COMMISSIONER'S DECISION
CLAIM REDUNDANCY-RULE 43 Product Uses of New Composition.
Claims for a new process and for the compositions produced by the
process allowed. Claims for the articles composed of the new
composition having alleged advantages over such articles previously
made of known materials, refused on the grounds inter alia of
redundancy (R. 43), ambiguity (S. 36), division (S. 38), and for
being "exhausted" combinations; traversing applicants argument that
such claims are necessary for adequate protection under R. 43,
unvitiated by invalidation of the composition claims pursuant to
proceedings permitted by S. 46, should the 'prima facie' novelty
of the composition but not its presently disclosed utility be found
to lack novelty.
FINAL ACTION: Affirmed.
********************
This decision deals with a request for review by the Commission-
er of Patents of an Examiner's Final Action on application 131,656
(Class 402-318). The application was filed on January 4, 1972
for Thomas H. Shepherd and Francis E. Gould and assigned to the
National Patent Development Corporation of Delaware. The invention
is for "Hydrophilic Polymers, Articles and Methods of Making Same."
At a Hearing held by the Patent Appeal Board to consider the
rejection Mr. Ian Brameld represented the applicant.
The application relates to new hydrophilic polymers and processes
for making them. The polymer is useful as a carrier for medically-
active substances and for natural or synthetic flavours. No objection
was taken to the first 12 claims, in which the new polymers and
processes were claimed. The subsequent claims 13 to 31, however, were
directed to various applications to which the new polymers may be put,
such as surgical sutures, lenses, windshield coatings, denture linings,
flavouring compositions and pharmaceutical agents, and were rejected.
In his response to the final action the applicant proposes to reduce
the number of claims from 31 to 23 by eliminating claims to some forms.
It is with such amendments in mind that the Board makes its recommendations.
The Board else has before it a companion application 131655, assign-
ed to the same applicant, which was considered at the same hearing.
It will be the subject of a separate recommendation, although it
raises essentially the same issues. In it the applicant has included
claims directed to such additional forms as intra-uterine devices,
blood vessel substitutes, heart valves, diaphragms, flavourings,
medicinal compositions, filters, lenses, boat hulls, and mouth guards.
Whatever conclusions are reached in one of these applications must
have a reciprocal effect upon the other, and should be made with that
consideration in mind.
In the prosecution terminated by the Final Action the examiner re-
fused claims 13 to 31 (cf proposed claims 13 to 21 and 23) as being
unnecessary for the protection of the composition, and redundant under
Section 43 of the Patent Rules.
The examiner gave the following reasons for rejection (as extracted
from the Final Action):
The rejection of claims 13-31 is maintained and the
reason for such rejection is that these claims are
unnecessary for the protection of the composition in
view of claims 1-12. Claims 13-31 are therefore re-
dundant under Rule 43 of the Patent Rules.
In paragraph 2 of (his response) applicant sought to
draw a distinction between claims 1-12, directed to
compositions, and claims 13-31, directed to commercial
uses of these compositions. No such distinction can
be drawn within the terms of the Patent Act.Indeed
it is a requirement for every claim that what is
being claimed has utility in trade and commerce. The
allowance of claims 1-12 will be predicated on, among
other considerations, utility. The importance of that
utility is a question of circumstance and does not
affect the patentability of these claims once utility is
established. The claims to the compositions (claims 1-12)
secure protection for use of the compositions. Therefore
it is not necessary under the Patent Act to seek to gain
further protection by more claims for "important commercial
uses."
With respect to the third paragraph of applicant's response
there is, a priori, a presumption of validity on issuance
of a patent. Proceedings after issue cannot be anticipated
by this office in advance of allowance of an application.
Therefore the argument presented by applicant that
claims 13-31 should be allowed on the ground that
claims 1-12 may in the future be found to be invalid
is not considered sufficient reason for allowing
claims 13-31.
