COMMISSIONER'S DECISION
Section 2, Statutory Matter: The disclosure and drawings were considered sufficient
to show an assembly of apparatus acceptable under S. 2. The rejected claims were
held not to define the combination disclosed. Applicant's new claims, directed to
means for signal enhancement including means for generating a reciprocal of a Walsh
transform series, were satisfactory.
**********************
This decision deals with Applicant's request that the Commissioner of
Patents review the Examiner's Final Action on application 224,059
(Class 354-138). The application was filed April 8, 1975, by Batelle
Memorial Institute, and is entitled INFORMATION AND PROCESS CONTROL
ENHANCEMENT. The inventors are Richard L. Richardson, Bernard P. Hilde-
brand, and Robert E. Mahan. The Examiner in charge issued a Final
Action refusing the application. The Patent Agent informed the Patent
Office on January 6, 1984 that a Hearing was not necessary.
The application relates to a system to obtain an enhanced output signal,
S t , from an input waveform signal that has an offensive noise factor,
S t. N t. One example of the system is shown in figure 2, reproduced
below. The system provides a waveform noise factor,~ t indicative of
the offensive noise that is to be extracted, and transforms it and the
input waveform S t.N t into components in the form of Walsh functions, i.e.
into respective series expansions of Walsh functions. In converting
~ t, the signal passes through A to D converter 16 and Walsh transform 18,
and then the reciprocal of the ~ t series is obtained by means of reciprocal
Walsh transform 20. That reciprocal is multiplied at 22 with the output from
Walsh transform 14, and the disclosure says this multiplication removes
the offensive noise. The output from 22 is coupled to inverse transform
coupler 24 which drives converter 26. The resulting output S t represents
the enhanced signal.
(See formula 1)
One example of circuitry for the reciprocal Walsh transform converter 20
is given in figure 10, reproduced below. The individual coefficients pro-
duced by a Walsh transform enter storage register 102 and are made available
via switching network 104 and control unit 114 to the remainder of the
circuit for successive processing at stations 108, 110, and 112, and also to
intermediate storage at 106.
(See formula 2)
In the Final Action the Examiner rejected the disclosure and the claims
in view of Section 2 of the Patent Act, and further rejected the claims
for not distinguishing statutory from non-statutory subject matter.
In the Final Action, the Examiner says (in part) as follows:
...
The basis of the Examiners rejection is that the claims
encompass the general purpose computer alternative embodi-
ment referred to on page 2 line 7 and disclosed on pages
29 and 30. This is not to say that the applicant may not
patent other statutory subject matter which may also be
disclosed.
...
An analysis of all the apparatus claims indicates a combination
of means plus function in the environment of control filtering,
signal enhancement or information transferring circuitry or
apparatus. However, it is considered that they do not clearly
define an inventive step as required by law, since apart from
the novel algorithm disclosed all other apparatus is old in
the art.
...
In his response the Applicant argues (in part) as follows:
Applicant's invention consists neither of a special purpose
computer nor a general purpose computer. Rather, an apparatus
is disclosed which processes digitized signals. The fact that
many or most of the components of the apparatus could comprise
digital computer devices, or indeed that their functions could be
performed on one computer device with the exception of the A to D and
D to A converters, does not render the invention unpatentable. The
preferred form of the device does not comprise a single computer,
although a certain portion thereof, specifically the reciprocal Walsh
transform device, preferably embodies a computing device. It
should be emphasized Applicant claims an apparatus for processing
signals and not a method of calculation to produce mathematical
results.
...
It is submitted the present invention fits in the category of an
apparatus which utilizes a mathematical algorithm in a useful way,
and in a way not heretofore known, to produce new and highly
desirable results.
...
The issue before the Board is whether or not the disclosure and the rejected
claims are directed to patentable subject matter under Section 2 of the Act.
Rejected claim 1 reads:
Apparatus for combining a pair of inputs, said apparatus
including means for representing each input as a series ex-
pansion of square wave components, means for generating the
reciprocal of one said series expansion of square wave
components as a third series of square wave components, and
means for combining said third series of square wave components
with the remaining series expansion of square wave components
to provide an output.
We note that the Examiner in maintaining his rejection under Section 2
of the Patent Act, has commented about the sufficiency of the disclosure.
It appears that he has done so in an effort to resolve the issue of
whether or not the disclosure is directed to subject matter that is statu-
tory . We hear this in mind as we consider the rejection under Section 2.
