The Madras High Court in the case of Annikki GmbH vs Assistant Controller of Patents and Designs [(T)CMA(PT) No.70 of 2023] examined the rejection of patent application number 467/CHENP/2012, entitled “Process for the Production of Carbohydrate Cleavage Products from a Lignocellulosic Material”. The application had been refused by the Controller on the grounds of lack of inventive step under Section 2(1)(j) and non-patentability under Section 3(d) of the Patents Act, 1970.

The subject application claimed a non-fermentative process for producing xylitol (a sugar alcohol commonly used as a sweetener), from lignocellulosic materials. The claimed process emphasized selective lignin degradation, lower energy consumption, and the economic reuse of lignin as a valuable by-product rather than as a source of energy for fermentation.

The First Examination Report (FER) raised objections of lack of novelty and inventive step based on prior art documents D1-D6. In response, the Appellant amended the claims and submitted a detailed reply. However, the hearing notice merely reiterated the FER objections without engaging with the proposed amendments. Subsequently, the Controller refused the application citing lack of inventive step and non-patentability under Section 3(d).

Notably, with respect to the objection under Section 3(d), the Controller reasoned in the impugned order that the claimed process constituted a mere use of two different known processes: part of D1-D4 and part of D5. In effect, the Controller combined processes from multiple cited prior arts to sustain the objection under Section 3(d).

On appeal, the Appellant argued that the Controller’s findings were factually and legally unsustainable for the following reasons:

• Erroneous reliance on prior art D5: The Controller had concluded that D5 disclosed a non-fermentative conversion process. The Appellant argued that this was a misreading of the document. The Controller incorrectly relied on the background of the invention to arrive at this conclusion. Referring to Figure 3 and Column 7 of D5, the Appellant demonstrated that D5 employed fermentation with microbial conversion using yeast strains. Thus, the finding that D5 disclosed a non-fermentative process was directly contradicted by the prior art itself.
• Inventiveness of the claimed process: The Appellant asserted that none of the cited documents rendered the claimed process obvious. Each document was distinguishable on key technical grounds:
• D1 described a fermentation process.
• D2 involved alkali treatment, entirely different from the claimed non-fermentative process.
• D3 operated at significantly higher temperatures than the claimed process.
• D4 explicitly mentioned fermentation in step 4.
• Controller’s failure to consider the response to the FER: The Appellant contended that the response to the FER and the amended claims were never substantively considered. The hearing notice simply repeated the objections raised in the FER, and the reasons set out in the impugned order were different from those raised in the FER and hearing notice.
• Additional data: The Appellant sought to rely on a declaration by the co-inventor containing experimental data demonstrating the technical advantages of the claimed process over the prior arts. This evidence had not been placed before the Controller earlier since the FER and hearing notice had not raised objections necessitating it.

The Court undertook a structured evaluation of the Controller’s reasoning and found multiple conceptual and procedural flaws:

• Misapplication of Section 3(d): The Court clarified that the third limb of Section 3(d): the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant, applies only to a single known process that also does not result in a new product or a new reactant. The Controller’s approach of combining multiple prior arts to construct a hypothetical known process was held impermissible. Unless two or more processes had been previously combined in the art, such a fusion cannot be considered a “known process”.
• Erroneous reading of D5: The Court quoted Column 7 of D5, which stated that the hydrolyzed material was “fermented with a microbe,” thereby confirming that D5 disclosed a fermentative process, not a non-fermentative one as the Controller concluded.
• Unsupported reliance on “common general knowledge”: The Court held that Controller’s claim that enzymatic degradation of xylose was obvious to a person skilled in enzymology on the basis of common general knowledge was made without citing any source or material. The Court emphasized that conclusions based on “common general knowledge” must at least include the source or material on the basis of which such conclusion is drawn.

In view of these findings, the Court held that interference with the impugned order was warranted. Additionally, since the declaration containing experimental data had not been placed before the Controller earlier, the Court considered it appropriate to allow reconsideration of the matter in light of that data. Consequently, the impugned order was set aside, and the case was remanded to the Patent Office for reconsideration.