A Study on the Patent Law Standard of Non-obviousness: Appendix 1

In our view the applicant has made an advance in the art which is the result of a sufficient element of ingenuity to warrant allowance of the application: Merco Nordstrom Valve Co. et al. v. Comer ((1941), 1 C.P.R. 75 at p. 93, [1941] 2 D.L.R. 10, [1942] Ex. C.R. 138 at p. 155). The problems with which he was concerned were different than those of the citation, and the means and specific arrangements he has used to overcome those problems differ from what went before.

We must remember that the inventive step may be in the idea or concept, or in the means of carrying out the idea or concept, or in a combination of both. We think that this application falls in the latter category and we are not persuaded, in view of the complete lack of teaching or even a suggestion of what the applicant regards as the advance in the art, that the applicant has not made a patentable advance in the art. It is without doubt a novel structure and in our view there is ingenuity present.

As mentioned above, Friedrichs was not concerned with this problem and it follows that he gave no solution for it.

To summarize, we find that there is present a novel combination and we are satisfied that there is ingenuity in the invention, because the several elements of the claimed combination co-operate to produce a highly desirable new result which, in our view, is not obvious.

Certainly, the mere use of a different material with obvious and known properties to construct a bag with a known structure cannot be considered inventive. Tying the bag with a cord at the top is indeed a well-known and old bag sealing method.

At first blush the cited art appears to be very close to the present invention, but we must realize that the problems facing a person requiring a sack to hold up to "several tons" is quite different from those required for a single shopping bag.

The declarations by Messers. L.S. Hansen and E. Mykehust show the problems faced by the inventor, what was common in the art and the advantage and commercial success of the present invention.

There are no reasons apparent why we should disagree with the applicant's argument that several important and unobvious advantages flow from the concept of employing a relatively "flat cross section" yarn for the warp, and a relatively "round cross section" multifilament yarn in the weft. For example, the applicant maintains that his backing has a lower weight per unit area, a lower cost, a better balance of strength and the fact that the piercing of the tufting needle will occur only, or substantially only, in the warp or flat yarns which can withstand the force much more readily than the round weft yarns.

It has been authoritatively stated that the art of combining two or more parts into a new combination whether they be new or old, or partly new and partly old, so as to obtain a new result, or a known result in a better, cheaper, or more expeditious manner, is valid subject-matter if there is sufficient evidence of thought, design, ingenuity in the invention, and novelty in the combination. In a recent and as yet unpublished decision, Omark Industries Inc. et al. v. Sabre Saw Chain (1963) Ltd. April 14, 1976 [since reported 28 C.P.R. (2d) 119] for example, the Federal Court of Canada, in holding an improved saw chain to be patentable said, at p. 18 p. 133 C.P.R.:

The subject invention is simple, but is an improvement which eliminated "hooking" and substantially reduced "kickback" in the operation of a saw chain; and has enjoyed substantial commercial success. Neither the Cox nor the Merz patents show a safety or guard link (and this is admitted by the defendant) and do not constitute anticipation. On the evidence, the subject-matter of the subject patent is an advance in the art and therefore an inventive step.

It is also settled law that the matter of obviousness is to be judged by reference to the "state of the art" in the light of all that was previously known to persons versed in the art: see Allmanna Svenska Elektriska A/B v. Burntisland Shipbuilding Co. Ltd. ((1952), 69 R.P.C. 63 at p. 69).

It has been authoritatively stated that the art of combining two or more parts into a new combination whether they be new or old, or partly new and partly old, so as to obtain a new result, or a known result in a better, cheaper, or more expeditious manner, is valid subject-matter if there is sufficient evidence of thought, design, and ingenuity in the invention, and novelty in the combination: See Merco Nordstrom Valve Co. et al. v. Comer ((1941), 1 C.P.R. 75 at p. 93, [1941] 2 D.L.R. 10, [1942] Ex. C.R. 138 at p. 155).

 

We are satisfied, therefore, that claim 1 is directed to subject-matter which satisfies the requirement of sufficient evidence of ingenuity in the invention, and novelty in the combination. Nothing essential to the invention and necessary or material for its practical working and real utility can be found substantially in the prior publications: The King v. Uhlemann ((1949), 11 C.P.R. 26, [1950] Ex. C.R. 142, 10 Fox Pat. C. 24, p. 105-106). Claim 1 in our view should be allowed.

He basically overcomes these problems by using two stoker-rod mechanisms arranged side by side and reciprocating out of phase. In other words, the several elements of the claimed combination co-operate to produce a highly desirable improved result, which, in our view, is not obvious, because the claimed combination is clearly novel and, we believe, there is ingenuity in the invention.

While this may roughly be shown by Bevan in a snow plough, it is new in the present combination, and for a totally different use. Another feature of the claims is that the flights define an unrestricted annular clearance about the shaft. This is not shown by the cited art.

