2024:MHC:449(T)CMA(PT) No.88 of 2023

IN THE HIGH COURT OF JUDICATURE AT MADRAS

Judgment reserved on 31.10.2023

Judgment pronounced on 31.01.2024

CORAM

The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY

(T) CMA (PT) No.88 of 2023

(OA/14/2017/PT/CHN)

Rhodia Operations

40, rue de la Haie Coq

F-93306 Aubervilliers

France. ...Appellant

v.

Assistant Controller of Patents and Designs,

Government of India, Patent Office,

Intellectual Property Building,

G.S.T. Road, Guindy,

Chennai – 600032. ...Respondent

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

the Patents Act, 1970, to set aside the order dated 11 November 2016

issued by the Respondent and direct that the Patent Application

No.6334/CHENP/2009 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.Janarthanam, SPC &

Mr.Anoop K.Joy,

Assistant Controller of Patents

JUDGMENT

Background

The appellant assails an order dated 11.11.2016 by which Indian

Patent Application No.6334/CHENP/2009, which is the national phase

application derived from PCT Application No.PCT/EP08/55018, was

rejected.

2. The appellant filed the above mentioned application dated

26.10.2009 for grant of patent in respect of an invention titled “Polyamide

Material Having High Fluid Barrier Properties” by claiming its priority date

from French Application No.0703069 dated 27.04.2007. The claimed

invention relates to polyamide materials having high barrier properties to

fluids, i.e. gases and liquids. Fifteen original claims were set out in the

complete specification. Upon examining the complete specification, the

First Examination Report (FER) was issued on 22.07.2014. In the FER, the

respondent inter alia raised the following objections: that the invention is

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not novel and lacks inventive step by citing prior art documents D1 and D2;

and that the invention falls within the scope of Section 3(e) of the Patents

Act, 1970 (the Patents Act).

3. The appellant responded thereto on 20.07.2015 and submitted

amended claims 1 to 6. It contended that the claimed invention is

distinguishable from D1 and D2 by stating that both D1 and D2 disclose

polyolefin compositions which comprise polyamide as a minor component.

In the hearing notice dated 05.07.2016, the respondent raised objections on

the ground of lack of novelty and inventive step by citing prior art

documents D4 to D6. Pursuant to a hearing, along with the written

submissions, the appellant further amended claims 1 to 6 and asserted that

the claimed invention is distinguishable and not obvious from prior arts D4

to D6. The amended claims, as of 18.10.2016, are set out below:

“WE CLAIM:

1. A polyamide composition having high fluid barrier

properties comprising a mixture of:

a) a polyamide matrix present in an amount from

60% to 80% by weight, relative to the total weight of the

composition;

b) from 5 to 20% by weight of a novolac resin;

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c) from 5 to 30% by weight, relative to the total

weight of the composition, of a polyolefin devoid of

functional groups useful for improving its compatibility

with the polyamide, said polyolefin c) being a

polyethylene having a density ranging from 0.94 to 0.97

g/cm³, wherein said polyolefin c) does not comprise a

maleic anhydride group, a salified or unsalified

carboxylic acid group, an ester group, an acrylic group, a

methacrylic group, or an epoxy group; and

d) an agent for effecting compatibilization between

the polyolefin and the polyamide, said compatibilizing

agent d) being a compound comprising the polyolefin of

c) modified by functional groups selected from the group

consisting of a maleic anhydride group, a carboxylic acid

group, an ester group, an acrylic group, a methacrylic

group, and an epoxy group, said agent being present in

an amount of at least 30% relative to the weight of

polyolefin c),

wherein the polyamide composition when formed into a

pipe having a thickness of 1 mm has a permeability to

gasoline of no more than 0.8 g/(m²day) at 40° C, the

gasoline comprising 45 volume percent toluene, 45

volume percent isooctane and 10 volume percent ethanol.

2. A method for increasing the impermeability to fluids of

a polyamide matrix; said method comprising addition to

said polyamide matrix present in an amount from 60% to

80% by weight, relative to the total weight of the

composition the following ingredients:

b) from 5 to 20% by weight of a novolac resin;

c) from 5 to 30% by weight, relative to the total

weight of the composition, of a polyolefin devoid of

functionalgroups useful for improving its compatibility

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with the polyamide, said polyolefin c) being a

polyethylene having a density ranging from 0.94 to 0.97

g/cm³, wherein said polyolefin c) does not comprise a

maleic anhydride group, a salified or unsalified

carboxylic acid group, an ester group, an acrylic group, a

methacrylic group, or an epoxy group; and

d) an agent for effecting compatibilization between

the polyolefin and the polyamide, said compatibilizing

agent d) being a compound comprising the polyolefin of

c) modified by functional groups selected from the group

consisting of a maleic anhydride group, a carboxylic acid

group, an ester group, an acrylic group, a methacrylic

group, and an epoxy group, said agent being present in

an amount of at least 30% relative to the weight of

polyolefin c).

wherein said increased impermeability is achieved when

the polyamide composition formed into a pipe having a

thickness of 1 mm has a permeability to gasoline of no

more than 0.8 g/(m²day) at 40° C, the gasoline comprising

45 volume percent toluene, 45 volume percent isooctane

and 10 volume percent ethanol.

3. An article obtained by forming a composition as

claimed in claim 1, by at least one extrusion, molding or

injection-molding conversion technique.

4. A composite article comprising at least one material

made from the composition as claimed in claim 1.

5. The composite article as claimed in claim 4, wherein

said article is a multilayer article in which at least one

layer is composed of the composition as claimed in claim

1.

6. The multilayer composite article as claimed in claim 5,

wherein at least one layer is composed of the composition

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as claimed in claim 1, and that at least one layer is

obtained from a composition comprising a polyolefin.”

4. Eventually, by impugned order dated 11.11.2016, the application

was refused on the ground that the claimed invention lacks inventive step

and is obvious to a person skilled in the art in view of prior art documents

D5 [US2002/0051856 A1, published on 02.05.2002] & D6

[US2005/0069662 A1, published on 31.05.2005]. The appeal was filed in

the above facts and circumstances.

Contentions of the parties

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

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

Anoop K.Joy, Assistant Controller of Patents,on behalf of the respondent.

6. Learned counsel for the appellant submitted that the claimed

invention relates to a composition having high barrier properties to fluids,

namely, gases and liquids. She submitted that the polyamide composition

comprises a polyamide matrix as the most substantial ingredient, a novolac

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resin, a polyolefin, and an agent for compatibilization between the

polyolefin and the polyamide. As on the priority date, she pointed out that

multi-layered articles using layers of different materials, such as

polyethylene and ethylene vinyl alcohol (EVOH), were part of the state of

the art, and that multi-layered articles with layers of different materials not

only caused delamination problems but were expensive to produce. Learned

counsel contended that the claimed invention provides a solution to these

problems and that such composition could be used for the manufacture of

articles, such as pipes, ducts, or tanks, intended to contain or transport a

fluid.

7. She referred to prior art document D5 and contended that it relates

to a multi-layered fuel tank comprising the following: a first layer of high

density polyethylene (HDPE), a layer of binder, a second layer of EVOH,

and optionally a third layer of polyamide or a mixture of polyamide and

polyolefin. She contended that D5 teaches away because it relates to multi-

layered articles and the non-optional and main barrier layer therein is made

of EVOH. By referring to paragraphs [0030] and [0078] of the complete

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specification of D5, learned counsel contended that the polyamide

composition in D5 is optional.

