COMMISSIONER'S DECISION
Sec. 36, Rule 25, Indefiniteness, Inadequate Disclosure: Labelling Machine
Applicant claimed an inking system for label printing machines in which either
the print head or the platen is movable, the other member being stationery.
The application was rejected for insufficient disclosure of a device where
the print head is moveable. It was found there was sufficient evidence that
one skilled in the art would know how to fit the inking system to machines
with moveable print heads from the disclosure and the prior art.
Rejection: Withdrawn
************
Patent application 160502 (Class 101-101), was filed on January 3, 1973
for an invention entitled "Printing Apparatus." The inventor is Raymond
L. Kirby, Jr. assignor to Monarch Marking Systems, Inc. The Examiner in
charge of the application took a Final Action on December 2, 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.
All of the ten claims on file in the application 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 part 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 frame, printing means operable through successive printing
cycles and including a print head and platen means, means
mounting the print head and platen means for relative movement
towards and away from each other during each printing cycle to
print data onto a record member, one of the print head and
platen means being fixedly mounted and the other of the print
head and platen means being movably mounted, an inking mechanism
including an ink roll for inking the print head, means for
actuating the movable one of the print head and platen means and
for actuating the ink roll, cam means movably mounted on and
relative to the movable one of the print head and platen means
and alternatel moveable in opposite directions, and means
drivingly connectin the cam means and the ink roll so that the ink
roll is driven sequentially between an ink receiving location
and inking contact with the print head.
The remaining claims add without further invention standard parts to the
apparatus, such as motors to actuate the printer or ink transfer rollers.
What is claimed is an inking system to be used in a printing machine in
which either the print head (which carries the type) or the platen (the
metal plate which presses the paper against the type) is movable, the
other member being stationery.
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 plates were disclosed,
several of them well before the priority date of this application.
The Examiner put his objection as follows:
In his letter dated August 29, 1977 the applicant includes photo-
copies of two affidavits signed by two of his employees, and filed
in his copending application 160,480 which was finally rejected
for similar objections. In summary, the affidavits mention that
the two types of printers (print head movable and platen fixed,
print head fixed and platen movable) are well known, and that
from the teachings of the present application, one skilled in
the art could build a printer with a movable head, without the
exercise of inventive ingenuity.
The examiner is fully aware of the two types of printers referred
to above, but one is so mechanically different from the other
that he has to disagree with the applicant on the fact that the
claimed printing apparatus could be built with a movable print
head without the exercise of inventive ingenuity, e.g. the inking
system would have to be timed with the print head movement,
this print head would have to be pivoted, etc. Fact remains that
the disclosure fails to define details or differences between
the two structures.
In Scully Signal Co. v York Machine Co. Ltd, 23 C.P.R. 6 it was
decided that nothing that has not been described can be validly
claimed.
In Permutit v Borrowman , 43 R.P.C. 356 the judge ruled that an
inventor must have reduced his invention to a definite and practical
shape before he can be said to have invented.
It is held that the embodiment wherein the print head is movable
and the platen is fixed is not described in the present disclosure
but merely mentioned. It is further held that there is no
evidence in the present disclosure that the said embodiment was
reduced to a definite and practical shape before the filing date
of the present application.
Moreover, claims 1 to 10 define two structurally different embodi-
ments and arc therefore indefinite per se.
Consequently, the objections set forth in the last Office Action
dated June 6, 1977 are maintained:
a) the disclosure stands rejected under Section 36(1) of the
Patent Act as inadequate in explaining the embodiment
wherein the print head is movable and the platen is fixed;
b) claims 1 to 10 stand rejected under Rule 25 of the Patent
Rules as not fully supported by the disclosure in the
recitation of the embodiment wherein the print head is
movable and the platen is fixed; and
c) claims 1 to 10 stand rejected under Section 36(2) of the
Patent Act as indefinite per se in defining two structur-
ally different embodiments.
...
While they are rather lengthy, we think it would be useful to reproduce
applicant's written argument:
...
With all due respect, it is difficult to equate the Examiner's
skill in the art with the skill of either Mr. William A. Jenkins
or Mr. Paul H. Hamisch Sr. The Affidavits sworn by each of
these gentlemen and filed in the present application and in
Applicant's copending Application No. 160,480, do represent the
opinions of individuals who have been involved in the invention
and construction or printing apparatuses of the type described
in the present application. 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 circum-
stances 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. Thus, under these circumstances,
it is not seen how the Examiner can so readily dismiss the
Affidavits submitted in the response filed August 29, 1977.
