Full Judgment Text
Neutral Citation Number : 2023:DHC:2316
$~22
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-PAT) 467/2022
DIAMOND STAR GLOBAL SDN. BHD. ..... Appellant
Through: Mr. Sudhir Kumar and Ms.
Madhuri Rawat, Advs.
Versus
JOINT CONTROLLER OF PATENTS AND DESIGNS
..... Respondent
Through: Mr. Harish Vaidyanathan
Shankar CGSC, Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat and Mr. Alexander
Mathai Paikaday, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
JUDGMENT (ORAL)
% 29.03.2023
The Dispute
1. The human body is a storehouse of disease. Several malevolent
microorganisms, bacterial as well as fungal, make residence within its
folds. While the Maker has provided an outer layer of skin, to protect
the inner organs of the body, the skin itself is infested by numerous
microorganisms. These infestations, and the need to address various
ailments that they cause, constitute the malady that the appellant’s
invention, purports to address.
2. Wood of various trees which were recently living, when
pyrolyzed, produces wood vinegar. Wood vinegar, when added to
skin care preparations, can result in elimination of bacteria and other
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microorganisms that reside in the skin. Not all microorganisms are,
however, malevolent. Among the microorganisms in the skin are also,
to be found, beneficial lactic acid bacteria. Existing chemicals which
are added to skin care preparations tend to eliminate both harmful and
beneficial bacteria, without discrimination. Wood vinegar obtained
from the Rhizophora apiculata tree, when added to skin care
preparations in a concentration of 18-22% by weight, attacks only
harmful microorganisms, while leaving, unscathed, the beneficial
lactic acid bacteria. Additionally, the wood vinegar obtained from
Rhizophora apiculata has, over other wood vinegars, the advantage of
being free of guaiacol, which has an undesirable pungent odour. The
skin care formulation that the appellant seeks to patent, which it calls
―Hygiene Wash‖, contains wood vinegar obtained from the
Rhizophora apiculata tree, in a concentration of 18 to 22%.
3. The Controller of Patents (―the Controller‖) has, by order dated
nd
2 June 2022, rejected the appellant’s application for grant of a patent
for its ―Hygiene Wash‖. Aggrieved, the appellant has approached this
Court.
4. This, then, is the controversy, in precis .
Facts
5. With that background, one may reconnoitre the facts, in
somewhat greater detail.
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6. Application No. 202017054505 dated 15 December 2020,
which stands rejected by the impugned order, shall be referred to,
hereinafter, as ―the application‖. The complete specifications relating
to the proposed suit patent, as filed with the application, note, with
some trepidation, that several skin problems, such as acne, rash,
cellulitis, leprosy, candidiasis and ringworm, result as a consequence
of micro-infestation of the skin by bacterial and fungal organisms. The
need to maintain personal hygiene, including skin care, is, therefore,
of the essence. This requirement has resulted in the syntheses, over a
period of time, of several formulations for use in maintaining bodily
cleanliness. These preparations contain antimicrobial substances.
These antimicrobials, however, according to the specifications in the
proposed patent of the appellant, do not possess the capability of
distinguishing between beneficial and harmful microorganisms. They
also eliminate, in their action, beneficial lactic acid bacteria.
Therefore, states the specification, ―it would be advantageous for the
present market of personal care products to have antimicrobial
formulations that can selectively inactivate or eliminate pathogenic
microorganisms, but not lactic acid bacteria that are beneficial to
human skin.‖
7. Among the compounds which could be added during the
preparation of personal care skin products are, asserts the complete
specifications, are wood vinegars. Wood vinegars contain over 200
organic compounds, many of which possess strong antioxidant and
antimicrobial properties. As the concentration of wood vinegars,
obtained from different sources, however, varies, the application
asserts that, before they are applied in skin care and personal care
hygiene preparations, specific formulation strategies have to be
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devised.
8. The application further states that several of the wood vinegars
contain guaiacol, which emits an undesirable pungent smell. Ergo the
necessity of isolating wood vinegar which did not contain guaiacol,
from an appropriate source, and working out the optimised
concentration in which the wood vinegar would have to be added to
the personal care preparation so as to achieve optimum antimicrobial
properties.
9. Guided by these considerations, the appellant claims to have
isolated wood vinegar from the Rhizophora apiculata tree, which does
not contain guaiacol. If wood vinegar extracted from the Rhizophora
apiculata tree is, by following the process outlined in the application,
added to personal care preparations in a weight by weight
concentration of 18 to 22%, the aim of obtaining a preparation, with
no pungent attributes, which would exhibit antimicrobial activity only
against harmful microorganisms, while retaining beneficial lactic acid
bacteria, would, so claims the application, be achieved. By following
the procedure suggested in the appellant’s application, it is claimed
that wood vinegar, from Rhizophora apiculata , could be added to the
skin care preparations after concentration of 18% to 22 %.
10. This, asserts the appellant, would result in optimum
antimicrobial action of the concentration wood vinegar, so added,
without the disadvantage of the pungency of guaiacol. In this
concentration, the appellant contends that the wood vinegar would act
only against harmful microorganisms even while retaining beneficial
lactic acid bacteria. The summary of the invention, as provided by the
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appellant to the Controller of Patents, reads as under:
―SUMMARY OF THE PRESENT INVENTION
The present invention features an antimicrobial agent, wood
vinegar (also known as pyroligneous acid).
This invention more specifically relates to a method for preparing
a personal care product, comprising steps of obtaining a wood
vinegar and adding the wood vinegar into the personal care
product so that the wood vinegar makes up 18-22% of the total
weight or volume of the personal care product.
The wood vinegar is obtained by pyrolysis of Rhizophora
apiculata , wherein the wood vinegar inactivates or kills
microorganisms that cause skin and urinary tract infections but
retains a substantial amount of beneficial microorganisms, which
helps defend against attack by pathogenic microorganisms.
Preferably, the wood vinegar is obtained without having guaiacol.
Preferably, the beneficial microorganisms retained are lactic acid
bacteria.
Preferably, the wood vinegar makes up 20% of the total weight or
volume of the personal care product.
