Resham Priyadarshini v. Assistant Controller of Patents and Designs

3. Learned counsel appearing on behalf of the appellant has made the following submissions:

3.1. Present appeal against the impugned order is maintainable, subject to condonation of delay.

3.2. The delay caused in filing present appeal is due to the delay in deciding the review by the patent office, which is a ‘sufficient cause’.

3.3. The objection raised by Controller under Section 10(4)(c) and 10(5) of the Patents Act does not have merit, Since, the features/terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’ are sufficiently defined and made clear in the Complete Specification through detailed description and the drawings filed with the subject patent application. Moreover, it is also to be noted that the Controller has recorded in the impugned order that the Claims could be amended to fulfil the requirement under Section 10 (4)(c) and 10(5) of the Patents Act. Without prejudice to the submission above, appellant may be granted an opportunity to amend the Claims of the Subject Patent application to the satisfaction of the Controller.

3.4. The objection raised by the Controller under Section 2(1)(ja) of the Patents Act also does not have merit, since the prior art D[1]: US 10464754B[2] and D[2]: US 7331156B[2], as relied upon by the Controller in the hearing notice are non-analogous prior arts, as they do not disclose or teach folding or bending articles, nor do they provide any teaching relevant to the problem addressed by the present invention.

3.5. The prior art D[1] and D[2] does not satisfy the two-fold test laid down in the judgment of the High Court of Madras in Microsoft Technology Licensing LLC, One Microsoft Way v. Assistant Controller of Patents, Patent Office[1]; i.e., D[1] and D[2], neither falls within the same field of invention, nor would a person skilled in the art of manufacturing folding/bending devices reasonably look to references such as D[1] or D[2] for the solution sought to be resolved through the subject patent application. Therefore, D[1] and D[2] cannot be cited either individually or in combination to challenge the inventive step of the claimed invention.

SUBMISSIONS ON BEHALF OF THE RESPONDENT

4. The learned counsel appearing on behalf of the Respondent has made the following submissions:

4.1. The present appeal is not maintainable since Section 117A (2) of the Act does not contemplate or permit an appeal against a decision of the Controller in respect of which a review order has already been rendered under Section 77(1)(f) of the Act.

4.2. Such review orders under Section 77(1)(f) have been issued in 2024 SCC OnLine Mad 2785 continuation of, or in relation to, the Controller’s original decision passed under Section 15 of the Act; the applicant cannot thereafter be allowed to circumvent the statutory provisions by preferring an appeal against the original order passed under Section 15. Such an interpretation would defeat the intent and structure of the Act.

4.3. Applied to the facts of the present case, once the applicant voluntarily invoked the review jurisdiction of the Controller thereby treating the original Section 15 decision as subsisting and open to reconsideration the statutory pathway required the applicant to await the outcome of the review proceedings and, if aggrieved, to challenge the review order in accordance with law. Having elected to pursue review, the applicant cannot now, in effect, revive an appeal against the original Section 15 order as an alternative or parallel remedy. Such a manoeuvre would render the review mechanism redundant and enable parties to engage in piecemeal challenges, which the statutory framework clearly seeks to prevent.

4.4. The present appeal is time-barred. It is stated that under the provisions of Section 117A (4) of the Act, ordinarily an appellant is only entitled to file an appeal within 90 days from the date of the decision or order. In the present case, the Respondent passed the order on 23.02.2023, and the present appeal was filed on 05.03.2025, with a delay of 652 days, which the appellant has not been able to justify.

4.5. Additionally, it is submitted that the Review petitions are governed by the Rule 130 of the Patent Rules, 2013 [‘Patent Rules’] which provides that an application shall be made on FORM 24 for review of the Controller’s decision under Section 77 (1)(f) within one [1] month from the date of communication of such order or decision to the applicant or within one [1] month thereafter as the Controller may, on a request made in FORM 4, allow. It is submitted that in the present case, the review petition under section 77(1)(f) was only filed before the Respondent on 06.06.2023, without being accompanied by a request on FORM 4 as required by the provision of Rule 130 of the Patent Rules.

4.6. Regarding the objections raised by the Controller in the impugned order, the technical features or terms that the Appellant has used in its claims (as amended) involved “device”, “input conveyor mechanism”, “inlet portion of device”, “platform”, “moving member”, “output mechanism”, as well as “outlet portion” which are not definitive in nature and no explanation with respect to the said terms were provided by the Appellant in its claims (as amended).

4.7. The claim 1 of the claimed invention (as amended) provides that the invention is “a device (100) for folding or bending an article”, but the said structure of the Claim 1 is in itself insufficient to explain the invention adequately and may be simply be considered to be an abstract of the invention.

4.8. The Appellant failed to define the terms “input conveyor mechanism” and “output conveyor mechanism” in its claims (as amended) and on account of the said omission, the application for the claimed invention also did not satisfy the provisions of Section 10(5) of the Act.

4.9. Given the lack of proper definitive nature of the said terms used by the Appellant, the Respondent could not conduct a proper assessment of the scope of the invention, and the said applicant was accordingly refused by the Respondent.

4.10. Given that the rest of the Appellant’s claims were dependent in nature, the same were also accordingly found to be not satisfactory.

4.11. Regarding the objection of lack of inventive step, the Appellant failed to distinguish the cited prior arts, i.e., D[1]:US10464754B[2] and D[2]:US7331156B[2], from the said invention, which were cited in the Respondent’s hearing notice dated 25.08.2022. It is further submitted that on account of the terms used in the principal claim 1by the Appellant, technical features could not be assessed and thus, inventive step could not be ascertained. Accordingly, the objection regarding the same was also not waived by the Respondent.

4.12. The prior art D[2] can be considered to be the closest prior art and discloses the essential features of the Appellant’s invention as recited in the Appellant’s principal claim 1 (as amended). D[2] discloses various mechanisms, including filling, capping, and labelling mechanisms of an article. However, the similarity between the prior art and the subject invention is evident as the technical features of claim 1 of the Appellant’s invention can be ascertained and be well understood from the prior art D[2]. Therefore, the features of the principal claim 1 are explicitly/implicitly understood and can be inferred from D[2].

4.13. With respect to D[1], D[1] discloses a method and system conveying articles and an apparatus for doing the same; thus, the said prior art also discloses the technical features of the Appellant’s invention.

4.14. In view of the above, it is evident that the principal claim 1 (as amended) of the Appellant’s subject application does not have any technical features that involve technical advancement when compared to the cited documents or existing knowledge. Thus, the same cannot be considered to involve an inventive step under Section 2(1)(ja) of the Act.

4.15. The requirements under Section 10 of the Act are mandatory in nature. It is submitted that even in the case of the test of validity of patents, the compliance pertaining to Section 10 is considered essential, as is evident from Section 64(1)(i) of the Patents Act. A reliance in this regard is made to the decision by the coordinate bench of this Court in California University v. Controller of Patents 2

4.16. Therefore, the present appeal may be dismissed by this Hon’ble Court on the grounds of delay and/or merits.

ANALYSIS AND FINDINGS

5. I have heard counsel for the parties and perused material on record.

6. The issues before this Court discernible from the impugned order and submissions made by the counsel are, i) Whether the amended claims of the subject patent application filed on 15.09.2022 fulfil the requirement under Sections 10(4)(c) and 10(5) of the Patents Act, and therefore the scope of principal claim 1 cannot be determined? ii) Whether the claims of the Subject Patent Application possess inventive step as per Section 2(1)(ja) of the Patents Act?

7. The Court shall first consider the issue of the compliance of amended 2025 SCC OnLine Del 987 claims filed by the appellant under Sections 10(4)(c) and 10(5) of the Patents Act.

8. According to Sections 10(4)(c) and 10(5) of the Patents Act, every complete specification shall end with claims that define the scope of the invention for which the protection is claimed, and such claims should be clear, succinct and based on the disclosure made in the complete specification. This position of law was recently clarified by a coordinate bench of this Court in California University v. Controller of Patents (supra). The relevant paragraph of the said judgment is as follows: “12. Section 10(4) and 10(5) of the Act specifically defines the manner in which the disclosure and the claims are to be made in the complete specification. Section 10(4) and10(5) of the Act uses the word ‘shall’, which makes it clear that every requirement under Sections 10(4) and 10(5) is mandatory for the complete specification of a patent application to be valid in India. ….

21. According to Section 10(4)(c) of the Act, the claims ofthe patent applications are mandatorily required to define the scope of the protection. Moreover, under Section 10(5) of the Act, the claims shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.”

9. In the present case, according to the impugned order, the Controller has concluded that the terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’ of Claim 1 of the Complete Specification of the Subject patent application are indefinite, not clear and therefore fails to fulfil the requirement under Sections 10(4)(c) and 10(5) of the Patents Act.

SECTION 10(4)(C) OF THE PATENTS ACT

10. First, for deciding whether the terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’ of Claim 1 of the Complete Specification of the Subject patent application are indefinite as per Section 10(4)(c) of the Patents Act, this Court shall make a reference to Section 10(4)(c) of the Patents Act. The said Section is as reproduced as under:

11. According to Section 10(4)(c) of the Patents Act, ‘claim or claims’ of a complete specification are required to define the scope of the invention. The said section in no way creates a distinction as to whether the definition should be in the independent or dependent claim.

12. However, the Manual of Patent Office Practice and Procedure, dated 26.11.2019, was published by the Office of the Controller General of Patents, Designs & Trademarks. According to section ‘05.03.17’ titled ‘Structure of Claims’ of Chapter 5 of the said Manual, claims in a complete specification could be both independent and dependent. Further, it requires an independent claim or a Principal Claim to clearly define all the technical features essential to the invention or inventive concept. According to the said Manual, the dependent claims may be considered continuations of the independent claims and may provide further limitations on the features already disclosed in the independent claims. The relevant extract of the said Manual is extracted below: “r) The first claim is always an independent claim also known as ‘Principal Claim’. It should clearly define the essential features of the embodiment(s) of the process/product that constitutes the invention. The claim should be properly characterized with respect to the ‘prior art’, defining all the technical features essential to the invention or inventive concept. The claim should bring out sufficient details of interrelationship and/or operation to establish that the invention achieves the intended objectives. s) There may be more than one independent claim in a single application if the claims fall under a single inventive concept. While there is no restriction as to the number of claims, including independent claims, it is advisable to limit the number of claims, as well as the number of independent claims in a single application so that the claims are falling under a single inventive concept. A dependent claim derives antecedence from an independent claim and reads into it the features of the independent claim and may contain optional features.”

13. At this juncture, it may also be relevant to make a reference to the Guidelines for Examination in the European Patent Office, April 2025 edition, specifically Part F – The European Patent Application, Chapter IV – Claims (Article 84 and formal requirements), Section 3.[4] titled “Independent and dependent claims”, as published by the European Patent Office. According to the said Guidelines, dependent claims also can be used to define terms or features of an independent claim or another dependent claim to which this dependent claim is dependent. The relevant paragraphs of the said Guidelines are reproduced hereunder: “All applications will contain one or more "independent" claims directed to the essential features of the invention. Any such claim may be followed by one or more claims concerning "particular embodiments" of that invention. It is evident that any claim relating to a particular embodiment must effectively also include the essential features of the invention and, hence, must include all the features of atleast one independent claim. The term "particular embodiment" is construed broadly as meaning any more specific disclosure of the invention than that set out in the independent claim or claims. Any claim which includes all the features of any other claim is termed a "dependent claim". Such a claim must contain, if possible at the beginning, a reference to the other claim, all features of which it includes (see, however, F IV, 3.[8] for claims in different categories).Since a dependent claim does not in itself define all the characterising features of the subject-matter which it claims, expressions such as "characterised in that" or "characterised by" are not necessary in such a claim but are nevertheless permissible. A claim defining further particulars of an invention may include all the features of another dependent claim by referring back to that claim. Also, in some cases, a dependent claim may define a particular feature or features which may appropriately be added to more than one previous claim (independent or dependent). It follows that there are several possibilities: a dependent claim may refer back to one or more independent claims, one or more dependent claims or both independent and dependent claims.”

