A-164-83
Imperial Chemical Industries Limited (Appellant)
v.
Commissioner of Patents (Respondent)
INDEXED AS: IMPERIAL CHEMICAL INDUSTRIES LTD. V. COM
MISSIONER OF PATENTS
Court of Appeal, Heald, Ryan and Stone JJ.—
Ottawa, May 16, 1984, March 19, 1985 and April
8 and 21, 1986.
Patents — Appeal from Commissioner's decision rejecting
method claims — Invention relating to method of cleaning
teeth with aqueous composition — Claims rejected as process
treatment of human body — Tennessee Eastman decision
applied in holding method not process in economic sense
Patent Act designed to protect — Appeal dismissed — No
error in characterizing invention as having medical function —
Test in Burton Parsons case met as one of main purposes of
invention reduction of caries and/or periodontal disease, sup
porting conclusion leading function of invention medical —
Product can have two main purposes: medical and cosmetic —
No error in Commissioner considering Tennessee Eastman
binding — Latter not restricted to factual situations where s.
41(1) of Act applies — Tennessee Eastman deciding methods
of medical treatment not contemplated in definition of "inven-
tion" as kind of "process" — Patent Act, R.S.C. 1970, c. P-4,
ss. 2, 41(1), 44 — Patent Act, R.S.C. 1952, c. 203, s. 2(d).
This is an appeal from the Commissioner's decision rejecting
method claims of the appellant's application for patent. The
invention relates to a method of cleaning teeth by applying an
aqueous composition. The Patent Appeal Board recommended
the rejection of the method claims, finding that the applicant's
process is a treatment of the human body and following the
decision in Tennessee Eastman Co. et al. v. Commissioner of
Patents (1970), 62 C.P.R. 117 (Exch. Ct.); affd. [1974] S.C.R.
111; (1972), 8 C.P.R. (2d) 202. The Board concluded that the
applicant's method was not a process in the economic sense
which the Patent Act was created to protect. The Commission
er accepted the Board's recommendation. The appellant argued
that the Commissioner erred in characterizing the subject-
matter of the claims as a method of medical treatment and in
holding that methods of medical treatment are per se unpatent-
able. The appellant submits that only medical treatment involv
ing the use of compositions governed by subsection 41(1) of the
Patent Act are unpatentable per se.
Held, the appeal should be dismissed.
The appellant submitted that the Commissioner erred in
failing to apply the test established by the Supreme Court of
Canada in Burton Parsons Chemicals, Inc. v. Hewlett-Packard
(Canada) Ltd., [1976] 1 S.C.R. 555; (1974), 17 C.P.R. (2d) 97.
The Burton Parsons case is a case under subsection 41(1)
involving "substances prepared or produced by chemical pro
cesses and intended for ... medicine". The case at bar is not
governed by subsection 41(1) since the compositions are not
produced by a chemical process. However, because the process
is directed towards cleaning or treating a part of the human
body, it is a treatment of the human body and thus equivalent
to a medical treatment. Because of the factual differences, it is
doubtful that the Burton Parsons test applies to this case.
However, assuming its applicability, the requirements of the
test have been satisfied. One of the main purposes of the
invention was the reduction of caries and/or periodontal dis
ease. As most of the population suffers from caries or periodon
tal disease, there was sufficient evidence for the Commissioner
to conclude that a leading function of the invention was medi
cal. It is also possible for a product to have two main purposes,
as here, one medical and the other cosmetic. There was no error
in characterizing the invention as having a medical function
simply because it may also have another leading function,
namely, a cosmetic one.
The appellant argued that the Tennessee Eastman decision
does not stand for the proposition that methods of medical
treatment are, per se, unpatentable. The appellant argues that
Tennessee Eastman only prohibits the patentability of medical
methods which utilize materials prohibited pursuant to subsec
tion 41(1), namely, materials produced by chemical processes.
In its view, where as here the materials are produced by a
physical rather than a chemical process, the rationale of
Tennessee Eastman does not apply.
The sole issue in the Exchequer Court was whether the
method for surgical bonding of body tissues is an art or process
or an improvement of an art or process within paragraph 2(d)
of the Patent Act. There was no reference to the application of
subsection 41(1). Although the Supreme Court of Canada
decision discusses the impact of section 41, it clearly and
unequivocally states that "methods of medical treatment are
not contemplated in the definition of `invention' as a kind of
`process'." The force of that pronouncement cannot be restrict
ed to factual situations where subsection 41(1) of the Act
applies. The Commissioner did not err in considering himself
bound by the ratio of Tennessee Eastman.
