CMA(PT) No. 54 of 2024

IN THE HIGH COURT OF JUDICATURE AT MADRAS

RESERVED ON 27.11.2025

PRONOUNCED ON 05.01.2026

CORAM

THE HONOURABLE MR.JUSTICE N.SENTHILKUMAR

CMA(PT) No. 54 of 2024

Steer Engineering Private Limited

Rep by Mr.Lalith Kumar, Constituted

Attorney, 290, 4th Main, 4th Phase,

Peenya Industrial Area, Bangalore,

Karnataka-560 058 ...Appellant

Vs

Joint Controller of Patents and Designs

The Patent Office, Chennai, Intellectual

Property Office Building, G.S.T.Road,

Guindy, Chennai-600 032 ...Respondent(s)

PRAYER: Civil Miscellaneous Appeal filed under Section 117A of the Patents

Act, 1970 against the order dated 31-07-2024 passed by The Joint Controller

of Patents, Chennai in Patent Application No.202142059972.

For Appellant(s):Mr.Essenese Obhan

for Mr.M.S.Bharath

For Respondent(s):Mr.A.R.Sakthivel, SPCGSC

Ms.J.Meena - Join controller of

Patents & Designs appeared

through VC

JUDGMENT

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Aggrieved by the impugned order dated 31.07.2024 passed by the Joint

Controller of Patents and Designs, Indian Patent Office, Chennai, refusing the

grant of a patent in respect of Patent Application No.202142059972, this

application has been filed as a divisional application, divided out of Indian

Patent Application No.201741044221, which is the parent application. A First

Examination Report (in short 'FER') was issued on 07.03.2022. A response to

the FER and an amended set of claims was submitted by the agent of the

appellant on 05.09.2022. A hearing notice was issued by the Indian Patent

Office on 10.10.2023. A written submission dated 18.12.2023, based on the

reply to the first examination report was filed by the appellant. Subsequent to

the hearing, the impugned order was passed by the respondent.

2. The Appellant has made the following amended claims:

Claim 1: A fiber reinforced thermoplastic composition comprising:

a mixture of first thermoplastic and a second thermoplastic, wherein the

first thermoplastic is un-plasticised polyvinyl chloride (PVC) and the

second thermoplastic is acrylonitrile-butadiene-styrene (ABS); and at least

one wetter continuous fiber uniformly incorporated in the mixture of the

unplasticised polyvinyl chloride (PVC) and the acrylonitrile-butadiene-

styrene (ABS), wherein the fiber reinforced thermoplastic composition has

a density between 1.3 g/cc to 1.7 g/cc and a flexural modulus of at least

4000 MPa.

Claim 2: The fiber reinforced thermoplastic composition as

claimed in claim 1, wherein rubber content in the acrylonitrile-butadiene-

styrene (ABS) is in a range of 10 to 80 percent by volume.

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Claim 3: The fiber reinforced theremoplastic composition as

claimed in claim 1, wherein volume percent of the continuous and chopped

fiber to a total volume of un-plasticised PVC is 10% to 40%.

Claim 4: The fiber reinforced thermoplastic composition as

claimed in claim 1 having a flexural strength of at least 100 Mpa.

Claim 5: The fiber reinforced Thermoplastic composition as

claimed in claim 1, wherein the at least one wetted continuous fiber

comprises one or more liquids or additives that accumulate over the at

least one wetted continuous fiber .

Claim 6: The fiber reinforced thermoplastic composition as

claimed in claim 1, wherein the one or more liquids or additives

encapsulate the at least one wetted continuous fiber.

