerged from a number of prior cases. The first was:-
“The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it.”
The above would appear to indicate that it is inconsequential whether a person skilled in the art in Australia had seen the e-Boks system in operation in Denmark before the priority date. Rather the relevant consideration is what information would have at once been perceived, understood and able to be practically applied, from the actual prior use in Denmark, by the person skilled in the art in Australia. I have little doubt that the descriptions of e-Boks presented in evidence in this case are reflective of what users of e-Boks would have experienced of e-Boks when using the system before the priority date. Furthermore I have little doubt that the person skilled in the art of information systems in Australia would have comprehended e-Boks’ functionality, as indicated in the evidence, before the priority date and at once perceived, understood and been able to practically apply the e-Boks information without the need for further experiments.
At [75] of the previous decision, I found the description of e-Boks and the associated eCom Mailswitch or Broker to be equivalent to much of the claimed invention in the innovation patent in respect to a delivery server having a database containing subscriber details and receiving subscriber nominations of at least one service provider from which the subscriber wished to receive essential mail items in electronic form. At [78] of the previous decision, trusted communications channels between the delivery server and the service provider were also deemed to be disclosed by e-Boks. Similarly the receipt of essential mail data by a delivery server and the verification that a subscriber wished to receive corresponding mail items in electronic form from the service provider by checking stored subscriber profiles and nominations were also found, at [79] of the previous decision, disclosed in e-Boks. The opponent referred to these aspects as the operating steps. There are some slight differences of these aspects between the independent claims of the present application and the innovation patent. On the other hand, I consider that e-Boks similarly discloses the operating steps of the presently claimed invention as well.
The additional claimed features in the present case principally relate to processes for subscriber registration, identity (“ID”) authentication and account creation. The opponent referred to these aspects as the establishment steps. In e-Boks, there were at least two ways for subscriber registration to be performed. Both involved the use of digital identification (Belli #3 at [9]). The first was with the presentation of a digital signature, obtained from a third party, and the use of a centralised CRS number, (Belli #3 at [8] - [10], and e-Boks Terms and Conditions at exhibit GB-3). The CRS number was associated with individuals in Denmark through a Centralised Civil Register, a register that had been used particularly by government agencies in Denmark for some decades (Belli #3 at [8] and [10]). The second was through a subscriber ‘Net-ID’ provided by the banking sector (Belli #3 at [9] and [14]). I would regard both processes as substantially the same as the submission by a subscriber of a registration application including predetermined minimum subscriber information and being associated with corresponding proof-of-identity data, as claimed. In both cases, completed registration in e-Boks led to an account being created and stored in the database in e-Boks against the subscriber’s unique ID (Belli #3 at [11], [12] and [15]). The stored registration profile would then be stored in e-Boks in accordance with the subscriber’s preferences.
The remaining claimed feature of the independent claims apparently missing from e-Boks is the ID authentication of the prospective subscriber using proof-of-identity data and/or documentation. While the e-Boks Terms and Conditions at exhibit GB-3 stipulated the use of the CRS number by e-Boks to identify subscribers as the correct recipients of communications from authorities that the subscribers had registered for relevant communications, it would appear the authentication of the identity of subscribers occurred outside e-Boks prior to them being registered in e-Boks. That is, e-Boks operated on the basis that the identity of subscribers had been previously authenticated as evidenced by subscriber presentation to e-Boks of either a CRS number and digital signature, or a ‘Net ID’.
In evidence and at the hearing, there was discussion as to whether the establishment steps, particularly the authentication of subscribers’ identities, by a third party was within the scope of the present claims. In respect to claim 1 for example, the opponent submitted there was no requirement for the delivery server to perform those steps. This may be correct for claims 1 and 13. On the other hand the requirement would apply to claim 8, the subject of which is a delivery server. Moreover the opponent submitted that the system providing the trusted electronic mail service, as claimed in claim 1, may encompass multiple entities providing that service. Additionally the opponent submitted that the e-Boks process together with external ID authentication may be equivalent to the doing of two or more related acts within the ambit of subsection 7(1) of the Patents Act where the relationship between the acts is such that the person skilled in the present art would treat them as a single source of information.
