COMMISSIONER'S DECISION
FUNCTIONAL CLAIMS
Claims expressed in terms of result rather than in terms of the steps
to achieve the result are not acceptable. Basis for an acceptable
claim suggested.
Final Action: Affirmed.
************
Patent application 259168 (Class 13-17), was filed on August 16, 1976,
for an invention entitled "Process For The Production Of Coin Blanks."
The inventors are Arthur G. McMullen et al, assignors to Sherritt Gordon
Mines Limited. The Examiner in charge of the application took, a Final
Action on January 12, 1978, refusing to allow it to proceed to patent.
In reviewing the rejection, the Patent Appeal Board held a Hearing on
November 13, 1979, at which the Applicant was represented by Mr. R. Delbridge.
The application is directed to a process for the production of coin blanks
which are suitable for minting coins. An inexpensive metallic core is
electroplated with another metal to provide the desired finish. It was
found that if electro deposition is carried out in a barrel under certain
conditions a thicker deposit can be put on the edge of the core piece
than on the face of the core piece. This is desirable because the edge
is the part of greatest wear. Claim 1 of the application reads:
A process for the production of coin blanks suitable for minting
into coins, including providing metallic core pieces, each
core piece having opposed, substantially planar faces and a
common side edge, loading said core pieces into a perforated
container, placing the container in an electroplating bath,
electroplating a metallic cladding on the core pieces, while
moving the container angularly about a horizontal axis, until
the metallic cladding has a thickness of at least about 0.05 mm
on each face of each core piece and a thickness of at least
2 to 4 times the face thickness on the side edge of each core
piece and removing the cladded core pieces from the container.
In the Final Action the Examiner refused all claims of the application for
being functional at the point of invention. He contended that the process
defined in the claims would not produce the desired result unless certain
conditions were adhered to.More specifically he said, inter alia:
The question arises, is it enough to simply prescribe in
the claims that the workpieces be kept in the barrel until
the thickness of the cladding reaches 0.05 mm on each
face and 2 to 4 times the face thickness on the side edge
of each workpiece? The disclosure replies to this question
by stating that "The ratio of nickel thickness on each face
of the core piece to the nickel thickness on the side edge
of the core piece is determined primarily by the ratio of
the diameter of a core piece to the diameter of the container".
(page 4, lines 1 to 5) . This quotation shows that the claims
are functional at the point of invention, since they only
suggest the more or less obvious idea of producing thicker
cladding, but do not describe the process by which this aim
can be achieved. (underlining added)
In response to the Final Action Mr. Delbridge contended that from the information
in the disclosure of the application, a person skilled in the art can readily carr-
out experiments to determine the required container diameter necessary in any
particular situation. He also submitted an affidavit from a Mr. A.R. Moore of
Canadian Hanson Limited, who has had long experience in barrel plating. He
stated that barrel electroplating is not normally used commercially if one
wishes to produce plating deposits more than 0.01 mm. thick because of the
long time that would be needed.
The only question before the Board is to determine whether the claims properly
define the invention.
At the Hearing Mr. Delbridge discussed the question of obviousness, but we see
no need to go into that aspect of his submission. In his final action the
Examiner did not rely on his earlier objections based on obviousness, and
both he and we are satisfied that there is present a patentable invention.
The Applicant emphasized that the blanks are cladded in a metal barrel plating
operation. We note that present claim 1 makes no mention of barrel
plating. We believe this is an essential element which should be specified
in the claim. Other essential elements are a perforated container made of an
inert material and a flexible cathode rod in the container.
In the Final Action the Examiner states that the claim is functional since
it is expressed in terms of the result rather than in terms of the steps
to achieve the result. That result is a layer of at least 0.05 mm. of metal
on each face and 2 to 4 times that amount on the edge of each coin.
To achieve that result the disclosure shows on page 4 that the ratio of the
diameter of the coin to the diameter of the container is a crucial element
We consequently believe it is important to include that aspect of the
process in the claim. We do not believe however that the ratio is fixed, but
varies with the coin and barrel diameter. Consequently the claim need not
specify an exact ratio. From what was said at the Hearing we believe this
was a main point of concern to Mr. Delbridge, and led to the arguments about
functionality.
Another feature absent from the claim is a limitation to flexible cathode rods,
which as is shown on page 3 at line 20 is another element of the invention.
Mr. Delbridge indicated at the Hearing that he is prepared to amend the claims
to more clearly define the invention. We would consequently recommend that
both these features should be present in the claims. To make clear what we
have in mind we suggest the following claim which, we believe, should form
the proper basis for an acceptable broad claim.
1. A process for the production of coin blanks suitable for
minting into coins which comprises placing metallic core pieces
in an inert perforated electroplating container, said container
being fitted with a flexible cathode, placing the container in
an electroplating bath, and carrying out electrodeposition while
moving the container angularly about a horizontal axis until the
metallic deposit has a thickness of at least about 0.05 mm on
each face of each core piece and the metal deposited on the edge
of the blanks is at least 2 to 4 times the thickness on said
faces of the blanks, the ratio of the two thicknesses being
adjusted by varying the ratio of the diameter of the core pieces
with the diameter of the electroplating container, the current
density, and the number of blanks in the container.
We are satisfied that the claims on file are properly rejected for going
beyond the invention, but would recommend the acceptance of the proposed
claim, or one which includes the limitations included in it. The dependent
claims 2 -7 and 9 - 10 would also be acceptable if dependent upon allowable
broad claims. Present claim 8 would require similar amendments to those
proposed for claim 1.
G.A. Asher S.D. Kot
Chairman Member
Patent Appeal Board, Canada
Having considered the prosecution of this application and the recommendation
of the Patent Appeal Board, I now reject claims 1 - 10 inclusive. The
Applicant has six months within which to delete the claims and to amend
them as proposed by the Board, or to commence an appeal under Section 44.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this l6th.day of January, 1980
Agent for Applicant
Fors & Piper
Suite 2010
8 King St. E.
Toronto, Ont.