Gilbarco Inc
[2020] APO 26
•4 June 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gilbarco Inc [2020] APO 26
Patent Application: 2014342209
Title:Crytographic watermarking of content in fuel dispensing environments
Patent Applicant: Gilbarco Inc
Delegate: O L Haggar
Decision Date: 4 June 2020
Hearing Date: Written submissions filed on 24 September 2019
Catchwords: PATENTS – examiner’s objections – computer implemented invention – use of watermarking to authenticate content during rendering – substance of the claimed invention provides the technical advantage of allowing authentication and rendering to be performed simultaneously – claimed invention is a manner of manufacture – claimed invention not naturally suggested by the prior art – claimed invention involves an inventive step – application to proceed to acceptance
Representation: Patent attorney for the applicant: FB Rice Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014342209
Title:Cryptographic watermarking of content in fuel dispensing environments
Patent Applicant: Gilbarco Inc
Date of Decision: 4 June 2020
DECISION
I allow the amendments proposed to the specification on 18 January 2019. The grounds of objection raised by the examiner cannot be maintained. As there are no other objections outstanding, I direct that the application proceed to acceptance.
INTRODUCTION
Patent application 2014342209 (the present application) was filed by Gilbarco Inc (the applicant) on 30 October 2014 under the provisions of the Patent Cooperation Treaty as international application PCT/US2014/063165 claiming priority from US application 61/897368 filed on 30 October 2013.
The present application was filed after 15 April 2013. The fate of the present application is as a consequence governed by the Patents Act 1990 (the Act) as amended by the IntellectualProperty Laws Amendment (Raising the Bar) Act 2012. These amendments included the introduction of new section 49(1). Under this provision, I must accept the present application if satisfied on the balance of probabilities that it complies with the requirements of the Act. If I am not so satisfied, I can refuse the present application.
A first examination report was issued on 10 July 2018 raising objections in relation to manner of manufacture and inventive step. The objection relating to inventive step was primarily based on the disclosure of US application 2010/0027837 (the Levy application). The applicant responded to the first examination report on 18 January 2019 by way of written submissions and proposed amendments to the specification.
A second examination report was issued on 11 February 2019 maintaining the objection relating to manner of manufacture, but not the objection relating to inventive step. The applicant responded to the second examination report on 19 June 2019 via written submissions alone.
A third examination report was issued on 10 July 2019 again maintaining the objection relating to manner of manufacture. The third report additionally re-introduced the objection relating to inventive step on the basis of the Levy application.
The applicant requested and was given an opportunity to be heard on the examiner’s objections by way of written submissions. The applicant duly filed its written submissions on 24 September 2019.
In accordance with regulation 13.4(1)(g), when the Commissioner gives an applicant an opportunity to be heard in relation to an examiner’s objection and issues a written decision, the period for gaining acceptance is extended for a period of three months from the date the written decision is issued or, pursuant to regulation 13.4(3), for a longer period if the Commissioner is satisfied that acceptance should be postponed.
THE SPECIFICATION
Background to the present invention
The field of the present invention is said to generally relate to fuel dispensers, and more specifically to “managing content employed by fuel dispensers”.
The specification explains that retail fuel dispensers allow the input of customer data by routine means such as credit card swiping and postal code entry. However, these dispensers are unable to utilise business applications or services desired by retail merchants that may potentially increase revenue, maintain loyalty, and offer a unique user experience, while maintaining or guaranteeing a level of security mandated by governing bodies that include Mastercard and Visa. This is due to the possibility of such applications or services accessing the same customer data utilised at the fuel dispensers for payment or other transactions.
It accordingly may be desirable to authenticate the content at a fuel dispenser by only allowing applications or services signed by specified entities to be executed or presented on the dispenser. However, this requires components of the fuel dispenser to be configured to verify a signature of content uploaded thereto against databases of allowed signatures before execution is permitted. Thus the manufacturer is responsible for ensuring that third-party applications are reviewed and tested prior to signing the content for use on the fuel dispenser. Furthermore, the need to verify the signature prior to execution or presentation of content can be burdensome for processors that are not concerned with the security of the content, or otherwise may not hold information necessary to verify the signature.
