COMMISSIONER'S DECISION
OBVIOUS: Claims Fail to Define Advance in the Art.
The distinction between subject matter of the claims under
rejection and the prior art involves the dispensing of an addi-
tive into a flowing fluid stream, from a disposable flexible
walled dispenser having sealed closure before use, instead of a
re-usable dispenser without closure means of the primary refer-
ence; combined closure and dispensing spouts on flexible con-
tainers being well known. Some proposed claims allowable if
amended.
FINAL ACTION: Affirmed.
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This decision deals with a request for review by the Commiss-
ioner of Patents of the Examiner's Final Action dated June 5,
1973 on application 086,014 (Class 50 - Subclass 8). The
application was filed on June 19, 1970 in the name of Edgar P.
Scragg and is entitled "Method Of Lubricating Pneumatic
Machines And Apparatus Therefor." The Patent Appeal Board con-
ducted a Hearing on June 12, 1974, at which Mr. A. Davidson
represented the applicant.
The application relates to a method and apparatus for dosing
a flowing fluid, which apparatus has particular utility in
the field of lubrication where a lubricant is to be added to
a flowing air stream. The lubricator consists of a casing which
is connected into a fluid stream (usually air) and which
includes a lubricant container. The lubricant container is a bag
of flexible material upon which the fluid stream is caused to
impinge so as to compress it and expel the lubricant through
the nozzle into the stream.
In the prosecution terminated by the Final Action the examiner
refused claims 1 to 6, 8 to 10, 12 and 21 to 23 as lacking
patentable subject matter over the following references:
British Patents:
936,957 Sept. 18, 1963 Garwood et al
936,956 Sept. 18, 1963 Garwood et al
Canadian Patent:
619,486 May 2, 1961 C1. 206-0.5 Akers
United States Patent:
2,792,073 May 14, 1957 C1. 183-8 Boss
Claim 21 was also found objectionable for lack of support in the
disclosure.
In the Final Action the examiner stated (in part):
The Garwood et al patents disclose a means and an apparatus
for dosing a fluid with an additive, whereby a flexible-
walled tube, inserted in a container, is deformed by fluid
impinging upon the walls of the said tube as the fluid flows
through; the said deformation of the tube causes an
additive contained in the said tube to be deposited in the said
flowing fluid.
The main distinction, between the matter claimed by the re-
jected claims and that taught by the Garwood et al patents,
is a variation in the type of collapsible tube containing the
aaditive; such a tube, however, is disclosed by the Akers
patent; the Akers patent discloses a flexible tube having
a sealed spout, which spout may be opened by cutting the
sealed end. It is held that the mere replacing of the flex-
ible tube containing the additive of the Garwood et al
patents, with a tube such as that disclosed by the Akers patent
is a simple expedient for one skilled in the art.
The Boss patent discloses the use of a filter in a device
for dosing a flowing fluid. This patent is cited to show
that the use of filters for such apparatus is known in the
art, and the inclusion of such in an additive system cannot, in
itself, be relied upon for novelty.
Furthermore, regarding the length of bore 46.3 and the remov-
able formation 46.4 (of the drawings) in the instant
application, it should be noted that the Akers patent discloses
a flexible tube having a sealed spout, which spout may be
opened by cutting off the sealed end of the said spout.
Furthermore, the sealed spout includes a notch near the tip
of said spout; this notch represents the suggested place to
cut the top off the spout in order to produce a preferred
pouring rate from the said spout; the length of the bore
within the said spout can be varied by cutting off the said
tip at some other location as desired; varying the position
of tip cut-off will vary the rate of discharge from the
said container, hence it is of expected skill, for one in the
art, that the rate of discharge can be controlled.
Furthermore, it is well known that fluid flow can be
restricted by varying the diameter and length of the bore
through which flow occurs, and therefore by friction,
hence devising the bore to a specific length in order to
obtain a desired discharge from a container is well
within the expected skill of one in the art. The breaking
off or cutting off the tip of the said spout is merely a
way to control the discharge of fluid through the said
spout.
It is therefore held that the replacing of the replaceable
tube of the Garwood et al patents with a disposable tube
or container of the Akers patent and making the necessary
adaption alterations is well within the expected skill of
one in the art.
The applicant in his response dated Aug. 31, 1973 to the Final
Action cancelled claims 3 and 21, and submitted a proposed amendment
to claims 1, 6, 8, 23 and 26 to indicate that the "bore" is a
"metering bore." He also stated (in part):
As a separate ground for review of the final action, it
is submitted that, in any event, the references do not
render the claims obvious. This ground will be discussed
under three separate heads:
(a) whether the simple combination proposed by the
Examiner is obvious as he contends;
(b) whether, if the combination proposed by the Examiner
would have occurred to a skilled man, it would have
done so without the exercise of the inventive
ingenuity; and
(c) whether the combination proposed by the Examiner
actually does give rise to the invention claimed.
On the first of these points, it is noted that the British
specifications relied upon are 13 years old and the Canadian
specification is 12 years old. Thus, there has been a
significant period during which this combination, if so
obvious, could have been made. The Examiner has been
unable to point to a single document combining these
disclosures and, in fact, neither the U.S. Patent Office
Examiner nor the British Patent Office Examiner was able
to show the combination claimed in any of the claims now
in the application. Furthermore, the applicant himself
is not aware of his invention ever having been proposed
before. Castrol Limited, and their parent company Burmah
Oil, have investigated this invention thoroughly and taken
a licence having been unable to show that the invention
was old. In its lubricating form, the invention has been
put into practice in the goldmining industry in South
Africa, and by this time will either have entered service,
or be about to enter service, in Canada and Australia.
The almost instantaneous acceptance of the lubricator
form of this invention seems to be irrebuttable proof
that this invention has fulfilled a long existing need.
Mines which have put it into practice have found that
their maintenance costs drop drastically and that they
get far better lubrication on substantially less lubricant.
...
Turning now to the second point, and assuming that a
combination of references such as that proposed by the
Examiner is allowable, we must consider the position
of the hypothetical man skilled in the art faced with
the problem of accurately dosing a flowing fluid and
having before him the prior specifications on which
the Examiner is relying. The question to be answered
is whether, in these circumstances, it would be obvious
to that man, without exercising inventive ingenuity,
to make the proposed combination. We submit that
nothing in these documents would lead him to make this
substitution unless (1) he had the disclosure of the
present applicant before him as a guide or (2) he
exercised his inventive faculty....
...
In summary, applicant submits the following salient points:
(a) that the combination of the teaching of unrelated
documents not shown to be common knowledge should
not be allowable to render obvious an invention;
(b) that even if such combinations should be held to be
allowable, it would not occur to a man skilled in
the art to combine the Akers container with the
devices of the two Garwood specifications;
(c) that even if the thought did occur to a skilled man
that he could replace the Garwood bags by the
container of Akers, he would still have to exercise
inventive ingenuity in altering the Garwood devices
so that the metering function no longer takes place
in the permanent structure but in the nozzle of the
bag.
For the reasons set out above, it is believed that the
amended claims should be found to be allowable.
The question to be decided is whether claims 1 to 5, 7 to 9,
11 and 20 to 22 as they would be amended in the latest proposal
of the applicant lack patentable subject matter. Claim 1 as
thus amended and claim 8 (which would become claim 7 by
cancellation of claim 3)are representative of the rejected
claims and read:
1. A method of dosing a flowing fluid which comprises
the steps of:
(a) Packaging the additive with which the fluid is to be
dosed in a disposable container comprising a bag and
a nozzle, the bag being of flexible material which
is impervious to the additive container therein, and
the nozzle including a bore leading from the interior
of the bag and a formation blocking the end of the
bore remote from the bag;
(b) Connecting in the line through which said fluid flows
a casing having an inlet and an outlet and which can
be opened to permit access to be had to means within
the casing for temporarily and releasably locating
one of said containers;
(c) Removing said formation to open said bore and leave
behind a metering bore of predetermined length;
(d) Opening said casing;
(e) Removably locating the container with the open bore in
the casing;
(f) Re-closing the casing; and
(g) Feeding said fluid through the container so that it
impinges on the bag so as progressively to collapse
the bag and expel additive through said bore into said
flowing fluid.
