In OCV Intellectual Capital LLC vs The Controller General of Patents, Designs And Trademarks [IPDPTA/34/2022], the Calcutta High Court, exercising appellate jurisdiction under Section 117A of the Patents Act, 1970, set aside the refusal of patent application number 1733/KOLNP/2008, entitled “Composition for High Performance Glass, High Performance Glass Fiber and Articles Therefrom”. The application had been rejected on the grounds of lack of novelty, lack of inventive step, and non-patentability under Section 3(e) of the Act.

The decision reaffirms that an order passed under Section 15of the Act must reflect a reasoned engagement with the applicant’s submissions, particularly where the invention claims to overcome a technical prejudice disclosed in the prior art.

The claimed invention sought to achieve the strength characteristics of S-Glass while avoiding the high costs associated with platinum-lined furnaces, by enabling manufacture through refractory-lined furnaces using a specific glass composition.

It was the case of the Appellant that the impugned order was unreasoned and perverse. On novelty and inventive step, the Appellant contended that the Controller disregarded the principles of teaching away. The Controller relied primarily on prior art document D1, which was the Appellant’s own invention. D1 disclosed glass compositions containing Magnesium Oxide (MgO) up to a maximum of 4.5%, whereas the claimed invention required a minimum MgO content of 5%. The Appellant had submitted before the Controller that D1 actively discouraged increasing MgO concentration, as higher MgO levels adversely affected the formation of high-temperature glass fibres. The claimed invention, however, achieved improved performance despite this increase, thereby overcoming a known technical prejudice.

The Appellant further submitted that the Controller mechanically concluded lack of inventive step by referring to prior arts D1 to D4, without explaining how a person skilled in the art (PSITA) would combine these disclosures, or why such a combination would be obvious in light of the document D1 teaching away from the claimed invention. Specific distinctions drawn by the Appellant between the claimed invention and D2, D3, and D4 were not addressed in the impugned order.

In relation to Section 3(e), the Appellant argued that the invention was not a mere admixture, but resulted in a synergistic effect. It was submitted that the technical and scientific data placed on record demonstrating both technical and economic advancement had been entirely overlooked by the Controller.

The Controller defended the impugned order, contending that the marginal increase in MgO content did not confer novelty or inventiveness, and that there was substantial overlap between the claimed invention and the cited prior arts. It was argued that the alleged doctrine of teaching away was unsubstantiated, that the invention was obvious in light of D1 to D4, and that the experimental data relied upon by the Appellant failed to demonstrate any synergistic effect so as to overcome the bar under Section 3(e).

Allowing the appeal, the High Court found the impugned order to be unsustainable on all three grounds. On novelty, the Court observed that the Controller himself had noted that D1 disclosed MgO content only up to 4.5%, whereas the claimed invention required at least 5%. The Court held that the Controller failed to consider that even a 0.5% difference in chemical composition could confer novelty. The Controller failed to consider whether the prior art clearly and unmistakably disclosed the claimed invention, as required by the test laid down in General Tyres vs Firestone [[1972] RPC 457]. The mere observation that the compositions were “almost the same” was held to be insufficient.

The Court emphasised that the Appellant’s case of teaching away had not been examined at all. The prior art’s discouragement of increased MgO concentration, and the Appellant’s claim of having overcome this prejudice, were central to the non-obviousness analysis. The Controller’s failure to engage with this submission vitiated the finding both on inventiveness and lack of novelty.

Further, the Court held that merely reproducing disclosures from multiple prior art documents and concluding obviousness, without demonstrating how and why a PSITA would arrive at the claimed invention, did not meet the requirement of a reasoned order. The Court reiterated that, particularly in cases involving mosaicing, it is incumbent upon the Controller to explain with precision how one prior art document logically leads to another, and how such a combination renders the invention obvious. Emphasising the centrality of reasons to administrative adjudication, the Court observed that “reasons are the safeguard against the ipse dixit of the decision making process. The justification and the reasonableness of the conclusion can only depend on the reasons given in support thereof. Reasons disclose how the mind has been applied to the matters in issue.”

With respect to Section 3(e), the Court reiterated that the provision applies only where no synergistic effect is shown. The Controller’s failure to analyse the Appellant’s submissions on synergy rendered the finding under Section 3(e) untenable.

In view of the above, the Calcutta High Court set aside the impugned order and remanded the matter to the Controller for fresh consideration.