Commissioner's Decision
OBVIOUSNESS Manually Settable Indicating Device
An indicating device to provide a system for checking occupants in a
hospital or rest home in case of an emergency may be patentable over
the applied reference. A secondary reference has the features of the
claimed arrangement.
Final Action: Modified
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Final Action on application 428,271 (Class 116-66) filed
May 16, 1983, assigned to The Regional Municipality of Waterloo, entitled
Duel Plate Manually Settable Bistable Indication Device. The inventors are
Frank Arnold Smith and James McGlynn. The Examiner in charge issued a Final
Action on July 19, 1984 refusing the allowance of claims 1 to 3 and 5 to 10
inclusive. A Hearing was held on November 5, 1986, at which Applicant was
represented by his Patent Agent, Mr. J.C. Singlehurst.
The subject matter of the application relates to an indicating device to
provide a system for checking or accounting of occupants in a hospital or
rest home in case of an emergency such as in a fire. Figures 1 and 2 are
illustrative of the application.
(see formula I, II)
Hinge 22 is attached to plates 12 and 14. Plate 12 is secured by screws 20
to the door or door frame associated with a room. Unfastening retaining
means ("Velcro"R) 24a and 24b hold the plates in a covering
relationship as shown in Figure 1 where plate 14 carries indicia 32 to
indicate the mobility of the room occupant. In case of emergency, such as
fire, a check that all residents have been evacuated from each room is made
by fire department personnel, who pull plate 14 away from plate 12 as shown
in Figure 2 to display check mark indicia 40.
In the Final Action the Examiner refused to allow claims 1 to 3 and 5 to 10
in view of the following citations:
United States Patents
2,269,902 Jan. 13, 1942 Clark
2,609,787 Sept. 9, 1952 Lawson
3,472,198 Oct. 14, 1969 Rinecker
Clark relates to a cabinet labeling device consisting of a movable display
member hinged to a support member attached to the cabinet lid. Figures 1
and 7 are shown below.
(see formula I)
Closure lids 3 are hinged at the bottom 6. Indicator member 8 and support
plate 9 are hinged together by pin 11. Plate 9 is attached to lid 3 so
that indicator member 8 will pivot about the hinge when the lid is opened
to remove an article from the cabinet.
Lawson shows a signal arrangement for a mail box. Figures 1 and 2 are
illustrative of that patent.
(see formula I)
Signalling tab 34 has a hole 36 for placing on suspension hook 38. When
cover 8 is opened signalling tag 34 automatically drops off to be held by
chain 28 thereby indicating that the cover has been opened.
Rinecker relates to a signalling device such as used in the military.
Figures 1, 1a and 2 are shown here.
(see formula II, IIA, III)
The signalling device 10 has first and second parts, the first part being
attached for example to clothing or equipment. The second part may be in
coplanar relationship with the first (figure 1) or be rotated about a mid
portion of the device so that the retaining means 15 on surface 13 contacts
the complementary retaining means 16 on surface 14. With the parts
engaged, the colored surfaces 13 and 14 are hidden, and the fluorescent and
luminescent portions 20 and 21 are visible.
The Final Action stated (in part):
...Applicant's claim 1 differs from the primary
reference in three aspects:
1. The Clark device has only one plate 17. The second
"plate" 1e formed (theoretically) by the full door
surface. This would seem a more efficient method
of signalling; the provision of the second plate
serving no additional utility from the point of
view of signalling.
On the other hand, one may consider the anchor
portion 9 of Clark's device as a flat plate
although no indicia appear thereon.
Hence this slight difference is not deemed
patentably significant.
2. The Clark device provides indicia on only the outer
face of the "second plate" (17). This is not
deemed significant as a signal is transmitted as
well by the absence of an indicia. Hence, when,
the placard 17 is motivated downwardly its second
state will readily be perceived by (a) a blank
space above the hinge and (b) by a blank space
below the hinge with the fasteners of plate 9
having been covered.
If desired as a design modification to match
existing architecture etc., indicia could be added
to the Clark device without requiring the use of
the inventive faculty.
Adding extra indicis, then, is not deemed a
patentable distinction.
3. The Clark device relates to filing cabinet
enclosures whereas applicant's device deals with
rooms in an emergency situation.
The use of the applicant's device during emergency
situations does not differ from its use under
normal situations (i.e. Maids indicating cleaned
status, patrons registering Don't Disturb etc.).
No special design features of the claimed device
may be restricted to emergency operation. Thus the
emergency aspect cannot lend patentability to the
claimed device.
