COMMISSIONER'S DECISION
Obviousness - Internal Combustion Engine
The invention is an engine with a transparent cylinder wall used for
educational purposes. The internal moving parts are exposed to view
during operation. The rejection of some of the claims is affirmed.
Final Action: Affirmed, but amended claims suggested for allowance.
********************
Patent application 120,868 (Class 35-19), was filed on August 18, 1971,
for an invention entitled "Transparent Internal Combustion Engine." The
inventors are Charles W. Haldeman et al, assignors to Megatech Corporation.
The examiner in charge of the application took a Final Action on January
12, 1977, refusing to allow it to proceed to patent. In reviewing the
rejection, the Patent Appeal Board held a Hearing on October 11, 1978,
and at which the applicant was represented by M. G. Houle. Also in
attendance was Dr. C.W. Haldeman, one of the inventors.
The application relates to an internal combustion engine and, more particular-
ly concerns transparent cylinder walled engines for educational use exposing
the internal moving parts of the engine to view during operation. Figure 3,
below, shows that arrangement:
(See formula 1)
In the Final Action the examiner refused claims 1 to 9 and 11 to 15 for
"lack of inventive ingenuity" in view of the following cited art and common
knowledge.
United States Patents
2,919,688 Jan. 5, 1960 Bowditch et al
2,751,146 June 19, 1956 Moseley
3,358,914 Dec. 19, 1967 MacMillan
3,315,881 Apr. 25, 1967 Halpin et al
2,992,052 July 11, 1961 De John
Catalogue-Perry School Supplies Ltd., Catalogue Number 1060
Glass Motor (Received in Patent Office January 27, 1969 and
available in Cl. 35-19 (formerly Cl. 35-10)).
Internal Combustion Engines - Lester C. Lichty - Sixth
Edition 1951 - page 135.
The Moseley and MacMillan references relate to piston and cylinder wall
construction for air compressors, the pistons having grooves in which
dry lubrication plastic rings are inserted. Bowditch and the Catalogue
reference provide some visual demonstration of the inner workings of moving
parts of an engine. De John describes a self sealing piston which incorpor-
ates the use of a flexible flap, while the Halpin patent is directed to
variations in self-lubricating systems.
In the Final Action the examiner discussed in detail his reasons for reject-
ing the claims for failing to define inventive subject matter. For example,
he had this to say about claim 1:
...
Claim 1 is refused as failing to define inventive subject matter
over either of Bowditch et al or the Perry catalogue reference
taken in conjunction with any of Moseley, MacMillan, or Halpin
and common knowledge. It is well known in view of either
Bowditch or Perry to provide moving assemblies partially
constructed of material which allows viewing of moving parts.
While the glass motor of the cited catalogue reference of Perry
does not constitute a working motor as does that of the
Bowditch patent, yet the principle of providing visual devices
to demonstrate inner workings of machinery has long been known
as evidenced by Bowditch or Perry. Further, Bowditch at Column
1, line 23 to line 30 describes that viewing windows in cylinder
heads were old at the date of his patent (January 1960). But
even eschewing the teaching of Bowditch, it is held that a
mechanic skilled in the art would have little difficulty in
providing a transparent working model of an internal combustion
engine given prior knowledge of internal combustion engines and
the glass motor of the Perry catalogue reference. Obviously,
the material used to provide visibility would have to have the
necessary attributes of strength heat-resistance, etc. Thus
the replacement of certain metallic parts of an internal
combustion engine with transparent material would constitute
a mere substitution of material to one skilled in the art.
Furthermore, the definition in the claim whereby a sealing means
is provided to coact with the piston and cylinder wall to
establish a dry lubrication has long been in use as described
in patents to any of Moseley, MacMillan or Halpin who suggest
piston rings of resilient plastic such as Teflon.
...
In response to the Final Action the applicant presented amended claims 1 to
15 and had this to say, inter alia:
...
The Examiner's primary references are Bowditch et al and the
Catalogue reference taken in conjunction with any of Moseley,
MacMillan or Halpin and common knowledge. Bowditch et al
relates to an operating engine and presents the problem of
wanting to see inside the combustion chamber of the engine
during operation. Bowditch et al states that this has previously
been done by making the cylinder head transparent. However,
this can be expensive when different shaped heads are used.
