DECISION OF THE COMMISSIONER
ANTICIPATION: Improper Grounds of Rejection.
The prior art fails to give clear and unmistakable direction
to use its structure to produce the new result which applicants
structure produces; and is not an anticipation even though it
may be proven that the prior art could be used to produce the
new result.
FINAL ACTION: Overruled.
******************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's final Action dated July 19, 1972 on
application 975,918. This application was filed in the name of Marcus
L. Conrad and refers to "Fluid Steering System".
In the prosecution terminated by the Final Action the examiner
refused the application for the following reasons:
The application is rejected on the grounds that the
structure disclosed by the applicant is anticipated by the
reference, and the applicant's method of use of that
structure is obvious.
Reference Re-applied:
2,512,979 June 27, 1950 Cl. 180-79.2 Strother
In this action the examiner stated in part:
The reference teaches a vehicle steering system in which
three steering modes are achieved, i.e. two wheel steering,
four wheel steering and crab steering. The latter steering
mode, in the words of the applicant is: "oblique or
lateral steering wherein all of the wheels of the vehicle
are positioned simultaneously in the same direction with the
result that the vehicle moves sidewise without changing its
heading". In order to achieve the three steering modes, the
patentee makes use of a 3-position valve, which in each
position of the valve allows the operator to select a
different one of the three steering modes.
The structure is fully anticipated by the basic structure
of the Strother reference, and the method of use is obvious,
and gives no unexpected advantages. In fact the elimination
of one position of the valve creates obvious disadvantages
if the unit is seriously considered for use in crab steering.
Elimination of one position of the valve has effectively
eliminated the function that position provided.
The applicant in his response of August 31, 1972 stated in part:
The steering system claimed by the applicant does not require
that the wheels be positioned in a predetermined position
(preferably straight ahead) before changing steering modes,
as does the Strother steering system. It is therefore
apparent that Strother did not envisage the operator changing
steering modes while the vehicle is stationary, while the
applicant does, In addition to indicating a basic difference
in concept of operation, this difference prevents the Strother
steering system from being used to carry out the applicant's
method of steering without reconstructing the Strother
steering system. In this regard, the applicant points out
that Strother states at lines 5 to 13 of column 8 that the
engagement of blocking plunger 69 in radial opening 123 1
in the hub 108 prevents the selector valve 68 being turned
out of the "park" position, unless the front wheels are
positioned straight ahead. Therefore, the rear wheels will
also be positioned straight ahead when the selector valve is
turned out of the "park" position, and will be held in this
position by stem 137 being engaged in notch 140 in the hub
portion 141 when the selector valve is turned to the "drive"
position, It is submitted that the fact that the Strother
steering system can not be operated in the same manner as
the applicant's system, clearly establishes that the concept
of the applicant's system never occurred to Strother.
As previously noted the rejection is one of anticipation, and in
the opinion of the Board the doctrine of anticipation, as set in Canadian
law, must be followed. The court in, Canadian General Electric Co. Ltd.
v. Fada Radio Limited, (1927) Ex. C.R. 134 at 141, held that: "Any
information as to the alleged invention given by any publication must be
for the purpose of practical utility equal to that given by the subsequent
patent. The later invention must be described in the earlier publication
that is held to anticipate it, in order to sustain the defence of antici-
pation. Where the question is solely one of prior publication, it is not
enough to prove that an apparatus described in an earlier specification;
could have been used to produce this or that result. It must also be shown
that the specification contains clear and unmistakeable direction so to use
it ...." (emphasis added)
In other words the alleged invention, i.e. a steering system for a
four wheel vehicle which comprises means for steering the front wheels only,
means for simultaneously steering the front wheels in one angular direction
and the rear wheels in the opposite angular direction, and means for locking
the rear wheels in an angular direction and then turning the front wheels
in the same angular direction to achieve crab travel or fixed crab steering,
is accomplished by means of a two position valve and a simplified hydraulic
system.
The reference patent discloses a vehicle steering system in which three
steering modes, i.e. two wheel steering, four wheel steering and crab travel
and steering, are achieved by means of a three-position valve and a extensive
electrical and hydraulic system. Furthermore the only way taught to achieve
crab steering as well as travel is by means of simultaneously turning the
front and rear wheels in the same direction.
1n the circumstances, therefore, the Board is satisfied that the
alleged invention as disclosed in this application, particularly the manner
in which the applicant achieves crab motion is not described in the reference,
it then follows that there is no clear and unmistakeable direction so to use
it.
It is perhaps unfortunate that the rejection, which the Board was asked
to consider, was not based on obviousness since the Board would then have
applied different criteria to the apparatus claims. In this decision
therefore the Board may not rule on grounds of rejection which were not
clearly used in the examiners Final Action since the applicant has had no
opportunity of overcoming such rejection in the ordinary course of prosecution.
The question of obviousness of method claim 1 will not be considered
at this time as the allowability of the method will depend on the same or
similar considerations as the allowability of the apparatus.
The Board recommends that the Final Action be withdrawn for the reasons
set out herein.
R.E.Thomas,
Chairman,
Patent Appeal Board.
I 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 6th day of November, 1972.
Agent for Applicant
George H. Riches, Q.C.