Decisions of the Commissioner of Patents - Summary of decision number  441

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This table provides a summary of decision number 441

Decision Number 441
Application Number 104311
Date 1978-02-28
Patent Number n/a
CPC: 349-6
IPC:
Topics J10: SUBJECT MATTER OF APPLICATIONS - Computer Programs

Decision Text

COMMISSIONER'S DECISION

Section 2 of the Patent Act Well Logging Data Processing Methods - Computer Programs

The application relates to a method for processing well logging data employing computer programs. The claims were refused as being directed towards non-statutory subject matter under Section 2 of the Patent Act. It was decided that computer programs expressed in any and all modes, where the novelty lies solely in the program or algorithm are not directed to patentable subject matter.

Final Action: Affirmed.

This decision deals with a request for review by the Commissioner of Patents of the Examiner's Final Action dated August 13, 1975, on application 104,311 (Class 349-6). The application was filed on February 2, 1971, in the name of Christian M. Clavier et al, and is entitled "Well Logging Data Processing Methods." The Patent Appeal Board conducted a Hearing on September 7, 1977, at which Mr. D. Hill and Mr. V. Marston represented the applicant. Also in attendance was Mr. B. Carpenter of Schlumberger, Ltd., U.S.A.

This application relates to methods for processing well logging data which comprises deriving measurements of a plurality of earth formations parameters and combining these measurements in a new manner to enable interpretation of shales and shaly sand type formations. These measurements are derived from an apparatus lowered in a borehole for investigating subsurface earth formations. The measurements are then combined in a manner to produce useful data.

In the Final Action the examiner held that "the claims on file are rejected as being directed towards non-statutory subject matter under Sections 2 and 28(3) of the Patent Act. He also stated that "the application is refused." In that action he said (in part).

Subject matter directed to a computer program wherein the result of the manipulation of data by a general purpose computer is mere data is not patentable. Such subject matter is the result of the application of the skill of a programmer. That is, the program is developed without reference to the specific apparatus such as shift registers, and gates etc, which comprises the computer. The program is developed by the application of the skill of the programmer who deals entirely with the manipulation of data within the constraints of the particular programming language he is utilizing. This is distinct from subject matter derived from the application of technical skill to a computer considered as an assembly of components the properties of which are taken into consideration in the derivation of a new use for such apparatus to provide an unexpected result which may be the subject of a valid patent.

The result of a programmer's skill is a flow chart and a series of instructions which may be applied to a compiler to derive machine instructions suitable to control a particular general purpose computer. The result of the programmer's effort in Fortran or Cobol, with corresponding flow charts may be applied to different compilers to derive different machine level programs applicable to computers composed of different hardware components. It is clear, therefore that a programmer does not direct his skill to the derivation of new methods of controlling specific apparatus. Rather a programmer derives an algorithm expressed in Fortran or Cobol language without reference to any particular apparatus.

The application is considered to be directed to nonpatentable subject matter. Page 8 of the disclosure states "The resulting magnetic tape" (on which is recorded digital data derived in accordance with inference patents referred to on lines 7 to 18 of page 8) is either camped or transmitted via telemetry to a digital computer 27 which is programmed in accordance with the teachings of the present invention to process the data. Page 56 lines 3 and 4 states "Figures 18 to 23 are programming flow diagrams" representing one embodiment of the invention". The subject matter of the application is therefore directed to a computer program for a general purpose computer merely for the purpose of manipulating digital data. This is evident from the disclosure wherein the computer is referred to only as a general purpose computer and the claimed subject matter is described in terms of flow charts which are the result of programming skill.

The claimed subject matter whether in the form of machine operated method of processing data (claims 1-44) or a method of transforming signals representative of data (claim 45) are considered to embody non-statutory subject matter within the meaning of the fifth part of Section 2 of the Patent Act since the sole support for the claims is the computer program described in the disclosure in the form of programming floe charts.

It is acknowledged that a computer programmed in a certain way is a machine different from the same computer programmed in a different way. However the Waldbaum decision goes on to state, as noted on page 3 of the applicant's letter of April 17, 1975 in relation to claims 14 and 15, "On the one hand, the discovery that a known thing can be used for a useful purpose for which it has never been known before is not alone a patentable invention, but on the other land, the discovery of how to use such a thing, for such a purpose will be a patentable invention if there is novelty in the mode of using it as distinguished from novelty of purpose."

The substance of claim 14 allowed in the Waldbaum application to which the applicant referred is directed toward a new use for a computer. As may be seen from pages 4 and 5 of the Waldbaum case (now Canadian Patent 909,386) the J register which was formerly used to store the address of an instruction is used by Waldbaum to perform a counting function. Thus, the mode of operation of the computer apparatus was modified to provide a new use meeting the second condition required for patentability noted above. No corresponding new use for the computer apparatus has been disclosed by the applicant. Although every novel program of necessity creates a new use for a general purpose computer, such a new use may not have resulted from the exercise of technical skill applied to computing apparatus but may be merely the exercise of programming skill wherein a programmer expresses an algorithm in the form of a series of instructions having regard only to the rules governing the use of particular machine language.

