IMPORTANT POINT
An invention must demonstrate novelty and an inventive step, and cannot be merely a known process that does not result in a new product or employ a new reactant to qualify for patent protection.

JUDGMENT :

PRAYER: Civil Miscellaneous Appeal is filed under Section 117-A of the Patents Act, 1970, praying to pass an order granting a patent in Application No. 4032/CHE/2013; to set aside the impugned order of Respondent 1 refusing registration; and a direction that the Respondent 1 shall allow the application to proceed to grant on an expedited basis.

Background

The appellant assails an order dated 20.04.2020 by which Patent Application No.4032/CHE/2013 was rejected by the Indian Patent Office. Indian Institute of Technology Madras (the appellant) filed the above-mentioned application entitled ‘METHOD OF DOPING POTASSIUM INTO AMMONIUM PERCHLORATE’ on 10.09.2013. The application was published on 25.12.2015 and the First Examination Report (FER) was issued on 01.10.2018. The FER cited prior art document D1 (US3269879) dated 30.08.1996 and raised objections on the grounds that the claimed invention lacks novelty, inventive step, and is patent-ineligible as per Section 3(d) of the Patents Act, 1970 (the Patents Act). The appellant filed a response to the FER on 01.04.2019 amending the complete specification. The hearing letter was issued on 26.11.2019 maintaining objections under Sections 2(1)(ja) and 3(d) of the Patents Act. The appellant made oral submissions during the physical hearing on 19.12.2019 and filed written submissions with amended claims on 01.01.2020.

2. The impugned order was passed on 20.04.2020 whereby the Controller refused the application under Sections 2(1)(ja), 3(d) and

3(a) (i.e. invention is frivolous) of the Patents Act, the last being a new ground not raised either in the FER or even in the hearing notice. Against this backdrop, the present appeal arises.

Counsel and their contentions:

3. Oral arguments on behalf of the appellant were advanced by Mr. T.K. Ramkumar, learned counsel, assisted by Ms. Sumitha Vibhu, learned counsel; and on behalf of the respondents by Mr. Rajesh Vivekananthan, learned Deputy Solicitor General.

4. Learned counsel for the appellant opened his arguments by submitting that the claimed invention relates to a method of doping potassium into ammonium perchlorate (AP) for increased burn rates in solid propellants used in defence and space applications. When potassium is doped with ammonium perchlorate through a recrystallization process, he submitted that it changes the latter’s thermal properties and has an incremental effect on the solid propellant's burning rates.

5. He summarized the process as follows: AP is completely dissolved in distilled water following which floating impurities are removed by filtering the solution; water removal is achieved by heating the filtrate; and moisture removal by reheating it in a hot air oven at 333k for two days. Recrystallization of AP happens during the filtering process wherein the potassium gets doped into AP. The filtering material used and the time of exposure of the solution to the filtering material determine the amount of potassium that gets doped into AP. The recrystalized AP doped with potassium (RAP) increases the burn rate as compared to the AP manufactured through a process that uses a reagent.

6. Learned counsel next contended that rejection of the patent application is untenable on all the four reasons mentioned therein. First, he submitted that the conclusion that the claimed invention was excluded under Section 3(a) of the Patents Act because it was frivolous was raised for the first time in the impugned order. Consequently, he contended that the appellant was denied an opportunity to respond to such objection; hence, such conclusion is liable to be interfered with.

7. Secondly, as regards the conclusion that the invention is a mere new use of a known process, he contended that Section 3(d) of the Patents Act does not apply if the usage of a known process results in a new product. According to him, during the filtering process, AP acquires potassium from the filtering material. He further submitted that this is not accidental and that