Madras High Court
Caleb Suresh Motupalli vs Controller Of Patents on 29 January, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:293
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Order reserved on 24.09.2024
Order pronounced on 29.01.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
C.M.A. (PT) No. 2 of 2024
Caleb Suresh Motupalli
Rottelailu House of Bread
29-37-31 Eluru Road, (Upstairs)
Vijayawada- 520002,
AndhraPradesh ... Appellant
vs
Controller of Patents
Patent Office, Intellectual Property Building,
G.S.T. Road, Guindy
Chennai- 600032
TamilNadu ... Respondent
Prayer: This Civil Miscellaneous Appeal filed under Section 117-A
of the Patents Act, 1970, prays (i) that this Court set aside the order
dated 27.10.2021, passed by the respondent herein in Patent
Application No.5606/CHENP/2012 and allow the appeal and
pass such order(s) as this Hon'ble Court may deem fit and proper
in the circumstances of the case and to meet the ends of justice.
1/36
https://www.mhc.tn.gov.in/judis
For Appellant : Party-in-person
For respondent : Mr.A. R. Sakthivel,
Special Panel Counsel
**********
JUDGMENT
Factual Background:
The appellant assails an order dated 27.10.2021 issued by the
respondent in the review petition filed by the appellant under
Section 77(1) (f) and (g) of the Patents Act, 1970 (‘Patents Act‘) for
reviewing the Controller’s decision on 21.04.2021 in respect of the
appellant’s application for grant of patent (Indian Patent
Application No. 5606/CHENP/2012).
2. The appellant filed the subject patent application on
27.06.2012 as a national phase application of PCT (Patent
Cooperation Treaty) Patent Application No. PCT/IN2010/000669
dated 08.10.2010 claiming priority from US Application Nos.
61/290, 104 dated 24.12.2009 in respect of the invention titled
2/36
https://www.mhc.tn.gov.in/judis
‘Necktie Persona-Extender/Environment-integrator and method
for Super-Augmenting a Persona to Manifest a Pan-Environment
Super-Cyborg’.
3. The application was originally filed with 13 claims. The
First Examination Report (FER) was issued on 30.8.2018 raising
objections under Sections 2(1)(j) with respect to inventive step,
industrial applicability, 3(k), 3(m), 10(5), 10(4) of the Patents Act.
In response to the FER, the appellant submitted its reply on
27.02.2019 deleting claims 6-13 and submitting amended claims
14-30.
4. Subsequently, the hearing notice was issued on 07.08.2020
raising objections in respect of the amended claims under Sections
10(5), 10(4)(c), 10(5), 8(1)(b), 2(1)(ja), 3(k), 3(m), 57 read with 59 of
the Patents Act. The hearing was conducted on 07.09.2020 and in
the final written submissions dated 15.09.2020, the appellant
3/36
https://www.mhc.tn.gov.in/judis
submitted a detailed rebuttal refuting the objections raised in the
hearing notice. The respondent issued the original decision on
21.04.2021 maintaining objections concerning: lack of enablement
and definitive scope of the invention under Section 10(4); lack of
clarity and conciseness under Section 10(5); amended claims being
outside the scope of originally submitted claims in contravention
of Section 57 read with Section 59; lack of compliance with formal
requirements under Section 8(1)(b); lack of inventive step under
Section 2(1)(ja) of the Patents Act in view of the teachings
disclosed in prior art D1 (WO2001035208A1); and non-
patentability under Sections 3(k) and 3(m) of the Patents Act.
5. Aggrieved by the order, the appellant filed a review
petition under Sections 77(1)(f) and (g) of the Patents Act and
Rules 130(1), 130(2) of the Patent Rules, 2003 on 11.05.2021 by
making amendments to the claims. A second hearing notice was
issued on 09.06.2021, again, raising objections under Sections
4/36
https://www.mhc.tn.gov.in/judis
10(4)(a-c), 10(5), 2(1)(ja), 3(k), and 3(m). The hearing took place on
02.07.2021 and the appellant submitted written submissions
thereafter on the same day making further amendments to the
claims. Pursuant thereto, the respondent issued the impugned
order dated 27.10.2021 rejecting the patent application on the
grounds of lack of enablement, lack of definitive scope of the
invention under Section 10(4)(a-c), lack of clarity and
concisenesses under Section 10(5), lack of compliance with formal
requirements such as no proper reference provided in the figures,
amended claims being outside the scope of original claims in
contravention of Section 59(1), lack of inventive step under Section
2(1)(ja) of the Patents Act in view of the teachings disclosed in
prior arts D2-D8 (US20040030741A1, “A Survey of Black-Box
Modernization Approaches for Information Systems”, Walnau et
al., 1063-6773/00 $10.00 © 2000 IEEE, US5404440A,
US20040006566A1, US5880731A, Motupalli 1989: Statement of
Purposes, ??? (Phi Sigma Join), Carroll 1982: IEEE: Metaphor and
5/36
https://www.mhc.tn.gov.in/judis
the Cognitive Representation of Computational Systems in
combination with D1, and non-patentability under Sections 3(b),
3(k) and 3(m) of the Patents Act. The present appeal arises against
this backdrop.
