(CIRCUIT BENCH SITTING AT DELHI)
ORDER (No. 96 of 2013)
D.P.S. PARMAR, TECHNICAL MEMBER:
This is a transfer application for revocation of Patent No. 189097 granted to Bajaj Auto Limited. This application has been transferred to Intellectual Property Appellate Board (IPAB) by Hon'ble High Court of Delhi vide order No. C.O.No.3 of 2004 dated 25th May, 2007.
2. This matter came up before the Board on 24/09/2012. The learned counsel Ms. Pratibha M. Singh appeared for the appellant and learned counsel Shri M.K. Chakrabarti appeared for the respondent.
3. The applicant in this case, LML Limited is an Indian company incorporated under the Companies Act, 1956 carrying out their business for several years, inter alia, in the field of motor vehicles including two â wheeled motor vehicles such as motorcycles, motorscooters, mopeds and the like. They received a cease and desist notice from respondent on 12th April 2004. The applicant filled a petition for revocation of patent no 189097 at Hon'ble High Court Delhi (CO.NO.3 of 2004) on 27.04.2004. They are therefore âperson interested to file this revocation application.
BACKGROUND
4. During the period of 1990, 2- stroke engines were known and were used in 2 wheeled automotive industries. Manufacturers like-Bajaj Auto Limited, LML, Piaggio were manufacturing two stroke scooters with monocoque chassis and engine disposed at one side of the vehicle. It was a challenge for these two wheeler manufacturers including Bajaj Auto Limited â
i) to improve the fuel efficiency of said scooters; and
ii) to reduce emissions of said scooters.
5. It was also known that 2- stroke engines had the drawbacks of high fuel consumption and high emission due to its inherent design. To avoid these drawbacks the researchers had done many trials/changes in designs to improve the fuel efficiency of the two stroke engines, particularly by redesigning the intake system, improving the ignition/combustion systems.
However, such redesigning or change would create following disadvantages like â
i) increase of the number of component parts;
ii) complicating the systems;
iii) Increase in the weight of said scooters;
iv) increase of the cost of said scooters.
6. Hence, there was a big challenge before all two stroke scooter manufacturers to improve fuel efficiency and to reduce emission in said scooters which had monocoque chassis and engine and transmission disposed at one side of vehicles.
7. Typically in said scooters there is a compact arrangement of intake system due to space constraint i.e. the carburetor housing (which encompasses carburetor, air filter etc) is positioned or housed between the crankcase and lower face of monocoque chassis. This critical positioning of intake system does not allow adding any additional parts inside such intake system due to space constraint. Adding an additional component part would cause hitting of carburetor to lower face of the monocoque chassis while vehicle traveling over bumpy road. This would lead to damaging of carburetor as well as chassis.
8. The counsel for the respondent stated that it is important to note that the "space constraint" has been recognized in Piaggo patent No. 857575 [paras 80 and 85] which is the prior art of Bajaj's patent no. 189097.The patentee alleges to have solve this problem by placing reed valve in a minimum space between the crank case and carburetor housing in the intake system while keeping and maintaining monocoque chassis of the scooter and retaining the intake system, chassis shape and engine transmission positioning as it is. The above challenges were catered by the patentee by - :
(a) Designing a specific shape/structure of reed valve as disclosed in the drawings and selecting optimum thickness of the reed valve.
(b) to have rigid and leak proof mounting reed valve, four point mounting arrangement of reed valve was designed. To avoid use of any additional space, a special mounting arrangement was devised. Two of the four mountings are exclusive for reed valve while the remaining two mounting are designed common with carburetor and carburetor housing.
(c) shape and sizes of fasteners were optimized so as to consume least space and do not protrude outside to create any obstruction or foul with any other surrounding parts and still maintaining the easy serviceability access to these studs.
9. It is in this background the patentee developed this invention to meet the challenge to maintain the original shape and/ or design of the said scooters to maximum extent and at the same time to mitigate the above disadvantages.
10. The impugned patent is granted for four claims, namely
1. An improved intake system for 2 stroke engine used in a two wheeler having a monocoque chassis and where engine and transmission being disposed substantially on one side of said vehicles with respect to the longitudinal median plane of the vehicle as herein described comprising an air filter, a carburetor, carburetor housing, crankcase, a crankshaft, said air filter being positioned on the said carburetor, said carburetor being accommodated within the carburetor hosing, the said crankshaft being housed in the said crankcase and being rotatable within said crankcase, said crankshaft having outer diameter such that there is a clearance between this and inner diameter of the crankcase, a reed valve being adopted and positioned between the carburetor housing and said crankcase and the said reed valve comprises a pair of leaves having an inlet and an outlet side, the said inlet side is towards the carburetor and the said outlet side being towards the crankcase side, the said leaves open into the crankcase side depending on the pressure difference of air fuel mixture in the inlet and the outlet side of the said reed valve wherein the carburetor being directly mounted on the crankcase through carburetor housing.
2. An improved intake system as claimed in claim 1 wherein said engine and transmission are disposed of substantially on the right hand side with respect to the longitudinal median plane of the 2 wheeler.
3. An improved intake system claimed in claim 1 wherein said reed valve is mounted on side crankcase and carburetor housing by means of screw and stud.
4. An improved intake system of 2 stroke engine substantially as described hereinabove and as illustrated in the drawings accompanying this specification.
Case of the applicant
11. The learned counsel for the applicant submitted that in the prior art the entry of air and fuel mixture into this cavity is through an opening in the crankcase below the carburetor. The entry of air and fuel mixture is controlled by the perpendicular edge of a slanted portion on the crankshaft which opens or closes the opening based on a predetermined timing.
12. According to the impugned patent, there are three disadvantages. They are
(i)The perpendicular edge of the slanted portion does not allow any flexibility in the amount of opening in the crankcase during every cycle of operation which is desirable depending on the need of variable air-fuel mixture quantity at different speeds.
(ii)The intake timing is not very precise since control on opening for air fuel mixture is done by un-machined portions of the crankshaft and corresponding portions of the crankcase.
(iii)A certain amount of air and fuel mixture leaks into the crankcase cavity through the clearance between the outer periphery of the crankshaft and the corresponding inner periphery of the rotating crankshaft.
13. The learned counsel for the applicant submitted that the above disadvantages, lead to inferior engine performance, higher emissions of pollutants, and lesser fuel efficiency.
14. The learned counsel for the applicant submitted that the inventor claimed to have done away with the prior art intake system comprising of a perpendicular edge of a slanted portion on the crankshaft and replaced this with a device called the reed valve. He further stated that all these advantages are overcome by providing a reed valve which rests on top of the crankshaft and has an inlet side into the crankshaft cavity. The carburetor is contained in a housing which is claimed to be mounted on top of the reed valve and therefore is connected to the crankcase through the reed valve.
15. According to the learned counsel for the applicant, novelty of invention resides in the fact that a conventional reed valve is positioned above a crankcase and carburetor housing fixed to the crankcase through said reed valve in an internal combustion engine operating on two stroke principle.
Grounds of revocation
16. The learned counsel for the applicant submitted that the claimed invention is not novel and does not involve any inventive step. The complete specification does not sufficiently or fairly describe the invention and the method by which it is to be performed.
ANTICIPATION:
17. The learned counsel for the applicant submitted that there is no novelty in the carburetor, the carburetor housing, reed valves the crankcase, the crankshaft, or the air filter, and the same are conventional features of all two stroke internal combustion engines. Every feature of the claims of the impugned patent is conventional and well known in the art much prior to the filing of the impugned patent. Also, it is a well settled principle of law that mere juxtaposing of known components does not amount to novelty for grant of a patent.
