C.A. (COMM.IPD-PAT) 60/2024 Page 1 of 32

$~

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ C.A. (COMM.IPD-PAT) 60/2024

DONG YANG PC, INC .....Appellant

Through: Mr. Pravin Anand, Mr. Ravi

Aggarwal, Advocates

(M:9910696749)

versus

CONTROLLER OF PATENTS AND DESIG NS .....Respondent

Through: Mr. Ankur Mittal, CGSC with Mr.

Aviraj Pandey, Advocates

(M:8827993500)

Email: aviraj.pandey@outlook.com

CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA

JUDGMENT

% 01.07.2025

MINI PUSHKARNA, J:

1. The present appeal has been filed under Section 117A of the Patents

Act, 1970 (“Patents Act”) against the order dated 12

th

April, 2024, passed by

the respondent, i.e., Controller of Patents and Designs. By way of the

impugned order, the respondent rejected the appellant‟s Indian Patent

Application no. 2554/DEL/2013 (“subject application”), under Section 15 of

the Patents Act.

2. Brief facts relevant to decide the present appeal, are as follows:

2.1 The appellant filed the subject application on 29

th

August, 2013 for

the invention titled as „Vertical Rotary Parking System‟ (“subject

C.A. (COMM.IPD-PAT) 60/2024 Page 2 of 32

invention”), used as a parking system so as to park as many vehicles as

possible in a narrow space.

2.2 A request for examination of the said application was filed on 04

th

September, 2013. The application was published under the provisions of

Section 11A of the Patents Act.

2.3 The application was examined and subsequently the First

Examination Report (“FER”) was issued on 14

th

August, 2018 by the

respondent in terms of Sections 12 and 13 of the Patents Act.

2.4 In response to the objections raised in the aforesaid FER, a response

dated 11

th

January, 2019 was submitted by the appellant before the Indian

Patent Office.

2.5 The opponent, i.e., M/s. Parkerbot India Private Limited, filed a pre-

grant opposition on 15

th

June, 2019, citing prior documents D-1 to D-4. The

Patent Office issued a pre-grant notice on 08

th

February, 2023. The appellant

filed a reply statement and evidence before the Patent Office on 04

th

May,

2023, in response to the pre-grant opposition.

2.6 Thereafter, the appellant was intimated by the respondent that a

hearing was scheduled for 03

rd

November, 2023. However, few days prior to

the scheduled hearing, the opponent informed the respondent about a

document D-5. Notably, D-5 was never part of the original pre-grant

opposition.

2.7 The appellant attended the aforesaid hearing and filed its submissions

before the Patent Office on 18

th

November, 2023, however, the opponent did

not attend the said hearing. In view of subsequent cited D-5, the appellant

also filed a Form-13 for amendment in specifications before the Patent

Office on 18

th

November, 2023.

C.A. (COMM.IPD-PAT) 60/2024 Page 3 of 32

2.8 The respondent by the impugned order dated 12

th

April, 2024, while

disregarding the pre-grant opposition based on cited prior document D-1 to

D-4, rejected the patent application of the appellant, citing lack of inventive

step in view of the document D-5 and by stating that claimed invention was

not an invention as per Section 2(1)(ja) of the Patents Act. Further, the

respondent also refused amendment in the Specifications under Section 15

of the Patents Act. Hence, the present appeal has been filed.

3. It is submitted on behalf of the appellant that the respondent has

acknowledged that the claimed invention is novel over the prior art

document D-5. However, the appellant‟s application was wrongly dismissed

on the ground that the appellant‟s invention was a mere workshop

modification of the cited document D-5.

4. Learned counsel appearing for the appellant submits that even a

simple invention, if novel and non-obvious, warrants patent protection.

Further, the appellant had voluntarily amended the background of the

invention by including a reference to document D-5 as prior art, highlighting

the drawbacks of D-5 in comparison to the present invention. However, the

Controller erroneously refused to allow the said amendment to the

specifications.

5. Per contra, on behalf of the respondent, it is submitted that a detailed

comparative analysis establishes that the distinguishing feature in the present

invention is limited to mere reversal/interchange of the male and female

coupling elements of the meshing point between the suspension chain and

the pull gear. Further, the said alteration is mechanical in nature and does

not result in any technical improvement over the cited prior art document D-

5. Moreover, the inversion of coupling components was found to be evident

C.A. (COMM.IPD-PAT) 60/2024 Page 4 of 32

to a person skilled in the art, and not accompanied by any substantiating data

or technical information demonstrating an inventive step or performance

advantage.

6. Learned counsel for the respondent relied upon a judgment of

Supreme Court in the case of Bishwanath Prasad Radhey Shyam Versus

Hindustan Metal Industries, (1979) 2 SCC 511, to submit that as per

Supreme Court, mere alterations or predictable variations in known

mechanism, do not qualify as inventions. Teachings of D-5, which is a prior

art publication belonging to the appellant itself, are sufficient to establish

what would be commonly known to a person skilled in the art. Thus, the

refusal of the patent application stands justified, as the claimed subject

matter is not inventive and is plainly obvious in view of the prior art

document D-5.

7. The rejection of the appellant‟s amendment application has also been

justified by the respondent on the ground that the claim of technical

advancement over D-5, which is appellant‟s own prior art, was raised for the

first time in the amendment, whereas, as per the statutory requirement, all

material facts, including, any asserted technical advancement, must be

disclosed in the complete specification at the time of filing.

8. Having heard learned counsels for the parties, this Court at the outset

notes that the subject invention is a Vertical Rotary Parking System, which

has been explained by the appellant, in the following manner:

“xxx xxx xxx

23. The invention is a vertical rotary parking system, comprising of

support plates (140) attached at regular intervals to a circulating

main chain (130) with link plates (131) within an endless track.

