COMMISSIONER' S DECISION
OBVIOUSNESS: Light Reflecting Metal Particles in Thermoplastic Sheet
Applicant amended the claims after the hearing to include the specific light
reflecting material used in the plastic sheet material. Applicant's
arguments were accepted that amendments under Rule 52 to include certain
ranges in the disclosure were proper. Refection modified.
*******
Patent application 315,073 was filed on October 31, 1978 in class 400,
subclass 72, for an invention entitled Metal Filled PE Formulations and
Fabrics. The Examiner took a Final Action on February 5, 1980 refusing
to allow it to proceed to patent. The Patent Appeal Board held a Hear-
ing on May 20, 1981 at which Mr. E. Fincham represented the Applicant,
Consolidated Bathhurst Limited. Mr. D. Helleur was also present as the
Company Patent Officer.
The subject matter relates to a protective plastic sheet particularly
suitable for protecting articles to be stored outdoors. The sheet includes
finely divided metal particles useful for reflecting harmful sunlight.
Also included is an additive known in the trade as Irganox MD-1024 which acts
as a metal deactivator and antioxident. These properties extend the useful
life of the plastic sheet since degradation due to an outdoor environment
is substantially reduced.
In the Final Action the Examiner rejected all claims because of the disclosure
in 2 pages of the Modern Plastics Encyclopedia, Volumes 52 and 53, published
in 1975 and 1976. The pages were respectively entitled Antioxidants Chart,
and Stabilizers Chart. They briefly indicate that Irganox MD-1024 is both
an antioxidant as well as a metal deactivator for copper, as an example.
The Examiner took the position that it was obvious to include a known plastic
additive with a known metallic deactivator property in a plastic when metal
particles are included in the plastic matrix.
The Examiner additionally made a subsidiary objection respecting proposed
amendments to pages 12 and 13 in Applicant's response of July 18, 1979. He
indicated that new matter was being proposed which could not be reasonably
inferred from the specification as originally filed. The amendment of page
12 included additional quantitative details of metallic powder (30%) and
Irganox MD-1024 (0.5%) in the master batch. The amendment of page 13
provided the names of two ultraviolet screen additives including a specfic
concentration of 0.3% by weight for each one. He finally refused entry of
the amendments since in his view they did not fall within the ambit of Rule
52.
In response to the Examiner's objection respecting prior art the Applicant
stated (in part):
In his rejection, the Examiner has cited the two references which are
substantially identical. Applicant does not dispute the teachings of
these references insofar as they disclose that IRGANOX MD 1024 is a
known antioxidant recommended for use with various thermoplastic
materials and that it is known as a metal deactivator. The teachings
of the references are believed to be clear.
However, it is respectfully submitted by applicant that the references
are clearly deficient in teaching the essence of the present invention
as defined in the claims. Thus, applicant is claiming a method of
preparing a stabilized protective material, which method includes
combining three materials and extruding the same. It is the
combination of the three materials - i. e. the thermoplastic material,
the metal particles and Irganox MD 1024 which provides applicant with
the substance of his invention. Applicant is not claiming the
combination of a thermoplastic material and Irganox MD 1024, nor is he
claiming that the particular combination of components as a
composition of matter suitable for any purpose. Rather, he is
claiming a stabilized extrudate suitable for prolonged outdoor
exposure and a method of preparing a stabilized protective material.
The art teaches that Irganox MD 1024 may be added to a thermoplastic
material and indeed, to a thermoplastic material containing metal
particles. However, it does not teach the specific method and
specific end product defined in the claims.
In greater detail, the Examiner has commented that applicant is using
an additive for the advertised purpose to achieve an advertised
result. It must again be reiterated that this is not what the
teachings of the references constitute. The reference does not state
that employing Irganox MD 1024 in combination with metal particles in
a thermoplastic material will result in a product which has improved
properties and in particular, which prevents degradation of the
thermoplastic material. The Examiner appears to have taken the
position that because Irganox MD 1024 is a known antioxidant, then the
combination of the three components is obvious. The teachings of the
references must be taken for what they are and it must be recognized
that the teachings are merely that Irganox MD 1024 is an antioxidant
and is known to deactivate metals. This does not, however, support a
finding that a claim directed to a method of improving the degradation
properties of a thermoplastic by adding thereto both the antioxidant
and the met al particles is obvious.
Respecting the objection under Rule 52 the Applicant stated (in part):
It is respectfully submitted by applicant that Rule 52 must not be
interpreted in a vacuum but rather interpretation should be guided by
pertinent sections of the Patent Act and Patent Rules. Thus, Section
36 of the Patent Act requires that an applicant correctly and fully
describe the invention and its operation or use as contemplated by the
inventor. Applicant has complied with this requirement and as the
Examiner has not made any objection under 36, it is believed that the
Disclosure does adequately set forth and define the invention.
