Fexco Merchant Services v Mainline Corporate Holdings Limited - [2011] APO 95

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
FEXCO Merchant Services & others v Mainline Corporate Holdings Limited [2011] APO 95
Patent Application: 763008.

Title: Dynamic Currency Conversion For Card Payment Systems.
Patent Applicant: Mainline Corporate Holdings Limited.
Opponents:1. FEXCO Merchant Services
2. National Westminster Bank PLC
3. Travelex Outsourcing Pty Ltd
4. Australia and New Zealand Banking Group Limited
5. First Currency Choice Pte Ltd

Delegate:  M. G. Kraefft
Decision Date:            22 November 2011
Hearing Date:              22 August 2011
Catchwords:                PATENTS – opposition to Section 104 amendment – redefinition within body of specification of identifier code portion of payment card number for determining cardholder’s currency – amendment refused under all available grounds of Section 102.

Representation: Applicant: Ms Katrina Howard, senior counsel, instructed by Ms Rebekah Gay, solicitor, and by Mr Peter Treloar, patent attorney of Shelston IP, Sydney.

Opponent 1: Ms Connie Merlino, patent attorney, assisted by Mr Manuel Schmidt, trainee attorney, of F B Rice, Sydney.

Opponent 2: Mr Ben Fitzpatrick, of counsel, instructed by Mr Andrew Morton, patent attorney of Griffith Hack, Melbourne.
Opponent 3: Mr Greg Noonan, assisted by Mr Carl Harrap, patent attorneys of Freehills, Sydney.
Opponent 4: Mr Ben Fitzpatrick, of counsel, instructed by Mr Duncan Longstaff, patent attorney, of Blake Dawson, Melbourne.
Opponent 5: Mr Stephen Burley, senior counsel, instructed by Mr Roger Henning, special counsel, and by Ms Helen MacPherson, executive counsel, of Freehills, Sydney.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 763008.

Title: Dynamic Currency Conversion For Card Payment Systems.
Patent Applicant: Mainline Corporate Holdings Limited.

Decision Date: 22 November 2011
DECISION
The proposed amendments are not allowable under subsections 102(1), 102(2)(a) and 102(2)(b).
The amendments are refused.
REASONS FOR DECISION
BACKGROUND

Mainline Corporate Holdings Limited (“Mainline”) filed patent application 763008 on 1 September 1999. The application claims priority from an application made in Ireland on 12 July 1999. The application was advertised accepted on 10 July 2003. Subsequently the application was the subject of opposition proceedings before the Patent Office. In a Patent Office decision (“the first decision”) dated 13 July 2007, the opponents were successful and Mainline was given an opportunity to propose suitable amendments to overcome the findings in that decision (Fexco Dynamic Currency Conversion Limited and others v Mainline Corporate Holdings Limited, [2007] APO 24). That decision is under appeal in the Federal Court.
Mainline filed a statement of proposed amendments under Section 104 on 5 September 2007. On 28 November 2008, a delegate of the Commissioner granted leave to amend as proposed by Mainline. The proposed amendments were advertised on 18 December 2008.
Five parties have filed notices of opposition to the allowance of the amendments. They are (1) FEXCO Merchant Services (“FEXCO”), (2) National Westminster Bank PLC (“NatWest”), (3) Travelex Outsourcing Pty Ltd (“Travelex”), (4) Australia and New Zealand Banking Group Limited (“ANZ”) and (5) First Currency Choice Pte Ltd (“FCC”).
The Federal Court proceedings are stayed pending the outcome of the present opposition to the allowance of the amendments.
SPECIFICATION
The specification, as originally filed, described the invention as relating to card payment systems for use in a multi-currency environment. Further the specification stated the invention provided systems and methods for identifying an appropriate currency for individual transactions using a card payment system.
One desirable outcome discussed in the specification (page 4, lines 15-17) is for a cardholder to view or make payments in their home currency rather than the currency of the merchant with whom they are conducting the transaction. A further desirable outcome (page 5, lines 4-6) is to provide for determining the currency of a cardholder at the point of sale automatically using only a payment card’s details.
The proposed amendments of 5 September 2007, the subject of the present oppositions, amend the description, claims and a figure of the specification.
