COMMISSIONER'S DECISION
Sections 2, 27(3), Cited art:
Formulae developed by the inventor were found acceptable as a way of describing
the dimensions of the briquet she devised. The claims did not define the features
obtained by using the formulae in a manner to overcome the cited art. Rejection
of the application withdrawn, and of the claims maintained.
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Final Action on application 440,304 (Class 44-38). The
application was filed November 2, 1983, by the Clorox Company, and is
entitled CONFIGURED FUEL BRIQUET AND METHOD. The inventor is Susan
M. Peters. The Examiner in charge issued a Final Action on August 20,
1986, refusing to allow the claims and the application.
A Hearing was held on April 12, 1989 at which the Patent agent, Ms.
L.S. Cassan, represented the Applicant.
The invention relates to the form of a charcoal briquet and a method of
forming it in a particular configuration to obtain a burn phase after an
ignition phase has provided visual ash over a predetermined percentage of
the area of a briquet. Figures 4 to 7 reproduced below illustrate the
configuration of a half pillow briquet.
<IMG>
For the half pillow briquet to obtain an ignition phase having 70% or more
visual ash in 20 minutes, and a burn phase having a half life of 60 to 100
minutes, the briquet is formed taking the volume, density and area into
account so that the burn phase consumes half the weight from initial
ignition.
In the Final Action the Examiner rejected claims 1 to 13 and the
application for lack of invention in view of the following patents:
United States
1,258,849 March 12, 1918 Zwoyer
United Kingdom
392,015 May 11, 1933
The Zwoyer patent relates to briquets made of compressed pulverulent
material and formed to provide strength to prevent breakage in transport
and provide maximum combustion effect, as shown in figures 3 to 5
reproduced below:
<IMGS>
The form is that of a frustum of two pyramids having their rectangular
bases united, the frustum ends being rounded. The sides 6 and 7 are
angled at 90.degree. to one another to obtain the greatest strength, a lesser
angle providing a fragile briquet, a greater angle leading to splitting of
the briquet on leaving the mould.
The briquet of the British patent has two central curved side surfaces,
designed to resist breakage, for example each less than one half of a
cylinder as shown in figures I to IV shown below:
<IMG>
Each end is formed of two surfaces, the line of intersection of which
extends transversely across the end of the briquet.
In her Final Action the Examiner rejected claims 1 to 13 and the
application for lack of patentable subject-matter in view of Sections 2 and
28(3) of the Patent Act. In her view, the shape of the Applicant's briquet
is not new and the method of constructing it is obtained by the process of
calculation. She believes that a person skilled in the art could choose
the material and dimensions, and by solving empirically derived formulae
could produce the Applicant's "...briquet characteristics such as surface
area, volume and density in relation to ignition time and half life". She
said in part, in her Final Action, as follows:
The only novelty allegeable in the claims is based in a mental
process by which criteria and dimensions of the briquets are
determined. In a similar case, Lips' application 1959 R.P.C.
pages 36 and 37, the judge said:
"It is not of course a circumstance fatal to the grant of
a patent that a manufactured article cannot be physically
distinguished from previously made similar articles.
Indeed it may well be that an article made by say a less
costly process of manufacture may be so devised as to
simulate as closely as possible a known similar article
made by a more costly process. It is common for a
specification to include such a claim as "A...made by the
process according to claims...". But in such a case the
process must, to be allowable, particularise "physical"
steps which constitute a manner of manufacture, and there
is thus a test for determining whether or not the
"article" claim is infringed. That test is-was an
allegedly infringing article (physically indistinguish-
able) made by the process of manufacture referred to in
the hypothetical prior claim? No such test is applicable
in the present case. Once it is decided that the
propeller forming the subject of the Applicant's claim 1
is not distinguished (only dimensional distinctions are
here involved) from other propellers, it seems that the
only novelty allegeable in the claim is the mental process
by which the propeller blade thicknesses at different
radial positions are determined. This clearly cannot be
said to be manufacture within the meaning of the Act. In
my opinion, having regard to my finding that the propeller
claimed in claim 1 is distinguished only by the process of
calculation by which its profile is determined, the claim
cannot be regarded as for an invention within the meaning
of the Act".
Moreover, applicant's attention is drawn to a more recent
Commissioner's decision published in C.P.O.R. October 5, 1976
where the Commissioner stated that:
"The production of equations is a well known scientific step.
...It is well known to determine parameters of any device by
experimentation with models by measuring the variables in
question, and then ascertaining the desired physical relationship
from such data. ...The method of determining parameters for a
spray nozzle is simply the well known scientific method
comprising experimentation with actual or model units,
measurements of interesting variables, and finally determination
of sought-after relationships from resulting data. ...While a
new article may in the proper circumstances be defined by the
process of making it, that process must particularize novel
physical steps rather than "mental steps".
In Schlumberger Canada Ltd. v. Commissioner of Patents 56 C.P.R.
(2d) 204, the applicant applied for a patent for a process
wherein measurements obtained in a borehole of an oil-drilling
operation were computed according to a specific mathematical
formula. The formula provided charts, graphs and figures of
improved quality to assist in locating hydrocarbon deposits. The
court said:
"In order to determine whether the application discloses a
patentable invention, it is first necessary to determine
what, according to the application, has been discovered.
What is new here is the discovery of the various
calculations to be made and of the mathematical formulae
to be used in making those calculations. If those
calculations were not to be effected by computers but by
men, the subject-matter of the application would clearly
be mathematical formulae and a series of purely mental
operations; as such, in my view, it would not be
patentable. A mathematical formula must be assimilated to
a "mere scientific principle or abstract theorem" for
which s-s.28(3) of the Act prescribes that "no patent
shall issue".
Applicant argued on page 4 of his letter dated July 11, 1985 (in
part):
Under Canadian law, mental steps or processes are only
objectionable if the mental steps themselves are claimed.
However, if mental steps are followed to arrive at a
particularly defined composition or other article of
manufacture, there is no objection to be made: the mental
steps are not then claimed but only the particular
commercial embodiment resulting from them.
The examiner disagrees with this view of the Patent Law. Mental
steps must not just be followed by an article of manufacture but
rather must be integrated into an industrial application to be
patentable subject-matter.
Thus in the Schlumberger case the discovery of hydrocarbon
deposits as a result of the new formulae and calculations did not
make it a patentable invention. Similarly in Lips' application
the calculations of the ship's screw propeller followed by a
propeller of new dimensions is not an invention within the
meaning of the Act.
In the spray nozzle there was a lack of the use of means to
produce a result or no novel physical steps to integrate the
process with the nozzle.
The Applicant did not agree with the Examiner and responded in part, as
follows:
BRIQUET CLAIMS (Claims 1 to 5, 10 to 13):
(1) Non-Statutory Subject Matter (Sections 2, 28(3)
...The discovery of the applicant is not a formula by which the
geometry of a briquet may be determined as alleged by the
Examiner; rather, it (through the inventor -- its former
employee) has developed, through experimentation, a new
particularly defined charcoal briquet providing advantages over
the prior art. That is, the "what" in this case which has been
discovered by the inventor is the structurally (i.e., physically)
defined briquet claimed by the applicant -- not a mathematical
relationship between the various parameters of the briquet. As
such, the claims are not for a mere scientific principle or
abstract theorem falling under Section 28(3) of the Patent Act
and clearly fall within the scope of Section 2 of the Act which
includes items of manufacture.
The Examiner has referred... to the English decision of Lips'
Application (1959) R.P.C. 35 and the Commissioner's Decision
reported at C.P.O.R. 5 October, 1976... both... pertain to the
issue of novelty and provide no holdings in respect of the issue
of statutory subject matter....
Likewise, the Commissioner's Decision reported at C.P.O.R. 5
October, 1976 upheld an Examiner's refusal of a claim for a spray
nozzle produced according to a specific set of equations not
because it was found to lack proper subject matter but because it
was not novel over the prior art....
A case... similar to that under consideration here is the
Commissioner's Decision reported at C.P.O.R. 13 June, 1978. The
claim in that case was for a nozzle device structurally defined
in terms of two equations. The Commissioner held that the claim
pertained to proper subject matter falling within the scope of
Section 2 of the Patent Act stating the following at page xxii of
the report:
"What we are really concerned with is whether or not the
novelty lies solely in the performance of certain
judgmental steps.... In this instance, the simplest way
to describe the contours is by formulae, and we can see no
valid reason to object.... the formula is but another way
of describing the dimensions of a structure, and its
physical form. New machines and apparatuses have always
been patentable if they involve inventive ingenuity, are
useful and are clearly defined in the claim."
Referring to claim 2 of this application, it is for a charcoal
briquet having certain physical parameters as defined in the
claim. Like the nozzle device... at C.P.O.R, 13 June, 1978, the
briquet claimed is structurally defined, in part, by an
equation.... this equation is simply a useful means of describing
the structure of the briquet -- just as the equations considered
in the said Commissioner's Decision were used to describe the
structure of the nozzle device. The same is true of claims 3-5
and 11-12 each of which are defined in terms of an equation
relating to physical parameters or, more narrowly, specific
dimensions and shape of the briquet.... the Commissioner should
reverse the Examiner's objection to these claims on the ground of
non-statutory subject matter. (The Commissioner may prefer that
these claims be amended so as to define the various symbols
recited in the claims (e.g., " V", "d" and "A" appearing in claim
1). The applicant is agreeable to submitting such amendments if
the Commissioner wishes....
... claims 1 and 13 of this application... are directed to
statutory subject matter notwithstanding that they are broader in
scope than the remaining product claims. Neither of these claims
pertains solely to a judgmental step.... the briquet designed by
these claims must provide an ignition phase "defined as a
selected percent ash on the outer surface of the briquet formed
in a preselected time". This is a physical characteristic and
such brings the claim into a statutory subject matter class,
viz., items of manufacture.
(2) Novelty
...the applicant has indeed provided a new briquet selected from
the myriad of possible configurations.... The selected (claimed)
briquets provide superior burning characteristics over those
already known classes of briquets and, therefore, are novel over
the prior art.... From the (Susan M. Peters) affidavit, it will
be seen that the inventor, a person who is well skilled in the
relevant art, is not herself aware of any known briquets which
meet the criteria of the briquets claimed in this
application.... In the absence of evidence to the contrary, it
should be concluded that the subject matter which the applicant
claims is novel....
...although U.K. Patent No. 392,015 shows a roughly pillow-shaped
briquet, the briquets disclosed in that patent neither meet the
criteria nor possess the qualities required by the present
invention. For example, the volume-to-surface area ratio of
0.473 centimeters which is preferred in the present application
is not met by the briquets shown in the British patent. The
objectives of each of the cited patents are very different from
those of the subject invention and the qualities associated with
the results obtained by the briquets of the cited patents are
unlike those of the subject invention. The geometric
relationships of the briquets disclosed in the cited U.S. patent
are not at all comparable to the briquets of the subject
application. Nor are those disclosed in the cited U.K. patent.
The U.S. patent does not refer to any limiting dimensions except
that it is contended in the patent that the angle between side
6-6 and side 7-7 as shown in Figure 4 must be 90.degree.. Likewise, the
briquets shown in the cited British patent are long
elipsoidal-type heavy briquets weighing from about 250 to 1,500
grams. The briquets of neither the cited U.S. patent nor British
patent can hope to meet the ignition and burn time requirements
satisfied by the briquets claimed in this application. Grossly
similar briquet shapes will not provide the performance benefits
by the claimed briquets.
(3) Unobviousness
...the applicant traverses the Examiner's statements. With
respect to the first, it is accurate only to the extent that the
properties and characteristics of the object so changed are not
altered in an unobvious manner as a result of changing the size
or proportion of the object... of the myriad of possible
configurations, the applicant has selected a defined
configuration which possesses qualities peculiar to the defined
group which were not present in prior briquets. Charcoal
briquets which do not meet the specific limitations of the claims
of this application provide poorer burning characteristics.
With reference to the second ,..it would not be expected of one
ordinarily skilled in the art to arrive at the result which has
been concluded by the inventor.... it is not obvious to one
skilled in the art that ignition time and half-life time depend,
not only on the density of the material used, but also on the
surface area and volume of the briquet and the specifics of such
dependence are even less obvious... the work done by the inventor
required a degree of ingenuity which cannot be expected to be
found in the ordinary work of the ordinary skilled technician.
...
The test which must be decided when addressing the issue of
unobviousness is the well known "Cripps test"... widely approved
by the Canadian courts. (For example, this test was recently
approved by the Federal Court of Appeal in the case Windsurfing
International Inc. v. Bic Sports Inc. (1985) 8 C.P.R. (3d) 241.)
That is: Would an unimaginative skilled technician at the date
of the invention in light of his general knowledge and the
literature and information on the subject available to him on
that date have been lead directly and without difficulty to the
subject matter claimed.... As a result of two recent Federal
Court of Appeal decisions (namely, Windsurfing International
Inc. v. Bic Sports Inc. supra. and Beloit v. Valmet (1986)
8 C.P.R. (3d) 289), it is clear that the present law in Canada
does not require any more than a scintilla of inventiveness... in
the case of Beloit v. Valmet, the Federal Court of Appeal held
that the trial judge applied too high a test on the issue of
unobviousness and emphasized that the "unimaginative skilled
technician" to be considered is not an inventor but rather "a
technician skilled in the art but having no scintilla of
inventiveness or imagination".... It is improper to say that a
result will naturally follow from many experiments when the
planning and carrying through of those experiments would not
themselves be ordinarily conducted by the notionally
unimaginative skilled technician....
...it cannot properly be concluded that the subject matter
claimed by the applicant is "very plain" from the cited art.
(See, for example, the recent Federal Court decision in Sandvik
AB v. Windsor Machine Co. Ltd. et al. (1986) 8 C.P.R. (3d 433 in
which it was held that something which is obvious is "very
plain").
METHOD CLAIMS (Claims 6 to 9):
(1) Non-Statutory Subject Matter (Sections 2, 28(3)
...it is agreed that mental steps per se cannot be claimed, as
was attempted in the Schlumberger case referred to by the
Examiner, but instead must be directed to some physical
result.... the steps of the process claimed in this application
do result in a physical end-product (viz., a charcoal briquet).
...while the steps of this method involve the making of some
derivations... these steps preface the physical step of producing
a briquet having the selected briquet shape and dimensions such
that, as a whole, the method claimed is a physical process. It
is conceded by the applicant that claim 6 does not, as it is now
written, explicitly include a production step but the applicant
is agreeable to entering the same if the Commissioner so
requires....
...
...In Shell Oil Co. v. Commissioner of Patents 67 C.P.R. (2d) 1,
the term "art" was stated by the Supreme Court to mean learning
or knowledge as used in the expression "state" of the art" that
is, something which adds to the cumulative wisdom in a field
whereby a desired result is effected having commercial value. In
the case of the subject application, the precisely defined method
of producing an efficient and novel briquet is of great
commercial value and certainly adds to the cumulative wisdom on
the subject.
(2) Novelty
...the applicant has... provided a new method of manufacture in
that the method claimed produces a new article of manufacture,
viz. a new briquet. Neither of the two references... discloses a
method of constructing a fuel briquet according to the method
claimed in this application. Nor do (they) disclose a briquet
which would be the result of the method claimed in this
application....
(3) Unobviousness
...neither... patent cited... teaches or even suggests the method
claimed in this application for constructing a fuel briquet....
the above comments made on the issue of unobviousness with
respect to the briquet claims are equally applicable here.
The issue before the Board is whether or not the application and claims are
patentable under Sections 2 and 27(3) of the Patent Act, and whether or not
the application and claims 1 to 13 lack inventiveness in view of the cited
art. Claim 1 reads:
A charcoal briquet having a geometry configured to produce a
selected burn performance including a first ignition phase and a
second, burn phase, said briquet being configured to provide an
ignition phase defined as a selected percent of visual ash on the
outer surface of the briquet formed in a preselected time.
The Board uses the section numbering of the Patent Act in force on December
12, 1988, whereas the Final Action and the Applicant's response use that
in effect before that date.
At the Hearing, Ms. Cassan stressed the invention lies in the recognition
that the ignition and burn phases of a briquet can be controlled by
predetermined geometrical parameters that provide a percentage of visual
ash. She added that the above parameters produce the percentage visual ash
regardless of the type of material used in the briquet, and pointed out
these parameters produce unexpected results.
Referring to the cited art, Ms. Cassan noted that neither of the patents
deal with burn characteristics. She highlighted the United States patent
as it relates to strength and durability of the molded shape and to the
contour of the shape for providing easier removal from a mold. She
understood the invention of the briquet of the United Kingdom patent is in
providing it with strength for transportation. In view of the cited
references, she argued there was no basis why the article and method were
not new.
Ms. Cassan noted that the inventor, Susan M. Peters, states in her
affidavit she was not aware of any configuration in the marketplace
conforming to the geometric design criteria that provides the preselected
percent of visual ash as does her briquet. The inventor points to the
parameters of surface area, volume and density, she believes achieve the
ignition phase of the invention. The inventor says it is not obvious to
use geometric relationships to obtain the briquets of this invention.
Further, the inventor points out the formulae are not known or used by
persons skilled in the art. Additionally, the inventor says that the two
equations, she developed, namely,
% Visual ash (20 min.) = -207 (V/A x d) + 163
and
T.5(min.) = 3.3 (V/d) -9.8
represent respectively, the desired visual ash within 20 minutes formula,
and the half-life formula, and that together they provide the advantageous
ignition and burn characteristics. The inventor says these characteristics
will be attained regardless of the kind of fuel material used to form the
briquet. She emphasizes in her example using a flat sheet of paper, then
crumpling it or rolling it, that the relationship of density, volume and
surface area must be considered together, as she notes that varying the
thickness does not by itself provide a desired ignition phase.
Ms. Cassan discussed the relevance of the Commissioner's Decisions
published in the Patent Office Record, in re Polnauer on October 5, 1976,
and in re Glenn on June 13, 1978. In re Polnauer, she believes the
Decision to refuse was taken on the basis there was no new structure
obtained by using the disclosed formulae, and that there was no alteration
of the nozzle under review. In re Glenn, she argues the Decision to allow
the application was due to the nozzle being a different item of manufacture
from what previously existed. She compares her client's invention to that
in re Glenn, namely the inventor's briquet structure is different from what
was previously made, in that no prior briquet has been made that provides
the selected percent of visual ash and the selected burn performance that
the Applicant's briquet does.
While it may be that a person skilled in the art could derive formulae and
choose the dimensions to produce the particular briquet characteristics
that the inventor discloses, the Board cannot overlook the inventor's
affidavit explaining her work in developing formulae that were not
previously known, for the particular purpose of obtaining a form of briquet
with special ignition and burn phases that were not previously considered.
Further, the inventor explains that the features she includes in her
briquets are not present in the cited art briquets. In determining whether
the inventor's subject matter is acceptable under Section 2 of the Patent
Act, the following passage from the Commissioner's Decision in re Glenn
provides guidance:
What we are really concerned with is whether or not the novelty
lies solely in the performance of certain judgmental steps.
The ambits of the nozzle are defined by formulae which in fact
describe the structure of the nozzles. All nozzles coming
within the limits of the formulae perform in the manner
desired. Anyone wishing to practice this invention need not
exercise a judgmental step to determine what type of nozzle to
construct. He merely makes a nozzle coming within the metes of
the claim. Whether the shape of the nozzle is described by a
formula or in words is immaterial. In both cases what is
claimed is a specific structure. In this instance the simplest
way to describe the contours is by formulae and we can see no
valid reason to object. We are satisfied an the facts before
us that there is no judgmental step involved in exercising the
invention of claim 1. In the present case the formula is but
another way of describing the dimensions of a structure, and
its physical form. New machines and apparatuses have always
been patentable if they involve inventive ingenuity are
useful, and are clearly defined in that claim.
The Board considers the application is directed to a useful field of
endeavor, namely the method of forming a briquet, and to a useful article
by presenting formulae which in the present case is another way of
presenting subject matter acceptable under Section 2 of the Patent Act.
Having so determined, the refusal under Section 27(3) of the Patent Act is
without force, and the Board considers this refusal should he withdrawn.
Discussion of the sufficiency of the claims ensued at the Hearing. The
examining staff viewed claim 1 for example to be deficient for failing to
present any clear definition over the pillow shape briquets in the cited
art. It was felt claim 1 did not define the invention distinctly but only
in terms of the desired results. In her view, Ms. Cassan felt there were
no judgmental steps claimed per se, and that the steps recited produce a
specific briquet.
In reviewing the allowability of the claims in light of the cited art, it
is useful to consider the substance of the claims. In assessing clam 1
certain comments from in re Glenn and from Ms. Peters' affidavit bear
scrutiny. In re Glenn it is said that a formula is but another way of
stating structural dimensions, and that machines and apparatuses
demonstrating inventive ingenuity and usefulness may be patentable if
clearly defined. Ms. Peters says she developed the two equations to
obtain a briquet having predetermined geometric relationships that enable
an ignition phase having a selected percent of visual ash within a selected
time followed by a burn phase with a selected half life. Although claim 1
calls for a briquet having a geometry to produce ignition and burn phases
due to the briquet's configuration, there is no definition of any means
that provide the geometric relationships.
Claim 2 depends on claim 1 and only one formula is defined, and as noted at
the Hearing the expression, (V.d/A + 163) is incorrect. Claim 3 is
dependent on claim 2 and although setting out a formula pertaining to the
half-life, it is not clear how it relates to any of the terms in claims 1
and 2. It is noted the terms in the formulae in claims 2 and 3 have not
been identified. Claim 4 depends on claim 2 and presents a specific ratio
but does not define the units. Claim 5 depends on claim 4, and although
the information in claim 5 is clear, clarification of claim 4 is needed
before claim 5 can be properly assessed. No clear definition of the
invention disclosed is found by the Board in any of claims 1 to 5.
At the Hearing Ms. Cassan presented a proposal for wording of claim 6,
noting it was for discussion purposes only and not to be viewed as an
amendment. The Board considers no clearly acceptable passages were
identified during the discussion, and that no further comments are in
order until such time as that claim may become part of the prosecution.
In claim 6 on record, the steps of deriving an equation and choosing
briquet dimensions do not clearly define the conditions set out by the
formulae included in the disclosure and discussed at the Hearing. The
method of claim 7 is similarly deficient with respect to the formulae.
In method claim 8 there is a definition of part of the formula expressed in
claim 2. More than this part is needed however to complete the definition
of the briquet, and claim 8 is deficient. Claim 9 depends on claim 8 and
expresses a different result for the product of volume and
density from that given in claim 5. However, this product of volume and
density does not advance the definition of the invention in that it
represents only a part of the equation relating to visual ash and does not
complete the formulae disclosed. Claims 10, 11 and 12 relate to height and
side dimensions, and fail to set out all the features of the invention.
Claim 13 depends on claim 1, and in setting out only a certain percentage
of visual ash, it fails to define clearly all the features. Claims 6 to 13
of record, in the Board's opinion are deficient with respect to a clear
definition of the formulae.
The briquets shown by the cited art all obtain an ignition phase and a burn
phase as a result of their geometric configuration. The briquets obtained
by the Applicant's claims define no characteristics that are discernible
over the cited references. It may be the cited art briquets do not have
the same characteristics that are disclosed by the Applicant, nonetheless
they provide ignition and burn phases according to their geometry. The
particular features of volume, area, and density described by the Applicant
are not reflected in the claims. Accordingly, the Board finds claims 1 to
13 do not define clearly over the cited art.
The Board recommends withdrawal of the refusal of the application for
failing to set forth patentable subject matter under Section 2 and Section
27(3) of the Patent Act. The Board recommends however that the refusal of
the claims be affirmed for failing to define any inventive features in view
of the cited art.
M.G. Brown
Acting Chairman
Patent Appeal Board
I have reviewed the prosecution of this application. I concur with the
findings and the recommendations of the Patent Appeal Board. Accordingly,
I withdraw the refusal of the application, and I refuse to grant a patent
containing claims 1 to 13. The Applicant has six months within which to
appeal my decision to the Federal Court of Canada, under Section 42 of the
Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
dated at Hull, Quebec
this 17 day of May 1989.
Barrigar & Oyen
Suite 700, The National Bldg.
130 Slater Street
Ottawa, Ontario
K1P 6E2