COMMISSIONER'S DECISION
OBVIOUSNESS: Container closure
The object here was to provide a container closure having a liner material
which is suitable for venting gases while blocking liquids. This was
considered to be a patentable advance in the art.
Final Action: Reversed.
*****************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated September 22, 1976, on appli-
cation 182,884 (Class 206-22). The application was filed on October 9,
1973, in the name of William R. Wheeler, and is entitled "Container
Closure And Method."
This application relates to a liner for a container closure. The specific
object is to provide a container closure having a liner material which is
suitable for venting gases while blocking liquids.
In the Final Action the examiner refused claim 1 (the sole claim) for fail-
ing to define patentable subject matter over the following patents:
United States
3,071,276 Jan. 1, 1963 Pellett
3,326,401 June 20, 1967 De Long
Both patents relate to container closures comprised of a gas-impermeable
shell and a liner that has a porous or microporous structure. Figure 1,
shown below, is illustrative of Pellett's invention:
(See Figure 1)
The following figure is illustrative of the De Long invention:
(See Figure 1)
In the Final Action the examiner stated his position (in part) as follows:
...
The terminology chosen by applicants to describe polyvinyl
chloride foam differs from that of Pellet by specifying that
the liner is a polyvinyl chloride foam having a density in
the range of 0.67 to 0.72 grams per cubic centimeter, whereas
at column 4, Pellet establishes that he has "provided a controlled
venting of a container without leakage of the liquid (or solid)
therein by employing a closure liner which is microporous. This
in turn depends upon the well known phenomenon that whether or not
a liquid will pass through a given micro opening will depend upon
the size of the opening, the interfacial tension between the
liquid and the solid in which the micro opening occurs and the
pressure difference tending to force the liquid through the micro
opening. By employing the microporous plastic described above
applicants have succeeded in allowing the gaseous decomposition
by-produce to pass through but in checking the passage of the
liquid, for example, bleaching solution (hypochlorite) without the
development of any substantial pressure within the container".
Whether an author choses to define polyvinyl chloride foam in terms
of its density or in terms of the pore size is patentably immaterial
since each refers to the same physical and functional characteristics,
i.e. permeability.
In other words, Pellet's closure/liner combination does precisely
what applicants closure/liner combination does, by using essentially
the same structure. Furthermore, Pellett has established that he
is aware of the parameters governing the prevention of passage of
liquid through the liner while permitting gases to pass through
the liner, including pore size in the liner.
Applicants specified density range does nothing more than govern
pore size.
Hence, applicant's claim does distinguish over Pellett, but does
not essentially or patentably distinguish over Pellett.
...
Applicants emphatic reiterations of his discovery that the Pellett
closure is unavailable on the market does not alter the fact
that Section 28 of the Patent Act prohibits issue to patent of an
invention that was (a) known or used by any other person before
he invented it, or was (b) described in any patent or in any
publication printed in Canada or in any other country more than
two years before presentation of the petition by the applicant.
Applicants invention was both known before he invented it, and
described in patents more than two years prior to applicants
petition, in view of Delong and Pellett.
Therefore, applicants sole claim on file is rejected, since
it makes no patentable distinction over the prior art cited.
In his response to the Final Action the applicant had this to say (in part)
as follows:
The applicant's contribution has satisfied a long-felt want
which would, it is respectfully submitted, have been satisfied
many years earlier if, as the Examiner contends, the applicant's
invention was in fact described by Pellett et al in 1963 or
De Long in his 1967 patent. Considering De Long in greater
detail it is important to note that De Long was not concerned with
blocking the escape of liquid while permitting the escape
gases but was instead concerned with allowing gases to escape
while maintaining sterile conditions within the interior of a
container by preventing the entrance of a contaminating bacteria.
Furthermore, there is no suggestion that the plastic material
which was employed should be polyvinyl chloride, much less any
suggestion that the density should be within the very specific
range claimed by the applicant and considered to be an essential
feature of the instant invention.
Pellett et al was admittedly working toward a solution of the
problem solved by the applicant and he does suggest the use of
polyvinyl chloride in the liner. He does not however suggest the
use of a foam polyvinyl chloride, much less a foam polyvinyl
chloride having the particular density specified by the applicant.
In addition to suggesting the use of polyvinyl chloride
Pellett et al suggests the use of 8 other plastics plus derivatives
and polymeric mixtures of the suggested plastics. Pellett et al simply
tell us to use a microporous plastic material which will give the
desired result, namely controlled venting without leaking of the
liquid in the container. It is respectfully submitted that
this vague description of a desideratum should not prevent the
applicant, who has found a specific successful solution to a long-
felt want, from protecting his specific solution to the problem
as defined in the solitary claim now before the Patent Office.
