COMMISSIONER'S DECISION
Claims too broad: Battery package
The application relates to a battery with a two-part casing consisting of separate
receptacles into which individual cells of the battery are placed offset to each
other. Some of the claims were rejected because they failed to specify that
the cells must be "co-planar and offset."
********************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated January 12, 1976, on
application 115,927 (Class 319-125). The application was filed on
June 17, 1971, in the name of Richard R. Clune et al, and is entitled
"Battery Packaging Device." The Patent Appeal Board conducted a Hearing
on September 7, 1977, at which Mr. N. Hewitt represented the applicant.
The application relates to a battery packaging device comprising a two-
part casing consisting of separate receptacles into which individual cells
of the battery are placed. The cells are offset to expose part of the
cell so terminals may be welded to them while they are in the package.
Figure 2 shown below illustrates the battery package.
(See formula 1)
In the Final Action the examiner rejected claims 1, 2, 3 and 10 because
they are "so broad that they are not restricted to the disclosed invention."
In that action he maintained his position (in part) as follows:
...
Applicant's invention consists of a two-part housing for a
plurality of electrochemical cells connected in series. The
two parts can be fitted together and sealed to form a unitary
battery for insertion into a device such as a camera. Provision
is made for access to the voltage of the battery. As disclosed
from line 23 of page 1 to line 24 of page 2, a feature of
applicant's invention is the construction of one part of the
two-part housing to hold and support the cells so as "to permit
properly connecting them to each other, as a preliminary step
in the manufacturing assembly". Regarding the said feature, as
further disclosed, "That feature of the invention, involving
the use of one half of the molded cartridge for supporting the
cells as assembled therein, as a carrier to permit manufacturing
operations on the cells, guides each cell to be seated in a
receiving pocket in the half shell so as to expose sufficient
area of a top plate terminal area on each of the cells, to permit
access to such exposed area ... to enable welding operations to
be easily performed on the cells after they are placed in their
respective pockets".
This feature of the invention is not present in claims 1 to 3,
and is only very vaguely suggested in claim 10. Claim 1 specifies
a plurality of recesses for "receiving anti accommodating" the
cells. The quoted terms are very broad; they do not recite a
construction whereby work can be done on the cells so as "to permit
properly connecting them to each other, as a preliminary step in
the manufacturing assembly". The phrase "at an angle" in line 8
of claim 1 is completely meaningless as angles are measured from
zero degrees to any magnitude whatsoever, including ninety degrees.
Clearly, then, claim 1 is excessively broad, and requires restrict-
ion to define the "angle" as being "an acute angle such as to
expose sufficient area of the cells to permit a manufacturing
operation".
Claims 2 and 3 are similarly too broad, and are refused for the
same reasons.
Claim 10 specifies that the cells are offset, but contradicts this
by also specifying that "the bottom surface of one cell overlies
the next cell", thus in effect denying that there is an exposed
area accessible for a manufacturing operation. Claim 10 therefore
clearly fails to set forth the aforementioned feature of the invent-
ion. It is therefore suggested that claim 10 be amended on line
6 by changing "cell overlies the next cell" to "cell partly over-
lies the next cell so as to expose sufficient area of the cell to
permit a manufacturing operation".
...
The applicant in his response to the Final Action had this to say (in part)
as follows:
...
The Examiner's objections, although being various in detail,
it is submitted come down to the question as to whether
claims 1, 2, 3 and 10 should be limited to the feature that
the cells are seated in the receiving pockets in the half
shell to expose a sufficient area of the top plate terminal
area on each of the cells to permit access of a welding tool
and to permit welding operations to be duly performed on
the surface areas of the cells after placement in their
respective pockets. The examiner takes the position that
this exposure of the top plate terminal area of the cells
in the receiving pockets of the half shell is a critical.
feature of the invention, and the Examiner refers to various
parts of the disclosure to support his position. Applicants
submit strongly that such a feature is not critical to the
invention, and in particular, the particular arrangement
of the cells in the pockets of the half shell is not of
critical importance and that various arrangements are
possible provided that the cells are relatively parallel in
sequence and extend transverse to the longitudinal axis
of the half shell and at an angle such that the bottom terminal
surface of an appropriate cell in the sequence of said recesses
when inserted in its recess in one half shell is substantially
coplanar with the top terminal surface of the next succeeding
cell in said sequence of said recess.
Applicants respectfully submit that the essence of the present
invention as is clearly set forth in the disclosure is the use
of one half of the molded cartridge for supporting the cells as
assembled therein as a carrier to permit manufacturing operations
on the cells. In this direction, attention is directed to the
paragraph bridging pages 1 and 2, and the first paragraph on
page 2, and also particularly to the paragraph bridging pages
12 and 13 of the disclosure. This feature is nowhere disclosed
in the prior art and it will be well recognized that the Examiner
has not issued a Final Action on the basis of prior art and in
none of the prior art previously referred to by the Examiner
has he attempted to assert that this feature is known in the art....
