DECISION OF THE COMMISSIONER
STATUTORY . S.(2)(d): Programmed Computer
A computer that is programmed to operate in one way is a
machine which is different from the same computer programmed
to operate in another way. A process for conditioning the
operation of a commuter is an appropriate form of claims. A
process for controlling the operation of a computer or for
operating a computer may also be appropriate claims if not
objectionable for redundancy. A process comprising of a new
use if the programmed computer may be acceptable while a claim
for a new use of a programmed computer is not.
FINAL ACTION: Directed Office policy overruled.
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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 961,392 filed May 26, 1966 for an in-
vention entitled:
COUNTING PREDETERMINED BITS IN A DATA WORD
Agent for Applicant
Messrs. Kirby, Shapiro, Curphey & Eades,
Ottawa,Ontario.
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This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
June 25, 1971 on Application Serial Number 961,392. This
application was filed in the name of Gerald Waldbaum and
refers to "Counting Predetermined Bits in a Data Word".
On October 20, 1971 the Patent Appeal Board held a
hearing at which the applicant was represented by Mr. Charles
Curphey, Ottawa agent; Mr, James W. Falk and Mr. Howard R.
Popper, Bell Laboratories, New Jersey, U.S.A.; and Mr. R.H.
Barrigar, Ottawa counsel.
In the prosecution terminated by the final Action the
Examiner refused the claims (sixteen in number) on the grounds
that they were directed to non-patentable subject matter under
Section 2(d) and Section 28(3) of the Patent Act.
The facts are as follows:
Claims 1 to 8 and 11 to 13 inclusive are directed to a method
for controlling the operation of a data processor.
Claim 9 is directed to a process for conditioning the operation
of a data processor.
Claims 10 and 16 are apparatus claims in terms of means plus
function.
Claims 14 and 15 are directed to a new use of a data processor.
Representative claims read as follows:
1. A method for controlling the operation of a
data processor to determine the number of 1's in
a data word; said data processor including a
memory for storing data and instruction words at
respective addresses; means for normally controlling
the sequential execution of successively addressed
instruction words; a plurality of registers; means
for storing memory data words in said registers;
means for performing logical operations on data
words in said registers; and means responsive to
the execution of a predetermined instruction word
for examining the data word contained in a predeter-
mined first one of said registers, changing the
rightmost 1 in said first register to a 0 if said
register contains at least one 1, controlling a
transfer to the instruction word at a specified
address if said first register contains all 0's
and storing in a predetermined second one of said
registers the address of the following instruction
word if said transfer is made; comprising the
steps of:
(1) controlling said storing means to store a
memory data word whose number of 1's must be
counted in said first register,
(2) controlling the data processor to execute a
series of identical ones of said predetermined
instruction word, and
(3) comparing the address of the first of the
instruction words in said series with the content
of said second register when a transfer is made
during the execution of one of the instruction
words in said series to derive the number of 1's
in said data word.
9. A process for conditioning the operation of
a data processor to determine the relative numbers
of 0's and 1's in a data word; said data processor
including a memory for storing data and instruction
words at respective addresses; means for normally
controlling the sequential execution of successively
addressed instruction words; a plurality of
registers; means for storing memory data words in
said registers; and means for controlling operations
in the data processor in accordance with the
instruction word being executed; comprising the
steps of:
(1) controlling said storing means to store a
memory data word whose relative numbers of 0's
and 1's must be determined in a first one of said
registers;
(2) executing a series of identical instruction
words, each of which controls the data word in
said one register to have its least significant bit
of a predetermined value changed to the opposite
value, and controls a transfer to be made to the
instruction word at a specified address and the
address of the next instruction word to be placed
in a second of said registers if said first
register contains bits of only said opposite value,
and
(3) controlling the comparison of the address of
the first of the instruction words in said series
with the content of said second register when a
transfer is made during the execution of one of the
instruction words in said series to determine the
relative numbers of 0's and 1's in said data word.
10. A data processor having a memory for storing
data and instruction words at respective addresses;
means for normally controlling the sequential
execution of successively addressed instruction words;
a plurality of registers; means for storing memory
data words in said registers; said data processor
being programmed to determine the relative numbers
of 0's and 1's in a data word in accordance with
instruction Words stored in said memory for:
(1) controlling said storing means to store a memory
data word whose relative numbers of 0's and 1's must
be determined in a first one of said registers;
(2) executing a series of identical instruction
words, each of which controls the date word in said
one register to have its least significant bit
of a predetermined value changed to the opposite
value, and controls a transfer to be made to the
instruction word at a specified address if said first
register contains bits of only said opposite value,
and
(3) determining from the number of the instruction
words in said series which are executed before said
transfer is made the relative numbers of 0's and 1's
in said data word.
