*IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment Reserved on : 3rd May, 2023.
Judgment Delivered on : 2nd June, 2023.

+

C.A.(COMM.IPD-PAT) 477/2022
AGFA NV & ANR.
Through:..... Appellants
Mr. Essenese Obhan, Ms. Aparna
Kareer and Ms.Ayesha Guhathakurta,
Advocates.

versusTHE ASSISTANT CONTROLLER OF PATENTS AND
DESIGNS & ANR.
..... Respondents
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr.
Sagar
Mehlawat
andMr.Alexander Mathai Paikaday,
Advocates.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSALJUDGMENTAMIT BANSAL, J.
1.

The present appeal under Section 117A of the Patents Act, 1970

(hereinafter ‘the Act’) has been preferred against the order dated 17th June,
2022 (hereinafter ‘impugned order’) of the Assistant Controller of Patents
and Designs, Indian Patent Office, Delhi (hereinafter ‘Controller’) refusing
the grant of patent in respect of patent application no.201617023479(hereinafter ‘subject patent’) filed by the appellants.
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BRIEF FACTS
2.

Brief facts necessary for deciding the present appeal are set out

below:
2.1

The appellants filed the national phase application no. 201617023479
in respect of the PCT Application no.PCT/EP/2015/052030 at the
Indian Patent Office titled ‘MANUFACTURING OF DECORATIVELAMINATES BY INKJET’ on 8th July, 2016.

2.2

The Patent Office issued a First Examination Report (FER) dated 27th
April, 2019 in terms of which, objections under Sections, 2(1)(j),2(1)(ja) as well as Sections 10(4) and 10(5) of the Act were raised.

2.3

A detailed response along with an amended set of claims was filed onbehalf of the appellants to the aforesaid FER on 11th July, 2019.

2.4

On 6th March, 2022, the respondents issued a hearing notice fixing thedate of hearing for 21st March, 2022, retaining the objections asmentioned in the FER.

2.5

The appellants filed written submissions dealing with the issues thatwere discussed during the oral hearing held on 21st March, 2022 alongwith an amended set of claims on 1st April, 2022.

2.6

The impugned order was passed by the Patent Office on 17th June,
2022 rejecting the subject application.

3.

Notice in the appeal was issued on 22nd September, 2022. Pursuant

thereto, written submissions have been filed on behalf of the respondents aswell as the appellants.
4.

The main grounds for refusal were the following:

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(i)The amended claims failed to meet the requirements under Sections
10(4)(c) and 10(5) of the Act as they were vague and the scope ofclaims was indefinite(ii)

The amended claims are not patentable in terms of Section 2(1)(ja) of
the Act.

Submissions
5.

While assailing the impugned order, counsel for the appellants madethe following submissions:(i)

The impugned order records that steps 1 to 4 have been disclosed in
the prior art cited as D5. However, it does not make any mention of
step 5.

(ii)

The impugned order wrongly notes that the characterised feature 5b isdisclosed in D5. The prior art cited as D5 teaches “application weightor wet weight” and not “total dry weight” as required by claim 1.

(iii)

The impugned order admits that feature 5a is not taught by prior art
document D5, but relies on ‘common general knowledge’ to refuseclaim 1. However, it does not provide any reference or basis toestablish ‘common general knowledge’. In this regard, reliance isplaced on the judgment of Generics (UK) Ltd. v. Daiichi
Pharmaceuticals Co.Ltd., [2009] R.P.C. 4.

(iv)

Document D5 was also cited in opposition proceedings against theappellants before the European Patent Office. However, the European
Patent was granted in favour of the appellants. The claims granted by
the European Patent Office are similar to the claims refused by the
impugned order.

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(v)The impugned order wrongly states that the terms of the claims arevague and indefinite. The terms of the patent claims held to have been
indefinite, have been described in the complete specification and arewidely used in the patent specifications and would be clear anddefinite to a person skilled in art.

6.

Per contra, counsel for the respondents while defending the impugnedorder made the following submissions:(i)

Method steps 1 to 4 as well as characterised feature 5b are explicitly
disclosed in document D5. In this regard, reliance is placed onparagraph 33 of the document D5 (page 248 of the appellants’
documents) which states that, “The application weight of the inkreceiving layer can be 2 to 25 g/m2, in particular 3 to 20 g/m2, butpreferably 4 to 15 g/m2.”(ii)

In respect of feature 5a, it is related to workshop modification
optimization and hence, does not involve any ingenuity. Therefore, it
is obvious to the person skilled in art to use the common generalknowledge along with teachings of D5 and arrive at characterised
feature 5a as claimed in claim 1.

