COMMISSIONER'S DECISION
Rejection - Aggregation - Coffee Extraction Apparatus
Some of the claims were refused as being drawn to an aggregation. The
elements of these claims, however, are combined so as to produce a unitary
result in a more expeditious manner and to which all of the elements have
contributed their part. These claims are directed to a combination.
Final Action: Reversed
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This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated December 21, 1976, on applic-
ation 133,588 (Class 99-22). The application was filed on January 31,
1972, in the name of Neophytos Ganiaris, and is entitled "Beverage
Manufacture."
The application is directed to a process and apparatus for the manufact-
ure of coffee extracts in liquid or solid form. For the purposes of
this decision we are concerned only with the apparatus. It comprises
means for separating liquid coffee extract from precipitated solids, means
for feeding liquid to the holding tanks, means for feeding the liquid
to a crystallizer to form ice therein, means for separating the ice from
the concentrated liquid, and means for treating the liquid to form solid
soluble coffee.
In the Final Action the examiner refused claims 8 to 10 "because they claim
an unpatentable aggregation." In that action he had, inter alia, this to
say:
Claims 8 to 10 are refused because they claim an unpatentable
aggregation. While applicant's process may be inventive and
patentable, it is maintained that the assembly of this apparatus
system does not involve further invention. In his disclosure
applicant describes the prior art process including holding the fresh
coffee extract to precipitate tars, separating the precipitate
in a centrifuge, partially freezing the clarified coffee extract and
separating the concentrated extract from the ice crystals. The
apparatus system to carry out this process is also construed to
be an old combination. The formation of excessive amounts of
stable coffee liquor foam during tar separation and partial
freezing is identified as the problem to be solved. As a
solution of this problem applicant discovered that if he holds
the extract after tar separation in a certain temperature range
for some time in excess of tar precipitation in quiescent state,
excessive foaming will not occur during the subsequent steps of
processing. Applicant also disclosed a flow diagram to further illus-
trate (page 4 line 9) the new process and claims that the creation
of that illustrative flow diagram itself is also an invention
separate from the process.
However it is maintained that the mere mechanical juxtaposition
of conventional units of apparatus to implement a given process
is the exercise of expected skill rather than inventive ingenuity.
Putting it differently, a patentable process does not necessarily
lend patentability to a group of conventional apparatus which
enables the operator to carry out the process. For an apparatus
system to be patentable its total effect must be different from
the mere sum total of the effects of the individual pieces of
apparatus. This difference which is the result of a unique co-
relation and cooperation of conventional or new units of apparatus
is the new and unitary result whichif present, lends patentability
to the combination of two or more elements of apparatus.
This same objection has been raised earlier during the prosecution
of this application and applicant was invited to point out the
unitary result of the combination claimed in claims 8 to 10. In
his response applicant stated that the unitary result is the ability
of the apparatus system to carry out the inventive process. To
support his argument applicant cited a Commissioner's Decision and
quoted a pertinent paragraph from page 7 of the same. There is no
conflict between the principles of that decision and the present
grounds for rejection. In both cases it is clearly stated that
only those combinations are patentable in which known or new
elements so cooperate that they produce a new and unitary result
which is not attributable to any one of the elements, and which are
unobvious. However, applicant teaches the mere juxtaposition of
known pieces of apparatus to carry out a given process. This is
neither unobvious nor does it produce a new unitary result.
Apparatus claims 8 to 10 are unpatentable.
In response to the Final Action the applicant presented his position as foll-
ows (in part):
In the final action, the Examiner rejected claims 8-10 on the
allegation that they claim "an unpatentable aggregation". This is
a reiteration of the rejection previously raised in the official
action of April 12th, 1976, and in applicant's submission the re-
jection is completely overcome by arguments which were submitted
in the response filed on July 12th, 1976. The objection is entirely
at variance with the findings of the Patent Appeal Board in the
Commissioner's decision in applicant's earlier application 055,622.
To paraphrase the passage quoted from page 7 of the Commissioner's
decision in that case, it is clear that before an Examiner can reject
a claim as failing to recite a patentable combination, the tests proving
lack of novelty and inventive ingenuity must be satisfied, and this
can only be done in reference to the prior art.
