Ronald Howard Thomas and Helmut Stohr v Eric Russell Chappell and Jeffrey John Yates

[1991] APO 6

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Petty Patent No 583008 granted to RONALD HOWARD THOMAS and HELMUT STOHR, application for extension of term, and objection thereto by ERIC RUSSELL CHAPPELL and JEFFREY JOHN YATES

Background

Application No 29871/89 was lodged on 10 February 1989 by Messrs Thomas and Stohr for a petty patent for an invention entitled "Symbol Definition Apparatus". Petty Patent No 583008 was sealed on the application on 13 June 1989; on 11 May 1990 the patentees applied for an extension of term and on 15 December 1989 Dr Chappell and Mr Yates lodged notice under sub-section 68B(3) informing the Commissioner of facts which allegedly establish that the patent should be revoked on the grounds set out in paragraphs 100(i)(a) to (g) of the Act. Documentary evidence required by regulation 19C was lodged with this notice lodged on 15 December 1989. The patentees lodged evidence-in-answer to the evidence accompanying the s.68B(3) notice and on 6 June 1990 the objectors lodged a second notice under sub-section 68B(3); this was also accompanied by documentary evidence.

The matter was heard in Brisbane on 7 September 1990; the patentees were represented by Messrs Adrian McCullagh, David Rainey and John Pizzey and the objectors by Messrs Simon Couper and John Gardner. Also at the hearing were the said Messrs Ronald Thomas and Jeffrey Yates, Dr Eric Chappell, and Messrs Alan Garnam and Neil McPherson.

The second lot of evidence lodged by the objectors was lodged outside the eleven month period prescribed by sub- section 68B(3), so it cannot be considered as lodged pursuant to that sub-section. The evidence includes reference to an International Search Report on International Application No. PCT/AU 89/00379, an application by Messrs Thomas and Stohr for an invention similar to that of petty patent No 583008.

At the hearing, Mr Couper wished to make detailed submissions in relation to specifications cited in the International Search Report. The patentees objected to this and I upheld their objection because Dr Chappell and Mr Yates were, pursuant to sub-section 68B(8), only entitled to be heard on the evidence properly lodged under sub-section 68B(3). However, this is not to say that I should ignore the second lot of evidence, since it is clear from sub-sections 68B(5) to (7) that I should consider any material before me; but, it is appropriate only to hear the patentees on such material. In this case the patentees were not prepared to make submissions on the objectors second lot of evidence because the evidence did not specifically address any particular specifications cited in the International Search Report. I decided that under these circumstances the objectors should indicate which specifications in the International Search Report were relevant to the petty patent and that the patentees could have a period of fourteen days to make written submissions in relation to these specifications.

Thus, Mr Couper identified three relevant British specifications, and on 21 September 1990 the patentees lodged written submissions. Later, the patentees indicated that they wished to be heard on the matter and a hearing was then held in Canberra on 11 December 1990; the patentees were represented by Mr Pizzey assisted by Mr Rainey; Mr Thomas was also present at the hearing.

The specification

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, 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."

Evidence, submissions and inter-partes hearing

The first lot of evidence lodged by the objectors comprises declarations by Mr Yates and Dr Chappell, along with nine exhibits attached to Mr Chappell's declaration. This evidence included the following allegations:

1. The searching program is the significant part of the invention, but details of the program are not described in the specification.

2. Mr Thomas only had the initial concept of the invention whereas the searching program is the result of work done by Mr Yates' software company.

3. The eight fundamental strokes described in the petty patent are well-known in the Chinese language.

4. Stroke order is well-known as a fundamental basis of character writing in Chinese.

5. The idea of using a progressive search strategy, as one does with an alphabet, is well-known.

6. Computer based systems which use stroke order in a progressive search strategy to retrieve stored characters are known in Australia.

With regard to this evidence I note that Dr Chappell, from the Brisbane College of Advanced Education, is a highly qualified expert in Chinese, so I consider his comments to be of high probative value. However, I also note that some of his evidence relating to known computer programs is rather vague with regard to dates of publication in Australia.

