Ricardo International Plc v Orbital Engine Company (Australia) Pty Ltd

[1994] APO 38

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 604191 in the name of RICARDO INTERNATIONAL PLC and No. 619424 in the name of ORBITAL ENGINE COMPANY (AUSTRALIA) PTY LTD

Title:  Exhaust System for Two-Stroke Engine

Action: Opposition by each party under Sec 59 to the other's application

Decision:  Issued            . 

Abstract: An application made under Sec 51 of the

Patents Act 1952 but not finally dealt

with under that Act is entitled to retain

its divisional status under Sec 39 of the

1990 Act

Grounds of opposition not established

against application 604191; grounds of

prior publication and non-compliance with

Sec 40 established against application

619424; Orbital afforded an opportunity to

amend

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 604191 by RICARDO INTERNATIONAL PLC and No. 619424 by ORBITAL ENGINE COMPANY (AUSTRALIA) PTY LTD and opposition by each party to the other's application

background

Ricardo Application 604191

Patent application 604191 by Ricardo International PLC (formerly known as Ricardo Group PLC, and hereinafter referred to as "Ricardo") was lodged on 26 April 1989.  The application was advertised accepted on 6 December 1990.  A notice of opposition to the grant of a patent on the application was filed by Orbital Engine Company (Australia) Pty Ltd (hereinafter referred to as "Orbital") on 6 June 1991.  All evidence was served by 4 June 1993.

As application 604191 was both lodged and advertised as accepted before the commencement of the Patents Act 1990, the opposition is proceeding under the provisions of the 1952 Act and regulations by reason of sec 234(3) of the 1990 Act and reg 23.3 of the Patent Regulations 1991.

Orbital Application 619424

Patent application 619424 by Orbital was lodged on 21 February 1991, and advertised accepted on 23 January 1992. Following acceptance, Orbital sought leave to amend the specification of application 619424 under sec 104 of the Patents Act 1990. The amendments were advertised on 7 June 1992, and subsequently allowed.

Ricardo filed a notice of opposition to the application on 23 April 1992, and a statement of grounds and particulars on 22 May 1992.  Service of evidence in support of the opposition was completed on 16 March 1993, and evidence in answer was served on 17 June 1993.  On 16 September 1993 Ricardo applied for an extension of time to file evidence in reply, but later withdrew the extension application before filing or serving any evidence.

As application 619424 was lodged prior to but advertised accepted after the commencement of the Patents Act 1990, this opposition is again by reason of sec 234(3) and reg 23.3 proceeding under the 1952 Act but with the procedures of the opposition governed by Chapter 5 of the Patent Regulations 1991.

The oppositions were heard jointly in Melbourne on 16 February 1994.  Ricardo was represented by Dr J Emmerson of Counsel, assisted by Mr G Habel, patent attorney with Collison & Co.   Orbital was represented by Mr D Mischlewski, patent attorney with Watermark, assisted by Mr R Baddeley.

SUBJECT MATTER

The specifications of applications 604191 and 619424 relate to the control of exhaust gas emissions from two-stroke cycle engines.

Engines operating on the two-stroke cycle include an inlet port and an exhaust port usually provided in the wall of the engine cylinder and controlled, that is to say opened and closed, by a piston accommodated within the cylinder.  When the engine is performing its working stroke the exhaust port is opened first and a substantial proportion of the exhaust gas is expelled from the cylinder before the inlet port is opened.  As the inlet port opens, the inlet charge, namely fresh air, which may contain fuel, enters the cylinder and displaces the remaining exhaust gases.  In order to maximise the efficiency of two-stroke engines it is common to purge residual exhaust gas from the cylinder with the aid of the incoming charge of air and fuel through the inlet port.  However this has presented a substantial problem in the control of the level of exhaust emissions since part of the air and fuel passes unburnt through the exhaust port during the scavenging process which results in a relatively high oxygen content of the exhaust gases and thus impairs the effective reduction of the harmful nitrogen oxide (NOx) emissions by known catalytic treatment.

The inventions are based on the realisation that the air/fuel ratio in the exhaust gases passing through the exhaust port varies significantly during the course of the exhaust port open period, and in particular that the gas exhausted in the initial surge as the exhaust port commences to open is richer in fuel content and thus capable of sustaining a reduction process.

Claims 1 to 3 of Ricardo application 604191 read as follows:

"1. A two-stroke engine comprising a cylinder accommodating a piston and having an inlet port and an exhaust port, the exhaust port communicating with an exhaust system which includes two exhaust flow paths in parallel, the first of which includes a reduction catalyst and the second of which bypasses the reduction catalyst, the downstream ends of the two flow paths being connected together upstream of an oxidation catalyst, the exhaust port being so controlled that as the piston performs its downstroke the initial flow of exhaust gas is substantially through the first flow path and the subsequent flow of the exhaust gas is at least partly through the second flow path.
 2. An engine as claimed in claim 1 wherein the exhaust port includes one or more openings formed in the wall of the cylinder which are controlled by the piston.

3. An engine as claimed in claim 2 wherein the two flow paths communicate with the interior of the cylinder through one or more respective openings which are spaced apart in the axial direction of the cylinder, the opening(s) of the first flow path being positioned to be uncovered by the piston before the opening(s) of the second flow path."

The specification of application 604191 explains that during operation of the engine according to claim 1 the initial surge of exhaust gas, which contains substantially no oxygen, passes through the reduction catalyst which can reduce the NOx in the desired manner.   The first flow path has a higher flow resistance than the second flow path because it contains the reduction catalyst.  Thus when both flow paths are open to the interior of the cylinder the subsequent flow of exhaust gas, which contains a proportion of oxygen from the inlet charge, is predominantly through the oxidation catalyst (to oxidise any unburnt fuel) and avoids additional loading of the reduction catalyst.

Claims 2 and 3 of Orbital application 619424 are identical in wording to the corresponding claims above.  Claim 1 differs from claim 1 of application 604191 only in that the phrase "the exhaust port being so controlled" (line 9) is replaced by "the two exhaust flow paths being so arranged".

THE EVIDENCE

Ricardo Application 604191

The evidence in support of this opposition consists of a statutory declaration by Christopher Kim Schlunke which was accompanied by exhibits CKS-1 to CKS-8.  The evidence in answer consists of a statutory declaration by Geoffrey Ephraim Habel.  No evidence in reply was filed or served.

Mr Schlunke deposes that he has been employed by Orbital for a total of 15 years, and has held the position of Chief Executive Officer and Managing Director of the parent company since 1992.  He is also one of the co-inventors named in application 619424 and parent patent 604175.  Mr Habel is the patent attorney responsible for the prosecution of both oppositions on behalf of Ricardo.

Orbital Application 619424

The evidence in support of this opposition consists of two statutory declarations by Mr Habel which collectively were accompanied by exhibits GEH1 to GEH6.  The evidence in answer consists of a statutory declaration by Mr Schlunke accompanied by exhibits CKS-1 to CKS-10. 

