On August 27, 2024, the Madras High Court delivered its judgement in Hendrickson USA, L.L.C. vs Controller of Patents and Designs(CMA(PT)/37/2023). The case revolved around the Appellant’s patent application number 2621/CHENP/2015, entitled “Axle Mount For Heavy-Duty Vehicle Brake System Components,” which was refused by the Controller for lacking novelty and inventive step.

The subject invention involved an axle mount designed to enhance the durability of heavy-duty vehicle brake systems. The independent claim in the subject invention described an axle mount for brake system components wherein the peened portion extended not just over the weld but also beyond stress affected areas or the Heat Affected Zones (HAZ) to improve the durability of the axle and brake system components.

The primary issues before the court were:

• Whether the claimed invention, specifically the extended peened portion beyond the stress concentration boundary, was novel compared to the prior art.
• Whether the invention involved an inventive step or was obvious to a person skilled in the art, considering the prior art.

The Appellant argued that prior art documents D1-D3 did not disclose shot peening extending beyond the HAZ of the weld, as claimed in the subject application. Specifically, the Appellant highlighted that:

• Document D1: Shot peening was limited to the toe portion of the weld.
• Document D2: Peening was described as affecting adjacent areas but did not explicitly cover areas beyond stress concentration zones.
• Document D3: Did not disclose shot peening of the welded region and nearby area.

In response the Controller argued that the claimed invention did not satisfy the requirements of technical advance and non-obviousness under Section 2(1)(ja) of the Patents Act, asserting that the prior art documents disclosed peening techniques, including those affecting areas beyond the HAZ, and therefore, a person skilled in the art would have sufficient knowledge and motivation to peen the weld and also the nearby or adjacent area of the weld (other than the HAZ) to tune the mechanical property. It was also argued that inboard mounting, welding, and shot peening were part of common general knowledge.

The Madras High Court noted that Appellant’s detailed specification asserted benefits of peening beyond stress-affected areas, such as improved durability and reduced weight. The Court further noted that Claim 1 of the subject application included peening extending “beyond a boundary of stress concentration,” similar in scope to the “adjacent areas” described in document D2. While document D2 discussed peening in adjacent areas, it did not conclusively address whether this included areas beyond the HAZ. This raised the question whether the Appellant’s claim represented a substantial advancement or merely an obvious extension of known techniques.

The Court found that while the impugned order discussed D2 and highlighted that said document taught peening in the weld and areas adjacent to the weld, the order did not fully examine whether extending peening beyond the stress concentration boundary involved an inventive step. Consequently, the Court decided to set aside the impugned order and remand the matter for reconsideration.

This decision underscores the importance of a comprehensive evaluation of patent claims and their comparison with prior art, especially when addressing subtle technical distinctions.