Biomoneta Research Pvt Ltd. vs Controller General Of Patents Designs ... on 13 March, 2023

[Cites 10, Cited by 0]

Delhi High Court

Biomoneta Research Pvt Ltd. vs Controller General Of Patents Designs ... on 13 March, 2023

1. The present appeal has been filed by the Appellant- Biomoneta Research Pvt Ltd - seeking inter alia, an order to set aside the decision dated 9th February, 2021 (hereinafter 'impugned order') issued by the office of the Respondent-Controller General of Patents and Designs. The impugned order refused the application for grant of a patent titled 'Air Decontamination Assembly' bearing Application No. 201741016833, filed on 12th May, 2017 (hereinafter 'subject patent'), under Section 15 of the Patents Act, 1970 (hereinafter 'the Act') on the ground that the claimed subject matter of the subject patent does not constitute an invention under Section 2(1)(j) of the Act.

2. The Appellant company claims to be a start-up recognized by the Biotechnology Industry Research Assistance Council (BIRAC) and supported by the Department of Biotechnology, Government of India and the Karnataka State Government for various innovative products. The details of the funding and support received by the Appellant for the development of the product using the subject patent, as mentioned in the appeal are as follows:

"a) From the Government of India through the Department of Biotechnology (DBT) created Biotechnology Industry Research Assistance Counsel (BIRAC) to the tune of Rs. 1,02,00,000 (Indian Rupees One Crore and Two Lakhs only);

b) From the State Government of Karnataka to the tune of Rs. 30,00,000 (Indian Rupees Thirty Lakhs only);

C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 2 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44

2023/DHC/001816

c) Incubation, mentorship support worth USD 50,000 from the Centre for Cellular and Molecular Platforms (C-CAMP) conceptualized and funded by the DBT, Government of India."

3. The Appellant company claims to be a 'One Product, One Patent' company and the subject patent is that one patent. It also claims that its product which is derived from the subject patent application has received several innovation awards and recognitions. The said awards and recognitions are listed below:

                               S. No    Award/Recognition                                           Year
                               1        C-CIDA (COVID-19 Innovations                     Deployment 2020
                                        Accelerator) Stars for Impact
                               2        Pfizer Entrepreneurship Award                                   2019
                               3        Outstanding    performance:          Medtech's   got    talent 2019
                                        bootcamp
                               4        India's Top 50 technology startups under the DST- 2019

Lockheed Martin-Tata Trusts India Innovation Growth Programme (IGP) 2.0 5 India's Top 30 startups awarded by PWC 2018 Brief Facts

4. The subject patent was initially filed as a provisional specification on 12th May, 2017 and subsequently, the complete Specification was also filed on 11th May, 2017, within the prescribed period as per the Act. The application was published in the journal on 16th November, 2018. The Appellant has also filed a PCT Application bearing international application No. PCT/IN2017/050381, with International Filing Date of 11th May, 2018 deriving priority from the subject patent application. The said PCT application was published on 15th November, 2018. Thereafter, the Appellant has also C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 3 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 filed national phase applications in the USA and European Patent Office. The national phase application in the USA was filed on 17 th May, 2019 bearing the Application No. US16462184. The national phase application in the US was published on 12th September, 2012 with publication number US 2019/0275190 A1. The national phase application in the European Patent Office (EPO) was filed on 8th November, 2019 bearing the Application No. EP18797520.6. The application before the EPO was published on 18th March, 2020 with publication number EP3621662A1.

5. In compliance with the requirement given in Section 8 of the Act, read with Rule 12 of the Indian Patent Rules, 2003 (hereinafter 'the Rules') the Appellant has periodically submitted the 'Statement and undertaking regarding foreign applications' in Form 3 on the following dates:

                                        (i)     12th May, 2017;
                                        (ii)    5th March, 2018;
                                        (iii)   14th May, 2018;
                                        (iv)    20th June, 2019;
                                        (v)     3rd January, 2020;
                                        (vi)    23rd March, 2020; and
                                        (vii)    2nd September, 2021.

6. The Appellant filed the request for examination vide RQ No. E20194003817 dated 7th February, 2019 under rule 24B of the Rules. Thereafter, the subject patent was examined under Section 12 and 13 of the Act. The First Examination Report ('FER') with the statement of objections was issued on 7th February, 2019. The primary objections raised by the FER were in relation to lack of inventive step under Section 2(1)(ja) of the Indian Patents Act, 1970 and insufficiency of disclosure and definitiveness in the C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 4 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 claims. The Patent Office cited three documents D1 to D3, as the prior art documents, the details of which are as under:

                                        (i)     D1: US20120000782A1;
                                        (ii)    D2: US20130071298A1;
                                        (iii)   D3: US20100282083A1.

