COMMISSIONER'S DECISION
Disclosure Insufficient: Gas discharge display panels for Calculations
The inventions involve the addition of Lanthamide and Actinide rare earths to
the electrode insulators of gas discharge panels such as those used to display
digits in electronic calculators. The disclosures described only one com-
pound producing the effect, but claimed all rare earths in each series. The
broad claims were refused as speculative, hypothetical and covetors, and
that rejection was affirmed. The examiner also rejected the applications on
the ground that the applicant failed to warn of dangers involved in using the
invention. That refection was reversed. The specification is addressed to
one skilled in the art, who would be aware of the dangers involved.
Final Rejection: Affirmed with modifications
**************************
Two applications of Owens-Illinois, Inc., were rejected by the examiner
under Sections 36 and 2 of the Patent Act on the ground that the disclosures
are insufficient, and do not support the inventions claimed. The early
application, 148,888, Class 313-1 was filed on August 8, 1972, and the later,
149636, class 313-1, on August 17, 1972. The same inventors are common to both
applications, viz. Roger E. Ernsthausen, Donald K. Wedding et al.
Both inventions relate to a gas discharge device used, for example, in the
panels of electronic calculators which display digits to be read by the user
of the device. An electrical discharge between electrodes in a gaseous medium
causes numerals to light up so they become visible to the eye. Such devices
are, of course, well known, and the applicants inventions are improvements
thereto. To the dielectric insulators for the electrodes the applicant adds
a rare earth compound of the Lanthanide series (in 148888), or of the actinide
series (in 149636). Claim 1 of each application will serve to illustrate what
is involved.
Claim 1 (148888): In a gas discharge device containing at least
two electrodes, at least one of the electrodes
being insulated from the gas by a dielectric
member, the improvement wherein at least one
dielectric member contains a source of at least
one Lanthanide Series rare earth selected from
La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er,
Tm, Yb, Lu, Sc, and Y.
Claim 1 (149636): In a gas discharge device containing at least
two electrodes, at least one of the electrodes
being insulated from the gas by a dielectric member,
the improvement wherein at least one dielectric
member contains a source of at least one Actinide
Series rare earth selected from Ac, Th, Pa, U, Np,
Pu, Am, Cm, Bk, Cf, Es, Fm, Md, No, and Lw.
It is said that the addition of the rare earth compounds improves ageing
and stability of the devices, permits the use of lower operating potentials,
and improves the electrode discharge.
The examiner's objection in 148888 is that whereas the applicant has only shown
that one compound, ytterbium oxide (Yb2 0 3), actually produces the effect
desired, the claims cover innumerable other compounds and combinations thereof,
of which I29 were listed in the disclosure, but none of which (other than
Yb2 0 3) have been demonstrated to produce the effect desired. It is his con-
tention that the applicants claims are speculative, hypothetical, covetous, and are
an attempt to appropriate unexplored ground. He has said, inter alia, that:
...
... It is noted that applicant has given experimental data for
only one single compound, i.e. for Yb2 0 3, which is expressed in
a graph at the end of the disclosure. This appears to be the
only experiment on which the application is based. In a rather
general way, applicant compares the advantages of sequioxides
to the dioxides (see page 12, paragraph 2), but there is no
evidence of tests and experimental results to substantiate this
comparison.
It must be noted, furthermore, that applicant does not say whether
all the eight salts of lanthanum, for example, listed on page 7,
will work in the same way, one as the other, or any of these
salts in the same way, as the lanthanum oxides. Applicant does
not say whether all the compounds listed on pages 7 through 10
can be applied by each of the methods proposed on page 10, lines
10 to 22, nor whether with all these compounds the "desired bene-
ficial results" are obtained with a thickness of from 200 to 10,000
angstrom units (see page 11, lines 1 to 4). Nor is it clear from
the disclosure whether all compounds listed by applicant will with-
stand the heat sealing cycle temperature of 600.degree.F. In other words,
while applicant is claiming a monopoly for the use of a countless
number of compounds he gives no indication which of them are
really operable. Though it is known that the rare-earth metals
themselves have very similar properties, the same cannot be said about
the large number of the different compounds, alloys and minerals
containing these rare-earth metals.
It is held that the disclosure of utility based on the tests of a
single compound Yb2 0 3 is inadequate proof of utility for the re-
maining more than one hundred compounds covered by the broad claims.
This objection applies to all claims now on file. All claims are
therefore refused on Section 2 of the Patent Act by reason of
inutility.
While applicant cannot be expected to test all the compounds
of which he has thought and which he has listed, he can be ex-
pected to test and report on a sufficient number of them to show
by consistent results that it would be justified to assume
that the same results can be expected with all the remainng
compounds....