Further in the proposed method, the wood vinegar is left to age for
at least three months before being purified and added into a
personal care product. Then, the wood vinegar is purified by
filtration or distillation to remove impurities.
The parts of Rhizophora apiculata used for pyrolysis include barks,
stems, branches, roots, leaves or any combination thereof,
The purified wood vinegar contains, but not limited to, syringol,
benzoic acid, maltol, catechol and vanillin.
In some embodiments, the personal care product includes, for
example, feminine intimate wash, shower gel, soap, facial and
cosmetic products, perfume, body lotion, hair shampoo and
conditioner, hair grooming products, ointment, antiseptics, and
other skin and oral care products.
Preferably, an antidegradation stabilizer is added into the personal
care product.
Preferably, a surfactant or detergent to reduce surface tensions of
liquid—liquid or liquid—solid interfaces is added into the personal
care product.
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Preferably, a gelling agent and/or emulsifier is added into the
personal care product.
In another embodiment, this invention describes a personal care
product comprising
a purified wood vinegar that is added into the personal care product
so that the wood vinegar makes up 18-22% of the total weight or
volume of the personal care product.
The wood vinegar is obtained by pyrolysis of Rhizophora
apiculata , wherein the wood vinegar inactivates or kills
microorganisms that cause skin and urinary tract infections but
retains a substantial amount of beneficial microorganisms.
The present invention consists of features and a combination of
parts hereinafter fully described and illustrated in the
accompanying drawings, it being understood that various changes
in the details may be made without departing from the scope of the
invention or sacrificing any of the advantages of the present
invention.‖
th
11. The appellant submitted, on 15 December 2020, Indian PCT
National Phase Application No. 202017054505, corresponding to
th
WIPO PCT Application No. PCT/MY2018/050045, dated 6 July
2018, for grant of registration of a patent in respect of the aforesaid
invention ―Hygiene Wash‖.
12. The application had 15 claims which were later reduced to 14
and, thereafter, to 10. The final ten claims, as claimed by the
appellant, read thus:
―1. A method for preparing a personal care product, comprising
steps of:
obtaining a wood vinegar; wherein the wood vinegar is
obtained by process comprising the steps of:
pyrolising a wood to produce a smoke and a char;
condensing the smoke in a condenser, through which
cooling water is passed in from one end and goes out from
the condenser to cool the smoke into a condensate;
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releasing unwanted gas and collecting the condensate at the
bottom of the condenser;
separating the condensate into a freshly extracted wood
vinegar; bio-oil and bitumen;
ageing the freshly extracted wood vinegar for at least three
months;
purifying the wood vinegar by filtration or distillation to
remove impurities from the wood vinegar;
adding the purified wood vinegar into the personal care
product, and adding an antidegradation stabilizer, a
surfactant and a gelling agent into the personal care
product,
characterized in that the wood is from Rhizophora apiculata, the
wood vinegar makes up 18-22% of the total weight or volume of
the personal care product, and the wood vinegar contains syringol,
benzoic acid, maltol, catechol and vanillin, but is free from
guaiacol, wherein the wood vinegar inactivates or kills
microorganisms that cause skin and urinary tract infections but
retains a substantial amount of beneficial microorganisms .
2. The method for preparing a personal care product as
claimed in claim 1, wherein the beneficial microorganisms retained
are lactic acid bacteria.
3. The method for preparing a personal care product as
claimed in claim 1, wherein the wood vinegar makes up 20% of the
total weight or volume of the personal care product.
4. The method for preparing a personal care product as
claimed in claim 1, wherein the parts of Rhizophora apiculata used
for pyrolysis include woods and leaves from barks, stems,
branches, roots or any combination thereof.
5. The method for preparing a personal care product as
claimed in claim 1, wherein the personal care product includes, for
example, feminine intimate wash, shower gel, soap, facial and
cosmetic products, perfume, body lotion, hair shampoo and
conditioner, hair grooming products, ointment, antiseptics, and
other skin and oral care products.
6. The method for preparing a personal care product as
claimed in claim 1, wherein an the antidegradation stabilizer
prevents degradation of the personal care product due to
inactivation.
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7. The method for preparing a personal care product as
claimed in claim 1, wherein the surfactant reduces the surface
tension of the personal care product.
8. The method for preparing a personal care product as
claimed in claim I, wherein the gelling agent thickens the personal
care product.
9. The method for preparing a personal care product as
claimed in claim 1, wherein an emulsifier is added into the
personal care product.
10. A personal care product prepared by the method as claimed
in claims 1 to 9, comprising: a wood vinegar that makes up 18-22%
of the total weight or volume of the personal care product;
an antidegradation stabilizer;
a surfactant; and
a gelling agent,
characterized in that the wood vinegar is obtained from
wood of Rhizophora apiculata and contains syringol,
benzoic acid, maltol, catechol and vanillin, but is free from
guaiacol, wherein the wood vinegar inactivates or kills
microorganisms that cause skin and urinary tract infections
but retains a substantial amount of beneficial.‖
It is apparent that Claim 10 is the substantive product claim, claiming
the personal care product prepared by the methods claimed in Claims
1 to 9.
13. Consequent to preliminary scrutiny of the appellant’s
th
application, First Examination Report (FER) dated 29 July 2021 was
issued to the appellant by the Controller of Patents. The summary of
the FER certified the existence of novelty and industrial applicability
for all fifteen claims, but, in a somewhat contradictory vein, disputed
the claims as lacking in any inventive step as defined in Section
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1
2(1)(ja) of the Patents Act. Part 1 of the Summary of the Report read
thus:
Sl.
No.
Requirements under the Act Claim
numbers
Remarks
1. Invention u/s
2
2(1)(j)
Novelty Claims: 1 – 15 Yes
Claims: No
Inventive
step
Claims: Yes
Claims: 1 – 15 No
Industrial
Applicability
Claims: 1 – 15 Yes
Claims: No
2. Claims [u/s
10(5) &
10(4)(c)]
Definitive Claims: Yes
Claims: 1 No
3. Other requirement(s):
Please first define your invention and then state its novelty
and inventive step. You are simply adding the wood vinegar
into the personal care product to obtain a disinfectant
product. In other words you are simply utilising properties
of wood vinegar.
