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M/S. N.V. Diamcad and Another Vs. the Assistant Controller of Patents and Designs and Another - Court Judgment

LegalCrystal Citation
CourtIntellectual Property Appellate Board IPAB
Decided On
Case NumberM.P. NO.16 of 2009, 36 of 2011, 64 of 2011, 65 of 2011, 21 of 2012 & 54 of 2012 in OA/4 of 2009/PT/CH & OA/4 of 2009/PT/CH
Judge
AppellantM/S. N.V. Diamcad and Another
RespondentThe Assistant Controller of Patents and Designs and Another
Excerpt:
patents act, 1970 - sections 57 and 59 -order (no. 189/2012) d.p.s. parmar, technical member (patents): 1. this appeal is from the decision of the assistant controller of patents and designs dated 27th november, 2008 in post grant opposition under section 25(2) of the act to revoke the grant of patent 201020 (application no.860/chenp/2003) relating to “method and apparatus for locating inclusions in a diamond”. the patentees are m/s diamcad n.v. belgium. and mr. sivovolenko serguei borisovish, russia. m/s sarin technologies, an israeli company has opposed the grant of this patent. they succeeded before assistant controller, who has upheld submission relating to anticipation and insufficiency. the patentee request for amending the claims was not allowed by the assistant controller as he held that revised sets of claims.....
Judgment:

ORDER (No. 189/2012)

D.P.S. Parmar, Technical Member (Patents):

1. This appeal is from the decision of the Assistant Controller of Patents and Designs dated 27th November, 2008 in post grant opposition under Section 25(2) of the Act to revoke the grant of patent 201020 (Application No.860/CHENP/2003) relating to “Method and Apparatus for locating inclusions in a Diamond”. The patentees are M/s Diamcad N.V. BELGIUM. and Mr. Sivovolenko Serguei Borisovish, Russia. M/s Sarin Technologies, an Israeli Company has opposed the grant of this patent. They succeeded before Assistant Controller, who has upheld submission relating to anticipation and insufficiency. The patentee request for amending the claims was not allowed by the Assistant Controller as he held that revised sets of claims are not fairly supported by the description and requires addition of new subject matter for enabling a person skilled in the art to perform the invention independently. Therefore, it cannot be allowed in accordance with the provisions of Sections 57 and 59 of The Patents Act, 1970. Aggrieved by the decision this appeal was filed by Patentee. No cross appeal is filed by the opponent.

Preliminary objection

Opposition Boards recommendation not provided to applicant

2. At the outset, the Counsel of the appellant submitted though the Opposition Board was constituted, the copy of the Opposition Board recommendations were not provided and the respondent No.1 had not referred the same in the impugned order. According to the Counsel the procedure followed by the patent office in not providing a copy of the Opposition Board recommendations will vitiate the entire process of opposition. According to the Counsel, recommendations of the Opposition Board cannot be kept secret from the parties to the proceedings. He contended that principles of natural justice and a fair hearing cannot be achieved unless a copy of the Opposition Board recommendations has been provided prior to the hearing. Further, he contended that the Controller is required to give reasons if he agrees or disagrees with the particular recommendations. According to the Counsel it is settled law that non-furnishing of relevant documents would not satisfy the requirement of a quasi-judicial hearing. He cited the following decisions:

“In Institute of Chartered Accountants of India v. L.K. Ratna it has been held: (SCC pp. 553-54, para 18)

18. .....after the blow suffered by the initial decision, it is difficult to contemplate complete restitution through an appellate decision. Such a case is unlike an action for money or recovery of property, where the execution of the trial decree may be stayed pending appeal, or a successful appeal may result in refund of the money or restitution of the property, with appropriate compensation by way of interest or mesne profits for the period of deprivation. And, therefore, it seems to us, there is manifest need to ensure that there is no breach of fundamental procedure in the original proceeding, and to avoid treating an appeal as an overall substitute for the original proceeding.”

3. The counsel contented that the non-furnishing of the recommendations would itself be sufficient ground to set aside the order and remand the matter for a fresh consideration. In Punjab National Bank v. Kunj Behari Misra, (1998) 7 SCC 84, at page 96 the Hon'ble Supreme Court in a context similar to the one arising out of such proceedings held -

“19. The result of the aforesaid discussion would be that the principles of natural justice have to be read into Regulation 7(2). As a result thereof, whenever the disciplinary authority disagrees with the enquiry authority on any article of charge, then before it records its own findings on such charge, it must record its tentative reasons for such disagreement and give to the delinquent officer an opportunity to represent before it records its findings. The report of the enquiry officer containing its findings will have to be conveyed and the delinquent officer will have an opportunity to persuade the disciplinary authority to accept the favorable conclusion of the enquiry officer. The principles of natural justice, as we have already observed, require the authority which has to take a final decision and can impose a penalty, to give an opportunity to the officer charged of misconduct to file a representation before the disciplinary authority records its findings on the charges framed against the officer.

20. The aforesaid conclusion which we have arrived at is also in consonance with the underlying principle enunciated by this Court in the case of Institute of Chartered Accountants. While agreeing with the decision in Ram Kishan case we are of the opinion that the contrary view expressed in S. S. Koshal and M. C. Saxena cases do not lay down the correct law.”

4. The counsel in the alternative submitted that in as much as an Appeal is a continuation of the original proceedings, the powers that are available to a Controller under S.57 are available to the Honble Board as well. The consideration by the Board would also be the preferable option since the parties would not be required to conduct a fresh hearing of the matter.

5. The counsel for respondent 2 submitted that Section 25(4) provides that the recommendation of the Opposition Board is to be received by the learned Assistant Controller who is adjudicating upon the post-grant opposition proceedings and not to any of the parties. The learned counsel submitted that the Appellant relied upon precedents to support their argument that the principle of natural justice demands that the copies of recommendation of Opposition Board ought to have been furnished to the parties to the proceedings.

6. The counsel for respondent 2 argued that the rule of natural justice operates in voids of a statute. In Mazharul Islam Hashimi vs. State of UP and Anr. (AIR 1979 SC 1237) the Hon 'ble Supreme Court at para 25 has held as under:

"25. It was observed in that case that it is a fundamental rule of law that no decision must be taken which will affect the rights of any person without first giving him an opportunity of putting forward his case. The main requirements of a fair hearing, as pointed out by this Court earlier, are: (i) A person must know the case that he is to meet; and (ii) He must have an adequate opportunity of meeting that case. These rules of natural _justice. however. operate in voids of a statute. Their application can be expressly or implicitly excluded by the Legislature.But, such is not the case here. On the contrary, the two Circulars issued by the Statement Government to which a reference has been made earlier, expressly imported these principles of natural justice and required that in all cases in which the services of an office or servant were to be determined on the ground of his unsuitability, they must be given an opportunity of personal hearing by the Committee."

7. The counsel submitted that in the present case there is no voids in the Patent Act and Section 25(4) is clear and unambiguous. It is therefore submitted that that appeal should not be remanded back to the learned Assistant Controller.

8. The Counsel for the respondent No.2 submitted that the learned Assistant Controller has followed the long standing practice in not supplying the copy of the recommendation of the Opposition Board to the contesting parties. Even as of now, copies of such recommendations are not supplied during post-grant proceedings.

9. The Counsel for the respondent No.2 added that none of the parties to the opposition including the Appellant requested for the supply of copy of such recommendation.

10.The Counsel for the respondent No.2 submitted that the Appellant urged the matter before the learned Assistant Controller without requiring the copy of recommendation knowing fully well that the learned Assistant Controller was hearing the matter upon receipt of such recommendation of the Opposition Board. The Appellant, thus, acquiesced and consented with the procedure of proceedings and now the Appellant cannot turn back to request remand on this issue.

11. The Counsel for the respondent No.2 submitted further that the Appellant has given up the granted specification and claims as well as the revised claims filed during the opposition hearing. The Appellant has amended the complete specification as well as the claims during the Appellate proceedings and in these circumstances there is no granted set of claims and specification which can be adjudicated upon by the learned Assistant Controller upon remand as a post-grant opposition. It is therefore, submitted that the Respondent No.2 as well as any third person would be prejudiced if the impugned order is set aside for fresh adjudication.

12. The Counsel for the respondent No.2 contended that the granted claim and specification as well as the revised claims before the learned Assistant Controller are obvious and otherwise not patentable. Similarly, the proposed specification and claims, before this Hon'ble Board, are also anticipated, not inventive, insufficient or otherwise not patentable. Therefore, it would not be in the interest of justice to remand the matter back to the learned Assistant Controller.

13. Section 25(3)(b) inter-alia provides that “…….refer such notice of opposition …………….to ……Board for examination and submission of its recommendations to the Controller.” This means the Boards recommendation should be submitted to the Controller only. We agree with the respondent 2 that Section 25(4) provides that recommendation of the Opposition Board is to be received by the Controller only. Section 25(4) mandates the Controller that on receipt of the recommendation of the Opposition Board and after giving the contesting parties an opportunity to be heard, the Controller shall pass an order.

14. Chapter V of the Patent Act deals with opposition proceedings to grant of patents. Section 25(1) of The Patents Act, 1970 (in short ‘Act) lists the various grounds on which any person may oppose the grant of patents. Section 25(3)(a) of the Act provides for the Controller notifying the patentee of such notice of opposition. Section 25(3)(b) of the Act deals with the constitution of the Opposition Board for examination and submission of its recommendations. The Opposition Board conducts the examination of the notice of opposition along with certain documents filed by the opponent under Rules 57 to 60 of The Patents Rules, 2003. This is seen from Rule 56(4) of the Rules. It also provides that the Opposition Board shall submit a report with reasons on each ground taken in the notice of opposition with its joint recommendations. Once the presentation of evidence is complete and the recommendations of the Opposition Board have also been received by the Controller, the Controller fixes the date of hearing as per Rule 62(1) of the Rules. The Controller also gives notice to the parties for such hearing and may require the members of the Opposition Board to be present at the hearing. Rules 62(1) of the Rules provides for the parties to inform the Controller that they desire to be heard. Rule 62(5) of the Rules provides that the Controller, after hearing the party or parties desirous of being heard or if neither parties desires to be heard, then without a hearing, and after taking into consideration of the Opposition Boards recommendations shall give his decision upon the Opposition. Therefore Section 25 of the Act and Rule 56 and Rule 62 of the Rules together clearly indicate that the recommendations of the Opposition Board is an important document which is taken into reckoning by the Controller before giving his decision on the opposition. It is true that Rule 25(4) of the Act merely states that after receipt of recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall pass such order. There is no specific mention that the recommendations of the Opposition Board should be made known to the patentee and opponent. But we are of the opinion that this is implicit in the relevant Section and the Rules.

