COMMISSIONER'S DECISION
Subject Matter - Section 2 - Speech Training
The applicant sought to patent a text useful in speech therapy, said text
to be read by patients to exercise their vocal cords. A claim to Copyright
protection has previously been made. It was concluded that the instructional
"device" claimed was not patentable. Issues considered were the patentability
of schemes or plans, whether the process claims were reproducible, and
the distinctions between Copyright protection and patent protection.
Final Rejection: Affirmed.
**********************
On May 31, 1978, the Patent Appeal Board conducted a Hearing to consider
the final rejection of application 159,203, Class 35-41. It had been
filed on December 18, 1972, by Betty Young Dixon, under the title
"Speech Instruction Method." At the Hearing the inventor was represented
by Mr. Don Morrow.
The application describes a novel technique to improve the voices of in-
dividuals by means of a series of vocal exercises. Original claim 1
illustrates the subject matter rejected by the examiner:
1. A method of speech instruction comprising the following steps:
a) inducing a low level diaphragm supported cough accompanied
by the sensation of the diaphragm pulling inwardly and down-
wardly and having an involuntary reflexive outward expansion
of the muscles surrounding the diaphragm to develop an
unbroken tussive column of air against the larynx;
b) enunciating a prescribed series of audible articulation
shapes using a coughlike action similar to the induced cough
under a) to hook such shapes onto the diaphragm and as a basis
for complete diaphragm support of such shapes.
The claims and the application itself were refused on the grounds that
they were not directed to proper subject matter within the meaning of
Section 2 of the Patent Act.
Since the rejection the applicant has proposed amendments to the disclosure,
claims, and title in an attempt to better define the invention. The title
now proposed is "Speech Training Apparatus and Method." Of the 52 claims
submitted by the applicant, claims 1, 16, 20, 35 and 38 are typical.
1. Material for use in improving human voice production and/or the
pronunciation of language comprising a text which includes a series
of word group structures, each of which word group structures is
characterized by a selected dominant staccato shape present at least
once in at least substantially all of the words of the word group
structure, no two word group structures having the same dominant
staccato shape, each word group structure being divided by first
marker means into a plurality of rhythmic word units, the dominant
staccato shapes in each word group structure being identified and
visually emphasized by second marker means, the word group structures
being selected and arranged so as to provide a progressively related
sequence of staccato shapes.
16. A method of improving human voice production and/or the pronuncia-
tion of language comprising reading aloud the text defined in claim 1,
2 or 3.
20. A method of improving human voice production and/or the pronuncia-
tion of language comprising utilizing a text to read aloud a series of
word group structures embodied in said text and ranged in a sequential
series consisting of word group structures characterized by a dominant
holding shape sound and word group structures characterized by a
dominant vowel shade sound, each said word group structure being divided
into a plurality of word units, said word group structures including means
to indicate pauses between said word units, whereby the habitual set of
the respiratory/phonatory system as herein defined is varied by causing
said system to be subjected to each of said dominant sounds.
35. A method of producing a text for use in improving human voice pro-
duction and/or the pronunciation of language comprising incorporating in
said text:
a) a predetermined series of progressively related word group
structures each of which is characterized by a dominant staccato
shape, holding shape or vowel shade, respectively, which in said
series have a mechanical effect on the respiratory and phonatory
system to varry (sic) the habitual set thereof;
b) dominant sound indicating means for indicating each dominant
shape or shade;
c) pause indicating means for indicating, in a particular word group
structure, locations at which repetition of said word group structure
is to be interrupted.
38. A method of improving human voice production and/or the pronuncia-
tion of language comprising utilizing a receptive medium to read aloud a
series of word group structures recorded on said medium and arranged in
a sequential series consisting of word group structures characterized
by a dominant staccato shape sound, word group structures characterized
by a dominant holding shape sound and word group structures characterized
by a dominant vowel shade sound, each said word group structure being
divided into a plurality of word units, said word group structures
including means to indicate pauses between said word units, whereby
the habitual set of the respiratory/phonatory system as herein defined
is varied by causing said system to be subjected to each of said
dominant sounds.
