Sabre Inc v Amadeus Global Travel Distribution SA
[2004] APO 21
•19 July 2004
OFFICIAL NOTICE
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Application : No. 720671 in the name of Sabre Inc.
Title: System for corporate traveler planning and travel management
Action: Opposition by Amadeus Global Travel Distribution SA under section 59 of the Patents Act 1990.
Decision: Issued .
Abstract
Invention relating to a system for corporate travel planning, expense reporting and management which provides, in conjunction with other functionality, facilities for a corporate traveler to directly book travel in a Computerised Reservation System (CRS) and have that reservation communicated to a travel agency for post reservation processing including ticketing.
Found that, in general, the 101 claims, including 16 independent claims and dependant claim groups and 9 omnibus claims, did not define the invention and were not otherwise clear and succinct. The description, while somewhat sparse on details to support implementation of the invention by a skilled addressee, was however not considered to have clearly failed to fully describe the invention - Kimberly-ClarkAustralia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 and Valensi v British Radio Corporation Limited (1973) RPC 337 applied.
The invention claimed was further found not to be novel in light of information made publicly available through promotion and sales of the TravelTrack travel management system in Australia before the priority date.
PATENTS ACT 1990
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Re:Patent Application No. 720671 in the name of Sabre Inc. and opposition thereto by Amadeus Global Travel Distribution SA under section 59 of the Patents Act 1990.
BACKGROUND
Application 720671 (65510/96) was filed as a convention application by The Sabre Group, Inc. now Sabre Inc (Sabre) on 6 September 1996 and claims priority from US patent application 08/524381 filed on 6 September 1995. The application was advertised accepted on 8 June 2000 and Amadeus Global Travel Distribution SA (Amadeus) filed its notice of opposition on 6 September 2000.
Following service of evidence, the matter came to hearing in Sydney on 10 and 11 March 2004. Sabre was represented by S C G Burley of counsel assisted by J Thornton and instructed by A Christie, Davies Collison Cave, Brisbane. Amadeus was represented by R J Webb, Senior Counsel, assisted by C Demitriadis and instructed by P J Davis, Fisher Adams Kelly, Brisbane.
SPECIFICATION
The specification indicates that the invention generally relates to a travel and transport information system and, in particular, to a client-server system that communicates with an airline Computerised Reservation System (CRS) and places travel information directly in the hands of the corporate traveler.
The context for this statement, apparent from the background information provided, is that corporate travelers and corporate travel and department managers have a variety of needs which are to so some extent limited in the prior art by a dependence on travel management companies or travel agencies. For example, under conventional methods travelers were required to arrange travel through a series of telephone conversations with a travel management firm or agency and hence require an easy and fast way to arrange travel with automated expense reporting. Travel managers needs include a true summary of planned corporate expenses by category and status information on preferred vendor agreements but this information is said not to be provided by travel management firms in a timely fashion, they provide minimal information on a pre-travel basis and provide no method for self evaluation of performance. For their part, department managers require pre-travel reporting of travel expenses and to enforce corporate travel policy on a pre-travel basis. Current methods are said to require manual processing of approvals and notifications of policy violations are insufficient or not timely enough to allow travel policies to be enforced pre-travel.
The final paragraph under the heading BACKGROUND TO THE INVENTION states that:
“Therefore, a need has arisen for a corporate travel planning and management system which operates on a corporate database environment that allows automated travel planning from a corporate traveler’s desktop, pre-travel decision support to inform a corporation of planned travel expenditures before corporate dollars are spent, and automated expense reporting”
The specification then indicates that an object of the present invention is to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative and 17 “aspects” of the invention are listed which, in the main, equate to the independent claims of the specification. There are 101 claims, including 16 independent claims and dependant claim groups and 9 omnibus claims as follows:
Claims: General subject matter:
1-10, 76-85 Client-server system for corporate traveler planning, expense reporting and travel management … .
