COMMISSIONER'S DECISION
NON-STATUTORY - S.2: Mental Step; Mathematical Formula.
Method of designing a spray nozzle of given flow rate and cone
angle of known type, by operating a plurality of nozzles and
measuring the parameters and formulating equations is not an
invention within Suction 2. While a new article may be
distinguishable in terms of the process of making, such process
must particularize "novel physical" steps rather than "mental
steps" only such as a mathematical equation formulated from
pluralities of measured parameters.
FINAL ACTION: Affirmed.
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This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated May 29, 1973 on
application 078,277 Class 299 - Subclass 15. The application
was filed on March 24, 1970 in the name of Frederick F.
Polnauer and is entitled "Spray Nozzles With Spiral Plow Of
Fluid."
In the prosecution terminated by the Final Action the Examiner
refused claim 1, which is directed to a spray nozzle, for lack
of patentable subject matter over the art cited. He also
refused claim 2, which is directed to a method of designing
a spray nozzle, for lack of patentable subject matter over
the art cited and common knowledge, and for being outside the
ambit of subject matter patentable under Section 2 of the Patent
Act.
The application relates to spray nozzles and the method of
designing the nozzle for the distribution of fluids, such as
liquids, gases and other sprayable materials, into a cone-shaped
spray of very fine droplets that are discharged in a uniform
pattern. The "abstract of the disclosure" submitted by the
applicant reads:
A logarithmic spiral flow nozzle for spraying fluids
in which concentric alignment is achieved between the
axis of the swirl chamber body and the outlet orifice.
Further, constructions and methods of design of
logarithmic spiral flow type nozzles are disclosed
having ratios of nozzle parameters held within certain
ranges which enable such nozzles to be constructed
with a considerable degree of predictability of spray
performance and by which the patternation index of
the nozzles can be described and predicted.
In the Final Action the Examiner stated (in part):
The rejection of all claims is maintained and the
reasons for such rejection are set out below.
References Re-Applied:
British Patent:
760,972 Nov. 7, 1956 Breinl et al
United States Patent:
2,904,263 Sept. 15, 1959 Cl. 234-494 Tate et al
Claim 1 is rejected as failing to define patentable subject
matter in view of each of the cited references taken singly.
Each reference shows the structure recited in the claim.
The structure disclosed in each patent has an actual
weight flow rate of the fluid, a spray cone angle, a
nozzle inlet area and a nozzle outlet area. The two
former variables are related to the ratio X of the two
latter variables by the mathematical formulae recited
in claim 1. There is no new spray nozzle recited in
claim 1 nor is there any unexpected result inherent in the
nozzle recited and consequently there is no patentable
subject matter recited in claim 1.
Claim 2 is rejected as failing to define patentable subject
matter in view of the cited patents and common knowledge and
as being outside the ambit of Section 2 of the Patent Act.
The structure recited is known as shown by each cited
reference. The structure disclosed in each cited patent
has an actual flow rate and a spray cone angle related
to the ratio X of the swirl chamber inlet area to
nozzle outlet area. The method of determining parameters
for a spray nozzle is simply the well known scientific
method comprising experimentation with actual or model
units, measurements of interesting variables, and finally
determination of sought-after relationships from resulting
data. The step of operating a plurality of nozzles having
different parameters, at different fluid inlet pressures
is analogous to testing fans, pumps, and other mechanical
or hydraulic elements and is not unobvious. The step of
measuring the actual flow rate and the spray cone angle
is known since applicant admits that the "....two criteria
are usually specified by the purchaser for whom the design
is being made". The production of equations is a well
known scientific step. Also the method recited in claim
2 is considered to be a non-manufacturing method since
it merely provides statistics. Since the method results
in the provision of statistics and not in any new nozzle
and since the method does not treat a physical object to
alter the object in any manner, it resides outside the
ambit of Section 2 of the Patent Act. Additionally the
subject matter is directed to the exercising of professional
skill and resides in the ambit of professional skill and
outside the ambit of Section 2 of the Patent Act.
