Auckland Uniservices Limited vs Assistant Controller Of Patents And ... on 27 September, 2022

[Cites 6, Cited by 4]

Delhi High Court

Auckland Uniservices Limited vs Assistant Controller Of Patents And ... on 27 September, 2022

1. This appeal has been filed under Section 117A(2) of the Patents Act, 1970 (hereinafter referred to as the 'Act') assailing the order dated 15.02.2021, passed by the Respondent/Assistant Controller of Patents and Designs, refusing patent application No. 1434/DELNP/2014 filed on 26.02.2014, for the invention titled 'Magnetic Field Shaping for Inductive Power Transfer'. Respondent has rejected the application under Section 15 of the Act on the ground that the subject matter of claims 1-9 lacks inventive step under Section 2(1)(j) of the Act, in view of the prior art documents US20070064406A1 (D1) and WO2010098547A2 (D2).

2. Appellant filed the patent application on 26.02.2014 at the Patent Office, Delhi as a National Phase Application of PCT (Patent Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 1 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 Cooperation Treaty), Patent Application No. PCT/NZ2012/000160 dated 07.09.2012 and claimed priority from NZ Provisional Patent Application No. 595056 dated 07.09.2011. The application was filed with 15 claims.

3. On 04.09.2015, Appellant filed request for examination of the application, which remained under process for three years. On 12.07.2018, First Examination Report ('FER') was issued by the Respondent. Objection '1' in the FER was that claims 1-11 and 15 lacked novelty under Section 2(1)(j) of the Act, in view of the prior art document D1. Objection '2' was that claims 1-11 and 15 lacked inventive step under Section 2(1)(j) read with Section 2(1)(ja) of the Act, in view of the prior art D1. Certain other objections were also raised in the FER.

4. On 11.01.2019, Appellant filed a response to the FER along with the amended claims. The application was further examined, in view of the response filed by the Appellant and vide Hearing Notice dated 11.09.2020, hearing was scheduled for 09.10.2020. In the Hearing Notice, Respondent inter alia raised the objection that the subject of the amended claim lacked inventive step under Section 2(1)(ja) of the Act, in view of the documents D1 and D2. During the hearing, Appellant's Attorney addressed all objections and also filed post-hearing written submissions on 23.10.2020. Respondent issued the impugned order dated 15.02.2021, refusing the patent application on the ground that a person skilled in the art would be able to arrive at the subject matter of claims 1-9 from the teachings of prior art references D1 and D2 and the claims thus lack 'inventive step' under Section 2(1)(ja) of the Act and subject matter of claims did not constitute 'invention' under Section 2(1)(j) of the Act.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 2 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

Neutral Citation Number: 2022/DHC/004336

5. The invention claimed in the subject application relates to an apparatus for shaping or directing magnetic fields generated or received by magnetic flux generating or receiving apparatus used in inductive power transfer (IPT) systems. The device generating the magnetic flux is called primary device and may be embedded in the road and the secondary device receiving the magnetic flux is attached underneath the vehicle, i.e., to the chassis of the Electric Vehicle ('EV').

6. The Appellant concedes that IPT systems are well-known. It is, however, Appellant's case that it is necessary in some IPT applications, such as electric vehicle charging, to provide a loosely coupled system capable of operating with a large air gap between the magnetic flux transmitting and receiving structures. Due to potential for large scale deployment of both stationary charging and roadway powered electric vehicle applications, magnetic flux transmitting and receiving structures that operate efficiently with minimum use of materials are highly desirable. Apart from efficiency, another issue with loosely coupled systems is elimination or control of stray magnetic fields which may pose health risks and which in most countries are required to be controlled within certain limits by law.

7. Appellant avers that there have been challenges with the wired charging of the EVs, such as EV charging requires higher voltage, power and amount of energy transfer, besides issues with technology, safety, cost as also environmental challenges and management of cables, adapters and lack of standardization. The object of the subject invention is to provide an improved apparatus or method for inductive power transfer or an improved IPT power transfer pad, or to at least provide the public or the industry with a useful alternative.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 3 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

Neutral Citation Number: 2022/DHC/004336

8. It is stated that the problem in the prior art is that the chassis of an EV is typically made of steel and this can severely reduce the quality factor of the magnetic flux receiver or transmitter structures. Larger leakage results in more energy lost in surrounding EV chassis, thus slight reductions in flux density can be effective. In the subject invention, the core structure comprises a number of radially directed strips of magnetically permeable material such as ferrite with one or more planar coils located on top of the core structure with shielding on the opposite side comprising a backing plate of sheet material preferably aluminium. The ring/lip and backing plate are extended beyond the outer periphery of the core to optimize coupling for a given field leakage.

