Madras High Court

Saint-Gobain Abrasives vs The Controller Of Patents And Designs on 24 November, 2023

Author: Senthilkumar Ramamoorthy

Bench: Senthilkumar Ramamoorthy

    2023:MHC:5186


                                                                               CMA(PT)/8/2023


                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                               DATED : 24.11.2023

                                                    CORAM

                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

                                                CMA(PT)/8/2023

                     1.Saint-Gobain Abrasives, Inc.
                       1 New Bond Street, Worcester
                       MA 01615-0138, USA; Nationality: USA

                     2.Saint-Gobain Abrasifs
                       Rue de 1'Ambassadeur, 78700
                       Conflans-Sainte-Honorine, France
                       Nationality: France                                   ... Appellants


                                                      -vs-

                     The Controller of Patents and Designs,
                     Intellectual Property Office Building,
                     Plot No.32, Sector 14, Dwarka,
                     New Delhi - 100 078.                                   ... Respondent



                     PRAYER: Civil Miscellaneous Appeal (Patents) filed under Section

                     117-A of the Patents Act, 1970, praying to call for the records of the

                     respondent culminating in the Impugned Order dated 02 September



                     1/11


https://www.mhc.tn.gov.in/judis
                                                                                     CMA(PT)/8/2023


                     2022 rejecting the Grant of Patent and Set Aside the same and

                     consequently direct Grant of the Patent in respect of the Appellant's

                     Application No.201941052276.



                                       For Appellants     : Mr.S.Shivathanu Mohan
                                                            for M/s.S.Ramasubramaniam and
                                                            Associates

                                       For Respondent     : Mr.K.Subbu Ranga Bharathi, CGSC

                                                          **********


                                                        JUDGMENT

The appellants assail an order dated 02.09.2022 by which Patent

Application No.201941052276 for the grant of patent for a claimed

invention entitled NONWOVEN ARTICLE was rejected.

2. The above mentioned application was filed by the appellants

on 17.12.2019. Upon submitting a request for examination on

09.07.2021, the respondent issued the First Examination Report (FER)

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on 31.08.2021. In the FER, objections were raised inter alia on

grounds of lack of novelty, inventive step, unity of invention,

sufficiency of disclosure and lack of clarity and definitiveness. The

appellants replied thereto on 30.04.2022 and submitted amended

claims. Pursuant to hearings on 19.06.2022 and 22.08.2022, the

appellants filed final written submissions on 01.09.2022. Eventually,

the application was rejected by order dated 02.09.2022, which is

impugned herein.

3. Learned counsel for the appellant submitted that the claimed

invention is in respect of a nonwoven Article. In this connection, he

invited my attention to the amended claims at pages 206 to 208 of the

paper book. By turning to the impugned order, learned counsel

submitted that the application was rejected on the following three

grounds:

(i) lack of sufficient disclosure;

(ii) lack of clarity and definitiveness; and

https://www.mhc.tn.gov.in/judis CMA(PT)/8/2023

(iii) obviousness.

With regard to the alleged lack of sufficient disclosure, learned

counsel pointed out that the respondent recorded at internal page 3

of the impugned order that the applicant had not disclosed the

method to make a nonwoven substrate with higher thickness of the

coating of the "exterior surface" and lower thickness of the coating at

the "central region". According to learned counsel, this conclusion is

completely untenable in view of the disclosures made in paragraphs

79 to 83 of the complete specification (pages 61 and 62 of the paper

book). With reference thereto, learned counsel pointed out that the

methodology for forming the nonwoven substrate has been

explained in detail therein, including the dip and spray coating

process.

4. As regards the objection regarding lack of definitiveness,

learned counsel referred to the conclusion at internal page 4 of the

impugned order that the expression "greater" is a relative term. By

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turning to the claims and, in particular, independent claim-1, learned

counsel submitted that the difference in thickness has been expressed

by providing the range of at least 1% and not greater than 50%.

Therefore, he submits that this conclusion is without merit. He next

dealt with the conclusion that the expression "exterior surface" and

"central region" are not clearly defined. On this issue, he referred to

the written submissions of the appellants and pointed out that the

"exterior surface" and "central region" were depicted pictorially. He

further submitted that the appellants explained that the central

region can be reached by cutting the scrap pad into half as depicted

in such written submissions. For such reason, he submitted that both

the objections with regard to alleged lack of definitiveness are

unsustainable. As regards the alleged lack of inventive step, learned

counsel pointed out that no prior art document was referred to in the

impugned order while arriving at the conclusion that there is

obviousness.

https://www.mhc.tn.gov.in/judis CMA(PT)/8/2023

5. In response to these submissions, learned counsel for the

respondent referred to the drawings forming part of the complete

specification and submitted that figure 3 thereof discloses that both

the first and second coatings are applied to the inner layer. Since

lower thickness in the central region is achieved by not subjecting

such central region to the same type of coating as the external

surface, learned counsel submitted that figure 3 indicates that the

thickness of both the external surface and the central region would be

the same. On such basis, learned counsel submitted that the

conclusion in the impugned order with regard to lack of

definitiveness contains no infirmity.

6. The reasons specified in the impugned order for refusing the

application relate largely to the alleged insufficiency of disclosure.

The first ground on which such conclusion was drawn is that the

appellants have not disclosed the technique / method to make a

https://www.mhc.tn.gov.in/judis CMA(PT)/8/2023

nonwoven substrate with higher thickness of the coating at the

exterior surface and lower thickness of the coating at the central

region. As correctly pointed out by learned counsel for the appellant,

in paragraphs [0079] to [0083] of the complete specification, the entire

process appears to have been set out by the appellant. The

impugned order does not draw reference to these relevant

paragraphs of the complete specification. As regards the objection on

lack of definitiveness, the first ground for drawing such conclusion is

that the expression "greater" is unclear. In response to this, learned

counsel for the appellant pointed out that independent claim 1

indicates that the thickness of the exterior surface should be greater

than that of the central portion by at least 1% and not more than 50%.

This aspect has also not been taken into account in the impugned

order. Even if the respondent were of the opinion that the specified

range is too wide, it is always possible to call upon the patent

applicant to amend the claim and the complete specification suitably.

As regards the second ground relating to definitiveness, i.e. the

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conclusion that the expressions "exterior surface" and "central region"

were not clearly defined, learned counsel for the appellant responded

to this by referring to the written submissions and the diagrammatic

representations set out therein. On this issue, it is again possible for

the respondent to call upon the patent applicant to incorporate such

explanation in the complete specification.

7. The conclusion with regard to the lack of inventive step in

the impugned order is completely unreasoned and such conclusion is

drawn without any prior art reference.

8. In the above circumstances, the impugned order is

unsustainable and is, hereby, set aside. As a corollary, the patent

application is remanded for re-consideration on the following terms

and conditions:

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

officer other than the officer who issued the impugned order shall

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undertake such re-consideration.

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

including an opportunity to amend the claims or complete

specification, as deemed necessary and appropriate, a reasoned

decision shall be issued within a period of six months from the date

of receipt of a copy of this order.