The description
The present invention is broadly described as residing in the use of cryptographic watermarking for content executed or otherwise rendered on a device during execution or rendering in authenticating the content. If the watermarking is not authentic, or is not authenticated within a certain period of time, the content may be blocked or otherwise terminated from being presented even if rendering or execution has already commenced.
The specification proceeds to describe the present invention with reference to a number of drawings, some of which are now reproduced as an aid to understanding.
The system depicted in Figure 1 above includes a secure device 102 that renders content on a display 104. The display can include any video output device. In addition, the display may have touch input functionality to allow interaction with content rendered on it. The specification states that those skilled in the art would recognise that the term “secure device” generally refers to a device where it is not possible to access private information (such as PIN codes) that is stored within the device. Any attempt to tamper with a secure device can result in erasure of the information before it can be accessed. In the above embodiment, secure device 102 comprises a content rendering component 106 for providing content for rendering on the display 104, and a watermarking verifying component 108 for obtaining watermarking information from the content, and determining whether the content can be authenticated based on the watermarking information.
In the example where the content includes video data, content rendering component 106 can render the video on display 104, and watermarking verifying component 108 can obtain watermarking information from certain portions of the rendered video, such as one or more video frames or pixels within the frames. In addition, the watermarking verifying component can obtain watermarking information from the rendered content based on received watermarking description information, and can verify the watermarking information with the received information related to authenticity of the watermarking. If watermarking verifying component 108 can authenticate the watermarking information, content rendering component 106 can continue to render content to display 104. However, if watermarking verifying component 108 cannot authenticate the watermarking information (or cannot do so within a certain period of time), content rendering component 106 can block or otherwise terminate content rendered to display 104.
The flowchart depicted in Figure 6 below broadly corresponds to the series of operations performed by the system of Figure 1. At 602, received content can be rendered on a display. The content can be received from a media device and can include watermarking information for authenticating the content. The content can begin rendering during the authentication process. At 604, watermarking description information is optionally received. For example, this information can be received over a secure link with a server at a manufacturer of a secure device. The watermarking description information can describe locations or expected values of watermarking information embedded in the content.
At 606, watermarking information can be obtained from the received content. For example, this can include obtaining the watermarking information based at least in part on the received watermarking description information. In other examples, information for locating the watermarking information can be known or otherwise pre-programmed by a manufacturer. As described, for example, where the content is video, the watermarking information can be embedded in pixels of frames such that pixel values of the video within the frames are replaced with watermarking information values. Thus, at 606, the watermarking information is extracted from the pixels as indicated by the watermarking description information or otherwise known.
At 608, the watermarking information is authenticated. This can include comparing values in the watermarking information with expected values (which can be specified within watermarking description information or otherwise known). In another example, authenticating the watermarking information can include verifying a signature generated from the watermarking information. Verifying the watermarking information at 608 can include substantially any form of verifying the watermarking information with known values, values derived from the watermarking information, or substantially any sort of authentication. At 610, whether content is rendered on the display can be controlled based on whether the watermarking information is authenticated or is not done so within a certain time.
The claims
The specification as proposed to be amended on 18 January 2019 in response to the first examination report ends with sixteen claims. The proposed independent claims read as follows:
“1. A fuel dispenser for authenticating content for display, comprising:
a display;
a secure device coupled to the display for controlling content rendered on the display; and
a media device that obtains watermarked content for rendering on the display, wherein the watermarked content includes embedded watermarking information,wherein the secure device comprises:
a content rendering component for receiving the watermarking [sic: watermarked] content from the media device and rendering the watermarked content on the display; and
a watermarking verifying component for determining the watermarking information embedded in the watermarked content and controlling whether the watermarked content is rendered on the display based at least in part on the watermarking information,wherein the watermarking verifying component is configured to:
determine the watermarking information embedded in the watermarked content as the watermarked content is being rendered;
determine whether the watermarked content can be authenticated based on the watermarking information;
terminate rendering of the watermarked content in response to a determination that the watermarked content cannot be authenticated based on the watermarking information.12. A system for generating watermarked content, comprising:
a content receiving component for obtaining content for watermarking;
a watermarking component for generating watermarking information for the content and embedding the watermarking information within the content to generate watermarked content wherein the watermarking information is configured to be authenticated as the content is rendered or executed to a display, the watermarking information is further configured to:
enable a content rendering component to render the content in response to authenticating the watermarking information; and
enable a content rendering component to terminate rendering of the content in response to a failure to authenticate the watermarking information;a watermarking information component for generating watermarking description information indicating locations within the watermarked content of the watermarking information; and
a content providing component for communicating the watermarked content to a media device.”