CASES JUDICIALLY CONSIDERED
APPLIED:
Tennessee Eastman Co. et al. v. Commissioner of Patents
(1970), 62 C.P.R. 117 (Exch. Ct.); affd. [1974] S.C.R.
111; (1972), 8 C.P.R. (2d) 202.
DISTINGUISHED:
Burton Parsons Chemicals, Inc. v. Hewlett-Packard
(Canada) Ltd., [1976] 1 S.C.R. 555; (1974), 17 C.P.R.
(2d) 97.
COUNSEL:
A. David Morrow for appellant.
Arnold S. Fradkin for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
HEALD J.: This is an appeal pursuant to section
44 of the Patent Act, R.S.C. 1970, c. P-4, as
amended, from a decision of the respondent Com
missioner dated August 10, 1982, rejecting method
claims 1 and 2 of the appellant's application for
Patent Serial No. 304,853 "Lanthanum Cation for
Cleaning Teeth."
Claims 1 and 2 in subject application are
method claims. Claims 3, 4 and 5 are composition
claims. The only claims under appeal are claims 1
and 2 since the Commissioner's refusal to grant a
patent was restricted to those claims. In his ruling,
the Commissioner directed that if the first two
claims were removed from the application within
six months of his decision, the application was to
be remanded to the Examiner to resume prosecu
tion of the remaining claims. The effect of this
direction was to delay his decision respecting
claims 3, 4 and 5 for the period given to the
appellant to either remove claims 1 and 2 or to
appeal the decision rejecting them.
The Abstract of the Disclosure relating to sub
ject invention states (A.B. Vol. 1, page 77):
The invention relates to a method of cleaning teeth by
applying thereto lanthanum, and to compositions, such as
mouthwashes, toothpastes and dental gels, for use in such a
method.
Claims 1 to 5 read as follows (A.B. Vol. 1, page
89):
1. A method of cleaning dental plaque or stains, including
tobacco stains, from human teeth by applying thereto an
aqueous composition which consists of an unbound lanthanum
cation in the form of a dissolved water-soluble salt in such a
concentration that an individual dose contains from 0.01 m
mole to 1 m mole of the cation, said composition being substan
tially free from any ingredients which precipitate the lan-
thanum cation as a water-insoluble salt, being designed for
direct application to the teeth and being in a form for use in a
non-sequential manner.
2. A method as claimed in claim 1 in which the lanthanum
cation is present in the form of the chloride salt.
3. An oral hygiene composition having the ability to clean
dental plaque or stains, including tobacco stains, from teeth,
which is an aqueous composition which consists of an unbound
lanthanum cation in the form of a dissolved water-soluble salt
in such a concentration that an individual dose contains from
0.01 m mole to 1 m mole of the cation, said composition being
substantially free from any ingredients which precipitate the
lanthanum cation as a water-insoluble salt, being designed for
direct application to the teeth and being in a form for use in a
non-sequential manner.
4. A composition as claimed in claim 3 in which the lanthanum
cation is present in the form of the chloride salt.
5. A composition as claimed in claim 4 which is a mouthwash,
toothpaste or dental gel.
It will thus be seen that the claims under appeal
herein (claims 1 and 2) relate to a method of
cleaning dental plaque or stains, including tobacco
stains from human teeth by applying to the teeth
an aqueous composition of a type which is generic
to the oral hygiene composition claimed as a novel
composition under claim 3. It is also clear that
claims 3 to 5 claim patent protection for oral
hygiene compositions per se. As noted supra, the
Commissioner has made no decision with respect
to claims 3 to 5. The Patent Appeal Board ren
dered a written report in which it recommended
that the Examiner's rejection of method claims 1
and 2 be affirmed. By his decision of August 10,
1982, the respondent Commissioner accepted that
recommendation, adopted the reasoning and find
ings of the Patent Appeal Board and refused to
grant a patent containing claims 1 and 2. This
appeal is brought from that decision.
The Patent Appeal Board stated the issue before
it to be:
... whether or not brushing teeth with a composition contain
ing a lanthanum cation releasing material is directed to a
process which is patentable. [A.B. Vol. II, page 205.]
After reviewing the record of the application, the
submissions of the appellant's agent and the find
ings of the Examiner, the Board concluded (A.B.
