DECISION OF THE COMMISSIONER
INDEFINITE CLAIMS: Desired Result; Functiona; Speculative.
While function in terms of result is permissible the monopoly
claimed must not exceed the invention made nor the invention
disclosed. Functional statements must not render a claim
ambiguous, so as to leave indeterminate the boundaries of the
monopoly,or embrace speculative or inoperative areas in which
the applicability of the invention is unpredictable. Undue
experiment would be required to determine what coatings, if any
other than aluminous as disclosed, within the terms of the
claims would work.
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 009,086 filed January 4, 1968 for an
invention entitled:
WRAPPER FOR SMOKABLE TOBACCO PRODUCT
Patent Agent for Applicant: Messrs. Fetherstonhaugh
& Co., Ottawa.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
November 5, 1970 refusing to allow claims 1 and 7 (now 6).
Application 009,086 was filed on January 4, 1968 in the
name of E.J. Niedek and refers to "Wrapper For Smokable Tobacco
Product".
In the prosecution terminated by the Final Action dated
November 5, 1970 the examiner refused claims 1 and 7 on the
following grounds:
a) indefinite,
b) too broad in view of the disclosure and
c) too broad in view of prior art.
The prior art cited was United States Patent 2,976,190,
March 21, 1961, C1. 131-17 to Meyer.
The Examiner stated:
Claims 1 and 7 are rejected for being indefinite be-
cause there is not enough recitation of features of
then claimed article to give a distinct and explicit
meaning to the functional statement present in both
claims and relating to the metal coating having a
weight:
"not so great as to produce in use a cooling
effect by conduction, but having substantially
no effect on the porosity or combustibility of
the material, said metal coating on combustion
yielding an ash which is less permeable by air
than the ash of the uncoated material".
Claims 1 and 7, relating to a wrapper material
suitable for smokable tobacco products and comprising
porous combustible material in sheet form having
oxidizable metal coating thereon having a weight of
no less than 0.5 micrograms per square millimetre,
are further rejected for being too broad in view of
the specification; the latter teaching aluminous
metal coating of a given thickness as the only
coating which would achieve the object of the
invention, i.e. reducing the carcinogenicity of tobacco
smoke. The term "aluminous metal" being defined on
page 3, lines 17-19, as meaning aluminium and alloys
of aluminium having substantially the same effect
on peak burning temperature as aluminium itself if
the same coaring thickness.
The passage in the preamble to the specification,
page 3, lines 7 to 14, referred to in applicant's
letter to indicate that the applicants "did not
envisage their invention as being effective only
where aluminous metal coatings are used", substant-
ially corresponds to the original claim 1, rejected
in the Office Action of February 27, 1969, for being
too broad in view of the disclosure in respect of
the "metal coating" claimed therein. Consequently,
the above passage is not deemed to fully support
claims 1 and 7.
Claims 1 and 7 are still further rejected for being
too broad in view of the Meyer disclosure of a
cigarette paper coated with flocculent aluminium foil.
The non-distinct and inexplicit functional statements
starting with words "and not so great" up to the end
of the respective claim fails to provide a patentable
difference over Meyer.
In applicants response of February 5, 1971 he stated:
The Commissioner is requested to review the final
action of the Examiners as provided for under Rule
46(2), and take into account the amendments noted
above in the claims.
As now amended claim 1 is restricted to include the
feature previously appearing in claim 6, namely that
the metal coating is a vapour deposited coating.
This amendment has been included also in revised
claim 6. The prior art, particularly U. S. Patent
2,1967,190 Meyer does not disclose the feature of
utilizing a vapour deposited metal coating.
With regards to the Examiner's references to the
reported cases of Clyde Nail Co. Ltd, v. Russell,
33,R.P.C. 291 and in Re I.G. Farbenindustrie A.G.'s
Patents 47 R.P.C. 289, it is respectfully pointed
out that these Judgements relate to "selection patents"
and the invention of the present application does
not fall into this category. It has always been
most clearly stated, notably in the case of I.G.
Farbenindustrie A.G., referred to by the Examiner,
that the special conditions and requirements for a
selection patent only apply where the claimed
invention is a "selection" from a clear broad prior
disclosure. Where no such broad prior disclosure
exists, these cases are not relevant and in the
present case there is no broad prior disclosure
of metal-coated cigarette wrappers. The cited Meyer
Patent does not disclose a regular coating of alum-
inium but the application of previously formed alum-
inium flakes. Furthermore, the prior British Patent
referred to in the present specification, although
it discloses a coated wrapper, does not disclose
such coatings broadly but only in a thickness up
to 20 millionths of an inch, which as already
explained is below the lower limit of thickness in
the present case. Thus it is quite clear that there
is no broad prior disclosure from which the present
invention could be said to be "selected" and the
Examiner's arguments are therefore beside the point.
