Decisions of the Commissioner of Patents - Summary of decision number  1332

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This table provides a summary of decision number 1332

Decision Number 1332
Application Number 2195252
Date 2012-10-29
Patent Number n/a
CPC:
IPC: G08G 1/0969 (2006.01)
Topics B00: CLAIMS - Ambiguity or Indefiniteness (incomplete)
B22: CLAIMS - Excessive Width - Not supported by Disclosure
J80: SUBJECT MATTER OF APPLICATIONS - Professional or Artistic Skill
O00: OBVIOUSNESS

Decision Text

IN THE CANADIAN PATENT OFFICE


DECISION OF THE COMMISSIONER OF PATENTS








Patent application number 2,195,252, having been rejected under subsection 30(3) of the
Patent Rules, has subsequently been reviewed in accordance with subsection 30(6) of the
Rules by the Patent Appeal Board and by the Commissioner of Patents. The findings of the
Board and the decision of the Commissioner are as follows:






Agent for the Applicant

Cassan Maclean
307 Gilmour Street
Ottawa, Ontario
K2P 0P7 INTRODUCTION

[1] This decision deals with a review by the Commissioner of Patents of the Examiner's
rejection in a Final Action of patent application no. 2,195,252 entitled "System and
Method for Distributing Information for Storage Media". The Applicant is Navigation
Technologies Corporation. The inventors are John Ahrens, John Jasper, Joseph Kohler
and T. Russell Shields. The application relates to a system and method for updating
navigation systems installed in vehicles.

BACKGROUND

[2] The subject application was filed on January 16, 1997. It is based on a United States
priority application, no. 08/592,737, which was filed January 26, 1996.

[3] At the time of the Final Action, the application contained 33 claims. In the Final Action,
the Examiner identified the following defects:

claims 1-13 and 23-33 did not comply with section 28.3 of the Patent Act for
comprising subject matter that would have been obvious on the claim date to a
person skilled in the art;
claims 1-33 contravened section 2 of the Act for being directed to non-statutory
subject matter;
claims 1, 6, 14, 21, 22, 23, and 27 contravened section 84 of the Patent Rules
for not being supported by the description; and
claims 1, 14, 16, 20 and 23 did not comply with subsection 27(4) of the Act for
being indefinite.

[4] In a response to the Final Action, the Applicant replaced the claims on file with
amended claims 1-30, and presented arguments against the positions taken by the
Examiner.

[5] In a Summary of Reasons submitted to the Patent Appeal Board, the Examiner
indicated that the defects identified in the Final Action were applicable to the new claim
set, as follows:

claims 1-30 were obvious and did not comply with section 28.3 of the Patent
Act;
claims 1-30 were directed to non-statutory subject matter, ie, falling outside the
definition of invention as set out in section 2 of the Act;
claims 24 and 26 were not supported by the description and thus contravened
section 84 of the Patent Rules; and

claims 1, 13 and 15 were indefinite and contravened subsection 27(4) of the
Act.

[6] Accordingly, the rejection of the application was maintained.

[7] A hearing was held, at which the Applicant was represented by Mr. Allen Millard of
Cassan Maclean. Mr. John Cavar and Mr. Murray Wilson were members of the board at
that hearing, but they have since retired from the public service and were consequently
unavailable to sign the recommendation.

THE CLAIMS UNDER CONSIDERATION: 1-30

[8] The claims under consideration include six independent claims: claims 1, 24 and 26 are
directed to a system, claim 30 relates to a product, and claims 13 and 22 are method
claims. Independent system claims 1, 24 and 26 appear as follows:

1. A system for updating navigation systems installed in vehicles, said system being for use by
owners of said vehicles and for use with available subscription information, said system
comprising:

a plurality of local repositories accessible to owners of said vehicles and located in a
geographical area, wherein each of said plurality of local repositories includes updated
versions of navigation data for said navigation systems;

a program and data processing means for executing said program in each of said
plurality of local repositories, said program for determining entitlement to said updated
versions of navigation data based on said subscription information available to the local
repositories and version information included in said navigation systems; and

updating means for copying said updated versions of navigation data to storage devices
in said navigation systems.