Vol. II, page 205):
From the application we find that the purpose of Applicant's
process is to clean teeth by removing plaque and stains by the
action of lanthanum in cation form, and by so removing the
plaque remove the potential breeding spot for bacteria. Because
Applicant's process is directed towards cleaning or treating part
of the human body, i.e. the teeth, we are of the view that the
process is a treatment of the human body. We believe that
Applicant's application is directed to subject matter which is
similar to that adjudicated in the Tennessee Eastman decision,
supra.
The Board then quoted a number of extracts from
that decision, thereafter stating (A.B. Vol. II, page
207):
We are led by the Tennessee Eastman decision to the view that
Applicant's method is not related to, nor does it produce, "... a
result that is essentially economic" within the meaning of
which is acceptable in patent law. We find therefore that the
method claims are directed to a treatment of part of the human
body, and is equivalent to a method of medical treatment which
may be applied by persons not in the field of medicine. Further
more, the method does not contribute to the productive arts.
What individuals do to their own teeth as they stand before a
mirror in their bathrooms is not a process in the economic sense
which the Patent Act was created to protect.
In his submission to us, counsel for the appellant
alleged two errors in law on the part of the Com
missioner. The initial error, in his view, was in
characterizing the subject-matter of claims 1 and
2 as a method of medical treatment, it being the
appellant's view that those claims do not define a
method of medical treatment. The second error in
law, in the submission of counsel, was that even if
the subject-matter of claims 1 and 2 were properly
characterized by the Commissioner, he erred in
holding that methods of medical treatment are, per
se, unpatentable since, in the appellant's submis
sion, only methods of medical treatment involving
the use of compositions governed by subsection
41(1) of the Patent Act are unpatentable per se.
CHARACTERIZATION OF THE INVENTION
Counsel for the appellant treated the question of
characterization as a threshold issue and submit
ted that the Commissioner erred in failing to apply
the test established by the Supreme Court of
Canada in the case of Burton Parsons Chemicals,
Inc. v. Hewlett-Packard (Canada) Ltd., [ 1976] 1
S.C.R. 555, at pages 569-570; (1974), 17 C.P.R.
(2d) 97, at pages 109-110. One of the attacks on
the validity of the patent in that case was that the
product claims were invalidated by subsection
41(1) of the Patent Act' as being for "substances
prepared or produced by chemical processes and
intended for ... medicine". Pigeon J. speaking for
the Court, said [at page 570 S.C.R.; at page 109
C.P.R.] that he agreed with the finding of the
Trial Judge that the conductive cream there in
issue was not "intended for medicine" within the
meaning of section 41. He expressed the view that
the Tennessee Eastman case, supra, established
that substances intended for use in surgery were
included in the expression "intended for medi
cine". He added [at page 570 S.C.R.; at pages
109-110 C.P.R.]:
I have no doubt that a conductive cream is apt to be used
whenever electrodes are applied to the skin during surgery.
However, there is nothing in the evidence which would justify
the conclusion that such is the main or primary use of the
product. [Emphasis added.]
Based on the words above emphasized, appellant's
counsel submits that the method claims here in
issue are simply a method of cleaning teeth using
certain patentable compositions. He says that the
method can be practised by anyone, that its prac
tice is clearly not restricted to doctors and that it is
'Subsection 41(1) reads:
41.(1) In the case of inventions relating to substances pre
pared or produced by chemical processes and intended for food
or medicine, the specification shall not include claims for the
substance itself, except when prepared or produced by the
methods or processes of manufacture particularly described and
claimed or by their obvious chemical equivalents.
not, in its main and primary function a medical
method, any more than the simple act of brushing
one's teeth is a medical method.
With respect, I am unable to accept this submis
sion. My first comment with respect to the Burton
Parsons case would be that it is a case under
subsection 41(1) involving substances prepared or
produced by chemical processes and, "intended for
... medicine." It was common ground, on the
argument of the appeal, that the case at bar was
not governed by subsection 41(1) since the compo
sitions here produced are not produced by a chemi
cal process. What was said in Burton Parsons
relates only to substances which:
(a) are produced by a chemical process; and
(b) are intended for medicine.
In the case at bar, the substance is one not pro
duced by a chemical process but, because the
process of application of that substance is directed
towards cleaning or treating a part of the human
body it is said to be a treatment of the human
body and thus equivalent to a medical treatment.
