JW & LL Enterprises Pty Ltd v Maldes Phoenix Limited
[2004] APO 3
•11 February 2004
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application :No. 694455 in the name of MALDES PHOENIX LIMITED
Title : Telephone Bar Device
Action: Opposition by JW & LL ENTERPRISES PTY LTD under
Section 59 of the Patents Act 1990
Decision : Issued 11 February 2004.
Abstract
The opposition was partly successful. It was held that claims 1, 2 and 4 were not novel in light of GB 2104347, and that claims 1, 2, 4 to 7 and 14 to 17 did not possess an inventive step based on this citation and the common general knowledge.
The grounds that the specification did not comply with section 40 and that the application was not in respect of a manner of manufacture were not upheld.
Applicant allowed sixty days in which to propose appropriate amendments.
Costs awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 694455 by Maldes Phoenix Limited and opposition thereto by JW & LL Enterprises Pty Ltd under Section 59 of the Patents Act 1990.
BACKGROUND
Patent application 694455 in the name of Maldes Phoenix Limited was filed on 26 October 1994 under the provisions of the Patent Cooperation Treaty as PCT/NZ94/00119, claiming priority of 28 October 1993. After entering the national phase as application 80069/94 it was advertised accepted on 23 July 1998.
JW & LL Enterprises Pty Ltd filed notice of opposition on 21 October 1998 followed by a Statement of Grounds and Particulars on 21 January 1999. During the evidentiary stage, Maldes Phoenix filed a request to amend the specification. These amendments were allowed on 29 March 2001, and both parties were given an opportunity to file further evidence as a result.
The matter was set down for a hearing on 20 November 2003. On 19 November 2003, Mr Ian Rose, patent attorney with Pipers, Melbourne, advised that his firm no longer acted on behalf of Maldes Phoenix, but would remain as the address for service as a courtesy until the applicant could arrange an alternative. Mr Rose also informed that Maldes Phoenix would not be making submissions either at the hearing or in writing. Consequently, Mr Richard Plummer, patent attorney with Wray & Associates, Perth, advised that in the circumstances the opponent did not intend to appear at the hearing and would instead rely on written submissions.
SPECIFICATION
The specification indicates that the invention relates to "a line access controller which is analogous to one known in a more limited and specific form as a toll-barring device – being means to decide whether to allow or deny access to telephone services from a telephone or like peripheral, based on recognition of a password and recognition of dialling prefixes”.
As background art, the specification refers to the programming of either a PABX (Private Automatic Branch Exchange) to limit the type of calls that can be made or the use of a toll bar by the local telephone company. These methods are considered to be relatively inflexible, as the allowed/denied range of calls is fixed for each telephone or trunk line, and cannot be bypassed for occasional exceptional calls.
The object of the invention is “to provide a means for controlling access by members of the public to predetermined telephone service prefixes by a process of recognition of one of a range of PINs, on-line dialling prefix recognition, and matching against an internal table of permitted or denied prefixes in order to determine whether to interrupt the connection”.
The claims of the application read as follows:
"1. A line access control apparatus for restricting selected outgoing communications of one of voice and data originated by an originator over a communication line, said apparatus comprising:
PIN storage means for storing a PIN list of personal identification numbers each having an associated privilege rating;
prefix storage means for storing a prefix list of telephone number prefixes, each having an associated privilege rating;
monitoring means for monitoring outgoing dialling signals within a communication line representing at least one sequence of at least one code character;
decoding means for sequentially decoding the dialling signals into sequences of code characters;
comparing means for comparing a first part of each entire sequence of code characters of the decoded dialling signals with the PIN list, thereby establishing the privilege rating of the originator, and for comparing a second part of each entire sequence of code characters of the decoded dialling signals with the prefix list to establish whether the privilege rating of the originator will permit onwards transmission of the communication;
switch means for connection in-line with the communication line between a telephone exchange and at least one telephone or terminal unit, the switch means being operable to interrupt communication over the communication line; and
interruption means for causing the communication to be interrupted if the privilege rating associated with the telephone number prefix exceeds the privilege rating associated with the originator of the message.