The applicant in his response dated August 28, 1973 to the
Final Action stated (in part):
Applicant strongly contends that the inventor in the
present application, Dr. Polnauer, was the first to
recognize that the ratio
(see formula 1)
must be considered when designing a nozzle for the two
given parameters of flow rate (W act) and spray cone
angle (2.PSI.). Prior to him, for example, it was the
practice to change the spray cone angle merely by
changing D or (orific diameter). However, if D or
alone was changed the flow rate would also change.
In a typical practical case, it is desired to provide
a series of nozzles with different cone angles, all
of which operate at the same flow rate. This cannot
readily be accomplished without the recognition of the
interaction of the parameters that make up the ratio (X).
...
Applicant believes that the recognition that the single
inlet logarithmic spiral flow is governed by the area
ratio (X), is unique and constitutes a basic invention
which cannot be derived from systematic experimentation.
On the contrary, the whole experimentation is based on
this recognition.
Furthermore, the method of selecting the appropriate
ratio
(see formula 2)
for a given 2 .PSI. and W act is also unique and a part of
this invention. For example, as seen from the charts,
if D or is increased, the ratio (X) decreases and spray
cone angle 2 .PSI. increased. But at the same time, the
coefficient of discharge K decreases with an increased
D or and both 2 .PSI. and W act cannot be maintained. A
change in BH is required to restore 2 .PSI. and W act.
Similarly if it becomes necessary to change 2 .PSI. alone,
but maintain W act,the interactive function of the
area ratio must be utilized.
Therefore, Dr. Polnauer's contribution was the recognition
of the interplay between the parameters B, H and D or of
the equation. That is, to design a nozzle for a given
2 .PSI. and W act the parameters of both the numerator and the
denominator of the equation must be selected.
With respect to the rejection of claim 2 under Section 2
of the Patent Act applicant again cannot agree with the
Examiner. The results achieved by practicing the method
claimed produce a beneficial result which is certainly
of a commercial or economic value and is related to a
form of manufacture. The results of the method permit
the product of claim 1 to be properly manufactured.
Practicing the method of claim 2 will lead to a new
nozzle, namely that of claim 1.
The question to be decided is (a) whether amended claim 1,
which is directed to a spray nozzle, defines patentable
subject matter over the art cited" and (b) whether amended
claim 2, which is directed to a method of designing a spray
nozzle, defines patentable subject matter over the art
cited and common general knowledge, and comes within the
scope of subject matter patentable under Section 2 of the
Patent Act. Amended claim 2 reads:
The method of designing a spray nozzle having a specified
actual flow rate (W act), and a specified cone angle (2.PSI.),
said spray nozzle being of the type having body means formed
with an inlet passage for receiving the fluid to be sprayed
and a bore, swirl chamber means having a portion which is
in the shape of an arc of a curve and an inlet opening,
said swirl chamber means also having an inlet means for
communication between said bore and said inlet opening
of said swirl chamber, said inlet means having a portion
which is generally tangential to a portion of an arc of
a curve of the swirl chamber at said inlet opening and
orifice means having an outlet in communication with said
swirl chamber, said nozzle when operating also having an
actual flow rate (W act) and a spray cone angle (2 .PSI.) in
degrees which are both interrelated to the ratio (X) of
the swirl chamber inlet area (B. H) to nozzle outlet area
(see formula 1) where
B is the width of the tangential inlet portion of the
inlet close to said opening thereof into the swirl chamber,
D is the diameter of orifice means outlet,
H is the height of the swirl chamber,
comprising the steps of operating a plurality of nozzles
having different D, B and H parameters at different inlet
fluid pressures which produce different actual pressure
drops through the corresponding different nozzles,
measuring the actual flow rate (W act) of each of the
nozzles operated at the different pressures to determine
the respective nozzle discharge coefficient at the
different pressures,
measuring the spray cone angles (2 .PSI.) of the different
nozzles at the different pressures,
producing from the measurements made the functions f1,
f2, f3 and f4 of the following equations:
(1) K ref = f1 (X)
(2) C p = f2 (.DELTA.P)
(3) 2 .PSI.ref = f3 (X)
(4) C2.PSI. = f4 (.DELTA.P)
ar1 selecting as per at least equations (1) and (3) the
parameters of both the nozzle inlet area and the nozzle
outlet area to obtain the specified actual weight flow rate
and the specified cone angle,
.DELTA.P is the actual pressure drop of the nozzle,
K ref is the nozzle discharge coefficient at a reference
pressure drop,
C p is a correction factor to relate the nozzle discharge
coefficient at the reference pressure drop (K ref) to the
discharge coefficient at a particular pressure drop,
2.PSI.ref is the spray cone angle at the reference pressure
drop and,
C2.PSI. is a correction factor relating the nozzle spray cone
angle at the reference pressure drop to any pressure drop.
