COMMISSIONER'S DECISION
Section 36: Plastic toilet bowl
The product claims satisfy Section 36 without the need to limit these claims to a
particular process disclosed for making it The Final Action refusing the product
claims under Section 36 was withdrawn.
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Patent application 294,156 (Class 4-29), was filed on December 30, 1977
for an invention entitled "Unitary Bowl, Waterway and Trap for a Toilet,
and the Method of Making Same". The inventors are Samuel C. Crosby et al,
assignors to Trayco, Inc.. The Examiner in charge of the application
took a Final Action on November 8, 1979 refusing to allow it to proceed
to a patent. In reviewing the rejection, the patent Appeal Board held
a Hearing on October 29, 1980, at which the Applicant was represented by
Mr. R. Bell. Also in attendance was the United States Patent Attorney,
Mr. R. Craver, and from the Applicant Company Messrs. G. Bahroos and
D. Schrook.
The application is directed to a method of making, by blow molding, an
integral plastic bowl, waterway and trap for a toilet and the product
thereof. Figure 1, below, ~~~~~ a side elevation view of the integral
bowl, waterway and trap.
(See figure I)
In the Final Action the Examiner refused all of the product claims
(claims 1-4, 7-9 and 13) because, in his view, they axe "idefinite and
not in compliance with Section 35(2)" of the Patent Act. He had this
to say (in part):
...
The present claims 1-4, 7-9 and 13 stand rejected as indefinite and
not in compliance with Section 36(2). It is held that the essential
aspect of forming the fixture using a pair of blow mold sections
operating on a parison with the mold sections forming bulbous sec-
tions of the fixture as well as pinched closed flow passages when
fluid is blow into the parison interior be included in these claims.
Claims 5, 6 (dependent on 5), 10, 11 and 12 are allowable. Any
product claim made dependent on method claim 11 would also be allow-
able. Method claim 11, it is held, is the heart of the disclosed
invention.
The claims must not go beyond the disclosure. The claims must
define and limit with precision that which is claimed to be the
invention. The claims must be restricted to the limitation of
the disclosure, and must not be broader than is warranted by
the disclosure.
The point to be stressed is that it is the invention as claimed
which is at issue and not the invention as disclosed.
An inventor should not he rewarded beyond what he gives to the
public. It is possible that a claim for all means of arriving at
a desired result would be broad enough to cover later discovered
means wholly independent of the first means for arriving at the
same final result. In such case the inventor would be over
protected.
The disclosure must contain a description which is not calculated
to deceme or mislead the persons to whom the specification is
addressed and render it difficult for them without trial and
experiment to comprehend in what manner the invention id to be
performed. It must not, for example, direct the use of alternative
methods of putting the invention into effect if only one is practicable,
even if, persons skilled in the art would he likely to choose the
practicable method. The description of the invention must also be
full; this means that its ambit must be defined, for nothing that has
not been described may be valadly claimed.
Looking at the specification as a whole it is clear applicant
requires the presence of a pair of blow mold sections operating
on a parison with the mold sections forming bulbous sections of
the fixture as well as pinched closed flow passages when fluid
is blown into the parison interior. Every bit of this detail. is
required by appalicant to achieve succes. There is no direction
to omit any of it. Applicant has provided in his specification
no alternatives or alternate embodiments whatsoever....
In response to the Final Action the Applicant did not agree with the
stand taken by the Examiner and argued against the refection under
Section 36(2). The Applicant had this to say, inter alia:
...
It is respectfully submitted that this objection is clearly
not justified under Canadian patent law or under current
Canadian patent practice. It appears that the Examiner has
taken the position in the fourth paragraph of the Office Action
that it is essential to recite in the rejected product claim
the method steps of forming the claimed fixture in a particular
manner, namely, the method of formation disclosed in the present
application. Although it might be necessary to recite the in-
dicated method steps in a method claim, as has been done in
present method claim 11, there is certainly no need to recite
the method used in the product claims. The applicant takes
the position that the product itself is new and unobvious and
its utility cannot be douted. It is noted that the Examiner
has not rejected the product claims in their present form on
the basis of any prior art. It must therefore be assumed that
the present product claims distinguish over any prior art of
which the Examiner is aware. Certainly it is the applicant's
position that the product claims do in fact distinguish over
the prior art of which it is aware.