24. A system for upgrading navigation systems, wherein each of said navigation systems is
installed in a vehicle and comprises a navigation application program and geographical data
information stored on a storage medium of said navigation system, said upgrading system
comprising:

a plurality of local repositories, wherein each one of said local repositories comprises:

updated versions of geographical data information stored on a storage medium
of said one of local repositories;

a means for communicating between said storage medium of said one of said
local repositories and said storage medium of said navigation system, wherein
said means for communicating facilitates copying the updated geographical data
information from said storage medium of said one of said local repositories to
said storage medium of said navigation system; and

a program that identifies the type of navigation system for which updated data is
sought, whereby updated data appropriate for said type of navigation system can
be selected for said copying the updated geographical data information from
said storage medium of said one of said local repositories to said storage
medium of said navigation system.

26. A system for updating navigation data stored on navigation systems installed in vehicles,
wherein each of said navigation systems includes identification information indicating whether
said navigation system is entitled to be updated, said updating system comprising:

a repository at which updated versions of said navigation data for said navigation
systems are stored; and

a plurality of local terminal stations accessible to owners of said vehicles and located in
a geographical area, wherein each of said plurality of local terminal stations comprises:

a communication link to said repository;

means for confirming entitlement of each of said navigation systems to be
updated, said confirming means responsive to said identification information on
each of said navigation systems; and

a device for updating one of said navigation systems with one of said updated
versions of said navigation data received over said communication link to said
repository, said updating device responsive to said confirming means.

[9] Independent product claim 30 reads:

30. A system for updating data stored on a storage medium, wherein said storage medium
comprises a hard drive and an EPROM, said data is stored on said hard drive, and said EPROM
includes information stored thereon indicating entitlement to said updating of said data.

[10] And independent method claims 13 and 22 appear as follows

13. A method of updating vehicular navigation data stored on storage media in vehicles, wherein
said vehicles include a plurality of different types of navigation systems, comprising the steps of:

providing a plurality of computers located in a geographical area, each of said plurality of
computers having a device that can read and write to one of said storage media;

removing one of said storage media from a vehicle;

placing said one storage medium into said device;

reading information stored on said one storage medium to determine which of said
different types of navigation systems is used by said vehicle from which said storage
medium was removed; and

updating the navigation data on said storage medium.

22. A method of updating vehicular navigation data stored on removable storage media
associated with in-vehicle navigation systems, wherein said vehicles include a plurality of
different types of navigation systems, comprising the steps of:

providing updated versions of navigation data on a server;

providing on-line access to said server for owners of said navigation systems via
respective personal computers associated with respective owners, said personal
computers communicating with said server;

removing a selected vehicle storage medium and inserting said selected vehicle storage
medium into said personal computer;

receiving information from said selected vehicle storage medium, wherein said
information includes data identifying the type of navigation system for which updated
data is sought; and

uploading updated versions of said navigation data from said server to said selected
vehicle storage medium.

ISSUES

[11] As stated above, the issues to be resolved are whether:

(1) claims 1-30 are obvious;
(2) claims 1-30 are directed to non-statutory subject matter;
(3) claims 24 and 26 lack support in the description; and
(4) claims 1, 13 and 15 are indefinite.

OBVIOUSNESS: THE LAW

[12] Section 28.3 of the Patent Act sets out the conditions against which a claim is
assessed in an obviousness inquiry:

28.3 The subject-matter defined by a claim in an application for a patent in Canada
must be subject-matter that would not have been obvious on the claim date to a person
skilled in the art or science to which it pertains, having regard to

(a) information disclosed more than one year before the filing date by the applicant, or
by a person who obtained knowledge, directly or indirectly, from the applicant in such a
manner that the information became available to the public in Canada or elsewhere; and

(b) information disclosed before the claim date by a person not mentioned in paragraph
(a) in such a manner that the information became available to the public in Canada or
elsewhere.

[13] In Sanofi-Synthelabo Canada Inc v Apotex Inc, 2008 SCC 61 [Sanofi], a decision
released subsequent to the Final Action in this case, the Court stated that it will be
useful in an obviousness inquiry to follow the four-step approach first outlined in
Windsurfing International Inc v Tabur Machine (Great Britain) Ltd, [1985] RPC 59 (CA),
and updated in Pozzoli SpA v BDMO SA, [2007] EWCA Civ 588. This approach reads
as follows:

(1) (a) Identify the notional "person skilled in the art";
(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be
done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the
"state of the art" and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those
differences constitute steps which would have been obvious to the person skilled in the
art or do they require any degree of invention?