I will discuss the relevant parts of the evidence where appropriate in my decision.

GROUNDS OF OPPOSITION

The notice of opposition lodged in respect of Ricardo application 604191 lists the grounds available under sec 59(1)(c) to (i). The statement of grounds and particulars filed in respect of Orbital application 619424 sets forth the grounds of opposition in terms of sec 59 of the Patents Act 1990 in which the test for validity is based on the concept of a "patentable invention". As sec 234(3) of the 1990 Act applies to application 619424 the opposition cannot, strictly speaking, rely on these grounds. However, I believe that a purposive construction of the statement (Borden Inc v Elkem A/S (1992) AIPC 90-893) clearly infers that Ricardo's intention was to rely on sec 59(1)(c)(i), (g) and (h) of the Patents Act 1952.

Nevertheless, there appears to be nothing in the evidence of either party which goes beyond the ground of prior claiming, and the submissions for the parties made at the joint hearing were largely confined to this ground of opposition.

As a further issue, I note that Orbital has failed to provide any explicit statement that establishes its locus standi.  However I believe it is readily apparent from the very nature of these proceedings that Orbital's interest in the matter is such as to satisfy the principles set out in Mediline AG's Patent 24 IPR 398. I make the observation here that the locus of Orbital was not challenged at the hearing.

submissions and DECISION

Preliminary Matters

The evidence and submissions primarily serve to raise allegations of mutual prior claim between applications 604191 and 619424.  Dr Emmerson and Mr Mischlewski agreed that as claims 1 to 3 of the applications in suit are, in essence, identically worded, the allegations of mutual prior claim turned on the allocation of priority dates of the respective claims.

Ricardo application 604191 is a Convention application based on GB 8809922 and GB 8816563 made in the United Kingdom on 27 April 1988 and 12 July 1988 respectively.  I am satisfied that the priority date of claims 1 to 3 of the Ricardo application is the date of filing of GB 8809922.  This was not contested by Mr Mischlewski on behalf of Orbital.  Thus the issue to be ultimately decided in relation to the allegations of mutual prior claim is whether claims 1 to 3 of Orbital application 619424 are entitled to a priority date earlier than 27 April 1988.
Application 619424 is a further application made under sec 51 of the Patents Act 1952 of national phase application 26026/88 (now granted patent 604175) derived from PCT application PCT/AU88/00415. The parent patent claims priority from provisional specification PI 5102 lodged on 26 October 1987. Dr Emmerson submitted that the question of whether claims 1 to 3 of the Orbital application are entitled to take the date of lodgement of provisional specification PI 5102 as their priority date involves a two-fold investigation: firstly, whether the application is entitled to divisional status and, secondly, whether claims 1 to 3 are fairly based on matter disclosed in the provisional specification.

I generally agree with Dr Emmerson since, if divisional status applies, then the priority date of the claims in suit needs to be determined as if they had been included in the specification of parent patent 604175 - such determination is made under either paras (a) or (b) of reg 3.12(1).  Regulation 3.12(1) provides as follows:

"Subject to regulations 3.13 ("priority dates: certain persons and applications") and 3.14 ("priority dates: certain amended claims") and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:

(a) the date of filing of the specification;

(b) if the claim is fairly based on matter disclosed
      in 1 or more relevant applications-the date of
      making the relevant application in which the
       matter was first disclosed;

(c) if:
         (i) the specification is a complete
             specification filed in respect of a
             divisional application; and
        (ii) the claim is fairly based on matter
             disclosed in the specification referred
             to in paragraph 39(1)(a) or subsection
             39(2) of the Act ("divisional
             applications");
      the date that would have been the priority date
      of the claim if it had been included in the
      last-mentioned specification."

It is clear from para (c) of reg 3.12(1) that in order to gain a priority date based on parent patent 604175, the claims of  Orbital application 619424 are required to be fairly based on matter disclosed in the parent specification.  A claim of that specification would, in turn, be entitled to a priority date being the date of lodgement of provisional specification PI 5102 if that claim is fairly based on matter disclosed in the provisional specification.

However, both parties came to the hearing prepared to argue on the basis that the fairly based requirement of reg 3.12(1)(c) must be fulfilled in relation to provisional specification PI 5102.  The parent specification, apart from the claims and the inclusion of an additionally described modification (which I will refer to later in this decision), is otherwise virtually identical in wording to the provisional specification.  Consequently, I propose to take full account of the submissions advanced by the parties when dealing with the question of whether the claims of application 619424 are fairly based on matter disclosed in the parent specification.

Entitlement to Divisional Status

In Dr Emmerson's submission, the regulations under the Patents Act 1990 are so drafted that they do not give divisional status to a divisional application made under the 1952 Act but not finally dealt with before the commencing day of the 1990 Act. I note at the outset that there is no direct authority upon the point in issue.

Application 619424 was lodged prior to 30 April 1991 (the commencing day of the 1990 Act under sec 2(2)) and, consequently, is a so-called "transitional application". Chapters 23 of the Patents Act 1990 and of the regulations contain transitional and savings provisions which deal with such applications.

Before directing attention to the wording of these transitional and savings provisions, I think it is desirable to firstly discuss Dr Emmerson's submission in principle.

Broadly speaking an application made under sec 51 of the 1952 Act and finally dealt with under that Act could retain priority through to an earlier application. Corresponding benefits are of course available under the 1990 Act by virtue of sec 39. If Dr Emmerson is correct in his submission, any entitlement by a transitional application to early priority deriving from sec 51 would be lost simply because the application bridged the 1952 and 1990 Acts. I think it would be perverse to suggest that this is the legislative intent of the 1990 Act and regulations. On my understanding of the matter, the transitional and savings provisions were intended to address the need to deal fairly with transitional applications and thereby - to draw an analogy from the judgement of Lockart J in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) AIPC 91-025 at page 39,594 - ensure that a 1952 Act applicant is treated under the 1990 Act as if the 1952 Act had continued to operate. If this were not the case, it seems grossly anomalous that application 619424 was not entitled to have the early priority date which it would have taken under the 1952 Act preserved merely because of the passage of the 1990 Act. A similar anomaly would occur if the benefit of Convention priority rights obtained under the 1952 Act was negated simply because of the repeal of that legislation and its replacement by the 1990 Act.

An important section in Chapter 23 of the 1990 Act is sec 234.  Section 234(2) provides for the case where, before the commencing day, a patent application had been lodged under the 1952 Act and a complete specification had been lodged under that Act in respect of the application, and the application had not been withdrawn or finally dealt with; and states that, subject to Chapter 23 and the regulations, the 1990 Act applies in relation to the application on and after that day (i.e. the commencing day) as if it were a complete application made under the 1990 Act.

