Toyota Jidosha Kabushiki Kaisha and Nippondenso Co Ltd v Orbital Engine Company (Australia) Pty Limited

[1996] APO 5

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 602819 in the name of TOYOTA JIDOSHA KABUSHIKI KAISHA and NIPPONDENSO CO., LTD.

Title:    A fuel supply device of an engine.

Action:    Opposition by ORBITAL ENGINE COMPANY (AUSTRALIA) PTY LIMITED under section 59 of the Patents Act 1952; hearing.

Decision:    Issued            .

Abstract:    The claims, which were amended after acceptance, included features which were originally disclosed in the specification.  Furthermore these claims were not found to lack clarity of definition.

Claims 1-3 and 7 found to lack novelty.  The applicants were afforded an opportunity to request amendment with a view to claiming novel matter.

In view of shortcomings in some of the evidence, the opponent was not awarded costs for evidence in support.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent application No. 602819 by TOYOTA JIDOSHA KABUSHIKI KAISHA and NIPPONDENSO CO., LTD  and opposition thereto by ORBITAL ENGINE COMPANY (AUSTRALIA) PTY LIMITED under section 59 of the Patents Act 1952.

background

Patent application No. 39192/89 was filed by Toyota Jidosha Kabushiki Kaisha  and  Nippondenso Co., Ltd on 1 August 1989.  Hereinafter I will refer to the coapplicants simply as "Toyota".  The application claims priority from four Japanese patent applications, the earliest being filed on 4 August 1988.  The application was advertised accepted on 25 October 1990 and given serial number 602819.

Orbital Engine Company (Australia) Pty Limited (hereinafter referred to as "OEC") opposed the grant of a patent on the application by notice of opposition filed on 24 January 1991. As the patent application was filed under the Patents Act 1952 and accepted before the commencement of the Patents Act 1990, the opposition provisions of the Patents Act 1952 and its regulations apply.

On 26 March 1992 Toyota filed a request to amend its patent specification.  This request was advertised on 27 August 1992 and in the absence of any opposition thereto the amendments were allowed on 4 March 1993.  OEC filed its evidence in support of the opposition to grant on 26 July 1993.  Toyota did not file any evidence in answer to the opposition.

I heard the parties to the opposition at a hearing in Melbourne on 26 May 1995.  Mr Raymond Hind, patent attorney of Davies Collison Cave, appeared for Toyota while Mr Tom Barnes, patent attorney of Watermark Patent and Trade Mark Attorneys, appeared for OEC.

THE SPECIFICATION

The patent application is in respect of an invention entitled "A fuel supply device of an engine".  In particular the specification is concerned with a fuel supply arrangement involving fuel injection to an engine.

The specification refers to "a known so-called `air blast' valve" to inject fuel by pressurized air which has a nozzle opening controlled by a needle.  A pressurized air passage is formed around the needle and is connected to a pressurized fuel source.  A nozzle chamber is open to the air passage and the nozzle of a fuel injector is arranged at the deep interior of the nozzle chamber.  Injected fuel together with pressurized air is injected from the nozzle opening on actuation of the needle of the air blast valve.  The specification gives a reference to International Publication No. W087/00583, and an arrangement of the type mentioned is disclosed in that publication.

With the arrangement just described the specification says problems occur due to fuel sticking to the nozzle chamber and not being carried by the pressurized air to the nozzle opening.  This apparently arises from the arrangement of the fuel injector at the deep interior of the nozzle chamber and because the pressurized air "does not substantially flow within the nozzle chamber".

The specification states that an "object of the invention is to provide a fuel supply device capable of injecting the entire fuel, injected from the fuel injector, from the nozzle opening of the fuel supply device".  The specification then includes descriptions of several preferred embodiments of fuel injection valving arrangements according to the invention.

