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 of a live recombinant Salmonella vaccine application upheld on every ground and the appeal dismissed. The claims failed sections 10(4)(c) and 10(5) because, even reading the claims with the complete specification, they gave no clear and precise definition of the full scope of the recombinant organisms covered, and the claiming of insertion and substitution mutations was not fairly based on the subject matter disclosed for want of detailed support or working embodiments. On deposit, the Court held that what proviso (ii) to section 10(4) requires to be deposited with an International Depository Authority under the Budapest Treaty is the recombinant organism, not the source bacterium, so the argument that Salmonella is commonly available did not meet the requirement. On section 3(c), the claims were broad enough to cover naturally occurring loss-of-function variants, the specification itself saying the target genes need not be mutated and that expression could be disrupted through upstream regulatory changes; the absence of a pending novelty objection was no answer.
Refusal of a biomass hydrolysis process set aside outright. Going through each cited document, the Court found that none taught the key feature, that the hydrolysed species of the feedstock itself acts as the solvent for fresh feedstock, and that one taught away from it. On sufficiency it held, following FDC v. Sanjeev Khandelwal, that section 10(4) requires the specification to describe the invention fully and particularly and to disclose the best method, but does not require the claims to be representative of the best method; following Tata Global Beverages, that examples need not be given across the entire range claimed; and following Farbwerke Hoechst, that processes forming part of common general knowledge need not be described, the specification being addressed to those with a high degree of knowledge in the field. Disclosure of at least one way of working the invention suffices. On section 10(5) it is enough that the claims are fairly, not exactly, based on the description. On section 3(d), following Natco Pharma, where the solution itself was not known before the invention it cannot be the mere use of a known process; the could-would approach asks not whether the skilled person could have carried out the invention but whether he would have done so expecting to solve the problem or gain an advantage; and on Gandhimathi Appliances a combination of known integers showing a new use is patentable where the claimant was first to visualise it. The same prior art had been cited and overcome in the European application, and the invention stood granted in 23 jurisdictions.
Both grounds of refusal were unreasoned. On inventive step the Controller extracted claim 1 and concluded that the person skilled in the art could choose the features of the prior art and arrive at the technical features claimed, with no explanation of how. On unity of invention under section 10(5) he recorded that the claims did not relate to a single invention or inventive concept, again without reasons and without meeting the explanation offered.
Refusal of a gene sequence application set aside on all four grounds. On section 59, inserting the words in vitro did not take the claim beyond the original specification: a modified gene cannot express in a plant unless physically inserted into its genome, which necessarily implies human intervention, and the expression was at most superfluous. On section 10(5), the Controller objected to grouping several sequence identifiers while overlooking that they formed a group of inventions sharing a single inventive concept, akin to a markush claim, each usable independently to obtain the same result, and ignored the inventor's affidavit explaining this. On section 3(j), the invention produced neither a plant nor an animal nor a new plant but only increased the biomass of existing plants, so it fell squarely outside. On inventive step the Controller over-relied on the cited prior art and never engaged with the inventor's affidavit distinguishing it. The Court observed that a Controller needs reasonable familiarity with language so as to concentrate on the science rather than the semantics of the description.
