The Nippon Signal Co., Ltd. v. Assistant Controller of Patents and Designs

12. It is noted that the oral argument and the written submission of the agent of the applicant have been carefully considered. However without prejudice, although the hearing submissions have attempted to address the other requirements, yet the substantive requirement of the Patents Act, 1970 i.e. Section 2(1)(ja) is not found complied with. Hence, in view of the above and unmet requirements, this instant application is not found in order for grant.

13. Therefore, keeping in view the above facts, the submissions of the agents during hearing and subsequently through the written submission, as well as the outstanding official requirements, instant application NO. 201617036284 dated 24/10/2016 does not comply with the requirements of The Patents Act, 1970 (as amended). I, therefore, hereby order that the grant of a patent for application no. 201617036284 is refused under the provisions of Section 15 of The Patents Act, 1970 (as amended).”

7. Learned counsel for the Appellant argued that the impugned order is untenable in law. Respondent has failed to consider the detailed submissions made in response to the FER and post-hearing written submissions as also the fact that claims were amended to address the objections raised in the FER and hearing notice. The amended set of claims 1-5 involve inventive step and are compliant with Section 2(1)(ja) of 1970 Act and therefore, Respondent has erred in holding that the claimed invention lacks inventive step in view of prior arts D[1] and D[2]. Respondent continued to rely on the objections raised and referred to D[1] and D[2] but as the order reflects there is no consideration of the differences brought out by the Appellant, which if considered, would have highlighted that a person skilled in the art could never be motivated from the teachings of D[1] and D[2] to reach the claimed invention. Non-consideration of the written submissions is a reason good enough to set aside the order as held by this Court in Boehringer Ingelheim Vetmedica GMBH v. Controller of Patents, 2024 SCC OnLine Del 8578.

8. It was urged that cited prior arts D[1] and D[2] do not disclose the features of claimed invention, taken individually or in combination and the person skilled in the art would not receive any suggestion or motivation from the cited documents to modify any technique disclosed to work as in the claimed invention. Independent claim 1 of the present application is a redundant control device used for a train controller in which an active system and a standby system operate in sync with each other and conceptually have a coordinated relationship and not a master-subordinate relationship. The synchronized active and standby systems include existing hardware such as CPUs serving as a control unit and a synchronous circuit for driving the CPUs in sync with each other. The systems mutually transmit/receive information by serial transmission. When the active system detects an error, error detection information is sent to the standby system to disable the output control data of the active system and switch to the output control data of the standby system. Prior to the switchover, the standby system has received the error detection information from the active system and thus the active system can be smoothly switched to the standby system.

9. It was argued that the characterized features in independent claim 1 are neither explicitly nor implicitly taught in any cited prior art document. D[1] discloses a duplexed system for an operation processor but does not specify that it relates to trains. Present invention, according to claim 1 discloses a redundant control device used for a train controller in which an active system and a standby system that are separately disposed in a front car and a last car among train cars; the active system and the standby system being connected and transmitting and receiving information by serial transmission; and the redundant control device being a low-cost device that does not distinguish a main system from a subordinate system, to thereby shorten a system switchover period. The advantageous effects as disclosed in paras [0038] and [0039] of the description are: (a) the two dual on-board controllers can be reduced by half and as a result cost is considerably saved; and (b) period for switching the active system to standby system can be shortened and thus the signal transmission time consumed by switchover can be saved. It is then possible to execute precise train control, for example, a train interval can be reduced to enhance the operational efficacy or the like. These advantages are specific to a case where device is used for a train controller and could not be conceived in D[1], which is directed to a duplexed system for operational processor and does not teach that it relates to trains.