In application 055,622 it was noted that the determination of lack
of inventive ingenuity in relation to the prior art had not been
made, and therefore the rejection could not be sustained. The same
situation exists in the present application. The Examiner has not
made his rejection of claims 8 - 10 in reference to the prior art,
and accordingly the rejection must fail.
In the final action the Examiner has stated "While applicant's process
may be inventive and patentable, it is maintained that the assembly
of this apparatus system does not involve further invention", and
from this it would appear that the Examiner considers that to be
patentable, applicant's apparatus claims should set forth an invention
which is separate and distinct from the invention set out in the
process claims. In applicant's submission, the rejection is the
result of confused thinking. It is totally wrong to say that in an
application such as the present containing both process and apparatus
claims, the apparatus claims should set forth a "further invention"
beyond that of the process claims. In fact, both the process claims
and the apparatus claims represent different aspects of the same
invention.
The final action states in the second last paragraph that "only those
combinations are patentable in which known or new elements so cooperate
that they produce a new and unitary result which is not attributable
to any one of the elements, and which are unobvious. However, applicant
teaches the mere juxtaposition of known pieces of apparatus to carry out
a given process." With due respect, insofar as claims 8 - 10 of the
subject application are directed to apparatus especially adapted for
carrying out the process of claim 1, and insofar as that claimed process
has been indicated as patentable, it follows almost automatically
that claims directed to apparatus especially adapted to carry out the
process should also be patentable. The final action speaks in terms
of "the mere justaposition of known pieces of apparatus to carry
out a given process", and this reveals the flaw in the reasoning of
the Examiner. The process involved is not a "given" process, but is
the inventive process which is set out in applicant's claims 1 - 7.
The final action is completely wrong insofar as it appears to contemplate
the claimed process as some kind of prior art over which applicant's
apparatus claims should patentably distinguish.
The examiner has indicated that process claims 1 to 7, for the manufacture of
coffee extract, are directed to patentable subject matter. It follows then that
the product of such a process is a new or improved product, or the old product
produced in a more expeditious manner. Claim 2 is representative and reads:
A process for manufacturing coffee extract which consists in holding
liquid extract containing 10 to 30 per cent coffee solids at a tempera-
ture of 30 to 60øF for a period long enough to precipitate tars or
other solid matter, treating the liquid to remove the solid matter,
holding the liquid at between 32 to 100øF for at least 5 hours in
quiescent condition, subjecting the liquid to treatment in a
crystallizer to form ice therein, separating the ice from the
liquid which now contains 30 to 50 per cent coffee solids and
freeze drying the liquid to form solid soluble coffee.
The examiner in the Final Action refused claims 8 to 10 because they claim an
"unpatentable aggregation." Claim 9 is representative and reads:
Apparatus for manufacture of coffee extract comprising at least
one primary holding tank, a bowl type centrifuge, means for feeding
liquid coffee extract from the holding tank to the bowl type centri-
fuge, at least one secondary holding tank, means for feeding liquid
extract from the bowl type centrifuge to the secondary holding tank,
means for holding liquid extract in said secondary holding tank in
a quiescent state for at least two hours at a temperature of between
32ø and 100øF, a feed tank, means for conducting liquid extract
from the secondary holding tank to th feed tank, a crystallizer,
means for conducting liquid from the feed tank to the crystallizer,
a perforated basket type centrifuge, and means for feeding the ice-
liquid material from the crystallizer to the basket type centrifuge.
We find that the specific question before the Board is whether or not claims 8
to 10 are directed to a mere aggregation of elements. If they are so directed
it clearly follows that they lack patentable subject matter. On the other hand
if we find that they are directed to a proper combination, then the patentabil-
ity of such combination will depend entirely on the state of the prior art.
In other words if it is a mere novel combination which lacks the prerequisite
of inventive ingenuity it is not directed to patentable subject matter.
