CMA(PT) No. 9 of 2024

IN THE HIGH COURT OF JUDICATURE AT MADRAS

Reserved on : 27.11.2025

Delivered on : 05.01.2026

CORAM

THE HONOURABLE MR.JUSTICE N.SENTHILKUMAR

CMA(PT) No. 9 of 2024

Flipkart Internet Private Ltd

Buildings Alyssa,

Begonia and Clove Embassy Tech Village,

Outer Ring Road, Devarabeesanahalli Village,

Bengaluru, 560103,

Karnataka, India.

Appellant

Vs

1. The Joint Controller of Patents and Designs

Through the Controller of Patents and Designs,

Patent Office Intellectual Property Building,

G.S.T.Road, Guindy, Chennai 600 032.

2.Voicemonk Inc.

5064 Amberwood Drive , Fremont CA 94555

Respondent(s)

PRAYER

a) to set aside the Impugned order dated 9.10.2023 in respect of the post-grant

opposition and revoke the Indian Patent Number 312437;

b) to direct the Respondent No.1 to reconsider the present post-grant opposition

in respect of the Indian patent number 312437 de novo by assigning the case to

a different Ld. Controller; and

c) pass any further orders.

For Appellant:Ms.Sneha Jain for

Mr.Madhan Babu

For R1: Mr.Subburanga Bharathi,

Central Govt. Counsel

For R2: Mr.Ramesh Ganapathy

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CMA(PT) No. 9 of 2024

ORDER

The present Appeal has been filed under Section 117-A of the Patents Act,

challenging the order dated 9.10.2023, passed by the first respondent dismissing

the Post-grant Opposition against Patent Application No.312437.

2. Brief facts of the case are as under:-

a) The second respondent herein viz., VOICEMONK INC. through their

agents Shri.Kartik Puttaiah of M/s.InvnTree IP Services had filed a patent

Application in Application No. 312437 seeking registration of patent for their

invention called “SYSTEMS AND METHODS FOR VIRTUAL AGENTS TO

HELP CUSTOMERS AND BUSINESS” on 18.11.2016

b) According to the 2

nd

Respondent, the invention is meant to serve the

customers, who intend to make online shopping with ease of access. The

invention, according to the second respondent herein, would address the

inconvenience involved in the normal way of exploration in the website in

search of the products which the customers wish to purchase.

c) The invention takes into consideration the preferences of users and

generates suggestions which may be suitable to the users. The system helps in

suggestion and selection of products on a website or software application.

Further, the system helps in speaking with customers and executing their orders.

The system also helps customers to locate items in a brick and mortar store.

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Thus, the invention will be advantageous at least in optimizing the process of

selection of products and execution of actions of a user. Further, it is

advantageous in providing better user experience and decreasing time and effort

required from users end.

d) With regard to their invention, the second respondent herein has

originally made, as many as 36 claims as on 18.11.2016.

e) On 16.7.2018, the Controller of Patents had issued the First

Examination Report on the patent sought to be registered by the second

respondent herein called for their reply. On 13.12.2018, the second respondent

herein had submitted their reply with the amended claims.

f) On 21.2.2019, a hearing notice was issued by the Assistant Controller

of Patents & Designs to the second respondent, bringing to their notice certain

issues with regard to the claims made by the second respondent.

g) Thereupon, the second respondent had filed their written submissions

and also the amended claims on 18.4.2019. Such amended claims are as

under:-

"1. A system configured to execute actions based on user input,

the system comprising a virtual agent (100) comprising a virtual

agent client (202) and a virtual agent server (104) for an

application, wherein the virtual agent is deployed by the virtual

agent client (202) and the virtual agent server 104 to function

with the application, wherein the virtual agent server (104) is

configured to:

receive at least an audio input from a user of the application;

identify among a plurality of actions, using the input, an action

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desired by the user to be performed;

execute one or more actions among the plurality of actions;

characterized in that,

the virtual agent is configured to:

store, in the virtual agent server (104) correlation between the

plurality of actions available in the application, wherein the

actions comprise search, sort, select, submit and compare;

associate one or more of the plurality of actions with one or more

tags; and

execute the one or more actions among the plurality of actions,

based on the desired action and the correlation between the

actions available in the application; and

display an output page to the user, wherein, in the absence of the

virtual agent, the plurality of actions would result in display of

more than one output page displayed one after the other.

