Hagenuk Marinekommunikation GmbH v R F Products, Inc
[2017] APO 58
•17 November 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Hagenuk Marinekommunikation GmbH v R F Products, Inc. [2017] APO 58
Patent Application: 2011240744
Title:RF distribution system, remote control unit and method of using same
Patent Applicant: R F Products, Inc
Opponent: Hagenuk Marinekommunikation GmbH
Delegate: Dr N.R. Madsen
Decision Date: 17 November 2017
Hearing Date: Written submissions completed 20 October 2017
Catchwords: PATENTS – a graphical user interface for configuring communication paths – section 59 – opposition to grant of a patent – grounds of manner of manufacture and clarity– neither opponent or applicant filed any evidence – the claims are clear – certain claims are not for a manner of manufacture – patentable claims present – opposition successful – costs awarded against the applicant – opportunity to amend
Representation: Patent attorney for the applicant: Spruson & Ferguson
Patent attorney for the opponent: FB Rice
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011240744
Title:RF distribution system, remote control unit and method of using same
Patent Applicant: R F Products, Inc
Date of Decision: 17 November 2017
DECISION
The opposition is successful. Claims 1, 3-5, 7-12, 14-18, 20-22 and 24-27 are not for a manner of manufacture. Claims 2, 6, 13, 19, 23 and 28 are considered to provide a manner of manufacture. No other grounds are made out.
I award costs for a section 59 opposition in accordance with Schedule 8 of the Patents Regulations against the applicant.
As the findings of this decision can be overcome by amendment I will allow a period of two (2) months for the applicant to propose amendments.
REASONS FOR DECISION
Background
This matter relates to patent application 2011240744 in the name of R F Products, Inc (the applicant), filed on 12 April 2011. The application was filed under the Patent Cooperation Treaty as application number PCT/US2011/032078. The application claims priority from US application number 61/322964 and has an earliest priority date of 12 April 2010.
The request for examination of the patent application was filed on 8 April 2013. As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 do not apply to the present patent application. This includes the addition of 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. Further to this point I note that the law that applies to the present grounds of opposition is that prior to amendment by the Raising the Bar Act.
The application was advertised as accepted on 3 March 2016 and was opposed on 3 June 2016 by Hagenuk Marinekommunikation GmbH (the opponent). There is no evidence on file. The grounds particularised by the opponent in the statement of grounds and particulars before the hearing were that claims are not clear, not novel, not inventive, and are not for a manner of manufacture.
Prior to the setting of hearing dates, the opponent sought to introduce documents by way of regulation 5.23 which provides power to the Commissioner of Patents to consult documents not before them as evidence. In their letter of 11 April 2017, the opponent requested that the Commissioner consult the documents filed with the statement of grounds and particulars and translations thereof. A delegate of the Commissioner considered this request, ultimately finding that he was not satisfied “that any of the documents is likely to change the outcome of the opposition in a significant way”. It was made clear by the delegate that the Commissioner did not intend to consult any of those documents.
Following this, the parties presented their submissions to hearing of this matter in written form. In their submissions of 14 August 2017, the opponent sought to submit that claims lacked support, novelty, inventive step, manner of manufacture, clarity, and also that the specification lacked a clear and complete disclosure[1]. In a letter of 17 August 2017 the applicant sought directions that the opponent’s submissions regarding novelty, inventive step, clear and complete disclosure and support be disregarded because there was no supporting evidence, or they represented un-particularised submissions. I agreed with the applicant and proposed directions seeking to disregard certain submissions, and make clear that the opponent’s submissions should be limited to only grounds of manner of manufacture and clarity.
[1] I note that the statutory grounds of support and clear and complete disclosure do not apply to the present matter. The request for examination was filed before 15 April 2013, and therefore the grounds of invalidity that apply to the present matter are those in force prior to the Raising the Bar Act. In this case, fair basis and full description are the relevant grounds.
Following this, the opponent sought amendment to the statement of grounds and particulars. In this amendment the opponent removed the ground of novelty, and also removed the standing particulars for inventive step. In place a new particular for inventive step was added essentially pressing that the claims were not inventive in view of prior knowledge conceded in the opposed application. This new particular was also reflected as a new particular for manner of manufacture arguing lack of inventiveness on the face of the specification. Other particulars were added under s40 pressing that claims lacked fair basis, and that the specification was not fully descriptive.
On 8 September 2017 I issued correspondence refusing the request to amend the statement of grounds and particulars.
As such, the opposition was limited to grounds of clarity and manner of manufacture, and associated particulars pressed by the opponent’s initial submissions of 14 August 2017.
After the written submissions were filed, in considering the matters it became clear to me that two independent claims (27 and 28), while objected to in the statement of grounds and particulars, were not addressed in any of the parties’ submissions. I considered it important that careful consideration be given to these claims in the context of manner of manufacture and hence requested the parties to file further submissions. These submissions were completed on 20 October 2017. Beyond this point, on the information before me, I saw no reason to exercise my power under section 60(3) to consider grounds not properly raised by the opponent.
