Refusal of an application for a method of generating hybrid cells set aside. The Court held that tri-hybrid cells, being synthetic and not naturally occurring, do not fit the description of plants or animals under section 3(j), and that the impugned order failed to engage with the contention that the cell is by its nature not an essentially biological process for propagation or production of a plant or animal. The conclusion under section 3(c) was equally baseless because it ignored the technical intervention and human step involved, that provision operating independently to declare naturally occurring living and non-living things inherently unpatentable. Monsanto was distinguished as concerning a man-made DNA construct inserted into plants so as to pass into future generations, a different extent of human intervention.
Refusal of an oral insulin formulation application quashed. Where the Controller had treated one document as anticipating the claimed invention in its completeness, there was no need to combine it with further documents to show lack of inventive step. No cited document taught including both of the claimed components in a single oral solid formulation, one of them taught away from a claimed component, and a skilled person reading the prior art without hindsight would have been led elsewhere. The elimination of an essential element of the prior art is itself inventive and not obvious. The Court applied the five-step obviousness inquiry from Hoffmann-La Roche v. Cipla and the principles in Bristol-Myers Squibb v. BDR, including that a party claiming obviousness through a mosaic must show how the skilled person would have been led to combine the documents. Details of corresponding foreign applications and grants had been supplied under section 8 and, though not binding, ought to have been considered. The Controller had also failed to comply with Rule 28(5), which requires him, after hearing, to specify or permit such amendment of the specification as he thinks fit to put the application in order.
Where the complete specification is amended before the grant of a patent, section 13(3) requires the amended specification to be examined and investigated in the same manner as the original. The claims had been cut from thirteen to eleven and then to six, and that procedure was never followed before the application was rejected.
Refusal set aside on four grounds. An anticipating prior art must disclose the whole of the invention and contain sufficient information to allow it to be put into practice, dealing with the invention in completeness, and the order never demonstrated how the cited document did so. More fundamentally, the grounds of lack of novelty and lack of inventive step cannot work in tandem on the same document: the tests are different and cannot coexist, so a document said to contain every feature of the invention cannot simultaneously render it obvious when read with five others. Mosaicing is permissible but the reasons for it must be clearly spelt out, and there must be a common thread linking the claim to the cited documents such that the skilled person faced with the claim would turn to another citation to supplement it. On Enercon, the mere existence in the prior art of each element of the invention does not ipso facto mean obviousness, since most inventions are built with prior known puzzle-pieces; there must be a coherent thread whose tracing follows obviously, or it is hindsight deduction. Reasons are the links between the facts and the conclusion, and there were none. Finally, section 13(3) requires an amended specification to be re-examined and a report issued as under section 12, so citing additional objections in a hearing notice without issuing a Second Examination Report violated the statute.
Where re-examination under section 13(3) turned up five fresh prior art documents, the Controller was bound to issue a Second Examination Report; raising those objections for the first time in the hearing notice was contrary to sections 13(3) and 14 read with Rules 28 and 28A. The order also reproduced the appellant's own written submissions, adopted a piecemeal approach of matching parts of the invention against chosen passages of the prior art, and recorded conclusions with no element of why to support them.
Refusal of a patent for an improved biscuit baking oven set aside. The Controller had relied on a new prior art document even though amendments had been filed and the application re-examined, without issuing a Second Examination Report. The Court held that re-examination of a re-filed application is a mandatory procedure under section 13(3) and the Controller was statutorily bound to follow it, so the order could not stand on that ground alone. The order was also unsustainable for want of reasons, repeatedly recording only that the Controller was not persuaded by the appellant's arguments, with no discussion of the facts or merits. Judicial orders must meet the twin tests of why and what, and it is the why that sustains the what.
Refusal set aside on several grounds, the most significant concerning amendments the Controller had himself recommended. Where the Controller suggests or recommends amendments in respect of prior art, it is natural to assume he is well versed with those recommendations so that they do not coincide with other prior art; once the amendments are carried out there is little room for further re-examination and fresh citations. The Controller ought to advise an applicant with a view to making the application eligible for grant rather than with the aim of rejecting it, and where an application has been rectified in conformity with his recommendations it is fair to assume it would be allowed unless it fails the requirements of the Act. Suggestions for amendment must not be made in order to harass an applicant by then raising new prior art. The Court also held that citing two new prior art documents in the hearing notice violated section 13(3) and altered the entire character of the examination; that the tests for novelty and obviousness are entirely different and can never coexist in respect of the same document, novelty being defeated only by a single prior published document containing a clear description and an enabling disclosure; that written submissions filed under Rule 28(7) were disregarded; and that the order was bereft of reasons, reasons being the manifestation of the decision maker's analysis.
Allowed and the refusal set aside for want of natural justice. Three failures were identified: re-examination was ordered under section 13(3) but no Second Examination Report was issued before the refusal; prior art D3 was cited for the first time in the hearing notice; and the application was refused on sections 10(4) and 59(1), neither of which featured in the First Examination Report or the hearing notice, with no opportunity given to address them. The court also held that filing additional documents, data and evidence to meet an objection is permissible, and that non-consideration of corresponding registrations granted in other countries, while not binding, was fatal to the order.
