Guard-Well Communications Pty Ltd v Tactical Technologies Pty Ltd

[1998] APO 68

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 672800 in the name of GUARD-WELL COMMUNICATIONS PTY LTD

Title:          Security Systems

Action:          Opposition under section 59 (Patents Act 1990) by TACTICAL TECHNOLOGIES PTY LTD

Decision:          Issued            .

Abstract

Matters raised which were not in the statement of grounds and particulars; construction of documents by a skilled addressee; overseas expert; common general knowledge in Australia not established; not apparent on the face of the specification that the necessary threshold of inventiveness is absent; opposition wholly unsuccessful.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 672800 by GUARD-WELL COMMUNICATIONS PTY LTD and opposition thereto by TACTICAL TECHNOLOGIES PTY LTD

background

Patent application 672800 (the application) was filed as 44627/93 on 13 August 1993 by GUARD-WELL COMMUNICATIONS PTY LTD (Guard-Well) claiming priority from an Australian provisional filed 17 August 1992.  Acceptance was advertised on 17 October 1996.

On 3 December 1996 a notice of opposition was lodged by TACTICAL TECHNOLOGIES PTY LTD (Tactical), followed by a statement of grounds and particulars on 3 March 1997.  The grounds relied on are sections 18(1)(a) and 18(1)(b)(i) and (ii), ie manner of manufacture, novelty, and obviousness.  No evidence in answer was filed.

A second notice of opposition was also lodged, but was withdrawn after the service of a statement of grounds and particulars, which however is identical to that filed by Tactical.

After several unopposed extensions, service of the evidence in support was completed on 3 March 1998.

The hearing was held in Canberra on 19 November 1998.  The applicant was represented by Mr S Wilson, patent attorney of Griffith Hack, and the opponent by Messrs S Park and J Redfern, patent attorneys of Baldwin Shelston Waters.

THE SPECIFICATION

The invention relates to security systems, such as a fire or burglar alarm, and in particular to an arrangement for monitoring the operation of such an alarm.  The specification was substantially amended during examination in response to adverse reports by the examiner; my summary of the invention and its background as set out in the specification at acceptance follows.

Where a building is fitted with (eg) a burglar alarm, it is sometimes desirable to remotely monitor the operation of the alarm, perhaps because the building is often unoccupied.  As is known, this can be done by causing the alarm, when activated, to signal a remote station, eg by dialling-up a commercial monitoring service or emergency service.  This can be done by wired or wireless communication link.  Arrangements are also known in which, where the primary wired(wireless) link fails, a back-up wireless(wired) link is automatically brought into service.  Thus the specification gives as an example an arrangement in which the primary link is via a normal telephone line, but in a situation where that line has been severed by an intruder, the system then falls back to a cellular phone link.

The problem here, as recited in the specification, is that over time the construction of nearby buildings may degrade the capability of the wireless link, which in the absence of routine testing will not be discovered, with the result that when needed the link may not function.

The solution advanced in the specification is apparatus which monitors the carrier signal strength of the wireless communication link provider at the location of the guarded premises, and if the signal strength falls below a set level, that apparatus causes the alarm system to send an alarm signal via the wired link as an alert to the doubtful wireless link so that it can be investigated.

I note here that the assumption must be that the wireless communication link provider's station includes a transmitter which frequently or continuously transmits a signal, the carrier signal strength of which can be monitored, such as the BCCH (broadcast control channel) in GSM cellular phone systems.  For convenience, in the following I will refer to the wireless link as a cellular link, though this is not an essential feature of the invention.

The specification concludes with 15 claims; the 2 independent claims are as follows:

"1. A security system comprising
(a) an alarm system having a telephone land line announcement facility which, in use, will telephone an announcement of an alarm condition in premises in which the alarm system is installed
(b) a wireless communication device as a back-up for the telephone land-line
(c) an interface for receiving alarm data from the alarm system and for providing that data to said wireless communication device
(d) a telephone land line, line fault monitor for detecting interruption or severing of the telephone land-line, and
(e) switching means interconnected with the alarm system, line fault monitor, and interface whereby, in the event of the telephone land line being operative, alarm data can be transmitted via the telephone land line, and the event of interruption or severing of the telephone land line, will switch the system to the wireless communication device to
(i) provide an automatic announcement of a telephone land line interruption or severing and
(ii) permit the wireless communication device to operate for automatically transmitting alarm data via the wireless communication device; and
a signal strength means for monitoring a carrier signal strength with the provider of the wireless communication device service, said signal strength interface providing an output alarm signal if the monitored carrier signal strength is lower than a set signal strength for reliable communication, said output alarm signal being supplied to said alarm system and for providing automatic dial-up via the telephone land line so the lack of adequate carrier signal strength can be investigated.