(iii)

Counsel for the respondents fairly submits that no instructions havebeen received as to why method step 5 has not been considered in theimpugned order. Further, no submissions have been made with regard
to the terms used in the claim being indefinite or vague.

7.

I have heard the counsels for the parties and perused the record.

Analysis and Findings
8.

The first objection is lack of inventive step under Section 2(1)(ja) of

the Act and the second objection is on lack of clarity and succinctness underSignature Not Verified
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Section 10(4)(c) and Section 10(5) of the Act. I shall first deal with thesecond ground first.
9.

In the impugned order, the Controller has held that the subject patentapplication is violating Section 10(4)(c) and Section (10)(5) of the Act. The
reasoning for the same is that the claims of the subject patent application are
not clear and succinct and the scope for protection of the invention has notbeen clearly defined. The relevant extract of the impugned order where thesaid finding has been recorded is reproduced as under:“The features claimed in the claim with expressions“thermosetting resin, an ink acceptance layer,
inorganic pigment, polymeric binder” are neither
definite nor succinct. There are varieties ofmaterial/polymers/chemicals available in the market
which comes under the category of thermosetting resin,
ink acceptance layer, inorganic pigment and polymericbinder. Applicant failed to pinpoint the particularmaterial in the claims. These terms are vague and do
not have any definite boundary, this makes scope ofclaims indefinite.”10.

In effect, the Controller has held that some expressions/terms, whichhave been used in the subject patent application as vague and not having adefinitive boundary. The said expression/terms objected to by the Controller
are as follows:i. ‘thermosetting resin’ii. ‘ink acceptance layer’iii. ‘inorganic pigment’iv. ‘polymeric binder’

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11.

I shall now examine if there is any specific definition and clarity onthese expressions in the complete specification of the subject patentapplication.
Objection on Lack of Clarity
12.

The expression/term ‘thermosetting resin’ has been used in the

Independent Claim 1 and is also the focus of a specific dependent Claim i.e.,
Claim 3. The first Independent Claim also contains the other three
expressions/terms as well. For the sake of clarity, the said Independent
Claim is extracted as under:“1. A method for manufacturing decorative laminates
including the steps of:a) impregnating (18) a paper substrate with athermosetting resin by submersion of the paper
substrate in a bath of thermosetting resin;b) applying on the thermosetting resin impregnatedpaper substrate an ink acceptance layer containing an
inorganic pigment P and a polymeric binder B having
a weight ratio P/B of inorganic pigment to polymericbinder in the range of 1.5-4;c) jetting on the ink acceptance layer a colour patternwith one or more aqueous pigmented inkjet inks and/ororganic solvent based pigmented inkjet inks containing
a colour pigment C; andd) heat pressing the thermosetting paper into a
decorative laminate, wherein the weight ratio P/C of
the inorganic pigment of the ink acceptance layer tothe jetted colour pigment in the colour pattern is in therange of 4.5- 9,
characterized in that the dry weight of colour
pigments jetted by the one or more aqueous pigmented
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inkjet inks and/or organic solvent based pigmented
inkjet inks is in the range of 0.3-0.75 g/m2; andwherein the ink acceptance layer has a total dry
weight between 3 g/m2 and 6 g/m2”
13.

The relevant Claim, which is dependent Claim 3, describing the‘thermosetting resin’ is extracted as under:“3. The method as claimed in claim 1, wherein thethermosetting resin is selected from the groupconsisting of melamine-formaldehyde based resins,ureumformaldehyde based resins and phenolformaldehyde based resins.”
14.

Additionally, the description in the complete specification not only

refers to the group of ‘thermosetting resins’ but also gives a ‘most
preferable embodiment’ of the group. The relevant extracts referring to thesame are extracted as under:“The thermosetting resin is preferably selected fromthe group consisting of melamine-formaldehyde based
resins, ureum-formaldehyde based resins and phenolformaldehyde based resins. Other suitable resins for
impregnating the paper are listed in [0028] of EP
2274485 A (HUELSTA). Most preferably thethermosetting resin is a melamine-formaldehyde
based resin, often simply referred to in the art as a‘melamine (based) resin’.
The melamine formaldehyde resin preferably has aformaldehyde to melamine ratio of 1.4 to 2. Suchmelamine based resin is a resin that polycondensates
while exposed to heat in a pressing operation. The
polycondensation reaction creates water as a byproduct. It is particularly with these kinds ofthermosetting resins, namely those creating water as aby-product, that the present invention is of interest. …”
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15.