...
The Examiner then goes on to refer to the third paragraph on
page 2, which refers to the cells being "seated in the receiv-
ing pocket in the half shell so as to expose sufficient area
of a top plate terminal area on each of the cells to permit
access to such exposed area....to enable welding operations to
be easily performed on the cells after they are placed in their
respective pockets." It is respectfully submitted that this
feature is only a particular embodiment of the arrangement of
the cells in the half shell and is not critical to the process
and is not stated as such on page 2, and further, the indications
on page 2, and particularly on page 13, first complete paragraph
is that this feature is a preferred embodiment of the present
invention.
In summary, applicants submit that the specific construction
set forth in the drawings and referred to at various places
of the disclosure in which each cell is seated in the receiving
pocket of a half shell so as to expose sufficient area of a top
plate terminal area on each of the cells to permit access to
such exposed area with a small double-pronged spot-welding
tool to enable welding operations to be easily performed on the
cells after they are placed in their respective pockets is
a particular embodiment of the invention, and is not a
critical feature of the invention, the invention being irrespective
of the arrangement of cells and is the use of one half shell
of a molded cartridge for supporting the cells therein as a
carrier to permit manufacturing operations on the cells.
... We have carefully considered the points and arguments made at the
Hearing by Mr. Hewitt. The issue before the Board is whether or not
claims 1, 2, 3 and 10 are broader in scope than the invention made.
Claims 1 and 10 read as follows:
1. A battery comprising a two-part casing consisting
of a pair of co-fitting molded trays elongate along
a longitudinal axis and each tray having a plurality
of recesses for respectively receiving and accommoda-
ting each unit primary cell of predetermined thickness
with spaced bottom terminal and top terminal surfaces
placed in each of said recesses, said recesses in said
trays being disposed effectively relatively parallel
in sequence and transverse to said axis at an angle
such that the bottom terminal surface of a prior cell
in the sequence of said recesses when inserted in its
recess in one tray, is substantially coplanar with the top
terminal surface of the next succeeding cell in said
sequence of said recesses; and electrically conductive
means electrically connecting the bottom terminal surface
of a forward cell, in said sequence of recesses, to the
top terminal surface of a subsequent cell in said sequence;
said pair of molded trays being shaped to be engageable and
mateable at relatively planar surfaces on each molded tray
with corresponding related and facing recesses in said
trays co-operating to enclose each unit primary cell.
10. A molded battery container having a hollow peripheral two
part shell consisting of a pair of co-fitting molded trays
with said peripheral shell having one end opening and
with said peripheral shell including discrete cell chambers
therein; a cell positioned in each discrete cell chamber;
said cells having an offset relationship with each other,
the bottom surface of one cell overlies the next cell, and
being insulated each from its neighbor; a plurality of
electrical connections between each of the cells to give a
serial output voltage and output terminal connectors
including one of said cells for obtaining an output therefrom.
At the outset we point out that a patent is granted to enable the originator
of an idea capable of embodiments in articles or in acts adapted to bring
an article into existence, to exploit it temporarily to his own benefit.
The exclusive right granted, however, should be limited to embodiments of
the idea, the inventive step, or invention that has been made (See Farbwerke
Hoechst A.G. v. Commissioner of Patents (1962) 22 Fox Pat. (141 at 169).
Put shortly, a patent is not granted for an idea, but only for the embodi-
went of an idea (See also The King v Uhlemann Optical Co. (1949),10 Fox
Pat. C. 24 at 44). In other words it is only the practical embodiment of
an idea or concept which constitutes subject matter. The applicant is
entitled to make his claims as broad as the prior art and the scope of his
disclosure permit. He need not, of course, specifically recite every
modification which could obviously be made to his invention. Nor need the
claims be limited to the preferred embodiment, though they must define
the invention as disclosed with sufficient particularity and distinctness
to comply with Section 36(1) of the Patent Act.
We first turn to a consideration of what is the invention described in the
application? As mentioned, the application describes a battery having a two-
part casing consisting of a pair of co-fitted molded trays. Each tray has
a plurality of recesses which cooperate to hold a corresponding plurality
of cells when the case is closed. The complete battery is intended for use
in, for example, a camera, where space is at a premium. In assembling the
battery, one tray is used as a jig to hold the cells, which are partially
exposed (see Figure 2 supra) so as to permit work to be performed on the
cells, this being essentially the welding of electrical connections between
the cells.
It is clear that such use and disposition of the cells in the tray is disclosed
as an important feature of this invention. Page 2, lines 3 ff., reads as
follows:
Such utilization of the molded cartridge halves, for assembling
and holding the cells in place during the manufacturing assembly
and in place to permit manufacturing operations to be performed
on the cells while they are being transported or held in the
cartridge halves as trays, with the subsequent closing and sealing
of the two halves as a final enclosing housing for the cells,
simplifies the manufacturing operation, reduces the number of
otherwise necessary manual operations, and greatly reduces the
cost of the final product. Moreover, the quality of the final
product will be uniform and optimum, insofar as the assembled
positions and the relative arrangement of the cells constitute
factors in proper assembly and operation of the cells as a complete
battery.
