Non-speaking orders failing to follow the five-step test for determining inventive step are liable to be quashed.

The Appellants filed Indian Patent Application No. 202117006438 on February 16, 2021, for an invention titled "Technologies for Rapid Detection and Quantitation of Volatile Organic Compounds (VOCs) using Breath Samples"

Following a First Examination Report (FER) issued on April 18, 2023, the Appellants submitted amended claims focusing on a breathalyzer system using a Terahertz (THz) spectrometer and a heating element for field detection of cannabinoids

On January 31, 2025, the Respondent refused the application, citing lack of inventive step under Section 2(1)(ja), non-patentability under Section 3(i) (diagnostic methods), and insufficiency of disclosure under Section 10(4) and (5) of the Patents Act, 1970

The Appellants challenged this order before the Delhi High Court, alleging the order was cryptic, unreasoned, and failed to apply established legal tests for inventive steps

1. Whether the Respondent failed to follow the mandatory five-step test for determining "inventive step" and obviousness under Section 2(1)(ja)

2. Whether the claimed invention constitutes a "diagnostic method" under Section 3(i)

3. Whether the specifications provided sufficient disclosure under Section 10(4) regarding the "molecule collector" and "heating element"

Section 2(1)(ja) regarding "inventive step" and Section 3(i) regarding non-patentable diagnostic methods of the Patents Act, 1970

The court relied on the five-step test for obviousness established in F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. (2015) and reiterated in Tapas Chatterjee v. Assistant Controller (2025), which requires identifying the person skilled in the art and the inventive concept before assessing differences from prior art

The court also applied the framework from Agriboard International LLC v. Deputy Controller (2022), requiring a three-element analysis (prior art disclosure, subject invention disclosure, and manner of obviousness) for inventive step adjudication

Regarding Section 10(4), it cited JFE Steel Corporation v. Controller of Patents (2026), holding that a rejection for insufficiency must be supported by independent reasoning

The Court observed that the Respondent failed to sequentially follow the mandatory steps for assessing obviousness, specifically failing to identify an "ordinary person skilled in the art" (Step 1) or correctly identify the "inventive concept" (Step 2)

The Court found the Respondent’s conclusion—that substituting a SERS sensor with a THz spectrometer was a "routine optimization"—to be cryptic as it failed to analyze the specific technical differences highlighted by the Appellants and lacked a "hindsight approach" safeguards

Regarding Section 10(4), the Court noted the Respondent ignored paragraphs [0027] and [0028] of the specification which detailed the "molecule collector" and "heating element"

Finally, on Section 3(i), the Court held the Respondent failed to apply any legal test to determine if the method was truly "diagnostic," noting the invention was a field-detection tool for cannabinoids (DUIM) rather than a method for identifying a disease or disorder

The Court quashed and set aside the order dated January 31, 2025. It remanded the matter to the Respondent to reconsider Indian Patent Application No. 202117006438 afresh, directing the issuance of a detailed, speaking order within four months after providing the Appellants a fresh hearing