COMMISSIONER'S DECISION
UNOBVIOUSNESS: (on Reissue): Prior art Concerned with a Different
Problem.
The invention is for dies for short metal screws which overcome
the problem of blank misalignment at the start of the rolling
operation. The prior art was not concerned with the special
problems connected with short screw manufacture and did not
disclose special modifications, e.g. ratio of type to length,
adapted for that purpose.
FINAL, ACTION: Reversed.
************************
This decision deals with a request for review by the Commission-
er of Patents of the Examiner's Final Action dated August 20,
1973, on application 123,589 (Class 10-4) The application was
filed on September 24,1971,in the name of Roger W. Orlomoski
and is entitled "Thread Rolling Die With Stabilizing Portion."
The Patent Appeal Board conducted a Hearing on February 26, 1975
at which Mr.C.W. Hodson represented the applicant.
This application relates to thread rolling dies capable of pro-
ducing screws from blanks. They are particularly adapted to
making very short screws.
In the prosecution terminated by the Final Action the examiner
refused the application for lack of invention over the following
patent:
Japanese patent publication number 18,217 dated 1963
In the Final Action the examiner stated (in part):
The rejection of claims 1 through 3 as obvious and there-
fore lacking patentable subject matter in view of the cited
Japanese patent is maintained. It is held that the thread
rolling die disclosed in the said patent is substantially the
same as the die defined in the claims of this application. The
differences that do exist between the die as defined in the
claims and the die disclosed in the cited patent are dimensional
in nature. Such dimensional differences are held to be within
the scope of a person skilled in the art. It is to be noted
that the dimensions were added to the disclosure only in the
reissue application and included in the claim. This
again shows that such dimensional differences are merely
inferable for a person skilled in the art and therefore
not inventive. Furthermore, it is not acceptable to
measure drawings to arrive at dimensional interrelationships.
The die set forth in the Japanese patent must be seen as a
preferred embodiment open to various dimensional adaptations.
Applicant in the above letter and previous submissions has
argued that the Japanese patent shows no threads below
the head line at the beginning of the die as shown in fig-
ure 4 of the said patent. It is conceded that there is an
accidental showing, of threads in figure 5, section A-A'.
The accidental showing,however, are those threads below the
lowermost limit of threads. The threads shown between the
heel line and the lowermost limit in section A-A' of
figure 5 are proper. This is held to be sufficiently clear from
figure 4 where threads are shown between the heel line and
the lowermost limit of the threads. Section A-A' of
figure 6 shows the screw threaded all the way and this is
correct. The missing thread line (s) at section A-A'of
figure 4 is seen as a draftsman's omission.There is no valid
reason for supposing that there are no threads between the
heel line and the lowermost limit of threads at section A-A'
of the die as seen in figure 4.Each of figures 4,5 and 6
show that there are threads below the heel line in advance
of the escapement portion 9 which corresponds to applicant's
diagonal edge 4.
There may be some inconsistency between the drawings as to the
number and extent of the threads, but the fact that the threads
extend below the heel line and in advance of the escapement portion
9 is clear from each of the above figures.
Furthermore , in the disclosure, part 2, it is stated "in the front
end of the die plate, the shaft's (parallel portion) entire
thread is rolled", In part 7, it is stated "from the start of
this process at cross-section A-A' as shown in figure 4, shallow
thread-channels are press rolled into the parallel portion of the
screw shaft." The statement in the claims that the vertical grooved
surface A is substantially wider at that area in advance of the
diagonal edge 4 is therefore completely met by the Japanese patent.
In the above let er, applicant has argued that the thread rolling
die disclosed in the Japanese patent is incapable of making short
screws of the kind disclosed in this application. Such a view is
held to place too restrictive on interpretation on the die disclosed
in said patent. It is not difficult to see the die adapted to the
forming of short screws.All that is necessary would be to reduce
the number of threads above the heel line. It is held to be
obvious to a person skilled in the art that the number of threads
above the heel line (as well as below) is a matter of choice
and recognized as a known variable to produce a different length screws.
