COMMISSIONER'S DECISION
Section 36(2): Cable Splice Repair Sleeve
The applicant is entitled to claims which accurately define the inventive
concept. The invention made is broad, and the claim need not in this case
be restricted to the preferred embodiment.
Final Action: Reversed
******************
Patent application 138,599 (Class 339-47.1), was filed on March 30, 1972
for an invention entitled "Cable Splice." The inventor is Duane D. Rodger,
(assignor to Raychem Corporation). The examiner in charge of the applica-
tion took a Final Action on May 26, 1977 refusing to allow it to proceed
to patent.
This application relates to repair sleeve suitable for splicing electrical
cables, such as those used in underground coal mines. The sleeve is made
of a polymeric material which has been radially expanded from an original
heat-stable form to a dimensionally heat-unstable form which shrinks upon
the application of heat. The sleeve is fitted over the splicing joint, is
then heated, and shrinks back to its unextended form to form a tight
covering over the joint. This permits cables to be spliced in the mine,
rather than taking them above ground for repairs. The invention is illus-
trated by figure 3 and in particular by figure 6 of the drawings.
<IMGS>
In the Final Action the examiner rejected claim 1 under Sec. 36(2) of
the Final Action for "not stating distinctly and in explicit terms the
thing that the applicant regards as new." Claim 1 reads:
An article comprising a sleeve of polymer is material which sleeve
has been radially expanded from an original heat-stable form to
a form in which it is independently dimensionally belt-unstable
and is capable of shrinking in the direction of its original form
upon the application of heat alone, the sleeve having a tensile
strength of at least about 1200 p.s.i. when measured in accord-
ance with ASTM D 2671 using a jaw separation speed of 20 ~ 2
inches per minute, a maximum stiffness of 10,000 p.s.i. when
measured according to ASTM D 747 and a dielectric strength of
at least 200 volts per mil determined in accordance with ASTM D 149,
and at least part of the inner surface of the sleeve being provided
with an adhesive.
In making his objection the examiner said (in part):
The alleged invention disclosed by the applicant is to a composition
of material suitable for making sleeves to cover a cable splice
used in the mining industry. To find a solution to the problem
in existing sleeves, applicant decided to increase the flexibility
of the material in which the mayor polymeric component was polyethylene.
He made the following composition: - 40-50% (about 45%) an ethylene
vinyl acetate copolymer (e..g. "ALATHON 3190"); up to about 10%
(about 7%) an ethylene ethyl arcylate copolymer; 10-20% (about 15%)
carbon black; up to about 25% flame retardant (about 18%) a
halogenated bis-imide; up to 10% (about 6%) antimony oxide; the
remainder being anti-oxidants and chemical cross-linking agents
(example a peroxide).
Having made the compound a series of tests were made to determine
the physical properties of the compound. As was expected in in-
creasing the flexibility, the tensile strength was reduced from
that of previous material. However, the overall properties were
such that the use of the material as a sleeve, overcame the
problems previously encountered, without preventing the splice as
a whole from meeting the statutory requirements.
Applicant did not invent the physical properties but rather the
compound that exhibited the physical properties as defined in
claim 1. As the alleged invention is to a composition the
claims must define the ingredients. If the same test results
can be obtained from "a family" of ingredients then a Markush
type claim should be considered to name the ingredients.
He is prepared to allow claims which are restricted to the novel composition
disclosed.
In response to the Final Action the applicant stated (in part):
...
Applicant has already stated in prosecution, and now repeats, that
his invention is based upon the realisation that, contrary to all
expectation, the novel articles defined in Claim 1 have substantial
and unexpected advantages. While that inventive concept is of
course exemplified by sleeves made from the particular compositions
set out in the specification, it is well settled law that an
Applicant is entitled to claims which accurately define his
inventive concept and that he should not be forced to restrict
his claims to the specific embodiment thereof. Especially is this
so in the present case, in which (as the prosecution history shows)
those skilled in the art will readily be able to prepare a wide
variety of sleeves which are within the score of Claim 1 now on
file, but which would be outside the scope of a claim restricted
to sleeves made from the particular compositions shown in the
specification. While it is not entirely clear what the Examiner
meant when he said that "Applicant did not invent the physical
properties", it is submitted that the Examiner was clearly wrong
if he was concluding that Applicant did not invent sleeves
having the combination of physical properties set out in claim 1.
