1. The opponents have preferred this appeal against the order and decision dated 5th July, 1980 of the Assistant Controller of Patents and Designs, dismissing the opposition to the grant of patent and directing the Complete Specification to be amended as indicated in the said order.
2. On 28-3-1971 one Noshir Edulji Pochkhanawalla made an application numbered 130620 for registration of a Patent for an invention relating to 'Improvement in or relating to Mufflers or Exhaust Silencers for Internal Combustion Engines' along with provisional specifications. On 14-6-71 the applicant filed complete specifications. The application was accepted by the Controller of Patents and the acceptance was notified in the Gazette of India dated 19-8-1972. The petitioners filed notice of opposition under S. 25 of the Patents Act, 1970. On 10-2-1973 the applicant filed his reply to the Notice of Opposition and on 26-2-1973 the applicant filed his reply -- Statement. On or about 21st June 1973 the said Noshir Edulji Pochkhanawalla died leaving a Will whereby he appointed the 1st Respondent as Executor. The 1st respondent obtained probate of the Will and the 1st Respondent was substituted as applicant. The 1st Respondent filed his affidavit affirmed on 15th April 1975 adopting the written statement of the deceased Noshir Edulji Pochkhanawalla and evidence in support of the application for patent.
3. It appears that the petitioner did not file their evidence in time and even before the extended period which was up to 10th Dec. 1975. The hearing as. therefore. fixed on the application of the 1st Respondent on April, 26. 1976. On that day the petitioner filed affidavit of Shri G. K. Parekh, Engineering Manager of the Petitioners, and relied upon the exhibits annexed to that affidavit in support of the opposition. The petitioners also applied for extension of time for production of the evidence. The controller fixed May 27. 1976 for the hearing of the said application. But curiously heard the main application of the 1st Respondent on 26th and 27th April. 1976. rejecting the grounds of opposition and granting the application. It appears that the Controller also dismissed the application of the Petitioners for extension of time to file their evidence. Against the said orders, the Petitioners preferred Petitions Nos. 250 and 251 of 1977 in this Court. Pendse. J. set aside the impugned orders by order dated 21st Jan. 1980 and remanded the proceedings to the Asstt. Controller of Patents and Designs to determine the matter afresh after taking the affidavit of Shri G. K. Parekh affirmed on April 26, 1976 on record as evidence in support of the opposition. Therefore. the matter was heard afresh and the said impugned order dated 5th July, 1980 was passed.
4. Shri Daruwalla has submitted that the Controller was in error in rejecting the grounds of opposition. He has taken me through the records of the case and he has submitted that the invention as claimed by the inventor in the claim of complete specification has been published before priority date of the claim: secondly that the invention was publicly known and publicly used in India before the priority date of the claim: thirdly that the claim is not an invention at all and it does not contain any inventive step: fourthly that the alleged invention is obvious: fifthly that the claim is not a novelty : sixthly that the complete specification does not sufficiently and clearly describe the invention nor does it sufficiently and clearly describe the method by which it is to be performed; and seventhly that it is incorrect to state that the first respondent's invention is a combination.
5. Shri Daruwall has also submitted that the order of the Controller passed on 5th July, 1980 amending claim 1 of the complete specification. so as to make it more clear and specific to clearly bring out the characterizing features of the invention and deleting claims 2 to 7 and renumbering the remaining claims as proposed in the annexure to the order. is illegal and without any jurisdiction and that. therefore. on this ground also the order deserves to be set aside.
6. I shall take each of these grounds separately. but before I doe so. it will be necessarily to refer to the order passed by the learned Controller, before whom the very same grounds of opposition were canvassed on behalf of the petitioners. It appears to me that the entire approach of the learned Controller was an erroneous approach. The learned Controller has proceeded to deal with the opposition by first setting out the characterising features of the invention and the learned Controller felt that the invention comprises of two characterising features. viz.
'(a) rigidly securing the two perforated pipe section with their respective closed ends at short distance apart from 1'' to 3'' or more and the un-perforated portions of each of said pipes being projecting outwardly from said muffler box: and
(b) one of the said pipes carrying smaller size perforations forming an inlet pipe and the other carrying larger perforations forming the outer pipe.'
Having set out the said two characterising features, the learned Controller proceeded to dispose of the ground of objection that the complete specification does not sufficiently and clearly describe the invention or the method by which is to be performed by stating that the characterising features of the invention lies in the said features stated by him, and observing that :
'this construction produces some distinct advantages which have been supported by tests and has not been refuted by evidence from the opponents. The relative size of the perforations has been stated in the description and claims and the applicant has not kept the public fully in the dark regarding it. Further the size of the perforations is only one of the characterising features of the invention.'
It was on these bases that the learned Controller overruled this objection.
