FOXTEL Management Pty Ltd v Fetch TV Pty Limited

Case

[2015] APO 35

7 July 2015


IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

FOXTEL Management Pty Ltd v Fetch TV Pty Limited [2015] APO 35

Patent Applications                  2011269717

Title:Pause Live TV Display

Patent Applicant:  Fetch TV Pty Limited

Opponent:  FOXTEL Management Pty Ltd

Delegate:  Dr S. K. Aggarwal

Decision Date:  7 July 2015

Hearing Date:  22 April 2015, in Canberra

Catchwords:  PATENTS – opposition to grant – lack of novelty of claims not established – insufficient evidence to establish that claims lack inventive step in light of prior art and common general knowledge  – specification describes the invention fully – claims are clear and fairly based – claims are a manner of manufacture - costs awarded against the opponent.

Representation:  Opponent:  Mr Guy Tucker assisted by Mr Januar Yap of the patent attorney firm Spruson & Ferguson, Sydney via phone

Patent Applicant: Did not participate in the hearing

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2011269717

Title:Pause Live TV Display

Patent Applicant:  Fetch TV Pty Limited

Date of Decision:  7 July 2015

DECISION

The opponent does not succeed on any of the grounds of opposition.  Subject to appeal, I direct that the application proceed to grant.  

Costs awarded against the opponent.   

REASONS FOR DECISION

Background

  1. Patent application 2011269717 (WO 2011/160165) directed to Pause Live TV Display was filed on 21 June 2011 by Fetch TV Pty Limited (“the applicant”).  The application claims priority from Australian application AU 2010902735 filed on 22 June 2010.  The application 2011269717 was advertised accepted on 5 June 2014.   

  1. A notice of opposition to the application 2011269717 was filed on 5 September 2014 by FOXTEL Management Pty Ltd (“the opponent”) and a statement of grounds and particulars was filed on 15 October 2014.    

  2. The opponent also completed their evidence in support on 15 October 2014.  The applicant did not file any evidence in answer and consequently no evidence in reply was filed by the opponent. 

  3. The opponent filed their summary of submissions prior to the hearing on 8 April 2015.  The applicant did not file any submission prior to the hearing and advised through their patent attorney, FB Rice, Sydney, on 14 April 2015 that they will not be attending the hearing.

    The Statement of Grounds and Particulars

  4. 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 case of the present application, the grounds of opposition are governed by the Patent Act in force before 15 April 2013.

  5. The grounds of opposition specified in the statement of grounds and particulars are that the nominated person is not entitled to the grant of patent for the invention and that the specification does not comply with paragraphs 18(1)(a), 18(1)(b), 18(1)(c) and sub-sections 40(2) and 40(3) of the Patents Act 1990.

  1. The statement of grounds and particulars states that the nominated person is not entitled to the grant of a patent for the invention.  The statement of grounds and particulars further asserts that each of the claims 1-13 lacks novelty and inventive step.  In relation to novelty, two prior art patent documents have been cited, while in respect of inventive step, three non-patent literature documents have been cited as evidence of common general knowledge in Australia.  The statement of grounds and particulars also asserts that the opposed specification lacks sufficiency in respect of sub-section 40(2).  Several aspects of non-clarity and fair basis have been raised in respect of sub-section 40(3).  Matters raised under lack of manner of manufacture and lack of utility mainly relate to the matters raised under lack of novelty and lack of inventive step and non-compliance with subsections 40(2) and 40(3).

    The Specification

  2. The invention concerns a digital interactive live television wherein a timeline including the past, current, and future programs is shown when a user pauses the display.  From the timeline, the user can see how the recording of the program is progressing with respect to the borders in time between the programs. This yields additional information for controlling the interactive television.

  3. The specification concludes with thirteen claims of which only claims 1 and 9 are independent.   The independent claims read as follows:

    1.Digital interactive live television equipment, comprising:

    a receiver for receiving and decoding live streaming television programs;
    a frame store where image frames are assembled before being output to a display device for display; and
    a processor that operates under the control of software to assemble a series of frames in the frame store, wherein each frame comprises:
    a television program picture;
    a first graphical timeline indicating past, present and future programs including the boundary in time between successive programs;
    a second graphical timeline that indicates the period of past programming, relative to the first graphical timeline, that has been recorded and is therefore available to be viewed.

