The Secretary of State for Detence in Her Britannic Majesty's Government of the United Kingdom of Great Britain and Northern Ireland v. Rheinmetall Gmbh
[1988] APO 10
•29 March 1988
In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application No. 530072 by THE SECRETARY OF STATE FOR DEFENCE IN HER BRITANNIC MAJESTY'S GOVERNMENT OF THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN IRELAND - and - In the Matter of Opposition thereto under Section 59 by RHEINMETALL GMBH.
DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
Patent application No. 530072, entitled "Improvements in or Relating to Projectile Tail Fin Units", was advertised accepted on 30 June, 1983 and Notice of Opposition was lodged on 29 September, 1983 by RHEINMETALL GmbH.
The matter was heard, and a decision issued 20 October, 1986, upholding the opposition on the grounds that the application failed to comply with section 40, that claim 1 (at least) did not define a manner of new manufacture, and that all claims were obvious. The decision allowed the applicant 60 days in which to propose amendments to remove those grounds.
Subsequently amendments which had been proposed by the applicant under section 77 were allowed and incorporated into the specification; this fact was advertised in the Official Journal of Patents of 30 April, 1987.
At this time, the Office offered the opponent an opportunity to be heard on the amended specification in relation to those grounds of opposition which had been upheld in the decision of 20 October, 1986. The opponent accepted, the applicant was, of course, then invited to be heard, and a hearing was scheduled for 24 November, 1987. By agreement, both parties chose not to attend the hearing but instead each lodged written submissions by the scheduled date. Mr. A.J.F. Ward, patent attorney of Clement Hack & Co., Melbourne prepared the submissions on behalf of the opponent and Mr. R. Walton, patent attorney of Griffith, Hassel & Frazer, Sydney prepared the submissions on behalf of the applicant.
The Specification as Accepted
The invention relates to projectile tail fin units in particular, but not exclusively, to units for kinetic energy projectiles. The specification explains the prior art problems in the following terms:
"Projectiles fired from a gun by means of a propellent charge are subject-to in-bore damage due to high propellent flash temperatures at their propellent adjacent surfaces. This is particularly harmful when lightweight stabilizing tail fins of aluminium alloy are fitted, as any significant damage to the fins will result in degradation of the aerodynamic performance of the projectile. Furthermore, the leading edges of the fins are also subject to substantial aerodynamic heating in flight, resulting in possible further performance degradation. Attempts have been made to protect the outer surface of such fins by anodizing, but this has not proved effective against thermal erosion. Thermally insulating coatings of ceramic type have also been tried but these present adhesion problems and the layer thickness required tends to distort the aerodynamic characteristic of the fins.
Heat absorption coatings such as coatings containing intumescent materials, are also known for their thermally protective properties, but these too have poor adhesion and also undergo dimensional changes in operation which degrade the aerodynamic performance of a finned projectile."
The specification goes on to explain that another example of a heat absorbent coating is an ablative heat shield, i.e. a sacrificial layer of material which is gradually removed by thermally induced processes, such as pyrolysis, melting and vaporisation: heat shields of this kind are known for the protection of space vehicles at re-entry to the earth's atmosphere, being generally formed from plastics. composites having a fairly high fibre content, and often including intumescent materials. The composites are usually applied to the relevant surface either as a bonded pre- formed layer or in fluid form by trowelling or casting. Such protective layers are thick and heterogeneous, ablate unevenly and consequently would have the effect of adversely distorting the aerodynamic profile of a precise structure such as the fins of a projectile, both initially and variably during flight.
There follows in the description a number of statements regarding the features of the invention, and discussion of a preferred embodiment. There is a drawing illustrating a tail fin unit covered by a layer of material. Claim 1 reads as follows:
"A projectile tail fin unit having its exterior surfaces coated with a substantially homogeneous layer of a heat cured resinous material, the layer being capable of thermal ablation at a temperature less than the melting point of the material of the unit and having a thickness sufficient only to absorb all the heat received during firing and flight of the unit."
