UNOBVIOUS: Substitution of Material.
Admitting that the principle of making articles that are apt to
sink in water floatable is old, to do so by making the eyeglass frames
and temple members of a material of sufficient strength, and of volume
and specific gravity sufficiently less then 1.0, is unobvious over
the prior art which teaches external attachment only of floatable
materials; the propylene substance used having been known since the
mid.-1950's.
FINAL ACTION: Overruled.
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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 5, 1972 on
application 084,892. This application was filed in the name of Mr.
Carl H. Wilson and refers to "Spectacles". The Patent Appeal Board
conducted a hearing on November 15, 1972, Mr. H.W. Rock and Mr. L.
Selman represented the applicant.
In the prosecution terminated by the Final Action the examiner
refused the claims as being obvious in view of the prior art and
common general knowledge.
The prior art cited is as follows:
Canadian Patent
811,419 Apr. 29, 1969 Del Riccio
United States Patent
3,038,375 June 12, 1962 Gansz
British Patent
1,110,554 April 18, 1968
The examiner's action reads in part:
In the Office Action of October 26, 1971 it was contended
that the only feature, for which the present application
was directed for patent protection, was to provide eyeglasses
with a frame composed of a material which would allow them
to float if dropped into water. This contention was not
denied or argued by the applicant and hence it is assumed
the contention was correct.
The principle of concept, causing articles apt to sink to
float by making them buoyant; by either (a) attachment of
float means or (b) by making certain parts with a low
enough specific gravity that the entire article will float,
is old.
Proof that this is so is abundantly obvious in the world of
commerce to-day. Examples of this related to (a) above are,
floats attached to fish nets, floats attached to canoes, and
the floats shown attached to the glasses in the Gansz patent.
Examples of part (b) of the above principle are, canoes and
the like made of foamed plastics, fishing knife handles,
fishing rod handles and the substitution of materials in
binoculars, as shown in the patent to Del Riccio, which
will allow binoculars to float.
Applicant has argued over the rejection by stating that (1)
no prior art shows the construction of glasses that are
made to float by using light plastic foams and that this
substitution of material has had commercial success and;
(2) that the use of the cork cladding of the Del Riccio
binoculars will not allow them to float.
The applicant's response reads in part:
The major distinctions over the prior art are, of course,
that applicant does not employ anciliary members or a
cladding material in order to lower the specific gravity
of the temple piece assemblies. Instead, applicant forms
the temple pieces, and the frame, as unitary members of
monolithic constructions, thus avoiding floats in their
entirety. Further, and opposed to the teachings of the
prior art, applicant's frame and side pieces are formed
from a substantially inflexible material. In this
respect, one can hardly visualize a spectacle frame
made from foamed polystyrene, cork or sponge, etc. Such
materials just would not have the necessary stiffness,
unless, of course they were provided with metal reinforce-
ments; but this again brings us back to the prior art method
of adding something to make the spectacles buoyant.
While it is true on certain objects such as knives and
fishing rods it may appear obvious to provide cork handles
to make these devices floatable it is not seen that this
is equivalent to the utilization by applicant of a material
that has to be specially selected and formed to hold lenses
and have hinge structure affixed permanently thereto as
applicant has done in his invention. It is believed that
if this invention as disclosed herein, specifically
directed to spectacle frame and temple structure, was
truly obvious both in conception and reduction to practice
others would have followed applicant's superior approach
before the invention thereof by him. Patents and structures
such as illustrated in the Gansz patent appear to be an
indication that others could not foresee how to reduce to
practice applicant's invention and could not foresee all
the advantages of applicant's inventive structure and this
tends 'to demonstrate the unobviousness thereof.
This application relates to spectacles in which the frames and
temple members are composed of material which will allow them to
float in water. Claim 1 reads:
A pair of spectacles including lenses and frame, said
franc being made of material having a specific gravity
sufficiently less than about 1.0 and of a volume great
enough to buoyantly support said spectacles in a body
of water when said lenses have a specific gravity
appreciably above 1.0.
Having studied the application the Board finds that as early as
1958 Gansz appreciated that it would advantageous to have some means
whereby eyeglasses will float if they are dropped into water. Gansz,
however, discloses only externally applied floats to the temple members
of the spectacles, as one would, for example, attach a float to fish
net lines; the floats, however serve no other purpose. It is clear that
the Gansz disclosure is silent regarding a buoyant spectacle article
other than buoyancy provided by attachment of floats to the temple
members. On this basis the Gansz reference fails to meet the applicant's
claimed article in any specific characteristic. The Board, therefore,
is satisfied that this reference tends to lead one away from what the
applicant has done in making the frame and temple members of buoyant
material.
The Del Riccio patent discloses external cork float attachments
to field glasses to improve buoyancy properties. But, this reference,
while disclosing external float attachments, does not teach field
glasses manufactured from a material which in itself is inherently
buoyant and capable of rendering the glasses floatable. It should
also be noted that this reference discloses two relatively large, air
filled eyepiece cavities, normally sealed and relied upon for floatation,
and the cork cladding is an add-on float member rather than a structural
member.
Regarding the position relating to the cited prior use of floatable
material in "boats", "fishing floats", "fishing rod handles" and "fishing
knife handles", such materials are known to have inherent buoyancy and
the ability to render the complete article floatable. However, these
articles may be dismissed as being analogous only in the sense of the
general concept of making parts of articles as add-on features, of
sufficient volume of floatable material so that the article will float.
Furthermore, the applicant is in agreement with this since in his
request for review to the Commissioner under Rule 46(2) he states:
"Applicant agrees that making articles that are apt to sink floatable is
an established principle" Therefore, these citations add nothing
further to the state of the prior art than that to which the applicant
admits as being old.
There seems to be no doubt that the problem of persons losing their
spectacles in deep water has existed for a long time without any
satisfactory solution. Keeping in mind that spectacles have particular
problems as to appearance and (special) material requirements as to
strength to meet the problem of holding the lenses in proper position
it is obvious that the substances used in the cited art cannot be used
in carrying out the objectives of the present invention as disclosed.
Alternatively as previously mentioned, the prior art has attempted to
solve the problem of floatable spectacles by adding floatable devices
to the temple members.
Furthermore, the substance polypropolene used by the applicant to
carry out his invention, has been known since the mid 1950's. The Board,
therefore, is satisfied that the prior art patents and common knowledge
references do not meet the invention as set out in the present specifi-
cation.
Notwithstanding, the Board has some doubt as to whether the claims
are fairly based,in that they appear to go beyond the invention
disclosed by failing to set out the required strength as well as buoyancy
properties of materials needed to meet the normal function of spectacles
as an article to be worn. The question of whether the claims satisfy
Section 36(2) of the Patent Act in this respect will be the subject of
further consideration and decision by the examiner.
The Board recommends that the Final Action be withdrawn.
R.E. Thomas,
Chairman, Patent Appeal Board.
1 concur with the findings of the Patent Appeal Board and withdraw
the Final Action and return the application to the examiner for
resumption of prosecution.
Decision accordingly,
A.M.Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 24th day of November, 1972.
Agent for Applicant
Messrs. Alex E. MacRae & Co.