BEFORE THE DEPUTY CONTROLLER OF PATENTS...

1

BEFORE THE DEPUTY CONTROLLER OF PATENTS

Patent office, Chennai

THE PATENTS ACT, 1970

&

THE PATENTS RULES, 2003

In the matter of an application for Patent bearing number

1120/CHE/2007

Titled

―Shock Absorber with helper spring‖

Filed by

M/s TVS MOTOR COMPANY LIMITED---Applicant

In the matter of Section 15

&

In the matter of a representation by way of opposition to grant of patent filed U/S 25(1)

by M/s BAJAJ AUTO LIMITED ----- Opponent 1

&

In the matter of a representation by way of opposition to grant of Patent filed U/S 25(1)

by M/s ENDURANCE TECHNOLOGIES LIMITED--- Opponent 2.

Present during the hearing proceedings on the dates as mentioned against their names

2

(1) Mr. Damodar P Vaidya Of Lakshmi Kumaran & Sridharan, Patent agent for

Applicant. (25/04/2016 &10/05/2016)

(2) Mr. S.Jayaram, Member R&D,of TVS Motor Company Limited.( 25/04/2016

&10/05/2016)

(3) Ms. Brindha Mohan of Mohan Associates, Patent agent for the Opponent 1.(

10/05/2016)

(4) Mr. Milind V. Joshi of M/s Bajaj Auto Limited.( 10/05/2016)

(5) Mr. Rakesh Kumar of RK Dewan & Co, Patent agent for Opponent 2. Conducted

on 25/04/2016 &10/05/2016

(6) Mr.Soumya Prakash Patra,of M/s Endurance technologies limited. (25/04/2016 )

(7) Mr. Deep Prakash Gupt, Examiner of Patents and Designs. (25/04/2016

&10/05/2016)

1. An application for Patent filed by M/s TVS MOTOR COMPANY LTD with a

Provisional specification on 29/05/2007 and thereafter a complete specification was filed

on 21/05/2008. A request of Examination was filed on 27/01/2009 and First Examination

report (FER) was issued on 24/02/2014. A pregrant representation filed by way of

opposition was filed on 23/03/2012 by M/s BAJAJ AUTO LIMITED (Opponent 1) and

same representation along with the documents was forwarded to the applicant on

05/03/2014.Applicant filed their response on 05/06/2014. A pregrant representation filed

by way of opposition was filed on 05/09/2011 by M/s ENDURANCE TECHNOLGIES

LIMITED (Opponent 2) and the same representation along with the documents was

forwarded to the applicant on 05/03/2014 and applicant filed their response on

05/06/2014.

2. Summary of the invention

The present subject matter of the invention relates to a shock absorber for a vehicle and

in particular relates to a shock absorber with helper spring .According to at least one

embodiment of the present subject matter , the shock absorber includes a helper spring

122 that is slidably and concentrically disposed on a piston rod 108.The helper spring

122 is made up of polyurethane that has the property of absorbing and dissipating

energy efficiently, thereby increasing the passenger ride comfort and durability of the

shock absorber.

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3. Back ground of the invention

Conventionally shock absorbers are provided with nonlinear rated springs to achieve

progressive stiffening. Progressive stiffening of a spring enables effective absorption of

road shocks over a wider range, thereby providing the ride comfort to the passengers.

The challenge associated with nonlinear rated springs is that the extent of non-linearity

achieved is limited primarily because of cost and manufacturing constraints. Further,

non-linearity achieved is not very progressive due to mechanical nature of the springs.

Another challenge associated is providing the shock absorber with only non-linear

springs is that absorption and dissipation of energy released during the dampening

process is not very effective and efficient. This primarily happens because of the time

lag of the damper in absorbing the energy and then releasing this absorbed energy to

the surroundings. This results in momentary discomfort to the occupants of the vehicle.

Aiding the shock absorber with a polyurethane helper spring though addresses this

challenge but it substantially increases the manufacturing cost of the shock absorber

.On the other hand , using a rubber helper spring does not reduce the time lag

substantially and hence it is not very effective in addressing the afore said challenge.

4. Objective of the invention:

Present invention proposes a method of increasing the performance and durability of

shock absorbers by ensuring the energy absorbed by the spring of the shock absorber

is efficiently and effectively dissipated to the surroundings and this leads to substantially

improvement in passenger ride comfort and durability of the shock absorber.

5. Solution for the problem

A shock absorber comprises of single rated coil spring , made up of a grade 2 wire ,

supports the weight of the vehicle and absorbs road shocks rapidly .The energy

absorbed by the single rated coil spring is then dissipated in the form of heat by

dampening fluid of the shock absorber. the said shock absorber also comprises of a

helper spring that is slidably and concentrically disposed on the piston rod .The helper

spring is made of polyurethane and has diameter that is substantially less than that of

the single rated coil spring, Polyurethane possesses the property of efficiently absorbing

and dissipating energy, thereby aiding single rated coil spring in energy dissipation.

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6. Claims as originally filed

1. A shock absorber 100 for a vehicle, said shock absorber comprising:

a first fluid chamber 102 having a first end 104 and a second end 106;

a piston rod assembly comprising:

a piston rod 108 having a first end 110 and a second end 112;a piston 114 disposed

concentrically on said first end 110 of said piston rod 108 wherein said first end 110

of said piston rod 108 along with said piston 114 is capable of axially sliding through

said second end 106 of said first fluid chamber 102 towards said first end 104 of said

first fluid chamber 102;

a single rated coil spring 116 that opposes slidable movement of said piston rod

assembly in compression direction; said single rated coil spring 116 having an

upper end 118 and a lower end 120;

a helper spring 122 slidably and concentrically disposed on said second end112 of said

piston rod 108 wherein said helper spring 122 is having diameter substantially lesser

than said single rated coil spring 116;

characterized in that

said single rated coil spring 116 being made from Grade-2 wire and said helper spring

122 being made from polyurethane.

2. A twin tube shock absorber 200 for a vehicle, said shock absorber comprising:

a first fluid chamber 102 having a first end 104 and a second end 106;

a inner chamber 202 having a first end 204 and a second end 206; wherein said first

fluid chamber 102 is having a diameter substantially larger than said inner chamber

202, wherein said inner chamber 202 is disposed coaxially inside said first fluid

chamber 102 such that said first 104 and second 106 ends of said first fluid chamber

102 are disposed in close proximity to said first 204 and second 206 ends of said inner

chamber 202 respectively;


a piston rod 108 having a first end 110 and a second end 112;

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a piston 114 disposed concentrically on said first end 110 of said piston rod 108

wherein said first end 110 of said piston rod 108 along with said piston 114 is capable

of axially sliding through said second end 206 of said inner chamber 202 towards said

first end 204 of said inner chamber 202;

a single rated coil spring 116 that opposes slidable movement of said piston rod

assembly in compression direction; said single rated coil spring 116 having an upper

end 118 and a lower end 120;

a helper spring 122slidably and concentrically disposed on said second end 112 of said

piston rod 108 wherein said helper spring 122 is having diameter substantially lesser;

than said single rated coil spring 116;


said single rated coil spring 116 being made from Grade-2 wire and said helper spring

122 being made from polyurethane.

3. The shock absorber as claimed in claim I or 2, wherein said damping fluid is oil.

4. The shock absorber as claimed in claim I or 2, wherein said damping fluid is gas.

5. The shock absorber as claimed in claim I or 2, wherein said damping fluid is a

mixture of oil and gas.:

6. The shock absorber as claimed in claim I or 2, wherein said upper end 118 and lower

end 120 of said single rated coil spring 116 is having closed pitch coils.

7. Applicant has replied to the first examination report (FER) with amended claims on

18/02/2015

I. A shock absorber (100) for a vehicle, said shock absorber (I 00) comprising:

a first fluid chamber (102) having a first end (104) and a second end (106);a piston rod

assembly comprising:

a piston rod (I 08) having a first end (II 0) and a second end (112);

a piston (114) disposed concentrically on said first end (II 0) of said piston rod (I08)

wherein said first end (110) of said piston rod (I08) along with said piston (114) is

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capable of axially sliding through said second end (106) of said first fluid chamber (102)

towards said first end (104) of said first fluid chamber (I02);

a single rated coil spring (116) that opposes slidable movement of said piston rod

assembly in compression direction, wherein said single rated coil spring (116) having an

upper end (118) and a lower end (120);

a helper spring (122) slidably and concentrically disposed on said second end (112) of

said piston rod (I 08), wherein said helper spring (122) is having diameter substantially

lesser than said single rated coil spring (116);


said single rated coil spring (116) being made from Grade-2 wire and said helper spring

(122) being made from polyurethane.

2. A twin tube shock absorber (200) for a vehicle, said shock absorber comprising: a

first fluid chamber (102) having a first end (104) and a second end (106);

a inner chamber (202) having a first end (204) and a second end (206); wherein said

first fluid chamber (102) is having a diameter substantially larger than said inner fluid

chamber (I02) such that said first (104) and second (106) ends of said first fluid

chamber (I02) are disposed in close proximity to said first (204) and second (206) ends

of said inner chamber (202) respectively;


a piston rod (108) having a first end (II 0) and a second end (112);

a piston (114) disposed concentrically on said first end (110) of said piston rod(108)

wherein said first end (110) of said piston rod (108) along with said piston (114) is

capable of axially sliding through said second end (206) of said inner chamber (202)

towards said first end (204) of said inner chamber (202),


assembly in compression direction; said single rated coil spring (116) having an upper

end (118) and a lower end (120);


said piston rod (108) wherein said helper spring (122) is having diameter substantially


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5. The shock absorber as claimed in claim 1 or 2, wherein said damping fluid is a

mixture of oil and gas.

6. The shock absorber as claimed in claim I or 2, wherein said upper end (118) and

lower end (120) of said single rated coil spring (116) is having closed pitch coils.

8.This office has given due consideration to the reply given by the applicant and being

this office was not satisfied with the reply a hearing notice was issued to the applicant

on 02/02/2016 with the following objections and hearing was fixed on 02/03/2016 and

due to adjournments, hearing conducted on 25/04/2016

1. Claim(s) fall(s) within the scope of such clause (f) of section 3.

2. The alleged invention does not meet the requirement of section 2(1) (ja) of The

Patent Act, because the claimed subject matter does not constitute an Inventive step in

view of documents

D1: US3263983

D2: US5462140

D3: US5996978

DI teaches, a combined shock-absorber spring unit for a motor vehicle suspension (see

Division B7) comprises a double-acting telescopic shock-absorber 26 with a corrugated

rubber spring 72 surrounding the piston-rod 34 and surrounded by a coil-spring 56, the

arrangement being such that as the unit is compressed the coil spring and rubber spring

come into operation successively after an initial movement as rubber spring retainer 62

contacts stop 70 and then rubber spring 72 contacts retainer 62. The retainer 62 has

radial projections 68 which hold it on the coil spring. The spring 58 is held against the

lower spring seat by clips 58 retained by snap ring 60. The snap-ring 60 also holds the

two half-annular lower spring seat portions 50 in engagement with ridge 54 of the

reservoir tube 38.

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D2 teaches, twin tube shock absorber has concentric inner and outer tubes connected

to the wheel of a vehicle. A piston in the inner tube is connected to the chassis of the

vehicle and divides the interior of the inner tube into upper and lower chambers. Fluid

passes between these chambers and an annular reservoir between the tubes for

absorbing shock in a conventional manner. An orifice is provided through the sidewall of

the lower portion of the inner tube and is surrounded by a lower sleeve, which normally

keeps the orifice closed. Upon upward acceleration of the tubes, the sleeve essentially

remains fixed in space. The relative movement between the sleeve and tubes aligns a

passage through the sleeve with the orifice and permits fluid to flow from the lower

chamber below the piston to the annular reservoir. This provides a softer shock

absorber when high upward acceleration is felt by the tubes of the shock absorber and

a stiffer shock absorber during times when there is no large upward acceleration. A

similar orifice and sleeve are provided at the upper end of the inner tube for permitting

fluid to flow from the upper chamber into the reservoir during rapid downward

acceleration of the tubes. The orifices are spaced apart from the ends of the inner tube

so that when the piston passes an orifice, the characteristics of the shock may change

from soft to stiff before the end of the stroke of the piston.

D3 comprises, A fluid pressure from an outside pressure source is supplied to the

pressurizing chamber to push down a damper piston via the free piston to thereby

forcibly contract the damper. In a second type, there is provided inside an inner tube a

cylinder which is slidably fit onto an outer surface of a rod, and a piston mounted on the

rod is inserted into the cylinder. A fluid pressure from the pressure source is supplied to

the pressurizing chamber inside the cylinder to push down the rod via the piston to

thereby forcibly contract the damper. In a third type, a rod is slidably inserted into a

partition wall in an intermediate portion of a damper main body of a mono-tube type of

damper. A free piston which is prevented by a stopper member from dropping out of

position downwards is slidably mounted onto an outer surface of a rod portion below the

partition wall. A fluid pressure from a pressure source is supplied to a pressurizing

chamber to be defined between the partition wall and the free piston. The rod is pushed

down via the free piston and the stopper member to thereby forcibly contract the

damper.

Hence a person skilled in the art will be motivated to combine the teachings of the cited

documents and come to a conclusion similar to present alleged invention.

The dependent claim [s] also do not provided any new feature with respect to the prior

art. Hence the present claim[s] are not allowable u/s 2(1)(ja) of the Patents Act.

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3. Reference numerals shall be inserted inside the brackets in the claims.

4. FER of the application sent on 24/02/2014, the reply from the applicant received on

18/02/2015, applicant has produced amended claims along with the reply, but the

amended claims doesn‘t show any improvements or seems like earlier filed claims as

such. The inventive step in using single rated spring with spring aids or helper springs is

well known and doesn‘t show any improvements, also clearly falls under 3(f) of Indian

Patent act. With regard to objection 2 of FER, the applicant merely trying to combine

well known features like hydraulic dampers with helper springs made of PU (progressive

pressure/compression behavior) is well known in the prior art.Moreover no detailed

drawings are provided for structural constructional features of the claimed invention.

9. The learned agent appeared for the hearing u/s 14 hearing submitted their written

response on 26/05/2016.

The Learned agent for the applicant submitted that the invention as claimed discloses

the shock absorber to provide a comfortable ride to a passenger of a vehicle without

impacting the cost. The purpose is achieved by providing a combination of the

polyurethane helper spring and the single rated spring made of grade 2 steel wire,

working in close cooperation with each other to reduce the time lag between a release

of energy and dissipation of heat and further this provides a smooth ride over a larger

stroke /travel of the spring.

With regard to the objection Section 3(f), the learned agent for the applicant argued that

submitted that claims 1 to 6 is mere arrangement of known devices and the learned

agent submitted that while some individual components may be well known in the art

and may have been used for the purpose, the combination of such components acting

in tandem to provide comfort to a passenger of a two wheeler is not known in the art. In

fact such combination produces a significant technical advantage over the previously

known art.

A single rated coil spring of grade-2 wire and a polyurethane helper spring, working in

tandem with each other, provide an effective absorption and dissipation of energy

without any time lag. The polyurethane helper spring is activated by one end of a fluid

chamber after first part of travel of the single rated coil spring. Thereafter, the

polyurethane helper spring and the single rated coil spring work in tandem during the

latter part of the stroke to provide comfort to the rider by effectively dissipate the energy

without any time lag. Figure 4 of the specification clearly shows the enhanced

dissipation of energy by the single rated coil spring of grade-2 wire when used in

combination with the helper spring made of polyurethane. Therefore, the invention is not

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mere arrangement or rearrangement of known devices, but involves working of the

helper spring and the single rated coil spring in tandem with each other. Therefore, the

Applicant respectfully requested the Controller to withdraw the objection. Without

prejudice, the Applicant has amended the claim by way of explanation and by way of

disclaimer to highlight working of all the components in tandem with each other to

achieve the stated objective of the invention. The Applicant submits that the claims after

amendment are narrow and are fully supported in the specification, i.e., in the

drawings and description. The Applicant is amending the description by way of

explanation and the amendments are based on the drawings and as discussed with the

Controller. The Applicant is attaching the support chart.

With regard to the objection related to the inventive with in accordance with section

2(1)(ja) of the Patents Act in view of the documents D1: US3263983, D2: US5462140,

and D3: US5996978.

In response to this objection, the learned agent for the applicant had respectfully

explained that the cited references D1-D3 either alone or in combination, are not

relevant and also do not disclose or do not teach the invention. Therefore, these

documents cannot be considered relevant and disclosing or teaching the inventive

step of the present subject matter.

Concerning the inventive step of independent claim 1, the Applicant had submitted that

the following features as claimed in the invention are not disclosed in any cited

documents D1-D3:

a single rated coil spring (116) that opposes slidable movement of the piston rod

assembly in compression direction; the single rated coil spring (116) having an upper

end (118) and a lower end (120); wherein the single rated coil spring (116) is disposed

concentrically, and wherein the lower end (120) of the single rated coil spring (116) is

attached to the second end of the piston rod assembly and the upper end (118) of the

single rated coil spring is attached to the first end (104) of the first fluid chamber (102);

and

a helper spring (122) slidably and concentrically disposed on the second end (112) of

the piston rod (108) wherein the helper spring (122) is having diameter substantially

lesser than the single rated coil spring (116); wherein

the single rated coil spring (116) being made from Grade-2 wire and the helper spring

(122) being made from polyurethane, and wherein

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the single rated coil spring (116) is compressed during the first part of the sliding of the

piston rod (108), and wherein

the second end (106) of the first fluid chamber (102) activates the helper spring (122) at

end of the first part of the sliding of the piston rod (108) so that the helper spring (122)

and the single rated coil spring (116) are compressed in tandem during the second part

of the sliding of the piston rod (108).‖

The learned agent for the applicant submitted that none of cited references D1-D3,

taken either alone or in combination, would enable a skilled person to arrive at the

invention. Furthermore, the invention also has a distinct advantage when considered in

light of cited references D1-D3. For example, the invention provides comfortable ride to

a passenger of a two wheeled vehicle, because the tandem working of the single rated

coil spring made of grade-2 wire and the helper spring made of polyurethane, enhances

the dampening property by dissipating the shock load without any time lag. Further this

advantage is achieved without impacting the cost, because the extra cost of the helper

spring made of polyurethane is compensated by lower cost of single rated spring made

of Grade-2 steel. The Applicant explained that a person skilled in the art would not

use Grade-2 steel wire for single rated coil spring, which is subjected to dynamic

load. For all these reasons, the Applicant, therefore, submitted that the subject matter

claimed in independent claim 1 involves an inventive step over cited references D1-D3.

