COMMISSIONER'S DECISION
Sec. 2; Sec. 36 - Improper Combination
The application relates to the repair of tubes in a heat exchanger. Claims were
rejected as defining an improper combination of a tool and a workpiece. The
tool consists of an exploding plug and a plurality of support means while the
workpiece is the heat exchanger to be repaired by the use of the tool.
Final Action: Affirmed
****
Patent application 298,822 (Class 26-145), was filed on March 13, 1978
for an invention entitled "Support Plug." The inventor is Gordon C.
Larzon, assignor to (The) Babcock & Wilcox Company. The Examiner in
charge of the application took a Final Action on November 30, 1979 refus-
ing to allow it to proceed to patent. In reviewing the rejection, the
Patent Appeal Board held a Hearing on January 19, 1981 at which the
Applicant was represented by Mr. R.A.R. Parsons.
The application is directed to an arrangement for supporting tubes in a
heat exchanger, which tubes surround a leaky tube to be sealed by an ex-
plosive activated plug.
In the Final Action the Examiner refused claims 1 to 6 as defining an
improper combination of a tool and a workpiece. The tool is made up of
an explosive plug and a plurality of supporting means. The workpiece is a
heat exchanger to be repaired by use of the tool. He went on to say
(in part):
...
Claim 1 defines a combination of a pressure vessel and a
plurality of support plugs inserted in certain tubes in
the vessel. The pressure vessel is a workpiece which is
to be repaired. The plugs are part of a set of tools to
be used in the repair of the vessel. During performance
of the repair method, the plugs are temporarily located
in the tubes adjacent the tube to be repaired. This is
a transient combination which exists only during the
performance of the repair procedure.
The Patent Act provides for claims which define a method
or process, a product resulting from a method or process
and apparatus capable of performing or being employed in
a method or process. Applicant's attention is directed
to Form 22 of the Patent Rules where examples of such
claims are provided.
Applicant's invention, as stated at page 1, is "...an
apparatus and method wherein distortion of the adjacent
tubes and tube sheet ligaments by the explosive force
is substantially minimized". The method aspect of the
invention is claimed in claims 7 to 10.
If applicant considers that his apparatus for perform-
ing the method is inventive he may present claims to the
apparatus. Similarly, if he deems the repaired product
to be inventive, he may present claims to this product
and may include therewith those tools which remain with
the vessel after repair.
However, under no circumstances may the damaged pressure
vessel be included in a claim. The vessel, prior to repair,
does not represent any aspect of the invention. To include
with it some of the repair tools does not lend any patent-
able distinction to the damaged vessel.
Claims 1 to 6 are rejected on the grounds of failure to
define a patentable combination and failure to define either
a product or an apparatus representative of the invention.
...
In response to the Final Action the Applicant had inter alia this to say:
...
It is also respectfully requested that the Commissioner review
the Examiner's action in rejecting claims 1 to 6 of the
present application for being directed to an improper combina-
tion of a tool and a workpiece.
It is submitted that there is no statutory nor common law
authority for such a rejection. The Examiner has not
specified which section of the Patent Act, or which Rule
under the Act he relies upon to support his rejection, nor has.
he cited any precedent for such a rejection. The only refer-
ence made by the Examiner to the Patent Rules in his rejection
of the claims is to Form 22, which includes examples of
permissible claims. It is however submitted that the examples
given in Form 22 are manifestly not exhaustive of the types of
claims which may be permitted, and the Examiner appears to
concede this by admitting the admissibility of forms of claim
other than the types shown in Form 22. It is not in any event
conceded that the claims rejected in the present application
fail to accord with the precedents suggested in Form 22.
Both the exemplary apparatus and article claims consist of
combinations of co-acting parts, dust as in the present applica-
tion. It is therefore submitted that the claims comply with
the requirements of Rule 33.
It is furthermore submitted that the rejected claims comply
with the requirement of Section 36(2) of the Patent Act,
which status (emphasis added) "The specification shall end
with a claim or claims stating distinctly and in explicit
terms the things or combinations that the applicant regards
as new and in which ha claims an exclusive property or
privilege." It is further submitted that the subject matter
of the rejected claims is an invention within the meaning
of Section 2 of the Patent Act in that it is a new manufacture
or an improvement in a manufacture.
Applicant's agents are not aware of any precedent suggesting
that claims such as those under rejection can not properly
be allowed in a patent application, nor has review of the
Manual of Patent Office Practice indicated that the rejected
claims fall in any of the categories indicated as improper in
that publication. It is submitted that the rejected claims
are directed to a true combination within the meaning of
paragraph 8.05 of the Manual, and they are not directed to an
exhausted combination as defined in paragraph 8.05.01, which
states "An inventor is entitled to claim his invention, be it apparatus,
product or method, and its immediate and cooperating-environment"
(emphasis added). In the present case, all of the parts of the
claimed combination cooperate to produce a unitary and practical
result that is not the sum of the known characteristics of the
parts. The pressure vessel is an essential part of the combina-
tion without which the desired cooperation can not take place.
...
