COMMISSIONER'S DECISION
Section 2: Segmented Storage Logging and Controlling
Storage, indexing and retrieval of text data for text processing machines such
as printers in which the arrangement reduces accessing time and minimizes wear
on electromagnetic components as compared to those of current systems complies
with the requirements of Section 2.
Final Action: Reversed
******************
Patent application 291,920 (Class 354-237), was filed on November 29, 1977
for an invention entitled SEGMENTED STORAGE LOGGING AND CONTROLLING. The
inventor is Gavin L. Douglas, assignor to International Business Machines
Corporation. The Examiner in charge of the application took a Final Action
on February 25, 1981 refusing to allow it to proceed to patent.
The subject matter of this application relates to the storage, indexing and
retrieval of text data for text processing machines such as printers.
Figure 1 is shown below.
(See fugure I)
Processor 1 transmits control signals via line 6 to segmented serial storage
device 9. Storage device 9 provides interrupt and status information through
lines 7 and 8 back to processor 1. Random access memory 21 provides stored
text data for text creation and revision and serves as a buffer in relocating
data on storage device 9. Random access controller 18 controls access to
memory 21 through line 17, data buss 19 and address buss 20. Transfers of
data directly between storage 9 and memory 21 without involving processor 1
are attained by the use of direct memory access controller 13.
In the Final Action the Examiner rejected the claims under Section 2 of the
patent Act. That action stated (in part):
***
Page 11 lines 24 to 28 of the application indicate that one practical
embodiment of the disclosed flow diagrams could be implemented by
anyone having skill in the art of computer programming. In this em-
bodiment a general purpose digital computer would be programmed to
access a segmented serial storage device and log the utilization
of this device as set out in the claims. In spite of lines 21-24
of page 11 no new apparatus has been explicitly disclosed. The claims
therefore encompass and preempt a program and thus remain rejected
as being directed to non-statutory subject matter under Section 2 of
the Patent Act.
In the last paragraph of page 1 of the letter of January 14, 1981
applicant states that "the Patent Office's position, as stated in the
first column of page xxvi of the decision, is not intended to be
exhaustive of all possible claims involving, however incidentally, the
use of a computer". It is held that the use of a computer in the
present case is not incidental. On page 11 line 28 a general purpose
computer is said to be programmed to operate "in accordance with the
concepts of the invention.". The computer therefore is central to the
embodiment of page 11 lines 24-28. The Commissioner's decision
published in the CPOR of August 1, 1978 is therefore considered
relevant to the present claims.
In the first paragraph of page 2 of the same letter applicant states
that "the claims are drawn to subject matter which is otherwise patentable
as being within Section 2...". For the claims to be drawn to patentable
subject matter it would be necessary that patentable subject matter
be disclosed. Applicant has only disclosed flow diagrams in any detail.
Such diagrams are not patentable, as set out in the previous report.
What then is the patentable subject matter to which the applicant refers.
The Commissioner's decision referred to move sets out teat the patent-
able advance must be in the apparatus itself. In the embodiment of
page 11 lines 24-28 the apparatus is a general purpose digital computer.
The novelty of this embodiment lies in the program, not in the apparatus.
The claims which encompass this embodiment thus encompass non-statutory
subject matter.
In response to the Final Action the Applicant stated (in part):
***
In accordance with the invention, a system log, indicative of the
utilization of all storage media segments and portions thereof, is
physically stored on the storage medium itself. A plurality of por-
tions of this storage medium are dedicated for the usage of such legging
data only. At the termination of each physical storage of text data on
such storage medium, the most current logging data indicative of the
utilization of all of the storage medium segment is physically stored on
only one of the portions of the storage medium dedicated to the storage
of such logging data.
More particular aspects of the present invention aze directed to
the ~hysicallv tangible operation of recording the most current logging
data on one dedicated storage medium portion physically closest to the
storage reading and recording transducer which has just recorded the
dsta to be stored on the storage medium. It is this that provides the
:,ethical^ ac-:antage of ri-~i--_zing the time for accessing the dedica:ed
~CrtW r: Cn ~.~'W C~'l the 1G~~1T1~' data 1S StOTed 25 sell 25 S`_nlT:l~lTc ~ùccr
on the el~ctr~~.-~~c~--anical accessing cor:ponents.
It is agar. =u'~-itted, in other ~.ùords, ti;at the substance of the
present invention includes the physical storage of an updated system
director or log on the storage medium each time the storage me~?iu:- has
any data recorded on it. T'nis represents an improvement over prior
techniques wherein intermediate text changes were stored only in random
access memory in the text processing system and the log on the storage
medium or tape was only periodically updated by transfer from the system
random access memory upon the completion of some overall text updating
operation.
This created the potential hazard th at the log update data in th a random
access memory could be destroyed due to a power failure, for exarYle,
thereby losing a substantial amount of information.
Surely, the present approach which avoids this potential loss of data
infor~r~2tion is a tangible physical operation involving the unique
transfer of Iog information from a random access memory storage to a
perranent storage medium such as magnetic tape after each text change.
