IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 487,869 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
Kirby, Eades, Gale, Baker & Potvin
Box 3432, Station D
Ottawa, Ontario
K1P 6N9
This decision deals with the Applicant's request for review by
the Commissioner of Patents of a Final Action on application
serial number 487,869 (Class 310-22), assigned to Matsushita
Electric Industrial Co. Ltd. The inventors of the application,
entitled "Small Electric Motors," are S. Uda, H. Takao and S.
Kondo. The examiner issued a Final Action on December 21, 1989,
refusing claims 1 to 16 for lack of inventive ingenuity. A
hearing was held on January 15, 1992 at which Mr. Edwin J. Gale,
patent agent, represented the Applicant.
The application is directed to electric motors, specifically
small electric motors of the type used in tape recorders, video
tape recorders and the like, wherein specific organic compounds
are used to reduce abnormal operation.
Claim 1 of the application, as refused by the Examiner in the
Final Action, reads as follows:
A small electric motor having brushes and a commutator
slidably engaged with the brushes, wherein the interior or
(sic) the motor is filled with an atmosphere containing the
vapour of at least one organic compound having a boiling or
sublimation point of 40 to 350.degree.C and being selected from the
group consisting of paraffins, mono- or poly-hydric
alcohols, ethers, cyclic ethers, esters, ketones, ether
alcohols, ester alcohols, aminoalcohols, carboxylic acids,
amides, primary, secondary and tertiary amines, imidazoles,
imidazolines and monocyclic oxyterpenes.
In the Final Action, the examiner rejected claims 1 to 16 on the
grounds of obviousness in view of the following United States
patent:
2,703,372 issued March 1, 1955 Savage
The above United States patent relates to means for minimizing
brush wear in dynamoelectric machines operating under low
humidity conditions. Claim 1 of the United States patent reads
as follows:
In an air-cooled electrical machine comprising a current
collector device and relatively slidable current collector
contact member in engagement with said device, the method of
minimizing wear at the area of engagement of said device and
member comprising the steps of shielding said area from the
cooling air and providing to said shielded area a gaseous
medium comprising a vapour.
In the Final Action the examiner stated, in part:
Savage discloses an electric generator having brushes and a
commutator. The atmosphere inside the generator contains
vapours of organic compounds to reduce brush wear and
improve slidability between the brushes and the commutator.
These organic compounds are "alcohols, ethers, esthers
(sic), ketones, alcohol-ethers, amides and amines (column 4,
lines 49-51) provided on a felt (column 9, line 57) or
porous metals (column 9, line 58)."
Claims 1 to 16 are rejected because the subject matter
thereof lacks inventive ingenuity in view of the patent to
Savage, as the difference thereover is held to be obvious to
one of ordinary skill in the art to which the alleged
invention pertains.
Some of the compounds listed in claims 1 and 16 are
disclosed by Savage and the remaining organic compounds in
the claims are considered obvious alternatives in view of
Savage.
In his last amendment, dated June 13, 1989, the applicant
has amended claims 1 and 16 by specifying that the organic
compound has a boiling point or sublimation point of 40 to
350.degree.C. This feature is considered obvious because most of
today's electric motors operate within these temperature
limits and it is clear that if the interior of the motor has
to be filled with the vapour of an organic compound, the
organic compound selected must have a boiling or sublimation
point such that the compound will be vaporized by heat
during operation of the motor.
The applicant also argues in his letter dated June 13, 1989
that "the motor disclosed in United States Patent No.
2,703,372 is intended to be used at altitudes of the order
of 35,000 feet and more. Therefore the air or gas to be
supplied between the brush and the commutator contains
oxygen in a low concentration (page 2, lines 5-9)."
Applicant's attention is directed to column 2 lines 10-14 of
United States Patent 2,703,372 where it is clearly disclosed
that "the invention is applicable to polar regions of the
earth, desert regions and test chambers" From this
statement, it is clear that this motor is not intended to be
used only at-altitudes of the order of 35,000 feet and more.