By such amendments Mr. Morrow explained the applicant was emphasizing that
the invention for which protection is sought is less a method of speech
instruction than material useful in improving the human voice, such
method claims as are now being made being for a method of using the
material.
Mr, Morrow also submitted numerous affidavits testifying to the efficacy of
the invention in improving the voices of many individuals. In addition,
Mr. Morrow both at the Hearing and in his written submissions, has developed
a series of ingenious arguments as to why the latest claims should be
accepted.
Voice training and speech therapy are of course well known. Mrs. Dixon's
improvement to the prior techniques lies in using a series of words,
some of which produce staccato sounds to develop the diaphragm. Her
claim 1, in its simplest form, is for a page or book of the appropriate
words so arranged on the page that when repeated vigorously by the patient they
exercise his diaphragm, and improve his voice. The drill can also be put
on tape, recordings, or other material. According to the instructions in
"Verses for Voice," the instruction booklet embodying the drills, and
copyrighted in 1970-71 by Mrs. Dixon, results are affected by fatigue,
strain, emotional upset, nerves, physical discomfort, or illness. It is,
however, effective in remedying speech problems such as heavy accents,
stuttering, nasality, excessive rapidity and mumbling, which problems
are caused by tension in the throat and intercostal muscles. This in turn
has affected the income of many individuals who have been promoted to
more responsible positions, were offered roles in movies, and the like. In one
instance a waitress at the Yellowfingers Restaurant in New York City
increased her income in tips from "waitressing" by following the exercises.
The training so improved her voice that she found it easier to "chit-chat"
with customers, make them feel more relaxed and friendly, and consequently
more generous. We are, consequently, satisfied that in many instances
the voice drills are effective in voice therapy, and in affecting the
economic well being of those who follow there.
In making the rejection the examiner argued that the invention is not
susceptive of industrial application, that it is directed to an instruct-
ional technique, that it is a series of instructions and drills for a cough
technique, all of which are non-patentable. It was also said that the invention
depends upon artistic or personal skills, and such fall outside the ambit
of Section 2. The examiner contended the invention is not associated with
trade, industry or commerce in the normal meaning of dose terms, and is
essentially non-economic, and that it is not controllable or reproducable
since the results differ with the individual treated. To support his holding
that the claims are unpatentable, the examiner cited Lawson v. Commissioner
of Patents 62 C.P.R. 107.
For the applicant's part, Mr. Morrow has argued that Section 2 permits patents
for "any new and useful art, process...", and that the invention is a new
and useful art or process. He distinguishes from Lawson (supra) on the
ground that:
In the reasons for decision in Lawson v Commissioner of Patents
(1970) 62CPR101, it was stated that professional skills are
not the subject matter of a patent, with the suggestion that
if a surgeon were to devise a method of performing a certain
type of operation, he cannot obtain an exclusive property or
privilege therein. The unpatentability of such a method can be
understood when one considers that it is the mind and the
manipulative manual skill of the surgeon himself which is involved
in the success of the operation. Nevertheless, articles or apparatus
designed for use in the treatment of humans or animals, such
as in a surgical operation may be patentable. In the present
invention, the instructional method does not depend upon the
mental or physical action, i.e. artistic or personal skills, of
the teacher or professional deviser of the invention during
operation of the method but rather upon the user following a
set of instructions and carrying out the laid down procedure
according to the defined method. The professional skill of the teacher
does not enter into the method once it is in the hands of the user
and the user alone is involved in practising the method.
It is noted that the Manual of the Patent Office suggests
that a process which depends entirely on artistic or personal
skills such as a procedure for exercising and teaching is
unpatentable but goes on to indicate that materials and
instrumentalities used in such an art may be patentable.
Applicant maintains that the claimed method does not depend
on the artistic or personal skill of the teacher but depends
on the material provided in the form of an instruction for
the user to proceed in a certain manner and to carry out certain
operations in a specified order to achieve the desired result.
