Robert Bosch GmbH
[2022] APO 50
•12 July 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Robert Bosch GmbH [2022] APO 50
Patent Application: 2016200063
Title:A SYSTEM PROGRAMMING TOOL AND AN ALARM HOST EQUIPPED WITH THE PROGRAMMING TOOL
Applicant: Robert Bosch GmbH
Delegate: Dr W.E. Guinea
Decision Date: 12 July 2022
Hearing Date: Written submissions filed 28 June 2021.
Catchwords: PATENTS – Examiner objections – inventive step – programming key having a dial switch for storing and managing multiple files – lack of inventive step – opportunity to amend – final date for acceptance extended
Representation: Patent attorney for the applicant: Spruson & Ferguson Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016200063
Title:A SYSTEM PROGRAMMING TOOL AND AN ALARM HOST EQUIPPED WITH THE PROGRAMMING TOOL
Applicant: Robert Bosch GmbH
Date of Decision: 12 July 2022
DECISION
Proposed claims 1-9 lack an inventive step in light of prior art document CN 203760085 U, referred to as D2 during examination.
I direct that the examination of the application continues. Under subregulation 13.4(3), in conjunction with subregulation 13.4(1), paragraph (g) of the Patents Regulations 1991, I direct that the period to gain acceptance of the patent request and complete specification in relation to the application is six (6) months from the date of this decision.
REASONS FOR DECISION
Background
The present matter concerns Australian patent application 2016200063 (the “application”) which was filed on 6 January 2016 in the name of Robert Bosch GmbH (the “Applicant”). The application claims an earliest priority date of 16 January 2015 from Chinese application number CN201510023644A.
Examination of the application was requested on 17 October 2019 with the first of five adverse examination reports being issued on 18 June 2020. Examination reports one and three raised an objection that the claims were not novel. All five adverse reports raised an objection for lack of inventive step, and this remains the only outstanding objection.
On 31 May 2021, the Applicant wrote to the Commissioner requesting to be heard in relation to the outstanding objection. On 2 June 2021, the Commissioner wrote to the Applicant, advising them that the hearing would be by way of written submissions due within four weeks. The Applicant filed their submissions in this regard on 28 June 2021 (the “submissions”).
Amendments to the filed specification were proposed in response to the first examination report and, most recently, on 2 June 2021, subsequent to the request to be heard.
The final date for acceptance of the application was 18 June 2021, however paragraph 13.4(1)(g) of the Patent Regulations is available to extend the time for gaining acceptance to 3 months (or longer if appropriate under sub-regulation 13.4(3)) from the date of the present decision.
Relevant law
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) which commenced on 15 April 2013.
Under Subsection 49(1), I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application pursuant to subsection 49(2). I will, however, only refuse the Application if I am also satisfied that providing the applicant with an opportunity to amend will serve no useful purpose; for example, if I consider that any potential negative findings are not rectifiable by an allowable amendment.
The specification
The Person Skilled in the Art
The specification is to be construed through the eyes of the person skilled in the art. He or she is a person, or team, having a practical interest in the subject matter of the invention. This includes both those who might wish to make the invention and those who might wish to use it. While well versed in the relevant field, the person skilled in the art is taken to be non-inventive; (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [71]- [72]; referring to Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242 and The General Tire & Rubber Company v The Firestone Tyre & Rubber Company Ltd [1972] RPC 457 at 485).
The submissions reference a person skilled in the design of programming keys. Beyond this, the identity of the person skilled in the art does not appear to have been discussed in the process of examination. I expect this is largely because there is little contention on the matter. For the sake of completeness, I consider it clear that the relevant person would include those with a working knowledge of the design, programming and use of electronics for computing. More specifically, the specification describes the relevant field as relating to “electronic controlling, especially a system programming key and an alarm host device equipped with the system programming key” (p. 1, lines 6-8). This would seem to include methods, devices and circuits for firmware upgradation especially in relation to programs stored in erasable programmable read only memory (EPROM) or similar.
