COMMISSIONER'S DECISION
Obviousness; Anticipation; Section 36; Commercial Success - LAUNDRY SOFTENERS
The application was for a process to treat laundry in driers with paper
sheets coated with conditioning agents such as softeners, deodorants, anti-static
agents and the like. The coated sheets, sold under the Trade Mark "Bounce", were
also claimed. The applicant argued the product claims were allowable despite the
fact that similar products were known for other purposes, because the new use to
which the sheets were to be put were included in the claim. This contention was
rejected and the product claims refused as anticipated. The rejection of the process
claim as being obvious was reversed. There was sufficient ingenuity both in the
fundamental concept and in its adaption to the required purpose to grant a patent.
weight of commercial success and of the grant of foreign patents as indicators of
inventively was discussed. The argument that the Commissioner became functus offici~
when notice of grant was published in the Patent Office Record, and consequently was
obliged to issue a patent,was rejected.
Final Rejection - Modified.
The Patent Appeal Board held a hearing on August 18, 1976, to consider
the final rejection of patent applications 049669 and 236450. These had
been filed by Conrad J. Gaiser on April 24, 1967 and September 26, 1975,
respectively, and assigned to The Proctor & Gamble Company. Both of them
are classified in Class 8, subclass 93.11. At the hearing the applicant
was represented by Mr. Donald F. Sim, Q.C., and Messrs. Gebhardt, Witti
and Hendricks.
The primary purpose of the invention is to treat laundry in clothes driers
with chemical conditioning agents, such as laundry softeners, anti-static
materials, bacteriocides, fungicides, deodorants, or silicones to assist
in ironing. Small sheets of cellulose, paper towels or other flexible sub-
strates are coated or impregnated with the conditioning agents, and then
placed with a load of laundry in the drier. Under the conditions of
agitation, heat and moisture which develop in the drier, the conditioning
agents transfer to the clothing. The substrate may be made in the form
of rolls of tear sheets. One tear sheet is placed with each load in the
drier. This obviously is a very convenient way to soften clothes and t:o
provide the correct measured amount of agent for each load. It also
avoids the inconveniences and difficulties which occurred in the prior art,
where the conditioning agents are added during washing. In that process
detergents react with the conditioning agents, and the latter must be
added to the washing stage at a particular moment in the washing cycle.
This requires additional attention from the operator or the housewife
during washing. The new method of conditioning clothes is effective, simple,
and commercially successful. The applicant's product is marketed by
Proctor and Gamble under the Registered Trade Mark name "Bounce,"
and by its competitors by their Trade Marks "Cling Free", "Fleecy" and
"Caress."
The earlier application is directed to that aspect of the invention where
the carrier is impregnated with the conditioner. The later application,
which is a division of the first, covers substrates coated with the con-
ditioners. Both the products and the process of using them are claimed.
Representative are claim 18 and 1 in application 049,669, which are given
below:
Claim 18 A fabric conditioning article comprising a substrate
impregnated with a fabric conditioning agent which
is removable to a fabric contacting the substrate.
Claim 1 The method of conditioning fabrics which comprises
commingling pieces of damp fabric by tumbling
said pieces under heat in a laundry dryer together
with a substrate impregnated with a transferable
conditioning agent, thereby to effect transfer of
the conditioning agent to the fabric while being dried.
The reasons for rejecting both applications are the same, and for convenience
we may restrict our attention to 049,669. Some claims were refused for
obviousness, and others for anticipation. The examiner applied eight prior
patents, to wit:
United States Patents
2,542,909 Feb.20,1951 Cl.167-84 DeWet
2,634,229 Apr.7,1953 Cl.167-84 DeWet
2,702,780 Feb.22,1955 Cl.167-84 Lerner
2,846,776 Aug.12,1958 Cl.34-45 Clark
2,851,791 Sep.16,1958 Cl.34-90 Olthuis
2,941,309 June 21,1960 Cl.34-60 Cobb
3,138,533 June 23,1962 Cl.167-84 Heim et al
3,227,614 Jan. 4,1966 Cl.167-84 Scheuer
3,283,357 Nov. 8,1966 C1.15-506 Decker et al
He then developed his argument in the following terms:
Clark, Olthuis and Cobb disclose methods of conditioning
fabrics in laundry dryers. The methods comprise tumbling
the fabrics in the dryer in the presence of conditioning agents,
the agents being released so as to be dispersed on the fabrics
at a controlled rate. The conditioning agents taught include
water, mothproofing compounds and disinfectants.
DeWet, Lerner, Heim et al, Scheuer and Decker et al all teach
articles comprising a substrate carrying a certain amount of
conditioning agent. The conditioning agents taught include
germicides, deodorants, and anti bacterial agents. Some of the
conditioning agents exert a softening action on the substrate
carrying them. (DeWet United States Patent 2,542,909). The
conditioning agents can be removed from the substrates by
attrition or by washing out.
