COMMISSIONER'S DECISION
STATUTORY SUBJECT MATTER-S 2:Testing and Developing The
Capacity of Human Lungs
Following the principles of the S.C.C. in Tennessee Eastman v.
Commissioner, the process for measuring and increasing the
capacity of air sacs of human lungs lies in the field of
practical application, and is not related to medical treatment
in the strict sense or in the use of a medicine. The process
has utility in the sense that the process is controllable by
the means disclosed. The rejection was on the basis that the
process performs on a non-industrial product, that it is
essentially non-economic, and that it is dependent on
professional skills.
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 17, 1972
on application 016,962. This application was filed on April 8,
1968 in the name of Edward Fitz and refers to "A Device For
Developing The Lungs". As stated by the applicant in the
specification, "This application refers to a device and method
for increasing the capacity and strength of lungs. More
particularly, this invention relates to a device and method for
exercising the lungs and improving the capacity thereof."
In the prosecution terminated by the Final Action the examiner
rejected claims 7 and 8 in that they are directed to subject
matter not allowable under Section 2 of the Patent Act. Claims
7 and 8 read:
7. A method for measuring the increase in capacity and
strength of air sacs in human lungs comprising the steps
of: collecting air expelled therefrom against an
opposing force measuring the amount of air collected,
recording the amount and repeating each of the foregoing
steps.
8. A method in accordance with claim 7 including the steps
of varying the opposing force after each repetition of the
method.
In the Final Action the examiner stated in part:
Claims 7 and 8 are directed to a diagnostic method for
use on a living body, i.e., to diagnose the capacity and
strength of the lungs, and as such, even though the wording
of the claims calls for "measuring the increase", the method
would also indicate any "decrease" and thus in effect the
method tests or diagnoses the condition of the lungs in
terms of capacity and strength.
Although the present method of measuring the increase in
capacity and strength of the lungs in a human body may be
new, useful, and unobvious, it is however, not susceptible
of industrial application. The method here, which is performed
on a non-industrial product i.e., on lungs in a human body, is
rather conceived as being essentially non-economic as it does
not produce a result in any way associated with trade, commerce
or industry in the sense that those expressions have been used
in court decisions on patent applications directed to methods
dependent on professional skill. (See Lawson vs. Commissioner
of Patents, or Tennessee Eastman Co. vs. Commissioner of
Patents); the matter contained by the said method claims is
also contrary to the spirit of the expression "working in a
commercial scale", referred to in the Patent Act.
The applicant, in his response to the Final Action dated January
25, 1973, stated in part:
The Examiner's rejection is based on the argument that
even though the method may be new, useful and unobvious,
it is performed on a non-industrial product. This
argument is evidently based on the British line of cases
which are based on an interpretation of the British
Statute to require a vendable product. The Examiner
has referred to the Lawson and Tennessee Eastman cases,
which might be taken as implying that the principles
of the British Statute are applicable in Canada. Since
then, however, the Supreme Court of Canada has rendered
its Judgment in Tennessee Eastman Company et al vs.
Commissioner of Patents. The reasoning of the Supreme
Court makes it clear (at page 8) that a method of
surgical treatment involving the use of a substance
is not patentable, as otherwise there would be an
easy way out of the restriction as to the patentability
of substances under Section 41(1) of the Patent Act.
This ground of decision is obviously inapplicable to
the present case, as applicant is not trying to obtain
protection for a medicinal substance. Also on page 8
of the Tennessee Eastman case the Court makes it clear
that decisions dealing with the patentability of in-
ventions under the United Kingdom Act are not entitled
to the weight attributed to them by various authors in
view of the substantial differences between the British
and Canadian Statutes. Therefore as the Examiner's
objection with respect to the requirement of an industrial
product is based on the line of cases which interpret the
term "manufacture" in the British Statute, it is submitted
that the entire matter should be reconsidered. It is clear
from the decision of the Supreme Court that the claims should
not be rejected unless some basis for rejection can be found
in the Canadian Statute rather than the British Statute. We
know of no requirement in the Canadian Statute that the method
result in the production of a vendable product.
At the outset the Board observes that at the time the Final Action
conformed with Patent Office guidelines relating to the patentability
of inventions involving processes of testing related to the human
body, as distinct from processes for testing other natural products,
or industrial products and of materials used in the manufacture of
such products.