9. It is stated that to overcome the said problem, the subject invention provides a shield for shaping the magnetic flux for coupling. Figure 6 of the subject application illustrates a shield means (16) provided on side of the core means (2) opposite to the first side. The shield means (16) comprises an outer portion having a periphery that extends beyond at least part of the perimeter of the core means (2). A lip extending from the periphery of the outer portion and a flange (14) extending from the lip is also provided. The outer portion extends from the device in a plane of the core means (2) and the lip is provided at an angle between 90 degrees and 150 degrees relative to the outer portion. Figure 6 is reproduced here for ready reference:-

Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 4 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

Neutral Citation Number: 2022/DHC/004336

10. It is stated that the effect of a simple planar outer portion extension of the backing plate about the perimeter of a pad structure along with the provision of a peripheral edge such as a ring/lip as claimed in the subject invention is that it improves power transfer by 2.5% to 5%. The design of the IPT system of the 6 subject invention aims to have almost circular flux paths so that maximum flux path height and coupling can be achieved. The IPT system magnetic flux device of the subject invention is a flux shaping structure, which is advantageous in that it further shapes the fields and hence increases coupling and reduces leakage fields. The IPT system of the subject invention ensures power transfer over large separations (air gaps) by using a shield means with a lip and flange, as claimed in claim 1, to direct the flux to provide a more focused long-distance flux pattern. The flux shaping structure with a flange extending from the top of the lip also serves at least to:

(1) shield the leakage magnetic fields to comply with the safety regulation regarding limit of the human body exposure to time varying magnetic fields; and (2) shape the magnetic fields for coupling, which aims to increase the power transfer capability.

11. Learned counsel appearing on behalf of the Appellant, assailing the impugned order, submits that a bare perusal of the order would reflect that the same is totally unreasoned. In the entire order, the Respondent has only extracted the objections raised and the response of the Appellant thereto and without any analysis or discussion has given the decision, without reasons. The conclusion that claims of the application lack inventive step, in view of cited prior arts D1 and D2 and the citations, when combined, disclose an IPT Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 5 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 system magnetic flux device for generating or receiving a magnetic flux and a person skilled in the prior art can reach the alleged invention from the teachings of D1 and D2, is completely bereft of reasoning, though Appellant had made extensive arguments, distinguishing the cited prior arts. It is a settled law that recording of reasons is an essential feature of justice dispensation and non-recording of reasons would not only lead to a prejudice to the affected party but would hamper proper administration of justice, as the higher Forum would not be able to appreciate the perspective or the controversy in the impugned order and the factors that weighed in arriving at a conclusion.

12. It is further contended that teachings of D1 and D2 cannot lead a person skilled in the art to the subject matter of claims 1-9 of the patent application. Prior art US20070064406A1 (D1) relates to inductive power transfer units having flux shields. The flux generating unit of D1 comprises a flux shield interposed between the flux generating unit and support surface. D1 suggests that the shield is only required in some circumstances meaning thereby that the shield of D1 is not directing the flux but merely operating as an interference or EMI reducing device and the coil operates largely independent of the shield in most cases. In contrast to this, the subject invention utilises the shield to direct the flux to provide a more focused long-distance pattern. There is no disclosure inter alia in D1 to use the shield for a different coil arrangement; the shield comprises a flange extended from the sidewalls wherein the sidewalls are at an angle and nor does it suggest that the angle of the sidewalls should be 90 degrees and 150 degrees relative to the base and thus, D1 has failed to disclose what is claimed in claim 1 of the subject application.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 6 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