2. A line access control apparatus as claimed in claim 1, wherein the prefixes may have a varying number of digits, whereby a first prefix may have a privilege rating that does not exceed the privilege rating of a PIN, but a second prefix that includes the first prefix and one or more additional digits may have a privilege rating that exceeds the privilege rating of that PIN, so that communication to one or more telephone numbers corresponding to the second prefix is interrupted by the apparatus.
3. A line access control apparatus as claimed in claim 1, wherein the prefixes can have a varying number of digits, whereby a first prefix may have a privilege rating that exceeds the privilege rating of a PIN, but a second prefix that includes the first prefix and one or more additional digits may have a privilege rating that does not exceed the privilege rating of that PIN, so that communication to one or more telephone numbers corresponding to the second prefix is not interrupted by the apparatus.
4. A line access control apparatus as claimed in claim 1, wherein said apparatus is located in one of a telephone, between the telephone and a PABX local exchange, and between the PABX local exchange and a central exchange.
5. A line access control apparatus as claimed in claim 1, wherein said apparatus is located in a PABX local exchange.
6. A line access control apparatus as claimed in any one of claims 1 to 5, further comprising:
an input having at least two wires for connection to a telephone;
an output having at least two wires for connection to a telephone exchange line;
means for sensing a voltage across the two input wires;
the switch means being connected in series between the input and the output; and
said interruption means comprising a processor having an output connected to the switch means.7. A line access control apparatus as claimed in claim 6 wherein a non-volatile memory is connected to or forms part of the processor and said memory comprises said PIN storage means and said prefix storage means.
8. A line access control apparatus as claimed in claim 7 wherein means are provided for selectively restricting access to a telephone network, further comprising a means implemented in software that includes the steps of:
becoming activated on detection of an off-hook state and becoming reset on detection of an off-hook state;
on activation initialising a default privilege rating, then accepting decoded characters created from a dialling sequence;
entering a programming mode if a first special character is detected;
receiving, validating and deriving a privilege rating from a PIN if a second special character, denoting a PIN, is detected;
receiving a series of decoded characters from the remainder of the dialling sequence;
determining from the privilege rating whether that series represents an allowed or a denied telephone number; and
causing the line current to be interrupted if the telephone number is to be denied.9. A line access control apparatus as claimed in claim 8 wherein entry of certain PINs cause the apparatus to enter a mode in which it may be programmed to store an at least partially altered set of PINs with associated privilege ratings, or to store an at least partially altered set of at least partial telephone numbers having associate privilege ratings.
10. A line access control apparatus as claimed in claim 9 wherein means for collecting and storing information concerning the originator, destination, and duration about any outgoing communications and means for making the information available in machine-readable form is provided.
11. A telephone or terminal unit containing a line access control apparatus for restricting selected, pre-determined outgoing communications as claimed in claim 10.
12. An installation including a plurality of telephones or terminal units having terminal lines merging to a common outgoing exchange line or lines, wherein a line access control apparatus as claimed in claim 10 is installed in series with the outgoing exchange line or lines.
13. An installation wherein a plurality of line access control apparatuses as claimed in claim 1 are connected in series in a telephone line and each apparatus can provide a different PIN list of acceptable PINs each having an associated privilege rating and/or a different prefix list of telephone number prefixes each having an associated privilege rating.
14. A line access control apparatus as claimed in claim 1, wherein said apparatus is located in a telephone.
15. A line access control apparatus as claimed in claim 1, wherein said apparatus is located between a telephone and a PABX local exchange.
16. A line access control apparatus for restricting selected outgoing communications of one of voice and data originated by an originator over a communication line substantially as herein described with reference to any one of the accompanying drawings.
17. A terminal comprising a line access control apparatus for restricting selected, outgoing communications, substantially as herein described with reference to any one of the accompanying drawings.
18. An installation including a plurality of one of telephones and terminal units having terminal lines merging to at least one common outgoing exchange line, substantially herein described with reference to any one of the accompanying drawings."
The invention so defined is said to provide effective toll barring with improved flexibility, as each user’s PIN, telephone access code groups, and the allow/deny attributes associated with each access code are programmable.
STATEMENT OF GROUNDS AND PARTICULARS
The Statement of Grounds and Particulars lists all possible grounds and a multitude of particulars, most of which go to the clarity and sufficiency of the description and claims. It is asserted that the specification lacks sufficiency, the claims are not clear, succinct or fairly based, and that the claimed invention is not a manner of manufacture, is not novel and does not involve an inventive step.
