The main legal point established is the requirement for reasoned and speaking orders in patent application rejections, emphasizing the need for adjudicating officers to consider the applicant's response and provide decisions reflecting due application of mind.

ORDER (Oral)

C.Hari Shankar, J.

1. I have, before me, yet another order passed by an Assistant Controller of Patents and Designs, whereby Application No. 6727/DELNP/2014, filed by the appellant, seeking registration of a patent, stands rejected, without even a word of independent reasoning, merely reproducing the contents of the hearing notice issued to the appellant.

2. Consequent to the submission of Application No. 6727/DELNP/2014, by the application, for registration of the aforesaid patent, First Examination Report (FER) was issued to the appellant on 28th May 2019. The appellant submitted its response to the FER on 19th November 2019, whereafter, hearing notice dated 16th July 2020 was issued to the appellant by the Assistant Controller, fixing hearing in the matter on 6th August 2020. Para 3 contained the surviving objections, and may be reproduced thus:

"Objections

Formal Requirement(s)

1. Format of all forms (Form 1, Form 3, Form 5 and Form 18) have not submitted according to second schedule of Patent rules, 2003 (Tick/Cross whichever is applicable/not applicable). Strike out the column which is/are not applicable

2. Irrelevant portion of the complete specification shall be scored out.

3. A marked copy clearly identifying the amendments carried out and a statement clearly indicating the portion (page number and line number) of the specification or drawing being amended along with the reason shall also be filed

Invention u/s 2(1)(ja)

1. Applicants argument with respect to the Inventive step are fully considered; they are not found persuasive in view of the following discussions. The applicant in his reply argues that D1-D3 teaches away from the claimed invention; Applicant argues that since D1 and D2 teaches a separate crystallization accelerator from the stereocomplex crystallites and the crystallization accelerator promotes the formation of homocrystals of polylactic acid, it teaches away from the instant invention. These arguments are not found satisfactory; D2 was used as a reference to teach the concentration of PDLA in the resin, not the presence of a nucleating agent in addition to the stereocomplex crystallites. Furthermore, the office action respectfully disagrees that the presence of a crystallization accelerator and stereocomplex crystallites in D2 does not teach away from the instant invention when the instant invention has both. D4 (US 2009/0186178) teaches a biodegradable polylactic acid (PLA) resin composition formed using a stereocomplex crystal structure (paragraph 0001). D4 teaches that the PLA resin contains poly D- lactic acid (PDLA) and excess poly-L-lactic acid (PLLA) in a ratio such that stereocomplex crystals are formed which act as a nucleating agent for the resin to increase the overall crystallization rate of the resin (paragraph 0030).D4 teaches that the PLLA contains L-lactic acid units in a range of 90 to 99 mol% and the PDLA contains D-lactic acid units in a range of 80 to 99 mol% (paragraph 0039). The office action notes that these ranges are close to the ranges recited in instant claim 1 for the purity of the PLLA and PDLA (less than 1 mol% of the opposite isomer). It has been held that obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that a person skilled in the art would have expected them to have the same properties.

The PLLA and PDLA used in the inventive examples of D4 contain 98.5% and 99% of their respective isomers, respectively, (paragraph 0071) so that a person skilled in the art could be reasonably expected to use PLLA and PDLA purities that are closes to the purities required in the instant claims.D4 teaches that the PLLA and the PDLA are present in a molar ratio of from 95:5 to 60:40 (paragraph 0036). The office action notes that since D- lactic acid and L-lactic acid are isomers, a molar ratio would be the same as a mass ratio. Therefore, the concentration of PDLA in the resin of D4 overlaps with the range recited in instant c