COMMISSIONER'S DECISION
UNOBVIOUS: Inventive Step over Prior Art Teaching.
CLAIMS DEFINITE: Functional Definition of Desired Result.
The mode of producing snow by crystallization of a thin film
as it leaves the trailing edge of rotating blades not taught by the
prior art. Amendment of claims accepted explicitly stating the
limitations essential to produce the desired result.
FINAL ACTION: Overcome by Amendment.
********************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated September 22, 1972
on application 055,093. This application was filed on June 23,
1969 in the name of David B. Ericson et al, and refers to an
"Atomization Apparatus And Method." The Patent Appeal Board
conducted a Hearing on September 12, 1973, at which Mr. P. Kirby
and Mr. M. Cohen represented the applicant.
In the prosecution terminated by the Final Action the examiner
refused claims 1-7, 9 - 14 and 16-19 for failing to define
any inventive step over the prior art,and for being indefinite.
The cited prior art is as follows:
Canadian Patents:
1) 46,068 May 16, 1894 Anderson
2) 240,128 May 13, 1924 Kehoe et al
United States Patents:
3) 2,070,728 Feb. 16, 1937 Hanft
4) 2,671,650 Mar. 9, 1954 Jauch et al
5) 2,968,164 Jan. 17, 1961 Hanson
In response to the Final Action the examiner stated in part:
Claims 1, 2, 3, 16 and 17 in this application stand rejected
for failing to define an inventive step over the state of the
prior art shown by any one of patents 1), 2), 3) or 4). All
structure defined in these claims is shown by the references.
The step of applying the water to the blades to form a film
as set forth in claims 16 and 17 is not patentable because
it is inherent in the operation of the devices of these patents.
Claims 9-14, 18 and 19 stand rejected for failing to define an
inventive step over any one of patents 1), 2), 3), or 4) in view
of patent 5). The use of rotating surfaces to atomize water
is common knowledge as shown in patents 1) to 4). To use
these atomizers to make snow is held to be a mere matter of
choice and expected skill. Hanson shows it is known and old
to use a rotating surface, 28 Fig. 2 of his patent, to
throw or atomize water from said surface into an air stream
for the purpose of making snow. Thus it is clear that
Hanson teaches using an atomizer like device to form snow.
To substitute known atomizers for the Hanson type and make
snow is held to be a mere substitution of equivalents and
but expected skill.
Claims 4-7 and 9-14 stand rejected for failing to structurally
distinguish over the art Patents 2), 3) and 5), particularly
Kehoe's et al. There is nothing in Kehoe to prevent it from
operating in the same manner as the device set forth in claims
4 or 9. Functional qualification and use to which a device
is put do not provide structural distinction over the art.
They are in the realm of desired result. Claims 5 to 7 and
9 to 14 do not set forth any structure which is not obvious
in view of the art and thus they stand rejected. That these
claims set forth "fan"blades, while the reference Kehoe shows
water driven blades is held not an inventive difference. The
term "fan blade" can mean only a device resembling a fan and
this the blades in the references do.
...
Claims 1-7, 9-14 and 16-19 stand rejected as indefinite. Each
of these claims sets forth the film formation and atomization
features only in general and vague terms qualified by a state-
ment of desired result. The precise nature of the shape of the
blade surfaces, their extent, rotational speed and the rate of
feed of liquid thereto are not set forth nor are the precise
location and configuration of the liquid feeding ports so as
to form a film only set forth. The above presently absent
characteristics are held essential to clearly define that
structure which will have substantially all liquid depart
from the blade at the trailing edge. This rejection on
indefiniteness is made without reference to the prior art
and is made solely on the basis of the requirements for
definite and clear claims as set forth in Section 36 of the
Patent Act.
The applicant, in his response dated December 14, 1972 to the
Final Action, stated in part:
The key to applicant's invention is the provision of a
spinning blade atomizer wherein water is disposed on the
surface of the blade in the form of a thin film that
migrates to the trailing edges of the blades and then
leaves the trailing edges in the form of finely divided
particles that are directed axially of the spinning blades
by the air stream created thereby. The major points of the
design are that the provision of a thin film yields a high
degree of evaporative cooling of the water as it moves over
the surface of the blades whereby to condition the water to
transform to ice after atomization. The second aspect of
the invention is that by requiring the major portion of the
water to leave the blades at the trailing edge thereof a
maximum transit time for the water while it is part of the
film moving over the blades is provided whereby to maximize
the time of evaporative cooling and hence the temperature
reduction resulting therefrom. Lastly, the water leaves
the blades in the form of small droplets which readily
convert to ice of a fine granular quality that is an
excellent substitute for snow.