8. She then referred to prior art document D6, which relates to

moulded articles made from polyamide resin compositions suitable for the

transport or storage of fuels used in internal combustion engines, and having

improved fluid permeation barrier properties. She submitted that D6

discloses that the addition of novolac resin to polyamide/nylon enhances

fluid impermeability, but that functional and non-functional polyolefins are

not present in D6. She further contended that D6 was classified as 'A' in the

International Search Report, i.e. as a document which is not of particular

relevance, since a co-polymer is used therein. Therefore, she concluded that

there is no basis to combine D5 and D6 in arriving at the claimed invention

and that the Controller erred in doing so by resorting to hindsight analysis.

9. Learned counsel then invited my attention to page no.123 of the

appeal paper book and submitted that a set of further amended claims 1-6

were filed as auxiliary request claims, wherein independent claim 1 was

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restricted to a pipe comprising the polyamide composition. Such amended

claim 1 is extracted below:

“1. A pipe having high fluid barrier properties

comprising polyamide composition, wherein the

composition comprises:

a) a polyamide matrix present in an amount from

60% to 80% by weight, relative to the total weight of the

composition;

b) from 5 to 20% by weight of a novolac resin;

c) from 5 to 30% by weight, relative to the total

weight of the composition, of a polyolefin devoid of

functional groups useful for improving its compatibility

with the polyamide, said polyolefin c) being a

polyethylene having a density ranging from 0.94 to 0.97

g/cm³, wherein said polyolefin c) does not comprise a

maleic anhydride group, a salified or unsalified

carboxylic acid group, an ester group, an acrylic group,

a methacrylic group, or an epoxy group; and

d) an agent for effecting compatibilization between

the polyolefin and the polyamide, said compatibilizing

agent d) being a compound comprising the polyolefin of

c) modified by functional groups selected from the group

consisting of a maleic anhydride group, a carboxylic acid

group, an ester group, an acrylic group, a methacrylic

group, and an epoxy group, said agent being present in

an amount of at least 30% relative to the weight of

polyolefin c),

wherein when the pipe has thickness of 1 mm, it has a

permeability to gasoline of no more than 0.8 g/(m²day) at

40° C, the gasoline comprising 45 volume percent

toluene, 45 volume percent isooctane and 10 volume

percent ethanol.”

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10. In support of these submissions, learned counsel for the appellant

referred to and relied upon the following judgments:

(i) F.Hoffmann-La Roche & Ors. v. Cipla Limited

(Hoffmann-La Roche), 2015 SCC OnLine Del 13619,

particularly paragraph 151 thereof, wherein the Supreme

Court formulated the steps to determine obviousness/lack

of inventive step.

(ii) Biomoneta Research (P) Ltd. v. Controller General of

Patents and Designs (Biomoneta Research), 2023 SCC

OnLine Del 1482, particularly paragraphs 35, 64 and 65

thereof, wherein the Court relied on the combination v.

juxtaposition or aggregation principle laid down by the

EPO and held that in order to understand if the claimed

invention involves an inventive step, it is necessary to

understand the prior art documents.

(iii) Agriboard International v. Controller of Patents and

Designs (Agriboard International), 2022 SCC OnLine Del

4786, particularly paragraphs 25 and 27 thereof, wherein

the Court outlined three elements to be considered by the

Controller while undertaking obviousness analysis.

(iv) Rosemount INC v. Controller of Patents, 2023 SCC

OnLine Del 2487.

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(v) Gogoro Inc. v. Controller of Patents and Designs &

Another, 2022 SCC OnLine Del 2577.

(vi) Bristol-Myers Squibb Holdings Ireland Unlimited

Company & Ors. v. BDR Pharmaceuticals International

Pvt. Ltd. & Anr. (Bristol-Myers), 2020 SCC OnLine Del

1700, particularly paragraphs 32 to 36 thereof, wherein the

Court emphasised the need to be cautious about teachings

away from the claimed invention and mosaicing of prior

art documents.

(vii) Avery Dennison Corporation v. Controller of Patents

and Designs (Avery Dennison), 2022 SCC OnLine Del

3659, to contend that simplicity does not defeat an

invention.

(viii) Dystar Textilfarben GmbH & Co. Dutschland KG v.

C.H.Patrick Co. (Dystar Textilfarben), 464 F.3d 1356

(Fed.Cinr.2006), to contend that prior art D5 teaches away

from the invention and there is no motivation for the

person skilled in the art to combine prior arts D5 and D6.

(ix) Actavis Group PTC EHF and others v. ICOS

Corporation & Another (Actavis), [2019] UKSC 15, to

discuss various approaches and considerations to assess

obviousness.

(x) Environmental Designs, Ltd. and the Trentham

Corporation v. Union Oil Company of California and

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Ralph M.Parsons Co. (Environmental Designs), 713 F.2d

693, wherein the Court, particularly at paragraph 33

thereof, formulated factors which may be considered in

determining the level of ordinary skill in the art.

(xi) Sankalp Rehabilitation Trust v. F.Hoffmann-LA Roche

AG and Another (Sankalp Rehabilitation), 2012 SCC

OnLine IPAB 167, particularly paragraph 42 thereof,

wherein the Court examined the meaning of the expression

“person skilled in the art” in the Indian context.

(xii) Rockwool International A/S v. Knauf Insulation

Limited, [2020] EWHC 1068 (Pat), particularly paragraphs

15 to 17 thereof, wherein the UK High Court discussed the

person skilled in the art.

11. In response to the contentions of learned counsel for the appellant,

it was submitted on behalf of the respondent that the amended claims,

including those set out in the auxiliary request, lack inventive step over the

teachings of D5 and D6. It was further submitted that a person skilled in the

art would be motivated by the teachings of D6 to add novolac to the

polyamide composition of D5 so as to improve barrier properties and thus

arrive at the present invention.

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12. The respondent countered the argument of the appellant that D5 is

an irrelevant prior art because it is a multi-layered article. By referring to

internal pages 4 and 12 of the complete specification of the claimed

invention and claims 5 and 6 thereof, it was contended that the appellant's

invention also envisages a multi-layered article. It was next contended that

D5 teaches a barrier layer (a third layer) comprising polyamide or a

combination of polyamide and polyolefin, and that although D5 refers to

this layer as being optional, the said layer was also referred to as a preferred

layer and discussed at length. Hence, it was contended that D5 does not

teach away from using polyamide as a barrier layer.

13. As regards prior art document D6, the complete specification of

D6, particularly Table 1 & 2 thereof, was referred to in order to demonstrate

that the addition of novolac enhances barrier properties against fluid

permeation. With reference to Table 1 of the complete specification of D6,

it was pointed out that the four examples cited therein demonstrate clearly

and unequivocally to a person skilled in the art that the addition of novolac

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resin to polyamide enhances the barrier properties significantly.

14. In conclusion, the respondent submitted that the appellant

abandoned the patent application in respect of the claimed invention in the

US Patent Office, when the office raised objections on inventive step in

view of prior arts D5 and D6.