Reference numerals have been incorporated in the claims.

10. A notice of P re grant Opposition hearing was issued to the applicants and

Opponents on 03/02/2016 and hearing was fixed on 03/03/2014.However based on the

requests of adjournments, hearing is refixed to 25/04/2016 and hearing for the applicant

and opponent 2 has conducted on the same day. Hearing for the applicant and

opponent 1 has conducted on 10/05/2016.

11. Learned agent for the applicant provided written submission to Section 14 hearing

along with the amended claims, description and drawings.

Amended claims filed on 26/05/2016 is reproduced here with and major portions which

are amended (added) underlined for clarity

1. A shock absorber (100) for a two-wheeled vehicle, the shock absorber (100)

comprising:

a first fluid chamber (102) having a first end (104) and a second end(106);

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a piston rod assembly having a first end (124) and a second end(126), the piston rod


a piston rod (108) having a first end (110) and a second end(112), wherein the second

end (112) is attached to the second end (126) of the piston rod assembly; and

a piston (114) disposed at the first end (124) of the piston rod assembly, wherein the

piston (114) is concentrically mounted on the first end (110) of the piston rod (108), and

wherein the first end (110) of the piston rod (108) along with the piston (114) is capable

of axially sliding through the second end (106) of the first fluid chamber (102)

towards the first end (104) of the first fluid chamber (102), and wherein the sliding of the

piston rod (108) comprises a first part of the sliding and a second part of the sliding;


assembly in compression direction, the single rated coil spring (116) having an upper

end (118) and a lower end (120), wherein the single rated coil spring (116) is disposed


attached to the second end (126) of the piston rod assembly and the upper end (118) of

the single rated coil spring is attached to the first end (104) of the first fluid chamber

(102); and

a helper spring (122) slidably and concentrically disposed on the second end (112) of

the piston rod (108), wherein the helper spring (122) is having diameter lesser than the

single rated coil spring (116); wherein

the single rated coil spring (116) being made from Grade-2 wire and the helper spring

(122) being made from polyurethane, and wherein the single rated coil spring (116) is

compressed during the first part of the sliding of the piston rod (108), and wherein the

second end (106) of the first fluid chamber (102) activates the helper spring (122) at end

of the first part of the sliding of the piston rod (108) so that the helper spring (122) and

the single rated coil spring (116) are compressed in tandem during the second part of

the sliding of the piston rod (108).

2. A twin tube shock absorber (200) for a two-wheeled vehicle, the shock absorber

(200) comprising:

a first fluid chamber (102) having a first end (104) and a second end (106);

a inner chamber (202) having a first end (204) and a second end (206); wherein the

first fluid chamber (102) is having a diameter larger than the inner chamber (202),

wherein the inner chamber (202) is disposed coaxially inside the first fluid chamber

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(102) such that the first (104) and second (106) ends of the first fluid chamber (102) are

disposed in close proximity to the first (204) and second (206) ends of the inner

chamber (202) respectively;

a piston rod assembly having a first end (124) and a second end (126), the piston rod


a piston rod (108) having a first end (110) and a second end(112), wherein the second

end (112) is attached to the second end (126) of the piston rod assembly and;

a piston (114) disposed at the first end (124) of the piston rod assembly, wherein the

piston (114) is concentrically mounted on the first end (110) of the piston rod (108), and

wherein the first end (110) of the piston rod (108) along with the piston (114) is capable

of axially sliding through the second end (206) of the inner chamber (202) towards the

first end (204) of the inner chamber (202), and wherein the sliding of the piston rod

(108) comprises a first part of the sliding and a second part of the sliding;


assembly in compression direction; the single rated coil spring (116) having an upper

end (118) and a lower end (120), wherein the single rated coil spring (116) is disposed


attached to the second end (126) of the piston rod assembly and the upper end (118) of

the single rated coil spring is attached to the first end (104) of the first fluid chamber

(102); and a helper spring (122) slidably and concentrically disposed on the second end

(112) of the piston rod (108) wherein the helper spring (122) is having diameter lesser

than the single rated coil spring (116); wherein the single rated coil spring (116) being

made from Grade-2 wire and the helper spring (122) being made from polyurethane,

and wherein the single rated coil spring (116) is compressed during the first part of the

sliding of the piston rod (108), and wherein the second end (106) of the first fluid

chamber (102) activates the helper spring (122) at end of the first part of the sliding of

the piston rod(108) so that the helper spring (122) and the single rated coil spring

(116)are compressed in tandem during the second part of the sliding of the piston rod

(108).

3. The shock absorber as claimed in claim 1 or 2, wherein the damping fluid is oil.

4. The shock absorber as claimed in claim 1 or 2, wherein the damping fluid is gas.

5. The shock absorber as claimed in claim 1 or 2, wherein the damping fluid is a mixture

of oil and gas.

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6.The shock absorber as claimed in claim 1 or 2, wherein the upper end (118) and

lower end (120) of the single rated coil spring (116) is having closed.

In Para 0016 antitheft device has been deleted in the description

In para (0031) ] As it is apparent from FIG. 2 and FIG. 3, the piston rod assembly has a

first end 124 and a second end 126. The piston 114 is disposed at the first end 124 of

the piston rod assembly. The piston rod 108 along with the piston 114 axially slides

through the second end 106 of the first fluid chamber 102 towards the first end 104 of

the first fluid chamber 102. During a first part of the sliding of the piston rod 108, the

single rated coil spring 116 is compressed until the second end 106 of the fluid chamber

102 touches the helper spring 122. At the end of the first part of the sliding of the piston

rod 108, the helper spring 122 is activated by the first fluid chamber 102, as the second

end 106 of the first fluid chamber 102 comes in contact with the helper spring 122.

Further, during a second part of the sliding of the piston rod 108, the helper spring 122

and the single rated coil spring 116 are compressed in tandem.(has been added as

amendment in the description).

[0033] It is apparent from FIG. 4 that the curve 400 representing the energy

dissipated in the conventional non-linear coil spring used in combination with a Bump-

Stop is linear in nature while the curve 402 representing the energy dissipated by the

single rated coil spring 116 used in combination with the helper spring 122 is logarithmic

in nature. This shows that the tandem working of the single rated coil spring 116 and the

helper spring 122 provides the effective dissipation of heat (has been added in the

description).

Learned agent for the applicant provided statement under rule 14(2) of the Patent

amendment rules, 2016 for reason for amendment

1. Amendment: Page 5, Para [0016], Line 1 of the specification The term ―anti-theft

device‖ has been deleted. Instead, the word ―shock-absorber‖ has been added.

Reason for the amendment: The amendment is by way of correction of typographical

error.

2. Amendment: Page 8, Para [0031], Lines 17-27 of the specification The following

paragraph has been added by way of explanation of the FIG. 2 and FIG. 3. It is

submitted that no new matter is added.

―[0031] As it is apparent from FIG. 2 and FIG. 3, the piston rod assembly has a

first end 124 and a second end 126. The piston 114 is disposed at the first end 124 of

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the piston rod assembly. The piston rod 108along with the piston 114 axially slides

through the second end 106 of the first fluid chamber 102 towards the first end 104 of

the first fluid chamber 102. During a first part of the sliding of the piston rod 108, the

single rated coil spring 116 is compressed until the second end 106 of the fluid chamber

102 touches the helper spring 122. At the end of the first part of the sliding of the piston

rod 108, the helper spring 122 is activated by the first fluid chamber 102, as the second

end 106 of the first fluid chamber 102 comes in contact with the helper spring 122.

Further, during a second part of the sliding of the piston rod 108, the helper spring 122

and the single rated coil spring 116 are compressed in tandem.‖

Reason for the amendment: Amendment is by way of explanation of the FIG. 2 and FIG.

3 to bring out more clarity.

3. Amendment: Page 9, Para [0033], Lines 6-11 of the specification The

following paragraph has been added by way of explanation of the FIG. 4. It is

submitted that no new matter is added.

―[0033] It is apparent from FIG. 4 that the curve 400 representing the energy

dissipated in the conventional non-linear coil spring used in combination with a Bump-

Stop is linear in nature while the curve 402 representing the energy dissipated by the

single rated coil spring 116 used in combination with the helper spring 122 is logarithmic

in nature. This shows that the tandem working of the single rated coil spring 116 and the

helper spring 122 provides the effective dissipation of heat.‖

Reason for the amendment: Amendment is by way of explanation of the FIG. 4 to bring

out more clarity.

4. Amendment: Page 9, Para [0035], Line 18 of the specification The word ―spirit‖

has been deleted.

Reason for the amendment: The use of improper term is avoided.

5. Amendment: Sheet 2 of the drawing

Numeral 124 (first end of the piston rod assembly) and numeral 126 (second end of the

piston rod assembly) have been added.

Reason for the amendment: The amendment brings out more clarity to the drawing

and subsequent description. The amendment also fulfils the requirement under rule

14(2) of the Patents (Amendment) Rules, 2016.

6. Amendment: Sheet 3 of the drawing

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Numeral 124 (first end of the piston rod assembly) and numeral 126 (second end of the

piston rod assembly) have been added.

Reason for the amendment: The amendment brings out more clarity to the drawing and

subsequent description. The amendment also fulfils the requirement under rule 14(2) of

the Patents (Amendment) Rules, 2016.

Claim Chart showing the support from the description

Amended Claim 1 Relevant portion of the description

A shock absorber (100) for a two-wheeled vehicle, the shock absorber (100) comprising:

Para [0001] - The subject matter described herein, in general, relates to a shock absorber

for a vehicle and in particular, relates to a

shock absorber with a helper spring.

a first fluid chamber (102) having a first end (104) and a second end (106);

Para [0019] - The mono-tube shock absorber 100 includes a first fluid chamber 102, having

a first end 104 and a second end 106 that

stores a damping fluid.

a piston rod assembly having a first end (124) and a second end (126), the piston rod


Para [0031] - As it is apparent from FIG. 2 and FIG. 3, the piston rod assembly has a first

end 124 and a second end 126.

a piston rod (108) having a first end (110) and a second end (112), wherein the second end

(112) is attached to the second end (126) of

the piston rod assembly; and

Para [0019] - The mono-tube shock absorber also includes a piston rod 108 having a first

end 110 and a second end 112, a piston 114

and valving components.

a piston (114) disposed at the first end of the piston rod assembly, wherein the piston (114)

is concentrically mounted on the first end

(110) of the piston rod (108), and wherein the

first end (110) of the piston rod (108) along

with the piston (114) is capable of axially

sliding through the second end (106) of the

first fluid chamber (102) towards the first end

(104) of the first fluid chamber (102), and

wherein the sliding of the piston rod (108)

comprises a first part of the sliding and a

second part of the sliding;

Para [0019] - The mono-tube shock absorber also includes a piston rod 108 having a first

end 110 and a second end 112, a piston 114

and valving components. The piston 114

along with the valving components is

disposed concentrically on the first end 110 of

piston rod 108. The piston rod 108, the piston

114 and the valving components form a

piston rod assembly that axially slides

through the second end 106 of the first fluid

chamber 102 towards the first end 104 of the

first fluid chamber 102.

17

a single rated coil spring (116) that opposes slidable movement of the piston rod assembly

in compression direction; the single rated coil

spring (116) having an upper end (118) and a

lower end (120), wherein the single rated coil

spring (116) is disposed concentrically, and

wherein the lower end (120) of the single

rated coil spring (116) is attached to the

second end (126) of the piston rod assembly

and the upper end (118) of the single rated

coil spring is attached to the first end (104) of

the first fluid chamber (102); and

Para [0020] - The single rated coil spring 116 opposes slidable movement of the piston rod

assembly in the compression direction and

also supports the weight of the vehicle. The

energy absorbed by the single rated coil

spring 116 is then dissipated in the form of

heat by the damping fluid of the shock

absorber 100. The single rated coil spring 116

has an upper end 118 and a lower end 120.

a helper spring (122) slidably and concentrically disposed on the second end

(112) of the piston rod (108), wherein the

Para [0021] - A helper spring 122 is slidably and concentrically disposed on the second end

112 of the piston rod 108. The helper spring

helper spring (122) is having diameter lesser than the single rated coil spring (116),

wherein

122 has a diameter substantially lesser than that of the single rated coil spring 116.

the single rated coil spring (116) being made from Grade-2 wire and the helper spring (122)

being made from polyurethane, and wherein

Para [0020] - Further, the single rated coil spring 116 is made up of a Grade-2 steel wire,

which is substantially cheaper than the

commonly used Grade-3 steel wires.

Para [0021] - The helper spring 122 is made

up of polyurethane material that has the

property of efficiently absorbing and

dissipating energy.

the single rated coil spring (116) is compressed during the first part of the sliding

of the piston rod (108), and wherein

Para [0031] - During a first part of the sliding of the piston rod 108, the single rated coil

spring 116 is compressed until the second end

106 of the fluid chamber 102 touches the

helper spring 122.

the second end (106) of the first fluid chamber (102) activates the helper spring

(122) at end of the first part of the sliding of

the piston rod (108) so that the helper spring

(122) and the single rated coil spring (116)

are compressed in tandem during the second

part of the sliding of the piston rod (108).

Para [0031] - At the end of the first part of the sliding of the piston rod 108, the helper spring

122 is activated by the first fluid chamber 102, as the second end 106 of the first fluid

chamber 102 comes in contact with the helper

spring 122. Further, during a second part of

the sliding of the piston rod 108, the helper

spring 122 and the single rated coil spring 116

are compressed in tandem.

18

12. I have to decide on two issues for further proceedings of this case

(a) Whether amendments carried out by the applicant in the description, claims and

drawings and submitted after all hearing proceedings falls within the scope of

Section 59(1) of the Patents Act?

(b) Whether Opponents were allowed to submit their arguments or a hearing

opportunity should be given to them regarding the amendments carried out in the

description, claims and drawings and submitted after hearing proceedings?

13.Analysis of the amendments carried out during the opposition proceedings.

Claim1 as on 18/02/2015 Amended claim1 filed on 25/05/2016

. A shock absorber (100) for a vehicle, said shock absorber (I 00) comprising: a first fluid chamber (102) having a first end (104) and a second end (106);a piston rod assembly comprising: a piston rod (I 08) having a first end (II 0) and a second end (112); a piston (114) disposed concentrically on said first end (II 0) of said piston rod (I08) wherein said first end (110) of said piston rod (I08) along with said piston (114) is capable of axially sliding through said second end (106) of said first fluid chamber (102) towards said first end (104) of said first fluid chamber (I02); a single rated coil spring (116) that opposes slidable movement of said piston rod assembly in compression direction, wherein said single rated coil spring (116) having an upper end (118) and a lower end (120); a helper spring (122) slidably and concentrically disposed on said second end (112) of said piston rod (I 08), wherein said helper spring (122) is having diameter substantially lesser than said single rated coil spring (116); characterized in that said single rated coil spring (116) being

A shock absorber (100) for a two-wheeled vehicle, the shock absorber (100) comprising: a first fluid chamber (102) having a first end (104) and a second end(106); a piston rod assembly having a first end (124) and a second end(126), the piston rod assembly comprising: a piston rod (108) having a first end (110) and a second end(112), wherein the second end (112) is attached to the second end (126) of the piston rod assembly; and a piston (114) disposed at the first end (124) of the piston rod assembly, wherein the piston (114) is concentrically mounted on the first end (110) of the piston rod (108), and wherein the first end (110) of the piston rod (108) along with the piston (114) is capable of axially sliding through the second end (106) of the first fluid chamber (102) towards the first end (104) of the first fluid chamber (102), and wherein the sliding of the piston rod (108) comprises a first part of the sliding and a second part of the sliding; a single rated coil spring (116) that opposes slidable movement of thepiston rod assembly in compression direction, the

19

made from Grade-2 wire and said helper spring (122) being made from polyurethane.

single rated coil spring (116) having an upper end (118) and a lower end (120), wherein the single rated coil spring (116) is disposed concentrically, and wherein the lower end (120) of the single rated coil spring (116) is attached to the second end (126) of the piston rod assembly and the upper end (118) of the single rated coil spring is attached to the first end (104) of the first fluid chamber (102); and a helper spring (122) slidably and concentrically disposed on the second end (112) of the piston rod (108), wherein the helper spring (122) is having diameter lesser than the single rated coil spring (116); wherein the single rated coil spring (116) being made from Grade-2 wire and the helper spring (122) being made from polyurethane, and wherein the single rated coil spring (116) is compressed during the first part of the sliding of the piston rod (108), and whereinthe second end (106) of the first fluid chamber (102) activates the helper spring (122) at end of the first part of the sliding of the piston rod (108) so that the helper spring (122) and the single rated coil spring (116) are compressed in tandem during the second part of the sliding of the piston rod (108).

14. In view of the amendments,

Following four conditions to be satisfied for passing amendment‘s in accordance with

Section 59(1) of the Patents Act.

(1).The amendment can only be by the way of disclaimer, correction and

explanation.

20

(2).No amendment shall be allowed except for this purpose of incorporation of

actual fact.

(3).Amendment, the effect of which would be that of the specification as amended

would claim or describe the matter not in substance disclosed or shown in the

specification before the amendment, shall not be allowed.

(4).Amendment, the effect of which would be that any claim as amended would

not fall wholly within the scope of a claim of the specification before the

amendment, shall not be allowed.

15. I have referred the following case laws

1.OA/4/2009/PT/CH (ORDER NO:189/2012) of The Hon’ble IPAB: Amended claims are beyond the scope of the

claims as originally filed specification in view of the additional elements and amended claims were not allowed.

