Madras High Court: In a civil miscellaneous appeal filed under Section 117-A of the Patents Act, 1970, to set aside the order of the Assistant Controller of Patents & Designs and to hold that the pending claims are valid and involve an inventive step; and to direct the Controller to grant the patent, Senthilkumar Ramamoorthy, J. has remanded the application for reconsideration on the limited aspect, and directed that to preclude the possibility of pre-determination, any officer other than the officer who issued the impugned order will undertake reconsideration.
Background:
The appellants filed an application for grant of patent in respect of an invention titled “Opposed piston engine with non-collinear axes of translation” by specifying 15-04-2011 as the priority date. The claimed invention relates to internal combustion engines.
The prior art disclosed internal combustion engines comprising opposed piston engines with collinear cylinder bores and a common axis of translation along with which the pistons reciprocate.
Analysis and Discussion:
Examining whether the claimed invention involves an inventive step, the Court referred to the sequence of material events relating to the prosecution of the patent application.
The Court said that the Assistant Controller merely set out the various elements of the claimed invention such as the opposed pistons, the two crankshafts and the two sleeve valves proceeded to record the conclusion that the claimed invention would be obvious to a normal technical engineer based on cited prior arts.
The Court found no analysis or discussion of the features of the claimed invention, including regarding the provision of a crank offset between the first piston and the first crankshaft and likewise between the second piston and the second crankshaft or the rotation of the two crankshafts in opposite directions. Thus, as per the Court the impugned order is effectively unreasoned and cannot be sustained.
Whether the matter should be remanded after setting aside the impugned order or whether the patent application should be directed to proceed to grant?
Discussing the prior art, the Court noted that prior art D1 is an invention titled “New Opposed Piston Type Two Stroke Cycle Engine”. After perusing the complete specification, the Court said that the solution claimed and disclosed is the prevention of cooling loss at low and medium speed operation. The Court compared the claimed invention with prior art D1. It said that the crank offset and crankshaft rotation features are, however, neither claimed nor shown in the drawings forming part of D1.
The Court noted that prior art D3 is an invention titled “Twin-Piston-Per Cylinder Engine”, and D3 was cited as the closest prior art. After comparing D3 with the complete specification of the claimed invention, the Court said that there is similarity in the design of the cylinders, pistons and the common central combustion chamber defined by these elements. However, Figures 1 and 3 of D3 show that the crankshaft is aligned with the cylinders and not off set.
The Court further noted that prior art D5 describes an internal combustion engine having reciprocating piston sleeves, and said that in the case of D3, in D5 the crankshaft is aligned with the cylinders and not off set.
Thus, the Court said that as regards the crank offset and rotation of crankshaft features, these features are not found in D1, D3 and D5. There is no teaching, suggestion or motivation either in D1, D3 and D5 that would make these features obvious to a person skilled in the art. Since these features were recited as an option in the complete specification of the claimed invention, the amendment is within the scope of the complete specification and is liable to be allowed as per Section 59 of the Patents Act.
The Court concluded that the prior art regarding the inventive features claimed above, i.e. crank offsets and rotation of crankshafts, were not considered by the Assistant Controller probably in view of the amendments being made at the written submissions stage.
The Court remarked that there could be other relevant prior art, thus, the Court remanded the application for reconsideration on the limited aspect. The Court also directed that to preclude the possibility of pre-determination, any officer other than the officer who issued the impugned order to undertake reconsideration.
[Pinnacle Engines Inc v. Assistant Controller of Patents & Designs, 2024 SCC OnLine Mad 1052, decided on 30-04-2024]
Advocates who appeared in this case :
For Appellants: Advocate Vindhya S. Mani, Advocate Kiran Manokaran
For Respondents: S. Diwakar, SPC
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