COMMISSIONER'S DECISION
OBVIOUSNESS: Production of Kaolinitic Clay
In an earlier Commissioner's decision on this application a conflict
claim was refused and removed. This rejection relates to other claims
subsequently rejected as obvious in view of cited art.
FINAL ACTION: Affirmed
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action of October 15, 1975, on patent
application 901145. The application was filed in the names of William
Windle and Reginald T. Bailey, and deals with "A Method of Producing
a White-Firing Kaolinitic Clay."
Previously the application had been involved in conflict proceedings
with two other applications, during the course of which one of the claims,
C5, was refused as covering subject matter obvious in view of certain
cited art. The applicant requested a review of that rejection, and
the Commissioner supported the refusal on May 8, 1973. An appeal was
taken to the Federal Court of Canada, but subsequently withdrawn, and
claim C5 removed. The examiner then proceeded to examine the remaining
claims, present claims 1-5. During the earlier prosecution the examiner
had indicated that these claims were not patentably different from C5,
were not patentable over the prior art, and would be rejected at the
termination of the conflict (assuming, of course, that the rejection of
C5 was proper). He then proceeded to reject claims 1-5 as being directed
to subject matter which was obvious, and therefore unpatentable. It
is that rejection which is now before the Patent Appeal Board for
consideration.
The application relates to a process for purifying white-firing clay
suitable for use in the manufacture of ceramic articles using
electromatic means to remove impurities. in the prosecution terminated
by the second Final Action, the examiner refused claims 1 to 5
as being obvious in view of the following references.
United Stages Patent
90,565 May 25, 1869 Lynd
"Wet Magnetic Separator For Feebly Magnetic Minerals," part I
by G.N. Jones and part II by W.J.D. Stone, a paper delivered
at the International Mineral Processing Congress, London,
1960, and published June, 1962 in the Bulletin of the Canadian
Department of Mines and Technical Surveys, Group VI, Paper
No. 34.
In his action the examiner stated (in part):
The patent to Lynd is cited only to establish the fact that it
is old in the art to use magnets to remove iron and other discol-
oring matters from a clay slurry. It is recognized, as applicant
argues, that Lynd uses permanent magnets to remove relatively large
particles.
However, when it is known to use a magnet to remove magnetic dis-
coloring impurities from clay, and then a more powerful magnet is
invented, it is not invention to use the new magnet in the same
manner for the same purpose as taught by Lynd.
This statement is particularly true of the Jones magnet described
in the cited publication, which is capable of producing a field
strength of at least 10;000 gauss, In this publication the author
states (page 717) "the author aimed therefore to develop a machine
suitable for the wet separation of feebly magnetic minerals including
even the least magnetic of these, such as muscovite mica and
tourmaline".
.,.
Applicant has argued novelty in the removal of muscovite, and the
fine size of his separated particles. These arguments are refuted
by the preceding quotations. Applicant has not developed or added
anything inventive to the process of the cited publication but argues
that his particle size is finer. The quoted statement from page 733
of Stone covers the size range of applicant, and the particle size
is therefore not inventive.
Claims 1, 2 and 3 are rejected as being unpatentable over the
references.
Claim 4 is rejected as being unpatentable in view of common general
knowledge in the separating art. It is standard operating procedure
in the mineral separation art to recirculate material through any
separating means until the desired degree of separation is achieved.
Claim 5 is also rejected as being unpatentable over the
references. Applicant discloses a magnetic field strength
of at least 10,000 gauss, preferably 15,000 gauss. The
reference Jones magnet produces a field strength of at
least 10,000 gauss. There is no unexpected result achieved
by increasing the field strength to 15,000 gauss. It is a
matter of degree only, the expected result.
The applicant in the response to the Final Action, dated January 15;
1975 stated (in part):
Applicants regret that they are confused by the manner in which
the present final action is expressed. It appears to be the
basis of the final action that the claims now before the Office
are unpatentable as being not patentably different from the re-
jected conflict claim C5. It is assumed that Rule 69 is the
basis for the present rejection and the text of Rule 69 is set
forth below:
69. (1) An applicant may not reassert any claim that has
been amended or cancelled to avoid a conflict or
assert any claim to subject matter not patentably
different from that defined in a claim so amended
or cancelled.
(2) Where an applicant fails to contest priority with
respect to conflicting subject matter claimed in another
supplication or where priority is awarded to an opposing
party, the applicant may not retain in his application
or introduce into it claims for subject matter not
patentably different from such conflicting subject
matter.
In view of the above Rule, applicants may not reassert or retain
claims for subject matter not patentably different from subject
matter defined in a conflict claim that has been amended or can-
celled to avoid conflict. As pointed out in the previous response
claim C5 was not cancelled or amended to avoid conflict; it was
cancelled instead as a result of the final rejection of that
claim.
The application is for a method of processing Kaolinitic clay for the
production of ceramic articles. Kaolin (china clay) is extracted
from the ground and contains iron-containing impurities which causes
specking or poor colour when the clay is fired. The applicant forms
a slurry of the Kaolinitic clay and subjects the slurry to the action
of a non-homogeneous magnetic field to separate paramagnetic particles
therefrom.
The patent to Lynd establishes that it is known in the art to use
artificial or natural magnets to remove iron and other discoloring
matters from solutions of argillaceous substances which are to be used
for the manufacture of white wares.