2.ORA/17/2009/PT/CH and ORA/31/2009/PT/CH (ORDER NO:140/2012 The Hon’ble IPAB: “We are convinced

that amendments carried out duing the prosecution of the application in the specification , drawings and claims

extend beyond the scope of disclosed matter and claims which is particularly prohibited by Section 59”.

a. In Order no. 140/2012, the Intellectual Property Appellate Board has stated:

In Bonzel (T.) and Anr.v.Intervention Limited and Anr.(No:3) (1991) RPC 553 at page

no: 574 the well-known test for deciding if new matter has been added has been set out

clearly .According to this task of the court is threshold

(1) To ascertain through the eyes of the skilled addressee what is disclosed , both

explicitly and implicitly in the application.

(2) To do same in respect of the Patent as granted.

(3) To compare the two disclosures and decide whether any subject matter relevant to

the invention has been added whether by deletion or addition. The comparison is strict

in the sense that subject matter will be added unless such matter is clearly and un

ambiguously disclosed in the application either explicitly or implicitly.

Further the court of Appeal in A.C. Edwards Ltd.V.Acme Signs & Displays Ltd (1992)

RPC 131 quoted from the decision of the EPO technical board of Appeals in Thomson-

CST (T151/84) (1998) E.P.O.R 29 as follows

3. In order to determine whether or not the modification made to a claim extends the

subject matter of the patent application beyond the contents of the application as filed, it

21

is necessary to find out whether the resulting modification to the contents of the

application (Whether by addition, modification or withdrawal) is such that information

presented to the skilled man is not derived directly and un ambiguously from that which

the application contained previously, even taking account of the elements which are

implicit to the skilled man (Guidelines For Examination at the EPO,C-V1,5.4).In other

words , it is necessary to find out whether the new claim presented is supported by the

original description.

3.1.In the case in point , the important thing is therefore not that a logical analysis of the

text be carried out in order to determine whether or not the initial intention of the

applicants was to limit the protection claimed to a particular combination of

characteristics described and represented, but rather that it to be discovered whether

the skilled man reading the patent application as filed would consider that the

characteristics under discussion, namely the presence of permanent magnets, is or is

not a characteristic which is dispensable to the operation of the device described in the

application.

As Whitford J observed in Polymer corporation patent (1972) RPC 39 at 45

―Explanation means making plain or making clear‖ I t can make the ambiguous clear ,

but no the insufficient sufficient. It is therefore a question of the fact in each case as to

the information contained in the original specification and it requires to be further

explained. The essence of the explanatory amendments are in that they often make

explicit what is clearly implicit to a fair minded and properly instructed person reading

the document carefully as a whole, but might be so clear in the more casual or biased

reader. They are made for the avoidance of the doubt, even an unreasonable doubt.

The amendments shall be in a sense of the kind which otherwise necessary‖.

31. if we see the purpose of the amendments under section 57(6) and the limitation

imposed on the amendments under section 59 we find that it is necessary , in our view

to take consideration the following;

1. Does Section 57(6) permit an applicant to file an application which is

defective in it’s description of the invention inorder that he may subsequently

make good that defect by providing additional further descriptive material?

2. Are all routes for amending defects, subject to Section 59?

22

3. Does even refining of description in the specification by way of explanation be

held to be an amendment to cure the deficiencies that are not permissible under section

59?

In considering the whole question of discretion in respect of amendments under section

57(6) in present case it is also necessary , in our view to take in to consideration the

nature and extent of amendment, when they are primarily for explanation and it is in

public interest to allow them, In absence of very compelling reason to the contrary.

However these amendments in any case will not be stretched beyond the limitations

imposed by section 59.The purpose of Section 57(6) is not to permit an applicant to

file an application which is defective in it’s description of the invention inorder he

may subsequently make good that defect by providing additional further

descriptive material.

When we apply the above tests relating to the amendment to the present case we find

all the matter which was added during the prosecution of application was not merely

explanatory as additional elements such as ----- were added. These elements were not

disclosed in the specification even implicitly. Additional drawings relating to additional

matter were also filed to support the claims for these elements. We find that effect of the

added matter in the specification and claims is such that it described the matter not in

substance disclosed or shown in the specification before the amendment. Further

amended claims 1-20 do not fall wholly within the scope of the claims 1-4 as originally

filed. We are convinced that amendments carried out during the prosecution of

the application in the specification, drawings and claims extend the scope of

disclosed matter and claims, which is particularly prohibited by Section 59. The

applicants therefore succeed in proving that new matter has been added by the

Respondent 1 during the prosecution of the application which was allowed by

Respondent 2. The Respondent 2 ought to have sought for explanation from the

Respondent 1. Respondent 2 ought to have applied his discretion more cautiously and

judiciously under section 57(6), especially when there are large scale amendments as in

the present case. Therefore, we are constrained to set aside the amendments

allowed during prosecution of the application.

b. In Order no. 189/2012, the Intellectual Property Appellate Board has stated:

65. The counsel relied on the following Judgments/Case Laws

(a) Smith Kline & French Laboratories Limited vs. Evans Medical Limited - 1989 (1)

Fleet Street Reports 561

23

The principles in respect of law on amendment of specification/claims have been

enunciated in the above mentioned case in para 2 at page 569 as under:

"The discretion as to whether or not to allow amendment is a wide one and the cases

illustrate some principles which are applicable to the present case. First, the onus to

establish that amendment should be allowed is upon the patentee and full disclosure

must be made of all relevant matters. If there is a failure to disclose all the relevant

matters, amendment will be refused. Secondly, amendment will be allowed provided the

amendments are permitted under the Act and no circumstances arise which would lead

the court to refuse the amendment. Thirdly, it is in the public interest that amendment is

sought promptly. Thus in cases where a patentee delays for an unreasonable period

before seeking amendment, it will not be allowed unless the patentee shows reasonable

grounds for his delay. Such includes cases where a patentee believed that amendment

was not necessary and had reasonable grounds for that belief. Fourthly, a patentee who

seeks to obtain an unfair advantage from a patent, which he knows or should have

known should be amended, will not be allowed to amend. Such a case is where a

patentee threatens an infringer with his unamended patent after he knows or should

have known of the need to amend. Fifthly, the court is concerned with the conduct of the

patentee and not with the merit of the invention. "

b. Bristol-Myers Co. (Johnson & Hardcastle's) [1974] RPC 389

------ The reasoning, ratios and precedents cited in this case to arrive at the said

conclusions clearly suggest that the amendments sought in the present case are liable

to be rejected. Few of such reasoning/ratios are reproduced as under:

At page 400, para 2 it is observed as under:

"Lord MacDermott quotes from the speech of Lord Westbury in the Ralston case and

refers in particular to a passage where Lord Westbury said: (see Lord MacDermott's

speech, page 66, line 41):

"But it was never intended that you should convert a bad specification in the sense of its

containing no description of any useful invention at all into a good specification by

adding words that would convert what has been properly called in the court below a

barren and unprofitable generality into a specific and definite and practical description. It

is quite clear that, if that could be done. you would have an opportunity of introducing

into a bad patent which contained no useful invention whatever. some discovery that

might be developed by further experiment, and which was altogether unknown at the

time of the original specification, and not at all included in the description contained in it

24

", and later ―...the statute never contemplated that the patentee should have the power.

under the form of a disclaimer, of making material additions to the original specification,

so as bv the aid of the corrected form of words. and the additions so made. to introduce

into the specification an accurate and perfect description of an invention which you seek

for in vain in the original specification."

At the same page, it was further observed as under:

"He also cited a passage from a decision of Mr. Justice Luxmoore in Eveno's Patent

(1932) 2 Ch. 167, where Luxmoore, J. said:

"Can it be said that any amendment which in fact results in a narrower claim than that

originally put forward is by way of disclaimer? In my judgment, it is necessary to

consider not whether the amended claim is narrower or more restricted than the original

claim, but whether it covers something not claimed or suggested as constituting the

original invention, or part of the original invention. If it does. then it seems to me that the

amendment can only properly be described as covering a fresh claim, and it would be

an abuse of language to say that such a claim arose owing to amendment by way of

disclaimer.‖

In para 4 at page 402, it is held as under:

"It is plain that the present case differs in certain important respects from AMP Inc. v.

Hellerman Ltd. By this amendment the applicants are not seeking to limit a construction

by adding a further feature. They are seeking to discard one form of starting material,

and that not because they want to give it up because they want voluntarily to relinquish

this part of a properly claimed monopoly, but because they must exclude the hydrated

salt if " their patent is to stand valid. I do not think this is truly disclaimer.

73. Respondent 1 disallowed these amendments stating that the amendments in claims

are ‗not fairly supported by description and requires addition of new subject matter‘. We

are convinced that the amendment of claims is not permissible but for the different

reason that the amended claims would not fall wholly within the scope of a claim of the

specification before the amendment as required under section 59. We however affirm

his decision for the reason stated above.

16. Applicants have carried out two types of amendments

(1) Voluntary amendment

(2) Amendment in order to meet office objections.

25

17.On my observation amendment carried out in the page no:5, Para (0016), line of the

specification ―the term antitheft device ―has been deleted and shock absorber has been

added and reason provided by the applicant is the amendment is by a way of correction

of typographical error. Neither form 13 nor request for correction of clerical error has

been submitted along with the prescribed fees being it is considered as voluntary

amendment. Further In page no: 9, Para (0035), Line 18 of the specification the word

spirit has been deleted being it was use of improper term which is deleted by the

applicant voluntarily and no prescribed form along with the fees has been filed.

18. Amendment carried out in the page 8, para (0031), lines 17-27 of the specification

and the following paragraph has been added by the way of explanation of Fig: 2 and Fig

:3.Further description has been added in para (0033) by way of explanation of Fig

:4.And two reference numerals (124 & 126) has been added in sheet 2 and sheet 3 of

the drawings. It is very clear that additional technical features have been incorporated in

the description which is substantially contributing to the invention and further these

additional features are incorporated in the claim1 and claim 2 as well which makes

claims elaborate. It is clearly ordered by the Hon‘ble IPAB that the purpose of the

Section 57(6) is not to permit an applicant to file an application which is defective in its

description of the invention in order; he may subsequently make good that defect by

providing additional further descriptive material.

19. I carefully considered the arguments put forward by the learned agent for the

applicant and based on the decisions issued by the Hon‘ble IPAB and my own analysis,

I have concluded that the amendments carried out in the description, claims and

drawings and submitted along with the written submission after all hearing proceedings

goes beyond the scope of section 59 of the Patents Act. In view of the reasons stated,

this office is not in position to allow these amendments carried out and submitted after

all hearing proceedings.

20. Learned agents for applicants submitted their written response on 1/06/2016 and

they have also filed an expert affidavit, for the hearing proceedings happened with

Opponent 2 on 25/04/2016. Learned agents for Opponent 2 have filed their written

response on 13/05/2016. Learned agents for applicant filed their written response on

03/06/2016 for the hearing proceedings happened with Opponent 1 on 10/05/2016 and

learned agents for the Opponent 1 has filed their written response on

4/06/2016.However the learned agent for opponent 1 requested time for filing expert

affidavit based on the natural justice principle and based on the decisions taken by the

Hon‘ble Madras High court and the Hon‘ble IPAB, It is decided to take that expert

affidavit from the opponent 1 along with a Petition U/R 137.

26

Extracts of High Court decision is reproduced here with for clarity

Hon’ble High Court of Madras in the case Novartis AG Vs. Union of India and

others ( W.P.No. 15736 of 2015)in the matter against the decision of Hon’ble IPAB

(ORA/21/2013/PT/CH) for reception of additional documents and raising additional

grounds. The Hon‘ble High court ordered that ― We have no hesitation to hold that the

appellate Board is vested with powers to regulate its own procedure as it is vested with

same powers of a civil court under code of civil procedure, More particularly for the

purpose of receiving evidence. Thus the Appellate Board was fully justified in

entertaining the Miscellaneous Petition filed by the second respondent. In the Light of

the above --- discussion, the order impugned passed by the IPAB was held and was not

interfered. Accordingly, the writ petition failed and was dismissed.

This office has noted that request from both the opponents that an opportunity may be

provided in case this office is considering the amendments put forward by the applicant

after the hearing proceedings, being this office have decided not to allow the

amendments carried out by the applicant that requests are not considered. So I proceed

further with the claims on 18/02/2015 on which hearing proceedings are happened

between two opponents and the applicant and for better clarity claims are reproduced

herewith.

I. A shock absorber (100) for a vehicle, said shock absorber (I 00) comprising:

a first fluid chamber (102) having a first end (104) and a second end (106);a piston rod


a piston rod (I 08) having a first end (II 0) and a second end (112);

a piston (114) disposed concentrically on said first end (II 0) of said piston rod (I08)

wherein said first end (110) of said piston rod (I08) along with said piston (114) is

capable of axially sliding through said second end (106) of said first fluid chamber (102)

towards said first end (104) of said first fluid chamber (I02);


assembly in compression direction, wherein said single rated coil spring (116) having an

upper end (118) and a lower end (120);


said piston rod (I 08), wherein said helper spring (122) is having diameter substantially


27




2. A twin tube shock absorber (200) for a vehicle, said shock absorber comprising: a

first fluid chamber (102) having a first end (104) and a second end (106);

a inner chamber (202) having a first end (204) and a second end (206); wherein said

first fluid chamber (102) is having a diameter substantially larger than said inner fluid

chamber (I02) such that said first (104) and second (106) ends of said first fluid

chamber (I02) are disposed in close proximity to said first (204) and second (206) ends

of said inner chamber (202) respectively;


a piston rod (108) having a first end (II 0) and a second end (112);

a piston (114) disposed concentrically on said first end (110) of said piston rod(108)

wherein said first end (110) of said piston rod (108) along with said piston (114) is

capable of axially sliding through said second end (206) of said inner chamber (202)

towards said first end (204) of said inner chamber (202),


assembly in compression direction; said single rated coil spring (116) having an upper

end (118) and a lower end (120);


said piston rod (108) wherein said helper spring (122) is having diameter substantially







5. The shock absorber as claimed in claim 1 or 2, wherein said damping fluid is a

mixture of oil and gas.

28

6. The shock absorber as claimed in claim I or 2, wherein said upper end (118) and

lower end (120) of said single rated coil spring (116) is having closed pitch coils.

24. Opponents submitted following documents for proving lack of novelty and

inventive step.

1. DE 10034563 A1(herein after referred as D1) relates to a spring element containing

an insert (1) consisting of a compact material that is more rigid than the material that the

spring element consists of, a part (2) that functions as a helper spring and a part (3) that

functions as a spring pad. The spring elements produced from polyurethane elastomers

are used in automobiles addition products, for example within the chassis, example, on

the basis of elastic plastic materials, such as rubber or elastomers based on

polyisocyanate poly, such as polyurethanes and / or polyureas, uses, and are well

known. They are particularly used in motor vehicles as overload springs, impact

dampers or stops.

2.DE 10337175 (herein after referred as D2) relaters to a spring construction, in

particular in automotive suspensions, comprising spiral spring , at the end thereof of a

spring seat is positioned as well as a preferably cylindrical , preferably hollow auxiliary

spring , preferably on the basis of cellular polyisocyanate poly addition products ,

particularly preferably based on the cellular polyurethane elastomers preferably having

a density according to DIN53420 from DIN 200 TO 1100. In addition , the invention

relates to automobiles, that vehicles of all kinds eg. Passenger cars, lorries or buses ,

as well as motor cycles and bicycles, but preferably motor vehicles comprising spring

elements according to the invention and/or spring structures, particularly in the chassis.

Made from polyurethane elastomer suspension elements are used in automobiles , for

example within the chassis and are generally known. Typical spring designs are

constructed such that on the piston rod of the shock absorber from an additional spring

polyurethane elastomers is fixed.In addition, there is usually a helical spring, which is

fixed on a spring pad.

3.DE10344102 (herein after referred as D3) relates to a spring carrier with an auxiliary

spring according----- the additional spring often made of cellular elastomer.

4.DE20309425 (U1) (here in after referred as D4) relates a spring based on a

polyisocynate polycondensation product, preferably polyurethane , and is 105-115mm

high and of diameter 53-56 mm.

29

5.DE20311243 ( herein after referred as D5) relates a helper spring is based on a

polyisocyanate condensation product, preferably polyurethane, and is 78-82 mm high

and of diameter 59-63 mm. The end is in the form of a lip and the element has a hollow

internal diameter of 20-24 mm. Preferably the outside of the spring has grooves and

protuberances with a distance between protuberances of 5-15 mm.product,.

6.US3263983 (herein after referred as D6) discloses a shock absorber and auxiliary

spring unit. In FIGURE 4 discloses the various components of the unit 24 when in a full

jounce position. Under these conditions, the retainer 62 is in engagement with the stop

member 70 causing the spring 56 to carry a large portion of the sprung vehicle weight.

By rigidly securing the lower end of the coil spring 56 to the shock absorber tube 38,

there is less tendency for it to buckle as compared with designs wherein the lower end

of the coil spring is merely seated on a support member. A rubber corrugated spring 72

may also be provided. A spring of this type is shown in Patent No. 168,845. This spring

comes into operation only during extreme jounce deflection such as shown in FIGURE

4. That figure discloses the manner in which the spring 72 is distorted. It has a sliding fit

on the rod 34.

7.US4486028A (herein after referred as Y1). discloses a front wheel support structure

for an automobile comprises a first support fixed to a body, a second support disposed

beneath and spaced at the inner portion thereof from the first support, contacting a

bound stopper at the underside of the inner peripheral portion and secured fixedly to the

first support at the outer peripheral portion, a mount rubber disposed between both

supports, a connecting member secured fixedly to the mount rubber and mounted on

the upper portion of a piston rod of a shock absorber and a bearing seat disposed at the

underside of the second support and contacting a spring seat for receiving the upper

end of a coil spring. In use of the support structure, force from the piston rod is

transmitted from the mount rubber through the first support to the body, force from the

bound stopper is transmitted from the second support through the first support to the

body and force from the coil spring is transmitted from the spring seat to the bearing

seat and further through the second and first supports to the body respectively.

