COMMISSIONER'S DECISION
Subject Matter Sec. 2: Townhouse Building Design
The design of the buildings complement the natural terrain by constructing
them with the ground floor at grade level both front and rear. There are
two standard entrance doors in the front, each door leading to a different
level, one being a formal main entrance door leading to the main or
middle level, the other door hang a fully exposed service door opening
at ground level. In this manner a three storey townhouse has the appearance
of only two stories. The refection in the Final Action was affirmed because the
application is directed to a layout, plan or design which is totally lacking
in any mechanical or structural novelty, or invention.
Final Acton: Affirmed
**********
Patent application 245995 (Class 20-1), was filed on February 18, 1976
for an invention entitled "Single Family Townhouse Units" The inventor
is Myron S. Hurwitz. The Examiner in charge of the application took a
Final Action on Sept. 2, 1977 refusing to allow it to proceed to patent.
In reviewing the rejection, the Patent Appeal Board held a Hearing on
June 13, 1979 and at which the Applicant was represented by D. Watson, Q.C.
The application is directed to single family townhouse units wherein the
units are situated to compliment the natural terrain by building them
with the ground floor level at grade in both the front and the rear. There
are two standard entrance doors (for individuals) in the front, each door
leading to a different floor level, one being a formal main entrance door
leading to the main or middle level, the other door being a fully exposed
service or convenience door opening at the ground floor level. Figure 3,
below, illustrates that arrangement:
(see formula I)
The main entrance door is designated at 32 and service door at 13.
In the Final Action the Examiner refused the application because in his view
it fails to claim or describe subject matter that is patentable under Section
2 of the Patent Act. He went on to say that the alleged invention is, in
essence, merely an architect's plan or design for the layout of the individual
houses in a row of houses, which subject matter does not fall under Section 2
of the Patent Act. He concluded by saying that "the subject matter of this
application is perhaps more along the lines of those things protected by the
Industrial Design Act or the Copyright Act."
The Applicant in his response to the Final Action argued that the application
was clearly, and without doubt, directed to patentable subject matter. He
went on to explain that there is a decided distinction between an aesthetic
design concept and a technical design concept. He had this to say, inter alia,
on inventive concepts:
...
Building structure (architectural), mechanical (utility)
patents obviously represent technical design concepts.
In that regard it should be particularly noted that aside
from the above cited design patents, applicant has ob-
tained a utility or mechanical patent, namely U.S. Patent
4,041,661 issued August 16, 1977. Correspondingly other
example of U.S. architectural utility or mechanical
patents were listed in the present application. Within
that category of utility patents there are three fundamental
inventive concepts:
(1) a pure architectural (utility) design concept,
wherein the novel 3-dimensionally working, utilitarian
design concept does not rely on or have any particular
relevance to construction (assembly) details per se;
(2) a purely architectural (utility) or structural
design concept, wherein the novel 3-dimensionally work-
ing, utilitarian design concept consists solely of con-
struction (assembly) details, and wherein the novelty
designed details do not rely on or have any particular re-
levance to the overall design configuration of the building
using those construction (assembly) details; and
(3) a combination of the preceding two fundamentally
pure, clear cut types, wherein the novel 3-dimensionally
working, utilitarian design concept consists of construction
(assembly) details that specifically relate to a specifically
designed building structure.
The present invention represents the first exampled type, an
architectural technical (utilitarian) design concept,
wherein novel entrance and egress solution for a townhouse
does not rely on or have any relevance to technical design
construction (assembly) details per se.
At the Hearing Mr. Watson argued that the subject matter of the present
application clearly falls under Section 2, of the Patent Act. He also brought to
our attention a number of Canadian patents which, in his view, were similar
to the subject matters in the present application. He then gave a detailed
account of the present application. He brought out, for example, such
points as: a departure from the previous thinking, a two story effect and
function in three story accommodations, and the importance of the utilitarian
effect as opposed to purely aesthetic effect or design. Mr. Watson concluded
by reviewing a number of court decisions.
With regard to Mr. Watson's discussion on the issuance of other Canadian
patents having subject matter allegedly along the same lines as the present
application, we point out that these cases were not before the Board and
we do not believe that it is incumbent on us to consider them at this time.
The question for the Board to consider is whether or not the application is
directed to subject matter which falls under Section 2 of the Patent Act.
Section 2 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.
That definition is so broad that it has long been obvious that the section
requires interpretation by the courts to give it reasonable boundaries. In
the decision of Lawson v. Commissioner of Patents, (1970), 62 C.P.R. at 109,
the Court took it as settled law that all new and useful arts and manufactures
(and obviously processes) are not necessarily included within the definition
of invention. To support the contention that words of limitation must be
read into the broad definition, Mr. Justice Cattanach looked to the finding
of the Supreme Court in the Commissioner of Patents v. Farbwerke Hoechst
(1964) S.C.R. 49 that ingenuity is one such limitation. In another decision,
Tennessee Eastman v. Commissioner of Patents (1973), 8 C.P.R, at 205 the
Supreme Court also noted that the definition is circumscribed.
