Madras High Court
Magneti Marelli S.P.A vs The Assistant Controller Of Patents & ... on 27 February, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 27.02.2025
CORAM
The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY
(T) CMA (PT) No.152 of 2023
(OA/48/2020/PT/CHN)
Magneti Marelli S.P.A.
An Italian company,
of CORBETTA (ITALY)
Viale Aldo Borletti, 67/63,
Italy. ... Appellant
-vs-
The Assistant Controller of Patents & Designs.
The Patent Office,
IPR Building, SIDCO Plot,
GST Road, Guindy,
Chennai-600 032. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Patents) filed under
Section 117A of the Patents Act, 1970, praying to (i) allow the present
Appeal and set aside/quash the impugned order dated 18/03/2020,
passed by the Respondent in Indian Patent Application
No.420/CHE/2009; (b) direct grant of patent in respect thereof said
Indian Patent Application No.420/CHE/2009; and ; (c) pass any
other further order as this Hon'ble Court may deem fit and proper
based on the facts of the case.
1/12
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
For Appellant : Ms. Sarah Haque
Mr.K.Muthuselvam
for M/s.K & S Partners
For Respondents : Mr.N.Vijayaraman, SPC
**********
JUDGMENT
This appeal is directed against an order dated 18.03.2020
rejecting Patent Application No.420/CHE/2009 for grant of patent
for an invention titled “CONTROL METHOD OF AN ELECTRONIC
INJECTION FUEL FEEDING SYSTEM”. Upon request by the
appellant, the respondent issued the First Examination Report (FER)
on 04.12.2017. In the FER, the respondent raised objections on the
ground of lack of inventive step by citing three prior arts. The
appellant responded to the FER on 16.01.2018 and submitted
amended claims. By hearing notice dated 01.01.2020, a hearing was
fixed on 15.01.2020. After the hearing, the appellant filed written
submissions dated 28.01.2020. A further hearing notice dated
12.02.2020 was issued for a hearing on 26.02.2020. After attending the
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
hearing, the appellant filed further written submissions dated
09.03.2020. The impugned order was issued thereafter.
2. Learned counsel for the appellant invited my attention to the
current claims of the appellant comprising claims 1 to 15 (pages 154
to 157 of the paper book). By referring to paragraph 7 of the appeal,
she pointed out the problem that the claimed invention seeks to
solve. She also pointed out the nature of monopoly claim of the
appellant with reference to paragraphs 12 and 13 of the appeal. By
referring to the impugned order, learned counsel submitted that the
order merely sets out the observations in the FER, the reply thereto
and subsequent events, and that the operative portion thereof is
confined to a few lines at page 40 of the appeal paper book. In effect,
the contention of learned counsel for the appellant is that the
submissions made by the appellant to establish that the claimed
invention would not be obvious from prior arts D1 to D3 were not
discussed in the impugned order. She also submits that the
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
impugned order is bereft of reasons in support of the conclusion that
prior arts D1, D2 and D3 disclose all the elements and features of the
claimed invention.
3. Learned counsel for the respondent reiterates the conclusions
recorded in the impugned order. In any event, the respondent cannot
improve on the impugned order by way of a counter affidavit or
otherwise. Therefore, the limited issue that falls for consideration is
whether the conclusions recorded in the impugned order were drawn
after taking into account the contentions of the appellant and
whether the said order contains reasons in support of the conclusion
that the claimed invention would be obvious from prior arts D1 to
D3.
4. The operative portion of the impugned order is set out
below:
“Apart from the document D2, document D1 and
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
D3 also discloses the other elements and features of
the claimed subject matter as mentioned in the
hearing notices.
Therefore based upon the above facts and
submission, it is concluded that the objection
regarding inventive step is still pending, hence the
claims 1-15 do not constitute an inventive step
u/s.2(1)(ja) of the Patents Act.
Moreover no representation has been filed U/S
25(1) of the Patents Act, therefore I hereby refuse
the grant of patent for the instant Patent
application No.420/CHE/2009 with FIFTEEN
(15) claims.”
Thus, it is clear that the respondent concluded that prior arts D1 to
D3 disclose all the elements and features of the claimed invention.
Whether this conclusion warrants interference is required to be
examined.
