COMMISSIONER'S DECISION
Obviousness: Portable Resuscitator
Claims 1, 2 and 4 were refused for failing to define a patentable advance
in the art. The differences from the prior art were variations in shape
or design, without an unobvious functional result.
Rejection: Affirmed
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated February 11, 1975, on applica-
tion 140,805 (Class 137-1.50). The application was filed on April 28, 1972,
and is entitled "Survival Support Device." The Patent Appeal Board conducted
a Hearing on December 3, 1975, at which Mr. S. Rogers represented the applicant.
The application relates to an apparatus which contains a breathable mixture
of gas for a prolonged period and, when actuated, provides about ten minutes
of gas to the user. The gas in contained at high pressure in a lightweight
long tube coiled about a combined fill valve, pressure regulator flow control,
pressure gauge and actuation mechanism.
In the Final Action the examiner rejected claims 1, 2 and 4 (in part) as
failing to define a patentable advance over the following United States
patents:
3,505,997 April 14, 1970 Cawley
3,502,075 Mar. 24, 1970 Cawley
2,697,538 Dec. 21, 1954 Seeler
2,380,372 July 31, 1945 Alderfer
In that action the examiner stated (in part):
The cited patents disclose a breathing apparatus wherein a
container for storage of breathable gas is constructed of a
length of tubing.
...
The main distinction between the matter claimed by claims 1
and 2 and that taught by the Cowley patents is that the said
matter claimed, claims the coil is constituted of a laterally
flattened helix, whereas the Cowley patent teaches a circular
shaped coil. The mere alteration of the circular coil into
a flattened sided coil is not considered to be of patentable
significance, since flat side coils are known as shown by
the patent to Alderfer.
In view of the teaching of the cited patents it is held that
claims 1 and 2 do not include anything unobvious to one skilled
in the art, and that the said claims fail to define a patentable
improvement thereover.
Furthermore claims 1 and 2 are also rejected as being drawn to
an old combination of a hollow coil of pressure resistant
tubing containing a breathable gas at high pressure with a
pressure gauge and means for controlling the output gas to the
patient. This combination is shown to be old by the patents to
Cowley, which disclose broadly the same elements, functionally
interrelated in the same manner to produce substantially the same
results. The combination of claims 1 and 2 differ from that shown
in the Cowley patents in setting forth a rectangular instead of
circular configuration of the reservoir coil. The altering of
the shape of the reservoir coil does not modify action of the
other elements revealed in the said claims in any material manner
hence no new combination is seen to exist. Also rectangular shaped
reservoir coils are known in the art, as shown by Alderfer.
In his response dated May 9, 1975 to the Final Action the applicant stated
(in part):
(a) The applicant believes that the Examiner's rejection of
claims 1 and 2 under the grounds of obviousness to one skilled
in the art in view of the cited references is unjustified and
those claims do define a patentable improvement thereover.
(b) The applicant believes that the Examiner's rejection of
claims 1 and 2 as being drawn to an old combination over the
disclosure of the Cowley & Alderfer references is unjustified,
and those claims do define a novel and patentable combination
thereover.
(c) The applicant believes that the Examiner's rejection of
claim 4 as obvious to one skilled in the art in view of the teach-
ing of the cited patents is unjustified, and that claim does
define a novel and patentable invention thereover. Moreover,
this is the first Official Letter in which such an objection
has been made to claim 4, and it is believed improper therefore
to make it a subject of a Final Action.
...
It must be emphasized that Cowley shows a hollow helical coil with
turns of circular configuration, while Alderfer shows a spiral
coil with turns of rectangular configuration. Only the present
application shows a gas supply device using an elongated hollow
helical coil with a plurality of turns, and in the form
of a laterally flattened helix having in lateral cross-
section a pair of straight parallel sides.
A truly portable compact gas supply must try to meet the
following criteria:
(a) To be as light and compact as possible consistent with the
maximum possible gas capacity,
(b) To be foolproof and adapted to withstand abuse as it is
carried on the user's body through doorways and past obstructions,
whether in the "carried" or "operative" positions.
