Commissioner's Decision
Subject Matter, S.2 Correspondence Storage and Retrieval System
the system of abstracting, archiving, and retrieving documents relates
to more than mere calculations, and in the absence of pertinent art,
the application is directed to patentable subject matter.
Rejection withdrawn.
This decision deals with the Applicant's request for review by the Com-
missioner of Patents of the Final Action on application 363,345 (Class
354-120) filed October 27, 1980. It is assigned to International Business
Machines Corporation and is entitled OFFICE CORRESPONDENCE STORAGE AND
RETRIEVAL SYSTEM. The inventors are D. Glickman, J.T. Repass, W.S.
Rosenbaum, and J.G. Russell. The Examiner in charge issued a Final Action
on February 10, 1983 refusing to allow the application.
The application relates to a system for abstracting and archiving docu-
ments, and for retrieving them in response to text enquiries, and is shown
in figure 1 reproduced below:
(See formula 1)
In the abstracting/archiving mode, the document text to be stored is re-
ceived at input register 16, and by directions received from instruction
memory 14 (in two way communication with processor 10) its text passes to
processor 10 for abstraction. Both dictionary memory 8 and main memory 12
are in two way communication with processor 10. Memory 8 contains nouns
and single purpose adjectives, but no numerics, acronyms, or proper names.
The words in the document are compared to those in memory 8, and those
found therein are coded differently from those not in the memory. After
coding they are accumulated to make up the abstract and are stored in a key
word index file in memory 12. Any term in the index file is coded to show
its nature (noun, numeric, etc.) and how many times it occurs in the
document, and is given a weighting factor. The completed abstract is
transmitted to the index file for storage.
For retrieval, a query text is placed at register 16 and the text passes to
processor 10. The processor connects with memories 8 and 12 to get a docu-
ment text retrieval attinity evaluation. Any document text selected is
transmitted to the output register 18 for retrieval.
In rejecting the application in view of Section 2 of the Patent Act for not
being directed to statutory subject matter, the Examiner says, in part, as
follows:
On page 2 paragraph 2 of the letter of December 8,
1982 applicant states that the invention is a method
which could be carried into practical effect by hard-
ware, programs, etc. However, this is not dis-
closed. Only programs are disclosed, and on page 21
the only alternatives suggested to the disclosure
programs are further programs "implemented in other
computer languages". Thus the disclosure does not
teach that the spirit of the invention can be imple-
mented by hardware. Hardware has not been disclosed
in accordance with Section 36(1) of the Patent Act
and page 21 of the disclosure does not indicate that
a hardware embodiment would be practical or could be
devised without the exercise of inventive ingenuity.
On page 2 paragraph 3 of the letter applicant states
that the phrase the "invention comprises a set of
instructions or programs" has been taken out of con-
text. The context of the phrase as found on page 6
is: "The preferred embodiment of the present inven-
tion comprises a set of instructions or programs for
controlling the document abstracting." In the
following paragraph the applicant emphasises that the
instructions are part of a preferred embodiment. It
is noted that instructions and programs are the only
tools which have been disclosed to carry out the
invention. However, it is not agreed that applicant
has disclosed an alternative method using hardware.
Applicant states that the claims of record can in no
way be regarded as claiming a program. Applicant is
requested to apply the infringement test to the
claims. How would it be possible for the public to
use the programs disclosed without infringing the
claims? What practical and useful method are the
claims designed to claim a monopoly to if not the
method comprising the program disclosed or similar
programs in "other computer languages" as stated on
page 21.
...applications are not rejected out of hand because
they include formulas or mention the law of gravity
etc. They would only be rejected if they disclosed
nothing but a formula or scientific law. They are
not rejected if they also include inventive subject
matter. In the case of applications disclosing pro-
grams it is required that the programs be carried out
on novel apparatus or that the programs only be a
part of an otherwise statutory claimed method. (See
the Commissioner's Decision referred to in the report
of September 24, 1982.)
In response to the Final Action, the Applicant draws attention to the des-
cription of the invention on pages 2, 3 and 4, and reasons as follows, in
part:
...
Initially, as a practical and incontrovertible fact,
the present invention does constitute an improvement
over earlier methods of handling documentation, af-
fording a system through which improved results can
be achieved without the direct involvement of high-
level, or highly informed personnel, and with a sub-
stantial reduction in extremely expensive computer
time.
Secondly, it is very difficult to read the above sum-
mary of invention and, with any justification, state
that it merely defines an algorithm or computer pro-
gram, or any other such endeavour in the "fine"
arts. So far, there is nothing to indicate that the
Applicant's disclosure does not comply with the defi-
nition of invention in Section 2 of the Act, wherein
it is stated that:
"invention means any new and useful art,
process, machine, manufacture or composi-
tion of matter, or any new and useful
improvement in any art, process, machine,
manufacture or composition of matter;"
In addition to the foregoing, the Examiner has de-
cided that Section 36(1) of the Patent Act requires
the disclosure of hardware, and since a software
embodiment alone is disclosed, no statutory invention
could possibly have been disclosed.
With all due respect, such an assertion is deemed to
be baseless and completely devoid of even prima facie
justification, let alone any authoritative support.
...
...not only is there no specific requirement for
hardware under s.36(1), one can turn to well estab-
lished law to see that new or modified hardware is in
no way essential for a showing of invention in a new
process.
For example, in Elton & Leda Chemical Ltd.'s Applica-
tion, (1957) R.P.C: 267, Lloyd-Jacobs J. stated:
"It has thus been appreciated that, al-
though an inventor may use no newly devised
mechanism, nor produce a new substance,
none the less he may, by providing some new
and useful effect, appropriate for himself
a patent monopoly in such improved result
by covering the mode or manner by means of
which his result is secured."