The invention as described
The full specification is only seven pages in length. By way of background, it states that alarm host devices may be reprogrammed using programming keys. Typical programming keys are said to comprise a single interface module for connecting to a host device and a memory which stores only a single file. Separate keys are therefore required for each firmware version and system configuration.
As described, the alleged invention comprises a programming key having both an interface for connecting to a host device and another interface for connecting to a computer host device. The described key stores multiple files which are numbered from 1 to N. These files may be selected via a dial switch or jumper having corresponding 1 to N settings. The provision of multiple files on a single programming key is said to reduce manufacturing costs and simplify operation.
The invention as claimed
The specification, as it was most recently proposed to be amended on 2 June 2021, ends in nine claims which are set out in their entirety in Annex A. Claim 1 is the only independent claim and reads as below. I find it convenient to separate the claim into integers (i)-(iv) and limitations to those integers (v)-(vi):
A programming key, wherein it is used to carry out hardware upgradation and configuration updating of a controlling host device, the programming key comprises:
(i) a first interface for connecting the controlling host device;
(ii) a communication protocol module at least for processing communication data of the first interface;
(iii) a multi-file storage module for storing and managing multiple files; and
(iv) a file selection module enabling a file to be chosen from the multi-file storage module and enabling the controlling host device to access the chosen file via the first interface;
wherein
(v) files in the multi-file storage module are numbered from 1 to N, wherein the N is an integral number larger than 1, and
(vi) the file selection module chooses a file's number by a dial switch such that the file accessed by the controlling host device via the first interface can be chosen.
Claim construction
The rules of construction are summarized in Decor Corp v Dart Industries [1988] FCA 399 at [14] as endorsed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [118] – [120].
Given their importance to the matters at hand, I find it useful to detail my construction of several of the terms and phrases used in the claims, and these are given below.
programming key
I understand the word “key” to be used in the art to define a small physical data storage device. From the description, I understand the term “programming key” to define such a device storing operating configurations and programs and suitable for transferring these to a computing device in order to ‘program’ it. While the context of the alleged invention is an alarm system, I am not aware of any specific limitations imported by this use. I am similarly unaware of any limitations that are specific to the use of keys for ‘programming’ although I am aware that many programming keys will have specific hardware and software adaptations relating to their specific application. I note that the claims are not limited to any particular controlling host device.
hardware upgradation
Read in isolation, the plain meaning of the term “hardware upgradation” would define a change to the physical components of a computing device. As described, however, the programming key functions only to provide data. I therefore construe the term “hardware upgradation” to define the provision of new software for low-level device control. This is distinguished from the feature of “configuration updating” which I construe to alter the parameters used by existing software programs.
dial switch
I am not aware of the term “dial switch” being in common use nor having a particular meaning in the art. The specification makes clear that this feature provides a function in the invention which is equivalent to that of a “jumper switch”. I therefore understand the term to define a mechanism by which an electrical circuit may be reversibly altered. Beyond this functionality, the specification does not appear to further qualify the term.
The Macquarie dictionary (online edition, accessed 04 November 2021) provides several definitions of “dial”, the most relevant being, “a rotatable plate or disc used for tuning a radio station in or out”. I thus take the term “dial switch” to define a switch operated by means of a rotatable plate or disc which is more often known in the art as a “rotary switch”. The applicant’s submissions appear to agree with this construction stating, “a dial switch is universally known to be easy to use and a user merely needs to rotate the dial to make the desired selection”. Further references to a “dial switch” in this decision should be understood as being synonymous with what is universally known as a “rotary switch”.
numbered
Lines 31-34 of page 2 make clear that a file’s “number” is distinct from both its “name” and “starting block”. I thus understand the term “numbered” to define the assignment of unique identifier to each of the files stored on the programming key.