Thus the effect of sec 234(2) is that it treats application 619424 as if it were a complete application made under the 1990 Act.  However this provision does not of itself establish that the application in suit may be treated as a complete application having divisional status.  Another important provision, given the background to application 619424, is reg 23.18 which provides as follows:

"23.18  In the case of a claim of a specification:

(a) relating to a further application for a standard
patent or for a petty patent under section 51 of
     the 1952 Act in respect of an invention disclosed
     in a provisional specification under that Act;

............

the priority date is determined under section 45 of
 the 1952 Act or subsection 191(8) of the Statute Law
 (Miscellaneous Amendments) Act (No. 1) 1982, as the
 case requires."

Thus reg 23.18 operates to maintain the priority entitlements of a further application based on a provisional specification and lodged prior to the commencing day. 

However, this is not of any assistance to Orbital in the present situation. Under the 1952 Act a further application could be made by virtue of sec 51 for an invention disclosed in a provisional specification or a complete specification lodged in respect of the original or "parent" application (sec 51(1)). If the parent application was accompanied by a provisional specification then, unless the invention was also disclosed in the parent complete-after provisional specification, the further application could proceed under sec 51 only if it was lodged within 12 months of the date of lodgement of the parent (sec 51(2)).

It follows in my view that "provisional specification" in reg 23.18 means the provisional specification which originally accompanied the parent application.  On this basis the claims of application 619424 are not "in respect of an invention disclosed in a provisional specification" within the meaning of reg 23.18 since parent application 26026/88 (being a national phase application) claimed priority from, but was not accompanied by, provisional specification PI 5102, i.e., provisional specification PI 5102 was, under the circumstances, treated as being analagous to a basic document in respect of a Convention application.

I think it appropriate to now turn to reg 23.14 which provides as follows:

"23.14  If:

(a) a provision of the Act requires an act to be done
     under that or another particular provision of the
     Act; and

(b) the act was done under a corresponding provision
     of the 1952 Act;

that act is taken to have been done under the
 provision of this Act referred to in paragraph (a)."

In APM Ltd v CIL Inc (1981) 148 CLR 554 the High Court of Australia held that the provisions of sec 160(2) of the Patents Act 1952 were applicable to sec 141(1) of the 1952 Act for making Convention applications. In doing so the court addressed the question of whether sec 141(1) involved what sec 160(2) described as "an act or step in relation to an application for a patent ... required to be done or taken", and took the view (page 556 refers) that "the very first act by way of application for a patent will itself be an act or step in relation to an application within the meaning of s. 160(2)".

It is clear from this decision (see also Kimberly-Clarke Ltd v Commissioner of Patents and Minnesota Mining and Manufacturing Company 13 IPR 569) that the concept of what constitutes an "act" under the provisions of sec 160(2) of the 1952 Act should be interpreted broadly. I see no reason why this broad interpretation should not similarly apply to the provisions of reg 23.14 of the 1990 Act, despite the obvious different wording. In this regard it is relevant to observe that although reg 23.14 does not specifically refer to an act which is "in relation to an application for a patent", I cannot find any clear indication elsewhere in the Act or regulations which excludes such an act from the operation of reg 23.14 (compare with, for example, the effect of sec 235(2) on the operation of sec 235(1)).

Section 39 is the section of the 1990 Act which provides for divisional applications. Section 39(1) entitles a person who has already made a complete application to make a further application for a standard patent or a petty patent for an invention disclosed in the specification filed in respect of the original or "parent" application. Thus sec 39(1) essentially maintains the provisions of sec 51(1) of the 1952 Act regarding divisional applications. As a consequence of the view taken by the High Court in APM v CIL (supra), I am of the opinion that the making of such further application constitutes an "act" within the meaning of reg 23.14.

It may be argued that sec 39 does not require an act to be done.  The Federal Court in Scaniainventor v Commissioner of Patents 36 ALR 101 came to the conclusion that "required" in the context of sec 160(2) meant "requisite" or "needed" in order to secure an advantage or avoid a disadvantage. In sec 39 (and also sec 51) an applicant may secure the advantage of an entitlement to the earlier priority date of the parent application. Unlike the statutory provisions considered by the courts in the above-cited cases, reg 23.14 is not specifically concerned with an act which is required to be done "within a certain time". However, to the extent that sec 39 confers a benefit or right only as a result of the doing of an act, viz. making a further application for an invention disclosed in the parent application, I think this act may aptly be described as "required" by sec 39.

Taking account of the various issues raised above, I can not agree with the result contended for by Dr Emmerson and, consequently, I find that Orbital application 619424 is entitled to prima facie divisional status under the 1990 Act.  The priority date of the claims of the Orbital application is accordingly governed by reg 3.12(1)(c).

I now need to determine whether the claims of application 619424 are fairly based on matter disclosed in provisional specification PI 5102.

Fair Basis

It is appropriate when determining whether a claim is fairly based on a provisional specification to apply the tripartite test set out in Mond Nickel Co Ltd's Application (1956) RPC 189 and Imperial Chemical Industries Ltd's Application (1960) RPC 223. This test is expressed in "Patents for Inventions" (Blanco-White, 5th ed) at para 2-205 as follows:

. is the invention claimed described in a general sense in the

provisional?;

. is there anything in the provisional which is inconsistent with

the invention as claimed?; and

. in so far as the issue arises from the presence of specific

detail in the claim, does the claim include as a characteristic

of the invention a feature not mentioned in the provisional?

In so far as the claim seeks to cover a wide application of

some allegedly novel feature, does the claim stem from an

appreciation of the potentialities of that feature which

required something more than the language of the provisional to

give it birth?

The issue of fair basing upon matter disclosed in provisional specification PI 5102 was actively contested at the hearing.  The provisional specification commences by indicating that the invention relates to the control of exhaust gas emissions from internal combustion engines by the use of catalysts to convert the undesirable components of the engine exhaust gas, and has as an object the provision of an internal combustion engine wherein advantage can be taken of the cyclic variation of the composition of the exhaust gases from each cylinder of the engine within each operating cycle to improve the overall performance of the catalytic treatment of the exhaust gas.

The specification then sets out a consistory statement in the following terms:

"With this object in view, there is provided according to the present invention an internal combustion engine having for each combustion chamber an exhaust port through which exhaust gases pass from the combustion chamber to an exhaust system, the exhaust system having a plurality of catalyst means located such that, during a single exhaust phase of the combustion chamber cycle, a first portion of the exhaust gases contacts a first catalyst means, and a second portion of the exhaust gases contacts a second catalyst means, preferably of a different catalytic character to the first catalyst means."

Various illustrated embodiments of the invention are next described.  I need only consider the embodiment shown in Figure 3 for the purposes of these proceedings.  This embodiment is said to incorporate an exhaust manifold divided longitudinally by a web into two manifold cavities which communicate downstream with a common exhaust pipe, and upstream with respective upper and lower exhaust passages. 