Pallets (120) equipped with pallet plates (125) for vehicle placement

C.A. (COMM.IPD-PAT) 60/2024 Page 5 of 32

are supported by these support plates (140) and driven by a motorized

mechanism. The driving unit comprises a frame (100), a driving motor

(200), chain guide rails (111, 112), a rotatable ring gear (150), a

support unit, pull blocks (155) with pull grooves (155a), and a pinion

(210).The support plates (140) and link plates (131) of the main

chain (130) are connected to the pull blocks (155) using first

combining protrusions (141) and second combining protrusions

(131a), allowing them to cooperate and drive the main chain (130)

when the pinion (210) engages the gear of the ring gear (150)

powered by the driving motor (200).

xxx xxx xxx”

9. It is to be noted that the appellant had also invented and patented a

Vertical Rotary Parking System, earlier, i.e., D-5. However, as per the

appellant, the said Vertical Rotary Parking System had issues with complex

driving unit structures that involved multiple chains, sprockets and power

transmission components, leading to generation of noise due to friction on

account of continuous engagement of main chain with the sprockets. Thus,

as per the appellant, there was a need for an efficient and quieter Vertical

Rotary Parking System for storing vehicles in a limited space.

10. As per the case put forward by the appellant, the subject invention

promotes a smoother and more consistent motion with reduced friction and

fewer contact points, which help to significantly reduce the noise levels in

the Vertical Rotary Parking System. In the subject invention, the female

portions of the suspension chain, shown in cited prior art D-5, was replaced

with male portions of suspension. The comparison between the old Vertical

Rotary Parking System (D-5) and the subject invention, as placed on record,

is extracted as below:

C.A. (COMM.IPD-PAT) 60/2024 Page 6 of 32

Displacement

 The induced Displacement obtained

with a given Load of 3000Kg is

2.694mm. Which will effect the profile

of the chain plate and weaken the

strength of the plate.

Displacement

 The induced Displacement obtained

with a given Load of 3000Kg is

0.951mm.Which will comparatively

have no effect on the profile and

strength of the plate.

Factor of Safety (FOS)

 The Factor of Safety, which is obtained

after the application of 3000Kg is 0.5.

Which is lesser than 1. This proves that

the design is not safe enough to carry

the given Load.

Factor of Safety (FOS)

 The Factor of Safety, which is obtained

after the application of 3000Kg is 1.3.

Which is higher than 1. This proves that

the design is Safe enough to carry the

given Load.

C.A. (COMM.IPD-PAT) 60/2024 Page 7 of 32

Simulation Comparative Results of CHAIN PLATE C0003

OLD DESIGN CHAIN PLATE C0003 NEW DESIGN CHAIN PLATE C0003

Simulation Comparative Results of CHAIN PLATE C0003

OLD DESIGN CHAIN PLATE C0003 NEW DESIGN CHAIN PLATE C0003

Stress

 The induced Stress is 464.8 N/mm

2

, which is

greater than the Yield Strength 220.6 N/mm

2

.

Especially in the valley portion of the V-Cut.

Hence it proves that the previous design is not

sufficient enough to transmit a given load of

3000Kg.

Stress

 The induced Stress is 169.1 N/mm

2

, which is less

than the Yield Strength 220.6 N/mm

2

. Hence it

proves that the New design is sufficient enough to

transmit a given load of 3000Kg.

Displacement

 The Induced

Displacement

obtained with a

given Load of

3000Kg is

2.694mm.

Which will

effect the profile

of the chain

plate and

weeken the

strength of the

plate.

Displacement

 The Induced

Displacement

obtained with a

given Load of

3000Kg is

0.951mm.

Which will

comparatively

have no effect

on the profile

and the strength

of the plate.

C.A. (COMM.IPD-PAT) 60/2024 Page 8 of 32

Simulation Comparative Results of CHAIN PLATE C0003

OLD DESIGN CHAIN PLATE C0003

11. However, the subject invention was rejected by the respondent on the

ground that the claimed invention lacks an inventive step and does not

demonstrate any technical advancement over the cited prior art document D-

5 and that the same was not inventive, being obvious. Further, it was held

that the appellant had done only workshop modification in the Vertical

Rotary Parking System by interchanging the male portions with female

portions of the pull gear and suspension chain. The relevant portion of the

impugned order dated 12

th

April, 2024 is extracted as below:

Factor of Safety

(FOS)

 The Factor of

Safety, which

is obtained

after the

application of

3000Kg is

0.47. Which is

lesser than 1.

This proves

that the design

is not Safe

enough to

carry the given

Load.

Factor of Safety

(FOS)

 The Factor of

Safety, which is

obtained after

the application

of 3000Kg is

1.3. Which is

higher than 1.

This proves that

the design is

Safe enough to

carry the given

Load.

C.A. (COMM.IPD-PAT) 60/2024 Page 9 of 32

“xxx xxx xxx

Novelty and inventive step analysis with respect to cited document D5

D5: KR200326138Y1 Published

on 13/09/2003

2554/DEL/2013present invention Findings

In both the

documents, The

drive motor 200

transmits the

power to

externally

meshed ring gear

by means of

pinion.

31a-First coupling groove (let‟s

say it first Female portion)

32a- second coupling groove

(let‟s say it second Female

portion)

141- First combining protrusions

member (let‟s say it male

portion)

131a-Second protrusion

combining member (let’s say

male portion)

From this, it can

be seen that the

FEMALE

PORTIONS of

suspension

chain shown in

D5 is replaced

with MALE

portions of

suspension

chain as shown

in the present

invention.

C.A. (COMM.IPD-PAT) 60/2024 Page 10 of 32

Four traction blocks 51 (let‟s say

MALE PORTIONS) are fixed to

the annular rotary body 50

Four pull grooves 155a (let‟s say

HAVING FEMALE

PORTIONS) are fixed to the pull

block 155.

From this, it can

be seen that the

MALE

PORTIONS of

rotating body 50

shown in D5 is

replaced with

FEMALE

portions of

rotating body i.e.

pull block 150 as

shown in the

present

invention.

2554/DEL/2015 present

invention

D5: KR200326138Y1

Published on 13/09/2003

Relevant

comparison

Claim 1

A vertical rotary parking system,

wherein support plates (140) are

fixed at regular intervals to a

main chain (130) having link

plates (131) that is circulated in

an endless track, and pallets

(120) having pallet plates (125)

on which vehicles are mounted

are supported by the support

plates (140) and are circulated

by a driving unit, wherein the

driving unit comprises: a frame

(100); a driving motor (200)

fixed to the frame (100) and

generating power; chain guide

rails (111,112) supported by the

frame (100) and guiding the main

chain (130); a ring gear (150)

rotatably supported by the frame

(100) and having a gear on an

outer circumference; a pinion

A drive shaft 230 having a pinion

201 and a drive sprocket 231

engaged with the external gear

50a is provided at an end of the

frame 100, and the drive shaft

230 is rotatably driven by

connecting the motor sprocket

210 of the drive motor 200 and

the chain 220 of the drive

sprocket 231.[Para 0040]

Power is getting

transmitted from

drive motor to

pull gear by

means of

externally

meshed by means

of pinion in both

the documents.