14. This position is also clear in AGFA NV v. Controller of Patents & Designs[3], where the Coordinate Bench of this Court was seized of a similar issue to the present case. The said decision addressed the objection under Sections 10(4)(c) and 10(5) of the Patents Act, after perusing the dependent claims and the detailed description of the Complete Specification of the patent application therein. Relevant paragraphs of the said decision are as follows:

2023 SCC OnLine Del 3493 having a definitive boundary. The said expression/terms objected to by the Controller are as follows: i. ‘thermosetting resin’ ii. ‘ink acceptance layer’ iii. ‘inorganic pigment’ iv. ‘polymeric binder’

17. I shall now examine if there is any specific definition and clarity on these expressions in the complete specification of the subject patent application. Objection on Lack of Clarity

18. The expression/term ‘thermosetting resin’ has been used in the Independent Claim 1 and is also the focus of a specific dependent Claim i.e., Claim 3. The first Independent Claim also contains the other three expressions/terms as well. For the sake of clarity, the said Independent Claim is extracted as under: “1. A method for manufacturing decorative laminates including the steps of: a) impregnating (18) a paper substrate with a thermosetting resin by submersion of the paper substrate in a bath of thermosetting resin; b) applying on the thermosetting resin impregnated paper substrate an ink acceptance layer containing an inorganic pigment P and a polymeric binder B having a weight ratio P/B of inorganic pigment to polymeric binder in the range of 1.5-4; c) jetting on the ink acceptance layer a colour pattern with one or more aqueous pigmented inkjet inks and/or organic solvent based pigmented inkjet inks containing a colour pigment C; and d) heat pressing the thermosetting paper into a decorative laminate, wherein the weight ratio P/C of the inorganic pigment of the ink acceptance layer to the jetted colour pigment in the colour pattern is in the range of 4.5-9, characterized in that the dry weight of colour pigments jetted by the one or more aqueous pigmented inkjet inks and/or organic solvent based pigmented inkjet inks is in the range of 03-0.75 g/m[2]; and wherein the ink acceptance layer has a total dry weight between 3 g/m[2] and 6g/m2”

19. The relevant Claim, which is dependent Claim 3, describing the ‘thermosetting resin’ is extracted as under:

20. Additionally, the description in the complete specification not only refers to the group of ‘thermosetting resins’ but also gives a ‘most preferable embodiment’ of the group. The relevant extracts referring to the same are extracted as under: “The thermosetting resin is preferably selected from the group consisting of melamine-formaldehyde based resins, ureum formaldehyde-based resins and phenol-formaldehyde based resins. Other suitable resins for impregnating the paper are listed in [0028] of EP 2274485 A (HUELSTA). Most preferably the thermosetting resin is a melamine-formaldehyde based resin, often simply referred to in the art as a ‘melamine (based) resin’. The melamine formaldehyde resin preferably has a formaldehyde to melamine ratio of 1.[4] to 2. Such melamine-based resin is a resin that poly condensates while exposed to heat in a pressing operation. The polycondensation reaction creates water as a byproduct. It is particularly with these kinds of thermosetting resins, namely those creating water as a byproduct, that the present invention is of interest. …”

21. With respect to the ‘ink acceptance layer’, it has to be noted that, in the laminate manufacturing industry, the said layer is given different references, which include ‘ink receiving layer’ and ‘ink coating layer.’ In the subject patent application, the ‘ink acceptance layer’ has been given a definitive dry weight between 3 g/m[2] and 6 g/m[2] in the Independent Claim 1. Further, the said layer is also the given specific limitations in Independent Claim 11, where a characteristic feature of the said layer is that the layer does not include any ‘thermosetting resin’. The said Claim 11 is extracted as under:

22. Further, a specific embodiment for preparation of the ‘ink acceptance layer’ has also been described in the subject patent application. The said extract from the description in the complete specification is extracted as under: “Preparation of Ink Acceptance Layers An 80 g/m[2] porous paper used for decor printing was impregnated with an aqueous solution containing 60 wt% of melamine-formaldehyde based resin having a formaldehyde to melamine ratio of 1.7, and dried to a residual humidity of about 8 g/m[2]. An ink acceptance layer was coated on the impregnated paper in accordance with Table 7 by means of a bar coater, providing a wet layer thickness of 20 µm or 40 m micron. The coated samples were dried in an oven for 1 minute at 125°C.”