14. A process comprising a new use of a stored
program data processing apparatus including an
addressable memory for storing data words and
instructions for processing said data words, means
for executing said instruction, means for transferring
to an instruction stored at a particular address as
the result of executing said instructions and means
for comparing data including said addresses obtained
from said memory unit, said new use being the counting
of the number of bits of a predetermined type in one
of said data words and said process comprising the
steps of:
(a) executing one instruction of a series of
instructions stored in successive addresses in
memory for each bit of said predetermined type
detected in said data word,
(b) transferring to a return address when no more
bits of said predetermined type are detected in
sai d data word, and
(c) comparing the addresses of the first and last
executed ones of said instructions to compute the
number of said predetermined type of bits in said
data word.
15. A new use for the program address register of
a stored program data processing apparatus which
comprises repetitively employing said register to
store the addresses of a series of instructions so
that by subtracting the address of the first of said
series instructions from the address of the last
executed one of said series of instructions the number
of bits of a particular type in a data word may be
ascertained comprising the steps of:
(a) inserting in said register the first address
of a series of instructions stored in successive
addresses in said memory,
(b) executing one instruction in said series of
instructions and incrementing the address in said
register each time a bit of said predetermined type
is detected in said data word,
(c) transferring to a return address when no more
bits of said predetermined type are detected in said
data word, and
(d) subtracting the addresses of the first and last
executed ones of said instructions to compute the
number of said predetermined type of bits in said
data word.
At the outset I think I should make it quite clear that
the Examiner's Actions in this case were complete,proper and
in conformance with Patent Office guidelines relating to
the patentability of computer programs, or, to be more accurate,
programmed computers and programming processes.
Subsequent to the Appeal, and both before and after the
Hearing, a great deal of study and discussion has taken place
in the Patent Office regarding the policy that should be
followed by Canada in relation to the patentability of
computer programs, and the Patent Appeal Board has been
intimately involved in all aspects of the problem.
In both written and oral submissions, the applicant has
stated that it does not consider that computer programs are
patentable subject matter under Section 2(d) or any other
section of the Patent Act, or that instructions or lists of
instructions for operating a computer are patentable. The
Board is in full agreement with this expressed stand and
accepts that the claims in the application do not define a
computer program per se.
The term program is taken to mean a set of ordered steps
or list of instructions specifying the internal changes of
state of physical devices within a data processor. This set
of media including printed or handwritten lists on paper,
punched cards or paper tapes, magnetic tapes or electric wiring.
No matter what form of device is used to record a program, it is
not patentable as a program. This is the conclusion that has
been reached in many countries and I can find no reason for
the Patent Office to hold a different view.
As indicated above, applicant's claims are in terms of a
process, an apparatus, and a new use. I shall deal with the
apparatus first.
Without going into the detailed operation of the invention,
applicant has taken an admittedly known data processor (I shall
use the term "computer" for the purpose of convenience) and
associated it with a telephone system for the purpose of
determining telephone traffic density. The computer is
programmed in such a way that its main memory is made to
count the number of busy trunks as indicated on a 23-trunk
register called a K-register. The register shows busy trunks
as 1 digits and open trunks as 0 digits.
Prior to applicant's invention it was submitted that the
normal way of performing the counting operation required a
counter directly connected to the K-register. The computer
then had to be modified by rewiring it or using a stored
program technique which required three times as many operations
to be performed as are required with applicant's arrangement
which has no direct connection between the K-register and the
main memory and furthermore eliminates the need for the counter
connected to the K-register.
It was submitted that applicant has obtained an unexpected
result since it was not previously appreciated that this known
computer could be made to operate in this manner until applicant
had devised this particular program. It is applicant's stand
that the programmed computer is a machine that is caused to
operate in a new and unobvious way and is thus a new and patent-
able machine.
As I see its the basic question that must be decided here
is whether a computer that is programmed in one way is a
machine which is different from the same computer when programmed
in another way.
In the absence of pertinent Canadian jurisprudence applicant
supported its stand by referring to the following British and
United States cases:
British
Badger Co. Incorporated's Application (1970) R.P.C. 36
Gever's Application (1970) R.P.C. 91
Slee & Harris's Application (1966) R.P.C. 194
United States
In re Bernhart and Fetter 163 U.S.P.Q. 611 (1969)
In re Prater and Wei 162 U.S.P.Q. 541 (1969)
In re Musgrave 167 U.S.P.Q. 280 (CCPA) (1970)
In referring to the British cases the applicant submitted
that the statements of the British Court have significance in
Canada in view of the statement in Lawson v Commissioner of Patents
62 C.P.R. 101 that:
Therefore it is accepted in principle that the
requirements with regard to subject matter of a
patent are co-extensive under the British and
Canadian statutes and that the jurisprudence
established by the Courts of the United Kingdom
is authoritative in Canada. (Emphasis added by
It was submitted that Claim 10 is an apparatus claim
patterned after the form of claim that was found acceptable by
the Superintending Examiner of the British Patent Office in
Slee and Harris (supra). It is noted that this case was not
heard by the Patents Appeal Tribunal since there was no need
for an appeal.
In regard to the other apparatus claims Claim 16, it was
submitted that this is in a form which was allowed in the Badger
case (supra).
