MAN TRUCK BUS SE v. ASSISTANT CONTROLLER OF PATENTS DESIGNS

1. This appeal under section 117A of the Patents Act, 1970 (“the Act”) assails impugned order dated 18th March, 2021 passed by the respondent, Assistant Controller of Patents Designs (“the Controller”), rejecting the appellant’s patent application No.1241/DEL/2009.

2. Appellant is a company existing under the laws of Germany and is claimed as one of Europe's leading commercial vehicle manufacturers. The appellant, aside from other activities, focused on developing new and advanced eco-friendly technologies, in particular for reduction of carbon emission. The Patent Application was filed on 17th June, 2009 for "Particle C.A.(COMM.IPD-PAT) 16/2022 Page 2/30 Separatorand Method forseparatingparticlesoutofan ExhaustStream ofan Internal Combustion Engine".

3. On March 7, 2012, the appellant submitted Form 3, inter alia, intimatingdetails ofgrant ofpatentfor same/ substantially same inventionin USA, Germany, France, UK, Italy, Netherlands, Sweden and Russia. Details of the said patents in countries outside India are tabulated as under:

4. On 20th June, 2012 request for examination was filed and on 26th February, 2018 the First Examination Report (“FER”) was issued by the Indian PatentOffice. On 23rd August, 2018theappellant filed its responseto the FER and pursuantto a noticeof hearing, a hearingwas scheduled for 19th October, 2020. Requestsfor adjournment werefiled by the appellanton two occasions and finally the hearing took place on 2nd March, 2021. Appellant filed their written submissionalongwith revised claims on 15th March, 2021, and the impugned order was passed on 18th March, 2021.

5. Counselfor theappellant, in supportoftheappeal, placed thefollowing submissions: 5.[1] DespiteForm 3 havingbeen filed listingout thepatentsin favourofthe C.A.(COMM.IPD-PAT) 16/2022 Page 3/30 appellant in foreign jurisdictions, the same was completely ignored by theController in theimpugnedorder. No reference, not even a mention of thesame, is presentin the impugned order. In this regard relianceis placed on Otsuka Pharmaceutical Co. Ltd. v. The Controller of Patents in C.A.(COMM.IPD-PAT) 2/2022, decision dated 22nd September, 2022by Single Judgeof this Court,whereit is observed on its facts that appellant therein presented details of corresponding applications in other jurisdictions which led to grant of patents. The Single Judgeof this Court observed that theseoughtto havebeen taken into account by the Controller. 5.[2] Attention was drawn to the impugned order where reference has been madeto prior artdocumentsD1-D[4]. It was contendedthatthe reference to D1-D[4] wasmadein theFER, though priorartD5wasnotmentioned. Despite the same, D[5] was relied upon in the impugned order for reaching a conclusion and rejecting the patent application of the appellant. 5.[3] Reference has also been made to D1-D[4] as mentioned in the FER and in the impugned order, contending that the impugned order effectively duplicated aspectsofD1-D4fromtheFERwithoutany alteration. This, as per the counsel for the appellant, would bear out non application of mind by the Controller. 5.[4] Attention was drawn to the first part of the impugned order where narration relating to D1-D[4] has been duplicated and then in the later portion (specifically paragraph 15 where deductions of the Controller C.A.(COMM.IPD-PAT) 16/2022 Page 4/30 arepresented), thesamenarrationrelatingto D1-D[4] has been repeated. This, as contended by the appellant’s counsel is unacceptable and clearly shows non-application of mind. 5.[5] As per the appellant’s counsel, reliance by the Controller on D[5] in arrivingat conclusions is highly flawed and misplaced, as evidentfrom paragraph 15 oftheimpugnedorder. D[5] was never presented as partof the FER, nor in the notice of hearing, and only came up during the hearing itself. Even though the appellant addressed the issue on their written submissions, omission to include D[5] in FER and notice of hearing was a violation of the principles of natural justice qua the appellant. Reliance was placed on decision of Single Judge of this Court in Perkinelmer Health Sciences Inc & Ors V. Controller Of Patents in C.A.(COMM.IPD-PAT) 311/2022 dated 4th January, 2023 where this Court held that the Controller/ Examiner was not permitted to raise new grounds of objection at the time of hearing and, that notwithstanding submissions filed subsequent to the hearing, nonprovision of reasonableopportunity to applicant cannot beaccepted and is violative of principles of natural justice. 5.[6] Aside from the inadequate process employed by the Controller, appellant’scounselsubmitted that even theobservationtowards theend ofparagraph15oftheimpugned order, was withoutanyassessmentand analysis and lacked any form of detail which was required from the Controller. The relevant observation is extracted as under: “This features discloses in document D1-D[5] and C.A.(COMM.IPD-PAT) 16/2022 Page 5/30 with it is the basic design change in cited documents the normal technical engineer can easily come up to invention. Therefore claims invention can be invented by the normal technical engineer bases on the cited invention.” 5.[7] Reliance was placed on Otsuka Pharmaceutical Co. (supra) where relying upon decision in Agriboard International LLC v. Deputy Controller of Patents and Designs C.A. (COMM. IPD-PAT) 4/2022 dated 31st March, 2022, theSingleJudgehad remanded backthepatent application to the respondent for fresh consideration. In Agriboard (supra) remand was done on the ground that that the impugned order was an unreasoned one and that recording of reasons is an essential feature for dispensation of justice. 5.[8] Prior art documents D[1], D[3] and D[5] had already been considered and rejected by the US Patent Office while granting US Patent No.7850934B[2].Despitethis fact havingbeen broughton record by the appellantin theirpartofsubmissions, it wasnot dealtwith whilepassing the impugned order. 5.[9] TheController,in theimpugned order, after narratingtheclaims arrived at a conclusion that the main features of the patent application were: “(i) different flow regions which are spatially separated from one another; (ii) separation of defined ultrafine particles, primarily by diffusion;and (iii) larger and heaviercoarse particles are separated by mass momentof inertia”. Theseaspects, as per theappellant’scounsel, were completely ignored and not assessed by the Controller. In this C.A.(COMM.IPD-PAT) 16/2022 Page 6/30 regard, reliance was placed on Agriboard International (supra)where a Single Judgeof this Courtheld thatthe Controller hasto analyseas to what is theexistingknowledge, howthepersonsskilled in theartwould movefrom existingknowledgeto subject invention. If such analysisis not presented, therejection of the patent application wouldbe contrary to provision of Section 2 (1)(j) of Patents Act, 1970.

