COMMISSIONER'S DECISION
OBVIOUSNESS: Roll of Closure Tabs for Milk Containers
A continuous roll of web material is used in a machine for the
construction of tetrahedron shaped container for milk and other fluids.
A repeated pattern of stamped holes, which are covered by tabs, are
arranged in a predetermined staggered relationship on the web. The
prior art did not teach the same concept.
Rejection: Reversed.
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated May 22, 1975, on application
131,930 (Class 229-13). The application was filed on January 7, 1972,
in the name of William O. Young, Jr. and is entitled "Pull Tab Paper."
The Patent Appeal Board conducted a Hearing on September 15, at which
Messrs. N.S. Hewitt and A. Messulam represented the applicant.
The application relates to the preparation of a continuous length of
web material to be used in the construction of containers for liquid
filling goods, for instance tetrahedron containers. Figure 20, shown below,
is illustrative of the alleged invention:
(see formula I)
In the Final Action the examiner refused the claims as "lacking invention
over the disclosure of Mobley, when combined with the common general
knowledge of the staggering of closure facilities in the roll making art,
as evidenced by Paxton." The examiner also cited Canadian Patent 437,800 -
Nov. 5, 1946 to shoe that a roll with adjacent rows of articles on a web
is common knowledge. In that action the examiner stated (in part):
Should it be necessary for the machine which receives a feed
from such a roll to receive a staggered arrangement of web
material then it is held to be but expected skill to so provide
a staggered roll. To stagger the holes simply to have a
staggered arrangement is a mere matter of chord.
It is clear from the above art, particularly faxton that to
provide a uniform diameter roll one should locate the
attached members uniformly across the web width. This is all
applicant does.
The Mobley patent discloses a web of sheet material having spaced openings
with pull tabs heat sealed over the openings. That invention is illustrated
by the following drawing showing part of Figure 1:
(see formula II)
The Paxton patent discloses the basic idea that closure facilities on a
web of material must be in staggered relationship to each other in order
to distribute the thickness of the closure facilities uniformly when the
material is rolled up. Figure 2, shown below (in part), is illustrative
of that invention:
(see formula III)
In the response (dated Oct. 21, 1975) to the Final Action the applicant
states that the concept of the invention is to separate the perforating and pull
tab applying operations from the filling operation so that the filling speed
is not retarded by the speed of the perforating-pull tab applying operations.
In doing this it is necessary to make a roll of packaging material which
has openings therein which are covered by a pull tab for access to the
interior of the package. This roll can then be transported for use in
a filling machine. In that action the applicant also stated (in part):
In particular, without the separation of the machine of
Mobley into two separate machines as in the present invention,
the roll of the present invention does not occur. Thus, the
packaging material as claimed in claims 1 to 3 of this applica-
tion is predicated upon the concept of the separation of the two
machines, and it is submitted that in the absence of the
disclosure of the concept of the two machines in the prior art,
there can be no disclosure or teaching of the roll of the
present invention. Thus, the roll of the present invention,
i.e. the packaging material is the product of the machine
forming the holes and tabs in the sheet material which is withdrawn from
the machine and is subsequently used as a roll for feeding a
machine for forming the packages. It is respectfully submitted
therefore that a person skilled in the art reading Mobley would
have no reason to wish to modify Mobley so that the holes 11
and 12 covered by the tabs 13 and 14 are staggered in their relationship
along two middle and in relation to the longitudinal direction of the
sheet material parallel lines, i.e. that such openings and tabs
are alternately located on one side of the center line the same
distance, each of the openings being spaced the same longitudinal
distance from each other with tabs sealed over the openings. There
would be no advantage in Mobley in doing this and in fact, there
would be substantial disadvantages in that the machine of Mobley
would have to be substantially modified to achieve this both with
respect to the mechanism for packaging the holes and covering the
holes with the tabs of the mechanism for turning the sheet material
into sealed packages. It is only when it is desired to roll the
sheet material from the packaging and tab closing mechanism into
a roll before it is used to form packages in a packaging machine
that the critical features of the present invention become important.