It is convenient to note here that the amendments proposed to the specification are in my opinion allowable under section 102.
OUTLINE OF THE EXAMINER’S OBJECTIONS
The examiner has objected that the claimed invention is not a manner of manufacture. After providing a detailed analysis of what is alleged to constitute the substance of the claimed invention, the examiner concludes that “… there is no improvement in the use of computer technology; the implementation requires no more than generic computer implementation; and the computer is a mere intermediary, or tool, for implementing the method.” It consequently emerges that although directed to a physical product (viz. a fuel dispenser in the case of proposed claim 1 and a system in the case of proposed claim 12), the examiner has as a matter of substance characterised the claimed invention as a computer implemented method.
The examiner has also objected that the invention defined by proposed claims 1 and 12 does not involve an inventive step when compared to the Levy application, and that the features added by the proposed dependent claims are either disclosed by the Levy application or are non-inventive.
MANNER OF MANUFACTURE
Statutory framework
Section 18(1)(a) of the Act provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
Legal principles
The classic statement of the law on manner of manufacture is set out in National Research DevelopmentCorporation v Commissioner of Patents [1959] HCA 67, 102 CLR 252 (NRDC) at 269:
"The right question is: 'Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?' "
The Court then went on to set out a test in terms applicable to the facts of that case:
"a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour."
The Court, however, cautioned that any attempt to state the ambit of section 6 of the Statute of Monopolies by precisely defining “manufacture” is likely to fail and, further, “to attempt to place upon the idea the fetters of an exact verbal formula...would be unsound to the point of folly” (at 277). These cautionary observations were later reinforced in D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
This case-by-case methodology must have regard to the substance of the claimed invention, not simply the literal form of the claim. As stated in Myriad at [144]:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
The Courts have adopted the same approach when considering the patentability or otherwise of computer implemented inventions, most notably in Research AffiliatesLLC v Commissioner of Patents [2014] FCAFC 150 (Research Affiliates) , Commissioner of Patents v RPL Central PtyLtd [2015] FCAFC 177 (RPL), and Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass). For example, as stated by the Court in RPL at [96] in relation to an invention that was in substance a scheme:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology ... There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
And further at [98]:
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
The Court next reiterated a number of principles arising from Research Affiliates:
- It is necessary to ascertain whether the contribution to the claimed invention is technical in nature.
- One consideration is whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
- Does the claimed method merely require generic computer implementation?
- Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
In Aristocrat Technologies Australia Pty Ltd [2016] APO 49 at [35], a delegate of the Commissioner set out a non-exhaustive summary of the issues to be considered when applying these principles which I do not need to repeat here, but will refer to as necessary in this decision.
Substance of the claimed invention
It is clear from the authorities that the assessment of whether a claimed invention may be properly regarded as directed to patentable subject matter is one of substance over form. That is to say, it is necessary to go beyond the literal form of words used in a claim when assessing the substance of the claimed invention. Thus, for example, it was found in Sportsbet PtyLtdv Diogenes Limited [2017] APO 60 that although literally defining a physical product (viz. a system), the “substance of the invention defined by the independent claims is a scheme embodying a business method and, as such, they are not directed to a manner of manufacture.”