In the present case, the establishment steps follow an integrated, methodical approach in all claims. That is, a registration application is received from a prospective subscriber of an electronic mail service. The registration application includes predetermined minimum subscriber information and is associated with corresponding proof-of-identity data and/or documentation. The subscriber’s identity is then authenticated using the proof-of-identity data and/or documentation. Subsequently a unique subscriber account is created for the authenticated subscriber. Moreover these establishment steps then link to the first of the operating steps by the delivery server subsequently receiving from the subscriber a nomination of at least one service provider. I think the plain interpretation of this process is that a single entity performs this integrated sequence of steps. Also the above CRS and Net ID authentication processes are not necessarily restricted or uniquely for use with e-Boks registration. This would appear to make it difficult to find that the person skilled in the present art would have treated the two acts of external ID authentication and e-Boks processing as a single source of information. Even if I am wrong with these approaches, it may be noted that the claimed sequence is different from that in the case of e-Boks. As indicated above, e-Boks processed registration of subscribers on the basis of a subscriber’s identity having already been authenticated, as evidenced by the subscriber presenting a CRS number, a digital signature or a ‘Net ID’.
I conclude the claimed invention is novel over the e-Boks system.
US Patent Application 2005/0165680 - Keeling et al
The Keeling specification is first discussed at [44] of the previous decision. That specification broadly described a system and method of registering a user with an electronic bill payment system offered by a messaging service provider. At [48] of the previous decision, the Keeling specification was stated to disclose the capability that a user may designate which vendors and financing sources the user has a relationship. Thus the Keeling specification disclosed the nomination by a subscriber of at least one service provider. The receipt and storage of subscriber nominations by a delivery server, the verification of subscriber wishes in respect to mail items from nominated service providers, the delivery of essential mail items, for example invoices in Keeling, and the use of trusted communications channels were also found, at [49] – [55] of the previous decision, to be disclosed in Keeling.
As discussed above in respect to the e-Boks system, the additional claimed features in the present case of processes for subscriber registration, ID authentication and account creation similarly require further scrutiny in respect to Keeling. At [44] of the previous decision, I found the Keeling specification disclosed registration of the user with the electronic bill payment system. On the other hand this registration process is to register existing users, already in the host system, for electronic bill payment. Notably the intermediary host interfaces with a partner data store and compares the partner data store with an internal store. As a result, a user common to both the partner data store and the internal store may be identified. Such a user may then be prompted to enrol in a message-based transaction system, to facilitate electronic bill payment using the message-based transaction system. The presence of user data already in the internal store may suggest that subscriber registration, and perhaps account creation as well, had previously occurred with the intermediary host. On the other hand, the Keeling specification is not definitive on these points. In other words, there are no clear and unmistakable directions in Keeling of these aspects of the establishment steps as claimed in the present case.

The Keeling specification mentions authentication in the context of authenticating messages, such as banking electronic mail messages, from a transaction host (at [0031]). Specifically at [0073], the intermediary host is configured to perform one or more authentication operations on the transaction information, package the transaction information in a transaction and generate a trusted transaction message. There is no mention at this point of identity authentication of subscribers as claimed in the present case. In respect to users in the partner data store and the internal store, the Keeling specification further mentions verification operations that may be performed to confirm that perceived common identities are in fact the same user ([0029] and [0120]). At [0120], additional information such as phone numbers, addresses, names, occupation and account information may be compared to establish confidence. On the other hand, this falls short of the claimed ID authentication using proof-of-identity data and/or documentation in the present case. The specification, at the top of page 7, exemplifies identity documents or data as passports, birth certificates, social security numbers, healthcare cards, identity cards and so forth. While at least the independent claims are not limited to such examples, proof-of-identity data nonetheless encompasses significantly more than recorded phone numbers, addresses, names and so forth.
I find the establishment steps as claimed are not disclosed by Keeling. The particular claimed sequential combination of these steps is similarly not disclosed. I conclude the claimed invention is novel over the Keeling specification.
INVENTIVE STEP
Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (Subsection 7(3) at the relevant time).
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:
"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."
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2], [2007] HCA 21, (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50] – [52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Alphapharm at [41], the High Court stated:
“The claim is for a combination, 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 Alphapharm 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.”
Common General Knowledge
Opponent’s submissions
The opponent submitted that the following was common general knowledge in the field at the relevant time.
Email
The Internet and email were extremely widely used. A person skilled in the art would have been aware of email standards, and specific authentication and security standards related to email such as authentication, integrity controls, encryption and key management and secure communications (Ames #1 at [55]). It was also well known that email clients were equipped with spam filters. These were implemented using a combination of ‘whitelists’ and ‘blacklists’. An email whitelist was a list of email addresses, domains and/or Internet Protocol (“IP”) addresses from which email would always be allowed (Ames #1 at [56] & [57]).
