“In the response to the PR letter, the Applicant submitted that an improper test of problem-solution was applied in the FA, differing from the guidance provided in PN2020-04. This was also submitted at the first oral hearing. … the Applicant submits that the PAB, and this PAB Preliminary Review, is improperly disposing of the Patent Office’s statutory obligations to issue a valid Office action prior to the Patent Appeal Board undertaking its review. Specifically, Rule 86(5) states that “the examiner must send a notice bearing the notation ‘Final Action’ or ‘Décision finale’, indicating the outstanding defects and requisitioning the applicant to amend the application in order to comply with the Act and these Rules, or to submit arguments as to why the application does not comply” [emphasis in original]. Applicant submits that the failure to provide the Applicant with a notice under Rule 86(5) is contrary to procedural fairness and in violation of the Patent Act. The recent decision of the Federal Court in Choueifaty held that there is no legal basis in Canadian law for using a “problem-solution” approach to claims construction. … Accordingly, the Applicant submits that the legal test and analysis used to object to, then eventually reject, the claims in each of the Office actions of this application, is improper and non-compliant with Canadian Supreme Court of Canada jurisprudence, and the Office’s guidance. The process currently being undertaken by the Board does not provide the Applicant with the original proper notice of the alleged defects in the application in accordance with Rule 86(2) of the Patent Rules, nor does it provide the Applicant with the procedural fairness afforded by Rules 86(5). As a result, the Applicant rejects the validity of the Patent Office’s process of issuing its Preliminary Review, and requests that a notice issued under Rule 86, raising a legally valid basis for objection, be first sent to the Applicant. [60] As presented in the Supp PR letter: after an FA has been written in accordance with Patent Rule 86(5) and the time to respond has expired, the application is sent to the Commissioner for review following Patent Rule 86(7). Once the application has reached the time limitation of the FA, there is no legislative or other means to return to Examination and a review must be conducted. The PR Letter is written by the PAB to inform the Applicant of any new defects or issues, as well as to inform the Applicant of their views on the defects identified by the FA. This ensures any new court decisions and CIPO practices can be considered before a final Commissioner Decision is issued. The Applicant then has the option to provide written submissions, amendments as well as attend an oral hearing before a final recommendation is made to the Commissioner for the Commissioner Decision. In the prosecution of this application, these rules have been followed. After the FA was written by Examination, the application was forwarded for review. The Applicant was informed, via the PR letter, of the issues before the Commissioner of Patents. The Applicant was also invited to submit written responses and attend an oral hearing, both of which the Applicant elected to do. Additionally, as presented above, in light of the commentary of the recently released Benjamin Moore FCA decision, I have reviewed the reasoning presented in the PR letter. I have done this to ensure that the issues, particularly those relating to purposive construction and patentable subject matter, have been fully and properly addressed. Further, to ensure that the Applicant is given full notice of the issues to be addressed, my updated reasoning is presented in this supplemental letter and the Applicant has the opportunity to respond with written submissions and attend an oral hearing. [61] The Applicant did not raise the issue of procedural fairness in the second oral hearing or in the subsequent submissions. Recommendation of the Board [62] In view of the above, I recommend that the application be refused on the basis that the subject matter of the claims on file is prohibited under subsection 27(8) of the Patent Act and is not patentable subject matter as it falls outside the definition of “invention” in section 2 of the Patent Act. Mara Gravelle Member Decision of the Commissioner [63] I concur with the findings of the Board and its recommendation to refuse the application on the basis that the claims on file are prohibited under subsection 27(8) of the Patent Act and the subject matter of the claims on file is not patentable subject matter as it falls outside the definition of “invention” in section 2 of the Patent Act. [64] I therefore refuse, under section 40 of the Patent Act, to grant a patent for this application. Under section 41 of the Patent Act, the Applicant has six months to appeal my decision to the Federal Court of Canada”