Summary
In the case of Steer Engineering Private Limited v. Joint Controller of Patents and Designs, the Madras High Court upheld the refusal of a divisional patent application relating to a fibre reinforced thermoplastic composition and its preparation process. The court recorded the Patent Office’s view that the amended claims lacked inventive step, were already covered by the parent application, and did not satisfy Sections 2(1)(ja), 59(1), and 16(2) of the Patents Act. The court also noted Steer Engineering’s arguments on narrowing amendments, inventive step analysis, and hindsight bias, but finally found the impugned order satisfactory and dismissed the appeal.
Background
Steer Engineering Private Limited (hereinafter referred to as Steer Engineering / Appellant) filed Patent Application No. 202142059972 as a divisional application, arising out of parent application No. 201741044221. The Patent Office examined the divisional application and issued a First Examination Report (FER) for the same on March 7, 2022. Steer Engineering filed a response to the FER and submitted an amended set of claims to overcome the objections in the FER. The Patent Office subsequently conducted a hearing and issued an order of refusal on July 31, 2024.
In the refusal order, the Patent Office rejected all twelve claims that formed part of the divisional application. It held that the amended claims did not satisfy inventive step under Section 2(1)(ja), the amendment standard under Section 59(1), and were already covered by the parent application for the purpose of Section 16(2). The rejection relied on prior art documents D1 to D7 and on the view that the claimed features did not disclose any technical advancement over what was already known.
Aggrieved, Steer Engineering challenged that decision before the Madras High Court under Section 117A of the Patents Act.
Claims of the Application
The divisional application contained a total of 12 claims, of which claims 1 and 7 were independent claims. While Claim 1 claims a fiber reinforced thermoplastic composition, Claim 7 claims a process of preparing a fiber reinforced thermoplastic. The independent claims read as follows:
Claim 1:
A fiber reinforced thermoplastic composition comprising:
a mixture of first thermoplastic and a second thermoplastic, wherein the first thermoplastic is un-plasticised polyvinyl chloride (PVC) and the second thermoplastic is acrylonitrile-butadiene-styrene (ABS); and
at least one wetter continuous fiber uniformly incorporated in the mixture of the unplasticised polyvinyl chloride (PVC) and the acrylonitrile-butadienestyrene (ABS), wherein the fiber reinforced thermoplastic composition has a density between 1.3 g/cc to 1.7 g/cc and a flexural modulus of at least 4000 MPa.
Claim 7:
A process of preparing a fiber reinforced thermoplastic, the process comprising:
melting a first thermoplastic and a second thermoplastic in a melting zone of a twin-screw processor, wherein the first thermoplastic is un-plasticised polyvinyl chloride (PVC) and the second thermoplastic is acrylonitrilebutadiene-styrene(ABC);
feeding at least one continuous fiber downstream of the melting zone into a melted mixture of the unplasticised polyvinyl chloride (PVC) and the acrylonitrile-butadiene-styrene (ABC), Wherein the feeding comprises wetting the at least one continuous fiber before mixing with the melted mixture of the unplasticised polyvinyl chloride (PVC) and the acrylonitrilebutadiene-styrene(ABC);
incorporating the at least one wetted continuous fiber into the melted mixture in a mixing zone, the mixing zone including only wave elements having a continuous outer surface in the form of a helical wave such that the at least one wetted continuous fiber is uniformly incorporated into the melted mixture of the unplasticised polyvinyl chloride (PVC) and the acrylonitrile-butadiene-styrene (ABS) with reduction in fiber breakage;and obtaining the fiber reinforced thermoplastic from the twin screw processor.
Questions Before the Court
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- Whether the amended claims in the divisional application disclosed an inventive step under Section 2(1)(ja) of the Patents Act.
- Whether the amendments of adding the features of wetted fibre and wetting of fibres were permissible narrowing. amendments under Section 59(1).
- Whether the amended claims were already covered by the parent application and therefore failed under Section 16(2).
- Whether the Patent Office had rejected the application through a hindsight driven and mechanical obviousness analysis.
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Steer Engineering’s Arguments
Steer Engineering argued that the amendments only narrowed the claims and therefore fell within Section 59(1). It submitted that adding the feature of “wetted” in claim 1 and “wetting of fibres” in claim 7 merely further defined existing claim elements on the basis of disclosures already present in the specification. Steer Engineering relied on the specification passages describing the first thermoplastic as unplasticised PVC, the second thermoplastic as ABS, and the performance data comparing the resulting pipes with normal PVC and cPVC pipes.