With respect to the ‘ink acceptance layer’, it has to be noted that, inthe laminate manufacturing industry, the said layer is given different
references, which include ‘ink receiving layer’ and ‘ink coating layer.’ In thesubject patent application, the ‘ink acceptance layer’ has been given adefinitive dry weight between 3 g/m2 and 6 g/m2 in the Independent Claim 1.
Further, the said layer is also the given specific limitations in Independent
Claim 11, where a characteristic feature of the said layer is that the layer
does not include any ‘thermosetting resin’. The said Claim 11 is extracted asunder:“11. An inkjet printed thermosetting resin impregnatedpaper including a colour pattern in an ink acceptancelayer containing an inorganic pigment and a polymericbinder having a weight ratio P/B of inorganic pigment
P to polymeric binder B of larger than 1.5, wherein theweight ratio P/C of the inorganic pigment P of the ink
acceptance layer to the jetted colour pigment C in thecolour pattern is larger than 4.0; and wherein the ink
acceptance layer is free of thermosetting resin.”
16.

Further, a specific embodiment for preparation of the ‘ink acceptancelayer’ has also been described in the subject patent application. The
said extract from the description in the complete specification is
extracted as under:“Preparation of Ink Acceptance Layers
An 80 g/m2 porous paper used for decor printing was
impregnated with an aqueous solution containing 60
wt% of melamine-formaldehyde based resin having aformaldehyde to melamine ratio of 1.7, and dried to aresidual humidity of about 8 g/m2.
An ink acceptance layer was coated on theimpregnated paper in accordance with Table 7 by
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means of a bar coater, providing a wet layer thicknessof 20 µm or 40 µm micron. The coated samples weredried in an oven for 1 minute at 125°C.”
17.

Similarly, two of the other specific expressions/terms i.e., ‘inorganic

pigment’ and ‘polymeric binder’ have been described in other dependent
Claims. The relevant dependant Claims are extracted as under:“4. The method as claimed in claim 1, wherein the
inorganic pigment is selected from the groupconsisting of alumina hydrates, aluminum oxides,
aluminum hydroxides, aluminum silicates, and silicas.
5. The method as claimed in claim 1, wherein thepolymeric binder is a water soluble polymeric binder
including a hydroxyl group as a hydrophilic structuralunit and having a water solubility of at least 1 g/L
water.”
18.

The relevant extract from the description of the complete specification

giving details of the ‘inorganic pigment’ is extracted as under:“The inorganic pigment is preferably selected from thegroup consisting of alumina hydrates, aluminumoxides, aluminum hydroxides, aluminum silicates, andsilicas.
Particularly preferred inorganic pigments are silica
particles, colloidal silica, alumina particles andpseudo-boehmite, as they form better porous
structures. When used herein, the particles may be
primary particles directly used as they are, or they may
form secondary particles. Preferably, the particles
have an average primary particle diameter of 2 µm orless, and more preferably 200 nm or less.”

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19.

Similarly, the relevant extract of the description highlighting thedetails and preferred embodiments of the ‘polymeric binder’ is reproduced
as under:“In a preferred embodiment, the ink acceptance layer
includes a polymeric binder selected from the groupconsisting of hydroxyethyl cellulose; hydroxypropyl
cellulose; hydroxyethylmethyl cellulose; hydroxypropyl
methyl cellulose; hydroxybutylmethyl cellulose; methyl
cellulose; sodium carboxymethyl cellulose; sodium
carboxymethylhydroxethyl cellulose; water soluble
ethylhydroxyethyl cellulose; cellulose sulfate; polyvinyl
alcohol; vinylalcohol copolymers; polyvinyl acetate;
polyvinyl
acetal;polyvinyl
pyrrolidone;
polyacrylamide; acrylamide/acrylic acid copolymer;
polystyrene, styrene copolymers; acrylic or methacrylic
polymers; styrene/acrylic copolymers; ethylenevinylacetate copolymer; vinyl-methyl ether/maleic acidcopolymer;
poly(2-acrylamido-2-methyl
propanesulfonic acid); poly(diethylene triamine-co-adipicacid); polyvinyl pyridine; polyvinyl imidazole;polyethylene
imine
epichlorohydrin
modified;
polyethylene imine ethoxylated; ether bond-containing
polymers such as polyethylene oxide (PEO),
polypropylene oxide (PPO), polyethylene glycol (PEG)
and polyvinyl ether (PVE); polyurethane; melamine
resins; gelatin; carrageenan; dextran; gum arabic;
casein; pectin; albumin; chitins; chitosans; starch;collagen derivatives; collodion and agar-agar.
In a particularly preferred embodiment, the ink
acceptance layer includes a polymeric binder,
preferably a water soluble polymeric binder (> 1 g/L
water), which has a hydroxyl group as a hydrophilic
structural unit, e.g. a polyvinyl alcohol.”Signature Not Verified
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20.

