Monday, August 29, 2011

Haddad shows the boundaries of manner of manufacture

Horse racing
In George N Haddad v The Commissioner of Patents [2000] NZIPOPAT 8 (2 May 2000) we saw an acknowledgement that the term “manner of manufacture” is now interpreted more liberally.  However, the term still implies a situation which involves some sort of interaction with a real entity, or which achieves a tangible product or result.

The patent application

George N Haddad filed NZ 328238 on 1 July 1997.  After a bit of back and forth between the applicant and the New Zealand Patent Office (as it then was), Haddad filed whole contents divisional application NZ 333267, essentially a continuation application.  The case was set down for a hearing on 30 March 2000.

The invention related to a method of wagering on a sporting or racing event.  It consisted of the following steps:

  1. a better selects a number between 0 and 9 prior to the event,
  2. the better places a wager on the selected number,
  3. the participants in the sporting event or race are each allocated a number by the organisers of the sporting event or race,
  4. after the event the “predetermined criterion numbers” of the entrants are added to give a sum,
  5. the “least significant digit” is compared with the number selected by the bettor in step 1 to determine whether the bettor has been successful.

A pure number

The hearing officer referred to a decision of the Federal Court of Australia in International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1992) 22 IPR 417.  Burchett J, on page 20 of IBM, referred to Re Walter 205 USPQ 397 (1980):
“Once a mathematical algorithm has been found, the claim as a whole must be further analysed.  If it appears that the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims), the claim being otherwise statutory, the claim passes muster under §101. 
If, however, the mathematical algorithm is merely presented and solved by the claimed invention … and is not applied in any manner to physical elements or process steps, no amount of post-solution activity will render the claim statutory; nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm. 
Various indicia are helpful in determining whether a claim as a whole calls merely for the solution of a mathematical algorithm.  For instance, if the end-product of a claimed invention is a pure number … the invention is nonstatutory regardless of any post-solution activity which makes it available for use by a person or machine for other purposes.  If, however, the claimed invention produces a physical thing … the fact that it is represented in numerical form does not render the claim nonstatutory.”
Interaction with a real entity or achieving a tangible product or result

The Hearing Officer acknowledged that the term “manner of manufacture” is now interpreted more liberally than an earlier definition which required materials to be operated on or the application of power in their transformation.

However, it was observed that the term still implies a situation:
  • which involves some sort of interaction with a real entity; or
  • which achieves a tangible product or result.
It is only when this requirement is satisfied that there is a “manner of new manufacture” and thus an “invention” as defined by section 2.

The Hearing Officer observed that the invention in Hughes Aircraft Company [1995] NZIPOPAT 3 (3 May 1995) (see my earlier blog article), satisfied both limbs of the above test.  The height separation and convergence calculations in Hughes represented real entities in the form of pairs of aircraft.  Furthermore, the current conflict alert status that was established for pairs of aircraft represented a tangible product or result.

However, the invention in the present case was the development of a new mathematical formula for arriving at a number that determines the winner or winners of a wager.  This was observed to be merely a new method of calculating or arriving at a winning number – a purely mathematical process resulting in what was referred to in Re Walter as a “pure number”.

The claim (and dependent claims) did not define a “manner of new manufacture” or an “invention” within the meaning of section 2.

Photo courtesy of author Paolo Camera under Creative Commons licence.

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