COMMISSIONER'S DECISION
OBVIOUSNESS: Rotary Engine
Similar rotary mechanism is shown in the prior art. Claims containing
the applicant's theoretical operation formula are refused.
Final Action: Affirmed.
*************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated July 7, 1976, on application
076,324 (Class 171-88). The application was filed on March 3, 1970,
in the name of Joe W. Tyree, and is entitled "Rotary Engine With Internal
Or External Pressure Cycle."
This application relates to a rotary mechanism capable of operating as
a combination engine, fluid pump or fluid motor. Figures 1, 3 and 4,
shown below, illustrate the applicant's arrangement.
(See formula 1)
In the Final Action the examiner rejected claims 1 to 7, 10 to 12 and
14 to 17. These claims were rejected for not being directed to an oper-
ative machine, and for not patentably distinguishing over the following
patents:
Canadian Patents
728,459 Feb. 22, 1966 Henry-Biabaud
711,935 June 22, 1965 P‚ras
United States Patents
3,034,484 May 15, 1962 Stefancin
2,423,507 July 8, 1947 Lawton
The Stefancin patent relates to rotary engines of the expansion chamber
type using heated gaseous pressure medium as the motive fluid. Figure 3,
shown below, illustrates the Stefancin device.
(See formula 1)
The Lawton patent relates to pumping mechanism arrangement using reciproc-
able vanes eccentrically operable within a circular casing. Figure 2
of Lawton is shown below.
(See formula 2)
P‚ras and Henri-Biabaud relate to rotary engines which show that the stator
has one more lobe than the rotor. P‚ras shows a two lobe rotor in a three
lobe casing and Henri-Biabaud uses a four lobed rotor in a five lobed casing.
In the Final Action the examiner referred to the citation drawing numbers
to show in detailed analysis the manner in which the references show the
claims component elements. He stated (in part) as follows:
The immediately following discussion will again show that
claims 1, 6, 10, 11 and 15 do not define a patentable
difference over the patent to Stefancin, contrary to applic-
ant's arguments. As pointed out in the previous Office
Action, the Stefancin patent shows a rotary engine having all
of the structural features defined in claims 1, 6, 10, 11 and 15.
With reference to claim 1, for example, the Stefancin patent
teaches a rotary engine having a housing means (item 11), forming
an internal surface means (item 12), valve shaft means (item 13)
mounted i.n the housing and provided with an eccentric means
(item 14), a rotor (item 15) journalled on the eccentric portion
for rotation about its axis while the rotor axis describes
a planetary motion relative to the axis of the housing, the
rotor having projecting scaling means (item 77) disposed inter-
mittently around the outer periphery of the rotor in sealing
engagement with the internal surface means of the housing
thereby forming a plurality of variable volume working chambers
(items 60a, 60b, 60c, 60d and 60~) between the rotor and housing
means, and inlet and outlet passages (items 63, 66, 68, 69 and 70)
communicating with each of the working chambers disposed within
the eccentric valve shaft and rotor, with opening and closing
of the inlet and outlet passages to each working chamber controlled
by rotation of the rotor relative to the eccentric valve shaft
means. The structure defined by claim 1 is thus precisely the
structure taught by the Stefancin reference. Detailed analysis of
claims 6, 10, 11 and 15 show that the structural features
defined in these claims are also taught by the Stefancin reference.
As pointed out in previous Office actions, the addition of a
formula by which the maximum number of cycles of the rotary mechanism
may be calculated does not provide a patentable distinction over
the prior art.
In his response to the Final Action the applicant reviewed the prosecution
of the application and supplied definitions for patent terminology taken from
the U.S. Department of Commerce General Information concerning patents. His
response stated (in part):
The Tyree application contains only features new and useful,
Conceived and Reduced to practice, over said Old Design
Tyree means disclosed and claimed features are basic over the
original concept of gerotor history of which Stefancin
is a part. (Exhibit QQQ and Prior Art V. U.R.T. shows a clear
picture in graphic form, U.R.T. is Tyree) see Affidavit 1/30/74.
Prior art Stefancin at issue is being cited by new examiner D.
