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1982 SCC OnLine Bom 121 : AIR 1983 Bom 144

BEFORE B.J. RELE, J.

Press Metal Corporation Limited … Petitioner;

Versus
Noshir Sorabji Pochkhanawalla and another … Respondents.
Misc. Petn. No. 567 of 1980
Decided on April 16, 1982
ORDER
1. The opponents have preferred this appeal against the order and decision dated
5th July, 1980 of the Assistant Controller of Patents and Designs, dismissing the
opposition to the grant of patent and directing the Complete Specification to be
amended as indicated in the said order.
2. On 28-3-1971 one Noshir Edulii Pochkhanawalla made an application numbered
130620 for registration of a Patent for an invention relating to “Improvement in or
relating to Mufflers or Exhaust Silencers for Internal Combustion Engines” along with
provisional specifications. On 14-6-71 the applicant filed complete specifications. The
application was accepted by the Controller of Patents and the acceptance was notified
in the Gazette of India dated 19-8-1972. The petitioners filed notice of opposition
under S. 25 of the Patents Act, 1970. On 10-2-1973 the applicant filed his reply to the
Notice of Opposition and on 26-2-1973 the applicant filed his reply — Statement. On
or about 21st June 1973 the said Noshir Edulii Pochkhanawalla died leaving a Will
whereby he appointed the 1st Respondent as Execufor. The 1st respondent obtained
probate of the Will and the 1st Respondent was substituted as applicant. The 1st
Respondent filed his affidavit affirmed on 15th April 1975 adopting the written
statement of the deceased Noshir Edulji Pochkhanawala and evidence in support of the
application for patent.
3. It appears that the petitioners did not file their evidence in time and even before
the extended period which was up to 10th Dec. 1975. The hearing was, therefore,
fixed on the application of the 1st Respondent on April, 26, 1976. On that day the
petitioners filed affidavit of Shri G.K. Parekh, Engineering Manager of the Petitioners,
and relied upon the exhibits annexed to that affidavit in support of the opposition. The
petitioners also applied for extension of time for production, of the evidence. The
controller fixed May 27, 1976 for the hearing of the said application. But curciously
heard the main application of the 1st Respondent on 26th and 27th April, 1976 and
the judgment was reserved. The Controller passed an order on May 27, 1976 rejecting
the grounds of opposition and granting the application. It appears that the Controller
also dismissed the application of the Petitioners for extension of time to file their
evidence. Against the said orders, the Petitioners preferred Petitions Nos. 250 and 251
of 1977 in this Court. Pendse, J. set aside the impugned orders by order dated 21st
Jan. 1980 and remanded the proceedings to the Asstt. Controller of Patents and
Designs to determine the matter afresh after taking the affidavit of Shri G.K. Parekh
affirmed on April 26, 1976 on record as evidence in support of the opposition.
Therefore, the matter was heard afresh and the said impugned order dated 5th July,
1980 was passed.
4. Shri Daruwalla has submitted that the Controller was in error in rejecting the
grounds of opposition. He has taken me through the records of the case and he has
submitted that the invention as claimed by the inventor in the claim of complete
specification has been published before priority date of
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Page: 146

the claim: secondly that the invention was publicly known and publicly used in India
before the priority date of the claim: thirdly that the claim is not an invention at all
and it does not contain any inventive step; fourthly that the alleged invention is
obvious; fifthly that the claim is not a novelty; sixthly that the complete specification
does not sufficiently and clearly describe the invention nor does it sufficiently and
clearly describe the method by which it is to be performed; and seventhly that it is
incorrect to state that the first respondent's invention is a combination.

5. Shri Daruwalla has also submitted that the order of the Controller passed on 5th
July, 1980 amending claim 1 of the complete specification, so as to make it more clear
and specific to clearly bring out the characterising features of the invention and
deleting claims 2 to 7 and renumbering the remaining claims as proposed in the
annexure to the order, is illegal and without any jurisdiction and that, therefore, on
this ground also the order deserves to be set aside.
6. I shall take each of these ground separately, but before I do so, it will be
necessary to refer to the order passed by the learned Controller, before whom the very
same grounds of opposition were canvassed on behalf of the petitioners. It appears to
me that the entire approach of the learned Controller was an erroneous approach. The
learned Controller has proceeded to deal with the opposition by first setting out the
characterising features of the invention and the learned Controller felt that the
invention comprises of two characterising features, viz.
“(a) rigidly securing the two perforated pipe section with their respective closed
ends at short distance apart from 1″ to 3″ or more and the imperforated portions
of each of said pipes being projecting outwardly from said muffler box; and
(b) one of the said pipes carrying smaller size perforations forming an inlet pipe and
the other carrying larger perforations forming the outlet pipe.”
Having set out the said two characterising features, the learned Controller proceeded
to dispose of the ground of objection that the complete specification does not
sufficiently and clearly describe the invention or the method by which it is to be
performed by stating that the characterising features of the indention lies in the said
features stated by him, and observing that:
“this construction produces some distinct advantages which have been supported
by tests and has not been refuted by evidence from the opponents. The relative size
of the perforations has been stated in the description and claims and the applicant
has not kept the public fully in the dark regarding it. Further the size of the
perforations is only one of the characterising features of the invention.”
It was on these bases that the learned Controller overruled this objection.
7. Now, there is nothing on record to show what distinct advantages have been
supported by tests and this observation of the learned Controller, is, therefore,
baseless and without any evidence. So also there is nothing on record to show what is
the relative size of the perforations and this observation, of the learned Controller is
also baseless. It is on these baseless and imaginary grounds that the learned
Controller has rejected this ground of opposition.
8. The learned Controller has then stated that generally the principal claim, i.e.
claim 1 defines the essential novel features of the invention and optional features are
made the subject matter of subordinate claims and this is claimed in combination with
the subject matter of the principal claim. He then proceeds to state:—
“It is clearly evident that claims 2 to 7 do not form within the scope of the principal
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claim, and the principal claim itself does not clearly distinguish the characterising
feature of the invention.” and then has found as a fact that claims 2 to 7 relate to
distinct invention.
8A. Similarly, the learned Controller has overruled the ground of objecting viz. prior
publication in the two books (1) “Motor Manuals, Automobile Engines’ by Arthur W.
Judge, 1969, 7th Ed. and (2) ‘Motor Services Automotive Encyclopaedia’, 1970 Ed. on
the ground that no details are given regarding the size of perforations in the inlet and
outlet pipe in the said book which happens to be one of the characterising features of
the applicant's invention. As stated above, the applicant has not given the size of
perforation in the inlet and outlet pipe and, therefore, this objection has been
overruled on purely untenable, baseless and imaginary grounds.

Page: 147

9. The petitioners then referred to drawings dated 16-5-1957 submitted to them by

premier Automobile Ltd. for manufacturing muffler boxes of silencers in accordance
with the said drawings and they stated in para 13 of the affidavit of their Engineering
Manager Gopaldas Kantilal Parikh, affirmed on 26th April, 1976 that the complete
specification of Shri Noshir Sorabji Pochkhanawala are identical with the drawings
submitted by the said customers of the petitioners. This ground of objection was also
disposed of on the same ground as the other ground of prior publication was disposed
of by the learned Controller. This ground of rejection of the opposition is also baseless
and imaginary.

10. The petitioners also opposed the application on the ground that in para 7 of the
affidavit of the Legal Representative Shri Noshir Sorabji Pochkhanawala, it is stated
that shortly before Mar. 5, 1971, the inventor submitted, in strict confidence, five
different mufflers for testing to Dy. General Manager of the Premier Automobiles Ltd.
as he had no facility to test attenuation between the back pressure and noise level.
This ground of opposition was also rejected by the learned Controller on an altogether
untenable ground. The learned Controller observed that the applicant i.e. inventor has
not set up any secret use or any accidental or fortuitous use. He further observed
albeit on an imaginary ground, that:—
“In transaction of this type there is likely to be some degree of confidence and I
believe the applicant that it was done in confidence.”
This is also on a purely baseless ground.
11. The ground of obviousness was disposed of by the learned Controller on the
ground that has not been proved before him.
12. On the question of ground of objection that the complete specification is not an
invention and that what is claimed by the inventor is not new and that there is no
novelty, the learned Controller found that:—
“the applicant has stated in the specification about the relative size of the holes to
be provided in the inlet and outlet pipes and have also stated that the size of the
perforations will vary according to the size of the engine and volume of exhaust
gases discharged by the muffler, Moreover the size of the perforations is only one of
the characterising features of the invention.”
This finding also is baseless and imaginary. So also the finding that the invention falls
within the scope of the invention defined in Section 2(i)(j) of the Patents Act 1970.
13. I shall now deal with each of the grounds of opposition.
14. Regarding the first ground of prior publication, Shri Daruwalla has contended
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that the invention has been published in Motor Manuals, Automobile Engines by Arthur
W. Judge, 1969 7th Edition at pages 203 to 211 and also in Motor Services Automotive
Encyclopaedia by William K. Toboldt and Larry Johnson, 1970 Ed. at pages 286 and
291. Shri Daruwalla has contended that the publication is found in the letters dated
5th Mar, 1971 and 24th April, 1971 written by Shri C.J. Talnania. Dy. General
Manager. (Engg.) of the Premier Automobiles Ltd. Exs. “A” and “B” to the affidavit of
Shri Noshir S. Pochkhanawala. Legal Representative of the inventor, affirmed on 15th
April, 1975, and also to the fact that the said inventor Noshir R. Pochkhanawala had
given five different mufflers to Premier Automobiles Ltd. for testing and he has
contended that this would constitute prior publication and prior user. He has also
referred to Ex. D to the affidavit of Shri G.K. Parikh, Engineering Manager of the
petitioners affirmed on 26th April, 1976 and he has contended that this also
constitutes prior publication. Ex. D are drawings submitted by Premier Automobiles
Ltd. to the petitioners in or about the year 1964 for fabricating Exhaust Silencer. Shri
Daruwalla has contended that figure 5 of the drawings accompanying complete
specification is identical with the said drawings submitted by Premier Automobiles Ltd.
and that, therefore, it constitutes prior publication.
14A. Shri Shah, the learned Counsel appearing on behalf of respondent No. 1 has
submitted that none of the different silencers shown in the Motor Manuals Automobile
Engines, by Arthur W. Judge can give any idea to any person to manufacture
applicant's muffler. He has submitted that this is a question which has to be decided
on evidence. He has referred to para 9 of the affidavit of Shri G.K. Parikh, Engineering
Manager of the petitioners affirmed on 26-4-1973 and he has submitted that the

