COMMISSIONER'S DECISION
OBVIOUSNESS: The claims were refused over the teachings of the
prior art, although claim 3 with minor amendments
would be considered as related to patentable
subject matter.
The invention involved storing and handling sulfur. A massive block
was formed with the total base embedded in steam coils. These
coils were used to heat the total base area in a controlled
manner as molten sulfur is required.
FINAL ACTION: Affirmed. However some claims will be allow-
able when amendments are made.
********************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated June 28, 1974 on
application 127,640 (Class 201-149). The application was filed
on November 15, 1971 in the name of Hilton A. McCabe and is
entitled "Method of Handling Block Sulfur."
The application relates to a method of handling large quantities
of sulfur in massive block form, such as is found in sulfur recovery
plants. Steam coils are placed on a concrete pad onto which molten
sulfur is poured and stored in the form of a block. These massive
blocks may weigh 10 to 20 thousand tons. When it is desired to
transfer the sulfur for shipping, steam is introduced into the
system of coils on the concrete pad, molten sulfur is then with-
drawn and transferred directly into a suitable conveyance.
In the Final Action the examiner refused the application for
failing to disclose any patentable step over the following
reference:
Canadian Patent
618,034 April 11, 1961 Dykstra
In that action the examiner stated (in part):
It is pointed out that Dykstra describes a method of
obtaining free sulfur in a readily transportable
form from a massive sulfur deposit 12, comprising
melting said sulfur by heating means 34 positioned
near the base of the massive sulfur deposit, with-
drawing the resulting molten sulfur by means of
gravity flow from the vicinity of the base of the
partially melted massive sulfur deposit and placing
said molten sulfur into a suitable container 26,
substantially as defined by the applicant in claim 1.
There is no patentable merit in merely stipulating that
the sulfur is melted by "indirect" heating means.
Applicant's attention is again drawn to page 7 of the
above cited Canadian Patent which states, "The bins
26 ... are preferably provided with heating coils 27
for melting the sulfur if it becomes solidified in
the bin. The repeating coils 27 may be of the hot water
circulating type and are operatively connected to
distributor 28". Clearly, Dykstra teaches that sulfur,
whether it be poured sulfur which has solidified into a
massive block, or native sulfur in an underground
deposit, may be rendered molten not only by direct
contact by high pressure steam, but also by means of
indirect heating means as proposed by the applicant.
The fact that the claims call for a poured massive block
of sulfur at ground level does not render the claims
patentably different from the teachings of Dykstra. To
merely elect whether sulfur will be stored below, at, or
above ground level is a matter of design expediency and
involves no inventive ingenuity.
In applicant's letter of April 9, 1974, it is argued
that in Dykstra's case, all of the sulfur must not only
be melted before he removes it from the pit by means of
a pump, but the entire batch of sulfur must be maintained
in molten form, whereas the applicant is concerned with
heating the base of the sulfur block and removing the
molten sulfur from the base of the block by gravity
drainage.
However, there is nothing in Dykstra's disclosure to
support the applicant's contention that the entire batch
of sulfur in storage bin 26 must be maintained in a
molten state before sulfur may be removed from the bin.
Dykstra shows the intake conduit of pump 30 extending
downwardly to the base of bin 26, and it is reasonable
to assume that pump 30 may be operated to withdraw molten
sulfur from bin 26 well before all of the sulfur is melted
by the heating coils.
The applicant in his response dated September 10, 1974 to the Final
Action stated (in part):
...
Specifically, Claim 1 includes the manipulative step of
"melting said sulfur by indirect heating means at the
base of said block." In order to argue that this step is
taught by Dykstra, the Examiner has subdivided the explicit
wording of applicant's step into three subelements and then
proceeded to correlate these subelements with separate
points in Dykstra's process.
The "said sulfur",a "poured massive block", is equated
to the offshore sulfur deposits discussed in Dykstra.
