Canada: Canadian Patent Appeal Board Relies On Commercial Success Factors To Allow Patent Application For Security Checkpoint Tray Handling

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.

The Application

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.

Obviousness Analysis

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 Arroya'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.

Please click the following links to learn more about this decision:

Patent Appeal Board Decision #1377 at the Canadian Intellectual Property Office

Canadian Patent Application No. 2,491,151

Prior art document D1: International Patent Application No WO02/29744, published April 11, 2002

Prior art document D2: US Patent No. 5,388,049 published February 7, 1995

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Nicholas Aitken
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions