JUDGMENT

AMIT BANSAL, J.

1. The present appeal under Section 117A of the Patents Act, 1970 (hereinafter ‘the Act’) has been preferred against the order dated 17th June, 2022 (hereinafter ‘impugned order’) of the Assistant Controller of Patents and Designs, Indian Patent Office, Delhi (hereinafter ‘Controller’) refusing the grant of patent in respect of patent application no.201617023479 (hereinafter ‘subject patent’) filed by the appellants.

BRIEFFACTS

2. Brief facts necessary for deciding the present appeal are set out below:

2.1 The appellants filed the national phase application no. 201617023479 in respect of the PCT Application no.PCT/EP/2015/052030 at the Indian Patent Office titled ‘MANUFACTURING OF DECORATIVE LAMINATES BY INKJET’on 8th July, 2016.

2.2 The Patent Office issued a First Examination Report (FER) dated 27th April, 2019 in terms of which, objections under Sections, 2(1)(j), 2(1)(ja) as well as Sections 10(4) and 10(5) of theAct were raised.

2.3 A detailed response along with an amended set of claims was filed on behalf of the appellants to the aforesaid FER on 11th July, 2019.

2.4 On 6th March, 2022, the respondents issued a hearing notice fixing the date of hearing for 21st March, 2022, retaining the objections as mentioned in the FER.

2.5 The appellants filed written submissions dealing with the issues that were discussed during the oral hearing held on 21st March, 2022 along with an amended set of claims on 1stApril, 2022.

2.6 The impugned order was passed by the Patent Office on 17th June, 2022 rejecting the subject application.

3. Notice in the appeal was issued on 22nd September, 2022. Pursuant thereto, written submissions have been filed on behalf of the respondents as well as the appellants.

4. The main grounds for refusal were the following:

(i) The amended claims failed to meet the requirements under Sections

10(4)(c) and 10(5) of the Act as they were vague and the scope of claims was indefinite (ii) The amended claims are not patentable in terms of Section 2(1)(ja) of theAct.

Submissions

5. While assailing the impugned order, counsel for the appellants made the following submissions:

(i) The impugned order records that steps 1 to 4 have been disclosed in the prior art cited as D5. However, it does not make any mention of step 5.

(ii) The impugned order wrongly notes that the characterised feature 5b is disclosed in D5. The prior art cited as D5 teaches “application weight or wet weight” and not “total dry weight” as required by claim 1.

(iii) The impugned order admits that feature 5a is not taught by prior art document D5, but relies on ‘common general knowledge’ to refuse claim 1. However, it does not provide any reference or basis to establish ‘common general knowledge’. In this regard, reliance is placed on the judgment of Generics (UK) Ltd. v. Daiichi Pharmaceuticals Co.Ltd., [2009] R.P.C. 4.

(iv) Document D5 was also cited in opposition proceedings against the appellants before the European Patent Office. However, the European Patent was granted in favour of the appellants. The claims granted by the European Patent Office are similar to the claims refused by the impugned order.

(v) The impugned order wrongly states that the terms of the claims are vague and indefinite. The terms of the patent claims held to have been indefinite, have been described in the complete specification and are widely used in the patent specifications and would be clear and definite to a person skilled in art.

6. Per contra, counsel for the respondents while defending the impugned order made the following submissions:

(i) Method steps 1 to 4 as well as characterised feature 5b are explicitly disclosed in document D5. In this regard, reliance is placed on paragraph 33 of the document D5 (page 248 of the appellants’ documents) which states that, “The application weight of the ink- receiving layer can be 2 to 25 g/m2, in particular 3 to 20 g/m2, but preferably 4 to 15 g/m2.”

(ii) In respect of feature 5a, it is related to workshop modification o