Hettich-Oni Gmbh & Co. Kg vs Controller Of Patents And Design

The present invention,"D1 : WO2006042344A1

(also cited by EPO)

In the present invention, the contact

surface (15) will touch the piston rod

(12) or the damper housing (13) only

when the hinge part (4) is arranged

between a closed position and an

opening angle of 10° to 40°,

preferably 15° to 30° and the

damper is pre tensioned through a

spring (14) to the extended position.","D1 (WO2006042344A1) discloses a

damping arrangement, in particular for

displaceable furniture parts, comprising

a damper (1) which is provided with a

tappet (2) which can be impinged upon,

and which can be supported by a

support element (3).

The present invention,"D2: DE10159140A1

(also cited by EPO)

I n the present invention, the contact

surface (15) will touch the piston rod (12)

or the damper housing (13) only when the

hinge part (4) is arranged between a

closed position and an opening angle of

10° to 40°, preferably 15° to 30°

and the damper is pre tensioned through

a spring (14) to the extended position.","In D2 (DE10159140A1), a linear

damper 9 is mounted on a side part

and can be contacted by the hinge part

1 during a closing movement. Thus,

there is a risk that some elements

might come between the hinge

element and the damper which is

problem for a proper function.

a. Lack of inventive step in view of the cited prior art documents: D1: WO2006042344 A1 and D2: DE10159140A1.,

b. Non submission of Verification certificate for English translation of the corresponding PCT application.,

3.2 The learned counsel of the appellant has shown that the patents on corresponding patent applications have been granted in many other jurisdictions,

even though the identical prior arts documents were cited but they could succeed, based on their submissions, at IPO.",

We have reviewed that the hearing notice dated 01/08/2019 contained the following objections:,

“Clarity and Conciseness,

Claims not clearly worded and in claim 1 the word ""comprises"" should be replaced with word ""consisting of"".",

Invention u/s 2(1)(j),

The applicant’s reply dated 23/03/2017 has been duly considered, but not persuasive due to following reasons- As per the applicant,",

none of the cited document discloses the “linear damper with a damper housing and a moveable piston rodâ€. However, the claimed",

invention still lacks inventive step in view of earlier cited documents D1-D4 and newly cited document US6874829(D5). D5 discloses an,

inner door lock actuator, comprising, a rotational shaft adapted to be fixed to an automobile door; a handle formed as a lever pivotably",

mounted on said rotational shaft; a reset spring for biasing said handle into a rest position. D5 also discloses a linear damper for damping,

a movement of said handle into the rest position, said linear damper having opposite ends one of which is adapted to be linked to the",

automobile door and the other is linked to said handle. Moreover, DE10159140A1(D2) also discloses that a fluid damper 9 is fixed to the",

hinge arm 2, which is designed as a piston-cylinder unit with a fixed cylinder 13 and a piston linearly displaceable with the piston rod 14.",

So, a person skill in the art can easily combine the documents D1-D5 to achieve the claimed invention.",

Formal Requirement(s),

Duly verified English translated international application should be submitted, to meet the requirements of Rule 20 (3) (b) of The Patents",

Rule, 2003 as amended by The Patents Amendment Rules, 2006.",

Figure number should be mentioned in the Claims.,

Abstract should not be the part of claim 1.â€​,

We have reviewed the order of the learned Controller and the operating portion of the order is as under:,

“The Ld. Agent for Applicant complied objections 1, 4 and 5 and therefore these objections are waived off.",

The Ld Agent for applicant submitted that documents D3, D4 And D5 are not relevant and teaches far away from the inventive features of the",

present invention, which is agreed.",

Upon reading through the cited documents D1 and D2,it is understood that D2 is closest prior art and after having taught by the D2 and D1",

a person skilled in the art can arrive at the claimed features of the present invention which are another embodiments.,