10. It was argued that Respondent has erred in refusing the application by taking D[2] as the closest prior art. No doubt, D[2] discloses a train control system but in D[2], the train location information found by the on-train control device is transmitted to the ground control device via a standby dual system in a train control system being a dual system. The ground control device searches control information of a rear train based on the location information and then regulates brake control based on information transmitted from the ground device. The input of the received data from the ground device and the train control based on the input are performed via parallel dual system. It was explained that in D[2], when a main system fails, the location information of a slave system is informed to the ground device by switching the connection with an on-train radio set from the main system to the slave system by a switching mechanism. Thus, D[2] does not disclose the configuration of the present invention as claimed in claim 1 i.e., a single dual on-board controller composed of the active system mounted on the first car and standby system mounted on the last car and cannot be an impediment to refuse the instant application.

11. It was argued that Section 2(1)(ja) defines ‘inventive step’ to mean a feature of an invention that involves technical advance as compared to existing knowledge or has economic significance or both and that makes the invention non-obvious to a person skilled in the art. Going by the definition, claim 1 of the present invention involves a technical advance over prior arts and has economic significance as it reduces the cost considerably. The period for switching the active system to the standby system can be shortened resulting in reduction of signal transmission time. It is accordingly possible to execute precise train control such as reduction of train interval to enhance operational efficacy. None of the cited documents D[1] or D[2] motivate a person skilled in the art to modify any technique disclosed in claim 1 and at least due to the presence of characterized features therein, it cannot be said that the invention lacks inventive step.

12. Ms. Nidhi Raman, learned CGSC appearing for the Respondent argued that the subject application was processed in accordance with provisions of the 1970 Act and refuted that the impugned order is a nonspeaking or unreasoned order. Referring to the claimed invention, more particularly, independent claim 1, it was submitted that the invention lacks inventive step and does not fulfil the parameters of Section 2(1)(ja) of there being a technical advance as compared to existing knowledge or economic significance or both and that the invention should not be obvious to a person skilled in the art. Cited prior arts D[1] and D[2], whether taken alone or in combination, fully disclose, suggest and teach the claimed invention in its entirety.

13. Elaborating the point, it was urged that D[1] specifically discloses the claimed invention by describing a duplexed CPU control system with a primary and a secondary CPU, where the primary CPU controls the operation and the secondary snoops data while in a standby mode with communication paths. The secondary CPU performs data snooping as the primary CPU acquires control data. If the primary CPU fails, the secondary CPU takes over seamlessly, ensuring no data loss or delay in control operations. D[1] also details how the control program can be updated on secondary CPU without requiring a shutdown of the plant system and with no additional functionality needed for this update process. Therefore, all elements of claimed invention, including duplexed operation, failover and ability to perform program updates without interrupting plant operations are explicitly disclosed in D[1] which thus describes a fault-tolerant system. Failure to receive messages triggers the secondary CPU to automatically assume control and once the primary CPU is confirmed as faulty, it is effectively removed from the operation. This system supports synchronized operation, fault detection and autonomous control switchover without fixed master/slave designation, mirroring the functionality claimed. D[1] further discloses system configuration with dual CPUs and communication circuitry and describes the ability of one CPU to assume control when the other fails.

14. It was further argued that D[2] describes a train control system and is a dual-system configuration comprising a main system and a slave system that is held on standby. A switching mechanism designed to transfer operational control from the main system to the slave system in the event of a failure in the main system is provided. D[2] discloses the method wherein this switchover is seamlessly executed such that an external ground control device continues to receive necessary information without interruption or recognition of the on-board system failure and the explicit purpose is to ensure the operation rate of the train i.e., system availability and reliability. It is thus evident that concept of using a secondary standby control system to takeover from a failed primary system to prevent operational downtime is already known from D[2].