2. The system according to claim 1, wherein the virtual agent is

configured to extract the correlation between the actions by

crawling through the application.

3. The system according to claim 1, wherein the actions of search,

sort, select, submit and compare is initiated by the virtual agent

client (202).

4. The system according to claim 1, wherein the virtual agent is

further configured to carry out natural language processing on

the audio input and determine a context corresponding to the

action.

5. The system according to claim 1, wherein the virtual agent is

further configured to incorporate the context while executing the

one or more actions.

6. The system according to claim 1, wherein the correlation

between the actions is at least one of sequential, hierarchical or

lateral.

7. The system according to claim 1, wherein at least two of the

executed plurality of actions have any one of a sequential

correlation, a hierarchical correlation or a lateral correlation."

h) On considering the above aspects, the Assistant Controller of Patents &

Designs, by order dated 8.5.2019, had granted the patent with Patent

No.IN312437, which was published in the journal number 19/2019 dated

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10.5.2019.

i) Aggrieved against the same, the appellant, by contending that the patent

lacks novelty and inventive features, had filed the Post grant Opposition on

28.09.2021 seeking revocation of the patent on the following grounds:-

1) Section 25(2)(b): that the invention so far as claimed in any claim of

the complete specification has been published before the priority date of

the claim;

2. Section 25(2)(d): that the invention so far as claimed in any claim of

the complete specification was publicly known or publicly used in India

before the priority date of that claim;

3. Section 25(2)(e): that the invention so far as claimed in any claim of

the complete specification is obvious and clearly does not involve any

inventive step, having regard to the matter published as mentioned in

clause (b) or having regard to what was used in India before the priority

date of the applicant's claim;

4. Section 25(2)(f): that the subject of any claim of the complete

specification is not an invention within the meaning of this Act, or is not

patentable under this Act;

5. Section 25(2)(g): that the complete specification does not sufficiently

and clearly describe the invention or the method by which it is to be

performed; and

6. Section 25(2)(h): that the patentee has failed to disclose to the

Controller the in information required by section 8 or has furnished the

information which in any material particular was false to his knowledge.

j) The first respondent herein had dismissed the Post grant Opposition

filed by the appellant herein, by the impugned order dated 9.10.2023 and

consequently allowed the Patent to continue.

k) Aggrieved against the same, the present Appeal has been preferred by

the appellant.

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3. The crux of the submissions made by the learned counsel for the

appellant are as under:-

i) The first respondent has disregarded relevant materials, failed to

provide reasoning in his order, applied incorrect test of novelty/inventive step,

non-patentability under Section 3k of The Patents Act, 1970, written description

and enablement, incorrectly interpreted claims and thereby, the impugned order

violates the principles of audi alteram partem.

ii) A comparative study would reveal that the first respondent has

disregarded the material facts in relation to the US Counterpart in US Patent

11068954.

iii) The present patent relates to virtual agent which assists the customers

perform certain actions on a software application. The invention claimed in

claim 1 of the IN’437 patent relates to a system for executing actions based on

inputs received from a user. The patent, when initially filed to the Indian Patent

Office on 18.11.2016, contained 36 claims and after objections raised in the

First Examination Report, the claims were reduced to 7.

iv) Claim No.1 of IN’437 is an independent claim and claims 2 to 7 are

dependent claims. Claim 1 of IN’437 envisages many aspects like

1) A technology for executing actions based on inputs received from a

user;

