(T) CMA (PT) No.

2 of 2024

IN THE HIGH COURT OF JUDICATURE AT MADRAS

Reserved on:24.07.2024 Pronounced on:23.08.2024

CORAM:

THE HON`BLE MR.JUSTICE P.B.BALAJI

(T) CMA (PT) No.2 of 2024

Versalis SPA,
Pizza Boldrini,
1-20097 San Donato Milanese (MI),
Italy represented by its Constituted Attorney,
Mr.Pradeep Yadav.
.. Appellant

..Vs.

The Assistant Controller of Patents,

Intellectual Property Office Building,
GST Road, Guindy,
Chennai – 600 032.

.. Respondent
Prayer: This appeal came to be numbered by transfer of IPAB Case
OA SR.No.74/2017/PT/CHN from the file of the Intellectual Property
Appellate Board, Chennai praying to allow the present Appeal and set aside
the order dated 02.05.2017 of the learned Assistant Controller and present
Application being IN7854/CHENP/2011 be granted and to issue directions
to the respondent to allow the Appellant to make necessary amendments in
the claims, if needed, in order for the Application to be granted and costs be
allowed to the Appellant.

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For Appellant : Mr.Arun C.Mohan

for M/s.Chadha & Chadha

For Respondent : Mr.V.T.Balaji,

Central Government Senior Panel Counsel

JUDGMENT

The Appellant challenges the impugned order dated 02.05.2017 in

7854/CHENP/2011, rejecting the Appellant’s patent application for the

invention, which relates to “a process of hydrolysis of lignoceullulosic

biomass”.

2. I have heard Mr.Arun C. Mohan, learned counsel for the Appellant

and Mr.V.T.Balaji, learned Central Government Senior Panel Counsel, for

the respondent. I have also perused the records including the impugned

order. I have also carefully gone through the decisions on which the learned

counsel for the Appellant has placed reliance on.

3. The main ground on which the patent has been rejected is that the

claims are not inventive under Section 2[1(ja)] of the Patents Act, 1970 (in

short 'Act').

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4. The principal grounds of challenge to the said order, as canvassed

by the learned counsel for the Appellant are that the Appellant had clearly

shown that the claimed invention got over the disadvantages of the

conventional method viz., difficulty to hyrdolyze cellulose to its basic

sugars, which also consumed a lot of time and effort and resultantly,

uneconomical. The claimed invention, apart from the above, did not require

high shear and the process was achieved in a much shorter time. That apart,

the invention did not require addition of any inorganic acid or any lignin

solubilizing organic solvents.

5. The invention consists of a process by which, feedstock comprising

of biomass having a high dry content and water is brought in contact with a

solvent in the presence of a catalyst and maintaining the contact at a

temperature in the range of 20 degrees centigrade to 95 degrees centigrade to

create a hydrolyzed product from the biomass in the feedstock.

6. Mr.Arun C.Mohan would also contend that the present invention

has been recognised abroad and as many as 23 patents have been granted to

the Appellant in countries like Australia, Brazil, China, Europe, New

Zealand, USA, South Africa etc. and more importantly all the cited prior arts

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were also cited in the prosecution of the EP application and ultimately, the

claimed invention was held to be novel and inventive over the prior arts

cited against it.

7. He would also take me through specific prior arts that were held

against the Appellant and elaborate his submissions as to how the Controller

fell in error in rejecting the patent on the ground of lacking inventive steps

over the prior arts. He would also submit that the invention was clearly

novel and inventive over prior arts D1, D3, D5, D9 and D10 and would

make his submissions regarding these prior arts and distinguish them from

the present invention.

8. He would further submit that the subject application met all the

requirements of Section 10(4) & 10(5) of the Act and was clearly patentable

and not hit by Section 3(d) of the Act. In support of his contentions, the

learned counsel for the Appellant would also rely on the following decisions:

1) Enercon India Ltd. v. Aloys Wobben, 2013 SCC

OnLine IPAB 91
2) Farbwerke Hoeschst Aktiengesellschaft Vormals
Meister Lucius & Bruning, A. Corporation v. Unichem
Laboratories, AIR 1969 Bom 255
3) FDC Ltd. V. Sanjeev Khandelwal and another,

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MANU /IC/0009/2014
4) Natco Pharma limited v. Pfizer Products Inc. in
Patent Application No.537/Del/1996
5) Gandhimathi Appliances Limited v. L.G.Varadaraju
and others, 2000 SCC OnLine Mad 1238
6) Tata Global Beverages Limited, West Bengal Vs.
Hindustan unilever Limited, Maharashtra, India and another,
reported in CDJ 2012 IPAB 136.

