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Judgment
The present appeal has been filed against the Order of respondent dated 22.01.2020 rejecting the Grant of Patent on Indian Patent Application No.
6590/DELNP/2012 dated 25.07.2012.
The brief facts of the case are as under:-
2.1 The present patent application titled ""METHOD OF MANUFACTURING A WHEELRIM FOR A VEHICLE"" was filed on July 25, 2012 and
allotted the application no. 6590/DELNP/2012.
2.2. The present patent application is derived from PCT Application No. PCT/JP2011/053201 dated February 16, 2011. The priority of said PCT
application is derived from Japanese Application No. JP2010-031955 dated February 17, 2010.
2.3. A request for examination for the said application was filed on July 25, 2012. The application was published under the provisions of Section 11(A)
of the Patents Act, 1970 as amended in 2005 (hereinafter referred as 'Act') on October 23, 2015.
2.4. This application was examined and First Examination Report (FER) was issued on January 24, 2018.
2.5. In response to the objections raised in the said FER the Appellant's Agent submitted the response via their letter dated July 19, 2018.
2.6. Thereafter, a hearing was scheduled for November 07, 2019, in the matter and following objections were communicated vide a hearing notice
dated October 04, 2019 and hearing submissions were filed within 15 days from the date of hearing.
The present application was rejected by the Order of respondent dated January 22, 2020. The Respondent in the order states that considering
documents D1: JP2000288669A (Annexure-A7); D2: JPS 6142430A (Annexure-A8); D3:US 3438111A (Annexure-A9,); D4: US 6505492B
(Annexure-A10); D5: US 5845400A (Annexure-A11; D6: US 4050135A (Annexure-A12) and D7: US 5531024A (Annexure-A13) in combination,
present application for patent lacks of in inventive step. The Respondent further states that features of claims currently on record are not inventive
over aforesaid cited documents and are not allowable u/s. 2(1) (ja) of the Act.
Case of the appellant
4-I The present invention, according to claims and specification, relates to a method of manufacturing a wheel rim for a vehicle from a tubular
material, wherein the rim has a non constant thickness. The claim 1 currently on record is reproduced below:
Claim 1
A method of manufacturing a wheel rim (10B) for a vehicle comprising:
Forming a flange portion (9) by bending an axial end portion of one tubular material (4) made from steel in a direction crossing an axial direction of the
tubular material (4), thereby forming in the tubular material (4) a bent portion (8) and the flange portion (9) on a tip side of the bent portion (8),
Ironing the tubular material (4) to a tubular member (10A) having a non-constant thickness using an ironing apparatus (20) which has a punch (26), a
die (22) having a convex and concave surface (24) opposing the punch (26) and a pressing member (23), and
Roll-forming the tubular member (10A) having a non-constant thickness to a vehicle wheel rim configuration after the ironing,
Wherein the ironing comprises:
Setting the tubular material (4) on the die (22) at the flange portion (9) of the tubular material (4);
Then moving the pressing member (23) relative to the die (22) thereby squeezing the flange portion (9) of the tubular material (4) between the
pressing member (23) and the die (22); and
Then, while the flange portion (9) of the tubular material (4) is squeezed between them pressing member (23) and the die (22), moving the punch (26)
relative to the die (22) thereby ironing at least a portion of the tubular material (4) except the flange portion (9) of the tubular material (4) to
manufacture the tubular member (10A) having a non constant thickness,
Wherein at the roll-forming, at least a portion of the flange portion (9) of the tubular material (4) is formed to one of rim flange portions (10a, 10b) of
the wheel rim (10B) for a vehicle, and wherein the steps of forming the flange portion (9), ironing the tubular material (4), and roll-forming the tubular
member (10A) are conducted in the order of forming the flange portion (9), ironing the tubular material (4), and roll-forming the tubular member
(10A).
The step-1 of method includes forming a tubular material by bending an axial end portion of said tubular material to form a flange portion.
Step-1: Forming a flange portion (9) and bent portions (8, 9a) in the tubular member (4).
In the step-2, the tubular member (4) is ironed by using an ironing apparatus to form a tubular member having a non-constant thickness. The ironing of
the tubular member is performed by setting the tubular member (4) on a die (22) at the flange portion (9) of the tubular member. The pressing member
(23) of the ironing apparatus moves relative to the die and thus squeeze the flange portion of the tubular member between the pressing member (23)
and the die (22). The die (22) has a convex and concave surface (24) opposing the punch (26) and a pressing member (23).
Further, the punch of the ironing apparatus moves relative to the die to iron the tubular member and manufacture the tubular member having a non-
constant thickness. The die
Step-2: Decreasing the thickness of tubular material to give it a non-constant thickness.
Subsequently in step-3, roll-forming is performed on the tubular member ironed in the ironing apparatus. Finally, after performing the roll forming
process, wherein the tubular member (10A) is rolled between two rollers produced.
Step-3: Producing final rim by roll forming the ironed tubular member (10A) between two rollers (31, 32).
