COMMISSIONER"S DECISION
DIVISIONAL STATUS: Failure to Comply with Sections 38(2)
and 36(1)
There could be no second invention on which to base the divisional
distinct from the process described and claimed in the original
specification patented; the divisional claims defining the
apparatus generally described and schematically illustrated com-
prising known means to carry out the respective steps of the
patented process; asserted by the applicant to be sufficient
enabling a person skilled in the art to use the invention of the
process. Claims in a second patent for such apparatus, unavoidably
infringed by using the process already patented, would extend the
monopoly already granted.
FINAL ACTION: Affirmed.
**********************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated February 22, 1972
on application 055,271. This application was filed on June 24,
1969 in the name of Neophytos Ganiaris and refers to "Concentration
of Tea". The Patent Appeal Board conducted a Hearing on June 20,
1973, Mr. H. O'Gorman represented the applicant.
In the prosecution terminated by the Final Action the examiner
refused the application on the grounds, (a) that the divisional
application is not proper under Section 38(2) of the Patent Act,
and (b) that the application is rejected in failing to meet the
requirements of Section 36(1).
In this action the examiner stated in part:
On June 23, 1969 apparatus claims were added to 994,721 to
serve as a basis for this divisional application which was
filed on June 24, 1969. The apparatus claims inserted in
parent application 994,721 for divisional purposes were
cancelled voluntarily on June 27, 1969, before any action
could be taken by the examiner to determine whether or
not such claims were adequately supported by the original
disclosure in that Section 38(2) specifies that the parent
application must also describe as well as claim any invention
which is made the subject of a divisional application.
...
It is well established by case law that the disclosure must
describe the invention and its operation correctly and fully;
so that when the patent expires those skilled in the art will
be able, having only the specification, to make use of the
invention. Applying this to the parent application which
issued to patent on ,July 7, 1970 and in consideration of
applicant's statement as mentioned above, any one skilled
in the art could assemble the system as claimed. Therefore,
it is held that the process claims and the process dependent
product claims in the patent already granted, represents
the full extent of the protection to which applicant is
entitled. To allow the system claims of the present
application would do nothing more than extend monopoly
for the invention already patented and would have the
effect of restraining its free use to the public for an
extended period should a patent be allowed to issue from
this application. Shortly stated, applicant is entitled
to only one patent for one invention.
The application is also rejected in failing to meet the
requirements of Section 36(1). Section 36(1) reads in
part "...The applicant shall... fully describe...shall
particularly indicate and distinctly claim the part,
improvement or combination which he claims as his invention".
(underlining added). There was no indication whatsoever of
the system of apparatus as claimed forming any part of the
invention, or a second invention, in the original application
and reference to this is set out in the second paragraph of
the previous Action.
In the response of May 23, 1972 the applicant stated in part:
The Examiner rejects the application as failing to meet the
requirements of Section 36(1), in the following language
(see final action, page 2, paragraph 3):-
"Section 36(1) reads in part "...The applicant shall...
fully describe...shall particularly indicate and
distinctly claim the part, improvement or combination
which he claims as his invention". (underlining added).
There was no indication whatsoever of the system of
apparatus as claimed forming any part of the invention,
or a second invention, in the original application and
reference to this is set out in the second paragraph
of the previous Action."
In commenting on the above quoted language, it must first
be observed that the subject application and it's parent
application No. 994,721, although related through the
divisional status of the present application, must in
other respects be treated as distinct applications. In
a situation where the disclosure of a parent application
does not describe the invention claimed in the divisional
application, the latter application is objectable. However
the objection does not arise under Section 36(1), but may
appear as an objection to the divisional status of the
divisional application under Section 38(2), or otherwise.
...
In paragraphs 3 and 4 of the office action of June 9th, 1971,
reference is made to the relationship between the subject
application and it's parent application No. 994,721.Mention
is made of the requirements of Section 38(2) of the Patent
Act, but that office action raises no specific objection
under Section 38(2) of the Patent Act.
Notwithstanding the lack of a formal rejection under Section
38(2) of the Patent Act, the applicant asserts that the
subject application is in full compliance with that Section.
Section 38(2) of the Patent Act provides that the applicant
may file a divisional application "where an application
describes and claims more than one invention". Thus to
comply with Section 38(2) the Parent Application is merely
required to describe and claim the invention which is to
be claimed in the divisional application. That Parent
Application 994,721 claimed the invention set forth in the
claims of the subject application is not in question. That
the Parent Application describes the invention claimed in
the divisional application will be evident from a comparison
of the claims of the subject application with the disclosure
of Parent Application 994,721. Such a comparison reveals
that each and every integer of the claims of the subject
application appears in the disclosure of the originally
filed application.
It should be noted that the language used in Section 38(2)
of the Patent Act is "describes and claims": the word
"describes" is in no way qualified, and it is respectfully
submitted that there is not the slightest basis in the
wording of the Statute to support the assertion, which is
apparently made by the Examiner in the final action, that
the Parent Application should particularly indicate the
divisionally claimed subject matter as an invention. It
may be conceded that Parent Application 994,721 as originally
filed was generally concerned mainly with a process and that
the objects of the invention as set forth in that application
related to a process only. However these circumstances most
certainly do not preclude the applicant from gaining allowance
of claims directed to an apparatus. In setting forth in the
original disclosure of application 994,721 the means of putting
into effect the claimed process, the applicant described a
system of apparatus for carrying out the process. The system
of apparatus therein described lends full support to the claims
of the subject divisional application, and accordingly since
the requirements of Section 38(2) are fully met, the divisional
status of the subject application is entirely proper.
...
