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
AND
IN THE MATTER OF a patent application serial
number 009,100 filed January 4, 1968 for an
invention entitled:
METHOD OF MINING BITUMINOUS TAR SANDS
Patent Agent for Applicant:
Messrs. Gowling, MacTavish,
Osborne & Henderson,
Ottawa, Ontario.
This decision deals with a request for a review by the
Commissioner of Patents of the Examiner's Final Action rejecting
the application.
The Patent Appeal Board has reviewed the prosecution of
this application and the facts are as follows:
Application 009,100 was filed January 4, 1968 in the name
of A.E. Moss and refers to a "Method of Mining Bituminous Tar
Sands".
In the prosecution terminated by the Final Action, the
examiner refused to allow the application on the ground that
it was lacking in inventive ingenuity.
The references cited are as follows:
References Re-Applied:
Publications
The Compacted Snow Road Properties of Snow by R. Eriksson,
1954 National Research Council of Canada Technical
Translation 849 (see page 36)
Influence of Snow Cover on Heat Flow from the Ground by
L.W. Gold August 1958
National Research Council of Canada Division of Building
Research, Research Paper No. 63 (see page 19)
The examiner stated that:
Since method steps (a) and (d) are old and well known,
applicant's alleged novelty must lie in steps (b) and
(c) which recite the covering of the exposed tar sands
with artificial snow. But nature covers these same expos-
ed tar sands with natural snow, so applicant merely
augments the insulating blanked of natural snow.
Applicant specifies artificial snow "having a deposited
density of at least 15 pounds per cubic foot". This is
not a unique property of artificial snow. Nature will
supply snow of exactly the same density. Applicant
recognizes on page 4 of the disclosure, middle paragraph
that "It is known that natural snow coverage acts as an
insulation against frost penetration into the ground".
Applicant uses artificial snow in the same manner for the
same purpose as natural snow. This is an obvious alternative.
Claim 2 adds nothing patentable to claim 1. Natural
weather conditions will also deposit a layer of rela-
tively wet snow on top of relatively light, dry snow.
Claim 3 is rejected for the same reason as claim 2.
Nature will deposit snow to any depth from a fraction
of an inch to many feet. To recites as in claim 3,
"a cover of snow of at least 2 feet in depth" adds
nothing inventive to claim 1.
The cited references are given to refute applicant's
theory that "artificially produced snow cover of a density
greater than natural snow cover provides better pro-
tection against frost penetration than naturally-
occurring snow cover". Even if it were possible to
make artificial snow of a density which natural snow
could not duplicate (and it is not possible) all the
available literature on the thermal conductivity of snow,
of which the cited references are typical, shows that the
greater the density of the snow, the more rapid is the
heat flow through the snow. Applicant has proved nothing
to the contrary. The disclosure does not state the
depth of natural snow in the test area, and therefore
the table on page 8, summarizing the results of appli-
cant's experiments, proves only that a thick layer of
artificial snow will insulate better than a thinner
layer of artificial snow. The table does not show that
artificial snow provides better insulation than a
like thickness of natural snow.
In applicant's letter of October 16, 1970 wherein the
review by the Commissioner was requested, he argued:
The present invention disclosed and claimed in the
above-identified application provides a new and
improved procedure for mining bituminous tar sands
such as those found in the Athabasca region of the
Province of Alberta. This novel method provides
a substantial improvement in tar sands mining
techniques. Specifically, applicant has discovered
that by ccvering exposed tar sands from which over-
burden has been removed with artificial snow, the
frost penetration of those exposed tar sands in
severe cold particularly that normally encountered
during an Alberta winter is substantially reduced.
As a result of this reduction in frost penetration
of tar sands mining those tar sands during the severe
winter is commercially feasible whereas without such
protections efficient operation is more difficult.
In a discussion of the references the applicant stated:
The first reference, a technical publication by R.
Eriksson, discloses on page 36 the measurement of
temperature at different depth levels below the road
surface.
The secondary reference by L.W. Gold provides a
chart wherein the rate of heat flow as compared to
temperature gradient in the lower ten centimeters
of snow cover is provided. Neither of these refer-
ences in arty way relates to nor infers a method of
mining bituminous tar sands nor a method of protect-
ing exposed tar sands from which overburden has been
removed from frost penetration.
The applicant further argued :
As has been stated this term "inventive ingenuity"
seems at best subjective and open to many interpretations.
To the Examiner this invention may not appear to be any
significant advance to the art of mining tar sands.
However to others particularly operating in this
professions it is considered to be of reasonable
significance. It would seem that the Examiner is
setting the standard of "flash of genius" in order for
an invention to be raised to the level which he has
defined as "inventive ingenuity". Applicant cannot
agree that this is the standard required by Canadian
law or even suggested by British law or United States
law. To the contrary each of the statutes in the above-
noted jurisdictions require a "scintilla of invention"
to be necessary in order to merit patentability of
claims to an invention. Although the Examiner has not
deemed the invention in the instant application to be of
patentable merit, based on his interpretation of the
meaning of "inventive ingenuity", applicant submits
that the significance of the present invention is held
differently by others well skilled in this profession.