    9.A method for displaying digital interactive live television programs, the method comprising:

    receiving and decoding live streaming television programs;
    assembling image frames before the frames are output to a display device for display, each of which frames comprise:
    a television program picture;
    a first graphical timeline indicating past, present and future programs including the boundary in time between successive programs;
    a second graphical timeline that indicates the period of past programming, relative to the first graphical timeline, that has been recorded and is therefore available to be viewed. 

    Evidence

  4. The evidence in support consists of a single statutory declaration from Mr Keith David Cohen.       

  1. Mr Cohen is a consultant specialising in high-technology product development in broadcasting, telecommunications, internet services and consumer electronics with over 20 years experience in the field.  He was employed with the opponent from 1996 to 2005.  The Cohan declaration relies on exhibits KC-1 to KC-26 in support of the opponent’s case.

  2. As noted earlier, no evidence in answer was filed by the applicant and hence there is no evidence in reply by the opponent.

  3. During the hearing, the opponent pleaded only on the grounds of lack of novelty, lack of inventive step, lack of manner of manufacture, lack of sufficiency, lack of fair basis and lack of clarity.  Therefore, I will cover the above grounds in this decision without going into the remaining grounds of opposition raised in the statement of grounds and particulars.

  4. I will provide the details of what is contained in the evidence, and the details of the opponent’s submissions, where relevant, later in my decision. 

    Decision

    Onus of Proof

  1. The examination request for this patent application was filed on 15 February 2013.  As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.

  2. Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).

    Novelty

Law Relating to Novelty

  1. Section 7 of the Patents Act 1990 provides that

    (2) For the purpose of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any of the following kinds of information, each of which must be considered separately:

    (a) prior art information (other than mentioned in paragraph (c)) made publicly available in a single document or through doing a single Act;

    (b) prior art information (other than mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;

    (c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.

  2. The test for novelty has been discussed in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals  v Eli Lilly and Company [ 2005] FCAFC 224 (see paragraphs 311 et seq) and Bristol-Myers Squibb Company v FH Faulding & Co Limited (2000) 97 FCR 524. As noted in both the decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 at page 235 where Aickin J stated:

    “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 invention would if the patent were valid, constitute an infringement.”

  3. Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367). However, as Pfizer (supra) noted, it is not sufficient for a citation to contain all the essential features of the claim, there must be "clear and unmistakable" directions to the claimed invention.  In addition, to deprive a claim of its novelty, a citation must be the same as the claimed invention for the purposes of "practical utility".  In other words, the citation has to "enable" the skilled worker to produce the invention from the written disclosure. 

  4. Novelty can however be found where a feature is not explicitly mentioned but nonetheless present as an inherent feature as an inevitable result of the disclosure.  As noted in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 45 at page 486:

    “if in carrying out the directions contained in a prior inventor's publication will inevitably result in something being made or done which, if the claim of the opposed specification were a claim of a valid patent, would constitute an infringement of that claim, then that claim would have been anticipated.”

    Novelty Determination in the Current Case

  5. The opposed specification concerns a digital interactive live television equipment.  The equipment comprises a receiver for receiving and decoding live streaming television programs, a frame store where image frames are assembled before being output to a display device for display and a processor that operates under the control of software to assemble a series of frames in the frame store.  Each frame comprises a television program picture; a first graphical timeline indicating past, present and future programs including the boundary in time between successive programs, and a second graphical timeline that indicates the period of past programming relative to the first graphical timeline, that has been recorded and is therefore available to be viewed.  

  6. US 2002/0144264 A1 (Exhibit KC-24, “D1”) and WO 20008/018695 A1 (Exhibit KC-25, “D2”) are the only items of prior art advanced by the opponent as rendering claims 1, 7-11 and 13 not novel.  

  7. Detailed submissions were made by the opponent in respect of the novelty of claims 1, 7-11 and 13 in light of D1 and D2.  Firstly, I  will consider the opponent’s submissions in regard to the following key features of independent claims 1 and 9:

    (a)     a television program picture;

    (b)a first graphical timeline indicating past, present and future programs including the boundary in time between successive programs;

    (c)a second graphical timeline that indicates the periods of past programming, relative to the first graphical timeline, that has been recorded and is therefore available to be viewed.

    US 2002/0144264 A1 (D1)

  8. The prior art document D1 is directed to a passive program completion status indicator for an electronic program guide (EPG) for television programs.  A line indicating the current time is displayed across at least a portion of the EPG.  The line is perpendicular to the time axis of the EPG and bisects at least one program element of the EPG into an elapsed portion and a remaining portion, each being proportional in size to the time periods represented thereby.  The ratio of the elapsed time to the remaining time of the program is an indication of the completion status of the program.  In one embodiment, the completion status of the program is displayed on the program element itself in the form of a numerical percentage.  In certain embodiments, the line bisects a plurality of elements of the EPG, allowing the user to immediately determine the completion status of a plurality of programs. 