... Upon the expiry of the patent which has been granted on
the parent application 994,721, the public at large will be
at liberty to practice the process claimed in that patent.
However in practicing that process, the public will not be
at liberty to infringe with impunity the claims of any other
Canadian patent, including any patent which may issue on the
subject application. This does not mean that the public will
be unable to practice the process claimed in the expired
patent, but on the contrary only means that the public will
be prevented from practicing that process utilizing the specific
system of apparatus claimed in the subject application, should
the subject application issue to patent. Accordingly therefore,
no question of double patenting arises.
This application relates to an apparatus for freeze concentrating an
aqueous tea solution. Claim 1 reads:
Apparatus for freeze concentrating an aqueous tea solution
comprising
(a) a cooler adapted to cool said solution to form a
precipitate therein;
(b) means for extracting precipitate from said solution
and delivering said participate to a first tank;
(c) means for delivering a supply of water to said first
tank and mixing means for mixing said precipitate in said water;
(d) means for delivering solution cleared of precipitate
from said extracting means to a crystallizer, means in said
crystallizer for cooling said cleared solution to form a
mixture of ice and more concentrated solution;
(e) means for delivering said mixture to an ice-removal
means operative to separate ice from said more concentrated
solution;
(f) means for delivering more concentrated solution to a
second tank, means for delivering water containing precipitate
from said first tank to said second tank, mixing means in said
second tank for mixing the contents thereof to form a concentrated
tea solution having dissolved therein precipitate removed in said
extracting means.
Also of interest is claim 1 of the parent application (now patent 846,128
dated July 7, 1970) which reads:
In the process of concentrating liquid tea solution, the
steps of
(a) cooling a tea solution below 75øF to form a precipitate
in the liquid tea solution;
(b) separating the precipitate from the liquid tea solution;
(c) further cooling the tea solution to form a more
concentrated liquid tea solution having ice therein;
(d) separating the ice from the concentrated liquid tea
solution; and thereafter
(e) combining the separated precipitate of step (b) with
the concentrated liquid tea solution.
As previously noted the examiner refused the application on the grounds
that Section 38(2) and Section 36(1) of the Patent Act have not been
satisfied.
Section 38(2) reads in part: "When an application describes and claims
more than one invention the applicant may ... limit his claims to ono
invention...." The original application (now patent 846,128 dated
July 7, 1970) dealt only with a description of the process, and page 1
of that disclosure reads in part: "Thus, this invention provides a process
for the freeze concentration of tea solution in which there is no loss
of flavor in the concentrated tea solution," and "The figure is a schematic
representation of apparatus which may be used to practice this invention."
(underlining added) The original claims were directed to a process only
and it would appear from the specification of the original application
that the applicant did not envisage "the apparatus" as being a second
invention or even as an aspect of the invention for which the original
application was made.
The applicant has emphasized, especially at the Hearing, that the general
description of the elements of the claimed system of apparatus are well
known in the art, and would at the time of filing have been fully
sufficient to enable any person skilled in the art to use the invention.
Surely this holding by the applicant coupled with the statement in the
original application regarding the "schematic representation of apparatus"
indicates that the skilled person in the art, could set up the apparatus
to carry out the process from the teachings of the original application
as filed, and there appears to be no second invention on which to base
claims which can be the subject matter of a divisional application as
approved by Section 38(2) of the Patent Act.
With respect to the second ground of objection under Section 36(1),
this section reads in part: "The applicant shall ... fully describe...
shall particularly indicate and distinctly claim the part, improvement
or combination which he claims as his invention."(Underlining added).
On this point the applicant argued that: "In a situation where the
disclosure of a parent application does not describe the invention
claimed in the divisional, the latter application is objectionable.
However, the objection does not arise under Section 36(1)...." While
Section 38 of the Patent Act reads: "When an application describes
and claims more than one invention...," it is well settled that no
"newly discovered matter" may be added to any application, and in line
with this any invention appearing in a divisional application must be
fully described in the original application as filed. That is, the
two Sections cannot be treated in isolation when considering parent
and divisional applications.
Of interest is the decision of the Court in, Riddell v Patrick Harrison
and Company Ltd. (1956-60) Ex.C.R. 213 at which held that: "...it is
a basic rule of Patent law that an invention cannot be validly claimed
unless it has been described in the specification in the manner required
by law. The legal requirement has been made statutory by Section 36(1)
of the Patent Act...." The circumstances in this application is analogous
to the case referred to above, except in that case the apparatus was
properly described as an invention, but not the process and the process
claim was held invalid. The Board therefore finds that there was no
indication whatsoever of the "apparatus" as now claimed forming any
part of the invention, or a second invention, in the original application.
The applicant has also advanced the argument that upon the expiry of
the process patent, the public will only be prevented from the carrying
out of the process utilizing the "specific" apparatus claimed herein.
It is not seen, however, how or where the system can in any way be
accurately termed "specific" since the applicant has broadly claimed
all means for carrying out the steps in the process, and as such anyone
practicing the process claimed in the parent application would, it is
held, clearly infringe the apparatus claimed herein. To allow claims to
the apparatus which is only the inherent use of known apparatus to
carry out the process would do nothing more than extend the monopoly
for the invention already patented under the process in Canadian patent
846,128 dated July 7, 1970.
The Board is therefore satisfied that, under the circumstances, the
applicant is not entitled to claims to the apparatus under Section
36(1) and Section 38(2) of the Patent Act, for it is clear that the
description with respect to any apparatus is so brief and in such
broad terms as to merely describe and support claims to a process.
J.F. Hughes
Assistant 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 and signed this
6th day of September, 1973.
Agent for Applicant
Smart & Biggar,
Ottawa.