18. The learned counsel for the applicant submitted that the arguments advanced by the counsel for the Respondent on 10.04.2012 and 26.09.2012 were contradictory to the claims of the impugned patent itself. At the time of oral arguments and the submission of the Respondents contention was that the invention lay only in the arrangement and combination of the reed valve between the carburetor and the crankcase, which are the various essential features of an engine, in a very compact manner so as to fit on one side of a small scooter. No such invention has been claimed in the complete specification or claims. A reading of the complete specification shows that the entire alleged invention is focused on the use of reed valve and nothing else. Much stress was laid down by the Respondent during arguments on the positioning of reed valve, however no such claim is made in the patent specifications.
19. Following prior art documents were cited:-
(i) European Patent Application 0548993 A1 of c I Yamaha Hatsudoshi Kabushiki Kaisha published on June 30, 1993 relating to an two stroke internal combustion engine comprising a crankcase intake system controlled by a valve system;
(ii) British Patent 1453229 of Nissan Motor Company published on October 20, 1976 relating to an intake system for an internal combustion engine;
(iii) United States Patent 4,408,579 of Brunswick Corporation published on October 11, 1983 relating to an induction system for a two-cycle engine;
(iv) United States Patent 4,345,551 of Brunswick Corporation published on August 24, 1982 relating to an air and fuel induction system for a two cycle engine;
(v) Unite States Patent 5,613,458 of Yamaha Hatsudoshi Kabushiki Kaisha published on March 25, 1997 relating to a fuel injection system for an engine having a reed type valve in the induction system;
(vi) âAn improved model for predicting reed valve behavior in two stroke cycle engines', R.fleck, G.P.Blair, and R.A.R.Houston, SAE Paper No. 871654, Society of Automotive Engineers;
(vii) Service/Owner's Manual extracts showing Use of reed valves in vehicles sold in India under the names TVS Scooty by TVS Motors from the year 1982;
(viii) Service/Owner's Manual extracts showing use of reed valves in vehicles sold in India under the names TVS AX 100 by TVS Motors from the year 1986;
(ix) Service/Owner's Manuals extracts showing use of reed valves in vehicles sold in India under the names Kinetic Honda by Kinetic Motors from the year 1987;
(x) Engineering drawings showing use of reed valves in vehicles sold across the world under the names Zip 50cc; Free 50cc and Skipper 125cc by Piaggio Veicoli CspA well before 1995;
(xi) Engineering drawings showing use of reed valves in vehicles sold across the world under the brand names S 50 and Scooty by Benelli from the year 1980. Technical drawing no. is 104.30.87.00.00 dated 25th June 1979;
(xii) United States patent 5,291,866 of David R. Kosa published on March 8, 1994
20. The learned counsel for the applicant submitted that above cited various prior art documents show that the impugned patent is anticipated by various prior arts that were all in the public domain at the time of the filing of the impugned patent. The arrangement sought to be patented by the Respondent is comprehensively disclosed in the US patent no. 4345551.
21. The learned counsel for the applicant submitted that various third parties and competitors, VIZ. TVS and Kinetic Honda had already been using reed valves as intake systems in their scooter engines, and as such, the claims of the impugned patent are completely anticipated. (pages 78 and 79 of the Documents filed by the Petitioner)
22. The learned counsel for the applicant during oral submissions stated that the impugned patent lacks novelty considering it merely being a rearrangement of known devices functioning independently of one and another in a known manner. The counsel submitted that in EP 0 548993 (Yamaha ) , UK 1453229( Nissan) United States Patent 4,408,579 and 4345551 (Brunswick), 5613468 (Yamaha) and 5,291,866 , SAE paper 871654, Service/Owner's Manual of TVS Scooty and TVX AX 100 and Kinetic Honda, Engineering drawings of Piaggio(ZIP50cc etc.) use of reed valve is disclosed. The learned counsel relied on
(1).AIR 1982 SC 1444 : PTC (Suppl)(1) 731 (SC) Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries:-
50. In our opinion, the findings of the learned trial Judge to the effect that the patent is not a manner of new manufacture or improvement, nor does it involve any inventive step having regard to what was known or used prior to the date of patent, should not have been lightly disturbed by the Appellate Bench. These were, as already observed, largely findings of fact, based on appreciation of the evidence of witnesses and the trial Court had the initial advantage of observing their demeanour in the witness-box. Moreover, the approach adopted by the trial Court was quite in conformity with the basic principles on the subject, noticed in an earlier part of this judgment. The patented machine is merely an application of an old invention, known for decades before 1951, for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application, which is no more than a 'workshop improvement', a normal development of an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman. The alleged discovery does not lie outside the Track of what was known before. It would have been obvious to any skilled worker in the field, in the state of knowledge existing at the date of patent, of what was publicly known or practised before about this process, that the claim in question viz., mere addition of a lever and bracket did not make the invention the subject of the claim concerned. There has been no substantial exercise of the inventive power or innovative faculty. There is no evidence that the patented machine is the 775 result of any research, independent thought, ingenuity and skill. Indeed, Sotam Singh frankly admitted that he did not know whether Purshottam had made any research or any experiments to produce this combination. Nor does this combination of old integers involve any novelty. Thus judged objectively, by the tests suggested by authorities, the patent in question lacked novelty and invention.
51. We will close the discussion of trial Court's Judgment by referring to a decision of the House of Lords in Harwood v. Great Northern Dy. Co. as, in principle, that case is analogous to the one before us. In that case, a person took out a patent, which he thus described:
"My invention consists in forming a recess or groove in one or both sides of each fish (plate), so as to reduce the quantity of metal at that part, and to be adapted to receive the square heads of the bolts, which are thus prevented from turning round when the nuts are screwed on."
His claim was "for constructing fishes for connecting the rails of railways, with a groove adapted for receiving the ends of the bolts employed for securing such fishes; and the application of such fishes for connecting the ends of railways in manner hereinbefore described. The constructing of fish joints for connecting the rails of railways with grooved fishes fitted to the sides of the rails, and secured to them by bolts or nuts, or rivets, and having projecting wings firmly secured to and resting upon the sleepers or bearers, so as to support the rails by their sides and upper flanges."
It was proved that before the date of his patent, fish-joints had been used to connect and strengthen the rails of railways .In some cases, the fishes were flat pieces of iron, with round holes for bolts, the heads of the bolts being held in their places by separate means. In others the extreme ends of the holes were made square and the bolt-heads square, to put into them, and, in some, square recesses were made in the flat pieces of iron for the same purpose; but till the time of the patent, fishes for connecting the railways had never been made with a groove in their lateral surfaces so as to receive the square heads of the bolts, and render the fish lighter for equal strength, or stronger for an equal weight of metal."
52. On these facts, it was held that what was claimed as an invention was not a good ground to sustain a patent.
Blackburn L. J., succinctly summed up the rule of the decision, thus:
"In order to bring the subject-matter of a patent within this exception, there must be invention so applied as to produce a practical result. And we quite agree with the Court of Exchequer Chamber that a mere application of an old contrivance in the old way to an analogous subject, without any novelty or invention in the mode of applying such old contrivance to the new purpose, is not a valid subject-matter of a patent."
The above enunciation squarely applies to the facts of the present case.
