DYMTRO BOLESTA

[1990] APO 41

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 593525 by DYMTRO BOLESTA.  Examiner's objections to amend specification.  Request under R.19D.

Background
         Application No. 593525 for an invention entitled "Propulsion Apparatus" was filed as an International Application on 14 February 1985.  It derives priority from US application No. 580607 filed on 16 February 1984.  The examiner issued several adverse reports on the application and specification objecting that the specification did not fully describe the invention, was generally unclear and contradictory, and that the scope of the claims was indeterminate and, as a result, a full search and examination was reserved.
         The matter was heard in Melbourne on 12 August 1988 and in a decision issued on 21 September 1988 the Commissioner's delegate concluded:

"The specification in its present form suffers from a number of serious defects.  Nevertheless, it seems to me that it would be possible to propose amendments which would enable examination of the specification to proceed, and would result in the application being directed to subject matter which if found to be novel, would be patentable.  Accordingly, I direct that the applicant proposes such amendments to the specification."

The applicant subsequently proposed amendments and the application and specification were accepted.  Acceptance was advertised on 15 February 1990.  Shortly thereafter the applicant proposed further

amendments under section 77.  The examiner issued two adverse reports objecting that the request for leave to amend is not as prescribed and that the amendments are not allowable under sub‑section 78(2).  As a consequence of these objections, on 9 April 1990 the applicant lodged a request under Regulation 19D for exercise of the Commissioner's discretionary powers.

The request
         In his request for leave to amend his specification Mr Bolesta stated that the reasons for the proposed amendments are:

"The Examiner has insisted, in the last hours before the deadline for acceptance, to amend the main claims, claim 1 defining the apparatus and claim 2 defining the method, in such a way that this amendment renders this Patent useless."

In his accompanying correspondence the applicant also alleged:

.that on the examiner's insistence a "damaging sentence" has been inserted in the claims "which destroys the patent protection mechanism and opens widely this patent to abuse and to infringement",

.that the examiner had employed a "false concept of novelty" and ignored all Mr Bolesta's explanations in response to the examiner's reports before acceptance, and

.that the examiner has caused an unnecessary and a very costly delay in the prosecution of the application.

The specification and the proposed amendments
         The specification indicates that the invention relates to the linear propulsion of vehicles in the air or in the water where heat energy of the fluid in which the vehicle is submerged is utilized to perform the propulsion work.  The apparatus comprises a diverting duct connected to a converging duct, with movable rear walls to control an outlet area.  When the apparatus is moved through a body of fluid, the fluid is rammed into and enters the narow end of the diverging duct; the fluid is then directed into the converting duct and finally deflected past a deflector at the tip of the outlet area.  It is asserted that from this fluid flow, the forces formed by the static pressure of the fluid acting upon the walls of the apparatus, together with the forward momentum thereof, propels the apparatus.
         Claims 1 and 2 as accepted are as follows:

"1.A self propelled propulsion apparatus which comprises:

a diverging duct arranged in the propulsion apparatus and being such that a fluid is forced to enter its narrower end and when the apparatus is in motion, with there being a relative velocity between said fluid and said diverging duct, whereby fluid flowing along the diverging duct converts said relative velocity into pressure and into forwardly directed absolute velocity forming a forwardly directed momentum of said fluid;

and at least one converging duct connected to, and directly communicating at its wider end with the wider end of said diverging duct to extend rearwardly thereof, and so that its longitudinal axis subtends an obtuse angle with the longitudinal axis of the diverging duct whereby said converging duct is rearwardly angularly disposed to said diverging duct and is such as to define a leading wall having a rearwardly facing surface extending transversely of the longitudinal axis of said diverging duct, said ducts being contructed at said connection so that the flow path of the fluid is not obstructed in any way which will substantially effect the characteristics of the fluid as it flows from said diverging duct into said converging duct, and wherein fluid flowing along the converging duct converts said pressure into fluid velocity which in turn is transmitted as momentum to said leading wall of said converging duct, resulting from its angular disposition to the diverging duct, to provide thrust to propel said propulsion apparatus.

