Drill hole orientation apparatus

[2018] APO 70

Reflex Instruments Asia Pacific Pty Ltd v Minnovare Pty Ltd

An opposition to a certified innovation patent was heard before the Patent Office.  The case shows that in order provide an innovative step the contribution made by the invention must be a contribution to the working of the invention.  A superficial contribution peripheral to the working of an invention is not sufficient.

The use of a handheld remote display, as opposed to a fixed remote display, was seen not to constitute a substantial contribution to the working of the invention.  The use of a remote display to show particular information, as opposed to no remote display, was seen to constitute a substantial contribution to the working of the invention.

The Applicant was provided with the opportunity to amend the claims defining the invention. 

After the decision issued, the claims were amended to recite that the mounting means enabled the orientation device to be mounted to an external to the surface of a drill rod of the drilling machine.  A further opposition was not filed.

 

(Numbering and indentation issues may be present below)

Expandable and Contractible Hose

2015 FCAFC 179

Product Management Group Pty Ltd v Blue Gentian LLC

The case concerned an expandable and contractible garden hose having an elastic inner tube and an a relatively inelastic outer tube.  The inner tube could be made of rubber and the outer tube could be made of nylon.  The case demonstrates why it is necessary to ensure that the nature of an invention is fully detailed in the specification to avoid having to rely on what would be understood by the notional skilled person to whom the application is addressed.

The notional skilled person was seen to be a person with a working knowledge of the material used for the design and manufacture of hoses.  The skilled person was seen to have an understanding of fluid mechanics.

The prior art relied on to challenge innovative step concerned oxygens hose and masks.  The invention as claimed, in the context of garden hoses, possessed a substantial contribution to the working of the invention.

Moreover, the case details the relevant considerations in determining whether an invention possesses an inventive step.  Among other things, the contribution must be in the context of the working of the invention itself, that is the invention as claimed.  The contribution need not be an advantage and may be neutral.  The contribution must extend across the full scope of the claim (*excluding the boundaries of the claim).  The contribution need not to be expressly stated in the specification.

There was no discussion of what constitutes a substantial advantage to the working of an invention in terms of the threshold between there being a substantial contribution and there being no substantial contribution (i.e. that which is superficial or peripheral).  Generally to invalidate an innovation patent the prior art must be a knockout.  The test for the prior art being a single source of information is an onerous one.  Generally, an incorporation by reference of indeterminate scope will not be sufficient.

(Numbering and indentation issues may be present below)

Turbochargers

T 2514/11

(Turbochargers/NAPIER TURBOCHARGERS LIMITED ) of 17.12.2014

In Europe objections may arise when the amendments introduce implied features.  That is, features that are not explicit in the original disclosure but are rather implied.

In order to allowable the amendments in question must be directly and unambiguously derivable by the skilled person from the application as filed, using normal reading skills and supplementing by his/her common general knowledge.  In addition, where amendments concern features added from drawings, ‘the structure and function of the feature must be clearly, unmistakably and fully derivable from the drawings, as well as the fact that they can be isolated from the other features shown but not claimed’. 

The case of EP1394387 demonstrates how support for an amendment to the scope of the invention can be derived from a drawing.   The person skilled in the art will be construed as will the common general knowledge attributable to that person.

In EP1394387 it was seen that:

‘The skilled person, who will be familiar with the different turbocharger impeller design and construction types, will recognize immediately from the figures that these show blind hole type connections of shaft and impeller body. Both structure and function of the blind hole impeller, with its dead-end hole allowing a stub of the shaft to enter the hub whilst leaving most of the hub solid, are immediately evident to the skilled person. Not only will he immediately read from the figures that the impeller type concerned is of the second kind mentioned above, that is the blind hole type, but considered in conjunction with the text it will be immediately clear to him that the patent addresses the problem of walking in that context, i.e. in relation to the particular type of connection shown in the figures. There is no suggestion in the patent that the inventive concept might apply to any through-hole type connections. In this regard the skilled person will recognize this feature as distinctive of or intrinsic to the claimed inventive concept, and not as just one of various interlinked features that define a particular embodiment. Consequently, he will perceive this feature isolated from any other details shown in the figures.’

