Re: Patent Application No. 2,285,834 [CD
The Patent application 2,285,834 was filed on October 13, 1999
based on a US priority application no. 09/182,020 filed on October 29, 1998. In
the final action the Examiner identified several defects including claims 1 – 5
were obvious and so did not comply with s. 28.3 of the Patent Act and that the
method claims 2,3 and 5 were directed to non-statutory subject matter. Claim 3
did not comply with subsection 27(4) of the Act as it was indefinite.
Claim 1 reads as:
A system for selectively interacting with at least one postage meter
provided on each one of a
plurality of inserter systems, each inserter system having a control
system, the system for
selectively interacting comprising:
a computer coupled to each said control system of each said inserter
system via a file
an inserter/meter protocol converter for coupling each said control
system to at least one
postage meter, the computer being adapted to selectively interact with
said at least one
postage meter provided on each said inserter system.
The PAB followed the approach set out in Sanofi-Synthelabo Canada Inc v Apotex Inc for obviousness however deviated after
step 2 where they proceeded on the basis of the claims and that all claimed
elements were essential. This was in accordance with how the Examiner and
Applicant proceeded since they did not operate within the Sanofi framework.
The person of ordinary skill was identified as someone
with experience in the field of mailing and communication systems including
systems involving postage meters, inserter systems and operations management
The common general knowledge was identified to include
existing inserter systems as well as other manufacturing assembly line systems.
The PAB then identifies the problems identified in the
application that the invention should overcome. These included requiring a
software engineer to produce control systems, requiring direct intervention for
statistics, and requiring the inserter system to be ‘off-line’ while the
operator is interacting with the meter.
The portion of claims 1 and 4 that states that the
computer will ‘selectively interact’ requires clarification. It is not defined
in the description or in any responses to Office actions.
Differences between the State of the Art and the
The Breault Patent (US 4,908,770) discloses a mailroom
management system having a central computer and multiple workstations. The
Breault Patent also discloses a method for using that system to monitor and
record the systems activity. The Hunter Patent (CA 2,164,361) describes an
external interface unit for message routing and protocol conversion with
multiple communications ports. The Gilham Patent (EP 0 298 776 ) provides for a
commonly known system for replenishing funds in multiple postage meters.
The ‘selective interaction’ with each postage meter is a
difference over Breault. The feature of the central computer being adapted to
selectively interact with each postage meter. All that was necessary to
implement the solution was to make changes to the programming in the system. The
steps to produce the invention would have been obvious to the person of skill
on the claim date.
None of the steps taken to produce the inventions in
claims 1-5 would have been non-obvious as of the claim date.
Statutory Subject Matter
The issue for the PAB was that the categories of ‘art’
and ‘process’ with respect to claims 2, 3 and 5 in the context of Canada (Attorney General) v Amazon.com, 2011
FCA 127. Based on paragraphs 62 and 63 of Amazon the PAB found that claims
2, 3 and 5 claim a method for operating a mail processing system, subject
matter that fits within the statutory categories of ‘art’ and ‘process’.
Indefiniteness of Claims
Under s. 27(4) of the Patent Act the specification must
end with a claim drafted to distinctly and explicitly defining the
subject-matter of the invention. The use of the term “a said” is problematic as
it introduces ambiguity about whether it qualifies the element as the same or
distinct from an element defined earlier in the claim.
Claims 1-5 are obvious and do not comply with s. 28.3 of
the Patent Act.
Claims 2,3 and 5 fit within the definition of invention
set out in s. 2 of the Patent Act.
Claim 3 is indefinite and so does not comply with s.
27(4) of the Patent Act.
The PAB recommended that the Commissioner refuse to grant
decision also reflects a current cluster of cases relating to statutory subject
matter in relation to computer implemented inventions. Interestingly in
this case, statutory subject matter was found to exist but the patent was
nonetheless rejected for obviousness.