Page: 148

only evidence on prior publication is to be found in Judge's Motor Manuals, Automobile

Engines at page 203. His submission is that Shri Parikh has not stated that he can
manufacture muffler of the design given by the applicant which, according to Shri
Shah, it was necessary to have been set out and, therefore, Ex. D to the affidavit of
Shri Parikh cannot be taken as prior publication and as it does not constitute
anticipation. In the same strain. Shri Shah has submitted that the question as to how
far the drawings in the two books viz. Judge's Motor Manuals, Automobile Engine and
Motor Services Automotive Encyclopaedia are relevant, is necessary to be considered.
His submission is that if a picture of a machine is drawn without describing it at all, it
is not meant only for those who follow a similar or same vocation and unless there is
evidence of the mechanic as to how he understood drawings, it cannot be said that
there is prior publication. In this connection, he has referred to the decision in the;
case of Herrburger Schwander Etcie v. Squire, (1889) 6 RPC 194 at page 198, and also
to the decision in the case of C. Van Der Lely N.V. v. Bamfords Limited (1963) RPC 61.

15. In regard to the letters written by Premier Automobiles Ltd. to the inventor,
relied upon by Shri Daruwalla to show publication. Shri Shah has submitted that the
question of confidentiality is a matter between Premier Automobiles and the inventor
and is not a matter of public knowledge. He has, therefore, submitted that this
objection should be overruled.
16. Section 25 of the Patents Act deals with the grounds of opposition. In regard to
the prior publication, S. 25(1)(b) states:—
“Section 25(1)(b) that the invention so far as claimed in any claim of the complete
specification has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent made in
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India on or after the 1st day of January, 1912: or

or
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub-cl. (ii) shall not be available where such
publication does not constitute an anticipation of the invention by virtue of sub-sec.
(2) of Sec. 29;”
Section 29 of the said Act states:—
“Section 29(1). An invention claimed in a complete specification shall not be
deemed to have been anticipated by reason only that the invention was published
in a specification filed in pursuance of an application for a patent made in India and
dated before 1st day of January, 1912,
(2) Subject as hereinafter provided, an invention claimed in a complete
specification shall not be deemed to have been anticipated by reason only that the
invention was published before the priority date of the relevant claim of the
specification, if the patentee or the applicant for the patent proves—
(a) that the matter published was obtained from him, or (where he is not himself
the true and first inventor) from any person from whom he derives title, and
was published without his consent or the consent of any such persons: and
(b) where the patentee or the applicant for the patent or any person from whom
he derives title learned of the publication before the date of the application for
the patent, or, in the case of convention application, before the date of the
application for protection in a convention country, that the application or the
application in the convention country, as the case may be, was made as soon
as reasonably practicable thereafter:—
Provided that this sub-section shall not apply if the invention was before the priority
date of the claim commercially worked in India, otherwise than for the purpose of
reasonable trial, either by the patentee or the applicant for the patent or any person
from whom he derives title or by any other person with the consent of the patentee
or the applicant for the patent or any person from whom he derives title.
(3) Where a complete specification is filed in pursuance of an application for a
patent made by a person being the true and first inventor or deriving title from him,
an invention claimed in that specification shall not be deemed to have been
anticipated by reason only of any other application for a patent in respect of the
same invention made in contravention of the rights of that person, or by reason
only that after the date of filing of that other application the invention was used or
published, without the consent of that person, by the applicant in respect of that
other

Page: 149

application, or by any other person in consequence of any disclosure of any invention

by that applicant.”