Claim 1 relates to a spray nozzle when produced in accordance with
the equations as set forth in claim 2.
The first determination is the scope and content of the prior
art and what is considered as common knowledge.
The applicant stated in his disclosure that "spray nozzles of
the type using a logarithmic or other spiral flow for the fluid,
are known in the art." He then went on to discuss British
Patent 760,972 which was applied by the examiner in the Final
Action. This patent relates to a nozzle comprising a body formed
with an inlet passage, a swirl chamber having a portion in the
shape of an arc, a tangential inlet opening and an orifice having
an outlet in communication with the swirl chamber. Claim 1 of
this reference reads:
a spray nozzle comprising a housing having a circulation
chamber confined by end members at least one of which his
an axial outlet, and by a peripheral wall having a
quadrangular tangential inlet the height of which is
substantially equal to the height of the peripheral wall,
said inlet having in the region of the opening into the
chamber a maximum width not larger than 2/9 of the largest
radius of the circulation chamber, the height of said
chamber increasing substantially from the region of the
peripheral wall towards the rim of the axial outlet in
such a way that the streamline angle remains substantially
constant from the inlet to the outlet or outlets of the
circulation chamber, i.e. the liquid flows in substantially
logarithmic spiral streamlines from the inlet to the outlet.
The Tate reference (U. S. 2,904,263) relates to a spray nozzle which
has an actual weight flow rate of fluid - a spray cone angle, a
nozzle inlet area and a nozzle outlet area. The two former
variables are related to the "area ratio X" of the two latter
variables by the parameters recited in the instant claims.
Of interest in the determination of this case is the rationale
of the court in the British case of Lips' Application 1959
R.P.C. 35 in which the only novelty found in a claim to an
article (Ships' Screw Propellers) was the mental process, and
not by particularizing physical steps, was considered not to
be a manner of manufacture. At page 37 Lloyd-Jacob J. says:
"It is not of course a circumstance fatal to the grant of a
patent that a manufactured article cannot be physically
distinguished from previously made similar articles. Indeed it
may well be that an article made by say a less costly process
of manufacture may be so devised as to simulate as closely as
possible a known similar article made by a more costly process.
It is common for a specification to include such a claim as
'A ... made by the process according to claims ...' But in
such a case the process must to be allowable particularise
'physical'steps which constitute a manner of manufacture, and
there is thus a test for determining whether or not the 'article'
claim is infringed. That test is -- was an allegedly infringed
article (physically indistinguishable) made by the process of
manufacture referred to in the hypothetical prior claim? No
such test is applicable in the present case. Once it is decided
that the propeller forming the subject of the Applicant's claim 1
is not distinguished (only dimensional distinctions are here
involved) from other propellers,it seems that the only novelty
allegeable in the claim is the mental process by which the
propeller blade thicknesses at different radial positions are
determined. This clearly cannot be said to be manufacture within
the meaning of the Act. In my opinion, having regard to my finding
that the propeller claimed in claim 1 is distinguished only by the
process of calculation by which its profile is determined, the claim
cannot be regarded as for an invention within the meaning of the Act."
It is observed, however, from reviewing the above case that the
parameters used were known parameters, whereas in the present
application the applicant has argued that he is using new
parameters, or at least different ratios of parameters. We
submit, however, that this is just a different route for
calculating the same end.
Turning now to a consideration of the subject matter of the
claims, as previously mentioned Claim 1 in effect relates to a
nozzle where the parameters of the nozzle are selected by the
equations of claim 2.
