COMMISSIONER'S DECISION
INSUFFICIENT CLAIM - S. 36(2): Fail to Distinguish the Prior art.
The Final Action refused one of several conflict claims under
S. 45(4). The principle of using "pivotal action joints" to
provide for "hinging" of the two frame sections of a rectangular
railway truck frame on a diagonal axis, using rubber bushings
sufficiently non-resilient to permit hinging without noticeable
loss of rectangular tram was shown in the citation. The
limitation in the claim using "non-resilient" means instead of
the rubber bushings, to permit hinging of the frame sections
while maintaining rectangular tram, held not to distinguish
unless limited to a "non-resilient ball-joint type" hinge
means.
FINAL ACTION: Affirmed; amendment permitted.
****************
This decision deals with a request for review by the Commissioner
of Patents of the Office letter written under Section 45(4) of
the Patent Act dated March 13, 1973 on application 944,834, to
determine whether the Commissioner of Patents ought to refuse
the claims under Section 42 of the Patent Act during conflict
proceedings. This application was filed on November 8, 1965 in
the name of Gustav B. Sundby and refers to "Railway Trucks".
The Patent Appeal Board conducted a Hearing on January 16, 1974
at which Mr. R.D. McKenzie represented the applicant.
The present application relates to a frame assembly for railway-
car trucks. The assembly includes a pair of side frames and a
pair of cross members or transoms extended therebetween. One
end of each of the cross members is rigidly secured to the frame,
the other end is connected to the frame by means of a universal
joint at diagonally opposed points. This allows pivoted movement
about the diagonal axis passing through the center of each bearing
present at the universal joint.
In the prosecution terminated by the Office letter claim C1 was
refused for failing to distinguish patentably over a patent to
Rossell, and for being indefinite.
The Office letter stated in part:
Reference Re-Applied
United States Patent
2,976,819 Mar. 28, 1961 C1. 105-138 Rossell
Conflicting claim C1 is again rejected in view of the patent
identified above.
...
The applicant must reply to this letter and either cancel
the rejected claim C1 or show how their subject matter is
patentably different from the subject matter of the refer-
ence. In this regard applicant may rely on his arguments
as presented in his October 16, 1972 letter or he may provide
a new presentation of argument.
If an argument is presented that the subject matter of the
rejected conflicting claims is patentable, the patentability
of such claims will be reviewed by the Patent Appeal Board
before a final decision is made by the Commissioner. In
view of this, the applicant should submit a full statement
of his reasons why the cited prior art is not pertinent, and
if an oral hearing is desired before the Patent Appeal Board
such must be requested within the time limit of 3 months set
for response to this letter.
The applicant in response to the Office letter dated June 13, 1973
stated in part:
As mentioned in the response of October 16, 1972 claim C1
calls for first and second independent non-resilient means for
so connecting the first same section to the second same section
as to permit vertical displacement of any one of the wheels
relative to the remaining wheels while substantially maintaining
said side frames substantially in rectangular tram and substantially
preventing lateral tilting of said side frames.
This feature of the present invention is not taught by the Rossell
Patent, which discloses an assembly including rubber bushings 5.
The rubber bushings cannot be said to be non-resilient. This
is the essence of the argument advanced in the response of
October 16, 1972, and nothing further is being added to such
argument at present.
As to the reasons why the cited prior art is not pertinent
reference is made to the response of October 16, 1972.
The question to be decided is whether the subject matter of claim C1
defines explicitly the advance in the art alleged to have been made
over the reference to Rossell. Claim C1 reads:
A vehicle truck assembly, comprising:
(a) a first frame section comprising a first side frame
and a first transom rigidly fixed to said first side frame
and extending laterally therefrom;
(b) a second frame section comprising a second side frame
and a second transom rigidly fixed to said second side frame
and extending laterally therefrom;
(c) the transoms of said first and second frame sections being
spaced from each other longitudinally of said truck;
(d) wheel and axle assemblies journalled in said frame sections
at opposite ends of the truck and providing wheel's at locations
corresponding generally to the four corners of said truck;
(e) first and second independent non-resilient means for so
connecting said first frame section to said second frame
section as to permit vertical displacement of any one of said
wheels relative to the remaining wheels while substantially
maintaining said side frames substantially in rectangular tram
and substantially preventing lateral tilting of said side frames;
(f) said first and second connecting means comprising means
confining the relative movement between said first and second
frame sections to an axis extending diagonally across said
truck adjacent the ends of said first and second transoms.
