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Judgment
D.P.S. Parmar, Technical Member
1 . This is a transferred appeal application received from the Delhi High Court in relation to an appeal against the order of the Controller dated 3rd
May, 2006 in respect of specification No. 191793 filed under patent application number 861/DEL/2000 on 25th September, 2000 which was opposed
under Section 25 existed before the Patent (amendment) Act, 2005 by M/s. Newage Laminators Pvt. Ltd.
Brief facts of the case
M/s. Shriram Institute of Industrial Research, New Delhi filed their application No. 861/Del/2000 dated 25th September 2000 for the grant of patent
for their invention entitled ""A RODENT REPELLANT COMPOSITION AND A PROCESS FOR PREPARATION THEREOF"". The M/s.
Shriram Institute of Industrial Research assigne their rights to M/s. SPL's Siddhartha Ltd. New Delhi vide assignment dated 1st June 2001 and filed a
request under Section 20 for change in the applicant for patent on 4th October 2001. Accordingly, the said application proceeded in the name of M/s.
SPL's Sidhartha Ltd. New Delhi. The application was examined by Patent office and First Examination Report containing the statement of objections
was forwarded to the applicant on 8th May, 2002. The complete specification was accepted after the applicant complied with the requirements and
acceptance of the application was notified in the Gazette of India Part-III Section 2 on 3.1.2004.
3 . M/s. Newage Laminators Pvt. Ltd. (the Appellant) opposed the grant of patent under Section 25 existed before the Patent (amendment) Act,
2005. The Assistant Controller of Patents & Designs heard the matter on 16th November, 2005 and dismissed the opposition while directing the
applicant to make the following amendments in the complete specification:
Amendments to be carried out by the applicant
1 . The title of the complete specification should read as ""A PROCESS FOR PREPARATION OF RODENT REPELLENT COMPOSITION"" in
place of ""A RODENT REPELLENT COMPOSITION AND A PROCESS FOR THE PREPARATION THEREOF"".
On page 2 of the specification paragraph 2 and 3, namely; ""However, the main object of this invention is to propose the rodent repellent composition
to stop the entry of the rodents in to the godowns and storages. Another objects of the invention is to propose rodent repellent composition"" to be
deleted.
Aggrieved by the decision of the Controller, M/s. Newage Laminators Pvt. Ltd filed an appeal FAO 214/06 before the Hon'ble High Court, Delhi
on 08.-08.2006 (Delay of 3 days condoned vide High Court Order dated 31.08.2006). On 31.08.2006 Controller (Respondent 2) also assured Hon'ble
High Court, Delhi that patent will not be granted in favor of respondent 1. In order dated 05.09.2006 Hon'ble High Court directed for the maintenance
of Status Quo as on date regarding grant of the Patent and name of Respondent 2 was deleted from the array of parties.
5 . The respondent No. 1 filed a short reply before the Hon'ble Delhi High Court in October, 2006. The appellant filed a rejoinder before the Hon'ble
Delhi High Court on 12.01.2007. Hon'ble High Court recorded completion of pleadings on 15.01.2007 and listed the case for hearing on 24.05.2007.
With the establishment of Intellectual Property Appellate Board (IPAB), this appeal was transferred to IPAB by the Hon'ble Delhi High Court order
dated 24.05.2007.
6 . This transferred appeal matter came before the Board on 20.10.2011. Ms. Avni Singh, Counsel appeared for the appellant and Mr.M.K.
Chakrabarti, Counsel appeared for the respondent.
Preliminary objections by appellant
7 . The respondent No. 1 filed M.P. No. 27/2011 before the Board on 21.06.2011 seeking admission of the counter statement of the respondent. The
appellant in reply to the M.P. No. 27/2011 submitted that respondent has already filed a reply which was brought on record in October, 2006 and a
rejoinder to the same was filed by the appellant on 12.01.2007 and the matter was put up for final hearing. The counsel for appellant contended that
for the next three years no mention was made by the respondent of their intention to file another reply. He argued there has been inordinate delay on
the part of the respondent to seek permission to file a counter statement. According to the counsel for appellant it is well settled principle of law as laid
down by the Hon'ble Supreme Court in Roop Diamonds and Ors. v Union of India and Ors [AIR 1989 SC 674 and S.S. Mohapatra and Ors State of
Orissa and Ors [AIR 2010 SC 706] -
that fence-sitters cannot be allowed to get the relief sought for, i.e, no party can claim relief as a matter of right when there has been delay on their
part.
In the present case, the Hon'ble Court has already maintained the status quo, that is, the patent has not been granted so far. In view of fair hearing
we must consider all the facts and evidences before taking decision in the matter. In view of this we are of the view that the respondent's counter
statement is allowed to be admitted hence M.P. No. 27/2011 filled on 21.06.2011 by the respondent is allowed.
Amendment of the specification
The Counsel for the appellants asserted that the alleged invention as described in the Title, Abstract and Complete specification was for a process
and a composition, the title reading as rodent repellant composition and the process for preparation thereof. According to Section 10 of the Act, the
title fell short of sufficiently indicating the subject matter.
