COMMISSIONER'S DECISION
Section 2: Device For Displaying or Performing Operations In a Two Valued
System
A device displaying a plurality of symbols placed in predetermined arrangement
and in which each symbol represents one of the binary connectives defines a
proper combination. Final Action: Amended claim accepted.
****
Patent application 278541 (Class 35-2), was filed on May 16, 1977 for
an invention entitled "Device For Displaying Or Performing Operations
In A Two Valued System." The inventor is Shea Zellweger. The
Examiner in charge of the application took a Final Action on January 18,
1980 refusing to allow it to proceed to patent. In reviewing the
rejection, the Patent Appeal Board held a Hearing on August 19, 1981
at which the Applicant was represented by Mr. J.C. Singlehurst. Also
in attendance was Mr. R. Ahluwalia from the same firm, and the inventor,
Mr. S. Zellweger.
The application is directed to an apparatus for displaying and perform-
ing operations upon a complete set of sixteen binary connectives in a
two-valued notational system. It consists of at least one device display-
ing a plurality of symbols, each symbol representing one of the binary
connectives, the symbols being placed on the device in a predetermined
arrangement. Figure 9a below represents one of the physical devices:
<IMG>
In the Final Action the Examiner refused the application under Section 2
of the Patent Act because, in his view, it is directed to mere "printed
matter" having intellectual connotations only and does not have a new
mechanical function or purpose.
In that action the Examiner went on to say (in part):
. . .
It is held that the logic system and the way it co-operates
with the physical structure as disclosed and claimed in
this application is non-statutory subject matter and thus non-
patentable.
It is clear from the "Background and General Description"
section of this application that applicant sees the novelty of his
alleged invention as, quote (page 4, lines 16-19), "a new notation-
al system, namely the logic alphabet, for which carefully
combined features yield advantages that overcome the above noted
disadvantages of the current notational system".
It would appear that applicant is relying solely on the intellect-
ual connotation of the notational system for novelty. Intellectual
matter by itself is not patentable and as the disclosed notational
system lies within the purview of intellectual matter it is
non-patentable under Section 2 of the Patent Act.
Applicant goes on further to describe in his section of the
application that among the many advantages of this system an
especially important and unique one is that the system, quote
(page 9, last paragraph) "facilitates the use of a large family
of physical embodiments or models ... (and) can be displayed with
great clarity, both visually and tactually".
The combination of intellectual matter or printed matter
associated with structure may be patentable only if there is a
new mechanical purpose served and where this purpose is useful
in a practical way as opposed to an intellectual, artistic,
or aesthetic way.
. . .
In response to the Final Action the Applicant had, inter alia, this to say:
. . .
Mr. Singlehurst and Mr. Ahluwalia of the Agents met with
Examiners Millar and Crack and Section Chief McKenzie on Dec-
ember 19, 1979. The Agents wish to extend their appreciation
to these gentlemen for the courtesy extended during the course
of the approximately 3 hour conference.
Without detailing the various matters discussed at the con-
ference, the Agents simply wish to indicate (acknowledging
however the provisions of Rule 3(2) of the Patent Rules) that
their representatives left with the impression that Examiner
Millar was not convinced that there was no patentable subject
matter in the application but did raise objection to the
nature and scope of the claims. Indeed the representatives of
the Agents made notes with respect to certain suggestions by
Examiner Millar for claim amendments. Examiner Crack was of
the opinion that nothing in the application disclosed and/or claimed
was patentable subject matter and made reference to the (draft)
Final Action report then prepared. Section Chief McKenzie
raised certain questions of substance but reserved judgement.
On December 24, 1979, Examiner Crack contacted Mr. Singlehurst
to indicate that the applicant and his Agents would be given
three weeks to make any submission and if not received by the
Office within that time frame, the Office would proceed according-
ly to issue some report.
It became obvious to the Agents shortly into January 1980 that
it would not be possible to file any submission of substance
within the time frame provided (the applicant being in Alliance,
Ohio and the U.S. instructing Attorney in Chicago). Accordingly,
Mr. Singlehurst contacted Examiner Crack to inform him that it
appeared impossible to meet such time frame and that the Patent
Office might therefore deem it necessary to proceed with some form
of action.
The Agents were therefore somewhat surprised in the light of this
impression they took away with them that the Action issued was made
Final, the Final Action re port appearing in substance to be the
same which had been prepared at the time of the conference on
December 19, 1979.
The Examiner will recall that the applicant filed 56 claims
originally and the response filed November 16, 1979 reduced that
number significantly and basically directed them to one inventive
aspect. The disclosure and drawings and original claims however
clearly indicate that other aspects and embodiments of the invention
have been disclosed and the withdrawal of claims in the last
response was without prejudice and to present claims to a broad
aspect but not the only aspect of the invention to which the applicant
believes consideration should be given. Accordingly, the applicant
and its Agents have assumed that the Final Action is not prejudicing
its rights with respect to divisional subject matter.
. . .
At the Hearing Mr. Singlehurst argued that an invention is definitely present
in the disclosure, albeit not clearly described nor properly defined in the
present claims. He then submitted a proposed generic claim 1 for discussion
at the Hearing. That claim reads:
An apparatus for displaying and performing operations upon
a complete set of the sixteen binary connectives in a two-
valued notational system, said apparatus comprising:
at least one device; .
said at least one device having means for displaying a plural-
ity of symbols, each symbol representing one of said binary
connectives, and said plurality of symbols having been placed
on said device in a predetermined arrangement and when more
than one device, said devices being in a predetermined
configuration;
each of said symbols having a shape selected to indicate a
selected number of from zero to four components arranged
with respect to the quadrants of a set of Cartesian coordinates,
wherein the shape has iconicity, frame consistency, and eusymmetry
with respect to said quadrants of Cartesian coordinates, and
wherein the alignment of said shape is symmetry positional with
respect to the x-y axes of said Cartesian coordinates;
and further wherein said shape is taken from at least six
letter-shapes capable of generating 16 symbols that can be
readily assigned a phonetic value and that have four levels of
symmetry such that two of said symbols are two-way self-
flippable and self-rotatable, two of said symbols are self-
rotatable but not self-flippable, four of said symbols are one-
way self-flippable but not self-rotatable, and eight of said
symbols are neither self-flippable nor self-rotatable; and
said symbols and said arrangement of said symbols or configura-
tion of said devices selected so that said devices are adapted
by transformations taken from the group consisting of
reflections, rotations, translations, and counter-changes and
combinations thereof to display and perform said operations.
Also at the Hearing the inventor, Mr. Zellweger, gave the background of the
invention and a thorough demonstration of how it works.
We have carefully reviewed the prosecution and considered all of the points
raised at the Hearing. We agree with the Examiner that the proposed generic
claim 1 overcomes all of the objections raised in the Final Action. In other
words the printed matter serves a new mechanical function defined in a proper
combination, and on the record before us there is clearly ingenuity in the
invention.
With this in mind, we contacted Mr. Singlehurst and advised him of our find-
ings. On March 18, 1982 Mr. Singlehurst cancelled all of the claims
and submitted claims 1 to 89. We recommend that these claims be accepted.
There are five independent claims now in the application, none of which are
broader than allowable claim 1 shown above.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and concur with the
reasoning and findings of the Patent Appeal Board. Accordingly, I direct
that prosecution should resume on the basis of the amended claims.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 10th. day of June, 1982
Agent for Applicant
Meredith & Finlayson
77 Metcalfe St.
Ottawa, Ont.