6. Mr. Harish Vaidyanathan Shankar, CGSC appearingfor therespondent submitted that appellant’sapplication wasrefused, firstly, on thebasis ofprior art documentsD1-D[5];secondly, asnoneofthesepriorart documents wascited in any other jurisdiction where the patent had been granted; thirdly, the prior arts wererelevant for thepurposeofexaminationby Indian PatentOffice and mere registrations in other jurisdictions may not be relevant for the purposes of consideration; fourthly, grant of patent in other jurisdiction does not automatically entail that the applicant in India would also be granted, since patent rights are territorial and the patentability criteria is unique to the jurisdiction; fifthly, the Controller had rightly relied upon D[5] to draw conclusion thata technicalperson, skilled in theart, would beableto comeup with the invention. Analysis

7. Before deliberatingin further detailaboutthefacts of thepresentcase, it may be worthwhile to cull out the principles which have been laid down from decisions cited by the parties, as under: 7.[1] In Agriboard International (supra) a decision delivered on 4th April, C.A.(COMM.IPD-PAT) 16/2022 Page 7/30 2022, by SingleJudgeof this Court,theappealchallenged therejection ofthe applicationby thepatent office, being refused on account oflack of inventive step under section 2 (1)(ja) of Patents Act, 1970. Objections were taken, relating to novelty, in the FER and reliance was placed on three prior art documentsD[1], D[2] and D[3]. Responsewas filed by theappellant,hearingwas held, written submissionswerefiled;however, by theorder impugned therein, the patent application was rejected. i. The objection taken by the appellant’s counsel was that the impugned order was absolutely cryptic and does not have any reasons for refusal of grant. One paragraph of prior art D[1] was cited in the impugned order but there was no analysis as to the differences or similarity between the cited prior art and the subject invention of the appellant. It was submitted by the appellant therein that their priority patent application in the US had proceeded for registrationandthesamepriorartD[1] had also been considered by the US Patent Office. After analysing the technical aspects ofthesubject application, the Court concluded as under:

