COMMISSIONER'S DECISION
Obviousness - Velcro connectors for panels dividing open-plan offices
The edge portions of panel dividers are made from velcro so the panels can
be quickly fastened together or separated, without the use of connecting
rods. The claims were found too broad in scope, but the application was
accepted.
Final Action - Reversed, but only newly amended claims accepted.
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Patent application 190,328 (Class 20-32), was filed on January 16, 1974,
for an invention entitled "Hinge Devices For The Interconnection of Pre-
ferably Panel-Shaped Furnishing Components." The inventor is Torsten F.
Bergstrom. The examiner in charge of the application took a Final Action
on March 1, 1978, refusing to allow it to proceed to patent. In reviewing
the rejection, the Patent Appeal Board held a Hearing on July 5, 1978,
and at which the applicant has represented by Mr. M. Sher. Also in
attendance was Mr. K. Miller, an expert in this field.
The application relates to hinge devices for interconnecting panels used
to divide open-plan office space or industrial workshops into smaller units.
Figure 2 below shows that arrangement.
(See formula 1)
The hinge portion is made of velcro(13) so that adjacent panels can be
quickly fastened together or separated.
In the Final Action the examiner rejected the application for failing to
define patentable subject matter over the following United States patents:
3,571,999 Mar. 23, 1971 Downing
3,592,288 July 13, 1971 Walters
The patent to Downing shows the use of "Velcro" to unite display panels
to upright frame members or supports. The velcro is applied to the
support in a helical path along the circumference of the tubular support
and in a straight line on the panel. Figure 1 below shows that invention:
(See formula 1)
The Walters patent was cited to show panels having edge arrangement so that
clips can be secured to the edges of the panels in a manner somewhat
similar to that achieved by the applicant.
In the Final Action the examiner argued that the applicant failed to
disclose a patentable advance in the art over the cited references. He
goes on to say that the hook-shaped fastening arrangement is known in the
furniture art. He also stated (in part):
The patent to Downing shows the use of "Velcro" to unite display
panels to upright frame members or supports. In Downing's
case the "Velcro" is put on the support in a helical path along
the circumference of the tubular support and in a straight line
on the panels per se. Applicant provides tape on either side
edge of panels so that it matches with the mating tape on
another panel. Applicant uses curved section members to support
the tape. This curved section is semi-circular in section and
is attached to the edge of the panels via hook shaped devices 17 in such
a manner that the tape edges are captured and held between the
curved section and the frame per se. This type of fabric or
material fastening is very well known in the furniture business
and does not involve any inventive ingenuity. As far as the curved
section expedient is concerned, this is exactly what Downing
has in his tubular post idea. He in fact achieves the same
advantages as the applicant - the ability to rotate the panels
about a curved surface while maintaining contact.
The applicant in his response to the Final Action had this to say, inter alia:
...
Prior to discussing the Downing patent, Applicant wishes to describe
briefly his invention. In particular, Applicant's invention is
directed to a divider panel which can be employed in combination
with other similar panels or pieces of furniture to divide up an
office or industrial area into smaller units. The Applicant's
panel has a cooperating member mounted along at least one vertical
edge of the panel, the cooperating member releasably supporting
a member having a curved section. The curved outer surface of the
latter member supports one of a complementary pair of tapes
adapted to form a tape fastener. Opposite ends of the curved member
have engaging means for releasably retaining the member in
contact with the cooperating member mounted along the at least one
vertical edge of the panel. The tape member mounted on the curved
outer surface of the curved member is adapted to engage a second
tape situated on a respective surface, such as a curved section of
another panel, whereby an angle of contact of the panel relative
to the surface can be varied while maintaining contact between
the surface and the panel.
The Applicant's invention provides an improved and less expensive
connecting device between panels or between a panel and another piece
of furniture, the connecting device simultaneously serving as a hinge
means between the panels which can be easily separated without
additional tools. A further advantage of employing the curved vertical
members on the panels is that more than two panels can be connected
to each other at the same pivot point by employing the appropriate
tapes on the respective vertical edges of the panels.
...
The drawback associated with the use of Velcro as a tape fastener is
that the holding power of the Velcro decreases after repeated assembly
and disassembly of the tape fasteners. Be that as it may, it is not
seen how this fact can adversely affect the question of the patentability
of the claims in the present application, not one of which recited
the use of Velcro as a tape fastener. Further, lines 7 to 9 of page 5
of the disclosure presently on file, clearly indicates that the tape
fasteners employed can have mushroom-shaped projections which engage
each other when they are joined together. It is therefore unclear how
the Examiner can, in any way, conclude that his allowance of Application
Serial No. 238,682 should preclude the Applicant from obtaining patent
protection in Canada in respect of the subject matter of the present
application.
