COMMISSIONER'S DECISION
Sec 36, Rule 25; Indefiniteness, Inadequate Disclosure - Labelling Machine
Applicant claimed a labelling machine having a stop means to stop movement of
either the printing head or the platen, depending upon which is moveable.
The application was rejected for insufficient disclosure of a device where
the printing head is moveable. It was concluded there was sufficient evidence
that those skilled in the art would know how to construct machines with
moveable printing heads and fit the stop means to it from the disclosure filed
and prior art. Rejection withdrawn
**************
Patent application 160480 (Class 101-32), was filed on January 3, 1973
for an invention entitled "Printing Apparatus." The inventor is Robert M.
Pabodie, assignor to Monarch Marking Systems, Inc. The Examiner in
charge of the application took a Final Action on May 20, 1977, refusing
to allow it to proceed to patent. In reviewing the rejection, the Patent
Appeal Board held a Hearing on March 21, 1979, and at which the Applicant
was represented by Mrs. Joan Noonen, Mr. Edward B. O'Connor and Mr. Paul
Hamisch Sr., an expert witness.
Claims 1, 5, 7 and 13 were rejected under Section 36(2) of the Patent Act for
indefiniteness, and under Rule 25 of the Patent Regulations as not supported
by the disclosure. In addition, the disclosure was rejected under Section 36(1)
for failure to explain the invention adequately.
The nature of the invention is indicated by claim 1 below, in which we have
underlined the portion in which the Applicant states the invention resides.
It relates to a machine used to print price tags and labels, in particular labels
used in supermarkets to price tins of food, and the like.
1. Printing apparatus, comprising: a stationary frame, a print
heat and cooperable platen means, one of the print head and
the platen means being stationarily mounted to the stationary
frame and the other of the print head and the platen means
being movably mounted to the stationary frame, means for
driving the movable one of the print head and the platen means
during each printing cycle to print data on a record member,
the stationary frame and the movable one of the print head
and platen means having cooperable stop means for stopping
movement of the movable one of the print head and platen means
at a predetermined stop position, the driving means including
a resilient drive connection for yielding when the movable one
of the print head and the platen means stops at the stop position,
the impression on the record member being unaffected by the
action of the resilient drive connection, and means for
regulating the stop means selective to vary the stop position
and hence to effect printing impression control.
What is claimed is a stopping means to control movement of the printing
head or the platen (depending upon which is moveable) in a labelling
machine.
The Examiner has contended that there is insufficient disclosure of a
printing apparatus in which the print head is moveable and the platen fixed.
In reply to that contention, the Applicant supplied an affidavit from
Mr. Paul Hamisch Sr., and another from Mr. William A. Jenkins, two experts
in the employ of the Applicant. They have pointed to several U.S. patents
of Mr. Paul Hamisch Sr., in which marking machines with either movable
print heads and fixed platens or fixed print heads and movable platens
were disclosed, several of which issued well before the priority date of
this application.
The Examiner put his objection as follows:
...
In his amending letter dated September 29, 1976, the applicant
argues that claims 1, 5, 7 and 13 should not be rejected as
insufficiently supported by the disclosure because the embodi-
ment wherein the print head is movable and the platen fixed
can be constructed from the present disclosure by someone skilled
in the art, without the exercise of inventive ingenuity.
It would appear that the applicant fails to understand part of
the problem: it is very clearly stated in Office Action dated
June 30, 1976, that claims 1, 5, 7 and 13 are indefinite per se
in defining two different embodiments which are structurally non-
equivalent.
Consequently, claims 1, 5, 7 and 13 stand rejected under Section
36(2) of the Patent Act for the above specified reason.
Furthermore, the examiner disagrees with the applicant that some-
one can construct the apparatus with a movable print head (rather
than a movable platen) without the exercise of inventive ingenuity:
the complete apparatus would have to be completely re-designed
because none of the present gears would be the same; for example,
the inking system would have to be timed with the print head
movement; the massive print head would have to be pivoted, etc.,..
Fact remains that this embodiment is not specifically disclosed; the
objection is therefore maintained.
The present disclosure stands rejected under Section 36(1) of the
Patent Act as inadequate in explaining in details the embodiment
wherein the print head is movable and the platen is fixed.
