AB VOLVO

[1983] APO 41

In the Matter of the Patents Act 1952

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In the Matter of Application No. 41671/78 for Letters Patent in the Name of AB VOLVO

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In the Matter of Examiner's Objections thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. 41671/78 entitled "Fuel Injection System for Diesel Engines" was lodged 17 November, 1978 claiming priority based on an application numbered 7713231‑4 lodged in Sweden on 23 November, 1977.
         A first examiner's report issued thereon 23 February, 1982 and consequently the time for acceptance as specified under section 54, including all extensions, expires on 23 November, 1983.  A total of six reports has been issued, the substance of reports Nos. 2 to 6 being that the amendments proposed, in particular proposed claim 1, are not allowable, as they contravene sub‑section 49(4).
         The attorney for the applicant, Mr. A.J.F. Ward of Clement Hack & Co., Melbourne, requested that the matter be set down for hearing; this was done, and the matter was heard on 16 November, 1983, in Canberra.
The Specification
         The specification in the form in which it was lodged states that the invention relates to a fuel injection system for direct injection diesel engines with a depression in the tops of the pistons, in which there is an

injection pump with a regulator and accompanying injector for each cylinder, the injectors being disposed to spray the fuel in a zone around the center axis of the respective piston depression.  It goes on to explain that modern diesel engines with injection systems of this type give off large amounts of harmful substances, due to the fact that these conventional injection systems cannot be optimized both for low and high compression, whereas the systems are designed for high compression, resulting in a high level of hydrocarbon emissions at low compression.  The specification then states thepurpose of the invention in the following terms:

"One purpose of the present invention is to achieve a fuel injection system which makes possible a reduction of the engine's harmful emissions.  A further purpose of the invention is to achieve an injection system which will make possible the combustion of an engine fuel with a low cetane number; methanol for example, to contribute to said reduction of the harmful emissions."

According to the specification this is achieved, in an injection system of the type to which the introduction states the invention relates, by providing the system with a second injection pump with a regulator and accompanying second injectors for each cylinder, the second injectors being disposed to inject fuel obliquely from the side into the respective piston depression in a direction counter to the rotation of the intake air before the fuel from the first injectors is injected.
         The specification elaborates on this by explaining that in an injection system of this type, the first pump and injectors can be optimized for high compression and the second pump and injectors for low compression.  Thus by injecting diesel fuel through the latter obliquely counter to the air rotation in the piston depression, a rapid retarding of the fuel is achieved which is thereby carried by the air in the combustion chamber with minimal mixing in an annular zone around the center of the piston depression.  Further, the high concentration of fuel drops in this zone creates especially favourable conditions for compression ignition due to the fact that the fuel‑air mixture does not become too lean during the ignition delay period.  The description is quite positive about the system and how it must be set up to operate in the way necessary to achieve the purpose of the invention.  Thus, it states:

"The injection system described here consists of two individual injection systems, the second of which is used to inject a small amount of fuel with high cetane number, diesel fuel for example, to reduce the hydrocarbon emission at low compression and initiate combustion, while the first system is used to inject the fuel volume which is required for the compression in question.  The latter fuel can be diesel fuel or a fuel with low cetane number such as an alcohol; methanol for example.

To achieve a suitable fuel‑air mixture to achieve the above‑

mentioned advantageous characteristics, the fuel from the second system must be oriented in an annular zone around the center.  For this purpose, the second injectors 8 are disposed in such a way that the fuel is injected counter to the rotation of the intake air in the depression of the piston."

Finally, the specification indicates that optimal results are obtained when the projection of the injection vector onto the cross‑sectional plane of a piston from a respective second injector is tangent to a circle whose radius r is about 0.4 of the radius of the piston depression, and when the angle (  ) with said plane is about 15o.  When fuel is injected closer to the center of the depression (reduction of r) the amount of soot increases, while hydrocarbon emission increases with injection farther from the center (increase of r).  The description ends with the statement that depending on engine type, r can be 0.35‑0.45 times R and    be about 10‑20o.
         Claim 1 as lodged reads as follows:

"Fuel injection system for direct injection diesel engines with a depression in the tops of the pistons, said system comprising a first injection pump with a regulator and accompanying first injector for each cylinder, said injectors being disposed to spray the fuel in a zone around the center axis of the respective piston depression, characterized by a seond injection pump with a regulator and accompanying second injectors for each cylinder, said second injectors being disposed to inject fuel obliquely from the side into the respective piston depression in a direction counter to the rotation of the intake air before the fuel from the first injectors is injected."