If one compares the scone of the various product claims in this
application, it appears that present claim 13 is the broadest
claim. This claim is directed to a fixture for a toilet
(obviously a useful article) which includes a bowl, a trap
and a tubular waterway, all of which are arranged in a particular
manner having proven utility. The primary distinctive structural
feature recited ino the claim is found in the last three lines
wherein it is stated that "the bowl, waterway and trap are formed
from a single integral piece of water-impervious plastic, free
of any joints and having an essentially smooth interior surface".
At the Hearing Mr. Bell submitted an amended set of product claims for
consideration before the Board. It follows that the consideration before
the Board is whether or not the amended set of claims satisfy the require-
ment of Section 36(2) of the Patent Act. We should point out at this time
that no prior art was cued agamnst the rejected claims Proposed Claim 1
reads:
A toilet fixture including a bowl having a large upper opening and
a small discharge opening at its bottom leading onto a trap, the
upper portion of the bowl being essentially symmetrical about a
vertical longitudinal reference plane, the trap being tubular and
having an inlet end communicating with the discharge opening of
the bowl and an outlet end for connection to a water closet flange,
a tubular waterway having an inlet end communicating with a hold-
ing tank and an outlet end communicating with a chamber defined
by the bowl and that portion of the trap located between the bowl
and the water-level establishing lip of the trap, wherein the bowl,
waterway and trap are formed from a single integral piece of
water-impervious plastic, free of any points and having an essen-
tially smooth interior surface, the trap and waterway each being
substantially aligned with and intersected by the reference plane
for at least substantially all of their respective lengths, and
at least a substantial portion of the length of the waterway being
located between the bowl and trap.
At the Hearing Mr. Bell pointed out that in his view the Examiner's primary
objection to the product claims is the fact that they are not limited to
a fixture made by the specific blow molding method described in the appli-
cation. We think that is a fair assessment of the situation.
Mr. Bell went on to argue that it is quite clear to those skilled in the art
that the fixtures of the present application could be made by known techniques,
other than the blow molding method described in the present application. In
an Affidavit submitted by Mr. G.R. Bahroos, Project Engineer at Mosco
Corporation, it was stated that two other well-known methods, centrifugal
casting and rotational casting, could have been used. At the Hearing Mr. D.
Schrook also stated that the same two methods were well known to him. According
to the information before us Mr. Schrook is a skilled person in this art.
In any event on the record before us the applicant has produced a new product
and adequately defined it by structure. There is no need to limit it further
to the particular process disclosed for making it, because the applicant is
entitled to the product, if inventive and Section 36 is satisfied, no matter
how it is prepared. The exception to this is, however, if the product falls
under Section 41 of the Patent Act, which calls for the product to be limited
to the method of manufacture. The applicant must, of course, describe how the
product is made, but that is the role of the description in the disclosure,
not the claims.
We have carefully reviewed amended claim 1, above, and on the record before
us it clearly satisfied Section 36(2) of the Patent Act. It defines dis-
tinctly and in explicit terms what the Applicant regards as new. The same
arguments apply equally to the remainder of the product claims (Claim 2 to
12). We therefore recommend that the product claims, referred to above,
should be accepted.
J. F. Hughes,
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and considered the
recommendations of the Patent Appeal Board. I concur with the reasoning
and findings of the Board. Accordingly, I will accept the amendments and
remand the application to the Examiner for resumption of prosecution.
J.H.A. Gari‚py,
Commissioner of Patents
Dated at Hull, Quebec
this 21th day of November, 1980.