The exhaust passages are separated by a continuation of the web which extends towards the cylinder exhaust port, and contain respective catalyst units for treatment of the exhaust gases.  The upper catalyst unit has a reducing activity whereas the lower unit has an oxidising activity.  The catalyst units may be constructed from flat and corrugated sheet elements which are stacked face-to-face so as to leave a number of channels therebetween, or they may comprise a more conventional substrate having a base structure of suitable ceramic or metallic material providing a multitude of passages.

A pivoted exhaust valve which co-operates with the exhaust port has an operating face with a complex curved surface, and a leading edge adapted to substantially seal against the piston.  A series of slots are formed close to the leading edge and pass through the operating face so as to communicate the exhaust port with the upper exhaust passage.  These slots provide the only way by which exhaust gases may pass from the combustion chamber into the upper exhaust passage during operation.

In operation of the engine the piston travels down the engine cylinder on its power stroke and commences to open the exhaust port to allow the first exhaust gases to escape through the port by way of the slots.  These gases pass into the upper exhaust passage and on through the upper (reduction) catalyst.  As the piston travels down further it passes the leading edge of the exhaust valve and exhaust gas is then able to pass under the valve into the lower exhaust passage and on through the lower (oxidation) catalyst unit.  At this stage relatively little exhaust gas passes through the slots into the upper passage.  In the passage beginning at page 10 line 30 the specification states that it is to be understood that even before the lower exhaust passage has been uncovered, pressure pulses generated in the upper exhaust passage will cause a reverse flow back through the upper catalyst unit.

Of particular relevance to these proceedings is the modification of the embodiment of Figure 3 which is described on pages 11 and 12 as follows:

"Rather than venting the upper manifold cavity 133 to the exhaust by simply uniting its throughput a short distance downstream with that from the lower cavity 134, the upper cavity is instead blanked off such that its only opening is by way of [upper] catalyst unit 126.  As described earlier, when the first exhaust gases pass through the exhaust port 115 they enter the upper exhaust passage 124 but cannot enter the lower exhaust passage 125.  These gases pass through the reduction catalyst unit 126 and into the upper manifold cavity 133 but can go no further.  The cavity 133 thus pressurises, the pressure increasing until the piston 12 passes the leading edge 144 of the exhaust valve and exposes the lower exhaust passage 125, whereupon the gases compressed into the upper manifold cavity 133 pass back through the reduction catalyst unit 126, the upper exhaust passage 124 and the slots 145 to then make their way through the lower exhaust passage, the oxidation (lower) catalyst unit 127 and the lower manifold cavity to the exhaust pipe.  In this way, the first gases to pass through the exhaust port experience two passes over the reduction catalyst and one pass over the oxidation catalyst, which gives a significantly improved catalyst treatment to that portion of the exhaust which may most require it."

In applying the first question of the Mond Nickel test, Dr Emmerson submitted that the particular exhaust system configuration claimed by Orbital application 619424 was not described in a general sense by provisional specification PI 5102.  He reasoned that as the exhaust gases were caused to flow back through the upper (reduction) catalyst and into the engine cylinder before passing through the lower (oxidation) catalyst, the modified configuration of the Figure 3 embodiment relied upon a series arrangement of gas flow paths.  As a consequence this variant could not fairly be said to include a pair of gas flow paths in parallel of which one path bypassed the reduction catalyst and had its downstream end connected to the other path upstream of the oxidation catalyst.

Applying the second question, Dr Emmerson submitted that there were a number of inconsistencies between the provisional specification and what is now claimed.  In the provisional specification the flow paths are in series, not in parallel; none  of the flow paths bypassed the reduction catalyst; and it was nonsensical to say that the flow paths are connected together at their downstream ends upstream of the oxidation catalyst.

Applying the third question, Dr Emmerson submitted that what Orbital is now claiming seeks to cover a wide application of the variant of the embodiment described by provisional specification PI 5102 with reference to Figure 3 which is not foreshadowed anywhere in the provisional specification.  Dr Emmerson likened this generalisation to the sort rejected by the Federal Court in Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd 11 IPR 20. He argued that while the provisional specification deals with the use of a plurality of catalyst means of a different catalytic character to treat the successive phases of the exhaust gases in a single engine cycle, it did not arrive at the specific configuration described and claimed in Ricardo application 604191 which Orbital is now attempting to place at the heart of the invention claimed in application 619424 since the key features of this configuration are not treated as part of the invention disclosed in the provisional specification. He then submitted that the effect of this significant point of departure changed the emphasis of the invention claimed in application 619424 from the disclosure in the provisional specification such as to place a very different complexion upon the character of the invention.

In summary, Dr Emmerson submitted that claims 1 to 3 of the Orbital application were not fairly based on matter disclosed in provisional specification PI 5102 and, consequently, were not entitled to a priority date earlier than that of the corresponding claims of Ricardo application 604191.  It therefore also followed that the claims of application 619424 so far as they now seek to claim the Ricardo invention are prior claimed, and indeed prior published, by the claims in suit of application 604191.

Mr Mischlewski responded by submitting that the invention which is disclosed in a general sense by provisional specification PI 5102 must be ascertained in the light of the published prior art.  In taking this argument further, he pointed out that although no evidence had been lodged as to the state of the art regarding the control of exhaust gas emissions in two-stroke engines, there was an acknowledgement in the Orbital provisional that known catalytic treatment did not selectively treat the successive exhaust gas phases with consequent degradation of the effectiveness of the reduction treatment of NOx emissions.  Mr Mischlewski submitted that the advance made by the invention broadly disclosed by the provisional specification over this acknowledged prior art resided in the separation of the different portions of the exhaust gases into two paths so as to avoid contact between the oxidising second phase gases and the reduction catalyst.  In his opinion this separation of the exhaust gases was also central to the invention claimed by Ricardo.

Mr Mischlewski then drew attention to the fact that a provisional specification is only required to disclose the general nature of an invention, and not all possible embodiments.  The provisional specification here gave the first broad disclosure of the idea of separating the exhaust gases into alternate streams, and it also disclosed with reference to Figure 3 a more specific application of that idea.  Mr Mischlewski submitted that it was apparent from the engineering detail of Figure 3 as distinct from the simple embodiment shown in the schematic Ricardo drawings that Orbital had already arrived at the broad idea subsequently described and claimed in the Ricardo application, and was now more concerned  with the actual physical arrangement of the exhaust system in a particular engine design.  Mr Mischlewski explained that this was why the provisional specification does not expressly indicate what necessarily occurs after the exhaust gases are separated within the context of the obvious wider application of the Orbital invention in its general sense.  He submitted that in the circumstances provisional specification PI 5102 need only describe the salient features of the relatively complex refinement of the broad idea of particular commercial interest to Orbital, and again emphasised that the provisional specification is not intended to disclose all possible embodiments of the invention.