9. A security system comprising:
(a) an alarm system having a telephone land line alarm announcement facility which, in use, will telephone an announcement of an alarm condition in premises in which the alarm system is installed
(b) a wireless communication device as a back-up for the telephone land line
(c) an signal strength means for monitoring a communication carrier signal strength with the provider of a wireless communication device service, said signal strength interface providing an output alarm signal if the monitored carrier signal strength is lower than a set signal strength for reliable communication,
said output alarm signal being supplied to said alarm system and for providing automatic dial-up via the telephone land line so the lack of adequate carrier signal strength can be investigated."

EVIDENCE

The evidence in support consists of the following:

1. A declaration by Allan Seckold with exhibits A through to E.  Mr Seckold is managing director of Tactical, and has had many years experience in the electronics industry, primarily in the field of security systems.  The exhibits include a single patent specification, US 5125021 ('021), dated 23 June 1992, and some extracts from a US security industry magazine which contains advertisements for cellular radio alarm systems (exhibits D and E).  These extracts were not foreshadowed in the grounds and particulars.  In my view on their face they fall far short of disclosing what is presently claimed, and evidence is also lacking of publication in Australia, either of the systems advertised or the magazine itself.  Consequently I will have no further regard to these exhibits.

2. A declaration by Mayer M Lebowtz, with exhibits ML 1-9.  Mr Lebowitz has been engaged in the manufacture and sale of a variety of electronic equipment over many years, including remotely monitored alarm systems.  The exhibits include six patent specifications, three of them (including '021) held by Mr Lebowitz.  However I note that US 4658096 and GB 2194119 were not included in the grounds and particulars.  They can also be readily seen to be of little relevance to the present invention and I will not consider them further.  The only ones to which I was actually referred at the hearing were '021 and US 5146486.  '021 is a continuation in part of '486 and was published before the earliest possible priority date, whereas '486 was not published until just after that date.  However for present purposes the disclosures are equivalent, and I will refer only to '021.

The applicant did not file any evidence in answer.

The Disclosure of '021

This is the document on which the opponent places most reliance.  It discloses a remotely monitored alarm system which uses a cellular network as the primary communications link and a back-up communications link using the subscriber's telephone land line.  The subscriber's station is provided with an "RF fault module" for "constantly monitoring the integrity of the cellular link and switching to the land line link if the cellular link is not operating properly".  An important issue in this opposition turns on the operation of the "RF fault module".

SUBMISSIONS

The principal submissions made by the parties are as follows:

By Tactical

· The means for monitoring signal strength which characterises both independent claims 1 and 9 was first disclosed in the complete specification as filed, not in the provisional.  Consequently the earliest priority date is 13 August 1993.  However I have not investigated this assertion as it did not appear to be said that anything follows from it in this opposition.  All the documents cited are prima facie published before the date of filing the provisional, excepting'486, and as I have said, '021 has an equivalent disclosure.

· The problem said to be addressed by the invention changed during the course of examination.

· The specification does not set out the advantage gained by monitoring signal strength rather than using some other way of testing the communication link and remote reporting; it was just one way of achieving the desired result.

· It was emphasised that the "RF fault module" in '021 constantly monitors the integrity of the cellular link and switches to the land line link if the cellular link is not operating properly; ie it is not batch or periodic monitoring.

· '021 thus discloses what is at least a "broad form" of the invention.

· Further, while conceding that there is no express disclosure of signal strength monitoring in '021, it was submitted that the disclosure of '021 would be understood by the skilled addressee to in fact be signal strength monitoring.

· Messrs Seckold and Lebowitz are skilled addressees, and this is what they say in their declarations; their construction of the specification should be accepted.

· Alternatively, any differences there may be are obvious in view of '021, which has the same IPC mark as the specification in suit, indicating that '021 is a document that would satisfy section 7(3) of the Act.

· The features added by the dependent claims are simply design choices and cannot confer inventiveness.

· In view of what is admitted in the specification as to what is known in the art, it is apparent on the face of the specification that the necessary threshold of inventiveness is absent (Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd 40 IPR 243 and NV Philips Gloeilampenfabrieken and Anor v Mirabella International Pty Ltd 32 IPR 449), and consequently the invention is not a manner of manufacture. In responding to an input from the signal strength monitor, the alarm is merely responding to just another one of any number of chosen trigger inputs.

