Failure to Consider Detailed Technical Distinctions Between Prior Arts and Amended Claims Vitiates Order Refusing Patent.

The Appellant, a Japanese company, filed an Indian patent application (No. 201617036284) on October 24, 2016, titled “REDUNDANT CONTROL DEVICE AND SYSTEM SWITCHING METHOD”

The invention relates to a synchronized active and standby system for train controllers—specifically intended to be placed in the front and last cars—designed to reduce costs and switchover time by eliminating master-subordinate relationships and complex "mirror memory" configurations

Following an examination and a hearing, the Respondent issued an order on July 18, 2024, refusing the patent under Section 15 of the Patents Act, 1970

The refusal was based on the ground that the invention lacked an "inventive step" under Section 2(1)(ja) in view of prior arts D1 (a duplex operation processor) and D2 (a dual train control system)

The Appellant challenged this order, arguing the Respondent failed to consider technical differences and the specific advantages of the architecture in a train-specific context

1. Whether the claimed invention involves an "inventive step" under Section 2(1)(ja) of the Patents Act, 1970, or if it is rendered obvious by the teachings of prior arts D1 and D2

2. Whether the Respondent's order of refusal was a reasoned order that sufficiently addressed the technical distinctions and written submissions provided by the Appellant

The court applied Section 2(1)(j) defining "invention" and Section 2(1)(ja) defining "inventive step" (requiring technical advance or economic significance and non-obviousness)

It relied on Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries regarding the "competent craftsman" test for obviousness

It further applied the "could-would" approach from Avery Dennison Corporation v. Controller of Patents and Designs, which asks if a prior art would prompt a person skilled in the art to arrive at the invention

Additionally, the court cited Agriboard International LLC v. Deputy Controller of Patents and Boehringer Ingelheim Vetmedica GMBH v. Controller of Patents for the principle that the Controller must provide reasoned analysis and consider post-hearing submissions

The Court found that while the Respondent extracted the Appellant’s submissions in the impugned order, it failed to perform a meaningful technical analysis of the highlighted differences between the invention and the prior arts

Specifically, the Appellant argued that D1 used a multi-step handshake protocol and was not train-specific, whereas the subject invention utilized a dedicated "sync line" for phase alignment and physical separation in train cars, allowing for instant, reversible switchovers

The Court noted that the Respondent's conclusion—that these features were "obvious workshop results"—was reached without explaining how a person skilled in the art would be motivated to modify D1 or D2 to achieve the specific architecture of the claimed invention

The Court emphasized that simplicity does not defeat patentability and that a "hindsight" approach must be avoided

Due to the lack of reasoned consideration of the Appellant's detailed technical responses and post-hearing submissions, the order was found to be legally unsustainable

Consequently, the Court quashed the order dated July 18, 2024, and remanded the matter to the Respondent for fresh consideration. The Respondent was directed to pass a reasoned decision within four months after granting the Appellant a fresh hearing, taking into account all submissions and the law governing inventive steps. The appeal was partially allowed