An aggregation may be considered as a mechanism or arrangement of elements
each giving its own result but without any unitary result flowing from that
arrangement (Vide, Smith v. Goldie (1883) 9 S.C.R. 46, and Barton v Radiator
Specialty Co. of Canada Ltd. (1965) 29 Fox Pat. C. 89 at 96). The mere placing
of elements together without the production of a common result cannot make
them into a patentable combination (Vide, Durable Electric Appliances Co.
Ltd. v Renfrew Electric Products Ltd. (1928) S.C.R.8). A good example of
an aggregation is the common lead pencil having an eraser attached to one end.
The essential qualification for a combination is that the elements of which
the combination is composed are combined so as to produce a result to
which all the elements of the combination contribute their part. Upon
this principle depends the entire definition and understanding of what
constitutes a combination in the law of patents (vide, Baldwin International
Radio Co. of Canada Ltd. v Weston Electric Co. Inc. (1934) S.C.R. 94 at 101),
or as was stated in British United Shoe Machinery Co. Ltd. v A. Fussell & Sons
Ltd. (1908) 25 R.P.C. 631 at 657 "... a collocation of intercommunicating
parts so as to arrive at (what might be called) a simple and not a complex
result." This case was cited in the Baldwin v. Weston decision, supra.
The result produced by the combination must, therefore, be what may be termed
a common or unitary result, in the sense that all the elements of the combination
are brought together in such relation to each other that each element contributes
its own particular share to the production of that result (vide, Riddell v Patrick
Harrison & Co. Ltd. (1957) 17 Fox Pat. C. 83). The combination, however, may
be one for the production of a new result, or for an old result "in a more
convenient, cheaper, or more useful way" (vide, Baldwin v Western, supra).
In Wandscheer v Sicard Ltd. (1948) S.C.R. 1 at 4, Taschereau J. stated: "Of
course a combination may be the subject-matter of a valid patent even if it is
merely the juxtaposition of known elements. But this juxtaposition must produce
a useful and operative contrivance which has the indispensable character of
novelty [invention]." This combination of course must produce a unitary result.
In the well-known Sausage Machine patent case, Williams v Nye (1890) 7 R.P.C.
62, we find that it relates to a machine for mincing meat and filling the meat
into skins in order to make sausages. The mincing and the filling parts of
the machine had been previously known and the patent related to the placing
of the two parts in one mechanism. In the Court of appeals, Kekewich J.
held that "the patent was a combination of old things in the simplest possible
manner, that there was no sufficient invention... (emphasis added]."
On appeal to the House of Lords, Lopes J. held that the case lacked "a sub-
stantial exercise of the inventive faculty...." The point here is that the
patent was held invalid for lack of invention, but the Court still considered
it a combination, albeit unpatentable, and not an aggregation.
In the situation before us we find that the applicant has produced a unitary
result (coffee extract) in a more expeditious manner, because the process
claims are considered allowable having overcome a problem of the previous pro-
cesses. The elements, see claim 9 supra, are combined so as to produce a
result to which all the elements contribute their part (vide, Baldwin v Weston,
supra . Furthermore, a combination may be the subject matter of a valid patent
even if it is merely the juxtaposition of known elements, but having "the
indispensable character of novelty [invention]." Vide, Wandscher v Sicard,
supra.
We have, therefore, no hesitation in deciding that claims 8 to 10 are directed
to a combination where all of the elements contribute their part to produce a
unitary result, but we make it clear that we are not saying that it is necessar-
ily a novel combination, much less that it required a degree of inventive
ingenuity for fruition. These conditions must be determined from the state
of the prior art and they are not presently a consideration before this Board.
We do not, however, agree with the applicant that the apparatus is necessarily
patentable because the process is patentable. It even appears from the
specification that there is no change in the apparatus from the previous manu-
facture, but the change or improvement is in the discovery of "specific holding
times" of the process steps.
To summarize, we are satisfied that claims 8 to 10 are directed to a proper
combination and we recommend that the rejection in the Final Action refusing
these claims be withdrawn.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and agree with the
recommendation of the Patent Appeal Board. Accordingly, I withdraw the
Final Action and return the application to the examiner for resumption
of prosecution.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 26th. day of April, 1978
Agent for Applicant
Smart & Biggar
Box 2999, Station D
Ottawa, Ont.