Because of those factual differences, I doubt
that the Burton Parsons test relied on by the
appellant necessarily applies to the instant case.
However, assuming its applicability, I think that,
on this record, the requirements of that test have
been satisfied. Black's Law Dictionary [Fifth Edi
tion] defines "main" as "Principal; leading; pri
mary; chief." It defines "primary" as "First; prin
cipal; chief; leading."
The disclosure of the invention emphasizes two
main benefits from the invention:
(i) the cosmetic value; and
(ii) the reduction in the incidence of caries
and/or periodontal disease.
The record shows that only a very small percent
age of the population in industrialized countries is
free from caries or periodontal disease (in the
U.S.A., approximately 0.1% of the population).
On this basis, I think there was sufficient evidence
for the Commissioner to conclude that a leading
function of the invention was medical. I also think
that it is possible to have more than one main
purpose in a product. The evidence here suggests
that this product had two main purposes, one
medical and the other cosmetic. Accordingly, I see
no error in law by the Commissioner in character
izing the invention as having a medical function
simply because it may also have another leading
function, namely, a cosmetic one.
THE PATENTABILITY OF METHODS OF MEDICAL
TREATMENT AND THE APPLICABILITY OF THE
TENNESSEE EASTMAN DECISION
In deciding that methods of medical treatment
are unpatentable per se, the respondent Commis
sioner considered himself bound by the decisions of
the Exchequer Court and the Supreme Court of
Canada in the case of Tennessee Eastman Co. et
al. v. Commissioner of Patents (1970), 62 C.P.R.
117 (Exch. Ct.); affd. [1974] S.C.R. 111; (1972),
8 C.P.R. (2d) 202. The appellant submits, how
ever, that the Tennessee Eastman decision does
not stand for the proposition that methods of
medical treatment are, per se, unpatentable. In his
view, methods of medical treatment are, per se,
patentable as "arts" or "processes" since there is
no limitation inherent in the words "art" or "proc-
ess" as used in section 2 of the Patent Act which
would exclude medical arts, or a medical process. 2
It is further submitted by the appellant that it is
only methods of medical treatment that invoke the
use of compositions governed by subsection 41(1)
of the Patent Act that are, per se, unpatentable on
the authority of that decision. Put another way,
the appellant's position is that Tennessee Eastman
only prohibits the patentability of medical methods
which utilize materials prohibited pursuant to sub
section 41(1) of the Act, namely, materials pro
duced by chemical processes. Accordingly, where,
2 "Invention" is defined in section 2 of the Patent Act as
follows:
2....
"invention" means any new and useful art, process, machine,
manufacture or composition of matter, or any new and
useful improvement in any art, process, machine, manufac
ture or composition of matter.
as here, the materials are produced by a physical
rather than a chemical process, the rationale of the
Tennessee Eastman decision does not apply, in its
view. In short, the appellant submits that since
Tennessee Eastman is a decision to which subsec
tion 41(1) of the Act applies and since subsection
41(1) does not apply to the case at bar, that
decision was not binding on the Commissioner and
he erred in so finding.
In Tennessee Eastman, the appellant had
sought, in patent claims, to obtain a patent for an
invention consisting of a surgical method for bond
ing the surfaces of incisions or wounds in living
animal tissue. The Exchequer Court affirmed the
Commissioner of Patents in rejecting the patenta-
bility of such claims. The essential portion of the
Acting Commissioner's reasons reads:
In applicant's application, we are concerned with a process of
medical or surgical treatment of living tissues.
Applicant's arguments with respect to the words "art" and
"process" also have been noted. However, not all methods or
processes fall within the meaning of "art" under Section 2(d)
of the Patent Act. The word "art" cannot be taken in its
broadest meaning for there are arts which are excluded by
statutes for instance by Section 28(3), others by well known
and accepted court rulings such as business system, method of
teaching, etc., and other by other statutes such as the Design
Act and the Copyright Act.
Mr. Justice Kerr, in affirming that decision said,
at pages 154-155:
In my view the method here does not lay in the field of the
manual or productive arts nor, when applied to the human
body, does it produce a result in relation to trade, commerce or
industry or a result that is essentially economic. The adhesive
itself may enter into commerce, and the patent for the process,
if granted, may also be sold and its use licensed for financial
considerations, but it does not follow that the method and its
result are related to commerce or are essentially economic in
the sense that those expressions have been used in patent case
judgments. The method lies essentially in the professional field
of surgery and medical treatment of the human body, even
although it may be applied at times by persons not in that field.