7. On 2nd April, 2019, the Applicant filed its response to the FER to address the objections raised in the FER. In the response, the Applicant highlighted the difference between the prior art and the subject application. Thereafter, a second FER was also issued on 2nd May, 2019, where all other objections were waived and only the objection on lack of inventive step under Section 2(1)(ja) of the Act was retained by the Patent Office. A further reply was given by the Applicant, distinguishing the prior art and subject patent. Finally, vide the impugned order dated 9th February, 2021, the patent application of the Appellant was refused by the Assistant Controller of Patents and Designs under Section 15 of the Act.

8. The objections of the Assistant Controller as recorded in the order dated 9th February, 2021, are captured in the extract below:

"7. The subject matter as described and claimed relates to an An air decontamination device (100) capable of reducing microbial load over a billion fold within 15 minutes to 30 minutes, the air decontamination device (100) comprising: an input unit (102) for receiving air from environment through a plurality of air inlet vents (114); an output unit (103) for providing decontaminated air; and a decontamination cassette (104) that comprises a first end (122) that is adapted to couple with the input unit (102), a second end (124) that is adapted to couple with the output unit (103); a plurality of pairs of conducting plates (108), C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 5 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 characterized in that each pair of conducting plates comprises, a positively charged conducting plate (108-

1), and a negatively charged conducting plate (108-2), wherein the positively charged conducting plate (108-

1), and the negatively charged conducting plate (108-

2) are charged to create a static electric field that ranges from 2.7 KiloVolt/centimetre (kV/cm) to 4.2 kV/cm, wherein the plane of the positively charged conducting plate (108-1) is aligned parallel to the plane of the negatively charged conducting plate (108-

2), wherein the positively charged conducting plate (108-1) and the negatively charged conducting plate (108-2) are separated by a distance that ranges between 804).

8. The cited prior arts:- D1: US20120000782A1, and D2: US20130071298A1, D3: US20100282083A1. The applicant's oral submission during the hearing and written submission dated 04.08.2020 in view of the objections cited in hearing notice regarding the inventive step in the alleged invention has been considered but is not fully persuasive. However, in this report document D1-D3 is retained for the detailed explanation of the obviousness of the amended application and hence the amended claims are not inventive under section 2(1)(ja) of IPA 1970 in view to prior documents D1-D3. All the features of claim 1 & 15 are disclosed in documents D1-D3. The applicant's agent argued that the following features are not disclosed in any of the cited documents D1-D3 documents i.e multiple pairs of electrically charged electrodes with distance between them, 3-D material coupled to charged plates, electric field range 2.7-4.2, alignment of the direction of the dipole.

The argument of the applicant's agent is not found satisfactory and persuasive in regard to the said features as the said features disclosed; Documents D2 discloses and uses multiple electrodes system as first electrode, second electrode, and counter electrodes, C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 6 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 second electrode and second counter electrode, which are kept at a distance from each other. The other said features are also disclosed in the documents D1-D3. Therefore, the subject matter as claimed in claims is not inventive in view of D1 with D3. The dependent claims 2-14 do not appear to contain any additional features which, in combination with the features of any claim to which they refer, meet the requirements of the 2(1)(ja) of Indian Patent Act 1970 with respect to inventive step in view of document D1 in combination with D2 & D3. Hence the subject matter of claims does not meet the requirement of Section 2(1)(j) of The Patents Act 1970.

09. The oral argument and the written submission of the agent of the applicant have been carefully considered. However, without prejudice, although the hearing submissions have attempted to address the other requirements, yet the substantive requirements of the Patents Act, 1970 i.e. requirements of sections 2(1)(ja) are not found complied with. Hence, in view of the above and unmet requirements, this instant application is not found in order for grant"

9. Challenging the said impugned order, on 11th March, 2021, an appeal was filed before the IPAB. However, around the same time in April, 2021, initially the Ordinance and finally the Tribunal Reforms Act, 2021 came to be enacted, which led to abolition of the IPAB. In view of the said abolition of the IPAB, the Applicant chose to file a writ petition before this Court being W.P.(C)-IPD 5/2021. Subsequently, the appeal which was filed before the IPAB with Delhi jurisdiction, also stood transferred to this Court, as C.A. (COMM.IPD-PAT) 297/2022.

10. In view of these facts, both these matters are being taken up together, as they arise out of the same impugned order.

C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 7 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44

2023/DHC/001816 Submissions on behalf of the parties

11. Mr. Adarsh Ramanujan, ld. Counsel appearing for the Appellant first highlights the facts that the subject patent is of enormous importance to the Applicant as it is a company, which is depending upon the present invention for its future business ventures. He submits that the Appellant company has been awarded with several innovation awards in view of this subject patent. He submits that the existence and the continuous working of this start-up wholly depends on the question as to whether a patent would be granted to this invention or not.

