COMMISSIONER'S DECISION
S. 36, Sufficiency of Disclosure: Electronic Temperature Control
The components disclosed were found to be sufficiently described in view of
what was known in the art, and a person skilled in the art would be able to
obtain the operation and circuitry envisaged, but the drawing did not
accurately show what had been described. Modified; rejection withdrawn.
****
Patent application 292,964 (Class 342-19.6) was filed on December 13,
1977 for an invention entitled ELECTRONIC TEMPERATURE CONTROL. The
inventor is David V. Reid. The Examiner in charge of the application
issued a Final Action on July 9, 1980 refusing to allow the applica-
tion to proceed to patent.
The Board acknowledges Applicant's request of June 18, 1981 to cancel
the Hearing scheduled for July 22, 1981. The review will be made on the
record before us.
The subject matter of this application relates to an electronic device
for automatically changing and controlling the ambient temperature in a
building throughout each day of the week. Of the components present,
the main components include timing devices, a memory component to store
predetermined times and functions, temperature set components, a tempera-
ture sensor, and a comparator unit. By means of the components present and
the interconnecting circuitry, signals are matched from the time keeping
devices with those in the memory component, and consequently signals are
provided through the appropriate temperature set to the comparator which
compares them with signals from the temperature sensor, and subsequently
the appropriate signal is obtained to effect the desired heating or cooling.
Figure 1 illustrates the system.
(see formula I)
In the Final Action the Examiner rejected the application for insufficiency
of disclosure.
The Examiner cited one reference of interest:
United States Patent 3,929,284 Dec. 30, 1975 Prewarski et al
This patent discloses that timers for building temperature control are known
in the art.
In the Final Action the Examiner stated, in part:
...
Insufficiency of Disclosure
The disclosed single Figure of drawings consists merely of a re-
capitulation of the above-delineated desirable results or functions,
in a "block" form. The Figure fails entirely to supply explicit
information regarding the structure or circuitry of the actual
apparatus required to carry out the above-delineated desired
functions.
The disclosure text, in discussing this Figure, consists entirely
of a recitation of results to be achieved, or ideas to be realized,
while failing to set forth the apparatus for the realization thereof.
The only structure (as distinct from ideas) mentioned by the disclos-
ure is the suggestion that the above ideas could be carried out by
a suitably-programmed microprocessor, which may have an electronic
memory having the above-mentioned consumer-operated controls attached
to it, which may carry out all the above functions. (See page 16
lines 8-20) No circuit-details whatsoever of such a microprocessor
have been disclosed; neither have been disclosed any circuit-details
of how to connect the various terminals of such a micropressor with
the above-mentioned consumer-actuated HIGH temp. control, LOW
temp. control (items 108,66), the four UP-DOWN-UP-DOWN controls
(items 28, 30, 32, 34), the Monday-Tuesday-Wednesday-Thursday-
Friday-Saturday-Sunday switches (item 102), to the vaguely-
defined Saturday-Sunday control (item 97), to the clock
(item 14) and to the vaguely-defined "Memory Address" (item 24).
The various lines in this Figure merely convey the idea that
all these items are somehow suitably connected together, without
disclosing how.
It is therefore concluded that the disclosure contains merely an
invitation to make an invention, while failing to disclose how
to construct or make or build it.
...
Applicant's Arguments
The applicant has argued that "the relationship of the timekeeping
device to the memory address, and the hard wired time set dials
28, 30, 32, 34 are clearly exemplified".
However, no circuit details whatsoever of the (a) internal construct-
ion, (b) of the terminals, and (c) of the interconnections between
the terminals of each one of these items ("timekeeper", "memory
address", "hard-wired time set dials") are disclosed.
...
Applicant has further argued, as a sample of the sufficiency of the
disclosure, that "the signals from hard wired time set dials are
fed to the respective gates and, depending on the match of a
particular time with a stored time actuates one of the respective
gates to select either a (high or low) temperature setting for
the building".
This passage (incidentally representative of the whole disclosure),
however, fails to show the nature or form of the "signals", the
structure of the "time dials", the circuitry for matching "particular
time" with "stored time", and the circuitry for selecting a particul-
ar temperature.
...