EVIDENCE
10) The evidence in support from JW & LL Enterprises consists of a statutory declaration by Douglas Graham Myers, a senior lecturer at the Curtin University of Technology since 1985. Mr Myers states that he has "… had extensive experience in the fields of digital electronic hardware and computer software” and has “…specialised in teaching computer architecture and organisation, engineered software and applications, and digital signal processing.” Appended to the declaration is a selection of patent and non-patent literature on which the opponent's case relies. These exhibits are referred to as DGM-1 to DGM-22.
11) The applicant's evidence in answer comprises statutory declarations by Mr Lance Tye De La Haye and Mr Eric Timothy Smith, co-inventors of the invention, Mr Paul Gardner Stothart and Mr Ronald David Smith. Mr Stothart is Managing Director of Greystone Holdings, an independent consultant specialising in the interface between information technology and telephony, while Mr Smith is Managing Director of Natcomm, a company which designs, develops and supplies products in the telecommunications field.
12) The evidence in reply consists of a second declaration by Mr Myers.
13) Both parties were also given the opportunity to file further evidence addressing the specification as amended by Maldes Phoenix during the opposition proceedings. The opponent filed a third declaration from Mr Myers, as well as one from Mr Richard William Plummer. Appended to the Plummer declaration are ten exhibits related to database programming and design.
DECISION
Novelty
14) The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).
15) I do not think there is any doubt that every feature of claim 1 should be considered essential. A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed (Catnic Components v Hill and Smith Ltd [1982] RPC 183), and this seems to me to be the case here.
16) I will discuss each of the exhibits in order of relevance.
GB Patent Specification 2104347 (exhibit DGM-3)
17) The citation discloses a microprocessor-based control device for use in a telephone handset. The control device sits between the telephone circuitry and a telephone exchange on a communication line. An erasable programmable read-only memory stores a set of code numbers (PINs), each of which is associated with one or more charge bands.
18) The microprocessor is responsible for the monitoring and decoding of all dialled signals, which are then compared to the data stored in the read-only memory. If the microprocessor detects that a valid code number has been entered, the dialled number is assessed to determine what charge band applies. This is possible because the first digit or digits of the dialled number determine which charge band is to be called. For example, if the first digit was “0”, then the call would be a local call. If the first digits were “010”, then the call would be an international call. If it is determined that, although a valid code has been entered, the dialled digits relate to a charge band that the user is unauthorised to call, the microprocessor interrupts communication over the communication line. Thus, it is possible for a call beginning with the digits “010” to be rejected even though the first digit of this number may have a charge band that does not exceed the charge band associated with a user’s PIN.
19) The opponent submitted that the feature of a charge band is equivalent to the associated privilege rating of claim 1. In my opinion, a charge band is merely a privilege rating system based on call rates, i.e. if the charge band associated with the telephone number prefix does not exceed the charge band associated with the PIN, then the microprocessor does not take any disconnect action.
20) However, it is clear that under the charge band system described, it is impossible for a call beginning with a series of digits which exceed the user’s charge band to be made. Therefore, I find that claim 3 is novel. As there is no disclosure of the control device being located in a PABX local exchange, claim 5 must also be found novel. The citation is also wholly silent on the exact nature of the inputs and outputs to the control device, and does not disclose an arrangement in which multiple control devices are linked in series. I conclude that claims 6 to 18 do not lack novelty in light of this citation.
Accordingly, I find that the invention of claims 1, 2 and 4 is anticipated.
US Patent Specification 4965459 (exhibit DGM-9)
21) The citation discloses a telephone line security system which may be programmed with prohibited numbers (secure digit sequences), allowed numbers (exception digit sequences), and several PINs (authorisation digit sequences). Associated with each authorisation digit sequence is a secure digit sequence. A user must enter a valid authorisation digit sequence to make a call using a secure digit sequence. Calls using an exception digit sequence are not disabled by the line security system.
A programmable telephone call authorisation circuit determines which authorisation code will authorise which secure digit sequences. Each authorisation digit sequence has a corresponding set of secure digit sequences that are pre-programmed into the system before use.
22) Though there is no express disclosure of the use of privilege ratings by the citation, the opponent submitted that “…a comparison is made between authorisation codes, which we further submit would be through the use of a foreign key (i.e. a privilege level like arrangement) as such an implementation would be known to the PSA as part of their common general knowledge.”
