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Judgment
The present appeal is filed under Section 117A of the Indian Patents Act, 1970, against the order dated 20/02/2020, passed by the Respondent,
under Section 15 of the Indian Patents Act, refusing to grant the Appellants’ Indian patent application no. 1332/MUMNP/2011.
Brief Description of Invention as submitted by the Appellant
 2.1 The present invention, particularly, includes at least the following essential features:
Feature A: The biometric unit (8) is arranged frontally opposite the entrance to the lock area (3),
Feature B: The exit door (5) of the lock area (3) consists of at least one pivoting wing (5) in a known manner, wherein the biometric unit (8) is
integrated in the at least one pivoting wing (5).
2.2 The present invention, in one embodiment according to figures 1-3, shows a two-line apparatus for a checkpoint, in which case “two-line†is
used to mean that two identical passage locks are arranged beside and parallel to one another.
2.3 According to the invention, a biometric unit 8 is integrated in the pivoting wing 5 of the exit door 5. The biometric unit 8 may be a camera which is
attached, preferably with a display 9, for the biometric recognition, for example face recognition, the recognition of the face as a whole and/or the iris,
of a person who has entered the lock area 3.
2.4 In the apparatus, the biometric unit/camera 8 and display 9 are arranged frontally opposite the entrance of the lock area 3, with the result that a
person who enters inevitably assumes the required and correct, namely frontal, position with respect to the camera 8 without any special instructions.
The display 9 will cause the relevant person to follow the process of image acquisition for biometric recognition on the display 9, that is to say will
cause the person to remain in the required position and not to be distracted, for example turning his head in the process, which would have to result in
the process being interrupted.
2.5 In accordance with an implementation of the apparatus of the present invention, an image is recorded with the camera/biometric unit 8 or another
suitable recording apparatus and is visible on the display 9 to be evaluated in an electronic unit. The electronic unit generates a signal which is
forwarded to a control unit via which the pivoting wing 5 of the exit door 5 is opened. Similarly, the electronic unit can also generate a signal which is
forwarded to a control unit via which the pivoting wing 5 of the exit door 5 is closed if a particular person is not intended to pass through.
2.6 When the pivoting wing 5 is pivoted open, the camera/biometric unit 8 and the display 9 are also pivoted out of the person's field of view, with the
result that the person is not tempted to continue to look at the display 9 but rather will quickly leave the lock area 3. The arrangement of the
camera/biometric unit 8 with display 9 in the pivoting wing 5 of the exit door 5 thus also avoids unnecessary delays at the checkpoint and expedites the
process of scanning, which is particularly advantageous with passage locks having a high footfall, for example at airports.
2.7 Further, the apparatus includes the biometric unit 8 that is a recording apparatus 8 for detecting biometric features or the face as a whole or the
iris, of a person desiring passage. In such a scenario, a display 9 for the image recorded by the recording apparatus 8 is provided. The recording
apparatus 8 and the display 9 are integrated in the pivoting wing 5 of the exit door 5 of the lock area 3.
2.8 In order to obtain images which are suitable for biometric face recognition, the recording apparatus 8 should, as far as possible, be at the eye level
of the person to be recorded, which naturally depends on the height of a person and varies greatly from person to person.
2.9 By virtue of the fact that the biometric unit 8 is arranged frontally opposite the entrance to the lock area, a person is inevitably in the correct
position frontally opposite the biometric unit upon entering the lock area without relevant instructions having to be given to the person and followed by
the latter. This arrangement of the biometric unit frontally opposite the entrance to the lock area also makes it possible to arrange a plurality of
passage locks beside and parallel to one another without increasing the space requirement in the longitudinal directional of the locks; the length of the
locks remains the same throughout the arrangement of even a plurality of locks, with the result that the above-mentioned predefined dimensions can
be reliably complied with.
2.10 The exit door of the lock area preferably consists of at least one pivoting wing 5, and the biometric unit 8 is integrated in this at least one pivoting
wing 5. In this case too, the person is virtually inevitably in the correct position and stance with respect to the biometric unit 8 after entering the lock
area 3. When the pivoting wing 5 is pivoted into the position which enables passage, the optical unit is concomitantly pivoted out of the pathway and
field of view of the person and the person can quickly leave the lock area; the person is also not tempted to continue to still look at the biometric unit 8
in the process. Unnecessary delays are avoided.
