Re Patent Application 2,222,229 [CD
1341]
Background
The PAB dealt with a Final Action on patent application
number 2,222,229 which was entitled “SYSTEM AND METHOD FOR DISTRIBUTED CONTENT
ELECTRONIC COMMERCE”. The application was filed and a request for examination
received on November 25th, 1997. The application claims priority
from an application filed on January 15th, 1997.
The Final Action was issued on November 20th,
2006 rejecting the application based upon obviousness and non-statutory subject
matter. The Supreme Court then released Sanofi-Synthelabo
Canada Inc. v Apotex Inc. 2008
SCC 61 which provides the definitive approach for an obviousness analysis. The
Commissioner also provided guidance with how to assess patentable subject
matter in CD
1290.
The Applicant was given the opportunity to address in
writing and/or at a hearing the obviousness issues on May 29th, 2009
in light of Sanofi.
The invention separates detailed merchant content from
transaction functionality over separate servers.
Claim 1 is for:
A method for conducting electronic commerce transactions in a
transaction server storing merchant
summary information connected over a network to a merchant server, said
method comprising the
steps of:
searching for general merchant information in the merchant summary
information based on a received information request;
displaying results of the search;
providing reference to detailed merchant
information stored on the merchant server;
receiving a purchase request from the
merchant server for a selected product; and
processing the purchase request to form a
purchase transaction.
Claims 2-9 are dependent claims further limiting the
processing of purchase requests.
Claim 10 deals with a transaction processor. Claims 11
and 12 are dependent claims related to claim 10.
Claim 13 is for an electronic commerce system between a
purchaser and merchant. Claims 14 and 15 are dependent claims related to claim
13.
Obviousness
The notional skilled person is a composite of a computer
programmer and a person involved in sales and marketing in electronic commerce.
The common general knowledge included an understanding
electronic commerce and the concepts of purchase requests. As well the person
would be aware of advances in computer programming techniques and possible
areas of their application.
Relying on the documents in the disclosure the PAB
concluded that:
- It was part of the common general knowledge to
hyperlink directly to the merchants catalog - It was part of the common general knowledge to
receive a purchase request at the transaction server from the merchant server - That the problem of linking directly to the
merchant had been identified and that there was a corresponding demand for
doing so.
While the prior art may not have pointed explicitly at
this solution the patent at issue is no more than “…a promise to meet the needs
already identified…”[69] The PAB found that there was no contribution to the
existing art at the time of filing. Alternately the inventor may have perceived
that once the splitting of e-commerce was presented to the development team,
the details behind implementation would require no inventive effort. In either
circumstance it is fatal to the patent application.
Claims 1-15 are therefore obvious.
Statutory Subject Matter
The PAB cites the Amazon decision of the FCA in support of their finding that Claims 1-15
are compliant with s. 2 of the Patent Act.
Claims 1-15 are “ one of a number of essential elements in a novel
combination”[78]. The PAB goes on to state that the claimed subject matter is
not “merely abstract” and is not otherwise excluded.[79].
Holding
The PAB held that Claims 1-15 are obvious and
not compliant with s. 28.3 of the Patent
Act and that Claims 1-15 are compliant with s. 2 of the Patent Act. The PAB recommendations were
accepted by the Commissioner.