15. Ms. Raman vehemently denied that there is no detailed technical analysis by the Respondent in the impugned order. Respondent has carried out analysis as required in the concerned regime in line with the law laid down by the Supreme Court in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, where it was held that obvious variations of known technology do not constitute an invention. Even though Appellant pointed out differences in the prior arts, more particularly, with respect to D[1] urging that it does not specify that it relates to trains, the technology in the claimed invention, which employs duplexing for system reliability, is widely known in the industry, particularly in control systems and electronic devices and therefore, a mere use of the device in the train control system is not an invention and at the highest is an application of the technology. The dual structure of the system could easily be adapted for use in trains by a skilled engineer. Moreover, placement of the systems in train cars is an obvious modification as it is only a routine design choice for train systems and so is the placement of redundant systems across spatially distributed compartments for reliability or fail-safe design. Most importantly, the characterized portion of the final claims makes it clear that redundant control device is claimed on a standalone basis without any specific features of the train controller.

16. It was also argued that purported advantages such as faster switchover or cost-effectiveness are expected and inherent results of implementing known redundant control/duplexing systems techniques and are not inventive. D[1] explicitly teaches switching control outputs upon fault detection. Self-diagnostic features prompting shutdown of the faulty system aligned with common engineering practices and their application in the train control domain is an obvious adaptation. While there is no explicit mention of applying a duplex control CPU in D[1] to the train field, the dual structure of D[1] can easily be adapted to the train field by a person skilled in the art. In D[1] the waiting system CPU[2] performs a function of operating system CPU[1] upon detecting an error in the operating system. Further, D[1] suggests that if the self-diagnostics of the paternal line indicate an error, the person skilled in the art, normally a technical engineer may stop the operation of the paternal line to ensure stable and energy efficient system operation. Therefore, as rightly held by the Respondent claimed invention lacks inventive step owing to prior arts D[1] and D[2].

17. In rejoinder, learned counsel for the Appellant urged that the mere fact that both the claimed invention and D[1] and D[2] fall within the broad domain of redundant duplex control systems, does not negate inventive step. In Avery Dennison Corporation v. Controller of Patents and Designs, 2022 SCC OnLine Del 3659, this Court held that simplicity does not defeat patentability. Respondent contends that adapting duplex control to trains is a routine field-of-use choice, however, the placement and interconnection in the claimed invention are not conventional. It is settled that inventive step must be assessed on a holistic basis and not by dissecting individual non-components. The Calcutta High Court held in Groz-Beckert KG v. Union of India, MANU/WB/0140/2023, that it is not sufficient to conclude obviousness by isolating individual known parts. If the logic of the Respondent is accepted that obvious variations of known technology do not constitute invention, then no invention which is a combination of known techniques would ever proceed for patent.

18. It was argued that D[1] and D[2] neither teach nor suggest placement in separated train cars with the dedicated sync line, ensuring perfect phase alignment without handshake latency. Respondent suggests that applying redundant control to trains is an obvious adaptation, however, generic application of duplexing to trains would not inherently produce the specific claimed architecture i.e., physically separated controllers linked by serial lines. Reliance was placed on the judgment of this Court in Biomoneta Research Pvt. Ltd. v. Controller General of Patents Designs and Another, 2023 SCC OnLine Del 1482, where it was held that if there is synergistic combination or a working interrelation which produces a new and improved result, the subject matter is patentable. Reliance of the Respondent on the judgment in Biswanath Prasad (supra) is misplaced. The invention at hand is not a ‘workshop variant’ cosmetic aggregation. It represents an architecturally distinct design with new capabilities and no person skilled in the art, even with routine knowledge, would arrive at this invention. In this backdrop, it was urged that the impugned order be set aside and direction be issued to the Respondent to grant patent on the instant application.