2.A method of utilising the heat contained in environmental fluids, to perform propulsion work, said method comprising; ramming said fluid with a diverging duct so that fluid is forced to enter its narrower end and flow along the duct with there being relative velocity between said fluid and said diverging duct which is converted into pressure and into absolute velocity of said fluid in the same direction as the ramming motion of said diverging duct forming by this mechanical energy, consisting of pressure and kinetic energy, which is generated by the heat extracted from said fluid which heat is directly, without involving a conventionally used thermal cyclic process, converted into said mechanical energy; passing the fluid possessing said mechanical energy and the momentum, through at least one converging duct connected to, and communicating with, the diverging duct to extend rearwardly thereof the longitudinal axis of which subtends an obtuse angle with the longitudinal axis of the diverging duct whereby said converging duct is angularly disposed to said diverging duct and is such as to define a leading wall having a rearwardly facing surface extending transversely of the longitudinal axis of the diverging duct, said ducts being constructed at said connection so that the flow path of the fluid is not obstructed in any way which will substantially effect the characteristics of the fluid as it flows from said diverging duct into said converging duct, and wherein said pressure is converted along the converging duct into fluid velocity causing momentum to be transmited to said leading wall of said converging duct, as a result of its angular disposition to the diverging duct, to produce said propulsion with a corresponding cooling of the fluid.

The final forms of claims 1 and 2 as proposed to be amended were lodged on 20 March 1990, the differences between these claims and the claims as accepted are:
         With regard to claim 1:

(i)After "which" in line 1, the following clause is inserted: "is propelled by the heat extracted from environmental fluid in which it operates, said propulsion apparatus."

(ii)"Along" is omitted from line 7.

(iii)The part from "said ducts" in line 20 to "converging duct" in line 24 is substituted by the clause: "from which said fluid enters into wider end [sic] of said converging duct."

With regard to claim 2:

(iv)"which is converted" in line 7 is changed to "converting said relative velocity."

(v)Before "momentum" in line 15 "the" is omitted, and after "momentum" the following clause is inserted: "formed by said absolute velocity,"

(vi)"with, the" in line 17 is changed to: "at its wider end with the wider end of said".

(vii)The part from ", said ducts" line 24 to "converging duct" line 28 is replaced by "from which the said fluid enters directly into the wider end of said converting duct,"

(viii)In line 30 after "momentum", the following phrase is inserted: "of said fluid"

(ix)"to", line 32, is changed to "of".

(x)After "fluid", last line of the claim, the following clause is inserted: "by the amount of work performed by said thrust".

Thus claims 1 and 2 as proposed to be amended are as follows:

"1.A self propelled propulsion apparatus which is propelled by the heat extracted from environmental fluid in which it operates, said propulsion apparatus comprises:

a diverging duct arranged in the propulsion apparatus and being such that a fluid is forced to enter its narrower end when the apparatus is in motion, with there being a relative velocity between said fluid and said diverging duct, whereby fluid flowing the diverging duct converts said relative velocity into pressure and into forwardly directed absolute velocity forming a forwardly directed momentum of said fluid;

and at least one converging duct connected to and directly communicating at its wider end with the wider end of said diverging duct to extent rearwardly thereof, and so that its longitudinal axis subtends an obtuse angle with the longitudinal axis of the diverging duct whereby said converging duct is rearwardly angularly disposed to said diverging duct and is such as to define a leading wall having a rearwardly facing surface extending transversely of the longitudinal axis of said diverging duct from which said fluid enters into wider end of said converging duct, and wherein fluid flowing along the converging duct converts said pressure into fluid velocity which in turn is transmitted as momentum to said leading wall of said converging duct, resulting from its angular disposition to the diverging duct, to provide thrust to propel said propulsion apparatus.

2.A method of utilising the heat contained in environmental fluids to perform propulsion work, said method comprising: ramming said fluid with a diverging duct so that fluid is forced to enter its narrower end and flow along the duct with there being relative velocity between said fluid and said diverging duct converting said relative velocity into pressure and into absolute velocity of said fluid in the same direction as the ramming motion of said diverging duct forming by this mechanical energy, consisting of pressure and kinetic energy, which is generated by the heat extracted from said fluid which heat is directly, without involving a conventionally used thermal cyclic process, converted into said mechanical energy; passing the fluid possessing said mechanical energy and momentum, formed by said absolute velocity, through at least one converging duct connected to and communicating at its wider end with the wider end of said diverging duct to extend rearwardly thereof the longitudinal axis of which subtends an obtuse angle with the longitudinal axis of the diverging duct whereby said converging duct is angularly disposed to said diverging duct and is such as to define a leading wall having a rearwardly facing surface extending transversely of the longitudinal axis of the diverging duct from which said fluid enters directly into the wider end of said converging duct, and wherein said pressure is converted along the converging duct into fluid velocity causing momentum of said fluid to be transmitted to said leading wall of said converging duct, as a result of its angular disposition of the diverging duct, to produce said propulsion with a corresponding cooling of the fluid by the amount of work performed by said thrust."