Having considered the Lawson decision, and the exhaustive analysis of Section 2
made by Mr. Justice Kerr in Tennessee Eastman v Commissioner of Patents
62 C.P.R. 117 (affirmed 1974 S.C.R. 111) we are satisfied that the examiner
was fully justified in rejecting the claims that were before him. In the
Lawson decision (at 109) the following quotations are pertinent:
I take it as well settled that all new and useful arts and manu-
factures are not necessarily included in s.2(d) of the Act.
In Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius
& Bruning v. Commissioner of Patents (1962), 39 C.P.R. 105 at
p. 124, 22 Fox Pat. C. 141, Thorson, P., took the view that
the words contained in the definition of "invention" were to
be given their plain and ordinary meaning so that if an "art"
or "manufacture" or "improvement" thereof was:
"... new and useful it is an invention within the meaning
of the definition and, therefore, patentable under the Act,
regardless of whether any inventive ingenuity was involved
in it or not, and even if it was merely a workshop improve-
ment or only an obvious advance over the prior art."
On appeal the view of Thorson, P., as above expressed was
repudiated by the Supreme Court of Canada, Com'r of Patents v.
Farbwerke Hoechst, 41. C.P.R. 9 at p.17, [1964] S.C.R. 49, 25
Fox Pat.C.99, Judson, 3., stating:
"...until the question was raised in the reasons delivered
in the Exchequer Court no one ever doubted the principle
that invention is an essential attribute of patentability."
It is, therefore, clear that words of limitation must be read
into s.2(d).
The narrow issue is whether the word "art" in the definition,
includes a means of describing the boundaries of a plot of land
and whether a piece of land subdivided into lots, the boundaries
of which are delineated by curved lines in the shape of a cham-
pagne glass constitutes an "art" or "manufacture" within the
meaning of that word as included in s.2(d).
An art or operation is an act or series of acts performed by
some physical agent upon some physical object and producing
in such object some change either of character or of condition.
It is abstract in that it is capable of contemplation of the mind.
It is concrete in that it consists in the application of physical
agents to physical objects and is then apparent to the senses in
connection with some tangible object or instrument.
In the earlier development of patent law, it was considered
that an invention must be a vendible substance and that unless
a new mode of operation created a new substance the invention
was not entitled to a patent, but if a new operation created a
new substance the patentable invention was the substance and
not the operation by which it was produced. This was the
confusion of the idea of the end with that of means. However,
it is now accepted that if the invention is the means and not
the end, the inventor is entitled to a patent on the means.
and: It is obvious from the concluding portion of the above quotation that
professional skills are not the subject-matter of a patent.
If a surgeon cohere to devise a method of performing a certain
type of operation he cannot obtain an exclusive property or
privilege therein. Neither can a barrister who has devised a
particular method of cross-examination or advocacy obtain a
monopoly thereof so as to require imitators or followers of his
methods to obtain a licence from him.
It seems to me that a method of describing and laying out
parcels of land in a plan of subdivision of a greater tract of
land in the skill of a solicitor and conveyances and that of a
planning consultant and surveyor. It is an art which belongs to
the professional field and is not a manual art or skill.
I, therefore, conclude that the method devised by the appli-
cant herein for subdividing land is not an art within the meaning
of that word in s.2(d).
and: "Manufacture" connotes the making of something. Thus it is
seldom that there can be a process of manufacture unless there
is a vendible product of the process. It must accomplish some
change in the character or condition of material objects.
and: In rejecting the present application, the Commissioner of
Patents concluded, amongst other objections mentioned above,
that the subject-matter disclosed in the application was in sub-
stance and essence merely a plan for the layout of land. In
view of my conclusion that the superimposition of a plan of sub-
division on a larger tract of land does not result in a change in
the character of the land, it follows that there is merit in the
Commissioner's conclusion.
In support of his position the Commissioner referred to "Re
Application for a Patent by E.S.P." (1945), 62 R.P.C. 87.
This was a patent application for a patent entitled "Improve-
ments in building constructions" relating to the layout of con-
tiguous houses in a row or terrace. After pointing out the econ-
omic advantages [underlining added] of building houses in rows,
the specifications then stated the disadvantages that they do not
as a rule add to the adornment of a town and they offer but
comparatively little privacy, the tenants being exposed to the
eyes of neighbours on either side. The object was to eliminate
these disadvantages while retaining the advantages of the system
of building in rows.