Summary
The disclosure fails to describe the actual construction, or structure,
or circuits in such explicit detail as to enable one to construct
or make a device capable of carrying out the stated objects of the
invention.
The present disclosure is found to consist entirely of a recitation of
desired results, without disclosing circuit diagrams showing how to
wire the various switches, dials, memories, gates, microprocessors etc.
together so as to make them work as intended.
...
In the response of October 7, 1980 to the Final Action the Applicant did not
agree with the Examiner, and argued, in part:
...
In the detailed description of the preferred embodiments of
the invention, starting at page 5 line 23 through page 16
line 7, no reference is made to a microprocessor. Rather a
detailed discussion of the apparatus illustrated in Figure 1
is to be found. The first reference to a microprocessor
is made at the final page of the disclosure, page 16 starting
at line 8, where the Applicant states, "The device is
particularly suited to integrated circuit application where
a microprocessor may be incorporated in the system." Applicant
states that the final paragraph is clearly directed towards an
alternate embodiment of the invention.
No microprocessor is involved in the Applicant's preferred
embodiment. Therefore, the Examiner's rejection based on a lack
of connection details of the "microprocessor" to the other
components of the preferred embodiment is clearly erroneous.
Applicant respectfully submits that the Examiner's misunderstand-
ing of the details of the preferred embodiment is so erroneous
and pervades his entire reasoning to such an extent that his
rejection ought not be affirmed.
...
Applicant submits that, in the disclosure, which is directed
towards one skilled in the art, for an invention dealing with a
novel combination of previously known components, schematic
diagrams are neither desirable nor necessary in giving details
of the internal construction, terminals, or characteristics of
the known components. Block diagrams are the proper way to
demonstrate the direction between the known components. Indeed,
in electronics, where inevitably there are a host of different
devices to implement any particular function, such a block
diagram approach seems particularly apt. A complete circuit
diagram with particular commercially available components would
not only be excessively prolex, but also fail to clearly
disclose the interaction between the components; such interaction
being the essence of combination patents.
...
The Applicant believes the Examiner took exception to the
sufficiency of disclosure of the interconnections between the
timekeeping device 14, the memory address 24 and the memory
means 26, so therefore, Applicant uses this part of the disclos-
ure as a second example, see page 8, lines 1 through 20.
Depending upon the encoding scheme to represent the particular
hour in the day (22), Applicant submits that it would be obvious
to any one skilled in the electronics art to construct a decoder
or memory address means (24) which would provide twelve output
signals which could be routed to the four memory switches 28,
30, 32 and 34 via rail 27. It should be appreciated that the
details of the memory address 24 are not illustrated because
it depends upon the chosen encoding of signal 22. Further-
more, the memory address's twelve output wires would unnecessar-
ily clutter the circuit diagram.
...
The issue before the Board is whether or not the application contains sufficient
disclosure to satisfy Section 36(1) of the Patent Act. Claim 1 reads:
An electronic device for automatically changing and controlling
the ambient temperature in a building between predetermined
first and second temperatures by selected use of heating and
cooling means, said device comprising an electronic time keeping
means which has output in terms of hours of the day, electronic
display means for visually displaying such output, memory means
for storing at least two times during a 24-hour period of a day,
each of said at least two stored times determining the selection
and, when ambient temperature is changed to and maintained at
a selected first or second temperature by said device, first
temperature set means on which said first temperature is set
and which causes an output corresponding to said first tempera-
ture is set and which causes an output corresponding to said
second temperature, selector means for selecting which of said
first and second temperature set means determines the ambient
temperature, means for addressing said memory means with said
hour of the day output and upon a match of such hour with one of
said stored times said selector means is activated to select either
the first or second temperature set means, the selection being pre-
determined by the particular stored time which has been matched, a
single temperature sensor for sensing the ambient temperature and generat-
ing an output corresponding to the ambient temperature, comparator-
means for comparing the output from said temperature sensor to the
output of the selected first or second temperature set means,
switch means which is manually operable for selecting either the
heating or cooling meats to maintain ambient temperature proximate
the selected set temperature, said comparator generating an output
upon detecting a difference to appropriately activate or deactivate
the selected heating or cooling means.
