COMMISSIONER'S DECISION
Sec. 2 Patentable Subject Matter: The method and apparatus were found to
describe a system of elements to store and retrieve particular information
and of means to extract certain arrays. The claims were sufficiently direct-
ed to the subject matter disclosed.
Rejection withdrawn.
*************
This decision deals with Applicant's request for review by the Commissioner
of the Final Action on application 217,334 (Class 334-121) entitled METHOD
AND APPARATUS FOR INFORMATION STORAGE AND RETRIEVAL and assigned to Dissly
Research Corporation. The inventors are Donald D. Dissly and Ronald J.
Blanchard. The Examiner in charge issued a Final Action refusing to allow
the application. A Hearing was held at which applicant was represented by
his Patent Agent, Mr. H. C. Baker.
The application relates to an information storage and retrieval system for
identifying desired information bearing records from a set of records located
in a bass data file, as illustrated in figure 1 reproduced below. Each
record contains certain predetermined identifiable characteristics, herein-
after PIC. A retrieval file (104) includes and maintains arrays of information
in the forms of binary coded elements which are produced (102) from the
information content of the base data file (100). Each array corresponds to
a particular PIC which may be present in the set of stored records, and
each element in the array is representative of the location of a particular
item in the base data file. To locate a record, the retrieval file is
searched by selecting those arrays (112) representing desired PIC and
comparing the binary values of the elements in the selected arrays (110).
The identified record is then extracted (110) and made available e.g. in
dislay form (114).
<IMG>
In the Final action the Examiner rejected the application as being directed to
non-statutory subject matter in view of Secton 2 of the Patent Act, because the
novelty of "...all three embodiments...lies in an algorithm or program...". The
Examiner referred to the embodiments (in part) as follows:
. . .
...Figure 5 comprises a programmed computer with associted
peripheral equipment... This equipment is not novel per se
and the structure and functioning is apparent to those in
the art... The programmed computer is enabled to cooperate
with the associated peripheral equipment by programming the
computer... The peripheral equipment is not industrial
equipment controlled by the computer but rather is data
processing apparatus normally associated with computers
i.e. magnetic disc drives and storage units, a display and
keyboard input/output unit, etc...
. . .
...input data is converted under program control into a
retrievable data base file and a retrieval file... Once
these two files...are constructed the system searches and
retrieves information from the data base under program
control...
Thus the embodiment disclosed with respect to figure 5 is
directed to a data processor programmed in a novel manner
where the novelty lies solely in the program. The
alternative embodiment shown in figure 6 only differs from
Figure 5 in that the computer interfaces with a film image
storage device holding the data base file of records rather
than interfacing with a magnetic disc for access to this
file. Figure 6 therefore also depends for its novelty on
the programs referred to above with respect to Figure 5.
The embodiments disclosed with reference to figure 85
performs the same function as the apparatus of Figure 5
using apparatus which may be controlled manually or by a
computer using the programs referenced...
. . .
In that Action the Examiner also commented on the Commissioner's Decision
reported in the C.P.O.R. August 1, 1978, (in part) as follows:
. . .
...Applicant is advised that the criteria recommended on
page XXXVI of the C.P.O.R. of August 1, 1978 were in fact
adopted by the Commissioner.
...Reference to page 43 lines 14 to 29 shows that the
computer apparatus corresponding to the best mode is not
novel. The apparatus claims therefore come under guideline
3 on page XXVI of the C.P.O.R. of August 1, 1978. The
process claims carried out by the referred to computer
programs come under guideline 2. The alternative embodiment
of Figures 85 to 91 is also not novel apparatus but rather
is known data processing apparatus controllable by a
computer using the programs referenced on paves 207 and
208...
. . .
In presenting his reasons to justify the patentability of the application, the
Applicant argued (in part):
. . .
Provided that the invention defined by the applicant's
claims fall within one of the categories of invention as
defined in Section 2, and provided further that the
applicant's invention does not fall within the prohibitions
of Section 28(3), or within any of the judicially defined
prohibitions, such as surgical procedures (Tennessee Eastman
vs. the Commissioner of Patents 8 C.P.R. (2nd), or land
subdivision techniques (Lawson vs. the Commissioner of
Patents 62 C.P.R. 101), it must be concluded that the
applicant's invention is patentable.
Two issues remain thus to be decided, firstly are the new
criteria recommended on page XXVI of the C.P.O.R. of August
1st, 1978, in accordance with Canadian Law, and assuring
that the guidelines do accord with Canadian law, do the
claims of the present application violate these criteria?
. . .
We submit to you that the claims of the present application
are not directed to a computer programed in a novel manner
expressed in any and all modes. Moreover we also submit
that the novelty of the present invention must be assumed
in the absence of the citation of any prior art during the
rather abbreviated prosecution of the present application.
The issues before the Board are whether or not the application arid the claimed
embodiments are directed to patentable subject matter. Claim 1 reads:
An information storage and retrieval system comprising:
a set of stored information bearing records having
information stored in a language format which, at least in
part, has intelligent weaning because of particular
groupings of characters or symbols therein,
each of said records being disposed at a predetermined
address or location,
a stored retrieval file for facilitating the retrieval of
particular desired records from said set of information
bearing records, said retrieval file comprising a plurality
of arrays of binary coded elements,
each of said arrays including predetermined elements
individually and respectively corresponding to the addresses
of each of said information bearing records,
each of said arrays being formed to indicate the presence
or absence of a predetermined identifiable characteristic of
the language structure associated with the information
content of each of said information bearing records, wherein
said plurality of arrays constituting a comprehensive set of
arrays correspond to a comprehensive set of said
predetermined identifiable characteristic of language
structure comprising substantially all such predetermined
identifiable characteristics which are to be later utilized
in searching for desired information bearing records, and
each element in a given array being binary coded in a first
manner to represent the presence in the respectively
corresponding record of the predetermined identifiable
characteristic of language structure corresponding to the
given array and being binary coded in a second
distinguishable manner to represent the absence in the
respectively corresponding record of the predetermined
identifiable characteristic of language structure
corresponding to the given array
whereby particular desired records bearing certain desired
information may be located and thus retrieved by first
determining the subset of said predetermined identifiable
characteristics present in said desired information and then
examining the respectively corresponding subset of said
arrays to determine the storage address or location of each
stored record containing all of said subset of predetermined
identifiable characteristics.
In applicant's response of July 27, 1979 to the Final Action he respectfully
submitted, inter alia, that the Examiner had not unequivocally stated whether or
not the guidelines published in the Patent Office record of August 1, 1978 were
from a Commissioner's Decision. In Applicant's response of August 12, 1981, he
indicates that he has reviewed the decision of the Federal Court of Appeal
in Schlumberger v. Commissioner of Patents 56 C.P.R. (2d) 206 (1981). We
note that guidelines are referred to in the prosecution leading to that court
case which are the same as those published in August 1978. He add also that
subsequent to Applicant's response of August 12, 1981, the Supreme Court
of Canada dismissed Schulumberger's leave of Appeal. We note further the
guidelines were not commented on by the courts.
In the Schlumberger decision, Pratte J. advised that it is necessary to
determine what has been discovered according to the application, and thereafter
to determine the nature of the discovery, and stated as follows:
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. What the applicant claims as an inven-
tion here is merely the discovery that by making certain
calculations according to certain formulae, useful inform-
ation could be extracted from certain measurements. This
is not, in my view, an invention within the meaning of
Section 2.
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 are guided by Schlumberger therefore to the view that subject matter which
is merely directed to useful information e.g. calculations, is not an
invention within the meaning of Section 2 of the Act.
Applicant asserts that he has discovered and claimed a novel method of inform-
ation storage and retrieval and has disclosed a suitable apparatus which
includes various comparing and selecting components and a properly programmed
computer which interact in an automated manner. He also contends the application
and claims fall within the guidelines.
At the Hearing Mr. Baker discussed a concern raised in his response to
the Final Action namely that the Examiner had rejected the application as
a whole but had not specifically rejected any of the claims. He said the
proper form for a rejection should be a rejection of claims rather than a
rejection or the application totally, and in this regard Mr. Baker referred
to the following court decisions, Tennessee Eastman v. The Commissioner of
Patents 8 CPR (2nd), Shell Oil Co. v. The Commissioner of Patents 67 CPR
(2nd) 1, and Monsanto Chemical Co. v. The Commissioner of Patents 42 C.P.R.
161. He also discussed the requirements set out in Section 36 (2) of the Act.
We will look at these three cases briefly in dealing with Mr. Baker's position
on rejection of claims rather than the application. In the prosecution of the
Tennesse Eastman case , the Examiner looked to all parts of the application,
and in the Final Action was of the opinion that "...there remains no subject
natter in the present application upon which the applicant can depend for
patentability". The rejection was affirmed by Commissioner's Decision with the
comment that the method did not constitute patentable subject matter under
Section 2(d).
During the appeal through the courts, the parties agreed to a six-part statement
of facts and issues. Briefly stated, part 4 isolated the issue before the Court.
namely, the method, and part 6 confirmed that this was the only issue and the
appeal would prevail or fall on that basis. The Supreme Court determined that
a new surgical use of a known substance cannot be claimed as an invention under
Section 2(d). The appeal was lost and by agreement the application then contained
no other matter. It is noteworthy that the Court's finding hinged on an inter-
pretation of "invention" as found in Section 2(d), and that no recourse was made
to the wording of Section 36(2).