the file selection module chooses a file's number by a dial switch
While limitation (vi) could be read as giving agency to the file selection module, it is clear from the specification as a whole, and lines 25-33 of page 4 specifically, that this limitation should be read purposively to define the choosing of a file’s number according to a dial switch. Lines 25-33 of page 4 read:
In this embodiment, the multiple files comprise hardware and/or configuration files in several versions. These hardware and/or configuration files in different versions are numbered from 1 to N, wherein N is an integral number larger than 1. The file selection module 60 can employ a dial switch or jumper to provide a user with a set of numbers from 1 to N. After the user chooses a number, the controlling host device is enabled to access a file corresponding to the chosen number. For instance, if the user chooses the number 1, the controlling host device can access a hardware or configuration file numbered as 1 and finish hardware upgradation or configuration updating by the hardware or configuration file.
The remaining objection – Inventive step
The previous inventive step objections raised during examination have relied on the following prior art:
D1: CN 202221567 U (GUANGZHOU HAOYANG ELECTRONICS CO., LTD) 16 May 2012
D2: CN 203760085 U (HAIER GROUP CORPORATION et al.) 6 August 2014
D3: Jaguar 5-way BIOS Modification [retrieved from internet on 18 May 2021] <URL: published on 20 January 2012 as per Wayback Machine
D4: A Tiny 80(C)32 BASIC Board [retrieved from internet on 18 May 2021] <URL: published on 6 October 2014 as per Wayback Machine
I will continue to refer to these documents as D1, D2, D3 and D4 throughout this decision.
The remaining inventive step objection is taken in light of D2. The Examiner raised this objection in objection number six of the fourth report, finding that that the claimed invention differed from D2 in that:
“the file selection module chooses a file’s number by a dial switch or jumper”, and
“files in the multi-file storage module are numbered from 1 to N, wherein N is an integral number larger than 1.”
These features broadly correspond to limitations (v) and (vi) that I have identified in the amended claims.
The Examiner did not consider this difference to represent an inventive step, concluding in the fifth report that:
“…the Examiner maintains that, in seeking to provide an easier and faster selection of files than by multiple DIP switches, the person skilled in the art would be led directly and without difficulty to implement a dial switch or jumper. Furthermore, the Examiner maintains that such a selection would necessarily require mapping of the files to the output of the dial switch or jumper, and that the use of integers numbers from 1 to N would be an obvious solution which would be routine for the person skilled in the art. Moreover, such a numbering choice provides no technical improvement in the device as the advantages raised by the applicant regarding low-data file names, such as utilising less memory storage space, are well-known consequence of computing devices.”
The Examiner supported this conclusion by citing both D3 and D4 as evidence for the proposition that dial switches and jumpers were well known in the field of programming keys at the priority date.
The Applicant’s submissions
The Applicant appears to accept the Examiner’s conclusion that the claimed invention differs from D2 based on features (v) and (vi). Broadly put, they argue that these features are inventive as neither D3 nor D4 are relevant to the present enquiry and D2 teaches away from the claimed invention. The law I discuss below is referenced and there appears to be no contention on the relevant principles to be applied.
Relevant law for inventive step
For an invention to be patentable, Sub-paragraph 18(1)b(ii) of the Act requires that the invention, so far as claimed in any claim, involves an inventive step.
The statutory basis for an inventive step is found at s7(2) and s7(3) of the Act:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).”
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”Although not expressly referred to in the Act, it has been accepted by the authorities that lack of inventive step in the Act is commensurate with the previous concept of obviousness under the Patents Act 1952 (albeit relying on a different prior art base and characterisation of common general knowledge); see Re James Earl Winner and Donna C Winner v Ammar Holdings Pty. Limited (1992) FCA 377 at [12].
The question of obviousness has been considered by the High Court on several occasions with the following test from Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) HCA 12 at [45] (‘Wellcome Foundation’) being later endorsed in Aktiebolaget Hässle v Alphapharm Pty Limited (2002) HCA 59 at [50]:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
This above test is not to be one of degrees. As endorsed by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) HCA 21 (‘Lockwood’), it was stated at [39] in R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) FCA 57 that:
“Invention means more than novelty. Novelty alone will not sustain a patent. For there to be an inventive step, there must be some difficulty overcome or some barrier crossed.”
