2024:MHC:1009(T)CMA(PT) No.71 of 2023

IN THE HIGH COURT OF JUDICATURE AT MADRAS

Judgment reserved on 10.11.2023

Judgment pronounced on 28.02.2024

CORAM

The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY

(T) CMA (PT) No.71 of 2023

(OA/3/2021/PT/CHN)

Microsoft Technology Licensing LLC

[Earlier Microsoft Corporation (Assignor)]

One Microsoft Way

Redmond, Washington 98052

United States of America ...Appellant

v.

Assistant Controller of Patents and Designs,

Government of India, Patent Office,

Intellectual Property Office Building,

Cp-2, Sector V, Salt Lake City,

Kolkata – 700091. ...Respondent

PRAYER: This Civil Miscellaneous Appeal is filed under Section 117-A of

the Patents Act, 1970, to set aside the order dated 29 September 2020 issued

by the Respondent and direct that Patent Application No.1783/CHENP/2012

proceed to grant.

For Appellant : Ms.Vindhya S.Mani,

Mr.Kiran Manokaran,

for M/s.Lakshmikumaran and Sridharan

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For Respondent : Mr.S.Diwakar, SPC &

Mr.Saroj Kumar Singh,

Assistant Controller of Patents & Designs

JUDGMENT

Background

The appellant assails an order dated 29 September 2020 by which

Indian Patent Application No.1783/CHENP/2012, which is the national

phase application derived from PCT Application dated 15 September 2010,

was rejected.

2. The appellant filed the above-mentioned application on 27 February

2012 for an invention titled "Message Communication of Sensor and other

Data" claiming priority from 23 September 2009. Pursuant to a request for

examination, the first examination report (FER) was issued by the

respondent on 27 June 2019. The appellant filed a detailed response thereto

on 27 December 2019. Along with such response, amended claims 1 to 14

were filed. The hearing was conducted on 14 July 2020 and the appellant

filed written submissions thereafter. Eventually, by order dated 29

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September 2020, the application was rejected. The present appeal arises in

the said facts and circumstances.

Counsel and their contentions

3. Oral arguments were advanced by Ms.Vindhya Mani, learned

counsel for the appellant; and by Mr.S. Diwakar, learned SPC, assisted by

Mr.Saroj Kumar Singh, Assistant Controller of Patents,on behalf of the

respondent. Both parties also filed written submissions.

4. Learned counsel for the appellant submitted that the invention is

titled "Message Communication of Sensor and other Data". She pointed out

that computers and other machines are often equipped with sensors, such as

an accelerometer, a light sensor or a global positioning system (GPS)

receiver, that allow the machine to detect various aspects of its environment.

She next submitted that computers typically provide an interface to the

sensors so that software on the machine can read data from the sensors. For

such purpose, she submitted that the computer's operating system may

provide an application programming interface (API) that allows applications

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to read sensor values, but that such sensor interfaces complicate the design

of the software because they typically involve complex control flow loops

that respond to events. On account of such complexity, learned counsel

submitted that many programmes do not make use of sensor data.

5. By referring to paragraph [0004] of the complete specification of

the claimed invention, learned counsel submitted that the appellant's

invention is aimed at providing a solution to the above problem by a simple

light weight messaging system.Towards this end, she submitted that the

invention envisages a sensor service whereby applications that want to

receive sensor values subscribe to sensor notifications through the sensor

service. The sensor service may determine on the basis of triggers - such as

changes in sensor values or passage of time - that messages should be

generated. She further submitted that these light weight messages do not

require the writing and use of code. By contrast, she submitted that the prior

art envisaged that the sensor readings would be incorporated into the

application's run time loop and that the application would be required to

include code to initialise and instantiate the API, and to manage the data

from the API.

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6. Learned counsel next contended that the respondent rejected the

patent application by relying on an order dated 02 November 2012 of the

Intellectual Property Appellate Board (the IPAB) in OA/250/2012 and

recording blanket statements that non-obviousness "demands that the

claimed invention be sufficiently removed from the prior art" and that non-

obviousness enquiry is "a more aggressive sentry". By referring to the

judgment of the Delhi High Court in Agriboard International LLC v. Deputy

Controller of Patents and Designs(Agriboard), 2022: DHC: 1206, learned

counsel submitted that inventive step analysis requires the controller to

examine the following in three steps: the invention disclosed in the prior art;

the invention disclosed in the application under consideration; and the

manner in which the subject invention would be obvious to a person skilled

in the art. By asserting that the respondent did not undertake such analysis,

learned counsel contended that the impugned order violates the principles of

natural justice and is liable to be set aside.