15. By way of rejoinder, Ms.Vindhya Mani clarified that the claimed

invention relates to a pipe made of a polyamide composition and not a

multilayered article. She reiterated that the respondent resorted to hindsight

analysis in combining D5 and D6 to arrive at the claimed invention.

Discussion, analysis and conclusions

16. As is evident from the preceding paragraphs, the application for

the grant of patent was rejected under Section 2(1)(ja) of 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 D5 in view of D6. Section

2(1)(ja), which defines inventive step, 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.

17. The appellant asserts that the claimed invention is a composition

comprising polyamide, polyolefin and novolac resin, along with an agent for

compatabilisation between the polyolefin and polyamide, as per

specifications and proportions set out in the claims, and that such

composition exhibits high levels of impermeability to liquids and gases,

including fossil fuels, resolves the problem of delamination, and is less

expensive to produce. As a result, it is further asserted that there is both

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technical advancement and economic advantage, which would not have

been obvious on the priority date to a person skilled in the art. The response

of the respondent and the conclusion in the impugned order was that such

technical advancement would be obvious to a person skilled in the art on the

basis of the closest prior art D5 in combination with D6. The adjudication

of this dispute would hinge, therefore, on identifying the person skilled in

the art, deciding on the level of skill to be imputed to such person, and,

thereafter, answering the question as to whether it would be obvious to such

person to combine D5 and D6 without the benefit of hindsight. The manner

in which obviousness analysis should be carried out was the subject of

many judgments that were cited at the bar, and it is instructive to refer to

some of them.

18. In Avery Dennison, the Delhi High Court surveyed the different

approaches to obviousness analysis, such as the obvious to try approach;

problem/solution approach; the could-would approach; and the teaching,

suggestion and motivation (TSM) approach. Thereafter, the Court set out

the tests formulated by the House of Lords in Windsurfing International

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Inc. v. Tabur Marine Ltd, [1985] RPC 59, as modified by the Court of

Appeals in Pozzoli Spa v. BDMO SA, [2006] EWHC 1398 (Ch.), which are

referred to as the Windsurfer Pozzoli tests and are as under:

“1.(a)Identify the notional “person skilled in the art”

(b)Identify the relevant common general knowledge of

that person;

2. Identify the inventive concept of the claim in question

or if that cannot be readily done, construe it;

3. Identify what, if any, differences exist between the

matter cited as forming part of the “state of the art” and

the inventive concept of the claim or the claim as

construed;

4. Viewed without any knowledge of the alleged

invention as claimed, do those differences constitute

steps which would have been obvious to the person

skilled in the art or do they require any degree of

invention.”

19. In Agriboard International, the Delhi High Court held that the

Controller, while carrying out inventive step analysis, should consider the

invention disclosed in the prior art, the invention disclosed in the

application under consideration, and then examine whether and, if so, in

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

the art. The Division Bench of the Delhi High Court, in paragraph 151 of

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Hoffmann-La Roche, formulated five steps to determine obviousness/lack

of inventive step, and the said paragraph is set out below:

“151. From the decisions noted above to determine

obviousness/lack of inventive steps the following

inquiries are required to be conducted:

Step No.1 To identify an ordinary person skilled in the

art

Step No.2 To identify the inventive concept embodied in

the patent,

Step No.3 To impute to a normal skilled but

unimaginative ordinary person skilled in the art what

was common general knowledge in the art at the priority

date,

Step No.4 To identify the differences, if any, between the

matter cited and the alleged invention and ascertain

whether the differences are ordinary application of law

or involve various different steps requiring multiple,

theoretical and practical applications,

Step No.5 To decide whether these differences, viewed in

the knowledge of alleged invention, constituted steps

which would have been obvious to the ordinary person

skilled in the art and rule out a hideside approach.”

20. In Actavis, the UK Supreme Court identified nine relevant

considerations to be taken into account while assessing obviousness and

these, in relevant part, are captured in paragraph 19 of Avery Dennison by

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the Delhi High Court. The said paragraph is extracted below:

" The relevant considerations are:

(1) First, it is relevant to consider whether something

was “obvious to try” at the priority date, in other words,

whether it is obvious to undertake a specific piece of

research which had a reasonable or fair prospect of

success….

(2) Secondly, it follows the routine nature of the

research and whether there is an established practice of

following the research through to a particular point may

be a relevant consideration which is weighed against the

consideration that the claimed process or product was

not obvious to try at the outset of a research

programme….

(3) Thirdly, the burden and cost of the research

programme is relevant. But the weight to be attached to

this factor will vary depending on the particular

circumstances….

(4) Fourthly, the necessity for and the nature of the

value judgments which the skilled team would have in

the course of a testing programme are relevant

considerations …

(5) Fifthly, the existence of alternative or multiple paths

of research will often be an indicator that the invention

contained in the claim or claims was not obvious . If the

notional skilled person is faced with only one avenue of

research, a “one way street”, it is more likely that the

result of his or her research is obvious than if he or she

were faced with a multiplicity of different avenues. But it

is necessary to bear in mind the possibility that more

than one avenue of research may be obvious ….

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(6) Sixthly, the motive of the skilled person is a relevant

consideration. The notional skilled person is not

assumed to undertake technical trials for the sake of

doing so but rather because he or she has some end in

mind. It is not sufficient that a skilled person could

undertake a particular trial; one may wish to ask

whether in the circumstances he or she would be

motivated to do so. The absence of a motive to take the

allegedly inventive step makes an argument of

obviousness more difficult….

(7) Seventhly, the fact that the results of research which

the inventor actually carried out are unexpected or

surprising is a relevant consideration as it may point to

an inventive step…

(8) Eighthly, the courts have repeatedly emphasised that

one must not use hindsight, which includes knowledge

of the invention, in addressing the statutory question of

obviousness. That is expressly stated in the fourth of the

Windsurfing/Pozzoli questions….

(9) Ninthly, it is necessary to consider whether a feature

of a claimed invention is an added benefit in a context

in which the claimed innovation is obvious for another

purpose….”

21. The precedents on record suggest that the inventive step inquiry

should be carried out in the following manner: (1) identify the person

skilled in the art; (2) identify the common general knowledge to be imputed

to the person skilled in the art; (3) identify the inventive concept embodied

in the claimed invention; (4) identify the differences between the prior arts

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and the claimed invention; and (5) decide whether those differences would

be obvious to a person skilled in the art. I intend to start my analysis with

identifying the inventive concept embodied in the invention because the

technical advance or economic significance requirement is an essential pre-

requisite in obviousness analysis under Section 2(1)(ja).

What is the inventive concept embodied in the claimed invention?

22. The claimed invention is described at internal page 3 of the

complete specification as under:

"INVENTION

The Applicant has quite suprisingly demonstrated that the

use, in a polyamide matrix, of a novolac resin and of a

polyolefin made it possible to obtain a material suitable

for the manufacture of single-layer or multilayer articles

having an excellent level of impermeability to gases and to

liquids, in a simple manner and without negatively

altering the other properties of said materials. The

solution of the invention makes it possible not only to

avoid the drawbacks known from the prior art, but also to

obtain hitherto unheard of fluid barrier properties, that

are in any case much higher than the systems used

commercially."

