- Whether the Controller erred in rejecting the patent on the grounds of lack of inventive step under section 2(1)(j) of the Patents Act, 1970.
- Whether the amendments proposed by the applicants were beyond the scope of invention as filed.
Subject matter of patent: The invention relates to a non-combustible flooring system comprising metal framing and lightweight SCP panels, in residential and commercial construction.
- This instant Indian application number is 872/MUMNP/2007.
- The Controller raised the objections with respect to lack of inventive step and amendments proposed by the applicants being beyond the scope of invention as filed.
- Considering the facts, the Controller refused this application to proceed further for grant of patent via order dated 30/09/2015.
SUBMISSION BY APPELLANT
- The Respondent erred in holding that it is obvious for person skilled in the art in the field of construction to use the panels as disclosed in D1- Tonyan with metal panel as disclosed in D2- Shea for achieving the flooring system of present application.
- According to the appellants, the respondent erred in holding that the present application flooring system is nothing but a combination of panel and metal frame which is part of flooring, It has advanced technical features such as easier installation and cutability, improved shear strength, lateral fastener resistance, blow out resistance and excellent fire performance.
- The Respondent failed to appreciate that there is no change in the scope of the claims as filed and claims as amended, as both set of claims are for non-combustible flooring system for construction and a method for the same.
- The Respondent did not appreciate the fact that the amended claims were properly supported in the description, the amendments have in fact narrowed the scope of the claims without sacrificing the original intended object of the present invention and no new matter was added to broaden the scope of the present invention by way of amendment.
- The amendment was made by way of explanation to further define and explain the distinguishing features of the invention over the closest prior arts, satisfying the first condition of Section 59(1).
SUBMISSIONS BY RESPONDENTS
- All of the cited documents are of particular relevance to the claimed invention of this application and the subject-matter of claims is not new with respect to cited documents and cannot be considered to involve an inventive step. In view of the above, claim does not constitute an invention u/s 2(1)(j)(a) for the lack of inventive step.
- The amended claims contain a new preamble “method of providing a building structure with noncombustible flooring” in claims 18-20 and new composition data was added in table 2A and 18A of specification. Hence under section 57 and 59 of The Patents Act, the amendments proposed by the applicants are beyond the scope of invention as filed. Hence, amendments with new features were not allowed.
- The court opined that amendment in the table was essential as all other data is given in proportion to the dry basis (%) and in order to bring uniformity with other data being compared, this conversion was needed.
- The appellant has neither deleted nor added something new. Hence, the amendments are well within the teachings of section 57 read with section 59, being explanatory in nature which is essential to incorporate actual facts, retaining the original scope of the disclosure.
- The court directed the appellant to amend the preamble towards ‘method of making the non-combustible flooring system.” which has support in the description.
- The court opined that, with respect to inventive step, the order of the respondent is not based on proper reasoning to sustain the objection. The determination of inventive steps has been elaborately described in the Manual of Patent Office Practice and Procedure -2019 with the help of several judicial pronouncements on the subject.
- Considering the above facts, the court set aside the order of the Respondent dated 30/09/2015 and directed the respondent to grant the patent on the amended set of claims within 3 weeks from the date of issuance of this order.
IPAB order No: OA/13/2016/PT/MUM
Copy of judgement