For example, the editors of the Canadian Petroleum
Journal felt that the invention at issue was of such
significance to warrant a complete four-page article in
the January, 1966 edition of that journal (A copy of
which is attached hereto as Appendix I). The Canadian
Petroleum Journal is a highly respected technical
journal which is supported, contributed to and read
by professional engineers in the petroleum industry.
To the Examiner, this invention at first glance may
appear to be of minor significance and not containing
"inventive ingenuity". However, to highly skilled
professional technical people who are indirectly
involved with the problems related to the mining of
tar sands in Alberta Province as well as to other
technical problems related to the petroleum industry,
this invention is deemed to be of considerable
importance as witnessed by the attention paid in a
respected journal supported by many of these technical
people.
In summary the Examiner has rejected applicant's claims
on the basis that the subject matter does not measure
up to the standards required to warrant protection under
the Canadian patent statutes. The Examiner has sub-
mitted no prior art of significance to support his
allegation that this invention is obvious and does not
contain inventive ingenuity.
Upon review of the grounds for rejection set form by
the examiner, as well as all the arguments presented by the
applicant, I am not satisfied the rejection is well founded.
There are 3 claims in the application at present; claim
1 reads as follows:
A method of mining bituminous tar sands for charging
into a hot water process for separating bitumen from
said tar sands which comprises:
(a) removing overburden to expose said tar sands;
(b) depositing a cover of artificially produced snow
on said exposed tar sands said snow having a
deposited density of at least 15 pounds per
cubic foot;
(c) maintaining said cover of snow to substantially
reduce frost penetration into said sands; and
(d) removing said tar sands for charge into a hot
water process.
The examiner states that,"this application is lacking
in inventive ingenuity" therefore,I find the question to be
decided,does the invention as claimed disclose a prima facie
showing of ingenuity?
The point has been well settled that it is necessary
only that there should be ingenuity exercised in the conception
of the idea or in the method of applying it. See Canadian
Gypsum V. Gypsum Lime and Alabastine Canada Ltd.(1931) Ex.
C.R. 180 at 24.
I find the references are cited only to refute a theory
that "artificially produced snow cover provides better
protection against frost penetration than naturally-occurring
snow cover". However I do not think this is a point at issue
and will require no further discussion.
The examiner has dissected claim 1 in order to show lack
of ingenuity. The question is not whether the individual steps
are new but whether the whole process is novel and the result
of inventive ingenuity. The dissection of a process into the
individual steps and the examination of each step 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 in the whole
process. With respect to this the Court has held,Funk Bros.
Seed Co.v. Kalo Inoculant Co. (1947) 333 U.S. 127 at 134 and
135(*taken from the N.R.D.C. application), "The fallacy lies
in dividing up the process that he puts forward as his invention.
It is the whole process that must be considered and he need
not show more than one inventive step in the advance which he
has made beyond the prior limits of the revelant art."
Here I find applicant has added new steps to the process,
(b) depositing a cover of artificially produced snow on said
exposed tar sands having a deposited density of at least 15
pounds per cubic foot, (c) maintaining said cover to substan-
tially reduce frost penetration into said sands. Does this
process provide a new and improved procedure? I find the new
process has overcome a problem and may well be very beneficial
and of major significance when it is related to open-pit mining
at temperatures to -50øF.
The applicant also states, "the snow can be removed and
discarded, or it can be removed with the sands and charged
into the separation process". In my view no other insulating
substance such as sawdust could be removed with the sands and
charged into the separation process without affecting the
results of the process.
In the circumstance, therefore,I see no good reason to
refuse the grant of a patent. In Vanity Fair v. Commissioner
* (1961) R.P.C. at page 134
of Patents (1939) S.C.R. 245 at 28 the court held; "The Com-
missioner of Patents ought not to refuse an application for
patent unless it is clearly without substantial foundation".
I am satisfied that the applicant has made a prima facie
showing of ingenuity, taking the process as a whole and
keeping in mind that ingenuity can be exercised in the concep-
tion of the idea.
In this respect the Court has held, Lane Fox v. Kensington
& Knightsbridge Electric Lighting Co. (1982) 3 ch. 424 at 428
and 429 (*taken from the N.R.D.C. application); "The inventive-
ness which is essential for the grant of a patent may be found
in the step which consists of suggesting the use of the thing
for the new purpose; notwithstanding that there is no novelty
or "appreciable merit" in any suggested mode of using the
thing...,"
I recommend that the gounds for refusing the application
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 15th day of December, 1970.
* (1961) R.P.C. at page 134