Onus
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in their role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
The Specification
The invention described in the specification relates to the field of radio communications systems. As a background, it is noted that lessons learned from emergency situations involving terrorism or large scale humanitarian and natural disaster type missions dictate a need for additional radio communication capability. Current radio communications can become incapable of meeting the communication needs to effectively coordinate activities to ensure speed and accuracy of response. In a general sense, developments in the art have sought to increase communications capabilities in the use of a plurality of radios and a plurality of antennas by upgrading existing radios and radio frequency distribution systems.
Historically, transceivers that have been in use have mostly been single band and/or single mode radios (i.e. radios that only operate in a single and limited frequency range). Modern radio manufacturers have made improvements to combine the function of different frequency bands into single radio units. Such units are referred to as multi-mode or multi-band transceivers. The specification at page 3 discusses that unachieved to date is the full implementation of these kinds of transceivers into aircraft, ship and ground communications systems as well as full exploitation of these radios to realise the benefits of multi-mode and multi-band use. This is largely said to be realised in the present application via reconfigurable RF distribution systems that quickly and easily provide the capability to reconfigure the entire radio system for different combinations of bands and modes.
An example is discussed at pages 3 and 4 of the specification. Here an aircraft mission may begin with a suite of aircraft radios distributed for a certain combination of satellite, air-to-air, and air-to-ground communications. An emergency may arise requiring additional communications links between aircraft and ground forces. Reconfiguration of bands and modes is currently not straight forward, often being performed by toggle switches or computer control displays that are not optimal. Radio assets are often left unused because it takes too long to change connections to and from the bands and modes needed to address the emergency.
The presently claimed invention seeks to address these disadvantages by providing a user friendly radio frequency distribution (RFD) control system and method to immediately and easily reconfigure the radio band/mode connections to provide the largest number of communications links. Using the systems and methods described, it is suggested that radio configuration can be quickly and easily changed back to its original combination of bands and modes.
The claims
The specification ends in 28 claims with an unusually large number of 20 independent claims. Each of these independent claims comprises the same preamble being a system or method for configuring communication paths in a radio communications system including a plurality of radios, a plurality of antennas and radio frequency distribution communications equipment in communication with the plurality of radios and the plurality of antennas. Claims 17 and 18 appear to represent the broadest claims and they are presented as follows:
17. A system for configuring communication paths in a radio communications system including a plurality of radios, a plurality of antennas and radio frequency distribution communications equipment in communication with the plurality of radios and the plurality of antennas, said system comprising: a graphical user interface display window including a list of a plurality of radios and a list of paths by which the plurality of radios communicates with the plurality of antennas via the radio frequency distribution communications equipment; and means for changing at least one path displayed in said display window.
18. A system for configuring communication paths in a radio communications system including a plurality of radios, a plurality of antennas and radio frequency distribution communications equipment in communication with the plurality of radios and the plurality of antennas, said system comprising: a block diagram including a plurality of radios, a plurality of antennas and paths by which the plurality of radios communicates with the plurality of antennas via the radio frequency distribution communications equipment; means for changing at least one path displayed in said block diagram.
Italicised above are the key aspects of the claims. In this sense the preamble of the claims is simply a suitability of the graphical user interface or the block diagram for use with a connection of radios and antennas via distribution equipment.
Claims 19-26 modify claims 17 and 18 or add further features as follows:
· Appended claim 19 adds the feature to claim 18 whereby changing at least one displayed path simultaneously changes all paths displayed in the block diagram.
· Independent claims 20 and 24 include presence of both the graphical user interface of claim 17 and the block diagram of claim 18 in respective system and method claims.
· Independent claims 21 and 22 a directed to equivalent method claims to claims 17 and 18 whereby displayed paths are changed.
· Appended claim 23 adds the feature to claim 22 (or claim 9) whereby changing at least one displayed path simultaneously changes all paths displayed in said display window. It is noted that claim 22 is directed towards a block diagram and not a display window. For this reason it is considered that claim 23 is intended to append to claim 21 (and claim 9).
· Appended claims 25 and 26 add features to claims 17, 20, 21 or 24 (and to claims 1, 5, 9 and 12 for claim 26), whereby the paths displayed by said display windows comprise path names or RF bands/modes.
Independent claims 27 and 28 are directed towards somewhat narrower subject matter to claims 17 and 18 in the form of first and second windows. Claims 27 and 28 are as follows:
27. A method for configuring communication paths in a radio communications system
including a plurality of radios, a plurality of antennas and radio frequency distributioncommunications equipment in communication with the plurality of radios and the plurality of antennas, said method comprising the steps of: providing a first graphical user interface display window including a list of a plurality of radios; selecting from said list of a plurality of radios a radio for which a different communication path is desired; providing a second graphical user interface display window including a list of available communication paths by which the selected radio communicates with the plurality of antennas via the radio frequency distribution communications equipment; selecting a communication path from said list of available communication paths in said second graphical user interface display window; and changing the communication path for said selected radio responsive to said communication path selection.
28. A method for configuring communication paths in a radio communications system
including a plurality of radios, a plurality of antennas and radio frequency distribution
communications equipment in communication with the plurality of radios and the plurality of antennas, said method comprising the steps of: providing a first graphical user interface display window including a list of a plurality of radios for which a different communications path map between said radios and said antennas is desired, said first window including means for accessing additional communications path maps; actuating said means for accessing to provide a second graphical user interface display window including a list of additional communications path maps; selecting a communications path map from said list of additional communications path maps; and changing said communications path for each of said plurality of radios responsive to said selected communications path map.
