COMMISSIONER'S DECISION
REISSUE: ELEVATOR CABLE LUBRICATION
Applicant had claimed two aspects of the same invention in two applications,
the first of which had issued to patent. The second had been refused for
double patenting. Applicant then attempted to reissue the patent to add the
aspect in the second application. It was concluded that under these circum-
stances the Applicant had intended to claim the second aspect, and the reissue
application should be allowed to proceed. Further the name of the second
inventor could be added to the reissue application. However the application
should be reminded to the Examiner to assess whether the claims were too broad.
Rejection reversed and modified.
***************
Patent application 315588 (Class 187-10), was filed on October 31, 1978
for an invention entitled "Elevator System." The inventor us Harry
Berkovitz, assignor to Westinghouse Electric Corporation. The Examiner
in charge of the application took a Final Action on August 1, 1979 refus-
ing to allow it to proceed to patent. In reviewing the rejection, the
Patent Appeal Board held a Hearing on August 6, 1980 at which the Applicant
was represented by Mr. E. H. Oldham.
The subject matter of this application relates to an elevator of the type used
in high-rise buildings. A synthetic lubricant is used on the cables to
provide a high coefficient of friction between the driving sheave and the
cable. The cable is lubricated then fabricated, and lubrication may be
maintained during operation by means of a wick arrangement.
Originally Applicant had two applications before the Patent Office. In one
(174,632, now patent 977,699) he claimed an elevator system where the cable
is lubricated during use with a special synthetic lubricant which not only
lubricates the strands within the cable to reduce wear, but which unexpectedly
increases friction between the cable and the driving sheave so the cable
will not slip. Specifically he uses a known lubricant, Santotrac, for that
purpose. Only one inventor, Mr. Berkovitz, is said to be the inventor of
that invention.
In the other application (174,677), Applicant claimed an elevator system
where the rope is prelubricated during manufacture (with the same lubricant).
1n this case there are said to be two inventors, Mr. Berkovitz and
a Mr. Harding. Their application was rejected on the grounds that it was
directed to the same invention as the issued patent, and that there was no
additional invention warranting the grant of another patent. The refection
went before the Commissioner and was affirmed, it being found that the
point of the invention in both cases was the same, namely the use of a
lubricant which not only lubricates the cable but also increases the
friction between cable and shaft. The Examiner also rejected the applica-
tion because the lubricant Santotrac and its properties were previously known
and patented. The Commissioner's refusal under Section 42 of the Patent Act
was not appealed to the Federal Court. and the application is now defunctus.
Subsequently the Applicant attempted to reissue the patent that was granted
to add to it the claims which had been presented in the rejected application,
i.e. to prelubricated cables. At the same time he wished to add Dr. Harding's
name as co-inventor with Mr. Berkovitz.
In the Final Action the Examiner refused the application for reissue because
"of an obvious lack of intent to protect in the original patent what is
claimed in the reissue." All the claims were also rejected as unpatentable
over the following patent:
United States 3,440,894 April 29, 1969 Hammann et al
This is the prior patent for the synthetic lubricant known as Santotrac.
In the Final Action the Examiner's position was stated in the following terms:
...
This lack of intent is emphasized by the fact that applicant
submitted to the Office two separate applications as follows:
(a) (b)
Application Number - 174,632 174,677
Filing Date - June 21, 1973 June 21, 1973
Inventor - Berkovitz Berkovitz & Harding
Application (a) issued to patent while invention (b) was given a Final
Rejection for not being patentably different from (a).
Applicant wishes to add the rejected claims of (b) and (a) on the
grounds that while the applications were co-pending he should
have been informed that the claims overlapped. This is not
grounds for reissue. Item (4) of the petition for reissue is
self-defeating since it clearly states lack of intent to claim
in the issued patent.
Applicant argues that "he fully intended to claim patent protect-
ion". It is emphasized to applicant that he must show intent to
claim in the issued patent in order to succeed with a reissue
petition. It is impossible for applicant to show such intent
since he filed two separate applications (one with one inventor
and the other with two inventors).
