RALPH McKAY LIMITED

[1983] APO 8

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 46566/79 for Letters Patent in the Name of RALPH McKAY LIMITED

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In the Matter of Examiner's Objections thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         This matter concerns an application for a patent entitled "A METHOD FOR FORMING RAIL CLIPS" lodged on 27 April, 1979.   Examination of the application and complete specification has been in accordance with section 48.
         In his most recent report dated 16 July, 1982, the Examiner has maintained objections raised in earlier reports, namely the application is not in respect of a manner of new manufacture and the invention claimed is prior claimed.   The applicant requested a hearing which took place in Melbourne on 7 February, 1983 with Mr. D.B. Mischlewski, patent attorney, of Edwd. Waters & Sons appearing on behalf of the applicant.
         This decision relates to the specification as proposed to be amended, the most recent statement being lodged on 1 July, 1982, and takes into account minor clarification of the amendments as indicated at the hearing.   The proposed amended specification commences by stating that "This invention relates to rail clips for fastening rails to sleepers".   Then follows a description of various previous forms of rail clips made by blanking and shaping steel plate, problems encountered with those clips, and how the method

of the present invention is directed to alleviating or reducing those problems in such rail clips.   The relevant description in the specification is as follows:

"A number of rail clips have been proposed which are manufactured by blanking and shaping steel plate.   Such clips take various shapes.   One such clip comprises a curved plate having a central hole through which a bolt projects into the sleeper, the plate having one edge adapted to lie over the foot of the rail.   This rail clip has points of high stress adjacent the blanked bolt hole and the outer edges of the clip adjacent the blanked bolt hole and the outer edges of the clip adjacent the bolt hole (sic).   Another clip made from blanked plate material is of U shaped cross section wherein the free ends of the U are bent about at least two points to be adjacent the base of said U.   In this clip design the high stress points lie on the inner edges of the arms of the U adjacent the base of the U.  This latter clip is preferred for the present invention and is the subject of Australian Patent Application 37379/78.

Where clips of this kind have been blanked from plate material the edges are often rough.   It has been discovered that in areas of high stress fractures of the clips can be started from small cracks or irregularities in the edges of the clips.   Thus, to reduce the occurrence of fatigue and fractures in rail clips formed by blanking the clips from metal plate the present invention provides a method of forming integral clips of the kind in which one portion of the clip is secured by clip holding means to a rail tie and a second portion overlies the foot of a rail comprising blanking a generally U‑shaped clip having tapered arms from metal plate, forming the blank into a three dimensional shape wherein the arms of the U curve over the base and terminate beyond the base, and coining the edges of said clip adjacent the base of the U where said clip is subjected to maximum stress during use, said base corresponding to the portion of the clip which is secured by the clip holding means and the ends of the arms correspond to the portion which overlies the foot of the rail.

The coining operation provides a smooth edge surface adjacent the high stress points and eliminates the possibility of a fracture commencing from a rough edge portion."

Then follows a description with reference to a drawing of one particular form of rail clip to which the present invention relates.   The concluding paragraph of the description as proposed to be amended reads as follows:

"The coining operation is preferably carried out between the blanking and forming operations.   The edges to be treated are worked with an appropriate tool to coin the edges and eliminate surface deformations."

As proposed to be amended the claims of the specification are as follows:

"1.A method of forming integral rail clips of the kind in which one portion of the clip is secured by clip holding means to a rail tie and a second portion overlies the foot of a rail comprising blanking a generally U‑shaped clip having tapered arms from metal plate, forming the blank into a three dimensional shape wherein the arms of the U curve over the base of the U and terminate beyond said base, and coining the edges of said clip adjacent the base of the U where said clip is subjected to maximum stress during use, said base corresponding to the portion of the clip which is secured by the clip holding means and the ends of the arms correspond to the portion which overlies the foot of the rail.

2.A method as defined in claim 1 in which the inner edges of the clip adjacent the portion of the clip which is secured by the clip holding means are coined.