11-16 A method for corporate traveler planning, expense reporting and travel management that utilizes a personal computer communicably linked to the corporate traveler, at least one travel agency, and a relational database server that is communicably linked to a computerised reservation system that provides travel information from the computerised reservation system to the relational database server and the traveler planning expense reporting and travel management system comprising the steps of …
17-18 A client-server system for corporate traveler planning, expense reporting and travel management comprising …
19-34, 75 Computer-implemented method of managing travel for an enterprise, comprising the steps of …
35-46, 86-90 A system for managing travel of an enterprise comprising …
47 A computer program product having a computer readable medium, the computer readable medium having instructions for performing a method for managing travel for an enterprise, the method comprising …
48-55 A computer implemented method of managing information in a travel system, comprising the steps of …
56-62 A travel system comprising …
63 A computer program product having a computer readable medium, the computer readable medium having instructions for performing a method for managing travel for an enterprise, the method comprising …
64 A method of managing travel for an enterprise via an external source of information on travel resources, comprising …
65 An enterprise travel management system communicably linked to an external source of information on travel resources, comprising …
66-68 A computer-implemented method of managing travel for an enterprise using an accessible external source of information on travel resources, comprising the steps of …
69-71 A system for managing travel of an enterprise using an accessible external source of information on travel resources, comprising …
72-73 A method for managing travel for an enterprise, comprising:
74 A computer-implemented method of managing travel for an enterprise, comprising …
91-92 A computer-implemented method of managing travel for an enterprise, comprising …
93 A client-server system for corporate traveler planning, expense reporting and travel management substantially as herein described with reference to the information in the accompanying drawings.
94 A method for corporate traveler planning, expense reporting and travel management substantially as herein described with reference to the information in the accompanying drawings.
95 A computer-implemented method of managing travel for an enterprise substantially as herein described with reference to the information in the accompanying drawings.
96 A system for managing travel of an enterprise substantially as herein described with reference to the information in the accompanying drawings.
97 A computer program product having a computer readable medium, the computer readable medium having instructions for performing a method for managing travel for an enterprise substantially as herein described with reference to the information in the accompanying drawings.
98 A method of managing a travel system substantially as herein described with reference to the information in the accompanying drawings.
99 A travel system substantially as herein described with reference to the information in the accompanying drawings.
100 A method for managing travel for an enterprise substantially as herein described with reference to the information in the accompanying drawings.
101 An enterprise travel management system substantially as herein described with reference to the information in the accompanying drawings.
Claim 1 of the specification reads:
"A client-server system for corporate traveler planning, expense reporting and travel management comprising:
a computerized reservation system;
a relational database server communicably linked to the computerized reservation system;
a traveler planning, expense reporting and travel management system resident within a personal computer providing a graphical interface for communication between the corporate traveler, at least one travel agency, the traveler planning, expense reporting and travel management system and the relational database server; and
wherein the traveler planning, expense reporting and travel management system is configured for selectively allowing the traveler to complete a travel reservation and communicate the completed travel reservation to the travel agency for post reservation."
The detailed description is provided with reference to 57 drawings. Figure 1 is a simplified platform diagram of the invention, figure 2 a simplified block diagram of a corporate travel planning and management system, figure 3 is a simplified block diagram of a functional elements of the corporate centric client server system and figures 4 to 13 are block diagrams of various elements or processes within the system described. Figures 14A-14X, 15A-15G and 16A-16M are diagrams of graphical user interfaces for trip planning, repeat trip planning and creating expense reports, respectively.
From figure 2 it is apparent that the preferred embodiment of the corporate travel system comprehends three modules:
1.a Travel Planning module which “receives and sends availability, fare and booking data” from a CRS ( such as American Airlines’ SABRE system), receives policy and preference data from a corporate database and returns authorisation request data;
2.a Travel Expense Reporting module that receives trip and card data and expense policy data from the data base and returns expense details and reports; and
3.a Travel Decision Maker module that receives pre-trip booking and actual expense data and data from the CRS via a Generalised Data Stream (GDS) and sends trip record data to the corporate database.
Relevantly in relation to the Travel Planning module the general discussion of preferred embodiments at page 12 includes the following:
"The Travel Planning module interacts with locally stored traveler and corporate profiles in a relational database that function as filters against real-time CRS data output to ensure the appropriate corporate vendor preferences are displayed to and booked by the corporate traveler. The present invention enables the traveler to complete the entire booking process, which results in the creation of a Personal Name Record (PNR), or to create a PNR with a booking request which a travel agent completes."
