April 22, 2015
By Bhupinder Randhawa and Nicholas Aitken
On February 25, 2015, the Patent Appeal Board of the Canadian Intellectual Property Office recommended to the Commissioner of Patents that Canadian patent application no. 2,491,151 be allowed. The decision provides insights into how the Patent Office reviews patent claims beyond the typical assessment of whether the claimed invention is obvious when compared to previously known technology. In this case, the Patent Appeal Board considered evidence that an invention was very successful, but only after initial skepticism from the industry and a lengthy marketing effort by the patent Applicant. The Patent Appeal Board relied on this evidence of commercial success to conclude that the invention was patentable.
Security Point Media filed the patent application on July 2, 2003 to protect a method of using trays, which would typically be filled with personal items, at an airport security checkpoint scanner. The application claimed priority to a United States patent application filed on July 3, 2002.
The main claim in the patent covers a method of taking a nestable tray from a first cart at the entrance of a scanning device (e.g. X-ray machine), moving the tray through the scanning device, nesting that tray in a second cart at the exit of the scanning device, and then moving the second cart of empty nested trays back to the entrance of the scanning device for reuse. The claim also recited “information” (e.g. advertising) being displayed on the bottom inside surface of the trays.
The application was examined by the Patent Office and after several iterations of rejections by a patent Examiner and responses by the Applicant, the Examiner issued a final rejection on two grounds. First, the Examiner took the position that the claimed invention was obvious and therefore didn’t deserve patent protection. The Examiner also stated that the claims were directed to an aggregation of steps that were not linked together to form a cohesive method. Security Point Media disagreed and appealed to the Patent Appeal Board.
Essential Elements Analysis
The first step in assessing whether a patent claim is obvious is to determine which elements in the claim are essential to the invention. The panel decided that all of the elements of the independent claim were essential except for the information being displayed on the bottom inside surface of the trays. Identifying essential elements is important because only the essential elements will be compared against the prior art to assess obviousness. Prior art is information available to the public before the priority date of the application. Non-essential elements cannot be used to distinguish the invention from the prior art.
To identify the essential elements of the claim, the panel applied CIPO Practice Notice PN 2013-02 which sets out a problem and solution approach. The analysis consists of identifying the problem addressed by the application, and then identifying those elements which are essential to solving that problem. If the application addresses multiple problems, then the problem given greatest emphasis by the inventors is selected.
Here, the panel canvassed the background section of the application, which spoke of the need for more efficient use, gathering, storage, and transportation of trays at security checkpoints, and concluded that the problem addressed by the application is overcoming these difficulties. Inferentially, it appears that the panel considered the stated problem of unused advertising revenue potential of blank trays to be a secondary problem given less emphasis by the inventors. Accordingly, the panel decided that the essential elements to solving the identified problem included all the claim elements, except the display of information on the bottom inside surface of the trays since the information display did not contribute to solving the primary problem identified by the inventors.
The panel decided that the claim was not obvious having regard to two patent documents cited by the Examiner: D1 (International Patent Application No WO02/29744, published April 11, 2002) and D2 (US Patent No. 5,388,049 published February 7, 1995). The analysis consisted of identifying the differences between the essential claim elements and the prior art. The differences are then assessed from the perspective of a skilled person, whom the Patent Appeal Board described as a person experienced in the art of security screening at an airport, taking into account the prior art and the common general knowledge of the skilled person. The Patent Appeal Board decided that such a skilled person would not be able to bridge the those differences relying only on the prior art and the person’s common general knowledge.
D1 disclosed an airport security checkpoint using trays, but did not disclose the claimed carts or nested trays. D2 disclosed transporting trays of mail in cages, but did not disclose returning the empty trays with the cages or nested trays. Accordingly, the panel concluded that all of the essential elements of the claim constituted the difference from the cited art.
Regarding inventive ingenuity, the panel noted that nothing in the record suggested that it would have been obvious for a skilled person to conceive the claimed method utilizing multiple tray carts, nested trays and moving full carts of trays from the exit of the scanning device to the entrance of the scanning device so that the trays can be used again. The panel supported this position with a lengthy discussion of evidence submitted by the Applicant. Specifically, the panel was persuaded by declarations from the inventor and an expert, Mr. Arroyo, that:
(i) adding new equipment that moves upstream from the secure side to insecure side of a security checkpoint was counter-culture for airports,
(ii) there was a long-felt need and motivation to solve the efficient problem of moving trays,
(iii) there were numerous past attempts at a solution which were unsuccessful,
(iv) the merits of the system were not immediately recognized by people with experience in operating airport security checkpoints,
(v) after a demonstration and a pilot program (years after the patent application was filed), airport security personnel were surprised by the level of reduction in worked injuries and increased throughput at security checkpoints; and
(vi) published airport guidelines formally endorsed the system.
The panel stated that the weight of these ex-post facto factors in favor of non-obviousness of the claim was “simply irresistible” Accordingly, the panel found the claim to be not obvious in view of D1 and D2, and recommended that the application be allowed.
This decision illustrates the relevance of commercial success and challenges in achieving it to the patent process. The Patent Appeal Board determined that people in the field of airport security screening had not considered Security Point Media’s method of using nested trays and tray carts and did not initially believe that it would improve security checkpoint operations. Although it took years, airport security personnel did eventually recognize and were surprised by the advantages offered by the system. Mr Arroyo’s declaration stated that eventually this method of handling trays at airport security checkpoints became the standard at airports across Canada and that it was difficult to imagine a return to the previous methods of handling trays.
Entrepreneurs should retain careful records documenting the efforts that they take to develop and market their inventions, even after filing a patent application. Those records should document all meetings and efforts to market a new technology, and the reaction that other people in the field initially had when they learned about the technology. Eventually, the records will hopefully show a pattern of adoption as the entrepreneur is able to convince the industry to try the new technology and adopt it. Entrepreneurs who persevere may be able to rely on their efforts to show that their invention was so different from the conventional approaches in the industry that others did not think that it would work or even give it a try. Success in the face of such barriers can be evidence of just how innovative and disruptive a new technology was when it was first introduced, especially if the new technology is eventually adopted across the industry.
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