23. Similarly, two of the other specific expressions/terms i.e., ‘inorganic pigment’ and ‘polymeric binder’ have been described in other dependent Claims. The relevant dependant Claims are extracted as under:

soluble polymeric binder including a hydroxyl group as a hydrophilic structural unit and having a water solubility of at least 1 g/L water.”

24. The relevant extract from the description of the complete specification giving details of the ‘inorganic pigment’ is extracted as under: “The inorganic pigment is preferably selected from the group consisting of alumina hydrates, aluminum oxides, aluminum hydroxides, aluminum silicates, and silicas. Particularly preferred inorganic pigments are silica particles, colloidal silica, alumina particles and pseudo-boehmite, as they form better porous structures. When used herein, the particles may be primary particles directly used as they are, or they may form secondary particles. Preferably, the particles have an average primary particle diameter of 2 µm or less, and more preferably 200 nm or less.”

25. Similarly, the relevant extract of the description highlighting the details and preferred embodiments of the ‘polymeric binder’ is reproduced asunder: “In a preferred embodiment, the ink acceptance layer includes a polymeric binder selected from the group consisting of hydroxyethyl cellulose; hydroxypropyl cellulose; hydroxyethylmethyl cellulose; hydroxypropyl methyl cellulose; hydroxybutylmethyl cellulose; methyl cellulose; sodium carboxymethyl cellulose; sodium carboxymethylhydroxethyl cellulose; water soluble ethylhydroxyethyl cellulose; cellulose sulfate; polyvinyl alcohol; vinyl alcohol copolymers; polyvinyl acetate; polyvinyl acetal; polyvinyl pyrrolidone; polyacrylamide; acrylamide/acrylic acid copolymer; polystyrene, styrene copolymers; acrylic or methacrylic polymers; styrene/acrylic copolymers; ethylene-vinylacetate copolymer; vinylmethyl ether/maleic acid copolymer; poly(2-acrylamido-2-methyl propane sulfonic acid); poly (di ethylene triamine-co-adipic acid); polyvinyl pyridine; polyvinyl imidazole; polyethylene imine epichlorohydrin modified; polyethylene imine ethoxylated; ether bondcontaining polymers such as polyethylene oxide (PEO), polypropylene oxide (PPO), polyethylene glycol (PEG) and polyvinyl ether (PVE); polyurethane; melamine resins; gelatin; carrageenan; dextran; gum arabic; casein; pectin; albumin; chitins; chitosans; starch; collagen derivatives; collodion and agaragar. In a particularly preferred embodiment the ink acceptance layer includes a polymeric binder, preferably a water soluble polymeric binder (> 1 g/L water), which has a hydroxyl group as a hydrophilic structural unit, e.g. a polyvinyl alcohol.”

26. The terms of the patent claims (‘thermosetting resin’, ‘an ink acceptance layer’, inorganic pigment’, polymeric binder) that have been held to be vague, have been sufficiently described in the description of the complete specification. Further, even preferred embodiments for the said terms or expressions are given. Therefore, itis clear that the aforesaid expressions/terms have been adequately explained. It is also observed that the impugned order fails to take into account that the patents specification is addressed to a person skilled in the art to whom the aforesaid terms of Claims would be quite clear in any case.

27. Therefore, I do not find merit in the objection on lack of clarity or that the Claims are indefinite.” (Emphasis Supplied)

15. Keeping in view the aforesaid precedent, thus, this Court finds it meritorious to consider dependent claims along with the independent claim or principal claim to determine if the terms ‘input conveyor mechanism (300)’and ‘output mechanism (600)’ of Claim 1 of the Complete Specification of the Subject patent application are indefinite as per Sections 10(4)(c) of the Patents Act.

16. The Complete Specification of the Subject Patent Application has 22 Claims, out of which Claim 1 [one] is the sole independent claim, and the remaining 21 [twenty one] are dependent claims.

17. The independent claim 1 of the Subject Patent Application refers to the terms input conveyor mechanism (300) and output mechanism (600) as two relevant features of the invention claimed in the Subject Patent Application. Claim 1 of the Complete Specification of the Subject Patent Application is as follows:

18. Even though the two terms are not completely defined in the independent Claim 1 of the Complete Specification of Subject Patent Application, it is to be noted that the Claims of the Complete Specification of Subject Patent Application have relevant dependent claims.