As amended by amendments allowed on 4 March 1993 the specification ends with 29 claims.  Claim 1, which is the only independent claim, is as follows:

"A fuel supply device for an engine, comprising:

a nozzle opening for injecting fuel and pressurized air;

valve means for electromagnetically controlling the opening operation of said nozzle opening;

a nozzle chamber having a circumferential inner wall; and

fuel injection means arranged within said nozzle chamber for injecting fuel, said fuel injection means having a tip portion  so arranged in the nozzle chamber that an annular space is formed between the tip portion and the circumferential inner wall, said tip portion comprising an outlet portion of a nozzle of the fuel injection means, said nozzle leading directly into the nozzle chamber;

said nozzle chamber further comprising an air inlet arranged for connection to a pressurized air source, said inlet being formed in the circumferential inner wall and leading into the annular space, and an air outlet separately formed from and spaced from said air inlet and connected to said nozzle opening, said inlet and outlet being so arranged that the tip portion lies in a flowpath of air from the air inlet."

Claims 2, 13, 27 and 28 append directly to claim 1 and claim 29 is a common omnibus claim.

GROUNDS OF OPPOSITION AND THE EVIDENCE

OEC's notice of opposition lists those grounds of opposition listed in paragraphs (c) to (i) of section 59(1) of the Patents Act 1952. However at the hearing the grounds relied upon were those of lack of novelty, obviousness and non compliance with section 40.

The evidence filed by OEC in support of its opposition included declarations by the following:

Michael Leonard McKAY (with Exhibits MLM1 to 6)
     Christopher Neville Francis SAYER
     Thomas Arthur BARNES (with Exhibits TAB1 to 4).

Mr McKay graduated as a mechanical engineer in 1976 and was employed by OEC from April 1977 to August 1986.  While at OEC he worked on direct fuel injection systems and is either "the inventor or coinventor of a number of patented inventions relating to fuel injectors and fuel management systems".  Since August 1986 McKay has been employed by a private consultancy company owned by he and his wife, and this company has a contract with OEC for the design and development of advanced products such as fuel and oil metering in injection systems.

Mr Sayer graduated as a mechanical engineer in 1969.  Between 1969 and 1981 he worked as an engineer at four establishments. In October 1981 he joined OEC and "was initially engaged on design of mechanical components for the Orbital engine and then later fuel injection equipment.  I am currently responsible for the mechanical design of two stroke cycle engines."   In many respects Mr Sayer's comments are similar to, or equate with, those by Mr McKay.

Mr Barnes states that he has personally acted on behalf of OEC and its predecessor in business, Ralph Sarich in relation to Industrial Property matters for over 20 years.  He says that over that period he has prepared and filed more than 700 patent applications worldwide many of which "related to either two fluid fuel injection systems, or to internal combustion engines and combustion management methods employing fuel injection systems."

SUBMISSIONS

Mr Barnes' submissions can be summarised as follows:

1. Declarants McKay and Sayer had knowledge and understanding of the problem of fuel hang-up in injection systems and of the way to avoid it - they are experts in the field.

1. OEC had been aware of the problem of fuel hang-up and ways to avoid it before the priority date of the opposed application.

1. Features introduced into claim 1 by amendment were not originally disclosed in the specification.

1. The device of claim 1 is disclosed in Japanese patent specification no. 61-104154 (exhibit MLM6) - other claims are also disclosed or involve no invention.

In reply to the opposition Mr Hind submitted there was clear disclosure of features included in amended claim 1 when the original description and drawings were considered.  He submitted that Exhibits MLM1 to 5 (comprising patent specifications or company drawings) either did not disclose the device of the amended claims or were not documents which were public knowledge or matters of common general knowledge before the priority date and hence could not be used to establish opposition grounds.

Regarding Exhibit MLM6, Mr Hind submitted that it was not clear that with the arrangement disclosed in the Japanese specification the injection means had the annular gap feature as claimed, but even if it did, it otherwise failed to teach the construction of a device as required by claim 1.

DECISION 

Amended claims
On behalf of the opponent it was contended that features introduced into claim 1 by amendment after acceptance were not originally disclosed in the specification.  I will consider the claim with those issues in mind.  I note that as a result of the amendment, claim 1 includes additional characterisation of the fuel injection means and the nozzle chamber.

a)"said fuel injection means having a tip portion so arranged in the nozzle chamber that an annular space is formed between the tip portion and the circumferential inner wall".