Submissions by the parties:
6. Oral arguments and written submissions were made by
the appellant as party-in-person. Learned Special Panel Counsel,
A.R.Sakthivel, appeared on behalf of the respondent.
Appellant’s submissions:
7. The appellant contended as follows: his invention
provides a ‘beyond-AI’ solution addressing the issue of ‘n-
Entropy’, the loss of agency and control in the face of increasing AI
capabilities and the threat of Runaway AI, which manifests as
automation-related job losses. Directed at extending and
augmenting the persona of an individual, the invention non-
6/36
https://www.mhc.tn.gov.in/judis
invasively integrates human intelligence with Artificial
Intelligence (AI) thereby upgrading humans to “human 2.0”.
Sufficiency of disclosure under Section 10(4)(a):
8. The appellant argued that the terms in the complete
specification are in the context of the invention and the use of non-
standard terminology or alleged vagueness does not mean that
there is insufficient disclosure. By relying on Novartis AG v Union
of India (2013) 6 SCC 1, he submitted that the sufficiency of
disclosure under Section 10(4)(a) of the Patents Act must be
assessed from the perspective of a person skilled in the art (PSITA)
and by referring to In re Naquin, 398 F.2d 863, 866, he contended
that if an invention is of an inter-disciplinary nature, it requires a
team of PSITA to apply the enablement standard as a single
person cannot be skilled in all the relevant arts which relate to
multiple fields; and that the specification is adequate if it enables a
person adept in each field to carry out the element relevant to the
specialty.
7/36
https://www.mhc.tn.gov.in/judis
Scope, fair basing, clarity, and conciseness, and Section 59(1):
9. Additionally, the appellant argued that independent
claims 14, 20 and 25 are drafted in the Jepson format, setting out
the prior art in the preamble, and the improvement in the body,
and precisely demarcate the scope of the claims. The length and
complexity of the claims is due to the multi-faceted nature of the
invention and the amendments are carried out for definiteness and
clarity; the verbose nature of the claims is justified as it provides
clarity and comprehensiveness and it does not amount to
broadening of claims beyond the scope of Section 59(1).
Best mode of performing the invention and inventive step:
10. Claims 19, 24, and 30 disclose the best mode of
performing the invention as required by Section 10(4)(b) of the
Patents Act by providing for a Christocratic Necked Service
Oriented Architecture (CNSOA) that synergistically employs a
8/36
https://www.mhc.tn.gov.in/judis
membership of safe actors, who are self-governed and able to offergoverning services in the bridespace which forms the head space,
and accenting/acquiescing actors in the christocratic-space which
forms the body and executes operations, aligning the said actors
with ruling actors. By providing a comprehensive system to
reduce n-entropy through decussation of left and right flanks of
the upright and inverted pyramids, the invention embodies a
technical advancement of non-invasive integration of human with
AI, integration of physical goods/objects/things with the
network-is-the-computer, and integration of meatspaces with
cyberspaces, through a layering process which results in
“labourspace”, which are not disclosed by the combined teachings
of prior arts D1 and D2-D8.
11. By relying on Ferid Allani v Union of India and Ors., 2019
SCC Online Del 11867, and the Computer Related Inventions (CRI)
9/36
https://www.mhc.tn.gov.in/judis
Guidelines, 2017, the appellant argued that his invention meets thetest laid down in section 3(k) of the Patents Act. The black-box
modernizing structural features in Claims 1, 14, 15, 20, 21, 25 and
26 have the technical effect of transforming the relationship the
user has with the AI/computer and everyday objects/things in the
user’s environment. The invention, as a whole, provides a novel
system for human-AI-goods-meatspace-cyberspace integration
with tangible effects in the real world and is not merely an
algorithm or computer programme per se. It enables the hitherto
autonomous, external and adversarial AI/computer system to be
synergetically integrated with the user’s persona; and is co-opted
to augment and extend the cognitive and physical powers of the
user.