Contribution to the art
The substance of a claimed invention is to be understood in the context of the contribution the claimed invention makes to the art. As said by Nettle and Gageler JJ in Myriad at [144] (footnotes omitted):
“The way in which a claim is drafted cannot, however, transcend the reality of what is in suit … Monopolies are granted for inventions, not for the inventiveness of the drafting with which applicants choose to describe them. Hence, as was observed in Eli Lilly & Co's Application, where an alleged invention is based on the discovery of the particular properties of known compounds, care must always be taken to examine the form of claim actually made. Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
The contribution to the art in turn necessitates a consideration of the specification as a whole and the relevant common general knowledge and prior art. However, the need to take account of the contribution to the art does not mean that the requirements of section 18(1)(a) of the Act overlap with those of section 18(1)(b). They are distinct requirements. An enquiry as to whether a claimed invention lacks novelty or an inventive step under section 18(1(b) is based on the form of words used in the claim, not its substance. As a consequence, a claimed invention may be found to be novel and to involve an inventive step and yet, in substance, fail to meet the separate requirement for patent eligibility under section 18(1(a).
The examiner’s objection
The examiner has objected that none of the proposed claims are in respect of a manner of manufacture. Most relevantly (and with original emphasis):
“… from reading your application as a whole the substance of the alleged invention relates to managing and authenticating through watermarking content employed by the fuel dispensers. The claims define combination of set of steps such as obtaining content for watermarking, generating watermarking information for the content and embedding the watermarking information within the content to generate watermarked content, enabling a content rendering component to render the content, enabling a content rendering component to terminate rendering of the content, generating watermarking description information indicating locations within the watermarked content of the watermarking information and communicating the watermarked content to a media device.
The combination of these features does not result in any improvement to the computer or the functioning of the computer. The specification, when read as a whole, does not provide specific technical details to indicate how the combination of these well-known functions of a computer result in the claimed invention contributing to an improvement in the computer or functioning of the computer. The combination of features is merely linked so as to implement the abstract idea, the inventor's contribution is considered to lie [sic]. Moreover, this watermarked content presentation system is defined merely by its function in the abstract idea and any convenience arising from the claimed subject matter is attributable to a program and requires a standard computer to operate only in a standard fashion and does not confer any technical improvements on the computer or on another machine.
In the last response, page 1, you have stated that ‘In particular, the claimed invention recites that a determination as to whether content can be authenticated based on watermarking information is made during rendering of the content, as opposed to before or after. Further, rendering is terminated (e.g. blocked) in response to a determination that the content cannot be authenticated. As discussed in our previous response, this distinguishing feature ensures data security when presenting content at fuel dispensers. The claimed invention provides technical effects with respect to improving efficiency of processing resources because rendering is not completed unnecessarily by the limited processing resources available at a fuel dispenser.’
However, I consider that there is no technical advantage in the combination of components of the claimed invention and computer is used in this invention for merely automating a set of steps for presenting watermarked content at the fuel dispensers. Therefore the alleged specific processing steps of the claimed invention appear to involve only generic computer implementation. The features as defined by the claims are clearly put into effect using a generic computer as disclosed in your specification. Furthermore, I note your reference to the previous examination response where a technical effect was discussed in relation to greater processing efficiencies. I would like to clarify that I do not see any contribution present in the claims that gives rise to improved processing efficiency or processing power. There is no particular manner of programming the computer claimed that appears to produce such a result.”
As noted earlier, it has become apparent that although the proposed claims literally define a physical product, the examiner has nevertheless regarded them as in substance defining a computer implemented method. Furthermore, the examiner has specifically referred to a fuel dispensing environment. It is important to realise that, unlike proposed claim 1, proposed claim 12 is not limited to this environment.
The applicant’s submissions
The applicant provided written submissions for the hearing. These submissions can be relevantly summarised (with original emphasis) as follows:
“Substance of the invention
[21] The substance of the invention … relates to the provision of improved security at fuel dispensers by making it difficult for third parties to gain unauthorised access to sensitive data, and furthermore by doing so in a manner that makes efficient use of the limited processing resources available at a fuel dispenser.
[22] Authenticating watermarked content as the content is being rendered is the contribution made by the claimed invention.