Applicant's alleged invention as reflected in the claims and in
applicant's arguments is directed to conditioning damp fabrics
in a laundry dryer while the fabrics are being dried, comprising
commingling with the fabrics a substrate carrying a transferable
conditioning agent. Applicant has argued that his process and
product claims are patentable in that the prior art fails to show
a simultaneous drying and conditioning operation in a laundry
dryer and in that all prior art substrates contain far too little
conditioning agent to be effective for use in a laundry dryer.
Furthermore applicant maintains that the applied references singly
or combined fail to show "the invention" and, in fact, represent
an improper mosaic of references.
The examiner can not agree with these contentions and maintains
that the realization of applicant's process and product is not
unobvious and does not require the exercise of inventive ingenuity.
Fabric conditioning is an old and well known art. It is well
known to condition fabrics during the laundering operation by
introducing a conditioning agent either into the rinse cycle or
a washing machine or onto the dry clothes in a dryer. On given
a problem of where clothes can be conditioned, the obvious answer is
in the washing machine, or in the dryer. In fact, Clark,
Olthuis and Cobb reflect such thinking in their teachings, which
are directed to conditioning of clothes in the dryer. Further-
more, it is deemed obvious for a person skilled in the art that,
since the conditioning of damp clothes in the washing machine is
known, they can also be conditioned in the dryer.
Thus if a person wanted to avoid the disadvantages of detergent-
softener interactions, in the washing machine, and having to wait
for the rinse cycle of the washing machine, he could search the
prior art for means to introduce his conditioner into the dryer.
Clark, Olthuis and Cobb teach three different ways of introducing
a fabric conditioner into the dryer. DeWet, Lerner, Heim et al,
Scheuer and Decker et al teach means of dispensing conditioning
agents wherein the conditioners are removed from a substrate
either by attrition or by being rinsed out into water. Hence,
the use of any of the above taught articles to condition fabrics
in the dryer while they are being dried is an obvious use for
these articles.
Applicants conditioning article, which is distinguished from
the prior art only by a different use is also deemed obvious. A
novel use does not confer patentability on an old product. Some
of the conditioning articles taught in the applied references
contain conditioning agents which are transferable to clothes
if the article is rubbed against the clothes.
It is therefore submitted that the references are pertinent and
that a person skilled in the art would draw on their technical
content to arrive at a process and a conditioning article specified
in the present application. Given a problem to condition clothes,
a person skilled in the art would search the prior art for infor-
mation as to how fabrics have been conditioned in the past, the
kind of fabric conditioners that have been used in the past and
how those conditioners were stored, packaged and dispensed in the
past.
It is admitted that not all the features of applicant's process
and article are shown in the prior art. For instance, the refer-
ences fail to show simultaneous drying and conditioning in the
dryer, the use of a flexible, tear-resistant substrate carrying
a fabric conditioner in a dryer, the selection of a conditioning
agent that is a low melting normally solid substance for use in
a dryer, and a flexible substrate carrying 1.0 to 10 gms
conditioner per 105 sq. inches of substrate.
However, as it was pointed out above, in view of the prior art,
a simultaneous drying and conditioning operation and the use of
a flexible substrate carrying a conditioner are deemed obvious.
The selection of a particular conditioning agent, be it a softener,
a bacteriostat or an antistat, that is suitable for use in a
dryer operation, and is a low melting normally solid substance,
requires only the use of expected skills when presented with all
the known fabric conditioners. Furthermore, it is maintained that
the determination of the optimum quantity of conditioning agent
for the transferal of an effective amount of conditioner in the
dryer falls within the realms of expected skill.
Additional features which can be found in the claims such as the
provision of a tear-resistant, resin sized substrate and the
provision of a continuous perforated roll of conditioning article
for easy dispensation fail to confer patentability on the claims.
Resin sizing to stiffen materials is old and well known and the
provision of a perforated roll of material is a well known method
of dispensing materials.
The claims are therefore rejected for the following reasons:
Claims 1-17 are obvious in view of the applied refer-
ences.
Claims 18-20, 24-26 are anticipated by DeWet, Lerner,
Heim et al, Scheuer and Decker et al.
Claims 21-23 and 27-30 are obvious in view of DeWet,
Lerner, Heim et al, Scheuer and Decker when viewed
with the state of the art.
In considering these grounds for rejection, the Board has been assisted
by the skilful submissions of both Mr. David Watson, Q.C., whose arguments
were in writing, and those of Mr. D. Sim, Q.C. made orally at the Hearing.
We will consider first those claims which were said to be anticipated by
DeWet, Lerner, Heim et al, Scheuer and Decker, i.e. claims 18-20 and
24-26, of which claim 18, reproduced earlier, is representative. Essentially
it covers a substrate impregnated with a conditioning agent. In those
terms it is clearly anticipated by the references, and fails to satisfy
the requirement for novelty expressed in Section 28 of the Patent Act.
