MATTHEWS INTERNATIONAL CORPORATION

[1998] APO 22

official notice

decision of a delegate of the COMMISSIONER OF PATENTs

Application  :          No. 16341/97 in the name of MATTHEWS INTERNATIONAL CORPORATION.

Title:          Merchandise selling system and display unit.

Action:          Hearing in respect to objections during examination.

Decision:          Issued  .

Abstract:The claims, as proposed to be amended, lack inventive step.  The only difference between the claimed invention and the prior art is the information content displayed on the respective display units.

There is also nothing disclosed in the specification as a whole that confers inventive step over the prior art.

Accordingly the petty patent application and specification were refused.

PATENTs act 1990

decision of a delegate of the COMMISSIONER of PATENTs

Re:Petty patent application no. 16341/97 by MATTHEWS INTERNATIONAL CORPORATION, and objections raised during examination. 

background

Matthews International Corporation (Matthews) filed petty patent application 16341/97 on 14th March 1997.  The office has issued four reports during examination.  The main objections raised during examination are that the alleged invention is not a manner of manufacture, lacks inventive step, and lacks novelty.  The examiner’s fourth report maintains the first two objections.  On 9th February 1998 Matthews requested a hearing in respect to the maintenance of these objections.

The hearing took place in Adelaide on 9th March 1998.  Ms Catherine Hustwick, patent attorney of Madderns, represented Matthews at the hearing. 

SPECIFICATION

The subject matter of the application relates to display units for displaying product lines having a plurality of design features.  Specifically the alleged invention relates to displays of memorial products, for head stones or plaques, to enable a customer to choose an appropriate memorial product for a deceased relative.

Matthews have proposed to amend the claims of the specification at least once during the course of examination.  At the hearing Ms Hustwick filed a further proposed amendment of the claims in response to the examiner’s fourth report.

The latest proposed version of claim 1 reads as follows:-

A product display board for display of product lines of memorial products, said display board comprising:

a planar member; and

a plurality of linear arrays mounted on said planar member, each said array displaying one product line and including a plurality of cells, each said cell including a product sample displaying at least one design feature, said at least one design feature comprising at least one design option for a memorial product, wherein each said cell displaying one of said design features is linearly arranged with another of said cells displaying said one design feature, and wherein at least one of said cells displays a finished memorial product and further wherein said linearly arranged cells are substantially perpendicular to said plurality of linear arrays of product lines, whereby a plurality of product lines each having a plurality of design features are displayed to provide a prospective purchaser with a plurality of design options.

THE EXAMINER’S REPORT

The examiner’s most recent report (the fourth report) maintains objections that the alleged invention is not a manner of manufacture and that the alleged invention lacks inventive step.  The most relevant patent specification relied upon to support these contentions is WO 92/16124.  This specification became available, in Australia, to the public on 21st October 1992, and is consequently earlier than the date of the present application.

DECISION

The proposed version of the claims, filed at the hearing, seeks to overcome the objections raised in the fourth report.  However I mentioned at the hearing that, on the face of it, the objections raised in the report still appeared to be at issue. 

Manner of manufacture

Ms Hustwick challenged the correctness of the objection of lack of manner of manufacture.  She relied on several items of case law to support her position.  The Innovative Agriculture Products Pty Ltd v Cranshaw decision (35 IPR 643, at page 664) cites National Research Development Corp (NRDC) v Commissioner of Patents ((1959) 102 CLR 252) and NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (32 IPR 449) to support the view that it is a mistake to conclude that only tangible articles are manners of manufacture. Ms Hustwick stated, from the NRDC (supra) decision, that the correct question to ask is whether an alleged invention is proper subject matter for a patent.

Ms Hustwick also referred to Fishburn’s Application ((1940) 57 RPC 245) and Cobianchi’s Application ((1959) 29 AOJP 2133) to submit that the interaction and functional purpose between the product lines and cells of the present invention are sufficient to qualify the invention as a manner of manufacture.