(2) 2011 (48) PTC 297 (IPAB) â Narayan Chandra Das Vs. Jolly Guhathakurata and Anr.: Where invention claimed was for âA head scarf cum neck covering apparel for women â
â7. On 27.09.2006 a notice was issued by the counsel for respondent stating inter alia that the respondent were in the business of creating, marketing, manufacturing textile fabric based articles, in particular head scars woven, knitted or involving in particular such new and original designs as were registered under Designs Nos. 203935 and 203936 of the respondents name and that even a cursory look at the packaging/Trade Dress wrongfully adopted by applicant would make it evident that the applicant have not only slavishly copied/applied the basic registered design of our clients on the applicants Head Scarfs but also all the distinctive design features appearing in the packing/Trade Dress of the respondents designer products have been copied. The design of the Head Scarfs and the stated related Trade Dress under which those are being sold as adopted and used by the applicant are such a slavish copy of the distinctive registered designs of the Head Scarfs and the Trade Dress of the respondents that any purchaser of average intelligence and imperfect recollection, not to say of the illiterate customers, is bound to be deceived into believing that the products thus sold by the applicant are in fact the products of the respondents bearing the eye appealing and distinctive copyrighted Head Scarf designs covered under the said registered design Nos. 203935 and 203936.
In this case, the learned IPAB cited the case AIR 1982 SC 1444 : PTC (Suppl)(1) 731 (SC) Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries:-
â24. A patentable invention therefore must involve something which is outside the probable capacity of a craftsman which is expressed by saying it must have âsubject matter or involve an âinventive step. Novelty and subject matter are obviously closely alliedâ¦â¦..Although these issues must be pleaded separately, both are invariable raised by a defendant, and in fact âsubject matter is the crucial test, for which they may well be novelty not involving an âinventive step it is bard to conceive how there can be an âinventive step without noveltyâ¦â¦â¦â¦
26. The expression "does not involve any inventive step" used in section 26(1) (a) of the Act and its equivalent word "obvious", have acquired special significance in the terminology of Patent Law. The obviousness has to be strictly and objectively judged. For this determination several forms of the question have been suggested. The 0 the one suggested by Salmond L.J. in Rado v. Johon Tye and Son Ltd., (1967) R.P .C. 297 is apposite. It is "whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously knownâ¦â¦â¦.
55. For all the reasons aforesaid, we have no hesitation in holding that the learned Judges of the Appellate Bench were in error in reversing the findings of the trial court on issues 1 and I-A. The learned trial judge was right in holding that the patented machine was neither a manner of new manufacture or novel improvement, nor did it involve any inventive step, having regard to what was publicly known or used at the date of the patent. The grant of the patent in question was therefore, invalid and was liable to revoked on the grounds mentioned in clauses (d) and (e) of section 26(1) of the Act."
6. 1887 RPC 62 Williams v. NYE
Patent.- Action for infringement - combination of the two old machines:
Want of subject matter -invention - invalidity.
We took out a patent for an improved mincing machine which was in effect a combination of a mincing machine and a filling machine, both of which were old. He brought an action for infringement against N. and Co e who put in issue the validity of the patent on the ground that the alleged invention consisted simply joining two well-known machines, and was not subject matter."
Held at the trial that the patent was a combination of old things in the simplest possible manner, that there was not sufficient invention, and that the patent was invalid.
The plaintiff appealed. .
Held affirming" the judgement of the court below, that there was not sufficient invention to constitute subject matter.
14. We have considered the submissions of the learned counsel for appellant. The respondents own" notice dated 27.09.06 referred to the prior art in respect of the patented invention. The illustrations and pictures filed along with the paper book would show that the subject matter of design numbers 203935 dated 18.04.2006 and 203936 dated 18.04.2006 and the subject matter of the patent application 213756 dated 20.10.2006 are one and the same. The respondent had not. disclosed the existence of the prior art and therefore on the ground of false suggestion or misrepresentation the respondent s patent is liable to be revoked. Even on the ground of invention and novelty we donot think that the invention is either novel or non-obvious nor is there an inventive step. It is submitted by the respondent that his scarf are well known and used by all and so is the cap. All that he has done is to stitch the cap .and the muffler or scan together. Any person who wanted to protect her face and hair would in fact have to wear the scarf and cap individually to achieve the same result. There is no doubt that the complete specification contains flowery language describing how the visual attraction will be enhanced, how the hair of the lady will be protected. But if the verbal jugglery is removed we are left with a cap stitched to a muffler and nothing more. This in fact is merely a juxtaposition of known components i.e., cap and muffler working independently and such combination are not patentable under section 3(f). Therefore, it is difficult to accept that this is an invention which deserves to be patented. In the Atlantic Words v. Brady, 107 U.S.192 (1883) the US Supreme Court had an occasion to consider something similar. What was patented was attaching a screw to the forward end of a propeller dredge boat, and with this patent had created for himself an exclusive privilege, thereby causing fear and apprehension in persons pursuing their business honestly. In this case the applicants who are ordinary people selling muffler and caps are being harassed by the respondent on the basis of an alleged invention which cannot be held to be patentable at all.
15. In re Johnson 747 F.2d 1456 (Fed.Cir.1984) the US court of appeal held that no patent can be granted if an invention. is obvious when compared to the prior art. In the present case, the prior art is the respondent's' own design which is identical to the patented invention.
In Case No. T0956/05-3.3.02 all that the inventor had done was to bring together the two well known propellants to avoid oxygen damage, the court heldthat this does not amount or involve an inventive step. It is so in the present case, too.
15. In AIR 1982 SC 1444 the alleged invention the plaintiff had was means of mounting and holding metallic utensils for the purpose of turning before polishing. The Supreme Court held that the patented machine is no more than a workshop f improvement. It is a mere collocation of more than a workshop improvement. It is a mere collection of more than one integer or things which does not qualify for the grant of patent. This decision squarely applies to the case on hand.
16. In 1887 RPC 62 also the Court held that the cutting part which cut the meat and the filling part along with the metal screw by which the cut meat was filled was not an invention and that the patent applicant had simply taken a Gilbert and Nye's patent and substituted the Donald's improved cutter in the place of Gilbert's Cutters he had held that this was not entitled to patent.
17. Therefore, applying the above decisions and on fact, we find that the alleged invention lacks novelty and it is not patentable under section 3(f). it is obvious being merely a combination of known components working independent of each other. It is publicly known/publicly used by the respondents own design before filing of the patent application, and therefore, the alleged invention was not patentable. Accordingly, the application for revocation ORA/34/2009/PT/KOL is hereby allowed and the Patent No. 213756 is revoked. M.P. No. 20/2009 stands closed.â
(3). PTC(Sppl) (2)310(Cal) Polar Industries Ltd. Vs. Jay Engineering Works Ltd. and Anr.
â13. The petitioner also relied on judgment in the case of Morgan and Co. v. Windover and Co.. Vol. VII of the Repots of Patent, Design and Trade Mark Cases 131. In the said case the assignees of a patent for supporting the front of four-wheel carriage by C springs brought an action for infringement thereof against Windover and Co. The main defences relied on were (a) want of novelty in the patented invention inasmuch as it consisted in the applying of a known article to an analogous purpose; (b) prior user of the invention by Faithful. The defendant went for Trial Court where it was held that the invention was novel and good subject-matter; that the user by Faithful was experimental; (c) that the plaintiffs were entitled to succeed. The defendants appealed and the appeal was also dismissed by the Appeal Court. Thereafter, an appeal was preferred to the House of Lords. The House of Lords held that the intention was not subject-matter for patent, being only the application of a known articles to an analogous purpose without any ingenuity and that the Judgment appealed for must be reversed with cots. It was also held that if a known articles is applied to an analogous purpose, the application is not patentable simply because it produces advantages not produced before.