Secondly, one may refer to Section 50 dealing with reissue of Patents
wherein it is stated:
"Whever any Patent is deemed defective. . . by reason of
insufficient description or specification. . . but at the
same time it appears that the error arose from inadvertence,
accident or mistake, without any fraudulent or deceptive
intention, the Commissioner may. . . cause a new Patent in
accordance with an amended description and specification. . . to
be issued to him for the same invention. . ."
Thus, it would appear that an applicant may, by reissue of a Patent,
add matter. to the Disclosure under certain defined circumstances. It
is respectfully submitted that the matter which applicant, in the
instant application, proposes to add to the Disclosure, would clearly
fall within the scope of that matter defined by Section 50 of the
Patent Act. Bearing in mind that no objecton has been made to the
Disclosure under Section 36 of the Patent Act, it would thus appear
that applicant could conceivably be able to issue the instant
application as a Patent without the proposed changes to pages 12 and
33 and subsequently under the provisions of Section 50, apply for a
reissue to add this matter to the Patent. Such a course of action
would appear to be somewhat illogical.
Moreover, and apart from the above, it is respectfully submitted that
the subject matter proposed to be added on pages 12 and 13 of the
Disclosure does not fall within the scope of matter prohibited under
Rule 52.
Initially, attention is directed to the decision of the Commissioner
of Patents in Application No. 047,327 as reported in the Patent Office
Record, Vol. 102, No. 16, April 16, 1974. In that decision, the
Commissioner held:
"Of interest in the determination of this case is the consideration of
the Court in Minerals Separation v. Noranda Mines Ltd., (1947) Ex.
CR. 306, wherein Thorson P. stated at page 319:
"'When it is said that a specification should be so written that
after the period of monopoly has expired the public will be able
with only the specification to put the invention to the same
successful use as the inventor himself could do, it must be
remembered that the public means persons skilled in the art to
which the invention relates, for a patent specification is
addressed to such persons.'
And at page 319 he also stated:
'There is no doubt that the specification is not well drawn, but
there is a vital difference between imperfections of draftmanship
and non-compliance with statutory requirements. (Emphasis
added).'
Thus the issues appear, first as to whether the application as filed
has complied with the statutory requirements of Section 36 of the
Patent Act keeping in mind the instruction that there is a vital
difference between imperfections of draftmanship and non-compliance
with the statutory requirements, and second as to whether the amended
definition of the dry specific surface of the plaster after wetting is
admissible under Section 52 of the Patent Rules as matter reasonably
to be inferred by persons to whom the specification is addressed."
A further decision of the Commissioner which is of interest is that
pertaining to Application 139,256 as reported in the Patent Office
Record, Vol. 106, No. 27, issued July 4, 1978. In particular, it is
noted that the Commissioner held:
"In view of the above consideration, we are constrained to
conclude that the applicants should be permitted to amend the
disclosure to introduce the additional data in order to more
fully comply with the requirement that "when the period of
monopoly has expired the public will be able, having only the
specification, to make the same successful use of the invention
as the inventor could at the time of his application". (vide,
Mineral Separation v. Noranda, supra) It is our opinion that it
falls under the heading of imperfection of draftmanship rather
than non-compliance of statutory requirements."
In connection with the above, it should be noted that the subject
matter added to this application, as previously noted by applicant, is
not material which was discovered subsequent to the filing date of
this application. The-subject matter which applicant is attempting to
add is merely to provide more information to the public. The
additional subject matter is not required to fully support the claims
and there is no consideration of the subject matter covering matter
which was discovered after the filing date of the application.
Accordingly, in view of the above, it is respectfully submitted that
the rejection under Rule 52 is not proper and that the proposed
amendments to the Disclosure should be allowed.
The issues before the Board are whether or not the claims are acceptable in
view of the cited art and whether amendments to pages 12 and 13 are
acceptable under Rule 52. We will first consider the rejection of claims
in view of the cited art.
