PRABHA SRIDEVAN,CHAIRMAN - (1.) THE invention of the appellant is titled "Systems, Methods, Interfaces and Software for Extending Search Results beyond initial query -defined boundaries"
(2.) THE respondent refused to grant patent on the ground that it lack of novelty and inventive step and that it is not allowable as per Section 3 (k) of the Act, as it is a computer programme. The appellant is aggrieved by the decision.
(3.) THE learned counsel Shri Samaresh Chakraborty appearing for the appellant, submitted that the original claim 1 to 8 had been replaced by revised claims 1 to 30. The original claims are contained in pages 182 and 183 of the paper book. The revised claims are from page 184 and 189. The applicant was originally Thomson Global Resources and by a special resolution and approval of the Registrar of Companies, the name had changed to the present name and this has been officially indicated to the respondent. The First Examination Report id dated 15.09.2008 and objection 1 is "subject matter of claims does not constituted an invention as lacks of inventive step and obvious in view of opinion of International Search Authority". Objection 2 is that "the inventive feature of the alleged invention should be incorporated into claim 1". Objection 6 stated that "the method claim falls within the scope of Section 3(k)". To this, the respondent sent the letter dated 28.8.2009 and requested the respondent to reconsider the application. The appellant had filed the Form -13 whereupon the claims had been revised. To the same letter, the respondent replied that "the official requirement raised in a FER have not been met" and therefore the appellant was asked to be present for the hearing on 5.12.2009. The attorney of the appellant sent a letter on 1.12.2009 asking that there should be a clarity regarding the objection and merely stating official requirement raised in a FER have not been met will not help the appellant to rectify the defects, if any. Then a letter was sent by the Respondent on 3.12.2009, which stated that the official requirement raised in a FER have been met and that the appellant should come for the hearing. The appellant respondent by the letter dated 8.12.2009 requiring clarification why the appellant should meet the respondent if all the requirements had met. The respondent replied on 16.12.2009 stating that what should have been written on 3.12.2009 was actually the words "have not been met" and that it was a clerical error. They again fixed the hearing on 24.12.2009, this was followed by a letter from the Deputy Controller reiterating the same position. On 29.12.2009, again the attorney of the appellant wrote to the respondent's office that when no reason has been assigned to negate the written submission and "none of the revised claims have been particularized", why were they not allowable and for what reason. To this there was again a reply on 6.12.2010, stating the official requirement raised in a FER have not been met. The appellant wrote a letter on 8.1.2010, informing the respondent that they would attend the hearing. Then since instructions from the client were not received they requested an adjournment, which was granted. The hearing was thereafter held on 25.01.2010. It was attended by the appellant's counsel who also submitted the written note of arguments. In this, it was specifically stated that the objection in the FER was based on a single document D1 in the ISA which was against the original claim but when the claims have been revised, there has been no communication negating the written submissions of the appellant. An order was passed in which the respondent after extracting the claims and the statutory provisions rejecting the grant of patent. In this impugned order, we find that the objections raised in the FER which are relevant and affecting the decision are reproduced and objection A refers to not only D1 which was in the ISA, which is US 2003 -097357 but also D2, which is WO 00/77690. It incidentally also had that the apparatus claims, lacks in inventive constructional features and method claims are unnecessary. The order also stated that D2 nullifies the novelty and inventive step of the claimed invention.;