DECISION OF THE COMMISSIONER
SUPPLEMENTARY DISCLOSURE: Date Based on Claims only.
Claims per se cannot be treated as "disclosure" under Rules 52
and 53, as defined by Rule 2(e). As is the case with an appln,
a filing, date cannot be given the date on which claims only are
filed.
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
833,291 filed October 6, 1961 for an invention
entitled:
PREPARATION OF PERCHLOROFLUOROPROPANES
Patent Agent for Applicant: Messrs. Smart & Biggar,
Ottawa, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final action dated
September 9, 1970 refusing to allow the supplementary disclosure.
The Patent Appeal Board conducted a Hearing on May 6, 1971.
Mr. R. Fuller represented the Applicant. The facts are as follows:
Application No. 833,291 was filed October 6, 1961 in the
name of J.W. Clart et al, and refers to Preparation Of Perchlor-
ofluoropropanes.
In the prosecution terminated by the Final Action dated
September 9,1970 the examiner refused to allow the supplementary
disclosure and claims 6 and 7 supported by the supplementary
disclosure under Sections 2(d), 28(1) and 29(2) of the Patent Act
in view of the following references:
United States Patents
3,235,612 February 15, 1966 Anello et al
3,258,500 June 28, 1966 Swamer et al
On August 22, 1967 the examiner issued an action under
Section 45(2) of the Patent Act initiating conflict proceedings
between this application and two copending applications designated
as 000,092 and 000,689. Two claims were drafted by the Patent
Office to define the conflicting matter and were identified as
C1 and C2. In this action, the applicant was advised that claims
C1 and C2 were submitted for conflict purposes only and could not
issue to him as they there too broad for his disclosure.
At this time, the applicant of application 000,689 withdrew
from the conflict. However the applicant of application 000,092
maintained the conflicting matter.
(Actions and responses under S.45 from Jan. 15, 1968 to April 9,
1969 set out in the decision have been omitted).
On April 29, 1969, the examiner issued an action requiring
the applicant to remove claims C1 and C2 which were offered to
him for conflict purposes only.
The applicant responded July 4, 1969 cancelling the conflict
claims and reasserting them as new claims 6 and 7 supported by
a supplementary disclosure which was submitted at the same time.
The supplementary disclosure was then given a filing date of
July 4, 1969.
(Actions and responses between July 4, 1969 and Sept. 1970 set
out in the decision have been omitted).
The examiner pointed out in the final action that, although
the supplementary disclosure has been restricted to consist only
of the disclosure of claims 6 and 7 (claims C1 and C2) as placed
on file on December 22, 1967, this date cannot be considered as
the actual filing date of the supplementary disclosure because
Sections 52 and 53 of the Patent Rules deal with amendments to
the disclosure only. In other words, claims which are directed
to matter which falls under Sections 52 and 53 of the Patent Rules
cannot be treated as a disclosure of an invention. Tee matter
must first be introduced into the disclosure in accordance with
Section 53 before the claims can be considered. In this case,
the day upon which the subject matter was introduced into the
disclosure is July 4, 1969. Therefore the actual filing date of
the supplementary disclosure is July 4, 1969.
In a letter dated December 16, 1970, the applicant made the
request for review under Section 46(5) of the Patent Rules. In
his request for review, the applicant reiterated the arguments
which were submitted in the previous response of May 20, 1970
and presented new arguments as follows:
a) Since there is no court decision in Canada which
is concerned with the state of affairs which exists
in the present case, the applicant has turned for
guidance to decisions given in Great Britain as
he believes that in the absence of any Canadian
decision, decisions of the British Courts
are authoritative. In support of his arguments,
the applicant has relied on the following Court
cases:
(1) Lawson vs. the Commissioner of Patents -
Exchequer Court 1970.
(2) Tennessee Eastment Co. vs. the Commissioner
of Patents - Exchequer Court 1970.
(3) Moser vs. Marsden 13 ~.P.C. 24.
(4) George Hattersely & Sons Ltd. vs. George
Hodgson Ltd. (1904) 21 R.P.C. 525.
The first two Court cases are relied on by the applicant
to support his contention that in the absence of any Canadian
decisions, decisions of the British Courts are authoritative.
The other Court decisions are used by the applicant to support
his position that since the Commissioner has allowed amendment
of the application so as to include the conflict claims, the con-
flict claims should be considered as part of the original speci-
fication and the alignment of the formal parts of the specification
(disclosure and claims) to coincide with one another should not
be prevented by a formality. The entire specification may be
looked to as the definition of the invention and once this
inventive concert is positively set forth, especially by leave
of the Commissioner in allowing conflict claims to be added, all
parts of the specification should be considered together and should
be allowed to be brought into alignment with one another. Doing
so, is nothing more than rearranging the form of the total
invention which was properly set out during the prosecution of
the case by the applicant.
b) As to whether the amendment to the disclosure
was timely in view of the issuance of prior art
after the conflict clams had been copied by the
applicant, the applicant submits that the disclosure
was amended as of the time the specification (claims
plus disclosure) was amended. He also arged that
this view be taken in light of the ruling of Collins,
J.R. (Court case #4 referred to above) holding that
the entire application be considered as a unity
definig the invention and the holding of Lord
Watson (Court case #3 referred to above) that the
"... amended claims be ... (considered) on the,
same footing; as if it had formed part of the
original application ...". Thus amendment of
the specification in one part (i.e. claims) should
be considered amendment of the specification as
to the other part (i.e. disclosure) at least as
to the effective time of such amendment.
c) Finally, the applicant submitted, after discussing
subsections (1)(a), (3), (4), (5), (7) and (8) of
Section 45 of the Patent Act, that once the conflict
has been declared, the Commissioner is lacking any
discretionary power based on the Patent Act, to
disallow the claims made by the applicant for the
purpose of a conflict.
