DECISION OF THE COMMISSIONER
DIVISION - Rule 60: Textual Infringement Test.
Claims for different representations, shown by prior art to be common
place equivalents involving the same problem, fail to meet Rule 60
since the practice of the invention according to the wording of the
claims for either representation would not infringe the wording of
the claims for the other representation of the invention.
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 031,176 filed September 28, 1968 for an
invention entitled:
ACTIVE DELAY EQUALIZER CIRCUIT
Agent for Applicant
Messrs. Curphey & Erickson,
Montreal,Quebec.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
July 23, 1971 on application 031,176. This application was
filed in the name of Frederick T. Halsey and refers to "Active
Delay Equalizer Circuit".
The Patent Appeal Board conducted a hearing on September
23,1971. Mr. A.A. Deluca and Mr. J.E. Mowle represented the
applicant.
In the prosecution terminated by the Final Action the
examiner refused the claims as not satisfying Section 38 of
the Patent Act. In this action the examiner stated:
As indicated in the Office Action of March 1, 1971,
claim 8 is not a proper Markush claim and is directed
to two disassociated embodiments. Claim 8 does not
meet the requirements of Section 38 of the Patent Act.
Claim 7 is similar in form to claim 8 and is also
contrary to Section 38. Claims 7 and 8 are rejected.
The remaining claims do not meet the test imposed by
Rule 60 of the Patent Rules and are deemed to be
directed to more than one invention. Rule 60 is clear
in requiring a claim broader in its scope than any
other claim in the application as one criterion for
satisfying Section 38. Contrary to the Suggestion of
the applicant, the Examiner has not merely selected
individual words and phrases within claims 1 and 4
and thereafter concluded because such words and phrases
do not appear in the other claim Rule 60 is not
satisfied. It was pointed out in the Office Action
of June 9, 1970 that "it is readily seen from these
and other limitations that claim 1 may be practised
without infringing claim 4 and vice versa". Thus a
test has been imposed not merely to ensure that the
words of one claim appear in the other but to ensure
that practise of each claim would invariably result
in the practising of one claim which would be con-
sidered the broad claim. Such an infringement test
is not met, there is no broad claim such as the one
mentioned in Rule 60 and Section 38 is not satisfied.
The applicant in his response of August 7,1971 stated:
It is applicant's contention that the subject matter
of claims 1 to 6 inclusive is directed to one invention
only and thereby within the ambit of Section 38 of
the Canadian Patent Act. Applicant submits that a
rejection of said claims as not satisfying Rule 60 is
ultra vires to Section 38 of the Act.
As applicant's principal reason for contending that
claims 1 to 6 are directed to one invention only is
supported by well known network analysis principles
relating to the duality of "series" and "parallel"
circuits, applicant believes a brief introduction to
these principles should help in clarifying the issues
surrounding applicant's application.
The subject of duality and the method of converting
from one electrical circuit representation to its
corresponding dual representation is set forth in
the following text book entitled "Electrical Engineering
Circuits" by Hugh Hildreth Skilling, Copyright 1957
by John Wiley & Sons Inc. (page 288 et seq.). On
page 290 of the above reference an example is shown
(Figure 9-18) and the following paragraph is a
quotation from this reference text.
"The similarity of form of the equations is evident.
In detail, we recognize a duality between elements.
In the following list, elements on the same line are
the duals of each other:
resistance conductance
inductance capacitance
voltage current
There is a rule for finding the dual of a network;..:
and is as follows: On the network diagram, mark a
note for the dual network within each loop of the
original network, and one more node (to be the
reference node) outside all loops of the original
network. Through each element of the original network,
draw a line; each of these lines is to terminate on
the nodes that have just been indicated for the dual
network. Each of these lines represent an element
of the dual network that is itself the dual of the
original element through which the line is drawn.
That is, if the line was drawn through capacitance
the element of the dual network is inductance; if
through a constant-voltage source it is a constant-
current source; and so on, according to the above list."
The Examiner has stated that "The design and operation
of the two types of generator differ vastly one from
the other as shown by the completely different
circuit configurations resulting therefrom." Certain-
ly, applicant concurs that two dual circuits
utilizing current and voltage sources operate
differently from each other. However,having
discovered a solution to a problem as illustrated
on either of the two circuits it is applicant's
opinion that no invention is required in converting
any one form to the other.
It is respectfully submitted that applicant has
discovered only one basic solution to the problem
and that the instant application describes and
claims two different embodiments of that solution
as the schematic representation and correspondingly
the physical representation of a particular circuit
may be changed from one representation to another
and vice versa with no more skill other than that
required to manipulate the necessary equations or
follow the established "rules".
As there is only one invention, the presence of both
representations in the instant application should be
fully in accordance with Section 38 of the Patent Act.
Applicant believes that the difficulty encountered
with his application has not stemmed from its
inadmissability as being contrary to the Patent Act
or to the objects of the Patent System, but to an
apparent conflict with Rule 60 as interpreted by the
Examiner.
It is respectfully submitted that one must look at
the overall concepts as defined by the words and
elements in each of the claims to determine whether
or not they are equal in scope, rather than the
individual words and elements themselves. When this
is done it is evident that there is unity of invention
and that the two sets of claims define nothing more
than two embodiments of a single inventive concept.
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 the rejection is well
founded.
At the hearing the Patent Agent reviewed the stand of
the applicant and stressed the point that in his opinion all
the claims should be allowed in one application.
The consideration to be resolved is whether the claims
satisfy the requirements of Section 38 of the Patent Act and
Section 60 of the Patent Rules.
In the response of August 10,1971 the applicant cancelled
claims 7 and 8 and raised the following points:
a) the principle of duality is well known;
b) a circuit using one type of components is inventive;
c) to convert from the circuit of b) using the
principle of a) is non-inventive;
d) both configurations are inventive over the prior
art and therefore;
e) the two configurations, being equivalent, are
the same invention.
The basic contention is in conclusion e). It is commonly
accepted that an applicant may describe and claim more than one
embodiment of his invention. Applicant may, however, claim such
embodiments in the same application only if there is an allowable
broad claim covering the embodiments.
It might well be that there are situations in which argument
could be presented to show that one embodiment of an invention
is non-inventive in view of another and there should be no need
for a broad claim to satisfy Section 60 of the Patent Rules.
However, this Section requires one claim broader in scope than
any other claim in the application.
It is noted that a particular fluid amplifier obeys a
certain equation and by following a given rule electrical
equivalents may be designed and built without further invention.
While the two are mathematically equivalent, they are not
structurally equivalent or equivalent in the use to which the
claims are directed. It is also noted that a manufacture adhering
to the wording of either group of claims would not infringe
the wording of the other group of claims.
I find that the claims do not meet Section 60 of the
Patent Rules and shall therefore be deemed to be directed to
more than one invention since it is clear that Section 60 of
the Patent Rules requires a claim broader in scope than any
other claim in the application as a criterion for satisfying
Section 38 of the Patent Act.
I find the claims do not meet such criterion and shall
be deemed to be directed to more than one invention. In the
circumstance, I recommend that the decision of the examiner,
to refuse the claims as not satisfying Section 38 of the
Patent Act, be upheld.
R .E . Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
refuse to grant a patent on the claims as presently presented.
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 Ont.,
this 14th day of October, 1971.