IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 492,093 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
Marcus & Associates
c/o McFadden, Fincham, Marcus & Anissimoff
Suite 606
225 Metcalfe Street
Ottawa, Ontario
K2P 1P9
This decision deals with the applicant's request that the
Commissioner of Patents review the Examiner's Final Action on
application 492,093 (Class 154-41), filed October 2, 1985
entitled "WEATHER-RESISTANT LIGNOCELLULOSE OR OTHER ORGANIC OR
INORGANIC MATERIAL BOARDS AND PROCESS FOR THEIR PRODUCTION". The
applicant and inventor is Reinhard F. Hering. The Examiner in
charge issued a Final Action on June 1, 1990 refusing all claims
of the application for lack of inventive ingenuity. The agents
of record, Marcus & Associates, requested an oral hearing which
was later withdrawn on April 28, 1992.
The application relates to weather-resistant boards comprising a
base material and a vulcanized weather-resistant, outer resilient
synthetic elastomeric material covering layer which has been
vulcanized thereon in-situ.
Rejected claims 1 and 8 (the independent claims) read:
1. A method for preparing a weather-resistant board
comprising one of the following procedures:
(A) (a) laying down an impregnatable porous base
material selected from the group consisting of
(i) a lignocellulose or other organic
fibrous or particle material,
(ii) an inorganic mineral fibrous or
particle material,
and (iii) a mixture of a lignocellulose or other
organic fibrous or particle material
and an inorganic mineral fibrous or
particle material,
as a pre-formed batt on a movable charging platform, said
batt including a binder material associated therewith,
(b) laying down thereon a vulcanizable weather-
resistant elastomer material, thereby to provide a
composite;
and (c) compressing said composite under conditions of
high pressure and a temperature of at least 175øC.;
whereby said outer material is converted to vulcanized form
and is bound to and is both adhered to one surface of said
base material and is penetrated into and impregnated into
the said surface of said base material and is bound thereto
for only a predetermined limited region in the vicinity of
said outer surface of said base material and being
vulcanized therein in situ;
or (B) (a) laying down a vulcanizable weather-resistant
elastomeric material on a movable charging platform,
(b) laying down thereon on impregnatable porous
base material selected from the group consisting of
(i) a lignocellulose or other organic
fibrous or particle material,
(ii) an inorganic mineral fibrous or particle
material,
and (iii) a mixture of a lignocellulose or other
organic fibrous or particle material and
an inorganic mineral fibrous or
particle material on said vulcanizable
weather-resistant elastomeric material
which had been laid down on said movable
charging platform,
as a pre-formed batt, said batt including a binder material
associated therewith, thereby to provide a composite;
and (c) compressing said composite under conditions of
high pressure and a temperature of at least 175øC.;
whereby said outer material is converted to vulcanized form
and is bound to and is both adhered to one surface of said
base material and is penetrated into and impregnated into
the said surface of said base material and is bound thereto
for only a predetermined limited region in the vicinity of
said outer surface of said base material and being
vulcanized therein in situ.
8. A weather-resistant impregnated board possessed of
surface elasticity and pliancy by means of a permanently-
elastic covering layer, comprising:
(a) an impregnatable porous base material selected
from the group consisting of
(i) a lignocellulose or other organic
fibrous or particle material,
(ii) an inorganic fibrous or particle
material,
and (iii) a mixture of a lignocellulose or other
organic fibrous or particle material and
an inorganic mineral fibrous or particle
material, said base material including a
binder material associated therewith;
and (b) a vulcanized outer covering layer constituted
by a vulcanized, weather-resistant, resilient, synthetic
elastomeric material which has been vulcanized therein in-
situ at a temperature of at least 175øC.; said vulcanized
outer covering layer being bound to and both adhered
securely to one outer surface of said base material, and,
when in unvulcanized form, being penetrated into and
impregnated below and into the same outer surface of said
base material to be within the porous structure of said base
material for only a predetermined limited region in the
vicinity of said outer surface of said base material, and
being vulcanized therein in situ at said temperature of at
least 175øC. to be bound thereto for only said predetermined
limited region.
In the Final Action the following Canadian Patent was cited:
1,150,465 July 26, 1983 R.F. Hering
Claim 1 of said patent, to the same inventor reads:
Weather resistant board comprising: an impregnable base
material constituted by mixture of an organic and an
inorganic base material in the form of at least one of
fibres and particles and a curable resin; and an outer
material constituted by a vulcanizable, weather-resistant
elastomeric material; said outer material being in
vulcanized form and being both adhered to one surface of
said base material and penetrated and impregnated into the
same surface of said base material.
In rejecting the claims the examiner, in his Final Action, said
in part:
. . .
The reference of Hering relates to a weather-resistant
impregnated board comprising "an impregnable base material
constituted by a mixture of an organic and inorganic base
material, e.g. lignocellulosic or otherwise prepared organic
and/or inorganic raw material and a mineral material in the
form of at least one of fibres and particles and a curable
resin; and an outer material constituted by a vulcanizable,
weather-resistant elastomeric material; the outer layer
being in vulcanized form, and being both adhered to one
surface of the base material and penetrated and impregnated
into that surface of the base material"
. . .