The claims recited below are the independent claims, aside from the omnibus claims, of the proposed amendments of 5 September 2007 with changes indicated as compared to the claims immediately before amendment and as advertised accepted on 10 July 2003. The claims read as follows:-
1.A data processing method for automatically determining a ~~preferred~~ currency for association with charge, debit or credit card transaction between a merchant and a charge, debit or credit card cardholder comprising the steps of:
obtaining the card number of the card from the cardholder, wherein the method further comprises the steps of:
identifying an identifier code from said card number, determining ~~the operating~~ a currency ~~for~~ associated with said identifier code, by comparing said identifier code with entries in a table, wherein each entry in the table contains an issuer identifier code or range of issuer identifier codes and a corresponding currency code, and setting the currency for association with the card transaction as the determined ~~operating~~ currency ~~for~~ associated with the ~~issuer~~ identifier code.
14.A system for use with a charge, debit or credit card transaction between a merchant and a charge, debit or credit card cardholder;
having means for obtaining the card number of the card from the cardholder, wherein the system has means for automatically determining a ~~preferred~~ currency for association with the transaction comprising:
means for identifying an identifier code from said card number,
means for determining ~~the operating~~ a currency ~~for~~ associated with said identifier code by comparing said identifier code with entries in a table,
wherein each entry in the table contains an issuer identifier code or range of issuer identifier codes and a corresponding currency code, and
means for setting the currency for association with the card transaction as the determined ~~operating~~ currency ~~for~~ associated with the identifier code.
STATEMENT OF GROUNDS AND PARTICULARS
All five opponents listed the grounds, in their statements of grounds and particulars, of subsections 102(1) and (2) of the Patents Act in support of their oppositions. Each of their statements also included pertinent particulars against the grounds.
EVIDENCE
FEXCO served evidence in support from Mr Keith Grant Wilson. Travelex served evidence in support from Mr James Ling. FCC served evidence in support from Mr Geoffrey Robert Coffill. All three declarants have, and did have before the priority date of the application, significant experience in electronic transaction systems and in the card payments industry. NatWest and ANZ did not serve any evidence in support.
Mainline served evidence in answer from Mr Lyal Collins and Mr Gerard J Barry, the inventor named for the application. Mr Collins has a strong technical background, including before the priority date. Related to the present case, that background extends to payment applications for Internet banking and commerce, including security advice and consultancies in those areas. Mr Barry has extensive experience, including before the priority date, in operating businesses that encompass payment services and solutions in international domains.
Travelex served evidence in reply from Mr Carl Harrap and Mr Ling. Mr Harrap, patent attorney of Freehills, has exhibited screen shots, captured from an Internet archive, of dynamic currency conversion promotion and operation by Mainline’s parent company Fintrax Group Holdings. FCC served evidence in reply from Mr Coffill.
FEXCO filed an application to serve further evidence in respect to Mr Wilson’s earlier declaration. The further evidence was a re-sworn declaration from Mr Wilson and replaced an incorrect patent specification in one annexure with the correct patent specification. The application was subsequently allowed. Mainline chose not to serve evidence in response.
Mainline also subsequently filed an application to serve further evidence. The further evidence was filed concurrently with that application. That evidence consisted of statutory declarations and annexes by Ms Rebekah Frances Gay, partner of Shelston IP Lawyers. The evidence relates to statements by Mainline and FCC put before the High Court of Singapore (“SGHC”) in proceedings on a related Singapore patent.
PERMISSIBILITY OF MAINLINE’S FURTHER EVIDENCE
Sub-regulation 5.10(4) of the Patents Regulations governs the serving of further evidence. Sub-regulation 5.10(5) further requires that the serving of further evidence is appropriate in all the circumstances.
The criteria for allowing an application to serve further evidence under Regulation 5.10 are well-established. In Emory University v Biochem Pharma Inc., [1999] APO 50, in assessing an application to serve further evidence amongst other things, the delegate adopted the principles from Ferocem Pty Limited v Commissioner of Patents, (1994) 28 IPR 243, and A Goninan and Co Ltd v Commissioner of Patents and Another, (1997) 38 IPR 213, with respect to extensions of time. Relevant considerations are the discretionary nature of Regulation 5.10, the explanation of the delay in serving the further evidence, the interests of the parties taking part in the opposition, and the public interest. In assessing the latter, the delegate indicated with reference to the Goninan case, that a view needs to be formed as to the nature of the evidence sought to be adduced and the significance of that evidence for the opposition. Furthermore in National Starch & Chemical Company v Commissioner of Patents, [2001] FCA 33, the significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself (at [33]).
