Bear Solutions (Australasia) Pty Ltd v Bermel Business Systems - [2014] APO 45

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Bear Solutions (Australasia) Pty Ltd v Bermel Business Systems
[2014] APO 45
Innovation Patent: 2009100939

Title:Bermel Secure Self Serve Public Access Solution

Patentee:  Bermel Business Systems
Opponent:  Bear Solutions (Australasia) Pty Ltd
Delegate:  Matt Kraefft
Decision Date:  26 June 2014
Hearing Date:  11 June 2014
Catchwords:  PATENTS – opposition to Section 104 amendment – proposed amendment would result in claims of the specification not in substance falling within the scope of claims of the specification before amendment - proposed amendment would result in claims that are not clear - proposed amendment not allowable under Subsection 102(2) - amendment refused.

Representation: Patentee: Baxter IP, Sydney.
Opponent:Mr Lee Pippard and Ms Ayesha Lee, patent attorneys of Spruson & Ferguson, Sydney.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovation Patent: 2009100939

Title:Bermel Secure Self Serve Public Access Solution

Patentee: Bermel Business Systems
Date of Decision: 26 June 2014
DECISION
The proposed amendment would result in claims of the specification not in substance falling within the scope of the claims of the specification before amendment. The proposed amendment would also result in claims that are not clear.
The proposed amendment is therefore not allowable under Subsection 102(2).
The amendment is refused.
REASONS FOR DECISION
BACKGROUND

