COMMISSIONER'S DECISION
REISSUE: ADJUSTING WEATHER STRIP
The original application was filed by the inventor and the agent was appointed
after the initial response to an examiner's action. Affidavit evidence shows a
lack of communication between the inventor and agent. Use of a single bar
spring rather than a plurality of bar springs to actuate the moveable sealing
member is acceptable. Final Action - Reversed.
************
Patent application 341,876 (Class 108-58), was filed on November 20, 1979 for
an invention entitled "Self Adjusting Weather Strip". The inventor is
George Khallil. The Examiner in charge of the application took a Final Action
on February 11, 1982 refusing to allow it to proceed to patent. In reviewing
the rejection, the Patent Appeal Board held a Hearing on December 15, 1982, at
which the Applicant was represented by Mr. R. Frayne.
The subject matter of this application relates to a self-adjusting weather
strip used for sealing a door. It consists of a hollow "U"-shaped channel
base member with a groove on one side in which a spring loaded inter-fitting
piston-type I-beam sealing member moves. Figures 1, 2, 3, 6 and 7 are
illustrative of the application.
(see formula I, II, III, IV, V)
Base member 12 has a groove in wall 20 where central portion sealing member
26 moves. Spring 32, placed between wall 14 and bar 28 of member 26, biases
the member 26 outwardly of the channel to contact it against door 38.
In the Final Action the Petition for reissue is refused because "claim 3 is
directed to a different subject matter from that which the Applicant has
disclosed and claimed in his immediate identified patent."
In that action the Examiner stated (in part):
...
Once again, it is maintained that part 3(b) of applicant's
petition erroneously stated that "the invention disclosed in
my said patent is operable and commercially feasible with a single
such bar spring". The invention disclosed in applicant's
patent nowhere specifically entertains the possibility, commer-
cial feasibility, or the operability of using a single bar spring.
Note that, on page 1 line 12 the patent refers to "spring means".
On page 1 line 28, the patent specifically describes "a plurality
of curved bar springs within said channel". On page 2 line 34,
the patent states that "the channel of aluminum extrusion 10
is adapted to receive a plurality of springs 32". On page 4, line 9, the
patent deals with "the action of springs 32". However, nowhere,
does the patent deal with the operability, the feasibility, or
even the possibility of using a single bar spring.
It is also maintained that part 3b of applicant's petition
erroneously states that "if a single bar spring is employed as
is evident from my disclosure, such short extension is not an
essential component of the bar spring". As is established
immediately above, it is not evident from applicant's patent
disclosure that a single bar spring is, or can be, employed. Fur-
thermore, it is not evident from applicant's patent disclosure
that the short extension is not an essential component of the
bar spring.
On page 1 line 29, applicant specifically establishes "said springs
each having an integral short extension projecting from one end
thereof adapted to bite an aluminum surface" etc. On page 3,
lines 3-13 consistently develop the object of using that specific
form of bar spring.
However, nowhere in the patent, does applicant specifically discuss,
or in fact even suggest or imply that the short extension is not
an essential component of the bar spring.
Applicant's patent claims are essentially, specifically, and
unequivocally directed to an assembly which distinguishes over
the prior art through the expedient of a plurality of bar
springs of the conformation shown in Figure 5, for the express
purpose of inhibiting movements of the plural short springs
with short extensions 34 along the extrusions.
Claim 3 does not suggest any of the immediate subject matter.
Furthermore, applicant's attention is drawn to the fact that,
nowhere in the disclosure of his Reissue Application does he
specifically discuss, nor even imply that his weather strip is
commercially feasible and operable using a single bar spring.
Nor does applicant's reissue application specifically establish
that the short extension is not an essential component of the
bar spring.
Note that a study of the disclosure of the Reissue Application
reveals that a plurality of springs, each with the pertinent short
extension is essential to the operation of applicant's weather
stripping, a situation diametrically opposed to the content of
part 3(b) of applicant's Petition For Reissue.
Consequently, neither applicant's patent, nor his application for
Reissue will support a claim of the breadth and concept of claim 3
of this Reissue application.
Concomitantly, there is no evidence that "as a result of inadvertance,
accident or mistake, the applicant herein was granted a claim narrower
than that to which he is entitled" to quote from applicant's letter
dated July 31, 1981, on page 2.
Certainly, it does not appear that applicant is entitled to a claim
of the breadth and specific limitations found in claim 3.
It is reiterated, that, on the basis of applicant's originally
filed disclosure of his patent, there. is no evidence whatever that
applicant intended to protect the subject matter of extant claim 3
in his patent, or, in fact, that he was aware of the subject matter
of claim 3. Furthermore, it appears that on the basis of the
di$closure of this application, applicant's claim 3 is directed to
a weather stripping structure which is not specifically described
in the disclosure.
