Pre-grant opposition filed against Indian Patent Application no. 201721030943 dismissed

13th February, 2020 - 12:18 pm Categories: Patent Opposition 0 Comments

Recently, Khurana and Khurana Advocates and IP Attorney’s Patents team was successful in defending a pre-grant opposition filed to reject our client’s Indian Patent Application no. 201721030943. The application was opposed on grounds of lack of clarity and sufficiency of disclosure, lack of novelty, lack of inventive step, non-patentable subject matter under section 3(d), 3(f) and 3(k) of the Indian Patents Act, failure to disclose information under section 8 of the Indian Patents Act etc.

The patent application relates to an automatic gemstone polishing robot. In the well-reasoned order, the Indian Patent Office fully considered the facts of the case, relevant laws and precedents, Manual of Patent Office Practice and Procedure etc. to dismiss the pre-grant opposition. Along with this, the Opponent failed to provide any evidence along with representation as per Indian Evidence Act, Indian Patents Act and Rules thereunder – the burden of proof required from the Opponent to prove lack of novelty, inventive step etc. was not adequately met.

Controller’s Order can be accessed here.

Observations from the Controller in reaching his decision are as under:

Insufficiency of Disclosure: The Controller was of the view that all the features of the invention are clearly described to enable a person skilled in the Art to practice the invention

Lack of Novelty: The Controller was of the view that the prior art cited, IN 242710, is different from the present application. The prior art is teaching about pre-processing step of automatic diamond bruting in gemstone processing, while the Applicant’s invention claims a polishing machine which is a post-processing step.

Lack of Inventive Step: The Opponent relied upon seven documents, however, the opponent failed to establish which combination of prior arts will be able to achieve the present invention. For this, the Controller was of the view that most of the cited references are for altogether different steps, bruting and polishing, and therefore can’t be considered as inventive step killing documents. Two of the cited documents are disclosing about gemstone polishing unit, however, one of them is disclosing movement of a polishing assembly while the other relies on one or more sensors to measure weight applied with the diamond on polishing wheel only without any further analysis and feedback.

Not an invention within the meaning of the Act or not patentable under the Act: The Opponent submitted that the present invention is not patentable under Section 3(d), 3(f) and 3(k) of the Indian Patents Act. To this the Learned Controller was of the view that:

• The present application claiming gemstone processing robot and the method of polishing gemstone are novel over the prior-art documents, and hence, there does not an example of “mere new use of a known process, machine or apparatus”. Based on this reason, it is manifest that the claimed invention does not fall within the ambit of Section 3(d).
• The claimed invention satisfies the test of ‘Novelty’ and ‘Inventive step’ and it is evident from a comparative reading of the instant patent application and the prior-arts cited that – not only is the claimed invention more than a ‘mere workshop improvement’, the technology involved produces superior results in terms of quality of gemstone. The claimed invention consists of features and systems/components/devices which are dependent on each other and not the mere arrangement. Therefore, the invention does not fall within the ambit of Section 3(f).
• In the opinion of Controller, even though there is contribution of image processing unit in the inventive step of theapplication but in-toto the claims, as amended does not fall within the ambit of Section 3(k).

Failure to disclose the information required by section 8: Applicant had filed Form-3 on time showing PCT Application no and publication.

Author: Arindam Purkayastha, Patent Attorney at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at arindam@khuranaandkhurana.com.