Commissioner's Decision
Obviousness:
The circuitry and vision features provided by a pattern of metallic ink on a double
lens visor to obtain a defogging and deicing shield for a helmet were found to be
an advance in the art, and amended claims were accepted. Rejection modified.
This decision deals with the Applicant's request that the
Commissioner of Patents review the Examiner's Final Action on
application 514,732 (class 309-5) filed July 25, 1986, entitled
DEFOGGING AND DEICING SHIELD STRUCTURE. The inventor is
James M. Hollander.
The Examiner in charge issued a Final Action on May 3, 1989
refusing to allow the application to proceed to patent.
In reviewing the application, the Patent Appeal Board held a
Hearing on January 24, 1989, at which the Applicant was
represented by Mr. Kevin P. Murphy, the Patent Agent. Subsequent
to the Hearing, the Applicant submitted a letter dated
January 25, 1990 including an amended set of claims.
The invention relates to deicing means for a dual plastic lens
visor in a helmet. As depicted in figure 3 below, the visor has
a top 17, and sidewalls, not shown, all having grooves or channels
23 and 24 to receive the edges of, and space, weather lens 13 and
face lens 14, respectively, the bottom portions of the lenses
being joined as at 26. On the inner surface 25 of lens 14 a
pattern of circuitry 27 is printed using an ink having a metallic
content to provide the desired resistance and power, and the
vision, characteristics. Figure 1 shows the visor attached to a
helmet.
(see formula I)
In the Final Action, the Examiner cited the following references:
Patents
United States
3,027,561 April 3, 1962 Senne
Canada
1,011,792 June 7, 1977 Plumat et al
(corresponding to United States Patent 3,900,634)
Publications
"Double-Lens Vari-Shield"
Snowmobiler's Race & Rally, Winter 1978-79, page 12
Product Information Sheet
Hysol Conductive Silver Inks; Bulletin SP-140
(no. 140-18-Q)
Hysol Division, The Dexter Corporation September 1981
The Examiner considered these references in the following terms:
Senne teaches a face plate for skin diving having an
outer pane 16, preferably made of tempered glass, and
an inner pane 17, made of transparent plastic. The
inner pane has heating wires 70 to eliminate
condensation. (Figure 2 below)
(See formula 1)
The double-lens Vari-Shield is a curved injection
moulded plastic face shield for snowmobilers. An inner
and outer lens forms a dead air space between the
lenses. (shown below)
(See formula 2)
Hysol, a conductive silver ink, is formulated for air
drying for use on a variety of plastic materials. It
is designed primarily for screen printing. (No
depiction
Plumat et al teach a glazing panel with conductive
strips to keep the panel free of mist and ice. The
strips are applied by a cerographic technique. The
glazing panel may include one or more glass sheets with
the strips sandwiched in-between. (Figure 1 shown
below)
(See formula 1)
The Examiner rejected claims 1 to 49 in view of the Double-lens
Vari-Shield and common knowledge in the resistor/conductor art,
in .the following terms, in part:
...
As stated in the previous action, Senne used heating
wires embedded in a plastic pane, since silk screened
conductive lines, which were known at that time,
required an elevated curing temperature which is not
suitable for plastic material. With the development of
Hysol inks, which were designed for air drying on a
variety of plastic materials, it is obvious to
substitute this improved material for the heating
wires. There is held to be no invention in
substituting a material for a purpose for which it was
designed to be used.
Applicant replied to the previous action, in part, that
he had not substituted a newly developed material for
an older material in a resistance heated face shield.
The conductive silver preparations are not newly
developed as is evident from the DuPont technical
information publication submitted here. They have been
available for more than 20 years, and in spite of their
availability have not been employed in the manner
developed by the present invention.
If the silver conductive inks are such an obvious
choice, then it is certainly surprising that they have
not been employed in the manner of the present
invention, even though there has been much development
in the art of protective face shield elements,
including defogging or deicing functions. The reason
is, of course, that invention was involved in making
the development, such invention being the subject of
the present application.
In the previous action the examiner also stated that
screen printed horizontal resistance wires had been
used since the mid-seventies on automobile rear
windows. Thus the idea of using screen printed
conductor to eliminate fogging was generally known in
view of the widespread use of automobiles. The
reference of Plumat et al is cited not as a new ground
of objection but rather to support the statement in the
previous action. On page 8 of the Plumat reference a
common failure made of early screen printed conductors
is described which consisted of local overheating and
subsequent failure of the conductors.
Applicant states that the DuPont preparation has been
available for more than 20 years. He concludes that
the use of screen printed conductors on face masks
cannot be obvious since such inks have been around for
a long time but have not been used on face masks
before.
Another explanation is that the air dying inks that
were available were not suitable for the particular
application applicant has in mind. Plumat et al
describe reliability problems which occurred with early
preparations. The Declaration of the Inventor,
received November 9, 1987, states that a period of 6
months was needed to evaluate the products of various
manufacturers. The Hysol Product Information sheet
clearly recommends the use of that ink for plastic
materials.
In summary, as shown by the references, double-lens
plastic shields have been used for some time. Senne
had taught the usefulness of resistance wires to
prevent shields from fogging. When the Hysol product
came on the market, which specifically points to use
with plastic materials, it became very plain to use the
ink in an improved application that had been thought of
earlier with more complex materials. Applicant's
efforts thus lack ingenuity and are better described as
workshop improvements.
...
In the response to the Final Action, the Applicant argued the
merits of the invention in the following terms, in part:
The invention in its broadest sense is concerned with
an improved face shield comprising at least two spaced,
plastic lenses, one of which has a surface imprinted
with an electrically conductive circuit, in the form of
a pattern of spaced, continuous, generally parallel
lines. The circuit has sufficient electrical
resistance to create heat effective to inhibit
formation of fog, ice or frost upon the face shield.
...
...
There are claims to specific embodiments in which the
width and spacing of the lines is such that they occupy
no more than 8%, per unit area, of the field of view so
as to provide a clear field of view, and claims which
specify the power density range for the circuit pattern
of 0.3 to 0.60 watts per square inch of the face plate.
...
The heating effect of the described Hysol ink is
evaluated in the accompanying Affidavit of
James M. Hollander, particularly in paragraphs 9 and
10, from which it is evident that the information in
the Hysol publication is not of assistance in the
present invention. Utilization of the criteria
identified in the Hysol publication, for example, the
resistance figure in ohm/inch would result in a heating
effect which would melt the plastic or the ink line
would immediately "open-circuit".
...
...The preparations employed by Plumat comprise a paste
of tiny glass particles mixed with conductive metals
for silk screening on glass substrates, with the glass
being "fired" in order to melt the glass particles of
the paste so that they will fuse to the glass
substrate. The problems identified by Plumat at page 2
are the difficulty in obtaining uniformity and
reproducibility in mass production manufacture, without
resort ing to complex and expensive production methods.
Plumat does not teach air drying inks at all and the
problems associated with pastes of the kind with which
Plumat was concerned are irrelevant to inks such as
these of DuPont and Hysol....
...
The Applicant further argued in his submission at the Hearing
that the cited references did not suggest the invention, in part,
as follows:
...
There is no basis for the Examiner's position that
Senne used heading wires embedded in the pane because
silk screen conductive lines known at the time required
an elevated curing temperature which is not suitable
for plastic material.
...
...:The applicant in an earlier Affidavit has also
reported on his discussions with John Jandrey, the
Market Development Manager, Electronics Material
Division of The Dexter Corporation, manufacturers and
sellers of Hysol conductive inks, in which Mr. Jandrey
indicated that the inks were not intended for low
temperature resistance heating application but were
intended to serve the electronics industry where a
conductive polymer film is required such as in the
repair of broken circuit board tracers. Mr. Jandrey
also indicated that the proposed Application on a face
shield seemed odd and totally unsuitable for Hysol
inks. This evidence directly contradicts the
"assumptions" made by the Examiner.
...
The issue before the board is whether or not the application is
directed to patentable subject matter in view of the cited art.
During the Hearing, Mr. Murphy presented a video showing the
effects on a plastic visor that had lines of the small dimensions
and material called for by the Applicant. The presentation
discussed the greater current that would have to be carried by
the lines as derived from the currents carried by the known
circuits in the art which were considerably greater than the
Applicant's. It showed that when such a greater current was
passed through the Applicant's circuitry, that current first
distorted the plastic due to the heat developed, then burned out
the small dimensioned metallic ink lines and broke the circuit.
Mr. Murphy pointed out the features of the Applicant's invention
that resulted from laying down a pattern of circuitry using
metallic ink having the characteristic of carrying only a small
current in comparison to the circuits and currents taught by the
cited art. Quoting from information he had obtained from General
Electric in 1984 with respect to work that company had done in
testing electric wires placed in Lexan plastic, he described how
it had been found that the plastic distorted when current was
passed through the wires. He likened the tests to an effort to
make a structure set out in the Senne Patent. He called
attention to discontinuance of the General Electric tests because
of distortion, bubbling, and optical problems that occurred in
the plastic due to the high current, and for these reasons he
pointed out the Applicant's invention was an advance over the
cited art.
Having the benefit of the information presented at the Hearing,
the Board acknowledged the presence of inventive matter in the
application with respect to the circuitry and vision aspects
provided by the metallic ink, and discussed the claims with the
Agent to determine whether or not they defined the inventive
features. It was found that some claims set forth the features
that provided clear vision, but none defined the circuitry of
metallic ink of such dimensions to obtain both the deicing, and
the vision characteristics described by the application on page 8
as being the invention, and shown as part of the presentation.
Mr. Murphy requested time to prepare an amended set of claims
that would reflect the proper scope of claiming, and the Board
agreed. On January 26, 1990 revised claims were submitted, and
amended claim 1 reads:
In a protective helmet and face shield assembly
including fastener means for securing the shield
releasably to the helmet and hinge means between the
fastener means and the shield permitting relative
motion between the shield and the helmet an improved
face shield comprising:
at least two spaced, plastic lenses providing a field
of view , one lens defining a face lens and another
lens defining a weather lens, a surface of one of said
lenses being printed with an electrically conductive
circuit of an ink having a metallic content
substantially throughout said field of view, said
circuit being arranged upon said surface in accordance
with a pattern of spaced, continuous, generally
parallel lines, said lines at maximum width and minimum
spacing occupying no more than about eight percent
(8%), per unit area, of said field of view, said
circuit having sufficient electrical resistance to
create heat effective to inhibit formation of fog, ice
or frost upon the face shield, and said pattern of
lines being effective to provide maximum light
transmission and visibility therebetween through said
shield.
The Board is satisfied that the amended claims define the
invention described in the application in terms that overcome the
cited art. Recommendation is made, therefore, that the
application containing the claims as amended after the hearing be
accepted.
M.G. Brown
Acting Chairman
Patent Appeal Board
I concur with the findings and the recommendation 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 23 day of March 1990