DECISION OF THE COMMISSIONER
AGGREGATION: No functional interrelation.
A sun-bathing enclosure providing a light reflecting ceiling
and lamps to illuminate the ceiling, lamps mounted to
simulate sun's rays and lamps providing UVB radiation over
the base area, each simulating natural phenomena of sky,
sunlight or radiation, without inter-relationship with one
another so as to produce a unitary result , is merely an
aggregation of the several results produced by the respective
elements.
FINAL ACTION: Affirmed
IN THE MATTER OF a request fro 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 999,637 filed September 8, 1967 for an invention
entitled:
ARTIFICIAL SUN-BATHING ENCLOSURE
Agent for Applicant
Messrs. Gowling & Henderson,
116 Albert Street,
Ottawa 4, Ontario.
This decision deals with a request for review by the Commis-
sioner of Patents of the Examiner's Final Action dated November
24,1970 refusing to allow the application.
The Patent Appeal Board conducted a hearing on April 22, 1971.
Mr G.C.A.Macklin and Mr. D. Puttick represented the applicant.
The facts are as follows:
Application 999,637 was filed on September 8, 1967 in the
name of H,R. Ruff et al and refers to "Artificial Sun-Bathing
Enclosure" .
In the prosecution terminated by the Final Action dated
November 24, 1970 the examiner refused the application on the
grounds that the application sets forth no more than a mere
unpatentable aggregation of component unit which are shown to
be well known in the reference cited. Further, no inventive
ingenuity is involved since applicant has merely brought together
a number of known components to simulate a naturally occurring
phenomenon .
The prior art cited is as follows:
Canadian Patents
648,088 Sept.4,1962 C1. 135-1 Dwgs 2 shts Bird
649,479 Oct. 2,1962 C1. 135-1 Dwgs 1 sht Peddell
619,168 Apr. 25, 1961 C1. 240-112 Dwgs 2 shts Stahlhut
568,939 Jan, 13, 1959 C1. 240-37 Dwgs 2 shts Frizzell
709,727 May 18, 1965 C1. 240-34 Dwgs 3 shts Cramer
Westinghouse Lighting H.B. 1958 Copyright, Chapter 15
(available Room 420 Canadian Patent Office)
The examiner in this Final Action maintains that the applican~
discloses and claims no more than an unpatentable aggregation
of readily available component units each of which has been selected
for its well known capabilities of producing a separate one of
the constituent effects of the well understood phenomenon of natural
sun-bathing. Further in the selection and aggregation of the
units no demand for any inventive ingenuity was required and
none exercised since each of the units had only to be appropria-
tely juxtaposed and used in their normal manner such that their
coextensive effects could be simultaneously experienced and
"recognised", by a person within their vicinity, as a simulated
sun-bathing effect.
The examiner also argued that a new combination having a
new unified unexpected result has not been disclosed since the
alleged invention has as its object, the artificial simulation
of the well understood phenomenon of sun-bathing, and clearly
consists of three separate effects.
1) Lamps shining downwardly from a matte ceiling to
give the illusion of the sun's rays.
2) Blue lamps reflecting off the same ceiling to create
the illusion of a sky.
3) UVB lamps reflecting off the matte ceiling to
provide uniform tanning.
It is to he noted that items 1 and 2 are each directed to
separate and distinct illusory effects and item (3) alone
accounts for the tanning effect. Items 1, 2 and 3 are each
separately met by separate pieces of art. A fourth item
consisting of an air inflated enclosure is also met by separate
art.
Applicant's request for review under Rule 46, dated
February 24,1971 appears to center on the stand that a
combination giving rise to a single synergistic sun-bathing
effect has been achieved.
Applicant also raised the issue as to whether Chapter 15
of the Westinghouse Lighting H.B. hers been properly applied
regarding the use of UVB lamps in the manner disclosed, i.e.,
reflecting UVB radiation off a matte ceiling to provide uniform
room-wide irradiation. Applicant goes to some length on pages
2 to 4 of the letter dated February 24, 1971 to make a distinction
between germicidal and sun lamps in order to show that the teaching
related to germicidal lamps does not apply to sun lamps.