Remaining claims 1-16 recite further features to those defined with respect to claims 17-26. These further features are directed to the paths comprising path names whereby path names comprise indicia identifying:
· At least one antenna in communication with each of the plurality of radios
· Path frequency range indicia, or
· Path function indicia
In other words, these claims are further directed to identifying the antenna, frequency or function in the display window.
Claim Construction and Clarity
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The opponent raised objections as to a lack of clarity in regard to a number of claims. Here the opponent submitted:
“…the independent claims 1, 3, 4, 5, 7, 8, 9, 10, 11, 12, 15, 16, 17, 18, 20, 21, 22, 24, 27 and 28 introduce the term ‘a plurality of radios’ more than once. Therefore it is unclear whether the second, or third, instances of ‘a plurality of radios’ is the same as the first instance. Furthermore, it is unclear whether subsequent references to ‘the plurality of radios’ is with reference to the first, second instance or third instances of ‘a plurality of radios’.
Independent claims 5, 7, 8, 12, 15, 16, 18, 20, 22 and 24 introduce the term ‘a plurality of antennas’ more than once. Therefore it is unclear whether the second instance of ‘a plurality of antennas’ is the same as the first instance. Furthermore, it is unclear whether subsequent references to ‘the plurality of antennas’ is with reference to the first or second instances of ‘a plurality of antennas’.”
Responding, the applicant pointed broadly to their submissions regarding claim construction and noted that a person skilled in the art would understand the features when the claim is read as a whole. They also noted that there is no evidence from the opponent to support the allegation of a lack of clarity.
I do not consider the claims unclear. While there is a lack of absolute connection between the initially defined pluralities of radios and antennas, and some of those subsequently defined, the scope of the relevant terms is clear. In this regard, the claimed systems and methods are for configuring communication paths in a radio communications system including a plurality of radios and antennas. In the claims are features of following wording:
“…a graphical user interface display window including a list of a plurality of radios and a list of paths by which the plurality of radios communicates with the plurality of antennas via the radio frequency distribution communications equipment…”
“…a block diagram including a plurality of radios, a plurality of antennas and paths which the plurality of radios communicates with the plurality of antennas via the radio frequency distribution communications equipment…”
A reading of the features of “a list of a plurality of radios” and “a list of a plurality of antennas” in this context suggests that for the user interface and block diagram to be suitable for its claimed purpose in allowing radios and antennas of the claim’s preamble to communicate, then these features must at least include all of the radios and antennas of the preamble. It must further be that any reference in the claim to “the plurality of radios” or “the plurality of antennas” finds antecedence in the preamble. In this sense the claims are to be construed such that all references to pluralities of radios and antennas must include the same radios and antennas as those defined in the preamble, whereby lists or block diagrams of radios and antennas contain the plurality defined in the preamble and potentially others.
Therefore I find the claims clear.
Manner of Manufacture
28. The High Court in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (NRDC), laid out the proper question for determination when one is considering patentable subject matter in the context of section 18(1)(a) of the Patents Act which refers to a “manner of manufacture”. They stated at [269] that the correct question is:
“Is this a proper subject according to the principles which have developed for the application of s. 6 of the Statute of Monopolies?”
29. With this at the fore of their considerations in respect of a claim to a process for eradicating weed from a stretch of land, the High Court in NRDC described subject matter that would be considered patentable (at [275]):
“The point is that 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.”
30. With reference to Virginia-Carolina Chemical Corp's Application [1958] RPC 35, I note that any presentation of information characterised solely by the content of that information has traditionally been non-patentable. It was considered that the intellectual or visual content of a paper, film or other medium related to the fine and not the useful arts.
31. More recently, it has been made clear that the assessment as to whether a claimed invention is properly the subject of a patent (i.e. is a manner of manufacture) is one of substance over form. As per D'Arcy v Myriad Genetics Inc [2015] HCA 35 (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.”
32. An approach to assessing the substance of a claim for patentability rather than its literal form is well founded in the established case law. Again referring to Virginia-Carolina Chemical Corp's Application, Lloyd-Jacob J said at [37]:
“In considering whether or not an application discloses a patentable invention, it is proper that attention should be directed to the alleged contribution to the art rather than the form of words tentatively put forward as defining the invention.”
33. Useful to considering patentability in a case-by-case sense, particularly when considering the substantive or formative presence of technology in a claim, are the following factors that were framed by the Full Court of the Federal Court in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) at [99] in the context of computer related inventions:
· 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?
34. The principles set out in Myriad and RPL and other cases suggest that one can approach the examination of manner of manufacture in a way similar to that formulated by UK authority in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (Aerotel) following some important steps as follows:
1. Construe the claim.
2. Identify the substance of the claim (what is the alleged or actual contribution?)
3. Ask whether the substance of the claim lies within established principles of what does not constitute a patentable invention (e.g. is it merely a scheme, plan, rules of gameplay, intellectual or genetic information?)
There being no difficulty or dispute in construction of the claims aside from that already addressed above, it is appropriate to turn to considering the substance of the claimed invention.
What is the substance of the invention and is it patentable?