The applicant states in paragraph 2(1) on page 3 of the above noted attorney's letter that "The invention is claimed as a machine operated method of processing well logging data, not as a new use for a computer". The primary use of a computer is the processing of data. The type of data is immaterial, the main criterion is that the data is capable of mathematical manipulation in accordance with the particular program developed. The mere inclusion of the primary step of deriving the input data by a well known process does not delineate the subject matter of the claims from the use of a computer especially since the result of the process is as in the case of a computer operation merely data information.

With regard to paragraph 2(2) the applicant appears to argue that his "best mode of practicing the invention might well be qualified as a patentable new use of a known general purpose programmable computer". It is evident from the disclosure that the general purpose computer employed by the applicant operates in its normal expected mode, that is, each component thereof performs its normal expected function for which it was designed. The disclosure and claims therefore are directed toward mere novelty of purpose only rather than a new mode of computation.

It is agreed that the applicant is required to fully disclose only one embodiment of an invention. however, such disclosure must be directed to statutory subject matter.

The substance of the claimed subject matter is considered to be expressable as an algorithm. An algorithm is defined in "Vocabulary of Information Processing" published by the American National Standard Institute as "a prescribed finite set of well defined rules or processes for the solution of a problem, in a finite number of steps".

Subsequent to the Final Action the applicant submitted some 46 pages of arguments in several responses, including the written arguments submitted at the Hearing. He has also proposed additional claims 46 to 54 and claims XI to X9 for consideration. In his response of February 13, 1976, the applicant outlined the main submissions he would make in support of the patentability of the claims, which are:

(a) That the Commissioner of Patents has recognized in Waldbaum [In re Waldbaum, The Patent Office Record, Vol. 100, No. 3, Jan. 18, 1972] that a computer programmed in one way is a machine which is different from the same computer when programmed in another way, and that such subject matter is patentable.

(b) That the Examiner is in error in stating that the subject matter defined by the claims of record herein can fairly be characterized as a mere "computer program".

(c) We will respectfully submit that the Examiner's reading of the Waldbaum decision places on it a more restricted interpretation of the principle to be inferred from it than is justified by the facts set out in the decision. More particularly, it will be submitted in Waldbaum there was no question of structural changes being made to a computer and in fact that the various parts thereof still operated in their normal intended way when due regard is had to the fact that a programmable device was involved.

(d) The applicant's invention as claimed is not directed to a computer program per se but on the contrary defines a true process or method comprising a series of operational steps characterizing the performance of such process or method, the steps in question being performed automatically by a machine which may, but not must, be a programmable general purpose computer.

(e) That interpretation of the word "computer" should not be confined to the hardware unit only, before it is programmed since, without a program, such a "computer" is useless. On the contrary, the term "computer" should in the circumstances be interpreted as a device which is either originally designed or has been programmed to carry out a specified series of steps.

(f) The subject matter defined by applicant's claims is not a mere "scientific principle or abstract theorem" which would bring such claims within the prohibition of Section 28(3). On the contrary, the claims define subject matter relating to well logging having a practical application for a useful purpose which put them within the scope of "invention" as defined with Section 2(d) of the Patent Act.

(g) Applicant will submit, as argued in the response of April 17, 1975, that for the purposes of practical utility, specific apparatus has been disclosed in this application because once loaded with a program embodying the principles disclosed in the specification with the aid of the detailed explanatory flow charts, a commonly available general purpose computer becomes physically specific to the claimed process and thus meets the criteria set forth in the Waldbaum decision.

(h) The disclosure of flow charts and the related description herein are sufficient to enable a person skilled in the art to construct either a suitable special purpose or general purpose computer capable of carrying out applicant's methods.

(i) In support of the foregoing issues, applicant will refer to the Waldbaum decision and the cases referred to therein. Reference will also be made to a more recent decision of the U.K. Patents Appeal Tribunal in Burrough's Corporation (Perkins) Application 1974 R.P.C. 147.

At the Hearing Mr. Hill argued vigorously that the claims were indeed directed to patentable subject matter. The pertinent British jurisprudence was discussed thoroughly, and great reliance was placed on it as supporting allowance of the claims. The applicant also relied heavily on the "Waldbaum Decision", supra, an earlier decision of the Commissioner of Patents on com- puter programs.

In the Waldbaum case it has been argued, where ingenuity is present, that:

1. Claims to a computer program per se are not patentable;

2. Claims to a new method of programming a computer are patentable;
and

3. Claims to a computer programmed in a novel manner are patentable.

In view of more recent developments in the patent law as it affects computer programs, we think it now important to reassess those conclusions. To clarify the uncertainties which developed since Waldbaum is indeed difficult because there has been so much litigation in many different countries, unfortunately not always with consistent results.