The substance of the invention is more than a mere scheme
[25] We submit that the present claims define more than a mere scheme or an abstract idea. In contrast with the inventions considered in Research Affiliates and RPL, the invention is not a mere computer implementation of an otherwise non-patentable business method or scheme. The substance of the invention provides a technical solution in the manner that rendering is performed to ensure data security while making efficient use of processing resources.
The technical problem
[29] As explained above … the claimed invention recites that a determination as to whether content can be authenticated based on watermarking information is made during rendering of the content, as opposed to before or after. Further, rendering is terminated (e.g. blocked) in response to a determination that the content cannot be authenticated. This distinguishing feature ensures data security when presenting content at fuel dispensers. The claimed invention therefore provides technical effects with respect to improving efficiency of processing resources because rendering is not completed unnecessarily by the limited processing resources available at a fuel dispenser.
[31] The invention addresses the provision of security measures at fuel dispensers, not only to provide authentication of content at a fuel dispense but to do so in a manner that ensures the efficient use the limited processing resources at the fuel dispenser. This is clearly not a business problem being solved, but a technical problem relating to both data security and optimising the computational burden to render and display data.
A technological innovation that addresses a business problem and a technical problem
[33] In [Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (Rokt)], his Honour found in that case the business problem (of attracting the attention of a user) was translated into the technical problem of how to use computer technology to address the business problem.
[34] The presently claimed invention involves a technical innovation, of computer technology, to address a problem that has been translated into a technical problem.
The claimed invention is foreign to the normal use of computers
[40] Determining the substance of the invention should not be an investigation of features in isolation but looking at the working combination of features as a whole. We submit that the presently claimed invention is a new working combination of features that has not previously been achieved. The Examiner has not provided any evidence of the state of the art, or the prior art, that would indicate the present features were generic computer implementation.
[41] The present invention includes particular steps and we submit that this combination is foreign to the normal use of a computer. This combination of specific features provides a new function to the computer to ensure the secure display of content by avoiding the unauthorised display of content.The claimed invention demonstrates an improvement to the particular technological environment
[44] The claimed invention recites that a determination as to whether content can be authenticated based on watermarking information is made during rendering of the content, as opposed to before or after. Further, rendering is terminated (e.g. blocked) in response to a determination that the content cannot be authenticated. The contribution to the art is that the claimed combination of features ensures data security when presenting content at fuel dispensers, and does so in a computationally efficient way by authenticating watermarked content as the content is being rendered.
[46] Authenticating watermarked content as the content is being rendered was not possible in the prior art systems, and it was not even contemplated.
[47] The Applicant’s contribution lies in the concept of authenticating watermarked content as the content is being rendered, which leads to improvement in the operation of the computer system itself. That is, in performing the steps of the claimed invention, the computational burden in rendering content on a display is optimised – in particular for the case where the watermarked content cannot be authenticated.”
It can be seen that similarly to the examiner, the applicant has regarded the proposed claims as in substance defining a computer implemented invention and places particular emphasis on its application and operation in a fuel dispenser. As I have said, proposed claim 12 is not limited to this environment.
Consideration
Subject matter of the claims
Proposed claim 1 is directed to a fuel dispenser having a number of components:
- a display;
- a secure device coupled to the display; and
- a media device that obtains watermarked content in which watermarking information is embedded for rendering on the display.
The secure device in turn comprises a content rendering component for rendering the watermarked content on the display, and a watermarking verifying component. The watermarking verifying component is operative to:
determine the watermarking information as the watermarked content is being rendered;
determine whether the watermarked content can be authenticated based on the watermarking information; and
terminate rendering of the watermarked content in response to a determination that it cannot be authenticated on the basis of the watermarking information.
Proposed claim 12 is directed to a system for generating watermarked content which includes:
- a content receiving component for obtaining content for watermarking;
- a watermarking component for generating and embedding watermarking information within the content to generate watermarked content; and
- a content providing component for communicating the watermarked content to a media device.
