No Acts & Articles mentioned in this case
LPA 836/2023 Page 1 of 66
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 3 April 2025
Pronounced on: 6 October 2025
+ LPA 836/2023, CM APPL. 66718/2023, CM APPL.
66719/2023, CM APPL. 66720/2023, CM APPL. 66721/2023 &
CM APPL. 66722/2023
TAPAS CHATTERJEE .....Appellant
Through: Mr. Pravin Anand, Ms. Prachi
Agarwal, Ms. Arpita Kulshrestha and Ms.
Elisha Sinha, Advs.
versus
ASSISTANT CONTROLLER OF PATENTS
AND DESIGNS & ANR. .....Respondents
Through: Mr. Vijay Joshi, Mr. Kuldeep
Singh and Mr. Shubham Chaturvedi, Advs.
for R-1
Ms. Vindhya S. Mani, Mr. Ritvik Sharma,
Ms. Naina Gupta, Mr. Bhuavan Malhotra,
Ms. Surbhi Nautiyal, Ms. Harshita Agarwal,
Mr. Devesh Aswal and Ms. Vedika Singhvi,
Advs. for R-2
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE AJAY DIGPAUL
JUDGMENT
% 06.10.2025
C. HARI SHANKAR, J.
LPA 836/2023 Page 2 of 66
Facilitative Index to the Judgment
S. No. Subject Para Nos
1 Opening para 1
2 The lis 2 – 5
3 Facts
4 Details of subject invention
5 Objects of the invention 6.1
6 Background of the Invention 6.2
7 Summary of the Invention 6.3
8 Detailed Description of the Invention 6.4.1 – 6.4.5
9 Claims in the subject application 6.5
10 Reference to FER 7
11 Pre-grant opposition of CSIR 8.1 – 8.4
12 Response of appellant to objections of
CSIR
9
13 Findings of the AC 10
14 The Impugned Judgment 11
15 Prior Art Documents D1 and D2
16 Prior Art Document D1 – US Patent
0157945/2018
13.1.1 – 13.1.2
17 Prior art document D2 – “Guide for
Treatment of Distillery Effluents” issued
by the BIS (IS:8032-1976)
13.2
18 Rival Contentions 14 – 15
19 Analysis
20 Opening para 16
21 Finding of AC re. novelty vis-à-vis finding
re. inventive step
17.1 – 17.8
22 (Miscellaneous paras) 18 – 19
23 Laconic findings by the AC 20.1 – 20.11
24 Findings in the impugned judgment re.
Section 25(1)(e)
21 – 21.5
25 Apropos prior art document D1 21.1.1 – 21.1.13
26 Apropos prior art document D2 21.2.1 – 21.2.3
27 Re. combination of D1 and D2 21.3
28 The test in F. Hoffmann La Roche – 21.4.1 – 21.4.5
LPA 836/2023 Page 3 of 66
erroneous application in the impugned
judgement
29 The sequitur 21.6
30 Findings in the impugned judgment re.
Section 3(d)
22 – 22.8
31 Conclusion 23 - 25
1. An invention, in order to be patentable under the patent regime
in this country, has to demonstrate an inventive step in its creation,
vis-à-vis earlier inventions and the existing knowledge in the field –
referred to, in patenting terminology, as “prior art”. Any product or
process which is not “inventive”, or is “obvious”, when compared to
prior art, is ipso facto not patentable. This obviousness has to be
examined from the mythical eye of a “person skilled in the art”. There
are, unfortunately, no guidelines to steer this process, in the Patents
Act, 1970. The result is that the Examiners in the office of the
Controller General of Patents, Designs and Trade Marks
1
routinely
decide applications for registration of patents, as well as oppositions
to such applications, in a rule of thumb manner, purely on the basis of
their subjective opinions. This is, clearly, a thoroughly legally
unsatisfactory position. The present case is a classic illustration of the
inherent perniciousness in such a system.
The lis
2. The appellant Tapas Chatterjee filed Application No
201911036748
2
on 12 September 2019 for registration of a process
1
“CGPDTM” hereinafter
2
“the subject application” hereinafter
LPA 836/2023 Page 4 of 66
patent for “Recovery of Potassium Sulphate and other valuable
products from Spent Wash leading to ZLD
3
System”
4
. A pre-grant
opposition, to the application, was filed by the Council of Scientific
and Industrial Research
5
, opposing the application as being barred by
clauses (b), (e), (f) and (g) of Section 25(1)
6
of the Patents Act, 1970.
The objection under Section 25(1)(f) was further predicated on the
premise that the subject invention that the appellant sought to patent
was not patentable in view of clauses (a) and (d) of Section 3
7
of the
3
Zero Liquid Discharge
4
"the subject invention", hereinafter
5
"CSIR" hereinafter
6
25. Opposition to the patent. –
(1) Where an application for a patent has been published but a patent has not been granted,
any person may, in writing, represent by way of opposition to the Controller against the grant of
patent on the ground—
(a) that the applicant for the patent or the person under or through whom he claims,
wrongfully obtained the invention or any part thereof from him or from a person under or
through whom he claims;
(b) that the invention so far as claimed in any claim of the complete specification
has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent
made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub-clause (ii) shall not be available
where such publication does not constitute an anticipation of the invention by virtue of
sub-section (2) or sub-section (3) of Section 29;
*****
(e) that the invention so far as claimed in any claim of the complete specification is
obvious and clearly does not involve any inventive step, having regard to the matter
published as mentioned in clause (b) or having regard to what was used in India before
the priority date of the applicant's claim;
(f) that the subject of any claim of the complete specification is not an invention
within the meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed;
7
3. What are not inventions. – The following are not inventions within the meaning of this Act, —
(a) an invention which is frivolous or which claims anything obviously contrary to well-
established natural laws;
*****
(d) the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new property or
new use for a known substance or of the mere use of a known process, machine or apparatus unless
such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and
other derivatives of known substance shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy;
LPA 836/2023 Page 5 of 66
Patents Act. For the purposes of the objection under Section 25(1)(b)
and (e), CSIR relied on the following prior art documents:
Document
No.
Document Details Publication
Date
D1 US 20180257945A1 13 September
2018
D2 Indian Standard IS: 8032-1976
(reaffirmed 2003); “GUIDE FOR
TREATMENT OF DISTILLERY
EFFLUENTS”, published by Bureau
of Indian Standards
8
in August 1976
August 1976
D3 Management of Distillery
Wastewater; Central Pollution
Control Board, Ministry of
Environment & Forests
September 2001
D4 Sustainable methodology for
production of potassic fertiliser from
agroresidues: Case study using
empty cotton boll; Journal of Cleaner
Production
2 January 2019
3. By Order dated 28 December 2021, the Assistant Controller of
Patents & Designs
9
rejected the opposition of CSIR under (i) Section
25(1)(b), (ii) Section 25(1)(f) to the extent it asserted that the subject
invention was not patentable in view of Section 3(a), and (iii) Section
25(1)(g), but upheld the opposition of CSIR under (i) Section 25(1)(f)
to the extent it asserted that the subject invention was not patentable
in view of Section 3(d), and (ii) Section 25(1)(e). Resultantly, the AC
rejected the subject application.
4. The appellant appealed, against the rejection of its application
by the AC, by way of CA (Comm IPD-PAT) 18/2022, under Section
8
"BIS" hereinafter
9
"the AC" hereinafter
LPA 836/2023 Page 6 of 66
117A of the Patents Act. By judgment dated 10 March 2023, a learned
Single Judge has dismissed the appeal.
5. The present appeal assails the said decision.
Facts
6. Details of the subject invention
6.1 Object of the invention
As we have already noted, the subject invention was for a process
patent, titled “Recovery of Potassium Sulphate and other valuable
products from Spent Wash leading to ZLD System”. According to the
details contained in the complete specifications relating to the subject
invention, the aim of the invention was recovery of potassium
sulphate, magnesium sulphate, activated carbon and other value-added
products, which could be used either as fuel or as cattle feed from the
effluent from the molasses-based alcohol distillery, in such a manner
as to attain zero liquid discharge.
6.2 Background of the Invention
In the “Background of the Invention”, as contained in the complete
specifications of the subject application, it was stated that alcohol
distilleries were among the most notorious of water polluting
industries, and one of the main sources of such pollution was the
LPA 836/2023 Page 7 of 66
effluent resulting from molasses-based alcohol distilleries, commonly
known as “spent wash”. Though there existed prior patents aimed at
recovering potash-based fertilizer from spent wash, they had
shortfalls, which the subject invention sought to address.
Additionally, the subject invention also sought to recover other value
added by products. The Complete Specifications referred, in this
context, to US Pat 1400192, the “GUIDE FOR TREATMENT OF
DISTILLERY EFFLUENTS”, published by the BIS, European Patent
2751028 and PCT
10
Publication WO 2017/042832, and concluded
thus:
“It has been felt that all of the aforesaid prior arts do not lead to a
simple and economical process for recovery of potassium sulphate
and other value-added products from molasses-based alcohol
distillery effluent. Thus, the need to provide a process for simple
and economical recovery potassium sulphate and other value-
added products from molasses-based alcohol distillery effluent.”
6.3 Summary of the Invention
The “Summary of the Invention”, as contained in the Complete
Specifications of the subject invention, read thus :
“Accordingly, the present invention relates to a process recovery
potassium sulphate and other value added products from molasses
based alcohol distillery effluent. The process comprises removing
high molecular weight organic compounds from the spent wash to
obtain a first liquid fraction. The process further comprises
concentrating the first liquid fraction to obtain a first solid fraction.
The process further comprises subjecting the first solid fraction to
thermal decomposition to obtain a second solid fraction. The
process further comprises dissolving the second solid fraction in a
10
Patent Cooperation Treaty
LPA 836/2023 Page 8 of 66
solvent to obtain a second liquid fraction. The process further
comprises recovering potassium sulphate from the second liquid
fraction.”
6.4 Detailed Description of the Invention
6.4.1 The “Detailed Description of the Invention” was provided, in
the Complete Specifications, with respect to the following 2 Figures,
apropos which it was specified that Figure 1 demonstrated “the
process for recovering potassium sulphate in accordance with an
embodiment of the invention” and Figure 2 demonstrated “a more
detailed process for recovering potassium sulphate, magnesium
sulphate, activated carbon, high molecule weight organic compounds
and water in accordance with an embodiment of the invention”:
Figure 1
LPA 836/2023 Page 9 of 66
Figure 2
LPA 836/2023 Page 10 of 66
6.4.2 The various processes specified in the “Detailed Description of
the Invention” may be enumerated thus:
LPA 836/2023 Page 11 of 66
(i) Spent Wash was treated with acid, resulting in the third
liquid fraction
11
. This third liquid fraction was filtered, resulting
in the production of high molecular weight organic compounds
and the first liquid fraction.