· Submissions were also made on the grounds of working direction and mere new use.

· Claim 1 is not clear as "said signal interface" has no antecedent.

· Omnibus claim 15 is not clear for the same reasons given in Daikin Kogyo Co Ltd's Application (1974) RPC 559 concerning the omnibus claim in that application.

By Guard-Well

· Claims 1 and 9 define a combination, in which the integers interact in a new and useful manner, and are clearly for a manner of manufacture.  The invention does not rely just on the selection of a particular type of link for the main and back-up links (as suggested by Guard-Well) but also on monitoring signal strength.

· There are no section 40 matters in the grounds and particulars, therefore the issues raised regarding the clarity of claims 1 and 15 should not be considered.  In any case (it was said) the claims are clear.  In claim 1 it is plain that "interface" should be "means", and claim 15 is just a normal omnibus claim.

· It is conceded that '021 forms part of the prior art base for novelty purposes, but not that it is part of common general knowledge (cgk).

· Regarding amendments made during the course of examination, it is not required that the associated advantages or even reasons be provided, unless, for example, the invention is in the nature of a selection.

· Mr Seckold is an officer of the opponent company, and his evidence should be weighted accordingly.

· The declarations of both Mr Seckold and Mr Lebowitz contain statements which are unsubstantiated regarding what is known, where it is known and at what date, and what is in the cgk.

· Patent specifications should be construed according to the usual rules for the construction of documents.  Extrinsic evidence such as the intention of the author of the specification is not admissible (Codelfa Construction Pty Ltd v State Rail Authority of NSW (1981-82) 149 CLR 337).

· On its face '021 does not disclose a signal strength monitor, let alone one interfaced via a cellular connection "to the Received Signal Strength Indicator (RSSI) output from the automatic gain control circuitry of the telephone receiver" (Seckold para 9).

· On its face '021 monitors cellular link integrity; it is not permissible to read in monitoring link signal strength.  Further, the declarants do not expressly say that they construe "RF fault module 62" in '021 to be a signal strength monitor.

· Rather they seem to be referring to apparatus actually manufactured according to '021.  However, if that is the case, then there is no evidence that such apparatus was available in the patent area at the relevant date, or at any date.

· Regarding obviousness, the opponent's evidence does not establish what is the cgk in Australia.  Mr Seckold does not appear to make any statement as to cgk in Australia.  Mr Lebowitz does make some statements which could be interpreted as referring to cgk in Australia, however Mr Lebowitz is not a resident of Australia, and he therefore has to establish that his knowledge is the same as that of the relevant skilled addressee in Australia at the relevant time. (Bristol-Meyers Squibb Co v L'Oreal 25 IPR 443; Bodenseewerk Perkin-Elmer GmbH v Varian Australia Pty Ltd 32 IPR 110). He has not done this, and neither can he be relied on as to what is known in Australia.

· In particular, the evidence does not show that '021 is part of the cgk in Australia.  Since cgk in Australia has not been established, neither can '021 be combined with it.

· Also, as '021 uses a land line to back-up a cellular link, it actually teaches away from the present invention.

Both parties submitted that costs should follow the event.

DECISION

Section 40

While not cited in the statement of grounds and particulars, I will briefly consider the two issues raised.

It was submitted that the expression "said signal strength interface" in claim 1 does not have an antecedent.  This is strictly true, but in my opinion it is clearly intended to be a reference to the preceding "signal strength means", and on this construction the claim is clear and defines the invention.

It was also submitted that omnibus claim 15 is not clear because of similarities to an omnibus claim in Daikin Kogyo (supra), which was found to be flawed.  But even if claim 15 was drafted exactly the same as the claim in that case, whether or not it was clear would surely depend on the facts of the case.  In that case the invention was a process whereas presently it is an apparatus, and the claims are otherwise not the same anyway.  More importantly, it was not put to me in what specific respect this omnibus claim in this specification is lacking clarity.  I have also considered the claim myself, and I find it to be clear.

I conclude that the complete specification satisfies section 40.

Novelty

The test for want of novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at 235 where Aikin J said:

" 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 anticipation would, if the patent were valid, constitute an infringement…"

The general rule as to what constitutes an infringement has been expressed by Lord Upjohn in Rodi & Weinenberger AG v Henry Showell Ltd (1969) RPC 367 at 391 as follows:

" The essential integers having been ascertained, the infringing article must be considered.  To constitute infringement the article must take each and every one of the essential integers of the claim."

