Uncommunicated objections cannot ground patent refusal; inventive step findings must be reasoned and feature-specific.

The Appellant filed a convention patent application (No. 2874/DEL/2010) on December 3, 2010, for an invention titled "Bit Holder and Base Part for Receiving a Bit Holder"

After a delay of over six years, a First Examination Report (FER) was issued in 2017, raising objections regarding a lack of inventive step under Section 2(1)(ja) and indefiniteness of claims under Section 10(4)(c)

Following a hearing in September 2019, the Assistant Controller (Respondent No. 2) issued an impugned order on November 25, 2019, refusing the application

The refusal was based on the finding that Claims 1–22 lacked an inventive step in view of prior art documents D1–D4 and that several terms in the claims were vague or undefined

The Appellant appealed, contending that the Respondent introduced new technical objections in the final order without prior notice and failed to provide a reasoned analysis for the lack of inventive step

1. Whether the Respondent violated the principles of natural justice by refusing the application based on technical objections that were not communicated in the FER or the hearing notice

2. Whether the Respondent erred in determining that the claims failed to define the scope of the invention under Section 10(4)(c) by refusing to read the claims in conjunction with the complete specification

3. Whether the finding of lack of inventive step under Section 2(1)(ja) was sustainable in the absence of a feature-wise analysis and a reasoned explanation for the combination of prior arts

The court applied Section 10(4)(c) of the Patents Act, 1970, which mandates that claims must define the scope of the invention, and Section 2(1)(ja), which defines "inventive step"

It relied on the doctrine of audi alteram partem as articulated in Assistant Commissioner, Commercial Tax Department v. Shukla and Brothers, requiring that an applicant be given a fair opportunity to meet objections

For the assessment of inventive step, the court invoked the five-step test established in F. Hoffmann-La Roche Ltd. v. Cipla Ltd.

Furthermore, the court applied the principle from Agfa NV v. Controller of Patents & Designs and Resham Priyadarshini v. Controller of Patents & Designs, asserting that claims must be interpreted in light of the complete specification and drawings

The Court found that the Respondent introduced five specific technical objections regarding "vague" terms (e.g., "transverse central plane," "extend locally") for the first time in the impugned order

This deprived the Appellant of the procedural opportunity to clarify or amend the claims, violating the principles of natural justice

Regarding the clarity of the claims, the Court rejected the Respondent’s narrow approach, holding that under Sections 10(4) and 10(5), claims must be read with the specification to resolve ambiguities

On the issue of inventive step, the Court noted that the Respondent failed to follow the prescribed five-step test and provided no "feature-wise analysis"

The Respondent merely stated that a person skilled in the art "would be able to combine" D4 with D1-D3 without explaining the motivation or rationale for such a combination to achieve the specific claimed angular arrangement

The Court set aside the order dated November 25, 2019, and remanded the matter to the Patent Office for de novo consideration

The Respondent was directed to issue a fresh hearing notice clearly demarcating all objections, including those previously raised only in the final order

The Court granted the Appellant liberty to file fresh written submissions and amended claims, directing the Patent Office to decide the application expeditiously, preferably within four months