The present invention is directed to a printing apparatus of
the type in which the print head and the platen are mounted
for relative movement towards and away from each other during
a printing cycle to print data on a record member. Either
the print head or the platen can be fixed to the frame. An
ink roll for applying ink to the print head is used and a
cam and follower, the cam being situated on the movable print
head or platen, drives the ink roll sequentially between an ink
receiving location and inking contact with the print head.
Thus, the present invention is directed to a particular inking
system. The invention is not directed to the feature of
providing a printing apparatus wherein either the print head
or the platen is fixed to the frame. As is stated in the
Affidavits filed in the response of August 29, 1977, the
construction of these apparatuses is readily apparent to one
skilled in the art when presented with a description of how
to construct one of them.
Applicant noted that the Examiner has cited the Scully v.
York case wherein it was decided that nothing that has not
been described can be validly claimed. In that instance, the
integer in question was considered to be an essential feature
of the invention. The Court decided that the substitution of
an alternative integer which was not disclosed or suggested in
the application by another party did not constitute infringement
of the claim in question.
It seems to be a well established principle that the doctrine
of equivalents does not apply when substitution of an essential
feature is made. See R.C.A. Photophone Ltd. v. Gaumont - British
Picture Corp. (1936) 53 R.P.C. 167 at p. 197 "It is only in
respect of unessential parts of an invention to which the principle
of mechanical equivalents can be applied". Where an individual
substitutes or omits an unessential part of an invention, he or
she does not generally produce a new invention nor does he or she
necessarily escape from infringement. In the present situation,
to substitute an apparatus wherein the print head is movable and
the platen fixed for one wherein the print head was fixed and the
platen movable does not amount of another invention as this type of
substitution relates to an unessential feature of the invention.
As is stated above the invention is directed to an inking system
for use in known printing apparatuses.
Applicant is well aware of the statement made in Permutit v.
Borrowman: "It is not enough for a man to say that an idea floated
through his brain; he must have at least reduced it to a definite
and practical shape before he can be said to have invented a
process." However, in the present instance, Applicant has reduced
the invention to a definite and practical shape. It is not a
mere idea that has floated through the inventor's brain. The
fact is, that the present application specifically describes the
best mode of carrying out the invention, which is a requirement
of the Patent Act, while disclosing an obvious alternative thereof.
The alternative mode is readily apparent to a man skilled in
the art on reading the application. On this basis, Applicant
would submit that it is unnecessary to provide a specific
description of each of the embodiments. Applicant notes that
in Fox on Canadian Patent Law, 4th Ed. at p.174, it is stated:
"It is not necessary, where the patent is for an
improvement, that it should describe in detail all
the old and known parts of the machine to which
the improvement relates. It is sufficient merely
to state the type of machine to which the improve-
ment is applicable."
Applicant is somewhat confused by the Examiner's suggestion
that there is no evidence in the present disclosure that the said
embodiment (wherein the print head is movable and the platen is
fixed) was reduced to a definite and practical shape before the
filing date of the present application. Applicant cannot under-
stand why there is any need for evidence of this nature in the
application. Applicant would submit that it is a well established
practice within the Patent Office to consider not only written
disclosures in determining date of invention but also evidence
attesting to oral disclosures. It is not necessary to reduce
an invention to practical form at the date of invention. As long
as the disclosures attesting to date of invention are sufficient
for a person skilled in th a art to put the invention into practice
they have been considered suitable for this purpose. This practice
has been upheld in the courts as well. Thus the Examiner's
requirement seems entirely out of place and certainly not represent-
ative of Canadian patent practice.
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 Mires 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 suit 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 voiced that caution in
the following terms in Mineral Separations (supra) at p. 320:
The test of whether a specification complies with the requirements
of the 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 an inking
mechanism, but one which in the claim 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 work-
ing 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 letter of March 2, 1978:
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. They all show inking mechanisms of one sort or another. Taking
it that there is an invention in the inking mechanism 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.
At the Hearing it was also brought out that automatic inkers were known in
the printing arts generally. Whether it would be obvious to adapt them to
labellers is not clear to us, but since that was not the basis of the rejection,
we need not explore it.
We recommend that the rejection on the basis of Section 36 and Rule 25 be with-
drawn 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 recommend-
ation 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.H.A. Gariepy Agent for Applicant
Commissioner of Patents Scott & Aylen
170 Laurier Ave. W.
Ottawa, Ont.
Dated at Hull, Quebec
this 20th. day of November, 1979