In his responses dated Jan. 17, 1971 and Feb 6, 1974 the applicant
stated (in part):
The Examiner has said that it would be obvious to a person
skilled in the art to reduce the number of threads above
the heel line to give the required number of threads in
the short screw. Applicant agrees, of course, that the number
of threads above the heel line always represents the number of
threads in the body of the screw above the point. But, the
prior art has no recognition of Applicant's step forward of
adding sufficient threads below the heel line so that the
total number of threads above and below the heel line at the
starting end of the die will produce stabilized rotation of
the blank which would not be possible through the sole use
of the threads above the heel line.
In further support of Applicant's position, the Examiner is
requested to consider the following: Applicant has never in-
tended to claim all dies which have a few threads below the
heel line at the starting end of the die. On the contrary
the claims are directed to those dies designed to make very
short screws. It is in the short screw field only that Applicant's
invention is of significance because this is the area in which
initial stabilization of the blank as it starts to roll between
the dies has heretofore been virtually impossible.
In the case of screws of other lengths, that is, anything
longer than short screws, extra threads below the heel line
are unnecessary because the number of threads above the heel line
are adequate to insure starting rotational stability.
The Japanese patent already referred to above teaches nothing
about the problem of lack of stability in rolling short screws.
In fact, it teaches nothing about the stability problem in any
length of screw. It is concerned only with dies of the self-
pointing type with means for cutting off the slug, all of which
has been conventional practice for many years as evidenced by
the Mau et al U.S.Patent No. 3,176,491.
Applicant's original Canadian Patent No. 843,654, was directed
specifically to dies for the rolling of short screws. In the
previous practice of rolling short screws the very few thread
grooves above the heel line at the starting end of the die made it
difficult, if not impossible, to obtain initial rolling stability.
By the unobvious expedient of adding sufficient thread grooves below
the heel line at the starting end of the die, rotational stability of
the blank was obtained.
The invention is directed to a pair of the die blocks which are movable
relative to each other in a rolling machine for rolling threads on self-
tapping screws. A headed cylindrical blank placed between the die blocks
is formed into a screw by the grooved configurations on the working
faces of the blocks. At the starting end of each die the configuration
includes thread-forming grooves above and below the heel line of the
screw. As the slug moves along the die the configuration changes to
include a tapering arrangement for forming the screw point, and a
reverse sloping contour portion to remove excess blank material below
the screw tip.
The Japanese patent shows a set of die blocks for forming self-topping
screws. A headed cylindrical blank placed between the blocks is formed
into a screw by the thread forming grooves on the die blocks.The con-
figurations include a screw tip-forming contour, and an escapement portion
for removal of the excess blank material below the screw tip.
The application before us is one to reissue a patent. The petition for
reissue specifies that the discovery of the Japanese patent is the
reason for filing the new application.
The question to be decided is whether the application has made a patentable
advance over the cited patent.
There was considerable discussion at the hearing about whether the patent
shows thread-cutting grooves below the heel line of the die, in
advance of the escapement portion. The heel line of a screw may be de-
fined as the point at which the screw body begins to taper to a tip.
In the patent (drawings attached) the distance 1 in figure 4 represents
the heel line or point of screw taper. In line A-A1 of figure 4 the
lower portion is shown to be flat, however the cross-sectional view of
line A-A1 in figure 5 indicates a full die width of thread cutting grooves.
This inconsistency is further shown by viewing line B-B1 at figure 4,
and the cross section view in figure 5. These both indicate that there
is no thread cutting groove near the bottom edge of the die. In viewing
figure 6, section A-A1 we find that the blank is threaded throughout
the entire length, and when sealing the drawing the blank length is
found to be equal to the die thread length of figure 4 at A-A1.