12. Ld. Counsel for the Appellant also highlights the fact that the existing air decontamination system in air purifiers work completely differently from the subject matter of the Appellant's invention. There are several deficiencies/demerits in the existing air decontamination devices, which require HEPA filters which requires regular maintenance, failing which the filter can become clogged. As a result of the clogging, the power consumption in these conventional air purifiers increases when the filters are clogged. Moreover, if the filters are not properly maintained, it could lead to breeding of micro-organisms as well. Air decontamination devices of a superior technology are required especially in establishments such as hospitals, ICUs and other sanitized places where regular maintenance operations could be a challenge.

13. In this background and the state of art, the Appellant developed the subject invention, which is based upon, alternative technology. The said technology uses metal conducting plates through which high voltage is passed and when the discharge is given at the high voltage, the microbes in the pathway are destroyed. Such a system, however, requires higher level of C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 8 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 power consumption and also has various other demerits including being not so environment friendly.

14. In the background of these two kinds of systems, which existed in the market, the Applicant developed a new technology, which contains the following features:

• Plurality of conducting plates are used with surfaces coated with 3D material along with chemical moieties for microbiocidal functions; • Instead of a high voltage discharge, a relatively low voltage discharge between 2.7 to 4.2 kV is given;

• When the low voltage field is applied, the electric field then aligns the dipoles in a particular direction, which leads to micro-organism also having a charge and getting attracted to the dipole;

15. In the operation of the device being claimed by the subject patent, upon the electric voltage being passed, the microbes and the bacteria etc. can be destroyed. This system does not use filters which conventional air purifiers use. It uses low voltage instead of high voltage and there is no discharge between the plates as they are parallel to each other.

16. There is use of a chemical moieties to which microbes and bacteria are attracted, which are then destroyed upon the low voltage being given. The present system developed by the Appellant is stated to be effective against various viruses including the Corona viruses. It is the submission of the ld.

Counsel for the Appellant that the pilot project is stated to have been completed and the Appellant deserves to be granted the patent.

17. Ld. Counsel for the Appellant, thereafter, seeks to distinguish the three prior art documents i.e., D1 to D3 to show that there are several distinguishing C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 9 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 features. He submits that the impugned order itself shows that none of these features are contained in any specific prior arts, which could have led the persons skilled in the art to arrive at the subject invention. He submits that the prior art discussion in the impugned order clearly shows only one feature is held by the Controller to be contained in the prior art document D2 and insofar as the other features are concerned, there is no enumeration of the features at all.

18. Ld. Counsel submits that the subject invention has various advantages including that since there are no filters, there are no maintenance issues. A low electric field is maintained thereby power consumption is reduced and there are various distinguishing features between the prior arts and subject invention.

19. Insofar as the prior art document D1 is concerned, ld. Counsel submits that the said prior art requires a high voltage discharge. It is his submission that prior art Document D2, requires two sets of plates for its operation, one to charge the microbes and second after the microbes are charged, the second set to kill the microbes by discharge. Finally, in prior art document D3, the microbes are charged and then trapped in a filter leading to their destruction. Thus, he says that all the three systems are distinguishable from the subject invention.

20. Finally, the ld. counsel for the Appellant claims that the patent office has failed to consider the stand of the Petitioner in response to the objection of lack of inventive step. He further submits that the patent office has raised multiple rounds of objection/opposition to the grant of the patent. The said rounds of objections are as follows:

C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 10 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44

2023/DHC/001816

1. In the First Examination Report (FER), the objection of lack of inventive step was taken. This was responded to by the Petitioner;

however, the same objection was reiterated in almost identical words in the second examination report.

2. Second Examination Report at page 469, page 470. This was also responded to by the Petitioner.

3. Hearing notice at page 493, no reasoning is given and it is unclear as to whether the stand of the Petitioner in its responses has been considered.

4. Page 53-56 in the impugned order also, there is no reasoning given as to in what manner the patent application lacks inventive step.

21. Short submissions have been filed by Respondent in this petition where the focus has been to support the objection of lack of inventive step, based on prior arts D-1 (US20120000782) and D-2 (US20130071298). However, during the oral hearing, learned counsel has relied upon document D-3 (US20100282083). He thus submits that in the reply arguments, the objection has moved from D1 and D2 and the main focus is on D-3. Irrespective, he submits that the subject patent does not lack inventive step when compared to the prior art D-1, D-2 or D-3.

22. A notable development which has been highlighted by ld. Counsel for the Appellant is the issuance of notice of allowance of the corresponding US patent application by USPTO. It is submitted that in the information disclosure statement (IDS) filed by the Petitioner, all the three documents cited as prior art by the examiner of the Indian Patent application, i.e. US patent publications D-1, D-2 and D-3 were disclosed by the applicant. In addition, various foreign patent documents were also disclosed, as the C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 11 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 applicant was confident that none of these documents would in any manner affect the novelty and inventive step in the subject patent. The prior art search strategy of the USPTO examination process also clearly mentioned D-3. However, the USPTO has, without any objections issued the notice of allowance and the patent application is likely to be granted.