(ii) The high molecular weight organic compounds were
dried. This produced a powder which had less than 12%
moisture and calorific value 3300 kcal/kg. This powder was
usable as cattle feed / fuel.
(iii) The first liquid fraction was evaporated, resulting in the
production of slurry and vapour. The slurry was dried, thereby
producing the first solid fraction.
(iv) The vapour which emerged from evaporation of the first
liquid fraction could be condensed, thereby producing water
which was re-usable either by itself or after purification. Thus,
the process was one of Zero Liquid Discharge.
(v) The first solid fraction was subjected to thermal
decomposition in anaerobic conditions at a temperature of 320-
350°C, resulting in the second solid fraction. This second solid
fraction was dissolved in 20 to 30% water, which produced a
second liquid fraction.
11
“Third liquid fraction” as the “first” and “second” liquid fractions already found reference in the “Summary
of the Invention”.
LPA 836/2023 Page 12 of 66
(vi) The second liquid fraction could be subjected to one of
the following two processes:
(a) The second liquid fraction could be crystallised,
which resulted in the first Mother Liquor. This first
Mother Liquor, if filtered, produced potassium sulphate
and the first filtrate. The first filtrate, when concentrated
and / or dried, resulted in the production of magnesium
phosphate.
(b) Alternatively, the second liquid fraction could be
filtered, which would result in the production of activated
carbon of calorific value approximately 5500 kcal/kg,
which could be used as fuel.
6.4.3 We may divide these processes into
(i) the process which resulted in the production of potassium
sulphate, and
(ii) the process which resulted in the production of other
value added products.
6.4.4 The production of potassium sulphate from Spent Wash
involved the following steps. Spent Wash was treated with acid,
resulting in the third liquid fraction. The third liquid fraction was
filtered, resulting in production of high molecular weight organic
compounds and the first liquid fraction. The first liquid fraction was
evaporated, producing slurry and vapour. The slurry was dried,
LPA 836/2023 Page 13 of 66
resulting in the first solid fraction. The first solid fraction was
subjected to thermal decomposition in anaerobic conditions at a
temperature of 320-350°C resulting in the second solid fraction. The
second solid fraction was dissolved in 20-30% water resulting in the
second liquid fraction. The second liquid fraction was crystallised,
producing the first Mother Liquor. The first Mother Liquor, when
filtered produced potassium sulphate.
6.4.5 The production of the value added by-products followed the
following steps:
(i) The high molecular weight organic compounds, produced
on filtration of the third liquid fraction, on being dried, resulted
in the production of powder with less than 12% moisture and
calorific value 3300 kcal/kg, which was usable as cattle feed /
fuel.
(ii) The vapour resulting in the evaporation of the first liquid
fraction, on condensation, resulted in the production of water
which was re-usable either by itself or after purification.
(iii) The first filtrate, which emerged after filtration of the first
Mother Liquor, on concentration and / or dry, produced
magnesium sulphate.
LPA 836/2023 Page 14 of 66
(iv) The second liquid fraction, on filtration, produced
activated carbon with calorific value approximately 5500
kcal/kg, which was usable as fuel.
6.5 Claims in the subject application
The subject application contained the following claims:
“1. A process (100) for recovering potassium sulphate and
other value added product from distillery spent wash, said process
comprising:
a. removing (102) high molecular weight organic
compounds from the spent wash to obtain a first liquid
fraction;
b. concentrating (104) the first liquid fraction to obtain
a first solid fraction;
c. subjecting the first solid fraction to thermal
decomposition (106) to obtain a second solid fraction;
d. dissolving (108) the second solid fraction in a
solvent to obtain a second liquid fraction; and
e. recovering (110) potassium sulphate from the
second liquid fraction.
2. The process as claimed in claim 1, wherein the step of
removing (102) high molecular weight organic compounds from
the spent wash to obtain the first liquid fraction comprises:
a. adding (202) acid to the spent wash to obtain a third
liquid fraction; and
b. filtering (204) the third liquid fraction to obtain high
molecular weight organic compounds and the first liquid
fraction.
3. The process as claimed in claim 2, wherein the high
molecular weight organic compound thus obtained is dried (206) to
obtain powdered high molecular weight organic compounds.
4. The process as claimed in claim 1, wherein the step of
concentrating (104) the first liquid fraction to obtain the first solid
fraction comprises:
LPA 836/2023 Page 15 of 66
a. evaporating (208) the first liquid fraction to obtain a
slurry and a vapour phase; and
b. drying (210) the slurry to obtain the first solid
fraction.
5. The process as claimed in claim 4, wherein the vapour
phase water is condensed (212) to obtain re-usable water.
6. The process as claimed in claim 1, wherein the thermal
decomposition (106) is performed in anaerobic conditions.
7. The process as claimed in claim 1, wherein the step of
dissolving (108) the second solid fraction in the solvent to obtain
the second liquid fraction comprises dissolving (108) the second
solid fraction in 20-30% water.
8. The process as claimed in claim 1, wherein the step of
recovering (110) potassium sulphate from the second liquid
fraction comprises:
a. subjecting the second liquid fraction to
crystallization (216) to obtain a first mother liquor; and
b. filtering (218) the first mother liquor to obtain
potassium sulphate and a first filtrate.
9. The process as claimed in claim 8, wherein magnesium
sulphate is recovered by concentrating (220) and/or drying (222)
the first filtrate.
10. The process as claimed in claim 1, wherein activated
carbon is further recovered from distillery spent wash.
11. The process as claimed in claim 10, wherein the activated
carbon is recovered from the second liquid fraction.
12. The process as claimed in claim 11, wherein the activated
carbon is recovered from the second liquid fraction by filtering
(224) the second liquid fraction.”
7. Though, after the filing of the aforesaid application by the
appellant before the Controller of Patents, a First Examination
LPA 836/2023 Page 16 of 66
Report
12
was issued by the Controller on 25 February 2020, and a
reply to the FER was submitted by the appellant on 27 March 2020,
the order passed by the AC, which formed subject matter of challenge
before the learned Single Judge, does not adjudicate the FER, but only
adjudicates a subsequent pre-grant opposition filed by CSIR.
8. Pre-grant opposition of CSIR
8.1 CSIR, in its pre grant opposition, opposed the application of the
appellant, by invoking clauses (b), (e), (f), (g) of Section 25(1) of the
Patents Act. It contended that
(i) Section 25(1)(b) applied, as the subject invention was not
novel,
(ii) Section 25(1)(e) applied, as the subject invention was
obvious from existing prior art and did not involve any
inventive step,
(iii) Section 25(1)(f) applied, as
(a) the subject invention was not patentable under
Section 3(a) and
(b) the subject invention was not patentable under
Section 3(d), and
(iv) Section 25(1)(g) applied, as the complete specifications
did not sufficiently and clearly describe the invention or the
method by which it was to be performed.
12
“FER”, hereinafter
LPA 836/2023 Page 17 of 66
8.2 Of these objections, the AC has upheld only the objection
relatable to Section 25(1)(e) and Section 25(1)(f) read with Section
3(d). All other objections have been rejected. This is thus noted in the
order passed by the AC:
“After going through both the submissions (by the Applicant & by
the Opponent), the office reaches to the following conclusions:-
(i) The Opponents view on Sec. 25 (1) (b) i.e. “the subject
matter of the impugned Application is not novel”, does not contains
any merit, as neither D1 nor D2, discloses all the features of the
impugned application.
(ii) Opponents view on Sec. 25 (1) (f) i.e. “the subject matter of
the impugned Application is not patentable under Section 3(a) of
the Act”, does not contains any merit.
(iii) The office disagrees with the opponents view on Sec. 25 (1)
(g) i.e. “the complete specification of the impugned Application
does not sufficiently and clearly describe the invention or the
method by which it is to be performed”.
(iv) The office is in the same opinion with the opponent view on
Sec. 25 (1) (f) i.e. “the subject matter of the impugned Application
is not patentable under Section 3(d) of the Act”. The applicant
argues that, as the claims of impugned application are Novel, does
not fall within the ambit of section 3(d). But, as the process of the
impugned application does not involve any new reactant nor results
in a new product, and hence, the claims of impugned application
are not allowable u/s 3(d) of The Patent Act 1970.
(v) The Opponents view on Sec. 25 (1) (e) i.e. “the subject
matter of the impugned Application is obvious and does not
involve any inventive step”, do holds merit.”
8.3 The learned Single Judge, as also this Bench, is concerned only
with the sustainability of the order passed by the AC, insofar as it
upholds CSIR’s opposition to the patentability of the subject invention
LPA 836/2023 Page 18 of 66
under Section 25(1)(e) and under Section 25(1)(f) read with Section
3(d), of the Patents Act.
8.4 The oppositions raised by CSIR with reference to Section
25(1)(e) and with respect to Section 25(1)(f) read with Section 3(d)
have been recorded by the AC thus, in his order:
Objection of CSIR under Section 25(1)(e)
“Opponents view on Sec. 25 (1) (e) i.e. the subject matter of the
impugned Application is obvious and does not involve any
inventive step:
The Opponent made the submissions that the claims of the
impugned Application lacks inventive step in view of the
Document D1 or the Document D2 alone. This is because in view
of the Document D1 or the Document D2 there is no technical
advance or economic significance whatsoever identified in claim 1
of the impugned Application, as mandated under Section 2(1)(ja)
13
of the Act. Any person skilled in the art trying to address the
problem of the impugned Application at the date of priority would
surely start with the Document D1 or the Document D2 and will be
able to arrive at the claimed invention of the patentee with no
additional teaching needed from any other document. It is
submitted that the Document D1 or the Document D2 has clear
teaching that its disclosure can be directly applied to arrive at the
claimed invention of the impugned Application. Thus, claim 1
lacks inventive step in view of the Document D1 or the Document
D2 alone or in combination. [ref. Table-II, internal pages 15-21 of
the as filed pregrant opposition.]
The Opponent further relied upon the Documents D3 and D4 for
the content of various ions in the spent wash and for recovering
potassium sulphate, potassium chloride & NaCl/KCl mixed salt
from a solution containing sodium, potassium, sulphate & chloride
ions, by employing fractional crystallisation technique.
13
2. Definitions and interpretation. –
(1) In this Act, unless the context otherwise requires,—
*****
(ja) “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;
LPA 836/2023 Page 19 of 66
Documents D1 and D2 are analogous and relevant prior art
document and is reasonably pertinent to the problem, albeit
artificial, sought to be addressed by a person skilled in the art and
therefore a person skilled in the art will peruse the Documents D1
and D2 in the context of obtaining process (100) for recovering
potassium sulphate and other value added product from distillery
spent wash.
