Nippon Steel Corporation vs The Controller Of Patents

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 17.04.2026

+ C.A.(COMM.IPD-PAT) 488/2022
NIPPON STEEL CORPORATION .....Appellant
versus

THE CONTROLLER OF PATENTS .....Respondent

Advocates who appeared in this case:
For the Petitioner : Mr. Vineet Rohilla and Mr. Rohit Rangi,
Advocates.

For the Respondents : Mr. Sumit Nagpal, SPC with Mr. Tanmay Saini
and Mr. Kunal Khurana, Advocates.

CORAM:
HON’BLE MR. JUSTICE TUSHAR RAO GEDELA
J U D G M E N T
TUSHAR RAO GEDELA, J. (ORAL)
1. The present appeal has been filed under Section 117A(2) of the
Patents Act, 1970 (hereinafter referred to as ‘ the Act ’) seeking inter alia
quashing and setting aside of the Order dated 26.05.2020 issued by the
respondent refusing appellant’s patent application no.10182/DELNP/2012
(hereinafter referred to as ‘ subject application ’).
2. The appellant had filed a Japanese Application no. 2010-119482 on

25.05.2010 before the Japanese Patent Office. On 19.05.2011, the PCT
International Application no. PCT/JP2011/061510 was filed by the
appellant. On 23.11.2012, the Indian application no. 10182/DELNP/2012
was filed before the Indian Patent Office, Delhi. The request for
examination was filed by the appellant on 26.11.2012. The First
Examination Report was issued by the Patent office on 01.06.2018 inter
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alia raising the following objections:
•
Lack of novelty under Section 2(1)(j) of the Act.
• Lack of inventive step under Section 2(1)(ja) of the Act.
•
Lack of industrial applicabilility
• Lack of unity of invention

•
Lack of sufficiency of disclosure
•
Objection under Section 3 of the Act
• Scope, definitiveness and other requirements
3. Upon receipt of such objections as per the First Examination Report
vide the response dated 25.10.2018, the appellant filed its detailed
substantial reply. The Patent office issued a notice of hearing dated
03.01.2020 scheduling the date of hearing on 04.02.2020. Post hearing
written submissions in reply to the objections raised in the hearing notice
was filed by the appellant on 18.02.2020. Consequent thereto, the learned
Controller by the impugned order dated 26.05.2020 refused the acceptance
of the patent application on the ground of lack of inventive step under
Section 2 (1) (ja) of the Act. Based on the aforesaid, the present appeal was
filed.
4. Heard learned counsel for the parties.
5. At the outset, Mr. Vineet Rohilla, learned counsel for the appellant
states that the impugned order has to be quashed and set aside for the mere
reason that it violates the principles of natural justice. He makes the
aforesaid submission good by stating that other than to reproduce the prior
art Document D3, D2 and D1 extensively, the learned Controller has not
considered any of the submissions tendered by the appellant nor has he
given any reasons which are sine qua non for an order of this nature to be
upheld.
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6. With the assistance of the learned counsel for the parties, this Court
has perused the impugned decision.
7. From a perusal of the impugned order, it appears that under the
heading “ SCIENTIFIC AND TECHNICAL ANALYSIS ”, the learned
Controller appears to have extracted extensively from the cited Documents
D1, D2 and D3. So far as the analysis is concerned, the same appears to be
bereft of any application of mind or the reason which could reasonably
construed as sufficient for the purpose of the conclusion that the learned
Controller arrived at. In order to make it more clear, it is appropriate to
extract the entire impugned order hereunder:


“DECISION

The Applicant filed this application No. 10182/DELNP/2012 for the
grant of patent on 23/11/2012 for the invention titled "PROCESS FOR
PRODUCTION OF UNIDIRECTIONAL ELECTROMAGNETIC STEEL
SHEET".