23. Notice of allowance was issued on 19th August, 2022 by the USPTO and the patent is likely to proceed for grant shortly. In the reasons for allowance, despite D-1, D-2 and D-3 being available with the USPTO, the closest prior art which is cited foreign (Finland) patent application FL20165186. The Examiner has clearly distinguished the subject patent from the said closest prior art and issued the notice of allowance.

24. Proceeding to the distinction between the subject patent and D-1, D-2 and D-3, ld. Counsel for the Appellant has highlighted various aspects of the Mitsubishi patent i.e., prior art document D-2. The overall submission insofar as D-2 is concerned is as under: -

i) In D-2, the micro-organisms themselves are charged whereas in the subject patent the micro-organisms/microbes are attracted to 3D material in view of the opposing charge in the 3D material coated with the biocide which is charged with an electric filed.

The second distinction is that in D-2 there is presence of a filter which is completely eliminated in the subject patent.

ii) The D-2 discloses that the electrode captures the micro-organisms whereas such an electrode does not exist in this subject patent.

iii) There are two voltages which are used firstly for charging the incoming air and secondly to charge the micro-organisms and for the corona discharge whereas in the subject patent, the charging C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 12 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 is of the 3D material coated with the biocide to enhance its attracting capacity.

iv) Since the incoming air is not charged, there is less power consumption in the subject patent whereas in D-2, there is higher power consumption.

v) There is no 3D material which is disclosed in D-2 which merely discloses charging of the electrodes in order to capture the micro- organisms.

25. The above distinguishing features are highlighted on the basis of figure 1 & 2 as also a reading of the Complete Specification. Insofar as D-3 is concerned, ld. Counsel for the Appellant seeks to distinguish the same again by highlighting the following features

(i) D-3 uses the filter whereas the subject patent does not.

(ii) The dipole arrangement disclosed in the subject patent is not disclosed in D-3.

(iii) The focus in the subject patent is on the creation of the specific electric field at a specific voltage and the distance which is maintained as per the claims.

26. On the basis of reading of paragraph 54 of D-3 it is highlighted that the incoming contaminants are charged in D-3 unlike in the subject patent. The said paragraph is extracted as under:

"[0054] Ionic charging of incoming contaminants in electrostatic precipitation devices is prior art. However, enhancing the natural negative cell surface charge of pathogens to amplify interaction with active filter media, charged at the micron-fiber level by QUAT monomers/polymer coatings, is a new C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 13 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 discovery. FIG. 3 is a drawing of yet another embodiment showing ion field generator wires 8 at the upstream entrance of an air handling duct 9 that houses the HEPA filter cartridge 5. DC voltage in the neighborhood of −3000 volts applied at very low current to the ion field generator wires 8, is adequate for negative ionization at 9 without significant ozone production. Electrons "boil off" the wires and by diffusion collide with, or may attach to, incoming pathogens, further strengthening their natural net electronegativity. The larger, positively charged surfaces of inorganic particles attract and bind colliding electrons from the negative corona and negative ions created in the interelectrode space, tending to neutralize or reverse their natural positive surface charge. Charged pathogens are migrated to and bound-destroyed by the active filter media 5. Purified air exits the filter cartridge."

27. Finally, ld. Counsel points out the state-of-the-art as discussed in the background of the Complete Specification to highlight the need for low power consumption, less maintenance and more efficient air purifiers, especially, for use in healthcare facilities including ICUs. The disadvantages in existing air purifiers including ESPs are elaborately discussed and the invention is clearly highlighted in paragraph 15 and 23 where the creation of the static electric field and the distance between the two conducting plates is specified these features would completely distinguish the patent application from the prior art. Paragraphs 15 and 23 are extracted as under:

"[0015] In other words, the mildly inherent microbiocidal activity due to the chemical moieties embedded in the three dimensional material is greatly enhanced by the electric field. The enhancement is enabled by the electric field that is set up by the static voltage and the gap between the positively and C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 14 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 negatively charged conducting plates, and this electric field exerts a force on the microbial cells present in the air which is flowing through this electric field between the 3D material coupled to the parallel conducting plates. This force is created because the surface of live microbial cells has a non-zero electric potential called the zeta potential and is known in the art. This force on the microbial cells passing through the air flow path is perpendicular to the flow of the air to be decontaminated thus trapping the microbial cells on the three dimensional surface with chemical moieties and the cells are killed. The mechanism in the air decontamination device killing the microbes is attributed to the surface moieties of the three dimensional material that is realigned to a direction of the static electric field due to directional alignment of an electric dipole, to potentiate the antimicrobial activity of the three dimensional material for killing the microbial cells and for reducing a level of the microbial cells inside the 5 decontamination unit by over a billion fold within 15 minutes to 30 minutes. [0023] In yet another embodiment, when a distance between the positively charged conducting plate and the negatively charged conducting plate is 8 mm, the static electric field of 2.7 kV/cm is generated upon supplying a voltage of 2.16 kV to the plurality of the conducting plates, or when a distance between the positively charged conducting plate and the negatively 5 charged conducting plate is 8 mm, the static electric field of 4.2 kV/cm is generated upon supplying a voltage of 3.36 kV to the plurality of conducting plates."