The terms of the patent claims (‘thermosetting resin’, ‘an ink

acceptance layer’, ‘inorganic pigment’, ‘polymeric binder’) that havebeen held to be vague, have been sufficiently described in the description of
the complete specification. Further, even preferred embodiments for the said
terms or expressions are given. Therefore, it is clear that the aforesaid
expressions/terms have been adequately explained. It is also observed thatthe impugned order fails to take into account that the patents specification isaddressed to a person skilled in the art to whom the aforesaid terms ofClaims would be quite clear in any case.
21.

Therefore, I do not find merit in the objection on lack of clarity or that

the Claims are indefinite.
Objection on Lack of Succinctness
22.

Next, I shall deal with the specific observation of the Controller that

the Claims are not succinct. There is no specific reasoning given for the lackof succinctness in the Claims. I observe that even the Manual of Patent
Office Practice and Procedure, dated 26th November, 2019, issued by the
Office of the Controller General of Patents, Designs and Trademarks does
not give any guidance on what constitutes succinctness or how to identify
lack of succinctness. The references to the requirements for succinctness inthe said Manual are set out below:“Unity of invention and Clarity of claims
xxxx
xxxx
xxxx
b) Claims shall be clear and succinct and fairly basedon the matter disclosed in the specification.
Structure of Claims
xxxx
xxxx

xxxx

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Page 11 of 22d) Each claim should be clear and succinct.”
23.

In the absence of definite guidance for ascertaining succinctness, inthe said Manual, reference is made to the Patent Manual of Practice andProcedure issued by the IP Office of Australia, which gives guidance on
when Claims can lack succinctness. In the Australian Manual, it is statedthat under the following two conditions, lack of succinctness arises: an individual claim is considered unnecessarily
lengthy; or the statement of claims as a whole is considered
unnecessarily lengthy due to the repetitious natureof the claims.
24.

In the present case, the first Claim is lengthy but by no means

unnecessarily lengthy as it is defining specific features and expressions thatare interlinked to each other. Considering that it is the right of the patentee todraft Claims so as to protect all the aspects and features of the invention
sought to be protected, the present set of Claims, in my opinion, cannot be
said to lack succinctness.
25.

In this regard, the Australian Manual also makes a reference to theAustralian judicial precedent on the meaning or scope of the term ‘succinct’in Doric Products Pty Ltd v Lockwood Security Products Pty Ltd, [2001]
FCA 1877. The relevant extract of the said judgement highlighted by theAustralian Manual is set out below:“I accept that it takes patience, time and effort tounravel all of the claims of the Patent. Subject to theexpenditure of that time and effort, there is no alleged
ambiguity in the claims. The problem is not withprolixity, but with attempted compression, and themultitude of claims. That, however, falls short of
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establishing that the claim or claims are not clear andsuccinct."
Objection on lack of Inventiveness
26.

With regard to rejection on the ground of lack of inventiveness under

Section 2(1)(ja) of the Act, the impugned order observes that feature 5b
claimed in claim 1 comes within the range disclosed in prior art document
D5. The relevant extract of the impugned order is set out below forreference:“A method for manufacturing decorative laminates
including the steps of:
1. Take paper substrate and impregnate it inthermosetting resin bath.
2. Apply ink acceptance layer which consist of
inorganic pigment (P) and polymeric binder (B),wherein P/B ratio is 1.5 to 4.
3. Spray/jetting the pigmented inkjet ink (aqueous oraqueous pigmented) which consist colour pigment(C).
4. Heat pressing
5. Weight ratio of P/C is in range of 4.5 to 9.
Characterized in that,a. Dry weight on colour pigment is in the rangeof 0.3 to 0.75 g/sq meter.
b. Total dry weight of ink acceptance layer 3
g/sq meter to 6 g/sq meter.
The Characterization part of claim-I has following
main features:
a. Dry weight on colour pigment is in the range of 0.3 to
0.75 g/sq meter.