Bermel Business Systems (“the patentee”) filed innovation patent 2009100939 on 14 September 2009. The patent claims priority from an Australian provisional application, 2009903974, filed on 21 August 2009. Patent 2009100939 was notified as certified on 1 September 2011.
Following certification and a request for re-examination from a third party, the patent underwent re-examination. The patentee proposed an amendment to the description and claims during re-examination under Section 104 and leave to amend was subsequently granted. The granting of leave to amend was advertised on 19 July 2012.
Bear Solutions (Australasia) Pty Ltd (“the opponent”) filed a notice of opposition on 18 October 2012 to the allowance of the amendment. A statement of grounds and particulars in support of the opposition followed on 15 January 2013.
The parties completed the evidence-in-support, evidence-in-answer and evidence-in-reply stages on 30 January 2014.
The opponent was represented in person at the hearing. The patentee relied on written submissions.
THE SPECIFICATION
The specification, as certified, related to a system for authorising the use of a service. The specification noted the emergence of the “public office” that allowed customers shared access to office services, such as photocopying, printing, faxing and the like. Customers would typically prepay for a service and receive a receipt or authorisation number for the use of the service. Customers would then be able to activate a service terminal.
The specification stated that such systems required staff supervision. In an attempt to remove staff intervention, some arrangements allowed office services for pre-approved or authorised customers. However customers may not have wished to partake in a time consuming registration process, especially for low volume or one-off transactions.
At certification, the claimed invention was stated to provide a system for authorising the use of a service which would overcome or substantially ameliorate at least some of the deficiencies of the prior art, or to at least provide an alternative.
The specification, as amended, ends with five claims defining the claimed invention. Independent claim 1 reads as follows with removed text in square brackets and struck through, and new text underlined.
1.A system for [~~authorising the~~] providing unattended use of [a] one or more service terminals, the system comprising:
a self-serve kiosk[;] in communication with the one or more service terminals across a network;
[~~one or more service terminals in communication with the self-serve kiosk;~~]
a credit bearing media payment receiving [~~device~~] means in communication with the self-serve kiosk [~~across the network~~]; and
[~~wherein the self-serve kiosk is adapted to:~~
~~receive request data representing a request for the use of the service;~~
~~deduct credit as payment for the use of the service from a credit bearing media via the payment receiving device; and~~
~~send authorisation data to one of the one or more service terminals representing authorisation for the use of the service~~
2. ~~A system as claimed in claim 1, further comprising:~~]
an electronic funds transfer [~~system adapted to load credit onto~~] means in communication with the credit bearing media payment receiving means [~~in accordance with an electronic funds transfer~~].
STATEMENT OF GROUNDS AND PARTICULARS
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. In the present case, the grounds of opposition are governed by the Patents Act in force before 15 April 2013.
The opponent’s grounds of opposition were that the amended claims did not in substance fall within the scope of the claims before amendment, that the amended claims claim matter not in substance disclosed in the certified innovation patent, the granted innovation patent or the provisional application, and that the amended claims were not clear. The opponent provided particulars against each of these grounds.
EVIDENCE-IN-SUPPORT
The opponent served evidence-in-support from Mr Kier Morrison. Mr Morrison is employed as a general manager of the opponent. He has a diploma in marketing, has worked in the printing services industry since 2000 and has attained practical experience in computing services and integration in the industry since 2000. Mr Morrison generally has indicated in his evidence how the amended claims have broadened in scope from the claims before amendment on his understanding of the terms used. Mr Morrison has also raised clarity issues with the amended claims.
EVIDENCE-IN-ANSWER
The patentee served evidence-in-answer from Mr Nicholas Milne. Mr Milne is a patent attorney of the firm representing the patentee. He is the patent attorney for the patentee in respect to the present patent. Mr Milne has suggested that the inclusion of the electronic funds transfer feature from previous claim 2 into amended claim 1 has narrowed the scope of amended claim 1 compared to the previous claim 1. He has indicated that the narrowed scope is evident by the amendment successfully traversing the prior art cited during re-examination. Mr Milne has also provided the basis in the body of the specification as filed for each feature of amended claim 1.
EVIDENCE-IN-REPLY
The opponent served evidence-in-reply from Mr Morrison. In this evidence, Mr Morrison principally countered the assertions of bias and lack of expertise raised by Mr Milne in his evidence in answer.
Unless otherwise indicated, references in this decision to Mr Morrison’s evidence are to the evidence-in-support.
PERSON SKILLED IN THE ART
The evidence is relatively light on a definition of the relevant art in this case and who the appropriate person skilled in the art would be. At the hearing the opponent submitted the art was in systems integration, and specifically between devices such as service terminals (for example printers), kiosks, electronic funds transfer (“EFT”) devices and secure delivery systems. I broadly concur with this description of the relevant art in this case.
The opponent also submitted the above description of the relevant art is high level and not focused at the details of individual devices, and that Mr Morrison was clearly skilled at that level, that is, at systems integration. Again I concur with that position.
ALLOWABILITY OF AMENDMENT
At the relevant time, that is before 15 April 2013, the provisions of Section 102 of the Patents Act pertaining to this case were:-
