COMMISSIONER'S DECISION
INSUFFICIENCY, OBVIOUSNESS: Information Display System for Aeroplanes
The concept of projecting instrument information onto the windscreen of an
aircraft by selective illumination of optic fibres at a remote location is not
found in the cited art. The disclosure is sufficient.
Rejection reversed.
**********
Patent application 257,194 (Cl. 375-49), was filed on July 16, 1976 for an
invention entitled IMPROVEMENTS IN SYSTEMS FOR THE DISPLAY AND INDICATION
OF INFORMATION. The inventor is Pierre Coulomb. The Examiner in charge of
the application took a Final Action on October 3, 1979 refusing to allow it
to proceed to patent. In reviewing the rejection, the Patent Appeal Board
held a Hearing on November 26, 1980, at which the Applicant was represented
by Mr. Mitchell.
The subject matter of this application relates to a system for displaying
information on the windscreen of an aircraft particularily useful at the time
of take-off or landing. This information is in the form of an optical image
which appears at infinity so the pilot can see it without having to drop his
eye to the instrument panel. Optic fibres are used to form the image adjacent
the windscreen. Figures 1 and 6 are illustrative of the application.
(See figure I)
(See figure VI)
Image forming member 6 is encased in 33 located in the dash of the aircraft.
hens 31 projects the beam 34 onto windscreen 9 to form the image in line with
the pilots field of view.
In the Final Action the Examiner rejected the application for insufficient
disclosure and obvious in view of the following references:
Canadian Patents:
810,815 Apr. 15, 1969 Baker
816,322 June 24, 1969 Baker
British Patents:
1,066,282 Apr. 26, 1967 Barnes
1,077,003 July 26, 1967 Briggs
United States Patent:
3,663,112 May 16, 1972 Jones
Barnes and Briggs both show apparatus for projecting images on reflected screens
in aircraft. Bakers' patents relate to light modulators and converters and
Jones discloses apparatus for projecting images onto an aircraft windscreen.
In the Final Action the Examiner stated (inter alia):
Insufficiency of the Disclosure
The disclosure, however, fails to disclose adequate instructions on how
to make, build or construct the apparatus necessary in orderto realize
these objects.
The drawings are found to be merely an assembly of blocks containing a
recapitulation of the goals of the invention while failing to give any
structural details or circuit diagrams explicitly setting forth how the
stated goals and criteria could be put into practice.
In particular, the structure of the "converter" has not been disclosed.
It is therefore held that while the disclosure contains many ideas it
fails to reduce them to practice. The ideas in the disclosure are found
to be of the form of invitations to make an invention (or inventions)
which the Applicant himself has not yet quite made, or shown how to make,
by his failure to disclosure structural details of his "converter",
"coder" and "decoder".
Applicant has argued that no inventive ingenuity will be required to
design an apparatus capable of carrying out the stated goals, such as the
"converter ...' etc. However, if no invention is involved in carrying
out the goals of the invention then nothing patentable remains.
The fact remains that the necessary design work has not yet been done and
still remains to be done.
The disclosure is therefore rejected as being inexplicit, contrary to
Section 36(1).
Inexplicitness of Claims
Because of the failure of the disclosure to teach explicitly how to
construct the claims
"converter for receiving information and generating binary
signals representative of an intelligible image related to
said information" (claim 1 lines 2-4).
"... signals provided by the converter (being) encoded and ...
decoded" (claim 9 lines 2-4)
these claims items are held to be inexplicitly defined and not fully
supported by the disclosure. Claims 1 and 9 and the dependent claims 2-8
and 10-12 are therefore furthermore rejected as being inexplicit,
contrary to Section 36(2), and not fully supported by the
disclosure.