19. Heard learned counsels for the parties and examined their rival submissions.

20. Instant patent application dated 30.03.2015 relates to an invention titled “REDUNDANT CONTROL DEVICE AND SYSTEM SWITCHING METHOD”. Respondent refused the application for grant of patent for lack of inventive step under Section 2(1)(ja) of 1970 Act basis prior arts D[1] and D[2]. The claimed invention is a redundant control device including an active system and a standby system and a method for switching systems therefor. As explained and also evident from the complete specification, object of the claimed invention is to provide a low-cost redundant control device that does not distinguish a main system from a subordinate system to shorten a system switchover period and a method for switching systems. The active system and the standby system operate in sync with each other. When the active system detects an error, error detection information is sent to the standby system to thereby disable output control data of the active system and switch to output control data of the standby system. The active and standby systems operate in sync in order to avoid discontinuity in output control data, which may possibly occur with the system switchover. The invention is applicable to train control, where the active and the standby systems are installed separately in the front and last cars of the train. Given the installation, two dual on-board controllers i.e., a dual on-board controller mounted on the first car and a dual on-board controller mounted on the last car can be reduced by half i.e., a single dual on-board controller composed of an active system mounted on the first car and the standby system mounted on the last car, which remarkably reduces the cost. The inventor claims that by the present invention, it is possible to provide a low-cost redundant control device that does not distinguish a main system from a subordinate system to thereby shorten a system switchover period and a method for switching systems therefor. The synchronized active and standby systems include existing hardware such as CPUs serving as a control unit and a synchronous circuit for driving the CPUs in sync with each other. The systems mutually transmit/receive information by serial transmission. When the active system detects an error and the information is sent to the standby system to disable the output control data of the active system and switch to the output control data of the standby system. The standby system has in the meantime already received the error detection information prior to the switchover and thus, the active system smoothly switches to the standby system. Block diagram illustrating the configuration of the redundant control device of the claimed invention is Figure 1 and the diagram illustrating the application of the device to a train controller is Figure 2 below:- Figure 1 Figure 2

21. Case of the Appellant is that the application has been erroneously refused citing prior arts D[1] and D[2], whereas neither D[1] nor D[2] considered alone or in combination disclose, teach or suggest the features claimed in independent claim 1, which is extracted in the earlier part of the judgment. Appellant submits that it was brought forth before the Respondent that D[1] discloses a duplexed system for an operation processor, but does not specify that it relates to trains. Present invention, on the other hand, relates to a redundant control device use for a train controller and the advantageous effects as disclosed in paras [0038] and [0039] of the description are that the two dual on-board controllers can be reduced to half which saves cost and switching period is shorten, whereby signal transmission time consumed by switchover can be saved. This helps in executing precise train control, for example, a train interval can be reduced to enhance the operational efficacy. It is urged that these advantages are specific to a case, where device is used for a train controller and D[1] could not conceive these advantages and hence, reliance on D[1] by the Respondent was wholly misplaced.

22. Appellant also sought to distinguish prior art D[2] before the Respondent and submitted that while D[2] discloses a train control system but the train location information found in the on-train control device is transmitted to the ground control device via a standby dual system, in a train control system being a dual system. The ground control device searches control information of a last train based on the location information. The ontrain control device conducts brake control based on the control information transmitted from the ground control device. The input of the received data and the train control based on the input are performed via a parallel dual system. When a main system causes failure, the location information of a slave system is informed to the ground control device by switching the connection with an on-train radio set from the main system to the slave system by a switching mechanism. Thus, D[2] does not disclose the configuration of the present invention i.e., a single dual on-board controller composed of the active system mounted on the first car and standby system mounted on the last car and cannot defeat the claimed invention. None of the cited prior arts, therefore, motivate a person skilled in the art to modify any technique disclosed in claim 1 especially due to presence of characterized features therein.