Mailhouses
Mail-houses were well known. They were organisations that produced and delivered standard documents such as invoices and statements. The process involved the service provider transmitting a segmented data stream to the mail-house’s computer system. The mail-house computer system maintained a document template that was populated by the incoming data stream. The completed documents were then placed into the postal system (Ames #1 at [58]).
Internet-based bill presentment services
Internet-based bill consolidation services were well known. These services allowed billers to electronically deliver invoices to customers through the Internet. Examples of such services that were available in Australia were BPay View and Postbillpay.
Secure communication systems
These systems have been used widely since electronic communications systems were first deployed (Ames #1 at [65]). The present specification notes, at page 8 lines 21-25, that connection between the delivery server and the service provider might be via the File Transfer Protocol (“FTP”), Secure Shell (“SSH”) File Transfer Protocol (“SFTP”) or any other suitable protocol. The specification then discusses secure protocols, such as SFTP, allowing for encryption. The opponent thus submitted that the specification makes it plain that the particular means of establishing a trusted connection may be implemented by any suitable means known in the common general knowledge.
Identity authentication
It was commonplace, and in some cases a legal requirement, for organisations to check the identity of prospective customers. At [69] of Ames #1, Mr Ames outlined Telstra’s practice of verifying the identity of new customers before providing them with a mobile phone or Internet service. At the hearing the opponent further elaborated on the commonality of identity authentication before the priority date. From [72] of Ames #1, identity authentication was an essential prerequisite to opening a wide range of services including a post office box, safety deposit box with a bank, online bill payment account, bank account, amongst other things. The opponent similarly mentioned the banking system’s 100 point check and the identity requirements of Internet service providers (“ISPs”) before accounts could be set up.
Applicant’s submissions
The applicant acknowledged through Dr Clarke’s evidence that all of the above features may be accepted as having been known, and in some cases even well known, at the relevant time. For example, Dr Clarke acknowledged the obligations on financial institutions and telecommunications companies to authenticate the identities of some entities that they dealt with (Clarke #1 at [8.17]). On the other hand the applicant submitted, also through Dr Clarke’s evidence, that many such features, and relevantly the technical details, were not common general knowledge to the relevant person skilled in the art. For example Dr Clarke accepted that some examples of Internet-based bill presentment services existed in Australia before the priority date (Clarke #1 at [8.8]). On the other hand Dr Clarke also expressed the view at [8.8] that relevant technical knowledge was possessed by only a small number of specialised persons. Dr Clarke supported this opinion by referring to a contemporary quotation (Exhibit RC-11) from the Reserve Bank of Australia (“RBA”) and noting that, at the relevant time, only 14 billers were signed up with BPay and 36 billers with Australia Post and that several new players had only very recently entered the bill payments market.
Conclusions on Common General Knowledge
Dr Clarke appears to have placed significant emphasis on what detailed knowledge persons skilled in the art had of technical details, architectures, standards, practices and internal features and internal mechanisms related to the above systems. On the other hand, while there is clearly significant technology required to implement the claimed electronic mail service, Dr Clarke’s suggested levels of technical understanding or application are not borne out by the claimed invention. Rather the claimed invention appears to be at least equally as much conceptual as it is technical. This would appear to be supported by the earlier characterisation of the person skilled in the art as one requiring relevant technical skills as well as skills related to the business applications of networked systems.
Turning to the example of Internet-based bill presentment services, Dr Clarke accepted at [8.8] that BPay is an instance of Internet-based bill presentment services. He also stated that BPay was well-known to consumers at the relevant date at the level of detail needed by them. It follows that, amongst persons skilled in the present art, BPay must have been commonly known. It may be that the take-up rate at the relevant time by billers may still have been relatively low as exemplified by the RBA exhibit. On the other hand that would not detract from the BPay concept having been commonly known to persons skilled in the art at the relevant time. While BPay, and particularly BPay View, and Postbillpay are just a few examples, I am satisfied that Internet-based bill presentment services were common general knowledge in the art at the relevant time.
I make the same conclusion in respect to the other items suggested by the opponent to have been common general knowledge.
