DECISION OF THE COMMISSIONER
UNOBVIOUS: New Combination Not Mere Substitution.
The question is not whether the elements per se are new, but whether
the arrangement of elements in the combination is new and unobvious.
The dancer roll not only performs the known function of storage
but also actuates the switching controlling the intermittent
operation of an advanced section, eliminating the electric eye
scanner of the cited prior art. There is a prima facie showing
of inventive ingenuity in that: "The Commissioner ... ought not
to refuse an application unless it is substantially without found-
ation" (Vanity Fair v. Commissioner - 1939 S.C.R. 245 at 248).
FINAL ACTION: Reversed.
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 981,418 filed January 27, 1967 for an
invention entitled:
MACHINE FOR THE INTERMITTENT PROCESSING
OF A CONTINUOUSLY SUPPLIED WEB, AS IN
THE MANUFACTURE OF BAGS
Patent Agent for Applicant: Messes. Kirby & Shapiro,
Ottawa, Ontario.
This decision deals with a request for a review by the
Commissioner of Patents of the Examiner's Final Action rejecting
claims 1-5 inclusive of application 981,418.
The Patent Appeal Board has reviewed the prosecution of
this application and the facts are as follows:
Application 981,418 was filed January 27,1967 in the name
of A. Schwarzkopf and refers to "Machine For The Intermittent
Processing Of A Continuously Supplied Web, As In The Manufacture
Of Bags".
In the prosecution terminated by the Final Action, the
Examiner refused to allow claims 1-5 inclusive on the ground
that they fail to define patentable subject matter over the
state of the art as evaluated by the applicant in his disclosure
and as shown in the following reference:
Canadian Patent
696,259 Oct. 20, 1964 Hayes et al
In the Final Action the examiner stated:
The rejection of the claims 1-5 inclusive is maintain-
ed and the reason for such rejection is that applicant's
alleged invention as defined in claims 1-5 is obvious
in view of the state of the art as evaluated by the
applicant in his disclosure and as shown by the
citation of record.
Applicant's alleged invention as defined by claim 1
appears to be directed to controlling an intermit-
tently operated section of a bag making machine by
utilizing a movable dancer roll located upstream of
said section to actuate a switch positioned at a
predetermined location. Claims 2-5 all dependent
on claim 1 add further characteristics which do not
alter materially the concept of the invention as
expanded further in applicant's letters of amendment
dated October 15,1969 and April 14, 1970.
In his responses to Office Actions rejecting the claims
the applicant stressed the fact that his alleged
invention comprises a continuously operating section
and an intermittently operated section with a dancer
roll therebetween carrying an actuating element for
a switch ... for energizing the intermittently
operating section in contradistinction to the cited
Canadian Patent where the dancer roll assembly does
not perform such control function and also that
the alleged invention does not reside in the choice
of location of an actuating element, but it is a
basically different concept namely "operation of
the intermittent feed as a result of the condition
of the dancer roll device" which is located upstream
of said feed.
Considering now the state of the art as evaluated
on page 1 of the instant disclosure it will be noted
that controlling an intermittently operated device
by a movable dancer roll actuating a switch is
known and therefore this feature can not be relied
upon to provide a patentable distinction for "basic-
ally different concept" (see above) as argued by
the applicant.
Farther, concerning the cited Canadian Patent 696,259,
this patent shows a machine substantially as claimed
by the applicant i.e. continuously and intermittently
operated sections with a dancer roll assembly located
upstream of the intermittent section but with one
difference namely the controlling function is
performed by a separate scanner and not by a dancer
roll. This difference however, does not provide a
patentable distinction either as it is held that it
would be well within the skill of the art to replace
the scanner in the cited Canadian Patent by a known
arrangement of a dancer roll actuated switch of the
prior art evaluated in the instant application.
The applicant responded on August 27,1970 and stated the
following:
The present invention relates to a machine for the
intermittent processing of a continuously fed web.
In other words, the web is supplied from a previous
machine at a constant speed. However, it is neces-
sary in the present machine to process such web
intermittently. Thus, the web must be halted period-
ically; processed; and then moved forward. During
the period while the web is stationary, the incoming
web will continue, and thus obviously there must be
provision for temporarily storing the excess web.
The invention provides a dancer roll device for
this purpose. Applicant concedes that a dancer roll
device per se is known.
The inventive advance of the present invention is
the arrangement that the dancer roll device, when
it reaches a predetermined position with the web
extended (i.e. when a maximum amount of incoming
web is stored), operates a switch which starts the
intermittent feeding means that are located downstream
of the dancer roll device. The portion of the web
downstream of the dancer roll device is thus moved
forward at a greater speed than that of the incoming
web, so that the amount of web in storage is reduced.
