JUDGMENT

Prathiba M. Singh, J. - This pronouncement has been done through hybrid mode.

2. The present appeal under section 117A of the Patents Act, 1970 (hereinafter 'Act') challenges the impugned order of the Asst. Controller of Patents dated 28th September, 2020. Vide the said order, the divisional application of the Appellant being 7863/DELNP/2014 (hereinafter 'divisional application') has been rejected on the ground that the subject matter of the granted claims of the parent application being 8114/DELNP/2007 (hereinafter 'parent application') and the subject matter of the divisional application belong to the same broad class and group of inventions linked so as to form a single inventive concept. Thus, the Controller has held that the divisional application is not maintainable.

Factual Background

3. The background of the present appeal is that the Appellant filed four U.S. priority applications being 60/681, 684, 60/681, 722, 60/681, 723, and 60/681, 772 on 17th May, 2005 in respect of various pharmaceutical preparations for compositions and methods for treatment of eye disorders. The Appellant filed PCT application bearing number PCT/US2006/019327 dated 17th May, 2006 taking priority from the above-mentioned applications. The said PCT application entered the national phase in India with application number 8114/DELNP/2007, filed on 19th October, 2007. The application had a total of 56 claims. A request for examination was filed by the Appellant, for examination of the application, on 28th April, 2009. The First Examination Report (FER) was issued by the Patent Office on 15th May, 2013. One of the objections raised in the FER was that the claims show plurality of distinct inventions. The said objection is set out below:

'2. Claims show plurality of distinct inventions:

1) Claims 1-20, 21-30, 48, 50-51 and 52 defines a plurality of distinct inventions each independently belonging to a different method of treatment.'

4. Another objection raised by the ld. Asst. Controller in the FER was that the manner in which the substitutions were being effected in respect of the formula as represented in claim 3 and dependent claims of Lymphocyte Function Associated Antigen-1 antagonist (hereinafter 'LFA-1 antagonist') also shows multiplicity. The said formula is reproduced hereinbelow:

5. The ld. Assistant Controller was of the view that the number of substituents in R1-R3,(R4),(A), B,D,E,L, and AR1, in the formula as represented in claim 3, show variations which do not appear to fall within single inventive concept. As per the FER, the permutations and combinations of the rings were so many and so broad that it was impossible to ascertain the actual scope of the invention. The said objection of the Patent Office is set out below:

'5. The formula as represented in claim 3 and dependent claims of LFA-1 shows multiplicity. The number of substituents in R1 - R3,(R4),(A),B,D,E,L AND AR1 show variations which do not appear to fall in within single inventive concept. The permutations and combinations of the rings are so many and so broad that it is impossible to ascertain the actual scope of the invention. Claim 3 should be restricted to the compounds which reasonably possess the claimed pharmacological activity, supported by proper data in the complete specification.'

6. An amended set of claims was filed by the Appellant along with the Response to the FER dated 27th November, 2013. In the amended claim set, the Appellant restricted the claims to the following three specific compounds:

4. A pharmaceutical composition comprising an effective amount of a compound as claimed in any of claims 1-3 and a pharmaceutically acceptable vehicle.

5..9...'

7. The Appellant then filed the present divisional application on 19th September, 2014. It sought to cover a broad range of compounds including the Markush i.e., an ocular pharmaceutical formulation comprising an LFA-1 antagonist, a pharmaceutical acceptable carrier, and a pharmaceutically acceptable excipient. In t