...
For his part, it is the applicant's contention that the disclosure does
support the invention to the breadth in which it is claimed, and that
the disclosure is sufficient. He points to the lists on pages 6-9 of
the disclosure of the compounds which may be used, on the premise, presum-
ably, that if they are referred to in the disclosure, they may be claimed.
He also states that the "applicant firmly believes that all of the compounds
encompassed within the scope of the claims are all operable..." (Feb.3, I975);
and that "in the absence of prior art to the contrary, applicant believes
that he is entitled to claim his inventive concept broadly." In addition
he argues that there is no need to "exhaustively" test an invention.
It is thus apparent that what we must determine is whether the inventor
actually made the invention to the extent to which he is claiming, and
secondly, that if he did not do so, whether he is still entitled to claim
broadly on the basis of the statements made in the disclosure.
We begin by noting that on page 6 of the specification, at lines 11-17, it
appears that two of the elements, scandium and ytterbium, which are not
members of the Lanthanide rare-earth elements, are included by the applicant
on the basis that they "sometimes exhibit the same properties as the rare-
earth series." We also note the statement at the bottom of page 9 that it
is "contemplated" that certain of rare earth minerals "may be utilized."
At the Hearing Mr. Mace was asked if the inventors had tried out any com-
pounds other than ytterbium oxide to see if they worked. His reply was:
"I don't know. It was not necessary to test any others."
The statements in the two preceding paragraphs indicate that much of what
the applicant describes is speculative at best. That conclusion is fortified
by the absence of any other evidence showing that as of August 19, 1971
(the priority date of this application), or indeed subsequent to that date,
it was really known by the applicant that anything other than ytterbium
oxide would be effective. The applicant has referred to certain patents of
a competitor (U.S. 3814970, June 4, 1974; Br. 1411297, Oct. 22, 1975 and
Br. 1415779, Nov. 26, 1975) to demonstrate that compounds of other elements
would also produce the same effect. All of them issued subsequent to
1971 when the applicant completed his own invention. Moreover they are not
before us to assess whether the claims in them are too broad, or whether
they are valid. They issued under different patent laws, whereas we are
concerned with the granting of Canadian patents under Canadian patent law.
We note, moreover, that all three patents are limited to oxides of the
elements in question. In the present application claims are put forward to cover
any source of these elements at all, and m any combination whatsoever,
whether they be oxides, nitrates, sulphates, other inorganic salts,
organic acid salts, complexes, alloys, or what have you. As may be seen
from Mellor's Comprehensive Treatise on Inorganic and Theoretical Chemistry,
Longman, (1967). Vol. V, Ch. 38, the number of these different compounds
run into the thousands. If one considers the possible combinations and
permutations of these compounds with each other covered by claim 1 (since it
is not limited to a single source of a rare earth), the numbers involved are
astronomical, running into the millions.
In his final report the examiner made a thorough examination of the jurisprudence
to be considered, including Hoechst v Gilbert (1966) S.C.R. 189; Boeringer Sohn
v. Bell Craig (1962) Ex. C.R. 201 and 1963 S.C.R. 410; In re May and Baker
(1948) 65 R.P.C. 255; Soci‚t‚ Rhone-poulene v Ciba (1967) 35 F.P.C. 174 and
1968 S.C.R. 950; In re Abraham Esau et al (1936) 49 R.P.C. 85 and
Olin Matheson v Biorex (1970) RPC 157, and there is little need for us to re-
peat the dicta laid down in them. Since the rejection, the Federal Court of
Appeal has considered the Commissioner's rejection of application 095945 in
Monsanto v. Commissioner of Patents, a judgement delivered on June 24, 1977.
The matter before the Commissioner and the Patent Appeal Board in that case was
very similar to what is now before us. The subject matter there was not a
medicine, so there is no question of any of the peculiarities attributed by
the applicant to the pharmaceutical arts limiting the application of that
decision to the present invention, a limitation to which in any event we do
not subscribe. In the Monsanto case the applicant, having shown that one compound was
useful as a rubber vulcanizer, wished to claim 128 other compounds listed in
the disclosure for the same purpose. After considering the jurisprudence listed
above, as well as others not used by the examiner in this case, the Patent
Office found such claiming to be too broad, as going beyond the area of reason-
able prediction, and as being speculative. The Federal Court confirmed the
rejection. We find the present application objectionable for the same reasons
and recommend that the claims be refused. The applicant is, of course, so far
as we have determined, entitled to a claim limited to the use of ytterbium oxide.