17. In order to deprive an invention of patentability on the ground of anticipation

by prior publication, it must be shown that the invention claimed was published in any
document. In the present case, the invention is opposed on the ground of prior
publication. Firstly, that it was published in the two books. Secondly, that the inventor
had given different mufflers to Premier Automobiles for testing and thirdly, that the
drawings marked Ex. D submitted by Premier Automobiles Ltd. to the Petitioners much
prior to the priority date of the complete specification in the present case. The claims
contained in the complete specification filed by Noshir E. Pochkhanawala are as
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follows:—
“1. A muffler or exhaust silencer for internal combustion engines constituting of two
pipe sections of equal or unequal diametres each carrying perforations of equal or
unequal dimensions of any geometrical pattern extending from its middle up to
its closed end, said perforated portions being rigidly secured in a line within the
muffler box with their respective closed ends at short distance varying from 1″ to
3″ or more apart from each other and the unperforated portion of each of said
and the pipe being projecting outwardly from said muffler box and one of the
said pipes carrying smaller size perforations forming an inlet pipe and the other
carrying larger perforations from an outlet pipe.”
2. A muffler or exhaust silencer as claimed in Claim-1 wherein the inlet and the
outlet pipe sections secured within the muffler box are in eccentric relationship
with each other (substantially as shown in Figure 3 of the drawing) with the inlet
and outlet ends projecting out from said muffler box in opposite directions.”
3. A muffler or exhaust silencer as claimed in Claim-1 wherein the inlet and the
outlet pipes sections are secured within the muffler box side by side in parallel
relationship with each other with the inlet pipe and the outlet pipe projecting out
from the muffler box in opposite directions.
4. A muffler or silencer as claimed in Claim-1 wherein the outlet end of the muffler
box is provided with two perforated pipes of same dimensions and the inlet pipe
of the muffler box is provided with one perforated pipe.
5. A muffler or exhaust silencer claimed in Claim-1 wherein the perforated closed
ends of the inlet and outlet pipes are joined together form a straight line or a
straight pipe is provided with a partition in its middle to form two pipe sections
and each pipe section is provided with perforations extending from its closed end
up to its middle or 2/3rd its length and said perforated pipe is rigidly secured
within said muffler box in such a way that the unperforated portions of said pipe
projects out through the closed end of said muffler box and respectively form
inlet and outlet pipes for the muffler box.
6. A muffler or exhaust silencer as claimed in Claim 1 wherein the muffler box is
provided with a partition panel carrying perforations or openings and fitted with a
perforated pipe carrying a dividing partition in its middle is rigidly secured to
said muffler box so that induced expansion gases collected within the muffler
box chamber are rapidly discharged into the atmosphere via said opening formed
in the partition panel and the perforation in the outlet end of said pipe.
7. A muffler or exhaust silencer as claimed in Claim 1 wherein the two short pipes
carrying perforations and rigidly fitted within the muffler box are in parallel
relationship with each other and the inlet and the outlet ends of the said pipes
are projecting out from the same side of the muffler box.
8. A muffler or exhaust silencer as claimed in Claim-1 to 7 wherein the perforations
formed in the outlet pipe are at least 1½ to 3 times larger than the
corresponding perforations formed in the inlet pipe.
9. A muffler or exhaust silencer as claimed in Claim 1 to 8 wherein the perforations
formed in the outlet pipe are progressively larger in size and diameter for
stabilising even flow of diffused gases from the muffler box into the atmosphere.
10. A muffler or exhaust silencer as claimed in Claim 1 to 8 wherein the shape and
size of the muffler box varies and depends upon the availability of space and the
length of the inlet and the outlet pipes varies with the size of the internal
combustion engine and the volume of exhaust gases discharged by the engine
manifold are required to be
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Page: 150

regulated by the muffler or exhausts silencer.

11. A muffler or exhaust silencer as claimed in Claim 1 to 8 wherein the size of the
perforations or holes formed in the inlet and the outlet pipes will varv according
to the size of the engine and the volume of the exhaust gases discharged by the
engine manifold are to be regulated by the muffler or exhaust silencer.
12. A muffler or exhaust silencer as claimed in Claim-1 to 8 wherein the
perforations formed in the inlet and the outlet pipes are of any geometrical shape
and pattern and formed from continuous or non-continuous line or in parallel
lines or a Pair of rings or parallel perforated lines separated by angular
unperforated rings or are helical lines of perforations of any geometrical pattern
separated by unperforated helical lines formed there between.
13. A muffler or exhaust silencer as claimed in Claim 1 wherein the said inlet and
the outlet pipes are respectively provided with angularly punched perforations or
holes of geometrical pattern or shape which are in the direction of the flow of
exhaust gases.
14. A muffler or exhaust silencer as claimed in Claim 1 wherein the said inlet and
the outlet pipes respectively provided with angularly punched perforations or
holes of any geometrical pattern or shape which ate in the direction opposite to
the direction of the flow of the exhaust gases.
15. A muffler or exhaust silencer as claimed in Claim-1 wherein the upper half and
the lower half respectively of said inlet and outlet pipes are non-perforated and
the lower half and the upper half respectively of said inlet and outlet pipes are
provided with straight or angularly punched perforations or holes so that the flow
of gases from said inlet end to the outlet end is substantially in the form of
inverted ‘S’ in shape.
16. A muffler or exhaust silencer as claimed in Claim 1 and 13 to 15 wherein the
punched perforations or holes formed in said inlet pipe are smaller in size than
corresponding punched holes formed in said outlet pipe.
17. A muffler or exhaust silencer as claimed in Claims 1 and 13 to 15 wherein the
punched perforations or holes formed in said outlet pipe are progressively larger
in size and characterised in that the smaller sized punched holes are formed near
the closed end of said outlet pipe.
18. A muffler or exhaust silencer as claimed in Claims 1 to 17 and substantially as
herein described and illustrated.
18. In Arthur W. Judge's Motor Manuals Automobile Engines at P. 203 under the
heading “Exhaust System” it is stated as under:—
“The Exhaust System — The exhaust gases leave the cylinders of a modern
automobile engine, soon after each of the exhaust valves open, at a pressure of
about 55 to 80 lbs. per sq. in., and at a temperature of between 600 C and 800 C,
with a high velocity, namely, about 150 feet per second in the case of a high speed
engine. At each discharge i.e. on every exhaust stroke, a compression, or sound
wave, is sent out, giving the characteristic exhaust note of the engine. It is
necessary in public interests to reduce this noise considerably and for this purpose
the exhaust gases are expanded into a silencing chamber, where the strong sudden
discharges are broken up into a more or less continuous one, emitting little noise.
The best design of silencer enables the exhaust gases to cool down and expand into
the atmosphere continuously and to emerge as a more or less uninterrupted
stream. Usually a number of baffles are fixed in the silencing chamber, but careful
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proportioning of these is necessary in order to avoid back pressure and overheating