The expression "tip portion" had not been previously used in the specification.  Mr Barnes conceded that a tip portion was an inherent part of a fuel injector, and the diagrams with the specification show what could be described as a tip portion adjacent the outlet passage of the fuel injection means.  I note that the claim defines "said tip portion comprising an outlet portion of a nozzle of the fuel injection means".  Given that the drawings of a patent specification are part of the disclosure, I believe a "tip portion" was originally disclosed. 

However attention was also drawn to the arrangement forming "an annular space".  That expression had not been previously used in the description of the specification, and the specification gives no indication of its intended meaning.  The dictionary meaning of "annular" is given by Webster's Third New International Dictionary as  "1a: of or relating to a ring: forming a ring: shaped like a ring ...  2: banded, marked, or thickened in circles ...".  Given these meanings, by "an annular space" I take to mean a space formed between inner and outer rings or cylindrical surfaces. 

The fuel injectors shown in the drawings of the opposed specification have cylindrical outer surface portions and inner component elements with the injector nozzle fitting into a cylindrical opening.  So much is evident from, for example, the representations in figures 9 and 13.  Indeed, this is not an uncommon arrangement and form of injector components since such general form of injectors have been widely used in common Australian family cars (eg. Holden Commodore VK and Holden Camira JD series vehicles) prior to 1986 and, notwithstanding that there is no expert evidence on this point, I believe would have constituted matters of common general knowledge to those in the art since at least 1986.  Accordingly, given the cylindrical nature of the injector and its mounting bores, I believe the drawings disclose the presence of an annular space in the nozzle chamber of the device.

b)"said inlet (of the nozzle chamber) being formed in the circumferential inner wall and leading into the annular space".

Original claim 13 referred to the nozzle chamber having "an inner circumferential wall" which in my view is equivalent to "circumferential inner wall" as in claim 1.  Although not specifically described as being formed in the circumferential inner wall, the arrangements in the drawings show the air inlet opening into the annular space via the circumferential inner wall and thus I believe the drawings sufficiently disclose the arrangement claimed.

c)"an air outlet separately formed from and spaced from said air inlet and connected to said nozzle opening, said inlet and outlet being so arranged that the tip portion lies in a flowpath of air from the air inlet".

Two matters arose from this definition.  Firstly, the opponent contended that there was no disclosure of the air outlet being "connected to said nozzle opening".  Whilst a direct connection is not described there is described and shown in the drawings a connection via intermediate passages or bores.  I do not believe the definition used implies a direct connection and so I reject the point argued. 

Secondly, regarding the definition concerning the tip portion, it was contended that there was no disclosure of the air flowpath arrangement as defined, and further that the tip portion could not define both the annular space along which the intake air flows and that it lie in the flow path of the air.  It is true that in the original specification there was no description of the tip portion lying in the flowpath of the intake air but such a result is in my view clearly inevitable given the air inlet, tip portion and air outlet configurations shown in most of the drawings.  With regard to the second contention, I note that the claim merely requires the tip portion to define an annular space with the circumferential inner wall and that the inlet leads into the annular space.  Consequently, as the tip portion bounds the space into which inlet air flows it will inevitably be in the flowpath. 

In summary I consider the claims do include features which were originally disclosed in the specification.  Additionally, I do not believe the claims lack clarity of definition, particularly with respect to some of the terms and expressions discussed, as suggested on behalf of the opponent.  I believe an addressee of the specification would have no difficulty in interpreting the terms and specification.

Novelty
The opponent primarily relies on Japanese patent specification no. 61-104154 in its claim that claim 1 lacks novelty.  McKay states:

"... in my opinion, claim 1 as accepted and as amended is directly readable on the injector constructions as illustrated in each of Figures 2 and 5 of Japanese Patent Application Published under No. 61-104154 on 22nd May, 1986, a copy of a translation of which is annexed hereto and marked Exhibit MLM6."