Scheuer, for example, describes and claims a paper impregnated with a
germicide transferrable to other surfaces. He mentions specifically some
of the identical conditioners referred to in the applicant's disclosure.
DeWet also describes napkins carrying some of the same conditioners.
The applicant, however, lays stress upon the additional phrases "A fabric conditioning
article," and "which is removable to a fabric contacting the substrate,"
as being important in overcoming that objection. It is his contention that
by labelling an old product by the use to which it is put (provided that
use is new), then the product may be claimed. He concedes that under
American and even British patent jurisprudence it is not possible to reclaim
an old product or device by relabelling it for a new use, though in those
jurisdictions it might well be possible to patent a new method involving
that product, or even a modification of the old product to adapt it to that
new use provided that modification differs in some way from the old product,
and thus is novel. He contends that in Canada, however, the patent law
is different; that a product claim, even if old, when relabelled for a new
use is a good claim;and he points to the finding of the Supreme Court
of Canada in Burton Parsons v. Hewlett Packard (1975) 17 C.P.R. (2d) 97
as supporting that contention. Mr. Sim submitted that at the Burton Parsons
appeal, he, as representing Hewlett Packard,had submitted there that
the Burton Parsons patent covered such old compositions as tomato ketchup,
but the Court had held the claims avoided that anticipation by being relabelled
as to their electrocardiographic use. Whatever might have been said or
concluded by counsel in the heat of argument at that appeal, we believe we
must rely on what was actually stated by the respective courts in their
written reasons for judgement. They present their reasoned view. When we
do so, we must come to a different conclusion than applicant's counsel,
for we find that the courts proceeded on the premise that the compositions were
new.
In the decision of the Trial Court, which like the Supreme Court found for
Burton Parsons, Mr. Justice Noel said (7 C.P.R. (2d) 198 beginning at p. 231):
The defendants then attacked the patent on the basis that
one cannot obtain a patent on an old substance for a new use.
Assuming that there was a meritorious invention made in the
discovery that one can make an electrode cream consisting of
an emulsion, a highly ionized salt with or without a buffer,
defendants say that the Harry reference, showing a cold cream
or skin cream consisting of an aqueous emulsion or an aqueous
solution of an emulsified material, a highly ionizable salt,
namely, sodium phosphate (although there was disagreement
between Mr. Hayes and Dr. Shansky as to whether sodium
phosphate was a highly ionizable salt or not) meets all the
limitations of the claims and one cannot patent the substance
or one cannot get a patent on the old substance for the new
use. The Harry reference, according to the defendants, has
everything that is within the scope of the claims except that
the patentee here says that his is an electrode cream for in-
creasing the productivity between an electrode and the patent
and Harry of the Harry reference says his is a skin cream.
There is, according to the defendants, authority in the United
States and Great Britain to the effect that when that situation
obtains, one cannot patent the substance and the patent in such
a case must be for the use itself and in the present case, defen-
dants say the use itself is unpatentable. Inventions, according
to counsel for the defendants, will not reside where a person
has taken a known compound and found a new use for it. He
must then claim not the compound but only the process in
which it is used. The submission is that one cannot get a pat-
ent on placing a new label on an old substance. The claim must
be framed for the method. Counsel for the defendants even
puts forward that in the present case the patentee cannot get
a valid patent even for the new use on the basis that as the use
here is for the purpose of monitoring the human body and ob-
taining a reading, namely testing, such a device is not patent-
able under the vendible object principle. A patentable process
must be, he says, one relating to the manual or the useful arts,
not the fine arts and not to professional skills and in Great
Britain, under that part of the definition of invention "manner
of new manufacture" it has been held that that term does not
include a method of testing. It is also submitted that for a
process to be patentable, there must be some vendible product
involved and processes for the human body have been consist-
ently rejected. Counsel for the defendants suggests that the
claim should have been not for a method of making this prod-
uct or for the product itself, but for a method of making en-
cephalograms or electrocardiograms consisting of attaching
an electrode to the skin of the patient and the improvement
being to interpose between the electrode and the patent, the
cream. Such a claim, however, would, he says, still be invalid
as the method of treatment of the human body has never been
patentable because it is not related to a vendible object. Def-
endants' submission that Harry's compound is similar to
plaintiffs' and that the former can be used for the latter, or as
an ECG cream is not true.(emphasis added)There is no question
that Harry had an emulsifiable material, an ionizable salt, sodium
phosphate, a buffer, but the sodium phosphate, the salt, was part
of the buffer. It is indeed different from the plaintiffs'
product where there is an emulsified material or there is the emul-
sion plus the salt and plus the buffer. Furthermore, the evi-
dence discloses that sodium phosphate is not a highly ionizable
salt and, therefore, will not provide good conductivity which is
a necessary requirement for plaintiffs' cream. Although Mr.
