COMMISSIONER'S DECISION
OBVIOUSNESS: Flexible metal tubes for toothpaste
Tapered tubes which nest for compact storage or handling prior to filling
have been known for forty years. Use of a sealant on the open end has also
been used since 1936. The applicant expanded the end portion of the tube
to facilitate nesting of tubes coated with sealants. Though the invention
was simple, evidence of commercial success and the long delay in implementing
the improvement is such an active field were factors in holding that the
improvement made was not obvious.
Final Action: Reversed.
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated September 23, 1974, on
application 076,400 (Class 222-92). The application was filed on August
24, 1971, in the name of Thomas D. Brownbill, and is entitled "Flexible
Tubes". The Patent Appeal Board conducted a Hearing on July 7, 1976, at
which Mr. I. Mackinson represented the applicant.
This invention relates to flexible metal tubes used to package such
semi-fluid materials as tooth paste, glue and shaving cream. The applicant
has developed a cylindrical tube particularly suitable for shipping and
storage prior to filling. Figures 1 and 2 below illustrate the alleged
invention.
(see figure I)
Each tube is filled through the lower open end, which is then closed by
folding and crimping. Inside the open end is a layer of sealant (4) which
prevents leakage when the opening is closed. The inventor has made his
tubes conical, so that they may be nested one within another. This gives
rigidity to a package of tubes, and they may be shipped in that form without
deformation and damage. it will be noted that there is a flare at the bottom
of each tube where the sealant is located. This means that when the tubes
are stacked the sealant does not touch the tube next to it. The presence
of the flare means that each tube nests deeper down into the preceding tube,
so that the stack is smaller and considerably more rigid than it would be
otherwise. If there were no flare the sealant layer would act to prevent
the desired nesting of one tube into another.
In the Final Action the examiner rejected the application as lacking patentable
subject matter in view of the following references:
Canadian Patent
695,976 Oct. 13, 1965 Wanderer
U.S. Patent
2,028,112 Jan. 14, 1936 Westin
3,325,048 June 13, 1967 Edwards
British Patent
898,387 June 6, 1962 Duffau
The Duffau patent, which discloses flexible metal tubes used for toothpaste,
is directed to a tapered shape which enables nesting of the tubes for compact
storage or handling before filling.
Figure 3 shown below illustrates the Duffau arrangement.
<IMG>
Westin shows collapsible tubes used for pastes, creams, glue, paint etc. He
seals the end of the tubes after filling to prevent leakage of the contents.
He uses a layer of cement put at the filling end of the tube to form an hermitic
seal. Reference numeral 4 in figure 1 below represents the layer of cementing
material.
<IMG>
The Edwards patent describes a nesting arrangement for storing thin walled
plastic containers. Each container has a stacking ring or shoulder at the lower
portion of tapering sidewalls. This shoulder serves as a stop for each
adjacent stacked container, thereby enabling easy separation of the stacked
containers. They are shotm in Figure 3 below:
(see formula I)
Similarly the Wanderer citation relates to thin-walled plastic containers in
which a shoulder is located at the upper portion of the tapered walls. This is
illustrated in Figure 2 shown below:
(see formula I)
In the Final Action the examiner stated (in part):
The problem which the alleged invention attempts to solve is
clearly set forth on page 2, lines 10 to 13 of the disclosure:
The known sealant layer "prevents one tube from entering the
end opening of an adjacent tube to the extent necessary to enable
the walls to be in surface contact".
The alleged improvement, over the prior art, to which the specific-
ation is directed to solve the above-mentioned problem, lies merely
in having an expanded section at the larger, open end of the known
tube whose sidewall is conical and which is known to have a sealant
layer at the open end, so as to allow stacking of the known sealant
layered tubes (lines 6 to 27 on page 3 of the specification).
Applicant's alleged invention, then, as set out by applicant in
the specification, lies merely in having an expanded portion at
the end of the known tube. The sealant layer, in the known tube,
prevents close stacking of the known conical tubes, and
to solve this problem applicant merely expands the tube end
containing the sealant layer.
It is maintained that to have an expanded portion, as defined by
claims 1, 4 and 5, is a most obvious solution to the aforementioned
problem. The requirement is merely to have a larger, expanded
space for the known sealant layer; one skilled in the art would
easily conclude that an expanded portion solves the problem of
having an expanded area.
Having expanded portions at tube ends is especially obvious as
expanded portions are so old and well known. The patents to
Edwards and Wanderer are again cited as examples of prior art
showing containers whose free open ends are expanded for stacking
purposes.
