COMMISSIONER"S DECISION
OBVIOUS: New Combination; Several Citations.
FINAL ACTION PROCEDURE": Second-action Same Grounds.
The broad concept of combining the slack control devices of either
of two citations with the travelling skyline system of a third
citation is but expected skill. Other claims including a feature
not shown in any citation allowed. The applicant was given the
option of having the rejection of one claim, made for the
first-time in the Final Action, referred back to the examiner
for further consideration.
FINAL ACTION: Affirmed in-part.
*******************************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated August 25, 1972
on application 092,031. This application was filed on August 31,
1970 in the names of David G. Rennie and Maurice J. McIntyre and
refers to a "Scab Line Carriage System Method And Apparatus."
The Patent Appeal Board conducted a Hearing on November 7, 1973,
at which Mr.J. Ellis represented the applicant.
In the prosecution terminated by the Final Action the examiner
refused claims 1 to 6, 8, 12, 15 and 16, in that they define a
system which is obvious in view of the following prior art:
Canadian Patent:
419,507 Grabinski
United States Patents:
1,782,528 Berger
1,789,472 Meany
2,141,469 Hansen
The examiner also refused, for the first time, claims 7, 9 to 11, 13
and 14 in view of the cited prior art, design preferences and expected
skill.
This application is a division of application 011,355. The claims of
that application, as allowed, are directed to a log yarding carriage.
The claimsof the present application are directed to a log yarding
system which includes the log yarding carriage of the parent. More
specifically the log yarding system of the present application
comprises a yarder mechanism including sky line winch means and
main line winch means, a tail block spaced from said yarder
mechanism, and a traveling sky line connected to said sky line
winch means.
In the Final Action the examiner stated in part:
The patent to Grabinski shows in substance a two-part main
line and a load line in combination with a running sky line.
The addition of a slack control to the above system is
considered obvious, and such controls are shown in the
applied United States patents.
...
It is held that although the lines used in the devices of the
prior art have different names, (the corresponding one to
applicant's one of the two-part main line is called a slack
pulling line), their function in positively paying out the
load line and preventing sag, is the same.
In lines 26 to 29 on page 9 of his patent Grabinski states
that the arrangement as shown in Figure 4 can be altered by
attaching the tong line (47) to the skidding line (35) (as
opposed to the arrangement shown in Figure 4, where the
skidding line (35) and the tong line (47) are actually one
continuous line). In such arrangement the skidding line would
be continuous with the "slack pulling line" (38), will run
around the pulley (42) and back to the winch (52), the same
way as shown in applicant's figures 1 and 2. (The term
"skidding line" used by Grabinski corresponds to applicant's
"main line"). It is also pointed out that in the expression
in lines 2 through 4 on page 2 of this application applicant
has acknowledged the existence of "yarding system employing
carriages with two-part vain cables (which) generate slack
in the lower main line when the carriage is moving out into
the road" (underline added).
From this statement it is obvious that novelty of applicant's
device may not lie in the provision of "two-part main cable".
It would appear that such novelty lies in a combination of
two-part main line and control of slack in the "lower main
line" (32). Such control of the slack, however, is well
known in the art, and as pointed out above, is shown in
different forms in patents to Berger, Meany et al and Hansen
et al.
In the discussion of the affidavit of Mr.J.J. Guddall, in the
letter of April 22, 1971, applicant states:
"(a) that standing skyline arrangements with two-part
main or inhaul lines as exemplified in Weber and Meany
et al are old and have been in use for at least some
45 years;" (underline added).
This statement further supports the position that there is
no novelty in the use of two-part main line.
The details of operation of applicant's "main line drum or
winch means" have not been fully and clearly disclosed,
probably under assumption that these features are well
known in the art and their functioning is therefore obvious.
It is held that operation of two-part main line with connection
to the load line would require two winch drums, able to rotate
either in the same or in opposite directions. Figure 1 of the
drawings is showing only one drum (18).
It is held that inclusion of means interconnecting the main
line and load line sheaves, well known in the art and shown
in the applied United States patents, in the yarding system
of Grabinski is obvious to those skilled in the art and claim
1 is therefore refused.
...
On further review of this application it has been found that
claims 7, 9 through 11, 13 and 14 are also not patentable. It
is regretted that these claims were not included in previous
rejections, however, to expedite prosecution of this application
they are now also rejected.
The applicant, in his response dated January 15, 1973 to the Final
Action, stated in part:
The present invention relates to a novel system for yarding
logs; particularly logs lying remote from the sky line path.
Referring to FIGURE 1 and 2 of the applicant's drawings,
applicants' log yarding system comprises a carriage 42
slidably mounted on a running sky line 28 which is fed out
from a fairlead assembly 16 atop a yarding tower 12. The
running sky line 28 further extends around a tail block
26 and back to the carriage 40 for connection at point 72.