Hayes attempted in his evidence to say that sodium phosphate
was a highly ionized salt, he was obliged to admit in cross-ex-
amination that it was the salt of a weak acid with citric acid
and not of a strong acid and of a strong base. In para. 15 or
his affidavit Mr. Hayes indeed, when describing a buffer solu-
tion, states this clearly when he says "a buffer system is
usually made up of a salt of a weak acid itself, the selection
depending on the desired pH". As a matter of fact, Mr. Hayes,
as pointed out by counsel for the plaintiffs, at no time suggests
that the sodium phosphate on the Harry emulsion would have
any conductivity whatsoever. It therefore appears to me that
plaintiff's cream is not just a matter of a new use but a dif-
ferent product or combination which, no doubt, has some
similarities to the prior art but it is not, and cannot be the
Harry reference (emphasis added) because the latter does not
provide good conductivity nor was it used for an electrode cream
the latter, of course, being sufficient to dismiss any thought of
the Harry reference having anticipated plaintiffs' patent.
The Federal Court of Appeal (10 C.P.R. 2d, 126) found for Hewlett Packard,
reasoning that the claims did not satisfy Section 36 in that they covered
inoperative compositions. It did not question the finding of the lower
court that the compositions were not anticipated. In his dissent, Mr. Justice
Mackay looked to the functional qualifications in the claims not to avoid
prior art, but as overcoming the objection as to inoperability. He said, at
p. 149:
I think that these limitations as to the use of the invention
and the limitation as to the materials to be used are an answer
to the appellant's submission that among the classifications of the
materials referred to there are some that would be dangerous to
use on the human skin. The patent does not claim that any
emulsion or ary highly ionizable salt could be used.
In reversing the Federal Court of Appeal, the Supreme Court (17 CPR 2d, 126)
adopted Mr. Justice Mackay's reasoning. It said, at p. 105:
In the present case, the invention relates to a mixture and a
process for making it. This mixture is of no fixed composition.
A great many different substances can be used, hundreds if
not thousands, said Shansky. The essential is to combine a
highly ionizable salt with an aqueous emulsion. As a result of
this combination, the wetting action of the emulsion on the
skin makes it possible to use the salt in a low concentration
(from 1 to 10%). If the patent is to have a practical value,
it must cover all the emulsions and salts which can yield the
desirable result, namely, all "emulsions with the outer phase
or the continuous phase being water" and all salts that are
highly ionizable enough to carry an electric current with low
resistivity on the skin excluding only such substances as are
not compatible with normal human skin. The evidence makes
it clear that this was obvious to any person skilled in the art be-
cause the characteristics of suitable emulsions and of suitable
salts were well known.
Significantly it then added:
Only the combination was new.
We cannot, consequently, accept the submission that Burton Parsons stands
for the proposition that old products may be repatented by giving them a new
label to identify the use to which they are to be put.
Mr. Sim did not refer to other jurisprudence to support his contention. On
the other hand there are some Canadian decisions which suggest, some admit-
tedly obliquely, others more directly, that an old device cannot be
repatented without change merely because a new use has been found for it.
We are thinking, for example, of Somerville Paper Boxes v. Cormier 1941
Ex. C.R. 49 at pp. 65-68; of Canadian Raybestos v. Brake Service 1926
Ex. C.R. 187 at 192 and 1928 S.C.R. 61 at 62; of Belding Corticelli v.
Kaufman 1935 Ex. C.R. 152 at the bottom of p. 159 and on p. 160 and 1940
S.C.R. 388 at 390; of Northern Shirt v Clark (1917) 17 Ex. C.R. 273; of
Detroit Rubber v Republic Rubber 1928 Ex. C.R. 29; of Tennessee Eastman v
Commissioner of Patents 1974 S.C.R. 111; and of Bergeron v. DeKermor 1927
Ex. C.R. 181. These decisions recognize that a method of using an old device
may be patentable if novel and inventive, but in the Bergeron decision, for
example, we find:
A man cannot introduce some variations or improvements,
whether patentable or not, into a known apparatus or machine
and then claim as his invention the whole apparatus. (p. 187)
and
In view of the prior art, I am of opinion [sic] that not
only is there no contrivance or device that is new in the
defendant's patent, but that there are no new features in
the combination claimed, the same features have been pre-
viously shown in other electric heaters. (p. 188)
and
... The claim must be limited to what is new.... (p. 196)
In Hosiers Ltd. v Penmans, 1925 Ex. C.R. 92 at 104, it was recognized that:
If a product is known to the trade, its production by a new
process or new instruments cannot make it new.
This principle was reaffirmed in Hoffman-LaRoche v Commissioner of Patents
1954 Ex. C.R. 52 and 1055 S.C.R. 414. At page 56, the Exchequer Court said:
It is essential to the validity of a claim that the thing
should have novelty. This is lacking in claim 14. Aldehyde
is admittedly an old product and the submission that when
it is prepared according to the appellant's process there
is sufficient novelty on which to found a claim for it when
so prepared cannot be accepted. The weight of judicial
authority in Canada and the United States is against it....