There is no suggestion that a mathematical-type algoritl-:m or co-:^uter
progran forms the crux of the invention, and it is respectfullw_ s~!b-
mitted that aw person of reasonable skill in the text storage and
accessing art would readily ai~preciate the nature of the improvement
di=closed. In adcition, it is submitted, that all information is given
to e::able the skilled v:orr.r,an to put the invention into practical usa.
CErtainl~-, this last suJrsission has not been disproved by the F:~:a-_n~r,
nor did the latter apparently deem his speculations on sufficiency- to
be of such cogency as to call for proof in the form of affidai-1is or
the like....
It is particularly noted that the Patent Act 2uthorizes the Cc~-L~issio.^.-
er to exercise and perform the pov:ers and cubes conferred and in;~esed
upon tf:at officer by or pursuant to this yet. L'nd2r Section 42, the
Co-T:ssioner can refuse an application if he is satisfied that the
ar~lication is not b~ù lay entitled to be granted a patent.
From another point of vies: the Supreme Gourt of Canada, in Vanity Fair
v. Cor^:issioner of Patents, (1939) S.C.R. 24, Iaid down the basic
policy that:
"The Co-~.Tissioner of Patents ought not to refuse an
application for a patent unless it is clearly ~:ithout
su;stantial fou^cation."
Ccù~s~dering t;;at the n~t;~od of the present inve^tion not onlw affords
suaerior handling of text in both security' and speed of sccess, but.
also reduces physical kear on the accessing mechanisms, the Co~issior.Er
can hardly decide that the clai~rs of this application have no substant;al
foundation....
The consideration before the Board is whether or not the claims are patent-
able under Section 2 of the Patent Act. Claim 1 reads as follows:
A method of storing machine logging data indicative of the content
of all segments and portions of said segments of a storage media
for text storage in a text processing system, comprising:
dedicating a plurality of defined portions of said segments for
storage of said logging data on said dedicated portions;
storing initial text data on said media and the logging data indic-
ative of the then content of said media on only one of said dedicated
portions; and
storing, at the termination of each storage of undated text data on
said media, the most current logging data on only one of said
dedicated portions.
From the disclosure on page 11 at lines 24 to 28 we find the following state-
ments:
These flow diagrams will also enable anyone having skill in the
art of computer programming to program a general purpose digital
computer to access a segmented serial storage device and log the
utilization of this device in accordance with the concepts of this
invention.
Referring to this statement the Final Action concludes that:
- one practical embodiment of the disclosed flow diagrams could
be implemented by anyone having skill in the art of computer pro-
gramming.
- No new apparatus has been explicitly disclosed.
- the computer therefore in central to the embodiment of page 11
lines 24-28.
- In the embodiments of page 11 lines 24 to 28 the apparatus is a
general purpose digital computer. The novelty of the embodiment
lies in the program, not in the apparatus.
In his response to the Final Action, Applicant referred to various United
States court cases, and also to the decision in Schlumberger Canada Ltd. v
The Commissioner of Patents 56 CPR (2d) at 204 (1981). We believe it to
be useful in determining the kind of subject matter disclosed by Applicant,
to recall the following contents by Fratte, J. in Schlumberger, supra:
In order to determine whether the application disclosed 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
In making his arguments, Applicant emphasized that his method calls for the
physical placement of information in a specific manner and so achieves a
physical improvement with respect to the security of data and the speed of
access thereto as well as to the longevity of the machine. He says his
application describes the physical storage of text data in such a manner
that the log or index of the stored text is continually updated, thereby
preventing any potential loss of this data which could occur in the case
of a power failure for example. He relates how his arrangement reduces
accessing time and minimizes the wear on the electromagnetic components
as compared with those of current system, by the physically tangible
operation of recording current data on one dedicated portion physically
closest to the storage reading and recording transducer when storing that
data.
The Applicant argued against the Examiner's reading of page 11 lines 24 to
28 of the application. He maintains this portion of the disclosure is
concerned with text processing equipment and says it merely points out that
a person could take the inventive concept and derive a computer program
to operate a general purpose computer. We accept the Applicant's argument
on this point.
From the disclosure we learn that Applicant's discovery is concerned with a
method of storing machine logging data for text storage in a text processing
system. He describes the steps used to transfer log information to a
permanent storage medium after each text change to provide for secure
retention of data. He says that due to the placement of data, his method
achieves speedier access thereto when updating a record. We are satisfied
that the disclosed method is directed to more than the various calculations
to be made and to more than a mere scientific principle or abstract
theorem. We are of the opinion that the disclosure of the application
complies with the requirements of Section 2 of the Patent Act and so
we do not support the rejection of the claims for being directed to
non-statutory subject matter.
In summary, we recommend that the rejection in the Final Action be with-
drawn.
A. McDonough M.G. Brown S.D. Kot
Chairman Assistant Chairman Member
Patent Appeal Board
I concur with the finding and the recommendation of the Patent Appeal Board.
Accordingly, I withdraw the Final Action and I return the application to the
Examiner for prosecution consistent with my decision.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 2nd day of October, 1984
Agent for Applicant
Alexander Kerr
IBM Canada Ltd.
Department 24/908
3500 Steeles Avenue East
Markham, Ont.,
L3R 2Z1