The Delhi High Court, in the matter of Saint Gobain Abrasives Inc & Anr vs the Controller of Patents, accepted an appeal challenging the refusal order dated August 19, 2021, issued by the Assistant Controller in respect of patent application No. 2458/DELNP/2013.
Brief Facts
The patent application titled “Nonwoven Composite Abrasive Comprising Diamond Abrasive Particles” was filed before the Indian Patent Office on March 20, 2013. Pursuant to a request for examination by the appellant, a First Examination Report (FER) was issued, which was responded to by the appellant. A subsequent hearing notice was issued to discuss the objections outstanding from the FER. In the hearing notice, objections relating to lack of inventiveness were retained among some other minor objections and a hearing took place on July 14, 2021. After the hearing, the appellant submitted amendments to address the objections. However, the Controller rejected the application, citing lack of inventive step in view of prior art references D1 to D3 and asserting that the amendments fell outside the scope of Sections 57 and 59 of the Act, as they contained subject matter not supported in the originally filed specification.
The appellant filed an appeal seeking to overturn the impugned order, contending that it merely listed the prior art documents without conducting a thorough analysis of said documents. Additionally, the appellant argued that the proposed amendments were within the scope of the original specification and claims.
Claims of the Application
The independent claims of the application, as amended, read as follows:
“1. An abrasive article comprising:
a support including a plurality of nonwoven layers, each nonwoven layer including a plurality of fibers;
a first polymeric binder disposed on the fibers, wherein the first polymeric binder includes a polyurethane resin and a phenoxy resin;
abrasive particles having a Mohs hardness of at least about 8.0 disposed on the first polymeric binder;
a second polymeric binder disposed over the abrasive particles and the first polymeric binder, wherein the second polymeric binder comprises a phenolic resin; and
a third polymeric binder disposed on the second polymeric binder,
wherein the third polymeric binder includes a polyurethane resin and a phenoxy resin.
….
- A method of forming an abrasive article, comprising:
providing a support including a plurality of nonwoven layers, each nonwoven layer comprising a plurality of fibers;
applying a first coating of the first polymeric binder to the fibers, wherein the first polymeric binder includes a polyurethane resin and a phenoxy resin;
applying abrasive particles to the coating of first polymeric binder;
applying a layer of the second polymeric binder overlying the abrasive particles and the coating of first polymeric binder, wherein the second polymer layer comprises a phenolic resin;
applying a layer of a third polymeric binder over the second polymeric binder, wherein the third polymeric binder includes a polyurethane resin and a phenoxy resin;
compressing the support; and
applying heat to cure the polymeric binders.”
Court’s Analysis
The Court considered the submissions of the parties and observed as follows:
(i) Inventive step requirements u/s 2(1)(ja)
The Court perused the impugned order and observed that there is inadequate discussion in the order regarding how the combination of cited prior arts would make the invention obvious to a person skilled in the art. The court specifically observed that the order remained silent on the appellant’s arguments that neither D1, D2 or D3 disclosed the features/ elements described and claimed in the appellant’s claims .
Referring to the decision on Agriboard International LLC v. Deputy Controller Patents and Designs, the court emphasized that the Controller must assess three key elements while rejecting an invention for the lack of inventive step:
- the invention disclosed in the prior art,
- the invention disclosed in the application under consideration, and
- the manner in which subject invention would be obvious to a person skilled in the art.
Any decision made without deliberating on these factors and arriving at a bare conclusion would not be permissible unless it is a case where the same is absolutely clear. The court underlined that failing to conduct such an analysis would contravene the provisions of Section 2(1)(ja) of the Act.
(ii) Sections 57 and 59
Regarding the issue relating to the rejection of the amended claims under Sections 57 and 59, the Court observed that the amendments merely consolidated various parts of the original claims without introducing any new elements to expand the scope of the original claim. The Court noted that the impugned order failed to address this aspect as well, and the findings provided in the order lacked instructiveness or illumination on this matter.
Conclusion
In view of the aforementioned observations, the Court allowed the appeal and remanded the matter back to the Controller for re-hearing. The Court also directed the Controller to take a fresh decision within a period of three months from the date of notice of hearing.
Citation: Saint Gobain Abrasives Inc & Anr vs Controller of Patents, Delhi High Court, 26th February, 2024, C.A.(COMM.IPD-PAT) 20/2021
https://indiankanoon.org/doc/167828728/
Authored by Neetha Mohan, Patents Team, BananaIP Counsels
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