The Lawson case, supra, is related to a method for subdividing land with
lot lines delineated in accordance with curved lines in configuration of
a champagne glass. The court held that a method of describing or laying
out parcels of land in a plan of subdivision of a greater tract of land is
the skill of a solicitor and conveyancer and that of a planning consultant
and surveyor. It was not considered an art or skill within Section 2 of
the Patent Act.
The following decisions are also placed on record as of interest: G.F.C.'s
Application (1942), 60 R.P.C. 1; Refrigerating Equipment Ltd. v. Drummond
& Waltham System Inc., [1930] 4 D.L.R. 926, [1930] Ex. C.R. 154; National
Research Development Corporation's Application (1961), R.P.C. 135; Moluch v.
M.N.R. [1967] 2 Ex. C.R. 158, [1966] C.T.C.712; McGuire v. M.N.R. [1956]
Ex. C.R. 264, [1956] C.T.C. 98' E.S.P.,s Application (1945), 62 R.P.C. 87.
The E.S.P. case, supra, was considered in the Lawson case, supra, and we will
also consider it in detail. This was a patent application for a patent
entitled "Improvement in building construction" relating to layout of con-
tiguous houses in a row or terrace. The nature of that alleged invention is
described in the following passage:
The building is provided with a straight ridge extending along
the whole of its length, and the slope of the roof as equal on
both sides thereof. So far the building does not differ from
those hitherto known. According to the invention, however,
the alternating units 1 and 2 have their front elevation,
preferably comprising the bottom and first floor, alternately
on one side and the other of the building, the back elevation
of every unit, consisting preferably of the bottom floor only,
facing towards the same direction as does the front elevation
of its contiguous unit or units. Thus either side of the
building has two-storeyed front elevations 3 which are set
back in relation to the one-storeyed back elevations 4
situated on the same side of the building, so that the two-
storeyed front elevation of every unit together with the
projecting adjacent units borders three sides of a front garden
sheltered from the wind.
This lay-out of the individual houses interrupts the monotony
of the row so that such buildings or rows of contiguous houses
no longer offer a sull picture marring the beauty of a town
but rather constitute an adornment, brightening the picture of
the district they are in. Every unit is well protected from
being overlooked from the adjacent units, neither can the
entrance to a unit be observed by the neighbours.
The relevant claim of that application reads:
A building construction comprising a plurality of contiguous
building, 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 on the case had this to say:
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
building methods employed in the actual construction, and
the individual houses in the row do not differ in any
mechanical or construction 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.
I decide therefore that the Examiner's objection is well-
founded, and I hereby, under the provisions of Section 3(2)
of the Acts, refuse to accept the specification.
In our view the Lawson and E.S.P. cases are related to the consideration
before us and we will discuss them further.
In order to more fully understand the alleged invention of the present
application, we quote from page 14 of the disclosure "Summary of Main
Objectives:"
...
Summarizing the foregoing, the principal objectives of the
present invention are to provide one or more of the follow-
ing features in townhouses of the type under consideration;
utilization of optimum siting conditions with, for example:
(1) all townhouse units being three stories, built with the
ground floor level at grade, and adapted not only to appear
to be two stories in height at the front but to functionally
perform as such in practical use, (2) each townhouse unit
to have two distinct and separate entrance doors in the
front that lead to different floor levels, one being a formal
main entrance door and the other a service or convenience
standard entrance door that is fully exposed and yet
aesthetically acceptable and which does not, as a result of
being exposed to view, functionally compete in appearance with
the formal main entrance door; (3) a service or convenience
standard entrance door that opens directly into a generally
centrally located service corridor, which is essentially at
the ground floor level; (4) a formal main entrance door,
located intermediate the ground and main (first floor) levels,
that opens into the main (first) floor by way of a two
level, formal entrance area of substantially the same width
throughout, in which the lower level is at said intermediate
level, constituting a formal entry area, and the upper level
is coincident or substantially coincident with the main
(first floor) level, constituting a formal foyer area; and
where both formal entrance, open area levels are interconnect-
ed by a decorative and fully exposed stair treatment; (5) a
physically spacious 2-level formal interior entrance area scheme,
which to be practical should not as a result of its spaciousness,
correspondingly detract in size from all the other rooms at
the main (first floor) level or from all areas below and
adjacent this two level formal entrance area which areas should
be completely and functionally utilized so that, in essence,
no space at any level in the townhouse unit is sacrificed
by the implementation of the exterior and related interior
embodiments to be achieved in a throughly practical and
economic manner.
