DECISION OF THE COMMISSIONER
UNOBVIOUS: Prior Art Teaches Substances To Be Ineffective.
New claims submitted to replace claims under refection allowable.
Obviousness cannot be established merely by a citation specifically
teaching that a process would be ineffective.
FINAL ACTION: Modified claims allowable
**************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated November 30, 1971 on
application 985,785. This application was filed in the name of
Wolfgang Friemel and refers to "Method Of Making Magnesium Phosphide".
The Patent Appeal Board conducted a hearing on May 24, 1972,
Mr. G.C. Clark represented the applicant.
In the prosecution terminated by the Final Action the examiner
rejected the claims of the application in view of prior art. The prior
art cited is as follows:
German Patent
736,700 June 28, 1943 Schotte
In the Final Action the examiner stated in part:
The refection of claim 1 to 20 for lack of invention in
view of the reference cited is maintained. German Patent
736,700 discloses on page 1 lines 1 to 15 that the problem
of reacting magnesium metal and red phosphorus in a
controlled manner is recognized. It further teaches that
attempts have been made to overcome this problem by employing
such diluents as magnesium oxide, magnesium carbonate and
ammonium chloride. A common commercial form of magnesium
oxide or magnesium carbonate is a light powder having an
unpacked weight under 350 g./l. and it is likely that such
a powder was employed in the experiments described.
Claim 1 is refused, too, as anticipated by the reference
patent wherein it teaches the use of such diluents as
magnesium oxide. It is admitted that the present applicant
claims to have employed such materials successfully
whereas the reference teaches that these materials were
substantially ineffective. However, because claims such as
4 and 6 are directed simply to the use of the known
materials and fail to include such new restrictions as
may be necessary to make the process successful, these
claims are refused as failing to distinguish over the German
patent.
In applicant's response of February 29, 1972 he submitted a new set
of claims in an attempt to avoid all the objections of the examiner
in the Final Action. The applicant also indicated, specifically at
the hearing, that he was not interested in the claims presently on
file in the application and indicated that there were only two
objections outstanding with respect to the new claims; these are
anticipation and obviousness.
The applicant discussed at length how the new claims overcome the
objections of the examiner and stated in part:
Concerning obviousness, it is also believed that the
fresh claims define a patentable invention. Indeed it
is not seen how a broad statement indicating that certain
diluents are not substantially effective--which for
practical purposes must mean to the skilled man that
they will not work--to make a reaction less violent can
be said to render obvious a claim directed to the use of
those same or similar diluents provided that they have
a bulk weight below a certain specified level. The Examiner
indicated in the final action that a common commercial
form of magnesium oxide or magnesium carbonate is a light
powder having an unpacked weight of under 350 grams per
liter and that it is likely that such a powder was employed
by Schotte. It is believed that this assertion is unjus-
tified. Our reaction is that obviously such a powder was
not used and our position is supported by the statement
concerning lack of substantial effectiveness in Schotte
when read in conjunction with the examples of the present
disclosure. Example 1 probably gives the worst results
concerning violence of reaction but even here the reaction
is described only as violent with white flame. The
processes of the remaining examples proceed well and in
some cases calmly. The lowest yield of phosphide is 62% and
many of the yields are over 70%.
In view of the fact that the applicant has declared no interest in
the claims presently on file the Board will not consider these claims
and assumes that they did not overcome the objections of the examiner
on the grounds stated in the Final Action.
The reference to Schotte discloses on page 1 "The only known method
of producing magnesium phosphide is the direct reaction of magnesium
with phosphorus. The reaction of the mixture is not possible in
open apparatus... known diluents such as magnesium oxide, magnesium
carbonate and amonium chloride are not substantially effective".
It is taken as settled that, for a prior patent to constitute an
anticipation, it must disclose the same or give information equal in
practical utility to that given by the patent in question (Baldwin
v. Western Electric (1934) S.C.R. 94 at 103). In considering new
claim 1 it is found that the subject matter of this claim is not
anticipated by the reference. The restriction regarding the particular
size of the reaction retardants listed in group (a) of the claim is
not taught by the reference. If claim 1 is entered all other new claims
will include its subject matter either directly or indirectly.
It is also held that the process of new claim 1 is not obvious in
view of the applied reference because the compounds of part (b) of this
claim are not mentioned in the Schotte patent, and because Schotte
states that magnesium oxide, magnesium carbonate, ammonium chloride
etc. are not substantially effective. In a similar case, Nestle's
Products Ltd.'s application 1970 R.P.C. 4, Mr. Justice Lloyd-Jacob
stated "I am unable to accept that an allegation of obviousness of a
process can be established merely by the citation of a document which
contains specific teaching that such a process would be ineffective".
The Board is satisfied that the new claims overcome the objection
of the examiner on the grounds stated in the Final Action and recom-
mends that the claims on file be refused.
R.E. Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and refuse
to grant a patent for the claims on file in this application. The
prosecution of the application will proceed when the new claims are
officially entered. The applicant has six months in which to appeal
this decision in accordance with Section 44 of the Patent Act.
Decision accordingly,
A.M. Lsidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 1st day of June, 1972.
Agent for Applicant
Messrs. Fetherstonhaugh & Co.
Ottawa, Ontario.