The system is further defined as including a watermarking information component for generating watermarking description information indicating locations within the watermarked content of the watermarking information. An initial comparison suggests there is little in common between the proposed independent claims. However, it is evident on closer analysis that, in a similar vein to the watermarking information utilised by the fuel dispenser of proposed claim 1, the watermarking information embedded within the watermarked content generated by the system of proposed claim 12 is operative to:
be authenticated as the content is rendered to a display;
enable a content rendering component to render the content in response to authenticating the watermarking information; and
enable a content rendering component to terminate rendering of the content in response to a failure to authenticate the watermarking information.
The substance of the claims
The examiner has effectively argued that the substance of the claimed invention simply resides in the implementation of an abstract idea or scheme using generic computer technology:
“…The claims define combination of set of steps [which do] not result in any improvement to the computer or the functioning of the computer. The specification, when read as a whole, does not provide specific technical details to indicate how the combination of these well-known functions of a computer result in the claimed invention contributing to an improvement in the computer or functioning of the computer. The combination of features is merely linked so as to implement the abstract idea …”
On my understanding, the examiner is not suggesting that the use of a computer is merely incidental to the claimed invention. The examiner’s main point of contention instead appears to be that the alleged contribution to the art and, consequently, the substance of the claimed invention, does not lie outside the normal use of a computer.
The applicant does not deny that the use of watermarking to authenticate media content is generally known in the art. However, the applicant has rejected the examiner’s characterisation of the substance of the claimed invention. It submits that the combination of features defined by the proposed independent claims produces a practical and useful result that has not previously been achieved. More particularly, the applicant submits that in substance the claimed invention performs the following steps:
- determining the watermarking information embedded in watermarked content,
- determining whether the watermarked content is authenticated, and
- terminating rendering if the watermarked content cannot be authenticated.
and that:
“Authenticating watermarked content as the content is being rendered is the contribution
made by the claimed invention.”
The applicant has repeatedly emphasised that the step of determining whether content can be authenticated during rendering leads to a technical contribution in ensuring data security while making efficient use of processing resources. The applicant further submits that this contribution necessarily requires more than generic computer implementation.
The specification indicates at page 6 that the present invention can be implemented:
“ as a method, apparatus, or article of manufacture using standard programming and/or engineering techniques to produce software, firmware, hardware, or any combination thereof to control a computer to implement the disclosed subject matter. The term ‘article of manufacture’ as used herein is intended to encompass a computer program accessible from any computer-readable device, carrier, or media. For example, computer readable media can include but are not limited to magnetic storage devices … optical discs … smart cards, and flash memory devices … Additionally it is to be appreciated that a carrier wave can be employed to carry computer-readable electronic data such as those used in transmitting and receiving electronic mail or in accessing a network such as the Internet or a local area network”.
The specification at pages 29 and 30 appears to be of like effect.
This disclosure suggests to me that the claimed invention only requires the use of generic computer technology. Nevertheless, I am satisfied that the claimed invention in substance involves the use of computers in a way not previously envisaged. As pointed out by the applicant, the examiner has not provided any evidence as to the state of the common general knowledge in the art of watermarking. I additionally note that the Levy application, which is the only prior art document relied on by the examiner, does not suggest the contribution made by the claimed invention in allowing rendering and authentication of watermarked content to be performed simultaneously. It by contrast teaches that the watermarked content must be authenticated before rendering can commence. The contribution is clearly technical in nature, and achieves a practical and useful result. In the context of proposed claim 1, the claimed invention in substance ensures both data security and the efficient use of processing resources when rendering content at a fuel dispenser. Furthermore, and in view of my earlier comparative analysis of the independent claims, I believe that it can be reasonably inferred that the system defined by proposed claim 12 would produce a comparable technical effect, albeit in wider terms.
The applicant has alternatively submitted that the use of generic computer technology is not fatal to patent eligibility if it can be shown that the claimed invention addresses a “business problem” which was translated into a “technical problem” of how to utilise computer technology to address the business problem per Rokt at [205]-[213]. However, this decision was recently overturned on appeal (Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86) and, consequently, I will not consider the applicant’s alternative submission any further.
On the basis of the foregoing, I am satisfied on balance that the claimed invention is a manner of manufacture.
INVENTIVE STEP
Statutory framework
Section 7(2) of the Act provides that an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date, whether considered separately or together with the kinds of information mentioned in section 7(3). This information relevantly includes prior art information made publicly available in a single document.