This correlation is legally inaccurate in that the two
expressions do not read on common subject matter and
technically inaccurate in that applicant's invention
involves remelting a free-standing massive block of
sulfur while Dykstra is extracting sulfur which is
naturally entrapped in a honey-combed limestone deposit.
The second subelement in the Examiner's analysis involves
identifying the applicant's act of "melting... at the base"
as being synonymous with Dykstra placing a heating means
near the base of the massive sulfur deposit. Again this
is inaccurate. Applicant's invention as explicitly worded
is restricted to the act of melting the sulfur at the base
of the block exclusively. 1n other words, the melting
occurs at the interface of the indirect heat exchanger and
the free-standing block resting on the heat exchanger. As
the block melts it falls and a new base comes in contact
with the heat exchanger. In contrast, Dykstra's process
inherently involves the drilling of a vertical shaft from
the underside of the sulfur deposit up into the deposit.
The fact that the Frosch type heating means is placed near
the base does not amount to the claimed manipulative step
of melting at the base. In the Dykstra process the
entrapped sulfur does not flow to the base until after the
hot steam has come in direct contact with the sulfur. In
other words, the act of melting in the Dykstra process
occurs exclusively within the honey-combed limestone matrix
and not at the base of the deposit.
The third subdivision of the aforementioned novel step
involves equating the indirect heating of applicant's
invention with the heating coil in Dykstra's storage bin
located downstream from the melting step. To argue that
the intended use of this reservoir is for crystallizing and
remelting of sulfur is inaccurate. By Dykstra's own
admission, this heating coil is merely preferred (optional)
and is used to melt the sulfur if it becomes solidified.
Thus the clear intent of this heating coil is to sustain
the sulfur in a melt state. The obvious purpose of having
Dykstra's storage bin is that it acts as a surge tank on the
inlet side of a pump to account for upstream variations in
flow (a well recognized engineering principle). To further
emphasize this point, please note that applicant's drawing,
Fig. 2, shows a surge tank prior to the pump; applicant also
teaches the advantage of heating downstream from the melting
to prevent freezeup, and that these elements are remote from
and are not part of the claimed improvement.
Hence, applicant's basic position is that Dykstra does not,
in fact, perform the melting step as explicitly stated in
applicant's claims. Further, Dykstra does not teach the
combination of subelements selected from remote areas of his
overall process. He does not teach this combination into
two senses. The first is that combining of these subelements
would create a manipulative melting step which would be
inoperative with respect to the purpose of h.is disclosure;
i.e., you don't remove sulfur from natural deposits by indirect
heating. The second is that Dykstra does not disclose the
specific advantages of the combination, particularly
applicant's observations of reduced sulfur dust emissions and
improved heat flux efficiency.
The Dykstra citation relates to a method of extracting and recovering
sulfur from earth bearing sulfur deposits. Claim 1 of that patent
clearly sets forth the method and reads:
The method of extracting and recovering sulfur from a
sulfur deposit surrounded by a competent formation
submerged under water, said method comprising the steps
of sinking a substantially vertical shaft into said
competent formation to a point below the bottom of the
sulfur deposit, installing a watertight casing from at
least the top of said shaft to a point above the wave
level of the water, forming at least one substantially
horizontal tunnel from a point near the lower end of
said shaft to the boundaries of said sulfur deposit at
a level below said sulfur deposit in the competent
formation, extending at least one small-diameter shaft
upwards through said competent formation into sulfur
body thereabove, installing a pair of pipes in said
shaft in communication between said, tunnel and said
sulfur deposit, pumping hot fluid up one of said pipes
into said sulfur deposit to melt the sulfur therein,
flowing the molten sulfur down the other pipe to said
tunnel and removing the sulfur from the tunnel up said
shaft to storage means at the surface.
