DECISION OF THE COMMISSIONER
DOUBLE PATENTING: No Basis for Divisional.
COMBINATION: Known elements acting in sequential order.
Rejected on the grounds of double patenting. Applicant is
entitled to one patent for one invention. As originally
tiled the disclosure and claims of the parent application (now
a patent) were only to the process. Divisional claims (this ap-
plication) are directed only to a system of apparatus. Appli-
cant did not envisage "the apparatus" to form a second
invention as a person skilled in the art could lay out
existing known apparatus to carry out the process of the parent
patent.
Objection for failure to recite a patentable combination was
overruled.
FINAL ACTION: Modified
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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 055,622 filed June 27, 1969 for an invention
entitled:
APPARATUS FOR PREPARING A FREEZE DRIED BEVERAGE
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
June 9, 1971 on application 055,622. This application was
filed in the name of John George Muller and refers to
"Apparatus for Preparing a Freeze Dried Beverage". The
Patent Appeal Board conducted a hearing on November 8, 1971.
Mr. J.D. Kokonis represented the applicant.
In the prosecution terminated by the Final Action the
examiner rejected the application under: Section 39, Section
38(2), Section 36(1) of the Patent Act, Section 25 of the
Patent Rules and also that the claims fail to recite a
patentable combination.
In this action the examiner stated:
"On June 11, 1969 resent apparatus claims 1 to 3
were added to 981 ,463 to serve as the basis for
this divisional application (filed June 27, 1969).
These claims were subsequently cancelled on June 30,
1969 before any action could be taken thereon by the
examiner to determine whether or not such claims were
supported by the original parent disclosure, since
Section 38(2) requires that the parent application
must also describe as well as claim any alleged
invention which is made the subject of a divisional
application. It is maintained that the present
application does not have proper divisional status
for the reason that the specific arrangement on
page 2, linen 19 and 20 with regard to the "heat
source means" was not disclosed in the parent applica-
tion as filed. Accordingly, this application stands
rejected for this reason.
Also, apparatus claims 1 to 3 inclusive fail to
recite a patentable combination of elements for the
reason that each of the means recited is well known
in the art and operates independently of the others;
each of these means operates in the same way and
carries out the same function as before and the end
result is simply the sum total of these separate
operations. While there may be invention in the
process this can not confer patentability upon the
apparatus which must rest on its own novel combination
of elements to merit patent protection.
Section 36(1) of the Patent Act requires that the
specification correctly and fully describe the
invention in full, clear, concise and exact terms
to enable any person skilled in the art to make,
compound, construct or use it; in the case of a
machine he shall explain the principle thereof
and the beat mode in which he has contemplated the
application of that principle. In this application
there is no disclosure of the principle of the claimed
apparatus system nor is there any explanation of
the best mode of applying the principle of any such
system of apparatus. The disclosure is insufficient
to allow any person skilled in the art to make the
claimed combination of apparati, since the disclosure
neither describes the claimed elements individually
nor shows how they may be interconnected to provide
the claimed combination. In reply to this argument,
applicant has provided an affidavit from one who is
the inventor named in several closely related patents
and copending applications, all assigned to the same
assignee as the present application. Such an aftiant
could not be considered as any ordinary person skilled
in the art, nor one who would read the present applica-
tion without having ha d the benefit of hindsight in
knowing of the alleged invention as it is now installed
and operating. Therefore, Section 36(1) has not been
satisfied and applicant has no entitlement to claims
directed to an apparatus or an apparatus system in
this application.
In applicant's response of September 9, 1971 he stated:
The Examiner's objection to the divisional status
of the subject application is that the parent applica-
tion did not describe as wall as claim the invention
now claimed in parent application, and specifically
did not disclose the matter now contained in page 2,
lines 19 and 20 of the present application (see also
paragraph (f) in claim 1) namely "heat source means
coacting with vacuum means for heating and drying the
frozen extract". It is respectfully pointed out that
thin objection will not be substantiated by an
examination of the originally filed disclosure in
the parent application. In that disclosure, in
describing the coffee making operation, the following
passage appears on page 7 commencing at line 2:-
"Atter the coffee extract has been concentrated by
partial freezing and separation of the resulting ice
crystals, it is dehydrated to powder form by a method
known in the art as freeze drying. According to this
method, the coffee extract is frozen to a low tem-
perature and subjected to vacuum conditions so
that the ice sublimes away from the mass, leaving
only the coffee solids containing but a small
amount of water. Durin the vacuum sublimation of
the ice, heat must be supplied to maintain the tem-
perature at the particular level required to maintain
the process as the vacuum conditions selected".
the applicants vigorously deny that the application is
objectionable under Section 39(1) of the Patent Act.
