British Telecommunications Public Limited Company v Computer Generation Incorporated

[2002] APO 36

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 697499 in the name of British Telecommunications Public Limited Company

Title:          Data Processing System for Communications Network

Action: Opposition under section 59 of the Patents Act 1990 by Computer Generation Incorporated.

Decision:          Issued            .

Abstract

Invention relating to the collection of data on inter-network communication traffic for billing purposes, including the correction or patching of invalid data.

Inventive step; evidence found insufficient to support a finding that the claimed invention was obvious in light of common general knowledge and a specific instance of prior art information. Grounds in relation to section 40 also dismissed. Direction that the application proceed to sealing.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 697499 by British Telecommunications Public Limited Company and opposition by Computer Generation Incorporated under section 59 of the Patents Act 1990.

BACKGROUND

1. Patent application 697499 was filed on 31 March 1994 by British Telecommunications Public Limited Company (BT) as a PCT application (PCT/GB94/00706) designating Australia. It claims an earliest priority date of 31 March 1993. On 8 October 1998 the application was advertised accepted and notices of opposition were filed by Telstra Corporation Limited (Telstra) and Computer Generation Incorporated (CGI) on 8 January 1999.

1. Following the completion of the evidentiary stages, the matter came to hearing in Canberra on 6 September 2002. BT was represented by Mr David Yates SC (instructed by Mr Peter Heathcote, patent attorney, Baldwin Shelston Waters, Sydney) and CGI by Mr Adrian Ryan of counsel (instructed by Mr Ross McFarlane, patent attorney, Freehills Carter Smith Beadle, Melbourne). Telstra withdrew its opposition on the day preceding the hearing.

THE SPECIFICATION

1. The invention apparent from the patent specification in suit generally relates to the monitoring of telecommunications traffic that passes between distinct telecommunications networks and more particularly to collecting data, including billing data, at an interconnection point in a first network on calls arising in a second network. In a increasingly deregulated and competitive telecommunications market this allows network owners to obtain independent billing information for calls entering their network from a competing operators network so, for example, accounts under the charging agreement between the operators can be audited.

1. A significant feature of the described data collection system is its capability to analyse the call data obtained and to process any invalid data records identified. This includes at least the substitution of amended or default values for invalid data but, according to a preferred embodiment, can include a "knowledge based" process of:

• first repairing invalid data if this is possible;

• if not, seeking to patch unrepairable data by applying default values;

• if unpatchable because, for example, this would disrupt an audit trail, checking for a transient routing reference model mismatch in which case the data can be placed in a suspend file for later processing; and

• if the data can not be repaired, patched or otherwise recovered, outputting it to a sump so that it can be used for systems maintenance and development.

1. The complete specification includes 18 claims of which claims 1, 6, 10 and 15 are independent. Claim 1 reads as follows:

"1. A process for collecting and processing communication records in a first communications network, the records concerning communication instances, wherein the network includes at least one point of connection to a second communications network, the process comprising the steps of:

i)         collecting data at a data access point at said point of connection, said data concerning a communication instance arising in an originating network other than said first network, and creating a respective data record for each communication instance, each such record comprising route information identifying the originating network and at least one parameter measurement susceptible of billing, such as duration, with respect to said communication instance;

ii)        transmitting said records into a data processing system which includes a data analyser;

iii)        validating data in said records followed by analysing invalid data in,

iv)       the analysis of invalid data identifying data which can potentially be set to a default value;

v)        setting the data to a default value; and

vi)       processing each said record to generate billing information."

DECISION

1. Despite the considerable extent of the evidence filed in this matter, the opponent's case as presented at the hearing is quite simple and limited to the questions of obviousness and non-compliance with section 40.

1. CGI's case on obviousness is essentially this:

1. A Bell Communication Research Inc. special report, "BOC Notes on the LEC Networks - 1990" was issued in March 1991 and was, according to a declaration by Ms Armanasco, available to the public from Duke Universities Libraries in the USA on or shortly after 1 July 1992. Mr Ryan further asserted that this was information that the skilled addressee could "be reasonably expected to have ascertained, understood and regarded as relevant" as required by section 7(3).