The arguments presented by the applicant to explain the
effect of a low-oxygen concentration at page 2, lines 25-28
of his last letter ("the organic material is incompletely
burnt in the '372 patent, as the concentration of oxygen in
the air is small since the motor is to be used at the high
altitudes") are in contradiction with the other arguments
presented by the applicant at page 2, lines 10-13 of the
same letter ("in the '372 patent, a large energy is supplied
to the motor, an organic compound having a large molecular
weight of 9,000 can be used and the black material formed is
completely burnt").
The applicant also argues that "in the present invention,
the generation of such black materials is prevented so as to
maintain the electric contact between the brush and the
commutator" (applicant's letter dated June 13, 1989 bottom
of page 2).
At page 2, lines 4-5, of the disclosure the formation of the
black material is defined with the following terms: "a
mixture of carbon and metal powder formed between the
brushes and the commutator segments" and at page 5, lines
18-20 "probably a mixture with powder abraded from the brush
and the commutator".
Savage discloses, at lines 18-21 of column 2, that this
invention is particularly applicable to minimize wear of
carbonaceous brushes employed as current collector contact
members in electrical machines. From this statement it is
clear that the invention disclosed by Savage will also
reduce the formation of powder abraded from the brushes.
In response to the Final Action, dated June 21, 1990, the
applicant states, in part, as follows:
In a prior response to an Examiner's Action, applicant
argued that Savage related only to electrical equipment
operated at high altitude. As the Examiner correctly
pointed out, the Savage disclosure makes it clear that other
operating environments were contemplated. In trying to
identify the difference of the present invention from
Savage, the essential point was unfortunately not expressed.
The true difference of the present invention from Savage is
that Savage addresses quite a different problem from that of
the present invention and there is no reason for a person
skilled in the art to believe that the solution to the
problem addressed by Savage would be useful as a solution to
the problem addressed by the present invention.
The problem addressed by Savage is that of rapid brush wear
in electrical equipment of large current capacity when
operated in conditions of very low humidity because of the
lack of the lubricating effect normally caused by water
vapour in the air (see Column 1, lines 56 to 65). The main
operating environment of low humidity which Savage
contemplated was one of high altitude, and this was the
reason this was mentioned in the prior response, but he
suggested others (Column 2, lines 6 to 14). In all cases,
however, the message to be derived from Savage on a normal
reading of this document is that if you want to operate
electrical equipment of large current capacity in an
atmosphere of low humidity, you must use water vapour or the
vapours of organic materials to provide the necessary
lubrication or otherwise brush life will be severely
reduced.
The present invention, in contrast, is not necessarily
concerned with the problem of what happens in unusual
operating conditions of this type and is instead concerned
with the formation of "black material" during the operation
of electrical machines of small current capacity (such a
(sic) motors used for tape recorders and the like) under
normal operating conditions. The production of "black
material" does not necessarily lead to premature brush wear
(although this is often observed), but instead leads to
abnormal operating performance which reduces the
effectiveness of the equipment even if the brushes are still
within acceptable wear tolerances.
The harmful effects of "black material" are believed to be
limited to the operation of electrical equipment of small
current capacity rather than the equipment of large current
capacity of the type disclosed in Savage. Equipment of
large current capacity is apparently capable of overcoming
any problems caused by "black material."
Following the Hearing, the applicant submitted, on February 16,
1992, clarification with respect to the use of a mixture
containing 50% styrene in example 21 of the disclosure, and on
February 18, 1992 amendments to the disclosure and claims of the
application.