We believe some general explanations are in order before we proceed with our consideration of the problem before us.

A computer program may be thought of as that portion of computer ware which may he written or printed on paper in an alphanumeric source language, magnetically recorded on tapes, or used with punch cards in computer acceptable form. In other words it provides the working directions for the computer hardware.

A computer for our purposes is a device which is programmed to carry out a specified series of steps, but generally speaking it is the hardware itself which is usually referred to as "the computer," or "computing apparatus."

An algorithm is, in general, a set of rules or processes for solving a problem in a finite number of steps.

In our view the basic reason why the program itself is not patentable is that a program is analogous in form to printed or design matter, and if the novelty lies solely in the intellectual connotations of the printed or design matter, it is not patentable. On this point we refer to British Petroleum Co. Ltd.'s Application, Official Journal of Patents, (1968), where it was stated: "...the intellectual content of a punched tape [computer program] is clearly not patentable...."

What happens in the main is that a typical program-related application poses a problem. It describes the development of an algorithm to solve that problem, converts the algorithm to a computer program per se, and then the claims are couched or clothed in obscure language designed to ward off objections that the application is directed to an algorithm or computer program. In our view the development of algorithms and computer programs, however difficult, is nothing more than the expected skill of a programmer and therefore not patentable, Assuming arguendo that a programmer has used his creative skill in designing a specific unobvious program, the novelty lies solely in the intellectual connotations of the printed matter and is not, in our view, patentable. Many matters involving great creativity are just not encompassed by Section 2 of the Patent Act.

At the Hearing Mr, Hill stated that he did not find that the related United States jurisprudence gave "a clear message one way or other" to answer the problem before us. But because the Waldbaum decision, supra, relied on some of the earlier United States decisions, we think we should discuss these now. Particularly since Section 2 of the Canadian Act is similar to and is based upon the corresponding Section 101 (Code 35) of the United States Patent Act.

The history of the treatment in the United States of computer programs/ algorithms can be followed from the numerous court decisions on the subject, among which we find the following:

(1) In re Prater and Wei- (159 USPQ 583) 20 Nov. 1968. Claims defining essentially an algorithm were allowed since the US/CCPA (Court of Customs and Patent Appeals) held that. as the law did not require a machine to act upon physical substances to be patentable, it was not consistent to impose such a requirement upon a process. Patent protection could not be denied simply because process claims could be read on a process carried out in the mind by the use of such aids as pencil and paper. The court held that so long as a sequence of steps capable of being performed without human intervention and directed to an industrial technology were disclosed, claims could be allowed even if they also read on a mental method.
(2) In re Prater and Wei (162 USPQ 541) 14 Aug. 1969. The US/CCPA held that apparatus and process claims broad enough to encompass the operation of a programmed general-purpose digital computer are not necessarily unpatentable; once a program has been introduced, the general purpose computer becomes a special purpose computer, which, along with the process by which it operates, may be patented subject to requirements of novelty, utility and nonobviousness. The disclosure of apparatus for performing a process wholly without human intervention shows that the disclosed process does not fall within the "mental steps" exclusion.

(3) In re Bernhart and Fetter (163 USPQ 611) 20 Nov. 1969. The US/CCPA held a machine programmed in a new and unobvious way is physically different from a machine without the program. It is improper to hold that if novelty is indicated by an expression which is not in a statutory class, then the whole invention is non statutory since all else is old. The court cannot deny patents on machines merely because their novelty may be explained in terms of mathematical or physical laws.

(4) In re Benson and Tabbot (169 USPQ 548) 6 May 1971. The US/CCPA rejected the contention that a data processing method was non patentable subject matter on the ground that the programmable computer was merely a tool of the mind and the method was basically mental in character. A data processing method was not considered non statutory where it consists of steps which can be carried out by machine implementation as disclosed in the specification. The process had no practical use other than in a digital computer.

(5) Gottschalk (Commissioner of Patents) v. Benson, 20 Nov. 1972, (175 USPQ 673) U.S. Supreme Court. Although the reasons for judgments in this case are not too definitive we find that the U.S. Supreme Court held that since the mathematical formula involved had no substantial practical application except in connection with a digital computer, a patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. In other words the claims were not limited to a particular novel apparatus and are not confined to a specific end-use of field of technology. Since one may not patent an idea the U.S. Supreme Court in effect overturned the US/CCfA decision In re Benson and Tabbot (169 USPQ 548).

(6) In re Christensen (178 USPQ 35) 31 May 1973. The claims were directed to a method of determining the sub-surface porosity of an earth formation in situ. Data was gathered from a borehole and processed in a digital computer according to applicant's algorithm. The US/CCPA held that claims to a method including known and necessary data gathering steps and a final step of solving a mathematical equation were directed to non statutory subject matter

(7) In re Johnston (183 USPQ 172) 19 Sept. 1974.
The claims were directed to a computer system which kept track of classes of transactions and grouped and printed out such transactions on a customer statement. The US/CCPA held that the claims were not for a method of doing business, nor would the claims restrict others from using the algorithm. The U.S. Patent Office appealed to the Supreme Court in Dann v. Johnston (of following decision).

