Citation: United Parcel Service of America, Inc. (Re), 2020 CACP 3

Commissioner’s Decision #1523

Décision du Commissaire #1523

Date: 2020-04-28

Application No. : 2,557,342

Demande n^o 2 557 342

IN THE CANADIAN PATENT OFFICE

DECISION OF THE COMMISSIONER OF PATENTS

Patent application number 2,557,342, having been rejected under subsection 30(3) of the Patent Rules (SOR/96-423) as they read immediately before October 30, 2019 (the former Rules), has consequently been reviewed in accordance with paragraph 199(3)(c) of the Patent Rules (SOR/2019-251). The recommendation of the Patent Appeal Board and the decision of the Commissioner are to refuse the application.

Agent for the Applicant:

ROBIC

630 Boul René-Lévesque O, 20e étage

MONTREAL, Québec

H3B 1S6

Introduction

[1] This recommendation concerns the review of rejected Canadian patent application number 2,557,342, which is entitled “Method and system for gathering data” and is owned by United Parcel Service of America, Inc. (the Applicant). A review of the rejected application has been conducted by the Patent Appeal Board (the Board) pursuant to paragraph 199(3)(c) of the Patent Rules. The outstanding defect considered in this review is that the claims do not define statutory subject-matter, contrary to section 2 of the Patent Act. As explained below, our recommendation is that the Commissioner of Patents refuse the application.

Background

The Application

[2] The application was filed on August 28, 2006 and has been open to public inspection since March 1, 2007.

[3] The application relates generally to using existing service data that was collected in connection with a service that was previously performed on site at a customer’s home or business address as evidence proving that the customer resides at that address or that the business operates from that location. Such evidence may be useful in the event that proof of occupancy is required, for example in making an insurance claim, or applying for a permit from a government agency.

Prosecution History

[4] On April 11, 2016, a Final Action (FA) was issued pursuant to subsection 30(4) of the former Rules. The FA indicated that the essential elements of claims 1-13 on file did not define statutory subject-matter and therefore the claims on file did not comply with section 2 of the Patent Act.

[5] The Applicant responded to the FA in a letter dated October 6, 2016 (RFA) by submitting arguments as to why the claims on file defined statutory subject-matter, and in addition the Applicant proposed claim amendments to overcome the defects raised in the FA.

[6] The Examiner was not persuaded by the Applicant’s arguments with respect to the claims on file, nor were the proposed claim amendments considered to remedy the defects. Therefore, pursuant to paragraph 30(6)(b) of the former Rules, the proposed amendments were not entered and the application was forwarded to the Board for review. On March 13, 2017, the Board forwarded a copy of the SOR to the Applicant. In a response dated April 12, 2017, the Applicant indicated its continued interest in having the application reviewed.

[7] This Panel was formed to review the rejected application and make a recommendation to the Commissioner as to its disposition. Following our preliminary review, we sent a letter on December 16, 2019 (PR letter) presenting a preliminary analysis and rationale regarding the patentability of the claims on file in view of the issue raised in the FA, and addressing the claim amendments proposed by the Applicant in the RFA. The Applicant was also offered an opportunity to attend a hearing.

[8] The Applicant responded to the PR letter in a letter dated January 16, 2020 (RPR) by indicating that it did not wish to attend an oral hearing, by submitting new arguments in favour of the patentability of claims 1-13 on file, and by proposing a new set of amended claims 1-7 (the proposed claims).

Issue

[9] The sole issue to be considered by this review is whether claims 1-13 on file define subject-matter that does not fall within the definition of invention in section 2 of the Patent Act.

[10] After addressing this issue, we turn to the question of whether the proposed claims would constitute a necessary amendment under subsection 86(11) of the Patent Rules.

