COMMISSIONER'S DECISION
Divisional Status, Supplementary Disclosure:
Claims not prosecuted to allowance in the original application but which, albeit
in less distinct terms, set out the invention sought in the divisional application,
were found to form a proper basis for the invention claimed in the divisional. The
Supplementary Disclosure was recognized by the Applicant as different from that in
the original application. Refusal withdrawn, application remanded for further
prosecution.
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Examiner's Final Action on application 528,799
(Class 317 - 3). The application was filed February 2, 1987 by the
inventor Mats Hedstrom, and is entitled PORTABLE RADIATION AND STATIC
ELECTRICITY SUPPRESSION AND ANTIGLARE SCREEN. The inventor is claiming
divisional status based on original application 406,105 filed on June 28,
1982. The Examiner in charge issued a Final Action on September 2, 1987,
refusing to allow divisional status to the application, and refusing to
accord to a Supplementary Disclosure accompanying it, the date of a
Supplementary Disclosure filed with the original application. A Hearing
was held on March 15, 1989 at which the Patent agent, Mr. M. Marcus,
represented the Applicant.
The divisional application is directed to the method and apparatus for
intercepting the movement of electrically charged particles in display
screen environments by providing a grounded screen between the display
screen and the user, as shown in the embodiment depicted in figure 3,
reproduced below:
(see formula I)
The portable screen 6 has an electrically conductive frame 2 grounded at 5,
with an electrically non conductive net 3 stretched across the frame. A
transparent conductive layer 7 is applied to the net and electrically
connected to the frame.
In taking his Final Action, the Examiner said in part, as follows:
...firstly, the application in respect of the
Supplementary Disclosure differs in substance from the
Supplementary Disclosure in the alleged parent
application, and the claims based thereon could never
have been supported by the alleged parent case;
secondly, claims 1-4 and 7-11 based on the principal
disclosure (in so far as they may be patentable which
is by no means conceded) are for an invention or an
alleged invention which was never claimed in the
alleged parent application.
Claims 5 and 6, finally rejected in the previous
application, must be removed or the application will be
held abandoned by failure to comply with Rule 35 of the
Patent Rules.
In the matter of the supplementary disclosure then, the
alleged parent application no. 406,105 (now patent
1,2~4,522 on pages SD9, at lines 7, 9 and 14 instructs
the reader as follows:
"The net is mounted within the electrically
conductive frame..."
and "The entire unit is now immersed in a
solution..."
and "This provides an electrically conductive layer
all around the threads of the nylon mesh net
as well as adding such (a)...layer to the ...
frame."
By contrast this application, alleged to be a
divisional of the above, says on page SD7 at lines 7,
10, and 12 that:-
"The net is immersed in a solution..."
and "This provides a transparent electrically
conductive layer all around the threads
of the nylon mesh net"
and "The net...is now mounted within the...frame".
Thus there has been a transposition of the two
operations of "immersing" and "mounting within the
frame" and one Supplementary Disclosure "differs in
substance" from the other. The Applicant's emphasized
allegation on page 7 of his amendment letter that the
two are "identical, word for word" lacks any basis in
fact, Claims SD12 and SD13 in this application
illustrate a sharp contrast with claims SD11 and SD12
of Patent No. 1,224,522.
It is common ground that claims 1, 2, 3 and 4 have
never appeared in the alleged parent case. Applicant's
argument seems to be that they should be given
divisional status because they are narrower than
improper claims which were filed in the alleged parent
in the amendment dated May 6, 1986. If this statement
is incorrect Applicant is challenged to show where
claim 1 for instance appeared in the alleged parent
application.
The point surely is that those improper claims in the
alleged parent application never represented an
invention; the alleged parent application only claimed
an invention after the lengthy Final Action dated
August 27, 1986 and the amending response of February
2, 1987. In cancelling those claims, Applicant in
effect conceded that those claims were unpatentable.
Hence "Section 38(2) of the Patent Act upon which the
Applicant relies" is irrelevant because this case is
not one "There an application describes and claims more
than one invention...". To the contrary, despite three
actions and an interview winch the Examiner had hoped
would expedite allowance, the Applicant refused to
claim even one invention in the alleged parent case
until forced to do so by the Final action.