19. Thus, in the present case, it is also relevant to consider the dependent claims to determine the definition of the terms input conveyor mechanism (300) and output mechanism (600) of the independent Claims 1 of the Complete Specification of Subject Patent Application. After considering the claims as a whole, this Court finds that the said terms are well defined in the dependent Claim 3 and Claim 11 of the Complete Specification of Subject Patent Application as below: “3. The device as claimed in claim 1, wherein the input conveyor mechanism (300) comprises: a set of rotating end-less belts (302), a plurality of support bars (304) located between the pair of belts, the plurality of support bars being placed at predetermined intervals along the perimeter of the belts, and each support bar being provided with a plurality of clasping members, the clasping members (306) being adapted to hold the article. ………

11. The device as claimed in claim 10, wherein the output mechanism (600) comprises a base member (602), a means (604) for moving the base member to the outlet portion of the device, and lift mechanism (606) for moving the first plate (502) of the platform (500) with respect to the base member (602)”

20. Therefore, in the present case when the terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’of the independent Claim 1 of the Complete Specification of Subject Patent Application is read along with the dependent Claim 3 and Claim 11 of the Complete Specification of Subject Patent Application, in the considered opinion of this Court it is clear that those terms are well defined in the Claims of the Complete Specification of Subject Patent Application as per Section 10(4) (c) of the Patents Act.

21. Therefore, the rejection of the Subject Patent Application under Section 10(4)(c) of the Patents Act is liable to be set aside.

22. Even though this Court finds that the claims of the Subject Patent Application fulfil the requirement under Section 10(4)(c) of the Patents Act, since, the counsel representing appellant had suggested herself in the submissions, that she is willing to make amendments to satisfy the Controller as also referred by the Controller in the impugned order, Court also finds it appropriate to grant an opportunity to the Appellant to file amended set of Claims to characterize the technical features of claim 1 to the satisfaction of the Controller.

SECTION 10(5) OF THE PATENTS ACT

23. Now this Court shall examine if the terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’ of the independent Claims 1 of the Complete Specification of Subject Patent Application are clear according to Section 10(5) of the Patents Act. For the same, this Court shall examine the detailed description of the invention along with the drawings.

24. According to Section 10(4)4 of the Patents Act, a Complete Specification of a patent application should have a complete description of the invention along with the best method to perform the same, claims, and an

10. Contents of specifications. —xxx (4) Every complete specification shall— (a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed; (b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and

(c) end with a claim or claims defining the scope of the invention for which protection is claimed.

(d) be accompanied by an abstract to provide technical information on the invention: abstract of the invention. According to Section 10(2)5 of the Patents Act, in addition to other requirements, drawings could also be part of the Complete Specification.

25. The Complete Specification of the Subject Patent Application has a title, a detailed description with a method to perform the invention claimed in the subject patent application, drawings illustrating the said invention and

26. Therefore, for returning a finding on whether terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600) of Claim 1 of the Complete Specification of the Subject Patent Application meet the requirement under Section10(5) of the Patents Act, this Court shall now analyse the claims, description and drawings of the Complete Specification of the Subject Patent Application.

27. Before, moving further to the analysis of the clarity of the terms ‘input conveyor mechanism’ and ‘output mechanism’ of the independent Claims 1 of the Complete Specification of Subject Patent Application, it is pertinent to note that the said terms have been consistently followed by reference numerals ‘(300)’ and ‘(600)’ throughout the Complete Specification of Subject Patent Application. At this juncture, this Court shall make a reference to the decision by a coordinate bench of this Court in Jay Switches India (P) Ltd. v. Sandhar Technologies Ltd.6, where the

10 Contents of specifications. — xxx (2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs, be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly. 2024 SCC OnLine Del 8434 relevance of the reference numerals in a Claim has been enunciated. The relevant paragraph of the said judgment is as follows: “33. A reading of the portions of Claim 1 extracted above shows that the range of 10% to 100% refers to the length of the main circular plate (MCP) (241). The words “main circular plate” in Claim 1 are followed by the numerical reference “241”. When numerical reference “241” is read in juxtaposition with Figure 2 of the invention, it becomes abundantly clear that the numerical “241” is in relation to the main circular plate (MCP). The numerical reference “242” which does not occur in Claim 1 but occurs in Claim 2, refers to the engagement projections (EP). As per Figure 2 above, the numerical “242” clearly indicates the engagement projections (EP).