OBVIOUSNESS: ANALYSIS

[14] In following the four-step Sanofi framework, it is understood that the exercise should
normally be carried out for each claim at issue. The board will commence with an
analysis of the independent claims in dispute, and next consider the narrower
dependent claims.

(1)(a) The person skilled in the art

[15] The identification of the relevant person of skill in the art (POSITA) serves several
purposes in regard to the application. It provides the lens through which the
specification is construed, and through which the questions of obviousness, statutory
subject matter, insufficient support for claims in the description, and ambiguity will be
considered.

[16] According to the Applicant, the POSITA is "a skilled workman in the art of vehicle
navigation systems": p 3 of Applicant's response to the Final Action; and the field of the
invention is "vehicle navigation systems and the updating of geographic data and
navigation application programs contained in such systems": p 7 of Applicant's
Memorandum of Oral Argument.

[17] However, after a careful reading of the specification and the claims the board is of the
view that the POSITA is not merely a skilled workman in the art of vehicle navigation
systems. As will be discussed in the following analysis, the subject matter of the claims
relates only minimally to technical aspects of navigation systems. The focus of the
specification, including the claims, is on various aspects of carrying on a business.
Accordingly the board considers the POSITA to be knowledgeable of vehicle navigation
systems, but also, as detailed below, versed in routine aspects of operating such a
business, both generally and in an electronic environment.

(1)(b) The relevant common general knowledge

[18] The common general knowledge of the POSITA in 1996 that is relevant to the subject
matter of the claims included knowledge of conventional vehicle navigation systems.
The knowledge also included common methods of transferring electronic information
from one location to another, including making a hard copy of the information on a
storage medium and physically delivering the storage medium to a recipient, or
downloading and uploading the information electronically using conventional devices
for reading data from, and writing data to, storage media using cables, wireless
technology or the Internet. Regarding the general business aspects of the invention, it
included knowledge of various payment methods, such as by individual transaction and
by subscription. As for the electronic business environment in particular, the common
knowledge included knowledge of services provided by businesses in the information
field, including provision of data, software and technical support, as well as methods of
facilitating and verifying payment for services rendered.

(2) The inventive concept of the claims

[19] Before considering the inventive concept of the individual claims, the board finds it
helpful to focus the exercise by first considering the problem(s) to be overcome and the
solution provided by the application. The only information on the record is that provided
by the Applicant's description. At p 3 of the description the Applicant states the
following with respect to problems in the prior art:

One problem associated with providing detailed geographical data for in-vehicle
navigation systems is that the data becomes out-of-date (i.e. geographical information is
"perishable"). For example, new roads are built, businesses change locations, road
construction closes roads, detours are established, museum and restaurant hours
change, etc. Another problem associated with navigation systems is that different
automobile owners may want to have different collections of geographical data. For
example, some automobile owners located in Chicago may want to have geographical
information about Wisconsin or Indiana. Other Chicago automobile owners might also
want to have information about California or Florida. Some automobile owners might
want data listings of restaurants, while others might want data listings of movie theaters
or businesses. Thus, not only does the information in the geographical data sets become
out-of-date, but the collections of geographical data sets in the in-vehicle navigation
systems of different vehicle owners may be significantly different. Another problem
associated with in-vehicle navigation systems is that geographical data files represent a
relatively large amount of data that needs to be updated. Still another problem
associated with updating in-vehicle navigation systems is that there are a number of
different navigation systems that are available, and that the navigation data and/or
formats may differ among at least some of the different navigation systems.

Accordingly, there is a need for a system and method for updating and distributing data
for in-vehicle navigation systems, such as updated geographical data or navigation
application programs.

Further, more generally, there is a need for a system that permits the updating of
consumer software products, as needed.

[20] At p 4 of the description the Applicant describes generally a proposed solution to said
problems:

To achieve the foregoing and other objectives and in accordance with the purposes of
the present invention, there is provided an improved method and system that provides
for distributing data for storage media, and in particular, the present invention provides
for the updating and/or upgrading of data, such as geographical data and navigation
application programs, used in in-vehicle navigation systems. A plurality of local
repositories are located in a geographical area. Each of the local repositories includes
updated versions of navigation data for the in-vehicle navigation systems. The
navigation data may include geographical data files and navigation application
programs. Owners of vehicles having in-vehicle navigation systems may visit any of the
local repositories from time to time to obtain updated versions of the navigation data for
their in-vehicle navigation systems. Subscriptions for obtaining updated navigation data
would be available to owners of in-vehicle navigation systems entitling them to obtain
updated navigation data from the local repositories. Procedures for updating the local
repositories are also provided. The system and method can be used for updating other
types of data and/or software.

