Madras High Court
Huawei Technologies Co. vs The Controller Of Patents on 19 September, 2023
2023:MHC:4310
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 19.09.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
CMA(PT)/7/2023
and C.M.P.Nos.12635, 15831 of 2023
HUAWEI TECHNOLOGIES CO., LTD
Huawei Administration Building,
Bantian, Longgang District, Shenzhen,
Guangdong - 518129, P.R.China
Represented by its Constituted Attorney
/Authorised Signatory, Nripendra Kashyap. ... Appellant
vs.
The Controller of Patents,
The Patent Office,
Intellectual Property Office Building,
GST Road, Guindy,
Chennai - 600 032. ...Respondent
PRAYER: Civil Miscellaneous Appeals (Patents) filed under Section 117-
A of the Patents Act, 1970, praying to set aside the orders dated 16th
December 2021 passed by the respondent in Patent Application
201947028978 and consequently direct the respondent to restore the
appellant's patent for further prosecution.
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1/10
For Appellant : Mrs.Archana Shanker
Mr.N.C.Vishal, Mr.Abhishek Kumar
For Respondent : Mr.S.Janarthanam, SPC
***********
JUDGMENT
The appellant assails an order dated 16.12.2021 by which Patent
Application No.201947028978 was rejected. The said application was the
PCT National Phase application.
2. Upon examining the application, the First Examination Report
(FER) was issued on 01.12.2020 raising several objections. The appellant
replied thereto on 12.02.2021 and submitted amended claims. In the
Second Examination Report (SER) issued on 23.04.2021, the following
objections were raised:
"Invention u/s 2(1)(j)
1. The objections raised under section 2(1)(j) of the
Indian Patents Act, are still maintained with respect to
the device claims 15-29 for the lack of any novel
hardware constructional feature with respect to the
citations as well as the common general knowledge in the
field of communication to the person skilled in the art.
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Clarity and Conciseness
1. The “configured to” used in various claims shall be
deleted. The objection is maintained.
2. The apparatus claims 15-23 are simply implementing
the steps of the method claims 1-9 by virtue of software
processing units executing the software instructions
stored in the memory, to perform the method step
operations. Hence the apparatus claims 15-23 are not
allowable under the Indian Patents Act, 1970 (as
amended). The objection is maintained.
3. The apparatus claims 24-29 are simply implementing
the steps of the method claims 10-14 by virtue of
software processing units executing the software
instructions stored in the memory, to perform the
method step operations. Hence the apparatus claims 24-
29 are not allowable under the Indian Patents Act, 1970
(as amended). The objection is maintained.
4. The apparatus claims 15-23 and 24-29 are not
supported with any novel hardware constructional
feature disclosure through description/illustrations. The
objection is maintained.
5. The alleged invention lies only in the method, hence
the non-method claims 15-29 cannot be allowed. The
objection is maintained.
6. The claims shall be supported by the reference
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numerals (in parenthesis) from the illustrations.
7. The method claims should be given in clear method
steps.
Non-Patentability u/s 3
1. The apparatus claims 15-23 are simply implementing
the steps of the method claims 1-9 by virtue of software
processing units executing the software instructions
stored in the memory, to perform the method step
operations. Hence the apparatus claims 15-23 are not
allowable under section 3(k) of the Indian Patents Act,
1970 (as amended). The objection is maintained.
2. The apparatus claims 24-29 are simply implementing
the steps of the method claims 10-14 by virtue of
software processing units executing the software
instructions stored in the memory, to perform the
method step operations. Hence the apparatus claims 24-
29 are not allowable under section 3(k) of the Indian
Patents Act, 1970 (as amended). The objection is
maintained.”
3. In response thereto, the appellant, once again, amended its
claims. In particular, the appellant deleted all the apparatus claims, i.e.,
claims 15 to 29, and included only two apparatus claims as 15 and 16.
The impugned order was issued in these facts and circumstances. Such
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order was sought to be reviewed by filing a review application on
11.01.2022. The said review application was rejected on 20.04.2022.
Hence, this appeal.
