OBVIOUS: Adaption of Known Devices Producing Similar Result.
The device held to be a change only in form, proportion or degree,
obtaining the same result in substantially the same way by substantially
the same means, following the same principle as the prior art citations.
FINAL ACTION: Affirmed.
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This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
July 27, 1972 on application 078,470. This application was
filed in the name of Charles R. Nixon-et al and refers to
"Wheel Balancing Device". The Patent Appeal Board conducted
a hearing on November 29, 1972; Mr. R. McFadden represented the
applicant.
In the prosecution terminated by the Final Action the
examiner refused the application for lack of inventive ingenuity
and applied the following references:
Canadian Patent:
731,937 Salathiel
United States Patent:
1,314,005 Louden.
The Final Action of the examiner read in part:
Relative to the argument concerning obviousness Louden
shows that the use of spherical balls in a tube of
circular cross-section is old and known in the art of
balancing rotors, Louden also shows that the use of
cylindrical rollers in a tube of rectangular cross-
section or in a tube of rectangular cross-section with
rounded corners is old and known in the art.Louden
also shows the use of tubes which are integral with
the rotor and tubes which secure to sides and rims of
the rotors in both circular and rectangular cross-
section configuration.Louden also discloses the use
of damping liquids.
While applicant's alleged invention differs slightly
in some respects from Louden's teachings and in some
other respects from Salathiel's teachings such differ-
ences cannot be considered patentable differences.
Salathiel has adapted the balls and circular tube for
use in balancing wheels and tires and applicant with a
full knowledge of this prior art has also used the
alternate form of cylinders and rectangular tubes for
use with wheels and tires. Changes which applicant has
made in Louden's cylinder and rectangular tube con-
figuration are changes made for the purpose of adapting
the rectangular configuration for use with wheels and
tires; changes which are reflected in Salathiel's
adaptation of the circular configuration for use with
wheels and tires; changes which require nothing more
than the practise of expected skill.
The applicant's response of October 10, 1972 read in part:
It is submitted that the Examiner has misdirected him-
self with regard to the law relating to obviousness or
lack of subject matter. The Examiner has stated as a
ground of rejection on page 1 of the official Action of
July 27, 1972 that "the rejection of the application is
maintained and the reason for such rejection is lack of
inventive ingenuity". He then cites as a basis for this
finding two patents, namely Salathiel, and also Louden.
The subsidiary rejection of the Examiner is to the effect
that "since Louden shows that it is known in the art to
use cylindrical weights in a tube of rectangular cross-
section, no invention is seen in using cylindrical weights
for balancing a wheel and tire particularly in view of
the teachings of Salathiel". The Fxaminer continues
"Salathiel teaches the use of balls in a circular cross-
section tube, which Louden discloses as simply an
equivalent alternative".
Furthermore, after an extensive discussion of the use-
fulness or otherwise of Salathiel, the Examiner continues
on page 6 at the last but one paragraph as follows:
"Applicant has simply used a rectangular tube with
cylindrical rollers which is shown by Louden to be old
and a well known alternative to a circular tube with
balls for use in a wheel in a manner which is either
shown directly by or reflected in Salathiel's patent".
This application relates to a wheel balancing device comprising
a tube of rectangular cross-section containing a number of cylindrical
weights and a damping fluid.The tube is attached to the peripheral
rim of a wheel so that when the wheel rotates the weights are free
to roll in the tube responsive to centrifugal forces to correct any
imbalance.
The reference to Louden discloses a wheel balancing device
using cylindrical members in a tube of rectangular cross-section,
and states at page 1 lines 26-37: "In its generic nature, my
invention embodies a wheel or other axially mounted rotatable body,
and a plurality of substances of different specific gravity arranged
in annular relation upon or within the said rotatable body and
adapted, under centrifugal action, to automatically shift with
respect to the bearing of the rotatable body, and in such a manner
that a perfect equilibrium of balance of the rotating body is
constantly maintained." Therefore, the concept of using substances
of different specific gravity within a rotatable body is well known.
The reference to Salathiel discloses an automatic wheel
balancing device for use on vehicle wheels comprising an annular
plastic tube having an outer profile matched to the rim of a wheel,
and a plurality of steel globular weights of predetermined specific
gravity dimensioned to fit loosely within the tube to move around
the annular tube which is partially filled with a damping liquid
having a specific gravity less than that of the weights.
