COMMISSIONER'S DECISION
Obviousness: Method of Mixing Liquids
Claims 1, 2, 7 and 8 were refused as being obvious in view of cited art.
Rejection: Affirmed.
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated June 26, 1974, on application
055,435 (259-51). The application was filed on June 26, 1969, in the
name of Jan-Erik Ostberg et al, and is entitled "Method And Apparatus For
Moving Of Liquid Phases In Industrial Processes."
The application relates to a method of producing movement in a predetermined
path of liquid, particularly liquids at high temperature such as metallic
melts. The reason for selecting a particular flow path may be to achieve
a desired effect, such as mixing or homogenizing of a liquid or melts.
In the Final Action the examiner refused claims 1, 2, 7 and 8 as failing
to define patentable subject matter over the following citations:
Canadian Patents
90,425 Dec. 13, 1904 King
53,249 Aug. 13, 1896 Powe
In that action the examiner stated (in part):
The rejection of claims 1, 2, 7 and 8 is maintained and the
reasons for such rejections are:
These claims specify substantially the same system as that
disclosed in the primary reference. The applicant has merely
abstracted this system and emphasized the circulatory features
thereof by detailing the construction of the pounder element.
These claims, however do not patentably differentiate from King's
system. King's device, from the drawings, is suspected of having
a concave lower surface to enhance the uniflow-type of circul-
ation. Little is said about this element in the King disclosure.
Nevertheless, it is considered an obvious step to replace the
King pounder 34 (if it is in fact solid) with a hollow funnel
shaped pounder to improve the uniflow efficiency of the device when
such is desired as for washing rigid materials such as gum-
rubbers etc. Such a replacement is not only shown to be obvious
by the Secondary reference which uses such an element "M" but
is suggested to be unnecessary by the terminology "of the usual
funnel type" used by Powe to indicate that convex-concave type
liquid circulators and pounders are conventional in the agitating
and mixing art of this nature.
In the case, then, where Kings' system does use a funnel type
pounder, these claims are anticipated by the King disclosure.
~n the improbable, but alternative case where the King pounder 34
is solid, the mere use of a funnel type pounder M as used by Powe
is obvious to those skilled in the art as no inventive step is
necessary to make the substitution.
The applicants argument that the references merely accomplish a
small degree of uniflow liquid motion through the meshes of the
fabric is not cogent for two reasons. The first reason is that a
clothes washer does not normally operate on one cloth at a time
but a plurality thereof. Hence the floor pattern will not likely
predominately permeate the cloths but will circumvent such.
The second reason is that washers function to mix soap, bleach, water
and other reagents even before and after the clothes have been
added or removed from the machine respectively. In these modes
of operation (preventing localized bleaching of clothes or
cleansing the receptacle) there is no doubt that the uniflow
pattern claimed by the applicant will be produced by the same
means defined by the cited primary reference and involving the
same method steps. Improvement on the primary reference is mani-
fest in the Secondary reference.
In his second response dated October 31, 1974 to the Final Action the applicant
presented new claims and stated (in part):
With reference to the proposed near method claim l, it will be
noted that it is directed to a method for producing "a substantially
rectilinear and unidirectional flow within a body of liquid in a
container". The claim goes on to recite that a liquid propelling
member immersed in the body of the liquid is reciprocated in sub-
stantially rectilinear coincident paths in both directions with the
liquid propelling member being disposed at a distance from the walls
of the container. The method claim also calls for the member to
have a concave face with walls substantially parallel to the direction
of reciprocation at their free edges "in one direction of movement
and a non-concave face facing in the other direction of movement".
All of the above noted limitations were contained in previous
method claim 1. However, the newly proposed method claim 1 recites
more clearly and distinctly the manner in which the
liquid propelling member interacts with the liquid to
provide the substantially rectilinear and unidirectional
flow recited in the first portion of the claim. The new claim
recited, in part, that "upon the movement of the member in such
one direction it produces a substantially larger resistance to
said movement, and thereby exerts a larger force on the liquid
in said body of liquid, than upon the movement thereof in the
opposite direction, thereby to produce flow of the liquid in
said one direction." The claim further recites that "upon the
movement in said opposite direction the liquid flowing in said
one direction with respect to said member adjacent the periphery
thereof moves inwardly into the concavity of the concave face".
...
As noted in the reply of December 23, 1974, both King and Powe
deal with the production of what is essentially a turbulent or
churning motion. It is not believed that the structures shown
in these patents are capable of producing rectilinear and uni-
directional flow within a body of liquid nor is there any suggestion
in either patent that it would be desirable to do so, The operators
of the King and Powe devices will operate the devices in such
a manner as to obtain as much turbulence and agitation as possible
in order to effect cleaning of the fabrics or clothing being washed.
