COMMISSIONER'S DECISION
INDEFINITE CLAIM: Section 3 6(2)
The invention is for a device used for assembly or disassembly of hose
end fittings. The claim is not clear or explicit as it fails to
follow the mechanics of claim drafting". No prior art cited.
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 September 26, 1974 on
application 156,374 (Class 26-156). This application was filed on
November 14, 1972 in the names of Michael J. Bishop and Don A. Pochrandt.
The title is "Apparatus for Assembling and Disassembling collet type
hose Couplings".
The examiner in the Final Action refused the only claim in the application
for the reason that it is an aggregation of elements, is indefinite,
and contrary to Section 36 of the Patent Act.
This application relates to a device used in assembly or disassembly of
hose end fittings. The type of fitting used is found on garden hoses.
In the final Action the examiner stated (in part):
At lines 9 and 20 the term "sets of guides" has no proper intro-
ductory antecedent. In both instances, the term should be
replaced by reference to --said guides" as introduced at line 6.
At lines 10 to 13, the cross-head should be defined as being
--slidably mounted on said guides in passages formed in said
cross-head to move towards and away from said upper head by
means of said force-producing means -- to properly describe
the structure and to make proper reference to previously intro-
duced elements.
At line 14, "the base plate" should be -- said foot plate --
and "the cross-head" should be --said cross-head - .
Similarly, at lines 16 and 17 the word "the" should be re-
placed by --said -- in reference to--said force-producing means,
said upper head and said cross-head --. Further, at line 17
"suitable:" should be --suitably --.
At line 19, "said upper-head" should be -- said cross-head --
since it is the cross-head which is (line 20) operable along
said guides affixed to said foot plate and to said upper head.
The phrase at lines 21 to 24, "a cross-head ... force-producing
means" which was inserted with the last amendment, should be
deleted since this description is partially present at lines 10
to 13 and the above-suggested amendment to these lines will
accommodate all of this phrase.
The remaining portion of the claim includes some elements which
may be considered to be part of the apparatus and other elements
which form no part of the apparatus. Among these various
elements for clamping and cutting a hose, applicant may
include only those which attach directly to the apparatus and
which, in effect, become a temporary part of the apparatus.
However he may not include those means which an operator would
employ an the workpiece, such as the cutting means and the
protractor device. The claim must recite only those elements
which are directly interdependent and which mutually cooperate
to attain a unitary result. Although the method of assembling
or disassembling hose couplings may require the sequential
use of all these components, it does not thereby permit the
claiming of an aggregation of elements which would be contrary
to Section 36.
At line 34 the phrase "expanded by a ram relative to cross-head"
appears to be missing one or more words which would make the
phrase intelligible.
The applicant in his responses to the Final Action dated December 27,
1974 and January 9, 1975 stated (in part):
We do not agree with you that the claims contained in-
definite statements except to the extent that almost any
statement is indefinite. As to errors, as we see your object-
ions, they are objections to revisions of the application
we made in spite of our opinion that they should not have been
made. Obviously we do not agree with you that the claims are
"not directed to a proper combination as required by Section 36.
...
As to the objection that at the lines 9 and 20 the term "sets
of guides" has no proper introductory antecedent" I do not know
of any authority for any word having an introductory antecedent
and secondly these words "sets of guides" are the very words
that in your paragraph 6 of your letter of the 10th June you
suggested that we use as part of a complete replacement of certain
plans.
However on the assumption that you have changed your mind
about these words being suitable, we have made the amendments
suggested in your fourth paragraph (excluding the first one
as to the period allowed for reply) and we enclose the
amendment accordingly.
As to your proposed amendment of line 14 we have made that
amendment by replacing "the said base plate" by the "said
foot plate" and by replacing "the cross head" by the
"said cross head" (although we cannot imagine what cross
head could be referred to except the "said cross head").
Similarly at lines 16 and 17 the word "the" has been
replaced by "said" in reference to "said producing means",
"said upper head" and "said cross-head". Furthermore at
line 17 "suitable" has been replaced by "suitably".
...
We do not agree that the claim as worded is contrary to
Section 36 and will appeal your decision to that effect.
This application describes the manner of assembling or disassembling
collet-type hose couplings. The basic apparatus is a hose holding or
gripping arrangement. A square base member supports a corresponding
sized top member by means of circular posts at each corner. An inter-
mediate member slidable on the posts is located between the base and
top members. The intermediate and top members have openings which
are adapted to receive various hose gripping jaws. Force producing
means such as a hydraulic jack on the base member is used to move
the intermediate member toward the top member in assembling a
fitting on the end of a hose.