The relevant claim reads as follows:
"A building construction comprising a plurality of con-
tiguous buildings forming an integral block, alternate
buildings being set back at front and rear, that is to
say one building is set forward relatively to the common
centre line of a continuous roof common to all the buildings
by the same amount as an adjacent and contiguous building
is set back from said common centre line."
The superintending Examiner said:
"It is clear from this claim and from the description and
drawings that the alleged invention is, in essence, merely
an architect's plan or design for the lay-out of the individual
houses in a row of houses. It has never been the practice of
this Office to regard such plans or designs as 'manners of
new manufacture' within the meaning of Section 93 of the
Acts, and to grant patents for them would, in my opinion, be
an unfair restraint on the normal use of an architect's
designing powers in the exercise of his profession, Mr.
Armstrong submitted that the Applicant's lay-out involved a
new principle of building construction, but I am unable to
accept this view. No novelty is even alleged for the build-
ing methods employed in the actual construction, and the
individual houses in the row do not differ in any mechanical
or constructional sense from other houses. The sole
advantages alleged for the lay-out are that it adds to the
appearance of the town or district in which the rows of
houses are erected and secures greater privacy for the
tenants of the individual houses; these are matters which
in my opinion belong to the province of the architect rather
than the manufacturer."
The reasoning of the superintending Examiner as it applies
to the analogous facts in the present application appears to are
to be preferable to that adopted by the U.S. Board of Appeals.
It is also instructive to refer to the following extracts from the Tennessee
Eastman case (supra) (62 C.P.R. 117):
The ground on which the Commissioner refused to grant a patent
to the applicant was that the method for surgically bonding the
surfaces of body tissues as covered by the claims in the said
application does not constitute patentable subject matter under
subsection (d) of section 2 of the Patent Act, in that it is
neither an art, or a process within the meaning of said subsection.
and: Counsel for the respondent submitted, inter alia, that the
method has no relation to trade, commerce or industry or to the
productive or manual arts, but is rather a surgical method re-
lated to the treatment of the human body and, as such, is essen-
tially non-economic and in the realm of the fine arts, and there-
fore, is not a proper subject for a patent.
and: In a very recent decision dated April 7, 1970, Cattanach, J.,
said in Lawson v. Com'r of Patents, [62 C.P.R, at pp.109-10]:
"An art or operation is an act or series of acts performed
by some physical agent upon some physical object and producing
in such object sonic change either of character or of condition.
It is abstract in that, it is capable of contemplation of the
mind. It is concrete in that it consists In the application
of physical agents to physical objects and is then apparent to
the senses in connection with some tangible object or instrument.
"On the assumption that what is being applied for is a
patent for a method and that 'method' is synonymous with
'art', I turn to a consideration of whether the alleged inven-
tion is an art within the meaning of that word as contained
in s.2(d)."
He than quoted the following excerpt from the decision of
Dixon, C.J., in National Research Development Corpn's Appli-
cation [1961] R.P.C. 135 at p.145:
"The point is that a process, to fall within the limits of
patentability which the context of the Statute of Monopolies
has supplied, must be one that offers some advantage which
is material, in the sense that the process belongs to a use-
ful art as distinct from a fine art (see Virginia-Carolina
Chemical Corporation's Application [1958] R.P.C. 35 at
p.36) - that its value to the country is in the field of econ-
omic endeavour. (The exclusion of methods of surgery and
other processes for treating the human body may well lie
outside the concept of invention because the whole subject
is conceived as essentially non-economic: see Maeder v.
Busch (1938) 59 C.L.R. 684 at p. 706.)"
and held that the method which he was considering is an art
belonging to the professional field and not a manual art, and,
therefore, is not an art within the meaning of that word in
s.2(d). He held it clear that words of limitation must be read
into the section.
and: In Maeder v. Bunch (1938), 59 C.L.R. 684, a process for perm-
anent waving or hair on the head was considered by the High
Court of Australia. Dixon, J., asked the question "Can the dis-
covery of improvisation of a mere process or method of treating
any corporeal part of the human being afford subject matter for
a patent?" and in answering it said, at pp. 705-7:
"... To be patentable an invention must relate to an art.
