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 l, 1970).
AND
IN THE MATTER OF a patent application serial
number 965,861 filed July 20, 1966 for an
invention entitled:
DISC BRAKES
Patent Agent for Applicant:
Messrs. Fetherstonhaugh & Co.,
Toronto, Ontario.
This decision deals with a request for a review by the
Commissioner of Patents of the Examiner's Final Action rejecting
all the claims of application 965,861.
The Patent Appeal Board has reviewed the prosecution of
this application and the facts are as follows:
Application 965,861 filed July 20, 1966 in the name of
Harold Hodkinson relates to Disc Brakes and particularly to
rotatable brake discs for disc brake assemblies.
In the prosecution terminated by the Final Action, the
Examiner refused to allow the application on the ground that
It fails to define patentable subject matter over the follow-
ing references:
United States Patent 2,380,085 - TACK et al
United States Patent 2,242,855 - FLOWERS
During the prosecution of the application the Examiner
maintained that only expected skill and not inventive ingenuity
was involved in combining two of the several passage openings
disclosed by Tack et a1, to form a brake disc which differs
from the applicant's brake disc only by its lack of reinforc-
ing ribs and inclination of the passages.
The examiner also pointed out that the use of reinforcing
ribs in an air cooled brake disc is old in the art as shown
by the patent to Flowers while inclining the passages is
simply a matter of design choice requiring no inventive
ingenuity.
In applicant's letter of January 7, 1970, wherein the
review by the Commissioner was requested, he argued:
"In the construction disclosed in Figures 1-3 of the
Tack specification openings 16 corresponding to the
second openings 8 of the present invention are formed
in alignment with the openings 16 corresponding to
the first openings 7 of the present invention, and
do not extend into the axially - extending racially
inner surface of the central dished body portion.
Instead separate openings are provided on the inner
surface of the central dished body portion".
Applicant maintains that this causes the plate 8 of the
patent to Tack et al to have reduced conduction cooling compared
with the corresponding part of applicant's disc.
Applicant held:
"Conduction of heat from the plate 8 of Tack's brake
disc has to be through a narrow circuitous path
because the plate 8 is connected to the central body
portion only along the edges of each aperture 18 and
consequently heat cannot be conducted in an axial
direction through the central body portion along a linear
path, as it can in a brake disc in accordance with the
present invention, but initially has to follow a generally
circumferential path through the webs of metal between
the apertures 18 and the edge of the central body
portion.
"Thus the plate 8 of Tack's brake disc is subject to
less efficient conduction - cooling than the corres-
ponding part of a brake disc in accordance with the
present invention and, therefore, stresses arising
from the differential cooling rates of the two sides
of the brake disc, which may lead to cracking of
the disc, are more likely to arise in the disc
disclosed in the citation.
"Further, since the plate 8 of Tack's brake disc is
connected to the central body portion along the
edges of the apertures 18, the assembly is mechani-
cally weaker than a brake disc in accordance with the
present invention".
Applicant continues and points out:
"With regard to Tack's Figure 4 embodiment, it will
be noted that there is no opening formed in the
axially-extending radially inner surface of the
central body portion. Consequently although this
embodiment of the citation provides the plate 108
with mechanical support and a heat conduction path
comparable to that provided in the present invention,
there is no flow of air from the central body
portion through the ventilation passages is a
generally radial direction. All the air flowing
through the passage is forced to change direction
through approximately 90 degrees and this provides
resistance to the flow of air, reduces the rate of
flow and, therefore reduces the rate of loss of heat
from the disc".
In his final argument applicant states that three steps
are necessary to arrive at his disc.
"It is necessary first to combine the disc construction
shown in Figures 2 and 4 of the Tack specification, then
add the reinforcing ribs disclosed in Flowers and made
the further step of inclining the ribs.
"Applicant submits that it is impossible to justify the
Examiner's opinion that the three separate steps out-
lined above are merely a matter of design or choice, as
a considerable period of time has elapsed since the
publication of the cited references and no one has
previously produced a brake disc in accordance with
the present invention".