Above at paragraphs [11]-[14], I discussed some of the historical difficulties in coordinating radio communications and that such difficulties are to be met through increased capabilities of radio frequency distribution systems. Efforts to improve the situation have resulted in improvement in radio units to produce useful multi-mode and multi-band transceivers. Goals of wide use of such transceivers and software configurability have been realised and provide a presently operational solution.
The specification continues (pages 3 and 4) to discuss that full implementation of such radio systems into aircraft, ship and ground communications, and full exploitation of their multi-mode, multi-band benefits is yet to be achieved. In the current state of the art, reconfiguration of radios to different bands and modes is said to not be straightforward. Operator error can occur which can damage equipment or cause premature termination of a mission. Even if computer displays are used to transfer radios and radio frequency distribution paths, it is said that a complete array of connections is not displayed in a single snap shot, and prevention of operator errors is not built into the software control. This leaves radio assets unused and communications sub-optimal.
The present invention appears to be seeking to overcome these issues by providing an improved interface for controlling equipment. Similarly, the specification discusses that the invention is intended to address problems by providing reconfigurable RF distribution that quickly and easily provides capability to reconfigure the entire radio system for different combinations of bands and modes. In particular, the specification describes a range of embodiments for reconfiguration of the radio system in the form of particularly designed computer interfaces and block diagrams (figures 3-27).
Each claim in the present application contains the following preamble:
A system/method for configuring communication paths in a radio communications system including a plurality of radios, a plurality of antennas and radio frequency distribution communications equipment in communication with the plurality of radios and the plurality of antenna, said system/method comprising:…
It is clear from the specification that the invention does not lie in the existence of an arrangement of radios, antennas, paths and communications equipment as defined in the preamble. From the background of the specification, it is clear that such an arrangement represents the state of the art. Further, it is clear that computers, and thereby generically defined graphical user interfaces in general, also represent the state of the art for control systems and methods for radio frequency communications equipment of the type claimed.
Given the problems discussed lying in the difficultly in using controls to effectively select desired communication paths, it is clear that the invention seeks to provide an improved computer interface means for a user to select and configure communication paths. As such, the substance of the invention in all the claims must lie in the interface means itself in as much as an interface display window and/or block diagram.
This is consistent with points raised by opponent stating that the contribution to the art in respect of the claims is either:
“a graphical user interface window including a list of a plurality of radios and a list of paths by which the plurality of radios communicates with the plurality of antennas via the radio frequency distribution communications equipment”
or
“a block diagram including a plurality of radios, a plurality of antennas and paths by which the plurality of radios communicates with the plurality of antennas via the radio frequency distribution communications equipment”
The opponent further submitted that:
“There is no indication in the claims or in the specification as to how the displayed information is obtained or calculated. More particularly, there is no indication that part of the contribution is in obtaining or determining the communication paths between the radios and the antennas. In other words, this invention is not directed to finding an optimal path or to suggesting a path change to the operator. The path is available and the substance of the invention is showing this path to a user.”
In response, the applicant argues that the opponent has taken this approach by “cutting each claim into pieces” considering these pieces separately without “taking into account the interworking relationships between the features recited in the claims”. The applicant made reference to the observations of Kitchen L.J. in Lantana Limited v The Comptroller General of Patents, Design and Trade Marks [2014] EWCA Civ 1463 (Lantana) at [64] noting the impermissibility of such a practice when determining patentability. On this basis the applicant argued that the substance of the invention is:
“…a radio communication system having communications paths (item 1) that are reconfigurable via a graphical user interface display window (item 5).”
In support of their assertion of the substance of the invention, the applicant argues that the specification does not indicate it was known to use computers (and thereby a graphical user interface) to control radio frequency distribution operations. They argue that the presence of “even if” in the following text (from page 4 of the description) suggests that the use of computers discussed in the specification is entirely hypothetical:
“Even if transfer of radios and RFD paths is accomplished via a computer display, the complete array of radio/RFD connections are not displayed in one snapshot, and prevention of operator errors is not built into the software control of the RFD. Therefore, radio assets that could be used for short term emergency diversions from the planned mission are often left unused because it takes too long to change…”
I am not convinced that this is a reasonable construction of the relevant text of the specification. Firstly, the remainder of the relevant text speaks to positive actions such as: “…connections are not displayed...”; that “…prevention of operator errors is not built into the software control…”; and “Therefore radio assets that could be used… are often left unused…”. Secondly, in a modern technological environment where computers are, as a result of their broad functionality, used to control all types of systems and devices, I cannot accept that the text fails to suggest prior use of computers to control radio frequency distribution systems. Finally, it is particularly relevant to note that it is not possible that the general provision of computer control of radio communication systems can address any of the specific problems of single snapshot display, prevention of operator errors and user-friendliness. These problems are addressed by specific interface characteristics which are described in all of the embodiments exemplified by figures 3-27. This again points me to consider that the substance of the invention must lie in the interface itself, and not the mere use of computer control.
