COMMISSIONER'S DECISION
AGGREGATION: Fire Extinguishing Apparatus
Claims were refused for failing to define a patentable combination. Three
of the amended claims are directed to an aggregation.
Final Action: Affirmed.
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This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated June 23, 1976, on application
146,808 (Class 137-4.1). The application was filed on July 11, 1972, in
the name of Alister L. McCulloch, and is entitled "Fire Extinguishing
Systems."
This application relates to automatic fire extinguishing apparatus. It con-
sists of a container for holding a supply of extinguishant, a fire sensing means
mounted on the container and signal means on the container to produce an
electrical output signal when the extinguishant is activated. Figure 1 shown
below is illustrative of the invention.
(See formula 1)
In the Final Action the examiner refused claims 1 to 12 and 15 to 17 for.
being directed to an aggregation of elements and for failing to define
patentable subject matter in view of the following references:
Canadian Patent 326,499 Oct. 4, 1932 Taylor
United States Patents 2,470,371 May 17, 1949 Roessner
2,417,082 March 11, 1947 Mapes et al
The Taylor patent relates to an automatic fire extinguishing sprinkler
arrangement in which the sensing clement is a frangible vessel containing
a heat sensitive liquid. Figure 1 of Taylor is shown below.
(See formula 1)
The Roessner patent is for a fire extinguisher capable of either manual or
automatic operation. A shatterable chemical carrying grenade serves as the
extinguisher and the grenade breaking mechanism consists of a spring mounted
hammer. Actuation of the hammer is automatic when a feasible link releases
the hammer or the grenade can be exploded manually by impact such as throwing
it into the fire area. Figure 1 is representative of this arrangement.
(See formula 2)
Mapes relates to apparatus for discharging fluids under pressure for fire
extinguishing purposes. An explosive charge is used as the actuating means
to shatter the closure disc to enable a high discharge rate from the
container. Electric circuitry may be used to automatically actuate the
explosive charge or it may be manually operable. Figure 2 shown below
illustrates the Mapes arrangement.
(See formula 1)
In the Final Action the examiner detailed the points relating to the
aggregation as well as applying the citations on the issue of obviousness.
He states (in part):
Regarding applicant's argument in lines 10 to 17 on page 2
of the disclosure, that it is not correct to reject claims 1,
9 and 10 in view of the teaching of the Roessner, Mapes et al
or Taylor patents, since the said patents do not show a fire
extinguisher with an electrical signalling means responsive
to the discharge of extinguishant from the said extinguisher,
applicant is advised that such signalling devices are old and
well known in the art, and the inclusion of such on a device
is not considered to be of. patentable significance. An example
of such signalling device may be seen in Canadian patents
20,669 to Worthington, and 17,063 to Neracher; also the said
claims are objected to because they are in themselves directed
to an aggregation of elements which elements do not cooperate
to produce a unitary result; such is amply discussed above;
hence the said claims are rejected.
Regarding applicant's argument that since claims 13 and 14
were not rejected, and are therefore deemed allowable, then
the above rejected claims should also be considered to be
allowable, since claims 13 and 14 are directed to a system
which utilizes the apparatus claimed by the rejected claims;
such argument has been considered however it is not acceptable.
Claims 13 and 14 are directed to a fire extinguishing system
where the various apparatus combine their functions to per-
form a unitary result. For example, when a fire activates
one extinguisher, this extinguisher by means of a signal
actuates the remaining inter-connected extinguishers, by means
of the explosive charges, in order to extinguish the fire. -
Such cooperation of the various elements comprising any one
clement as claimed in the refused claims do not cooperate
such that the combined action of all the said elements com-
bine to produce a unitary result; rather each of the ex-
plosive charge or the temperature sensor can release the
extinguishant independently of the other - for example the
explosive charge can be manually detonated.
...
Claims 13 and 14, as presented, are deemed to be allowable.
...
In view of the teaching of the cited patents and as discussed
above, claim 15 is rejected as obvious to one i.n the art, in
view of the cited patents, and also that it fails to define a
patentable improvement thereover.
In the response to the Final Action the applicant amended some claims and
stated (in part):
This amendment amends the claims so that the independent claims
now in the case (claims 1, 8, 9, 10, 11 and 12) correspond to
previous claims 11, 12, 13, 14 and 16. The examiner has indicated
that previous claims 13 and 14 are allowable. As far as previous
claim 2 is concerned, it is understood that the examiner is
prepared to allow this claim if put forward in independent form -
which it now is (as new claim 1). Previous claims 3 to 8
now appear as dependent on the new claim 1 and it is believed from
the examiner's remarks that these claims will also now be allowable.
The examiner has indicated that amended claim 1 is acceptable as are dependent
claims 2 to 7, and we agree. In addition new claims 10 and 11 are former
claims 13 and 14 which were acceptable prior to the Final Action. Our consider-
ation will be directed to amended claims 8, 9 and 12. The issue to be decided is
solely whether these claims are directed to a patentable combination as opposed to
an aggregation. The examiner maintains that these claims have not been
properly amended to overcome the objection on that ground in the Final Action.