Neither of these devices are designed for or devoted to performance
of the method set forth in claims 1 and 7 and accordingly favourable
consideration thereof by the Board is respectfully requested.
Insofar as apparatus claims 2 and 8 are concerned, applicant will
rely on the remarks made in the response of December 33, 1974.
Neither King nor Powe in any way suggest apparatus incorporating
a liquid propelling member having a concave face with the free edges
of the face being substantially parallel to the rectilinear path
of movement of such liquid propelling member thereby to achieve the
unidirectional flow as set forth in claim 2.
The same considerations would also apply to the De Coster, Jackson
and Owens references. None of these devices are designed for or
devoted to the production of a rectilinear and unidirectional flow
within a body of liquid. Indeed it is quite likely that a person skilled,
in the art and observing these structures and the agitating and
turbulent motion of the liquid which they produce would be led away
from the concept of the present invention entirely.
The King citation discloses a clothes washing machine which operates by
forcing wash water through the clothes. The forcing or circulating device,
called a pounder in this citation,~~ constructed for substantial coincident
rectilinear movement, but which also has a facility allowing it to be pivoted
to any position in the wash receptacle, The pounder has a convex conical
upper surface, and a lower surface which, although not adequately described,
is clearly of a concave or funnel shaped configuration. Claim 1 of that
citation reads:
The combination of a hinged foldable support provided with
a vertical pivot extending longitudinally of the support
and projecting therefrom, a horizontally-swinging frame mounted
on the pivot and arranged to fold transversely of the support,
a pounder, and longitudinal bars connected at their inner
ends to the horizontally-swinging frame and at their outer ends
to the pounder and arranged to swing both vertically and
horizontally independently of the said swinging frame, said
bars being also arranged to fold the pounder substantially
longitudinally of the support, substantially as described.
The Powe citation relates to a clothes washing machine. The forcing or cir-
culating device, called a plunger in this citation, is described as being of
the useful funnel-type shaped configuration.
This application relates to a situation where a body of molten or liquid
material within a container is caused to move in a predetermined direction or
path by moving back and forth in the container a member which is out of contact
with the walls of the container and which has such a shape and motion that
it impels the fluid material vigorously when moved in one direction and
less vigorously when moved in the other direction so as to produce movement
substantially in the first direction. The device preferably has two opposed
faces, one concave and the other convex with the concave face pointing in
the direction of the desired movement. The body has the free edges substantially
parallel to the direction of movement of the body, and is moved back and
forth in coincident rectilinear paths.
The question to be considered is whether proposed amended claims 1, 2, 7
and 8 are directed to a patentable advance in the art.
It is of interest to note that in the United States the Board of Appeals
reversed the examiner, but then the Board made a further search and rejected
the claims on the teachings of the newly discovered references. That decision
was subsequently reversed by the Court of Customs and Patent Appeals. The
remarks of that Court are worthy of note. They read (in part):
The rejection of appellants' method claims must be reversed.
Nothing in the references cited by the Examiner or the board
clearly suggests a method for producing a "rectilinear and uni-
directional flow within a body of a liquid". On the contrary,
all of the prior art of record deals with the production of what is
essentially a turbulent or churning motion. Accordingly, the
method set forth in claims 12 and 13 would not have been obvious
from the presence in the art of structural elements of different
devices, none of which devices was designed for or devoted to
performance of that method.
Of concern to us of course is whether the citations used by the Canadian
Patent Office clearly suggests a method for producing a "rectilinear and uni-
directional flow within a body of a liquid." That according to the applicant
is the essence of his invention. It is observed, however, that the primary
reference (King) cited in the Final Action was not of record in the decision
of the Court of Customs and Patent Appeals. It is clear, for example, that
the references, DeCoster, Jackson and Owens, which were considered by the
U.S. Court, do not show the same control linkage as that disclosed by King.
We turn now to a consideration of the proposed amended claims. Claim 1
reads:
A method for producing a substantially rectilinear and unidir-
ectional flow within a body of liquid in a container,which
comprises substantially rectilinearly reciprocating in coincident
paths in both directions a liquid propelling member which is
immersed in said body of liquid and disposed at a distance from
the walls of said container and having a concave face with walls
substantially parallel to the direction of reciprocation at their
free edges in one direction of movement and a non-concave face
facing in the other direction of movement whereby upon the movement
of the member in such one direction it produces a substantially
larger resistance to said movement, and thereby exerts a larger
force on the liquid in said body of liquid, than upon the movement thereof
in the opposite direction thereby to produce flow of the liquid in
said one direction and that upon the movement in said opposite direction
the liquid flowing in said one direction with respect to said member
adjacent the periphery thereof moves inwardly into the concavity of
the concave face.
