Patents

                        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