14. Thereafter, the FER proceeded thus:
(i) Serial no. 2 in the FER, which pertained to ―sufficiency
of disclosure‖ was left blank.
(ii) The FER objected to Claim 1 in the suit patent under
Section 10(5) of the Patents Act, as it did not include all
parameters of the reaction and was not, therefore, definitive.
(iii) The subject matter of claims 3 to 4 and 10 were alleged
to have no technical feature and not, therefore, patentable under
Section 2(1)(ja) of the Patents Act.
1
(ja) ―inventive step‖ means a feature of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that makes the invention not obvious to a
person skilled in the art;
2
(j) ―invention‖ means a new product or process involving an inventive step and capable of industrial
application
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(iv) On the existence of inventive step, the objection in the
FER was that claims 1 to 15 in the appellant’s application
lacked an inventive step within the meaning of Section 2(1)(ja)
of the Patents Act, in the light of prior art documents D-1 to D-
3. The FER proceeds to explain the reason why, thus:
―1). INVENTIVE STEP:
Claim(s) (1-15) lack(s) inventive step, being obvious in
view of teaching (s) of cited document(s) above under
reference for the following reasons:
The subject matter of claims 1-15 of the present application
lacks an inventive step u/s 2(1)(ja) of The Patents Act, 1970
in light of the prior art documents D1-D3.
The present application relates to a method for preparing a
personal care product comprising steps of obtaining a
wood vinegar and adding the wood vinegar into the
personal care product.
The prior art document D1 which has been considered as
the closest to the subject matter of present case disclosed
cosmetic composition, characterized in that it comprises
0.5% to 5.0% by weight in mixing wood vinegar with the
cosmetic composition (claim 1). The prior art document D1
mentioned less percentage of wood vinegar as compared to
present case and is also silent on presence or absence of
guaiacol.
The prior art document D2 discloses compound (guaiacol)
extracted from wood vinegar, and the wood vinegar used
for extraction is a substance obtained through thermal
decomposition (pyrolysis) of trees. The prior art document
D2 teaches to obtained guaiacol from wood vinegar through
pyrolysis in other way itis method for obtaining wood
vinegar free from guaiacol.
The prior art document D3 discloses a device capable of
separating and purifying phenol compounds such as 2,6-
dimethyl oxo phenol and guaiacol from wood tar as a
biomass pyrolysis byproduct and has the advantages of
being economic and efficient, free of secondary pollution,
high in purification compound concentration.
The teachings of prior art documents D2-D3 motivates to
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obtain wood vinegar free from gualacol and that of D1
suggest addition of wood vinegar in cosmetics.
Hence, the problem to be solved is considered to be a minor
modification. Routine experimentation would lead the
skilled person to the solution of the present application.
Further, no outstanding technical advancement as compared
to the knowledge described in D1-D3 has been described in
the specification. Therefore, from the teaching of document
D1-D3, any person skilled in the art can arrive at the
present application without any technical advancement. To
prove an inventive step, the applicant should relate the
distinguishing features of the present application over the
cited prior art documents to a surprising technical effect or
make plausible that this distinguishing feature is not
obvious in light of the prior art teaching of D1-D3.
Therefore, the subject matter of claims 1-15 lacks an
inventive step u/s 2 (1) (ja) of The Patents Act, 2005 in
view of the cited documents D1-D3.‖
th
15. The appellant replied to the aforesaid FER on 8 November
2021. Apropos the prior arts D1 to D3, the appellant’s reply stated
thus:
Distinction between D1 and present invention
D1 (KR20030005075A) Present Application
… collects smoke generated
when carbonizing oak wood
(curse) wood at a smoke
temperature of 80-150°C, cools
it rapidly, and suspends or
distills the crude wood vinegar
for 6 to 12 months. It is made
with more than 85% water and
the rest is organic acid as the
main component. In addition, it
contains more than 200 kinds
of organic substances and
compounds such as minerals
and vitamins, and has a unique
scent (smoky flavor). The
content of wood vinegar in the
cosmetic composition
according to the present
invention is preferably 0.5 to
5% by weight based on the
total amount of the
... obtaining a wood vinegar;
and adding the wood vinegar
into the personal care product
so that the wood vinegar makes
up 18-22% of the total weight
or volume of the personal care
product, .. the wood vinegar is
obtained by way of condensing
a smoke generated from
pyrolysis of Rhizophora
apiculata into a condensate,
separating and purifying the
wood vinegar from the
condensate, ... the wood vinegar
inactivates or kills
microorganisms that cause skin
and urinary tract infections but
retains a substantial amount of
beneficial microorganisms.
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composition.
Extensive experimentation as shown in the specification has
found that the wood vinegar added into the personal care
product in the concentration if 18-22% is able to eliminate
harmful microorganisms while retaining beneficial
microorganisms. This is significantly different from the wood
vinegar in D1, which requires distillation for 6-12 months and
is used at a different concentration (0.5-5%). It is also not
merely using the properties of wood vinegar, but carefully
formulating personal care products using the wood vinegar
derived from an inventive process from a mangrove plant at a
tested concentration.
Distinction between D2 and present invention:
D2 (JP20075107156A) Present Application
Preferably, the pharmaceutical
composition of the present
invention including the
guaiacol family compounds
and the syringol family
compounds, extracted from the
natural plant vinegar contains
10-6 to 90 weight% of the
guaiacol compound and 10 to
90 weight% of the syringol
compound by the total weight
of the compound. On the
while, the guaiacol family
compounds and the syringol
family compounds are
compounds extracted from the
natural plant vinegar and the
natural plant vinegar used to
extract has advantage of being
very stable to heat due to
compounds obtained from heat
decomposition of trees.
… obtaining a wood vinegar;
and adding the wood vinegar
into the personal care product
so that the wood vinegar makes
up 18-22% of the total weight
or volume of the personal care
product,
… wherein the wood vinegar is
obtained without having
guaiacol.