In this matter, the facts that have come to my knowledge and made
available to me can be traced as follows:

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0.065%, with a C content of 0.085% or less, a N content of 0.012% or
less, a Mn content of 1% or less, and a S equivalent Seq., defined by
“Seq.=[S]+0.406×[Se]” where [S] being S content (%) and [Se] being
Se content (%), of 0.015% or less, and optionally at least one selected
from the group consisting of Cr: 0.3% or less, P: 0.5% or less, Sn: 0.3%
or less, Sb: 0.3% or less, Ni: 1% or less, Bi: 0.01% or less, B: 0.01% or
less, Ti: 0.01% or less, Te: 0.01% or less and Cu: 0.4% or less by mass,
and the balance of Fe and unavoidable impurities;
hot rolling the heated silicon steel slab so as to obtain a hot-
rolled
steel strip;
annealing the hot-rolled steel strip so as to obtain an annealed steel
strip;
cold rolling the annealed steel strip so as to obtain a cold-rolled
steel
strip;
decarburization annealing the cold-rolled steel strip so as to obtain
a
decarburization-annealed steel strip in which primary
recrystallization
is caused;
coating an annealing separating agent on the decarburization-
annealed steel strip; and
finish annealing the decarburization-annealed steel strip so as to
cause secondary recrystallization, wherein
the method further comprises performing a nitriding treatment in
which a N content of the decarburization-annealed steel strip is
increased between start of the decarburization annealing and occurrence
of the secondary recrystallization in the finish annealing,
the hot rolling the heated silicon steel slab comprises:
finish rolling with a finish temperature of 950°C or below; and
starting cooling within 2 seconds after completion of the finish
rolling, and coiling at 700°C or below,
a heating rate of the hot-rolled steel strip within the temperature
range from 800°C to 1000°C in the annealing the hot-rolled steel strip is
5°C/sec or above, and
characterized in that a cooling rate over a duration from the
completion of the finish rolling up to a start of the coiling is 13°C/sec to
14°C/sec.

Claims 2 to 5
Claims 2 to 5 are dependent on Claim 1 directly and indirectly.

SCIENTIFIC AND TECHNICAL ANALYSIS

Upon perusal of records, I found that the objection raised in Hearing
Notice dated 03/01/2020 with respect to lack of inventive step still stands,
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Document D3 discloses	effect of cooling rate (1 −30°C/s) and coiling
temperature (650−550°C) on the fine precipitate in ferrite was studied
on Gleeble simulator with a commercial Nb-V-Ti complex microalloyed
strip steel. The result show that the interphase precipitations appear at
the cooling rate of 1°C/sand 5°C/s. The volume fraction of general
precipitation under 10nm will decrease with the increasing cooling rate
at the coiling temperature of 650°C and 600°C. At 550°C, the volume
fraction of general precipitation was apparently reduced at cooling rate
of 30°C/s. This may be related to the slow kinetic of the precipitation at
lower temperature. The lower coiling temperature at the same cooling
rate after hot rolling will lead to more general precipitation. This was
contributed to the higher thermodynamic driving force of the
precipitation at lower coiling temperature.		(Abst of D3)

D3 discloses also that	precipitate in ferrite mainly focus on its
morphology, size and orientation relationship with ferrite, the qualitative
and quantitative characterization of NbC precipitation in ferrite remains
incomplete151. For instance, the effect of TMCP parameters, such as
cooling rate after hot rolling and coiling temperature, on the fine
precipitation is poorly known for the microalloyed steel, especially for
the Nb-V-Ti complex microalloyed steel.		( Page 316 of D3)

D3 also discloses that	Effect of cooling rate Fig.2 shows the effect of
cooling rate after hot rolling on the general precipitation for sample
coiling at 600°C and 550°C. The effect was almost the same for sample
coiling at 650°C and 600°C. With increasing cooling rate, the size of
precipitation decrease whiles its volume fraction increase. At the coiling
temperature of 550°C, the effect of cooling rate are still the same with
that of 650°C and 600°C except the cooling rate is 30°C/s at which the
general precipitation was hardly seen, as shown in Fig.2 (h). Actually the
microstructure of the sample coiling at 550°C with the cooling rate of
30°C/s Is show the highest dislocation density in all sample studied. It
should have much more general precipitation as it nucleated at
dislocation. So the fewer general precipitation may be contributed to the