It is respectfully submitted that the invention defined in the
applicant's claim which is directed to a foam polyvinyl chloride
liner having a specified density was (a) not known or used by any
other person before it was invented by W.R. Wheeler, the inventor named in
the present case and was (b) not described in any patent printed in
Canada or any other country more than two years before the filing
of the instant application and more particularly was not described
in either the U.S. patent to Pellett et al nor the U.S. patent to
De Long.
The issue to be considered is whether or not the applicant has made a
patentable advance in the art. Claim 1 reads as follows:
A container closure comprising a gas-impermeable shell
and a polyvinyl chloride foam liner having a density
in a range of 0.67 to 0.72 grams per cubic centimeter in the
shell, said liner having an open pore structure.
On a complete reading of the disclosure we find that the applicant is con-
cerned with "a method for producing a foamed product suitable as liner
material for container closures...," and the product thereof. There are
no method claims, however, presently in the application. Original claim 5
related to "a polyvinyl chloride foam closure liner...." The specific
issue then will he to consider the alleged invention in so far as the liner
for use in a container closure is concerned. This issue in the present
circumstances is not without its difficulties, because the cited art is
indeed pertinent and especially the Pellett Patent which was concerned with
the same problem.
The applicant was concerned with "... having a liner with a combination of
properties ideally suited for permitting gases to pass therethrough while
blocking liquids." He also stated that "The prior art is lacking in a
method or providing foamed plastics material having the right combination
of liquid blocking and gas permeable properties" (see page 1 of the present
disclosure).
It is clear from the Pellett patent, and the applicant agrees, that polyvinyl
chloride has been used before, in different forms, in lining material
for container closures. It is also clear that a problem existed in this area
especially as it relates to a closure liner "for permitting the escape of
gases while blocking liquids." The applicant is, in our view, concerned with
a selection range for best results in his foamed liner.
In the Pellett patent we find that he uses a liner of microporous plastic;
such plastics may include, among others, polyvinyl chloride. Pellett states
that his preferred range of micopores in the plastic layer range from 1 to
15 microns. This we find to be an extremely fine porous liner. By contrast
the present applicant is concerned with a polyvinyl chloride foamed
(porous) liner having a very specific density range. Pellett also does
not suggest the use of a polyvinyl chloride foamed liner.
The DeLong patent is not directed to a closure described as being useful for
blocking liquid under pressure while permitting the escape of gases. He
was concerned with a container closure for preventing the passage of micro-
organic contaminants while permitting free exchange of oxygen to the outside.
His advance in the art was for the replacement of "cotton wads" which were
previously used for this purpose. He discusses the general use of an open
cell porous foam plastics. He does not however, teach nor suggest the
solution to the problem of the present applicant.
There is no doubt but that Pellett (1963) was admittedly working toward a
solution of the instant problem, and no doubt had some success. On the. other
hand we have no reason to disagree with the applicant when he states that he
has found a specific successful solution to a long-felt want, and that "this
very specifically described polyvinyl chloride foam liner is a very
significant contribution to the art...." He goes on to say that the specific
liner is "highly successful." In discussing the importance of the specific
density of his liner the applicant had this to say in solving his particular
problem. The present disclosure, page 6 lines 30 ff., reads as follows:
It has been discovered that liquid begins to be permitted
to escape through the liner material of the present invention
if the material has a density less than the lower preferred
density limit of 0.67 grams per cubic centimeter. Exceeding
of the upper density value of 0.72 grams per cubic centimeter
leads to an inadequate venting of gases, ...
In view of the above consideration we are satisfied that the applicant has
made a patentable advance in the art with his specific density selection
of a polyvinyl chloride foamed liner. He has, in our view, secured a sub-
stantial advantage by the use of the selected density in his foam liner.
We will now consider the claim on file. For convenience it will be repro-
duced as follows:
A container closure comprising a gas-impermeable shell and
a polyvinyl chloride foam liner having a density in a range
of 0.67 to 0.72 grams per cubic centimeter in the shell, said
liner having an open pore structure.
It is clear that this claim is directed to the essence of what, in our view,
is a patentable advance in the art. By stating that it is a container closure
he is merely delimiting the monopoly of the invention to the intended use.
It does not indicate that there is an inventive step in making the container
closure. This claim appears in allowed form.
In summary we are satisfied, but not without some hesitation, that the applicant
has made a patentable advance in the art. We recommend that the decision in
the Final Action to refuse the claim be withdrawn.
J.F. Hughes
Acting Chairman
Patent Appeal Board, Canada
Having studied the prosecution of this application and considered the re-
commendation of the Patent Appeal Board I have decided to withdraw the
Final Action. The application is returned to the examiner for resumption
of prosecution.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 16th. day of June, 1977
Agent for Applicant
Smart & Biggar
Box 2999, Station D
Ottawa, Ontario