IN THE MATTER OF AN APPLICATION BY THE CANTERBURY AGRICULTURAL COLLEGE FOR L.P. 36327/54

85 REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES 5th March, 1958 1958.] [No.4] IN THE MATTER OF AN ApPLICATION BY THE CANTERBURY AGRICULTURAL COLLEGE FOR L.P. 36327/54. Patent-Manner of new manufacture-Claims for method of increasing wool 5 yield of sheep by administration of certain chemical substances-Claims disallowed. Patents Act, 1949, Sec. 101. The complete specification filed on this application contained a number of claims for mixtures to be administered to sheep, and a further set of claims for improving wool yield by such administration. The Examiner having objected 10 to the last mentioned claims on the ground that they' were not for inventions as defined in Sec. 101 a hearing took place before Mr. J. C. Taylor, Superintending Examiner, acting for the Comptroller-General, who upheld the Examiner's objections. In the decision reference was made to the following cases: C. & W.'s Appli15 cation (1914) 31 R.P.C. 235 ; Rantzen's Application (1947) 64 R.P.C. 63 ; Lennard's Application (1954) 71 R.P.C. 190; and N. V. Philips' Gloeilampenfabrieken's Application (1954) 71 R.P.C. 192; Rau's Application (1935) 52 R.P.C. 362; G.E.C.'s Application (1943) 60 R.P.C. 1. The Hearing Officer's decision was as follows: 20 The Applicant's specification is entitled "Improvements in veterinary com" positions", and is concerned with preparations adapted to be administered particularly to sheep to improve the wool yield thereof, administration being by subcutaneous or intramuscular injection or implantation. Claims 1 to 12 are directed to compositions of matter adapted to be administered 25 particularly to sheep, and I· have not been asked to consider these claims. Claims 13 to 18 are all for a me.thod of improving the wool yield of sheep, and it will suffice that I quote Claims 13 and 15, which read as follows:" 13. A method of improving the wool yield of sheep which comprises adminis"tering to the sheep a composition as claimed in any of the preceding claims. 30 "15. A method of increasing the wool yield of sheep which comprises im"planting subcutaneously or intramuscularly into said sheep a compact and "coherent tablet containing at least 5 mg. but not more than 200 mg. of "L-thyroxine or triiodothyronine or non-toxic salts thereof." Claims 14, 16 and 17 are appendant to one or other of the quoted claims, and 35 Claim 18 is an "omnibus" method claim. ~C 02 PATENTS ACT, 1949. 86 No.4] REPORTS OF PATENT. DESIGN. AND TRADE MARK. CASES [1958.] In the Matter of an Application by The Canterbury Agricultural College for L.P. 36327/54. The Examiner raised the objection that the subject-matter of Claims 13 to 18 was not an invention within the meaning of Sec. 10 1 of the Act, and at the request of the Applicant. a hearing was appointed, and took place on 11th April, 1957. At the hearing. Mr. G. H. R. Watson appeared as Agent for the Applicant. The Examiner supported his objection by reference to N. V. Philips' Gloei- 5 lampenfabrieken's Application (1954) 71 R.P.C. 192, wherein, at lines 16 to 20. on page 194, Lloyd-Iacob, I. said" when ... one can isolate the alleged invention " as a modification of the conditions under which natural phenomena will pursue "their inevitable course, I feel constrained to come to the conclusion that it "would be a misuse of language to hold that that discloses a manner of manu- 10 " facture".. This reported case was concerned with the treatment of a growing plant, and Mr. Watson contended that the conditions referred to must be regarded as referring to climatic conditions. Now. I may say that I do not know of any reported precedent case which is directly concerned with processes for the treatment of animals. The only case 15 of which I am aware which makes any reference to the matter is that of C. & W.'s Application (1914) 31 RP.C. 235 which was referred to by Mr. Watson and from which I propose to quote. The Solicitor-General, who was considering a process for extracting metals from living bodies, and particularly for extracting lead from 20 persons suffc!ring from lead poisoning, said:"So far as human beings are concerned, it cannot be suggested that the " extraction of lead from their bodies is a process in any form of manufacture or " of trade, though the human being may be a better working organism when the " lead is extracted. "Then it is said it might be applied to other animals. That is so. but, in 25 " my view, that is not what the specification contemplates; if it were an applica"tion simply for the use of the process for the purpose of removing lead from "animals in order to make them better marketable products, it might be that "different considerations would apply. My judgment is not intended to exclude "any such application; it is merely intended to cover this. that the application 30 "of a process for the removal of either lead or other noxious substances from "the human body is not, by itself, the subject-matter of invention within the "meaning of the Statute. I notice that the Patent Office have based their refusal " upon the ground that the alleged invention relates simply to medical treatment, "and I think that the foundation for that refusal is sound". 35 Finally:"For the r~asons I ~ave given I think that th~s appea~ should fail. I repeat, "if the Applicant deSIres to apply for somethmg apphcable to merchantable " articles like sheep and cows. that may be the subject of different considerations". These remarks on animals were obiter, and it has for many years been the 40 practice of the Office to refuse the grant of patents for processes covering merely the treatment of animals. whether for the purpose simply of curing an illness, or of increasing their commercial value, or of stimulating or altering a product of their metabolism, such as milk or other secretion, or, as in this case wool. (It may be noted that ~part .fro~ increasing the wool yield of the anm;al, the 4S method of treatment claImed IS saId to have the effect of reducing fat production. with the result that the animal after use for wool production may be of increased value for slaughter.) Again, I am not aware that this practice over the years has ever seriously been challenged. Mr. Watson, however, submitted that the time had come for 50 the position to be reviewed. particularly in view of the increasing trend of research 87 [1958.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No.4 In the Matter of an Application by The Canterbury Agricultural College for L.P. 36327/54. into matters analogous to the present process. He also put forward the following considerations(1) the inclusion in a process of manufacture of a step of treating an animal is not automatically a bar to the grant of a patent. This is true; the production 5 of vaccines and sera, for which patents may be granted, almost inevitably involve the treatment of an animal. (2) following the decision in .the matter of G.E.C.'s Application (1943) 60 RP.C. I, the term" vendible product" (...truncated)