The Counsel for the appellants submitted that according to Section 43 of the Act, the patent cannot be granted on an application which is found to
contravene the provisions of the said Act. In this case, the Counsel contended that there was a clear contravention of Section 10 of the said Act as
title contained in the specification did not sufficiently indicate the subject matter to which the alleged invention relates. The Counsel for the appellants
submitted that the amendment proposed by the applicant/respondent ought to have been rejected by the Controller as the amendments were not made
as provided under Chapter X of the Act.
11 . The counsel for applicant/respondent submitted that the direction to amend specification by Controller is for removal of any ambiguity in
description and it is not for insufficiency of description. It has not been proposed by the applicant/respondent. However the applicant/respondent
agreed to amend the specification as directed by the Controller. Such amendment is permissible under section 57(6) of the Act.
12 . If we see the direction of the Controller we find that it has been for the correction of title and deletion of para 2 and 3 of the description to
remove any ambiguity in the description. The applicant/respondent has agreed to carry out the amendment as directed by the Controller to remove the
errors/deficiencies on the face of records. We do not find any reason to differ from the order of the Controller to seek these amendments and we
affirm the same.
Preliminary objections by applicant/ respondent
Enlargement of the grounds of opposition
13 . The counsel for applicant/ respondent submitted that grounds of opposition initially taken were ""The Rodent repellent composition and a process
............was existing, known and used since long before and is not an invention as wrongfully claimed by the applicant."" (As given in Form7). But in
the written statement the opponent/appellant has enlarged the grounds namely obviousness and insufficiency of description without filing any request
to the Controller. As per impugned order the Controller has not considered these grounds. However, Controller has considered the evidence related
thereto submitted by the opponent/appellant. The learned Counsel for opponent/appellant submitted that the Controller has erroneously held that ""since
the opponent had not submitted any petition or request for consideration before the Controller for amending either the notice of opposition or the full
written statement, the additional grounds relied upon by the opponent in the full written statement should not be considered"". The opponent has been
denied an effective hearing and consideration of two out of the three grounds of opposition pressed by the Opponent at the time of hearing of its
opposition, contrary to the rules of natural justice, fair play and the provisions of the said Act and the said Rules.
The counsel for Appellant submitted that out of the four grounds of opposition taken initially they dropped the ground namely ""that the invention so
far claimed in the application under opposition was publically known and publically used in India before the priority date of the said application."" and
pressed for only three grounds of opposition at the time hearing before the Controller namely :
(a) that the invention so far as claimed in the application under opposition is obvious and clearly does not involve any inventive step, having regard to
the matter published as mentioned in clause (b) of sub-section (1) of section 25 of the said Act and having regard to what was used in India before the
priority date of the application under opposition;
(b) that the subject of the claim (s) in the said application is not an invention within the meaning of the said Act; and
(c) that the complete specification does not sufficiently and clearly describe the invention and the method by which it is to be performed.
15 . The learned Counsel for the appellant further submitted that the ground of wrongful obtaining was not raised by the appellant before the
Controller at any stage of the proceedings and to the extent Controller is not correct by stating that opponent /appellant relied on the ground that
Invention wrongly claimed (obtained) by the applicant"" and dismissing this ground for want of evidence. We shall see the grounds of opposition stated
in Form 7 and the observations of the Controller which are reproduced below :
The Rodent repellent composition and a process for preparation thereof was existing, known and used since long before and is not an invention as
wrongfully claimed by the applicant.
Since the opponents M/S New Age Laminators Pvt Ltd. appears to be not familiar with the opposition proceeding under the patent law, it can be
asserted from the Form 7 that they want to oppose the grant of patent on the ground namely (a) prior public knowledge and prior public use ( Section
25(d), (b) not an invention (section 25(f) and (c ) wrongfully claimed (obtained ).
1 6 . We agree with the Controller observation that the ground stated by the opponents were not clear. But the Controller's observation that the
wrongfully claimed (obtained)"" is also a ground stated by opponent/appellant based on his assumption is not correct. Therefore we disagree with the
finding of the Controller relating thereto. The Controller should not have unnecessarily ventured on assumption to decide on a ground of opposition not
relied on by the opponent.
17 . So far as the ground of 'obviousness' is concerned the Controller has rightly rejected as it was not raised at the time of filing the Form 7. The
Controller did consider the evidence submitted by the opponent/appellant in academic interest and gave his finding ""after going .................................
they are no able to show ................ingenuity. and we also do not find any reason to differ from his finding.
Grounds of oppositions
Prior Public use in India (Section 25(1) (d))
18 . The learned Counsel for the appellant submitted that the Controller failed to appreciate that the properties, processing parameters and industrial
applications of Low Density Polyethylene (LDPE) and Ethylene Vinyl Acetate (EVA), both individually and as a blend/mixture, were published,
publicly known and publicly used in India much before the priority date of the Patent Application. Moreover, the blending of at least one rodent
repellant with LDPE was also published, publicly known and publicly used in India. Nowhere in its reply statement did Respondent No. 1 specifically
deny this.
The Counsel for the appellant submitted that low density polyethylene (LDPE) is well known as evident from the technical data guide dated June
1987 of Indian Petrochemicals Corporation Ltd. The Technical Data Guide published by IPCL also contains a processing guide which gives
suggestions for the processing parameters of different grades of LDPE. In processing LDPE, the recommended 'Barrel Zone' temperatures
depending on the grade and application of the LDPE, as per the said data guide, vary from 140-300§C. It is therefore clear that the processing
parameters, including the processing temperatures for LDPE were publicly known and used in India well before the priority date of the said
application. The applicant's description therefore of heating LDPE to 110-160§C ""in order to melt the low density polyethylene"" is merely a
statement of what is already publicly known and used in India.
