COMMISSIONER'S DECISION
Reissue: The matter introduced for reissue was held not to be covered in the application
nor known to the Applicant prior to issue; variations of description between the
affidavit and document evidence when compared with the application were found
unacceptable. Rejection affirmed.
This decision deals with Applicant's request for review by the
Commissioner of Patents of the Examiner's Final Action on application
502,927 (Class 73-8) filed on February 27, 1986, by Hewlett-Packard
Company and is entitled PRESSURE DOME. The inventors are T.G. Minior
and A. Tykulsky. The Examiner in charge issued a Final Action on
May 27, 1987, refusing to allow the application for reissue of Patent
1,119,013 granted March 2, 1982.
On October 27, 1989 Mr. P. McBurney, the Patent Agent, confirmed that
the request for a Hearing be waived, and that a review proceed on the
basis of the Applicant's submissions of record.
The invention relates to a pressure dome that is attached to a
transducer to provide blood pressure signals. As shown in Figure 1
below, dome 2 has an enclosed space formed by, a cover not shown, part
of rim 10, and a flexible flat membrane 4. Below the membrane and on
opposite surfaces of the rim, inclined slits 14', 16', resilient
tongues 14, 16, detent notches 42, 44, and openings 23, 24, are formed.
(See formula 1)
To position transducer 28 inside the dome, lugs 30 and 32 are placed in
respective dome openings 23, 24 and slid through the slits over the
tongues until they seat in the detent notches. In this way the
pressure between the parallel diaphragm 34 and the membrane 4 is set,
as further tightening is prevented due to the walls 46, 48, of the
detents. Release pressure causes the lugs to ride out of the detent
notches and down the tongues. Over or under tightening is thereby
avoided.
In operation each plastic dome is designed to be interchangeable with,
and to set and maintain a standard pressure contact between its
membrane and a diaphragm of, a compatible transducer. This setting of
the pressure is designed to provide the same predetermined signal value
by the initial contact of a membrane and diaphragm and therefore no
rezeroing of the monitoring apparatus connected to the transducer is
needed when the domes are interchanged. Moreover, correctness of the
output signals is ensured when the diaphragm reacts to blood pressure
variations caused by the membrane.
In taking the Final Action the Examiner said, in part, as follows:
...
Part 3 of the petition states that the respects in
which the patent is deemed defective or inoperative
are as follows: All of the claims of said patent
recite "means defining detent notches next to said
ramps" and such detent notches are not essential to
the practice of or essential to apparatus embodying
the invention. The disclosure of patent 1,119,013
describes an advance in the art whereby the pressure
between the membrane of the pressure dome and the
diaphragm of the transducer does not depend on
applied torque. The disclosure describes resilient
tongues with ramps sloping towards the membrane with
means defining detent notches next to the ramps.
This provides spring loading to a fixed position.
In no part of the disclosure did applicant indicate
that any means other than a detent would be used to
fix the predetermined position of the pressure dome.
In part 4 of the petition reference is made to the
attached disclosure of the invention written by one
of the inventors. In this disclosure the importance
of spring loading for the pressure dome is
emphasized by the marginal note on the first page
"spring includes detent" is very specific in
conveying the inventor's invention. It does not
allow for any other means to hold the pressure dome
in a predetermined position, only a detent. The fact
that the petition states that the marginal note was
made when the inventor was discussing the invention
with a patent attorney only serves to reinforce the
fact that the invention as disclosed includes a
detent.
Part 5 of the petition states that the amended
disclosure and claims result from an analysis to
determine whether the claims of the patent would
cover competitive products. Reissue is not permitted
to change the claims because the patent can be
circumvented by others, unless the applicant can show
that he intended to protect in the original patent
what he claims in the reissue, but failed to do so by
reason of error arising from inadventence, accident
or mistake. It is held that there is no evidence to
show that applicant intended to disclose and claim
anything other than that which appears in the
original patent number 1,119,013.
...