C.A. (COMM.IPD-PAT) 60/2024 Page 11 of 32

(210) engaging with the gear of

the ring gear (150) and rotated

by power of the driving motor

(200), characterized by

a support unit rotatably

supporting the ring gear (150) to

the frame (100);

The suspension chain 30 is

circulated by an annular rotating

body 50 provided with an

external gear 50a which is

rotationally driven by the drive

motor 200. The annular rotating

body 50 is rotatably supported by

the frame 100, And is rotatably

supported by a fixed annular

fixture 60 by a bearing [para

0039]

Rings gears

supported by

frames is

disclosed in both

D5 and

2554/DEL/2013

a plurality of pull blocks (155)

fixed to a side of the ring gear

(150) at regular intervals and

having a pull groove (155a);

Four traction blocks 51 are fixed

to the annular rotary body 50 at

intervals of 90 degrees to pull the

suspension chain 30. [para 0041]

Traction blocks

51 fixed to the

annular rotary

body 50 as

shown in D5

perform same

function as pull

blocks 155 of the

present

invention.

and a first combining protrusion

(141) comprised at the support

plates (140), and a second

combining protrusion (131a)

comprised at the link plate (131)

of the main chain (130), are

coupled to the pull groove (155a)

of the pull blocks (155), such that

the first combining protrusion

(141) and the second combining

protrusion (131a) go in and out

of the pull groove (155a) for

together driving the main chain

(130).

The first and second coupling

grooves 31a and 32a are formed

on the hanger support plate 31

and the chain link plate 32 to be

coupled with the pulling block

51, respectively. By providing a

plurality of the pulling blocks 51,

The engagement between the

block 51 and the first and second

coupling grooves 31a and 32a is

minimized to enable precise

engagement, thereby greatly

reducing vibration and noise of

the device. [0054]

First combining

protrusion 141

and second

combining

protrusion

(131a) in the

present invention

(let‟s say it as

male portions)

are in meshed

with Pull groove

155a (let‟s say it

as female

portion) of pull

block 155.

Similarly in D5,

First and second

coupling grooves

31a and 32a

C.A. (COMM.IPD-PAT) 60/2024 Page 12 of 32

(female portion)

meshed with

traction blocks

51 (male

portion) of

rotary annular

body 50.

From the

drawing

comparison, it is

clear that male

and female

members of

components are

only

interchanged. So

no technical

advancement

can be

considered in

view of prior art

document D5.

So features of

claim 1 are not

inventive.

Regarding novelty ground, it can be seen from the above

comparison, the applicant has done the workshop modification in

the vertical rotary parking system as disclosed in the cited document

D5. It can be seen from drawing comparison table that the applicant

has only interchanged the male portions with female portions (as

assumed in the drawing comparison table) of the pull gear and

suspension chain. To challenge the novelty of the invention, it is a

well-established matter in law that, each and every feature of the

claim shall be found in a single disclosure. In view of this, as the

features are having little deviations in comparison to document D5,

Novelty ground cannot considered here.

The closest prior art D5 is relevant here for inventive step analysis as

it is most relevant document for inventive step consideration. The

other cited document D1-D4 discloses different configuration of

parking system. Document D1 or D3 (same patent family) analysis

already explained above. D2 and D4 shows different configuration of

C.A. (COMM.IPD-PAT) 60/2024 Page 13 of 32

parking system and these documents are not suggesting the features of

claimed invention.

As the modification made in the existing parking system as disclosed

in prior art document D5, we have to see the technical advancement

over existing vertical rotary parking system.

From the above comparison table, it is evident that in both the

documents, there are four pull groove to transmit the power to

suspension chains. The construction of pull gear and suspension chain

is also similar. Both the parking system transmits the power from

drive motor 200 to pull gear 50,155 by externally meshed ring and

pinion gear. The difference can be seen while comparing the

document D5 and the present invention, is in the male and female

portion (as assumed in the drawing comparison table) mounted on

both suspensions chain and pull gear or ring gear.

From the above comparison tables, it can be seen that the applicant

has only interchanged the male and female portion of meshing point

of the pull gear and suspension chain. There is no major difference

found while comparing both the document D5 with the present

invention. It can be seen that the by changing the groove i.e. female

portion and recess i.e. male portion will not leads to enhance any

technical advancement over cited document D5.

The controller disagrees with applicant contentions that by proposed

design in present invention over cited document D5, it will lead to

smooth and vibration free transmission of power. The controller is

of opinion that the mere interchanging the male portions and female

portion made on both pull gear and suspension chain would not give

such advantages or any technical advancements. Further there is no

comparative data analysis or designs of meshing gears or design of

protrusion and grooves of mating parts or advantageous solutions

proposed in the complete specification or in written submission to

support applicant’s contentions.

The applicant has filed form-13 to revise the specification by way of

explanation and included summary of document D5: KR200326138Y1

Published on 13/09/2003 in the background of the invention. As

document D5 is disclosing almost similar configuration of vertical

parking system except male and female portion of pull gear and

suspension chain as explain earlier. As this document is most

relevant for inventive step analysis and it is already explained in the

decision that changes made over the prior art document D5 are mere

workshop modification kind. So in view of this form 13 may not be

C.A. (COMM.IPD-PAT) 60/2024 Page 14 of 32

allowed for amendment in the specification.

The controller is having opinion that applicant is trying to take the

patent by doing mere workshop modification or slight changes on

existing patent i.e. D5: KR200326138Y1 Published on 13/09/2003. It

can be seen that there is no technical advancement over cited prior

art document D5. The person skill in the art with common general

knowledge can identify that the modification done over the disclosed

vertical parking system are mere workshop modifications and it will

not lead to any technical advancement.