Whether There is an Inventive Step
Common General Knowledge Alone
The opponent submitted the operating steps of the claimed invention were essentially how a whitelist operated. The applicant submitted that an email whitelist differed from the claimed invention in that a whitelist simply does not block email from particular addresses. On the other hand, the applicant stated the claimed invention establishes whether a source can be trusted and only delivers mail if it has been established that the mail has come from a nominated, trusted service provider. While the claimed invention, in its broadest form, does not specifically define the establishment of trust in the source, the claims at least define the establishment of a trusted communications channel between the delivery server and a service provider. As mentioned earlier, that means the sender’s bona fides can be accepted. In any case, this is something more than merely the operation of a whitelist. A user may establish a whitelist without regard to the bona fides of chosen addresses. Similarly the operating steps of the claimed invention also include at least a verifying step that the subscriber wishes to receive a mail item in electronic form that corresponds with mail data received by the delivery server.
The opponent further relied on Mr Ames’ evidence (Ames #1 at [83]-[87]) to state that all the method steps of the claims were part of the common general knowledge and the person skilled in the art well knew that they could combine those steps to provide a trusted email service to subscribers. While the above-described items of common general knowledge may relate individually to varying extents with the steps of the claimed invention, it is a different matter as to whether the piecing together of those items was a matter of routine at the relevant time to come to the claimed invention. In this respect for example, conventional email systems in the main did not require ID authentication using proof-of-identity data prior to the creation of email accounts. It is also telling that the opponent merely stated that the person skilled in the art could combine all the claimed steps to provide a trusted email service, not that it was routine to have combined them so.
I conclude the claimed invention has an inventive step over the common general knowledge considered alone.
E-Boks System
For inventive step, subsection 7(3) at the relevant time stated that information, made publically available in a document or through doing an act, is prior art for this purpose if a skilled person could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded [the information] as relevant.
Mr Ames acknowledged that he had not heard of the e-Boks system beforehand (Ames #1 at [80]). Nonetheless the opponent suggested the person skilled in the present art in Australia would have looked at offerings from other countries’ postal systems. Even if this were so, there is insufficient evidence to explain the motivation for the person skilled in the art to particularly have looked at the Danish system. I am not convinced that the person skilled in the art in Australia could, before the priority date, be reasonably expected to have ascertained e-Boks.
As to documentary information about e-Boks, Mr Ames noted that e-Boks solved the same problem addressed by the claimed invention, namely to provide an alternative email system for the delivery of mail items that were delivered through the conventional postal system. Mr Ames concluded that, if as an aspect of a consultancy engagement he were conducting research into existing systems already on the market, he would have no doubt that he would readily and immediately have located information about e-Boks (Ames #1 at [81]). This contention appears to be tainted with hindsight. Moreover the contention is based on a presumption of a specific assignment that required the investigative work that would have led to finding information about e-Boks, not what the ordinary person skilled in the art could be reasonably expected to have done before the priority date. Notably, the opponent did not present any information about e-Boks in evidence other than material supplied by Mr Belli, who would have clearly been in the advantageous position of accessibility to relevant information as an employee of Post Danmark.
The applicant’s Dr Clarke made extensive efforts to find relevant information about e-Boks. He conducted Internet searches of various web sites, academic literature and case studies as well as his own archives with limited success (exhibit RC-12). Dr Clarke further contacted a colleague in Denmark. This colleague recalled using e-Boks as a case in an Executive MBA program and having students write about it around 2003-2004. Operational characteristics about e-Boks were not mentioned. The colleague further provided an e-Boks slide presentation from 2006 (exhibit RC-12). This presentation appeared to contain a mix of marketing material and only some general description of e-Boks’ functionality. In the main, I conclude on the available evidence that information about the operating characteristics of e-Boks was relatively scarce before the priority date.
I find that the person skilled in the present art in Australia could not be reasonably expected to have ascertained either e-Boks itself or relevant information about e-Boks before the priority date. Accordingly I cannot find that the claimed invention lacks an inventive step over the e-Boks system.
Keeling et al
Mr Ames stated a familiarity with patent documents from his time at Telstra. This familiarity arose primarily from assessments at Telstra of the infringement risks presented by existing patents (Ames #1 at [76]). Dr Clarke also referred to patent documents in his evidence. In Clarke #1 at [8.4], a US patent is referred to for support of a view that email whitelists were not part of the common general knowledge at the relevant time. In any case the information systems field and specifically the computer security and electronic document delivery fields are highly technological and I would expect persons skilled in the art to generally have had regard to patent literature. The Keeling specification is clearly in the same field as the present case. I am prepared to accept the skilled person in the present art could, before the priority date, be reasonably expected to have ascertained, understood and regarded the Keeling document as relevant.