At the hearing, Ms Howard indicated that Mainline’s further evidence was directed to FCC only. Mr Burley objected to the allowance of this evidence on the basis that it was irrelevant and on the delay taken in serving the further evidence.
Ms Howard submitted the further evidence was for a very limited purpose. She referred to paragraph 5 of Mainline’s statement of case before the SGHC. That paragraph principally summarises that the invention is for accurately and automatically determining the currency of a credit, charge or debit card at the POS during a card transaction. Ms Howard noted that FCC indicated in its statement of defence that it admitted to paragraph 5. Ms Howard further pointed out that a key ground of FCC’s opposition in the present case is that the application relates to the determination of the issuer’s currency and that this is a different position by FCC to the one taken by FCC in Singapore.
In terms of the principles in which leave to allow further evidence may be granted, Ms Howard submitted this further evidence was definitely relevant due to the admission of FCC, there can be no possible prejudice to FCC since the evidence is their own admission and of limited nature, and there was no delay in serving this evidence when Mainline became aware of its relevance. Furthermore, any argument or interpretation about what FCC has admitted is a matter of what the further evidence itself conveys. Ms Howard concluded the further evidence is prima facie relevant and should be allowed.
Mr Burley stated the further evidence was irrelevant for several reasons. Firstly the paragraph 5 statement does not identify the means by which an accurate means of automatically determining a currency of a card and thereby preferred currency of a cardholder is achieved. The paragraph is no more than a general statement of the subject matter. Mr Burley stated that is all that FCC has admitted to. Secondly, there is consequently no position of FCC that can be discerned over that paragraph. Thirdly, if Mainline’s further evidence is considered relevant then it is also relevant to have regard to FCC’s position elsewhere. In the latter respect Mr Henning served a subsequent declaration annexing a European Patent Office Technical Board of Appeal decision on a related European patent application. Mr Burley sought to rely on this evidence as evidence in response in the event that I allowed Mainline’s application to serve its further evidence. This was on the grounds that Mr Henning’s declaration would clarify the position of FCC that Mainline was seeking to put differently and distract from the real issues in this opposition.
Public interest
The thrust of the dispute between Mainline and the opponents on the allowance of the amendments is about the changing representation of terms in the specification. For example, identifier codes are arguably redefined in terms of leading to a determination of individual cardholders’ currencies. As mentioned above on the other hand, Ms Howard noted FCC’s position in respect to the present application relating to determination of an issuer’s currency. The issues at stake are quite detailed about the nature of the alleged invention. In this context, it is difficult to see how a general statement by Mainline before the SGHC about what the alleged invention is for, and any response thereto by an opponent, is of any particular significance in the present oppositions. FCC’s admission appears to be little more than an admission of the objectives of the alleged invention as put by Mainline. This further evidence may be of interest. I conclude though that this further evidence is insignificant in the present oppositions.
Interests of the parties
Mainline’s interest in serving this further evidence clearly arose from a perception that there was some relevant material put before the SGHC that should be considered in the present Australian case. FCC’s interest was in ensuring the present oppositions were focused on the true issues to be determined and the avoidance of any distractions and unnecessary delay.
As I have found above that the further evidence is insignificant in the present oppositions, then Mainline would consequentially suffer no particular detriment by the evidence not being allowed. I conclude the balancing of the parties’ interests lays in not allowing this further evidence.
Explanation of the delay in serving further evidence
Mr Burley stated there was no explanation of why Mainline took some six months to serve this evidence after FCC filed its statement of defence. Ms Howard stated there was no delay once Mainline became aware of its relevance.
There is a difference between availability of material and an awareness of the relevance thereof. It is one thing to suggest that Mainline had the material available to it for perhaps a considerable period of time before serving the further evidence. On the other hand, it is quite another matter as to when Mainline became aware that this material might be relevant in the present oppositions. Absent any evidence of intent by Mainline to delay the serving of this further evidence, I am prepared to accept Mainline diligently served this further evidence when it became aware of its potential relevance.