The applicant in his response dated September 19, 1973 stated
(in-part):
It is applicants' position that all of the claims pre-
sented do possess the necessary utility to qualify for
patentability, and applicants' argument is not
primarily based on the possibility that claims to the
compositions, as opposed to the claims directed to certain
commercial uses of such compositions (i.e. claims directed
to compositions in certain commercially attractive
farms) might not be held to possess sufficient utility
to qualify for protection under the provisions of Section 2
of the Patent Act. There seems however to be some sort
of assumption on the part of the Examiner that the
claims to the "commercial uses" extend the score of the
monopoly, because in the last sentence of paragraph 3
of the action the Examiner refers to the applicant
seeking "to gain further protection by more claims for
'important commercial uses' ". In order to dispose of
this possibly preliminary point, applicants wish merely
to point out that the claims to "important commercial
uses" are in every case dependent upon preceding claims
and therefore directly or indirectly from the composition
claims which the Examiner considers allowable.
...
Regardless of the significance of this presumption of
validity, it has, for at least the major part of this century,
been the practice for patent draftsmen to include a
number of claims of decreasing scope in patent applications
and it may also be pointed out that it has been the practice
of the Patent Office to allow such claims. If any great
reliance could be placed on a presumption of validity,
it would presumably apply just as much to the broad claims as
to the narrow, and an applicant who has a valid broad
claim hardly needs the protection of a narrower dependent
claim. Thus the Examiner's argument would lead to the
conclusion that the most one would need in an application
such as the present one is a single broad composition
claim and a single broad process or method claim. Both
the drafting and issue of patents with such limited claims
are the exception rather than the rule, not only in this
country but also in other countries having comparable patent
legislation and a comparable system of jurisprudence.
Thus a series of graduated claims of reducing scope is the
normal practice not only in this country but also in the
United States and Great Britain. The reasons for putting
in such a graduated series of claims are clear: an
applicant fears that for one reason or another his broader
claims may at a later date be found to be invalid and he
argues that the chances of a narrower claim directed
to preferred embodiments of his invention being held
invalid are generally a good deal less than the chances of
the broader claims being held invalid. An applicant
does not ask that the Patent Office consider all these
matters in detail but only to accept the fact that, un-
fortunately for the patentee, patents do sometimes become
involved in litigation and claims in such circumstances often
are held invalid.
...
Apart from this however, it is easy to conceive of situ-
ations in which a composition of matter has previously
become known for a totally difference purpose, in which
circumstances a later claim to a particular use such as
a particular device made from the polymer, might well be
not only novel but also unobvious. Applicants feel entitled
to insert a reasonable number of claims to protect them-
selves against such a contingency, and believe that it was
not the intention of Rule 43 to deny an applicant a reason-
able number of claims which differ in scope from each other
and which might be necessary for the adequate protection
of the invention. Rather applicants believe that Rule 43 is
intended to prevent an applicant putting forward claims which,
while differing slightly in wording, are nevertheless of
essentially the same scope, a practice which was at one time
not uncommon in specifications originating from the United
States. It is believed that the claims retained in the
present application are all of differing scope and should
not properly be rejected on the provisions of Rule 43.
This rejection raises the important issue of how far an applicant
may go in claiming to protect his invention. Specifically we are
concerned here with whether an applicant having invented a new process to
prepare a new composition of matter, and having claimed that process
and composition, may also advance claims which bring in various
devices in which the invention may be utilized. Mr. Brameld has
urged that the applicant is entitled to a number of claims of de-
creasing scope. With this there is no disagreement. The examiner,
for example, has made no objection to 12 claims in which the process
and polymer are defined in varying scope. It was also urged that
the applicant is entitled to a "reasonable number" of claims to
protect himself against the contingency that the composition of
natter claims are subsequently found to be known for a different
purpose, "in which circumstance a later claim to a particular device
made from the polymer, might well be not only novel but also un-
obvious." In his view Rule 43 was not intended to prevent such
claims, but only claims which while differing slightly in wording
are nevertheless of essentially the some scope.
The examiner's rejection is based principally upon Section 43
of the Patent Rules, which reads:
No more claims shall be allowed than are necessary
adequately to protect the invention disclosed, and
if two or more claims differ so slightly that the
several claims could not be allowed in separate
patents the applicant may be required to elect
which of such claims he desires to have allowed and
to cancel the others.
