COMMISSIONER'S DECISION
INDEFINITE CLAIMS: Section 36(2) "Means Claims"
Claims 7, 8 and 9 were refused for failing to comply with
Section 36(2) of the Patent Act and as containing broad means
statement at the point of invention. An inventor cannot use
functional claiming to obtain exclusive rights to all
solutions to a problem regardless of the principle or idea
used, but functional and means claims are permitted in proper
circumstances. Claims 7, 8 and 9 are incomplete since the
signal must be "averaged and compared" in order to attain the
desired result.
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FINAL ACTION: Decision affirmed, Modification suggested.
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated July 20, 1973 on
application 028,922 (Class 354-138). The application was filed
on August 30, 1968 and is entitled "SPECTRUM ANALYZER."
In the prosecution terminated by the Final Action the examiner re-
jected claims 7, 8 and 9 as being contrary to Section 36(2) of
the Patent Act in that they are inexplicit.
This application relates to a digital spectrum analyzer useful for
determining faulty components in process equipment such as paper
mills.
In the Final Action the examiner stated (in part):
The rejection of claims 7 to 9 is maintained and the
reasons for such rejection as set out in the previous Office
Action are: "claim 7 contains a broad means statement at
the point of invention, i.e. a statement which distinguishes
the claim from the prior art, but which is so broad that
it embraces all possible means, without qualification for
solving the problem facing the inventor and is in effect
a restatement of the problem. The "means" defined on
lines 4 to 8 of claim 7 does not state how the spectral amplitude
signals are operated on by the means to provide the
indication referred to on line 6 of the claim. This means
is defined in terms of the input to the means (the computed
spectral amplitude signals) and the output from the means
(an indication of which of the amplitude signals is periodic).
Thus the means embraces all possible means of achieving the
desired result. Dependent claims 8 and 9 do not further
define the above referred to means statement. Claims 7 to 9
therefore remain rejected as being inexplicit contrary to
Section 36(2) of the Patent Act".
The following points were made in Applicant's letter of
July 21, 1973:
(1) "The means statement is interpreted as covering the
corresponding structure described in the disclosure"
(paragraph 2 lines 11 and 12 of the letter). Since the
function of a claim is to set out the limits of the sub-
ject matter comprising the invention any broad statement
of means covers all embodiments which the language of
the claim embraces without reference to the disclosure.
The statement of means on lines 4 to 8 is not restricted
to the apparatus disclosed beginning on page 23 line 7
but is broad enough to embrace all possible means to
determine if a particular frequency in the spectrum being
analysed is periodic.
(2) Claim 7 "is directed to a combination" (paragraph 3
line 2 of the letter). A claim directed to an inventive
combination of old means is allowable. However the means
defined on lines 4 to 8 of claim 7 is not an old means.
The means to determine which frequency components are
periodic is the point of invention (see the preamble to
claim 1). If a claim consists of a broad statement of means
at the pint of invention then the recitation of other
means which cooperate with the broad means does not over-
come the rejection in that the invention is not defined
by the combination of means, but rather is defined by the
broad means statement.
(3) Dependent claims 8 and 9 contain additional limitations
(the last four lines of paragraph three of the letter).
The limitations defined in the dependent claims do not appear to
be directed to the means to determine if a particular fre-
quency is periodic. The definition of the means for scaling
is concluded on page 23 line 4 which precedes the definition
of the means for determining periodicity beginning on line 7
of page 23. The dependent claims therefore do not limit
the broad means statement.
(4) "Any means statement considered by itself must of necessity
give a definition of the output in terms of the input without
setting out the apparatus which produces this result" lines 4
to 7 of paragraph 4 of the letter). It isn't necessary that
a recitation of apparatus be provided to overcome the rejection.
The broad means statement being objected to could be replaced
by a combination of means statements, as in claim 1 for
example.
The applicant in his response of October 19, 1973 to the Final Action
stated (in part):
With regard to claim 7 it should first be pointed out that
the various apparatus represented by means statements in
this claim cooperate with each other. As pointed out at page
24 lines 4 and 5 the memory 132 of Figure 4 is under the
control of the programmer included in the computer circuit of
Figure 2. Further evidence of the interrelationship of the
apparatus represented by the means statements is given on
page 4 lines 10-16 of the disclosure as follows:
"The determination of whether a frequency component is period-
ic, in accordance with Equations (12) or (13), is made
utilizing digital techniques and apparatus having many com-
ponents in common with the apparatus necessary for deriving
spectral information from Equations (4)-(11). In consequence,
once the spectral data are derived, the periodicity determina-
tion is relatively facile."