As the feature of a privilege rating is an essential feature of the claimed invention, US 4965459 would seemingly fail the "reverse infringement test". However, the opponent contends that this feature is common general knowledge, and that the person skilled in the art would read US 4965459 as disclosing this feature.
23) In my opinion, this argument fails for two reasons. First, the discussion at column 9, lines 37 to 45 of the citation clearly describes how the output of a discriminator is “…directed to the portion of the telephone call authorization circuit 112 logic that CODE A goes to. In this manner telephone calls to numbers containing secure digit sequences but which are authorized by code A are allowed to be completed.” Thus, I find that rather than access rights being specifiable for each authorisation digit sequence, only secure digit sequences are specified. Accordingly, the comparison between authorisation codes does not refer or imply a privilege rating or scheme.
24) Second, even if I have incorrectly construed the citation, and was to accept that the use of a privilege rating is common general knowledge, I consider there would still not be any basis upon which to find that claim 1 lacked novelty. The authorities have clearly stated that to render a claim not novel the prior art must positively disclose each essential claimed feature, usually citing the well known quote from General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra) that
"To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
25) This requirement that each essential feature be disclosed holds, in so far as novelty is concerned, even where the additional matter defined by the claim is common general knowledge or a workshop variation, provided it is an essential feature of the claim in question - Nicaro Holdings v Martin Engineering 16 IPR 545 and RD Werner & Co Inc v Bailey Aluminium Products 13 IPR 513. The opponent has tried to get around this by a process of adding common general knowledge to the disclosure of US 4965459 (although it has attempted to characterise it more as a process of reading the prior art in light of the common general knowledge). This cannot give rise to anticipation, although, as is said in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra), it may cause the claim to fail on the ground of obviousness. The same point is made in Acme Bedstead Co Ltd v Newlands Bros Ltd (1937) 58 CLR 689, except that the term "subject matter" is used rather than "obviousness".
Accordingly, I find that claims 1 to 18 are novel in light of this citation.
US Patent Specification 4099033 (exhibit DGM-10)
26) This invention concerns a telephone security device in which a circuit controlling a switch is actuated if a code entered by a user corresponds to a pre-stored code, thus allowing the call to continue. The device allows the telephone handset to establish outgoing calls in one of three operating modes. Each mode defines or limits the type of call that can be made.
27) The opponent argued that “…the mode of operation represents the privilege rating and the description of the mode is sufficient for the PSA to identify those telephone prefixes that would be blocked or allowed, as required.” This may be so, but feel that I need not come to a concluded view on the matter, as the telephone security device is easily distinguished from the claimed invention on another ground. The one critical difference is that there is no association between the mode and the entered code. The citation merely describes how a user may specify which mode of operation they wish to enable following successful entry of their code.
Accordingly, I find that claims 1 to 18 are novel in light of this citation.
US Patent Specification 5109408 (exhibit DGM-4)
28) The citation discloses an arrangement comprising a database and switching means connected to a plurality of telephones. The switching means includes a memory that stores data defining a plurality of dialling plans and defining for each of the telephones a default plan to be used for calls from that telephone. Entry of a pre-specified access code (i.e. an over-ride code) allows a secondary dialling plan to be used from that telephone. This secondary dialling plan may prompt a user for a PIN to enable call completion.
29) In my view this arrangement does not define the invention of claim 1. There is no comparison of a user's privilege rating to the privilege rating of a telephone number prefix; rather, the valid entry of an access code results in the selection of secondary dialling plan directly related to that access code. No comparison needs to be made because there exists only one secondary dialling plan per access code.
30) Further support for my interpretation comes from the opponent’s own expert, Mr Myers, who in his third declaration of 28 November 2002 at paragraph 45(d) concedes that “… US 5109408 covers the core of claim 1 of the Maldes Phoenix Application, due to its embedded nature and its inclusion of all features bar the numerical comparison that occurs for determining privilege levels.”
Accordingly, I find that claims 1 to 18 are novel in light of this citation.
