RONALD HOWARD THOMAS and HELMUT STOHR

[1991] APO 23

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent Application No. 73544/91 by RONALD HOWARD THOMAS and HELMUT STOHR.  Examiner's objections.

Background

Petty patent application no. 73544/91 for an invention entitled "Symbol Definition Apparatus" was lodged on 19 March 1991 as a Section 51 (1952 Act) further application of application 42052/89.  The parent application is a national phase application derived from PCT application PCT/AU/89/00379 filed on 5 September 1989 which claims priority from Australian provisional PJ 0247 of 5 September 1988.
         The examiner issued a first notification on 1 May 1991 which, apart from noting that a declaration supporting the application had not yet been lodged, contained the sole objection that the claim was prior published.  On 20 May 1991 the applicant requested that the matter be set down for hearing.
          This request so early in the prosecution of the application has, I think, been inspired by circumstances concerning related applications.  An earlier petty patent further application based on PJ 0247 proceeded to grant, but a subsequent extension of term was refused, after a hearing, because the hearing officer held that the claim had been anticipated by two British specifications.  The same British specifications were cited against an identical claim in the PCT application by this office in its role as International Authority.  In a covering letter accompanying the current application the applicant acknowledged the earlier hearing

decision and the British specifications and advised that the current specification had been reworded to more clearly describe and claim the invention.  From the examiner's first notification it is clear that he was not satisfied that these objectives had been achieved: indeed the claim is fairly similar to the claim which was the subject of the earlier hearing.  The applicants' early request for a hearing is, in the circumstances, a reasonable attempt to expedite matters.
          The matter was heard in Canberra on 13 June 1991: the applicants were represented by Messrs John Pizzey and David Rainey from Thomson Pizzey, and by Mr Allan Garnham.

Specification

Apart from the claim, and the inclusion of a definition of the word "stroke" at page 2 lines 13 to 16, the specification is substantially the same as that of earlier specification 583008 which was the subject of the earlier hearing.  I agree with that hearing officer's summary of the description as contained in his decision dated 6 February 1991 and do not think it necessary to do any more than to reproduce it here in its entirety.

"The specification indicates that the invention relates to electronic storage and retrieval of symbolic information such as Chinese language characters.  It states that Chinese characters are formed from unique combinations of strokes, each of which may be considered to fall into one of eight fundamental stroke-type categories.  Six to twenty one strokes are used to form most characters.  The specification indicates that mechanised writing and electronic word processing of the Chinese language has been slow because of the large numbers of characters.  The prior art has involved the use of large keyboards, phonetic systems or digitizing pads all of which require considerable skill to use effectively.

It is a known feature of the Chinese language that in forming a character the strokes are added in a particular order which is defined for that character, although the actual stroke order is not apparent in the completed character.  The specification indicates that the invention makes use of this feature, by using stroke order as a parameter in defining and retrieving the Chinese characters.  A simplified keyboard is used which includes, inter alia, a set of eight keys, one for each of the fundamental stroke-type categories.  The strokes are keyed in order to retrieve characters based on the stroke types and stroke order.  The specification states that "the electronic information processing apparatus may take any form"; examples described include an electronic dictionary and an electronic text assembling apparatus.  Conventional computer hardware is used in the apparatus."

The claim defining the invention is:

Computer processing apparatus for assembling text in Chinese language characters made up of strokes said computer processing apparatus including:

a memory comprising:

(a)stroke data storage elements which store data relevant to the character stroke content and character stroke order of respective Chinese characters, and

(b)complementary graphic data storage elements which store data relevant to the graphic representation of each said Chinese character;

a keyboard having a plurality of Chinese character stroke entry keys corresponding to  respective ones of fundamental Chinese character strokes;

a searching program which is initiated through entering search criteria based on the fundamental Chinese character strokes and character stroke order for the desired Chinese character through said keyboard, said searching program being adapted for searching said stroke data storage elements according to said search criteria and for retrieving from the corresponding graphic data storage elements the or each Chinese character representation which meet said search criteria, and

a visual display unit for displaying and compiling selected ones of the retrieved characters and assembling text in Chinese language characters.