[21] While the application relates to in-vehicle navigation systems, neither the description
nor the claims pertain to the technology behind how such navigation systems function.
Rather, the description and claims (except claim 30, as discussed below) focus on
systems and methods for providing updated data to such systems.

[22] At p 42 of the description the Applicant contemplate the invention having different
applications:

The embodiments of the system described above are particularly useful for distributing
updated geographical data sets for in-vehicle navigation systems used in automobiles.
However, the system could also be used to update other types of software or data,
including software for personal computers, computer game storage devices, etc.

[23] While the description discusses the invention in the context of updating in-vehicle
navigation systems, and the Applicant has (with the exception of claim 30) chosen to
limit the scope of protection being sought to updating such systems, the POSITA would
appreciate, as did the Applicant, that the type of data being transferred has no material
effect on the method for providing updated data to the system, and that almost any
type of data or program could be communicated using the claimed system. Therefore,
the particularity of the data recited in certain claims does not form part of the inventive
concept of those claims.

[24] Furthermore, the skilled person would appreciate that the particular type of system, ie,
an in-vehicle navigation system, recited in the claims (with the exception of claim 30)
has no material effect on the claimed method of updating data to the system, but that
the method could be effected for various systems, related to vehicles or otherwise.

The system claims

Claim 1

[25] The inventive concept of claim 1 is a system for distributing updated data to a
subscriber's system, comprising:

a plurality of local repositories containing updated versions of data;
means for determining entitlement to said updated versions of data based on
subscription information available to the local repositories and version
information included in the subscriber's system; and
means for copying the updated versions of data to storage devices in the
subscriber's system.



Claim 24

[26] The inventive concept of claim 24 is a system for distributing updated data to a user's
system, comprising:

a plurality of local repositories having a storage medium containing updated
versions of data;
means for copying the updated versions of data from the storage medium of
any of the repositories to a storage medium in the user's system; and
means for identifying the type of system for which updated data is sought, and
selecting updated data appropriate for said type.

Claim 26

[27] The inventive concept of claim 26 is a system for distributing updated data to a user's
system, comprising:

a repository containing updated versions of data;
a plurality of local terminal stations having a communication link to the
repository;
means for determining entitlement to said updated versions of data based on
identification information in the user's system; and
means for copying the updated versions of data from the repository, via a local
terminal station, to the user's system.

Product claim 30

[28] Claim 30 sets forth a storage medium comprising a hard drive and an EPROM, the hard
drive containing data and the EPROM containing information indicating entitlement to
receiving updated data.

The method claims

Claim 13

[29] The inventive concept of claim 13 is a method for distributing updated data to a user's
system, the method comprising:

providing a plurality of computers, each computer having a device for reading
and writing to a storage medium in a user's system;
removing the storage medium from the user's system;
placing the storage medium into the device;
reading information stored on the storage medium to determine the type of
system possessed by the user; and.
updating the data on the storage medium.

Claim 22

[30] The inventive concept of claim 22 is a method for distributing updated data to a user's
system, the user's system including a storage medium, the method comprising:

providing updated versions of data on a server;
providing on-line access to the server for system users via their respective
personal computers;
removing the storage medium from the user's system;
placing the storage medium into the personal computer;
reading information stored on the storage medium to determine the type of
system possessed by the user; and.
uploading an updated version of the data from the server to the storage
medium.

(3) Differences between the "state of the art" and the inventive concept of the claims

[31] In the Final Action and Summary of Reasons, the following references were cited:

Patents
US 5,327,066 issued 05 Jul 1994 Smith
US 5,278,759 issued 11 Jan 1994 Berra et al.
US 4,774,671 issued 27 Sep 1988 Itoh et al.

The Smith patent

[32] Smith discloses a system and method for dispensing electrical power to an electrically-
powered vehicle.

[33] The system includes a plurality of battery charging stations within a geographic area, a
central control centre, an authorization centre, means for dispensing electrical power to
an electric vehicle's battery, means for determining authorization to obtain electrical
power, means for initiating battery charging upon confirmation of authorization, means
for identifying the type of battery for which power is sought, and means for setting
parameters for charging the battery, such as voltage level or battery charging rate,
based on the type of battery identified.


