DECISION OF THE COMMISSIONER
OBVIOUS: In view of teaching of several citations.
Held that the experience shown by the citations is properly
to be considered as teaching that thin-walled elliptic
flexible tubing could meet the requirements of waveguides;
and the process of fabrication is shown in the prior art.
No consideration was given to product claims made in response
to the Final Action.
FINAL ACTION: Affirmed.
* * * * * * *
IN THE MATTER OF a request for a review by the
Commissioner of Patents of the Examiner's Final Action
~~~ Section 46 of the Patent Rules.
AND
IN THE MATTER OF a patent application serial
number 022,722 filed October 17, 1967 for an invention
entitled:
ELLIPTIC WAVEGUIDE AND METHOD OF FABRICATING IT
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
October 19, 1970 on application 002,722. This application was
filed in the name of Tsutomu Maeda and refers to "Elliptic Wave-
guide And Method of Fabricating It". The Patent Appeal Board
conducted a hearing on September 14, 1971. Mr. R. Barrigar
represented the applicant.
In the prosecution terminated by the Final Action the
examiner refused the claims as failing to patentably distinguish
over the patent to Sturm et al - 437,752, Nov. 5, 1946.
In the Final Action the examiner stated:
The rejection of the claims as railing to patentably
distinguish over the patent to Sturm et al is main-
tained. In the said patent is disclosed a method of
forming tubing of certain geometric shape from tubing
of another geometric shape including forming an
elliptical-shaped tube from generally circular-shaped
stock. The steps of forming the initial round tubular
stock by extrusion and the corrugation of the extruded
tube are held to be common knowledge.
There is no invention in making an elliptical-shaped
tube from circular-shaped stock by using conventional
methods of tube forming as exemplified by the cited
patent. In the above letter applicant contends ~~~~
two articles of substantially similar construction
but each having a particularly useful and unobvious
advantage with respect to their use are patentable.
This may be so. But if such articles can be made by
substantially the same method, then such methods of
manufacture are not patentably distinguishable one
from the other. It is maintained therefore that the
preamble in the claims namely "a method of fabricating
an elliptical waveguide for electrical apparatus",
identifying the use of the end product, does not impart
patentability to a conventional method of making
elliptical tubing as disclosed in the cited patent
in the response, dated April 13, 1971 the applicant stated:
Canadian Patent No. 773,254 cited as a reference of
interest, discloses and claims a smooth elliptical
shape waveguide which is asymmetrical about its mayor
axis (see page 3 lines 21 snd 22; page 3 lines 32 to
page 4, line 1). The independent product claims 12
and 16 of the present application clearly recite that
the walls of the waveguide are substantially symmetrical
about both the mayor and minor axes of the cross-
section of the waveguide. As a result, the applicant
submits that the "product" claims of the present
application are clearly distinguishable from Canadian
Patent No. 773,254.
In contrast to the former method claims, new
method claim 1 specifically recites a method of
fabricating a jointless, seamless oval waveguide
having continuously smooth interior and exterior
walls. New method claim 7 recites, as a further
step the winding of the oval waveguide on a drum for
transporting the waveguide from the factory to the
installation site. The method claim 8 recites the
additional step of re-extruding the waveguide to
remove any deformations in cross-sectional shape
upon unwinding the waveguide from the transporting
drum prior to installation. New method claims 1
to 8 inclusive, in a most exacting manner, claim
the steps of fabrication used to make the new and
useful waveguide described in the text of the
disclosure and claimed in claims 9 to 18 inclusive.
An argument has been made that the method of extruding
tubing for waveguide is old for other tubular products
and therefore unpatentable as applied to waveguide.
The applicant admits that it is known to extrude
tubing used for the transportation of water and
gas and the like, but submits that this field of
manufacture is totally removed from the field of
manufacturing waveguide and cable used to transmit
electro-magnetic radiation. (The relevant principles
of law are discussed in applicant's response to the
previous Official Action.) Enclosed is an affidavit
by Professor Torahiki Sugiura of Osaka Institute of
Technology. Professor Sugiura's affidavit differ-
entiates the art of manufacturing devices including
waveguides from the art of manufacturing common
extruded tubing. His affidavit also recites methods
of constructing waveguides previously available to
manufacturers, and shows that the present methods
are new and useful and produce an improved flexible
seamless waveguide which can be fabricated in very
long lengths, heretofore not possible in the art of
waveguide manufacture.
After reviewing the grounds for rejection set forth by
the examiner, as well as the argument both written and oral
~~ foth by the applicant, I am 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
subject matter as claimed was in fact an improvement in the
~~~~~ therefore a patent should be granted.
