COMMISSIONER'S DECISION
Section 2: Dental Identification of Human Remains
A labelled ceramic chip is placed in the teeth of bones of the human
body so it may be identified after air crashes or other disasters. The
method of insertion was held to be beyond the scope of Section 2
Rejection Affirmed.
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Patent application 223,202 (Class 83-30), was filed on March 25, 1975,
for in invention entitled "Positive Identification Method And Structure"
The inventor is Philip L. Samis. The Examiner in charge of the application
took a Final Action on September 22, 1978, refusing to allow it to proceed
to patent. In reviewing the rejection, the Patent Appeal Board held a
Hearing on February 13, 1980, at which the Applicant was represented by
Mr. R. Mitchell. Dr. Samis was also present.
The subject matter of this application is a system of identifying human
beings and animals. A miniature information carrier, such as a ceramic
chip, is buried in a hard portion of the body, such as a tooth. If the
individual is killed in an airline crash, for example, his body may be
identified by the chip. Figures 2 and 7 reproduced below are representative of
what is involved.
(see formula I, II)
The plaque 10 is shown embedded in the tooth The purpose of pin 34 is
to assist in detecting the location of the plaque by radiographic procedure.
In the Final Action the examiner rejected claims 1 to 15 as directed to
"subject matter outside of the scope of Section 2 of the Patent Act."
Claims 1 to 15 relate to the method of implanting the plague in a "highly
mineralized portion of the body." Claims 16 to 26 directed to the carrier
or plague were said in the Final Action to be allowable.
In response to the Final Action the Applicant quoted numerous court
decisions, and stated (in part):
...
... The step of drilling a hole in the enamel of a tooth when
there is no decay in the immediate area of the drill hole or
in the area prior to the drilling of the hole does not result
in the treatment of that tooth. If the tooth as not diseased,
then how can it be said that the drilling of a hole..., the
placing of a tag..., and the capping of that hole is a treatment
of that tooth. The person drilling the hole in the tooth is not
exercising judgment in a professional manner to treat or cure
the tooth, but merely as a means to an end, that end being the
identification of the body.
Applicant insists that he is not by his method treating the
human body or carrying out surgery in the medical sense. The
method including the step of drilling a hole in a tooth meets
the definition of "art" or "operation" defined in Lawson v Com-
missioner of Patents.
...
The results of the method are not improved by one's professional
skills in carrying out the step. The hole in the tooth can be
drilled by a dentist or by anyone capable of handling a dental
drill. It is also contemplated, although not described in the
present application, that a small jig could be provided for con-
sistently carrying out the step of drilling the hole in the tooth
...
It is believed that it is settled in Canada that in order for a
process or method to be excluded from patent protection under
Section 2(d), it must be to a medicine or surgery in the strict
sense. That strict sense is in the sense of treatment for curing
diseases.
The cases certainly do not support the Examiner's contention that
"Drilling a hole is an operation, and when one of the starting
materials is a living body the operation is of a surgical nature"
Certainly, the terms "medicine" and "surgery" must be, under
Canadian practice, interpreted in the strict sense and not in
the broader sense which the Examiner attempts.
In summary, since the method claimed is one for the purpose
of identification and not for the purpose of treatment of
disease, applicant submits that he is entitled to a patent
under Section 2(d) of the Act for the process of claims 1 to
15.
Claim 1 of this application reads:
A method for providing positive identification of a living
body comprising:
(a) providing a hard, highly mineralized portion of the
body with a cavity,
(b) placing identifying intelligence on a radiographical-
ly detectable carrier,
(c) embedding the carrier in the cavity whereby the carrier
is completely within the minieralized portion of the
body such as to lend a high degree of heat and impact
protection to the carrier.
The question before the Board is whether or not the subject matter of the re-
jected claims is outside the scope of Section 2 of the Patent Act.
There was considerable controversy about the term "surgery" as used in the
application. In the Final Action it was stated that "....the Examiner is
unable to follow the Applicant's reasoning which is directed to some point
concerning medicine. While surgery might be broadly considered to be a part
of what is sometimes referred to colloquially as the practice of medicine,
this appears rather irrelevant to the rejection of the claims which is, and
always has been, that their subject matter claims the treatment of a living
body by surgery. Drilling a hole is an operation, and when one of the starting
materials is a living body the operation is of a surgical nature..."
On the other hand Mr. Mitchell argues that "....The word surgery, according
to Webster's Third New International Dictionary, is a branch of medicine that
is concerned with diseases and conditions requiring or amendable to operative
or manual procedures. It is clear that the drilling step of provision
of a cavity in a living being's tooth in the method claimed in the present
application is not a surgical step. If medicine refers to the fine art of
treating diseases, then surgery is one of those fine arts within the broad
definition of medicine and is considered for the full purpose of treating
diseases. The step of drilling a hole in the enamel of a tooth when there is
no decay in the immediate area of the drill hole or in the area prior to
the drilling of the hole does not result in the treatment of that tooth...."
