Recently the MHC remanded a matter back to the Controller for re-consideration on whether the cited prior art would render the invention obvious in light of the explanation in the specification. Interestingly, the impugned order by the Controller has already held the invention to be obvious based on the claims filed by the applicant. Discussing this paradox, we are pleased to bring to you this guest post by Md. Sabeeh Ahmad. Sabeeh has previously interned with us and is a recent law graduate from AMU, Aligarh. His previous posts can be accessed here.
Not Examined the Inventive Step Enough? Madras HC Remands Patent Application Back to IPO for Reconsideration
By Md. Sabeeh Ahmad
The Madras HC in a judgment this week has, on an appeal by Hendrickson USA (manufacturers of heavy-duty suspensions), remanded their patent application for “Axle Mount For Heavy-Duty Vehicle Brake System Components” back to the Patent Office. The HC has reasoned that the Patent Office has not examined the “technical advance” as asserted by the Appellant.
Background
Hendrickson USA applied for a patent for their invention (Application No. 2621/CHENP/2015) related to brake system components in heavy duty vehicles for which FER (pdf) was issued on 04.07.2019. The FER raised objections with respect to novelty and inventive step u/s 2(1)(ja) of the Patents Act, amongst others. In addition to that, the FER also refers to the claim as not being “specific” and not defining the scope of the invention as required under section 10(4)(c) of the Patents Act. Hendrickson replied to the FER on 01.01.2020. Subsequent to a hearing scheduled for 02.02.2023 (later rescheduled for 09.02.2023), the Patent Office refused grant of patent on 01.03.2023.
The Patent Claims and Refusal
The Controller had reasoned in its order (pdf) that the cited prior arts (namely D1, D2, and D3) were based to consider the subject matter not inventive. Without risking a troubling technical detailing for our readers, in simpler terms – Hendrickson had claimed that it carried out shot peening (technique to introduce compressive residual stress layer and modify the mechanical properties in the material’s surface) beyond stress affected areas (also known as HAZ – Heat Affected Zones) of the axle or brake system component. Hendrickson had further argued (pdf) that all the cited prior arts did not “disclose, teach, or even suggest” the claim carried out by them and were limited to specific portions. The Controller had in its order laid out that a person skilled in the art would have sufficient knowledge and motivation to peen the weld and also the nearby or adjacent area of the weld (other than the HAZ) to tune the mechanical property stemming from the knowledge of prior art in D1, D2, and D3. Therefore, concluding that no inventive step was involved in the primary claim.
Arguments and Madras HC Judgment
Both the parties had retained similar arguments from the proceedings before the Controller. However, Hendrickson (Appellants) in support of its contentions had relied on Avery Dennison Corporation vs Controller Of Patents And Designs – to argue that an extended time gap between the cited prior art and the claimed invention would ordinarily lead to a conclusion that the claimed invention is not obvious. This argument was used because the D2 prior art document was published in or about 1969.
The judgment in para 11 has noted that prior art document D2 does not definitively conclude whether the “adjacent area” of shot peening extends beyond the HAZ/stress areas, and whether reference to “adjacent areas” would include areas beyond the stress since there is no express reference to such areas in the prior art. The Court has compared this to the “detailed” specification provided by Appellant. The judgment in para 13 also refers to the alleged benefit of such peening as asserted by the Appellants. However, interestingly, claim no. 1 by the appellant states that the peened portion would extend to “beyond a boundary of stress concentration on the axle and the brake system caused by the weld”. This is starkly similar to the broad language stating the “adjacent area”under the prior art D2.
In para 14 thereafter, the judgment favours the contention by the Appellant that the impugned order by the Controller has not taken into account the peening beyond the HAZ and that a remand back would consider the technical advancement or that it would not be obvious to a person skilled in the art.
Opinion
The refusal by the Controller seems to be a pretty straightforward one. The HCs insight in para 14 does not seem to have taken into account that the refusal order by the Controller has in fact tackled the peening area beyond the stress (HAZ) areas. In para 7 and 8 of its order, the Controller has specifically reasoned that D2 “motivates to shot peen the entire length, width and “adjacent area” to the weld applied”. This would mean that the Controller had taken into consideration that the claim by Hendrickson would be done by a person skilled in the art, even if all prior art documents do not specifically mention or clarify the exact area of such shot peening. The HC seems to have relied on the missing precise definition of “adjacent area” in D2. However, what goes unnoticed is that the claim of the invention is not clear/ precise on the area either and the Court had to rely on the complete specification to frame the question for the Controller to look at. It must be questioned that shouldn’t the onus to have clear claims rest on the patent applicants? After all, what is not claimed is disclaimed, right? (pg. 43) Also, interestingly, the Court has remanded back this application without ruling on merits, making the remand a bit more curious since the Controller prima facie seems to have already addressed the issue over which the Court is remanding the application back to them.
Another thing that stands out is that the Court has directed another officer to take a look at this application instead of the one who has passed the impugned order. But if the order did not lack any reasoning, shouldn’t the same officer have been instructed to explore whether the invention will still be hit by D2 in light of the Court’s judgement.