A two part main line is provided, the first part of which
(inhaul line 30) loops around a sheave 62 and extends back
to the yarder 10 through sheaves 20 and 22, to be rotated
about a pair of yarder drums. The second part of the two
part main line (load line 32) also extends over a sheave
66 on the carriage 42 and is provided with a choker at its
outer extremity,while the other end is connected to the
lower part of the inhaul line 30 at connection 34.
Briefly summarizing the operation of the system, the carriage
40 is transported out to a log by paying in on the sky line
28 while simultaneously paying out on both parts of the two
part line. This operation is continued until the carriage
40 reaches the proximity of a log. If the log lies beneath
the path of the runnins sky line 28, the choker of the line 32
is set on the log and the line. operation is then reversed, i.e.,
the two part main line 30, 32 is simultaneously payed in and
the sky line 28 is payed out. This operation, of course,
continues until the carriage and the log are brought to a
landing adjacent the yarder 10.
...
Systems using standing sky lines were used for many years in
the logging industry. However, a running sky line system was
developed by Grabinski in the early 1940's which reduced the
number of cables required and groatly simplified the operation
of these lines. In the Grabinski system shown in Canadian
patent 419,507, a sky line 12 extends, over a sheave 15
mounted on the spar tree 16, to and around a sheave 20 mounted
on spar tree 17 and back to a carriage 18. The reason the sky
line. 12 is called a running sky line is that, since it also
functions as an outhaul line, it is movable. The inhaul line
35 functions in a manner similar to Berger and Meany. Moreover,
a slack pulling line 38 is provided for pulling the slack in
the inhaul line 35 in a manner similar to Berger and Meany.
However, there are some fundamental differences between the two
systems. In the standing sky line system the outhaul line can
be small because it only pulls the carriage outwardly when there
is no load on the carriage and also because it is not made to
support the carriage in suspension. In the Grabinski running
sky line system, however, since the sky line also functions as
the outhaul line, the inhaul and outhaul lines must be held
under tension at all times to keep the carriage in suspension.
...
Applicants have solved this problem by providing a two part
inhaul line having a load line connected thereto for supporting
the logs. The two part inhaul line functions in an improved
manner to (1) positively support the carriage to maintain the
carriage in suspension, and (2) to operate the load line to
bring the log toward the carriage while keeping the carriage
in line.
Therefore, in applicant's respectful submission, and despite
what is said in the first page of the Final Action, the basic
issue is still whether the combining of the teaching of
Grabinski's running sky line with the disclosures of the
secondary references, which are each said to show a two-part
main line (applicant does not admit that they show this and
has argued above that they don't) combined with a standing
sky line, is simply expected skill in the art, i.e. is obvious.
The Examiner has suggested that this constitutes expected skill
whilst applicant feels that the combination Was most definitely
not an obvious one based on expected skill.
In the first place, there is nothing in any of the secondary
references to suggest that one of them could usefully be combined
with the primary one and then further modified to arrive at the
construction claimed by the present application. The very age
of the patents to Grabinski, Hansen, Berger and Meany strongly
suggests that the applicant's invention was by no means obvious.
The invention is extremely useful commercially, and, had it been
obvious once the Grabinshi patent had been published in 1944, the
art would surely not have had to wait over two decades for the
present inventors to develop their apparatus if all that was
required was expected skill to arrive at applicant's device by
somehow combining Grabinski with the teachings of Hansen or
Berger or Meany, each of which issued well before Grabinski.
In this connection, it is important to note that systems such as
those disclosed in Berger, Grabinski and Meany are not simply
disclosures in "payer patents." Those systems, including the
Grabinski one, have long been used in the logging industry.
The inventors in the present case have, as a matter of fact,
both grown up in the logging industry and were well versed in
such systems. Had the present invention been obvious to anyone
having knowledge of the Grabinski system together with know-
ledge of a system such as the Berger one, neither the present
inventors nor their confreres in the logging industry would
have been content to wait until the 1960's to enjoy the
benefits of the applicant's invention which is currently
experiencing appreciable commercial success.
...
If by any chance the Board does not favourably reconsider the
Examiner's objection to claim 1 and approve that claim for
allowance, it is sincerely hoped that the Board will at least
favourably deal with claims 7, 9, 10, 11, 13 and 14 which were
first objected to in this Final Action. Such a rejection would
appear to be contary to the intent of Rule 46(1), and seems
most inappropriate on that ground alone. Furthermore there
are solid substantive grounds, in addition to this formal
ground, for allowing these claims.
