COMMISSIONER'S DECISION
Lack of Invention; Home Building Development
Selecting another use for a building after it has served its initial purpose
was held to lack inventive ingenuity in view of the art. Such change of use
does not relate to a manual art or skill that falls under Section 2 of the
Act. Rejection affirmed.
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This decision deals with Applicant's request for review by the Commis-
sioner of Patents of the Examiner's Final Action on application 310,519
(Class 20-7)assigned to North Oakland Development Corporation entitled
HOME BUILDING METHOD AND APPARATUS. The inventor is Leon Blachura.
The Examiner in charge issued a Final Action on November 14, 1980 re-
fusing to allow the application.
This invention is directed to a method of developing a residential
trait of land with completed buildings by constructing an on-site
structure which serves as a factory for manufacturing the buildings
designed for the tract until it is fully developed, and which, after
each building has been fabricated and placed, finally serves the com-
pleted development in another manner, such as a shopping center. The
method also includes creation of individual foundations for the build-
ings, as well as transportation of the buildings to the foundations and
placement thereon. Figure 1 below depicts that arrangement:
<IMG>
In the Final Action the Examiner refused claim 1, the only claim, as
being contrary to Section 2 of the Act, and as not patentably distinguish-
ing over the following reference:
German Offenlegungsschrift
2,309,509 Sept. 6, 1973 Anyos et al
The Anyos et al publication discloses a system for development of a
tract of land which uses a large building in which are prefabricated
complete, as well as partially completed, prefabricated dwellings, and
a transporting means to move the finished units to various parts of the
tract for placement as desired, e.g. on pre-formed foundations. Figure
15 below illustrates the arrangement:
<IMG>
In the Final Action the Examiner stated (in part):
. . .
The cited German publication shows in figure 15, a building site
under development. There is a factory 88 in which houses are
built. The houses are then trucked to the foundation by a vehicle
and unloaded by a crane and placed on the foundation. Since the
patentee uses a temporary type of structure for his factory, it is
assumed that it would not be practical to convert it into a civic
center or whatever after the site is completed. This is the only
difference between the art and the applicant's claims. This
difference is considered to be purely and simply a matter of
choice. It is well within the skill of any tradesman to convert
Buildings into anything feasible and practical. For example,
schools have been converted into factories and factories have, no
doubt, been converted into schools. This is simply a matter of
expediency and does not amount to invention.
Applicant's arguments with respect to the German patent have been
considered, however, they are not persuasive. The concept of
planning a building initially with the thought that you might some-
day use for something else is old. Many homeowners have done
this. For example, many people build a 4 or 5 room house because
they have a big family and actually plan, at the outset, to convert
an extra bedroom into a study or workshop. There is no invention
in doing this.
Applicant's claim is further rejected in that it is contrary to
Section 2 of the Patent Act. Chapter 12, paragraph 12.03.01 (e) of
the manual of Patent Office Practice is applicable. The rejected
claim falls into the category of subject matter being a scheme or
plan or system of doing business and the like and is thus not
patentable under Section 2.
. . .
In presenting his case for allowance, Applicant argued (in part):
The Examiner rejects the claims as being obvious and well within
the skill of an ordinary tradesman to convert buildings into any-
thing feasible and practical, citing the example of the conversion
of schools to factories. However, the concept set forth in this
claim is not the mere idea of converting buildings to another use,
but rather the method of building a residential community having a
central structure usable for a number of uses. The structure being
employed is a factory building for the prefabrication of residence
buildings. That is, according to this concept, a permanent struc-
ture is erected on the site rather than the temporary structure of
the German patent and the permanent structure is then converted to
nonfactory use thereafter.
It is necessary to the concept to initially have such conversion in
mind at the time the residential development is being constructed
such that a structure suitable for such conversion is initially
erected.
Such concept is clearly not derivable from the German patent which
does not conceive, contemplate or teach such approach to construc-
tion of a residential subdivision.
Accordingly, the question is not merely whether it is obvious to
convert the structure from one use to another but rather whether it
is obvious to initially erect such a building with a conversion in
end use in mind. Applicant respectfully submits that based on the
prior art cited by the Examiner, such concept is clearly not
obvious.
The claim employs the language "factory building". It is respect-
fully submitted that the term "building" clearly distinguishes over
temporary shelters of the sort described in the German patent.
Webster's Dictionary defines the term "building" as "a usually
roofed and walled structure built for permanent use...". Accord-
ingly, it is respectfully submitted, "building" is a reasonably
defined term to distinguish over temporary shelters of the sort
described in the prior art reference.
The claim language is drawn to the concept of fabricating a per-
manent building structure on the tract in the context of carrying
out a residential development, constructing the houses in the
building and then converting the building to an after-construction
other use.