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
In formulating the problem to be solved, I am mindful that it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3) as per AstraZeneca AB v Apotex Pty Ltd (2014) FCAFC 99 at [202]-[203].
Many inventions are defined by a combination of features. A patentable combination may exist where there is a working interrelationship between the features of a claimed invention. In Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. (1980) HCA 9; (‘Minnesota Mining’):
“The patent thus claimed is a combination patent in the proper sense of that term, i.e. it combines a number of elements which interact with each other to produce a new result or product. Such a combination may be one constituted by integers each of which is old, or by integers some of which are new, the interaction being the essential requirement.”
Where the invention may lie in a combination of features, I must consider whether the combination is obvious, not whether each of the separate integers of the combination is obvious: Aktiebolaget Hassle v Alphapharm Pty. Ltd (2002) HCA 59 at [119]; and Minnesota Mining at 293:
“The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications ... The opening of a safe is easy when the combination has been already provided.”
In deciding whether a combination is obvious, I am mindful of whether a substantially new result is achieved. In the absence of a substantially new result, there will be likely no ingenuity in the application of well-known things to an article to which they had not formerly been applied. This is discussed in Re James Earl Winner and Donna C Winner v Ammar Holdings Pty. Limited [1993] FCA 134 at [25]:
“Notwithstanding that the inventive step may lie in the choice and management of integers in a combination patent (Wellcome Foundation at 281), where one starts with a known article or thing and merely substitutes or adds a known device or means to facilitate the better use of the thing, there is a risk of want of inventive step ‘unless the combination is substantially a new thing’ (May v Higgins (1916) 21 CLR 119 at 121; see also Sami S. Svendsen v Independent Products Canada Ltd (1968) 119 CLR 156 at 164-165).”
The Problem
While I am mindful that the High Court has stated that a problem-solution approach may be unfair to the inventor of a “simple solution” (Lockwood), it seems appropriate to discuss what may be considered as the problem to be solved given the submissions around “hindsight reasoning” and the known problems with DIP switches. I note that the Applicant has not suggested that the problem solution approach would be inappropriate in the present circumstances. Indeed, the Applicant’s citing of the approach from Wellcome Foundation (reproduced above at [31]) suggests that the Applicant considers that the problem solution approach is appropriate.
By way of background, the current specification states at page 1, line 15-16 that, “in the prior art, one programming key can store only one file”, and at lines 18-20, “(i)f information relating to the hardware and configuration has several versions, more programming keys will be required.” I thus broadly understand the problem as how to efficiently provide a host device with multiple different files for hardware upgradation and configuration update.
The submissions further identify a known problem with DIP switches which, although not discussed in the specification, is relevant to the inventive step objection taken in light of D2. Specifically:
“DIP switches are not user friendly and require a certain level of familiarity and technical expertise to operate. For example, to operate the DIP switch of D2, the user would need to be familiar with the various configurations of the binary/on-off switches on the DIP switch that correspond to the various storage addresses in combination with the desired download mode.”
The above seems a reasonable characterisation of what the skilled person would understand and I thus take the problems relating to the “user friendliness” of DIP switches to form part of the common general knowledge.
The Common General Knowledge
In Minnesota Mining at [115], Aickin J. stated:
“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.”
I note that the submissions describe dial switches as being “universally known” and I understand the associated discussion of the relative merits of DIP switches to provide a similar assertion. That both switch types were “universally known” in the electronic and computing arts generally is supported by the documents on file, especially D2-D4. These documents do not place any special emphasis on either the use or function of either switch type so to suggest they form anything other than part of the stock in trade of those with a working knowledge of electronics.