In the response to the Final Action the Applicant amended the disclosure and the
claims. He stated (in part):
It is respectfully submitted that for an application to describe a
patentable invention, two fundamental requirements must be met, both of
which are directed to the same hypothetical skilled person in the art
incapable of invention and which when taken together are completely
logical. On the one hand, in the description, the applicant must reduce
his description of the invention to a form such that this hypothetical
skilled person in the art is capable of putting it into practice. That
is what is required by Section 36. Thus, if the invention can be reduced
to a series of block units, each of which when taken separately is such
that it can be readily made by this hypothetical skilled person incapable
of invention, the applicant has satisfied that part of the Section 36
requirement. In addition, it goes without saying that having reduced the
invention to a series of such blocks, each of which when taken separately
is capable of being made by this skilled person in the art, the invention
must be such that that same skilled person would not have been able to
combine the separate blocks described to produce the results claimed by
the applicant. Thus, to reduce this idea to its simplest form, it could
be said that if two units A and B were well known in the art to produce
results a and b and someone found, unexpectedly, that if A and B were
combined they produced a result c which was different from a + b, then
all an applicant would have to do is disclose A and B and the fact that
when combined they unexpectedly produced the result c. The applicant
would not have to describe the internal workings of blocks A and B
because they are assumed to be known to the skilled person in the art.
This is an extreme hypothetical example to illustrate the point.
Returning to the present application, the applicant is saying that the
blocks 1 through 6 are such that each, when taken separately, they may
readily be constructed by a skilled person in the art without the
exercise of inventive ingenuity. The applicants have thus complied with
Section 36 of the Act. However, the blocks are such that the skilled
person in the art would not know to achieve the object of the present
invention by making these blocks and combining them together in the
manner defined in claim 1. It is for this reason that the invention, in
the applicant's submission, is not obvious.
In summary, the applicants therefore submit that, as far as
sufficiency is concerned, there is only one question to ask.
That is, has the applicant reduced each component block to a
form such that the skilled person in the art could put it into
practice without the exercise of inventive ingenuity. The
applicants forcefully submit that the answer to this question
is yes. It is quite easy for the skilled person in the art,
on the basis of the applicant's instructions, to design a
"converter" which illuminates light sources in accordance with
information fed into it. For example, if the information is
available in the form of a word of bits arriving in parallel,
the converter would simply comprise an array of LEDs with
suitable logic circuitry to activate different LEDs as different
binary words arrived at the input of the converter.
The issue before the Board is whether or not the disclosure is sufficient
and if the application is directed to a patentable advance in the art.
Amended claim 1 reads:
A system for displaying information on a vehicle windshield, com-
prising: a converter including a plurality of discrete light
sources disposed at a location remote from the vehicle windshield,
said converter being adapted to receive the information and
convert it into optical form by energizing selected ones of said
discrete light sources; an assembly of optic fiber groups each
group having one end associated with a respective one of said
discrete light sources, and having their other ends juxtaposed
at a location adjacent the vehicle windshield such that the
optic fiber groups illuminated by said discrete light sources
form an image representative of any given piece of information;
and a lens for projecting said image formed by said other ends
of the optic fibre groups to infinity on the windshield of the
vehicle.
We note that both of the Baker patents show the use of optic fibres in combin-
ation with light modulators and converters of various sorts. Jones relates
to a display system for an aircraft. An illuminated fibre optic bundle in
a graticule box mounted below the windscreen of the aircraft combines with
a spherical mirror mounted above the windscreen and a semi-reflecting mirror
mounted in the pilots line of sight to enable him to see the display. There
is no teaching of selectively illuminating the fibre ends or projecting this
image by a fixed lens directly onto the windscreen of a vehicle in these
references.
The disclosure was rejected for failing to give adequate instructions on how
to make, build or construct the apparatus necessary in order to realize the
objects of the alleged invention. In particular the rejection indicated that
neither the structure of the "converter" nor the details of the "coder" and
"decoder" were disclosed.
At the Hearing Mr. Mitchell argued that he has a novel concept. He maintains
there are many advantages in projecting information onto the windscreen while
at the same time eliminating the bulk of the optical projection equipment from
this overcrowded location. This is achieved by "making use of optic fibers to
form an image adjacent the windscreen and then projecting this image onto the
windscreen with a lens. The optic fibre bundles are juxtaposed at the image-
forming end and selectively and individually illuminated at the remote end so
that a desired image can be formed simply by determining which fibre bundles are
illuminated. The image can thus be changed without the need for any moving parts."