The patentee's evidence-in-answer comprises declarations by five people involved with the invention, including a declaration by Mr Thomas with 16 exhibits attached. Some of the points made in this evidence are as follows:

1. The patentees make no claim to the well known characteristics of the Chinese language, referred to above, but the invention is based on Mr Thomas's discovery that stroke order can be used as a coding parameter. Paragraph 32 of his declaration states:

"... the essential aspect of my invention is the realization that character stroke order can be used to provide an inventive and unique code whereby Chinese characters can be expeditiously and easily extracted from a memory."

2. The searching program is not an important feature of the invention. In paragraph 50 of his declaration Mr Thomas states:

"... the assertion that "the invention relies primarily on the searching program" is manifestly incorrect. Although the searching program is a feature of the invention claimed in petty patent 583008, the inventive concept distinguishing my invention from all that has gone before is the recognition that the stroke order can be used as a code to facilitate retrieval of and access to Chinese characters stored in a computer."

Mr Thomas goes on the describe how the patentees decided to develop their own software for the invention alter negotiations with Mr Yates and Dr Chappell had broken down. Two "relatively inexperienced graduates" were employed and Mr Thomas declares that "they were able to write suitable software without difficulty" and "that the nature of the work performed by them was of a routine non- inventive nature".

3. The objectors' allegations of obtaining are disputed by the patentees. One exhibit in Mr Thomas's declaration is a copy of a letter signed by Mr Yates in which he states: "Innovation was 100% Uni-X. Initial patent the property of Ron and Helmut". Uni-X is the patentee's computer systems company. In paragraph 27 of his declaration Mr Thomas declares that he and Mr Stohr "had substantial involvement in the development of the concept after the priority date of the claim". Seven exhibits are then referred to, to support this claim.

At the inter partes hearing Mr Couper made the following submissions:

1. The searching program is the "heart of the invention". This means however that the invention as claimed is not patentable, since it is a "mere algorithm to produce a result". Referring to the Patent Office Guidelines for Considering the Patentability of Computer Program Related Inventions, and applying the Freeman Test referred to therein, it is apparent that the program is unpatentable and that the claim as a whole is to a standard computer when programmed.

2. The invention can be construed as being for a mere concept or idea; statements in Mr Thomas's declaration indicate that the invention was in the idea of stroke order as a coding parameter. A mere idea however is not patentable, and "the claim is to the effect [the patentees] would like to achieve".

3. The invention is not fully described because no details of the program are provided. Details are necessary since the heart of the invention is in the program. One cannot tell whether Mr Yates's original programs or whether Mr Thomas's new programs are used in the invention.

4. The claim is not novel because it is directed to known computer hardware per se; the only "new" feature being the data on the keyboard, which may be the subject of a design rather than a patent.

5. The invention is not novel because it is directed to an apparatus for a mere cataloguing system. The idea of cataloguing categories is known and the idea of cataloguing order is known. Page 2 of the specification indicates that the 'invention could be used in other applications, such as defining mathematical and other symbols as computer inputs". This broad concept could include such things as cataloguing farmyard animals.

Messrs McCullagh and Rainey made the following submissions at the inter partes hearing:

1. The weight of evidence from experts in the art, including a promotional videotape of Dr Chappell commenting on the invention, shows that there is merit in the invention and that it is not obvious.

2. There is invention in the patentees' idea of using stroke order as a coding parameter, since invention may lie in an idea per se, see Hickton's Patent Syndicate v Patents and Machine Improvements Co Ltd 26 RPC 339.

3. The invention is fully described in the petty patent specification and there is no need to include "know how" details of the program therein.

4. The claim is defined in a narrow and specific manner, especially with regard to the memory, and is not merely to a computer when programmed. In applying the Freeman Test it is not appropriate to dissect the claim into parts, and when the claim is considered as a whole it is directed to patentable subject matter even though one integer is inherently unpatentable. Also it cannot be said that the claim does not preempt the algorithm because there is no algorithm per se in the invention; i.e. the concept that "stroke order can be used as a unique code". Finally, with regard to the Office Guidelines, and the review of the British Petroleum case on page 7 thereof, it is of some significance that a method of operating a computer may be a patentable invention.

5. Having regard to other patents granted for inventions similar to the present invention, such as those referred to in the International Search Report on the patentees aforesaid international application, suggests that the subject matter of the present invention is patentable.