Beyond being well known in electronics generally, however, a key finding of the Examiner in the fifth examination report was that documents D3 and D4, “provide exemplary evidence of the well-known nature of dial switches or jumpers, and in particular their use for file selection, in the art of EPROM programming”. As observed by the Applicant in their submissions, however, neither of these documents relate to the programming of EPROMs per se. Each instead discloses computing systems having rotary dials which allow the user to toggle between different ROMs. While I therefore agree with the applicant that neither D3 nor D4 provide evidence of rotary dials being well-known in the art of programming key devices specifically, they do suggest that rotary dials were well-known for hardware-level file selection in computing devices, which is hardly surprising given their ubiquity in electronics and computing as discussed above. I further disagree with the applicant’s submission that neither of these documents form relevant prior art. Even if I were to consider that the scope of the relevant field of technology was limited to only programming keys per se, both D3 and D4 belong to such a closely related field that the background knowledge of the skilled addressee in relation to the use of working of switches can be expected to largely overlap. I am accordingly satisfied that the person skilled in the art would understand the operation and relative merits of both DIP and rotary switches where used to facilitate user selection of computer files or software in general.
Disclosure of D2
Prior art document D2 discloses a device for modifying EEPROM data in devices such as washing machines. By way of background, D2 explains that connecting a personal computer to every device to be modified can be inconvenient. The solution provided is a portable, battery powered device onto which the relevant EEPROM data is first downloaded from a personal computer before being later uploaded to the EEPROM of another device. As the device of D2 stores data for the purposes of “programming” EEPROMs, I understand it to fall within the scope of a “programming key”.
The construction of D2, which is a Chinese language document, has caused some difficulties. In the report of 19 January 2021, the Examiner equated the “dial switch” of the current claims with item 104 of D2, as the available machine translation rendered this item alternatively as either a “dial selection switch” or “DIP selection switch”. Later submissions persuaded the Examiner that this construction was incorrect. The current submissions helpfully contain a professional translation of paragraphs 25, 26, 34, 35 and 36 of D2. All references to item 104 in this translation are rendered, ‘DIP switch’ and it thus seems that the term ‘dial’ was a mistranslation. While I am aware of rotary DIP switches, the specific reference to “SW DIP-8” in paragraph 34 and the depiction of item 104 in Fig. 5, make clear to me that the embodiments of D2 involve linear and not rotary DIP switches.
On a related point, I note that the priority document for the current specification is also a Chinese language document. Chinese patent CN105843633B which draws its priority and presumably also its language from this document, refers to the feature of the “dial switch” using the same characters as were mistranslated in D2 (see, for example, claim 1, paragraph [0027] of the corresponding Chinese patent). It thus seems likely that the use of the phrase “dial switch” in the current specification is the result of the same mistranslation that confused the construction of D2.
Any question of a mistranslation cannot, however, affect my construction of the Australian specification, which is to be read, as it was filed, in light of the common general knowledge alone. Similarly, any question of priority that may arise from a mistranslation of the priority document is currently moot as none of the available prior art was published after the currently claimed priority date. Further searching may, however, enliven this question and necessitate a fuller consideration of the proper priority date of the current application.
Consideration
As there appears to be no contention on the point, and I am satisfied that it is the case, I will begin my analysis from the understanding that the claimed invention differs from D2 in limitations (v) and (vi) only. Both the most recent examination report and the current submissions have further dealt with limitation (vi) before (v) and I will continue this approach.
Limitation (vi) of claim 1 defines the use of a “dial switch” to select files. This differs from D2 where a linear DIP switch is used. As I concluded at paragraph 43 et seq, the person skilled in the art would have been aware of both switch types and the poor “user friendliness” of DIP switches. Despite identifying “dial switches” as offering a known relative advantage in being “universally known to be easy to use” (final paragraph of page 5 of the submissions), the applicant submits that it would not be obvious to modify the device of D2 to use this switch type as, “(a) dial switch would be unable to indicate a selection of download mode and storage address… replac(ing) the DIP switch with a dial switch…would have rendered the device of D2 inoperable as per its designed functions”. I respectfully disagree with this reasoning as “dial switches” represent an equivalent circuit element to DIP switches. Further, just as a dial switch may operate to indicate the selection of particular parameter value, they may also operate to indicate the selection of a particular combination of parameter values. In the current example where two different download modes were to be provided, each address would simply appear at two different places on the dial, one for each download mode.