Steer Engineering also argued that settled law permits amendments before grant when the amended invention remains comprehended within the original disclosure. On that point, it relied on Nippon A & L Inc. v. Controller of Patents and submitted that pre-grant claim amendments that narrow the scope should ordinarily be allowed.
On inventive step, Steer Engineering relied on Rhodia Operations v. Assistant Controller of Patents and Designs and argued that obviousness must follow the accepted structured inquiry. It said the analysis must identify the person skilled in the art, identify common general knowledge, identify the inventive concept, compare the prior art with the claimed invention, and then decide whether the differences would have been obvious. Steer Engineering contended that the impugned order did not correctly apply this approach.
Steer Engineering also relied on Dura Line India Pvt. Ltd. v. Jain Irrigation Systems Ltd. and argued that the Patent Office had fallen into hindsight bias. According to Steer Engineering, the rejection dissected the invention into separate known components and reconstructed it by combining prior art with knowledge of the invention already in hand.
Patent Office’s Arguments
The patent office disputed these submissions on technical grounds. The Controller maintained that the amended claims were already covered by the parent application and that the divisional application did not carve out any patentably distinct invention. The Controller also maintained that the claims lacked inventive step over D1 to D7.
The Controller argued that D1 was the closest prior art and it disclosed a modified extruder with wave elements for preparing fibre reinforced thermoplastic compositions while reducing fibre attrition and breakage. Even though D1 did not disclose the exact uPVC and ABS blend, a skilled person would have combined D1 with D2 to D6, which showed the known use and properties of uPVC and ABS blends, including in pipes and extrusion based processing.
The Controller further argued that “wetting” did not create any inventive distinction. D1 and D7 showed that wetting of fibres during extrusion was inherent, and D7 generally taught that wetting results from mixing and kneading action in extrusion. The Controller also stated that the application did not disclose any specific wetting system or any technically significant improvement attributable to that wetting feature over the prior art.
Court’s Analysis
The court first noted Steer Engineering’s reliance on the Madras High Court decision in Rhodia Operations. It reproduced and acknowledged the structured principles for inventive step analysis from that decision. The court recorded that inventive step analysis should involve identifying the person skilled in the art, identifying the common general knowledge to be imputed to that person, identifying the inventive concept embodied in the invention, identifying the differences between the prior art and the claimed invention, and deciding whether those differences would be obvious to a person skilled in the art.
The court also took note of Steer Engineering’s reliance on Dura Line to argue that obviousness analysis must avoid hindsight bias. It noted the submission that obviousness does not permit retrospective reassembly of known elements with the invention already in view.
The court then perused Steer Engineering’s reliance on Nippon A & L for the proposition that amendments before grant can validly narrow claims so long as the invention remains within the matter disclosed in the specification.
After noting the legal submissions, the court turned to the Patent Office’s reasoning and accepted it. The court said that the main reason for rejection was that Steer Engineering had not disproved the overlapping features between the present divisional application and the parent application. According to the court, a comparison of the two applications showed that the amended claims were nothing but features already covered by the originally filed patent application.
The court also accepted the Patent Office’s detailed prior art analysis. It opined that the Patent Office had compared the amended claims with D1 to D7 and concluded that D1 taught the closest process arrangement, D4 to D6 showed known use of uPVC and ABS blends, and D7 treated wetting in extrusion as inherent. The court noted that the Patent Office had found no support or evidence showing any improved technical effect attributable to the claimed wetting feature or to the use of wave elements specifically for uPVC and ABS composites.
The court ultimately held that the reasoning in the impugned order on Sections 2(1)(ja), 59(1), and 16(2) was satisfactory. It did not find any lacuna in the rejection order. It accepted the Patent Office’s view that the amended claims lacked inventive step and remained covered by the parent application.
Findings
The court upheld the rejection of Patent Application No. 202142059972 based on the observation that amended claims 1 to 12 did not meet the requirements of Section 2(1)(ja), Section 59(1), and Section 16(2) of the Patents Act.
The court held that the amended claims were already covered by the parent application and the reasoning given by the Controller in the refusal order was satisfactory. In view of these observations, it could be concluded that there was no lacuna in the refusal order.
The appeal was dismissed without costs.
Case Citation: Steer Engineering Private Limited v. Joint Controller of Patents and Designs, CMA(PT) No. 54 of 2024 (Madras High Court Jan. 5, 2026). Available on https://indiankanoon.org/doc/37899286/
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels