Environmental Management vs Controller General Of Patents & Designs,

,

The present appeal is filed under Section 117A of the Indian Patents Act, 1970, against the order dated 22/09/2017, passed by the Respondent no.2, being the Assistant",

Controller of Patents & Designs, under Section 15 of the Indian Patents Act, 1970, refusing to grant the Appellants’ Indian patent application no. 3108/KOLNP/2008.",

The invention as explained by the appellant is as under:,

The invention provides air cleaners that use an electrostatic field to polarize a media and to polarize particles to increase the particle collection efficiency on the media (may/may,

not be pleated.) Figure 1 is a mini-pleat filter containing conductive beads in accordance with the invention.,

 The conductive beads or members are used to support the media, space the pleated surfaces apart, add strength to the overall assembly, in a multi-layer media, hold layers",

together and in all cases generate an electrostatic field within the media.,

In accordance with the present invention, an electrostatic field is created within the media by applying a high voltage differential between adjacent conductive beads, thereby",

increasing the efficiency of the filter. Figure 4 illustrates a first embodiment for applying an electrostatic field to a filter media in accordance with the present invention.,

It is the case of the appellant is that:,

The instant patent application has been wrongly refused on the grounds of the lack of inventive step and,

The application has entered national phase after due date,

We have observed that the First Examination Report (FER) issued on 28/12/2010 in the instant application, contained the following objections:",

The Second Examination Report (SER) issued after consideration of response of the FER on 06/09/2011 had following objections:,

It is observed that after the second examination, the objections on the ground of lack of ‘novelty’ and ‘inventive step’ were withdrwan by the respondent.",

However, as evident from the order of the respindent no.2; the hearing notice, not only re-instated the objection on the ground of lack of ‘inventive step’ but also included",

some other objections as quoted below:,

Out of the three grounds as mentioned in the above quoted oder, the respondent no.2 was satisfied that the objection at point no.2 was considered to have been met as the",

appellant amended the claims. He refused the application basically on point 1 and 3 shown above.,

We will discuss the formal ground at point no 3 first, before taking up the issue of lack of ‘inventive step’.",

The appellant produced an evidence of submission of the document on 29/07/2008 at the Indian Patent office which was authenticated by the then Deputy Controller of Patens,

and Designs. The document is reproduced herein under:,

Let’s examine the legal provisions with regard to deadline of filing the National Phase Application in India, based on PCT International",

Application.,

Rule 20 Available at https://ipindia.gov.in/writereaddata/Portal/ev/rules/pr20.html,

International applications designating or designating and electing India,

(2) The Patent Office shall not commence processing of an application filed corresponding to international application designating India before the expiration of the time limit,

prescribed under sub-rule (4)(i).,

….,

(4) (i) The time limit referred to in sub-rule (2) shall be thirty one months from the priority date as referred to in Article 2(xi);,

Article 2 Available at https://www.wipo.int/pct/en/texts/articles/a2.html#_2Definitions,

For the purposes of this Treaty and the Regulations and unless expressly stated otherwise:,

(xi) ""priority date,"" for the purposes of computing time limits, means:",

(a) where the international application contains a priority claim under Article 8, the filing date of the application whose priority is so claimed;",

(b) where the international application contains several priority claims under Article 8, the filing date of the earliest application whose priority is so claimed;",

(c) where the international application does not contain any priority claim under Article 8, the international filing date of such application;",

Hence, it could be seen that the last date for filing the National Phase Application is 31 months from the date of priority.",

It is worth noting that the instant application was filed, based on two priority documents viz",

a. 60/754,771 29.12.2005 US",

b. 60/754,805 29.12.2005 US",

Therefore, the last date for entering National Phase in India was 29/07/2008. It is seen that the application was submitted at Indian Patent Office on 29/07/2008.",

It was also submitted by the learned counsel of the appellant that first they attempted for electronic filing but due to some technical problem, once the issue was not resolved",

they contacted the IT Section of IPO and got assurance to resolve the issue by the next date. Subsequently, they approached IPO and finding that the cash counter was closed,",

they submitted the document to the then Deputy Controller of Patents and Designs. Later on following day, they got the endorsement on the document as filed on 29/07/2008.",

It is worth noting that the e-filing for patent application was started in July 2007 and it took some time to streamline the whole process. It was prevailing practice that cash,

counter at IPO used to be closed prior to official working hours and any document received after close of counter used to be endorsed by some responsible officer in order to,

maintain the timeliness of filing the documents honoring limitations. It is evident from the Patent Office Procedure Available at,

https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_75_1_PatentOfficeProcedure_2009_Amdt_2 013.pdf adopted w.e.f 01/07/2009, that the timing for cash",

counter was enlarged upto 5pm.,

Hence, we conclude that the document was submitted well within the prescribed time limits and is not barred by any limitation.",

Secondly , it is evident from the perusal of FER and SER that the objections on the grounds of lack of ‘novelty’ and ‘inventive steps’ were withdrawn by",

respondent no. 2, considering the submissions of the applicant. It was only in hearing notice that two further documents were relied upon out of which the D1 (GB2160447) cited",

in the hearing notice is the corresponding application of D2 (US000006547860B2) of the FER. Hence, not only the objection on the ground of inventive step was revived by the",

respondent no.2 but also a further document too was relied in the hearing notice.,

The learned counsel of the appellant has put forward his argument with regard to inventive step as follows:,

 D1 (GB2160447) of the hearing notice is a corresponding application of D2 cited in the First Examination Report and to emphasise the inventive step aspect of the subject,

invention, the pending claims were bought in line with the granted US7691186 claims where the same document was cited.",

 D1 discloses an electrostatic filter dust collector having a charging section through which dust-containing gas is passed to subject the floating dust particles to preliminary,

electric charging, and a dust collecting section provided with an insulating filter member to collect under the actions of an electric field the charged particles in the dust containing",

gas passed through said charging section.,

 D1 uses plurality of spacer pairs for use in retaining a predetermined gap between the surfaces of the adjacent folded parts of said filter member being inserted between said,

adjacent folded parts.,

 The “spacers†of D1 are not always conductive. In fact, D1 comprises conductive spacers 24 and insulating spacers 25 consisting of plastic straps or tapes that are",

inserted on the top side and bottom side of the filter member 21, so as to maintain a distance between adjacent pleats.",

In D1, a high voltage is applied between the adjacent spacers 24 on the upstream side and/or downstream side.",

Figure 4 and figure 6 of D1.,

 D1 shows conductive spacers 24 as shown in figures 4 and 6.,

It applies a high voltage through adjacent conductive spacers 24 located on same side of filter media 21. Voltage is applied through adjacent pleats either on upstream or on,

downstream. In D1, the field is created only across the face of the filter 21.",

D1 also does not teach or suggest,

that parallel rows of conductive beads that are spaced one half to three quarters of an inch apart on each side of the filter media 14.,

that one terminal of a high voltage power supply is coupled to conductive beads 16A, 18A, 22A, 24A situated on the top of the media filter 20 while the other terminal of the",

high voltage power supply 108 is coupled to conductive beads 16B, 18B, 22B, 24B situated on the bottom of the media filter.",

only conductive type of spacers,

In D1 the high voltage is present on the surface of the filter media only and not within the filter media and consequently, the effect of electrostatic field is lesser and thus",

efficiency is compromised whereas present invention teaches a high electrostatic field generating within the filter media and also it does not use any pre charging of the particles,

as used in D1. Elimination of the feature of charging section 6 which generates ozone, a harmful gas, which can hurt filter loading and can cause fire.",

D2 (DE3339828) provides a filter element made from a wave- like or zig-zag-like, soft filter medium with spacers. Fig. 2 of D2, the spacers 2 are applied on both sides at a",

distance from one another to the electrodes 4, which are in the form of foils or plates. The electrodes 4 with the placed spacers are then inserted into the folds and pushed",

together.,

Even in D2, parallel arrangement of spacers provides for a field mostly across the face of the filter, since the spacing apart of the electrodes erodes their ability to extend the field",

through the filter material and therefore the same efficiency may not be achieved as that of present invention. In contrast, in D2, a high voltage is applied to the neighbouring",

electrodes so that an electric field forms between the electrodes thereby leading to a higher separation efficiency of the filter element.,

D2 does not disclose or teach,

that parallel rows of conductive beads that are spaced one half to three quarters of an inch apart on each side of the filter media 14. that one terminal of a high voltage power,

supply is coupled to conductive beads 16A, 18A, 22A, 24A situated on the top of the media filter 20 while the other terminal of the high voltage power supply 108 is coupled to",

conductive beads 16B, 18B, 22B, 24B situated on the bottom of the media filter.",

Present invention does away with the need for spacers, that are constant fixtures of both cited prior art references by introducing conductive beads that are capable of supporting",

and/or hold together the filter media. Therefore, a skilled person in view of D1 and D2 would not be inclined to design a filter without spacers.",

 Conductive beads or members are used to support the filter media, that may or may not be pleated, space the pleated surfaces apart, add strength to the overall assembly, in a",

multi-layer media, hold layers together and in all cases generate an electrostatic field within the media. The inventors found that the spacing between conductive beads and the",

voltage applied thereto may be selected appropriately so as to generate the desired field strength for the particular filter media. It has been found that when conductive beads,

were applied to a nominal MERV 11 pleated media and an electrostatic field was established, filter efficiency at 0.3- micron particle size went from 31% to 59% (a 90%",

increase), as indicated on paragraph 3 of description page 6 of the PCT specification. The simplified design of the present invention makes it easier to manufacture and thereby",

more economical to purchase.,

The learned counsel of the appellant has also shown the comparative distinguishing feature(s) of the inventions with reference to cited prior art as follows;,

CITED DOCUMENT,"INDIAN

PATENT

APPLICATION

NO.