Accordingly, the situation presented here is not one of an
exhausted combination where an unrelated means statement is
grafted on to a claim directed to different subject matter
e.g. claiming both an automobile and carburetor when the in-
vention is only in the latter. Rather, the two elements of the
claimed combination cooperate to achieve the advance in the art
defined by the claimed invention. Further, applicant is not
submitting a claim of the type which sets out only a single
statement of means and hence claiming all possible means for
solving the problem faced by the inventor.
Insofar as formal requirements are concerned, claim 7 being a
claim to a combination expressed as a series of means state-
ments and defining invention is the type of claim found
acceptable in "Lightning Fastener v Colonial Fastener" (51 RPC
349). It is suggested that the fact that the claim in that
case had three means statements does not establish a rule
that a combination of two means statements is not acceptable
under Canadian practice but a combination of three or more means
statements is acceptable.
Thus, claim 7 is believed to represent a scope of protection
to which applicant is fairly entitled.
Since claim 7 is believed to be patentable clearly claims 8
and 9 which add additional limitations should also be patentable.
In any event, claims 8 and 9 if rewritten in independent form
are clearly within the claim language permitted by the Lightning
Fastener case and should not be subject to rejection simply
because they are written in dependent form. The elements of
these claims cooperate with one another and the combination is
believed to be clearly patentable.
As previously mentioned this application relates to a digital spectrum
analyzer wherein the spectral content at a plurality of frequencies is
computed in response to Fourier transforms. The "Fast Fourier Transform"
is a computational tool which facilitates signal analysis such as power
spectrum analysis and filter simulation by means of digital computers.
The applicant has developed a way of determining with a specific degree
of certainty whether a frequency component is periodic.
The question which the Board must consider is whether claims 7 to 9 comply
with Section 36(2) of the Patent Act. This section reads:
The specification shall end with a claim or claims stating
distinctly and in explicit terms the things or combinations
that the applicant regards as new and in which he claims an
exclusive property or privilege.
Because of the argument revolving about the propriety of means statements
in claims, we first give our attention to that issue.
In examining a specification there is a need to balance the needs of the
inventor to claim his invention in such sufficiently broad terms as to
afford him adequate protection for what he has done, and those of others
who should not be presented thereby from doing what the patentee has not
invented. Mr. Justice Maclean remarked in Cluet, Peabody v. Dominion
Textile, (1938) Ex. C.R. 47 at 79:
....The claims are broadly stated, and the patentees were
entitled to do so, after describing some means of applying
what was a new principle. It was not contended that the
inventions were too broadly claimed.
It his been well and concisely stated in the text book, Terrell
on Patents, that inventions may be divided roughly into two
classes in respect to subject-matter. First, there is that kind
of invention which consists in the discovery of a method of
application of a new principle, here what has been invented is
in effect the new principle, and, generally speaking, the Court
will regard jealously any other method embodying that principle,
for the patentee was not bound to describe every method by
which his invention could be carried into effect. Second, there
is that kind of invention which consists in some particular new
method of applying a well known principle, and in this case the
use of other methods is not contemplated by the patentee, and
should not be included within the ambit of his claim. That
describes an accepted doctrine in patent law....A patent for
carrying a principle which is new into effect protects the grantee
against all other modes of carrying that principle into effect.
(emphasis added.)
The new principle referred to by the Court related to a method of
treating fabric to prevent shrinkage. The Judge equated "idea" with
"principle" when he stated at page 80: "This case is a good illus-
tration of how readily the competent mechanical engineer, once
understanding the principle of an invention, may produce other means
of carrying the same 'idea or principle' into effect."
Other court cases expressing the same views are: The P. and M. Co. v
Canadian Machinery Corpn. Ltd., (1926) S.C.R. 105 at 118; Grissinger v
Victor Talking Machine Co. of Canada Ltd (1929) Ex. C.R. 24; Merco
Nordstrom Valve Co. v Comer (1942) Ex. C.R. 139 at 150; and British
United Shoe v Standard Rotary (1918) 35 RPC 33 at 46 and 47; and
International Pediatric v Lambert (1967) 34 Fox Pat. Cases 58.
We are satisfied, however, that an inventor cannot use functional claiming
to obtain exclusive rights to all solutions to a problem regardless of
the principle or idea applied. In Grissinger v Victor Talking Machine,
1929 Ex.C.R. 24, we find at page 25:
However, it must be borne in mind that a principle
cannot be the subject of a patent, and a claim to
every mode or means of carrying this [previously
known] principle into effect would amount to a claim
to a principle, for it was said in Neilson v Harford
(1841, I.W.P.C. 295 at 355) that there is no diffe-
rence between a principle to be carried into affect
in any way you will and claiming the principle itself.
and in British United Shoe Machinery v Simon Collier 26 R.P.C. 21 (1909)
at 49:
Assuming (a) principle to be new, it might be possible
for the inventor having shown one method of applying it
to the solution of the problem, to protect himself during.
the life of his Patent from any other method of applying
it for the same purpose, but I do not think that the
novelty of the principle applied would enable him to make
a valid claim for all means of solving the problem whether
the same or a different principle were applied to its
solution.