3.A rail clip formed from metal plate by blanking comprising a base, two tapered arms extending in parallel from said base in an arc over said base, said arms terminating adjacent said base, and wherein the inner edges of said two arms are coined in the region adjacent the junction of the arms and the base where said clip is subjected to maximum stress during use.

4.A method as defined in claim 1 or 2 in which the outer edges of the clip adjacent the portion of the clip which is secured by the clip holding means are coined.

5.A rail clip as defined in claim 3 wherein the outer edges of said two arms are coined in the region adjacent the junction of the arms and the base."

The method of claim 1 relates to forming integral rail clips of a certain kind as stated, which method generally includes the steps of:

(a)blanking a U‑shaped clip from metal plate,

(b)forming the blank into a particular curved structure, and

(c)coining the edges of the clip adjacent the base of the U.

Although not specifically defined, I consider it reasonable to construe the "tapered arms" referred to in the blanking step as being the otherwise referred to "arms of the U".   I note that the direction of the taper of the "tapered arms" is not defined.
         With regard to the coining step, the relevant definition in the claim reads as follows:

"coining the edges of said clip adjacent the base of the U where said clip is subjected to maximum stress during use."

From that wording the step of coining the edges is not necessarily restricted to being undertaken after the forming step; it could be performed directly after the blanking step.   Also, since the claim distinguishes between the arms and the base of the U, the reference to "coining the edges of said clip adjacent the base of the U" must necessarily be construed, I believe, as requiring only edges of the arms to be coined adjacent the base.   I also note that the definition merely specifies "coining" the edges, there being no definition of the steps constituting the coining or alternatively of the resulting effect of such coining.   It is therefore appropriate to consider the meaning of "coining" and what the specification discloses in relation to this step of the method in order to determine whether the claim complies with section 40.
         Firstly, the description and claims both as lodged and as proposed to be amended, use the terms "coined" or "coining" in relation to the method of the invention.   The meaning of "coining" is well established in manufacturing fields whether that be in coin currency production or general metal working and finishing activities.   In this regard, Webster's Third New International Dictionary gives the following meaning for the verb "coin":

"1c :to shape (a piece of metal) in a mold or die by applying great pressure."

The "METAL HANDBOOK" (8th ed.) by the American Society for Metals dicusses "Coining" in some detail in Volume 4 at page 78.   Also the "TOOL ENGINEERS HANDBOOK" (2nd ed.) by the American Society of Tool and Manufacturing Engineers refers to "Coining" in these terms at page 55‑23:

"3.Coining operations usually force metal to flow within a die, but not out from it, so that all work surfaces are confined. ........

........ Portions of a blank or workpiece may be coined: corners of previously formed or drawn cups may be built up or filled in, or indented or raised sections of a blank may be formed by coining dies. ......."

It is not entirely clear, however, that one should attribute the abovementioned meaning to the term coining as it appears in the present specification.   This uncertainty arises due to the concluding paragraph of the description which as proposed to be amended reads:

"The coining operation is preferably carried out between the blanking and forming operations.   The edges to be treated are worked [ground] with an appropriate tool to coin the edges and eliminate surface deformations."