12. As regards Section 3(m) of the Patents Act, the appellant
contended that the invention involves a cognitive aspect which is
implemented through complex system interactions and physical
10/36
https://www.mhc.tn.gov.in/judis
implementations and cannot be reduced to mental steps andtherefore it is not barred by Section 3(m). Furthermore, the
appellant contended that rejection of his patent application on the
basis of Section 3(b), newly raised at the review stage, is a
violation of the principles of natural justice as it denied him the
opportunity to address the objection.
Respondent’s submissions:
13. By way of counter affidavit, the respondent submitted
that the technical features claimed in independent claims 14, 20,
and 25 and the dependent claims lack inventive step in view of the
teachings disclosed in D2-D8 in combination with D1 particularly
in respect of methods for virtual environments, information
retrieval, black-box modernization, graphic representation in
communication, knowledge commerce augmentation, and
cognitive learnings.
11/36
https://www.mhc.tn.gov.in/judis
14. As regards the grounds of rejection under Sections 10(4),
10(5) and 59(1) of the Patents Act, the respondent contended that
the complete specification lacks adequate definition or description
of non-limiting features and fails to transform the claimed abstract
idea into a patent-eligible application. The usage of biblical
references, undefined terms, and ambiguous phrases which
broaden the scope of claims therein fail to meet the legal
patentability criteria under the aforementioned provisions; and the
inter-disciplinary nature of the invention does not resolve this
ineligibility. Additionally, the lack of a defining set of computer-
executed instructions attracts Sections 3(k), and 3(m) of the Patents
Act making the invention non-patentable.
Discussion, Analysis and Conclusion:
15. At the outset, it is pertinent to state that the present
appeal is against an order-in-review issued by the Controller
under Section 77(1)(f) and (g) of the Patents Act and Rules 130(1)
12/36
https://www.mhc.tn.gov.in/judis
and 130(2) of the Patent Rules, 2003. The said provisions of thePatents Act vest certain powers of a civil court trying a civil suit
under the Civil Procedure Code, 1908 (CPC) with the Controller as
follows:
77. Controller to have certain powers of a
civil court.—(1) Subject to any rules made in
this behalf, the Controller in any proceedings
before him under this Act shall have the powers
of a civil court while trying a suit under the
Code of Civil Procedure, 1908 (5 of 1908), in
respect of the following matters, namely:—
(f) reviewing his own decision on
application made within the prescribed time
and in the prescribed manner;
(g) setting aside an order passed ex parte
on application made within the prescribed time
and in the prescribed manner;
(emphasis added)
16. By virtue of Section 77(1)(f) of the Patents Act, Section
114 of the CPC, read with Order XLVII, Rule I(1)(a), becomes
13/36
https://www.mhc.tn.gov.in/judis
applicable. The said provisions, in respect of review, provide as
under:
114. Review.—Subject as aforesaid, any
person considering himself aggrieved—
(a) by a decree or order from which an appeal is
allowed by this Code, but from which no appeal
has been preferred.
(b) by a decree or order from which no appeal is
allowed by this Code, or
(c) by a decision on a reference from a Court of
Small Causes,
may apply for a review of judgment to the
Court which passed the decree or made the
order, and the Court may make such order
thereon as it thinks fit.
ORDER XLVII
Review
1. Application for review of judgment.—(1)
Any person considering himself aggrieved—
(a) by a decree or order from which an appeal is
allowed, but from which no appeal has been
preferred,
14/36
https://www.mhc.tn.gov.in/judis
(b) by a decree or order from which no appeal is
allowed, or (c) by a decision on a reference from
a Court of Small Causes,
and who, from the discovery of new and
important matter or evidence which, after
the exercise of due diligence was not
within his knowledge or could not be
produced by him at the time when the decree
was passed or order made, or on account of
some mistake or error apparent on the face
of the record or for any other sufficient
reason, desires to obtain a review of the
decree passed or order made against him,
may apply for a review of judgment to the
Court which passed the decree or made the
order.