8. In order to appreciatethefactsofthisappeal, thefollowingaspects seem relevant: 8.[1] TheFER dated 26th February,2018 relied on prior arts D1-D[4] to arrive at an observation that claims 1 to 37 lacked inventive step being obvious in view of teaching in cited documents D1-D[4] for reasons which are extracted as under: “D[1] discloses the features of the claimed invention and technical advancement. Features with depiction are as, a particle separator is constructed withouta filter. An Independentclaim is included for equipment oxidizing particles from the exhaust gases of engines. The particles are separated by thermophoresis, and the surfaces of C.A.(COMM.IPD-PAT) 16/2022 Page 13/30 the particle separator are cooled. Preferred Features: Particles are separated by thermophoresis onto surfaces colder than the gas stream. They are separated by convection with the aid of structured surfaces and/or as a result of repeated flow reversals. They are separated through diffusion into dead zones for flow, and/or in narrow flow channels. The particles are separated by a combination of all three methods: thermophoresis, convection and diffusion (see abstract line 1-9). A process for the deposition of ultrafine particles from the exhaust gasof internal combustion engines, consisting in particular of carbon or condensed hydrocarbons, in which the NO- containing exhaust gas is oxidized on a platinum- containing oxidation catalyst to form NO and theenriched with NO gasinto contactwith a catalyst-coated is brought particle separator which can becoated catalytically, characterized in thatthe particle separatoris formed without filters (see claim 1 line 1-7). In order to improve the diffusion deposition, dead zones created in the flow, such as those arising in the lee of baffles. There goes the flow rate to zero to allow a longer residence time for the relatively slow process of diffusion. In addition, the diffusion can be improved by shortening diffusion paths by reducing the cross-section of the flow channels. Thus, cross-sections between 25 microns and 250 microns have proved to be useful. The diffusion is primarily a practical way to separate particles <30 nm. (see description para26 line 5-9). The oxidation catalyst and the particle separator are combined, so thatthe effective for the formation of NO[2] surface can be lowered by cooling in its temperature. Here, the cooler with a catalytically C.A.(COMM.IPD-PAT) 16/2022 Page 14/30 active washcoat is enabled for the NO[2] oxidation to NO[2], coated, so thatprevail, fora closeto a wall higher equilibrium concentrationsof NO[2] and the particles at the same time deposited by thermophoresis on the wall 6. Thus stands at the partikelabscheidenden surface, is required in the NO[2], a particularlyhigh concentration ofNO[2] for the combustion of the particles are available (see description para 20 line 4-10). D[2] discloses the features of the claimed invention depiction are as, a diesel exhaust after-treatment system for the cleanup of regulated and unregulated pollutantsfrom an exhaust of a diesel engine, the system comprising: an oxidation catalyst; an exhaustcooling system for cooling the exhaust; a diesel particulate converter for the agglomeration and separation of particulate matter; and a sootcollection chanterforcollecting and retaining entrapped soot; an exhaust gas recirculation system circulating the clean exhaust leaving the particulate collection chamber to a port downstream from an engine air filter (see claim 1 line 1-8). Thesystem can be utilized for the after- treatment of exhaust gases from a variety of internal combustion engines operating at lean conditions and having appreciable amounts of particulate matter such as diesel engines, compressed and liquid natural gas engines. ' The system of the present invention can be designed to collectively destroy/separate/remove all pollutants from the exhaust gases. This includes: particulate matter and nano-size particles, volatile organic compounds, nitrogen oxide, hydrocarbon, carbon monoxide as well as sulfur dioxide. Through combined processing, the exhaust gases released C.A.(COMM.IPD-PAT) 16/2022 Page 15/30 in the atmospherecan be stripped of all the stated pollutantsathigh efficiencies thatcan render such high polluting engines environmentallyvery clean (see detailed description of preferred embodiment para 01 line 4-14). An oxidation catalyst is connected to an engine exhaust manifold. The catalyst 10 can beeither a diesel oxidation catalyst or active precious metal catalyst (as in gasoline engine applications). Followingthe catalyst is the exhaust system designed to have maximum possible cooling of the exhaust gases before entering the particulate converter (see detailed description of preferred embodiment para03 line 3-8). D[3] discloses the features of the claimed invention depiction are as, The NO[2] oxidant gas used to combust particulate on the filter may be catalytically generated in a variety of ways. However, this is preferably accomplished by initially passing the diesel exhaust gas through a catalytic converter position upstream of the filter. The exhaust gas usually includes a significant amount of NO, O[2], CO, CO[2], H2O and SO[2] as well as unbumt hydrocarbons and carbonaceous particulate. Theimportantcomponent, however, is the NO which, according to the invention, is converted to the NO[2] oxidant necessary to combust particulate on the filter. Preferably, the amount of NO[2] in the gas as it is fed to the filter will be in the range 100-2000ppm althoughit will be appreciated thatthe NO[2] contentcan be widely varied within and outside this range. Theessential pointis that there is enough NO[2] in the gas fed to the filter to effectively combust the deposited carbon soots and like particulates (see detailed C.A.