(8) Dann v. Johnston (189 USPQ 257) 12 May 1975
The U.S. Supreme Court overturned the US/CCPA. The claims were held to be obvious in view of prior art, which was the normal manual methods of record keeping. The Supreme Court however, refused to address itself to the question of non statutory subject matter.

(9) In re Chattfield (191 USPQ 730) 18 Nov. 1976.
The claims were directed to a method including gathering data for a predetermined time, evaluating data, and controlling a computer to selectively process one of several programs. The CCPA held that the claims were not directed to a particular algorithm or program and that the algorithm was incidental. The claims were held patentable, but two of the five judges registered strong dissenting opinions, relying on Gottschalk v Benson, supra.

(10) In re Noll (191 USPQ 721) 18 Nov. 1976.
Apparatus claims were directed to scan converting to the taped data by means of a computer and reading out the converted data to raster scan a CRT (cathode ray tube). The sole novelty resided in the program for converting in the computer. The CCPA held that the claims were to apparatus in a particular technology and did not pre-empt the algorithm. The CCPA held here, as well as In re Chattfield, that it was improper to disect a claim to find what is novel, then if such novel portion was unstatutory to reject the claim. Again two of the five judges dissented vigorously.

(11) Re Noll and Re Chattfield (of above).
The U.S. Patent Office attempted to appeal both cases, but was denied a writ of certiorari due to elapsed time limits, and withdrawal of one party.

(12) In re Deutsch (193 USPQ 645) 5 May 1977.
The claims were directed to a method of operating a system of manufacturing plants, utilizing a programmed computer. The CCPA decided that the program was incidental and the claims were allowable.

The claimed invention was held to not pre-empt a mathematical formula, algorithm or program per se when considered as a whole.

(13) In re Waldbaum (194 UPSQ 465) 28 July 1977
This dealt with the U.S. counterpart o the Canadian Waldbaum application. Similar claims were first allowed by CCPA prior to the Gottschalk v. Benson case but then the CCPA reversed itself and held that the claims would in offect be claims to the algorithm itself.

(14) In re Flook (195 USPQ 9) 4 Aug. 1977.
The claims were directed to a method whereby a computer was programmed to process data from a catalytic hydrocarbon process, and periodically reset alarm levels. The claimed method consisted basically of the steps of reading parameters, calculating new alarm values, and adjusting the alarm limits. The CCPA held that the post algorithm solution activity of adjusting the alarm limits removed the claims from the category of claiming an algorithm to merely using the algorithm.

The U.S. Patent Office has obtained a Writ of Certiorari from the U.S. Supreme Court to review this decision (Parker v. Flook ho. 77-642 Nov. 1977).

(15) In re DeCastelet(195 USPQ 439) 6 Oct. 1977
The claims were directed to a method of generating curves from data supplied to a programmed computer. The computer output could be used to control a drafting or milling machine. There was no recitation of a specific algorithm, equation, or formula but an algorithmic process was involved. The CCPA held that post algorithm solution activity must show the method only uses an algorithm and does not pre-empt it.

It was held that the claims only defined the processing of data and not merely the use of equations as one step in achieving some other result. The computer in the claimed method only transmitted electrical signals representing results, and this was not considered to be the type of post-algorithm solution activity needed to overcome Gottshalk v. Benson.

(16) In re Richman (195 USPQ 340) 6 Oct. 1977.
The claims were to a method of determining radar boresight calibration and velocity vector determination. The claims included a novel data gathering step and a final step of solving a mathematical equation. The CCPA held that the novel, and necessary, data gathering steps did not make the method patentable. It was also held that whether the claimed method was essentially a mathematical calculation was decisive even if it was expressed in words rather than formulae.

It can be seen that, prior to the U.S. Supreme Court decision in Gottschalk v. Benson, the CCPA was developing a position that computer programs and algorithms were statutory subject matter for a patent, provided that they were directed to a particular technology and limited to machine processing, and met the reduirements for novelty and unobviousness. This position was based largely on the argument that a general purpose digital computer programmed in a particular way was a different machine from a computer not so programmed. The position of the CCPA following Gottschalk v. Benson then appeared to develop along the lines that claims to an algorithm were to statutory subject matter provided that:

(a) the algorithm was incidental to the claimed method; and

(b) there was some post-algorithm solution activity which stowed that the algorithm was merely used and not pre-empted.

This position was further amplified to exclude the mere outputting of data to known user apparatus, from the type of post solution activity envisaged. Old or new necessary data-gathering steps were also excluded as a type of activity which would confer patentability upon a claim including an algorithm.