7. Now, there is nothing on record to show what distinct advantages have been supported by tests and this observation of the learned Controller, is, therefore, baseless and without any evidence. So also there is nothing on record to show what is the relative size of the perforations and this observation of the learned Controller is also baseless. It is on these baseless and imaginary grounds that the learned Controller has rejected this ground of opposition.
8. The learned Controller has there stated that generally the principle claim. i. e. claim 1 defines the essential novel features are made the subject matter of subordinate claims and this is claimed in combination with the subject mater of the principle claim. He then proceeds to state:--
'It is clearly evident that claims 2 to 7 do not from within the scope of the principal claim, and the principal claim itself does not clearly distinguish the characterising feature of the invention'.
8A. Similarly, the learned Controller has overruled the ground of objective viz., prior publication in the two books (1) Motor Manuals, Automobile Engines' by Arthur W. Judge, 1969. the Ed. and (2) Motor Services Automotive Encyclopedia', 1970 Ed. on the ground that on detailed are given regarding the size of perforations in the inlet and outlet pipe in the said book which happens to be one of the characterising feature of the applicant's inventions. As stated above, the applicant has not given the size of perforation in the inlet and outlet pipe and, therefore, this objection has been overruled on purely untenable, baseless and imaginary grounds.
9. The petitioner then referred to drawings dated 16-5-1957 submitted to them by premier Automobile Ltd. for manufacturing muffler boxes of silencers in accordance with the said drawing and they stated in para 13 of the affidavit of their Engineering Manager Gopaldas Kantilal Parikh, affirmed on 26th April, 1976 that the complete specification of Shri Noshir Sorabji Pochkhanawalla are identical with the drawings submitted by the said customers of the petitioner. This ground of objection was also disposed of on the same ground as the other ground of prior publication was disposed of by the learned Controller. This ground of rejection of the opposition is also baseless and imaginary.
10. The petitioner also opposed the application on the ground that in para 7 of the affidavit of the Legal Representative Shri Noshir Sorabji Pochkhanawalla, it is stated that shortly before Mar. 5,. 1971, the inventor submitted. in strict confidence, five different mufflers for testing to Dy. General Manager of the Premier Automobiles Ltd. as he had no facility to test attenuation between the back pressure and notice level. This ground of opposition was also rejected by the learned Controller on, an altogether untenable ground. The learned Controller observed that the applicant i. e. inventor has not set up any secret use or any accidental or fortuitous use. He further observed albeit on an imaginary ground, that:--
'In transaction of this type there is likely to be some degree of confidence and I believe the applicant that it was done in confidence.'
This is also on a purely baseless ground.
11. The ground of obviousness was disposed of by the learned Controller on the ground that has not been proved before him.
12. On the question of ground of objection that the complete specification is not an invention and that what is claimed by the inventor is not new and that the is no novelty, the learned Controller found that:--
'the applicant has stated in High specification about the relative size of the holes to be provided in the inlet and outlet pipes and have also stated that the size of the perforations will vary according to the size of the engine and volume of exhaust gases discharged by the muffler, Moreover the size of the perforations is only one of the characterising features of the invention'.
This finding also is baseless and imaginary. So also the finding that the invention falls within the scope of the invention defined in Section 2(i)(j) of the Patents Act. 1970.
13. I shall now deal with each of the grounds of opposition.
14. Regarding the first ground of prior publication, Shri Daruwalla has contended that the invention has been published in Motor . Exs. 'A' and 'B' to the affidavit of Shri Noshir S. Pochkhanawalla. Legal Representative of the inventor. affirmed on 15th April, 1975. and also to the fact that the said inventor Noshir R. Pochkhanawalla had given five different mufflers to Premier Automobiles Ltd. for testing and he has contended that this would constitute prior publication and prior user. He has also referred to Ex. D to the affidavit of Shri G. K. Parikh, Engineering Manager of the petitioner affirmed on 26th April, 1976 and he has contended that this also constitutes prior publication. Ex. D are drawing submitted by Premier Automobiles Ltd. to the petitioner in or about the year 1964 for fabricating Exhaust Silencer. Shri Daruwalla has contended that figure 5 of the drawings accompanying complete specification is identical with the said drawings submitted by Primer Automobiles Ltd. and that, therefore, it constitutes prior publication.
