IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 500,734 having been rejected under Rule 47(2)
of the Patent Regulations, the Applicant asked that the Final
Action of the Examiner be reviewed. The rejection has
consequently been considered by the Patent Appeal Board and by
the Commissioner of Patents. The findings of the Board and the
ruling of the Commissioner are as follows:
Agent for Applicant
Marks & Clerk
P.O. Box 957, Station B
Ottawa, Ontario
K1P 5S7
COMMISSIONER'S DECISION SUMMARY
C.D. 1164...App'n 500734 (J40)
Section 2, Non-Statutory Subject Matter:
Amended claims that are directed to the processing of film
under abnormal conditions are directed to a useful art, albeit
that some of the steps may involve the exercise of human
judgement. Rejection modified.
This decision deals with the Applicant's request that the
Commissioner of Patents review the Examiner's Final Action on
application 500,734 filed January 30, 1986, (Class 95-25).
Assigned to Color Processing System SDN. BHD., it is entitled
PRODUCTION OF BUSINESS CARDS AND THE LIKE. The inventors are
K.S. Liat, K.S. Khoon and K.S. Hean. The Examiner in charge
issued a Final Action on December 8, 1989 refusing to allow the
application to proceed to patent.
The invention provides a method for producing business cards in
color, free of boundary or artist make up lines. The steps
include, assembling a composite artwork, exposing it to color
film, developing the film under abnormal conditions of either,
(a) a given temperature for a time exceeding the manufacturer's
specified time, or, (b) a given time at a temperature exceeding
the manufacturer's specified temperature, to obtain a color
negative having high contrast. The developing process disclosed
is Kodak Flexicolour Process C41 (Trade Mark) or compatible
process, hereinafter C41 process. After printing the negative,
the result is a print free of artwork make-up lines.
In his Final Action the Examiner said, in part, as follows:
...
Claims 1 and 2 are refused as being directed to non-
statutory subject matter outside the definition of invention
as set forth in Section 2 of the Patent Act. Method steps
such as exposing, developing for a given time, immersing in
a chemical bath at a given temperature for developing times
exceeding the times specified by the manufacturer in order
to produce a very high contrast negative are nothing but the
use of photographic sensitometry variables known and used by
experienced photographers. These expected skills all
require human intervention as well as exercising judgemental
reasoning. M.O.P.O.P. Section 12.03.01 (c) and (d)
specifically identify such procedures and processes as used
in this application as non statutory subject matter.
...
The Applicant responded to the Final Action by submitting a new
claims 1 and 2 on July 31, 1990 and January 21, 1992 and argued
against the rejection, in the following terms, in part:
... It is respectfully submitted that all processes be they
chemical, photographic or otherwise, require human
intervention, as well as exercising judgemental reasoning.
In particular, any chemical process requires the
intervention by humans in order to make it go, and
judgemental reasoning to see that it goes correctly and in
the manner required. It cannot be seen that this renders
the process unpatentable if it is novel and inventive.
It is pointed out to the Commissioner that the process of
the present invention is directed to the production of a
vendible product, namely business cards. It is also
directed to the production of these business cards by a
novel and inventive process, and it is to be noted that the
Examiner has not attempted to assert that the process is not
novel and inventive. This is a classical case for
patentability. Thus, referring to M.O.P.O.P. Section
12.03.01 and the prerequisites of a patentable invention,
the first requisite is that it has industrial value. The
process of the present invention certainly satisfies this
requirement. It must relate to a useful art, as distinct
from a fine art, where the result produced is solely the
exercise of personal skills, mental reasoning or judgement,
and has only intellectual meaning or aesthetic appeal. It
is respectfully submitted that clearly the process of the
present invention is directed to a useful art. Further, the
subject matter is operable, controllable and producible by
the means described by the inventor, so that the desired
result inevitably follows whenever it is worked. This is
certainly the case here. The subject matter has practical
application in industry, trade and commerce. It is not
illicit, and it is not a mere scientific principle or
abstract theorem, and it is certainly beneficial to the
public. It is respectfully submitted that Section 12.03.01
(c) and (d) which are exemplifications of what is not
patentable relates to whether the process of the present
invention is a useful art, as opposed to a fine art, and it
is respectfully clearly submitted that it is a useful art.