The reference to Rossell discloses a railway-car truck assembly
having independent side frames connected so as to give diagonal
flexibility. The assembly includes a pair of side frames, and a
pair of cross members or transoms extended therebetween. One
end of each of the cross members is rigidly secured to the frame,
the other end is connected to the frame by means of a flexible
connection at diagonally opposed points. This allows pivotal
movement about the diagonal axis passing through the center of
the flexible connection. Claim 1 of this patent reads:
A railway truck comprising truck side frames, two spaced
cross members connecting said side frames intermediate the
ends of said side frames, each of said side frames being
resiliently connected to one of said cross members and
rigidly connected to the other thereof, said cross members
and their connections to said side frames being of sturdy
construction and maintaining said side frames in tram,
each of said side frames having a circular opening each
and thereof, a journal bearing positioned in each of said
circular openings and separated from the walls thereof by
a ring of rubber, and axles connecting said journal bearings
in pairs.
The flexible connector shown in the drawings of Rossell is composed
of a cylindrical end piece 6 aligned with the cross member 2 in a
cylindrical bushing 5 and attached to the frame by a cylindrical
portion including cap 8, and all of these cylindrical elements are
centered on a common axis at a right angle to the fore-and-aft
direction. However, the hinge axis in Rossell is about 40ø to the
cross member 2 in a diagonal direction. When one wheel lifts or
drops at a track joint, the other three wheels do not lift or drop.
The end piece 6 angles out of alignment with the cap 8 because of
the resilience of the rubber bushing. The piece 6 then rotates
slightly relative to the cap 8 by straining the rubber bushing 5
in torsion.
From a consideration of claim C1 it is noted that parts a, b, c, d,
and f read directly on the reference to Rossell. Part "e" is the
only feature which distinguishes over the reference. The applicant
utilizes a "non-resilient means," whereas Rossell employs a "resilient
means". Consequently we must determine whether the "non-resilient
means" of the applicant defines explicitly the alleged advance in
the art.
The applicant stated in response to the Office letters that he would
rely on the arguments presented in his response of October 16, 1972
for his reasons as to why the cited prior art is not pertinent.
In that response he argued that Rossell's truck bushing would permit
more than "the maximum acceptable movement of the side frames of the
truck out of tram." The applicant did not indicate the source of
his figure that this movement should exceed 1/16 of an inch, nor
in what manner that figure should be applied. An acceptable out-of-
tram dimension appears to be a larger figure than that for the most
commonly used truck, in which type the two side frames are aligned
by a vertically slidable bolster. For example, pages 951 and 952
of the nineteenth edition of "Car Builder's Cyclopedia" reproduces
the A.A.R. standards for car trucks. The standards show that the
variation in wheel base from one side of a truck to the other can
be more than 1/16 of an inch. The tolerance in the distance between
column guide surfaces can be 1/8 of an inch. The minimum clearance
between the axle box and the pedestal jaws is 1/8 of an inch. The
applicant's figure of 1/16 of an inch for out of tram, which must
be the result of all clearances and permitted dimension tolerances,
cannot be accepted as persuasive. Nor are there any proven facts
which evoke disbelief in Rossell's statement at lines 16 and 17 of
column 2 of the patent that, "The bushings 5 have slight resiliency,
insufficient to permit a noticeable loss of tram." The inventor
also discussed this point in his affidavit, filed November 15, 1973.
It is agreed, however, that the bushing must be sufficiently resilient
to permit diagonal flexibility, but insufficient to permit a noticable
loss of tram.