14. In the facts of the instant case, it is not disputed that split type shackles have been in use since long prior to the application for the impugned patent. The claimed âPatent also used a similar type of mechanism both at the lower end of the rod by which the ceiling fan is hanged and also at the top of the shaft of the fan. The mechanisms have been put in a single piece on both the ends being the lower end of the rod and the upper end of the shaft of the fan.
15. In order to be patentable an improvement on something known before or combination of different matters already known, should be more than mere workshop improvement. In any opinion, it cannot be said in the instant case, that the patent registered is an inventive step, or that the same is more than a workshop improvement. Furthermore, it is a mere collection of more than one integers or things, not involving the exercise of any inventive faculty as such, the same does not qualify for the grant of patent. It is a device and/or mechanism which had already been in use at the top end of the rod. Merely because the same device and/or mechanism has been made use of the lower end of the rod to couple it with the upper end of the shaft of the fan by using the same mechanism and or device and merely because the two devices have been joined into a single piece on both sides, it cannot be said that it amounts to a new invention. ill my opinion, it is an application of a known mechanism which had already been used for all' practical purposes. It was obvious to a skilled worker in the field concerned, in the state of knowledge existing at and prior to the date of the patent and was to be found in the literature and/or knowledge then available to him.â
(4) PTC (Suppl)(2) 799(Cal). â Unique Transmission Co. Ltd. Vs. ESBI Transmission Pvt. Ltd
âAccording to the petitioner, the said couplings had been originally developed by West German Company âVulkan Kupplunsund Gorriebebau (hereinafter referred to as âVulkan or âVulkans) about 37 years back, that is in or about 1952.â
âAccording to the petitioner, the said couplings in view of their origin form the said West German Company had become publicly known in the trade and to the general public as âVulkan Couplings.â
â30. The heading given to the alleged invention i.e. flexible coupling is also mis-leading. Flexible couplings have admittedly been manufactured in India since a long time prior to the application for grant of patent, by various manufacturers. It appears to me that the whole object of the respondent No. 1 was to oust all manufacturers of flexible couplings from their established business which they had been carrying on since a long time prior to the date of the application for grant of patent to the knowledge of the petitioner.â
Respondents reply
23. The learned counsel for the respondent submitted that every automobile working on Internal Combustion with two stroke principle requires an intake system i.e. a system for supplying air/fuel mixture to engine. This intake system has specific path of supplying air / fuel mixture to engine through various parts like - i) Fuel metering device (Carburetor or fuel injector), ii) Air filter, iii) Air suction means, manifold etc. to generate power. A crank case structure encompasses the engine and has cavity to supply air/fuel mixture to engine. A crank shaft rotates inside the crank case.
24. The learned counsel for the respondent submitted that Air/Fuel path and arrangement of intake system depends upon (1) Type of chassis 1 frame structure (for example tubular, monocoque chassis etc.),(2) its application (for example on 2/3 wheeled vehicle, stationary machines etc.),(3) Mounting location / orientation of engine and (4) Space availability for mounting the intake system parts.
25. The learned counsel for the respondent explained the intake systems for engines working on two stroke principle.
26. The learned counsel for the respondent submitted that Bajaj Patent has monocoque chassis and in other cases where the vehicle has tubular frame or other type structure (not monocoque chassis), the engine is mounted at central position and at lower side of frame structure.
27. The learned counsel for the respondent submitted the elements of intake system (i.e. carburetor, air filter, air suction means, intake manifold etc.) are mounted at suitable locations in the path between fuel tank and engine intake point provided in crank case. The carburetor draws fuel from fuel tank and sucks air from atmosphere to prepare air/fuel mixture and supplies the mixture to the engine through a manifold or intake passage. This manifold is mounted on the crankcase. Generally, in these types of frame structures (which is not monocoque chassis), the intake system has a long and spacious path as this frame structure allows sufficient space for mounting components /parts of intake system in required fashion, in such situation the reed valve can be easily mounted / positioned at required location but not in structure of Bajaj's patent.
28. The learned counsel for the respondent submitted that however, typically in case where the vehicle has monocoque chassis and engine and transmission system are mounted on one side of this chassis (i.e. as described in Bajaj's patent), the intake system is required to be mounted in a very close vicinity to engine and needs to be accommodated inside the cavity of chassis, which also accommodates engine. Thus available space for intake system is between the lower edge of chassis and crank case. Hence, intake system needs to be very compact to get accommodated in the available space condition .In such situations all the elements of intake system i.e. carburetor air filter etc. are housed in a single casing (known as carburetor housing) and this casing/housing is directly of the chassis.
29. The learned counsel for the respondent submitted that in the prior art as described in Bajaj Patent Specification, to supply required amount of air/fuel mixture i.e. to control the air/fuel supply to engine through crankcase, a very close working clearance (gap) is required to be maintained between crank shaft and inner edge of crank case (known as 'Volvola'). During rotation of crank shaft this clearance varies in such a way that at a certain situation it allows air/fuel mixture to pass into the engine and in other situations the gap is so minimum which does not permit to pass air/fuel mixture into the engine. This calls for very close dimensional control while manufacturing of crank shaft and crank case which is avoided in present Bajaj's patent.
30. The learned counsel for the respondent submitted in view of above the invention should be considered and compared for such or similar structure of chassis, engine and intake system.
31. The learned counsel for the respondent submitted that the impugned patent relates to
i)an improved intake system employed in a internal combustion engine working on 2 stroke principle,
ii)engine mounted on a monocoque (not tubular) chassis of a scooter,
iii)engine and transmission are disposed at one side (RH) of the longitudinal median plane of the vehicle.
32. In reply to the citations relating to the prior art, the learned counsel for the respondent made Detailed Comparison with above cited prior arts and submitted that:-
European Patent 0548993 A 1
According to the counsel for respondent this patent illustrates -
(i) intake system employs a fuel injection system (88), through an injector and not through carburetor
(ii) hence ,it does not employ any carburetor and hence does not use carburetor housing,
(iii) it does not disclose monocoque chassis,
(iv) it does not disclose engine and transmission located at one side of the vehicle,
(v) It does not disclose reed valve positioned between crankcase and carburetor housing.
Therefore, European Patent 0548993 A 1 does not teach technology as claimed in any of the claims of Bajaj's patent:
British Patent 1453229
According to the counsel for respondent this patent is related to a rotary engine while the BAJAJ patent is of reciprocating type. Therefore, the two technologies are fundamentally different and cannot be compared.
(ii) British patent discloses primary and secondary intake passages (18, 20) onto which the carburetor is mounted,
(iii) The cited British patent discloses primary intake passage employing check valve (46) which is treated as reed valve (Refer fig 2). This patent does not disclose the features of carburetor housing.
These above feature clearly indicates that carburetor does not have any housing and not directly fitted on to crank case, but intake passage is an intermittent part between carburetor and crank case, thus not discloses that reed valve is positioned between carburetor housing and crank case.
Therefore, the cited British Patent 1453229 is irrelevant for the ground of Anticipation.
US Patent 4408579
According to the counsel for respondent this patent shows carburetor mounted on crankcase with the following distinguishing features -
(i) Cited invention is applicable to an outboard motor. (Refer page 2) in which the engine or motor has vertical crank shaft and horizontal cylinder head, while Bajaj patent has crankshaft and cylinder is mounted horizontally. This clearly shows that engine arrangements are totally different.
(ii) It does not have monocoque chassis of a scooter like structure to face the space constraint.