Claim 7: A process of preparing a fiber reinforced thermoplastic,

the process comprising:

melting a first thermoplastic and a second thermoplastic in a melting zone

of a twin-screw processor, wherein the first thermoplastic is un-plasticised

polyvinyl chloride (PVC) and the second thermoplastic is acrylonitrile-

butadiene-styrene(ABC);

feeding at least one continuous fiber downstream of the melting zone into a

melted mixture of the unplasticised polyvinyl chloride (PVC) and the

acrylonitrile-butadiene-styrene (ABC), Wherein the feeding comprises

wetting the at least one continuous fiber before mixing with the melted

mixture of the unplasticised polyvinyl chloride (PVC) and the acrylonitrile-

butadiene-styrene(ABC); incorporating the at least one wetted continuous

fiber into the melted mixture in a mixing zone, the mixing zone including

only wave elements having a continuous outer surface in the form of a

helical wave such that the at least one wetted continuous fiber is uniformly

incorporated into the melted mixture of the unplasticised polyvinyl

chloride (PVC) and the acrylonitrile-butadiene-styrene (ABS) with

reduction in fiber breakage;and obtaining the fiber reinforced

thermoplastic from the twin screw processor.

Claim 8: The process as claimed in claim 7, wherein the at least

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one continuous fiber includes one or more fiber rovings and each fiber

roving includes at least one strand of fiber having a diameter of 10μm.

Claim 9: The process as claimed in claim 7, comprising feeding

chopped fiber downstream of the melting zone into the melted mixture of

the first thermoplastic and the second thermoplastic

Claim 10: The process as claimed in claim 7, wherein no kneading

blocks and elements are present in the mixing zone.

Claim 11: The process as claimed in claim 7, wherein the wetting

comprises facilitating interaction of the at least one wetted continuous

fiber with one or more additives such that the one ore more additives

accumulate over the at least one continuous fiber.

Claim 12: The process as claimed in claim 7, wherein the one or

more additives encapsulate the at least one wetted continuous fiber.

3. The respondent had denied all the 12 claims made by the Appelllant by

stating that the claims does not meet the requirements under section 2(1)(ja),

Section 59(1) and 16(2) of the Act and are already covered by the parent

application. The Respondent had given the following reasons in the impugned

order for rejection of patent application by comparing the prior art with the

amended claims of the appellant:

(a) D1 relates to similar technical problems, and though D1

does not disclose the exact thermoplastic blend, it would have been

obvious for a person skilled in the art to have used the extruder

and process suggested by D1 to prepare fiber reinforced

thermoplastic compositions of uPVC and ABS, disclosed in D2, D3,

D4, D5 and D6.

(b) The amended claims require wetting of fibers, but D1

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and D7 suggest that wetting of fibers in an extruder is an inherent

phenomenon. Further, it is a common knowledge in art that the

fibers to be incorporated are wetted by the molten polymer to

obtain the required properties.

(c) D3 teaches a fiber reinforced thermoplastic composition

comprising ABS, PVC, glass fiber and other additives, which has

exceptional properties, such as high heat resistance, toughness and

strength, and finds various applications. The composition is

obtained through extrusion. The resulting product exhibits high

flexural strength and tensile strength.

(d) D5 discloses PVC alloy material comprising rigid PVC

(uPVC), ABS resin and other additives. The alloy is prepared by

feeding the polymers and other components into a twin-screw

extruder, followed by melt-mixing. D5 indicates that the

composition integrates the advantages that ABS resin is

shockproof, low-temperature resistant and easy to mould and

process, and PVC resin is fire retarding, rigid, corrosion resistant,

low in cost, etc.

(e) D6 discloses uPVC pipe having high impact resistance

performance, wherein the pipe if formed from a composition

comprising uPVC, ABS resin and other additives.

(f) D7 relates to the mechanisms involved in extrusion

process, wherein it states that the mixing in an extruder is complete

only if 'wetting'. Wetting is simply chemical union of two or more

components involved in the mixing process. D7 indicates that

kneading action as a result of shearing action is the predominant

way of achieving wetting. D7 suggests that some form of dispersion

and forced wetting of fibers are brought about by kneading. Thus,

D7 teaches that 'wetting' of fibers in an extrader is an inherent

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phenomenon brought about by mixing of the plastic mixture with

fibers. Difference between state of the art and the claimed subject

matter D1-D3 differs from the present invention in that it does not

teach a composition comprising uPVC and ABS. D4 differs from

the present invention in that it does not disclose an extruder set up

comprising the claimed wave element. D5-D6 differs from the

present invention in that they are silent on fiber reinforcement of

thermoplastic blends of uPVC and ABS. D7 is a general art

relating to mechanisms of extrusion. 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 inventive

ingenuity. "

4. The learned Controller, who had appeared through VC, had explained

their analysis as to whether these features of the cited art anticipate the claimed

invention. The learned controller had made the following submission, which

forms part of the impugned order.