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b. Total dry weight of ink acceptance layer 3 g/sq meterto 6 g/sq meter.
Method steps 1 to 4 as mentioned in above are
explicitly disclosed in document D5. Further,characterized feature 5.b is also explicitly disclosed in
the document D5, Paragraph [0033] of the Document
D5 states that, “The application weight of the inkreceiving layer can be 2 to 25 g/m2 , in particular 3 to
20 g/m2 , but preferably 4 to 15 g/m2 .”. The feature
5.b claimed in the claim 1 comes within the range
disclosed in the document D5. Further, the weight of
the ink receiving layer is depending of the type ofbinder/pigment/adhesive/chemical used and it varies
with respect to the requirement of the final product. It
is a matter of workshop modification and result of theprocess, and it does not involve any ingenuity.”
27.

However, counsel for the appellant correctly points out that D5 relates

to ‘application weight’ and not ‘total dry weight’ as required by the
Independent Claim 1. The respondent has placed reliance on paragraph 33 of
the complete specification of the prior art document D5, which is set out
below:“[0033]. The application weight of the ink-receiving
layer can be 2 to 25 g/m2, in particular 3 to 20 g/m2,
but preferably 4 to 15 g/m2. The ink receiving layer
can be applied with the usual application methods suchas roller application, slotted nozzle application,
gravure or nip methods, curtain coating, airbrushingor metering bar.”28.

In this regard, reference may be made to paragraphs 37, 40 and 49 of

the complete specification of document D5 that states that ‘application
weight’ includes moisture content. The aforesaid paragraphs are extracted
below:
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“[0037] In the next step a coating mixture wasprepared for the ink receiving layer having thefollowing composition:
Water
Boehmite
Polyvinyl alcohol
Polyvinyl acetate
Quat. polyammonium salt

80% by weight
10% by weight
5% by weight
4% by weight
1% by weight”“[0040]. The pre-dried core-impregnated paper wasthen coated with the inkjet ink receiving layer
described in detail above with an application weight of
6g/m2 and dried to a final moisture of 6.3%.”“[0049]. The decorative paper impregnate according
to Example 2 was printed in an inkjet printer (HP 2500
with pigmented inks) and divided into DINA4 sheets.
These sheets were placed on a chipboard, covered withan overlay film as in Example 1 and hot pressed. The
pressing was carried out at a temperature of 140°C.
and a pressure of 25 bar.”
29.

Therefore, upon perusal of the above extracts, it cannot be said thatD5 relates to ‘total dry weight’, which is specifically required under the
Independent Claim 1 of the subject patent application.
Objection based on ‘Common General Knowledge’30.

The next ground for refusal is that the feature 5a, though not taught byprior art document D5 alone but when combined with the teachings of‘common general knowledge’, merely becomes a workshop modification.
The relevant extract of the impugned order in this regard is set out below:“Regarding characterized feature 5.a; it claims thatthe “Dry weight on colour pigment is in the range of
0.3 to 0.75 g/sq meter”. The dry weight of the colour
pigment in g/m2 is dependent on the multiple technical,
material and operational parameters such as density of
the colour, number of the colours used in the design,
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the type of the design, density of the ink used, type of
the ink and solvent/carrier used. The dry weight of theink varies with the requirement of the customer/user ofthe laminate (final product). The claimed feature isrelated to the result to be achieved. Further, it isrelated to the workshop modification and optimization,
hence it does not involve any ingenuity. It is obvious to
the person skilled in the art to use the common generalknowledge along with the teachings of the document
D5 and arrive at the characterized feature 5.a claimed
in the claim-1.”
31.

While rejecting the aforesaid feature of the Claim on the ground of‘common general knowledge’, the impugned order does not provide any
reference of the ‘common general knowledge’ or the fact as to why the
persons skilled in art would apply such ‘common general knowledge’ to theaforesaid feature.
32.