From the above description, it is evident that the claimed invention

identifies the problem to be solved as the need to develop single or multi-

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layer articles with high fluid barrier properties or excellent levels of

impermeability. As a solution to such problem, the claimed invention recites

that a composition comprising a novolac resin and a polyolefin in a

polyamide matrix, when used for the manufacture of single-layer or multi-

layer articles, has an excellent level of impermeability to gases and liquids.

As per embodiments of the claimed invention, the composition may be used

for the manufacture of articles, such as pipes, ducts, or tanks, intended to

contain or transport a fluid. The industrial application of the invention is

elucidated in the experimental section in internal pages 13 to 15 of the

complete specification. Table 1 thereof recites that a polyamide pipe

comprising novolac resin has excellent impermeability to gasoline.

23. Out of the two prior arts on which reliance was placed by the

Controller in the impugned order, prior art D5 does not disclose or teach the

use of novolac resin either as a composition or as a layer in a multi-layered

article and prior art D6 does not disclose or teach the use of polyolefin in

the composition. Therefore, undoubtedly, the claimed invention discloses

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features not found in any of the prior arts cited by the Controller in the

impugned order. Consequently, the technical advance requirement is

satisfied. The next step is, therefore, to identify the person skilled in the art

before determining whether the technical advance would be obvious to such

person.

Person skilled in the art

24. The person skilled in the art is a hypothetical person created by

law. The law requires that obviousness analysis be carried out by slipping

into the shoes of this notional person. In spite of the significance of this

notional person, the Patents Act does not define the person skilled in the art

or prescribe the attributes of such person. Section 3 of the Patents Act, 1977

of the United Kingdom (the UK Patents Act), which is the provision

corresponding to Section 2(1)(ja), defines inventive step as under:

“Inventive step

3. An invention shall be taken to involve an inventive step

if it is not obvious to a person skilled in the art, having

regard to any matter which forms part of the state of the

art by virtue only of section 2(2) above (and disregarding

section 2(3) above).”

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When Section 2(1)(ja) of the Patents Act is compared and contrasted with

Section 3 of the UK Patents Act, it is noticeable that the first requirement

under Section 2(1)(ja), i.e. technical advancement over existing knowledge

or economic advantage or both, is not expressly prescribed in Section 3 of

the UK statute. Turning to the perspective from which obviousness analysis

should be carried out, both statutes use the identical expression “person

skilled in the art”. Against this backdrop, it is useful to examine the manner

in which courts in the UK define or describe the person skilled in the art.

24. Speaking for the UK Patents Court, Justice Laddie elaborated on

the general characteristics of the skilled but non-inventive person in

paragraph 62 of Lilly Icos LLC v. Pfizer Ltd. (Lilly Icos), (2001) FSR 16,

which is set out below:

“The question of obviousness has to be assessed through

the eyes of the skilled but non-inventive man in the art.

This is not a real person. He is a legal creation. He is

supposed to offer an objective test of whether a particular

development can be protected by a patent. He is deemed to

have looked at and read publicly available documents and

to know of public uses in the prior art. He understands all

languages and dialects. He never misses the obvious nor

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stumbles on the inventive. He has no private idiosyncratic

preferences or dislikes. He never thinks laterally. He

differs from all real people in one or more of these

characteristics. A real worker in the field may never look

at the piece of prior art- for example he may never look at

the contents of a particular public library- or he may be

put off because it is in a language he does not know. But

the notional addressee is taken to have done so. This is a

reflection of part of the policy underlying the law of

obviousness. Anything which is obvious over what is

available to the public cannot subsequently be the subject

of valid patent protection even if, in practice, few would

have bothered looking through the prior art or would

have found the particular items relied on. Patents are not

granted for the discovery and wider dissemination of

public material and what is obvious over it, but only for

making new inventions. A worker who finds, is given or

stumbles upon any piece of public prior art must realise

that that art and anything obvious over it cannot be

monopolised by him and he is assured that it cannot be

monopolised by anyone else.”

25. In the United States of America, Title 35 of the United States

Code governs patents and Section 103 thereof, which deals with non-

obvious subject matter, is as under:

“A patent for a claimed invention may not be obtained,

notwithstanding that the claimed invention is not

identically disclosed as set forth in Section 102 if the

differences between the claimed invention and the prior

art are such that the claimed invention as a whole would

have been obvious before the effective filing date of the

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claimed invention to a person having ordinary skill in the

art to which the claimed invention pertains. Patentability

shall not be negated by the manner in which the invention

was made.”

Thus, under US law, obviousness is required to be determined from the

perspective of “a person having ordinary skill in the art”. The acronym

“Mr.PHOSITA” or “PHOSITA” is often used for this notional person. In

this statutory context, in Graham v. John Deere Co. (Graham)383 U.S.1

(1966), the US Supreme Court formulated the following four steps in

obviousness analysis:

“ Obviousness depends on (1) the scope and content of the

prior art; (2) the differences between the claimed

invention and the prior art; (3) the level of ordinary skill

in the art; and (4) any relevant secondary considerations,

including commercial success, long felt but unresolved

needs; failure of others and unexpected results.”

Level of skill of person skilled in the art

26. As is evident from the above survey, the definition of inventive

step in the Patents Act is closer to that in the UK Patents Act because both

statutes use the expression “person skilled in the art” unlike the US Patents

Act which uses the expression “person having ordinary skill in the art”.

That said, what is the level of skill: is it average, good, very good, excellent,

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or extraordinary? The text of Section 2(1)(ja) does not place any of the

above qualifiers or any analogous variant before the adjective “skilled”. Is

there contextual guidance regarding the level of skill? On scanning the

Patents Act, I find that Section 64(1)(h), which provides for revocation of

patents for failure to enable, prescribes as under:

(1)Subject to the provisions contained in this Act, a

patent, whether granted before or after the

commencement of this Act, may be revoked on a

petition of any person interested or of the Central

Government or on a counter-claim in a suit for

infringement of the patent by the High Court on any

of the following grounds, that is to say -

(h) that the complete specification does not

sufficiently and fairly describe the invention and the

method by which it is to be performed, that is to say,

that the description of the method or the

instructions for the working of the invention as

contained in the complete specification are not by

themselves sufficient to enable a person in India

possessing average skill in, and average

knowledge of, the art to which the invention

relates, to work the invention, or that it does not

disclose the best method of performing it which was

known to the applicant for the patent and for which

he was entitled to claim protection.” (emphasis

added).

The words to which emphasis was added in the above provision indicate

that the statute posits a different notional person for determining whether

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the invention had been sufficiently enabled. This person, in contrast to the

hypothetical person in Section 2(1)(ja), is a person in India possessing

average skill in and average knowledge of the art to which the invention

relates. The absence of the words “in India” in Section 2(1)(ja) indicates

that the person could be based anywhere in the world, including India.