Perhaps the widest statement is one of the earliest. In
Boulton v. Bull (1795) 2 Bl.&., at p.492: 126 E.R. at
p.666), Eyre L.C.J. said:- 'It was admitted in the argument
at the Bar, that the word "manufacture" in the statute was
of extensive signification, that it applied not only to things
made, but to the practice of making, to principles carried
into practice in a new manner, to new results of principles
carried into practice. Let us pursue this admission. Under
things made, we may class, in the first place, new compositions of
things, such as manufactures in the most ordinary sense
of the word; secondly, all mechanical inventions, whether made
to produce old or new effects, for a new piece of mechanism
is certainly a thing made. Under the practice of making
we may class all new artificial manners of operating with the
hand, or with instruments in common use, new processes in
any art producing effects useful to the public.' But the
ultimate end in view is the production or treatment of, or
effect upon, some entity. 'Applications of old things to
a new use, accompanied by the exercise of inventive power, are
often patentable though there be no production of a new thing.
But in every case the invention must refer to and be applicable
to a tangible thing. A disembodied idea is not patentable'
(Edmunds and Bentwich, Copyright in Designs, 2nd ed. (1908),pp.20,21.)
"In the present case there is nothing to be affected but
the hair. The chemical compounds already exist. The use
of them, the application of heat and the method of treat-
ment constitute nothing but method, procedure, treatment
or process. Can the hair growing upon the human head be
regarded as satisfying the condition that the process shall
in some way relate to the productive arts? It is part of the
human body, and hitherto none of the prosthetic processes
by which any of its parts have been treated has been con-
sidered subject matter for a patent. Indeed in Re C. & W,'s
Application (1914) 31 R.P.C. 235, Lord Buckmaster, as a
law officer, held that no patent could be obtained for ex-
tracting lead from the human body. In surgery it would not
be easy to distinguish as a patentable invention an abdominal
operation from face lifting. The application of a pro-
cess or method of treatment to part of the human body for the
purpose of improving its appearance or ameliorating its
condition is distinguished from processes which may form
the subject of patentable invention in aim and result. The
aim is the alteration of some state or condition, feature or
attribute belonging temporarily or permanently to a person.
The result may be an improvement in his or her physical
welfare or an increase in his or her pride of appearance. It
is difficult to base any legal distinction on the motive or
purpose of the operator or manipulator or on the vocation he
pursues. It can hardly matter whether he acts in the exer-
cise of a profession or art or trade or business. The purpose
of the patentee and those intended to employ the process
may be entirely commercial. The process may be intended
for use in ordinary trade or business such as that of hair-
dressing, manicure, pedicure. The purpose, on the ether
hand, may be the relief of suffering by surgical or manipu-
lative means. But the object is not to produce or aid the
production of any article of commerce. No substance or
thing forming a possible subject of commerce or a contribu-
tion to the productive arts is to be brought into existence
by means of or with the aid of the process.
and: The same process for permanent waving came soon afterwards before
the Court of Appeal of New Zealand in Maeder v. "Ronda" Ladles'
Hairdressing Salon and Others, (1943) N.Z.L.R.122, Myers, C.J.,
and Johnston, J., (Kennedy, J., expressing no opinion) held that a
process, to be patentable, must at least have relation in some way
to the production of an article of commerce.
and: In my view the method here does not lay in the field of the
manual or productive arts nor, when applied to the human body,
does it produce a result in relation to trade, commerce or indus-
try or a result that is essentially economic. The adhesive itself
may enter into commerce, and the patent for the process, if
granted, may also be sold and its use licensed for financial
considerations, but it does not follow that the method and its
result are related to commerce or are essentially economic in
the sense that those expressions have been used in latent case
judgments. The method lies essentially in the professional
field of surgery and medical treatment of the human body, even
although it may be applied at times by persons not in that field.
