Solo Industries Pty Limited v Robert Bosch GmbH

[1984] APO 2

In the Matter of the Patents Act 1952

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In the Matter of Application No. 514652 for Letters Patent by SOLO INDUSTRIES PTY. LIMITED

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In the Matter of Opposition under Section 59 thereto by ROBERT BOSCH GmbH.

DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS:
         This matter concerns Patent Application 514652 by Solo Industries Pty. Ltd. (the applicant) which was advertised accepted on 19 February, 1981.  Notice of opposition thereto was lodged at the Patent Office by Robert Bosch GmbH (the opponent) on 18 August, 1981.
         The matter was set down for hearing in Canberra on 28 November, 1983.  Mr. C.D. Macauley, patent attorney, of the firm of Callinan & Associates, was in attendance for the opponent and the applicant was represented by Mr. F.P. Old, patent attorney, of the firm of Spruson & Ferguson.  Mr. John Arthur Notaras, one of the inventors of the invention, subject of the present application, assisted Mr. Old.
         In the notice of opposition a number of grounds were mentioned, but in view of what was discussed at the hearing, it was evident that the only grounds which were being pursued were those under Section 59(1), (g), (h) and (i) of the Act, that is, obviousness, want of novelty and non‑compliance with Section 40, respectively.  Application No. 514652, was lodged on 12 October, 1976 and cognated the disclosure of six provisional applications, namely PC3692 lodged on 23 October 1975, PC4013 lodged on 18 November 1975, PC4350 lodged on 19 December 1975, PC4678 lodged on 30 January 1976, PC5272 lodged on 19 March 1976

and PC6234 lodged on 19 June 1976.  The invention relates to a transistor ignition circuit for an internal combustion engine having a magneto.  The complete specification begins by referring to various prior art ignition circuits both with contact points and solid state electronic circuits mentioning their demerits.  It states that the object of the invention is to provide an ignition system which does not require points and which enables reduction in engine starting speeds, and goes on to describe a number of embodiments and ends in a set of claims.  Claim 1 in its accepted form, as set down hereunder, defines the invention in its broadest form:

Claim 1.An ignition circuit for an internal combustion engine having a coil assembly including a primary winding and a magnet carrying rotor assembly rotatable by said engine past said primary winding, said ignition circuit comprising a first transistor having a collector, a base and an emitter, the collector‑emitter conduction path of said first transistor being connected in series with said primary winding; a first resistor directly connected between base and collector of said first transistor; a second transistor connected in parallel with the base‑emitter conduction path of said first transistor, and current sensing means to cause said second transistor to conduct when the current in said primary winding reaches a pre‑determined value whereby rotation of said rotor induces a voltage across said primary winding to cause said first transistor to conduct current from said primary winding directly through the collector‑

emitter conduction path of said first transistor without said first transistor being saturated, said second transistor conducting when said primary winding current reaches said predetermined value to turn said first transistor off.

