COMMISSIONER'S DECISION
SUPPORT IN DISC.: Windshield Mounting for Snowmobiles
The windshield comprises a moulded sheet of transparent resilient material
having a series of mounting tabs spaced along its lower edge. The claims
do not have to be restricted to the preferred embodiment as required by the
Final Action, but may define the invention described as broad as the prior
art will permit.
Final Action: Withdrawn
*******************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated December 13, 1977, on
application 210954 (Class 296-41). The application was filed on
October 8, 1974, in the name of J‚rome Bombardier, and is entitled
"Windshield Mounting."
The application is directed to a snowmobile windshield comprising a
moulded sheet of transparent resilient material having a series of mount-
ing tabs spaced along its lower edge. The mounting tabs are of resilient
form having laterally extending parts which can be compressed together
to allow the tab to pass into engagement with a narrow mounting slot
in the cab of the snowmobile. Figure 5 shown below illustrates one embodi-
went of that arrangement:
(See formula I)
In the Final Action the examiner refused claims 1 and 3 to 8 because the
matter claimed is not set forth in distinct and explicit terms so as to
"be adequately supported by the disclosure." He argues that "since the
disclosure and drawings specifically describe and show only one type of
tab, then the claims, in order to be adequately supported by the
disclosure of this application, must distinctly describe the said
tab in sufficient detail such that the tab claimed is the same tab as
that disclosed."
The examiner further argues that "... There is no doubt, that numerous
ways are possible to produce or construct a tab with locking properties
similar to that disclosed by this application. The applicant has failed,
however, to disclose such in the disclosure of this application as origin-
ally presented. Applicant has disclosed and shown in great detail only
one form of said tab, hence applicant can only claim such a form...."
In response to the Final Action the applicant relied on his arguments of
June 2 and October 31, 1977. In the action of June 2 he had, inter alia,
this to say:
...
In the fourth paragraph of the official action, the Examiner
summarizes some of the features of the preferred embodiment of
the invention, which, in fulfillment of the requirements of the
Patent Act, is disclosed. As is noted in line 4 of page la,
this embodiment is disclosed "by way of example only". For
the Examiner to suggest, as appears to be implied from the
wording of the official action, that the particular features
of the exemplary embodiment disclosed ought to constitute
precise limitations on the scope of the invention claimed, has no
justification in law, reason, or practice. As will be abundantly
clear from a consideration of the applicant's specification
as a whole, the broad concept of applicant's invention is
in no sense restricted to the specific structural details of the
exemplary embodiment disclosed. Were the situation otherwise,
a patent would be virtually useless since it would protect
nothing other than the exact structure disclosed, so that third
parties could readily avail themselves of the fruits of the
patentee's invention without infringing the patent.
...
The suggestion that if all the tabs were made according to the
claim none of the individual tabs would offer any resistance to
removal, is clearly inconsistent with the wording of the claim
which contains a detailed recitation of the resiliently compressible
nature of the intermediate portion of the tab, so that it can be
compressed to a smaller overall width, passed through the slot,
and then returned to its extended condition to form a releasable
connection between the windshield and the mounting slots.
Accordingly, it is submitted that the rejection of claim 1 is
totally inappropriate and ought to be withdrawn. Applicant
does not argue with the principle that a claim must be fully
supported by the disclosure, and must not be broader than the
invention disclosed. However, this is quite a different matter
to the Examiner's assertion that the claim ought to be restricted
to the specific structural details of the preferred embodiment
disclosed.
...
In the response of October 31, 1977, he also had this to say:
...
In the paragraph bridging pages 1 and 2 of the official action
of August 3, 1977, the Examiner notes that claim 1 omits any
recitation of the vertical slot (23) and notes:
"Without that slot the reversely curved portion (24) could
not be formed in the plastic sheet. Without that slot the
squeezing and wedging action shown in Figures 3 and 4 could
not occur. By the omission of any definition of this vertical
slot in claim 1, and as a result of the limitations which are
recited, the claim defines a tab which cannot have the basic
character of the tab disclosed".
Applicant agrees that the vertical slot (23) is essential
to the specific embodiment illustrated in the drawings of the
application. However what the Examiner has repeatedly failed
to appreciate is that claim 1 is not restricted to the precise
details of the disclosed embodiment. The Examiner emphasizes
that without the slot the "reversely curved portion (24) could
not he formed". Whether or not this statement is correct is
immaterial. Claim 1 does not recite "reversely curved portions"
but rather recited (see lines 10-12) that the tab has an
intermediate portion "wherein the tab is laterally extended to
define a region the overall width of which is increased"
relative to the end portions of uniform thickness.
In the same vein, the suggestion in the above quoted passage
that by omission of the vertical slot claim 1 defines a tab
which cannot have the basic character of the tab disclosed is
non-sensical. The basic character of the tab disclosed is that
it enables the windshield to be mounted without requiring access
to the underside of the part of the snowmobile in which the
mounting slots are provided, such that during insertion the
intermediate portion of the tab is squeezed to pass through
the narrow slot, and once it has passed through expands to
retain the windshield in position.