There is nothing to show that the characteristic feature 5a would varyas per the customer’s requirement. 5a is an essential technical feature of
Claim 1. Since the object is to produce a dark wood laminate of desired
quality, a range as prescribed under 5a of the color pigment is necessary. The
appellant has provided sufficient data as well as examples in Table 8 of thecomplete specification that demonstrates that the features claimed in Claim
1 produce the desired result.
33.

In this regard, reference may be made to a passage from Terrell on

Law of Patents, 16th Edition, which specifically discussed the aspect ofproof for ‘common general knowledge’. The relevant extract of the said
passage is reproduced as under:“Proof of common knowledge is given by witnesses
competent to speak
upon the matter, who, toSignature Not Verified
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supplement their own recollections, may refer tostandard works upon the subject which were publishedat the time and which were known to them. In order toestablish whether something is common generalknowledge, the first and most important step is to lookat the sources from which the skilled addressee could
acquire his information.
The publication at or before the relevant date of otherdocuments such as patent specifications may be tosome extent prima facie evidence tending to show thatthe statements contained in them were part of thecommon knowledge, but is far from complete proof, as
the statements may well have been discredited orforgotten or merely ignored." Evidence may, however,be given to prove that such statements did become
part of the common knowledge.”
34.

From the above extract, for the Controller to rely on ‘common generalknowledge’ as a ground for refusing a patent application, it is essential tospecify the source of the said knowledge. It would be essential that the said
source of the ‘common general knowledge’ would have been published
before the priority date of the patent application. In addition, the fact that atheory or principal or knowledge has become common knowledge needs tobe substantiated by some evidence. The said evidence could be in the formof references to the ‘common general knowledge’ textbooks or research
articles or standard documents.
35.

The judgement of the UK Patents Court in Generics (UK) Ltd. v.

Daiichi Pharmaceuticals Co.Ltd., [2009] R.P.C. 4, has also given some
guidance on what subject matter forms part of the ‘common generalknowledge’. In the said judgement it has also been clarified that there is norequirement for the knowledge to be at the forefront of the mind of the

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person skilled in the art. The relevant extract of the said judgment is set out
below:“Thus the common general knowledge is the common
knowledge in the field to which the invention relates.
The notional skilled addressee is the ordinary man who
may not have the advantages that some employees oflarge companies may have and information does notform part of the common general knowledge simply
because it is known to some persons in the art. It mustbe generally known and generally regarded as a goodbasis for further action by the bulk of those engaged inthat art before it becomes part of their common stockof knowledge relating to the art, and so part of thecommon general knowledge. That is not to say theskilled person must have it at the forefront of his
mind. As Laddie J. explained in Raychem
Corporations’ Patents [1998] R.P.C. 31 at 40, it
includes all the material which he knows exists andwhich he would refer to as a matter of course if hecannot remember it and which he generally
understands is sufficiently reliable to use as afoundation for further work.”
36.

Recently, vide judgment dated 18th January, 2023, the Calcutta High

Court, in Groz-Beckert KG v. Union of India & Ors., 2023 LiveLaw (Cal)17 held that for considering inventiveness, the invention as a whole has to beconsidered and not broken down into isolated elements. In the said judgment
it has also been specifically highlighted that there needs to be precisenessabout what constitutes ‘common general knowledge.’ The relevant extract of
the said judgment is set out below:“7. Thus, in determining inventive steps, theinvention should be considered as a whole. In otherwords, it is not sufficient to draw the conclusion that aclaimed invention is obvious merely because individual
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parts of the claim taken separately are known or might
be found to be obvious. The contention that aninvention is obvious in relation to a particular item
must be treated with care and caution. In doing so, thewhole picture presented should be taken into
consideration and not a partial one. There should bean element of preciseness about what is asserted to becommon general knowledge. The “obviousness” mustalso be strictly and objectively judged. (Bishwanath
Prasad Radhey Shyam vs. Hindustan Metal Industries(1979) 2 SCC 511 paras 24 & 25, F. Hoffman La RocheLtd. Vs. Cipla Ltd. PTC 1 paras 13, 143).”
37.

In the present case, however, the Controller has failed to give any

source of the common knowledge that has been considered. Therefore, itcannot be construed as to what precise element of ‘common generalknowledge’ has been considered along with the cited prior art to claim thatthe combination of the teachings of the prior art and the ‘common generalknowledge’ led to a finding of lack of inventive step.
38.