28. In conclusion, it is submitted that the inventive step is clear from the view point of a person skilled in the art and the mere fact that air purifiers exist in the prior art does not mean that the Petitioner is not entitled to the grant of the patent.

C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 15 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44

2023/DHC/001816 Submissions of the Respondent

29. Mr. Harish V. Shankar, ld. CGSC appearing on behalf of the Respondents, has primarily relied on document D-3 which is US patent application no. US 2010/0282083 A1 published on 11th November, 2010.

30. His submission is that the said document air purification filter for a 'DISINFECTING AIR FILTER', which works almost on the same principles as are contained in the Applicant's patent application. The abstract of the said document D-3 is relied upon to argue that the electrical charge in the 3D filter attracts pathogens and microbes and since they are positively and negatively charged, the said microbes and pathogens are killed. Ld. CGSC, on the basis of a reading of D-3 submits that:

(i) The said patent discloses a filtration technology which is similar to what is disclosed in the patent of the Applicant.

(ii) The use of electric charges to attract microbes and pathogens is clearly disclosed in this patent.

(iii) The quaternary ammonium compounds which are used in this document are the same components/ chemicals which the Applicant uses in its patent for coating.

31. Ld. Counsel for the Respondents goes on to add that D-3 goes a step further than what the Appellants' subject patent discloses inasmuch as per the prior art document D-3, the technology disclosed is one of an Electrostatic Precipitator (ESP) device, which is described in paragraph 53 of the complete Specification of the said prior art document. Thus, it is submitted by the ld. Counsel for the Respondent that the filter disclosed in the prior art document D-3 is in fact, an advanced product as compared to the product which is the subject matter of the Appellants' subject patent application which uses C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 16 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 conducting plates which are parallelly installed in order to attract the microbes and pathogens by creation of an electric field.

32. Therefore, Mr. Shankar, ld. CGSC, submits after reading the main claim of the Applicant's patent application, that the entire so-called invention in the subject patent application is not inventive when read in the context of the three prior art documents. Ld. CGSC, thus, submits that the rejection of the Appellants' subject patent application by the Assistant Controller of Patents and Designs on the ground of lack of inventive step is justified. Analysis and Findings

33. The Division Bench of this Court in F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del) 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."

C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 17 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44

2023/DHC/001816

34. In order to ascertain whether the subject patent application of the Appellant involves an inventive step under Section 2(1)(ja) of the Act, at the stage of appeal, it would thus, be essential first to understand the prior art documents cited by the Assistant Controller of Patents and Designs while refusing the application for grant of the patent of the Appellant under consideration.

D1 - US20120000782A1- dated 5th January 2012

35. Exhibit D1 relates to a reactor, which consists of a uniform di-electrical field. The said reactor has three components.

1. Electrode unit

2. Dielectric catalyst container

3. Insulative housing

36. The reactor can be used in an air purifier, fluid steriliser, or waste water treatment equipment; such a reactor is described in D1 as a Dielectric Barrier Discharge Reactor.

37. The document D1 acknowledges that the use of Dielectric Barrier Discharge for the purpose of decomposing harmful substances in the air has been discussed in the art and the studies are ongoing. However, there was no commercial application of the same.

38. D1 records that similar reactors, which are conventional in nature, do not generate a uniform electric field, and the treatment result was not found satisfactory.

39. The object of the invention is in D1 to provide a uniform electric field, which is inexpensive and effective in decomposing organic compounds in the C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 18 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 air and also kills any bacteria in the gas or fluid. The reactor consists of an electrode unit, which has two plates, a positive plate and a negative plate, and a Dielectric Catalyst container between the two plates. In the arrangement described in D1, the flow directing plate is mounted above the catalyst container. These elements are enclosed in an insulative housing. The unit also has a frame structure, which has insulative, as also discharge needles evenly distributed on the insulative plane frame structure. The plates are located opposite to each other. The catalyst container is a hollow solid member, which has an internal coating of Metallic Catalyst Coating Layer. The flow directing plate is also covered by Metallic Catalyst Coating Layer and is made of a conducting substrate, having two opposite sides thereof covered by a metallic catalyst coating layer. The mechanism in which this prior art can be utilised to kill bacteria or other micro-organisms has been described in paragraph [0031] of the Complete Specification, with the specific components given in Fig. 8. The relevant extract of the Complete Specification and the Fig. 8 are extracted as under:

[0031] When applying a high voltage direct current to the at least one electrode unit, two electrode units are respectively connected to the positive terminal and negative terminal, or respectively connected to the negative terminal and the ground terminal, causing point-to-point electrical discharge between the respective discharge needles 45 at the positive electrode plate 3 and the respective discharge needles 45 at the negative electrode plate 31. Under a high voltage between respective discharge needles, dielectric barrier discharge is performed, causing positive ions and negative ions to be neutralized rapidly in the dielectric hollow barrier body. At this time, ions are transferred through the dielectric of the hollow barrier body. The C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 19 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 hollow dielectric is a good conductor for even discharge of electricity to produce strong energy. The strong discharge energy is effective in decomposition of the organic gas or organic solvent flowing through the dielectric hollow barrier body, and therefore it can kill any bacteria in the gas or fluid flowing therethrough and decompose any oil and smoke or harmful gaseous substances.