(underlining added)
The Supreme Court (p.417) classified as an "artificial attribution"
the suggestion that the product gained novelty by virtue of the new process
for preparing it. We think it would be equally artificial, and unacceptable.
to hold that the use to which the present product is to be put renders it
novel.
As a perusal of the cases cited above demonstrate, the Canadian Courts have
not hesitated when considering novelty to rely upon both British and
American jurisprudence. The underlined portion of the quotation above
from Hoffman-LaRoche v. Commissioner of Patents testifies to that proposi-
tion. Indeed it has long been recognized that where there is a correspondence
between the patent laws it is quite proper to look to both British and
American jurisprudence for instruction, though not for direction, always
provided that due weight is given to such differences in the laws as do
exist. See, for example Hunter v Carrick (1884) 10 O.A.R. 449 at 468;
Curl-Master v Atlas Brush (1967) S.C.R. 514 at 527 & 530; Farbwerke Hoechst
v Commissioner of Patents (1966) S.C.R. 606 at 614; Van Heusen v Took Bros.
1929 Ex. C.R. 89 at 100; Leonard v Commissioner of Patents (1914) 14 Ex.C.R.
351 at 361; Lawson v Commissioner of Patents (1970) 62 C.P.R. 107;
Commissioner of Patents v Winthrop Chemical, 1948 S.C.R. 46; or Tennessee Eastman
v Commissioner of Patents 62 C.P.R. 11 and 1974 S.C.R. 111.
Consequently in the present circumstances we consider it useful to consider
what was said by the U.S. Court of Customs and Patent Appeals in In Re Thau,
O.G. Sept. 7, 1943, 14, where we find at p.15:
It is our opinion that not only is the weight of authority
contrary to appellant's contention, but that it is clearly
contrary to the spirit and in our opinion contrary to the
letters of the patent laws that patents should be granted
for old compositions of matter based upon new uses of such
compositions where such uses consist merely in the employ-
ment of such compositions.
Similarly in In re Lawson 108 U.S.P.Q. 132 we find at 134:
It has been held in the past that where the prior art structure
is substantially similar to the structure sought to be patent-
ed, even though its function might be different, the similarity
in structure alone is sufficient to negative patentability,
In re Griswold, 33 C.C.P.A. (Patents) 799, 152 F.2d 1014, 68
USPQ 176. It has also been held that where it is obvious that
the prior art structure is substantially similar to and would
perform the same function as the structure sought to be
patented, the latter is unpatentable regardless of whether the
prior art patentee intended the structure to be used for
the same purpose. In re George Langford, 17 C.C.P.A. (Patents)
844, 37 F.2d 753, 4 USPQ 320. The rationale behind the denying
of a patent under these circumstances appears to be that there
is no invention in perceiving that the product which others
had discovered had qualities they failed to detect; more than
a new advantage of a product must be discovered in order to
claim invention. General Electric Co. v Jewel Co., 326
U.S. 242, 249, 67 USPQ 155, 158 (1945).
That the law in the United Kingdom is the same has been recognized by the
applicant, and is confirmed, inter alia, by Gadd and Mason v The Mayor of
Manchester (1892) 1X R.P.C. 516; Sharp & Dohme v Boots Pure Drug (1928)
XLV R.P.C. 153; Adhesive Dry Mounting v Trapp (1910) 27 R.P.C. 341; and
In re L'Air Liquide Societe (1932) 49 R.P.C. 428.
We are satisfied then that the rejection of claims 18, 19, 20, 24, 25 and 26
for anticipation was proper and should be sustained.
Claims 21, 22, 23, 28, 29 and 30 were rejected as being obvious in view of
the references. We cannot see that they add anything of a patentable nature
to those claims rejected for anticipation, and consequently conclude that
they were properly refused (Durable Electric v Renfrew Electric 1928 S.C.R. 8
-and Babcock & Wilcox's Application 1952 R.P.C. 224). Claims 21, 22 &, 23
for example, bring in such features as tear lines to permit easy separation,
or sizing to stiffen the paper, all features well known in association with
paper rolls. Scheuer, for example, at col. 2, lines 26-30 mentions the
use of sizing in column 2 commencing at line 27. Lerner mentions subdividing
sheets to provide desired quantities of active substances. These alterations
are all common expedients in the roll paper art. Claims 28, 29 & 30 are res-
tricted to the presence of softening agents, which feature are not only obvious
from the prior art, but even, we believe, directly anticipated, for in DeWet
(U.S. 2,542,909), col. 1 at line 53, it is indicated that many of the quaternary
ammonium compounds are fabric softeners. The Heim et al citation mentions not
only the fabric softening qualities of these materials (col. 2, line 33), but
also their potentiality for transferral from a substrate onto fabrics contact-
ing the substrate (col. 2, beginning at line 70). The compounds mentioned in
claim 30 may be found in the Scheuer patent. Consequently the art which antici-
pates claims 18-20 and 24-26 also anticipates 28-30.