The first question to be decided is whether claims 1 to 6, 8, 12,
15 and 16 define a system which is obvious in view of the cited
prior art. Claim 1 reads:
In a log yarding system of a type comprising a yarder mechanism
including sky line winch means and main line winch means, a tail
block spaced from said yarder mechanism, and a travelling sky
line connected to said sky line winch means and extending
therefrom outwardly to said tail block, then over and around
said tail block, and then back towards said yarder mechanism,
yarding equipment comprising: a carriage including means
supporting it on and for movement along said sky line, between
said yarder mechanism and said tail block, the free end of said
sky line being connected to said carriage, a main line sheave
supported on said carriage below said supporting means; a two-
part main line extending from said main line winch means to
said main line sheave, then around said main line sheave, then
back to said main line winch means, with the inner ends of said
two-part main line being connected to said main line winch
means; a load line sheave supported on said carriage; a load
line connected to one part of said main line at a location spaced
towards the yarder mechanism from the main line sheave, and
extending from said location to said load line sheave, then
over said load line sheave, and then vertically downwardly for
connection to a turn of logs, said load line comprising the
other part of the two-part main line, and means interconnecting
said main line and load line sheaves, so that rotational movement
of the main line sheave during main line movement in the direction
involving movement of the connection point of the load line to the
main line towards the carriage is transmitted to the load line
sheave, causing said load line sheave to positively play out said
load line.
The reference to Grabinski discloses a two-part main line and a load
line in combination with a running sky line. Claim 4 of this patent
reads:
In apparatus of the class described, an overhead cable; a
first carriage means carrying a plurality of sheaves and
operatively supported by said cable for travelling movement
thereon; a second carriage means operatively supported by
said cable for relative travelling movement thereon toward
and away from said first carriage; a skidding line fixedly
connected with said second carriage; a tong line passing
through a sheave in said first carriage and fixedly connected
with said second carriage; and a slack pulling line fixedly
connected with said second carriage and passing through
sheave means of said first carriage.
The Patents to Berger and Hansen show different solutions to the
problem of preventing slack in a load line. These patents and the
patent to Meany also show variations of standing sky line structures.
The material question is whether it is obvious to use a slack control
system on a running sky line with the two part main line system of
Grabinski.
First it is noted that different terminology is used in the present
application from that used in the cited references. For example,
the "slack pulling line" in Grabinski corresponds to part of the
"two part main line" in the present application. Both lines function
in the same manner, that is to pay out the load line to prevent sag.
Furthernore, these lines (as is stressed by the applicant) may be of
a different size. These features, however, do not describe patentable
alterations in structure, and cannot be relied upon for patentability.
The applicant also advanced the argument that his system is
particularly adapted to operate when the logs do not lie directly
under the sky line. We find, however, that tho disclosure of the
application does not support this argument. It is well known that
in order to operate a logging system having "a travelling sky line,"
and "a two-part main line" as well as "a load line," there must be
a suitable number of winches. For the "two-part main line" there
must be two winches capable of rotation: 1) both in the same
direction for moving a carriage, riding on the sky line, to the
cutting site; 2) capable of rotation in opposite directions to
feed the load line through the carriage, down to the log; 3)
capable of rotation in a direction opposite to that taken in
2) for lifting the load; and 4) capable of rotation in a direction
opposite to that taken in 1) to bring the carriage and the load
to the storing site.
For the above considerations the applicant has shown one winch
(18) in Figure 1, and describes it as "a main line drum or
winch means 1~." There is nothing in the disclosure that would
support applicant's description of operative of the system when
the logs do not lie directly under the sky line. The Board
is therefore satisfied that the system operates in substantially
the same manner as the systems of the prior art cited.
From a study of claim 1 it is our view that all the elements,
with the exception of "means interconnecting said main line and
load line sheaves" are disclosed in the Grabinski reference. Those
"means", however, are shown in different forms in the remaining
patent citations.
The Grabinski patent on page 9 line 6 states that the arrangement
shown in Figure 4 can be altered by attaching the tong line (47)
to the skidding line (35) (as opposed to the arrangement shown in
Figure 4, where the skidding line (35) and the tong line (47) are
actually one continuous line). In such arrangement the "skidding
line" would be continuous with the "slack pulling line" (38), and
will run around the pulley (42) and back to the winch (52) in the
same manner as shown in figures 1 and 2 of the present application.
(The term "skidding line" used by Grabinski corresponds to applicant's
"main line").
The cited patents to Berger and to Hansen disclose different
solutions to the problem to preventing slack in a load line.
Such solutions are covered by the "means" of claim 1. The patent
to Hansen, for example, shows means interconnecting said pain line
and load line sheaves so that rotational movement of the main line
sheave is transmitted to the load line sheave causing said load
line sheave to positively pay out said load line. It is also
noted that this problem of preventing slack in a load line exists
independently of the type of the yarding system used.