It is submitted on behalf of the appellant that during the hearing and in the written hearing submissions filed by us, an ironing apparatus (20) which has
a punch (26), a die (22) having a convex and concave surface (24) opposing the punch (26) and a pressing member (23); wherein the steps of forming
the flange portion (9), ironing the tubular material (4), and roll-forming the tubular member (10A) are conducted in the order of forming the flange
portion (9), ironing the tubular material (4), and roll-forming the tubular member (10A) as claimed in claim 1 of the present invention is neither
disclosed nor taught by any of the cited documents D1-D7, either alone or in combination.
4.1. Cited document D1 (Annexure-A7) discloses an apparatus having a rotatable mandrel, a roller and a stripper. D1 teaches reducing the thickness
of the cylindrical element ring through a trimming step and the rim roll forming step. D1 does not even whisper about an ironing step or an ironing
apparatus as claimed in claim 1 of impugned invention. Thus, the teachings of D1 cannot motivate a person skilled in the art to include an ironing step
in the process of manufacturing and in turn the person skilled in the art cannot achieve the technical effects of the impugned invention beginning at
cited document D1.
4.2. Cited document D2 (Annexure-A8) discloses that The pipe D is inserted into the fixed die 9 and the collar part (d) at one end thereof is pressed
atop the die 9 and a press plate 10 is lowered from above the same to grasp and hold the part (d) of the pipe D between said plate and the top surface
of the side 9. A mandrel 11 is then lowered and is press-fitted into the inside circumference of the pipe stock D and the pipe stock D is successively
ironed by the mandrel 11 from the inside circumferential side thereof.
4-II It is alleged by the appellant as under:-
The die of cited document D2 (Annexure-A8) has a planar surface profile on contrary to surface of die of the impugned invention. Further, the punch
of impugned invention is completely different in appearance as well as operation in comparison to the mandrel of D2 (see drawing comparison below).
Thus, D2 fails to disclose an ironing apparatus (20) which has a punch (26), a die (22) having a convex and concave surface (24) as claimed in claim 1
of the present invention.
Moreover, cited document D2 (Annexure-A8) does not teach an order of forming the flange portion (9), ironing the tubular material (4), and roll-
forming the tubular member (10A), as claimed in claim 1 of impugned invention.
Cited document D3 (Annexure-A9) relates to a method of making a tapered truck rim of the above from a starting blank of uniform thickness. D3
discloses that an ironing action begins due to the spacing between surface 90 and surface 72 being less than the thickness of portion 42 of the blank.
However, cited document D3 (Annexure-A9) fails to disclose an ironing apparatus (20) which has a punch (26), a die (22) having a convex and
concave surface (24) as claimed in 1 of the present invention. The difference between the ironing process of D3 and the impugned invention is clear
to a person skilled in the art, as can also be seen in the below figures. Therefore, the technical effects/advantages of the impugned invention cannot be
sought through the teachings of the cited document D3.
Ironing as shown in reference D3 Ironing apparatus of impugned Invention
The disclosure of cited document D4 (Annexure-A10) is fundamentally contradicted from the impugned invention. D4 relates to an apparatus and a
method of using the apparatus to deep draw a blank into a manufactured article. It does not even remotely relate to manufacturing of wheel rim from
a tubular member. It appears that the Respondent has cited the document merely on the basis that in comprises a word rim. However, D4 talks about
a rim portion and not a vehicle rim.
Cited document D5 (Annexure-A11) discloses a method for manufacturing a one end flange-less wheel rim. The method includes the steps of:
providing a sheet of rim material having a width substantially corresponding to the developed width of a one end flange-less wheel rim to be made,
curving the sheet to form a cylinder, flaring one end of the cylinder, roll-forming the flared cylinder to the desired rim configuration using roll-forming
machines. 30. Cited document D5 (Annexure-A11) does not even whisper about an ironing step or an ironing apparatus as claimed in claim 1 of
impugned invention. Thus, the teachings of D5 cannot motivate a person skilled in the art to include an ironing step in the process of manufacturing
and in turn the person skilled in the art cannot achieve the technical effects of the impugned invention beginning at cited document D5.
Cited document D6 (Annexure-A12) discloses a system for forming flat base truck rims from flat strips of steel rolled into the form of smooth
cylinders and welded together along the abutting axial edges. However, similar to D5, D6 also fails to even remotely disclose the inventive features of
the impugned invention such as a die (22) having a convex and concave surface (24) opposing the punch (26) and a pressing member (23);wherein the
steps of forming the flange portion (9), ironing the tubular material (4), and roll-forming the tubular member (10A) are conducted in the order of
forming the flange portion (9), ironing the tubular material (4), and roll-forming the tubular member (10A).
Cited document D7 (Annexure-A13) relates to a full face fabricated sheet metal wheel having a rim with dual bead seats and inboard flange and a
disc welded to the outboard edge of the rim and providing an outboard tire bead retaining flange with a curl rolled to finish profile without machining.