of the engine. The internal diameter of the exhaust pipe should not be less than one
quarter to one-third of the cyclinder diameter, whilst the ordinary design of silencer
should have a capacity of about 14 cubic inches for every B.H.P., at the maximum
value. It should not weigh more than about O. 1 lb. per B.H.P. (maximum)
developed by the engine.
A well-designed silencer will not reduce the power of the engine appreciably: the
results of tests show that very good silencing can be obtained with a loss of power
of about 2 to 3 per cent.
An indirect effect of back pressure is to leave more of the hot exhaust gases in the
cylinder when the exhaust value closes. This not only increases the exhaust value
temperature and therefore enhances the tendency to detonation but lowers the
volumetric (or charge) efficiency

Page: 151

by heating the incoming charge that follows.”

19. In order to illustrate, Arthur W. Judge has given diagrams of three types of
exhaust silencers.
20. Arthur W. Judge has also dealt with multiple exhaust pipes a page 204. He
states:—
“Multiple Exhaust Pipes — When a multi-cylinder engine is fitted with a single
exhaust manifold with one exhaust pipe outlet, the effect of successive and rapid
discharges of gases from the various cylinders is to increase the mean pressures in
the manifold and to create a series of pressure pulsations that may lead to power
loss. Further, the exhaust valves temperatures are higher, than when separate
exhaust pipes are used for each cylinder or pairs of cylinders. It is, therefore,
necessary, to modify the exhaust systems as indicated. Thus, a four-cylinder
vertical engine would have four separate exhaust pipes leading into a common pipe
of larger diameter and thence to the silencer.”
21. At page 210, Arthur W. Judge has dealt with the Burges Spencer as follows:—
“The Burges Silencer—This design of absorption silencer represents a scientific
attempt to silence the exhaust by storing some of the gas at high pressure and
returning it at low pressure in a more or less continuous stream. The silencer
consists of a central perforated tube, which is unobstructed throughout its whole
length. It is surrounded by another cylinder of sheet metal, the intervening space
being filled with a special sound absorbing material. The theory of this silencer is
that during the high pressure fluctuations the gases pass through the perforations
where they are stored in the sound absorbing material; in effect the high pressures
are reduced by the damping action of the latter material. The fluctuations of
pressure in the exhaust gases, which are the cause of the exhaust noise are
appreciably reduced in the gases flowing out of the central tube, so that the noise
must also be reduced in intensity.”
22. In Automotive Encylopaedia at page 287 under the heading Exhaust System, it
is stated:—
“Mufflers
In order to reduce the noise of the exhaust of an internal combustion engine,
exhaust gases from the engine are passed through a muffler, Fig 28-3. The muffler
is so designed that the gases are expanded slowly, and are also cooled before they
are discharged into the tail pipe and the atmosphere. In addition, the design must
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be such that there is a minimum of back pressure developed. Back pressure

prevents free flow of the exhaust gases from the engine, and as a result, not all of
the burned gases will be expelled, or exhausted from the cylinders. Such
unexpelled gases dilute the incoming combustible gases, and as a result, the power
of the engine is reduced.
On an automotive vehicle, the engine first exhaust into the exhaust mainfold, Fig.
28-2. The gas then passes through the exhaust pipe into the muffler. From the
muffler it passes into the tail pipe and from there into the atmosphere at the rear of
the vehicle.
A certain amount of expansion and cooling of the exhaust gas is provided for in the
design of the exhaust manifold and exhaust pipe. Usually these are designed to
provide from two to four times the volume of a single cylinder of the engine. The
additional expansion is then provided for in the muffler.
Muffler Design
The design of the muffler varies with different manufacturers. One type is known as
the straight through type, Fig. 28-4. In this design, a straight path is provided for
the gases which extends from the front to the rear of the unit. A centrally located
pipe with perforations is provided. Surrounding this pipe is a sheet metal shell,
approximately three times the diameter of the pipe. In some instances, the space
between the outer shell and inner pipe is open and in other cases it is filled with
steel wool or some other heat-resistant sound deadener and porous material.
Another type of muffler reverses the flow of the exhaust gases. Fig. 28-4 and has
the advantage of conserving space. The double shell and two shell are still other
forms of modern mufflers.
In order to reduce the noise of the exhaust below that attained by a single muffler,
many systems are equipped with two mufflers in each line. Fig. 28-1. Such
construction is particularly necessary on cars with a long wheel based and powered
with a high output engine. The additional unit is usually known as a resonator.

