IMPORTANT POINT
The enhancement of known efficacy under Section 3(d) can include improvements in characteristics such as thermostability, and Section 3(e) requires that composition claims demonstrate properties beyond mere aggregation of their components.

JUDGMENT :

SENTHILKUMAR RAMAMOORTHY, J.

Prayer: This Civil Miscellaneous Appeal filed under Section 117A of the Patents Act, 1970, prays (i) to allow the present appeal; (ii) pass an order setting aside the impugned order of the Respondent dated 15th November 2016 and pass an order granting a patent on Indian Patent Application No. 5326/CHENP/2008.

BACKGROUND

1. The appellant challenges the order dated 15.11.2016 of the respondent refusing to grant a patent in respect of Indian Patent Application No. 5326/CHENP/2008. The said application pertains to an invention that was originally titled as “Phytase Variants” and subsequently amended as “Phytase Variants with Improved Thermostability.” The amended claims of the appellant include the following:

1. A phytase which has an improved thermostablility, wherein the phytase comprises at least one alteration and no more than 4 alterations as compared to SEQ ID NO. 2 wherein at least one of said one to four alterations is selected from the following: 4P, 46E, 52E, 53V, 76G, 107G, 111P, 119K, 162C, 223E, 241Q, 273L, 276K, 379K, 385D, 91C/46C, 52C/99C, 31C/176C, 31C/177C, 59C/100C, 141C/199C, 162C/247C, 111P/241Q, 31C, 202N, 286Q and 362 K.R.

2. The phytase of claim 1, wherein the phytase has improved thermostability indicated as residual activity determined by dividing a supernatant in two parts, one part is incubated for 30 minutes at 60° and the other part of 30 minutes at 5°C, following which the activity of both is determined on p-nitrophenyl phosphate at 37°C and pH 5.5, where the residual activity of the phytase is the activity of the sample having been incubated at 60°C divided by the activity of the same sample having been incubated at 5°C where the residual activity of the phytase is at least 105% of the residual activity of the reference phytase SEQ ID No. 2, measured in the same conditions.

..........

8. A composition comprising at least one phytase of claim 1:

(a) at least one fat soluble vitamin.

(b) at least one water soluble vitamin.

(c) at least one trace mineral.

9. The composition of claim 8 further comprising at least one enzyme selected from the following group of enzymes: amylase, phytase, phosphatase, xylanase, galactanase, alphagalactosidase, protease, phospholipase, and/or betaglucanase.

10. The composition of any one of claims 8-9 which is an animal feed additive.

11. An animal feed composition having a crude protein content of 50 to 800 g/kg and comprising the phytase of claim 1 or the composition of any one of claims 8-10.

2. By the impugned order, the claims were rejected primarily on the grounds that the claimed invention is in respect of a known substance which is not patent-eligible under Section 3(d) of the Patents Act, 1970 (the Patents Act) and that the composition claims (claims 8 to 11) fall within the scope of Section 3(e) of the Patents Act because the composition is a substance obtained by the mere admixture of ingredients. It is pertinent, in this regard, to notice and record that there is nothing in the impugned order that indicates that the claimed invention does not possess the attributes to qualify as an invention under Section 2(1)(j) of the Patents Act or that requisite disclosure was not made to work the invention.

CONTENTIONS

3. Oral arguments on behalf of the appellant were addressed by Ms. Vindhya S. Mani, learned counsel from M/s. Lakshmikumaran and Sridharan and on behalf of the respondent by Mr. Subbu Ranga Bharathi, learned Central Government Standing Counsel and Mr. Manoj Madhavan, Deputy Controller of Patents.

4. The first contention of Ms. Vindhya S. Mani was that Section 3(d) of the Patents Act applies only to pharmaceutical substances. In support of this contention, learned counsel relied upon the judgment of the Division Bench of this Court in Novartis AG vs. Union of India (Novartis DB), MANU/TN/1263/2007, particularly paragraph 12 thereof, wherein the Division Bench concluded that the first limb of Section 3(d) is referable only to the field of