COMMISSIONER'S DECISION
Sec. 2: Process to brush teeth: Lanthanum Cation for Cleaning Teeth
A method of brushing teeth does not produce an essentially economic result within
the meaning acceptable in patent law. Also, the method of treating teeth was
considered the equivalent of a method of medical treatment which may be applied
by persons not in the field of medicine. Rejection affirmed.
****
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Examiner's Final Action on application 304,853 (Class 167-
318). The application was filed on June 6, 1978, by Imperial Chemical Indust-
ties Ltd., and is entitled LANTHANUM CATION FOR CLEANING TEETH. The inventors are
Gunnar Rolla and M.R.C. Winter. The Examiner in charge issued a Final Action
on May 20, 1981, refusing the application. In reviewing the application, the
Patent Appeal Board held a Hearing on April 24, 1982, at which the Applicant
was represented by Mr. D. Morrow, the Patent Agent.
The application discloses and claims a new dental cleaning composition, and
also claims the process where individuals use that composition to brush their
teeth. The dentifrice contains lanthanum as a cation form of a salt, and is
said to be particularly effective in removing plaque and tobacco stains from an
individual's teeth.
In the Final Action,claims 1 and 2, the process claims, were refused by the
Examiner as defining non-patentable subject matter and as being beyond the scope
of Section 2 of the Patent Act. No objection was taken against composition
claims 3-5.
In the Final Action the Examiner stated (in part):
...
Applicant's Arguments
(1) Since there has been no rejection of the composition claimed under
Section 2 and Section 41, the method claimed should be considered as a
method of use of the said composition.
(2) With respect to people that do not suffer from caries, such claimed
method cannot be regarded as a medical treatment (see amendment letter
page 5 lines 21-23, page 6 lines 13-14 and page 7 lines 9-11).
Applicant's arguments are rejected. Regardless of the composition being
within or beyond Sections 2 and 41 and that the method is the method of use
of the said composition, it remains that method claims 1 and 2 for cleaning
dental plaque is a medical treatment. On page 5 line 10 of the amendment
letter, it is stated it has "beneficial effect in the prevention of dental
caries and peridontal disease".
With respect to applicant's second argument, if a method treats one
person's caries, that method is a method of medical treatment.
With respect to the patentability of medical treatment reference is made to
the decision of the Supreme Court of Canada, in the case of Tennessee
Eastman Co. v. the Commissioner of Patents (C.P.R. 8, 2nd series, 202). In
his decision Pigeon, J. declared that methods of medical treatment are
beyond the scope of Section 2 of the Patent Act. Treatment of humans does
not produce a result related to trade or commerce and the grant of a
monopoly of a medical treatment method would circumvent the restrictions of
Section 41 of the scope of Section 2. In other words food and medical
agents if made by chemical processes may only be claimed in process-
dependent form. If however methods of feeding or medical treatment (method
of use) were made allowable, these claims would create a fence around the
same agent independent of the novel process by which they were
manufactured. It follows that medical treatment was never contemplated to
be within the scope of the term "invention" and Section 2 of the Patent
Act. It may further be noted that it is a matter of common sense that
everyone should have the common law right to feed, and clean himself and be
treated if ill without any legal impediment.
Therefore, claims 1 and 2 are rejected for being unpatentable under Section
2 of the Patent Act.
...
In responding to the Final Action, the Applicant made his case (in part) as
follows:
,..
A. A method of medical treatment is not, per se, unpatentable
The starting point must of course be the decision of the Supreme Court of
Canada in the case of Tennessee Eastman Co. v. The Commissioner (1973), 8
CPR (2d) 202. The Examiner cites that case for the proposition that
"methods of medical treatment are beyond the scope of Section 2 of the
Patent Act". If the case in fact supports that proposition, and if the
claims are for methods of medical treatment (which we do not accept) it
would follow that claims 1 and 2 must be rejected. However, in our
submission, the case does not support the proposition for which it is cited
by the Examiner,
The reasons stated by Pigeon, J. must be carefully examined. At page 206,
he defines the issue in the case as follows:
"The sole question is therefore whether a new use for surgical
purposes of a known substance can be claimed as an invention".
