COMMISSIONER'S DECISION
SECTION 43: Question of Obviousness Irrelevant.
The question under Section 43 is not that the subject matter
lacks inventive ingenuity in view of the reference as in the
Final Action; but whether the invention as claimed is
described in the reference. While the reference and the
application utilize the same principles, the reference does
not describe the invention of the means used by the applicant
to accomplish the result.
FINAL ACTION: Reversed.
____________________
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated August 10, 1973
on application 007,928 (Class 114-47). This application was filed
on May 20, 1971 in the name of George E. Mott and John T. Loggins
and refers to a "Method For Installing A Deep Water Anchor".
Messrs. R. Smart and I. Mackinson represented the applicant at the
Hearing conducted by the Patent Appeal Board on September 11, 1974.
Briefly, the invention relates to a method for the controlled lower-
ing and installation of an anchor which includes an open ended
evacuable chamber at the lower end. As the lower end of the anchor
engages the ocean floor the center chamber is progressively evacuated,
using a remotely disposed pump, by removing flowable materials from
said center chamber. The reduced pressure thus created causes the
anchor to be urged into the substratum to a desired depth and disposition.
In the prosecution terminated by the Final Action the examiner refused
the claims on the ground of lack of inventive ingenuity over United
States Patent 3,263,641, dated August 2, 1966, to Stimson.
It is observed that this application is a divisional of application
007,928 filed on December 18, 1967 with a priority of December 19, 1966.
The Stimson reference is a patent which issued less than two years
before the effective filing date of this application, therefore,
Section 43 of the Patent Act applies.
In the Final Action the examiner stated (in part):
In brief, this applicant describes and claims a method
of imbedding a pile type anchor into a penetrable bottom
utilizing the mass of the device and also using a differ-
ence of hydrostatic water pressure to help further imbed
the anchor to hold it in place.
Such a method is taught by Stimson while the other refer-
ences show that it is Common Knowledge to evacuate the
space between the anchor's top plate and the sea bottom
to create a vacuum to assist in holding the anchor in
position. The point at issue is whether the claimed method
was, before the filing of this application, invented by
Stimson, and substantially described in his U.S. Patent.
This is determined by comparing the claims to the teaching
of the reference teachings. Thus it is noted that claim 1
recites an anchor including a generally elongated cylindrical
body (10), with fluid tight walls closed at the top (13)
and open at the bottom (29), the bottom having a sharp edge,
and means (17) communicating with the cylindrical cavity,
which cavity extends a goodly distance from the open end to
a weighted member (12) located at the closed end of the body (10).
Stimson's method of operating his anchor coincides with the
claimed steps; that is to say he lowers his anchor vertically
so that the open end penetrates into the bottom a sufficient
distance to seal the open end, and then he partially
evacuates the cylindrical body by means of pipe 17 and
control valve 18 as described on page 3, lines 1 to 15 of
Stimson so that water pressure helps hold the anchor. The
fluid pumping means is not taught by the reference, however it
has been considered that the pumping of mud and flowable fluids
from the interior is but a logical method of increasing the
hydrostatic pressure on the anchor over that obtained by partially
evacuating body 10. This is in a sense analogous to creating
a greater vacuum in a container using known improved apparatus.
The art indicating the Common Knowledge also teaches the
idea of increasing the hydrostatic pressure by evacuating the
area of the anchor above the sea bottom. Actually Stimson
creates a greater evacuating capacity inside the body (10) in
the apparatus disclosed in Figure 7 of the drawings by increasing
the number of evacuating chambers (38, 39, 40) communicating
with the body. These chambers communicate with the body (10)
progressively as the bottom rises therein and in turn contacts
the valve feet (38C, 39C, 40C) which are disposed at varying
depths inside the body (10) (see pages 3 and 4 lines 52 to 53 of
Stimson's disclosure). Thus no inventive ingenuity is involved
in merely increasing the degree of evacuation of the chamber over
the sea bottom, thereby increasing the amount of penetration of
the anchor therein.
The applicant in his response dated November 7, 1973 to the
Final Action stated (in part):
The Examiner argues at length that it is proper to reject
claims as obvious over references applied under Section
43 and this is the sole issue between the Examiner and
applicants.
It is believed that the rejection is improper, being
contrary to office practice and contrary to the provisions
of the Section.
It is submitted that this view is supported by the Commissioner's
decision in application Serial No. 975,918, as published in
the Patent Office record in October 2, 1973. In particular,
reference should be made to the second from last paragraph
of the above decision, this paragraph being reproduced
below:
"Therefore I have concluded from the above that
the reference to Hoyt does not describe the in-
vention as claimed in this application; thus,
the provisions of Section 43 do not apply and
this reference does not, in itself, prevent
applicant from obtaining a patent for the sub-
ject matter claimed."
It is felt that the above decision clearly supports applicant's
proposition that a citation may not be applied under Section 43
if it does not describe the invention claimed in an application.
The distinctions between the claims of this application and the
patent to Stimson have already been set forth and need not be
reproduced here.
