COMMISSIONER'S DECISION
SECTION 2: Programmable Phototypesetter
The fact that a human operator must provide a control function in a claimed
process does not per se render it unpatentable. Method claims which might be
interpreted as covering mental steps were amended by the agent. No objection
was made to the apparatus claims.
Rejection: Modified
****
Patent application 269,230 (Cl.95/Sub.Cl.16), was filed on January
06, 1977 for an invention entitled Inexpensive and Reliable Custom
Programmable Phototypesetter," The inventor is Peter Robert Ebner
(assignor to Itek Corporation). The Examiner in charge of the
application took a Final Action on April 15, 1980 refusing to allow
it to proceed to patent. In reviewing the rejection, the Patent
Appeal Board held a Hearing on May 27, 1981, at which the Applicant
was represented by Mr. R. McFadden.
The claims at issue in the application are directed to a method of
controlling the operation of an optical element control system of a
phototypesetter.
In the Final Action the Examiner refused method claims 15 to 24
because, in his view, they "are directed to non-statutory subject
matter not within the meaning of invention under Section 2 of the
Patent Act". The apparatus claims 1 to 14 were not objected to. In
that action the Examiner stated (in part):
For example in claim 15 the above noted steps (c) and (e) are
performed by the operator not the machine. Hence claim 15
accomplishes a result by means of a person's interpretive or
judgmental reasoning. The other method claims, 16 to 24, also
have similar procedural steps. Applicant's argument an pags 2
and 3 of his letter of October 22, 1979 are not persuasive
that the rejected claims do not depend upon interpretive
reasoning on the part of the operator. The disclosure at page
22 disclosing that these steps may be carried out by an
unskilled operator is not helpful. The disclosure at page 22
merely discloses that an operator with only minimal skill can
carry out the method. The question is not one of how little
skill is necessary on the part of the operator. The question
is whether or not there is any necessary interpretive or
judgmental reasoning performed by the operator. Clearly the
examining and re-examining steps are necessary to carry out
the method of claims 15 to 24. In these steps the operator
must make judgments as to whether or not the images are
sharply focused and then do something else dependent on the
particular judgment.
Applicant's letter of February 19, 1980 argues that the
examiner's action of November 19, 1979 rejected claimed 15 to
24 by relying on chapter 12.03.01(c) of the Manual of Patent
Office Practice. Such was not the intent of the examiner's
action rejection. Applicant is referred to the first two
lines of paragraph four of said report wherein claims 15 to 24
were clearly refused as not within the meaning of invention in
Section 2 of the Patent Act. The second last sentence of this
paragraph was intended for information purposes only and was
included to particularize the reason for the refusal for the
benefit of the applicant. It is agreed that this Manual
cannot be used as an authority for rejecting claims.
In response to the Final Action the Applicant had, inter alia, this
to say:
The Examiner's reasons for rejecting the method claims are
well detailed in his Final Action of April 15, 1980, and it is
not necessary that they be repeated here, and it is sufficient
to say that the Examiner considers that steps (c) and (e) of
claim 15 are performed by the operator, not the machine, with
the result that claim 15 accomplishes a result by means of a
person's interpretive or judgemental reasoning. The steps as
recited in broad claim 15 are representative of similar but
further characterized steps recited in the remaining method
claims and it is appreciated that any determination made by
the Board in respect of claim 15 is applicable to the
remaining of the method claims under consideration.
The actual structure of applicant's novel phototypesetter is
well detailed in the disclosure and drawings and it is not
believed that any detailed clarification of the apparatus
involved is necessary at this time.
However, the claims under consideration are directed toward a
customized method of programming an optical element control
system of an individual phototypesetter and some comments
concerning these claims are now presented for consideration.
The method as defined is a method which is performed by an
employee of applicant company during assembly of a phototype-
setter to ensure that the positioning of the optical elements
involved result in a sharply focused image so that repeated
reproductions on photosensitive tape are as sharp and as clear
as possible. As explained in the disclosure, the method
involved is quite simple and straightforward but at the same
time is one which provides a distinct advance in the art, and
applicant believes that they are entitled to the protection of
the method claims.
Applicant's novel phototypesetter is assembled and the various
optical elements are initially positioned at their
theoretically correct positioning which would result in a very
sharply focused image if all components and lenses in the
system were perfect, but this theoretically perfect imaging
apparatus is difficult if not impossible to achieve because of
differences in manufacturing tolerances. Thus, if applicant's
phototypesetter were assembled and sold on a theoretically
correct basis, in practice the results might not be as sharp
as possible.