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 staisfied that the rejection is well founded.
At the Hearing the Patent Agent Mr. Fuller ably presented
the case for the applicant by expanding and re-emphasizing points
made during prosecution.
The basic question to be resolved is, what is the effective
date of the supplementary disclosure?
Section 2(e) of the Patent Rules reads as follows: (Quoted)
Section 53 of the Patent Rules reads as follows: (Quoted)
It is evident from the definition of "disclosure" in Section
2(e) of the Patent Rules and the language of Section 53 of the
Patent Rules that claims which are directed to matter which falls
under Sections 52 and 53 of the Patent Rules cannot be treated
as a disclosure of an invention. The matter must first be intro-
duced into the disclosure in accordance with the provisions of
Section 53 before the claims can be considered.
I find that the subject matter of claims 6 and 7 was not
submitted by the applicant as an amendment to the disclosure,
but was submitted by the Patent Office as Claims C1 and C2 for
conflict purposes only. This was clearly set forth in the
Section 45(2) action dated August 22, 1967. When applicant
entered claims C1 and C2 on December 22, 1967 for the purposes
of defining the conflict he did not argue that these claims
formed part of his disclosure. It was also made clear at that
time that his disclosure would not support these claims.
At ehe Hearing the Patent Agent suggested that under former
Vection 68 of the Patent Rules an amendment could not be made
during conflict proceedings. It has been the police for many
years that a supplementary disclosure may be filed to obtain an
effective filling date even though it may not be entered at the
time of filing.
With respect to the two British Court decisions relied on
by the applicant to support his position that since the Commissioner
has allowed amendment so as to include the conflict claims, the
conflict claims should be considered as part of the original
speciaification, I find that they are not pertinent as the
subject matter of these decisions do not refer to amendments to
the disclosure as defined by Section 53 of the Patent Rules.
I turn now to applicant's position that once the conflict
has been declared, the Commissioner is lacking any discretionary
power, based on the Patent Act, to disallow the claims made by
the applicant for the purpose of a conflict, I fail to see how
this position can be relevant in the present situation. The
conflict claims were rejected after the conflict was dissolved
and in order to overcome this rejection, the applicant, after
cancelling the conflict claims, filed a supplementary disclosure
and reasserted these claims as claims 6 and 7 supported by the
supplementary disclosure. The present rejection is not based on
the fact that these claims were conflict claims but on the fact
that the actual filing of the supplementary disclosure took place
more than two years from the date of the two cited United States
patents.
As a matter of interest applicant's attention is directed
to his response of May 15, 1968 in which he directed attention
to two United States Patents. The applicant stated:
U.S, 2,745,866 teaches that substantially the same
catalytic process may be conducted at temperatures
between about 125-600.degree.C., the only difference between
this reference and the aforementioned U.S. 2,436,143
being the use of chromium fluoride which is oxidized
in situ, apparently to the oxide of the catalytic
chrome compound.
Thus the basic process of the conflict claim(s) is
anticipated by U.S. 2,436,143, the only distinction
being the temperature range. It is submitted that
the higher temperature employed in the conflict claim(s)
does not add any inventive limitation but only spells
out a variable in the process which is well-known in
the catalytic art especially as indicated in U.S.
2,745,866.
Wherefore, in view of the foregoing reasons it is
respectfully solicited that the conflict be dissolved
with regard to all parties and furthermore any claim
or claims remaining in either specification be rejected
over the foregoing U.S. Patents.
Here I find that the applicant maintains that there is no
invention in the subject matter involved.
The applicant has maintained that once claims 6 and 7,
which were not supported by the disclosure, were entered in
the application, this should give the applicant the right
effective as of that date, to enter the subject matter of the
claims into the disclosure at a later date. This only holds
true of claims of an application as originally filed. On the
other hand, if claims only were filed with an original appli-
cation, no application number or date would be given as it would
be an incomplete application. By the same token if claims
only are filed at any time after the original filing date then
no supplementary disclosure date could be given for such claims.
I have concluded that the claims now indicated as supported
by the supplementary disclosure should bear the date of the
supplementary disclosure, the date the subject matter of claims
6 and 7 was introduced into the disclosure, i.e. July 4, 1969
and not the date when they were given to contest a conflict
with the qualified remark that they were not supported by the
disclosure and could not be awarded to the applicant.
It is assumed that the two United States Patents issued
in 1966 are pertinent as references against the claims as the
applicant has not raised any argument except one based on date.
I recommend that the decision of the examiner, to reject
claims 6 and 7 supported by the supplementary disclosure (effective
date July 4, 1969) under Section 28(1) and 29(2) of the Patent
Act in view of the prior art cited, be upheld.
R. E. Thomas,
Chairman, Patent Appeal Board.
I concur with the finding of the Patent Appeal Board and
refuse to allow claims 6 and 7, The applicant has 6 months
in which to appeal this decision in accordance with Section 44
of the Patent Act or remove the rejected subject matter.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 17th day of May, 1971.