Appeal allowed and the application directed to proceed to grant, the exclusion for diagnostic processes under section 3(i) being held inapplicable. The judgment is also useful on amendments: the amended claim added a limitation that the infrared beam diameter be equal to or larger than the hydrophilic region, which had not appeared in the originally filed claims. The Court held the amendment permissible under section 59 because the feature was expressly present as a preferred embodiment at paragraph 23 of the complete specification, which explained why the relationship was needed for accurate quantitation, and because it narrows rather than expands the claim. It therefore qualified as an explanatory amendment incorporating an actual fact, adding no new matter and not changing scope.
Appeal dismissed, the application for a method of detecting single nucleotide variants from blood samples being held to fall within the exclusion for diagnostic methods under section 3(i). Having so held, the Court expressly declined to go into the Patent Office's views on inventive step or section 59. It added that whether such an embargo ought to exist in order to enable innovation in biotechnology is a question of policy beyond its remit.
Refusal of a vertical rotary parking system application set aside and remanded. The judgment is useful on post-filing evidence of unexpected results: where there is already support in the specification showing that the inventor contemplated the unexpected result at the time of filing, it is not improper to supplement that with evidence obtained later, since understanding of the full range of an invention is not always achieved when the application is filed. The Court also held that reliance on Bishwanath Prasad was misplaced, that case having turned on a finding that the patented machine was neither a new manufacture nor a novel improvement and had been publicly known and used before the patent, circumstances absent here.
Appeal dismissed and a refusal under section 3(k) upheld, which makes this a useful counterpoint to the computer-related inventions that have succeeded. The claimed invention merely enabled a keyword search within a peer-to-peer network, which the Court held reflects conventional computer programme behaviour and does not enhance the functionality of the hardware, while the profiling aspect using keyword lists to locate particular types of user or data was abstract and lacked technical character. Claims 1 to 7 were therefore a computer programme per se and claims 8 to 10 algorithms. The Court applied the reasoning in Blackberry, distinguished Lava and Microsoft, and declined to examine the separate objection under section 2(1)(j) having upheld the refusal under section 3(k).
Refusal set aside and the application for a method of controlling infestation of rice plants remanded. The 2002 amendment removed the words or plants from section 3(i), the object being to lift the bar on patenting methods for the treatment of plants. Agreeing with the Calcutta High Court in Decco Worldwide, the Court held that a method of treatment of plants does not fall within method of agriculture under section 3(h) either, since the legislature cannot have intended to remove the bar under one provision and reintroduce it under the other. None of the exclusions illustrated in the Manual of Patent Office Practice and Procedure, such as producing a plant, producing mushrooms or removing weeds, covers treatment of plants.
Refusal under sections 3(d) and 3(e) set aside as a non-speaking order and the application remanded for fresh consideration. The Deputy Controller had not engaged with the appellants' contentions or with the expert declaration on the higher stability of the claimed crystalline form, and reasoned orders are mandatory when a patent is refused, audi alteram partem being indispensable. The Court also held that section 59 entitles an applicant to amend the original application by way of disclaimer, correction or explanation in order to strengthen the case for grant, and that doing so is not an alteration of the application where the applicant has never shifted its position on the contents of the original filing. The Court was careful to say it could not assume the role of the Controller and substitute its own decision.
Section 59(1) compares the amended claim with the scope of the pre-amended claim, and scope cannot be found in a textually cabined reading of the claims alone: claims and complete specification form an integrated whole and must be read together. The Controller had compared the original and the amended claims without the specification. On section 3(b) he found no substantial benefit to mankind after himself recording the applicant's statement that the modification would benefit medical research.
Refusal of a regenerative braking application set aside, in part. On inventive step the Controller failed to examine the claim on what the applicant actually said distinguished it, that the user selects one of more than one regenerative mode and that the selection is the trigger for the process to operate after reckoning specific vehicle parameters, the cited document disclosing a regenerative and a reverse mode but no high and low regenerative mode. No reasons were recorded for the conclusion that the invention would be obvious to the skilled person. On sufficiency the Court found the Controller had overlooked that one predefined value was specified in a dependent claim and that a fault condition would be indicated by the system itself, but accepted that certain other predefined values did not appear in the complete specification, leaving that to be reconsidered on remand.