3108/KOLNP/2008

D1 (GB 2160447),

D1 discloses a electrostatic,"Present   invention  Â

provides

filter dust collector having a charging     section     through

which   dust-containing     gas

i s passed to subject the floating dust particles to

preliminary                                        Â

electric

charging, and a dust

collecting section provided with an insulating filter member to collect under the

actions of an electric field

the charged particles in the dust containing gas passed through said charging section.

The bands of D1 have both conductive and insulated spacers.

In D1 the high voltage is present on the surface of the

filter   media   only   and   not within the filter media.

In    D1,     plurality     of    flat

electrodes are provided on the inner side of the frame.","an   Â

improved    Â

air    cleaner

which     Â

uses      electrostatic

field to polarise a media and

polarise particles to increase

the particle collection

efficiency on the media.

D1 also does not teach or

suggest that parallel rows of

conductive beads.

D1 also does not teach or

suggest that one terminal of a

high voltage power supply is

coupled to conductive

beads 16A, 18A, 22A, 24A

In D1, the field is created

only across the face of

the filter 21. On the

contrary, present invention

provides a

voltage differential between

the first conductive bead and

the second conductive bead to

produce an

electrostatic field that

passes    Â

through    the  Â

filter media.

Applying   a  Â

high   voltage

potential to conductors

on alternate sides of the

filter media 14 forces the

electrostatic filed to pass

through the filter media

14 and provides a

stronger electrostatic

filed within

the interior of the filter

media 14.

The     Â

present     Â

invention

,"does not use essential

components of D1 such as

spacers and charging

section of D1.

There is nothing in D1

which suggests that

electrostatic field has to

pass through the filter

media and provide a

stronger electrostatic filed

within the interior of the

filter media. Such feature

is critical for the present

invention to achieve a

more efficient filter which

is technically advanced.

D2 DE 3339828,

D2 is directed towards

providing a compact filter

element made from a wave- like

or zig-zag-like, soft filter

medium with spacers

Different voltage potentials, for

example alternating ground and

a fixed positive o r negative

voltage, are applied to the

respectively neighbouring

electrodes 4, so that an electric

field forms Â

between          Â

the electrodes

Fig. 2 of D2, the spacers 2 are

applied o n both sides at a

distance from one another to

the electrodes 4, which are in

the form of foils or plates. The

electrodes 4 with

the placed spacers are then","D2 also does not teach or

suggest that parallel rows of

conductive beads

D2 also does not teach or

suggest that one terminal of a

high voltage power supply is

coupled to conductive beads.

Even in D2, the electrostatic

field is not throughout the filter

media and therefore the same

efficiency cannot be achieved as

that of

present invention.

D 2 does not disclose all the

identified essential features of

the present invention.

Present invention does

away with the need for

inserted into the folds and

pushed together.","spacers, that are constant

fixtures of both cited prior

art references. Therefore, a

skilled person in view of D1 and

D2 would not be inclined to

design a filter

without spacers.

objection raised under para 2 of the hearing letter, the Agent deleted the objected claims and so this objection is now met.",

We have observed that when conductive beads were applied to a nominal MERV 11 pleated media and an electrostatic field was established, filter efficiency at 0.3-micron",

particle size went from 31% to 59% (a 90% increase), as indicated on paragraph 3 of description page 7 of the complete specification.",

We also observe that present invention provides a voltage differential between the first conductive bead and the second conductive bead to produce an electrostatic field that,

passes through the filter media.,

We find that the features of electrostatic field passing through the filter media and thereby providing a stronger electrostatic field within the interior of the filter media is critical,

for the present invention to achieve a more efficient filter which is technically advanced. The availability of the electrostatic field throughout the filter media enhances the,

efficiency and none of the cited documents D1 or D2 suggest that.,

Hence we are inclined to agree with the submission of the learned counsel of the appellant and hold that the objection of the respondent no. 2 is not sustainable.,

We therefore set aside the order of respondent no. 2 dated 22/09/2017 and direct him to grant the patent on the existing claims 1-9 filed on 20/05/2017 at IPO, within 6 weeks",

from the issuance of this order.,

Â,

Keeping in view the above conditions, the instant appeal is allowed. No cost.",