...
Claim 1 of the application reads:
An improved townhouse unit of the type having a plurality of
floors including ground and main or first floors which together
define the living space for a single family therein so that
there is interior communication for the family between all
floors of the said townhouse unit and a front portion having
a main entrance which includes at least a single door positioned
at an intermediate location between said ground floor and said
main or first floor for providing entrance into said main or
first floor by way of a formal entrance wherein the improvement
comprises a second entrance door horizontally spaced to theside of and vertically spaced intermediately to said main
entrance, said second door being substantially the same
width as said single door in said main entrance said second
door being fully exposed in said front portion and opening
into the ground floor of said townhouse unit.
The problems to be overcome by the alleged invention are listed on page
18(a) ~ the disclosure, line 6 f.f., and read:
Major problems to be overcome included the following:
(1) How not only to make a 3-story (front and rear) townhouse
appear to be two stories in height at the front, but how to
make it functionally perform as such in practical use;
(2) How to locate the standard service door so that it would
not be an eye-sore and would not compete with the main, formal
entrance door, though it would be completely exposed to
view; (3) How to include this additional width element, the
standard service door, including the generally, centrally
located service corridor at the ground floor level, within the
limited width constraints of a typical townhouse; (4) How
to get someone from grade to the middle (first floor), living
room level without going up a continuous flight of stairs
either inside or outside the townhouse unit; (5) How to
achieve a spacious formal interior entrance area of two
levels and of substantially the same width throughout, having
an interconnecting, fully exposed, decorative stair
treatment, without sacrificing room sizes or complete
utilization of space on any floor level in the townhouse unit.
At the outset we believe that there is not novel significance in the building
structure, per se. This in our view, is clear from the disclosure at page 70,
lines 9 f.f., which reads: "While no novel significance, per se, is being
urged herein for such detail '[architectural construction; structural
framing; mechanical equipment and duct work; plumbing equipment; waste and
vent lines; etc.]' they were nevertheless integral to the complex and
utilitarian design ...."
At the Hearing Mr. Watson argued that the present design is so arranged that
"functionally, as a people container, it acts like a two-story house." We
agree that from the outside it may have the aesthetic appearance of a two
story house, but it clearly functions as a three-story house with the
service entrance at a level lower than the main entrance. Page 18a. as
mentioned, refers to "major problems to be overcome" as: "How not only
to make a three-story (front and rear) townhouse appear to be two stories
in height at the front, but ... [emphasis added]."
Mr. Watson also referred to other problems (see quotations above) such as
how to locate the service door so that it would not be an eye sore...,
how to include this additional width element (for the service door) within
the constraints of a typical townhouse, the location of the stairs inside
or out; how to achieve a spacious formal interior entrance area ... and a
decorative stair treatment. All of these features have to do with the
skills of a person in the relevant art and if it is merely a design
arrangement without novelty and invention in the structure itself, there is
no patent monopoly available. More on this point later.
Mr. Watson discussed E.S.P.'s application, supra, and pointed out that it was
a layout or arrangement without mechanical or constructional differences
in the individual houses. This is opposed to the present application where,
according to Mr. Watson, there are many differences in the construction
and arrangements i.e., functional and ornamental. We must keep in mind, of
course, that aesthetic or ornamental considerations per se do not fall under
Section 2 of the Patent Act, and as previously mentioned the disclosure at
page 70 reads: "Consequently, the inherent details related, for example, to
architectural construction, structural framing, mechanical equipment and
ductwork .... While no novel significance, per se, is being urged herein
for such details, they were nevertheless integral to the complex and utilitarian
design...." And at page 56, line 4 f.f., we find: "Thus, one of the overriding
novel intents of the invention was to make it appear that the exterior and
interior design of the townhouse was based entirely on aesthetic considerations.
The reality of a precise utilitarian scheme for functional intent was to
be made totally unrecognizable." We believe, therefore, it is clear from
the above that any mechanical or constructional differences are merely
different but not inventively different. We readily agree of course, that
a combination of old elements may in some instances be unobvious and thus
inventive. The elements in the present application such as: the doors,
entrance closet, powder room, side walk etc., are clearly aggregative elements.
In the Final Action the Examiner had this to say, inter alias "No novelty
is even alleged for the building method 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 advantages alleged for the
layout are aesthetic novel arrangements and novel designs and positions of
structure anti functional and utilitarian considerations...." Although not
specifically stated, this portion of the Final Action is clearly a refusal
on lack of "inventive ingenuity" and according to the Examiner clearly
"belong to the province of the architect," i.e. the normal skills of the
architect.