Mr. Macauley contended that the specification failed to comply with Section 40 of the Act due to claim 1 requiring a "current sensing means" to cause the second transistor to conduct, whereas most of the embodiments in describing a potential divider were using a voltage sensing means and because of this, and also because of the words "current" and "voltage" being loosely used throughout the specification, the specification failed to comply with the requirements of Section 40.  In addition to the above, he pointed out that claim 10, which was a second independent claim, narrower in scope than claim 1, was ambiguous because of the use of the words "potential" and "current" therein, for though it defined the intermediate "potential" of the potential divider causing the second transistor to turn on thereby turning off the first transistor, yet it defined that this turning off took place when the "current" through the first transistor exceeded a predetermined value.
         On analysing the claim in the light of the description it is apparent to me that the wording of claim 1, particularly the expression current sensing means, has been chosen with the intention of embracing all the embodiments of the invention described, i.e. to include within its scope the current sensing resistors in series with the first transistors shown in figs. 18, 20 and 30, as well as the "potential dividers" of the remaining embodiments and this is confirmed by claims 2 and 4 which are appended to claim 1.  Mr. Macauley conceded that the expression "cuurrent sensing means" included the current sensing resistors of figs. 18, 20 and 30, so that what remains to be decided upon is whether or not "current sensing means" can include potential dividers of the remaining embodiments and that the terminology does not point to a lack of consistency.  The expression "potential divider", as is generally understood and as would be applicable in the context of the present invention would be embracing a pair of resistors (or impedances) connected across a voltage source.  The connecting of a load in parallel with the potential divider, across the voltage source (the latter being voltage induced in the primary winding) would result in current flowing in the two branches, i.e. the potential divider branch and the load branch due to the induced voltage, and these currents would be in the ratio of the resistance of each branch as per Ohm's Law.  With increasing induced voltage, the load current would increase, with a corresponding increase in the current through the potential divider and at a predetermined value of the load current the current in the potential divider branch would reach a value which would make the potential at the junction of its two resistors sufficient to turn on the second transistor.  From this one can see the potential divider functioning as a current sensor, sensing the level of load current.  Of course such a method of measuring current (i.e. using a shunt) is well‑known in the art, its purpose being to avoid introducing a sensing element directly into the load circuit.  Under the circumstances I find the use of "current sensing means" in claim 1 fairly based and the claim clear.  I do not find the description lacking consistency in its use of the terms "voltage" and "current" in determining load current.  Furthermore I do not find claim 10 ambiguous in its reference to potential and current when it mentions the intermediate potential switching off the first transistor as the current therethrough reaches a predetermied value.  Accordingly I am satisfied that the specification complies with the requirements of Section 40 of the Act.
         in his arguments regarding the priority date of the claims, Mr. Macauley referred to the present application (hereinafter referred to as "Solo"), being a complete after provisional, cognating the disclosure of six provisional specifications, and having its priority determined by Section 45(3) of the Act which states:‑

Patents Act 1952

Section 45(3)  The priority date of a claim of a complete specification accepted by the Commissioner under section 50 in respect of 2 or more provisional specifications, being a claim fairly based on matter disclosed in one or more of those provisional specifications, is the date of lodgement of the provisional specification in which that matter was first disclosed.

He concluded from a fair reading of the specification that one alleged inventive feature consisted in not allowing the first transistor to be driven into saturation for reasons disclosed in page 14 line 26 to page 16 line 15 of the complete specification.  He then quoted from the first five provisional specifications all of which he said referred to the resistor in the base circuit of the first transistor as providing sufficient base drive to enable the first transistor to conduct, and that it was only the last provisional specification, PC6234, which incorporated the further proviso that the resistor cannot provide sufficient base drive to cause the first transistor to saturate, and that as this proviso was an essential feature claimed in claims 1 and 10, these claims were entitled to only the priority date of the last provisional, PC6234, i.e. 11 June 1976 under Section 45(3) of the Act.
To further support this argument regarding priority, Mr. Macauley referred to the tests laid down by Lloyd‑Jacob, J. in Mond Nickel Co. Ltd.'s Application (1956) RPC 189 to establish fair basis. Lloyd‑Jacob, J. stated at page 194:

"It seems to me that there is a three‑fold investigation which is called for.  Firstly, one has to enquire whether the alleged invention as claimed can be said to have been broadly described in the provisional specification, and only if an affirmative answer is given to that question does one proceed to the second question, which is:  Is there anything in the provisional specification which is inconsistent with the alleged invention as claimed?  If it is found upon examin‑   

ation, that the invention as characterised in the claim includes something which is inconsistent with that which is described in the provisional specification, as at present advised I should think that it would be right to conclude that that claim could not have been fairly based upon the disclosure:  but, assuming that those two burdens are satisfactorily surmounted, there is, I think, a third matter for enquiry:  Does the claim include as a characteristic of the invention a feature as to which the provisional specific‑

ation is wholly silent?  It is with those approaches which I have indicated that I have to consider the submissions which have been made to me in the present case."

and Mr. Macauley referred to Hoffman‑La Roche & Co. AG v. Commissioner of Patents (1973) RPC 34 affirming the tests laid down by Lloyd‑Jacob, J., wherein Gibbs, J. stated at page 41:

"Lloyd‑Jacob, J. did not attempt to define all that is meant by the phrase "fairly based" but he gave a guide to the approach that should be made in deciding a question of this kind."