Legal principles
The generally accepted test for inventive step 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 FoundationLtd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286). The High Court approved this approach in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 (Alphapharm) at [50]).
However, this reformulation of the so-called “Cripps question” is not of universal application (Generic Health Pty Ltd v Bayer Pharma Aktiengsellschaft [2014] FCAFC 73 at [71]). Thus it has, for example, been said in Dynamite Games Pty Limited v Aruze Gaming AustraliaPty Limited [2013] FCA 163 at [95] that as a precursor to an inventive step “there must be some difficulty overcome or some barrier crossed”. Furthermore, if the claimed invention lies in a combination of features, the question is whether the combination as a whole, rather than a selection of one or some of the features, is obvious (Alphapharm at [41]).
It is clear from section 7(2) that the question of inventive step has to be considered against the background of the common general knowledge in the field of the claimed invention. The state of the common general knowledge is a question of fact which must be determined on the basis of evidence. For the purposes of examination, this evidence may ordinarily be derived from technical publications such as standard texts and handbooks (ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345 at [112]), or admissions made in patent specifications (Bristol-Myers Squibb Co v FHFaulding Limited [2000] FCA 316 at [30]).
The Levy application
The Levy application relates to the derivation of identifiers from multimedia content.
By way of background, the Levy application explains that digital watermarking is a process for modifying media content by embedding a machine-readable code. Digital watermarking is commonly applied to media such as images, audio signals, and video signals. The media content may be modified such that the embedded code is imperceptible or nearly imperceptible to a user, yet may be detected through an automated detection process. Digital watermarking systems are said to primarily consist of two components: an embedding component for embedding watermark in the media content, and a reading component to detect and read the embedded watermark.
A first aspect of the invention disclosed by the Levy application is said to reside in a method for decoding auxiliary data in multimedia content with two or more media signals of different media types. This method decodes watermarks in the media signals and uses the watermarks from the different media signals to control processing of the multimedia content. One application of this method is to use the watermark in one media signal to locate the watermark in another media signal. This technique may also be applied to control playback, copying or recording of the multimedia content. Alternatively, the watermark in the first media signal may be used to de-scramble, decrypt, or decompress the second media signal, or to decode metadata which may be hidden for security purposes.
Most notably, the Levy application discloses the use of digital watermarking for media authentication. As stated at [0041]-[0042]:
“An authentication application may use watermark messages and/or metadata to authenticate media signals within the multimedia content. One or more of the media signals in multimedia content may be tampered with. Multimedia content poses an additional problem because media signals may be swapped into the content in place of the original signals … One way to authenticate the media signals is to extract features from them, hash the features, and insert the hashed features into the watermarking messages of one or more of the media signals at encoding time.
To verify authenticity, the application at the decoder side repeats the process of extracting the features from the received media types … hashing these features, and then comparing the new hash with the hash extracted from the watermark message or messages. The objective of the hash is to create a content dependent parameter that may be inserted into a watermark message, or in some cases, in metadata associated with a media signal.”
It is further stated at [0068] that where media is unable to be authenticated, an action may be triggered which includes, for example, preventing copying, recording or playback.
The examiner’s objection
In accepting the findings of an examination report on the European family member of the present application, the examiner states:
“… paragraphs 0034-0035 [of the Levy application] teach the key feature of the invention, enabling a content rendering component to terminate rendering of the content in response to a failure to authenticate the watermarking information.
In relation to claim 12, the claimed invention is distinguished from [the Levy application] by the watermarking information component for generating watermarking description information indicating locations within the watermarked content of the watermarking information. However, I consider that this difference between [the] claimed invention and the citation is the common general knowledge in the art of watermarking. Therefore the person skilled in the art would directly and without difficulty, by routine steps, arrive at a solution which is the same as the claimed solution, and therefore the claimed invention lacks an inventive step.