When the intermittent feeding device is again
stopped, the amount of web in storage builds up
again until the action is repeated. In this way,
there is positive provision to prevent any excess
of web in storage; at the same time an adequate
supply of web for the intermittent feeding device
is provided.
The examiner combines with this art the acknowledge-
ment of prior art contained on page 1 of the present
application. He refers to the paragraph beginning
in line 24 on page 1, where it is stated that an
apparatus is known in which a motor drives a "follow-
up device preceding the dancer roll device". The
text goes on to state that this motor is controlled
by the dancer roll. However, as this passage clearly
states,in the apparatus concerned, the motor that
is controlled by the dancer roll device clearly
precedes that device. Applicant cannot see the
relevance of this type of arrangement to the present
problem, which is to ensure that an intermittently
operated device downstream of the dancer roll device
is operated by that device in order to ensure that
the proper amount of web is stored in the dancer roll
device. In other words, when the storage loop
becomes too large, as measured by the dancer roll
devices the motor downstream of that device is
operated to take up the slack. Obviously, a motor
that precedes i.e. is arranged upstream, of the
dancer roll device cannot achieve the same function.
Furthermore, it becomes obvious that the apparatus
referred to on page 1 of the present application
cannot be of the same character, i.e. apparatus
in which there is first a continuously operating
section followed by an intermittently operating
section.
For a combination of references to be a properly
citable combination, it is necessary that the
teachings of the two references, when combined,
should result in the invention that is argued to
be unpatentable over such combination. In other
words, the references must truly combine to yield
the alleged invention. When the two references
relied upon by the Examiner in the present case are
carefully studied in this regard, it will be found
that they are inadequate.
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.
The consideration which must be decided in this application
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 in the conception
of the idea or in the method of applying it
.
Claim 1 of the application reads as follows:
A machine for the intermittent processing of a
continuously supplied web, particularly a bag-
making machine for the manufacture of bags by
transverse heat-sealing and transverse severing
operations performed on a tubing or on a folded,
two-ply sheet web of plastics material, said
machine comprising a dancer roll device preceding
an intermittently operated section of the machine
for storing the incoming web when said intermittently
operated section is stopped, said dancer roll device
carrying an actuating element for a switch located
for operation by said actuating element when the
dancer roll device reaches a predetermined position
with the web extended for starting an intermittent
feeding device in the intermittently operated
section when the dancer roll device reaches such
predetermined position.
The cited Canadian patent discloses a machine having a
continuously fed web which is stored in a dancer roll when
work is being done on an advanced section. The advanced section
is intermittently operated under the control of an electric
eye scanner.
The present invention relates to a machine having a
continuously fed web which is stored in a dancer roll when
work is being done on an advanced section. The advanced
section is intermittently operated under the control of the
dancer roll. In other words the dancer roll not only performs
the known function of storage but also eliminates the need
for the electric eye scanner in that the dancer roll also
controls tree intermittent movement of the advanced section.
The question to be answered is: Is it obvious to delete
the electric eye scanner and have trse dancer roll perform a
dual function of storing the web and controlling the movement
of the advanced section?
It is noted that the dancer roll of this application
receives a continuously moving web and intermittently operates
an advanced section when the dancer roll reaches a predetermined
position without stopping the continuous flow fed to the
machine. In the prior art disclosed by applicant the flow to
the machine was stopped when the dancer roll reached a pre-
determined position. In the cited patent the electric eye
scanner directly controls the advanced section only.
I find that there is positive provision to prevent any
excess of web storage in tha dancer roll from a continuously
fed web; at the same time, there is an adequate supply of web
for the intermittent feeding of the advanced section, which
intermittent feeding is itself controlled by the dancer roll.
In other words there is a control relationship between the
dancer roll and the advanced section of the machine.
I am of the opinion that an advance in the art has been
made, and that it would not be obvious to arrive at applicant's
new combination from the prior art relied upon by the examiner.
I am satisfied that applicant has made a prima facie showing
of inventive ingenuity. The Court has held, Vanity Fair Y.
Commissioner of Patents ought not to refuse an application for
Commissioner of Patents ought not to refuse an application for
patent unless it is clearly without substantial foundation".
I recommend that the rejections, against the allowance
of Claims 1 to 5 inclusive of this application, should be with-
drawn.
R.E. Thomas,
Chairman, Patent Appeal Board.
I concur with the finding 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.