...
The consideration before the Board is whether or not the application is directed
to a patentable advance in the art. Claim 1 reads:
For use in a panel, a member having a curved section, an outer
surface of which supports one of a complementary pair of tapes
adapted to form a tape fastener; opposite ends of the curved
section having engaging means adapted to releasably retain the
member in contact with a cooperating member situated along a vertical
edge of the panel, whereby the tape on the member is adapted to
engage a second tape situated on a respective surface whereby an
angle of contact of the member with respect to the surface can be
varied while contact is maintained between the member and the surface,
the member having the curved section comprises a substantially semi-
cylindrical frame element extending a height of the vertical edge
of the panel.
At the Hearing Mr. Sher argued that an invention was indeed described in
the disclosure, but that he was willing, if necessary, to amend the claims
to more specifically define the invention. Mr.Miller gave an excellent
demonstration of the alleged invention and discussed many stages of the
prior art, the problems encountered and how they were overcome.
Our first observation is that this is a crowded art and cited patents, at
first blush, appear pertinent. We feel however, that in such a crowded art we
should not expect a major step forward. This point was also argued by Mr. Sher.
On a complete study of the specification we do find some advantages over the
prior art, e.g., the applicant has completely illuminated the need for a
corner post member, the ends of each panel are made such that they form curved
vertical members, a tape is secured to the curved members which tape acts as
both a connecting member and hinge means. The applicant also argues that
by using the curved vertical members on the a panels more than two panels can
be connected to each other without a corner member at the same pivot point.
The demonstration by Mr. Miller showed at least four panels being hingedly
secured at the same pivot point.
At the Hearing Mr. Miller pointed out that the product has "substantial
commercial success." It is trite law however, that it is the precise form
of the invention defined in the claim of the application or patent which is
to be considered in gauging the effect of commercial success (vide, Wildey
and White Mfg. Co. Ltd. v H. Freeman and Lebruk Ltd. (1931) 48 R.P.C. 405 at
414, and Omark Ind. (1960) v Gouger Saw Chain, Co. (1964) 27 Fox P.C.I at 22).
We are not persuaded that the present claims define the precise form of the
invention being marketted which must be considered in gauging the effect of
commercial success. The scope of monopoly sought is too broad.We are
satisfied, however, that the applicant has described in his specification a new
combination which, in our view, required ingenuity for fruition. But we
are not satisfied that the claims clearly define the extent of monopoly to
which protection may be granted, and for that reason we agree with the
examiner that the claims are too broad in scope. At the Hearing Mr. Sher
suggested that we should consider present claim 6, which is a more restricted
claim than claims 1 to 5. Some suggestions were also made at the Hearing to
amend claim 6 to more specifically define the invention.
In order to expedite proceedings Mr. Sher was contacted by phone and further
amendments were suggested to claim 6, to be presented as new claim 1, which
would, in our view, more clearly define the proper scope of monopoly of the
invention described. An amended claim 1 was submitted to the Board on Oct. 16,
1978 and reads:
A panel comprising: a cooperating member mounted along at least one
vertical edge of the panel, the cooperating member releasably support-
ing a semi-circular frame element, an outer surface of which supports
one of a complimentary pair of tapes adapted to form a tape fastener;
opposite limbs of the frame element having projections releasably
retaining the frame element in contact with the cooperating member,
said frame element further having shoulders to receive and retain
said tape, whereby the tape on the outer surface of the frame element
is adapted to engage a second tape situated on a respective surface
whereby an angle of contact of the panel relative to the surface can
be varied while maintaining contact between the surface and the panel.
Claims 2 and 3, which depend on new claim 1, were also added to the application.
In the circumstances, no further discussion is necessary because, in our view,
amended claims 1 to 3 now properly define the extent of monopoly to which
protection may be granted. We recommend that the decision in the Final Action
to refuse the application be withdrawn and that amended claims 1 to 3 be accepted.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and agree with the
recommendation of the Patent Appeal Board. Accordingly, I withdraw the
rejection made in the Final Action refusing the application, but I do
not accept the claims on file. I will, however, accept amended claims
1 to 3. The application is returned to the examiner for resumption of
prosecution.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 24th. day of November, 1978
Agent for Applicant
Alan Swabey & Co.
625 President Kennedy Ave.
Montreal, P.W.
H4A 1K4