(emphasis added)
In order to sustain a review, the review applicant must
demonstrate that the order-in-original suffers from any of the
grounds mentioned in Order XLVII, Rule I(1)(a): error apparent on
the face of the record, discovery of new or important matter or
15/36
https://www.mhc.tn.gov.in/judis
evidence which, despite exercise of due diligence, was not in the
knowledge of the applicant during the original hearing process, or
any other sufficient reason. Upon examining the appellant’s
review application dated 11.05.2021 filed in Form 24, I find that he
has not canvassed any of the aforementioned grounds. In view of
the fact that the review applicant failed to make out a case under
Section 77(1)(f), the Controller ought to have rejected the review
application. Instead, she has dealt with the review application as
an original application for grant of patent, conducted a second
full-fledged hearing and issued the impugned order in the nature
of an order-in-original under Section 15 of the Patents Act refusing
patent grant.
17. At this stage, it is apposite to take cognizance of Section
117-A of the Patents Act which confers the power to High Court to
hear appeals against, inter alia, an order of the Controller:
117A. Appeals to [High Court].—(1) Save as
otherwise expressly provided in sub-section (2),16/36
https://www.mhc.tn.gov.in/judis
no appeal shall lie from any decision, order or
direction made or issued under this Act by the
Central Government, or from any act or order
of the Controller for the purpose of giving
effect to any such decision, order or
direction.
(2) An appeal shall lie to the [High
Court] from any decision, order or direction
of the Controller of Central Government
under section 15, section 16, section 17,
section 18, section 19, 6 [section 20, sub-
section (4) of section 25, section 28],
section 51, section 54, section 57, section
60, section 61, section 63, section 66, sub-
section (3) of section 69, section 78, sub-
sections (1) to (5) of section 84, section 85,
section 88, section 91, section 92 and
section 94.
(emphasis added)
Thus, Section 117-A provides for appeals to the High Court
against, inter alia, an order of the Controller issued only under the
17/36
https://www.mhc.tn.gov.in/judis
Sections mentioned in Sub-section 2 of Section 117-A of the Patents
Act. It can be seen that Section 77(1)(f) is conspicuous by its
absence. In other words, a statutory appellate remedy is not
provided for against an order-in-review issued under Section
77(1)(f) of the Patents Act. Therefore, the present appeal is liable to
be dismissed at the threshold as not maintainable under Section
117-A of the Patents Act.
18. Without prejudice to the above conclusion, considering
that the impugned order was issued in the nature of an order-in-
original under Section 15 of the Patents Act, after a detailed re-
examination of the patent application, I scrutinize the appeal on
its merits.
19. The impugned order has rejected the application under
Sections 10(4), 10(5), 3(b), 3(k), 3(m), and 59(1) of the Patents Act.
First, I examine whether the objection under Section 10(4)(a) on the
18/36
https://www.mhc.tn.gov.in/judis
finding that the complete specification is vague, lacks direction
and working examples, and requires undue experimentation to
work the claimed invention warrants interference. In consonance
with the patent bargain, Section 10(4)(a) requires the specification
to describe the claimed invention and its method of operation in
full to enable a PSITA to work the invention in exchange of the
monopoly granted during the patent term.
20. As was held in No-Fume Ltd v Frank Pitchford & Co Ltd
(1935) 52 RPC 231, whilst it is not necessary that the specification
should disclose every detail of the invention with accuracy and
precision, it should also not demand of the PSITA undue levels of
experimentation or the usage of inventive faculty, which the
PSITA lacks, to work the invention. Additionally, if the teaching in
the specification is not adequate to achieve the results promised in
the claimed invention, the specification is insufficient.
21. The claimed invention proposes to solve the problem of
19/36
https://www.mhc.tn.gov.in/judis
loss of agency and control by humans as a result of increased AI
capabilities, by creating a super-augmented persona. To this end,
independent Claim Nos. 14, 20 and 25 provide for, inter alia, an
user interface comprising a persona-extender, persona-augmenter,
ecosystem indicia which provide for an integration technology for
integrating the extended persona with plurality of objects, other
extended persona of other actors; a delegated processing unit
indicium which provides for the actor to non-invasively delegate
grunt work or low level processing to delegated processing unit.
The metaphor environment performs a black-box modernization
technique to provide persona extender or persona augmenter to
the actor.