In part 4, of the Petition For Reissue applicant contends that error
arose because "I did not emphasize to my patent agent that a single
bar spring would also serve the desired purpose within the scope of
my invention".
It is again reiterated that applicant's failure to emphasize that a
single bar spring without an extension might be used is irrelevant to
the disposition of this Reissue Application.
...
In response to the Final Action the Applicant stated (inter alia):
...
For example, in the Official Letter dated January 9, 1981,
nine Canadian patents were cited as completely anticipating
claim 3. In fact, none of this prior art, taken alone, or
in combination has any direct relevance to the invention
disclosed and claimed. The prior art is discussed in detail
in applicant's response dated January 28, 1981.
All prior art was subsequently withdrawn, and has not been
further relied on by the Examiner.
Applicant's invention is thus submitted to be capable of broad
patent protection. At issue is the definition of the spring
means used in the self adjusting weather strip disclosed.
While spring means are an essential part of the invention it
is applicant's submission that the pair of extrusions disclosed
and which cooperate to provide a "piston" action, are the heart
of applicant's invention. The spring means therefore are of
secondary importance only. Nowhere in the prior art can be found a
weather strip having the interacting elongate extrusions as
specifically disclosed herein.
In the Final Action the Examiner holds that the reissue applica-
tion does not disclose a single elongate spring means for use
in combination with the pair of cooperating extrusions.
We are enclosing herewith an affidavit by the inventor-applicant,
for consideration by the Appeal Board.
In his affidavit the inventor describes his initial experiments
with a single elongate spring, having a wavy configuration, and
his discarding of this spring, in favour of the short springs
disclosed, in view of a stretching effect of the single long
spring, over a period of time, in use. It will be further noted, in
the final paragraph of the inventor's affidavit that competitors
have adopted the essence of the subject invention, the pair of
cooperating extrusions, and are competing unfairly with the
applicant, by using a long, wavy spring.
We draw the attention of the Appeal Board to the decision of
the Federal Court of Appeal, Deere & Co. v. Commissioner of
Patents, November 17, 1981, 59 C.P.R. (2d) at page 1.
...
The issue before the Board is whether or not the original patent should be
reissued.
Parts 3 to 5 of the Petition for Reissue read as follows:
(3) THAT the respects in which the patent is deemed defective
or inoperative are as follows:
(a) One independent claim is present in Petitioner's
Canadian Patent No. 1,042,725, this claim including
the following limitation:
"a plurality of curved bar springs within said channel
between the side thereof opposite said elongate opening
and the square bar of said I, said springs each having
an integral short extension projecting from one end
thereof adapted to bits an aluminum surface when urged
thereagainst and to maintain said spring positioned
thereagainst ;"
(b) This limitation is directed to "a plurality of curved bar
springs", whereas the invention disclosed in my said patent
is operable and commercially feasible with a single such
bar spring, so as to support a claim reading:
"A self-adjusting weather strip assembly comprised of:
a main aluminum extrusion having a flat elongate base
plate with an integral channel therealong, said channel
being rectangular in cross section and having an
elongate opening along one side thereof;
a second elongate aluminum extrusion configured generally
as an I beam in cross section, one cross bar of the I
being approximately square in cross section and being
adapted to be slidably received in the channel of said
main extrusion with the stem of the I passing through said
elongate opening thereof, the other cross bar of said I
having means to retain an elongate weather strip facing
member;
at least one curved bar spring within said channel between
the side thereof opposite said elongate opening and the
square bar of said I; and
weather stripping affixed along the face of the second
cross bar."
That while my disclosure details the short extension on a
curved bar spring, to bite one face of the aluminum extrusion
within which it is contained, if a single bar spring is
employed, as is evident from my disclosure, such short ex-
tention is not an essential component of the bar spring.
(4) THAT the error arose from inadvertence, accident or mistake,
without any fraudulent or deceptive intention in the following
manner.
Your Petitioner prepared Canadian patent application Serial No.
274,043, and received reject ion from the Canadian Patent Office,
after which the services of a patent agent were retained, in
order to re-write the application in a form acceptable to the
Canadian Patent Office. In preparing such re-written disclosure
my patent agent followed as closely as possible my original
disclosure, and my original claims, all of which claims were
directed to a plurality of bar springs, and I did not emphasize
to my patent agent that a single bar spring would also serve the
desired purpose within the scope of my invention.
(5) THAT knowledge of the new facts in the light of which the new claim
has been framed was obtained by Your Petitioner on or about the 15th
day of October, 1979, in the following manner:
There came to my attention in Kentville, Nova Scotia, where
I reside, weather strip products manufactured by the follow-
ing three Canadian companies:
(1) Jacobs & Thompson Limited,
89 Kenhar Drive,
Weston, Ontario.