8. US4477061 (herein after referred as Y2) discloses a MacPherson strut type

suspension including a shock absorber operatively disposed between vehicle wheels

and a vehicle body of a motor vehicle, the shock absorber having a piston rod; a coil

spring disposed in association with the shock absorber to elastically support the vehicle

body; a core member secured to an end of the piston rod of the shock absorber; an

insulator rubber securely connected between the core member and the vehicle body;

and a stop device for restricting the movement of the core member in the axial direction

30

of the piston rod of the shock absorber when the axial movement of the piston rod

exceeds a predetermined distance, thereby effectively damping high and low frequency

vibrations applied to the suspension while prolonging the life of the insulator rubber.

9. US4175770 (herein after referred as Y3) relates to suspension struts for motor

vehicles, utilising a telescopic damper.

10. US4438660 (herein after referred as Y4) relates to an operator-movable control

lever assembly with a single lever having both friction-held and spring-centered

operational modes .

11.US 4042259 (herein after referred as Y5) relates to suspension strut assemblies for

wheel suspensions of motor vehicles.

12.US3263983 (herein after referred as Y6) relates to A vehicle suspension system

having sprung and unsprung parts, a suspension spring interposed between said parts

and constructed for resiliently supporting said sprung parts on said unsprung parts, a

direct acting telescopic shock absorber interposed between said parts, said shock

absorber having a body portion connected to one of said parts and a piston rod portion

connected to the other of said parts, a spring seat secured to said body portion, a coil

spring disposed concentrically about said body portion and having one end secured to

said spring seat, a cupshaped rubber retaining member connected to the other end of

said coil spring and slidably receiving said piston rod portion, a rubber'spring

surrounding said piston rod portion and situated within said coil spring between said

retaining member and said body portion, a stop member secured to the end of said

piston rod portion, said stop member being spaced apart from said retaining member

when said shock absorber is in an extended rebound position but engaging said

retaining member when in a jounce position.

13 .US 2003137091 (herein after referred as Y7)concerns a suspension stop device, for

a motor vehicle driving wheels, comprising a filtering block, consisting of an upper

housing fixed relative to the vehicle body and co-operating with a lower housing mobile

in rotation about a shock absorber rod and supporting a suspension spring, and a ball

bearing. Said upper (21) and lower (23) housings are made of thermoplastic material

and have opposite surfaces hollowed out in a circle, about the rotation axis (d) of the

shock absorber rod (24), to receive a raceway for the ball bearing (22). The upper

housing (21) further incorporates an impact stop (42) moulded around the leading stop

(41) of the shock absorbing device, and the thermoplastic structure of the upper housing

(21)is reinforced by a ring (45) made of overmoulded elastomer.

31

14. US6227527 (Herein after referred as Y8) relates to a pneumatic suspension system

forming a McPherson strut.

15. US5676355 (herein after referred as Y9) relates to a suspension system which is

applicable to automobiles.

16. US 5257730 (herein after referred as Y10) relates to a bound stopper for use in a

suspension of a motor vehicle, which is fitted on a piston rod of a shock absorber of the

suspension, for elastically limiting a stroke of the piston rod by abutting contact with a

cylinder of the shock absorber. The bound stopper includes a cylindrical main elastic

body formed of a rubber material and having an engaging portion at one axial end on

the side of the cylinder of the shock absorber, and a cylindrical auxiliary elastic body

formed of a foam material and having an engaging portion at one axial end remote from

the cylinder of the shock absorber, one of the engaging portions of the main and

auxiliary elastic bodies having at least one recess while the other of the engaging

portions having at least one protrusion. The engaging portion of the auxiliary elastic

body is fitted on the engaging portion of the main elastic body such that the protrusion is

fitted in the corresponding recess for engagement of the two elastic bodies.

17.US5052665 (herein after referred as Y11) discloses a bumper rubber comprises: a

bumper rubber body being elastically deformable and having a substantially cylindrical

shape, wherein the bumper rubber body is inserted into a rod extending from a top end

portion of a cylinder of a shock absorber, a top end surface thereof is brought into

contact with a bottom end portion of a suspension insulator disposed on a vehicle body,

and a bottom end surface thereof is brought into contact with a top end portion of the

cylinder, thereby being elastically deformed and absorbing the excessive displacements

of the shock absorber; and a rigid ring integrally insert-molded on an outer periphery

surface of the bumper rubber body and having an engagement groove on an exposed

outer periphery surface thereof to be engaged with a dust cover, and the engagement

groove going round on the exposed outer periphery surface of the rigid ring in a ring-like

shape.

18.US 4756516 ( herein after referred as Z1) relates to a resiliently deformable element

made of an elastomeric material having a microcellular structure, which can be used as

an end stop in a motor vehicle suspension, in particular a suspension of the Mac

Pherson type.

19. US4962916 ( herein after referred as Z2) discloses an elastomeric spring useful as

an automotive shock or strut end-of-travel bumper having at least three distinct spring

rates made possible by a series of roughly cylindrical, hollow elastomeric tubes stacked

32

with the axes of the tubes normal to the axis of deflection of the spring. The tubes

collapse sequentially to yield multiple spring rates. Non uniform wall thickness tubes, roll

axially over the outer peripheral surface of the thicker walls of adjacent tubes during

deflection.

20. US4105194 (herein after referred as Z3) relates to combined shock absorber and

fluid spring units and more particularly to improvements in the pumping mechanism

embodied in self-leveling units of the type disclosed in U.S. Pat. No. 3,836,132.

21.US 4302552 (herein after referred as Z4) relates to a vibration isolator that is

effective in damping vibration or preventing the transmission of vibration, and

particularly to a vibration isolator consisting of a microcellular polyurethane elastomer

which can be effectively used in damping vibrations that are set up under high loads or

can be effectively used in isolating the transmission of vibration that takes place

between the source of the vibration and the members that support said source.

22.US4311765 (herein after referred as Z5) relates to shock absorbing units having

dynamic shock absorbing ability. The invention more particularly relates to shock

absorbing elements for railroad car draft gears of resilient cured polyurethane

compositions which can resist softening after dynamic compressive cycling under

constant compression and to a method of their preparation.

23.US 4485506 (herein after referred as Z6) relates to a coil spring construction for a

mattress or cushion or the like.

24.US20040094880 (herein after referred as Z7) relates to a shock absorber, and more

particularly to a shock absorber that uses polyurethane foam as a resilient core and has

an excellent shock-absorbing capability.

25.US4771083 (herein after referred as Z8) relates to a micro cellular polyetherurethane

foam of the aliphatic diisocyanate type suitable for use in shock absorbers.

26. US 6221930 (herein after referred as Z9) relates to a shock absorber formed of a

foam resin material, and having a compressing direction for compressing the shock

absorber and a cross sectional area perpendicular to the compressing direction, said

cross sectional area being at least partly changed along the compression direction and

having a cross sectional shape with a substantial trapezoid in the compression direction

so that a relation between distortion and compressive stress of the shock absorber in

the compressing direction becomes substantially linear when a shock is applied to the

shock absorber.

33

27. US 3831922 (herein after referred as Z10) relates to A cushioning device

particularly well suited for use in a draft gear of a railway vehicle comprises a plurality of

rigid plates disposed one over the other and having symmetrically disposed non-porous

elastomeric protuberances on each face thereof with interstices between the

protuberances being filled with an elastomeric plastic foam which binds the elements

together into a unitary structure. This invention relates generally to energy absorbing

devices, and more particularly to an elastomeric shock absorbing device having

improved modulus, damping characteristics and compression set especially

advantageous for use in automatic coupling devices for railway vehicles.

28. US20040084820 ( herein after refereed as Z11) relates to a vehicle shock absorber

includes a housing, and a shock-absorbing member. The housing has at least one

hollow formed therein, is formed of a rigid material, and is fixed to a bone structural

member of vehicles. The shock-energy absorbing member is disposed in the hollow of

the housing at least, and is formed of a super plastic polymer material. The super plastic

polymer material exhibits a tensile breaking elongation of 200% or more, a yield

strength of 20 MPa or more with respect to a predetermined strain, and a tensile elastic

modulus of 400 MPa or more.

29. US 5775779 (herein after referred as Z12) relates to seat suspension membrane is

provided which consists substantially of a biaxially oriented film of a polyurethane

thermoplastic elastomer composition, which composition is characterized by

substantially linear polymer molecules containing alternate rigid segments of

diisocyanate short chain diol addition reaction products and flexible segments of

relatively high molecular weight polyether diol or polyester diol segments and which is

produced from a relatively soft film composition.

30. Spirit spare parts catalogue (herein referred as AA) (DOC.NO.36020106 dated

010998) referred Plate no: 28 rear shock absorber , Fig no:5 (part no: 29171001)—Rear

shock absorber spring .. PE/29/MM/CH/A542. As per this grade 11 steel wire has been

used. Drawings supplied C1 to C4.

34

31. STEEL WIRE FOR MECHANICAL SPRING SPECIFICATION IS4454 (PART 4) :2001 –BUREAU OF INDIAN STANDARDS (herein after referred as A1). 5.grades : The stainless steel wire shall be of three grades designated as Grade 1, Grade 2 and Grade 3 respectively. Table 1 shows the chemical composition Table 4 shows the tensile strength for stainless steel spring wire. Table 5.Reference Data for the modulus for elasticity and Rigidity. 32. US6851528 (Herein after referred as G1) relates to a shock absorbers that include a piston and shock rod assembly that move within a fluid containing shock housing. 33.US2090621 (herein after referred as G2) relates to hydraulic shock absorbers comprising relatively movable cylinder and piston elements adapted for connection respectively with the body and axle structure of an 5 automotive vehicle, the invention concerning particularly the direct acting type of shock absorber in which the cylinder is of tubular` form and the piston structure is adapted for longitudinal movement therein . 34. US4386791 (Hereinafter referred as G3) relates to an invention is an actively controlled vehicular suspension system which automatically adjusts or trims the standing or dynamic height of the suspension system. The invention is also directed to a height sensor used in such actively controlled suspension system.

35

35.US6612410 (herein after referred as G4) relates to an invention pertains to shock absorbers and accelerators, and in particular to shock absorbers that operate in high cycling frequency applications that have low inch-pounds or medium inch-pounds per cycle but have high inch-pounds per hour. 36.US 4106596 (herein after referred as G5) relates to a single tube hydropneumatic shock absorber, and in particular pertains to a steering shock absorber. 37.US 7219881 (herein after referred as G6) relates to a shock absorber, in particular for bicycles, with a first cylinder that has a fluid chamber filled with a transmission or damping medium and in which an outwardly leading piston rod with piston for receiving the shocks to be dampened or compressed is borne axially displaceable, and with a second cylinder that has a fluid chamber filled with the transmission or damping medium and an air- or gas-filled gas pressure chamber, whereby the fluid chambers of the first and second cylinders communicate with one another via a communicating channel. 38. Opponent 1 have filed B1 to B6 documents as Exhibits but dates are not clearly provided. Similarly CC1, CC2 have been provided without dates and CC3 is an US patent grant document having patent number US8505887 having publication date 13/08/2013. In view of this office is not considering these documents mentioned in this paragraph. Further some extracts of a book named Design Machine elements by C.S Sharma ,Kamlesh Purohit(F1) has submitted but date of publication is not mentioned so this office is not considering the same. 25. Anticipation/ Lack of Novelty (Section 25(1)(b) of the Patents Act)

Arguments and submissions by Opponent 1 and Opponent 2

Learned agent for the Opponent 1 submitted that as detailed in the cited documents and

exhibits, all of them are published prior to the relevant date of filing of the application

and thereby the application suffers Section 25(1)(b), as each of them independently and

in combination with the other exhibits teach and disclose all the essential features of the

invention.

The Learned agent for Opponent 2 explained the invention with the help of a model of a

shock absorber (actual shock absorber). The learned agent argued that the said

absorber has the same constructional features as those have been worded , described,

illustrated with the drawings and claimed by the applicant. The learned agent further

submitted that ―Coil spring ― is to absorb the load , the role of a piston rod assembly is

for damping action , to reduce the oscillation motion of the coil spring and the role of a

36

helper spring (called as Bump stop ―by the opponent ) is to absorb shock load or bump

load . The learned agent for the opponent argued that applicant claims are limited to

and characterized by the selection of material for the coil spring i.e.,. Grade -2 wire and

the selection of a material for the Helper spring i.e.Polyurethene

The learned agent for the opponent 2 submitted that, the novelty of this application lies

in use of Helper spring which is made of Polyurethane material. The coil spring of Grade

2 wire is used by the applicant to compensate the high cost of the helper spring as

described by the applicant in the description. In view of this, learned agent for the

opponent argued that there is no novelty claimed by the applicant in the coil spring. The

coil spring of grade 2 materials is known in the spring and shock absorber industries

and available in the market. The selection of material of grade 2, to compensate the

high cost of polyurethane material does not amount to novelty and inventiveness.

Accordingly opponent need to establish only that helper spring of polyurethane material

is being used in the shock absorber prior to the applicant‘s priority date for the purpose

of the novelty.

The learned agent for the opponent 2 submitted that ―helper spring ―is known by

different names and in this case , the helper spring is nothing but a Bump stop, which is

being used in shock absorbers since the inception of these type of shock absorbers.

The role of a helper spring/bump stop is to avoid direct impact/collision of two metal

faces i.e., one end of the piston rod assembly and the other side end of the coil spring

120 .The bump stop / helper spring absorbs the shock load.

The role of Bump stop comes only where there is a high intensity shock/jerk/jounce due

to deep pot holes on the road or due to any other reasons. Due to the high level of jerk,

jounce, the coil spring gets compressed to the maximum level, which may lead to

collision of the two faces at the distal end. To avoid the collision of the two faces a bump

stop is provided. The bump stop has properties to absorb the impact/shock load.

The opponent 2 submitted that the applicant has given reasons in the description for

selecting of the materials for coil spring and helper spring which are based on the cost

factor and are not based on novelty and inventive steps.

Learned agent for the opponent 2 submitted the documents to prove that helper spring

is made from polyurethane material.

The Opponent 2 further submitted that in mechanical cases, novelty/ inventive steps

are decided on the basis of constructional features and interconnection of parts, and

their integral/ combined functioning and newness. On the subject title "shock

37

absorber", no patent may be given only on the basis of selection of a material for a

spring, because the use or selection of a material for "Coil Spring" or "Helper Spring"

is not a matter of novelty or inventive steps, and therefore no patent can be granted

merely based on the Grade-2 material of the coil spring and the polyurethane material

of the "Helper Spring"; Accordingly finding an exact citation as a prior art will be difficult

these type of claims are not eligible for the grant of a patent.

If a patent is considered for use/ selection of Grade-2 material for "Coil Spring"

and polyurethane material for "Helper Spring", then a patent may be granted

for Grade-3 material, Grade-4 material for "Coil Spring'' or combination of different

materials with the Helper spring.

Reply from applicant on this ground

The Learned agent for the applicant submitted that Opponent did not cite any

document or give any reason as to why the invention lacks novelty. Instead, the

Opponent repeatedly argued that the parts of the invention as claimed are known or

published in different documents. However, in no document the use of the single rated

coil spring made from grade-2 steel wire and the use of the polyurethane spring, in

combination with other parts of the shock absorber, is disclosed.

Learned agent for the applicant submitted a case, General Tire and Rubber Company

Limited v. Firestone Tire and Rubber Company Limited decided by the Supreme Court

of United Kingdom, wherein the Court, while deciding on the anticipation, laid down the

following principle:

―If the prior publication contained a clear description of, or clear instructions to do or

make, something that would infringe the patentee's claim if carried out after grant of

the patentee's patent, the claim would be anticipated. If carrying out the directions in the

prior publication would inevitably result in something being made or done which would

infringe there would be anticipation.‖

Learned agent for the applicant submitted that as none of the documents cited by the

Opponent provides a clear description or clear instructions to make the shock absorber

as described in the invention, it was submitted by the Applicant that none of the

documents anticipates the invention as claimed and Further as prescribed in the

Manual of Patent practice and procedure , to anticipate an invention as claimed, it is

necessary that all the features of the claim should be shown to have been disclosed in

one document. The Opponent failed to provide a chart mapping each and every feature

38

of the claim with the disclosure in each of the documents cited in the Representation

filed by way of Opposition.

My analysis

It is very clear that invention lies in a shock absorber for a vehicle which is characterized

single rated coil spring (116) being made from Grade-2 wire and said helper spring

(122) being made from polyurethane. On my observation, I could not able to find both

the features in a single document as provided in the guidelines of Manual of Patent

Office Practice and Procedure (the MPPP) under 08.03.02(d) prescribe that, ―A prior

art will be considered as anticipatory if all the features of the invention under

examination are present in the cited prior art.” . Based on the argument‘s and

submissions put forward by the learned agents of applicant and learned agents of the

opponents and on my analysis, I have concluded that both the Opponents failed to

establish this ground of Section 25(1)(b) of the Patents Act.

26. Section 25(1)(d)[Publicly known or used in India]

Argument and submissions put forward by the Opponents

Learned agent for the Opponent 1 submitted that Grade 2 steel spring was very much

used by opponent themselves (refer C1which is the engineering drawing for

manufacturing Grade 2 steel spring by third party and supplying to opponent. The

document C1refers to OE part no. 29171001with document dated 6.6.1999 for a two

wheeler under description "SPIRIT REAR". This model ‗SPIRIT‘ was introduced by

opponent in the market around the year 1998. Original brochure- spare parts catalogue

was distributed by opponent- DOC no. 36 02 0106 REVNO 00 dated 1.9.1998 in public

domain in the year 1998 and which original document was presented for inspection

during the hearing on10.5.2016 to the Controller, applicant and applicant's agent and

annexed herein as Annexure AA. It is obvious Grade 2 steel single rated main spring

with spring aid was manufactured and vehicles (two wheelers) mounted with such a

system was very much in the market in the year 1998 itself. Hence the invention fails

the test of inventive step as product was put to "use" in its entirety in the year 1998.

Reading these along with exhibits B1to B6, C2 to C4, it is very crystal clear that the

invention was very much put to use by many including the opponents prior to filing date

of the application.