2.11 The technical advancement of the present invention are:
Much reliable recognition of the user;
High accuracy in recognition of the user;
Enhancement in security features;
Avoiding undue delay;
Substantial reduction in error rate;
Enhanced turn-around time
Reduced cost
The case of the Appellant:
3.1 The learned counsel of the appellant has submitted that the Respondent refused to grant a patent on Application no. 1332/MUMNP/2011 on the
ground that the claims of the present invention do not involve an ‘inventive step’ as being ‘obvious’ over the teachings of the cited prior
art documents D1 to D5, particularly a combination of D1, D4 and D5 and, therefore, are not patentable under Section 2(1)(ja) of the Act on the
ground of lack of inventive step.
3.2 The Respondent has incurred an error while adjudicating section 2(1)(ja). The Respondent does not consider all the features of claim 1, in his
impugned order while assessing inventive step, since at least one of the novel and inventive feature of claim 1 has been omitted from the impugned
order to the Respondent.
3.3 Claim 1 of the Instant Patent Application 1332/MUMNP/2011
“1. An apparatus for a checkpoint having a passage lock whose exit is closed by an exit door (gate) which opens in response to a signal from at
least one biometric unit which is arranged in the lock area and is intended to detect biometric features of a person desiring passage, characterized in
that [FEATURE A] the biometric unit (8) is arranged frontally opposite the entrance to the lock area (3),
[FEATURE B] wherein the exit door (5) of the lock area (3) consists of at least one pivoting wing (5) in a known manner, and in that the biometric
unit (8) is integrated in the at least one pivoting wing (5).â€
3.4 The appellant submits the following figures (corresponding to that on records, only colours added) for further clarity in the matter:
                 Â
3.5 Reasoning of the Respondent in Impugned Order
The difference of the present application over the cited documents is, the placing of biometric unit and the arrangement which is placed frontally
opposite the entrance to the lock area, the feature claimed is obvious to the person skilled in the art at the time of the present invention to place the
biometric unit face-on against the entrance.
Hence the subject matter of claims as claimed in instant invention falls under Section 2(1)(ja)of The Patents Act, 1970 (as amended).
3.6 It is submitted that the Respondent has considered only FEATURE A while assessing inventive step u/s 2(1)(j)(a) of the Indian Patents Act. The
Respondent has held that only FEATURE A is obvious to a person skilled in the art and has nowhere mentioned FEATURE B in his entire impugned
order.
3.7 That the Respondent has based his impugned order on incorrect findings with respect to Inventive Step u/s 2(1)(j)(a) since at least one or the novel
and inventive feature, i.e., FEATURE B has been omitted while assessing inventive step of the present invention.
3.8 Therefore, for the aforesaid reasons alone, the impugned order should be set aside.
It’s important to have a look in the prosecution history of the instant application at Indian Patent office (IPO). We have reviewed the First
Examination Report (FER) issued on 20/03/2017, in this application, by the respondent.
The FER finds mention of three citations namely, 1. WO 1999006928 A1, 2. EP 1347420 A2 and 3. HK 1053528 A1 and shows the following main
objections:
A. Novelty
(i) Claim(s) 1-3 lack(s) novelty, being anticipated in view of disclosure in the document cited above under reference for the following
reasons:
D1 is found as closest prior art to the alleged invention which discloses an apparatus for a checkpoint (see 102 in fig.1a, para [0042]
and abstract of D1) having a passage lock whose exit is closed by an exit door (gate) which opens in response to a signal from at least
onebiometric unit which is arranged in the lock area (see 122 in fig.1a, para [0050] and abstract of D1) and is intended to detect biometric
features of a person desiring passage, characterized in that the biometric unit (8) (see 112 in fig.1a and para [0043] of D1) is arranged
frontally opposite the entrance to the lock area (3) (see 122 in fig.1a para [0050] and abstract of D1). Also see figures 1b, 7-8b, 9c; page
3, lines27-29; page 9 of D1).Since all the essential features of claim 1-3 are disclosed by the cited document D1 hence alleged invention
lacks novelty under section 2(1)(j) of The Patent Act, 1970 (as amended).2. It is furthermore pointed out that even if the aforementioned
novelty objections above were disputed based on minor differences of interpretation between some of the features of claim 1 and the
features of document D1, the subject-matter of claim 1 would still not involve the required inventive step, considering that document D1
aims at the same object as the present application and discloses the same type of solution.3. D2 provides an another solution for the same
type of problem, discloses a device is arranged at the narrowest point of each stadium entrance and has left and right posts (3) with a
rotary gate (2) between them controlled by a scanner (5) on one post with a recess (6) for inserting a finger and a slot (7) for a chip card
and the ability to identify the finger and/or the fingerprint stored on the card. This is the reverse process of checkout from a station or
stadium and same type of authentication method is used as in alleged invention. Hence alleged invention is not novel with respect to D2 also
(abstract and claims).4. D3 also discloses an another solution of the same type of problem a system and a method for automatically
controlling the crossing of a border, comprising a personal data acquisition device, a biometric data acquisition device, a personal data
transfer device, a data storage device, a pass- through system (10), a separating device, a data reading device, an authenticity checking
device, a data manipulation checking device, a device for opening the entrance (12) of the pass-through system (10), a biometric data
acquisition device, a comparing device, a device for triggering an alarm, a personal data transfer device and a device for opening the exit
of the pass-through system (10). Hence claim 1-3 alleged invention are not novel with respect to D3 (abstract and claims
B. INVENTIVE STEP:
(ii) Claim(s) 1-19 lack(s) inventive step, being obvious in view of teaching (s) of cited document(s) above under reference for the following
reasons:
Dependent claims 4-19 do not contain any features which, in combination with the features of any claim to which they refer, meet the
requirements of the inventive step in respect of cited documents D1-D3.