(2) R.C.R. Limited,
2295 Metropole,
Longueil, P.Q.
(3) Stop Aluminum Company,
Perkay, Longueil, P.Q.
That Your Petitioner purchased weather strip sold by these
companies, and forwarded samples to my patent agent for his advice
as to preventing such sales of infringing weather strip. My patent
agent advised that each of the weather strip products offered for
sale in Canada by the above three companies fell within the scope
of my invention with the exception that a single elongate bar spring
was used, rather than a plurality of relatively shorter bar springs
as claimed in my patent, and that on this basis the manufacturers
of such competing weather strip would probably be able to defend
any infringement action which I might bring against them. I discussed
the problem with my patent agent on the telephone on October 31,
1979, and instructed him to attempt to obtain a reissue patent in order
to include the claim, as set out above, in order that my invention
as disclosed might be fully protected in Canada.
There are three claims in the application, of which claims 1 and 2 are identical
to those in the original patent. Claim 3 reads:
A self-adjusting weather strip assembly comprised of:
a main aluminum extrusion having a flat elongate base plate with
an integral channel therealong, said channel being rectangular
in cross section and having an elongate opening along one side
thereof;
a second elongate aluminum extrusion configured generally as
an I beam in cross section, one cross bar of the I being
approximately square in cross section and being adapted to be
slidably received in the channel of said main extrusion with
the stem of the I passing through said elongate opening
thereof, the other cross bar of said I having means to retain
as elongate weather strip facing member;
at least one curved bar spring within said channel between
the side thereof opposite said elongate opening and the square
bar of said I; and
weather stripping affixed along the face of the second cross bar.
At the Hearing Mr. Frayne stressed that the inventive concept is found on
page 1 in paragraph 3 of the application. That paragraph reads as follows:
The invention disclosed herein provides a weather strip which is
self-adjusting, with the novelty residing in a pair of aluminum
extrusions, one extrusion having a channel, with an elongate open-
ing along one side, the channel being adapted to receive a portion
of the second extrusion, which projects through the opening, with
spring means within the channel normally urging the second extrusion
toward one side thereof, as will become clear hereinafter. The
weather stripping disclosed herein is effective in sealing a door or
the like even though that door has a considerable warp. Further, the
spring action provided by the subject weather strip effectively creates
a maximum seal between the weather strip and the door or the like to
which it is applied such seal being greatly enhanced by the novel
spring means provided.
In the Final Action it is stated that the "invention disclosed in the Appli-
cant's patent nowhere specifically entertains the possibility, commercial
feasibility, or the operability of using a single bar spring."
Mr. Khallil, the inventor, prepared and filed the original application in
1977. After responding to an Examiner's action on that application he obtained
the services of a patent agent, Mr. Frayne, who revised that application
which resulted in C.P. 1,042,725.
An affidavit from Mr. Khallil was included in the response to the Final Action.
Items 2 to 7 of that affidavit read as follows:
2. THAT I prepared and filed the original patent applica-
tion which eventually matured into Canadian patent
No. 1,042,725, after having engaged the services of a
patent agent, namely, Robert D. Frayne, Ottawa;
3. THAT in designing my adjustable weather stripping,
which is the subject of my Canadian patent application, I
first designed the two cooperating extrusions, as dis-
closed in my patent application, and then experimented
with springs to be inserted in the extrusions, to urge
the male extrusion outwardly towards the lip of the
female extrusion;
4. THAT the first spring I used in my experiments was a
steel measuring tape, which I manually folded into the form
of a long, wavy configuration;
5. THAT I placed this long spring in the female extrusion
and pushed the male extrusion over the spring inside the
female extrusion which gave me the piston action I desired
to achieve on the weather strip;
6. THAT the result was not satisfactory to me as I discovered
that the long spring, after a period of use, would stretch, and
lose its spring strength;
7. THAT I continued experimenting in order to find a better
spring, and eventually decided on the short springs described
in my patent application, and it is these springs which I
used in the weather strip I manufacture commercially, and
which were specifically claimed in my original patent;
We were also provided with an affidavit from the agent, Mr. Frayne, in which
the following statements are made:
4. THAT I have acted on direct instructions from Mr. Khallil
in connection with the prosecution of both the subject reissue
application and its parent, since early February, 1978;
5. THAT on or about the first week of February, 1978, I was
visited in my office by Mr. Khallil who had himself prepared
and filed Canadian patent application Serial No. 274,043 (now
Canadian Patent No. 1,042,725);
6. THAT Mr. Khallil provided me with a copy of his Canadian
patent application and a copy of a "response" he had filed
to a first Official Action dated July 28, 1977;
7. THAT it was very apparent to me that his patent application
required extensive re-writing, in order to comply with the
requirements of the Patent Act and Rules thereunder, and in
consultation with Mr. Khallil, during the first week of
February, 1978, I proceeded to undertake this re-writing, the
resulting amended application having been filed in the Patent
Office on February 9, 1978, by me;
8. THAT Mr. Khallil at no time discussed with me the development
stages of his self-adjusting weather strip as covered by the
patent application filed in the Canadian Patent Office by him;
9. THAT only following grant of the said Canadian Patent, and
the appearance in the market place of weather stripping embodying
the essence of Mr. Khallil's novel weather strip did it become
known to me that Mr. Khallil had devised and experimented with
alternative forms of spring means for use in his weather strip;
From the above affidavits it is clear that Mr. Khallil did use one spring (a steel
measuring tape folded into the form of a long wavy configuration) during develop-
ment of his self adjusting weatherstrip. However, Mr. Khallil only made brief
mention of this embodiment in the original application and amplified the descript-
ion relating to his commercial embodiment which uses a number of short springs.
