COMMISSIONER'S DECISION
OBVIOUSNESS; NON-SUPPORT: ORIFICE STEAM TRAP
Condensate drained at line pressure via a drain line containing a disc
with a small orifice is inventive over the cited art. Amendment to
the drawings will clarify the location of the disc.
Final Action: Reversed.
*****************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated April 7, 1976, on
application 163,371 (Class 137-8). The application was filed on
February 9, 1973, in the name of Lawrence L. Guzick, and is entitled
"Automatically Controlled Discharge Trap." The Patent Appeal Board
conducted a Hearing on March 1, 1978, at which the applicant was repre-
sented by Messrs. H. O'Gorman, R. Page, R.E. Beatty and Prof. J. Murdock.
This application relates to a plate member containing a restrictive orifice
to b a used in pipe lines carrying vapor under pressure to control the
condensate drainage from the pipe line. Figure 1, shown below, represents
the applicants arrangement.
(See formula 1)
In the Final Action the examiner rejected the application for insufficiency
of disclosure and for failing to define patentable subject matter over the
following patents:
Canadian 221,531 Aug. 1, 1922 Doulton et al
507,426 Nov. 16, 1954 Freeman
530,918 Sept. 25, 1956 Boerner et al
United States 2,520,089 Aug. 22, 1950 Lippincott
2,803,347 Aug. 20, 1957 Whitlock
Lippincott is for a metering orifice plate, and means for mounting it in
pipe flange junctures. A spirally wound strip metal gasket serves as a
compressible seal. Figure 1 of Lippencott shows:
(See formula 1)
Whitlock describes a mixed-bed dionizing apparatus which utilizes screens
and gaskets in conjunction with a plate having flow openings therein.
Doulton relates to the prevention of noise caused by water flowing through
a pipe in which a disc of metallic gauze is inserted in the pipe along with
a plug having a restricted orifice.
Boerner is for a fire extinguishing foam chamber which uses a plate member
with a restricted orifice therein for controlling the flow.
Freeman's patent is for a liquid proportioning system in which a foam liquid
supply flowing through a fixed orifice means is used.
In the Final Action the examiner stated (in part):
The device disclosed and claimed by applicant in the instant
application is not materially different, from that in the cited
references, and also the device in the cited references can
perform the same function as that disclosed and claimed by
applicant.
In view of the teaching of the cited patents as discussed
above, it is held that this application does not contain matter
of patentable significance, hence the allowance of this applica-
tion to patent is refused.
Furthermore the device as disclosed by the disclosure of this
application, is so broadly and inexplicitly set forth that it
can be interpreted to be directed to a device which will not
perform its intended functions.
The disclosure does not include the conditions under which the
device disclosed can perform its function so as to obtain the
desired results.
The device disclosed and claimed may perform its intended function
under certain conditions, however no such conditions are set
forth in the disclosure of this application.
To all intents and purposes, the disclosure discloses a screen
and an orifice plate, and nothing more; - such are well known
in the art of fluid material handling as shown on the cited patents.
Further the disclosure states that the device is an improvement
to fluid separating traps as included in pipelines of ship-board
steam powered equipment. This then suggests that the device is to
be used on pipelines carrying large volumes at high pressure steam.
Further the disclosure states in paragraph 2 on page 3, that the pre-
sent invention provides an orifice plate means in a steam line
from which it is desired to separate condensate; the invention also
provides an inline strainer; this suggests that the device disclosed
can be placed anywhere within the steam line system, for example
a line preceding power equipment to be driven by the steam in the
line. But here a problem arises; the orifice restricts the volume
of steam (saturated steam) approaching the power equipment; hence
sufficient quantity of steam does not reach such equipment to
effectively operate it.
Also in such a case, the said device inserted in a horizontal
line carrying steam, where does the resulting condensate go?
does it merely trickle along the line on the downstream side of the
said device? The disclosure does not clarify this important point.
