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. The disclosure and claims of the original parent
application are only for a process. Divisional claims (this application) are
directed only to an apparatus system. Applicant did not envisage "the appara-
tus" to form a second invention as a person skilled in the art could use
existing apparatus to carry out the process of the parent application.
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 070,885
filed December 24, 1969 for an invention entitled:
CONCENTRATION PROCESS
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
070,885. This application was filed in the name of Richard G. Reimus et al
and refers to "Concentration Process ". 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 refused
the application on the following grounds - lack of proper divisional status,
claim 1 fails to recite a patentable combination and the application fails to
meet Section 36(1) of the Patent Act. Section 39 of the Patent Act and Section
25 of the Patent Rules. In this action the examiner stated:
On December 23, 1969 an apparatus claim was added to 976,750 to serve
as a basis for this divisional application, which was filed on
December 24, 1969. This apparatus claim (present claim 1) inserted
in parent application 976,750 for divisional purposes, was cancelled
voluntarily on December 30, 1969, before any action could be taken by
the examiner to determine whether or not such claims were adequately
supported by the original disclosure, in that Section 38(2) clearly
specifies that the parent application must also describe as well as claim
any invention which is made the subject of a divisional application.
Applicant's argument that the claimed (herein) "dehydrator means" is
supported by the original parent disclosure can not be accepted for
the reason that the reference on page 1 lines 21, 22 to complete
dehydration by evaporation of water which may be conducted under
vacuum conditions, refers to prior art methods and in any event this is
considered to be insufficient description of "apparatus". Applicant's
reference to the crystallizer-centrifuge part of the apparatus as
"constituting dehydrated" means has nothing to do with the claimed
"dehydrator means" since both are claimed separately in present claim 1.
Accordingly, it is maintained that this application does not have proper
divisional status:
In any event, apparatus claim 1 fails 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 (claimed in
another application), this can not confer patentability upon the apparatus
which must rest on its own novel combination of elements to merit patent
protection.: In addition, it is maintained that this application fails to
meet the requirements of Section 36(1), Section 39 and Rule 25 with regard
to providing clear and full support of any apparatus claims.
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 best mode in which ha 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,
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.
Further to the above rejection of the claims of this application under
Section 36(1) of the Patent Act, the provisions of Section 39 of the
Patent Act require that, "in the case of a machine or an invention which
admits of illustration by means of drawings, the applicant shall also
with his application send in drawings showing clearly all parts of the
invention". While the block diagram provided in this application may be
useful to illustrate a process, this does not illustrate or show clearly
all parts of an apparatus or system as required by Section 39 of the
Patent Act.
Also Rule 25 of the Patent Rules requires that "every claim must be
fully supported by the disclosure and a claim shall not be allowed unless
the disclosure describes all the characteristics of an embodiment of the
invention that are set out in the claim." In this application the
disclosure does not set out all the characteristics of an embodiment
of the invention claim, indeed, the disclosure is wholly deficient in
describing any characteristics of the claimed embodiment; therefore no
apparatus claims can be allowed in this application.
In applicant's response of September 9, 1971 he stated:
The examiner has rejected the application as being contrary to Section
38(2) of the Patent Act in that it does not have proper divisional
status. This rejection appears to rest on the allegation that parent
application 976,754 provides no support for the "dehydrator means "
claimed in the subject application.
As the applicant has already pointed out, the claimed "dehydrator means"
finds support in the originally filed disclosure of the parent application
in page 1, lines 20 - 22, where it is stated "this process of partial
freezing is then followed by a complete dehydration by evaporation of water
which may be conducted under vacuum conditions". In the final action the
Examiner discounts this support for two reasons. He states that the
quoted passage is an insufficient description of "apparatus". However
the applicants submit that the support is adequate and that it can be
readily inferred from the passage quoted from page 1, lines 20 - 22
that "vacuum dehydrator means" should be used to effect the "complete
dehydration by evaporation of water ... under vacuum conditons".
In the first complete paragraph on the second page of the final action
the Examiner rejects claim 1 as failing to recite a patentable combination.
However this rejection is completely unsupported by the citation of any
pertinent reference, and appears to rest on the Examiner's contention that
"each of the means recited is well known in the art and operates indepen-
dently of the others". While certain of the elements set out in claim 1
may indeed be well known in the art, it is submitted to be self-evident
from a consideration of the applicant's disclosure that the elements
of the claimed system of apparatus certainly do not operate independently
of each other. In fact the elements combine to produce a unitary result
in the concentration process, namely the concentrated extract of coffee
or tea.
The Examiner further rejects the application as failing to meet the
requirements of Section 36(1), Section 39 and Rule 25 with regard to
providing clear and full support of any apparatus claims.
