COMMISSIONER'S DECISION
OBVIOUS: Expedient Dictated by Exigencies and Intended Purpose.
Claims for a construction block comprising "junk cars" sufficiently
compressed to have "high tensile and compressive strength" held to be
a matter of degree only, dependent upon the capacity of the press, compared
to the lesser compressed car bodies shown in the citation (as opposed to
a claim which specifies a block of particular shape having a density of
"7 cu. feet per ton of car"). It is common knowledge to compress junk
material into blocks and protect such blocks from corrosion by applying
impervious material as shown in a second citation for compressed blocks
of bulk rubbish for disposal in a body of water. The argument that the
use of the non-metallic as well as the metallic materials of junk cars
had unexpected strength advantages, held to be mere choice and obvious
expedient dictated by the intended purpose of the blocks.
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 November 23, 1972
on application 043,363. This application was filed in the name of
Warren B. Diederich and refers to "Method Of Utilizing Junk Cars."
In the prosecution terminated by the Final Action the examiner
refused claims 1 and 3 in view of common general knowledge and the
cited prior art, namely:
Canadian Patent
684,261 Endert April 14, 1964
United States Patent
3,330,088 Dunlea July 11, 1967
(corresponds to French Patent 1,454,793 , August 29, 1966)
In this action the examiner stated in part:
It is maintained that the previously submitted product claims
l and 3 are held to be for the same invention as the method
claim which has been cancelled by the applicant in response
to the Final Action dated March 15, 1972. The product claims
are based on the same method limitations of having a junk
car as is compressed at ambient temperature into a block,
and coating the block with an air and moisture impervious
material to prevent corrosion.
Applicant argues that the crux of his invention not known
in the prior art resides in a superior "construction" block.
However the mere use an article is to be put has no patent-
able significance.
In view of the prior art of record and in view of common
general knowledge as set forth in detail in the above Office
Action product claims 1 and 3 stand refused as unpatentable
for lack of invention.
Claim 2 is still considered to be in a condition for
allowance.
The applicant in his response to the Final Action, dated February
22, 1973, stated in part:
The applicant's claims were rejected in view of Endert and
Dunlea. However, neither Endert nor Dunlea discloses a
construction block. The cited reference to Endert is
merely interested in compressing scrap metal so that it
can be of a smaller width, making it easily inserted into
a machine which compresses the scrap for entrance into an
area for engagement by continuous shearing devices. Further,
Endert does not disclose the state of dismemberment of the
car prior to the compressing and shearing. Thus Endert is
of little value in determining the parts of the car which
should be crushed, or the method by which the car should
be crushed in order to form a stable unitary shaped con-
struction block having a relatively high tensile and
compressive strength. Dunlea merely teaches the compression
of bulk rubbish and the coating thereof for disposal in a
body of water.
It might seem likely that the failure to remove glass and
upholstery, and other relatively weak construction materials,
would result in a finished block which would pull part, or
separate under tensile strength. Tests conclusively show
that this is not the case, and that, in fact, a block made
in accordance with the applicant's method withstood tensile
strength up to the limits of the testing machine, while a
block comprising a pre-burned and stripped junk car separated
at a tensile strength of about 25,000 pounds. The applicant
believes that this is due to the fact that the removal of
the relatively massive metallic materials in addition to the
non-metallic materials leaves the very ductile sheet metal,
which metal, of course, must be ductile in order to be stamped
into the exterior shape of an automobile. This ductile sheet
metal is very weak under tension or compression. Secondly,
the process of heating the automobile in order to burn out
the upholstery and other combustible ingredients and to melt
any of the glass in the automobile may actually be an
annealing process which creates a more soft and ductile
material.
This application refers to a solution for the disposal problem of
junk automobiles, whereby compressing machines are utilized to
compress such automobiles into geometric shapes. The issue to be
decided is whether the subject matter of claims 1 and 3 is considered
to be a patentable advance in the art. Claims 1 and 3 read:
1. An environmentally stable unitary shaped construction
block having a relatively high tensile and compressive
strength, which block comprises a junk car compressed at
ambient temperatures and includes relatively massive
metallic materials and non-metallic materials contained
within said junk car, said block including a cover in the
form of a continuous layer of an air and moisture im-
pervious material.
3. An environmentally stable unitary shaped construction
block having a relatively high tensile and compressive
strength, which block comprises a junk car compressed at
ambient temperature and includes all of the parts of the
car which are usually removed prior to compression, such
as the transmission, axles, upholstery and windows, said
block including a cover in the form of a continuous layer
of an air and moisture impervious material.
The reference to Endert discloses the use of a charging box for
a "Scrap Baling Press", and especially for receiving oversize
scrap such as, "automobile bodies:" The automobile body is
placed in the jaws of the machine and compressed to a pre-
determined size.
The reference to Dunlea discloses a method of bulk rubbish
disposal by compacting the raw rubbish into bundle form and
applying an impervious coating to the surface of such forms.
It is noted that no objection has been made to claim 2, it then
follows that the applicant is considered to have made an advance
in the art; notwithstanding, in considering other claims the
applicant must not claim broader than the invention made. Of
interest in she many decisions on this point, vide the statement
of Thorson P. in the frequently applied case of Mineral Separation
v. Noranda Mines Ltd. (1947) Ex. C.R. 306
The inventor may make his claims as narrow as he pleases
within the limits of his invention but he must not make them
too broad. He must not claim what he has not invented for
thereby he would be fencing off property which does not belong
to him. It follows that a claim must fail if, in addition to
claiming what is new and useful, it also claims something that
is old or something that is useless. (emphasis added).
The fact that the block has a relatively high tensile and compressive
strength is a matter of degree only in comparison with the product
of the patent to Endert; a compressed "automobile body". This
factor is of course dependent on the design and capacity of the
press, and is not considered to be a patentable feature.
It is therefore held to be old, a matter of common general know-
ledge and of conventional practice to compact scraps of metal,
containers, textiles, paper, machines, appliances, automobiles,
etc. no longer in servicable condition into a block of substantially
less volume and greater density in any particular shape (Endert
and Dunlea). It is also conventional practice to protect the
final product against corrosion, rust etc. with the application
of an impervious substance (Dunlea).
The applicant has advanced the argument that the glass, upholstery
and other weak construction materials are not removed from the
automobile before the step of compressing; however, there is no
indication in the reference to Endert that there is any dis-
memberment of the automobile prior to the step of compressing.
It is held, however, that the particular use of the end product
will dictate what parts should be removed. For example, if the
compressed automobile is used in the recovery and refining of
scrap metal, it would appear obvious to illiminate unwanted
materials, such as: upholstery and glass. In the situtation
at hand the presence of materials other than metal is not
critical as noted in the disclosure, page 4 line 8: "There is
no need to burn out all non-metal or to remove the glass."
Accordingly, it is held that the selection of the type, condition
and composition of the rubbish to be compressed is a mere matter
of choice and an obvious expedient dictated only by exigencies
and the subsequent intended use of the compressed scrap.
The Board is therefore satisfied that the subject matter of claims
1 and 3 do not teach a patentable advance in the art over the cited
references and common general knowledge, and recommends that the
decision of the examiner, to refuse claims 1 and 3, be affirmed.
J.F. Hughes
Assistant Chairman
Patent Appeal Board
I concur with the findings of the Patent Appeal Board and refuse
to grant a patent with respect to claims 1 and 3. 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 14th day of May, 1973.
Agent for Applicant
Smart & Biggar,
Box 2999, Station D,
Ottawa, Ontario
K1P 5Y6