Salathiel also states that: "Still another object is the
provision of a wheel balancer featuring globular weights and a
weight dampening fluid wherein the weights are automatically
positioned to maintain vehicle wheels in a dynamic balanced
condition by centrifugal force while the fluid dampener prevents
sudden undesired shifting or the weights in response to a shock
or force applied to the wheel or tire." Salathiel also shows a
plurality of mounting means at spaced intervals around the tube to
secure it to the rim of the wheel.
Having compared the device of this application with the
cited reference to Salathiel we find that the only basic differ-
ence is the change from an annular tube of circular cross-section
using globular weights to an annular tube of rectangular cross-
section using cylindrical weights.
Salathiel adopted dynamic balancers to rotating masses such
as automobile wheels and selected 5/16" steel spherical weights and
3/8" I.D. tubing for his preferred embodiment. The tests carried
out by Salathiel showed that when the correct proportion of weights
and damping liquid is used, the wheels will be: "Balanced at all
speeds from 10mph to 120mph." (see page 8 of the disclosure).
Salathiel also states on page 10: "(Obviously the invention is
applicable to other uses such as balancing truck wheels, aircraft
wheels and the like and appropriate changes of scale and size will
be made accordingly." (emphasis added)
The applicant has argued that Salathiel's balancer is inoperative
because Salathiel must first statically balance the wheels. However
on this point Salathiel states at page 8: "...the most satisfactory
dynamic balancing of various automobile wheels ie achieved by first
static balancing each wheel and then installing one of the balancers...."
and further explains on page 9 the reason as:" When a wheel and tire,
in an unbalanced condition, is routed the center of rotation is off-
set with respect to the center of the wheel on a diametric line taken
through the center of the wheel and the center of the mass of unbalance.
When the wheel balancer tube 20 is installed on such a wheel and the
wheel is rotated at a relatively low speed the balls 24 are concentrated
in that portion of the tube adjacent the mass of tire and wheel im-
balance creating a greater imbalance of the tire and wheel...." In other
words the dynamic imbalance and the imbalance condition of the
wheel tend to increase the total imbalance of the wheel below
a critical speed. Salathiel only stated the most satisfactory
method of avoiding this problem. It follows that, the double
imbalance is cancelled out only above a critical speed. How-
ever it is held that the applicant must encounter the same
problem as it is part of the principle of dynamic balancing.
The applicant has increased the total mass of the weights
by changing the shape from globular to cylindrical as opposed,
for example, to increase only their size or number, or both,
and consequently changing the cross-sectional shape of the tube
to accomodate them, in order to obtain a larger capacity balancer.
However, it was previously noted that Louden used cylindrical
members in a tube of rectangular cross-section. The fact, that
the members had a lower specific gravity than the fluid, but
nonetheless the members must move around the tube to effect
balancing, is of no consequence in principle or result obtained.
Therefore, the Board is satisfied that all the applicant has
done is select an alternative that would naturally occur to a
competent person desiring to provide an increased weight/damping
fluid mass ratio to correct an amount of static imbalance, and
the greater the imbalance the greater the weights/damping fluid
mass ratio. (or vice versa as in Louden)
The applicant also states that the device has been a commercial
success. While commercial success may assist in determining the
presence of invention in cases of substantial doubt, jurisprudence
has viewed it with caution as such success may be due to causes
extraneous to the invention.
As an example of a number of decisions on the point in
question the Court, Lorne Martin Co. Ltd. v. Office Specialty
Manufacturing Co. Ltd. (1930) Ex.C.R. 181, held that: "The
mere carrying forward of the original thought, a change only
in form, proportion or degree, doing the same thing in the
same way, by substantially the same means, with better results
is not such an invention as will sustain a patent" (page 187
line 9) and "It is always necessary to consider the rights of the
general public to avoid monopolies on such simple devices as
would occur to anyone, familiar with the art."
In the circumstance, the Board is satisfied that the device
is a change only in form, proportion or degree, and keeping in
mind that Salathiel, as previously noted, states: "...appropriate
changes of scale and size will be made accordingly." Therefore
the Board recommends that the decision of the examiner, to refuse
the application, 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 on the subject matter of this application.
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 11th day of December, 1972.
Agent for Applicant
Mr. George A. Ralston