It is noted that applicant has not responded to the previous
Office Action regarding this difference in inventors. Applicant
has taken the claims of inventors Berkovitz and Harding and now
wishes to add these claims to a patent with a single inventor
Berkovitz. What has happened to Harding's contribution to the
invention?
...
It is maintained that applicant has disclosed no subject matter
that is patentable over United States Patent 3,440,894, published
April 29, 1969. This patent teaches the advantage of using SANTOTRAC
in a tractive drive. Applicant suggests that his elevator is more
comparable to a friction drive, yet throughout his disclosure
(see page 1, page 5, page 6, etc.) he constantly uses the word
"traction" and "traction drive" to describe his apparatus.
SANTOTRAC is used in the same manner and for the same purpose in
the apparatus of the prior art and the apparatus of this reissue
application. All claims are rejected as being unpatentable over
the prior art.
1n response to the Final Action the Applicant referred to an earlier response
in which he lead stated (inter alia):
...
It is quite clear that the applicant believed he had made a patent-
able invention and he fully intended to claim patent protection.
His mistake was that he presumed that it was an inventively
different patentable invention and hence, would require two
applications, as has been previously stated. However, this has now
been decided to the contrary by the Appeal Board which indicated
that the applicant made a mistake in presuming that there were two
inventions. He did not fail to claim protection because he did
not believe what he had done constituted an invention, on the
contrary he filed a separate application.
Proceeding with the holding in Northern Electric versus Photo Sound,
the Court considered whether that patent could have been deemed
defective or inoperative. It is quite clear in this case that the
patent is inoperative because its claims do not cover material which
the applicant intended to cover. The intent of the applicant
can be clearly established by the existence of the other
application namely application 174,677 which shows conclusive-
ly the intention of the applicant to claim protection in
respect of matters now sought to be claimed in the reissue
application.
It therefore appears that the present reissue application complete-
ly conforms to a requirement of Section 50, Sub. 1 and the court
decisions in that the patent is deemed by the applicant to be
inoperative by reason of insufficiency of specification and claim-
ing loss than he had the right to claim as new and this arose
from mistake in that the applicant was mistaken in his view that
the claims in the two applications required separate applications.
...
At the Hearing Mr. Oldham emphasised that the Applicant believed he made two
inventions for which he filed two applications, and that this mistake is now
being rectified by reissue. He argued that the Patent Office, in rejecting the
copending application for claims "being directed to the same invention as
that for which this patent originally issued", substantiates the Applicant's
position that he intended to claim the subject matter at the filing date of
the issued patent. From this it is clear that the Applicant sought protection
for the currently rejected claims at the time of filing of the patent application.
Whether they were filed in the application which issued to patent or in the
application which was subsequently rejected because of that patent does not
detract from the Applicant's intent to seek protection for that aspect of his
invention. Therefore we recommend that the rejection based on lack of intent
be withdrawn since the Applicant was not informed of the claim overlap to one
invention while the applications were copending.
Another question raised in the final Action pertains to the difference in
inventors. Berkowitz is the inventor in the original patent and the subject
matter now includes the claims of the Berkovitz and Harding application. Section
33 of the Patent Act provides for joining inventors. Section 33 deals with an
'application' and 'applicants'. Farbwerke Hoechst A.G, v Commissioner of Patents
50 C.P.R. 220 @251-2 states that an application for a reissue is included in
the word "application" and that Sections 42 and 44 of the Patent Act apply to
it. Therefore we find no objection to the Applicant adding the name of Harding
as an inventor in this application. We would point out that reissue to correct
misjoinder of inventors is not permissible. However if a reissue application
is properly filed for other reasons it must be treated as an ordinary application
and the names of missing inventors can be added under Section 33(4) of the Act.
The Final Action applied the Hamman (SANTOTRAC) patent in rejecting the claims.