23. Appellant also brought forth before the Respondent that the claimed invention involves an inventive step and compared to the prior arts it has economic significance, whereby the cost can be considerably saved as also technical advance since the period for switching the active system to the standby system can be shortened, whereby signal transmission time consumed by the switchover will be saved and further, it is possible to execute precise train control. As an instance, it was cited that a train interval can be reduced to enhance the operational efficacy. The assertion before the Respondent was that the claimed invention introduces inventive operational steps and functional interrelationships between components which have distinct technical advantages and none of them are taught by D[1] and D[2]. Differences have been highlighted in a comparative chart as follows:-

24. The written submissions filed before the Respondent clearly reflect that all these distinctions, which according to the Appellant are crucial, were highlighted. However, a plain reading of the impugned order shows that paragraphs 1 and 2 deal with the prosecution history and paragraph 3 refers to objections raised in the hearing notice and response to the FER. Taking note of the reply, one line observation is made that newly cited document D[2] along with D[1] cited in the FER discloses the features in the invention. Prior art D[2] is then explained including the working of CPU[1] and CPU[2] therein but without any further consideration or reasoning, conclusion is reached that subject matter of the claimed invention lacks inventive step under Section 2(1)(j) of 1970 Act. Thereafter, Respondent refers to the objections raised earlier on non-patentability under Section 3 and Section 10(4)(c) paragraphs 4 and 5 refer to the submissions made. Paragraph 6 reflects that Respondent considered D[1] as cited in FER and hearing notice. Paragraph 7 refers to the subject invention as described and paragraph 8 extracts the submission of the applicant. Paragraph 9 refers to the decision of this Court in F. Hoffmann (supra) with regard to the obviousness test as also the judgment in Biswanath Prasad (supra), for the proposition that person skilled in the art would pre-suppose that the person has knowledge and skill in the field of art concerned and from that angle one has to see if the prior art document can be worked upon in the workshop to achieve the subject invention under challenge. In paragraph 10, Respondent notes that the person skilled in the art is a normal technical engineer and would have knowledge of the disclosures in D[1] and D[2]. In paragraph 11, Respondent carries out analysis of D[1] as the closest prior art and concludes that since prior art discloses active and standby systems, which operate in sync with each other and on detection of error in the active system, the information is sent to the standby system, whereafter output data in the active system is disabled and switched to that of the standby system as also that D[1] discloses primary/secondary CPU switchover process in another condition, where secondary CPU does not consecutively confirm arrivals of snooping request related frames to be sent from the primary CPU if in a normal state, D[1] teaches that when error is detected by a system, failure is determined and only the standby system performs operational control and those skilled in the art will readily recognise that the system action is halted, when there is a system failure. In respect of D[2], it is observed that the prior art discloses dual system, where on-board controller which generates position information is transmitted to the ground control device via a standby dual system and the input of the received data from the ground device and the train control device on the input are performed via a parallel dual system and hence, when a main system fails, location information goes to the slave system and from there to the ground control device by switching the connection with and on-train radio set from the main system to the slave system by a switching mechanism. Therefore, as per the Respondent the claimed invention is obvious to a person skilled in the art in light of D[1] and D[2] and common general knowledge.

25. Plain reading of the impugned order fortifies the stand of the learned counsel for the Appellant that the important inventive features brought forth are not even dealt with in the impugned order and the order is completely coloured by the perception of the Respondent that D[1] and D[2] make the claimed invention obvious to the person skilled in the art. Principles for determining whether a claimed invention lacks inventive step under Section 2(1)(ja) of 1970 Act are settled. In Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940, this Court held that Controller has to analyse as to what is the existing knowledge and how person skilled in the art would move from the existing knowledge to the subject invention. In Avery Dennison (supra), this Court emphasized the could-would approach, wherein the question that is required to be raised is whether there is any teaching in the prior art as a whole that ‘would’ and not simply ‘could’ have prompted a person skilled in the art with the knowledge of the objective technical problem to either modify or adapt the closest prior art to arrive at the subject matter of the claims. It is also settled that motive of the skilled person is a relevant consideration. The notional skilled person is not assumed to undertake technical trials for the sake of doing so but rather because he or she has some end in mind. It is not sufficient that a skilled person could undertake a particular trial and the question is whether in the circumstances he would be motivated to do so and absence of motive to take the inventive step will make it difficult to conclude that the invention is obvious.

