DECISION OF THE COMMISSIONER
IN THE MATTER of a request for a review by
the Commissioner of Patents of the Examiner's
Final Action under Section 46 of the Patent
Rules (Prior to the Amendment by Order-in-
Council P.C. 1970-728 effective June 1, 1970).
AND
IN THE MATTER of a patent applacation serial
number 971,145 filed September 23, 1966 for
an invention entitled:
METHOD AND APPARATUS FOR WORKING WOOD
Patent Agent for Applicant: Messrs. Marks & Clerks,
Ottawa, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
May 7, 1970 refusing to allow application no. 971,145. The
request was made in accordance with Section 46 of the Patent
Rules.
The facts are as follows:
The application relates to a Method and Apparatus for
Working Wood and was filed September 23, 1966 with a Swedish
convention date of September 24, 1965. The invention is
defined in the two claims in the application as follows:
A process for sawing wood logs comprising; successive
feeding of the log irrespective of quality and size,
radioscopically detecting the internal quality and
external configuration of said logs, photoelectrically
detecting the smallest dimension of said logs, feeding
the quality and dimensional information to a computer
memory; computing the proper positions of successive
adjustable saws in accordance with said quality and
dimension information; adjusting said saws in accordance
with signals from said computer; and sawing the logs
with said saws; whereby said logs are sawed to get the
maximum yield of usable lumber consistent with the
quality and dimensions of the initial wood object.
A plant for sawing wood logs comprising conveyor means
for carrying said logs successively; means for radio-
scopically detecting the internal quality and external
configuration of said logs, means for rotating said
logs for aligning, photoelectric means for detecting the
smallest dimensions of said logs; computer means; means
for feeding quality and dimensional signals to said
computer form said radioscopic and photoelectric detect-
ing means; adjustable saws for sawing said logs; and
means for adjusting said saws in accordance with said
quality and dimensional details.
Correspondence ensued between the applicant and the
examiner with the examiner rejecting the originally filed
seven claims on the ground that they lacked inventive ingenuity.
In response the applicant traversed the rejection and argued
that the absence of prior art suggested the presence of novelty
and ingenuity.
The examiner then took the stand that an important element
of the invention was not fully described and further objected
to the use of the term "quality" as not being sufficiently
defined. The applicant expressed the view that the element
in question (radioscopic device) would be readily available
to the person skilled in the art and therefore no further
description should be required.
The examiner followed this with an action on February 12,
1970 in which he reiterated the previous objection to "quality"
and "radioscopic device" and further rejected the application
under Section 36 of the Act for insufficiency in that a suitable
computer was not described and the photoelectric sensing means
was not supported by the disclosure. The examiner took the
stand that failure to insert descriptive matter in regard to
these elements would result in the disclosure being held
contrary to Section 36(1) of the Act.
The applicant responded by amending the disclosure to insert
identification of the radioscopic device in the manner suggested
by the examiner, and also defining the computer.
On May 7, 1970 the examiner issued a Final Action under
Section 46 of the Patent Rules (prior to amendment by Order
in Council P.C. 1970-728 effective June 1, 1970). The
application was rejected for insufficiency of disclosure with
respect to detecting means 4, radioscopic device 7, photoelectric
means 11 and computer 12 and also that the term "quality" was
not defined. The examiner took the stand that the expanded
descriptive matter (page 2 line 30 to page 3 line 6) inserted
by the previous amendment was new matter and held that the
attempt to identify a suitable computer was vague and mis-
leading. The applicant was also required to provide full
identification of the various detecting elements.
On August 5, 1970 the applicant requested a review of the
rejection by the Commissioner. The applicant argued that the
examiner had first taken the stand that the computer could
be a well known computer whereas in a later Action he rejected
the application as not describing a suitable computer.
Argument was also advanced that "quality" was a term which
would be understandable to a person skilled in the art and
that although the devices 4, 7, 11 and 12 were not described
in detail in the original disclosure it was felt that such
detailed description was unnecessary for a person skilled in
the art. It was indicated that a list of the various parts
was being prepared and the list was submitted on September
24, 1970.
A hearing was arranged and held before the Patent Appeal
Board on November 3, 1970 with Mr. George Seaby representing
the applicant.
Mr. Seaby argued that "quality" was an accepted term to
one skilled in the art and submitted copies of two articles
"Guiding Principles for Grading of Swedish Sawn Timber Redwood
and Whitewood" and "Directions for the Measuring of Roundwood"
which made it clear that "quality" means the interior and
exterior characteristics of wooden objects.
It was argued that detecting means (element 4) would be
readily available to persons carrying out the invention and
examples of the use of such detecting means was given. It
was arbued that x-ray scanning by a radioscopic devise (element
7) could be readily used by a person skilled in the art. It
was pointed out that photoelectric devices (element 11) are
well known and their use in the present invention would
present no difficulty to a person skilled in the art. Finally
it was argued that the selection and programming of a computer
to perform in the required manner would not involve the exercise
of the inventive faculty.
I have studied the prosecution and carefully considered
the written and oral argument by the applicant and its
representative and also the oral argument by the director
of the Mechanical Division and I find that this invention is
one which requires a large amount of technical knowledge and skill
to put into operations, however the exercise of such knowledge
and skill is not inventive. In my view the original disclosure
could have been drafted in such a way as to better describe
the elements entering into the invention but since each of
the elements was known at the time of filing I see no objection
to expanding the description as was done in the amendment
dated April 13, 1970.
The view was expressed by the Examiner that the informa-
tion submitted in applicant's letter of September 24, 1970
should properly have been inserted in the disclosure in some
comparable form. I do not find such a requirement in the
Final Action and in my view the information was submitted for
the purpose of convincing the examiner that the various elements
were in fact known and available and I do not feel that
such restrictive information is required in the disclosure.
In regard to the use of the term "quality" in the claims,
I am satisfied, as a result of applicant's submission, that
this term has a definite and well known meaning in the lumber
industry and should therefore be acceptable.
I find, that the disclosure is sufficient to support the
two claims in the application and therefore the examiner's
refection should be reversed.
R.E. Thomas,
Chairman,
Patent Appeal Board.
I agree with the findings of the Patent Appeal Board and
direct that the application be remanded to the examiner for
further action.
Decision Accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario
this 20th day of November, 1970