The application is directed to an improved method of
~~~~~nuously fabricating a waveguide. Claim 1 reads as follows:
A method of fabricating an elliptical or approximate
elliptical waveguide for electrical apparatus compris-
ing the steps continuously extruding metal tubing
having a generally round cross-section and of a
selected inner circumferential length and then
continuously drawing said extruded tube through an
elliptical or approximate elliptical die to form a
completed waveguide having elliptical or approximate
elliptical configuration.
It is obvious that the method of changing the shape of
a metal tube of generally round cross-section to an ellipse-
like cross-section is taught by the reference to Sturm which
shows a forming die adapted to progressively change the cross-
section from one geometric shape to another, such as, changing
a round tube to an ellipse or an ellipse-like shape. It is
obviously jointless, seamless, may well be smooth walled and
flexible according to the requirements depending on the form of
tle original tube; the nature of the materials of which it is
made and might well be a waveguide tubing.
The reference to Krank, patent 772,283 with a priority
date of 1963, on page 1 states that: "It is known to use
waveguides with differing cross-sectional shapes ...", and
~~~ "Smooth waveguides of oval cross-section are also known."
~~~~ added).
Another reference to Krank, patent 696,089 dated
~~~~ 13, 1964 on page 1 states that: "The use of elliptical
waveguides for electromagnetic waves is well known ...", and
~~~~ "It is also known that elliptical waveguides with
~~~~ smooth walls and too slight an eccentricity ... approach
~~~~~~viour of a circular waveguide."
Applicant submits that: "This invention is based upon a
~iscovery that a waveguide having an elliptic cross-section
~~~ an advantage, on the contrary to commonly used rectangular
~~~ circular waveguides ...". The Krank references teach tha~
~~~~guides having an elliptical cross-section with smooth walls
are known.
Applicant also maintains that the field of manufacturing
waveguides is totally removed from the field of extruded tubing,
ca~le sheathing etc. However, page 1 of the Krank patent (596,089)
~~~tes that: "Experience gained with corrugated tubes and
~~~~-type tubes as cable sheaths, leads to the expectation
that a corrugated tube or bellows-type tube of elliptical cross-
~~~ion would meet the mechanical requirements of a waveguide,
a~ least under certain conditions." Here, the inventor obviously
co~~~~~d the teachings of the cable sheath art had something
~~~~~~~or with the waveguide art. With this in mind I note
~~~ ~~~ reference to williamson discloses a method for the
~~~facture of cable sheath: a pointless, seamless, thin
~~~~~ tubing of very long length, which may be wound on a
~~~ a~d reshaped at the work site. I find that the experience
~~~~~~~ in the above citations are properly to be considered
as teachings in the use of thin walled flexible tubing with
the expectation that it could meet the requirements of a
waveguide.
Applicant has advanced the argument that a new product
produced by a conventional method imparts patentability to
the method. First it has not been established that the product
is new and furthermore I find such a generalization is not in
accord with the statutory requirements of novelty. It is well
established that a patent cannot be granted for a new use of
an old process unless there be some novelty or invention in
the adaptation of the old process to the new use, or the
overcoming of some difficulty which lay in the way of such
application. I am satisfied that the mere reference to a
waveguide in the claim does not impart novelty to the process,
as the process, with the same ingredients, does exactly what
it pas done before in the forming of tubing.
The inclusion of product claims in response to the "Final
~~~~~ under Rule 46 cannot be accepted since these claims
~~~~~ related to the matter under refection by the examiner,
~~~~~~ in part new claims which have not been examined. The
~~~~~~ method claims, which merely add additional characteris-
~~~~~~ the end product of the process, do not introduce
~~~~~~lity to the process for the reason set forth.
~~~~~ note that the affidavit of Professor Sugiura different-
~~~~~ the art of manufacturing devices including waveguides
~~~~~ the art of manufacturing common extruded tubing. However,
~~~~ ted above, the Krank reference used the experience gained
from the manufacture of tubing to lead to the expectation of
~~~~ would meet the mechanical requirement of a waveguide.
I am satisfied that the particular idea may be meritorious,
~~~~ fail to see that it merits the distinction of invention
~~ claim to a patent monopoly. Therefore, I recommend that
~~~~~ cision of the examiner, to refuse the claims as failing
~~~~ atentably distinguish over the cited references, be upheld.
~~~~ that the revised method claims be refused on the same
~~~~~ as the claims under rejection and, as indicated above,
~~~~~~sideration was given to the product claims for the reasons
~~~~~~.
R. E. Thomas,
Chairman, Patent Appeal Board.
concur with the findings of the Patent Appeal Board and
~~~~~~ all the method claims. The applicant has six months
~~~~~~ to appeal this decision in accordance with Section 44
~~~~~~ fatent Act.
Decision accordingly,
A. M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 8th day of November, 1971.