Mr. Macauley contended that it was the 3rd test of the Mond case which was relevent here, i.e. because the first five provisional specifications were "wholly silent" about the non‑saturation feature of the first transistor, claims 1 and 10 were not fairly based on their disclosures and therefore these claims should have the priority date of 11 June, 1976, i.e. the lodgement date of the last provisional, PC6234.
          Having established in his opinion the correct priority date for the claims, Mr. Macauley went on to add that claims 1, 3‑6, 8‑11, 16‑18 were not novel and obvious and that these claims were anticipated by the disclosure of the abstract of US Patent 3938491 in the name of B.M. Mazza, (hereinafter referred to as "Mazza"), which had been available in the Patent Office library since 13 April, 1976.   He pointed out that the primary and secondary windings have been incorrectly shown in the Mazza abstract and that this minor inconsistency which, he contended, could easily be corrected by a skilled engineer, did not negate the relevance of Mazza, particularly in view of what was defined in paragraphs a, b and c of the Mazza claim.  In his opinion the similarity between Mazza and Solo was clearly obvious and that claim 1 of Solo read directly on to the Mazza circuit.  He contended that since the Mazza circuit showed the base of the Darlington pair being directly joined to the collector by resistor Ro, it could not operate in the saturation range because by general definition a transistor was in the saturation range only if the potential at the base of the n.p.n transistor was greater than its collector potential.  He attempted to substantiate this further by discussing Siemen's data sheets for the characteristic curves of the Darlington pair manufactured by siemens which sheets had been lodged as evidence in support, and he concluded that the circuit shown in the Mazza abstract must be operating in the non‑saturation range and accordingly this feature of claims 1 and 10 was not novel over the Mazza disclosure.  In addition claims 3‑6, 8, 9, 11, 16‑18 were anticipated by or obvious from the Mazza disclosure.
         In reply to the Macauley's arguments regarding fair basis for priority Mr. Old pointed to the function of a provisional specification as specified in section 39 of the Act, i.e.
Secion 39.    A provisional specification shall describe the invention.
             A complete specification on the other hand, be contended, was required to do more than this as defined in Section 40(1)(a) of the Act, i.e.

Section 40(1)(a)  A complete specification shall fully describe the invention, including the best method of performing the invention which is known to the applicant.

He further drew my attention to a number of cases dealing with the require‑
ments of provisional specifications and among these were:

Sandow, Ltd. v. Szaley, 23 RPC 6

Parkinson v. Simon 11 RPC 493

British Celanese Ltd. v. Courtaulds, Ltd. 50 RPC 259

Pneumatic Tyre Co. Ltd. v. Leicester Pneumatic Tyre and Automatic Valve Co. 16 RPC 53

Pneumatic Tyre Co. Ltd. v. East London Rubber Co. 14 RPC 77.

In addition he referred to a number of cases which dealt with the provisional specifications providing fair basis in view of the tests of the Mond case (supra) quoted by Mr. Macauley.  Among these were:

Farbenfabriekn Bayer A.G. (zirngibl's) Application 1973 RPC 698

British Drug Houses Ltd.'s Application 1964 RPC 237

Imperial Chemical Industries Ltd (Clark's) Application, 1969 RPC 574

Glaxo Groups Ltd's Application 1968 RPC 473

U.C.B. Socie_'te_' Anonyme's Application 1973 FSR p.433

Letraset Ltd. V. Rexel Ltd. 1974 RPC 175.

