Groz-Beckert Kg vs Union Of India & Ors
2023 Latest Caselaw 169 Cal/2

                      IN THE HIGH COURT AT CALCUTTA
                          SPECIAL JURISDICTION
                               ORIGINAL SIDE

BEFORE:
The Hon'ble Justice Ravi Krishan Kapur


                           AID NO.16 OF 2022



                            IN THE MATTER OF
                            GROZ-BECKERT KG
                                     Vs
                          UNION OF INDIA & ORS.

For the petitioner            : Mr. Adarsh Ramanujan, Advocate
                                Mr. S. Das, Advocate
                                Mr. Aditya Mondal, Advocate
                                Mr. C. Pal, Advocate

For the respondent            : Mr. Ranjan Kumar Sinha, Advocate.

Reserved on                   : 19.12.2022


Judgment on                   : 18.01.2023


Ravi Krishan Kapur, J.:

1. This is an appeal under section 117A (2) of The Patents Act, 1970 (the

Act). The appellant assails an order dated 10 March, 2022 passed by

the Assistant Controller of Patents and Designs (the order) rejecting

the appellant's patent application no.938/KOLNP/2015 dated 7th

April, 2015.

2. Briefly, the appellant is a leading manufacturer of industrial machine

needles, precision parts and fine tools meant for production and

joining of textile fabrics. The appellant has a worldwide presence and

provides products and service support in the textile process of

knitting, warp knitting, weaving, felting, tufting, carding and sewing.

The appellant has a significant global presence and is engaged in

research and development of new product use in the textile industry.

The present invention titled "HEALD FOR PROCESSING TAPE-

SHAPED MATERIAL AND METHOD FOR MANUFACTURE THEREOF"

is aimed to heald the processing of tape-shaped material as a method

for manufacture thereof. The invention claimed by the appellant has

been granted in over 11 jurisdictions after fulfilling the same criteria

of novelty, inventive steps etc.

3. By the order, the application for registration has been rejected on the

following grounds:

A. The subject matter of the claims 1-13 of the instant application lack(s) inventive step and being obvious in view of teaching (s) of cited document(s) D4: US2007/0144603A1 under section 2(1)(ja) of the Patents Act, 1970 (as amended).

B. None of the documents indicate the date of submission of the Proof of Right in the Patent Office. The documents are neither acknowledged by the Patent Office nor available in the list of documents uploaded in the Patent Office database.

4. On behalf of the appellant, it is contended that, the Controller has

erred in not considering the subject invention as a whole. Each of the

claims by the appellant comprise of multiple features which should

have been taken into consideration. On the contrary, the impugned

order erroneously segregates the subject invention.

5. I find from the order that the Controller has dissected the subject

invention into two isolated elements. The impugned order

characterizes the subject invention as having two main features

provided as follows:

Feature-1: At least one component (6, 7) which limits the thread

eyelet (8) is held between the two banks (2, 3)

Feature-2: Inter alia by a normal force in relation to the

longitudinal healed direction (L) that is generated by the fact that

at least one of the two bands (2, 3) in its fitted position in the

heald (1), is in a mechanically stressed state in the region

between the two first joins (13, 14).

6. Paragraph 9.03.03.02 of the Indian Manual of Patent Office Practice

and Procedure provides as follows:

"The "obviousness" must be strictly and objectively judged. While determining inventive step, it is important to look at the invention as a whole.

Accordingly, the following points need to be objectively judged to ascertain whether, looking at the invention as a whole, the invention does have inventive step or not:

i. Identify the "person skilled in the art", i.e. competent craftsman or engineer as distinguished from a mere artisan;

ii. Identify the relevant common general knowledge of that person at the priority date;

iii. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

iv. Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

v. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the Peron skilled in the art or do they require any degree of inventive ingenuity?"

7. Thus, in determining inventive steps, the invention should be

considered as a whole. In other words, it is not sufficient to draw the

conclusion that a claimed invention is obvious merely because

individual parts of the claim taken separately are known or might be

found to be obvious. The contention that an invention is obvious in

relation to a particular item must be treated with care and caution. In

doing so, the whole picture presented should be taken into

consideration and not a partial one. There should be an element of

preciseness about what is asserted to be common general knowledge.

The "obviousness" must also be strictly and objectively

judged. (Bishwanath Prasad Radhey Shyam vs. Hindustan Metal

Industries (1979) 2 SCC 511 paras 24 & 25, F. Hoffman La Roche Ltd.

Vs. Cipla Ltd. PTC 1 paras 13, 143).

8. I find the impugned order is erroneous inasmuch as it dissects the

subject application into two isolated elements. Moreover, the critical

feature of having technical advance, as described by the appellant has

also been ignored. The impugned order primarily relies on a document

marked D4 which is the appellant's own patent and fails to consider

the subject invention at hand which is an improvement thereon. The

impugned order fails to apply the test of determination of inventive

steps and consider the invention as a whole. The conclusion that the

invention lacks inventive steps is also unreasoned. This finding is also

based on incomplete facts and is bereft of reasons. (State Bank of

India & Anr. Vs. Ajay Kumar Sood, 2022 SCC Online 1067).

9. Insofar as the contention of proof of right is concerned, I find that the

formalities for filing the proof of right as laid down in Chapter 03,

(Para 03.01) of the Manual of the Patent Office Practice and Procedure

has also not been taken into account in the order.

10. In view of the aforesaid, the impugned order is unsustainable and is

set aside. The matter is remanded back to the respondent no.2 to

consider the application of the appellant afresh within a period of

three months from the date of communication of this order and after

giving a right of hearing to the appellant. In hearing the case afresh,

the Controller shall not be bound by any observation made in this

order insofar as the merits of this case are concerned. With the

aforesaid directions, AID 16 of 2022 stands allowed.

(Ravi Krishan Kapur, J.)