Commissioner's Decision
INSUFFICIENCY, LACKING INVENTION Paper Web Control
Permission to enter a flow chart submitted at the Hearing does overcome
the objection based on inexplicitness. Terminology in claims 1 and 5 does
not concisely establish the disclosed features.
Final Action: Rejection modified.
Patent application 378,789 was filed on June 1, 1981 for an invention entitled
Paper Web Control. The inventors are H.I. Karlsson, I.J. Lundqvist, B.Y.
Hardin and T.L. Ostman. It is assigned to SVENSRA TRAFORSRNINGS INSTITUTET.
The Examiner in charge of the application took a Final Action on April 17, 1984
refusing to allow it to proceed to patent. A Bearing was held on December 10,
1986 at which the applicant was represented by H. O'Gorman, R. Elliot and K.
Sim.
The subject matter of the application relates to manufacture of paper in a
paper machine where a method of controlling the web profile is described.
In the Final Action the Examiner refused the application for being directed to
an arrangement lacking invention and because the disclosure and claims were
indefinite and inexplicit. That action stated (in part):
In an attempt to find something inventive, the following
aspects of the alleged invention have been considered:
Apparatus: No apparatus has been claimed. The disclosed
apparatus is said to be old and knows. In applicant's
arguments any possible novelty in the apparatus has been
effectively disclaimed. Thus no patentable inventiveness
can be seen to reside in the apparatus.
Method of operating an existing disclaimed apparatus: The
disclaimed apparatus is operated in accordance with some
allegedly new calculations. The calculations may be
performed either "manually" i.e. mentally or "automatically"
i.e. by some known computer. It is noted that all of the
claimed method steps (measuring..., indicating...,
comparing..., calculating..., adding..., utilizing...) are
thus performed either mentally or by some unspecified
existing apparatus. The method essentially compares
existing results with desired results and adjusts the
machine in accordance with some calculations. The granting
of a patent to such a method would effectively preclude all
the owners and operators of the existing machines from
operating the machines in any such best possible manner
which they see fit, namely, by comparing desired and actual
performances and adjusting accordingly. The method is
therefore held to be unpatentable as being an obvious method
of operating an apparatus in a manner in which it lends
itself to be operated.
Calculation: Calculations performed in conjunction with new
apparatus could be patentable. However such is not the case
here. Calculations per se are not patentable. A method of
operating a machine which would be obvious except for the
calculations cannot be seen to acquire patentable merit by
the inclusion of calculations.
Inexplicitness in applicant's calculations: In an effort to
find some particular possible merit in applicant's
particular specific calculations, one is forced to conclude
that it is not even possible to determine what exactly these
calculations consist of. The claimed "calculating" (see
claim 1) involves mathematical quantities such as
"setting positions"
"responses from setting positions"
"desired cross profile"
"measured cross profile"
"error cross profile"
"calculated degree of agreement"
"cross profile in question"
"mutual relative change is position"
"profile of weights" (see page 6 etc.)
"weights to be attached to a property" (page 6)
All of the above mathematical quantities are found,
unfortunately, to be too poorly defined to enable specific
mathematical calculations or operations to be performed upon
these quantities. In this respect both the disclosure and
the claims are held to be indefinite and inexplicit, and
failing to define unambiguously neither how the disclosed
calculations are to be performed, nor the extent or nature
of the claims coverage involving those calculations.
LP and HP Filtrations: Claim 5 and the disclosure are
inexplicit and incomprehensible regarding how a "profile" is
divided into high-pass and low-pass "filtrations".
In view of the foregoing, it is held that the application
contains nothing of an inventive nature. Therefore this
application is refused.
In response to the Final Action the applicant stated (in part):
Applicant's invention ie a new technique for utilizing
responses (as defined in the specification and claims) for
controlling the cross profile of a paper web. Thus, the
invention is not directed to mathematical calculations per
se, but rather to a method of controlling the cross profile
of the paper web by utilizing measured values or responses
and calculations based on those responses. This method is
in no sense obvious, and the invention solves a problem
which could not be solved at all in the prior art. It is
respectfully submitted that the disclosure in the present
application is sufficient for a person of ordinary skill in
the art to understand and perform the invention.
Performance of the invention does indeed include detailed
mathematical calculations. However such calculations are
well known in the art and can be handled by conventional
computers and data processors.