  9. In respect of the features (a) and (b), the Cohen declaration stated that Fig 6 of D1 discloses an EPG which can be displayed on a television screen, and that the EPG shows a number of graphical timelines for various programs that have completed broadcast prior to the current time.  Regarding feature (c), the Cohen declaration stated that Fig. 6 of D1 also discloses a visual indication of an elapsed portion of a program and that the elapsed portion is proportional and aligned to the time period of the relevant program shown on the EPG.  The declaration put the view that the elapsed portion may be a portion of a recorded program, as that recorded program can be automatically recorded as disclosed in paragraph [0042] of D1.

  10. Paragraph [0042] of D1 reads as follows:

    “[0042]   In some implementations, the STB 102 may include a storage device 310, such as hard disk drive or the like. The storage device 310 may be configured to record encoded television broadcasts and retrieve the broadcasts at a later time for decoding by the decoder 304 and display by the display controller 308.  By tracking the user’s habits, the STB 102 may store media programs automatically.  Media programs may also be stored at the specific request of the user.”

  11. From reading the document as a whole, it is apparent to me that D1 discloses a first timeline in the form of an EPG for television programs.  Also disclosed is a second timeline on the same time scale as the first timeline.  The second timeline represents a portion of a relevant program that has been broadcast or elapsed, however there is no reference to the recording of the relevant program.  While paragraph [0042] of D1 suggests that certain embodiments of the invention of D1 may have a storage device which may be configured to record media programs either on user request or automatically, there is no disclosure of the actual recording of the elapsed portion.  In view of this, I consider that D1 lacks a clear and mistakable direction to the feature of a second timeline that indicates the periods of past programming, relative to the first graphical timeline, that has been recorded and is therefore available to be viewed.

  12. Consequently, I find that claims 1 and 9 are novel in light of D1.  The subject matter of claims 12 and 13 is similar to that of claims 1 and 9 respectively, and the remaining claims of the opposed specification are appended to either claim 1 or claim 9.  Therefore claims 2-8 and 10-13 are also novel in light of D1. 

    WO 2008/018695 A1 (D2)

  13. The prior art document D2 is directed to a method of operating a broadcast receiver comprising extracting additional information from a received broadcasting signal, using the extracted additional information to obtain EPG information associated with a schedule of broadcasting programs, generating progress status information about a broadcasting program, and configuring broadcast information by adding the generated progress status information to the EPG information.  The method further includes using the broadcast information to display a broadcast guide window corresponding to the EPG information together with a progress status window corresponding to the progress status information.  The progress status window in the form a bar comprises two separate portions.  The portion on the left is reserved for displaying the status of a broadcast program which could be either “recording (RE)” or “playing (TS)” the program.  The portion on the right represents the total recording or playing quantity of the broadcast program and displays a progressive extent of the broadcast program.

  14. In respect of the features (a)-(c), the Cohen declaration stated that D2 discloses generating an on screen display of a progress status window overlapped on a broadcast guide window which can be processed together with a video signal (i.e. a television picture).  It was further stated that broadcast guide window 42 shown in Fig. 3 of D2 is a graphical timeline which displays details of past, present and future programs separated by time boundaries and could be considered as the first graphical timeline.  The progress status window 43 is overlapped on the broadcast window 42 and displays a visual indication that is proportional to the amount of past programming that has been recorded and could be considered as the second timeline.  The declaration added that although the second graphical timeline is not relative to the first timeline in the sense that both timelines display the same metric using the same scale, they could be easily aligned.

  15. I agree with the opponent that D2 discloses a first timeline in the form of an EPG for television programs and a second timeline in the form of a progress bar.  I note that the progress bar can be overlapped on the EPG or provided separately from the EPG.  However from reading the document, I cannot see any relationship between the first and the second timeline.  Furthermore, there is no suggestion in the document that the two timelines could be aligned.  In view of this I consider that the document does not disclose the feature of a second timeline that indicates the periods of past programming, relative to the first graphical timeline, that has been recorded and is therefore available to be viewed.

