IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 392,317 having been rejected under Rule 47(2) of the
Patent Regulations, the Applicant asked that the Final Action of the
Examiner be reviewed. The rejection has consequently been considered by
the Patent Appeal Board and by the Commissioner of Patents. The findings
of the Board and the ruling of the Commissioner are as follows:
Agent for Applicant
Swabey, Mitchell, Houle,
Marcoux 8 Sher
1001, bout. de Maisonneuve ouest
Montr‚al, Qu‚bec
H3A 3C8
OBVIOUSNESS: Packaging container
Applicants container made from micro-undulated conogated paper between
two smooth paper covering strips and covered with aluminum foil is
shown in the cited art.
Final Action: Affirmed
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Final Action on application 392,317 (Class 190-150)
assigned to Dr. Madaus & Co. entitled PACKAGING CONTAINER FOR SENSITIVE
PRODUCTS. The inventors are Dr. G. Bruesewitz and Dr. R. Sieck. The
Examiner in charge issued a Final Action on February 15, 1985, refusing to
allow the application. A Hearing was held on July 13, 1988, at which
Applicant was represented by his Patent Agent Mr. K. Murphy. Additional
written arguments were presented on August 8, 1988.
The subject matter of the application relates to a packaging container for
sensitive products ouch as agar housed in closed tubes. Figures 1 and 2
illustrate the invention.
<IMG>
Packaging container 1 is made from a folding box blank made of double
micro-undulating corrugated paper 7. The paper has small undulations
creating air channels 10 between the two smooth paper covering strips 9.
Aluminum foil 8 reduces the amount of heat entering or leaving the
container.
In the Final Action the Examiner refused allowance of the claims in view of
the following patents:
British Patents
(1) 694,307 July 15, 1953 Wexler
(2) 1,225,325 Mar. 17, 1971 Vaillant et al
United States Patents
(3) 3,915,304 Oct. 28, 1975 Pasco et al
(4) 2,954,912 Oct. 4, 1960 Kauffeld
(5) 3,682,597 Aug. 8, 1972 Husch
British Patent 694,307 describes a cover device for cooling milk bottles.
This cover made of wet-strong paper with a reflecting metallic surface
maintains a lower inside temperature than in the atmosphere.
British Patent 1,225,325 relates to an insulated tank construction for
transcontinental transport by rail, air or sea.
Pasco et al uses a box made of plywood with a reflective metallic lining
for insulating food.
Husch shave a cardboard box with a mounted-spacer insert having apertures
to retain glass tubes in spaced relationship when the cover is closed.
Figures 2, 3 and 4 are shown below:
(see formula I, II, III)
Box 15 of cardboard construction has a mounted spacer insert 16 for
retaining test tubes or vials.
United States 2,954,912 to Kauffeld is an insulated perishable food
carton. Figures 1, 3 and 5 are shown below.
(see formula IV, V, VI)
Carton 8 is made of material 10 which is characterized by an outer laminate
of aluminum foil 12, insulating layer 16, inner layer 14 of aluminum foil
and a film of plastic material 18 and 20 sandwiching the interior
components.
In the Final Action the Examiner stated (in part):
The use of insulating material to keep the contents of a
container hotter or colder than the local environment is
shown in (2): -
"To keep the liquid transported at a constant
temperature, the tank 2 is completely covered by
an insulating cover 14 made up of a thick layer
15 of plastic foam, fibreglass or other heat-
insulating material,...."
see (2) and page 2 lines 5 to 9.
and (4) (entire document) but especially
"As an entity, the material is denoted by the
numeral 10. It is characterized by an outer or
exterior ply or laminate of aluminum foil 12, by
a corresponding inner laminate or layer of
aluminum foil 14, and an intervening body layer
or laminate 16. The latter is of paper stock,
more specifically so-called blotter stock. Not
only this, it is not standard or "ordinary"
blotter stock, but a specially made product
which is bulked-up to render it of proper
tensile strength and to promote the multiplica-
tion of non-communicating air pockets or cells
for insulation properties and also to promote
the requisite compressibly resilient properties
so needed in making it possible to produce a
laminated material which may range from 18
points to 32 points and which, consequently,
lends itself to folding, creasing and forming
into containers."
see column 3 lines 38 to 52.