The Opponent summarized that, in essence, claim 1 of the
impugned Application is a mere compilation of methodologies
revealed in the above mentioned cited prior art documents and does
not show any technical advance or economic significance
whatsoever in the light of the said prior art documents. Further, a
person skilled in art can easily arrive at the process, as claimed in
claim 1 of the impugned Application, following the disclosure in
the above mentioned cited prior art documents.
The Opponent submitted that claim 1 of the impugned Application
ought to be rejected for being obvious in the light of, and without
prejudice to each other, disclosures made in D1 alone, D2 alone,
D1-D2 in combination, D3 in combination with D1 or D2 or both,
D4 in combination with D1 or D2 or both and D1-D4 combined.
Without prejudice, the Opponent also submitted that, due to
absence of experimentation in the impugned application, the
technical leap or economical significance of the invention cannot
be concluded. The Opponent also submitted that the Applicant
failed to adduce any data in the complete specification of the
impugned Application and therefore failed to establish any
technical advance or economic significance in the claimed
invention.”
Objection of CSIR under Section 25(1)(f) read with Section 3(d)
“Opponents view on Sec. 25 (1) (f) i.e. the subject matter of the
impugned Application is not patentable under Section 3(d) of
the Act:
The Opponent argued that the invention as claimed in claims 1 to
11 of the impugned Application squarely falls within the scope of
Section 3(d) of the Act as being a mere use of a known process or
machine or apparatus without resulting in a new product or
employing at least one new reactant. The process used in the claim
is essentially removing, concentrating, subjecting, dissolving,
recovering and using known solvents. Thus, there are no new
reactants. Even if the alleged product is assumed to be allegedly
LPA 836/2023 Page 20 of 66
obtained i.e. purified/fertiliser grade potassium sulphate, it is well
known. Further, there is no proof for obtaining “so-called”
fertilizer grade potassium sulphate. Therefore, it was asserted that
the impugned Application ought to be set aside on this ground
alone. The Opponent submitted that the disclosure in the cited prior
art documents D1 to D4 clearly established that the claimed
invention in the instant Application amounts to nothing more than
mere use of a known process and is therefore not liable to proceed
to grant.”
9. Response of appellant to objections of CSIR
The submissions of the appellant, in response to the aforesaid
objections raised by CSIR, are thus recorded in the order of the AC:
“The applicant submits the difference between impugned
Application w.r.t the prior art disclosure as follows:
D1 indicates treatment with acid as the starting point for the
treatment of BMSW. By the treatment of BMSW with acid, the
document teaches removal of sludge. On the other hand, it can be
seen that the FIRST PROCESS as described in D2 involved
concentration and incineration of molasses spent wash. Thus,
neither treatment with acid is performed nor sludge is removed. On
the other hand, the spent wash after concentration is incinerated
and hence, no sludge is even removable. Thus, the teachings of the
FIRST PROCESS are contradicting the teachings of D1. Thus, the
teachings of the FIRST PROCESS as contained in D2 cannot be
even remotely combined with the teachings of the D1.
It can be seen that “dilution, acidification and heating is performed
ON MOLASSES PRIOR TO FERMENTATION” as per the
teachings of the THIRD PROCESS of D2. Thus, this process is
also contradicting the teachings of D1 and hence, even the THIRD
PROCESS of D2 cannot be combined with the teachings of D1.
Now coming to the FOURTH PROCESS as disclosed in D2, it can
be seen that FOURTH PROCESS involves neutralization with
lime. It can be furthermore observed that neutralization of the spent
wash as per the teachings of FOURTH PROCESS of D2 does not
result in formation and separation of sludge. Thus, the teachings of
the FOURTH PROCESS are contradicting the teachings of D1.
LPA 836/2023 Page 21 of 66
Thus, the teachings of the FOURTH PROCESS as contained in D2
cannot be even remotely combined with the teachings of the D1.
From the above, it can be seen that at the first stage itself, the
processes as disclosed in D2 are contradicting the teachings of D1.
Thus, there is no motivation to combine the teaching of the D1 and
D2.
It can be furthermore seen that out of the four processes described
in D2, two of the processes namely the SECOND and the THIRD
PROCESSES are not even dealing with spent wash (rather they
deal with MOLASSES). The remaining two processes described in
D2, namely the FIRST and the FOURTH PROCESSES are
involving incineration of the spent wash and recovery of potash
from ash whereas document the basic intent of D1 is to “separate
the organics from the Spent wash to the maximum possible extent
and then obtain potash from the liquid left behind”. D1 never
follows the principle of burning of the spent wash as by doing so,
the organics cannot be recovered. Thus, even conceptually, the
teachings of D1 is contradicting the teachings of FIRST and the
FOURTH PROCESSES as described in D2 and hence, POSITA
while reading D1 and D2 (which contain contradicting teachings),
is neither motivated nor prompted into combining the teachings of
the two documents.”
10. Findings of the AC
Following this, the findings of the AC are, to say the least, laconic,
and read thus:
“The office is in the same opinion with the opponent, as BMSW is
the aqueous effluent obtained upon anaerobic digestion of Spent
Wash (SW) and the process as disclosed in either D1 and/or D2 is
substantially similar. Moreover, the steps (b), (c), (d) & (e) of
Claim 1 of the impugned application are standard chemical process
plant operations, viz., concentration, thermal decomposition,
dissolution & recovery; and is obvious for a person skilled in the
art after going through the disclosures made in D1 alone, D2 alone,
D1-D2 in combination, D3 in combination with D1 or D2 or both,
D4 in combination with D1 or D2 or both and D1-D4 combined;
and hence the present set of claims (claim 1-11) does not involve
any inventive merits.
LPA 836/2023 Page 22 of 66
As the later submitted data (along with the reply to Hearing u/s
25(1)) was not present at the time of filing the as filed
specification, the same has not been taken on record.
Therefore, the office accepts the representation filed by the
opponent under section 25(1) & rule 55(1) and refuses the patent
Application No. 201911036748 for grant of patent under Rule
55(6).”
11. The Impugned Judgment
Aggrieved by the aforesaid order passed by the AC, the appellant
appealed to the Intellectual Property Division of this Court by way of
C.A.(COMM.IPD-PAT) 18/2022 which has been decided by the
impugned judgment dated 10 March 2023, as under:
“Objection under Section 3(d) of the Act
*****
11. At the outset, it may be noted that the subject patent
application is directed towards a set of processes and not towards a
particular substance. …
12. Even though Section 3(d) of the Act makes a reference to
“known process”, in my view, the term “known process” would
also include multiple known processes, which is the case in the
present appeal.
13. In terms of Section 3(d) of the Act, a patent can be granted
in respect of a “known process” only when such a “known process”
results in a new product or employs at least one new reactant.
There is a material difference between the terminology “discovery
of a new form of a known substance” and “mere use of a known
process”. In the case of discovery of new form of a known
substance, the patent can be granted only if the said new form
results in enhancement of the known efficacy of the substance,
whereas there is no such provision for enhancement of known
efficacy in respect of known processes. Therefore, the scope for
patentability of processes is narrower than substances.
LPA 836/2023 Page 23 of 66
14. A perusal of the cited prior art documents, D1 and D2,
would demonstrate that the processes used in the subject invention
are nothing more than a mere use of a combination of known
processes. All the processes that are a part of the claims of the
subject patent application are disclosed in the cited prior art
documents, D1 and D2. Further, the appellant is not using any new
reactant in the said processes, nor is the final process resulting in
the creation of a new product. The end product in all the prior art
documents as well as the subject patent application is the same,
Potassium Sulphate.
15. The only difference in the subject patent and the cited prior
arts is that the appellant claims that the process adopted by them is
a zero liquid discharge process, whereas the processes described in
the prior arts result in the discharge of effluents. It is the claim of
the appellant that because the subject patent is zero discharge
process, it does not need any further treatment, and results in
commercially usable potassium sulphate and water.
16. In my view, the useful product being produced by the
subject patent is still the same, Potassium Sulphate and the
individual processes claimed by the appellant are known in the art.
Therefore, this argument of the appellant also does not overcome
the objection raised by the Controller under Section 3(d) of the
Act.
17. Counsel for the appellant has placed reliance on the
judgement of the Coordinate Bench of this Court in D.S.
Biopharma Limited
14
. The aforesaid judgement was in the context
that the Controller had not provided the details of a “known
substance” on account of which objection under Section 3(d) of
the Act was raised. Therefore, it was observed that appellant was
not given adequate opportunity to deal with the objection under
Section 3(d) of the Act. Accordingly, in the absence of proper
identification of the “known substance” in the hearing notice and
lack of opportunity being given therein, the impugned order was
set aside. The relevant extract of the said judgement is set out
below:
“19. Therefore, holistically read, the Appellant has not
had adequate opportunity to deal with the objection under
Section 3(d) in as much as apart from merely specifying the
said objection for the first time in the hearing notice, the
14
D.S. Biopharma Ltd v Controller, 2022 SCC OnLine Del 3211
LPA 836/2023 Page 24 of 66
manner in which the said objection was attracted was
completely absent. 20. In the absence of the proper
identification of the known substance in the hearing notice
and a lack of proper opportunity being afforded to respond
to the objection under Section 3(d), the impugned order is
not sustainable.”
18. The invention in the subject application deals with a
process patent and not a product patent. Further, the details of the
known processes are provided in the prior art documents referred
in the hearing notice. Therefore, the judgment in D.S. Biopharma
would be of no assistance to the appellant.
19. The appellant also relies on an extract from Patent Law by
P. Narayanan (4th Edition) to support their case that the subject
invention constitutes patentable subject matter. The said extract is
set out below:
2-27 Process patents. The definition of invention includes
an art or process of manufacture Thus processes are good
subject matter of patents. If the result of a new process is a
new article, or a better article, or a cheaper article than that
produced by old methods, the process is patentable,
provided of course that it required an exercise of the
inventive faculty to alternative method of arriving at the
same result, irrespective of whether that result is better
or cheaper, may be patentable. But a process to be
patentable must be a process which leads to some result and
the result arrived at must be useful, though it need not be an
article at all; for example, a new process for chemically
cleaning dirty linen would be good subject matter, but a
process of treating material, of which no result at all could
be predicated, would not be patentable.
20. The appellant also relies upon the Judgement in Catalysts &
Chemicals India v Imperial Chemical
15
, where it has been held
that even if the individual processes sought to be patented are not
novel, the patentability of the combination of the steps/processes
used should be considered. The relevant finding with respect to the
said judgement as given in P. Narayanan (4th Edition) is set out
below:
“It has been observed by the Controller General that
generally a process is considered to be new if (1) it
15
(1976) IPLR 84
LPA 836/2023 Page 25 of 66
results in a new product or (2) it uses new starting materials
or (3) it employs a novel combination of steps even if
such steps themselves may not be per se novel.”
