COMMISSIONER'S DECISION
DIVISION: Apparatus and method for manufacturing flexible tubing.
This is a divisional of application 072,053. The issue was whether an apparatus
could be considered to have been claimed in a prior application which had
claimed only the method of using the apparatus. The Board decided that the
same subject matter had under the particular circumstances been claimed in the
parent, and provided certain amendments were made the application should proceed.
Final Rejection: Reversed.
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated April 10, 1975, on appli-
cation 167,447 (Class 271-9). The application was filed on March 29,
1973, in the name of Algimantas P. Urbutis et al, and is entitled
"Shirred Casing Article, Method And Apparatus For Making Same." The
Patent Appeal Board conducted a Hearing on September 8, 1976, at which
Mr. A.P. Bull represented the applicant.
The invention relates to the art of shirring flexible tubular material.
More particularly, it relates to an apparatus and method for manufacturing
flexible tubing shirred and compressed into self-sustaining hollow sticks
that are useful as sausage casings. This application is a divisional of
application 072,053, which divisional issued to patent 927,417 on May 29,
1973 with claims directed to an apparatus only. It is also pointed out
that divisional application 072,053, supra, is in turn a divisional of
application 935,456 which issued to patent 884,816 on November 2, 1971.
That patent contains claims directed to an apparatus and a method relating
to shirred tubing.
In the Final Action the examiner refused the "divisional status" of this
application. The reason for such rejection is that the subject matter of
method claims 4-10 was not claimed in the parent application 072,053. He
also stated that the apparatus defined in claim 1 "is not especially adapted"
to carry out the method in either claims 4, 9 or 10. He also stated (in part):
Throughout the lengthy prosecution the office has maintained the
position that the instant application was not entitled to a
Divisional Status as it contained claims to a subject matter
which was not claimed in its parent application No. 072053.
In his first response dated August 21, 1973 the applicant con-
curred with the office's requirement by cancelling the offending
claims in order to overcome the issue of granting the Divisional
Status, however, in the ensued prosecution he re-submitted
cancelled claims arguing (in his responses of May 3, 1974 and
September 19, 1974) that these method claims are but a further
aspect of the invention defined in the apparatus claims and as
such should be accorded a Divisional Status not withstanding
the fact that the subject matter of these claims was not claimed in
the parent application.
The applicant himself has conceded that claims 4-10 were never
entered in the parent application No. 072053 although they were
present in application No. 935456, arguing further that his under-
standing of this requirement at the time of co-pendency of
application No. 072053 and the present application was that it
was not necessary to include these claims in the parent
application No. 072053.
Considering now applicant's remarks it is evident that the
subject matter of claims 4-10 was not claimed in the parent
application No. 072053, the fact of applicant's erroneous under-
standing of the requirement for such a claiming is of course
irrelevant.
Further, the applicant's contention that the method claims
4-10 correspond to the apparatus claims and are therefore
only a different aspect of the same invention can not be
entertained.
The issue of unity of invention involving an apparatus and a
method is governed by Rules 59 and 60. Rule 59 imposes the
condition that an apparatus must be especially adapted to carry
out the method claimed in order to fall within the permissive
extent of the Rule to not regard the two types of claims as
being directed to more than one invention.
The applicant responded to the Final Action on July 7, 1975, and on April 27,
1976. We quote from the response of April 27, 1975 (in part):
While applicants will readily consider that claims 4 to 10 (which
correspond to method claims 7 to 10 in this application as filed)
do not appear as such in the corresponding parent application
Serial No. 072,053, they cannot agree that this is necessary to
satisfy the requirements of Section 38(2) of the Patent Act.
Thus while the Examiner is taking the position that method claims
4 to 10 or their equivalent must have appeared in application Serial
No. 072,053 at some time before it was allowed, the requirements
of Section 38(2) of the Patent Act provide no basis for such a restrictive
view. Section 38(2) of the Patent Act reads in its entirety as follows:
"Where an application describes and claims more than one
invention the applicant may, and on the direction of the
Commissioner to that effect shall, limit his claims to one
invention only, and the invention or inventions defined
in the other claims may be made the subject of one or more
divisional application, if such divisional applications
are filed before the issue of a patent on the original
application; but if the original application becomes
abandoned or forfeited, the time for filing divisional
applications terminates with the expiration of the time
for reinstating or restoring or reviving the original
application under this Act or the rules made thereunder."
(underlining added).
If we consider the underlined portion only, it is clear that provided
the present divisional application is directed to a single invention
which has been defined in the other claims then the requirements
of this Section of the Patent Act are satisfied. This is the view that
applicants have consistently adopted in their various submissions
to the Patent Office since the objection to divisional status
due to the presence of the method claims was originally raised.
It therefore appears that one of the major criteria to be met by
the claims of a divisional application is that they relate to a
single invention. If they do, then automatically the provisions of
Section 38(2) of the Patent Act are met because the invention embraced
by all the claims has been defined in the claims of the corresponding
parent application. Applicants consider therefore that it would be
most expedient to establish first to the Patent Appeal Board's
satisfaction that there is no doubt that all of the present claims
are directed to a single invention which has been defined in one or
more claims previously present in application 072,053 as required
by Section 38(2) of the Patent Act and hence the present application
is properly entitled to the divisional status claimed. If this is
done then whether or not claims 4 to 10 were ever present as such in
application No. 072,053 is irrelevant as if it is true that the
apparatus of claims 1 to 3 is especially adapted to carry out the
method of claims 4 to 10 then claim 1 is a claim broader in scope
than any other so as to satisfy Rule 60 of the Patent Rules and the
present application is one "that describes and claims an apparatus
especially adapted to carry out the process" as required by Rule 59.