(iii) engine is not disposed at one side of vehicle (scooter),
(iv) in the citation, an induction member (24) is located between engine and carburetor, and
(v) a valve seat member (26) is mounted between induction member (24) and crank case(15). This valve seat member is nothing but a manifold.
The counsel for respondent submitted that the above points clearly show that intake system is of very different type than that of invention and also the reed valve is not directly mounted between carburetor housing and crank case. In fact it does not show employing any carburetor housing. It will be appreciated that the arrangement of all component parts in the available limited space of the scooter having monocoque chassis was the challenge for the manufacturers when it was Bajaj who came out with the unknown technological solution.
US Patent 4345551
According to the counsel for respondent this patent relates to a marine outboard engine (page 1), in which the engine or motor has vertical crank shaft and horizontal cylinder head, while Bajaj patent has crankshaft and cylinder is mounted horizontally. This clearly shows that engine arrangements are totally different.
(ii) Page 2, it employs a transition member (29) between reed valve (27) and carburetor (25). It further discloses that the reed valve is connected to engine through four induction passage i.e. two upper and two lower (31 a, 31 b, 32a, 32b). Also, this cited specification does not describe any carburetor housing.
The counsel for respondent submitted that all the above features clearly indicate that, it is a different type of intake system and reed valve is not directly fitted in between crank case and carburetor housing, which is one of the essential features of Bajaj's patent, thus not discloses that reed valve is positioned between carburetor housing and crank case. Also, it does not disclose that chassis is monocoque type and the engine is disposed of at one side of the vehicle/ scooter.
US Patent 5613468
The counsel for respondent submitted that this patent discloses intake system employing a fuel injection system (28) and not employing any carburetor and hence not using of carburetor housing (Abstract and page 2). Hence the intake system is entirely different than that of Bajajs patent. Further, it does not disclose monocoque chassis and / or engine and transmission located at one side of the vehicle and a reed valve is positioned between the crankcase and the carburetor housing. (emphasis added)
US Patent 5291866
The counsel for respondent submitted that this patent discloses an arrangement relating to super charging of an engine (Pages 1 and 2), while Bajajs patent is related to normal charging. The intake system comprises a pulse charger (40). In this citation the reed valve(s) are placed in pulse charger. The carburetor is connected to pulse charger hose 54 and pressure box 130. The carburetor is further connected to an intake system 18 which supplies air fuel mixture to engine.
The above patent does not disclose that carburetor has its housing, and reed valve is placed between crankcase and carburetor housing (rather reed valves are placed in pulse charger).
Further, it does not disclose that chassis is monocoque type and the engine is disposed at one side of vehicle.
SAE Publication (871654)
The counsel for respondent submitted that this paper discloses some experiments carried out for judging the behavior or function of reed valve and nothing else of Bajaj's patent.
The citation shows some experimental data, set up and calculations. It does not specify the essential feature/s of Bajaj's patent i.e. any type of intake system and positioning of reed valve between carburetor housing and crankcase. The intake system elements like air filter, carburetor housing etc are not disclosed. Further, it does not disclose the chassis is monocoque, engine is disposed at one end of vehicle
Technical Specification of TVS -Suzuki (Service Manual)
The counsel for respondent submitted that this is a one page citation just disclosing reed valve type induction. However, it does not disclose the other elements of Bajaj's intake system as claimed in any of the claims. Also, it does not disclose that chassis is monocoque, nor is the engine disposed on one end of the vehicle, or the carburetor is positioned in housing and reed valve is mounted between carburetor housing and crank case.
Technical Specification of TVS -AX 100
The counsel for respondent submitted that this is a one page citation and discloses a reed valve type induction. However, it does not disclose the other elements of intake system of Bajaj's patent. Further, it does not disclose that chassis is monocoque, engine is disposed at one end of vehicle, carburetor is positioned in housing and reed valve is mounted between carburetor housing and crank case.
Service Manual of Kinetic Honda
The counsel for respondent submitted that this is a one page citation just disclosing reed valve type induction. However, it does not disclose the other elements of Bajaj's intake system of patent no. 189097. It discloses the procedure of removal of reed valve. The sequence clearly shows that carburetor to be removed first, engine should then be removed, then intake pipe and lastly the reed valve to be removed.
These features clearly show that there is no carburetor housing, secondly engine and intake pipe are placed between reed valve and carburetor. It does not disclose that chassis is monocoque, engine is disposed at one side of the vehicle, carburetor is positioned in housing and reed valve is mounted between carburetor housing and crank case.
Engine Drawing Zip 50cc
The counsel for respondent submitted that this engineering drawing does not show any type of chassis and mounting position of engine i.e. whether monocoque chassis and engine mounted at one side. Further, various elements of intake system (i.e. air filter, carburetor, housing etc.) are not disclosed in the drawing. The drawing does not disclose the features that (1) carburetor is accommodated in carburetor housing and (2) reed valve is mounted between the crank case and the carburetor housing.
Eng Drawing S 50 and Scooty
The counsel for respondent submitted that this engineering drawing does not show any type of chassis and mounting position of engine (i.e. whether monocoque chassis and engine mounted at one side). Further, various element of intake system (i.e. air filter etc.) are not disclosed in the drawing. The drawing does not disclose the features that (1) carburetor is accommodated in carburetor housing and (2) reed valve is mounted between the crank case and the carburetor housing.
33. The counsel for respondent submitted that it can be observed from above that none of cited prior arts discloses the claimed elements of Bajaj Patent i.e. no prior art discloses intake system comprising an air filter, a carburetor, carburetor housing, air filter being positioned on the said carburetor; carburetor and air filter being accommodated within carburetor housing and a reed valve being adopted and positioned between the carburetor housing for a two substantially on one side of the said vehicle. He referred to para 4 of the head note of the AIR 1982 SC 1444 : PTC (Suppl)(1) 731 (SC) Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries:-
â4. In order to be patentable, an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop `improvement, and must independently satisfy the test of invention or an inventive step. It must produce a new result, or a new article or a better or cheaper article than before. The new subject matter must involve "invention" over what is old. Mere collocation of more than one, integers or things, not involving the exercise of any inventive faculty does not qualify for the grant of a patent.â
He contended that the claimed invention is for an improved air fuel intake system over the UK patent 587575 where reed valve is used .In the present invention putting reed valve directly to crank case is inventive feature. He cited para 17,18 and 21
17. The object of Patent Law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which after the expiry of the fixed period of the monopoly, passes into the public domain.
18. The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what was, already known before the date of the patent.
21. It is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before.
The counsel contended that the Scarf case of IPAB is not applicable as function in the claimed invention is new and shown at page 6 of the specification that the claimed invention gives better results (efficiency and reduced emission).
34. If we compare the features of the claimed invention with the prior art cited by the applicant we find there is a mosaic of separate steps or the features known which could not be sufficient to constitute anticipation. The specific feature such as scooter with monocoque chassis with engine mounted at one side to which the claimed invention is applied, are not found in any of the cited document. None of the prior art documents taught all the features of the claimed invention applicable to the limitation of monocoque chassis with engine mounted at one side. None of the prior art suggests the improved intake system for two stroke engine of the kind claimed where reed valve is adopted and positioned between carburetor housing and the crankshaft. In the present case the applicant has made mosaic of citations by using mosaic of separate steps relating to use of reed valve to prove anticipation of the claimed invention. The applicant has not cited one single document which has all the claimed features of the invention but has relied on different documents /specifications put together in the form of mosaic of citations which is not sufficient to prove anticipation. We find para 8-40 of Patent Law by Narayanan useful which is reproduced below.