The device is a signalling system and neither a
room nor a cabinet. One does not search rooms per
se nor cabinets per se to find a solution to a
signalling problem. So when reviewing signal
systems in class 116, if one finds an existing
device that solves all or nearly all of one's
problems, one does not discard it because it does
not relate specifically to a room but rather a
cabinet. For this reason the Primary Reference is
held to be pertinent re emergency checking signals
for rooms. ...
...
Lawson shows a rural mail box with positive
fastening means 20 on the touch-down door thereof.
The door mounts a straightened-type of (coat) hook
38 upon which is hung a placard 34. One end of
placard 34 has an aperture 36 which fits over the
hook 38. When the postman opens the box the
placard falls on the ground exposing the signal
"MAIL" which is visible when the box is reclosed.
To prevent the letter sized placard from being lost
the other end (32) is anchored with a long chain to
the underside of the mail box.
Rinecker shows a hook and loop type fastening
system which may be used in a bistable vertical
signalling system. In operation an identifiable
patch is moved from a lower to a higher position or
vice-versa to display a night/day visible signal.
These secondary references strengthen the
obviousness arguments based upon the primary
reference ...
In response to the Final Action the Applicant stated (in part):
...The Examiner, with respect, has piece-mealed
claim 1 and attempted to buttress the deficiencies
of the primary reference with secondary references
to Lawson and Rinecker. The Examiner, on the one
hand, states that the secondary references
"strengthen the obviousness arguments based upon
the primary reference". Yet subsequently, the
Examiner states that no mosaic has been made, the
primary reference containing all of the essential
features of applicant's claimed device. How the
Examiner professes to have the best of both worlds
is not appreciated. On the one hand, the
references are cited to strengthen an "obviousness"
argument, while on the other hand, they are not
required according to another statement because no
mosaic is being made. ...
...What the Examiner is doing, with respect, is
simply taking Clark and modifying its structure and
purpose because of the diversity of other signal
devices in the prior art to make obvious
applicant's device. What is not at all apparent is
what would cause a person to modify Clark if it is
not applicant's own disclosure. Clark is
structurally unsuited for the environment of
applicant's device unless modified. (The same can
be said about Lawson.) ...
...The applicant takes issue with the Examiner's
statement that no mosaicing has been made. The
language of the rejections clearly indicates that
mosaicing has been made since it is clear that
Clark is not an anticipation. The applicant
submits there is an inventive combination defined
in the rejected claims which is not taught by Clark
and the applicant's device is not structurally the
same or used in the same way as Clark or the other
references. The indicia on applicant's device is
for the purpose of indicating the contents or
occupants of a room and also the checked status and
in combination with the structural device provides
a unique device not taught by Clark. The
differences are not modifications taught by Clark
and if the secondary differences are not being
mosaiced then there is nothing except "judicial
(Examiner's) notice" to suggest modifications to
Clark to arrive at applicant's device. ...
The issue before the Board is whether or not claims 1 to 3 and 5 to 10 are
patentable over the cited art. Claim 1 reads:
A device for indicating that an adjoining room has
been checked in an emergency situation, said device
comprising:
a first plate and means by which said plate may be
secured proximate to access means to said room;
a second plate having inner and outer surfaces, the
outer surface of said second plate having
prominently visible predetermined first indicia
having reference to contents or objects normally
within said room;
at least one of said first plate outer surface and
second plate inner surface bearing predetermined
second indicia having reference to a checked
status;
means hingedly mounting said second plate to said
first plate so that said second plate is movable
from a first position parallel with and overlying
at least a portion of the first plate whereby said
second indicia is obscured from view to a second
position substantially planar with said first plate
so as to expose and make prominently visible said
second indicia while obscuring said first indicia;
and
manually releasable means for releasably retaining
said plates in said first operative position.
During the Hearing, Mr. Singlehurst expressed a concern by Applicant over a
portion of the Examiner's report. The Applicant felt there was an
implication by the Examiner that the solution proposed by the Applicant's
device might indicate there was less respect for the occupants than for the
building. The Examiner genuinely wished to assure the Applicant, through
Mr. Singlehurst, that any statement in the report was completely
impersonal, and that he had no intention of implying or suggesting that the
Applicant had no regard for the occupants, who might have need to use the
proposed signalling device.