US Patent Specification 4045619 (exhibit DGM-7)
31) The document describes a telephone control system in which each user has a card that identifies them and contains an authorisation code. Prior to dialling, the user inserts the card into an accessory body that contains a reading mechanism. The telephone control system detects the user’s call authorisation level and restricts use of the telephone according to that level. If the user dials an unauthorised call, the telephone set is disconnected from an outgoing telephone line by a user authorisation control circuit.
32) The critical difference between the claimed invention and the arrangement disclosed by the citation is that the PIN is read from the user’s card, and is not entered by the user as part of a dialling sequence. Neither am I satisfied that a user card, for the storage of a single PIN and authorisation level, is equivalent to the PIN storage/prefix storage means of claim 1.
Accordingly, I find that claims 1 to 18 are novel in light of this citation.
US Patent Specification 4953202 (exhibit DGM-8)
33) The citation discloses a call barring system that utilises both an authorisation code and one or more access codes. Dialling in an authorisation code permits unrestricted access, while various levels of call restriction may be bypassed by entering an access code. A switch is triggered to terminate any unauthorised calls.
34) However, there is no comparison of a user's privilege rating to the privilege rating of a telephone number prefix. The entry of a valid access code merely results in the selection of a particular call barring mode directly related to that access code, and no comparison needs to be made. Similarly, the valid entry of an authorisation code does not result in any comparison with a PIN list because in this mode there are no call restrictions.
Accordingly, I find that claims 1 to 18 are novel in light of this citation.
Conclusion on Novelty
35) I have found that claims 1, 2 and 4 are not novel in light of GB 2104347. The remaining claims are not anticipated by this or any other document in evidence.
36) I will note that in his submissions, Mr Plummer also referred to a specification, US 3931476. Although this document was not in evidence, it was readily available from within the Patent Office. Following a brief perusal of US 3931476, I am satisfied that the invention of claims 1 to 18 is not disclosed by this document. Consequently, I see no reason to invoke the provisions of regulation 5.11.
Inventive Step
37) According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a)common general knowledge, or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
38) With regard to the first criterion, a widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
39) The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.
40) At the hearing the opponent made certain allegations as to the common general knowledge in the art, and though I have some doubts as to the degree of reliability that ought to be placed on the views of Mr Myers and Mr Plummer without further independent corroboration, I am unaware of anything tending to suggest the common general knowledge is otherwise. The applicant did not seriously or effectively challenge any of these allegations. Under the circumstances I think I must accept that the following salient features were common general knowledge:
(i)the use, design and programming of embedded controllers;
(ii)electronic circuits and design, including interfaces for telephony equipment and interfaces for embedded controllers;
(iii)the use, design and programming of microprocessor based control systems;
(iv)the use, design and programming of universal asynchronous receiver/transmitter (“UART”) integrated circuits;
(v)the use, design and implementation of passwords to determine privileges, including associating a privilege rating with a user/password, and associating a privilege rating with objects, actions or tasks and selectively allowing or denying a user to any object, action or task based on a comparison of the respective privilege ratings;
(vi)electronic circuits to decode dialling signals;
(vii)the use, design and implementation of ROM and non-volatile memory in embedded control systems and microprocessor based control systems
(viii)the use of dialling signals to program embedded systems or microprocessor based control systems connected to a telephone line;
(ix)the simplification of m Û n relationships into two tables having a common key;
(x)the simplification of entries in a two-dimensional table space by identifying commonalities akin to the process employed in ascertaining the minimal sum of products in Karnaugh map arrangements.
41) The opponent submitted that the invention as claimed in any claim lacks an inventive step in light of this knowledge. I am not persuaded by this assertion, as I consider that the opponent has not provided sufficient evidence as to what a non-inventive person skilled in the art would do with this information. When considering the question of obviousness in relation to a combination it is the inventiveness of the combination as a whole that must be looked at rather than that apparent from examining each integer in turn (Minnesota Mining & Manufacturing Co v Beiersdorf (supra)). What is claimed appears to be a new combination of integers and it is the selection of the integers of that combination out of perhaps many possibilities that must be shown to be obvious. To look at the invention in any other way would, in my view, be to fall into the trap of ex post facto analysis so often warned against.
I will therefore turn to the prior art to assess inventive step.