7. By relying on the judgement of the Division Bench of the Delhi

High Court in F Hoffman La Roche Ltd v. Cipla Limited (Hoffman La

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Roche)2015: DHC: 9674, learned counsel submitted that the impugned

order does not contain any findings with regard to identification of the

person skilled in the art. On the contrary, learned counsel contended that the

respondent recorded the vague statement that a person skilled in the art is

assumed to be willing to make trial and error experiments to get it to work.

Therefore, she submitted that the impugned order is liable to be set aside.

She also relied on the judgment of the Delhi High Court in Biomoneta

Research Private Limited v. Controller General of Patents Designs and

another(Biomoneta),2023/DHC/001816, wherein the Delhi High Court held

that lack of inventive step requires a person skilled in the art to be able to

jump from the existing prior art to the subject invention. According to

learned counsel, the impugned order fails to even consider the problem and

the solution provided by the claimed invention in relation thereto.

8. She reiterated that the prior art was complex in as much as sensor

readings were incorporated into the applications' run time loop, thereby

requiring the writing of code for purposes of initialising and instantiating the

API, and to manage the data coming therefrom. This problem was addressed

by the claimed invention by providing sensor readings in the form

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of lightweight messages to multiple applications running on a computer

device. By contrast, learned counsel contended that prior art D4 is aimed at

data management by publishing data from the sensors to the subscribing

application only when an event of interest occurs. She also pointed out that

the nature of the problem addressed by D4 is evident from paragraphs

[0007] to [0010] thereof.

9. Submissions were made on behalf of the respondent in response to

the above. By referring to paragraph [0004] and [0014] of the complete

specification, the respondent submitted that the claimed invention provides

for subscription to sensor data. For instance, it was submitted that there

could be a subscription to accelerometer readings whereby a message would

be generated and sent to the subscribing application if the accelerometer

values change. By pointing out that a sensor service acts as an intermediary

between applications and a sensor interface and that it communicates sensor

data to the application in the form of messages, the respondent pointed out

that the claimed invention and prior art D4 are nearly identical and that the

only difference is in the terminology used. By comparing paragraph [0011]

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of the claimed invention with paragraph [0039] of prior art D4, the

respondent submitted that the claimed invention refers expressly to sensors

such as accelerometers, GPS or some other type of sensor, whereas prior art

D4 refers generically to devices that generate a value indicative of

temperature, light, magnetic field, air flow, acceleration, vibration, sound, or

power. In substance, it was contended that both the claimed invention and

prior art D4 are the same.

10. In order to further substantiate that the only difference is in

terminology, the respondent referred to the meaning of the word 'message'

and pointed out that said word means communication, notification,

announcement, memo and the like. Against this backdrop, with reference to

paragraphs [0057] and [0058] and claims 1, 2 and 5 of prior art D4, the

respondent submitted that the said paragraphs of the complete specification

indicate that data is published when an event of interest occurs. According to

the respondent, the expressions 'message' and 'published data', which are

used in the claimed invention and prior art D4, respectively, are identical in

substance and function, and that the only difference is in terminology. In

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order to counter the contention that prior art D4 relates to managing data

whereas the claimed invention relates to reducing application complexity, it

was contended that the sensor service of the claimed invention sends

messages depending on subscription request and, therefore, the claimed

invention is also directed at managing data at the sensor service level.

11. The respondent also pointed out that both the claimed invention

and prior art D4 disclose an embodiment where the sensors, the sensor API,

the sensor service and the subscribing application are located in the same

device and an embodiment where they are located in different devices. Once

again, it was emphasised that the difference is limited to terminology in as

much as prior art D4 uses the terminology 'source entity' to describe the

device housing the sensors, sensor API and sensor service, and the

terminology 'sink entity' to describe the device housing the subscribing

application. By referring to figure 1 and 4 of the claimed invention, the

respondent pointed out that figure 1 shows that the sensor, sensor API,

sensor service and the subscribing application are in the same device,

whereas figure 4 shows that the sensor, sensor interface and sensor service

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are present in computer 400, whereas the subscribing application is in a

different entity/device. For all these reasons, the respondent submitted that

the claimed invention lacks inventive step and that no interference is

warranted with the impugned order.