The issue before the Board is whether or not the claimed
invention is patentable in view of the above referenced United
States patent. Upon reading the Savage reference, the Board
extracts the following main points:
i) the United States patent is concerned with minimizing brush
wear or wear between the current collector and the engaging
contact member that occurs in larger types of electrical
motors and generators, particularly those used in aircraft;
ii) the problem addressed by the patent is premature brush wear
in large electrical motors operating under low humidity
environments such as at high altitudes or in a desert; and
iii) the solution to the problem is to provide a supply of water
vapour or vapours of organic compounds to the brush-
commutator environment.
The invention disclosed in the instant patent application is
concerned with the following:
i) improving the operational characteristics of small electric
motors, particularly wow and flutter problems associated
with these motors when used in tape recorders or video tape
recorders; and
ii) preventing the formation of hard, abrasive material
occurring under normal operating conditions, which causes
the above wow and flutter problems.
The applicants's solution to the above problem is to supply
vapours of organic compounds to the brush-commutator environment.
In determining the question of obviousness, the Board turns to
the following quotation from Beecham Canada Ltd. v. Procter &
Gamble Co. (1982), 61 C.P.R. (2d) 1, wherein it is stated at page
27:
The question to be answered is whether ... an unimaginative
skilled technician, in the light of his general knowledge
and the literature and information available on the subject
available to him ..., would have been led directly and
without difficulty to the invention.
The test the Board must apply to the present case is whether a
technician skilled in the art of small electric motors and their
operation in tape recorders and video tape recorders would, if
confronted with wow and flutter problems in the recorders, and
given the Savage disclosure, be lead directly and without
difficulty to apply gaseous organic vapours to such small motors
in order to reduce the operational problems associated therewith.
We note that the inventions described in the instant patent
application and in the United States patent generally relate to
extending the operating life of electrical motors. The basic
problems sought to be resolved are, however, quite different.
The patent is concerned with brush wear in large motors or
generators, whereas the application under consideration is
concerned with wow and flutter difficulties found in small
motors.
Moreover, the invention in the patent is designed to overcome
problems arising from the operation of motors or generators at
high altitudes or desert-type of environments having a low
humidity, while the invention under consideration is not
particularly concerned with that problem since the motor is
intended to operate under normal atmospheric conditions.
Finally, the lack of lubrication due to low humidity is addressed
in the patent, whereas the invention in the application is
concerned with preventing the formation of a hard, abrasive,
black material in the contact area between the brush and the
commutator of a small motor.
We also note that both the patent and the application under
consideration use organic compounds, selected from groups which
overlap in the two disclosures, to supply the desired vapour to
the brush-commutator area. All of said compounds are old and
known in chemistry, and the fact that the same or similar
materials are used to solve two distinctly different problems in
the operation of electric motors does not by itself lead us to
the conclusion that the instant invention is obvious.
Turning to the amended claims submitted on February 18, 1992, we
note that the claims have been amended and that the applicant has
added statements concerning the use, and operating voltage and
current of the motor. Amended claim 1 reads as follows:
A small-size motor of a type comprising brushes and a
commutator slidably engaged with the brushes and operated at
a voltage of 1 to 30V and with a current not larger than 1A,
as used in tape recorders, video tape recorders and the
like, a vaporized organic compound being provided in the
motor interior, characterized in that the motor interior is
filled with an atmosphere containing a vapour of at least
one organic compound selected from the groups consisting of
mono- or polyhydric alcohols, ethers, cyclic ethers,
ketones, ether alcohols, ester alcohols, aminoalcohols,
carboxylic acids, amides, primary, secondary and tertiary
amines, imidazoles, imidazolines and monocyclic oxyterpenes,
the organic compound having a boiling or sublimation point
between about 40 and 350.degree.C.
The Board is of the view that the amended claims define the
invention over the prior art cited by the examiner in the Final
Action. The Board therefore recommends that the amended claims
submitted on February 18, 1992 be accepted as overcoming the
Examiners's Final Action on the basis of lack of inventive
ingenuity.
F.H. Adams V. Duy A. Legris
Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I concur with the findings and recommendation of the Patent
Appeal Board. 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 13th day of May 1993