The applicant agrees that "both references appear to illustrate
structures very similar to that of claim 1. However, claim 1
clearly specifies a spray nozzle which must be constructed within
the limits imposed by the mathematical relationships defined
within that claim." The applicant goes on to state that "these
mathematical relationships obviously define the nozzle in more
restricted terms than is disclosed in either of the references."
It is well known, however, to determine parameters of any device
by experimentation with actual or model units, by measuring the
variables in question, and then to ascertain the physical
relationship from such data. Unless, however, inventive
experimentation (some unexpected result) is involved it is not
patentable subject matter. The steps of operating a plurality
of nozzles having different physical parameters at different
fluid inlet pressures is analogous to testing fans, pumps, etc.
The step of measuring the actual flow rate and the spray cone
angle is known, since the applicant admits that the "two
criteria are usually specified by the purchaser for whom the
design is being made." The step of formulating equations from
experimental data is also well known and we consider it a "mental
process" only.
It is not of course a circumstance fatal to the grant of a patent
that a new manufactured article cannot be distinguished from
previously made articles by physically defined characteristics,
provided it can be distinguished in some manner,for in some
instances an article could be claimed by the process of making,
but in such a case the process must, to be allowable, particularise
"novel physical" steps. In our view, however, the nozzle of claim 1
is distinguished only by the process of calculations by which its
profile is determined. This may also be reconciled to the
circumstances in which the advance in the art as claimed, is
purely mental, as that considered in the British case of Lips'
Application, supra.
Of interest and showing a similar approach in designing violins is
"C. M. Hutchins, 'The Physics of Violins,' Scientific American,
November, 1962, pp. 78-93," which indicates that the idea of formulating
sets of physical empirical rules for making musical instruments was
known at least in 1962, if not earlier. In consequence it would
appear that the adoptation of that principle to nozzle making might
well be obvious.
The examiner also raised an objection to claim 2 under Section 2
of the Patent Act "since the method does not treat a physical
object to alter the object in any manner." Section 2 of the Patent
Act reads in part:
"Invention" means any new and useful art, process machine,
manufacture or composition of matter, or any new and useful
improvement in any art, process, machine, manufacture or
composition of matter.
The question of whether a subject matter is an "art" or a "process"
was considered in Tennessee Eastman v The Commissioner of Patents
(1970) 62 C.P.R. 117 at 128. In that case "art", "process" and
"method" were viewed as one and the same thing, and in any event
it was settled that "art" may include a method or process, citing
Refrigerating Equipment Limited v Waltham Systems Incorporated
(1930) Ex.C.R. 154 at 166.
An "art", within the meaning of patent law, must accomplish some
change in the character or condition of material objects. When
the practice of the alleged art will not produce any physical effect,
but merely involves the carrying out of a plan or theory of action
without the production of any physical results proceeding directly
from the operation of the theory or plan itself, it is not an art
within the meaning of patent law. In short, it may be said that
an "art" is the use of means to produce a result.
That the process under consideration "fails" within the meaning of
"an art" is a matter of fact for the process merely consists of:
operating a plurality of nozzles having different physical parameters,
measuring the actual flow rate at different pressures, measuring
the spray cone angle at different pressures, producing equations
from the measurements made and then selecting from the equations the
parameters of both the nozzle inlet area and the nozzle outlet area
to obtain the specified actual weight flow rate and the specified
cone angle. There is no "use of means " to produce a result.
The applicant argues "that the single inlet logarithmic spiral flow
is governed by the area ratio, is unique, and constitutes a basic
invention which cannot be derived from systematic experimentation."
This, however, appears to be in the nature of a scientific principle,
which in itself is not patentable. On the other hand a practical
application of "physical means" giving effect to a new principle
might be patentable.
The Board is satisfied that the claims on file lack a patentable
advance in the art, and therefore recommends that the decision of
the examiner to refuse the claims be affirmed. Furthermore, the
proposed amended claims do not overcome the objections made in
the Final Action.
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 claims on file or the proposed claims.
The applicant has six months within which to appeal this decision
under the provision of Section 44 of the Patent Act.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Signed and dated in
Hull, Quebec this 24th.
day of July, 1974.
Agent for Applicant
Alex. E. MacRae & Co.,
Ottawa, Ontario.