COMMISSIONER'S DECISION
OBVIOUSNESS: Swaging Tool
Force producing means using a recirculating ball nut and screw arrange-
ment instead of the prior art hydraulic jack type is not patentable.
Rjection: Affirmed.
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated March 31, 1976, on applica-
tion 152,573 (Class 26-79). The application was filed on September 26,
1972, and is entitled "Coupling Attachment Device." The Patent Appeal
Board conducted a Hearing on December 13, 1976, at which Messrs. E.
O'Connor and C. Upchurch represented the applicant.
This application relates to a hose coupling apparatus for swaging a fitting
to the hose end. Figures 1 and 4 shown below illustrate the invention.
(see formula I and II)
A split die (32) holds the hose (46) in position for the ram (28) to press
the fitting (45) and rigidly attach it to the hose. The swaging pressure is
applied by rotating the crank 21 which in turn moves push holder (19) by means
of the recirculating ball and screw nut arrangement indicated as 15 and 18.
In the Final Action the examiner rejected the application for lack of inven-
tion in view of the following patents:
United States
3,048,212 Aug. 7, 1962 Morrison
3,028,987 Aug. 10, 1962 VanHenke
The Morrison patent covers a hose-coupling apparatus for swaging fitting on
hose ends. He uses a split die to hold the hose, and a hand operated hydraulic
ram to apply the necessary swaging pressure. Figures 6 and 7 (below) illustrate
the Morrison invention.
(see formula III and IV)
The hose is held by the split die shown as 15 and the pusher assembly 11
is actuated by the hydraulic ram 9. Retracting springs (18, 19) automatically
return the ram to its starting position when the bypass valve 12 is opened.
Van Henke discloses a hand operated tool for installing fasteners of the
pin and collar type. Force is applied through a thrust bearing by a recirculating
ball type nut and screw arrangement. Figure 1 of Van Henke is shown below.
(see formula V)
In the Final Action the examiner stated din part):
Morrison has disclosed a tool for swaging fittings on a hose
comprising a frame, a pusher element, a die base to accommodate
a split swaging die and a hydraulic-jack device to force the
pusher element and a fitting into the die. In addition, at
column 5, line 70, Morrison states that the operation by use
of a hydraulic device could be performed by "a screw type operation".
Thus, Morrison has disclosed the concept of providing his
tool with screw operation. Applicant has chosen a particular kind
of screw device in the form of a recirculating-ball cut and applied
it to the Morrison disclosure. Ball nuts of this type are old
and well known in the art, so too are the advantages of greater
efficiency of operation in comparison to other types of screws and
nuts. Screws operable through recirculating-ball nuts are well known
mechanical equivalents of hydraulic jack-type devices. To substitute
a screw and recirculating-ball nut, as defined in claim 1, for an
ordinary screw and nut in the Morrison tool is obvious and is to
be expected of one skilled in the art. The further provision of a
thrust bearing is obvious and well known as a means to reduce the
tendency of the rotating screw to turn the element which is to be
moved by the screw. The Van Hecke patent discloses such a thrust
bearing serving this purpose.
Claim 2 defines clamping devices pivoted on the longitudinal bars
to hold the swaging die in the die cavity. This is held to be an
obvious expedient fully to be expected of one skilled in the art
once it is known that the tool may be used in non-upright orientation.
Claim 3 refers to a bracket for securing the apparatus in a
stationary position. As disclosed, this is a projection from
the frame or from the base which may be screwed to a bench or
held in a vise. The same feature is provided by Morrison in
the form of a base 4 which "may be welded to a table or bench,
or bolted to such...".
The split swaging die of claim 4, as mentioned above, is also
illustrated by Morrison.
In his response to the Final Action the applicant stated (in part):
The applicants were faced with the problem of making a swaging
apparatus adapted to be operated by hand without support on a
bench or the like. There was a need in the marketplace for a
hand swaging device which could be carried into the field and used
to swage a fitting member on the end of the hose in the field
without a supporting member. The jack-type apparatus disclosed
by Morrison was too heavy to be used for this purpose and a similar
apparatus provided with an ordinary screw type mechanism does not
exert sufficient pressure to secure a fitting member on the
end of a hydraulic hose which is to be used at high pressures.
Hence, the applicants were faced with the problem of devising
a swaging apparatus which would fasten a fitting member on the
end of a hydraulic hose so securely that it would not separate from
the hose while operating at high pressures and that also was a
small light weight device so that it could be conveniently carried
from place to place and operated by hand without requiring a
bench or other supporting structure. The applicants solved this
problem by providing the swaging apparatus of their claims.
...