  16. Consequently, I conclude that the independent claims 1 and 9 are novel in light of D2.  As observed earlier, the subject matter of claims 12 and 13 is similar to that of claims 1 and 9 respectively and the remaining claims of the opposed specification are appended to either claim 1 or claim 9.  Therefore claims 2-8 and 10-13 are also novel in light of D2. 

  17. The opposition fails on this ground of opposition.

    Inventive Step

    Law Relating to Inventive Step

  1. Section 7 of the Patents Act 1990 at the relevant date provides that

    (2) For the purpose of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3). 

    (3)  The information for the purposes of subsection (2) is:

    (a) any single piece of prior art information; or

    (b) a combination of any 2 or more pieces of prior art information;

    being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph. 

  2. The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 confirmed that “obvious” means “very plain” as stated by the English Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd (supra) where it was said:

    "'Obvious' is, after all, a much-used word and it does not seem to [us] that there is any need to go beyond the primary dictionary meaning of 'very plain'.”

  1. A person skilled in the art is a non-inventive worker who is not overly qualified and has a practical interest in the subject matter of the invention.  In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 241-242, Finkelstein J stated:

    "Generally speaking the skilled addressee is the person who works in the art or science with which the invention is connected.”

  2. While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).

Common General Knowledge

  1. As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established.  The common general knowledge is the background knowledge attributable to the person skilled in the art.  A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:

    "The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”

  2. The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. 

Approach Used to Assess Inventive Step

  1. There are a number of approaches which the courts have used to assess inventive step.  In Wellcome Foundation Ltd v VR  Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, 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.”

  2. The High Court in Aktiebolaget Hassle (supra) referred with approval to this approach and further held:

    "That way of approaching the matter has an affinity with the reformulation of the `Cripps question' by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation.  Graham J had posed the question:

    `Would the notional research group at the relevant date in all the circumstances which includes a knowledge of all the relevant prior art and of the facts of the nature and success of [compound], directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'

    That approach should be accepted."

    Inventive Step Determination in the Current Case

  1. Neither the opponent nor Mr Cohen express any opinion on who would be a relevant skilled person in the present matter.  Looking at the technical contribution of the opposed specification, I consider the person skilled in the art as one with knowledge of development and production of equipment for playing and recording of live television programs.  

  2. Based on Cohen declarations, I am of the view that the following were common general knowledge in respect of digital video recorders in Australia before the priority date of the claims of the opposed specification:

1.Receiving and decoding live streaming television programs

2.Recording and playing live content in many ways

3.Storing and displaying stored content

4.Use of frame store for assembling image frames before they were output for display

5.Buffering and caching of data

6.Different EPG structures

  1. Neither the opponent nor Mr Cohen express any opinion on whether D1 and D2 were information that the skilled person could reasonably be expected to have ascertained, understood and regarded as relevant before the priority date. 

  2. I note that the documents D1 and D2 are patent specifications and their disclosures are in many ways similar to disclosure of the opposed specification.  In views of this, it appears that the skilled person could reasonably be expected to have ascertained, understood and regarded these documents as relevant before the priority date. 

  3. I will proceed on the basis that a skilled person could reasonably be expected to ascertain, understand and regard D1 and D2 as relevant.

    Inventive step in light of the prior art documents  

  4. The opponent submitted that claims do not involve an inventive step in light of the common general knowledge referred in Cohen declaration as these claims were at least obvious in the sense that the skilled addressee would have been directly led as a matter of course to implement the features of these claims.

  5. First I will consider whether independent claims 1 and 9 are inventive in light of D1 and D2 when taken individually or in combination with each other and/or common general knowledge in the art.

    US 2002/0144264 A1 (D1)

  6. As discussed under the ground of novelty, D1 fails to disclose a second graphical timeline that indicates the periods of past programming, relative to the first graphical timeline, that has been recorded and is therefore available to be viewed.  It is therefore necessary to determine whether the skilled addressee would have been directly led as a matter of routine to implement the above feature in claims 1 and 9.

  7. In respect of the above feature, the Cohen declaration stated:

    “…functionality that indicates a period of past programming that has been recorded and is available to be viewed was commonly available prior to 22 June 2010.  I would consider that merely displaying this type of timeline relative to an EPG timeline (first timeline) would be a mere design choice that was available prior to 22 June 2010.”   

  8. Conventional EPGs do not display how much of an ongoing program a user has missed.  D1 solves this problem by providing a system wherein a user can instantaneously look at the completion status for one or more media programs represented within an EPG without the need to determine a program’s starting and ending time and performing a mental calculation.  Although recording and playing of media programs is well known in this art and technically their inclusion would present little challenge to the skilled addressee, there is no motivation evident in the material before me that would lead the skilled addressee, as a matter of routine, to modify the method described in D1 in the precise way necessary to produce the claimed invention.  Therefore I consider that claims 1 and 9 possess inventive step in light of D1.