Undue multiplicity of claims in an application was discussed by
the Exchequer Court in Schweyer Electric & Mfg. Co. New York
Central Railroad Co.(1934) Ex. C.R. At page 35 Maclean J. stated:
I can hardly refrain also from commenting upon the
practice which has unfortunately grown up in Canada of
inserting in the patent specification an unnecessary num-
ber of claims, and this is exemplified in the fact that the
claims in patent in suit number one hundred and twenty-
one, which I am quite satisfied was altogether un-
necessary in order to state what it was Schweyer claimed
to have invented, and to state the claims in such numbers
was not, in my opinion, to state them distinctly as
required by the Patent Act. But I have not Schweyer
particularly in mind. The practice of multiplying claims
unnecessarily is becoming too common in this jurisdiction
and some way should be found of preventing this.. If
one has really invented something, he should know what it
is, and it should not take many words to state in clear
language what it is he claims to have invented. Terrell
in his excellent work on Patents, discussing this very
matter, remarks:
It must be remembered that the object of the claim is
to give a perfectly clear statement of the invention
claimed. Of late years a superstition has arisen that
a patent is more valid and has a greater hold over in-
fringement if every possible permutation and combin-
ation of the elements entering into the invention is
separately claimed...such prolixity does not help a
Court which, whether in considering subject-matter,
novelty or infringement, invariably seeks to obtain an
answer to the broad question, "What has this man invented?"
That, I think, would be a perfectly fair and just comment
to make in respect of the claims in many patents issued in
Canada, and it is quite correct to say that it is a pure
superstition to think that a patent is more valid because
every possible permutation and combination of the
elements entering into the invention is separately claimed.
In England, this point came before both law officers of
the Crown on the interpretation of rule 4 of the English
Patent Rules, 1905 (rule 14, 1920), in the case of
J.S.Bancroft's Application (1905) 23 R.P.C.,. p, 89.
The English Patent Rule requires that the claims be stated
in clear and distinct terms. The Attorney General pointed
out that certain kinds of inventions might be such as to
justify a large number of claims. He stated:
So long as the statement of each claim is in itself
clear and succinct, and so long as there is an ab-
sence of repetition in the separate claims, we do
not think that there is necessarily any infringement
of this rule... But in the present case we think that
the decision of the Chief Examiner was right ... An
attempt is made to deal with every possible contingency
....
On page 36 Maclean J. continued:
... If the provisions of the Patent Act are not in terms
sufficiently clear to enable the Patent Office to prevent
a useless and confusing multiplicity of claims, I
would very respectfully suggest to the Commissioner of
Patents that he urge that the Patent Act be so amended as
to bestow ample power upon the Patent Office to curtail
the abuse to which I refer...
In our view it was in response to such concerns and to prevent such
abuses that Section 43 of the Patent Rules came into existence.
More recently Jacket, P. has addressed himself to multiple claim-
ing in Hercules Inc. v Diamond Shamrock (1970) Ex. C.R. 574. We
quote from page 596:
Having thus described his "invention" or discovery in
words that would enable his colleagues in his particular
branch of learning or of the art to make use of it, the
inventor is faced with the requirement in S. 36(2) that
he shall state in "explicit" terms the things or combinations
in which he claims an exclusive property.This is the
point at which he must put forward the legal definition of
the monopoly that he is seeking. If he frames his claim so
that it does not cover the whole of what he discovered,
others will be able to take advantage of his disclosure without
infringing the monopoly that he seeks. This problem cer-
tainly puts an inventor and his advisors in a position where
they must be very careful to establish precisely what he
did and did not invent, or it would do so if the permissiveness
of S. 38 did not allow the Commissioner an implied discretion
to permit inventors to "claim" in effect in the alternative.
With the Commissioner's acquiescence, what happens, in at least
some cases, is that in the first instance, a claim is
made in the widest terms possible for the subject matter
described in the specification and then, by what seems to
be an infinite variety of changes in the terms of the
first claim, the inventor makes additional claims by which
the invention is variously described by adding additional
limiting factors not included in the initial claim.
In Ridell v Patrick Harrison & Co. Ltd. 1956-60 Ex. C.R. 213
at 253 the former president of the Exchequer Court stated:
Having made the invention he (the inventor) was entitled
to define it in the claims in such a way as to protect
himself in enjoyment of the monopoly of his invention.
He was in a sense, the master of his claims, within the
breadth of his invention, and entitled to draft them
"in words wide enough to secure the protection desired...."