Bowditch et al solves the problem by making the piston head
transparent and using a mirror arrangement within a long piston
skirt between the piston head and piston rod attachment. The
arrangement is obviously complex. Bowditch et al neither discloses
nor suggests making the cylinder wall transparent.
The Bowditch et al patent teaches the desirability of being
able to look inside an engine to view the action of the fluids
in the expansible chambers formed by the piston cylinder assemble
to study certain effects. The cylinder wall is not transparent
as disclosed and claimed in this application.
...
The Catalogue reference may apparently disclose a transparent
cylinder wall, but it is not in the environment of an operating
engine. Further, there is no indication that the Catalogue
reference discloses combustion chamber sealing means which prevent
damage to the cylinder wall during operation.
While it may be well known to make moving assemblies partially
constructed from material which allows viewing as the Examiner
states, and as shown by Bowditch et al or the Catalogue
reference, certainly there is no teaching or suggestion in the
art in making the cylinder wall of an operating engine transparent.
Making the cylinder wall transparent is not only a simpler way
of viewing the combustion chamber, as compared to Bowditch
et al, but a better way since more of the engine can be seen.
Problems are presented when making the cylinder wall transparent
in an operating engine. The wall must remain transparent during
operation and means must be provided to ensure this. To this
end, combustion chamber sealing means are provided which are made
of a material preventing damage to the cylinder wall.
...
At the Hearing Mr. Houle argued strongly that indeed an invention had been
made and was fully described in the disclosure. Dr. Haldeman demonstrated
the invention with a working model of his internal combustion engine which
showed the advantages of a transparent cylinder wall. One of Mr. Houle's
major points was that there is no teaching or suggestion in the cited art
to make the cylinder wall of an operating engine transparent. He went
on to say that making the cylinder wall transparent is not only a simpler
way of viewing the combustion chamber, but a better way since more of the
combustion process can be seen.
Our first consideration will be whether or not an invention has been described
in the disclosure. To do this we will first analyze the cumulative teachings
of the art cited.
The Bowditch patent teaches the desirability of being able to look inside
an engine to view the action of the fluids in the expansion chamber formed by
the piston cylinder assembly to study certain effects. The cylinder wall,
however, is not transparent and the viewing is done through a quartz window
in conjunction with a mirror viewing arrangement. No suggestion was made to
have the cylinder wall transparent. On the other hand the Catalogue reference
discloses a transparent cylinder wall, but it is not in the environment of
an operating engine.
As mentioned the Moseley and MacMillan patents are directed to piston and
cylinder wall construction while DeJohn and Halpen are concerned with self-
lubricating systems. Moseley, MacMillan and Halpin which are directed to
compressors are not, however, concerned with the many problems encountered in
designing internal combustion engines.
We agree with the applicant that there is no teaching or suggestion in the
cited art of making the cylinder wall of an operating engine transparent. The
fact, however, that this was done before with a non operating engine precludes
the applicant from claiming the broad concept per se.
We have carefully read the disclosure and considered the drawings of this
application and studied them with respect to the cumulative teachings of
the cited art. We are satisfied that the applicant has overcome problems
not encountered in the prior art which required a degree of ingenuity for
fruition. These problems centered around piston and cylinder seal combination
in that the piston does not contact the glass cylinder wall. The circum-
ferential means near the top of the piston, such as the flap or rings, function
both to provide a bearing surface between the piston and cylinder wall and
effect a seal. This is in contrast to the customary engine construction
where the piston and cylinder walls are essentially in contact over their
common length and normally requiring a fluid lubricating system.
The specific question then is the scope of monopoly which the applicant is
entitled to in defining his invention in the claims.
. The advance in the art, in our view, is broadly the use of a transparent wall
in an operating engine in conjunction with the inventive application of
that idea. First the piston must be made of a material which has good thermal
heat conducting properties and the cylinder wall is made of transparent
glass. The non-contacting arrangement between the piston and cylinder
walls appear to be most important. Finally the application of the flexible
ring or rings which co-acts with the surface to produce the lubrication,while
at the same time sealing the engine.
