Population Diagnostics Inc v The Comptroller General of Patents, Designs And Trade Marks

For inventive step, the inventive concept is derived from the claim properly construed, not from an enlarged reading of the specification. The specification may assist construction, but cannot add unsupported features to the claim’s concept. A comparison between copy-number variants identified in an individual and variants found in a control population was obvious where the prior art already disclosed high-resolution screening, normal polymorphic variation and the use of controls to filter such variation. Increasing the control population, including to 1,000 individuals, did not supply an inventive step absent a demonstrated technical advantage. Under the Aerotel approach, an obvious contribution outside an excluded field is not a technical contribution capable of saving an otherwise excluded invention. The claimed method therefore fell within the mental-act and computer-program exclusions.

Population Diagnostics Inc appealed from the Hearing Officer’s decision dated 25 January 2012 refusing patent applications under sections 1(1)(b) and 1(2)(c) of the Patents Act 1977. The applications concerned identifying a copy-number variant relevant to a phenotype by high-resolution genome-wide screening and comparison with copy-number data from at least 1,000 individuals without that phenotype.

The appeal challenged the identification of the inventive concept, the finding of obviousness and the conclusion that the claims concerned excluded matter. The Comptroller also relied on lack of support and added matter. The central issues were whether the claimed comparison and control-population size involved an inventive step, and whether the contribution was excluded as a mental act or computer program as such.

1. Appeal dismissed. The Hearing Officer had correctly treated the appeal as a review and had applied the appropriate appellate approach to a multifactorial evaluation.
2. Applying Windsurfing International Inc v Tabur Marine (Great Britain) Ltd and Pozzoli SPA v BDMO SA, the inventive concept had to be identified from the claim properly construed. The claim’s concept was a method of identifying a relevant copy-number variant by comparing variants found in a phenotypic individual with data from at least 1,000 individuals without that phenotype. The proposed additional features—capturing substantially all polymorphic variants and eliminating a large majority of them—were not present in the claim and were unsupported by the specification.
3. The prior art disclosed high-resolution screening, the problem caused by normal polymorphic variants, and comparison with parental samples or normal controls to eliminate some such variation. It would have been obvious to the skilled team that increased resolution producing more results would call for a larger control population. The selection of 1,000 individuals added no inventive contribution. The claimed invention was therefore obvious over the prior art and common general knowledge.
4. The court considered the excluded-matter issue although obviousness was sufficient to dispose of the appeal. Applying the four-stage approach in Aerotel Ltd v Telco Holdings; Macrossan’s Application, the contribution included a mental act and potentially a computer program as such. Any contribution outside those exclusions was obvious and therefore could not constitute a technical contribution. Claim 1 consequently fell within the exclusions in section 1(2)(c) of the Patents Act 1977.
5. The lack-of-support objection could not be determined if the claim were inventive, and the added-matter issue was left unresolved. The appeal was dismissed.

• High Court (Chancery Division), Patents Court: appeal from the Hearing Officer’s decision dated 25 January 2012; appeal dismissed.