Section 2 of the Patent Act - Valve Actuator
The application was refused under Section 2 of the Patent Act for failing
to define an improvement and for being a retrograde step. It relates to
a pilot light in a burner system. Novelty, utility and unobviousness
appeared to be present, although the device might not be as safe as some
prior art devices.
Final Action: Reversed
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This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated December 6, 1976, on appli-
cation 174,329 (Class 236-9). The application was filed on June 18,
1973, in the name of Lewis K. Harris, and is entitled "Valve Actuator."
This application relates to a two-position valve which is connected to a
temperature sensitive element through a linkage system which is manually
positioned to accuate the valve. In essence it relates to a temporary prop
to hold open a valve for a pilot light in a burner system.
The technical detail is not important because the examiner refused the
application , while citing United States patent 3,094,146 - Glasgow,
under Section 2 of the Patent Act. He gave as his reason:
It is not seen that there is any patentable subject matter
contained in this application in view of Section 2 of the
Patent Act since there is no improvement in the art, but is,
in fact, a retrograde step.
The examiner also stated his position (in part):
The industry, over the years, has realized what built in
safety features are necessary to protect the layman, and the
above reference exemplifies these safety features, the first
of which is that when the valve is held open manually, and
then released, without lighting the pilot light, the flow
will be cut off, and the second of which is that if the
pilot light is lit, and later is extinguished, the flow will
be cut off.
The applicant has removed the first of these safety features
with the addition of the built in prop. Such prop has turned
a fail safe device into a fail unsafe device. Once applicant's
built in prop is activated the gas is free to flow and will con-
tinue to flow whether or not the pilot light is lit. Therefore, if
the prop is set and the pilot light cannot be lit because of windy
conditions, the gas continues to flow, if the prop is set by a
child the pilot will not be lit and the gas continues to flow.
If the pilot light is lit and the transducer has failed (which
does happen) then the prop will not be deactivated, and if the
pilot light is extinguished, the gas will continue to flow. The
only time an artificial prop is used is if the transducer
fails, and the fact that the transducer has failed is known, and
obvious, which is not the case in the present device. An artificial
prop is used very seldom, is only a stopgap measure until the
transducer is replaced, and is only used if the operator so
desired. In the present device, if the transducer fails everyone
is using a prop, without any choice, and with no way to remove
such prop.
In response to the Final Action the applicant had this to say when he
stated (in part):
The claims of the application are directed to a linkage, which is
either a machine or a manufacture, and there appears to be no
suggestion that the claimed linkage is not new, but merely a
contention that it is less useful than the linkage of the cited
reference because it is said to be a less safe product than that
linkage, and therefore not an improvement thereover. The Examiner
is no doubt relying upon the cases of Easterbrook v The Great
Western Railway Company (1885) 2 R.P.C. 201, and Vidal Dyes Syndicate
v Levinstein Ltd. (1912) 29 R.P.C. 245. In the former case a railway
signal interlocking system stated by the specification to be in effect
infallible was proved by experiment to be highly fallible, with
the result that the specification was dangerously misleading, and
the utility claimed for the invention, i.e. reliable interlocking,
was totally lacking. In the latter case, the invention claimed
(or part of it) was not only dangerous but also inoperative, since
following the instructions of the claims did not lead to the
promised result. The present case is in no way comparable. The
linkage of the present invention does exactly what the applicant says
it does, and the implications of this action are fully apparent
from the specification. It thus meets the long established test
of utility set by Lindley L.J. in Lane-Fox v Kensington and Knights-
bridge Electric Lighting (1892) 9 R.P.C. 413 at page 417 "... to
judge of utility the directions in the specifications must be followed,
and if the result is that the object sought to be obtained can be
attained, and is practically useful at the time when the patent
is granted, the test of utility is satisfied.... "Useful for
what?" is a question which must always be asked, and the answer
must be useful for the purposes indicated by the patentee."
The present invention meets this test just as clearly as those in
the Easterbrook and Vidal Dyes cases did not, and its relative merit
compared with the Glascow invention is wholly irrelevant.
The tenor of the examiner's rejection is that what the applicant has done is
eliminate certain fail-safe safety features from the device shown in the
prior art cited (but presumably in a non-obvious manner). The sole ground
for rejection is that the applicant has made no improvement in the art, but
has on the contrary taken a retrograde step.
The applicant has argued that in fact he has made an improvement, since the
type of latch he uses disengages automatically when start-up is completed.
With prior art devices, he claims, operators prop open the valve, and
leave the props in place, thus disabling the safety shut-down system. In
other words, while (arguably) the new device is not as safe in principle as
that shown in the prior art, it may in practice be safer than the way in
which the prior control is actually used.
In section 2 of the Patent Act, a patentable invention means any new
useful art...machine.... Whether, in the opinion of the examiner, it is
a retrograde step to produce the instant device is not the correct issue.
What is considered a disadvantage today might be an advantage tomorrow.
The question is whether it is new, useful and ingenious. If so, it will
satisfy the requirements of Section 2 of the Patent Act.
When the examiner refused the application under Section 2, he was no doubt
concerned with utility and some inherent dangers. Whether the device has
some hidden dangers or not, we believe there is a practical utility
for the device and the control is operative.
We are satisfied, after reviewing the above points, that the application
should not be refused under Section 2 of the Patent Act. Consequently, we
recommend that the rejection be withdrawn.
The applicant requested a Hearing, but because of the conclusions we have
come to, that will be unnecessary.
J.F. Hughes
Acting Chairman
Patent Appeal Board
Having reviewed the prosecution of the application and considered the
recommendation of the Patent Appeal Board, I direct that the grounds for
rejection under Section 2 of the Patent Act be withdrawn.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 5th. day of May, 1977
Agent for Applicant
Ridout & Maybee
101 Richmond St.West
Toronto, Ontario
M5H 2J7