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slow kinetic of general precipitation at 550°C together with rapid
cooling rate. At the same coiling temperature, the slower cooling rate
always mean that the precipitate could take place at higher temperature
for a longer period of time, promoting growth and coarsening of the
precipitation. Thermodynamic driving force for precipitation is related to
two closely connected factors, the degree of undercooling (Δ T) and the
supersaturation of the solute. The faster cooling rate will lead to a larger
undercooling and higher supersaturation of solute for precipitation and
thus larger driving force, so more fine particles will occur at lower
temperature. As the solubility data about microalloying element in ferrite
are very limited, the explanation of what observed will be done based on
further study in the future. In Effect of coiling temperature, effect of
coiling temperature on the fine precipitate are shown in Fig.4 for
samples coiling at 650°C ,600°C and 550°C at cooling rate of 20°C /s
after hot rolling. It is clear that the fine precipitation under 10 nm
increase in its volume fraction and decrease in its size when coiling
temperature decrease. As mentioned previously, when the coiling
temperature decrease, it will lead to larger undercooling, higher
supersaturation of solute especially at faster cooling rate That mean a
larger driving force for the precipitation, resulting in more and fine
precipitation. The decreasing coiling temperature will also produce
lower temperature transformation microstructure with high dislocation
density and the dislocation is the preferential nucleation site for the fine
precipitate. The higher driving force and more nucleation site for fine
precipitation will produce more and more fine precipitation.	(Page 317-

Document D1
grain-oriented electrical steel sheet comprising 0.021 to 0.075% by
weight of C, 2.5 to 4.5% by weight of Si, 0.010 to 0.060% by weight of
acid-soluble A1, 0.0030 to 0.0130% by weight of N, up to 0.014% by
weight of S+0.405 Se and 0.05 to 0.8% by weight of Mn, with the balance
being Fe and unavoidable impurities discloses a method of processing
the grain-oriented electrical steel above comprising the steps of heating
to a temperature	of 1300°C or lower;	hot rolling the steel slab; to obtain
a hot-rolled steel sheet (strip); annealing the hot rolled steel sheet
(strip); cold rolling the annealed steel sheet (strip); subjecting the cold
rolled steel sheet to decarburization annealing, coating with an anneal
separating agent and final finish annealing


rolling finishing temperature of 700 to 1150°C; starting cooling about 1
second after hot rolling	winding (coiling) at a
temperature of 700°C or below		water
cooling, after hot rolling to 550°C at 200 °C/second, which would be
over a duration from the completion of finish rolling to coiling.

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temperature of 1000° C. to 1150° C., and after recrystallization is
annealed for a required time at a lower temperature of 850° C. to 1100°
C. Otherwise, (b) in the hot-rolled sheet annealing process
decarburization is conducted to adjust the difference in the amount of
carbon before and after decarburization to 0.002 to 0.02 mass %.
In this way, the grain structure of the annealed steel sheet, or lamella
spacing of the grain structure of the steel sheet surface layer, is adjusted
to 20 μm or more.

When annealing as in (a), from the viewpoint of promoting the
recrystallization of the hot-rolled sheet, the first-stage annealing may be
conducted at a heating rate of 5° C./s or higher, and more preferably 10°
C./s or higher, at a high temperature of 1100° C. or above for a period of
0 s or more and at a low temperature in the order of 1000° C. and for 30
s or more. From the viewpoint of maintaining lamella structure, cooling
following the second-stage annealing may be conducted at a cooling rate
of 5° C./s or more, and more preferably 15° C./s or more.	( Para 92-94

The aforesaid portions in Yellow, Green and Blue have been
highlighted by this Court only for the purpose of demonstrating that the
contents therein are nothing other than, verbatim reproduction of what has
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been stated in the prior art Documents D1 to D3. Other than that it is clear
that in one paragraph, the learned Controller has decided the application
one way or the other. In fact, the analysis made by the Assistant Controller
in the impugned order is emphasized in bold by this Court.
“Considering scientific and technical analysis of documents
D1:US5261971 A, D2:US2009/126832 A1 and D3: SHAQing-yuna,
LIGui-yana, QIAOLi-feng, YANPing-yuan "Effect of Cooling Rate
and Coiling Temperature on Precipitate in Ferrite of a Nb-V-Ti
Microalloyed Strip Steel" (Journal of Iron and Steel Research,
International Volume 14, Issue 5, Supplement 1, September 2007,
Pages 316-319) in combination, present application for patent lacks
inventive step still stands as the applicant fails to persuade the same.
Features of current amended claims are not inventive over cited
documents as above and are not allowable u/s 2(1) (ja) of the Act.