[34] The means for determining authorization to obtain electrical power involves: (i)
computer means, including a storage medium, in the vehicle; (ii) computer means,
including a storage medium, at the battery charging station; (iii) detachable, bi-
directional data communication means between the vehicle and the charging station;
and (iv) bi-directional data communication means between the charging station and the
central control centre and between the central control centre and the authorization
centre,
whereby authorization is facilitated by providing information such as an account number
or a personal identification number (PIN). The information is stored on the storage
medium in a vehicle and is transferred to the station via the detachable data
communications means when connected to the vehicle. The data communications
means involves a direct electrical connection or a wireless connection. In alternative
embodiments, the information is provided to the station by inserting a card (such as a
conventional credit card, an ATM card, or a card issued by the power supply company)
containing a memory device into a card reader, or the information is inputted using a
keypad located at the station or in the vehicle (in the latter case the information is
transferred to the station via the detachable communications means). The information
is then transferred from the station to the central control centre and the authorization
centre via the communications means. In alternative embodiments, a local station
communicates directly with the authorization centre, or operates autonomously to
authorize a battery charge and to process the payment using the information stored on
the card memory.

[35] User-specific information (such as accounting-related indicia) is electronically
maintained within the vehicle, and is updated to include information received from the
battery charging station regarding each transaction, including an indication of the
dispensed power.

[36] In another embodiment, the system further provides for the transmission of additional
information between the central control centre, a charging station and a vehicle, such
as advertisements for restaurants and lodgings, and messages to and from occupants
of a vehicle.

The Berra patent

[37] Berra discloses a system and method for reprogramming on-board vehicle computer
systems controlling various systems in the vehicle such as the engine, transmission,
brakes, suspension, operator control panels and motorized seats. The system is
intended to be used as required in view of a diagnostic assessment of a vehicle's
computer systems typically carried out by a service technician at one of a plurality of
dealership locations.

[38] According to the background in Berra, a plurality of vehicle computers controlling the
various systems were typically connected in a bus structure to provide data
communications links between the computers. Diagnostic assessments of vehicle
computer systems were typically performed using an off-board diagnostic computer
connected to the bus in a vehicle via a detachable bi-directional communications
means.

[39] Berra's system for updating software programs for the on-board vehicle computer
systems includes: (i) storage means on the off-board diagnostic computer containing
updated versions of a plurality of software programs, each program controlling a
computer system in a vehicle; (ii) means for copying an updated version of a program
from the off-board diagnostic computer to a storage device in a corresponding
computer system on the vehicle; (iii) means for identifying the version of software
program stored on the on-board vehicle computer system; and (iv) means for initiating
copying of an updated version of the program when the version stored on the vehicle is
out of date but skipping the copying step when the version stored on the vehicle is up
to date.

The Itoh patent

[40] Itoh relates to an in-vehicle navigation system. This reference provides a general
background for such systems, describing one such system and how it works, but it
does not disclose a system and method for providing updated data to a system.

Summary of the state of the art

[41] Smith and Berra are both relevant to the problem to which the instant application is
directed in that they deal with providing updated information to a user's computer
system.

[42] The state of the art on the claim date thus included, regarding updating data on a
user's system:

a plurality of stations;
each station having a computer and a storage medium containing updated
versions of data;
means for copying the updated versions of data from a station's storage
medium to a storage medium of a user's system;
means for identifying the version of data stored on the user's system; and
means for initiating copying of an updated version of the data when the version
stored on the user's system is out of date, but skipping the copying step when
the version stored on the user's system is up to date.

[43] As for authorization of transactions prior to updating the data, the state of the art
included:

a plurality of stations;
each station having a communications link with a control centre and a
communications link with an authorization centre; and
means for authorizing a transaction based on identification information stored
on vehicle computer systems.

[44] Regarding storage media used in electronic devices in the computer industry, it is
apparent from the description, eg at p 22 thereof, that the state of the art included
conventional PC Card storage devices comprising a re-writable hard disk portion for
storing data and a re-writable EPROM memory for storing information concerning the
electronic device, such as manufacturer, serial number, part number, etc.

Differences between the state of the art and the inventive concept of ...