(c) To be readily carried comfortably on the user's person while
not in use, so as to minimize the possibility that he will be
tempted to discard it as being too cumbersome.
(d) To be of a configuration such that it can be grasped firmly
and safely for movement from the "carried" position to the
"operative" position, despite the possibility that the operator
may be wearing protective gloves, or alternatively may be in
a situation where his hands are slippery with sweat or other
liquid, and that he may be in an incapacitated situation owing
to fatigue, shock, heat, wounds, etc.
(e) To lie comfortably in position on the user's body while in
operation.
It has been shown by the previous discussions and by the evidence
of commercial success that the device of the invention does meet
these criteria, whereas those of the references certainly do not.
The Cowley patents disclose a breathing apparatus including a hollow coil
constituted by a plurality of turns for containing breathable gas. A pressure
gauge is located within the hollow coil with means for controlling the output
of the gas to a patient. Claim 1 of Cowley (3,502,075) reads:
Lightweight portable resuscitator apparatus comprising:
a pressure vessel for gas consisting of a length of tubing wound
upon itself; a jacket enclosing said pressure vessel; an outlet
capillary tube communicating with said vessel; means defining a
reduced flow zone of thin, flattened shape in section on said
tube having opposed flattened side walls, at least one of said
walls being movable towards said other wall; a valve seat
positioned between said opposed flattened side walls; adjustable
means associated with said reduced flow zone for moving said
movable side wall toward said other side wall and adapted to
restrict said tube to limit gas flow therethrough; an expansion
chamber on the side of said restricting means remote from said
pressure vessel; further tube means extending from said expansion
chamber; control tap means connected to said further tube means;
a tapered profile on the free end of said further tube means;
a conical, well-shaped seating means releasably engageable with
said tapered free end of said further tube means providing a
wedging seal therefor; means supporting said seating means; means
for deflecting said seating means thereby unseating same; flexible hose
means connected to said control tap means; and a breathing mask on said
flexible hose means.
The Seeler patent relates to an aneroid actuated pressure release device,
particularly for use with a mask and pressure suit combination oxygen regu-
lator.
The Alderfer patent relates to a breathing apparatus wherein the container
tubing is stored in quadrilaterial form. The apparatus is particularly designed
for use in connection with parachutes where at high altitudes it is necessary
to supply the parachutist with a tank of compressed air or oxygen.
This application relates to an apparatus which contains a breathable mixture
of gas for a prolonged period and, when acuated, provides about ten minutes
of gas to the user. The gas is contained at high pressure in a lightweight
long tube coiled about a combined fill valve, pressure regulator flow control,
pressure gauge and actuation mechanism. The coil being constituted by a
plurality of turns in the form of a laterally flattened helix having in lateral
cross-section a pair of straight parallel sides so as to define the central
hollow space within the coil. Rejected claim 1 reads:
A compact breathable gas supply comprising a hollow coil of
pressure resistant tubing for containing breathable gas at
high pressure, the coil being constituted by a plurality of
turns of said tubing, each of the turns having a pair of
elongated parallel straight sides separated by curved end
portions to define a turn with a central opening and the turns
being disposed side-by-side with the said central openings
thereof in register to provide a corresponding hollow space
within the coil extending over the plurality of turns, regulator
means mounted within the hollow space of the coil and to which
the interior of the coil is connected for providing a sub-
stantially constant flow of lower pressure gas from the tubing;
and actuator means mounted within the hollow space of the coil
and operable by an operator for substantially instantly actuating
the gas supply.
The applicant argues that the shape of his apparatus is directed to a patent-
able advance in the art. The shape of a device, however, only has patentable
merit when such shape results in some unobvious functional connotation.
The question which is to be considered is whether the applicant's helical coil
in the form of a "laterally flattened helix" is directed to some unobvious
functional result.
The applicant indicates that the device is light and compact; that it is
adapted to withstand abuse as it is being carried on the users body; and
that it is readily carried comfortably when not in use. These are, however,
all desired features, and ones that any good designer of such equipment
must keep in mind. In our view these are not patentable features.
The applicant has argued that his device "is enjoying substantial commercial
success." At the hearing the applicant presented for examination "a
commercial sample of his device, as currently being sold to various authorities."