Under consideration is whether or not the person skilled in the art could design
the necessary structure, or, stated another way, could obtain the necessary cir-
cuitry and devices to be used for the purposes which Applicant has presented in
his application, and shown in Figure 1. The Examiner has cited as of interest,
the patent to Prewarski et al, to show that timers for building temperature
control were known in the art. The Applicant has argued that Prewarski, while
relating a timer, does not provide an operation which matches the hour of the
day with the stored time. Applicant has also explained that in his application
signals are developed for various times of the day, and that these signals are
matched with signals from a memory component.
Applicant has also argued that the disclosure is directed to one skilled
in the art. With this in mind, we believe that the following United States
patent 3,903,515 entitled "Method of and Apparatus for Controlling the
Performances of Timed Functions" which issued September 2, 1975 to Haydon
et al, is worthy of inspection to obtain a view of the state of the art with
respect to electronically controlling timed sequences of operation. Briefly,
this patent is directed to method and apparatus for controlling the
selective performance of predetermined functions at predetermined times.
These functions and times data are stored in a memory, and this stored date
is compared to data produced by a timing means. If the actual time compares
with the stored time data, then the stored function associated with the
stored time is performed. The patent also relates various components which
are used to erase and add other functions and times as needed or desired.
Figures 1 to 6 of this patent show the combination of components by presenting
the components in block form to illustrate the different components used,
and illustrate the interconnection of the circuitry hook up by means of
conventional circuit lines. The disclosure of this patent refers to the pro-
grammer apparatus as having a clock means or other device capable of providing
time pulses. With respect to the memory used, the patent in column 11 lines
31 et seq. describes that a conventional static memory such as a core memory,
or a shift register matrix memory which exhibits either predetermined or
random access features were available for use, and then states that a certain
model of a conventional recirculating dynamic shift register is preferred.
The comparator circuit in this patent is also described and illustrated
in terms of a block diagram. From this patent, we are of the opinion that
components to carry out the indention of the instant application would have been
known and available more than two years prior to the filing date of
December 13, 1977 of this application.
On the issue of sufficiency of disclosure for the components, such as the
timing device, the electronic display device, the memory device, and the
various temperature sensing means, which are referred to in the disclosure;
we are of the opinion that a person skilled in the art would be able to
obtain the components for the operation of the system envisaged by the
Applicant in this application. As no art was applied by the Examiner, we
are of the view that the disclosure is sufficient under the circumstances.
While no art has been applied against the subject matter of the application,
we feel that mention of jurisprudence pertaining to carrying out of an
idea or concept, may assist in considering this application.
In Hickton's Patent Syndicate v Patents and Machine Improvements Company Ltd.
(1909) 26 RPC 339 at 347, Fletcher Moulton L.J. observed:
In my opinion, invention may be 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.
In Electrolier Manufacturing Co. Ltd. v Dominion Manufacturers Ltd. (1934)
SCR 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...
In Consolboard v. MacMillan Bloedel, March 19, 1981 (unreported) at page 14:
We must look to the whole of the disclosure and the claims to
ascertain the nature of the invention and methods of its perform-
ance, (Noranda Mines Ltd. v. Mineral Separation North American
Corporation (1950) S.C.R. 36, being neither benevolent nor harsh,
but rather seeking a construction which is reasonable and fair
to both patentee and public. There is no occasion for being too
astute or technical in the matter of objections to either title
or specification ------ the patent should be approached "with a
judicial anxiety to support a really useful invention."
In summary, we are satisfied on the evidence before us that the various compon-
ents referred to in the application were available prior to the filing of this
application. Therefore, we are of the view that the application may not
fairly be considered to be open to the rejection on the basis of insufficiency
of disclosure. However, we feel that the drawing may not accurately show what
has been described with respect to the one circuit line leading from the two
temperature sets to the comparator.
We therefore recommend that the decision in the Final Action, to refuse
the application on the ground of insufficiency of disclosure, be with-
drawn, and that the application be returned for continued prosecution.
J.F. Hughes S.D. Kot
Assistant Chairman Member
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and concur with the
reasoning and findings of the Patent Appeal Board. Accordingly, I withdraw
the Final Action.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 21st, day of December, 1981
Agent for Applicant
D.S. Johnson, Q.C.
133 Richmond St. W.,
Toronto, Ont.