Discussion, analysis and conclusions

12. The operative paragraph of the impugned order is as under:

"In view of the cited documents' relevant

teachings and Applicant's reasoned arguments

regarding the said teachings, reference is now

made to Hon'ble IPAB order No.250/2012 dated

02/11/2012, where it is enunciated that "once the

very subject-matter of the invention has been

disclosed by the prior art.....the person skilled in

the art is assumed to be willing to make trial and

error experiments to get it to work." It further

opined that said person is not a person of

exceptional skill and; knowledge.....He must,

however, be prepared to display a reasonable

degree of skill and knowledge of the art in making

trials...." Regarding obviousness, the observations

are noteworthy, "When there is a design need or

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market pressure to solve a problem and (there) are

a finite number of identified, predictable solutions,

a person of ordinary skill in the art has good

reason to pursue the known options within his or

her technical grasp. If this leads to the anticipated

success, it is likely the product not of innovation

but of ordinary skill and common sense...." The

aforementioned IPAB order concludes that non-

obviousness " demands that the claimed invention

be sufficiently removed from the prior art", and

that non-obviousness enquiry is a "more

aggressive sentry".

Hence alleged invention claims lack inventive with

respect to cited documents."

The conclusion that follows from the above paragraph is that the application

for the grant of patent was rejected under Section 2(1)(ja) of the Patents Act,

1970 (the Patents Act) largely on the basis that the claimed invention would

be obvious to the person skilled in the art based on the teachings of D4.

13. The conclusions in the impugned order should, therefore, be tested

and the first port of call is Section 2(1)(ja), which defines inventive step

and is set out below:

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“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”

From the plain language of the section, it follows that the assessment of

inventive step of a claimed invention is to be made by a two-step process:

(i) identification of feature(s), if any, that involve technical

advancement over prior knowledge or having economic

significance or both; and

(ii) determination of whether the technical advance or

economic significance or both of said feature(s) makes the

invention not obvious to a person skilled in the art.

14. The text of Section 2(1)(ja) of the Patents Act underscores the

centrality of the person skilled in the art (PSITA). The obvious starting point

in identifying PSITA is the field of invention, which is enabling applications

in computers to receive sensor data by way of lightweight messages. The

PSITA would, therefore, be a software engineer with an understanding of

hardware/computer electronics. As regards level of skill, I concluded in

Rhodia Operations v. Assistant Controller of Patents & Designs,

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2024:MHC:6024;MANU/TN/0256/2024, that the level of skill of the PSITA

is above average/good and that she possesses the skill set to do the job well.

I also concluded that she is not omniscient and that ingenuity or

inventiveness cannot be attributed to her since the object of the exercise is to

determine whether the claimed invention contains an inventive step.

15. Against this backdrop, I begin the obviousness analysis with the

summary of the claimed invention. Such summary is contained in paragraph

[0004], which is set out below:

"Sensor data, and other kinds of data, may be

provided to an application (or other type of

program) through a simple lightweight messaging

mechanism. In one example, a sensor service uses

a sensor interface (such as a sensor API) to read

sensor values. Programs that want to receive

sensor values may subscribe to sensor

notifications through the sensor service. The

sensor service may determine, based on various

triggers (example, changes in sensor values,

passage of time, et cetera), to generate messages

that communicate sensor values to the subscribing

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program(s). For example, an application might

subscribe to receive accelerometer readings. The

sensor service could use a sensor API to poll the

accelerometer periodically for its current

readings, and could generate a message whenever

the accelerometer values change. This message

could then be sent to the subscribing application.

Since applications are typically built to handle

messages and other types of interrupts received

from external sources, the application can process

the messages using these kinds of message-

handling mechanism. Designing the application to

receive and process the messages may be less

complex than designing the application to read

sensor values directly through the sensor

interface."

From the above extract, it is evident that the problem that the claimed

invention addresses itself to is the reduction of complexity by converting

raw sensor data into lightweight messages which are transmitted or

communicated to the subscribing application.