The learned agent for the opponent 2 submitted that they have submitted EH1: invoice

details of shock absorber being sold by the opponent to different two wheel

manufactures, Invoice are dated Jan., 2008 onwards. Further EH2 a drawing of the coil

39

spring being used by the opponent. The drawing is dated Dec 2002.The bottom right

corner establishes that grade 2 material was used in the coil spring in the shock

absorber. EH3 (same as A1) BIS Standard of Feb 2001 at page 1 & 2, under the

heading ―Grade‖, it is clearly mentioned that ―The grade of spring wire depends on the

stress level and on the nature of duty ―.It clearly establishes that grade 2 wire springs

are known and are being used as per application.EH4: a drawing showing the assembly

of the shock absorber manufactures by the Opponent 2. The drawing is dated

Sep.‘1999.The box at the middle bottom clearly shows that grade 11 wire was being

used in the shock absorber industry. The learned agent for the opponent 2 submitted

that the claimed invention is publicly known in India and publicly used in India before the

priority date of Applicant‘s application.

Arguments and submissions Put forward by the Applicant.

The Learned agent for the applicant submitted that although the opponent has taken

this ground for opposing the grant of patent for the Application, nowhere the Opponent

has submitted any evidence by way of any document or reasons to prove that the article

as claimed in any claim was publicly used. However, the Opponent submitted the

drawing of a spring to prove that the shock absorber was used by public before the

invention was filed. Without prejudice, the Applicant submitted that the drawing is not a

public document; instead it is a private document. Therefore, the document does not

prove that the article of invention was used in public. Therefore, the Opponent failed to

prove the anticipation by prior public use.

The Learned agent for the applicant cited the principle laid down by the Supreme Court

in Bishwanath Prasad. The Court said that, ―What is necessary to be proved therefore is

that the prior use was public. Public use does not mean use by the public, but use in

public manner and not secretly. I want to stress the last words.‖ Thus, as long as the

use of any article is private or secret, the use cannot be said as public use. The

Opponent has failed to provide the evidence to prove that the shock absorber as

claimed in the invention was in public use. Learned agent for applicant further submitted

another case , In Lallubhai Chakubhai Jariwala, A.I.R. 1934 Mom 407, the High Court

of Bombay in paragraph 29 said that, ―What is necessary to be proved therefore is that

the prior user was public. Public use does not mean use by the public, but use in public

manner and not secretly. I want to stress the last words.‖ Thus, as long as use of any

article is private or secret, the use cannot be said as public use

40

My analysis

I have referred following case laws

In Lallubhai Chakubhai v. Chimanlal Chunilal & Co. A.I.R., 1936 Bom. 99, it was

held that public user did not mean a user by the public but a user in a public manner. It

was further held that the use of an invention for purposes of trade, whether by the

inventor himself or by others, would constitute public user of the invention. It was also

held that public sale of articles is strong evidence that the user is commercial and not

experimental. But to constitute evidence of public user, the sale must be open and in

the ordinary way of business.

In Monsanto Co. v. Coromandel Indag Products (P) Ltd. 1986 A.I.R. 712, it was held

that ―to satisfy the requirement of being publicly known as used in clauses (e) and (f) of

section 64(1), it is not necessary that it should widely be used to the knowledge of the

consumer public. It is sufficient if it is known to the persons who are engaged in the

pursuit of knowledge of the patented product or process either as men of science or

men of commerce or consumers.

Hon’Ble IPAB ordered in OA/4/2009/PT/CH that We do not agree with the appellant

that disclosure in lecture will not amount to anticipation. Disclosure of invention by the

inventor even to a single person of public before the priority date of patent destroys the

novelty of the invention. Therefore, the claimed invention is anticipated by this

document

I have referred Patent law of by P. Narayannan Fourth Edition, Page no: 367 . It is given

that PLG research Ltd v Ardon International Ltd (1993) FSR.197 at 225 that ―to form

part of the state of art , the information given by the user must have been made

available to at least one member of the public who was free in law and equity to use it‖.

In view of this, I have deiced to consider the Spirit spare parts catalogue (herein

referred as AA) (DOC.NO.36020106 dated 010998) referred Plate no: 28 rear shock

absorber, Fig no:5 (part no: 29171001)—Rear shock absorber spring ..

PE/29/MM/CH/A542. As per this grade 11 steel wire has been used and other related

drawings supplied by the opponents (C1 to C4)..

41

.

It is very clear that invention lies in a shock absorber for a vehicle which is characterized

single rated coil spring (116) being made from Grade-2 wire and said helper spring

(122) being made from polyurethane. On my observation, I could able to find use of

grade 2 wire in the drawings supplied for manufacturing but could able to find only bump

stop with rubber. Based on the argument‘s and submissions put forward by the learned

agents of applicant and learned agents of the opponent and on my analysis, I have

inclined to accept the learned agent for applicant‘s argument that Opponents failed to

establish this ground.

42

27. Section 25(1)(e)[Lack of Inventive step]

Arguments and submissions made by the Opponents

The Learned agent for the opponent 1 Submitted that claim 1characterized portion is

"said single rated coil spring 116 being made from Grade-2 wire and said helper

spring 122 being made from polyurethane". This combination lacks inventive step due

to following evidences put forth in this proceeding by the opponent :Further the learned

agent argued that the problem addressed in the invention and solution provided in the

invention, was previously seen, appreciated and needed implementing solutions was

made available much prior to the relevant filing date of this application such as in

documents A1, B1to B6,C1 to C4along with Z1 to Z12 and Y1 to Y11 also.. The

existence of prior art and/or knowledge available in public domain teach towards

the alleged technical and the commercial direction taken by the applicant.

The learned agent for the Opponent 1 argued that provisional specification where the

field of provisional specification states that the invention is related to "shock absorber

for a two wheeler" and also through the complete specification where the field of

complete specification states that the invention is related to "shock absorber for a

vehicle". In the provisional specification in its first para of "Description‖ discloses use of

PU spring aids in tandem with main springs in passenger cars. The provisional

specification in its second para of description states "the present invention relates to

development of a combination of single rated spring with the spring-aid, for a two

wheeler application. The use of single rated spring helps reduce the material content,

thereby lowering the cost, thus offsetting the higher cost of spring-aid, vehicle achieving

a higher level of ride comfort".

The Learned agent for the opponent1 submitted that, admittedly, therefore the

contribution of the applicant is limited to

a Use expensive PU spring as spring-aid {as known in prior art)

b. Use single rated main spring instead of non-linear main spring to reduce

material content thereby reducing cost and offset the expensive PU spring aid.

{select the cheapest combination of the many combinations known in prior art)

The learned agent for the Opponent bring out following issues

a. Is use of linear main spring in shock absorber an improvement?

43

Passive suspensions are designed with linear spring and dampers. The ride comfort

perceived by rider of vehicle has been shown to depend on the speed, acceleration of

the vehicle and also on rate of change of acceleration. A good suspension system

would stiffen up for larger rates and soften for smaller rates of acceleration input from

the road when the vehicle moves over bumps. This is related to certain desirable "non-

linearity" both in spring and dampers. Hence many prior art are relating to using "non-

linear spring" in shock absorber system in which progressively varying spring rate is

achieved accordingly much before to filing date of this application. Hence adopting

linear main spring is not inventive in the eye of a skilled person.

A linear spring has a linear relationship between force and displacement i.e., they are

directly proportional to each other. A non-linear spring has a non-linear relationship

between force and displacement i.e., they are not directly proportional to each other.

Non-linear springs have an advantage that such spring exerts an inconsistent amount

of forcei.e. does not execute constant rate of force per distance travelled. Also non-

linear springs can have dual-pitch, multiple-pitch, etc. This requires one to only adjust

the pitch between some of the coils for it to take one to a different amount of load to

meet one's required loaded heights. So basically with a non-linear spring, at the

beginning of the compression cycle, the spring constant 'K' is lower and the spring can

therefore be compressed more easily. Thus puts less stress on the other internal

components such as piston because the spring is easier to compress. As the spring

is compressed, the spring constant increases which eventually equates it to linear

springs of the same rating strength-wise. Hence non-linear spring is nothing but putting

several small linear springs with different 'K' valves together. The art has improved from

using mere linear single rated springs in shock absorber to non-linear springs, and

hence adoption of linear main spring in a suspension system is not inventive in the eye

of a skilled person.

b. Is a polyurethane spring aid referred in the application same as a polyurethane bump

stops referred by others?

It is known that use of rubber as a spring medium has only relatively limited application,

in vehicle suspension system and use of a urethane elastomer is usually preferred for

suspension system, because unlike rubber materials it can provide a more progressive

stiffening characteristic over a under range of deflection. A urethane spring material is a

polyether-elastomer that reacts similarly to an incompressible fluid. The volume of

material moved by compression is displaced laterally in the form of bulging sides. An

approximation to the change in diameter of a typical cylindrical urethane springs can be

44

made by increasing the diameter by the size of compression. Hence urethane as a

spring material is known in prior art and using a urethane spring aid in a suspension

system is not inventive in the eye of a skilled person.

From the provisional specification under "Description" {para 1 and para 2)

admittedly, combination of PU spring and with main springs in a shock absorber is

known in passenger cars and more specifically known to applicant themselves. Thus

the applicant is intending to pick a combination of PU spring aid with a main spring,

which main spring shall be single rated for sake of reduction of material and thereby

cost reduction and further use grade 2 material for sake of further cost reduction of

the main spring for using the known prior art {used in passenger cars) into a

cheaper two wheeler. Thus the teaching flowing from the provisional specification

{Description) is that- PU spring + main springs combinations is known in the art for use

in vehicle {passenger cars) and the applicant is exploring the "cost effectiveness" of one

of the combinations for using the known art in two wheelers. Accordingly it is submitted

that availability of the aforesaid combination claimed in the application flows from the

known prior art and the selection disclosed by the applicant in the claims/specification

required no extraordinary efforts on the part of the applicant. The 'cost-offset‘

requirement is a matter of mere commercial decision of a known technology and does

not involve any inventive ingenuity in doing so. Hence the application has failed

problem-solving test at the first instance itself which is on the basis of its own disclosure

in the provisional specification.

The opponent 1 has submitted A1(IS 4454) in opposition proceeding (Exhibit- A1 of

notice of opposition) which is IS4454 revision 2001. It is submitted as per this

document, Grade 3 steel spring was introduced in IS4454 only in 2001which means

Grade 2 steel spring was previously used by all Indian manufacturers on all vehicles

including two wheelers at all times with no option for selecting Grade 3 steel spring

until 2001for passenger cars and two wheelers. When a skilled person refers to IS

4454, it will be understood that, as per IS 4454, Grade 2 steel spring and Grade 3 steel

spring coils have same chemical proprieties and modules of elasticity but Tensile

strength K/modules of rigidity is different. So mere substitution for cost reduction

cannot be an inventive step without justifying technical reasons for substitution between

Grade 2 steel spring and Grade 3 steel spring in a functional mechanism such as shock

absorber which is one of the critical components of suspension system and is generally

carefully designed by engineers to handle shock impulse and dissipate kinetic energy.

The role of spring in a shock absorber is to reduce the amplitude of disturbances

leading to increase in comfort and improved ride quality. Hence, the designing of

spring in a suspension system is very crucial and cannot be blindly substituted with a

45

mere purpose of cost reduction. Lot of thoughts and science is put behind designing

the coil rate of spring, length of spring , diameter of coil, number of spring and type

of coils along with other technical parameters surrounding the operating conditions

by a typical skilled person in the art. But this invention merely follows from a normal

product design and development for commercial exploitation, lacking innovation and

fails the purposeful test of inventive step which is mandatory\( for test of patentability.

An ordinary skilled person in the art could have very easily considered the option

of combining the materials as disclosed and claimed in the invention from the prior

art. The subject matter is thus wholly identified in documents B1to B6, C1to C4, Z1to

Z12 and Y1to Yll. B1discloses actual availability of real products in the market - PU

helper spring to be used in shock absorber. Patents marked Z1to Z12 disclose the

use of PU material for making springs.

US 4756516 was elaborated for better understanding of the prior art. Figure 2 of

invention literally matches figure 5 of Z1confirming the existence of near identical prior

art much before the filing date. All of these patents teach using PU spring aids/PU

bump stop with main spring in a shock absorber. Documents C1to C4 relate to the

manufacture of the linear main spring of grade 2 with a spring aid as early as 1998 by

the opponents themselves. From the said cited documents, there is no doubt that the

application suffers lack of inventive step, as the skilled person would have been

expected to arrive at the solution in claim 1, combining his knowledge of the prior

art, with his common general knowledge in the field and his commercial sense.

Document A1, clearly proves as per IS4454 (prior to revision of 2001) that only Grade 2

steel spring must have been "used" by all without option of Grade 3 steel spring.

C1clearly proves the use of 'Grade 2' steel spring coil on its "Spirit‖ model two wheeler

launched for sale in the year 1998 by the opponent. C2 and C4 also prove the actual

use of the invention and available in public domain prior to filing date of the application.

Use of PU material for springs is also known in prior art as putforth in Z1- Z12,Y1-

Y11,B1- B6. The applicant themselves admit to have identified closest prior art i.e.,

identified the product in passenger cars, one of the most relevant prior art for this

case. Thereafter instead of addressing the 'technical' problem in adapting the known

prior art from 'passenger cars' onto 'two wheelers' the applicant in view of the 'high cost'

of some of the combinations available in prior art product, simply teaches the skilled

person to do 'cost cutting' by using 'cheaper material' and 'lesser material' for

adaptation of the product from passenger car to two wheeler in the provisional

specification. This itself is in contradiction further, since the claim in the complete

specification is relating to a 'vehicle' and not just to "two wheeler" as envisaged and

46

explained in provisional specification. Hence the two specifications and claims fail

miserably in accurate disclosure and proper claims. The point is skilled person could

have and would have arrived at the invention by adapting or modifying {as suggested in

the application} the prior art if there was a need for cost cutting and hence the invention

is obvious to the person skilled in the art (using cheaper material, lesser material and

combination thereof}.

For these reasons, it can be concluded the subject matter will be obvious to the person

skilled in the art and he would have arrived at the subject matter of claim 1in an obvious

manner. Nothing inventive can be seen in using the combination of Grade 2 single rated

spring coil with PU spring aid in association with a shock absorber. The skilled person

aiming to apply the combination of main spring with spring aid in a shock absorber

would, based on his/her technical knowledge and commercial sense, select this

combination in order to limit the cost of the end product if at all desired. There is no

disclosure of an improved technical effect associated with the said selected main

spring and selected spring aid in the specifications/claims, hence the claimed

combination is very obvious from prior art and it cannot give rise to an inventive

step also, but merely be selected as obvious for the skilled person for cost calibration

purposes of a shock absorber designed by the skilled person.

Accordingly, it is submitted that a skilled person can easily follow the prior art to

reach the combination referred in claimed invention, for commercial exploitation of a

known subject matter and hence the product allegedly claimed in the impugned

application is obvious and more so lacks inventive merit on the face of admission

of applicant themselves in the provisional specification and read with teachings of

A1,B1 TO B6, C1 to C4, Z1 to Z12 and Y1 to Y11.

Thus the assertion of applicant for having designed "less cost" product allowing to be

used for two wheelers becomes obvious, based on the combined teachings of said

documents. The product is outcome of ordinary skill, common sense and commercial

skill and exposes no technical skill of the applicant. Furthermore this objection is

applicable assuming that the shock absorber is only for the use of two wheeler with

the said combination as specified in the provisional specification.

If the same logic was to be extended onto ―shock absorber for. a vehicle" of the

complete specification, then the claim fails in its entirety as it wholly falls within the

scope of prior art admitted by applicant themselves.

Beyond the claims, the supporting documents such as the provisional specification

and complete -specification also do not demonstrate any technical advancement of

47

the claimed subject matter {i.e., combination of PU spring aid + single rated grade

2 main spring) as compared to the already existing piece of information in prior art{s).

Both the documents are silent on the technical advancement. Thus in this case the

invention lacks inventive step due to failure to demonstrate improvement over known

prior art if at all achieved in the alleged application. The said application refers to

significant advantages of maximum comfort to the passengers but there is no evidence

to prove that the application has the improved and unexpected advantageous effect.

It is respectfully further submitted the problem underlying the invention seems

not to determine the effective technical working of shock absorber but lies merely in

identifying the 'cost' management, and hence demands no inventive ingenuity. Further,

it is to be understood that a person skilled in the art would have known that PU spring

aids are expensive over rubber aids and single rated Grade 2 main springs are cheaper

than non-linear grade 3 main springs and hence the selected combination use as

claimed in claim 1and other claims on the basis of 'cost factor' is obvious. It is

submitted that the 'subject matter as a whole' was obvious at the time the invention

was made, most certainly to a skilled person in the art, due to abundant prior art

available, and hence it is clear cut motivation to arrive at the 'claims' of the impugned

application from teachings of any of the prior art references putforth in notice of

opposition, separately and in combination. The skilled person can readily perform the

invention for commercial exploitation over the whole area claimed without undue

burden and without needing inventive skill and thereby the application suffers

obviousness.

The essence of the claim is in the 'characterized portion' of shock absorber, the shock

absorber may be considered inventive only if the actual way of selecting/arranging the

main spring and spring aid was not obvious, irrespective of whether or not there was a

desire to produce the product. The inventive concept in this particular situation of this

application is the selection of materials of main spring and spring aid. Since the identity

of the main spring and spring aid and their utilities/characteristics have been predicted

in prior art, inventive concept cannot subsist in the said shock absorber and definitely

also in the method of selecting materials on the basis of cost as suggested in the

specification. Hence the application fails the test of non obviousness.