The Stimson reference relates to anchoring structures suitable for
maintaining drilling equipment in a fixed relation to the bottom of
a body of water. A description of the reference, line 8 column 2,
page 1 reads:
Briefly, the present invention provides a method and an
anchoring structure which includes one or more hollow
fluid-tight compartments having communicating means
with an open bottom compartment immediately there-
below with valve means to control the flow of fluid from
the open bottom compartment to the one or more closed
fluid-tight compartments and other means providing
communication between each closed compartment and
the exterior. The anchor is provided with supporting
means to lower the anchoring structure and the bottom
edge of the bottom compartment sinks into the bottom
of the ocean or other body of water providing a fluid-
tight seal and thereafter the valve or other fluid
control means provides access for the high pressure in
the fluid in the open bottom compartment and one of
the closed fluid-tight compartments, thereby reducing
the pressure in the open bottom compartment resulting
in the hydrostatic pressure at the bottom of the ocean
pressing the anchoring structure securely against the,
ocean bottom. When it is desired to release the anchor-
ing structure from the bottom, the valve means between
the closed compartment communicating with the open
bottom compartment is operated by remote control to
equalize the pressure within the anchor structure and
the pressure of the water in the bottom of the ocean,
thereby making it possible to remove the anchor by a
relatively small force corresponding to the weight of
the materials of which the anchor structure is composed.
Claim 9 of this reference reads:
A method of securing an anchoring structure to the
bottom of a body of liquid comprising providing a
hollow fluid-tight structure with a plurality of
closed fluid-tight compartments and an open bottom
fluid-tight compartment with sufficient ballast to
sink in the body of liquid when the compartments are
empty, sinking the hollow structure with its open
bottom compartment in fluid-tight association with
the bottom of the body of liquid providing thereby
a closed fluid-tight compartment of said open bottom
compartment, providing communication between said open
bottom compartment and at least one of said
fluid-tight compartments whereby part of the fluid
in the closed fluid-tight open bottom compartment
passes into said at least one fluid-tight compartment
so the pressure within said communicating closed
fluid-tight open bottom compartment and said at least
one compartment becomes less than the liquid pressure
at the bottom of the body of liquid whereby the
column of liquid above said anchor structure will
apply a holding force on said anchor equal to the
difference between the pressure in said closed fluid-
tight compartment and said liquid pressure at the bottom
of said body of liquid.
Claim 1 of the application reads:
Method for imbedding a pile type anchor into a penetrable
substratum comprising mud and flowable fluids at the floor
of a water mass, said anchor including a generally elongated
cylindrical body formed with fluid tight walls and having
opposed closed and open ends, said anchor being communicated
with fluid pumping means disposed remotely therefrom, a
weighted member carried at said body closed end, means
forming an internal cavity extending substantially the
length of said elongated body, a relatively thin edge at
the body open end defining an inlet to said means forming
said cavity, and means communicated with said internal
cavity for controllably regulating the character thereof,
which method comprises the steps of;
(a) supportably lowering said anchor through said
water mass, said elongated body being disposed in
a substantially vertical attitude with said edge
in the lowermost position;
(b) penetrating the surface of said substratum
with said thin edge to provide a peripheral,
partial seal therewith, and to form an evacuable
chamber within said means forming said cavity;
(c) at least partially evacuating said means
forming said cavity to establish a pressure
differential between said cavity and said
water mass, by pumping mud and flowable fluids
from said cavity through said remotely disposed
pumping means as said elongated cylindrical body
penetrates further into said substratum, to be
completely imbedded therein, whereby, external
pressure exerted against the said body closed
end will controllably urge the anchor further
into said substratum.
The claims were rejected on the ground that the claimed subject
matter lacks "inventive ingenuity" in view of the Stimson
'reference. However, since this reference is governed by Section
43 of the Patent Act, the question is not one of "lack of
inventive ingenuity" or "obviousness" but whether the invention
claimed in the application is described in the Stimson reference.
Section 43 reads (in part):
Whenever it appears to the Commissioner that the invention
to which an application relates has been, before the filing
of the application, described in a patent granted in Canada
or any other country, and such application was filed within
two years after the date on Which such patent was so granted
and the Commissioner entertains doubts whether the patentee
of such invention is, as between him and the applicant, the
first inventor....(emphasis added)
Section 43, in our view, is intended to apply to the
situation in which there is substantial identity between the
subject matter claimed in the application and what has been
described in the patent specification. In other words Sec-
lion 43 does not apply unless the citation anticipates the
claims of the application.
