Emphasising on identification of the inventive concept embodied in the invention, the Madras High Court has clarified that the ‘technical advance’ or ‘economic significance requirement’ is an essential prerequisite in obviousness analysis under Section 2(1)(ja) of the Patents Act, 1970. Finding that the technical reasons provided by the Controller of Patents (respondent) for the rejection to be satisfactory, the Court held that the appellant had failed to disprove the respondent’s assertion that the amended claims in the divisional application overlapped with the features already covered in the parent application.
While affirming that the amended claims 1 to 12 were already encompassed by the parent application, which had not been granted patent rights, the Court was satisfied with the respondent’s detailed analysis of the amended claims against the prior art and the conclusion that the claims did not meet the requirements of Sections 2(1)(ja), 59(1), and 16(2) of the Patents Act.
A Single Judge Bench of Justice N. Senthilkumar took note of the principles for determining inventive step as established in Rhodia Operations v. Assistant Controller of Patents and Designs, Government of India [(2024) 1 HCC (Mad) 140], which mandate a five-step inquiry. The judgment extensively discussed the attributes of the “person skilled in the art” in the Indian context, noting that this person is considered to have more than average knowledge and skill, and is not an “ordinary” person.
The Bench also reiterated the five-step inquiry enshrined in the case of Rhodia Operations, as: (i) identify the person skilled in the art; (ii) identify the common general knowledge of that person; (iii) identify the inventive concept; (iv) identify the differences between the prior art and the invention; and (v) decide if those differences would be obvious.
The Bench considered the submission of the respondent that the invention was deemed obvious to a person skilled in the art in light of prior art documents. Further, D1 disclosed a similar extrusion process, and it would have been obvious to apply this process to the uPVC/ABS blends mentioned in D2-D6.
Further, the feature of “wetting” fibers was considered an inherent phenomenon in extrusion, as suggested by D1 and D7, and common knowledge in the art, added the Bench, while pointing out that the appellant failed to provide evidence of any technically significant results or improved effects achieved by using the claimed wave elements specifically for u-PVC/ABS composites when compared to the prior art.
Briefly, following the issuance of a First Examination Report (FER), the appellant submitted a response with an amended set of 12 claims, which pertained to a fiber-reinforced thermoplastic composition comprising un-plasticised polyvinyl chloride (uPVC) and acrylonitrile-butadiene-styrene (ABS), along with at least one “wetted” continuous fiber. The claims also detailed a process for preparing this composition using a twin-screw processor with specific wave elements designed to reduce fiber breakage. The Controller, however, rejected the application.
Appearances:
Advocates Essenese Obhan and M.S. Bharath, for the Appellant
SPCGSC A.R. Sakthivel, for the Respondent