I will discus relevant portions of the description and claims in greater detail in my decision.
EVIDENCE
The evidence provided by the parties in this matter comprises the following declarations:
In Support
-Robert Allen dated 2 August 2001. Mr Allen at that time was the general manager of GlobalPro International Limited which is said to produce and market travel and expense management software. He had previously been employed by Sabre Pacific Pty Ltd as an operations and customer service manager.
-Paul Steven Alexander dated 6 December 2001. Mr Alexander was a marketing manager with Southern Cross Distribution Systems Pty Ltd (Galileo) from 1993 and principally provides evidence concerning the development of a corporate travel planning and management system called TravelTrack.
In Answer
-David Mark Allen dated 13 November 2002. Mr Allen was at that time the managing director of Sabre Pacific Pty Ltd in New Zealand and previously had experience in the travel industry including roles in sales and marketing.
In Reply
-Ingo Ueckermann dated 11 May 2003 and 22 June 2003. Mr Ueckermann was an employee of Galileo between 1990 and 2000, initially as a sales executive but from 1996 as a product manager.
-William Horace Lawler dated 4 June 2003. Mr Lawler is the chief executive officer of Amadeus GTD Australia Pty Ltd, and provides an outline of the development of travel reservation and management systems in Australia up to the priority date.
-Jobn Ryzner dated 5 June 2003. Mr Ryzner was a project manager with a subsidiary of Amadeus GTD at that time and indicates that he has had considerable experience in the IT industry as a programmer, system analyst and project manager. He was involved with the development of a travel management system known as "Atlas" from April 1993 to December 1997.
-Peter Watson dated 14 August 2003. Mr Watson indicates that he has over 20 years experience in the IT industry including experience in programming, project management, software design and marketing. In the early 1990’s Mr Watson’s company Corporate Workgroup Resources Pty Ltd was involved in developing a travel management system for Telecom (as it was known then). This system was later developed further for Galileo and became known as TravelTrack. Mr Watson had a number of roles in the development of the product between 1993 and 1996 including aspects of the design, management of the development and implementation teams and in marketing.
Further Evidence in Answer
-Gene Van Grecken dated 9 March 2004. Mr Van Grecken was at that date technical director of Travelocity Australia Pty Ltd, a company apparently related to the applicant Sabre. He has educational qualifications in mathematics, computer science and applied finance and experience in IT operations and software development for a number of travel organisations including as principle systems developer for UniGlobe Key Travel from 1990 to 1995.
While potentially there may have been issues raised with the opponent’s evidence not being strictly in reply and with the applicant’s late filing of further evidence, in the event the parties have not objected to my considering either. The submissions made at hearing and the written summaries provided by both parties were particularly helpful in this case and I will refer to these and the evidence as appropriate in my decision.
DECISION
The Statement of Grounds and Particulars in this matter is quite extensive but in the event the opponent’s case was argued in relation to two main grounds. Firstly, that the specification failed to comply with section 40 because it did not describe the invention fully and secondly that the invention claimed was not novel in light of the TravelTrack system developed and marketed before the priority date as a joint venture between Dominion Systems Pty Limited and Galileo, as mentioned in the evidence.
Section 40(2)(b) and 40(3)
Before considering these matters in more detail I will turn to other of the section 40 issues raised in relation to whether the claims define the invention and whether they are clear and succinct. I should say in this regard that in section 40(2) "invention" has the meaning ascribed to it by the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 with reference to British United Shoe Machinery Company Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631, that is, it is "The embodiment which is described, and around which the claims are drawn." Consequently while the nature of the invention is to be determined from the specification as a whole including the claims, the absence of a central feature of the invention from a particular claim will result in it not defining the invention. That claim will also not be fairly based as discussed by McTiernan J in AMP Incorporated v. Utilux Pty Ltd 45 ALJR 123:
"Section 40(2) is concerned with comparing the statement of that for which the patentee (or more correctly applicant) claims a monopoly with his full description of his invention. It is concerned with what is in other fields referred to as internal consistency. If as in this case the patentee chooses or is compelled to state advantages of his invention, failure of a claim to embody any of the advantages claimed must result in the failure of the claim."