34. In Virgin Atlantic Airways Limited v. Premium Aircraft Interiors Group Limited[5], the England and Wales Court of Appeal (Civil Division) has held that the reference signs aid in the understanding of technical features, however, they do not limit the scope of the claim.”

28. Thus, it is clear that the reference numerals in claims of a complete specification aid in understanding the terms and features referred to therein. In the present case, the terms ‘input conveyor mechanism’ and ‘output mechanism’ and the reference numerals ‘(300)’ and ‘(600)’ followed by the said terms are referred to in the drawings, which are part of the Complete Specification of Subject Patent Application according to Section 10(2) of the Patents Act. The drawings with the numerals and the paragraphs of the Complete Specification elaborating those drawings are reproduced below: “Referring to Figure 1a, 1b, 1c and 1d, which are a front, a perspective and different side views of a device (100) for folding or bending an article, in accordance with an embodiment of the invention the device (100) for folding or bending an article comprises an input conveyor mechanism (300), a platform (500), a moving member (700) and an output mechanism (600). The input conveyor mechanism (300) is adapted to transport the article from about an inlet portion (102) to an internal portion (104) of the device (100). The platform (500) is adapted to fold or bend the article. Further, the moving member (700) is adapted to co-operate with the input conveyor mechanism (300) so as to bring the article from the internal portion (104) of the device (100) to the platform (500). Furthermore, the output mechanism (600) is adapted for transporting the folded article to an outlet portion (not shown) of the device (100).” “Referring to Figure 3a and 3b which front and side view of the input conveyor mechanism (300) respectively, the input conveyor mechanism (300) comprises a set of rotating end-less belts (302), a plurality of support bars (304) located between the pair of belts, the plurality of support bars being placed at predetermined intervals along the perimeter of the belts and each support bar being provided with a plurality of clasping members (306) being adapted to hold the article.” “In an embodiment of the invention, a part of the platform (500) is coupled to the output mechanism (600).In particular, as shown in Figure 6, the first plate (502) of the platform (500) is connected to the output mechanism (600). The output mechanism comprises a base member (602), a means (604) for moving the base member to the outlet portion of the device, and lift mechanism (606) for moving the first plate (502) of the platform (500) with respect to the base member (602). In one embodiment of the invention, lift mechanism (606) is a 4 stage scissor lift mechanism and means (604) is single lead screw means for moving the base member to the outlet portion (not shown) of the device (100)”

29. The aforesaid drawings of the Complete Specification of the Subject Patent Application, when read with the relevant paragraphs of the Complete Specification, provide further clarity on the technical features of the input conveyor mechanism (300) and the output mechanism (600).

30. Therefore, from the above-extracted drawings and paragraphs of the Complete Specification of Subject Patent Application as well as the dependent claims, this Court concludes that the terms/features ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’of the Claim 1 of the Complete Specification of Subject Patent Application is clear when read together with the detailed description of the invention along with drawings of the Complete Specification of Subject Patent Application as required under Section 10(5) of the Act.

31. Therefore, the rejection of the Subject Patent Application under Section 10(5) of the Patents Act in the impugned order is liable to be set aside.

SECTION 2(1)(ja)

OF THE ACT

32. Now, this Court shall examine the objection of the Controller that the Subject Patent Application does not have an inventive step as per Section 2(1)(ja) of the Patents Act.

33. The Respondent, in its written submissions dated 13.08.2025, has stated that due to the non-compliance of Section 10(4)(c) and 10(5) of the Patents Act, the Controller was unable to conduct a proper assessment of the scope of the invention. Therefore, the inventive step as per Section 2(1)(ja) could not be assessed. This submission is also evident from the conclusions in the impugned order extracted hereinabove at paragraph 2.8. The relevant paragraphs 20, 21 and 24 of the written submissions read as under:

Appellant’s claims were dependent in nature, the same were also accordingly found to be not satisfactory.