C. NON PATENTABILITY:
(iv) Claim (s) 1-19 are statutorily non-patentable under the provision of clause ([3(f)) of Section 3 for Alleged invention claimed in claims 1-
19 in prima facie appears as mere arrangement or rearrangement of known devices each functioning independently of one another in a
known way. Hence it fall u/s 3(f) of The Patents Act, 1970 (as amended), thus not patentable.
D. SUFFICIENCY OF DISCLOSURE:
(viii) Claim(s) 1-19 are not fairly based on the matter disclosed in the specification or not supported by the disclosure in the specification
for the following reasons:
The claims fail to disclose the interaction among the devices and interfacing with each other to obtain the relevant result.
The hearing Notice issued on 09/09/2019 shows the following objections:
A. Invention u/s 2(1)(j)
Objections regarding novelty and inventiveness of claims are still valid as no compliance has disclosed by the applicant.
Amended claims 1-19 are not novel and not patentable under section 2(1)(j) of The Patent Act. Amended claims 1-19 are not inventive
therefore not patentable under section 2(1) (ja) of The Patent Act (as amended) in the view of the following documents:
D1:WO9906928;D2: EP 1347420 A2; D3: HK 1053528 A1;
D4:WO2005119601 (abstract * * figure 1 *
* page 2, line 1 - page 6, line 8 *); D5:US2007122011(* abstract * * paragraph [0032] â€" paragraph [0059]; figures 1-13 *)
B. Formal Requirement(s)
1. The requirement of filing proof of right as required under section 7(2) of the Patents Act has not been met.
Let’s now look at the operating portion of the order of the respondent:
“On 10/10/2019 hearing was attended by Mr. Sachin Manocha patent agent for the applicant. During hearing the agent argued for the
application and sought permission to file written submission which was allowed. Accordingly the agent filed a written submission on
19/11/2019. Having considered the submission, I find that, some of the requirements (reg: Inventive step) of hearing notice are not
considered met.
Therefore, it is hereby decided to proceed for the refusal of a patent for application no. 1332/MUMNP/2011 based on the following
decision.
The difference of the present application over the cited documents is, the placing of biometric unit and the arrangement which is placed
frontally opposite the entrance to the lock area, the feature claimed is obvious to the person skilled in the art at the time of the present
invention to place the biometric unit face-on against the entrance.
Hence the subject matter of claims as claimed in instant invention falls under Section 2(1)(ja)of The Patents Act, 1970 (as amended).
Having considered the amended claims and aforesaid submission, I find the amendments and submission did not meet the requirements. I
find that amended claims submitted along with hearing written submission dated 19/11/2019 do not meet the requirement of section 2(1)(j)
of the Act.
In view of aforesaid, the objections raised vide the hearing notice dated 10/10/2019 have not been met. Hence, I hereby proceed for refuse
with the patent application no 1332/MUMNP/2011 under section 15 of the Patents Act, 1970 (as amended).â€
The instant application was filed at Indian Patent Office as National Phase application based on Patent Cooperation Treaty (PCT)
International Application No. PCT/DE2009/000014.