The invention is a combination, and prima facie all of the integers in the combination are essential (Catnic Components v Hill & Smith Ltd (1982) RPC 183). Claims 1 and 9 differ from the system disclosed in '021 in that presently a cellular link is used as a back-up to the main land line link, whereas the opposite is the case in '021. Also, claim 1 (but not claim 9) further defines a land line fault monitor for detecting interruption or severance of the land line and for initiating switching to the cellular back-up.

Although not dealt with at length, either in the evidence or at the hearing, it seems to me that these differences alone are probably sufficient to show that '021 fails to destroy the novelty of the claims.

However the main issue considered was the signal strength monitor claimed, contrasted with the "RF fault module 62" in '021, which latter is silent as to how the module actually goes about "constantly monitoring the integrity of the cellular link".  This was conceded by the attorneys for the opponent, but it was submitted that '021 would be read by the skilled addressee (such as Messrs Seckold and Lebowitz) as meaning that the signal strength was being monitored.

Notwithstanding statements by declarants, this is not something that I would readily accept.  Clearly another way of "constantly monitoring the integrity of the cellular link" (or any communication link for that matter) is to constantly (or at least frequently) transmit test signals and receive response signals over the link; other methods may occur to a skilled person.

In my opinion '021 does not disclose a signal strength monitor, and indeed it is not clear that the declarants are asserting that to them it does.  As pointed out by the attorney for the applicant, nowhere do the declarants plainly say that "RF fault module 62" in '021 to them means a signal strength monitor.  Rather, their reference appears to be to apparatus manufactured according to '021, in which case, by virtue of section 7(1)(a) ("doing a single act") and the definitions of "prior art base" and "patent area" in Schedule 1 of the Act, in order to establish this ground evidence would be required to show that this apparatus was publicly available in Australia at the relevant date.  However, there is a complete absence of any such evidence.

Consequently, even if this apparatus does use a signal strength monitor, and this has not been satisfactorily established either, it cannot be used to destroy the claims' novelty.

I conclude that the claims are novel.

Inventive Step

The question of inventive step or obviousness has to be decided against the background of the cgk in the art, in the patent area, at the priority date.  Also, cgk can be taken together with a prior disclosure, so long as a person skilled in the art could be reasonably expected to have ascertained, understood, and regarded it as relevant (section 7(2) and (3)).

The attorney for Guard-Well submitted, and I agree, that the evidence filed entirely fails to show what is the relevant cgk.  Curiously, as he is an Australian resident, Mr Seckold makes no statement regarding cgk in Australia.  Mr Lebowitz may do so; it is difficult to be certain as he says things are "known in Australia", but in any case he is not resident in Australia and his declaration and CV provide no basis to believe that his knowledge is the same as that of the relevant skilled addressee in Australia (Bristol-Meyers v L'Oreal, and Bodenseewerk v Varian (supra)).

That being the case, the opposition ground of obviousness must fail.

Manner of Manufacture

This ground of opposition is no more persuasive than the others.  Prima facie this invention is a combination in which the integers interact so as to produce a new or improved result, and indeed it was not submitted that the invention claimed is not, in the traditional sense, a patentable combination.

Instead reliance was placed on the finding by Brennan, Deane and Toohey JJ in Philips v Mirabella (supra) at 454:

"…if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further."

I do not see how that applies here.  The invention does not lie merely in choosing between  land line and cellular for the respective primary and back-up links, but also in monitoring the carrier signal strength of the cellular link.  As I have found, on the evidence this is new, and the specification sets out the reason for doing so.  The specification does not say why a land line is chosen as the main link, and neither is it required to, but it could be surmised that a land line is cheaper and, when not being deliberately interfered with, more reliable.

Brief submissions were also made regarding working directions and mere new use, however as I have found that the apparatus claimed is new, I consider that they cannot apply either.

CONCLUSION

I have found that the complete specification complies with section 40, and that the claims are novel, non-obvious and are for a manner of manufacture.

COSTS

In my opinion there was little substance in this opposition, which fails on all grounds.  Consequently I award costs against the opponent, Tactical Technologies Pty Ltd.

RG TOLHURST
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack, Melbourne

Patent attorneys for the opponent   :  Baldwin Shelston Waters