However there are other decisions which suggest there are also limita-
tions upon how far an applicant may go in claiming. While the circum-
stances in which those limitations were applied do not necessarily
correspond to those before us here, such decisions do indicate what
principles should be followed.
In Rohm and Haas v. Commissioner of Patents, 1959 Ex. C.R. 153, for
example, Mr. Justice Cameron considered Rule 43 (at that time Rule 53).
In refusing certain process claims the court observed at p. 172:
In my opinion, also, there is no necessity under our Act
for granting a patent for claims such as claims 10 to 13.
A patentee is entitled to every use of which his invention
is susceptible. To the extent that the assignor of the
applicant has invented the compounds for which the patents
have been issued, the applicant has full protection for
such patents.
In Gilbert v Sandoz 64 CPR (1971) 14 at 35, Mr. Justice Thurlow
found certain claims(10 & 11) for pharmaceutical composition in-
valid "since no invention of pharmaceutical compositions was made,
as distinct from the invention of thioridazine itself which is fully
claimed in claims 1 to 9." In elaboration he held claims 10 & 11
invalid because "claims l to 9 represent the full extent of the pro-
tection to which the defendant is entitled in respect of that invention
and because in the context of all the claims they (10 & 11) tend
to go further than the protection to which the defendant is entitled,
as defined in Section 46 of the Patent Act, in respect of the invention
of thioridazine and to monopolize, independently of the other claims, composi-
tions containing thioridazine, and thus to restrict the use of thioridazine ~
particular way even by one into whose possession it may lawfully come
whether by express or implied license." The Supreme Court (8 C.P.R.
(2d) 1973, 210 at 212) did not disturb that finding.
In Hoffmann - La Roche v Commissioner of Patents 1954 Ex. C.R. 52 the
applicant wished to claim certain known aldehydes restricted to a new
process for their manufacture. The Court, in considering a submission that
"an invention may be claimed under different aspects" concluded (at p.58):
....a dependent product claim is not necessary to protect
the applicant's invention for he is entitled to the
same protection for his process without a process-dependent
product claim as he would get with one. He is entitled only
to protection for his process for that is all he invented.
Consequently the applicant falls within the ambit of
Rule 53 (now 43) of the Patent Rules [the rule was then quoted].
In my opinion, the Commissioner might well have justified his
decision under the first part of this Rule....
On appeal the Supreme Court agreed with the judgement of the President
of the Exchequer Court (1955 S.C.R. 414).
Reference may also be made to the findings of the Supreme Court in
Commissioner of Patents v. Farbwerke Hoechst, 1964 S.C.R. 49. In that case the
applicant had been granted a patent in a divisional application to a
process and product, and sought a further patent to the product diluted
with a carrier. After holding this to be impermissible because the
applicant was in this fashion attempting to obtain two patents for
exactly the same invention, the court added (at p.53):
Further, the respondent has already received patent protection
to the full extent allowed by law. Invention may be in a new,
useful and inventive process for producing a new medicinal
substance, and the respondent has already obtained patents for
such inventive processes and for the new product as produced by
such processes. The process claims and process dependent product
claims in those patents represent the full extent of the protection
to which the respondent is entitled. (emphasis added)
See also Sirdar Rubber v Wallington, XXII RPC (1905), 257 at 266, where.
we find:
Where the only invention is in the form of one part of
an article or machine, which part is separately claimed
as an invention, the scope of the Patent cannot be en-
larged by claiming that part in every combination in which
it can be used, however obvious.
It may also be asked whether the rejected claims relate to what is
generally known as an "exhausted combination", and as such should be
considered as failing to define the invention as required by Section
36(2).In Baldwin International Radio. Co.of Canada v Western Electric
Co. Incorporated (1934) SCR 94 at 104, Rinfret J. relied on the
following quotations from earlier British decisions:
The combination is the novelty, and to sufficiently
describe the combination is sufficient to describe the
novelty; but if the combination is not new, which is
the case first put by Lord Selborne in Moore v. Bennett
(1884) 1 R.P.C. 120, so that there cannot be a valid
patent for a combination, then even though the patentee
misdescribes it as a new combination which by hypothesis
it is not, the novelty must be in the subordinate integer.
Foxwell v. Bostock (1864) 4 DeG. J & S 208 then applies.