The Applicant responded, in part, as follows:
On the question of intention, the petition for
reissue states that the intention of the inventors
was to describe and claim a pressure dome wherein,
inter alia, some means would be provided to hold the
pressure dome in position on a transducer after
these two components had assumed predetermined
positions with respect to each other, that in the
preferred embodiment of the invention the means in
question are detent notches, but that it was not the
intention of the inventors that the means in
question be restricted to detent notches. The
petition for reissue also states that the Patent
Attorney who prepared the application which
ultimately matured to Canadian Patent 1,119,013
misunderstood the scope of the invention and failed
to appreciate that, in its broadest concept, detent
notches were not essential to the invention, only
some means, which might be detent notches, for
holding the pressure dome and transducer in position
relative to one another after they had been moved
into predetermined positions with respect to each
other so that the pressure dome would be seated with
a predetermined pressure against the transducer
diaphragm.
...
A response to the office Action dated December 4,
1986 was filed, all of which is incorporated herein
by reference, in which, to supplement the clear
statements in the petition with respect to
intention, Affidavits of Donald M. Timbie, the
Patent Attorney who prepared the application, and
one of the inventors, Alexander Tykulsky, were
filed. Both of these Affidavits deal directly with
the question of intention, and Mr. Tykulsky's
Affidavit concludes with the statement "It was not
my intention that the invention be restricted to the
inclusion of one or more detent notches".
...
... as for the concluding sentence of the sixth
paragraph of the Office Action (September 8, 1986)
that "in no part of the disclosure did applicant
indicate that any means other than a detent would be
used to fix the predetermined position of the
pressure dome", it must be realized that two
separate and entirely independent functions are
attributable to what are referred to as the detent
notches in Canadian Patent 1,119,013. One of the
functions is clearly set out at lines 15 to 18 on
page 4 of the patent where it is stated that further
rotation causes the projections to drop into the
detent notches, thereby determining the force
applied between the membrane and the diaphragm and
the value of any offset signal produced by
monitoring apparatus coupled to the transducer.
However, this function clearly has nothing to do
with the detent capability of the detent notches.
This function clearly results from a straightening
out of the ramp 38 as shown by reference number 42.
The other function of the detent notches is set out
on page 4 of the patent at lines 19 to 21 where it
is stated that shoulders are located at the sides of
the detent notches that are remote from the ends of
the tongues so as to prevent further rotation. The
error that occurred in the drafting of the claims
for Canadian Patent 1,119,013 lies in the inclusion
in those claims of "detent notches" when the latter
function performed by such detent notches is not
essential to the invention and the former function
does not require the presence of a detent notch, if
that term is construed as something which restrains
further rotation.
...
Referring to ... the last paragraph on page 1 of the
Office Action, (September 8, 1986) the Examiner has
concluded that the fact that the marginal note was
made when the inventor was discussing the invention
with the Patent Attorney serves to reinforce the
fact that the invention as disclosed includes a
detent. Exactly the opposite is true. Thus, as
clearly set out in the Affidavit of Mr. Timbie, the
marginal notation was added by Mr. Tykulsky to the
original disclosure at the time when the original
disclosure was being discussed with Mr. Tykulsky by
Mr. Timbie. It was not part of the original
disclosure, which clearly indicates that the
presence of a detent was non-essential to the
invention. The language "spring includes detent"
marginally added simply refers to a pedetermined
embodiment of the invention that incorporates a
detent function.
As for the first paragraph on page 2 of the Office
Action, while reissue may not be permitted to change
claims because a patent can be circumvented by
others, this is not the reason for reissue in the
present instance. The mere fact that the error was
discovered as a result of an analysis to determine
whether the claims of the patent would cover
competitive products does not mean that the reason
for reissue in the present instance is to avoid
having the patent circumvented by others.
...
The issue before the Board is whether or not the subject matter in the
amendments to the disclosure, and in claims 3 to 10 of the application
for reissue, is directed to the same invention as Patent 1,119,013, and
whether or not there was an error in omitting to disclose and claim
that subject matter. Claim 3 reads:
A pressure dome for attachment to a transducer
having outwardly extending projections, comprising
a body having a hollow formed therein,
a flexible membrane,
means mounting said membrane across said hollow so
as to form a space therebetween,
ports extending through said body so as to provide
access to said hollow from a point outside said
body, and
resilient tongues extending from said body on the
side opposite said membrane from said hollow, said
tongues lying within a cylinder having an axis
perpendicular to said membrane and having ramps
including portions sloping toward said membrane from
their ends, said ramps also including parts
configured so as to be adapted, in conjunction with
said resilient tongues, to hold said pressure dome
in position on the transducer after the projections
have moved along said ramps to a predetermined
position.