Neutral Citation Number: 2022/DHC/004336

13. It is further contended that D2 fails to disclose the feature that the inductive power transfer system comprises 'at least one planar coil provided on a first side of the core means and magnetically associated with the core means' as claimed in claim 1 of the patent application. Furthermore, D2 does not disclose that the back plate No. 11 shapes the magnetic flux, as envisaged by the subject invention and instead in paragraph [39] teaches that the back plate No. 11 is made of steel and functions as a bracket for supporting the core within the road surface. D2 in paragraphs [46] and [58] discloses that magnetic flux is transferred through magnetic portions and therefore, base plate No. 11 of D2 is not equivalent to the shield means of the subject invention as it does not perform functions of shaping the magnetic flux for coupling. D2 also fails to disclose that the angle of part of the base plate between the magnetic field generating unit should be between 90 and 150 degrees relative to the part protruding towards the road. In a nutshell, the contention is that there is no disclosure in D1 and D2 which would teach or suggest to a person skilled in the art what is claimed in claim 1 of the patent application. Moreover, D1 and D2 do not disclose that the drawings/ figures are to scale and are silent on the dimensions and therefore, analysis or conclusion based on speculative modelling of the drawing cannot be relied on and this approach is nothing but a hindsight and myopic approach by the Respondent in claim re-construction, which is impermissible in law. It is submitted that there were various other factors and points that were brought before the Respondent to substantiate the plea that D1 and D2 individually or in combination, cannot lead a person skilled in the art to the claimed invention which, therefore, does not lack an inventive step. However, despite oral arguments and written submissions on Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 7 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 the claims, specifications and the objections raised, Respondent has, by an unreasoned order, arbitrarily refused the grant of patent, without applying the tests laid down in F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd., 2015 SCC OnLine Del 13619, for determining an inventive step, as defined under Section 2(1)(j) of the Act.

14. Per contra, learned counsel for the Respondent, defending the impugned order, argues that the patent application lacks inventive step in view of cited prior art documents D1 and D2. Taking the Court through the documents D1 and D2, it is contended that the Respondent has analyzed the prior art documents as well as the claimed invention and come to a conclusion, which is not open to a judicial scrutiny. It is sought to be argued that Respondent has applied its mind to the documents, written submissions and arguments canvassed during the hearing and only thereafter arrived at a decision and absence of a detailed reasoning does not vitiate the impugned order.

15. I have heard learned counsels for the parties and examined their respective submissions.

16. The foremost contention of the Appellant is that the Respondent does not record any reason in the order, despite detailed specifications, extensive oral arguments and written submissions placed before the Respondent, pointing out how the subject invention teachings in D1 and D2 could not lead to the subject invention. Upon a bare perusal of the impugned order, this Court finds merit in the contention of the Appellant. Respondent has merely extracted the objections raised in the FER and noted the responses thereto by the Appellant, followed by a 'Decision' that the claims of the subject application lack inventive step, as a person skilled in the art can Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 8 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 reach the alleged invention from teachings of D1 and D2. Interestingly, while in the short and cryptic decision, there is a mention that the Respondent has analyzed the written note of arguments and the documents on record, but the Court finds that no analysis and/or findings have been rendered in the said decision and to say the least, Respondent has not even discussed the points raised by the Appellant to distinguish the cited prior arts D1 and D2.

17. Courts have, time and again, emphasised that the obligation to provide reasons in judgments or orders both of Courts and Quasi-Judicial Bodies can never be dispensed with. Requirement to dispose of a matter by a reasoned and speaking order has been repeatedly held to be a part of the doctrine of audi alteram partem, embedded, intrenched and ingrained in 'principles of natural justice', compliance with which is indispensable. In Assistant Commissioner, Commercial Tax Department, Works Contract and Leasing, Kota v. Shukla and Brothers, (2010) 4 SCC 785, the Supreme Court held as follows:-

"12. In exercise of the power of judicial review, the concept of reasoned orders/actions has been enforced equally by the foreign courts as by the courts in India. The administrative authority and tribunals are obliged to give reasons, absence whereof could render the order liable to judicial chastisement. Thus, it will not be far from an absolute principle of law that the courts should record reasons for their conclusions to enable the appellate or higher courts to exercise their jurisdiction appropriately and in accordance with law. It is the reasoning alone, that can enable a higher or an appellate court to appreciate the controversy in issue in its correct perspective and to hold whether the reasoning recorded by the court whose order is impugned, is sustainable in law and whether it has adopted the correct legal approach. To subserve the purpose of justice delivery system, therefore, it is essential that the courts Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 9 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 should record reasons for their conclusions, whether disposing of the case at admission stage or after regular hearing.

13. At the cost of repetition, we may notice, that this Court has consistently taken the view that recording of reasons is an essential feature of dispensation of justice. A litigant who approaches the court with any grievance in accordance with law is entitled to know the reasons for grant or rejection of his prayer. Reasons are the soul of orders. Non-recording of reasons could lead to dual infirmities; firstly, it may cause prejudice to the affected party and secondly, more particularly, hamper the proper administration of justice. These principles are not only applicable to administrative or executive actions, but they apply with equal force and, in fact, with a greater degree of precision to judicial pronouncements. A judgment without reasons causes prejudice to the person against whom it is pronounced, as that litigant is unable to know the ground which weighed with the court in rejecting his claim and also causes impediments in his taking adequate and appropriate grounds before the higher court in the event of challenge to that judgment. Now, we may refer to certain judgments of this Court as well as of the High Courts which have taken this view.