â8-40 A symposium of facts known to physicists or a mosaic of separate steps each known in manufacture, will not suffice to constitute anticipation, thought they may have a bearing upon the question of quantum of ingenuity which arises when a tribunal is called upon to consider whether there is âsubject matter for a patent in the invention. Where the alleged anticipation is based on combining and piecing together claims in different specifications, a very clear case is required to stop the grant.â
We find this is applicable to this case. We do not find the claimed invention is anticipated by the above referred citations as no clear case is made out by the applicant. This ground therefore fails.
OBVIOUSNESS u/s 64 (1) f --
35. The counsel for applicant submitted that the impugned patent is nothing but a workshop improvement and minor rearrangement of technology that is in the public domain. The applicant relied on the following citations in addition to citations relied on for anticipation.
i. British Patent 857575 of Piaggio(1960) . For showing carburetor is directly mounted on the crank case and presence of air valves.(Claim1). Counsel submitted that it is a matter of mere workshop improvement for a person skilled in the art, to replace an air valve with a reed type valve.
ii. United States patent 5579735 published on December 3, 1996 .for Four stroke internal combustion engine having valves and valve actuating mechanisms control the flow of mixture.(Abstract)
iii. Article titles âUnsteady Gas Flow Through Reed Valve Induction Systemsâ published in 1978 by Society of Automative Engineers; For Method of controlling the intake of fresh charge ;Use of Disc valve, piston port valve and reed valve
iv. United States patent 4690107 published on September 1, 1987;Flow enhancer for reed inlet valve
v. United States patent 4475487 published on October 9, 1984;Joint pipe for carburetor (Abstract)
vi. United States patent 4964381 published on October 23, 1990.Fuel injection features of a two stroke engine for motorcycles.(Abstract)
36. The Counsel for the applicant submitted that use of reed valve in the conventional two stroke engine is admitted by the respondent as known (Page 4 para 3 of specification) where carburetor is not directly fixed to the crankcase but it is positioned between crankcase and inlet manifold. Therefore what emerges from this is that claimed invention is only for an arrangement. According to the counsel claimed invention constitutes nothing more than workshop modification and minor tinkering with well known technology.
37. The counsel for the respondent submitted that the "space constraint" has been recognized in Piaggo patent No. 857575 [paras 80 and 85]. This is the closest prior art to impugned patent. The space constraint also referred in patent specification, [paras 3 and 6 of page 4].In such a situation according to the counsel any person skilled in the art would only think of one or more following options-
a) redesigning anyone of the parts, namely intake system or chassis and/or crankcase;
b) to place the carburetor, housing, filter at suitable places, say by lateral displacement within the available space between crankcase and monocoque chassis. This change would cause additional mounting arrangements i.e. more component parts and hence extra cost.
38. The learned counsel submitted that to meet the original challenge of maintaining the monocoque chassis of the scooter and retaining the intake system, chassis shape and engine transmission positioning as it is, patentee decided to place reed valve in a minimum space between the crank case and carburetor housing in the intake system.
39. The learned counsel submittedthat to achieve the claimed invention the following important and essential aspects were required to be considered -
(i) the shape and size of reed valve has been so designed that it can be fitted in the minimum available space.
(ii) reed valve requires a very precise and perfect mounting arrangement to tolerate /accept the vibrations of the air -fuel mixture and to work as leak proof valve for air fuel mixture.
(iii) suitable and appropriate mounting provision/arrangement in reed valve as well as in the adjacent components on which reed valve is to be fixed (which are crank case and carburetor housing in this case) and
(iv) ease of access to tools for servicing.
40. The learned counsel submittedthat the above challenges were catered by - :
(a) designing a specific shape/structure of reed valve as disclosed in the drawings and selecting optimum thickness of the reed valve.
(b) to have rigid and leak proof mounting reed valve, four point mounting arrangement of reed valve was designed. To avoid use of any additional space, a special ~mounting arrangement was devised. Two of the four mountings are exclusive for reed valve while the remaining two mounting are designed common with carburetor and carburetor housing.
(c) shape and sizes of fasteners were optimized so as to consume least space and do not protrude outside to create any obstruction or foul with any other surrounding parts and still maintaining the easy serviceability access to these studs.
It can be understood from above points the challenges were catered in such a way which prevented changes in design of any existing components, any additional machining of existing components and hence no extra cost.
41. The learned counsel submittedthat no manufacturer including the petitioner before (prior to 1997) Bajaj Auto Limited had published or applied for a patent. If the improved technology of Bajaj was so obvious and could not give any significant improvement, why had not any manufacturer including the applicant thought of this idea till the patent of Bajaj Auto was published and was made available in the Indian market.
42. The learned counsel submittedthat none of other citations referred by applicant to prove obviousness shows such type chassis, engine and intake system arrangement as claimed by the impugned invention.
US Patent 5579735
The learned counsel submittedthat this patent is related to a four stroke engine employed on hand-held or portable tool like chain saw and not to any two wheeler, hence not applicable to vehicle having monocoque chassis and engine and transmission are disposed at one end ( in fact cited system does not require any transmission).
With reference to figure 5a and 5b and description on lines 7 and 8 (page no. 115), the carburetor 529 is connected to inlet port 528 through a tube 567. Further, the engine has outlet port 531 which is connected to a duct 532 and reed valve is positioned between outlet port 531 and duct 532.No carburetor housing is disclosed.
This intake system arrangement is completely different than that of BAL i.e. reed valve is not mounted between carburetor housing and crank case( rather reed valve is positioned between outlet port 531 and duct.
SAE Publication (780766)
The learned counsel submittedthat this is a study related to unsteady gas flow through reed valve induction system. This is a generic study and does not relate to any specific intake system or relate to any specific type of vehicle. Further, it does not disclose many elements of intake system for example carburetor, carburetor housing, air filter etc. This citation does not disclose that carburetor has housing, and reed valve is placed between crankcase and carburetor housing (rather reed valves are placed in pulse charger). Further, it does not disclose that chassis is monocoque, engine is disposed at one end of vehicle.
US Patent 4690107
The learned counsel submittedthat this patent is related to improve or smoothen the air fuel flow to the engine. This is 2 stroke IC engine commonly used to power motorcycles, go carts, snow mobiles, jet skies etc. with reed type of inlet valve. This is actually a flow enhancer and not meant for regulating air fuel mixture.
Referring to figures 1 and 2 and description of line 5 para 2 ( page 137 of exhibits) The arrangement comprises a cylinder casting comprising an air duct 35 having an opening 37 to which reed valve frame (1) is fitted (this frame comprises prism shape reed valve). Further an adapter is 15 is fitted on frame 1.A duct 39 fitted over this adapter 15 which leads to carburetor.
This is a very different type of intake system than that of Bajaj's Patent. This does not show any carburetor housing comprising elements (i.e. air filer of intake system including carburetor).And carburetor housing fitted over crankcase.
From above description it is clear that reed valve is not fitted between crankcase and carburetor housing. Further, it does not disclose that chassis is monocoque, engine is disposed at one end of vehicle.
US Patent 4475487
The learned counsel submittedthat this patent is related to a chain saw or portable machine.
It shows use of two cylinders (1, 3) with a common crank case 3. The carburetor 4 is placed offset to the intake port 8. The carburetor is connected to reed valve through joint pipe 5.
The cited patent does not disclose use of any carburetor housing accommodating carburetor, air filter etc. The carburetor is not directly mounted on crank case but is offset and also reed valve is not positioned between crank case and carburetor housing (rather it is between crankcase and joint pipe.
