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 908,951 filed August 7, 1964 by
Margaret Treacy for an invention entitled:
PREGNANCY TEST
Agent for 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 16, 17 and 18 of application 908, 951. 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 16, 17 and 18 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 air way asso-
ciated 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 16, 17 and 18
relates to a method for the detection of HCG in urine by mixing
the HCG antiserum with the urine to be tested and they mining the
reagent of the invention with the antiserum urine mixture, agitat-
ing the mixture and observing it for agglutination of the particles
of the reagent.
The examiner took an action in November 17, 1965 in which
he stated:
"Claims 16, 17 and 18 are refused as being directed
to testing methods for the diagnosis of pregnancy
which do not come within the realm of patentable
subject matter".
In a letter dated May 6, 1966, the applicant requested
reconsideration of the rejection stating that claims 16, 17 and
18 fully complied with Section 2(d) of the Patent Act and that
they called for definite procedural steps which are to be followed.
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.
The applicant responded in a letter dated December 5, 1966
and attempted to traverse the objection on the ground that claims
16, 17 and 18 come within the fields of invention set forth in
Section 2(d) of the Patent Act. A definition of "art" was given
and argument presented to show that the method of claims 16, 17
and 18 did come within that definition. Argument was also advanced
against the second branch of the rejection.
On February 28, 1968 the examiner rejected claims 16, 17
and 18 in a Final Action in accordance with Section 46 of the
Patent Rules on the grounds that the subject matter od claims 16,
17 and 18 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 for the determination of pregnancy is not
in air 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 is the present application.
In a response submitted May 23, 1968, the applicant requested
a review of the rejection by the Commissioner of Patents. Applicant
argued that there is nothing in Section 2(d) of the Patent Act
which requires that an invention, to be patentable, must be
capable of being worked on a commercial scale. The applicant
referred to Section 67(2)(a) 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 16, 17 and 18 define a method used in
a diagnostic process for determining the presence or absence
of pregnancy in a human female and the basis of 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 examiner's objection which
the agent has identified as being based on the terminology of
Section 67(2)(a) 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 attri-
bute 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)
of the Patent Act, and concluded that both groups of words are
simply different ways of expressing the same ideas. He went 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 16,17 and
18 can be held to define a manner of manufacture. The method
involves treating urine with reactants under specified conditions
and observing the appearance of the resulting mixture to determine
which of two conditions exists. 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 16, 17 and 18 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 16, 17 and 18.
Decision accordingly,
A .M .Laidlaw,
Commissioner of Patents
Dated at Ottawa
this 26th day of
October, 1970.