Applicant further raised the following points on which he
thought the examiner had failed to properly comment on:
a) long felt want,
b) cooperation between elements and
c) obviousness.
After reviewing the grounds for rejection set forth by
the examiner, as well as the arguments both written and oral
set forth by the applicant I am satisfied that the rejection
is well founded.
At the hearing the arguments raised during prosecution
were expanded and re-emphasized, also a number of Court cases
were used to support the arguments used by the applicant.
Claim 1 reads as follows:
An artificial sun-bathing enclosure comprising:
(a) a matte blue and ultraviolet light reflecting
ceiling,
(b) means for supporting the ceiling over a base
area,
c) first lamp means in proximity to said ceiling
and arranged to emit light directly downwards
toward the base area in simulation of the sun's
rays,
(d) second lamp means below said ceiling and
arranged to illuminate the ceiling with
diffuse bluish-white light, and
(e) a plurality of UVB lamps below said ceiling
arranged in conjunction therewith to distribute
UVB radiation substantially uniformly over
the base area.
The considerations which must be decided are:
a ) does the subject matter of the claims constitute an
aggregation, and
b ) was there demand for inventive ingenuity?
First I will comment on the points raised by the applicant
in his response to the Final Action.With respect to whether
Chapter 15 of the Westinghouse Lighting H.B. has been properly
applied, I find the arguments presented are extraneous to the
pertinent portion of the disclosure of the Westinghouse H.B.
on pages 15-22 which deals specifically with sun lamps when used
for "Room-Wide Irradiation" (as in applicant's artificial sun-
bathing enclosure). In the paragraph headed "Room-Wide
Irradiation" it is recognised that Irradiation may be accomplished
by direct radiation or be reflected radiation off the upper walls
and ceiling of a room, but advises that irradiation by the latter
method is extremely inefficient because of the relatively low
reflectance of most room surfaces, The reference table does
however provide the information that if the room surfaces are
of white plaster (which may be considered to be a matte reflect-
ing surface) a 50% UVB reflectance may be expected. The table
also shows that with various finishes of aluminum a 60-85% UVB
reflectance may be expected. Applicant does not envisage any
more than the use of a matte UVB reflecting ceiling.
On the question of "long felt want", I see no proof of
long felt want whatsoever and I consider it to be irrelevant in
view of the rejection as to aggregation. The second point
raised under the sane heading, b) "cooperation between the
elements", I find this was adequately dealt with in the "final
action" report in the paragraph spanning pages 1 and 2, This
paragraph reads as follows:
Applicant at the outset has not discovered or invented
a "sunbathing" effect but has only simulated a naturally
occurring phenomenon to the degree considered adequate
for a particular purpose. In simulating such sun-bathing
effect applicant is further seen to have accomplished
no more than selected known component units capable of
producing the effects of each of the known constituents
of the natural phenomenon of sun-bathing and aggregated
the units so selected into an enclosure for artificial
sun-bathing purposes. Applicant having so done, then
concludes that since a certain amount of realism has
been achieved that the result must surely have been due
to some degree of synergism of the aggregated component
units thus proving the presence of invention. This
conclusion however ignore s the possibility that realism
may be readily achieved by the simple juxtaposition or
aggregation of a selection of common and readily available
devices. After careful consideration of the disclosure
and supporting arguments, it has been determined that
applicant has disclosed and claimed just such an aggre-
gation. Hence applicant's collection within an enclosure
of a first set of lamps to simulate the sun's rays, a
second set of blue lamps to cast blue light on the
ceiling of the enclosure to approximate a sky affect,
and a set of UVB lamps to provide sun-tanning is not
seen to be a synergistic combination in which a unique
and unitary result comprising a sun-bathing effect
has been produced as stated. On the contrary, the effect
of each set of lamps are seen to be sensed separately
by a person with in the enclosure and it is only these
separate effects as sensed by the appropriate ones of
the individual physical senses of the person which are
then translated by the persons "mind" into recognition
of the perceived sensations as a sun-bathing effect.