Exhibit MLM6 contains 20 pages of English text and 4 pages of drawings, and at the top of page 1 are entries such as:
     "Japanese Patent Laid-Open No. 61-104154
     Laid-Open Date: May 22, 1986
     Applicant: Aisan Mfg. Co., Ltd."
Page 1 also bears a handwritten entry "Published Aust. 20 June 1986". 

No issue arose at the hearing concerning the nature of Exhibit MLM6. For instance Mr Hind raised no issue concerning whether Japanese patent specification no. 61-104154 was published in Australia before the priority date nor did he question the translation provided. However I note that the opponent has not exhibited in evidence a relevant copy of the Japanese Patent No. 61-104154 (in Japanese) and has not provided any evidence to confirm a publication date of that document in Australia, the latter being an essential prerequisite to a finding of lack of novelty under the Patents Act 1952. Furthermore, there is no evidence verifying that Exhibit MLM6 is in fact a true and accurate translation of Japanese Patent No. 61-104154.

It was evident to me at the hearing that Mr Hind, by his submissions about the contents of Exhibit MLM6, regarded the exhibit as being a true translation of Japanese Patent No. 61-104154 and accepted its relevance to considerations regarding the opposition ground of lack of novelty.  I note that Mr Barnes has exhibited in evidence copies of documents concerning the prosecution of patent applications corresponding to the opposed Australian specification before the European and US Patent Offices, which documents indicate that JP 61-104154 was raised as a citation in examination notifications to the applicants - clearly the applicants have not been unaware of the existence of this Japanese specification and its disclosure prior to the hearing in the present opposition.  Records of the Australian Industrial Property Organisation (AIPO) indicate that a copy of Japanese patent specification no. 61-104154 was available to the public in Australia at AIPO's Library on 20 June 1986.  Furthermore, having sighted the Japanese patent specification held by AIPO, I confirm that the figures forming part of Exhibit MLM6, except for slightly larger scale and an absence of Japanese characters, correspond to the figures published with the Japanese patent specification.  Accordingly I accept Exhibit MLM6 as being a translation of the mentioned published Japanese specification and will proceed to consider its disclosure for novelty purposes.

Declarants McKay and Sayer assert, essentially in identical terms, that in view of the constructions shown in Figures 2 & 5 of the Japanese specification, there is a lack of novelty in the claimed invention.  Mr Barnes discussed the disclosure in some detail at the hearing.  Mr Hind submitted that for the citation to render the claimed invention not novel, there must be a clear, unequivocal and unmistakeable disclosure of all features claimed (per Nicaro Holdings v Martin Engineering 16 IPR 545), and it was his further submission that the citation did not have such a disclosure.

Each of figures 2 & 5 of exhibit MLM6 show an injection means mounted in a cylinder head of an engine.  Whilst the drawings are small in scale I agree with Mr Hind that the overall constructions are reasonably easily understood with assistance from the description.  However the degree to which this is possible is limited somewhat given the quality of the drawings in Exhibit MLM6 - the exhibit appears to be a photocopy of a facsimile transmission and some parts of the drawings are indistinct, eg. details of features on the drawings apparently involving straight lines appear wavy.  Where necessary to do so I have referred to the figures of the published Japanese patent specification of 61-104154 to establish the nature of the representations.

At first glance, each of the figures shows an injection means at least similar in appearance to embodiments of the present invention.  However I need to consider the figures in detail to determine whether the claimed invention is disclosed. 

Considering first Fig 2 of the citation, it is described in these terms at page 13 of exhibit MLM6:

"The cylinder head 50 is provided with a solenoid fuel injector 14 adjacent to the check valve 57.  The fuel injector 14 is communicated through a fuel passage 58 with a check valve chamber 59 and the valve bore 52.  A delivery port...(48) is defined in the fuel passage 58, and a fuel throttle 47 is provided upstream of the delivery port 48 for purpose of throttling the flow rate of fuel injected from the fuel injector.  Defined between the delivery port 48 and the fuel throttle 47 is a mixing chamber 60 which is communicated with an air nozzle 27 provided in the cylinder head 50 in the vicinity of the fuel injector 14." 
(my underlining)

And on page 16:

"In the mixing chamber 60, the fuel and the air are mixed with each other and this mixture is injected into the fuel passage 58 through the delivery port 48."

