COMMISSIONER'S DECISION
INDEFINITE CLAIMS - Section 36(2): Means by functional clause.
The claims held not to embrace all possible means without qualification so as
to, in effect, restate the problem. Once the best mode of giving effect to a
new idea or principle has been described, the ambit of the claims may protect
against all modes by which the new idea can be given effect.
FINAL ACTION: Reversed
*************************************
The decision deals with a request for review by the Commissioner of Patents
of the Examiner's Final Action dated June 1, 1972 on application 044,570.
This application was filed in the name of Donald E. Schmitt et al and refors
to "Plural Successively Operable Check Controlled Slides".
In the prosecution terminated by the Final Action the examiner rejected claim
21 as being contrary to Section 36(2) of the Patent Act in that it is in-
definite, and for lacking support in the disclosure.
Claim 21 reads:
In a coin chute, the combination of, a base, first and
second slides each adapted to hold a coin and each mounted
for in and out sliding on said base between coin-inserting
and coin-depositing positions, and means on said base for
preventing movement of said second slide to its coin-depositing
position until said first slide has been moved to its coin-
depositing position a preselected number of times.
In the Final Action the examiner stated in part:
Reference Applied
United States Patent
1,736,710 Nov. 19, 1929 Hulin
The Hulin patent teaches a coin activated device utilizing a base
and first and second slides each adapted to hold a coin and each
mounted for in and out sliding on the base between coin-inserting
and coin-depositing positions.
Claim 21 is indefinite in that it merely recites a desired mode
of operation to be achieved with a pair of coin slides and does not
specify an inventive structure which will produce the result.
The claim sets forth the invention in terms of mans with a statement
of function, namely "means on said base for preventing movement of
said second slide to its coin-depositing position until said first
slide has been moved to its coin-depositing position a preselected
number of times". The statement of means plus function is what
distinguishes the claim from the prior art, namely the ~~ulin
patent. This statement is so broad that it embraces all possible
means, without qualification for solving the problem facing the
inventor and is in effect a restatement of the problem.
Claim 21 is further rejected as not being supported by the disclosure.
The applicant has not disclosed a unitary means which by itself will
function as claimed. As defined in the disclosure in the last
paragraph on page 7 the things to carry out the invention include
retainer 45 to prevent the second slide from moving to its coin-
depositing position and a counter 46 on the base to detect inward
movement of the first slide and disable the retainer after the
first slide has been moved inwardly a preselected number of times.
These are the minimum necessary things to prevent movement of the
second slide and also determine when it may be released as a result
of predetermined movement of the first slide. In order to do this
bath a retainer means and a co-operating counter means must be
included.
The applicant han his response of August 11, 1972 stated in part:
The Examiner has indicated that claims 1 to 20 are allowable but
has rejected claim 21 as being contrary to Section 36(2) of the Patent
Act and furthermore that the claim is not supported by the disclosure.
It is respectfully submitted that claim 21 is not open to the objections
stated by the Examiner. It is applicants position that there is no
basis in fact or in law for the Examiner's allegation that claim 21
indefinite because it differs from the prior art only by a statement
of means plus function at the point of invention. tt still appears
to applicant that the Examiner considers only the "means for pre-
venting movement of said second slide to its coin depositing position
until said first slide has been moved to its coin depositing
position a preselected number of times" as being the point of the
invention. This is not the case. Applicant has developed a entirely
new combination of integers, each of which has been defined in
appropriate fashion, and which together make up the whole point of
the invention. While it may be true that the Hulin reference shows
certain of the elements present in applicant's device, there is
nothing in the Hulin device which would suggest to a person skilled
in the art that applicants entire device could be produced by
multiplican on of the relatively crude devices shown in the reference.
It is again submitted that the courts have long ruled a combination
claim can consist of a series of means clauses to define an operative
combination of integers and that a valid combination claim does not
necessarily contain any structural clauses such as are being
required by the Examiner. Applicant therefore subtmits that in a
combination claim he is entitled to mention such structural elements
as appear necessary and to define other elements in terms of means
clauses. It is the combination which counts and not any one
particular means or structural clause.
The Examiner's further objection that claim 21 is not supported by
tire disclosure is also respectfully traversed. It is respectfully
submitted that applicant is entitled, in the absence of any pertinent
prior art to the entire combination, to claim his inventive combin-
ation in broad terme, It is not seen that the reference relied upon
by the Examiner teaches a device which in combination includes means
for preventing movement of the second slide in combination with the
other integers such as would necessitate applicant to restrict the
claim to any particular limitation. In the absence of references
to show movement preventing means in combination with a first and
second slide in a coin chuto it is believed that applicant is
entitled to claim the combination in bread general terms and the
Commissioner is respectfully requested to reverse the Examiner's
position thereon.
This application relates to a coin activated device wherein a pair of coin
receiving slides mounted for in and out movement between coin-receiving
and coin-depositing positions, each adapted to receive a coin of a
different denomination which functionally interact in a particular way
through means including a retainer to prevent movement of a quarter
receiving slide and a counter which is selectively set by the proprietor
so that a nickel receiving slide must be activated a preselected number
of times before the retainer is released allowing the quarter slide to
be actuated, subsequently allowing the article to be dispensed since
the required amount of money has been deposited in the device.