Mr Mischlewski further submitted that in any event the broad idea of exhaust gas separation did not extend to specific details of the above aspect of the exhaust system.  The provision of parallel flow paths or a connection between these paths upstream of an oxidation catalyst were in his opinion simply matters of choice dependent upon engine design requirements and, consequently, could not be considered as key features of the invention claimed by Ricardo application 604191 as alleged by Dr Emmerson.  In support of this submission Mr Mischlewski made the point that if the acknowledged prior art was followed, the oxidation catalyst would be included in the first flow path downstream of the reduction catalyst and the second gas stream left untreated.  He then suggested that once this is realised, the simplest adaptation of the broad idea onto the prior art would be to arrange the second path so as to bypass the reduction catalyst and subsequently treat both gas streams with a single oxidation catalyst.  Mr Mischlewski concluded this line of argument to the effect that the disclosure of the provisional specification would lead readily to the invention claimed by application 619424. 

On my understanding, Mr Mischlewski is suggesting that a number of features present in claim 1 of application 604191 being matters of common general knowledge are non-essential to the Ricardo invention, and thus can be disregarded from a comparison of the invention claimed by Orbital application 619424 with the disclosures of provisional specification PI 5102 when assessing fair basis.  However, I believe Mr Mischlewski's analysis of the Ricardo invention to be overly simplistic and one which does not justify the approach he proposes.

It is clear from reported cases that a limitation expressed in a claim prima facie must be given full effect, as indicating a deliberate exclusion of everything not within the words of the claim.  The first reference in provisional specification PI 5102 to the features particularly mentioned by Mr Mischlewski when taken together is in the context of the variant of the Figure 3 embodiment which suggests that these features are not material to the Orbital invention in its broadest sense.  By contrast, it is evident from the specification of application 604191 that the features in question materially affect the way the Ricardo invention works and are therefore to be treated as essential to the invention claimed by application 604191 (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
Furthermore, although prior claiming may occur where any difference between the claims being compared is a mere incorporation of matters of common general knowledge (Babcock and Wilcox Ltd's Application 69 RPC 224), there is no direct evidence before me to establish what may be regarded as common general knowledge in the field of the invention. I do not consider the disclosure of provisional specification PI 5102 to be of any assistance in this regard as alleged by Mr Mischlewski since it merely acknowledges the use of catalysts in the exhaust systems of internal combustion engines which falls well short of indicating anything specific about what was common general knowledge at the relevant date. In any case, it seems to me that his allegation could not be substantiated solely on the basis of the contents of a single patent specification when account is taken of the guidance provided by the courts as to what constitutes common general knowledge.

Even if I were to accept Mr Mischlewski's view of what may be regarded as common general knowledge, the evidence and submissions advanced on behalf of Orbital fail to show that a fair reading of provisional specification PI 5102 in the light of such common knowledge would lead readily, or by a process of selection, to the combination of features claimed by claim 1 of application 619424.  Mr Mischlewski has tended rather to isolate certain features of the claimed combination and then allege that the addition of these features can be shown to lack inventiveness which, in my opinion, is suggestive of ex post facto reasoning.

As a final line of argument, Mr Mischlewski submitted that a number of terms used in the Ricardo claims were indefinite and therefore did not serve to limit the scope of the invention claimed by application 604191 in the manner suggested by Dr Emmerson.  The Ricardo claims were, as a consequence, wide enough to embrace the subject matter disclosed by provisional specification PI 5102.

I do not see that any lack of clarity which may exist in the Ricardo claims is at all relevant to the question of whether the Orbital claims are fairly based on matter disclosed in provisional specification PI 5102.  However, I think it appropriate to consider here some of the submissions made by Mr Mischlewski regarding the meaning of terms used in the Ricardo claims in view of the likely significance of those terms to the matter of mutual prior claiming.

Mr Mischlewski firstly referred to the term "parallel" and submitted that, unlike provisional specification PI 5102, the Ricardo specification does not disclose flow paths which are geometrically parallel.  Next he submitted that there was nothing in the generally understood meaning of the term "flow path" which precluded a reverse flow of exhaust gases.  He also submitted that the term "bypass" simply meant that the second gas stream does not flow through the reduction catalyst.  The important point here in Mr Mischlewski's opinion was that there is no reduction catalyst in the second flow path, and not that the second stream "passed by" the reduction catalyst as contended on behalf of Ricardo.

In considering these submissions I am mindful that a claim is not to be read in isolation from the description; it must be read in the context of the specification as a whole, and given a purposive construction (Decor Corporation Pty Ltd v Dart Industries Inc 13 IPR 385). There is nothing in the specification of application 604191 to suggest that the term "flow path" is to be read in a special or limited sense, and I concur with Mr Mischlewski that the plain meaning of this term does not preclude reverse exhaust gas flow. I would also mention here that the term "flow path", while not necessarily equating to a gas flow pipe, does in my view imply the presence of some physical structure which operates to confine the exhaust gases so that they traverse a certain route.  The next issue is the meaning of "parallel".  On its face this term could mean that the first and second flow paths are geometrically parallel, or are arranged for parallel flow (as distinct from series flow) in like manner to the elements of a parallel electric circuit.  Neither meaning would lead to an absurd result.  Dr Emmerson argued in favour of the latter interpretation by pointing out that claim 1 of the Ricardo application referrred to two flow paths in parallel, and not two parallel flow paths as implied by Mr Mischlewski.

It is not immediately clear from the specification as a whole of application 604191 which meaning is to apply.  The term "parallel" appears in the consistory statement and claim 1 but nowhere in the description of the best mode of carrying out the invention.  Although the drawings accompanying the Ricardo application show flow paths which could be described as geometrically parallel over a substantial portion of their lengths, I do not think these drawings operate to limit the meaning of "parallel" in this sense particularly as they are merely schematic in form and are not intended to portray the actual physical arrangement of the invention when in its working environment.

However, it is evident from the authorities that when dealing with the question of ambiguity the individual features of a claim should not be read in isolation of one another, but must be considered in the context of the totality of the claim.  In the present case I consider that the sense in which "parallel" is used in the context of claim 1 of application 604191 is allied to the meaning of the term "bypasses".  This term generally refers to the passage of one object by, and not through, another object and, with particular regard to the present circumstances, refers to fluid flow through an auxiliary flow path which passes around a particular place or part and returns to the main flow path (see, for example, Webster's Third New International Dictionary at page 307).  On this basis I am inclined to agree with Dr Emmerson that the term "parallel" is used in the Ricardo application in the sense of a parallel flow arrangement of the first and second flow paths in which the second path passes by the reduction catalyst and then joins with the first path at a position between the reduction and oxidation catalysts.

Mr Schlunke approaches the issue of fair basis somewhat differently in his declaration filed as evidence in answer to the opposition to Orbital application 619424.  He relevantly states (with his emphasis) as follows:

"6. I believe that claim 1 of Orbital Engine Company (Australia) Proprietary Limited [OECA] 619424 is supported by page 9, line 10 to page 12, line 15 of OECA PI 5102 which discloses the exhaust system configuration as claimed in claims 1 to 3 of OECA 619424.