Hence had applicant been more exhaustive in his selection
and had merely added within the enclosure the sound of
surf, beach sand, tropical palms and the wafting of re-
freshing breezes to further heighten the illusion of
natural sun-bathing, the results would have been no
more inventive than the present selection since no more
than a more extensive aggregation would have been
achieved. Applicants artificial sun-bathing enclosure
is therefore found to be a mere aggregation or selection
of component units assembled and used in their normal
manner within an enclosure so that their separate
coextensive effects will to some extent correspond to
natural sun-bathing. The artificial sun-bathing
enclosure disclosed and claimed is therefore not
inventive. In other words applicant may not claim what
is the public's right to select and group known
articles of their choice.
The third point under the same heading, c) "obviousness",
I find this adequately answered in view of the arguments relat-
ing to item b) above and the detailed discussion of each of the
separate pieces of art as they relate to the separate components
of applicant's artificial sun-bathing enclosure.
I shall now deal with the basic ground of rejection: "does
the subject matter of the claims constitute an aggregation of
elements"? It is well established that aggregation is not
invention either in process, machines or manufactures. The
elements which are collocated in an aggregation may themselves,
if new, amount to separate inventions, but assembling these
elements, unless there is interaction, can produce no new result,
and there can be no invention.
The Exchequer Court has considered what constitutes a combin-
ation sufficient to constitute patentable subject matter in
Lester v. Commissioner of Patents (1946) C.P.R. 6 at 3, where the
Judge stated:
The authorities are quite clear that a combination is
not patentable where each part performs its function
independently of the other and the parts ara not combin-
ed to produce some common result.
This was expressed by Lord Tomlin in British Celanese
Ltd. v. Courtaults Ltd. (1935), 52 R.T.C. 171 at p.193,
as follows:
"It is accepted as sound law that a mere placing side
be side of old integers so that each performs its own
proper function independently of any of the others is
not a patentable combination, but that where the old
integers when placed together have some working inter-
relation producing a new or improved result then there
is patentable subject-matter in the idea of the working
inter-relation brought about by the collocation of the
integers."
I find claim 1 of this application consists of elements
clearly giving separate effects:
1 ) Lamps shining downwardly from a matte ceiling to
give the illusion of the sun's rays.
2) Blue lamps reflecting off the same ceiling to
create the illusion of a sky.
3) UVB lamps reflecting off the matte ceiling to
provide uniform tanning.
4) An air inflated structure to form the enclosure.
I find that applicant's claims do not meet the test required
of a combination. Applicant has used a number of admittedly
known units and has grouped them so that each performs its own
proper function independently of any of the others. There is no
working inter-relationship producing a common or unitary result;
hence,I find a mere aggregation of several results.
Applicant maintains that a combination giving rise to a
single synergistic sun-bathing effect has been achieved. I
hold that the results produced is no more than the sum of
the functions of the various parts. In a true combination
synergism must be present and the result must exceed the sum
of the functions of the various parts.
I turn now to the other aspect of the rejection, namely,
"was there a demand for inventive ingenuity"? I find this is
inherently covered in the previous discussion for if I am correct
in maintaining that the claims cover an aggregation, then there
is no new result and there can therefore be no invention.However,
applicant has merely brought together a number of known components
to simulate a naturally occurring phenomenon and I hold that it
would be within the province of an artisan in this field to
produce a system simulating almost any naturally occurring
phenomenon and thus would not require inventive ingenuity.
I am satisfied that the particular layout that applicant
has disclosed nay be meritorious but I fail to see that the
claimed subject matter required such an exercise of creative
faculties of the human mind as to merit the distinction of
invention or a claim to monopoly. I am satisfied that the claimed
subject natter amounts to an aggregation of known elements and
further that the subject matter lacks one of the attributes of
patentability - inventive ingenuity.
I recommend that the decision of the examiner, to refuse
the application on the grounds that the applicant discloses
and claims no more than an aggregation of readily available
components and that inventive ingenuity is lacking, be upheld.
R. E. Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
refuse the grant of a patent. The applicant has six months in
which to appeal this decision in accordance with Section 44 of
the Patent Act.
A.M.Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this day of May, 1971.