14A. Shri Shah, the learned Counsel appearing on behalf of respondent No. 1 has submitted that none of the different silencer shown in the Motor Manuals Automobile Engineers, by Arthur Act. Judge can give any idea to any person to manufacture applicant's muffler. He has submitted that this is a question which has to be decided on evidence. He has submitted that this is a question which has to be decided on evidence. He has referred to para 9 of the affidavit of Shri G. K. Parikh, Engineering Manager of the petitioner affirm don 26-4-1976 and he has submitted that the only evidence on prior publication is to be found in Judge's Motor Manuals, Automobiles Engines at page 203. His submission is that Shri Parikh has not stated that he can manufacture muffler of the designee given by the applicant which, according to Shri Shah, it was necessary to have been set out and, therefore, Ex. D to the affidavit of Shri Parikh cannot be taken as prior publication and as it does not constitute anticipation. In the same strain. Shri Shah has submitted that the question as to how far the drawing in the two books viz. Judge's Motor Manuals. Automobile Engineer and Motor Services Automotive Encyclopedia are relevant, is necessary to be considered. His submission is that if a picture of a machine is drawn without describing it at all, it is not meant only for those who follow a similar or same vocation and unless there is evidence of the mechanic as to how he understood drawings, it cannot be said that there is prior publication. In this connection, he has referred to the decision in the case of Herrburger Schewander Etice v. Squire (1889) 6 RPC 194 , and also to the decision in the case of C. Van Der Lely N. V. v. Bamfords Limited (1963) RPC 61.
15. In regard to the letter written by Premier Automobiles Ltd. to the inventor. relied upon by Shri Daruwalla to show publication. Shri Shah has submitted that the question of confidentiality is a matter between Premier Automobiles and the inventor and is not a matter of a public knowledge. He has, therefore, submitted that this objection should be overruled.
16. Section 25 of the Patents Act deals with the grounds of opposition. In regard to the prior publication, S. 25(1)(b) states:--
'Section 25(1)(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim--
(i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January. 1921: or
(ii) in Indian or elsewhere, in any other documents:
Provided that the ground specified in sub-cl (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-sec (2) of Section 29':
Section 29 of the said Act states:--
Section 29(1). An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published in a specification filed in pursuance of an application for a patent made in India and dated before 1st day of January, 1921.
(2) Subject as hereinafter provided, an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published before the priority date of the relevant claim of the specification. if the patentee or the applicant for the patent proves--
(a) that the matter published was obtained form him, or (where he is not himself the true and first inventor) from any person from whom he derives title, and was published without his consent or the consent of any such persons: and
(b) where the patentee or the application for the patent or any person from whom he derives title learned of the publication before the date of the application for the patent, or, in the case of convention application, before the dated of the application for protection in a convention country. that the application or the application in the convention country, as the case may be, was made as soon as reasonably practicable thereafter:--
Provided that this sub-section shall not apply if the invention was before the priority date of the claim commercially worked in India, otherwise than for the purpose of reasonable trial. either by the patentee or the application for the patent or any person from whom he derives title or by any other person with the consent of the patentee or the application for the patent or any person from whom he derives title.
(3) Where a complete specification is filed in pursuance of an application for a patent made by a person being the true and first inventor or deriving title from him, an invention claimed in that specification shall not be deemed to have been anticipated by reason only of any other application for a patent in contravention of the rights of that person, or by reason only that after the date of filing of that other application the invention was used or published. without the consent of that person, by the applicant in respect of that other application, or by any other person inconsequence of any disclosure of any invention by that application'.
17. In order to deprive an invention of patentability on the ground of anticipation by prior publication, it must be shown that the invention claimed was published in any documents. In the present case, the invention is opposed on the ground of prior publication. Firstly, that it was published in the two books. Secondly, that the inventor had given different mufflers to Premier Automobiles for testing and thirdly, that the drawings marked Ex. D submitted by Premier Automobiles Ltd. to the Petitioners much prior to the priority date of the complete specification in the present case. The claims contained in the complete specification filed by Noshir E. Pochkhanawalla are as follows:--
'1. A muffler or exhaust silencer for internal combustion engineers constituting of two pipe section of equal or unequal diameters, each carrying perforations of equal of unequal dimensions of any geometrical pattern extending from its middle up to its closed end. said perforated portions being rigidly secured in a line within the muffler box with their respective closed ends at short distance varying from 1' to 3' or more apart form each other and the un-perforated portion of each of said and the pipe being projecting outwardly from said muffler box and one of the said pipes carrying smaller size perforations forming an inlet pipe and the other carrying larger perforations from an outlet pipe'.
2. A muffler or exhaust silencer as claimed in claim-1 wherein the inlet and the outlet pipe sections secured within the muffler box are in eccentric relationship with each other (substantially as shown in Figure 3 or the drawing) with the inlet and outlet ends projecting out from said muffler box in opposite directions'.
3. A muffler or exhaust silencer as claimed in Claim-1 wherein the inlet and the outlet pipes sections are secured within the muffler box side by side in parallel relationship with each other with the inlet pipe and the outlet pipe projecting out from the muffler box in opposite directions.
4. A muffler or silencer as claimed in Claim-1 wherein the outlet end of the muffler box is provided with two perforated pipes of same dimensions and the inlet pipe of the muffler box is provided with one perforated pipe.