Further it can be observed that the Document D5 (KR200326138Y1

Published on 13/09/2003) belongs to the same applicant and the

applicant while filing the present patent application, has not

mentioned anything about this document in the background part of

complete specification. The problem and its solution provided in the

background part of the complete specification belongs to a vertical

rotary parking system has a double sprocket structure in which the

main sprocket and the drive sprocket are coaxially provided, and has

a power delivering structure through the plurality of chains so as to

decelerate the driving motor, a structure of a driving unit constituting

the vertical rotary parking system is complex and much time and costs

are spent to manufacture and install the vertical rotary parking

system. When the document D5 (KR200326138Y1) came in the

picture, applicant tries to change the background part of the invention

by filing the form 13 which is not admissible.

It is important to bear in mind that in order to be patentable on

something known before or a combination of different matters

already known, should be something more than a mere workshop

improvement; and must independently satisfy the test of invention or

an inventive step.

So in view of the reason provided in the above analysis, the subject-

matter of claims 1 is not inventive over the cited prior art document

D5. Further, dependent claims are also obvious at least by virtue of

their dependency on the independent claim 1.

It should also be borne in mind that a patent should not be granted for

a mere workshop addition as held by the Supreme Court in

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries,

MANU/SC/0255/ 1978, because it does not satisfy the test of

inventiveness.

However Section 2(1)(ja) of The Patents Act,1970 defines inventive

C.A. (COMM.IPD-PAT) 60/2024 Page 15 of 32

step as: “inventive step means” a feature of an invention that involves

technical advance as compared to the existing knowledge or having

economic significance or both and that makes the invention not

obvious to a person skilled in the art.

Obvious means “...something which lies in the way, and in the context

of the Act is used in its normal sense of something which is plain or

open to the eye or mind something which is perfectly evident to a

person thinking on the subject” [Graham, J.in Olin Mathieson

Chemical Corporation v Biorex Laboratories Limited (1970) RPC 157

at 188 and in General Tire and Rubber v Firestone Tyre and Rubber

(1971) RPC 173 at 238; (1972) RPC 457 at 497].

What is obvious can not be inventive and what is inventive can not be

obvious” [Beecham Group Lid.‟s (Amoxycillin) Appln.(1980) RPC

261 at 290 ] [quoted both in Patent Law, P.Narayanan, fourth edition,

Eastern Law House, p. 403.]

Hence after studying the tabular comparison followed by further

analysis it is concluded that the present invention is mere workshop

improvement over document D5 and it will not lead to any technical

advancement and I do not think that any degree of invention is

required for a person skilled in the art having common general

knowledge to achieve the claims of the present application after the

teachings of the document D5.

Hence I conclude that claims of the present application are lacking in

inventive step in view of the document D5 and thus the claimed

invention is not an invention according to Section 2(1)(ja) of The

Patents Act.

I therefore refuse the application for Patent under Section 15 of The

Patents Act, 1970.

xxx xxx xxx”

(Emphasis Supplied)

12. A perusal of the aforesaid impugned order dated 12

th

April, 2024,

shows that the respondent has rejected the patent application of the appellant

on the ground that the claimed invention lacks an inventive step and the

distinguishing feature in the claimed invention is limited to the mere reversal

C.A. (COMM.IPD-PAT) 60/2024 Page 16 of 32

of the male and female coupling elements between the suspension chain and

the pull gear. At the time of recording such a finding, the Controller failed to

adjudicate as to how the invention did not involve technical advancement.

The determination that the claimed invention was merely a workshop

modification, has not been supported by any authoritative documents, except

the finding that slight changes have been made on the existing patent, i.e.,

D-5.

13. The Controller‟s finding of obviousness lacks foundation, as nothing

has been brought on record to demonstrate that the appellant‟s

reconfiguration of the male and female coupling elements, was an obvious

modification.

14. It needs no emphasis that simplicity is no bar to patentability and even

simple changes can introduce discernible and substantive differences,

leading to a new invention. The respondent has failed to give any specific

reasons as to how the specific structural optimization of the male and female

portions in the claimed invention, did not involve technical expertise and as

to how it was an obvious solution. Thus, dismissal of the appellant‟s patent

application on the ground that the subject invention was a mere workshop

modification, cannot be held to be tenable.

15. Further, it is to be noted that the prior art document D-5 belongs to the

appellant itself. The prior art document D-5 was published on 13

th

September, 2003, whereas, the patent application for the subject invention

was filed before the Controller of Patents and Designs on 29

th

August, 2013.

The appellant, in its amendment and subsequent documents, has explained

and set out in clear terms the various advantages of the subject invention

over prior art D-5. Thus, if the subject invention was so obvious, any third

C.A. (COMM.IPD-PAT) 60/2024 Page 17 of 32

party could have made modifications to the prior art D-5, to arrive at the

subject invention, however, the same has not happened in the present case.

16. Holding that one of the sure tests in analyzing the existence of an

inventive step would also be the time gap between the prior art document

and the invention under consideration, this Court in the case of Avery

Dennison Corporation Versus Controller of Patents and Designs

1

has held

as follows:

“xxx xxx xxx

36. One of the sure tests in analysing the existence of inventive step

would also be the time gap between the prior art document and the

invention under consideration. If a long time has passed since the

prior art was published and a simple change resulted in

unpredictable advantages which no one had thought of for a long

time, the Court would tilt in favour of holding that the invention is

not obvious.

37. Terrel on Law of Patents (16

th

Edition) opines that the age of the

prior art and why it was not done before is one of the factors to be

considered while deciding on obviousness. The observations made in

the judgment Brugger v. Medic-Aid Ltd., [1996] R.P.C. 635 delivered

by the UK Patents Court has been cited to substantiate the

consideration of this factor. The relevant portion reads:

“The fact that a piece of prior art has been available for a long

time may indicate, contrary to first impressions, that it was not

obvious to make the patented development from it. It is useful to

bear in mind in this regard the concept of long felt want. This is a

particularly efficient expression. An apparently minor

development which meets a long felt want may be shown to be

non-obvious because, although the prior art has long been

available, the development was not hit upon by others

notwithstanding that there was a need for improvement (the

„want‟) and an appreciation of that need (the „felt‟). In other

words the age of prior art may be an indication that a

development from it is not obvious if it can be shown that the

circumstances in the relevant trade were such that a failure of the

development to appear earlier is surprising.”

