COMMISSIONER'S DECISION
REDUNDANT CLAIMS: Rule 43 and Section 38.
Claims for a new combination and for that combination with added features
are neither redundant nor directed to different inventions. Only one
inventive step is required of each new combination claimed; and the
applicant is entitled to claim his invention in. terms of those things
or combinations which he regards as new and in which he claims an exclusive
property.
FINAL ACTION: Reversed
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This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated August 9, 1972
on application 008,653. This application was filed in the names
of James H. Case and Neil C. Stewart and refers to "Digital
Computing and Information Processing Machine and System".
In the prosecution terminated by the Final Action the examiner
:refused to allow the application on the grounds that Section 43
of the Patent Rules or alternatively Section 38 of the Patent
Act have not been complied with.
In this action the examiner stated in part:
All the claims appear to be allowable over the art of
record.
Claims 4 to 6 are held to be directed to the structure
of an array of cells of word organized type. Such a
structure forms a sub-combination of a digital information
processing machine as referred to in the preamble to
claim 4. Thus, the digital information processing machine
forms the immediate environment of the cell array. It is
the examiner's contention that the addition of either a
digital storing and transferring machine or of a second
machine of the type defined in claim 4, to the array
defined in claim 4 does not produce a result or effect
which is not the sum of the known characteristics of
the parts or the obvious result to be expected from
their known characteristics. Furthermore the addition
of such machines goes beyond the immediate environment
in which the cell array would normally be found.
In view of the above, it is clear that claim 11 is not
patentably different from claim 4, claim 12 is not patent-
ably different from claim 11, and claim 13 is not patentably
different from claims 4 to 6. In view of Rule 43 of the
Patent Rules applicant is required to elect which of
claims 4 to 6 or 11 to 13 he desires to have allowed and
to cancel the others.
From applicant's arguments that claims 11 to 13 add new
features to claims 4 to 6 respectively to form new
combinations of features it appears that applicant is
arguing that the subject matter of claims 11 to 13 is
inventive over that of claims 4 to 6. If applicant
wishes to pursue this line of argument he is required
to restrict his claims to a single invention.
The applicant in his response to the Final Action,dated November
7, 1972 stated in part:
From basic principles, the objective of asserting each
of claims 11 through 13 is to provide a claim which is
narrower than claim 4 by the addition of some feature
to provide a different combination of features.
It has always been accepted by the Patent Office that,
if a claim is found to be allowable from the aspect
of novelty, then a dependent claim adding a further
feature must also be allowable (at least from the
point of view of novelty), it being self-evident
that if the combination of (a) through (f) is novel,
then the combination (a) through (g), formed by
adding another feature, must also be novel.
As regards the remarks that these claims 11 through 13
define features beyond the immediate environment of the
machine defined in Claim 4, even if this were true, its
importance is not seen.
Claims 11 through 13 are each dependent directly or
indirectly on one of the presumably allowable claims,
and it cannot be seen how, by adding further features,
one can possibly turn a patentable combination into
an unpatentable combination.
This application relates to an array of cells of word organized
type which is used in association with a digital processing
machine. The claims 1, 4, 11, 12 and 13 read as follows:
Claim 1
A digital information processing machine comprising an array
of cells of word organized type arranged for operation in
parallel with each other, each cell having means for exchanging
information with neighboring cells in a region surrounding
the cell and at least two cells of the array having
respective surrounding regions which have no cells in
common, and power and clock pulse bus lines connected to
each cell of the array for supply of external power and
clock pulses at such a rate and in such a manner that
consecutive pulses are separated from each other far
enough in space and time so that the surrounding region
of any cell within the array contains at most one power
and clock pulse at any given time.
Claim 4
A digital information processing.machine comprising an
array of cells of word organized type arranged for in-
dependent operation in parallel with each other, each cell
having means for addressing all of the cells within a
region surrounding the cell limited in extent by bit
length of an instruction word, at least two cells of
the array having respective surrounding regions which
have no cells in common, means for transferring information
between any cell in the array and other cells with the
region surrounding the cell, and means for deactivating the
cells of the array in order to stop their execution of the
instructions, and power and clock bus lines connected to
each cell of the array for supply of external power and clock
pulses at such a rate and in such a manner that consecutive
pulses are separated from each other far enough in space
and time so that the surrounding region of any cell will
contain at most one such pulse at any given time.