15. The Opposition Board may make recommendations that the patent suffers from serious defects like lack of novelty, lack of inventive steps etc. so the patentee is entitled to know why the Opposition Board came to the conclusion, only then at the time of hearing they will be able to meet the recommendations of the Opposition Board, giving reasons why those recommendations were not to be accepted. On the other hand if the Opposition Board recommends that the patent shall be granted since the invention has novelty, inventive steps etc., unless the opponent has an opportunity to see the recommendations he will not be able to persuade the Controller why the recommendations of the Opposition Board must not be accepted. In either case the opportunity which is mentioned in Section 25(4) of the Act becomes an empty shell of an opportunity if the Opposition Boards recommendations remain secret. Then again there is no purpose in giving the Controller the discretion to require a member of the Opposition Board to be present at the hearing, unless there is a possibility that the member may be asked to explain why they made these recommendations. That situation will never arise if the patentee and the opponent are totally in the dark regarding the recommendations of the Opposition Board when they attend the hearing. Therefore the judgment relied on by the learned Counsel for the appellant in the Punjab National Bank (cited supra) case is clearly applicable to the present case. We think that the grievance of the appellant is well founded. But we are not remanding the matter as the appellant had applied for the certified copy of the recommendations and has made its submissions after taking into consideration those recommendations. So we feel that remanding the matter would only unnecessarily delay the proceedings. But it is made clear that whenever the Opposition Board makes recommendations both the patentee and the opponent are entitled to know the contents of the recommendations before they attend the hearing.

16. The matter may be looked at from another perspective, too. If the recommendations of the Opposition Board are adverse to the patentee and the contents are made known to him before the hearing it is quite possible that he may seek amendment of the claim and/or the specifications so that the defects pointed out by the Opposition Board are rectified. The spirit of the enactment is also to ensure that where there is a real invention, patent shall be granted. This can be seen from Section 58 of the Act which provides that in any proceedings for revocation if it is decided that the patent is invalid the Appellate Board or the High Court may allow amendment under the Section instead of revoking the patent. The same is applicable to the Controller also. Therefore viewed from any angle we are of the opinion that the recommendations of the Opposition Board must be made known to the patentee and the opponent before the date of hearing. This objection of the appellant is sustained.

Inventive step

17. We shall now deal with refusal of the patent on the ground of lack of inventive step. During the post grant opposition proceedings the opponent cited following documents in respect of inventive step:

D1 : RU 20 54 656

D2 :US 4,152,069

D3 :GB 2 081 439

D4 :DIAEXPERT SYSTEM September 1996

D5 : WO 99/61890

18. The respondent 1 found that a person skilled in the art can easily combine the teaching of D4, D3 and D5 for reaching the objective of the method as claimed and a person skilled in the art is capable of manufacturing an apparatus of contested patent by combining the teachings of D2 and D5. Therefore, he held that the invention as claimed lacks inventive step.

MOSAICING AND NON-OBVIOUSNESS

19. The counsel for the appellant argued that it is well established law that mosaicing cannot be allowed unless the reading together was overwhelmingly obvious to a person skilled in the art. He relied on Delhi High Court in Glaverbel SA v. Dave Rose, 2010 (43) PTC 630 (Paras 36 onwards).

In the words of Lord Reid in Technograph vs. Mills and Rockley [1972] R.P.C. 346, as cited in the above case, "…it must be a mosaic which can be put together by an unimaginative man with no inventive capacity." This test is further applicable only to determine if there is an inventive step and not for the purpose of determining the question of novelty. There can be no reading together of the prior art unless it is completely obvious. The principle has been summed up by the House of Lords in H.G. Martin and Biro Swan Ld. v. H. Millwood Ld. 1956 RPC 125 wherein it was observed “that to establish anticipation it must be shown that in some prior publication there is to be found information about the alleged invention, equal for the purposes of practical utility to that given by the patent in the suit. It is not enough, to use that familiar metaphor which has perhaps been run to death, to make a mosaic of prior publications and to say that thus, the whole invention has been already disclosed. In the instant case, the prior art which are sought to be read together are different processes which operate through different apparatuses for different purposes as will be demonstrated below”.

20. The counsel for the appellant further submitted that reference may be made to the Chart set out in Page 11 of Volume 7 where the features of the invention are compared with the above citations.

“IMAGE”

21. The counsel for the appellant submitted that the respondent 1 was in error in attempting to read Diaexpert system, GB 2081439 and WO99/61890 together as they are not for the same purpose and involved different methods. The counsel submitted that the method of the DiaExpert system does not use the scan of the outer surface and knowledge of the refractive index to calculate a 3-dimensional image including the inclusion with respect to the outer surface, in order to localize the inclusions with respect to the outer surface of the diamond. In the DiaExpert system the location is determined by taking the cross section of a horizontal line and a vertical plane.

22. The counsel for the appellant submitted that GB2081439 discloses a method for determining a parameter of a stone by rotating the stone, providing an image of the stone, and sensing the edges of the image at a number of different relative angular positions of the stone, and using information derived from the edges to determine the parameter. Such a parameter will typically be the shape and size, the profile, etc. However, the method is not suitable for localizing a defect. Counsel submitted that Page 1, lines 58-60 mentions that in the case of a rough stone when calculating the largest possible polished stone account can be taken of an inclusion within the stone. It does not provide any further explanations on how to localize the inclusion. Similarly Page 2, lines 22-58 merely describe that an image (2 D) of the stone is obtained on the screen and that the edges are detected or sensed. Page 2, lines 25-26 state that the viewer can be tilted through an angle alpha, but that the preferred viewing position is the horizontal position. This paragraph does not relate to inclusions, and does not disclose the observation in more than one direction. Similarly, page 2, lines 54-60 relate to the sensing of the edges at different angular positions of the stone, and page 2, lines 80-101 relates to the method (i.e. the sensing of the edges for one or more angular positions) being carried out for two viewing directions (two different angles alpha).

23. According to counsel WO99/61890 (D5) relates to a method and apparatus for grading of gemstones. In D5 the idea is to obtain images from the front, back, top and bottom of the gemstone from a plurality of light sources and locations (page 17, lines 9-11) and to derive information from those images, such as colour, clarity, cut, shape, brilliance, etc. Further in D5 flaw identification may be performed manually as illustrated in steps 254 and 256, see page 27, lines 13-14 and figure 10C. Further lines 16-29 of page 27 describe that a processing algorithm may be used. Flaws (i.e. inclusions) present in the obtained images are identified and marked (page 27, lines 24-25). However D5 does not specify how flaws could be localized in a stone.

24. The counsel for the appellant submitted if the skilled person combines the method of D4 with D3 and D5, he does not arrive at the invention. The counsel submitted that combination of D3, D4 and D5 would result in using a combination of techniques but not in the method of the invention. The method claims according to the counsel of the appellant differs from D4 in that:

1. a scan is taken of the outer surface of the diamond at an arbitrary initial position.

2. wherein the translation and rotation for every direction of observation is registered with reference to the initial position.

3. wherein the registered translations and rotations, the scan of the outer surface and knowledge of the refractive index of the diamond are fed in a computer to calculate a 3-dimensional image including the inclusion with respect to the outer surface, in order to localize the inclusions 8 with respect of the outersurface of said diamond D.

25. In reply to the mosaicing chart of the appellant the respondent No.2 submitted that all the claimed features of the impugned patent are not present in the cited prior arts. However, through this chart the Appellant has introduced features of apparatus/method which are neither claimed nor disclosed, at all, in the impugned patent. These are as under:

  1. Appellant refers to two light sources: (i) back light source for model building and (ii) light source for inclusion viewing. However, both in the description (at page 24 Vol.4) and in Figure 1 (page 30, Vol.4) only one light source has been identified. Even in the apparatus claim only one light source is claimed.
  2. Inclusions are viewed on a TV screen (which is in separate column than the column mentioning “Computer”): Specification or claim only disclose a computer and no TV has been disclosed.
In addition, the chart includes the following features that are not comprised either in the main or in the dependent claims, and is not supported by the description:
  1. Three translational axes and two rotational axes. This feature is also not supported by the description which describes three translational and three rotational axes. The specification discloses translation or rotation of holder and not the three translational axes and two rotational axes.
  2. The use of 3D model for plotting inclusions. No enabling disclosure in the Specification that 3D model is used to plot the inclusion. Additionally this is not supported by the claim language. Further, support for 3D image has been deleted from the amended specification (please refer lines 3-4, Page 48, Vol.4)
Furthermore, the chart includes the following features, which though being not present in the opposed patent, are not disclaimed in its claims and therefore are irrelevant to the analysis and it seems that they have been included in the chart intentionally to increase the number of features and complicate the picture:

a. Immersion media;

b. Minimum two images refraction of one inclusion has to be seen at time.

Therefore, all the above features are irrelevant to the analysis of the claims and have been deleted in the chart below. Importantly, the Appellant through the said Chart has tried to demonstrate that the following features are not present in any of the prior art documents:

a)Use of 3D external model for plotting inclusion;

b)Generation of cylinders encompassing the inclusion profile; and

c)Consideration of refractive index of diamond and air interface.

The counsel for respondent 2 contended that this conclusion is totally false for the following reasons:

a)Use of 3D external model for plotting inclusion is explicitly disclosed in DiaExpert and the same is substantiated by Dr. Gandhi (expert of Appellant). Additionally this feature is at least present in “lecture of Sivovolenko” and WO890. In the chart below, other documents are also highlighted disclosing the said feature.

b)For optical cylinders, it is submitted that the Appellant in its Rejoinder Affidavit at para 5 (last line), page 81, Vol.I clearly states that the optical cylinder is a light beam i.e. line. This also so contended by the Appellant in the Russian opposition and the opposition board in Russia also held that the optical cylinder is an optical light beam (please refer 3rd para, at page 149, Vol.2). Even during the arguments the optical cylinder has been understood in the same very manner. Therefore, it is totally erroneous and misleading to assert that optical cylinder is different than a light beam or line. In any case, optical cylinder and line have been equated in the specification as such. Therefore, this feature should be considered and equated with a light beam i.e. line. Then, DiaExpert (as demonstrated by Dr. Gandhi) and RU656 can easily be held to have the said feature.

c)Every prior art disclosing the method or device for localizing inclusion has considered that refractive index of the diamond is a matter of concern; due to this concern, in Diaexpert inclusions are viewed along an axis perpendicular to the diamond surface, thereby avoiding the necessity to correct the error creeping due to the difference in refractive index between diamond and air. All other prior art has adopted one or the other method for this correction. Exactly the same method (use of snells formula) has been taught in the Belgium patent no.821278 (Vol.3 Part II, Page 195). Other methods adopted in other prior arts are being highlighted in the chart below.

