The main legal point established in the judgment is the requirement for a detailed analysis of the existing knowledge and how the subject invention lacks inventiveness in light of the prior art when rejecting a patent application for lack of inventive step.

JUDGMENT

Amit Bansal, J. (Oral)

1. The present appeal has been filed under Section 117-A of the Patents Act, 1970 impugning the order dated 3rd August, 2017 passed by the Assistant Controller of Patents in Indian Patent Application No.3845/DELNP/2007 (hereinafter "subject application") filed on 10th May, 2007 for the invention titled "Step-Action Indexing Mechanism" (hereinafter "subject invention").

2. Brief facts relevant to decide the present appeal are as follows:

2.1. The appellant had filed the subject application on 10th May, 2007 at the Patent Office, New Delhi.

2.2. The subject application was filed as a national phase application under the Patent Cooperation Treaty (PCT) claiming priority date of 10th November, 2004.

2.3. The Patent Office issued a First Examination Report (FER) on 22nd November, 2013 and raised various objections, particularly an objection relating to lack of novelty and inventive step in terms of Section 2(1)(j) of the Patents Act, 1970.

2.4. A detailed response was filed on behalf of the appellant to the aforesaid FER, wherein the appellant distinguished the subject invention from the prior art. Subsequently, various hearing notices were issued by the Patent Office to the appellant, wherein once again an objection was taken with regard to lack of inventive steps in view of the prior art, D1, D2 and D3.

2.5. The appellant filed written submission on 15th May, 2017 dealing with the prior art cited by the Patent Office and it was explained how the subject invention is discernible from the prior art. It was also stated that the subject invention has been granted patent in China, Mexico, Canada, USA and EPO.

3. The impugned order was passed by the Patent Office on 3rd August, 2017 rejecting the subject application on the ground of lack of inventive steps under Section 2(1)(j) read with Section 2(1)(ja) of the Patents Act, 1970. The relevant observations of the impugned order are set out below:

"I opine as follows:

1. Objection 2 be waived off.

2. Amended claims 1-11 lacks in inventive step u/s 2(1) (j) read with 2(1) (ja) as they shall be obvious to a person skilled in the art when taught by the cited documents in combine D1, D2 and D3.

Therefore, this application is refused patent over amended claims 1-11, u/s 15 of "The Patent Act 1970".

The Application stands disposed off."

4. Counsel appearing on behalf of the appellant submits that detailed submissions were made on behalf of the appellant in response to the FER as well as the written submissions, wherein the subject invention has been distinguished from the prior art cited by the Patent Office. However, the Patent Office has passed a cryptic order without dealing with any of the submissions made on behalf of the appellant. In this regard, reliance is placed on the judgment of a Co-ordinate Bench of this Court in Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940 and the judgment dated 27th September, 2022 in C.A.(COMM-IPD-PAT) 8/2022 titled Auckland Uniservices Limited v. Assistant Controller of Patents and Designs to submit that the Patent Office is required to pass a speaking order analyzing what is the existing knowledge and how the subject invention lacks inventiveness in light of the subject art.

5. Per contra, counsel appearing on behalf of the respondent submits that the appellant has failed to provide any justification or grounds for distinguishing the subject invention from the prevailing prior art. He further submits that additional grounds have been taken in the appeal which were not a part of the written submissions filed earlier.

6. I have examined the record and heard the counsels for the parties.

7. At the outset, reference may be made to the relevant observations of this Court in Agriboard International (supra), which are set out below:

"23. The said reasoning has been reiterated by the Supreme Court in Manohar v. State of Maharashtra & Ors. AIR 2013 SC 681 wherein it has been categori