"The cited document D1 is the closest prior art and D1

teaches that a conventional extruder modified by the wave element

may be used for preparing fiber reinforced thermoplastic

composition, wherein such an arrangement allows for mixing of

long continuous fibers in the plastic without fiber attrition or

breakage, thereby resulting in an improved product. Though D1

does not disclose the exact thermoplastic blend it discloses the

similar extraction process. As mentioned in the hearing notice that

it is obvious for a person skilled in the art to have modified the

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arrangement of D2 using the wave element of D1, with a view to

prevent fiber breakage as suggested by D1, or alternately to use the

different polymer/fiber combinations provided by D2 in the

arrangement of D1. As mentioned in the hearing notice, D4

suggests that uPVC/ABS blends provide improved jetting properties

over wider range of operating temperature and also give higher

levels of impact resistance compared to other compositions. Further

D5 and D6 revealed that it was widely known in the art to use

blends of uPVC and ABS to make use of the individual

advantageous properties, while avoiding the thermal degradation of

uPVC. D6 specifically discloses pipes made from uPVC/ABS blends.

D3-D6 suggests that pipes or other articles made from uPVC/ABS

have significantly improved properties over other systems. The

documents D4-D6 were cited to show that u-PVC/ABC blends were

used in the prior art to prepare fiber reinforced articles like pipe

using a process employing conventional extruders. The applicants

has also not brought out any tehnically significant results

attributable to the adoption of these wave elements specifically for

u-PVC/ABS composites. Thus, the applicants' argument that the

cited prior arts do not teach mixing wetted fibers into plastic

mixture is not persuasive. Moreover, the applicant has not provided

any support and/or evidence regarding an improved effect achieved

by the said feature, compared to the prior arts. The instant

specification in pages 7-8 merely mentions that a wetting system

may be present to homogeneously distribute the fiber within the

matrix. The application does not provide any

details/features/attributes of the said wetting system or the effect of

the said wetting system over known prior arts, such as D1. Hence

the amended claims are 1-12 are not inventive in view of the

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teaching of the cited document D1 - D7, and hence an inventive step

u/s 2(1)(ja) cannot be acknowledged.

5. The appellant claimed that, as established by settled law, the

amendment of claims by incorporating features disclosed in the specification,

with an aim of further defining a claimed element, constitutes narrowing of the

claims and is permissible under Section 59(1) of the Act. Consequently, the

amendment of Claim 1 by incorporating the feature "wetted" and claim 7 by

incorporating the feature "wetting of fibers", as disclosed in the specification,

merely narrows the scope of the claimed invention by further defining an

existing element or adding an additional limitation. Therefore, according to the

appellant, this amendment is permissible. The relevant portion of detailed

description of the drawing submitted by the appellant is extracted hereunder:

"In the embodiment illustrated, the barrel 106 is

configured to receive a first thermoplastic 150 and a second

thermoplastic 160 through the feeder 108. The first thermoplastic

150 may be fed from a resin source (not shown), through the

feeder 108, and may be added in the form of a powder into the

input barrel 106. For example, the first thermoplastic 150 i.e., in

an embodiment, PVC may include resins of un-plasticized PVC

that can be repeatedly melted and solidified by hearing and

cooling. The first thermoplastic 150 may include a homo-polymer

or a co-polymer. Examples of the first thermoplastic 150 include,

but not limited to, polypropylene, polyethylene, polyamides,

polyamines, polycarborate, and the like, Such thermoplastics may

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be plasticised or unplasticised. By way of an example, the first

theremoplastic 150 is an un-plasticised polyvinyl chloride (PVC).

The second thermoplastic 160 may also be fed through the

feeder 108 and may be added in the form of a

powder/granules/other form into the input barrel 106. The second

thermoplastic 160 may be a homo-polymer or a co-polymer.