2) A virtual agent (100) which further comprises:

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a) a virtual agent client (202), and

b) a virtual agent server (104);

3) The virtual agent (100) is a third party application configured to

interface and function with any software application;

4) Storing a correlation between plurality of actions that are:

a) search,

b) select,

c) sort,

d) submit, and

e) compare;

5) Executing one or more aforementioned actions based on desired inputs

from user; and

6) Display an output page to the user, wherein, in the absence of the

virtual agent, the plurality of actions would result in display of more than one

output page displayed one after the other,

v) The claimed feature of “associate one or more of the plurality of

actions with one or more tags” has no relevance to the claimed invention of

IN’437 patent since the association of tags has no impact on the invention. The

claimed feature of “display an output page to the user, wherein, in the

absence of the virtual agent, the plurality of actions would result in display

of more than one output page displayed one after the other” is a form of

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CMA(PT) No. 9 of 2024

negative claiming.

vi) The first respondent has failed to provide any reasoning to the finding

or conclusions in the impugned order and therefore, the impugned order

arbitrarily and manifestly violates the principles of natural justice. While

analysing the lack of novelty and innovative step in respect of invention, the

first respondent had failed to provide any reasoning for the findings and

conclusions made therein.

vii) The first respondent has completely not looked into the objections

raised by them with regard to claim No.1, claims 6 and 7.

viii) Claims 6 and 7 would show that, in correlation between two actions,

atleast one would be sequential, hierarchical or lateral. Therefore, the scope of

claims 6 and 7 does not require presence of two correlations and this would

sufficiently show disclosure of any one of the correlations in the prior art to

render the claims 6 and 7 invalid, however, the first respondent has erred in

giving a finding in favour of the second respondent.

ix) There is no substantiated rationale drawn from the claim or the

complete specification, however, it is noted that “in case of granted claims of

IN-312437, the characterized portion of claim is a flow of sequential technical

steps which indeed contributes to a technical factor and hence, cannot be

considered as mere computer program per se, algorithm and hence, does not fall

within the ambit of Section 3(k) of The Patents Act, 1970”.

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x) The patent IN’437 has no technical contribution, technical advancement or

technical effect over existing knowledge in view of the alleged sequential

technical steps and the impugned order passed by the first respondent is without

application of mind in respect of technical inventions and thus, it is liable to be

set aside.

4. Per contra, learned counsel appearing for the contesting respondent

viz., second respondent, pointing out the counter affidavit filed by them and the

detailed analysis made by the first respondent, submits that the finding rendered

by the first respondent is a well reasoned one and it does not warrant any

interference and thereby seeks for dismissal of the present Appeal. In support of

his contentions, the learned counsel appearing for the second respondent relied

on the decision of the Delhi High Court in Lava International Limited vs.

Telefonaktiebolaget LM Ericsson (2024 SCC OnLine Del. 2497).

5. Heard the learned counsel appearing for the parties and perused the

materials available on record.

6. What is to be determined in the present Appeal is Whether the first

respondent has considered the relevant materials while rendering their findings.

7. Before proceeding with the merits of the case, this court feels that it

would be appropriate to extract the diagram furnished by the second respondent

to show, how their invention works out and the same is extracted hereunder:-

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CMA(PT) No. 9 of 2024

8. To be precise, the invention of the second respondent herein is a system

for executing actions based on an user input. It comprises a virtual agent 208

for an application 102, wherein, the virtual agent 208 is configured to store a

correlation between actions available in the application 208. Further, the system

associates one or more of the actions with one or more tags. The system

receives at least an audio input 702 from a user of the application 102 and uses

the input 702 to identify an action 706 desired by the user to be performed

among the actions. Further, the system executes one or more actions based on

the desired action and the correlation between the actions available in

application 102.

9. It is seen that the entire case of the appellant rests on the ground of

lack of novelty and inventive features in the invention of the second respondent.