Upon review of the grounds set forth by the examiner, as
well as all the arguments presented by the applicant I am
satisfied that the rejection is well founded based on two counts.
In view of the amendment to the claims the examiner is
willing to withdraw the rejection that claims 1 and 7 (now 6)
are too broad in view of the prior art. This rejection is withdrawn.
The considerations to be resolved are whether claims 1 and 6
are:
a) indefinite, and
b) too broad in view of the disclosure.
I shall first deal with the rejection with respect to
Claims 1 and 6 being indefinite in that functional statements
are used to indicate the upper limit of thickness by weight
of the coating on the wrapper.
What do we mean by the term "functional" as applied to
the claims? The term is used in a number of different situations:
however, in this situation the upper limit of an important
element of the claims is expressed simply in terms of desired
result. In other words, the monopoly claimed is anything that
will achieve this desired result.
It is well settled that functional claiming in the sense
of claiming in terms of a desired result, is per se, permissible
under Canadian Patent Law. Nonetheless, a functional claim,
like any other claim must not, inter alia, be ambiguous. A claim
is usually considered to be ambiguous if a workman skilled in
the art cannot determine easily, with only limited experiments,
whether what he proposes to do comes within the boundaries of
the monopoly claimed. In other words the functional limitations
must not be indefinite or couched in such broad terms as to
make it almost impossible to determine the scope of the monopoly
claimed.
The functional limitations we are concerned with are as
follows:
"and not so great (reference to a thickness by
weight of the coating) as to produce in use a cooling
effect by conduction, but having substantially no
effect on the porosity or combustibility of the
material".
Here I find the upper limit of the thickness by weight of
the coating is set by three functional limitations, that is,
limitations as to result:
a) and not so great as to produce in use a cooling
effect by conduction,
b) but having substantially no effect on the porosity
of the material,
c) but having substantially no effect on the
combustibility of the material.
Furthermore the coating would have to be capable of being
vapour deposited (claim 1). Also, the metal selected would
have to melt and coalesce into a substantially continuous film
to form a low porosity sheath, (page 6 of the disclosure), and
this sheath (ash) must be less permeable by air then the ash
of the uncoated material.
I hold that it would require considerable experimentation
to determine what particular coatings would work and this would
put undue hardship on any other manufacturer wishing to avoid
the terms of the monopoly.
I therefore hold that in this functional respect the claims
are indefinite as to the monopoly claimed as they fail to state
the thickness by weight of the coating in distinct and explicit
terms within the meaning of Section 36 of the Patent Act. Further-
more, I find the thickness by weight limit does not have any
meaning with respect to the critical thickness of the coating
unless a specified metal is used; this further renders the claims
indefinite.
I turn now to the other aspect of the rejection, namely,
claims 1 and 6 are too broad in view of the disclosure with
respect to the claimed feature of "a metal coating".
I note that applicant has characterized his invention on
page 3, lines 7 - 14 of the disclosure in terms which made it
clear that he regards his invention as a provision of a particular
type of metal coating on the wrapper. From this passage it is
clear that the applicant did not envisage his invention as being
effective with other than aluminous metal coatings.
I find that claims 1 and 6 are too broad in view of the
invention disclosed because they cover unknown and uncharted
areas where the applicability of the invention is unpredictable.
In the complete specification, there is no indication or
teaching that wrappers coated with metals other than aluminous
would achieve the object of the invention i.e. raising the peak
combustion temperature to reduce the carcinogenicity of tobacco
smoke. I find the claims are speculative and attempt to cover
a much broader field than that which the applicant has explored.
It is well established that there is a limit on applicant's
right to claim a generalization from the disclosure. It is
also well settled that applicant may not claim a wide class of
substances on the basis of a tenuous hypothesis as to their
use.Also, it is obvious that the claims cover inoperative
embodiments, and finally, applicant is reminded that there are
two fundamental limitations on the extent of the monopoly which
may be claimed: (a) It must not exceed the invention made.
(b) It must clot exceed the invention disclosed.
I recommend that the decision of the examiner, to refuse
claims 1 and 6 based on the grounds setforth, be upheld.
R.E.Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
refuse to allow claims 1 and 6 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 19th day of April,1971