The applicant submits in the present matter that:
“The concept underlying the claimed invention, reflected in the claims, is that of an airline traveler or his or her assistant making a booking via direct communication with a computerized reservation system (CRS), without the necessity for involvement from a travel agent or an agent of the airline until after a booking has occurred. This can reduce the cost and time taken in making a booking and release the corporate traveler from any “tie” to a particular travel agent. “
Mr Allen also in his declaration at para. 8 states that:
"In contrast to industry practice at that time, the role of an agent is largely bypassed, with the corporate travelers being able to obtain approval for their travel and complete their booking directly in a CRS. Ticketing is a function that must be left to the agents and is generally covered by the terms "post" or "subsequent" processing in the claims."
He then sets out parts of a number of the independent claims said to reflect this feature.
Similarly Mr Van Grecken’s states that:
“The main concept of the invention as expressed in the claims, is that of an airline traveler or his assistant making a booking directly in a computerised reservation system (CRS), without necessarily involving a travel agent or an agent of the airline. An agent is still required for subsequent steps such as ticketing, but otherwise the involvement of an agent is relatively limited.”
But also notes that:
“There are a large number of claims but this concept is common to all except claim 91 and 92 ..,”
While the specification, including some of the claims, may, as a whole, be said to disclose direct booking through a CRS in a travel management system, and I accept the applicant’s submission on this point, the structure of the specification as a whole is rather confusing as to whether this feature is to be taken as the main or even an essential feature of the inventive concept. That this feature in any possible form is not common to all the seventeen different aspects included under the heading SUMMARY or to all the independent claims is one thing but the language that could in hindsight be said to encompass this feature in the claims varies so widely that it becomes unrecognisable. For example, in claim 1 there is reference to a database server linked to a CRS and the “planning, expense reporting and travel management system is configured for selectively allowing the traveler to complete a travel reservation and communicate the completed travel reservation to the travel agency for post reservation processing” but the completion of the reservation is not explicitly related to the CRS.
In claim 11 interaction with a CRS is mentioned but this is seems to be limited to providing travel information to a database server and while “receiving from the traveler a completed travel reservation” and “communicating the completed travel reservation to the travel agency” are mentioned, the step of making a reservation through the CRS is not. As a further example claim 19 refers to “receiving a request to book a travel plan” and "selectively allowing the traveler to notify a reservation system of a completed travel reservation" but does not refer to a computerized reservation system. Rather, dependant claims 20 and 21 add that the request to book a travel plan is through a CRS and, in claim 21, providing access to the CRS "includes the step of booking at least a portion of the travel plan through the computerized reservation system". As such it is impossible to say that an "airline traveler or his or her assistant making a booking via direct communication with a computerized reservation system (CRS), without the necessity for involvement from a travel agent or an agent of the airline until after a booking has occurred." is unambiguously claimed in the independent claims and is very clearly not intended to be in a number of claims including claim 91. As a consequence, the claims cannot be said to be clear, to define the invention or to otherwise be fairly based as required by section 40.
While the number of claims, and particularly the number of independent claims, in this case would readily suggest undue prolixity given the nature of the invention said to be described, one ought to be cautious in applying arbitrary limits to the applicant’s legitimate freedom to draft claims that meet the requirements of the Act. As Hely J stated in Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2001] FCA 1877:
“I accept that it takes patience, time and effort to unravel all of the claims of the Patent. Subject to the expenditure of that time and effort, there is no alleged ambiguity in the claims. The problem is not with prolixity, but with attempted compression, and the multitude of claims. That, however, falls short of establishing that the claim or claims are not clear and succinct”
In that case only 33 claims were present but the principle that clarity and succinctness are not generally a factor of the effort that may be involve in construing an extensive set of claims seems to be generally applicable. However, it has long been accepted that claims will not be clear and succinct if their repetitious nature is such the difference in scope between two or more claims is not readily apparent, (see Bancroft's Application, (1906) 23 RPC 89). This situation rarely arises in practice but I think the present application is one such case because of the large number of different combinations of features claimed and the wide variety and ambiguity of the different terminology in the claims that is said to define the same key features. In this regard one need only look at paragraph 8 of Mr Allen’s declaration. Consequently I find, in addition to the matters of clarity discussed above, that the claims as a whole are not clear and succinct.