While deciding such questions, it would be appropriate to take the guidance of

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the principles laid down in the decision of the Delhi High Court in Lava

International Limited vs. Telefonaktiebolaget LM Ericsson (2024 SCC OnLine

Del. 2497) with regard to the legal principles to be considered as guidance. The

relevant portion of the said decision is extracted hereunder for ready reference:-

“6.2.3. LACK OF NOVELTY - LEGAL PRINCIPLES

81. Before delving into the analysis on the assessment of novelty or the

lack of novelty, it is crucial to define the concept of novelty in relation to

an invention. Guidance on what constitutes novelty can be found in the

judgment of the Bombay High Court in Farbewerke Hoechst & Bruning

Corporation v. Unichem Laboratories & Ors. In the said decision, while

addressing the allegation of a patent's invalidity due to 'want of novelty,'

the Court adopted the test for novelty as formulated in Halsbury's Laws

of England. The relevant observations are set out below:

"To anticipate a patent, a prior publication or activity must

contain the whole of the invention impugned; i.e., all the features by

which the particular claim attacked is limited. In other words, the

anticipation must be such as to describe, or be an infringement of the

claim attacked." (Emphasis supplied)

83. In my opinion, the seminal guidance on determination of

novelty has been provided in the decision of the House of Lords in Hills v.

Evans10, wherein it has been concluded that the test of novelty evaluates

whether an invention is truly new by assessing if it was previously

disclosed in a manner that would allow a person skilled in the art to

reproduce the invention without additional research or experimentation.

The relevant extracts from the said decision are set out below:

"I have therefore to consider, and to give my opinion upon,

the question that has been argued, namely, whether there be or be

not anything in these specifications which has rendered the

Plaintiff's invention matter of public knowledge, and therefore

matter of public property, anterior to the granting of the patent...

With regard to the specification of a prior patent it is not to be

distinguished in principle from any other publication. The only

peculiarity attending the specification of a prior patent is this, that

it must of necessity be considered as a publication. There has been

some doubt with regard to books and documents under particular

circumstances, whether they can be considered as amounting to a

publication. With regard to a specification there can be no doubt,

because the specification is that which the patentee gives to the

public and makes a matter publici juris in return for the privilege

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which he receives. But upon all principle a specification is not to

be distinguished from any prior publication contained in a book

published in the ordinary manner. The question then is, what must

be the nature of the antecedent statement? I apprehend that the

principle is correctly thus expressed-the antecedent statement must

be such that a person of ordinary knowledge of the subject would

at once perceive, understand, and be able practically to apply the

discovery without the necessity of making further experiments and

gaining further information before the invention can be made

useful. If something remains to be ascertained which is necessary

for the useful application of the discovery, that affords sufficient

room for another valid patent. By the words of the statute of

James, it is necessary for the validity of a patent that the invention

should not have been known or used at the time. These words are

held to mean "not publicly known or publicly used." What amounts

to public knowledge or public user is still to be ascertained. One

of the means of imparting knowledge to the public is the

publication of a book, or the recording of a specification of a

patent. If, therefore, in disproving that an allegation which is

involved in every patent, that the invention was not previously

known, appeal be made to an antecedently- published book or

specification, the question is, what is the nature and extent of the

information thus acquired which is necessary to disprove the

novelty of the subsequent patent? There is not, I think, any other

general answer that can be given to this question than this: that

the information as to the alleged invention given by the prior

publication must, for the purposes of practical utility, be equal to

that given by the subsequent patent. The invention must be shown

to have been before made known. Whatever, therefore, is essential

to the invention must be read out of the prior publication. If

specific details are necessary for the practical working and real

utility of the alleged invention, they must be found substantially in

the prior publication.

Apparent generality, or a proposition not true to its full

extent, will not prejudice a subsequent statement which is limited

and accurate, and gives a specific rule of practical application.