To summarize, it is clear that the combination is novel and we are satisfied that the claims properly define the scope of monopoly of an invention described in the disclosure and illustrated in the drawings. It is our view that the several elements of the claimed combination co-operate to produce a highly desirable improved result which we believe is not obvious from the cited references.

On the record before us, there is clearly a novel product produced, and in our view, there is ingenuity in the idea or concept of the invention because, the applicant has produced a highly desirable improved result not taught, or suggested, by the cited art.

In our view there is sufficient ingenuity in thought and design of the present apparatus and the claim properly defines the scope of monopoly of an invention described in the disclosure and illustrated in the drawings.

Applicant's cabinet-mounted plumbing supply is consequently a simpler arrangement than that used in the cited art.

While it is a relatively simple step to use stationary water supply connection for a pivoting basin, still the art cited utilizes a complex swivel joint arrangement for this purpose. Consequently these may now present the necessary scintilla of invention to justify a patent, and we recommend that the final action be withdrawn.

We have carefully reviewed the prosecution and studied the cited references. While Lackey does show a refrigeration box, the Monroe citation is concerned with strengthening the corners of a pallet box. Neither of these patents teaches or suggests the present claimed combination. In our view there is sufficient ingenuity in thought and design of the present apparatus and the claim properly defines the scope of monopoly of an invention described in the disclosure and illustrated in the drawings.

There is clearly novelty in the combination and on the record before us, especially in view of the points raised by Mr. O'Gorman, we are satisfied that there is ingenuity in the invention, because there is no teaching nor suggestion of the present combination. This combination overcomes the problem of "ice deposit" on the evaporator. It also provides a buffer between the heat source and the evaporator so that the evaporator can operate in a near "moisture free" environment in a thermally conductive hermetically sealed container, which according to the applicant is most advantageous. In other words we are not prepared to recommend to the Commissioner of Patents that the applicant is not entitled by law to a patent in the present circumstances.

As mentioned, none of the six references discussed at the hearing placed the pump in the instant location. The applicant claims many advantages from his new combination and also commercial success.

In the applicant's visor frame structure a recess is required to house the transmitter. There is also a switch arrangement on the visor to supply power from the car battery. Mounting the transmitter in the visor frame housing does yield certain advantages which were stated above. In our view this represents a combination where all the elements contribute their part to produce a unitary result, which is reflected in proposed claims 1 to 6.

While we agree with the examiner that the straight-forward expedient of providing springs to retain something opened or closed is in everyday use, we must remember that improvements to known things may contribute towards a final combination which is a patentable advance in the art.

Referring to a number of court cases in his text, Canadian Patent Law and Practice, Fourth Edition, Fox makes the following statement on page 65:

There may be invention in what, after all, is only simplification. Simplicity is, in itself, no objection to a patent: indeed, it may be actually a recommendation. The courts look with favour upon any slight change whereby an improvement is effected and find invention in it if they can, for slight alterations and improvements may produce important results and may disclose great ingenuity.

In the Federal Court Case, O'Cedar of Canada Limited v. Mallory Hardware Products Limited (1955), 15 Fox Pat. C 134, at page 152 [24 C.P.R. 103 at p. 123, [1956] Ex. C.R. 299], Thorson P. summarizes a number of decisions in supporting his findings that simplicity does not negate invention, as follows:

Consequently, there is help to be found in decisions indicating what should not be considered as a negation of inventive ingenuity. As examples of what I have in mind I refer to decisions to the effect that the simplicity of a device is not proof that it was obvious and that inventive ingenuity was not required to produce it. This negation of a common attack on the validity of a patent is found in many cases. An early leading statement was made in Vickers, Sons and Co. Limited v. Siddell (1890), 7 R.P.C. 272 where Lord Herschell said, at page 304:

If the apparatus be valuable by reason of its simplicity, there is a danger of being misled by that very simplicity into the belief that no invention was needed to produce it. But experience has shown that not a few inventions, some of which have revolutionized the industries of this country, have been of so simple a character that when once they were made known it was difficult to understand how the idea had ben so long in presenting itself, or not to believed that they must have been obvious to every one.

It may be that the invention is a small one, but slight differences in these cases sometimes produce large results. Patent Exploitation Ltd. v. Siemens Bros. N Co. (1904), 21 R.P.C. 541 at p. 549 per Lord Davey.]

Though simple, his device cannot be said to have been obvious. [Electrolier Mfg. Co. v. Dominion Mfrs. Ltd., [1934] 3 D.L.R. 657 at p. 661, [1934] S.C.R. 436 at p. 441 per Rinfret J. (as he then was).]

...that the narrower, lighter stanchion system should be considered as an inventive departure from the know devices.