The Proposed Amendments
         During the course of examination, a number of amendments were proposed to the description and claims, the contentious substance of which was an attempt to relieve the application of any limitation requiring that the second injectors direct fuel counter to the rotation of the intake air.  Nevertheless the two passages from the description quoted earlier in this decision (i.e. the first setting out the purposes of the invention, the second concerning the necessity of having the fuel from the second injectors in respective annular zones) were not proposed to be deleted or changed.
         Claim 1, in the form in which it is presently proposed to be amended reads as follows:

"Fuel injection system for direct injection diesel engines with a depression in the tops of the pistons, said system comprising a first and a second injection pump each having a regulator, said first pump having a first injector for each cylinder and said second pump having a second injector for each cylinder, said first and second injectors being disposed to inject the fuel into a piston depression in which the intake air is set in rotation, characterized in that each first injector is disposed to spray the fuel in a zone around the center axis of the piston depression while each second injector is disposed to inject fuel from the side towards a central zone in the piston depression in a direction which has no directional component in the rotational direction of the intake air, such that the fuel spray can reach said central zone without interfering with the fuel spray from the first injectors, the second injection pump being set to start fuel injection before start of fuel injection from the first injection pump."

Discussion of the Objections
         The examiner's objection is most concisely presented in his objection No. 9 (from Report No. 4 dated 15 June, 1983):

"Claim 1 as it now stands embraces a feature not originally disclosed, namely that the second injector may inject fuel in a radial direction and thus in a direction normal to the air flow (see lines 11‑14 where the expression 'in a direction which has no directional component in the rotation direction of the intake air' must include a direction at right angles to the air flow).

It can be seen from the original introductory preamble on page 3 lines 5‑8, which contains a general statement about the invention, that the second injectors are disposed to inject fuel in a direction counter to the rotation of the intake air.  This statement does not include radial flow of the injected fuel.

Objection to claim 1 is therefore taken on the grounds of section 49(4)."

I point out at this stage that none of the examiner's reports raised objections of prior publication or lack of novelty, so that, prima facie, the only prior art is that set out in the specification, i.e. diesel engines having a single injector per cylinder.
         In his written submissions during prosecution of the case, and at the hearing, the Attorney has put forward a number of arguments which I shall summarise:

(i)"... there is a difference between "embracing" a situation and "positively defining" the situation.  The wording as used in Claim 1 embraces the preferred embodiment, i.e. a situation where the injected fuel is in a direction counter to the rotation of the intake air.  Consequently, it is submitted that the invention is adequately defined.  Whilst other modes of injection are covered by the claim, they are not specifically recited.

... it is legitimate drafting practice to use wording that covers more than the specific embodiment. ... the additional area covered by the claim does not have to be positively disclosed in the specification."  In any case the only thing new in the claim is the boundary situation, i.e. where the second injectors direct fuel at right angles to the intake air flow direction.

(ii)As the only prior art of relevance appears to be that set out in the specification of this application, the applicant is entitled to claim broadly, and as the question of what is "in substance disclosed" must also be determined with respect to the prior art and to the inventive concept, I should not be unduly restrictive in determining the matter.

(iii)In his judgement in United‑Carr Incorporated's Application [1971] RPC 23 Whitford J. held that in circumstances such as we have in the present case it was not unreasonable to adopt the principles of Mond Nickel Co. Ltd.'s Application [1956] RPC 189 in comparing the proposed amended claim with the specification as lodged. If the claim was fairly based using these tests then it should be allowed to go forward.

Sub‑Section 49(4) of the Act provides:

"An amendment of the specification (not being an amendment for the purpose of correcting a clerical error or an obvious mistake) is not allowable if the specification would, as a result of the amendment, claim matter not in substance disclosed in the specification as lodged."

