JUDGMENT

ANISH DAYAL, J.

1. These appeals challenge rejection of patent application Nos.6500/DELNP/2011 and No.6501/DELNP/2011 [‘subject applications’] on the ground that subject matter is not patentable under Section 3(k) of the Patents Act, 1970 [‘the Act’], since claims relate to computer program per se or algorithm. Patent application No.6500/DELNP/2011 was also rejected on the ground of not being a valid divisional application under Section 16 (1) of the Act.

Factual Background

2. Bibliographic details of these applications are tabulated as under:

REJECTION non-compliance of formal objections

3. Both subject patent applications are divisional applications of Indian Patent Application No. 1167/DELNP/2006 which proceeded to grant of patent vide Indian Patent No.268384 [‘parent application’].

4. The appellant is a company incorporated in USA and filed the subject applications on 25th August 2011. The parent application is a National Phase application No. PCT/US2004/030144 dated September 15 2004. Objection 2 of the First Examination Report [‘FER’] stated that subject application was not patentable under Section 3(k) of the Act, since method Claims 1-17 related to a set of sequences used to implement an algorithm, Claims 18-19 are software products having computer executable instructions, and Claims 20-21 do not disclose any constructional of structural features but represent an algorithm. Objection 6 of the FER stated that the subject application does not stand as divisional application under Section 16(1) and 16(3) of the Act, as there is no distinct invention compared to granted claims of the parent application.

5. In the response to the FER, claims of the subject patent applications were substantially amended to overcome the objections, and Claims 1-23 were filed along with the response. In the hearing notice, respondent maintained the objections inter alia under Section 3(k) and, for the former application, Sections 3(k) and 16 of the Act.

6. During the hearing, appellant raised objections especially with regard to non-patentability under Section 3(k) and non-compliance with Section 16(1) of the Act. Detailed written submissions were filed on 29th October 2020, along with amended claims and other documents.

7. Subject matter of the patent application would be evident from Claim 1 of the said application extracted as under:

Submissions on behalf of appellant

8. Appellant’s contention was that subject application was a data processing method which involved the following essential elements: a. An identification processing module – which created a plurality of subsets of fields of data records from a data source, with each subset including at least a first field and a second field;

b. A partition component – which partitions data records into multiple parts independent of values occurring in the fields of those data records;

c. An attach value component –forming data elements from the records for each of the multiple parts, with each data element identifying the first field and the second field of the given subset and corresponding values occurring in those fields;

d. A rollup component – used to determine counts based on the values that occurred in the first field and values that occurred in the second field of the database for each of the part com