In Re Patton (1942) 29 CCPA 982

Posted by Anton Hughes on Tuesday, January 03, 2006 with No comments
Citation: In Re Patton (1942) 29 CCPA 982

Jurisdiction: US Court of Customs and Patent Appeals

Facts: The appellant had an application rejected for an alleged invenion relating to improvements in fire-fighting apparatus.

Outcome: The patent application was rightly rejected by the examiner.

Ratio:  A system of doing business was not within the purview of patentable subject matter. Thus any invention would have to reside in the apparatus used to carry the system out.

Relevance: An early, definitive rejection of the patentability of business methods. If you apply this thinking to Welcome v Catuity, then you would see that the invention would have to lie in the smart card used to carry the system out. And in fact, this is where the key differentiation from the prior art lay.

Quotes:

Hatfield J

At 986: "It is not believed that a fire fighting system, per se, is a proper subject matter of a patent, but that novelty must reside in the particular structure of the fire fighting apparatus that comprises the fire fighting system. Furthermore, there is not seen to be any invention in the assembling of standard and interchangeable parts in the applicant's device for the reason that in the present system of mass production most articles of manufacture are made of standard size and interchangeable to effect economy and convenience." (quoting the patent examiner).

At 987: "[A] system of transacting business, apart from the means for carrying out such system, is not within the purview of [the Act], nor is an abstract idea or theory, regardless of its importance or the ingenuity with which it was conceived, apart from the means for carrying such idea or theory into effect, patentable subject matter."