Legal Principles and Office Practice

Purposive Construction

[11] In accordance with Free World Trust v Électro Santé, 2000 SCC 66 [Free World Trust], essential elements are identified through a purposive construction of the claims done by considering the whole of the disclosure, including the specification and drawings (see also Whirlpool v Camco, 2000 SCC 67 at paragraphs 49(f) and (g) and 52 [Whirlpool]). In accordance with the Manual of Patent Office Practice, (MOPOP) at §12.02, revised June 2015 (CIPO), the first step of purposive claim construction is to identify the person of ordinary skill in the art and their relevant common general knowledge (CGK). The next step is to identify the problem addressed by the inventors and the solution put forth in the application. Essential elements can then be identified as those elements that are fundamental to the disclosed solution.

[12] In the RFA at pages 4 to 7, the Applicant submitted that the purposive claims construction carried out in accordance with Patent Office practice has no real basis in Canadian law. In particular, the Applicant submitted that the Patent Office approach places too much emphasis on the analysis of a described problem and solution and not enough emphasis on the language of the claims, arguing that claimed elements should be presumed to be essential: citing Pollard Banknote Ltd v BABN Technologies Corp and Scientific Games Products (Canada) ULC, 2016 FC 883 and Canada (AG) v Amazon.com Inc, 2011 FCA 328 [Amazon.com].

[13] However, as discussed in the PR letter on page 3, our view is that the jurisprudence cited by the Applicant continues to follow and draw on the principles of purposive construction as established in previous jurisprudence such as Free World Trust and Whirlpool. The cited jurisprudence establishes, among other principles, that the claim language is to be construed based on a reading of the patent as a whole from the point of view of the skilled person, that purposive claim construction cannot be determined solely on the basis of a literal reading of the patent claims, and that because claim language may be deliberately or inadvertently deceptive, a practical feature of a claim may not form part of the set of essential elements of a claimed invention.

[14] As stated in the PR letter, the guidance of MOPOP at § 12.02.02d and § 12.02.02e echoes these principles: a properly informed purposive construction is carried out from the perspective of the skilled person and must consider the application as a whole, including the problem addressed by the application and its solution. The solution to that problem informs the identification of essential elements: not every element of a given embodiment is necessarily essential to the solution. The mere presence of an element in the claim language chosen by the inventor cannot override all other considerations during purposive construction of the claims.

Statutory subject-matter

[15] The definition of invention is set out in section 2 of the Patent Act:

“Invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.

[16] Following the Federal Court of Appeal decision Amazon.com, the Office released an examination memo (PN2013-03 “Examination Practice Respecting Computer-Implemented Inventions”, (CIPO, March 2013) [PN2013-03]) that clarifies the Patent Office’s approach in determining if a computer-related invention is statutory subject-matter.

[17] As explained in PN2013-03, where a computer is found to be an essential element of a construed claim, the claimed subject-matter will generally be statutory. Where, on the other hand, it is determined that the essential elements of a construed claim are limited to matter that is disembodied (e.g. a mere idea, scheme, plan or set of rules, etc.), the claim will not be compliant with section 2 of the Patent Act.

Analysis of the Claims on File

[18] Claims 1 and 9 on file are the only two independent claims. Claim 1 reads as follows:

1. A computer program product having a first memory having computer readable code embodiments for execution by a data acquisition device, and a second memory with a computer readable second code therein for verifying occupancy of a given address wherein said first code comprises

first code means for capturing signatures of respective occupants by the data acquisition device at respective locations in a geographic area in connection with providing a service other than verifying occupancy at least at some of said locations,

first code means for digitizing signatures and storing in a data record in association with an address for respective locations with respective occupant’s name and dates of service at said respective locations;

first code means for transferring said data records into a data repository from said data acquisition device; and wherein said data repository having second code therein,

said second code comprising

second code means for receiving a request for proof of occupancy evidence that a business or person occupied a select location within said geographic area, said request including a select address or select occupant’s name;

second code means for querying said data repository to identify any data records associated with said request;

second code means for determining whether data records associated with said request exist in said data repository; and

second code means, that, in response to determining at least one data record exists, provides proof of occupancy evidence for said select location based at least in part on said identified records.