The Specification as Amended
The chief effect of the amendments was to replace the claims on file and make consequential amendments to the description. Claim 1 now reads as follows:
"A tail fin unit suitable for stabilising a discarding sabot, kinetic energy, armour piercing projectile and manufactured from a metal having a melting point lower than temperatures to which the fin unit will be subjected in firing and flight, wherein the exterior surfaces of the fin unit are coated with a homogeneous layer of resinous material that has been heat-cured in situ on the fin unit subsequent to application of the resinous material in an uncured state, the layer being capable of thermal ablation at a temperature less than the said melting point and having a thickness sufficient only to absorb all the heat received during firing and flight of the unit."
The description was also amended to remove any doubts as to the meaning of "homogeneous" in the context of this particular invention.
Submissions
Mr. Ward has submitted on behalf of the opponent that the claims as amended:
fail to satisfy the provisions of section 40
fail to define a manner of new manufacture
fail to overcome the refusal based on obviousness;
furthermore, the amendments are such as to cause the provisions of sub-section 78(1) to be contravened, i.e. that an amendment is not allowable if as a result thereof the specification would claim matter not in substance disclosed in the specification as lodged.
The arguments in support of the first three points are based on the terms of the initial decision. In other words, Mr. Ward is saying that the amended claims simply do not meet the requirements of that decision.
The question of the requirements of sub-section 78(1) was open to be raised at the time the amendments were advertised pursuant to section 82, and is not - per se - open to be raised at this stage. Nevertheless, as Mr. Ward's argument on this point is linked to the attempt to remove the grounds of opposition, I have considered it in some detail later in the decision.
Mr. Walton, for the applicant, has, in his submissions, reviewed the amendments made in the light of the comments made in my initial decision on this matter. Regarding Mr. Ward's submission about sub-section 78(1), Mr. Walton states that, firstly, this is not sustainable on the facts, and secondly, it is not a matter that can be raised under the provisions of section 59.
Grounds of Opposition under Section 59
In the initial decision, I commented on the feature of claim 1, that the thickness of the resinous layer on the fin unit is "sufficient only to absorb all the heat received during firing and flight", in the following terms:
"The function of a claim is to clearly define the scope of the monopoly so that the public will be clear concerning what they may do, and what they may not do, in order to avoid infringement. In this case the question of infringement would be contingent upon e.g. the nature of the firing, velocity of the missile carrying the fin unit, the time of flight, and presumably the state of the atmosphere through which the unit passes, i.e. the thickness of the coating depends upon the manner of usage of the unit, and not only upon its construction. Further, I note that the fin unit is not characterised to any particular use (an example being as an operative part of a discarding sabot fin stabilised KE armour piercing projectile having a high length to diameter ratio) which might assist in clarifying the scope of item 5 of the claim. Consequently I find that claim 1 does not define the invention."
Also in that decision, I pointed out that:
"On my construction of claim 1, and in the light of the evidence, the invention defined is no more than a known object coated with a known material in a known way for a known purpose".
My conclusions about manner of new manufacture and obviousness followed on from this. However I did conclude that it would be possible to amend the specification to remove the aforesaid grounds of opposition if it were to make clear that the invention comprises a specified KE projectile incorporating a fin unit of the class defined.
