DECISION OF THE COMMISSIONER
IN THE MATTER of a request for review
by the Commissioner of Patents of the
Examiner's Final Action under Section 46
of the Patent Rules
And
IN THE MATTER of a patent application serial
number 839,690 filed January 10, 1962, by
William Pollack for an invention entitled:
PREGNANCY TEST
Agent for the Applicant : Gowling, MacTavish,
Osborne & Henderson,
Ottawa, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action refusing
to allow claims 8-11 of application number 839,690. The request
was made in accordance with Section 47(3) of the Patent Rules
(prior to amendment by Order-in-Council P.C. 1970-728, effective
June 1, 1970).
In the prosecution terminated by the Final Action, the
Examiner refused to allow the application on the following grounds:
1) The subject matter of claims 8-11 does not
fall within the limits of what may be patented
under Section 2(d) of the Patent Act as
relating to a testing method for the diagnosis
of pregnancy.
2) A method for carrying out an analytical test
for the determination of pregnancy is not in any
way associated with commerce, trade and industry
and is contrary to the spirit of the term
"working on a commercial scale" referred to in
the Patent Act.
The subject matter of the rejected claims 8-11 relates
to a method for the detection of HCG in urine by mixing the
HCG antiserum with the urine to be tested, incubating, mixing
the reagent of the invention with the antiserum urine mixture,
incubating the mixture, centrifuging and comparing the super-
natant with a turbidity standard.
The examiner took an action in November 17, 1965 in which
he stated :
"Claims 8-11 are refused as being directed to testing
methods for the diagnosis of pregnancy which do not come
within the realm of patentable subject matter"
Applicant responded May 9, 1966 and attempted to traverse
the objection by arguing that the claims set forth a new and
useful process and thus come within Section 2(d) of the Act.
In a letter dated June 14, 1966, the Examiner again
rejected the claims as relating to a testing method for the
diagnosis of pregnancy which is not within the field of
inventions as defined in Section 2(d) of the Patent Act, and
he also stated that a method for carrying out an analytical
test for the determination of pregnancy is not in any way
associated with commerce, trade and industry.
Applicant in a letter dated December 5, 1966 reiterated
his stand that the claims came within Section 2(d) of the Act.
He submitted a definition of "art" and argued that the claims
met the definition and thus complied with Section 2(d). Argu-
ment was also presented for the purpose of traversing the
second branch of the examiners refection.
In February 28, 1968 the examiner rejected claims 8-11
in a Final Action in accordance with Section 46 of the Patent
Rules, on the grounds that the subject matter of claims 8-11
does not fall within the limits of what may be patented under
Section 2(d) of the Patent Act, and that a method for carrying
out an analytical test Por the determination of pregnancy is
not in any way associated with commerce, trade and industry
and is contrary to the spirit of the term "working on a
commercial scale" referred to in the Patent Act. The examiner
also stated that methods of killing insects, treating liquids
to remove bacteria, etc. are of value to the field of economy,
whereas information regarding the condition of a human being
is the only result of the diagnostic method claimed in the
present application.
In a response submitted May 24, 1968, the applicant
reque ated a review of the refection by the Commissioner of
Patents. Applicant argued that there is nothing in Section 2(d)
of the Patens Act which requires that an invention, to be patent-
able, must be capable of being worked on a commercial scale.
The applicant referred to Section 67(2)(s) of the Patent Act
which by the terminology employed, implies that some inventions
are not capable of being worked on a commercial scale.
Section 2(d) of the Patent Act reads as follows:
"Invention" - means any new and useful art, process,
machine, manufacture or composition of matter, or
any new and useful improvement in any art, process,
machine, manufacture or composition of matter.
In my view claims 8-11 define a method used in a diagnostic
process for determining the presence or absence of pregnancy
in a human female and the basis or the rejection, as I see it,
is that the examiner considers that the method does not come
within the provisions of Section 2(d) of the Patent Act. The
second part of the examinerts objection which the agent has
identified as being based on the terminology of Section 67(2)
(e) of the Patent Act will not be dealt with in detail since
I feel that it is not a strong ground on which to base a
rejection.
Dealing then with Section 2(d) of the Patent Act the agent
has contended repeatedly that the method of the claims in
question is new and useful and possesses the added attribute
of inventive ingenuity and is therefore patentable. The
Patent Office has consistently, over many years, held the view
that everything that is new and useful is not necessarily
patentable even though inventive ingenuity is present and the
restrictions of Section 28(3) do not apply. This view has been
supported in a recent Exchequer Court decision, Lawson v.
the Commissioner of Patents handed down by Cattanach J. April
17, 1970.
In the Lawson case Cattanach J, said: "I take it as well
settled that all new and useful arts and manufactures are not
necessarily included in Section 2(d) of the Act".
Cattanach J. went on to discuss the term "manner of
manufacture", which is used in the English, Australian and
New Zealand statutes, in relation to the words "art, process,
machine, manufacture or composition of matter" which appear
in Section 2(d) or the Patent Act, and concluded that both
groups of words are simply different ways of expressing the
same ideas. He want on to express the view that:
"Manufacture" connotes the making of something. Thus
it is seldom that there can be a process of manufacture
unless there is a vendible product of the process. It
must accomplish some change in the character or condition
of material objects.
In the present case I fail to see how claims 8-11 can be
held to define a manner of manufacture. The method involves
treating urine with reactants under specified conditions and
comparing the appearance of the resulting mixture with a
turbidity standard. Thus the result of the method is merely
a determination by visual observation of the presence or
absence of HCG in the urine being tested. In my view this
is not a "vendible product of the process" as contemplated
by Cattanach J. in the above quotation.
I find therefore that the method claims 8-11 do not set
forth an invention within the definition of Section 2(d) of
the Patent Act.
R. E. Thomas,
Chairman,
Patent Appeal Board.
I concur in the findings of the Patent Appeal Board and
uphold the examiner's rejection of claims 8-11.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa,
Ontario, this
26th day of October, 1970.