COMMISSIONER'S DECISION
Section 2:
Database Processing System for Storing and Retireving Records. The hardware,
firmware, and other elements of the system combine to access stored material
in a manner to make the system acceptable under S.2. Rejection withdrawn.
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Final Action on application 239,298 (Class 354-241) filed
November 10, 1975, assigned to Honeywell Information Systems Inc. entitled
DATABASE INSTRUCTION FIND DIRECT. The inventors are Benjamin S. Franklin
and Charles W. Bachman. The Examiner in charge issued a Final Action on
March 29, 1979, refusing to allow the application.
The application relates to a data processing system having apparatus which
stores records in a predetermined grouping of sets. The system provides an
access arrangement which addresses the desired set and retrieves not only
the searched record but also the prior or next record without the need of
formulating another direct address. The format of a system base is shown
in figure 6 and the means to fetch addressed information is shown in
figures 13a and 13b. Various types of memory records and pointers are
illustrated in figures 15a to 15h, and a format of a member record is shown
in figure 15c where the next pointer and the prior pointer are located in
certain relative positions. The database record recognized by the system
is shown in figure 16a, the page descriptor which addresses the database is
depicted in figure 16b, and the access control pointer is shown in figure
16c. The hardware/firmware flow chart of figure 17 implements the location
of a database page in the main memory of the system.
It is apparent from the lengthy description that a complex system is
presented in the application, and several drawings are involved in
illustrating the operation to obtain Applicant's results. For sake of
brevity therefore, we have not reproduced any drawings. We have, however,
reviewed all the drawings and their description in assessing the subject
matter in the application.
In his Final Action the Examiner said, in part, as follows:
...
The applicant has failed to disclose or claim computing
apparatus programmed (or microprogrammed) in a novel
manner, where the patentable advance is in the
apparatus itself. As noted on page 3 of the letter
most functionality is added to a computer as the result
of some algorithm. The applicant has expressed the
algorithm as flow charts and tables residing in memory
of prior art apparatus. The applicant has not
developed the algorithm to the point where new
apparatus has been disclosed in accordance with Section
36(1), and thus the application remains rejected as
being directed to non-statutory subject matter in view
of the definition of invention in Section 2.
...
In responding to the Final Action, the Applicant stresses his invention is
a part of a new computer system utilizing a firmware implementation as part
of its unique architecture. He argues, in part, as follows:
The present invention relates to a unique computer
system which can address a database record directly and
having once found that database record it can utilize
that database record to address other database records
in that set of database records such as the prior
record, the following record, etc., without resorting
again to the technique of finding another direct
address for the second database record and the third
direst address for the fourth database record. To the
Applicant's knowledge, nothing like that was available
in the prior art until this invention. The closest
appears to be some form of indexing. The elements
recited in, for example, claim 1 are hardware. The
first and second means are means for storing coded
electronic signals which is clearly hardware. The
third means is a means for fetching into scratchpad
memory a database pointer address for the particular
database record being sought. This fetching means is
shown as element 1318 of Figure 1a which is hardware.
When this hardware is added to the hardware recited in
the preamble, a unique non-obvious combination results.
The Examiner has stated that the patentable advance
must be in the apparatus itself and seems to be
implying that elements of the apparatus must be novel
per se. It is submitted, however, that an invention
may reside in a novel combination of elements even if
some of them are known per se. The invention concerns
hardware and firmware developments which effect
permanent or semi-permanent changes in the actual data
processing apparatus, so that it may function in an
entirely novel manner not heretofore disclosed by the
prior art. This is entirely different from the
situation in which an external program is fed into the
computer and effects momentary and constantly changing
alterations in the states of various registers, etc.
The invention is concerned with the actual physical
structure of the machine and is not simply an algorithm
or computer program. The invention could clearly not
have been developed by a programmer utilizing his
expected skill.
The issues before the Board are whether or not the application sets forth
subject matter that is within the definition of Section 2 of the Act, and
whether or not the specification is sufficient in view of Section 36(1).
