COMMISSIONER'S DECISION
CLAIMS BROADER THAN DISCLOSURE: Cleaning Automotive Castings
Original claims specified a plurality of cages moving through a blast
cabinet. Applicant filed a later application using a single cage and
due to subsequent conflict proceedings is now attempting to have the
single cage arrangement claimed in this (earlier) application.
Rejection: Affirmed.
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated February 4, 1975, on appli-
cation 989,192 (Class 51-4). The application was filed on April 28,
1967, in the name of Ardee H. Freeman et al, and is entitled "Method And
Means For Continuous Surface Treatment." The Patent Appeal Board conducted
a Heaxina on December 1, 1976, at which Mr. P. Beck represented the
applicant.
This application relates to a process and apparatus for cleaning heavy
metal articles such as automotive engine castings. The article is moved
through a blast cabinet where particulate material is directed against the
surface by centrifugal blasting wheels located within the cabinet. While
moving through the blast cabinet the article is rotated, thereby ensuring
that all surface areas will be treated to remove foundry sand, dirt and
scale. Figures 1 and 2 (below) show how the process is conducted.
(see formula I)
(see formula II)
Dans la figure 2, 1e num‚ro 36 designe la piece en fonte qui doit ˆtre nettoy‚e,
1e numero 20 indique une cage pour transporter cette piŠce tandis que le num‚ro
48 repr‚sente une piŠce dej… nettoy‚e.
En bref, il s'agit de placer les pieces en fonte dans une serie de cages ouvertes
qui tournent sur elles-mˆmes tandis qu'elles passent dans la chambre de d‚capage
de fa‡on que toutes les surfaces soient exposees au jet nettoyant. Le proc‚d‚
sur lequel porte la revendication 1 a une port‚e plus large que cela, ‚tant donn‚
qu'il nest aucunement fait mention de la cage. L'examinateur a rejet‚ les
revendications 1-3 parce qu'elles etaient trop larges et a d‚clar‚:
1) leur portee est plus etendue que l'invention d‚crite
dans le m‚moire,
2) i1 leur manque au moins une des caract‚ristiques
essentielles du proc‚d‚ d‚crit dans le m‚moire.
Dans sa d‚cision finale, l'examinateur a d‚clar‚ (notamment):
Les caract‚ristiques essentielles qui sont absentes dans les
revendications ci-dessus et ainsi font que ces mˆmes revendi-
cations ont une port‚e plus ‚tendue que l'invention telle
que d‚crite sont:
1) que les piŠcrs sont plac‚es dans une cage ouverte
et support‚es par elle, et
2) que la cage ouverte et les piŠces qu'elle contient
pivote sur elle-mˆme tout en avan‡ant dans la chambre.
L'invention telle que d‚crite surmonte certains problŠmes
retrouves dans les r‚alisations ant‚rieures pour le traitement
de surface de piŠces de m‚tal lourdes, comme par exemple les
culasses de moteur pour v‚hicules automobiles, pour enlever
le sable, les salet‚s, les barbures, etc. Dans les r‚alisations
ant‚rieures, ces piŠces de m‚tal ‚taient install‚es sur un axe
pour pouvoir ainsi pivoter au cours du nettoyage. Le chargement
et le dechargement de ces piŠces lourdes prenaient beaucoup de
temps et les surfaces n'‚taient pas complŠtement expos‚es au jet.
Pour surmonter ces problŠmes, 1e demandeur a con‡u une invention
en vertu de laquelle toutes les operations de manipulation des
piŠces seraient m‚caniques et automatiques (voir le dernier
paragraphe de la page 5).
Cette disposition est d‚crite en d‚tail et illustr‚e par 25
figures et esquisses qui illustrent les piŠces dans leurs cages
qui avancent dans la chambre et pivotent. Il faut remarquer
que le m‚moire descriptif ne pr‚cise pas que les cages ne sont
pas n‚cessaires ou que les piŠces peuvent ˆtre nettoy‚es sans
cages.