Examples of the second thermoplastic 160 include, but not limited

to, polystyrene, styrene-acrylonitrile copolymers, acrylonitrile-

butandiene-styrene terpolymers, polysulphones, polyesters,

polyurethanes, polyphenylene sulfides, polyvinyl chloride,

polyphenylene ethers, polystyrene, and the like. By way of an

example, the second thermoplastic 160 may be a acrylonitrile-

butadiene-styrene (ABS) ."

The pipe formed from the mixture of PVC and ABS reinforced

with glass fibers exhibits properties and strengths greater than

those of normal PVC and chlorinated PVC. For instance, the

pipe manufactured in one example from the composition as

disclosed above has the following strength and performance

parameters in comparison to normal PVC and chlorinated PVC.

COMPARISON OF PVC PIPE TEST RESULTS

Test Parameters->Units

C-PVC

Pipe

Normal

PVC Pipe

Current

Disclosure Pipe

Tensile Strength at

yield

MPa*10 5.2 4.7 5.9

Flexural StrengthMPa*10 6.8 6 15.845

Flexural ModulusMPa*1000 2.472 1.735 8.488

Density g/cc 1.56 1.4 1.46

In another example, the process was utilized to produce a fiber

reinforced PVC composition and a pipe was formed using the said

fiber reinforced PVC composition. In the example, the PVC

composition was formed by using PVC resins from Owens Corning

Korea (K67 resin), ABS and continuous fibers. The formed pipe had

the following properties, strength parameters and dimensions:

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Outer

Diameter

(mm)

Wall

Thickness

(mm)

Wt. of piper

per meter

(gms)

Deflection

with 18.5 Kg

load (mm)

PSDC

TS/FS/FM

(MPa)

Plain PVC 32 2.0 253

60 (3.2 Kg

load)

47/60/1588

C-PVC 28.6 2.8 336 75 47/63/2422

Current

Disclosure

25 2.8 303 45 42/76/4141

6. In support of his contention, the learned counsel appearing for the

appellant has relied on the decision of this court in Rhodia Operations v.

Assistant Controller of Patents and Designs, Government of India reported in

(2024) 1 HCC (Mad) 140. In this decision, in paragraphs 18 to 29, this court has

held as follows:

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 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

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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 153 of Hoffmann-La Roche, formulated five steps to

determine obviousness/lack of inventive step, and the said paragraph is

set out below:

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

“ 19. 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

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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

….

(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 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

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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~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 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).

”

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

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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 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 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

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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, 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 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

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CMA(PT) No. 54 of 2024

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, 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 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

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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

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?

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

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CMA(PT) No. 54 of 2024

person as closely as possible. Adopting such approach has the benefit 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. "

By relying upon the aforesaid judgment, the learned counsel argued that the

interpretation of the claim amendments in the impugned order is flawed as it

disregards the established legal precedents.

7. This court has taken note of the guiding principles on identifying the

presence of inventive step in an invention, which are observed in the above

judgement. At the risk of repetition, for the sake of clarity, the said observation

is extracted hereunder:

21. The precedence 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 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 prerequisite in

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

8. The appellant vehemently contended that the claim made by the

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Appellant is squarely covered under the conditions and requirements of the

Patents Act.

9. The learned counsel for the appellant relied upon the decision in

Dura-Line India Pvt. Ltd. vs. Jain Irrigation Systems Ltd. reported in 2025

SCC OnLine Del 3467 and argued that the patent is mechanically rejected. The

learned counsel contended that the findings given by the respondent is

influenced by Hindsight Bias. The relevant portion is extracted hereunder:

"100. Obviousness is not a license to dissect an invention

into known parts and reassemble them retrospectively. The

prohibition against hindsight bias, repeatedly emphasised in

judicial decisions, guards precisely against such mechanical

analysis. In evaluating whether the Suit Patent is obvious, this

Court must remain vigilant against the use of hindsight bias, a

cognitive trap that distorts legal analysis by judging the state of

prior art with knowledge of the invention already in hand.

101. Hindsight bias refers to the tendency to view past

events as having been more predictable than they actually were.