Claim 1 reads:
In an internally programmed data processing apparatus
having a CPU, a scratchpad memory, and random access
memory comprised of a plurality of segments of
addressable space each segment having an identifying
segment number associated with each segment for
identifying its associated segment each of said
segments delineated by upper and lower variable bounds,
each of said segments being further subdivided into at
least one page of a predetermined fixed size located at
a predetermined displacement address within said
segment and having an identifying page number, each of
said pages for storing a plurality of files of database
records grouped in sets of database records, each set
having one owner record and at least one member record,
each of said pages also including first address
information for locating any one of said database
records of a selected one of said sets from a
predetermined location in a selected one of said pages,
said data processing apparatus also having a system
base for locating relative to said system base the
absolute location of predetermined ones of said
segments, pages, and database records; said data
processing apparatus further having an index register
for storing a selected database-index address comprised
of a database pointer address for forming an address of
a predetermined one of said database records, each of
said database records having at least one of said
database pointers comprised of an area, page and line
address, said area address for locating a predetermined
file of said database record, said page address for
locating a predetermined group of said database records
within said file, and said line address for locating
the predetermined one of said database records;
instruction hardware, response to a find-direct
instruction having a first number for locating a first
index register storing a first area address, first page
address and first line address for locating a first of
said database records, said instruction hardware
comprising: (a) first means having a first
predetermined arrangement for storing coded electronic
signals indicative of a database printer address of a
selected first of said member records of said selected
ones of said sets of database records; (b) second means
coupled for being responsive to said first means and
having a second predetermined arrangement for storing
coded electronic signals indicative of the segment and
page number of a selected one of said pages located in
a selected one of said segments; and, (c) third means
coupled for being responsive to said first and second
means for fetching into scratchpad memory said database
pointer address.
We find guidance in assessing the computer-related subject matter of this
application, from Schlumberger Canada Ltd. v. Commissioner of Patents
(1981) 56 C.P.R. 204. It is to be noted this decision was not available to
the Applicant nor to the Examiner at the date of the Final Action. Pratte,
J. commented as follows:
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 the opinion that the fact that a computer is or
should be used to implement discovery does not change
the nature of that discovery.
We have carefully weighed the subject matter described in the application,
the arguments presented by Applicant, and the guidance provided by
Schlumberger, against the reasons advanced by the Examiner in his Final
Action. We recall from the Final Action that the Examiner agreed "...the
Applicant has disclosed a microprogram rather than an external program..."
and that "...the application is not software wherein functional statements
are placed in computer main memory and then translated by a compiler or
assembler." We are aware the Examiner felt that all the elements were not
apparatus, and that all the figures do not show hardware. In view of the
combination of all the elements however, to produce a result not previously
attainable, and realizing that a combination of old elements to achieve
that result may be patentable provided the prior art does not show that the
combination is known, we do not see how Applicant's device may be
considered not to be within the definition of patentable matter. The
various means disclosed are set out in claim 1 in terms which we feel are
apparatus.
It is appropriate to refer to Applicant's letter earlier in the
prosecution, dated March 30, 1978, where Applicant discussed claim 1, in
part, as follows:
"When new claim 1, for example, is read in its
entirety, it will be noted that it claims a unique
computer system which can address a database record
directly and having once found that database record it
can utilize that database record to address other
database records in that set of database records such
as the prior record, the following record, etc. without
resorting again to the technique of finding another
direct address for the second database record and the
third direct address for the fourth database record.
To the Applicant's knowledge nothing like that was
available in the prior art until this invention. The
closest appears to be some form of indexing. Note that
all the elements recited are hardware. The first and
second means are means for storing coded electronic
signals. It can hardly be denied that such devices are
hardware. The third means is a means for fetching into
scratchpad memory a database pointer address for the
particular database record being sought. This fetching
means is shown as element 1318 of Figure 13a. It can
hardly be denied that this is hardware. When this
hardware is added to the hardware recited in the
preamble, a unique non-obvious combination reults which
has the functions previously recited supra.
We are persuaded that claim 1 should be considered as a combination of
apparatus. We note however, that later in the March 30, 1978 response, the
Applicant identifies his invention in the following terms:
The instant invention is an apparatus which is provided
to handle records which have a predetermined arrange-
ment, and which are grouped in sets. Each set has an
owner record and a member record. Each owner record
has information which refers it to member records.
Each member record has information which refers it to a
prior member record or a next member record or an owner
record. Accordingly, the hardware disclosed herein has
the facility of accessing directly either an owner
record or a member record and once having accessed for
example, a member record the apparatus need not go back
and reformulate another direct address to get another
member record of that set but can utilize the pointers
in the member records to address either a next member
or a prior member etc. As now amended, this is
precisely what is claimed in hardware.
We observe the prosecution was concerned with whether the invention was
proper in view of Section 2 of the Act, however, we see no discussion arose
concerning the definition of the invention. It would appear that claim 1
does not include apparatus to address the next member or a prior member,
since these two members are dealt with in claims 2 and 3 respectively.
Therefore while we find the application and the claims are acceptable in
view of Sections 2 and 36(1) of the Act, we make no finding with respect
to patentability of the claims, no art having been cited during the
prosecution. We believe a Hearing with respect to the issues concerning
the above Sections should not be convened. Should an issue arise however,
concerning the claimed subject matter, then a Hearing might be significant.
We recommend the rejection of the application be withdrawn and that the
application be returned to normal prosecution.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I concur with the findings and the recommendation of the Patent Appeal
Board. Accordingly, I withdraw the refusal of the application and remand
it for prosecution consistent with the findings.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 9th day of April 1986
Smart & Biggar
Box 2999, Station D
Ottawa, Ontario
K1P 5Y6