21. In my considered view, the above argument also does not
overcome the objection raised under Section 3(d) of the Act, as the
language of Section 3(d) is clear to the effect that for a process to
constitute patentable subject matter, it needs to employ at least one
new reactant or result in the production of a new product. In the
present case, neither of the aforesaid two conditions have been met
by the appellant.
22. The claimed process in the claims 1 to 11 of the subject
patent application squarely falls within the scope of Section 3(d) of
the Act, as being a mere use of known processes, which are already
disclosed in the prior art documents, D-1 and D-2. Therefore, in
view of the discussion above, the subject invention is not
patentable under Section 3(d) of the Act. There is no infirmity in
the impugned order of the Controller that the subject invention is
not patentable as it squarely falls within the scope of the subject
matter excluded from patentability under Section 3(d) of the Act.
23. Even though the non-patentability under Section 3 of the
Act is in itself enough for refusal of the application for grant of a
patent, nevertheless, for the sake of completeness, I am also
examining the finding of lack of inventive step under Section
2(1)(ja) of the Act.
Objection of lack of inventive step
24. The relevant observations of the Controller are set out
below:
“The office is in the same opinion with the opponent, as
BMSW is the aqueous effluent obtained upon anaerobic
digestion of Spent Wash (SW) and the process as disclosed
in either D1 and/or D2 is substantially similar. Moreover,
the steps (b), (c), (d) & (e) of Claim 1 of the impugned
application are standard chemical process plant operations,
viz., concentration, thermal decomposition, dissolution &
recovery; and is obvious for a person skilled in the art after
going through the disclosures made in D1 alone, D2 alone,
D1-D2 in combination, D3 in combination with D1 or D2
or both, D4 in combination with D1 or D2 or both and D1-
D4 combined; and hence the present set of claims (claim 1-
11) does not involve any inventive merits.”
LPA 836/2023 Page 26 of 66
25. The Division Bench of this Court in F. Hoffmann-La
Roche Ltd. and Ors. v Cipla Ltd.
16
, has laid down the seminal test
to be followed for determining inventive step and lack of
obviousness. The steps involved in the said test are as follows:
“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 those 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 hindside approach”
26. In line with the steps listed above, at the appellate stage, for
determining inventive step, I shall start at Step 4 and identify the
differences, if any between the prior arts identified by the
Controller and the subject patent application.
27. In the present case, the following two prior arts have been
identified for the purposes of determining inventive step under
Section 2(1)(ja) of the Act:
D1: US20180257945 with publication date of 13
th
September, 2018
D2: Indian Standard IS: 8032-1976 (reaffirmed 2003);
“Guide For Treatment Of Distillery Effluents”, published
by BIS in August 1976
28. For analysing the aspect of inventive step, I shall, in brief
make a comparison of the subject patent application along with the
aforesaid two prior art references.
16
2016 (65) PTC 1 (Del)
LPA 836/2023 Page 27 of 66
Comparison with Prior Art D-1
29. The table below highlights the comparison of the subject
application and prior art D-1.
Independent Claims of the
subject patent
Disclosure in prior art
Document D1
A process (100) for
recovering potassium
sulphate and other value
added product from distillery
spent wash,
“[0010] Another object of the
invention is to recover
potassium from BMSW, to
produce multi-nutrient potassic
fertilizers viz., potassium
nitrate, potassium sulphate,
mono potassium phosphate
etc.” “[0012] Another object of
the invention is to utilise solid
waste for preparation of value-
added by-products.”
a. removing (102) high
molecular weight organic
compounds from the spent
wash to obtain a first liquid
fraction;
“[0016] (ii) clarification of
slurry from step (i), through in-
situ formation of aluminium
hydroxide gel to effect removal
of fine particulates, preferably
in multiple stages;”
b. concentrating (104) the
first liquid fraction to obtain a
first solid fraction; (step b)
“[0004] Reference may be made
to section 5.1.6.3 of Indian
Standard IS: 8032 -1976
(reaffirmed 2003) “GUIDE
FOR TREATMENT OF
DISTILLERY EFFLUENTS”,
which teaches about process for
the recovery of potash from
distillery spent wash. The
process involves neutralization
of spent wash followed by
concentration and incineration
to produce “spent wash coke”
which on combustion produces
ash. This ash is then leached
with water.”
LPA 836/2023 Page 28 of 66
c. subjecting the first solid
fraction to thermal
decomposition (106) to
obtain a second solid fraction;
(step c)
“[0026] (xii) production of
alumina rich activated carbon,
by pyrolysing and activating
the sludge from step (ii);”
d. dissolving (108) the second
solid fraction in a solvent to
obtain a second liquid
fraction; and (step d)
--
e. recovering (110) potassium
sulphate from the second
liquid fraction. (step e)
“[0010] Another object of the
invention is to recover
potassium from BMSW, to
produce multi-nutrient potassic
fertilizers viz., potassium
nitrate, potassium sulphate,
mono potassium phosphate
etc. [0023] (ix) removal of
residual tartrate, by treating the
potassium nitrate liquor [from
step (viii)] with calcium oxide
& nitric acid; [0024] (x)
crystallisation of potassium
nitrate (purity >99%), by
cooling/evaporating the
potassium nitrate liquor [from
step (ix)];”
30. It is clear from the table above that only two differences
emerge between the prior art D-1 and the subject patent
application. One, that the subject patent application incorporated
thermal decomposition and the prior art document D-1 utilizes
pyrolyzing. As per the International Union for Pure and Applied
Chemistry (IUPAC) Goldbook, “pyrolyzing” is the process of
thermal decomposition of materials at elevated temperatures in an
inert environment. Therefore, this difference in terminology is not
a technical difference but only usage of different words for the
similar processes.
31. The next difference is that Step d has not been covered by
the prior art. However, the mere dissolution of a solid (referred to
as second solid fraction in the patent application) in a solvent to
LPA 836/2023 Page 29 of 66
obtain a solution is a very well-known practice. Therefore, this
feature of claim 1 of the subject application can in no way be
termed to be satisfying inventive step criteria.
Comparison with Prior Art D-2
32. The table below highlights the comparison of the subject
application and prior art D-2.
Independent Claim of the
subject patent
Disclosure in Prior Art
Document, D-2
A process (100) for
recovering potassium
sulphate and other value
added product from distillery
spent wash, (step a)
“5.1.6.1 Recovery of potash by
concentration and incineration
of molasses spent wash was
practised abroad during the
First World Wars and up to late
thirties. Jackson reported
recovery of potash from beet
molasses. In 1945, Reich
described a process wherein by
dilution, acidification and
heating of molasses prior to
fermentation, about 88 percent
calcium salts could be
precipitated as calcium
sulphate. Activated carbon
and salts of potassium and
sodium could be obtained by
suitable treatment of spent
wash. Activated carbon and
salts of potassium and
sodium could be obtained by
suitable treatment of spent
wash.
5.1.6.3 Chakrabarty and
Bhaskaran carried out a pilot
plant study to recover
potassium salts from spent
wash of a molasses distillery
in India.
b. concentrating (104) the
first liquid fraction to obtain a
first solid fraction;
5.1.6.1 Recovery of potash by
concentration and
incineration of molasses
LPA 836/2023 Page 30 of 66
(step b)
c. subjecting the first solid
fraction to thermal
decomposition (106) to
obtain a second solid
fraction;
(step c)
spent wash was practised
abroad during the First World
Wars and up to late thirties... In
this process, raw spent wash
was neutralized with lime
and evaporated to about 75
percent solids in a forced
circulation evaporator under
vacuum by duplicating a
multiple-effect system (step b).
Thick liquor was burnt in an
incinerator (step c) where the
spent wash was converted to
a substance called 'spent
wash coke, which burnt itself
under the grates of the
incinerator and turned into ash,
thereby supplying necessary
heat required for the incoming
thick liquor.
Para 5.1.6.1 on page 150 of the
appellant's documents with the
appeal.
d. dissolving (108) the
second solid fraction in a
solvent to obtain a second
liquid fraction; and
(step d)
The ash was collected and
leached with water by which
all the soluble potassium and
sodium salts dissolved in it,
leaving behind iron, silica,
calcium and other impurities
in the residue.
Para 5.1.6.3. line 10 page 151
of the appellant’s documents
filed with the Appeal.
e. recovering (110)
potassium sulphate from the
second liquid fraction (step
e)
The solution was alkaline due
to the presence of potassium
carbonate, which was filtered
and neutralized with sulphuric
acid and further concentrated
in the evaporator. Potassium
salts in the form of chloride
and sulphate were crystallized
from the concentrated solution
in the crystallizer.
LPA 836/2023 Page 31 of 66
Para 5.1.6.3. line 12 page 151
of the appellant’s document
filed with the Appeal.
33. The above table captures the similarities between the
subject patent application and the prior art document D-2. It is
pertinent to note that the prior art document D-2 is a standard
document and not a patent document.
34. From the table above, it emerges that there is hardly any
difference between the prior art D-2 and the subject patent
application.
35. In light of the comparisons above, it is clear that by
combining the teachings of the prior arts, D-1 and D-2, a person
skilled in the art would be able to come to the subject matter
claimed in the subject patent application.
36. The appellant has also claimed that the aforesaid prior arts
teach different processes and the teachings of both the prior arts
cannot be combined. With this claim, the appellant attempts to say
that combining prior arts, D-1 and D-2, is a hindsight analysis. The
relevant extract with regard to hindsight analysis in Avery
Dennison
17
is extracted as under:
“32. Some of the fundamental principles while analysing
inventive step and whether an invention is obvious or not
are:
i. That simplicity does not defeat an invention - even
simple inventions are patentable.
ii. The inventive step has to be assessed on the basis
of the date of priority of the subject patent and not
after the publication of the same i.e., it is not
permissible to do a hindsight analysis or an ex-post
facto analysis.”
37. In the present case, it cannot be said that the above analysis
is a hindsight reconstruction by using prior arts as both the prior art
documents, D-1 and D-2, have been referred to in the background
of the complete specification of the subject patent application
itself. Therefore, it cannot be said that there is no reason for a
person skilled in the art to combine the teachings of the two prior
art documents, given that the applicant is itself referring to both of
17
Avery Dennison Corporation v Controller of Patents & Designs, (2023) 93 PTC 26
LPA 836/2023 Page 32 of 66
them. In my considered view, no ground is made out to claim that
the analysis of inventive step has been guided by hindsight
reconstruction. Hence, the judgement in Avery Dennison (Supra)
relied upon by the appellant has no applicability in the present
case.
38. In terms of the discussion above, the subject patent
application does not appear to be constituting a technical
advancement, which would be non-obvious to a person skilled in
the art. Therefore, the refusal of the subject patent application by
the Controller on the ground of inventive step is justified.