... Claim 1

[45] The difference between the state of the art and the inventive concept of claim 1 is that
the means for determining entitlement to the updated versions of data is based on
subscription information.

... Claim 24

[46] The difference between the state of the art and the inventive concept of claim 24 is the
means for identifying the type of system for which updated data is sought and selecting
updated data appropriate for said type.

... Claim 26

[47] The difference between the state of the art and the inventive concept of claim 26 is the
means for copying the updated versions of data from the repository, via a local terminal
station, to the user's system.

... Claim 30

[48] The potential difference between the state of the art and claim 30 is the particular
information stored on the storage medium indicating entitlement to the updated data.


... Claim 13

[49] The differences between the state of the art and the inventive concept of claim 13 are
the steps of removing the storage medium from a user's system, placing the storage
medium into a device for reading and writing data to a storage medium, and reading
information stored on the storage medium to determine the type of system possessed
by the user.

... Claim 22

[50] The differences between the state of the art and the inventive concept of claim 22 are
the steps of providing updated versions of data on a server, providing on-line access to
the server for system users via their respective personal computers, removing the
storage medium from a user's system, placing the storage medium into the personal
computer, reading information stored on the storage medium to determine the type of
system possessed by the user, and uploading an updated version of the data from the
server to the storage medium.

(4) Do the differences constitute steps that would have been obvious?

Claim 1

[51] As noted at ¦ 45, the difference between the state of the art and the inventive concept
of claim 1 is that the means for determining entitlement to the updated versions of data
is based on subscription information. This represents making an obvious choice from
among alternative payment methods well known to the POSITA in this case, choosing
the subscription model rather than, say, the transaction fee model followed by the
routine implementation of the means for determining entitlement using subscription
information. It would be apparent to the skilled person that there would be no difficulties
in enabling the particular means once it was decided to adopt the subscription model.
The lack of technical detail in the Applicant's specification with respect to this feature
supports the board's finding that enabling this feature was within the expected skill of
the POSITA. Thus, these steps would have been obvious to the POSITA on the claim
date.

Claim 24

[52] Regarding the difference identified at ¦ 46, the means for identifying the type of system
for which updated data is sought, and selecting updated data appropriate for said type,
this would be expected skill of the POSITA, who would be aware that different systems
have different system requirements. Further, it is analogous to means for identifying the
type of battery for which power is sought, and setting parameters for charging the
battery, such as voltage level or battery charging rate, based on the type of battery
identified, as disclosed by Smith. Accordingly, these steps would have been obvious to
the POSITA on the claim date.

Claim 26

[53] Regarding the difference identified at ¦ 47, the means for copying the updated versions
of data from the repository, via a local terminal station, to the in-vehicle navigation
system, this simply entails choosing from among a finite number of well-known
alternative ways of transferring information from one location to another. Obvious
alternatives on the relevant date would have included physically delivering a hard copy
of the information, and sending the information electronically using cables, wireless
technology or the Internet. Choosing any one of such alternatives, which were known
and would be easily enabled by the POSITA, cannot be viewed as inventive. These
steps would have been obvious to the POSITA on the claim date.

Claim 30

[54] Regarding the difference identified at ¦ 48, ie the particular information stored on the
storage medium indicating entitlement to the updated data, the skilled person would
appreciate that the identification information typically stored on storage media would
have been suitable for this purpose. Thus, this step would have been (at least) obvious
to the POSITA on the claim date.

Claim 13

[55] Regarding the differences identified at ¦ 49, the steps of removing the storage medium
from a vehicle and placing the storage medium into a device for reading and writing
data to a storage medium merely represent choosing from among a finite number of
well-known ways of transferring information electronically from the storage medium of
one device to another, and thus cannot be seen as inventive. As for the step of reading
information stored on the storage medium to determine the type of navigation system
used in the vehicle, this has been dealt with above with respect to claim 24. Taken
together, these steps would have been obvious to the POSITA on the claim date.

Claim 22

[56] Regarding the differences identified at ¦ 50, the lack of significance of the data relating
to in-vehicle navigation systems has been dealt with above at ¦ 22-24. Concerning the
steps of providing updated versions of data on a server, providing on-line access to the
server for owners of navigation systems via their respective personal computers,
removing the storage medium from a vehicle, placing the storage medium into the
personal computer, and uploading an updated version of the data from the server to
the storage medium, this merely comprises choosing from among a finite number of
well-known ways of transferring information from one location to another, as discussed
above having regard to claim 26. As for the step of reading information stored on the
storage medium to determine the type of navigation system used in the vehicle, this
has been dealt with above with respect to claim 24. Taken together, these steps would
have been obvious to the POSITA on the claim date.