Claims 1, 5, 7 and 13 stand rejected under Rule 25 of the Patent
Rules as not supported by the disclosure in the recitation in
details of the embodiment wherein the print head is movable and
the platen is fixed. There is no sufficient disclosure to
enable someone skilled in the art to construct such an embodiment,
and the applicant has failed to demonstrate that the said embodi-
ment is more than just a mere idea for the purpose of securing
a larger monopoly for an apparatus which he has failed to con-
struct and prove effective (as implied in his last letter).
...
For his part the Applicant stated (inter alia):
...
Applicant would point out that the present invention is directed
to an improved printing apparatus in which a print head and a
platen are mounted for relative movement toward and away from each
other, the improvement comprising providing a stop arrangement to
limit the amount of travel of the print head and the platen
toward each other. Preferably a resilient drive connection is
provided which yields when a stop is abutted. Specifically, either
the print head or the platen assembly is movably mounted and
the movable one is connected to an eccentric by a connecting rod
having a pair of relatively movable sections and a spring yieldably
urging the sections apart. Impression control is thus effected.
Thus it is completely immaterial to the invention whether the
print head is movable or fixed and correspondingly whether the
platen is fixed or movable. (underlining added)
...
Referring to page 3 of the Hamisch Affidavit, Applicant would point
out that both of the aforementioned alternatives are well known
in the art and when presented with specific details on how to
make one alternative, Mr, Hamisch states that he could readily make
the other. Thus, these alternatives are proper and obvious equivalents
and claims 1, 5, 7 and 13 are not deficient with respect to Section
36(2) of the Act.
Again in the Affidavits Mr. Hamisch and Mr. Jenkins both indicate
that a man skilled in the art could readily construct both forms of
the apparatus when presented with the present specification and the
common knowledge in the art as represented by the various U.S. patents
referred to by Mr. Hamisch in his Affidavit.
It would appear that the main question to be considered when examin-
ing the Examiner's rejections is how specific must a disclosure be to
support a claim. Applicant would submit that the answer is that the
disclosure must contain sufficient information to allow the man
skilled in the art, who is equipped with the common knowledge in the
art, to carry out the invention.
...
Reference can also be made to the decision of the Supreme Court
in Sandoz v. Gilcross Limited, wherein it was stated that:
"A specification is addressed to persons skilled
in the art and, therefore, is to be construed
by the standard of what such a person would
understand on reading it."
...
In a similar vein, Applicant also cited the following cases to indicate
what is required of a disclosure:
Unipak v Crown Zellerbach 20 Fox Pat. C. at 21
International Pediatric v Lambert 34 F.P.C. 58 at 4
BVD v Canadian Celanese 1936 Ex. C. R. 140
Riddell v Patrick Harrison 1956-60 Ex. C.R. 253
Burton Parsons v Hewlett-Packard 17 C.P.R. (2d) 97 at 105
At the Hearing the Examiner referred to several judicial decisions which
indicate the heavy burden placed upon Applicants to disclose their inventions
fully. In particular he mentioned:
R.C.A. v Raytheon 27 C.P.R. II, 1 (1957)
Leithiser v Pengo Hydra-Pull 12 C.P.R. (2d) 117 (1974)
and Mineral Separation v Noranda Mines 1947 Ex. C.R. 306
In the first of those we find the following passage at p. 12:
It is a cardinal principle of patent law that an inventor
may not validly claim what he has not described. In the
patent law jargon it is said that the disclosure of the
specification must support the claims. If they do not,
the claims are invalid. Moreover there is a statutory duty
of disclosure and description that must be complied with
if a claim for an invention is to stand. Section 35
[now 36] of the Patent Act [so requires].
At page 13 there is quoted the following passage from the Mineral Separation case:
,..The purpose underlying this requirement is that when the period
of monopoly has expired the public will be able, having only the
specification, to make the same successful use of the invention
as the inventor could at the time of his application.
In Leithiser v Pengo Hydra-Pull (supra), Mr. Justice Heald said, at p. 132:
In summary, I have concluded that - each and every one of the
claims in sort are invalid because in every claim, one or more
essential characteristic of the patentee's invention are not
described at all, thus making all the claims difficult from and
much wider than the alleged invention. (For a similar view
see: United Merchants & Manufactures Inc. v. A.J. Freiman Ltd.
et al (1965), 47 C.P.R. 97, [1965] 2 Ex. C.R. 690, 30 Fox Pat.