In the Shell Oil case, not all of the 12 claims of record were rejected and the
Supreme Court reversed the Final Action. The patentability of the subject matter
was not an issue in that case.
Turning next to the Monsanto Chemical ca~g only two of the claims were in
issue. The Supreme Court reversed the rejection by the Examiner. Again,
the application had not been rejected for lacking patentable matter but for
support of claims.
Here, the Examiner rejects the application in the Final Action for being
directed to non-statutory subject matter. He reasons the embodiments were
directed to an algorithm or program, and the effect of allowing the application
would be "to preempt an algorithm". He considers the embodiment shown in figures
85 to 91 to be known data processing apparatus controllable by a computer
using programs described in the disclosure. He refers to five guidelines from
a Commissioner's Decision published in the Patent Office record on August 1,
1978. These guidelines all deal with claims, Guidelines 1, 2, and 3 indicate
what is not allowable, and 4 and 5 what is allowable. On page 4 of the Final
Action the Examiner says the apparatus claims come under guidelines 3 and the
process claims under guideline 2. After examining the embodiments gad relating
the claims to the matter disclosed, and also to the guidelines, the Examiner
concludes by rejecting the application for being directed to non-statutory
subject matter in view of Section 2 of the Act.
We see, therefore, the Examiner has considered all the embodiments in the
disclosure and has found the apparatus and method claims wanting with respect
to certain of the guidelines. From the three court cases advanced by Applicant
we learn that rejections of an application and claims, or of claims only, have
been made in the past, and we do not find direction in any of the three cases
saying it is improper to reject an application outright. At the Hearing the
Examiner explained that if he felt the subject matter of an application did not
comply with the statutory requirements of Section 2 of the Act and could not
be claimed then, in his view, a rejection of claims only could offer false
hope that the application contained something patentable. During the discussion,
it was also suggested that in the case of perpetual motion devices, it could
appear to be proper to object to an application for not disclosing any
patentable subject matter, and an objection to the claims would serve no purpose.
the view Sections 2 and 36 to be separate parts of the act, each having unique
conditions which must be satisfied. Fulfilling the requirements of Section
36 does not automatically ensure the subject matter defined in the claims
will fall within the category of patentable matter under Section 2. We are
of the opinion after reviewing the Agent's arguments and the Examiner's Final
Action that the rejection of the application by the Examiner may be considered
as a proper action that includes a rejection of all the claims of the application.
Its aptness in this particular case is another matter to which we will now
address our remarks.
At the Hearing, Mr. Baker argued that Applicant has discovered and claimed
a novel method of information storage and retrieval and has disclosed a
suitable apparatus which includes various comparing and selecting components
to align the desired PIC with those on file, in combination with a properly
programmed computer to obtain interaction in an automated manner. From our
reading of the application, we are in agreement with the Agent that it contains
a sufficient description of the interworking of the elements to store and
retrieve particular defined PIC, and of the means to extract certain arrays
of information to achieve a useful storage and retrieval system. We find the
system is pore than mere calculations or a computer program, and therefore, we
think it should be acceptable subject matter under Section 2 of the Patent act.
We new coal with the claims, noting the only objection made to them was in
view of guidelines 2 and 3 published in the Patent Office Record. Claims 1 and
20 were said to be representative of subject matter falling within guidelines
2 and 3. Claim 1 opens with a preamble calling for a storage and retrieval system
and then recites a set of stored information bearing records disposed at a
predetermined location, a stored retrieval file comprising a plurality of arrays
of binary coded elements, each array corresponding to each of the predetermined
locations of the information records, each element in an array being binary coded
to indicate the presence as well as the absence of a desired PIC. The claim
includes a whereby clause indicating a function of locating and retrieving by
examining the arrays to determine the location of the desired stored record.
Method claim 20 includes steps outlining the system identified by claim 1.
In our view, claims 1 and 20, and indeed all the claims are properly direct-
ed to the subject matter disclosed which, as we have said, we believe to
be patentable. Accordingly, having found the subject matter acceptable
under Section 2 of the Act, we find the claims are not open to objection
thereunder.
We recommend that the rejection of the application and the claims for being
directed to non-patentable subject matter be withdrawn and the application
be returned to the Examiner for continued prosecution.
A. McDonough M.G. Brown S .D. Kot
Chairman Assistant Chairman Member
Patent Appeal Board
I concur with the findings and the recommendation of the Patent Appeal Board.
Accordingly, I withdraw the Final Action and remand the application to the
Examiner.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 2nd. day of October, 1984