DECISION OF THE COMMISSIONER
STATUTORY S. 2(d): Apparatus Involving Mental Step By Its Operator
A claim for an apparatus involving "means-plus-function" elements
does not include its operator and the exercise of human judgement as
an essential part as held in the Final Action. However, directing such
a claim to a "closed-loop system" may be misleading and amendment
suggested.
FINAL ACTION: Overruled
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This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated February 9, 1972 on
application 070,479. This application was filed in the name of
John Wildberger and refers to "Manual Reference Input System For Process
Computer". The Patent Appeal Board conducted a hearing on May 11, 1972.
Mr. A. Nelson represented the applicant.
In the prosecution terminated by the Final Action the examiner
rerused the claims of the application under Section 2(d) of the Patent
Act as being outside the statutory field of invention.
(The Decision quotes two paragraphs of the Final Action).
In the response of April 3, 1972 the applicant stated in part:
In this Final Action, the Examiner rejected Claims 1 to 6
for the reason stated in the third paragraph, which
paragraph reads as follows:
"In order that the system claimed in claims 1-6
may be put into practice, it is necessary that a
computer operator exercises human judgement."
Then, in the following paragraph he justifies his reasoning
by quoting from the disclosure and commenting on these
quotations. What he says here is true; certainly operating
equipment constructed according to the invention claimed would
require considerable skill on the part of an operator.
This also holds truce for many other types of equipment on
which apparatus claims are granted regularly. For example,
operating a novel adding machine covered by apparatus claims
could well require a great deal of skill by the operator,
particularly if the machine is to be put to its best use.
In other words, the mental and physical skill of the adding
machine operator provides the link which makes the use of the
invention successful. In the case of the invention disclosed
in this application, the operator certainly is an important
link in making effective use of it.
If the Applicant were claiming a process setting out the
manipulative steps that an operator would follow in using the
apparatus to control a manufacturing operation, it is agreed
that the process would involve mental judgement on the part
of the operator. However, the claims in the application are
not directed to a process, but to apparatus. Nowhere in the
claims is there any positive recitation of an operator
performing manipulative steps.
This application relates to "Manual Reference Input System For
Process Computer". (The Decision quotes claim 1).
It is noted that the claims are rejected under Section 2(d) of the
Patent Act, and more specifically: "In order for the system claimed
in claims 1-6 to be put into practice, it is necessary that a computer
operator exercise human judgement".
Having studied the prosecution of the application it appears that
claim 1 has been interpreted by the examiner to read, with reference
to the system, as a closed loop system and that the operator is a
necessary part of that system. The Board disagrees with this
interpretation for the following reasons.
It is noted that the system set out in claim 1 includes components
designated as follows: manual reference input program 19, systems
program 12, regulator program 14, output program 15, scan program 16
and display program 20.
The claim is written in the form of a combination comprising
"Means-plus-function elements", and it is well settled that this is a
proper form of claim if it is unambigous and meets the requirements
of Section 36(2) of the Patent Act. Further, it has been established
that the claiming of "means-plus-function elements" in an apparatus do
not necessarily embrace a human being as an essential part of the claim.
However, if the Board had to consider a process setting out manipulative
steps that an operator would follow is using such an apparatus to
control a manufacturing operation, then the rules which apply to the
consideration of mental steps would govern.
Notwithstanding, the Board agrees with the examiner that the
preamble to the claim with respect to the system might be misleading,
and therefore it is recommended that claim 1 amended to read:
"In a process control computer comprising..." (or the equivalent).
It is also suggested that the 4th line of claim 2 be amended to read:
"...detector for signalling or displaying the malfunction...", and
that the last six words of claim 3 be deleted.
The Board is satisfied that there is no basis for the objection on
the grounds that the judgement of the operator forms part of the
apparatus as claimed, but simply related to that part of the disclosure
covering the operation of the apparatus.
The Board recommends that the decision of the examiner, to refuse
the claims of the application on the grounds stated, 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 is returned to the examiner for
further prosecution.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 29th day of May, 1972.
Agent for Applicant
Mr. R.A. Eckersley,
214 King Street West,
Toronto 129, Ontario.