The law on this subject is, in their Lordships' opinion, accurately summarized by Maclean, J., in his judgment. His statement is as follows, [1927] 2 D.L.R., at p. 917:-

There must be a substantial exercise of the inventive power or inventive genius, though it may in some cases be very slight. Slight alterations or improvements may produce important results, and may disclose great ingenuity. Sometimes it is a combination that is the invention; if the invention requires independent thought, ingenuity and skill, producing in a distinctive form a more efficient result, converting a comparatively defective apparatus into a useful and efficient one, rejecting what is bad and useless in former attempts and retaining what is useful, and uniting them all into an apparatus which taken as a whole is novel, there is subject-matter. A new combination of well-known devices, and the application thereof to a new and useful purpose may require invention to produce it, and may be good subject-matter for a patent.

... the applicant has demonstrated independent thought and ingenuity in producing a combination that produces useful results. We believe there has been exercise of the inventive faculty to improve upon the known apparatus by changing from what had been accepted as the norm in the printing art to an arrangement that dispenses with previously required elements to achieve unexpected results. Moreover, the new combination produces effective results with reduced costs.

While evidence of commercial success by itself does not necessarily demonstrate invention, the step taken by the applicant indicates that it must have fulfilled to some degree "a long felt want", for the French Patents are over 60 years old.

On the matter of commercial success, it was stated by Thorson, P., in The King v. American Optical Co. (1950), 13 C.P.R. at p. 113, [1950] Ex. C.R. 344, 11 Fox Pat. C. 62 at p. 89:

I agree ... that the main reason for its success was that it was superior to the older constructions...

Under all the circumstances, I am of the view that the commercial success of [the invention] is strong evidence that its production was the result of an inventive step...

(Emphasis added.)

The Board is therefore satisfied that there is present a degree of ingenuity which was the result of thought and experiment on the part of the applicant.

We are fully satisfied that the claims before the examiner at the time of the final action were objectionable, and quite properly refused. The Board however has been presented with the additional affidavitory evidence, testifying to the unexpected results flowing from the applicant's invention (when fully defined). That invention has won wide acceptance, and as indicated previously, 31 licences under it have been taken out by competitors. It has had early and extensive success commercially. All of these considerations persuade us that inventive ingenuity has been exercised.

While evidence of commercial success by itself does not necessarily demonstrate invention the results obtained by the applicant company indicates that it must have fulfilled, to some degree, a "want" for this type of panel fastening arrangement. While the concept of removable panel means is shown in the British patent, we are unable to find any indication of commercial use of the magnetic attraction attachment means taught in it. There is no doubt that building material supply industry is very competitive and since applicant is a relatively small company it would not have had the capacity either to monopolize this field or to push expensive sales campaigns. Nor are the users of the invention likely to be influenced by advertising pressures. We have come to the conclusion consequently, that a major reason for the commercial success of this invention is its practical success, one which results in significant labor-saving costs during removal and reinstallation.

There is no invention in a mere adaption of an idea in a well known manner for a well known or clear purpose in a well known art, without ingenuity...

(emphasis added) and at p.99 [quoting Lord Lindley in Gadd and Mason v. Mayor, etc., of Manchester (1892), 9 R.P.C. 516 at p.524]:

A patent for the mere new use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad, and cannot be supported. If the new use involves no ingenuity, but is in manner and purpose analogous to the old use, although not quite the same, there is no invention.

(Emphasis added)

The Board went on to say:

... that substitution of material in which there is served no function or purpose different from the old use, does not merit the distinction of a patent monopoly unless the inventor is the first to see practical difficulties overcome (or advantages gained) as a result of his own ingenuity: see also Somerville Paper Boxes Ltd. et al. v. Cormier et al., (1939), 2 C.P.R. 181 [1941] Ex. C.R. 49. In the instant application the purpose and function of the "spunbonded material" is different from any previous suggested use for it, and therefore the application does not fail for this reason.

We appreciate the examiner's concern with the substitution of the material question that arises due to applicant's selection of resilient material over the applied reference. However, applicant's structure adds the feature that the second sleeves bear laterally one against another to achieve a non-sagging disposition of the rings, while at the same time sealingly retaining the tubes. This feature is not present in either the Swiss patent, or in the Gustafson patent.

We have considered the arguments made and are of the opinion that the combination of resilient rings positioned in a plate both to support tubes and to contact one another to prevent sagging under operating conditions cannot fairly be construed from the references of record before us. This produces special advantages which we believe render the invention patentable over the art cited, and which is not obvious from that art.

All prior art attempts at producing closely packed ducts in cordierite articles have produced articles that exhibit a transverse strength of about 50 PSI along one transverse axis."

This, in our view, is surprising and in the absence of any evidence to the contrary, we believe we should accept the applicant's statement. ... Applicant does not, of course, have to know the reason why he gets greater strength, only that he does.

In order that a new use of a known device may constitute the subject-matter of an invention, it is necessary that the new use be quite distinct from the old one and involve practical difficulties which the patentee has by inventive ingenuity succeeded in overcoming; if the new use does not require any ingenuity but is in a manner and purpose analogous to the old use, although not exactly the same, there is no invention.

Is the invention so obvious that it would at once occur to anyone acquainted with the subject and desirous of accomplishing the end?"; and in Savage v. Harris (1896), 13 R.P.C. 364 at 370 in which the question to be considered is whether the alleged discovery lies so much out of the track of what was known before or not naturally to suggest itself to anyone thinking on the subject. It must not be the obvious or natural suggestion of what was previously known. (emphasis added)

... that the solution claimed by the applicant is one that would naturally have occurred to persons of ordinary intelligence and acquainted with the subject-matter who gave his mind to the problem. It is merely an exercise of expected skill, even though the idea might well be a meritorious one, for a person versed in the art to operate the fans in a manner to prevent dispersal of the fibers, and it falls within the category of patent which concerned the Supreme Court in the above quotation from Crosley Radio Corp. v. Can General Electric Co.. ([1936] 3 D.L.R. 737, [1936] S.C.R. 551).

The Board and the Commissioner refused the application stating that:

When the applicant created the problem of instability, he selected one of the many obvious solutions to overcome that problem. It is a fact that both simple and complex counterweights are used in nearly every mechanical art to provide stability. In our view, therefore, any inventive step would have to reside in the use of an inventive skill to overcome the installation problem.

and

He has overcome the instability of the stove by adding ballast in the same manner as is employed in any mechanical art, and which was shown in the cited reference. The function and use of counterweights are well known and any technician with ordinary skill in his art would use a counterbalance if it serves his purpose better or more economically than other obvious alternatives.

In our view the appearance of the stove in general, colour, lights, dials, etc., and the pull-out oven feature would enhance the sale of the stove. It would not result from a concealed counterweight, about which most buyers would be unaware. In any event the claims do not relate to a pull-out oven, nor does the applicant deem this a novel feature.

We have considered all the arguments presented and have carefully reviewed the application in an effort to find a description of subject-matter which can be considered as an invention. In our view the differences, as discussed above, are such as can fairly be held to be within the stride of a competent technically qualified practitioner in the relevant art applying his mind to the problem, if indeed any problem existed in view of the cited patents, especially the patent to Meldrum. We are therefore not persuaded that a patentable advance in the art has been made. It follows that the claims, which must characterize any invention described in the disclosure, fail to define patentable subject-matter and no patent may be granted.

...we think the comments of Justice Jackett in Leithiser et al. v. Pengo Hydra-Pull of Canada Ltd. (1974), 17 C.P.R. (2d) 110 at p. 115, [1974] 2.F.C. 954, 6 N.R. 301, are applicable when he stated:

...there is a further requirement that the thing claimed as an invention must be the result of inventive ingenuity and not a mere "workshop" improvement or development. See Com'r of Patents v. Farbwerke Hoeschst Aktiengesellschaft vormals Meister Lucius & Bruning (1963), 41. C.P.R. 9, [1964] S.C.R. 49, 25 Fox Pat. C. 99.

This view was also expressed by Justice Maclean in Niagara Wire Weaving Co. v. Johnson Wire Works Ltd. (1939), 1 C.P.R. 229 at p. 243, [1939] Ex. C.R. 259 at p. 273, [1939] 3 D.L.R. 285, where he said:

Small variations from, or slight modifications of, the current standards of construction, in an old art, rarely are indicative of invention; they are usually obvious improvements resulting from experience and the changing requirements of users.

and at p. 246 C.P.R., p. 276 Ex. C.R.:

No step is disclosed there which could be described as invention. There is not, in my opinion, that distinction between what was known before, and that disclosed... that called for that degree of ingenuity requisite to support a patent. If those patents could be supported it would seriously impede all improvements in the practical application of common knowledge.

It is well-established that a patent cannot be granted for a new use of an old process unless there be some novelty or invention in the adaptation of the old process to the new use, or the overcoming of some difficulty which lay in the way of such application. I am satisfied that the mere reference to a waveguide in the claim does not impart novelty to the process, as the process, with the same ingredients, does exactly what it has done before in the forming of tubing.

In view of the prior knowledge disclosed in the art, and in view of the similarity of purpose and mode of application of the applicant's invention and the prior art, (Pope Appliance Corp. v. Spanish River Pulp & Paper Mills, Ltd., [1926] 3 D.L.R. 902 at p. 915, [1927] Ex. C.R. 28 at p. 42 [affd [1928] 1 D.L.R. 313, [1928] S.C.R. 20; revd in the result [1929] 1 D.L.R. 209, [1929] A.C. 160, 46 R.P.C. 23]) the Patent Appeal Board was satisfied that the applicant had not made a patentable advance in the art. While the idea might be creditable it lacks the prerequisite of inventive ingenuity. It comes within the category of a matter to which the Supreme Court referred in Crosley Radio Corp. v. Can. General Electric ([1936] 3 D.L.R. 737, [1936] S.C.R. 551), when it is stated: "...we do not think 'the inventive element necessary to constitute subject-matter is made sufficiently evident'".

If one works with a hard deposit he will use a high pressure jet of fluid. This, in our view, is an obvious extension of the state of the prior art of cleaning a variety of surfaces using a jet of liquid. It is not denied that the prior art is directed to a different use. The use, however, is analogous and expected skill in view of the wide range of common use of high pressure fluid jets for cleaning. Workman using a jet of fluid to clean any surface should normally experiment with pressures, angle of the jet, velocities and distances to get the best results. The applicant is concerned with the removal of a "lead ring" from the walls of a still. The applied references, however, describe the application of a high pressure jet of liquid employing comparable ranges of pressure and velocity of the jets, and similar way of its application in the removal of various deposits of comparable hardness and tenacity. It is therefore obvious that this method could be applied to any deposit whether it is a lead ring or other incrusted materials.

This, in my opinion, is clearly mere substitution in an obvious manner, and is merely taking advantage which is to be expected as a result of the well known purpose to which magnets may be used. This is, the action or effect of none of the elements embraced by the combination is modified in any material way by the fact that a magnetic means has been used instead of the spring means.

Commercial success may assist in determining the presence of invention in cases of substantial doubt, but in all cases it must be viewed with caution as such success may well be due to causes extraneous to the invention.

...select an alternative that would naturally occur to a competent person desiring to provide an increased weight/damping fluid mass ratio to correct an amount of static imbalance, and the greater the imbalance the greater the weight/damping fluid mass ratio (or vice versa as in Louden [the prior art]).

and

...appellant's specification involved no exercise of inventive ingenuity and was an obvious alternative for one skilled in the art to try for the purpose of increasing the weight of the mass at the point where counterweight is required and improving on the operating qualities of currently available devices.

While the commercial success may assist in determining the presence of invention in cases of substantial doubt, jurisprudence has viewed it with caution as such success may be due to causes extraneous to the invention.

We are satisfied that claims 1, 2 and claim 4 in so far as claim 4 is dependent upon claim 1, fail to disclose a patentable advance in the art. The applicant has achieved a result with a change only in form, doing the same thing in the same way, by substantially the same means, as is taught in the prior art (Lowe-Martin Co. Ltd. et al. v. Office Specialty Manufacturing Co. Ltd. [1939] Ex. C.R. 181).

The shape of a device, however, only has patentable merit when such shape results in some "unobvious" functional effect or result.

and

We think that the following quotation of Maclean, J., in Niagara Wire Weaving Co. Ltd. v. Johnson Wire Works Ltd. (1939), 1 C.P.R. 229, [1939] 3 D.L.R. 285, [1930] Ex. C.R. 259, [affirmed 1 C.P.R. 246, [1940] 4 D.L.R. 576, S.C.R. 700] at p. 243 C.P.R., p. 273 Ex. C.R., is pertinent.

Small variations from, or slight modifications of, the current standards of construction, in an old art, rarely are indicative of invention; they are usually obvious improvements resulting from experience, and the changing requirements of users.

and at p. 246 C.P.R., p. 276 Ex. C.R.:

No step is disclosed there which could be described as invention. There is not, in my opinion, that distinction between what was known before, and that disclosed by Lindsay, that called for that degree of ingenuity requisite to support a patent. If those patents could be supported it would seriously impede all improvements in the practical application of common knowledge.

The comments of the Court, in Lowe-Martin Co. Ltd et al. v. Office Specialty Mfg. Co. Ltd., [1930] 4 D.L.R. 918 at pp. 922-3, [1930] Ex. C.R. 181 at p. 187, are also of interest: "The mere carrying forward of the original thought, a change only in form, proportion or degree, doing the same thing in the same way, by substantially the same means, with better results is not such an invention as will sustain a patent" (p. 922 D.L.R., p. 187 Ex. C.R.), and "It is always necessary to consider the rights of the general public to avoid monopolies on such simple devices as would occur to anyone familiar with the art."

We are not satisfied that the change in location of the thread-control element and the selection of a horizontal pivoting movement in lieu of the vertical pivoting movement is directed to subject-matter which can be considered as a patentable advance in the art. If there was a problem to be solved, for example to save space, a person skilled in the art should be able to solve it without any degree of inventive skill. This claim, in our view, should be refused for the reasons stated.

An attempt was made to displace the argument that the invention lacked subject-matter by setting up a number of advantages which were alleged to result from the user of the device: but no ingenuity is involved in the application of the idea, no amount of proof of its practical utility can save it from being invalid for want of subject-matter.

The mere carrying forward of the original thought, a change only in form, proportion or degree, doing the same thing in the same way, by substantially the same means, with better results is not such an invention as will sustain a patent" and "It is always necessary to consider the rights of the general public to avoid monopolies on such simple devices as would occur to anyone familiar with the art.

The Board recognizes that when assessing an alleged invention the combination of a claim as a whole must be considered. None the less even if the combination in the claims be novel, it in our view lacks the prerequisite of inventive ingenuity. No result has been achieved which can be considered to have flowed from an inventive step.

In our own view the structure recited in the claims comes within the interdiction expressed by Maclean J. in Niagara Wire Weaving Co. Ltd. v. Johnson Wire Works Ltd. (1939), 1 C.P.R. 229 at p. 243, [1939] 3 D.L.R. 285, [1939] Ex. C.R. 259 at p. 273 [affirmed 1 C.P.R. 246, [1940] 4 D.L.R. 576, [1940] S.C.R. 700]:

Small variations from, or slight modifications of, the current standards of construction, in an old art, rarely are indicative of invention; they are usually obvious improvements resulting from experience and the changing requirements of users.

And at p. 246 C.P.R., p. 276 Ex. C.R.:

No step is disclosed there which could be described as invention. There is not, in my opinion, that distinction between what was known before, and that disclosed by Lindsay, that called for that degree of ingenuity requisite to support a patent. If those patents could be supported it would seriously impede all improvements in the practical application of common knowledge.

We must remember, however, that commercial success by itself, without the solution of a problem in an inventive manner, is not sufficient to establish subject-matter: see The King v. Uhlemann Optical Co. (1949), 11 C.P.R. 26, [1950] Ex. C.R. 142, 10 Fox Pat. C. 24 [affirmed 15 C.P.R. 99, [1952] 1 S.C.R. 143, 12 Fox Pat. C. 65].

Clearly then this represents a highly desirable improvement and, in our view, shows sufficient ingenuity to justify a patent. For these reasons, we believe the Commissioner ought not to refuse a patent: Crosley Radio Corp. v. Canadian General Electric Co. Ltd., [1936] 3 D.L.R. 737 at pp. 743-4, [1936] S.C.R. 551 at p. 559.

It is our view that none of the above combinations are taught by the cited reference. In other words, the rejected claims define novel compositions and the novel practical application of a discovery which the applicant has made. In the circumstances this is all that is required of the applicant.

The co-solvent is defined in a weight ratio selected to provide a greater solubility of the compound than when used with glycol alone. The cited reference does not teach the use of a co-solvent.

The evidence produced by Mr. Marcoux during the hearing shows that the active ingredients have low solubility in other glycols which are used as solvents in this application, and that the presence of a second solvent such as acetone does indeed increase the concentration with out sacrificing the stability. These claims, in our view, avoid the cited references.

We find no indication in either of the cited references that the known active compounds described individually, one in each reference, would provide an enhanced effect when used together and we find no suggestion that they should be so used. Since we accept the applicant's statement that there is, in fact, such an unpredictable and surprising effect in light of the knowledge of the separate effects of the active constituents, the board is of the opinion that the rejection of claims 1 to 5 and 7 to 10 for lack of invention should not be upheld.

Furthermore, taking into consideration the teaching of the two cited patents, and the teaching of Sivetz which discusses thoroughly the coffee processing technology, we find that the step claimed by the applicant of removing undesirable elements, which are known to produce clogging, from a solution prior to usage in a freeze concentration process is obvious to one skilled in the art. Likewise, it is also held to be obvious to one skilled in the art to remove substances from the extract which have formed during a holding period and are liable to cause the extract to spoil. Moreover, the Sivetz reference discusses completely the effect, of not only the substances mentioned by the applicant, but also many others such as oils, carbon, colloids, and ashes.

... we think that a person skilled in the art would have no difficulty in applying the process described in the patent to his own requirements, based on his local conditions, without the benefit of further invention. As we have said, this is the view we take of the subject-matter now being claimed.

The prior art technique has a practical utility substantially equal to that of the process in the impugned claims which encompass the same reaction for the same purpose. The claims do not effect a patentable advance in the art.

It is our view that claims C1 and C2 are so similar to the teachings of the prior art that the following finds of the court in Niagara Wire Weaving Co. Ltd. v. Johnson Wire Works Ltd. (1939), 1 C.P.R. 229 at p. 243, [1939] 3 D.L.R. 285, [1939] Ex. C.R. 259 at p. 273 are pertinent:

Small variations from, or slight modifications of, the current standards of construction, in an old art, rarely are indicative of invention; they are usually obvious improvements resulting from experience and the changing requirements of users.

Additionally, the comments of the court in Lowe-Martin Co. v. Office Specialty Mfg. Co. Ltd., [1930] 4 D.L.R. 918 at pp. 922-3, [1930] Ex. C.R. 181 at p. 187, are of interest:

The mere carrying forward of the original thought, a change only in form, proportion or degree, doing the same thing in the same way, by substantially the same means, with better results, is not such an invention as will sustain a patent.

and "It is always necessary to consider the rights of the general public to avoid monopolies on such simple devices as would occur to anyone familiar in the art".

It is well established that if an invention is in the discovery of an unexpected and unobvious property of the particularly known substance, appropriate claims may set out the novel mode of giving effect to the newly-discovered property as a novel method of using that substance, or as a novel composition comprising the particular substance, including mixtures with carriers suitable for the new use.

Apart from the fact that the chemical abstracts reference made no mention of the addition of growth factors, it is clear that, in the process of the cited patents the provisions of these substances was optional rather than mandatory and their exclusion does not therefore represent a patentable advance in the art.