[19] The elements of independent claims 1 and 9 are generally the same except that the “service other than verifying occupancy” from claim 1 is specified as package delivery in claim 9. In the RPR, the Applicant did not contest the Panel’s consideration of claim 1 as being representative of the independent claims on file for the purposes of our analysis. Likewise, the Applicant did not contest our characterization of the dependent claims 2-8 and 10-13 in the PR letter as generally providing further limitations relating to the occupant (claims 2, 7, 10), the types of evidence that are provided (claims 3, 8, 11), the person or entity requesting proof (claims 4, 5, 12, 13), and that the request is for a given time frame (claim 6).

Purposive Construction

The skilled person

[20] In the RPR, the Applicant did not contest the Panel’s characterization of the skilled person as set out on page 6 of our PR letter. Accordingly, we adopt that characterization for this review:

a person or team skilled in the fields of gathering data (for package delivery and/or surveys) and in fields requiring proof of occupancy (i.e., insurance and/or government relief), that has familiarity with general purpose computing technology and basic programming techniques.

The relevant CGK

[21] On pages 6 to 8, the PR letter identified the relevant CGK of the skilled person as follows:

On pages 2 and 3, the FA identified the CGK as including the following:

• the requirements for providing proof of occupancy;

• prior art package tracking systems including a delivery vehicle, data repository, communication network, means for a customer to submit a tracking request and a portable data acquisition device;

• package tracking data that is collected in the prior art including package identification, consignee name, delivery data, delivery address, package weight, recipient or shipper signature, etc.;

• digital signatures;

• client/server computing systems including sending requests over a communication network such as the Internet; and

• the knowledge required to implement the features in the claims.

…

With respect to the package tracking data, the FA cited paras [0018], [0019] and [0023] from the Applicant’s description as support that databases storing data collected for the purposes of tracking package delivery—including package identification, consignee name, delivery data, delivery address, package weight, and recipient or shipper signature—were known in the prior art and would have been CGK of the skilled person. As mentioned above, the collection and storage of this data is acknowledged as being “well known in the art” in the Applicant’s description at para [0023].

On pages 8-9 of the Applicant’s letter of September 4, 2015, the following was said with respect to this data:

The Examiner discounts the collection of data apparently based on the fact that databases of some kind are already maintained as a resource. However, there is no indication that anyone has developed or assimilated databases and maintains them in the format of Applicant’s invention for the solution provided.

…

There is no prior art cited to illustrate that the determination of occupancy as set forth by Applicant is known, even given that the storage of some information or data, stored for other purposes, may also be used for the solution Applicant provided. (emphasis added)

Based on these passages, the Applicant does not appear to disagree that databases storing package delivery data would have been CGK to the skilled person. Rather, the Applicant’s position seems to be that databases assimilated and maintained for the express purpose of providing proof of occupancy were not CGK of the skilled person. Based on all of the information before us we agree with the Applicant: the CGK is limited to package tracking data stored for the purposes of confirming the delivery of a package.

Our preliminary view is that the CGK includes all of the above knowledge identified in the FA, including package tracking data that is stored in a database or data repository for the purposes of confirming the delivery of a package.

[22] In response, the Applicant conceded on page 5 of the RPR that the data acquisition device and data repository of Figures 1 and 2 were CGK. However, in view of our conclusion agreeing with the Applicant that databases assimilated and maintained for the express purpose of providing proof of occupancy were not CGK, the RPR disputed that the CGK would include the requirements for providing proof of occupancy (page 4):

The PAB concludes by stating that the CGK is limited to package tracking data, stored for the purposes of confirming delivery of a package. This means, logically, that the CGK does not include “the requirements for providing proof of occupancy” (p.6 PR).

[23] The Applicant did not dispute that the skilled person is skilled in fields where proof of occupancy may be required, such as insurance or government relief. Our view of the “requirements for providing proof of occupancy” in the PR letter was that this represented knowledge of the occasions or circumstances where providing proof of occupancy may be warranted or required. In our view, this is consistent with the characterization of the skilled person and it does not logically contradict our exclusion of databases assimilated and maintained for the express purpose of providing proof of occupancy from the CGK.

