IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Obviousness- Spinner Nozzle Assembly for Cylinder Diagnosis
Patent application 584,632 having been rejected under Rules 47(2)
of the patent Rules, 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
John Russell Uren
c/o Russell & DuMoulin
Suite 1500
1075 West Georgia Street
Vancouver, B.C.
V6E 3G2
Patent application 584,632 was filed on November 30, 1988 in the
name of David N. Schuh, and is entitled "Spinner Nozzle Assembly
for Cylinder Diagnosis". This decision deals with a request for
a review by the Commissioner, under Section 47(2) of the Patent
Rules, in respect of an Examiner's Final Action dated January 11,
1991. The Patent Appeal Board, comprised of Mr. F. Adams, Chair;
Mr. M. Wilson and Mr. R. Kesten, Members, conducted a Hearing by
teleconference on November 27, 1991, with Mr. John R. Uren,
Patent Agent of the firm Russell & DuMoulin representing the
applicant.
The application is directed to a nozzle assembly used for
assisting in the diagnosis of cylinder condition, and to a method
of wetting the walls of the cylinder of an engine with oil using
the nozzle assembly. The application describes the flow rating
technique of testing reciprocating engines to determine the
condition of the cylinders as one in which both "dry" and then
"wet" tests are conducted. The "wet" test involves the "wetting"
of the cylinder walls with oil. This "wetting" is carried out by
inserting an oil nozzle into the cylinder through the spark plug
hole and emitting oil from the nozzle.
Figure 1 of the application shows a prior art device used to
"wet" the cylinder wall, figure 2 shows the applicant's device in
operation and figures 6A and 6B show the spinner portion of the
nozzle.
(see formula I)
(see formula I, II, III)
The applicant explains that since oil nozzles, such as the one
shown in Figure 1, emit oil only in a direction which is coaxial
with the nozzle, the cylinder wall may not receive an even
coating of oil, resulting in uncertainty in the test readings.
The applicant's nozzle assembly is shown in figure 2 and
comprises a body portion 31, oil supply tube 24 and a spinner
portion 32 mounted on the body portion and being rotatable about
the longitudinal axis of the nozzle. There are liquid emitting
holes in the spinner portion which are normal to the axis and
through which oil is sprayed about a 360.degree. arc as the spinner
portion rotates about the axis. The wall of a cylinder is
"wetted" by inserting the nozzle assembly through an access hole
into the cylinder, oil under pressure is provided to the nozzle
assembly and is sprayed from the spinner of the nozzle assembly
in a direction substantially normal to the axis of the spinner
about substantially 360·. In the embodiment of figures 6A and
6B, the spinner is round and composed of two identical halves 51
and 52, one half having oil conveying grooves 53 ground at four
locations, the two halves being soldered or brazed together. An
important aspect of this embodiment is that each half of the
spinner has a portion of the annulus 60. Despite the importance
attached to this feature, the reference number 60 which is
mentioned in the disclosure does not appear on the drawings.
In the Final Action, the Examiner refused the claims and the
application in view of the following citation:
Canadian Patent
720,014 October 19, 1965 Copeland et al
The inventors named in this patent are Copeland and Coe. At
various times during the prosecution of this application, this
patent is referred to as the Coe et al patent and at other times
as the Copeland et al patent.
(see formula I)
The Copeland patent relates to a rotary spray head which is
adapted to be attached to the discharge end of a fluid conduit to
effect a rotary spray from the end of the conduit. Figures 1 to
4 of that patent are shown above.
The rotary spray head is shown generally as element 10 in figure
1 and the spinner nozzle as element 28. The spinner nozzle is
mounted on the end of the spray head and is supplied with
pressurized liquid (specifically water) via tube 14, and holes
54. The liquid enters the annulus 32 and is sprayed through
holes 52. Because the nozzle is rotatably mounted on the spray
head, it is caused to rotate by the force of the pressurized
liquid leaving the nozzle.
In the Final Action, the Examiner stated in part:
"Coe discloses essentially the same spraying structure
as the present one.
That the present device is for spraying oil is not
significant because an artisan is but expected to adapt
a known spraying structure for a different liquid if a
different liquid is to be sprayed.
That the present device is allegedly smaller than the
reference device is also not patentably significant as
modern technology and materials allow the manufacture
of very small devices and elements and the utilization
of such technology and materials is but expected of an
artisan.
That the spinner is formed from at least two individual
pieces is not patentably significant for the following
reasons:
No where in the original disclosure is there a
statement or indication that the two piece spinner is
an important or essential part of the present alleged
invention. In fact there is no indication in the
original disclosure that the spinner shown in figure 4a
and 4b is made from two pieces. Only on the last page
7 of the original disclosure is the two piece spinner
mentioned and even then there is no indication that the
two piece spinner is essential or important.
Therefore the original disclosure clearly does not
describe the two piece spinner as an essential part of
the present device and a patent can of course not be
granted for non essential details or parts.
Further patents are not granted for mere differences.
To be patentable, a difference must be unobvious to a
skilled artisan and must also constitute an advance or
improvement over the prior art. The original
disclosure does not describe the two-piece annulus as
an improvement over the prior art, or in which respects
or how it improves prior art devices. In fact only the
spinner shown by figures 6A and 6B are (sic) described
as comprising two identical halves. Therefore the
original disclosure describes the two-piece spinner as
a mere difference and patent cannot be granted for such
a difference.
Aside from the content of the original disclosure no
improvement or invention can be ascertained by simply
substituting two-piece spinner for the known one-piece
spinner.
Even assuming that the disclosure described the two
piece spinner as an essential requirement, then the
resulting sprayer would still not have any patentable
features simply because the two pieces of the spinner
are soldered or brazed together, resulting in a unitary
spinner as disclosed by Coe.
The fact that an article is manufactured by a different
method from other similar articles does not render the
article patentable. In order to be patentable an
article must have different novel structural features
from other articles."
In response to the Final Action, Applicant summarized the alleged
invention, setting out the prior art method of injecting oil into
the cylinder of a reciprocating engine and the shortcomings
associated therewith, and reiterated the features of applicant's
alleged invention which he stated were not shown in the Copeland
patent. These include the liquid sprayed (water for Copeland and
oil for Applicant), the reason for spraying (cleaning for
Copeland and wetting for Applicant) and the construction of the
spinner portion (one piece for Copeland and 2 pieces for
Applicant).
The applicant's reply included the following:
"To make the annulus 60 inside the spinner 32 of the
nozzle as large as possible given its small size, two
individual pieces 51, 52 (Figures 6A and 6B) are used
for the spinner. The reason two pieces must be used is
set out in applicant's response dated December 28,
1989."
In the December 28, 1989 response, Applicant stated:
"..an annulus is required in the spinner in order for
the spinner to rotate by the pressure of the oil being
emitted from the holes. Coe et al teach a single piece
being used for the spinner or rotary spray head as is
clear from the section lines of Figure 3 and the
absence of any contrary teachings in the specification.
In order for Coe et al to form their single piece
spinner, it is necessary for them to utilize a boring
tool, such tool to be inserted along the axis of the
spray head 28 about which the spray head rotates and,
subsequently, to remove material which thereby forms
the annulus 32.
For the tool to be made small enough to be inserted
into a spark plug hole in order to perform engine
diagnoses, it is practically impossible to form an
annulus in a spinner from a single piece of material
since the boring tool necessary to form the annulus is
simply too large to be inserted along the axis of
rotation and, thereafter, extend outwardly therefrom to
form the annulus so that the necessary material can be
removed."
In the reply to the Final Action, Applicant also stated:
"The Copeland et al Canadian Patent 720,014 teaches a
rotary spray head 10 which provides a rotary spray of
water in which it is designed to assist in the cleaning
of the interior of closed vessels such as tanks,
conduits and the like. The annulus 32 is contained
within the spinner 28 which is made from a single piece
of material. Copeland et al do state that one of their
intentions is to "construct...[the rotary spray head]
in a manner whereby its maximum diameter is maintained
at a minimum..." but they do not contemplate or
disclose a spinner made of two pieces.
There is no suggestion whatsoever in Copeland et al
that oil could be used and, indeed, since the Copeland
et al apparatus teaches cleaning the interior of closed
vessels, oil clearly would not even be contemplated by
Copeland et al. This reference, therefore, teaches
away from the use of oil in a cylinder. Furthermore,
Copeland et al teach a single piece spinning nozzle not
a two piece nozzle as required by the claims. Since the
boring tool used to machine the annulus of the Copeland
et al spinner must be a certain minimum size, the
Copeland et al reference would be too large to insert
through a spark plug hole and would, therefore, be
inoperable in the operating environment intended for
the present invention."
The issue before the Board is whether or not claims 1 to 7 are
patentable over the cited art and whether the application
discloses anything patentable over that art.
Claim 1 is directed to the nozzle assembly and reads as follows:
A nozzle assembly for use in diagnosing an engine
cylinder comprising means for supplying oil to a body,
a spinner mounted on said body and being rotatable
about an axis parallel to the axis of said cylinder
when said nozzle assembly is inserted into said
cylinder, said spinner having an annulus, oil emitting
holes in said spinner being offset from and extending
substantially perpendicular to said axis so as to emit
oil onto the walls of said cylinder, said oil emitting
holes communicating with said annulus, said spinner
comprising at least two individual pieces joined
together to form said spinner, each of said pieces
including a portion of said annulus.
Claim 5 is directed to a method of wetting the walls of an engine
cylinder and reads as follows:
A method of wetting the walls of an engine with oil
comprising the steps of inserting a nozzle assembly
through an access hole into said cylinder, providing
oil under pressure to said nozzle assembly, and
emitting oil from a spinner about an axis parallel to
the axis of said cylinder, said oil being emitted by
said spinner in a direction about substantially 360
degrees.
The applicant has highlighted what he considers to be the
differences of the alleged invention over the prior art as shown
in the Copeland et al patent as being: use of the device, the
operating environment, the liquid used and the non-unitary
construction of the spinner.
It is the opinion of the Board that the use of the device in the
specific environment is not an unobvious solution to the problem
of uniformly wetting or spraying cylinder walls evenly. The well
known way in which the oil was admitted to the cylinder in the
past was by inserting an oil can spout or nozzle through an
access opening i.e. a spark plug opening, and injecting oil.
Confronted with the problem of uneven distribution of liquid
through the use of a static oil injecting device, a person
skilled in the art of nozzles would have no trouble in using a
rotary spray head such as shown in Copeland. The Board believes
that this skilled person would be led directly and without
difficulty to the use of a spinner having the attributes
disclosed by the applicant. Indeed, nozzles of this type are
well-known and have been designed precisely for the purpose of
ejecting a liquid about a 360.degree. arc which is perpendicular to the
axis of the nozzle.
The Copeland et al patent discloses the concept of spraying the
walls of a closed vessel with a liquid, albeit for the purpose of
cleaning the interior of the vessel, and for evenly discharging
the fluid. This even discharge of fluid would translate into an
even coating of fluid on the walls of cylindrical vessels.
Furthermore , the fluid used, in applicant's case oil, is
dictated by the environment and the problem i.e. use of oil to
carry out "wet" test of cylinders. Copeland sprays water while
the applicant sprays oil. However, there is no indication in
Copeland that the spinner nozzle is specifically adapted to spray
only water. Likewise, applicant makes no mention of how his
nozzle is specifically adapted to spray only oil. It would
appear that the choice of liquid is based only on the application
and that this type of nozzle can be used with whatever liquid is
appropriate. Applicant has not specifically modified his nozzle
to spray oil. In Detroit Rubber Products Inc v Republic Rubber
Co., [1928], Ex.C.R., 29 at 33, Audette J. stated
The application of a well-known contrivance to an
analogous purpose, without novelty in the mode of
application, is not invention and is not a good ground
for a patent.
Applicant argues that the Copeland et al device would be
inoperable if intended to be used for engine diagnosis since the
apparatus could not be inserted into an engine cylinder through a
spark plug hole because it is too big. Applicant reasons that
the spinner requires an annulus to provide rotation by oil
pressure and must be made small enough in diameter to fit through
a spark plug hole. Further, a single piece spinner would be
nearly impossible to produce since all known boring tools are too
large to be inserted along the axis of rotation of a very small
spinner. Applicant solves this problem by providing a spinner
which is formed from two pieces soldered or brazed together.
The Board notes that the embodiment claimed, including a spinner
comprised of two parts that are soldered or brazed together, is
one of the embodiments disclosed in this application. The other
embodiment which is disclosed and illustrated in the application
includes a one piece spinner which has a cavity located in the
spinner to receive the oil and cause the spinner to spin. From
this description it is evident that this spinner has an annulus
which performs the same function as the annulus in the two piece
spinner. There is no mention of any special manufacturing
techniques being employed to make this spinner nor any problems
in making it small enough to fit through spark plug hole. This
leads the Board to conclude that this spinner is made using
standard manufacturing methods.
As a result, the Board is not convinced that it would be almost
impossible to produce a very small unitary spinner which could
fit through a relatively small hole, such as a spark plug hole,
as stated by the Applicant in the response dated December 28,
1989. The use of a two piece device which is soldered or brazed
together to form a unitary apparatus instead of a unitary device
is merely a matter of choice. Either type of spinner would
achieve the desired result and it is within the purview of a
skilled worker to choose the most convenient method of
manufacture. This choice does not require inventive ingenuity.
In summary the Board believes that the changes made to the prior
art devices described in the present application do not
constitute inventiveness.
Therefore, it is recommended that the decision in the Final
Action to refuse the application be affirmed.
F.H. Adams M. Wilson R. Kesten
Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I have reviewed the prosecution of this application and concur
with the reasoning and findings of the Board. Accordingly, I
refuse to grant a patent on this application. The applicant has
6 months within which to appeal this decision under the provision
of Section 41 of the Patent Act.
M. Leesti
Commissioner of Patents
Dated at Hull, Quebec
this 18th day of May 1993