Claim 8 reads as follows:
A fire extinguisher having a body including an extinguishant
container with a normally closed extinguishant discharge opening,
a rupturable bulb containing thermally expansive fluid, means
supporting the bulb adjacent to the said opening, means
supported by the bulb for holding the opening closed until the
bulb is ruptured by thermal expansion of the said fluid in
response to incipient fire conditions in the neighborhood of
the extinguisher whereupon the bulb ruptured, and opens the
discharge opening, electrically detonatable explosive-actuated
means, means mounting the explosive-actuated means adjacent the
bulb so as to rupture the bulb when the explosive-actuated means
is electrically detonated, and electrical signalling means mounted
on the body and responsive to discharge of the extinguishant to produce an
electrical output signal.
Citations in the Final Action show that the component elements of the rejected
claims arc known. The Taylor patent uses a frangible vessel as the sensing
element for the extinguisher. Rossner shows an extinguisher grenade breaking
arrangement utilizing a spring loaded hammer breaking mechanism. Mapes
discloses the use of an explosive cartridge adopted to be fired manually
or electrically to release the extinguisher medium. Use of electrical
signalling means responsive to discharge of extinguishant from the extinguisher
is well known as evidenced from two patents dated in the 1880's which
were mentioned in the Final Action.
The examiner points out that the rejected claims are "directed to an aggregation
of elements which do not cooperate to produce a unitary result; rather each
of the said elements operates independently to produce the same result, and the
same result that is, the discharge of the fire extinguisher as produced by
either of the elements independent of the other, hence no cooperative steps
are present such that the sum of the said steps produces a unitary result."
It is trite law that the essential qualification for a patentable combination
is that the elements of which the combination is comprised are combined in an
inventive manner so as to produce a result to which all the elements of the
combination contribute their part. The result produced by the combination,
however, must be a common or unitary result, in the sense that all the elements
of the combination are brought together in working inter-relationship to each
other such that each element contributes its own particular share to the
production of that result, (see Lester v Commissioner of Patents (1946) Ex. C.R.
603). In that decision O'Conner J. quoted Lord Tomlin in British Celanese Ltd.
v. Courtaulds Ltd., (193) 52 R.P.C, p.171, as follows:
It is accepted as sound law that a mere placing side
by side of old integers so that each performs its own
proper function independently of any of the others is
not a patentable combination, but that where the old
integers when placed together have some working inter-
relation producing a new or improved result then there
is patentable subject-matter in the idea of the working
inter-relation brought about by the collocation of the
Integers [emphasis added].
Claim 8 contains the following elements:
(1) a rupturable bulb containing thermally expensive fluid,
(2) means supported by the bulb,
(3) means supported by the bulb for holding the opening closed,
(4) electrically detonatable explosive-actuated means mounted adjacent
the bulb, and
(5) electrical signalling means responsive to the discharge of the
extinguishant
All the elements are shown in the prior art. The element listed under 1 is
capable of actuating the extinguisher when the fluid expands in response to
heat. Similarly the element listed under 4 can fracture the bulb when the
explosive-actuating means is energized. Either element operates independently
and does not alter the operation of the other element. In our view these
elements are not combined to produce a unitary result but are merely placed
side by side so that each performs its own function independently of the other
and there is no inter-relationship producing a new or an improved result
(see Br. Celanese Ltd. v Courtaulds Ltd, supra). In our opinion claim 8 should
be refused for failing to define a patentable combination.
Claim 9 is similar to 8 except that "electrical detonatable explosive actuating
means" is defined as "control means mounted on the body and associated with the
discharge opening and operative in response to an electrical input signal to
open the discharge opening if the latter is closed." This description of the
detonating means is merely covered in different terminology from claim 8 and
fails to define a patentable combination.
Similarly claim 12 contains "a remotely controlled explosive device mounted
on the supporting structure and operable to break the bulb independently of
the ambient temperature adjacent to the head" which does not define a patentable
combination.
In summary, we agree that claims 1 to 7, 10 and 11 are in allowable form.
On the other hand we are satisfied that amended claims 8, 9 and 12 should
be refused for failing to produce a unitary result from the inter-relationship
of the individual elements. They do not overcome the objection in the Final
Action and we recommend that these claims be refused.
J.F. Hughes
Acting Chairman
Patent Appeal Board, Canada
Having studied the prosecution of this application and considered the recom-
mendation of the Patent Appeal Board, I refuse to accept amended claims
8, 9 and 12. The applicant has six months within which to delete these
claims by an appropriate amendment, or to appeal this decision under the
provision of Section 44 of the Patent Act.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 26th. day of May, 1977
Agent for Applicant
Rogers, Bereskin & Parr
P.O. Box 313
Commerce Court. Postal Station
Toronto, Ontario
M5L 1G1