    WO 2008/018695 A1 (D2)

  9. Claims 1 and 9 are distinguished from D2 in that the document does not disclose the second timeline that indicates the periods of past programming, relative to the first timeline, that has been recorded and available to be viewed. 

  10. In respect of the above feature, the Cohen declaration stated:

    “The second timeline in D2 is not displayed relative to the second graphical timeline in the sense that both timelines display the same metric using the same scale.  However, I would consider it to be a mere design choice to use the same metric (i.e. time) and the same scale to display the second timeline relative to the first timeline.  That is, the rectangle 64 could be easily aligned to be the program element in the grid.”

  11. D2 relates to extracting additional information from a received broadcasting signal and displaying EPG information via a broadcast guide window and progress status information for a recorded or played broadcast program via a progress status window thereby facilitating a user to recognize a recording progress status or a playing progress status of a broadcast program instantly.  Once again I cannot see any inducement from the material before me that would lead the PSA, as a matter of routine, to modify the method described in D2 in the precise way necessary to produce the claimed invention.  Therefore I consider that claims 1 and 9 possess inventive step in light of D2.

    US 2002/0144264 A1 (D1) and WO 2008/018695 A1 (D2) combined

  12. There is no evidence before me suggesting that the skilled addressee could reasonably be expected to have combined the disclosures of D1 and D2.  Notwithstanding this, even if it had been established that the skilled addressee could reasonably be expected to have combined the disclosure of D1 with D2 and/or common general knowledge in the art, the combination would not disclose the feature of a second timeline that indicates what has been recorded and shows this relative to the first timeline.  Therefore, I consider that the combination does not lead to the claimed invention.

  13. Overall I find that claims 1 and 9 are inventive.  The subject matter of claims 12 and 13 is similar to that of claims 1 and 9 respectively, and the remaining claims of the opposed specification are either appended to claim 1 or claim 9.  Therefore claims 2-8 and 10-13 are also inventive.  Consequently, the opposition fails on this ground of opposition.

    Section 40 Matters

    Sufficiency, Clarity, Fair basis

  14. The opponent submitted that the specification fails to describe the invention fully and that the claims lacked clarity and fair basis on several counts and directed my attention to the statement of grounds and particulars.   

  15. Having considered the specification as a whole, I cannot see any merit in the opponent's arguments regarding any of the issues raised by the opponent.  Notwithstanding that Mr Cohen makes mention of some of these issues, I note that he had no major difficulty with the specification.  All are matters which are easily resolved when the specification is read as a whole, as should be expected. 

  16. I find that the specification describes the invention fully, and the claims are clear and fairly based.

    Manner of Manufacture

  17. The opponent submitted that claims 1 and 4-13 are directed to the presentation of information characterised solely by the content of that information, and therefore are not a manner of manufacture.

  18. In respect of claim 1, the opponent argued that the claim is directed to an apparatus, which is merely a conventional DVR performing its normal functions, for presenting an indicator of a period of past program that has been recorded and is available to be viewed.  They stated that the indicator of a period of past programming is characterised solely by the information indicated and the effect is that of merely providing a visual characterisation of a timeline relative to another displayed timeline and so provided no material advantage.

  19. From reading the specification as a whole, it is clear that the core of invention lies in providing a digital interactive television equipment with new functionalities.  The claimed invention provides television equipment that displays a second timeline relative to the EPG.  The second timeline indicates the period of past programming that has been recorded and is therefore available to be viewed thus yielding additional information for controlling the interactive television.  In view of this I cannot agree with the opponent that the effect of the claimed invention is just providing a visual characterisation with no material advantage. 

  20. I conclude that the claims are for a manner of manufacture. 

    Conclusion

  21. The opponent does not succeed on any of the grounds of opposition.  

  1. Subject to appeal, I direct that the application proceed to grant.   

    Costs

  2. The award of costs is a discretionary matter.  It is a general principle in matters such as these that costs follow the event.  I see no reason to depart from this general principle and award costs against the opponent.  However, as the applicant did not participate in the hearing in the present matter, they are only entitled to costs under items 3, 5 and 6 of the Schedule 8 of the Patents Regulations.

Dr S. K. Aggarwal
Delegate of the Commissioner of Patents

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