The surprising effect of this invention is that the wood vinegar
obtained from the pyrolysis of Rhizophora apiculata as in the
aforementioned method is free from guaiacol without
separately extracting guaiacol. This resulted from substantial
experimentation, which would not have been achieved using
any plant. D2 teaches away from the present invention
because guaiacol is preferred in D2, whereas it is undesired in
the present invention. Therefore, a person skilled in the art
will not be motivated to learn D2 to come up with the present
invention. In biochemistry, it is in appropriate the assume
that a teaching as regard to the extraction of guaiacol from
wood vinegar would inherently teach a person to extract wood
vinegar free from guaiacol because the extraction protocol
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would be substantially different. For example, the rest of the
wood vinegar would have been contaminated or turned into a
waste product after extracting guaiacol.
Distinction between D3 and present invention
D3 (CN107573222A) Present Application
The wood tar fine purification
device establishes a fine
purification segmentation
process for wood tar, and
obtains crude phenol of
phenolic compounds such as
2,6-dimethyloxyphenol and
guaiacol by distillation, and
then passes through
distilliation. The process
obtains a high concentration of
final product after purification.
… obtaining a wood vinegar;
and adding the wood vinegar
into the personal care product
so that the wood vinegar makes
up 18-22% of the total weight
or volume of the personal care
product … the wood vinegar is
obtained by way of condensing
a smoke generated from
pyrolysis of Rhizophora
apiculate into a condensate,
separating and purifying the
wood vinegar from the
condensate, …
The purification device of D3 focusses on the distillation,
reflux set-up and process for the extraction of phenolic
compounds from readily provided wood vinegar, but NOT on
the extraction of wood vinegar from plants by pyrolysis.
Besides, there is no mention on the use of such extracts in any
products. Therefore, D3 should only be considered a relevant
background art instead of being taken to make the inventive
step of the present invention obvious. As with the argument
for D2, it is inappropriate to assume that a teaching as regard
the extraction of guaiacol from wood vinegar would
inherently teach a person to extract wood vinegar free from
guaiacol because the extraction protocol would be
substantially different. ‖
st
16. The appellant filed written submissions, dated 21 March 2022,
before the Controller. Apropos Section 2(1)(ja), the appellant
submitted thus:
―Applicant submits that current formulations for washing or
bathing of the human body commonly contain antimicrobial
substances, which purportedly kill (bactericidal or fungicidal) or
inactivate (bacteriostatic or fungistatic) almost all of the
microorganisms present on the skin with 90-99% efficiency upon
contact. However, these antimicrobial products do not have the
ability to discriminate between microorganisms that are beneficial
for the human body and non-beneficial microorganisms. As such,
overuse of such antimicrobial products may in turn cause
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discomfort and even skin problem due to the loss of beneficial
microorganisms that act a natural barrier to defend against attack
by pathogenic microorganisms. Beneficial skin microorganisms,
such as lactic acid bacteria, in fact constitute human’s first line of
protection in the immune system.
Therefore, present invention provides for a personal care product
having antimicrobial formulations that can selectively inactivate or
eliminate pathogenic microorganisms, but not lactic acid bacteria
that are beneficial to human skin.
Applicant submits that wood vinegars from different species of
woody plants contain different compositions of such compounds
and hence, require different formulation strategies before being
applied to achieve their selective antimicrobial properties. In
addition, guaiacol, which contributes to undesirable pungent smell,
was also detected in high amounts in wood vinegars from various
plant species . It is therefore an added advantage to utilize an
optimized concentration of wood vinegar from a plant species
without the presence of guaiacol.
Applicant submits that not all types of wood vinegar exhibit the
same characteristics/efficacy. Applicant is enclosing herewith
Supplementary Report 1 showing the efficacy of the claimed
concentrations. The efficacy of the product is also comparable to
those of other chemical-based commercial products as
demonstrated in Supplementary Report 2 (note that XM2 is the
product of the present invention).
Besides, many wood vinegars have the pungent smell of guaiacol,
unlike those of the present invention where guaiacol is absent.
Extensive experimentation found that the wood vinegar obtained
from mangrove (Rhizophora apiculata) when added into the
personal care product in the concentration of 18-22% is able to
eliminate harmful microorganisms while retaining beneficial
microorganisms. Which is outstanding technical advancement as
compared to existing technical knowledge in respect of personal
care product.
Therefore, present invention fully satisfies the provision of Section
2 (1) (ja) of the India Patents Act 1970 as it involves technical
advancement as well as has economic significance which makes
the invention not obvious to a person skilled in the art.
It is also pertinent to mention that present invention has been
favourably granted in Bangladesh, China and Malaysia.
In view of above submissions, we request the Ld. Controller for
withdrawal of the no objection hereinabove in favour of the
Applicant.
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OTHER REQUIREMENT(S):
1. Applicant reiterates that they are not adding the wood
vinegar into the personal care product to obtain a disinfectant
product or merely using the properties of wood vinegar. Had that
been so obvious the invention of the Applicant would not have
been held novel as well as inventive by the ISA in its written
opinion . The distinction of the present invention from the cited art
D1 also shows that properties of wood vinegar varies from one
plant species to others as well as on the method of obtaining the
wood vinegar. Applicant has carefully formulated personal care
products by adding wood vinegar derived a mangrove plant
(Rhizophora apiculate) at a tested concentration. Extensive
experimentation by the Applicant found that the wood vinegar
obtained from Rhizophora apiculata by present invention, when
added into the personal care product in the concentration of 18-
22% is able to eliminate harmful microorganisms while retaining
beneficial microorganisms. Besides, many wood vinegars have the
pungent smell of guaiacol, unlike those of the present invention
where guaiacol is absent .
2. The Applicant has made revised claim 10 (original claim
14) dependent upon the method disclosed in preceding claims to
limit the scope of product to the method disclosed.
In view of the above, the Applicant requests that aforementioned
objections may kindly be withdrawn in favour of the Applicant.
