By an order dated March 30, 2016, the Patent Office refused an application [1733/KOLNP/2008] filed by OCV Intellectual Capital LLC, with the subject invention as ‘Composition for High Performance Glass, High Performance Glass Fiber and Articles Therefrom’. In the impugned order, the Controller stated that the claimed invention was not patentable for lack of novelty and inventive steps. Additionally, the Controller stated that the claimed invention was a mere admixture and not patentable under Section 3(e) of the Patents Act, 1970. Aggrieved by this decision, OCV filed an appeal before the Calcutta High Court.
Case of the Appellant
The appellant submitted that their invention claimed a special glass fiber with specific components having specific weight ratios. The appellant submitted that known varieties of glass fiber (E, R & S Glass) required special platinum-lined furnaces, thereby making production more expensive. The appellant claimed that their invention, a glass fiber composition, could achieve the same properties as S-glass but at a lower manufacturing cost (without requiring a platinum-lined furnace). The appellant contended that the prior art D1 discouraged a person skilled in the art from increasing the MgO concentration because it reduced the glass’s high-temperature resistance.
The appellant contended that the respondent Controller had ignored the principles of teaching away in arriving at the finding on novelty and inventive steps. The appellant cited the ruling of the Court in General Tyres vs Firestone (1972) RPC 457; Sulphur Mills Ltd. vs Dharamaj Crop Guard Ltd. & Anr. (2021) 87 PTC 567; Toyo Engineering Corporation & Anr. vs The Controller General of Patents, Designs and Trademarks & Anr.; Uniworth Resorts Limited and Ajay Prakash Lohia vs Ashok Mittal & Ors. (2008) 1 CalLT 1 and Stempeutics Research Pvt. Ltd. vs Assistant Controller of Patent & Designs (2020) SCC OnLine IPAB 16) in support of the doctrine of teach away.
The appellant submitted that D1 teaches away from using Magnesium Oxide (MgO) above 4.5%, as the maximum quantum of MgO in the composition disclosed in D1 was 4.5%. According to the appellant, their invention required that the composition comprises at least 5% MgO. The appellant argued that this clearly meant that D1 discouraged, or taught away from, increasing the MgO concentration because it adversely affects the production of high-temperature glass fibers. The appellant also submitted that their invention exhibited a synergistic effect and was not a mere admixture under Section 3(e).
The appellant contended that such synergism resulted in both technical and economic advancement. The appellant submitted that the claimed composition produced lower-cost, high-performance glass and that it involved a direct melt process in a refractory-lined furnace, which was neither considered nor addressed in the impugned order. The appellant contended that, in arriving at the finding on novelty and inventive steps, the Controller ignored the principles of teaching away.
Reply of the Respondent Controller
The respondent Controller maintained that the claimed invention lacked novelty, as all the claimed ingredients were identical to those disclosed in D1 and D2. The respondent argued that the minuscule increase in the weight of MgO from 4.5% to at least 5.0% was neither novel nor did it constitute any variation resulting in inventiveness. The respondent submitted that the entire contention of the appellant on account of D1 teaching away was unsubstantiated and without any basis. According to the respondent, there was substantial overlap between D1 and the subject invention, and this did not constitute any change.
There was no technical advancement in the invention compared with the disclosures in the prior art D1-D4, which made it easy for a person skilled in the art to appreciate the obviousness limitation and thereby warrants rejection of the subject invention. On the objection under Section 3(e), the respondent submitted that the experimental data, along with the comparative study as provided by the appellant in its claim, did not demonstrate any synergistic effect to overcome the limits under Section 3(e).
Court’s Analysis and Findings
On Anticipation
The Court relied on the ruling in General Tyres vs Firestone, [1972] and found that the impugned order itself recognised that the maximum percentage of MgO in D1 was 4.5%, whereas the invention required at least 5% MgO. The fact that even a 0.5% difference in MgO would confer novelty was not considered by the respondent Controller. The Court found that the contention of the appellant that the claimed invention achieved a certain technical advantage despite the increase of MgO was not even dealt with in the impugned order.
On Inventiveness: Doctrine of Teaching Away
The Court observed that the doctrine of teaching away is well recognised and applied whenever the inventor’s research proceeded in a direction opposite to that predicted by the prior art. The case of the appellant before the Controller was that the prior art discouraged the person skilled in the art from increasing the MgO concentration because it reduced the high-temperature resistance of the glass, which was not adverted to in the impugned order. The finding in the impugned order that the concentration was almost the same was insufficient and did not deal with the contentions of the appellant. The Court found that the appellant had also relied on scientific and technical data to substantiate this contention.
The subject invention was to manufacture high-temperature-resistant glass at a lower cost, thereby discouraging any person skilled in the art, upon reading D1, from increasing the MgO concentration. The Court noted that the appellant had truly overcome a prejudice in the art and researched in a direction which the prior art suggested was disadvantageous. This required an investigation into the prejudices of the prior art. The Court noted that the issue was specifically raised by the appellant in the Written Submissions, and technical and scientific data in support thereof were made available. The Court found that the Controller, in passing the impugned order, ignored the contention of teaching away and did not address this issue at all. This was a factor to be considered in the non-obviousness analysis. The Court held that this was a serious infirmity in the impugned order, and it vitiated the entire finding on both inventiveness and lack of novelty.
On Inventive Step
The Court found that the respondent Controller had reproduced verbatim the teachings of each prior art document and concluded that the subject application lacked inventive steps. The Court, therefore, held that the conclusion arrived at in the impugned order was not supported by any reasons at all.
Decision of the Court
The Court allowed the appeal, based on the fact that the respondent Controller merely summarised the cited prior art, D1-D4, and concluded that the invention lacked an inventive step. According to the Court, a bare conclusion de hors reasons made the impugned order unsustainable. Remanding the matter, the Court directed the respondent Controller to decide afresh in accordance with the law.
Concluding Takeaways
This ruling once again emphatically stated that reasons are the safeguard against the ipse dixit of the decision-making process. The justification and the reasonableness of the conclusion can only depend on the reasons given in support thereof. The Court reiterated that it is now well-settled that in the absence of any reasons as to how each of the prior art documents disclosed a lack of inventive steps, and on the touchstone of the principles of mosaicing, without demonstrating precisely how one document logically leads to another, makes the conclusion of lack of inventive steps unsupportable.
This case also highlights the significance of the doctrine of teaching away in finding both on inventiveness and lack of novelty by the Controller. Ignoring this aspect would be considered a serious infirmity in the impugned order and would vitiate the entire finding on both inventiveness and lack of novelty.
Author: DPS Parmar (Special Counsel)