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Back pressure

In Fig. 28-5, the loss in engine power due to back pressure from the exhaust
system is shown. It will be noted that as the speed of the vehicle increases, back
pressure also increases. Note also for a given car speed, the loss in power increases
very rapidly with the increase in back presure. For example: with 2 lbs. back
pressure at 70 mph. the power loss is 4 lbs. and when the back pressure is 4 lbs.
the power loss has increased to 8 hp.
Similarly, fuel consumption is increased as muffler back pressure increases. This is
shown graphically in Fig. 28-6.
Care must be exercised that there are no dents in the exhaust system that would
tend to obstruct the free flow of the exhaust gases, as any obstruction would reduce
power and fuel economy.”
23. It will be seen from the above that what is claimed as an invention by the
inventor Noshir Edulji Pochkhanawala has been already published in the two books.
The description of the exhaust system and of the muffler as stated in Claim 1 is not
materially different from the description of the muffler and of the exhaust system
contained in the said two books. What is claimed as an invention by the inventor in
the present case is no more than an individual design and the statement in the
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exhaust system may be recalled here that:

“Regardless of the individual design, the passage ways forming the manifold are
made as large in size as practical in order to reduce the resistance to the flow of the
burned gases”
Further it is stated that:
“The design must be such that there is a minimum of back pressure
developed……………Such unexpelled gases dilute the incoming combustible gases,
and as a result, the power of the engine is reduced.”
It is also stated with specific reference to muffler design in the Automotive
Encyclopaedia that;
“The design of the muffler varies with different manufacturers and that as the speed
of the vehicle increases, the back pressure also increases.”
The claim made by the inventor is no more than an individual design, a workshop
modification. The objection, therefore, that the invention as claimed in the claim of
complete specification is published before the priority date, must necessarily be
sustained.
24. In regard to the public knowledge and public use in India of the invention
before the priority date of the claim, S. 25(1)(d) provides as under:—
“Section 25(1)(d) — that the invention so far as claimed in any claim of the
complete specification was publicly known or publicly used in India before the
priority date of that claim.
Explanation — For the purposes of this clause, an invention relating to a process for
which a patent is claimed shall be deemed to have been publicly known or publicly
used in India before the priority date of the claim if a product made by that process
had already been imported into India before that date except where such
importation has been for the purpose of reasonable trial or experiment only.”
25. Shri Daruwalla has referred to the giving of five different mufflers to the
premier Automobile for testing and submitted that this would show prior publication
by prior use. Shri C.J. Talsania, Dy. General Manager (Engg.) of the Premier
Automobile has addressed a letter date 5th Mar. 1971 wherein it is stated that they
have received five different mufflers and to the said letter, their drawing for production
of mufflers was enclosed and the inventor Noshir Edulji Pochkhanawalla was requested
to prepare and submit his counter design incorporating the features tested in last
sample.
26. In regard to the giving of five different mufflers, an argument was advanced
before me on the basis of the affidavit of the first respondent herein that these
mufflers were given secretly. It is difficult to accept this submission for the reason that
the legal representative could have no personal knowledge in regard to the giving of
five different mufflers to Premier Automobiles Ltd. for testing secretly. This using of
mufflers by Premier Automobiles Ltd. would also constitute prior user and this ground
of objection also must be sustained.
27. The third ground of objection made is that the claim is obvious and that it does
not contain any inventive step. S. 25(1)(e) provides as under:—
“Section 25(1)(e) that the invention so far as claimed in any claim of the

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complete specification is obvious and clearly does not involve any inventive step,
having regard to the matter published as mentioned in cl. (b) or having regard to what
was used in India before the priority date of the applicant's claim.”
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The first thing that is to be considered in this connection is how obviousness is to be

Judged. A reference to the case of Allamana Svenska Elektriska A/B v. Burntisland
Shipbuilding Co. Ltd. (1951-69 RPC 63 at page 69) may be made wherein it is stated
by the court of appeal:
“The matter of obviousness is to be judged by reference to the ‘state of the art’ in
the light of all that was previously known by persons versed in that art derived from
experience of what was practically employed, as well as from the contents of
previous writings, specifications, text books and other documents………………
The real question is: was it for all practical purposes obvious to any skilled mechanic?
……………
The question must be answered objectively, for it is immaterial that………the invention
claimed was in truth an invention of (the inventor) in the sense of being the result of
independent work and research on his part — without knowledge on his part of many
of the matters which must, on any view, be taken into account by the court.” (See
Sharpe and Dohme Inc. v. Boots Pure Drug Co. Ltd.) (45 RPC 153 a page 173).
28. Shri Shah, however, has argued that the question whether the invention is
obvious is a jury question and being a jury question, it would be for the court to
decide on the evidence before the court whether the invention is obvious. He has
referred to the decision in the case of General Tyre and Rubber Co. v. Firestone Tyre
and Rubber Co. Ltd. 1972 RPC 457. Shri Shah has submitted that there is no evidence
whatsoever to come to a conclusion that the invention is obvious.
29. In E.I. Due Pont De Nemours and Co. (Holland), 1971 RPC 7 it was held:
“(1) That if, in opposition proceedings, after reviewing the whole of the evidence
there was a genuine conflict on the question of obviousness, involving as it did
matters of opinion which could not satisfactorily be resolved without often
lengthy cross-examination, then Tribunal should in the normal case not try to
resolve such conflict.
(2) That it was sometimes different if the question to be resolved was one of pure
fact such as might, for example, arise in cases of prior user. Then, if satisfied
that the evidence had dealt with the matter comprehensively, so that the
Tribunal felt it was in a position to come to a correct answer on the question of
fact, there was no reason why it should not resolve the conflict. In a proper case
it was under the duty of doing so, and should act upon the normal principles of
proof in civil actions.
(3) That, if the Tribunal, when the question before it was one of obviousness, was of
the opinion that there was really no genuine conflict and that, in view of the
disclosures of the prior art and the relevant evidence, the alleged invention was
obvious and clearly lacking in inventive step, then equally the Tribunal must
proceed to decide the case in accordance with the same rules of proof.”
In view of the disclosure of the prior art in the two books referred to above, it must be
held that the alleged invention was obvious and clearly lacking in inventive step.
30. The next point to be considered is whether the invention as claimed is at all
invention. Shri Daruwalla has contended that the alleged claim-1 and the other claims
derived therefrom which merely show different types of perforations and assembly of
pipes which are common in mufflers cannot be an invention within the meaning of the
Patents Act, 1970 nor is it patentable under the said Act.
31. According to Shri Daruwalla no ‘invention’ lies in such mufflers.
32. Shri Shah, on the other hand, has submitted that a patent for a new use of
known contrivance is good. It is in the manner of new manufacture, that lies in the
invention. The inventor in the present case, according to Shri Shah, has produced a
new muffler by a new and ingenious application of a known contrivance to the old
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muffler. It is the novelty and the ingenious application of the known contrivance which
entitles the inventor to a patent. He has relied upon the decision in the case of Gadd
and Mason v. Mayor and