[24] We therefore conclude, in consideration of the Applicant’s submissions, that the CGK includes knowledge of:

• the requirements for providing proof of occupancy, that is, the occasions or circumstances where providing proof of occupancy may be required;
• prior art package tracking systems including a delivery vehicle, data repository, communication network, means for a customer to submit a tracking request and a portable data acquisition device, including those disclosed in the Figures 1 and 2 in the application;
• package tracking data that is collected in the prior art including package identification, consignee name, delivery data, delivery address, package weight, recipient or shipper signature, etc.;
• digital signatures;
• client/server computing systems including sending requests over a communication network such as the Internet; and
• the knowledge required to implement the features in the claims.

The problem to be solved

[25] In the PR letter on page 9, we identified the problem to be solved as follows, providing the following rationale:

In the present case, the description does not refer to any challenges relating to the ability of a service provider to collect information on site, such as a signature, in order to prove that a service had been provided. Likewise, the description does not refer to any challenges in implementing a system for digitizing and storing such signatures on site at an occupant’s address using a computer. As addressed above, the system, data acquisition device and data repository of Figures 1 and 2 were all CGK to the skilled person. Accordingly, our preliminary view is that there was no computer problem to overcome.

Based on the teachings of the specification as a whole, our preliminary view is that the problem to be solved as viewed by the skilled person with their CGK rests in the need for a cost-effective method for verifying occupancy.

[26] In response, the RPR proposed a different problem to be solved on page 5:

Indeed, the invention that is the subject of the present application is not to provide an improved and cost-effective method of verifying proof of occupancy. Rather, the present invention is more akin to a new use of a known thing. In other words, the invention stems from the realization that the data gathered in the course of say delivering packages can also be used for other purposes, namely verifying proof of occupancy, as long as it is properly packaged. Therefore, the problem to be solved is to find a new way to configure the collected data, so that it is usable for other purposes. Although the result (or advantage) provided by the invention is a cost-effective manner or providing proof of occupancy, the problem lies elsewhere, as mentioned above.

In support of this, Applicant’s letter of September 4, 2015 is right on point: there is no indication in the prior art that anyone before the Applicant developed or maintained databases in the format of Applicant’s invention.

Thus, the limitations of Claim 1 in the RFA of “the graphic images of the digitized signatures in the memory in association with a data record having a corresponding address for respective locations with respective occupant’s names and dates of service at said respective locations” takes on its full meaning. The digitized signature, is associated with a data record containing specific information. It is in the manner with which the signature, address, location, names and dates of service are bound together that allows the data gathering service to permit querying the database to provide proof of occupancy. This is what was clarified in proposed claim 1, submitted with the RFA.

Applicant concedes that the data acquisition device and data repository of Figures 1 and 2 were CGK. What was not CGK, however, is the manner in which, as claimed, the various pieces of data are assembled together in order to unlock the possibility of using the newly collected data as proof of occupancy. (emphasis in the original)

[27] Further, on page 6 of the RPR, the problem to be solved proposed above by the Applicant was characterized in terms of “creating a data record that represents proof of delivery that can subsequently be used for providing proof of occupancy”.

[28] These submissions indicate that there was a need to configure or assemble the data in some new way in order to realize or practice the invention, and that finding a new way to configure the data was the problem to be solved.

[29] In our view the description does not support that finding a new way to configure or assemble the data was the problem to be solved, nor that doing so was necessary in order to practice the invention. First, there is a lack of any emphasis, detail or discussion in the description relating to configuring the data in a new way or that any changes relating to how the data is configured were needed. Rather, a comparison of paras [0033] and [0041] indicates that the data collected and stored for proving delivery and proving occupancy is the same. Further, para [0037] describes the data query for proving occupancy as being run on data that is stored in the prior art proof of delivery database 13 and that the query retrieves proof of delivery records. Accordingly, we can see no differences in the respective explanations of the collection, storage and transfer of data for proving delivery compared to proving occupancy.