Consequently, it is my conclusion that in the present state of
the patent law of Canada and the scope of subject-matter for
patent, as indicated by authoritative judgments that I have cited,
the method is not an art or process or an improvement of an art
or process within the meaning of s.2(d) of the Patent Act.
(underlining added)
We ourselves are satisfied that the process in question "does not lay in the
field of manual or productive arts." There may well be present some indirect ec-
onomic advantages, just as the practise of the skill of an architect or of a
surgeon has indirect economic advantages both to the surgeon in the form of
fees and to the patient whose income benefits from improved health, but
as was held in the Tennessee Eastman case, these are not results "related
to commerce or ... essentially economic in the sense that those expressions
have been used in patent case judgements."
Similarly we believe the method lies essentially in the professional skills
held unpatentable in the same decision. We have noted above that the
results achieved are variable, depending upon the individual and the state
of his or her health and emotions.
It is said in Mrs. Dixon's own, affidavit (para. 6) that "There is no reason
why the method cannot be effectively practiced, with the aid of the book,
without any personal instruction whatever." In Mr. Fryer's affidavit,
however, we find that
[Mrs. Dixon] is particularly concerned because speech work is
so delicate and so important for many people. If the concepts
embodied in the red book could be stolen and used indiscriminately
by untrained poeple, this very valuable work would suffer
irreparable injury.
The affidavits of Belinda Bauer and Joanne Mellia also bring out the import-
ance of the personal guidance and instruction given by Mrs. Dixon in
producing effective results. Others refer to her "teaching" and "coaching"
expertise. We are consequently satisfied that the training method is in large
part dependent upon the professional skills of the instructor.
By virtue of the claims submitted on May 30, Mr. Morrow now proposes to
shift emphasis from the method of speech instruction to what is referred
to as a "training device," and the method of using it. The device in its
simplest form is, as indicated above, a page of text or a booklet of
instructions, such as the "Verses for Voice" referred to earlier. These,
he submits, are patentable as a particular means for teaching, and relics upon
the decision of the U.K. Patent Appeal Tribunal in Pitman's Application
(I967) R.P.C. 616 in support of that contention. He has noted that the
Pitman application matured to patent in the United States (3407515,
Oct. 29, 1968) and in the United Kingdom. He has also drawn our attention
to Mrs. Young's Australian patent 50,297, Dec. 20, 1972 in which method claims
similar to those now advanced in Canada were issued. In addition he also
provided a transcript of the decision of the U.K. Patent Appeal Tribunal
in the Matter of the Application, of Betty Young Dixon, May 20th, 1976,
refusing Mrs. Dixon's corresponding U.K. application.
In the Pitman case Sir Isaac Pitman claimed an improved method of teaching
the pronunciation of language by conveying visually to the reader the
correct stressing and inflexion and phases of a text. Claim 1 reads:
A printed sheet or film carrying a word or words in alphabetic
writing and in which the conventional format of the printing
is modified by employing relatively more visually significant
characters for stressed syllables or words, and relatively less
visually significant characters for unstressed syllables or
words; and the position of individual characters or groups of
characters constituting a syllable is varied, relative to the
mean axis of the line of writing, according to the nature of
the inflection required to be given to the spoken word.
An example of what a sheet would carry is:
Table 2
THERE are FOUR ASPECTS of LEARNing a FOreign LANguage. FIRST
of ALL, Every ONE WANTS to be Able to LIsten to it with UNderSTANDing
and THEN be Able to SPEAK It and be UNderSTOOD. THEN, of COURSE,
THEY WANT to be Able to READ it and ALSO to WRITE it.
The application was refused in the U.K. Patent Office on the grounds that
what was involved is only an arrangement of words upon the sheet. To quote:
The present objection is based on an old direction of the Law
Officers, dating from 1899, and quoted in the judgment in Fishburn's
Application (1940) 57 R.P.C. 245 at 246, lines 49 et seq. This
reads "Generally speaking, patents can properly be refused in
any case in which...the only material is a printed sheet, ticket,
coupon, or its equivalent, and the only alleged invention an arrange-
ment of words or the like upon such sheet." From several later
precedent cases, it is clear that this rule is subject to certain
exceptions, one such, set out in Fishburn's Application itself, at
page 247, line 15, being the case in which the real object of a
particular arrangement of the words printed upon the sheet
"is to serve a mechanical purpose." Instances of the operation of
this exception are found in Cooper's Application (1902) 19 R.P.C.
