Refusal set aside and remanded for de novo consideration of the inventive step objection. The Court held that the scope of claim 1 was determinable by reading it with the dependent claims, the description and the drawings, so the objection under section 10(5) did not hold. The unreasoned finding that claim 1 lacked technical advancement over D1 and D2 required fresh analysis applying the five step obviousness test in F. Hoffmann-La Roche v. Cipla, recently reaffirmed in Tapas Chatterjee.
Refusal under sections 3(e) and 3(i) set aside. The section 3(e) objection never appeared in the hearing notice, and the Court reiterated its consistent position that the Controller must enumerate all pending objections there, a requirement also carried by Circular No. 4 of 2011. Omitting it deprived the applicant of the chance to answer and violated natural justice. On section 3(i), claim 1 was a product claim naming no disease, no treatment and no mode of administration, so a provision directed at methods of treatment did not apply. The scope of a patent is set by the claims, read in light of the description; working examples demonstrate that an invention is feasible and workable but do not define its scope, so the mere recitation of unit numbers in the claim could not render it ineligible.
Two defects. The order set out the two cited documents but discussed neither the reply to the First Examination Report nor the written submissions filed after the hearing. And although the hearing notice had objected under section 10(4)(c) to four specified claims, which the applicant then deleted, the order refused claims 9 to 24 under that section, a range never put to the applicant and on which it had no opportunity to be heard.
Refusal set aside because the operative portion of the order rested entirely on a prior art document that appeared neither in the First Examination Report nor in the hearing notice and was referred to for the first time in the course of the hearing. That ground alone sufficed, without examining the rest of the order. On the separate objection to sufficiency, the Court observed that if the Controller considers the disclosure inadequate it is always open to him to call upon the applicant to amend the complete specification, in consonance with section 59, so as to provide greater disclosure, section 59 permitting amendment in respect of matter in substance disclosed before the amendment. The applicant had also shown that the cited documents were classified as category A, not of particular relevance, in the International Search Report, and that the invention had been granted in the United States and before the European Patent Office, the only difference being use claims that had to be omitted under Indian law.