The Counsel for the appellant submitted that Ethylene Vinyl Acetate (EVA), was earlier manufactured and used for industrial application in India,
before the priority date of the said application. He relied on the Polyolefins Industries Limited (PIL) publication on the properties and applications of
Pilene EVA Copolymers, published in June 1987. PIL offered EVA in India under the brand name ""Pilene EVA Copolymers"" contains the following
description:
The copolymers of ethylene and vinyl acetate (EVA) are characterized by their versatility. Copolymers containing minor proportions of vinyl acetate
resemble low density polythene, but exhibit the physical properties and processing behavior of a tough thermoplastic. Those with higher concentrations
of vinyle acetate (20-40% by weight) are less crystalline. Being compatible with a wide range of fillers, waxes, resins and other thermoplastics, they
find widespread use in hot melt and other blend applications. Copolymers are also ideal for packaging and storing foodstuffs, since they are devoid of
plasticizers, while the only additives they do contain are a low concentration of no-toxic processing antioxidants.
The Counsel for the appellant contended that EVA has different applications and characteristics depending on its vinyl acetate (VA) content. With
a higher VA content, EVA is compatible with a wide range of fillers, waxes, resins and other thermoplastics and is widely used in hot melt and other
blend applications. EVA is also stated to be ideal for packaging and storing foodstuffs. The aforesaid publication of the properties and applications of
Pilene EVA Copolymers further states that:
VA content in polyethylene chain causes two major factors, the reduction of crystalline and higher polarity indicated by the level of loss in dielectric
properties when compared to PE.
When compared to Low Density Polyethylene, the following properties increase with an increase in VA content:
(a) density
(b) clarity
(c) permeability
(d) solubility
(e) environmental stress crack resistance
(f) toughness especially at low temperatures
(g) compatibility with other polymers and resins
(h) acceptance of fillers
(i) coefficient of friction
On the other hand, the following properties decrease with an increase in VA content:
(j) rigidity
(k) vicat softening point
(l) surface hardness
The Counsel for the appellant further submitted that above extracted portion of PIL's publication on the properties and application of Pilene EVA
Copolymers and the blending of EVA with LDPE was part of public knowledge and public use in India before the priority date of the said application.
The Counsel for the appellant submitted that in another of PIL's publications of September 1987, disclose the grade selection chart for Pilene EVA
Copolymers, it is further stated that:
Performance of particular thermoplastic polymers such as thermoplastic rubber, low density polyethylene, polypropylene, etc. can be improved by
mixing them with EVA. Thus, for instance, thermoplastic rubber process ability and ozone resistance are improved as also low temperature flexibility
and environmental stress-crack resistance of low density polyethylene.
In the grade selection chart for Pilene EVA Copolymers, it is also stated in the section entitled ""Blends of Pilene EVA Copolymers with waxes for
water-proof and heat-salable coatings"" that:
Blends of Pilene EVA with waxes having the following advantages:
(m) Excellent barrier properties against humidity and gases
(n) Good heat salability
(o) Heat sealing at lower temperatures
(p) High gloss
(q) Absence of migrations
(r) Equipment needed is simple and of low cost.
It follows from the above extract that the application of EVA for water/moisture proofing was also part of public knowledge and use in India before
the priority date of the said application.
The Counsel for the appellant further submitted that the publication referred to above on the properties and applications of Pilene EVA
Copolymers describes the thermal stability of EVA in the following terms:
The decomposition of EVA copolymers occurs slowly at elevated temperatures, giving off small quantities of acetic acid and other degradation
products. An upper limit of 230øC is recommended during processing, since this decomposition becomes noticeable only at temperatures above
200øC. As the processing temperatures of copolymers are normally below 200 C, this does not impose a severe limitation.
The 'Elvax(r) Industrial Extrusion Guide' published by E.I. du Pont de Nemours and Company, Inc. further describes the melt temperature for
industrial extrusions of ElvaxR EVA resins, which are copolymers of ethylene and vinyl acetate. It is stated in the said Guide that ""Melt temperature
for industrial extrusions of Elvax(r) resins is, generally, in the overall range of 95-205øC (203-401øF). The melt temperature depends upon the
melt index of the resin, the % vinyl acetate and the part configuration.
According to the counsel for appellant it is thus evident from the foregoing that the processing and industrial applications of LDPE and EVA, as
described in the said application under challenge, were publicly known and used in India well before the priority date of the said application. In other
words, the use of LDPE in laminates laid in godowns and food storages and other packages is an application of LDPE which is publicly known in
India and has been applied since well before the priority date of the said application. Additionally, the blending of EVA with LDPE in order to enhance
certain properties of LDPE and improve its application in laminates and water/moisture proofing was also publicly known in India and applied well
before the priority date of the said application. Finally, the process of blending LDPE with EVA, including the processing parameters such as
temperature, was publicly known in India and used well before the priority date of the said application.