SCOPE:
The Applicant submits that the invention relates to a method for
preparing a personal care product, comprising steps of obtaining a
wood vinegar ; wherein the wood vinegar is obtained by process
comprising the steps of pyrolising a wood to produce a smoke and
a char; condensing the smoke in a condenser, through which
cooling water is passed in from one end and goes out from the
condenser to cool the smoke into a condensate: releasing unwanted
gas and collecting the condensate at the bottom of the condenser;
separating the condensate into a freshly extracted wood vinegar;
bio-oil and bitumen; ageing the freshly extracted wood vinegar for
at least three months; purifying the wood vinegar by filtration or
distillation to remove impurities from the wood vinegar: adding the
purified wood vinegar into the personal care product, and adding
an antidegradation stabilizer. a surfactant and a gelling agent into
the personal care product, characterized in that the wood is from
Rhizophora apiculata, the wood vinegar makes up 18-22% of the
total weight or volume of the personal care product, and the wood
vinegar contains syringol, benzoic acid, maltol, catechol and
vanillin. but is free from guaiacol, wherein the wood vinegar
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inactivates, or kills microorganisms that cause skin and urinary
tract infections but retains a substantial amount of beneficial
microorganisms.
Applicant submits that current formulations for washing or bathing
of the human body commonly contain antimicrobial substances,
which purportedly kill (bactericidal or fungicidal) or inactivate
(bacteriostatic or fungistatic) almost all of the microorganisms
present on the skin with 90-99% efficiency upon contact. However,
these antimicrobial products do not have the ability to discriminate
between microorganisms that are beneficial for the human body
and non-beneficial microorganisms. As such, overuse of such
antimicrobial products may in turn cause discomfort and even skin
problem due to the loss of beneficial microorganisms that act a
natural barrier to defend against attack by pathogenic
microorganisms.
Beneficial skin microorganisms, such as lactic acid bacteria, in
fact constitute human’s first line of protection in the immune
system.
Therefore, present invention provides for a personal care product
having antimicrobial formulations that can selectively inactivate or
eliminate pathogenic microorganisms, but not lactic acid bacteria
that are beneficial to human skin.
Applicant submits that wood vinegars from different species of
woody plants contain different compositions of such compounds
and hence, require different formulation strategies before being
applied to achieve their selective antimicrobial properties. In
addition, guaiacol, which contributes to undesirable pungent smell,
was also detected in high amounts in wood vinegars from various
plant species. It is therefore an added advantage to utilize an
optimized concentration of wood vinegar from a plant species
without the presence of guaiacol.
The limitations of plant species ( Rhizophora apiculata ), process of
obtaining wood vinegar, composition as well as concentration
range (18-22%) and properties of such personal care product
retaining beneficial microorganisms have been included to clearly
define the scope of the present invention.
Other distinctive features of the invention are already explained in
preceding paras {especially relating to 2(1)(ja)} and are not
repeated herein for sake of brevity.‖
(Emphasis supplied)
nd
17. The controller has, by the impugned order, dated 2 June 2022,
rejected the appellant’s application. The view of the Controller, in the
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impugned order, reads thus:
― Controller view : Specification says that currently available
personal care product commonly contain antimicrobial substances,
which purportedly kill (bactericidal or fungicidal) or inactivate
(bacteriostatic or fungistatic) almost all of the microorganisms
present on the skin with 90-99% efficiency upon contact. These
antimicrobial products do not have the ability to discriminate
between microorganisms that are beneficial for the human body
and non beneficial microorganisms. Wood vinegars from different
species of woody plants contain different compositions and hence,
require different formulation strategies before being applied to
achieve their selective antimicrobial properties. The applicant is
making a personal care product by adding to it wood vinegar in an
amount of 18-22% and obtained from plant species (Rhizophora
apiculata) by a known general process of pyrolysis and claim that
selecting of wood vinegar from the plant species (Rhizophora
apiculata) and that using it in a specific amount (i.e. 18- 22%) in a
personal care composition is a novel and inventive part of the
invention. The applicant claim that by using wood vinegar from the
plant species (Rhizophora apiculata) in a specific amount (i.e. 18-
22%), the product is devoid of compound like guaiacol, which is
responsible for pungent smell in a product. The applicant also
claim that properties of wood vinegar varies from one plant species
to others as well as on the method of obtaining the wood vinegar.
According to applicant by using Wood vinegar obtained from the
plant species (Rhizophora apiculata) in a personal care product it
can selectively inactivate or eliminate pathogenic microorganisms,
but not lactic acid bacteria that are beneficial to human skin.
In the opinion of the Controller the applicant has just found
/discovered that in wood vinegar obtained from the plant species
(Rhizophora apiculata) , guaiacol compound ( which is responsible
for pungent smell in a product) is missing and he used the vinegar
obtained from the plant species (Rhizophora apiculata) (instead of
from other source) in making the personal care product like
feminine intimate wash, shower gel, soap, facial and cosmetic
products, perfume, body 20 lotion, hair shampoo and conditioner,
hair grooming products, ointment, antiseptics, and other skin
products.
The applicant is simply using the inherent germicidal property of
the wood vinegar obtained from the plant species Rhizophora
apiculata (instead of from other sources) in making the personal
care products. Not any experimental based working example is
present in the specification for making any personal care product.
The applicant is claiming method of preparing a personal care
product in claim-1 by just adding wood vinegar obtained from the
plant species Rhizophora apiculata into the personal care product
and then adding additional adjuvants in it. In between the
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applicant is specifying making of wood vinegar from plant species
Rhizophora apiculate and mentioning just broader and common
steps of pyrolysis for obtaining vinegar. Not a single experimental
based working example is present in the specification which can
justify the new pyrolysis method is being applied to obtain wood
vinegar from plant species Rhizophora apiculata . The applicant
has produced in post hearing written submission a no. of
experimental and comparative data for establishing the
effectiveness of wood Vinegar in making personal care products.
So Controller is not making any comments on the effectiveness of
the use of wood vinegar obtained from Rhizophora apiculate in the
preparation of personal care products.
For claiming any process in patent application, there must be some
experimental based working examples for carrying out such
process, which is missing in this application. Mentioning of just
steps of any process means these steps are common in art and
hence insufficient to define that process.
No user can carry out any experiment or make out the claimed
product based on steps of process.
No detail process of making the personal care product using
specific wood vinegar is present in the specification. The steps of
pyrolysis mentioned in the claim-1 is also common in art (not
based on any experimental example).
