Delhi High Court
The Coca-Cola Company vs The Controller Of Patents on 17 April, 2025
Author: Amit Bansal
Bench: Amit Bansal
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 17th April, 2025
+ C.A.(COMM.IPD-PAT) 342/2022
THE COCA-COLA COMPANY .....Appellant
Through: Mr. Rohit Rangi, Mr. Vineet Rohilla,
Mr. Pankaj Soni, Mr. Debashish
Banerjee, Mr. Ankush Verma and Mr.
Tanveer Malhotra, Advocates.
versus
THE CONTROLLER OF PATENTS & ANR. .....Respondents
Through: Mr. Arnav Kumar, CGSC with Ms.
Gitanjali Vohra, Advocate for
respondent no. 1.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. The present appeal has been filed against the order of the Respondent
dated 29th January, 2020, refusing the grant of the Indian Patent Application
No. 1771/DELNP/2010 (hereinafter ‘the subject application’) under Section
15 of the Patents Act, 1970 (hereinafter ‘the Act’) on the ground that the
claimed invention lacks inventive step.
2. The invention impugned in the subject application relates to a
beverage dispenser which is superior to the conventional beverage
dispensers. This dispenser overcomes the limited capacity and selection of
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conventional machines to offer more beverage variety and customization.
3. The respondent had issued First Examination Report (hereinafter
“FER”) on 7th August, 2017, raising various objections against the subject
application, which are as follows: –
a. Lack of novelty and inventive step under section 2(1)(j) of the
Act
b. Not patentable under section 3(k) of the Act
c. Lack of sufficient disclosure under section 10(4)(b)
d. Lack of clarity and unity under section 10(4)(c) and 10(5) of
the Act.
4. The appellant had filed a detailed response addressing the objections
raised in the FER on 5th March, 2018.
5. Thereafter, the respondent had passed a hearing notice on 24th
September, 2019 containing following objections: –
a. Lack novelty and invention under section 2(1)(j) of the Act.
b. Not an invention under section 3(k) of the Act.
6. Subsequently, a hearing was conducted on 10th October, 2019 and
written submissions were filed by the appellant on 25th October, 2019.
7. Vide the impugned order the respondent refused the grant of patent on
the ground that the invention impugned in subject application lacks
inventive step as required under section 2(1)(ja) in view of prior-arts D1-
US6152591, D3-US5974396A, D4-US6990391B1 and D5-
WO2005091843A2.
8. The grievance of the appellant is that the appellant had distinguished
all the aforesaid prior arts cited by the Assistant Controller in the hearing
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notice, through the post-hearing written submissions. However, it is
submitted that the impugned order has been passed in a cryptic manner,
without analysing the submissions made on behalf of the appellant regarding
the distinction between the subject patent application and the prior-arts. The
operative part of the impugned order is set out below:-
“4. In view of claims made in written submission
following observations with respect to instant invention
made :
In view of argument provided in written
submission as “a consumer preference that tailors
display of beverage formulations in the user interface”
Such step is merely showcase the tailored choices
in the GUI which is obvious in view of cited prior art D1
disclosing system of graphic display to display variety of
data display therefore the said subject matter would be
obvious in view of D1.
Further the claim for “a reader (106A) configured
to obtain identification information associated with a
consumer via a wireless communication” is disclosed in
D3-US5974396A as “Each point of sale terminal
includes a card-code reader 52A, 52B, etc. for
scanning/reading codes assigned to various products
purchased by a consumer during a purchasing
transaction as well as identification and other
information from consumer membership cards, i.e.
smart cards. Card-code readers 50A and 50B may be
optically based, but the present invention envisions
other kinds of reading mechanism as well, e.g. a
magnetic strip detector for reading coded information
on a magnetic strip, etc.”
Further D3 discloses that “typical consumer
information includes household demographics where
the term demographics refers to names, address
(including zip code), ages of members in the household
as well as dietary restrictions, number and type of
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household appliances, income, pet information, and any
other characteristic features that may identify particular
consumers and particular consumer
preferences/needs.”
D4 discloses a controller to dispense the beverage.
D5 discloses a royalty reward points program.
Therefore, in view of cited prior arts the steps as claimed in
written submission are obvious and not inventive.
5. The oral argument and the written submission of the
agent of the applicant have been carefully considered.
However without prejudice, although the hearing
submissions have attempted to address the other
requirements, yet the substantive requirement of the
Patents Act, 1970 i.e. Section 2(1)(j) is not found
complied with. Hence, in view of the above and unmet
requirements, this instant application is not found in
order for grant.”
9. A perusal of the aforesaid extracts from the impugned order shows
that it has been passed without addressing the submissions of the appellant
or demonstrating proper application of mind. The appellant had placed on
record, in their written submissions, various arguments distinguishing the
prior arts from the subject invention. However, the same have not been
considered in the impugned order. The order lacks reasoning capable of
withstanding judicial scrutiny.
10. At this stage, reference may be made to the judgment of a Coordinate
Bench of this Court in Agriboard International LLC v. Deputy Controller
of Patents and Designs, 2022 SCC OnLine Del 940 (hereinafter
“Agriboard”). The relevant observations are set out below:
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“23. The said reasoning has been reiterated by the Supreme Court in
Manohar v. State of Maharashtra & Ors. AIR 2013 SC 681 wherein it
has been categorically observed that application of mind and recording
of reasoned decision are the basic elements of natural justice. There
can be no doubt that scrupulous adherence to these principles would be
required while rejecting patent applications.
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.”
[emphasis supplied]
11. The aforesaid judgement in Agriboard (supra) has been followed by
me in Rosemount Inc. v. Deputy Controller of Patents and Designs 2023
SCC Online Del 2487 and Marelli Europe S.P.A. v. The Deputy Controller
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of Patents and Designs, C.A.(COMM.IPD-PAT) 21/2024.
12. Therefore, it is a settled position that the Patent Office is required to
pass a speaking order analysing what is the existing knowledge and how the
subject invention lacks inventiveness in light of the prior art. In the
impugned order, the Controller has not analysed the subject application in
light of the post-hearing written submissions of the appellant and has failed
to give a reasoned order.
13. Accordingly, the impugned order is set aside and the matter is
remanded back to the Patent Office for a fresh consideration.
14. The Controller would afford a fresh opportunity of hearing both sides
before deciding the subject patent application after giving a hearing notice to
the appellant.
15. Needless to state that the fresh order passed by the Controller will
deal with the valid submissions raised on behalf of the appellant.
16. The present appeal stands disposed of in terms of the aforesaid.
17. The Registry is directed to supply a copy of the present order to the
office of the Controller General of Patents, Designs & Trade Marks of India
on the e-mail- [email protected] for compliance.
AMIT BANSAL, J
APRIL 17, 2025
kd
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By:AANCHAL TAGGAR
Signing Date:26.04.2025
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