The reason is manifest, because much further information,

and therefore much further discovery, are required before the real

truth can be extricated and embodied in a form to serve the use of

mankind. It is the difference between the ore and the refined and

pure metal which is extracted from it.

Again, it is not, in my opinion, true in these cases to say,

that knowledge, and the means of obtaining knowledge, are the

same. There is a great difference between them. To carry me to the

place at which I wish to arrive is very different from merely putting

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me on the road that leads to it. There may be a latent truth in the

words of a former writer, not known even to the writer himself, and

it would be unreasonable to say that there is no merit in

discovering and unfolding it to the world.

Upon principle, therefore, I conclude that the prior

knowledge of an invention to avoid a patent must be knowledge

equal to that required to be given by a specification, namely, such

knowledge as will enable the public to perceive the very discovery,

and to carry the invention into practical use." (Emphasis supplied)

84. In addition, in General Tires & Rubber Co. v. Firestone Tyre &Rubber

Co. Ltd11, it has been held that even if not all details are present in the

earlier document cited as novelty destroying prior art, it is possible that

the prior art document and the patent in question essentially convey the

same message but in different terms. The key question to resolve in such

instances is whether the prior art document provides clear and

unmistakable instructions that, if followed, would inevitably lead to a

result that falls within the scope of the patent's claims or inventive

concept. The relevant General Tires & Rubber Co. v. Firestone Tyre &

Rubber Co. Ltd, RPC 486 89.17.457 extract from the said decision is set

out below:

"As to novelty, one must consider in relation to each of the

documents cited whether all the specific details are disclosed and

if not, whether the reader would assume from his ordinary

knowledge that he should carry out the steps in question and if so

how. One must also instruct oneself with the surrounding

circumstances as they exist; Hills v. Evans (supra). If one cannot

find all the details in the early document, it may still be possible

that the prior document and the patent-in-suit were really saying

the same thing in different words. The question to be answered in

such a case is; does the prior document give clear and

unmistakeable directions which when carried out will inevitably

result in something coming within the claims of the patent?"

(Emphasis supplied)

88. When assessing the novelty of an invention, a Judge or even a patent

examiner ought to follow a systematic approach to ensure a thorough and

unbiased analysis of the invention claimed and the prior art cited.

Another important aspect of the test for assessment of novelty in an

invention is to maintain a distinction between the test of novelty and test

for inventive step or lack of obviousness. I am of the view that the

following steps, which may be referred to as the 'Seven Stambhas12

Approach' serve as guiding Stambhas are referred to as columns or

pillars in Indian Architecture principles and provide a clear framework

for assessing novelty, reflecting the distinction between novelty and non-

obviousness:

(i) Understanding of the Claims of the Invention

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• The determination of lack of novelty should begin with the

understanding of the Claims of the invention as it is the Claims that

define the boundaries of the invention and what the applicant considers

as their novel contribution.

(ii) Identify Relevant Prior Art

• Collecting the prior art, including any public disclosure, publication,

patent, or patent application that predates the filing date of the patent

application which is relevant to the Claims of the patent.

(iii) Analyse the Prior Art

• Conducting a detailed analysis of the identified prior art to ascertain its

relevance to the Claims of the invention. This step involves searching and

documenting both the similarities and the differences, if any, between the

Claims of the invention and the text of the prior art.This step requires

comparing the technical details and features of the prior art against those

claimed in the invention.

(iv) Determine Explicit and Implicit Disclosures

• Examining whether the prior art explicitly or implicitly discloses the

same invention. Explicit disclosure means the prior art directly describes

the invention claimed. Implicit disclosure refers to whether the prior art

describes elements or aspects so similar to the claimed invention that a

direct link can be drawn.

(v) Assessment material differences while considering the entire

scope of the Claims

• Identifying the material differences between the claimed invention and

the prior art, if any, such that a material difference would indicate that

the claimed invention has not been disclosed in the prior art and,

therefore, the invention, is novel.