7. In particular, I draw attention to the embodiment illustrated by figure 3 and described at page 9, line 10 to page 12, line 15 of OECA PI 5102 wherein upper catalyst unit 126 has a reducing activity and the lower catalyst unit 127 has an oxidising activity.  Passages 124 and 125 in which the upper and lower catalyst units respectively are located are parallel to each other.  As the piston 12 travels down on its power stroke, exhaust gases enter the upper passage 124 by slots 145 located in the exhaust valve 141 and are treated by the upper catalyst unit 126.  This constitutes exhaust gas flow along a first portion of the first exhaust flow path.  As the piston travels down further, it passes the leading edge 144 of exhaust valve 141 and exhaust gases pass into the lower exhaust passage.  This constitutes the second exhaust flow path.  In addition, before the lower exhaust passage 125 has been exposed by the downward movement of the piston 12, pressure generated in the upper exhaust passage 124 due to it being blanked off (see page 11, lines 27 to 29 of PI 5102) causes a reverse flow of the exhaust gases back through the upper catalyst unit 126 into the engine cylinder joining there with cylinder gases which then travel together into the lower exhaust passage 125 bypassing the upper catalyst unit 126.  This constitutes a second portion of the first exhaust flow path which terminates with the second exhaust flow path, just prior to the lower catalyst unit 127, to form a common third exhaust flow path.  Thus, in my opinion, OECA PI 5102 also illustrates that the downstream ends of the two paths are clearly connected together upstream of the oxidation catalyst ...."

Mr Schlunke provides a similar analysis in his evidence in support of the opposition to application 604191.  He also makes the following observation in his evidence in answer:

"9. I am aware that the Opponent [Ricardo] has previously argued in support of its corresponding application before the European Patent Office that PI 5102 'does not disclose any construction which has all the features of claim 1' of OECA 619424.... This submission was rejected by the European Examiner who found as follows:

'As was stated in the first communication, the
     embodiment of WO-A-8903929, mentioned from page
     14, line 35, to page 15, line 28, contains all
     the features of claim 1 [of the Opponents
     European Patent Application] and particularly two
     exhaust paths (see claim 5: "first portion" and
     "second portion" of exhaust gases) in parallel,
     the first being formed by items 145-124-126-133-
     126-124-145-115 and including the reduction
     catalyst (126) and the second being formed by 115
     alone which bypasses the reduction catalyst
     (126), the downstream ends (115) of the two flow
     paths being connected together upstream of the
     oxidation catalyst (127).

It is perhaps true that also the upstream end of
     the second flow path is connected to an
     intermediate point of the first flow path (i.e.
     the boundary between items 145 and 115).  However
     this does not influence the fact that the
     downstream ends (i.e. near the oxidation
     catalyst) are connected.

Furthermore, this embodiment mentioned from page
     14, line 35 to page 15, line 28 is disclosed in
     the priority document AU-A-8800415 (PI 5102) (see
     page 11, line 22 to page 12, line 15) so that the
     date of priority claimed can be allowed for the
     relevant parts of WO-A-8903929.'"

Mr Schlunke's analysis does, in my opinion, provide an accurate description of the mode of operation of the Figure 3 variant of provisional specification PI 5102 during the engine exhaust stroke.  However, I do not share his view that the exhaust system configuration as described by him reads onto the principal claim  of the Orbital application.

As stated by Mr Schlunke, the initial flow of exhaust gas is reversed so as to experience two passes over the reduction catalyst.  For the reasons already discussed in this decision, I consider that the initial flow of gas may be equated with flow through a first flow path.  I further agree that subsequent gas flow through the lower exhaust passage seems, at first glance, to constitute flow through a second flow path.  I note here that the lower exhaust passage bypasses the reduction catalyst.  Mr Schlunke has also stated that the initial gas flow travels through the upper exhaust passage which appears to corroborate my later finding that the upstream end of the first flow path is not located upstream of the exhaust port.  In any event, and of particular importance to the issue of fair basis, is his statement regarding the reverse flow of exhaust gas back into the cylinder which then joins with other cylinder gases before passing together into the lower exhaust passage.  Mr Schlunke has asserted that this constitutes flow through a second portion of the first exhaust flow path.

In my opinion, this statement may be construed to mean that either the downstream end of the first flow path is connected to the upstream end of the second flow path, and thus the two flow paths are connected in series and not in parallel; a portion of the first flow path forms part of the second flow path; or the initial and subsequent flows of exhaust gas mix in the cylinder so that, in effect, there is only one flow path rather than a pair of distinct flow paths.  In regard to the latter construction there would be no second flow path at all, let alone a second path which bypassed the reduction catalyst before joining the first flow path.  It would also seem quite meaningless to say with regard to the second and third alternatives that the second path is joined at its downstream end to the downstream end of the first flow path if the second flow path and the second portion of the first flow path at least partially overlapped, or contained a mixture of gases formed in the combustion chamber, as suggested by Mr Schlunke.  Furthermore, if the first portion of the first flow path is directed back into the cylinder after being treated by the reduction catalyst, it does not in my view necessarily follow that this portion of the exhaust gas will subsequently be directed into contact with the oxidation catalyst.

Based upon any of the alternative constructions noted above, I do not consider that the Figure 3 variant of provisional specification PI 5102 reads onto the exhaust system configuration claimed by application 619424.  This position is not influenced if the second flow path is instead considered to be formed by the exhaust port alone as argued by the European examiner, and I note in this regard that the provisional specification contains no support whatsoever for the examiner's contention that the downstream ends of the flow paths are joined at the exhaust port.  I also note that the examiner appears to have confused the referenced "second portion" of exhaust gases with the second exhaust flow path, and is thus at odds with the evidence of Mr Schlunke in which he equates this exhaust gas portion with a portion of the first exhaust flow path.

In view of the foregoing, I agree with Dr Emmerson that claim 1 of Orbital application 619424 does not satisfy the Mond Nickel test for fair basis.  The combination of features set forth in claim 1 involves a number of significant points of departure not fairly foreshadowed by the Figure 3 variant, particularly as regards the  parallel flow arrangement of the first and second exhaust gas flow paths and their downstream connection, and thus does not simply represent a more general application of the narrow disclosure of the Orbital provisional as alleged by Mr Mischlewski.  It is notable in this respect that Mr Schlunke, a co-inventor of the invention claimed by application 619424, makes no attempt to substantiate Mr Mischlewski's assertion that provisional specification PI 5102 does not specifically discuss the "simple form" of the Ricardo invention because Orbital was already interested in a particular material embodiment of that invention. 