2 6 . The Counsel for the appellant further submitted that in addition to blending/mixing EVA with LDPE, the process for the preparation of a rodent
repellent composition as described in the present patent application, refers to the further step of adding 0.25-10% rodent repellent material by weight
of density polyethylene and further mixing the mixture for a period of 5-10 minutes at the constant temperature. The mixture so obtained is then said to
be shredded at room temperature so as to obtain the composition in the form of flakes. The Counsel submitted that the process of mixing and
thereafter shredding, as described in the said application, is publicly known and has been used in India since well before the priority date of the said
application.
The Counsel for the appellant contended that the process of blending LDPE with EVA, adding a rodent repellant, and shredding the composition at
room temperature, as described in the said application, therefore presents nothing more than what was already publicly known and used in India well
before the priority date of the said application. Expert evidence submitted by Appellant
The appellant relied on expert evidence from Shri Vijay Kumar Gupta, Director of M/s. Calco Polychem Pvt. Ltd., Badli Industrial Area, Delhi
who stated that M/s. Calco Polychem Pvt. Ltd. are engaged in the manufacture of various polymer compounds/additives/Master Batches for LLDPE,
HDPE, LDPE etc. for use in the manufacture of LDPE, HDPE Films, Lamination Films, Blow Molding, Injection Molding, Extension Lamination etc.
in the country for the last several years.
The polymer Compounds/Additives/Master Batches are manufactured by mixing different polymers, color pigments, chemicals which include LDPE,
LLDPE, EVA etc. as per the end use in industrial application.
That the mixing of different polymers i.e. LDPE, EVA etc. and chemicals/colors has been commonly used in our manufacturing process for many
years. Additionally, shredding of polymer compounds/ additives/master batches at room temperature forms part of this manufacturing process and is a
common practice in the country and the world over.
The blending/mixing of polymers, including LDPE and EVA, and shredding of polymer compounds/additives/master batches at room temperature are
processes publicly known and used in India as well as internationally, dating back many years.
The copies of certain bills were attached herewith for ready reference in support of the above statement that M/s Calco Polychem Pvt. Ltd. uses both
LDPE and EVA in its manufacturing processes.
The Counsel for the appellant contended that the rodent repellent used in the preparation of impugned composition is also shown as evidence from
the brochures of the C-Tech Corporation. The Counsel for the appellant contended that when all the components of the composition are known their
combination is merely a mixture. Therefore the Controller has erred in dismissing the opposition in the grant of the patent.
Respondent's Argument
The Counsel for the respondent Mr.M.K. Chakrabarti stated in the reply that the invention claim is for a process wherein sequence of steps are
involved while maintaining the temperature and repeating the process in preparation of the composition of the present invention. The counter for the
respondent was that the component of the composition has a specific percentage. For example, EVA 5-50% by weight of low density polyethylene
rodent repellent amount is 0.25-10% by weight of low density polyethylene and the temperature stands 110-160 degrees while mixing for 5-10
minutes. The said process results in enhancing of the rodent repellant activity. The amount of the rodent repellent use is also very less which is cost
effective. Example 1 and 2 describes the best method relating to the process of invention.
Expert evidence submitted by respondent
31 . The respondent relied on the expert evidence by Dr. Rakesh Kumar Khandal, Director of Shriram Institute for Industrial Research whose
credentials and observations are as follows
1 . He was awarded the degree of M.Sc. (Physical Chemistry) from the University of Delhi in 1979 and was awarded the degree of Ph.D. (Applied
Chemistry) from the University of Indian School of Mines, in 1984. He joined India Glycols Ltd., Kashipur, U.P. and worked as General Manager
(R&D) between 1993 and 2001. Subsequently, He joined Shriram Institute for Industrial Research as Director in the year 2001.
According to him the Indian Patent Specification No. 191793 as accepted by the Controller of Patents with claims is relating to a process for the
preparation of Rodent Repellent.
4 . He stated that he has have studied in detail the Reply Statement of his Institute with all the statements and averments made therein. Instead of
being repetitive, he consider that the said Reply Statement as a part and parcel of his present Affidavit.
According to him it is correct that the title of the Specification No. 191793 (hereafter referred to as said specification) should read ""A process for
the preparation of a rodent repellent composition"" and not ""A rodent repellent composition and a process for the preparation thereof"" as he noted that
the said specification contains only three claims and all of these relate to a single process for the preparation of rodent repellent composition using low
density polyethylene (LDP) and ethylene vinyl acetate (EVA) in particular sequential steps under predetermined reaction conditions and/or
parameters. Therefore, it is not true that this invention relates to only the use of LDP and/or EVA.
6 . He submitted that he agree with the analysis of the present invention as given in paragraph 6 of said Reply Statement of the Institute and also
agree that the invention resides in a comprehensive process which is a combination of at least seven steps and not in isolated step or steps. He would
also say with confidence that unless the process steps are carried out in a manner as defined in claim I and in a sequence stated therein, one would
not be able to produce rodent repellent composition as described and claimed in said specification.
7 . He submitted that he has scrutinized the annexures of the Opponent's Written Statement namely -
a) Technical Data Guide published by IPCL - annexure RI
b) PILENE-EVA Ethylene Vinyl Acetate copolymers - annexure 2
c) Affidavit of Vijay Gupta - Annexure 3
8 . He submitted that he has ""individually and collectively studied all the above three annexures cited by the Opponent in support of the allegations
made. According to him R1 only discusses about LDPE and copolymer which are meant for packaging and storing of foodstuffs (page 25) and not for
rodents repellent composition of my Institute. It may be noted from page 30 of Annexure R1 that the copolymers of IVA are used in co extrusion
films, extrusion coating having excellent heat salability properties and also in shoe making industry. Pages 31 and 32 of this Exhibit further refers to
other applications namely in making tyres for baby carriage, toys, life-jackets, boat fenders and fishing floats. Therefore, he honestly believes that
Annexure R1 is not a relevant citation.