8. A device for dosing a flowing fluid, the device comprising
a disposable additive container and a casing, the casing
having an inlet and outlet by means of which it can be
connected into a fluid flow line, having means therein
for temporarily and releasably locating one of said con-
tainers, and being such that it can be opened to permit
access to be had to said means, and the container
comprising a bag and a nozzle, the bag being of flexible
material which is impervious to the additive contained
therein, and further being such that when impinged upon
by a flowing fluid with sufficient force it progressively
collapses to expel additive from the nozzle, and the
nozzle including a bore leading from the interior of the
bag and a removable formation blocking the end of the
bore remote from the bag which formation, when removed,
leaves behind a metering bore of predetermined length, said
casing being so formed that the fluid flow path therein
is such that the fluid flowing therethrough impinges on
said bag to collapse the same and expel additive which is
then entrained in the flowing fluid.
Our first determination will be the scope and content of the
prior art cited.
The Garwood patents disclose a means and apparatus for dosing a
fluid with an additive, in which a flexible-walled tube, in-
serted in a container, is squeezed by fluid impinging upon the
walls of the tube as the fluid flows around it. The squeezing
of the tube causes an additive contained in it to be ejected
into the flowing fluid. Claim 1 of Garwood (936,956) reads:
Liquid dispensing apparatus having a flow
passage for a main stream of liquid between
an inlet and an outlet of the apparatus, and
comprising a valve disposed in said passage
and spring-loaded in a sense to close the
valve, and which valve is acted on by the
pressure upstream of the valve in a sense to
open the valve, and is adapted to vary the
pressure drop across itself in dependence on
t'e quantity of mainstream liquid flowing
therethrough and a rigid vessel which is
divided by a flexible wall into two separate
spaces one of which spaces communicates with
said passage upstream of the valve, and the
other of which spaces is for a liquid con-
centrate and communicates through an orifice
with the said passage at a location down-
stream of the valve, said pressure drop being
such as to cause to flow through said orifice
into the main stream of liquid a quantity of
said liquid concentrate which is a constant
fraction of the quantity of main stream liquid
flowing through the said valve.
The Akers patent discloses a flexible tube having a sealed spout.
The spout may be opened by removing the sealed end. The Ross
patent discloses a combined air filter and lubrication device which
can be installed in an air line and which will simultaneously filter
and eject lubricant into the air passing through the line.
From a consideration of the subject matter of claim 1 it is
observed that the applicant has chosen to use a disposable bag
and nozzle, where as in the Garwood reference (936,957) the bag
and nozzle are reusable. Also, before the disposable bag is inserted
in the apparatus a portion of the nozzle is removed to provide
an opening.
The applicant has proposed amending claim 1 by adding the
term "metering" before the term "bore" at line 17. An arrangement of
this type, however, is shown in the Garwood (936,957) reference
in which page 2, column 2, line 9, reads: "Assuming the valve to
be open the liquid detergent is caused by the pressure drop to
flow through the drilling element 18 and to mix with the water...."
This in effect is a metering device, for the size of the element
18 must be controlled in order for the device to function properly.
This is further modified by the pin 23 which extends into the
central drilling 18.
The applicant has argued that "the examiner is not entitled to
add, to the disclosures of two British patent specifications, the
disclosure of a completely unrelated Canadian specification in
an entirely different field...." The basic difference, however,
between claim 1 and the prior art is concerned with "a different
dispenser." In this regard the Canadian reference (Akers) on
page 2, line 6 reads: "Combined spout and closure structures are
commonly used for dispensing virtually any known liquid or semi-
liquid composition from bottles, collapsible tubes, etc." In the
circumstance, therefore, we cannot agree that this reference
(Akers) is taken from an entirely different field. It is common
place to provide disposable dispenser which have to have a portion
of the head or nozzle removed to provide an opening before they
can be used. One such dispenser is shown in the Akers reference.
In summary, the main distinction between the subject matter
of claim 1 and that taught by the Garwood patents is a variation
in the type of collapsible tube containing the additive. Ad-
verting to the above considerations this concept, in our view,
lacks patentable subject matter.