Cited document D7(Annexure-A13) discloses that any residual ""waviness"" circumferentially of flange 218 tends to be ironed or bent out by permanent
metal deformation as surface 424 closes and slides or rolls there along during movement of roll 410 radically towards work piece 38. D7 further
discloses that ""this squeezing or ironing action of the flange rolls 410 and 300 produces almost a two-to-one thickness reduction (from pre-cursor 32
starting thickness) in the area between the surfaces 432 and 434 of flange curl 202 and proceeding axially in outboard direction towards the free end
face 436 of curl 202"".
Thus, it is clear to a person skilled in the art that the 'ironing' discussed in D7 is the ironing action of the flange rolls and that D7 does not teach or
disclose an ironing apparatus as claimed in present invention. In D7, mere squeezing of metal work piece through rolls has been termed as ironing.
According to the present invention as explained above, it is clear to a person skilled in the art that steps of forming the flange portion, ironing the
tubular member and roll-forming the tubular member are conducted in the order of forming the flange portion, ironing the tubular material and roll-
forming the tubular member, in order to manufacture the wheel rim. However, all the cited documents D1 to D7, either alone or in combination, do not
even remotely hint towards following aforesaid order of manufacturing process steps.
In view of above, a person skilled in the art cannot achieve the technical effects of the impugned invention through any combination of cited
documents D1 to D7.
It appears that the respondent in the FER, Hearing Notice and Impugned Refusal order stated that Claim(s) of the impugned invention lack(s)
inventive step, being obvious in view of teaching(s) of cited document(s) D1 to D7. Mr. Pravin Anand and Ms. Archana Shanker, Advocates
appeared on behalf of appellant submitted that the respondent has failed to substantiate his findings in the impugned order with reasoning. The
respondent has simply reproduced abstract/claim 1 of each of the cited documents D1 to D7 and concluded that in view of documents D1 to D7, the
respondent is of the opinion that the claims on record are not allowed.
It is evident from the record produced before us that the respondent has merely copy pasted same the abstracts or claim 1 of cited documents D1
to D7 in each both the Hearing Notice and the Impugned order. This shows that the Respondent has not applied his mind in understanding the
different aspect of present invention during the prosecution stage.
The IPAB in ""ENERCON LTD. VS. ALOYS WOBBEN, ORA/08/2009/PT/CH,"" IN PARA 43 has clearly stated that the mere existence in the
prior arts, of each of the elements in the invention, will not ipso facto mean obviousness. For after all most inventions are built with prior known puzzle-
pieces. There must be a coherent thread leading from the prior arts to the invention, the tracing of the thread must be an act which follows obviously.
We must apply this reasoning to test if indeed it is obvious, or if it seems to us to be obvious to the person skilled in the art because of what we know
now, if it is the latter, it is hindsight deduction and is not acceptable, but if it is the former, then the patent must go.
This IPAB in ""SUGEN INC. VS. CONTROLLER, ORA/08/2009/PT/CH,"" INPARA 23, has held that since we are sending the matter back to the
Controller on the ground that Cui 2 was not furnished, it is necessary that an Opposition Board is constituted again preferably with members other than
the same members who constituted the earlier Board. However the Controller who hears the matter now shall be a Controller other than the one who
had heard it earlier, to ensure fairness. So the entire matter is open and all the grounds shall be heard and decided by the Controller, who will look at
the matter afresh.
Section 2(1)(ja) of the Indian Patents Act defines ""inventive step"" as 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.
The advantages and/or technical effects achieved by aforementioned manufacturing method of the wheel rim of the impugned invention as
disclosed in the present application no. 6590/DELNP/2012 (Annexure A2, page 46-104) are as follows:
a. Equipment cost is low;
b. Improved productivity;
c. Improved appearance quality;
d. High dimensional accuracy of the wheel rim.
It is the submission of the counsel that it is clear that the impugned invention meets the criteria of section 2(1)(ja) being technically advance and having
economic significance over the prior art.
Kimberly A. Moore, Associate Professor of Law, George Mason University School of Law, states in second edition of ""Patent Litigation and
Strategy"" that most invention are a combination of old elements. This does not make them obvious. The more references that need to be combined to
prove obviousness, the less likely that the invention is obvious.
It is submitted on behalf of appellant that the respondent has considered the impugned invention and cited references D1 to D7 in sheer hindsight.
The application for impugned invention is granted in all major jurisdictions namely US, Japan, Korea and China, Form-3 dated July 19, 2018 is
already placed on record.
It appears from the impugned order that the respondent has merely made the comparison between D-1 to D-7 in the impugned order in selective
ways, but the respondent has failed to explain how the impugned invention as a whole can be held obvious by a person skilled in the art in view of
cited documents D1 to D7. The respondent has not even been able to show in the impugned order that cited documents D1 to D7 teach all the
features of the impugned invention as claims in currently pending claims. It is not enough to refuse the invention on obviousness grounds to merely
identify each element of the invention in the prior art.
In the light of above, we are of the view that the matter must be sent back to the Controller for reconsideration of issues raised by the appellant.
The matter shall be heard by a Controller, other than the one who issued the Impugned Refusal Order.
The Impugned Order is set-aside.
No costs.