Ottawa, Ontario, April 4, 2006
PRESENT: The Honourable Madam Justice Heneghan
BETWEEN:
Appellant
THE COMMISISONER OF PATENTS
Respondent
REASONS FOR ORDER AND ORDER
I. Introduction
[1] CertainTeed Corporation (the "Appellant") appeals from the decision of the Patent Commissioner dated September 16, 2004, upholding the Examiner's Final Action that rejected the Appellant's Patent Application 2,055,020 (the " '020 Application"). The rejection was based upon section 28.3 of the Patent Act, R.S.C. 1985, c. P-4, as amended (the "Act"). The Appellant seeks an Order that the Patent Commissioner grant a Patent on its '020 Application.
II. Background
[2] The Appellant is the assignee of the '020 Application. The '020 Application claimed priority to the United States patent application that was filed on April 9, 1991. The two patent applications relate to an invention called "Roof Shingle" that the Appellant claims is unique. The invention described in the '020 Application is an asphalt roofing shingle that has a different dimensional relationship than a traditional asphalt shingle. This relationship reduces the number of shingles and nails required per roofing square, uses material more efficiently during the production process and creates a shingle that can be shipped easily on pallets without shifting.
[3] Generally, traditional shingles are twelve inches high and thirty-six inches wide. When nailed to a roof in an overlapping style, five inches of this type of shingle remain exposed. One hundred square feet of roofing, referred to as a "roofing square", are covered by eighty of such traditional shingles.
[4] The shingle described in the '020 Application is eighteen inches high and when installed, creates an exposure of eight inches. The specific dimensional relationship described in the '020 Application offers a number of advantages, according to the Appellant, including the following:
1. installation of fewer shingles per roofing square (50 shingles per roofing square compared to 80 traditional shingles);
2. fewer nails per roofing square (200 nails for three-tabbed shingles and 250 nails for four-tabbed shingles);
3. a material utilization efficiency defined as the ratio of exposure to overall height, of 44.4%, compared to 41.7% for traditional shingles that results in a saving of material;
4. ready manufacture of two side-by-side shingles from sheets of 36 inch wide base mat material that reduces the cutting required during manufacture;
5. 300 linear feet of base mat material produces 200 shingles that cover 400 square feet of roof area, compared to the 300 traditional shingles that cover 375 square feet of roof area produced from 300 linear feet of base mat material;
6. the shingles provide a stable and efficient pallet load when using a standard 36 inch by 36 inch pallet; and
7. the exposure height of two installed rows of the shingles is 16 inches that corresponds with the conventional markings on tape measures used by roofers that are generally highlighted at intervals of 16 inches.
[5] The Appellant submitted the '020 Application on November 6, 1991. The first examination of the '020 Application was completed on August 12, 1994. The Examiner rejected all claims on the basis of obviousness, saying that it was "overtly obvious" that a larger shingle would be more efficient than a smaller one. The Examiner referred to United States Patent 2,045,423 issued to one Topping, in rejecting the '020 Application.
[6] The Appellant submitted more information on February 10, 1995 and amended the '020 Application. It sought reconsideration of the question of obviousness. It submitted that the application addressed the specific dimensional relationship of the shingle, not its size. The Appellant referred to two Canadian Patents issued to Bondoc, as precedents for the issuance of a patent on the basis of dimensional relationships. These are Canadian Patent 1,312,439 and Canadian Patent 1,277,117. The Appellant cautioned the Examiner against applying an ex post facto analysis.
[7] The Examiner issued a second rejection of all claims in the '020 Application on August 18, 1995. The claims were found to "not define anything that does not fall within the skill of the artisan". Prior art, consisting of three United States patents, was considered by the Examiner and he concluded that this prior art supported the view that shingles of different heights and exposures were well-known. This prior art were United States Patent 4,333,279 issued to Corbin et al. on June 8, 1982 and United States Patent 4,825,616 issued to Bondoc on May 2, 1989, as well as the Topping Patent that was reapplied.
[8] The Appellant replied to the second rejection on February 19, 1996, by submitting two affidavits, the first from Robert L. Jenkins, an expert in the roofing industry and independent of the Appellant, and the second from Marcia G. Hannah, Vice-President of Marketing with the Appellant.
[9] Mr. Jenkins deposed that the Appellant's shingle is unique because of its dimensions. He stated that no one in the field of shingle art would have conceived of the advantages created by these dimensions. Ms. Hannah deposed that the dimensions of the shingles were not obvious and differed from the conventional practice of the industry at that time. She also discussed the great commercial success of the shingles and sought to distinguish the shingle described in the '020 Application from those contained in the prior art.
[10] This additional information did not persuade the Examiner and on December 20, 1996, the '020 Application was rejected again. A third United States Patent, that is Morgan Patent 3,624,975 issued on December 7, 1971, was considered as prior art but the Examiner did not change his view that the claims of the '020 Application fell within the skills of an artisan.
[11] The Appellant filed further submissions on June 20, 1997, saying that the dimensional relationship of the '020 Application was not suggested or taught by the prior art. It repeated its argument that the prior art shows that dimensional relationship that provides particular benefits can form the basis for obtaining a patent for roofing shingles in Canada.
[12] On October 21, 1997, the Examiner again rejected all the claims of the '020 Application. He referred specifically to the U.S. Bondoc Patent as prior art and determined that it was obvious that fewer large shingles are needed to cover a roof. He also concluded that more efficient use of material was obvious and referred to section 28.3 of the Act.
[13] The Appellant responded to the fourth rejection on April 14, 1998. It noted that the U.S. Bondoc Patent says that a layered shingle provides no additional benefits and creates a waste of material; this is contrary to the interpretation given by the Examiner. The Appellant argued that the U.S. Bondoc Patent did not teach a larger shingle and this made the '020 Application not obvious. As well, the specific dimensions in the '020 Application lead to a stable shipping load, a feature that is not taught by the prior art.
[14] On August 20, 1998, the Examiner rejected the '020 Application for the fifth time. This was the Final Action issued by the Examiner. The cited prior art of United States Patents issued to Morgan and Bondoc was reapplied and the Examiner determined again that the '020 Application is obvious to a person skilled in the art of roofing. A variation in shingle size was found not to be inventive in light of common knowledge in the industry and prior art.
[15] The Appellant responded to the fifth rejection on February 22, 1999. It distinguished the '020 Application from the prior art. It submitted that the Morgan Patent does not address the efficient use of material nor does it cite the specific dimensions contained in the '020 Application. The United States Bondoc Patent says that increased shingle size yields no benefit and leads to a waste of material. According to the Appellant, the size of the shingle and efficient use of material are key elements of the '020 Application. The Appellant argued that it had shown that the larger size is advantageous and that this amounts to a scintilla of inventiveness necessary to qualifying its shingle as a patentable invention.
[16] On September 16, 2004, the Patent Commissioner issued his decision, concurring with the conclusions and recommendation of the Patent Appeal Board and refused to grant the Appellant's patent application. The decision of the Patent Appeal Board identified three questions that relate to the assessment of the obviousness of an invention, as follows:
1) What was the problem in the art encountered by the applicant, the solution for which is taught by the patent?
2) Did the applicant follow an obvious and well-charted route using known techniques and processes in arriving at the solution taught by the patent?
3) Did the applicant encounter any difficulties on the way to the solution that could not have been reasonably expected by one versed in the art and could not have been overcome by the application of ordinary skill?
[17] The Patent Appeal Board, in applying these requirements to the '020 Application, concluded that the dimensions of the shingle and the increased efficiency of the larger shingle was "obvious in view of the prior art and common knowledge". As well, the Commissioner said that:
...a technician skilled in the art but having no inventiveness or imagination would have had before him a well-charted route of techniques and procedures which would have led him directly and without difficulty to the alleged invention which is disclosed and claimed in the instant application.
III. Issues
[18] Three issues are raised in this appeal:
1. Did the Commissioner misunderstand and misapply the appropriate test for obviousness?
2. Did he fail to consider the evidence submitted by the Appellant?
3. Did the Commissioner err in concluding that the Morgan or Bondoc Patents are common general knowledge?
IV. Discussion and Disposition
[19] The Appellant alone filed written arguments in this matter. Neither the Commissioner nor the Attorney General participated.
[20] The Appellant argues that the Commissioner applied the wrong test for obviousness by purporting to apply a three-part test rather than a single test. The Appellant submits that the appropriate test was whether an unimaginative technician skilled in the art would have directly and without difficulty reached the solution taught in the patent.
[21] As well, the Appellant argues that the Commissioner erred in conducting an ex post facto analysis of the invention. It is easy to say that an invention is obvious after the fact.
[22] The first question to be considered is the appropriate standard of review since the decision in issue was made by a statutory decision-maker exercising delegated authority. In this regard, I refer to Dr. Q v. College of Physicians and Surgeons of British Columbia, [2003] 1 S.C.R. 226. Identifying the appropriate standard of review requires the Court to undertake a pragmatic and functional analysis having regard to four factors: the existence or absence of a privative clause; the expertise of the tribunal; the purpose of the legislation; and the nature of the question.
[23] The Act does not contain a privative clause and section 41 allows an appeal from a decision of the Commissioner. Accordingly, this first factor is neutral.
[24] The Commissioner is experienced in dealing with patent applications and appeals under the Act. He has expertise in that area and accordingly, his decisions will attract a high degree of deference.
[25] The purpose of the Act is to encourage invention and to regulate the issuance of patents in Canada; see Pope Appliance Corp. v. Spanish River Pulp and Paper Mills Ltd., [1929] A.C. 269 (Canada P.C.).
[26] Finally, there is the nature of the question. The '020 Application was rejected on the basis of obviousness. Obviousness is a question of fact; see Lido Industrial Products Ltd. v. Teledyne Industries Inc. (1981), 57 C.P.R. (2d) 29 (F.C.A.). However, the issue in this appeal is whether the Commission applied the correct test for obviousness and that is a question of law.
[27] On balance, I conclude that the appropriate standard of review here is correctness. Pursuant to section 41 of the Act, the Court may apply the appropriate test on a de novo basis; see Progressive Games, Inc. v. Canada(Commissioner of Patents) (1999), 177 F.T.R. 241 (T.D.).
[28] The Act requires that an invention not be obvious. Section 28.3 of the Act provides as follows:
| 28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to (a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and (b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere. |
28.3 L'objet que définit la revendication d'une demande de brevet ne doit pas, à la date de la revendication, être évident pour une personne versée dans l'art ou la science dont relève l'objet, eu égard à toute communication : a) qui a été faite, plus d'un an avant la date de dépôt de la demande, par le demandeur ou un tiers ayant obtenu de lui l'information à cet égard de façon directe ou autrement, de manière telle qu'elle est devenue accessible au public au Canada ou ailleurs; b) qui a été faite par toute autre personne avant la date de la revendication de manière telle qu'elle est devenue accessible au public au Canada ou ailleurs.
|
[29] There is no definition of obviousness in the Act but the term has been given meaning by the jurisprudence. In Bayer Aktiengesellschaft v. Apotex Inc. (1995), 60 C.P.R. (3d) 58 (Ont. Gen. Div.) at 79, the Court described "obviousness" as follows:
Obviousness, of course, connotes something that would have been apparent or, in common parlance, "plain as day" or "crystal clear" to the reasonable technician skilled in the art as of the date of invention.
[30] In Beecham Canada Ltd. v. Procter & Gamble Co. (1982), 61 C.P.R. (2d) 1 (F.C.A.) at 27, the Federal Court of Appeal stated the test for obviousness as follows:
The question to be answered is whether at the date of invention ... an unimaginative skilled technician, in light of his general knowledge and the literature and information on the subject available to him on that date, would have been led directly and without difficulty to [the] invention.
[31] Subsequently, the Federal Court of Appeal stated the test in Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A.) at 294 as follows:
The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. 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 light of the state of art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.
[32] In the present case, the Commissioner applied a tripartite test to assess the issue of obviousness. It appears that he attempted to summarize various principles relating to obviousness in setting forth the "questions needed to be answered". While the Commissioner may have been trying to simplify the requirements for obviousness, the result was to change the test.
[33] In my opinion, the Commissioner erred in stating and applying the test for obviousness. He focused on the steps taken by the inventor in the period between identifying the problem and perfecting the invention covered by the patent. The tests in Beecham and Beloit clearly state that the focus of the assessment of obviousness is not what the inventor did but rather whether an unimaginative person skilled in the relevant art could have arrived at the solution to the problem, directly and without difficulty.
[34] Having concluded that the Commissioner failed to apply the correct test for obviousness, the Court may proceed to deal with the Appellant's application on a de novo basis and to conduct its own assessment of the '020 Application, as was the case in Progressive Games.
[35] The legal requirement that an invention be unobvious means that there must be at least a scintilla of inventive ingenuity and that the new article must be more than a mere workshop improvement. In this regard, see Beloit and Diversified Products Corp. v. Tye-Sil Corp. (1991), 35 C.P.R. (3d) 350 (F.C.A.).
[36] In the present case, the Appellant has done more than improve the design of the existing standard shingle. It created a specific dimensional relationship that yielded results unique to that relationship, that is increased efficiency, ease of shipping and decreased waste materials. The specific dimensional relationship of a shingle has been the subject of patents in both Canada, that is the Bondoc Patent 1,277,177 for an asphalt shingle and the Bondoc Patent 1,312,439 for a roofing shingle, and the United States, that is the Morgan Patent 3,624,975.
[37] After the Appellant submitted the '020 Application, five patents were issued in the United States to Marcia Hannah and others for the same specific dimensional relationship for a roofing shingle that is the subject of the '020 Application. These American patents, being numbers 5,287,669; 5,375,491; 5,400,558; 5,421,134 and 5,501,056 were issued between February 22, 1994 and March 26, 1996. These patents have been assigned to the Appellant.
[38] In Beloit, the Federal Court of Appeal said that if prior art teaches away from an invention, this is a factor that tends to negate a finding of obviousness. The Morgan Patent teaches that longer shingles could be used but it does not teach the specific dimensions contained in the '020 Application or what other advantages may be associated with the additional length.
[39] The Bondoc Patent teaches away from larger shingles, saying that a larger size would provide no additional benefit and would waste more material during the production process.
[40] I agree with the submissions of the Appellant that the prior art, consisting of the Morgan and Bondoc Patents, do not make the claims of the '020 Application obvious.
[41] The argument against obviousness is supported by the secondary considerations raised by the Appellant, that is the advantages of the shingle described in the '020 Application over the prior art and the issue of commercial success addressed in the second Hannah Affidavit.
[42] In Pfizer Canada Inc. v. Apotex Inc. (1997), 77 C.P.R. (3d) 547 (F.C.T.D.) at 555, the Federal Court listed a number of factors to be considered in assessing a patent for obviousness. A patent will not be considered obvious if:
1. it is novel and superior to what was available until then;
2. it was since used widely and in preference to alternative devices;
3. competitors as well as experts in the field had never thought of the combination;
4. amazement accompanied its first publication; and
5. commercial success.
While none of these factors taken in isolation may necessarily be determinative on the issue of obviousness, one can look at their cumulative effect.
[43] The idea that commercial success supports the presumption of inventiveness was discussed in Windsurfing International Inc. v. Trilantic Corporation (1985), 8 C.P.R. (3d) 241 (F.C.A.) Although this is not determinative of the issue of obviousness, the Court concluded that if people working in an industry have recognized a problem but failed to invent a solution for it, this is evidence of unobviousness.
[44] In the present case, the shingle was novel in the sense that prior art and common knowledge in the roofing industry pointed away from using shingles with a larger size than standard. According to Ms. Hannah, there were concerns about larger shingles being difficult for installers to handle but
apparently this has not been the case. Again, Ms. Hannah in her affidavits suggested that the Appellant's customers prefer the new, larger shingle to the standard size.
[45] Mr. Jenkins, in his affidavit, confirms that no one skilled in shingle art would have thought of the large number of advantages associated with the shingle contained in the '020 Application. He also addresses the commercial success of the new shingles.
[46] Having regard to the evidence concerning the common knowledge in the industry at the time of the invention and all of the factors referred to above, I conclude that the shingle contained in the '020 Application is not obvious. In my opinion, an unimaginative person skilled in the art would not have been led directly to the invention since the prior art did not point towards it and, in the case of the United States Bondoc Patent 4,825,616, taught away from the use of larger shingles.
[47] In the result, the appeal is allowed and pursuant to section 41 of the Act, the Patent Commissioner is directed to allow all claims of the '020 Application. The Appellant does not seek costs and accordingly, there will be no order as to costs.
ORDER
The appeal is allowed and the Commissioner is directed to allow all claims of the '020 Application. There is no order as to costs.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-496-05
STYLE OF CAUSE: CERTAINTEED CORPORATION v. ATTORNEY GENERAL OF CANADA and THE COMMISSIONER OF PATENTS
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: October 3, 2005
APPEARANCES:
Mr. Kevin K. Graham FOR APPELLANT
SOLICITORS OF RECORD:
Ottawa, Ontario
Deputy Attorney General FOR RESPONDENTS
Ottawa, Ontario