It may be relevant to note that document D5 was also cited before theEuropean Patent Office in the opposition proceedings against the appellants
in the corresponding European application. Yet, the claims were found novel
and innovative over document D5, other prior art documents and otherdocuments.
Refusal of Independent Claim 11
39.

The respondent, in the impugned order claims that the features

claimed in Claims 11-13 are explicitly disclosed in prior art Document D5.
The relevant portion is set out below:
Regarding claims 11-13: The technical features of the
product claimed in the claim 11-13 are explicitly
disclosed in Document D5
Signature Not Verified
Digitally Signed By:AMITBANSALC.A.(COMM.IPD-PAT) 477/2022

Signing Date:02.06.2023 17:01:02

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40.

With regard to Independent Claim 11, the said Claim is directed

towards an ‘inkjet printed thermosetting resin impregnated paper’. The
Claim 11 is set out below:“11. An inkjet printed thermosetting resin impregnatedpaper including a colour pattern in an ink acceptance layer
containing an inorganic pigment and a polymeric binder
having a weight ratio P/B of inorganic pigment P to polymericbinder B is in the range of 1.5-4, wherein the weight ratio P/Cof the inorganic pigment P of the ink acceptance layer to thejetted colour pigment C in the colour pattern is in the range of
4.5-9; and wherein the ink acceptance layer is free ofthermosetting resin.”
41.

The appellant has given the following features of the aforesaid

Claims:“i. Color pattern in the ink acceptance layer having P/Bweight ratio of inorganic pigment (P) to polymeric binder (B)in the range of 1.5-4,
ii. Weight ratio P/C is in the range of 4.5-9, i.e. the weightratio of the inorganic pigment P of the ink acceptance layer tothe jetted colour pigment C,
iii. The ink acceptance layer is free of thermosetting resin.”
42.

The impugned order fails to give any reasoning with regard to novelty

or the inventive feature of the aforesaid Claims and merely concludes thatthe ‘technical features of the product claimed in claim 11 to 13 are explicitly
disclosed in D5’. D5 does not make any teaching that the ink receiving layer
is free of thermosetting resin.
43.

This Court also notes that corresponding patent application has been

granted in various jurisdiction, details of which are given at page no.109 of
Signature Not Verified
Digitally Signed By:AMITBANSALC.A.(COMM.IPD-PAT) 477/2022

Signing Date:02.06.2023 17:01:02

Page 20 of 22

the appellants’ documents and which includes USA, UK, Australia, China
and various countries in Europe.
44.

In view of the discussions above, the impugned order dated 17th June,

2022 is set aside and the Patent Office shall proceed to grant the patent,
subject to completion of necessary formalities.
45.

List before the Patent Office on 14th June, 2023 for completion ofnecessary formalities.
46.

The Registry is directed to supply a copy of the present order to theoffice of the Controller General of Patents, Designs & Trademarks of India
on the e- mail- llc-ipo@gov.in for compliance of this order.
Post Script
47.

As the number of Patent filings in India are rapidly increasing andthere is an imminent need to update the Manual of Patent Office Practiceand Procedure so that Examiners and Controllers can get better guidance on
dealing intricate matters like objections of lack of clarity and succinctness.
This would be particularly useful when dealing with complex patents
involving Artificial Intelligence systems, machine learning functions, agrochemicals, pharmaceuticals and manufacturing methods. It is often observedthat patent applications in these domains either have a large number ofClaims or involve a lot of features, which are interlinked to each other.
Therefore, I would recommend to the Office of the Controller General of
Patents, Designs and Trademarks to update or revise the Manual for
Practice. This would ensure that Examiners and Controllers can be better
equipped to ascertain aspects like clarity and succinctness of inventions. It

Signature Not Verified
Digitally Signed By:AMITBANSALC.A.(COMM.IPD-PAT) 477/2022

Signing Date:02.06.2023 17:01:02

Page 21 of 22may also be appropriate to consider giving adequate technical and patent
analytics trainings to Examiners and Controllers.
48.

A copy of this order be sent by the Registry to the Office of the

CGPDTM on the following email: cgoffice-mh@nic.in.

AMIT BANSAL, J.
nd

2 June, 2023
at

Signature Not Verified
Digitally Signed By:AMITBANSALC.A.(COMM.IPD-PAT) 477/2022

Signing Date:02.06.2023 17:01:02

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