Returning to the matter of mutual prior claiming, I have found that claim 1 of Orbital application 619424 is not fairly based on matter disclosed in provisional specification PI 5102.  I also consider appended claims 2 and 3 to be not fairly based on the provisional specification for the reasons expressed in relation to the principal claim.  Thus if claims 1 to 3 of application 619424 had been included in the parent specification they would not, in my opinion, be entitled to obtain their priority date from the date of lodgement of provisional specification PI 5102 via the provisions of reg 3.12(1)(c).  However, because of the prima facie divisional status of application 619424, it remains for me to determine whether these claims are fairly based on matter described in the parent specification and thereby entitled to gain a priority date being the date of lodgement of that specification.

As previously indicated, the specification of parent patent 604175 describes a modification of the Orbital exhaust system which was not disclosed by provisional specification PI 5102.  This modified arrangement is described with reference to a variant of the Figure 4 embodiment of the parent specification (which is equivalent to the Figure 3 variant of the provisional specification) in which the oxidation catalyst is moved to a position located in the exhaust manifold where it can treat gases from two or more cylinders of the same engine.  The modified arrangement is also described with reference to the Figure 2 embodiment of the parent specification.  This embodiment is generally the same as that shown in Figure 4, with the only significant difference being that the initial flow of exhaust gas flows only once through the reduction catalyst and, as a consequence, does not flow back into the engine cylinder.

However, the significance to either embodiment of moving the oxidation catalyst downstream of its illustrated position is not made clear and, in particular, it is not apparent from the parent specification that the modified arrangement operates to unite the downstream ends of the first and second flow paths upstream of the position to which the oxidation catalyst has been relocated.  Thus, for reasons similar to those expressed in relation to provisional specification PI 5102, I do not consider that claims 1 to 3 of application 619424 are fairly based on the parent specification.  These claims are therefore not entitled to take the date of lodgement of parent patent 604175 as their priority date, and must instead proceed with a priority date derived from the date of lodgement of application 619424, that is, 21 February 1991.  As this is later than the publication date of the specification of Ricardo application 604191, I find that claims 1 to 3 of Orbital application 619424 are prior published by the Ricardo specification.

There were a number of additional issues raised at the hearing which I will now consider.

Prior Claiming by Orbital Parent

Mr Mischlewski submitted that claim 1 of Ricardo application 604191 was prior claimed by claim 8 of Orbital parent patent 604175.  Dr Emmerson did not dispute the entitlement of the Orbital parent claim to a priority date earlier than that of the Ricardo claim, and I consider the parent claim to be so entitled.

Claim 8 of patent 604175 reads as follows:

"A two stroke cycle internal combustion engine having for each combustion chamber means to supply fuel to the combustion chamber, an exhaust port through which gases pass from the combustion chamber to an exhaust system, and at least one inlet port through which a fresh charge of air enters the combustion chamber, the inlet and exhaust ports being arranged so that the inlet port opens prior to the closing of the exhaust port, characterised in that there is provided in the exhaust system a first catalyst means of a first catalytic character located to receive a first portion of the gas exhausted from the combustion chamber during an exhaust port open period, and second catalyst means to receive a second portion of the gas exhausted from the combustion chamber subsequent to the commencement in the same exhaust port open period of the exhausting of the first portion, said second catalyst means being of a different catalytic character to the first catalyst means."

Mr Mischlewski submitted that the essence of the invention claimed by parent claim 8 resided in the separation of the exhaust gas into two streams and the subsequent treatment of each stream with a different catalyst means.  He conceded that the parent claim differed from Ricardo claim 1 in that it contained no reference to treatment of the second gas stream by the same oxidation catalyst used to treat the first stream, but argued that this difference was merely a routine matter of design and, consequently, did not avoid prior claiming for reasons analogous to those given in Babcock and Wilcox, supra.

Against this, Mr Mischlewski repeated his earlier argument that it was known from the prior art to treat the exhaust gas as a single stream with a reduction catalyst and an oxidation catalyst.  As it was also known that the efficiency of the reduction catalyst was reduced by the presence of oxygen in the exhaust gas, the most obvious solution to this problem would be to initially separate the exhaust gas, treat the first stream with the reduction catalyst while arranging the second stream to bypass the reduction catalyst, and then join both streams for treatment with the same oxidation catalyst.

In reply, Dr Emmerson referred me to the law on prior claiming as set out in "Intellectual Property in Australia" (Lahore et al, Vol 1, page 728) where it is stated at para 1.5.064:

"In order for an objection based on prior claiming to be upheld the claims must relate to the same invention.  Mere verbal distinctions or variations in drafting will not avoid the problem, the question being whether '... there can be read into an associated claim on a fair construction thereof a combination of integers which is in substance the same combination as may likewise fairly be read into another claim of different date ...'.  If it can, then prior claiming will be established."

Dr Emmerson then submitted that in the present case the broad definition in claim 8 of patent 604175 of first and second catalyst means for respectively treating the first and second portions of the gas exhausted from the combustion chamber was not in substance the same combination of integers specified by claim 1 of application 604191.  According to Dr Emmerson, the Ricardo claim was concerned with a particular configuration of the exhaust gas flow paths and the reduction and oxidation catalysts which could not fairly be read into the Orbital parent claim.

As stated earlier in this decision, no evidence has been placed before me to establish what may be regarded as well known in the relevant art, and thus I am unable to conclude that Ricardo claim 1 and Orbital parent claim 8 differ only by the addition of matter properly described as common general knowledge, or that either invention is an obvious development of the other.  I would add here that quite apart from omitting a number of essential features of the Ricardo invention, the Orbital parent claim does not even require the first and second catalyst means to have a reducing activity and an oxidising activity, respectively.

On the basis of the foregoing, I find that claim 1 of application 604191 is not prior claimed by claim 8 of patent 604175.

Section 40

Ricardo Application 604191

There are a number of matters which require discussion in the light of Mr Mischlewski's remaining submissions concerning the meaning of terms used in claim 1 of application 604191.

Firstly, although I appreciate that "upstream" and "downstream" are merely relative terms, I do not agree that these terms would in their present context prove ambiguous to a person skilled in the art.  Indeed these terms apparently did not present any difficulties to Mr Schlunke, Orbital's own expert in these proceedings, and I note that they are also used extensively in the Orbital provisional, parent and divisional specifications.

A second matter concerns the precise location of the upstream ends of the exhaust gas flow paths.  Mr Mischlewski has suggested that these ends of the flow paths could be located within the engine cylinder and upstream of the exhaust port.  I appreciate that because the exhaust gases are formed within the combustion chamber, exhaust gas flow will inherently occur upstream of the exhaust port.  However, in terms of the subject exhaust system, I consider Mr Mischlewski's suggestion to be based on a strained interpretation of the specification of application 604191.