(vi) Verifying Novelty in light of Comprehensive Scope and Specific

Combination of Claimed Elements

• Evaluation of novelty of the invention is carried out in light of the

comprehensive scope of its claims, not just individual elements.

• The invention is novel only if the combination of claimed elements as a

whole has not been previously disclosed.

(vi) Documentation of the Analysis and Novelty Determination

• Specify the finding of the examination of novelty, while providing a clear

rationale for the said determination. The specific documentation must

include references to specific sections of the prior art examined and a

reasoning as to how the section affects the novelty of the claims and the

inventive concept of the invention.

• Based on the analysis, issue a formal decision, if the invention or any of

its claimed elements is found in the prior art, the invention is not novel.

Conversely, if the invention is not disclosed by the prior art, it is

considered novel.”

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10. In the case on hand, it is seen that before the first respondent, the

appellant herein had raised six grounds for post grant objection and the first

respondent has rendered his finding with regard to each ground. So far as the

first ground in respect of Section 25(2)(b) of the Patents Act, 1970 that the

invention so far as claimed in any claim of the complete specification has been

published before the priority date of the claim is concerned, the appellant herein

had cited three documents namely D1, D2 and D3. The admitted priority date

insofar as the present patent being 20.11.2015, D1 seems to be an invention

named “Routing queries based on carrier phrase registration” published on 7

th

August 2012, held by Goggle LLC. D2 seems to be an invention named

“Intelligent automated assistant” published on 11

th

December 2012, held by

Apple Inc. and D3 seems to be an invention named “Predicting and learning

carrier phrases for speech input” dated 8

th

December 2011, held by Google

LLC.

11. The first respondent has taken into consideration those inventions viz.,

D1 to D3 also for analysis and comparison with the present patent. The

Characterized feature of the present patent, as considered by the first respondent

is as under:-

Characterized feature (F-Feature)

F1: Store, in the virtual agent server (104), correlation between the

plurality of actions available in the application, wherein the actions

comprise search, sort, select, submit and compare;

F2: Associate one or more of the plurality of actions with one or

more tags.

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F3: Execute the one or more actions among the plurality of actions,

based on the desired action and the correlation between the

actions available in the application.

F4: Display an output page to the user, wherein, in the absence of

the virtual agent, the plurality of actions would result in display of

more than one output page displayed one after the other.

12. Having observed so and on considering the reply submitted by the

second respondent herein, the first respondent has found that D1 teaches

methods/systems and program products for receiving a voice query at a mobile

computing device and generating data that represents the content of voice query

and the features F1, F2 and F3 found in the present invention are not present in

the teachings of D1 and hence, the present patent is novel over D1.

13. Coming to D2, the first respondent, having analysed the same with the

present patent, found that D2 teaches an intelligent automated assistant system

and it engages with the user in an integrated conversational manner using

natural language dialogue and invokes external services when appropriate to

obtain information or perform various actions. Further, having compared claim-

wise the present patent with D2, the first respondent found that though D2 also

teach and talk about sequential correlation or similar and identical correlation,

the context of lateral correlation is absent in the teachings of D2 and D2 lacks

the feature of F1, F2 and lateral correlation and thereby the present patent is

novel over the teachings of D2.

14. Similarly, the first respondent, having compared the features of D3

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with the present patent in respect of each claim, found that F1 and F3 of the

present patent are not present in the teachings of D3 and thereby the present

patent was considered as novel over D3 and as a consequence, the first

respondent held that the objection made under Section 25(2)(b) of The Patents

Act, 1970 is moot and hence, found to be null and void.

15. Insofar as the ground of objection under section 25(2)(d) of The

Patents Act, 1970 is concerned, the first respondent, having observed that

though the appellant had sought to take such a ground by comparing the subject

matter with that of SIRI by Apple, the appellant has not made any technical

comparison and thereby held that ground as moot.

