Madras High Court
Tvs Motor Company Limited vs The Assistant Controller Of Patents And ... on 5 June, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
C.M.A.(PT).No.42 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 05.06.2025
CORAM
THE HONOURABLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
C.M.A.(PT).No.42 of 2024
TVS Motor Company Limited,
“Jayalakshmi Estates”,
No.29 (Old No.8), Haddows Road,
Chennai – 600 006, India ... Appellant
..Vs..
The Assistant Controller of Patents and Designs
The Patent Office
Intellectual Property Building
G.S.T. Road, Guindy,
Chennai – 600 032. ... Respondent
PRAYER: Civil Miscellaneous Appeal filed under Section 117A of the Patents
Act, 1970 read with the Tribunals Reforms and Rationalisation and Conditions of
Service Ordinance, 2021, to set aside the order dated 12.04.2021 passed by the
respondent in Indian Patent Application No.798/CHE/2011 and further allow
Indian Patent Application No.798/CHE/2011.
For Appellant : Mr.S.Harish
For Mr.Thriyambak Kannan
For Respondent : Mr.M.Karthikeyan, CGSC
1/10
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C.M.A.(PT).No.42 of 2024
JUDGMENT
This appeal is directed against the order dated 12.04.2021 rejecting Patent
Application No.798/CHE/2011 for the grant of patent for an invention titled “An
Internal Combustion Engine”.
2. Upon receipt of such application, at the request of the appellant, the
respondent issued First Examination Report dated 29.01.2018 (“ The FER”). In
the FER, objections were raised inter alia on grounds of lack of novelty and
inventive step by citing prior art documents D1 and D2. The appellant replied to
the FER on 27.07.2018, by inter alia distinguishing the claimed invention from
prior art documents D1 and D2.
3. Pursuant to hearing notice dated 15.03.2021, the appellant was heard on
19.03.2021. After the hearing, the appellant filed written submissions dated
01.04.2021. The order impugned herein was issued in the above facts and
circumstances.
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4. Learned counsel for the appellant invited my attention to the rejected
claims of the appellant and pointed out that the claims consisted of one
independent claim and two dependant claims. After pointing out that the
independent claim was a two-part claim, learned counsel submitted that the
monopoly claim pertains to a bearing structure for supporting a crankshaft
comprising an engaging groove for receiving a tapered circlip, which presses
against a washer deployed between the bearing and the circlip and which exerts
continuous pressure on the bearing thereby controlling the bearing float.
5. After pointing out that the claimed invention sets out to resolve the
problem in the prior art of a rattling sound caused due to backlash as a result of
the play between the bearing race and the crankcase, learned counsel submitted
that the claimed invention provides a solution to such problem.
6. According to learned counsel, prior art document D1 is not analogous
inasmuch as the said invention is directed at securing the bearing cap relative to
the shaft and the bearing body, and is not intended to prevent the rattling sound
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caused by backlash. He also points out that D1 deals with a diesel engine. As
regards D2, learned counsel submits that it is directed at reduction of axial
movement by using a clamp and not a circlip. By referring to figure 8 at page
No.118 of the paper book, learned counsel submits that the clamp is a completely
different element from a circlip. Thus, learned counsel contends that neither of
the cited prior arts contain teaching, suggestion or motivation that would lead a
person skilled in the art to the claimed invention.
7. In response to these contentions, learned counsel for the respondent
referred to the impugned order and pointed out that the appellant failed to
disclose whether the claimed invention is targeted at reducing axial movement or
rotational movement. As regards the cited prior arts, learned counsel submits that
prior art document D1 may not use the terminology used in the claimed
invention, but resolves the same problem. As regards prior art document D2,
learned counsel submits that the said invention resolves the same problem of
reducing the backlash and rattling sound during operation of an internal
combustion engine.