Lines 3 and 4 of Ricardo claim 1 state that the engine exhaust port communicates with an exhaust system.  The exhaust system is in turn stated to include first and second flow paths.  Thus, as a matter of language, the two flow paths are required to open into or be connected with the exhaust port.  The flow paths could of course be connected directly with the exhaust port or through the intermediary of a separate member (compare with claim 5).  On the other hand, the proposition put forward by Mr Mischlewski, particularly when considered in conjunction with his argument that the "ultimate" downstream ends of the flow paths coincided with the end of the exhaust pipe, implies that the flow paths are not joined to the exhaust port, but instead pass through it.  I do not consider this latter arrangement to be reconcilable with one in which the flow paths "communicate with" the exhaust port opening.

As a further consideration, it is evident from at least the introductory portion of the specification of application 604191 that the Ricardo invention relates to an improved exhaust system in which in accordance with conventional practice the spent gases discharged from the cylinder through the exhaust port are received by the exhaust system for subsequent catalytic treatment.  This background disclosure is in itself strongly indicative of the fact that the present invention does not envisage an exhaust system configuration wherein the upstream extremities of the exhaust system lie upstream of the exhaust port.

On the basis of the above comments, and following the principles of purposive construction, there is in my view nothing in the Ricardo claim or description to suggest anything other than that the upstream ends of the exhaust gas flow paths are contiguous with or spaced downstream of the exhaust port.

Finally, Mr Mischlewski has contended that the statement in Ricardo claim 1 that the downstream ends of the two flow paths are connected together upstream of an oxidation catalyst (lines 7 and 8) does not prohibit the flow paths from continuing together downstream of the oxidation catalyst.  I do not accept this contention since on the plain meaning if the flow paths are connected at their downstream ends they are effectively terminated at the point of connection.  This fact is recognised in the evidence of Mr Schlunke referred to above.  I further note in this regard that although the throughput of the second flow path is united with that of the first flow path in a "third" gas flow path which extends from the junction of the first and second flow paths to the oxidation catalyst, it is clear on a purposive construction that this third flow path does not constitute a common portion of the first and second paths.

In view of the foregoing, I find that the terms in claim 1 of application 604191 variously referred to by Mr Mischlewski suffer no lack of clarity.  I would add here that these terms all appear in claim 1 of application 619424 which means that even if I were to find an objection to arise under sec 40 to the Ricardo claims from the use of any such terms, the Orbital claims would be similarly deficient. 

Mr Schlunke submitted that claim 1 of application 604191 is not strictly correct in referring to control of the exhaust port itself.  However, it is my opinion that this does not give rise to an objection under sec 40, particularly as it is clear from the Ricardo specification (see page 5, for example) that the exhaust port is conventionally "controlled" in the sense of being opened or closed by the piston as it reciprocates within the engine.

Orbital Application 619424

Dr Emmerson submitted that independent claims 4 and 14 of application 619424 were not fairly based on matter disclosed in provisional specification PI 5102. 

In short, Dr Emmerson argued that claim 4 was objectionable for the same reasons expounded by him in relation to claim 1, whereas claim 14 failed to make any mention of catalytic treatment and therefore impermissibly covered any division of the exhaust gas, regardless of how it was treated. 

Mr Mischlewski did not make any submissions with regard to the fair basing of claim 4.  Nevertheless, I am of the view that the combination of features claimed by claim 4 is fairly foreshadowed by provisional specification PI 5102.  When claim 4 is compared with the disclosures in the provisional specification, it is evident that the claim is based on the Figure 3 variant which was described by way of illustrative example of the invention in its general sense.  Accordingly, I believe that the claimed combination has arisen from a choice from alternatives left open by the Orbital provisional and that, unlike the situation considered in Coopers Animal Health Australia Ltd, supra, this choice is not in the nature of a selection which involves a fresh inventive step beyond the disclosures in provisional specification PI 5102 such as is implied by the addition of a new characteristic or salient feature.  See also F Hoffman-La Roche & Co AG v Commissioner of Patents (1970) 123 CLR 529. I similarly find in favour of claims 5 and 10 to which Mr Habel has objected in his evidence in support of the opposition to application 619424.

Regarding claim 14, Mr Mischlewski again argued that the Orbital invention was based upon the recognition that the chemical properties of the exhaust gas varies during the exhaust port open period.  The true inventive idea accordingly lay in the provision of means for separating the exhaust gas into two streams, with the initial stream being richer in fuel content than the subsequent stream.  However, in my view, the main thrust of the specification of application 619424 is not confined to the mere separation of the exhaust gas, but instead also treats the use of different catalyst means in the respective exhaust gas streams as a central feature of the invention.  Thus I find that claim 14 is not fairly based as it omits an essential part of the invention.  It follows that appended claims 15 to 24 are also not fairly based on the Orbital specification.

In his evidence Mr Habel has argued that as Orbital claim 14 lacks fair basis, the claim is not entitled to an earlier priority date taken from the date of lodgement of provisional specification PI 5102 and, consequently, is prior claimed by Ricardo claim 1.  It is true that the claims in question overlap to a substantial extent but I do not believe that this is enough to establish prior claiming since, unlike the Orbital claim, the Ricardo claim is not distinctly confined to the provision of means for dividing the gas exhausted from the cylinder to deliver respective portions of the exhaust gas into a pair of exhaust gas passages (Badische Anilin- & Soda-Fabrik AG (Distiler's) Application [1977] FSR 137).

CONCLUSION

Ricardo Application 604191

I have found:

- claims 1 to 3 of Orbital application 619424 are not fairly
  based on matter disclosed in the specification of parent
  patent 604175, or provisional specification PI 5102, and
  therefore are only entitled to a priority date which
  derives from the date of lodgement of application 619424

- the priority date of Orbital claims 1 to 3 is consequently
  later than that of claims 1 to 3 of Ricardo application 604191,
  and thus the Orbital claims do not prior claim the
  Ricardo claims

- claim 8 of Orbital parent patent 604175 does not prior claim
  Ricardo claim 1

- the Ricardo claims all comply with sec 40

As Orbital has not succeeded on any of the grounds relied upon, I dismiss the opposition to application 604191.

Orbital Application 619424

I have found:

- a transitional application invoking sec 51 of the Patents
  Act 1952 is entitled to prima facie divisional status under
  the 1990 Act

- the priority date of Orbital claims 1 to 3 to be later
  than the publication date of the specification of Ricardo
  application 604191 and, consequently, the Orbital claims are
  prior published by the Ricardo specification

- Orbital claim 14 and its appended claims do not comply with
  sec 40

As a consequence, the opposition to application 619424 succeeds on the grounds of prior publication and non-compliance with sec 40.  However, I am of that the view the grounds established by Ricardo can be overcome, and that Orbital should be given an opportunity to amend its specification.  I therefore allow Orbital 60 days from the date of this decision to propose amendments accordingly.

Costs

I have found in favour of Ricardo in respect of both oppositions.  In accordance with the general principle that costs follow the event, I award costs for each opposition against Orbital.

O.L.Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Collison & Co,

Adelaide

Patent attorneys for the opponent   :  Watermark, Perth