9. Per contra, Mr.V.T.Balaji, learned counsel for the Respondent

would first and foremost submit that, the Appellant was given a full and fair

opportunity and there was no violation of the principles of natural justice. He

would secondly submit that, all the prior arts anticipated the subject matter

of the claimed invention and therefore, in terms of Section 2(1)(ja) of the

Act, the Appellant’s invention did not involve any technical advancement.

He would also contend that there was a clear lack of inventive step as the

teachings of the prior arts D1, D3, D5, D9 and D10 clearly made it obvious

for the person skilled in the art to arrive at the present invention.

10. The learned counsel for the respondent would also contend that

the invention did not meet the requirements of Section 10(4) and 10(5) of the

Act as the claim lacks clarity, support and ample disclosure (Section 10(4))

and the claims were also not supported by the description with working

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examples (Section 10(5)). The learned counsel would also invite my

attention to Section 3(d) of the Act and submit that the claims, even post

amendment, were only a use of a known process for hydrolysis and it did not

produce any unknown technical effect. The learned counsel for the

respondent would therefore pray for dismissal of the appeal.

11. The moot point is whether the cited prior arts, especially D1, D3,

D5, D9 and D10 teach away from the present invention and whether it has

shown any technical advancement over the said prior arts, for it being

termed as novel or inventive. Prior art D1, discloses a free-fall mixing based

on gravity. It involves a process where biomass is loaded continuously into a

liquefaction reactor. The teaching of D1 is thus recycling of the liquid

fraction back into the liquefaction step. However, the Appellant’s invention

is very different as the composition of the matter being recycled is not the

same. The Appellant reintroduces the hydrolyzed solution which has shown

dramatic results, especially in terms of lesser time consumption. This aspect

has not been dealt with in prior art D1 and hence, I find that D1 teaches

away from the present invention, which shows an inventive step over D1.

12. Regarding prior art D3, it is an apparatus for enzymatic hydrolysis

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and fermentation of pre-treated lignocellulosic material, in the form of a

tower bioreactor. In this prior art, it is only the enzymes that are recycled

whereas, in the present invention the biomass is brought in contact with a

solvent which contains a hydrolyzed species and hence, I am unable to

countenance the argument of the learned counsel for the respondent that this

prior art also comes in the way of the claimed invention.

13. The next prior art is D5. D5 involves a process where ethanol is

obtained from milled grain which is a substrate deprived of lignin. However,

the present invention involves process where the substrate is itself different

and hence the finding of the respondent that the teachings of D5 are obvious,

cannot be sustained.

14. Prior art D9 involves a process where reactor is used for

hydrolysis of the lignocellulosic feedstock and recycling the mixture in an

extended loop which is returned to the reactor. D9 does not teach that the

resultant hydrolysed feedstock itself can act as a solvent for hydrolysing the

raw feedstock.

15. Insofar as prior art D10 is concerned, it discloses a continuous

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hydrothermal pre-treatment without addition of acids to the feedstock and

according to the Respondent, it anticipates the subject matter of invention

and enzymatic hydrolysis of biomass is obvious to a person skilled in the art.

However, according to the present invention, the water soluble hyrdrolysed

species of the same feedstock itself acts as a solvent for the fresh feedstock

of same species. Thus, the teachings of D10 also do not suggest that it

anticipates the present invention.

16. In view of the above, I am unable to sustain the findings of the

respondent that the invention is obvious to a person skilled in the art.

17. Coming to the objections regarding Sections 10(4) and 10(5) of

the Act, according to the Controller, which is also reaffirmed by the learned

counsel for the respondent, the claims lack clarity and ample disclosure and

the complete specification shows deficit support for the range of 50:50 to

90:10 and are therefore, hit by Section 10(4). Insofar as Section 10(5), it is

contended that the Claims 1 to 19 are not supported by the description with

working examples. The contention of the learned counsel for the Appellant,

in reply, that the statute does not require examples to be provided over the

entire range claimed, is acceptable. The complete specification has to only

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indicate the best method which, according to the Controller is absent in the

present case. However, it is seen from the complete specification that the

invention is all about contacting the feedstock with the solvent and

maintaining optimised conditions.

18. In FDC Ltd. V. Sanjeev Khandelwal and others, (referred herein

supra), it has been held that Section 10(4) requires the complete

specification to fully as well as particularly describe the invention and

disclose the best method to perform the invention and that it is not

mandatory that the claims should be representative of the best method.