Claim 2, which depends on claim 1 adds to it a reference to
a venturi effect. This however, is shown in the Garwood refer-
ences. Claim 3 has been cancelled. Proposed claims 3 and 4,
which depend on claims 1 or 2, add the features of markings to
the nozzle where it is to be cut before use. This is shown in the
Akers citation (part 38). Accordingly, our comments with
respect to claim 1 apply equally to claims 2, 3 and 4.
Proposes claim 5, which is somewhat more restricted than claim 1,
relates more specifically to the structure of the casing to
guide the flowing fluid in a converging pattern. The broad concept,
however, is taught by the Garwood reference (936957) (see the
structure designated as 24 and 26, both of which guide the flowing
fluid in a converging manner). The applicant argues that "the
converging pattern creates a reduced pressure and a region of
turbulance." The same thing obviously happens in the Garwood
reference (936957). Our comments regarding claim 1 also apply
to claim 5 and, in our view, it lacks patentable subject matter.
Notwithstanding the above comments, however, this claim would avoid
the prior art cited if the conclusion of part (b) was amended to
read: "... in a converging pattern 'caused by the configuration
of the casing and the tapered valve of the nozzle,' " or some
variation thereof.
Proposed claim 7 (which is former claim 8 with amendments)
covers the apparatus for dosing the flowing fluid. As the claim
is now phrased, however, it merely states a collection of
separate parts, viz., 1) a container with a frangible head; and
2) a casing for receiving the container when the head has been
removed. In other words an apparatus and its refill. There is
no functional relationship between these parts until the head is
removed and the container is inserted in the casing. To properly
claim the combination it would be necessary to claim the apparatus
with the container (minus the head) therein, in which case the
broad combination claimed would then be as disclosed in Figure 1
of the Garwood reference (936,957).
This claim (7) is substantially the same as rejected method claim 5
couched is apparatus terms. Accordingly our comments regarding
claim 5 apply equally to this claim, and in our view claim 7
also lacks patentable subject matter. An amendment, however,
such as that suggested for claim 5 would clear the prior art cited,
(assuming also that the claim is re-written to cover a proper
combination).
Proposed claim 8, which is dependent on claim 7, introduces a
feature equivalent to part 10a of the Garwood reference (936957).
Claim 9, which is dependent on claim 8, adds outwardly projecting
formations. This too reads on the Garwood reference, as the
reference shows screw threads for the same purpose. Consequently
claims 8 and 9, in our view, fail to add any patentable subject
matter.
Claim 21 was cancelled by the applicant after the Final Action.
Proposed claim 20, which is dependent on claim 7 introduces the
feature of the removable portion of the nozzle. This feature,
as previously stated, is shown in the Akers reference.
Proposed claim 21 is substantially the same as method claim 5
except that it is in apparatus form. Our comments regarding
claim 5, including the suggested amendment, apply equally to
this claim. The comments regarding a true combination re
claim 7 also apply.
The applicant has emphasized, specifically at the Hearing,
that the "bore" of the nozzle acts as a "metering bore" and
as such is an important feature. The disclosure, however, at
the top of page 13 reads: "It will be understood that as the
rate of lubricant flow is almost entirely dependent on the
kinetic force exerted by the air or water on the bag, then the
rate of flow of lubricant through the nozzle varies with the
air or water flow." It would appear then that the "metering
effect" is more correctly directed to the kinetic force exerted
on the bag rather than to the "metering bore."
The Board is satisfied that the subject matter of the rejected
claims is not a patentable advance in the art, and recommends
that the decision of the examiner to refuse the claims be
affirmed. It is also recommended that proposed claims 5, 7 and 21
be accepted if amended as indicated.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board
and I refuse to grant a patent on the subject matter of
the rejected claims. The applicant has six months within
to submit an amendment along the guidelines as set out by
the Board or to appeal this decision under the provisions
of Section 44 of the Patent Act.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Signed and dated in
Hull, Quebec this 28th.
day of June, 1974.
Agent for Applicant
Alex. E. MacRae & Co.