1

2022 SCC OnLine Del 3659

C.A. (COMM.IPD-PAT) 60/2024 Page 18 of 32

38. In the present case, the distinction between the prior art and the

subject patent primarily resides in the shape, position, and

engagement with the notch as also with the manner in which the

detachment takes place when the fastening happens. The prior art

document D2 belongs to this very Applicant, and the subject patent

application was filed almost 18 years after the filing of D2. The

Complete Specification explains clearly the disadvantages of the prior

art and sets out in clear terms the various advantages of the subject

invention. The said advantages are logically decipherable while one

understands the invention. No other prior art has been cited between

the period 1992 till 2010 which has dealt with fasteners in this manner

and has even come close to suggesting changes in the prior art

fastener stock. If the invention was so obvious, fasteners and

fastener stock being products used in bulk in industries, any third

party could have made the changes in the prior art to arrive at the

subject invention - which obviously has not happened.

39. The improvement in the present case between the prior art and

the subject invention is clearly decipherable. The same does not lack

inventive step. The fact that it was not obvious to a person skilled in

the art is clear from the lack of any other prior art document

addressing the problems in the prior art and suggesting any

solutions close to the invention despite the gap of more than 18

years. D1 and D3 are of a period prior to D2, though, dealing with

fastening guns and fasteners. The closest prior art identified is D2 and

the subject application discloses a technical advancement in

comparison with the closest prior art and the features comprising

inventive step are not obvious to a person skilled in the art and

therefore, the subject patent application satisfies the test of inventive

step.

xxx xxx xxx”

(Emphasis Supplied)

17. Similarly, respondent‟s invocation of „common general knowledge‟ to

dismiss the inventive step is substantially flawed, as such assertion of

„common general knowledge‟ has not been substantiated, rendering the said

finding of the Controller, as speculative and unsustainable.

18. The respondent has given a finding that a person skilled in the art,

with “common general knowledge”, can identify the modifications made to

C.A. (COMM.IPD-PAT) 60/2024 Page 19 of 32

the earlier vertical parking system, i.e., D-5. In view of the said finding, the

patent application of the appellant has been rejected. However, the

impugned order does not provide any reference to the „common general

knowledge‟ and gives no such finding as to why a person skilled in the art

would apply such „common general knowledge‟, to arrive at the subject

invention. There is nothing on record to suggest as to which „common

general knowledge‟ has been considered along with the cited prior art,

rendering the subject invention obvious, thereby leading to the finding of

lack of inventive step.

19. Elucidating on the aspect of requirement of proof for „common

general knowledge‟, this Court in the case of AGFA NV and Another

Versus Assistant Controller of Patents and Designs and Another

2

, has held

as follows:

“xxx xxx xxx

39. In this regard, reference may be made to a passage from Terrell

on Law of Patents, 16

th

Edition, which specifically discussed the

aspect of proof for „common general knowledge‟. The relevant extract

of the said passage is reproduced as under:

“Proof of common knowledge is given by witnesses competent to

speak upon the matter, who, to supplement their own recollections,

may refer to standard works upon the subject which were published

at the time and which were known to them. In order to establish

whether something is common general knowledge, the first and

most important step is to look at the sources from which the

skilled addressee could acquire his information.

The publication at or before the relevant date of other documents

such as patent specifications may be to some extent prima face

evidence tending to show that the statements contained in them

were part of the common knowledge, but is far from complete proof

as the statements may well have been discredited or forgotten or

2

2023 SCC OnLine Del 3493

C.A. (COMM.IPD-PAT) 60/2024 Page 20 of 32

merely ignored.” Evidence may, however, be given to prove that

such statements did become part of the common knowledge.”

40. From the above extract, for the Controller to rely on ‘common

general knowledge’ as a ground for refusing a patent application, it

is essential to specify the source of the said knowledge. It would be

essential that the said source of the ‘common general knowledge’

would have been published before the priority date of the patent

application. In addition, the fact that a theory or principal or

knowledge has become common knowledge needs to be

substantiated by some evidence. The said evidence could be in the

form of references to the ‘common general knowledge’ textbooks or

research articles or standard documents.

41. The judgment of the UK Patents Court in Generics (UK)

Ltd. v. Daiichi Pharmaceuticals Co. Ltd., [2009] R.P.C. 4, has also

given some guidance on what subject matter forms part of the

‘common general knowledge’. In the said judgment it has also been

clarified that there is no requirement for the knowledge to be at the

forefront of the mind of the person skilled in the art. The relevant

extract of the said judgment is set out below:

“Thus the common general knowledge is the common knowledge

in the field to which the invention relates. The notional skilled

addressee is the ordinary man who may not have the advantages

that some employees of large companies may have and information

does not form part of the common general knowledge simply

because it is known to some persons in the art. It must be generally

known and generally regarded as a good basis for further action

by the bulk of those engaged in that art before it becomes part of

their common stock of knowledge relating to the art, and so part

of the common general knowledge. That is not to say the skilled

person must have it at the forefront of his mind. As Laddie J.

explained in Raychem Corp-orations' Patents [1998] R.P.C. 31 at

40, it includes all the material which he knows exists and which

he would refer to as a matter of course if he cannot remember it

and which he generally understands is sufficiently reliable to use

as a foundation for further work.”

42. Recently, vide judgment dated 18

th

January, 2023, the Calcutta

High Court, in Groz-Beckert KG v. Union of India, 2023 LiveLaw

(Cal) 17 held that for considering inventiveness, the invention as a

whole has to be considered and not broken down into isolated

elements. In the said judgment it has also been specifically

highlighted that there needs to be preciseness about what constitutes

C.A. (COMM.IPD-PAT) 60/2024 Page 21 of 32

„common general knowledge.‟ The relevant extract of the said

judgment is set out below:

“7. Thus, in determining inventive steps, the invention should be

considered as a whole. In other words, it is not sufficient to draw

the conclusion that a claimed invention is obvious merely because

individual parts of the claim taken separately are known or might

be found to be obvious. The contention that an invention is obvious

in relation to a particular item must be treated with care and

caution. In doing so, the whole picture presented should be taken

into consideration and not a partial one. There should be an

element of preciseness about what is asserted to be common

general knowledge. The “obviousness” must also be strictly and

objectively judged. (Bishwanath Prasad Radhey

Shyam v. Hindustan Metal Industries (1979) 2 SCC 511 paras 24 &

25, F. Hoffman La Roche Ltd. v. Cipla Ltd. PTC 1 paras 13, 143).”

