DECISION OF THE COMMISSIONER
UNOBVIOUS: Combination of Known Elements. Known elements,usin~
known principles, have been brought together in a new combination,
and provide a solution to a problem, neither of which is suggested
by the references taken singly or as a whole.
FINAL ACTION: Reversed.
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 030,681
filed September 23, 1968 for an invention entitled:
PORTABLE RADIO DEVICE
Agent for Applicant
Messrs, Marks & Clerk,
Ottawa, Ontario.
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated January 19, 1971
refusing to allow application 030,681.
The Patent Appeal Board conducted a hearing on August 17, 1971.
Mr. Chappell represented the applicant.
Application 030,681was filed September 23, 1968 in the name
of K. Fujimoto et al and refers to a Portable Radio Device.
In the prosecution terminated by the Final Action dated
January 19, 1971 the examiner refused the single claim in view of
prior art, namely:
Publication
JASIK:Antenna ..ngineering Handbook,First edition;
copyright 1961; chapter 27 especially pages 5 to 8 and 37.
Reference of Interest
United States Patent
2,990,546 Jun, 27, 1961 C1. 343-767 Haas
In the Final Action the examiner stated:
The rejection of the single claim is maintained, the reason
for such rejection being lack of invention in view of the
cited patent and the state of the art.
On page 37 of Chapter 27 of JASIK there is described and
illustrated in Figure 27-45 an antenna developed by W.A.CUMMING
which responds to all the significant features of the
device claimed in the claim or this application.
The CUMMING antenna radiator admittedly is of more complex shape
than that of the applicant's antenna and the elements of the
radiator are not arranged in precisely the same manner in the two
cases. However, the antenna of the reference does have both
horizontal and vertical portions, It is important to note that
the form of radiator used by the applicant is known as one may
see from the HAAS patent. Thus, if there is any invention in
this application it must be in the particular arrangement of the
antenna radiator with the radio device body and the dielectric ele
rather than in the form of the antenna proper. It is held that
various specific forms of antenna could be used eo long as they
are suitable for the particular location.
In view of the above discussion the rejection of the single
claim of this application is maintained, The examiner also
maintains, as from the beginning of the prosecution, that this
application as originally filed does not appear to contain any
patentable subject matter. Since amendment to overcome the
rejection on prior art does not appear to be possible this action
terminates the prosecution of the application before the examiner.
The applicant in his letter of April 19, 1971 stated:
A careful study of the cited publication in the light of
applicant's disclosed and claimed structure brings at once to
mind the test concerning the sufficiency of a prior disclosure
when that disclosure is to constitute an anticipation of a
later filed patent application. It is submitted that the test
is rather stringent.
It is submitted that the only feature which the Cumming structure
has in common with applicant's structure as disclosed and
claimed herein is that both structures are concerned with an
antenna. However what the JASIK publication does not show that
is critical to an analysis of the present invention makes a much
longer list, Thus Cumming is concerned with an antenna for the
VHF navigation system of an aircraft. In the Cumming structure
the antenna is not however mounted on the body of a radio at
all - it is mounted on the vertical stabilizer fin of an
aircraft and would be connected by the usual cable means to radio
navigation equipment disposed within the aircraft. Furthermore
in the Cumming structure the antenna is mounted in a cut-away
portion on top of the aircraft vertical stabilizer fin i,e, in the
Cumming structure the antenna is not mounted on a corner portion
of a radio device. Furthermore the cut-away portion of the vertical
stabilizer fin certainly cannot, by any stretch or the
imagination, be considered to be or a triangular prismatic f~~~.
For the cited publication to be deemed an anticipation of
applicant's structure as disclosed and claimed hereinit would
be necessary to consider either a complete aircraft or a vertical
stabilizer fin thereof to be a portable radio device;to assume
that the top of the aircraft vertical stabilizer fin is a corner
of the aircraft; to interpret the plastic housing shown in the
cited publication, and which may be generally designated to be of
conic configuration, as a "dielectric element of a triangular
prismatic configuration, to further interpret the plastic
housing, shown in the cited publication and which clearly has no
function other than that of a cover shaped to minimize air
resistance, as "a dielectric element...for increasing the
effective electrical length of the antenna element and decreasing
the actual physical length thereof"; and further to consider the
hub portion of the Cumming antenna and which clearly merely
serves as a mount for Cumming's dipole loop antenna as a "short-
circuiting element,.. for impedance matching of the antenna
system" with a radio device body, and it is submitted that none
of these assumptions are in fact justified by the disclosure
in the cited publication. There is in fact no teaching nor sugges-
tion in the cited publication of a structure comparable with
that disclosed Hurt claimed herein, the problems confronted by
and solutions to which were proposed by Cumming being of an
entirely different nature to those which applicant herein
confronted and solved by the structure for which protection is
sought by this application.
After reviewing the grounds for rejection set forth by the
examiner as well us the arguments both written and oral set forth
by the applicant I am not satisfied that 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 the device as
claimed was in fact a new combination and therefore a patent should
be granted.
The consideration to be resolved is whether the subject matter
in Claim 1 lacks invention in view of JASIK and the state of the art.
The application is directed to a portable radio having an
anntenna of known type (see U.S. patent to Haas) attached to a
cut-away corner of radio case, and a dielectric element shaped to
correspond to the cut-away corner enclosing the antenna.
The Jasil Handbook describes an antenna, similar but not
identical to that of the applicant, located on a cut-away portion
of the top of an aircraft vertical stabilizer and enclosed in
a plastic housing.The reference of interest (Haas) shows an
antenna similar to that used by applicant.
It is well established that a new combination of well known
elements may be patentable. The question is not whether the
elements are new but whether the combination of elements,with
its arrangements of parts is new,useful and the result of
inventive ingenuity.
Applicant's claims cover a very specific article. Applicant
has taken known elements and used known principles and brought
them together in a device which is not suggested by the reference
taken singly or together.
In my view the tail fin of an aircraft (Jasik) is not analogous
to a portable radio.Furthermore the size and configuration of
the Jasik antenna do not lead one to applicant's small portable
radio.
Admittedly the Ila reference shows an antenna similar in
configuration (and possibly size as well) to applicants' antenna.
Haas also asserts the known principle that the electrical length
of an antenna may be increased depending on the dielectric constant
of material placed between the antenna and the ground plane.
However, Haas was concerned with the problem of steamlining an
antenna mounted on the exterior of a fast moving missile.
Applicant on the other hand is concerned with mounting an
antenna of a specific type (similar to Haas) on a radio body
and protecting the antenna from mechanical damage by locating
it within the projected outline of the body of the radio,the
location being specifically defined.He also encases the antenna
in a dielectric for the dual purpose of completing the outline of
the radio body and increasing the electrical length of the antenna.
I feel that while each of the elements used by applicant
may be known or obvious and the principles employed may also he
known, nevertheless applicant has brought them together in such
a manner as could be considered a new combination.
In the circumstance, therefore, I am of the opinion that
an advance in the art has been made, and that it would not be
obvious to arrive at applicants' combination from the prior art
relied upon by the examiner. I am also satisfied that applicant
has made a prima facie showing of inventive ingenuity.
I recommend that the rejection, against the allowance of the
claim of this application, should be withdrawn.
R.E. Thomas,
Chairman, Patent Appeal Board.
I concur with the finding or the Patent Appeal Board and I
am therefore setting aside the Final Action and returning the
application to the examiner for resumption of prosecution.
Decision accordingly,
Dated at Ottawa,Ontario, A.M, Laidlaw,
this 1st day of September,1971 Commissioner of Patents.