Page: 154

c. of Manchester ((1892) 9 RPC 516, at page 524) wherein it is held:—

“1. A patent for the mere new use of a known contrivance, without any additional
ingenuity in overcoming fresh difficulties is bad, and cannot be supported. If the
new use involves no ingenuity, but is in manner and purpose analogous to the
old use, although not quite the same, there is no invention; no manner of new
manufacture within the meaning of the Statute of James.
2. On the other hand, a patent for a new use of a known contrivance is good and
can be supported if the new use involves practical difficulties which the patentee
has been the first to see and overcome by some ingenuity of his own. An
improved thing produced by a new and ingenious application of a known
contrivance to an bid thing, is a manner of new manufacture within the meaning
of the Statute.”
33. Invention is defined in S. 2(1)(j) of the Patents Act, 1970 as under—
“Section 2(1)(i) “invention” means any new and useful—
(i) art, process, method or manufacture;
(ii) machine, apparatus or other article
(iii) substance produced by manufacture and includes any new and useful
improvement of any of them, and an alleged invention.”
Section 25(1)(f) states:
“that the subject of any claim of the complete specification is not an invention
within the meaning of this Act, or is not patentable under this Act”.
34. Under the Patents Act, an invention to be patentable must be a new and useful
method or manner of manufacture. It involves two separate conditions, viz. is it a
method or manner of manufacture and secondly is it new and useful. In order to
entitle an inventor to a grant of a patent, both these conditions must be present.
Manufacture in its ordinary parlance generally conveys the idea of making tangible
goods by hand or by machine. If the words “new and useful manner of manufacture”
were limited to the production of new articles without reference to the process of
manufacture involving patent and improved method, the inducement which law
intended to give to the inventor would be encompassed within very narrow rules. The
word ‘manufacture’ would, in my opinion, include improvements in manufacture and
changes in the method by which an article is manufactured. The word ‘manufacture’,
in my opinion, would also extend to a new process to be carried on by known
implements. ‘Manufacture’ is a term which is difficult to define. An attempt was made
at defining the term ‘manufacture’ by Abbott C.J. in the following terms:
“Something of a corporeal and substantial nature, something that can be made by
man from the matters subjected to his art and skill, or at the least of some new
mode of employing practically his art, and skill, is requisite to satisfy this
word.” (See Terrell on the Law of patents, para 35, page 12).
35. According to Oxford Dictionary, the word ‘manufacture’ is defined as.
(a) the action or process of making by hand:
(b) the making of articles or materials (now on a large scale) by physical labour and
mechanical power: and
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(c) a branch of productive industries. There is no hard and fast rule to consider
what is the new and useful method or manner of manufacture. ‘New and useful
method or manner of manufacture’ need not necessarily be any product, i.e. it
need not necessarily be a new article; “it may be any physical phenomenon in
which the effect, be it creation or merely alteration may be observed.” (See N.R.
D.C.'s Application, 68 R.P.C. 25 at page 32).
36. In the present case, claim No. 1 ambiguous, as it appears to me, to be no more
than a workshop modification. In explaining the back pressure, the inventor has
stated:—
“In actual practice it has been found that the mufflers or exhaust silencers of the
known types generate a back pressure of 1 lb. to 1.75 lbs. per sq. inch and the
noise level is 72 to 102 DB. Whereas mufflers or exhaust silencers generate a back
pressure from ½ lb. to 1½ lb. per sq. inch and the noise level is from 68 to 102 DB.
The fuel economy offered and obtained by the mufflers according to this invention
when used on a motor vehicle is as much as 20% to 25% over the current fuel
consumption of the same vehicle using the known type of muffler or exhaust
silencer.”
37. There is no evidence whatsoever that the known type of mufflers generated

Page: 155

back pressure of 1 lb. to 1.75 lbs. per sq. inch and the noise level is 72 to 102 DB.
There is also nothing to show the economy in the fuel consumption. The objection,
therefore, that the claim made by the inventor in the complete specification is no
invention at all and as already stated, appears to be no more than a workshop
modification (sic).