Upon review of the grounds set forth by the examiner,
as well as all the arguments presented by the applicant I
am not satisfied the rejection is well founded.
Claim 1 of the application reads as follows:
A brake disc comprising a rigid assembly of an annular
outer disc portion and a central dished body portion,
the disc portion having formed therein a series of
ventilation passages extending from a series of
openings formed at the radially outer periphery of the
disc portion to a series of openings formed at the
radially inner periphery of disc portion, each of the ven-
tilation passages extending in a direction which is
inclined with respect to the direction of the adjacent
radius of the disc portion including a series of first
openings formed at circumferentially-spaced positions
in the side of the disc portion axially nearer the base
of the central dished body portion, and a series of
second openings formed at circumferentially-spaced
positions in the side of the disc portion axially remote
from the base of the central dished body portion, the
second openings alternating with the first openings
around the radially inner periphery of the disc portion
and extending into the body portion to provide direct
communication in a generally radial direction with
respect to the brake disc between the central dished
body portion and the ventilation passages, each passage
having at its radially inner end only a first opening
or only a second opening.
The basic reference United States Patent 2,380,085
issued July 10, 1945 to Tack discloses:
In a brake rotor, a substantially cylindrical support
member, a brake ring formed on the outer periphery
thereof and comprising a plurality of spaced plates,
fluid inlets formed in the side of said ring adjacent its
juncture with said member, said inlets communicating
with the space between said plates, the inlets in one
side of said ring being alternately arranged with respect
to the inlets on the opposite side of said ring.
I should like to point out at this time that the question
is not whether the elements are new but whether the combination
of elements, with its arrangements of parts, is novel and the
result of inventive ingenuity. Furthermore it is necessary
only that there should be ingenuity exercised either in the
conception of the idea or in the method of applying it.
The examiner appears to be dissecting the claims in order
to show lack of invention. The dissection of a combination
into its constituent elements and the examination of each
element in order to see whether its use was obvious or not is,
in my view, a method which ought to be applied with great
caution since it tends to obscure the fact that the invention
claimed is the combination.
The applicant submits that his disc makes a considerable
advance in the art by solving the problem of cracking under
heavy braking and supports this assertion by affidavit. The
examiner agrees with this ".... applicant has indeed solved
the problem of cracking under heavy braking ...".
The examiner also has stated that the reasons for
the cracking may not have been obvious. Here I find the
applicant has solved a problem wherein the solution was at
least unobvious. Furthermore, applicant states that discs
of the Tack type have been tested under racing conditions and
were found to be unsuitable in that the disc would crack at
high speeds.
The examiner in his Final Action is basically using the
patent to Tack as a main reference and only uses the
patent to Flowers against claim 4. The examiner did not
specifically use the term anticipation, however the follow-
ing Court decision is of interest: Balwin v. Western Electric
(1934)S.C.R. 94 at 103 "It is well established that for a
prior patent to constitute anticipation, the patent must
disclose the same or give information equal in practical
utility to that given by the patent in question." I am
satisfied that the patent to Tack does not give information
equal in practical utility to that given by this application.
I find that the applicant has produced a new combination
of a disc brake with improvements of: (a) a different
arrangement of parts. (b) inclined ventilation passages.
I am satisfied that the applicant has made a prima facie
showing of ingenuity. The Court has held, the commissioner
of Patents v. Hoechst (1964) S.C.R. 49: 25 Fox P.C. 99:
"The Commissioner should not refuse to allow an
application to proceed to the grant of a patent
unless he is quite satisfied that the subject
matter of the application could not conceivably be
patentable within the meaning of the Act.
I recommend that the rejections against the allowance
of this application should be withdrawn.
R.E. Thomas,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board
and I am therefore setting aside the Final Action and returning
the application to the examiner for resumption of prosecution.
Decision accordingly
A.M. Laidlaw
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 30th day of Novembers 1970.