In any case, the reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not mandatory (Ferocem (supra) at page 247).
Appropriateness in all the circumstances of serving the further evidence
On balance, the considerations of the public interest, the interests of the parties and the delay in serving the further evidence point toward a conclusion that the further evidence should not be allowed. I refuse the application to serve the further evidence.
This conclusion also renders FCC’s evidence in response otiose.
ALLOWABILITY OF AMENDMENTS
Section 102 of the Patents Act covers the allowance of amendments. The pertinent subsections in this case are subsections 102(1), (2), (2A)(a) and (3).
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(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; …….
(3) This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
WHETHER THE AMENDMENTS ARE FOR THE PURPOSE OF CORRECTING A CLERICAL ERROR OR OBVIOUS MISTAKE: SUBSECTION 102(3)
Subsection 102(3) states that Section 102 does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake.
Ms Howard submitted the amendments to replace the term “issuer code” with “identifier code” or “issuer identifier code” in several places was for the purpose of correcting an obvious mistake. On the other hand Mr Noonan pointed out that the term “issuer code” is the dominant term used throughout the specification as filed. The first exceptions occur at page 6 line 5 for “issuer identifier code” and as far as page 10 line 7 for “identifier code”. Mr Noonan further indicated that if there were an obvious mistake in the specification as filed, it might be said to occur in claim 2. That claim contains the term “said issuer identifier code” while all preceding references in claims 1 and 2 are to an “issuer code”. Mr Noonan contended that, rather than correcting the apparent error in claim 2, the applicant had chosen to amend in the reverse.
In the first decision I noted the ambiguity and inconsistency in the use of the terms and how they seemed to be interchangeable ([58] – [60]). Moreover at [64] of the first decision, I indicated that Mainline’s own expert declarant broadly described both the identifier code and the issuer identifier code as codes that identified the issuer, that is the bank or other financial institution, of the card. Still further, the identifier code is variously inferred or described as distinguishing cardholders’ currencies (for example page 12 lines 7-12) and distinguishing between issuers (for example page 10 lines 13-14). All of the above would indicate that if a mistake existed, it was not obvious in which way there was a mistake and certainly not obvious which was the appropriate correction.
I find subsection 102(3) does not apply in this case and consequently the proposed amendments do not circumvent the allowability requirements of subsections 102(1) and (2).
WHETHER CLAIMS WOULD BE FOR MATTER IN SUBSTANCE DISCLOSED: SUBSECTION 102(1)
The amendments to the claims from those as accepted, as indicated above, may not appear to be substantial amendments that would alter the nature of the claimed invention. However subsection 102(1) requires a determination of whether a proposed amendment would result in the specification claiming matter not in substance disclosed in the specification as filed.
For an amended claim to claim matter in substance disclosed in the specification as filed, that claim must in effect be fairly based on the specification as filed. The Federal Court has accepted the principle of a real and reasonably clear disclosure for testing an amended claim against the original disclosure. See for example RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd, 42 IPR 353.
In the present case, the definition of the identifier code is pivotal. Moreover it seems the amendment of the descriptive part of the specification, rather than the claims, to alter the definition of the identifier code would be influential in determining whether the amendment would contravene subsection 102(1).

In the first decision, I noted varying degrees of ambiguity and inconsistency in both the descriptive part of the specification and the claims, initially in respect to the terms “identifier code”, “issuer code” and “issuer identifier code”. See [58] and [59] of the first decision. In interpreting the claims, it was consequently appropriate to define or clarify, as best one could, the meaning of those words used in the claims by resorting to the descriptive part or body of the specification. See the Interlego AG v Toltoys Pty Ltd decision, [1973] HCA 1, at [14] of the Full Court decision.
Much reference occurred in the first decision to the descriptive part of the specification to establish some meaning for the above-mentioned codes ([64], [65] and [70] – [72] for example). One of the conclusions (at [67] and [72]) of this analysis was that the identifier code fitted the description of a bank identification number (“BIN”), the number established in the card payments industry as the card prefix of usually six digits making up part of the card number that identified the issuer.