Two affidavits accompanied the applicants response to the Final Action. In
that response he stated (in part):
The Examiner has commented that the disclosure can be interpreted
so broadly as to be directed to a device that will not perform its
intended function. An answer to this is that the disclosure is to
be read with the eye of a person of reasonable skill in the art, who
wants to design an operable device and who has within his capabilities
and within the teachings of the art, the capability of producing an
operable and efficient condensate draining device. That he can do
so, on the basis of this disclosure and the knowledge available to
him at the time it was filed, renders the disclosure sufficient. It
is submitted that a patent applicant does not have to write his
specification so that it cannot be distorted by a bizarre reading.
The assembly disclosed performs its intended function over a wide
range of pressures -- from a few psi to over 1200 psi -- and over
a wide range of condensate flows. A proper orifice size can be readily
calculated by a designer to suit the particular conditions that are
expected within the system. If the first approximation does not yield
optimum results in a given situation, by normal, routine field
testing involving use of a slightly larger or slightly smaller orifice,
conditions can be optimized. It is submitted that a patent applicant is
not required to perform the field engineering for potential users in
order to be entitled to a patent. If such were the state of the
law, the number of disclosures filed would dwindle to a trickle and
with it, the flow of information that is in patent disclosures.
With respect to the statements in the last Action concerning the
suggestion of placing the disclosed device in a main steam line,
Applicant submits that a fair reading of this disclosure does
not lead the reader to this conclusion. It is clear that what is
disclosed is a condensate draining device that is a substitute
for conventional steam traps and such traps are never placed in
a position to block a high volume flow of steam to downstream
equipment. One of ordinary skill in the art (and even a first
year mechanical engineering student) would recognize that placing
an orifice plate in a main steam line would incapacitate any
equipment downstream of the plate that was dependent on high volume
flow and would not be misled to place an orifice plate in a steam
main. See paragraph 16 of Professor Murdock's Affidavit.
...
Applicant submits that to fill disclosures with the kinds of de-
tails that the Examiner in this application would require, would
be counterproductive from the standpoint of disseminating technical
information via patent disclosure. Adding unnecessary details
raises the cost of preparing the application in the first instance
needlessly, and wastes the time of those who are reading the
patent document for pertinent information. Patent specifications
are to be addressed to those of ordinary skill in the art, and are
to be read in the light of the background knowledge of such
persons. By analogy to an invention involving complex electronic
circuitry, the Examiner would apparently require that all circuit
parameters and component parameters be specified in the disclosure,
as theoretically it would be possible to include a component whose
value would render the circuit unusable for its intended purpose.
Clearly, this is not the state of the law. An inventor and his
counsel are entitled to rely on the knowledge and judgement of the
persons working in the art and do not have to teach what persons
in the art already know or would, as a matter of course, be expected
to do.
The portion of the specification on page 7 concerning the suggestion
to use the devices as disclosed in compressed air systems, while
admittedly brief, is sufficient to enable one of ordinary skill
in the art to understand the application being suggested. Any
mechanic who has worked with compressed air systems knows that
such systems routinely employ devices for removing condensed
water and excess oil from the high pressure air lines. The disclosed
drain orifice assembly would be used in substantially the same manner
to provide for a continuous draining of liquid components from the
system.
There are two issues that we must determine, (1) is the application directed
to a patentable advance in the art, and (2) is the disclosure sufficient.
We will consider first the objection that "this application does not contain
matter of patentable significance in view of the teaching of the cited patents."
According to the examiner the variation in the type of filter is mire
substitution, since many types of filters are manufactured, one of which
has been selected by the applicant for use in the invention. To make that
selection is in his view but expected skill for one in this art. Orifice
plates having a spiral seal mounted in pipe flange junctures were used by
Lippincott for metering fluid flow. Freeman discloses a liquid proportion-
ing system in which pressurized liquid foam flows through a fixed orifice
plate in each foam line. Doulton utilizes a restricted orifice for the
purpose of preventing water hammer in pipes. Boerner discloses a fire ex-
tinguishing foam chamber having different size orifice plates, and the de-
ionizing apparatus of Whitlock utilizes a screen assembly having a sufficiently
small mesh opening "to prevent the passage of exchange material therethrough."