The applicant also sets forth the state of the art in his disclosure
on page 1, second paragraph, which reads:
Sulfur has been stored principally in two different
forms, in blocks and in piles of loose flakes. The
block sulfur is formed by pouring molten sulfur into a
low, rectangular form and as the level of the liquid
sulfur approaches the top of the existing sides, an
additional section of sideboards is placed around the
top of the edge of the original form, preferably in
liquid-tight relationship therewith. By following this
procedure large blocks of sulfur weighing several thou-
sands of tons are formed, and while such method of
storage requires a minimum of spacing, the block has to
be broken by the use of explosives when it is desired to
remove sulfur therefrom. Considerable dust is formed during
this process, requiring those in the vicinity to wear
special industrial masks. Sulfur is also stored in
flake form in large piles. Flake sulfur is produced by
placing it in molten form on an endless belt, one end of
which is submerged in water. When the molten sulfur
contacts the water it solidifies and breaks up into flakes
as the belt passes over and around the end roller. Sulfur
in this form can be readily loaded into gondola freight
cars; however, such a loading operation is undesirable
because it also generates large quantities of sulfur dust.
Flaked sulfur has an additional disadvantage when stored
on the ground, i.e. the pollution problem created due to
rain percolating through the pile since run-off therefrom
is very acidic.
As mentioned, the application relates to a method of handling large quanti-
ties of sulfur in massive block form in sulfur recovery plants. The block
is formed by pouring molten sulfur into a form at the base of which are
located steam coils. These massive blocks may weigh 10 to 20 thousand
tons. When it is desired to transfer the sulfur for shipping, steam is
introduced into the system of coils on tile concrete pad, molten sulfur is
then withdrawn and transfered directly into a suitable conveyance. Claim 1
reads:
In the method of obtaining free sulfur in a readily trans-
portable form from a poured massive block thereof at ground
level, the improvement comprising melting said sulfur by
indirect heating means at the base of said block, withdrawing
the resulting molten sulfur by means of gravity flow from the
base of the partially melted block and placing said molten sulfur
into a suitable container.
The question which the Board must consider is whether the applicant has
disclosed and claimed a patentable advance in the art.
In the applicant's view there was a problem in the storage and handling of
large quantities of sulfur in massive blocks. The specific problem was
one of removing a portion of the sulfur from the massive block. According
to the applicant the removal of a portion of the sulfur was normally
carried out by using explosives, accompanied by the usual nuisances and
precautions which are necessary in a procedure of this kind.
The applicant maintains that he has overcome that problem by forming the
block in a special manner. The molten sulfur is poured into a form at the
base of which are located steam coils. When it is desired to transfer
the sulfur for shipping, steam is introduced into the system of coils to
melt .the lower portion of the massive block; this molten sulfur is then
withdrawn by gravity and transfered directly into a suitable conveyance.
Generally, it is preferable to have a higher concentration of coils or
heating pipes near the center of the sulfur block. That arrangement aids
in increasing the melting rate of the center portion of the block,
results in desired stress toward the center of the block, and minimizes
the tendency of the block to crack during the melting operation. Further-
more, throttling valves may be used to adjust the heating rate, so that
the stresses in the block due to uneven melting can be controlled.
There is no reason to disbelieve the applicant s claim that he has overcome
a problem in the storage and handling of massive blocks to molten sulfur.
The specific issue, however, is whether his solution involved such an
exercise of the creative faculties of the human mind as to merit the dis-
tinction of invention, or a claim to monopoly. It has been authoritatively
stated that the art of combining two or more parts, whether they be new or
old, or partly new and partly old, so as to obtain a new result, or a
known result in a better, cheaper, or more expeditious manner, is valid
subject matter if there is sufficient evidence of thought, design, and
skillful ingenuity in the invention, and novelty in the combination.
(See Merco Nordstrom Valve Co. v. Comer (1942) Ex. C.R. 138 at 155.)
The applicant has argued that the examiner has subdivided the explicit word-
ing of applicant's step (of claim 1) into three subelements and related them
to separate parts in Dykstra's process. There is, however, nothing objection-
able in analysing a claim to ascertain whether the prior art teaches the
different steps. A claim must then, however, be scrutinized as a complete
combination to ascertain whether there is invention in the new combination,
whether it produces a new result, or a known result in a more expeditious
manner, even though all of the elements be old (see the discussion in the
previous paragraph).
