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O R D E R

% 08.04.2026

1. This appeal is filed on behalf of the Appellant under Section 117A of the Patents Act, 1970 (hereinafter ‘1970 Act’) laying a challenge to order dated 11.01.2024 passed by the Respondent in Indian Patent Application No. 8083/DELNP/2013 (hereinafter ‘subject patent application’). The subject patent application, titled “System Nozzle and Method for Coating Elastic Strands”, was filed before the Patent Office, Delhi on 16.09.2013 as a national phase application entering India from PCT International Application No. PCT/US2012/032893 dated 10.04.2012. The subject patent application claims priority from United States Provisional Application No. 61/474129 dated 11.04.2011.

2. Appellant filed a Request for Examination dated 16.02.2015 under Section 11B and Rule 24B of the 1970 Act and the Patents Rules, 2003 respectively. The subject patent application was published on 22.04.2016. Pursuant to the Request for Examination, the Patent Office examined the subject patent application, and a First Examination Report (hereinafter “FER”) dated 20.11.2018 was issued by the Respondent. The primary objections raised in the FER related to lack of novelty and inventive step under Sections 2(1)(j) and 2(1)(ja) of the 1970 Act in view of cited prior art document D1: GB 1455469A, as well as objections pertaining to clarity and conciseness under Section 10(4)(c) of the 1970 Act.

3. Appellant filed a response to the FER dated 17.05.2019, along with an amended set of Claims, attempting to address all the objections raised therein. During the pendency of the application, Appellant also complied with the requirements under Section 8(1) of the 1970 Act by filing Form 3 on multiple occasions. Thereafter, vide communication dated 07.11.2023, Respondent issued a Hearing Notice scheduling a hearing under Section 14 of the 1970 Act on 08.12.2023. The objections maintained in the Hearing Notice pertained to clarity and conciseness of claims under Section 10(4)(c) of the 1970 Act and a fresh objection under Section 2(1)(ja) of the 1970 Act alleging lack of inventive step in view of newly cited prior art documents, namely D2: US2004144494A1, D3: US20030173018, and D4: US20100024987, was raised.

4. Appellant’s agent attended the hearing on 08.12.2023 and contested the objections raised in the Hearing Notice. Post the hearing, Appellant filed written submissions on 18.12.2023 along with an amended set of Claims comprising Claims 1 to 68, addressing the objections raised in the Hearing Notice and requesting that in case of any further objection or outstanding requirement, an opportunity of hearing be granted before any adverse decision was taken. However, Respondent passed the impugned order dated 11.01.2024 refusing the subject patent application under Section 15 of the 1970 Act on the ground that the amended Claims 1-68 filed on 18.12.2023 did not satisfy the requirement of Section 10(4)(c) of the 1970 Act owing to lack of clarity and consequently, analysis of inventive step under Section 2(1)(ja) of the 1970 Act was “unwarranted at this stage and cannot be analyzed.” Aggrieved by the said order, the Appellant has preferred the present appeal.

5. Learned counsel for the Appellant submits that impugned order dated 11.01.2024 is liable to be set aside on multiple grounds including flagrant violations of principles of natural justice and required procedure and merits and the matter deserves to be remanded to the Respondent for a fresh decision. It is urged that the Hearing Notice dated 07.11.2023 raised a specific and narrow objection under Section 10(4)(c) of the 1970 Act to the effect that the use of the phrase “further comprising” in the identified dependent claims rendered those claims vague and unclear. Appellant responded directly and precisely to this objection by deleting the word “further” from each of the identified dependent claims and filed an amended set of claims on 18.12.2023. By the impugned order, the application is re