In Fig 2 I note that the lead line from numeral 60 seems erroneously drawn as it does not go to the region between port 48 and throttle 47 which the description indicates to be a mixing chamber.

Fig 2 clearly discloses the features of "nozzle opening" (valve bore 52) and "valve means" (check valve 57) as claimed.  From the drawing the solenoid fuel injector 14 includes a valve closure which can be lifted from its valve seat to allow the injection of fuel towards the fuel throttle.  The fuel throttle is spaced a small distance from the valve seat thus creating what appears to be a small chamber (of similar size to the mixing chamber) between these two features.

In the citation I cannot identify in Fig 2 the feature of "a nozzle chamber" having the relationship with the injection means as claimed in the opposed application.  Whilst the mixing chamber 60 has opening into it "an air inlet arranged for connection to a pressurized air source", no portion of the fuel injector lies within that chamber.  From the description, "fuel injected from the fuel injector" enters the mixing chamber via fuel throttle 47.  There is no "annular space" evident, nor is the arrangement such that any part of the fuel injector "lies in a flowpath of air from the air inlet".  Consequently I conclude that Fig 2 of the Japanese specification does not provide a disclosure of the claimed invention.

Fig 5 of the cited document is generally similar in disclosure to that of Fig 2.  The manner in which they differ is described in the translation thus:

"The second embodiment differs from the first embodiment in that the mixing chamber 60 in the first embodiment is made shorter in the second embodiment, and that the check valve chamber in the first embodiment is made to have the smaller volume in the second embodiment."

However from the drawing several other differences are apparent.  Firstly, the fuel injector has a valve seat closed by a valve closure, but unlike the arrangement in Fig 2 where the valve seat is spaced only a small distance from the throttle, in Fig 5 this spacing is much greater, the drawings being of similar scale.  From the drawing it appears that the fuel throttle may be formed at the end of a tube which extends from the valve seat towards the delivery port - there is no description on this point.  Secondly, the communication from the air nozzle 27 to the mixing chamber is different.  In Fig 2 a cross passage extends directly from below an air throttle of the air nozzle to the wall of the mixing chamber to open directly into that chamber.  In Fig 5 there is a cross passage which extends from below the air throttle to a point below the valve seat where it opens into a space or chamber adjacent what I have said may be a tube housing the fuel throttle.  The mixing chamber is spaced some distance from the air cross passage below the fuel throttle.  As with the first point mentioned, there is also no description on this point.

The opponent's declarants McKay and Sayer say this about Fig 5:

"... Particularly, with reference to Figure 5 of the drawings, the nozzle chamber and the tip portion of the injector means define an annular space with the tip portion of the nozzle leading directly into the nozzle chamber.  In addition, in the construction shown in Figure 5, there is an air inlet arranged in the wall of the nozzle chamber which leads into the annular space.  The nozzle chamber has an air outlet separated from and spaced from the air inlet, with the air inlet and outlet arranged so that the tip portion of the injector lies in the flow path of the air from the air inlet to the air outlet.  Each and every one of the features defined in claim 1 of the Opposed specification are to be found in the construction illustrated in Figure 5 of the drawings and with one exception, the features are also to be found in figure 2 of the drawings.  The exception in respect of Figure 2, lies in the fact that the nozzle chamber does not define an annular space with the tip portion of the injector. ..."

As was said in General Tire & Rubber Company v. Firestone Tyre & Rubber Company Limited [1972] RPC 457 at page 485 regarding anticipation, an earlier publication must be construed as at the date of its publication by a reader skilled in the art to which it relates. Furthermore, the "construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date."

I believe that both McKay and Sayer can, given their experience, be considered skilled addressees in the art of the present invention.  As such they are qualified to say what a particular document in the art discloses to them including what may be disclosed to them by drawings in a document which have no full accompanying description.  However, I believe the reliance I should place on such evidence will depend on whether there is countering or contrary evidence, and whether a sufficient basis is provided for their conclusions. 