27. Section 2(1)(ja) uses the word “skilled” as an adjective qualifying

the noun “person”. Most standard dictionaries define the adjective “skilled”

as referring to a person having the ability to do a job, task or activity well. I

am mindful of Judge Learned Hand's wise counsel in Markham v. Cabell,

326 U.S. 404 (1945), that one should not make a “fortress of the

dictionary”. So, I remind myself of the context: to determine whether the

technical advance or economic significance or both would be obvious to a

person skilled in the art. By reckoning that such skilled person could be

from a range of disciplines depending on the field of invention, I ask myself

what level of ability comes to mind if a person were to be described in any

of the following ways: skilled medical doctor; skilled automobile engineer;

skilled physicist; skilled carpenter; or skilled immunologist. In each case,

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the straightforward answer is a person possessing the necessary attributes to

do the job well. I bear in mind statutory context, i.e. the absence of the

qualifier “average” in Section 2(1)(ja) in contrast to its use in Section

64(1)(h). I recognise that the statute neither uses words that indicate

enhanced levels of skill such as “highly”, “outstandingly” or

“extraordinarily” nor words that indicate a low or average level of skill such

as “low” or “ordinary” or “average” to further qualify the “skilled” person.

By taking into account all of the above, on balance, in my view, the “person

skilled in the art” as per Section 2(1)(ja) is a person whose skill level is

good/greater than average. Because most disciplines/arts require a range of

skills or skill set, this person should possess the skill set to do the job well.

These aspects were considered in a judgment dated 12.06.2013 of the

Intellectual Property Appellate Tribunal (the IPAB) in Enercon (India) Ltd.

v. Aloys Wobben (Enercon), ORA/08/2009/PT/CH. In Enercon, the IPAB,

speaking through Mrs.Justice Prabha Sridevan, held as under in two

memorable paragraphs:

“35. It is true that the Roche extract is specifically

with regard to the obviousness issue, but the

Novartis extract is not. But it is clear from both the

judgments that we should understand the concepts

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based on the sections as they are in our Act, and

also contextualize it in our country. Roche v. Cipla

also speaks of a person skilled in the art and not a

person with ordinary skill in the art or average skill

in the art. The respondent wants us to imagine a

person of ordinary skill, conservative,

unimaginative, will not go against established

prejudice, and is in India. The law has not used the

word ordinary. It had the laws of other jurisdictions

before it and yet it eschewed the word “ordinary”.

So it is very important for us while deciding

obviousness not to conjure up a dullard or a moron.

Why should we proceed as if “ordinariness” is

inherent in the hypothetical person? If it makes the

obviousness bar a bit higher, we must bear that in

mind, for This is Our Law.”

“37. In this case the art is wind energy. Since this

obviousness test is the most frequently debated issue

in patent litigations, it may be better if in the future,

the pleadings or evidence tells us who this person

is. This person is skilled in the art. This person is

presumed to know the state of that art at that time,

and to have the knowledge that is publicly

available. The Act is quite clear and free from

ambiguity. The person is skilled in the art and has

more than average knowledge of the state of the art

and also has common sense. Indian law expects the

non-obviousness to be tested against this person

and not the person who is the touchstone in U.S.

Law. She is Ms.P.Sita (Person Skilled in the Art)

and not Mr.Phosita or Mr. Posita who are both

ordinary by definition.”

Attributes of a person skilled in the art

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28. I turn next to the attributes of a person skilled in the art.

Depending on the art, educational/ academic or vocational qualifications are

likely to be required. Work experience would certainly be required because

one does not ordinarily describe a person with the requisite educational

qualifications but no work experience as skilled in the art. What about

ability to use the tools of trade? Clearly, a person skilled in the art would be

adept at using the tools of trade. With regard to knowledge, as held in Lily

Icos, on account of the underlying public policy requirement that no

monopoly right should be granted over matters previously known in the art

or obvious to a person with knowledge of prior art, a level of knowledge

that a real person skilled in the art is unlikely to possess is imputed to the

hypothetical person. Such imputation of knowledge is not, however,

unqualified and is restricted to matters previously known in the art in which

such person or team of persons is skilled. The legislative intent, as gleaned

from text, is certainly not that this person should be omniscient. This leads

to the question: in what respects should this notional person be different

from a real person skilled in the art?

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29. For instance, is it necessary that this person should be forgetful

of other prior art once she identifies the closest prior art? I do not think that

it is necessary to impute such trait although it is necessary to be mindful of

the risk of hindsight-based mosaicing. Should this person be lacking in

imagination? While the extent of imaginativeness varies from person to

person, imagination is an inherent human quality and the underlying public

policy of fostering inventiveness does not justify banishing imagination in

the notional person. What about inventiveness? Plainly, the text of the

statute requires a patent applicant to establish the existence of an inventive

step and, if obviousness is examined from the perspective of a skilled

person with ingenuity and inventive capacity, every patent application

would fail as would the public policy of fostering genuine invention.

Indeed, even de hors the public policy justification, the expression “person

skilled in the art” does not ordinarily connote a person with inventive

capability. Thus, except to the extent that statutory prescription or the

underlying public policy call for a departure from the characteristics of a

real person skilled in the art, the notional person should, in my view, mirror

a real person as closely as possible. Adopting such approach has the benefit

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of enhancing the quality of obviousness analysis by ensuring that it remains

rooted in the real world. In sum, other than the unreal levels of knowledge

imputed to the notional person, such person should possess all the qualities

that a real person proficient in the art would possess.

Identifying the person skilled in the art

30. Is it always necessary for the adjudicator to identify the person

skilled in the art? If the patent applicant and the relevant patent office agree

on the person skilled in the art, identification by the adjudicator is not

necessary. By contrast, whenever there is disagreement, the adjudicator has

to identify the person skilled in the art. Where does one begin? The obvious

starting point is the field of the claimed invention. Sometimes the person

skilled in the art can be readily identified from the field of invention. By

way of illustration, if the claimed invention is a pure automobile patent, the

person skilled in the art would be an automobile engineer. The

identification process could get more complicated - and, the person skilled

could even be a team of persons with requisite skills - if the claimed

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invention also embraces a customised software embedded in a

system/hardware. Depending on the nature of the claimed invention, the

person, or team of persons, skilled in the art could be from a specific

industry or industries or be proficient in technology with use cases in

multiple industries. While undertaking this exercise, it is necessary to bear

in mind that the object is certainly not to identify a person or team of

persons with the capacity to invent in the field of the claimed invention. It is

useful to refer to a couple of cases to understand how the person skilled in

the art is identified.

31. In Dystar Textilfarben, which was a case revolving around the

process of dyeing textiles with catalytically hydrogenated leuco indigo,

there was a fundamental disagreement between the parties on the

identification and level of skill of the person having ordinary skill in the

art. In that context, the United States Court of Appeal for the Federal

Circuit held as under:

"Designing an optimal dyeing process requires

knowledge of chemistry and systems engineering, for

example, and by no means can be undertaken by a

person of only high school education whose skill set is

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limited to "flipping the switches". This is especially true

when one considers that only in the last century have

improvements in indigo reduction chemistry enabled

outsourcing of the indigo reduction step from dyehouses

to chemical manufacturers; prior to that simplification,

there would have been no question that a dyer would

also require knowledge of indigo reduction. Because, for

this patent, the only finding supported by substantial

evidence is that an ordinary artisan is not a dyer but a

person designing an optimal dyeing process, the jury's

implicit finding of a mere dyer cannot withstand scrutiny

on JMOL. Accordingly, the jury's apparent decision to

disregard Brochet, Winner, and Chaumat, and perhaps

other prior art references, has neither in dye process art

nor even in analogous arts is unsupported by substantial

evidence"

32. In the Indian context, the IPAB judgment in Sankalp

Rehabilitation is relevant and paragraph 42, in relevant part, is extracted

below:

“42...The Court has to see a) what is the prior art b) the

differences between the prior art and the invention and c)

the skill of the imaginary ordinary man. This man has

skill but until KSR came along he had no inventive or

creative capacity. Such a person is hard to find, but we

had to conjure this man in our mind as we do the man on

the Clapham omnibus. By way of diversion, it seems he is

referred by the acronym Mr. PHOSITA or just PHOSITA,

the preferred acronym could be POSIT it sounds better or

POSITA if you please. Getting back to the track, as KSR

says this man is “A person of ordinary skill is also a

person of ordinary creativity not an automaton.” So an

automaton - like unimaginative but skilled man has now

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been allowed to have a modicum of creativity and

imagination by the grace of the U.S. Supreme Court. We

must remember that this ordinary man has skill in this

art. He is not ignorant of its basics, nor is he ignorant of

the activities in the particular field. He is also not

ignorant of the demand on this art. “He is just an

average man…….. Well… just an ordinary man.” But he

is no dullard. He has read the prior art and knows how to

proceed in the normal course of research with what he

knows of the state of the art. He does not need to by

guided along step by step. He can work his way through.

He reads the prior arts as a whole and allows himself to

be taught by what is contained therein. He is neither

picking out the ”teaching towards passages” like the

challenger, nor is he seeking out the “teaching away

passages” like the defender. In this case he is a person

familiar with or engaged in PEG chemistry. He knew that

it was a time of intense activity in this field of chemistry.

The person defending the patent will undoubtedly inform

the Court that there was nothing in the prior art to

encourage the person skilled in the art to work toward

the invention. KSR says “The question is not whether the

combination was obvious to the patentee but whether the

combination was obvious to the person skilled in the art.

Under the correct analysis, any need or problem known

in the field of endeavour at the time of invention and

addressed by the patent can provide a reason for

combining the elements in the manner claimed.” And one

of the easy ways by which “a patent's subject matter can

be proved obvious is by noting that there was an obvious

solution encompassed by the patent's claims.” KSR also

says that if pursuit of known options within the technical

grasp of the person skilled art leads to the anticipated

success “it is likely the product not of innovation but of

ordinary skill and common sense”.

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Identifying PSITA in this case

33. The relevant field of invention here is chemical engineering, more

specifically polymer technology used predominantly in the petroleum

industry to transport or store gasoline or any volatile hydrocarbon. The

claimed invention, in this case, is a pipe made of a polyamide composition

with high barrier properties as regards gases and liquids such as gasoline.

While the appellant identifies the PSITA as a person qualified in chemistry,

the Patent Office identifies the person as a “polymer technologist”. From

the nature of the claimed invention, it is clear that one of the primary

ingredients is polyamide, which is a polymer chain linked together by amide

groups. The other critical ingredient, novolac, is also a polymer. Polymers

are macromolecules consisting of more than one monomer. While polymers

may be naturally occurring or synthetic, here, we are concerned with

synthetic polymers. Polymer technology has use cases in multiple industries,

such as textiles, automobiles, petroleum and the like. In the claimed

invention, polymer technology is used to make articles to store or transport

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liquids such as gasoline. Therefore, the person skilled in the art should be a

person with knowledge of not only polymers but the properties of gasoline

and similar liquids and gases. Keeping in mind all of the above, I am

inclined to conclude that the person skilled in the art is a chemical engineer

with understanding of polymers. Whether the claimed invention would be

obvious to such person is examined next after a brief interlude to consider

what is meant by obvious.

34. There is nothing complicated about the word “obvious”, which is

defined in standard dictionaries as easy to see, recognise or understand;

easily discovered, seen, or understood; or easy to see or notice. Simplicity

notwithstanding, most approaches to obviousness analysis flow from this

word. Hence, an approach such as obvious to try. Thus, the question that

looms large is, without the benefit of hindsight, would the person skilled in

the art easily notice the links and weave together the prior art to arrive at the

claimed invention.

Mosaicing/combining prior art

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35. The undisputed position is that prior art D5, which was described

by the respondent as the closest prior art, was prior to and, therefore, could

not have referred to D6. Although D6 is subsequent to D5, D6 does not

refer expressly to D5. Such express reference or cross reference is, however,

unnecessary and it is sufficient if there is teaching, suggestion or motivation

(the TSM test) in the prior art. In the context of a patent claim relating to a

machine for making utensils, in Bishwanath Prasad Radhey Shyam v.

Hindustan Metal Industries, MANU/SC/0255/ 1978, the Supreme Court held

that a mere workshop improvement does not satisfy the test of

inventiveness. While rejecting a formalistic conception of the TSM test, in

KSR International Co. v. Teleflex Inc. et al, 550 US 398 (2007), the US

Supreme Court held that “under the correct analysis, any need or problem

known in the field and addressed by the patent can provide a reason for

combining the elements in the manner claimed.”

36. In Biomoneta Research, the Delhi High Court dealt with the

combination versus juxtaposition or aggregation principle laid down by the

EPO. The relevant paragraphs are extracted below:

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64. There can be no doubt that some of the features in D1,

D2 and D3 are present in the subject invention, but is

there something more? Can this patent be described as a

lucky accident and can it be claimed that the subject

patent application lacks even the scintilla of invention?

65. In the opinion of this Court, the subject invention is

not a mere addition to a well-known combination, but it

has some new features and is an improvement in the

method which has brought in greater efficiency. In such

inventions, the EPO guideline which deal with

combination vs. juxtaposition or aggregation would be

relevant, the said principle as laid down by the EPO is set

out below:

“9.5 Combination vs. juxtaposition or aggregation

The invention claimed must normally be considered as a

whole. When a claim consists of a ‘combination of

features’, it is not correct to argue that the separate

features of the combination taken by themselves are

known or obvious and that ‘therefore’ the whole subject-

matter claimed is obvious. However, where the claim is

merely an ‘aggregation or juxtaposition of features’ and

not a true combination, it is enough to show that the

individual features are obvious to prove that the

aggregation of features does not involve an inventive step.

A set of technical features is regarded as a combination of

features if the functional interaction between the features

achieves a combined technical effect which is different

from, e.g. greater than, the sum of the technical effects of

the individual features. In other words, the interactions of

the individual features must produce a synergistic effect. If

no such synergistic effect exists, there is no more than a

mere aggregation of features…”

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37. In Dystar Textilfarben, the Court observed that it will not read

into a reference a teaching away from a process where no such language

exists and cited Ruiz v. A.B.Chance Co., 234 F.3d 654 (Fed. Cir. 2000), in

this regard. The suggested motivation to combine is extracted below:

“1) in the prior art references themselves;

2) in the knowledge of those of ordinary skill in the art

that certain references, or disclosures in those references,

are of special interest or importance in the field; or

3) from the nature of the problem to be solved, leading

inventors to look to references relating to possible

solutions to that problem.”

The above principles should be borne in mind while deciding whether the

person skilled in the art would combine the prior art.

