DECISION OF THE COMMISSIONER
(1) STATUTORY - S. 2d: New arrangement of Printed or Design Matter.
(2)OBVIOUS: Arrangement of Printed Matter Met by Prior Art.
(1) A new arrangement of printed matter is statutory if it sub-
serves some functional limitation in a combination as
opposed to solely its intellectual, literary or artistic
connotations.
(2) The arrangement of printed matter is shown in the prior art
and any difference his solely in the meaning to be given the
respective indicia
.
FINAL ACTION: Affirmed in part
IN THE MATTER OF a request for a 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 040,799
filed January 22, 1969 for an invention entitled:
GAME
Agent for Applicant
Messrs. Gowling & Henderson
Ottawa, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
May 3, 1971 refusing to allow application 040,799.
Application 040,799 was filed on January 22, 1969 in the
name of Allan Cowan and refers to a "Game".
In the prosecution terminated by the Final Action the
examiner refused the single claim on two grounds. First, the
claim is directed to a game piece whose structure is simply an
equilateral triangle met by the prior art; and secondly, the
claim describes printed matter which is unpatentable, and the
use of the game piece in playing the game is also unpatentable.
In the Final Action the examiner applied the following
references:
United States Patents
1,564,443, Dec. 8,1925 Rabold
647,814 Apr.17,1900 Dorr
487,797 Dec.13, 1892 Thurston
The examiner maintained the stand that the game piece in
which the structure is simply an equilateral triangle is not
patentable especially in view of the Rabold and Dorr patents.
He also maintained that the printed matter is unpatentable. In
this action the examiner stated:
British courts have consistently rejected printed matter
as suitable subject matter for a patent, and that is
the policy of the Canadian Patent Office. The "Clusters
of numbers" which the applicant stresses as novel are
obviously nothing more than printed matter, just as
the indicia on the single game piece of the claim are
printed matter.
As pointed out in the Office Action of March 16, 1971,
the applicant's arrangement of indicia is, in any case
a mere design change with some advantages and some
disadvantages, as pointed out in the case of a plurality
of players surrounding the game location. The location
of the indicia near the corners of the triangular game
pieces follows the usual domino concept of placing the
indicia adjacent the mating edges.
The rejection of the claims,and of the application,
is therefore repeated on both grounds, i.e. that
changes in printed matter to facilitate a method of
playing a game do not add patentability to an old
structural element, and that the differences defined
herein are merely design differences which do not
constitute patentable invention over the applied
references.
In applicants response to the Final Action, dated August 3,
1971, he states:
Under British law, it is established that arrangements
of printed matter are patentable where the arrangement
serves a mechanical purpose, See, for example,
Cooper's Application 19 R.P.C. 53, Fishburn's Appli-
cation 57 R.P.C. 245, and Alderton's Application 59
R.P.C. 56 at 59; these cases are referred to on
page 24 of "Patent for Inventions" (3rd Edition) by
T.A. Blanco-White. One mechanical purpose which has
been accepted as giving patentable utility is where
an arrangement of printed matter on cards allows the
cards to be used together in a game so as to cooperate
in a synergistic manner. (Cobianchi's Application
1953 70 R.P.C. 199).
Applicant has explained in detail throughout the
prosecution of this application that a new result
is achieved by the unique arrangement disclosed in
applicant's specification and claimed in applicant's
only remaining narrowly drawn claim. As indicated
in Figure 3 of the applicant's drawing, a cluster of
numbers presented by the game pieces shown therein
can be aligned to read radially outwardly from the
meeting point of the several game pieces. Also,as
indicated in Figure 5, the numbers can be aligned to
read from a common direction. Each of these numerical
arrangements would have functional significance during
the course of a game. However, such a variance in
arrangements is only possible due to the placement of
the Arabic numbers in the corner most tips of the
triangular game pieces with the alignment of all the
numbers of each piece to read only from one direction.
The applicant believes that the synergistic interaction
of the game pieces embodied within the applicant's in-
vention falls within the definition of patentable
subject matter referred to on page 24 of the fourth
edition of Canadian Patent Law and Practice, by Fox,
and further defined by the decision in Cobianchi's case.
Additionally, applicant strenuously asserts, that since
the differences between the applicant's arrangement
and the prior art are precisely the differences which
permit applicant's arrangement to achieve a new result,
unobtainable by the prior art, such differences cannot
be merely of a design nature but are functional in
the art to which the invention pertains. Such a
functional nature is not so apparently utilitarian in
the game art as it would be in the industrial machine
arts; nevertheless, the utilitarian nature and the
synergistic functioning of the applicant's arrangement
are clear.