As for the applicant's contention that he is entitled to claim an invention as
broadly as the prior art permits, such a proposition holds only when the
invention has both been made and disclosed. No one is entitled to claim something
he did not invent merely because it is not in the prior art, and we must
consequently take the applicant's comments to have been made with those limit-
ations in mind. On this point we refer to three remarks made in Van Heusen v
Tooke Bros. 1929 Ex. C.R. 89 at 96 and 97:
....The patentee must not throw his net too wide, but must claim
clearly what he has invented, but not more than he has invented,
that is something which is the mere subject of his speculation
of his endeavour to grasp more than he is entitled to.
....It is not sufficient that a patentee's utterance springs from his
imagination, he must need carry with it the immediate warrant
showing that what he has done was done in a manner new to the
specific art.
....Invention must not be of questionable import. To constitute
invention it is not enough to disclose something but dimly
visualized.
The rejection of application 149636 was for similar reasons. In this application
the applicant claims the addition of an actinide rare earth or a compound
thereof to the dielectric members of the electrodes. In this case, however,
there is no illustration of the use of any member of the actinide
family in the gas discharge devices. For that reason the examiner has said
that the applicant is attempting to patent an idea which he has not reduced
to a practical invention, and that he has provided no evidence that any of
the large number of compounds covered by the claims possess the utility that
he attributes to them. In his view:
...
It is obvious that not all of the very large number of actinide
elements and compounds will lower the operating potential, improve
the thermostability, decrease the aging time etc.... Applicant
apparently has given no thought to what compounds will be operable,
and which ones will be inoperable. No information to that effect
is contained in the disclosure. After the expiration of the term of
the patent the public would have to do extensive testing to find
out what compounds will work, if at all. Applicant is apparently
more concerned to get as wide a protection as possible, even for
several members of the actinide series which have not yet been
isolated, and those which have "a very small half-life", than to
give some consideration to the public which involves running some
tests, disclosing the results, and telling, at least what members
or compounds have been found to be operable.
The examiner also contended that having found ytterbium oxide produces useful
results, the applicant speculates not only that other members of the lanthanide
series would be effective, but also conceived the idea of obtaining patent pro-
tection for the similar actinide series, and compared the two applications to
show how this "paper inventioneering" was carried out. He said:
It then appears to the examiner, as at the time of writing the
first report, that sometimes after the filing of the copending appli-
cation 148,888, which claims the use of the complete lanthanide
series, applicant must have conceived the idea of obtaining patent
protection also for the other similar series of the actinides and
their compounds which could, according to that conceived idea, pro-
duce some "potential beneficial results" if applied in "predetermined
beneficial amounts" in the same manner as the elements and compounds
of the lanthanide series. Applicant then prepared the present
application by copying, practically without change the first five pages
from the disclosure of the copending application, then listing all
elements and compounds of the actinide series known to him, and then
as the third step, copying further appropriate portions from the
copending application, inserting occasionally the word "Actinide",
to complete the last two pages of the present disclosure. The new
Abstract and the claims were produced from those in the copending
application by only replacing the lanthanide elements by the actinide
elements. There is no evidence whatsoever that applicant has done
anything else before the filing of the present application to perfect
his alleged invention or to give consideration to the public. The
disclosure thus does not contain the necessary ingredients of a true
invention.
It has been said before that, in effect, proof of utility depend-
ing on a few members of a large family is road equate proof of utility
for the remaining members. How much less justification is there
in the present case to grant a monopoly covering the whole large
family of elements and compounds without having the proof of utility
of even a single member of that family.
and rejected the application as a whole in these terms:
...
As the result of the above detailed analysis, the present applica-
tion is refused as a whole for the following reasons:
A. The present disclosure is inadequate in that it does not
contain any patentable subject matter as compared to appli-
cant's copending application 148,888, and therefore does
not satisfy Section 36(1) of the Patent Act.
B. The application is based only on a pure untested idea, which
is contrary to Section 28(3) of the Patent Act, and
C. In general, there is no evidence that applicant has made a
bona fide invention.
D. The disclosure contains no proof of utility for even a single
member of the family of elements and compounds for which
patent protection is sought, so that Section 2 of the Patent
Act is not satisfied.
In the Final Action of July 21, 1975, the examiner elaborated in detail upon
the reasons for his refection. He said inter alia:
It should be noted that in both Office Actions of September 19,
1973 and November 7, 1974 the examiner pointed out the apparent
lack of any experimental basis whatsoever for the present application.
It is conspicuous that in neither of the two replies was applicant
able to say that he did run at least a single test, or to produce
a single proof of a solid experimental result. This obvious lack of
solid evidence only confirms the assumptions that not a single test
had been made before the application was prepared and filed.