(COMM.IPD-PAT) 16/2022 Page 16/30 description ofinvention para01 line1-8). thediesel exhaustgas is passed through a low pressure drop monolith catalyst (e.g., a ceramic honeycomb) coated with platinum (Pt) or other platinum group metal (PGM) whereby NO in the exhaust gas is catalytically converted to NO[2] by reaction with oxygen (see detailed description of invention para02 line 1-3). diesel exhaust enters the system through the inlet, is processed in to catalytically generate NO[2] from NO therein, the resulting gas with the enriched NO[2] content being then fed through filter after which it is discharged at. In filter, soot or like carbonaceous particulate is combusted at a temperaturegenerally in the order of 250.-400° C., or even higher if desired, to convert carbon deposits to volatile CO and/or CO[2]. The filter also effectively serves to trap any H2SO[4] or sulfate generated in the system (see detailed description of invention para12 line 1-5). D[4] discloses the features of the claimed invention depiction are as, a process for reducing the concentration ofnitrogen oxides in an exhaust gas containing nitrogen oxides, comprising the steps of: adjusting the =I ratio of NO to NO[2] in the exhaust gas such that the exhaust gas contains approximately equal molar amounts of NO and NO[2], mixing the exhaust gas having the adjusted mol ratio of NO to NO[2] with an ammoniacontaining gas, in which the molratio of ammonia to the total of NO and NO[2] in the exhaust gas is about 0.[8] to 2:1, and contacting the resultant mixture with a metallic oxide catalyst at a temperature in the rangeof 100*-550°C., thereby to reduce nitrogen oxides into nitrogen gas and water, said metallic oxide catalyst containing C.A.(COMM.IPD-PAT) 16/2022 Page 17/30 titanium oxide as its first constituent and an oxide of at least one element selected from the group consisting of iron, copper, nickel, cobalt, molybdenum, tungsten, vanadium, chromium and cerium as its active component(see claim 1 line 1- 14).thecatalysts which are employed for reducing NOx in the presence of ammonia, therehave been known oxidesofplatinum groupmetals, vanadium, iron, copper, molybdenum, tungsten, chromium etc. or mixed oxides thereof. These metallic oxide catalysts are usuallyused in theform in which they arecarried bya supportsuch asaluminaand silica alumina. As the reducing catalysts for use in this invention, however, ones are the mostappropriate which contain titanium oxides as their principal constituents and in which is added an oxide of at least one metal selected from the group consisting of iron, copper, nickel, cobalt, molybdenum, tungsten, vanadium, chromium and cerium. The reason therefore is that these catalysts, the principal constituents of which are titanium oxides, are especially suitable in case where the exhaust gas to be treated contains sulfur oxides (S02, S03, etc.). The catalysts whose principal constituents are titanium oxides are not poisoned or vitiated by the sulfur oxides, and their activities for the reaction are ordinarily higher than the alumina supportcatalysts(see detailed description ofinvention para12 line1-10). In view oftheabove documents D1-04, the present invention lacks inventive step according to section 2(1)(ja) of The Patents Act, 1970 and a person skilled in the art will be motivated by the above cited documents to conclude the invention.” 8.[2] The response to the same was filed on 23rd August, 2018 specifically C.A.(COMM.IPD-PAT) 16/2022 Page 18/30 responding to the prior art objections of D1-D[4]. It was essentially stated that both the corresponding European and US Patents have been granted with claims of substantially same scopeas thosefiled in India after having considered D[1], D[3] and D[4]. It was claimed that appellant’s invention providedfor noveland inventivecombinationofseparation using diffusion and a mass movementof inertia in different flow regions of the device. It was this combination of separation methods which resulted in a more efficient separator able to separate a wider range of particles sizes than previous examples. It was claimed that none of the cited documents disclosesuch a combination,nor would such a combinationbe obvious to a skilled reader. It would be useful to extract the relevant part of the response to the FER: “The claimed invention provides for a novel and inventive combination of separation using diffusion and massmomentofinertia different flow regions of the device. This combination of separation methods results in a more efficient separator, able to separate a wider range of particle sizes/types than previous examples. None of the cited documents discloses such a combination, nor would such a combination be obvious to a skilled reader. A skilled reader would appreciate that particle separation by diffusion involves particle transport on the basis of concentration differences. In order to improve diffusion separation, dead zones are produced in the flow in which the flow velocity is minimised - for example through the use of blind holes. Here, the flow velocity decreases towards zero, so that the retention time is increased and C.A.