Patent Appeal Board Assumes All Claimed Elements Essential but Finds Lack of Detail in Specification Supports a Finding of Obviousness

Published January 22nd, 2014

Commissioner’s Decision No. 1337, Canadian Patent Application No. 2,285,834 of Pitney Bowes Inc.

 Summary – On March 6, 2013, the Patent Appeal Board (PAB) delivered its decision in the case of Pitney Bowes, in which claims 1 to 5 of Canadian Patent Application No. 2,285,834 (the ‘834 application) were refused as being obvious in view of the state of the art.  However, contrary to the Examiner’s conclusion, the PAB held claims 2, 3 and 5 to be directed to statutory subject matter.

Analysis – The ‘834 application relates to inserter systems which receive sheets, enclosures and envelopes and physically process these materials into a finished mail piece.  The claims recite, among other elements, a plurality of inserter systems, each having at least one postage meter, and a computer adapted to selectively interact with the postage meter of each inserter system.  The PAB found that the expression “selectively interact” required clarification and interpreted this expression to mean that the computer can send requests to, and receive information from, a selected one of a plurality of postage meters.


Although arriving at the same conclusion of obviousness as the Examiner, albeit for different reasons, the PAB determined that the Examiner did not follow the four step obviousness approach outlined in Sanofi-Synthelabo Canada Inc. v. Apotex Inc. (2008 SCC 61) and thus did not determine the “inventive concept” of each of claims 1 to 5 as required.  The PAB proceeded on the assumption that all claimed elements were essential and formed the basis of the “inventive concept”.  The PAB found that the claimed feature of the computer being adapted to selectively interact with each postage meter was a difference over the state of the art.  However, the PAB concluded that the lack of technical detail in the specification of the ‘834 application, with respect to this feature, supported a finding that enabling this feature was within the expected skill of persons skilled in the art and as a result, would have been obvious to such persons.

Statutory Subject Matter

In assessing statutory subject matter, the Examiner had determined that claims 2, 3 and 5 were directed to methods that do not make or construct a vendible and tangible product, or operate or use an inventive machine, article or composition.  In considering the guidance provided in the passages from the most recent Canadian Court decision concerning patentable subject matter in the area of computer-implemented inventions, Canada (Attorney General v. Inc., 2011 FCA 328), the PAB disagreed with the Examiner’s conclusion and held that the claims define method steps of operating a mail processing system which utilize technology, and are sequenced to achieve the practical result of selectively interacting with, and replenishing, postage meters from a central computer.  The PAB went on to state that the claims fit into the statutory categories of “art” and “process” and are not abstract since they require the use of technical features, thus providing a mode of practical application.

Practice Point – This was a fairly straightforward patent appeal case that turned on the specific facts contained therein.  However, there are a couple of points to note from the PAB’s decision.  Firstly, the PAB proceeding on the assumption that all claimed elements were essential in determining the inventive concept may provide some hope for Applicants facing lack of statutory subject matter rejections where Examiners have ignored or “read out” claimed elements for being non-essential.  Secondly, in view of the PAB’s conclusion that the lack of technical detail in the specification supported a finding that modifications to the art to arrive at the claimed invention were straightforward, and thus obvious, Applicants are cautioned to include as much technical detail as possible in the specification to hopefully avoid such a conclusion.

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