It would appear that any further analysis of the specification as filed on this point might risk re-opening matters already previously decided in the first decision. Some of the opponents pointed out that this was impermissible, citing R v Smith (Commissioner of Patents); Ex Parte Mole Engineering Pty Ltd, (1981) 147 CLR 340. While being mindful to avoid re-opening matters previously decided, it would seem to be of some assistance to go deeper into the specification as filed because of the bases in the specification that Mainline sought to rely upon to support the proposed amendments. Principally the amendments seek to define a method and system for determining the currencies of cardholders’ cards, taking account of circumstances where the issuer may issue cards to cardholders in more than one currency.
Ms Howard submitted the basis for these amendments was the numerous references in the specification as filed to the determination of the cardholder’s currency at the point of sale. See for example page 9 lines 6-7, page 10 lines 19-20 and page 12 lines 9 and 12. Ms Howard further submitted that, to the extent that the specification has been interpreted as relating to determining currencies at the issuer level, this is in addition to rather than exclusive of determining individual cardholders’ currencies. Mr Collins’ and Mr Barry’s evidence supported this by stating they always understood the identifier codes or issuer identifier codes directly determined individual cardholders’ currencies and that the lengths of the codes sufficient to identify the currencies were determined and were not directly linked to BINs.
The specification as filed describes the identifier code consisting of a portion of a card number that variously identifies an issuer, an issuer’s currency or a cardholder’s currency. For instance, at page 10 lines 13-14, the identifier code is the portion of a card number that distinguishes between issuers. At page 10 lines 26-27, there is reference to the identifier code of the issuer of the card. Then if an entry is found in a bank reference table (“BRT”) for the identifier code, the associated currency corresponding to the issuer code is extracted (page 10 lines 28-29). This correlates the identifier code with an issuer currency. Still further, at page 10 lines 16-20, the identifier code is compared with entries in the BRT to ultimately extract an associated currency which corresponds to the currency of payment (of)(sic) cardholders’ accounts of the issuer. The next sentence exemplifies that an Irish bank may have an associated currency of Irish Pounds or Euros. Page 12 lines 7-12 refers to the option for the cardholder to pay for goods and/or services in the currency of the cardholder’s card. Page 15 lines 8-10 similarly refers to processing transactions in the cardholder’s currency.
The latter examples may infer that determination of currencies at the individual cardholder level covers a system capability for dealing with individual issuers that issue cards in more than one currency. On the other hand, the identifier code is described interchangeably for distinguishing issuers, or for determining issuer currencies or cardholder currencies. In this context it is hard to interpret the specification making something of an issuer issuing cards to cardholders in more than one currency. Instead the consistent theme is that the identifier code applies at the issuer level. In the specification’s example where the issuer is an Irish bank, the scenario that is consistent with the context of the specification as a whole is one where one Irish bank issues cards in Irish Pounds while another Irish bank issues cards in Euros, rather than a single Irish bank having two associated currencies. In respect to the introduction of the Euro, page 4 lines 8-10 expressly discusses different issuers and merchants converting (my emphasis) their base currency from the national currency to the Euro at different times, not that issuers concurrently issue their cards in both the base currency and the Euro at the same time.
It is plain that the identifying of an identifier code from the card number is a determination made at the cardholder level. On the other hand this principally relates to the card reading function. The claimed system overall though is not a card reader system or similar. It is a currency identifying and processing system in a card payments system reliant on data principally related to issuers, if considering the specification as filed. At that level, overwhelmingly, the context of the specification as filed is that it only covers issuers issuing all their cards in the same currency.
Moreover, in the first decision I concluded the identifier code fitted the description of a BIN. A BIN, or similar identifier of the issuer, of itself could not categorically determine the correct currency for any particular card from an issuer if that issuer issued cards in more than one currency, and assuming each issuer was assigned only one BIN.
All the above indicates a context from the descriptive part of the specification as filed of a presumption of each issuer issuing cards in one currency to all of the issuer’s cardholders.
