DECISION OF THE COMMISSIONER
INSUFFICIENT EXAMINATION
No proper decision can be made on the grounds of obviousness
solely on common general knowledge when the prosecution has
not dealt with the matters that should be considered.
FINAL ACTION: Withdrawn
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
002,404 filed October 13, 1967 for an invention entitled:
METHOD FOR ELECTRODEPOSITION OF PAINT
Agent for Applicant
Messrs, Sim & McBurney,
Toronto, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
September 1, 1970 refusing to allow the claims of the application.
The Patent Appeal Board conducted a hearing on May 27, 1971
at which Mr. M, Steward presented argument for the applicant.
Application 002,404 was filed on October 13, 1967 in the
name of G.G. Strosberg and refers to "Method for Electrodeposition
of Paint".
In the prosecution terminated by the Final Action dated
September 1, 1970 the examiner refused the claims of the appli-
cation in that applicant failed to show how the use of two tanks
assist in any unobvious way in achieving better control of
the electrodeposition process.
In the response of November 23, 1970 applicant made
objections to the Final Action in that the examiner relied solely
on the ground of obviousness in the light of common general
knowledge.
After reviewing the grounds for refection set forth by the
examiner, as well as the arguments both written and oral set
forth by the applicant I am not satisfied that the prosecution
dealt with all the points which should have been considered.
It is noted that applicant has referred to assembly line
problems, page 2 line 19, "As a practical matter, coating work-
pieces of different size and shape within a single coating tank
often provides assembly line problems both inside and outside
the tank,.,". Also, reference was made to these pronlems in
applicant's actions of July 9, 1970 and November 23, 1970.
In my view the considerations which should have been
resolved are:
1) What are these problems?
2) How were these problems solved?
3) Were these problems solved in such a manner as
to give rise to the dignity of invention with
respect to novelty, utility and inventive ingenuity?
In other words was there an unexpected result in
the use of a two tank arrangement over the use of a
one tank arrangement.
In the circumstance, therefore, I find that no proper
decision can be made with respect to the disposition of this
application. In view of this I recommend that the application
be returned to the examiner for further prosecution.
R. E. Thomas,
Chairman, Patent Appeal Board.
I agree with the findings of the Patent Appeal Board and
withdraw the Final Action. I am returning the application
to the examiner for resumption of prosecution under the guidelines
set out herein.
Decision accordingly,
A. M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 3rd day of June, 1971.