Madras High Court

Oswal vs The Assistant Controller Of Patents And ... on 11 December, 2023

Author: Senthilkumar Ramamoorthy

Bench: Senthilkumar Ramamoorthy

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                                 DATED: 11.12.2023

                                                      CORAM

                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

                                               (T)CMA(PT)/122/2023
                                               (OA/2/2020/PT/CHN)


                     Oswal, Ashok
                     148/1, Oswal House, Seth Sohan Lane,
                     Maharani Jhansi Road, Civil Lines,
                     Ludhiana, Punjab, India.                                 ... Appellant
                                                     -vs-

                     The Assistant Controller of Patents and Designs,
                     The Patent Office, Intellectual Property Office Building,
                     CP-2 Sector V, Salt Lake City,
                     Kolkata 700091, India.                                  ... Respondent


                     PRAYER:         Transfer Civil Miscellaneous Appeal (Patents) is filed

                     under Section 117-A of the Indian Patents Act, 1970, praying to set

                     aside the impugned order July 02, 2019 passed by the Respondent in

                     respect to the Application No.201811029748; and to order allowing

                     the issuance of patent.




                     1/12


https://www.mhc.tn.gov.in/judis
                                       For Appellant     : Mr.Tarun Khurana
                                                           for M/s.Khurana and Khurana

                                       For Respondent    : Mr.A.R.Sakthivel, SPC
                                                           Ms.Swati Pandey,
                                                           Assistant Controller of Patents
                                                         **********

                                                        JUDGMENT

The appellant challenges an order dated 02.07.2019 by which

Patent Application No.201811029748 in respect of the claimed

invention entitled "System and method for determining quality

attributes of raw material of textiles" was rejected. The above-

mentioned application was filed along with a set of ten claims.

Claims 1 to 8, as originally filed, were system claims, whereas claims

9 and 10 were method claims. Upon receipt of a request for

examination, the first examination report (FER) was issued by the

respondent on 14.12.2018. In the FER, objections were raised inter

alia under Section 3(k) of the Patents Act, 1970 (the Patents Act) and

on the ground of lack of inventive step. The appellant filed a

https://www.mhc.tn.gov.in/judis response to the FER on 14.01.2019. The appellant also submitted

amended claims. In the hearing notice, the respondent maintained

the objections raised in the FER. Pursuant to a hearing, the appellant

submitted written submissions along with amended claims. The

amended claims of the appellant are set out below:

"I Claim:

1. A method for determining in real time quality attributes of a raw material of a textile using one or more processors that executes instructions that are stored in a memory, said method comprising the steps of:

receiving, by said one or more processors, one or more images of said raw material captured by the imaging device in real time, wherein said imaging device having an illuminating source to provide a flash of light or a continuous light, while capturing said raw material, to illuminate a dark scene or capture a quickly moving raw material or changing a quality of light;

enhancing, by said one or more processors, one or more features dynamically selected from

https://www.mhc.tn.gov.in/judis said received one or more images in real time by varying dynamic range of said one or more features of said received one or more images to obtain dynamically enhanced one or more images, wherein said step of enhancing increases the dynamic range of said one or more features of said received one or more images without increasing essential information of said one or more images, said features being selected from any or a combination of grey level, contrast, sharpness, and noise level;

extracting, by said one or more processors, values of one or more attributes of said enhanced one or more images in real time, wherein said one or more attributes includes any or combination of staple length, fibre fineness, short fibre content, yarn hairiness, yarn count, yarn elongation, maturity and moisture content;

comparing, by said one or more processors, the extracted values with reference attribute values stored in a first database in real time; and determining, by said one or more processors, quality of said raw material based on

https://www.mhc.tn.gov.in/judis comparison of the extracted values with the reference attribute values in real time.

2. The method as claimed in claim 1, wherein the method comprises extracting Histogram of oriented gradients (HOG) features from each enhanced one or more images, and averaging extracted HOG features to obtain corrected said enhanced one or more images."