It is normal in Canadian patent practice to include in the disclosure
the description of several representative examples of tests, giving
the exact compounds, percentages, process steps, temperature ranges
used, and the attained experimental results. The examples yielding
the best results represent then the best mode as contemplated by applicant
and also required by Section 36(1) of the Patent Act. The examiner
found, furthermore, that whenever the question as to proof of opera-
bility arises, the applicant, particularly a large, well-established
enterprise, who rarely files an application for an untested idea,
invariably produce's same proof of practical tests to convince and
satisfy the examiner. Needless to say, in the present case, it would
have been so much simpler and convincing to file concrete experimental
data, if there had been any, instead of the arguments based on the
questionable page 10 of the disclosure.
and:
The present disclosure is defective and does not satisfy the
requirement of Section 36(1) because it does not give any pre-
ferred embodiment of the alleged invention. The pertinent part
of that section reads: "in the case of a machine he shall explain
the principle thereof and the best mode in which he has contem-
plated the application of that principle" (emphasis added). In
the present case, the "preferred embodiment" or "best mode" would
be the compounds of actinides, or combination of compounds, which
had produced the best results or at least good acceptable results.
To disclose this preferred embodiment is simply an elementary part
of the consideration applicant is expected to give to the public
in return for the broad monopoly which he is seeking.
It should be noted that in the disclosure applicant names a large
number of actinide elements and compounds. Besides the fifteen
elements of the series itself, pages 6 through 8 of the disclosure
list 54 compounds and derivatives of rare-earth metals, which
amount to a total of about 60. At the end of the disclosure,
applicant proposes that each rare-earth source may be combined with
one or more compounds of the Group IIA elements, a total of 6
being listed. Thus the total number of possible combinations
equals the number of the rare-earth sources times the number of
Group IIA elements i.e. 60 x 6, which amounts to more than 350.
According to applicant's last letter page 6, lines 19 and 20, all
of these combinations are operable. It is quite impossible that
all of these combinations are operable to the same degree, and
with the same efficiency.
and:
In Steel Co. of Canada v. Sivaco Wire and Nail Co., 11 C.P.R. (2d)
153, at page 195 we find the expression "mere paper suggestion" applied
to patents for inventions which have not been developed. In Hoechst
v. Gilbert (1964) Vol. 1, Ex. C.R. 710 and 1966 S.C.R. 189, the
Supreme Court adopted the view that "no one could obtain a valid patent
for an unproved and untested hypothesis in an uncharted field."
The dangers of overclaiming were also explored in Soci‚t‚ Rhone-Poulenc v.
Ciba (1967) 35 F.P.C. 174 at 201-205 and 1968 S.C.R. 950 in which
a broad claim vas found invalid because the majority of the substances
of the class had never been made or tested by anyone. It may be noted,
furthermore, what were the reasons leading to the introduction of both
Section 41 into the Canadian Patent Act in 19-23, and Section 38A into
the British Patent and designs Act in 1919. Section 38A came into
being to remedy an abuse which led to the domination of the British
dye industry by foreign interests who obtained broad chemical claims
covering substances which they had never made or tested, and who
subsequently used such claims to restrict the activities of their
competitors (Transactions of the Chartered Institute of Patent Agents,
vol. 62, p.92).
In this case the examiner has rejected the whole application. We find the
examiner's arguments persuasive. For the reasons advanced above against the
earlier application we believe there has not been a sufficient disclosure of
any invention made, that Section 36 is not satisfied, and on the basis of the
evidence before us that all the applicant has done is speculate about a possi-
ble invention. We recommend that the application be refused.
The examiner also objected that the applicant failed to include sufficient
warning of the dangers involved in using his alleged invention, and of
the precautions necessary. Since the specification is addressed to one
skilled in the art who, in this instance at least, would be aware of the
radioactive hazards involved, and how to handle them, we are inclined to
the view that this requirement of the examiner is unnecessary. Since,
however, we have found the application unallowable on other grounds, we
need not develop this conclusion in detail.
Our recommendations, therefore, are that the present claims of application
148,888 should be refused, and that application 149,636 should be rejected
in its entirety.
Gordon Asher,
Chairman,
Patent Appeal Board, Canada
Having considered the prosecution of this application, I now reject applica-
tion 149,636 and the claims of application 148,888 for the same reasons as
were advanced by the Patent Appeal Board. The applicant has six months
within which to appeal this decision or, in the case of application 148,888.
to restrict the claims to the subject matter found allowable by the Board.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 19th, day of January, 1978
Agent for Applicant
Gowling & Henderson
Box 466, Terminal A
Ottawa, Ontario