Pigeon, J. then examines the words "art" and "process" in the definition of
"invention". He does not conclude that those words, per se, exclude
medical methods of treatment. This is not surprising; the words "art" and
"process", taken by themselves, are very broad, and do not inherently
exclude any particular types of arts or processes. Further, Pigeon, J.
does not find that medical methods of treatment are excluded from the
definition of the "invention" by subsection 28(3) of the Act. It is only
by reference to subsection 41(1) of the Act that Pigeon, J. comes to his
conclusion. He reasons that an inventor should not be able to claim, by
patenting a method, a monopoly that he could not otherwise claim in the
substance itself, under subsection 41(1). Thus, since 41(1) precludes a
monopoly in a substance "prepared or produced by chemical processes and
intended for food or medicine" except when prepared or produced by a
particular process, a patentee should not obtain, in effect, a monopoly to
the same thing by claiming its method of use, irrespective of process of
manufacture. But that is all the decision stands for. The only fact
situation that was being considered by Pigeon, J. was the fact situation
where subsection 41(1) is applicable to the product used in the method.
In the present case, subsection 41(1) is inapplicable to the claimed
substances. Therefore, a patent for the method of use of the substances
involved in the present case is not an extension of monopoly of the type
considered by Pigeon, J. Thus, the decision of the Supreme Court is not
binding on the Commissioner in the present case, and the Commissioner is
free to decide the matter from first principles.
To consider the matter from first principles requires an examination of the
words "art" and "process" in section 2, unfettered by any consideration of
subsection 41(1). Taken by themselves, these words are broad indeed.
There is no Canadian decision that specifically excludes their application
to a method of medical treatment. The definition of "invention" in the
Canadian Act is essentially the same as that in the United States Act. The
only difference is that the United States Act formerly used the word "art"
and now uses the word "process". However, those terms have been treated as
equivalent. In the recent decision of the Supreme Court of the United
States in Diamond v. Diehr, (copy enclosed) a decision rendered on March 2,
1981, the meaning of the word "process" in the United States Act was
discussed. The Court adopted its own previous decisions, defining a
process as:
"a mode of treatment of certain materials to produce a given result.
It is an act, or series of acts performed upon the subject matter to
be transformed or reduced to a different state or thing. If new and
useful, it is just as patentable as is a piece of machinery. In the
language of the Patent Law, it is an art".
The Court holds that excluded from patent protection are laws of nature,
physical phenomena, and abstract ideas. The Court does not exclude medical
methods of treatment, and indeed, such have never been excluded under
United States Law (see, e.g., Ex Parts Scherer 103 U.S.P.Q. 107).
In New Zealand, where the definition of "invention" is essentially the same
as the United Kingdom definition, i.e. "manner of new manufacture", it has
been held in Wellcome Foundation Limited v. The Commissioner, [1980) R.P.C.
305 that a method of medical treatment comes within that definition. It
seems obvious that the definition "manner of new manufacturer" is
inherently no broader than, and probably inherently more restrictive than,
the words "art" or "process". Nevertheless, the New Zealand Court was
unable to find any inherent restriction in those words that excluded a
method of medical treatment. It is therefore submitted that, in the
absence of any authority requiring the exclusion of the method of the
present claims from patentability under the Canadian Patent Act, it should
be concluded that methods of medical treatment that do not relate to the
use of substances covered by subsection 41(1) of the Patent Act are
patentable, and the present claims should therefore be allowed.
B. In any event, the subject matter claimed here is not a method of
medical treatment
In the alternative, if the Commissioner holds that medical methods of
treatment generally are per se unpatentable, not merely those that relate
to the use of products covered by subsection 41(1), we nevertheless submit
that what is being claimed here is not, in substance, a method of medical
treatment. The issue here becomes one of characterization. What is being
claimed is a method of removing plaque and stains from teeth. Most people
are unaware that the presence of plaque on teeth has anything to do with
the formation of caries. However, the media constantly drum into everyone
the notion that the presence of plaque and othe foreign materials on teeth
is socially undesirable. Thus, the primary motivation for the removal of
such materials from teeth is social and cosmetic, not medical. The fact
that there may be an incidental (and usually unintended) medical benefit
should not render the subject matter of these claims, in substance, a
method of medical treatment. On the contrary, we submit that, in
substance, the claims cover cosmetic methods of approving the appearance
and texture of teeth.
...