42) It is clear from the evidence that the design, development and supply of telephony products for the telecommunications industry is a competitive business and one in which it is reasonable to conclude that participants would have a real interest in keeping abreast of their competitors' developments, both to maintain competitiveness and to avoid infringement. Thus, I consider that patent documents could have been reasonably expected to have been ascertained by the skilled person. Given this, I do not think there is any doubt that the various documents which the opponent has established as being in the public domain before the priority date of the claims would be ascertained, understood and regarded as relevant by the person skilled in the art. The applicant did not dispute this reasoning.
43) Having determined that claims 1, 2 and 4 are not novel by virtue of the disclosure in GB 2104347 (exhibit DGM-3), I also find that these claims lack an inventive step in light of this citation.
44) Of the remaining claims, the opponent argued that the features added by these claims were well known to the person skilled in the art and in some instances merely reflected standard practice. For many of the claims, the available evidence supports this contention. Claims 4, 5 and 14 to 17 merely define the physical placement of the line access control apparatus. For the invention to operate in the manner intended, it is clear that it must be located at some point between a telephone or terminal unit and a central exchange. In my view the specific location defined by each of these claims would be well known to those skilled in the art and there is nothing in the subject matter of these claims which would render them inventive. Claim 6 relates to the telephonic inputs and outputs from the line access control device, and I am satisfied that such an arrangement is within the common general knowledge of a skilled person, and therefore not inventive. Similar reasoning applies to claim 7, which merely stipulates the memory requirements of the invention.
45) However, claim 3 allows for a telephone number to be disallowed on the basis of a first prefix unless the first prefix is followed by a further prefix that falls within a pre-defined exception. As the opponent submitted, it is true that a typical hierarchy of privileges is going to involve at least some levels where the set of rights assigned to one privilege rating will be a subset or superset of the set of rights assigned to an adjacent privilege rating. But this is not the case here, where within a standard blocked or allowed prefix there may be individually allowed or disallowed numbers. This is not a typical hierarchy of privileges, and strikes me as being quite different. Further support for this view comes from paragraph 13 of the Smith declaration, which states that this scheme represents a notable difference from what he had observed in the industry at the time. I note that none of the declarants for the opponent disputed or challenged this assertion. I also consider that the other citations relied upon by the opponent teach away from the claimed invention as none envisage a privilege rating scheme in which certain telephone numbers may be allowed even though certain number sequences included therein are prohibited. The evidence falls short of establishing that a non-inventive skilled worker would, as a matter of routine, have come up with this solution. It is not sufficient for a finding of obviousness that the skilled person "could" have done what has been claimed. In my view the invention of claim 3 is not obvious.
46) The evidence also fails to establish that the invention of claim 8 lacks inventiveness. Though I am prepared to accept that the use, design and programming of embedded controllers and microprocessors is known, there is nothing in the evidence to suggest why certain elements of the device, such as becoming activated on detection of an off-hook state and initialising a default privilege rating, would be implemented in software as a matter of routine at the priority date. In the absence of more specific evidence from Mr Myers on what may or may not have influenced the skilled addressee on this point, I am unable to conclude that the specific implementation claimed was obvious. Consequently, it follows that claims 9 to 12, which are appended to claim 8, must also be found inventive. Similar reasoning can be applied to claims 13 and 18, which are directed to a plurality of line access control devices connected in series so as to cumulatively form an expanded PIN/prefix list. Insufficient evidence has been provided to show that these claims fail for lack of inventiveness.
In conclusion, I find that the invention of claims 3, 8 to 13 and 18 is inventive.
Section 40
47) I find that the many of the matters raised by the opponent under the heading of section 40 are minor and can be readily dismissed when the normal rules of construction are applied. One of these rules is that a patent specification is to be read as a whole - see Welch Perrin v Worrel (1961-62) 106 CLR 588 at 610, Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69. For example, the opponent alleged that claim 1 was unclear due to an overlap in purpose between the switch means and interruption means. A fair reading of the specification as a whole finds no support for this allegation. The description specifies that an output of the interruption means, which comprises a processor, is connected to the switch means. A preferred arrangement is exemplified by Figure 4, which indicates that if a call is to be blocked, the microprocessor operates the normally closed relay RL1 causing it to open and thereby interrupting the circuit. I fail to see any overlap between the switch means and the interruption means by which it is controlled. Similar objections to the remaining claims are also easily resolved, especially when one reads the specification liberally and is "willing and wishing" to understand the specification (Philpot v Hanbury (1885) 2 RPC 33).
48) Most significantly, if I am to accept Mr Myer's evidence as being truly reflective of the skilled addressee, it would be rather difficult to say the description and claims are unclear when, as a person skilled in the art, he clearly has had little difficulty in ascribing meaning to it.
Thus I will limit my consideration to the more substantial objections.
Fully describe the invention
49) The opponent expressed concerns that the specification fails to fully describe the invention, due to a number of inconsistencies and a perceived lack of detail.
50) The courts have indicated that a specification will contain a full description if it makes the nature of the invention plain to persons having reasonably competent knowledge of the subject, and makes it plain, to a skilled addressee, how to perform the invention: Patent Gesellschaft AG v Saudi Livestock Transport and Trading Company (1997) 37 IPR 523 at 530. The degree of "sufficiency" required was discussed in No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 at 243 where Romer LJ said:
"…if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omission without the exercise of inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
51) The invention involves a combination of features, which in my view are adequately defined by the specification. I am also of the belief that the teaching in the specification is sufficient for the result to be obtainable by the exercise of the common general knowledge of those to whom the specification was addressed. I note that the level of detail provided in the present specification does not compare that unfavourably with that of the prior art specifications in the evidence in this matter. Furthermore, none of the declarants has asserted that as a result of any deficiency in the application, they would be unable to perform the invention.
52) Thus, I consider the evidence does not support the contention that the specification fails to fully describe the invention. I also note that if such an allegation were found true, it would be inimical to the opponent's case on obviousness.
Fair Basis
53) The opponent argued that the claims as a whole are not fairly based on the matter described in the specification because they omit the essential features of “preventing the dialling signals corresponding to the PIN from reaching the exchange”, and “parsing the at least one sequence of at least one code character to obtain a PIN and a telephone number.”
54) Whether a claim is fairly based on the matter disclosed in the specification depends upon whether there is a "real and reasonably clear disclosure" of the matter claimed: Leonardis v Sartas (No 1) Pty Ltd 35 IPR 23. In Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240 Barwick CJ said:
"The question whether the claim is fairly based is not to be resolved, in my opinion, by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product ... as expressed, travels beyond the matter disclosed in the specification."
55) That formulation was recently approved by the High Court in Kimberly-Clark (Australia) Pty Ltd v Arico Trading International Pty Ltd (2001) 177 ALR 460. In ICI Chemicals & Polymers v Lubrizol Corp Inc (2000) 106 FCR 214 the Full Court said that ordinarily at least, what will deprive a claim of fair basis in a complete specification is that the claim is broader than the invention as described in the specification.
56) A fair reading of the specification finds no support for the allegation that these two features are essential. In particular, I note that preventing the PIN number from entering the telephone network is merely a preferable feature (see page 6, lines 24 and 25). The specification is almost wholly silent on the issue of parsing the sequence of code characters so as to obtain a PIN and telephone number, and there is nothing to suggest that this feature is essential. Accordingly, I conclude that the claims are fairly based.
57) For the sake of completeness I will add that several arguments raised by the opponent in regard to fair basis, while raised under the ground of fair basis, seemed more suited to a ground of lack of utility. In my view the device defined by the claims is potentially capable of achieving the object of the invention. Whether it will actually do so or not is a question of utility, which is beyond the scope of this opposition.
Allowability of the amendments after acceptance
58) The opponent expressed concern that the amendments to the specification filed on 20 November 2000 and subsequently accepted on 29 March 2001 lacked compliance with s102(2). The amendments resulted in the inclusion of a “switch means” in claim 1, and new claims 2 and 3. It was submitted that the amendment to claim 1 failed to comply with s102(2)(b), and that claims 2 and 3 have broadened the scope of the claims by claiming matter not previously subject to claim.
59) I do not look favourably upon this line of argument, as the opponent had every opportunity to oppose the amendments when proposed, and willingly chose not to do so. Furthermore, the Commissioner has no discretion under s104 to direct that these amendments be reversed, undone or re-done. As I have already dealt with the issues of clarity and fair basis, the only substantive issue that flows from the opponent's allegation is one of priority dates as determined under Section 114.
60) Section 114(1) provides that where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations. Regulation 3.14 provides that where s114(1) applies to a claim of a specification, the priority date of the claim is the date of filing of the amendment that resulted in the disclosure referred to in s114(1).
61) Thus the ultimate issue to be decided is whether by amendment claims 2 and 3 are directed to matter not in substance disclosed in the specification as filed. In determining whether as a result of amendment a claim of a specification claims matter in substance disclosed or not, the claim may be tested for fair basis against the original disclosure (see United-Carr Incorporated's Application (1971) RPC 23).
62) Though the language used is subtly different, it seems to me from an overall reading of the specification as filed that the features concerned were fairly foreshadowed prior to amendment. In this regard I note from page 4 that communication may be interrupted if the privilege linked to a detected PIN does not at least equal the privilege rating linked to the partial or complete telephone numbers included in the sequence of code characters. Page 6 of the original specification clearly states that the invention allows selected numbers from within a field of denied numbers or number prefixes to be accessed. Pages 16 to 18 of the specification as filed provide specific examples of a table of allowed/disallowed numbers as claimed. I consider that the incorporation by amendment of these features into the claims merely amounts to a choice from alternative embodiments given in the specification as filed which is not in the nature of a selection involving an inventive step beyond the original disclosure (c.f. Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd 11 IPR 20).
63) On the basis of the foregoing, I reject the submissions put to me that claims 2 and 3 claim matter not originally disclosed and, consequently, I find that the priority date of these claims of the present application is not governed by s114. I would add here that even if s114 could be properly invoked due to the presence in the claims of matter not disclosed by the specification as filed (i.e. before amendment), I can not see how claims 2 and 3 could possibly be anticipated by the unamended specification as submitted by Mr Plummer. I note that a similar argument was dismissed by Dowsett J in Grove Hill Pty Ltd v Great Western Corporation Pty Ltd 55 IPR 257.
Manner of Manufacture
64) The opponent contended that the invention of claim 1 did not comply with s 18(1)(a) because there was no working interrelationship between the monitoring means or the switch means with any other feature in the claim. This argument appears to be based on the belief that claim 1 fails to adequately define either the structure or the operation of the invention.
65) In my view this submission is more relevant to a question of sufficiency or utility rather than the question of manner of manufacture. In any case, I am not convinced by this argument. Reading the claims in the context of the specification as a whole I am satisfied that there is a working interrelationship between both the monitoring means and switch means and the other features of claim 1. The description specifies that a DTMF receiver (i.e. the monitoring means) detects and interprets dialling signals in a form that the microprocessor can understand, and that the output from this (i.e. the interruption means) is connected to the switch means, which is activated to interrupt a call. There is no question that the claim is to be read as requiring the monitoring and switch means to operate with the other integers of claim 1 as elements of a combination and not otherwise. The claim adequately defines the structure of the invention. Accordingly I find that the invention is a true combination and a manner of manufacture as required by section 18(1)(a) of the Patents Act 1990.
66) The opponent also submitted that the claimed invention was no more than the new use of a known contrivance. Alternatively, it was argued that the invention amounts to no more than the analogous use of known principles “… exemplified in the UNIX operating systems mechanisms for controlling user access to files and other resources.” This line of argument was not seriously pursued, and I consider that no real evidence was presented in support of either contention. In any case, I find that neither argument succeeds, as it would be erroneous in the absence of the lack of an inventive step being shown on the face of the specification, to consider matters that could be raised on grounds of obviousness or lack of novelty in a case under the Act. This is in accordance with the High Court's decision in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 at 188-190.
I conclude that all of the claims define a manner of manufacture.
CONCLUSION
67) I have determined that the invention defined by claims 1, 2 and 4 of the present application lacks novelty in light of GB 2104347. I have also found that claims 1, 2, 4 to 7 and 14 to 17 do not possess an inventive step based on this citation and the common general knowledge. However, the specification was found to comply with s40 and was for a manner of manufacture.
As there is clearly patentable subject matter within the specification I allow the applicant 60 days from the date of this decision in which to file proposed amendments overcoming the problems noted above.
COSTS
68) Costs normally follow the event. In this case, I have found that the opponent has been partly successful in respect of the novelty and obviousness of the claims. I therefore award costs against the applicant.
R W J Finzi
Delegate of the Commissioner of Patents
11 February 2004
Patent attorneys for the opponent : Wray & Associates, Perth
0
6
0