Claim 11
A machine as claimed in claim 4 having functionally
connected to a cell thereof at least one digital
storing and transferring machine.
Claim 12
A machine as claimed in claim 11 in which the digital
storing and transferring machine is a machine as claimed
in claim 1.
Claim 13
A digital computing and information processing system
comprising at least two machines as claimed in any one of
claims 4 to 6 and means for transferring information
between at least one cell of one of the machines and at
least one cell of at least one other of the machines.
The first question to be decided is whether claims 11 to 13 are
objectionable under Section 43 of the Patent Rules, keeping in
mind that according to the examiner all the claims of the application
appear to be allowable over the cited art.
This section reads:
No more claims shall be allowed than are necessary
adequately to protect the invention disclosed, and if two
or more claims differ so slightly that the several claims
could not be allowed in separate patents the applicant
may be required to elect which of such claims he desires
to have allowed and cancel the others.
The intent of this section is to limit an undue multiplicity of
claims in an application; situations where there is no significant
distinguishing feature but merely variations of language without
any variation of the scope of the claims.
In claim 11, a digital storing and transferring machine has been
added to claim 4; in claim 12, a specific digital storing machine
as claimed in claim 1 has been added to claim 11. Claim 13 is
directed to a digital computing and information processing system
comprising at least two machines of the type as defined in claims
4 to 6.
Of interest in the determination of this case is the consideration
of the court in Hercules Inc. v Diamond Shamrock Corp. (1970) 62
CPR 43, wherein,Jackett P. of the Exchequer Court stated at page
61:
Having thus described his "invention" or discovery in
words that would enable his colleagues in his particular branch
of learning or of the art to make use of it, the inventor is
faced with the requirement in S. 36(2) that he shall state
in "explicit" terms the things or combinations in which he
claims an exclusive property.... If he frames his claim so
that it does not cover the whole of what he discovered, others
will be able to take advantage of his disclosure without
infringing the monopoly that he seeks. This problem certainly
puts an inventor and his advisors in a position where they must
be very careful to establish precisely what he did and did not
invent, or it would do so if the permissiveness of S. 38 did not
allow the Commissioner an implied discretion to permit inventors
to "claim" in effect in the alternative. With the Commissioner's
acquiescence, what happens, in at least some cases, is that, in
the first instance, a claim is made in the widest terms possible
for the subject matter described in the specification and then, by
what seems to be an infinite variety of changes in the terms of
the first claim, the inventor makes additional claims by which
the invention is variously escribe by adding additional limiting
factors not included in the initial claim. (emphasis added)
Accordingly, the Board is satisfied that limiting features have been
added in claims 11, 12 and 13 and the addition of such features to
a new combination, forms additional new combinations to which applicant
is clearly entitled under Section 36(2) of the Patent Act.
The Board is therefore satisfied that the rejection of claims 11
to 13 under Section 43 of the Patent Rules is not justified.
The second ground of rejection, that alternatively Section 38 of
the Patent Act is not satisfied, appears to be an interpretation
by the examiner of the statements of the applicant that claims
11 to 13 add features to claims 4 to 6, to form new combinations,
in view of which the examiner requires restriction of the claims
to a single invention.
The examiner appears to have misconstrued the foregoing statement
of the applicant to imply that a further inventive step must be
proven to establish the patentability of the new combination with
an added,feature. Only one inventive step is required of a new
and patentable combination. While additional features such as;
a digital storing and transferring machine; and a digital computing
and information processing system, have been added to the already
allowable claims, the requirement has been met that the added claims
state distinctly and in explicit. terms the things or combinations
that the applicant regards as new.
In the circumstance, therefore, the Board is also satisfied that
the rejection under Section 38 of the Patent Act is not justified.
The Board recommends that the grounds of rejection should be with-
drawn for the reasons stated herein.
J.F.Hughes.
Assistant Chairman
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and withdraw
the Final Action and return the application to the examiner for
resumption of prosecution.
Decision accordingly,
A.M. Laidlaw
Commissioner of Patents
Dated at Ottawa, Ontario
this 18th day of April, 1973
Agent for Applicant:
Gowling, MacTavish, Osborne & Henderson,
Box 466, Terminal A,
Ottawa, Ontario
K1N 8S3