2. As is evident from the above extract, all the system claims

were deleted by the appellant and all that remained were two

method claims. By the impugned order, the claims were rejected

both under Section 3(k) and Section 2(1)(ja) of the Patents Act. The

present appeal arises in the above facts and circumstances.

3. By inviting my attention to the impugned order, learned

counsel for the appellant pointed out that all the system claims were

deleted when written submissions were filed pursuant to the hearing.

However, he submits that the impugned order proceeds on the basis

that the claims were system claims. According to learned counsel,

https://www.mhc.tn.gov.in/judis this indicates complete non-application of mind. As regards the

rejection of the amendment by reference to Section 59 of the Patents

Act, he submits that, apart from extracting Section 59, the impugned

order does not contain any reasons for rejecting the request for

amendment. Similarly, as regards the rejection under Section 2(1)(ja),

he submits that the impugned order merely refers to the cited prior

arts.

4. In response to these submissions, it is submitted on behalf of

the respondent that the cited prior arts were discussed both in the

FER and the hearing notice. Therefore, it is stated that the order does

contain reasons.

5. The operative portion of the impugned order is set out

below:

"After attending the hearing on the stipulated date as mentioned above, Applicant's agent filed the written submission and relevant documents on date June 26th, 2019 regarding

https://www.mhc.tn.gov.in/judis above mentioned objections. Having considered all the facts and submissions made by the Applicant / Agent in the written note of arguments as well as in view of all the documents on record and also on the basis of my analysis and findings, it is found that the claims of the instant application are directed towards the monitoring quality of raw material of a textile. More specifically it pertains to methods for determining quality attributes of raw material of a textile. for determining quality related attributes of raw material of a textile. The quality attributes of a raw material of a textile, the system can include: a processor coupled with a memory, the memory storing instructions executable by the processor to: receive one or more images of said raw material captured by an imaging device; enhance one or more features of said received one or more images by varying dynamic range of said one or more features of said received one or more images to obtain dynamically enhanced one or more images; extract values of one or more attributes of said enhanced one or more images, wherein said

https://www.mhc.tn.gov.in/judis one or more attributes includes any or combination of staple length, fibre fineness, short fibre content, yarn hairiness, yarn count, yarn elongation, maturity and moisture content; and compare the extracted values with reference attribute values stored in a first database, wherein quality of said raw material is determined based on comparison of the extracted values with the reference attribute values, the claims are purely functional thereby not having any inventive hardware features and hence not allowable u/s 3(k) of the Patents Act, 1970.

Further during hearing it has been clearly indicated that method claims are purely functional and fall under section 3(k). Further the amendments of claims are not allowable under section 59 as "No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of

https://www.mhc.tn.gov.in/judis a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

Further claims of the instant application lacks INVENTIVE STEP u/s 2(1)(j) of the Patent Act, in view of the cited prior arts D1: CN105678788A (15/06/2016) D2: US8942468B1 (27/01/2015) D3: WO2018097389A1 (31/05/2018)"

6. The above extract indicates conclusively that the system

claims of the appellant, which were subsequently deleted, were

considered while issuing the impugned order. The extract also

indicates that no reasons were specified for rejecting the amendments

and that the order merely extracts Section 59. Likewise, the

conclusion regarding the lack of inventive step is also not backed by

https://www.mhc.tn.gov.in/judis reasons. Since the impugned order contains no reasons in support of

conclusions recorded therein, the order is unsustainable and is,

hereby, set aside.

7. The necessity that a quasi-judicial authority should provide

cogent reasons for its conclusions cannot be overstated. An applicant

for patent asserts substantive proprietory rights and, therefore, it is of

paramount importance that the submissions of the patent applicant

be considered and dealt with in the adjudicatory order. It is also

important that such order be self contained and self-explanatory.

8. Therefore, Patent Application No.201811029748 is remanded

for re-consideration on the following terms:

(i) In order to preclude the possibility of pre-determination, an

officer other than the officer who issued the impugned order shall

undertake such re-consideration.

(ii) After providing a reasonable opportunity to the appellant, a

reasoned decision shall be issued within a period of four months

https://www.mhc.tn.gov.in/judis from the date of receipt of a copy of this order.