The method as detailed in the claims is one which is practised
by applicant during manufacture to provide a precisely tuned
system which need never again be altered (or programmed)
during the life of the machine. We wish to point out that the
programming as detailed in the claims is not one which is
practised by the purchaser and user of the machine but is the
method followed by applicant to ensure that each individual
machine performs to maximum advantage so that no coding
changes are necessary by eventual end users of the apparatus.
In summary, it is submitted that the present method claims are
patentable inasmuch as:
1. The method as defined is a useful art which results in an
improved vendable product and which involves operator
involvement that is clearly defined and precise and which can
otherwise be performed by apparatus;
2. The disclosure contains quite sufficient teachings of the
human intervention so that the inventive process is
successfully operative when performed by any user;
3. The method satisfies the test of operability inasmuch as
it can be carried out with complete success by any one to whom
the specification is addressed; and
4. The method involved is a useful art as distinct from a
fine art.
The issue before the Board is whether or not claims 15 to 24 fail to
comply with Section 2 of the Patent Act. Claim 15 reads:
A customized method of programming an optical element
control system of an individual phototypesetter wherein at
least one lens device thereof is positioned along an optical
axis to produce sharply focused images at an imaging station
comprising the steps of:
a. providing at least one focusing lens device for producing
character images at said imaging station and which are
supported by at least one movable lens carriage having
positions along said optical axis which are a function of the
sizes of the characters to be phototypeset;
b. positioning said lens carriage in accordance with a set of
initial positioning codes along said optical axis at positions
which would produce a sharply focused image at said imaging
station of said phototypesetter if said lens device had the
theoretically correct focal lengths;
c. examining the resulting images to determine the degree of
defocusing due to variations in the theoretically correct
focal lengths of said lens device;
d. altering the initial positioning codes corresponding to
the theoretically correct focal lengths stored within said
control system by a given incremental amount;
e. re-examining the defocused images and again altering the
altered positioning codes if necessary until the images are
sharply focused, and thereafter;
f. employing the finally altered positioning codes generated
for each character size for positioning said lens carriage in
z during subsequent operation of the phototypesetter.
Steps (c), (d) and (e) are the steps which were objected to by the
Examiner.
At the Hearing Mr. McFadden argued that in his view the claims
clearly satisfy the requirements of Section 2 of the Patent Act.
The Examiner in the Final Action refers to human mental reasoning or
judgement i.e. mental steps. A mental step in the sense in which
the term is employed in patent language is a step in a process, the
performance of which is ascertained or controlled by the dictates of
the human mind, which step may be performed manually or by
mechanical, electrical or chemical means. A mental step which is
judgmental or interpretive (purely mental) is definitive of a
process the result of which depends on the intelligence and
reasoning of the human mind. It seems settled that it is only this
latter type of mental step which renders a process unpatentable.
The mere fact that a human operator must provide a control function
in a claimed process does not per se render it unpatentable.
We are therefore satisfied that any method or step in a method which
can be manually performed and requires the use of the human eyes for
detection or determination of any condition such as temperature,
pressure, time, etc., and/or the use of the hands for the purpose of
manipulating, such as turning off or on or regulating a given device
in a certain manner or at a certain time, etc., to produce a certain
result necessarily involves the human mind and hence can be classed
as a mental step. Such steps, however, are not purely mental or
interpretive mental steps and are not the kind which are prohibited
by the decisions relating to purely mental steps.
In summary therefore a process which includes a mental step
involving the ascertaining and sensing facilities is patentable
(provided all other attributes of patentability are present), since
the effect of the mental step is precise and predictable no matter
how skillfully it is performed. On the other hand, a process which
includes a mental step, the nature of which is dependent upon the
intelligence and reasoning of the human mind cannot satisfy the
requirements of operability since the effect of the human feedback
or response is neither predictable nor precise whenever the process
is worked by its users. The specific question then is whether or
not the steps involving human responses are of the type that require
subjective interpretive or judgemental considerations, or whether
they are responses that are clearly defined and precise, and for
example, can be performed otherwise by apparatus.
At the Hearing Mr. McFadden emphatically stated that the process
satisfied the test of operability because, it can be carried out
with complete success by anyone skilled in the particular art. This
then takes it out of the field which requires subjective interpret-
ation or judgemental consideration. He also assured the Board that the
steps referred to could be carried out by machine, and that he was
willing to supply an affidavit to that effect if it was deemed necessary.
We are concerned however that the existing claims might be interpreted as
covering mental steps. Consequently, we discussed our concern with
Mr. McFadden. He subsequently amended the claims to overcome that
objection.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I concur with the reasoning and findings of the Patent Appeal Board.
Accordingly, I direct that prosecution should proceed on the basis
of the amended claims.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 29th. day of October, 1981
Agent for Applicant
McFadden, Fincham & Co.
251 Bank Street
Ottawa, Ontario
K2P 1X3