The dependent claims

System claims 2-12 (dependent on claim 1)

[57] These claims include, in addition to the features of the inventive concept of claim 1, the
further features of specific details regarding the elements provided at the local
repositories (in particular, means for replacing defective storage devices from
subscriber's systems, slots for receiving storage devices, cabling for connecting to the
storage devices, means for updating the versions of data, personal computers, and
means for storing initial copies of data in subscriber's systems.

[58] These features, however, merely comprise the use of hardware and software well
known for the purpose of storing and transferring information electronically, which
cannot be viewed as inventive.

[59] Accordingly, these steps would have been obvious to the POSITA on the claim date.

System claim 25 (dependent on claim 24)

[60] The inventive concept of this claim includes, in addition to the features of the inventive
concept of claim 24, a verification system at the local repository to determine whether a
storage medium of a user's system is entitled to be updated. This feature has been
dealt with above having regard to claim 1. Taken together, these steps would have
been obvious to the POSITA on the claim date.

System claims 27-29 (dependent on claim 26)

[61] The further features set out in these claims pertain to the particularity of navigation data
being updated, which, as stated at ¦ 22-24, cannot be viewed as part of an inventive
concept in this case. Thus the inventive concepts of claims 27-29 are the same as that
of claim 26 and, accordingly, these claims would also have been obvious to the
POSITA on the claim date.

Method claims 14-21 (dependent on claim 13)

[62] The inventive concept of these claims include, in addition to the features of the
inventive concept of claim 13, the further steps of reading information on the storage
medium from the user's system to determine the version of the information contained
thereon, testing the storage medium for defects and replacing it if it is deemed to be
defective, updating the system application on the storage medium, and travelling to
each of the plurality of computers and updating each computer with information carried
thereto, and the further features of the storage medium including both a system
application program and a data set, the current data set being stored on each of the
plurality of computers, the current data set being updated periodically, and the current
data set being updated by an electronic communication connection to a remote
location.

[63] Regarding the step of reading information on the storage medium from the user's
system to determine the version of the information contained thereon, this merely
represents common practice where programs are periodically updated, as taught, for
example, by Berra.

[64] Concerning the step of testing the storage medium for defects and replacing it if it is
deemed to be defective, this would appear to be common-sense practice for any
business operating in an electronic environment, and cannot be viewed as inventive.

[65] As for the step of updating the system application on the storage medium, again, this
merely represents common practice where programs are periodically updated, as
taught, for example, by Berra.

[66] Regarding the step of travelling to each of the plurality of computers and updating each
computer with information carried thereto, this feature has been dealt with above
having regard to claim 26.

[67] As for the feature of the storage medium including both a system application program
and a data set, this merely represents a choice to include data sets on the same
storage medium as an application program. The POSITA would be aware that data and
programs could be stored on a single storage medium without having an effect on the
way it operated, and so making such a choice would not require invention.

[68] Concerning the features of the current data set being stored on each of the plurality of
computers, the current data set being updated periodically, and the current data set
being updated by an electronic communication connection to a remote location, once
again, these merely represent common practice for businesses operating in an
electronic environment, and cannot be viewed as inventive.

[69] Taken together, these steps would have been obvious to the POSITA on the claim
date.

Method claim 23 (dependent on claim 22)

[70] The inventive concept of this claim includes, in addition to the features of the inventive
concept of claim 22, the further step of receiving information from owners indicating
entitlement to the updated versions of data. This feature has been dealt with above
having regard to claim 1. Taken together, these steps would have been obvious to the
POSITA on the claim date.

OBVIOUSNESS: SUMMARY

[71] For the foregoing reasons, the board is led to the conclusion that the subject matter of
the claims 1-30 would have been obvious to the skilled worker on the claim date.

NON-STATUTORY SUBJECT MATTER

[72] Not all inventions that are useful, new and unobvious are entitled to patent protection.
Certain types of subject matter are excluded from patentability.

[73] 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.