Therefore, the amended claims 1-5 are not allowed and the application is refused patent for want of compliance of aforementioned",

objections 2 and 3, u/s 15 of “The Patent Act 1970â€​.",

The Application stands disposed off.â€​ [Emphasis added],

Therefore, it is evident that the Respondent, through his utter subjective statement held that the invention lacks inventive step when he holds",

“after having taught by the D2 and D1 a person skilled in the art can arrive at the claimed features of the present invention which are another,

embodiments.†He has neither stated facts not applied law and reached the above conclusion. The determination of ‘inventive step’ is mixed,

question of law and fact, depending on the facts and circumstances of each case Cipla Ltd. vs F.Hoffmann-La Roche Ltd. & Anr. Available at",

https://indiankanoon.org/doc/57798471/?type=print. Therefore, the impugned order is not sustainable.",

In recent past, Indian Patent Office has developed very many Guidelines Available at http://www.ipindia.nic.in/resources.htm#Manuals and",

Manuals ibid to help improve the quality of patent examination. These Guidelines and Manuals are also encompassing the methods by which the,

‘inventive step’ is required to be determined. The Indian Courts have also made such determination amply clear through various judicial,

pronouncements. The efforts of the IPO towards development of these literatures, combining the essence of all these judicial pronouncement, is to",

make the job of examiners and Controllers easy, so that they can improve the quality of patent examination and grant. This Board has also emphasized",

the need for application of settled law in determination of “inventive step’ in a very recent order in PHARMACYCLICS, LLC",

OA/46/2020/PT/DEL. For the sake of brevity, we are inclined not to reproduce it again. We would, however, emphasis that the following passage",

from land mark judgment of Hon’ble Supreme Court of India Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries. Available at,

https://indiankanoon.org/doc/1905157/ must be kept in mind while determination of inventive step to keep ‘subjectivity’ at bay.,

“The 'obviousness' has to be strictly and objectively judged. For this determination several forms of the question have been suggested. The one,

suggested by Salmond L. J. in Rado v. John Tye & Son Ltd. is apposite. It is: ""Whether the alleged discovery lies so much out of the Track of what",

was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was",

previously known.""",

Another test of whether a document is a publication which would negative existence of novelty or an ""inventive step"" is suggested, as under:",

Had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common",

general knowledge at the 'priority date', who was faced with the problem solved by the patentee but without knowledge of the patented invention,",

would he have said, ""this gives me what I want?"" (Encyclopaedia Britannica; ibid). To put it in another form: ""Was it for practical purposes obvious to",

a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him,",

that he would or should make the invention the subject of the claim concerned ?"" Halsbury, 3rd Edn, Vol. 29, p. 42 referred to by Vimadalal J. of",

Bombay High Court in Farbwrke Hoechst & B. Corporation v. Untchan Laboratories.â€​,

We urge the Respondents to issue strict instructions so that set procedural practices enshrined in the Guidelines and Manuals and relevant Court,

orders are adhered to by all concerned, so that cases of the instant nature could be avoided.",

We also note that not only the Controller has violated the set procedure of determination of ‘inventive step’ but also totally disregarded the,

teachings of Rules 28(7)6 of the Patents Rules , 2003; which says that “(7) In all cases of hearing, written submissions and the relevant documents,",

if any, shall be filed within fifteen days from the date of hearing.†We observe that the hearing was held on 27/08/2019. The appellant filed their",

written submission in accordance with this Rule on 11/09/2019, when the impugned order was already issued on 27/08/2019 without considering the",

written submission of the appellant. Such cases may be seen as implied bias on the part of the respondent and should be avoided.,

We have considered the submissions of the learned counsel of the appellant and are inclined to accept their argument that none of the prior art,

documents cited in the impugned order i.e. D1 and D2 make the invention ‘obvious’ to a person skilled in the art.,

We, therefore, set aside the impugned of the respondent dated 27/08/2019 and direct the respondent to grant the patent on the basis of the claims",

on record to the appellant, strictly within 2 weeks from the issuance of this order.",

The appeal is allowed. No cost.,