The issue before the Board is whether or not brushing teeth with a composition
containing a lanthanum cation releasing material is directed to a process which
is patentable. Claim 1 reads:
A method of cleaning dental plaque or stains, including tobacco stains,
from human teeth by applying thereto to an aqueous composition which
consists of an unbound lanthanum canon in the form of a dissolved
water-soluble salt in such a concentration that in individual dose con-
tains from 0.01 m mole to 1 m mole of the cation, said composition
being substantially free from any ingredients which precipitate the
lanthanum cation as a water-insoluble salt, being designed for direct
application to the teeth and being in a form for use in a non-sequential
manner.
While the Agent has argued that no medical treatment is involved in the method
claims, the Examiner has stated that one of the benefits contemplated by the
process is the prevention of plaque on teeth, and thus removal of the environ-
ment in which bacteria may gather and contribute to the development of caries.
The Examiner contended that this benefit puts the method into the realm of a
medical treatment. In arguing Applicant's position that no medical treatment
was represented by the method claims the Agent referred to several court cases,
among them, in re Oral Health Application (1977) R.P.C. 612, in which a process
for cleaning teeth was refused. The Agent stressed that the decision in that
court case was that of a lower court in Britain, and urged that the effect of
two Supreme Court Decisions in Canada, namely Tennessee Eastman v The Commissioner
(1973) 8 C.P.R. (2d) 202, and Burton Parsons v Hewlett-Packard (1975) 17 C.P.R.
(2d) 97, should prevail.
Prom the application we find that the purpose of Applicant's process is to clean
teeth by removing plaque and stains by the action of lanthanum in cation form,
and by so removing the plaque remove the potential breeding spot for bacteria.
Because Applicant's process is directed towards cleaning or treating part of the
human body, i.e. the teeth, we are of the view that the process is a treatment of
the human body. We believe that Applicant's application is directed to subject
matter which is similar to that adjudicated in the Tennessee Eastman decision,
supra.
In reviewing the application and the prosecution we find it relevant to the
kind of method of treatment of teeth being considered here, to refer to
certain passages in the Tennessee Eastman decision (62 C.P.R. 117), first at
page 130 where Mr. Justice Kerr stated:
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).
and again 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.
It is our view that teeth which have been treated with Applicant's composition
are not articles of commerce, nor are the people whose teeth have been so treated.
One of the purposes of Applicant's invention is stated on page 3 of his applica-
tion as follows: "...the method of the invention will result in the additional
benefit of a reduction in the incidence of caries and/or peridontal disease."
In view of the purpose of the method, namely to treat part of the human body,
we again find guidance in Tennessee Eastman (62 C.P.R.) at page 154:
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 of 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.
We note that the above passage appears in the Supreme Court decision which affirm-
ed the position of the Patent Office, as found in 8 C.P.R. (2d) 202 at 204. Of
further significance to the method of this application, is the reliance by
Mr. Justice Kerr, in Tennessee Eastman at page 134, upon Maeder v Busch (1938)
59 C.L.R., as per the following statement:
But the object (of the invention) is not to produce or aid
the production of any article of commerce. No substance
or thing forming a possible subject of commerce or a contri-
bution to the productive arts is to be brought into existence
by means of or with the aid of the process.
We are led by the Tennessee Eastman decision to the view that Applicant's method
is not related to, nor does it produce, "...a result that is essentially economic"
within the meaning which is acceptable in patent law. We find therefore that the
method claims are directed to a treatment of part of the human body, and is
equivalent to a method of medical treatment which may be applied by persons
not in the field of medicine. Furthermore, the method does not contribute to
the productive arts. What individuals do to their own teeth as they stand before
a mirror in their bathrooms is not a process in the economic sense which the
Patent Act was created to protect.
We recommend that the rejection of method claims 1 and 2 be affirmed.
G.A. Ash M.G. Brown
Chairman, Member
Patent Appeal Board, Canada
I concur with the reasoning and findings of the Patent Appeal Board. According-
ly, I refuse to grant a patent containing claims 1 and 2. If any appeal under
Section 44 of the Patent Act is contemplated, it must be taken within six months
of this decision. If the refused claims are removed within the above time
period, the application is to be remanded to the Examiner to resume prosecution
in accordance with this decision.
Agent for Applicant
J.H A. Gariepy Smart & Biggar
Commissioner of Patents P.O. Box 2999, Station A
Ottawa, Ont.
Dated at Hull, Quebec
this 10th. day of August, 1982