INTERNATIONAL BUSINESS MACHINES CORPORATION

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 73701/87 by INTERNATIONAL LBUSINESS MACHINES CORPORATION. Examiner's objections.

Background
Application No. 73701/87, relating to producing a curve image, was lodged on 1 June 1987. It derives priority from a US basic application filed on 13 June 1986. Following a request for examination, the examiner's first report issued on 9 February 1989. Some amendments to the specification were proposed by the applicant but the examiner maintained objections that the claims do not define a manner of manufacture. The matter was heard in Canberra on 10 October 1990; the applicant was represented by Mr Fraser Old, patent attorney, Mr Lee Pippard and Ms Sharon Chang from Spruson & Ferguson, Sydney. The examiner Mr Allen Evans was also present at the hearing.
Decision
The specification ends with 15 claims defining the invention. I find that method claims 1, 2, 3 and 6 are directed to a mathematical algorithm and are therefore not patentable, and that apparatus claims 9, 10 and 14 do not include any apparatus features which are characteristic of the invention and are therefore not fairly based on the matter described in the specification. Method claims 4, 5, 7, 8 and 15 are directed to methods of operating a

computer, apparatus claims 11, 12 and 13 include characteristic apparatus features and therefore these claims are patentable and allowable.
The final date for acceptance of this application is 9 November 1990. The imminence of this date has not allowed me to elaborate on the reasons for my decision. This will be done in a further decision to issue later.

(J.I. WELSH)

CaseChat Overview and Summary

The matter before the delegate of the Commissioner of Patents concerned Patent Application No. 73701/87 by International Business Machines Corporation (IBM). The application, filed on 1 June 1987, relates to a method for producing a curve image. The application derives priority from a US basic application filed on 13 June 1986. The examiner issued objections to the claims, asserting that they did not define a manner of manufacture. The matter was heard on 10 October 1990, with IBM represented by Mr Fraser Old, patent attorney, and Ms Lee Pippard and Ms Sharon Chang from Spruson & Ferguson.

The legal issues before the delegate included whether the claims in the patent application defined a patentable invention under the Patents Act 1952. Specifically, the delegate had to determine if the claims related to a mathematical algorithm, a method of operating a computer, or apparatus features that were characteristic of the invention. The delegate also had to decide whether the claims were fairly based on the matter described in the specification.

In reaching the decision, the delegate found that the method claims 1, 2, 3, and 6 were directed to a mathematical algorithm and therefore not patentable. The apparatus claims 9, 10, and 14 were also found not to be patentable because they did not include any apparatus features which were characteristic of the invention. However, the method claims 4, 5, 7, 8, and 15 were held to be directed to methods of operating a computer, while apparatus claims 11, 12, and 13 included characteristic apparatus features. As such, these claims were found to be patentable and allowable. The decision was made in light of the imminence of the final date for acceptance of the application, and further elaboration on the reasons for the decision would be provided in a later decision.

In conclusion, the delegate of the Commissioner of Patents allowed claims 4, 5, 7, 8, 11, 12, 13, and 15 of the patent application, while rejecting claims 1, 2, 3, 6, 9, 10, and 14. The final date for acceptance of the application was 9 November 1990.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established