4. Learned counsel for the appellant invited my attention to the
SER and to the amended claims submitted in response thereto. She
submitted that the objections raised in the SER were effectively
addressed by deleting the claims to which objections were raised and
claim 15 and 16 were changed from claims for an information
transmission apparatus to a communication apparatus using the method
specified in any one of claims 1 to 9. In spite of doing so, she submitted
that the patent application was rejected on the ground that the appellant
had not submitted proper method claims and had amended the correct
preamble to the specification.
5. In response to these contentions, Mr.S.Janarthanam, learned
SPC, invited my attention to the SER and submitted that the appellant
failed to meet the objections raised in the SER. He further submitted that
the appellant did not provide clarity in method claims 2, 4, 6, 7, 11-14
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and refused to rectify the claims in order to meet the requirements.
Therefore, he submitted that the impugned order does not call for
interference.
6. The impugned order sets out the history of prosecution of the
patent application across multiple pages before recording the findings
and conclusions. The operative portion of the order is set out below:
"This office has not taken any objection on
claim 1 but the applicant's agent has
unnecessarily removed the existing step i.e “phase
shifting” from claim 1 and reworded it without
any step.
During the hearing the applicant's agent
has agreed to bring clear method steps into claims
2, 4, 6, 7, 11-14 but failed to do for meeting the
objection raised in this regard.
Without any objection on preamble of
claims the applicant's agent has amended the
preambles of the claims. Whereas earlier
preambles are correct according to the
specification.
In spite of discussion on the method claims
during the hearing the applicant's agent has failed
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to utilise the opportunity given for amending the
claims as agreed.
The applicant's agent has not shown any
interest to check the 2 application claims 15 and
16 wording before filing in the Patent Office.
With utter disregard to the discussion
happened during the hearing the applicant's agent
has not for rectified the claims in order to meet the
requirements.
Finally the applicant's agent has failed to
meet the requirements of the Patents Act informed
vide this office Subsequent Examination Report
dated 23rd Apr 2021 even after giving the
opportunity of the hearing.”
7. From the above operative portion of the order, it is abundantly
clear that the patent application was not dealt with on merits. Instead,
the Controller of Patents has assigned the following two reasons for
rejecting the application:
(i) The appellant failed to bring clear method claims in claims 2, 4,
6, 7 and 11-14 by disregarding the discussion during the hearing.
(ii) The appellant unnecessarily amended the existing step in claim
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1 and the preamble of claims, when the earlier versions were not
objected to.
(iii) The wording of claims 15 and 16 were not checked before
filing the same.
8. By examining the objections raised in the SER and the amended
claims submitted in response thereto, it is evident that all the apparatus
claims running from claims 15 to 29 were deleted by the appellant in
response to the SER. In these circumstances, the rejection of the
application on the ground that the method claims were not presented in
proper steps is untenable as it was not indicated in the SER. The other
reason cited in the order, namely, amendment to the preamble and claim
1, does not justify the rejection of the patent application. Therefore, the
impugned order is, hereby, set aside and the matter is remanded for
reconsideration. Such reconsideration shall be undertaken on the
following terms:
(i) An officer other than the officer who issued the impugned order
shall consider the appellant's application so as to preclude any
possibility of pre-determination.
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(ii) Such reconsideration shall be limited to objections already
raised.
(iii) The appellant shall be permitted to make amendments as
regards clerical / typographical errors in the amended claims.
(iv) A reasoned decision shall be issued within a period of six
months from the date of receipt of a copy of this order after providing a
reasonable opportunity to the appellant.
(v) Consequently, the connected miscellaneous petitions are closed.
19.09.2023
Index : Yes/No
Internet : Yes/No
Speaking Order/Non-Speaking Order
rna
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY,J
rna
CMA(PT)/7/2023
and C.M.P.Nos.12635, 15831 of 2023
19.09.2023
https://www.mhc.tn.gov.in/judis