The Examiner does not quite understand how the
Commissioner's decision in the Application No. 120,389
(Patent No. 962,101) 22 C.P.R. (2d) 171 is relevant to
the instant application. However, the Examiner would
point out that in the Manual of Patent Office Procedure
the paragraph 10.08.03 is entitled "Invention must have
been claimed in parent" and observes that "... an
omnibus claim in the parent is not sufficient to
justify divisional status under Section 38". Claims
winch the Applicant has tacitly agreed are similarly
unpatentable cannot be used to justify divisional
status.
Claims 5 and 6 must be removed from this application.
These claims were rejected as claims 3 and 4 filed in
the alleged parent on May 6, 1986 and cancelled in
response to the Final Action dated August 27, 1986.
Any appeal should have been taken at that time. This
information is in the public domain in Patent
No. 1,214,522.
The Applicant asks for case law citation; he is
informed that similar efforts to circumvent Final
Actions have occurred, but as no such Commissioner's
Decisions have been appealed, details are not available
under Section 10 of the Patent Act. Possibly the courts
reelect such appeals by analogy with the doctrine of res
judicata.
Close inspection shows claims 7-11 fall into the
category of not previously claimed because there has
been a change in substance. Applicant's representation
that they are merely using "acceptable terminology from
the claims of the parent" (see the paragraph bridging
pages 4 and 5 of the amendment letter) is misleading.
Unless the Applicant amends to:-
1) Remove the reference to a divisional application in
the petition;
2) Remove the reference to a divisional application on
page 1 of the disclosure; and
3) Remove claims 5 and 6
this action terminates the prosecution of the
application, before examination on the merits of the
case, because the documents in the case are not
prepared as prescribed, under authority of Rule 35 of
the Patent Rules.
In his response the Applicant argued for divisional status in part, as
follows:
It is applicant's submission, to be discussed in
greater detail hereinafter, that the claims in the
present divisional application are within the ambit of
the "invention or inventions defined in claims" which
appeared in the parent application.
To be granted divisional status, it is only necessary
that the subject-matter of the divisional application
previously be "described and claimed".
There is no requirement, as applied by the Examiner,
that a divisional application can only be directed to
claims which have already been allowed by the
Examiner. The only requirement is that the claims be
directed to what the applicant considers as being his
invention. If those claims, upon later examination,
are found not to be patentable, then, at that time they
can be rejected. There is no requirement under
divisional practice pursuant to Section 38 to make a
determination of patentability before divisional status
may be granted.
The matter of entitlement to divisional status is
governed by Section 385 of the Patent Act, and the
judicial interpretations thereof, and not by reference
to the Manual~. Patent Office Procedure.
Section 38(2) of the Patent Act, upon which applicant
relies as providing such divisional status, reads as
follows:
"(2) Where an application describes and claims more
than one invention the applicant may, and on the
direction of the Commissioner to that effect shall,
limit his claims to one invention only, and the
invention or inventions defined in the other claims may
be made the subject of one or more divisional
applications, if such divisional applications are filed
before the issue of a patent on the original
application; but if the original application becomes
abandoned or forfeited, the time for filing divisional
applications terminates with the expiration of the time
for reinstating or restoring and reviving the original
application under this Act or the rules made
thereunder."
Firstly there is no requirement in Section 38(2) which
holds that the divisional application may not contain
"claims which have never appeared in the parent
application". The statute clearly and unequivocally
states that an applicant may make
"the invention or inventions defined in the other
claims... the subject of one or more divisional
applications".
It is submitted that the claims presented herein do
represent an invention that was defined in the parent
application, and that was both described and claimed in
the parent application. The claims in this divisional
application are directed to the embodiment described in
Figure 3 as follows:
"The screen 6 includes, as with the screen 1, an
electrically-conductive frame 2 with a nylon net 3
stretched across it, but the wires 4 of the screen 1
have been replaced by a transparent,
electrically-conductive layer 7, applied to the net 3,
and electrically-connected to the frame 2".