Consequently, it is my conclusion that in the present state of
the patent law of Canada and the scope of subject-matter for
patent, as indicated by authoritative judgments that I have
cited, the method is not an art or process or an improvement of
an art or process within the meaning of s. 2(d) of the Patent
Act.
In the Exchequer Court, the appeal was argued on
the basis of an agreed statement of facts and
issues. Kerr J. reproduced that statement in his
reasons for judgment at pages 126 and 127 of the
report. It reads:
"For the purpose of this hearing only, it is agreed that:
"1. The claims generally describe a surgical method for joining
or bonding the surfaces of incisions or wounds in living body
tissues by applying the compounds described in the claims of a
liquid state, directly to at least one of the tissue surfaces to be
bonded.
"2. The discovery that these particular compounds had an
unexpected property of bonding body tissues is new and useful
and unobvious but the compounds described in the claim were
old and well known.
"3. The ground on which the Commissioner refused to grant a
patent to the applicant was that the method for surgically
bonding the surfaces of body tissues as covered by the claims in
the said application does not constitute patentable subject
matter under subsection (d) of section 2 of the Patent Act, in
that it is neither an art, or a process within the meaning of said
subsection.
"4. The issue before this Honourable Court is whether the
method for surgical bonding of body tissues by applying to one
of the tissue surfaces to be bonded, one of the compounds
described in the claims, is an art on process or an improvement
of an art or process within the meaning of subsection (d) of
section 2 of the Patent Act.
"5. The parties agree that on the hearing of this appeal any of
the documents appearing in the record file of this application,
together with the matters therein contained, may be adduced in
evidence without formal proof thereof, and the facts stated in
the affidavit of David W. Fassett and in patent application
serial number 884,804 are accepted as true.
"6. The parties agree that the issue stated in paragraph 4 is the
only one which was considered by the Commissioner, and in the
event the appeal is allowed and the Commissioner's decision to
refuse to grant a patent is set aside, the appellant Ethicon, Inc.
will be at liberty to resume the prosecution of its application."
It seems clear from paragraph 4 supra, that the
sole issue in the Exchequer Court was whether the
method for surgical bonding of body tissues by
applying to one of the tissue surfaces to be bonded,
one of the compounds described in the claims, is
an art or process or an improvement of an art or
process within the meaning of paragraph (d) of
section 2 of the Patent Act [R.S.C. 1952, c. 203].
There is no reference in the agreed statement of
facts and issues to the application of subsection
41(1) of the Patent Act. Likewise, I cannot find
any reference to the possible application of that
subsection in the rationale of Mr. Justice Kerr's
judgment. This is not surprising in view of the sole
issue before him as set out in paragraph 4 supra.
Coming now to the decision of the Supreme
Court of Canada, Mr. Justice Pigeon delivered the
Court's decision. He commences his reasons by
setting out the agreed statement of facts and
issues. At pages 114-115 S.C.R.; at page 204 of
the C.P.R., he reproduces, with approval, that
portion of the reasons of Kerr J. set out supra. It is
true that he does discuss the impact of section 41,
presumably since that case was a subsection 41(1)
case. However, after that discussion, at page 119
S.C.R.; at page 207 of the C.P.R., he states:
Having come to the conclusion that methods of medical
treatment are not contemplated in the definition of "invention"
as a kind of "process", the same must, on the same basis, be
true of a method or surgical treatment.
In my opinion, this is a clear and unequivocal
statement that "methods of medical treatment are
not contemplated in the definition of `invention' as
a kind of `process' ...". That was the sole issue
before the Court and it is here answered in unmis
takable and unambiguous language. Accordingly,
in my view, the force of that pronouncement
cannot be restricted merely to factual situations
where subsection 41(1) of the Act applies. It fol
lows, therefore, that the Commissioner did not err
in considering himself bound by the ratio of
Tennessee Eastman.
Counsel for the respondent, at the hearing of the
appeal, advanced an additional basis for non-pat-
entability of claims 1 and 2, namely, that claims 1
and 2 are obvious or consist in the application of
ordinary knowledge. In view of my conclusion that
the Commissioner did not err in the basis upon
which he refused those claims, it is unnecessary to
reach a conclusion on the issue of obviousness.
For all of the above reasons, I would dismiss the
appeal with costs.
RYAN J.: I agree.
STONE J.: I agree.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.