53, where an application was allowed for a printed sheet in which
spaces were left in the printing to facilitate reading when the
sheet was folded, and is Fishburn's case, where a ticket had information
printed on it in duplicate and so arranged that, when the ticket was
divided either transversely or longitudinally each section carried
the information. Another instance appears in the American Optical
Co.'s Application [1958] R.P.C. 40 at 45. Here an application was
allowed for a cinematograph film on which the images were distorted
in a particular way. When used with a projector and a functionally related
screen, the pictures were seen undistorted. Cases where printed
sheets or the equivalent were refused include Johnson's Application
(1902) 19 R.P.C. 56, where the alleged invention was a sheet
carrying certain printed matter intended to enable a certain system
of business correspondence to be carried out, and C's Application
(1920) 37 R.P.C. 247, which comprised a musical notation wherein
the sharps and flats were contrasted with the natural notes by being
printed in colour, shape, size, shade or design.
The Hearing Officer concluded that the newness of the alleged invention lies
in so printing the syllables that they convey additional information to what
they impart to the reader if printed in a conventional matter. Such additional
information he considered entirely intellectual, and he was unable to distinguish
Pitman's application from that found in C's Application (supra).
On appeal the Patent Appeal Tribunal reversed, distinguishing from C's Application
on the basis that Pitman's sheets possessed a functional purpose when used in
conjunction with speaking machines.
Mr. Morrow has argued that Mrs. Dixon's application should be allowed unless
the Pitman case can be distinguished from it. We think that distinction can be
made. Mrs. Dixon's text does not produce a functional effect in a mechanical
device. In our view it does not serve a mechanical purpose. We do not
view the vocal apparatus of the human body to be a mechanical device in the
patent sense. If we did then all books, whether literary or otherwise, would
become patentable in addition to being copyrightable since reading them aloud
produce effects upon the human vocal system.
We come next to the decision of Mr. Justice Whitford, May 20, 1976, before the
U.K. Patents Appeal Tribunal. In arguing for the appellant, Mr. Jeffs
described the alleged invention, and quite properly, we believe, as
"...quite a complex treatment in itself. It involves a considerable number
of exercises, the cough technique, and so on (transcript of proceedings, p.9,
underlining added).
Counsel for the Commissioner maintained it was a scheme or plan. To quote:
Of course it is physical in the sense that the voice when trained
by this is a better voice than it was before. So also is a method
of training a fast bowler, it makes him a better and faster bowler
than before. There have been many other schemes or plans. The
concept of a third back in football invented in the 1930s was a
scheme or plan, but it would be absurd to suggest that the manager
of the football team who invented that could have got a patent for a
third back to stop other people using it. There would be two
kinds of referee, a judicial referee and the referee on the football
field in that case.
The court considered the "liberalizing" approaches taken by the U.K. courts
in recent years in re Swift's Application 1962 R.P.C. 37; the National Research
Development Corporation case 1961 R.P.C. 134; the Cementation Company Limited's
Application 1945, 62 R.P.C. 151; in re Palmer's Application 1970 R.P.C. 598; and
Schering A.G.'s Application (1971 R.P.C. 339) (all of which we have ourselves
considered in several occasions, - see for example in re IMC Chemicals Application,
Patent Office Record, Dec. 20, 1977, p. xiv). The U.K. court rejected the British
application, but Mr. Morrow says the U.K. decision dealt with claims similar to
the claims rejected by the examiner, and did not consider the new claims now
filed. However we note that the Court also considered "whether there was in
fact disclosed in the body of the specification a manner of manufacture on which
it would be or might be possible to draft a supportable claim." Its conclusions
were as follows:
If we come to the sort of claim which I think stands the best
chance of success so far as the applicant is concerned, namely,
claim 31, what we are going to find claimed is a printed text
carrying speech instructing means as claimed, for example, in
claim 19. That will be a printed text setting out a plurality
of words, each of which deals predominantly with one sound,
which you in fact get repeated, a printed text which will tell
the student how to provide diaphragm support for the particular
shapes, if I may use the word favoured by the applicant, which
he is going to enunciate in sequence and there will be under-
lining which will draw his attention at any given moment to the
particular shape which he ought to be enunciating and there will
be markings which will show how the series of words which are
being enunciated in sequence can best be divided into rhythmic
word groups, though the actual choice at any given time of
particular sounds and the actual division into particular rhythmic
groups forms no part of the invention as claimed.