After reviewing the grounds for rejection set forth by the
examiner, as well as the arguments set forth by the applicant, I
am satisfied that the rejection is well founded on one of the
grounds but not the other.
The application refers to a "Game". Claim 1 reads as follows:
A game piece comprising a planar body configured as
an equilateral triangle to define three acutely angular
corner positions, a face surface of said body being
marked with three Arabic numeric indicia, one of each
said indicia being disposed in one of each of said
corner positions, all of said indicia being alligned
in the same direction to orient the same for reading
thereof from a common location, each of said indicia
being disposed wholly within a cornermost location
immediately adjacent a tip edge of said triangle, the
overall area of said face surface being several times
larger than the sum of the areas displaying said
indicia to define unmarked areas along each edge of
said body between two of said indicia located at
opposite terminal ends of said edge, said unmarked
areas.being several times larger than the sum of the
areas displaying said two indicia, whereby several of
said game pieces are operable to visually completely
isolate a variety of duster-like geometric patterns
in response to the positioning of the indicia of one
piece immediately adjacent matching indicia of another
piece in accordance with game rules.
The consideration of prime importance to the outcome of
this decision is the question of invention with respect to an
arrangement of printed matter, on which the Final Action is
predicated.
I find that the position of the examiner needs some clarifi-
cation. The examiner stated that British Courts have consistently
rejected printed matter as suitable subject matter for a patent.
The examiner should have referred to "... mere printed matter
....". Under British law it is well established that a new
arrangement of printed or design matter may form the subject
matter of a patent if it performs a mechanical function or
purpose in consequence of use. That is, if novelty lies solely
in the meaning of printed words or the aesthetic appeal of
printed or design matter, it is not considered patentable subject
matter.
Therefore, I am satisfied that if a new arrangement of
printed matter imports some functional limitation in a combination
so as to produce a synergistic result,which is useful in some
practical way, as oppose to intellectual, literary or artistic
connotations, it may be considered as suitable subject matter
for a patent.
The examiner has also refused the claim and the application
on the grounds that the patents to Rabold and Dorr both show
game pieces having the same structure including indicia thereon,
stating that a change in indicia is a mere design change.
The patent to Rabold discloses a triangular piece with
different colored indicia on each corner plus numeric indicia
on one of the corners. The patent to Dorr shows triangular
pieces with different indicia in the form of different numbers
of dots in the respective corners. I find the structure of the
game piece is met by this prior art.
Applicant has discussed different points as indicating an
improvement over the cited prior art. With respect to these
points the patent to Thurston shows playing pieces with indicia
in the form of numbers in various locations, and a plurality of
pieces when assembled having all numbers readable from a common
direction. Also in the disclosure of the patent to Rabold,
page 2, line 20 reads, "... the three corners of each common
piece are colored or otherwise made identifiable to indicate
different principal activities .. ." . The otherwise referred
to could cover numeric and other forms of indicia. This patent
also refers to bonus scores, page 3, line 7 reads, "... sixteen
pieces, each having a similar colored corner may justify 125
points ...". The patent to Dorr shows a change in the indicia
of separate pieces to cover many variations.
I note that the physical arrangement of the indicia in
this application is the same as that disclosed in the patent
to Rabold, and thus the only basic difference over this reference
is in the form of indicia used,which forms are shown in the
other references. As a matter of interest, if the claim of
the application was changed to read colored indicia instead of
numeric indicia, the subject matter of the claim would read
substantially on the patent to Rabold.
In view of the above and the previous discussion on the
patentability of printed matter, I am satisfied that no new
arrangement of printed matter is disclosed and any difference
lies solely in the meanings that may be given to the indicia
which depends on the rules of games to be played. It is well
established that rules of play may not be used to substantiate
invention.
I am satisfied that the particular layout may be meritor-
ious, but I fail to see that it merits the distinction of
invention or claim to a patent monopoly. Therefore I recommend
that the decision of the examiner, to refuse the claim and the
application as met by the prior art, be upheld. However, I
also recommend that the ground of rejection with respect to
lack of patentable subject matter in reference to all printed
matter, be withdrawn.
R.E. Thomas,
Chairman, Patent Appeal Board.
I concur with the decision of the Patent Appeal Board
and refuse the grant of a patent. The applicant has six
months in which to appeal this decision in accordance with
Section 44 of the Patent Act .
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario
this 13th day of October 1971.