...
The consideration before the Board is whether or not claims 1 and
3 to 8 are supported by the disclosure.
We should first make it clear that the object of a claim is mainly to
define the extent of the monopoly to which protection is granted and we
must look to the specification for a description of the invention
(vide, Baldwin Int. Radio of Canada v Western Electric Co.(1933) Ex. C.R. 13).
It was also held in Riddel v Patrick Harrison (1956-1960) Ex.C.R. 213 at
253, "... an inventor need not restrict his claims to what has been
'specifically described in the specification and illustrated in the accom-
panying drawings,' but within the breadth of his invention, may claim
it as broadly as it would normally be construed by persons skilled in
the art." On the other hand however, a claim cannot be so broad in scope
that it will encroach on the prior art.
The invention is succinctly put in the disclosure as filed at page 1, line
4 f.f., and reads:
According to the invention there is provided a recreational
vehicle, comprising a moulded sheet of transparent plastics
material, said windshield having a central section integral with
two curved rearwardly extending side sections, having a lower
edge for engagement on a body portion of the vehicle, and
attachment means on said lower edge to form a releasable
connection of the windshield on the vehicle, said attachment
means comprising a number of tabs spaced at intervals along,
and extending downwardly from, said lower edge, each tab being
of generally flat form substantially co-planar with the area of the
windshield adjacent thereto, said tab being of resilient
material and having a laterally extended portion spaced from and
extending parallel to the lower edge of the windshield, the
arrangement being such that said laterally extended portion can be
resiliently compressed to pass through a narrow mounting slot in
the vehicle, and having passed through the slot can return to its
extended condition to form a releasable connection between the
windshield and the mounting slot.
Claim 1 reads:
A windshield for a recreational vehicle, comprising a moulded sheet
of transparent plastics material, said windshield having a central sec-
tion integral with two curved rearwardly extending side sections,
having a lower edge for engagement on a body portion of the vehicle,
and attachment means on said lower edge to form a releasable connection
of the windshield on the vehicle, said attachment means comprising a
number of tabs spaced at intervals along, and extending downwardly
from said lower edge, each tab being generally co-planar with the
area of the windshield adjacent thereto, each said tab being of
resilient material and having a first region of uniform thickness
adjacent the lower edge of the windshield, an intermediate portion
adjacent the first region wherein the tab is laterally extended to
define a region the overall width of which is increased relative to
said first region of uniform thickness, and a free end portion
comprising a second region of uniform thickness beneath the
intermediate portion, said first and second regions of uniform
thickness being generally aligned with each other, first and
second transition surfaces extending vertically of the tab
at an angle to the plane thereof from opposite sides of said
intermediate portion to each of said first and second regions
respectively, the intermediate portion being itself resilient-
ly compressible to a smaller overall width when urged through
a slot narrower than said original overall width through inter-
action of the edges of the slot with said first or second
transition surfaces respectively, and then returning to its
extended condition when disengaged from the slot edges, to
thereby form a releasable connection between the windshield
and the mounting slot.
The applicant then goes on to say that "the invention will be further described,
by way of example only, with reference to the accompanying drawings...."
In other words the applicant now proceeds to give a preferred embodiment, but
he does not have to restrict his claim to define the preferred embodiment.
If a person skilled in the art can vary the type of tab to carry out the
invention described, without inventive ingenuity, then the claims may define
that invention as broad as the prior art will permit.
We do not agree with the examiner that "the disclosure and drawings very
specifically describe and show only one type of tab...." In a description
of the invention supra the applicant gave a broad description of the tab:
"... the tab being of resilient material and having an extended portion
spaced from and extending parallel to the lower edge of the windshield,
the arrangement being such that said laterally extended portion can be resiliently
compressed to pass through a narrow mounting slot in the vehicle, and having
passed through the slot can return to its extended condition to form a
releasable connection between the windshield and the mounting slot." This is
clearly a broad description of a tab which can, in our view, be produced in
various ways without any inventive effort. In any event, the examiner states in
the Final Action, and we agree: "There is no doubt that numerous ways are possible
to produce or construct a tab with locking properties similar to that
disclosed by this application;..." Furthermore, the claims do not have to
"distinctly describe the said tab...." The claims, as mentioned, must define
the limits of the scope of monopoly of the invention; the tab is merely a
part of what may be an inventive idea or concept. We suggest however, that
the term "width" in claim 1 should more properly read "thickness."
We are not satisfied that the decision in the Final Action refusing claims
1 and 3 to 8 for non support in the disclosure is proper. We recommend
that the Final Action be withdrawn and the application returned to the
examiner for resumption of prosecution.
J.F. Mughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and I 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.A. Brown
Acting Commissioner of Patents
Agent for Applicant
Smart & Biggar
Box 2999, Station D
Ottawa, Ont.
Dated at Hull, Quebec
this 4th. day of July, 1978