D2 - US20130071298A1 dated 21st March 2013

40. The document discloses that similar apparatus, for removing microbes and viruses suspended in a space, exist in the prior art. The prior art, however, poses technical problems, which resulted in scattering of microbes and viruses, which are deposited on the filter, higher maintenance such as filter cleaning, loss of energy, creation of noise, pressure loss etc. The subject invention in D2 is consisted of the following C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 20 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 i. An air path housing.

ii. A first high voltage application electrode - used to charge the airborne micro-organisms.

iii. A counter electrode facing the first high voltage electrode. iv. A filter capturing the air borne micro-organisms, which are charged by the first electrode.

v. A second high voltage application electrode, which is capable of subjecting the filter to an electrostatic induction in order to inactive the air borne micro-organisms that are captured by the filter.

vi. A second counter electrode

41. As per D2, the apparatus in D2 is enabled for capturing of microbes and viruses, charging the same and inactivation of the captured viruses. In addition, the portion, where the capturing takes place, is kept clean at all times. In the Complete Specification of this patent document, the process of killing the microbes is being referred to as inactivating of microbes. The mechanism for capturing and inactivating the microbes has been described in paragraph [0009] and [0010]. These paragraphs are extracted as under:

"[0009] The present invention provides an apparatus for capture and inactivation of microbes and viruses, the apparatus including an air path housing, a first high- voltage application electrode applied with a voltage to charge airborne microorganisms introduced in the air path housing, a first counter electrode placed so as to face the first high-voltage application electrode, a filter that captures the airborne microorganisms charged by the first high-voltage application electrode, a second high-voltage application electrode applied with a voltage to subject the filter to electrostatic induction and inactivate the airborne microorganisms captured C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 21 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 by the filter, and a second counter electrode placed so as to face the second high-voltage application electrode. [0010] The present invention provides a method for capture and inactivation of microbes and viruses, the method including the steps of introducing airborne microorganisms into an air path housing, charging the airborne microorganisms introduced in the air path housing, capturing the charged airborne microorganisms with a hydrophilic filter subjected to electrostatic induction, and inactivating the airborne microorganisms captured by the hydrophilic filter with plasma, wherein these steps are repeated."

D3 - US20100282083A1 dated 2nd January, 2008

42. It discloses air cleaning devices for removal of organic pathogens. It deals with an apparatus, which would attract and bind the pathogens to filtration material so as to chemically dismantle and destroy the pathogen. D3 specifically emphasises the need for improvement of air quality, especially in the light of epidemic pathogens such as Avian Virus, SARS, Influenza etc. The document discusses the existence of Electrostatic Filtration Technology, which is used for abatement of industrial affluents. Such technologies create a strong field ionization and increase the electro-negativity of the particles by strong field ionization. They then move to the weaker negative electric field away from the cathode and are thereafter charged positively. This process also involves results in higher ozone level, which is, thereafter, exhausted into the environment.

43. The existing consumer air purifiers make use of the positive charge of the particles to attract them to negatively charged plates and in effect purify the air. The mechanism for using D3 for killing/destroying pathogens, makes use of HEPA or ULPA filters. The mechanism is briefly described in C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 22 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 paragraphs [0014] and [0015]. The relevant extract from the Complete Specification of D3 is extracted as under:

"[0014] The invention destroys suspended pathogens in the air of enclosures that are still occupied by people, plants and livestock while they are breathing the air. [0015] More particularly, this invention separates suspended pathogens by migrating them out of the airstream to the filter media surface, binds them there, then chemically ruptures their cellular enclosures, spilling the organic contents to destroy the pathogen. These novel properties are incorporated in the micro- fibers comprising HEPA or ULPA filter media, or in lower MERV rated conventional air purification filters, by several novel methods."

44. Considering that the prior art has been discussed and the functioning/mechanism of the prior art has been ascertained, now, the invention in question is considered below.

Description of Invention in Subject Patent Application

45. The invention is for an air purification filter that attracts the pathogens to a filter media, binds them, chemically ruptures their cellular enclosures and destroys the pathogens. For the said purpose, HEPA or ULPA filter are used.

46. The apparatus uses biocide coated polymeric microfibers in a HEPA filter media along with a voltage generator.

47. The subject application seeks the patent for an air decontamination device with an object of reducing air borne microbes.