[30] Second, there is no indication in the description of any challenges relating to finding a new way to configure the data, or to any challenges relating to any software or computer implementation.

[31] Third, it is not clear from the description that a new way of configuring the data would have been needed in order to practice the invention. According to the description, the evidence or data provided in a “proof of delivery letter” (para [0030]) and a “proof of occupancy letter” (para [0037]) is the same: delivery address, date and a digital reproduction of the signature of the recipient. Accordingly, the skilled reader would understand from the description that the invention as characterized by the Applicant in the RPR could be practiced without any adaptation by requesting proof of delivery and using it as proof of occupancy.

[32] In our view, the skilled person would not consider the problem to be solved as being something that was never addressed as part of the disclosure. Having fully considered the Applicant’s proposal, our view is that, from the perspective of the skilled person, the problem to be solved is more reasonably characterized as resting in the need for a cost-effective method for verifying occupancy.

The solution

[33] In the PR letter on pages 9 to 10, we identified the solution and our rationale, as follows:

Our preliminary view stated above is that there were no computer problems to overcome, and so we do not consider the solution to lie in any software or computer implementation of the collection, storage or transfer of data. Rather, what appears to be the solution, in our preliminary view and in accordance with the application, is to leverage existing proof of service data that was collected on site in connection with a service performed at the occupant’s address and to provide that data as proof of occupancy.

[34] The Applicant did not specifically address or contest the proposed solution in the RPR. Notably, the Applicant’s characterization of the invention in the RPR (see the quotation above at para 26) as a new use, stemming from the realization that information gathered in the course of delivering packages could also be used for verifying occupancy, is consistent with the solution proposed in the PR letter.

[35] In our view, since there were no computer problems to overcome, we do not consider the solution to lie in any software or computer implementation of the collection, storage or transfer of data. Our conclusion is that from the perspective of the skilled person, based on the specification as whole, the solution is to leverage existing proof of service data that was collected on site in connection with a service performed at the occupant’s address and to provide that data as proof of occupancy.

Essential elements

[36] On pages 10 to 12 in the PR letter, we identified the essential elements and provided our rationale as follows:

On page 4, the FA identified the essential elements of independent claim 1 on file as follows:

-receiving a request for proof of occupancy evidence that a business or person occupied a select location within said geographic area, said request including a select address or a select occupant’s name;

-identifying any data records associated with the request;

-determining whether data records associated with the request exist in said data repository; and

-in response to determining at least one data record exists, providing proof of occupancy evidence for said select location based at least in part on said identified records.

On pages 3-5, the FA identified the computing equipment, including the memory and code means for capturing and digitizing signatures, and for storing and transferring data records to and from a data repository, as non-essential elements of claim 1. These elements were characterized in terms of practical features that are part of the operating embodiment of the invention but that the skilled person would not consider as essential to solving the identified problem.

In response, the Applicant made a number of arguments. First, the RFA on page 8 cited two Commissioner’s Decisions as examples of computer-related inventions where a purposive construction revealed that claimed computer components were essential to the invention (Re Progressive Casualty Insurance Co’s Patent Application 2344781 (2013) CD 1341 (Commr of Pat) and Re eBay’s Patent Application 2263903 (2014), CD 1369 (Commr of Pat)). However, the assessment of essentiality of claim elements in each case depends on factual determinations that are specific to that case and therefore the outcome of the analysis in one case is not determinative of another.

Second, the RFA submitted on page 4 that just because the features may be known individually, that does not justify dismissing features set forth in the claims. On page 8, the Applicant submitted that “its invention and the configuration of it, as defined in the claims, is distinct because it involves various code means of the computer program product”.

To the extent that the RFA is saying that even when elements of a combination had been known separately they may still be essential elements of a novel combination invention, we agree. This is well-established in the jurisprudence: Bayer AG v Apotex Inc, (1995) 60 CPR (3d) 58 (Ont Gen Div) at page 86; Bridgeview Manufacturing v 931409 Alberta Ltd, 2010 FCA 188 at para 51; Halford v Seed Hawk Inc, 2006 FCA 275 para 14. We also agree that there is no prior art that discloses using a computer program product configured to collect proof of service data for the purposes of verifying occupancy.