Thus, it is submitted that the Appellant has unnecessarily tried to create confusion with the said chart.

According to the counsel for respondent 2 a proper study of the prior arts would reveal all the claimed features of the impugned inventions highlighted below:

Features/Elements of the impugned patentPRIOR ARTS

(disclosing the relevant features)

COMMENTS
Light source“RU 2054656 vol.5 (line 7 at page 39)

Users Guide of DiaExpert vol.2 (Point 2 at page 77)

Lecture by Sivovolenko vol.2 (technical features of the optical set at page 38-point 5 at page 39)

WO099/661890 vol.5 (lines 5-6 at page 70)

GB2080712 vol.3 (line 23 at page 135)

GB2081439 vol.5 (Though light source is not explicitly mentioned, it can be easily inferred by a person skilled in the art as the TV viewer is capturing an image of the diamond which cannot be obtained without using a light soruce – figs.1and2 at page 134)

SU408200 vol.6 (para 6 at page 98)

US4152069 vol.5 (lines 21-22, col.3 at page 131)”

Only one light source is the part of impugned invention.

The Appellant is trying to introduce new feature by their chart. This clearly explains that the invention as claimed in the impugned patent lacks enabling disclosure.

Camera“RU 2054656 vol.5 (lines 8-9 at page 39)

Users Guide of DiaExpert vol.2 (line 3 at page 55)

Lecture by Sivovolenko vol.2 (Camera can be easily inferred by a person skilled in the art as 3D image of the diamond is obtained-figs. 1 and 2 at page 39)

WO099/661890 vol.5 (lines 19 at page 61)

GB2080712 vol.3 (line 7 at page 135)

GB2081439 vol.5 (line 22 at page 136)”

Computer for computation“RU 2054656 vol.5 (lines 31-32 at page 38 and lines 16-18 at page 39)

Users Guide of DiaExpert vol.2 (point 5 at page 49)

Lecture by Sivovolenko vol.2 (technical features of the optical set at page 38-point 5 at page 39 and conclusion at page 40-point 5)

WO099/661890 vol.5 (fig.1 at page 85 and line 19 at page 50)

GB2080712 vol.3 (line 85-86 at page 136)GB2081439 vol.5 (lines 23-24 at page 136)”

Translation and/or rotation of the stone“RU 2054656 vol.5 (means for rotation-lines 27-28 at page 39). Though the means for translation is not explicitly shown, it can be inferred by the fact that the crystal is reoriented (lines 27-28 at page 39).

Users Guide of DiaExpert vol.2 (means for rotation – lines 1-2 at page 58). Though the means for translation is not explicitly shown, it can be inferred by the use of different objectives/lenses for magnification (lines 3-5 at page 58).

Lecture by Sivovolenko vol.2 (technical features of the optical set at page 38-points 4and6 at page 39 and Fig.1)

WO099/661890 vol.5 (lines 6-11 at page 63 and line 22 at page 62)

GB 2080712 vol.3 (lines 69-71, 77-78 and 85 at page 134)

GB 2081439 vol.5 (lines 12-28 at page 136)

SU408200 vol.6 (para 7 at page 98)

US 4152069 vol.5 (lines 41-45 and 59-63, col.2 at page 131)”

Impugned patent:

- admits that “Translation and Rotation” of the holder can be substituted with the movement (manual or otherwise) of the scanner – last two lines at page 22: Vol 4 (granted specification);

Further, the apparatus claim refers to translation and/or rotation.

Even otherwise ascertainment of depth position of inclusion inside the diamond in any prior art is itself indicative of consideration/ ascertainment of all the three coordinates of the inclusion-thus all the three axes are considered. 2 Rotational freedoms have also been taught in the prior art.

Makes 3D external model of the rough diamond“RU 2054656 vol.5 (Fig.2, line 16 onwards at page 39)

Users Guide of DiaExpert vol.2 (point 4 at page 55, figure 12 at page 61 and figures 16,17 at page 65)

Lecture by Sivovolenko vol.2 (figures 1 and 2 at page 39)

WO099/661890 vol.5 (lines 12-13 at page 63, lines 13-19 at page 64 and lines 10-12 at page 70)

GB2080712 vol.3 (3D model of diamond i.e. scanning can be inferred from the fact that it is possible to improve the image of the diamond on the screen by sensing the diamond images and obtaining a silhouette – lines 40-46 at page 135 and fig.2 at page 133)

GB2081439 vol.5(3D model of diamond i.e. scanning can be inferred from the fact that it is possible to enhance the image of the diamond on the screen and obtaining a silhouette – lines 38-46 at page 136 and fig.2 at page 134)

Belgium Patent No.821278 vol.3 Part-II (lines 10-13 at page 196)”

Minimum two of readings required“Users Guide of DiaExpert vol.2 (point 5 at page 77) – At least 2 readings

V.I. Epifanov vol.5 (para 3 and 4 at page 145 and fig.48 at page 141) – At least 2 readings

RU 2054656 vol.5 (lines 16-25 at page 39) – 2 sets of readings, one in air and one in water

GB2081439 vol.5 (lines 69-93 at page 135) – At least 2 readings”

Uses 3D external model for plotting inclusions“Users Guide of

DiaExpert vol.2 (page 55 points 1-7 and page 77 entire section [specifying defective points]. The very indication that the defective points are determined after measurement of the diamond of the stone and prior to allocation, means that the user is presented for the purpose of the allocation with a 3D model (obtained by said measurement) with the defective points incorporated therein (for use in the allocation). Also, declaration of Zeev Leshem vol 2. (paras 8 and 9 at page 175)

Lecture by Sivovolenko vol.2 (figure 4 at page 39 and figure 6 at page 40)

WO099/661890 vol.5 (lines 10-12 at page 70, lines 19-23 at page 73 read along with lines 12-13 at page 63 and lines 13-19 at page 64)

RU 2054656 vol.5 (Figure 2, line 16 onwards at page 39)

GB2080712 vol.3 (fig.2 at page 133, lines 40-46 and 93-97 at page 135)

GB 2081439 vol.5 (lines 38-46 at page 136 and fig.2 at page 134)

Belgium Patent No.821278 vol.3 Part-II (lines 10-13 at page 196)”

Generates (cylinders) lines encompassing inclusion profile“RU 2054656 vol.5 (Figure 2, lines 16-25 at page 39)

Users Guide of DiaExpert read with Report of Dr.P.J. Gandhi vol.7 (last para at page 7 read with figure at page 8)

Cylinder has understood and explained by the Appellant as line only.
Refractive index of diamond and air interface is consideredBelgium Patent No.821278 vol.3 Part-II (lines 5-20 at page 195)

V.I.Epifanov Vol.5 (paras 3 and 4 at page 145)

RU 2054656 vol.5 (lines 33-39 at page 37 and lines 11-13 at page 39)

Report of Dr.P.J Gandhi on DiaExpert vol.7 (paras 3,4 at page 7)

Lecture by Sivovolenko vol.2 (program features-points 3 and 9 at page 38, figures 2 and 4 at page 39 and figure 6 at page 40)

WO099/661890 vol.5 (lines 24-26 at page 63)

SU408200 vol.6 (para 7 at page 99)

US4152069 vol.5 (lines 61-66, col.2 at page 130 and claim 11 at page 132)”

26. In respect of Mosaicing the counsel for respondent 2 further submitted that in the analysis of determination of inventive step of a claim having a combination of features combination of documents is permissible. According to the counsel various documents and technologies available in public domain or prior arts can be read together to demonstrate that the impugned combination invention is obvious to a person skilled in the art.

27. So far as the allowability of Mosaicing of the various related documents for ascertaining inventive step is concerned we find an interesting observation made regarding allowability of Mosaicing in obviousness by Lord Reid in Technograph vs Mills and Rockley [1972] RPC 346 at page 355 :

“When dealing with obviousness, unlike novelty, it is permissible to make ‘mosaic out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.”

28. In Delhi High Court in Glaverbel SA v. Dave Rose, 2010 (43) PTC 630 para 76 and 77 we find -

“76. The observation of Lord Reed in the case of Technograph vs. Mills and Rockleys case (supra) has been cited to show that mosacing is permissible in order to find the element of obviousness. To this, I would say that I have already discussed the aspect relating to the novelty and inventive step which are the two independent tests of patentability. The inventive step of course has to be tested on the basis of the techniques and technologies which are existing and preexisting to the date of the patent and to find the same as to whether the same is obvious to the inventor of the patent.

77. That being the position, there would be no harm in relying upon the prior arts so far as it makes sense to show that by studying these prior arts, the inventors job is reduced to sitting in the workshop. Thus, this court holds that mosaicing may not be relevant to undermine novelty in the circumstances of the case but obviousness has to be seen while looking into the techniques and technologies of existing and preexisting state of art.”

29. We are therefore convinced that the mosiacing of prior art for ascertaining the inventive step is allowed.

30. Having said so now we shall see the relevance of D3, D4 and D5 in respect of method claims and D2 and D5 regard apparatus claims. We find D3, D4 and D5 as relevant as all of these relates to method of observing diamond through light to ascertain its outer shape and/or presence of flaws inside. Rotation and/or translation of diamond holder is used in these citations for observing the various facets of diamond. The close prior art is Diaexpert (D4). The appellant expert also compared working of Diaexpert (D4) with Octonus (contested patent).

31. Before we proceed further let us see what is disclosed in the specification.

Fig.1 represents the scanning apparatus for carrying out methods for localizing inclusions in a diamond, the apparatus as disclosed is comprising of a holder upon which a diamond is fixed, with arbitrary and motor means which can possibly rotate the holder and/or to translate the holder in order to position the diamond in an optical axis a, which is the optical axis of a projecting light-beam projected through the diamond unto a half permeable mirror, refuting in a diamond image at a microscope and/or camera and to a scanner.

Fig.2, the specification describes in details steps (a)-(d) of methods for localizing inclusions in a diamond.

The specification of the contested patent describes steps of the method as follows

(a) the diamond is fixed on a table and scan of outer surface of the stone is taken at the initial position data Xo, Yo, Zo, αo, ßo, ץo (predetermined angle claimed in claim 1) . Claim 1 recites the step of observing the diamond in holder at predetermined angle to obtain an image of the outer surface by scanning. are registered and taken as a reference. The registered initial position data unambiguously defines the spatial position of the diamond while the possibility of obtaining a three dimensional image of outer surface of an object, e.g., using a 3D scanner is known in the art.