(COMM.IPD-PAT) 16/2022 Page 19/30 diffusion can be maximised. In contrast, separation by mass moment of inertia is accomplished through accelerating and then deflecting flow. The higher gas velocity causes particles with greater mass to retain the initial motion vector more than those with a lower mass. Accordingly, a skilled reader would consider separation by diffusion and inertia to be largely independent and not suitable for being combined, thus they would not consider combining such methodswithouttherebeing explicit teaching to do so. No such teaching is provided in anyof the cited documents. As regards inventive step, it will kindly be appreciated by the Examiner that D[1] discloses a separator in which the exhaust stream is guided along a structured surface so that the particles can be separated off from the exhaust stream by thermophoresis, convection or diffusion. In this separator the separation of the particles by diffusion deteriorates with increasing particle diameter, so that here larger particles are hardly separated, or separated only very poorly. D[1] fails to provide a separator with a flow region for separating larger particles using their mass momentof inertia (in addition to a different region which separates particles using diffusion). D[2] discloses an after-treatment system for the capturing and removaland/ordestruction ofdiesel engine exhaust pollutants. 02 fails to disclose or hint at the use of different flow regions for the separate separation of particles by diffusion and use of inertia. Nowhere in D[2] is it suggested that separation maybe implemented through theuse of separate flow regions and that a combination of diffusion and inertia may be used in the respective C.A.(COMM.IPD-PAT) 16/2022 Page 20/30 different flow regions. In paragraph [000130], 02 recites three modes of particle capturing mechanisms as being inertial impaction, interception, and diffusion;howeverD[2] does not disclose the use of these mechanismsin a separatorin combinationin different, flow regions. D[2] goes on (in paragraph [000133]) to state that in the embodiments of 02 diffusion is the primary mode and the other two modes are "simply set aside due to their small effect". Accordingly, this document in fact teaches away from the claimed solution. D[3] discloses a separatorin which carbon particles are separated on a filter and then oxidised byNO[2]. D[3] thususes a filter to separate largeparticles and does not disclose the use of a separate flow region in which separation can occur due to the mass moment of inertia of particles. In summary, this document fails to disclose the combination of the two methods of separation present in the claimed invention. D[4] discloses a process for reducing the concentration of nitrogen oxides in an exhaustgas containing nitrogen oxides in which the concentrations of NO and NO[2] in nitrogen oxides contained in the exhaust gas are adjusted to substantially equal molar concentrations, whereupon the exhaust gas is held in contact with a metallic oxide catalyst together with ammonia. The adjustment of the concentrations of NO and NO[2] in thenitrogen oxidesis donebythe oxidation of NO with ozone, the catalytic oxidation of NO with air or oxygen, the addition of nitric acid, the addition ofNO orNO[2], etc. D[4] fails to disclose the use of massmomentof inertia to separate particles and, accordingly, fails to disclose the claimed C.A.(COMM.IPD-PAT) 16/2022 Page 21/30 combination of separation methods in different flow regions. As such, a skilled person, given the cited documents would be unable to arrive at the claimed invention and thustheclaimed invention is novel and has an inventive step. Accordingly, reconsideration and waiver of this objection is respectfully requested.” (emphasisadded) Essentially, theappellantwasclaimingthattheprior art documents did not disclose use of the combination of methods of separation using diffusion and mass movement of inertia. 8.[3] Hearing notice dated 5th October, 2020 repeated the objections in relation to theprior art documentsD1-D[4], withoutchangein any aspect of it. Notably, there was no mention of prior art document D[5] at that stage. Duringthehearing, apparentlytheissueofpriorart document D[5] cameup as is evident from the written submissions filed by the appellant post the hearing. To meet objectionsunderpriorart documentsD1-D[4] areextracted as under: “Now, we address each of the cited documents. D[1] (EP1072765) discloses a separator in which the exhaust stream is guided along a structured surface so that the particles can be separated off from the exhaust stream by thermophoresis, convection or diffusion. In this separator, the separation oftheparticlesby diffusion deteriorates with increasing particle diameter, so that here larger particles are hardlyseparated, orseparated only very poorly. D[1] fails to provide a separator with a flow region for separating larger particles using their mass momentof inertia (in addition to a different region which separates particles using diffusion). Furthermore, this document provides no teaching C.A.