Of the product claims then, only 27 is left. We will consider it below.
The process claimed was not, it would appear, anticipated. The examiner refused
it on the proposition that it was obvious. When we turn to the prior art on
which he relied in support of that proposition, we find firstly that conditioning
of clothes in the washer was known, but with the attendant disadvantages and
problems discussed in the disclosure. Secondly that spraying of clothes in driers
with water and other liquids were also known. Additionally known, as has been
previously indicated, are paper towels impregnated with germicidal agents and
the like, which towels are used to spread the agents where needed by wiping. What
was not known, however, was to condition clothes in driers with towels impregnated
with solid conditioners. With the advantage of hindsight, it may seem but a
short and simple step to put that all together and come up with what this inventor
has done in this case, and we can appreciate why the examiner made that leap. We,
however, have not been so intimately involved with the prior prosecution as was
the examiner, and from the advantage point where we stand have not been able to
leap so far.
The applicant has stated both in his written and oral arguments that the prior
art references are "exceedingly remote" from the invention claimed here. We
would not put it quite so strongly. Nevertheless important differences
are apparent when we look at claim 1 (supra). The manner in which the prior
art driers were used according to the record involved the use of liquids, not
solids. They were operated with the heat turned off. They did not involve
commingling damp fabrics with solid substrates impregnated with solid condition-
ing agents transferable from the substrate to the clothes.
Other differences are added in the subsidiary process claims, such as the
amount of conditioning agent on the substrate, the use of antistatic agents, the
presence of resin stiffening agentc, etc.
We have been impressed by the fact that none of the references suggest the con-
ditioning of fabrics in a laundry drier using a substrate carrying a conditioning
agent, which is the fundamental concept in this invention. The idea of, the par-
ticular problems in moving from conditioning in a washer to conditioning in a
drier, and the particular means for making that change were not conceived of
previously.
The fallacy in ex post facto analysis has been expressed by Fletcher Moulton
in British Westinghouse v Braulik (1910) 27 R.P.C. 209 at p.230, where he said:
I confess that I view with suspicion arguments to the effect
that a new combination bringing with it new and important con-
sequences in the shape of practical machines, is not an inven-
tion because, when it has 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. This ex post facto
analysis of inventions is unfair to the inventors, and in my
opinion is not counteranced by English Patent Law.
In a Canadian case, Preformed Line Products et al v. Payer, Fed. Ct. C, November
5, 1975, it was put succinctly at p. 7:
...great care must be taken in examining an invention ex post facto
to determine when there is that element of inventiveness required,
for a very great number of extremely useful and truly ingenious
inventions often appear to be perfectly obvious and devoid of origin-
ality when examined after they have been invented.
Mr. Sim himself cited somewhat fancifully an appropriate quotation from Milton,
- Paradise Lost, Book VI at line 498:
Th'invention all admir'd, and each, how hee
To be th'inventor miss'd, so easie it seemd
Once found, which yet unfound most would have thought
Impossible.
At the hearing reference was made to certain external evidence of ingenuity,
and in particular to the extensive commercial success enjoyed by the invention.
Since its introduction to the market in 1975, there have been over one billion
individual applications of the invention in North America. Licences have been
taken out by Merck-Calgon and Tenneco, and several competitors subsequently
rushed to market their own imitations, though none of them, apparently, had prac-
tised the invention previously. We are aware, of course, of the danger in
standing too firmly upon the quicksand of "commercial success" (cf. Niagara Wire Weavi
v Johnson Wire 1940 S.C.R. 700 or Bergeon v DeKermor 1927 Ex. C.R. (8)). However
in The King v American Optical, 1950 Ex. C.R. 344 at 371, and in other cases,
it was concluded that under appropriate circumstances commercial success, though
not sufficient in itself to establish inventive ingenuity, may yet be an indicator
of ingenuity. From them we conclude that where there is doubt as to the presence
of invention, commercial success may add weight to an applicant's case (General
Tire v Firestone 1972 R.P.C. 457 at 503.) In the present case we believe the
tremendous and sudden commercial success of the invention may be taken as an
indicator of ingenuity.
As another external indicator of invention the applicant pointed to the issuance
of the corresponding United States patents (3,442,692 May 6, 1969 and 3,895,128
July 15, 1975) and the acceptance of the corresponding German Application P19 55
803.1-43. The frailty of such evidence is well recognized, and Mr. Sim was not
prepared to lean too heavily upon it. For whatever it may be worth, we have
taken note of it. We also note that the German claims are restricted to a pro-
cess where there is the added limitation that the substrate is a paper or textile
material, and that the product claim was unacceptable. The earlier United States
patent is limited to eight process claims comparable to claims 1-9 of the
Canadian application. The later United States patent contains product claims
extremely circumscribed in scope, and much more restricted than those we have
already concluded are unacceptable in Canada.