(b) the diamond is rotated to make the necessary inclusion visible through the microscope ,

(c) the inclusion is moved in front of the crosswire of the microscope. The operator looking through the microscope perform this by controlling the table with the holder and the translations X1 , Y1 , Z1 , and rotations α1, ß1, ץ1 of the diamond on the table are registered.

(d) The procedure (a-c) is repeated to register a different set of translations and rotations. Different translations and rotations are understood as either viewing through different facets of the diamond, or viewing through the same facets but from different directions.

The specification further states that the position of the inclusions inside the diamond is calculated out from the registered translations and rotations, the scan of the outer surface and knowledge of the refractive index of the diamond.

32. Thus according to the description there are atleast two methods for localizing the inclusions.

(i) First method uses at least two images to build a tridimensional image of the diamond wherein the location of the inclusion is calculated using at least two images (see granted claim 2).

(ii) In the second method optical cylinder or lines are determines to indicate the direction and apparent size of the inclusion when observed in a certain direction. According description (page 5 line 34 - page 6 line1) the nearest cross-centres of these cylinders or lines determine the location of an inclusion. A microscope is used to correctly position the diamond so that the inclusion is in the front of the crosswire of the microscope (see page 5 line 11-16 of the specification).

33. The specification further describe that “viewing direction with respect to diamond can be carried out by repositioning the scanner and so on, it is…………easier to rotate and/or translate the holder with diamond with respect to a fixed direction of observation.”

34. Further the specification disclose that “according to further embodiment the inclusion can be localized by using scanner having focusing means to obtain the depth position along said direction of observation by focusing said inclusion.”

35. As we understood Claim 1 relates to a method to localizing inclusions in a diamond (D), characterised in that said diamond is fixed on a holder (2), said diamond is observed under a predetermined angle (refer Figure 1) to obtain an image (of the first side), further a second measure is carried out (second image of second side) to obtain two data i.e. two distinct images to calculate in a computer in order to localize the inclusion with respect to the outer surface of said diamond. In other words the orientation of two sides of the diamond must be known in order to be able to calculate the refraction of the light at the interfaces of these sides. It is pertinent to note that in order to know the orientation of these sides the shape of the diamond must be ascertained. The shape of diamond can be determined by scanning byobtaining a three dimensional image of its outer surface e.g using a 3D scanner is known in the art. Diaexpert system (D4) is known to localize the inclusions falling on the cross section of lines using 3D model.

36. The appellant contended that though this system calculates a 3D model, but it is silent about translation, correction factor and the 3 co-ordinates relied upon by the present invention. Hence, the position of the inclusion in the diamond is not located three dimensionally. The difference between the claimed invention and the subject matter disclosed in the DIAEXPERT system is clearly explained and analyzed in the expert opinion provided by Dr. P.J. Gandhi in which he concluded that the position of the defect in the diamond using DIEXPERT is not derived based on the three dimensional image of the scanned diamond. Also, it does not consider the factor of refraction index of the gem to locate the exact position of the defects in the gem.

37. The counsel for respondent 2 contended that DiaExpertTM system comprises, inter alia, a computer, a video camera, light source and a rotating platform suitable for holding a gemstone. [User's Guide of DiaExpert - (Page 41, Vol. 2, at pages 45, 55, 58, 61, 65 and 77] –where

The gemstone is held on the rotating platform and is scanned by the video camera while rotating in order to generate a three-dimensional model/image that includes the stone's contours. If the stone has an internal inclusion that one wants to take into consideration, the system enables the user to determine the position of the inclusion in the gemstone by scanning the stone's outer surface, illumination of the stone in order to localize the inclusion inside it, operation of the system in order to rotate the stone on the rotating platform so that the user is able to observe the stone from at least two viewing angles, and registration of the rotation relative to the initial position. Thereafter, the three-dimensional model containing the inclusion is displayed. The three-dimensional model and the inclusion inside show the inclusion relative to the outer surface, as claimed, enabling defining different planes in space according to which the rough stone will be cut so as to obtain a final gemstone of optimal size and quality. In addition, it enables dividing the rough gemstone into cross sections so that it is possible to get rid of that same inclusion.

Page 77 describes the steps for specifying defective points under the title "Specifying Defective Points". In the opening para under said title, it is stated as under (last line):

"..., Specify the defects after measurement, and before allocation. "

The above makes it is quite clear that specification of defects is to be performed after measurement of the stone i.e. after its 3D image has been built and before the allocation of the final diamond in the rough diamond. Thus, the 3D image is essentially taken into account in locating the inclusion in DiaExpert. This can also be verified from the declaration of Zeev Lesham (page 175 Vol.-2), filed on behalf of the Respondent No.2 during the post-grant opposition proceedings. Contents of paras 8 and 9, inter alia, and of this declaration at page 178 V 01.2 are important.

38. Appellant expert Dr. P.J. Gandhi stated that the product DiaExpert which he examined is dated 8th August, 1999. This report clearly shows all the features of method mentioned above are in fact present in DiaExpert except that optical cylinder is formed in the contested patent in contrast to intersection of lines for location of inclusions.

39. According to Claim 2 first method uses at least two images to build a tridimensional image of the diamond wherein the location of the inclusion is calculated using at least two images and direction of observation is at least changed one time. DiaExpert also shows how two distinct images are taken though two different facets .By using these images, the location of the inclusion can be determined.

40. Claim 3 relates to rotation and translation of the holder .Diaexpert, GB ‘439 and WO 99/61890 teaches how the holder with diamond is rotated and WO 99/61890 specifically shows translatable stage.

41. Claim 4 relates use of correction factor taking into account the refractive index of the diamond. Use of correction factor taking into account the refractive index of diamond is a common general knowledge. Appellant differentiated GB439 stating that the method is not suitable for localizing a defect.

42. Claim 5 Relates to cross-section of lines or optical cylinder which is used to find the location of the inclusion. In Russian patent the inclusion displayed in figure 1 and 2 is seen to lay on lines 14 and 15, which are used in the calculations to find the location where they cross each other ,indicating the location of the of the inclusion. In Diexpert also as concluded by appellants expert Dr Gandhi intersection of lines is used for location of inclusions. The specification also mentions that inclusions are located on the cross section of optical cylinder or lines. Therefore it may be understood that optical cylinder is an optical beam having cylindrical shape either in form of line or optical cylinder. Since formation cross-section of lines or optical cylinder is disclosed in the specification these terms appears to relatively linked to size of the beam used or the size of inclusion. The specification does not explain further when the line will be formed or when optical cylinder will be observed. However as both are possible for finding the location we find Russian patent and Diexpert teaches the invention as claimed and it obvious for person in skill in the art of locating the diamond inclusions to seek formation cross section of line or optical cylinder depending on the size of the inclusion.

43. The distinction of the invention according to Claim 6 of the contested patent is that a scanner having a focusing means is used to obtain a depth position along said direction of observation by focusing said inclusion. This can be understood as third method for determining the inclusion. Contested patent also seeks to attain the technical result of enhancing the accuracy of localizing the inclusion. US Patent 4152069 teaches the use of a scanner with a focusing means to obtain a depth position along the direction of observation by focusing said inclusion. The use of a scanner with a focusing means is also aimed at enhancing the accuracy of the method.

44. Claim 7 originally filed relates to an apparatus comprising a holder comprises a holder (2) for supporting the diamond, a light source, a scanning means and/or microscope, suitable to carry out the method as claimed which is disclosed by WO 99/61890 (D2) wherein the apparatus comprises a holder (59) for supporting the diamond, a light source (102), a scanning means (49), a computer (14) and a camera (12). In the description apparatus is not disclosed with computer. In figure 2A-2D, 3 (camera or microscope) or 4 (scanner) is shown for making observations. Hence both can be termed as scanning means. In D 2 linear positioner (49) allows the camera (12) to be moved along the focal axis (Page 15, lines 21-22). Moreover there is no reason to believe that the apparatus disclosed in US Patent 4152069 would not be suitable to carry out the method as claimed (refer Col. 3,line 51 – Col. 4, line 4).

45. In view of above analysis and findings we are inclined to agree with decision of the respondent 1 in relation the lack of “inventive step” of claimed method and apparatus. We, therefore, affirm it.

Additional documents submitted by respondent 2

46. The counsel for respondent 2 also relied on two additional documents at appellate stage VIz Speech of S. Sivovolenk dated 1997 and Belgian Patent No.821278 Of 1974 in M.P. No.54/2012.

Speech of S. Sivovolenk dated 1997

47. The counsel for respondent 2 submitted that Lecture by Sivovolenko - (page 37, Vol. 2) discloses following features ofthe invention:

(i) Diamond fixed on a holder that has rotational and translation freedoms;

(ii) Creation of 3D model/image of the diamond (Fig. 2and3 at page 39);

(iii) Viewing the inclusions by rotation and translation;

(iv) Consideration of refracted/virtual location of inclusion and actual/reallocation of inclusion are clearly demonstrated (Fig. 4 at page 39);

(v) Determination of actual inclusion with regard to outer surface (Fig.6 at page 40).

(vi) Determination of depth position of the inclusion in the rough diamond - (Fig. 6 at page 40)

According to the learned counsel the main features ofthe system disclosed in the said lecture by Sivovolenko as well as the program and technical features as detailed at- page 38 if read with page 39 and 40, discloses the impugned invention in totality.

48. The counsel for Appellant contended that the Lecture by Sivovolenko cannot be considered as a prior art because it was only attended by around 40 people and the lecture was not as such in public domain. According to the counsel this speech was uploaded onto the internet only after 2001 as the domain name “octonus.ru” from which it has been sourced was created only in 2001. Therefore, this article was not available at the time of the priority date. Moreover, this article was not published immediately after the lecture in 1997 and is misleading as to the nature of the lecture. The lectures main topic related to a software system to calculate the best solution for orienting and scaling of a polished diamond based on the scanned outer geometry of the diamond. The claimed invention as not discussed and the appellant have filed declarations from persons who attended the lecture to this effect. In support oftheir contention, the Appellant has filed and relied upon a note/letter issued by Paul Van der Steen, which stated that

“CEO of Matrix Diamond Technology. (page 181 of V 01.2). He admits to have attended the lecture of Mr. Sivovolenko held on Thursday, 11 December, 1997 at 6.00 pm in Belgium. He further admits that around 40 people were present and attended the said lecture. He himself was an expert/related to the field as well as the other attendee. However, the said note went on to state that Mr. Sivovolenko did not discuss a method/system for localizing inclusions.”