Upon reviewing all the evidence presented to us, we have concluded that the most that has been done by the applicant is mere verification. We cannot see that there has been any exercise of the inventive faculty. It is settled law that minor experimentation does not amount to invention."

The applicant did however discover an unexpected result. The morphology and biochemical activity of the new cell line is "extremely surprising". We would, therefore, allow the applicant a method of use claim on the same basis as if he discovered an unexpected utility of a known compound.

It is clear that the purpose of the perforations in the sponge as disclosed in this application is to allow blood to flow completely through the sponge thereby preventing floatation of the sponge and at the same time does not prevent coagulation at the surface. If the Biederman's device was to be used for hemostasis purposes, then coagulation would be a desired result. However, on the contrary. Biederman is concerned with preventing coagulation to achieve maximum capacity and thus seeks the opposite of hemostasis.

In the patent (prior art) the socket is contained within the seal while in the application the seal is located in the passageway within the socket. While both the reference and the application relate to a seal for an electrical connection, the manner in which it is assembled in the connection is not the same. We are inclined to agree with the applicant that we are dealing with a seal for a different type of connection.

We can see from the art that O-rings are well known sealing means in fuses, and we can appreciate therefore how the agent and examiner assumed during prosecution that a seal is shown in Triplette and in Lindell. Nevertheless, the agent established at the hearing that the cited patent to Triplette shows a split-ring, not a seal as had been assumed. Further, the applicant argued in his response, and stressed at the hearing, that the invention lies in the recognition of the value of sealing a fuse against ingress of outside moisture.

It is well established that a new combination of well-known elements may be patentable. The question is not whether the elements are new but whether the combination of elements, with its arrangements of parts is new, useful and resulted in inventive ingenuity.

Applicant on the other hand is concerned with mounting an antenna of a specific type (similar to Haas) on a radio body and protecting the antenna from mechanical damage by locating it within the projected outline of body of the radio, the location being specifically defined. He also encases the antenna in a dielectric for the dual purpose of completing the outline of the radio body and increasing the electrical length of the antenna.

I feel that while each of the elements used by the applicant may be known or obvious and the principles employed may also be known, nevertheless applicant has brought them together in such a matter as could be considered a new combination.

In the circumstance, therefore, I am of the opinion that an advance in the art has been made, and that it would not be obvious to arrive at the applicant's combination from the prior art relied upon by the examiner. I am also satisfied that the applicant has made a prima facie showing of inventive ingenuity.

We have carefully reviewed the prosecution of this application and especially all the points raised at the hearing. There is clearly novelty in the combination found in claim 1 and it is our view that there was sufficient ingenuity in thought and design to warrant the allowance of claim 1, because the applicant has produced a highly-desirable new result neither taught nor suggested by the cited art. In other words, it is our view that there is ingenuity in the invention, and that the objection made against claim 1 be withdrawn.

Therefore we find that the improved degree of dimensional change obtained in a memory metal by combining resilient recovery with thermal recovery is not taught in the cited patents and the claims are, in our view, allowable over them.

We find no difficulty in understanding the claim when considered with the disclosure and the drawings. In our opinion applicant has presented a combination of elements which obtains results different from the results that may be achieved by the Haydon patent and which may not fairly be said to be encompassed by Haydon. We would agree that applicant's device is directed to an advance in the art in view of the sample of the device and the arguments presented at the hearing, and the affidavits submitted subsequently thereto.

From a comparison of the amended claim to the rejected claims, the Board believes the safety feature disclosed has been clearly identified. By setting out that the second winding is electrically conductively isolated from the first and third windings, and that the non-capacitive manually variable impedance and the diode are in series with the second winding, the single amended claim presents an improvement in protection against the risk of manual contact with the power supply portion of the known DC/AC converter. The Board is satisfied that the single amended claim overcomes the obviousness rejection.

Evidence of commercial success of the applicant's process is outlined in the affidavit of Mr. K. Wolford, which was submitted at the hearing. This affidavit states that assembly line production embodying the invention has been commercially successful for a period of more that five years. It also indicates that the S.E. Scrupski apparatus was not capable of commercial operation at that time.

This claim specifies a process of fabrication of integrated circuit assemblies, where chips are attached to a dielectric film having corresponding conductive interconnect patterns of rolled copper laminated thereon. This includes the steps of continuing the advancement of the punching means and bringing the punch means and heated bonding tool in close proximity for a time sufficient to temporarily reflow the low melting metal, thereby completing the bond. The cited art does not teach this specific combination, and in view of the statements in the affidavit, we do not find it obvious therefrom."

At the hearing Mr. Wickham described the operation of the Elcaset System, in which control means and non-standard head structures are used. We have been impressed by the qualities attributed to the Elcaset System, and its apparent commercial success. It may well be that these other features are patentable, and to the extent that they are disclosed in the drawings and disclosure of this application, could be claimed. ...For that reason we do recommend rejection of the application as a whole, as proposed by the examiner, but only of the present claims.