I note that this has not been done, and that the applicant has sought to justify this position by submitting that:
"In response to the observations that have been made by the attorney for the Opponent under Section 40, we emphasize the point previously made that claim 1 has now been amended to qualify the claim in a manner such that the tail fin unit is characterised by a particular use which does assist in clarifying the scope of the claim. It is conceded that the term "suitable for" does not restrict the claim to a tail fin unit of a particular kinetic energy projectile, but the claim- makes it unambiguously clear that the tail fin unit is suitable for use on such a projectile. It is submitted that this is the only limitation which is required in order to satisfy the requirement expressed by the Hearing Officer in his Decision,
As amended, the description in the specification is consistent with this use of the expression "suitable for" in the claims, in that it makes clear (see e.g. page 2 paragraph 1) that the invention does not exclusively relate to tail fin units for KE projectiles. At the relevant date, there were many kinds of missiles and projectiles which used fin stabilization, the nature of, and conditions of firing of which are not disclosed in the specification. Indeed, at the initial hearing in this matter, Mr. Walton submitted that the French patent cited by Rheinmetall as an anticipation was not relevant as it related to a fin unit for a mortar bomb or the like, and not to a KE projectile. It seems to me that the concept of the present invention is concerned exclusively with sabot fired KE projectiles, and its development originated in that art. Unless then, in the context of the present action, claim 1 is limited to either defining the KE projectile and tail fin unit as a combination, or defining a fin unit having specific limits of thickness of the resinous coating which would ensure its suitability for the stated purpose, my comments in the initial decision about scope of the monopoly and the question of infringement (repeated above) would still, in my view, be applicable.
In Substance Disclosed
I turn now to consider the question of whether or not the references in the claims to "discarding sabot ... armour piercing projectile" comprise matter which was originally disclosed. Mr. Ward, in his submissions, states:
"The point that the opponent is making is that the mere fact that the specification refers to kinetic energy projectiles does not mean to the skilled addressee that the specification necessarily relates to discarding sabot projectiles. Thus the amendment has the effect of claiming matter not in substance disclosed in the specification and contravenes the provisions of Section 78."
The question to be answered in considering this matter is what would the specification in the form in which it was originally lodged have disclosed to the hypothetical skilled person at the relevant date[1], respecting kinetic energy projectiles.
Mr. Ward's statement above is misleading through being incomplete. That is, while it is true that the (original) specification refers to kinetic energy projectiles without elaboration of type, it is clearly restricted to the class of KE projectiles which are fin stabilized.
From the evidence on file, the situation appears to be that, broadly speaking, there are two classes of KE projectiles, those described as "full bore", and those described as "subcalibre" or "discarding sabot". Both classes consist of purely inertial projectiles which contain no explosive, but achieve their effect at the target purely because of their kinetic energy. Hence their designation as "KE projectiles". (For the sake of completeness I note that the high explosive armour piercing shell widely used in World War II can be included in this designation, since the actual penetration of the armour was achieved by its kinetic energy, and the explosive charge was arranged to detonate after penetration.)
Full bore projectiles are those whose external transverse dimensions are matched to the calibre of the gun barrel from which they are fired. The bore of the barrel is rifled, and consequently, this type of projectile is "spin stabilized".
Subcalibre projectiles have a smaller diameter than that of the bore of the gun barrel from which they are fired. They therefore require a guide matched to the bore diameter; thus really only the projectile itself is subcalibre. Upon firing, the guide falls away from the projectile after emergence from the bore.Generally, fin stabilized projectiles are fired from a smooth bore gun. However, by use of a sabot having slipping drive bands, they may be fired from a gun barrel with a rifled bore. Further, spin stabilized KE projectiles can be sabot mounted and fired from gun barrels having a rifled bore.The evidence leads to the conclusion that all subcalibre KE projectiles are sabot mounted, and those for firing from a gun barrel having a smooth bore are fin stabilized. Therefore, it is my view that the hypothetical skilled person, in seeing reference to a KE projectile using fin stabilization in the original specification, would appreciate that the device being dealt with was a discarding sabot, kinetic energy, armour piercing projectile - precisely the wording now appearing in claim 1. Consequently I agree with the statements of Mr. Walton that the amendment concerned was really by way of clarification and explanation.ConclusionI have found that the amended specification does not comply
with the requirements of the original decision. Consequently I
direct the applicant to propose further amendments to my
satisfaction within a period of 30 days from the date of this
decision. I make no award of costs.
J. L. ROVETA
Supervising Examiner of Patents
29 MAR 1988
when the specification was first published. For the purposes of
the present exercise, the difference is immaterial.
0
0
0