C. 206)...[Mr. Heald also relied upon R.C.A. v Raytheon quoted above].
However in assessing whether a disclosure suffices, we must keep in mind
that it is addressed to one skilled in the art, and read it in the light of
what such an addresser would comprehend. Mr. Thorson voices that caution in
the following terms in Mineral Separations (supra) at p. 320:
The test of whether a specification complies with the requirements
of th a first sentence in section 14(1) [now section 36] is whether
persons skilled in the art, on reading the specification that the
light of the common knowledge existing at its date and being willing
to understand it, would be unerringly led to the invention and
be enabled to put it to full use.
That was also the view expressed more recently by the Supreme Court in Burton
Parsons v Hewlett-Packard 17 C.P.R. (2d) 97 at 101:
what must be ascertained is what the whole meant at the date
of the patent to a person skilled in the art.
It is evident that what we must determine is whether those skilled in the art
would know from the disclosure when it was filed how to practise the invention
in the form in which it is claimed. The invention is said to be a stop
mechanism which is combined with a printing apparatus in which either the
print head is movable and platen fixed, or vice-versa.
Both Mr. Jenkins and Mr. Paul Hamisch Sr. have attested that it would be
obvious to them, at least as of August 20, 1977, how to construct such machines.
Mr. Hamisch has said:
11. That it is his opinion that he could construct from the
teachings of the applications disclosure, a working machine
embodying the disclosed and claimed invention and wherein
the print head is movable and the platen is fixed and in
so doing he would utilize only the skills of his art and not,
in any manner, find it necessary to exercise his established
inventive ingenuity.
That undoubtedly is so, but the issue is not really whether Mr. Hamisch or
Mr. Jenkins could carry out the invention without inventive ingenuity by
August 1977 when they lay claim to such ability, or even at some earlier
date. The real issue is whether those skilled in the art generally could
do so on January 6, 1972, which is the date when this application was filed,
given the present disclosure and the knowledge of those skilled in the art
at that date. Both Mr. Hamisch and Mr. Jenkins were in a privileged position
as employees of the company which filed and obtained patents disclosing
movable print heads. By August 1977 they would undoubtedly be aware of this
development within their firm and it would take no ingenuity on their part
and at that date to construct machines with movable print heads. As was
stated in Applicant's companion application 160502, which was taken up at
the same Hearing:
Applicant would readily admit the difficulties presented
by the fact that each of these gentlemen is in the employ
of the Applicant. However, under the circumstances it is
rather difficult to obtain the opinions of other experts in the
art. Firstly, the present applications are under prosecution
and therefore secret, and Applicant would prefer, since
the field is highly competitive that these applications remain
secret until patents are granted in respect of them. Secondly,
the state of the art as it exists today with respect to
printing apparatuses of the present type, has been largely
developed by the Applicant....
We do not believe information "secret" to the Applicant and his employees is
satisfactory criteria to show what those skilled in the art generally would
comprehend the invention.
What is more significant, however, are the patents referred to in Mr. Hamisch's
affidavit which predate January 6, 1972, and the samples of prior labellers
demonstrated at the Hearing which show both type of actions. For example,
U.S. patent 2826988, granted March 18, 1958 (filed Jan. 10, 1955) is for a
marking machine in which the print head is moveable and the platen fixed.
See also U.S. patent 3440123 issued April 22, 1969. Similarly U.S. patents
3180252, Apr. 27, 1965, and U.S. patent 3228601, Jan. 11, 1964 disclose
marking machines in which the print head is fixed and the platen moveable.
Taking it that there is an invention in the stopping means disclosed in
the present device, we can see no problem in fitting it to either platen-
fixed or print-head-fixed markers or printers. We have consequently
concluded that those skilled in the art would, if given the Applicant's
disclosure, have appreciated at the effective filing date that the invention
would be useful for both types, and could easily fit it to either mechanism.
We recommend that the rejection on the basis of Section 36 and Rule 25 be
withdrawn, and that the application be returned to the Examiner to resume
prosecution.
G.A. Asher
Chairman
Patent Appeal Board, Canada
I have considered the arguments raised against this application and the
recommendation of the Patent Appeal Board, which I now accept. The rejection
is withdrawn. The application is to be returned to the Examiner to resume
prosecution.
J.M.A. Gariepy
Commissioner of Patents
Dated at Hull, P.Q.
this 20th. day of November, 1979
Agent for Applicant
Scott & Aylen
170 Laurier Ave. W.
Ottawa, Ont.