5. A muffler or exhaust silencer claim din claim-1 wherein the perforated closed ends of the inlet and outlet pipes are enjoined together from a straight lien or a straight pipe is provided with a partition in its middle to from two pipe section and each pipe section is provided with perforations extending from its closed end up to its middle or 2/3rd its length and said perforated pipe is rigidly secured within said muffler box in such a way that the un-perforated portions of said pipe projects out thought the closed end of said muffler box and respectively from inlet and outlet pipes of the muffler box.
6. A muffler or exhaust silencer as claimed in Claim 1 wherein the muffler box is provided with a partition panel carrying perforations or openings and fitted with a perforated pipe carrying a dividing partition in its middle is rigidly secured to said muffler box so that induced expansion gases collected within the muffler box chamber are rapidly discharged into the atmosphere via said opening formed in the partition panel and the perforation in the outlet end of said pipe.
7. A muffler or exhaust silencer as claimed in Claim 1 within the two short pipes carrying perforations and rigidly fitted within the muffler box are in parallel relationship with each other and the inlet and the outlet ends of the said pipes are projecting out from the same side of the muffler box.
8.A muffler or exhaust silencer as claimed in Claim-1 to 7 wherein the perforations formed in the outlet pipe are at least 1 1/2 to 3 times larger than the corresponding perforations former in the inlet pipe.
9. A muffler or exhaust silencer as claimed in Claim 1 to 8 wherein the perforations formed in the outlet pipe are progressively larger in size and diameter for stabilising even flow of diffused gases from the muffler box into the atmosphere.
10. A muffler or exhaust silencer as claimed in Claim 1 to 8 wherein the shape and size of the muffler box varies and depends upon the availability of space and the length of the inlet and the outlet pipes varies with the size of the internal combustion engine and the volume of exhaust gases discharged by the engine manifold are required to be related by the muffler or exhausts silencer.
11. A muffler or exhaust silencer as claimed in Claim 1 to 8 wherein the size of the perforations or holes formed in the inlet and the outlet pipes will vary according to the size of the engine and the volume of the exhaust gases discharged by the engine manifold are to be regulated by the muffler or exhaust silencer.
12. A. muffler or exhaust silencer as claimed in Claim-1 to 8 wherein the perforations formed in the inlet and the outlet pipes are of any geometrical shape and pattern and formed from continuous or non-continuous line or in parallel liens or a pair of rings or parallel perforated lines separated lay angular un-perforated rings or are helical lines of perforations of any geometrical pattern separated by un-perforated helical lines formed there between.
13. A muffler or exhaust silencer as claimed in Claim 1 wherein the said inlet and the outlet pipes are respectively provided with angularity punched perforations or holes or geometrical pattern or shape which are in the direction of the flow of exhaust gases.
14. A muffler or exhaust silencer as claimed in Claim 1 wherein the said inlet and the outlet pipes respectively provided with angularity punched perforations or holes or any geometrical pattern or shape which are in the direction opposite to the direction of the flow of the exhaust gases.
15. A muffler or exhaust silencer as claimed in Claim-1 wherein the upper half and the lower half respectively of said inlet and outlet pipes are non-perforated and the lower half and the upper half respectively of said inlet and outlet pipes are provided with strength or angularly punched perforations or holes so that the flow of gases from said inlet end to outlet end is substantially in the form of inverted 'S' in shape.
16. A muffler or exhaust silencer as claimed in Claim 1 and 13 to 15 wherein the purchased perforations or holes formed in said inlet pipe are smaller in size than corresponding punched holes formed in said outlet pipe.
17. A muffler or exhaust silencer as claimed in Claim 1 and 13 to 15 wherein the punched perforations or holes formed in said outlet pipe are progressively longer in size and characterised in that the smaller size punched holes are formed near the closed end of said outlet pipe.
18. A muffler or exhaust silencer as claimed in Claim 1 to 17 and substantially as herein described and illustrated.
18. In Arthur W. Judges' Motor Manuals Automobile engines at p. 203 under the heading 'Exhaust System' it is stated as under:--
'The Exhaust System -- The exhaust gases leave the cylinders of modern automobile engine, soon after each of the exhaust vales open, at a pressure of about 55 to 80 lbs. per sq. in., and at a temperature of between 600 C and 800 C., with a high velocity, namely, about 150 feet per second in the case of a high speed engine. At each discharge i. e. on every exhaust stroke, a compression, or sound wave, is sent out, giving the characteristic exhaust note of the engine. It is necessary in public interests to reduce this notes considerably and for this purpose the exhaust gases are expanded into a silencing chamber. where the strong sudden discharges are broken up into a more or less continuous one, emitting little noise. The best design of silencer enable the exhaust gases to cool down and expand into the atmosphere continuously and to emerge as a more or less uninterrupted stream. Usually a number of baffles are fixed in the silencing chamber. but careful proportioning of these is necessary in order to avoid back pressure and overheating the of the engine. The internal diameter of the exhaust pipe should not be less than one quarter to one-third of the cylinder diameter. whilst the ordinary design of silencer should have a capacity of about 14 cubic inches for every B. High. P., at the maximum value. it should not weigh more than about O. 1. lb. per B. H. P. (maximum) developed by the engine.