From the Final Action we are informed that the Clark primary reference
"contains all of the essential features of the applicant's claimed
device". At the Hearing Mr. Singlehurst maintained that Clark does not
teach all the essential aspects of the Applicant's device. Looking at the
Clark citation we find a cabinet labelling device consisting of a support
plate member having an offset hinge to which a label carrying member is
pivotally attached. When the cabinet door, hinged at the bottom, is
opened, the label carrying member automatically pivots about the offset
hinge so the reverse side of the label carrying member becomes visible and
remains so when the door is returned to the closed position. A deliberate
action is needed to return this member to its original position.
The Lawson patent which was cited as a secondary reference relates to a
mail box signalling device. In addition to the customary signal flag
mounted on top of the box, Lawson has an auxiliary signalling arrangement
consisting of a tag hanging on a hook of the box cover. When the cover
which is hinged at the bottom is opened, the auxiliary tag falls off the
hook and is suspended by a chain from the bottom of the box. Lawson states
that the arrangement provides a "pick-up signal which is clearly visible
from a point distant from the position of the mailbox and which is
automatic in operation". As in Clark the door opens downwardly and the tag
is actuated automatically.
With respect to the Rinecker secondary reference the Final Action points
out that it shows a hook and loop fastening system on clothing or equipment
which can be used in a bistable vertical signalling system. It adds that
in operation an identifiable patch is moved from a lower to a higher
position to display a night/day visible signal.
On closer inspection of the Rinecker reference, we note that it shows an
indicating device having a first flat part for securement to an area, a
second flat part having inner and outer surfaces, the outer surface of the
second part having an indicating means, the first part outer surface and
the second part inner surface being colored, means enabling the second part
to move from a coplanar position that hides one kind of indicating means,
to a position overlying the first part thus hiding the colored surfaces and
exposing the indicating means, and manually releasable means retaining said
parts in overlying contact. However, these features in Rinecker were not
referred to in the Final Action, nor commented on by the Examining staff
during the Hearing.
For his part, Mr. Singlehurst referred to Rinecker as being related to an
article of clothing. In stressing the Applicant's particular up and down
action of the parts relative to each other, and in discussing that other
devices in the art have used such action, Mr. Singlehurst argues that
Applicant's device provides a kind of action not shown by the Clark
reference nor the others. Mr. Singlehurst notes his client's device in an
emergency situation is intended to be in the hinged down position.
Mr. Singlehurst drew attention to the following passage from Short Milling
Co. v. Gorge Weston Bread and Cakes and Continental Soya Co. 1941 Ex.C.R.
69 at 89:
In order that a thing shall be "obvious" it must be
something that would directly occur to some one who
Was searching f or something novel, a new manufac-
ture or whatever it might be, without the necessity
of his having to do any experimenting or research,
whether the search be in the laboratory or amongst
the literature.
It is the Examiner's position that Clark, as the primary reference,
contains all of the essential elements of the applicant's claimed device
and the secondary references are cited to show or strengthen the
obviousness refection based on Clark. Looking at the "elements" in Clark
we find an offset hinge base member mounted on a downwardly opening door,
and the indicator plate member leaning on the door. In the application
before us we have the base plate hingedly attached to a second plate with
means such as "Velcro"~ or a Wing nutlike arrangement to retain the two
plates in covering relationship. There is a difference in the type of
hinge and the retaining means used in Clark as compared to that of the
application. Consequently we do not agree that all the essential elements
are found in the primary reference. Moreover, we are unable to find
further direction from the secondary references as to how one would modify
Clark to achieve the Applicant's arrangement. Therefore we find that
claims 1 to 3 and 5 to 10 cannot be considered to be obvious in view of
Clark.
We agree with the Examiner that there are numerous signalling devices. On
the basis of the arguments presented concerning the cited art, however, we
are unable to find that it would directly occur to someone to modify
Clark's device in order to obtain Applicant's device. Further, we think
that Applicant's device provides features not obtainable from the
information provided by Clark.
It may be that Applicant's device provides a simple mode of operation, and
as mentioned at the Bearing that there may be other art that has not been
found, however, in summary we are unable to sustain the refection of claims
1 to 3, and 5 to 10 in view of the rejection made with respect to the Clark
device.
We recommend that the rejection of claims 1 to 3 and 5 to 10 be withdrawn
and that the application be returned to normal prosecution.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I concur with the findings and the recommendation of the Patent Appeal
Board. Accordingly, I Withdraw the refusal of claims 1 to 3 and 5 to 10,
and return the application to the Examiner for continued prosecution.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull Quebec
this 10th day of June 1987
Meredith & Finlayson
77 Metcalfe Street
Ottawa, Ontario
K1P 5L6