49. The counsel for the respondent 2 submitted that the contents of lecture of Mr. Sivovolenko (as on record) has not been disputed and only the same has been tried to be interpreted in misleading manner. He argued that once it is found that inventor of the impugned patent is Mr. Sivovolenko and the lecture in issue was delivered by him, statement of an attendee of the lecture is of no significance. The counsel further submitted that knowledge of invention even to one person of public before the priority date of patent, destroys the novelty of the patent. In the present case, admittedly, around 40 persons, all knowledgeable/expert of the concerned technology, attended the lecture. Therefore, it is totally incorrect to allege that the said document (lecture of Sivovolenko) cannot be relied as a prior art.

50. We found this document is relevant as the method as claimed by the impugned patent was disclosed in the lecture of Sivovolenk in 1997 on advance d computer technologies for processing rough diamonds .The system described in the lecture is a simple 3-diamentional intelligent estimator. In description of the system it was stated that the crystal holder has up to two rotational freedoms and upto 2 linear translation freedoms. It also described how the surface model of rough diamond is build. Next step is to set inclusions in the model. In the conclusion it is inter alia stated that

“inclusion recognition (location) and processing ………become easy by two rotational freedom ,two sources of illumination (front and back) and soft ware support for inclusion localization and

Optimization on the base of microtomographic data set for non destructive shape analysis and internal inclusion localization.”

51. We do not agree with the appellant that disclosure in lecture will not amount to anticipation. Disclosure of invention by the inventor even to a single person of public before the priority date of patent destroys the novelty of the invention. Therefore, the claimed invention is anticipated by this document.

Belgian Patent No.821278

52. The counsel for the respondent filled MP for submission of additional patent document [Belgian Patent No.821278] at the appeal stage. Since we have already stated that appeal is a continuation of the opposition proceeding we are allowing this M.P. No.54/2012. Further in patent cases we cannot ignore the prior art citations even where the additional documents are filled at the appeal stage particularly when they are relevant. However to meet the requirement of natural justice the contesting party shall be given an opportunity to defend and present their argument which was given to the appellant in the present case.

53. The counsel for respondent 2 submitted that inventor of Belgium patent No.821278 is Chandesais, Jean who happened to be partner of Diamcad (refer page 202 Vol. 3 Part II). The counsel of submitted that Belgium patent disclosed the method for accurately measuring the depth location of the impurities/inclusions in a diamond, when the line of sight is not perpendicular to the surface of the diamond [lines 13 to 25 at page 194]. According to the counsel this patent also clearly teaches the effect of refraction on the surface of diamond and the method employed to do the necessary correction in order to accurately determine the depth of the inclusion in the diamond, when the line of sight is not perpendicular to its surface and the formulas to calculate correction factor due to refraction including the formula of Snell's law are disclosed (at page 195). Further this patent also teaches scanning of the diamond for the purposes of determination of depth position of the inclusion (lines 10-13 page 196).

54. The counsel for the appellant argued that Belgian Patent No.821278 in the NAME OF JEAN CHANDESAIS OF 1974 is not relevant as the new document discloses mainly two techniques for locating a defect in a diamond. A) A direct technique. see figure 1, where an inclusion is observed perpendicular to the face of a diamond, wherein they focus successively on the surface of the diamond and on the lower point of the inclusion and b) An indirect technique, see figure 2, where a real image of the inclusion and a mirrored image of the inclusion are observed perpendicular through a face of the diamond. Further , it is submitted that as soon as the depth location of the impurity is known, the extent of the mass loss which is associated with the operations for removing the impurities, should be calculated. Moreover for rough diamond the further location of the impurity should be taken into account, and also the external shape of the diamond, which can be determined using a.o. a file projector. The learned counsel submitted in both techniques the inclusion is observed perpendicular on the surface and no translations/registrations are registered. Further according to the counsel it is not calculated as a 3D model including the inclusion with respect to the outer surface. Further, the outer surface of the diamond is not used for calculation the location of the inclusion. Also the reference to the external shape in the passage cited above refers to the fact that this shape is used in the calculation of the mass loss. The counsel argued that If this document were to be relevant, quod non, then the examiner would have mentioned this document in the search report established by the European patent office since the European patent office has access to Belgian patents.

55.Belgium patent discloses a method for accurately measuring the depth location of the impurities in a diamond using microscope by taking direct measurement (perpendicular to observation) to focus successively on the surface of the diamond and on the lower point of the inclusion and indirect measurement where impurities are observed through a face under which they mirror .The formulas to calculate correction factor due to refraction including the formula of Snell's law are disclosed at page 195.This patent also employed Snell's law to do the necessary correction in order to accurately determine the depth of the inclusion in the diamond. This patent is relevant prior disclosure when combined with teachings of Diaexpert and Sivovolenko, would make the method as claimed in the impugned patent obvious to the person skilled in the art.

Insufficiency of disclosure

56. On the onset let us see the material on which the Assistant Controller relied to form his opinion relating insufficiency. Main argument of opponent being ‘description is not clear how the second measurement is carried out in absence of first measurement. Opponents arguments basically related to

“that the instant patent specification does not fully and sufficiently describe the features of the invention. The opponents further argued that the description is not clear how the second measurement is carried out in the absence of first measurement. Further they argued that the claims do not clarify the meaning of first or second measurements and the obtained image is a resultant of first or second measurement. They further indicated that “the predetermined angle” referred in the claims are neither defined in the specification nor in the claims. Further the claims are referring to a calculation to be performed for arriving at the 3D image of the inclusion. The Opponents also pointed out that the specification is not clearly describing how the calculation is performed. The Opponents argued that nowhere in the specification the “correction factor” is disclosed or how the “correction factor” is determined. The “focusing means” is used to obtain depth position of inclusion, however there is no clue provided in the claims or in the specification regarding the same.”

57. The counsel for appellant while asserting the sufficiency of descriptions relied on Delhi High Court, decision in Raj Prakash Vs. Mangat Ram Chowdhary And Ors., AIR 1978 Del 1, and stated that the test to be followed in determining the sufficiency of disclosure in the following terms:

"The onus as to the invalidity of a plaintiff's patent and the grounds of insufficiency of description, want of novelty, absence of inventive steps and want of utility was rightly placed on the defendants. The learned Judge further observed that in an action for infringement of patent to meet the defense under Section 29(2) read with Section 26, that the patent was invalid due to insufficiency of description, the claim in the specifications of the patent need only be as clear as the subject admits, and the patentee need not so simplify his claim as to make it easy for infringers to evade it. The patentees duty is not to prevent all possible argument as to whether there is or is not infringement in particular cases, but to enable the courts to formulate the questions of fact to be answered. The complete specification must describe "an embodiment" of the invention claimed in each of the claims, and the description must be sufficient to enable those in the industry concerned to carry it into effect "without their making further inventions", and the description must be fair i.e. it must not be unnecessarily difficult to follow. We are in respectful agreement with these observations."

58. Plain reading of the argument of the opponent relied on by Respondent clearly indicates that the opponents ground of insufficiency under section 25(2)(g) is not supported by his argument. The opponents argument was not relating to whether the description which had been given was insufficient to enable a person who is reasonably skilled in this field to make an embodiment of the invention with the features which would make it falls within the objects of the invention. On the contrary the opponents argument basically was relating to the fact that the scope of the monopoly claimed was unclear or that there were inconsistencies between the claims and the description. Such inconsistency is not relevant in considering an objection on the ground of insufficiency. The opponent misdirected the respondent 1 to believe that inconsistencies between the claims and the description amount to insufficiency. This dichotomy has been clearly explained by Justice Whitford In Dual Manufacturing and Engineering Inc.s Patent [1977] RPC 189 where itwas held that

“that the sole question on an allegation of insufficiency was whether the description which had been given was sufficient to enable a person who was reasonably skilled in the particular field to make an embodiment of the invention which would have the features which would make it falls within the objects of the invention;

a.that the fact that the scope of the monopoly claimed might be unclear or that there were inconsistencies between the claims and the description of that there might be no, or an erroneous, explanation of the function of a particular mechanism where such an explanation was not necessary for the purpose of instructing the reader how to build an embodiment of the invention as described was not relevant in considering an objection on the ground of insufficiency:

b.that, although a person wishing to make a chair according to the description in the specification might have to carry out certain experiments, there being no evidence that this would be outside the competence of the manufacturer of the articles concerned, nor that a person skilled in the art would have been misled by the description or have any difficulty in making the article, there was no basis for an objection of insufficiency.”

Interestingly Justice Whitford observed that

“One of the difficulties of patent proceedings, as has been pointed out in many earlier cases, is that “invention” is very often used in different senses. To most inventors, as I have said, “invention” means to them probably in the case of some mechanical device a specific improvement which theyhave made. From the point of view of controlling the possible area of infringement, “invention” can be considered as in fact defining the area of the monopoly which an inventor thinks he is entitled to claim upon the basis of his disclosure.

If he is to get a monopoly, in return he has got to tell the public how in fact they can put his invention, that which he is in fact claiming as a monopoly, into practice. But it is entirely unnecessary for that purpose that the public should know what the extent of his monopoly claim is. They have got to be able to make something which is, for present purposes, assumed to be new and obvious. The inventor has got to tell them how to do that. So he writes in his application a description of that which he originally thought out, usually, though perhaps he may have thought of one or two different embodiments before he ever came to apply for a patent, and he illustrates any embodiment described with drawings. As I have said, he may have thought of one or two different embodiments before he started to draft a specification. The obligation which rests upon him at the time he drafts his specification is to tell the public the best way known to him of putting his invention into practice. Of course, it cannot be conceivable that there is any obligation on him to tell the public of all ways in which it might be possible to put into practice that which he claims as his monopoly. That is an entirely different question.

Insufficiency is essentially concerned with this question: Has this patentee in fact told the public how they can make a chair in accordance with his claimed concept of a reclining chair which will effect automatic synchronized reclining movement of the seat and back rest relative to the chassis coincident with the extension of the leg rest relative to the chassis without the use of a separate external handle or lever means to extent the leg rest?

Insufficiency is really a relatively straightforward objection. You see what the nature of the invention is (in this case a reclining chair having certain characteristics) and then you have to come to a conclusion as to whether or not the description which has been given is going to be sufficient to enable a person who is reasonably skilled in the particular field (in this case a manufacturer of reclining chairs) to make a chair which will have the features which make it fall within the objects of the invention.