Above I have quoted the relevant part of the evidence from McKay and Sayer regarding their discussion and conclusions regarding the disclosure of Fig 5.  In the present case there is no evidence in answer to that of these declarants.  However the declarants have not provided any analysis or reasons to explain the conclusions which they have reached regarding the disclosure of Fig 5.  For instance, they have not identified what they conclude to be "the tip portion of the injector means", the "nozzle chamber", or why they conclude there exists an "annular space".

In discussing Fig 5 Mr Hind submitted that the fuel throttle 47 was at the end of a tubular pipe which connected the nozzle to the fuel/air mixing chamber.  By his reference to nozzle I took him to mean the outlet from the injector 14, ie. the valve seat opening.  Mr Hind pointed out that the description stated a "solenoid fuel injector provided in said fuel passage upstream of said fuel throttle", which he submitted distinguished the fuel throttle from the injector.  He further submitted that the nozzle of the fuel injector was shielded from the air stream by the tubular pipe containing the throttle.

Claim 1 defines "said tip portion comprising an outlet portion of a nozzle of the fuel injection means, said nozzle leading directly into the nozzle chamber" (my emphasis).  Thus the tip portion is a part of the fuel injection means.  Mr Hind, given his submission, appeared to acknowledge that Fig 5 disclosed a tubular pipe which had the fuel throttle at one end.  Given the conclusions of McKay and Sayer, I can only assume they understood Figure 5 to disclose a "tip portion" being the apparent tubular portion below the valve seat of the injector 14 containing the fuel throttle.  Collectively these elements, ie. injector 14, tube and throttle 47, meet the description of a "fuel injection means" as defined in claim 1.  On the material before me I am led to conclude that Fig 5 does disclose a "tip portion" being an outlet portion of the nozzle of the fuel injection means in the form of the tubular pipe containing fuel throttle 47.

From Fig 5 the precise construction of the device in respect of the manner of communication between the air throttle and mixing chamber is not clearly apparent.  However, noting the conclusions of McKay and Sayer, I conclude that the figure discloses the tube holding the fuel throttle being within a "nozzle chamber" and being spaced from the chamber's wall or walls, and with an air inlet opening into the chamber adjacent the valve seat end of the nozzle chamber.  Whilst there is no description or illustration to establish whether or not the wall of the nozzle chamber in cross section is circular, it nevertheless meets the definition of a "circumferential inner wall", ie. an encircling inner wall.  The air and fuel mix in the mixing chamber between the fuel throttle and the delivery port.  In reaching the mixing chamber, the air flows past the "tip portion" at least in the region of the end housing the fuel throttle.

As to whether there is disclosed an "annular space" between the tip portion and the nozzle chamber wall, I have earlier referred to the use of cylindrically shaped fuel injectors in common Australian cars prior to 1986 and that those injectors and their mounting would have constituted matters of common general knowledge to those in the art since at least 1986.  Accordingly I am satisfied that a skilled addressee would have understood Fig 5 of the Japanese specification at its publication date as representing a fuel injector of cylindrical form having cylindrical components (eg. the nozzle tube holding the fuel throttle) and that the nozzle projected into a cylindrical bore.  Accordingly I conclude that Fig 5 not only discloses a space about the injector nozzle but also an annular space as defined by the opposed claim.

Consequently, I conclude that the invention of claim 1 is not novel in view of the disclosure in Japanese specification 61-104154 as all the features of the device claimed are disclosed.

The specification includes a further 28 claims, wherein claims 2, 13, 27 and 28 append directly to claim 1 and claim 29 is a common omnibus claim.  Declarants McKay and Sayer also discuss claims 2 to 28.  In most instances they conclude that features introduced by these claims either are disclosed in the Japanese specification or other exhibits, or are of no significance, or are matters of choice of the designer.  I give little weight to conclusions or comments by McKay or Sayer based on exhibit MLM2 since there is no evidence that the drawings of that exhibit (drawn for OEC in 1986/1987 and bearing a CONFIDENTIAL warning) were either published in Australia before the priority date or represented matters of common general knowledge at that date.  Furthermore the declarations of McKay and Sayer are devoid of clear statements of matters of common general knowledge at the priority date.  Thus while other exhibits are copies of patent specifications, it has not been established that the specifications were, or included matters of, common general knowledge at the priority date.