In the third complete paragraph on the second page of the final action,
after paraphrasing Section 36(1) the Examiner states "in this application
there is no disclosure of the principle of the claimed apparatus system
or is there any explanation of the best mode of applying the principle
of any such system of apparatus". Although this objection is based upon
the language of Section 36(1) of the Patent Act, it is difficult to give
it any clear meaning. In the absence of any judicial comment on, the
meaning of the words "machine" and "principle thereof" as used in Section
36(1) it is difficult to ascribe any clear meaning to this language.
However the applicants submit that the word "machine" as used in this
Section of the art does not extend to cover a system of apparatus such
as the one claimed in the subject application. On the other hand if the
word "machine" is given a broad enough interpretation to cover the
claimed system of apparatus, it will clearly cover other "machines"
which do not have any "principle ". The word "principle" has many
meanings, but in the context of Section 36(1) of the Patent Act it would
appear to mean something akin to "general law of operation". If the word
"machine" is given a narrow construction such as "apparatus" for applying
mechanical power, then perhaps many machines could be said to have a
"principle"; for example, an internal combustion engine may operate on
the principle of a theoretical thermal cycle. To expand the scope of
the word "machine" beyond its ordinarily significance to include an
apparatus system such as that claimed in the subject application would make
the wording of this Section of the Act irrational and unintelligible since
many things falling within such a broad interpretation of the word "machine"
clearly do not have any "principle" at all.
It is submitted that the object of Section 39 of the Patent Act is the
same as that of Section 36(1), namely to ensure full and accurate disclosu
of the invention. It is clearly going beyond the intention of the statute
to cite Section 39(1) in attempting to enforce a requirement for additional
drawings where the invention is already sufficiently fully described and
illustrated to enable any person skilled in the art to practice it. Since
the individual items of the applicant's system of apparatus are known in the
art, a detailed description of illustration of these would be superfluous
and contrary to Section 36(1) of the Patent Act which requires that in
describing the invention, the specification should be "concise".
In the final action the Examiner states that the application fails to meet
the requirements of Rule 25 "with regard to providing clear and fully
support of any apparatus claims". In the last paragraph on page 2 of the
final action the Examines states:-
Also Rule 25 of the Patent Rules requires that "every claim
must be fully supported by the disclosure and a claim shall not
be allowed unless the disclosure describes all the characteristics
of an embodiment of the invention that are set out in the claim".
In this application the disclosure does not set out all the charac-
teristics of an embodiment of the invention claimed, indeed,
the disclosure is wholly deficient in describing any characteris-
tics of the claimed embodiment; therefore no apparatus claims can
be allowed in this application".
It is clear from the above quoted passage that the Examiner has placed
an incorrect construction the wording of Rule 25. Contrary to what the
Examiner implies, Rule 25 does not require that the disclosure should
"set out all the characteristics of an embodiment of the invention
claimed". It is noted that the wording of Rule 25 required that the
disclosure should describe "all the characteristics of an embodiment of
the invention that are set out in the claim". Thus it is the characteris-
tics that are claimed that the applicant is required by this Rule to
disclose and not simply "all the characteristics of an embodiment of the
invention".
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 "Concentration Process" Claim 1 reads as
follows:
An apparatus system for concentration of aqueous liquid coffee or
tea extract comprising: extract forming means to a tubular ice
crystallizer, a centrifuge ice separator, a line conducting a
slurry of ice in liquid extract from said crystallizer to said
centrifuge, means introducing wash water into said centrifuge, a
line removing washed ice from said centrifuge, a line removing ice
freed extract from said centrifuge, a vacuum dehydrator means, a line
conveying extract from said dentrifuge to said dehydrator means
and a line removing dried extract product from said dehydrator
means.
The first ground of refusal by the examiner; the application 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 of more divisionals". 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 when
the only difference in the claimed system is the mere recitation of means
(known) for carrying out the process with no apparatus limitations whatsoever.
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 on which to base claims which can be the
subject of a divisional application as approved by Section 38(2) of the Patent
Act. 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. In the case of Mineral
Separation vs. Noranda Mines 1947 Ex.C.R. 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 expires those skilled in the art will be
able, having only the specification, to make use of the invention". Applying
this to the parent application and in consideration of the affidavit as mentioned
above, any one skilled in the art could assemble the system as claimed. 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. 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 than 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
apparatus system as claimed foaming any part of the invention, or a second
invention, in the original application and this is distinctly set forth in
the 2nd paragraph of the Final Action. The court, Riddell v. Patrick Harrison
& Company Ltd. (1956-60) ExCR. 213, has held: "... 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 com-
bination. 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 asso-
ciation 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 unovvious 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 patenta-
ble combination may be old in that any inventive concept must reside in the
combination itself.
The applicant has referred is 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 applic-
ations 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 2nd day of December 1971.