Examiner's objections
         Firstly, the examiner objected that the request "is not as prescribed" since the reason given for the proposed amendments is not appropriate.  The applicant was also advised that "the question of novelty ... was dealt with in considerations prior to acceptance and [does] not arise in the consideration of your request to amend".
         Secondly, the examiner objected that the proposed amendments are not allowable since as a result thereof claims 1 and 2 would not in substance fall within the scope of the claims before amendment, pursuant to sub‑section 78(2).  In particular:

"The replacement of the portion of the text of accepted claim 1 reading ", said ducts being constructed ... said diverging duct" with "from which said fluid enters directly into wider end of said converging duct" would clearly extend the scope of the claim from that as accepted.  A similar finding applies to proposed claim 2.  It is well established in patent law that an amendment is not allowable under Section 78(2) if it has the effect of making something an infringement which would not have been so before amendment."

Decision
         Firstly, I will consider whether the proposed amendments are allowable under s.78(2).  Clearly, some of the amendments (i)‑(x) listed above can be considered as minor grammatical changes which have no substantial effect on the scope of the claims.  However, on considering amendments (iii) and (vii), I think that the proposed claims are broader since the fluid merely enters the wider end of the converging duct, and there does not have to be any limitation on the construction of the connection of the ducts such that the flow path of the fluid is not obstructed, as is the case in accepted claims 1 and 2.
         I note from the application file that the amendments made to the specification just prior to acceptance included the incorporation into claims 1 and 2 of the clauses (iii) and (vii) now sought to be deleted.  Thus, I think it is apparent from Mr Bolesta's submissions that he is intending to broaden the claims, because his allegations that the amendment made prior to acceptance "renders the patent useless ... and opens widely this patent to abuse and to infringement" seem to indicate that he considers the accepted claims to be too narrow.  I conclude that the proposed claims do not in substance fall within the scope of the claims before amendment.
         Secondly I will consider the reasons for the request.  Some reasons have been given and the request form has been properly lodged so there is no objection under s.79(a) that the request is not as prescribed.  However, under s.81(1) the Commissioner is empowered to exercise his discretion on whether to allow or refuse the request.  It is Office practice that a consideration of a voluntary request to amend under s.77 differs from a consideration of a request made as a result of examiner's objections in that ‑

(i)the onus of exhibiting the utmost good faith rests on the applicant, and

(ii)where there is an element of doubt, it is not necessarily resolved in favour of the applicant.

As is apparent from the application file, some relevant circumstances in the prosecution of this application are:

(i)  During examination, the applicant was dealing directly with the examiner, notwithstanding that there was an address for service for the application with a firm of patent attorneys, namely Griffith Hack & Co, Melbourne.

(ii)The applicant's attorneys became directly involved with the prosecution as the final date for acceptance became imminent, since little progress had been made whilst the applicant was prosecuting the application himself.

(iii)Amendments were made to the specification just prior to acceptance as a result of negotiations between the examiner and the attorney.  This was done in good faith by both parties in an attempt to define a set of patentable claims so that the application would not lapse unaccepted.  I believe that the applicant's interests were foremost in these negotiations.

(iv)Since acceptance, the applicant has decided that, for the reasons indicated in his request for leave to amend, he is not satisfied with the accepted claims, and it is apparent from recent correspondence that he wishes to continue making submissions to the examiner on matters such as novelty.

Taking these circumstances into account, I am inclined to think that the applicant's reasons to amend are not appropriate since he had ample opportunity prior to acceptance to get the claims of his specification into a form which were satisfactory in his view and acceptable in the examiner's view.

Thus, in exercising my discretion under s.81(1) of the Act, I refuse to grant leave to amend the specification because:

(i)the proposed claims do not in substance fall within the scope of the claims before amendment, and

(ii)the reasons for the proposed amendments are not appropriate.

Pursuant to sub‑section 66(1), the application was due to be sealed on 15 August 1990.  On 7 August 1990 the six‑month period was extended under sub‑section 160(1) to 15 November 1990 since no official action had initially been taken on the Reg. 19D request (ostensibly because of some confusion over payment of fees).  That period of extension has not been sufficient to process the request and issue this decision, so I hereby further extend the date for sealing under sub‑section 160(1) by two months to 15 January 1991.

(J.I. WELSH)