43. In the present case, however, the Controller has failed to give

any source of the common knowledge that has been considered.

Therefore, it cannot be construed as to what precise element of

‘common general knowledge’ has been considered along with the

cited prior art to claim that the combination of the teachings of the

prior art and the ‘common general knowledge’ led to a finding of

lack of inventive step.

xxx xxx xxx”

(Emphasis Supplied)

20. It is to be noted that since the prior art document D-5 was not cited in

the FER, the appellant sought to amend the specifications by way of

providing an explanation and incorporating a summary of the document D-5.

However, the application of the appellant for amendment of the

specifications was rejected by holding that document D-5 belongs to the

appellant itself, and the appellant had not made any reference about the said

document in the background part of complete specifications.

21. This Court agrees with the submission made by learned counsel for

the respondent that the appellant was enjoined upon to disclose the prior art

D-5 at the time of filing of its patent application, which is appellant‟s own

C.A. (COMM.IPD-PAT) 60/2024 Page 22 of 32

prior art, since it is now the claim of the appellant that the present invention

has technical advancement over the prior art D-5. It is to be noted that if by

suppressing any prior art, an applicant is able to obtain patent undeservingly,

then, such prior art can certainly be relied even at a later stage to challenge

the grant of patent to such an applicant or to revoke such patent, under

Section 64 of the Patents Act.

22. However, if a prior art comes to the notice of the Controller during the

pendency of a patent application, though not disclosed by the applicant, and

if objection in that regard is raised by the Controller, the applicant would

have a right to address such issues by way of amending the specifications,

within the norms of amendment that are allowed as per law. The Controller

has the authority to consider such amended specifications in order to

adjudicate the patent application of the applicant.

23. Nevertheless, on the basis of such non-disclosure of prior art, the

Controller cannot refuse to consider the application for amendment of

specifications on merits, especially, when such prior art is relied by the

Controller to raise objections to patent application of such applicant.

24. A perusal of the subject invention shows that the appellant has

reconfigured the coupling mechanism in the subject invention, by reversing

the male and female portions between the suspension chain and pull gear, in

the following manner:

C.A. (COMM.IPD-PAT) 60/2024 Page 23 of 32

D5: KR200326138Y1

Published on 13/09/2003

2554/DEL/2013 present

invention

Findings

31a-First coupling groove (let‟s

say it first Female portion)

32a- second coupling groove

(let‟s say it second Female

portion)

141-First combining protrusions

member (let‟s say it male

portion)

131a-Second protrusion

combining member (let’s say

male portion)

From this, it can

be seen that the

FEMALE

PORTIONS of

suspension chain

shown in D5 is

replaced with

MALE portions

of suspension

chain as shown

in the present

invention.

25. This Court notes the submission of the appellant that the subject

invention has resulted in reduced friction, lower noise, and enhanced safety.

For this purpose, the appellant has submitted a Technical Evidence Affidavit

before this Court. Further, the appellant had sought to amend the claim

specifications in order to incorporate prior art D-5, into the specifications of

the subject application. However, the said amendment was wrongly rejected

by the Controller on the ground that, since the said document D-5 belonged

to the appellant itself, the appellant ought to have mentioned about the said

document as part of complete specification. Though the cited prior art D-5

belonged to the appellant itself, however, merely because the appellant did

not cite D-5 at the time of filing the subject application, cannot be held

against the appellant as a failure to disclose a complete specification. The

C.A. (COMM.IPD-PAT) 60/2024 Page 24 of 32

appellant had duly explained the subject invention in the specifications filed

with the subject application. The fact remains that document D-5 was not

cited in the FER. Therefore, when the same was cited for the first time prior

to the hearing date before the Patent Office, the appellant sought to amend

the specifications with a view to clarify the technical advancement of the

subject invention, such as reduced friction and noise over configuration

disclosed in document D-5. However, the Patent Office rejected the

amendment application, thereby, denying the appellant a fair opportunity to

respond to the cited prior art, i.e., document D-5, in violation of the

Principles of Natural Justice. Thus, the rejection of the amendment

application for amending the specifications, clearly amounted to a

deprivation of a fair opportunity to the appellant to address the objections

raised by the respondent on the basis of the cited prior art, i.e., document D-

5.

26. The Controller‟s refusal of the amendment in the specifications,

premised on Section 59 of the Patents Act, ignores the fact that document D-

5 was not cited in the FER, and was introduced only in the Hearing Notice

dated 29

th

September, 2023. The provisions pertaining to „Amendment of

Applications and Specifications‟, are detailed in Sections 57 to 59 of the

Patents Act. As per the said provisions, there exists no specific bar for

amendment to the specifications even at a subsequent stage, and the only

requirement is that the amendment must satisfy the conditions provided

under Section 59 of the Patents Act, and the amendment in the specifications

is not inconsistent with the claims made in the original specifications. Thus,

the respondent erred in rejecting the amendment application of the appellant

and in not allowing the amendment in the specifications, which sought to

C.A. (COMM.IPD-PAT) 60/2024 Page 25 of 32

explain the technical advancement in the subject invention over the prior art,

i.e., document D-5. In view of the aforesaid, the Controller‟s refusal to allow

the amendment application was unjustified.

27. Elucidating on the concept of amendments in the specifications, and

holding that the amendments in claims and specifications, can be allowed

subsequently, even at the stage of appeal, so long as the same are in

consonance with the earlier claims and original specifications, this Court in

the case of Opentv INC Versus Controller of Patents and Designs and

Another

3

, has held as follows:

“xxx xxx xxx

51. The fundamental principle governing amendment of Claims is

therefore, that amendments are permissible in the Claims so long as

the said amendments are within the scope of the originally filed

Claims as filed and do not expand the said Claims. Thus, reduction

or narrowing down a Claim is permissible, but broadening,

widening or expansion of Claims is not permissible.

52. The only issue remaining is whether at the appellate stage

amendments to the Claims are permissible at the instance of patent

applicant. In a recent decision of a Coordinate Bench of this Court in

Nestle (supra), the Court was considering the question as to whether

amendments can be directed at the appellate stage. The Court, after

considering the law of amendments of Claims, observed as under:

“30. There is no provision in the Act, which specifically bars the

amendment of a patent specification at the appellate stage.