A well-designed silencer will not reduce the power of the engine appreciably; the result of tests show the very good silencing can be obtained with a loss of power of about 2 to 3 percent.
An indirect effect of back pressure is to leave more of the hot exhaust gases in the cylinder when the exhaust value closes. This not only increases the exhaust value temperature and therefore enhances the tendency to detonation but lower the volumetric (or charge) efficiency by heating the incoming charge that follows'.
19. In order to illustrate, Arthur W. Judge, has given diagrams of three types of exhaust silencers.
20. In order to illustrate, Arthur W. Judge has given silencers.
'Multiple Exhaust Pipes -- When a multi--cylinder engine is fitted with a single exhaust manifold with one exhaust pipe outlet, the effect of successive and rapid discharges of gases from the various cylinders is to increases the mean pressures in the manifold and to create a series of pressure pulsations that may lead to power loss. Further, the exhaust valves temperatures are higher, than when separate exhaust pipes are used for each cylinder or pairs of cylinders. It is, therefore, necessary. to modify the exhaust system as indicated. Thus, a four-cylinder Vertical engine would have four separate exhaust pipes diameter and thence to the silencer'.
21. At page 210,. Arthur W. Judge has dealt with the. Bruges Silencer as follows:--
'The Burges Silencer--This design of absorption silencer represents a scientific attempt to silence the exhaust by string some of the gas at high pressure and returning it at low pressure in a more or less continuous stream. The silencer consists of a central perforated tube, which is unobstructed throughout its whole length. It is surrounded by another cylinder of sheet metal, the intervening space being filed with a special sound absorbing material. The theory of this silencer is that during the high pressure fluctuations the gases pass though the perforations where they are stored in the sound absorbing material: in effect the high pressures are reduced by the damping action to the latter material. The fluctuations of pressure in the exhaust gases. which are the cause of the exhaust noise are appreciable reduce din the gases flowing out of the central tube, so that the noise must also be reduced in intensity'.
22. In Automotive Encyclopedia at page 287 under the heading Exhaust system it is stated:--
In order to reduce the noise of the exhaust of an internal combustion engine, exhaust gases from the engine are passed though a muffler, Fig. 28-3. The muffler is so designed that the gases are expanded slowly, and are also cooled before they are discharged into the tail pipe and the atmosphere. In addition, the design must be such that there is a minimum of back pressure developed. Back pressure prevents free flow of the exhaust gases from the engine. and as a result, not all of the burned gases will be expelled. or exhausted from the cylinders. Such un-expelled gases dilute the incoming combustible gases, and as a result, the power of the engine is reduced.
On an automotive vehicle, the engine first exhaust into the exhaust mainfold, Fit. 28-2. The gas then passes though the exhaust pipe into the muffler. from the muffler it passes into the trial pipe and from there into the atmosphere at the rear of the vehicle.
A certain amount of expansion and cooling of the exhaust gas is provided for in the design of the exhaust manifold and exhaust pipe. Usually these are designed to proved from two to four times the volume of a single cylinder of the engine. The additional expansion is then provided for in the muffler.
The design of the muffler varies with different manufactures. One type is know as the straight though type. Fig. 28-4. In this design, a straight path is provided for the gases which extends from the front to the rear of the unit. A centrally located pipe with perforations is provided. Surrounding this pipe is a sheet metal shell, approximately three times the diameter of the pipe. In some instance. the space between the outer shell and inner pipe is open and in other cases it is filled with steel wool or some other heat-resistant sound deadener and porous material.
Another type of muffler reverses the flow of the exhaust gases. Fig. 28-4, and has the advantage of conserving space. The double shell and two shell are still other forms of modern mufflers.
In order to reduce the noise of the exhaust below that attained by a single muffler, many system are equipped with two mufflers in each line. Fig 28-1. Such construction is particularly necessary on cars with a long wheel baseless and powered with a high output engine. The additional unit is usually known as a resonator.
In Fig. 28-5, the loss in engine power due to back pressure from the exhaust system is shown. It will be noted that as the speed of the vehicle increases, back pressure also increases. Note also for a given car speed, the loss in power increases very rapidly with the increase in back pressure. For example: with 2 lbs. back pressure at 70 mph. the power loss is 4 hp and when the back pressure is 4 lbs. the power loss has increased to 8 hp.