As originally lodged the paragraph used the term "ground" in place of "worked". The grinding of an edge was therefore stated in the specification as lodged to "coin the edges" although the usual meaning of "to coin" or "coining" would not normally suggest that operation.   Even as proposed to be amended, the mentioned paragraph refers to working the edges with an appropriate tool which suggests, bearing in mind the disclosure before amendment, that a "tool" such as a grinder, a pair of dies, hammer, etc., could be used to "coin the edges and eliminate surface deformations".
         Consequently, in the absence of a clear indication in the specific‑
ation as to the meaning one ought to give to the term "coining" as used in the description and claims, I consider the invention is not fully described and consequently the claims to be unclear as to the precise meaning of "coining".
         Secondly, the specification indicates that the coining operation of the method of the invention acts on the edges to provide "a smooth edge surface" and "eliminate surface deformations" so as to eliminate the possibility of fractures occurring at high stress points due to the otherwise rough or irregular edges left from the blanking step.   In the context of the present specification, I consider the expression "smooth edge surface" to mean a surface which constitutes a transitional region between the surfaces generating the edge and is one which is continuous and even, and being without roughness, points, bumps, ridges or other disconformity.   I am of the opinion that irrespective of the meaning of "coining" the definition in the claim does not restrict the coining step to necessarily providing such smooth edge surfaces ‑ for example any true coining operation would not necessarily produce smooth edge surfaces or surfaces without deformations unless appropriate dies were used to provide those characteristics on the clip, since dies could be used which leave indented or irregular edge surfaces, surfaces that may even promote rather than eliminate the possibility of fractures occurring (refer to the earlier quoted reference from "TOOL ENGINEERS HANDBOOK").
         Accordingly, since the coining step of claim 1 is not limited in this regard, I find claim 1 is not fairly based on the matter described.   For similar reasons claim 3 is also deficient in this regard.
         Claim 3 is directed to a rail clip per se.   The claim clearly includes within its scope rail clips other than those resulting from the method of claim 1, and in this regard it is noted that the clip of claim 3 need not be formed from a U‑shaped blank, need not have the arms formed in an arc so that they terminate beyond the base, and additionally need not be produced by requiring any forming step subsequent to the blanking step.   From the description these are features characteristic of the clip of the present invention and accordingly I find claim 3 not fairly based on the matter which has been described.
          The Examiner has maintained in his most recent report an objection of prior claiming based on Patent 518688.   That Patent issued on application 37379/78 (referred to on page 2 of the present specification), and is in the name of the present applicant, and is of earlier priority date than the present application.   Patent 518688 was laid open to public inspection after the priority date of the present application.
         Patent 518688 has two claims which read as follows:

"1.In rail fastening apparatus including a clip adapted for fastening an associated rail to an associated sleeper, said clip comprising a U‑shaped member formed from metal plate having a base and two substantially uniformly tapered arms extending therefrom, each of said arms being substantially uniformly tapered over substantially its entire length said base adapted to be secured to said sleeper outwardly spaced from the foot of said rail, said arms being bent over and beyond said base and oriented for contact with the foot of said rail such that said arms are deflected upwardly relative to said rail to develop downward clamping forces tending to hold said rail on said sleeper.

2.A method of forming a rail fastening clip as defined in claim 1 comprising supplying metal plate to a blanking press to form a generally U‑shaped flat blank in which the arms of the U taper from the base toward the free ends of said arms, bending the U to bring the free ends of the arms adjacent said base of the U‑shaped member such that said base portion is adapted to be secured to a rail sleeper and said free ends are adapted to seat on the foot of a rail."

Comparing present claim 1 with claim 2 of Patent 518688, it is noted that both are directed to a method of producing a rail clip with the same general final configuration, and that both methods involve a blanking step followed by a forming or bending step.   There is a difference since claim 1 of the present application also specifies the additional step of "coining the edges of said clip adjacent the base of the U where said clip is subjected to maximum stress during use".
         It is true that an objection of prior claiming may apply where the difference between a claim under attack and a claim of earlier priority date is a matter of common general knowledge ‑ see Babcock and Wilcox Ltd.'s Applic‑
ation (1952) 69 RPC 224.   In the present case, the Examiner has contended that the difference between the claim of the present application and that of Patent 518688 is merely a matter of common knowledge and that consequently objection under sub‑section 48(3)(c) is applicable.
         As previously mentioned, the difference in question relates to the step of "coining the edges ...".    The Examiner's contention and objection has merit in the context of the present specification.   However in my opinion it is unnecessary to consider the question of prior claiming and the associated question of manner of new manufacture at this stage since in view of my comments concerning the "coining" step and my finding of non‑compliance with section 40, amendments to the specification are necessarily required to overcome that deficiency.
         As I have found that the specification does not comply with the requirements of section 40 of the Act in a number of respects, and since the application and complete specification cannot be accepted in its present form, I afford the applicant an opportunity to lodge a statement of proposed amend‑
ments to my satisfaction within the time remaining for acceptance.

(T.R. BRUHN)