Amendment of patent applications and specifications are covered

in Chapter X of the Act. Sections 57 to 59 of the Act are the

provisions that govern the same.

xxxx xxxx xxxx

33. In view of the above, there is no specific bar for the

amendment even at a subsequent stage. Only requirement under

the Act is that the amendment has to fulfil the requirements

under Section 59 of the Act and the consideration that has to be

kept in mind is that the amended Claims are not inconsistent with

3

2023 SCC OnLine Del 2771

C.A. (COMM.IPD-PAT) 60/2024 Page 26 of 32

the earlier Claims in the original specification.”

53. In the above case of Nestle (supra), the Court permitted the

Appellant to revert to the originally filed claims which had been given

up due to objections raised by the Patent Office. After considering

Section 15 of the Act, the Court held that since the Controller has the

power of directing amendment to a patent application, a High Court

in appeal would also have similar powers. It also observed that the

appeal is a continuation of the proceedings before the original

forum and thus, amendments are permissible at the appellate stage.

The relevant paragraphs of the judgment are set out below:

“34. Now, a reference may also be made to Section 15 of the Act,

i.e., where a Controller has been given the power to require an

application to be amended to his satisfaction. The said provision

reads as under:

“[15. Power of Controller to refuse or require amended

applications, etc., in certain cases.-Where the Controller is

satisfied that the application or any specification or any other

document filed in pursuance thereof does not comply with the

requirements of this Act or of any rules made thereunder, the

Controller may refuse the application or may require the

application, specification or the other documents, as the case

may be, to be amended to his satisfaction before he proceeds

with the application and refuse the application on failure to do

so.]”

35. It is axiomatic that if the Controller has been given the power

to direct an amendment to the patent application, the High Court,

which is sitting in appeal over the decision of the Controller,

should also have similar powers to direct the patent applicant to

amend Claims to its satisfaction.

36. Further, it is a settled position of law that an appeal is a

continuation of the proceedings of the original court. The appellate

jurisdiction involves a rehearing on law as well as on facts.

Reference in this regard may be made to a recent judgement of the

Supreme Court in Ramnath Exports Pvt. Ltd. v. Vinita Mehta &

Anr, (2022) 7 SCC 678.

xxx xxx xxx

39. Thus, in conclusion, I observe that if the High Court, in

appeal is considering the issue of grant of patent, it should

necessarily have the same powers as given to the Controller under

Section 15 of the Act, which includes power to require

amendment. Further, the appellate proceedings challenging the

refusal of grant of a patent, questions of facts need to be re-

C.A. (COMM.IPD-PAT) 60/2024 Page 27 of 32

examined comprehensively and therefore, a liberal view has to be

taken with regard to amendment of Claims”

54. Thus, amendments having been held to be permissible at the

appellate stage, this Court is of the opinion that irrespective of

whether the amendment is directed by the Court or is at the instance

of Patent Applicant, so long as the requirements as laid down under

Section 59 of the Act are fulfilled such that the amended claims are

within the scope of original claims, is not breached, the amendment

is permissible.

xxx xxx xxx”

(Emphasis Supplied)

28. It is apparent that the appellant‟s application for amendment was

neither an attempt to shift the invention‟s foundation, nor a violation of

Section 59 of the Patents Act. The proposed amendment by the appellant, in

its specifications, was a legitimate response to the Controller‟s subsequent

introduction of document D-5, as prior art. Thus, the Controller‟s refusal to

allow the appellant‟s application for amendment of the specifications, is not

justified. Once a new prior art has been introduced, even though it may

belong to the applicant itself and was not part of the FER, then, also an

applicant has the right to respond to the said newly introduced prior art.

Therefore, refusal to allow the amendment to the specifications, which was

sought to provide clarification regarding the technical advancements of the

subject invention over the newly cited prior art, amounts to a clear violation

of the Principles of Natural Justice.

29. The subject patent seeks to address the challenges and inefficiencies

in the prior art system, i.e., the Vertical Rotary Parking Systems by

interchange of the male and female portions of the coupling elements

between the suspension chain and the pull gear. It is a settled law that

simplicity does not defeat an invention and even simple inventions are

C.A. (COMM.IPD-PAT) 60/2024 Page 28 of 32

patentable.

30. Holding that a simple invention, if novel and non-obvious, warrants

patent protection when it addresses a technical problem with ingenuity, in

the case of Avery Dennison Corporation Versus Controller of Patents and

Designs

4

, it has been held as follows:

“xxx xxx xxx

32. Some of the fundamental principles while analysing inventive step

and whether an invention is obvious or not are:

i. That simplicity does not defeat an invention - even simple

inventions are patentable.

ii. The inventive step has to be assessed on the basis of the date of

priority of the subject patent and not after the publication of the

same i.e., it is not permissible to do a hindsight analysis or an ex-

post facto analysis.

33. Way back in 1890, the House of Lords, in Vickers v. Siddell,

(1890) 7 R.P.C. 292 while considering simplicity in an invention

observed:

“If the apparatus be valuable by reason of its simplicity, there is a

danger of being misled by that very simplicity into the belief that

no invention was needed to produce it. But experience has shown

that not a few inventions, some of which have revolutionised the

industries of this country, have been of so simple a character that

when once they were made known it was difficult to understand

how the idea had been so long in presenting itself, or not to

believe that they must have been obvious to everyone.”

34. A similar sentiment was echoed almost 100 years ago in Pope

Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd., (1929) 46

R.P.C. 23 when the Privy Council while deciding an appeal arising

from the Supreme Court of Canada observed as under:

“The principal objection seems to be that the invention is too

simple, but that is not an objection that a practical paper-maker

would take. It ought to be looked upon as a bold conception.

Although air has been used, it has not been applied in the

particular way in which it was applied by Pope. The man who

4

2022 SCC OnLine Del 3659

C.A. (COMM.IPD-PAT) 60/2024 Page 29 of 32

correlated the elements of a forty-year old problem is entitled to a

patent.”