Similarly, fuel consumption is increased as muffler back pressure increases. This is shown graphically in Fib. 28-6.
Care must be exercised that there are no dents in the exhaust system that would tend to obstruct the free flow of the exhaust gases, as any obstruction would reduce power and fuel economy.'
23. It will be seen from the above that what is claimed as an invention by the inventor Noshir Edulji Pochkhanawalla has been already published in the two books. The description of the exhaust system and of the muffler as stated in Claim 1 is not materially different form the description of the muffler and of the exhaust system contained in the said two books. What is claimed as an invention by the inventor in the present case is no more than an individual design and the statement in the exhaust system may be recalled here that:
'Regardless of the individual design, the passage ways forming the manifold are made as large in size as practical in order to reduce the resistance to the flow of the burned gases'.
Further it is stated that:
'The design must be such that there is a minimum of back pressure developed ............ Such un-expelled gases dilute the incoming combustible gases, and as result, the power of the engine is reduced'.
It is also stated with specific reference to muffler design in the Automotive Encyclopedia that:
'The design of the muffler varied with different manufacturers and that as the speed of the vehicle increases, the back pressure also increases'.
The claim made by the inventor is no more than an individual design, a workshop modification. The objection, therefore, that the invention as claimed in the claim of complete specification is published before the priority date, must necessarily be sustained.
24. In regard to the public knowledge and public use in India of the invention before the priority date of the claim, S. 25(1)(d) provides as under:--
'Section 25(1)(d) -- that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in Indian before the priority date of that claim.
Explanation -- For the purposes of this clause, an invention relating to a process of which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only.'
25. Shri Daruwalla has referred to the giving of five different mufflers to the Premier Automobile for testing and submitted that this would show prior publication by prior use. Shri. C. J. Talsania, Dy. General Manager (Engg). of the premier Automobile has addressed a letter date 5th Mar. 1971 wherein it is stated that they have received five different mufflers and to the said letter. their drawing for production of muffler was enclosed and the inventor Noshir Edulji Pochkhanawalla was requested to prepare and submit his counter design incorporation the features tested in last sample.
26. In regard to the giving the five different mufflers, an argument was advanced before me on the basis of the affidavit of the first respondent herein that there mufflers were given secretly. It is difficult to accept this submissions for the reason that the legal representative could have no personal knowledge mufflers to premier Automobiles Ltd. for testing secretly. This using or muffler by Premier Automobiles Ltd. would also constitute prior user and this ground of objection also must be sustained.
27. The third ground of objection made is that the claim is obvious and that it does not contain any inventive step. S. 25(1)(e) provides as under:--
'Section 25(1)(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step. having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant's claim'.
The first thing that is to be considered in this connection is how obviousness is to be judged. A reference to the case of Allamana Svenska Elecktriska A/B v. Burntisland Shipbuilding Co. Ltd. 1951 69 RPC 63 may be made wherein it is stated by the court of appeal:
'The matter of obviousness is to be judged by reference to the state of the art in the light of all that the previously known by persons versed in that art derived from experience of what was practically employed, as well as from the contents of previous writing, specifications, text books and other documents....................
The real question is: was it for all practical purposes obvious to any skilled mechanic? .......................
The question must be answered objectively, for it is immaterial that..........the invention claimed was in truth an invention of the (the inventor) in the sense of being the result of independent work and research on his part -- without knowledge on his part of many of the matter which must, on any view, be taken into account by the court'. (See Sharpe and Dohme Inc. v. Boots Pure Drug Co. Ltd). 45 RPC 153.
28. Shri. Shah, however, has argued that the question whether the invention is obvious is a jury question and being a jury question, it would be for the court to decide on the evidence before the court whether the invention is obvious. He has referred to the decision in the case of General Tyre and Rubber C. v. Firestone Tyre and Rubber Co. Ltd. 4571972 RPC . Shri Shah has submitted that there is no evidence whatsoever to come to a conclusion that the invention is obvious.
29. In E. I. Due Pont Defendants Nemours and Co. (Holland) 1971 RPC 7 it was held:
'(1). That if, in opposition proceedings, after reviewing the whole of the evidence there was a genuine conflict on the question of obviousness, involving as it did matter of opinion which could not satisfactorily be resolved without often lengthy cross-examination. then Tribunal should in the normal case not try to resolve such conflict.
(2) That it was sometimes different if the question to be resolved was one of pure fact such as might. for example, arise in cases of prior user. Then, if satisfied that the evidence had dealt with the matter comprehensively, so that the Tribunal felt it was in a position to come to a correct answer on the question of fact, there was no reason why it should not resolve the conflict. In a proper case it was under the duty of doing so, and should act upon the normal principles of proof in civil actions.