This leads us to the arguments relating to the type of steal used in the reactor. The final action states that it is "not patentably distinguishing to use the Okamura et al. device while specifying that the steel be of low-cost high-saturation type, since nothing in the Okamura et al. precludes the use of just that kind of steel". Okamura does not indicate the type of steel used for his circuit components. The application before us describes the advantages gained by using the lower cost silicon steel, and illustrates the voltage curves in fig. 2 of the drawings. Mr. Fox argues that "Okamura does not teach the advantages of the application of a ceramic oxide varistor to simulate a high mu core in the reactor". Clearly, the applicant, by using a limiter, can construct the reactor of ordinary transformer steel to obtain the sharp saturation characteristic of high mu steel. This is considerably more economical than the prior art which required the mu metal.

Ceramic oxide varistors, as shown in the Matsuoka citation, are not new. Replacing the voltage dependant resistor in Okamura's circuit with the Matsuoka-type varistor is not really the issue before us. We believe that the recognition by the applicant that he can obtain the sharp characteristics of high mu steel from ordinary transformer steel by this replacement shows sufficient ingenuity for invention."

We now have the benefit of a hearing, at which clarifying statements have thrown new light on the connector device under consideration. The essence of the invention, as is now apparent, is that the main portion of the connector is niobium which quickly oxidizes and therefor is non-conductive, and only the connecting surfaces are platinized to permit conductance from one lead to the other, but not into the surrounding sea water. By contrast the prior art electrodes more fully coated with platinum, and would permit undesirable leakage into the surrounding water.

We are of the opinion that the questions raised by the examiner have been satisfactorily overcome by the applicant's clarifying explanation and by the supporting evidence. We consider that the applicant's structure may not fairly be refused as we are persuaded that the thought and the design that produced applicant's connector structure should not be considered as lacking inventive ingenuity in view of the art of record before us.

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. Applicants efforts thus lacked ingenuity and are better described as workshop improvements.

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 caring only a small current in comparison to the circuits and currents taught by the cited art.

In amended claim 1 the applicant is merely using, for alleged novelty, a functional means claim to state the obvious solution to a supposed problem. It is clear that the relative thickness of the ferrules and housing will depend upon the strength of the material used and on the external forces expected to act on these walls. It is at least of interest that Brandt shows the end wall thicker than the flange in his fuse arrangement, although it is not discussed in the disclosure. Further, it is our view that any skilled person in this particular art will use the required thickness of material which will satisfactorily do the job without regard to the need for any inventive ingenuity.

The specific issue is whether that development involves such an exercise of the creative faculties of the human mind as to merit the distinction of invention and a claim to monopoly. It has been authoritatively stated that the art of combining two or more parts into a new combination whether they be new or old, or partly new and partly old, so as to obtain a new result, or known result in a better cheaper, or more expeditious manner, is valid subject-matter if there is sufficient evidence of thought, design, ingenuity in the invention, and novelty in the combination. ...And it is also settled law that the manner of obviousness is to be judged by reference to the "state-of-the-art" in light of all that was previously known to persons versed in the art.

The applicant also points out that "one of the best tests for a technically sound and commercially desirable invention is that it solves a previously unresolved problem and appears so simple and fitting that one wonders why it was not conceived previously". We are not persuaded, however, that the applicant has found a solution to an unresolved problem. As previously shown it was well known in the art how to solve the problem of preventing harmful voltage surge in inductive apparatus, such as an electromagnetic relay. We agree, nonetheless, that the applicant has a new arrangement in his "surge suppressor assembly". But the applicant's device, in our view, is merely a re-arrangement of an old combination in accordance with an old principle i.e., in a modular form.

Aldrich shows a lock means between planar surfaces rather than at the side surfaces as in Soled. Since Soled shows both a shear-resisting lock means and an adjustable joint through an oversized hole with a bolt we agree with the examiner that it is obvious to make Aldrich's joint adjustable with oversized holes for the bolt. Consequently there is no invention in an adjustable joint having a lock means between two planar members.

The limitations placed on claim 1, such as the restriction to "kaolinitic" material and the reference to the intensity of the magnetic field, are minor alterations. It would be obvious to modify the Lynd process by using stronger magnets when they became available, and to use it with different types of clay.

The Board is therefore satisfied that claim 1 does not teach an advance in the art over the cited references, or even over the Lynd patent itself when we add to it the admissions made in the disclosure about British Patent No. 768,451.

An analysis of this claim shows that the component elements and their arrangement with respect to one another is similar to Broberg except for the actuator means which is described. This claim describes a fluid piston and cylinder (hydraulic) arrangement to move the charging hopper, whereas the Broberg patent has a handwheel gear and lever arrangement for this purpose. We cannot find any ingenuity in replacing the mechanical arrangement of Broberg by use of hydraulic power, and therefore fail to find any patentability in new claim 6 over the Broberg citation.