The patent application was rejected due to lack of enablement, clarity, and inventive step, failing to meet statutory requirements under the Patents Act.

JUDGMENT :

Factual Background:

The appellant assails an order dated 27.10.2021 issued by the respondent in the review petition filed by the appellant under Section 77(1) (f) and (g) of the Patents Act, 1970 ('Patents Act') for reviewing the Controller's decision on 21.04.2021 in respect of the appellant's application for grant of patent (Indian Patent Application No. 5606/CHENP/2012).

2. The appellant filed the subject patent application on 27.06.2012 as a national phase application of PCT (Patent Cooperation Treaty) Patent Application No. PCT/IN2010/000669 dated 08.10.2010 claiming priority from US Application Nos. 61/290, 104 dated 24.12.2009 in respect of the invention titled 'Necktie Persona-Extender/Environment-integrator and method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg'.

3. The application was originally filed with 13 claims. The First Examination Report (FER) was issued on 30.8.2018 raising objections under Sections 2(1)(j) with respect to inventive step, industrial applicability, 3(k), 3(m), 10(5), 10(4) of the Patents Act. In response to the FER, the appellant submitted its reply on 27.02.2019 deleting claims 6-13 and submitting amended claims 14-30.

4. Subsequently, the hearing notice was issued on 07.08.2020 raising objections in respect of the amended claims under Sections 10(5), 10(4)(c), 10(5), 8(1)(b), 2(1)(ja), 3(k), 3(m), 57 read with 59 of the Patents Act. The hearing was conducted on 07.09.2020 and in the final written submissions dated 15.09.2020, the appellant submitted a detailed rebuttal refuting the objections raised in the hearing notice. The respondent issued the original decision on 21.04.2021 maintaining objections concerning: lack of enablement and definitive scope of the invention under Section 10(4); lack of clarity and conciseness under Section 10(5); amended claims being outside the scope of originally submitted claims in contravention of Section 57 read with Section 59; lack of compliance with formal requirements under Section 8(1)(b); lack of inventive step under Section 2(1)(ja) of the Patents Act in view of the teachings disclosed in prior art D1 (WO2001035208A1); and non- patentability under Sections 3(k) and 3(m) of the Patents Act.

5. Aggrieved by the order, the appellant filed a review petition under Sections 77(1)(f) and (g) of the Patents Act and Rules 130(1), 130(2) of the Patent Rules, 2003 on 11.05.2021 by making amendments to the claims. A second hearing notice was issued on 09.06.2021, again, raising objections under Sections 10(4)(a-c), 10(5), 2(1)(ja), 3(k), and 3(m). The hearing took place on 02.07.2021 and the appellant submitted written submissions thereafter on the same day making further amendments to the claims. Pursuant thereto, the respondent issued the impugned order dated 27.10.2021 rejecting the patent application on the grounds of lack of enablement, lack of definitive scope of the invention under Section 10(4)(a-c), lack of clarity and concisenesses under Section 10(5), lack of compliance with formal requirements such as no proper reference provided in the figures, amended claims being outside the scope of original claims in contravention of Section 59(1), lack of inventive step under Section 2(1)(ja) of the Patents Act in view of the teachings disclosed in prior arts D2-D8 (US20040030741A1, "A Survey of Black-Box Modernization Approaches for Information Systems", Walnau et al., 1063-6773/00 $10.00 © 2000 IEEE, US5404440A, US20040006566A1, US5880731A, Motupalli 1989: Statement of Purposes, ??? (Phi Sigma Join), Carroll 1982: IEEE: Metaphor and the Cognitive Representation of Computational Systems in combination with D1, and non-patentability under Sections 3(b), 3(k) and 3(m) of the Patents Act. The present appeal arises against this backdrop.

Submissions by the parties:

6. Oral arguments and written submissions were made by the appellant as party-in-person. Learned Special Panel Counsel, A.R.Sakthivel, appeared on behalf of the responde