I think that the superintending examiner has been led into an approach which is implicit in the applicants statement, and, indeed, the way in which his case was presented in evidence initially, namely that the real ground of objection here is this ground of inconsistency, this ground of the inadequacy of the definition of the monopoly in the claim, I think myself that the superintending examiner has failed really to deal with the objection upon the strict basis, the only basis open in these proceedings, namely a consideration of insufficiency as such. If a chair can be made (and, as I have said, Mr. Gilson is the only one who expresses any doubt, and then all he says is that it would take him a little bit of time to do it) it is not to be assumed that that chair in accordance with description would achieve the stated objectives. I think it must be that, as far as the monopoly is concerned, if nobody could tell how far it may extend or if it is not fairly based on the description in the body of the specification, or undoubtedly would include constructions which would not achieve the object, then the whole patent would be bad but on wholly different grounds. I think that the superintending examiner misdirected himself when considering the two grounds of objection the subject of the appeal, for these, in truth, are not grounds of insufficiency at all.”

59. In the present case we also find that the opponent picked some terms from the claims such as predetermined angle, second measurement, correction factors, and focusing means to establish the ground of insufficiency which at best could be wholly different ground that claims are not fairly based on the matter disclosed in the specification. We think that the respondent 1 misapplied himself in considering this material which truly speaking is not relevant to the ground of ‘…..sufficiently and clearly describe the invention…… as required under section 25(1)(g) . We find Dual Manufacturing and Engineering Inc.s Patent [1977] RPC 189 and Raj Prakash Vs. Mangat Ram Chowdhary And Ors., AIR 1978 Del 1, applicable in this case and therefore set aside his decision relating to insufficiency for the reasons as stated above.

Rejection of the application for Amendment in post grant stage

60. The counsel for the appellant submitted that the respondent No.1 has not furnished any reasons for rejecting the application for amendment filed by the appellant. The counsel submitted that such rejection is all the more arbitrary considering the recommendation of the opposition Board.The learned Counsel for appellant submitted that the order of the learned Controller is totally silent as to any reasons for rejection of the amendment. This itself renders the order liable to be set aside.

61. The counsel for the appellant relied on the judgment of the Honble Supreme Court in Oryx Fisheries (P) Ltd. Vs. Union of India (2010) 13 SCC 427, at page 440, -

“39. On the requirement of disclosing reasons by a quasi-judicial authority in support of its order, this Court has recently delivered a judgment in Kranti Associates (P) Ltd. v. Masood Ahmed Khan on 8-9-2010.

40. In Kranti Associates this Court after considering various judgments formulated certain principles in SCC para 47 of the judgment which are set out below: (SCC pp. 510-12)

"(a) In India the judicial trend has always been to record reasons, even in administrative decisions, if such decisions affect anyone prejudicially.

(b) A quasi-judicial authority must record reasons in support of its conclusions.

(c) Insistence on recording of reasons is meant to serve the wider principle of justice that justice must not only be done it must also appear to be done as well.

(d) Recording of reasons also operates as a valid restraint on any possible arbitrary exercise of judicial and quasi-judicial or even administrative power.

(e) Reasons reassure that discretion has been exercised by the decision-maker on relevant grounds and by disregarding extraneous considerations.

(f) Reasons have virtually become as indispensable a component of a decision-making process as observing principles of natural justice by judicial, quasi-judicial and even by administrative bodies.

(g) Reasons facilitate the process of judicial review by superior courts.

(h) The ongoing judicial trend in all countries committed to rule of law and constitutional governance is in favour of reasoned decisions based on relevant facts. This is virtually the lifeblood of judicial decision-making justifying the principle that reason is the soul of justice.

(i) Judicial or even quasi-judicial opinions these days can be as different as the judges and authorities who deliver them. All these decisions serve one common purpose which is to demonstrate by reason that the relevant factors have been objectively considered. This is important for sustaining the litigants' faith in the justice delivery system.

(j) Insistence on reason is a requirement for both judicial accountability and transparency.

(k) If a judge or a quasi-judicial authority is not candid enough about his/her decision-making process then it is impossible to know whether the person deciding is faithful to the doctrine of precedent or to principles of incrementalism.

(l) Reasons in support of decisions must be cogent, clear and succinct. A preference of reasons or ‘rubber-stamp reasons is not to be equated with a valid decision-making process.

(m) It cannot be doubted that transparency is the sine qua non of restrain on abuse of judicial powers. Transparency in decision-making not only makes the judges and decision-makers less prone to errors but also makes them subject to broader scrutiny. (See David Shapiro in Defence of Judicial Candor (1987) 100 Harv. L. Rev. 731-37.)

(n) Since the requirement to record reasons emanates from the broad doctrine of fairness in decision-making, the said requirement is now virtually a component of human rights and was considered part of Strasbourg Jurisprudence. See Ruiz Torija v. Spain, EHRR at p. 562, para 29 and Anya v. University of Oxford, wherein the Court referred to Article 6 of the European Convention of Human Rights which requires, 'adequate and intelligent reasons must be given for judicial decisions'.

(o) In all common law jurisdictions judgments playa vital role in setting up precedents for the future. Therefore, for development of law, requirement of giving reasons for the decision is of the essence and is virtually a part of 'due process'."

41. In the instant case the appellate order contains reasons. However; absence of reasons in the original order cannot be compensated by disclosure of reason in the appellate order.”

62. The Counsel for the respondent 2 submitted that it is incorrect that respondent No.1 has not given any reasons while rejecting the revised claims and the application for amendment during the post-grant opposition proceedings. The respondent categorically recorded that the revised set of claims are not fairly supported by description and requires addition of new subject matter.

63. According to the Respondent 2 since the scope of claim 1 was broadened with respect to the scope of the granted claims the respondent 1 rejected the amendments proposed by the patentee.

64. Counsel for Respondent 2 opposed the amendments and contended that said amendments in the claim failed to satisfy even the first and foremost requirement regarding disclaimer/correction/explanation. He submitted that the method of granting claim 1, has inter alia, the following characteristics:

“(a) Observation of the diamond on the holder under a predetermined angle to obtain an image; (first stage)

(b) Second measurement to obtain two data; (second stage)

(c) Feeding the data with the scan for calculation in the computer to localize the inclusion with respect to the outer surface.”

Variations/changes in the revised set of claims filed before the learned Assistant Controller:

(a) Variations/changes in claim 1:

(i) (at first stage) take scan of outer surface at an arbitrary initial position;

(ii) (at second stage) obtaining at least two data and registering the same with respect to the initial position;

(iii) Scan of outer surface is fed along with the registered position data in the computer in order to localize the inclusion.

(b) Claims 2 and 3 are deleted.

(c) In apparatus claim (original granted claim 7) means for rotating and translating the holder has been added.

65. The counsel relied on the following Judgments/Case Laws

(a) Smith Kline and French Laboratories Limited vs. Evans Medical Limited - 1989 (1) Fleet StreetReports 561

The principles in respect of law on amendment of specification/claims have been enunciated in the above mentioned case in para 2 at page 569 as under:

"The discretion as to whether or not to allow amendment is a wide one and the cases illustrate some principles which are applicable to the present case. First, the onus to establish that amendment should be allowed is upon the patentee and full disclosure must be made of all relevant matters. If there is a failure to disclose all the relevant matters, amendment will be refused. Secondly, amendment will be allowed provided the amendments are permitted under the Act and no circumstances arise which would lead the court to refuse the amendment. Thirdly, it is in the public interest that amendment is sought promptly. Thus. in cases where a patentee delavs for an unreasonable period before seeking amendment. it will not be allowed unless the patentee shows reasonable grounds for his delav. Such includes cases where a patentee believed that amendment was not necessarv and had reasonable grounds for that belief.Fourthly, a patentee who seeks to obtain an unfair advantage from a patent, which he knows or should have known should be amended, will not be allowed to amend. Such a case is where a patentee threatens an infringer with his unamended patent after he knows or should have known of the need to amend. Fifthly, the court is concerned with the conduct of the patentee and not with the merit of the invention. "

b.Bristol-Myers Co. (Johnson and Hardcastle's) [1974] RPC 389

In this case, the invention relates to a new anhydrous form of ampicillin which was characterized by the infra-red absorption spectrum as shown in figure 1. The original claim was concerned with a process using as a starting material an acid addition salt of ampicillin. The salts were generally referred to in the body of the specification. Original claim 2 also generally referred salt and it covered anhydrous or hydrous salts without limiting to anhydrous form. However, it was accepted that unless one start with the anhydrous form, you will not arrive at the product with the figure 1 spectrum and in fact one will arrive at the Form II ampicillin. To get over this difficulty and by way of amendment, the Applicants seeked to limit their process claims to be for use of an anhydrous salt as the starting material. This amendment was rejected. The reasoning, ratios and precedents cited in this case to arrive at the said conclusions clearly suggest that the amendments sought in the present case are liable to be rejected. Few of such reasoning/ratios are reproduced as under:

At page 400, para 2 it is observed as under:

"Lord MacDermott quotes from the speech of Lord Westbury in the Ralston case and refers in particular to a passage where Lord Westbury said: (see Lord MacDermott's speech, page 66, line 41):

"But it was never intended that you should convert a bad specification in the sense of its containing no description of any useful invention at all into a good specification by adding words that would convert what has been properly called in the court below a barren and unprofitable generality into a specific and definite and practical description. It is quite clear that, if that could be done. you would have an opportunity of introducing into a bad patent which contained no useful invention whatever. some discovery that might be developed by further experiment, and which was altogether unknown at the time of the original specification, and not at all included in the description contained in it ", and later “...the statute never contemplated that the patentee should have the power. under the form of a disclaimer, of making material additions to the original specification, so as bv the aid of the corrected form of words. and the additions so made. to introduce into the specification an accurate and perfect description of an invention which you seek for in vain in the original specification."

At the same page, it was further observed as under:

"He also cited a passage from a decision of Mr. Justice Luxmoore in Eveno's Patent (1932) 2 Ch. 167, where Luxmoore, J. said:

"Can it be said that any amendment which in fact results in a narrower claim than that originally put forward is by way of disclaimer? In my judgment, it is necessary to consider not whether the amended claim is narrower or more restricted than the original claim, but whether it covers something not claimed or suggested as constituting the original invention, or part of the original invention. If it does. then it seems to me that the amendment can only properly be described as covering a fresh claim, and it would be an abuse of language to say that such a claim arose owing to amendment by way of disclaimer.”

In para 4 at page 402, it is held as under:

"It is plain that the present case differs in certain important respects from AMP Inc. v. Hellerman Ltd. By this amendment the applicants are not seeking to limit a construction by adding a further feature. They are seeking to discard one form of starting material, and that not because they want to give it up because they want voluntarily to relinquish this part of a properly claimed monopoly, but because they must exclude the hydrated salt if " their patent is to stand valid. I do not think this is truly disclaimer. "

66. The counsel submitted that in view of the statement of law, in the above judgments, it is submitted that the amendments proposed either in the revised claims before the learned Assistant Controller are liable to be rejected. It is submitted that the learned Assistant Controller has rightly rejected the revised set of claims as being hit by Section 59 of the Act.