Logan, taking facts as to the whole thereof, out of context
as to Tyree disclosed & claimed true intended meaning. Logan
is attempting to use a cross-section which is an Old Design,
of which Stefancin may have a limited patent of design
means thereover... However, said Stefancin does not contain
or disclose a claim of a basic nature, with a feature to be
read as broad enough to exclude others from using said Old Design...
See enclosed Fig. 1 Lilly 1915 as example of prior art Old
Design.
Note: Tyree claims now at issue, have already been Judged Basic
over Old Design, see now of record Tyree Patent # 449,435 filed
under International Convention, on the same day as Canada, contain-
ing passed to issue claims, exact to now at issue Canada, claims 1
thru 18 define the Tyree invention in distinct and explicit terms
as required by Sec. 36 (2) of the Patent Act. Please also note,
Tyree abstract was amended and approved to fully conform to the
requirements of Rule 27 A of the Patent Rules, thus pointing out
the advance in the art, thus giving a brief technical description
of the disclosure indicative of the utility of the invention &
the manner in which this invention is distinguishable from all other
inventions.
In Tyree Patents and Canada Application, N+ 1/N defined speed of two
components i.e rotor and housing (rotor = X1 and housing = X) Tyree
main claim reads over Stefancin and all prior art stating: "a
rotor journalled on the eccentric portion for rotation about its
axis (X1) while the rotor axis (X1) describes a planetary motion"-
(is defining the working motion of the rotor, one component, note, "(X1)
- (X1)" is stating two motions to the rotor at the same instance.
causing 50 cycles per revolution, result: N+ 1/N causing C=2X2).
As I continue the basic wording of the main claim I state:
- "relative to the axis (X) of the housing", this is defining the
relative speed of the two components, result is N+1/N where N is the
number of lobes in the Outer component (not inner, as in Stefancin
and Lilly - prior art).Tyree claimed teachings are clear and
distinct, basic conception and wording in main claim originally
drafted with working model in hand, reduced to practice, and having
pioneering functioning structure over all prior art.
Supreme evidence as to above N+1/N causing C=2X2 is, housing (10)
Fig. 13 has, (by noting position of arrow) turned only 288· and said
40 cycles before a repetition of events occurs, has taken place,
(proving above C=2X2) when said housing (10) completes 360· said
50 cycles will have taken,or C=2X2 please note, 10 cycles each 72·
of movement,72· x 5 chambers = 360· or N+1/N where N is the
number of lobes in the OUTER component giving 6/5 "relative--
planetary motion" as shown, described and claimed in claim 1 and
claims dependent thereon. Stefancin reaches 4/5 and N - inner
(samen as Lilly), therefore N = 4/5 not 6/5 like Tyree disclosed and
claimed teachings.
Claim 1 of the application reads as follows:
A rotary mechanism for fluid pumps, fluid motors, combustion
engines or the like comprising housing means forming an
internal surface means, valve shaft means mounted in the
housing and provided with an eccentric means, a rotor journalled
on the eccentric postion for rotation about its axis while the
rotor axis described a planetary motion relative to the axis
of the housing, the rotor having projecting sealing means disposed
intermittently around the outer periphery of the rotor in sealing
engagement with the internal surface means of the housing
thereby forming a plurality of variable volume working chambers
between the rotor and housing means, and inlet and outlet passages
communicating with each of the working chambers disposed within
the eccentric valve shaft and rotor with opening and closing of
the inlet and outlet passages to each working chamber controlled
by rotation of the rotor relative to the eccentric valve shaft
means,wherein the maximum number of cycles of the rotary
mechanism per revolution is governed by the equation
C = 2X2
where C is the number of cycles and X is the number of working chambers.
We note that the examiner has indicated that claims 8, 9 and 13 are directed
to allowable subject matter with minor amendments. Therefore the question to
be considered by the Board is whether the remaining claims represent a patent-
able advance in the art.