It is noted that both apparatus claims recite a plurality
of "means" related to parts of a computer and go on to add
functional statements concerned with "controlling", "executing",
and "determining" in response to a program. The apparatus
claims are thus in terms of means plus function but in my view
they should not be objectionable for that reason alone if the
subject matter is not susceptible of being claimed in terms of
structure.
T have studied the British Patent Office decision in
the Sled and Harris case and the two decisions of the British
Patents Appeal Tribunal listed above and it is clear to me that
both bodies recognize that inventions involving programmed
computers are proper subject matter for patent protection. It
is also clear to me that although some formalities may have to
be observed in drafting claims, there is nothing in the Appeal
Tribunal decisions to suggest hat inventions involving
programmed computers should not satisfy the usual tests of
novelty utility and inventive ingenuity. The Appeal Tribunal
has found that a computer when programmed or controlled in a
certain way is indeed a statutory manner of manufacture. The
computer may be controlled to operate in an obvious manner, in
which cases of course, no patent may be had, or it may be
controlled to operate in a new and unobvious manner, in which
case a patent for a computer so controlled is justified. In the
Gever case (supra) Graham J. carefully set forth the Patent
Office's statement of invention as enunciated by the Superintend
Examiner and after agreeing with it went on to say: "it should,
I think, have stated further that the invention claimed is for a
date processing apparatus which is so constructed and arranged
that the three steps which Mr. Hudson has listed can be carried
out by operating it".
Turning to the United States decision of the United States
Court of Customs and Patent Appeals in the case of In re
Bernhart and Fetter (supra) the Court held that "if a machine
is programmed in a certain new and unobvious way, it is
physically different from the machine without that program; its
memory elements are differently arranged. The fact that these
physical changes are invisible to the eye should not tempt us
to conclude that the machine has not been changed".
The Bernhart & Fetter case corresponds with the British
Badger Co. case. Thus both countries have taken similar stands
with regard to the patentability of programmed computers.
It is recognized that decisions of British courts
exercise considerable authority on Canadian jurisprudence. It
is also apparent that Section 2(d) of the Patent Act closely
resembles Section 101 of United States Code, Title 35-Patents.
In view of au the foregoing I have reached the conclusion
that claims 10 and 16, insofar as they define a machine
which is programmed or controlled so as to operate in a new
and unobvious manner, do not offend Section2(d) of the Patent
Act.
Having determined that the subject matter of Claims 10
and 16 falls within Section 2(d) of the Act, the rejection
under Section 28(3) fails because the claims are not directed
to a scientific principle or abstract theorem.
Dealing now with Claims 1 to 8 and 11 to 13 which are
directed to a method for controlling the operation of a
computers it is observed that this is a type of claim which
does not appear to be allowable by the British Patent Office
because the result of the method would be intellectual informa-
tion and therefore not a manner of manufacture.
In the present case I think it is proper to equate a
method for controlling the operation of a machine with a
method of operating a machine and since the Canadian Patent
Office regularly permits claims to methods of operation I
would not normally entertain objections to such claims.
However since the apparatus claims in this application
distinguish the invention by reciting method steps it may be
that claims 1 to 8 and 11 to 13 should be scrutinized for
redundancy although since this point was not raised in the
Examiners Final Action I am not required to make a determina-
tion.
Claim 9 defines a process for conditioning the operation
of a data processor. It was submitted that this is a type of
claim allowed by the Patents Appeal Tribunal in than Badger
case. I can find no reason for objecting to this claim on
the ground that it does not properly define the invention.
Claim 14 defines a process comprising a new use of a
stored program data processing apparatus. Claim 15 defines a
nnw use for the program address register of a stored program
data processing apparatus. In Lane-Fox v The Kensington and
Knightsbridge Electric Lighting Co. Ltd. 9 R.P.C 416, Lindley,
L.J. said:
On the one hand, the discovery that a known thing can
be used for a useful purpose for which it has never been
known before is not alone a patentable invention, but
on the other hand, the discovery how to use such a
thing for such a purpose will be a patentable invention,
if there is novelty in the mode of using it as distinguish-
ed from novelty of purpose.
This statement supports the Patent Office practice of
refusing claims directed to a new use and in my view Claim 15
is not a proper type of claim since it merely expresses a
purpose. Claim 14 on the other hand may be considered an
acceptable type of claim since it expresses a mode of using
the known computer, however it may still be subject to the
same objection (redundancy) which I suggested in connection
with Claims 1 to 8 and 11 to 13.
In conclusion I am satisfied that the answer to the basic
question which I stated earlier, is that a computer that is
programmed in one way must be deemed to be a machine which is
different from the same computer when programmed in another way
or unprogrammed. Accordingly I find that the Examiner's
refection under Section 2(d) and Section 28(3) of the Patent Act
is not proper and recommend that the Final Action be withdrawn.
R.E. Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board
and withdraw the Final Action. The application will be returned
to the examiner for resumption of prosecution.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 8th day of December, 1971.