It was only the commercial embodiment that he discussed with Mr. Frayne, who
drafted the claims issued to patent, and which is covered in items 8 and 9 of
Mr. Frayne's affidavit.
The circumstances found in Curl Master Manufacturing Co. Ltd, vs Atlas Brush
Ltd. (1967) S.C.R. @514 are similar to those before us. The self adjust-
ing weather strip has achieved commercial success. Inventor Khallil wanted
to protect the invention made but he "had no prior experience in relation
to patents." When drafting the application he emphasized his commercial
embodiment and that was the form on which instructions to the patent agent
were directed. We believe that the invention as made by the inventor was
claimed in specific terminology because the information divulged to the agent,
retained after the inventor's response to the initial official action only
dealt with the commercially manufactured aspect of the invention as described
in item 7 of the Khallil affidavit.
The defect that is sought to be rectified is the claimed limitation of
..."a plurality of curved bar springs... adapted to bite an aluminum surface..."
We have previously reproduced paragraph 3 of page 1 on which the Applicant
relies for support of claim 3. At the Hearing Mr. Frayne demonstrated the
weather strip using one centrally located bar spring to show that it did
provide sufficient force along the entire length to function in the manner set
out in the above mentioned paragraph.
Section 50 of the Patent Act permits reissue when "any patent is deemed
defective by reason of insufficient description or specification or by
reason of the patentee's claiming more or less than he had a right to claim
as new, but at the same time it sppears that the error arose from inadvertence,
accident or mistake, without any fraudulent or deceptive intention,".
As stated in the petition the reason for reissue is that the patentee claimed
less than he had a right to claim. More specifically, the original patent
claims are maintained with an additional independent claim in which "at least
one curved bar spring" is used.
When the original application was filed by the inventor, he referred to
"a spring shape of spring steel on drawing (figure 5) which was "inserted
under (B) figure 4 as shown in figure (7)". We think that paragraph 3 on page 1
which we have previously reproduced discloses "spring means" which, when
considered with the original filed application, does provide support for "at
least one curved bar spring" in a claim. Therefore we do not agree with the
Final Action statement that "the invention disclosed in applicants patent
nowhere specifically entertains the possibility, commercial feasibility, or
the operability of using a single bar spring."
The original patent claimed less than that which the applicant had a right
to claim as new because of insufficient communication between the inventor
and agent. Information describing the use of a single wavy spring is found
in the Khallil affidavit. There was no information given to the agent with
respect to the development of the invention as described in items 8 and 9 of
the Frayne affidavit. We are satisfied that there was no fraudulent or
deceptive intent on the part of the applicant. We can understand the position
taken by the Examiner when issuing the Final Action but in view of the
subsequently filed affidavits we are persuaded otherwise.
In view of the affidavit evidence, we find it useful to refer, in part, to
circumstances found in Curl Master Manufacturing Co. Ltd, vs Atlas Brush Ltd.
(1967) S.C.R. @514. There a particular embodiment had been disclosed but
through inadvertence, accident, or mistake, and with no fraudulent intent,
all of the original invention had not been claimed.
We are satisfied that Applicant has established in this instance a right to
claim in broader terms the subject matter sought by reissue of his patent.
Therefore, we recommend that the Final Action refusing the petition for
reissue because "claim 3 is directed to a different subject matter from
that which the Applicant has disclosed and claimed" be withdrawn.
S.D. Kot M.G. Brown
Acting Chairman Member
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 withdraw the Final Action and
the application is returned to the Examiner.
J.H.A Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 28th. day of February, 1983
Agent for Applicant
Robert Frayne & Co.
309 Cooper St.
Ottawa, Ont.
K2P 0G5