Further, Applicant maintains that the step of drilling a hole in a tooth
meets the definition of "art" as defined in Lawson v Commissioner of Patents,
1970, 62 C.P.R. 101. Turing to that decision at page 109 "art" or "manufacture"
are defined as:
An art or operation is an act or series of acts performed
by some physical agent upon some physical object and pro-
ducing 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 con-
sists 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 Tennessee Eastman vs the Commissioner of Patents (1970) 62 C.P.R. 117
and 1974 S.C.R. 111, after deciding "the application is concerned with a pro-
cess of medical or surgical treatment of living tissues in living bodies
including humans," the Exchequer Court said at 155 (quoted by the S.C. at
114):
The method lies essentially in the professional field of
surgery and medical treatment of the human body, even al-
though 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
judgements that I have cited, the method is not an art or
process within the meaning of s.2(d) of the Patent Act.
At the Hearing Dr. Samis, the inventor, stated that the identifying tag did
not necessarily require a dentist to implant it in a tooth. He indicated
that any person capable of handling a dental drill could be taught the
necessary technique in a short period of time.
In response to the question as to whether or not the application relates to a
"manner of manufacture" Mr. Mitchell agreed that it did not result in a vendible
product. However, he maintains that it is a method which results in a commer-
cial benefit similar to the situation covered by the N.R.D.C. application as
reported in R.P.C. (1961) @134. Further in support of his position Mr. Mitchell
recited a claim from a recently alloyed Canadian patent which relates to certain
methods of testing which require the step of performing a "thoracic duct
fistula" on a patient.
We are aware that there are dental procedures in which "posts" are tapped into
the existing tooth root as a base for building the tooth up by acrylic or
other such material. Thus an article is "embedded" in a tooth by a method
similar to that proposed by the Applicant. However since we are only concerned
with Section 2 of the Patent Act we will not comment further on this point.
Having studied the relevant decisions of the Canadian Courts, and in particular
Tennessee Eastman (supra) Imperial Industries v Commissioner of Patents
51 S.P.R. (1967), Lawson v Commissioner of Patents (supra) and the jurisprudence
relied upon in them, we believe that the process claimed is unpatentable,
under Section 2 of the Patent Act.
In the Lawson decision (supra) at p. 109, it was stated that:
I take it as well settled that all new and useful arts
and manufactures are not necessarily included in s. 2(d)
of the Act.
The Court also quoted with approval the following passage from National Re-
search Development Corporations application (Australia) [1961] R.P.C, 135,
Dixon C.J. 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, [1953] 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: sec Maeder v,
Busch (1938), 59 C.L.R. 684 at p. 706.)
From that the Court concluded:
It is obvious from the concluding portion of the above quota-
tion that professional skills are not the subject-matter of a
patent. If a surgeon were 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.
In the Imperial Chemical case (supra) Mr. Justice Cameron concluded that the
term "medicine," (and by analogy "surgical") are to be interpreted broadly, in
the ordinary vernacular sense. Thus:
The word "medicine" and the word "medication" as so used are
not terms of art. Instead they are swords of the vernacular,
of common parlance, and must therefore be interpreted in
their ordinary sense.
and
the correct judicial approach to the question has been
definitively stated by the Supreme Court of Canada. (See
Parke, Davis & Co. v Fine Chemicals of Canada Ltd. 30 C.P.R.
59 at p. 66 where Martland, J., said, "I agree with Thurlow,
J. [27 C.P.R. 117] that the word 'medicine' as used in
s. 41 of the Act should be interpreted broadly.... ).
When we look at Applicant's processes we find that it covers drilling into
a patient's tooth and implanting an object in it. It is true that the object-
ive is not to stop decay in the tooth, but we believe it is still essentially
a dental procedure. Dr. Samis said at the Hearing that any person capable
of handling a dental drill could be taught the necessary technique in a short
period of time, but we do not think that is germane to the question before
us. Drilling teeth, embedding a foreign object in it, and properly sealing
the cavity requires precision and care. One must avoid infection, destruction
of the tooth nerve, haemorrhaging, after effects and the like. In some instances
anaesthetics may be required. One should assess whether the tooth is in fit
condition for the operation in the first place. All this comes within the
skill and competence of a qualified dentist. Indeed in most, if not all
jurisdictions within Canada, it can legally be performed only by a dentist.