67. In order to decide whether or not an amendment of the claims in question satisfies the requirement of section 59, it is necessary to compare the protection as conferred by the claims before amendment, i.e. as granted, with that of the claims after amendment. The comparison of the granted claims and proposed amended claims is given below. The change is indicated in bold.

Granted claimsAmendments proposed in post grant proceedings
Claim 1:

A method to localizing inclusions in a diamond, characterised in that said diamond is fixed on a holder said diamond on the holder is observed under a predetermined angle to obtain an image a second measurement is carried out to obtain two data to be calculated in a computer in order to localize the inclusion with respect to the outer surface of said diamond, the position of which is determined by a scan.

Revised Cliam1.

A method for localizing inclusions in a diamond, wherein

- said diamond is fixed on a holder

- the scan is taken of the outer surface of the diamond at an arbitrary initial position (X0, Y0,Z0 α0, ß0, ץ0),

- the holder is translated and rotated to at least a first position (X1, Y1, Z1, α1, ß1, ץ1) and a second position (X2, Y2, Z2, α2, ß2, ץ2), in which first and second position the inclusion is observed in at least a first and second direction of observation, respectively, wherein at least the first and second position data (X1, Y1, Z1, α1, ß1, ץ1); (X2, Y2, Z2, α2, ß2, ץ2) are registered with reference to the initial position.

- the registered position data and the scan of the outer surface are fed in a computer in order to localize the inclusion with respect to the outer surface of said diamond.

Claim 2:

The method as claimed in claim 1, Wherein the said direction of observation is at least changed one time in order, to obtain image data, Wherein the image-data are fed into a computer to calculate a tridimensional image wherein the location of the or each inclusion is calculated out of image data, corresponding with at least two images.

Merged with claim1
Claim 3:

The method is claimed in claim 2, wherein the holder with diamond is rotated and translated

Merged with claim1
Claim 4:

The method as claimed in claims 2 or 3, wherein when the observation direction is, deviated from 90 with respect to the diamond surface, a correction factor being a function of the refractive index of the diamond material is used in the calculation of said computer.

Claim 2.

The method as claimed in claim 1, wherein when the observation direction is deviating from 90° with respect to the diamond surface, a correction factor being a function of the refractive index of the diamond material is used in the calculation of said computer.

Claim 5:

The method as claimed in any one of the preceding claims, wherein the or each inclusion is contained in an optical cylinder, the diameter and the detection direction of which is used for the calculation by the computer.

Claim 3.

The method as claimed in any of the preceding claims, wherein the or each inclusion is contained in an optical cylinder, the diameter and the detection direction of which is used for the calculation by the computer.

Claim 6:

The method as claimed in claim 1, wherein the scanner having a focusing means is used to obtain a depth position along said direction of observation by focusing and inclusion.

Claim 4.

The method as claimed in any of the preceding claims, wherein a scanner having a focusing means is used to obtain a depth position along said direction of observation by focusing said inclusion.

Claim 7:

An apparatus, comprising a holder (2) for supporting a diamond (D), a light source (7), a scanning means (4), a computer, and a camera or microscope, suitable to carry out the method according to any of the preceding claims 1 to 6.

Claim 5.

An apparatus, comprising holder (2) for fixing a diamond (D), means for rotating and translating the holder, a light source (7), a scanning means (4), a computer and a camera or microscope, suitable to carry out the method according to any of the preceding claims 1 to 4.

Claim 8:

A method to localize inclusions in a diamond substantially as herein described with reference to the accompanying drawings.

deleted
Claim 9:

An apparatus substantially as herein described with reference to the accompanying drawings.

deleted
68. Comparing the granted claims with proposed amended claims we find ‘predetermined angle changed to ‘arbitrary initial position; ‘obtaining two data changed to ‘obtaining at least two data; Additionally the step relating to feeding and registering data of scan of outer surface and position data in computer is included.

69 If we see the reply statement (filed in post grant proceedings ) it is stated that ‘patentee is prepared to amend the claims as shown in the annexure A and it further stated the revised claim 1 is a combination of claims 1,2 and 3 as granted. The revised clam 2 to 4, 6 and 7 corresponds to claims 4 to 9 as granted. In the revised claim 5 it has been added that the apparatus comprises means for rotating and translating the holder. It is pertinent to note that no reason was given for proposing these amendments.

70. Claim 1 as amended is directed to a method wherein the step of

- observing the inclusion in the diamond in at least a first and second direction of observation, wherein the translation and rotation for every direction of observation (X1,Y1,Z1,α1, ß1, ץ1, X2,Y2,Z2, α2, ß2, ץ2) is registered with reference to the initial position; and

- feeding the registered translations and rotations, the scan of the outer surface and knowledge of the refractive index of the diamond in a computer to calculate a tri dimensional image including the inclusion with respect to the outer surface, in order to localize the inclusion (8) with respect to the outer surface of said diamond (D) have been introduced.

71. The fresh feature in that claim now requires that in addition to rotation, the diamond is also translated wherein the translation and rotation for every direction of observation (X1,Y1,Z1,α1, ß1, ץ1, X2,Y2,Z2, α2, ß2, ץ2) is registered with reference to the initial position.

72. Further the amended apparatus claim 5 discloses added means for rotating and translating the holder. The patentee himself admitted in reply statement that this feature has been added. We find no reference to this means in any of the apparatus claims before amendment. Moreover such means have not been indicated in figures 1. Interestingly claim 9 as granted claimed read as ‘An apparatus substantially as herein described with reference to the accompanying drawings. Therefore this amendment clearly amount to adding of new matter and extending the scope of invention as claimed in the amended apparatus claim 5 which is not permitted under section 59.

73. At the post grant proceeding before the Controller where the Patentee files a request for amendmentof the claimsthe intent of amendments and arguments is only relevant insofar as it can be interpreted as an attempt to limit the scope of protection to make the invention patentable.Section 58 and section 59 also requires that the claims of a patent as granted may not be amended during opposition/appeal proceedings in such a way as to extend the protection conferred by the originally granted claims. Further no reason and explanation was given by the patentee for seeking amendments in the claims at this stage. Respondent 1 disallowed these amendments stating that the amendments in claims are ‘not fairly supported by description and requires addition of new subject matter. We are convinced that the amendment of claims is not permissible but for the different reason that the amended claims would not fall wholly within the scope of a claim of the specification before the amendment as required under section 59. We however affirm his decision for the reason stated above.

Amendments as proposed to avoid revocation

74. Now we shall deal with the submission of the counsel for appellant where he has invited our attention to the powers of the Board to allow amendments of the specification under section 58 instead of revoking the patent. The counsel for appellant urged further that the Honble Board may allow the amendments as sought for and patent need not be revoked on the ground of insufficiency of disclosure. The Counsel for the appellant submitted that an amendment to the claim has been sought for that should be sufficient to fully describe the claimed invention.

75. The counsel for respondent No.2 submitted that the appellant cannot seek amendment up to the appeal stage as amendment can be sought before the learned Assistant Controller during the opposition proceedings or in revocation proceedings before the Honble Appellate Board or before a High Court in an invalidity proceeding in a suit for infringement. There is no provision in the Act which entitles the appellant to seek amendment in an appeal arising out of post-grant decision.

76. We do not agree with the argument of the respondent 2 that Board has no power to consider proposed amendments in appeal cases. The Appeal before the Appellate Board is not a restricted appeal but it is a full-fledged appeal to consider facts and laws under section 117A of the Act. The Appellate Board is empowered and competent to take its own view on the facts and laws and rules. In that context, we refer to following passages from three decisions of Honble Supreme Court

(i). In 1962 supp.1 SCR 933 at page 939 where the following proposition has been laid down:

 “The Distinction between an appeal and a revision is a real one. A right of appeal carries with it a right of rehearing on a laws as well as fact, unless the statute conferring the right of appeal limits the rehearing in some way as, we find, has been done is second appeals arising under the Code of Civil Procedure.”

(ii) In(1994) supp.(3) SCC 250 para 7it was observed that

“The Act provides for a regular first appeal to the High Court under Section 8-A, from the order passed by the Forest Tribunal. On a mere look of Section 8-A of the Act, we are of the view that in deciding the appeal under section 8-A of the Act, the High Court has got very wide powers. It is not hedged in by any limitation. When the matter comes up before the High Court, it is the correctness and propriety of the order under appeal which arises for consideration. The High Court can independently consider the evidence and satisfy itself whether the findings and conclusions arrived at by the Forest tribunal are proper. The High Court is competent to adjudicate all questions of fact and law and record its findings. It can reappraise and re-evaluate the evidence an arrive at its own findings and conclusions.”(iii) In (2003) 6 SCC 669 para 17 it was affirmed that

 “An appeal is continuation of the proceedings; in effect the entire proceedings are before the Appellate Authority and it has the power to review the evidence subject to statutory limitations prescribed. But in the case of revision, whatever powers the revisional authority may or may not have, it has no power to review the evidence, unless the statute expressly confers on it that power. It was noted by the four judge Bench in Hari Shankar v. Rao Girdhari Lal Chowdhury that distinction between an appeal and a revision is a real one.”

77. In view of above position of law that appeal is a continuation of proceedings, IPAB has power to allow amendments in the specification if sought for or otherwise under section 58 instead of revoking the patent. However, when the patentee seeks amendments the opponent must be given an opportunity in view the principle of natural justice. MP64/65 has been contested by the opponent /respondent.

Amendments proposed now

78. Having said so we shall now take up MP 64/65 filed by the patentee for seeking amendment and the counter filed by the respondent. The counsel for the appellant while justifying the proposed amendment submitted the following in a table:

Granted claimsAmended claims as filed on 24 August 2011
Claim 1:

A method to localizing inclusions in a diamond, characterised in that said diamond is fixed on a holder said diamond on the holder is observed under a predetermined angle to obtain an image a second measurement is carried out to obtain two data to be calculated in a computer in order to localize the inclusion with respect to the outer surface of said diamond, the position of which is determined by a scan.

