COMMISSIONER'S DECISION
Aggregation, Obviousness: Shear Pin Release System
The shear pin and plug components of the rejected claims were held to have
an acceptable cooperative relationship, but that it was not properly defined.
Applicant submitted amended claims after the Hearing which overcame the
rejection on aggregation and prior art. Rejection modified.
****
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Examiner's Final Action on application 286,272 (Class 74-
294) entitled SHEAR PIN RELEASE SYSTEM. The inventors are Donald L. Smith
and Michael N. Clark. The Examiner in charge issued a Final Action on
November 28, 1980 refusing to allow the application to proceed to patent.
A Hearing was held on October 7, 1981 at which the Applicant was represented
by his Patent Agent, Mr, M. Thrift.
The application relates to a rocket retention and release assembly wherein first
and second members are connected together by a shear pin and plug assembly. The
hollow shank of a headed shear pin is inserted into aligned holes in the two
members and expanded so that the shank fits within the hole of the second member.
The plug is inserted into the hollow shank of the pin so that its upper surface
50 is located substantially in the shear plane 42 between the members to act
as an anvil. Figure 3 below shows the arrangement.
(see formula I)
In the Final Action the Examiner refused claims 1 to 10 inclusive, firstly as
being directed to an aggregation of elements which are old and well known in the
art, and secondly, as failing to define a patentable improvement over the
following Canadian patents:
949,785 June 15, 1974 Brown
433,738 Mar. 19, 1946 Cherry
410,803 Mar. 2, 1943 Waite
386,569 Jan. 30, 1940 Bettington
287,163 Feb. 12, 1929 Iseman
The Examiner also indicated that the subject matter of the remaining claims, 11
to 16, appeared to be allowable except for the need of positive claiming in claim
11.
The Bettington patent shows a headed rivet, while the other patents describe
various sleeve and pin rivet arrangements for forming headed fasteners to hold
two members together.
In the Final Action the Examiner stated (in part):
* * *
Applicants alleged invention relates to a shear pin holding two members
together and a plug within said pin acting as an anvil at a shear plane at
the adjacent faces of the two members.
It is agreed that this application contains patentable subject matter.
However, claims 1-10 inclusive as recited herein do not set forth the
limits of the invention in an acceptable manner.
Claim 1 is rejected as aggregative as claimed. Applicant has recited only
a shear pin for connecting first and second members and a plug for
insertion into said shear pin when it is used. This is not representative
of a combination which applicant alludes to in the preamble.
A combination is a union of elements that will produce a unitary result
that is not the sum of the known characteristics of the parts. The pin is
old and well known in the art, the plug is old and has well known
characteristics and a multitude of uses. These two elements are not
presented as a collocation of intercommunicating parts so that one may
contribute to the action of the other. Since one can contribute to the
other only when installed the claim can also be considered as conditional
or futuristic, and therefore indefinite.
Claim 1 is further rejected for failing to describe a device that would
carry out the object of the invention. If the plug was very short and
placed at the extreme lower end of the shank applicant would not have the
desired anvil effect.
Claim 1 is further rejected as too broad in scope in view of the patents to
Cherry, Waite, Brown and Iseman. The patent to Lettington [sic] teaches the
prior art as shown by applicant. These prior art patents which with the
exception of Lettington [sic] teach a shear pin and a plug.
* * *
Claims 11-16 appear allowable with the exception of the plug being
positively reintroduced in line 3 of claim 11.
Applicant has in his comments indicated that the prior art does not teach
his combination of elements. Such prior art is considered to meet the
claimed subject matter when set forth in the form of claims 1-10. Adapted
to be used for, or intended use, cannot be considered as limiting the
elements to that specific use.
* * *
The Applicant did not agree with the Examiner, and argued (in part):
* * *
The applicant's invention solves the problems of the hollow shear pin by
providing a plug for insertion in the passageway through the pin after it
has been expanded by the mandrel. In use, the plug is inserted to a depth
in the shear pin just below the shear plane between the two elements
joined. When so installed, the plug acts to prevent the collapse of the
surrounding portion of the shear pin shank and acts as an anvil promoting
the clean shearing of the pin rather than its collapse upon application of
the design load. It is agreed between the Examiner and the applicant, as
noted in the penultimate paragraph on page 1 of the Official Action of
November 28, 1980, that this involves invention.
* * *
It is respectfully submitted that the claims under rejection precisely
define what may be considered a group or "kit" of inter-related parts.
These inter-related parts may or may not be later assembled to form a
completed shear pin, but what may or may not happen in the future is not a
part of the claimed invention. The claimed invention includes present
structural limitations on each part. These are defined in terms of both
the relative dimensions of the parts and how the parts are to be inter-
connected in the final assembly, if assembled. However, this is not to say
that there is anything futuristic or conditional in the definition of the
claim. For example, claim 1 calls for a plug having a length such that
"the plug may in use be located entirely within a shank end portion of the
pin spaced from the head and located in the hole in that one of the members
to be located furthest from the head when said members are connected".
Rather than being a mere direction of activities to take place in the
furture, this language imparts a structural limitation to the plug.
