An appeal under section 117A (2) of the Patents Act, 1970 was filed by Agriboard International LLC challenging the order passed by the Deputy Controller of Patents & Designs dated 16^th June, 2021, vide which the Appellant’s patent application bearing no. 202014010848 was refused. The application was refused on the ground of lack of inventive step under Section 2(1)(ja) of the Act.

In the First Examination Report (hereinafter ‘FER’) objections relating to novelty under Section 2(1)(j) of the Act on the ground of the subject invention being anticipated, and lack of inventive step under Section 2(1)(ja) of the Act for the invention being obvious were taken. Claims of the patent application were found to be obvious in view of the teaching of the following three documents in the FER: “Document D1: US5945132A Document D2: US20090188642A1 Document D3: CN102026785B”.

The Counsel of the Appellant submitted that the impugned order is absolutely cryptic and it does not have any reasons whatsoever for the refusal of the grant of patent. Even though one paragraph of prior art D1: US5945132A (hereinafter “D1”) is cited in the impugned order, there is no analysis as to the differences or similarity between the cited prior art- D1 and the subject invention of the Appellant, which was clearly distinguished by the Appellant in its reply to the FER .

The order also notes that insofar as the prior art D1 is concerned, the said document has also been considered by the US Patent Office. The US Patent Office have the following reasoning while granting the patent: – “prior art employs a cyclic ram driven by connecting rod(s) extending from a crank connection connected to a drive flywheel, is in accordance with conventional practice. The prior art fails to provide an extruder having a cyclic ram driven by electric linear actuators as currently claimed. There is further no disclosure in the prior art that provides motivation to one of ordinary skill in the art to modify the methods and apparatus disclosed to include electric linear actuators instead of the conventional connecting rod, crank connection and drive flywheel with an expectation of obtaining an advantage. Such modification represents a significant change in the operating principle of the ram. The currently claimed process is therefore considered to be nonobvious over the prior art”

On the other hand, the Counsel appearing for the Patent office submits that the reasoning given by the Controller in the order of refusal s based upon the paragraph of D1 which is extracted in the impugned order. The change from the prior art D1 from mechanical equipment extruder to an electric one is nothing but a workshop modification. He also submits that the earlier patent D1, which was also filed by the Appellant- Agriboard Industries Inc., was granted in 1999 and was due to expire in 2019, which is when the application for subject invention has been filed by the Appellant. He further submits that electric liner actuators are used extensively for actuating a ram in pressing apparatus during this 20 years period and he relies upon US20100307349A1 to substantiate his argument. He, thus, submits the subject invention has been rightly rejected by the Patent office.

After perusing the documents on record, the Court held that it is clear that the analysis of lack of inventive step does not take the above aspects into consideration. The order simply extracts the objection from the FER and does not discuss the response given by the Appellant. Thus the impugned order is completely lacking in reasoning. Except simply coming to a conclusion that the invention is lacking in inventive step, there is no discussion whatsoever in the impugned order as to the manner in which the Appellant sought to distinguish D1 from the subject invention. Also, there is no reasoning by the Controller as to why the subject invention would be hit by prior art D1.

The Court held that while rejecting an invention for lack of inventive step, the Controller has to consider three elements- • the invention disclosed in the prior art, • the invention disclosed in the application under consideration, and • the manner in which subject invention would be obvious to a person skilled in the art. Without a discussion on these three elements, arriving at a bare conclusion that the subject invention is lacking inventive step would not be permissible, unless it is a case where the same is absolutely clear.

In view of the above discussion, the impugned order dated 16th June, 2021 rejecting the patent application of the Appellant was set aside and the matter has now been remanded back for a fresh consideration.