COMMISSIONER'S DECISION
Reissue: Polyolefin Rubbers
In the original patent the claims were directed to a polybutadiene resin
mixed with 2-35% filler. In the reissue application the film was extended
to 2-58% filler. However there was never any disclosure of such a broad range,
and the Applicant made a scientifically unsound extrapolation to justify his
new claims. The claims are not adequately supported.
Rejection: Affirmed
**************
Patent application 271054 (Class 400-78), was filed on February 4, 1977,
for an invention entitled "Polyolefin Rubbers Reacted With Butadiene
Resins." The inventors are Jon W. Martin et al, assignors to TRW Inc.
The Examiner in charge of the application took a Final Action on Feb. 16,
1978, refusing to allow it to proceed to patent. Applicant has requested
a review, but has not asked for a Hearing.
The Applicant wishes to reissue his earlier patent 920733, granted February
6, 1973, for a peroxide cured elastomeric composition useful in corrosive
environments. The composition comprises a polyolefin rubber matrix, a
liquid derived 1,2-polybutadiene resin with a minimum of 84% butadiene in
the vinyl configuration and a filler. In patent 920733 the claims are
restricted to a composition containing 2-35% by weight of filler. Claim 1
recited below is the broadest claim of patent 920733.
A peroxide-cured elastomeric composition comprising:
a polyolefin rubber matrix: 40%-94%; a liquid derived 1,2-polybutadiene
resin: 2%-40%; containing a minimum of 84% butadiene units in the
vinyl configuration; and filler: 2%-35%, all percentage parts by
weight.
In the reissue application, Applicant wishes to broaden the scope of claim
1 by altering the amount of filler to "at least 2% ... by weight," i.e. up
to a maximum of 58% by weight.
The Examiner refused claims 1 to 3,and with them dependent claims 7 to
9 of the reissue application, for being too broad. Firstly, these claims
were held to be broader than the original invention disclosed, which,
the Examiner contended, supports only the range of 2 to 40.48% of filler
by weight. The Examiner conceded that there were grounds for reissuing
to cover the range of 2 to 40.48% by weight of filler. Additionally,
the Examiner maintained that the claims in the reissue application were
too broad "in view of the reissue petition paragraph 3". The relevant
parts of said paragraph 3 of the petition read as follows:
(a) The claims are too limited in that they require the
presence of 2 to 35% filler. This is clearly unrealistic,
having regard to the nature of the invention made by the
inventors, and disclosed in the specification. For example,
compound 11 on Page 10 of the patent contains about 40%
alumina filler, in addition to about 3% dicumyl peroxide.
(b) There is no claim which covers a filler content of 2
to 58%. If one uses the minimum amounts of the two polymers
disclosed in the specification and claimed in Claim 1 or 3,
totalling 42%, there remains 58% of materials which can be
accounted for as filler.
The Examiner maintained that "in a three component system it does not
necessarily follow that the maximum of a given component is calculable
by subtracting the sum of the minima of the other two components from
100%" but, that the operable "maximum" amount of the third component can
be determined only by experiment. Further, the Examiner contended that
the "calculable" maximum asserted by Applicant in the disclosure and
the claims of the reissue application is not supported by the specification
of patent 920,733. The Examiner's rejection is based on the requirements
of Section 50(1) of the Patent Act that the "new patent...be issued to
him for the same invention..."
In his response to the Final Action, Applicant argues (relying upon the
decision in Curl Master v Atlas Brush S.C.C. 52 CPR 51) that an
".., imperfect description is sufficient;" and further that the description
"...can fall short..." of that required to support the claims. It should
be noted that in the Curl Master case the patent included a drawing
which formed part of the original specification or description, and that
that drawing provided support for the claims of the reissue application.
By contrast, the figures in patent 920,733 are merely photographs of valve
seats made from the composition claimed, and electron micrographs of the
elastomer made from that composition. These figures do not provide any
support for the breadth of claims in the reissue application, nor does
the remainder of the specification of patent 920733. Thus, Applicant's
argument that refusal of the reissue claims is "contrary to the principles
followed in the Curlmaster decision" is not justified.
Furthermore, it is clear from Section 36(1) of the Patent Act that a "high
standard of disclosure" is indeed required, and that such a disclosure in
the specification of the original patent can provide the only basis for the
acceptance of broad claims in a reissue application under Section 50(1)
of the Patent Act. The description in the disclosure of the original
patent may be insufficient but, nevertheless there must be some support
in the specification, albeit in imperfect form.
Finally, Applicant argues that the extended range of the filler composition
sought in the reissue application is inferable from the examples provided
in patent 920,733. On the basis of these examples, he states "There is no
logical reason to have taken 35% or even 40.5% as being the maximum amount
of filler." However, this argument is not accepted nor are the reasons
for arriving at such a conclusion.
On a careful reading of the entire specification of patent 920,733 it
is clear that there is no support for a composition with a filler con-
centration above 40.48% by weight. Applicant has presented with his
arguments a graph, labelled Fig. I, in support of his contention that
the breadth of the filler concentration is inferable. We believe, however,
that Applicant's arguments using this graph are scientifically and technic-
ally unsound(cf Philip R Bevington Data Reduction and Error Analysis for
the Physical Sciences, McGraw-Hill, 1969). Applicant has plotted tensile
strength v. "% replacement of polybutadiene with filler." However, such
a two-dimensional graph has no meaning technically in a 3 component
system, since it is clear that as the filler concentration increases both the
concentration of the polyolefin and that of the polybutadiene decreases.
Further, it is noted that Applicant has plotted the point, tensile strength
= 1900,filler = 40.5% incorrectly.
Applicant has then used the results of 3 plotted points to draw a "smooth
curve" without any scientific justification for such a curve. Indeed, if
one also plots the point, tensile strength = 1800, filler = 17% as provided
in Applicant's response (Experiment 3 on page 8 of patent 920,733) it is
clear that there is no justification for the "smooth curve" drawn by
Applicant.
Nevertheless, Applicant uses his "smooth curve" to extrapolate the expected
operability of concentrations of filler above 40.5% by weight. It is well
known that it is scientifically unsound to extrapolate in formation based
on a "smooth curve" drawn with such a paucity of experimental information,
especially when the "smooth curve" is derived using the kind of reasoning
advanced by Applicant and also in the absence of experimental information
between 40.5 and 100% filler. Such a "smooth curve" can only be inferred
when there is sufficient experimental information to interpolate between
points, i.e. it is statistically sound. Applicant argues for a hypothetical
result based on the expected operability of a composition with a concentration
of filler greater than 40.48% and up to 58% by weight. As such, these
arguments are not convincing in the absence of clear support for these filler
concentrations in the specification of patent 920,733 or, alternatively,
more experimental information in patent 920733 supporting the hypothesis
advanced in Applicant's response to the Final Action.
We believe the Examiner was justified in refusing the broad claims submitted
in reissue application 271054 as contrary to Section 50(1) of the Patent Act.
The disclosure and claims must be restricted to a filler concentration of
"2 to 40.5% by weight" and application 271054 will be allowable when amended
in this manner.
G.Asher
Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application, and the recommendations
of the Patent Appeal Board, which I now adopt. The application to reissue
is refused, but may be amended as proposed by the Board. The Applicant has
six months in which to make such an amendment, or to take the rejection to
appeal.
J.H.A. Gariepy Agent for Applicant
Commissioner of Patents Gowling & Henderson
Box 466, Terminal A
Ottawa, Ont.
Dated at Hull, Quebec
this 2nd. day of January, 1980