Re.
Patent Application No. 2,304,195, CD 1338

This
decision was a review by the Patent Appeal Board (PAB) of the final rejection
of patent application no. 2,304,195 entitled "METHOD FOR THE ANALYSIS AND
STANDARDIZATION OF BILLS OF RESOURCES." Bills of resources are itemized
lists of the requirements to perform a particular task or procedure. [2] The
primary issue was whether the claims are directed to non-statutory subject
matter and therefore non-compliant with section 2 of the Patent Act.

The Board
decided that the claims were directed to non-statutory subject matter, and
upheld the Examiner’s refusal of the application.

Claim
Construction

Claims 1
and 25 are representative of the claims on file:

1. A method for the production of at least one standard bill of
resource, from bills of resources which include a list of resources to be
utilized in performing a procedure, comprising the computer-implemented steps
of:

selecting a plurality of bills of resources from a known universe of
bills of resources;

developing a model for each of the selected bills of resources, each of
said models including values which correspond to the number of units of given
resources from the selected bills of resources;

manipulating said models mathematically to highlight similarities and
dissimilarities of defined characteristics in said models;

expressing the manipulated models in a format in which a relative
position of each of said manipulated models may be determined, the relative
position of each of the manipulated models reflecting the degree of similarity
or dissimilarity to the other manipulated modes;

analyzing said selected bills of resources based upon the expression of
the manipulated models; and

producing the at least on standard bill of resources based on the
analysis of the bills of resources.

25. A computer implemented method for the production of at least one
standardized bill of resources, from bills of resources including lists of
resources for use in the performance of a procedure comprising the following
steps:

defining a set of bills of resources for analysis;

providing the defined set of bills of resources to a computer to develop
a set of electronic bills of resources corresponding to the defined set of
bills of resources;

mathematically manipulating the electronic bills of resources according
to an algorithm selected to characterize the electronic bills of resource
according to their degree of similarity relative to each other;

expressing said manipulated bills of resources in a human or machine
perceptible form such that the relative similarity or dissimilarity of the
bills of resources is apparent;

analyzing said expressed bills of resources in order to enhance or
optimize resource utilization; and

producing the at least one standardized bill of resources based on the
analysis of the bills of resources.

The Board
focused its claim construction on the essentiality of “computer implementation”
limitation in the claims. [22] The Board examined several different sections of
the description in construing the claims.

The Board
reviewed the Field of Invention and noted that it “points to the analysis and
development of bills of resources and to a method of depicting relationships
among different bills of resources and analyzing them, rather than the computer
implementation aspect, as the focus of the invention.” [24] The Board further
noted that the "Background of the Invention points to known issues
surrounding variation in bills of resources and some attempts at
standardization.” [25]

The Board
turned next to the objects of the invention, specified at pages 6-7, and observed
that these statements make no mention of providing a
"computer-implemented" method. [26]

Next the
Board considered the Summary of the Invention, and stated that “the Applicant
points to several preferred embodiments of the invention as solutions to the
problem, which are not limited to a computer implementation, though considering
the calculations involved, one would suppose that the performance of the steps
by a computer would save a great deal of time.” [27]

The Board
then reviewed the various steps in the method of producing a standardized bill
of resources as discussed in the Detailed Description, and concluded that
“[a]lthough as disclosed it is preferred that the method of the invention be
practised in the form of computer software…we see nothing in the description of
the invention that necessitates the use of computer software.” [37]

Based on
this analysis, the Board concluded that use of a computer system to perform the
claimed methods was not an essential limitation of the claims. [38]

Subject Matter

The Board
concluded that all the claims are directed to non-statutory subject matter and
therefore do not fall within section 2 of the Patent Act. [55]

Since
“computer implementation” was found not to be essential, the Board
characterized the claimed methods, as exemplified in claims 1 and 25, as claims
to a series of steps which relate to organizing, manipulating and expressing
data associated with bills of resources, the results of which are analyzed in
order to arrive at a standardized bill of resources. [47]

The
Applicant argued that the steps of the method produce a physical result by
affecting the type and number of items held in inventory. The Board rejected
this argument and stated that “[w]hile the advantages of a standardized bill of
resources may be realized by the use of the end product of the claimed method,
these features are beyond the invention as claimed and construed.” [50]

The Board
drew an analogy to Schlumberger, and stated that here “we have a method
which includes a series of calculations and mental operations performed to
produce an output, namely, in this case, a standardized bill of resources.”
[52] The Board further stated that “[i]n this case, like Schlumberger,
the claims are not saved by the fact that they contemplate use of a physical
tool, a computer, to give the series of calculations a practical embodiment.”
[53]

Computer-Readable
Media

The Board
also rejected the subject matter eligibility of the methods had then been
claimed as computer-readable media: the Board stated that “[i]n light of our
analysis above, we would not change our finding on the patentability of claims
25-37 were they framed as computer readable medium claims. We have already
found that it is not essential that the method be computer-implemented.
Therefore there is no requirement that it be stored on a computer readable
medium so that it may be executed by a computer.” [56]

Comments

The Patent Appeal Board’s efforts to classify elements as
essential vs non-essential is consistent with the purposive construction
principles laid out in Catnic and its Canadian progeny.  By finding the computer system to be
“non-essential” the Patent Appeal Board therefore finds that variants are
within the claimed invention, and therefore such a variant can include
performing the method without a computer. On this basis the Patent Appeal Board
held that the invention lacked statutory subject matter.  The analysis is interesting in that rarely do
Courts ever find a claimed element to be non-essential, and indeed according to
the recent Bell
Helicopter decision, the onus is on the applicant to disprove that a
claimed element is essential.  Here the
applicant clearly intended the recited computer element to be essential.  In any event, the decision supports that the
patent drafters need to make clear that the computer implementation is an
essential part of the invention in order to withstand a statutory subject
matter challenge of this type.