Further, it does not disclose that chassis is monocoque, engine is disposed at one end of vehicle, and rather it is related to a portable machine.
US Patent 4964381
The learned counsel submittedthat this patent is related to intake system employing a fuel injection system (14a 14 b) and not employing any carburetor and hence not using of carburetor housing. Further the invention employs a fuel pump to supply the fuel to engine. This clearly shows that the intake system is entirely different than that of described in BAL Application .It does not disclose monocoque chassis and engine and transmission located at one side and reed valve positioned between crankcase and carburetor housing. In fact, the description shows that the chassis is tubular and engine is centrally mounted at lower end of frame.
The learned counsel for respondent contended that this patent is related to importance of Reed Valve shape / design and its mounting arrangement.
According to the counsel the reed valve shape /structure, its position and its mounting arrangement is very specific and very important to get desired results.
Going through various patents cited by LML (for example: EP 0548993, British Patent 1453229, US 4408579, US Patent 5613468, US Patent 5291866) it can be observed that these patents disclose the shape/structure and mounting/fastening arrangement of reed valve in detail. Further. it can be observed that the shape/structure of reed valve and its mounting arrangement is different in each patent and very unique to that particular intake system. The uniqueness of shape/structure of reed valves and their positioning and mounting arrangement are described and focused in detail in these patent specifications. This clearly indicates that employing a reed valve to any intake system is not mere workshop practice but a lot of design aspects are required to be considered to get desired results/objectives. In fact for Bajaj, it was more difficult as Bajaj did not want to change design of existing intake system and still wanted to employ reed valve to provide better fuel efficiency and improve on emissions. Bajaj invention has its unique shape/structure and mounting arrangement for reed dimension of reed valve. Further it has unique mounting points. He submitted that from above description, it is clear that one cannot adopt known (or off the shelf) shape and structure, mounting arrangement of reed valve. It depends on type of intake system, availability of space, result/function expected from reed valve, hence the invention is not obvious to average person skilled in the art.
43. The learned counsel for respondent relied on following cases
1. In Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (PTC Suppl, (1) 731 SC it was observed:
"In order to be patentable an improvement on something already known before or a combination of different matters already known, workshop improvement, and must independently satisfy the test of invention or an inventive step. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before: The combination of old, known integers may be so combined that by their working inter-relation they produce anew process or improved result. Mere collection of more than one integer or things, not involving the exercise of any inventive faculty does not qualify for the grant of a patent.â
2. KSR International Co. v Teleflex Inc et al.(Supreme Court of the United States). where it was observed that
âHowever, seeking to resolve the obviousness question with more uniformity and consistency, the Federal Circuit has employed a âteaching, suggestion, or motivationâ (TSM) test, under which a patent claim is only proved obvious if the prior art, the problems nature or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.â
âTo facilitate review, this analysis should be made explicit. But it need not seek out precise teachings directed to the challenged claims specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ.â
âThe flaws in the analysis of the Court of Appeals relate for the most part to the courts narrow conception of the obviousness inquiry reflected in its application of the TSM test. In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103. One of the ways in which a patents subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patents claims.â
3. In Howaldt v Condrup 1937 RPC 121 at 132 in respect oflong felt want, it was observed that â
â the fact that there has been a long felt want for some period and that the patentee was the first person to supply that want, and also as evidenced by commercial success, are facts which are extremely relevant and sufficient to tip the scale in favour of the validity of the patent.â
4. In Pfizer Ltd.'s patent 2001 FSR 61 it was observed that
âthe question of obviousness has to be assessed through the eyes of the skilled but non-inventive man in the art. This is not a real person. He is a legal creation.â
5. In Glaxo Groul Ltd.s patent 2004 RPC 43 it was observed that
In determining obviousness, the "mosaicing" of individual documents or prior uses is not permissible, unless it can be shown that the skilled person, confronted with a particular, would turn to some other citation to supplement the information provided by the first.
6.In Hallen Company v Brabantia (UK) Ltd it was observed that
By 'obvious modifications' are meant that which technically or practically would be obvious to the unimaginative skilled addressee in the art. Such a skilled person should be assured that his action will not be covered by any monopoly granted to another if he does that which part of the state of the art with modifications which are workshop modifications or otherwise technically or practically obvious alterations. He does not and should not have to look further and consider whether the step he is taking is obvious or not for commercial reasons.
If two integers interact upon each other, if there is a synergy between them, they constitute a single invention having a combined effectâ¦â¦â¦
8. In Martin and Biro Swan v H.'Millwood [1956 RPC 125 at 133] it was held that
âIt is not enough to make a mosaic of prior publications and to say that the whole invention has been disclosed. This is particularly the case where the invention is said to consist of a novel combination, or I as is sometimes said a new functional interrelation of integersâ
9. Bilcare Ltd. v Amartara Pvt. Ltd. 2007 (34) PTC 419 (Del)
10. Clochem Industries Ltd. v Cadila Healthcare Ltd. and Ors 2010 (44) PTC 362 (Bom) (DB) . for sec 3(d) Better therapeutic effect.
11. Enercon India Ltd. v Aloys Wobben 2011 (46) PTC 558 (IPAB) Page 578 (e) and (g) for obviousness
12. Narayan Chandra Das v Jolly Guhathakurta and Anr. 2011 (48) PTC 297 (IPAB) for arrangement rearrangement
13. Patent Law By P. Narayanan, 4th Edition. Combination patents para 16-117 to 118 and 124
14. Terrell on the law of Patents 16th Edition. 7.49 , 7.50
15. Chisum on Patents (Vol 1) 2000 - Lexis Publishing.3.14 -15 anticipation
44. The learned counsel for respondent argued that Bajaj Auto is not claiming all improved Intake system for two wheelers. In fact it is limited to specific type of two wheelers having:
Features of Invention: Monocoque chassis, Engine mounted/disposed at one side of vehicle plane, intake system comprising an air filter, a carburetor, carburetor placed in carburetor housing, said carburetor housing mounted on crankcase, a reed valve is positioned between said crankcase and carburetor housing. Hence all the prior arts cited for Anticipation and Obviousness may be considered with respect to above said configuration. None of the prior arts cited by LML shows, intake system discloses the above mentioned features of Bajaj invention
45. The learned counsel for respondent submitted that the carburetor housing is placed in between inner edge of chassis and upper edge of crank case (i.e. a very compact intake system) and hence provides no space to accommodate any additional elements; otherwise, in case of placing additional component/s, carburetor housing would hit the inner edge of chassis during running condition of vehicle thus damaging both the parts. The space constraint is clearly explained in paras 80 and 85 of Piaggio Patent 857575 cited by LML. Further, Piaggio itself has never came up with idea of employing reed valve in such type of intake system till date, as well no other manufacturer manufactured/patented the subject invention. According to the counsel Bajaj auto has made it possible to place reed valve in such type of compact intake system. This position improves fuel efficiency and reduces fuel emission. Data of improvements observed is provided in specification. Such achievement otherwise would call for (i.e. obvious solutions) major changes of redesigning of (1) intake system, ignition / combustion system or both, (2) Placement of components of intake system at different available places, (3) adapting 4 stroke engine. All of these changes cause increase in number of components, complexity, change in shape / structure of vehicle, increase in weight of scooter and thus leading to increase in cost of the scooter. Instead, BAL has come out with very cost effective, less complex, compact and robust solution without changing shape and structure of original design and thus leading to no increase in the cost of scooter, but still achieving the desired performance of fuel efficiency and emission. To achieve the objectives, the shape and size of reed valve was so designed as to get accommodated in minimum available space, two mountings were made common with existing carburetor and carburetor housing, shape and sizes of fasteners were optimized to occupy minimum space and do not foul with surrounding components, still maintaining a robust, lead proof structure and ease for access for serviceability. That too was achieved without doing changes in any existing components, without additional machining of existing components and hence no extra cost.