At the hearing Mr Barnes discussed some of the claims 2 to 28, in the main reflecting the declarants' comments about them on novelty or obviousness grounds.  Mr Hind did not consider it appropriate for him to provide submissions about the novelty of these claims separately, however he submitted that even if claim 1 lacked novelty many of the dependent claims were novel.  Mr Hind requested that if claim 1 was found to lack novelty, the applicant should be afforded an opportunity to amend its specification in order to claim novel material.

Given the number of dependent claims and the various combinations of features that they define, I believe that I need only make some general observations about the novelty of these claims   pending possible amendment action by the applicants given my findings regarding claim 1.  The present invention is concerned with ensuring that all fuel injected from the fuel injector is delivered to the engine cylinder and with avoiding any accumulation of fuel in the nozzle chamber - this is clear from the early part of the specification.  A claim will lack novelty if a citation discloses all the features essential to the invention defined in the claim.  Thus regarding the dependent claims, I particularly note that the features introduced by claims 2, 3 and 7 are disclosed in the Japanese specification 61-104154 and hence these claims clearly lack novelty.  With regard to other claims, in many instances I see little support in the specification to conclude that the additional features introduced are essential to the invention and the achievement of the results discussed in the specification and mentioned above, and thus these features would not contribute novelty to those claims.  In my view claims 4-6, 13-16, 19-22, 26-28 fall into this category.  Of the remaining claims 8-12, 17-18, 23-25, these characterise features which are described as enhancing either the delivery of all fuel injected from the fuel injector to the engine cylinder or the avoidance of any accumulation of fuel in the nozzle chamber, and as such may materially affect the way the invention works.  As such these claims would not lack novelty over Japanese specification 61-104154 which does not disclose the features claimed.  With regard to omnibus claim 29, I am of the view that insofar as it includes reference to the arrangement in Fig 1 of the drawings, it lacks novelty over Japanese specification 61-104154.

None of the exhibits in evidence other than MLM6 were relied upon individually as rendering the invention claimed not novel, and in my view they do not disclose the claimed invention.  Exhibit MLM2 is perhaps the most pertinent of these other exhibits given the matter shown in its drawings but, as I have already mentioned, there is no evidence to establish these drawings were published in Australia before the priority date.

Obviousness
Obviousness under the Patents Act 1952 must be assessed against the proven common general knowledge. In the evidence before me there are no clear statements of matters of common general knowledge in the art at the priority date. Whilst I have indicated that cylindrically shaped fuel injectors and their mounting would have constituted matters of common general knowledge to those in the art since at least 1986, that knowledge alone is not sufficient to find the claimed invention obvious.

CONCLUSION

I have found that claims 1-3 and 7 lack novelty.  Of the other claims I consider that many introduce features which would not contribute novelty to those claims.  As I consider that the application may contain novel subject matter, I afford the applicant a period of 60 days from the date of this decision to request amendment with a view to claiming novel matter.  If no request is filed within the time allowed I will formally refuse the application.

On the question of costs, the normal practice is that costs follow the event.  As the opponent has been successful in its opposition given my finding on novelty, it is thus entitled to a favourable award of costs.  However, given my earlier comments about the nature of Exhibit MLM6 as placed in evidence and the evidence of McKay and Sayer concerning this exhibit, I do not believe that the opponent is entitled to costs relevant to "Evidence in support".  Accordingly I award costs against the applicants in accordance with Schedule 8 of the Patents Regulations excluding any amount for the item "Evidence in support".

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the applicants :  Davies Collison Cave, Melb

Patent attorneys for the opponent   :  Watermark Patent and Trade Mark Attorneys, Perth