The claims in this divisional application are directed
to subject-matter previously claimed in the parent
case, i.e., in former parent claim 3: "a transparent
electrically-conductive layer which is applied to the
rear face of said fine mesh net,"; and in former parent
claim 7: "an electrically-conductive transparent layer
physically connected to the rear face of said mesh
means and electrically connected to said
electrically-conductive frame means"
All the other matters raised by the Examiner are non
sequitur to the principal issue, namely granting this
application divisional status according to the clear
wording of Section 38 of the Act. Moreover all other
matters raised by the Examiner can effectively be dealt
with in ex parte prosecution before the Patent Office,
after the divisional status has been granted.
The issue before the Board is whether or not the subject-matter of the
claims of tins application was claimed m the Applicant's original
application in term which would merit the accord of divisional status to
this application, and whether or not the accompanying Supplementary
Disclosure merits the date of the Supplementary Disclosure filed with the
original application. Claim 5 of this application, as amended July 7,
1987, reads:
A portable, radiation and static electricity
suppression and anti-glare screen intended to be placed
in front of a display screen, said screen comprising:
an electrically-conductive frame intended for
grounding; a fine mesh net of an electrically-non-
conductive plastics material stretched over, and
mounted in, said frame, said fine mesh net being
unsupported by a rigid backing, and being exposed to
the surrounding environment at least at its front face;
means physically connecting said screen to
electrically-conductive means, said electrically-
conductive means comprising a transparent,
electrically-conductive layer which is applied at least
to the rear face of said fine mesh net; means
electrically connecting said electrically-conductive
frame; and means for grounding said
electrically-conductive frame;
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.
The Applicant argues in his submission and at the Hearing that the
requirement in Section 36(2) of the Patent Act for obtaining a divisional
status for an application is that the original application must have
described and claimed more than one invention. Further attention is drawn
to the prom sions of Section 36(2) setting out that an invention described
and claimed in an original application may be made the subject of a
divisional application. The Applicant stresses that the claims of a
divisional application need not already have been found allowable by the
Examiner before they may be admissible in a proper divisional application.
The Board agrees with these viewpoints, and turns to an assessment of what
is set forth in the clamors of the original application 406,105, now Patent
1,224,522.
In original claims 1 and 2 of the original application, a fore mesh net
stretched over an electrically conductive eartned frame was claimed, the
net being in contact with either electrically conductive wires or a
transparent conductive layer and the frame.
In the action of February 6, 1986 taken on the original application,
several groups of claims, one being group A, were listed as showing a
plurality of inventions, and a requirement made for limitation to one
invention. Of the claims in that group A, claim 2 was directed to
electrically conductive wires stretched over or woven into the fore mesh
net, and claim 3 defined a transparent electrically-conductive layer
applied to the mesh net.
Arising as a result of the Final Action on the original application,
the Applicant submitted an amended claim 1 and it defined a combination
having electrically conducting wires spaced across the fine mesh net. The
Board notes that in the claims which were cancelled from the original,
cancelled claim 6 was directed to the aspect of the cores, whereas
cancelled claim 7 defined the transparent conductive layer. The Board
recognizes in cancelled claims 6 and 7 the same subject matter, albeit in
modified terms, as that matter set out in original claims 1 and 2 of the
original application.
The Board sees no reason why the subject-matter, such as in cancelled claim
7 discussed above with respect to the original application may not be
claimed in a separate application, nor why divisional status may not be
accorded to this application for subject-matter appearing in a claim such
as claim 7 above. Neither does the Board see any reason why a claim in a
divisional application, such as claim 7 above, could not be open to
examination by the Examiner, using cited art, whether it be that used in
the original application, or newly found references. However if such a
claim for example, were satisfactorily amended in the divisional
application to overcome the cited art, the force of the objection would be
removed and the amended claim would be allowable therein.
In the Board's opinion, the amended claim 1 in this application is directed
to a combination that claims the aspect of the transparent layer connected
to the mesh as set out in cancelled claim 7 above.
The Board does not share the Examiner's view that principal claims 5 and 6
of this application as amended July 7 1987, must be removed or the
application will be held to be abandoned under Rule 35 of the Patent
Rules. Toe Board notes these amended claims 5 and 6, containing the
limitation that the electrically conductive means comprises an electrically
conductive layer, are different from those rejected in the original
application. As such, these amended claims are to a different combination
from that allowed in the original application.