See also Badische Anilen v Levinstein (1885, 2 RPC 73) at 91; Edison
Bell v Smith (1894, 11 RPC 397); Fuso v C.G.T. (1940 SCR 371); and
RCA v Gaumont (1936, 53 RPC 167 at 197). From there we conclude that an
inventor is only entitled to protect himself against such other modes as
utilize his ideas, but to that end may utilize functional or means claims.
(See also the unreported Supreme Court decision of Burton Parsons v
Hewlett Packard, December 19, 1974, at page 10.)
We will now consider rejected claims 7, 8 and 9. Claim 7 reads:
A spectrum analyzer for a multi-component input signal
comprising digital computer means responsive to discrete
samples of the signal for computing signals representa-
tive of spectral amplitude over a spectrum of frequencies,
and means responsive to the computed spectral amplitude
signals for indicating with a predetermined degree of
probability which of the amplitude signals, if any,
correspond to actual frequencies that are periodic wi-
thin the input signal.
No prior art was produced to show the use of "digital spectral analyzer"
to determine with a specific degree of certainty that a frequency com-
ponent is periodic. We note, however, that the examiner has rejected
claim 7 for containing "a broad means statement at the point of invention
i.e. a statement which distinguishes the claim from the prior art but
which is so broad it embraces all possible means, without qualification
for solving the problem facing the inventor and (which) is in effect a
restatement of the problem."
The applicant maintains that claim 7 is directed to a combination in
which there is cooperation between the parts represented by the two means
clauses.
Lines 1 to 4, of claim 7 (ending at "frequencies,") contain the first
statement of "means," viz,a digital computer. We find the second "means"
in the remainder of the claim, i.e. "and means responsive to the computed
spectral amplitude signals for indicating with a predetermined degree of
probability which of the amplitude signals, if any, correspond to
the actual frequencies that are periodic within the input signal."
The use of a digital computer instead of an analog computer (such as is
utilized in the prior art) is one point of novelty in the claim. The
second means statement specifies the desired result to be obtained by
the use of this apparatus. On page 3 of the disclosure the applicant
states, at lines 19 to 25: "The theory for determining whether a
predetermined frequency is periodic is based on probability and Fourier
integral principles. Utilizing these principles, it can be shown that
the product of a predetermined factor with the average spectral density
of a signal over an entire spectrum is a measure for determining if a
particular frequency in the spectrum is periodic."
In our view, therefore, the claim is incomplete. In order for the spec-
trum analyzer to provide an indication whether the input signal is
periodic "with a predetermined degree of probability ," the signal must
be "averaged and compared" to obtain the result encompassed by the
second means statement. Since this is essential to attain the desired
result, this feature must be included in the claim to link the two means
into a patentable combination. It is well settled that a claim must be
stated with such precision as to leave no doubt as to the scope of the
monopoly defined in it, so that an addressee of the patent will, on a fair
reading of the claim, be able to determine whether what he proposes to do
will infringe it or not. Claim 7 fails to include the "signal-comparing
means." Consequently an essential component to complete the combination
is missing, and the claim fails to comply with the requirements of Section
36(2) of the Patent Act.
With respect to claims 8 and 9, which are dependent on claim 7, the
applicant argues that "the additional limitations therein are patentable
and that if written in independent form are within the language
permitted in the Lightning Fastener case." It is noted, however,
that the additional components of claims 8 and 9 do not include the
"signal comparing feature," and are objectionable for the same reason
as is claim 7.
The Board is satisfied that claims 7, 8 and 9 fail to comply with the
requirements of Section 36(2) of the Patent Act. If the proposed
amendment is made to claim 7, then claims 8 and 9 which depend on claim
7, would be allowable without further alteration.
We therefore recommend that the decision taken in the Final Action to
refuse these claim be affirmed.
J.F. Hughes;
Assistant Chairman
Patent Appeal Board
I concur with the findings of the Patent Appeal Board and affirm the
rejection of claims 7 to 9. The applicant has six months within which
to amend the claims as suggested, or to appeal this decision under the
provisions of Section 44 of the Patent Act.
Decision accordingly,
A.M.Laidlaw,
Commissioner of Patents.
Dated at Hull, Quebec
this 5th day of
Maya 1975
Agent for Applicant
A.E. MacRae & Co.,
Ottawa 4, Ontario.