The learned agent for the Opponent 1 has filed Expert affidavit by Mr.Rajeev

Mokashi

a.The contents of provisional specification and complete specification (Form 2) are

indeed inconsistent as the narration in provisional specification starts with a "shock

48

absorber for a two wheeler" and ends with a "shock absorber for a vehicle in claim 1"

in Form 2- complete specification. The title of the Invention also changes from "shock

absorber with Spring Aid" to "shock absorber with Helper spring".

b. Assuming that applicant is seeking a claim for 'shock absorber for a vehicle' as

claimed in claim 1, the entire content of claim 1 is well known in the prior art for

many years. As a subject matter expert I can confidently say that using PU spring

aid is an art used on vehicles such as passenger cars for many decades, since

1960s. Use of Spring aid has resulted in changing the spring characteristics from dual

rated to single rated. I have not identified any new material or new construction in

the patent application challenging my knowledge on the subject of design of shock

absorber in the said application.

c.In my view the core issue - is whether bump stop is same as a helper spring or not,

in which I understand that opponents and applicants having different opinions - The

opponent stating that Helper Spring is essentially Bump Stop which is in use in

automobiles across world for many years and applicant stating that it is not bump

stop but a helper spring with additional damping function -an invention. My opinion

as a subject matter expert is that Helper spring is indeed a Bump stop or

spring aid without significant damping function & works along with coil

spring at the later part of suspension compression stroke. Every bump stop

works as a spring aid. It contributes more or less depends upon its

engagement stroke and thus also on its length. Bump stops of various length

depending on shock absorber stroke and ride & handling requirements are

commonly used. It is well known that bump stops or spring aids are also made

of polyurethane (PU), which is visco-elastic material. Urethane is elastomer

capable of good impact resistance and durability & can retain elasticity and

strength over a wide range of hardness and impact vis-a-vis rubber as

elastomer. As per my knowledge, unlike steel springs, the dynamic spring rates of

various urethanes can range many times greater than their static spring

rates, depending on the compound, hardness and density. Also, unlike steel

springs, a small percentage of the input energy is converted to heat due to

hysteresis losses in such visco-elastic material. Hence in my view, polyurethane has

been known as an ideal compound to use for shock absorption and vibration

isolation in many industries, including automotive industry. For example, such PU

springs were used in shock absorber way back in 1960s (refer encl. evidence:

Cellasto SO years BASF). Typically manufacturers custom fabricate a product to

specific chemical make-up and durometer I density to provide the stiffness

performance,taking into account the main factors that affect the spring rates,

49

shape factor, density and durometer hardness, to offer many custom products, with

varying Load Deflection characteristics to meet different needs. In the present

application, in my view the applicant is only calling it by a different name- the

same old PU Bump Stop as Helper Spring. Other current names for the same

part are Spring Aid & Jounce Bumper. I do not identify any new technical

material/disclosure in the application disclosure than what has been explained

above and thereby I state that merely calling such a PU Spring aid I Bump Stop

by a new name such as a "helper spring" & providing solution such as using a

PU spring aid with a single rated main spring for a shock absorber is not

useful to knowledgeable persons in the industry, as it is a knowledge already

available in the industry. I confidently state that having read the documents

filed by the applicant, there is nothing new or useful material that is disclosed.

d.working of Polyurethane helper spring /Bump stop and coil Spring: The title of graphs

shown in figure 4 is "graphical representation of energy dissipated in the existing and

the present subject matter". There are two curves.shown in graph: 400 ->Conventional

(presumably with rubber Bump stop & 402 ->with PU Spring aid. Working of bump stop

(referred as helper spring in the specification) along with coil spring at the later part of

stroke is very basic concept used in many suspension systems from long ago. Any

suspension design using a coil spring with a bump stop/helper spring will show identical

graphs based on shape, material and hardness I density of visco-elastic material. It is

possible to create graph with curve as 402 using rubber also. In fact various suspension

designs and Patented prior art disclose that the bump stop or helper springs are

positioned at the lower end of the suspension system , for example below the coil spring

(similar to as shown in Figures 2 and 3 of TVS Application) . Hence it is very obvious

that the bump stop/ helper spring will work or take part at the later part of the

suspension stroke. incidentally, the graph is Load Vs Deflection and plotted in one

direction only. Hence, there is no way to represent energy dissipated by Rubber or PU

Bump stop. We need to plot graph such as shown below to know energy dissipated by

hysteresis. Thus the graph shown in figure 4 does not possess any novelty and is

superfluous, without any concluding & supporting data.

50

e. It is not evident from Patent specification what are additional effects achieved by

applicant and how it is achieved as there appears no constructional differences w.r.t. to

known constructions of shock absorber. Merely, by giving a different name to known

element (i.e. calling it as helper spring or bump stop) does not change the behavior of

the element and can't produce any different characteristic like improved function by

bump stop/helper spring.

f. Heat Dissipation by suspension system: It is well known fact that the suspension

system ( for example, Spring) absorbs shocks from road induced vibrations due

to bumpy roads, ditches etc. and this absorbed energy needs to be dissipated in

form of heat by shock absorber( this has been correctly stated by Applicant.) It is

a well-known principle of transfer of energy from one form to other form. The

suspension systems are designed with controlled damping (damping ratio for

shock absorber) to ensure durability of suspension elements and rider

comfort.Rider comfort would be adversely affected if there is additional damping

force, generated during compression stroke by PU Bump stop. Hence,

shock absorber is expected to have minimal damping in compression stroke.

PU Bump stop would also need to provide minimal hysteresis in compression

stroke to improve ride characteristics. However, applicant states that energy

dissipation by PU Bump stop is advantageous in improving ride comfort. Also,

51

applicant does not provide quantitative data on how much is the dissipation of

energy by PU Bump stop Vs that by shock absorber in typical one cycle of

known amplitude and cycle time. Also, it is a fact that PU Bump stop would

function only towards later part of compression stroke Vs shock absorber which

works for the complete range of stroke. Shock absorber would dissipate more

energy if we change valves to provide higher damping ratio, with precaution that ride is

not becoming harsher.

g.Use of Grade 2 wire and PU helper spring: It is presumed that spring material

grade is as per IS 4454. It is correctly stated by applicant that the stresses in

suspension spring would be less, as limiting load supported by spring is

less, due to Bump Stop sharing it. This would lead to lower grade of spring

material for selection. However, while designing any element/system, Design

Engineer would always use his part material choice/description depending

upon functional & strength requirement as well as market requirement or

organizational guidelines etc. Based on this the 'designer selects/make choice

suitable material available in the market as the properties of these materials are

well known/published in various catalogues Standards etc. The cost of these

elements is also available to designer. Thus the designer has various choices of

selecting a material .The designer can afford to select a high cost material if the

market is ready to pay higher cost for additional durability or performance and

vice versa. The Application prima facie focuses on selection of material from a

range of various known materials, with known properties and cost, which is

general practice in all companies engaged in design activities. Hence selection of

grade 2 wire and PU helper spring does not form any new learning to society.

The learned agent for the opponent 2 submitted that this ground of opposition is based

on two merits ; firstly it is obvious, it lacks inventive step in view of the documents cited.

The learned agent for opponent 2 submitted that with the documents cited it is clearly

established that the helper spring of polyurethane material is known in the shock

absorber industries; further coil spring of grade 2 material is used by the applicant in the

shock absorber to only compensate the high cost of helper spring.

The learned agent for the opponent 2 submitted that the general meaning of Obviousness ―is that it is known to a person skilled in the art and accordingly the opponent submitted that the claimed invention does not have any inventive feature. The applicants claimed invention does not have newness in constructional features of the shock absorber. The applicant claims novelty and inventiveness on the basis of known use of known material in a coil spring and a helper spring as worded and described, is functioning independently and in the rare case of extreme jerk or jounce or shock, the

52

helper spring role comes in to the picture to absorb shock. Learned agent for the opponent 2 submitted that a person skilled in the art may select a helper spring or a coil spring made of the material as claimed by the applicant as per the application of the shock absorber. The important point is that the applicant is only selecting the material, which is one type of permutation and combination for selection of material as per application/use of the shock absorber. A person skilled in IPR will clearly understand that the Applicant's claims are not

eligible for the: grant of a patent as the invention does not have novel construction of

the shock absorber, and the Applicant's claims merely relate to a known use of a

known material. Selection of a material for "Coil Spring" or "Helper Spring" is

solely based on the application of the shock absorber or the cost of the shock

absorber; There is no inventiveness in the selection of the material. , which is known

in the spring and the shock absorber industry.

The Applicant has characterized in Claim one " characterized in that said spring 116

being made from grade -2 wire and said "Helper Spring" 122 being made from

polyurethane." This means that the features or constructional features claimed prior to

the word 'characterized' in claim one, are not novel and are known in the industry and

is therefore prior art. As discussed above, the complete description as worded,

described and claimed does not have novelty and Inventiveness.

Reply from the applicant

Learned agent for the applicant submitted case laws

In paragraph 27, the Supreme Court in Bishwanath Prasad, A.I.R. 1982 S.C. 1444, laid

down the test for determination of inventive step. The Supreme Court said that, ―Had

the document been placed in the hands of a competent craftsman (or engineer as

distinguished from a mere artisan), endowed with the common general knowledge at

the 'priority date', who was faced with the problem solved by the patentee but

without knowledge of the patented invention, would he have said, "this gives me what

I want?" (Encyclopedia Britannica; ibid). To put it in another form: "Was it for practical

purposes obvious to a skilled worker, in the field concerned, in the state of knowledge

existing at the date of the patent to be found in the literature then available to him, that

he would or should make the invention the subject of the claim concerned?" Thus,

according to the Supreme Court, the inventive step should be assessed with

reference to a person skilled in the art. If the problem faced by the patentee can be

solved by such a skilled person in the art by referring to the cited prior art then the

invention claimed by the patentee is obvious and is not patentable.

53

Common General Knowledge: In paragraph 27, the Supreme Court in Bishwanath

Prasad, A.I.R. 1982 S.C. 1444, articulated a profile of the person skilled in the art. The

Supreme Court said that, ―Was it for practical purposes obvious to a skilled worker, in

the field concerned, in the state of knowledge existing at the date of the patent to be

found in the literature then available to him, that he would or should make the invention

the subject of the claim concerned?" (Emphasis added by underline). Thus, the

Supreme Court defined the person skilled in the art as a skilled worker who is having a

knowledge that he could have found in the literature available to him.

In the case of Roche v Cipla, the Delhi High Court delivered judgement in November

2015, RFA (OS) 92/2015, wherein the Court relied for claim construction on the

principle laid in Unichem Laboratories. The court said, ―Before we apply the

aforenoted legal position to the facts of the instant case we need to discuss the legal

position concerning construction of claims. In the decision reported as AIR 1969

Bombay 255 FH & B Vs. Unichem Laboratories it was held that specifications

end with claims, delimiting the monopoly granted by the patent and that the main

function of a Court is to construe the claims without reference to the specification; a

reference to the specification being as an exception if there was an ambiguity in the

claim. Claims must be read as ordinary English sentences without incorporating into

them extracts from body of specification or changing their meaning by reference to

the language used in the body of the specification.‖

The learned agent for the applicant submitted that Opponent objected to the grant of the

patent for the Application on the ground under Section 25(1)(e) that the invention as

claimed in any claim lacks inventive step or the invention is obvious for the person

skilled in the art. However, the Opponent could not provide evidence of disclosure in

any document that the single rated coil spring made up of grade-2 steel wire and the

polyurethane helper spring are used in any shock absorber. The Opponent always

misunderstood the use of a polyurethane bump stop as the polyurethane helper spring.

The Applicant submitted that the bump stop and the helper spring, which is also called

as a spring aid, are different. Whereas the helper spring operates as main spring to

oppose the upswing of a wheel over a longer stroke, the bump stop operates to provide

cushion against bottoming out of the main coil spring. In support of this, the Applicant is

submitting herewith a copy of an affidavit which provides an opinion of an expert. As per

the expert,

―Spring aid enhances the characteristics of the spring over a considerable period of its

travel, whereas the bump stop acts only for a very short period of travel and effectively

acts as a stopper to avoid bottoming. As the name suggests, the bump stop comes into

54

action only towards end of stroke of the shock absorber. The bump stop helps to

prevent bottoming of the shock absorber whereas the spring aid helps to improve ride

comfort by way of re- enforcing the dynamic characteristics of the spring and

also preventing bottoming.‖

The learned agent for the applicant submitted that the Opponent has failed in

demonstrating that the invention as claimed lacks inventive step, because each of the

documents cited by the Opponent and the combination thereof does not disclose all the

features of the claimed invention. The Opponent has cited 29 US documents.

The Applicant submitted that the inventive step as claimed in the invention lies in the

arrangement of a single rated coil spring made up of grade-2 steel wire and a

polyurethane helper spring used in combination with other components or parts of a

shock absorber, working in tandem with each other and the fluid chamber to provide

comfortable ride to a passenger by effective dissipation of the heat without any time lag.

Learned agent for the applicant submitted that as evident from the discussions related

to the prior arts cited by the Opponent, none of these prior arts, taken either alone or in

any combination thereof, would enable a skilled person to arrive at the invention..

Furthermore, the Applicant submitted that the invention also has a distinct advantage

when considered in light of the cited prior arts. The arrangement of the single rated coil

spring and the helper spring provides the technical advance of effective dissipation of

the energy during the dampening process without any time lag. This ultimately provides

the comfort to the rider of the vehicle. Further, the use of grade-2 steel wire for

manufacturing the single rated coil spring proves to be cost effective solution.

The Applicant submitted that the person skilled in the art is an engineer working

for at least 6 to 8 years in the field of development of a suspension system for a vehicle

or in the field of development of a shock absorber. On the date of the Application, a

person skilled in the art would have the following knowledge: that the spring should be

multi rated and should be made from Grade 3 or Grade 4 wire to take care of dynamic

load; that the bump stop should be provided to avoid bottoming of the spring; that Grade

2 wire should not the used to manufacture the spring for a vehicle; and that the spring

should be multi rated. Such a skilled person in the art would never refer the cited

documents to solve the problem of improving the comfort of the ride or, even if he refers

to such documents, he would never come with the idea of using a single rated coil

spring made up of Grade 2 steel wire and using a helper spring made from

polyurethane, working in combination with a fluid chamber. Therefore, if we apply the

test laid down by the Supreme Court in Bishwanath Prasad, the skilled person who was

55

faced with the problem solved by the invention as claimed in the Application, but without

knowledge of the patented invention, would not have said, "This gives me what I want?

Therefore, the invention as claimed in the Application is inventive.

In order to prove that the invention as claimed lacks inventive step, the Opponent

should have produced evidence of what the knowledge a person skilled in the art would

have possessed on the date of the application and, in view of his knowledge, how the

cited document or documents would have made the invention obvious to him. The

opponent neither cited the relevant document nor evidenced the knowledge that a

person skilled in the art would have possessed on the date of the Application. The

Opponent made general statements without any reasoning and opposed the Application

on the ground of lack of inventive step. Therefore, the Opponent has miserably failed to

substantiate the ground for lack of inventive step. In view of the above, it was submitted

that the Opponent has failed to counter the ground of lack of inventive step of the

invention as claimed.

Learned agent for the applicant also submitted a evidence by way of an affidavit

of Mr.Ojus Joseph Jacob

That I was approached by the aforesaid Applicant to examine and provide my opinion

on the following queries in the context of a patent application number

1120/CHE/2007:

A. Whether the polyurethane helper spring and the linear spring are working together,

as shown in Figure 4 of the specification for patent application number 1120/CHE/2007.

B. Please explain how the rider comfort is dependent upon the heat dissipation

characteristics of a shock absorber,

C. What is the difference between spring aid or helper spring with respect to bump stop

D. What are the challenges to design a shock absorber, such as space, height,

rate of heat dissipation, cost, manufacturing complexities

E. What is normally understood by a person skilled art the meaning of Grade2 wire for

manufacturing of a spring for the shock absorber

F. Explain the working of a linear and a non-linear spring. What are the relative

advantages?

Ans for A : The polyurethane helper spring is activated by a one end of a damper after

first part of travel of linear spring. Thereafter, the polyurethane helper spring and the

56

linear coil spring work in tandem during the latter part of the stroke to provide comfort to

the rider by effectively dissipate the energy with minimum time lag. As can be

understood from Figure 4, the linear spring is absorbing and dissipating the energy for

the first part of the travel of the shock absorber and thereafter the polyurethane helper

spring together with the linear spring absorbs and dissipates the energy logarithmically.

It is inherent from the construction and the relative placement of the polyurethane helper

spring the combined effect is achieved.

Ans for B: A shock absorber works on the principle of absorbing shocks coming from

the road and dissipating the shock energy in the form of heat, thereby ensuring

comfort and vehicle control to the rider. As the vehicle moves over bumps and

potholes, due to the movement of the sprung mass and the unsprung mass, the

restricted damping of the shock absorber fluid causes temperature rise. This heat has to

be dissipated at a desirable rate. Otherwise the damping medium will lose its

effectiveness due to factors like reduced viscosity and cavitation. Thus heat dissipation

characteristics are important to enable the shock absorber retaining its capacity for

continued shock absorption.

Ans for C: Spring aid enhances the characteristics of the spring over a considerable

period of its travel, whereas the bump stop acts only for a very short period of travel and

effectively acts as a stopper to avoid bottoming. As the name suggests, the bump stop

comes into action only towards end of stroke of the shock absorber. The bump stop

helps to prevent bottoming of the shock absorber whereas spring aid help us to improve

ride comfort by way of reinforcing the dynamic characteristics of the spring.

Ans for D: Typical challenges in designing a shock absorber for an automotive vehicle

are many, starting from the space available to mount the shock absorber to the finer

requirements of aesthetic appeal, corrosion and durability requirements. The challenges

arise primarily from matching engineering and design feasibility with customer

requirements.

Ans for E. Spring wire is typically made of different grades of material which refer to the

tensile strength of the wire as per Indian Standard (IS) 4454. Grade number refers

to particular level of strength. Higher the grade number, higher is the strength of

the wire & higher is the cost of the raw material owing to higher additives of other

chemical elements and process treatments of the spring wire.

16. Space constraint in shock absorber design & packaging enforces use of

higher grade of wire. Typically higher grade wire has additives in form of noble additives

57

to increase strength, thereby increasing cost. A spring made of grade 2 can have a set

problem if used in an overstressed condition. For the same over stressed condition the

solution would be to opt for a higher grade of wire material.

11. The key challenges to design shock absorber are:

1) Layout space - Stroke availability and outer cage envelope.

