COMMISSIONER'S DECISION
SECTION 2 OF THE PATENT ACT - Nozzle Means Producing A High-Speed Liquid Jet
The application claims a nozzle producing a high speed jet. The
application was refused because the claim defines the nozzle cavity
by means of an equation, which the examiner considered to involve a
mental step, rather than a physical difference. Any person
practicing this invention however, need not exercise any judgmental
step to determine what type of nozzle to construct. The claim defines
the physical characteristics of the nozzle by a formula which limits
the dimensions and physical shape, and clearly falls under the
useful arts.
Final Action: Reversed
**********************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated February 9, 1976, on
application 176,809 (Class 299-29). The application was filed on
July 18, 1973, in the name of Lewis A. Glenn et al, and is entitled
"Nozzle Means Producing a High-Speed Liquid Jet." The a Patent Appeal
Board conducted a Hearing on June 15, 1977, at which Mr. P. Hammond
represented the applicant.
This application relates to a nozzle device producing a high speed
liquid jet to be used in an apparatus to cut, break, deform or clean
material. Figure 1, shown below, is a schematic sectional view of one
half of an apparatus, showing the prior art contour (4) and the
contour according to the present invention (5), with a solid piston.
(See Figure I)
In the Final Action the examiner refused the application because, in
his view, the alleged invention is not within the ambit of Section 2
of the Patent Act, and on a secondary aspect that it was obvious
over the art cited in the present application.
In the Final Action the examiner had this to say (in part) as follows:
In view of the prior art, as shown 17 by present Figure 1,
the present claim differs from said art by dimensions only,
which dimensions satisfy the formula or equation of claim 1.
As the claim differs from the prior art by an equation only,
which is a mental step and not a physical difference, the
alleged invention is not within the ambit of Section 2 of
the Patent Act.
Once it is decided that the present nozzle forming the subject
of applicant's claim is not distinguished (only dimensional
distinctions are here involved) from other nozzles, the
only novelty allegeable in the claim is the mental process by
which the physical parameters of the nozzles are calculated and
determined. Such a process of calculation cannot be regarded
as invention within the meaning of the Act.
It is not of course a circumstance fatal to the grant of a
patent that a new manufactured article cannot be distinguished
from previously made articles by physically defined character-
istics, provided it can be distinguished in some manner, for
in some instances an article could be claimed by the process of
making, but in such a case the process must, to be allowable,
particularise "novel physical" steps. The nozzle of claim 1 is
distinguished only by the process of calculations by which its
profile is determined. Such a process is purely mental and
therefore not within the ambit of Section 2 of the Patent Act.
The applicant in his response stated his position (in part) as follows:
...
The first objection of the Examiner in the Official Action appears
to be based on the grounds that the subject matter of claim 1 is not
patentable subject matter within the meaning of Section 2 of
the Patent Act. Section 2 defines "invention" as meaning "any
new and useful art, process, machine, manufacture or composition
of matter or any new and useful improvement" thereto. Present
claim 1 of the application is directed to a nozzle device
comprising a nozzle with an internal cavity and a certain contour.
It is submitted that a nozzle device falls readily within the
scope of the terms "machine" or "manufacture" found in the definition
of "invention". It seems highly probable that numerous nozzle devices
have already been patented in Canada without any objection being
made to the claims for such nozzles on the grounds that nozzles
do not constitute patentable subject matter. A nozzle is a physical
product which is manufactured by industrial processes much like
any other product and it is sold in trade in the usual manner. It is
not seen how there can be any serious basis for an objection based
on lack of subject matter particularly in view of the submissions
made hereinafter in connection with the significance of the two
equations in claim 1 which determine the contour of the internal cavity.
The Examiner also appears to be maintaining his objection to the
nozzle device of claim 1 on the grounds that the claimed nozzle does
not differ physically from the prior art. It is first of all noted
that the Examiner has not cited any prior art against the claims in
this application except for the admitted prior art referred to
in the disclosure and illustrated in the drawings of this application.
As explained in paragraph 2 of the first page of the application,
a known nozzle has an internal contour whose radius exponentially
decreases with distance from the nozzle entrance. In this nozzle
the relative rate of area change is invariant over the entire contour.
The contour of the known nozzle is illustrated by the line indicated
by reference numeral 4 in Figure 1 of the drawings. In contrast,
the internal contour of a nozzle constructed according to the present
invention is indicated by the lower curve 5 of Figure 1. The only
prior art which the applicant admits in its application is the
nozzle illustrated by the upper curve 4 of Figure 1. This known
nozzle does not have a contour lying within the limits defined by
the two equations set out in claim 1. In fact the applicant has
specifically stated and strongly maintains that no known nozzle
has an internal contour with the dimensions called for by
present claim 1. As can be seen readily from examining Figure 1,
the equations of claim 1 define a contour which is distinctly
different from the known contour illustrated by the upper curve
4 of Figure 1. Thus the Examiner's statement in the Official Action
that the nozzle device of claim 1 does not differ physically from the
prior art is incorrect.