In such circumstances the apparatus and method claims merely
represent different aspects of the same invention which applicants are
appropriately entitled to claim in a single application as
established by the Supreme Court of Canada in Baldwin International
v. Western Electric 1934 S.C.R. 94.
The applicant also referred to the Libby-Owens-Ford v. Ford (S.C.) decision.
We will discuss that decision later.
We have considered with care the able arguments made by Mr. Bull at the
Hearing.
What we must determine is whether the invention defined in claims 1-4 was
or was not claimed in the parent application. In doing so we turn first to
Section 38(2) of the Patent Act which reads (in part):
Where an application describes and claims more than one in-
vention the applicant may, and on the direction of the
Commissioner to that effect shall, limit his claims to one
invention only, and the invention or inventions defined in
the other claim may be the subject of one or more divisional
application, if such divisional applications are filed before
the issue of a patent or the original application...."
(emphasis added)
It is clear from this provision that all claims in a divisional application
must be for "the invention... defined in the other claims" of the parent
application. It is also clear that the "invention" must have been claimed
in the parent application.
Relevant to our consideration are the comments of the Supreme Court in
Libby-Owens-Ford v. Ford Motor Co. (1970) S.C.R. 833, where Mr. Justice Hall
referred to Section 38 to clarify the meaning of the word "invention" as
used in Section 58 of the Patent Act. At page 841 he stated:
The established practice of the Patent Office of allowing both
apparatus and process claims or process and substance claims
in a single patent indicates that process claims are apt to be
considered, in a proper case, as being only different aspects of
a single invention covering either an apparatus or a substance.
With(while) an infringement of either kind of claim will give rise to
a right of action, this does not mean that such a patent covers two
inventions. Although it is expressly provided that a patent is
not rendered void by reason of the fact that it contains more than
one invention, this is certainly not to be presumed. In the present
case, appellant has in no way shown that the method claims constitute
a separate invention distinct from the apparatus claims. (emphasis added)
It is to be observed that Mr. Justice Hall limited his comments to one
existing "in a proper case." Our concern should be, then, whether this
is a proper case for holding that the method claims are for the same
invention as is protected by the apparatus claims, which did appear on the
parent application.
When we look at claim 4, for example, we find that it contains all the
elements included in claim 1, and no other elements. We find in it the
flexible tubing, the mandrel, the means for shirring the tubing, and the
annular restraining passage. In short, it is but a restatement of the
same subject matter as appears in the apparatus claim. It defines the
way in which the apparatus would normally be used, and in all probability
the only way in which it could be used.
We are consequently, brought to the conclusion that this is a "proper
case" to hold that the invention of the process claim was claimed in
the parent application
The applicant has proposed an amendment to claim 1 to read: "...a mandrel;
means for advancing a flexible tubular casing about said mandrel to and through
a shirring passage..." We recommend that this amendment be accepted because
it ensures that the claim more clearly satisfies Section 36(2) of the Patent
Act. Such amended claim 1 would read:
A machine for producing coherent self-sustaining sticks of
shirred flexible tubing comprising in combination, a mandrel;
means for advancing a flexible tubular casing about said mandrel to
and through a shirring passage; means for shirring such tubing on
said mandrel; and annular passage means adjacent said shirring means
to engage the shirred tubing and compact the same on said mandrel.
It was also agreed at the Hearing that the passage in claim 4 which reads:
"wherein a predetermined pattern of pleats is formed in the tubing," should
be deleted for lack of full support in the disclosure. Claim 4 would then
read:
The method of shirring flexible tubing into a coherent self-
sustaining stick which comprises advancing a flexible tubing
over a mandrel to and through a shirring passage and then
advancing the pleated tubing through an annular restraining
passage, subjecting an outer surface of the pleated tubing
to a restraining force and compacting said tubing about the
mandrel.
We must also determine whether or not this amended claim 4 is but another
aspect of the same invention covered by claim 1.
It is our view that the above amendments to claims 1 and 4 overcome the
examiner's objection that the apparatus of claim 1 would not carry out the
method of claim 4, for they are now of substantially the same scope. These
claims are now directed to but two aspects of the same invention.
Claims 5, 6, 7 and 8, which depend on claim 4, add variants which can
also be carried out by the apparatus of claim 1. These claims then are
also acceptable in the present application.
In regard to claims 9 and 10 the applicant stated that "they are prepared
to remove these claims from the application if this will assist in placing
it in order for allowance." In any event we are satisfied that the apparatus
of claim 1 is not especially adapted to carry out the method of claims 9 and
10, because these claims also cover further subject matter beyond that recited
in claim 1. Claims 9 and 10 therefore should be refused.
The applicant also submitted a proposed claim 10. This claim in our view,
however, should be refused for the same reasons as apply to claims 9 and
present 10.
.
In summary, we recommend that the amendments to claims 1 and 4 be accepted,
and that amended claim 4, and claims 5, 6, 7 and 8 be allowed to remain
in the present application. We also recommend that instant claims 9 and 10
and proposed claim 10 be refused.
J.F. Hughes
Assistant Chairman
Patent Appeal Board
I have considered the prosecution and the findings of the Patent Appeal
Board. It is my decision that amended claims 1 and 4, and claims 5, 6,
7 and 8 are to be accepted. I refuse however, claims 9 and 10, and
proposed claim 10. The applicant has six months in which to make the
proposed amendments, and to cancel claims 9 and 10, or to appeal this
decision under the provisions of Section 44 of the Patent Act.
J.H.A. Gari‚py Agent for Applicant
Commissioner of Patents
Smart & Biggar
Box 2999, Station D
Dated at Hull, Qu‚bec Ottawa, Ontario
this 22nd. day of December, 1976