38. In considering whether the claim as made by the inventor is an invention, it will
have to be considered whether the subject matter is not obvious. Obviousness is to be
judged by the standard of a man skilled in the art concerned. Sec. 25(1)(e) states as
follows:—
“that the invention so far as claimed in any claim of the complete specification is
obvious and clearly does not involve any inventive step, having regard to the matter
published as mentioned in clause (b) or having regard to what was used in India
before the priority date of applicant's claim.”
In Allmanna Svenska Elecktriska A/B. v. The Burntisland Shipbuilding Co. Ltd., (1951-
69 R.P.C. 63) it was stated by the Court of appeal:
“The matter of obviousness is to be judged by reference to the ‘state of the art’ in
the light of all that was previously known by persons versed in that art derived from
experience of what was practically employed, as well as from the contents of
previous writings, specifications, textbooks and other documents.” (See Terrell on
the Law of Patents page 125 para 307).
39. The test by which obviousness is to be judged is as laid down by Lord Herschell
in Siddell v. Vickers & Sons Ltd. 1890-7 RPC 29-2 at p. 3041.
“So obvious that it would at once occur to anyone acquainted with the subject, and
desirous of accomplishing the end.”
By Lopes LJ in Savage v. Harris & Sons (1896-13 RPC 364 at P. 370), the test laid
down is that:—
“The material question to be considered in a case like this is: whether the alleged
discovery lies so much out of the track of what was known before as not naturally to
suggest itself to a person thinking on the subject; it must not be the obvious or
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natural suggestion of what was previously known.”

If the invention was obvious, there could be no inventive step whatsoever. For the
same reason stated above in considering whether it was an invention, the objection to
the patent must be upheld on the ground that it is obvious.
40. An argument has been advanced before me by Shri Shah that the claim of the
inventor is a combination claim and according to Shri Shah, the combination consists
of three features in claim No. 1. This is stated here only to be dismissed. No such
claim that the invention is a combination claim has been made before the Controller of
Patents.
41. Sec. 25(1)(g) provides a ground of opposition as follows:—
“that the complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed.” It is the duty of a patentee
to state clearly and distinctly the nature and limits of what he claims. If the
language used by the patentee is obscure and ambiguous, no patent can be
granted and it is immaterial whether the obscurity in the language is due to design
or carelessness or want of skill. It is undoubtedly true that the language used in
describing an invention would depend upon the class of persons versed in the art
and who intend to act upon the specifications. In the present case, as already
stated above, the invention is described in an obscure and ambiguous language,
and on this ground also, the patent is liable to be refused.
42. This brings me to the last question viz. the amendment effected by the
Controller in the order passed by him. Shri Shah also submitted before me that he is
not in a position to support the modification effected by the controller in the order
passed by him. The modifications have been effected by the Controller without any
jurisdiction whatsoever. The powers to amend a specification are to be found in
Sections 15, 18, 19, 57, 59 and 78 of the Patents Act, 1970. Sec. 15 empowers the
Controller to require the applicant's specifications or drawings to be amended to his
satisfaction before he proceeds with the application if he is satisfied that the
application or specification does not comply with the requirements of the Act or the
Rules made thereunder. So also if it appears to the Controller that any invention in
respect of which an application for

Page: 156

patent is made might be used in any manner contrary to law, he may refuse the
application unless the specification is amended by insertion of such disclaimer in
respect of that claim of the invention. Section 16(3) empowers the Controller to
require such amendment of the complete specification filed in pursuance of either the
original or a further application as may be necessary to ensure that neither of the said
complete specifications includes a claim for any matter claimed in the other. Under
Sec. 18(1) the Controller is empowered to refuse to accept complete specification if it
appears to the Controller that the claim is anticipated unless the applicant amends his
complete specifications to the satisfaction of the Controller. So also Sec. 19(1)
empowers the Controller to direct the insertion of other patent which is likely to be
infringed, unless the complete specifications is amended to the satisfaction of the
Controller. So also Sec. 57(1) empowers the Controller to allow amendment of a
specification of an application made by the applicant for the patent.

Section 59(1) provides as follows:—

“Section 59(1). No amendment of an application for a patent or a complete
specification shall be made except by way of disclaimer, correction or explanation,
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and no amendment thereof shall be allowed, except for the purpose of correcting an
obvious mistake, and no amendment of a complete specification shall be allowed
the effect of which would be that the specification as amended, would claim or
describe matter not in substance disclosed in the specification before the
amendment, or that any claim of the specification as amended would not fall wholly
within the scope of a claim of the specification before the amendment.”
Section 78(1) empowers the Controller to correct clerical errors etc. None of these
sections empowers the Controller to make an amendment suo motu as has been done
by the Controller in the present case.
43. Counsel were, therefore, right in their submissions that the modifications
effected by the Controller cannot be justified.
44. In conclusion it may be stated that each of the grounds of opposition to the
grant of patent is well founded. The opposition on the ground of prior publication, prior
knowledge, prior user, that it is not an invention at all, that it is obvious, that it does
not contain any inventive step and that the complete specifications suffer from
insufficiency are grounds which must necessarily be sustained. The Controller was,
therefore, in error in overruling the objections find granting the patent with
modifications. I, therefore, pass the following order:—
Appeal allowed. The order of the Controller is set aside and all the grounds of
opposition are sustained. In the circumstances of the case there will be no order as to
costs.
Appeal allowed.
———
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