At the Hearing Mr. Beatty indicated that even potential users of the
invention did not believe it would work. It is also clear that the concept
of using the orifice plate arrangement in a separating trap is both novel
and a practical application of the plate.
It is a well-established principle of patent law that the patentable merit in
an invention may reside in the idea behind the invention. Once having con-
ceived that idea the way to implement it may be both simple and apparent, but
that will not nullify the patentability of such an invention. The invention
may be in recognizing the existence of a problem, or in clearly perceiving
some particular useful end to be obtained.
A leading case dealing with "recognition of the idea or concept" is Hickton's
Patent Syndicate v. Patents and Machine Improvements Company Ltd.(1909)
26 R.P.C. 339. At page 347, Fletcher Moulton L.J. set forth the applicable
law as follows:
The learned Judge says: 'An idea may be new and original
and very meritorious, but unless there is some invention
necessary for putting the idea into practice it is not
patentable.' With the greatest respect for the learned Judge,
that, in my opinion, is quite contrary to the principles of
patent law, and would deprive of their reward a very large
number of meritorious inventions that have been made. I
may say that this dictum is to the best of my knowledge
supported by no case, and no case has been quoted to us
which would justify it.... To say that the conception may be
meritorious and may involve invention and may be new and
original, and simply because when you have once got the idea
it is easy to carry it out, that that deprives it of the title
of being a new invention according to our patent law, is, I
think, an extremely dangerous principle and justified neither
by reason, nor authority.
...
In my opinion, invention may lie in the idea, and it may
lie in the way in which it is carried out, and it may lie in
the combination of the two.
This doctrine forms part of Canadian jurisprudence. Mr, Justice Rinfret put it
this way in Electrolier Manufacturing Co Ltd v Dominion Manufacturers Ltd.
(1934) S.C.R. 436 at 442:
The merit of Pahlow's patent is not so much in the means of
carrying out the idea as in conceiving the idea itself
(Fawcett v. Homan), supra....
None of the references cited against the present application relate to the
specific problem overcome here. The effectiveness of the orifice plate in reducing
steam loss while effecting condensate discharge was completely unexpected. In
this instance the important commercial success of the invention is a factor
which may properly be considered in assessing whether invention is present. We
are consequently satisfied that there is patentable subject matter present,
and recommend that the rejection on the ground that there is none be withdrawn.
Next we turn to the objection that..."the disclosure and drawings of this
application are not sufficient in detail such that the device disclosed and
claimed will, in all instances, perform its intended task as set forth in the
objectives of this application...."
The Final Action states that the "disclosure does not include the conditions
under which the device disclosed can perform its function so as to obtain
the desired results." Commenting on the reference in the disclosure to the
device being an improvement to fluid-separating traps in pipelines of ship-
board steam equipment, the examiner maintains that this "suggests the device
is used on pipelines carrying large volumes "of steam at high pressure."
He argues that since the purpose of the orifice plate in a steam line is to
separate condensate, then the device can be placed anywhere within the steam
line system, even in a line preceding power equipment to be driven by the
steam in the line.
Two affidavits were submitted by the applicant to support his position that
the disclosure is adequate. He maintains that a person of ordinary skill in
the art involved at the time of filing the application, after a reasonable
study of the disclosure, and in the light of knowledge readily available in
his field existing at the filing date of the disclosure, would understand the
invention, and be able to put it to use.