In summary, on my reading of the specification, I believe the applicant’s submissions have mischaracterised the contribution to the art. It is true that one must assess the claim as a whole, but such working interrelationships proposed by the applicant do not appear as a contribution to the art. It is clear from the specification that radio communication systems with reconfigurable communication paths are known. It is also clear that such systems are controlled by operators using computers. A generic limitation that control is via a graphical user interface is hardly a contribution to the art of computer technology and the control of devices of any sort. As such, it is the case that the substance of the invention claimed must relate to the particular characteristics of the computer interface designed for selection of paths. According to the specification, the claimed interfaces are said to provide benefits as per page 4 of the specification such as:
·The complete array of radio/RFD connections displayed in one snapshot
·Prevention of operator errors built into software control
·A user-friendly RFD control for immediate and easy reconfiguration of connections
Claims 17, 18, 21 and 22
48. As discussed earlier, these claims appear to represent the broadest embodiment of the invention. In these claims, a display window or block diagram is presented with information including radios, antennas and paths, and there exists some means for changing a path in either of these interfaces. Claimed so generically this means could simply be a mouse click or the like. Such a generally claimed means cannot possibly provide a contribution to the art. It follows that, in accordance with the general discussion above regarding the determination of the substance of the invention, it is clear that the substance of system claims 17 and 18 respectively is:
a graphical user interface display window enabling change of a displayed path, including a list of a plurality of radios and a list of paths by which the plurality of radios communicates with the plurality of antennas via the radio frequency distribution communications equipment
a block diagram enabling change of a displayed path including a plurality of radios, a plurality of antennas and paths by which the plurality of radios communicates with the plurality of antennas via the radio frequency distribution communications equipment
It is clear that the substance of the invention relates to the interface as such. I also accept that it is clear that an interface, or more specifically an improvement to an interface, may constitute patentable subject matter. At this junction I make reference to Aristocrat Technologies Australia Pty Limited [2016] APO 49. There the delegate determined that a gaming machine interface for selecting a visually depicted game and bet denomination from a set of games each having sets of bet denominations, by only selecting a single bet denomination, constituted a patentable invention. In the words of the delegate at [48]:
“It is reasonable to view the substance of the invention as the presentation of game information in a way that allows the game and bet denomination to be selected in a single action. It is apparent that this would achieve a practical and useful result by simplifying the use of the gaming machine by the player. Looking at the relevant considerations, the invention appears to require only generic computer implementation. However, it does not appear that it was normal (at the priority date) to configure a gaming machine interface in this particular way. Here information is located in a particular position and functionality is generated by the use of this positional location to improve the gaming machine. The contribution is technical in nature, and achieves a practical and useful result. On balance, I am satisfied that the claimed invention is a manner of manufacture.”
It is such a consideration that appears to distinguish an interface (for example on computer screen) as being patentable according to principles articulated in NRDC when contrasted with a mere presentation of information (static or otherwise) characterised solely by its visual content, therein being no material advantage in said presentation (see Virginia-Carolina Chemical Corp's Application).
Having determined the substance in disagreement with the applicant, I turn to remaining relevant submissions presented by the applicant that suggest the presence of patentable subject matter. The applicant raises the following points in their submissions:
“The claimed invention in particular enables an operator to change the communication paths in a straightforward, fast, and easy manner.”
“The Applicant submits that the substance of the invention of a radio communication system having communication paths (item 1) that are reconfigurable via a graphical user interface display window (item 5) is a physical phenomenon in which an artificial effect can be observed. In particular, the changing of a path (item 1) via a graphical user interface display window (item 5) is a physical artificial effect.
Therefore, the Applicant submits that the claimed invention satisfies the requirements as set out in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252.
The Applicant also submits that the substance of the claimed invention is technical in nature as the claimed invention relates to reconfiguring physical communication paths via a graphical user interface display window. Each path includes connections between a radio and an antenna via the radio frequency distribution communications equipment.”
There is no doubt that the claim is very broad, and is not limited to any particular number of radios, antennas or paths. In fact, the network of radios, antennas and paths can be quite simple in the claims. It could be limited to only two or three of each element. With reference to claim 17, the substance of the invention is as simple as two short lists of options representing properties of the radio communications system, i.e. the identity of radios and various paths associated with each of these radios.
On this understanding of the substance of the invention of claim 17, I find it difficult to see how there may be any ingenuity in the interface that is distinguished merely from the information that is presented. No material advantage can arise in presenting the information on the interface in a single snap shot as the claim does not provide any limitation to the amount of information presented, nor how the information is presented. There is nothing in the claim that would appear to prevent operator error, nor is there anything in the structure and functionality of the interface that provides a material advantage of more effective or efficient selection of options. The substance of the invention in this claim simply appears to be presenting predetermined and already known lists of options so that a user can make some selection and subsequently make a change in visible information, there being no technical effect or benefit manifesting. This is a mere scheme of presentation of information.
The applicant’s submission that the claimed invention is technical in nature and provides a physical phenomenon in which an artificial effect can be observed is necessarily tied to their submission that the substance of the invention involves control of radio communication using a graphical user interface. While changing a path may produce an artificial effect, the use of a computer interface to do so does not represent a contribution to the art. As I have already discussed, the substance of the invention relates to the interface itself.
Claim 18 provides a block diagram as opposed to lists, depicting radios, antennas and paths also enabling selection of a path. For the same reasons identified in respect of claim 17, I consider that the substance of the invention in this claim simply appears to present a visual representation of already known options that one may chose something from. I do not see any technical improvement in an interface in this claim. Again I consider the claim a mere scheme for presentation of information.