According to the patent the art prior to it required a blank having
sharpened end, and one of the major drawbacks was the splitting or pitting
of the finished screw tip. By using an escapement arrangement the patent
obtains accurate length screws with "precision thread crests and sharp
nose points" from cylindrical blanks. The disclosure stated that "the
possibility of mass production of self tapping screws is 1.5-2 times
greater than by methods used heretofore."
The patent solved the problem of mutilation of the tip of the screw
when there is simultaneous formation of point and threads. Since the
objective of the patent was to form "accurate length screws," we conclude
that the drawings are accurate in showing the distinctive features of
the invention related to overcoming that particular problem.
The applicant emphasized that his device makes "relatively short screws"
in which the top (portion below the heel line) is equal to "1/3 of the
length of the screw." A major problem encountered in prior attempts to
produce such short screws was the lack of initial stability of the
cylindrical blank when placed between the dies. Because they are so short
they roll about, and get out of alignment. This resulted in a high
number of rejects. Applicant contends that he has solved the instability problem
for "short screw" production by using thread cutting grooves below the
heel line at the starting end of the die. As a result these grooves "hold"
the very short cylindrical blanks in the required position upon initial
motion of the die. Further movement of the die relative to each other
allows the die grooves or configuration to taper the blank end, remove the
excess material adjacent the tip, and cut threads so as to produce
the final product.
The applicant also stressed that the patent was concerned only with
the production of "longer screws in which initial blank stability is
of no concern. Upon looking at the proportions of the die shown in
figure 4 of the patent, we would agree.
Figure 4 of the patent does show the finishing ends of a few grooves
below the heel line in advance of the escapement portion. It may be
argued that there was a drafting error, and it was intended that the
full area was to be shown as grooved. However, since the patent was
not concerned with stability (because of the length of cylindrical blank
used) we conclude that the omission of grooves at this location occurred
because they were not important to the intended operation of that
device, and thus unnecessary.
An affidavit from a Mr.W.P.Carpenter has been submitted by the appli-
cant. This affidavit was not available at the date of the hearing, so
the examiner did not have an opportunity to evaluate its contents.
Mr Carpenter is the plant Manager for the American Screw Company located
at Wytheville, Virginia, and has been employed by the company for thirty
years. In his affidavit Mr. Carpenter stated (inter alia):
(a) That to his knowledge, thread rolling dies for rolling
the threads on screws of various sizes other than very
short screws have been made for at least thirty (30) years.
(b) Prior to April, 1968, it was generally accepted common
knowledge in the thread-rolling art that commercially
acceptable short screws could not be economically made by
the thread-rolling method because they rolled in an un-
stable manner.
(c) About 1968-69, the American Screw Company bought some dies
from Reed Rolled Thread Die Co.,known as the SCOS Die,
designed to roll very short screws.They tried these dies, and
found them capable of producing short screws superior to any
short screws they had previously made. They examined the
SCOS dies and found that the reason they produced superior
short screws was because of the addition of extra thread-
rolling grooves at the leading end of the die below the heel
line which grooves plus the few grooves above the heel
line enabled the blank to commence rolling in a stabilized
condition. Previous dies designed to roll short screws did
not include the thread grooves below the heel line and, as
a result, stabilized rotation of the blank at the start of
rolling was very uncertain. In his opinion the SCOS die
of the Reed Rolled Thread Die Company was a major step forward
in the production of a very short screw.
(d) In so far as he was aware, prior to April, 1968, there were
no dies made to roll very short screws which included
sufficient extra thread grooves below the heel line to insure
initial stabilized rolling of the screw blank.
In the Final Action the examiner stated that a person skilled in the
art could reduce the number of threads above the heel line in the patent
to result in a "die adapted to the formation of short screws," just
as the applicant has done. However, since the patent was concerned with
other difficulties, modifications would doubtless be required in the
thread area below (in advance of the escapement portion) as well as
above the heel line to arrive at the applicants result. If this had
been an obvious step to persons skilled in this art, we believe this
method for manufacturing short screws would have been adopted at a
much earlier date.