14. The principle of natural justice has twin ingredients; firstly, the person who is likely to be adversely affected by the action of the authorities should be given notice to show cause thereof and granted an opportunity of hearing and secondly, the orders so passed by the authorities should give reason for arriving at any conclusion showing proper application of mind. Violation of either of them could in the given facts and circumstances of the case, vitiate the order itself. Such rule being applicable to the administrative authorities certainly requires that the judgment of the court should meet with this requirement with higher degree of satisfaction. The order of an administrative authority may not provide reasons like a judgment but the order must be supported by the reasons of rationality. The distinction between passing of an order by an administrative or quasi-judicial authority has practically extinguished and both are required to pass reasoned orders."

Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 10 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

Neutral Citation Number: 2022/DHC/004336

18. A Bench of Bombay High Court in Pipe Arts India Pvt. Ltd., Sanaswadi v. Gangadhar Nathuji Golamare, 2008 SCC OnLine Bom 289, relying on several judicial precedents, held as under:-

"18. Providing of reasons in orders is of essence in judicial proceedings. Every litigant who approaches the court with a prayer is entitled to know the reasons for acceptance or rejection of such request. Either of the parties to the lis has a right of appeal and, therefore, it is essential for them to know the considered opinion of the court to make the remedy of appeal meaningful. It is the reasoning which ultimately culminates into final decision which may be subject to examination of the appellate or other higher courts. It is not only desirable but, in view of the consistent position of law, mandatory for the court to pass orders while recording reasons in support thereof, however, brief they may be. Brevity in reasoning cannot be understood in legal parlance as absence of reasons. While no reasoning in support of judicial orders is impermissible, the brief reasoning would suffice to meet the ends of justice at least at the interlocutory stages and would render the remedy of appeal purposeful and meaningful. It is a settled canon of legal jurisprudence that the courts are vested with discretionary powers but such powers are to be exercised judiciously, equitably and in consonance with the settled principles of law. Whether or not, such judicial discretion has been exercised in accordance with the accepted norms, can only be reflected by the reasons recorded in the order impugned before the higher court. Often it is said that absence of reasoning may ipso facto indicate whimsical exercise of judicial discretion. Patricia Wald, Chief Justice of the D.C. Circuit Court of Appeals in the Article, Black Robed Bureaucracy or Collegiality Under Challenge, (42 MD. L. REV. 766, 782 (1983), observed as under:--

"My own guiding principle is that virtually every appellate decision requires some statement of reasons. The discipline of writing even a few sentences or paragraphs explaining the basis for the judgment insures a level of thought and scrutiny by the court that Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 11 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 a bare signal of affirmance, dismissal, or reversal does not."

19. Appellant has taken a categorical stand in the appeal that during the hearing on 09.10.2020, the Attorney of the Appellant addressed all objections and advanced substantive explanation and arguments along with claims amendments to rebut the objections and subsequent thereto on 23.10.2020, written submissions were filed. The said stand was not controverted by the Respondent during the hearing before this Court and in my view, the impugned order, wholly lacking in reasons on any of the aspects raised by the Appellant, deserves to be set aside on this ground alone.

20. Learned counsel for the Appellant has laboured hard to show how the subject invention does not lack inventive step and that the teachings of cited prior arts cannot lead to the claimed invention. Learned counsel for the Respondent is right in his submission that this Court cannot assume the role of Controller and substitute the decision of a quasi-judicial authority, with expertise in the field. May it be made clear that this Court is not intending to substitute the impugned decision on merits, but law is equally well settled that decision making process of an administrative or quasi-judicial authority is not impervious to jural interference. Procedure, manner and method known to law ought to be followed by quasi-judicial authorities, where crucial rights are impacted, as in this case. In F. Hoffmann-La Roche Ltd. (supra), the Division Bench of this Court has propounded the tests for determining the inventive step and held that:-

"Step No. 1 To identify an ordinary person skilled in the art, Step No. 2 To identify the inventive concept embodied in the patent, Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 12 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 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 hideside approach."

21. In this context, it would be useful to allude to the Manual of Patent Office Practice and Procedures which provides guidelines for ascertaining inventive step in a Patent Application as follows:-

"The obviousness must be strictly and objectively judged. While determining inventive step, it is important to look at the invention as a whole. Accordingly, the following points need to be objectively judged to ascertain whether, looking at the invention as a whole, the invention does have inventive step or not:

i. Identify the "person skilled in the art", i.e. competent craftsman or engineer as distinguished from a mere artisan; ii. Identify the relevant common general knowledge of that person at the priority date;

iii. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; iv. Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed; v. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of inventive ingenuity?"

Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 13 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

Neutral Citation Number: 2022/DHC/004336

22. A Co-ordinate Bench of this Court in Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940, has brought out three essential elements that are required to be considered by the Controller while rejecting an invention for lack of inventive step, as follows:-

"24. In the opinion of this Court, while rejecting an invention for lack of inventive step, the Controller has to consider three elements-

• the invention disclosed in the prior art, • the invention disclosed in the application under consideration, and • the manner in which subject invention would be obvious to a person skilled in the art.

25. Without a discussion on these three elements, arriving at a bare conclusion that the subject invention is lacking inventive step would not be permissible, unless it is a case where the same is absolutely clear. Section 2(1)(ja) of the Act defines 'inventive step' as under:

(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.

26. Thus, the Controller has to analyse as to what is the existing knowledge and how the person skilled in the art would move from the existing knowledge to the subject invention, captured in the application under consideration. Without such an analysis, the rejection of the patent application under Section 2(1)(ja) of the Act would be contrary to the provision itself. The remaining prior arts which are cited by ld. Counsel having not been considered in the impugned order, the Court does not wish to render any opinion in this regard."

23. As noted above, the invention relates to apparatus and methods for Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 14 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 shaping or directing magnetic fields generated or received by magnetic flux generating or receiving apparatus, used in Inductive Power Transfer Systems. A summary of the invention and elements/embodiments have been detailed in the specifications along with the description of the drawings. Appellant has also given the description of One or More preferred embodiments along with results and detailed drawings. Appellant had brought before the Respondent that the teachings of D1 and D2 cannot lead a person skilled in the art to subject matter of claims 1-9 of the patent application.

24. Respondent has rejected the subject application for lacking an inventive step in view of the cited prior art documents D1:

US20070064406A1 and D2: WO2010098547A2. Copies of D1 and D2 have been filed in the present proceedings. As per the Appellant, prior art D1 relates to inductive power transfer units having flux shields. Figure 5 of D1, which is reproduced below, shows a flux generating unit 50 comprising a coil 10 shaped into a flat solenoid wound around a former 20.

25. A flux shield 70, made of electrically-conductive material such as copper, is interposed between the flux generating unit 50 and the support surface 200. Learned counsel for the Appellant explains that in Figure 5 of Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 15 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 D1, shield 70 extends outwardly by distances e1 to e4 beyond each edge of the flux generating unit 50. D1 teaches that shield 70 forces any flux lines flowing through the metal desk to travel around the shield, increasing the path length and thus, the effective reluctance of the "desk" path. As a result, the presence of the desk has less effect, since more flux lines travel over the unit instead of going through the desk. It is further explained that in another embodiment, shown in Figure 7 of D1, reproduced below, shield 80 has five sides (base 82 and side walls 84, 86, 88 and 90). Base 82 of the flux shield 80 extends between the lower surface of the flux generating unit 50 and the support surface 200. D1, according to the Appellant, teaches that the height of the side walls 84, 86, 88 and 90 do not extend above the upper surface of the flux generating unit 50.

26. It is brought out that although D1 in Figure 7 shows an external wall of the shield 80, however, there is no disclosure or suggestion in D1 that the shield comprises a flange extending from the side walls (84, 86, 88 and 90) wherein the side walls are provided at an angle relative to the base 82. There is no disclosure in D1 that suggests that the angle of the side walls (84, 86, 88 and 90) should be between 90 degrees and 150 degrees relative to the base 82. Thus D1, according to the Appellant, fails to disclose the feature Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 16 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 "the outer portion extends from the device in a plane of the core means, and the lip is provided at an angle relative to the outer portion; wherein the angle is between 90 degrees and 150 degrees relative to the outer portion as claimed", claimed in claim 1 of the subject application.