The Applicant herein complies precisely with the law
in claiming the mode (method of procedure) by means
of which the new and advantageous effect or result is
achieved in the field of document handling. The fact
that old or well-known apparatus may be employed has
nothing whatsoever to do with the invention actually
claimed.
. . .
In the Applicant's disclosure, the routines and sub-
routines forming part of the computer program embodi-
ment are set out in various Tables. Table 1, for
example sets out a Document Abstraction Routine.
It takes little, if any investigation to realize that
the claim language is vastly different from the
Tables, and that such claims do not, in any way,
claim a computer program. The claims define "a
sequence of steps", as called for in Section 36(1),
such sequence being invented prior to the determina-
tion of whether hardware or software would be used to
carry the sequence into practical effect.
The Examiner continues to assert that the claims are
directed to a computer program and suggests the ap-
plication of the infringement test, asking how the
public could use the disclosed programs without
infringing the claims. This at least intimates that
the Examiner acknowledges some degree of difference
between the routines and the claims.
The Examiner apparently refuses to look at the conse-
quences of disallowing otherwise acceptable claims
merely because one can and does propose to use soft-
ware to carry out the claimed invention.
If the Applicant had provided a few flow charts and a
block schematic diagram for a logic circuit (saying
nothing about software), it is presumed that the
application would have been allowed, and, ostensibly,
the Applicant would have been granted a monopoly on
the procedural steps set out in the method claims.
Let us now apply the Examiner's infringement test in
the following scenario:
A member of the public reads those flow charts and,
without the need for any inventive ingenuity, deve-
lops an equivalent software program.
The approach adopted by the Examiner implicitly dic-
tates that the use of the program by that member of
the public could not constitute an infringement since
no-one can patent or pre-empt a computer program.
(If such use is considered to be an infringement,
then the patentee has pre-empted the program in any
event.)
Briefly, the Examiner would have the Government,
through the Commissioner of Patents, appear to vio-
late the exclusivity which it promises in its patent
legislation. Any method capable of being put into
use through computer software could, under the Exam-
iner's concepts, be acquired and used without liabil-
ity. Such a policy can scarcely be viewed as condu-
cive to inventors to make available their discoveries
to the public; and this, of course, is precisely the
Purpose for which the patent system was proposed and
instituted.
...
Now let us again apply the Examiner's infringement
question. "How could the public avail itself of the
disclosed use of the natural principle without in-
fringing the claims."
The answer, of course, is that the public would have
no right, as is clearly directed by the courts. The
inventor, in return for his disclosure, is given a
limited monopoly.
...
It is respectfully submitted that acceptance of the
tenets espoused in the Diamond v. Diehr decision in
the U.S.A., which are in accord with the general
approach to non-statutory subject matter in our own
case law, would lead to a sound, practical and legal-
ly acceptable procedure.
The issue before the Board is whether or not the subject matter of the ap-
placation is patentable in view of Section 2 of the Patent Act. Claim 1
reads:
A method for abstracting, archiving and retrieving a
document in machine readable form comprising the
steps of:
(a) establishing a dictionary memory of preselected
first specialization terms;
(b) comparing the text of said document with the
terms in said dictionary memory;
(c) combining first specialization terms correspond-
ing to terms in said text with second specialization
terms, not entered in said dictionary memory, to form
an abstract of said document;
(d) storing each word of the said abstract in a word
index file;
retrieval of said documents being accomplished by:
(e) comparing retrieval query words with said word
index file and selecting those documents having ab-
stracts containing said query words.
In assessing the kind of subject matter presented by Applicant, we are
guided by the decision in Schlumberger Canada Ltd. v. The Commissioner of
Patents (1981) 56 C.P.R. (2d) at 204, and the following passages of
Pratte, J.:
In order to determine whether the application dis-
closes 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 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 cer-
tain formulae, useful information could be extracted
from certain measurements. This is not, in my view,
an invention within the meaning of Section 2.
It is evident to us that the Applicant's system provides an arrangement of
components that permits the storage and retrieval of documents. In our
view, the system provides a useful end result in the field of document
handling, and is directed to more than merely performing certain calcula-
tions in order to extract information. We see that a combination of com-
ponents has been employed, including hardware and software elements, to
carry out the various steps in transferring the text of documents to a
storage area, and in retrieving texts in response to enquiries and making
the texts available. We find that the Applicant sufficiently sets forth a
system for document handling that is understandable to a person skilled in
the art, and that his application complies with Section 36(1) of the Patent
Act. Moreover, we are satisfied in view of Schlumberger, supra, that the
application presents patentable subject matter under Section 2 of the Act.
We see that the claims relate the steps to provide for abstracting, archiv-
ing, and retrieving document texts. In our opinion, they are directed to
the invention described in the application.
We find therefore that the application discloses and claims a system for
document storage and retrieval that pertains to more than merely performing
calculation steps to derive particular measurements. In the absence of any
cited art, we are satisfied the application is directed to patentable sub-
ject matter and may be allowable.
We recommend the withdrawal of the rejection of the application for being
directed to non-statutory subject matter.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I have reviewed the prosecution of the application. I concur with the
findings and recommendation of the Patent Appeal Board. Accordingly I
withdraw the Final Action, and I am remanding the application to the
Examiner for prosecution consistent with the recommendation.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 29 day of June 1987
Alexander Kerr
IBM Canada Limited
Department 24/908
3500 Steeles Avenue East
Markham, Ontario
L3R 2Z1