(3) That. if the Tribunal. when the question before it was one of obviousness, was of the opinion that there was really no genuine conflict and that, in view of the disclosures of the prior art and the relevant evidence, the alleged invention was obvious and clearly lacking in inventive step, then equally the Tribunal must proceed to decide the case in accordance with the same rules of proof.'
In view of the disclosure of the prior art in the two books referred to above. it must be held that the alleged invention was obvious and clearly lacking in inventive step.
30. The next point to be considered is whether the invention as claimed is at all invention. Shri Daruwalla has contended that the alleged claim-1 and the other claims derived therefrom which merely show different types of perforations and assembly of pipes which are common in mufflers cannot be an invention within the meaning of the Patents Act, 1970 nor is it patentable under the said Act.
31. According to Shri Daruwalla no 'invention' lies in such mufflers.
32. Shri Shah. on the other hand, has submitted that a patent for a new use of known contrivance is good. It is in the manner of new manufacture, that lies in the invention. The inventor in the present case, according to Shri Shah. has produced a new muffler by a new and ingenious application of known contrivance to the old muffler. It is the novelty and the ingenious application of the known contrivance which entitles the inventor to a patent. He has relied upon the decision in the case of Gadd and Mason v. Mayor and c. of Manchester (1892) 9 RPC 516, wherein it is held :--
'1. A patent for the mere new use of a known contrivance. without any additional ingenuity in overcoming fresh difficulties is bad, and cannot be supported. If the new use involves no ingenuity, but is in manner and purpose analogous to the old use, although not quite the same, there is no invention : no manner of new manufacture within the meaning of the Statute of James.
2. On the other hand, a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been the fist the see and overcome by some ingenuity of his own. An improved thing produced by a new and ingenious application of a known contrivance to an old thing. is a manner of new manufacture within the meaning of the Statute'.
33. Invention is defined in S. 2(1)(i) of the Patents Act, 1970 as under--
Section 2(1)(i) 'invention' means any new and useful--
(i) art, process, method or manufacture;
(ii) substance produced by manufacture and includes any new and useful improvement of any of them, and an alleged invention'.
Section 25(1)(f) states:'that the subject or any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act'.
34. Under the patents Act. an invention to be patentable must be a new and useful method or manner of the manufacture. it involves two separate conditions, viz is it a method or manner of manufacture and secondly is it new and useful,. In order to entitle in inventor to a grant to a patent, both these conditions must be present. Manufacture in its ordinary parlance generally conveys the idea of making tangible goods by hand or by machine. If the words 'new and useful manner of manufacture' were limited to the production of new article without reference to the process of the manufacture involving patent and improved method, the inducement which law intended to given to the inventor would be encompasses within very narrow rules. The word 'manufacture' would, in my opinion, include improvements in manufacture and changes in the method by which an article is manufactured. The word 'manufacture', in my opinion, would also extend to a new process to be carried on by known implements. 'Manufacture; is a term which is difficult to define. An attempt was made at defining the term 'manufacture' by Abbott C. J. in the following terms:
'Something of a corporeal and substantial nature, something that can be made by man form the matter subjected to his art and skill, or at the least or some new mode of employing practically his art, and skill, is requisite to satisfy this word'. (See Terrel on the Law of Patents, para 35, page 12).
35. According to Oxford Dictionary, the word 'manufacture' is defined as.
(a) the action or process of making by hand:
(b) the making of articles or materials (now on a large scale) by physical labour and mechanical power: and
(c) a branch of productive industries. There is no hard and fast rule to consider what is the new and useful method or manner of the manufacture. New and useful method or manner of manufacture need not necessarily be any produce. i. e. it need not necessary be a new article; 'it may be any physical phenomenon in which the effect, be it creation or merely alteration may be observed'. (See N. R. D. C.'s Application 68, R. P. C. 25 .
36. In the present case, claim No. 1 ambiguous, as it appear to me, to be no more than a workshop modification. In explaining the back pressure, the inventor has stated:--
'In actual practice it has been found that the mufflers or exhaust silencers of the known type generate a back pressure of 1 lb. to 1.75 lbs. per sq. inch and the noise level is 72 to 10% DB. Whereas mufflers or exhaust silencers generate a back pressure from 1/2 lb. to 1 1/2 lb. per sq. inch and the noise level is from 63 to 102 DB. The fuel economy offered and obtained by the mufflers according to this invention when used on a motor vehicle is as made as 20% to 25% over the current fuel consumption of the same vehicle using the known type of muffler or exhaust silencer'.
37. There is no evidence whatsoever that the known type of mufflers generated back pressure of 1 lb. to 1.75 lbs. per sq. inch and noise level is 72 to 102 DB. There is also nothing to show the economy in the fuel consumption. The objection, therefore, that the claim made by the inventor in the complete specification is no invention at all and as already state, appears to be no more than a workshop modification (sic).