Section 40(2)(a) - Sufficiency
In summary the opponent’s submission on sufficiency is that the specification is in the nature of an idea or proposal for a corporate travel management system rather than directions to implement such a system and that what is provided is a general description of desirable or intended features but not how these are to be achieved. Consequently to implement the system would require considerable effort in analysis design and documentation to provide a working specification from which the system could be coded and implemented. This, it is said, would take months if not years of design, development and implementation work involving creativity and ingenuity in the analysis and design of the system.
The law on sufficiency was considered by the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd, supra, affirming that:
“The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
In this regard in Valensi v British Radio Corporation Limited (1973) RPC 337 the Court of Appeal in finding a colour television patent invalid because of insufficient description posed two questions: "(1) Who is the notional addressee of the specification? and (2) to what extent can the addressee be called upon to exercise his own skill and knowledge in following any details in the specification or in correcting errors in it?". After reviewing numerous authorities, the Court concluded:
"We think that the effect of these cases as a whole is to show that the hypothetical addressee is not a person of exceptional skill and knowledge, that he is not to be expected to exercise any invention nor any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found."
and:
“Further we are of the opinion that it is not only inventive steps that cannot be required of the addressee. While the addressee must be taken as a person with a will to make the instructions work, he is not to be called upon to make a prolonged study of matters which present some initial difficulty”
Furthermore on appeal in NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (26 IPR 513 at 534) Lockhart J stated:
"Questions of sufficiency of instruction is a pure question of fact to be determined generally by the evidence of addressees of the specification: British Dynamite Co v Krebs (1896) 13 RPC 190 at 192. It is true that the specification must disclose the method of carrying out the invention and not merely the result to be obtained; but any general description is sufficient if in fact the desired result can be obtained with certainty and without invention: No-fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231; Blanco White, Patents for Invention (5th ed, 1983), at 4-505."
While it is clear that a skilled addressee should not be expected to employ any inventive ingenuity, the question of what amounts to “certainty” or “prolonged research, inquiry or experiment” is a matter of degree to be determined in each case. The applicant argued that even considerable trial and error has been expected and referred in this regard to British Ore Concentration Syndicate v Minerals Separation Ltd (1909) and NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1992) 24 IPR 1 (Wilcox J). However these cases involved somewhat different technical challenges than faced by the addressee in the present case. In British Ore it was selecting the quantity of oil used for separating certain metallic constituents of ores in a metallurgical process and in Philips the selection of appropriate luminescent materials to produce particular characteristics in a low-pressure mercury discharge lamp. I would say that the decision in Samual-Taylor Pty Ltd v SA Brush Company Limited (1950) 83 CLR 617 cited by the opponent is also not particularly helpful in assessing the present circumstances and as a consequence I have been referred to US practice and case law as reflected in the USPTO Manual of Patent Examining Procedure which includes detailed discussion of computer related patents in relation to US enablement requirements. The standard applied for this in the US is “is the experimentation needed to practice the invention undue or unreasonable?” (Mineral Separation v Hyde 242 US 261, 270 (1916)). However what is reasonable is still very much a question to be answered on the evidence in each individual case. Hence it is said that:
“The amount of experimentation that is considered routine will vary depending on the facts and circumstances of individual cases. No exact numerical standard has been fixed by the courts, but the "amount of required experimentation must, however, be reasonable." White Consol. Indus., 713 F.2d at 791, 218 USPQ at 963. One court apparently found that the amount of experimentation involved was reasonable where a skilled programmer was able to write a general computer program, implementing an embodiment form, within 4 hours. Hirschfield v. Banner, 462 F. Supp. 135, 142, 200 USPQ 276, 279 (D.D.C. 1978), aff'd, 615 F.2d 1368 (D.C. Cir. 1986), cert. denied, 450 U.S. 994 (1981). On the other hand, another court found that, where the required period of experimentation for skilled programmers to develop a particular program would run to 1 to 2 man years, this would be "a clearly unreasonable requirement" (White Consol. Indus., 713 F.2d at 791, 218 USPQ at 963).”
