COMMISSIONER'S DECISION
DIVISIONAL STATUS: Objectionable New Matter Added
Divisional status is not satisfied as statements in the original
specification made it clear that the applicant did not intend, or
completely failed , to disclose the precise embodiment described
in the divisional.
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 August 18, 1972
on application 120,389. This application was filed in the name
of The Black Clawson Company and refers to "Vertical Paper
Machine". The Patent Appeal Board conducted a hearing on March
15, 1973, Mr. D. Watson represented the applicant.
In the prosecution terminated by the Final Action the examiner
refused divisional status on the grounds that the applicant has
added new matter to the disclosure and claims which was not
part of the parent application as filed and reads: "The success-
ive deflectors thus define a generally serpentine like path of
travel therebetween for the combined wires and the progressively
forming sheet."
In this action the examiner stated in part:
The invention concerns the making of paper between two
vertically disposed endless travelling fourdrinier wires.
On either side of the wires are a series of staggered
deflectors which guide the wires in converging relation
as well as scrape off water extruded from the paper stock
through the wires. The new matter which applicant pur-
ports is inherent in the system is that the deflectors
define a generally serpentine-like path of travel.
At the outset it must be pointed out that the drawings
do not show nor suggest what applicant is now adding to
the disclosure and claims.
On page 2, lines 22 and 23 of the parent, the disclosure reveals,
"the deflectors along the outside of the forming tone function
only to support the wires in converging relation and to doctor
off the water". There is no suggestion of a serpentine-like
path here, merely a clear disclosure of two converging wires.
The word, "converging", means, "coming together from different
directions, to incline and approach nearer together as the
radii of a circle converge toward the center". This is
exactly what Figure 3 in particular illustrates.
On page 4 lines 13 to 15 applicant further reveals, "The
reaches of the wires 16 and 17 directly below the breast
rolls 11 and 12 are guided so that they converge to define
therebetween a forming zone 20 of generally triangular
section". Figure 1 submitted in applicants response dated
June 9, 1972 shows no such configuration and therefore is
a different embodiment from what applicant had originally
disclosed.
On page 6 lines 1 to 3 applicant goes on, "The lowermost
deflectors 40 are preferably so spaced that the wires
converge to their minimum relative spacing as they approach
and move past the lowermost deflector 40 for the right hand
wire 17". This also suggests a generally triangular shape
as was disclosed above.
On page 7 lines 24 to 27 it is disclosed that, "The use of
the pattern of deflectors shown in Figure 3 has produced
highly satisfactory results, but other patterns can be
used and it is possible to dispense with the use of de-
flectors if the essential conditions of the invention are
otherwise satisfied". This suggests that the configuration
with and without deflectors is the same and there could of
course be no sinuous path with no deflectors.
On page 8 lines 1 to 3 applicant discloses that, "The
supporting action of the deflectors is therefore supple-
mental to wire tension and if the tension is sufficiently
high such support becomes unnecessary". This again clearly
illustrates that the paths of the wires are converging
from the breast rolls down to the point of minimum spacing
such that a triangular shape results.
In claim 1 part 3 applicant claims "a plurality of generally
aligned opposingly staggered deflector means spaced success-
ively downstream from said gap defining a generally vertically
aligned serpentine-like path of travel therebetween". There
is of course no support for this in the parent. The drawings
clearly show that a line drawn through the tips of the
deflectors on one side of the wires would pass through a
single plane and therefore could not define a serpentine-
like path.
The applicant in his response to the Final Action, dated November
16, 1972, stated in part:
The present application and the previously co-pending
applications listed therein all relate to the first
commercial installation by the applicant company
of one of its "Verti-Forma" paper machines, which started
up in the mill of Canadian International Paper Company
at Three Rivers, Quebec early in 1968. That machine
incorporated the particular specific form of the in-
vention discussed in the present application wherein
the deflectors were adjusted to provide a slightly S-
shaped ("serpentine") path for those reaches of the
wires defining the forming zone.
The second significant fact is that the applicant Justus
named as inventor in Canadian patent No. 877,961 of
Beloit Corporation visited she mill in Three Rivers
shortly after the Verti-Forma machine started up there,
and followed that visit by filing a number of patent
applications closely modeled on the paper machine of
the present case. The evidence is thoroughly convincing
that the "serpentine" path feature emphasized in the Justus
patent was copied by him from the Black Clawson machine.
Turning now to the office action of August 18, 1972, it
appears that the facts pointed our below were not
previously adequately explained to the examiner, and it
is believed that when they are considered,it will be
clear that the present application is entitled to the
status of a Division of application No. 044,262. It
is thought pertinent also to call to the attention of
the examiner that the U.S. examiner initially rejected
the corresponding U.S. divisional application on the
basis of new matter but subsequently withdrew that
rejection.