39. In the overall facts and circumstances of this case, both the
grounds cited by the Controller for refusing the subject patent
application under Section 15 of the Act have been upheld. The
subject patent application is hit by non-patentability under Section
3(d) of the Act and lacks inventive step in terms of Section 2(1)(ja)
of the Act.”
12. Aggrieved by the aforesaid judgment of the learned Single
Judge, the appellant before the learned Single Judge has filed the
present Letters Patent Appeal.
13. Prior Art Documents D1 and D2
13.1 Prior art document D1 – US Patent application 2018/0257945
18
13.1.1 From the “field of the invention”, “background of the
invention” and “objects of the invention”, one may extract, for the
purposes of the dispute, the following paragraphs:
“FIELD OF THE INVENTION
[0001] The present invention provides process for potash recovery
from bio - methanated spent wash (BMSW, also known as post
18
“US’945” hereinafter
LPA 836/2023 Page 33 of 66
methanated effluent), generated in molasses based alcohol
distillery, with concomitant environmental remediation in terms of
colour, total dissolved solids (TDS), total organic carbon (TOC),
biological oxygen demand (BOD), chemical oxygen demand
(COD) etc.). In a broader perspective this invention enables
utilisation of indigenous potassic resource while addressing critical
environmental concerns.”
“BACKGROUND OF THE INVENTION
[0002] Molasses based alcohol distillery effluent is an extremely
complex system and poses significant challenge in developing
effective environmental remediation protocol. While use of this
effluent in land application, to take advantage of nutrient value of
constituent K, N and P have been reported in the literature and put
in practice, effort have also been made to recover potassium from
the effluent.”
“OBJECTS OF THE INVENTION
[0008] The main object of the invention is to devise a process for
potash recovery from alcohol distillery waste with concomitant
improvement of process effluent quality.
[0009] Another object of the invention is to use BMSW (also
known as post methanated effluent) as feedstock for production of
potash fertiliser.
[0010] Another object of the invention is to recover potas-sium
from BMSW, to produce multi - nutrient potassic fertilizers viz.,
potassium nitrate, potassium sulphate, mono potassium phosphate
etc.
[0011] Another object of the invention is to improve process
effluent quality vis-a-vis alcohol distillery waste in terms of
various environmental parameters, viz., odour, colour, TDS, TOC,
BOD, COD etc.
[0012] Another object of the invention is to utilise solid waste for
preparation of value - added by - products.”
LPA 836/2023 Page 34 of 66
13.1.2 The “Summary of the Invention” and the “Detailed Description
of the Invention”, in US’945, as contained in the complete
specifications of the said patent, read thus:
“SUMMARY OF THE INVENTION
[0014] The present invention provides a process for recovery of
potassium from BMSW with concomitant improvement of process
effluent quality. The process comprises following major steps:
[0015] (i) acid treatment of BMSW to generate carbon rich sludge;
[0016] (ii) clarification of slurry from step (i), through in - situ
formation of aluminium hydroxide gel to effect removal of fine
particulates, preferably in multiple stages;
[0017] (iii) precipitation of potassium bitartrate, by reacting the
supernatant liquid from step (ii) with partially (ca.50%) protonated
magnesium tartrate, following the general procedures as disclosed
in prior art;
[0018] (iv) recovery of residual tartrate as calcium tartrate, by
treating the supernatant liquid from step (iii) with calcium oxide &
hydrochloric acid / sulphuric acid;
[0019] (v) co - precipitation of gypsum & magnesium hydroxide,
by treating the supernatant liquid from step (iv) with calcium
oxide;
[0020] (vi) discharge of the supernatant liquid from step (v) as
process effluent for subsequent environmental remediation / water
recovery;
[0021] (vii) decomposition of absorbed organics, by calcining the
gypsum & magnesium hydroxide cake from step (v);
[0022] (viii) production of potassium nitrate liquor, by reacting the
potassium bitartrate [from step (iii)] with nitric acid and
magnesium hydroxide , following the general procedures as
disclosed in prior art;
[0023] (ix) removal of residual tartrate, by treating the potassium
nitrate liquor [from step (viii)] with calcium oxide & nitric acid;
LPA 836/2023 Page 35 of 66
[0024] (x) crystallisation of potassium nitrate (purity > 99%), by
cooling / evaporating the potassium nitrate liquor [from step (ix)];
[0025] (xi) regeneration of tartaric acid, by treating the calcium
tartrate [from step (iv) & step (ix) with sulphuric acid, and
subsequent reuse in step (iii) above, following the general
procedures as disclosed in prior art;
[0026] (xii) production of alumina rich activated carbon, by
pyrolysing and activating the sludge from step (ii);
[0027] (xiii) generating aluminium sulphate solution, by leaching
the alumina rich activated carbon obtained in step (xii) with
sulphuric acid, and recycling the same in step (ii), for in - situ
formation of aluminium hydroxide gel
[0028] (xiv) production of activated carbon through washing and
drying the solid carbon obtained in step (xiii).
*****
“DETAIL DESCRIPTION OF THE INVENTION
[0035] The present invention provides a process for recovery of
potassium from BMSW with concomitant improvement of process
effluent quality, such process comprising
[0036] (i) Addition of sulphuric acid into BMSW (containing ca.2
% K + w / v), under stirring, till pH is ca. 1.5;
[0037] (ii) addition of alluminium sulphate solution to the slurry
from step (i) under stirring, to maintain A13 + concentration
between 0.05 % -0.5 % (w / v), followed by addition of magnesium
hydroxide to the reaction mixture to adjust pH between 5.5-7.5;
[0038] (iii) precipitation of potassium bitartrate, by reacting the
supernatant liquid from step (ii) with partially (ca. 50%) protonated
magnesium tartrate, following the general procedures as disclosed
in prior art;
[0039] (iv) precipitation of residual tartrate as calcium tartrate, by
treating the supernatant liquid from step (iii) with calcium oxide &
sulphuric acid;
LPA 836/2023 Page 36 of 66
[0040] (v) co-precipitation of gypsum & magnesium hydroxide, by
treating the supernatant liquid from step (iv) with calcium oxide;
[0041] (vi) discharge of the supernatant liquid from step (V) as
process effluent for subsequent environmental remediation / water
recovery;
[0042] (vii) decomposition of absorbed organics, by calcining the
gypsum & magnesium hydroxide cake from step (v);
[0043] (viii) production of potassium nitrate, by reacting the
potassium bitartrate [solid obtained from step (iii)] with nitric acid
and magnesiumhydroxide / magnesium carbonate, following the
general procedures as disclosed in prior art;
[0044] (ix) regeneration of tartaric acid, by treating precipitated
calcium tartrate with sulphuric acid, and subsequent reuse in step
(iii) above, following the general procedures as disclosed in prior
art;
[0045] (x) production of alumina rich activated carbon, by thermo-
chemical processing of the sludge from step (ii);
[0046] (xi) production of aluminium sulphate solution by leaching
and washing the alumina rich activated carbon from step (x) with
sulphuric acid and recycling the same in step (ii), for in - situ
formation of aluminium hydroxide gel;
[0047] (xii) production of activated carbon by washing and drying
the solid residue from step (xi).
[0048] In another embodiment, acid treatment of BMSW resulted
in over 50% reduction of TOC in aqueous phase.
[0049] In another embodiment, hydrochloric acid and nitric acid
were used in lieu of sulphuric acid, for acid treatment of BMSW.
[0050] In another embodiment, in - situ precipitation of aluminium
hydroxide gel resulted in reduction in TOC of acid treated BMSW.
[0051] In another embodiment, co - precipitation of gypsum and
magnesium hydroxide from tartrate free BMSW resulted in
reduction of pollutant loading (expressed in terms of TDS, TOC,
BOD, COD etc.) in process effluent.
LPA 836/2023 Page 37 of 66
[0052] In another embodiment, sludge obtained upon acid
treatment and clarification of BMSW was thermo - chemically
processed to prepare activated carbon.”
13.2 Prior art document D2 – “Guide for Treatment of Distillery
Effluents” issued by the BIS (IS:8032-1976)
13.2.1 From the aforesaid guide, the various paragraphs which were
relied upon by CSIR to support its assertion that there was no
inventive steps involved in the subject invention, vis-à-vis prior art,
and which have also been relied upon by the learned Single Judge, are
the following:
“5.1.6.1 Recovery of potash by concentration and incineration of
molasses spent wash was practised abroad during the First World
War and upto to late thirties, Jackson reported recovery of potash
from beet molasses. In 1945, Reich described a process wherein by
dilution, acidification and heating of molasses prior to
fermentation, about 88 percent calcium salts could be precipitated
as calcium sulphate. Activated carbon and salts of potassium and
sodium could be obtained by suitable treatment of spent wash.
*****
5.1.6.3 Chakrabarty and Bhaskaran carried out a pilot plant study
to recover potassium salts from spent wash of a molasses distillery
in India. In this process, raw spent wash was neutralized with lime
and evaporated to about 75 percent solids in a forced circulation
evaporator under vacuum by duplicating a multiple-effect system.
Thick liquor was burnt in an incinerator where the spent wash was
converted to a substance called ‘spent wash coke’, which burnt
itself under the grates of the incinerator and turned into ash,
thereby supplying necessary heat required for the incoming thick
liquor. The process was continuous and self-supporting. The ash
was collected and leached with water, by which all the soluble
potassium and sodium salts dissolved in it, leaving behind iron,
silica, calcium and other impurities in the residue. The solution was
alkaline due to the presence of potassium carbonate, which was
filtered and neutralized with sulphuric acid and further
LPA 836/2023 Page 38 of 66
concentrated in the evaporator. Potassium salts in the form of
chloride and sulphate were crystallized from the concentrated
solution in the crystallizer.
It has been reported by these workers that for full scale
operation, prior neutralization of spent wash would not be
necessary since the evaporator may be made of stainless steel or
copper, or it may be copper lined. They have also recommended
the use of a forced circulation type quadruple-effect evaporator
instead of a neutral circulation the evaporator, to minimize foaming
and scale formation due to the presence of calcium sulphate in the
spent wash, and economize on steam. The concentration of the
spent wash should also be limited to 60 percent in the evaporator.
The final product obtained from the pilot plant had the composition
shown in Table 2. A flow sheet for recover of potassium salts from
distillery waste is shown in fig. I. It has been claimed that a
distillery in India producing on an average about 320 kl of spent
wash per day could recovery about 3.85 tonnes of potash (K2O), or
about 5-7 tonnes of potassium sulphate and 1.27 tonnes of
potassium chloride per day.”
Rival Contentions
14. We have heard Mr. Pravin Anand, learned Counsel for the
appellant, Mr. Vijay Joshi, learned Counsel for the Assistant
Controller of Patents and Designs and Ms. Vindhya S. Mani, learned
Counsel for CSIR.
