DECISION OF THE COMMISSIONER
DOUBLE PATENTING: No Basis for second invention
COMBINATION: Known elements acting in sequential order.
Rejected on the grounds of double patenting. As originally
filed the disclosure and claims are directed only to the
process, now covered in a divisional application. The present
application contains claims directed only to an apparatus
system. The applicant did not envisage "the apparatus"
to form a second invention as a person skilled in the art
could use existing known apparatus to carry out the process
as originally filed.
Objection for failure to recite a patentable combination
was overruled.
FINAL ACTION: Modified
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
976,750 filed November 29, 1966 for an invention entitled:
CONCENTRATION 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
June 9, 1971 on application 976,750. This application was
filed in tre name of Richard George Reimus and Anthony
Saporito and refers to "Concentration Apparatus". 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 25 and
Section 52 of the Patent Rules, Section 36(1) and Section
39 of the Patent Act and that the claims fail to recite a
patentable combination.
In this action the examiner stated: (in part)
It is noted that the originally filed specification
was not concerned with an apparatus, but was directed
instead to a process. It was a process that was
set forth as the expressed object of the invention;
this process was described, and the specification ended
with claims to a process only. Any mention of
apparatus was made only indirectly, in relation to
the description of the process. Since its original
filing this application has been repeatedly amended
to expand the scope of the claims and to construe
and convert an original description of a process in
an attempt to provide support for added apparatus
claims.
it is, therefore, maintained that this application
fails to meet the requirements of Section 36(1) and
Section 39 of the Patent Act and Rule 25 of the Patent
Rules, with regard to providing proper support for
any apparatus claims for the reasons set forth below.
Section 36(1) requires that the specification shall
"correctly and fully describe the invention and its
operation or use as contemplated by the inventor"
which means that the disclosure must contain at least
one adequately described specific working embodiment
of the claimed apparatus, The individual elements of
the claimed sy stem are neither described nor identified
sufficiently to provide such an embodiment, For
example, the tubular ice crystallizer is mentioned
only vaguely, while the washing means was not so much
as mentioned in the disclosure as filed, being only
implied, Also, this is further evidence pointing to
the fact that an person skilled in the art would be
unable to use the present disclosure to make the
claimed apparatus.
The examiner also obiected to claims 1-5 in that they
fail to recite a patentable combination of elements for the
reason that each element is well known and operates independently
of each other.
In applicants response of September 9, 1971 he stated:
in the first paragraph on page 2 of the final action
the Examiner details his objection under Rule 36(1),
and states that "the disclosure must contain at least
one adequately described specific working embodiment
of the claimed apparatus".
It is pointed out that such a "specific working
embodiment" is described in Page 9 of the originally
filed disclosure. It is furthermore submitted that,
contrary to the Examiner's suggestion the individual
elements of the claim system are described and ident-
ified sufficiently in the disclosure. It is pointed
out that the applicant's corresponding United States
Application, containing a disclosure essentially the
same as that of the subject application, was not found
deficient in respect of adequacy of disclosure, and
resulted in the issuance of U.S. Patent 3,474,723
containing claims identical to the claims under final
rejection in the subject application.
It is submitted that the applicantts disclosure is
sufficiently explicit to allow "any person skilled in
the art to make an apparatus as claimed in claims 1
to 5", and that the absence of detailed descriptions
of the elements which make up the claimed combination,
and of detailed drawings of these elements, is of no
consequence, and does not suggest that the disclosure
is inadequate. The various elements of the applicant's
apparatus described in the specification and illustrated
in the drawings are conventional items which would be
known to any man skilled in the art and could be
readily secured by him and assembled together to
provide the claimed apparatus. In the circumstances
it is submitted that a detailed description or
illustration of the se items would not only be unneces-
ary but also superfluous.
Applicant also objected to the refection under Section 39
of Patent Act in that all of the elements are old and this
section does not require redundant illustrations, The applicant
further indicated that the rejection under Sections 25 and 52 of
Patent Rules is unsupported. The applicant also objected to
the grounds of lack of patentable subject matter in the claims
in that the examiner failed to show the combination lacks either
novelty or inventiveness.
At the hearing the Patent Agent presented a well prepared
case 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 Apparatus".
Claim 1 reads as follows:
An apparatus system for concentration of aqueous
liquid coffee or tea extract comprising: precooling
and holding means, a precipitate separation device,
a first line conducting cooled extract from said
precooling and holding means to said separation device,
a tubular ice crystallizer, a second line conducting
separated extract from said separation device to said
tubular ice crystallizer, a centrifuge ice separator,
a third line conducting a slurry of ice in a concen-
trated liquid extract to said centrifuge ice separator
from said crystallizer, a fourth line conducting
concentrated extract front said centrifuge ice
separator, means removing ice from said centrifuge ice
separator, and means for washing said ice.
It is noted that the claims as originally filed were
process claims. At a later date claims were entered which
claimed a system of apparatus. The process claims were then
filed in a divisional application. I am of the opinion that
the original specification disclosed only one invention and
there is no support for separate patents on this application
as well as on any other divisional application based on this
application.
On a study of this application it is clear from the
original specification that applicant did not envisage "the
apparatus" to form a second invention; or even as a signifi-
cant aspect of the invention for which application was made.
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". This agrees with the affidavit filed
by applicant in the name of 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 also apply to the process as originally filed in this
application when the only difference in the claimed system
is the mere recitation of means (any known) for carrying out
the process with no apparatus limitations. Thus it follows
that Mr. I.N. Ganiaris, a person skilled in the art, could
get up the apparatus from the teachings of this application
as filed, Consequently, I am of the opinion that there is
not a second invention on which to base claims which can be
the subject of a second application as set out 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. Cr. 306; 12 S.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 specifica-
tion, to make use of the invention". Applying this to the
present application (parent) as filed and in consideration of the
affidavit as mentioned above, I am satisfied that a person skilled
in the art, has all the information that is necessary to obtain
the relevant elements to construct the system to carry out
the process of the original specification. 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 Section 36(1), I quote
Section 36(1) in part "...The applicant shall ... full 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 reference to this is set out in the 2nd 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 is 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, ex-
cept 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 system of apparatus under Section 36(1)
of the Patent Act. The rejection based on Section 39 of the
Patent Act and Sections 25 and 52 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 thin 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 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.