As neither Mobley nor Paxton teaches such a separation into two
machines, then it is respectfully submitted that it would not be
obvious to a person skilled in the art to modify Mobley and in fact,
a person skilled in the art on being instructed to modify Mobley
so as to stagger the holes 11 and 12 as suggested by the Examiner
would refuse to accept such instructions as clearly such a
modification of Mobley could only lead to complications and an
unworkable apparatus.
The question to be considered is whether or not the applicant has made
a patentable advance in the art. We will now consider the disclosure and
claims. Claim 1 reads as follows:
A circular, cylindrical supply roll containing a web of
packaging material, said web being provided with a repeated
pattern of stamped holes, which holes are covered by pull
tabs attached to the web around said holes, said pull tabs
covering said holes being arranged in a staggered or zig-zag
relationship along two mutually and in relation to the
longitudinal direction of the web parallel lines.
We note that the applicant has a copending application (131,929) of even
date which is directed to the method and apparatus for producing the
packaging material as described in this application. We are mindful there-
fore that this decision may have some bearing on the outcome of that
application.
We have considered with care the able arguments of Messrs. Hewitt and
Messulam which were presented at the hearing.
In the present circumstances we find it understandable that at first blush
the alleged invention may appear unsophisticated. We believe however, that
this may be a situation where an idea or concept may be at least partly
at the heart of the invention. The solution to the question which we must
consider in these circumstances is not however, without its difficulties.
At the hearing the applicant stated that the present invention is predicated
on two inventive steps: the concept of the separation of his machine into
two machines operating independently; and the specific roll adapted for
the new machine to carry out that concept. It is related, as we see it,
to a realization of the lack of efficiency in production in the prior art
machines; to an idea or concept and a novel practical application in the
solution to this problem.
It is well established that the inventive step - the merit, may be in the
idea or concept. In other words the merit of an invention may be in the
recognition of the existence of a problem, or in clearly realizing some
particular useful end to be obtained. It is also well established that the
recognition of the concept may well merit patent protection even though the
means of realizing the concept are straightforward given the concept.
A leading ease on the matter of the "recognition of the idea or concept" is
Hickton's Patent Syndicate v. Patents and Machine Improvements Company Ltd.
(1909) 26 R.P.C. 339. At page 347, Fletcher Moulton L.J. set forth the
applicable law as follows:
The learned Judge says: 'An idea may be new and original
and very meritorious, but unless there is some invention
necessary for putting the idea into practice it is not
patentable.' With the greatest respect for the learned Judge,
that, in my opinion, is quite contrary to the principles of
patent law, and would deprive of their reward a very large
number of meritorious inventions that have been made. I
may say that this dictum is to the best of my knowledge
supported by no case, and no case has been quoted to us
which would justify it.... To say that the conception may
be meritorious and may involve invention and may be new and
original, and simply because when you have once got the idea it
is easy to carry it out, that that deprives it of the title of
being a new invention according to our patent law, is, I
think, an extremely dangerous principle and justified neither
by reason, nor authority.
...
In my opinion, invention may lie in the idea, and it may
lie in the way in which it is carried out, and it may lie
in the combination of the two.
Lindley, L.J. stated in the case of Fawcett v. Homan (1896) 13 R.P.C. 398
at 405:
The merit of an invention very often consists in clearly
realising some particular useful end to be attained, or,
to use Dr. Hopkinson's language, 'in apprehending a
desideratum'. If an inventor does this, and also shows
how to attain the desire effect by some new contrivance,
his invention is patentable....
These doctrines have been acknowledged to form part of the Canadian juris-
prudence. For example, consider the following language of Rinfret J. in
Electrolier Manufacturing Co. Ltd, v. Dominion Manufacturers Ltd.(1934)
S.C.R. 436 at 442:
The merit of Pahlow's patent is not so much in the means
of carrying out the idea as in conceiving the idea
itself (Fawcett v. Homan), supra..,.