I am unable, as I think the Principal Examiner was, to find in
a proposal of this kind any suggestion for a representation which
can in any way be said to resemble the sort of representation
which it was thought proper to support in relation to the claims
in Pitman's Application. Fully conscious though I am of the extreme
desirability of extending the protection afforded by patents to any
field of endeavour in which a man's skill and art can be usefully
applied, I think it must stand recognised that there are limits. I
refer to the desirability of protecting the useful application of
a man's skill and art, because that is a quotation from a very
well known case of some antiquity. It must be recalled that it was
used in the context of an application which was concerned with what
could undoubtedly be described as a purely commercial enterprise.
I think the Principal Examiner has correctly concluded that there
is not disclosed in the application before me anything which could
properly be protected under our present Act, notwithstanding the
liberalisation of the approach to questions of manner of manufacture
that has occurred in recent years. The appeal must, accordingly, be
dismissed.
Since in the earlier decisions we concluded we should not go so far as the
British decisions, we do nut think we should outpace them now.
The applicant has referred to a prior decision of the Commissioner in re
Eward Fitz, P.O.R. June 4, 1974, p. viii, but we do not find that comparable.
It dealt with a measuring method, and so differs from applicants invention.
For his part, the examiner referred to In the Matter of an Application for
Patent by C, 1920 R.P.C. 247 in which a new method of notation for writing
music for pianos was refused. We have found it helpful.
This case raises certain questions as to whether what may be copyrightable
may also be patented, or registered as an industrial design. We perceive each
of the enactments protecting different forms of intellectual property as being
separate and distinct and that copyrightable material may not be patented.
Otherwise the Copyright Act is redundant. This does not mean that the same
idea may not give rise to different embodiments or aspects, some of which
may be protected by one piece of legislation, and others by another.
It does mean, hoverer, that exactly the same embodiment cannot be protected
by two of these enactments, for once the patent on an embodiment expires,
seventeen years after grant - anyone must be free to copy that embodiment.
But if that embodiment is also protected by Copyright, the originator could
still prevent others from copying the embodiment both during his lifetime and
through successors in title, for fifty years thereafter. Yet this is what
Mrs. Dixon proposes to do. In this application she seeks patent protection
for exactly the same embodiment to which she has already laid claim to copyright
protection (see the title page of Verses for Voice, one of the exhibits supplied to us
This double protection for the same thing cannot be provided. We perceive
the nature of the claims to be copyrightable, not patentable, and Mrs. Dixon
to be estopped from alleging otherwise by her own prior assertion to
copyright protection.
We are consequently satisfied that the examiner was correct in rejecting the
application, and recommend that his rejection be affirmed. We recognize, of
course, the value of bars. Dixon's contribution to speech therapy, and in
no sense wish to deprecate them. We must also commend Mr. Morrow for
both the ingenious and ingenuous manner in which he has represented his
client in a most difficult case.
Gordon Asher
Chairman
Patent Appeal Board, Canada
Having considered both the prosecution of this application and the recommendations
of the Patent Appeal Board, I now reject this application for failing to satisfy
the requirements of Section 2 of the Patent Act. I take this action under
Section 42 of the Patent Act, and direct the applicant's attention to Section
44 of the Act.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 9th. day of August, 1975
Agent for Applicant
Smart & Biggar
Box 2999, Station D
Ottawa, Ont.
K1P 5Y6