On August 18, 1976 the Applicant submitted "a set of Exhibits 1 through 26."
Exhibits 2 and 4 show two entrance doors on the front of a townhouse or
rowhouse. One is a service door and the other is a main entrance door. We
are at somewhat of a loss as to the reason why these were not cited as prior
art. We find, however, that the present disclosure on page 3, line 5 f.f., reads:
"Because most historical city townhouses did not have service alleys in the
rear, a service or secondary entrance door in the front was essential. This
service door was traditionally located under the formal exterior entrance
stair or stoop...." Exhibit 2 submitted by the Applicant however clearly
shows the service door to one side of the main entrance door, and thus appears
to suggest the subject matter of claim 1. A portion of Exhibit 2 is shown
below:
(see formula I)
We will now consider the claims. For convenience, claim 1 is reproduced below:
An improved townhouse unit of the type having a plurality
of floors including ground and main or first flours which
together define the living space for a single family
therein so that there is interior communication for the
family between all floors of the said townhouse unit and
a front portion having a main entrance which includes
at least a single door positioned at an intermediate
location between said ground floor and said main or first
floor for providing entrance into said main or first floor
by way of a formal entrance wherein the improvement comprises
a second entrance door horizontally spaced to the side of
and vertically space intermediately to said main entrance
said second door being substantially the same width as said single
door in said main entrance said second door being fully exposed
in said front portion and opening into the ground floor of
said townhouse unit.
We totally agree with Mr. Watson's views about this claim (at least in part),
when he stated that he was "a little worried about claim 1 because although
there are some functional aspects to it, a lot of it is, perhaps, aspects
of appearance...." In our view there is nothing but aspects of appearance
in this claim. The claim is essentially defining a monopoly on a townhouse
with a main entrance ... wherein the improvement comprises" ... a second
entrance door horizontally spaced to the side of and vertically spaced inter-
mediately to said main entrance ... substantially the same width .. [and]
fully exposed .. . and opening into the ground floor ...." This claim,
in our view, is clearly directed to a layout, plan or design totally lacking
in any mechanical or structural novelty or invention. Mr. Watson argued
that this subject matter was different than a mere lay-out or plan in the
E.S.P, application, supra, or in the Lawson case, supra. The difference, in
our view, is in re-arrangement of known structural features in a non-inventive
way and as the Applicant has mentioned (see above), "no novel significance,
per se, is being urged for such detail...." There is of course nothing
wrong with a claim that refers to a plan or deign if it also includes
novel and inventive structure. We are not satisfied that this claim de-
fined patentable subject matter and it should, in our view, be refused
under Section 2 of the Patent Act.
Claims 2 to 26, which depend directly or indirectly on claim 1, are directed
to, inter alia, features such as: an exterior stoop, the doors being recesses,
service entrance corridor, windows, formal foyer, exposed stairways
and railings, an entrance closet, a powder room, a sidewalk, service walking,
a garage door and so on. To add well known features in an aggregative
sense, i.e. no inventive structural arrangement to an unpatentable claim does
not rise to the dignity of invention. The arguments used in refusing claim 1
apply equally to these claims. These claims should also be refused.
We have carefully read and re-read the 77 pages of specification and reviewed
the drawings, but we fail to find subject matter that, in our view, falls under
Section 2 of the Patent Act. We hasten to add however, that probably the
author of the specification should have won some recognition for writing. We
must remember that there are numerous forms of human endeavor that might at
first sight appear to fall within the purview of the patent law but that,
upon examination, will be seen to fall, on the one hand, into the sphere of
other forms of industrial or intellectual property or, on the other hand, into
the public domain and hence be incapable of acquiring any protection in the
form of exclusive privileges. The Applicant has however received some
protection in the form of an Industrial Design from the Canada Patent
Office. We do, however, observe that the Applicant has received a United
States patent on a similar application.
To summarize, we are not persuaded, in view of the above discussion and
points raised, that the Applicant "has disclosed or claimed any subject matter
that is patentable under Section 2 of the Patent Act." We therefore recommend
that the decision in the Final Action to refuse the application, be
affirmed.
J. F. Hughes,
Assistant Chairman
Patent Appeal Board, Canada
I have carefully reviewed the prosecution of this application and considered
the recommendation of the Patent Appeal Board. I concur with the reasoning,
and findings of the Board. Accordingly, I refuse to grant a patent on this
application. The Applicant has six months within which to appeal my decision
under the provision of Section 44 of the Patent Act.
J. A. Brown
Acting Commissioner of Patents
Dated at Hull, Quebec
this 18th. day of July, 1979
Agent for Applicant
Gowling & Henderson
Box 466, Terminal A
Ottawa, Ont.