Again it must be emphasised that at no stage has it been suggested
that sleeves as defined in Claim 1 are not novel and inventive.
Also, it should perhaps be added, for the sake of completeness,
that during the earlier prosecution of the application, the
Examiner rejected the claims as being too broad in view of the
disclosure, and that this objection was not repeated after
Applicant had shown in detail, in his letters of 20 May and
9 July, 1976, and the affidavits referred to therein, that there
was no substance in that objection.
...
The question to be answered is whether claim 1 complies with Section 36 of
the Patent Act.
It is the examiner's position that since the applicant developed a new
composition for a particular purpose from specific ingredients and then
determined its physical properties, he may claim only this specific composition.
He argues that the applicant "did not invent the physical properties but
rather the composition that exhibited the physical properties defined in
claim 1".
On the other hand the applicant maintains that he is entitled to claims which
accurately define the full inventive concept, and should not be forced to
restrict them to a specific embodiment of that concept.
In weighing that contention we have had recourse to Bergeon v De Kermor Electric
1927 Ex. C.R. 181 at 196, where we find:
It was held in Denuing Wire and Fence Co. v. American Steel
and Wire Co (3): "That the mere function or operation
of a machine, or other device, as distinguished from the
machine or device itself, are not the subject of a patent
is well settled." end a patent covering generally any and
every means or method for producing a given result
cannot be upheld. [underlining added]
At the same time we should not be too astute in unduly restricting an
inventor to the specific embodiment disclosed. There is a need to balance
the needs of the inventor to claim his invention in such sufficiently
broad terms as to afford him adequate protection for what he has done, and
those of others who should not be prevented from doing what the patentee
has not invented. We find, for example, in P & M v Canada Machinery 1926
S.C.R. 105 at 118:
...that a claim may be well founded to the use of a principle
of manufacture so individual in form that it may be carried
out under the general direction of a skilled manufacturer
without further invention. Or if you suggest and discover
not only the principle but a means of applying it to a
practical result by a mechanical contrivance and apparatus,
and show also that you are aware "that no particular sort of
modification or form of the apparatus is essential in order
to obtain a benefit from the principle, then you may take
your patent for the mode of carrying it into etfect
and are not under the necessity of describing and confining
yourself to one form of apparatus. (British Thomson - Houston
v Corona Lamp Works 39 RPC 20)."
The real issue then, as we see it, is whether the applicant invented a
specific solution to a problem, in which event he may claim only that
specific solution; or whether he pointed out a general solution to a
problem, in which event he might claim the general solution. He himself
has said that:
...those skilled in the art will readily be able to prepare
a wide variety of sleeves which are within the scope of
claim 1 now on file, but which would be outside the scope
of a claim restricted to sleeves made from the particular
compositions shown in the specification.
Part of our task will be to assess the accuracy of that statement.
In the disclosure the inventor has specifically described two types
of copolymers as being suitable, namely ethylene-ethyl acrylate copolymers and
ethylene-vinyl acetate copolymers. He has discovered the properties required
in th a polymers used to produce the desired results. He has said that other
useful copolymers would be well known to those skilled in the art. Further,
he has pointed out on page 6 of the disclosure at line 25 to three United
States patents in which are disclosed several other polymers suitable for
use in his sleeve. As a result we are satisfied that the inventor has
developed a general solution to the problem, and should be allowed to claim
broadly. We find that the specification defines the physical properties
of the articles to be used, and that the specification enables a person
skilled in the art to make the invention and obtain the desired results.
As no prior art has been cited suggesting that the claim is too broad because
of prior art, we find that claim 1 does meet the requirements of section
36(2) of the Patent Act and the scope of monopoly need not, under these
circumstances, be limited to the preferred embodiment.
We recommend that the Final Action be withdrawn.
G. Asher S.D. Kot
Chairman Member
Patent Appeal Board, Canada
I concur with the findings of the Patent Appeal Board and withdraw the
Final Action. The application is returned to the examiner for resumption
of prosecution.
J. H. A. Gariepy Agent for Applicant
Commissioner of Patents
Fetherstonhaugh & Co.
Box 2999, Station D
Ottawa, Ont.
Dated at Hull, Quebec
this 4th. day of January, 1979