Commissioner's Decision
A growing method and a flower pot for dwarfing plants in accordance with section 2
of the Patent Act. Claims relating to the container are complete.
****
The present decision follows from the request made by the Commissioner of Patents
for a review of the examiner's final decision to reject application No 279,962
(Class 47-18). The invention is entitled CONTAINERS AND PROCESSES FOR DWARFING
PLANTS. Mr Bruno Greber is the inventor. The examiner responsible for reviewing
the application rejected the claims.
This application relates to a growing method and a flower pot for dwarfing plants.
The pot is open at its upper end and has corrosion-resistant walls in which minute
holes have been pierced. The main pot is placed inside another container. A small
plant, a seed, a young shoot or a bulb is placed in the pot; the pot used is not
big enough to contain the amount of nutritive substances necessary for normal
development of the plant. The holes are too small for enough roots to grow through
them into the outside container in order to obtain the nourishment required for the
plant to reach its normal size; however, they allow dissolved nutritive substances
from the outside container to penetrate into the pot. Figure 5 illustrates the pot
dealt with in the claims.
(see formula I)
In his final decision, the examiner dismissed the claims relating to the method,
stating that they did not describe an invention within the meaning of section 2 of
the Patent Act. He also dismissed the claims relating to the pot because, in his
opinion, these were incomplete.
In his final decision, the examiner stated (in part):
...
Method claims 1 to 5 stand rejected for being directed to a method which
resides outside the definition of Section 2 of the Patent Act. The examiner
is of the opinion that such a dwarfing of plants can occur by chance in
nature without the intervention of man. This chance dwarfing may occur when
the plant is growing in a hostile environment with poor weather conditions,
for example a tree growing on the side of a rocky mountain in a part of the
country where there is little rainfall. Such a process is not patentable
since it does not fall within the definition of invention in Section 2 of
the Patent Act.
Article claims 6 to 19 stand rejected for being incomplete. The examiner
considers it an essential feature of the functioning and purpose (utility)
of the containers that the nutritive substances pass through the holes upon
initial growth of the plant probably carried by water but once the plant has
been growing for some time, the nutritive substances pass through the holes
carried by sap in the small roots which have penetrated the second container
through the holes. Failure by applicant to include this essential
functioning of the article in the claim results in the claims reading on a
host of flower pots having holes through which nutritive substances pass to
feed the plants. It is to be noted that applicant admits to this essential
functioning of his article in his letter of March 2, 1979, paragraph 2.
...
To answer the objections expressed by the examiner, applicant stated (in part):
...
... Claims 1 to 5 are all limited to the specific step of placing a plant
or propagating material into a container which is of a size and has
apertures to a required extent and of a certain size to restrict the growth
of the roots of the plant. The chance occurrence cited by the Examiner,
even if the same did occur, would not respond to the limitations of the
method claims in the case under discussion. Accordingly, it is not seen
that the Examiner's objections insofar as they are understood by Applicant's
Agent, are well founded or based in fact or in law.
...
Applicant would point out that the claims of a patent are essentially a
means of defining and limiting the ambit of the Patent Grant and are an
essential part of the statutory consideration for the grant - see, for
example, Skelding -vs- Daly, 1 Fox 1 at 6. In this respect, in relevant
British jurisprudence, it has been held that:
"A Patentee who describes an invention in the body of a specification
obtains no monopoly unless it is claimed in the claims"
cited in Rowley Cycle -vs- Miller & Co., 63 RPC 113 at 122.
...
The Commission must therefore decide whether the claims relating to the method are
patentable within the meaning of section 2 of the Patent Act, and whether the
claims relating to the containers are complete.
While the application was being reviewed, some changes to the claims were
proposed. The applicant has therefore amended the claims relating to the method
and has given reasons which he believes justify acceptance of the claims relating
to the container. The applicant has made it clear in his claims that the purpose
of the method was to dwarf plants. To support his claims relating to the
container, he has pointed out, moreover, that the size of the holes and their role,
which is to allow enough nutritive substances to pass through from the outside
container, were clearly described and that no other details were necessary.
We should point out that the examiner in no way questioned the fact that the claims
related to an unpatentable device, but rather that they did not describe it
completely. After examining the applicant's letters dated June 11 and 23, 1981 and
the attached claims for the device, the Commission is certain that the descriptions
of the structure and the functional limits of the device are acceptable. Given
that the claims for this device are consistent with the disclosure and that they
did not raise any other objections, the Commission is of the opinion that the
rejection of claims 6 to 19 should not be upheld.
Claim No 1, as amended, reads as follows:
[Translation]
Process for the purpose of dwarfing plants, characterized, first, by the
fact that a plant together with its roots, or a seed, a cutting or a bulb of
this plant, is placed in nutritive soil in a container which is too small
to hold the amount of nutritive soil necessary to nourish a plant of normal
size
and which has a wall perforated by many openings which are arranged close
together and are of a size such that the number and thickness of the roots
that can grow through are insufficient to nourish a plant of normal size,
but which nevertheless permit dissolved nutritive substances to pass through
in quantities just sufficient to nourish a plant of restricted size and,
second, by the fact that the container is surrounded with nutritive
substances, for example, by being placed in soil so that this soil surrounds
the container wall.
To determine whether the method conforms with section 2 of the Patent Act, we have
examined the jurisprudence relating to the patentability of processes or methods.
As the courts have clearly stated, well-defined restrictions exist concerning the
types of methods and processes that can be patented. As the Exchequer Court stated
in Lawson v the Commissioner of Patents (1970), 62 CPR 101, "I take it as well
settled that all new and useful arts and manufacturers are not necessarily included
in Section 2(d) of the Act." We reached an analogous conclusion in Tennessee
Eastman v the Commissioner of Patents, SC, December 22, 1972. In the present
application, however, which differs from these two cases, it seems that the device
is a patentable invention. In the case before us, the claims made with respect to
the process are also related to the method of use of the special device which was
described and for which claims are made. The Commission considers them to be very
narrow in scope because they apply only to this device. Consequently, we do not
share the examiner's opinion when he states in his final decision that the claims
with respect to the method comprise processes which occur by chance in nature. The
Commission has some doubts as to the patentability of a process for the artificial
production of a dwarfed plant but, taking into consideration the accepted
patentability of the device used, we believe that they should be resolved in favour
of applicant.
We recommend, therefore, that all the claims be accepted and that the application
be referred to the examiner.
(signed) (signed)
A McDonough S D Kot
Chairman of the Patent Appeal Board A member
I reviewed the proceedings relative to this application and I concur with the
findings of the Patent Appeal Board. I quash the final decision to refuse the
claims and refer the application to the examiner.
(signed)
J H A Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
This 8th day of November 1983
Agent for the Applicant
Messrs McFadden, Fincham and Co
251 Bank Street
Ottawa, Ontario
K2P 1X3