"because the subject matter thereof lacks inventive
ingenuity in view of Hering, as the difference thereover is
held to be obvious to one of ordinary skill in the art to
which the alleged invention pertains."
. . .
In response to the Final Action and to further communication with
the Board, the applicant presented arguments and on January 6,
1992 submitted amended claims.
The submitted amended claims read:
"1. A method for preparing a weather-resistant board
comprising one of the following procedures:
(A) (a) laying down an impregnatable porous base material
selected from the group consisting of
(i) a lignocellulose or other organic fibrous or
particle material, and
(ii) an inorganic mineral fibrous or particle
material,
as a pre-formed batt on a movable charging platform, said
batt including a binder material associated therewith,
(b) laying down thereon a vulcanizable weather-
resistant elastomer material, thereby to provide a
composite;
and (c) compressing said composite under conditions of high
pressure and a temperature of at least 175øC; whereby said
outer material is converted to vulcanized form and is bound
to and is both adhered to one surface of said base material
and is penetrated into and impregnated into the said surface
of said base material and is bound thereto for only a
predetermined limited region in the vicinity of said outer
surface of said base material and being vulcanized therein
in situ;
or (B) (a) laying down a vulcanizable weather-resistant
elastomeric material on a movable charging platform,
(b) laying down thereon an impregnatable porous base
material selected from the group consisting of
(i) a lignocellulose or other organic fibrous or
particle material, and
(ii) an inorganic mineral fibrous or particle
material,
as a pre-formed batt, said batt including a binder material
associated therewith, thereby to provide a composite;
and (c) compressing said composite under conditions of
high pressure and a temperature of at least 175øC; whereby
said outer material is converted to vulcanized form and is
bound to and is both adhered to one surface of said base
material and is penetrated into and impregnated into the
said surface of said base material and is bound thereto for
only a predetermined limited region in the vicinity of said
outer surface of said base material and being vulcanized
therein in situ.".
"8. A weather-resistant impregnated board possessed of
surface elasticity and pliancy by means of a permanently-
elastic covering layer, comprising:
(a) an impregnatable porous base material selected from
the group consisting of
(i) a lignocellulose or other organic fibrous or
particle material, and
(ii) an inorganic fibrous or particle material,
and (b) a vulcanized outer covering layer constituted by a
vulcanized, weather-resistant, resilient, synthetic
elastomeric material which has been vulcanized therein in-
situ at a temperature of at least 175øC; said vulcanized
outer covering layer being bound to and both adhered
securely to one outer surface of said base material, and,
when in unvulcanized form, being penetrated into and
impregnated below and into the same outer surface of said
base material to be within the porous structure of said base
material for only a predetermined limited region in the
vicinity of said outer surface of said base material, and
being vulcanized therein in situ at said temperature of at
least 175øC to be bound thereto for only said predetermined
limited region.".
. . .
Regarding newly submitted claims 1 and 8 the applicant states (in
part):
. . .
Claim 1: (This proposed amended claim deletes, as an
alternative base material, the following:
(iii) a mixture of a lignocellulose or other
organic fibrous or particle material and an
inorganic mineral fibrous or particle
material).
Claim 8: (This proposed claim deletes, as an alternative
base material, the following:
(iii) a mixture of a lignocellulose or other
organic fibrous or particle material and an
inorganic mineral fibrous or particle
material, said base material including a
binder material associated therewith).
. . .
The applicant further adds:
. . .
The essential difference over the general prior art
such weather-resistant boards is that only a limited inner
region 3 in the vicinity of the surface of the base material
1 is impregnated with the elastomeric material of the
coating 2, as is shown in Fig. 1 and described in connection
therewith. Thus, the vulcanized outer covering layer is
both adhered securely to one outer surface of the base
material, and when in unvulcanized form, is penetrated and
impregnated below and into the same outer surface of the
base material, to be within the porous structure of that
base material for only a predetermined limited region in the
vicinity of the outer surface of the base material, and
being vulcanized therein in situ at a temperature of at
least 175øC. The essential fact of such limited
impregnation being near the surface is described with
respect to Figure 1 at page 13 of the specification.
. . .
Canadian Patent 1,150,465, issued to the present
applicant, was the precursor of the present invention. In
that patent, the process is described as a process for
producing weather-resistant panels or mouldings which
consist of wood particles or wood fibres mixed with binding
agents, and which are pressed together under the influence
of heat. In the process of the cited patent, therefore, it
is taught to be essential that the pre-formed batt must be
formed of a mixture of wood particles or wood fibres and an
inorganic material as well as a curable resin.
. . .
On the other hand, in the method claimed in the present
application, the preformed batt may be formed from either
(i) lignocellulose particles or fibres (e. g. wood
chips);
or (ii) inorganic mineral particles or fibres (e. g. fibre-
glass).
This is a difference which is not believed to be "obvious to
one of ordinary skill in the art" because of the unexpected
advantage which occurs.
. . .
In cited Canadian Patent 1,150,465, the product
produced is a weather-resistant panel comprising a body of
wood particles or wood fibres mixed with an inorganic base
material and a curable resin, the panels being pressed
together under the influence of heat, to provide a
permanently elastic covering layer over the wood particles
or wood fibres and the binding agent, the elastic covering
being on the surface of the latter and connected intimately
to the body of the wood particles or wood fibres and the
binding agent.
. . .
On the other hand, in the presently claimed process,
the outer vulcanizable weather-resistant elastomeric
material is converted to vulcanized form and is both adhered
to one surface of the base material and is penetrated into
and impregnated into that surface of the base material for
only a predetermined limited region in the vicinity of that
outer surface of the base material, and is vulcanized
therein in situ. This penetration into, and impregnation
into the base material for only a predetermined limited
region is not "obvious to one of ordinary skill in the art".
. . .
The applicant then goes on to cite extensively from Canadian
jurisprudence concerning obviousness and concludes:
. . .
It is therefore submitted that, in the absence of (a)
Applicant's teachings and/or (b) EVIDENCE in the form of an
affidavit by a person skilled in this art as to his "common
general knowledge" AND "some other specified PRIOR
literature or information", there is NOTHING in the cited
reference which would teach the utility of the substitution
of materials claimed now and to the novel product claimed
herein. Moreover, the proposed amended claim does not
overlap the scope of the claims which appear in the cited
reference.
. . .
From the record it is CLEAR that the Examiner, HIMSELF,
notes that the claims under rejection DIFFER in terminology
from the teachings of the cited reference; if this statement
were not true then the Examiner would have rejected the
claims as being ANTICIPATED and not as being OBVIOUS.
. . .
The issue before the Board is whether or not the application and
amended claims present patentable subject matter in view of the
cited art. The applicant points to two features as distinctive,
namely, the use of either organic or inorganic particles rather
than a combination of these materials and the impregnation and
bonding for only a predetermined limited region in the vicinity
of the outer surface of the base material as compared to
apparently strictly surface binding.
It is abundantly clear upon comparing the claims of instant
application and the applicant's prior patent that the amended
claims do not "read on" the prior art, because the combination of
organic and inorganic materials is no longer part of the pending
claims.
The second feature discussed by the applicant is the limited
impregnation of the base material by the vulcanized elastomer.
Applicant indicates that the penetration of the elastomer for a
limited predetermined region of the outer surface of the material
is not taught in the prior art. This point, however, was not
raised by the examiner in his objection, so the Board will not go
into it here.
Moreover, since it is decided that the objection the examiner did
take to the base material was answered on the point of choice of
the material, the question of the extent of the elastomer's
penetration is not critical to the allowance of the claims.
A further consideration must be whether the claimed invention is
obvious in view of the cited art and general knowledge. The
Board turns to the following quotations for insight into the
application of tests for obviousness.
. . .
Beloit Canada Limited v. Valmet OY (1986), 8 C.P.R. (3d) 289
at 294:
The test for obviousness is not to ask what competent
inventors did or would have done to solve the problems.
Inventors are by definition inventive. The classical
touchstone for obviousness is the technician skilled in the
art but having no scintilla of inventiveness or imagination;
a paragon of deduction and dexterity, wholly devoid of
intuition; a triumph of the left hemisphere over the right.
The question to be asked is whether this mythical creature
(the man in the Clapham omnibus of patent law) would, in the
light of the state of the art and of common general
knowledge as at the claimed date of invention, have came
directly and without difficulty to the solution taught by
the patent. It is a very difficult test to satisfy.
Technograph v. Mills (1969) R.P.C. 395 at 404:
Counsel suggested that the proper question to ask was not,
could the one be derived from the other, but would it be so
derived? Would it in effect suggest itself? I think this
is the right test.
In the present case, if the tests as outlined above are applied,
the Board concludes that the applicant would not have inevitably
be led to the invention claimed. No prior art is cited and
apparently it is not part of general knowledge that the selection
of either organic or inorganic material would so modify the
properties of the base material (over that of the combination) as
to produce an improved result. Certainly, the first wood fibre
boards to be made were comprised of only organic materials with
others added later to improve weather resistance; it would not be
evident, in this case, to revert to the original wood fibre
boards to achieve the allegedly improved product as claimed in
the last submitted amendment.
The Board recommends the acceptance of the amended claims
submitted on January 6, 1992 as a result of the Final Action.
F.H. Adams
Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I concur with the findings and the recommendation of the Board.
Accordingly I remand the application to the examiner for
prosecution consistent with the findings of the Board.
M. Leesti
Commissioner of Patents
Dated at Hull, Quebec
this 7 th day of december 1992