One of the affiants is Professor J.W. Murdock, an expert in the field of
thermodynamics since 1939. Professor Murdock is the author of many publications
relating to this subject matter. Paragraphs 15 and 16 of Mr. Murdock's
affidavit read as follows:
15. Persons having the level of skill necessary for the design
and engineering of condensate removal devices, such as those
found in steam-generation and power systems, at the time of the
filing of this application on February 9, 1973, are licensed, pro-
fessional mechanical engineers having several years of experience
in the field of steam power plant and equipment design and opera-
tion.
16. The engineer described in paragraph 15, upon reading the
disclosure in this application, would understand that the drain
orifice devices described in this application are condensate re-
moval devices that serve as substitutes for conventional pressure
or temperature-operated steam traps and that they are located to
control the flow of condensate to the drain system of a steam
power plant or the like; such a person would understand that the
drain orifice assembly described in the disclosure is placed in
the same relative position in the system as the conventional traps;
such a person certainly would not be led to place an orifice assembly
as described in a conduit carrying large volumes of vapor under
high pressure to a piece of equipment that must utilize the high
pressure vapor.
A second affidavit, one taken by Mr. Robert A. Szczepanski also accompanied
the applicants response to the Final Action. Mr. Szczepanski is employed by
the Naval Ship Engineering Centre for the U.S. Government, and has been involved
in the development, testing and evaluation of drain orifices disclosed in
this application when used to replace conventional steam traps on steam-driven
ships of the U.S. Navy. As a result of the tests conducted in 1969 and 1970 the
U.S. fleet has approved the drain orifice assembly for installation in all their
fossil fuel fired ships.
At the Hearing Mr. O'Gorman took considerable time to identify the level of
skill of the average man in the art, and what the disclosure teaches that
person. Both Mr. Beatty and Professor Murdock addressed the Board on this
topic, and suggested that on a reasonable and fair reading of pages 2 to 5
of the disclosure it is abundantly clear that the invention described is in-
tended as a replacement for conventional mechanical, pressure or temperature-
activated steam traps, whose location and workings are well known to persons
of ordinary skill in the art. They also stated that it has been common and
conventional practice in steam system design to provide drip legs and drain
lines for condensate and position steam traps to receive condensate from such
drip legs.
Section 36 of the Patent Act sets out as a requirement of the specification
that it "...correctly and fully describe the invention and its operation as con-
templated by the inventor..." Paragraph 1 on page 2 of the disclosure, entitled
Background of Invention states:
The present invention relates broadly to fluid handling devices
and more particularly to improvements in fluid separating traps
as included in the pipelines of ship-board steam powered equip-
ment.
A summary of invention paragraph is found on page 3 of the disclosure and it
reads as follows:
The general purpose of this invention is to provide an automatical-
ly discharging condensate device that has all of the advantages of
similarly employed prior art devices and has none of the above
described disadvantages. To attain this, the present invention
provides an orifice plate means in a steam line from which it is
desired to separate condensate. The invention also provides an
inline strainer, formed integrally with a gasket material, and
included to separate dirt, grease, and the like from the condensate
to thereby avoid restricting or otherwise blocking the passage of the
condensate through the orifice plate means.
It is established in the first paragraph of the specification that the inven-
Lion relates to improvements in fluid separating traps found in pipelines of
steam powered ships. In the summary of invention paragraph the use of an
orifice plate means in a steam line from which it is desired to separate con-
densate is specified. Putting together all this information given on the
disclosure we have come to the conclusion that there is sufficient informa-
tion for a man skilled in the art to properly locate the device in steam
systems.
It was suggested in the Final Action that the device might according to the
disclosure be placed anywhere within the steam line system, for example in
the line preceding the power equipment to be driven by the steam in the line.
From that the Examiner considered the disclosure to be inexplicit, and broader,
than the real invention.
We think it is unlikely that a person skilled in the art would place the orifice
in a supply line preceding power equipment since this would restrict the steam
flow to such an extent that proper operation of the power equipment would not
be possible. Granted the disclosure does not specifically detail location of
the trap, but we believe what Mr. Justice Kellock said in Wandscheer et al v
Sicard Ltd. 1948 S.C.R. 1 @16 is pertinent.