The present position of the CCPA may be summarized as follows:

Claims which are essentially directed to a mathematical calculation or which describe an algorithmic process and which effectively pre-empt the algorithm are directed to non statutory subject matter, unless such claims include post algorithm solution activity which shows that the algorithm is merely being used. Data gathering steps and the outputting of data to known user devices do not convert the claims to patentable form.

We wait with interest, however, the outcome of the U.S. Supreme Court devision In re Flook. If that Court follows what we understand to be the rationale of their previous decision In re Benson, supra, the CCPA would, we believe, be overruled.

Several appeals to the U.K. Patent Appeal Tribunal have established the U.K. position on the allowability of algorithms or computer programs.

(1) Badger Co. Inc's Application 1970 RPC 36 at p.40 27 Feb. 1968. Applicants claimed a method of mechanically designing and forming a visible drawing illustrating a piping system wherein data was fed to a computer and the computed data was finally converted into a visible drawing using known apparatus. The Patent Appeal Tribunal held that the claim was not framed in an appropriate manner to fall within the meaning of the Act, but that claims of a certain form might be allowable. The Tribunal therefore looked to the form of claim rather than the substance. Claims of the form appearing in the Canadian Waldbaum patent, was the eventual result.

(2) Slee and Harris Applications (1966 RPC 194) 25 Nov. 1965.

Applicants claimed a method of operating a computer in a program entailing a number of operations, characterized in that one operation was initiated before the previous one was finished. The patent office objected that this was not a manner of new manufacture. The Patent Appeals Tribunal held that claims in the form of "a computer when programmed to operate" as above, and "means for controling a computer to operate" as above would be allowable. Thus the Tribunal directed its attention to the form of claims ratherthan the substance. This resulted in the allowance of claims of the type eventually appearing in the Canadian Waldbaum application.

(3) Gever's Application (1970 RPC 91) The main claims were directed to a method of preparing mechano-graphically an index of word trade marks using punched cards. The application was refused as being to a scheme or plan which was non statutory subject matter. The Patent Appeal Tribunal held that claims to a means for controlling a computer to carry out the above process were patentable. The form of the claims was again decisive.

(4) Burroughs Corp. Application (1974 RPC 147) 30 July 1973 A method of transmitting data over a communications link between a central computer and peripheral computers. The claims were refused as non-statutory. The Patent Appeal Tribunal held that if a claim was clearly directed to a method for using a computer modified by a program to operate in a new way, it was statutory, and that computer programs when embodied in physical form are proper subject matter for a patent. So long as the program is couched in terms of means it is allowable.

It is clear that in the U.K. if claims to algorithms and computer programs were drawn up in a particular format, they were considered to be allowable. We, however, are not satisfied that the applicability of the British jurisprudence is controlling as regard to subject matter under Section 2 of the Patent Act in Canada (vide, Hoffmann-LaRoche v The Commissioner - 1955 - S.C.R. 414 and Tennessee Eastman v The Commissioner - 1972 - 8CPR, 202). We also note that the Canadian Patent Act was not modelled after the British Act.

In addition to considering the legal requirement to follow British jurisprudence, the desirability of doing so should also be considered. In this regard a British Committee to examine the patent system and patent law (the Banks Report Cmnd No. 4407) stated in 1970:

A computer program in the sense of a set of instructions far controlling the sequence of operation of a data processing system, in whatever form the expression is presented, e.g. a method of programming computers, a computer when programmed in a certain way, and wherein the novelty or alleged novelty lies only in the program, should not be patentable [emphasis added].

Furthermore, we find that the new British "Patents Act" 1977, Chapter 37, fart 1(2) refers to tinings which "are not inventions", and reads:

c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer [emphasis added];

d) the presentation of information; ...

The continental European jurisdictions generally deny computer applications. For example, the Austrian courts have been confronted with program patents and applications in three cases, all of which were rejected (see, for example, Austrian Patent Office Appeals Division, Dec. 12,1967-1968 O Pat B1.39). The French Patent Laws of 1970 exclude computer programs explicitly from patentable subject matter. In Switzerland and The Netherlands, software is dismissed as a "mental process" (see, for example, Swiss Federal Supreme Court "Dimensional Synthesis", December 12, 1972, S-11C 448, 1974). Germany does, however, allow some form of claims involving computer programs.

In article 52(2) c) and d) of the "Convention on the Grant of European Patents," we also find substantially identical restrictions as in the British Act, supra.

Among the common law countries, Australia is an outspoken opponent of patent protection for computer programs. That attitude is reflected in its decisional law. In all three decided cases,(see for example, N.V. Philips Gloeilampen- fabrieken, 36 Official Journal of Patents, Trademarks, and Designs 2392 [1966]), patentability was denied.The Practice there represents the approach recommended by the "Banks Report" supra. They were concerned with the only novelty being the mode of operation and the restraining effect on the owner of a computer to use it in the most efficient way, after having invested large sums of money in its acquisition.