Late evidence, submissions and ex parte hearing

The objectors in this case cited three British specifications in the International Search Report on PCT/AU 89/00379. I consider two of those specifications to be particularly relevant to this case, viz:

GB 2 066 534 published 8 July 1981, and

GB 2 118 749 published 2 November 1983,

both by Zwi Barnea and Shui-Yin Lo. I note as a matter of interest that the applicants are residents of Australia.

In the later GB specification it is stated that the invention described therein is for improvements in devices of the type described in the earlier GB specification, and I consider that the two specifications can be read as a single document. See Warner Laboratories Pty Ltd v Chemspray Pty Ltd (1967) AOJP 2513.

The GB specifications relate to specifying and forming characters such as those in the Chinese language. The main features of the invention described in the specifications are summarized as follows:

1. Computer-based apparatus is used; the apparatus includes a central processing unit (CPU), read only memory (ROM) random access memory (RAM), a visual display unit (VDU) and a keyboard.

2. Five basic character elements are used to specify characters and numeric codes 1 to 5 are used to specify each element.

3. The keyboard has inter alia five keys with the basic elements marked thereon thus allowing direct input of numeric code trains.

4. The elements are keyed in the same order as the elements are traditionally ordered in writing.

5. Characters are stored in the ROM, and as the code train is input, a subtraction program recalls a character when a non-ambiguity condition is reached.

The submissions made by the patentees' attorneys in their letter of 21 September 1990 and at the ex-parte hearing are summarized as follows;

1. As a further step from dissecting characters into strokes, the invention disclosed in the GB specifications also dissects strokes into elements. This division is too fine and unfamiliar for users of Chinese and therefore causes confusion.

2. The prior art systems involve entering the whole code sequence before a character is recalled.

3. The order referred to in the GB specifications relates to the order of elements in the strokes but the strokes have to be put in the correct order first.

4. The prior art invention deals in some detail with methods of resolving ambiguities; this is an indication that that invention is difficult to use.

Decision

I will first consider matters brought up at the inter partes hearing, viz: obtaining, obviousness, whether the invention is a mere idea, whether it has been fully described and whether it is patentable according to the office's Guidelines for Considering the Patentability of Computer Program Related Inventions.

On the matter of obtaining, I think that the evidence before me indicating that the patentees were directly involved in the development of the invention is stronger than the evidence indicating the objectors' involvement. Evidence of high probative value is especially required in matters of obtaining; I think the objectors' evidence is insufficient in this regard, so I dismiss this ground of objection.

I do not think that the claim of the petty patent is obvious. The objectors have argued that the features of the claim are matters of common general knowledge, but I think their submissions are directed to the features of the claim in isolation. I have no evidence before me that the combination of features in the claim is well-known in the art and therefore I am satisfied that there is some inventiveness inherent in the claim.

It is clear from the evidence that Messrs Thomas and Stohr's central concept lies in the idea of using stroke order as a coding parameter. Invention may lie in an idea, this was discussed in the Hickton's Patent Syndicate case (supra), and it may be immaterial that no inventive ingenuity is required to put the idea into practice. I think this doctrine is applicable to the present case. The petty patent specification states, on page 7, that "the electronic information processing apparatus may take any desired form"; to me, this is an indication that there is no invention in the practical application of the idea. However, a practical application of the idea has been described and claimed, so I think that the claim is not directed to a "mere" idea or discovery, and is patentable in this respect. Consequently, because the invention is in the idea, I do not think the invention is not fully described in the petty patent specification because details of the search program are not described. This would only be necessary if there was purported to be invention in the application of the idea.

I agree with the patentees attorney's submissions with regard to the patentability of the petty patent claim under the Office's computer-invention guidelines. The claim is not directed to any computer apparatus, but specifically to one with integers characterized according to the features of the claim. I think the claim satisfies the Freeman Test; the searching program per se may be considered unpatentable subject matter, but the claim as a whole is directed to integers of hardware in a computer processing apparatus, which is patentable subject matter. See In re Freeman 197 USPQ 464 and In re Bradley 202 USPQ 480.

I will now deal with the matter of disclosure in the GB specifications.

On the matter of strokes and elements, GB specification 2118749, at column 2 page 1 and column 1 page 2, reads:

"Each character of the Chinese language can be considered to be formed of one or more components each of which may comprise a number of strokes the strokes each being formed of one or more elements. The strokes are basically the brush strokes in the traditional calligraphy. In one particular example, which will be described more fully herein, the elements are a relatively short or small element, hereinafter called a dot and vertical, horizontal or diagonal, in either sense, lines located in any position in a grid. We have found that the use of this small number of elements, consistently ordered, leads to minimal ambiguities, as will be described hereafter and, by allotting one of the elements to each part of each stroke, the operator can rapidly and readily specify the character. The dot element refers to any short stroke which may be a dot, a comma like stroke or serif which does not fit clearly into any of the other categories of elements. other definitions of the elements and different number of such elements are possible. Previously it has been believed that to specify characters in this way without major ambiguity it would be essential to use a very much larger number of strokes or components than the five elements we have selected."

These five elements are shown on five keys of a standard English-size keyboard adapted for Chinese, shown in figure 2 of the GB specification.

In petty patent 583008 figure 1 of the specification shows the eight basic character strokes. Five of these eight could be described as "a dot, and vertical, horizontal or diagonal, in either sense, lines ...", the other three each being a combination of two straight lines.

From the evidence before me in this case, I deduce that there is no standard recognized number of fundamental elemental parts of Chinese characters. For example, see Reading and Writing Chinese by William McNaughton, a well- known text: in the "stroke count - stroke order index" there are four categories of "first strokes" with two versions of each category; thus a set of four or eight possible fundamental elemental parts. However, on the "radical chart" in the same book six "one-stroke radicals" are shown. In the Chinese for Beginners student's book by Chang, Mackerras and Hsiu-ching, it is stated that "there are about thirty basic strokes"; with a stroke being defined as "a single unbroken line drawn from the time you set your pen to paper and move it till the time you lift it off the paper". These texts indicate to me that the number of fundamental elemental parts of Chinese characters may vary between four and about thirty, and that these fundamental elemental parts seem to be generally described as "strokes".

The petty patent specification indicates, on page 2, that characters may be formed from more than eight strokes, but that all the strokes fall into "eight stroke-type categories". These categories are then defined as "eight basic characters strokes" with reference to figure 1.

The GB specifications also recognize that there may be a significant number of strokes in a character; thus the strokes are dissected into five "elements".

In this light I see no significant difference between the "basic character strokes" in the petty patent and the "elements" in the cited prior art. There is no difference of numerical order between the eight basic strokes and the five elements; especially since five of the basic strokes are the same as the elements. If, for example the present invention dealt with a system using say fifty strokes, then this I would consider to be a different numerical order and a significant difference. But such is not the case; I think the basic strokes described in the petty patent are essentially the same type of fundamental elemental parts of Chinese characters as the elements described in the GB specifications. The difference is only of terminology not of substance. Thus, having regard to the patentees attorneys' submission that the dissection of strokes into elements in the GB specifications is too fine a division, I think that such a dissection is of a similar order to the dissection in the petty patent of strokes into the said basic strokes. I do not see this as a feature differentiating the two inventions.

The GB specifications disclose the order of formation of the Chinese characters as a feature of the Barnea and Lo invention. For example, in GB 2 066 534 part of column 1 on page 3 reads:

"In forming Chinese characters, hereinafter for ease simply stated to be characters, the characters are commonly formed by writing or painting the strokes of the character in a particular order. It can also be shown that any character can be considered to be made up of elements of only five types, there being dots and horizontal, vertical, positive diagonal and negative diagonal strokes in specific positions. We have adopted as alphanumeric codes of these elements the digits 1 to 5 respectively and thus by applying the required digit to each element of the character in the traditional order that it is made when forming the character we obtain a code train which represents the formation of a particular character. It will be appreciated that this train can be very short in that it can have as little as one or two digits or, for more complicated characters, can have thirty or more digits."

And in GB 2 118 749 part of column 1 on page 2 reads:

"The ordering of the elements is preferably as the strokes, and specifically the elements thereof, are traditionally ordered in writing."

The patentees attorney's suggestion that there is a disadvantage in the prior art because the strokes have to be put in the correct order before the elements are ordered, I think is ill-founded; the prior art invention envisages using the traditional order at all levels of dissection, so I do not see anything new in this regard in the patentees invention.