It is a process which is reproducible, can be operated by
people skilled in the art of photography, as clearly
admitted by the Examiner in his ... statement with regard to
experienced photographers, and is not produced solely by the
exercise of personal skills, mental reasoning or judgement.
The present invention is directed to a method of producing
full colour business cards by photographing a subject
consisting of artwork pasted up on to a background, using
only a single exposure, wherein the single exposure exposes
a single colour negative, after which the negative is
processed and printed onto colour photographic paper, such
that there is a high contrast between the light and dark
colours, in order that the subject of the business is card
is bold and stands out, and such that contrast between
similar shades of similar colours is suppressed so that the
boundary lines present between the areas of the pasted up
art work, and the similar shaded areas of the background
mounting board disappear, thereby leaving a clear and tidy
business card. It has been found that the problem with
producing business cards by the conventional developing
technique is that the subject of the cards tends not to
stand out clearly from the background, and a more
significant problem arises from the fact that unwanted
boundary lines, which are present between areas of the
pasted up art work, and similar shaded areas of the mounting
board from which the single negative is obtained in a single
exposure step show up in the final print. ...
...
The issue before the Board is whether or not the application and
the amended claims are directed to the exercise of judgemental
reasoning and are or are not outside the definition of invention
set forth in Section 2 of the Patent Act. Amended claim 1 reads:
A method for producing business cards, name cards and the
like in color, the steps comprising: (a) assembling artwork
comprising images and characters on a substrate to form a
composite artwork for a business card, name card or the like,
said images and characters comprising a multiplicity of colors;
(b) exposing, in a single step, a unit of color film to said
artwork to form a latent image of said artwork thereon;
deliberately over-developing said exposed unit of color film by
employing abnormal processing conditions with respect to the
normal processing conditions specified by the manufacturer of the
color film to produce a normal contrast color negative, which
abnormal processing conditions involve one of: (i) immersing said
exposed unit of color film in a first chemical at a given
temperature T, for a developing time t1 which exceeds the maximum
time t0 specified by the manufacturer for said given temperature
by an amount .DELTA.t; and (ii) developing for a given time period t,
the exposed unit of color film in the first chemical at a
temperature T1 which exceeds the maximum T0 specified by the
manufacturer for said given time period by an amount T; said
amounts .DELTA.t or .DELTA.T being selected to provide a single developed
color negative containing all of said artwork and having a very
high-contrast in relation to a color negative developed under
said normal processing conditions so as to permit suppression of
the boundary lines resulting from variations in shade of the
backgrounds of said substrate and said artwork; (d) printing only
said single developed color negative onto color photographic
paper in the desired size to reproduce the artwork thereon in a
multiplicity of colors substantially corresponding to those of
said artwork; and (e) cutting said printed color photographic
paper to the desired card size and thereby to provide a desired
card in color.
Considering first the method steps of amended claim 1, it is
noted they include, the assembly of the artwork, exposing it to
film, developing under abnormal conditions, printing the negative
obtained, and cutting. These are described in the application
with respect to how they have been used with a particular type of
process, namely a C41 process, to produce business cards. It may
be that some of the steps involve the exercise of human
judgement, such as cutting. Other steps such as developing the
film fall into the area of a useful art, particularly in view of
the disclosure. On pages 5 and 6 of the application, information
is given to achieve a result that is different from that produced
by following the normal C41 process. As claim 1 calls for
processing film under abnormal conditions, the Board is satisfied
that claim 1 is directed to a useful art that is acceptable under
Section 2 of the Patent Act.
The Board, therefore recommends that the application containing
amended claims 1 and 2 be accepted.
F.H. Adams M. Howarth P. Ebsen
Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I concur with the findings and the recommendations of the Patent
Appeal Board. Accordingly, I withdraw the rejection of the
application and the claims made under Section 2 of the Patent
Act. I remand the application to the examiner for prosecution
consistent with the recommendations.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 30th day of January 1992
Marks & Clerk
P.O. Box 957, Station B
Ottawa, Ontario
K1P 5S7