I therefore find claims 17 and 18 are not directed towards a manner of manufacture. While claims 17 and 18 are system claims, claims 21 and 22 are equivalent method claims to 17 and 18. Therefore these claims are also not directed towards a manner of manufacture.
Claims 20 and 24
Claims 20 and 24 are system and method claims which combine the features discussed in relation to the claim set above being the display window including the list and the block diagram. Again the claims are simply limited to providing the opportunity for changing paths displayed in these representations. I do not consider generically including both a window including a list and block diagram within a single system or method leads to a different finding to that above in relation to claims 17 and 18 individually. The claims remain a scheme for presentation of information.
I therefore find claims 20 and 24 are not directed towards a manner of manufacture.
Claims 19 and 23
Appended claim 19 adds the feature to claim 18 whereby said means for changing at least one displayed path simultaneously changes all paths displayed in the block diagram. Appended claim 23 similarly adds such a feature wherein said changing step comprises simultaneously changing all paths displayed in said display window. As noted earlier, while claim 23 currently stands to append to claims 9 and 22, claim 22 does not include a display window. As such I consider that claim 23 is intended to append to claim 21. I consider these features to be directed to an invention whereby a functionality that is suitable for changing at least one path, has the additional effect of changing all paths at the same time. Alternatively worded, a single action that is capable of selecting and changing a path or paths results in a simultaneous change to all paths.
An important aspect of the present opposition is that there is no evidence on file. Thus, I am limited in the knowledge at hand that may assist me in determining the alleged or actual contribution to the art, and thereby the substance of the invention. The specification goes no further than to suggest that graphical user interfaces have been used to control radio communication systems of the type being the subject of the claims. I see no basis before me to consider that the feature of simultaneously changing all displayed paths in response to changing at least one path does not constitute a contribution to the art. The onus lies with the opponent in demonstrating this. Thus, such a feature forms a part of the substance of the invention for claims 19 and 23. The question for patentability of these claims then turns to whether the addition of such a feature provides an improved interface of the characteristics required by case law such as NRDC and Virginia-Carolina Chemical Corp’s Application.
Providing such functionality in an interface clearly does not simply characterise the display by the content of the material presented. The functionality appears to improve the effectiveness and efficiency of use of an interface where a user seeks to more quickly and easily configure communication paths. To me, this is a practical and useful result.
I therefore find that claims 19 and 23 are directed towards a manner of manufacture.
Claims 25 and 26
Appended claims 25 and 26 add features to earlier mentioned independent claims wherein the paths displayed by said display window comprise path names or RF bands/modes. I do not consider adding features in the form of names or textual indicia in a general manner in a display can possibly constitute a contribution to the art beyond the content of the information itself. For the reasons identified above in relation to claim 17, the claims are directed to the presentation of information.
I therefore find claims 25 and 26 are not directed towards a manner of manufacture.
Claims 1, 3, 4, and 9-11
These independent claims present as somewhat of an agglomeration of features already addressed. In this respect, claims 1 and 9 are directed to equivalent subject matter to claims 17 and 18 respectively further including the feature wherein the paths displayed by said display window comprise path names, and wherein said path names comprise indicia identifying at least one antenna in communication with each of the plurality of radios.
Similarly, claims 3 and 10 are directed to the subject matter of claims 17 and 18 further including the feature wherein the paths displayed by said display window comprise path names, and wherein said path names comprise path frequency range indicia, and claims 4 and 11 further include the feature wherein the paths displayed by said display window comprise path names, and wherein said path names comprise path function indicia.
For the same reasons that features added by claims 25 and 26 fail to provide a manner of manufacture to those claims, claims 1, 3, 4 and 9-11 also fail to provide a manner of manufacture. I see no technical or material benefit merely in the claiming of such indicia in a path name. The benefit appears intellectual and does not appear to provide a technically or materially improved interface.
I therefore find claims 1, 3, 4 and 9-11 are not directed towards a manner of manufacture.
Claims 5, 7, 8, 12, 15, and 16
This set of independent claims again presents as somewhat of an agglomeration of features already addressed. In this respect, claims 5 and 12 are directed to equivalent subject matter to claims 1 and 9 respectively further including the feature of the block diagram, and the presence of both a block diagram and window including a list as was discussed above in relation to claims 20 and 24. Similar can be said of claims 7, 8, 15 and 16 with respect to claims 3, 4, 10 and 11.
For reasons provided in respect of claims 20 and 24, and 1, 3, 4 and 9-11, this claim set fails to add patentable substance to the claims.
I therefore find claims 5, 7, 8, 12, 15, and 16 are not directed towards a manner of manufacture.
Claims 2, 6 and 13
Appended claims 2, 6 and 13 add features to claims 1, 5 and 12 respectively wherein changing at least one path is operable to simultaneously change all paths displayed in said display window (claim 2) and in said block diagram (claims 6 and 13). I have already determined above in respect of claims 19 and 23 that such a feature appears to provide patentability.
I therefore find that claims 2, 6 and 13 are directed towards a manner of manufacture.
Claim 14
Appended claim 14 adds the feature to claims 1, 5, 9 or 12 wherein said indicia comprise indicia identifying a plurality of antennas in communication with each of the plurality of radios. Again I find it difficult to see any particular benefit in such an arrangement of information that leads to a materially or technically improved interface. The improvement appears only in relation to the intellectual characteristics of the information presented.