[74] In the Final Action and Summary of Reasons, the claims were considered to
contravene section 2 of the Act based on an interpretation of Canadian jurisprudence
concerning the exclusion from patentability of professional skills. As stated in the Final
Action, the claims necessarily involved the intervention, actions or interpretive or
judgmental reasoning of a skilled professional in order to achieve the desired result of
updating the data in vehicle navigation systems, and the claimed subject matter was
unpatentable because it covered an area that was the prerogative of the skilled
professional.

[75] The Applicant argued that the claimed subject matter was not objectionable under
section 2 of the Act because, although the claims were partially reliant on human steps
(the remainder of the steps being performed by computer elements of the system), the
human steps required to achieve the result of providing updated data including
removing the storage medium from a vehicle and placing it into a device did not involve
professional skill or judgment, but were rudimentary in nature. Further, the result was
reproducible. (The latter point would appear to be relevant to the issue of utility, an
aspect of section 2 that is not in dispute in the present case, rather than statutory
subject matter.)

[76] Having considered the claims, in view of the description, the board finds that the human
steps set out (expressly or implicitly) in the claims do not render the subject matter of
the claims non-patentable. The claims do not purport to fence off an exclusive right
over an area for which professional skill or judgment is expected to be exercised, and
thus they are not objectionable on the basis of professional skills.

[77] However, in order to make a final determination with respect to the section 2 question,
the board will consider the most recent Canadian decision concerning patentable
subject matter in the area of computer-implemented inventions, Canada (Attorney
General) v Amazon.com Inc, 2011 FCA 328.

[78] In this decision, the Federal Court of Appeal stated, at ( 62-63:

[62] Schlumberger exemplifies an unsuccessful attempt to patent a method of
collecting, recording and analysing seismic data using a computer programmed
according to a mathematical formula. That use of the computer was a practical
application, and the resulting information was useful. But the patent application failed for
want of patentable subject-matter because the Court concluded that the only novel
aspect of the claimed invention was the mathematical formula which, as a "mere
scientific principle or abstract theorem", cannot be the subject of a patent because of the
prohibition in subsection 27(8).

[63] It is arguable that the patent claims in issue in this case could fail on the same
reasoning, depending upon whether a purposive construction of the claims in issue leads
to the conclusion that Schlumberger cannot be distinguished because the only inventive
aspect of the claimed invention is the algorithm a mathematical formula that is
programmed into the computer to cause it to take the necessary steps to accomplish a
one-click online purchase. On the other hand, it is also arguable that a purposive
construction of the claims may lead to the conclusion that Schlumberger is
distinguishable because a new one-click method of completing an online purchase is not
the whole invention but only one of a number of essential elements in a novel
combination. In my view, the task of purposive construction of the claims in this case
should be undertaken anew by the Commissioner, with a mind open to the possibility that
a novel business method may be an essential element of a valid patent claim.



Claims 1-29

[79] Having considered the guidance provided in the above passages, and having
purposively construed the claims in this case, the board finds that system claims 1-12
and 24-29, and method claims 13-23, comprise "a number of essential elements in a
novel combination": Amazon.com [FCA] at ( 63. The elements comprise technical
features and physical steps sequenced to achieve the practical result of providing
updated data to in-vehicle navigation systems. The computer limitations of the
elements are essential, ie, they can not be omitted, or substituted for mental means,
without having a material effect on the operation of the invention. Upon such a
purposive construction, the claimed subject matter is not excluded for being abstract,
since it comprises a physical embodiment, a mode of practical application. And it does
not relate to subject matter that is excluded from patentability as not relating to the
useful arts. Accordingly, claims 1-29 are directed to statutory subject matter.

Claim 30

[80] Claim 30, as presented, purports to define a "system for updating data stored on a
storage medium." However, the only elements set forth in the claim are those that
define the storage medium. As drafted, the claim contains insufficient elements to
deliver the promised result of a system for updating data stored on a storage medium. It
may be that the Applicant intended claim 30 to be a dependent claim, depending upon
one or more of system claims 1-12 and 24-29, but the claim has not been drafted this
way.

[81] As currently drafted, claim 30 is an independent claim setting forth a storage medium
comprising a hard drive and an EPROM, the hard drive containing data and the
EPROM containing information indicating entitlement to receiving updated data.

[82] If it is presumed that the purposively construed claim comprises "a number of essential
elements in a novel combination", the claim is directed to statutory subject matter (albeit
subject matter that is considered to be obvious, if not anticipated