Decision : So the patent application no. 202017054505 is being
3
refused u/s 15 of the Patent Act 1970 on account of insufficient
4
disclosure (as required u/s 10(4) of the Patent Act) of the claimed
process in the specification.‖
18. Aggrieved by the aforesaid decision of the Controller, rejecting
its application seeking registration of a patent, in respect of its hygiene
wash invention, the appellant has preferred the present appeal under
3
15. Power of Controller to refuse or require amended applications, etc., in certain cases . – Where
the Controller is satisfied that the application or any specification or any other document filed in pursuance
thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller
may refuse the application or may require the application, specification or the other documents, as the case
may be, to be amended to his satisfaction before he proceeds with the application and refuse the application
on failure to do so.
4
( sans proviso)
(4) Every complete specification shall –
(a) fully and particularly describe the invention and its operation or use and the method by
which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and
for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is
claimed.
(d) be accompanied by an abstract to provide technical information on the invention:
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Section 117A(2) of the Patents Act, 1970.
Rival Submissions
19. I have heard Mr. Sudhir Kumar, learned Counsel for the
appellant and Mr. Harish Vaidyanathan Shankar, learned Counsel for
the Controller, at length.
20. Both sides also filed detailed written submissions.
21. Mr. Sudhir Kumar submits, in the first instance, that the
impugned order has erred in holding that the applicant’s application
suffered from insufficiency of disclosure. In fact, he submits, the
column relating to ―insufficiency of disclosure was left blank in the
FER‖. It was not, therefore, open to the Controller, in the impugned
order, to hold that the applicant’s application was bad for insufficiency
of disclosure.
22. Mr. Sudhir Kumar has further submitted that the invention,
which the appellant desired to patent, was eminently patentable. He
submits that existing anti-microbial preparations, which were used in
personal care products to combat existing bacteria or fungi were
clearly deficient vis-à-vis the product which the appellant desired to
patent. The two main deficiencies which the appellant’s invention
overcame, according to him, were the pungent smell of guaiacol and
the capability of the additive to distinguish between harmful bacteria
and beneficial lactic acid bacteria. He submits that the appellant had,
by using its inventive faculties, assessed that the wood vinegar
obtained from the Rhizophora apiculata tree was free of guaiacol and,
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therefore, if added to the personal care formulation, would not suffer
from the pungent smell which guaiacol imparted to the product.
Additionally, when added at a concentration of 18 to 22%, the
appellant contended that the preparation would attack only harmful
bacteria and would retain beneficial lactic acid bacteria. Two of the
major handicaps which were prevalent in existing anti-microbial
preparations which were added to such personal care products,
therefore, in his submission, were remedied by the invention which
the appellant desired to patent.
23. Mr. Sudhir Kumar submits that the impugned order fails to
appreciate these facts, and proceeds, in a somewhat myopic fashion, in
treating the invention as merely making use of the property already
existing in nature, of wood vinegar obtained from Rhizophora
apiculata . In so doing, he submits that the Controller has failed to
note the fact that the appellant was entitled to take credit for
identifying the Rhizophora apiculata tree, as the source from which to
derive the appropriate wood vinegar, and to work out the
concentration in which the wood vinegar was required to be added to
the skin care preparation, as well as the process to be followed in that
regard. These, he submits, constituted ―inventive step‖ within the
meaning of Section 2(1)(ja) of the Patents Act. As such, he submits
that the impugned order, which proceeds on a premise that the
appellant’s invention was bad for want of any inventive step as
required by Section 2(1)(ja) of the Patents Act was clearly in error.
24. Mr. Vaidyanathan, learned Counsel appearing for the
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5
Controller, relies, per contra , on Section 2(1)(ja) as well as 3(c) of
the Patents Act. He submits that, inasmuch as it merely sought to rely
on the naturally occurring property of wood vinegar obtained from the
Rhizophora apiculata tree, of being guaiacol-free, the invention that
the appellant sought to patent was merely ―the discovery of (a) living
being or non-living being substance occurring in nature‖.
25. That apart, Mr Vaidyanathan submits that the appellant’s
application was inherently defective as, even while acknowledging the
fact that wood vinegars were used as additives in personal care
preparations to achieve anti-microbial properties, the application did
not compare the invention that the appellant sought to patent with
other wood vinegars, which would be the appropriate prior art, so as to
make out a case of superiority of the wood vinegar obtained from the
Rhizophora apiculata tree, vis-à-vis other wood vinegars, for use as
anti-microbials in skin care preparations. He submits that, instead, the
appellant was seeking to compare the wood vinegar obtained from the
Rhizophora apiculata tree with other chemical formulations which
were added to skin care preparations, while assessing their
appropriateness and efficacy. Inasmuch as there was no comparison
between the wood vinegar which the appellant sought to patent with
other wood vinegars earlier used as anti-microbial additives in skin
care preparations, Mr. Vaidyanathan submits that the appellant’s
application was inherently defective.
26. Mr. Vaidyanathan further submits that the process outlined by
5
3. What are not inventions . – The following are not inventions within the meaning of this Act, -
*
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substance occurring in nature; …
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the appellant in examples 1 to 9 of the appellant’s claim were merely
the normal process of pyrolysis by which wood vinegar could be
extracted from trees. In the event that the process was inventive in any
fashion, he submits that the appellant was required to provide
experimental data to demonstrate such inventiveness. Such data, too,
in his submission, had not been provided by the appellant.
27. Mr. Vaidyanathan has drawn my especial attention to the
objections regarding lack of inventive step as contained in the FER
th
dated 29 July 2021. According to him, the prior art documents D1,
D2 and D3, cumulatively seen, clearly indicated that the process and
the product which the appellant sought to patent were completely
lacking in inventiveness. He has drawn particular attention in this
context, to the observation, in the FER, that ―the teachings of prior art
documents D2-D3 motivates to obtain wood vinegar free from
guaiacol and that of D1 suggests addition of wood vinegar sin
cosmetics‖.
Analysis
28. I have heard learned Counsel for both sides and applied myself
to the material on record vis-à-vis the applicable statutory provisions.