The questions of clerical error and obvious mistake have not been argued, and the only point at issue is whether the proposed amendments were in substance disclosed in the specification as lodged.  Mr. Ward is, in my opinion, correct in principle in the first part of his first argument.  The difficulty with the present wording as proposed for claim 1 is the specific inclusion of the requirement that:

"each second injector is disposed to inject fuel ... in a direction which has no directional component in the rotational direction of the intake air ...",

which in my view, results in the positive claiming of all directions of injection other than the ones specified in that requirement.  Consequently I do not agree with this part of the argument.  The second part of Mr. Ward's first argument concerning the "boundary" situation does not assist the first part.  This part of the argument requires the acceptance of the interpretation of the expression "direction counter to the rotation of the intake air" as being all directions except those having a component in the said direction of rotation, and excepting also a direction at right angles thereto.
         I cannot agree with this interpretation.  The specification does not set out limits within which the fuel injection is considered to be counter to the intake air flow direction.  Nevertheless, from a reading of the specification as a whole, in particular the examples of injection angles given, I conclude that other transverse directions (not having components in the direction of intake air flow) would not satisfy the expression referred to above.  Exactly how low a component in the counter direction would be acceptable, is of course, a matter for the man skilled in the art.
         With respect to Mr. Ward's second argument, it is necessary to consider what is meant by "in substance disclosed" as distinct from a clear disclosure.  The High Court has made some apposite comments on a related subject in its judgement in A.M.P. v. Commissioner of Patents 1974 [AOJP] Vol. 44 No. 29 at page 3224.  Although this case was dealing with sub‑section 78(2) which is concerned with whether a proposed amended claim would in substance fall within the scope of the claims before amendment, the comments are equally relevant in the present case:

"The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or particular article is an infringement of the patent.  Although each claim is a definition it is well recognised that an interpretation of the claim in the light of the state of the art may and probably will disclose that there are in it what may be described as essential as distinct from inessential integers.  The substance of the claim must be discovered in order to determine whether a particular product is an infringement. However at the same time as one does this one must bear in mind that one is interpreting a claim in the nature of a definition and the ordinary rules of interpretation apply to it.  The substance must appear from the language itself interpreted in accord‑

ance with ordinary rules of interpretion with a knowledge of the prior state of the art to which the claim relates."

Further, in United‑Carr Incorporated's Application (supra), to which Mr. Ward has referred me, it was held that (in circumstances similar to those in the present case) "the specification as filed clearly indicated that the feature sought to be omitted from Claim 1 was not an essential feature of the invention, and that amendent ... should accordingly be allowed". It follows that if a feature is an essential feature of the invention as originally described it may not be omitted from the claims. This proposition is supported also by the judgement in International Playtex Corporation's Application 1969 RPC 362, in which the facts were apposite to those of the application in suit. In the present case the feature in question (i.e. that each second injector directs fuel counter to the intake air flow) was, and still is, described in such a way as to be classified as essential, and in my view, may not be omitted from the claims.
         Finally, on this second argument, I have stated that no citations were raised against the application during the course of examination.  Nevertheless a very brief search in the records held in this Office of U.S. specifications has revealed that the concept of multiple fuel injectors on each cylinder of a diesel engine is at least fifty years old.  While this is not particularly relevant in the determination of the present issue, it is indicative that this particular argument may not be well founded.
In his third argument Mr. Ward has relied on the application of the tests given in Mond Nickel Co.'s Application [1956] RPC 189. I agree that these tests are reasonable and they certainly have been applied by the Courts in the U.K. on a number of occasions in considering whether amendments should be allowed without post dating as is provided under U.K. law. In this case, if Claim 1 as proposed to be amended, when compared with the specification as lodged, satisfies the tests, I agree that the amendments should go forward. The tests may be expressed thus:

1."Is the matter claimed broadly described in the specification as lodged?"

2."Does the claim include anything inconsistent with the disclosure in the specification as lodged?"

3."Does the claim include a characteristic feature on which the specification as lodged was silent?"

I think the proposed amendments to which the examiner has objected fail the first two tests.  In my opinion, the matter claimed was not broadly described but very specifically described in the original specification.  This is clear from my review of that specification, set out earlier in this decision.  As to the second test, it seems to me that there is inconsistency because the original specification stated as an essential requirement for the performance of the invention a feature which is not a limitation of Claim 1 as proposed to be amended.
Decision
         I have found that on several viewpoints, the proposed amendments are not allowable.  Further, in the specification as proposed to be amended Claim 1 is not fairly based on the matter described, in particular at page 6 lines 8 to 13.  Consequently, I refuse to allow the proposed amendments, and I direct that amendments to my satisfaction be lodged in the time remaining for acceptance.

(J.L. ROVETA)