DECISION OF THE COMMISSIONER
INSUFFICIENCY: Introduction of new matter Rule 52
The Final Action under the circumstances well founded; but the
problem was basically misrepresentation in the drawings and mis-
leading statements in the disclosure which could have been resolved
without having it referred to the Appeal Board.
Final action: Withdrawn; amendments proposed accepted.
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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 912,392 filed September 23, 1964 for
an invention entitled:
ELECTRONIC CALCULATING APPARATUS
Agent for Applicant
Messrs. Smart & Biggar
Ottawa, Ontario.
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This decision deals with a request for review by the
Commissioner of Patents of the Examiner s Final Action dated
December 30, 1970 on application 912,392. This application
was filed in the name of Howard M. Rathbun et al and refers to
"Electronic Calculating Apparatus". The Patent Appeal Board
conducted a hearing on November 18, 1971. Mr. R. Barrigar
and Mr. L. Avant represented the applicant.
In the prosecution terminated by the Final Action the
examiner refused the application for addition of new matter
contrary to Section 52 of the Patent Rules and for lack of
sufficient disclosure to support the claims. In this action
the examiner stated:
It is stated on page 5 lines 20 to 22 that the first
P1 pulse resets flip-flops Fl and F2 to their zero
states, however reference to the disclosure and
drawings as filed only enables one skilled in the
art to infer that F1 and F2 are in their zero states
at the time P1-1 is received by flip-flop F1, Figure
2 does not show means to apply P1 pulses to F2 and
there is no suggestion in the original disclosure
that P1 pulses are in fact applied to flip-flop F2.
Moreover reference to figure 3 shows that when pulse
P1-5, which one infers as corresponding to P1-1 in
its effects, is applied to flip-flop F1 it resets flip-
flop F1 to its zero state with flip-flop F2 already
being in its zero state.
The new matter appearing on page 5 lines 20 to 22 can
therefore not be inferred from the disclosure as
filed and additionally appears to be misdescriptive.
It is further considered that in the absence of
specific teachings of the use of only two flip-flops
to count according to the Gray-code, that there is
insufficient disclosure to teach the generation of
word time identification pulses W1, W2, W3 and W4 as
is required for correct operation of applicant's
apparatus. In his arguments applicant states that
two flip-flop Gray-code counters are well known in
the art but fails to substantiate his statement by
indicating a suitable reference teaching such counters.
Regarding the new matter introduced on pages 16 to 18
applicant has failed to present an argument justifying
the insertion of this matter. It is the Examiner's
opinion that there was no clear teaching in the
disclosure and drawings, as originally filed, to
enable one skilled in the art to infer the operation
of flip-flops F3,F4,F5 and F6 as it is now described.
It is further considered that even the present descript-
ion is so vague and insufficient that one skilled in
the art would not be able to build a mechanism, having
the features desired, without considerable experimen-
tation.
In view of the above reasons,applicant's disclosure is
still rejected for introducing new matter contrary
to Rule 52 of the Patent Rules. It is further
refused for being insufficient to enable one skilled
in the art to construct applicant's apparatus as re-
quired by Section 36(2) of the Patent Act.
Since applicant has not disclosed and taught the
presently claimed apparatus with sufficient detail
to enable one skilled in the art to construct it,
all claims are refused.
In the applicant's response of March 30, 1971 he states:
With particular reference to the Official letter of
the 30th of December, 1970 applicant submits that
the continued rejection of the amendments at pages
5 and 16 to 18 cannot be sustained on the basis of
the statements contained in the Official letter.
First with respect to the matter at Page 5, lines 20
to 22 it appears that the Examiner has overlooked the
argument contained in Schedule B (the response to
the Official letter of 21 August, 1970), and it is
disappointing at the Final Action stage that the
Examiner has not in any way dealt with this argument.
The Examiner appears to misunderstand the operation
of the circuit in question. The Examiner appears to
be under the impression that Figure 3 establishes
that flip-flop F1 and F2 of Figure 2 are already
in their zero states at the time of pulse F1-1,
notwithstanding that Page 5, lines 20 to 22 state that
both flip-flops are reset to their zero states by
the P1-1 pulse. The Examiner has referred to the
application of P1-1 solely to flip-flop F1 and to the
absence in figure 2 of means to apply P1 pulses to
flip-flop F2. This statement by the Examiner suggests
that he does not understand that the P1 pulses are
actually applied to the input of the counter 2 in which
F1 and F2 are disposed and interconnected. It is
submitted that anyone skilled in the art would comprehend
this and thus realise that what is said on page 5,
lines 20 to 22 is clearly inferable from the disclosure
as filed and is certainly not misdescriptive.
With respect to the flip-flop Gray-code counters,
applicant is puzzled by the Examiner's comment that
the applicant has failed to substantiate the statement
that these are well-known in the art by indicating a
suitable reference. Applicant reiterates that these
flip-flop Gray-code counters are well-known in the
art and is embarrassed by what appears to be some
question as to the good faith of the applicant in
making this statement.
The specification as originally filed described Figure
7 as a schematic illustration of a mechanism for con-
verting the keyboard digits into binary form. Present
Pages 16 to 18 merely describe in more detail what
happens in the operation of figure 7 and which was
more generally described in the passages running from
original Page 12, line 22 to original Page 13, line 19.
The so-called "new matter" consists merely of a step-
by-step example of how any given number entered into
the digit keys is converted into binary form, in this
case the decimal number 99 being converted to the
binary number 1100011. The original description
states succinctly with reference to Figure 7 and to
an algorithm how the digits of a given number entered
into the keyboard are converted into a corresponding
binary member. Assuming that a person skilled in the
art can follow a schematic diagram and understand an
algorithm,as well as appreciate the meaning of a 5211
code, he would readily be able to start with the de-
cimal, number 99 and trace its progress through Figure
7 until it appears serially in binary form at point
d. The so-called "new matter" merely saves the person
skilled in the art this exercise.
After reviewing the grounds for rejection set forth by the
examiner, as well as the arguments set forth by the applicant,
I am satisfied that the rejection,under the circumstances,
was well founded. However, I find the problem could have been
resolved without having it referred to the Patent Appeal Board,
I might add that I find no fault with the action of the examiner
as repeated attempts were made for an interview with the appli-
cant. On the other hand the applicant had lost technical
assistance due to circumstances beyond his control.
At the hearing the problem basically resolved itself into
one of misleading illustrations in the drawings and some misleading
terminology in the disclosure. Figure 3 commenced with the
occurrence of a P1 pulse instead of illustrating the
state of the various signals both immediately before and
immediately following the occurrence of the first P1 pulse.
Figure 2, designated by blocks - reference numerals 1,2 and 3,
is also misleading. Block 2(F1) is shown as receiving the
P1 pulse, however, block 2(F2) should also have been shown as
receiving pulse P1.
I am satisfied that the foregoing is a correct inter-
pretation to be placed on Figures 2 and 3 of the drawing and
this was amply demonstrated at the hearing by Mr. L. Avant,
who is considered an expert in the field.
A change in the terminology of page 5 was also discussed
and a voluntary amendment was presented after the hearing. This
amendment appears to be satisfactory. A change to clarify
Figures 1 and 2 of the drawing was also received by this same
amendment.
I recommend that, in view of the unusual circumstances,
the Final Action of the examiner be withdrawn and that the
amendment be accepted and entered.
R .E . Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
withdraw the Final Action and direct the amendment to be entered.
The application will be returned to the examiner for resumption
of prosecution.
Decision accordingly,
Dated at Ottawa, Ontario A.M.Laidlaw,
this 24th day of November, Commissioner of Patents.
1971.