15. In a departure from common practice, we are not reproducing,
here, in extenso, the rival contentions of learned Counsel, for the
reason that, to our mind, neither the order of the AC, nor the impugned
judgement, contain sufficient reasons to make out a case for rejecting
the subject application either under Section 3(d) or under Section
25(1)(e) read with Section 2(1)(ja) of the Patents Act. We are of the
opinion, therefore, that the entire issue would have to be re-examined
LPA 836/2023 Page 39 of 66
by the office of the CGPDTM, and a proper and reasoned order
passed. We set out the reasons, for our decision, as under.
Analysis
16. The learned Single Judge has upheld the order passed by the AC
with respect to the objection based on Section 25(1)(f) read with
Section 3(d) as well as the objection based on Section 25(1)(e) of the
Patents Act. In other words, the learned Single Judge has held the
subject invention to be non-patentable on account of Section 3(d), as
well as lacking in inventive step within the meaning of Section
2(1)(ja) of the Patents Act.
17. Finding of AC re. novelty vis-à-vis finding re. inventive step
17.1 Significantly, the AC rejected the objection of CSIR, based on
Section 25(1)(b) of the Patents Act. CSIR had sought to contend that
the subject invention was not novel and that, therefore, it was non-
patentable in view of Section 25(1)(b). This objection was predicated
on prior art documents D1 and D2. The AC has rejected the objection
that the subject invention was not novel on the ground that all features
of the subject invention, as reflected in the complete specifications,
were not disclosed in either D1 or D2.
17.2 Despite this, the AC has gone on to hold that the subject
invention was not patentable as it did not involve any inventive step
LPA 836/2023 Page 40 of 66
over existing prior art, as required by Section 2(1)(ja) of the Patents
Act.
17.3 There is, per se, no inherent contradiction between a finding
that an invention is novel, and yet that, in its creation, no inventive
step, within the meaning of Section 2(1)(ja) is involved. The first
aspect pertains to the realm of anticipation, whereas the second
pertains to the realm of obviousness.
17.4 Novelty resides in an invention if it cannot be said to be
disclosed in any earlier prior art and cannot, therefore, be said to be
anticipated from the prior art.
17.5 Even if an intention is novel, for the reason that it is not
disclosed in any existing prior art, it may still not be inventive, vis-à-
vis prior art, if, in transitioning from the prior art to the invention, no
inventive step is involved. If the teachings in the prior art, along with
existing common general knowledge, are sufficient to enable a person
skilled in the art to create the later invention, the later invention would
be rendered non-patentable on the ground of obviousness vis-à-vis
prior art, for want of any inventive step in its creation.
17.6 In the present case, the AC has held that, though the subject
invention may be novel, in that it is not disclosed in existing prior art,
it is nonetheless not inventive, as the transition from the existing prior
art to the subject invention does not involve any inventive step. In
other words, the AC has effectively held that it is possible for a person
LPA 836/2023 Page 41 of 66
skilled in the art, possessed a general common knowledge to, from the
teachings in the existing prior art, arrive at the subject invention.
17.7 A contradiction arises because the AC has held the subject
invention to be novel vis-à-vis prior art D1 and D2 on the ground that
all features of the subject invention, as reflected in the complete
specifications, were not disclosed in either D1 or D2.
17.8 If, therefore, there were features in the subject invention which
were not disclosed either in D1 or D2, and the AC nonetheless felt that
in proceeding from D1 and/or D2 to the subject invention, no
inventive step was involved, the AC would be required to identify the
features of the subject invention which were not present in D1 and D2
and demonstrate how those features would not require a person skilled
in the art to employ any inventive step. The AC has not, however,
done so, and, as a result, the findings of the AC on the aspect of
novelty of the subject invention vis-à-vis the prior arts D1 and D2,
and his finding that there was no inventive step involved, become
inherently contradictory.
18. We now proceed to the two prior art documents D1 and D2, on
which the learned AC, as well as the learned Single Judge, have
rejected the subject application. We are required, therefore, to examine
whether, vis-à-vis the said prior art documents,
(i) the subject invention is hit by Section 3(d) of the Patents
Act, and
LPA 836/2023 Page 42 of 66
(ii) the subject invention can be said to be lacking in any
“inventive step” in its creation from D1 and/or D2, within the
meaning of Section 2(1)(ja) of the Patents Act, in the light of
the disclosures contained in the prior art documents D1 and D2.
19. Both these questions stand answered in the affirmative by the
AC and the decision of the AC stands affirmed by the learned Single
Judge.
20. Laconic findings by the AC
20.1 We may, at the very outset, note that the decision of the AC is
thoroughly unsatisfactorily. Apropos Section 3(d) of the Patents Act,
the AC, even while accepting that the subject invention is novel, holds
that it is not patentable under Section 3(d) “as the process of the
impugned application does not involve any new reactant nor resulted
in a new product”. Similarly, with respect to the opposition predicated
on Section 2(1)(ja) read with Section 25(1)(e), the findings of the AC
are restricted to the passages reproduced in para 10 supra. The AC has
merely observed that:
(i) BMSW is the aqueous effluent obtained upon anaerobic
digestion of spent wash,
(ii) the process disclosed in either D1 and/or D2 is
substantially similar, and, most disquietingly,
(iii) steps (b), (c), (d) and (e) in Claim 1 of the subject
invention are standard chemical process plant operations, i.e.
thermal decomposition, dissolution and recovery, which would
LPA 836/2023 Page 43 of 66
be obvious for a person skilled in the art after going through the
disclosures made in D1 alone, D2 alone, D1-D2 in
combination, D3 in combination with D1 or D2, or both, D4 in
combination with D1 or D2 or both and D1-D4 combined.
20.2 To our mind, the manner in which the AC has dealt with the
matter, especially regarding CSIR’s objection based on the alleged
lack of inventive step, has reduced the proceedings to a mere mockery.
There is no discussion whatsoever, worth the name in the order of the
AC. There is nothing in the order of the AC to support any of the
above findings. At a bare glance, as would become apparent from the
discussion hereinafter as well, the processes involved in the complete
specification of the subject invention are distinct and different from
the processes envisaged either in D1 or in D2. There is nothing in the
order of the AC, on the basis of which the finding that the process is
“substantially similar” can be supported.
20.3 The order of the AC gives rise to a legitimate grievance of the
adoption of a mere mechanical approach, uninformed by any serious
application of mind. We are unable to comprehend the finding that the
processes involved in steps (b), (c), (d) and (e) of claim 1 are obvious
to a person skilled in the art, after going through the disclosures made
in D1 alone, D2 alone, D1 and D2 in combination, D3 in combination
with D1 or D2, or both, D4 in combination with D1 or D2 or both and
D1-D4 combined. The AC appears to have merely referred to all the
prior arts cited before him and returned a finding that each of the prior
arts, seen individually or in combination with one or more of the
LPA 836/2023 Page 44 of 66
others, would enable a person skilled in the art to arrive at the process
which the appellant sought to patent.
20.4 How, is anybody’s guess.
20.5 There is not a whisper of explanation in the order of the AC as
to how a person skilled in art would, by going through the prior art
documents D1 to D4, individually or in combination, be in a position
to arrive at the subject invention.
20.6 The manner in which the AC decided the matter throws up an
issue of considerable concern. The aspect of whether an invention
which is sought to be patented, involves, or does not involve, any
inventive step, is crucial to the patentability of the invention. If, vis-a-
vis prior art, there is no inventive step involved in arriving at the
subject invention, as would be obvious to a person skilled in the art
who is possessed of prior general knowledge, the invention is not
patentable in view of Section 25(1)(e) read with Section 2(1)(j)(a) of
the Patents Act.
20.7 There is, however, no guidance whatsoever in the Patents Act as
to how one is to assess whether a person skilled in the art, possessed
of the teachings in the prior art and general knowledge, would or
would not be able to arrive at the invention that is sought to be
patented.
LPA 836/2023 Page 45 of 66
20.8 The manner in which the order has been passed by the AC in
the present case underscores the danger of this situation. In the
absence of any guidance or existing indicia on the basis of which the
aspect of obviousness of the subject invention vis-a-vis prior art is to
be gleaned, from the perspective of the person skilled in the art, orders
such as the one passed by the AC in the present case can come to be
passed, in which no explanation whatsoever is adduced for the finding
that a person skilled in the art would be able to arrive at the subject
invention from the teachings in the prior art.
20.9 There may be occasions in which the aspect of obviousness of
the subject invention vis-à-vis prior art is plain at a bare glance at the
complete specifications of the prior art and of the subject invention.
Equally, however, there may be cases in which it is not apparent, by a
mere reading of the complete specifications of the prior art and the
subject invention, that the latter is obvious to a person skilled in the art
from the former. In such a case, in our view, it is incumbent on the
Adjudicating Officer in the office of the CGPDTM, adjudicating on
the application for grant of patent, to set out, clearly and explicitly, his
reasons for holding that the teachings in the prior art document would
by themselves suffice to enable a person skilled in the art to arrive at
the claims in the subject invention. It cannot, as in the present case, be
left to a mere finding, unsupported by any reasons whatsoever, that the
claims in the complete specification relating to the subject invention
are obvious from the prior art.
LPA 836/2023 Page 46 of 66
20.10 In the present case, moreover, the fact that these findings have
been arrived at with complete non-application of mind, as is clear
from the reference, in the order of the AC, to D1 alone, D2 alone, D1-
D2 in combination, D3 in combination with D1 or D2, or both, D4 in
combination with D1 or D2 or both and D1-D4 combined. There is
clearly no independent application of mind to any of the individual
prior arts or the effect that would arise if they were combined.
20.11 The order of the AC, in our view, was liable to be set aside even
for the manner in which it came to be passed.
21. Findings in the impugned judgment re. Section 25(1)(e)
21.1 Apropos prior art document D1
21.1.1 The learned Single Judge has, in para 29 of the impugned
judgment, tabulated the claims of the subject application with the
disclosures contained in D1 to arrive at a conclusion that the claims in
the subject patent were obvious from the disclosures in D1. In doing
so, the learned Single Judge has, quite commendably, undertaken on
himself the task which the AC was required to undertake, obviously
with a view to avoid a remand.
21.1.2 Having gone through the reasoning of the learned Single Judge
with respect to the comparison of the claims in the subject application
vis-a-vis the disclosures in D1, we, however, find ourselves unable to
subscribe to the view expressed by the learned Single Judge. The
LPA 836/2023 Page 47 of 66
reason is apparent, in our view, from a table drawn up by the learned
Single Judge himself in para 29 of the impugned judgment, which at
the cost of repetition, we deem it appropriate to reproduce:
Independent Claims of the subject
Patent
Disclosure in prior art Document D1
A process (100) for recovering
potassium sulphate and other value
added product from distillery spent
wash,
“[0010] Another object of the invention
is to recover potassium from BMSW,
to produce multi-nutrient potassic
fertilizers viz., potassium nitrate,
potassium sulphate, mono potassium
phosphate etc.