It should of course be recognized that the drawings in
a patent application relating to subject matter of such
magnitude as the present case are necessarily somewhat
diagrammatic.
Another area of apparent confusion revolves around the
meaning of the term "converging" as used in the present
case. The wires in fact attempt to come together from
different directions as soon as they leave the surfaces
of the two breast rolls, but their rate of convergence
is controlled in part by the setting of the deflectors
and also in major part by the presence of the stock
therebetween. At some point along the forming zone, the
wires actually assume a relatively parallel relation to
the extent that this condition is established by the
newly formed sheet therebetween. Thus in the diagrammatic
Fig. 1, if there were no fiber in the stock, the wires
would actually come in contact at or just above the
deflector 40b, and would remain in such contact for
the rest of their downward travel
.
Referring now to the examiner's conclusion that there is
no support for clause (3) of claim 1, it appears that we
have not yet explained with adequate clarity the points
discussed in connection with the quotations from the dis-
closure on page 2 of the previous amendment. Referring
to the diagrammatic Fig. 2, the wires could actually
assume the illustrated triangular relationship only if their
tensions were sufficiently high to resist the internal pressures
tending to cause them to sag away from each other. In other
words, the portion of wire 17 opposite the deflector 40a
would tent to bow to the right because of internal hydraulic
pressure. Similarly the portion of the wire 16 opposite the
deflector 40b would tend to bow to the left, and this tend-
ency would be more pronounced because of the increased
effective hydraulic head and the increasing resistance to
drainage due to the initial deposition of fiber on the inner
surface of the wire. The same conditions would apply to the
portion of wire 17 opposite the deflector 40c, and so forth
to the end of the forming zone.
Necessarily, therefore, even under the narrowest possible
construction of the disclosure as being limited to a
configuration wherein the edges of the two sets of deflectors
define planes in spaced converging relation, the conditions
of operation would still cause each wire to follow a course
comprising a series of reverse curves, and it is really
immaterial whether that course be described as "serpentine",
"S shaped", or some equivalent term. The net result will still
be that the shape of the forming zone will be generally
triangular, but each side will consist of a series of re-
verse curves. The "single plane" configuration referred to
by the examiner, however, could exist only if no stock were
present, because it is doubtful that the wires would resist
all tendency to sag even if pure water provided the only
material in the forming zone.
It is hoped that it will now be recognized that the movement
of each section of wire which is "constrained only by its
tension" is required to maintain the proper spacing, volume
and pressure conditions in the forming zone. This movement
would initially be outward as described above, and such
movement can and will take place even if all deflectors for
each wire arc adjusted to define two converging spaced planes.
This application refers to the making of paper between two vertically
disposed endless travelling wires, and having on each side of the
wires a series of staggered deflectors to guide the wires. Claim
1 reads:
In a device for forming a fibrous web from a dilute aqueous
suspension of entangled co-moving fibers exiting downstream-
wise from a slice as a substantially unidirectional ribbon-
thin jet-stream, in combination,
(1) first and second breast rolls mounted for rotation
along a horizontal plane spaced apart a distance defining
a generally vertically-extending gap,
(2) means positioned above said first and second breast
rolls feeding a dilute aqueous suspension of co-moving fibers
downstream-wise into said gap as a high-speed substantially
unidirectional jet-stream of ribbon-like thinness less than
the gap thickness,
(3) a plurality of generally aligned opposingly
staggered deflector means spaced successively downstream
from said gap defining a generally vertically aligned
serpentine-like path of travel therebetween generally
concurring with the jet-stream direction,
(4) first and second opposed wire runs travelling
substantially at jet-stream speed
(a) over said first and second breast rolls
respectively through initially close spacing
at said gap receiving the jet-stream there-
between, and (b) directly thereafter con-
vergingly through a forming zone and into
general parallelism with the fibrous moist
web sandwiched therebetween, in which
parallelism said wire runs are maintained as
they travel downstream together, (c) over
said deflector means,
(5) said deflector means each having a smooth,
stationary surface presenting an edge to one of said
wino runs urging said one wire run into such parallelism
against an opposed region of the other said wire runs
free from contact with restraining means to drive water
through and away from the other said wire runs.
The issue is whether the subject matter now described and
claimed was adequately disclosed in the parent application as
filed. Basically, the matter added to the disclosure reads:
"The successive deflectors thus define a generally serpentine-
like path of travel therebetween for the combined wires and
the progressively forming sheet;" and part 3 of claim 1 reads:
"a plurality of generally aligned opposingly staggered deflector
means spaced successively downstream from said gap defining a
generally vertically aligned serpentine-like path of travel
therebetween."