Finally, the Applicant generally contended on pages 3-7 that the computer elements that capture, digitize and store signatures in a data record are technical features that are required to operate the claimed invention, pointing to a lack of any suggested alternative means in the FA that would allow the invention to be performed without computer devices and the Internet.

With respect to “alternative means”, the Applicant’s description teaches at paras [0034] and [0043] that proof of delivery information can be obtained by contacting a customer service representative to request the information from the data repository, for example by telephone. Regardless of whether this information is retrieved from a database or a filing cabinet, it would not change the fact that we do not consider the problem and solution as involving any computer or software implementation.

Our preliminary view is that this is not a case where the computer equipment, memory and code means are essential elements of a novel combination invention. The computer elements are part of the practical embodiment set out in the claims, but in our preliminary view they are not essential to the solution of leveraging existing proof of service data collected previously in connection with a services performed at an occupant’s address and providing it as proof of occupancy.

Based on the solution, our preliminary view is that the essential elements of the independent claims are those associated with:

• receiving a request for proof of occupancy evidence that a business or person occupied a select location within said geographic area, said request including a select address or a select occupant’s name;

• identifying any data records associated with the request;

• determining whether data records associated with the request exist; and

• in response to determining at least one data record exists, providing proof of occupancy evidence for said select location based at least in part on said identified records.

With respect to the dependent claims, we consider that these claims further limit or characterize the essential elements of the independent claims.

[37] On page 6 of the RPR, the Applicant disputed that the essential elements would not include the computer elements, making two arguments. First, the Applicant argued that, in view of the newly proposed problem to be solved set out in the RPR, the computer elements would be essential:

Since the PAB takes the position that the problem to be solved is a cost effective method for verifying proof of occupancy, the PAB then considers that many of the other elements of claim 1 are not essential.

However, considering the re-framed problem to be solved, which is creating a data record that represents proof of delivery that can be subsequently be use for providing proof of occupancy requires the presence of a computer, notably the data acquisition device. Indeed, it is only with a computer and its associated components that the digitized signature is associated with the data record containing the specific information claimed that the full potential of the present invention can be realized. (emphasis in original)

[38] The Applicant’s arguments relating to the problem to be solved were fully addressed above. We concluded that the skilled person would not characterize the problem to be solved in terms of the need to configure or assemble the data in some new way, and so our view is that the essential elements would not be identified on that basis.

[39] Second, the Applicant disputed our rationale relating to the “alternative means”, saying the following:

Applicant also submits that the PAB has used the expression “alternative means” out of context (see p. 11 RFA, 3^rd paragraph). The PAB here attempts to support a conclusion that a computer is not an essential part of the invention, because “proof of delivery information can be obtained by contacting a customer service representative to obtain the information from the data repository”. This passage that the PAB relies on is directed to post data collection steps. In other words, proof of delivery (or proof of occupancy, for that matter) can be obtained by contacting a customer service representative; however it does not reduce in any way the technical requirements for obtaining the required data at the time of delivery and packaging this data so that it can be subsequently used to provide proof of occupancy. (emphasis in the original)

[40] With respect to the alternative means, our statement quoted above was not intended as supporting a conclusion. Rather, our statement addressed the Applicant’s submission in the RFA that the FA did not provide “any substitute means that would allow the invention as claimed to be performed without computer devices and the Internet” (page 7). In our view, substitutability is a factor, not a requirement or stand-alone basis that determines whether an element is essential or non-essential. Accordingly, our view is that it was not incumbent that the FA identify substitute means.

[41] Further, as indicated by our statement, our identification of elements as essential or non-essential in the PR letter was based on their essentiality to the problem and solution as identified, not substitutability.