The state of the law on anticipation is well established. In
0'Cedar v Mallory (1965) Ex.C.R. 299 at 313 Thorson P. stated:
The requirements that must be met before an invention
should be held to have been anticipated by a prior
patent or other publication have been discussed in
many cases. In The King v. Uhlemann Optical Co. (1950)
Ex. C.R. 142 at 157) I summarized the effect of the
leading decisions on the suject and made the following
statement:
The information as to the alleged invention given
by the prior publication must, for the purposes
of practical utility, be equal to that given by
the subsequent patent. Whatever is essential to
the invention or necessary or material for its
practical working and real utility must be found
substantially in the prior publication. It is
not enough to prove that an apparatus described
in it could have been used to produce a particular
result. Nor is it sufficient to show that it contained
suggestions which, taken with other suggestions,
might be shown to foreshadow the invention or
important steps in it. There must be more than
the nucleus of an idea which, in the light of
subsequent experience, could be looked on as the
beginning of a new development. The whole invention
must be shown to have been published with all the
directions necessary to instruct the public how
to put it into practice. It must be so presented
to the public that no subsequent person could claim
it as his own.
See also the Supreme Court in Lightening Fastener v Colonial
Fastener (1935) SCR 363 and 377, where the test was given as:
"...does the anticipating reference give the same knowledge as
the specification of the invention itself."
In order to prevent further delay and costly prosecution the
applicant was contacted to see if he was willing to come before
the Patent Appeal Board and argue the case on the ground that
"the claimed subject matter is not described in the Stimson refer-
ence" (as opposed to lacking invention over the reference) as
governed by Section 43 of the Patent Act. To this he agreed,
and a Hearing was held on September 11, 1974.
Considerable discussion took place at the Hearing with regard
to the clarity of claim 1, particularly to part (c) which reads:
... at least partially evacuating said means forming
said cavity to establish a pressure differential
between said cavity and said water mass, by pumping
mud and flowable fluids from said cavity through
said remotely disposed pumping means as said
elongated cylindrical body penetrates further into
said substratum, to be completely embedded therein
At the Hearing the applicant indicated his willingness to make cer-
tain amendments to claim 1, and the applicant subsequently submitted
an amendment to the Board, dated September 24, 1974, which reads:
With reference to the matter discussed in the Patent
Appeal Board hearing of September 11, 1974, and to
the expressed willingness of the agents for the
applicant to amend the claims before the Office to
avoid any obscurities considered to exist in the claim
language, there is attached, in duplicate, a new set
of claims amended along the lines discussed in a
recent telephone conversation between the Vice-Chairman
of the Appeal Board and a representative of applicant's
Canadian agents. It is hoped that these claims will
be found acceptable.
Proposed new claim 1 reads:
A method for imbedding a pile type anchor into a pene-
trable substratum comprising mud and flowable fluids
at the floor of a water mass, said anchor including a
generally elongated cylindrical body formed with fluid
tight walls and having opposed closed and open ends,
said anchor being communicated with fluid pumping means
disposed remotely and separately therefrom, a weighted
member carried at said body closed end, means forming
an internal cavity extending substantially the length
of said elongated body, a relatively thin edge at the
body open end defining an inlet to said means forming
said cavity, and means communicated with said internal
cavity for controllably regulating the character there-
of, which method comprises the steps of;
a) supportably lowering said anchor through
said water mass, said elongated body being
disposed in a substantially vertical attitude
with said edge in the lowermost position;
b) penetrating the surface of said substratum
with said thin edge to provide a peripheral,
partial seal therewith, and to form an
evacuable chamber within said means forming
said cavity;
c) at least partially evacuating said means form-
ing said cavity and said water mass, by pumping
flowable fluids from said cavity to a location
remote from the anchor through said remotely and
separately disposed pumping means as said
elongated cylindrical body penetrates further
into said substratum, to be completely embedded
therein, whereby, external pressure exerted
against the said body closed end will controllably
urge the anchor further into said substratum.
The question which must now be decided is whether the process
claimed in the proposed amendment is "described" in the Stimson
reference.
Proposed amended claim 1 states (part C): "... by pumping flowable
fluids from said cavity to a location remote from the anchor through
said remotely and separately disposed pumping means ...."
(underlining added). It may be observed that whatever pumping
action occurs in Stimson takes place within the anchor complex, and
is not "remotely and separately disposed therefrom." Also in
Stimson the fluids are not removed from the anchor complex, whereas,
in the present application the fluids are pumped to a location
remote from the anchor. Such features are therefore neither
described nor suggested in Stimson. In the Final Action the
examiner also acknowledged that "The fluid pumping means is not
taught by the reference ...." Both devices utilize the same
physical principles, but the means to accomplish the result differ.
In the opinion of the Board these differences are such that it
cannot be said Stimson has described the same invention as being
claimed here, and claim 1 therefore should be allowed. Vide:
O'Cedar v Mallory, supra.
It follows that claims 2 to 4, which depend on claim 1, are
also allowable, and for the same reasons.
Under these circumstances, therefore, the Board is satisfied
that the claims ought not to be refused on the Stimson reference,
which can only be applied under Section 43 of the Patent Act.
We recommend that the Final Action be withdrawn.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board
I concur with the findings of the Patent Appeal Board and withdraw
the Final Action. The proposed amendment is accepted, and the
application is returned to the examiner for resumption of
prosecution.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Hull, Quebec
this 2nd. day of
October, 1974.
Agent for Applicant
Smart & Biggar
Ottawa, Canada