We now consider the claims.
In claim 1 the alleged improvement is stated to be "melting said sulfur by
indirect heating means at the base of said block, withdrawing the resulting
molten sulfur by means of gravity flow from the base of the partially melted
block and placing said molten sulfur into a suitable container." It is
well known in the art (as taught by Dykstra) to use heating means to melt
a body of sulfur, and then remove the molten sulfur by gravity flow into
a suitable storage container. In Dykstra's arrangement the stored molten
sulfur is also kept in a fluid state in the container by an arrangement
of heating coils. The preparation of a poured massive block of molten
sulfur such as that melted in claim 1 was also known previously (see page 1
of the present disclosure). To merely apply heating means to the base of
a known block of sulfur does not involve an inventive step.
In our view certain essential features are missing from claim 1. First the
block is poured in a special manner, i.e. the molten sulfur is poured into
a form, on a concrete slab, at "the base area of which are located heating
coils." It also omits reference to the fact that the heating means are
applied to the "total base area" of the block, and in a "controlled manner,"
Claim 1 is too broad in scope in view of the prior art, and in our view
is also broader than the invention disclosed.
Claim 2, which depends on claim l, adds a particular heating means as a
limitation. This does not introduce anything of patentable significance to
what has been defined in rejected claim 1.
Claim 3, which depends indirectly on claim 1, introduces further limitations:
"... said block is formed by pouring molten sulfur into a form at the base of
which are located steam coils adapted to control the amount of heat available
therefrom to said base (area)" (emphasis added). The block formed with the
heating coils embedded in the base and the control means to heat the "total
area" of said base, or possibly to a given area of the base, are essential
features and must be included in any allowable claim to the new process.
This claim (3), therefore, if amended as to form and clarity, and rewritten
in independent form (including the necessary steps of claim 1,) would,in our
view, express some element of inventive ingenuity for there is no teaching
of handling stock piles of sulfur in this manner. It has been held that a
"mere scintilla" of invention will suffice for the validity of a patent (The
King v Smith Incubator 1935 Ex.C.R. 105 at 112), and simplicity is not in
itself an impediment (Adams and Westlake v. Wright, 1928 Ex. C.R. 112 at 115).
Viewed in that light, the benefit of doubt should be weighed in favour of
the applicant. Should any amendment be made, the steps of the process should
be recited in correct sequential order. It should also be made clear that
the "form" for the block includes or has in addition to it "a slab or base"
as a foundation for the sulfur block, and a heating control applied to the
"total base area."
Claim 4, which depends on claim 3, adds a heat control unit. It would be
allowable if dependent on a revised claim 3.
Claim 5, which depends on claim 2, is directed to recesses in the base support-
ing the block. This is not a patentable feature in itself, but the claim
would be allowable if dependent orb an amended claim 3.
We are satisfied that claims 1, 2 and 5 fail to include the necessary essential
elements of a patentable advance in the art. We are also satisfied that
claims 3 and 4 are directed to a patentable invention, but require amendment
to define the invention explicitly. The feature added in claim 5 could also
be protected if made dependent upon a modified claim 3.
The Board recommends that the decision of the examiner to refuse the claims
on file be affirmed. Since by appropriate amendment it is possible that
some subject matter might be accepted, we do not recommend rejection of the
application itself.
J.F.Hughes
Assistant Chairman
Patent Appeal Board
I concur with the findings of the Patent Appeal Board and refuse the claims
of this application. The applicant has six months within which to present
a new claim (or claims) drafted along the guidelines indicated, or to appeal
this decision under the provision of Section 44 of the Patent Act.
Decision accordingly,
A.M. Laidlaw
Commissioner of Patents
Dated at Hull, Quebec
this 5th, day of
June, 1975
Agent for Applicant
Gowling & Henderson,
Ottawa, Ontario.