The applicant argues that he believed that the structure shown in the King
and Powe citations "are not capable of producing rectilinear and unidirectional
flow within a body of fluid...." This of course is a point in dispute which
we will attempt to resolve.
We observed that the King citation discloses a device for forcing or
circulating fluids with substantially the same rectilinear movement as
that of the present application. That rectilinear movement in the refer-
ence is brought about by parallel bars elements 26 and 27. The slight skew
motion is a function of the radii and the useful arcs generated of and by
elements 26 and 27 would in our view definitely assist in maintaining
coincident and substantially rectilinear motion. Any "tolerance" during
a stationary agitation is embraced by the terminology used in the refused
claims, which employ the description "substantially rectilinear ...."
We note, therefore, that the essential difference from the prior art
resides in the shape of the plunger. The applicant argues that the particular
shape of his plunger promotes the desired rectilinear and unidirectional flow
of the fluid. The shape of a device, however, only has patentable merit when
such shape results in some "unobvious" functional effect or result. We
observe that in the King citation the structure or combination is claimed.
In the present application claim 1, for example, is not only directed to
the device, but is also directed to a technical assessment of flow patterns
which occur when his device is in operation.
The uniflow patterns discussed by the applicant may, in our view, inherently
exist whenever such apparatus, including that shown by King, are put into
operation. The mere addition of such descriptive terms to the King disclosure
is not of patentable significance, and as such merely represents "observation
of an existing or an inherent phenomenom." That a uniform flow pattern
may not exist under all modes of operation in the King-type device is not of
importance.
The applicant also attempts to rely upon the phraseology, "free edges of
a concave face ... substantially parallel to the rectilinear path of movement,"
to remove the rejected claims from the configuration of the Powe agitator.
The term "edge " represents a line where two surfaces intersect. The edges
of the King or Pose agitators may be said to be substantially parallel to
their rectilinear path of movement. That would apply even more so to the
DeCoster citation of record in the proceedings of the prosecution in the
United States.
The applicant's contention that unidirectional flow cannot be produced with
a funnel type concavity is not well taken. In our view a funnel type plunger
in a liquid bath would produce a pumping action patentably indistinguishable
from that produced in shapes such as "hemispherical." Once the chamber, when
in operation, is filled (part air-part liquid) the moving liquid will be
propelled in "slug-like" fashion by a downward force. We are satisfied that
substantial. unidirectional flow then is achievable with a funnel type plunger.
We will concede that the particular shape of the applicant's device might be
somewhat more efficient. In our view, however, no unobvious functional
result has been attained.
Claims 1 and 2, in our view, therefore, are not directed to patentable
advance in the art. Claims 7 and 8, which refer to claims 1 and 2 respectively,
merely add design features which do not make them allowable over refused
claims 7 and 8.
We believe that the arguments used for the allowance of claims 1 and 2 would
be more appropriate if a restriction was added to limit them to the structure
of figure 3. Therefore, in our view, claims 1 and 2 could be accepted if
amended to include "a pumping pipe-shaped body member ...."
We think that the following quotation of Maclean J. in Niagara Wire Weaving
v Johnson Wire Works Ltd (1939) Ex. C.R. at 273, is pertinent. "Small
variations from, or slight modifications of, the current standards of construct-
ion, in an old art, rarely are indicative of invention; they are usually
obvious improvements resulting from experience and the changing requirements
of users," and at page 276, "No step is disclosed there which could be described
as invention. There is not, in my opinion, that distinction between what
was known before, and that disclosed by Lindsay, that called for that degree of
ingenuity requisite to support a patent. if those patents could be support-
ed it would seriously impede all improvements in the practical application
of common knowledge."
The comments of the court, in Lowe Martin Co. Ltd. v Office Specialty Manu-
facturing Co. Ltd. (1930) Ex. C.R. 181, are also of interest: "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 18/ 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, 7 and 8 are not directed to a patentable
advance in the art. The applicant has achieved a result with a change in
form only, producing a result, by substantially the same means, as is taught or
inherent in the prior art.
The Board recommends that the decision in the Final Action to refuse claims
1, 2, 7 and 8 be affirmed. Claims 1 and 2 could be accepted if amended to
include the proposed amendment discussed above. Claims 7 and 8 would be also
allowable if made dependent on amended claims 1 and 2.
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, 7 and 8. I will, however, accept these claims if amended
along the guide lines suggested, The applicant has six months within which to
delete or amend claims 1, 2, 7 and 8, 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 6th. day of January, 1976