It may also be pointed out that at lines 2-4 on page 2 of this
application, the applicant has acknowledged the existance of
"...yarding system employing carriages with two-part main cables
generate slack in the lower main line when the carriage is moving
out into the road." From this admission it is obvious that any
novelty in the applicant's device could not be in the provision
of a "two part main cable".
In our view, therefore, it is but expected skill to combine in the
broad concept thp slack control devices of Bergen or Hansen with
the travelling skyline system of Grabinski.
Claim 2 adds an additional feature that the main line sheave, the
load line sheave, and the means for supparting the carriage are all
substantially co-planar. Such features, however, are shown in the
Grabinski patent (fig 4). Claims 3 and 6 describe additional
features which are disclosed in the reference to Meany. The subject
matter of claim 8 is disclosed in the patent to ~ansen. Claims 4,
5, 15 and 16 merely define non-patentable design preferences over
the prior art.
In summary, we are satisfied that claims 1-6, 8, 12, 15 and 16
do not define patentable subject matter over the cited prior art.
The second question to be decided is whether claims 7, 9-11, 13
and 14 define patentable subject matter. These claims were
rejected for the first time in the Final Action.
Claim 7 includes a guide roller means located in a particular
area which contacts at least one of said main lines and said load
lines. Claims 9 and 11 include slip clutch means in the inter-
connecting means. Claims 13 and 14 define grapple connectors and
their operation. These features are not disclosed in the ref-
erences, and in our view the subject matter of claims 7, 9, 11, 13
and 14 is distinguishable from the prior art cited.
when we turn to claim 10 we find that it is dependent on rejected
claim 1 and adds the following: "...means for rotating the load
line sheave at a slightly faster rate than the main line sheave...."
The Hansen reference covers this feature on page 2 at line 44,
which reads: "While the two sheaves may be made identical in dia-
meter, it is preferrable that the tong line sheave be slightly
greater in diameter...(so that) sheave 3 moves at a slightly greater
circumferentiai speed...." Claim 10, therefore, in our view does
not define any patentable advance over the prior art.
There is, however, another matter to consider. Mr. Ellis in
response to the Final Action, and also at the Hearing, objected
strongly on procedural grounds to the rejection of claims 7, 9-11,
13 and 14. In his view only a second or subsequent action of an
examiner should be made final under Section 46 of the Patent Rules.
Since these claims were first rejected in the final action itself,
be argued the rejection was improper. In so far as claims 7, 9,
11, 13 and 14 are concerned, this objection is immaterial, as we
have found those to be allowable claims. In respect to claim 10,
however, the objection is germane, since in our view the claim
should be refused.
In considering this point, it may be noted that the examiner has
not raised new grounds for rejection, nor cited new art, What
he has done is extend the same objection to additional claims.
In so doing he undoubtedly wished to avoid delaying prosecution
further, or putting the application to a second final rejection,
with all the expense and difficulty that would entail for the
applicant.
Nevertheless, this method of proceeding could be interpreted, as
the applicant suggests, as being contrary to the "intent" of
Section 46(1) of the Patent Rules. It may have introduced some
short circuitry into a thorough discussion of the merits of those
clains at the examination stage. We believe there was such a
thorough discussion and consideration at the hearing stage, but
feel that if the applicant wishes claim 10 to be returned to the
examiner for a second action, he should be afforded such a
consideration. We have, however, indicated our own findings on
the detailed evidence and arguments provided at the Hearing by
Mr. Ellis so that the applicant may assess whether it would in
fact be desirable to make such a request. In our view it is
quite clear that claim 10 is unpatentable in view of the Hansen
reference, and that no argument or amendment could overcome the
objection.
To summarize, the Board is satisfied that claims 1-6, 8, 10, 12,
15 and 16 do not define a patentable advance in the art beyond
that disclosed in the references cited, and in common practice,
but that claims 7, 9, 11, 13 and 14 are acceptable.
The Board recommends therefore that the rejection of claims 1-6,
8, 12, 15 and 16 be affirmed, that claims 7, 9, 11, 13 and 14
be accepted, and that claim 10 be refused subject to the provision
that this claim be returned to the examiner for further consideration
if the applicant request that such be done. Otherwise Clain 10
sho~d also be refused.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board. Accordingly,
I refuse to grant a patent containing claims 1-6, 8, 12, 15 and 16,
but will accept claims 7, 9, 11, 13 and 14. Under the circumstances,
claim 10 is also refused but will be returned to the examiner for
further consideration if requested by the applicant. The applicant
has six months to submit an appropriate amendment deleting claims
1-6, 8, 10(if no request is made), 12, 15 and 16, or to appeal this
decision under the provision of Section 44 of the Patent Act.
Decision accordinsly,
A. M. Laidlaw,
Commissioner of Patents
Dated at Hull, Quebec
this 5th day of December,
1973.
Agent for Applicant
Smart & Biggar,
Ottawa, Ontario.