Similarly, R2 i.e., Elvax (r) Industrial Extrusion Guide describes (on page 94) a resume of use in industry due to its following properties, namely
(a) outstanding toughness at low temperature;
(b) felexibility;
(c) environmental stress crack resistance;
(d) clarity indicating weather resistant formulation;
(e) lightweight; and
(f) favorable valve-in-use and economics
This annexure further teaches Dry Blending, Regrind Ultraviolet/wather/sunlight/resistant. Colors and others but this is totally irrelevant in anticipating
the invention in quest on.
Similarly, other pages do not teach and/or described the invention of my Institute since the EVA copolymer as referred to therein has it application
namely in films, extrusion coating, micro cellulose products and packages for foodstuff (page 37).
It is significant to note that the Opponent has been unsuccessfully trying to co-relate the present invention with the individual ingredients, namely LDP
and EVA and not the process for preparing the Rodent Repellent Composition using these two components in a particular manner, sequence and
under reaction conditions to make something new.
He observed that in ""the rest of the Written Statement, the allegations made therein are all related to the above three applications namely R1, R2 and
R3 which are all irrelevant for the reasons explained hereinabove. He further stated that he does not find any evidence even in the Affidavit of Mr.
Vijay Kumar Gupta where he has never affirms that LDP and EVA were used in making rodent repellent composition. The Evidence/Affidavit of the
Opponent clearly states that the active ingredient and/or the individual steps may be known but there is no citation/document or even a statement by
the Deponent that the entire process of claim I was known prior to the date of Patent Application No. 191793. The Exhibits at page 63A and 63B
further do not add anything new to what has been stated in the Opponent's Written Statement.
When we see R1 we also find no reason to differ from the view of the respondent Expert Dr. Rakesh Kumar Khandal that it is not relevant
citation. When we see R2 we also find no reason to differ from the expert view that it is not relevant citation. If we look at the affidavit filed by Shri
Vijay Kumar Gupta, Director of M/s Calco Polychem Pvt. Ltd., it state that M/s Calco Polychem Pvt. Ltd is an Indian company engaged in
manufacturing various polymer compounds/additives/master batches for LLDPE, HDPE, LDPE etc. (supporting the aforesaid contention) for use in
the manufacture of LDPE, HDPE films, blow molding, injection molding, extension lamination etc. for the last several years. He did not make any
observation relating to process for preparation of rodent repellent composition of the invention in question. Therefore we do not find this evidence
could provide any help in the present matter. The Controller also rightly in his order stated that -
I agree with the contention of the opponents that processing parameters of different grades of LDPE and EVA including their blending, mixing and
shredding are well known and used in India as well as internationally.
But there is no piece of evidence submitted by the opponent which shows the prior public use of the process for the preparation of rodent repellent
composition as claimed by the applicant. The applicants are not even claiming the rodent repellent composition itself i.e. the product. Therefore,
opponents have failed to establish clearly the ground of prior public use of said process.
Invention is Obvious and Lack inventive step
The counsel for appellant submitted that the Controller failed to appreciate that ""taking low density polyethylene in a mixer at a temperature of
110-160øC, adding ethylene vinyl acetate in amount of 5-50% by weight of low density polyethylene, mixing homogenously"", as described in Claim
'1' of the Complete Specification, clearly did not involve any inventive step, since the properties, processing parameters and industrial applications of
LDPE and EVA, both individually and as a blend/mixture, were published, publicly known and publicly used in India much before the priority date of
the patent application of the respondent.
34 . The counsel for appellant submitted that the mere addition of known rodent repellent to a blend of LDPE and EVA, by a known and used process
of mixing, in order to obtain a composition which is alleged to be rodent repellent, but for which there is no BIS Code or other recognized
test/certification available to confirm that the composition is in fact rodent repellent, does not amount to an inventive step in terms of the said Act.
The counsel for appellant submitted that the invention so far as claimed in the application under opposition is obvious and clearly does not involve
any inventive step, having regard to the matter published as mentioned in clause (b) of sub-section
(1) of section 25 of the said Act and having regard to what was used in India before the priority date of the application under opposition.
Not an invention within the meaning of the Act Section 25 (1)(f)
The counsel for appellant submitted that the invention so far as claimed in the said application is obvious and clearly does not involve any inventive
step, having regard to the matter published as mentioned in clause (b) of sub-section (1) of section 25 of the Act and having regard to what was used
in India before the priority date of the said applications.
3 7 . The counsel for appellant contended that there are numerous publications available in India and internationally, which exhaustively discuss the
processing parameters and industrial applications of LDPE and EVA. A few examples of such publications (Annexures R-1 and R-2 (colly)),
discussed above in detail, describe the properties and industrial applications of different grades of LDPE and EVA, the processing parameters
including processing/melt temperatures of the two polymers, as well as the effects of blending/mixing LDPE with EVA. Additionally, the affidavit
from a Director of M/s Calco Polychem Pvt. Ltd. (Annexure R-3) confirms the use of LDPE and EVA in manufacturing processes in India.