While the prior art references relied on by the Examiner
teach one or the other of these features, none teaches
the combination which is necessary to achieve the result
obtained by applicant's device. Thus for example Jauch
et al U.S. Patent 2,671,650 does not teach the formation
of a thin film on the rotary blades which film maximizes
the evaporative cooling effect.
The Examiner rejects claims 1, 2, 3, 16 and 17 as being
unpatentable over Anderson, Kehoe et al, Hanft or Jauch
et al. Anderson does not teach the formation of a film
on the blades C at all. What Anderson teaches is the
use of the blades C to interrupt the streams and to
fling the water outwardly in a radial direction. Thus
Anderson completely fails to suggest the formation of
the flowing film, as called for in these claims and the
exiting of the major component of the film from the trailing
edges of the blades to provide atomization as called for in the
claims. Kehoe, as already noted, does not provide for atomization
as called for in the claims and flings its sheets of water in
a radial direction in opposition to the requirements of the
claims. Hanft concededly forms a film, as already noted, but
flings the water in a radial direction and does not serve
principally as an atomizer. Lastly, Jauch et al does not
form a film as called for in the claims and does not fling
the film off the blades off the trailing edges as required
therein. Thus claims 1, 2, 3, 16 and 17 clearly define
patentable subject matter over references 1:, 2:, 3: or 4).
The Examiner states that it is inherent to form a film but
this is negated by the teaching of Jauch et al wherein
particles are formed rather than films. Secondly, there
is nothing inherent in the structure of the references to
call for a major portion of the liquid to leave at the
trailing edges of the blades and a number of the references
clearly negate this teaching and state that the liquid leaves
at the outward edges thereof (see Hanft and Kehoe et al). Thus
the allowance of claims 1, 2, 3, 16 and 17 is solicited.
...
In connection with this rejection, the Examiner took the
position that no reliance could be placed on functional
qualifications. It is submitted that such a position is
not well founded in law. It is well settled that it is
permissible to claim functionally in the sense of claiming
in terms of a desired result.
This application relates in general to the crystallization of
a liquid and more specifically to a method and apparatus for
efficiently making snow under a variety of conditions. Claim 1
reads:
A device for atomizing liquids comprising:
a rotatable hub with a central axis,
a plurality of fan blades extending radially outward from
said hub for rotation with said hub about said central
axis, each of said fan blades having a leading edge and
a trailing edge,
means for applying the liquid to be atomized to said
fan blades so as to provide a flowing film of liquid
over the surface of said fan blades when said fan blades
are rotating, the major component of flow of said film
being toward said trailing edges of said fan blades,
to provide atomization off said trailing edges of
said fan blades.
The basic reference to Hanson relates to a snow maker wherein a
water spray is conducted by fan forced air, with figures 2 and
3 showing a deflector 28 with vane 29 being contacted by the
water. The reference to Jauch discloses an atomizing device
wherein a film of liquid flows over disk 42 to be flung off the
edge thereof into the path of the blades 44. In the reference
to Hanft a device feeds water up a tube to exit at 16 for
contact by air forced by fan blades 15. The reference to
Kehoe discloses an atomizing device in which water exiting at
ports 4 contacts first the blades 6 of small radial extent, and
then contacts blades 8 of large radial extent; while the reference
to Anderson discloses an atomizer whereby water exiting from ports
A contacts the radial blade C.
A very informative Hearing was held on September 12, 1973, at
which the applicant agreed to furnish further comments on the
question of "functionality in the claims." Two additional
problem areas were also specifically discussed; one related
to the term "atomizing device" as opposed to "a crystallizer",
and the other related to the cooling effect on the film of
water on the blade of the crystallizer, particularly in
relation to paragraph 2 of page 12 of the specification which
reads:
From the above tests it may be seen that the device of
this invention has a wide range of operating capabilities.
When used to make snow, snow may be made from water having
temperatures substantially above freezing and may be made
in an atmosphere having a temperature substantially above
that necessary for the creation of snow. This is because
the operation of this invention is such that where the
cooling effect is optimized, the water temperature can
be brought to within the 10·F. (-12øC.) to 15·F. -(-10·C.)
range where atomized particles will be converted to snow.
In order to make snow by a rapid process, the temperature
of the atomized droplets must be brought down to a maximum
temperature somewhere between 10·F. and 15·F. Such a
temperature is required to bring about the rapid conversion
of a light droplet to snow.