Claim 1:

A method to localizing inclusions in a diamond characterized that said diamond is fixed on a holder, (supported by the amended description on page-4 of the specification) said diamond on the holder is observed under a predetermined angle to obtain an image (supported by the amended descriptioin on page-5 of the specification) a second measurement is carried out to obtain two data to be calculated in a computer in order to localize the inclusion with respect to the outer surface of said diamond, the position of which is determined by a scan, (supported by the amended description on page-5-6 of the specification) wherein said observing, measuring and calculating comprises:

-taking a scan of the outer surface of the diamond at an arbitrary initial position (X0, Y0, Z0, α0, ß0, ץ0);

(supported by the amended description on page-4 of the specification)

-observing the inclusion in the diamond in at least a first and second direction of observation, wherein the translation and rotation for every direction of observation

(X1,Y1,Z1,α1,ß1,ץ1,X2,Y2,Z2,α2,ß2,2ץ) is registered with reference to the initial position, and

(supported by the amended description on page – 4-5 of the specification)

-feeding the registered translations and rotations, the scan of the outer surface and knowledge of the refractive index of the diamond in a computer to calculate a tridimensional image including the inclusion with respect to the outer surface, in order to localize the inclusion (8) with respect to the outer surface of said diamond (D). (supported by the amended description on Page-5 and 6 of the specification).

Claim 2:

The method as claimed in claim 1,

Wherein the said direction of observation is at least changed one time in order, to obtain image data,

Wherein the image-data are fed into a computer to calculate a tridimensional image wherein the location of the or each inclusion is calculated out of image data, corresponding with at least two images.

Comment: claim 2 as granted was deleted because the content thereof is now included in claim 1.
Claim 3:

The method is claimed in claim 2, wherein the holder with diamond is rotated and translated

Claim 2:

The method as claimed in claim 1, wherein the holder with diamond is rotated and translated

(supported by the amended description on page-5 of the specification)

Claim 4:

The method as claimed in claims 2 or 3, wherein when the observation direction is, deviated from 90 with respect to the diamond surface, a correction factor being a function of the refractive index of the diamond material is used in the calculation of said computer.

Claim 3:

The method as claimed in claims 1 or 2, wherein when the observation direction is, deviated from 90 with respect to the diamond surface, a correction factor being a function of the refractive index of he diamond material is used in the calculation of said computer

(supported by the amended description on page 4 and 6 of the specification)

Claim 5:

The method as claimed in any one of the preceding claims, wherein the or each inclusion is contained in an optical cylinder, the diameter and the detection direction of which is used for the calculation by the computer.

Claim 4:

The method as claimed in any one of the preceding claims, wherein for a direction of observation a cylinder is determined so that the inclusion is contained in said optical cylinder, the diameter and the detection direction of which is used for the calculation by the computer. (supported by the amended description on page-3 and 5 of the specification)

Claim 6:

The method as claimed in claim 1, wherein the scanner having a focusing means is used to obtain a depth position along said direction of observation by focusing and inclusion.

Claim 5:

The method as claimed in claim 1, wherein a scanner having a focusing means is used to obtain a depth position along said direction of observation by focusing and inclusion

(supported by the amended description on page – 5 of the specification)

Claim 7:

An apparatus, comprising a holder (2) for supporting a diamond (D), a light source (7), a scanning means (4), a computer, and a camera or microscope, suitable to carry out the method according to any of the preceding claims 1 to 6.

Claim 6:

An apparatus, comprising a holder (2) for supporting a diamond (D), light source (7), motor means for rotating and/or translating the holder, a scanning means (4), a computer, and a camera or microscope, suitable to carry out the method according to any of the preceding claims 1 to 5.

(supported by the amended description on page-5 of the specification

Claim 8:

A method to localize inclusions in a diamond substantially as herein described with reference to the accompanying drawings.

Deleted
Claim 9:

An apparatus substantially as herein described with reference to the accompanying drawings.

Deleted
79. The learned counsel further submitted that in so far as the amendment in specification filed before the Honble IPAB are concerned the changes sought to be made are all in the nature of disclaimers, corrections and explanations.

80. The counsel for respondent 2 submitted that the Appellant has amended the claims of the patent in issue three times and thus the present proposed amended claims are the fourth set of claims presented by the Appellant in relation to the revoked patent. He submitted that claims were amended, for the first time, during the post-grant opposition proceedings. Thereafter, while filing the present appeal, the Appellant amended the complete specification as well as the claims. Now, this is the third time the amendments have been proposed by the Appellant.

81. The counsel for respondent 2 submitted that neither the first amendment nor the second nor this proposed amendment satisfy the ingredients of Section 59 of the Indian Patents Act. According to the counsel the present proposed amendments in the claims do not fall within the scope of Section 59. He submitted that according to Section 59, if the proposed amended claims do not fall wholly within the scope of the claims of the specification before amendment, then such amendment shall not be allowed. Importantly, Section 59 mandates that the amendments either in relation to specification or claims cannot be made except by way of disclaimer, correction or explanation. He submitted that firstly, the Appellant has to satisfy that the amendment sought is by way of disclaimer, correction or explanation. There is no pleading, at all, on the part of Appellant that any of such amendments are by way of disclaimer, correction or explanation. He contended that on this count only, the proposed amendments to the claim are liable to be rejected. Without prejudice, and presuming that the proposed amendments are by way of disclaimer, correction or explanation, even then the proposed amended claims are outside the scope of the original claims. He further contended that the amendment do not satisfy the requirement of Section 59 of the Act. He stipulates that the following must be satisfied before an amendment is granted:

“(a) The amendment can only be by way of disclaimer, correction and explanation;

(b) No amendments shall be allowed except for the purpose of incorporation of actual fact; ,

(c) Amendment, the effect of which would be that the specification as amended would claim or describe the matter not in substance disclosed or shown in the specification before the amendment, shall not be allowed;

(d) Amendment, the effect of which would be that any claim as amended would not fall whollywithin the scope of a claim of the specification before the amendment, shall not be allowed.”

82. According to the Counsel the said amendments in the claim failed to satisfy even the first and foremost requirement regarding disclaimer/correction/explanation. The learned counsel submitted that the indicated variations/changes by way of amendments in the complete specification and claims are impermissible in view of the mandate of Section 59 of the Act. None of the proposed amendments can be termed as disclaimer or correction or explanation. Even though somehow it is held to be so, still it cannot be said that the amendments have "been proposed for the purpose of incorporation of actual fact. There is no pleading much less any evidence to support this aspect. Additionally, and more importantly the effect of the amendments (either in specification or in claims) would be that the specification or claims as amended would describe or claim matter which would not fall wholly within the scope of original specification or claims. Thus, in the respectful submission of the Respondent No.2, proposed amendments are liable to be rejected on the above ground itself.

83. The counsel for the respondent 2 submitted that following changes in the specification amount to addition of new elements

“(i) Diamond is rotated and translated about the line of observation; obtaining two data (at second stage of measurement) is deleted; observation under a pre-determined angle is also deleted; the location of inclusion as the intersection of the optical cylinder (whereas step (d) at page 6 states it at the nearest cross centers); by applying appropriate refractive index correction factor -- please refer lines I0-15 at page 3 of the amended specification (page 47 or 35 of Vol. 4).

(ii) Observation at first stage is at initial arbitrary position; for second stage measurement, diamond is to be rotated and translated to a predetermined angle about the line observation and also for the second data the rotation and translation is to predetermined angle about the line of observation -- please refer lines 23 to 29 at page 3 (page 47 or 35 of Vol. 4).

(iii) A new small paragraph has been introduced defining predetermined angle to mean the angle with respect to line of observation i.e. optical axis A of the light beam - please refer lines 30 to 33 at page 3 (page 47 or 35 of Vol. 4). This also now means that lines of observation and optic axis are the same, while lines 10-14 at page 4 (page 48 or 36 of volume 4) suggests to the contrary.

(iv) Lines 1-3 at page 48 or 36 add completely new matter in the specification.

(v) Support for calculation of tri-dimensional image in the computer has been deleted - please refer lines 4 -5 at page 4 (page 48 or 36 of Vol. 4). With this deletion there is virtually no support for 3D image in the specification.

(vi) Support for original claim 5 (or claim 4 of latest amended claims) has been deleted - please refer lines 15 to 20 at page 4 (page 48 or 36 of Vol. 4).

(vii) Support for original claim 6 (or claim 5 of latest amended claims) has been deleted - please refer lines 20 to 25 at page 4 (page 48 or 36 of Vol. 4).

(viii) In step (a) at page 5 of the amended specification, stone is now stated to be rotated about the line of observation - please refer line 26 at page 5 (page 49 or 37 of Vol. 4).

(ix) Calculation of refractive index correction factor as well as formula in accordance with the Snell's law has been introduced.”

84. After hearing the arguments of the counsels for appellant and respondent 2 and perusing the proposed amendment in the specification and claims we are inclined to agree with the respondent 2 that the amendment of the specification amounts to addition of new elements and the claims as finally amended do not fall wholly within the scope of a claim of the specification before the amendment. We find following amendments amounting to addition of new matter in the specification such as creation of optical cylinders along the viewing direction; the location of inclusion as the intersection of the optical cylinder; Diamond is rotated and translated about the line of observation; by applying appropriate refractive index correction factor; Calculation of refractive index correction factor as well as formula in accordance with the Snell's law has been introduced;calculation of tri-dimensional image in the computer has been omitted;defining predetermined angle;applying appropriate refractive index correction factor ;calculation of tri-dimensional image in the computer omitted;Lines 1-3 at page 48 or 36 added ;stone is rotated about the line of observation and so on. None of these elements were disclosed implicitly in the original speciation. The appellant have failed to prove that these amendments are otherwise unnecessary. Therefore, we are disallowing all the amendments proposed in the specification except those relating the inclusions by way of insertion of prior art references. MP/64/2011 therefore is partially disallowed.

85. We also find the amended claims are beyond the scope of the claims as originally filed specifically in view of the addition of the following elements such as scan of outer surface is taken at an arbitrary initial position; obtaining at least twodata and registering the same with respect to the initial position;Data to be fed in the computer (for calculation of tri-dimensional image of diamond and inclusion); registration of translations and rotations and the scan of outer surface; knowledge of reflecting index of the diamond; determination of cylinder for a direction of observation (claim 5) ; motoring means (Claim7). None of these elements were claimed in the originally filed claims. Therefore such inclusions by way of amendments are not permissible under section 59. We do not find any convincing argument to allow these amendments in the claims to avoid the revocation in view of lack of inventive step. MP/65/2011 therefore is disallowed.

86. In view of above OA/4/2009/PT/CH is partially allowed. For all the reasons stated above we are satisfied that patent No.201020 lacks inventive step and we affirm the decision of respondent 1 to revoke this patent. M.P. No.16/2009 for stay is closed. Miscellaneous petitions No.64/2011 and No.65/2011 for amendment of complete specification are ordered accordingly. Miscellaneous petitions No.21/2012 for filing affidavit by appellant, No.36/2011 for filing complete specification and No.54/2012 for filing of Belgium patent by respondent 2 are allowed. No order as to costs.


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