22. Dependent Claim Nos. 15, 21 and 26 respectively provide
for the apparatus, method and means for a persona-augmenting
apparatus comprising a necktie metaphor environment which in
turn comprise the integration technology, a set of handles for
20/36
https://www.mhc.tn.gov.in/judis
handling the plurality of objects imitating what the appellant
terms as human body’s heterogeneous membership of organs. The
passage to the actor is regulated using conventional information
processing and user interface design techniques to mitigate n-
entropy to levels of 7±2 units to align with human cognitive
capacity. The integration is compared to wearing a neck-tie
(necktie-imitation (5T in Fig 1C)) whereby the neck (5A in Fig 1C)
is characterized as an “e-throne” to establish “oneness” for intuitive
control or governance of heterogeneous membership.
23. For determining whether the teachings in the complete
specification support these claims, the court must assume the
mantle of a notional PSITA. The PSITA can be one technical expert
or a team consisting of multiple experts depending on the nature
of the invention. The appellant argued that the multifaceted
interdisciplinary nature of the claimed invention necessitates that
the invention be examined by a PSITA team consisting of relevant
21/36
https://www.mhc.tn.gov.in/judis
experts. Without doubt, the claimed invention pertains to the field
of AI, more particularly, Augmented Reality and Mixed Reality.
Therefore, the PSITA is a software engineer with expertise in AI
and allied fields or a team having experts well-versed in AI, black-
box modernization techniques, Object Oriented Analysis and
Design techniques.
24. On perusal of the complete specification by assuming
the mantle of the said PSITA team, I find that the disclosures
therein do not sufficiently enable the product, method or means
claims. The perceived problem of loss of human control is
proposed to be solved using the necktie persona-
extender/environment integrator. As can be seen above,
independent Claim Nos. 14, 20, 25, and dependent claim Nos. 15,
21, and 26 and 17, 22 and 28 provide for the product, method and
means claims through which the ‘persona
extension/augmentation’ is achieved. Pages 12 and 13 of the
22/36
https://www.mhc.tn.gov.in/judis
complete specification teach that through the black-box
modernization technique, the computer works towards extending
human minds and bodies beyond their conventional boundaries;
the computer is recast as the necktie persona-extender/integrator;
the hardware of the extender/integrator consists of the pocket
data processing device connected to a global network with
handwriting, speech, gesture and image synthesizing/processing
software, a camera on the forehead, earphone with microphone
and a projector. Distributed Object Technology (DOT) and its
middleware provide the necessary integration technology whereas
the browser and the web provide for the extension technology.
25. In his affidavit in support of the appeal, the appellant has
relied on the cited prior art D3 in response to the Controller’s
objection as to what black-box modernization entails. A close
reading of prior art D3, which is a non-patent literature entitled “A
Survey of Black-Box Modernization Approaches for Information
23/36
https://www.mhc.tn.gov.in/judis
Systems”, written by Walnau et al, shows that the paper deals with
legacy system evolution activities, viz., maintenance,
modernization, and replacement. More particularly, the paper
expounds in detail the various modernization techniques of old
information systems, one of which is black-box modernization.
This technique involves the usage of wrapping which removes the
mismatches between the interface artifact and the interfaces
required by current integration practices. Modernization of legacy
systems carried out at the functional (logic) level involves both
legacy data and also the business logic embedded in the legacy
system. One of the techniques used in modernization carried out
at the functional level is Object-Oriented Wrapping wherein the
individual applications, common services, and business data are
represented as objects and involves several tasks including code
analysis, decomposition, and abstraction of the object orientation
model. Distributed Object Technology (DOT), the combination of
distributed technology with object orientation, by using object
24/36
https://www.mhc.tn.gov.in/judis
middleware, extends object technology to the net-centric
information systems of modern enterprises to achieve functional
level modernization.