The Examiner also alleges that the only novelty set out in claim 1
is the mental process by which the physical parameters of the nozzles
are calculated and determined. Again this statement is not correct
in applicant's submission and, as explained above, the nozzle device
of claim 1 does differ physically from the prior art....
At the Hearing Mr. Hammond brought forth some interesting and pertinent
points. The basic issue before the Board is whether or not the subject
matter of this application falls within the ambit of Section 2 of the Patent
Act. Claim 1 reads as follows:
A nozzle device capable of producing a high-speed liquid
jet for use in an apparatus to cut, break, deform or clean
materials, said device comprising a nozzle having a inter-
nal cavity to receive a liquid column, said cavity having
a continuously converging contour lying within the limits
defined by the following two equations:
(see formula I, II)
where
A is the variable internal cross-section
A o is the value of A at nozzle entrance
A e is the value of A at nozzle exit
L is the length of said nozzle from entrance to exit
X is the variable coordinate along the axis of said nozzle.
We point out at this time that "A" in claim 1 should, for better clarity,
read: "is the variable internal cross sectional area of the nozzle."
We observe that no prior art has been cited against the claims of this
application except for the admitted prior art set out in the disclosure.
This prior art is exemplified by the contour designated by reference
number 4 in Figure 1 of the drawings (shown above). The main object-
ion in the Final Action is based on lack of subject matter within the
ambit of Section 2 of the Patent Act.
The examiner stated that: "As the claim [claim 1] differs from the prior
art by an equation only, which is a mental step and not a physical
difference, the alleged invention is not within the ambit of Section 2
of the Patent Act."
What we are really concerned with is whether or not the novelty lies
solely in the performance of certain judgmental steps. The ambits of
the nozzle are defined by formulae which in fact describe the structure of
the nozzles. All nozzles coming within the limits of the formulae perform
in the manner desired. Anyone wishing to practice this invention need
not exercise a judgmental step to determine what type of nozzle to construct.
He merely makes a nozzle coming within the metes of the claim. Whether
the shape of the nozzle is described by a formula or in words is immaterial.
In both cases what is claimed is a specific structure. In this instance
the simplest way to describe the contours is by formulae, and we can see
no valid reason to object. We are satisfied on the facts before us that
there is no judgmental step involved in exercising the invention of claim
1. In the present case the formula is but another way of describing
the dimension of a structure, and its physical form. New machines and
apparatuses have always been patentable if they involve inventive ingenuity,
are useful, and are clearly defined in the claim.
We are satisfied therefore that claim 1 defines the physical characteristics
of the nozzle in the form of an equation which limits the dimensions and
physical shape of the nozzle and clearly falls under the useful arts. In
our view the grounds of refusal under Section 2 of the Patent Act should
be withdrawn.
On a further aspect of the ground of rejection the examiner stated that
"... claim 1 does not define a novel structural difference from the
known nozzle...." (see the action of April 17, 1975, and reiterated in the
Final Action)
We find that in the equation concerning the prior art "n" approaches
either negative or positive infinity. By contrast in the equation de-
fining the nozzle of the present arrangement (see claim 1 supra) n is
greater than or equal to -5 and less than or equal to -1. In other
words, n must be a small negative number for the nozzle of the present
application. The examiner did not, as mentioned, cite any prior art in
the Final Action, but relied on the prior art supplied by the applicant.
The structure of the internal cavity of the present nozzle is clearly
different from the prior art (see Figure 1 which shows the prior art
contour of a nozzle and the contour according to the present invention).
The applicant appears to have used a specific selection range for optimum
results. We have no reason to disagree that, as emphasized at the
Hearing by Mr. Hammond, there is a considerable difference in performance
over the prior art and that the applicant has made a significant contri-
bution to the nozzle art. The applicant has, in our view, produced a
result in a new and more advantageous manner which required for completion
a degree of inventive ingenuity.
In summary, we are satisfied that the applicant has made a patentable ad-
vance in the useful arts and we recommend that the decision in the Final
Action to refuse the application be withdrawn. The amendment for clarity
purposes, mentioned above, should be made to claim 1.
J.F. HUGHES
Assistant Chairman
Patent Appeal Board, Canada
Having reviewed the prosecution of this application and carefully considered
the recommendation 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 in Hull, Quebec
this 8th. day of August, 1977
Agent for Applicant
Fetherstonhaugh & Co.
Box 2999, Station D
Ottawa, Ontario