To describe it as a new combination is, in such a case, to
misdescribe it. The invention in such a case is the
improvement upon a particular part of an old combination,
and the part must be identified by the patentee.
and
...If, indeed, it were left open on the specification to
the patentee to claim, not merely the combination of all
the parts as a whole, but also certain subordinate or sub-
sidiary parts of the combination, on the ground that such
subordinate and subsidiary parts are new and material, as
it was held a patentee might do in Lister v. Leather (1858)
8 E1.& B1. 1004, than it might be unnecessary to see that
the patentee had carefully distinguished those subordinate
or subsidiary parts, and had not left it in dubio what
claim to parts, in addition to the claim for combination,
he meant to assert.
With respect to the invention now before us, it is well known to use
polymers and resins for denture linings, as lenses, to coat boat hulls,
as filters, for medicinal devices, and the like. The examiner has not
cited instances of such uses, but it is referred to, in part, on page 1
of the disclosure, where the prior art is discussed.
From the jurisprudence referred to above, from Rule 43, and from Section
36(2), which is the legislative progenitor of the Rule, it is apparent
that an applicant is entitled to a reasonable number of claims of
decreasing scope to define his invention. It is equally clear he
should not go beyond the invention, nor phrase the claims so as to
obscure the invention or introduce ambiguity in identifying the in-
vention. He may not extend the scope of his patent beyond his actual
invention.He may not multiply his claims by presenting alleged com-
binations which distinguish from the real invention only by including
elements which are old in the art, and perform no new function. He
may not include in the claims unnecessary old elements which might
mislead the public as to the true scope of the invention. His claims
must particularly point out and distinctly claim the invention.
While we do not consider that the number of claims in this case is
ipso facto excessive, we do believe that the claims which were refused
fail for the other reasons to which we have referred. In our view
claims 1-12 represent the type of variable claiming which the courts
have considered legitimate.
The applicant has urged us to permit claims to secondary subject matters
on the postulation that what is covered by his main claims may not be
inventive, in which event the secondary subject matters could be con-
sidered as separate inventions from the primary subject matter, and
afford him protection for such different inventions. If there is any
validity in such an assumption, there is separate invention between the
two groups of subject matter irrespective of whether the primary matter
is valid or not, and the secondary matter should be in independent
applications to satisfy Section 38. It is incumbent upon the applicant
to determine what is the invention he wishes to claim in this application,
and to restrict his claims to it. The logic of this view is
corroborated by a recent decision of the West German Supreme Court in
Ex parte Farbenfabriken Bayer, June 27, 1972, as reported in the
International Review of Industrial Property and Copyright Law, vol.. 4
at p. 419. It concluded that where an applicant claimed a new dye, the
process of making it, and the process of using it further claims to dyed
paper, printing pastes, inked pads, felt crayons, shoe polish, and ball
point pens containing the dye contravened the principle of unity of
invention.
We also consider that claims such as proposed claims 13, 14, 16, 18 and
others introduce needless ambiguity into what is being claimed. Claim
13 for example reads:
13. A hydrophilic polymer powder as claimed in claim 12
wherein the polymer includes a medicinally active
substance as a component thereof, coated on a surgical
suture.
The reader is left in some uncertainty as to whether the claim is for a
suture or for a hydrophilic powder. If only the powder is covered by
the claim it is redundant in view of claim 12 upon which it depends; it
merely indicates the environment in which the polymer of claim 12 is used.
Such claims do not distinctly specify the protection desired.We feel
they are open to the criticism voiced in Natural Colour Kinematograph v
Bioschemes 32 R.P.C. 256 at 266 against claims being drafted so as to
be very wide upon one interpretation so as to catch infringers within
their net, but open to narrower interpretations so as to limit them to
safe dimensions if attacked in court.
For the reasons indicated we recommend that the rejection of claims 13 to
31 (or 13 to 23 of the proposed claim) be confirmed.
Gordon A. Asher,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and refuse
claims 13 to 31, and proposed claims 13 to 23. The applicant has six
months within which to appeal this decision under the provisions of
Section 44 of the Patent Act.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Hull, Quebec
this 27th.day of
January, 1975.
Agent for Applicant
Smart & Biggar,
Ottawa, Ontario.