Whether prior arts D5 and D6 are analogous

38. Though the Controller had identified prior art documents D1 and

D2 at the FER stage and further identified D4 to D6 in the hearing notice,

only prior arts D5 and D6 were relied on in the impugned order. Therefore,

these two prior arts warrant close scrutiny. Prior art D5 is identified as an

invention titled “Fuel tank having a multilayer structure” with US Patent

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Application Publication No. US2002/0051856 A1 dated May 2, 2002. The

fuel tank structure successively comprises a first layer of HDPE, a layer of

binder, a second layer of EVOH, and optionally a third layer of polyamide

or a mixture of polyamide and polyolefin. Similarly, prior art D6 is

identified as an invention titled “Articles made from polyamide resin

compositions and having improved fluid permeation barrier properties”

having US Patent Application Publication No. US2005/0069662 A1 dated

March 31, 2005. This invention concerns moulded articles suitable for the

transport or storage of fuels used in internal combustion engines and having

improved fluid permeation barrier properties, made from polyamide resin

compositions comprising: 100 weight parts of a polyamide; 5 to 50 weight

parts of a phenolic novolac resin; and optionally contain up to 40 weight

percent of an ethylene-alpha-olefin copolymer impact modifier.

39. Paragraph [0020] of the complete specification of D5 discloses

that the invention therein is “useful for a fluid such as motor vehicle petrol

or volatile hydrocarbon fuels such as gasoline, by avoiding losses through

the structure so as not to pollute the environment.” Similarly, paragraph

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[0012] of the complete specification of D6 discloses the preferred

applications of the invention therein for the “transport and storage of

hydrocarbon-based fuels for use in internal combustion engines such as

those found in automobiles, trucks, recreational vehicles, farm equipment,

lawn maintenance equipment, and heavy machinery.” Since the two prior

arts disclose articles or compositions that augment impermeability in

relation to fluids, especially hydrocarbon-based fluids, they are in the same

field as the claimed invention. Considering the fact that the publication

dates of prior arts D5 and D6 are prior to the priority date of the claimed

invention (i.e. 27.04.2007), these qualify as analogous prior art documents.

Differences between the prior arts and the claimed invention

40. Learned counsel for the appellant pointed out differences between

the claimed invention and prior art documents, D5 and D6. With reference

to D5, it was argued that there was no reason for the person skilled in the art

to refer to D5, as the invention disclosed therein is a multi-layered fuel tank

as against a single layered pipe in the claimed invention. Secondly, she

pointed out that EVOH is the lead ingredient of the barrier layer therein,

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whereas polyamide, which is the lead ingredient in the claimed invention, is

only optional therein.

41. The contention that D5 recites a multi-layered article was refuted

by the Controller by drawing my attention to internal pages 4 and 12 of the

complete specification of the claimed invention. The relevant parts thereof

are extracted below:

Page 4

"The compositions of the invention additionally make it

possible to manufacture, in combination with polyolefin

materials, multilayer structures such as, for example,

extruded pipes, articles produced by the extrusion-blow

molding process, injection-molded and welded articles,

having an excellant adhesive strength with the polyolefin

materials, and to avoid any delamination problems."

Page 12

"The composition or material according to the present

invention may be deposited or combined with another

substrate, such as plastic materials for the manufacture of

composite, in particular multilayer, articles....

Multilayer articles are especially preferred that comprise

at least one layer obtained from a polyamide composition

according to the invention comprising at least novolac

resin, and at least one layer obtained from a composition

comprising a polyolefin. Preferably, the polyolefin is of

the same nature in both layers. More preferably still, the

polyolefin is a polyethylene."

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It is discernible from the two extracts above that the complete specification

of the claimed invention also envisages a multi-layered article. Moreover, it

becomes evident from claims 5 & 6 (set out in paragraph 3 above) that the

appellant also seeks patent protection for multi-layered articles in which at

least one layer is composed of the composition claimed in claim 1. In view

of the above, it cannot be concluded that the multi-layered article disclosed

in D5 per se teaches away from the claimed invention.

42. In response to the contention of the appellant that there was no

reason for the person skilled in the art to refer to D5 because it deals with a

barrier layer of EVOH, the respondent pointed to paragraphs [0018] and

[0019] of D5, which teach a third layer (barrier layer) comprising

polyamide or a mixture of polyamide and a polyolefin. The said paragraphs

are extracted below:

[0018] optionally a third layer of polyamide (A) or a

mixture of polyamide (A) and polyolefin (B).

[0019] In the text hereinbelow, the second layer or the

combination of the second and the third layer is referred to

as the “barrier layer” and forms an exterior face of the

wall structure.

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From the above paragraphs, it is clear that D5 teaches an optional barrier

layer, i.e. a 3

rd

layer comprising polyamide or a mixture of polyamide and

polyolefin, which comes in contact with the fluid. As regards the

polyamide, paragraph [0055] suggests that the polyamide may be

advantageously made of co-polyamides and paragraph [0060] provides a

choice between PA 6/12 and PA 6/6-6 as their melting point is less than that

of PA6. As regards the polyolefin, as per paragraph [0078], it can be

functionalized or non-functionalized or can be a mixture of at least one

functionalized and/or of at least one non-functionalized. In specific

examples cited at paragraph [0217], the non-functionalized polyolefin is

selected as HDPE with a density of 0.952 kg/1, whereas, in paragraph

[0219], the functionalized polyolefin is selected from a carrier polyethylene

modified with maleic anhydride. In effect, there is no teaching away from

the use of polyamide in D5 and, although described as an optional layer, the

complete specification of D5 contains sufficient disclosure if the optional

layer is opted for based on the teachings therein.

43. The polyamide in the claimed invention, as per one preferred

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(T)CMA(PT) No.88 of 2023

embodiment, is described at internal page 5 of the complete specification as

follows:

"According to one preferential embodiment of the

invention, the thermoplastic matrix is a polyamide chosen

from the group comprising polyamide PA-6, polyamide

PA-6,6, polyamide PA-11, polyamide PA-12 polymeta-

xylylenediamine (MXD6), and the blends and copolymers

based on of these polyamides."

As regards polyolefins, the following passages at internal pages 8 and 9 of

the complete specification are relevant and extracted, in relevant parts,

below:

“These polyolefins preferably have a density between

0.910 and 0.97 g/cm³.

As preferred polyolefins of the present invention, mention

may especially be made of polyethylene, polypropylene,

polyisobutylene, polymethylpentene, polyisoprenes and

blends and/or copolymers thereof.

A high-density polyethylene is especially preferred, in

particular having the following characteristics:

- density between 0.94 and 0.97 g/cm³:

- molecular weight between 450 000 and 4 000 000

g/mol;

- melt flow index (MFI) measured according to the ISO

1133 standard (190° C., 2.16 kg) between 0.1 and 25

g/10 mm; and

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(T)CMA(PT) No.88 of 2023

- degree of crystallization between 60 and 80%.

....

As the agent d) for compatibilization between the

polyolefin and the polyamide, mention may be made of

compounds comprising in particular polyolefin chains

and functional groups intended to improve compatibility

with the polyamide, such as, for example, maleic

anhydride, salified or unsalified carboxylic acids, ester,

acrylic, methacrylic, or epoxy groups. Grafted

copolyolefins carrying such groups are preferred."