I mentioned at the hearing that, on the basis of the above submissions and my assessment of the claims, I was prepared to accept the alleged invention is a manner of manufacture.  The claims clearly define an article, specifically a product display board characterised by a planar member with particular information displayed thereon in particular linear arrangements. 

Furthermore the product lines are linearly arranged perpendicularly with sample cells which have particular design features for product samples in the product lines.  This demonstrates a potential working interrelationship between the product lines and the cells in the sense that a customer may conveniently select design features from a range of design features within the product lines to build up a preferred finished memorial product design.

One could argue the alleged invention does not limit nor suggest preferred design features to build up optimal memorial product designs and that there is therefore no real interaction between the sample cells and the product lines.  However the working interrelationship needs only to be potential and not actual (Cobianchi’s Application (supra)).  The alleged invention enables a customer to conveniently select or build up a preferred, or even optimal, finished memorial product design by virtue of the particular arrangement of product lines and design features on the display unit.

I am satisfied the requisite potential working interrelationship exists in the present case.

The Philips (supra) case and the Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Limited case (unreported High Court decision, [1998] HCA 19, 26th March 1998) suggest a quality of inventiveness must be apparent on the face of the specification for there to be a proper manner of manufacture. In the present case Matthews admit in the specification that it is known to provide customers with various samples of finished memorial products with ranges of design features thereon. According to Matthews however there does not appear to be any display unit available which allows viewing of all possible product lines and design features to enable a customer to select or build up a preferred finished memorial product design. On the face of the specification the necessary quality of inventiveness is present.

Overall the alleged invention is a manner of manufacture.

Inventive step

I mentioned at the hearing my remaining concern in respect to inventive step.  This concern is that, on the face of it, the claimed invention differs from WO 92/16124 only in the information content displayed on the display unit.

Inventive step is also assessed in the context of the relevant person skilled in the art trying to solve a particular problem.

The problem the alleged invention seeks to overcome is to allow the viewing of all product lines and design features, offered by a memorial product merchant, on a single unit in a timely manner.  This leads to a customer requiring a minimum amount of deliberations in considering various design options.  A similar problem and outcome is evident from WO 92/16124 which describes a beauty aid consulting means.  In that specification the invention seeks to enable a customer to readily ascertain advantageous personal appearance options from a display unit based on specific input features related to appearance.  The customer selects appropriate input features from all combinations of input features displayed on the display unit in order to derive the advantageous personal appearance options.  This enables the customer to consider and select appearance options with a minimum amount of deliberations.

Ms Hustwick suggested the relevant person skilled in the art is one engaged in memorial product merchandising.  I think this is a narrow determination of the relevant person skilled in the art.  The alleged invention relates generally to the display of information.  This is evident from the aim of the invention to enable the viewing of a complete range of product samples on a single unit in a timely manner.  Additionally the similarity of the problems and outcomes associated with memorial product displays and beauty aid consulting displays suggests the alleged invention has wide-ranging application.  Accordingly the relevant person skilled in the art is one engaged in display arrangements. 

Ms Hustwick said that even a person skilled in the art of display arrangements would not have ascertained, understood and regarded WO 92/16124 as relevant.  She said WO 92/16124 is specifically directed to a beauty aid consulting board.

I am not persuaded by this argument.  The WO specification discloses linear arrays of cells with colored panels and/or printed text thereon which highlight advantageous personal appearance features for specific input features.  I am satisfied a person skilled in the art of display arrangements would have ascertained the WO specification, understood it and regarded it as relevant to solving the problem of allowing the viewing of memorial product lines and design features on a single unit in a timely manner.

