RONALD HOWARD THOMAS and ALLAN GARNHAM
[1994] APO 19
•14 March 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 42052/89 in the name of RONALD HOWARD THOMAS and ALLAN GARNHAM
Title: Symbol Definition Apparatus
Action: Examiner's objections; request for the Commissioner to exercise a discretionary power.
Decision: Issued .
Proposed amended claims are not for a patentable invention. Refusal to accept the patent request and specification.
Court findings on a related petty patent considered and followed.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 42052/89 by RONALD HOWARD THOMAS and ALLAN GARNHAM and a request for the Commissioner to exercise a discretionary power concerning Examiner's objections.
background
Patent application 42052/89 is a national phase application derived from PCT application PCT/AU89/00379 filed on 5 September 1989. The application claims priority from Australian provisional specification PJ 0247 of 5 September 1988. The application is proceeding in the names of RONALD HOWARD THOMAS and ALLAN GARNHAM (hereinafter "the applicants").
This application was the subject of a decision by a delegate of the Commissioner dated 13 January 1994 wherein the delegate granted several extensions of time of the period within which this application could be accepted. The effect of those extensions means that the final date for acceptance is now Monday 14 March 1994. A party involved in the earlier decision (JEIJING PTY LTD) has applied to the Administrative Appeals Tribunal for a review of that decision.
Subsequent to the earlier decision, on 14 January 1994, an examiner issued a third adverse report on the application. That report was based on the applicants' specification as proposed to be amended including amendments filed on 9 July 1993 by facsimile, originals of which were received on 13 July 1993. The applicants filed further statements of proposed amendments on 25 January 1994 and 16 February 1994. An examiner's fifth adverse report issued on 22 February 1994.
On 2 March 1994 the applicants requested that "a decision as to the patentability of application 42052/89 be made in writing, on the record", and waived their right to a hearing. On making the request the applicants asked that the proposed amendments made after 9 July 1993 be cancelled. Thus this decision concerns the specification as proposed to be amended by those amendments filed up to 9 July 1993.
Whilst an application for review of the delegate's decision of 13 January 1994 has been made, that alone does not affect the operation of the decision or prevent the taking of action to implement the decision (see Administrative Appeals Tribunal Act 1975, s41). Thus, in my view, it was appropriate to proceed to examine the application as the delegate indicated in his decision and to further process the application in the usual way in the remaining time for acceptance. Also I consider that the application for review does not preclude me making a decision given the applicants' request.
THE PROPOSED AMENDED SPECIFICATION
The proposed amended specification as of 9 July 1993 includes the following:
a)description pages numbered 1 to 13 filed on 11 June 1993 which replace all earlier description pages;
b)claim pages 14 to 19 filed on 11 June 1993 which contain claims numbered 1 to 27 which replace all earlier claims;
c)drawing sheets 1/9 to 9/9 as originally filed which contain figures 1 to 7 including 3A and 4A;
d)two additional drawing sheets including figures 1(a) and 1(b) filed on 11 June 1993; and
e)claims 17 and 18 amended on 9 July 1993 whereby both now append to claim 16 rather than to claim 13.
The invention relates to an apparatus for assembling text and has particular but not exclusive application to the assembly of text in Chinese, Japanese or Korean. Written Chinese characters are all formed from unique combinations of basic elements or "strokes". A stroke is a mark comprising a dot or unbroken line formed between the point when a writing implement contacts the paper and the point when the writing implement is lifted from the paper (traditionally being a single brushstroke). Most strokes used in Chinese writing can be identified to fall within eight character stroke-type categories.
The present specification particularly describes a way whereby such basic elements or strokes either singularly or in an ordered combination are used as input to data processing apparatus, and whereby the apparatus then retrieves from memory one or more graphic representations of Chinese characters for display on a display facility. The operator can select a particular representation displayed in order to assembly text via the apparatus.
Strokes from several categories can form the framework of many characters. The specification indicates that each character has a particular stroke count number associated with it, most having between 6 to 21 strokes. The complexity of the strokes needed for characters has meant that the adoption of mechanised writing for Chinese has been slow. The specification also refers to prior art techniques to effect word processing using Chinese characters and indicates problems and disadvantages arising in those attempts.
