The Commissioner's decision in Amazon.com (discussed above) gave rise to a new form of non-statutory subject matter objection being raised against diagnostic method claims under Section 2 of the Patent Act, which defines "invention." In these new objections, patent examiners apply a "contribution analysis" approach to determining patent-eligible subject matter, wherein a claim is first dissected into its individual steps, and each step is subsequently assessed to determine where the inventive contribution lies over the prior art. If the contribution is deemed by the Examiner to lie in a step that is considered non-statutory subject matter, such as an alleged mental process or mathematical assessment, then the entire claim is rejected as non-statutory subject matter.
In practitioners' minds, this "contribution analysis" approach seemed to contravene the well-established practice of purposive claim construction, where a claim is to be considered as a whole. The Federal Court's decision appeared to confirm that the principles of purposive construction still apply. Yet, despite the Federal Court's decision, "contribution analysis" objections continued to be raised in diagnostic method cases. Thus, the FCA decision was highly anticipated amongst members of the profession.
The FCA decision confirms that the "contribution analysis" approach should not be followed and that purposive construction should be applied to all patent claims, as discussed in the previous article. However, the FCA did not expressly rule out the application of the principles from Schlumberger,1 which was decided almost thirty years ago.
In Schlumberger, claims directed to a process where measurements obtained in oil and gas boreholes were recorded, transmitted to a computer programmed according to specific mathematical formulae and converted into useful, human-readable information were considered to be a "mere scientific principle or abstract theorem", as the Court concluded that the only novel aspect of the claimed invention was a mathematical formula. As such, the claims were directed to non-patentable subject matter.2
In Amazon.com, the FCA refrained from construing the claims as it did not have enough information to make such a determination on the record. However, the FCA provided some general guidance in this regard: Schlumberger may not be distinguishable if, on a purposive construction, the only inventive aspect of the claimed invention is the algorithm, but if the algorithm is but one essential element in a novel combination, then the claim consists of patentable subject matter.3 This tension between the principles in Schlumberger and Whirlpool could be due to their respective contexts: Schlumberger dealt directly with patentable subject matter, while Whirlpool dealt with construction for an infringement and validity analysis. However, it is arguable that the principles set by the SCC in Whirlpool should be used as the definitive statement of patent construction, as it is both a statement from a higher court and was more recently decided.
In any event, it is presently unclear how the Commissioner will apply the FCA's decision to the claims at issue in the Amazon.com case, and equally unclear how the decision will be applied to diagnostic method claims in general. For the meantime, the FCA's reasoning will at least provide further ammunition for practitioners when arguing against "contribution analysis" objections in diagnostic method cases.
Footnotes
1 Schlumberger Canada Ltd. v Canada (Commissioner of Patents), [1982] 1 FC 845 (FCA).
2 Ibid at para 5; Amazon.com-FCA, supra at para 62.
3 Amazon.com-FCA, ibid at para 63.
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