The combination of foil and insulating material is taught
in (4).
Internal spacers for shipping bones are taught in (5)
(Figs. 2, 3, 4).
Thus the use of metal foil to reduce heat transfer is
known (1), (3), (4), the use of cardboard or other
insulating material to reduce heat transfer is known (2),
(4) as is the combination (4). Use of a spacer in a box
is known (5).
Applicant has not achieved any new or unexpected result,
because the result is well known from experience and known
scientific principles.
Additionally the combination of reflective surfaces
(metal) and insulating layer (vacuum) is well known in
thermos flasks.
All claims are refused for lack of invention.
Applicant argues since none of the citations teach the
device of instant claim 1 including the preamble,
anticipation does not exist. The examiner cannot agree,
novelty of result is also expected. The use in thin case
is analogous reduction of heat flow entailing reduction of
temperature variation.
In response to the Final Action the Applicant submitted additional claims
22 to 26 and stated (in part):
... The present invention is thus concerned with a
specialized product which overcomes a problem experienced
in a special field.
In accordance with the present invention, it has been
discovered that insulation alone, as previously employed,
is not sufficient in order to obtain storage stability and
prevent formation of water of condensation of the
sensitive product. It has been found, in accordance with
the invention, that heat radiation is also a significant
factor in damaging the sensitive products. This heat
radiation includes heat radiated from the walls of the
storage roam in which the packaging is contained. In the
case of storage in a room subjected to temperature
variations, the contents of the packaging container are
exposed to radiation influences which can lead to a
warming up of one side of the tubes in the packaging
container so that condensation forms on the non-warmed
side of the tube.
Based on this discovery, the present invention has
been developed and as has been particularly illustrated by
reference to the table at page 8 of the disclosure, and
the accompanying description, the packaging of the present
invention enables the period of storage stability of
immersion nutrient substrate carriers to be more than
doubled as compared with packaging containers
conventionally employed for this purpose.
Thus the present invention resides not only in
providing a solution to a problem, but also in recognizing
the problem. Once the problem is recognized, the solution
may be relatively simple, but it is first necessary to
recognize the problem. ...
... None of the references are remotely suggestive of the
present invention, and none of them is concerned with or
recognises the problem recognised and then solved by the
present inventors. Absent the Applicant's disclosure, a
reading of the five references alone or in combination
would not result in identification of the problem solved
by the present invention, nor would it lead to the
particular structure which provides the solution to the
problem. The references themselves are concerned with
distinct areas of technology. One is directed to a tanker
body in the transport of bulk liquids. Another is a
cardboard cover for placing over a bottle of milk in a
dish of water in order to effect a cooling of the milk.
Another is an ice cream container. These diverse
references were only assembled by working backwards after
a reading of Applicant's disclosure. ...
The issue before the Board is whether or not the claims are allowable in
view of the cited references. Claim 1 reads:
A temperature-stabilizing packaging container for
condensation-sensitive, water-containing products in
closed tubes, comprising a strip-like, heat-insulating
material forming the packaging container; and metallic
covering means, at least on the outer surfaces of the
container, adapted to repel heat-producing radiation, said
heat-insulating material and metallic covering means being
adapted to protect said condensation-sensitive, water-
containing products against the influence of heat, and to
inhibit condensate formation and drying out of said
products.
At the Hearing Mr. Murphy emphasized that the present invention resides in
recognizing the problem that insulation alone as previously employed is not
sufficient to obtain storage stability sad prevent formation of water of
condensation of the sensitive product. He indicated that the present
invention is concerned with packing containers for agar which is a strongly
hydrophillic polysaccharide absorbing twenty times its weight of cold water
with swelling to form a gel. Accordingly he stated that the packaging is
intended to avoid frequent or large temperature fluctuations. Reference
was made to page 8 of the disclosure where a table indicating temperature
fluctuations of the Applicant's container and a conventional cardboard
container are shown.
Considerable discussion with respect to the Kauffeld reference took place
at the Hearing. This reference which is a temperature-stabilizing
packaging container also has a sheet of heat-insulating material and an
outer surface provided with radiation repelling metallic covering.