In Canada itself the Economic Council has reached the conclusion that "patent protection of computer programs would not be appropriate" (Report on Intellectual and Industrial Property, Jan. 1971, p.103). That was reflected in the Departmental Working Paper on Patent. Law Revision, June 1976, which at p. 180 sought to ensure that "all avenues for obtaining patient rights over computer programming techniques will be closed " (emphasis added),

As mentioned before, at the Hearing Mr. Hill placed heavy emphasis on the earlier Canadian Waldbaum decision, supra. We must remember however, that the walbaum decision allowed claims directed essentially to an algorithm or computer program, relying principally upon the U.S./CCPA decision In re Bernhart and Fetter. Subsequent U.S./CCPA and U.S. Supreme Court decisions severely limited the holding In re Bernhart and Fetter. For example, the U.S. Supreme Court in Gottschalk v Benson, supra, found, inter alia, that patents for processes applying scientific principles or ideas have been upheld only when: (1) the process was carried out with a specific apparatus devised to implement the newly-discovered idea, and (2) the claim to a monopoly was confined to a specific end-use or field of art or technology. Because the claims in that decision were not limited to a particular novel apparatus and to a particular end-use or technology, the U.S. Supreme Court held that they amounted to claims to the algorithm itself and thus were unpatentable under 35 U.S.C. 101. In that decision it was also argued that a process patent must either be tied to a particular machine or apparatus, or must operate to change articles or materials to a "different state or thing." Furthermore, as noted, the counterpart of Waldbaum in the United States was refused, the second time around, by the CCPA itself.

It is also settled law in Canada that where a patentable advance has been made in some technical art in the form of an idea or concept, then the claims may take the form of a novel practical embodiment of the idea or concept. (vide, Canadian Gysum Co. Ltd. v Gypsum Lime (1931) Ex. C.R. 180 at 187). This embodiment must, of course, be described in the disclosure. But the exclusive right granted must be limited to embodiments of the idea or concept, or invention that was made (vide, Farbwerke Hoechst A.G, v Commissioner of Patents (1902.) 22 Fox Pat. C. 141 at 169). In other words the claims must characterize the invention made while defining the limits of the monopoly grant.

In the applicant's submission of August 24, 1977, pages 9 to 11 there is an argument based on Waldbaum which assumed that to be a binding precedent. On that point, inter alia, it was stated:

The Examiner chooses to define applicant's claimed invention as directed to a computer program. With respect however, applicant submits that the subject matter of claims 1 and 45 (as well as that of claims X1 to X9 submitted herewith) is directed to a true process or a method comprising a series of operational steps characterizing; the performance of the process or method. These steps as claimed are performed automatically by a machine which may, but not must, be a programmable general purpose computer.

Implicit in this rejection is the Examiner's view that applicant's invention is limited to a series of instructions for a general purpose computer, i.e., a static list of orders applicable to a given type of machine, albert a general purpose one. The applicant does not intend so to qualify his claims. There is no claim to the loading of a program in a general purpose computer which, as we have seen, is a technique for completing the construction of one type of machine which may be used to perform the invented method. What is claimed is a method which performs the indicated series of steps, even if the method involves the use of apparatus modified as programmed to operate in a new way.

We submit that the Examiner's characterization is arbitrary and, in the circumstances, not justified. So also is the attempt to isolate the allefed "intellectual" component in the claimed method while ignoring that as a whole the method is a physical operation relating various inputs to one or more outputs.

One statement in the penultimate paragraph of the Final Action is particularly illustrative of this apparent misconception. It contends that "the method claims are a machine implementation of a process which could be carried out by mental steps, albeit such a normal procedure would not be commercially practical". That the intellectual substance of the steps of a method could be performed by man without the help of a machine is not proof of unpatentability. There is disclosed and claimed a method performed by a machine with steps which are typical of a machine and do not at all simulate or duplicate the operation of a human brain. The only analogy with a human being may reside in the similarity of purpose of some steps, not in the way they are performed, and this is true soith many inventions including Waldbaum's. Indeed, the method claimed by Waldbaum is a machine implementation of a process which could in principle be carried out by mental steps only and the definition of an algorithm given by the Examiner fits the Waldbaum technique perfectly.

This limited view of the Waldbaum decision is manifested in another respect. While the Commissioner specifically acknowledged in Waldbaum the general principle that a computer programmed in a different way is a different machine, the Final Action is expressed in terms which suggest that such principle must be restricted to cases where a patentable new use can be found in the invention. Applicant respectfully submits that no such restriction can be found in the Waldbaum decision.