I therefore find claim 14 is not directed towards a manner of manufacture.
Claim 27
76. Claim 27 is directed to a method comprising the preamble identified earlier in this decision. The remaining subject matter of the claim is as follows:
…providing a first graphical user interface display window including a list of a plurality of radios; selecting from said list of a plurality of radios a radio for which a different communication path is desired; providing a second graphical user interface display window including a list of available communication paths by which the selected radio communicates with the plurality of antennas via the radio frequency distribution communications equipment; selecting a communication path from said list of available communication paths in said second graphical user interface display window; and changing the communication path for said selected radio responsive to said communication path selection.
The claimed interface comprises the provision of a first display window including a list of a plurality of radios from which a radio can be selected for which a different communication path is desired. A second display window is then provided which has a list of available communication paths by which the selected radio communicates with antennas via distribution equipment. This second display window enables selection of a path from the list of paths. Responsive to the selection of a path, the communication path is changed.
In assessing the substance of this subject matter, consistent with my findings earlier in this decision, I have regard to the understanding that the function of changing a communication path via selection of a different path using a computer interface is not a contribution to the art. Instead, the contribution to the art in relation to all of the claims can only be drawn from particular aspects of the computer interface itself. Remaining in the present claim is the presentation of a list of radios in a first window, and for a selected radio the presentation of a second list of paths such that an option for the path of that radio may be changed.
The opponent’s submissions regarding claim 27 largely turn to submissions regarding the other claims in that claim 27 is directed to:
“…the mere display of information and conventional steps” where additional steps “of ‘selecting’ and ‘activating’ [are] steps of human deliberateness. These steps represent a mere scheme or mere intellectual information.”
The applicant’s submissions regarding claim 27 rely upon their assessment of the substance of the invention constituting:
“…a radio communication system having communications paths (item 1) that are reconfigurable via a graphical user interface display window (item 5).”
Neither of the parties’ submissions is particularly useful to further shedding light on my assessment of this claim. Importantly, I consider the substance of the invention of claim 27 is the presentation of two lists, one being a list of radios and the other being a list of paths from which a path can be selected for a particular radio. The second list is presented as a result of a selection in the first list.
It is clear that the claim is not directed to a static presentation of information. A second list or “window” is provided as a result of a selection in a first list. In this sense, particular information is presented at a particular time for a specific purpose, so I can accept that the substance of the invention involves an ordered presentation of certain information that enables a user to select an option. The question I must subsequently ask is whether this subject matter is patentable according to the principles articulated in the case law.
I cannot see claim 27 as providing an improvement of a technical nature to the interface. The substance of claim 27 seems nothing more than a scheme for presenting information in the form of listed options to a user that is merely implemented in an interface. It is akin to showing a person a first list from which they select an item for which they want to change a relevant aspect, and then providing a subsequent list of aspects they may select from for that item. There is no material advantage obtained by implementing this in an interface beyond automation itself. I consider the claim is directed to a mere schematic presentation of information.
I therefore find claim 27 is not directed towards a manner of manufacture.
While I do not consider the point necessary to my finding regarding this claim, I make a general observation that such a menu structure whereby a first selection from a list is made thereby generating a second “sub-list” to select options from, seems to me highly likely to be routine in the art of graphical user interface menus. Noting the absence of any evidence I consider such menu structure would be common in computer technology and in more specific areas such as the function of television menu options controlled by remote. With this being the case, the substance of the invention would subsequently lie simply in the nature of the presented information itself, this being unpatentable.
Claim 28
86. As was the case with claim 27, claim 28 is directed to a method comprising the preamble identified earlier in this decision. The remaining subject matter of the claim is as follows:
…providing a first graphical user interface display window including a list of a plurality of radios for which a different communications path map between said radios and said antennas is desired, said first window including means for accessing additional communications path maps; actuating said means for accessing to provide a second graphical user interface display window including a list of additional communications path maps; selecting a communications path map from said list of additional communications path maps; and changing said communications path for each of said plurality of radios responsive to said selected communications path map.
At this point I note the parties’ submissions regarding claim 28 were essentially in alignment with those provided for claim 27.
The claimed interface comprises the provision of a first display window including a list of a plurality of radios that map to antennas via a particular set of pathways. The first window includes a means for accessing additional path maps which when activated, provides a second display window including a list of additional path maps. In the second window, selection of path map from the list of path maps has the effect of changing the communications path for each of said plurality of radios. In other words, a map can be considered to be a pre-programed setting of paths between radios and antennas. Having a plurality of antennas and radios means that there may be a number of combinations of paths, or “path maps”, in which a system may be configured. The claim involves the creation of such path maps, and the use of these path maps to change the communications connections to antennas for all radios via the single selection of a path map.
Claim 28 provides a degree of functionality that in the absence of evidence from a person skilled in the art, I must consider provides a contribution to the art. This functionality involves the action of a single selection in the interface producing multiple setting changes across the controlled system. In this regard, the substance of the invention relates to an interface functionality whereby multiple changes to displayed and controlled devices are affected with a single selection.