(COMM.IPD-PAT) 16/2022 Page 22/30 that would lead a person skilled in the art to consider to include such a flow region. D[2] (EP1546515) discloses an after-treatment system for the capturing and removal and/or destruction of diesel engineexhaustpollutants. D[2] fails to disclose or hint at the use of different flow regions for the separate separation of particles by diffusion and use of inertia. Nowhere in D[2] is it taught, disclosed orsuggested that separation may be implemented through the use of separate flow regions and that a combination of diffusion and inertia may be used in the respective different flow regions. In paragraph[000130],D[2] recites three modes of particle capturing mechanisms as being inertial impaction, interception, and diffusion;howeverD[2] does not disclose the use of these mechanismsin a separator in combination with different flow regions. 02 goes on (in paragraph [000133]) to state that in the embodiments of 02 diffusion is the primarymodeand theothertwo modesare"simply set aside due to their small effect”. Thus, 02 in fact explicitly discounts separation by inertia (see paragraph [0133]) as having little effect. Assuch, a person skilled in theart would not modify D[1] to facilitate inertial separation in light of the teaching of 02, as there is no motivation to do so. Accordingly, D[2] in fact teaches away from the claimed solution. D[3] (US5281245) relates to the processing of flue gas. This is very different to exhaust gas from an internal combustion engine. D[3] also fails to provide flow regions that differ with regard to the flow conditions and are formed for separate separation ofparticles by diffusion and using their C.A.(COMM.IPD-PAT) 16/2022 Page 23/30 mass moment of inertia. D[3] therefore relates to a different technical problem in a different technical field. D[4] (RU55636U[1]) relates to a vortex gas-liquid separatorand is notfor separating particles out of an exhaust stream of an internal combustion engine. It does not provide a flow region for separating ultrafine particles primarily by diffusion, in combination with a region for separating heavierparticles using massmomentof inertia. As with D[3], D[4] relates to a different technical problem in a different technical field.” 8.[4] Prior art document D[5] was discussed and it was submitted that the appellantprotested againstthenew documentbeing cited by theController duringthehearingandat a later stagein theproceedings. It wassubmitted in this regard as under: “As regards document D[5] (US5865864), we respectfully protest against this new document being cited by the Learned Controller during the hearing and atsuch a late stage ofproceedings. As D[5] was cited at the hearing itself, the applicant could not completely review D[5] in the hearing itself and refute the disclosures in D[5] as being relevant against the present invention. Nonetheless, with regard to D[5], it is respectfully submitted that this document fails to disclose different flow regions for separate and different separation ofparticles. D[5] also failsto disclose the specific use of diffusion and mass moment of inertia to separate particles. Finally, D[5] fails to disclose different flow regions formed by different sizes of free flow cross-sections. As such, D[5] fails C.A.(COMM.IPD-PAT) 16/2022 Page 24/30 to overcome the deficiencies of documentsD[1] and D[2].” 8.[5] Accordingly, it was submitted by the appellant as under: “None of D[1], D[2] or D[5] discloses different flow regionsfor different separation mechanismswhich havedifferent free flow cross-sections, as set outin amended claim 1. In summary, none of D[1] to D[5] discloses a separator for use in an exhaust stream with flow regions which differ with regard to the flow conditions for separate separation of defined ultrafine particles primarily by diffusion and in contrast defined larger or heavier coarse particles owing to their mass moment of inertia. Furthermore, it is respectfully submitted that a person skilled in the art would be unableto arrive at the claimed invention given any combination of the cited prior art documents. Not one of the documents discloses the claim feature outlined in the previous paragraph. Furthermore, no motivation is provided· which would lead the person skilled in the art to undertake the modifications required to arrive at the claimed invention. Further to the distinguishing features described above, none of D[1] - D[5] discloses (emphasis added): "flow regions (5, 6), which are spatially separated from one another, are formed for substantially separate separation of defined ultrafine particles (3) primarily by diffusion and in contrast defined larger and/or heavier coarse particles (4) owing to their mass moment of inertia." It would notbeobviousto a person skilled in the art to incorporate this feature, given any C.A.(COMM.IPD-PAT) 16/2022 Page 25/30 combination of documents D[1] - D[5]. The independent claims now require the different flow regions to be formed by different sizes of free flow cross-sections. Noneof D[1] - D[5] discloses this feature. Furthermore, it would not be obviousto a person skilled in the art to incorporatethis feature, given any combination of documents D[1] - D[5]. The revised claims of the present invention are therefore inventive over documents D[1] to D[5], taken alone or in combination. Accordingly, reconsideration and waiver of this objection is respectfully requested. Based on the amendments effected to the claims and the arguments summarized herein, it is believed that this application is in order for grant of a patent.” 8.[6] Accordingly, the revised claim no.1 was presented as under: “We Claim:

1. A particle separatorforseparating particlesout of an exhaust stream of an internal combustion engine, it being possible for an exhaust stream (2, 7) to flow through theparticleseparator(1), wherein flow regions (5, 6) which differ with regard to the flow conditionsare formed in the particle separator (1), and wherein the flow regions (5, 6) are configured such that particles (3, 4) of different defined size or different, defined mass are adapted to be separated outof the exhauststream (2, 7) in the different flow regions (5, 6), characterised in that different flow regions (5, 6), which are spatially separated from one another, are formed for separate separation of defined ultrafineparticles (3)primarilybydiffusion and in contrast defined larger or heavier coarse C.A.(COMM.IPD-PAT) 16/2022 Page 26/30 particles (4) owing to their mass moment of inertia, wherein the different flow regions(5, 6) are formed by different sizes of free flow crosssections.”

9. A perusaloftheimpugned order wouldshow thatthere is no additional analysis which is given with respect to response of the appellant to prior art documents D1-D[4]. Although in the impugned order the Controller did articulate three aspects and features of the claimed invention, there was no discussion or analysis whatsoever in relation to prior art D1-D[4], particularly in respect of the responses given by appellant in reply to the FER.

10. The relevant paragraph in the impugned order in which the Patent Officer has articulated the essential features of the claimed invention is extracted as under: “12. Inow turn my attention to the claimed subject matter. The instant claimed subject matter describes A particle separator for separating particles out of an exhaust stream of an internal combustion engine, itbeing possibleforan exhaust stream to flow, through the particle separator, wherein flow regions which differ with regard to the flow conditions are formed in the particle separator, and wherein the flow regions are configured, such thatparticles of different, defined size or different, defined mass are adapted to be separated outof the exhauststream in the different flow regions, Characterised in that different flow regions, which are spatially separated from one another, are formed for separate separation of defined ultrafine particles primarily by diffusion and in contrast defined larger or heavier coarse C.A.(COMM.IPD-PAT) 16/2022 Page 27/30 particles owing to their mass moment of inertia, wherein the different flow regions are formed by different sizes of free flow cross-sections. Thus main features I deduce are:

1. different flow regions which are spatially separated from one another;

2. separation of defined ultrafine particles, primarily by diffusion;