44. Claim 1, as per the auxiliary request claims, set out supra at

paragraph 9, envisages a pipe comprising a mixture of a polyamide matrix

present in an amount from 60% to 80% by weight, a novolac resin in an

amount 5 to 20% by weight, a non-functionalized polyolefin being

polyethylene having density ranging from 0.94 to 0.97 g/cm³, and a

compatibilization agent consisting of functionalized polyolefin selected

from the group consisting of maleic anhydride, carboxylic acid, ester and

the like.

45. From the above narration, it follows that many features of the

claimed invention are found in D5, but the conspicuous absentee is novolac

resin. Novolac resin finds place in D6. Therefore, the question that arises is

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(T)CMA(PT) No.88 of 2023

whether a person skilled in the art would be motivated to pick out the

optional barrier layer in D5 and combine the same with the novolac resin as

per the teachings of D6.

46. Paragraphs [0018] to [0020] of the complete specification of D6

disclose the use of polyamides 66, 11, 12, 6/10, 6/12, and 10/10 in

moulding articles for uses in applications that require good barrier

properties to the permeation of fluid fuels. Further, the amount of phenolic

novolac resin used in the invention therein is 5 to 50 weight parts, or

preferably 10 to 30 weight parts, based on 100 weight parts of the aforesaid

polyamide. The relevant paragraphs from prior art D6 are extracted below:

"[0018] Polyamides 66, 11, 12, 6/10, 6/12, and 10/10 are

especially advantageous for use in molding articles for

uses in applications that require good barrier properties

to the permeation of fluid (both liquid and gaseous) fuel

materials as well as good mechanical properties,

moldability, and chemical resistance properties. It is

preferred that the fuel materials be hydrocarbons or

hydrocarbons containing other fuels Such as alcohols.

The polyamides listed above can be used alone or in

combination with one or more other polyamides. A

preferred polyamide used in the present invention is a

mixture of polyamide 66 with at least one other

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(T)CMA(PT) No.88 of 2023

polyamide homopolymer, polyamide copolymer, or

polyamide terpolymer.

[0019] Phenolic Novolac Resin

[0020] The phenolic novolac resin used in the present

invention is not restricted in so far as it can be used in a

resin for conventional plastic moldings. The amount of

phenolic novolac resin used in the present invention is 5

to 50 weight parts, or preferably 10 to 30 weight parts,

based on 100 weight parts of the aforementioned

polyamide. If less than 5 weight parts are present, a

composition having high flowability in the molten state,

and improved fluid perme ation barrier properties cannot

be obtained. If more than 50 weight parts are present, the

physical properties will be markedly decreased."

47. As pointed out by the respondent, Table 1 in paragraph [0032] of

the complete specification of D6 is significant as it evinces the effectiveness

of the addition of novolac to polyamide on fluid permeation barrier

properties. Example 1 thereof discloses that a combination of 68% in

weight parts of nylon 66, 10% in weight parts of novolac and 22% in weight

parts of a modified-EPDM when tested for fluid permeation barrier

properties in respect of 10% ethanol in gasoline exhibited fluid permeation

rate of 0.02 g/m

2

per day. Whereas the comparative example 1 thereof which

contained 81% in weight parts of nylon 0% in weight parts of novolac and

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(T)CMA(PT) No.88 of 2023

10% in weight parts of the modified-EPDM was found to exhibit the fluid

permeation rate of 0.63 g/m

2

per day. The inference that may be drawn from

the table is that the comparative example without novolac resin exhibits

31.5 times greater fluid permeation rate than the example with novolac

resin. This undoubtedly underscores the benefits of combining nylon 66,

which is a polyamide, and novolac resin. A similar conclusion is drawn in

the Experimental Section, Example 2, Table 1 of the complete specification

of the claimed invention.

Is the technical advance of the claimed invention obvious to the person

skilled in the art?

48. In the facts and circumstances of this case, the appellant

contended that there is no motivation for the person skilled in the art to

combine the teachings of D5 and D6. The reasoning of the Controller at

internal page 9 of the impugned order to justify the conclusion that a person

skilled in the art and having knowledge of D5 would look at D6 to improve

the fluid impermeability properties is extracted below:

"Applicant argues that the barrier layer of D5 is made of

an EVOH layer. Contrary to applicant's argument, D5

actually teaches a third layer comprising polyamide and

polyolefin acts as a barrier layer [para 0018-0021].

Applicant argues that the HDPE layer of D5 does not

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(T)CMA(PT) No.88 of 2023

form the barrier layer. The inventive step analysis does

not rely on the HDPE first layer of the multilayer

structure, rather on the HDPE comprised in the

polyamide barrier layer (Third layer). Applicant argues

that paragraph 0031-0033 of D6 teaches that polyamide

+ novolac composition do not show barrier properties.

Quite contrary to applicant's assertion, the said

paragraphs, including the results mentioned therein,

indicates very good improvement in barrier properties

exhibited by the combination of polyamide and novolac.

The composition of third layer of D5 comprising

polyamide and polyolefin is taught to have good barrier

properties, suitable for use a layer coming in contact

with fluids-especially motor vehicle petrol or volatile

hydrocarbons. D6 relates to a molded article suitable

for the transport or storage of fuels used in internal

combustion engines and having improved fluid

permeation barrier properties, made from a polyamide

resin composition comprising :(a) 100 weight parts of a

polyamide, and (b) 5 to 50 weight parts of a phenolic

novolac resin (Claim 1). D6 further teaches that the

fluid barrier properties of polyamide can be improved

by adding novolac. Evidently, in view of these teachings

a PSIA would indeed have more than reasonable

expectation that the combination of D5 and D6 would

result in a composition exhibiting good fluid barrier

property."

49. As concluded earlier, while D5 recites the use of polyamide or a

mixture of polyamide and polyolefin as an optional barrier layer, there is no

teaching away from the use of polyamide or a combination of polyamide

and polyolefin as a barrier layer. From the teachings of only D5, a person

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(T)CMA(PT) No.88 of 2023

skilled in the art would look at using HDPE and a barrier layer of only

EVOH or a barrier layer that combines EVOH and polyamide/mixture of

polyamide and polyolefin. D6, however, not only teaches the use of

novolac resin, but demonstrates the benefit of combining a polyamide, such

as nylon 66, with a novolac resin. This tilts the balance. Indeed, even the

ethylene-propylene-diene impact modifier (EPDM) disclosed in D6 is

referred to at internal page 10 of the complete specification of the claimed

invention. Therefore, in my view, when armed with the knowledge of both

D5 and D6, while looking for a solution to the problem of permeability of

fluids, it would be obvious to a non-inventive person skilled in the art and

starting from D5 to combine the elements therein, particularly polyamide

and polyolefin, with novolac resin to achieve higher impermeability,

especially in respect of gasoline, and it would be a matter of routine

experimentation to arrive at the claimed invention. I am bolstered in this

conclusion by the fact that there are not many options in the realm of

engineering plastics and the problem to be solved does not call for more

expensive options such as the use of high performance polymers. Therefore,

I am inclined to conclude that the claimed invention would be obvious to a

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(T)CMA(PT) No.88 of 2023

person skilled in the art on the basis of D5 viewed in the context of D6.

50. For reasons set out above, I affirm the order of the respondent.

Consequently, (T) CMA (PT) No.88 of 2023 is dismissed without any order

as to costs.

31.01.2024

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.

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(T)CMA(PT) No.88 of 2023

SENTHILKUMAR RAMAMOORTHY J.

kal

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