The specification says that the present invention aims to alleviate the disadvantages previously mentioned and "to provide an apparatus for assembling text which will be reliable and efficient in use, and using only the natural processes of handwriting Chinese characters."
As proposed to be amended the specification contains 27 claims of which claims 1, 16 and 23 are independent. Claims 1 to 15 are directed to apparatus. Claim 1 is directed to computer processing apparatus for assembling text in ideographic language characters. Claim 16 is directed to a method of assembling text in ideographic language characters by a computer processing apparatus. Essentially it relates to a method of operating apparatus as defined in claim 1. Claims 17 to 22 append to claim 16 apart from claim 19 which is clearly wrongly appended to claim 15. Claim 23 is a further method claim directed to a method of entering kanji and Japanese syllabic characters (kana) into an electronic processing apparatus. Claims 24 to 27 append to claim 23.
COURT JUDGEMENT ON RELATED PETTY PATENT 616154
Of relevance to considerations of the present patent application is a judgement of the Federal Court of Australia delivered on 24 December 1993 concerning Australian petty patent 616154. (See Ccom Pty Ltd and Ronald Howard Thomas v. Jiejing Pty Ltd & others (unreported) per Cooper J.) Petty patent 616154 was filed on 19 March 1991 as a divisional application of application 42052/89 and was allocated the application number 73544/91. Thus the present application was the parent for the petty patent application. The petty patent was sealed on 26 August 1991. The court action involved a claim for infringement of the petty patent and a cross-claim for revocation. The court declared the petty patent invalid and ordered that petty patent 616154 be wholly revoked on the ground that the invention is not a patentable invention. I understand that judgement has been appealed.
The court judgement states that the claim of petty patent 616154 involves seven integers and reports the claim in the following form whereby those integers are apparent:
"1Computer processing apparatus for assembling text in Chinese characters said computer processing apparatus including
a memory including
2.1character stroke data storage means which stores data relevant to
2.1.1Chinese character stroke-type categories
2.1.2Chinese characters and
2.1.3the order in which character strokes of respective Chinese characters are written,
and2.2complementary graphic data storage means from which data relevant to the graphic character representations of each said Chinese character may be retrieved
display means for displaying Chinese language characters retrieved from said graphic data storage means
a keyboard having
4.1a plurality of input entry keys including character stroke-type entry keys designated by indicating means indicative of respective ones of said Chinese character stroke-type categories,
and4.2selection means for selecting one of a plurality of characters displayed by said display means
and wherein said character stroke data storage means are searched by entering through said input entry keys search criteria including
5.1the entered Chinese character stroke-type categories and
5.2the order in which the character stroke-type categories are entered through said input entry keys
whereby upon entry of said search criteria the graphic representation of the or each Chinese character which meet said search criteria are
6.1retrieved from the corresponding graphic data storage means and
6.2displayed by said display means, and
said selection means being operable to select one of said retrieved graphic representations of Chinese characters whereby text in Chinese language characters may be assembled."
The court considered whether the petty patent claimed a patentable invention under the Patents Act 1990 (see the judgement at pages 7 to 29). A detailed review of case law on the question is included in the judgement and, based on that review of the case law, the judge identifies five propositions concerning the patentability of computer-related patent applications (see pages 24 and 25).
In reaching judgement, the court had the benefit of evidence from expert linguists. Justice Cooper says (at page 26):
"There is nothing claimed as new or unconventional in the input, search or display programs. In essence what is sought to be done is to use the computer to store the result of the linguistic task undertaken outside the computer, which mental process lies in the fine arts and not the useful arts, and to use the computer operating in a conventional way with conventional programs to reproduce the mental process of identifying the desired Chinese character by applying search criteria which represented the linguistic features of the character as determined by the linguist and stored in the memory of the computer."
On page 28 Justice Cooper concludes thus:
"...... Taking the claim as a whole that which is sought to be made the subject matter of a monopoly is the use of stroke type categories and stroke order as defined in the specification to organise and process data relevant to Chinese characters in a database and to retrieve and display Chinese characters on a computer screen. The formulation of such criteria and their use as rules to organise and process data stored in a database in a conventional computer are the product of human intellectual activity lying in the fine arts and not the useful arts. The claim discloses no method of manufacture within the meaning of section 6 of the Statute of Monopolies and therefore discloses no patentable invention."