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(2A) For the purposes of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent – after the specification has been accepted; or
(b) in relation to an amendment proposed to a complete specification relating to an innovation patent – after the Commissioner has made decisions under paragraphs 101E(a) and (aa) in respect of the patent.
Section 101E related to certification of innovation patents and stated:
If:
(a)after examining a patent under section 101B, the Commissioner decides in writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and
(aa) after so examining the patent, the Commissioner also decides in writing that he or she considers that:
(i)a ground for the revocation of the patent (other than a ground in respect of paragraph 18(1A)(b)) has not been made out; or
(ii)any such ground has been removed; and
(b)the patent has not ceased under section 143A;
the Commissioner must: ……
WHETHER THE AMENDED CLAIMS WOULD NOT IN SUBSTANCE FALL WITHIN THE SCOPE OF THE CLAIMS BEFORE AMENDMENT
The patentee submitted that the amendment narrowed the scope of the claims by incorporating into amended claim 1 the feature of the electronic funds transfer system from the former dependent claim 2. The patentee relied on evidence in answer, at [22], [23] and exhibit NM001, of a table of where all the features of amended claim 1 were sourced from, noting the incorporation of former claim 2 into amended claim 1. The patentee further relied on evidence at [24] that the narrowed scope of the amended claims is evident by those claims successfully traversing the prior art cited during re-examination.
The patentee’s evidence and submissions on the above point overlook one fundamental aspect. What is required to successfully traverse prior art is to incorporate one feature that is novel and, in this case, is innovative. Ordinarily that would narrow the scope of claims but only if other features of the previous claims remain in the claims. It is a different matter entirely if a novel and innovative feature is incorporated, yet at the same time other features of the previous claims are removed from the claims by amendment. That may clearly lead to broadening of the scope of the claims.
The opponent noted that previous claim 1’s subject of a system for authorising use of a service had been omitted from amended claim 1. Furthermore the functionally interrelated features, within the body of previous claim 1 and related to such authorisation, had also been removed. The opponent noted these interrelated features as the self-serve kiosk being adapted to:-
(a)receive request data representing a request for use of the service;
(b)deduct credit as payment for the use of the device from a credit bearing media via the payment receiving device; and
(c)send authorisation data to one of the one or more service terminals representing authorisation for use of the service.
The opponent submitted these omissions resulted in a broadening of the scope of amended claim 1.
The patentee referred to first principles of law that the proper test of Section 102(2)(a) is whether something that would not have been infringed by the claim prior to amendment would now be infringed by the amended claim (Distillers Co. Ld.’s Application (1953) 70 RPC 221)). I accept this. The patentee then submitted that the opponent had applied a literal interpretation of the amended claim 1 without construing it in the light of the specification as a whole. When properly construed, the patentee submitted that claim 1 defined a self-serve kiosk in communication with one or more service terminals and that the self-serve kiosk was also in communication with a credit bearing payment receiving means. The point made by the patentee was that the reason for the communication must be applied. That is, in this case, the self-serve kiosk would not let one use the service unless it was paid for. In other words, the self-serve kiosk authorised the use of the service.
The principles outlined by the patentee are sound. The specification should be construed as a whole and a purposive rather than a purely literal construction should be applied. See for example Décor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385 at 400, a decision from which the principles of construction were cited with apparent approval in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company, [2005] FCAFC 224. The opponent also cited and accepted these principles. On the other hand, the patentee in this case has taken those principles to an extreme. Another principle, cited by the opponent, is that what is not claimed is disclaimed. The words of the claim define the monopoly, and it is not legitimate to narrow or expand the monopoly as fixed by the words of a claim by adding glosses drawn from other parts of the specification (Décor (supra)).
The omission from claim 1 of the subject of a system for authorising use of a service and its replacement for providing unattended use is a clear retraction of the nature of the system. It may even be argued that unattended use could also amount to completely unauthorised use of a service. I think the now claimed system’s suitability for unattended use does not come close to being within the scope of the previously defined suitability for authorising use.
Moreover, amended claim 1 defines a system for providing unattended use of service terminal(s) merely comprising three further items. Those items are the self-serve kiosk, the credit bearing media payment receiving means and the EFT means. The only defined operation of and relationship between these features is that they are in communication. There are no functional features defined of the three items themselves or of what actually may transpire in communication. The patentee has effectively submitted that the functional features of previous claim 1 be inferred in amended claim 1 by mere association of the items with one another. However this position would be contrary to the principle from Décor above that it is not legitimate to import glosses. The position is also contrary to section 40 which requires the claims to be clear and that they define the invention. The inferences relied upon by the patentee in this case could not fairly be said to provide the amended claim with a clear monopoly for which protection is sought. I think the amended claim, on the face of it, is clear on the interrelationship of the defined features. Amended claim 1 is wholly silent about the functional features of previous claim 1 recited above at (a) to (c) which the self-serve kiosk is adapted to perform. I conclude that the amended claim 1 is broader in scope than the previous claims on the above points.