It maintains that the advantages of using Santotrac in a tractive drive are
taught by the patent and that the Applicant describes his apparatus in terms
of "traction" and "traction drive."
Mr. Oldham argues that the Applicant relies on the "frictional" properties of
Santotrac rather than the "tractional" properties as outlined in the patent.
To support his position he refers to Product Engineering dated Aug. 1971 in
which the operation of Santotrac is explained. This article describes it as
a "lubricant at normal pressures and shear rates but turns instantly to a
glassy pseudo solid when squeezed from 20,000 to 400,000 p.s.i. in rolling
contact."
There seems to be considerable overlap in the meaning of "friction" and
"traction" as used in this art. U.S. Patent 2,440,894 (SANTOTRAC) states in
column 1 line 28 that "Traction is broadly defined as the adhesive friction
of a body on a surface in which it moves" and at line 35 ff it reads:
"A tractive drive, in simplified form, could comprise two parallel cylindrical
rollers in tangential contact, one roller being the input member and the other
the output member. The torque capacity of such a tractive drive is a direct
function of the contact pressure between the rollers and the coefficient of
traction of the roller surfaces. The phrase 'coefficient of traction' is
preferred instead of 'coefficient of fraction' in order to connote rolling
contact." (underlining added) From the textbook "Elevators" by Fred H. Annett
published McGraw-Hill Book Company - third Edition 1960, "traction" is
clearly established in the elevator field. In the application reference to
"traction" is found throughout the disclosure.
Page 8 of the application at line 13 ff states that "....suitable synthetic
lubricants are available commercially in different viscosities from Monsanto
Chemical Company which lubricants are sold under the trade mark SANTOTRAC.
SANTOTRAC synthetic lubricants have been sold for the purpose of increasing
the coefficient of traction between two rolling members in rolling contact
type drives..." and at line 21 ff. it states that "....These applications,
however, are fundamentally different than the application of lubrication
wire hoist rope and the drive sheave of an elevator system, and do not
suggest the unexpected advantages obtained by the new and improved combination
disclosed in this application...." We note, however, that at page 7 line
30 ff, the disclosure states "....While the invention is not limited to
an specific synthetic lubricant, it has been found that a synthetic hydrocarbon
lubricant which includes isopropylcyclohexane will provide the specified range
of coefficient of friction...." (underlining added)
According to the experts the pressure between the hoist cables and drive sheave
of an elevator is in the order 200 psi. Pressures described in the Product
Engineering article on Santotrac are in the range of 20,000 to 400,000 psi. As
we found on page 7 of the Applicant's disclosure the use of a synthetic
hydrocarbon lubricant which includes isopropylcyclohexane provides the coefficient
of friction required for elevator drives. Since isopropylcyclohexane is necessary
for improving elevator traction then it should be present in all claims. As
currently structured claims 1 to 14 specify only that a "synthetic lubricant"
is present, and it is not till we come to claims 15 to 18 that isopropylcyclohexane
is mentioned. Since a synthetic hydrocarbon which includes isopropylcyclohexane
is the only lubricant disclosed which will work, then it must be present in
any claim considered acceptable. However, since this question was not at issue
in the Final Action we recommend that the application be returned to the
Examiner to consider this objection.
To conclude we recommend that the selection for lack of intent to claim
be withdrawn. Further the rejection of claims 15 to 18 should also be
withdrawn. In addition, we recommend that the application be returned to
the Examiner to reconsider claims 1 to 14.
G.A. Asher S.D. Kot
Chairman Member
Patent Appeal Board, Canada
I have carefully reviewed the prosecution of the application and considered
the recommendation of the Patent Appeal Board. Accordingly I withdraw the
rejection of the application, and of claims 15 to 18. The application is
to be returned to the Examiner to consider whether the other claims are
too broad.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 6th. day of November, 1980
Agent for Applicant
McConnell & Fox
Box 510
Hamilton, Ont.