26. On carefully examining the complete specification and
the relevant prior art documents, I find that the appellant has
merely coalesced the disclosures and discussions in the patent and
non-patent literature, which largely relate to harnessing AI
capabilities for advancing human operations, to arrive at the
claimed invention. Significantly, black-box modernization, DOT,
object oriented analysis and design techniques, which lie at the
heart of the claimed invention and form the bedrock for enabling
the claimed technical features, persona extension and
augmentation, are disclosed in the prior art document D3 for
modernizing outdated information systems. The teachings in the
complete specification of the claimed invention do not provide any
directions for the adoption of these technologies for persona
25/36
https://www.mhc.tn.gov.in/judis
extension and augmentation. In order to meet enablement
requirements, undue levels of experimentation entailing the
deployment of inventive faculty should not be required to work
the invention. A fair reading of the complete specification does not
lay bare the purported working and usage of the aforementioned
techniques, which as D3 shows, are known in industry practice for
modernizing legacy information systems, to attain the intended
result of persona-augmentation and extension. Absent such
teachings and the techniques not being common general
knowledge for persona extension and augmentation, in my view,
undue experimentation requiring the use of inventive faculty is
necessary to achieve the promised result.
27. Dependent Claim Nos. 17, 22 and 28 also provide
respectively for the apparatus, method and means for an
environment integrator comprising a labourspace, which, in turn
comprises a meatspace corresponding to goods and services
26/36
https://www.mhc.tn.gov.in/judis
available in the world, and a cyberspace corresponding to an
interactivity or virtual goods and services; layering of labourspace
over meatspace; and integration of meatspace with cyberspace
using interfacing techniques.
28. Furthermore, Claim Nos. 18, 23 and 29 provide,
respectively, for the apparatus, method and means for a second
labourspace, a second environment integrator, an avatar
comprising a graphical representation of the labourspace of first
actor in the second labourspace of the second actor comprising a
virtually worn necktie and virtually seated throne. Via the avatar,
the extended and augmented persona immersively inhabit the
second labourspace that is distributed geographically. Using the
second environment integrator of the second actor, integration of
environmental objects or systems is achieved in the second
labourspace.
29. Claim Nos.19, 24, and 30, which the appellant claims as
27/36
https://www.mhc.tn.gov.in/judis
representing the best mode of performing the invention, provide
for the apparatus, method and means, respectively, for the
CNSOA that comprises the super augmented personae as claimed
in Claim No. 18, and correspondingly in Claim Nos. 23 and 29, an
inverted pyramid comprising the bridespace and christocratic
space which are further divided into left and right flanks for
immersive habitation of respective actors therein; decussation of
the flanks, whereby the left flank of the inverted pyramid is
integrated with the right flank of the upright pyramid and vice
versa, allows for impartial governance, administration, and
management by way of cross-trading or similar means.
30. Upon a fair reading of the specification, I find that it does
not contain any details as regards the conventional information
processing and user interface design techniques to mitigate n-
entropy as claimed in Claim No. 15(iv)(3) and correspondingly in
Claim Nos. 21 and 26, nor the conventional wired or wireless
28/36
https://www.mhc.tn.gov.in/judis
integration or interfacing techniques used for layering of the
cyberspace over the meatspace to form the labourspace as claimed
in Claim No. 17(b)(iv) and correspondingly in Claim Nos. 22 and
28. As for the working of the CNSOA as provided for in Claim
Nos. 19, 24 and 30, the complete specification in Page 14, merely
mentions the usage of standard “Object Oriented Analysis and
Design” techniques for integration but glaringly lacks any
teachings or working examples regarding its usage in achieving
the integration as claimed. Apropos the decussation of the
pyramids, the description found in pages 16-17 of the complete
specification contains an elaboration of the proposed decussation
and biblical and natural element analogy but is devoid of any
technological enablement of the features in the claim. For the
aforementioned lack of technical criteria in the complete
specification to work the claims for achieving the intended result,
the claimed invention fails the enablement test under Section
10(4)(a) of the Patents Act.
29/36
https://www.mhc.tn.gov.in/judis
31. Section 10(4)(b) of the Patents Act requires the complete
specification to disclose the “best method of performing the invention
which is known to the applicant and for which he is entitled to claim
protection.” While grappling with the question of whether the
patent-in-suit relating to “improvements in or relating to soil
cultivating implements”discloses the best mode of performing the
invention, Lord Justice Nicholls in C Van Der Lely NV v. Ruston’s
Engineering Co. Ltd. (‘Van Der Lely’) [1993] RPC 45 propounded
that the standard for ascertaining whether the claimed invention
discloses its best mode of performance is to be determined as per
practice and not in theory. The appellant contended that Claim
Nos. 19, 24 and 30 represent the best mode of performing the
invention. As the discussion in the preceding paragraph no. 30
shows, the complete specification is bereft of a) any teachings to
use the object oriented analysis technique to achieve the promised
30/36
https://www.mhc.tn.gov.in/judis
integration and b) any technical feature to result in the decussation
of the pyramids hosting the actors. Therefore, the claimed
invention fails under section 10(4)(b) as it does not disclose any
workable criteria to arrive at the intended result, let alone the best
mode of performing the invention.