16. It is seen that in respect of the third ground viz., Section 25(2)(e) of

The Patents Act, 1970, that the invention so far as claimed in any claim of the

complete specification is obvious and clearly does not involve any inventive

step, having regard to the matter published as mentioned in clause (b) or having

regard to what was used in India before the priority date of the applicant's claim,

the appellant had relied on D1 to D7.

17. Since a view has been taken with regard to D1 to D3 in respect of the

ground under Section 25(2)(b) of The Patents Act, 1970, the first respondent has

proceeded with analysis of D4 to D7 alone. For ready reference, D4 to D7 are

enlisted hereunder:-

D4 - US20140297284A1, titled “Using context information to

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facilitate processing of commands in a virtual assistant”, published on

20th October 2014 filed by Apple Inc.

D5 - US8326634B2, titled “Systems and methods for responding

to natural language speech utterance”, published on 4

th

December

2012, filed by Voicebox technologies Corp.

D6 - US8095419B1, titled “Search score for the determination

of search quality”, filed on 17" October 2005, by Yahoo! Inc.

D7 - US9612892B2, titled “Creating a correlation rule defining

a relationship between event types”, published on 23 January 2014,

filed by Hewlett Packard Enterprise Development LP.

18. Here also, the first respondent had compared the present patent with

D4 to D7 and rendered his finding. So far as D4 is concerned, it was found that

it is a teaching virtual assistant using context information to supplement natural

language or gestural input from a user and the context helps to clarify the user’s

intent and to reduce the number of candidate interpretations of the user’s input

and reduces the need for the user to provide excessive clarification input.

However, on comparing with each claim, the first respondent had observed that

the teaching aspects of the present patent are absent in the disclosure of D4

other than an indirect comparison and explanation.

19. So far as D5 is concerned, again the first respondent, having found

that D5 teaches systems and methods provided for receiving speech and non-

speech communications of natural language questions and / or commands,

transcribing the speech and non-speech communications to textual messages

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and executing the questions and / or commands, and having compared the

patents, claim-wise, observed that the subject matter of granted claim 5 of the

present patent is totally not present in the teachings of D5.

20. In respect of D6 and D7, the first respondent has analysed the

Characterizing Features of such patents viz., F1 to F4 with the present one and

having observed that no such features are available in D6 and D7 while F4

alone is available in D6, found that both D6 and D7 fail to disclose any kind of

particular and significant relevance to the claims granted in respect of the

present patent and ultimately, concluded that D1 to D7 fail in respect of claims

1 to 7 of the present patent. The first respondent has specifically found that the

characterized portions of claim 1 viz., F1 to F4 alongwith the 3 modes of

correlations viz., sequential correlation, hierarchical correlation or a lateral

correlation are not found individually altogether and as a whole in D1 to D3

nor in a combined manner in D1 to D7. Further, the first respondent has

furnished a tabular statement showing the summary of analysis, which is

extracted hereunder for ready reference:-

Inv.Feat/

Doc. cited

F1 F2 F3 F4 Sequential

Correlation

Hierarchical

Correlation

Lateral

Correlation

D1 No No No Yes Yes Yes No

D2 No No Yes Yes Yes Yes No

D3 No Yes No Yes No Yes No

D4 No No No Yes No Yes No

D5 No Yes No Yes No Yes No

D6 No No No Yes No No No

D7 No No No No No No No

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CMA(PT) No. 9 of 2024

21. On the above analysis, the first respondent has arrived at a conclusion

that the ground in respect of Section 25(2)(e) of The Patents Act, 1970 has to be

considered as moot and accordingly, found to be null and void.

22. So far as the ground in respect of Section 25(2)(f) of The Patents Act,

1970 is concerned that the subject of any claim of the complete specification is

not an invention within the meaning of the Act, or is not patentable under the

Act, the first respondent has rightly observed that such a ground fails in view of

the finding arrived in respect of grounds of novelty and inventive step under

Section 25(2)(b) and 25(2)(e) of The Patents Act, 1970 viz., respectively.