Applicant has argued in the above letter and others prior thereto
that the inclusion of the above essential characteristics limits
applicant to the specific preferred embodiment described in de-
tail in the disclosure. This is not true and therefore not
acceptable. There are numerous details described in the dis-
closure which are not recited in the claims and not required
therein. The cages however are not seen and have not been
described as an obvious detail. They stand out as essential,
yes, even central to the method and apparatus disclosed. As
applicant has stated on page 6, line 5, "in the practice of
this invention, use is made of a plurality of open cages which
are adapted to be transported for recycling through the machine
with the cast metal block supported therein".
Applicant has further argued that the main method object of
his invention is to fully expose the workpieces to the abrasive
blast media. In support of this he refers to the paragraph
commencing on page 2, line 28 and terminating on page 3. The
assumed deduction to be made from this statement of object
being that no cages are required as they are not mentioned in
the said statement. however, it is pointed out that in the
descriptive part of the disclosure the completeness of exposure
is described at all times in conjunction with workpieces supported
in cages. Several variations of cages are discussed on pages 6
and 7 to make maximum exposure of the workpieccs to the blast
media possible. Again, nowhere is it stated that as an alternative
and for the purpose of full exposure, no cages are necessary.
Neither, is there any discussion as to how workpieces without
cages would be supported and rotated while passing through
the abrasive blast zone. Therefore, applicant's argument with
respect to the broad method object of his invention is not
acceptable. The rejection of process claims 1, 2 and 3
therefore is maintained.
In a brief response to the Final Action the applicant withdrew rejected
claims 1 and 3 and replaced them with new claims 1 to 4. He stated (in part);
By the present amendment, the applicant has included an essential
characteristic which was requested by the Examiner. That characteristic
is the open cage or barrel, and by its inclusion the scope of the
claims has been restricted to overcome the broadness objection raised by
the Examiner. The barrel or cage itself does not have any longitudinal
movement but merely has rotational movement. The presence of a cage
was considered an obvious detail and it is conceded that such an element
is essential to the successful operation of the invention. However,
the claims do not call for a plurality of cages and a plurality
of said cages is not essential to the operation of the invention.
New claim 1 reads:
A continuous cleaning apparatus comprising an elongated barrel,
said barrel having an open feed end and an open discharge end
to permit the axial movement of parts therethrough, feed means for deliver-
ing parts to said feed end one at a time, discharge means for receiv-
ing parts from said discharge end one at a time, cleaning means
positioned along said barrel and external thereto for cleaning a
part carried therein, said barrel being of skeletal form with open
portions in its periphery to permit cleaning media from said
cleaning means to enter and pass through said barrel, means
for advancing a part past said cleaning means, rotation means
connected to continuously rotate said barrel to cause a part
therein to continuously rotate as it is cleaned and advanced
past said cleaning means, and means at said feed end for remov-
ing a part front said feed means and disposing it in said barrel.
Mr. Beck stated that the new claims submitted in response to the Final
Action now include the essential characteristics, and that this overcomes
the examiner's objection relating to the absence of essential elements.
The only question to be considered is whether the new claims are broader
in scope than the invention described.
At the Hearing Mr. Beck emphasized that the rejected claims are nearly
identical to claims 35, 36 and 37 as originally filed. He reasoned that
the applicant's inventive concept was expressed in the originally filed
claims, and submits that this serves as a basis for amending the disclosure
to support them. If such claims, as properly read, did in fact disclose
the broad invention, he would be entitled to amend the disclosure to include
that broad invention.
Original claim 35 is an independent claim, with claims 36 and 37 dependent
thereon. It reads as follows:
In a process for the surface treatment of articles of large
dimension or weight by throwing particulate treating material
onto the surfaces of the articles, the steps of advancing the
articles in lengthwise alignment along a linear path from an
entrance area through a blast area to an exit area, throwing
particulate treating material onto the articles during
movement linearly through the blast area, and rotating the
articles about an axis parallel and aligned with the direction
of movement during passage through the blast area uniformly to
expose the surfaces of the articles to the particulate treating
material thrown thereon during passage thereof through the
blast area.