Considering the Stefancin patent we find that it displays an arrangement similar
to that found in this application. The Final Action indicates that the
structural features of claims 1, 6, 10, 11 and 15 are shown in Stefancin. In
his response to the Stefancin reference the applicant states that the examiner
is "attempting to use a cross-section which is an Old Design, of which
Stefancin may have a limited patent of a design means thereover ---- However
said Stefancin does not contain or disclose a claim of a basic nature...."
To obtain a claim of a "basic nature" however, requires the necessary attributes
of novelty, utility and ingenuity. It is clear from the prior art that the
concept of rotary motors is well known for many years. Any patentable protection
for this arrangement can only be for improvements to the basic design.
Therefore, we find that the applicant fails to show any novel concept in this
particular arrangement.
There was.considerable detailed argument with respect to the formula found
in claim 1. The examiner in the last two actions has stated that the
formula C=2X2 does not state a significant fact descriptive or definitive
of the invention. In his response to the Final Action the applicant
contends that:
Supreme evidence as to above N+1/N causing C=2X2 is, housing; (10)
Fig. 13 has, (by noting position of arrow) turned only 288ø and
said 40 cycles before a repetition of events occurs, has taken place,
(proving above C=2X2) when said housing (10) completes 360· said
50 cycles will have taken, or C=2X2 please note, 10 cycles each
72· of movement, 72· x 5 chambers - 360· or N+1/N where N is the
number of lobes in the OUTER component giving 6/5 "relative --
planetary motion" as shown, described and claimed in claim 1 and
claims dependent thereon. Stefancin teaches 4/5 and N = inner
(same as Lilly) therefore N = 4/5 not 6/5 like Tyree disclosed
and claimed teachings.
We are not convinced that this formula states any definitive or significant
description of the invention. It is more along the lines of a scientific
principle. Section 28(3) of the Patent Act prohibits the issue of a patent
for a mere scientific principle. This Section reads as follows:
No patent shall issue for an invention that has an illicit
object in view, or for any mere scientific principle or
abstract theorem. R.S., c.203, s.28.
We will now consider the claims. Claim 1 specifics the component elements of
a rotary mechanism for pumps, motors or combustion engines and ends with the
number of cycles, equation C= 2X2. As has been previously mentioned the
component elements are all shown in the Stefancin patent and in the Final Action
the examiner clearly specifics the reference members to show these elements.
We have also commented with respect to the formula. In the circumstances we
find no basis for a claim to a monopoly on that disclosure. Claim 1, in our
view, is not directed to a patentable advance in the art and should be refused.
Claims 6, 7, 10, 11, 12, 14, 15 and 16 do not have any significant feature
over that of refused claim 1 and we also recommend their refusal.
Claims 2, 3, 4, 5 and 17 are directed to the embodiment indicated by
Figure 14 of the applicant's drawing. The Final Action explained in detail
the rejection of these claims on the ground of inoperability. It was
pointed out by the examiner that Lawton discloses all the elements found in
these claims plus the necessary "anchoring members" to be operable. The
applicant has not made any comment on the rejection of these claims in his
response to the Final Action. We find no reason to disagree with the
examiner that these claims would not produce an operative device and
recommend that claims 2, 3, 4, 5 and 17 be refused.
In summary, we are satisfied that claims 1, 6, 7, 10, 11, 12, 14, 15 and
16 are not directed to a patentable advance in the art over the references
cited by the examiner. Claims 2, 3, 4, 5 and 17 are directed to an inoperable
combination. We recommend that the decision in the Final Action to refuse
these claims be affirmed.
As indicated earlier claims 8, 9 and 13 will be considered for allowance
subject to minor amendment. The modifications suggested by the examiner are
the deletion of the formula and a change of the word "engine" to "mechanism."
We are satisfied that these claims, when presented in amended form, would
be directed to a patentable advance in the art.
J.F. Hughes
Acting Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and considered the
recommendation of the Patent Appeal Board. In the circumstances I refuse to
allow claims 1 to 7, 10 to 12 and 14 to 17. I will however, accept claims
8, 9 and 13 when presented in amended form as indicated by the Board.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 16th day of June, 1977
Agent for Applicant
J.W. Tyree
3201 S.W. 100th Street
Seattle Washington
U.S.A.