He adds that in order to selectively illuminate the remote ends of the bundles
of the optic fibres a device (optical converter) which accepts digital electronic
information and converts it to optical information is used. According to
Mr. Mitchell the "essence of the invention is that the optical image in effect
is formed at a remote location by the optical converter simply by illuminating
selected ones of the optic fibre bundle and transmitting the light to the
location adjacent the windscreen through the optic fibres where the image is
formed by the terminations of the optic fibre projected onto the windscreen."
It is a well-established principle of patent law that the patentable merit in
an invention may reside in the idea behind the invention. Once having conceived
that idea the way to implement it may be both simple and apparent, but that
will not nullify the patentability of such an invention. The invention may be
in recognizing the existence of a problem, or in clearly perceiving some
particular useful end to be obtained.
A leading case dealing with "recognition of the idea or concept" is Hickton's
Patent Smdicate v Patents and Machine Improvements Company Ltd.(1909)
26 R.P.C. 339. At page 347, Fletcher Moulton L.J. set forth the applicable
law as follows:
The learned Judge says: 'An idea may be new and original
and very meritorious, but unless there is some invention
necessary for putting the idea into practice it is not
patentable.' With the greatest respect for the learned Judge,
that, in my opinion, is quite contrary to the principles of
patent law, and would deprive of their reward a very large
number of meritorious inventions that have been made. I
may say that this dictum is to the best of my knowledge
supported by no case, and no case has been quoted to us
which would justify it.... To say that the conception may be
meritorious and may involve invention and may be new and
original, and simply because when you have once got the idea
it is easy to carry it out, that that deprives it of the title
of being a new invention according to our patent law, is, I
think, an extremely dangerous principle and justified neither
by reason, nor authority.
...
In my opinion, invention may lie in the idea, and it may
lie in the way in which it is carried out, and it may lie in
the combination of the two.
This doctrine forms part of Canadian jurisprudence. Mr. Justice Rinfret
put it this way in Electrolier Manufacturing Co. Ltd. v. Dominion Manufacturers
Ltd. (1934) S.C.R. 436 at 442:
The merit of Pahlow's patent is not so much in the means of
carrying out the idea as in conceiving the idea itself
(Fawcett v Homan), supra....
We agree that the concept of projecting information onto the windscreen by
selective illumination of optic fibres at a remote location is not shown in the
cited art. We are consequently satisfied that there is patentable subject
matter present over the cited art.
On the question of construction detail for the converter and decoder we think
it is comparable to the LED's and liquid crystal readout used for wristwatches
on the market for a number of years now. Since they convert electrical into
optical information we do not think there would be a problem for a person
skilled in the art to construct a "converter" capable of operating in a manner
envisaged by the Applicant. The disclosure therefore, in our view, is
sufficient under the circumstances.
At the Hearing Canadian Patent 931,252 was presented by the Examiner as
additional art to support the obviousness rejection. This patent relates
to a computer output display with a plurality of light sources shining
through optical fibers and selectively illuminating the fibres. The
Applicant agreed to study this reference. On April 21, 1981 Mr. Mitchell
submitted a letter commenting on this reference. In it he states that
"while it appears optical fibre groups have been used to generate output
displays for a computer printer, the idea of applying such a concept to an
aircraft display system is novel and fundamentally not obvious."
In summary, while fibre optics are shown in the cited art the concept of
selective illumination for optical display on an aircraft windscreen is not
suggested. We therefore recommend that the decision in the Final Action to
refuse the application be withdrawn and that, in our view, the amended
claims are acceptable over the art of record.
J.F. Hughes S.D. Kot
Assistant Chairman Member
Patent Appeal Board, Canada
I have considered the prosecution of this application and the recommendation
of the Patent Appeal Board. I concur with the reasoning and findings of the
Board. Accordingly I direct that the prosecution should resume on the basis
of the amended claims.
J.H.A. Gariepy
Commissioner of Patents Agent for Applicant
Marks & Clerk
Box 957, Station B
Ottawa, Ont.
K1P 5S7
Dated at Hull, Quebec
this 20th. day of August, 1981