The applicant has already tiled drawings "showing
clearly all parts of the invention", and as has been
argued above, and as is supported by the evidence of
Ganiaris, the disclosure is in all respects sufficient.
Nor is it seen how the drawings, or the disclosure as
a whole, would in any sense be improved by the
illustration of details of known elements of
apparatus employed in the applicant's system. Such
additional unnecessary drawings would be redundant if
not confusing. The applicants submit that the
Examiner's arbitrary application of a rejection under
Section 39(1) of the Patent Act is unjust and is clearly
contrary to the intent of the Statute.
The Examiner's rejection under Rule 25 is apparently
based upon a misconstruction of the requirements of
this Rule. It is submitted that Rule 25 is not
concerned with the question of "sufficiency of
disclosure" in the sense of Section 36(1) of the Act,
which requires the disclosure to be "in such full,
clear, concise and exact terms as to enable any
persons skilled in the art... to make, construct,
compound or use it ..." but rather is concerned
with the much narrower point that the characteristics..
recited in the claim should find support in the
disclosure.In other words any characteristic mentioned
in a claim should have a counterpart in the disclosure.
While the Examiner has not particularized his objection
under Rule 25, it is pointed out that all of the character-
istics in claim 1, for example, do find support in the
disclosure of the subject application, and also in the
disclosure originally tiled in the parent application.
In the first complete paragraph on page 2 of the
final action the Examiner rejects claims 1-3 as failing
to recite "a patentable combination of elements for the
reason that each of the means recited is well known in
the art and operates independently of the others; each
of these means operates in the same way and carries
out the same function as before and the end result is
simply the sum total of these separate operations".
The Examiner's suggestion that "each of the means
recited as well known in the art" is of no significance
since it is well established that this factor will not
effect the patentability of a novel combination of
such elements. The applicants submit that the Examiner's
statemtnt that the elements of the claimed combination
operate "independently of the others" is not correct
nor is the contention that the end result is simply the
sum total of the separate operations. As will be
evident from a reading of the disclosure, the
particular claimed combination of elements cooperate to
produce a unitary result. The Examiner has failed to
show that the claimed combination of elements lacks
either novelty, utility of inventiveness, and in the
applicants submission the claimed subject matter is
clearly entitled to patent protection.
Applicant also objected to the refusal under Section 36(1)
of the Patent Act in that in his opinion the rejection was not
well founded. To support his argument an affidavit was filed
in the name of I.N. Ganiaris as evidence of the fact that the
disclosure of the subject application would be sufficient to
enable any person skilled in the art to assemble the claimed
system of apparatus.
At the hearing the Patent Agent ably presented the stand
of the applicant in an effort to overcome the rejections of the
examiner. However, 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
that the rejection is well founded in part only.
This application refers to "Apparatus for Preparing a
Freeze Dried Beverage". Claim 1 of the application reads as
follows:
A system of apparatus for preparing a dehydrated
coffee or tea beverage product from an aqueous liquid
extract, comprising:
(a) concentrating means for partially freezing the
liquid extract to form ice therein by indirect ex-
change of heat across a tubular heat exchange surface
between the extract and a circulating refrigerant;
(b) means coacting with concentrating means (a) for
agitating extract and removing ice from said tubular
heat exchange surface;
(c) centrifuge means for separating ice formed in
the extract from said liquid extract;
(d) freezing means for freezing the extract;
(e) means for removing moisture under vacuum from
frozen extract by sublimation; and
(f) heat source means coacting with vacuum means for
heating and drying the frozen extract.
The first ground of refusal by the examiner; the applica-
tion does not satisfy Section 38 of the Patent Act. Section
38(2) reads: "When the application describes and claims more
than one invention the applicant may .., be made the subject of
one or more divisonals". The original disclosure dealt only
with a description of the process. The objects of the
invention were set out as a process, the claims were directed
to a process only and the examples given were stated to be
"illustrative of the process of this invention".