It is established law that a specification is to be read and construed as
a whole. Therefore in construing original claim 35 with reference to the
entire specification we must consider the whole disclosure and drawings as
originally filed.
The objectives of the invention set out in the disclosure are found on pages
2 and 3. They are said to be increased efficiency of operation and "an
assembly capable of automatic operation." Further reading of the disclosure
outlines the "concepts" of the invention at pages 5 and 6 where we find:
The concepts of this invention reside in the construction and
arrangement of equipment for mechanically handling the metal parts
throughout the operation and which is automated for substantially
continuous operation to provide for a high speed process which
makes use of a minimum amount of manual labor and materials thereby
materially to reduce the cost of processing per unit output of
the machine.
In the practice of this invention, use is made of a plurality of
open cages 20 which are adapted to be transported for recycling
through the machine with the cast metal block supported therein
during travel of the cages from the loading section to the unloading
section and through a blast section in between. (underlining added)
As for the drawings, all 25 figures relate to an arrangement utilizing a
plurality of cages moving through a blast cabinet.
In support of his rejection, the examiner directed the applicant's attention to
Leithiser v Pengo-Hydro Pull (1974) 2 F.C.R. 954 which held certain claims to
be broader in scope than the invention disclosed. At the Hearing Mr. Beck
countered with the Burton Parsons v Hewlett Packard Supreme Court Decision
1976 S.C.R. 555, a more recent decision of a Higher Court which he submitted
is authorative on this topic. He also referred to Osram Lamp Works Ltd. vs.
Pope Electric Lamp Company Ltd.(1917) 34 R.P.C. p. 369 @ 391. Mr. Beck
emphasized that these decisions dictate that it is necessary to look at the
whole specification, including disclosure and claims, to determine what the
applicant considers to be his invention. We must, of course, agree that the whole
of the specification must be considered in order to ascertain the inventive con-
cept, and will proceed below to determine what invention the specification
"as a whole" did disclose.
Mr. Beck reviewed the prosecution of this application and stated that the
applicant submitted an amendment to the disclosure on Jan. 16, 1973, in which
he had "limited this description of the concepts of the invention more
specifically recited in the broad claims."
This amendment was refused by the examiner in a report dated April 5, 1973,
because "in the proposed amendment applicant has inserted broader statements
re invention to bring the scope of the disclosure in line with the scope of
the above claims [1, 23, 25 through 32]."
The added paragraph which the applicant submitted on January 16, 1973 reads:
In a broad aspect, the method of the invention resides in the ad-
vancement of articles to be surface treated along a linear path
from an entrance area, through a blast area to an exit area, while
throwing particulate treating material onto the articles during
their movement linearly through the blast area, and while continuously
rotating the articles about an axis parallel and aligned with
their direction of movement so as to uniformly expose the
surfaces of the articles to the particulate treating material thrown
thereon. The apparatus comprises a barrel of skeletal construction
which is rotatable about its longitudinal axis, and open at both ends to
permit the passage of an article therethrough. Continuously driven
roller means are engageable with the barrel to continuously rotate it
about its longitudinal axis, the barrel being long enough to hold an
article and shaped to hold the article so that it rotates with the
barrel. Abrasive blast means is provided alongside the barrel for
projecting abrasive particles through the skeletal barrel wall at
the articles in the barrel, and loading means is provided at one end
of the barrel to supply articles into the barrel.
Following the direction of the Court in Burton Parsons that the specification
be read and construed as whole, we agree with the examiner that, "the amendment
to the disclosure is not acceptable because the scope of the alleged invention
is broadened thereby."