The principal amendment to the claims is to bring consistency to the terms defining the codes. The specification as proposed to be amended now defines only two such terms, an “identifier code” and an “issuer identifier code”. In proposed claim 1 for example, an identifier code is identified from the card number and a currency associated with the identifier code is determined. This is done by comparing the identifier code with entries in a table wherein each entry in the table contains an issuer identifier code or range of issuer identifier codes and a corresponding code. As before though, ([59] of the first decision), the relationship between the codes, as defined in the amended claims, is not clear. A comparison is stated to be made of the identifier code with entries in a table yet the table’s entries are stated instead to have an issuer identifier code (my emphasis) or a range thereof.
This is a fundamental point of clarity still unresolved when considering the amended claims alone. Consequently it is again appropriate, for the amended claims as it was for the previous claims, to define or clarify, as best one can, the meaning of those words used in the claims by resorting to the descriptive part or body of the specification, citing Interlego (supra).
Mr Burley drew on the evidence of Mr Coffill, Mr Wilson and Mr Ling to state the effect of the proposed amendments to the description would be to indicate that the identifier code is for identifying currencies at the individual cardholder level rather than the issuer level, and define currency determination where an issuer issues cards in multiple currencies. Mr Fitzpatrick and Ms Merlino similarly noted that the proposed amendments defined using more than a BIN as an identifier code and identifying one of multiple currencies for a single issuer.
Mr Noonan drew parallels between the present opposition and the Chain Bar Mill Co Ltd’s Application decision, (1941) 58 RPC 200. Specifically it is inappropriate under subsection 102(1) to allow an applicant to disclose and claim a new invention not apparent from the specification as filed under the guise of correcting ambiguity.
The amendment within the description removes references to the identifier code identifying an issuer or issuer’s currency and describes it as only identifying a cardholder’s currency. For instance, at page 12 lines 5-7, as amended, the identifier code distinguishes between currencies of payment of cardholder accounts of issuers. That sentence is proposed to replace the sentence in the specification as filed that the identifier code is the portion of a card number which distinguishes between issuers. The aim of this change is to make it clearer that the identifier code is used for identifying currencies at the individual cardholder level rather than the issuer level. The amendment to remove all reference of the identifier code being used to distinguish between issuers is a profound change. The amendment effectively attempts to extend the scope of the identifier code from being merely considered a BIN or similar identifier of the issuer. Similarly, page 13 lines 7–10, as filed, describes the BRT as a table that stores leading digits of individual issuers of credit/debit cards and identifies an associated currency code for each issuer. This passage is proposed to be amended (page 15 lines 10-14, as amended) to describe the BRT storing leading digits of issuers, being the portions of card numbers that distinguish between currencies of cardholders’ accounts, and which table identifies an associated currency code for each entry in the table. The amendments change the claimed invention from a method or system establishing an issuers’ currency to one that directly establishes the cardholder’s currency with a more sophisticated identifier code than contemplated in the specification as filed.
When the passages at amended page 12 lines 5-7 and amended page 15 lines 10-14 are read together, it is clear the amendments extend the scope of the identifier code beyond a BIN but also still do not prevent a BIN being in scope. If the issuer issues all its cards in one currency then the portion of the card number required for comparison with entries in a BRT, to distinguish cardholders’ currencies, is met by the BIN. If the issuer issues cards in more than one currency then a more sophisticated identifier code is required as is exemplified in the specification as amended.
I would note that page 12, lines 18 -19, as amended, describes these leading portions of card numbers in the BRT as “issuer identifier codes”. As in the specification as filed, the distinction between an identifier code and an issuer identifier code in the specification as amended is blurred. Both are described as being the leading portions of card numbers that distinguish the currencies of cardholders’ accounts of issuers. In any case the aim of this amendment is to include the scenario where an issuer may issue cards in more than one currency, rather than constrain the specification to an interpretation that each issuer issues all its cards in the same currency.
The specification, as proposed to be amended, elaborates further on this new scenario. At page 12 lines 5-15, as amended, the specification describes examples of identifier codes being of variable length, for example 11 or 9 digits, such that currencies of payment of cardholders’ accounts of issuers can be distinguished, depending on the nature of the issuing bank. At page 12 line 33 to page 13 lines 9, as amended, and with reference to new Figure 6, the specification further describes the identifier code being the length of the longest entry in the BRT and the issuer identifier code in the BRT being a substring of the identifier code. These examples clearly relate to the more elaborate requirements where an issuer issues cards in more than one currency at the same time, and would not be required otherwise. In any case these passages essentially cover the same concepts that I found in the first decision to be clearly lacking from the specification as filed ([68] – [72] of the first decision).