There is some disclosure in the GB specifications of the computer memory and the data stored therein; for example in GB 2 066 534 part of the text from column 1 to column 2 on page 3 reads:

"The computer is programmed with the required number of characters, each of which can be addressed by its corresponding alphanumeric code. The input device, which may be a typewriter or teletype or which may be a specially designed unit, may have only the five digit keys or may, as we shall discuss later, have additional keys. An operator can then, by viewing the character, determine the required alphanumeric code, to the required number of digits, and feed this through the input device to the correct address in the computer memory and the character is then available. Preferably the character is immediately brought up on the VDU and the operator can ascertain whether or not the input was correct and the character shown is that which was required."

And in GB 2 118 249 part of column 2 on page 2 reads:

"In the ROM of the computer there is a dictionary of any required number of characters, say six thousand, and the machine identification of the input comprises an effective subtraction of the input from each character in the dictionary and where the answer to this subtraction is zero there is a match and the required character has been found or, where ambiguity exists one of the required characters is found."

I think it is clear from these disclosures that the computer memory contains firstly information on the characters, in the ROM, which can be recalled on the VDU, and secondly, address or code information which is used to identify the characters sought in the search; and this address information includes information on the type of element (or stroke) and on the order of elements (or strokes) derived from the code train input. Thus I conclude that the memory feature defined in the petty patent claim is disclosed in the GB specification.

A search program is disclosed in the prior art specifications. The parts cited above relating to the computer memory are relevant. Also in GB 2 066 534 part of column 2 on page 3 reads:

"Alternatively, as the number of digits necessary for non-ambiguous recall of a particular character is very often less than the total number of digits necessary to fully specify the character, we can arrange for the computer to provide an indication as soon as a condition of non-ambiguity is indicated, thus reducing the time taken by the operator in introducing the total number of digits necessary to fully determine the character."

These disclosures indicate that the computer is programmed, using a process of subtraction, to indicate when the required character has been found. I am of the view that this method disclosed in the prior art is essentially the same as the program described and claimed in the petty patent. Also, the part cited immediately above contradicts the patentees attorney's suggestion that a complete code train has to be entered before a character is recalled in the prior art invention.

Thus, I think that despite differences in terminology, the features of a memory and searching program as claimed in the petty patent are disclosed in the GB specifications. I previously indicated, in my general discussion on the disclosures that a keyboard having keys with the five elements marked thereon, and a VDU, are disclosed in the GB specifications. Also as I previously indicated, the "fundamental Chinese character strokes" claimed in the petty patent are essentially equivalent to the "elements" of the prior art, so the keyboard claimed in the petty patent is disclosed in the GB specifications. Significantly though, the essential feature of using stroke or element input order as a coding parameter is clearly disclosed in the GB specifications. I therefore conclude that the petty patent claim is anticipated by the GB specifications.

Returning to the matter of international application PCT/AU 89/00379, I note that the applicants demanded International Preliminary Examination of that application. A written opinion was sent to the applicants' attorneys on 30 April 1990 and the IPE Report was issued on 14 August 1990.

Claim 10 of the international application is the same as the claim of petty patent 583008, and I note that the examiner found that claim 10 is not novel and does not involve an inventive step, according to PCT law, when considering the two Barnea and Lo GB specifications referred to above. The IPE report states:

"Each of these citations discloses an apparatus and method as claimed. In particular, each of these citations discloses an apparatus wherein each character is specified by forming the strokes of the character in a particular order. This code train is then used to effect identification of the character."

I came to my decision on anticipation of the petty patent claim without being influenced by the report; however it is of some significance that it is consistent with my decision.

Conclusion

I find that the claim of petty patent 583008 is anticipated by GB specifications 2 066 534 and 2 118 749. This is a ground covered by section 100(i)(g) and therefore relevant to my consideration under section 68B. Also, I find that the invention lies essentially in an idea and that the idea has been anticipated by the invention in the said GB specifications. Consequently, I refuse to extend the term of the petty patent.

I award costs relating to the inter-partes hearing against the patentees.

(J.I. WELSH)
Delegate of the Commissioner of Patents

Attorneys for the patentees: Pizzey & Company, Brisbane

Attorneys for the objectors: J.R.G. Gardner, Mudgeeraba