The person skilled in the art would further readily understand that the functionality of either or both download modes is not essential to the working of the device of D2 as a programming key. While the functionality to switch between two different download modes “(i.e. whether the data is being programmed from a PC or USB Disk)” holds utility, it also adds complexity and cost. It would be obvious to the person skilled in the art that either or both download modes could be deleted from D2 while still solving the stated problem of providing multiple files to a host device. Such a modification would be a matter of routine and remove the alleged barrier to a dial switch.
Finally, as a person with an interest in electronics for computing, it seems reasonable to conclude that the skilled addressee would be aware of the functioning and merits of numerous switch and button types. In the absence of any specific barrier or unexpected advantage, the selection of a particular arrangement from among these known options will be no more than routine. By way of example, the applicant observes that “any one of (the DIP switches of the device of D2) could be used to indicate download mode while the remaining binary/on-off switches could indicate the storage address”. Certainly, it is logical to assign distinct functions to different switches and, on balance, something the person skilled in the art can be expected to do as a matter of routine. By a similar logic, it must also be obvious to modify the device of D2 to substitute those DIP switches used to select storage address with a dial switch while retaining a singular DIP switch to select the download mode. Such an arrangement is a natural development of the working suggested by the applicant and would allow for the known benefits of the dial switch, which have been outlined by the applicant, to be realised in the device of D2.
For the reasons discussed above, I thus consider that it would be obvious to the person skilled in the art to modify D2 such that file selection was performed using a rotary dial/dial switch.
Limitation (v) defines that the files stored on the programming key are numbered 1-N. As discussed in relation to the claim construction, “numbered” here seems to be distinct from the name or storage address of the file and I construe the term to merely define the assignment of a unique numerical identifier to each file stored on the programming key. As stated by the translation of paragraph [0034] of D2, however, the starting address of files is selected by “reading the 0, 1 state of the DIP switch”. As the combination of the 0, 1 state of each slide in a DIP switch simply defines a number in the range of 0 to 2n-1 (where n is the number of slides), the claimed invention differs only in the starting integer for “numbering”. Given that sets are often begun with a “1” in favour of a “0” to aid in ease of understanding and use, the adoption of a 1 to N numbering scheme in place of a 0 to 2n-1 would seem to be an obvious choice in the context of adopting a dial switch. Indeed the difference is little more than the numbering scheme utilised, than in anything material in a technical sense.
For the above reasons I do not consider the invention of independent claim 1 to be inventive over the disclosure of D2. The applicant has not made any submissions in relation to the features defined by appended claims 2-9 (as reproduced in Appendix A) and it is furthermore not apparent to me that any of these features would provide for an inventive step in light of D2. As communicated in the third examination report, D2 discloses the features added by claims 7 and 8 (See Figure 1, items 101 and 102 include an I2C and USB interface respectively). I further do not consider the features added by claims 2 and 9 to be inventive in light of the background provided by D2 which explains that many types of electronic hardware need to be configured and updated. The features added by claims 3-6 define no more than the normal working of digital storage.
In summary, I am satisfied, on the balance of probabilities, that the invention defined in each of claims 1-9 is obvious in light of document D2.