The reference to Hulin discloses, a base on which is mounted two coin
slides mounted for independent in and out movement on the base between
coin-inserting and coin-depositing positions.
Of significance in the present determination is the consideration of the
Court, Cluett Peabody & Co. Inc. v. Dominion Textiles Co. Ltd. (1938)
Ex.CR. 47 at 79 wherein Maclean J. stated:
It hag been well and concisely stated in the text book,
Terrell on Patents, that inventions may be divided roughly
into two classes in respect to subject-matter. First, there
is that kind of invention which consists in the discovery of
a method of application of a new principle-here what has
been invented is in effect the new principle, and, gener-
ally speaking, the Court will regard jealously any other
method embodying that principle, for the patentee was not
bound to describe every method by which his invention
could be carried into effect. Second there is that kind of
invention which consists in some particular new method of
applying a well known principle, and in this case the use
of other methods is not contemplated by the patentee, and
should not be included within the ambit of his claim.
That describes an accepted doctrine in patent law....A
patent for carrying a principle which is new into effect
protects the grantee against all other modes of carrying
that principle into effect. (emphasis added).
The new principle referred to in the above Court case related to a method
of treating fabric to prevent skrinkage. The Judge also equates "idea"
with "principle" when he stated at page 80: "This rose is a good
illustration of how readily the ccompetent mechanical engineer, once
undorstanding the principle of an invention, may produce other means of
carrying tha same idea or principle into effect."
Considerable argument has been presented with respect to the use of
"means clauses" in a claim. The use of "a means qualified by a statement
of function" in a claim is not objectionable in itself. While a patentee
may be entitled to protection for all modes particularly adapted for
carrying out the means, it is not sufficient to merely restate a problem
ar desired result without any qualification of the new idea or principle
given effect by the meens. Section 36(1) of the Patent Act requires
disclosure of one embodiment only and the best mode which is contemplated
by the inventor for the practical application of the new idea or principle.
Since this has been done in the present application, there is no basis
for the objection that the claim is not supported by the disclosure
whether or not a "means" embraces one or a plurality of elements or
means as necessary to perform a clearly stated function. Notwithstanding,
"a means qualified by a statement of function" must be fairly expressed
and even though a claim need not define structure it must not be
indefinite or ambiguous.
As in the present case, coin machines are designed to operate to
deliver goods when the correct amount of money has been inserted.
Since the prior art does not teach any form of interaction between
coin receiving slides to prevent one from movement until the other
has been moved a predetermined number of time, an invention appears
to have been mach in such new idea or principle, and the new combination
giving effect to that idea or principle. Thus A in accordance with the
criteria enunciated in Cluett Peabody v Dominion Textiles Ltd., supra,
the applicant is entitled to a patent that protects against all other
modes particularly adapted for carrying his nex idea or principle into effect.
The examiners rejection under Section 36(2) stated that: "Claim 21 is
indefinite in that it merely recites a desired mode of operation to be
achieved with a pair of coin slides and does not specify an inventive
structure which will produce the result" and "The statement of means
plus function is what distinguishes the claim from the prior art,
namely the Hulin patent. This statement is so broad that it
embraces all possible means, without qualification for solving
the problem facing the inventor and is in effect a restatement of
the problem".
First, it is not necessary in the present situation that the applicant
avoid the prior art by "inventive structure", for he may avoid the
prior art with a new combination with such means qualifying the
functional interaction of the two slides being the only difference
from the prior art.
It is settled law that the new idea or principle of an end is patentable
even though the new means to achieve that end may be very obvious once
the suggestion of the end has been understood,in this case a new idea
of the operation of the slides has been made. The Board is satisfied
that the claim is not designed to embrace all possible means without
qualification so as to merely restate the problem for the means diving
effect to the new idea has been qualified by stating: "...for
preventing movement of said second slide to its coin-depositing
position until said first slide has been moved to its coin-depositing
position a preselected number of times".
Whether such statement is accurate in its definition of the required
function interaction of the slides by the means on sled base is quite
a different matter which cannot at the moment be decided by the
Board since the question was not raised by the examiner, It does,
however, appear that the claim fails to state the functional
interaction of the means and the slides as a result of the preselected
movement of the first slide. For example (as set out in claim 18), is
it not the function of the means to prevent movement of the second
slide from its coin-receiving position until .alpha. preselected number
of movements of the first slide, from its coin-receiving position to
its coin-depositing position, operates the means to permit movement
of the second slide to its coin-depositing position?
The Board recommends that the Final Action, refusing claim 21 under
Section 36(2) of the Patent Act for the reasons stated, be withdrawn.
J. F. Hughes
Assistant Chairman
Patent Appeal Board.
I coneur 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 4th day of April, 1973
Agent for Applicant:
Alex E. MacRae & Co.,
Ottawa, Ontario.