DECISION OF THE COMMISSIONER
UNOBVIOUS: Non-analogous prior art.
The objective in the manufacture of different size needle
cylinders is completely different from the objective of the
80-year old citation, and that what applicant has done is not
obvious from its teaching.
FINAL ACTION: Refusal of the application overruled; some
claims refused.
* * * * * * * * * * *
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 024,078 filed July 3, 1968 for an invention
entitled:
SPRING NEEDLE KNITTING MACHINE CYLINDER
Agent for Applicant
Mr. George H. Riches,
Toronto, Ontario.
* * * * * * * * * *
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
July 14, 1971 on application 024,078. This application was
filed in the name of David P. Moore and refers to "Spring
Needle Knitting Machine Cylinder".
In the prosecution terminated by the Final Action the
examiner refused the application as obvious in view of prior
art, namely:
Canadian Patents
17,347 July 24, 1883 Irvine et al
36,946 July 10, 1891 Coddington
In the Final Action the examiner stated:
Irvine et al discloses a pulley comprising a hub,
radially extending spokes and rim structure. The
pulley further comprises an arcuate, detachable
segment connected to the rim by flange, bolts,
keys, or equivalent means. The arcuate segment is
further connected to a spoke by an inwardly project-
ing stub having a reduced portion which fits into a
socket in the spoke.
Coddington discloses the principle of a pulley
structure whose cylindrical rim is made up of
arcuate segments. The spokes are connected at the
hub. This patent has been cited primarily to
show that it is well known to form the rim of a
wheel-like structure from a plurality of separate
arcuate segments.
The subject matter disclosed and claimed in this
application is directed to the structure and
particularly the inner structure of a needle
cylinder. In so far as this inner structure is a
wheel-like structure, consideration of design and
manufacture are analogous to those of other wheel-
like structures such as the pulley structures
disclosed in the above patents. It would be
expected that when an unusually large part is
to be manufactured such as the needle cylinder in
question, ways and means would be sought to
build up such large part from several parts. Irvine
et al and Coddington show how this may be done with
pulleys. The size of the pulley structures is
not disclosed and may well be compatible with the
size of applicant's cylinder. Furthermore, it is
well established that the mere size of a structure -
is not a patentable characteristic.
Applicant's argument ........................to the
effect that there is a presumption that it was
not obvious to a person skilled in the art to
arrive at applicant's idea from the disclosures
of the cited patents is refuted. It is stated
that the presumption is supported by the allowance
of the corresponding British and United States
applications. However, it is noted that the
above Canadian Patents have not been cited in
these countries. The presumption therefore is
not properly based.
In the response dated October 14, 1971 the applicant stated:
Applicant submits, in addition to what was said
in the previous responses, that the Examiner is
not on strong ground when he relies for his rejection
on the basis of obviousness when he relies on two
prior patents which were granted over 80 years ago.
It is quite evident that what the Examiner says
is obvious, has escaped persons skilled in the art
for over 80 years.
It is respectfully submitted that the Examiner is
using hindsight in making his findings of obvious-
ness. With the teachings of the applicant before
him, he has taken the prior art and reconstructed
the same in order to find applicant's invention.
It is well settled in Canadian jurisprudence that a
person seeking to establish obviousness is not entitled
to approach the question in such a manner.
With reference to the second to last paragraph of
the Examiner's Report in which he comments on
applicant's submission re presumption and the
Examiner then states "The presumption therefore is
not properly based." In making such a finding,
the Examiner points out that the above Canadian
patents were not cited in the United States or
Great Britain. In answer thereto, applicant points
out that a person skilled in the art is presumed to
have all of the art at the time that he made the
invention. Likewise, the two Canadian patents
cited by the Examiner were available to the United
States Examiner when he examined the United States
application. The British and United States Ex-
aminers being skilled in this art and being
presumed to have knowledge of the applied Canadian
patents, it is therefore submitted that these
Examiners did consider such art and decided that
the same were not applicable. Furthermore, they
must have considered that the invention was not
obvious in view of the art.
After reviewing the grounds for rejection set forth by
the examiner, as well as the arguments set forth by the
applicant, I am not satisfied that the rejection is well founded.
The application discloses a needle cylinder for a knitting
machine composed of a plurality of identical arcuate interlock-
ing segments secured to a central supporting member and wherein
the segments may be replaced with segments of a different size
to change the overall size of the cylinder. Claim 1 reads as
follows:
A spring needle knitting machine needle cylinder
comprising a central supporting member, an annular
member composed of a plurality of arcuate segments
connected to form a cylinder, and means connecting
certain of the segments to the central supporting
member.
The reference to Irvine refers to, and I quote: "a pulley
for machine-belting, provided with a removable section of the
rim, which is designed to be taken out at any time for
slakening the belt ...." The removable section is connected
to the rim and is further connected to a spoke by an inwardly
projecting stub. The reference refers to a pulley which
somewhat resembles a wheel and has only this in common with
a needle cylinder of a knitting machine in that it also
somewhat resembles a wheel. The problem facing the applicant;
the manufacture of different size needle cylinders, is
completely foreign to the objective of the reference; means
to facilitate the slackening of a belt.
The reference to Coddington was cited to show the principle
of a pulley structure whose cylindrical rim is made up of
arcuate segments and "the object of the invention", and I
quote." ... is to secure the separable pulley to the shaft
in such a manner that an equal bearing of all parts ...."
I find that claims 1 and 4 are met by the references
for the reasons set forth by the examiner in refusing all
the claims. Claim 2 when written in independent form is
considered allowable over the cited references. There is no
disclosure in the references of; a central supporting member
comprising a hub having a plurality of stub-spokes, and
arcuate segments with inwardly projecting stubs for engage-
ment with said respective stub-spokes. Furthermore, I do not
find that this would be obvious from the teachings of the
Irvine reference in that the objective of the applicant and
that disclosed in the reference is completely different.
Admittedly, a segment of the pulley, as shown in the reference,
is removable from the rim, however, I am not satisfied that this
reference would teach the applicant, even considering obvious-
ness, how to construct a needle cylinder for a knitting
machine as disclosed in this application. Claim 3, renumbered
as Claim 2, would then, under the circumstance, be considered
allowable. Claim 5 when written in independent form is
also considered allowable. The last line in Claim 4 should
be changed to properly read: "...member about a rotatable
supporting member". I also find Claim 6 allowable. Claims 5
and 6 are considered allowable for basically the same reasons
as that set forth for claim 2, however, they are considered
more restricted while adding more detail.
I am satisfied that applicant has made an advance in the
art. There is no teaching in the references which would
indicate the manner in which to manufacture a needle ~ylinder,
of any required size, while at the same time using the same
or a standard central supporting member; furthermore, I
maintain it would not be obvious. I am also satisfied that
applicant has made a prima facie showing of inventive ingenuity.
I recommend that the decision of the examiner, to refuse
the application as obvious in view of prior art, be withdrawn,
and that the claims 2, 3, 5 and 6 indicated as containing
patentable subject matter, be allowed.
R. E. Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board
and withdraw the rejection against the allowance of the
application, however, claims 1 and 4 stand rejected for the
reasons set forth. 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 15th day of November, 1971.