Additional prior art of relevance
In the process of familiarising myself with the art, I found the following document which appears to be highly relevant:
D5: 8-way Handheld PIC Programmer Starter Kit for PIC Microcontrollers [retrieved from internet on 15 September 2021]
<URL: published on 12 July 2014 as per Wayback Machine
D5 discloses a programming key (title), wherein it is used to carry out hardware upgradation and configuration updating of a controlling host device (see ‘8-way PIC Handheld Programmer Features; Program and Verify Flash or EEPROM or both’), the programming key comprising:
a first interface (‘Starter Kit contents - Ribbon cables with 10-way connector’ and ‘6-way Flying lead adapter’) for connecting the controlling host device (‘PIC Microcontroller’);
a communication protocol module at least for processing communication data of the first interface (‘see 8-way PIC Handheld Programmer Features - Program and Verify Flash or EEPROM or both’)
a multi-file storage module for storing and managing multiple files (see ‘8-way PIC Handheld Programmer Features; Holds up to 8 programs indefinitely’); and
a file selection module enabling a file to be chosen from the multi-file storage module and enabling the controlling host device to access the chosen file via the first interface (‘8-way PIC Handheld Programmer Features - Select target program’);
wherein the file selection module chooses a file's number by a dial switch (‘8-way PIC Handheld Programmer Features - Select target program using 8-way rotary switch’) such that the file accessed by the controlling host device via the first interface can be chosen.
The claimed invention differs from the new citation in that files in the multi-file storage module are numbered from 1 to N, wherein the N is an integral number larger than 1. Such numerical labelling represents, however, no more than an obvious and logical choice for labelling files, especially relative to the use of hexadecimal memory addresses or similar.
Claim 1 therefore appears to lack an inventive step in light of D5, although I note that this document has not previously been put to the Applicant. Consequently, I am not making any formal conclusions or findings in connection with D5.
Conclusion
I have found that proposed claims 1-9 lack an inventive step in light of D2. Given the brevity of the specification, it seems unlikely that this objection may be overcome, but I consider it appropriate to provide an opportunity for the Applicant to overcome the defects identified here.
I therefore consider it appropriate that further examination of the application ensue. This will allow the applicant to provide further amendments overcoming the findings in this decision and to respond to any further objections that may be raised, for example in connection with D5. Following Reg 13.4(1)(g) and (3) I extend the period to gain acceptance by six months from the date of this decision so that an examination report can issue and the applicant has an opportunity to respond.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
Appendix A – Claims as proposed to be amended 2 June 2021
1. A programming key, wherein it is used to carry out hardware upgradation and configuration updating of a controlling host device, the programming key comprises: a first interface for connecting the controlling host device;
a communication protocol module at least for processing communication data of the
first interface;
a multi-file storage module for storing and managing multiple files; and
a file selection module enabling a file to be chosen from the multi-file storage module and enabling the controlling host device to access the chosen file via the first interface;wherein files in the multi-file storage module are numbered from 1 to N,
wherein the N is an integral number larger than 1, and the file selection module chooses a file's number by a dial switch such that the file accessed by the controlling host device via the first interface can be chosen.
2. The programming key as claimed in claim 1, wherein the multiple files comprise hardware and/or configuration files in various versions.
3. The programming key as claimed in claim 1, wherein the multi-file storage module comprises a file input-output unit, a file allocation table unit and a file data block unit.
4. The programming key as claimed in claim 3, wherein the file input-output unit comprises one or more functions of reading a file, writing a file, deleting a file and inquiring a file.
5. The programming key as claimed in claim 3, wherein the file allocation table unit is used to record location information of a file, the file's location information contains one or more of the group comprised of the file name, the file size, the file attribution, the starting position of the data block occupied by the file, the size of the data block occupied by the file and the file number.
6. The programming key as claimed in claim 3, wherein the file data block unit is used to divide a physical memory into a plurality of blocks, and each block contains an occupancy mark which can be used to indicate whether the data has been occupied.
7. The programming key as claimed in claim 1, wherein the programming key comprises a second interface for connecting a computer host device.
8. The programming key as claimed in claim 7, wherein the first interface is a programming interface matable with the controlling host device, and the second interface is a USB interface.
9. An alarm host device for a monitoring system, wherein the alarm host device is equipped with a programming key as claimed in any one of the preceding claims so as to carry out hardware upgradation and/or configuration updating
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