In the context of patent law, it manifests when the claimed

invention is dissected into known components, and then those

components are re-combined with the benefit of knowing the

invention's outcome, thereby undermining the statutory

requirement of a true inventive step. Thus, the test for inventive

step must not be applied in a retrospective manner.

102. In the present case, the Defendant's approach, while

tenacious, ultimately reflects an ex-post reconstruction rather

than a credible roadmap that a PSA would have followed on the

priority date. The Defendant's approach leans dangerously close

to reconstructing the invention with full awareness of the claims

in the Suit Patent. The reliance on disparate documents, none of

which individually suggest or motivate the claimed configuration

of a co-extruded tracer cable on the outer surface of a fluid-

carrying pipe, seeks to piece together a mosaic that only takes

shape with the end result in view. Such retrospective

rationalisation fails the legal threshold for obviousness.

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CMA(PT) No. 54 of 2024

103. To avoid hindsight, the correct inquiry is not whether

the invention can be deconstructed into known parts, but whether

a person skilled in the art, without knowledge of the invention,

would have had any reason, motivation, or expectation of success

in combining the teachings of the cited prior art documents in the

claimed manner. On this test, the Defendant's challenge falls

short. None of the prior art references provide any teaching or

suggestion that a co-extruded tracer cable on the outer surface of

a non- metallic pipe for fluid transport, encased in polymer, would

address known problems of traceability and leakage detection.

Nor do they offer insight into the structural and functional

benefits that such a configuration would deliver. In fact, as noted

earlier, some prior arts such as Exhibit DW2/1 actively

discourage surface-mounted elements due to coupling

complications, suggesting a technological trajectory contrary to

what the Plaintiff's invention adopted.

10. The learned counsel for the appellant contended that the authority has

to examine whether the appellant has complied with the mandatory legal

requirements. To strengthen his case, the learned counsel further relied upon the

judgment of the Delhi High Court in Nippon A & L Inc. vs. Controller of

Patents reported in 2022 SCC OnLine Del 1909, wherein, the Delhi High Court

has held in paragraph 55 as under:

"55. A perusal of the paragraphs of the Ayyangar Committee

Report clearly shows that the purport and intention of this report

was to give broader and wider permissibility for amendment of

claims and specification prior to the grant and restrict the same post

the grant and advertisement thereof. The report is also categorical

in its observation that the invention before and after amendment

need not be identical in case of amendment before acceptance "so

long as the invention is comprehended within the matter disclosed".

The learned counsel argued that as held in the above judgment, the inclusion of

features disclosed in the specification to narrow down claims should be

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CMA(PT) No. 54 of 2024

ordinarily allowed.

11. However, all these contentions are disputed by the respondent on

technical reasons, which are stated supra. The main reason putforth by the

Respondent for rejection of the patent application filed by the appellant is that

the appellant has not disproved the overlapping features in the present

application and the parent application. A comparison of the present application

and the parent application would show that the amended claims are nothing but

the features covered under the patent application which was originally filed by

the appellant. The key finding rendered by the respondent while rejecting the

claims is that the scope of the amended claims 1 to 12 are already covered by

the parent application and the said application is not granted patent rights. The

respondent has in detail analysed the amended claims and the prior art. That

apart, the reasoning given by the respondent for their finding that the amended

claims do not meet the requirements under Section 2(1)(ja), 59(1) and 16(2) of

the Patents Act is also satisfactory. In view of the above, the impugned order

passed by the respondent does not suffer from any lacuna and hence the civil

miscellaneous appeal is liable to be dismissed.

12. Accordingly, this appeal is dismissed. However, there is no order as to

costs.

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CMA(PT) No. 54 of 2024

05-01-2026

Asr

Index:Yes/No

Speaking/Non-speaking order

Internet:Yes

Neutral Citation:Yes/No

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CMA(PT) No. 54 of 2024

N.SENTHILKUMAR J.

Asr

To

Joint Controller of Patents and Designs

The Patent Office, Chennai,

Intellectual Property Office Building,

G.S.T.Road, Guindy,

Chennai-600 032

CMA(PT) No. 54 of 2024

05-01-2026

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