DECISION OF THE COMMISSIONER
OBVIOUS: In View of Plural Citations.
Claims merely reciting "magnetically holding means for magne-
tically holding" the crank in position amounts to no more than
the common function of magnets as hold-down means without
modifying the action or effect of the elements by its substi-
tution for spring means.
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 021,626 filed June 3, 1968 for an
invention entitled:
MAGNETICALLY-RETAINED CRANK ELEMENT FOR
LINEAR MEASURING INSTRUMENTS
Agent for Applicant
Messrs. R.K.McFadden & Co.,
Ottawa, Ontario.
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
May 17,1971 on application 021,626. This application was
filed in the name of Andre Quenot and refers to "Magnetically-
Retained Crank Element For Linear Measuring Instruments".
The Patent Appeal Board conducted a hearing on September
15,1971. M R.K.McFadden represented the applicant.
In the prosecution terminated by the Final Action the
examiner refused claims 1, 2, 3, 4,and 6 on obviousness in
view of prior art. The prior art cited is as follows:
References Re-Applied
Canadian Patents
413,313 June 22, 1943 Cl. 248-15 (Dwgs. 1 sh )
Smith
688,746 June 16, 1964 Cl. 248-15 (Dwgs. 1 sh)
Dunkelberger et al
707,857 Apr. 13, 1965 Cl. 248-15 (Dwgs. 1 sh)
Baermann et al
United States Patent
1,340,712 May 18,1920
In the Final Action the examiner stated:
Claims 1 and 2 as amended are substantially the same
as they were prior to amendment since the amendment
only involved the substitution of an equivalent
statement for the one deleted. Claims 3,4 and 6
upon reconsideration have also been found to lack
patentable distinguishing matter over the cited art
as will be discussed below. Claims 1, 2, 3, 4 and
6 as they now stand are refused for setting forth
no more than an obvious substitution of commonly
known magnetic holding means for the spring type
in a generally old combination. While only broad
claims 1 and 2 were refused in the last Office
Action, claims 3, 4 and 6 have been found to differ
so slightly thereover as to be refusable on the
sane grounds. Therefore in view of applicant's
request for a hearing before the Patent Appeal
board, a hearing on the allowability of the three
additional claims (claims 3, 4 and 6) would also
be in applicant's interest.
The measuring instrument defined in claims 1, 2,3,
4 and 6 now differs from the one disclosed in the
Hare patent only by the mere substitution of well
known magnetic holding means for the spring type
shown.The statements relating to the preferred use
of a magnetic holding means over the spring type
taught by Hare which applicant relies on for
"invention" and only sets out, for example in line
7 of claim 1 as "magnetic holding means and in
lines 2 and 6 of claim 6 as "a magnet constituting
a portion of said crank arm" and "the side flange ..,
having a portion comprised of ferromagnetic material",
respectively, are no more than mere restatements of
the commonly known functions and manner use
of magnets as a holding means for ferromagnetic
materials as shown by the Smith, Dunkelberger et al
and Baermann et all references. No more than a
mere substitution of commonly known magnetic holding
means in place of a spring type in a well known
combination, devoid of an inventive adaptation of
the preferred means, has therefore been set out.
In the response to the Final Action dated August 17, 1971
the applicant discussed the prior art at length.He then
concluded that the use of a magnet as a securing device when
applied to the known winding tape measure under the circumstance
was not obvious. In this response the applicant further stated
that:
The use of spring retaining means such as shown
in the Hare reference is discussed on applicant's
disclosure page 2 and the disadvantages of such a
construction are also set forth. In the disclosure
it is clearly recited that mechanical spring means
have the inherent disadvantages that they are prone
to defects and breakdown and that their assemblies
are both costly and delicate.
These inherent disadvantages of simple mechanical
devices have existed in all known winding reels or
linear measuring devices until the date of the
present invention and yet until the date of the
present invention no satisfactory solution had been
found. The Board will appreciate that the Hare re-
ference issued in the year 1920 and yet during that
~0 year period no one ever obviously arrived at a
solution to the long existing problem by simply
providing magnetic nolding means in place of straight
mechanical spring means. Simplicity of invention
does not negate patentability, and in many cases
the most simple inventions are those which represent
the greatest advance in the art and are the most
unobvious.
While the argument is age old it must again be
stated that as winding reels or winding tape measures
are so old (as witnessed by the 1920 Hare patent)
and as the properties of magnetic material as
holding assemblies have also been known for hundreds
of years the question must still be asked that if
the solution was so obvious why was it not arrived
at many,many years ago. The only way that such a
question can be answered is by concluding that such
a solution is not obvious. Clearly, if applicant 's
structure is so obvious it would have been utilized
by those knowledgeable in the trade at a time much
earlier than the present application, and the failure
of those people knowledgeable in the art to appre-
ciate the significance is a clear indication that
the structure defined is not obvious and represents
a new and useful patentable invention. This fact
is incontestable. Both magnets and linear measuring
instruments of the winding variety have been known
for many, many years and the fact that the use of
magnets on such instruments has never before been
contemplated or used is a clear indication of the
presence of inventive ingenuity and for this reason
the Canadian Examiner's submission of obviousness
is believed to of completely incorrect.
Commercial success may be considered as being an
indication of patentability, and if the commercial
success is of any magnitude then there must be a
presumption of patentability. While the practical
commercial success of a new article does not
automatically demonstrate the presence of inventive
subject matter it does however raise a strong presump-
tion that invention is necessary to produce it and
when there has been a long unsatisfied demand for
an article and that article is produced and which
results in considerable practical success there is
a presumption that it is only by an exercise of
the inventive faculty that the inventor has been able
to meet the long unsatisfied requirement. As properly
stated by Tomlin J. in Samuel Parkes & Co. Ltd, v.
Cocker Brothers Ltd., (46 RPC 241 at 248) - "the
truth is that, when once it has been found, as I
find here,that the problem had awaited solution for
many years, and that the device is in fact novel and
superior to what has gone before, and has been
widely used, and used in preference to alternative
devices, it is, I think practically impossible to
say that there is not present that scintilla of
invention necessary to support a patent".
After reviewing the ground for rejection set forth by the
examiner, as well as the argument both oral and written set
forth by 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 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 of Claims 1,2, 3, 4 and 6 is obvious in view of the
prior art.
The application is directed to a linear measuring instru-
ment with means for magnetically holding a crank arm. Claim 1
reads as follows:
An improved linear measuring instrument comprising
a rotatably mounted winding drum; a linear measuring
tape removably wound on said winding drum; mounting
means for rotatably mounting said winding drum; a
crank arm connected to said winding drum, said crank
arm having a winding position operable to effect
rotation of said winding drum and a nonwinding
position; and magnetic holding means for magnetically
holding said crank arm in at least one of the winding
and nonwinding positions.
The basic reference to Hare discloses a Winding-Reel
having a winding drum, means mounting the drum for rotation
and a crank arm connected to the drum, said crank arm having
a winding and nonwinding position. The patents to Smith,
Dunkelberger and Baermann show that the use of magnets as
holding, hold-down or securing devices is a well known and
obvious expedient.
With respect to applicants argument that since the
application of a magnet to a linear measuring instrument is
not known the combination (as defined in claims 1, 2, 3, 4 and
6) must be inventive. This combination may be new, however,
it must also show some degree of unobviousness.
I find claims 1, 2 and 3 differ over the cited reference
(Hare) by a single statement (line 7 of claim 1) which in
effect amounts to no more than a statement of the commonly
known function of magnets as a hold-down means,as shown by
the cited Smith, Dunkelberger et al and Bearmann et al references.
This, in my opinion, is clearly mere substitution in an obvious
manner, and is merely taking advantage which is to be expected
as a result of the well known purpose to which magnets may be
used. This is, the action or effect of none of the elements
embraced by the combination is modified in any material way
by the fact that a magnetic means has been used instead of the
spring means. Claims 4 and 6 differ over claims 1, 2 and 3
only in that the hold-down magnet is placed in positions which
are considered obvious.
Applicant stated that claims similar to the rejected claims
are allowed in united States and West Germany and while it is
agreed that this is of interest, it is not considered persuasive.
Applicant has also stated teat the device has been a commercial
success. Commercial success may assist in determining the
presence of invention in cases of substantial doubt, but in all
cases it must be viewed with caution as such success may well
be due to causes extraneous to the invention. However, the
presence of invention has not been denied in view of allowable
claims, therefore, the subject of commercial success is not a
matter of contention. This also applies to the question of
durability and economy of production as discussed by the
applicant in his attempt to prove a presumption of patentability.
I hold that the subject matter of claims 1, 2, 3, 4 and 6
lack the attribute of inventive ingenuity over the teachings of
the prior art.
I recommend that the decision of the examiner, to refuse
claims 1,2, 3, 4 and 6, 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 claims 1,2,3, 4 and 6. Claims
5, 7, and 8 will be considered as allowable when written in
independent form. 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,Ontario,
this 13th day of October, 1971.