A jack-type apparatus of the type disclosed by Morrison cannot be
made at a weight which adapts it to be carried about from place to
place and used as a hand tool on the job in securing a fitting member
to the end of a hydraulic hose. There is no disclosure or suggestion
in Morrison of any structure which would make it possible to
provide a swaging device that could be made of such a weight that
it could be used as a hand tool. The suggestion that an ordinary
inoperable screw could be used does not suggest an operable ball nut and
ball screw assembly. Moreover, the ball nut and ball screw alone
will not be operable. It must be combined with a thrust bearing.
Morrison does not disclose or suggest the use of a thrust bearing in the
holder for the pusher element. Hence, the Morrison patent neither
discloses nor suggests the structure of Claim 1. The rejection is
based largely on the conclusion that one skilled in the art should
know to use a ball nut and ball screw assembly and to use a thrust
bearing. However, none of the references cited in rejecting the
claims supports this conclusion because they do not suggest the combina-
tion of a ball nut and ball screw assembly in combination with a
thrust bearing in a swaging apparatus.
The Van Hecke patent discloses a thrust bearing but this thrust bearing
is not used with a ball nut and ball screw assembly in the manner it is
used on the applicant's device. The Van Hecke tool is adapted for
applying fasteners. The apparatus produces a pulling effect and is not
adapted for pushing a fitting member and hose end assembly into a die
for swaging the fitting to the end of the hose. One faced with the
problem of swaging a fitting on the end of a hose could not be
expected to learn anything from reading the Van Hecke patent that
would be applicable to the swaging device.
The question to be determined by the Board is whether or not the applicant
has made a patentable advance in the art.
Claim 1 of the application reads:
An apparatus for securing a fitting to a hose which comprises a
ball screw and ball nut assembly, a swaging die having a die
cavity adjacent one end of the screw with the cavity aligned
with the screw, means for supporting said ball nut and said die
against relative longitudinal movement and against rotation with
the screw comprising laterally spaced longitudinally extending
bars, a cross bar spanning and rigidly secured to the ball nut
and to the spaced bars, a die base longitudinally spaced from
the cross bar and spanning said spaced bars and rigidly secured
thereto, means in the die base to support the swaging die, means
carried by said end of the screw for pressing a fitting and hose
assembly in said die cavity comprising a holder element secured to
the said screw end for rotation therewith and having a cavity
therein, a pusher element having one end in the cavity of the
holder element and an opposite end adapted to support a fitting
and hose assembly as it is moved towards the die cavity, means
for transferring energy from the screw to the pusher element
without rotation of the pusher element with the screw comprising
a thrust bearing in the cavity of the holder element and about the said
pusher, and means for turning the screw in the nut.
The use of a hand-operated swaging arrangement for coupling a hose end and
fitting is shown in Morrison. This patent utilizes a split die to retain the
hose end as well as a pusher assembly to apply the necessary force to attach
the fitting firmly to the hose. A hand operated hydraulic ram is used to
generate the required force. Morrison also has a pair of springs to automatic-
ally retract the hydraulic ram to its starting position when the bypass valve is
opened after the completion of the swaging operation.
The present applicant uses a recirculating ball nut and screw arrangement to
apply the necessary swaging force. In order to use this arrangement the
applicant requires a thrust bearing so that none of the rotational thrust force
of the of the advancing screw will be transmitted to the pusher (28). The
applicant acknowledges that ball screw and nut assemblies are known, and
also that the thrust bearing is readily available. Page 8 of the applicant's
disclosure reads at line 1 ff.
Suitable ball screw and ball nut assemblies are available
commercially. Any suitable one of these may be used. One
of the type disclosed in U.S. Patent 2,836,075 or a similar
assembly may be used, if desired.
Any suitable thrust bearing may be used. One which has been
used to advantage is a Type TTSP, Number T-77 Tinken Bearing.
We note that Morrison suggests the use of a screw type pressure ram stated
in column 5 line 70 ff:
It should be noted, however, that although a hydraulic ram
or jack-type device is used to apply this pressure, it would
be also adaptable to a screw type operation in which the
pusher assembly is screwed down on a variable pitch ratio to
provide enough force to swedge this ferrule through these die
halves, so that I do not mean to limit the apparatus to the
use with only a hydraulic ram, but have merely used that for
purposes of illustration only.
At the Hearing Mr. O'Connor acknowledged that Morrison indicated the use
of a screwthread, but argued there were problems in its use that had to be
overcome. For example the applicant had to provide a leverage arm which is
used to counteract the rotational turning force when the device is not anchored
in a vice. However we do not find that the use of the known screw and ball
nut arrangement required any inventive ingenuity. The applicant admits that
the ball nut and screw are well known, as is the thrust bearing. This is
clearly shown in the Van Henke citation used by the examiner. Similarly the
use of a leverage arm to counteract the rotational force would be readily
envisioned by a person skilled in the art.
