DECISION OF THE COMMISSIONER
IN THE MATTER of a request for a review by the
Commissioner of Patents of the Examiner's Final
Action under Section 47 of the Patent Rules (Prior
to the Amendment by Order-in-Council P.C. 1970
728 effective June 1, 1970).
AND
IN THE MATTER of a patent application serial number
862,758 filed November 21, 1962 for an invention
entitled:
SWINE FEEDS
Patent Agent for Applicant: Messrs. Cowling & 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 1 and 2 of
application number 862,758. The request was made in accordance with Section
46 of the Patent Rules.
The facts are as follows:
The subject matter of the application is set forth in the two claims
under rejection and which are the only claims in the application:
1. A process for increasing the rate of growth of normally healthy
swine which comprises feeding said swine a nutrient ration containing
from about 0.01 to about 5% by weight of monosodium glutamate to
produce weight gain.
2. A process as claimed in claim 1 wherein the amount of monosodium
glutamate ranges from about 0.05 to about 1% by weight.
The application was filed November 21, 1962 with a U.S. convention date
of December 7, 1961 and had 12 claims which included process claims similar
in scope to the above claims and also claims to the feed composition.
During the prosecution which preceded the examiner's Final Action the
claims to the composition were cancelled and the examiner rejected the process
claims as being the mere use of a feed ration, as being a physiological
process which is not reproducible and over which the applicant has no precise
control, that the process was therefore indefinite and contrary to Section 36(1)
of the Patent Act, and that a method of feeding animals is not subject within
the field of invention defined in Section 2(d) of the Act.
The applicant presented arguments against each of the objections in
turn, pointing out that the claims were quite specific and the process
possessed novelty, and gave unexpected results. The applicant expressed
the view that the process is reproducible and admits of precise control
within practical limits. The applicant suggested that claims of this type
have been allowed in the U.S. and even in the U.K. where the comparable
section of their Act is much more restrictive than Section 2(d) of the
Patent Act.
On January 15, 1970 the examiner issued a Final Action under Section
46 of the Patent Rules refusing claims 1 and 2 on the grounds that they
defined a method of feeding animals, that feeding of animals is a physio-
logical process over which the applicant has no precise control and therefore
the process is not within the field of inventions defined in Section 2(d) of
the Act .
The applicant responded in a letter dated July 15, 1970 asking the
Commissioner to review the Final Action and indicating that a hearing might
be desired. " Accordingly a hearing was arranged and held by the Patent Appeal
Board on October 29, 1970. Mr. G.A. Macklin, supported by Mr. N.S. Hewitt
represented the applicant.
Mr. Macklin argued that applicant's process applied to healthy animals,
thus removing it from the human area and also avoiding medical processes.
He submitted that there was nothing in Sections 2(d) or 36 of the Patent Act
which exclude physiological processes either specifically or generally and
further pointed out that the Patent Office has been allowing claims to a
variety of physiological processes. Mr. Macklin referred to earlier objec-
tions by the examiner in the prosecution and maintained that the applicant
has shown that the process is in fact reproducible and that control of the
process can be exercized within reasonable limits.
The Board's attention was directed to the Swift decision 1961 RPC 129
which is interesting but which I do not consider is a parallel case. Referenc,,-
was also made to the recent decision of Cattanach J. in the case of Lawson
Commissioner of Patents reported in CPR vol 62 and it was submitted that th.
applicant's process fell within the judge's definition of "art".
Mr. Macklin was asked for his stand in regard to the supplement to
Office Notice No. 119A on Non-Statutory Subject Matter which had been distri-
buted to Patent Agents in order to obtain their views on this aspect of
Office practice. He submitted that the paper merely set forth guidelines
which at this stage should not be binding on the Patent Appeal Board and in
any case the applicant's process conformed to the criteria of the guidelines
and that even though monosodium glutamate is a chemical, the use of it in
applicant's process did not make the process a chemical process.
Further reference was made by Mr. Macklin to a recent decision by Kerr J.
in the Exchequer Court case of Tennessee Eastman v. Commissioner of Patents
but since this case is under appeal I will make no comment.
I have carefully studied the Final Action and the written and oral
argument presented against the Final Action and I am unable to find
support for the rejection which the examiner has made. I agree with the
examiner that applicant's process is a physiological process, however, in
his disclosure, applicant has demonstrated, by normal testing methods, that
an unexpected weight gain per unit of feed is obtained when monosodium
glutamate is added to the feed. Applicant is concerned with feeding swine
on a commercial scale, that is, he is concerned with feeding groups of
animals rather than a single animal. It is clear to me, from reading the
disclosure and studying the arguments presented, that the physiological
process defined by applicant in his claims is one that is reproducible and
is capable of control within reasonable limits, and furthermore it results
in an enhanced vendible product. For these reasons I do not agree with the
examiner's rejection. I do not feel it incumbent on me at this time to
make any finding as to the allowability of applicant's claims other than
as they stand rejected by the examiner's Final Action and it is my opinion
that the Action should be withdrawn.
R.E. Thomas,
Chairman,
Patent Appeal Board.
I agree with the findings of the Patent Appeal Board and direct that
the Final Action be withdrawn and the application be remanded to the
examiner for further prosecution.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario
this 9th day of November, 1970.