This decision uses the section numbering of the Patent Act in force on
December 12, 1988, whereas the prosecution uses that in effect before
that date.
In Applicant's response to the Final Action it is said the term "detent
notch" is not essential if construed as restraining further rotation.
From the Board's understanding of the original application, that is one
of two essential functions provided by the detents in obtaining the
invention, namely, ensuring no over or under tightening of the dome,
the other being, at the same time providing a predetermined pressure
contact between the membrane and the dome. Another function of the
detent and the resilient tongue, found in the original application, is
that in the event of an overload delivered to the transducer diaphragm
the resilience of the tongue permits the dome to lift from the
transducer to provide relief. These features are covered in issued
claim 1 by the detent notch in combination with the other elements, and
are described in the disclosure of the invention written by Mr. A.
Tykulsky that is attached to the Petition for Reissue. No other
arrangement has been set forth in the original application to achieve
the above results. Mr. Tykulsky's written description refers to
springs being part of the dome, however, the sketches accompanying the
written description show detents formed in the sidewall of the dome,
but no other arrangement.
In studying the amendments to the disclosure of the reissue application
it is seen on page 4 lines 17 to 24 that the ramps are configured by
the inclusion of detents. This agrees with issued claim 1.
On page 5 of the reissue application lines 34 and 35, the term "flat
portions of the tongue" is introduced for the first time, as is the
feature on lines 39 to 41 of a small protuberance, or guard which is
again mentioned on page 6, between the ramp and flat portion to prevent
backward sliding of the lugs. The structure set out in these lines
does not achieve the objective of preventing over tightening presented
in the written disclosure and sketches and the original application.
The Board considers the inclusion of the new subject matter on pages 5
and 6 is not acceptable, in that it does not describe the same
invention found in either of the applicant's above documents.
The term channel is introduced on pages 7 and 9 of the reissue
application. However, this term is not considered to be the same as a
slit. A channel is a groove whereas a slit as used in the original
application is a cut right through the wall. Further, the original
application is silent concerning anything other than a slit. The
additional matter on pages 7 and 9 is unacceptable, in that it is
directed to different subject matter from the Patent.
Following from the reasons that the new matter in the reissue
application on pages 5, 7, and 9, is not permissible, the new
statements of claim on page 3 regarding "parts configured so as to be
adapted", and on page 4 regarding "channels", and "walls so configured
as to be adapted", are not supportable by Mr. Tykulsky's written
disclosure and sketches, nor by the original description.
The Board finds the additions to the reissue application, other than on
page 4, are not part of the invention originally developed. The matter
on page 4 however brings no patentable change to the invention defined
in issued claims 1 and 2, nor does it support the matter defined in
claims 3 to 10.
From a review of Mr. Tykulsky's written description, part 1
particularly stresses the importance of having a predetermined pressure
against the transducer diaphragm. It says the stress applied causes an
offset proportional thereto, on the transducer, and if too large the
monitor may not accommodate it, or if too light leakage may occur. It
adds the dome applies a known correct pressure regardless of the manual
strength of the assembler.
In part 4 of his written description Mr. Tykulsky says in case of an
overload to the transducer the springs lift the dome thus providing
additional volume to safeguard the transducer. Part 6 thereof, noted
as subsidiary to part 1, describes the predetermined loading as
permitting removal and restoral of the dome without rezeroing the
monitor.
Moving to Mr. Tykulsky's affidavit, in part 2 he attests the essence of
the invention is to limit the amount of pressure between the membrane
and the diaphragm surface regardless of the amount of torque in
assembling the dome and transducer. The Board finds this in agreement
with the written description and the original application.
Mr. Tykulsky writes in part 3 of his affidavit that the detent notches,
in preventing the dome and the transducer from becoming unscrewed, are
for a different purpose. He says in part 4 they contribute nothing to
the concept of setting the "maximum pressure obtainable" between the
membrane and the diaphragm. In part 5 Mr. Tykulsky indicates the
desired objective of the invention is the attainment of "a pressure"
between the membrane and diaphragm "that lies within a predetermined
small range". Further in Part 5, he says, to do this, all that is
necessary is a surface at the end of a ramp of such shape that a pin of
a transducer riding on it will not significantly alter the amount of
depression of the spring-like tongue, adding that whether the shape is
a notch or not is unimportant.