21. It is submitted that with respect to the objection raised under Section 2(1)(ja) of the Act, the Appellant failed to distinguish the cited prior arts i.e., D[1]:US10464754B[2] and D[2]:US7331156B[2], from the said invention which were cited in the Respondent’s hearing notice dated 25.08.2022. It is further submitted that on account of the terms used in the principal claim 1by the Appellant, technical features could not be assessed and thus, inventive step could not be ascertained. Accordingly, the objection regarding the same was also not waived by the Respondent xxx xxx

24. It is submitted that, in view of the above, it is evident that the principal claim 1 (as amended) of the Appellant’s subject application does not have any technical features that involve technical advancement when compared to the cited documents or existing knowledge, and thus, the same cannot be considered to involve an inventive step under Section 2(1)(ja) of the Act.”

34. However, curiously, the Controller in its written submissions and the impugned order has concluded that the technical features of the claimed invention does not have any technical advancement as compared to the prior arts and has, therefore, opined that the claimed invention is not inventive under Section 2(1)(ja) of the Patents Act. If the technical features of the claimed invention were unclear to the Controller, this Court fails to appreciate on what basis the Controller compared the technical features of the claimed invention to the prior arts. In addition to being inherently contradictory to the findings of the Controller on lack of clarity, the conclusion of lack of inventive step under Section 2(1)(ja) in the impugned order is unreasoned and abrupt and is, therefore, liable to be set aside.

35. The reasoning of the Controller in the impugned order under Section 2(1)(ja) of the Patents Act is based on the objection under Sections 10(4)(c) and 10(5) of the Patents Act. From the analysis above, this Court is of the opinion that the claims of the Complete Specifications of the Subject Patent Application defines the scope of the terms ‘input conveyor mechanism (300)’ and ‘output mechanism (600)’ of the independent Claims 1 of the Complete Specification of Subject Patent Application as required under Section 10(4)(c) of the Patents Act and the said terms are also clearly described in the detailed description and the drawings of the Complete Specifications of the Subject Patent Application as per Section 10(5) of the Patents Act. Therefore, upon perusal of the Claim 1 with dependent claims and the detailed description along with the drawings, the scope of Claim 1 of the Subject Patent Application can be determined.

36. Therefore, in light of the findings above, the unreasoned finding of the Controller that the features of the Claim 1 lacks any technical advancement in comparison with the prior arts D[1] and D[2] under Section 2(1)(ja) of the Patents Act also stands no merit and requires fresh analysis according to a five [5]-step test set out to determine the obviousness or lack of inventive step by the Division Bench of this Court in F. Hoffmann-La Roche Ltd. v. Cipla Ltd.7, which has also been recently reaffirmed by the Division Bench of this Court in Tapas Chatterjee v. Controller of Patents & Designs[8].

37. Based on the reason provided in the I.A. 7497/2025along with a supporting affidavit, the delay in filing the present appeal is condoned.

38. Accordingly, the impugned order is set aside, and the matter is remanded back to the Controller for a de-novo consideration of the objection under Section 2(1)(ja) of the Patents Act.

39. The Controller would afford a fresh opportunity of hearing the appellant before deciding the Subject Patent Application after giving a hearing notice to the appellant. If any new material comes to the knowledge of the Respondent, the same would be put to the appellant in the hearing notice so that the appellant has an opportunity to deal with the same.

40. Accordingly, the appeal is allowed, and the following directions are passed: i) The impugned order is set aside, and the matter is remanded back to the Patent Office for a fresh consideration of the objection under Section 2(1)(ja) of the Patents Act. ii) The appellant may file an amended set of claims as suggested to this Court by characterising the technical feature in Claim 1. iii) Prior to deciding the matter afresh, the Assistant Controller shall issue a fresh hearing notice considering the amended set of claims, if filed by the appellant, clearly delineating the objections. iv) The appellant shall have the liberty to file fresh written submissions. v) The Patent Office shall endeavour to decide the subject application in an expeditious manner, preferably within three (3) months.

41. The appeal stands disposed of in the aforesaid terms.

42. Pending application stands disposed of.

43. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trade Marks of India on the e-mail- llc-ipo@gov.in.

MANMEET PRITAM SINGH ARORA (JUDGE)