27. With respect to prior art D2, stand of the Appellant is that it discloses a power supply device and a power acquisition device for an electromagnetic induction-powered electric vehicle. Figure 2 of D2, reproduced below, discloses a power supply device 10 for transferring power and a power acquisition device 20 for receiving the power from the power Supply device 10 by electromagnetic induction. A vertical gap G is formed between the power supply device 10 and the power acquisition device 20. The power supply device 10 includes a base plate 11, a plurality of plate-fixing anchors 12, a power supply core unit 13, a magnetic field generating unit 14, a plurality of magnetic pins 15, a power supply device protection cover 16 and a grounding wire 17. The power acquisition device 20 includes a power acquisition core unit 21, a power acquisition coil 22, a plurality of magnetic pins 23 and a power acquisition device protection cover 2.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 17 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

Neutral Citation Number: 2022/DHC/004336

28. Therefore, according to the Appellant, D2 discloses an elongated E-core topology in which conductors 14 run along a road within recesses between portions 13a, 13b, 13c within the core 13. However, such system cannot be recognized as a planar coil. Thus, D2 fails to disclose the feature that the inductive power transfer system comprises at least one planar coil provided on a first side of the core means and magnetically associated with the core means as claimed in claim 1 of the subject application. Furthermore, D2 does not disclose that the back plate 11 shapes the magnetic flux as envisaged by the subject invention. Instead, D2 in paragraph [39] teaches that the back plate 11 is made of steel and functions as a bracket for supporting the core within the road surface. D2 in paragraphs [46] and [58] discloses that the magnetic flux is transferred through magnetic portions 16a and 24a. Therefore, the base plate 11 of D2 is not equivalent to the shield means of the subject invention since it does not perform the function of shaping the magnetic flux for coupling.

29. Thus, claims the Appellant that D2 fails to disclose that the angle of the part of the base plate 71 arranged below the magnetic field generating unit 73 should be between 90 degrees and 150 degrees relative to the part of the base plate 71 that protrudes toward the surface of the road. D2 also fails to disclose the feature that the outer portion extends from the device in a plane of the core means, and the lip is provided at an angle relative to the outer portion, wherein the angle is between 90 degrees and 150 degrees relative to the outer portion as claimed in claim 1 of the subject application.

30. In view of the foregoing, put in a nutshell, it is the contention of the Appellant, that Dl and D2 do not disclose or suggest several features/elements, claimed in claim 1 of the subject application, individually Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 18 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08 Neutral Citation Number: 2022/DHC/004336 or in combination and cannot lead a person skilled in the art to the system of the presently claimed invention. The subject invention thus does not lack an inventive step and is a technological advancement over the cited prior arts.

31. From a reading of the impugned order, it is manifest and evincible that Respondent has neither discussed nor analysed how a person skilled in the art would move from the existing knowledge to the claimed invention, in light of host of points brought out by the Appellant allegedly demonstrating that the cited prior arts D1 and D2 cannot lead to the claimed invention, some of which have been adverted to above. Following the observations in F. Hoffmann-La Roche Ltd. (supra) and Agriboard International LLC (supra) as well as the Guidelines in the Patent Manual, Respondent was required to consider the existing invention disclosed in the prior art, the invention claimed in the patent application and discuss how a person skilled in the art would move from existing knowledge to the invention claimed by the Applicant. Therefore, in the absence of any discussion/analyses on these elements, the decision arrived at, wholly lacking in reasons, is contrary to the settled law, provisions of the Act and violates principles of natural justice and cannot be sustained.

32. Appellant has also brought forth that the documents cited in the impugned order were also cited in office actions of corresponding US, European (EP), Japanese (JP) and Korean (KR) patent applications. The corresponding US application has been granted over the present invention and the prosecution history of the US and EP applications along with a copy of the granted US Patent is placed on record. A list of all corresponding foreign applications of the subject invention as given by the Appellant, which, in my view, also needs consideration, is as under:-

Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 19 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

Neutral Citation Number: 2022/DHC/004336

33. For all the aforesaid reasons, the impugned order dated 15.02.2021 is set-aside and the matter is remanded back to the Respondent for consideration, afresh.

34. It is made clear that this Court has not expressed any opinion on the merits of the case and Respondent shall take a decision in accordance with law and uninfluenced by any observations made by the Court in this Order and pass a reasoned and speaking order.

35. Respondent shall decide the matter as expeditiously as possible and not later than 4 months from the date of receipt of this order.

36. Appeal is accordingly allowed and disposed of along with the pending application, in the aforesaid terms.

JYOTI SINGH, J SEPTEMBER 27, 2022/rk Signature Not Verified Digitally Signed C.A.(COMM.IPD-PAT) 8/2022 Page 20 of 20 By:KAMAL KUMAR Signing Date:18.10.2022 18:10:08

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Delhi High Court