The consideration before the Board is whether or not claims 1 to 6 are proper
combination claims. Claim 1 reads:
In combination with a pressure vessel comprising tube sheet
means transversely arranged therein, a plurality of fluid convey-
ing tubes disposed within the vessel, the tubes having their ends
connected to the tube sheet means, and including explosive
activated plugs disposed for insertion into the ends of a leaky
tube, means for detonating the explosives in inserted plugs to
fix the plugs to the surrounding tube walls thereby sealing the
ends of the leaky tube, the improvement comprising means for
supporting the tube sheet means and the ends of tubes adjacent
to the leaky tube during detonation of the explosive, the
supporting means including support plugs inserted into the ends
of said adjacent tubes.
At the Hearing Mr. Parsons argued that, in his view, claims 1 to 6 properly
define the invention described in the disclosure. He also discussed Form 22
and the sample claim therein which defines an operable tool for driving
posts. He went on to say that present claim 1 is somewhat akin to that
sample claim. We hasten to add, however, that the sample claim does not in-
elude the post in the combination, which, if it did, would then bring it clos-
er in line with what the Applicant is attempting to claim.
It is clear that if there is no patent utility for the subject matter de-
fined in a claim then it is an improper claim under Section 2 of the
Patent Act. We believe that the decisional law in the United States set-
ting forth and applying the principles governing the patentability of
subject matter, in this area, is good law in Canada. For example, in Ex
parte Howard 1924 CD 75 the legal principle is set forth as follows:
The article claims are drawn to a freely-falling drop
or gob of molten glass. The drop exists as such only
while falling to the mold. When it reaches the latter,
it assumes a different shape, solidifies immediately,
and is transformed into a completed article. In view of
the decisions cited, I am of the opinion that it is the
finished product that the patent statutes are designed to
protect as 'manufactures' and not something which is produced
at a particular stage of the manufacturing process and which
is evanescent and adapted for use only in so far as it may
enter into and be modified by subsequent steps of a method
for producing a completed article.
In reaching this conclusion I am not unmindful of the fact
that products of intermediate steps of a process or method may
be inherently useful and new, and therefore may be patented
as articles. Thus a roof is a 'manufacture' within the meaning of
section 4886, Revised Statutes, and in constructing a roof
the builder may also fabricate the clay tiles, beams, bolts,
rivets, etc., used in forming the same, each of which would be
intermediate products and, if new, patentable as a 'manufacture.
These articles, however, are inherently useful and complete an
themselves. Nothing remains to be done to make a finished
product. On the other hand the drop of glass claimed is in its
temporary condition while being transformed into something
else. The 'manufacture' is not yet made, the process of
manufacturing is still incomplete.
Mr. Parsons argued that the Examiner failed to point out a section of the Act
which the claims offend. If it is an improper combination, the claimed
subject matter does not satisfy Section 2 or Section 36 of the Patent Act.
Claims 1 to 6 define a structure but rely upon a method step to provide a
sealed tube in a heat exchanger. The structure is in a transitory stage in-
stead of its final form with non-leaky tubes. The case thus hinges on the
utility of the transitory structure, or transient combination as referred
to by the Examiner, within the meaning of Section 2 of the Patent Act.
It is clear that any intermediate product can be acted on further in a pro-
cess to turn it into a finished product. This feature of an intermediate
product does not make it automatically a patentable intermediate product.
Usefulness in further processing is implied in the definition of the
expression "intermediate product", but such usefulness does not necessarily
imply patentability. A further usefulness must be inherent in the inter-
mediate product or the disclosure must assert the utility or indicate its
use. The Applicant has not done this with respect to the subject matter of
claims 1 to 6. Rather the best and only mode contemplated by the Applicant
to carry out the invention is to place the explosive and support plugs into
the tubes followed by detonation of the explosive charge. After insertion
of the plugs into the heat exchanger the product is in a transitory stage
toward a final useful product rather than a patentable intermediate product.
Although it may be common practice to patent commercial intermediate products
which are finished at a later stage the present specification does not describe
any commercial utility of the unactivated explosive plugs and support plugs
in the pressure vessel assembly. We therefore conclude that the claimed
arrangement is an intermediate transitory product with no inherent commercial
use per se. (see Ex parte Howard, supra). Its transitory use, as mentioned,
is in the chain or processing steps during manufacture of the final useful
product. The new manufacture is not yet made and the process of manufacture
is still incomplete in the transient arrangement of the tool and work piece.
Claim 1, in our view, should therefore be refused for "failure to define a
patentable combination." Dependent claims 2 to 6 further define the supporting
means and should also be refused.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and considered the
recommendation of the Patent Appeal Board. I concur with the reasoning
and findings of the Board. Accordingly, I refuse to grant a patent on
claims 1 to 6. The Applicant has six months within which to submit an
appropriate amendment, or to appeal this decision under Section 44 of
the Patent Act.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 5th, day of February, 1981
Agent for Applicant
Ridout & Maybee
Suite 2300, Richmond-Adelaide Centre
101 Richmond St. H.
Toronto, Ont.