In relation to claim 1, the feature of ‘watermarking description information …’ of claim 12 is missing from claim 1 and the only difference between claim 1 and [the Levy application] is the fuel dispenser. However, I consider that this difference between [the] claimed invention and the citation is obvious and the person skilled in the art would directly and without difficulty, by routine steps, arrive at a solution which is the same as the claimed solution, and therefore the claimed invention lacks an inventive step.”
The applicant’s submissions
The submissions provided by the applicant with regard to the ground of inventive step essentially repeat the submissions it has made in relation to manner of manufacture. In brief:
“[13] There is no disclosure or suggestion in [the Levy application], in paragraphs [0034]-[0035] as cited by the Examiner or otherwise, that any determination as to whether content can be authenticated based on watermarking information is made during rendering of the content.
[16] Authenticating watermarked content as the content is being rendered is the contribution made by the claimed invention. This step in the rendering process means that potentially unsecure content is prevented from being fully presented at the fuel dispenser (thus ensuring that it is difficult for third parties to gain access to sensitive data presented at the fuel dispenser via compromised content), and moreover this step ensures that these advantages are provided in a manner that reduces the burden on processing resources at the fuel dispenser.”
Consideration
Proposed claim 1 is directed to a fuel dispenser and is, as a consequence, immediately distinguishable from the Levy application which at most discloses a method for authenticating media signals within multimedia content using digital watermarking without any suggestion of its application to a fuel dispensing environment. The examiner has not provided any evidence to show that a person skilled in the field of the presently claimed invention would, as a matter of routine, have looked to the disclosure of the Levy application as a possible solution to the problems with known fuel dispensers identified in the specification, much less that having considered the disclosure of the Levy application the skilled person would be directly led as a matter of course to the solution claimed by proposed claim 1.
Furthermore, the examiner’s main contention regarding proposed claim 1 is that the feature of “enabling a content rendering component to terminate rendering of the content in response to a failure to authenticate the watermarking information” is disclosed by the Levy application at [0034]-[0035]. I do not agree. Proposed claim 1 specifies that rendering is terminated in response to a determination that the content cannot be authenticated. This can only mean that a determination as to whether content can be authenticated based on watermarking information is in accordance with proposed claim 1 made during rendering of the content. On the other hand, the Levy application does not provide any direction in the paragraphs cited by the examiner or elsewhere to authenticate watermarked content as the content is being rendered. It instead teaches that any watermarking information is extracted and processed before the content is rendered. This is readily illustrated by the example disclosed at [0009]-[0014] in which the watermark included in a media signal is used to decrypt the media content, or identify metadata used to control playback of the media content. As submitted by the applicant, “such operations must be performed before playback of the media content can be commenced”.
It is apparent from the foregoing considerations that the invention defined by proposed claim 1 could not be arrived at by the skilled person without significantly altering the essential character of the disclosure of the Levy application. Clearly, this would involve far more than the taking of routine steps.
The above reasoning similarly applies to proposed claim 12 which, although not limited to a fuel dispensing environment, includes the feature of a watermarking component for generating watermarking information “configured to be authenticated as the content is rendered or executed to a display” (my emphasis). The watermarking information is further said to be configured to “enable a content rendering component to render the content in response to authenticating the watermarking information; and enable a content rendering component to terminate rendering of the content in response to a failure to authenticate the watermarking information” (the emphasis is again mine). Proposed claim 12 additionally includes the feature of a watermarking information component for generating watermarking description information indicating locations within the watermarked content of the watermarking information. The Levy application does not disclose this feature, but rather relies on locating a watermark in a first media signal in order to locate the watermark in a second media signal. The examiner has argued that the additional feature merely constitutes common general knowledge in the art of watermarking which I find to be unpersuasive in the total absence of corroborative evidence.
On the basis of the foregoing, I am satisfied on balance that the invention defined by proposed claims 1 and 12 involves an inventive step. It necessarily follows that the invention defined by the proposed dependent claims is likewise non-obvious.
CONCLUSION
The invention defined by the claims as proposed to be amended on 18 January 2019 is, contrary to the objections raised by the examiner, a manner of manufacture and involves an inventive step. As there are no other objections outstanding, I direct that the application proceed to acceptance.
O L Haggar
Delegate of the Commissioner of Patents
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