“[0012] Another object of the invention
is to utilize sold waste for preparation
of value-added by-products.”
a. Removing (102) high molecular
weight organic compounds from the
spent wash to obtain a first liquid
fraction.
[0016] (ii) clarification of slurry from
step (i), through in-situ formation of
aluminium hydroxide gel to effect
removal of fine particulates,
preferably in multiple stages.
b. concentrating (104) the first liquid
fraction to obtain a first solid fraction;
(step b)
“[0004] Reference may be made to
section 5.1.6.3 of Indian Standard IS:
8032-1976 (reaffirmed 2003) “GUIDE
FOR TREATMENT OF DISTILLERY
EFFLUENTS”. Which teaches about
process for the recovery of potash from
distillery spent wash. The process
involves neutralization of spent wash
followed by concentration and
incineration to produce “spent wash
coke” which on combustion produces
ash. This ash is then leached with
water.
c. subjecting the first solid fraction to
thermal decomposition (106) to
obtain a second solid fraction; (step c)
“[0026] (xii) production of alumina
rich activated carbon, by pyrolysing
and activating the sludge from step
(ii);”
d. dissolving (108) the second solid
fraction in a solvent to obtain a second
liquid fraction; and (step d)
--
e. recovering (110) potassium
sulphate from the second liquid
“[0010] Another object of the
invention is to recover potassium
LPA 836/2023 Page 48 of 66
fraction (step e) from BMSW, to produce multi-
nutrient potassic fertilizers viz.,
potassium nitrate, potassium sulphate,
mono potassium phosphate etc.
[0023] (ix) removal of residual tartrate,
by treating the potassium nitrate liquor
[from step (viii)] with calcium oxide &
nitric acid;
[0024] (x) crystallisation of potassium
nitrate (purity>99%), by
cooling/evaporating the potassium
nitrate liquor [from step (ix)]; "
21.1.3 If one goes through the above table, the following position
emerges:
(i) The first row in the table merely sets out the objectives of
the subject invention and D1. The mere fact that both
inventions aim at producing amongst others, potassium
sulphate and value added products from distillery spent wash,
cannot in our view, be determinative or even relevant to assess
whether the subject invention is obvious from the teachings in
D1.
(ii) It is apparent that the learned Single Judge has restricted
his comparative analysis of the claims in the subject
application to Claim 1. Even though Claims 2 to 12 are
dependent claims, dependent on Claim 1, we are of the opinion
that the learned Single Judge could not have arrived at a
finding that the claims in the subject application were lacking
LPA 836/2023 Page 49 of 66
in inventive step vis-a-vis D1, merely on a comparison of the
disclosures in D1 with Claim 1 in the said application.
(iii) Even when one compares Claim 1 in the subject
application with the disclosure in D1, as has been done by the
learned Single Judge, we are unable to subscribe to the view,
expressed in para 30 of the impugned judgment, that the only
two differences between the claims in the subject application
and the disclosures in D1, are that the subject application
refers to “thermal decomposition” whereas D1 refers to
pyrolyzing, and that step (d) in the claims in the subject
application is not disclosed in D1. In so holding, we are of the
considered opinion that the learned Single Judge has failed to
take into notice several other clear distinctions between Claim
1 in the subject application and the disclosures in D1. The
claims in the subject application do not make any reference to
in situ formation of aluminium hydroxide gel, or to removal of
fine particulates in multiple stages, or to production of ash or
leaching of the ash with water, or to production of alumina rich
activated carbon by activation of sludge. Similarly, the
disclosures in D1 do not make any reference to a first, second
or third liquid fractions, or a first and second solid fraction.
The disclosures in D1 do not refer to removal of high
molecular weight organic compounds from the spent wash.
Even if the argument of pyrolyzing and thermal decomposition
being analogous is accepted, the disclosures in D1 refer to
pyrolyzing and activation of the sludge, whereas the subject
LPA 836/2023 Page 50 of 66
application refers to thermal decomposition of the first solid
fraction.
(iv) In fact, if one were to holistically compare the salient
features of the process claimed in the subject application with
the process claimed in D1, there are various features of
distinction which may be enumerated as under:
(a) There is no reference in D1 of
(i) production of a liquid fraction on treatment
of the spent wash with acid,
(ii) filtration of the said liquid fraction, resulting
in high molecular weight organic compounds and
another liquid fraction,
(iii) drying of the high molecular weight organic
compounds, resulting in powder, which is useable
as cattle feed/ fuel,
(iv) evaporation of the liquid fraction, resulting
from the filtration of the liquid fraction produced
by addition of acid to the spent wash, resulting in
slurry and vapour,
(v) condensation of the vapour to result in
reusable water,
(vi) drying of the slurry to result in the first sold
fraction,
(vii) thermal decomposition of the said solid
fraction, resulting in a second solid fraction,
LPA 836/2023 Page 51 of 66
(viii) crystallization of the second solid fraction,
resulting in a mother liquor,
(ix) filtration of the mother liquor, resulting in
potassium sulphate and filtrate,
(x) concentration and drying of the filtrate
resulting in magnesium sulphate, or
(xi) filtration of the second liquid fraction
resulting in the production of activated carbon,
usable as fuel.
(b) Similarly, there is no reference in the subject
application to
(i) generation of carbon rich sludge,
(ii) in situ formation of aluminium hydroxide
gel during clarification of the slurry to effect
removal of fine particulates,
(iii) removal of the particulates in multiple
stages,
(iv) reaction of the resultant liquid with partially
protonated magnesium tartrate resulting in
precipitation of potassium bitartrate,
(v) recovery of the residual tartrate as calcium
tartrate by treating the resulted liquid from the
earlier step with calcium oxide and hydrochloric
acid/sulphuric acid,
(vi) co-precipitation of gypsum and magnesium
hydroxide,
LPA 836/2023 Page 52 of 66
(vii) decomposition of absorbed organics by
calcining gypsum and magnesium hydroxide,
(viii) reacting the potassium bitartrate with nitric
acid and magnesium hydroxide, resulting in
production of potassium nitrate liquor,
(ix) treatment of the potassium nitrate liquor
with calcium oxide and nitric acid, thereby
removing the residual tartrate,
(x) crystallization of the potassium nitrate,
(xi) regeneration of the tartaric acid by treatment
of calcium tartrate with sulphuric acid,
(xii) generation of aluminium sulphate solution
and formation of aluminium hydroxide gel in situ
and
(xiii) production of activated carbon by washing
and drying the sold carbon obtained in the earlier
steps.
21.1.4 It has to be remembered that the subject application was for a
process patent, not a product patent. The steps in the process and the
various products and by-products which emerged from the said steps
are, therefore, of crucial significance. The appellant was candid in his
application in acknowledging the fact that production of potassium
sulphate and potash fertilizer from spent wash was subject matter of
pre-existing patents. Inventiveness was claimed by the appellant in the
process claimed in the subject application. According to the appellant,
this process was, environmentally and economically more
LPA 836/2023 Page 53 of 66
advantageous with the existing processes for recovery of potash
fertilizer from spent wash, involved fewer steps and fewer reagents,
and was “Zero Liquid Discharge”. These were cited as the USPs, so
to speak, of the subject invention.
21.1.5 There is no denial, either in the order of the AC, or in the
impugned judgment of the learned Single, of the assertion, by the
appellant, regarding the advantages of the processes claimed in the
subject application, vis-a-vis the processes which form the subject
matter of pre-existing patents. It has to be presumed, therefore, that
the claim of the said advantages of the processes invented by him, by
the appellant, have gone untraversed.
21.1.6 Inventiveness may exist even in the manner in which a
particular objective, or end, is achieved. It may be that, starting from
the same reagent, the same final product may be achieved by two sets
of processes, each inventive in its own way, if the processes are
different, and one cannot be said to be “taught” by the other.
21.1.7 One of the submissions of Mr. Pravin Anand, we may note, is
that the process that the appellant seeks to patent is simple, whereas
the process envisaged in D1 is complicated, involving 12 steps and
several reagents. That this is correct is apparent when one compares
the process that the appellant seeks to patent, as set out in para 6.4.2
supra, with the process that D1 claims, as reproduced in para 13.1.2
supra.
LPA 836/2023 Page 54 of 66
21.1.8 Inventiveness resides, at times, in simplicity.
21.1.9 In any event, it is clear, from a comparison of the two
sequences of processes, that they are not even remotely similar,
though certain intermediate stages may superficially appear to be so.
The reagents that are used are different, the products that arise at each
step are differently referred to, the by products that result are different,
and even the final product, in the case of D1, is potassium nitrate, as is
clear inter alia from the various examples provided in D1, whereas the
final product in the case of the appellant’s process is potassium
sulphate.
21.1.10 In that view of the matter, what has to be examined is,
whether the processes in the subject application at which, starting
from spent wash, one arrives at potassium sulphate, as well as other
by-products such as magnesium sulphate, water, and activated carbon,
stood disclosed in the prior art so as to enable a person skilled in the
art to obtain the same products and by products, using the same
process.
21.1.11 The issue is complex. We do not wish to venture a final
view thereon. Suffice it, however, to say that, in our opinion, a far
more detailed explanation would be necessary before it can be said
that the process that the appellant seeks to patent is obvious from the
process forming subject matter of the prior art document D1.
LPA 836/2023 Page 55 of 66
21.1.12 We are of the considered opinion that the issue of the
presence, or otherwise, of an inventive step, in the conceptualization
of the process forming subject matter of the subject application, vis-à-
vis D1, or D2, or both, requires to be re-examined by the office of the
CGPDTM.
21.1.13 On a superficial surface comparison, however, we are
constrained to observe that it cannot be said by any stretch of
imagination that the processes set out in the claims in the subject
application are obvious, even to a person skilled in the art from the
teachings contained in the prior art document D1.
21.2 Apropos prior art document D2
21.2.1 In so far as the prior art document D2 is concerned, the
material, on the basis of which it has been concurrently held, by the
AC as well as by the learned Single Judge, that the process that the
appellant seeks to patent is obvious, is even more scanty.