(emphasis added)

Thus questions involve both: (i) immediate recognition; and (ii) what is seen to be distinctive of the claimed inventive concept.

In 2021 as of now (September 2021), there have been at least 80 European Board of Appeal cases concerning whether features would be “directly and unambiguously derivable” from the specification.

The case also concerns the late filing of evidence.  One online article dated notes that stricter rules relating to late filed evidence have now come into force.

(Numbering and indentation issues may be present below)

Terminal and Disconnection Link

Phoenix Contact GmbH & Co. KG v Pivot Electronics Pty Ltd [2021] APO 16

 

 

In the previous decision of Phoenix Contact GmbH & Co. KG v Pivot Electronics Pty Ltd, [2020] APO 35, it was found that claims 1, 2 and 10-12 were not novel and that claims 1-3 and 10-14 did not have an inventive step.  An opportunity to amend was provided.  The amendment was allowed.  The amendment was not opposed. 

Before final determination, the Patent Office provided the parties an opportunity to be heard.  A number of the proposed claims (including claim 1) were found to lack an inventive step.  In allowing a further opportunity to amend to correct deficiencies weight was given to: (i) there being patentable subject matter; and (ii) a genuine attempt to amend having been made.

In the words of the Hearing Officer: ‘The present case is somewhat similar to the Merial case.  Although perhaps a little misconceived in the present case, I think the applicant has made a genuine attempt to address the findings of the previous decision.  Moreover, it is clear that there is patentable subject matter in the specification.  The claims in the present claim set without any identified deficiencies would appear to be a useful reference… I will allow the applicant a further opportunity to file further amendments to overcome the present deficiencies.’

 

(Numbering issues and indentation issues still to be fixed below)

Apparatus for Managing Transportation Vehicles

Amsted Rail Company, Inc. [2021] APO 25

 

The Hearing Officer applied various questions and tests in considering whether the alleged invention met the manner of manufacture requirement.  All the questions and tests were answered in the negative.  The ‘technical feature’ questions were applied as was the ‘substance of the invention’ test.  The Applicant’s submissions made in relation to the advantages were seen to reside more in there being a ‘practical and useful result’ rather than a solution to a ‘technical problem’.  The ‘substance of the invention’ was the overriding test.  The common general knowledge was referred to in arriving at the decision (see Rokt).

In the words of the Hearing Officer: ‘The substance clearly amounts to a scheme for providing vehicle cargo packing slip information and vehicle cargo safety information on a transportation vehicle and allowing remote access of the vehicle cargo packing slip information to only authorised users and remote access to vehicle cargo safety information to other users.  The substance does not result in any technical benefit and amounts to little more than the convenient placement of particular information for remote access to particular persons in a particular environment.’

 

(Numbering issues and indentation issues still to be fixed below)

METHOD AND APPARATUS FOR INDICATING CONDITIONS

Hunter Valley Signs Pty. Limited  v Bartco Traffic Equipment Pty Ltd [2021] APO 28

Matters before the Patent Office are judged on the basis of a balance of probabilities. Apple Inc. [2021] APO 18 illustrates that matters an alleged prior public use will be scrutinized with care.

In the words of the Hearing Officer: ‘Although it is plausible that the sign was installed at some time between January 2010 and the priority date of 15 November 2011, it is equally plausible that the sign was installed at some time after the priority date of 15 November 2011 … Consequently, I do not accept that the Glenbrook “2009” sign was installed before the priority date.’

(Numbering issues and indentation issues still to be fixed below)

Determining an analysis chronicle

T 1971/18

(Determining an analysis chronicle/NOKIA TECHNOLOGIES OY) of 8.3.2021

 

It will be difficult to progress a European application to grant where the application concerns the presentation of information in a primary sense.  Should a technical effect of some kind be present, it is likely that inventive step objections will be raised.