Consequently I am left to determine the matter on the evidence before me in the particular circumstances of this case. While there is perhaps some uncertainty in the authorities as to the date sufficiency of a patent specification is to be determined, it is agreed that this question has no particular significance in the present matter. Hence, while I will refer to the filing date as the relevant date there is nothing to suggest the result would be any different if considered at the priority date.
It seems clear to me that the skilled addressee of the present specification is a team (Osram Lamp Works Ltd. v Pope's Electric Lamp Co. Ltd., (1917) 34 RPC 369) including persons skilled in travel management, systems analysis and software development. When faced with the disclosure of the specification I think this team would appreciate the functional requirements of the travel management system at least at the higher level reflected in the block and flow diagrams reflected in figures 1-13. They would also gain from the description in relation to the remaining GUI diagrams further detailed indications of the functionality required of the travel management system. However the question remains of whether in fact the broad functional requirements of the travel management system as claimed could have been reduced to a practical implementation by that team, and particularly the software developers, without invention or undue experimentation at the relevant date. In this regard the evidence of Messrs. Ryzner, Watson and Van Grecken is most relevant because of their background in software systems development.
Mr Ryzner says in his declaration that while the desired or intended features of the system is disclosed, the design of the system is not. Hence, in his opinion, many man months of work would be required from a team consisting of a business analyst, one or two system analysts and a database designer just to bring the system to a point where program coding could begin. Notably he refers to his experience with the Atlas system development which he says did not have the added complication of direct client access to a CRS. In his detailed analysis Mr Ryzner criticises particularly the absence of information necessary to complete database tables and data field definitions, mentioning that the Atlas system had approximately 800 database tables and 8000 data fields. He further criticises the lack of description of the business process logic and rules and total absence on information on how the interface with a CRS and the corporate users computer systems is achieved. Thus he is of the view that substantial further design and development work would be required even before coding work is begun.
While much of Mr Watson’s evidence is taken up with a description of the TravelTrack system he also shares many of the views of Mr Ryzner on the adequacy of the description and in particular criticises the absence of a data model which in his opinion is the blueprint from which such a system could be built. By comparison this element for TravelTrack is said to have taken 3-6 months to develop. He asserts that many months if not years of design, development and implementation work would be required to build a corporate travel management system based on the present specification.
In his evidence, Mr Van Grecken states that he finds figure 1 of the specification to be helpful and technically quite accurate and while an experienced software developer would appreciate that systems of this kind have an enormous number of variations and enormous amount of detail the concept of the invention is clearly seen. Figure 4 as discussed on pages 15 to 17 in his view suggests clearly how “a planning and booking system that could implement the invention could work”. He further states that more information could be provided or indeed less but that either way the concept of the invention is clear. Mr Van Grecken finds Mr Ryzner’s criticism’s overstated and if asked in 1995 or 1996 to build the system as described would have assembled a team including a business analyst, one or two systems analysts, a database engineer and probably an international travel consultant, determined the customer’s specific requirements and within several month create the overall design. “The specification is a starting point for a moderately large project which we would have tackled in the usual way”. He focuses on the unique requirements of corporate customers and indicates that it was usual in the mid-1990’s to start a software project with a broad architecture and that it was sufficient that the main functionality was communicated. Indeed his view was that the specification conveys “the functionality and cleverness of the system sufficiently for it to be developed for a particular application”.
Mr Van Grecken essentially admits that the specification discloses essentially the concept and desired functionality and would, at the filing date, have require a software development team to undertake a considerable period, perhaps several months, of analysis and investigation to arrive at a system specification that was ready for coding. However the level of functionality described and in some respects the interaction of processes is quite detailed. On balance, and although I have considerable sympathy with the opponent's concerns with the level of information supporting implementation of the invention by the skilled addressee, I do not find that it clearly fails to fully define the invention as required by section 40. The level of detail suggested by Mr Ryzner and other of the opponent's experts I think goes beyond that which is sufficient for an appropriate non-inventive team to put the invention into effect and I do not find evidence of difficulties that would have required inventive ingenuity to overcome given knowledge in the art of CRS and travel management systems generally. A significant period for implementation including research, inquiry or experiment would have been required but, on the evidence, I do not believe this would clearly amount to a requirement for prolonged study of matters presenting initial difficulty or that the outcome would be uncertain. Therefore I do not find that the specification fails to describe the invention fully.
