The combination of known processes does not negate inventiveness unless it is established that such combination was previously known, and prior art must be adequately substantiated.

JUDGMENT

This appeal is directed against order dated 10.12.2019 rejecting Indian Patent Application No.467/CHENP/2012 for grant of patent for the claimed invention titled "PROCESS FOR THE PRODUCTION OF CARBOHYDRATE CLEAVAGE PRODUCTS FROM A LIGNOCELLULOSIC MATERIAL”.

2. Upon request by the appellant, the respondent issued First Examination Report (FER) dated 30.11.2017. In such report, objections were raised inter alia on grounds of alleged lack of novelty and inventive step. Such objection was raised by citing prior art documents D1 to D6. The appellant responded to the FER on 28.05.2018 and submitted amended claims. Hearing notice dated 31.05.2018 was issued thereafter maintaining all the objections raised in the FER. Pursuant to hearing on 13.07.2018, the appellant filed written submissions dated 09.08.2018. The order impugned herein was issued in the said facts and circumstances.

3. Learned counsel for the appellant invited my attention to the complete specification. He pointed out that the claimed invention relates to the production of xylitol by a non-fermentative process. He also pointed out that enzyme costs are a critical factor in the process. By specific reference to internal page 5 of the complete specification, learned counsel submitted that alcohol is used and that the advantage of the process is the high selectivity of lignin degradation. He also points out that by referring to internal page 7 of the complete specification that the energy expenditure is limited and that lignin is used as a valuable product rather than merely as a source of energy for fermentation.

4. With this introduction, learned counsel referred to the prior art documents cited in the impugned order. Since the impugned order relied heavily on prior art document D5, learned counsel first dealt with the said prior art. By referring to the flow chart (Fig.3 of D5), learned counsel submitted that the flow chart clearly indicates that D5 involves fermentation. By referring to the impugned order at page 51 of the paper book, learned counsel submits that the conclusion recorded therein that the disclosure in prior art D5 clearly makes use of non-fermentative conversion process is contrary to the process described in Fig.3 of D5. According to learned counsel, the said conclusion was drawn by erroneously referring to the background of the invention, which dealt with the art existing prior to D5. In this connection, learned counsel also referred to the detailed description of the invention at column 7 of page 199 of the paper book.

5. Learned counsel next referred to prior art D1, which is non-patent literature titled “Selective Solvent Delignification for Fermentation Enhancement”. He submitted that the very title indicates clearly that it involves fermentation. By referring to table 3 of D1 at page 148 of the paper book, learned counsel pointed out that lignin is used as an energy source for fermentation in the process described in D1 and that this is evident from the lignin content after extraction from either cornstover or wheat straw. As regards prior art D2, learned counsel pointed out that the process involves alkali treatment and that such process is completely dissimilar to the process used in the claimed invention. With regard to prior art D3, by referring to the 3^rd column at page 158 of the paper book, learned counsel submitted that the temperature level specified therein is far higher than the temperature level specified in the claimed invention. By referring to prior art D4, learned counsel points out that the said prior art recites fermentation as being involved in step 4 thereof.

6. Learned counsel further submitted that the appellant's response to the FER was not taken into consideration by the respondent and that this is evident on perusal of the hearing notice, which repeats and maintains the objections in the FER. He also submits that the reasons set out in the impugned order are different from those raised in the FER and hearing notice. I