The question to be considered by the Board is whether the claim as
proposed on December 27, 1974 meets the requirement of Section 36(2)
of the Patent Act. This claim reads:
Apparatus consisting of a combination of elements, operable
in successive steps, for carrying out the assembling and
disassembling and replacing of collet-type flexible hose
couplings, and the shearing-off of hose, and the reclaiming
of removed couplings, and removing the hose outer layer,
consisting, in combination, of said guides, a force-
producing means, a fixed foot plate, an upper head and in
between said foot plate and said upper head, operating
along sets of guides affixed to said foot place and to
said head, a cross-head slidably mounted on said guides
in passages formed in said cross-head, to move towards
and away from said upper head by means of said force-producing
means, in a place parallel to the said upper head by means
of a force-producing device, a coil spring removably affixed
at its bottom to the base plate and at its top to the said
cross-head and exerting between them a force counter to that
exerted by the said force-producing means, interchangeable
pairs of jaws in the head and in the cross-head suitably
serrated for gripping and holding during treatment
cylindrical articles such as hoses and couplings, said
cross-head operating along sets of guides affixed to
said foot plate and to said heat, known means for
clamping hoses and couplings, and for cutting the hose,
radially moveable crimping fingers, a mandrel having its
longitudinal axis in alignment with the axis of the
fingers, which mandrel has a shoulder butting against the
lower portion of a stem to one end of which is attached
a threaded stud and a stop collar and a conical point
acting as a centering device, which mandrel can be secured
to the cross-head normally in unexpended condition, and
is adapted to be inserted in the hose and then expanded by
a ram connected to cross-head whereby the mandrel expands
the hose; a protractor device for performing the same
operations as heretofore in this claim set forth, when
operating on a coupling, set at an angle to the axis of
the hose or having terminals of a special design, once
the dihedral angle has been determined, by orienting
the said terminals in two different planes having a
common line along the axis of the hose and then
assembling the hose terminals and clamping one of the
terminals in an angle-regulating device at a fixed angle
with the other, a protractor device for adjusting to a
set angle the angled terminal ends and for attaching the
said terminals to the hose and assembling the hose and the
couplings.
Section 36(2) of the Patent Act reads:
The specification shall end with a claim or claims stating
distinctly and in explicit terms the things or combinations
that the applicant regards as new and in which he claims an
exclusive property or privilege.
It is well established in the mechanics of claim drafting, e.g. for
an apparatus, to have a "preamble" or introductory statement for
the purpose of defining the subject natter to be claimed. This is
followed by a "recitation of elements" or parts of the combination
after which ensues a description of the manner in which the
elements cooperate with one another to produce the operative
combination envisaged in the preamble.
In the claim as now proposed the first five lines ending at the
word "consisting" constitute an adequate preamble. (For line
numbering we use the same as it appears in this decision supra.)
The remaining portion of the claim which recites the elements and
their cooperation with each other does not use terminology which
is clear and explicit as required by Sec. 36 of the Patent Act.
In line 6, for example, the term "of said guides" indicates prior
recitation of guides which has not been done. This is followed by
"sets of guides" at lines 8 and 20 which are not the same "guides"
referred to in line 6. The positioning of the cross-head between the
footplate and upper head in lines 9 to 17 is neither clear nor explicit.
Inconsistent use of terminology is found in "force producing means" on
line 12, which becomes "force producing device" at line 13, and reverts
to "force producing means" in line 16. "The head" in line 17 and "said
head" in line 21 gives no indication which head is referred to since prior
reference has been made to both an "upper-head" and a "cross-head." At
lines 51 and 55 the statement "known means for clamping hoses and couplings,
and for cutting the hose, radially movable crimping fingers" does not
describe any operative combination of previously introduced elements.
Further on at lines 31 and 32 the term "a protractor device for performing
the same operations as heretofore in this claim set forth" is the descrip-
tion of an element which does not combine with any of the previously
described elements. This constitutes an aggregation since the protractor
performs its function independent of the other elements.
It is pointed out that the essential qualification for a patentable combi-
nation is that the elements of which the combination is composed are
combined so as to produce a result to which all the elements of the combi-
nation contribute their part. Upon this principle depends the entire
definition and understanding of what constitutes a combination in the law
of patents. A proper combination for a patent is the union of two or more
integers, every one of which elements may be perfectly old, for the produc-
tion of an object which object is either new or at any rate is for effec-
ting an old object in a more convenient, cheaper, or more useful way. In
a combination the elements of which the combination is composed must be
combined together so as to produce a unitary result before the combination
is patentable. (See Baldwin International Radio Co. of Canada Ltd v.
Western Electric Co.Inc.(1934) S.C.R. 94)
Clearly there are many parts of the claim that fail to state "distinctly
and in explicit terms" the things or combinations that are new. The
elements of which this combination is composed must be combined together
so as to produce a unitary result.
The Board is satisfied that the claim fails to comply with the require-
ments of Section 36(2) of the Patent Act.
A claim drafted on the style set out below, however, would be considered
for allowance by the examiner.
Apparatus for performing the assembling and disassembling
of collet-type flexible-hose couplings comprising, in
combination, a foot plate, an upper head, a set of guides
joining said foot plate and said upper head, a cross head
slidably mounted on said set of guides to move towards and
away from said upper head, a force-producing means enga-
geable with said cross head for upward movement of said
cross head, spring means engaging said cross head and foot
plate to provide downward movement of said cross head,
moveable jaws in said upper head and said cross head for
gripping couplings and/or hoses during installation on or
removal of couplings from flexible hoses, said movable jaws
having adapter means to accommodate mounting of accessory
tools for operation on said couplings and flexible hoses.
The Board therefore recommends that the decision in the Final Action to
refuse the claim be affirmed.
J.A.Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and refuse to
allow proposed claim 1. The applicant has six months within which to
present an amended claim or 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 18th day of
April,1975
Agent for Applicant
Quain and Quain,
Ottawa,Ontario.