32. Section 10(5) of the Patents Act requires the claims of the
invention to be clear and succinct and to be fairly based on the
matter disclosed in the specification. Elucidating the rule of clarity
and succinctness, the UK Court of Appeal in The General Tire &
Rubber Company v. The FirestoneType and Rubber Company Limited
and Others [1972] R.P.C. 457, posited that the rule requires the
patentee to provide “as clear a definition as the subject matter
admits of” and the question of definition has to be decided as a
“practical matter” and the puzzles set out at the edge of the claim
carry little weight. The principle underlying the second part of the
provision, the fair basing rule, was formulated in Biogen Inc v
31/36
https://www.mhc.tn.gov.in/judis
Medava Plc, [1997] R.P.C. 1. The rule requires that the specification
must enable the invention to be performed to the full extent of the
monopoly claimed. Further, in Van Der Lely, it was held that a
claim covering an unimplementable or an unworkable
embodiment is not fairly based on the specification.
33. The impugned order has rejected the application under
Section 10(5) on the ground that claims are lengthy, vague and do
not represent a technical characteristic. In addition to the
unintelligible wording of the claims and the specification, I find
that the definition, i.e., the claims pertaining to persona-extension,
augmentation, and black-box modernization when read along
with the description, especially the paragraphs relating to DOT,
middleware, Object Oriented Analysis and Design in pages 13 and
14 of the complete specification, do not represent a workable
embodiment for achieving the subject matter of the invention, i.e.,
persona extension, integration and a method for super-
32/36
https://www.mhc.tn.gov.in/judis
augmentation to manifest a pan-environment super-cyborg for
global governance by way of wearing a necktie. Therefore, I
conclude that the claimed invention fails to meet the requirements
of Section 10(5) of the Patents Act on grounds of ambiguity and
failure to fairly base the claims on the disclosures in the complete
specification.
34. As regards Section 3(k), after tracing the legislative
history, discussing the patent ineligibility of computer
programmes per se in relation to the Copyright Act, 1957, and
surveying the relevant precedents, I concluded in Microsoft
Licensing Technology LLC v Assistant Controller of Patents,
2024:MHC: 2537, that if the claimed invention has a technical
effect, which is not limited to an application or a data set,
improves the functioning and efficacy of the system and has an
effect on the hardware, it would surmount the prohibition under
the provision.
33/36
https://www.mhc.tn.gov.in/judis
35. The claimed invention addresses the problem of loss of
human agency because of increase in AI capabilities by
purportedly integrating objects with humans, extending the
humans out, and immersing them in a labourspace through black
box modernization techniques. Devoid of any working examples
or demonstration of the applicability of these techniques, which
are known through the prior art to be used for modernizing
outdated legacy information systems, to achieve persona extension
and integration, the claimed invention does not possess any
technical effect, much less any impact on hardware and thus fails
to attain the promised result of super-augmentation of the user.
Hence, the claimed invention does not qualify the test under and
3(k) of the Patents Act and is thus patent-ineligible.
36. Since the appeal fails under Sections 10(4), 10(5), and 3(k)
of the Patents Act, I do not find it necessary to examine the
34/36
https://www.mhc.tn.gov.in/judis
objections under other Sections. For reasons set in the preceding
paragraphs on the merits of the patent application, I record that
even if the appeal were to be construed as an appeal against the
order-in-original under Section 15 of the Patents Act, no
interference would be warranted.
37. Therefore, the impugned order does not warrant any
interference and consequently, C.M.A. (PT) No. 2 of 2024 is
dismissed without any order as to costs.
29.01.2025
Index : Yes/No
Internet : Yes/No
Speaking/Non-Speaking : Yes/No
Neutral Citation : Yes/No
kal
35/36
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY J.
kal
To
The Controller of Patents,
Patent Office, Intellectual Property Building,
G.S.T. Road, Guindy
Chennai- 600032
TamilNadu
Pre-delivery judgment made in
C.M.A. (PT) No. 2 of 2024
29.01.2025
36/36
https://www.mhc.tn.gov.in/judis
[ad_1]
Source link