46. The learned counsel for respondent submitted that the above aspects of reed valve (i.e. proper design of reed valve) and its mounting are very important. This can be observed through the various patents cited by LML (for example EP 0548993, British Patents 1453229, US Patents 4408579, 5613468, 5291866). These all Patents depict specific or unique design of reed valve and their mounting arrangements commensurate to its application. This clarifies that one cannot adopt known (or off the shelf) design/shape of reed valve and its mounting arrangement to any or all types of intake system but depends on type of intake system, availability space, application required etc. Thus the invention is not at all obvious.
47. In order to ascertain obviousness we will now examine the documents relied on by the applicant
48. We find that UK patent 857575 of Piaggio (1960) which is cited as the closest prior art where carburetor system is directly mounted on the engine intake port 7 engine crank case. This patent does not teach the use of valve between the carburetor conduit 11 and engine intake port 7.
49. Another USPatent 4475487 cited by applicantis related to âJoint pipe for the carburetor for a chain saw or portable machine. Here use of two cylinders (1) and (3) with a common crank case 3. It shows use of two cylinders (1, 3) with a common crank case 3. The carburetor 4 is placed offset to the intake port 8. The carburetor is connected to reed valve through joint pipe 5. This inventive carburetor joint pipe ensures improved mixing of air fuel mixture. This patent does not teach use of any carburetor housing accommodating carburetor, air filter etc. In this case the carburetor is not directly mounted on crank case but is offset rearwardly from intake port 8. It does not disclose that reed valve is adopted to be positioned between crank case and carburetor housing. In fact the reed valve in this patent is placed between crankcase and joint pipe.
50. US patent 4964381 is for fuel injection features of a two cycle engine for motorcycles. This intake system is different from impugned patent as it does not disclose that reed valve is positioned between crankcase and carburetor housing. The monocoque chassis and engine and transmission located at one side is also not disclosed.
51. US US 735 (four stroke engine),US107,(prism shape reed valve ), SAE publication (study gas flow through reed valve ) were not found to be relevant as they were not related to two stroke engine with monocoque chassis and engine and transmission located at one side.
52. We do not agree with the applicant that the claimed invention is mere workshop modification and arrangement. We agree with the respondent that one cannot adopt known (or off the shelf) design/shape of reed valve and its mounting arrangement to any or all types of intake system.
53. In the Court of Session, inner House before Lord Rodger of Earlsferry, Lord President and two other Lordships, on February 6th 2001 in Buchanan Vs. Alba Diagnostics Ltd., it was held that,
âif the invention contained in a prior patent had been something which was made more useful or convenient by a subsequent patent, the latter was something which in ordinary language might be considered to be an improvement on the prior patentâ.
54. Thus we find that impugned patent is an inventive improvement over UK 857575 which made the invention in question more useful and efficient. The above analysis of all the documents relied on by the applicant clearly demonstrates that claimed invention is not obvious. This ground therefore also fails.
INSUFFICIENCY
55. The learned counsel for the applicant submitted that the only difference between the provisional specification and the complete specification of the impugned Indian patent No. 189097 is in page 6 of the complete specification. The respondent on page 6 of its complete specification states that âThus the disadvantage of two stroke engines as mentioned above are reduced to a great extent due to introduction of reed valve in between crank case and carburetor housing in such types of enginesâ. The respondent does not state however that any advantage is provided by connecting the carburetor housing directly to the crank case through the reed valve. Thus it is evident that the only disadvantage that is possibly overcome by the respondents alleged invention is that present in two stroke engines without reed valves. She submitted that the respondent while claiming an advantage has not provided any information as to how their alleged novel construction provides such advantage. It is further submitted that on page 6 of the complete specification of Indian patent 189097, the respondent claims to have carried out tests according to emission test methodology in the Central Motor Vehicle Rules. However, the test is silent on which prior art intake system was tested. The test is also silent on the parameters that were adopted and the conditions that were adhered to. She submitted that a patent specification when giving comparative data must provide full data and not incomplete information since the Controller of Patents cannot reach an informed decision in the absence of complete information. She further submitted that the conditions of the Central Motor Vehicles Rules are subject to alteration and a skilled reader would not be able to practice the invention according to the impugned patent without exercising extraordinary effort. The learned counsel submitted that the provisional and complete specifications of the impugned patent No. 189097 are both not in compliance with the requirements of Section 10 of the Patents Act, 1970 and Section 64(1)(h) and are liable to be revoked on this ground alone.
56.The counsel for the respondent submitted that no evidence has been adduced by the applicant to prove that the complete specification does not sufficiently and fairly describe the invention and the method by which it is performed. According to the counsel the test results given at page 6 of the specification compared vehicle fitted with the intake system of prior art with the intake system of invention is extra information which is not essential to design and manufacture the claimed invention. The counsel submitted that respondent and disclosed the invention in compliance with section 10.
57. We also find the specification has disclosed the invention sufficiently and fairly. In absence of any evidence of the applicant to the contrary we are inclined to disagree with the argument of the applicant in respect of insufficiency. This ground therefore also fails.
MERE ARRANGEMENT AND REARRANGEMENT
58. The learned counsel for the applicant submitted that the alleged invention comprises merely in providing a reed valve between the carburetor housing and the crankcase in two stroke internal combustion engine. The reed valve functions in a conventional as a one way valve as admitted by the respondents. The carburetor and the crankcase carry out their respective well known and conventional functions. According to the learned counsel for the respondent, they have done in connecting the well known and conventional carburetor directly to the well known and conventional reed valve. These three components continue to carry out their respective functions. Therefore, this constitute a mere arrangement or rearrangement or duplication of known devices each of which carry on their own functions in an independent manner, which according to the learned counsel is not patentable under section 3(f) of the Patents Act, 1970.
59. The learned counsel for the applicant relied on the (1) Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries â 1978 PTC (Suppl)(1) 731 (SC), (2) Unique Transmission Co. Ltd. Vs. ESBI Transmission Pvt. Ltd. PTC (Suppl)(2) 799(Cal), (3) Polar Industries Ltd. Vs. Jay Engineering Works Ltd. and Anr. 1989 PTC(Suppl)(2) 310(Cal) and (4) Narayan Chandra Das Vs. Jolly Guhathakurata and Anr. â 2011 (48) PTC 297 (IPAB).
60. The counsel for the respondent admitted that all the parts per se are known but the combination function is different. According to the counsel this novel combination of components parts of improved intake system for two stroke engine used particularly in two wheelers having monocoque chassis and where engine and transmission are disposed substantially to one side of the vehicle cannot be termed as mere arrangement or combination.
61. We find the argument of the respondent convincing as the conventional functions of the individual parts would not suggest the increase in the efficiency and reduction of emission. The impugned claim relates to combination of several parts and not any individual part to part. The positive limitation in the claims makes the invention specifically applicable to the type of two wheelers having monocoque chassis and where engine and transmission are disposed substantially to one side of the vehicle. Accordingly this cannot be described as mere arrangement and rearrangement. Therefore this ground also fails.
62. In view of above analysis and findings we are convinced that applicant has not made out a case for revocation of this patent. Accordingly the TRA/3/2007/PT/DEL is dismissed.