Daon Enterprises Limited - [2022] APO 70

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Daon Enterprises Limited [2022] APO 70

Patent Application: 2016266041

Title:METHODS AND SYSTEMS FOR CAPTURING BIOMETRIC DATA

Patent Applicant: Daon Enterprises Limited

Delegate:Felix White

Decision Date: 24 October 2022

Hearing Date: Written submissions filed on 26 July 2022

Catchwords: PATENTS – section 45 – examiner’s objection of lack of inventive step – all claims lack inventive step in view of D3 – similar considerations likely to apply in view of D1– reg 13.4(g) invoked

Representation: Patent attorney for the Applicant: Wallington-Dummer

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016266041

Title:METHODS AND SYSTEMS FOR CAPTURING BIOMETRIC DATA

Patent Applicant: Daon Enterprises Limited
Date of Decision: 24 October 2022
DECISION
Claims 1-7 lack inventive step in view of document D3 (US 2012/0165648 A1). Pursuant to reg 13.4(g), I allow Daon Enterprises three months from the date of this decision to consider overcoming the objection through amendment.
REASONS FOR DECISION

Background

Australian Patent Application 2016266041 (“The application”) was filed on 30 November 2016 in the name of Daon Holdings Limited, claiming priority to US patent application 14/963,439 with a priority date of 9 December 2015. The application was subsequently assigned to Daon Enterprises Limited (“The Applicant”) (recorded on 2 September 2021).

Disclosure of the application

The application is directed to methods and systems for capturing biometric data from users, for use in authentication.[1]
[1] Description as filed at [0001]. Paragraph references are to the description as filed unless otherwise indicated
The background of the invention sets out that there is an increasing demand to conduct transactions requiring authentication on network devices e.g. smartphones. The description sets out a problem that some users have difficulty orienting a smart device correctly to generate trustworthy biometric data e.g. by facial recognition. The description indicates that some users hold a smartphone near waist level and/or look down while capturing facial recognition data, and “do not appreciate that differently positioning the smart device should result in capturing better quality biometric data. Consequently, enrolling and authenticating such users desiring to conduct network-based transactions has been known to be an annoying, inconvenient and timely endeavor.”[2]
[2] [0003]
The specification then sets out a “Brief Description Of The Invention”: a method, device and computer program that calculates the angle of the terminal device from the horizontal, display a prompt on the device when the angle is not 90 degrees to the horizontal to cause the user to adjust the position of the device (called “an optimal position” here but apparently being 90 degrees to the horizontal),[3] and captures the biometric image when the angle of the device is 90 degrees to the horizontal.[4]
[3] The specification contemplates at [0019] that other angles e.g. between 85 and 95 degrees from the horizontal, or any other angle usable for capturing trustworthy biometric data
[4] [0004]-[0006]
The specification goes on to provide a “detailed description of the invention” with reference to figures.

Figures 1 and 2 are views of a user operating a terminal device…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] APO 70
Decision Date: 24 October 2022

CaseChat Overview and Summary

The applicant, Daon Enterprises Limited, sought to patent a method and system for capturing biometric data from users, specifically for use in authentication, by aligning a terminal device at a 90-degree angle to the horizontal to ensure optimal image quality. The Australian Patent Office objected to the application on the basis that all claims lacked an inventive step in view of prior art documents D1 and D3. The Applicant argued that the claims were novel and involved an inventive step over the prior art. The court considered the arguments and evidence presented by both parties and concluded that the claims lacked an inventive step in view of D3. The court found that the claimed invention involved a simple design choice of using parallel horizontal lines to align the device, which would have been obvious to a person skilled in the art. The court also noted that a similar finding of lack of inventive step appeared applicable in view of D1. The court allowed the applicant three months to consider overcoming the objection through amendment.

Orders