During the Hearing it was noted that in the prosecution of application
406,105, the Applicant was required to limit that application to one
invention from among several groups of claims identified by the Examiner.
The discussion centered on whether or not the Applicant would be entitled
to prosecute the other groups in separate divisional applications even
though the other groups did not contain allowable claims for example, in
view of cited art or because they lacked support by the disclosure. The
Board believes the Applicant would be so entitled, in view of Section 36(2)
of the Patent Act that requires the invention be described and claimed in
the original. That Section however, makes no statement that the claims
must be found patentable or in allowable condition in the original
application before they may be accepted by the Office for prosecution in a
divisional application.
The Board thinks the particulars of the issue before it are similar to the
above circumstances. In the prosecution of application 406,105 the
Applicant submitted amended claims directed inter alia to the aspect of the
electrically conductive wires and the mesh net, and in cancelling the other
claims under rejection noted they were to the embodiment of figure 3 and
were "being made the subject of a divisional application of even date
herewith", the filing date of this application, February 2, 1987. The
amended claims issued in patent 1,224,522. The cancelled claims were
submitted in this application, and divisional status requested on the basis
of application 406,105. Of those claims, claims 5 and 6 were refused by
Office letter dated April 14, 1987, and these were amended on July 7,
1987. Amended claims 5 and 6 are still directed to the aspect of the
electrically conduct layer and the mesh net, an aspect that has been
maintained throughout the prosecution of application 406,105.
In view of Section 30(2) of the Act, the Board is satisfied that amended
claim 5 and 6 are proper divisional claims. The Board considers they are
directed not only to an aspect that was claimed consistently throughout the
prosecution of the original application, but also they need not have been
prosecuted to allowance in order to qualify as being directed to a
divisional aspect of the original application. The Board considers the
rejection based on Rule 35 of the Patent Rules is not well founded.
Concerning the other principal claims, namely 1 to 4 and 7 to 11, the Board
finds they are directed to the conductive layer and net aspect.
In summary, the Board sees no violation of Section 36(2) of the Patent Act
in the request for divisional status for this application.
In finding all the principal claims in this application directed to proper
subject matter in a divisional application, the Board believes such
acceptance does not of itself, cause them to be allowable over pertinent
art. It is noted however, no references have been cited in the Final
Action. At the Hearing, Mr. Marcus indicated that the Applicant was
willing to amend further the claims in this application to present them in
acceptable form, if such action were needed.
The Board turns to a consideration of the Supplementary Disclosure with
this application. This Supplementary Disclosure describes an embodiment of
the conductive layer on the mesh net, in which the mesh net is immersed in
a solution to obtain an electroconductive layer around the threads. The so
formed mesh and layer about the threads is then mounted within the frame.
This embodiment is set forth in claims SD 12 and SD 13 of this
Supplementary Disclosure.
The Board agrees with the Examiner's view that this instant Supplementary
Disclosure differs in substance from that in the original application.
There, the embodiment relates to a frame having a mesh net mounted therein
after which the frame and net are immersed m a solution whereby both frame
and net are coated. The subject matter in this Supplementary disclosure is
different from that appearing in the Supplementary Disclosure of the
original application. In this regard Mr. Marcus completely agrees,
reserving the right for the Applicant to cancel it and submit another. The
Board finds the earliest date that may be accorded to the Supplementary
Disclosure of this application is the date it first appeared in this
application namely February 2, 1987.
The Board recommends that divisional status be accorded to this application
based on the original application 406,105 filed June 28, 1982, and that the
Supplementary Disclosure accompanying this application be accorded the date
of February 2, 19137.
M.G. Brown
Acting Chairman
Patent Appeal Board
I concur with the findings and the recommendation of the Patent Appeal
Board. Accordingly, I accord divisional status to this application, and I
accord to the Supplementary Disclosure the date of February 2, 1987. I
remand the application to the Examiner for prosecution consistent with the
recommendation.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 21 day of April 1989
Marcus & Associates
c/o McFadden, Fincham, Marcus & Allen
Suite 606
225 Metcalfe Street
Ottawa, Ontario
K2P 1P9