21.2.2 D2 is an Indian Standard, formulated by the BIS for treatment
of distillery effluents. The disclosures in D2 which, according to the
AC and the learned Single Judge, render the subject invention obvious
to a person skilled in the art, are contained in the table in para 32 of
the impugned judgment, reproduced in para 11 supra. They are, that
(i) activated carbon and salts of sodium and potassium could
be obtained by suitable treatment of spent wash,
LPA 836/2023 Page 56 of 66
(ii) a pilot plant study, carried out by 2 scientists, to recover
potassium salts from spent wash of a molasses distillery in
India,
(iii) neutralisation of raw spent wash with lime and
evaporation to about 75% solids in a forced circulation
evaporator under vacuum,
(iv) burning of the liquor in an incinerator, thereby converting
the spent wash to “spent wash coke”, which self-combusted and
turned into ash, which provided the necessary heat for the
liquor,
(v) collection of the ash and leaching with water, thereby
dissolving all soluble potassium and sodium salts, leaving
behind silica, calcium and other impurities in the residue,
(vi) filtration and neutralisation of the resultant potassium
carbonate with sulphuric acid and concentration in the
evaporator, and
(vii) subsequent crystallisation of potassium chloride and
potassium sulphate from the concentrated solution in the
crystallizer.
21.2.3 Given the fact that we are dealing with an application for patent
in respect of a process, we are not convinced that the features of the
process forming subject matter of D2, which have been emphasised by
the learned Single Judge in the table contained in para 32 of the
impugned judgment, render the subject invention obvious from the
teachings contained in D2. There is, in fact, no real reference, in D2,
LPA 836/2023 Page 57 of 66
to any of the steps which stands so clearly delineated in the claimed
process in the subject application.
21.2.4 We, therefore, cannot subscribe to the view that the process
claimed in the subject application, which the appellant desires to
patent, is obvious from the teachings contained in D2, or that a person
skilled in the art would, without having to carry out any inventive
step, be able to arrive at the process forming subject matter of the
appellant’s claim, from the teachings contained in D2.
21.3 We are not applying ourselves to the issue of whether, by
combining the teachings in D1 and D2, the process that the appellant
desires to patent would become obvious to a person skilled in the art.
To our mind, this is an involved exercise step that has to be addressed,
satisfactorily, in the first instance, by the CDPDTM.
21.4 The test in F. Hoffmann La Roche – erroneous application in
the impugned judgment
21.4.1 The learned Single Judge has, in para 25 of the impugned
judgment, relied on the pronouncement of the Division Bench of this
Court in F. Hoffmann La Roche Ltd v Cipla Ltd, and we are in
agreement with him that the said decision lays down principles which,
for the present, may be regarded as the gold standard to determine
whether a later invention is obvious from the teachings contained in an
earlier patent. The Division Bench has identified the following steps,
in this regard:
LPA 836/2023 Page 58 of 66
“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 those 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 hindside approach.”
Having thus reproduced the steps that Hoffman envisages as being
required to be followed, sequentially, while examining the aspect of
obviousness and the existence of inventive step, the learned Single
Judge, in para 26 of the impugned judgment, proceeds to observe that
he would “start at Step 4 and identify the differences, if any between
the prior art as identified by the Controller and the subject patent
application”.
21.4.2 There are obvious errors in the manner in which the learned
Single Judge has applied the procedure outlined in Hoffmann.
21.4.3 We are of the opinion that the learned Single Judge could not
have commenced applying the principles in Hoffmann from Step 4.
The error in starting from Step 4 is self-evident. It bypasses the person
skilled in the art who, statutory and legally, is the person, from whose
LPA 836/2023 Page 59 of 66
point of view the aspect of inventive step and obviousness has to be
determined. Identification of the person skilled in the art is, therefore,
the fundamental first step while examining a plea of obviousness and
lack of inventive step.
21.4.4 Steps 2 and 3 are no less significant. To ascertain whether a
later invention, that is sought to be patented, on which already stands
patented, is obvious vis-à-vis prior art, the inventive concept of the
prior art has to be understood and identified. It is only once the
inventive concept of the prior art – as well as, we may add, the
inventive concept of the later invention – are identified, that it would
be possible to gauge the distance that would be required to be scaled,
to leap from one to the other.
21.4.5 We agree with Mr. Pravin Anand that the manner in which the
learned Single Judge has applied the principles laid down in
Hoffmann are contrary to the judgment itself.
21.5 The finding, of the learned Single Judge, as also of the AC, that
the process that the appellant desires to patent is obvious from the
prior art documents D1 and D2 is not, therefore, in our view,
supported by sufficient material to sustain it. It has, therefore, to be set
aside.
21.6 The sequitur
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The sequitur would not, however, be that the subject process, that the
appellant desires to patent, would ipso facto be entitled to be treated
as inventive, or not obvious, vis-à-vis the prior art documents D1 and
D2. It is only an invention which is inventive, and is not obvious to a
person skilled in the art possessed with common general knowledge
and the teachings contained in the prior art documents, that can be
patented. Whether the subject process satisfies this requirement would
have to be determined by strictly following the tests laid down by the
Division Bench in Hoffmann, and the principles outlined earlier in
this judgment. While all the Steps identified in Hoffmann are
important, we would lay particular emphasis on Steps 1, 2 and 5.
22. Findings in the impugned judgment re. Section 3(d)
22.1 The AC has held, in his order, that the subject process was not
patentable under Section 3(d), as “the process of the impugned
application does not involve any new reactant nor results in a new
product”.
22.2 The AC has, clearly, contented himself by merely mechanically
reproducing the words of Section 3(d), not deeming it necessary to
provide even a scintilla of an explanation, thereafter, for his decision
that the subject invention is hit by Section 3(d).
22.3 The learned Single Judge has, however, in para 14 of the
impugned judgment, held, in this regard, that
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(i) the processes used in the subject invention are nothing
more than a mere use of a combination of known processes,
(ii) all processes forming subject matter of the claims in the
subject application are disclosed in D1 and D2,
(iii) the appellant is not using any new reactant in the said
processes, and
(iv) no new product results from the processes employed by
the appellant, the end product being, in each case, potassium
sulphate.
22.4 We, unfortunately, find ourselves unable to agree with the
learned Single Judge. The learned Single Judge, as well as the AC, in
our view, have failed to notice that the process that the appellant
desires to patent was not merely for recovering potassium sulphate,
but also for recovering other valuable products from spent wash.
Among the other valuable products recovered by the process that the
appellant desires to patent are high molecular weight organic
compounds which can be used as cattle feed and fuel, and magnesium
sulphate. There is, in D1 as well as D2, no reference to either of these
products. The mere fact that potassium sulphate may be one of the
products that finally emerges from the process that the appellant seeks
to patent, as well as from D1, cannot result in the two processes being
the same.
22.5 It must be remembered that the first condition, for Section 3(d)
to apply, is that the process forming subject matter of the later patent
must be a known process. The earlier process and the later process
LPA 836/2023 Page 62 of 66
must, therefore, be the same. At the very least, there must be
substantial similarity between the two processes. The person skilled in
the art, we may note, is a stranger to Section 3(d). He is persona non
grata, so far as applicability of Section 3(d) is concerned. In order for
a later process to be rejected as non-patentable on the ground of
Section 3(d), it must be shown, positively, that the later process is a
mere use of the earlier process.
22.6 Even then, Section 3(d) would not apply if the later process
results in a new product or employees at least one new reactant.
22.7 In the present case, we are of the opinion that the invocation of
Section 3(d), by the AC and by the learned Single Judge, is unjustified
on at least two counts, viz.
(i) there is no material on the basis of which it could be said
that the process forming subject matter of the Claims in the
subject application are “known”, or a “mere use” of the
processes envisaged in D1 or D2, and
(ii) at the very least, magnesium sulphate and activated
carbon are among the products which result from the process
that the appellant desires to patent, and which find no mention
in D1 or D2.
In this context, it is important to note that Section 3(d) separates the
expressions “results in a new product” and “employees at least one
new reactant”, with the conjunction “or”. In other words, even if it
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were to be assumed that a later process, which is sought to be
patented, is a mere use of an earlier known process, it would
nonetheless be patentable if it either results in a new product or
employees at least one new reactant. Satisfaction of one, or the other,
requirement. Either would suffice.
22.8 In the present case, we are of the considered opinion that the
subject process, that the appellant desires to patent, is not rendered
non-patentable by virtue of Section 3(d); firstly, because there are
marked differences in the process claimed in the subject application
and the processes forming subject matter of D1 and D2 and, secondly,
because the process that the appellant desires to patent results in
products which are not claimed outcomes of the processes envisaged
in D1 and D2.
Conclusion
23. We, therefore, allow the present appeal in the following terms
and to the following extent:
(i) The impugned judgment dated 10 March 2023, passed by
the learned Single Judge, as well as the order dated 28
December 2021, passed by the AC, are quashed and set aside.
(ii) Application No. 201911036748, submitted by the
appellant, as well as the pre-grant opposition filed by CSIR, are
remanded to the CGPDTM for consideration and determination
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afresh. The consideration shall, however, be restricted to the
objection of CSIR predicated on Section 25(1)(e) read with
Section 2(1)(ja) of the Patents Act, based on the prior art
documents cited by CSIR. No new material would be permitted
to be placed on record.
(iii) We reject the objection of CSIR that the subject process
is not patentable because of Section 3(d) of the Patents Act.
(iv) The de novo consideration would be carried out strictly in
terms of the principles enunciated in Hoffmann as well as in
the present judgment. There shall be implicit adherence to the
said principles.
(v) The appellant, as well as CSIR, would be at liberty to
place, on record before the CGPDTM, notes of the submissions
that they seek to advance, to support the application and the
opposition, respectively.
(vi) The adjudicating authority designated by the CGPDTM
would afford, to both sides, an opportunity of hearing on a date
and time convenient to the adjudicating authority, which would
be intimated to both sides at least a week in advance of the
hearing. Neither side would be permitted to seek an
adjournment.
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(vii) The designated adjudicating authority would pass a
reasoned and speaking order, following the conclusion of
proceedings.
(viii) The de novo proceedings would be on the basis of the
material already on record. No new evidence would be
permitted to be introduced. However, should either side desire
to rely on any authoritative textual or documentary material, the
adjudicating authority may, at his discretion, permit such
reliance. The discretion, needless to say, is expected to be
judiciously exercised.
(ix) We direct the adjudicating authority to pass a fresh order
on the appellant’s application and CSIR’s objection as
expeditiously as possible and, at any rate, within a period of 6
months from the date of hearing.
(x) Should either side remain aggrieved by the de novo
decision of the adjudicating authority, all legal rights and
remedies in that regard would remain reserved.
24. We clarify that we have not expressed any binding opinion or
view on the issue of whether the process that the appellant desires to
patent is, or is not, inventive, or obvious, from the prior art documents
cited by CSIR. No observation contained in this judgment is to be
understood as expressing any view in that regard, as would bind the
adjudicating authority designated by the CGPDTM.
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25. There shall be no orders as to costs.
C. HARI SHANKAR, J.
AJAY DIGPAUL, J.
OCTOBER 6, 2025/aky/yg
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