In the Board's opinion, parts 3, 4 and 5, of the affidavit introduce
variations between what is disclosed therein and what is contained in
Mr. Tykulsky's written disclosure and sketches, and what is set out in
the original application of the Patent.
The Board agrees with that portion of part 5 of the affidavit saying
that one of the objectives is to provide a pressure within a
predetermined small range, but finds part 5 has not addressed the other
objective set out in part 1 of Mr. Tykulsky's written description,
namely, ensuring that a predetermined pressure is applied at all times
regardless of the manual strength of the assembler.
Regarding parts 3 and 4 of the affidavit, the Board thinks they are
contradictory to what has been set out in the original application, and
the written description. The Board sees nothing in the latter two
documents that relates to a concept of setting a maximum pressure,
instead, they describe a pressure in keeping with the predetermined
small range set out in part 5 of the affidavit.
Apropos the statement in part 5 of the affidavit that a pin riding on a
"ramp of such shape" is all that is necessary, the Board is not
persuaded this is all that is needed in view of the above two
documents, for neither refers to a pin or such a ramp, nor to the
absence of any means to prevent over or under tightening. The Board
thinks the statement is unsupportable by the original application.
Further, the two documents make no allusion nor reference to other
structure to limit over or under pressure, only the detent.
In the Petition for Reissue, the Applicant says in part 5 the knowledge
of the new facts included in the amended disclosure in light of which
the new claims 3 to 10 were drafted, occurred as a result of analysis
in the latter part of 1983 to determine if claims 1 and 2 of the issued
patent covered competitive products. In the Board's opinion this is
not a valid reason for it does not establish the newly discovered facts
occurred to the Applicant during the prosecution and development of the
application up to its issue to Patent. The reason persuades the Board
to an opposite viewpoint, namely, that the facts were not evident at
the time of issue and only came to light on reviewing competitive
products after the Patent had been granted. In summary the Board is
satisfied the newly added matter on page 5 of the reissued application
introduces arrangements, not covered in, nor known to the Applicant
prior to issue of, the Patent. Further, the Board finds the reason in
part 5 of the Petition is unacceptable.
In reviewing the claims for reissue, the Board finds claim 3 and claims
dependent thereon define the new matter on page 5 and are
unacceptable. Concerning claim 4 and claims dependent thereon, they
bring no substantial change to the issued claims and are not acceptable
for reissue which may be used only to bring patentable changes to the
Patent.
In claim 3 the definition of the ramps includes that in conjunction
With the resilient tongues they hold the pressure dome in position on
the transducer, no mention being made to position the membrane on the
diaphragm. In issued claim 1 detent notches are defined next to the
ramps, and it is this arrangement that is described in the original
application of the Patent to achieve the desired pressure contact
between the membrane and diaphragm, and at the same time to prevent
over or under pressure. Nowhere in the original description of the
Patent is there any mention of any other way to ensure that the above
purposes are achieved. Claim 3 does not fully define the originally
disclosed invention.
Claim 4 includes detests positioned at predetermined positions and for
this reason it sets out the features that obtain the aims of the
invention originally disclosed, and therefore is directed to no more
than is claimed in the patent.
Claims 5 and 6 as they are dependent on claim 3 do not add any
patentable features to claim 3. Claim 6 as it is dependent on claim 4
sets out no more than the features claimed in the patent.
Claim 7, like claim 3, does not fully define the invention disclosed,
in that the detests are not included. Claim 8 does recite the detents,
and for this reason defines no more than claimed in the patent.
Claims 9 and 10 as dependent on claim 7 do not add any patentable
features to claim 7. Claim 10 as dependent on claim 8 defines no more
than claimed in the patent.
After reviewing the amendments in the reissue application, the reasons
in the Petition for Reissue, the original application, Mr. Tykulsky's
written description and sketches, and his affidavit, the Board
recommends that the refusal of the Petition for Reissue be affirmed.
M. G. Brown
Acting Chairman
Patent Appeal Board
I concur with the findings and the recommendation of the Patent Appeal
Board. Accordingly, I refuse to grant a reissue patent on this
application. The Applicant has six months within which to appeal my
decision under the provisions of Section 42 of the Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
dated this 28 day of December 19
Hull, Quebec
Sim & McBurney
Suite 701
330 University Avenue
Toronto, Ontario
M5G 1R7