At the Hearing the applicant also indicated his willingness to make
certain amendments to the claims, and on the day following the
Hearing the applicant was verbally requested to forward in writing
the amendments he proposed for consideration by the Board.
On September 18, 1973 the applicant further responded to the Final
Action furnishing a brief which discussed the jurisprudence on
"functionality in claims" (to be commented on later) and proposed
the following:
Arising out of the discussion at the Hearing, applicant has
certain suggestions for amendment to the claims. These are
set out below for consideration by the Board, in the hope
that such amendments will be found better to define the
invention and to render the claims allowable.
The proposed amendments are:
Claims 1 to 8, first line, change "device for atomizing
liquids" or "atomizing device" to --crystallizer--.
Claim 1, add to the end of the claim, --, a substantial
portion of said major component of flow being below the
crystallization temperature as it leaves said trailing
edges whereby to rapidly crystallize--.
Claim 9, line 13, change "the liquid" to --water--; and at
the end of the claim add basically the same text as is
proposed to be added to the end of claim 1, except to change
the wording to refer to a substantial portion of said "water"
being below the "freezing" temperature etc.
Claim 11, add to the end of the claim basically the same
text as proposed for the ends of claims 1 and 9, i.e. to
call for "a substantial portion of said major component
of flow being below the freezing temperature..."
Claims 16 and 17, line 1, change "atomizing" to --
crystallizing--.
Claims 16 to 19, change "fan blades" to --power driven fan
blades--; delete "in such a fashion as" and change "significant"
to --major--.
Claims 16 to 19 add to the end of each claim essentially the
same text as is proposed to be added to the end of claim 1,
employing in claims 16 and 17 the term "crystallization
temperature", since these claims are not limited to water,
and in claims 18 and 19 the term "freezing temperature",
since these claims are limited to use with water.
The proposed amendments to the claims,to use the term "crystallizer"
instead of the expression "device for atomizing liquids," and to
state in claims 1 to 8 that: "...a substantial portion of said
major component of flow being below the crystallizating temperature
as it leaves said trailing edges whereby to rapidly crystallize...,"
in the opinion of the Board relate to what appears to be the very
essence of the advance the alleged invention made over the prior
art. This also applies to the amendments which have been suggested
for claims 9 to 19.
It follows that in consideration of these amendments the only
cited prior art of any significance is the reference to Hanson,
which basically produces a fine spray which is contacted by fan
forced air to produce snow or ice crystals. Claim 1 of this
reference reads:
The method of forming, distributing, anti depositing snow
upon a surface, including: mechanically providing a large
volume movement of air at atmospheric pressure; said move-
ment of air created by a motor-driven propeller, said air
having an ambient temperature at or below about 30 degrees
Fahrenheit; and projecting water into said movement of air
in an amount and at a rate such that substantially all of
the water so-introduced is at least partially crystallized
prior to depositing on said surface.
Since there is no indication from this reference, that the water forms
a film on the fan blade nor that the component of flow is below its
crystallization temperature as it leaves the trailing edges
whereby it rapidly crystallizes as disclosed in the instant
application, the Board is satisfied that the claims so
amended would distinguish over the prior art.
The second ground of rejection with respect to the "claims being
indefinite" is discussed at length in the brief presented to the
Board dated September 18, 1973. While the Board agrees with
the applicant that it may be permissible in some cases to
functionally define an invention in terms of a desired result,
it is at the same time essential that the claims be clear and
distinct as required by Section 36 of the Patent Act. In any
event, the Board is also satisfied that the question of the
claims being indefinite will be resolved by the proposed amendments
.
The Board therefore recommends that the ground of objection in
the Final Action, with respect to claims 1 to 7, 9 to 14 and
16 to 19 as being too broad in view of the cited prior art, be
affirmed and that new claims giving effect to the amendments
proposed by the applicant be acceptable as overcoming the
objections of the Final Action which includes "any doubt of
the claims being indefinite."
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and affirm
the decision to refuse the claims over the prior art cited
in the Final Action, but will accept claims amended in
accordance with the recommendation of the Board. The applicant
has six months within which to so amend the claims, or to appeal
this objection under Section 44 of the Patent Act.
J.A.Brown,
Acting Commissioner of Patents.
Dated and signed this
29th day of October,
1973, in Hull, Quebec.
Agent for Applicant
Kirby, Shapiro, Curphey & Eades,
Ottawa, Ontario.