Novelty
I will now turn to the question of novelty in light of the alleged prior use. The level of proof required in an opposition case to establish prior use is succinctly stated in Seiller's Application [1970] RPC 103, where Graham, J said at pg 106:
"In my judgment it is necessary that proof of prior user in opposition cases should be very clear."
To this I add that in proceedings before the Commissioner the standard of proof is the civil standard on the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523), and that the opponent or informant carries the onus of establishing the grounds alleged.
Mr Watson's evidence on the TravelTrack product which is said to anticipate the present claims is that it was "being continually developed and updated" in the period from 1992 to 1996. However, he states at paragraph 44 that TravelTrack had a functioning interface with the Galileo CRS by mid 1993 and provides corroborating evidence to suggest that by January 1994 the TravelTrack product was being demonstrated, trialled, piloted and/or implemented for several clients in Australia including the CSIRO. Mr Watson further says that TravelTrack included communication links between the database, corporate traveler, the Galileo CRS and the travel agency (para. 135), that full search and booking capability was made available to users (para. 182) and that TravelTrack created CRS records (para. 187). Nevertheless the terminology used in the guides and other documents provided in evidence however are perhaps not entirely clear on the question of direct booking in the CRS. For example at page 6 of the "Operator Module" guide (PW-06) STEP 3 is "Enter the Confirmation Date - the date you would like the booking to be completed by the agent" and at page 7 "STEP 5. Nominate the type of order you are creating. If it is to be sent to the agent for booking, select the New Trip radio button …". I note further in the TravelTrack brochure at PW-21 on page 9 that the TravelTrack user modules are listed and that the second of these reads:
"Booking Function: The Booking Function in TravelTrack gives your organisation the ability, through an electronic link to direct access to you preferred travel agent."
Thus while corporate users may have been able to book travel it is not entirely clear from this material that the booking was directly in a CRS. On the other hand "booking" may, in this context, mean merely confirmation of the reservation and ticketing by a travel agent as is also a requirement of the present application.
Mr Alexander's evidence and particularly exhibit PSA-3 (the "How to make a killing!" seminar papers) seems to resolve this question. In that document "The Description of the Corporate Travel Management System" is provided at page 99 and at page 103 against the "Request Icon" and under the heading "The Travel Booking Officer" it is said that:
"This employee's task will be greatly simplified. In most cases, since all the usual details will have been stored in the database, this officer will only need to "click"on a traveler's name, and enter the travel date and time, click on a "send" button, and the TravelTrack terminal communicates directly with the Computer Reservation System (CRS) to make the "pseudo booking", a process which will take very little computer time and almost no operator time. This contrasts with the time that would normally be spent talking to a travel agent, and the time lost by you, the agent in accessing the reservations system."
On page 107 against the "Bookings" icon under "Travel Agents" the document lists a number of benefits for agents including:
"You will benefit from having staff tied to telephones for shorter periods to deal with the customer's travel needs.
You do not have to perform laborious data entry in creating the booking, as most of this is done by the corporate client. The travel agent performs the service of quality controlling the booking and adding value to it."
It is clear that this document sets out to reassure agents of their role in the process and that they would continue to be required to finalise bookings and issue tickets but this does not mean that TravelTrack did not allow direct booking functionality for corporate users as suggested by the applicant. Similarly "it locks the travel booking into you, the Galileo travel agent" does not necessarily mean the booking activity in the CRS was undertaken only by agents. A more realistic interpretation is that as TravelTrack was based on the Galileo CRS, corporate users were then locked into Galileo and hence required Galileo agents for ticketing.
There are a series of exhibits relating to implementation at Network Ten that tend to confirm that such booking functionality was present in TravelTrack before the priority date including:
PSA-15 - The TravelTrack Architecture diagrams apparently sent to Phillip Joukhador at Ten on 18 November 1994 clearly indicate that access to Galileo was direct from TravelTrack's remote Unix host and that linkages to travel agents were through the Galileo system interface.
