B.Computer Programs

In The Matter Of Application By Fujitsu

(U.K.) Supreme Court of Judicature

(1997) EWCA Civ.1174

ALDOUS,L.J.

This appeal raises,not I expect for the last time in this Court,the question of whether a patent application falls within the ambit of Section 1(2) of the Patents Act 1971 and is therefore excluded from being a patentable invention.

On 6 March 1992,the appellants,Fujitsu Ltd.applied in this country for a patent claiming priority from a Japanese application.The application was published under No.2254458A,but was objected to by the Examiner upon the ground that it related to a method for performing a mental act and to a programme for a computer and therefore was excluded by Section 1(2)C of the Act.That view was upheld,after an oral hearing,by a Principal Examiner.The appellants appealed.Their appeal was rejected by Laddie J.Against his judgment and Order the appellants appeal.

[Section 1 of the Patents Act 1977 defines what are patentable inventions in subsection (1) and what are not in subsection (2) which read in relevant part: “(2)It is hereby declared that the following (among other things) are not inventions …(c) a scheme,rule or method for performing a mental act,playing a game or doing business,or a programme for a computer; …”

Fujitsu’s application is entitled“Method and Apparatus for Creating Synthetic Crystal Structure Images.”At the heart of the invention is a method for modelling a crystal structure for use in designing inorganic materials in the fields of chemistry and physics.The basic idea utilises a computer programmed so that the operator can select an atom,a lattice vector and a crystal face in each of two crystal structures displayed on the display unit.Upon instruction the computer,using the selected requirements,converts data representing the physical layouts of the two crystal structures into data representing the physical layout of the crystal structure that would be obtained by combining the original two structures in such a way that the two selected structures are superposed.The resulting data is then displayed to give a picture of the combined structure.

The crystal structures are those of semiconductors and superconductors.Thus a scientist wishing to investigate what would result if he made a new material consisting of a combination of two existing compounds would enter data representing each of those compounds into the computer.The structure of the two compounds would then be displayed.The operator then selects how they should be joined by selecting the relevant atom,the lattice vector (atomic bond) and a plane.The computer then generates and displays the new structure using the data supplied.

The specification opens with a general statement that:“Conventionally,the modelling of a crystal structure of an inorganic material is carried out by operations of assembling a plastic model of structure elements and tracing the assembled structure.In this conventional modelling of the crystal structure,as an operator actually assembles the plastic models of the structure elements by hand,the assembly is hard for the operator.”]

The specification then sets out the consistory clauses which show that the invention is claimed both as a method and as a computer apparatus.The relevant claims are:

1.A method of processing first and second images representing first and second crystal structures to produce a third image representing the structure of a synthetic crystal structure,the first and second images being stored as respective first and second sets of data items,the first set of data items representing,in a first coordinate system,the plurality of atoms and lattices in the first crystal structure,and the second set of data items representing,in a second coordinate system,the plurality of atoms and lattices in the second crystal structure,which method comprises the steps of:

using the computing means for selecting a pair of crystal faces,one from each of the first and second crystal structures,having respective mutually-similar arrangements of atoms,and,for each crystal face of the selected pair,selecting an atom and a linear array of atoms in the face;

using the computing means to transform the second set of data items to produce a third set of date items representing,in the said first coordinate system,the respective atoms of the second crystal structure arranged so that the selected atom of the second crystal structure can be superposed on the selected atom of the first crystal structure and so that atoms of the selected linear array of the second crystal structure can be superposed respectively on those of the selected linear array of the first crystal structure,and so that the selected crystal faces then coincide in a common plane,the remaining atoms of the second crystal structure being located to one side of that plane whilst the remaining atoms of the first crystal structure are located to the opposite side of that plane;

using the computing means to combine the first and third sets of data items together to produce the third image as a representation of a crystalline combination of the said first and second crystal structures; and

using display means of the computing means to display the resulting third image in a form by which the physical properties of the crystalline combination can be studied.

9.A method of manufacturing a structure which is a crystalline combination of two crystal structures,the method comprising an investigation of the effects of combining the two crystal structures using a method according to any one of the preceding claims.

10.A computer apparatus for creating a computer image of a synthetic crystal structure formed of a first crystal structure having a plurality of atoms and lattices and a second crystal structure having a plurality of atoms and lattices,said apparatus comprising (means for storage,selecting,specifying,transforming,displaying,etc.)

The Principal Examiner held that the invention amounted to no more than a programme for a computer and also was no more than a method of performing a mental act.It was therefore excluded by Section 1(2)(c) of the Act.