48. The complete Specification sets out how infections are caused by micro-organisms, especially in a healthcare facility, which could include hospitals nursing homes, clinics, rehabilitation facilities etc. Such infections could be externally induced or created from the internal sources such as C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 23 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 patients, who are admitted in these facilities. It specifically highlights hospital acquired nosocomial infections and infections induced by ventilators etc. The document highlights infections caused in the ICUs as well. Apart from healthcare facilities, infections in other enclosed spaces such as aeroplanes, office space, malls, and in manufacturing/storage facilities is also highlighted.

Assessment of Prior Art in the Complete Specification

49. The Complete Specification acknowledges that the existing air purifiers typically suck the air and filter the same using fine filters or sieves. These filters are subjected to UV light or heat killing the microbes. After the microbes are killed, the air is released back into circulation. According to the speciation, the disadvantage in the existing air purifiers is that it reduces speed in the flow of air causing pressure drops. They are also expensive and bulky and require high power consumption in view of the use of UV lamps and heating elements etc. In view of the expensive nature of these devices, they are used in operating theatres and not in other areas of health care facilities such as ICU, OPD etc.

50. According to the complete specifications, the air filters are inefficient to prevent nosocomial infections.

INVENTION

51. The subject air decontamination device has the four main components.

                                     (i)         The input unit
                                     (ii)        The output unit
                                     (iii)       Decontamination cassette
                                     (iv)        3D material



                          C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021                            Page 24 of 31
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:14.03.2023
14:26:44
                                                                                        2023/DHC/001816

52. Each of the above 4 units are connected to each other. The highlight of the device is the decontamination cassette, which has a plurality of conducting plates. It uses electricity of 2.7 kV to 4.2 kV between the conducting plates in a manner that one plate is positively charged and other plate is negatively charged. A gap is maintained between the plates of 08 mm to 12 mm. The electric field is perpendicular to the air flow path. The planes of the positively charged conducting plates and the negatively charged conducted plates are parallel to each other. The 3D material is coupled to both the surfaces of each of the plates by a coating with chemical moieties.

53. Once the microbes are attracted, the function which is performed, is similar to what exist in the state of art. However, it is claimed that the microbiocidal activity is enhanced by the electric field due to the surface moieties, which is re-aligned to a direction of the electric field in a manner so as to kill the microbial cells and reduce the microbial cells inside the unit by over a billion folds.

54. One of the embodiments is providing of a sieve between the input unit and the decontamination unit. In the second embodiment, it may contain a ventilation unit. In the first embodiment, sensors are provided for measuring temperature, humidity, microbial contents, etc. Discussion on Inventive Step:

55. Analysis of the prior art documents with the complete Specification in the subject application shows that all of the documents deal with systems for air purification. The concept of capturing the microbes and viruses in the air by creation of an electric field is also known in the art. However, the construction of each of the systems or apparatus and the specific electric fields generated and the manner in which filters/sieves are used is different in each C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 25 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 of the documents.

56. The subject invention has made various modifications over the existing devices/apparatus in terms of providing specific electric fields, specific gap between the conducting plates and use of multiple plates within a decontamination unit.

57. The decontamination cassette is a replaceable cassette into the plates are coated with chemical moieties. The presence of the chemical moieties attracts the microbes and viruses and kills them. The efficiency of this apparatus is claimed on the basis of the distance between the plates, coating of the 3D Fabric the three layers to both sides of the conducting plates. This is claimed to have enhanced the microbiocidal activity in an unpredictable manner giving surprising effects. Though the fundamental principles on which the decontamination device works may be the same, the fact that the increased electric field results in reduction of the airborne bacterial load and that too with low power consumption and in a compact manner would make the subject device not obvious to a person skilled in the art.

58. In order to establish inventive step, various advantages could be considered

1. Higher decontamination

2. Lower power consumption

3. Compactness of the device

4. Manufacturing at lower cost

5. Easier maintenance

59. The subject device is claimed to be having higher commercial potential in the form of cheaper manufacturing costs and greater application. The C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 26 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 reasoning given by the Controller is that D2 discloses use of multiple electrode systems, which are kept at a distance from each other and the remaining features are disclosed in document D1 to D3. The Controller's order itself shows that the inventive step in the subject application is being defeated by a combination of elements in the D2 along with some elements of D1 and D3. This would be a Hindsight approach which is not permissible.

60. The prior art documents D1 to D3 relate to the same field and would constitute valid prior art. However, the question is whether the combining of the features in the D1 on the one hand along with features in the D2 and D3 is obvious to a person skilled in the art.

61. In the light of the prior art D-1, D-2 and D-3 and the difference between the subject invention and the said prior arts, the question that would arise in law is whether the invention claimed in the subject patent application is no more than a workshop improvement or whether it is a mere application of an old contrivance.