[42] Having fully considered the Applicant’s arguments, our conclusion is that the computer elements are not fundamental to the solution of leveraging existing proof of service data that was collected on site in connection with a service performed at the occupant’s address and providing it as proof of occupancy. In our view, the skilled person would consider the following elements as being essential to the solution:

• receiving a request for proof of occupancy evidence that a business or person occupied a select location within said geographic area, said request including a select address or a select occupant’s name;
• identifying any data records associated with the request;
• determining whether data records associated with the request exist; and
• in response to determining at least one data record exists, providing proof of occupancy evidence for said select location based at least in part on said identified records.

[43] With respect to the dependent claims, our conclusion is that they further limit or characterize the essential elements of the independent claims.

Statutory subject-matter

[44] On pages 12 to 13 of the PR letter, we expressed our preliminary view that the subject-matter of claims 1-13 on file does not fall within the categories of section 2 of the Patent Act, providing the following rationale:

On page 5, the FA stated that the claims on file do not comply with section 2 of the Patent Act because “the essential elements are directed to a mere scheme and not a patentable category of invention”.

In response, the RFA focused primarily on the patentability of the proposed claims without addressing the claims on file. However, the patentability of the claims on file was addressed in the Applicant’s earlier letter dated September 4, 2015. On pages 2-3 of that letter, the Applicant submitted that one must not lose sight of the Supreme Court’s guidance in the Shell Oil decision that a disembodied idea “will be patentable if it has a method of practical application” and pointed to the clear indication in Amazon.com that there is “no inherent prohibition against the patentability of a “business method or system” (Applicant’s emphasis): Shell Oil Co v Commissioner of Patents, [1982] 2 SCR 536 [Shell Oil] at 554; Amazon.com at para 63.

The Panel agrees that the Federal Court of Appeal in Amazon.com was clear that there is no prohibition against the patentability of business methods in Canada. However, they were also clear that an invention must be something with physical existence, or something that manifests a discernable effect or change, and that this physicality requirement is not automatically met whenever there is a practical application: “the claims in Schlumberger were not saved by the fact that they contemplated the use of a physical tool, a computer, to give the novel mathematical formula a practical application” (Amazon.com, paras 66 and 69, in consideration of Shell Oil and Schlumberger Canada Ltd v Commissioner of Patents, [1982] 1 FC 845 (CA). If a purposive construction leads to the conclusion that disembodied matter in a claim is not the whole invention, but rather is only one of a number of essential elements in a novel combination, and the combination has physical existence, or using the combination manifests a physical effect or change, then the claim may define patentable subject-matter (Amazon.com, paras 63 and 66).

As indicated above, the essential elements of the claims relate to information or data that is requested, retrieved and provided. The data (e.g., a signature, time, date and address) is the same data that is collected in the CGK proof of delivery system, although the significance attributed to the data is different: it is used to prove occupancy instead of delivery. Based on all of the information before us, including the arguments and the record as it stands, our preliminary view is that the invention is neither a product with physical existence, nor is it something that causes a physical effect or change. Rather, the essential elements of the claims are limited to matter that is disembodied, and so our preliminary view is that the subject-matter of claims 1-13 on file does not fall within the categories of section 2 of the Patent Act.

[45] In the RPR, the Applicant disputed our preliminary opinion primarily on the basis that the computer or data acquisition device elements in the claims on file are essential elements. These arguments have been fully addressed above. The remainder of the arguments in the RPR were in relation to the proposed claims.

[46] As mentioned above, the Applicant also made submissions in the RPR relating to the actual invention which, in our view, are appropriately considered here. Specifically, the Applicant characterized its invention as being akin to a new use that stemmed from the recognition that data originally gathered while delivering packages could also be used as evidence of occupancy.

[47] As we stated in the PR letter, the Court in Amazon.com was clear that an invention must be something with physical existence, or something that manifests a discernable effect or change, and that this physicality requirement is not automatically met whenever there is a practical application: “the claims in Schlumberger were not saved by the fact that they contemplated the use of a physical tool, a computer, to give the novel mathematical formula a practical application” (Amazon.com, paras 66 and 69, in consideration of Shell Oil and Schlumberger Canada Ltd v Commissioner of Patents, [1982] 1 FC 845 (CA).