The state of the law on obviousness is well established. In Jamb Sets
Ltd. v. Carlton (1963) Ex.C.R. 377 at 393 Cattanach J. stated:
It has been frequently pointed out that what may seem
obvious when you see the result, may not have been at
all obvious at the beginning and it has always been held to
be a good reason for rejecting a plea of obviousness that
others failed to reach the solution discovered and set
forth in a patent and adopted some other and different
method.
It is well settled in patent law that a mere scintilla of
inventiveness is sufficient to sustain a patent....
The mere simplicity of the device is not proof that it was
obvious and that inventive ingenuity was not required to
produce it.
Further in Steel Company of Canada Ltd. v Sivaco Wire 1973 11 C.P.R.
(2d)153, at 195 Gibson J. after a review of cases relating to obvious-
ness stated:
Looking at the matter generally and in perspective, it
is important while recalling that wire drawing in itself
is an ancient art, to make the relevant qu~ere in this case
of the type often made in the cases, namely, if the inven-
tions of 711,590 and 695,015 were obvious at the material
times,why were they not made sooner.
Claim 1 of this application reads:
A thread rolling die of the type described for forming short
screws comprising a vertical grooved surface A for forming
screw threads on the body of a blank, a sloping grooved sur
face C intersecting said vertical grooved surface A along
a heel line 3 for pointing and forming screw threads on the
point, a bumper surface D intersecting and extending down-
wardly from said sloping grooved surface C, a reversely
sloping slug forming surface E joining said sloping grooved
surface C along a diagonal edge 4 which commences at said
vertical grooved surface A and terminates near said bumper
surface D, said vertical grooved surface A being sub-
stantially wider at that area thereof in advance of said
diagonal edge 4, said die having the following dimensional
characteristics:
(a) the vertical distance P from the extension of the
heel line 3 to the bottom G of the vertical grooved
surface A at the starting end of said die being not
less than one third of the vertical dimensions J of
the grooved surface A at the starting end of said die.
(b) the vertical distance L from the top B of the die
to the line of intersection 26 of said bumper surface
D and said sloping grooved surface C being not greater
than four times the horizontal distance S from the
vertical plane O defining the location of the roots
of the grooves of said die to the line of intersection
26 of said bumper surface D and said sloping grooved
surface C.
This claim distinguishes from the citation by the limitations set out
in a and b. The Board is satisfied that there is present in the
specific limitations claimed some degree of ingenuity which was the
result of thought and experiment. (See: Crosley Radio Corporation v
Canadian General Electric Company 1936 S.C.R. 551 at 556). Claim 1,
and also claims 2 and 3 which contain similar limitations, are
allowable.
Proposed claims 4 to 7 which were submitted in response to the Final
Action rely on the features of "grooves below the heel line" at the
starting end of the die. Since these claims do not include a
"short screw" limitation (as found in claims 1 to 3) we do not con
sider them as a patentable advance in the art.Consequently it is
the opinion of the Board that the pages containing proposed claim 1
to 7 not be inserted.
The Board therefore recommends that the decision of the examiner to
refuse claims 1 to 3 be withdrawn and that the page containing pro
posed claims 4 to 7 not be entered.
Gordon A. Asher,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board. Accordingly
the Final Rejection of claims 1 to 3 is withdrawn, and the application
returned to the examiner. Since proposed claims 4,5,6 and 7 have
not been entered,were only tendered for consideration as a possible
replacement for the claims not found allowable, and in any event
have been found objectionable by the Patent Appeal Board, the applica-
tion should proceed on the basis of the existing claims 1,2 and 3.
Decision Accordingly,
A.M.Laidlaw,
Commissioner of Patents.
Dated at Hull, Quebec
this 9th day of
April,1975.
Agent for Applicant
Fetherstonhaugh & Co.,
Toronto, Ontario.