2) Height of vehicle & ground clearance

3) Packaging of parts in vehicle

4) Energy to be dissipated & rate of dissipation under dynamic conditions

5) Payload of vehicle & occupant weight (function of above 4)

6) Manufacturing feasibility of design

7) Cost of material &total manufacturing cost

8) Material selection & availability

9) End fitting points

10) Ride characteristics

11) Installation angle on vehicle

12. The fitment space constraint (more particularly on a two wheeler) decides the

available stroke for the shock absorber which has a large influence on the ride

characteristics. Sufficient load carrying capacity is necessary to prevent bottoming for

better comfort a suspension that has a longer travel would be preferred. The space

limitation in the lateral direction also puts challenges on the size of spring that can be

packaged.

13. The end fitment points play an important role in achieving desired ride

comfort and often it is a challenge to find the right points due to the packaging

constraints of other neighborhood parts.

14. Some of the design features to overcome these technical challenges and meet both

business and end customer requirements lead to to higher cost solution in terms of

costly materials and costly process, which can impose trade off challenges.The

58

manufacturing complexities also increase with technical solutions like use of higher

grade springs, improved coatings, high accuracy child parts of the damper etc.

Ans for F: Linear rated spring has a single stiffness rating throughout its travel while a

non-linear spring will have more than one progressive stiffness rating.

18. Use of a non-linear rated spring in a suspension caters to the requirement of

carrying variable loads under different terrain conditions with better comfort and vehicle

stability for the available travel of the shock absorber.

19. While non-linear spring enables achieving exponential ride characteristics

&enhanced ride comfort, it inherently results in adverse cost impact due to need

for selection of higher grade material or thicker wire diameter.

My analysis

Objective of the invention: Present invention proposes a method of increasing the

performance and durability of shock absorbers by ensuring the energy absorbed by the

spring of the shock absorber is efficiently and effectively dissipated to the surroundings

and this leads to substantially improvement in passenger ride comfort and durability of

the shock absorber.

Solution for the problem :A shock absorber comprises of single rated coil spring , made

up of a grade 2 wire , supports the weight of the vehicle and absorbs road shocks

rapidly .The energy absorbed by the single rated coil spring is then dissipated in the

form of heat by dampening fluid of the shock absorber. the said shock absorber also

comprises of a helper spring that is slidably and concentrically disposed on the piston

rod .The helper spring is made of polyurethane and has diameter that is substantially

less than that of the single rated coil spring, Polyurethene possesses the property of

efficiently absorbing and dissipating energy, thereby aiding single rated coil spring in

energy dissipation.

1.US4756516 (Z1) relates to a resiliently deformable element made of an elastomeric

material having a microcellular structure, which can be used as an end stop in a motor

vehicle suspension, in particular a suspension of the Mac Pherson type.

59

Reference numeral 1 denotes

Shock absorber

2----- coil spring coaxial with it

3—deformable element

FIG. 4 schematically represents a section of a suspension on which the deformable

element of the invention is utilised;FIG. 5 is a resilient characteristic of a suspension

with the deformable element of the invention.

According to the present invention there is provided a resiliently deformable element

made of elastomeric material having a microcellular structure which can be used as an

end stop in a motor vehicle suspension, the said element having a tubular from and an

axial hole through which passes the rod of a shock absorber, an upper end adapted to

engage a suitable seating of the motor vehicle body and a lower end contacted in use

by a surface of the shock absorber casing, characterized by the fact that it includes a

60

first part which is delimited internally and externally by coaxial surfaces and a second

part of annular form coaxial with the first part and which projects axially therefrom, the

area of any section of the said second part taken on a plane orthogonal to the

longitudinal axis of the element being less than half the cross sectional area of the said

first part taken on any such plane, and the axial length of the said second part being

less than that of the said first part.

The deformable element 3 of the invention, which is substantially of tubular form, is

traversed by the rod 6 of the shock absorber and its upper end engages on another

annular rubber bearing block 13 with the interposition of a plate 23. The axial length of

the deformable element 3 is chosen in such a way that the lower end thereof will not be

in contact with the casing 4 of the shock absorber when the suspension is in its rest

position, but is located at a certain distance from the casing itself as is clearly seen in

FIG. 4.

As soon as the upper surface 24 comes into contact with the surface 25 of the

deformable element 3, this latter also contributes to supporting the load which acts on

the suspension, together with the spring 2, and therefore the overall characteristic of the

suspension now also depends on the characteristic of this element.

The deformable element of the invention is made of an elastomeric material having a

microcellular structure, that is to say comprising closed and open cells of extremely

small dimensions; conveniently such elastomeric material is a polyurethane or a rubber.

The element is made by means of the usual forming technologies for microcellular

materials, utilizing molds able to form such an element.

Upon continuing deformation of the suspension, the first part 16 of the deformable

element 3 is also deformed which, during the deformation itself works substantially

under compression; when this part is deformed it still has an annular form and is

delimited externally by a surface which has a diameter greater than that of the

cylindrical surface 18 which delimits this part in the undeformed configuration.

It has been found that the characteristic of the element 3 is not linear and has an

increasing slope with an increase in the deformation, that is to say the rigidity of this

element increases with an increase in the deformation itself.

It has been found that the deformable element 3 has an almost indefinite life and is not

subject to rupture by fatigue; this favorable result depends on the fact that all the

material of the deformable element works substantially under compression; in fact, even

the second part 19 of this element, while being subjected to very high deformations,

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works solely under compression as distinct from what took place in deformable

elements of the prior art type in which the more deformable parts worked instead in

flexure.

A deformable element according to claim 1, characterised by the fact that the said

elastomeric material of microcellular structure is polyurethane.

Carefully considered the comparison drawing provided by the opponent 1

An illustration of figure 2 of invention and figure 4 of Z1will identify the near

similarity in construction. The deformable element of the prior art invention is

adapted to be mounted on a motor vehicle suspension of a type such as that

illustrated in FIG. 4 of Z1 (Mac Pherson), substantially comprising a shock absorber

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1, a coil spring 2 coaxial with it and the deformable element itself, indicated with the

reference numeral 3,which is similar with the construction of single rated coil spring

116 and piston 114 of the TVS 1120/CHE/2007 patent application.

Further referring to figure 4 of the application and figure 5 of Z1, which are graphical

representation of the performance indicates that identical performance is achieved in both.

The illustration of the two graphs is given below.

With above figures, it is clear that impugned application and cited prior art using and

capturing the same characteristics/benefits of coil spring and a helper spring made of

polyurethane.

2.DE 10034563 A1(herein after referred as D1) relates to a spring element

containing an insert (1) consisting of a compact material that is more rigid than

the material that the spring element consists of, a part (2) that functions as a

helper spring and a part (3) that functions as a spring pad. The spring elements

63

produced from polyurethane elastomers are used in automobiles addition products, for

example within the chassis, example, on the basis of elastic plastic materials, such as

rubber or elastomers based on polyisocyanate poly, such as polyurethanes and / or

polyureas, uses, and are well known. They are particularly used in motor

vehicles as overload springs, impact dampers or stops.

3.Spirit spare parts catalogue (herein referred as AA) (DOC.NO.36020106 dated

010998) referred Plate no: 28 rear shock absorber , Fig no:5 (part no: 29171001)—Rear

shock absorber spring .. PE/29/MM/CH/A542. As per this grade 11 steel wire has

been used.(clearly indicated in the drawings C1 to C4).

4. STEEL WIRE FOR MECHANICAL SPRING SPECIFICATION IS4454 (PART 4)

:2001 –BUREAU OF INDIAN STANDARDS (herein after refrred as A1).

.grades : The stainless steel wire shall be of three grades designated as Grade 1,

Grade 2 and Grade 3 respectively.

Table 1 shows the chemical composition

Table 4. shows the tensile strength for stainless steel spring wire.

Table 5.Reference Data for the modulus for elasticity and Rigidity

I have considered the affidavit provided by the Learned agent for the applicant By Mr.

Ojus Joseph Jacob

64

(A)Spring aid enhances the characteristics of the spring over a considerable

period of its travel, whereas the bump stop acts only for a very short period of

travel and effectively acts as a stopper to avoid bottoming. As the name suggests,

the bump stop comes into action only towards end of stroke of the shock absorber. The

bump stop helps to prevent bottoming of the shock absorber whereas spring aid

help us to improve ride comfort by way of reinforcing the dynamic characteristics

of the spring.

(B)Spring wire is typically made of different grades of material which refer to the tensile

strength of the wire as per Indian Standard (IS) 4454. Grade number refers to

particular level of strength. Higher the grade number, higher is the strength of

the wire & higher is the cost of the raw material owing to higher additives of other

chemical elements and process treatments of the spring wire.

(C)Some of the design features to over come these technical challenges and meet

both business and end customer requirements lead to to higher cost solution in

terms of costly materials and costly process, which can impose trade off

challenges.The manufacturing complexities also increase with technical solutions like

use of higher grade springs, improved coatings , high accuracy child parts of the

damper etc.

(D): Linear rated spring has a single stiffness rating throughout its travel while a

non-linear spring will have more than one progressive stiffness rating.

Use of a non-linear rated spring in a suspension caters to the requirement of

carrying variable loads under different terrain conditions with better comfort and

vehicle stability for the available travel of the shock absorber.

While non-linear spring enables achieving exponential ride characteristics

&enhanced ride comfort, it inherently results in adverse cost impact due to

need for selection of higher grade material or thicker wire diameter.

Further I have considered the expert affidavit filed by learned agents of Opponent 1 by

Mr.Rajeev Mokashi( extracts have been reproduced with better clarity)

1. My opinion as a subject matter expert is that Helper spring is indeed a Bump

stop or spring aid without significant damping function & works along with coil

spring at the later part of suspension compression stroke. Every bump stop works

as a spring aid. It contributes more or less depends upon its engagement stroke and

thus also on its length. Bump stops of various length depending on shock absorber

65

stroke and ride & handling requirements are commonly used. It is well known that

bump stops or spring aids are also made of polyurethane (PU), which is visco-

elastic material. Urethane is elastomer capable of good impact resistance and

durability & can retain elasticity and strength over a wide range of hardness and

impact vis-a-vis rubber as elastomer.

2. in my view the applicant is only calling it by a different name- the same old PU Bump

Stop as Helper Spring. Other current names for the same part are Spring Aid &

Jounce Bumper. I do not identify any new technical material/disclosure in the

application disclosure than what has been explained above and thereby I state that

merely calling such a PU Spring aid I Bump Stop by a new name such as a "helper

spring" & providing solution such as using a PU spring aid with a single rated main

spring for a shock absorber is not useful to knowledgeable persons in the

industry, as it is a knowledge already available in the industry. I confidently state that

having read the documents filed by the applicant, there is nothing new or useful

material that is disclosed.

3. It is a well-known principle of transfer of energy from one form to other form. The

suspension systems are designed with controlled damping (damping ratio for shock

absorber) to ensure durability of suspension elements and rider comfort. Rider comfort

would be adversely affected if there is additional damping force, generated during

compression stroke by PU Bump stop. Hence, shock absorber is expected to have

minimal damping in compression stroke. PU Bump stop would also need to provide

minimal hysteresis in compression stroke to improve ride characteristics. However,

applicant states that energy dissipation by PU Bump stop is advantageous in improving

ride comfort. Also, applicant does not provide quantitative data on how much is the

dissipation of energy by PU Bump stop Vs that by shock absorber in typical one

cycle of known amplitude and cycle time.

4. Use of Grade 2 wire and PU helper spring: It is presumed that spring material grade

is as per IS 4454. It is correctly stated by applicant that the stresses in suspension

spring would be less, as limiting load supported by spring is less, due to Bump Stop

sharing it. This would lead to lower grade of spring material for selection. However,

while designing any element/system, Design Engineer would always use his part

material choice/description depending upon functional & strength requirement as

well as market requirement or organizational guidelines etc. Based on this the

'designer selects/make choice suitable material available in the market as the

properties of these materials are well known/published in various catalogues Standards

etc. The cost of these elements is also available to designer. Thus the designer has

66

various choices of selecting a material .The designer can afford to select a high cost

material if the market is ready to pay higher cost for additional durability or

performance and vice versa. The Application prima facie focuses on selection of

material from a range of various known materials, with known properties and cost,

which is general practice in all companies engaged in design activities. Hence selection

of grade 2 wire and PU helper spring does not form any new learning to society.

I have considered the following chart provided by the Learned agent for Opponent 1 for

comparison studies.

I have referred Page no: 5 of the complete specification page no:5 under the heading of

detailed description : Description herein is a shock absorber for a vehicle that is a

combination of a single rated coil spring and a helper spring.The helper spring is made

of polyurethane and is used in tandem with the single rated coil spring.Such layout

substantially improves the ride comfort of occupants of the vehicle and durability of the

shock absorber due to the fact that polyurethane facilitates quick dissipation of

absorbed energy.But merely adding the helper spring to the shock absorber

substantially increases the over all cost of the shock absorber, as the material used in

the manufacturing of the helper spring is very costly. Thus inorder to compensate for

increase in cost of shock absorber , the non-linear rated spring is replaced by a grade 2

wire single rated coil spring, grade 2 wire that is commonly being used in manufacturing

of shock absorber springs.

Further it is referred in the page no: 7 of the description line no: 8, Further , the single

rated coil spring 116 is made of a grade – 2 steel wire, which is substantially

cheaper than the commonly used grade 3 wires.

67

I have to agree with the learned agents for the opponents that, Applicant tried to use

cheapest combination. But I have to consider whether it will qualify for inventive step in

accordance with Provision of Section 2(1)(ja) of the Patents Act.

I have referred order 133of 2015 (OA/37/2013/PT/DEL) by Hon’ble IPAB there it is

stated

14. The crux of the question involved in this appeal is whether the claimed invention

of the appellant is patentable. In order to consider the said question it is relevant to

refer the provision of definition of invention under Section 2 of the Patents Act, 1970 as

interpreted by the Hon’ble Apex Court in a landmark case NOVARTIS AG &

OTHERS Vs. UNION OF INDIA & OTHERS reported in 2013 (54) PTC 1 (SC) as

hereunder;

―Section 2. Definitions and interpretation.— (1) In this Act, unless the context

otherwise requires,— (ac) "capable of industrial application", in relation to an

invention, means that the invention is capable of being made or used in an industry;

(j)"invention" means a new product or process involving an inventive step and capable

of industrial application; (ja) "inventive step" means a feature of an invention that

involves technical advance as compared to the existing knowledge or having economic

significance or both and that makes the invention not obvious to a person skilled in the

art;‖

Extracts from Judgment of the Hon’ble Supreme Court (Civil Appeal nos.2706-2716 of

2013.Novartis vs Union of India & Others)

88. Section 2(1)(j) requires a product to satisfy three conditions to qualify as an

invention.

(i) It must be ―new‖, that is to say it must not have been anticipated;

(ii) Its coming into being must involve an ―inventive step‖; and

(iii) It must be ―capable of industrial application‖, that is to say it must be capable of

being made or used in an industry [section 2(1)(ac)].

68

89. “Inventive step” is separately defined in section 2(ja) to mean a feature of an

invention that involves technical advance as compared to the existing knowledge,

or having economic significance or both and that makes the invention not

obvious to a person skilled in the art. To paraphrase, the invention that creates

the product must have a feature that involves technical advance as compared to

the existing knowledge or having economic significance or both and this feature

should be such as to make the invention not obvious to a person skilled in the

art.

90. On a combined reading of causes (j), (ac) and (ja) of section 2(1), in order to qualify

as ―invention‖, a product must, therefore, satisfy the following tests:

(i) It must be ―new‖;

(ii) It must be ―capable of being made or used in an industry‖

(iii) It must come into being as a result of an invention which has a feature that:

(a) entails technical advance over existing knowledge;

Or

(b) has an economic significance

And

(c) makes the invention not obvious to a person skilled in the art.

If you read the above decision with the provision of Section 2(1)(ja) in accordance with

the Patents Act , It is very clear that , In order to pass the test of Inventive step

applicants should show a feature or features which are contributing to the invention

should have technical advancement over existing knowledge and/or should have

economic significance along with that applicants must show that the same feature or

features are not obvious to the person skilled in the art.(Emphasis mine)

After going through the specification and considering the arguments from the learned

agents of applicants and the learned agents opponents, No doubt arise in my mind that,

this invention is having economic significance. However It is mandatory to check

whether the features involved in the present invention are not obvious to the person

skilled in the art in order to qualify the test of inventive step.

69

I have referred decision Of Hon’ble IPAB (Order no: 59/2011, in the matter

M.P.No.86/2010 IN OA/8/2008/PT/CH AND OA/8/2008/PT/CH).relevant para

reproduced here with better clarity.

63. The learned counsel then observed that the individual components were

known; the combination of components was known. ―The emphasis of the plaintiff

has been only on the combination of the thickness of different material and in the

absence of any evidence having been recorded, at the prima facie stage, it cannot be

said that there is an element of newness in it which would give it the right of being

patented. As to which thickness of each of the components would best combine to

given an appropriate result, is a mere matter of experimenting with different thickness.

It prima facie does not appear to have an inventive quality. It is thus not a case of

defense of mosaicing by the defendant by of the plaintiff using known factors and

materials to make some adjustments and then claiming patent in the same to preclude

others from doing the same. This would not be permissible.‖

64. In the present case, the introduction of moisture absorbing agent is known. What

is the quantity that should be introduced to obtain the desired result of the said quantity

being sufficient to last the lifetime of the switchgear is a mere matter of experiment with

increased quantities of SF6. It is to be accepted that there is newness in it. As regards

hygrometers, it may be remembered that only in this alleged invention that the

hygrometer was introduced and what it does? According to the appellant, it only assures

that the moisture absorbing agent is functioning correctly. This is the function of a

hygrometer wherever it is introduced and the appellant does not claim anything more

regarding the function of hygrometer apart from anything extracted above, namely

monitoring the condition of the moisture absorbing agent and assuring that it is

functioning correctly. This is what an hygrometer does wherever it is introduced and that

is why the Controller refused the grant of patent by stating that using an hygroscope in

combination with an moisture absorbing agent containing a specified amount of a

moisture absorbing chemical is not an inventive feature over the prior art. Therefore,

we are inclined to agree with the impugned order and accordingly, the appeal is

dismissed. M.P.No.86/2010 is allowed. No order as to costs.