It is clear that the monopoly covered by refused claims 1 and 2 is not the
same as that indicated by the commercial sample, but clearly relates to a
much broader monopoly. The refused claims only relate to a gas supply
apparatus, and not to the complete unit as, for example, is described in
claim 17, which unit compares favorable to the description of the "commercial
sample."
The applicant maintains that his device "does have sufficiently substantial
advantages directed at the point of the invention to render these claims
patentable." In our view what the applicant has done, as explained in his
brief to the Board, is to describe a technical assessment of what occurs in
constructing his device. For example, the applicant states: "... with this
mode of construction there is less flattening in tubing than there would
be in a coil wound in a circular cylinder, and therefore there is a reduction
in the Bourdon forces and also corresponding reduction of impact on such
flattening on the internal volume of the resultant storage reservoirs. In
practical cases something of the order of a 10% increase in volume can be
obtained ...."
First the feature of "less flattening in the tubing" is a relative thing. It is
clear, however, that under normal circumstances there would be more flattening
at the corners of the device in the present application than for a similar size
circular cylinder; the reason being that the bend or curve would be much sharper.
As for "the reduction in the Bourdon forces," there will be a reduction on
the straight line pipes, but possibly an increase at the relatively sharp
bend at the junction of these pipes. The applicant does state that, "the
device is structurally stable and nothing more than this very light-weight
fastening arrangement [strapping] is required." Therefore, the Bourdon
forces do not appear as an important factor, possibly even less so in the
device as described in accepted claim 3. As to the matter of "a 10% increase
in volume," this is a known fact or one that can be calculated by a person
skilled in the art.
Refused claims 1 and 2 are essentially directed to a combination of a hollow
coil of pressure resistant tubing containing a breathable gas at high pressure,
and a pressure gauge and means for controlling the output gas to the user.
That combination is shown to be old by the patents to Cowley, which disclose
broadly the same elements, functionally interrelated in the same manner to
produce substantially the same results. In refused claim 1 the only difference
from the cited art is that the elongated hollow helical coil is in "the form
of a laterally flattened helix having in lateral cross-section a pair of
straight parallel sides." It is observed that the rectangular shaped reservoir
coils are shown by Alderfer, and the circular cylinder shaped reservoir coils
are shown by Cowley. As previously mentioned the particularly claimed form
or shape would have to be directed to some unobvious functional connotation.
We are satisfied, from a complete analysis of the facts, that there is no
unobvious functional connotation for that particular shape. Claims 1 and 2, in
our view, should be refused.
Claim 4, which depends on refused claim 1 and on accepted claim 3, relates to
a diaphram capable of failure under gas pressure. The use of such diaphrams
are known (see Canadian patent 612,722 to Coffman). It is clear that this
addition to refused claim 1 would not make it an allowable combination. Claim 4
is considered allowable when made dependent on accepted claim 3.
The comments of the court, in Lowe Martin Co. Ltd. v Office Specialty Manu-
facturing Co. Ltd. (1930) Ex. C.R. 181, are pertinent: "The mere carrying
forward of the original thought, a change only in form, proportion or degree,
doing the same thing in the same way, by substantially the same means, with
better results is not such an invention as will sustain a patent" (page 187
line 9), and "It is always necessary to consider the rights of the general
public to avoid monopolies on such simple devices as would occur to anyone
familiar with the art."
We are satisfied that claims 1, 2 and claim 4, insofar as claim 4 is dependent
on claim 1, fail to disclose a patentable advance in the art. The applicant
has achieved a result with a change only in form, doing the same thing in
the same way, by substantially the same means, as is taught in the prior art
(Vide, Lowe Martin v O.S.M., supra).
The Board recommends that the decision in the Final Action to refuse claims 1,
2 and 4 be affirmed, however claim 4 will be accepted if amended to read
dependent on claim 3 only.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I am in agreement with the recommendations of the Patent Appeal Board and
refuse claims 1, 2 and 4, but will accept claim 4 if amended to depend on
claim 3. The applicant has six months within which to delete claims 1 and 2,
amend claim 4, or 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 18thday of December, 1975