Hence present alleged invention cannot be considered as inventive as it
has not made any significant technical advancement in the field over
the cited documents as above.

Response/ arguments made under other para and other submissions of
written submission have been fully considered accordingly.

Conclusion:
Based on above, I am of opinion that the present amended claims
are not allowed. Therefore, I hereby refuse the instant application
10182/DELNP/2012 u/s 15 of the Patents Act, 1970 (as amended).”
[Emphasis supplied]
8. It is apparent that there is no reasoning whatsoever by any standard.
Though the impugned order states that the response/arguments and other
submissions have been fully considered, there is no reference to it at all.
The order cannot be sustained for the aforesaid reasons.
9. It is important to note that this court in C.A. (COMM.IPD-PAT)
4/2022 titled “A griboard International LLC. vs. Deputy Controller of
Patents and Designs” decided on 31.03.2022 held that while raising the
objection of lack of inventive step under Section 2(1)(ja) of the Act, the
controller has to discuss the invention disclosed in the cited prior art as well
as the claimed invention in the application under consideration. Thereafter
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the controller has to discuss the manner in which invention in question
would be obvious to a person skilled in the art. The relevant paragraphs of
the decision are reproduced hereunder:

“24. In the opinion of this Court, while rejecting an invention for lack of
inventive step, the Controller has to consider three elements-

• the invention disclosed in the prior art, • the invention disclosed in the
application under consideration, and • the manner in which subject
invention would be obvious to a person skilled in the art.

25. Without a discussion on these three elements, arriving at a bare
conclusion that the subject invention is lacking inventive step would not
be permissible, unless it is a case where the same is absolutely clear.
Section 2(1)(ja) of the Act defines `inventive step' as under:

(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.

26. Thus, the Controller has to analyse as to what is the existing
knowledge and how the person skilled in the art would move from the
existing knowledge to the subject invention, captured in the application
under consideration. Without such an analysis, the rejection of the patent
application under Section 2(1)(ja) of the Act would be contrary to the
provision itself. The remaining prior arts which are cited by ld. Counsel
having not been considered in the impugned order, the Court does not
wish to render any opinion in this regard.”

10. This judgment was recently followed in (COMM.IPD-PAT) 86/2022
titled “ Crystal Crop Protection Limited vs Sudpita Dey Assistant
Controller of Patents and Designs & Ors” decided on 08.04.2026.
11. The learned Controller, under the impugned order has not provided
any such reasoning and the order has merely reproduced the paragraphs
from the cited prior arts D1 to D3. It is apparent that the Assistant
Controller/Controller are quasi judicial authorities from whom it is
expected that the orders shall contain reasons for either acceptance or
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refusal. Any order which has no reasoning cannot become the bedrock of a
decision of this nature. In that view of the matter, this Court is of the
considered view that the impugned order is unsustainable in law and is
quashed and set aside.
12. Consequently, the appeal is allowed to that extent and the matter is

remitted back to the Controller for a de novo consideration of the entire
subject application.
13. In the interest of justice, it is deemed appropriate that patent
application no.10182/DELNP/2012 be placed before another Assistant
Controller/Controller for a fresh consideration. The decision shall be taken
accordingly.
14. It is further directed that the Assistant Controller/ Controller shall
ensure that the subject patent application is disposed of within a period not
exceeding four months from the date of receipt of this order. The appellant
shall also be afforded hearing and other further hearings, as required, by the
learned Controller.
15. It is clarified that the merits of the case have not been examined and
the learned Controller shall decide the subject application in accordance
with law without being influenced by any observations made by this court
in this order.
16. The appeal is disposed of without any order as to costs.

TUSHAR RAO GEDELA, J
APRIL 17, 2026/ anj

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