29. The patent regime, the world over, spans two overarching, and
equally important, commercial considerations. On the one hand, the
very raison d’ etre of patent is fostering of scientific temper, and
protection of the inventive faculties of persons who, expending their
scientific and technical knowledge, inventing new products and
processes, thereby incrementing the state of existing scientific
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knowledge. On the other, the grant of a patent results in a monopoly,
in the patent holder, of the right to use the invention during the life of
the patent, thereby excluding its availability to all others who may
desire to create something similar. The grant of a patent, therefore,
carries with it the acceptance that, on the expiry of the life of the
patent, the invention would be thrown open to the public. Effecting of
minute or non-incremental changes in a patented invention, with a
view to claim a new invention and a new patent, therefore, constitutes
evergreening of the patent, which is completely proscribed in law.
Where, however, the new product, or process, involves a genuine
―inventive step‖ over the existing state of knowledge as represented
by prior art, the invention becomes patentable.
30. The task of the authority who is approached with an application
seeking grant of a patent – and of the Court seized with a challenge to
the decision of the said authority – is, therefore, often to balance these
two considerations, and ascertain whether the claimed invention
genuinely represents an ―inventive step‖ over existing knowledge in
the form of prior art. In arriving at this decision, the authority, and the
Court, is required to bear in mind the existing statutory patent regime
in force – in India, in the form of the Patents Act, 1970.
31. In this context, the following exordium, from Novartis AG v.
6
U.O.I. which, though rendered in a challenge which involved the
7
application of Section 3(d) of the Patents Act, is clearly of universal
6
(2013) 6 SCC 1
7
3. What are not inventions . – The following are not inventions within the meaning of this Act, -
*
(d) the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new property or
new use for a known substance or of the mere use of a known process, machine or apparatus unless
such known process results in a new product or employs at least one new reactant.
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application as a statement of the law, cannot be afforded to be
forgotten:
―169. Section 2(1)(j) defines ―invention‖ to mean, ―a new product
or …‖, but the new product in chemicals and especially
pharmaceuticals may not necessarily mean something altogether
new or completely unfamiliar or strange or not existing before. It
may mean something “different from a recent previous” or “one
regarded as better than what went before” or “in addition to
another or others of the same kind ‖ [The New Oxford Dictionary
of English, Edn. 1998.] .‖
(Emphasis supplied)
As the discussion hereinafter would disclose, this exordium is of
especial relevance in the present case.
32. ―Invention‖ and ―inventive step‖ are defined in clauses (j) and
(ja) of Section 2 of the Patents Act as meaning ―a new product or
process involving an inventive step and capable of industrial
application‖ and ―a feature of an invention that involves technical
advance as compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious to a
person skilled in the art‖ respectively. ―Patent‖ is defined in Section
2(m) as a patent for any invention granted under the Patents Act.
Section 3 sets out certain products and processes which are not
inventions within the meaning of Patents Act and are not, therefore,
patentable. Of these, we are concerned only with Section 3(c) which
treats ―the mere discovery of a scientific principle or the formulation
of an abstract theory or discovery of any living thing or non-living
substances occurring in nature‖ as non-patentable.
33. With this background, I proceed to address and examine the
issues in controversy.
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34. Section 3(c)
34.1 Mr Vaidyanathan, as already noted, places considerable
emphasis on Section 3(c). The provision has, in my considered
opinion, to be interpreted as it stands. The word ―mere‖, as used in the
opening part of the said Clause would apply, in my opinion, both to
the first part, i.e. ―discovery of a scientific principle or the formulation
of an abstract theory‖ as well as to the second part, i.e. ―discovery of
any living thing or non-living substances occurring in nature‖. It is
only mere discovery of a living thing, or non-living substance
occurring in nature which, therefore, according to me, would fall
within the second part of Section 3(c).
35. To analogize the issue to the facts of the present case, for
example, if someone were to seek a patent for guaiacol, it would be
possible to reject the application on the ground that guaiacol is a
substance occurring in nature and, therefore, even if it had not been
earlier discovered, the mere discovery of guaiacol was not patentable
as an invention, in view of the proscription contained in Section 3(c).
This, in fact, appears to me to be one of the major grounds on which
the Controller has erred in the impugned order. A running thread,
through the impugned order as well as in the FER which preceded it,
is the observation of the Controller that the applicant was merely
seeking to take advantage of the property of a naturally occurring
substance, i.e. wood vinegar from the Rhizophora apiculata tree,
being the absence of guaiacol. To the extent that the appellant was, in
fact, stressing on the absence of guaiacol in the wood vinegar obtained
from the Rhizophora apiculata tree, the observations of the Controller
do not brook any cavil. Where, however, the Controller has erred is in
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failing to observe that the appellant was not seeking to merely patent
wood vinegar obtained from the Rhizophora apiculata tree. The claim
of the appellant was that, as an antimicrobial additive to skin care
preparations, which would be free of any pungent constituents as well
as capable of eradicating harmful bacteria even while preserving
beneficial lactic acid bacteria, the wood vinegar obtained from the
Rhizophora apiculata tree, added to the skin care preparations at a
strength of 18 to 22%, would provide optimum results. It is in this
background that the appellant sought to patent the process by which
the wood vinegar obtained from the Rhizophora apiculata tree was
added to the skin care preparations at a concentration of 18 to 22%,
and the product which was so added, in Claims 1 to 14 and Claim 15,
respectively, in the appellant’s application.
36. Within the ambit of the expression ―new product or process‖ in
Section 2(1)(j), as per the law declared by the Supreme Court in
6
Novartis AG would be included not merely ― something altogether
new or completely unfamiliar or strange or not existing before” but
also ― something “different from a recent previous” or “one regarded
as better than what went before” or “in addition to another or others
of the same kind ‖ ‖ . The Supreme Court, therefore, advocates
according, to the expression ―new product or process‖ in Section
2(1)(j), an expansive, rather than a restrictive, interpretation, and
Article 141 of the Constitution of India makes that interpretation
binding on every authority lower in the judicial hierarchy, including
this Court. I do not see how the claims of the appellant, of which it
sought a patent, which identified the Rhizophora apiculata tree as the
appropriate source of the wood vinegar to be used, the process to
which the wood vinegar would have to be subject, and the appropriate
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strength in which the wood vinegar, so processed, would have to be
added, with other additives, while preparing the skin care formulation,
can be regarded as lacking in any inventive step. The claims of the
appellant are interdependent, not independent, and have to be seen as
such.