62. In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511 the Supreme Court was dealing with an alleged invention which according to the Court involved no substantial exercise of the inventive power or innovative faculty. The product in question here i.e., air purifier has been known in the art and, thus, any improvement would have to be judged on the basis of the knowledge or the state of the art. The patent office has rejected the patent on the ground that document D1 in combination with D2 and D3 defeats the subject patent.

63. There can be no doubt that some of the features in D1, D2 and D3 are present in the subject invention, but is there something more? Can this patent C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 27 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 be described as a lucky accident1 and can it be claimed that the subject patent application lacks even the scintilla of invention2?

64. In the opinion of this Court, the subject invention is not a mere addition to a well-known combination, but it has some new features and is an improvement in the method which has brought in greater efficiency. In such inventions, the EPO guideline which deal with combination vs juxtaposition or aggregation would be relevant, the said principle as laid down by the EPO is set out below:

"9.5 Combination vs. juxtaposition or aggregation The invention claimed must normally be considered as a whole. When a claim consists of a 'combination of features', it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that 'therefore' the whole subject- matter claimed is obvious. However, where the claim is merely an 'aggregation or juxtaposition of features' and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step. A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features..."

65. Thus, if there is a synergistic combination or a working interrelation which produces a new and improved result, the subject matter is patentable. Lord Tomlin in British Celanese Ltd v. Courtaulds Ltd, (1935) 52 RPC 171 1 30 RPC 558 2 23 RPC 461 C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 28 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 observed as under:

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working interrelation producing a new or improved result then there is patentable subject-matter in the idea of the working interrelation brought about by the collocation of the integers."

66. In Albert Wood and Amcolite Ld. v. Gowshall Ld., (1936) 54 RPC 37, the Court of Appeal held as under:

"The dissection of a combination into its constituent elements and the examination of each element in order to see whether its use was obvious or not is, in our view, a method which ought to be applied with great caution since it tends to obscure the fact that the invention claimed is the combination. Moreover, this method also tends to obscure the facts that the conception of the combination is what normally governs and precedes the selection of the elements of which it is composed and that the obviousness or otherwise of each act of selection must in general be examined in the light of this consideration. The real and ultimate question is: Is the combination obvious or not? In the present case we think that the Patent satisfies this test"

67. In addition, the subject invention addresses various disadvantages in the prior art such as frequent changing of filters, high power consumption, easier utility owing to the size of the device, lesser maintenance costs, more effectiveness for decontamination. These factors are also, secondary considerations which tilt the Court to hold that the invention is not a result of a mere combination but involves an inventive step. The use of chemical C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 29 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 moieties instead of mere electrical fields has not been highlighted in any of the prior arts. The existence of multiple plates and creation of a higher electrical field with lower power consumption is also a feature that makes the subject invention not obvious to a person skilled in the art. Air Purifiers have been known in the art for several years but no other air purifier has been shown to the Court which is close to the subject invention's construction both in terms of physical construction and effectiveness.

68. It is a settled position in law that secondary considerations by themselves may not qualify an invention to become patentable but when a set of old results are combined in a new and profitable manner, a patent can be granted. Lack of inventive step requires a person skilled in the art to be able to 'jump' from the existing prior art to the subject invention. There is nothing on record to establish that this 'jump' could have been achieved on the priority date, especially because even the controller arrives at the finding of lack of inventive step upon a combination of D1, D2 and D3. The differences between the prior arts & the subject invention lead to a finding of inventive step rather than its absence.

69. Enormous emphasis is placed by ld. counsel for the Appellant on the US prosecution to argue that the same very documents i.e., D1, D2 and D3 were also considered in the US Patent Office and the patent has been proceeded to grant.

70. During the course of hearing, in this matter, ld. counsel had pointed out that the notice of allowance has been issued by USPTO, however at the time when the present judgment was pronounced, upon verification it was revealed that US patent has, in effect, been now granted and numbered as US11565017B2 on 31st January, 2023. This fact would also add strength to C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 30 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44 2023/DHC/001816 the Appellant's case that its innovation is not hit by the prior to art documents i.e., D1, D2 & D3.

Directions

71. In the overall facts, the appeal, C.A.(COMM.IPD-PAT) 297/2022 is liable to be allowed. Accordingly, the impugned order is set aside and the patent application is directed to proceed for grant. List before the Patent Office on 20th March, 2023 for completion of required formalities so that the grant of the subject patent application can be advertised in the Journal.

72. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trademarks of India on the e- mail- [email protected] for compliance.

73. W.P. (C)-IPD 5/2021 is also disposed of in the above terms. All pending applications are also disposed of.

PRATHIBA M. SINGH JUDGE MARCH 13, 2023/dk/am C.A.(COMM.IPD-PAT) 297/2022 & W.P.(C)-IPD 5/2021 Page 31 of 31 Signature Not Verified Digitally Signed By:DHIRENDER KUMAR Signing Date:14.03.2023 14:26:44

Unlock Advanced Research with PRISMAI

Delhi High Court