At the Hearing, Mr. Fincham stated the purpose of the inventor was to
improve longevity of plastic wrapping when used as a protective cover for
outdoor storage of lumber. The scrim previously used had a useful life of
two years but the inventor found this period could be extended by
incorporating finely divided metal particles into the plastic. He further
indicated that a processing problem occurred when the metal filled plastic
was extruded at high temperature onto a polypropylene scrim used as a
strength member. This was overcome by addition of Irganox MD-1024 to the
metal filled plastic since it was both a metal deactivator and
antioxidant. It was this latter ingredient which was the key to making the
invention fully operable. He admitted using metal particles in a plastic
matrix for radiation shielding of electronic equipment was known but he
emphasized that its use in a protective cover material was not previously
known. He then stated that the inventive product enjoyed substantial
commercial success since it's lifetime was double that of previously known
wrapping. He then directed his attention to the references cited by the
Examiner and he disputed that the combination of the three elements in the
claims was obvious from the references. However, he indicated that the
form of the claims could be improved to be more specific respecting method
of use. He then agreed to amend the claims to more clearly define the
invention.
On May 21, 1981. an amendment was filed which proposed the substitution of
claims 1 to 10 for those on file. Representative claim 6 is reproduced
below:
6. A sheet material for protecting a product to be stored
outdoors, the sheet material comprising a layer of thermoplastic
material having sufficient finely divided metal particles disper-
sed therein to reflect light rays, and the composition marketed
under the trademark "IRGANOX MD 1024".
The above claim now defines the function of the finely divided metal particles
being to reflect light rays. We find the new claims more clearly define the
invention. The Examiner has raised serious doubt in our mind whether the
invention defined in them might not be obvious from the art cited. In the
last analysis, however, we have been persuaded to the contrary by the evidence
developed at the Hearing. The invention is not anticipated. It has filled
an important need, and there has been considerable commercial success.
We therefore recommend that amended claims 1 to 10 be accepted.
We will now consider the rejection under Rule 52 which is reproduced below:
No amendment to the disclosure shall be permitted that describes
matter not shown in the drawings or reasonably to be inferred
from the specification as originally filed, and no amendment to
the drawings shall be permitted that adds thereto matter not
described in the disclosure.
The Rule poses the following question: Under what conditions should the
reasonable inference be made and by whom shall it be made? The clear
answer to this question is: The man skilled in the art at the time the
application was filed. Therefore, in our view, the burden is first imposed
upon Applicant to prove that proposed amendments are being made under the
specified conditions. The burden of proof then shifts to the Examiner
making an objection against entry of an amendment. In order to succeed, he
must show by reasoned argument in view of evidence that the "reasoned infer-
ence" conditions have not been satisfied.
At the Hearing, Mr. Fincham indicated that the amendments proposed by
Applicant were typographical errors which were inadvertently left out of
the original specification. He indicated that the changes being made were
merely to amplify the examples and provide to the public more information
as to how they were run. He emphasized that Applicant was not relying on
these additional details to substantiate the invention being claimed and as
such they were corrections which should be allowed. He then proposed that
where one skilled in the art can rectify obvious errors, the specification
is not defective and in the case at hand, the changes are not new matter
per se. At this point Mr. Helleur indicated that the particular
ultraviolet screens indicated in the amendments were supplied with the
resin by the manufacturer and were included in the original runs. He also
indicated that they were conventional additives and clearly improved the
end product.
We now turn to the disclosure as originally filed and find at page 12 line
22 the following statement: "The thus-resulting pellets of a master batch
contained a high concentration of metallic powder and other additives".
Since it was conventional to load plastics with substantial amounts of
fillers such as pigmentation materials, we consider a figure of 30% for
metal particles for the purpose of reflecting sunlight would be expected to
one skilled in the art at the time the application was filed. Similarly,
at page 5 line 20 et seq. we find that Irganox MD-1024 is an additive in
amounts within the range .05% to 10% or more. We find the amendment at
page 12 line 7 specifying a figure of 0.5% to be well within the
comprehension of one skilled in the art since the figure is between the
limits specified above. Again, at page 15 line 1 we find that addition of
ultraviolet inhibitors is conventional. The amendment at page 13
specifying a concentration of 0.3% by weight for two particular ultraviolet
screen additives is also considered to be within the understanding of one
skilled in the art.
In view of the above, we are satisfied that Applicant has fulfilled his
obligation respecting proof of reasonable inference considering Rule 52.
We therefore recommend that amendments to pages 12 and 13 be entered.
In summary, we find that in our view new claims 1 to 10 overcome prior art
objections and disclosure amendments to pages 12 and 13 are acceptable
under Rule 52.
G.A. Asher
Chairman, Patent Appeal Board
I have reviewed the prosecution of this application and concur with the
reasoning and findings of the Board. Accordingly, I direct that
prosecution should resume on the basis of the recommendations.
J.H.A. Gari‚py Agent for Applicant
Commissioner of Patents McFadden, Fincham & Co.
Suite 105
186 Sutton Place
Beaconsfield, Quebec
Dated at Hull, Quebec
this 16th, day of December, 1981