37. I do not find, in the application submitted by the appellant, any
categorical admission that there were other earlier preparations of
wood vinegars, which were added to skin care preparations, so as to
confer antimicrobial properties. The submission of Mr. Vaidyanathan
that the appellant’s application was deficient as it did not compare the
invention which the appellant sought to patent with other wood
vinegars which were added to skin care preparations, so as to
demonstrate the greater efficacy or preferable properties of the wood
vinegar obtained from the Rhizophora apiculata tree and added at a
concentration of 18 to 22%, is not, therefore, in my view, acceptable.
38. Even if, arguendo , the submissions, were to be accepted, that,
in my considered opinion, cannot really constitute a legitimate basis to
reject the appellant’s application as wanting in any inventive step.
There is no denial, in the impugned order, of the fact that no earlier
person had recognized the Rhizophora apiculata tree as the source of
the wood vinegar which was free of guaiacol and, therefore, of the
pungency which guaiacol imparted to the wood vinegar, or of the fact
that, when added to the skin care preparations at a concentration of 18
to 22%, it would confer optimum antimicrobial properties, which
would enable it to selectively target harmful bacteria and retain
beneficial lactic acid bacteria. The complete specifications filed by
the appellant before the Controller contained detailed workings of
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how, when the appellant’s product was added, these properties were
found to result. As such, it cannot, in my considered view, be held
that the appellant’s application was lacking even in respect of
sufficiency of disclosure.
39. The reliance by Mr. Vaidyanathan on the prior art documents
D-1 to D-3 in the FER is also, in my view, not completely justified. If
one peruses the reference to the prior art documents D-1 to D-3 in the
FER, the following position emerges:
(i) D-1 has been cited merely as a document which
envisages mixing of wood vinegar with the cosmetic
composition in a concentration of 0.5% to 5%. The FER does
not disclose the document D-1 as referring to the beneficial
properties which would result as a consequence of such mixing
or of presence or absence of guaiacol in the wood vinegar. That
apart, the appellant had, in its response to the FER, clearly
stated that the wood vinegar disclosed in D1 required 6 to 12
months’ distillation. The appellant further averred, in its
response, that the beneficial property of selectively targeting
harmful microorganisms was the property of adding the wood
vinegar at a concentration of 18 to 22%, whereas the D1 prior
art envisaged addition of wood vinegar at a concentration of 0.5
to 5%.
(ii) D2 merely claimed a process, by which guaiacol would
be extracted from wood vinegar. There is no reference, in D2,
to any skin care preparation, much less of the addition, to any
skin care preparation, of an additive which would impart, to it,
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antimicrobial properties. The appellant also submitted, in its
response to the FER, that the utility, of the remnant wood
vinegar, after guaiacol was so extracted from it, as an
antimicrobial additive to skin care preparations, was entirely a
matter of conjecture. The document D2, therefore, was almost
completely irrelevant to the invention claimed by the appellant.
(iii) The D-3 prior art again sets out a process of separating
and purifying phenolic compounds including guaiacol, from
wood tar as a bio mass biolysis product. It did not, moreover,
claim usage of the phenolic compounds, so extracted, in any
manner. Neither the said claim envisage extraction of wood
vinegar from the tree.
40. The FER proceeds, as Mr. Vaidyanathan points out, to observe
that a combined teachings of the prior art documents D-2 and D-3
motivated a person’s skilled in the art to obtain wood vinegar from
guaiacol, and D-1 suggested addition to wood vinegar in cosmetics.
41. What the FER as well as the impugned order of the Controller
fails to notice, is that none of the cited prior art documents D-1 to D-3
either identified Rhizophora apiculata as the appropriate plant or tree,
the wood vinegar of which was free from guaiacol or identified the
said wood vinegar as, being most appropriate as an additive to skin
care preparations at a concentration of 18 to 22%, to distinguish
between the beneficial and harmful bacteria. These two properties,
which, in a manner of speaking, constitute USP of the invention which
the appellant sought to patent, are not taught by any of the prior art
documents D-1 to D-3.
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SINGH NEGI
Signing Date:01.04.2023
10:28:43
Neutral Citation Number : 2023:DHC:2316
42. The impugned order of the Controller does not contradict any of
the grounds on which the appellant had, in its response to the FER,
contested D-1 to D-3 as being appropriate prior art. Further, the
impugned order of the Controller fails to recognise the inherent
inventive step involved in (i) identifying the wood vinegar obtained
from the Rhizophora apiculata as being free of guaiacol and,
therefore, suitable for addition of skin care cosmetics, (ii) working out
the composition of 18 to 22% as the appropriate strength in which, on
addition of the said wood vinegar to the skin care preparations,
optimum antimicrobial properties, which would do away with harmful
bacteria even while preserving beneficial lactic acid bacteria. The
disclosures in the application submitted by the appellant were, ex
facie , sufficient to support the claims, the scope of which the
impugned order misconstrues.
nd
43. Resultantly, the impugned order dated 2 June 2022 passed by
the Controller must be held to have erred in refusing the appellant’s
application for grant of patent.
Conclusion
nd
44. Consequently, the impugned order dated 2 June 2022, passed
by the Controller, is quashed and set aside.
45. Inasmuch as this judgment covers the objections contained both
in the FER as well as in the impugned order, and there is no other
objection to the patenting of the appellant’s invention, the invention is
held entitled to grant of a patent.
Signature Not Verified
C.A.(COMM.IPD-PAT) 467/2022 Page 30 of 31
Digitally Signed By:SUNIL
SINGH NEGI
Signing Date:01.04.2023
10:28:43
Neutral Citation Number : 2023:DHC:2316
46. The Controller is, therefore, directed to proceed in accordance
with law towards grant of patent in respect of the appellant’s
application.
47. The present appeal stands allowed accordingly.
C. HARI SHANKAR, J.
MARCH 29, 2023
rb/dsn/ar
Signature Not Verified
C.A.(COMM.IPD-PAT) 467/2022 Page 31 of 31
Digitally Signed By:SUNIL
SINGH NEGI
Signing Date:01.04.2023
10:28:43