Having weighed all these arguments, we have come to the conclusion that the
rejection of claims 1 to 17 inclusive should be withdrawn.
We turn finally to claim 27, which reads as follows:
27. An article as in claim 18 in which the substrate in a dry
paper sheet impregnated with an amount of agent of about
1.0 to 10 grams per 105 square inches.
In doing so we think it important to keep in mind that where there is invention i~
conceiving an idea of what is desired, there need be no further invention in con-
structing a device adapted to carry out that idea. Nevertheless that device
may be patentable if novel.
In Reliable Plastics v Louis Marx 17 F.P.C. 184 at 198, for example, we find:
The fact that it was easy to put the idea into practise and
that all that was needed to do so was to apply well known
techniques to well known substances does not prevent the em-
bodiment of an idea from patentability if the idea itself
involved the exercise of inventive ingenuity.
Similarly in The King v Uhlemann Optical 1950 Ex. C.R. 142 at 162 (Affirmed
1952 - 1 S.C.R. 143):
The fact that it was easy to connect the temple arm at the point
where Uhlemann did once the idea of doing so had been thought of
is thus no evidence of lack of invention. There is support
of this in Hickton's Patent Syndicate v. Patents and Machine
Improvements Company Ltd. (1909), 26 R.P.C. 339. There the Court
of Appeal reversed the judgment of Swinfen-Eady J., who had
held the patent invalid, and Fletcher Moulton L.J., at p. 347,
made the following comments with regard to the views expressed by
the trial judge:
"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. But let me give an example. Probably the most
celebrated Patent in the history of our law is that of Bolton
and Watt, which had the unique distinction of being renewed
for the whole fourteen years. The particular invention there
was the condensation of the steam, not in the cylinder itself,
but in a separate vessel. That conception occurred to Watt
and it was for that that his Patent was granted, and out of
that grew the steam enigne. Now can it be suggested that it
required any invention whatever to carry out that idea when
once you had got it? It could be done in a thousand ways and
by any competent engineer, but the invention was in the idea,
and when he had once got that idea, the carrying out of it was
perfectly easy. 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."
We refer also to 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 desider-
atum'. If an inventor does this, and also shows how to
attain the desired effect by some new contrivance, his
invention is patentable....(underlining added)
to Electrolier Manufacturing v Dominion Manufacturers 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....
and to Merco Nordstrom v Comer 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)
Invention may, therefore, be present notwithstanding the fact that there was
no difficulty in putting the idea into effect once it had been conceived.
In so far as claim 27 is concerned, it is on the evidence before us novel.
It includes some elements particularly designed to carry out the inventive con-
cept, and in that respect goes beyond what has been done in the other product
claims. We consequently are of the opinion that it should not be rejected on
either the ground of anticipation or obviousness. We are doubtful that it includes
all the elements necessary for its new purpose, and is stated with sufficient
distinction and explicitness to satisfy Section 36(2) of the Patent Act. See
Northern Shirt v Clark supra at p.285. There is not included, for example,
any indication of the softening temperature of the conditioning agent.
Section 36 was not applied by the examiner because of the other grounds on which
he based his refusal, nor did the applicant have the opportunity to argue it.
Consequently we recommend that the claim be remanded to the examiner to con-
sider that question. We are, in any event, satisfied that the claims appearing
in U.S. Patent 3,895,128 would satify this requirement, and would advise they
be accepted if the applicant wished to substitute them for claim 27.
At the Hearing Mr. Sim referred to the lengthy and chequered course of the prior
prosecution of this application, including as it did an earlier final rejection
on the ground that the claims were too broad for the disclosure, a notice of
allowance, a withdrawal from allowance became of possible conflict, said with-
drawal occurring too late to avoid publication of notice of grant in the Patent
Office Record of Nov. 4, 1975, and eventually the final rejection for different
reasons than those made previously. Needless to say such developments would be
frustrating and disheartening to applicants. To such extent as they might be
avoidable, they are especially regrettable. In our view, however, the prior
history of an application should not deter an examiner from withdrawing an
application from allowance, nor from making a final rejection when after due
deliberation he has concluded that an application should not proceed to
grant. In the present circumstances we ourselves have concluded that the
latest rejection was at least in part justified. The responsibility that
Section 37 of the Patent Act imposes upon an examiner required him not only
to encourage inventors and inventive progress by granting patents where justified,
but also to protect the public interest by rejecting applications (and claims)
which do not warrant patenting, since to do so would unduly impede industrial
effort (cf. Crossley Radio v. C.G.E. 1936 S.C.R. 551, Niagara Wire v Johnson
Wire 1939 Ex. C.R. 273 and Lowe Martin v. Office Specials 1930 Ex. C.R. 181).