In his response dated March 24, 1975 to the Final Action the applicant stated
(in part):
The critical point is that the solution proposed by the applicant
to the problem defined in paragraph 1 on page 2 of the Official
Action solves a long standing problem, that is, of the success or
failure of stacked packaging of collapsible tubes of the type contemplated
by the present application. If the solution proposed by the applicant
were so obvious as the Examiner suggests, surely it would have occurred
to a skilled workman before. The fact is that such a solution has not
suggested itself to such a skilled workman and that manufacturers of
the packages defined is the present application have been struggling
with the problems described in page 2 of the specification for years,
until the inventor of the subject matter of this application proposed
the solution that is taught therein. It would be most inequitable, it
is suggested, for the contribution made by the inventor of the subject
matter of the present application to be an outright gift to the
public. The public would not be deprived of the right to do anything
that it is now entitled to do by the grant of claims like those now
before the Office and it is pointed out that one of the objects of
the patent system is to reward innovators with a limited monopoly
in return for the contribution they have made. (they must make
an inventive contribution)
The question to be considered is whether or not the claims are directed to
a patentable advance in the art. Claim 1 reads:
A flexible container comprising a side wall defining a conical tube,
said tube being open at one end thereof and having a truncated conical
section at said open end integral therewith, with the truncated conical
section having a sealant layer on the inner surface and a diameter
expanded beyond the normal wall of the conical tube whereby the smallest
diameter of the conical section is larger than the largest diameter of
the conical tube to enable another tube to penetrate the container to
a depth at which the walls of the tubes are substantially in surface
contact.
It is acknowledged on page 2 of the applicant's disclosure that "tubes are fre-
quently coated with a thin annular coating of a sealant, such as liquid rubber
or similar material which operates after drying to fill any voids which may
be created in the fold to provide a tight seal in the fold." This is the
type of sealing arrangement that is shown in the Westin citation where a ring
of cement is coated on either or both the inner and outer end walls of the tube
to provide a hermetic seal when it is subsequently heated.
Stacking of empty tubes to facilitate shipping, storage, and to prevent crushing
by providing a reinforcing effect is shown in the Duffau patent. On page 2,
the disclosure of the present application states, "While the sealant layer is
usually quite thin (e.g. having a thickness of the order of about 0.3 mm.), it
serves to prevent stacking of a plurality of tubes in which the tubes comprising
the stack are substantially in surface contac[twith each others]."
It is true that the layer would not allow the tubes to telescope as compactly
as if the layer is not present, but it does not prevent stacking altogether since
the taper shaped tube would still fit into the adjacent tube. However it would
be restricted in the distance it would slide in because of the presence of the
layer of glue.
There is consequently some doubt that the stacking of tubes having an adhesive
ring therein would provide the needed reinforcing.
We must agree with the examiner that both Edwards and Wanderer show the concept
of an enlarged end portion in containers. The purpose there, however, is to
facilitate separation of the containers from nested stacks. Neither of them
is concerned with the nesting of containers which are subsequently closed, or
which contain an adhesive ring therein. Therefore, we do not think that either
Edwards or Wanderer really provided a solution to the problem facing the
applicant.
The examiner states that the use of a sealing ring creates a problem in stacking
and it is his contention that an obvious solution to the problem is the ex-
pansion of this area as done by the applicant. Certainly the use of tapered
tubes for stacking or storage has been known for many years. Similarly the
use of a glued portion at the bottom end of the tube has also been known for
a long time.
The additional alteration introduced by the applicant is furthermore quite
simple, and at this point in time might well appear to be obvious. Even the
applicant has referred to the "extreme simplicity of the subject matter of the
present invention" (response of March 24, 1975, p. 2).
What disturbs the Board, however, is that it is fully forty years since the
Westin citation, which shows the use of sealants to close collapsible tubes
for creams and glue. It is even longer since such tubes were made conical
and nested to permit transportation without damage. The only reference in
the final action showing that feature is Duffau (1959). However we have also
had drawn to our attention by the examining staff a very early Canadian
patent, no. 239457, Barrow, Dec. 7, 1920, which also discloses that feature,
and which appears to directly anticipate Duffau.
It took consequently forty years before these two features were brought
together by means of the alteration introduced by the applicant. Yet once
done, as was made clear at the hearing, it had tremendous commercial success.
Why such a successful yet simple, and obviously mechanically desirable im-
provement was delayed so long if it were in fact obvious in the inventive
sense is perplexing. Packages of this type are used in the hundreds of
millions. With such activity and with consequently so much to be gained
by even minor improvements, one might well wonder why the present step was
not taken earlier.
Subsequent to the hearing the applicants agent provided the Board with
confidential information showing extensive licensing of the invention in
Europe and elsewhere which attest to its commercial success and acceptance
by those skilled in this art. He also listed twenty-one patents granted
to the applicant for the invention. This information had not of course been
available to the Canadian examiner when he made his assessment of patentability.
That commercial success may be a factor in assessing ingenuity was recognized
by the Canadian courts in The King v American Optical, 11 Fox Pat. C. 62 at 89.
Similarly it has been held that the simplicity of an invention does not
preclude it being patented (Wright v Adams and Westlake 1928 Ex. C.R. 112
and 1929 S.C.R. 81; Electrolier v Dominion Mfrs. 1933 Ex. C.R. 141 & 1934
S.C.R. 436 and Jamb Sets v Carlton, 1964 Ex. C.R. 377 & 1965 S.C.R. v)
The Board has consequently, concluded that while the invention in question is
indeed simple, and the inventive step is short, the applicant has raised
sufficient doubt about it being obvious that we should recommend that the
rejection be withdrawn.
Gordon A. Asher
Chairman
Patent Appeal Board
Having reviewed the prosecution of this application and the recommendations
of the Patent Appeal Board, I have concluded that the final Rejection should
be withdraw. I direct that the application be returned to the examiner
to resume prosecution.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 30th, day of November, 1976
Agent for Applicant
Smart & Biggar
70 Gloucester St.
Ottawa, Ontario