The examiner advanced the argument that the claims are directed to
a diagnostic method that is performed on a non-industrial product,
and that the method is essentially non-economic and does not produce
a result in any way associated with trade, commerce or industry in
the sense that those expressions have been used in court decisions on
patent applications directed to methods dependent on professional skill.
The basic issue is therefore whether the subject matter of the process
as claimed in claims 7 and 8 constitutes a "useful art or process"
(as distinct from a fine art such as that in which novelty lies solely
in the exercise of professional skills, or that having intellectual
meaning or aesthetic appeal alone), within the meaning of Section 2
of the Patent Act, and in the case of claims for methods of testing
the established criteria of utility is usually critical in determining
that issue.
Section 2 of the Patent Act reads in part:
"Invention" means any new and useful art, process, machine,
manufacture or composition of matter, or any new and useful
improvement in any art, process, machine, manufacture or
composition of matter.
The prerequisite of utility of a "useful art or process" within the
meaning of Section 2, may be conveniently stated, inter alia as to:
whether the subject matter is controllable and reproducible by the
means disclosed so that the desired result inevitably follows whenever
it is worked, and whether the subject matter has utility in the
field of practical application (as that in relation to trade,
commerce or industry) which is beneficial to the public.
Of interest in the interpretation of Section 2 of the Patent Act is
the Supreme Court decision in Tennessee Eastman v. Commissioner of
Patents dated December 19, 1972 (unreported) which concerned claims
directed to a method of surgical bonding of body tissues of human
beings; and in which the court held that the process then under
consideration of applying a medicine to a human being, "... is
clearly in the field of practical application," as opposed to a mere
scientific principle or abstract theorem excluded by Section 28(3)
of the Patent Act.
As previously noted the examiner raised the objection that: "Claims 7
and 8 are directed to a diagnostic method for use on a living body.:.."
However, it appears that the process refers to "measurements" and any
diagnosis of the results does not form part of the process. Accordingly,
achieving the desired result of the process does not depend on
professional skills.
In the S.C.C.'s decision Tennessee Eastman v. Commissioner, supra.
it was held that patents for medical treatment per se must be excluded
under the Patent Act in that the use of a medical substance cannot
be claimed by a process apart from the process of producing it, otherwise
there would be an easy way out of the restriction as to the patenta-
bility of substances under Section 41(1) of the Patent Act. However,
the present claims do not fall within this prohibition, and distin-
guish factually from the claims then under consideration in that no
step of using a medical substance is set out in the claims.
The examiner also raised the objection that the method was related
to a non-industrial product. It is settled law, however, that the
end result of a test process is not necessarily a physical product
and may be tangible information only. It is also settled law that
if the invention is the means and not the end, the inventor is
entitled to a patent on the means, vide, J. Wyburn Lawson v. The
Commissioner of Patents (1970) 62 CPR 101 at 110.
Of interest with respect to a non-industrial product is the reference
of the S.C.C. in Tennessee Eastman v. Commissioner, supra, Re Schering
A.G.'s Application.(1971) RPC 337, a case dealing with a method of
contraception, citing the conclusion of the Patent Appeal Tribunal at
page 345 as follows:
Although, however, on a full consideration of the matter
it seems that patents for medical treatment in the strict
sense must be excluded under the present Act, the claims
the subject of the application do not appear to fall within
this prohibition and, on the law as it stands today, they
should at least at this stage in our judgement, be
allowed to proceed.... (Emphasis added by the Court)
The Board is therefore satisfied; (a) that the subject matter lies
in the field of a "useful art" and that the claims do not relate to
medical treatment in the strict sense or in the use of a medical
substance, (b) that since no professional judgement or manual
expertise is involved in working the process, the subject matter is
controllable and reproducible by the means disclosed so that the
desired result inevitably follows whenever it is worked, and (c)
that the subject matter has utility in the field of practical applic-
ation which can be beneficial to the public.
Notwithstanding the above, the Board notes that the examiner made
no determination of the subject matter of claims 7 and 8 in view of
prior art. It appears that consideration should also be given the
specification with respect to Section 36 and Section 38(2) of the
Patent Act.
In the circumstances, therefore, the Board is satisfied that the
Commissioner ought not to refuse claims 7 and 8 on the grounds
that the subject matter falls outside the statutory requirements
of Section 2 of the Patent Act and recommends that the Final
Action refusing claims 7 and 8 be withdrawn.
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 in Hull, Quebec,
this 28th day of August, 1973.
Agent for Applicant
Gowling, MacTavish, Osborne & Henderson,
Ottawa.