We are not satisfied, for the reasons given earlier, with all aspects of the Waldbaum decision because of more recent jurisprudence. For example, we are not satisfied that programming a computer in a particular way produces a new computer or indeed changes the computer in any way. It merely creates a temporary condition. A computer is inherently capable of performing a number of operations and in a particular sequence. No program can make a computer do something which it is not inherently capable of doing, because it is evident that general purpose digital computers are designed so that they are capable of responding to any program that can be devised to operate within the physical restraints of the machine. This is in fact the rationale in designing general purpose digital computers. Generally speaking programs are a kind of product that any competent programmer could produce, as a matter of course, using his normal skills. When a new program is produced nothing but intellectual information has been added to what previously existed. In our view any claim directed to it is not patentable, irrespective of whether the claim is directed to written instruction on how to operate a machine, or to an information carrier.

Section 2 of the Patent Act provides for a patent to be issued to one who invents subject matter that comes within one of five concrete statutory classes: art, process, machine, manufacture or composition of matter. It might appear from this language that any development that could possibly be characterized as a method of doing anything would be statutory subject matter. But, as the examiner has correctly pointed out,under Section 28(3) of the Patent Act certain types of developments (for example, mere scientific principle or abstract theorem) have never been considered as patentable subject matter. An algorithm, as mentioned is a set of rules or processes for solving a problem in a finite number of steps, and in general can be equated to an abstract theorem.

It is clear however, that where an invention has been made in "a process control system," where a program is merely an incidental part of the system, it will not be objectionable. In a process control system you must however, have novel apparatus tied to a computer which controls a function at the end of a computer. In such a case the invention is not predicated solely on the novelty of the program.

We would also like to discuss Mr. Hill's submission of August 24, 1977, and the same points raised at the Hearing. At page 2 it is stated that the process relates to the processing of well logging data, and is not a computer program per se. However, the method of processing data in a digital computer is in reality a computer program, or if broadly defined is an algorithm. A knowledge of geophysics was required to define the problem and the mathematical relationships between the various parameters, but to go from there to an algorithm or program is the task of a program analyst, and involves the normal expected skill of such a person.

On page 6, Mr. Hill argues that the disclosure is sufficient to support claims to a special purpose computer. The flow charts etc. of the specification are merely a definition of the idea of how to carry out the method. Section 36(1) however, requires a full, clear, concise and exact disclosure to allow any person skilled in the art to make and use the invention. It is not in our view adequate disclosure to merely disclose an idea and a general purpose computer program, and then to say it could be done by specific apparatus. We will have more to say on this point when we discuss the claims pertinent to it.

On page 7, the argument that a general purpose computer and a special purpose computer are basically the same in physical nature, is obviously an extension of the Bernhart and Fetter argument, supra, that a programmed machine is physically different from an unprogrammed machine. We do not accept that argument.

In the last two paragraphs of page 11, it is argued that the claims are not directed to a series of instructions for a general purpose computer. This argument rests on the assumption that the term "computer program" is limited to the actual series of steps that ultimately control the computer. "Computer Program" also includes broad statements of the method used to solve applicant's problem. Perhaps it would be clearer if when making a rejection the terms "computer program" and "algorithm" were used together, since the dividing line is hazy.

Pages 12 to 21 deal exclusively with British jurisprudence which we maintain is not applicable in defining Section 2 of the Canadian Patent Act. Furthermore, that jurisprudence may now not be persuasive in view of the changes made in the new (1977) "British Patents Act," supra.

We previously pointed out that in the Waldbaum case it has been argued, where ingenuity is present, that:

1. Claims to a computer program per se are not patentable;
2. Claims to a new method of programming a computer are patentable; and
3. Claims to a computer programmed in a novel manner are patentable.

To state our position now, taking into account the developments since Waldbaum, it is:

1. Claims to a computer program per se are not patentable;
2. Claims to a new method of programing a computer are not patentable;
3. Claims to a computer programmed in a novel manner, expressed in any and all modes, where the novelty lies solely in the program or algorithm, are not directed to patentable subject matter under Section 2 of the Patent Act;
4. Claims to a computing apparatus programmed in a novel manner, where the patentable advance is in the apparatus itself, are patentable; and
5. Claims to a method or process carried out with a specific novel apparatus devised to implement a newly discovered idea are patentable.

We strongly recommend the above criteria be adopted by the Commissioner of Patents.

At the Hearing Mr. Hill said that "the present invention clearly involves new, original and meritorious ideas," apart from any normal skill of the programmer. On that point he added (as quoted from the response of August 24, 1977):

It is submitted that the present invention clearly involves new, original and meritorious ideas, even if it would be relatively straightforward for a person of requisite skill to program a computer to carry them out in accordance with the teachings of the disclosure.

Incidentally, on page 2, second last paragraph of the Final Action, the Examiner discusses the new use of a "known thing". It is submitted, however, that a computer programmed in a new and unobvious manner is not a "known thing". The unprogrammed hardware alone is not functional as a computer and is entirely different, except in external appearance, from a programmed computer.

If a computer programmed in one way is different from the same "hardware" programmed another way, the operation of such a computer may undoubtedly correspond to a different method and one that involves clearly identifiable steps corresponding to various physical states of the hardware. This is characteristic of technical processes.