26. Appellant has consistently asserted that there are material and crucial differences between D[1] and D[2] and the claimed invention as also that the mere fact that the prior arts fall within the broad domain of a redundant control device does not negate the inventive step and as rightly pointed out, simplicity does not defeat patentability and inventive step must be judge without hindsight. It is highlighted that claimed invention is not limited to generic duplexing or mere CPU failure and instead the claims are specific system architecture and method that places the active and standby controllers in physically separated train cars, linked only by simple serial lines and utilizes a dedicated sync line to maintain perfect phase-aligned control cycles across those separated controllers, enabling instant switchover without the handshake or mirror memory compare required by conventional designs like D[1]. Appellant seriously contests Respondent’s position that faster switchover is an expected result of known duplex systems since in the present system synchronization via the dedicated sync line allows standby system to takeover immediately in the next cycle without waiting for acknowledgments, whereas in D[1] switchover relies on multi-step handshake protocol.

27. From the arguments of the Appellant, it is apparent that it also contests Respondent’s findings that cost effectiveness is an expected outcome of any redundant system. It is urged that claimed invention reduces cost specifically by eliminating mirror-memory hardware and relay-based switch-over circuits entirely, using only two serial lines between cars instead of a complex parallel bus or high-bandwidth memory interface supporting symmetric coordination so that either side can be active or standby without preconfigured master/slave roles. Appellant has also emphasized that in D[1] the secondary CPU is inactive until a switchover is triggered and it relies on frame monitoring of fault reports while in the subject invention the standby system is always active, fully synchronized and takes over immediately in the next cycle. The switchover in D[1] also involves changing communication path to the I/O device from CPU[1] to CPU[2], which then starts sending control data to the I/O device in place of CPU[1], whereas in subject invention a sync line is used to ensure that both systems operate in phase synchronization, with both generating control data continuously. In D[1] once CPU[1] is confirmed faulty and CPU[2] takes over, CPU[1] that has been detected to be currently in trouble will not be switched over to the primary, whereas in the claimed invention there is a recoverable switchover after the standby output is used and if the original active system detects no error, it resumes output and regains control. Thus, the subject invention’s bidirectional and reversible switchover is not taught or suggested by D1’s permanent, one-way fail over structure. Similar differences as noted above, have been highlighted qua D[2] but there is no consideration, least of all even a mention in the impugned order. No doubt it is Respondent’s prerogative and expertise to decide whether a claimed invention is involves an inventive step, but the decision must be reasoned and based on material facts and scientific reasoning and moreover, Respondent is under an obligation to consider all relevant points raised by an applicant, analyse it and then pass an order. Learned counsel for the Appellant rightly urged that Respondent has failed to consider the detailed submissions made in response to the FER and post-hearing written submissions as also the fact that claims were amended to address the objections raised in the FER and hearing notice. Appellant brought forth that the amended set of claims 1-5 involve inventive step and are compliant with Section 2(1)(ja) of 1970 Act and gave detailed analysis in the written submission why reliance on prior arts D[1] and D[2] was incorrect, but Respondent continued to rely on the objections raised and did not consider the differences brought out. Non-consideration of the written submissions has been held to be a reason good enough for remand of the matter to the Controller in Boehringer Ingelheim (supra). For all the aforesaid reasons, in my view, this is a fit case for remand to the Respondent for fresh consideration.

28. Accordingly, the impugned order dated 18.07.2024 is quashed and set aside. Respondent shall consider the Indian Patent Application No.201617036284 afresh, taking into consideration the submissions of the Appellant made in response to the FER as also in the post-hearing written submissions and this appeal. Determination of inventive step shall be carried out in accordance with the law on the subject as detailed in the judgements referred to above on the subject. Decision will be taken within a period of four months from today after granting opportunity of hearing to the Appellant.

29. It is made clear that this Court has not expressed any opinion on the merits of the case.

30. Appeal stands partially allowed and disposed of.

JYOTI SINGH, J. MAY 29, 2026/YA