On a complete study of the parent application, it is clear
from the original specification that the applicant did not
envisage "the apparatus" to form a second invention; or even as
a significant aspect of the invention for which application was
made. This agrees with the affidavit by Mr.I.N. Ganiaris
wherein he stated: ... "since I have knowledge of such equipment
and would have no undue difficulty in obtaining the relevant
elements and interconnecting them in the necessary manner to
construct the claimed system of apparatus". Surely this would
apply to the process of the original parent application
(now patent 832,291 January 20, 1970) when the only difference
in the claimed system is the mere recitation of means (known)
for carrying out the process. Thus it follows that Mr. I.N.
Ganiaris, a person skilled in the art, could set up the
apparatus from the teachings of the parent application as
filed, and there appears to be no second invention in which to
base claims which can be the subject of a divisional application
as approved by Section 38(2) of the Patent Act.
In the case of, Mineral,Separation vs. Noranda Mines (1947)
Ex.Cr. 306; 12 C.P.R. 99, it was held that: "the disclosure
must describe the invention and its operation correctly and
fully; so that when the patent aspires those skilled in the
art will be able, having only the specification, to make use
of the invention". Applying this to the parent application which
issued to patent on January 20, 1970 and in consideration of the
affidavit as mentioned above, any one skilled in the art could
assemble the system as claimed. Therefore, I am satisfied that
the process claims and the process dependent product claims in
the patent already granted represents the full extent of the
protection to which applicant is entitled. To allow the system
claims of the present application would do nothing more than
extend monopoly for the invention already patented and would
have the effect of restraining its free use to the public for
an extended period should a patent be allowed to issue from
this application. Shortly stated, applicant is entitled to
only one patent for one invention.
Assuming the facts on which the foregoing conclusion has
been made, Section 36(1) of the Patent Act is not a proper
ground of rejection for some of the reasons stated relating to
insufficiency of disclosure. Under the circumstances I am
satisfied that a person skilled in the art, as noted in the
affidavit, has all the information that is necessary to obtain
the relevant elements to construct the claimed system to carry
out the process of the originally-filed claims. The disclosure
indicates the type of element to be used and further cites
patents etc. to show suitable elements. This, of course, is
based on the contention that there is but one inventive concept
and noting further that the system of apparatus is nothing more
then means (any known) plus the process steps with no apparatus
limitations whatsoever and according to the applicant all of the
apparatus is well known in the art.
The examiner is affirmed with respect to his stand on
some of the other requirements of this section. I quote
Section 36(1) in part "The applicant shall ...fully describe
... shall particularly indicate and distinctly claim the part,
improvement or combination which he claims as his invention".
(underlining added).I find there was no indication whatsoever
of the system of apparatus as claimed forming any part of the
invention, or a second invention, in the original application
and this is distinctly set forth in the 3rd paragraph of the
Final Action. The court, Riddell v. Patrick Harrison & Company
Ltd. 1956-60 Ex. Cr. 213,held that:"...it is a basic rule of
patent law that an invention cannot be validly claimed unless
it has been described in the specification in the manner
required by law. The legal requirement has been made statutory
by Section 36(1) of the Patent Act ..." The circumstance in
this application is analogous to the case referred to above,
except in that case the apparatus was properly described but
not the process and the process claim was held invalid.
Therefore, I am satisfied that the applicant is not entitled to
the claims directed to the apparatus system under Section 36(1)
of the Patent Act. The rejection based on Section 39 of the
Patent Act and Section 25 of the Patent Rules are encompassed
by the issues raised under Section 36(1) of the Patent Act
and require no further discussion.
The examiner stated that claim 1 fails to recite a
patentable combination. However, to make this decision the
tests proving lack of novelty and inventive ingenuity must be
satisfied and this can only be done in reference to the prior
art, and in the present situation this determination has not
been made. Notwithstanding the above, I am satisfied that an
association of known elements cooperating to produce a new
unitary result which is not attributable to any one of the
elements is a true combination, which if unobvious is a
patentable combination, even though the elements act only in
sequential order. In response to an objection made by the
applicant, the Board has no quarrel with the contention that
all the elements of a patentable combination may be old in
that any inventive concept must reside in the combination
itself.
The applicant has referred in his brief to certain patents
and Patent Appeal Board decisions as indicating precedent for
the allowance of the instant claims on appeal. The Board
proceeds on the basis that each application should be decided
on its own merits giving proper consideration to its own
particular facts. Applicant has also stated that similar
applications have been allowed in the United States; while
this may well be of interest it is not necessarily persuading
in that the statutes and particular situation may properly
differ.
I recommend that the decision of the examiner, to refuse
the application on the grounds as discussed herein, 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. 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 22nd day of December 1971.