PSA-16 - minutes of a meeting on 5 December 1994 where it was reflected that "Qantas would need to build a robotic system to transfer all data on individual PNR's to Qantam system for ticketing purposes. Qantas was, at least at this stage, Ten's travel agent and there were concerns because Qantam was not able to interface with TravelTrack as a Galileo based system (see also PSA-20). I note also in these documents reference to Galileo training for both Ten and Qantas staff with the clear implication that booking in the CRS was to occur at Ten and that Qantas staff would need access to reservations made directly in Galeleo.
PSA-21 - agenda for meeting on 3 February 1995 including:
"1.) SYSTEM COMMUNICATIONS
a) TRAVELTRACK TO GALILEO
B) GALILEO TO TRAVELTRACK"
PSA-23 - minutes of a meeting held on 6 February 1995 including the item:
"1. TravelTrack Direct Bookings in Galileo
Ken Birchall advised that the process of travel bookings was cumbersome and excessive. Susan McLaws to provide costing and timetable for this function to Ken Birchall three days prior to the next meeting for discussion at the meeting"
PSA-22 - minutes of the meeting held on 21 February 1995 include the item:
"5. TravelTrack Direct Bookings in Galileo
Susan McLaws advised that Stage One enhancements would be Galileo access through TravelTrack by simply clicking on Galileo Icon while still in TravelTrack. TravelTrack would still send down a passive booking but you do not have to exit TravelTrack to alter booking details in Galileo. John Emanuel advised that once stage one was complete, he would offer Ken a number of options. Network Ten are to decide exactly what they require before TravelTrack are able to advise on Stage Two."
PSA-24 - functional outline with flowchart faxed by Sharon Zaiter (Ten) to John Emmanuel (Galileo) apparently on 28 February 1995. The pre-trip process flow chart shown in this document includes the steps:
"(1) Traveler Completes Auto booking form in Track (initially Sharon)
(2)Booking request transmitted to travel office - Sharon makes booking. Print Travel Requisition and itinerary and sends auto approval and printed form to Department Head for signature.
…..
(6)Approved Trip returned to travel desk for ticketing and final preparation. Auto/Manual?
(7)Booking queued off to Qantas for ticketing."
Consequently I believe the statements made by Messrs. Watson, Alexander and Ueckermann are largely corroborated by contemporary documents and I am persuaded that information about TravelTrack including direct bookings by corporate users to a CRS and thereby creation of a PNR in that system was publicly disclosed in Australia through sales, promotion or implementation of the system before the priority date. This is not to say that the evidence could not have been clearer in a number of respects or more comprehensive but as a whole I find it highly probative and hence sufficiently clear to support a finding of anticipation in light of information made publicly available through doing an act. Given other features relevant to travel planning, reporting and management clearly identified in the evidence as part of the TravelTrack system, I find that the invention claimed in all the independent claims and many of the dependant claims is not novel. Mr Alexander's analysis of the claims suggests that the features of only, perhaps, claims 12 and 83 were not disclosed in the TravelTrack system however, given the issues with the claims already identified and their number and complexity, I do not intend at this stage to engage in that level of analysis. Rather I will allow the applicant the opportunity to identify patentable subject matter and propose amendments overcoming the successful grounds of opposition subject to further submissions and hearing if required.
Other Grounds
As I understand it, the other grounds of opposition including in relation to obviousness and manner of manufacture considerations were consequential to the matters considered in detail above. As such, and given my findings to this point, it does not appear necessary or appropriate for me to consider those grounds in detail.
CONCLUSION
I find that the opposition succeeds in that the invention claimed is not novel and that the claims are not clear and succinct and do not define the invention or otherwise lack fair basis. However, despite the serious nature of the deficiencies identified I believe the application may contain patentable subject matter and I allow the applicant 60 days from the date of this decision in which to file proposed amendments overcoming the grounds of opposition.
COSTS
Costs should follow the event and accordingly I award costs against the applicant Sabre Inc.
P M Spann
Deputy Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Brisbane
Patent attorneys for the opponent : Fisher Adams Kelly, Brisbane
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