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8. At the outset, it is relevant to set out the problem sought to be resolved
by the claimed invention. In the compete specification, in relevant part, it is
recited as under:
“However, in this type of conventional structure, some
play remains between the left outer bearing race and the left
crankcase half after assembly. As a result, during operation of
the engine, a little “backlash” is unavoidably generated between
the outer race of the left bearing and a bearing surface of the
crankcase. Therefore, a rattling sound due to the “backlash” is
generated upon the operation of the internal combustion engine,
and the desired bearing function cannot be optimised. Hence the
main objective of the present invention is provide a stabilized
bearing structure for supporting a crankshaft in an internal
combustion engine, and a backlash-absorbing mechanism for
absorbing a backlash of a bearing race.”
9. The manner in which the problem is attempted to be resolved may be
gleaned from independent claim 1, which is as under:
“We claim:
1.An internal combustion engine (200) comprising a
crankcase (208) with right (212) and left side (211) crankcase
halves, a crankshaft (206) rotatably supported on the crankcase
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(208) through a plurality of ball bearings (216,217) wherein said
internal combustion engine (200) comprises a bearing structure
for supporting said crankshaft (206), said bearing structure
being provided on an outer race of one of said ball bearings
(217); characterized in that,
said bearing structure comprises an engaging groove (301) for
receiving a tapered circlip (302), which presses against a washer
(304) disposed between said bearing (217) and said circlip (302),
and exerting continuous pressure on said bearing (217) for
controlling bearing float.”
10. It is noticeable from the second part thereof (after the words
“characterized in that”) which contains the monopoly claim, that the backlash is
sought to be mitigated or eliminated by deploying a tapered circlip, which
presses against the washer, which, in turn, is placed between the bearing and the
circlip and exerts continuous pressure on the bearing for controlling bearing
float. Whether the claimed invention would be evident from the cited prior arts
falls for consideration next.
11. The problem sought to be resolved by prior art D1 is evident from the
following extract from the complete specification:
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“As a result of the present invention the bearing cap is
effectively secured in position relative to the bearing body and
simultaneously a securing and pre-stressing pressure is applied
to the bearing shells.”
As is evident from the above, there is no reference to backlash and the rattling
sound caused thereby in prior art D1. Merely because a circlip is used in prior art
D1, it cannot be said that the claimed invention would be obvious from D1.
12. Prior art D2 is an invention titled “Stabilised Bearing Structure for
supporting a Crankshaft in an Internal Combustion Engine, and Engine including
the same”. Paragraphs [0009] and [0011] of the complete specification discloses
that prior art D2 is also directed at reducing or eliminating the rattling sound due
to the backlash generated upon the operation of an internal combustion engine.
Independent claim 1 of D2 reveals that it is directed at reducing axial movement
by deploying an axial movement restraining structure. This structure involves the
use of clamps and not a circlip, unlike the claimed invention.
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13. By adverting to the impugned order, learned counsel for the respondent
pointed out that the appellant did not clearly disclose whether the claimed
invention is directed at reducing axial or rotational movement and pressure. This
contention merits consideration.
14. In the impugned order, the respondent extracted from prior art
documents D1 and D2 and concluded that D1 discloses a circlip and that D2
discloses a restraining clamp. On that basis, in the absence of clarity with regard
to whether the claimed invention is directed at reducing axial or rotational
movement, the patent application was rejected.
15. This approach cannot be countenanced. While undertaking
obviousness analysis, it is necessary to examine whether the cited prior arts
contain either direct or indirect pointers which would lead a person skilled in the
art to the claimed invention. In the absence of such exercise, interference with
the impugned order is warranted.
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16. Therefore, the impugned order dated 12.04.2021 is set aside and the
matter is remanded for reconsideration on the following terms:
i). In order to preclude the possibility of pre-determination, an officer other
than the officer who issued the impugned order shall undertake reconsideration.
ii). After providing a reasonable opportunity to the appellant, a reasoned
order shall be issued within four months from the date of receipt of a copy of this
order.
iii). It is made clear that no observation has been made on the merits of the
patent application.
05.06.2025
ssi
Index : Yes
Internet : Yes
Neutral Citation Case: Yes/No
To:
The Assistant Controller of Patents and Designs
The Patent Office
Intellectual Property Building
G.S.T. Road, Guindy,
Chennai – 600 032.
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SENTHILKUMAR RAMAMOORTHY,J.
ssi
05.06.2025
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