The Sicard specification is interesting also from another standpoint,
namely, its particularity or rather its lack of particularity in the
teachings as to the construction of the discharge conduit it claims.
It is completely lacking in any details or measurements as to the
bore of the conduit or the angle of the elbow at any state of its
extension or retraction of the telescopic parts forming the elbow.
The patentee relies and must rely on the ability of a competent work-
man to build a conduit of some utility from the general description
to which the specification limits itself. It is further to be noted
that the elbow depicted in the drawings accompanying the specification
passes from almost the vertical through and beyond a right angle.
In my opinion it is obvious that if the respondent's patent can be
said to be unobjectionable on the ground that a skilled mechanic could,
without invention build an operable machine of some utility, the
same must also be said of the Curtis patent. In my opinion it is
properly to be said of both.
That such a mechanic could produce such a machine from the Curtis
patent is established by the evidence of the witness Ostrander. It
is to be observed that it is not necessary that such a person should
be able to do so without trial or experiments so long as the task
involved does not require invention.
(underlining added)
We have concluded that the disclosure describes the invention sufficiently clear
to enable a person skilled in the art to place the trap in the desired location,
though some experimentation which does not require the exercise of inventive
faculty may be necessary. The applicant submitted a design handbook in an earlier
response to an examiners action. This book contains an operational drawing (5B)
which clearly shows the orifice plate location. Having concluded that the
disclosure describes the invention sufficiently we believe that this opera-
tional drawing would constitute matter reasonably to be inferred and suggest
that it may be included with the drawings of this application. We believe
such an amendment would clarify some of the uncertainties objected to
by the Examiner.
Turning now to the claims which were submitted in response to the Final Action,
claim 1 reads as follows:
For use in a system carrying gas under pressure, which system
has a drain line for removing condensate and other liquid
components from said system, the drain line comprising an up-
stream section and a downstream section, each section having
an end flange and means for securing said end flanges together,
a condensate discharge device comprising a plate extending
across the entire flow cross section of the line, the plate
having a restrictive orifice therein providing a passage means
for the flow of steam and condensate through the plate, the
size of the orifice being such as to pass all of the condensate
reaching the orifice and to minimize the loss of vapor from the
line, the plate being positionable between the flange of the up-
stream section of the line and the flange of a downstream section
of the line, a first gasket for creating a pressure seal between
the upstream side of the orifice plate and the upstream flange,
and a second gasket for creating a pressure seal between the down-
stream side of the plate and the flange of a downstream section
of the line, a strainer carried by the first gasket and extending
across the entire flow cross section of the line upstream of said
orifice, the openings in the strainer being of a smaller size
than the orifice.
We find the claim generally acceptable, but believe the following relatively
minor alterations should be made to comply fully with Section 36. First
insert the word "said" after "the" in line 3; in line 5 change "and" to
read "an ", and in line 12 the word "positionable" should read "positioned."
Dependent claims 2 to 4 are acceptable.
To summarize, we recommend that the rejections on the grounds that the applica-
lion does not contain matter of patentable significance in view of the prior
art, and that the specification is not sufficient be withdrawn.
We are satisfied that the original objections of the examiner have led
to useful amendments of benefit both to the applicant and to the public.
We are also satisfied that the latest claims proposed made in response
to the Final Action, if altered as called for two paragraphs above,
overcome the objections and should be accepted.
G.A. Asher
Chairman
Patent Appeal Board, Canada
Having considered the prosecution of this application and the recommenda-
tions of the Patent Appeal Board, it is my decision that the rejection of the
application should be withdrawn. If the latest proposed claims are amended
according to the findings of the Board, the application may proceed to allow-
ance.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this l2th.day of June, 1978
Agent for Applicant
Smart & Biggar
Box 2999, Station D
Ottawa, Ontario
K1P 5Y6