Earlier I found that the Keeling specification contained no clear and unmistakable directions of the establishment steps of the claimed invention. More specifically, while the intermediary host in Keeling may have subscriber data in an internal store, the Keeling specification did not clearly disclose the subscriber registration, authentication and account creation steps as claimed. In many systems these steps may have been inevitable or necessary precursors to enable subscribers to interact with the systems. Banking systems may be one example of systems where the establishment steps would appear to have been necessary precursors. As mentioned earlier, Dr Clarke acknowledged the obligations on financial institutions and telecommunications companies to authenticate the identities of some entities that they dealt with. On the other hand, one should not presume that computer systems generally or electronic mail services specifically, before the priority date, required all the establishment steps as precursors for a subscriber to use the system.
The Keeling specification discusses the online banking field in conjunction with online messaging tools at [0003]. Moreover Keeling discusses and illustrates embodiments involving the authentication of banking electronic mail messages and enabling bank customers to visually distinguish such messages as trusted transaction messages [0031]. In the case of a bank, I find that is an entity that would have performed, for all customers or subscribers, the claimed establishment steps of subscriber registration, identity authentication and account creation for authenticated subscribers. The present case though defines the establishment steps in a trusted electronic mail service. In the case of Keeling, an entity such as America Online is embodied as an electronic mail or messaging service provider.
Dr Clarke suggested that Keeling’s electronic mail service was incidental (Clarke #1 at [7.8]) to the intended specific purpose of assisting a service provider to make connections between those of its clients that are vendors and those of its clients that are customers of those vendors (Clarke #1 at [7.6]). Moreover, where the vendor in Keeling is a bank, it would be clear that the establishment steps, at least for the bank’s purposes, would have been performed prior to and external of Keeling’s electronic mail service. Hence, as with e-Boks, external pre-authentication of subscribers’ identities followed by any subscriber registration process and account creation process with Keeling’s electronic mail service is out of sequence compared with the claimed invention. Moreover, the need for a messaging service provider to perform all of the establishment steps, particularly identity authentication using proof-of-identity data and/or documentation, is not readily apparent in the present case. This suggests the person skilled in the art would not have been directly led from Keeling as a matter of course to try these aspects of the claimed invention and thus the claimed invention would have an inventive step over Keeling.

Even if I am wrong on the above point, the following would appear noteworthy. In the light of the presence of subscriber data in the internal store in Keeling, one may fairly presume some form of subscriber registration has occurred with the messaging service provider. As mentioned earlier though, Keeling may also perform verification operations to establish confidence that an identified user common to both the partner and internal data stores is the same person in reality [0120]. Comparisons of phone numbers, addresses, names, occupation and account information are mentioned in Keeling as ways to establish confidence. On the other hand, as found earlier, the use of proof-of-identity data for ID authentication of subscribers, as claimed in the present case, encompasses significantly more than comparisons of recorded phone numbers, addresses, names and so forth.
The comparisons in Keeling are merely about determining whether the above-exemplified data in two different data stores in respect of an individual would support a conclusion that the data in each store is in reality in respect to the same person. This is clearly an inferior check of identity than the use of proof-of-identity data as claimed in the present case. It would appear that the required confidence level in Keeling is significantly less than the requirements in the present case. This suggests that the Keeling specification would have taught away from the claimed invention at the relevant time. In other words, there would have been no or at least insufficient motivation for the person skilled in the art in the present case to have been directly led as a matter of course from Keeling to carry out ID authentication using proof-of-identity data as claimed.
I conclude the claimed invention has an inventive step over the Keeling specification.
MANNER OF MANUFACTURE
The opponent cited the Commissioner of Patents v RPL Central Pty Ltd decision, [2015] FCAFC 177, without substantive elaboration of the relevance of that decision to the present case. The opponent submitted further that the application merely defined a standard method of sending electronic mail utilising a whitelist. Furthermore each of the independent claims were in effect two separate steps, an establishment step and an operation step, with no working interrelationship between the two steps, and moreover the claims were a mere collocation of known integers, each performing its own separate and well-known function independently.
The applicant submitted that each of the two steps identified by the opponent itself comprised multiple steps and that there was no suggestion that either of these compound steps, taken separately, was not a manner of manufacture. In any event, there were three inter-operating components between the establishment and operation steps that made up the solution provided by the claimed invention. Identity authentication facilitated the creation of a unique subscriber account, which enabled service provider nominations which provided for the selective delivery of desired essential mail items.