The proposed dependent claims also omit these points and are therefore also broader in scope than the previous claims.
The opponent further pointed out the omission from amended claim 1, compared to previous claim 1, of the payment receiving device being in communication with the self-serve kiosk across the network. I would similarly conclude as above that amended claim 1 is broader in scope than the previous claims on the omission of this network feature. I would note the network feature has now been included in amended claim 1 as the communication means between the self-serve kiosk and the one or more service terminals. In the light of the specification as a whole, the latter would appear to be the more correct arrangement. See for example Figure 1. Neither party gave significant consideration or made significant representation on the possibility that the amendment of the network feature was to overcome an obvious mistake. At the hearing the opponent indicated an acceptance that this alteration may have been for the purpose of correcting an obvious mistake. I would note that if the patentee could establish that this alteration was for the purpose of correcting an obvious mistake then the provisions of Subsection 102(3) may apply to circumvent the other requirements of Section 102 on this point.
WHETHER THE AMENDED CLAIMS CLAIM MATTER NOT IN SUBSTANCE DISCLOSED
The above heading is broadly akin to the words of Subsection 102(1) at the relevant time. From the opponent’s statement of grounds and particulars though, these words appeared under the listed ground, “Section 102(2)(b), section 40(3)”. The opponent’s particulars under this heading principally related to the amended claims lacking fair basis, that is, alleged non-compliance with Subsection 40(3) as this subsection stood at the relevant time. The patentee’s evidence and submissions answered the opponent’s points as fair basis issues. The patentee did not appear to have any problem with any potential confusion of the opponent’s discussion of seemingly different subsections of Section 102 under this ground.
The opponent initially submitted that several terms in amended claim 1 have no direct support in the specification as certified. At the hearing the opponent principally maintained there is no support for a system for providing unattended use of one or more service terminals. The opponent indicated that the specification as certified provided that the self-serve kiosk and the EFT device may be left unattended but that the service terminals are not described as being unattended. Mr Morrison moreover, at [35], relied on the Macquarie Dictionary to apply the meaning to the term “attend” as “to be present at”. In this way he described unattended use of a service terminal as involving use without any person being present at the service terminal. In a literal sense this would be impossible.
In its submissions, the patentee has referenced pages and line numbers of the specification where support exists for providing unattended use of service terminals, amongst other devices. In the main these references relate the ability to use the services without managers’ or staff supervision.
A reading of the specification, as certified, as a whole (Décor (supra)) would appear to resolve the opponent’s point. The alleged invention overall is directed to a systems solution that removes the need for supervisory intervention when users are using services. Furthermore Mr Morrison at [37] acknowledged the meaning he considered to apply in the field of networked printing. That meaning was that the word “unattended” in that context meant that a person can use a service without attendance of a staff member of the service provider. I concur with that meaning in the present case. While the words “unattended use” may not be specifically used in the certified specification’s description in respect to service terminals and in a purely literal sense may have no sensible meaning with such terminals, I conclude the phrase that is the subject of amended claim 1 is fairly based on a purposive construction.
WHETHER THE AMENDED CLAIMS ARE NOT CLEAR
Also in respect to Subsection 40(3), the opponent made a further submission under the ground of lack of clarity in respect to unattended use of service terminals. That is, it is not clear how the system of amended claim 1 actually provides for unattended use of a service terminal. This seems similar to an earlier point that the claims need to define the invention.
Mr Morrison’s evidence, at [45], noted that, with the exception of the kiosk being in communication with the service terminal, the other integers are silent of any working interrelationship with the service terminal. As the opponent put it at the hearing, the promise which is the subject of the amended claim is not achieved by any features of the claim.

As mentioned earlier, amended claim 1 defines four items merely in communication. No further functional features of the items are defined. In particular, there is nothing defined of features that specifically enable the claimed system to provide for unattended use of service terminals. I conclude that amended claim 1 is not clear.
The opponent objected to amended claim 5 on the basis there is no interrelationship defined for the media interface with other claimed features. I concur with this and would also add that the same applies to the media data bearing device also defined in claim 5. Both of these items are defined in complete isolation of any other items defined in the preceding claims 1-4. I conclude that amended claim 5 is not clear.
CONCLUSION
I conclude the proposed amendment would result in claims of the specification not in substance falling within the scope of the claims of the specification before amendment. Furthermore, I conclude the proposed amendment would result in claims that are not clear.
The proposed amendment is therefore not allowable under Subsection 102(2).
I refuse the amendment.
COSTS
Both parties sought their costs of these proceedings. I see no reason to depart from the usual practice that costs follow the event. The opponent has been successful in this opposition. I award costs in accordance with Schedule 8 against the patentee, Bermel Business Systems.
M G Kraefft
Delegate of the Commissioner of Patents