The Judge concluded that the claims in form were not to a computer program as such,but that:

In this case,Fujitsu’s application leaves it to the operator to select what data to work on,how to work on it,how to assess the results and which,if any,results to use.The process is abstract and the result of use of it is undefined.What is produced is not an inevitable result of taking a number of defined steps but is determined by the personal skill and assessment of the operator.As such it consists in substance of a scheme or method for performing a mental act and is unpatentable.

Does the application consist of a program for a computer as such?

…

There is only one invention.The fact that it is claimed as a method,a way of manufacture or an apparatus having appropriate features is irrelevant.Further there is no dispute as to what the invention is.In summary it uses a computer program so that an operator can select an atom,a lattice vector and a crystal face in each of two crystal structures displayed.The computer,upon instruction and using the program,then converts data representing the physical layouts of the two crystal structures into data representing the physical layout of the structure that is obtained by combining the original two structures in such a way that the selected atoms,the selected lattice vectors and the selected faces are superposed.The resulting data are then displayed to give a picture of the resulting combined structure.Clearly the whole operation revolves around the computer program and the question for decision is whether there is a technical contribution so that it cannot be said that the invention consists of a computer program as such.

Mr.Birss put forward two grounds for concluding that the application included a technical contribution.First,relying on Vicom, he submitted that the technical contribution was provided by the processing of real images or structures.I have already concluded that Vicom does not support so rigid a view.Thus this submission must be rejected.Second,he submitted,that the application provided a new tool for modelling crystal structure combinations which relieved the chemist of the laborious task of building a model.It provided a solution to the problem of providing a quick and error free way of creating real images of two crystal structures joined together.

I believe that the application is for a computer program as such.I agree in general with the reasons of the Principal Examiner which I have quoted….In the present case the combined structure is the result of the directions given by the operator and use of the program.The computer is conventional as is the display unit.The two displays of crystal structures are produced by the operator.The operator then provides the appropriate way of superposition and the program does the rest.The resulting display is the combined structure shown pictorially in a form that would in the past have been produced as a model.The only advance is the computer program which enables the combined structure to be portrayed quicker.

I conclude that the application does not relate to a patentable invention as it is excluded by Section 1(2)(C) as being a program for a computer as such.

Does the claim consist of a method of performing a mental act as such?

The fact that a patent application consists of a program for a computer does not mean that it does not also consist of a method of performing a mental act.The contrary is not true.In this case the computer program is the result of intellectual input,but whether the claimed invention,which incorporates operator control,consists of a method of performing a mental act as such is doubtful.As there is no need to decide this issue,I conclude that an in-depth analysis is best left to be dealt with on another occasion.However,in the light of the submissions of Counsel I will set out my views on the point of construction that was argued.

Mr.Birss submitted that the words“a method for performing a mental act”in Section 1(2)(c) should be construed as only covering methods which the human mind carries out.They should not be construed to include the sort of acts which a human mind could do.If so,the Fujitsu application was not excluded as it related to a specific way of modelling crystal structures not carried out by the human mind.

Mr.Silverleaf Q.C.who appeared for the Comptroller submitted that the narrow construction sought to be placed upon the words“for performing a mental act”was wrong,contrary to authority and involved reading into the Act words such as:“as done by the mind”.

There are good reasons to reject the narrow construction.First,a decision as to whether an invention is patentable as consisting of a method of performing a mental act as such should be capable of determination without recourse to evidence as to how the human mind actually works.If it were to the contrary,the section would pose an extremely difficult problem.Second,the narrow interpretation appears to introduce a consideration of novelty which is covered in Section 1(1)(a).Third,the words used as“a mental act”suggest any mental act whether done before or not.

Mr.Birss submitted … that it was not possible to perform a mental act using a computer and a claim to a method of using a computer could not be a claim to a method of performing a mental act.As a matter of semantics that may be right,but as has been made clear in Merrill Lynch and Gale,it is necessary to look at the substance of the application when dealing with the question of whether it is patentable.A claim to a computer operating in a particular way is no more patentable than a claim to a computer program.A claim to a method of carrying out a calculation (a method of performing a mental act) is no more patentable when claimed as being done by a computer than when done on a piece of paper.Methods of performing mental acts,which means methods of the type performed mentally,are unpatentable,unless some concept of technical contribution is present.

The task of arriving at the conclusion I have reached,namely that this appeal should be dismissed,has been made easier by the clear and pertinent submissions of Counsel.