38. In considering whether the claim as made by the inventor is an invention. it will have to be considered whether the subject matter is not obvious. Obviousness is to be judged by the standard of a man skilled in the art concerned. Section 25(1)(e) states as follows:--
'that the invention so far as claimed in any claim of the complete specification is obvious and clearly the does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of applicant's claim'.
In Allamana Svenska Elecktriska A/B/ v. The Burntisland Shipbuilding C. Ltd. 1951 69 R. P. C. 63 it was stated by the Court of appeal:
'The matter of obviousness is to be judged by reference to the state of the art' in the light of all that was previously known by persons versed in that art derived from experience of what was practically employed. as well as from the contents of previous writing, specification textbooks and other documents '. (See Terrel on the Law of Patents page 125 307.)
39. The test by which obviousness is to be judged is as laid down by Lord Herschell in Siddell v. Vickers & Sons Ltd.1890 7 RPC 292 .
'SO obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end'.
By Lopes LJ in Savage v. Harris & sons 1896 13 RPC 364 . the test laid down is that:--
'The material question to be considered in a case like this is: whether the alleged discovery lies so much out of the track of what was known before as not neutrally to suggest itself a persons thinking on the subject it must not be the obvious or natural suggestion of what was previously known'.
If the invention was obvious, there could be no inventive step whatsoever. For the same reason stated above in considering whether it was an invention, the objection to the patent must be upheld on the ground that it is obvious.
40. An argument has been advanced before me by Shri Shah that the claim of the inventor is a combination claim and according to Shri Shah, the combination consist of three feature in claim No. 1 This is stated here only to be dismissed. No such claim that the invention is a combination claim has been made before the Controller of patents.
41. Section 25(1)(g) provides a ground of opposite as follows:--
'that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed'. It is the duty of a patents to state clearly and distinctly the nature and limits of what he claims. if the language used by the patentee is obscure and ambiguous,. no patent can be granted and it is immaterial whether the obscurity in the language is due to design or carelessness or want of skill. It is undoubtedly true that the language used in describing an invention would depend upon the class of persons versed in the art and who intend to act upon the specification. In the present case as already stated above, the invention is described in an obscure and ambiguous language, and on the ground also the patent is liable to be refused.
42. This bring me to trial last question viz., the amendment effect by him. Shri Shah also submitted before me that he is not in position to support the modification effected by the controller in the order passed by him. The modification effect by the controller in the order passed by him. The modification effect by the controller in the order passed by him. The modification have been effected by the Controller without any jurisdiction whatsoever. The powers to amend a specification are to be found in Section 15, 18, 19, 57, 59 and 78 of the Patents Act, 1970. Section 15 empowers the Controller to requires the applicant's specification or drawing to be amended to this satisfaction before he proceeds with the application if he is satisfied that the application or specification does not comply with the requirements of the Act or the Rule made thereunder. So also if it appears to the Controller that any invention in respect of which an application for patent is made might be used in any manner contrary to law, he may refuse the application unless the specification is amended by insertion of such disclaimed in respect of that claim of the invention . Section 16(3) empowers the Controller to require such amendment of the complete specification field in pursuance of either the original or a further application as may be necessary to ensure that neither of the said compete specification includes a claim for any matter claimed in the other. Under Section 18(1) the Controller is empowered to refuse to accept complete specification if it appear to the Controller that the claim is anticipated unless the applicant amends his complete specification to the satisfaction of the Controller. So also Section 19(1) empowers the Controller to direct the insertion of the other patent which is likely to be infringed,. unless the complete specification is amended to the satisfaction of the Controller. So also Section 57(1) empowers the specification of an application made by the appellant for the patent.
Section 59(1). No amendment of an application for a patent or a complete specification shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, and no amendment of a complete specification shall be allowed the effect of which would be that the specification as amended. would claim or describe matter not in substance disclosed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment'.
Section 78(1) empowers the Controller to correct clerical errors etc. None of these section empowers the Controller to make an amendment so motu as has been done by the Controller cannot be sent case.
43. Counsel were, therefore, right in their submissions that the modifications effected by the Controller cannot be justified.
44. In conclusion it may be stated that each to the grounds of opposition to the grant of patent is well founded. The opposition on the ground of prior publication, prior knowledge, prior user. that it is not an invention at all, that it is obvious, that it does not contain any inventive step and that the complete specification suffer from insufficiency are ground which must necessarily be sustained. The Controller was, therefore, in error in overruled the objections and granting the patent with modification I, therefore, pass the following order:--
Appeal allowed,. The order of the Controller is set aside and all the ground of opposition are sustained. In the circumstance of the case there will be no order as to costs.
45. Appeal allowed.