To clear a point which was discussed at the Hearing the applicant does not
have to claim his preferred embodiment, but may define his invention in the
claims as broad as the invention described in the disclosure and what the
prior art will permit.
We will now consider the claims. Amended claim 1 reads:
An operative internal combustion engine for displaying the
operative relationship among elements thereof comprising,
piston means, means defining a cylinder wall surrounding the
piston means made of transparent material so that operation
of said engine may be visually observed during operation,
and means coacting with said piston and said cylinder wall
for scaling the combustion chamber bounded by means includ-
ing said cylinder wall and said piston, the latter means also
comprising means for establishing a dry lubricating relationship
with said cylinder wall as said piston reciprocates therein
during engine operation, said engine being free from liquid
lubrication inside said cylinder wall, said means for sealing said
combustion chamber comprising at least one sealing ring made of
resilient self-lubricating material having a low coefficient of
friction attached to said piston means and sealing the region
between said piston means and said cylinder wall, said engine
including first means on said piston means for supporting said
piston means to permit relative axial displacement with said
cylinder wall and means cooperating with said first means and
said piston means for radially spacing said piston from said
cylinder wall in noncontacting relationship therewith, said
piston means made of material which if allowed to contact the
cylinder wall directly would damage said cylinder wall while
said sealing ring and said mans for radially spacing prevent
damage to said cylinder wall.
It is observed that this claim is the only independent apparatus claim,
therefore, any dependent claims will stand or fall with claim 1.
Some amendments to this claim were discussed at the Hearing. For example,
the transparent "material" of the cylinder should be restricted to "thermal
resistant glass." Another feature which was brought out at the Hearing as
considered important was that the piston is made from "material which is a
good thermal conductor." This feature, in our view, should also appear in the
claim. The claim also appears redundant or negative in some parts, for example,
there is recited "means for radially spacing said piston from said cylinder
wall...." Then the claim goes on to recite that the piston is made of material
"which if allowed to contact the cylinder wall directly would damage the
cylinder wall...." The claim does, however, cover the lubricating and sealing
features and probably post important the means to support the piston "to
permit relative axial displacement with said cylinder wall," in other words
"radially spacing said piston from said cylinder wall in noncontacting
relationship therewith." At the Hearing, however, the spacing was considered
as a "substantial" spacing relative of course to other internal
combination engines. This we feel should also be brought out in the claim.
The drawing in the Halpin patent shows some cylinder spacing in an air-
compressor arrangement. The disclosure of that patent, however, states
that "The piston 10 is reciprocable in generally conventional manner within
a cast iron cylinder liner 16." In other words this patent does not teach
a "substantial" spacing for a specified purpose.
This claim when amended as indicated would in our view, define the proper
scope of monopoly of the invention described in the disclosure and illustrated
in the drawings. Any appropriately dependent claim or claims would also be
found allowable.
Amended claim 15 is directed to a method and reads:
A method of operating the internal combustion engine utilized
for displaying the operative relationship among elements
thereof and having piston means, a cylinder wall surrounding the
piston means, and a combustion chamber, said method including
the steps of supplying to said combustion chamber a mixture of
air and fuel characterized by combustion products substantially
free of material that would coat said cylinder wall to reduce
the transparency thereof, and then igniting said mixture to
relatively displace said piston means and cylinder wall while the
latter remains transparent.
This claim recites steps of operating an engine which clearly apply to any
internal combustion engine and is totally lacking in any inventive merit.
This claim should be refused.
To summarize, we are satisfied that a patentable advance in the art has been
described in the disclosure. We recommend that claim 1, when amended as
suggested, along with appropriate dependent claims, should be allowed, but
that the decision in the Final Action refusing claims 1 to 9 and 11 to 15
should be affirmed. Amended claim 15 should also be refused.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and reviewed the
recommendations of the Board. Accordingly, I refuse claim 15, but will
accept claim 1 when amended as suggested by the Board along with any
appropriately dependent claim or claims. The applicant has six months
within which to submit an appropriate amendment, or to appeal my decision
under the provisions of Section 44 of the Patent Act.
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.Q.