23. Further, the first respondent has also dealt with the ground raised by

the appellant that the present invention is non patentable in view of the bar

under Section 3(k) of the Patents Act and found that the characterized portion of

granted independent claim 1 shows sequential steps, which are technical in

nature and are performed by the virtual agent and the dependent claims viz.,

claims 2 to 7 teach the aftermath of the steps which are characterized in claim 1,

all of which are technical in nature and therefore, the granted claims 1 to 7

cannot be considered to be mere and pure computer programme per se or

algorithms because of their technical validity. Further, the first respondent,

having observed so, found that the invention does not fall within the ambit of

Section 3(k) of The Patents Act, 1970 and hence, the ambit of granted claims 1

to 7 does not fall under Section 3(k) of The Patents Act, 1970, thereby rendering

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CMA(PT) No. 9 of 2024

the said ground as moot and null and void.

24. So far as the ground in respect of Section 25(2)(g) of The Patents Act,

1970 is concerned, the first respondent has clearly observed that such a ground

was not raised at the First Examination Report stage nor was it raised in the

hearing level and the claim amendments had been made twice, one vide Form

13 on 13.12.2018 and another vide Form 13 on 18.4.2019, well in line with the

office requirements at that point of time and well supported by description and

illustrations, which proves that the applicant had all intentions of getting a grant

for IN’437 and make it industrially applicable on a commercial scale and hence,

the ground was rendered moot and null and void.

25. Coming to the ground raised under Section 25(2)(h) of The Patents

Act, 1970, viz., non-compliance of section 8 requirements, the first respondent

has specifically found that Form 3 was filed initially on 18.11.2016 with 3 US

filing entries and another Form 3 was filed on 13.12.2018 with an additional US

filing entry with application entry 15/356,512 with a publication date of

25.5.2017 and the said form 3 was filed along with a petition under Rule137

requesting to condone the delay, more particularly, the said objection was no

longer maintained in the hearing letter dated 21.12.2019 and thus, that ground

was also rendered moot and hence found to be null and void.

26. Coming to the question of fairness on the part of the first respondent

in giving opportunity to the other side, it is seen that the first respondent has

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CMA(PT) No. 9 of 2024

given sufficient opportunity to the appellant. It is noted that, to the notice of

opposition filed by the appellant, the second respondent had filed their counter

statement on 24.12.2021 and thereupon, evidence of the appellant was recorded

on 17.3.2022. Thereafter, Post grant opposition hearing notice came to be issued

to the second respondent on 14.08.2023. Further, on receipt of the report of the

Opposition Board, the post grant hearing submissions of the appellant and the

second respondent were also obtained and only after considering the entire

aspects, the impugned order was came to be passed by the first respondent.

27. As discussed supra, the first respondent has analysed the technical

aspects submitted by the second respondent and made a detailed analysis in

respect of all the claims by considering all the submissions made by the

appellant and the evidence submitted on their side while passing the impugned

order rejecting the opposition. Therefore, I am of the considered view that the

impugned order does not suffer from any infirmity and needs no interference.

28. In the result, the Appeal filed by the appellant is hereby dismissed.

No costs.

05.01.2026

ssk.

Index:Yes

Speaking order

Internet:Yes

Neutral Citation:Yes/No

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CMA(PT) No. 9 of 2024

To

1.The Joint Controller of Patents and

Designs

Through the Controller of Patents and

Designs, Patent Office Intellectual

Property Building, G.S.T.Road,

Guindy, Chennai 600 632.

2.Voicemonk Inc.

5064 Amberwood Drive

Fremont Ca 94555

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CMA(PT) No. 9 of 2024

N.SENTHILKUMAR J.

ssk.

PRE DELIVERY

JUDGMENT IN

CMA(PT) No.9 of 2024

Delivered on

05.01.2026

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