COMMMISSIONER'S DECISION
Non-Statutory, S.2: The elevator system for directing cars according to
calls received presents patentable subject matter. Rejection withdrawn.
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Final Action on application 347,700 (Class 364-17) filed
March 14, 1980. It is assigned to Westinghouse Electric Corp. and is
entitled ELEVATOR SYSTEM. The inventors are A.F. Mandel, L.M. Capuano,
P.R. Otto and K.M. Eichler. The Examiner in charge issued a Final Action
on July 20, 1982 refusing to allow the application.
The application relates to an elevator system shown in figure 1 reproduced
below. System controller 72 processes and sends signals to a device 64 for
a display of the number and location of up and down hall calls at the
various stations. The RAM 80 stores the up and down calls and the ROM 78
includes a look up means for them. Controller 72 processes the signals
received from these two units to update the display device as the calls are
answered and received.
(See figure I)
The Examiner rejected the application and claims for not being directed to
patentable subject matter under Section 2 of the Act. He cited Canadian
patent 1,108,781 September 8, 1981 to Mandel et al of interest to show that
the hardware components of this application are the same as those described
in the patent. In reasoning that the programs were different, he says, in
part, as follows:
The only difference between the cited patent and this
application is the program, a non-statutory subject matter
which requires no time restriction. The "in re Fry" situation
does not exist, because (1) the claims in this application
differ from the claims in the cited patent; (2) in both cases,
the applicant is the same and there is a common inventor; and
(3) this application consists of the non-statutory subject
matter under Section 2 of the Patent Act.
. . .
...The examiner is well aware of the opinion of the United
States Supreme Court in Diamond vs. Diehr (209 USPQ 1, 1981).
However the examiner is not in a position to apply United
States patent law to allow this Canadian application but has to
follow the present Canadian Office practice to refuse this
application, as stated in the "Grounds for Rejection". Under
the present Canadian Patent Office Practice, in order for a
claim to be patentable, the subject matter in the claim must
have the three constituents of utility, novelty and inventive
ingenuity. To program a prior art microprocessor to operate
the known elevator display hardware in a new mode, is expected
skill of computer programmers and requires no inventive
ingenuity.
...The difference in subject matter between the state of the
art and this application lies in the computer program which is
non-statutory under Section 2 of the Patent Act, and therefore
this application is refused. In view of the state of the art
or applicant's patent, the disclosure of this application is
adequate and the Section 36(1) refusal is withdrawn.
. . .
In responding to the Final Action, the Applicant considers his elevator
system operates in a manner not previously known, and argues, in part, as
follows:
. . .
...The Examiner has drawn a reference to Mandel et al to the
applicant's attention in previous correspondence and relies
heavily on the Mandel et al reference as grounds for refusing
the present application. (The Mandel et al reference is not
applicable to the claims of this application in view of its
late issue date).
The Examiner, therefore, is caught in a trap. Either the
Mandel et al reference is pertinent and citable or it is not.
If it is a valid reference, the applicant would appreciate a
rejection of the claims in view of Mandel et al reference. If
it is not, the reference should be withdrawn.
With respect to the Office Position in the interpretation of
the Patent Office record of August 1, the applicants argument
is well set out on pages 3 and 4 of the response of November
12, 1981. It is surprising that the Office is reluctant to add
the Diamond vs. Diehr decision to its group of U.S. cases
considered in reaching that decision. Even if the examiner is
not in a position to apply the decision, certainly, it is
believed that the Canadian Patent Office should (in view of its
previous policy decision) consider the Diamond vs. Diehr
decision to be very pertinent and incorporate it into its
policy. For the above reasons, it is believed that the claims
of this application are allowable and the Mandel et al
reference should be withdrawn and the Diamond vs. Diehr
decision which is of considerable importance mist be considered
in the refusal of this application.
. . .
Noteworthy from Applicant's response of November 12, 1981, are the
following excerpts:
Claim 1, therefore, relates to an elevator system wherein an
elevator car is mounted in the hoistway means in a multi
storied building system having a call means, a memory means, a
control means, means for removing calls from the memory means,
a display means, and further, a display means including further
visual means.
Thus, the Examiner has chosen to reject claim 1 in accordance
with the stated position taken by the Patent Office in its
publication on page XXVI of the August 1, 1978 C.P.O.R. Thus,
it is seen that claim 1 must either fall in a category of being
a claim to a computer program per se, or a claim to a new
method of programming a computer, or a claim to a computer
programmed in a novel manner expressed in any or all modes
where the novelty lies solely in the program or the algorithm,
in order to be rejected by the Examiner.