As evident from the FER that claims 1-3 of the instant application were objected to for lack of ‘novelty’ based on three documents
D1. WO 1999006928 A1, D2. EP 1347420 A2 and D3. HK 1053528 A1. With regard to ‘inventive step’, the FER mentioned that
“Dependent claims 4-19 do not contain any features which, in combination with the features of any claim to which they refer, meet the
requirements of the inventive step in respect of cited documents D1-D3.â€
The Hearing notice further added two more citations to those shown in FER, i.e. D4.WO2005119601 & D5. US2007122011 and
objected all the claims for lack of “inventive stepâ€. However, the order/decision of the respondent only relies on D1, D4 and D5 i.e.
D1. WO 1999006928 A1, D4.WO2005119601 and D5. US2007122011 for lack of ‘inventive step’. His order is silent on lack of
“noveltyâ€, which was mentioned in hearing notice. It is indicative that he found the invention to be ‘novel’. Since the application
has been refused only on the ground of ‘inventive step’, we will confine our discussion to this aspect alone.
We have scrutinized the International Search Report (ISR) issued by the International Searching Authority (ISA) in the instant
application in International Phase. We find that all the 3 documents cited herein the order of the respondent, i.e. D1. WO 1999006928 A1,
D4.WO2005119601 and D5. US2007122011 are also part of the International Search Report (ISR).
As informed by learned counsel of the appellant the patent has been granted in respect of the corresponding foreign applications in
major countries with similar claims such as United States, Australia, Canada, Russia, and Malaysia. They also submit that the details of all
these grants have been provided on Form-3 filed on 03/10/2019 at the Indian Patent Office.
While it is true that the grant of patents in respect of identical inventions, in some other jurisdiction, has no binding effect on the Indian
Patent Office; it is equally true that the consideration of “inventive step†based on identical citations may not vary widely from one
jurisdiction to another.
We have noted that the respondent while assessing the ‘inventive step’ just hold that ‘The difference of the present application
over the cited documents is, the placing of biometric unit and the arrangement which is placed frontally opposite the entrance to the lock
area, the feature claimed is obvious to the person skilled in the art at the time of the present invention to place the biometric unit face-on
against the entrance.
Hence the subject matter of claims as claimed in instant invention falls under Section 2(1)(ja)of The Patents Act, 1970 (as amended).â€
It is evident that this ‘inventive step’ assessment by the respondent is by no way an objective assessment and appears to be a passing
comment. He has neither given any reasoning nor applied the test of determination of ‘inventive step’ as provided even in the Manual of Patent
Office Practice and Procedure Available at http://www.ipindia.nic.in/manual-patents.htm, leave aside the various judicial pronouncement on the
subject.
It is well settled principle of the law that “The 'obviousness' has to be strictly and objectively judged.†Biswanath Prasad Radhey Shyam vs
Hindustan Metal Industries on 13 December, 1978 ; Available at https://indiankanoon.org/doc/1905157/
 As the order of refusal on the ground of lack of ‘inventive step’ fails on objective assessment.
It is further noted that on receipt of non- favorable International Search Report (ISR) the appellants have amended the claims. The appellant while
amending the claims incorporated the originally filed feature of claim 2, in claim 1. Further, they added one new claim 19, making it dependent on
claim1.
1 Available at http://www.ipindia.nic.in/manual-patents.htm
2 Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries on 13 December, 1978 ; Available at https://indiankanoon.org/doc/1905157/
There is no indication that the respondent did not allow these amendments. He has based his order on the amended set of claims, which is
indicative that he allowed the amendments. The patent has been refused on the sole ground of lack of inventive step. It is apparent vide his assertion
in his order that “Having considered the submission, I find that, some of the requirements (reg: Inventive step) of hearing notice are not considered
met.â€
Amended claim 1 has two features in its “characterized†clause as explained in earlier paragraphs. The respondent has commented, though
not objectively, on only the first one, ignoring the other completely. The invention has to be considered as a whole for consideration of inventive step. It
is thus not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claim taken separately are
known or might be found to be obvious. Therefore arriving at the conclusion that the invention lacks ‘inventive step’ based on incomplete facts
and being void of any reasoning is not sustainable in the eye of law.
Therefore, keeping in view the above facts and circumstances, we set aside the impugned order of respondent dated 20/02/2020.
The respondent is directed to grant the patent on the invention as described and claimed in claims 1-19, strictly within 3 weeks from the issuance
of this order.
Appeal is allowed. No cost.