* * *
With respect to the prior art objection, it is believed that none of the
applied references is pertinent to the applicant's claimed invention. None
discloses or even suggests the applicant's shear pin combination. Each of
the cited patents deals with rivets, the sole function of which is to
fasten two or more items rigidly together. On the contrary, the present
application deals with a shear pin which is to retain two items together up
to a specified load and then to release them when the specified load is
exceeded. None of the patents cited disclosed the applicant's combination
of pin and plug with the specified relationship between the plug and the
pin.
In researching the law relating to the Examiner's objection, one
decision of particular interest was located. That is In re Venezia 189
U.S.P.Q. 149, a decision of the United States Court of Customs and Patent
Appeals. The situation before the Court was, in the applicant's view,
directly analogous to that before the Appeal Board in this case. The
relevant aspects of the United States Patent Law are very similar to the
Canadian Patent Law and the Court's rationale in upholding the claims in
that case appears equally applicable to the Canadian situation. For the
convenience of the Patent Appeal Board a copy of the In re Venezia decision
is appended hereto. The situation would appear to be the same in Great
Britain, although no precedents on this point have been located, presumbaly
because no analogous objections have been raised.
* * *
The issues before the Board are whether claims 1 to 10 inclusive present a
proper combination of elements, and if they do, whether the combination claimed
therein is patentable over the applied patents.
We have reviewed the application, bearing in mind the arguments with respect to
the kit type of claims that Applicant believes are represented by claims 1 to 10,
and the rejection of these claims by the Examiner as being directed to an
aggregation. Of these claims, we find that independent claims 1, 5 and 8, which
call for a combination or an assembly, contain the same elements that are
incorporated in claims 11 to 16 which have been indicated by the examiner to be
allowable. These allowable claims define the subject matter found in the
disclosure, e.g. on page 6, where the specific relationship of the upper surface
of the inserted plug with respect to the shear plane formed by the members, has
been clearly described.
We find that while claim 1 recites a combination, and claims 5 and 8 each recite
an assembly, all of these fail to define the allowable matter found in claim 11
which we note is also a claim to an assembly since it is dependent on claim 8.
We are led, by the similarity of the claimed structures found in all these
claims, to the conclusion that if properly claimed, the elements would be so
interrelated in their intended arrangement one with another, that therefore the
inventive features of the invention would be considered as defining over the art
of record.
With respect to whether a proper combination is presented by claims 1, 5 and 8,
we are of the opinion that there is an underlying cooperative relationship of
the various components, albeit improperly defined, and that due to their
arrangement they should not be considered as parts of an aggregation, whether
the parts be together either as a connection or as a kit of interrelated parts.
In his response, Applicant has referred to a decision in the United States Court
of Customs and Patent Appeals, In re Venezia 189 U.S.P.Q 149 (1976), which held
that a group of interrelated parts in a kit form was a manufacture as that term
is used in the United States. Section 2 of the Canadian Patent Act also
recognizes a manufacture as an article or thing that is permitted patent
protection, provided that it is new and useful and falls into a category of
product associated with trade and commerce.
Similarly a process, to be patentable, must relate in some way to the production
of an article associated with trade and commerce. Concerning the term
manufacture, it was stated by Cattanach, J. in Lawson v. Commissioner of
Patents, 2 C.P.R. 101 at 111:
"Manufacture" connotes the making of something. Thus it is seldom that
there can be a process of manufacture unless there is a vendible product of
the process. It must accomplish some change in the character or condition
of material objects.
We are persuaded that the rejected claims should be considered in this
application as being directed to a manufacture which exhibits a sufficiently
acceptable combination of interrelated parts, but we are not satisfied that the
rejected claims properly define the combination or assembly as described in the
disclosure.
Therefore, after the Hearing we contacted Mr. Thrift, who had indicated at the
Hearing that amendments to the claims would be considered by his client, and we
suggested that claims 1 to 10 inclusive be amended to include terms defining the
specific relationship found on page 6.
On November 12, 1981, Mr. Thrift submitted a set of revised claims specifically
reciting the relationship of the plug in the shear pin, and also to the shear
plane formed by the members. Minor amendments to the disclosure were made at
the same time to bring the disclosure and claim terminology into conformity with
each other. Amended claim 1 is representative of the amendments made to
identify clearly the features of Applicant's invention, and reads:
A shear pin assembly for forming a connection between a first
member having a first hole completely therethrough and a second
member contacting the first member and having a second hole therein
aligned with the first hole, wherein the connection is shearable
along a shear plane between the first and second members, said
assembly comprising:
a shear pin having a head, a shank and a passageway extending
axially along the length of the pin such that when the shank of
the pin is inserted through the first hole and into the second hole,
the pin is expandable by a mandrel to engage the first and second
holes; and
a plug with a length less than that of tile shank and a diameter not
substantially less than that of the passageway after expansion of
the pin such that on assembly the plug is inserted in the passage-
way and located entirely within the second hole of the second member
with one end of the plug adjacent the shear plane.
We arc satisfied that the amended claims clearly define the invention in the
application over the prior art of record.
We recommend that the amended claims be accepted.
G. Asher S. Kot
Chairman, M. Broom
Patent Appeal Board, Canada Members
I concur with the reasoning and the recommendations of the Board. I am
returning the application for further prosecution.
Agent for Applicant
G.R. McLinton
Acting Commissioner of Patents Smart & Biggar
Box 2999, Station D
Ottawa, Ontario
Dated at Hull, Quebec
this 12th day of February, 1982