. . . .
The Examiner also asserts that the method set forth is merely a
scheme or plan or system of doing business and thus not patent-
able. Clearly, however, this claim is not directed to a manner of
doing business but rather to a physical process. That is, the pro-
cess of constructing a development complete with a large permanent
structure suitable for nonresidential use after the development has
been completed.
Such process of physical construction results in the production of
vendible products and can not accurately be deemed a method of
doing business and it is respectfully submitted that the Examiner's
rejection is not well founded.
. . .
The issues before the Board are whether or not the claim is directed to
a patentable advance in the art and whether or not the claim falls
within the ambit of Section 2 of the Patent Act. Claim 1 reads:
A method of constructing a residential development comprising, in
combination, providing a suitable unitary tract of land; construct-
ing on the tract a factory building suitable for the simultaneous,
progressive fabrication of several dwelling houses, fabricating
complete houses in the factory building; delivering the houses from
the factory to locations on the tract and installing the houses on
the foundations; and converting the factory building on its orig-
inal site to use in providing services to the occupants of the
residential development upon termination of fabrication of the
houses and installation on the foundations.
We are informed by Applicant's arguments that he considers that his
concept is the method of building a community of structures having one
structure which may be employed as a factory building or for other
different uses. We find in the Anyos et al publication (hereafter
Anyos), that a central structure is used as a factory building in which
preformed full standing dwellings, or sections of dwellings, are completed,
and that thereafter, the preformed units are transported to a building site.
We derive from Anyos that Applicant's alleged new concept of using an on-site
factory building to prefabricate building units is not new as it has been
disclosed by Anyos.
we are of the view that the selection of the kind of use for a building is
a choice based on design and does not involve inventive ingenuity. It is
well known that swimming pools and tennis courts have been placed in buildings
which may be formed either with rigidly connected walls and roof, or with
air supported walls and roof. Further, the use to which a building is put
depends to a large extent on the cost. Thus, we believe that the selection
of a building which has rigidly supported walls and roof, or air supported walls
and roof, is a matter of choice of design influenced, at least in part, by
the costs of the different designs. In view of Applicant's remarks on the
definition of'temporary' we add also, that the connotation 'temporary' to
describe a building applies equally to a building with rigidly connected walls
and roof, such as the 'temporary' buildings which were built in Ottawa during
World War II~a few of which are still standing.
In Applicant's arrangements we are not persuaded that the inclusion of a
'permanent' structure as the central structure rather than the 'temporary'
structure of Anyos, is an act that involves inventive ingenuity, nor are we
persuaded that selecting another use for a building after it has served its
initial purpose amounts to invention. It is our view that the uses envisaged
may involve planning and organizing the sequence to be followed, but we are
satisfied that inventive ingenuity has not been exercised.
In summary we are satisfied that claim 1 is not directed to a patentable advance
in the art in view of the cited reference. This is assuming, arguendo, that
the subject matter falls under Section 2 of the Patent Act.
From the above it appears academic whether or not the subject matter falls
under Section 2 of the Patent Act, because we have found nothing patentable.
The method in question is directed to different uses for a building in a
residential development. t9e will, however, comment on the matter.
In determining whether Applicant's conversion of a factory building to a
different use relates to a scheme or plan or system of doing business, we believe it
is pertinent to the issue to state that conversions of buildings to different
purposes is extremely well known. By way of example, we refer to buildings such
as a department store, or a factory, or an airplane hangar, or a garage which
have been converted to various other respective uses such as office space, or
warehouse, or sports area, or bedroom space, as accommodation needs for business
or housing dictate. We are of the view that the determination of the above kinds
of conversion falls within the skills of an architect or a planning consultant.
Thus, we believe that Applicant's proposal to convert a building to another use
on completion of the development falls into the category of a scheme or plan
or system related to a business proposal. Therefore, we are satisfied that
Applicant's proposed change of use aptly falls within the confines of the skills
exercised by an architect or a planning consultant, and does not relate to a
manual art or skill that falls under Section 2 of the Act.
We recommend, therefore, that claim 1 be refused as failing to define a patentable
advance in the art in view of the cited art, and further that the application should not
be considered as defining subject matter that is an invention within the meaning
of Section 2 of the Act.
J.F. Hughes M. Brown
Assistant Chairman Member
Patent Appeal Board, Canada
I concur with the reasoning and findings of the Patent Appeal Board. Accord-
ingly, I refuse to grant a patent. The Applicant has six months within which
to appeal my decision under the provisions of Section 44 of the Act.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 2nd. day of April, 1982
Agent for Applicant
Smart &, Biggar
Box 2999, Station D,
Ottawa, Ont.
K1P 5Y6