Applicant notes that in corresponding applications in other
countries where similar standards of disclosure and
patentability apply, no objections of the same nature as the
objections raised is the present application have been
encountered. Indeed the European Patent Office has allowed
the corresponding European application with claims similar
to those on file in the subject application.
With reference to the expressions "LP and HP filtrations" as
referred to in page 2 of the Final Action, it should be
noted that a web profile can be regarded as a type of
signal, and general signal theory is applicable, as will be
appreciated by persons skilled in art. LP filtration gives
prominence to the blunted portions of the profile, while HP
filtration gives prominence to the sharp portions.
In summary, applicant believes that the method set forth in
the rejected claims does indeed represent a patentable
invention, and further that the disclosure is fully
sufficient to enable persons of ordinary skill in the art to
practice the invention. Accordingly it is believed that the
Final Action should be withdrawn and the application
returned to normal prosecution.
The issue before the Board is whether or not the application does describe sad
claim an inventive arrangement. Claim 1 reads:
l, A method of controlling a cross profile of properties
of a paper web across a feed direction thereof in a paper
machine, wherein said cross profile can be affected by
several setting positions across the web in such a manner
that a definite change in a setting position brings about a
corresponding change in said cross profile, comprising the
steps of:
measuring a cross profile in question and comparing
with a desired cross profile;
indicating a deviation between the cross profile in
question and the desired cross profile in the form of a
first error cross profile;
comparing each of the responses from the setting
positions with the first error cross profile whereby a
calculated degree of agreement indicates the necessary
mutual relative change in each setting position;
calculating the necessary change in each setting
position by the assistance of the responses from the setting
positions, the desired cross profile and the measured cross
profile in question and determining thereafter a
corresponding change;
adding the corresponding thus determined change to the
measured cross profile in question and comparing with the
desired cross profile, and
utilizing the calculated necessary change in each
setting position for adjustment in the setting positions.
At the Hearing Mr. O'Gorman indicated that the disclosure contains numerous
terms which are peculiar to the paper making art and emphasized that a man
skilled in that art would understand the invention. Accordingly he feels that
the disclosure is technically sufficient to meet the requirements of the Act
even though it is far from being exhaustive.
On the other hand the Examiner maintains that the granting of a patent to the
claimed method steps would effectively preclude all the owners and operators of
the existing machines from operating the machines in any such best possible
manner which they see fit, namely, by comparing desired and actual performance
and adjusting accordingly.
A signed declaration by John Wieslander, a process control engineer was
submitted by the applicant on September 18, 1986. That declaration states that
to someone who is experienced in paper making equipment and the technology
involved would, solely on the basis of the specification and his own background
knowledge, be able to give effect to the invention.
To provide more information with respect to the applicant's arrangement Mr.
O'Gorman presented a flow chart with descriptive comments explaining the steps
according to the claimed invention. This flow chart sets out response
parameters that interact with the setting means to obtain individual
adjustments in the setting positions to attain the desired web cross profile.
Mr. O'Gorman pointed out that the flow chart does not add any new material to
the disclosure and indicated that it could be added to the specification if it
would help to overcome the objection made in the Final Action. The Examiner
stated that the flow chart and the descriptive comments therein would assist in
the understanding of the invention. We do not find any objection to bar entry
of the flow chart into the specification.
As stated in the Wieslander affidavit, the expressions and technical
nomenclature used in the specification are well known in the art enabling a
person of ordinary skill in this art to carry out the invention. In our view,
the application does describe a combination formed by component elements to
permit changes of flow by means of individual setting positions of the nozzle
orifice adjusting members.
The claims were rejected for being inexplicit and indefinite. At the Hearing
there was considerable discussion with respect to claims 1 and 5. It was
agreed that some of the terminology found in these claims should be replaced or
deleted to clearly and concisely establish the disclosed features and
parameters of the combination. We believe that the additional detail to be
added by the flow chart entry into the disclosure will provide the basis for
distinct and explicit terminology is the claims.
In summary, we recommend withdrawal of Final Action with respect to refusal of
the application and we recommend that the applicant be given permission to
enter the flow chart submitted at the Hearing to form part of the disclosure.
M.G. Brown S.D. Kot
A/Chairman Member
Patent Appeal Board
I concur with the findings and recommendations of the Patent Appeal Board.
Accordingly, I remand the application for prosecution consistent with the
recommendation.
J.H A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 10th day of June 1987
Fetherstonhaugh & Co.
Box 2999, Station D
Ottawa, Ontario
K1P 5Y6