It is clearly seen from the previous examination of claim 1
that claim 1 is not directed to any one of the three
categories. Thus, it is the applicant's contention that claim
1 is clearly patentable as are the remaining claims. In
addition to the cases referred to in the August 1, 1978 issue
of the C.P.O.R., the recent case of Diamond V. Diehr has
yielded some interesting results.
The Supreme Court found "in determining the eligibility of
respondants claimed process for patent protection under Section
101, their claims must be considered as a whole. It is
inappropriate to dissect the claims into old and new elements
and then to ignore the presence of old elements in the
analysis. This is particularly true in a process claim because
a new combination of steps in a process may be patentable even
if all the constituents of the combination were well known and
in a common use before the combination was made.
The novelty of any element or steps in a process or even the
process itself is of no relevance in determining whether the
subject matter of the claim falls within the Section 101
categories of possible patentable subject matter.
The issue before the Board is whether or not the application and claims are
directed to patentable subject matter in view of Section 2 of the Act.
Claim 1 reads:
An elevator system, comprising:
a building having a plurality of floors and hoistway means,
an elevator car mounted in the hoistway means of said
building to serve the floors therein,
call means for registering calls for elevator service,
memory means for storing registered calls,
control means directing said elevator car to serve
registered calls for elevator service,
means removing registered calls from said memory means when
said elevator car serves a call for elevator service,
and display means,
said display means including signal preparation means which
provides output signals responsive to the registered calls
stored in said memory means,
said display means further including visual means
responsive to the output signals from said signal preparation
means for visually displaying at least certain of the
registered calls stored in said memory means one at a time, in
a predetermined timed sequence, at a first common display
location, such that each call in the predetermined sequence is
displayed at the same location as the previous call in the
sequence.
We remark that the Examiner has indicated there is no "in re Fry"
situation. He is satisfied the Applicant's claims differ from the claims
in the cited patent and that the Applicant's disclosure is adequate. We
agree with his observations.
We turn to the Examiner's refusal on the ground that the application and
claims are directed solely to a computer program. The Applicant has
referred to the United States Supreme Court decision in Diamond v. Diehr
(209 USPQ 1, 1981) and the comments therein that the combination presented
by the application and the claims must be considered as a whole. We agree
with the applicant that there are informative passages therein. We are
mindful too, in dealing with the subject matter of this application, of the
guidance to be found in the decision in Schlumberger Canada Ltd. v. The
Commissioner of Patents (1981) 56 C.P.R. 204. Pratte J. provides direction
for computer-related subject matter in the following excerpts therefrom:
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 a computer is or should be used
to implement discovery does not change the nature of that
discovery. What the appellant claims as an invention here is
merely the discovery that by making certain calculations
according to certain formulae, useful information could be
extracted from certain measurements. This is not, in my view,
an invention within the meaning of Section 2.
In considering what has been discovered, we learn that the application
relates to the elements of an elevator system including means to store
registered calls, means to direct elevator cars according to the calls
received, a certain kind of signal display means for displaying up or down
hall calls one at a time, and signal output means responsive to the
registered calls, and these form the combination of Applicant's invention.
His claims reflect this combination, which is not the subject matter of the
cited Mandel et al specification, as recognized by the Examiner. While it
may be that certain components in Applicant's elevator system are the same
or similar to those in the Mandel et al patent, we find that a different
operation is provided by Applicant's combination from that obtained in the
cited patent. Applicant's discovery for his combination is that a
different mode of elevator service may be obtained from what was previously
known.
Even assuming that all the components of Applicant's system were well known
and in common use before, the particular combination that achieves the new
mode of operation must be considered, as must the results obtained. Here
we see that the result provided by Applicant's particular group of
components is not within the capabilities provided by the cited patent. We
recall moreover, one of the components, the display device that Applicant
uses is not considered by the Examiner to provide the same operation since
he recognizes Applicant's claims are different. In our view, the signals
provided for the display means and the operation obtained, are different
from those available from the control system in the Mandel et al patent.
The Examiner contends the computer program, which we see as providing the
different signals of operation, is non-statutory under Section 2. We
believe Applicant's particular combination, including as it does some known
components and a component providing operating signals different from the
cited art, and the results the combination derives, to be in the domain of
an improved elevator system. We think Applicant has disclosed more than
merely a computer program.
In summary, we are persuaded, heeding the guidance provided by
Schlumberger, supra, that the subject matter of the application is
acceptable under Section 2. We recommend therefore the withdrawal of the
zefusal of the application and claims for being directed to non-patentable
subject matter.
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
the application for prosecution consistent with the recommendation.
J.H A. Gari‚py
Commissioner of Patents
dated at Hull, Quebec
this 18th day of August 1986