T 1971/18 concerned aggregation and filtering of information for presentation to a user.  Analysis criteria were grouped in a tree.  It was submitted that the invention served the technical purpose of conditionally reducing energy consumption.  It was also submitted that the number of operations would be reduced.

In terms of the presentation of information, reducing cognitive burden was seen not to constitute a technical consideration.  In terms of reducing operations and energy, the features claimed were not seen as being primarily concerned with the reduction of operations.  The purposive use of any non-technical features was seen not to solve a technical problem.

Dependent claims that could be seen to be directed to a technical problem did not make a technical contribution.  It was not sufficient to provide only a vague reference to the significance of technical features without specifying how the significance was affected.  In any event, the features of the dependent claims were seen as not being inventive.

 

(Numbering and indentation issues may be present below)

Context-Specific User Interfaces (20-July-2021)

Apple Inc. [2021] APO 18

There have been a number of decisions from the Australian Patent Office regarding some software related inventions.

[2021] APO 37

[2021] APO 26

[2021] APO 18

[2021] APO 07

[2021] APO 10

[2021] APO 12

[2021] APO 11

[2021] APO 03

[2021] APO 25

Apple Inc. [2021] APO 18 is a favourable decision from the Patent Office. 

In the words of the Hearing Officer: ‘users often rely on their portable multifunction devices to know the time and therefore it is desirable to allow the user to access this information through an interface that is simple and intuitive to use and that can be easily customised in relation to the user’s preferences and the information they provide, based on the context.’

We are yet to perform a full review of the corresponding patent (472 pages).  Nonetheless, a summary of the decision follows below.

We intend publishing reviews online of all relevant software related Patent Office decisions, as well as several upcoming Federal Court decisions.

Please stay tuned.

(Numbering issues and indentation issues still to be fixed below)

Context-Specific User Interfaces (20-July-2021)

Titan Hoarding Systems Australia Pty Ltd v Lomax Group Pty Ltd [2021] APO 19

The Office raised claim support (under s 40(3)) as additional ground of objection and invited submissions.  In coming to a decision regarding whether the claims were adequately supported, reference was made to several previous decisions.  The applicant was provided with 2 months in which to make amendments.

In considering whether claims are adequately supported by the disclosure: ‘..the task is to:

i. construe the claims to determine the scope of the invention as claimed,

ii. construe the description to determine the technical contribution to the art, and

iii. decide whether the claims are supported by the technical contribution to the art.’

PLANT GROWTH MEDIUM

[2008] FCAFC 9

Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9

The case concerned a method and apparatus for the production of organic plant grow media from sawmill waste.  At first instance it was held that Foxworth was a joint inventor in respect of the apparatus.  The contribution to the inventive concept was seen not to be merely be skill but inventive skill. For this reason, the case was not one involving the addition of mere common general knowledge to an inventive concept.

 

The court did make some reference to US and UK case law.  There was brief discussion of contribution of ‘enough information’ by way of necessary enablement.  There was also a brief discussion, with respect to US law, regarding whether one of ordinary skill in the art could construct the apparatus without undue extensive research or experimentation.  Whilst there was a question as to whether the conception of the solution was sufficient to claim sole inventorship no evidence was filed.

 

The ‘but for’ test was noted in terms of whether the invention would have occurred without the involvement of Foxworth. It was noted that ‘the primary judge did not directly consider whether the concept was sufficient to enable the apparatus as described and claimed to be designed and built by the application of common general knowledge or ordinary skill. This gives rise to some difficulties’.

 

It was noted that one criterion for inventorship may be to determine whether the person’s contribution had a material effect on the final invention

 

In terms of the claims, it was noted that ‘While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed.  The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution.  The invention may consist of a combination of elements.  It may be that different persons contributed to that combination.’

 

Foxworth was seen as contributing inventive skill and therefore to be a joint inventor.  Neither party was seen to be entitled to the grant of the patent as sole inventor. There was no error in the primary judge’s finding.  It was not a case of adding common general knowledge to the inventive concept.

(Numbering and indentation issues may be present below)