The Controller must consider the differences between prior art and the claimed invention, provide a reasoned order, and adhere to the principles of audi alteram partem.

JUDGMENT :

AMIT BANSAL, J.

1. The present appeal under Section 117A(2) of The Patents Act, 1970 (hereinafter “the Act”) impugns the order dated 14th September, 2018 passed by the Deputy Controller of Patents and Designs, whereby the appellant’s application for grant of the patent bearing no. 2924/DEL/2008 has been refused.

Brief Facts

2. The brief facts necessary for deciding the present appeal are set out hereinafter:

(I) The aforesaid patent application was filed with provisional specification on 23rd December, 2008 at the Delhi Patent Office. Subsequently, a complete specification with ten claims was filed with the Patent Office. Along with the complete specification, the appellants also filed a duly filled Form 18 as the Request for Examination of the said patent application on 23rd December, 2009.

(II) A First Examination Report (FER) was issued on 30th March, 2017, in terms of which, an objection was raised that the claims lack inventive step in view of the prior-art documents referred to as D1, D2, D3, D4, D5 and D6 and therefore, do not constitute an invention under Section 2(1)(j) of the Act. The FER also raised an objection under Section 3(h) of the Act stating that the subject matter claimed in claims 1-6, claim 9 and claim 10 relates to a method of agriculture and, therefore, not patentable.

(III) In addition to the objections of inventive step and non-patentable subject matter, the FER also raised objections on the scope and clarity and conciseness of the claims. The said objections are extracted below:

“SCOPE:

(xvi) Claim(s) 1-10 does/do not define the scope of invention for which the protection is claimed for the following reasons:

(a) The expression “nutrients” [claim 1] is broad in scope. Use of said expression makes the scope of claims unclear.

(b) Claim 1 is oriented to the preparation of bio bed from non-absorbent cotton. The claim does not clearly define the bio bed preparation steps.

(c) Claim 6 recites “the growth was registered during the study period.” However, the claim does not define the steps needed to be performed in order to register the growth.

(d) Claims 9 and 10 define the results achieved using the claimed method and the advantages of said method but do not define any technical feature of the claimed method necessary to achieve the claimed results and thus fail to clearly define the scope of protection sought.”

CLARITY AND CONCISENESS:

(xvii) Claim(s) 1-10 are not clearly worded in respect of:

(a) Claim 2 fails to clearly convey the claimed subject matter. It is not clear how a method can be treated with purified water. Similar objection applies to claim 6 also.

(b) Claim 5 recites “controlled manner.” The technical features represented by said expression are unclear.

(c) It is not clear how much quantity of hydrant is being referred to as “small quantity” in claim 6.

(d) The expression “TS” in claims 8 and 9 is unclear in meaning.

(e) The claims are not in proper format. A typical patent claim consists of the following parts:

(a) THE PREAMBLE (identifies the category of the invention e.g. an apparatus, device, article, composition, a method or process...etc.)

(b) TRANSITIONAL PHRASE (comprising or containing).

(c) THE BODY (recites elements and limitation of the claim and explains how the different elements exist in relationship to one another).

Claims shall be re-drafted so as to clearly bring out the technical features of the claimed subject matter.

(IV) Objections with respect to Formal Requirements were also raised in the said FER. It was stated that as per Section 6 of the Biological Diversity Act, 2002 permission needs to be obtained from the National Biodiversity Authority before the grant of a patent for subject matter involving biological material from India. Additionally, it was stated in the FER that the drawings need to be filed as per Rule 15(6) of the Patent Rules, 2003 (as amended).

(V) Pursuant thereto, the claims were amended by the appellants and amended claims were filed. In view of the objections