19. In Tata Global Beverages Limited, West Bengal, (referred herein

supra), the IPAB in and by its order dated 18.10.2012 held that it was not

necessary to provide examples over the entire range claimed and reiterated

the law that it is mandatory only for the specification to disclose the best

working example. In fact, in the instant case, the Appellant has provided

working examples for the range claimed, even in the complete specification.

20. The Bombay High Court, in Farbwerke Hoeschst

Aktiengesellschaft Vormals Meister Lucius & Bruning, A. Corporation,

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(reffered herein supra) held that since the specification and claims are

addressed to only those who possess a high degree of knowledge in the field

of science to which they relate, it is not necessary to describe the processes

when they are part of common general knowledge available to persons

skilled in the art, who can refer to technical literature on the subject for the

purposes of carrying them into effect.

21. The law is therefore quite well settled on this issue. Disclosure of

‘at least one way’ is sufficient as long as it is clearly indicated in the

specification as it would enable the person skilled in the art to carry out the

invention. In this regard, I have examined the complete specification

putforth by the Appellant and I find it to be clearly disclosing adequate

information that would be sufficient to a person skilled in the art to carry out

the invention without undue experimentation. Hence, the argument of the

learned counsel for the respondent that the invention is hit by Section 10(4),

cannot be countenanced.

22. Insofar as the objection pertaining to Section 10(5), it is sufficient

if the claims are fairly and not exactly based on the description. Therefore,

on an erroneous interpretation of the statutory provision, the Controller has

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come to a conclusion that the description does not support the claim as

mandated under Section 10(5) and therefore, this finding is also liable to be

set aside.

23. Lastly, Section 3(d) is cited and put against the Appellant on the

ground that the invention is a mere use of a known process of hydrolysis,

especially in the light of the prior art and hence, non- patentable. It is easy

for one to state, on hindsight that, this process is well known and therefore a

patent has to be refused. The fact that the invention claimed was never

thought of earlier, though it is stated to be so obvious, itself carves out as a

case for patent.

24. In Natco Pharma’s case (referred herein above), it has been held

that when a particular solution itself was not known prior to the invention

then it cannot be termed as a mere use of a known process.

25. In Enercon India Ltd., (referred herein supra), the Intellectual

Property Appellate Board held that, where an invention seems obvious to a

person skilled in the art because of what he knows now is a clear case of

hindsight deduction and that the same is not acceptable. The Courts have

consistently upheld the ‘could-would’ approach. The crucial aspect is not

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whether the person skilled in the art could have carried out the invention, but

whether he would have done so in the expectation of either solving the

problem or showing some improvement or advantage.

26. In Gandhimathi Appliances (referred hereinabove), a Division

Bench of this Court held that, when the invention is dissected and seen

separately, it may not show any inventiveness however, a combination if

shows a new use, even if of known integers, the ingenuity and skill shown in

bringing about such a combination renders the invention patentable. It was

further held in this decision that despite pre-existing knowledge, when the

person who claims invention was the first to visualise the use of known

integers in a combination, then it cannot be regarded as obvious.

27. Thus, applying the ratio laid down in the above decisions to the

facts of this case, it is clear that the Controller fell in error in denying the

patent to the Appellant. The drawing of a comparison to curd is also really

improper. Curd is made through a chemical process called fermentation

which is caused by a bacteria, Lactobacillus and that has got nothing to do

with the present claim and the two are entirely in different zones, warranting

no comparison at all.

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28. Yet another important aspect which cannot be lightly brushed

aside is the fact that all the cited prior arts have been cited in the EP

application with the same objections and yet the present invention was held

to be inventive over the cited prior arts. In fact, the Appellant has been

granted a patent for the same invention in as many as 23 jurisdictions. Thus,

taking this into account, it is amply clear that the present invention is

inventive, novel and has shown benefits/advantages over the prior arts cited

and hence, patentable.

29. For all the above reasons, I am constrained to allow the appeal,

setting aside the order of the respondent/Assistant Patent Controller,

rejecting the Appellant’s patent application. However, there shall be no

order as to costs.

23.08.2024

Index : Yes/No
Speaking/Non-speaking order
rkp

To
The Assistant Controller of Patents,
Intellectual Property Office Building,
GST Road, Guindy,

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Chennai – 600 032.

P.B.BALAJI,J.
rkp

(T) CMA (PT) No.2 of 2024

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23.08.2024

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