Passing of a reasoned and a speaking order is an integral part of the principle of audi alteram partem. The Controller must consider the existing knowledge and how a person skilled in the art would move from the existing knowledge to the subject invention.

JUDGMENT

Prathiba M. Singh, J. (Oral). - This hearing has been done through hybrid mod

IA. 161/2022 (for delay)

2. The present application has been filed by the Appellant seeking condonation of delay of 100 days in filing the present appeal. In view of the reasons stated in the application, and the order dated 23rd September, 2021 passed by the Supreme Court in Suo Moto Writ Petition (C) No. 3 of 2020 titled In Re: Cognizance for Extension of Limitation, the said delay is condoned.

3. I.A.161/2022 is disposed of.

C.A.(COMM.IPD-PAT) 4/2022

4. The present appeal under section 117A (2) of the Patents Act, 1970(hereinafter "Act") challenges the impugned order passed by the Deputy Controller of Patents & Designs dated 16th June, 2021. By the impugned order, the Appellant's patent application bearing no. 202014010848 for the invention 'Efficient Method and Apparatus for Producing Compressed Structural Fiberboard' (hereinafter 'subject invention') has been refused on the ground of lack of inventive step under Section 2(l)(ja) of the Act.

5. The background of the case is that the Appellant-Agriboard International LLC, a company based in the United States, filed a patent application on 14th March, 2019 in the US being priority application bearing No. 16/353,624. The corresponding Indian application was filed on 13th March, 2020 before the Indian Patent Office ("IPO ") claiming priority from the US patent application {hereinafter 'priority application'). Upon filing of the request for examination, the application of the Appellant was examined by the IPO.

6. In the First Examination Report (hereinafter 'FER') dated 21st July, 2020 objections relating to novelty under Section 2(l)(j) of the Act on the ground of the subject invention being anticipated, and lack of inventive step under Section 2(l)(ja) of the Act for the invention being obvious were taken. Claims 1-15 of the patent application were found to be obvious in view of the teaching of the following three documents in the FER:

"Document Dl: US5945132A

Document D2: US20090188642A1

Document D3: CN102026785B"

7. The response to the FER was filed by the Appellant on 21st February, 2021. After holding a hearing and filing of written submissions, vide the impugned order, the application for grant of patent for the subject invention was rejected. The impugned order is a short order and the same is extracted below:

"Decision

Agriboard International, LLC of U.S.A filed the instant application for the grant of patent on 13/03/2020. The application was examined on request made by applicant's agent and first examination report was issued on 21/07//2020. Applicant's agent filed reply to first examination report on 21/02/2021 but following objections were still outstanding:

1. Dl: US5945132A Dl (abstract) discloses an efficient method for making a compressed structural fiberboard from agricultural fibrous matter, comprising the steps of: providing a preselected volume of the agricultural fibrous matter; (column 4 lines 15-20)preconditioning the agricultural fibrous matter to have first predetermined moisture level within the agricultural fibrous matter; (column 4 lines 44-54)extruding the agricultural fibrous matter to form a continuous compressed structural fiberboard using an extruder having a cyclic ram that is actuated and driven by electric linear actuators; {(column 5 lines 20-31), Extruder effect produce by the reciprocating ram of packer disclosed in Dl is significantly similar to the effect of extruder having a cyclic ram of instant invention, thus having no inventive ingenuityJ monitoring the density of the compressed structural fiberboard; (column 5 lines 63-65)utilizing a programmable logic controller to monitor and adjust the speed at which the compressed structural board is produced to control the density of the compressed structural fiberboard. (column 11, lines 38 to 49). In view of the above, it would be obvious to a person skilled in the art to arrive at the technical solution set forth