This case, in our view, also comes within the interdiction expressed by
McLean J, in Merco Nordstrom Valve Co. v. Cromer (1942) Ex. C.R. 138 at 155:
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 presumption
of thought, design, or skillful ingenuity in the invention and
novelty in the combination. (emphasis added)
We agree with the applicant that the cited art does not disclose "the concept
of the separation of his single machine into two machines operating
independently." It was also made clear at the hearing that "all sorts of
problems" were encountered in the solution to the "slow production problem"
oyer and above "the recognition of the existence of such a problem." It
was also made clear at the hearing that the total production using the
"new supply roll" is "much more efficient" and that the speed of production
was increased "very substantially."
There was considerable discussion as to the inventiveness of the staggered
relationship of the tabs and the stability of the roll. We agree that the
cited art may be pertinent to some features of the invention. We are not
persuaded however, that it teaches or renders the "total concept" obvious.
We must remember, as previously mentioned, that in testing the question of invention,
one must not simply question the novelty and obviousness of the means for
realizing the invention, but also of the concepts underlying the invention;
if the concept and desiderata are new and possessing a degree of ingenuity,
then that is sufficient to support a patent. It is clear that the applic-
ant has produced a new combination to produce essentially a known result
in a better, cheaper or more expeditious manner (vide: Nordstrom v Comer,
supra). We deem it apposite to quote here the warning sounded by Fletcher
Moulton L.J. in British Westinghouse Electric and Manufacturing Co. Ltd, v
Braulik (1910), 27 R.P.C. 209, where he observed:
I confess that I view with suspicion arguments to the effect
that a new combination, bringing with it new and important
consequences in the shape of practical machines, is not an
invention, because, when it has once been established,
it is easy to show how it might be arrived at by starting
from something known, and taking a series of apparently
easy steps....
In view of the evidence before us we are therefore constrained to conclude
that there is "ingenuity in the invention" when we consider the "total
concept" of the problem, or the recognition of it and the solution thereof.
We turn now to the scope of monopoly covered in the instant claims. Claim 1
will, for convenience, be reproduced again as follows:
A circular, cylindrical supply roll containing a web of
packaging material, said web being provided with a repeated
pattern of stamped holes, which holes are covered by
pull tabs attached to the web around said holes, said pull
tabs covering said holes being arranged in a staggered or
zig-zag relationship along two mutually and in relation to
the longitudinal direction of the web parallel lines.
We are not satisfied that this claim, nor claims 2 and 3, limit the scope
of monopoly of the total concept, as discussed above, with sufficient
particularity and distinctness. We are mindful that the examiner did not
refuse the claims on this ground, nor was it necessary, because they were
refused as lacking invention. We suggest they be redefined in the follow-
ing terms:
A circular, cylindrical supply roll containing an elongated
web of packaging material from which tetrahedron shaped
packages are to be made, said web being provided with a
repeated pattern of stamped holes which provide for dispens-
ing the contents of the formed package, which holes are
covered by pull tabs attached to the web around said holes,
said applied pull tabs being arranged in a staggered or
zig-zag relationship located along two parallel lines each
offset the same distance from the longitudinal center line
of the web, and wherein said elongated web is rolled into
a cylindrical form in which the outside diameters on each
side of said roll are substantially equal, the cylindrical
roll being suitable for transfer to and use in a machine
which forms and fills said packages.
We think it important that the manner in which the pull tabs are arranged
on the roll be more particularly described in the claim since, as was
stressed by Mr. Hewitt at the hearing, this is a distinctive feature serv-
ing to distinguish the applicant's invention from the prior art.
In summary, we are satisfied that the applicant has made a patentable
advance in the art. We therefore recommend that the decision to refuse
the application be withdrawn. The claims presently on file should be amend-
ed as indicated above.
J.F. Hughes
Assistant Chairman
Patent Appeal Board
I am in agreement with the findings of the Patent Appeal Board. According-
ly, I direct that the application be returned to the examiner for further
prosecution. In the event that the applicant elects to make the amendments
called for by the Patent Appeal Board voluntarily it would appear that
further prosecution will be unnecessary.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 27th. day of September, 1976
Agent for Applicant
Marks & Clerk
Box 957, Station B
Ottawa, Ontario
K1P 5S7