The counsel for appellant submitted that the Technical Data Guide published by IPCL (Annexure R-1), gives suggestions for the processing
parameters of different grades of LDPE as well as their applications. As per the said Guide, in processing LDPE, the recommended 'Barrel Zone'
temperatures depending on the grade and application of the LDPE, vary from 140-300øC. However, the present application under challenge fails
to specify the grade of LDPE to be used in the alleged invention. It merely states that LDPE is taken in a mixer at a temperature of 110-160øC.
It is submitted that the aforesaid range of temperature for processing LDPE is publicly known, used and published, and does not qualify as an
inventive step in terms of the Act.
The counsel for appellant submitted further that the 'Complete Specification' of the said application states that the rodent repellant composition is
used for stopping rodents from damaging the laminates laid in godowns and food storages, as well as, for water/moisture proofing in godowns, food
storages and other packages. As stated above, each grade of LDPE enumerated in the said date guide corresponds with a description of its
application, including, ""medium slip grade for liquid packaging"", ""high slip grade for general purpose film, shopping bags"", ""lamination film"" and
extrusion coating, lamination film"". The affidavit from a Director of M/s. Calco Polychem Pvt. Ltd. (Annexure R-3) confirms the use of LDPE in
India in the manufacture of lamination films. Consequently, the application of LDPE in laminates and water/moisture proofing does not involve an
inventive step in terms of the Act.
The counsel for appellant submitted further that the process for the preparation of a rodent repellent composition, as described in the said
application, further involves blending/mixing EVA with LDPE. As discussed above in detail, two of PIL's publications, viz., the 'Properties and
Applications' of Pilene EVA Copolymers and the 'Grade Selection Chart' for Pilene EVA Copolymers (Annexure R-2 (colly)), describe the properties
and applications of EVA, including water/moisture proofing, as well as the properties and applications of LDPE blended with EVA. Further, the
'ElvaxR Industrial Extrusion Guide' (Annexure R-2) suggests a melt temperature for EVA in the overall range of 95-250øC. The affidavit from a
Director of M/s. Calco Polychem Pvt Ltd. (Annexure R-3) confirms the use of LDPE and EVA in manufacturing processes in India. As such, the
blending/mixing of LDPE with EVA at a temperature in the range of 110-160øC, as per the said application, does not represent an inventive step
in terms of the Act.
4 1 . The counsel for appellant submitted that the process described in the said application involves the addition of a rodent repellant to the blend of
LDPE and EVA. The rodent repellents named in the said application are cycloheximide, tetraethyl theorem disulphide, methyl anthranilate and zinc
dimethyl dithiocarbamate. It is submitted that the aforesaid rodent repellents are publicly known and have been used in India as rodent repellents since
well before the priority date of the said application. It is significant to note further that no BIS Code is available to test whether a particular
composition/product is rodent repellent. As such, the mere addition of a known rodent repellent to a blend of LDPE and EVA, by a known and used
process of mixing, in order to obtain a composition which is alleged to be a rodent repellent composition, but for which there is no BIS Code available
to confirm that the composition in fact rodent repellent, does not amount to an inventive step in terms of the Act.
42 . The counsel for appellant submitted that finally, the process of shredding at room temperature, applied to the composition obtained by
blending/mixing LDPE with EVA and a rodent repellent, as per the said application, is a process well known and widely used in India since well
before the priority date of the said application. The affidavit from a Director of M/s. Calco Polychem Pvt. Ltd. (Annexure R-3) lends support to the
aforesaid contention. Consequently, the description in the said application of shredding the mixture at room temperature so as to obtain the so-called
rodent repellent compound in the form of flakes does not involve an inventive step in terms of the Act. It follows therefore that the invention so far as
claimed in the said application is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause
(b) of sub-section (1) of section 25 of the Act and having regard to what was used in India before the priority date of the said application.
43 . The learned Counsel for the respondents submitted that the process for the preparation of a Rodent Repellent Composition comprises of the
following steps:
(a) taking low density polyethylene in a mixture at a temperature of 110-160ø C;
(b) adding ethylene venyl acetate in amount of 5-50% by weight of low density polyethylene;
(c) mixing homogenously (said two components)
(d) adding a Rodent Repellent in amount of 0.25 to 10% by weight of low density polyethylene into said mixture;
(e) subjecting the mixture thus obtained to the further step of mixing for a period of 5-10 minutes;
(f) maintaining the temperature between 110-160øC; and
(g) shredding the mixture at room temperature to obtain composition of the present invention.
Claim 2 defines the examples of Rodent Repellent referred to in Claim 1 which are
(a) cycloheximide;
(b) tetraethyl theorem disulphide;
(c) methyl anthranilate;
(d) zinc dimethyl dithiocarbamate.
Claim 3 relates of an omnibus claim of the invention, i.e., process for preparing the Rodent Repellent composition as described in said
Specification.
The learned Counsel for the respondents submitted that the process of preparing the Rodent Repellent composition using low density polyethylene
and ethylene venyl Aacetate in particular amounts and in the manner as claimed in Claim 1 or any other claim was neither known or used including
prior to the date of said application, i.e. 25th September 2000.