The applicant has also argued that the frames of the Rossell truck
cannot be maintained in tram because "the rubber bushings 5 in
Rossell's truck must have sufficient resilience to accommodate
irregularities in the track...." Applicant is obviously assuming
that the movement of the cross-members 2 is vertical or radial
at the bushing when a wheel moves up or down to follow track
irregularities. This argument appears to ignore the Rossell
disclosure, lines 16 to 20 of column 2, which describes the same
kind of hinging action which the applicant describes as a pivotal
motion. That is, the action is almost entirely one of relative
rotation at the joint between Rossell's cross-member 2 and his
frame 1 which provides a diagonal hinge axis passing through the
two resilient joints.
Finally, the applicant argued that the "statements of expected
result" mentioned in the last four lines of part "e" of claim 1
were definitions of non-resilient means. The applicant did not
provide any argument to support his allegation that the operative
words are in fact definitive. The operative terms from part "e"
read: "... means for so connecting said first frame section to
said second frame section as to permit vertical displacement of
any one of said wheels relative to the remaining wheels while
substantially maintaining said side frames substantially in
rectangular tram and substantially preventing lateral tilting
of said side frames." These terms, however, are clearly recognizable
as those commonly used to describe an action, but in the instant
circumstances they describe the known result provided by Rossell.
Of significance in the present determination is the rationale of
the Court in Cluett Peabody & Co. Inc. v. Dominion Textiles Co.
Ltd. (1938) Ex.CR. 47 at 79 wherein Maclean J. stated:
It has been well and concisely stated in the text book,
Terrell on Patents, that inventions may be divided roughly
into two classes in respect to subject-matter. First,
there is that kind of invention which consists in the
discovery of a method of application of a new principle-
here what has been invented is in effect the new principle,
and, generally speaking, the Court will regard jealously
any other method embodying that principle, for the patentee
was not bound to describe every method by which his invention
could be carried into effect. Second, there is that kind of
invention which consists in some particular new method of
applying a well known principle, and in this case the use
of other methods is not contemplated by the patentee, and
should not be included within the ambit of his claim.
That describes an accepted doctrine in patent law....A
patent for carrying a principle which is new into effect
protects the grantee against all other modes of carrying
that principle into effect. (underlining added).
The new principle referred to in the above case related to a method
of treating fabric to prevent skrinkage.
From a study of the cited prior art to Rossell it is found that the
broad principle or idea of "a pivotal action joint" is known.
Rossell discloses a railway-car truck having a pair of transoms
each rigidly connected at one end to one frame and pivotly connected
at its other end to the other frame to provide a diagonal hinging
action.
In our view this application involves that kind of invention which
consists in some particular new mode of applying a known principle,
and in this case the use of other modes is not contemplated by the
inventor, and should not be included in the ambit of his claim.
Also of interest is the rationale of the court in Mecro Nordstrom
Valve Co: v. er (1942) Ex:C.R. 138 at 148 wherein Maclean J.
stated:
The claims here are directed to the combination only
and they are only for an improved method of attaining
on old object, in which case the use of other methods
is not contemplated by the patentee, and the monopoly
is limited to the particular mode described.
In our view while a patentable advance may have been made in the
art, the contribution to the art, however, does not justify the
scope of monopoly covered by claim C1. In the circumstances
therefore any allowable claim must be restricted to the particular
mode described, i.e. a non-resilient ball-joint type connector.
Vide, Cluett Peabody v. Dominion Textiles, supra.
The Board is satisfied that claim C1 is unduly broad, and does not
distinctly define the real advance made in the art, taking into
consideration both Section 36(2) of the Patent Act and the known
concept disclosed in Rossell.
The Board therefore recommends that the decision in the Office
letter refusing claim C1 be upheld. The Board also recommends
that an amendment to claim C1, along the guidelines setout herein,
be considered acceptable as overcoming the particular objections
made. Such a claim should, however, be subject to further
examination for other objections. Consideration will have to be
given, for example, to whether as amended claim C1 is substantially
the same as C3.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board. Accordingly,
I refuse to allow claim C1, but will accept an amended claim C1
drawn in accordance with the suggested guidelines and subject to
further examination. The applicant has six months within which to
amend or cancel claim C1, or appeal this decision under the
provisions of Section 44 of the Patent Act.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated and Signed in
Hull,Quebec this
8th of February, 1974.
Agent for Applicant
Marks & Clerk,
Ottawa, Ontario.