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16. I turn next to the current claims of the appellant and set out

independent claims 1 and 9:

"I/we claim:

1.A method of providing information to an

application (116), the method comprising:

receiving from said application (116) a

subscription request;

using a sensor interface (110) to obtain a

reading from a sensor, said sensor interface

that provides a mechanism through which

sensor values are readable by application

that use said sensor interface;

creating a message (114) based on a set of

one or more readings, wherein said set

comprises said reading; and

providing said message (114) to said

application (116).

9. A machine (108) for using sensor data, the

machine comprising:

a processor (402);

a date remembrance component (404);

a sensor; and

a service component (112) that is stored in

said data remembrance component and that

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is executable on said processor (402, said

service component using a sensor interface

(110) to obtain a reading from said sensor,

said sensor interface being provided by an

operating system that is present at said

machine (108), said service component

generating a message (114) based on

information that comprises a set of sensor

readings, said set of sensor readings (202-

206) comprising said reading, said service

component receiving a subscription request

from an application that executes on said

machine, said service component providing

said message to said application based on

said service component having received set

subscription request from said application."

17. Since the impugned order relied only on prior art D4, a

comparison should be drawn with said prior art. The abstract of said prior

art is as under:

"A wireless sensor network comprises a plurality

of nodes that communicate over wireless

communication links. At least one of the plurality

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of nodes receive sensor data from a sensor. A

subscription for an event of interest occurring in

the wireless sensor network is installed in the

wireless sensor network. A publisher node

included in the plurality of nodes determines when

the event of interest occurs and, when the event of

interest occurs, publishes data related to the event

of interest for a subscriber node included in the

plurality of nodes."

The independent claims of significance in said prior art are set out below:

"1. A wireless sensor network comprising:

A plurality of nodes that communicate over

wireless communication links, wherein at least one

of the plurality of nodes receive sensor data from

the sensor;

wherein a subscription for an event of interest

occurring in the wireless sensor network is

installed in the wireless sensor networks;

wherein a publisher note included in the plurality

of nodes determines when the event of interest

occurs and, when the event of interest occurs,

publishes data related to the event of interest for a

subscriber note included in the plurality of nodes.

8. A wireless sensor node, comprising:

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a wireless transceiver to communicate over

wireless communication link;

a sensor interface to receive sensor data

from a sensor;

wherein when the wireless sensor node

receives, from the wireless communication

link, request comprising an event filter

associated with an event of interest, the

wireless sensor node filters the sensor data

in order to determine when the event of

interest occurs; and

wherein when the event of interest occurs,

the wireless sensor node transmits event

data related to the event of interest to a

requesting node over the wireless

communication link."

18. The above extracts disclose that both the claimed invention and

the cited prior art deal with transmission of sensor data to a subscribing

application. In the cited prior art, the transmission is triggered by an event

of interest. Both the summary of the claimed invention and independent

claim 9 indicate that a sensor service is used in the claimed invention,

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whereas such sensor service is not a part of cited prior art. The other aspect

to notice is that the claimed invention enables the subscribing application to

receive and process messages rather than to read raw sensor values. The

cited prior art also provides for the subscription of sensor data and the

publication thereof upon occurrence of an event of interest, but even

disregarding the difference in terminology there is no indication therein that

the 'published data' is in an easy-to-read form. The inference that flows from

the above discussion is that the solution provided by the claimed invention

is the conversion of raw sensor data into messages that are transmitted to the

subscribing application and may be easily read by such application. By

contrast, the cited prior art does not envisage the conversion of raw sensor

data into easy-to-read messages. Undoubtedly, the respondent is correct in

stating that both the cited prior art and the claimed invention provide for the

transmission of sensor data to a subscribing application, but the difference

lies in the manner in which such data is transmitted. This leads to the

question whether the difference or delta between the cited prior art and the

claimed invention would be obvious to a person skilled in the art, and I turn

to this issue next.

