The matter came before the Registrar, who upheld only the Examiner's
objection (a).
Applicants appealed this finding to the Jerusalem District Court.
It was common ground between the parties that the invention was for a
regulatory system for fuel supply to a helicopter engine, which reduced
to a minimum the fuel consumption during flight, that the system in fact
reduces fuel consumption by about 10%, and that the essence of novelty
of the invention lay in the computer program which corrects and/or
regulates and thus economizes in the fuel consumption.
The questions for decision were whether an invention is patentable in
which one of the components (in this case an essential component) is a
computer program, and more particularly whether such an invention meets
the criteria for patentability recited in Sec. 3 of the Patents Law.
The Registrar (as Respondent) contended that whereas in the present case
the invention comprised known and novel elements, it was appropriate to
examine the novel element(s) separately in order to determine e.g.
compliance with Sec. 3. Thus, if such novel element was found not to
comply with Sec. 3 because it was merely (for example) a "mental step",
then the invention as a whole would be deemed to be unpatentable.
Respondent further argued that Sec. 3 categorized an invention as either
a product or a process, that the present invention was a process, and
that precedent had established that a process means material treatment
of a substance in order to change its state or shape (In re Rosenthal,
Tel Aviv Appeal 501180, District Court Decisions 1984 (c) 441). By
contrast, the invention of the Application in suit utilized merely
calculations and transference of data and did not result in any change
of shape or structure of any of the components, so that there was no
invention as defined in Sec. 3.
Respondent still further argued that the invention or at least its
essential component was computer software which operated merely an
unpatentable mental process.
Appellants argued inter alia that the invention should have been
examined as a whole and that if so examined it would have been found to
comply with sec. 3.
The Court allowed the Appeal for the following reasons:
(1) The claimed system of physical components + computer program should
have been examined as a whole. The position was similar to a
"combination patent" in which known elements may be combined (in
contrast to a mere collocation of integers) to achieve a uniform
objective having novelty and inventive step. (The majority opinion in
Diamond, Commissioner of Patents and Trademarks v Diehr & Lutton, 209
USPQ 1, which dealt with a similar issue under U.S.C. 103, =A7 101, was
referred to as an appropriate parallel.)
(2) While accepting the Registrar's finding that the computer program
feature in the invention of the Application in suit was sufficient
difference from the invention of Application No. 68408 to justify
refusal to confirm the Examiner's rejection under Sec. 2, nevertheless
this finding did not go far enough. It should then have been ascertained
whether this different invention (as a whole) was patentable under Sec.
3.
(3) The Court rejected the contention that it should be bound by what
it regarded as the narrow definition of "process" in the Rosenthal case.
It was sufficient for the invention to bring about a change in the fuel
consumption, which was a useful end-result. Processing of information