BRITISH PETROLEUM COY. LD.'S APPLICATION FOR A PATENT

253 [1958.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No. 10 British Petroleum Coy. Ld:s Application for a patent. PATENTS ApPEAL TRIBUNAL. Before MR. JUSTICE LLOYD-JACOB. 11~ and 12,tIh October, 1956, and 19th and 20th March, 1958. BRITISH PETROLEUM COY. LD.'S ApPLICATION FOR A PATENT. S Patent-Method or process of testing-Claim for a method of surveying strata surrounding a bore hole-Objection by the Examiner that the claim was not for an invention within the meaning of Sec. 101 of the Act-Claim disallowedAppeal to Tribunal-Appeal dismissed-Tribunal endorsed the decisions appealed against and confirmed that if the specification were to proceed to grant it must 10 not include a claim to a method or process of testing. Held, that a new apparatus for taking readings hitherto obtainable by other means does not constitute a new method or process of testing merely because the results when obtained can be applied in known manner to secure valuable data. Patents Act, 1949, Secs. 4 (3) and 101. Reference was made by the Superintending Examiner to G.E.C:s Application (1943) 60 RP.C. 1 ; R.H.F:s Application (1944) 61 RP.C. 49 ; Cementation Coy. Ld.'s Application (1945) 62 RP.C. 151; Rantzen's Application (1947) 64 R.P.C. 63 and W.L:s Application (1924) 41 RP.C. 617. Lloyd-Jacob, J., referred to Virginia Carolina Chemical Corpn.'s Application at [1958] RP.C. p. 37 lines 11 20 to 13. Observed, Manufacture in Sec. 101 means" The making of an article or material 15 by physical labour or applied power". llhe Examiner having objeoted that Claim 1 did not I1ela~e to an inveIlftion as defined in Sec. 101, the matter came up for hearing on the 15th of May, 1956. 25 In a dooiSli:on dated 20tJh June, 1956, Mr. W. E. Watts, Superintending Examiner. aoting fur iIlhe Comptroller-General, refused 110 pro<ceed w~th the applicatio<n unless CLaim 1 was deleted. His deais~on Wlas as £oHows : "This is a ca:se in which the Examiner objeoted tlhat the invention claimed in "Claim 1 is not an invention wrilthrin the meaning of the definition contained in 30 "Sec. 10 1 of the Act." O~aim 1 reads as foHows:" A method of logging boreho~es, comprising having a pair of conduotors, one "of which may beea'l1t1h, between the surface of <the gro<und and a borehole "1ogging instrument, supplying power along one o<f the oonductors to the logging 35 "instrument and1Jo a val1i.aJ~e impedance device oonnected between the conduotors, "feeding the output signa,l from the logging instrument to the device so as to " alter i'ts impedance in pmportion to the magnitude of the signal, and measuring " at the surface of ,the ground tIh'e resultant changes in the power being supplied "down the bOI1e hole." 40 There are twelve other olarims but these are directed to tihe apparatus for measuring the output slignM f[lOm a borehole logging instrument and no objeotion to them has been raised. l1he invention is ooncerned w~th electrioal surveying or " logging" of boreholes in order to seou[le informaitlion as to the nature and fluid oontent of the strata 45 penetrated by a borehole. H is pointed o<ut that in carrying out such surveying 86569 2Z2 254 No. 10] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1958.] British Petroleum Coy. Ld.'s Application for a patent. in accordance wirth the usual procedure, uhe logging instrumenrt is suspended by at least four conduato['S, two bedng usootJo supply power to t'he instl"lUllllent and two to convey the signal from t1he in~rument tJo the slllfface of the ground. The use of such a cable hasaJ1Jtendan:t disad¥antages and the objoot of the invention is to enable eleotrical logging tlo be ollirllied oUit by using only tWlO oonooc1J01's 5 ~one of which may be earuh). Briefly tlhe apparatus in~olves a oonSitant ou];rent A.C. generator B wIlNch forces a oonstant current in series through a. conductor C, valve V, an e1ectl'lode PI of a I'eslilStJivilry Logging instrument D and a return ~arth circuit. The currenrt whiJdh passes tIh:rough the eart:h ciroulirt creates between eleotrodes P2 P3 of the instrumenrt D, a difference of potential which depends on 10 the res~stance of the surnoun~ng rock formation and t1his potenuial difference :is applied via a step-up transformer T 110 t1he grid of the wIve V. 11he impedance of the valve V is varied by ohanges of poltJential difference between the electrodes P2 P3 and thus the voll1age aiS read by the ",o1tmelte!r E, required to drlive tlhe constant current ro>und the circuit p11Owde8 a measure of uhe resistance and 15 therefore the nruture of the rock formation sU!IJ'ounding the Logging in:strument Various modification:s are referl1ed to in the desOl1iption bUll: for t1he purposes of 11hi:s decision detaliled reference tlhererto i:s nort necessary. The ma'tter oame before me for heaI1ing on 15th May, 1956, when Mr. Woolard appeared as Agent for the ApplicanllJs. Mr. Milne was also p['esent 20 In raising tlhis matter the EXiaminer J.1eferred to R.H.F.' s Application reported at (1944) 61 R.P.C. 49. Mr. Woolard submii1J1Jed b t C}a[ill 1 is a claim to a pl10cess of teSiting whiah is applioab le to the impJ.1Ovemenrt or oonl1!l101 of manufacture and as such faUs within the meaning of Sec. 101. He argued thirut tlhe mere recovery at the sutfuce of the 25 gl'Ound of crude oil, a ~oduct which he sarid ohanges its p110pel1bies during recovery, :should be regrurded as a manufacturing p!.1ocess and one which is conrtl'OUable in aocordanoe w~tIh the results of the tests oM"IIied out by t1he method claimed. He mainrtarined 1lb!rut suohtests give vaIuaible inroJ.1martlion regarding the eJctient and the pl'oductlive dhiamctel1isrtJios of an oil field wirth ~he minimum of 30 exploratory drilling. He referred t!O a number of specifi'cwtions, already accepted by t1he Office which he ruHeged shiow thirut tihe Office has paiSISed similar " method .. c1a,im. These ca:ses are Spooifi,oatlions 747,927, 746,114, 726,838, 696,524, 672,789 and 672,403. Mr. Woolard offered to revlise t1he Wlording of t1he dalim jf i,t is rega'rded as not olear and, if required, t10 limit the cla~m to a method of pl10specting 35 for oil pl1oducts. After giving this maroter carefUil oon:side];rutJion I have decided that I am unable tlo allow the apptioaMon 110 proceed ,tlo acceptance whilSit C1ruim 1 is inoluded. As I see it, 11he claim is mer,e1y a claim tJo a method of surveying boreholes by appJying power to a partiouLar arnangement of elootvioal appal1rutJus (Ij)he novelty 40 of whioh however is not questliioned), wnd as a result obtMning information ooncerning the stralta pene1Jl1rutJed. Dills["eganling for the moment the second limb of Sec. 101 of the 1949 Act viz. "any new method or process of testing applicable " iIIo the impiiovement or oontrol of manufacture ", and dealing w~th the definition "manner of new manufacture", I take the view that the metlhod claimed does not fulfil C\!ny part of t1he rule strutJed by Morton, .T., in the case of G.E.C.'s Application (...truncated)