The main legal point established is the requirement for reasoned and considered decisions by the patent office, as well as the right of the applicant to have their submissions addressed and considered.

JUDGMENT (Oral)

C. Hari Shankar, J.

1. This appeal under Section 117A of the Patents Act, 1970 challenges the following order dated 31 October 2016 passed by the Deputy Controller of Patents and Designs, whereby Patent Application no. 5159/DELNP/2007 dated 4 July 2007 filed by the appellant for grant of a patent in respect of an invention titled "Minimizing feedback by sending a quality indicator for a non- restrictive reuse set and a vectored quality indicator for other reuse sets" stands rejected.

2. The impugned order reads as under:

"DECISION

The instant patent application No. 5159/DELNP/2007 titled "MINIMIZING FEEDBACK BY SENDING A QUALITY INDICATOR FOR A NON-RESTRICTIVE REUSE SET AND A VECTORED QUALITY INDICATOR FOR OTHER REUSE SETS" was filed on 04/07/2007. Consequent upon filing request for examination no. 4003/RQ-DEL/2007 dated 17/07/2007 and publication dated 17/08/2007, the first examination report was issued on 19/12/2011 with the following major official requirements:

"1. Subject matter as described and claimed in method claims falls within the scope of sub clause k of section 3 of The Patents Act 1970 as amended by the Patents (Amendment) Act 2005, for being algorithm based method.

2. Subject matter as described and claimed in claim 24 falls within the scope of sub clause k of section 3 of The Patents Act 1970 as amended by the Patents (Amendment) Act 2005, for being relating to computer program per se.

3. Without prejudice to objection 1-2. Claims do not sufficiently define the invention. In view of the plurality of the independent set of claims, the nature and scope of the alleged invention is not clearly understood. Subject matter for which protection is sought may be different to that defined by the claims, thereby resulting in a lack of clarity of the claims when the description is used to interpret the claims. The claims should be redrafted to make them sufficiently definitive and Inventive features should be brought out clearly under characterized clause and reference numerals should be supplemented in parenthesis to enhance the intelligibility of Claims and clearly define the scope of the invention, in accordance with section 10(4)(c) of The Patents Act 1970 as amended by the Patents (Amendment) Act 2005. During revision and redrafting, care should be taken not to add any subject matter, which extends beyond scope of the application as originally filed." The agent of the applicants submitted their response on 19/12/2012. The replies of the applicant were considered and the examiner retained the official requirements mainly on grounds of definitiveness and that under section 3(k) mainly as follows:

"1. Regarding your observation given for objection No. 1 of FER dated 19.12.2011 is carefully considered but it does not meet the office requirements: Subject matter as described and claimed in method claims fall within the scope of sub clause k of section 3 of The Patents Act 1970 as amended by the Patents (Amendment) Act 2005, for falling within the scope algorithm based on method steps. Since the method steps can be implemented using software only and no inventive constructional feature is needed to perform the method steps (i.e. method steps are performed using conventional system). Further the apparatus claimed (claims 21-23) is a conventional apparatus and is based on the method steps, hence said claims fall under section 3(K) for falling within the scope algorithm.

2. Claim 21 recite various means. This claim is not clear in respect of structural features of the said means. Also this claim is not supported by the description. In absence of such structural features the claim is indefinite and do not satisfy the requirement of section 10(4)(c) of the Act. Further claims 21,22 and 23 are not clear as the purpose or object of the claimed apparatus is not mentioned in the preamble of the claims. Further Claims 22 and 23 are mere repetition of claim 21. Hence claims should be redrafted to have a one independent clai