35. It is thus clear that simplicity in the invention should not deter

the Court from granting a patent.

xxx xxx xxx

40. Applying any of the judicially recognised tests or the settled

approach towards such cases, as discussed above, the Controller's

finding that any person skilled in the art could make the variation

and modifications in D2 to arrive at the subject invention, is not

tenable. The differences which the Controller describes

as ‘superficial’ may appear simple but clearly have an impact on the

product concerned. The description of the said differences as

superficial would, therefore, be misplaced. This Court also notes the

fact that the corresponding patent applications in various jurisdictions

have already been granted in the USA, Japan, South Korea and

China. The issue of evergreening raised in the submissions would not

arise in these facts.

xxx xxx xxx”

(Emphasis Supplied)

31. The appellant has also placed on record a Technical Evidence

Affidavit dated 05

th

July, 2024 to provide a stress analysis report, in order to

confirm the technical advancements over prior art document D-5, and to

address the Controller‟s concern regarding the absence of comparative data.

In this regard, reference may be made to the judgment of the U.S. Court of

Appeals, Federal Circuit in the case of Knoll Pharmaceutical Company,

Inc. Versus Teva Pharmaceuticals U.S.A., Inc.

5

, wherein, it has been held

that evidence developed after the grant of patent is not excluded from

consideration, when it supports in understanding the invention‟s full range

of advantages. Thus, in the said case, it was held as follows:

“xxx xxx xxx

*1385 [1] To further demonstrate the unexpected activity of the

claimed combination, Knoll submitted additional data directed to

5

367 F.3d 1381, 70 U.S.P.Q.2d 1957

C.A. (COMM.IPD-PAT) 60/2024 Page 30 of 32

similar showings of efficacy. Three of the later studies submitted to the

district court concerned the synergistic interaction of hydrocodone

and ibuprofen when administered together for pain relief. The fourth

study reported enhanced muscle repair after exercise following

administration of the combination of hydrocodone and ibuprofen, an

aspect not unrelated to pain relief. Evidence developed after the

patent grant is not excluded from consideration, for understanding

of the full range of an invention is not always achieved at the time of

filing the patent application. It is not improper to obtain additional

support consistent with the patented invention, to respond to

litigation attacks on validity. There is no requirement that an

invention’s properties and advantages were fully known before the

patent application was filed, or that the patent application contains

all of the work done in studying the invention, in order for that work

to be introduced into evidence in response to litigation attack. Nor is

it improper to conduct additional experiments and provide later-

obtained data in support of patent validity.

xxx xxx xxx”

(Emphasis Supplied)

32. In the present case, the Technical Evidence Affidavit dated 05

th

July,

2024, filed by the appellant, seeks to corroborate the technical advancements

disclosed in the specifications, such as reduced friction and enhanced safety,

and directly responds to the Controller‟s concern regarding the absence of

comparative evidence. Accordingly, there is no impediment in considering

the said document.

33. Similarly, the U.S. Federal Circuit‟s decision in the case of Genetics

Institute, LLC, Versus Novartis Vaccines and Diagnostics, Inc.

6

, reinforces

the relevance of post-filing evidence, when it aligns with the invention‟s

disclosed properties. Thus, it has been held as follows:

“xxx xxx xxx

Although non obviousness analysis remains properly focused at the

time the invention was made, it is error to prohibit a patent applicant

or patentee from presenting relevant indicia of non obviousness,

whether or not this evidence was available or expressly contemplated

6

655 F.3d 1291, 99 U.S.P.Q.2d 1713

C.A. (COMM.IPD-PAT) 60/2024 Page 31 of 32

at the filing of the patent application. 35 U.S.C.A. § 103.

xxx xxx xxx

*1317 In Knoll, the district court refused to consider evidence

showing the greater analgesic effect of a combination of drugs over

the prior art, concluding that "the unexpected benefits or results were

discovered after the ... patent had been issued." 367 F.3d at 1384

(internal quotation marks omitted). We reversed, finding that,

“[c]ontrary to the district court's perception, the specification

expressly acknowledge[d] that the efficacy of the combination [was]

„surprising‟ ” and stated that the combination of the drugs obtained

"an analgesic effect greater than that obtained by increasing the dose

of either [analgesic] alone." Id. To demonstrate the unexpected

activity of the claimed combination, the patentee submitted

additional data from experiments conducted after the patent had

been filed. Id. at 1385. In concluding that the district court erred in

rejecting this after-acquired data, we simply held that it was "not

improper to obtain additional support consistent with the patented

invention" because "understanding of the full range of an invention

[was] not always achieved at the time of filing the patent application."

Id. at 1385 (emphases added). Thus, where there was already support

showing that the inventor contemplated the unexpected result at the

time the patent was filed, it was not improper to supplement this

evidence of unexpected results with evidence obtained at a later

time. Knoll is therefore consistent with a requirement that

unexpected results be tied to what the inventor knew at the time of

the invention.

xxx xxx xxx”

(Emphasis Supplied)

34. The reliance placed by the respondent on the judgment in Bishwanath

Prasad Radhey Shyam (supra) is totally misplaced. The said judgment is

clearly distinguishable on account of the fact that in the said case it was

established that the „patented machine was neither a manner of new

manufacture or novel improvement, nor did it involve any inventive step,

having regard to what was publicly known or used prior to the date of the

patent‟. In the said case, it had been averred that the method of manufacture

described in the patent therein, had been publicly known and in use in

various places, long prior to the patent. However, no such factual

C.A. (COMM.IPD-PAT) 60/2024 Page 32 of 32

circumstances exist in the present case, rendering the reliance on the said

judgment inapposite.

35. Considering the detailed discussion hereinabove, the impugned order

is not found to be tenable. Accordingly, this Court considers it appropriate to

direct that the appellant‟s patent application be re-examined in the light of

the observations made hereinabove.

36. Accordingly, the following directions are issued:

36.1 The impugned order dated 12

th

April, 2024, is set aside.

36.2 The matter is remanded to the Controller of Patents and Designs for

de novo consideration.

36.3 The patent application for the subject patent is restored to its original

number.

36.4 The appellant shall be granted a hearing prior to deciding the matter

afresh.

36.5 The matter would be decided by an officer other than the one who has

passed the impugned order.

36.6 The aforesaid exercise shall be completed and an order be passed,

within four months from today.

37. It is clarified that the Controller of Patents and Designs shall proceed

with the de novo consideration, and decide the matter, uninfluenced by the

impugned order.

38. Accordingly, with the aforesaid directions, the present appeal is

disposed of.

(MINI PUSHKARNA)

JUDGE

JULY 1, 2025/au