The learned Counsel for the respondents submitted that it is well settled in the Patent Law that an invention is considered known and/or anticipated
only if there is identical or equivalent description published earlier than the application in question. There is no evidence to show that the applicants
invention was either publicly known in India or publicly used in India including by importation except for the fact that appellant has cited a publication
called Technical Data Guide of Indian Petrochemical Corporation Ltd (IPCL). By their own admission appellant has stated in this paragraph that
Indothene grades are manufactured at IPCL's Baroda Complex ... adopting process know-how of ATO Fina .... adopting know-how of M/s Einchem,
France. It is significant to note that such know-how was disclosed by appellant in support of the prior knowledge and/or use in India. The cited
document of IPCL only refers to manufacturing and marketing of low density polyethylene (LDPE). It, however, does not teach any process for
preparing a Rodent Repellent composition and there is no indication whatsoever to the various process steps, process parameters and the combination
of steps in the particular sequence as defined in Claim 1 of said Specification. Further there is no indication of date in Annexure R-2 submitted by the
appellant and the copolymers referred to in this Exhibit are ideal for packaging and storing food stuffs, since they are devoid for plasticizers, while the
only additives they do contain are a low concentration of non toxic processing antioxidants.
The learned Counsel for the respondents submitted that since appellant refers to the low density polyolefin and the PILENE - EVA copolymer are
having water-proof and heat-sealable coating properties, therefore, by their own admission appellant proves that the cited documents does not refer to
any process for the preparation of Rodent Repellent composition of the applicant's invention. It is admitted that the blends of PILENE-EVA with
waxes have excellent barrier properties against humidity and gases, good heat salability, heat sealing at lower temperatures, high gloss and others as
referred to on page 10 of the written statement. Appellant has admitted that Elvax Industrial Extrusion Guide published by E I Du Pont De Nemours
& Co. refers only copolymers of two components in the publication and admits that it does not teach the applicant's invention, namely a process for
preparation of a Rodent Repellent composition.
4 9 . The learned Counsel for the respondent submitted it is not denied by the respondent that either the low density polyethylene or ethylene vinyl
acetate was not known prior to the date of this applicant but their invention relates to none of these component parts, namely LDPE or EVA but a
Rodent Repellent composition using these two component parts in particular amounts, exercising a sequence of steps with predetermined reaction
parameters. It is therefore again said that the industrial applicants of LDPE and EVA as disclosed in Annexure R2 do not anticipate the applicant's
invention.
We shall see what the invention is ?. As per the specification According to this invention there is provided a process for the preparation of a
rodent repellent composition comprising taking low density polyethylene in a mixer at a temperature of 110-160øC, adding ethylene vinyl acetate in
amount of 5-50% by weight of low density polyethylene, mixing homogenously and then adding a rodent repellent in amount of 0.25-10% by low
density polyethylene into said mixture, subjecting the mixture thus obtained to the further step of mixing for a period of 5-10 minutes, maintaining the
temperature between 110-160øC, shredding the mixture at room temperature to obtain composition of the present invention.
In accordance with this invention rodent repellent composition is prepared by taking low density polyethylene in to a mixture at a temperature of 110-
160øC in order to melt the low density polyethylene. 5-50% ethylene vinyl acetate by weight of low density polyethylene is added in to said
mixture and is mixed with the low density polyethylene homogeneously. 0.25-10% rodent repellent material by weight of low density polyethylene is
added to said mixture and the mixture is subjected to the step of further mixing for a period of 5-10 minutes at the constant temperature. The mixture
so obtained is shredded at room temperature so as to obtain rodent repellent compound in the flakes form. The rodent repellent material used are for
example cycloheximide, tetraethyl theorem disulphide, methyl anthranilate and zinc dimethyl dithiocarbamate. The compound so obtained is then
subjected to the conventional steps of film making. The thickness of the film is in the range of 100-25 micron. The film so prepared is laminated onto a
bitumen-jute laminate which is used as the rodent repellent material and also as moisture proofing and water proofing material.
Claims as accepted are reproduced below:
(1) A process for the preparation of a rodent repellent composition comprising taking low density polyethylene in a mixer at a temperature of 110-160
§C, adding ethylene vinyl acetate in amount of 5-50% by weight of low density polyethylene, mixing homogeneously and then adding a rodent
repellent in amount of 0.25-10% by weight of low density polyethylene into said mixture, subjecting the mixture thus obtained to the further step of
mixing for a period of 5-10 minutes, maintaining the temperature between 110-160 §C, shredding the mixture at room temperature to obtain
composition of the present invention.
(2) A process as claimed in claim 1 wherein rodent repellent is cycloheximide, tetraethyl theorem dispulphide, methyl anthranilate, zinc dimethyl
lithiocarbamate.
(3) A process for the preparation of a rodent repellent composition substantially as herein described and illustrated.
52.. If we look at the invention as claimed in claim 1 it is for a process for the preparation of a rodent repellent composition involving following steps:
(a) taking low density polyethylene in a mixer at a temperature of 110-160§C,
(b) adding ethylene vinyl acetate in amount of 5-50% by weight of low density polyethylene,
(c) mixing homogeneously and then
(d) adding a rodent repellent in amount of 0.25-10% by weight of low density polyethylene into said mixture, subjecting the mixture thus obtained to the
further
(e) step of mixing for a period of 5-10 minutes, maintaining the temperature between 110-160 §C,
(f) shredding the mixture at room temperature to obtain composition of the present invention.