The remaining amendments to the claims likewise attempt to support the scenario where an issuer may issue cards in more than one currency. The definition of the currency or currency code relationship with the identifier code is somewhat altered. Prior to amendment, the definition reads as currency or currency code “for the identifier code”, or similar. The amendment alters this definition to “associated with the identifier code”. The difference in meaning is subtle and of its own would appear to define the same thing. Amendments to replace the references to “preferred currency” and “operating currency” with references to a currency associated with the identifier code also appear to be largely inconsequential. With a background in the industry of cardholders being issued with cards under some form of contractual arrangement between card issuer and cardholder (see for example Mr Coffill’s evidence in reply at [13]), one would presume the currency associated with the identifier code from a card would be the cardholder’s preferred and/or operating currency. Furthermore this amendment clarifies, at least in part, the points in the first decision ([76] – [80]) relating to the preferred and operating currency.
The word “automatically” is proposed to be inserted in each of claims 1 and 14 ahead of the currency determination definition in each of the claims. Ms Howard submitted there was support throughout the specification as filed of automatic currency determination and that clearly covered the scenario of an issuer issuing cards in more than one currency. The point made was that a method or system determining currencies at the issuer level, and reliant on a BIN for example, could not automatically and categorically determine an associated currency in such a scenario. The opponents correspondingly argued that if this is what this amendment covered then the amendment contravened subsection 102(1) as that is not disclosed in the specification as filed. On its own, the insertion of the word “automatically” appears to be inconsequential. The specification as filed opens by clearly describing the field of the invention as relating to card payment systems. The alleged invention itself is stated to provide systems and methods for identifying an appropriate currency for the conduct of transactions using a card payment system. The concept of automation in such environment would go without saying. Systems relying on BINs operate no less automatically to determine associated currencies than systems reliant on more sophisticated forms of identifier codes. It may be that the former system cannot conclusively determine an associated currency where an issuer issues cards in more than one currency. On the other hand, that goes more to whether that system works in all cases rather than whether there is a process of automation or otherwise. Indeed claim 5 as filed, for example, defines an embodiment where the currency is set to the default currency of the merchant when no operating currency can be determined by the system. This in itself must also be considered to be an automated outcome. I conclude that automation can be inferred from the specification as filed.
In summary, I conclude the amendments to the claims themselves do not contravene subsection 102(1). Rather it is the amendments to the descriptive part of the specification to alter the definition and consequential operation of the identifier code, with such code being referred to throughout the claims, that results in the claims claiming matter not in substance disclosed in the specification as filed.
I conclude the proposed amendments contravene subsection 102(1).
WHETHER CLAIMS WOULD IN SUBSTANCE FALL WITHIN SCOPE OF CLAIMS BEFORE AMENDMENT: SUBSECTION 102(2)(a)
Mr Burley cited the Fina Research SA v Halliburton Energy Services Inc decision, [2003] FCA 251 at [29], to state that the enlivening of this subsection is to be assessed by looking at the claims as a whole and determining whether the amendments made anything an infringement that would not have been an infringement before amendment.
For example Mr Fitzpatrick stated the amendments re-characterise the identifier code from identifying an issuer to distinguishing between currencies of cardholders’ accounts. Moreover Ms Merlino submitted that this means the table as claimed would cover entries where issuers may have more than one currency code each. The example that the identifier code is of variable length, depending on the contents of the table, makes the re-characterisation of the identifier code especially striking as there was previously no indication that the identifier code could be so characterised. Mr Noonan cited Mr Ling’s first declaration where he envisaged a system that might not use an identifier code, issuer code or issuer identifier code to determine a cardholder’s currency. Mr Ling suggested a system where a central card administrator had knowledge of and a table of every single card number in full with its associated currency. Mr Noonan indicated this was an example that would not infringe the claims before amendment but did so after amendment under the revised definitions of the codes in the specification.
The opponents submitted all the above resulted in a broadening of the scope of the claims.
Ms Howard stated that before amendment the claimed method and system could be construed to determine an issuer currency or a cardholder currency and that after amendment the claims were restricted to the latter only. Consequently the claims as a whole, after amendment, were within the scope of the claims before amendment.