Lines 16 ff.
That feature of the invention, involving the use of one half
of the molded cartridge for supporting the cells as assembled
therein, as a carrier to permit manufacturing operations on
the cells, guides each cell to be seated in a receiving pocket
in the half shell so as to expose sufficient area of a top
plate terminal area on each of the cells, to permit access to
such exposed area with a small double-pronged spot-welding tool to
enable welding operations to be easily performed on the cells after
they are placed in their respective pockets [emphasis added].
"That feature of the invention...." as noted above must refer to the para-
graph beginning on page 1, lines 23 ff., which reads: "A feature of the
present invention is that the molded cartridge, which is to serve the housing
for the battery cells, is formed in two parts, so that the cells may be
disposed and supported in one part of the housing in a manner to permit
properly electrically connecting them to each other...." It is clear then
that the two quoted paragraphs when taken together basically describes the
essence of the invention. The limitation of space is a problem which the
inventor must overcome (see lines 16 ff., supra). Thus the adjacent cells
are so situated in the tray that the upper terminal of one cell is sub-
stantially co-planar with the lower terminal of an adjacent cell. Tab 38A
and the top terminal of cell 34 are exposed in the tray so as to permit
access of a welding tool thereto. It follows that the adjacent cells must
be slightly offset.
The applicant argues that the feature "... seated in the receiving pocket
in the half shell so as to expose sufficient area of a top plate terminal
area on each of the cells to permit access to such exposed area ... to enable
welding operations to be easily performed on the cells after they are
placed in their respective pockets," is "only a particular embodiment of
the arrangement ... this feature is a preferred embodiment of the present
invention." As discussed above the evidence does not lay the factual
foundation for that argument, and this is further made abundantly clear on
page 13, lines 8 ff., which read:
This feature of utilizing part of the final housing as a working
tray during manufacture, assures economy in the manufacturing
and assembly operations, due to the minimum of manual operations.
The construction which permits disposing half of each cell in
its pocket, while exposing a substantial area of the top
terminal surface, permits welding the intercell tabs to those
exposed top terminal areas as simple operating steps during
manufacture, which is one of the important features of this
invention [emphasis added].
Any feature that is "one of the important features of this invention" can
not by any stretch of the imagination be considered as "a preferred
embodiment," or "embodiments of non-critical features." Furthermore, we
cannot agree with the argument that "... the invention ... [is]
irrespective of the arrangement of the cells." On the contrary, it is
clear from the elaborate description in the disclosure that the arrangement
of the cells is decidedly pertinent to the invention; there is no doubt, in
our view, that the cells must be "co-planar and offset" (echelon stacked)
for fruition of a practical application of the invention described.
It is trite law that the subject matter of an invention must be embraced
or envisaged within the claims (see the King v Smith (1936) SC R at 238).
The purpose of a claim is also to delimit the monopoly granted to an
inventor with sufficient particularity and distinctness to comply with
Section 36(1) of the Patent Act.
We have no quarrel whatsoever with the applicant when he states that the
claims need not be limited to the preferred embodiment. In the present
situation however, and which often happens, what the applicant now says
is a preferred embodiment is really the invention. As mentioned above,
the applicant is entitled to make his claims as broad as the prior art
and the scope of the disclosure permit. On the other hand he should not
expect to receive a monopoly in the form of patent claims greater than
his contribution to the art.
We find claim I excessively broad and, in our view, it goes far beyond
the invention described in the disclosure and shown in the drawing. The
claim must be amended in such a manner as to make it clear that the cells,
when placed in the container, are "co-planar and offset one from the other."
This amendment would also satisfy the requirement of claims 2 and 3 as
they depend directly or indirectly on claim 1. Claim 10 could also be
amended along the same lines as claim 1, or by changing line 6 of that claim
to read: "... one cell partly overlies the next cell so as to expose a
sufficient area of the cell to permit a manufacturing operation...."
Claims 1, 2, 3 and 10 in their present form should, in our view, be refused.
In summary, we are satisfied that claims 1, 2, 3 and 10 go beyond the in-
vention made by not being restricted to an arrangement where the cells are
co-planar and offset. The claims as framed are broad enough to encompass
substantially vertical stacking of the individual cells, an arrangement not
even hinted at in the application as originally filed. We recommend that
claims 1, 2, 3 and 10 should be refused.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and have reviewed the
recommendation of the Patent Appeal Board. I concur with the recommendation
of the Board and refuse to accept claims 1, 2, 3 and 10. I will however,
accept claims when amended as suggested by the Board. The applicant has
six months within which to amend the claims, or to appeal this decision
under the provisions of Section 44 of the Patent Act.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 26th. day of September, 1977
Agent for Applicant
Marks & Clerk
Box 957, Station B
Ottawa, Ont.