If we see R1,R2 and R3 we do not find any document providing the process steps as stated above. While R1and R2 only teaches the blending,
mixing and of LDPE and EVA by heating between 110-160 §C and shredding and R3 is silent about steps involved in the present process and the
ingredient used in preparation of rodent repellent composition. Therefore we find that these documents are not relevant to prove obviousness of the
claimed process. That is what Controller has also observed when he stated that the opponents have failed to prove the grounds relied upon by them
due to lack of any evidence relating to process as a whole for the preparation of rodent repellent composition in the manner described and claimed in
the specification as all the evidences submitted by the opponents are related to LDPE and EVA are teaching various properties of these compounds
and used thereof individually and not directly teaching the process as a whole as claimed by the applicant.
and we do not find any reason to differ from the finding of the Controller on this count and affirm his finding.
Mere admixture not patentable under section 3(e)
The learned Counsel for the appellant asserted that in terms of section 3(e) of the said Act, ""a substance obtained by a mere admixture resulting
only in the aggregation of the properties of the components thereof or a process for producing such substance"" are not inventions within the meaning
of the said Act. He submitted that as stated above and described in detail, with reference of existing publications (Annexures R-1 and R-2 (colly), as
well as an affidavit from a Director of M/s. Calco Polychem Pvt. Ltd. (Annexure R-3), the properties, processing parameters, industrial applications
and admixture of LDPE and EVA are publicly known and have been used since well before the priority application and in the application in question,
the alleged invention involves adding a rodent repellent to a mixture of LDPE and EVA, allegedly resulting in a rodent repellent composition for use in
laminates for godowns and food storages, as well as for water/moisture proofing in godowns, food storages and other packages. Admittedly, the
rodent repellent to be added to the LDPE, EVA mixture is a publicly known and used rodent repellent. Consequently, it appears that the alleged
invention is a process for producing a mere admixture of an existing rodent repellent to an LDPE, EVA mixture allegedly resulting in the aggregation
of the properties of the components thereof. As such, the alleged invention is not an invention within the meaning of the Act and is not patentable.
The alleged invention, according to the learned Counsel for appellant involves adding a known rodent repellent to a mixture of LDPE and EVA,
allegedly resulting in a rodent repellent composition for use in laminates for godowns and food storages, as well as for water/moisture proofing for
godowns, food storages and other packages. Admittedly, the rodent repellent to be added to the LDPE, EVA mixture is a publicly known and used
rodent repellent and it is merely a process for producing a mere admixture of an existing rodent repellent with an LDPE, EVA mixture, allegedly
resulting in the aggregation of the properties of the components thereof.
The Counsel for the appellant submitted that simply because there is a particular sequence of mixing involved does not mean that the process is
per se not mere admixture resulting only in the aggregation of the properties of the components thereof. The specific contention of the Opponent that
the result of the process sought to be patented by Respondent No. 1 is at best the mere aggregation of the properties of the components thereof,
obtained by a mere admixture of the said components using mixing techniques and processing parameters that are well known, has not been dealt with
by the Assistant Controller. As such, the finding of the Assistant Controller in this regard is without proper application of mind and the specific
contentions of the Opponent have not been addressed. In view of the foregoing, the conclusion arrived at by the Controller on this issue is wholly
untenable.
The learned Counsel for the respondent submitted that the respondent's invention resides in a combination of steps as explained above. Therefore,
it can not be said that the applicant's invention resides only in blending or mixing or shredding such mixture. Further it is clear from claim 1 that
process steps involve chemical reaction and the Rodent repellent composition produced by such process is a chemical compound and not a mere
admixture. In view of the above, the appeal petition shall be dismissed with costs to the respondent.
We agree with the contention of the respondent that invention is not a mere admixture. We therefore uphold the decision of the Controller where
he stated that while preparing rodent repellent composition the applicant has not merely admixed the ingredient of the composition such as LDPE,
EVA and rodent repellent together. Rather they are mixed in a proper and definite proportion, amounts at particular temperature and in a particular
sequence. Even the affidavit of Vijay Kumar Gupta ........does not reveal about these steps and
proportions and amount of these ingredients. Therefore the alleged process cannot .............be considered as mere admixture. In view of this, this
ground of opposition also fails.
59 . In view of above finding we do not find any convincing reason or clinching evidence to differ from the decision of the Controller to allow this
application to proceed for grant with the following amendments:
Amendments to be carried out by the applicant
1 . The title of the complete specification should read as ""A PROCESS FOR PREPARATION OF RODENT REPELLENT COMPOSITION"" in
place of ""A RODENT REPELLENT COMPOSITION AND A PROCESS FOR THE PREPARATION THEREOF"".
On page 2 of the specification paragraph 2 and 3, namely; ""However, the main object of this invention is to propose the rodent repellent composition
to stop the entry of the rodents in to the godowns and storages. Another objects of the invention is to propose rodent repellent composition"" to be
deleted.
We therefore direct the Controller to proceed further as per the provisions of the Patents Act, 1970 and patent Rules for grant of the Patent after
the amendments are carried out as above. The appeal is dismissed. No costs.