See The Dentist Act of Quebec, R.S.Q. 1964, c. 253, s. J.34 or The Dentistry
Act of Ontario, R.S.O. 1970, c. 108, s. 21.
Applicant's argument is the same one as that used in the Tennessee Eastman
case, 62 CPR 117 at 124, and rejected by the court:
The Examiner has suggested that the success of the process
is dependent on the skill and knowledge of the physical and
the physiological processes of the patient. Although the
success of the method may defend somewhat on the persons using
the compositions, the disclosure amply outlines the expect
procedure on, for example, page 7, for applying the adhesive
to form a firm bond. A physician may normally apply the method,
however, it is not considered that any skill, knowledge or
training would be required such as that demanded of a physician.
Certainly a physician is not the only person who may close a
wound by suturing as it is common for athletes to be treated
by others such as trainers, etc., to close wounds obtained
during sport contests. The procedure of the instant invention
thus may be readily followed by others and does not require the
skill and knowledge of a physician to use and may be employed
by non-professional medical people....
The Exchequer Court's answer to that was given at p. 155:
...The method lies essentially in the professional field
of surgery and treatment of the human body, even though
it may be applied at times, by persons not in that
field. (underlining added)
In the present case we are convinced that the method claims lie essentially
in the field of dentistry and would normally be performed by dentists. Con-
trary to what Applicant contends, we believe the success of the operation
would depend on the professional. skills of the dentist. We are not consider-
ing a process for drilling disembodied teeth, but those in the mouth of
living human beings, with all the risks and dangers that that involves.
In deciding that the method in question was not an art or process within
the meaning of Section 2, Mr. Kerr quoted from several earlier cases, including
(at p. 129) Lawson v Commissioner of Patents; National Research Development
(also at p. 129); C & W's Application (at p. 130-132); G.E.C.'s Application
(at p. 132); Maeder v Busch (at 133 to 135 and 151); Maeder v Ronda
(at p. 135) and others. At p. 130 he said:
Early in the development of patent law in England it was
accepted that a manner of new manufacture may be a product
or may be a process that can be used in making something
that is, or may be, of commercial value, a vendible product.
Concurrent with that concept was the principle that
a method of treating any part of the human body does not
afford subject matter for a patent.... (underlining added).
At p. 135: ... in Maeder v "Ronda" Ladies Hairdressing Salon and Others
[1943] N.Z.L.R. 122, Myers C.J., and Johnston J. ...held
that a process, to be patentable, must at least have relation
in some way to the production of an article of commerce.
(underlining added)
That brings us to Mr, Mitchell's contention that the process has commercial
benefits. In Tennessee Eastman, at p. 154, Mr. Kerr said:
In my view the method here does not lay in the field of the
manual or productive acts nor, when applied to the human body,
does it produce a result in relation to trade, commerce or
industry, 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 patent case judgements. The method lies essentially in the
professional field of surgery and medical treatment of the
human body, even although it may be applied 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 or
subject matter for patent, as indicated by authoritative
judgements that I have cited, the method is not an art or
process or the improvement of an art or process within the
meaning of s. 2(d) of the Patent Act.
This particular passage was repeated in the affirming decision of the Supreme
Court in 8 C.P.R. (2d) 202 at 204.
Mr. Justice Kerr also relied, at p. 134, upon Maeder v Busch (1938) 59 C.L.R.
684, and quoted a lengthy passage including the following:
But the object (of the invention) is not to produce or aid the
production of an article of commerce. No substance or thing
forming a possible subject of commerce or a contribution to
the productive arts is to be brought into existence by means
of or with the aid of the process.
In the present case the "product" or result of the process are human beings,
and not something which is sold in the market place. We are consequently
satisfied that Applicant's process does not produce a result "That is essential-
ly economic" in the sense that that term is used in patent law. Fees may be
paid to those who carry out Applicant's process, but those fees differ in no
respect from those paid medical practitioners or surgeons for their services,
which clearly fall outside the scope of Section 2. That argument would not
apply, of course, to the product of claims 16 to 26, which were considered
allowable by the Examiner.
We have concluded in the present case that the method does not lie "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 industry or a
result that is essentially economic" (Tennessee Eastman per Kerr J. at p. 154).
It is a fine art, the success of which depends upon the skip of the dentist
performing it. We believe claims 1 - 15 should be refused.
G.A. Asher S.D. Kot
Chairman Member
Patent Appeal Board, Canada
I have carefully reviewed the prosecution of this application, and considered
the reasons of the Patent Appeal Board. I concur with its reasoning and
findings which I now adopt as my own. Claims 1 to 15 are refused. The
Applicant has six months within which to remove the claims or to appeal my
decision under Section 44 of the Patent Act.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 31 st day of October, 1980