1. According to the opponent's witness Professor Berry the BOC document discloses all of the features of claim 1 except, "analysis of invalid data identifying data which can potentially be set to a default value" and "setting data to a default value"

1. However, according to at least Professor Berry and another declarant Professor Harris, Telecom Australia operated, prior to the relevant priority date, a telephone traffic measurement system called CENTOC (Centralised Occupancy measurement). This system was described in the Telecom Journal of Australia, Vol 33, No. 3, 1983 and was otherwise said to be have been common general knowledge in the art in Australia. It most relevantly is said to involve the collection of traffic data where "corrected data is then validated against parameters specified in the reference file" and consequently to involve data correction.

1. Mr Ryan submitted that, as a result, when one combines features of the CENTOC system with the disclosure of the BOC document "there is no inventive step involved in the process of claim one beyond that which is disclosed in the combination". In similar vein Professor Berry states that "In my opinion, the document 'BOC Notes on the LEC Networks - 1990', when combined with the common general knowledge of a skilled person in the field of telephone traffic monitoring in Australia prior to March 1993, discloses all of the features of claims 1-5 of the opposed application".

1. Put in this way it is clear that the opponent's case is unsustainable. It is simply not good enough to say that a claimed combination is obvious because its features can, with the benefit of hindsight, be plucked from elements of common general knowledge and a particular prior art document. The question is rather "was the combination obvious in the light of the relevant knowledge and information as it existed at the priority date?" and in this regard:

"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."
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286

Furthermore, in the case of a combination, it is the selection of integers out of potentially many possibilities that needs to be shown to be obvious, not the mere existence of those integers within the prior art or within common general knowledge. (Olin Mathieson v Biorex (1970) RPC 157 at page 187)

1. Even if I were to assume that the skilled person could "be reasonably expected to have ascertained, understood and regarded as relevant" the BOC document and that, in addressing the problem identified in the present application, the skilled person would see it as a partial solution to the problem, there remains the fundamental question of whether that person would take, as a matter of course, selected elements of that disclosure and of their general knowledge of the CENTOC system to solve the problem addressed in the present application. There is essentially no evidence that addresses this line of inquiry and accordingly I do not see how the opponent could possibly succeed in making out a case of obviousness. I also have considerable doubts as to what was generally known in the field about the CENTOC system and whether that knowledge included the setting of default values for invalid data. In this regard, if the Telecommunication Journal article reflects what is known, then I would tend to agree that CENTOC involved compensation of data for known measurement factors and the rejection of invalid data but not the substitution of default values for invalid data.

10.The onus clearly lies with the opponent to make out its case and, finding that the evidence is insufficient to support a conclusion that the claimed invention lacks an inventive step, I dismiss this ground of opposition.

11.The other ground argued was that the complete specification did not comply with section 40 in that the claims were not clear and were not fairly based. In relation to issues of clarity, I was referred to Dr Berry's declaration and particularly the matter referred to at paragraph 26. Nevertheless I find that any instances of ambiguity in the claims are clearly resolvable by a skilled addressee, as in fact the declarants for both parties seem to have done.

12.The fair basis point pursued at the hearing was that certain of BT declarants focus on the use of expert systems as a distinguishing feature over the prior art but that this feature was not defined in a number of claims. It is a point perhaps dependant on what in the context can be considered an "expert system" but in any event fair basis is a matter that arises on the content of the complete specification. The expert evidence referred to in this context is not directed to what on the face of the specification is essential to the invention described but to what those experts generally see is the advance over previous knowledge. As a result I am not satisfied that the claims lack fair basis and consequently the opponent must fail on this ground also.

CONCLUSION

13.The opponent has failed to provide evidence sufficient to support a finding that the claimed invention lacks an inventive step on any reasonable basis. Grounds in relation to section 40 have also not been proved and accordingly I dismiss CGI's opposition. As I am otherwise unaware of anything on the file, including the withdrawn Telstra opposition, that would prohibit the grant of a patent, I direct the application be sealed after 30 days from the date of this decision.  If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

COSTS

14.Costs should follow the event. Consequently, I award costs against Computer Generation Incorporated in relation to its opposition.

Philip M Spann
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   : Baldwin Shelston Waters, Sydney

Patent attorneys for the opponent   : Freehills Carter Smith Beadle, Melbourne