The inclusion of the underlined words represents the only difference from the claim which was the subject of the earlier decision.

Submissions

This hearing was somewhat unusual in that the applicants through their representatives have neither seriously suggested that the specification with the claim in its present form should be allowed (indeed with the extra qualification in the claim doing no more than stating what was already apparently implicit they could hardly do so without challenging the earlier finding): nor have they proposed any amendments.  Instead, via written submissions lodged just prior to the hearing, and verbal submissions made at the hearing, they attempted to explain how their invention differs from, and is novel over, the prior art systems as disclosed in the British specifications 2066534 and 2118749 cited by the examiner.  A brief but fair summary of these submissions is as follows:

Citations

.in the systems disclosed in the British specifications the "strokes"are broken down into five fundamental elements (dot, horizontal, vertical, positive and negative sloping diagonals);

.    this concept is foreign to the Chinese mind;

.applying this system is prone to error in that, for example a simple left to right stroke could, depending on the style of the original writer of the character, and/or the judgement of the operator or specifier, be specified as either a horizontal or diagonal.  A curved stroke would , on the teaching of the earlier British specification, have to be interpreted as some combination      of diagonal and horizontal and/or vertical: or on the teaching of the later specification, as a single diagonal or horizontal or vertical, whichever in the judgement of the operator/specifier gave the best approximation.

.because the element sequence is specified without reference to the relative position of the element within the character, the same sequence can represent vastly different characters.

.in general it requires a relatively long sequence of            elements to specify and hence call up the appropriate character.

Applicants' Invention

.the applicants' system is based on "Chinese strokes" - all such strokes can be placed into one of eight family types, based on the initial direction and any subsequent change in the direction of construction of the stroke, as depicted in the specification.

.    the Chinese mind "thinks" in terms of such strokes.

.a Chinese person would have no difficulty recognising what stroke family a particular stroke belonged to: for example a stroke going from left to right is a stroke going from left to right regardless of angle.

. in general a character is fully specified for call-up purposes by a relatively short sequence of stroke family types.

Decision

At the hearing I indicated three main areas of concern, the first of these being the need to demonstrate that the invention differed from the cited prior art to a novelty-conferring degree.  Subject to the reservations expressed below, I think that the explanation of the significance of the invention, as explained at the hearing, does provide a basis for this to be achieved.  It has not been suggested that the present claim is satisfactory, but it may be possible to provide an amended claim which would suffice.
     The second concern is that any such amendment to the specification has to satisfy the test of not resulting in the claiming of matter not in substance disclosed in the specification as lodged.  I note that the specification as lodged does contain a definition of "stroke", and refer to each stroke being considered to fall into one of eight "stroke-type" categories.  Therefore there may be enough foundation in the specification as lodged to support an amplified description and an appropriate claim.
     My third concern is that the claim in its present form is an apparatus claim for standard items of computer hardware set up in a particular way.  This "particular way" or programme appears to be very similar to that of the cited prior art.  Both involve the storage of Chinese characters in a memory, with similar programmes for the identification and retrieval of the appropriate character in response to an operator dissecting the required character into defined constituent parts which are then specified as a coded sequence in the correct order via a keyboard.  While I am prepared to believe that the applicants' choice of the defined constituent parts, properly described and claimed, may constitute novel subject matter over the cited prior art, when it comes to the programmes I am more struck by their similarities than by the differences in detail of choice of constituent parts.  Without a proposed amended claim to consider I cannot be more specific at this stage.  I merely wish to forewarn the applicant of a potential issue depending on the form of amended claim  which may be proposed.

As is clear from the above, I do not consider that the specification before me is in acceptable form.  However I believe that it may be possible to amend the specification by amplifying the description and redrafting the claim.  In addition to the matters described above I note that the applicant has acknowledged the need to tidy up the specification by deleting description relating to the parent but not relevant to the subject of this specification.Also the applicants' entitlement to apply has not yet been formally established.  In the first official notification dated 1 May 1991 the applicant was allowed six months from that date to file a statement of proposed amendments.  I afford the applicants the balance of that period to lodge a statement of proposed amendments to my satisfaction.

(G.R. BROWN)
  Supervising Examiner of Patents