The substance of claim 28 is very similar to that of claims 2, 6, 13, 19 and 23. In those claims, I found that there was patentable subject matter because providing such functionality in an interface clearly does not simply characterise the display by the content of the material presented. As with those claims, in claim 28 the functionality appears to improve the effectiveness and efficiency of use of an interface where a user seeks to more quickly and easily configure communication paths. This is a practical and useful result that is technical in nature in providing an improved interface.
I therefore find claim 28 is directed towards a manner of manufacture.
Conclusion
The claims are clear. I find claims 1, 3-5, 7-12, 14-18, 20-22 and 24-27 are not for a manner of manufacture. Claims 2, 6, 13, 19, 23 and 28 are considered to provide a manner of manufacture. The opposition is successful.
As the findings of this decision can be overcome by amendment I will allow a period of two (2) months for the applicant to propose amendments.
Costs
The opponent has been successful. The applicant argued that the present circumstance warrant a variation in the scale of costs because of a number of actions of the opponent. These actions consist of:
·The request under Regulation 5.23
·Inappropriate raising of new particulars not in the first amended statement of grounds and particulars
·The filing of a second proposed amendment to the statement of grounds and particulars
As pointed out by the applicant:
“The basic question to consider is ‘whether the justice of the case requires variation of the schedule’ (E.L Du Pont De Nemours and Company v IC/ Chemicals & Polymers Limited [2007] APO 12), and principles relevant to the variation of the scale have been discussed in a number of IP Australia's decisions including, for example, Sterling Drug Inc v BootsCompany PLC, 35 IPR 630, E.I. Du Pont De Nemours and Company v ICI Chemicals &Polymers Limited [2007] APO 12 and Viskase Corporation v W.R. Grace & Co.-Conn [1998] APO 47.
Conduct that the Courts have found to warrant the award of costs on an indemnity basis includes misconduct that causes loss of time to the court and to other parties; making allegations which ought never to have been made, or unduly prolonging a case by groundless contentions; commencing or continuing an action for some ulterior motive, or with wilful disregard of the known facts or the clear law in circumstances where the applicant, properly advised, should have known there was no chance of success; and abusing the process of the court, in the sense that the court's time, and the litigants' money, has been wasted on totally frivolous and thoroughly unjustified proceedings (Rouse vShepherd (No 2) (1994) 35 NSWLR 277 at 279-280). See also Colgate-Palmolive Co and another v Cussons Pty Ltd, 28 IPR 561.”
In relation to the Regulation 5.23 request the applicant submitted that this request did not appear to be a genuine effort to introduce documents, there being some ulterior motive such as wasting the applicant’s money. They point to deficiencies in the request identified at the time by the delegate and suggested the opponent merely copied the details in the statement of grounds and particulars when requested to provide further information justifying the request. Responding to this the opponent pointed out that they in fact did not simply copy this information but provided further detailed submissions when requested by the delegate. Considering the information provided, the delegate found the information insufficient.
To me, the Regulation 5.23 request was a reasonable approach to take in the circumstance that the opponent did not file any evidence in support. While I can only speculate as to the motives of decision of the opponent to not file evidence, it is at least reasonable to consider that an opponent may have incorrectly assumed that documents already filed with a statement of grounds and particulars do not need to be filed again.
Given the circumstances, I do not see that the opponent’s conduct with respect to the Regulation 5.23 request has been disingenuous, for the purpose of intentional time wasting and increasing cost for the applicant. While the failure to file evidence in support was a clear oversight on the part of the opponent, I do not see there to be particular frivolity or negative intent. As such I do not consider this point warrants a variation to the scale of costs.
In relation to the second and third points above, the raising of new particulars in submissions lead to the filing of a second proposed amendment to the statement of grounds and particulars to attempt to bring such matters into the opposition proceedings. It is appropriate that these points are considered together. On these points, the applicant submitted that the opponent inappropriately abused the opposition process by performing these acts at such a late stage of proceedings, and was thoroughly unjustified. The applicant pointed to my decision to not allow the second proposed amendment to the statement of grounds and particulars where I quoted the Deputy Commissioner in CSL Limited v Isconova AB et al [2016] APO 82 in refusing the request. At [18] the Deputy Commissioner said:
“In my view the raising of new particulars only late in proceedings and at the time of filing submissions for the substantive hearing without sufficient justification weighs heavily against allowing the amendment of the statement and is not justified on any other basis. I consider allowing the amendment would amount to a serious abuse of process and it is regrettable that the opponent by its request has caused the substantive determination to be deferred.”
100.Responding the opponent suggest that my findings regarding the new submissions and request to amend the statement did not indicate that the request was thoroughly unjustified. I agree with this in that I was required to give careful consideration to the request, in as much as identifying that at least some of the newly raised particulars appeared prima facie arguable, but did not appear to demand immediate consideration in the public interest. Furthermore, while the raising of new particulars at such a late stage does appear to be an abuse of process to a degree, I do not consider the present circumstances of the severity identified in the case law above at [94].
101.On a further note, the delay in proceedings and cost to the applicant necessarily induced by these further requests does not appear to be particularly significant. The final deadline for filing of submissions was in effect only delayed approximately three weeks.
102.With all the above in mind, and given the already limited amount of taxable costs within Schedule 8 that are relevant to the present matter, I see no basis to vary the scale.
103.Therefore, I award costs in accordance with Schedule 8 of the Patent Regulations against the applicant.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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