By selecting a ball nut screw force-producing means the applicant required a
thrust bearing. This choice of force means requires an arrangement to counter-
act the turning force applied to the ball nut, hence the applicant uses a
pivoted leverage arm. There are other arrangements that can be selected to move
the swaging pusher ram with the necessary force, i.e. a scissors-type jack as
the force actuating member would also fulfil the necessary force requirement
without a thrust bearing, a leverage arm or a pair of return springs.
Another argument advanced by the applicant is that his device is small, light
and readily portable. As a result, he points out that his swaging unit
can be used in the field, something which Morrison was unable to accomplish
because his device must be mounted on a bench. But Morrison also recognized
the advantages of use in the field when he said in column 2 line 23 ff.
Another object of this invention is to provide apparatus suit-
able for the repair of broken hose assembles in the field
without any additional equipment other than the simple device
described herein.
Consequently, we fail to see anything new or unexpected in the applicant's
device when we compare it to Morrison's invention.
In support of his arguments about obviousness, Mr. O'Connor cited excerpts
from Commissioner's Decisions and related jurisprudence. To them we add:
The art of combining two or more parts into a new combination
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 thought, design, ingenuity in the invention,
and novelty in the combination. (See Merco Nordstrom Valve Co. v.
Comer (1942) Ex. C.R. 138 at 155). (emphasis added)
It is also settled law that the matter of obviousness is to be judged by
reference to the "state of the art" in the light of all that was previously
known to persons versed in the art (See Almanna Svenska Elektriska A/B v.
Burntisland Shipbuilding Co. Ltd. (1952), 69 R.P.C. 63 at 69). While the
applicants claims may relate to a novel structure, there must in addition
be ingenuity in the invention (Vide Micro Nordstrom Valve Co. v Comer, Supra).
Pertinent to any determination on the question of ingenuity is the rationale
of the Supreme Court in Crossley Radio v Canadian General Electric (1936)
551 at 559, where a test of obviousness was put forward from Lord Chelmsford
in Penn v Liby (1866) L.R. 2 Ch. App. 127,
... the design does not appear to me to be so much out of
the track of the former use as not naturally to suggest
itself to a person turning his mind to the subject.
Or, from the same case, using the words of Lord Shaw in London General
Omnibus Company v Bonnard (1920) 38 R.P.C. 1 at 15,
... the design might have well occurred to an intelligent
person without any exercise of that invention (degree of in-
genuity) which is necessary as the grant of a patent.
In our own view the structure recited in the claims comes within the inter-
diction expressed by Maclean J. in Niagara Wire Weaving v. Johnson Wire
Works Ltd. (1939) Ex. C.R. at 273:
Small variations from, or slight modifications of, the current
standards of construction, in an old art, rarely are indicative
of invention; they are usually obvious improvements resulting
from experience and the changing requirements of users.
And at page 276:
No step is disclosed there which could be described as invention.
There is not, in my opinion, that distinction between what was
known before, and that disclosed by Lindsay, that called for that
degree of ingenuity requisite to support a patent. If those
patents could be supported it would seriously impede all improve-
ments in the practical application of common knowledge.
The applicant emphasized the commercial success of his device. We must remember,
however, that commercial success by itself, without the solution of a problem
in an inventive manner, is not sufficient to establish subject matter
(See The King v Uhlemann Optical Company (1949) 10 Fox Pat. C.).
Reviewing claim 1 we find that it emphasizes the ball screw and nut assembly.
In view of the above considerations we are not persuaded that claim 1 is
directed to a patentable advance in the art over the Morrison patent, and the
knowledge expected of artisans in this field. No new result has been achieved
in the patent sense, nor a result which can be considered to have flowed form
an inventive step.
Claims 2 to 5 which depend directly on claim 1 add the die, clamping means and
supporting means. These features do not add anything of patentable significance
over the subject matter of refused claim 1.
We have reached the conclusion that the claims, and the application as a
whole, are not directed to a patentable advance in the art. We therefore re-
commend that the Final Action be affirmed.
G. Asher
Chairman
Patent Appeal Board, Canada
Having reviewed the prosecution and the recommendations of the Patent
Appeal Board, it is my decision that the claims and the application are
to be refused. If any appeal is taken under Section 44, it must be
commenced within six months.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec Agent for Applicant
this 1st day of February, 1977 Scott & Aylen
170 Laurier Ave. West
Ottawa, Ontario
K1P 5V5