Applicant does not regard his invention as merely a new use of a general purpose programmable computer. Again, this restrictive qualification is, with respect, purely that of the Examiner. It will be noted that, to make this statement, the Examiner limits his use of the word "computer" to a general purpose hardware unit before it is progranuned. Applicant does not share this view and considers the invention to be fairly characterized as a machine operated data processing method of which one way of implementing it is through the use of a programmed computer. Such a programmed computer does perform a novel combination of functions which takes place in the physical world. This operational performance is not a scientific principle or an abstract theorem which would make Section 28(s) applicable. On the contrary, it pertains to the useful arts which puts it within the scope of Section 2(d). It is described in sufficient. detail to enable a man skilled in the art to duplicate it, and the disclosed use of a programmed computer, while being the best mode, is not the only conceivable way of carrying out the method claimed.

In the second paragraph of the Final Action, The Examiner states that the subject matter is directed to a computer program from which the result of the manipulation of data by a general purpose computer is mere data, and hence not patentable. He further states that such subject matter is the result of the application of the skill of a progranmrer. Such statements are clearly more applicable to Waldbaum who manipulates data (to count the number of 1's in a register) and who actually discloses a specific program (Figure 2).

Whether or not there was any inventive step in the "meritorious idea" has not been decided. The examiner did cite prior art in one action, but in the next action this was withdrawn. The examiner indicated at the Hearing that what the engineers did in the field might have some merit. Assuming arguendo that an invention had been made, we are still left with the question whether the subject matter of the claims is patentable under Section 2 of the Patent Act.

We will now consider the individual claims in the light of our principal conclusions. We agree with the examiner, and for the reasons given, that the claims rejected in the Final Action fail to define patentable subject matter. We will however, discuss the claims and apply the reasons for refusal directly to them.

Claim 1 reads:

A machine operated method of processing well logging data, comprising:

(a) deriving a plurality of measurements representative of characteristics of an earth formation at selected depth levels over a section of a borchole;

(b) machine combining at least some of. said derived measurements from at least some of said selected depth levels over said borehole section to compute at least one input parameter for said borehole section;

(c) machine combining at least some of said plurality of derived measurements from at least some of said selected depth levels with said at least one input parameter to compute at least one output parameter for at least some of said selected depth levels; and

(d) machine combining at least some of said derived measurements with said at least one output parameter for at least some of said selected depth levels to recompute said at least one input parameter or compute another inlmt parameter for combination with at least some of said plurality of measurements to produce output parameters representative of at least one formation characteristic.

This claim is directed to a method comprising a series of operational steps characterizing the performance of the method. Even assuming that the "meritorious idea" reflects an inventive contribution, the setting, nevertheless, of this idea (itself unpatentable) in our view does not meet the requirements for patentable subject matter under Section 2 of the Patent Act. The claim is not tied to a specific novel apparatus devised to implement the newly discovered idea. Whatever novelty is present lies solely in the program or algorithm, and the product is merely intellectual information. In short a method for programming a computer is not directed to patentable subject matter. This claim, in our view, should be refused. Claims 2 to 43 are also method claims and the same arguments apply equally to them and they should also be refused. Claim 44 is directed to a process of transforming signals representative of data. This claim is in substance the same as claim 1 and should also be refused.

In the submission of August 24, 1977, claims XI to X9 were submitted. The claims are directed to "a machine operated method of processing well logging data." These claims should also be refused, because the arguments used in refusing claim 1 apply equally to them. If these methods or processes were carried out with a specific novel apparatus devised to implement the newly-discovered "meritorious idea" then the claim would be patentable.

Claims 46 to 54, which were submitted on rebruary 13, 1976, are expressed in apparatus form. Claim 46 reads:

Apparatus for processing well logging data to determine characteristic properties of earth formations comprising:
(a) means for deriving a plurality of measurements representative of characteristics of an earth formation at selected depth levels over a section of a borehole;
(b) a data processing unit; and
(c) means adapted to control said data processing unit for combining at least some of said derived measurements from at least some of said selected depth levels over said borehole section to compute at least one input parameter for said borehold section, combining at least some of said plurality of derived measurements from at least some of said selected depth levels with said at last one input parameter to compute at least one output parameter for at least some of said selected depot levels, and combining at least some of said derived measurements with said at least one output parameter for at least some of said selected depth levels to recompute said at least one input parameter or compute another input parameter for combination with at least some of said plurality of measurements to produce output parameters representative of at least one formation characteristic.

This claim calls for apparatus including means for deriving the data, a data processing unit and means adapted for controlling the latter for a specific series of steps. It appears here that the applicant is attempting to claim a novel practical embodiment of his "meritorious idea." Any novel practical embodiment must however, be described in the disclosure. The specification does not in substance disclose a specific and novel computer. On the contrary, at page 55, line 28 f.f. it clearly