First, to outline the subject matter of the parent
disclosure as filed, the first paragraph on page 4 reads:
The results desired by the invention are also
aided by the provision of a relatively small number
of supporting deflectors for the wire reaches which
define the forming zone, and also by the arrangement
of these deflectors in staggered relation with each
other such that no deflector is directly opposed at
the same level by a deflector for the other wire,
so that the other wire is constrained in that area
only by the tension thereon and can move as required
to maintain desired pressure conditions between
the two wires in the space occupying the same level
as the deflector.
And on page 7 starting at line 11:
In addition, with each deflector 40 generally
centered on the space between opposed deflectors
for the other wire, as one wire passes the edge of any
of the deflectors, it will be drawn tightly against
the deflector, but the other wire will be constrained
only by its tension and therefore can move as may be
required to maintain the proper spacing and volume
between the wires. (underlining added)
More specifically on page 2 starting at line 15 of the parent
as filed the disclosure states that: "Another significant
feature of the invention lies in the fact that the deflectors
along the outside of the forming zone function only to
support the wires in converging relation and to doctor off
the water which is forced through while offering minimum tendency
to educt water through the wire." (underlining added)
And in addition lines 1 to 4 on page 6 state that: "The
lowermost pair of opposed deflectors 40 are preferably so spaced
that the wires converge to their minimum relative spacing as
they approach and move past the lowermost deflector 40 for
the right-hand wire 17;" and at the bottom of page 7 through
to page 8, the disclosure states that: "The major function
of the deflectors is to support the reaches of wires along
the forming zone in such converging relation that the
desired pressure conditions are maintained on the stock
within the zone. The supporting action of the deflectors
is therefore supplemental to wire tension, and if the
tension is sufficiently high such support becomes unnecessary."
(underlining added).
It therefore appears clear that the only function of the
deflectors is to support the wires in converging relationship.
If the deflectors were intended to form a serpentine-like
path for the wires, it appears they would offer more than
a "minimum tendency" to educt water, and the supporting action
of the deflectors would not be supplemental, but necessary to
form a serpentine-like path.
Accordingly, it appears clear that the applicant has only
defined a bank of deflectors in staggered relationship with
a second bank of deflectors supporting the wires in converging
spaced planes only. As stated in the original disclosure,
when one wire is drawn tightly against a specific deflector,
the second wire at the same point will be constrained only
by its tension and can more as to maintain the proper spacing
and volume between the wires.
It then follows that, while there might be some slight
deviation in the path of travel, it is only in consequence of
the operation of the machine and the pressures of the paper
stock between the wires which might be sufficient to cause
the wires to deviate to a slight degree from a planar path
as they pass each deflector.
The Board is therefore satisfied that the only matter disclosed
was the staggered deflectors arranged in spaced converging
planes and could not have been intended to define an embodiment
where the successive deflectors define a generally surpentine-
like path therebetween for the wires and progressively forming
sheet; this notwithstanding the fact that a slight deviation
in the path might occur as a consequence of the pressure of
the paper stock passing, a deflector point.
It appears, therefore, that the applicant is attempting to
claim an embodiment which was not in any way disclosed in
the original specification, keeping in mind that all of the
above quotations lead away from the concept of a serpentine-
like path between the deflectors. There appears to be no
indication whatsoever that the deflectors for each wire were
intended to be adjusted for any purpose other than to define
a path for the wires in converging spaced planes.
This is in line with the applicants argument that: "It is
hoped that it will now be recognized that the movement of
each section of wire which is "constrained only by its tension"
is required to maintain the proper spacing, volume and pressure
conditions in the forming zone. This movement would initially
be outward as described above, and such movement can and will
take place even if all deflectors for each wire are adjusted
to define two converging spaced planes." It appears, therefore,
that this is the only concept that was disclosed and described
in the original specification.
The Board is therefore satisfied that the applicant could
not have intended, or completely failed, to disclose the
characteristics of the embodiment of the invention which he
now wishes to claim, and therefore the objectionable subject
matter may not be added to the disclosure; and it follows that
it cannot be claimed in the manner of the present claims.
This does not, however, prevent the applicant from claiming
with respect to support in the disclosure, the staggered
deflectors and the resulting variation of the path of travel
from the vertical in consequence of the paper stock passing
a deflector point.
The Board recommends that the ground of rejection, to
refuse divisional status unless the objectionable matter
is removed, be upheld.
J.F.Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
refuse to accept the divisional status of this application.
The applicant has six months in which to remove the objection-
able matter or 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 26th day of April, 1973.
Agent for Applicant
Gowling & Henderson,
Box 466, Terminal A,
Ottawa, Ontario
K1N 8S3