The threshold requirement for a patentable invention is that an alleged invention must be apparent on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, [1995] HCA 15, (1995) 183 CLR 655). The present specification describes the desirability to provide a system for electronic delivery of essential mail items that is operable over publicly accessible data networks to maximise convenience and accessibility while not compromising security, amongst other things. The claimed invention defines a subscriber authentication process, the acquisition and storage of subscriber nominations of service providers, the establishment of trusted communications channels between a delivery server and a service provider, a verification process that the subscriber wishes to receive a mail item from a particular service provider and, upon successful verification, the delivery of the mail item to an electronic mailbox of the subscriber.
I am satisfied that the requisite threshold of inventiveness is apparent on the face of the present specification. I conclude the presently claimed invention is for a manner of manufacture.
S40(3) - CLARITY
The opponent referred to Mr Ames’ evidence (Ames #1 at [141] and [142]) to submit that claim 6 was not clear. Mr Ames was unable to ascribe any meaning to claim 6 due to claim 6 apparently imposing no additional limitations beyond those of claim 1. In particular claim 6 refined the verifying step of claim 1 by specifying that the delivery server checks the subscriber nominations in the database to confirm that the subscriber wishes to receive essential mail items from the service provider. Mr Ames was unable to discern any technical difference between comparison of subscriber details and nominations in claim 1, and checking of subscriber nominations in claim 6. I concur and would note that the same substantive issue also arose in the previous decision (at [40] - [42]). While claim 6 also includes the expression “essential mail item” in the verifying step while claim 1 simply refers to “mail item” in this step, I would further note that the claimed process is incapable of treating essential mail items any differently from inessential ones since the comparison or checking is done simply on the basis of nominated service providers. I conclude that claim 6 is of substantially the same scope as claim 1. On the other hand a claim is not rendered fatal on this outcome alone.
The opponent similarly referred to Mr Ames’ evidence (Ames #1 at [144]) to argue that claim 7 lacked clarity. Mr Ames raised an issue of whether the “customer” in claim 7 was the same entity as the “subscriber” in claim 1. Taking this point further, Mr Ames stated that it was unclear what the “corresponding customer details held in the database” and the “customer details provided by the service provider” in claim 7 were referring to and how the latter was used in the verification routine (Ames #1 at [144] and [146]). Furthermore Mr Ames surmised that if the subscriber and the customer were the same entity, and similarly for the subscriber details and nominations, and the customer details held in the database, then claim 7 was unclear because it did not impose any additional limitation beyond that of claim 1 (Ames #1 at [145]).
Claim 7 is appended to dependent claim 6 and indirectly back to claim 1. It is correct that claim 7 contains the first reference to a customer and customer details as distinct from a subscriber and subscriber details. On the other hand, in reading the specification as a whole and by giving the specification a purposive construction (Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc., [1988] FCA 399, (1988) 13 IPR 385 at 400 [14]), it would be readily apparent that the customer and the subscriber, in the present context, are the same entity. Similarly the reference “customer details” in claim 7 may be equated with “subscriber details” in claim 1. Mr Ames suggested the customer details provided by the service provider in claim 7 may refer to the identification of the subscriber as the recipient of the mail item (Ames #1 at [145]). On the other hand, the latter definition is not found in claim 1. In that claim, the service provider merely provides the mail data. It may be that subscriber identity such as the subscriber’s name may be embedded in the mail data. In context though, I regard the feature in claim 7 of the service provider providing customer details, for comparison with corresponding customer details in the database, as an additional feature. Accordingly claim 7 is not a redundant claim. Moreover the comparison in claim 1 is with subscriber details and subscriber nominations, stored in the database associated with the delivery server, to verify the subscriber’s delivery wishes. The use in claim 7 of customer details provided by the service provider, for comparison with customer details in the database, is the use of additional data, from the service provider, for an additional comparison. I am satisfied with the clarity of claim 7.
CONCLUSION
On the available evidence, I have found that the claims of the application are novel, have an inventive step, are for a manner of manufacture and are clear. I conclude the opponent has been unsuccessful on all grounds of opposition raised against the application.
Subject to appeal, I direct the application proceed to grant.
COSTS
Both parties sought costs in this opposition. Costs normally follow the event. In the present case I see insufficient reason to depart from that practice.
The opponent has been unsuccessful on all grounds of opposition raised in this case. I award costs in accordance with Schedule 8 against the opponent, Australian Postal Corporation.
M. G. Kraefft
Delegate of the Commissioner of Patents