The court also considered whether the claim of the petty patent was fairly based on matter disclosed in the provisional specification PJ 0247. It concluded it was not so fairly based, and also concluded that the claim in suit, which had been amended after filing along with the specification, was not fairly based on any other relevant application or specification. Accordingly the court determined that the priority date of the claim was
22 July 1991, the date proposed amendments were filed. On another issue, the court made no adverse finding as to the novelty of the claimed invention.
EXAMINER'S OBJECTIONS
The examiner's objections of relevance to the applicants' request for a decision are contained in the report dated 14 January 1994. The examiner reported that the claims did not define a patentable invention, basing the objection on the court findings for petty patent 616154. A further objection indicated that the claims were not entitled to a priority date being the date of filing of the provisional specification PJ 0247 and as a consequence the claims lacked novelty, the objection making a cross-reference to the petty patent judgement for support.
DECISION
Whether a patentable invention is claimed
A comparison of proposed claim 1 of the present application with the claim of petty patent 616154 reveals some differences but essentially the same basic integers are present. When those differences are closely analysed, in my view they do not suggest that the present invention in its overall nature is significantly different from that of the petty patent. The invention possesses the same characteristics as that of the petty patent, and the comments of Cooper J with regard to the overall nature of the invention of the petty patent in my view necessarily also apply to the invention of present claim 1.
The Commissioner of Patents is bound to apply patent law in accordance with the law and precedent as established by the courts. In deciding on the patentability issue in this case I cannot disregard the findings of Justice Cooper in his judgement concerning petty patent 616154. Accordingly, for the same reasons as those expressed by the court concerning petty patent 616154, I find that the invention defined by claim 1 is not a patentable invention since it discloses no manner of manufacture within the meaning of section 6 of the Statute of Monopolies. The same conclusion applies to claims 2 to 15 which directly or indirectly append to claim 1.
Claim 16 is for a method of assembling text and, as I have previously mentioned, essentially relates to a method of operating apparatus as defined in claim 1. In my view claims 16 to 22 are not for a patentable invention for the same reasons as those relating to claim 1.
The method of claim 23, which is directed to "a method of entering kanji and Japanese syllabic characters (kana) into an electronic processing apparatus", bears little direct resemblance to the invention of method claim 16 which is concerned with "assembling text". Its meaning is made somewhat unclear by a lack of clear definition in the operating step at the end of the claim. To me claim 23 relates to a different invention from that of the earlier claims and hence causes the specification not to comply with section 40. However, putting the latter point to one side, it seems to me that the method of claim 23 essentially entails the operation of a computer in a conventional way using conventional programs to thereby identify from a database characters according to a search character identification criteria stored in the memory of the computer. If that is the case, there is thus similarity between the method claimed and elements of the method of claim 16 and similar patentability issues arise. It necessarily follows, in my view, that claims 23 to 27 are not for a patentable invention for the same reasons as given in relation to claims 1 to 22.
Novelty
In its judgement on petty patent 616154 the court decided that the petty patent claim was not entitled to a priority date being the date of filing of the provisional specification PJ 0247. In view of the similarity between the present claims and that of petty patent 616154 before the court, I consider that the present claims, apart from claim 2, are not entitled to a priority date of 5 September 1988 for the same reasons as given by the court for the petty patent. At best the priority date for most claims is 5 September 1989, the date of filing the complete specification.
Petty patent 583008 issued on 13 June 1989. It derived from an application filed on 10 February 1989, being a divisional application of provisional specification PJ 0247. The specification of petty patent 583008 became open to public inspection on 6 July 1989, ie. before the priority date of most of the proposed claims for the present application. In my view the disclosure of petty patent 583008 is such as to render not novel the invention defined by the proposed amended claims apart from claim 2.
Summary
I have decided that the proposed amended claims do not define a patentable invention since they are not for a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. I have also decided that the claims lack novelty, apart from claim 2. Thus there are lawful grounds of objection to the patent request and specification which preclude acceptance.
Given the nature of the specification as originally filed and its disclosure, and bearing in mind my earlier findings, I do not see any novel patentable subject matter within that disclosure. In accordance with section 49(2) of the Act I refuse to accept the patent request and specification.
Trevor Bruhn
Acting Assistant Commissioner of Patents
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