DECISION OF THE COMMISSIONER
OBVIOUS: In view of prior art.
INDEFINITE CLAIMS: Desired Result.
The claims are couched in such broad terms, in this case in terms
oF function or desired result, that they embody the prior art
capable of performing substantially the same function or purpose
and therefore fail to clearly differentiate "what is new from
what is old".
FINAL ACTION: Affirmed.
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 887,933 filed October 30, 1963 for an
invention entitled:
PLANT STIMULATING FLUORESCENT LAMPS
Patent Agent for Applicant:
Messrs. Gowling & Henderson,
Ottawa, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
September 14, 1970 refusing to allow application 887,933.
The refusal of the examiner to allow claims 1, 2, 5,
6 and 7 of the application was based on the grounds that the
claims are indefinite and rejected under Section 36(2) and
prior art.
The Patent Appeal Board conducted a hearing on February
9, 1971. Mr. D. Watson and Mr. D.W. Puttick of Messrs. Gowling
& Henderson represented the applicant. The facts are as
follows:
Application 887,933 was filed October 30, 1963 in the
name of C.J. Bernier and refers to Plant Stimulating Fluorescent
Lamps.
In the prosecution terminated by the Final Action dated
September 14, 1970, the examiner stated that the rejection of
claims 1, 2, 5, 6 and 7 is maintained for the following reasons:
References Applied:
Canadian Patents
461,918 Dec. 20, 1949 Cl. 313-80 Oranje
517,681 Oct. 18, 1955 Cl. 31-83 Hutler (A)
R.J. Downs et al; Comparison Of Incandescent And
Fluorescent Lamps For Lengthening Photoperiods;
Proceedings Of The American Society For Horticul-
tural Science; Vol. 71; 1958; pages 568-578.
British Patent
869,147 May 31, 1961 Henderson et al
United States Patents
2,826,553 Mar. 11, 1958 Cl. 252-301.4 Butler (B)
2,851,425 Sept. 9, 1958 Cl. 252-301.6 Thorington
It is well known that all plants are responsive to
sunlight and particularly those frequencies in the
visible region of the spectrum. The red and blue
bands contain most of the energy and it is therefore
not surprising that plants should be stimulated to
some degree by artificial light which emits these
frequencies. It is also known that growth takes place
by means of photosynthesis through the chlorophyl
found its the leaves and stalks of plants which are
invariably some shade of green. It is an elementary
physical principle that colours are observed because
of reflection and obsorption phenomena and therefore,
since plant growth takes place through the green parts
it is an obvious conclusion that green band frequencies
would have little influence on plant growth. It is
also well known that ultra-violet radiation tends
to destroy living tissue and therefore would be
detrimental to plant growth.
In summary it may be stated that:
(a) ultra-violet frequencies are not beneficial to
plant growth;
(b) red and blue frequencies are beneficial;
(c) plants are inherently incapable of converting
the green band frequencies into useful energy
because of nearly total reflection.
The reference to Downs et al teaches that fluorescent
lamps have previously been used to stimulate plant
growth. The Bibliography in the reference also suggests
that several studies have been made with respect to
spectral composition and light quality and their
relation to plant growth. The reference distinctly
shows triat cool white lamps were used in greenhouses
and also shows the relative energy curve of a cool
white lamp. A study of this curve bearing in mind
the terminology previously described will clearly
indicate that this lamp produces radiation predomin-
antly in the red and blue regions and somewhat less
in the green. It is of course well known that all
mercury vapour fluorescent lamps possess the charac-
teristic of producing very little ultra-violet radiation.
It is therefore held that claims 1, 2, 5, 6 and 7 are
substantially met by the reference to Downs et al,
since they read on Downs et al due to their broad
indefinite negative limitations.
The Orange drawing depicts a light intensity curve
for a warm white fluorescent lamp which is obtained
by multiplication of the energy distribution curve
into the sensitivity curve of the eye. This latter
curve approximates a Poisson distribution (bell curve)
whose limits are 400 and 700 millimicrons with a peak
at 500. If the same mathematical operation was
performed with the relative energy curve shown in
applicant's Figure 2, the result would be a curve
so similar to Orange as to be nearly identical. It
is therefore considered that the fluorescent lamps
under comparison produce output energy distributions
which are equivalent in the red and blue and differ
only slightly in the green.
It is therefore held that claims 1, 2, 5, 6 and 7
are met by Orange and to use such a lamp for stimul-
ating plant growth is obvious in view of Downs et al.
The further references to Butler (A), Henderson et al,
Butler (B), and Thorington have been cited to show
that red and blue emitting phosphors and in particu-
lar red emitting magnesium fluorogermanate and blue
emitting strontium pyrophosphate are well known in
the fluorescent tube art. In addition these references
show that various phosphor combinations to produce
a specific light output is a matter of selecting the
members and their relative proportions.
The Examiner further considers that the broad negative
limitations expressed in claims 1, 2, 5, 6 and 7 are
indefinite and therefore subject to rejection under
Section 36(2) of the Patent Act in view of the prior
art.
In applicant's response of December 14, 1970 he stated
that:
The Examiner has made statements as to what is wall
known without substantiation of those statements.
With reference to the paragraph in the middle of
page 2, while it may be considered that "it is well
known that all plants are responsive to sunlight"'
the Examiner has not established that all of his
statements as to the exact manner in which plants
are stimulated are well known. In particular, he
has not established that such knowledge even if
it exists, has been brought together without
previous knowledge of applicant's invention.
The Examiner is in error in concluding that the
claims are substantially met by the reference to Downs
et al. The mere fact that fluorescent lamps have
previously been used to stimulate plant growth does
not mean that lamps of the particular characteristics
of applicant's lamp have been used. Someone following
the teaching of Downs would use cool white lamps with
wasted energy and indeed including a green component
which would actually be undesirable. It is pointed
out in the present application on the first page in
paragraph 2 that "green light produces an adverse
effect on cell division". Applicant tenders as
Exhibit "A", attached hereto, a graph superimposing
the spectra of Downs et al and Oranje (and including
the definitions of "blue" and "green" cited by the
Examiner) upon applicant's Figure 2. Downs et al
show radiation in the green portion of the spectrum
increasing almost continuously to its maximum.
There is nothing remotely resembling the two distinctive
maxima in the "blue" and "red" portions of applicant's
relative energy curve (Curve A).
The Examiner has also erred in his rejection of the
claims as met by Oranje. Applicant submits an Affidavit,
identified as Exhibit "B", showing that the subjective
sensation is that green is much reduced or eliminated.
The teaching of Oranje is the providing of a warm
white light which gives vivid colours. There is a
slight dip in the distribution curve shown in Figure
1 of the drawings but this dip is still a highly
substantial value between two maxima both of which
(to choose the definition "assumed by the Examiner")
are cleanly either in the "green" portion or adjacent
thereto. No one following the teaching of Oranje
would eliminate the green component. Since the object
of Oranje is to obtain vivid colours it would be
entirely inconsistent with such object to adopt a
light distribution which would make all green coloured
objects appear dark (some almost black) and thus
completely distort the colour rendering of an object.
It is submitted that it is fundamental that the whole
of a reference mint be considered and one is not
at liberty to take things out of context, to
disregard the entire context of the teaching and
make changes with foreknowledge of some subsequent
invention. Applicant has been unable to obtain a
lamp similar to Oranje as an article of manufacture
for comparison purposes.
The examiner has erred in characterizing applicant's
invention as a discovery lacking an inventive step.
It is wsll established that a discovery can help
supply the inventive merit and the mere fact that
applicant has made a discovery does not prevent the
applicant from obtaining protection for inventions
resulting from such discoveries. The claims are
one of two types. One group of claims is for
fluorescent lamps of certain characteristics. There
is also a claim for a method of treating plants.
Both these claims clearly fall within the wording
of Section 2(d) and define inventions and not mere
discoveries.
After careful study of the examiner's actions and the
written and oral arguments presented by the applicant I am
satisfied the rejection is well founded.
This application refers to Plant Stimulating Fluorescent
Lamps. Claim 1 reads as follows:
A lamp suitable for stimulating plant growth
comprising a sealed envelope, a filling of mercury
vapor and inert gas therein, a fluorescent
coating and m ans for stimulating the coating to
fluorescence predominance in the red and blue,
the resultant light being characterized by emission
predominantly in the red and blue spectral regions,
the emission being substantially free from ultra-
violet emission below 3500 Angstrom Units and the
green emission portion of the characteristic being
relatively insubstantial.
At the hearing the Patent Agent reviewed the stand of the
applicant and strassed the point that in his opinion the
rejected claims were in fact proper subject matter and should
be allowed, The demonstration at the hearing using different
lamps did noi, prove much more than the fact that the emissions
from the lames were different.
On page 1, line 13 applicant states: "I have discovered
that a fluorescent ...". Applicant also stated in his action
of December 14, 1970: "It is well established that a discovery
can help supuly the inventive merit and the mere fact that
applicant has made a discovery does not prevent the applicant
from obtaining protection for inventions resulting from such
discoveries". The court was held, Continental Sova v. J.R Short
(1942) 2 C.P.R. 1, "The difference between discovery and
invention has been frequently emphasized, and it has been
laid down that a patent cannot be obtained for a discovery in
the strict sense. If, however, the patented article or process
has not actually been anticipated, so that the effect of the
claims is not to prevent anything being done which has been
done or proposed previously, the discovery which led to the
patentee devising a process or apparatus may well supply the
necessary element of invention required to support a patent."
I note the words "a process or apparatus may well supply the
necessary element of invention ...". Therefore claims which
do not comply with this may not be allowed. A claim which only
claims a desired result must be refused.
The court also held, Bergeon y. Du Kermor 1927. Ex. C.R.
181, "The function or operation of a device as distinguished
from a device itself cannot be made the subject of a patent."
The reference to Oranje teaches a mercury vapour fluores-
cent lamp of the wrm white type. It explicitly teaches a
three phosphor composition whose parts radiate red, blue and
green. It should be noted that the green phosphor is a very
small part of the total.
The reference to Downs et al teaches that fluotrescent
lamps have previously been used to stimulate plant growth.
The Bibliography in the reference also suggests that several
studies have been made with respect to spectral compositions
and light quality and their relation to plant growth.
The further references to Butler (A), Henderson et al,
butler (B) and Thorington show that red and blue emitting
magnesium fluogermanate and blue emitting strontium phyrophos-
phate are well known in the fluorescent tube art.
The applicant stated that the Examiner has given a meaning
to the Word "insubstantial" which is far from the normal meaning
of the term. I agree with the applicant and the normal dic-
tionary meaning is: nonsubstantial or lacking substance or reality.
The court has held, Imperial Chemical Industries V. Commissioner
of Patents (1966) 51 C.P.R. 102 - that a normal meaning of the
words should be used and not some unusual definition.
Applicant stated that there is no substantiation for the
statement "with respect to plant response to sunlight". The
reference to Downs et al is replete with knowledge about plant
response to sunlight and various frequencies in the visible
spectrum.
Applicant has argued that the claims do not have objectional
negative limitations. I find the rejected claims are in fact
broad and indefinite, and in view of this they envelope the
teachings of the prior art. It is well established that a
claim must clearly differentiate what is near from what is old.
The claim must avoid the mistake of being couched in such
broad terms that it will embody both the principle of the
improvement and the prior art (see Bergeon v. De Kermor (1927)
Ex. C.H. at 198). I find that applicant is defining a light
distribution in terms of the presence of certain desirable
components and the elimination of undesirable and wasteful
components. Such characteristics are mere function or desired
result and do not define invention. It is clear that the claims
not merely claim the solution to a problem present in the prior
art, but must explicitly show some real structure which solves
the problem itself. In the present case general fluorescent
lamps do not possess the required output characteristics (a
desired result) and the Inventor has offered a new fluorescent
lamp with a particular phosphor composition which is a real
structure which possesses substance. This is the subject matter
which must be claimed.
Applicant' argued that the reference to Oranje is not
pertinent and supplied an exhibit showing that the green region
is much reduced or eliminated. He also compared the curve of
Oranje to the curve of Figure 2 of this application and deduced
that there is a substantial difference in the lamp outputs.
I find the argument of the applicant to be erroneous with
respect to the curves in that a valid comparison may only be
made when cooparing curves defined by the same units. In order
to do this the curve of Oranje must be treated to a division
by the relative intensity curve of the human eye to obtain a
relative energy curve which may then be validly compared with
Figure 2 of the disclosure.
I find that translating the relative intensity curve of
Oranje into a relative energy curve would produce a curve
similar to Curve B of Figure 2. This curve would then have
a distinct maxium centered in the blue with another maxium
centered in the red and with the green region substantially
supressed; this I submit would meet the conditions as set out
by the applicant when he states, "the green emission portion of
the characteristic being relatively insubstantial". It is
this translated curve which is applied against the claims and
in view of this I do not see how the subject matter of the
claims is inventive thereover.
Applicant desires to have claims in terms of characteris-
tics and feels he should not be restricted to a phosphor
combination. The object of any lamp is to produce a light
output and a claim solely defining an output is a functional
statement and if this occurs at the point of invention then
the claim may be rejected under Section 36(2).
In my view, to stimulate plant growth by artificial light
is not novel (Downs et al); it is also shown that the frequency
distribution is not novel, (the translated curve of Oranje)
and I therefore hold that the claims under consideration are
too broad in view of the prior art and do not comply with
Section 36(2) of the Patent Act.
I also find that the method claims (6 and 7) may only be
implied from the disclosure and they are broader than the
invention disclosed and are therefore subject to further
refection under Rule 25.
While it is not incumbent on me to consider claims which
were presented at the hearing, I note that they are objection-
able for the same reasons used for rejecting claims of this
application.
I recommend that the decision of the examiner to refuse
claims 1, 2, 5, 6 and 7 be upheld.
R.E. Thomas,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board
and confirm the Final Action refusing to allow claims 1, 2,
5, 6 and 7 of this application. The applicant has six months
in which to appeal this decision in accordance with Section
44 of the Patent Act.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 15th day of March 1971.
This is an addendum to the Commissioner's Decision on
application number 887,933 dated March 15, 1971.
On page 3 add the following paragraph before the
~~~~ last paragraph:
Sine claim 3 does not recite a selected range of materials,
it includes all combinations as well as the condition where
the amount of one phosphor is very large with respect to the
other or vice versa. It is therefore rejected as obvious in
view of Oranje and prior common knowledge in the art due to
phosphors and plant growth use.
In view of this the ~~~~ last paragraph on page 2
will now read:
It is therefore held that claims 1, 2, 3, 5, 6 and 7
are met by Oranje and to use such a lamp for stimulating plant
growth is obvious in view of Downs et al.
The second paragraph on page 8 wall be changed to read:
I recommend the decision of the examiner to refuse claims
1, 2, 3, 5, 6 and 7 be upheld.
R.E. Thomas,
Chairman,
Patent Appal Board.
Docision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 19th day of March 1971.