I have referred Judgment issued by the Hon’ble Supreme Court of United states in

KSR INTERNATIONAL CO.v. TELEFLEX INC.ET AL no: 04-1350.

(Relevant para reproduced here with for better clarity)

70

Held: The Federal Circuit addressed the obviousness question in a narrow, rigid

manner that is inconsistent with §103 and this Court‘s precedents. KSR provided

convincing evidence that mounting an available sensor on a fixed pivot point of the

Asano pedal was a design step well within the grasp of a person of ordinary skill in the

relevant art and that the benefit of doing so would be obvious. It arguments, and the

record, demonstrate that the Engelgau patent's claim 4 is obvious.

It is very clear that patent document Z1 clearly discloses the shock absorber having

feature of coil spring and deformable element made of Polyeurothene.Patent document

D1 discloses a helper spring made of Polyurethane , Spirit catalogue along with the

drawings given by the opponents(C1 to C4) and BIS IS4454 (PART 4)-2001 shows

clearly the use of grade 2 steel wire. It is obvious for a person skilled in the art would

able to combine the teachings of the prior art documents in order to arrive at the

invention as claimed. Further It is very clear that applicant tried to select the available

known materials by routine experimentation in order to form a combination and result

achieved with this combination is predictable to a person skilled in the art in view of

available prior art documents submitted by the Opponents.

Based on the arguments and submissions along with the expert affidavit presented by

learned agents for applicant and the learned agents of the Opponents along with the

expert affidavit and my own analysis, I find merit in the arguments put forward by the

learned agents for the opponents and came to a conclusion that Opponents have fairly

succeeded in establishing this ground of lacking inventive step and this application for

patent is liable to rejected on this ground alone.

28.Section 25(1)(f)[Not a patentable invention]

Arguments and submission by the opponents

Learned agent for the Opponent 1 submitted that the invention relating to "shock

absorber of a vehicle" is nothing but an arrangement which is a replica of known prior

art of shock absorber in passenger cars as admitted by applicant in provisional

specification. Prior art was known, published and used in public domain. Further all

71

components function independently of one another in a known way, without

any improvement in performance together excepting as known in prior art. It is a mere

disclosure relating to 'selection' on the basis of "cost reduction", without any

consideration or addressing the issue of technical functionality of the components

and disclosing any technical advancements in the subject matter.

The learned agent for the Opponent 2 submitted that the application falls under section

3(f) of the Patents Act. The learned agent for opponent submitted that ―coil spring‖116

being made from grade 2 wire and said Helper spring 122 is being made from

polyurethane are functioning independently. The helper spring and coil spring have no

co relation in combined working. The main spring i.e. Coil spring 116 is functioning in

coordination with the piston assembly, But not with a helper spring. The helper spring is

placed at one end of the piston rod, to prevent collision or direct collision of metallic

faces, or to absorb shock due to heavy jounces, which occurs rarely in deep pot holes.

The helper spring which is nothing but a sleeve type component , is made of a material

to absorb shock. A sleeve component placed on the piston rod is being used in the

shock absorber industry from the inception of shock absorbers, as per the application of

shock absorbers.

Arguments and submissions by the Applicant

The learned agent for the applicant submitted that with regard to the objection under

Section 3(f), the Applicant submitted that though some of the individual components

may be well known in the art and may have been used for different purpose, the

combination of such components acting in tandem to provide comfort to the passenger

of a two-wheeler was not known in the art.

The Applicant further asserted that such combination produces a significant

technical advantage over the previously known art. A single rated coil spring of

grade-2 wire and a polyurethane helper spring, in combination with a fluid chamber, all

working in tandem with each other, provide an effective absorption and dissipation of

energy without any time lag. The polyurethane helper spring is activated by one end of

the fluid chamber after first part of travel of the single rated coil spring. Thereafter, the

polyurethane helper spring and the single rated coil spring work in tandem during the

latter part of the stroke to provide comfort to the rider by effectively dissipating the

energy without any time lag. Figure 4 in the specification clearly shows the

enhanced dissipation of energy by the single rated coil spring of grade-2 wire when

used in combination with the helper spring made of polyurethane. It is inherent that

72

the combined effect is achieved from the construction and the relative placement of the

polyurethane helper spring.

Therefore, the Applicant submitted that the invention is not a mere arrangement or re-

arrangement of known devices, but, as per the requirement laid down by the Supreme

Court,(Supreme Court in Bishwanath Prasad A.I.R.1982 S.C.1444) involves working of

the helper spring of polyurethane and the single rated coil spring of grade-2 steel wire in

tandem with each other and with other components of the shock absorber

My analysis.

I have given due consideration to the arguments and submission put forward by the

applicant along with the case law and submission put forward by the learned agent for

the Opponents.

What section 3(f) states that mere arrangement or rearrangement or duplication of

known devices each functioning independently of one another in a known way.

I am not denying the fact that opponent has proved the fact the invention lacks inventive

step in accordance with section 2(1)(ja) of the Patents Act but in order to prove that the

invention is not patentable in accordance with section 3(f), the opponent is duty bound

to show that devices are working independently .

Here it is very clear that combination of Grade 2 coil spring and polyurethane helper

spring are essential features of the shock absorber and has to work dependently for the

functioning of the shock absorber in accordance with the present invention and in view

of this, I have concluded that Opponents have failed to prove this ground.

29.Section 25(1)(g)[Insufficiency of Disclosure]

Arguments and submission by the opponents

Learned agent for the Opponent 1 submitted that the complete specification is

insufficient due to inconsistent statements and it is also wholly beyond the scope of the

provisional specification which have detailed in notice of opposition and also during

hearing. Further the invention discloses no technical teaching excepting addressing

73

cost factor (a factor known to one and all and which is commercial decision and not a

technical teaching) for a cheap and less material selection for purpose of cost saving.

Regarding the scope of a provisional specification versus complete specification, the

claim 1 of the complete specification must be contained in the document from

which priority is claimed which is equivalent to the provisional specification [case law :

refer para 27 to 32 IPAB order dated 21.3.2014 in the matter of

OA/15/2009/PT/MUM The provisional cannot form a priority basis for the complete

specification of this application since the essential elements and claims of the

invention as disclosed in the complete specification are all missing in the provisional.

Learned agent for the Opponent 2 submitted that the applicant has not provided

following details

1. The constructional features of the helper spring are not provided.

2. The description is not clear, conflicting and non-definitive.

3. The claims are not clear and definitive.

4. The constructional features are not clear in the claims.

5. The inter connection of the parts and their interconnecting functionality is not

provided in the description and claims.

Learned agent for the Opponent 2 submitted that the object of the invention is to

provide a comfortable ride to a rider. The applicant has not claimed any method

claim. Fig: 4 show a graph of energy dissipation, as mentioned under the brief

description of the drawings. In the graph X –axis shows deflection, whereas Y-

axis shows the load. The graph shows two curved lines named 400 and 402.

Their graph or the description do not clearly state about the deflection mean. It is

not clear that the deflection term is addresses are in respect to what. The

opponent submitted that it is not clear from the graph that dissipated energy is

heat energy or kinetic energy of the spring. Further a comparison of two curves is

made for non-linear ―coil spring ―and single rated coil spring in combination with

the helper spring. The opponent submitted that the comparison is irrelevant

unless curves are compared for the same type of coil spring, i.e., Grade -2 single

rated with Helper spring made of other material and polyurethane material,

because the applicant claims novelty and inventive steps in a single rated coil

spring made of grade 2 with helper spring made of polyurethane material. Rather

the application is focused on a helper spring made of polyurethane material and

grade 2 material of coil spring selected to compensate the high cost, which is

nowhere related to the inventive steps.

74

Learned agent for the opponent 2 submitted that, it is wrongly described that

comfort is related to heat dissipation form the piston rod assembly. The rider

comfort is related to absorption of the load by the coil spring and least oscillation

by dampening effect (oscillation of the coil spring) by piston rod assembly. It is

wrongly described by the applicant that polyurethane ―Helper spring ―works in

combination with a single rated ―Coil spring ―of Grade 2 material , which gives

faster energy dissipation. The heat dissipation depends to the surface of the

piston rod assembly, not on the helper spring.

Learned agent for the Opponent 2 submitted that the applicant wrongly used the

word tandem under the detailed description (page no:5), the opponent explained

with the support of figure 2 and 3 that the helper spring does not work in tandem

with the coil spring. The coil spring as shown and understood is nothing bit a

bump stock. A helper spring never works in tandem with a coil spring but in rare

cases, it works with the piston rod assembly, in case of excessive jerk/shock, the

helper spring absorbs the shock load only.

The learned agent for the opponent 2 submitted that the applicant at page no: 7 ,

under the heading of detailed description mentioned ―the single rated coil spring

116 opposes slidable movement of the piston rod assembly in the compression

direction and also support the weight of the vehicle. The opponent submitted that

it is a wrong statement in the description and reversely stated. In practice , the

coil spring takes the weight of the vehicle and the passenger, and the piston rod

assembly does damping function only.

The learned agent for the opponent submitted that , the applicant on page no:7

mentioned that ―further , the single rated coil spring 116 is made of grade -2 steel

wire, which is substantially cheaper than the commonly used grade 3 steel wires.

The opponent submitted that the applicant used a single rated soil spring 116

made of grade 2 steel wire only for the purpose of cost factor. No inventive steps

are described in the detailed description. The opponent further points out the

word commonly which establish the single rated coil spring 116 is made of grade

2 steel wire are already being use prior to the applicants priority date in the shock

absorber industries.

The learned agent for the opponent submitted that ―the applicant states at page

no: 7, A helper spring 122 is slidably and concentrically disposed on the second

75

end of 112 of the piston rod 108.The helper spring constructional features are not

described and defined. The only way to understand the helper spring role is with

the help of drawings. In the drawings, the helper spring is shown at the other end

of the piston rod assembly and at a distance, without touching the piston rod

assembly. The helper spring cannot be compressed in normal shock cases .The

helper spring comes in compression position only in heavy shock/ load/jounce

case only. The word slidably further establishes that the helper spring is not

continuously working with the piston rod assembly, as evident in figure 2 and

3.Further , as described about helper spring , it is nothing but a sleeve made of

polyurethane material.

Learned agent for the Opponent submitted that the applicant at page no: 9 states

that ―The material of the helper spring 122 has good dampening properties that

enables the helper spring 122 to dissipate the shock load ―.The opponent

submitted that the applicant specifically mentioned that helper spring works only

in case of shock load but not in ordinary load case. The word shock in the

description clearly establishes that helper spring is working independently in

respect of the coil spring and its role is limited to shock load. With the above

reasoning , the applicants claim that ―helper spring ―is working in tandem with the

coil spring is wrong.

Learned agent for Opponent 2 raised following queries during hearing

proceeding in order to substantiate those applicants has not fairly described the

invention

1. What is the meaning of Grade 2 wire material?

2. Which standard of spring is used in the invention?

3. What is a Helper Spring?

4. Constructional feature of a Helper spring is not defined.

5. The helper spring shown in figure 2 and 3 do not represent or illustrate a

spring?

6. The use of the word ―Tandem ―is wrongly used for Helper spring is slidable

and is a sleeve shaped component.

7. Piston rod assembly details are not fully described and illustrated in the

drawings.

8. It is wrongly and reversely stated that a single rated coil spring opposes

slidable movement of the piston rod assembly in the compression direction

and also supports the weight of a vehicle. Actually, the coil spring holds the

76

weight of the vehicle and absorbs shocks. The piston rod assembly opposes

the oscillations by the damping properties of the fluid.

9. Characterized features of the claimed invention are not defined.

10. Characterized features of claim one, as worded do not have inventive steps

and novelty.

11. Interconnection of parts and functional aspects are not clear and not clearly

defined.

12. Claims say ―First fluid chamber ―but no second chamber is mentioned in the

description.

13. What does it mean by single rated coil spring?

14. A single rated coil spring opposes slidable movement of said piston rod

assembly. How?

15. Figure 1 is a motor cycle , whereas the applicant is claiming a vehicle.

Arguments and submissions by the applicant

The Learned agent for the Opponent submitted that the Opponent argued for

more than 75% of the total time to identify the difference between the provisional

specification as filed on 29 May 2007 and the complete specification as filed on

21 May 2008. The Opponent argued that the scope of invention was limited to a

two wheeler in the provisional specification whereas the scope is broadened in

the complete specification to include all other type of vehicles.

The Applicant submitted that the Opponent did not give any reasons in its

Opposition by way of Representation filed on 23 March 2012 or during the

Hearing that the difference in the invention disclosure in the provisional

specification and the complete specification is a ground under the Patents Act for

refusing the grant of a patent for the Application; nor the Applicant provided any

specific ground in its Representation or the Hearing referring to any specific

Section as a ground for the opposition. The Applicant submitted that the

provisional specification and the complete specification are as per the provisions

of the Patents Act under Section 9 and 10 and the rules thereof.

The Applicant submitted that, based on the contextual reading of the

provisional specification and the principle of construction as laid down by the

Supreme Court (The Supreme Court in Bishwanath Prasad, A.I.R. 1982 S.C.

1444.), the provisional specification discloses the invention that works both for

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two wheeler and any other vehicle. Just because the word ―two wheeler‖ is used

in one or two sentences the scope of the invention should not be limited to its use

only in two wheeler.

Learned agent for the applicant submitted that The Opponent objected to the

grant of a patent for the Application that the complete specification does not

sufficiently and clearly describe the invention or the method by which it is to be

performed. The Opponent has given no reason to prove that what is not

sufficiently described.

The Applicant submitted that the understanding of the invention of the Opponent

is not correct, because the Opponent has not understood it in the way it would be

understood by the person skilled in the art. The specification is addressed to a

person skilled in the art. By its own admission, the Opponent submitted that a

person skilled in the art knew the following, at the time of filing of the Application:

that the bump stop is made of polyurethane; that there are standards published

for Grade 2 and 3 wires; that Grade 2 wire is not recommended for use in shock

absorber; that the shock absorbers are made from multi rated spring. Therefore,

as per the legal requirement, it is not necessary to describe in the specification

what is already known to a person skilled in the art. Accordingly, the Applicant

submitted that the invention is sufficiently described.

The Applicant further submitted that the invention as claimed is a combination of

a single rated spring made of a Grade 2 steel wire and a helper spring made of

polyurethane, working in combination with each other and other components of

the shock absorber. The combination and the working relationship is adequately

described with respect to the drawings. The person skilled in the art would

understand the invention with reference to the drawing.

The Applicant submitted that a person skilled in the art, who is an engineer

working in the area of design of shock absorbers for vehicles for around 6-8

years, or an automobile engineer, is working in the area of design of vehicles,

particularly dealing with suspension. The person skilled in the art, after reading

the specification, will appreciate that the disclosure made by the specification is

sufficient to practice the invention. The affidavit which provides opinion of the

expert also supports the explanation as given in the specification.

My analysis

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I have given due consideration to the arguments and submissions put forward by

the learned agent for the applicant and arguments and submissions put forward

by the learned agents of the Opponents I have relied on the Following judgment‘s

(1) In Press Metal Corporation limited Vs. Noshir Sorabji

Pochkhannawallah, (1982) PTC, 256, Bombay HC, it was held that, ―it is the

duty of the patentee to state clearly and distinctly, the nature and limits of the

invention what he claims in his specification. 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.‖

(2) In Order no. 81/2010, the Intellectual Property Appellate Board with

reference to case laws has defined the term “sufficiency of disclosure” as

follows:

A patent will be insufficient if the specification does not disclose the invention

clearly enough and completely enough for it to be performed by a person skilled

in the art. By virtue of Section 64 (1) (h) & (i) of the Act, a patent may be revoked

if it "does not disclose the invention clearly enough and completely enough for it

to be performed by a person skilled in the art". It is fundamental to the validity of

a patent that it not merely discloses a novel product or process, but that the

disclosure should be "enabling".

(3) In Order no. 208 of 2010, the Intellectual Property Appellate Board

with reference to case laws for determining insufficiency which is as

follows:

Thus it shows that there is an inconsistent range values mentioned in the

specification; the claims are not fully supported by proper description regarding

dimension values or the parameter ranges chosen. In the absence of clearer

description supporting the claims, the claims cannot be held to define fully the

scope of the method of manufacture of coir mats.

In this instant case, the claim appears to be lacking definitive features, there is

ambiguity or certain amount of vagueness in the features mentioned in few of the

dependent claims. As per the case law, it is acceptable to refer to the body of the

specification for more clarity. i.e., the description should be enabling to clearly

clarify the doubts and remove the vagueness in the claims. But in this case, the

description itself is silent about certain parameters which amount to insufficiency

in the description.

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It is very clear that applicants have not disclosed all the features of the invention

as rightly pointed by the learned agents of the opponents especially

(1) Interconnection of parts and functional aspects are not clear and not clearly

defined.

(2) Definition of the helper spring?

(3) Constructional features of the helper spring?

(4) Difference between Bump stop and helper spring?

From the aforementioned findings, I am convinced that opponent has succeeded

in establishing the ground of insufficiency in disclosure and this application for

patent is liable to be refused based on this ground alone.

Decision

In view of the above findings and all the circumstances of the case, I hereby

refuse to proceed with the application 1120/CHE/2007

.

Dated this 5th day of July,2016

(M. AJITH)

Deputy Controller of Patents& Designs

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Copy to:

1. M/s. Lakshmi Kumaran & Sridharan,

B-6/10, Safdarjung Enclave,

New Delhi-110029.

2. M/s. Mohan Associates,

Ceebros Building, D-4, IIIFloor,

New No.32, (Old No.11), Cenotaph Road,

Teynampet, Chennai -600018.

3. M/s. R.K.Dewan &Co., Trade Marks & Patent Attorneys,

Podar Chambers, S.A. Brelvi Road, Fort,

Mumbai-40001.

BEFORE THE DEPUTY CONTROLLER OF PATENTS...

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