The publication "Wet Magnetic Separator For Feebly Magnetic Minerals"
(Jones and Stone) states at page 717:
...the author aimed therefore to develop a machine suitable
fox the wet separation of feebly magnetic minerals including
even the least magnetic of these, such as muscovite mica
arid tourmaline
And at page 733:
Although Magnetic separation has long been a useful tool of
the mineral dressing engineer, available equipment until recently
has been of limited effectiveness on separations involving
materials ranging in particle size from 100 mash down to a few
microns. This was particularly the case with weakly magnetic
minerals.
With the acquisition in the spring of 1959 of a Jones wet
magnetic mineral separator the Mines Branch put into operation
the only pilot unit of this machine in existence. This high
intensity wet magnetic separator differs in design from existing
machines and has been developed to be particularly effective in
the fine particle size range, especially on weakly magnetic
minerals.
Also at page 743 a list of conclusions are given:
(3) The Jones unit makes effective separations on fine
materials containing minerals considered weakly magnetic,
or not suitable for magnetic separation at all.
(5) The indicated susceptibility of some muscovites in the
Jones separator suggests a possible application in the
clay industry.
(6) The Jones machine may be used to separate minerals of
different magnetic susceptibilities in very fine sites.
In the applicant's response he states that he is "confused by the manner
in which the present final action is expressed," and assumes that Rule 69
is the basis for the rejection. It is noted however, that on page 1
of the Final Action the second paragraph states "The rejection of these
claims, and of this application, is made in view of the following refer-
ences;" and on page 2 the last four paragraphs outline in detail the
rejection in view of the prior art.
Consequently we are in no doubt that the rejection was made on the ground
that the invention is obvious in view of that art, and see no need to con-
sider Rule 69. We agree with the applicant that under the present circum-
stances Rule 69 is not involved.
The applicant requests a "review of the reason for rejection of the claims
now before the Office for reasons already set forth at length in the
prosecution of this application." One of the arguments previously advanced
was that the Jones and Stone reference is not a proper citation as the
earliest publication date established for it is June 1962, whereas this
application was filed on April 24, 1964, less than two years after publica-
tion.
While it is correct that the examiner's report does refer to a publication
date in 1962, the proceedings of the meeting were also published in 1960,
and the applications arguments based upon any inadequacy in the age of the
citation must fail. Publication at any time during 1960 would, of course,
predate the filing of this application by more than two years.
The question to be decided is whether the applicant has made a patentable
advance in the art. Claim 1 reads:
A method of producing a white-firing, kaolinitic clay,
which comprises forming a slurry of kaolinitic clay and
subjecting the slurry to the action of a non-homogeneous
magnetic field having an average strength of at least
10,000 gauss to separate paramagnetic particles therefrom.
Lynd teaches the use of natural or artificial magnets to remove discolouring
matter from solutions of argillaceous substances, which substances are
to be used for the manufacture of white wares. The limitations of claim 1
over the Lynd patent is that the clay is defined as a "kaolinitic clay" and
that the intensity of the magnetic field having an average strength of
at least "10,000 gauss."
The publication reference teaches the use of the Jones "High Intensity Wet
Magnetic Separator" and specifically refers to its application to the clay
industry. This publication specifically states that the "Jones machine may
be used to separate minerals of different magnetic susceptibilities in
very fine sizes". In addition, however, magnetic separators using high in-
tensity magnets are also well known as noted on page 2 of the instant dis-
closure, line 14, which reads: "... a separator capable of producing a field
strength of at least 10,000 gauss, and a preferred separator is described in
British patent Specification No. 768,451."
Mother argument previously advanced by the applicant was that page 743 of
the reference to Stone would deter one skilled in the art from attempting
the difficult separation referred to. The Board cannot agree with this argu-
ment as this paragraph states: "The very fine feed used in experiments 11,
l2 and 13, involving the removal of very feebly magnetic chlorite from talc,
was not considered amendable to magnetic separation. However, very good
results were obtained." If very good results were obtained in spite of the
reluctance of the material to magnetic separations, then certainly this
would encourage rather than discourage the trial or use of the magnetic
process in other circumstances.
The limitations placed in claim 1, such as the restriction to "kaolinitic"
material and the reference to the intensity of the magnetic field, are minor
alterations. It would be obvious to modify the Lynd process by using
stronger magnets when they became available, and to use it with different
types of clay.
The Board is therefore satisfied that Claim 1 does not teach an advance
in the art over the cited references, or even over the Lynd patent itself
when we add to it the admissions made in the disclosure about British
Patent No. 768,451.
Claim 2 to 5, which depend directly or indirectly on claim 1, and features
such as a magnetic separator, field strength, and particle size. In the
circumstances these do not add anything of patentable significance to
rejected claim 1. We are also satisfied that there is no further subject
matter in the disclosure which would be patentable.
The Board recommends that the decision in the Final Action to refuse the
application for failure to disclose patentable subject matter be affirmed.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the recommendations of the Patent Appeal Board and I refuse
to grant a patent of this application. The applicant has six months
within which to appeal this decision under the provisions of Section 44
of the Patent Act.
J.A. Brown;
Acting Commissioner
of Patents.
Dated at Hull, Quebec
this 3rd. day of October,
1975.
Agent for Applicant:
Fetherstonhaugh & Co.,
Ottawa, Ontario