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19. In order to ascertain whether prior art D4 contains teaching,

suggestion or motivation to lead the PSITA to the claimed invention, it is

important to closely examine the problem that D4 sets out to solve. It is

instructive, in this regard, to refer to the following paragraphs of the

complete specification of D4:

"[0045]In such an embodiment, the wireless

sensor network 100 is logically viewed as a set of

discrete events and a set of logical entities that

"generate" the discrete events. The wireless sensor

network 100 is queried, in such an embodiment, by

specifying a set of events of interest. With such an

event-based data management model, a discrete

event operator algebra can be used as a formalism

to specify the behaviour of such a logical system

and to verify the correctness and completeness of

the specification."

[0050] ....The source entity receives the

subscription and creates an event filter for that

event. The source entity "publishes" the event of

interest when that event occurs. That is, when the

event of interest specified in the subscription

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occurs, the source entity sends data related to that

event to the specified sink entity. In this way, the

nodes in the wireless sensor network 100 only

monitor (and process and communicate data

about) those events that are of interest to some

entity in the network 100 (that is, those events to

which a sink entity has subscribed."

The inference that flows from the abstract, claims and the above paragraphs

is that the problem that prior art D4 addresses itself to is data management

by filtering sensor data and publishing data for consumption by the

subscribing application only when pre-set events of interest occur. It is

further evident that there is nothing in prior art D4 that addresses the

problem of complexity in the communication of data from sensors

to subscribing applications. Even paragraph [0054] of the complete

specification only deals with conversion of queries from the subscriber and

not conversion of sensor data. Thus, not only is the problem addressed by

the prior art and the claimed invention different but even otherwise the

recitals and disclosures in D4 do not suggest or motivate, much less teach,

the PSITA to arrive at the claimed invention. Consequently, in my view, the

claimed invention would not be obvious to the PSITA from D4 because

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arriving at the claimed invention from D4 requires ingenuity and not mere

skill in the art.

20. Having said that, the question arises as to whether the claims, as

framed, confine the monopoly claim to the transmission of data in a

particular form. On examining the claims, I find that the width is required to

be whittled down to confine the scope of the monopoly claim. Towards this

end, it is necessary that the appellant modifies independent claim 1 and 9 as

under:

"I/we claim:

2.A method of providing information to an

application (116), the method comprising:

receiving from said application (116) a

subscription request;

using a sensor interface (110) to obtain a

reading from a sensor, said sensor interface

that provides a mechanism through which

sensor values are readable by application

that use said sensor interface;

creating a light-weight easy-to-read

message (114) based on a set of one or

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more readings, wherein said set comprises

said reading; and

providing said message (114) to said

application (116).

9. A machine (108) for using sensor data, the

machine comprising:

a processor (402);

a date remembrance component (404);

a sensor; and

a service component (112) that is stored in

said data remembrance component and that

is executable on said processor (402, said

service component using a sensor interface

(110) to obtain a reading from said sensor,

said sensor interface being provided by an

operating system that is present at said

machine (108), said service component

generating a light-weight easy-to-read

message (114) based on information that

comprises a set of sensor readings, said set

of sensor readings (202-206) comprising

said reading, said service component

receiving a subscription request from an

application that executes on said machine,

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said service component providing said

message to said application based on said

service component having received set

subscription request from said application."

If modified in the manner indicated above, in my view, the claimed

invention would not be obvious from cited prior art. I reiterate that I reach

this conclusion because the cited prior art is focused on the publication of

sensor values upon occurrence of an event of interest so as to enable the

subscribing application to receive sensor data only when there is a change in

sensor values. By contrast, the problem resolved by the claimed invention is

the transmission of sensor data in a form which is easy to process by the

subscribing application.

21. For reasons set out above, (T)CMA(PT) No.71 of 2023 is allowed

and the the impugned order is set aside. Hence, the application shall proceed

to grant subject to amendment of the independent claims as indicated above.

There shall be no order as to costs.

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28.02.2024

Index : Yes/No

Internet : Yes/No

Neutral Citation : Yes/No

kal

To

The Assistant Controller of Patents and Designs,

Government of India, Patent Office,

Intellectual Property Building,

G.S.T. Road, Guindy,

Chennai – 600032.

SENTHILKUMAR RAMAMOORTHY J.

kal

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(T)CMA(PT) No.71 of 2023

Pre-delivery judgment made in

(T) CMA (PT) No.71 of 2023

(OA/3/2021/PT/CHN)

28.02.2024

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