Kauffeld states in column 2 at line 33 that "the value of the exteriorly
covered laminate using foil resides in its ability to radiate heat."
Mr. Murphy argued that Kauffeld was concerned with maintaining ice cream in
a freezer, however we note from column 2 at line 8 of the patent where "the
invention under advisement falls in the semi-rigid group and relates, as
already stated, to a carton and although the idea involves protecting hot,
cold and frozen food products, it will simply .... be hereinafter referred
to as an ice cream container. We believe that the Kauffeld
packaging container deals with. condensation and reflection of radiant heat
to maintain the product at a constant temperature as does the Applicant's
container.
With regard to the table referred to on page 8 of the disclosure, we note
that the temper:tore comparison indicated is between the Applicant's
packaging container versus a packaging container "consisting of simple
cardboard." We think that if a packaging container using the Kauffeld
arrangement was used for the comparison instead of the cardboard container,
the temperature variations would be equivalent in view of the sameness of
the Applicant's laminated wall structure and that of the Kauffeld
container.
We agree that recognition of a problem is germane in providing a solution,
whether it be simple or not, or inventive or not. In the case before us
however, we are unable to distinguish between the problems faced by
Kauffeld as compared to those faced by the Applicant. Each has sought to
maintain constant temperature by resisting radiation and using heat
insulation.
The Applicant states in his response to the Final Action that the claims
issued in the United States are broader than claims presented in this
application. Also five claims have issued in the corresponding British
application. He states that both "Britain and the U.S.A. are strong
examining Countries and both Countries examine for obviousness." We agree
with the observation made by the Applicant but it must be pointed out that
United States patent 2,954,912 to Kauffeld may not have been included as a
reference considered by the Examiner in either the United States or Great
Britain.
In the Applicant's written arguments presented on August 8, 1988 reference
is made to the Supreme Court decision in Shell Oil Co. v. Commissioner of
Patents 67 CPR (2d) 1 with respect to the discovery of a new use for an old
compound. It is contended by the Applicant that his situation is analogous
since his invention "may be considered to reside in a new use for a
laminate of an old kind".
We are unable to concur with that view since Kauffeld was concerned with a
container to maintain contents with minimum temperature fluctuations when
compared to the temperature of the adjacent environment. This is the field
of use that the Applicant is concerned with. In any event, we are
satisfied that the solution provided by Kauffeld meets the same needs
encountered later in time by the Applicant. The Applicant has done no
more, in our opinion, than to re-invent Kauffeld's insulated carton when
faced with the situation Kauffeld experienced.
Claim 1 specifies a temperature-stabilizing packaging container comprising
a strip-like heat-insulating material and at least on the outer surfaces of
the Applicant's container, metallic covering means to repel heat-producing
radiation. Kauffeld does show components to perform similar functions and
in our view claim 1 does not recite a patentable advance in the art.
Features found in dependent claims 2 to 18 do not add anything of
patentable significance to rejected claim 1.
The method set forth in claim 19 and claims 20 and 21 dependent thereon do
not differentiate from the Kauffeld citation and we recommend their
refusal.
Claims 22 to 26 were added in response to the Final Action. These claims
specify a package container in the form of a box comprising a folded sheet
of heat-insulating material in the form of corrugated paper and an outer
surface of said sheet provided with a radiation-repelling, metallic
covering. We do not find any novelty in the box construction over that
shown by Husch. Combining the heat insulating and radiation repelling
material taught by Kauffeld with the yell known box structure does not
present any patentable feature. Consequently we do not recommend
acceptance of claims 22 to 26.
In summary we recommend that the decision in the Final Action to refuse
claims 1 to 21 be affirmed and that the acceptance of claims 22 to 26 be
refused.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I concur with the findings and recommendations of the Patent Appeal Board.
Therefore I affirm the refusal of claims 1 to 21 and I refuse entry of
claims 22 to 26. The applicant has six months within which to appeal my
decision under the provisions of Section 44 of the Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 21 day of November 1988
Swabey, Mitchell, Houle, Marcoux & Sher
1001, boul. de Maisonneuve ouest
Montreal, Quebec
H3A 3C8