In answer to the Examiner's question concerning whether an invention has
been made, Applicant points out in his response that the components in
the block diagrams, "such as the A to D converters, multipliers, D to A
converters, and the like..." are readily available. He also says that
the components "...such as the Walsh transform, inverse transform, and re-
ciprocal Walsh transform..." are set forth in figures 6, 7, 8 and 9. In
commenting about the reciprocal Walsh transform device, he contends that
figure 10 suitably shows a means illustrating the reciprocal transform
device. He also says the control elements sequence the events in a
straightforward manner. To support this contention he refers to the
passage on page 29 lines 17 to 20. As evidence of a further example,
he also refers to the apparatus and the operation performed thereby, as
given on page 29 from line 29 through to line l6 of page 30. Applicant
continues his explanation by referring to the implementation of the Crout
routine as referred to on page 30 wherein this routine is given. Applicant
points out also that the use of a computing device does not detract
from the overall combination.
In considering the issue as developed by the Examiner and as argued by the
Applicant, we are guided by the Federal Court decision in Schlumberger
Canada Ltd. v The Commissioner of Patents 56 CPR (2d) at 204 (1981) . Being
handed down in 1981, the decision was not, of course, available to assist
either the Examiner or the Applicant when the Final Action was taken. In
that decision involving computer-related subject matter, Pratte J. had
these comments:
In order to determine whether the application discloses
a patentable invention, it is first necessary to determine
what , according to the application, has been discovered.
and
I am of opinion that the fact that a computer is or should
be used to implement discovery does not change the nature
of that discovery
We learn from Applicant's disclosure that a reciprocal Walsh function may be
obtained. He has shown a means in an assembly of apparatus which makes use
of his discovery and carries out what he says had not been possible to do
prior to his disclosure. It may well be that calculations were used, however,
that does not negate the fact that this application shows the means in an
assembly which attains Applicant's discovery. It is our view that Applicant's
disclosure of apparatus amounts to more than merely making calculations. We
are satisfied that Applicant's discovery amounts to the embodiment of an
idea in a means to carry it out. We find in this application that the subject
matter may be considered as residing within Section 2 of the Patent Act.
However, all the rejected claims are not acceptable because they do not
adequately define the combination of the means in the assembly, and therefore
they should be refused.
In an attempt to overcome the rejection, the Applicant submitted new claims
after the Final Action, of which new claim 1 reads:
Apparatus for signal enhancement comprising:
means for spectrally decomposing at least a portion of an input
signal into a series expansion of Walsh function representations,
said spectrally decomposing means including an analog-to-digital
converter for sampling said input signal and for digitizing the
samples produced, said spectrally decomposing means further in-
cluding a Walsh transform converter for receiving said digitized
samples and providing an array of Walsh coefficients constituting
the amplitudes of Walsh functions together representing said
portion of said input signal;
second means for spectrally decomposing at least a portion
of a second input function into a second series expansion
of Walsh function representations, said second spectrally
decomposing means including a Walsh transform converter
for providing an array of Walsh coefficients constituting
the amplitudes of Walsh functions together representing
said portion of said second input function;
means for generating the reciprocal of one of said Walsh
function series expansions in the form of coefficients of
a reciprocal Walsh series expansion;
and a multiplier for multiplying said reciprocal with the
other of said Walsh function representations.
He see in the apparatus in new claim 1 that a means for signal enhancement
has been set forth, as described in the disclosure and shown in figures 6 to
10, including the means for generating the reciprocal of one of the Walsh
function series expansions. In our view, new claim 1 is directed to an
apparatus for producing an enhanced signal, and represents a proper combina-
tion of means. We are satisfied therefore that the amended claims define
more than mere calculations and more than an algorithm, and that they are
properly directed to Applicant's discovery.
In summary we are satisfied that the rejection of the disclosure under Section
2 of the Act may not be supported. We are not satisfied however that the
rejected claims define an acceptable combination. In our opinion the new
claims are directed to more than mere calculations, and in the absence of any
cited art, may be acceptable.
He recommend that the rejection of the disclosure under Section 2 of the Act
be withdrawn, and that the new claims be accepted.
A. McDonough M.G. Brown S.D. Kot
Chairman Assistant Chairman Member
Patent Appeal Board
I concur in the findings and the recommendation of the Patent Appeal Board.
Accordingly, I withdraw the Final Action, and I direct that prosecution should
proceed on the basis of the new claims.
J.H.A. Gari‚py Agent for Applicant
Commissioner of Patents
Smart & Biggar
Dated at Hull, Quebec Box 2999, Stn. D
this 1st. day of March, 1984 Ottawa, Ont.