[48] The method of practical application of the new use characterized by the Applicant produces information that has intellectual significance but lacks physicality or a discernable effect. Consequently, our view is that the skilled person would not consider this use as falling within section 2 of the Patent Act as a “new and useful art”.

[49] The essential elements of the claims on file are limited to matter that is disembodied, and our conclusion is therefore that the subject-matter of claims 1-13 on file does not fall within the categories of section 2 of the Patent Act.

Analysis of the Proposed Claims

[50] As stated above, the Applicant submitted proposed claims 1-7 with its RPR. The proposed claims would amend the claims on file by directing them to a data acquisition device per se rather than a “computer program product…for execution by a data acquisition device”.

[51] The proposed claims differ from the claims on file primarily in that independent claim 1 would be amended to include:

• at least one processor;
• a touch screen to capture signatures;
• a graphic image of captured signatures is created and stored in the data record;
• the device is adapted to display an agreement between the entity operating the device and the entity requesting a unique identifier, if such an agreement is in place;
• providing a graphical user interface for a respective occupant to review said agreement and provide consent thereto;
• subsequently to providing consent capturing information related to a unique identifier of a respective occupant having signed via said touch screen; and
• if a unique identifier was requested, providing said entity with said unique identifier and an indication of consent by said perspective occupant.

[52] As discussed above, digital signatures and portable data acquisition devices such as that in Figure 2, which also contains a processor and an input/output device including a touch screen and a keypad, were part of the relevant CGK. The claim also includes a graphical user interface that displays an agreement and allows for the occupant to provide consent.

[53] In our view, the proposed amendments would not affect our earlier identification of the problem and solution. The description does not refer to any challenges in implementing a system for digitizing and storing signatures, obtaining or storing indications of consent, or displaying information on site at an occupant’s address using a computer. In our view, for the same reasons provided above, the problem and solution would not be related to software or computer implementation. Rather, our view is that the problem and solution would be the same as for the claims on file.

[54] With respect to essential elements of proposed claim 1, in our view the processor, input/output device, touch screen, display, and the storage of graphic images of captured signatures or unique identifier would not be essential elements fundamental to the solution of leveraging existing proof of service data by providing it as proof of occupancy. Rather, the elements that are essential to the solution would be:

• receiving a request for proof of occupancy evidence that a business or person occupied a select location within said geographic area, said request including a select address or a select occupant’s name;
• identifying any data records associated with the request;
• determining whether data records associated with the request exist; and
• in response to determining at least one data record exists, providing proof of occupancy evidence for said select location based at least in part on said identified records, as well as the unique identifier and indication of consent, if it was requested.

[55] Regarding the issue of subject-matter, our view concerning the claims on file lacking statutory subject-matter would not change with the adoption of the proposed claims. Our view is that the essential elements of the proposed claims are limited to matter that is disembodied, and our conclusion is therefore that the proposed claims are not directed to subject-matter that would fall within the categories of section 2 of the Patent Act. The proposed amendments would therefore not qualify as “necessary” under subsection 86(11) of the Patent Rules.

 

Recommendation of The Board

[56] In view of the above, the Panel recommends that the application be refused on the basis that claims 1-13 on file define non-statutory subject-matter and thus do not comply with section 2 of the Patent Act.

Cara Weir	Lewis Robart	Andrew Strong
Member	Member	Member

Decision of the Commissioner

[57] I concur with the findings of the Board and its recommendation to refuse the application. The claims on file do not comply with section 2 of the Patent Act.

[58] Accordingly, I refuse to grant a patent for this application. Under section 41 of the Patent Act, the Applicant has six months to appeal my decision to the Federal Court of Canada.

Johanne Bélisle

Commissioner of Patents

Dated at Gatineau, Québec

this 28th day of April, 2020