Refusal of a hemisulphate salt claim under section 3(d) set aside and the application remanded. The Court held that Novartis left the door open for incremental inventions based on enhanced bioavailability, the Supreme Court having noticed but not decided the contention that therapeutic efficacy can be established only on pharmacodynamic properties. Enhanced therapeutic efficacy founded on bioavailability must therefore be tested on its own criteria and not on enhanced intrinsic pharmacological activity per unit of active ingredient, which is the test the Controller had applied. The specification disclosed bioavailability of 34.73% for the salt against 4.54% for the base compound in dogs, together with recitals on therapeutic benefit, and those aspects had never been considered.
Refusal set aside as a non-speaking order on every limb. Proof of right was rejected without any discussion. The amended claims were disallowed under sections 57 and 59 with no reason given, although they factually narrowed the original claim. And the conclusion that the invention was obvious was reached by merely extracting the prior art documents, without any discussion of how that conclusion followed. The applicant's written submissions were not objectively considered.
Refusal holding amended claims to be beyond the scope of the originally filed claims under sections 57 and 59 set aside. On a comparison chart prepared by the applicant, the amendments could be traced to the complete specification relating to the claims as originally filed, and both counsel for the Controller and the Deputy Controller appearing by video conference accepted that the case as presented indicated the amendments bore reference to the original specification. Since the amended claims were to be re-examined, the Court left all objections open, including the separate objection under section 3(f).
An order that merely listed the elements of the claimed invention and concluded that it would be obvious to a normal technical engineer was held effectively unreasoned. The Court then examined the prior art itself and found the two features the invention turned on, a crank offset between each piston and its crankshaft and rotation of the two crankshafts in opposite directions, in none of the cited documents, with no teaching, suggestion or motivation to supply them. Those features had been introduced at the written submissions stage after the oral hearing, and because they were recited as an option in the complete specification the amendment was within scope and allowable under section 59. Even so the Court declined to direct grant, since prior art on the newly claimed features had never been examined and its own survey suggested further relevant art might exist.
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.
Where a section 59 objection arises only out of amendments filed with the written submissions, the Controller must issue a further hearing notice on it rather than decide it unheard. Having taken that view, the Controller then fell back on the superseded claims and refused on other grounds. Amended claims are superimposed on the earlier set, so it is not permissible for the Controller to decide on claims the applicant has replaced and which are no longer before her.
Unless an amendment exceeds the original specification within the meaning of section 59, it is obligatory on the Controller to allow it and then consider why the claim is not tenable. Section 59 may have no role at the point when amendments are sought; its role is post-amendment. Here the amendment was refused with no reason given at all.
Refusal under sections 2(1)(ja), 3(k), 10(4) and 59 set aside on all four grounds. Section 3(k) appeared for the first time in the order itself, never in the First Examination Report or the hearing notice, so the applicant had no opportunity to meet it. The cited prior art addressed different problems, and the final amendment filed with the written submissions had already taken the claims outside section 59.
Both grounds of refusal failed. On inventive step the Controller merely extracted the cited documents without considering the explanations offered in reply to the First Examination Report or at the hearing. On section 59 he set 'the use of a lubricated polyamide for the preparation of articles by injection moulding' against 'a method of preparing an article comprising injection moulding the article using a lubricated polyamide' and held that 'method' expanded the scope of 'use'. Section 59 is not a tool for misreading an applicant's language; the comparison is of substance.
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.
The order decided claims that no longer existed. All the system claims had been deleted with the written submissions, leaving two method claims, yet the refusal proceeded on the footing that the claims were system claims. On section 59 the order merely extracted the provision without giving any reason for refusing the amendment, and on inventive step it merely referred to the cited documents.
Amended claims were rejected under section 59 on the bare ground that they changed the scope from method to composition, with no basis given for the conclusion beyond a recitation of the provision. On inventive step the order offered some reasoning but never engaged the applicant's case on why the cited documents did not lead to the claimed invention. The Registry's own counsel accepted a remand.
Rejection of amended claims under sections 57 and 59 set aside. The original claims were to a method of treatment including administration of a gel formulation, and the amended claims were to the gel formulation itself. Comparing the amended claims with the original claims in the light of the disclosures in the complete specification, which described the gel formulation, its pH range, its rheology modifying agent and its chelating agent, the Court held the request for amendment should not have been rejected. Following Allergan v. Controller of Patents, an amendment is to be accepted so long as the amended claims fall within the scope of the original claims read with the disclosures in the complete specification.
Allowed and the refusal quashed, the court observing that the manner in which the order was passed shocks the conscience of the court. It noted that the application for a bone fixation apparatus was filed in 2007 and that 13 years of the 20 year term had already lapsed, so even an immediate grant would leave a residual term of about three years. The court warned that treatment of this kind disincentivises inventors and is deleterious to the national interest, and recorded this as the fourth such order to come before the bench.