In respect to the inventiveness of the alleged invention over the WO specification Ms Hustwick cited the Innovative (supra) case, at page 662, to mention the importance of assessing the invention as a whole when considering the lack of inventive step or obviousness of the invention.  One should not consider the obviousness of each of the constituent parts of the combination.  She also relied on Edison Bell Phonograph Corp Ltd v Smith and Young ((1894) 11 RPC 389) and Allsop Inc v Bintang Ltd ((1989) 15 IPR 686) to say a scintilla of invention is sufficient to render a patent claim as valid.

Ms Hustwick submitted that the amendment proposed at the hearing distinguished the alleged invention from WO 92/16124 by claiming linear arrays of product lines and linear arrangements of cells displaying the same design feature which are substantially perpendicular to the linear arrays of product lines.  Ms Hustwick also pointed out that the claims also now define at least one of the cells displaying a finished memorial product.

By contrast Ms Hustwick said WO 92/16124 merely displayed arrays of various colour combinations for a variety of personal appearance features.  She suggested this required the provision of the cursor bar disclosed in that specification to more clearly highlight appropriate colour combinations for selected personal appearance features.

On the other hand it is irrelevant that the beauty aid consulting board may require a cursor bar while the memorial product display does not.  The provision of a cursor bar is simply a reflection of the type and format of information displayed.  The bar aids the reading of arrays of information of relatively low contrast on the beauty aid consulting board.  Such an aid does not appear to be necessary for arrays of information of relatively high contrast associated with the memorial product display.

Overall the apparatus claimed in the present application is the same as that disclosed in WO 92/16124.  The additional cursor bar disclosed in the WO specification simply aids the reading of information on the display unit.  The display units in the two specifications are essentially the same.  The difference between the claimed invention and that of the WO specification is the information content displayed on the respective display units.  The former displays product lines and design features for memorial products while the latter displays advantageous combinations of personal appearance features. 

I am satisfied a person of ordinary skill in display arrangements, having the WO specification at their disposal and faced with the problem of viewing memorial product lines and design features on a single unit in a timely manner, would substitute arrays of appropriate memorial product lines and design features for arrays of personal appearance combinations.  That person would thereby arrive at the claimed invention without exercising inventive ingenuity.

Furthermore it is well established law that there is no invention where the alleged invention differs from what is known only by its information content.  Some examples are Cobianchi’s Application (supra), Janome Sewing Machine Co.’s Application ((1982) AOJP 1355), Continental Group Inc.’s Application (7 IPR 362), and Indoor Cricket Arenas (Australia) Pty Ltd v Australian Indoor Cricket Federation (No.2) ((1987) AIPC 90-395). In view of these cases, the present application must fail because the claimed invention differs from the WO specification only by the information content displayed on the respective display units.

Overall the claimed invention does not have inventive step.

Ms Hustwick further distinguished the alleged invention from WO 92/16124 by saying the invention resided in the gradation of product samples in the product lines from a basic product to an ultimate, top-of-the-line version.  She also suggested the differences between the product samples in each product line were better outlined amongst the memorial products compared to mere changes of colour in WO 92/16124.

At the hearing I noted that neither the gradations nor the differences between product samples are claimed in the present claims.  Ms Hustwick offered to further amend the claims to incorporate these allegedly distinguishing features.  I agreed I would allow an opportunity to further amend the claims along these lines if I found the present claims still lacked inventive step.  However these features still only reflect the information content on the display unit.  Furthermore I am of the view there is nothing disclosed in the specification, other than pure information content on the display unit, that distinguishes the alleged invention from WO 92/16124.  Consequently there is nothing in the specification that confers inventive step over WO 92/16124.

CONCLUSION

The claims, as presently proposed, of petty patent application 16341/97 lack inventive step over the disclosure in WO 92/16124.  The only difference between the claimed invention and the WO specification is the information content displayed on the respective display units.  There is also nothing disclosed in the specification of application 16341/97 as a whole that confers inventive step over WO 92/16124.

Accordingly I refuse to accept the petty patent application and specification.

M.G. Kraefft

Delegate of the Commissioner of Patents

Attorneys for the applicant  :  Madderns, Adelaide.