It is clear from the previous section that the proposed amendments re-define the identifier code to avoid it being interpreted as just an identifier of the issuer. Furthermore I noted the re-definition would extend the scope of the identifier code from being merely considered a BIN or similar identifier code. The amendment would also claim an identifier code that is more sophisticated to determine appropriate currencies of cards from issuers that issue cards in more than one currency.
While the scope of the claims themselves may not appear significantly different before or after amendment, this re-definition of the identifier code makes the claims go beyond the scope of the claims before amendment. Additionally the evidence from all parties indicates the BIN was a well known instrument in the card payments industry before the priority date and was known to be of fixed length across the industry. The re-characterisation of the identifier code as a variable length code, depending on the nature of the issuing bank and/or on the contents of the BRT, substantiates even further that the claims, wherever the identifier code is mentioned, have gone beyond the scope of the claims before amendment.
I conclude the proposed amendments contravene subsection 102(2)(a).
WHETHER THE SPECIFICATION WOULD COMPLY WITH SUBSECTION 40(2) OR 40(3): SUBSECTION 102(2)(b)
As already mentioned in previous sections, the specification prior to amendment was prevalent with ambiguities and inconsistencies, particularly in respect to the terminology used for the codes. As also mentioned above, the proposed amendments have not, in the main, overcome that. I will treat deficiencies in respect to the terminology of the codes as pre-existing deficiencies. Likewise the amendments around the preferred and operating currency, in the independent claims before amendment, still do not cover the inconsistency ([78] of the first decision) between an associated currency being determined from the card number (claim 1 for example) and that currency defaulting to the merchant currency when no currency can be determined for the identifier code (claim 2 for example). Paragraph [79] of the first decision is similarly pertinent in a similar way. Subsection 102(2)(b) requires assessment as a result of an amendment. Consequently any pre-existing Section 40 issues must be disregarded.

Mr Fitzpatrick submitted the introduction of identifier codes having variable length was not supported by a proper disclosure of how one might obtain and use them in practice. Mr Burley similarly noted a lack of disclosure about how a variable portion of a card number is obtained and used in the comparison with entries in the BRT. He particularly referred to Mr Coffill’s evidence, who with his knowledge and experience of the industry, could not understand, nor does the amended specification tell him, how to determine the length of the identifier code and how it would work in the BRT to identify the cardholder’s currency. Mr Ling’s evidence similarly noted these deficiencies. Ms Merlino’s submissions put it that the operation of the BRT and how the length of the identifier code is known a priori is not fully described in the specification as amended and for the same reason the claims are not clear.
The opponents broadly submitted the specification offended against 40(2)(a), relating to full description of the invention, and 40(3), relating to clarity of claims.
The examples where the identifier code has variable length seem to be problematic. Page 12 as amended quotes some card number ranges by way of example for a small bank and a large bank. From those ranges the length of the identifier code is determined in each case. This implies some determination of the length based on the nature of the bank and knowledge of card number ranges for each bank. On the other hand page 13 line 3 as amended states the identifier code to typically be the length of the longest entry in the BRT and so a fixed length might be inferred. Both sets of examples appear to be incongruent with each other. Either way, some a priori knowledge would be required about card number ranges for issuers and/or the contents of the BRT to know how much of a card number to take as the identifier code. It is not explained how this knowledge is obtained. On the contrary, the claimed invention, as Mr Coffill pointed out (at [33] of his evidence in support), requires the identifier code to be ascertained from the card number without reference to any other source.
The opponents’ expert declarants clearly had trouble with this whole altered concept of the identifier code. The concept is not fully described and the claims as a whole are not clear either as a result. I conclude the proposed amendments contravene subsection 102(2)(b).
CONCLUSION
I have found the proposed amendments are not allowable under subsections 102(1), 102(2)(a) and 102(2)(b).
I refuse the proposed amendments.
COSTS
All parties submitted that costs should follow the event. I see no reason to vary this practice. Mainline has been unsuccessful in these five oppositions. I award costs for all of these oppositions in accordance with Schedule 8 against Mainline.
M. G. Kraefft
Delegate of the Commissioner of Patents