5. Independent claim 1 of the appellant is as under:
“1. A control method of an electronic injection fuel
feeding system (12) for an internal combustion
engine (1) and including at least one injector (13)
and a non-continuous flow rate fuel pump (14)
actuated by an actuator device (27); the control
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
method including the steps of:
determining the desired fuel amount (Mfuel)
which must be injected at each cycle of the internal
combustion engine (1);
driving the injector (3) for injecting the desired
fuel amount (Mfuel) at each cycle of the internal
combustion engine (1) and at an injection
frequency (Finj) depending on the rotation speed
of the internal combustion engine (1);
determining an optimal pumping frequency
(Fpump) of the actuator device (27) of the fuel
pump (14) according to the desired fuel amount
(Mfuel) which must be injected at each cycle of the
internal combustion engine (1); and
actuating the actuator device (27) of the fuel pump
(14) at the optimal pumping frequency (Fpump);
the control method is characterized in that it
includes the steps of:
determining in a design phase, a lower threshold
value (Th1) and a higher threshold value (Th2);
comparing the desired fuel amount (Mfuel) with
the two threshold values (Th1, Th2);
assigning to the optimal pumping frequency
(Fpump) a value which is independent from the
injection frequency (Finj) when the desired fuel
amount (Mfuel) is lower than the lower threshold
value (Th1) or when the desired fuel amount
(Mfuel) is higher than the higher threshold value
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
(Th2) in order to drive the fuel pump (14) in an
asynchronous manner with respect to the driving
of the injector (3); and
assigning to the optimal pumping frequency
(Fpump) the same value of the injection frequency
(Finj) when the desired fuel amount (Mfuel) is
comprised between the two threshold values (Th1,
Th2) in order to drive the fuel pump (14) in a
synchronous manner with respect to the driving of
the injector (3).”
6. Both in the written submissions and in the appeal, the
appellant has distinguished each of the prior arts. For purposes of
disposing of this appeal, it is sufficient to set out the following
contentions with regard to prior arts D1, D2 and D3.
“15.4 Thus, document D1 completely fails to
disclose to determine an optimal pumping
frequency of the actuator device of the fuel pump
according to the desired fuel amount.
15.5 Furthermore, document D1 fails to disclose:
● to assign to the optimal pumping frequency
a fixed value when the desired fuel amount
is lower than the lower threshold value or
when the desired fuel amount is higher than
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
the higher threshold value: and
● to assign to the optimal pumping frequency
the same value of the injection frequency
when the desired fuel amount is comprised
between the two threshold values.
....
16.2 It is submitted that Document D2 discloses
calculating the pumping frequency of the actuator
device of the fuel pump 8 (i.e. driving frequency of
the fuel pump 8) only as a function of the engine
rotation speed (i.e. the engine rpm). Please see
paragraphs [0029]-[0032] of D2.
....
17.2 Document D3 discloses modifying the
optimal pumping frequency of the actuator device
of the fuel pump as a function of the delivery
capacity of the fuel pump (which can be correlated
to the desired fuel amount). In particular:
I. when the delivery capacity of the fuel pump
(the desired fuel amount) is high then the
optimal pumping frequency is a lower fixed
value (as shown in region I of Figure 2 of D3),
II. when the delivery capacity of the fuel pump
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
(the desired fuel amount) is medium then the
optimal pumping frequency is a medium fixed
value (as shown in region II of Figure 2 of D3).
III. When the delivery capacity of the fuel pump
(the desired fuel amount) is low then the optimal
pumping frequency is a higher fixed value (as
shown in region III of Figure 2 of D3)
17.3 Accordingly, it is clear that D3 also fails to
disclose at the features as emphasized of claim 1 of
the patent application. Therefore, D1, D2 and D3,
whether read singularly or in combination, fail to
disclose the features as recited in claims of the
Patent Application. Thus, claims of the Patent
Application are novel and inventive over
documents D1-D3.”
7. On closely examining the impugned order, it is abundantly
clear that the respondent failed to consider the contentions of the
appellant with regard to the distinction between the claimed
invention and prior arts D1 to D3. Instead, the recitals from the said
prior arts have been extracted in part and a conclusion (unsupported
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
by reasons) has been reached that the claimed invention would be
obvious from prior arts D1 to D3. In particular, the respondent failed
to indicate why a person skilled in the art would be led to the
claimed invention upon examining prior arts D1 to D3. Therefore, the
impugned order calls for interference.
8. Hence, impugned order dated 18.03.2020 is set aside and the
matter is remanded for reconsideration 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 order shall be issued within a period of four months from
the date of receipt of a copy of this order, after taking into account
the observations contained in this order.
(iii) For the avoidance of doubt, it is made clear that no opinion
has been expressed herein on the merits of the patent application.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
9. Consequently, (T)CMA(PT)/152/2023 is disposed of on the
above terms without any order as to costs.
27.02.2025
Index : Yes/No
Internet : Yes/No
Neutral Citation: Yes/No
kal
To
The Assistant Controller of Patents & Designs.
The Patent Office,
IPR Building, SIDCO Plot,
GST Road, Guindy,
Chennai-600 032.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
SENTHILKUMAR RAMAMOORTHY J.
kal
(OA/48/2020/PT/CHN)
27.02.2025
https://www.mhc.tn.gov.in/judis ( Uploaded on: 04/03/2025 08:03:17 pm )