We think it also useful to refer to copending application 993116 filed by
this applicant which has a common inventor (Hubert Davidson) with the application
before us. Reference to the copending application was made in the applicant's
letter dated April 17, 1970, in which he stated that the "applicant believes
that the conflict application identified by the Examiner in the Office Letter
of Feb. 20th. in application Serial No. 993,116 should also be placed in conflict
with this application, with particular reference to the newly added claims 25
through 32." What the applicant is indicating here is that his copending
application is in conflict and he believes that this application (89192) should
be added to the conflict.
The copending application (993,116) refers to this application on page 2 in
this way:
In the copending application, Serial No. 989,192, filed Apr. 28,
1967, and entitled "Method and Means for Continuous Surface Treat-
ment", description is made of a new process and equipment for surface
treatment of heavy metal objects in a continuous cycle, wherein use
is made of a plurality of open cages supported at their ends on ring
members to enable the cages continuously to be rotated. The cages
are cycled to a loading station wherein heavy metal objects are
inserted into the cages and the loaded cages are displaced onto the
leading end of a roller conveyor. The roller conveyor is formed
of a pair of laterally spaced apart turning rolls which extend
continuously through an enclosed blast zone having one or more
centrifugal throwing wheels for projecting particulate material at
high speed onto the loaded cages as they are advanced along the
roller conveyor from the entrance and through the blast cabinet to
the exit end of the conveyor.
The rolls of the conveyor are turned continuously to cause the loaded
cages continuously to turn as they are advanced along the conveyor
through the blast cabinet whereby maximum surface exposure is made of the
castings to the particulate material.
In the aforementioned copending application, the loaded cages are
advanced along the loaded conveyor through the blast cabinet by
incremental displacement of each loaded cage as it is deposited on the
leading end of the conveyor thereby to align the cages in end to end
relation for advancement in a single column through the blast cabinet.
Beyond the blast cabinet, the loaded cages are displaced from the
roller conveyor to an unloading station where the surface treated
castings are displaced endwise from within the cage and the empty cage
is returned by another conveyor to the head end of the machine for
use in another cycle of operation.
While the apparatus described is capable of continuous operation for
the treatment of such heavy metal objects at relatively high speed and
with uniform coverage of the surface, thereby to provide increased
output per unit time, it is desirable still further to reduce the
number of operating steps embodied in a complete cycle thereby to
reduce the amount of equipment, space and costs of the entire operation.
(underlining added)
There is no doubt but that the inventive concept of the copending application
relates to the use of one cage for the surface treatment of articles. This
is evident from the above statements, taken from the disclosure as well as
the drawings and related description thereto. It is moreover emphasized in
copending application 993116 that the applicant recognized that the inventive
concept of this application (989,192) involves the use of a plurality of cages
operating in a continuous loop for surface treatment of articles.
By construing the application "as a whole" as originally filed, and utili-
zing the evidence of what the applicant says elsewhere, we conclude that
the only inventive concept envisaged in original claims 35, 36 and 37 is one
which relates to the use of multiple cages. To rephrase the wording of the
Osram Lamp case (supra at p. 391, those to whom the specification was addressed
would, from the specification as a whole have concluded that multiple cages
were a necessity, and to the extent that original claims 35-37 did not make
this clear, they were defective. Consequently we agree with the examiner
that the interpretation which the applicant places on claims 1, 2 and 3 (now
claims 1, 2, 3 and 4) is broader in scope than the invention described in the
specification, and recommend that the Final Action be affirmed.
G. A. Asher
Chairman
Patent Appeal Board, Canada
I have considered the prosecution of this application and the recommendations
of the Patent Appeal Board. My decision is that claims 1 - 3 now on file
(and proposed claims 1 - 4) be refused. The applicant has six months within
which to remove the claims or to launch an appeal under Section 44 of the
Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec Agent for Applicant
this 11th.day of February, 1977 Smart & Biggar
Box 2999, Station D
Ottawa, Ontario