In the Letraset case, Graham J. at page 197 commented Lloyd‑Jacob, J.'s third test as follows:

"... I think that third test of lloyd‑Jacob, J. in the Mond case must be read as prohibitive only where the feature in question as to which the provisional is silent is one which does not necessarily result from the embodiment of the other features which it does mention."

A further decision mentioned by Mr. Old was Mono Containers Ltd's Application 1970 RPC 217 which, according to him, even though it related to Convention priority, maintained that disclosure in the drawings provided fair basis for priority.
         As was pointed out by Mr. Macauley, this view being shared by Mr. Old, the present case rested on the determination of the priority date of the claims for purposes of novelty and obviousness.  To decide upon this, having regard for the wording of the relevant portions of the Act which have been quoted and the case law mentioned above, I find that the descriptions of the first five provisional specifications do not contain any explicit statement which limits the first transistor's operation to the non‑saturation range, such a disclosure being evident only in the last provisional and I therefore turn to the circuit diagrams of the provisional specifications to see whether or not these disclose anything more thanwhat has been described in the texts.  On examining the circuits of the six provisional specifications, i.e. PC 3692, PC4013, PC4350, PC4678, PC5272 and PC6234, I find that all of them disclose the base of the first transistor (or its Darlington pair replacement) being directly joined to the collector by a resistance.  This feature according to the general definition of saturation provided by the opponent's declaration in support and cited by Mr. Macauley would be seen to be limiting the first transistor (or its Darlington pair replacement) to operating in the non‑saturation range.  Under these circumstances I do not believe that it can be said that the first five provisional specifications ‑ the sixth having explicitly disclosed this feature in the text ‑ are "wholly silent" regarding the non‑saturation feature of the first transistor according to the third test of the Mond case.
         Turning now to the Mazza abstract, which contains only a circuit diagram and a claim, and disregarding for the present the error in the connections of the windings in the circuit diagram, I find that nowhere in this abstract is there an explicit statement limiting the Darlington pair to operating in the non‑saturation range.  On considering particularly the connection arrangement of the Darlington in Mazza, I find it no different from what is shown in the circuit diagrams of the provisional specifications of Solo, i.e. the Mazza circuit discloses the base of the Darlington being joined to the collector by resistor Ro, and accordingly if one is to conclude from a perusal of the Mazza circuit that the Darlington therein operates in the non‑saturation range, one is left with no option but to conclude the same for the Solo provisionals, in which case Solo's priority extends to a date which precedes the date of Mazza's availability in Australia and this makes the Mazza disclosure irrelevant.  On the other hand if the connecton of the Mazza Darlington is considered not to disclose its operation being limited to the non‑saturation range, then the same has to be concluded for the first five Solo provisionals, and the Solo priority would go back to the lodgement date of the last Solo provisional, PC6234, i.e. 11 June, 1976, and this would make Mazza relevant, but then the Mazza disclosure could not be considered an anticipation as it has been assumed that it did not disclose the non‑saturation feature which limits the claims of Solo.  Therefore in my opinion whichever way one looks at Mazza it fails to be an anticipation.
Replying to a further point raised in the opposition, I do not consider that there is a distinction between the test for fair basis and the test for anticipation. On the other hand if such a distinction were to exist, notwithstanding the case law on fair basis with respect to priority recited by Mr. Old, I think that the test for anticipation would be a stricter test, and in this I am guided by the dicta of Parker, J. in Flour Oxidising Co. v. Carr & Co. 25 RPC 428 at p.457 where he said:

"When the question is solely one of prior publication it is not in my opinion enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result.  It must also be shown that the specification contains clear and unmistakable direction so to use it."

I do not find this "direction" in Mazza.  I therefore conclude that the opposition with respect to novelty and obviousness has failed.
         In view of the opposition failing on all grounds I award the costs against the opponent.

G.J. BAKER
Assistant Commissioenr of Patents