In making his comments about the prosecution, Mr. Sim suggested that when
the patent had been allowed previously, or at least once notice of the grant
had been published, the Commissioner became functus officio with respect to
the application, that he could not withdraw it from allowance, and the only
proper remedy now is to reallow the application at once. Section 75(1) of
the Patent Regulations does, of course, state that the Commissioner may
withdraw a notice of allowance "either before or after the payment of the
final fee." The regulation puts no limitation to such withdrawal because
of publication of notices of grant. In this instance delivery of the patent
had not been made, the applicant never received a patent nor was one
dispatched to him, and the notice of withdrawal was made before the notice
of grant was published. Subsection (2) of Section 4 of the Patent Act states
what are to be the duties of the Commissioner. They include "all acts and things
requisite for the granting and issuing of patents" (underlining added). These
duties obviously include sealing the patent, signing it, delivery to the
patentee, or at the least placing it in the mail for delivery to the patentee,
and all the other steps specified in Sections 13 and 47 of the Act. Until
those steps had been completed it can hardly be said that the Commissioner
had discharged his duties. The patentee had not obtained a patent as called
for in Section 28.
We know of no Canadian patent cases indicating when the Commissioner does in
fact become functus officio, nor did Mr. Sim refer to any. However in
In Re Jamieson Construction Co. Ltd. and City of Edmonton, (1930) 3 West-
ern Weekly Reports, 23, the Supreme Court of Alberta came to the conclusion
that a public official (in that case an arbitrator) was not functus officio
until all his duties had been discharged. To quote:
An arbitrator is not functus officio until his award is actually
made, and the power given to the arbitrator and the Court under
sec. 15 may be exercised "at any stage of the proceedings" which
means at any stage before the proceedings have come to an end
by a completed award.
We believe the same principles would apply to the Commissioner of Patents,
and he could not be considered functus officio until he had completed all
his duties in issuing a patent.
Reference was also made to the harm done to the applicant's interest by
virtue of the notice in the Record. It was suggested by Mr. Sim that such
notice led to the filing of a protest leading to this final rejection.
Previously, however, the Acting Commissioner of Patents was informed by an
agent of the applicant that the alleged protester had been forwarded a copy
of the application by the applicant himself before November 4, 1975. That
being so, the notice can not be said to have caused the harm alleged to it.
The Notice gave very little technical information about the invention,
and nothing, of course, comparable to what was already available in the
United States patent, 3442692, of May 6, 1964, the Belgian patent, 741922
of January 30, 1970, and U.S. Patent 3895128 of July 15, 1975. The Canadian
specification was not made available to public inspection at the Patent
Office, and consequently Section 10 of the Act does not come into consideration.
All this is not to suggest, of course, that it is any way desirable for
notices of grant to appear when a patent has been withdrawn, nor that
every effort should not be made to prevent them, but in the course of
processing thousands of patents a year, some mishaps do unfortunately occur.
We turn now to the companion application 236450. It raises the same issues
as those we have just considered, and we reach the same conclusions, mutatis
mutandi, with respect to it. Related to it, however, there is an additional
question.
The examiner has required the applicant to proceed with only one application
because he considered that there is only one invention present. At the
hearing Mr. Sim agreed that this was so, and we are likewise persuaded that
there is no inventive difference between claims directed to carriers coated
with conditioning agents, and those where the carrier is impregnated with the
agent. When coating occurs, perforce some impregnation will take place, and
the process of impregnation will likewise result in some coating. The arti-
ficial division between these two aspects of the invention developed during
the earlier prosecution in an attempt to avoid conflict with other applicants.
We recommend that the applicant should now proceed with only one application.
The subject matter we have found allowable in application 236450 should be
claimed in the same application as the subject matter found allowable in
049669, and only one proceed to grant. He is entitled to claim broadly substrates
carrying (whether by impregnation or coating) conditioning agents.
It should be noted by the examiner that this application was placed under
special order on July 30, 1976, and further prosecution should proceed as
expeditiously as possible.
Gordon Asher
Chairman
Patent Appeal Board
I have considered the report and recommendation of the Patent Appeal
Board, and the other documents relating to this case. I have reached the
same conclusions as those which the Board came to. In application 049669
I refuse claims 18-26 and 28 to 30. The rejection of claims 1-17 is
withdrawn. The rejction of claim 27 for obviousness is also withdrawn
and I remand the claim to the examiner to make the assessment called for
by the Board. I also direct that subject matter now claimed in applications
049669 and 236450 which has been found allowable be consolidated into one
application. If the applicant wishes to appeal my decision under Section 44
of the Patent Act he has six months to do so. Otherwise the amendments and
deletions required by the Board are to be made within that same time period.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 14th.day of October, 1976
Agent for Applicant
Gowling & Henderson
Box 466, Station A
Ottawa, Ontario