Wirtgen Gmbh v. Controller General of Patents - Patent Appeal

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Wirtgen Gmbh vs Controller General Of Patents, Designs ... on 23 March, 2026

Author: Manmeet Pritam Singh Arora

Bench: Manmeet Pritam Singh Arora

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI

                                                                         Reserved on: 20.11.2025
                                                                    Date of Decision: 23.03.2026
                                                     Judgment uploaded on: As per digital signature

                     +      C.A.(COMM.IPD-PAT) 306/2022

                            WIRTGEN GMBH                                            .....Appellant
                                        Through:              Mr. Rohit Rangi, Mr. Vineet Rohilla,
                                                              Mr. Debashish Banerjee, Mr. Pankaj
                                                              Soni & Mr. Ankush Verma, Advs.

                                                   versus

                            CONTROLLER GENERAL OF PATENTS, DESIGNS AND
                            TRADEMARKS AND ORS                      .....Respondents
                                        Through: Ms. Nidhi Raman, CGSC with Mr.
                                                 Om Ram, Mr. Arnav Mittal and Mr.
                                                 Mayank Sansanwal, Advs.
                     %
                     CORAM:
                     HON'BLE MS. JUSTICE MANMEET PRITAM SINGH ARORA
                                                   JUDGMENT MANMEET PRITAM SINGH ARORA, J:

1. This is an appeal under [Section 117A](https://indiankanoon.org/doc/103434899/) of the Patents Act, 1970 ('the [Patents Act](https://indiankanoon.org/doc/1937976/) '), challenging the order dated 25.11.2019 ('impugned order')
   

   passed by the Assistant Controller of Patents and Designs/Respondent No. 2
   in Indian Patent Application number 2874/DEL/2010 filed on 03.12.2010
   ('Subject Patent Application') for the invention titled 'BIT HOLDER AND
   BASE PART FOR RECEIVING A BIT HOLDER'.
   Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 1 of 21 Signing Date:25.03.2026 18:20
   FACTUAL MATRIX

2. Brief facts necessary for deciding the present appeal are set out
   

   below:

3. The Appellant/Wirtgen GMBH filed the Subject Patent Application
   

   on 03.12.2010 as a convention application claiming priority from the
   German Patent Application No. 10 2009 059.3-24 dated 17.12.2009. The
   bibliographic details of the application are given below:
   Application No. 2874/DEL/2010
   Filing Date 03.12.2010
   Request for Examination 03.12.2010
   Publication Date 04.10.2013
   First Examination Report ('FER') 13.07.2017
   Response to FER 05.01.2018
   Hearing Notice 30.08.2019
   Date of Hearing 18.09.2019
   Written Submissions 03.11.2019
   Date of Impugned Order of Refusal 25.11.2019

4. The FER was issued on 13.07.2017 after a period of six and a half
   

   years. The FER listed various objections raised by Respondent No. 2,
   wherein the primary objections raised were pertaining to:

i. Claims are lacking inventive step under Section 2(1)(ja) of the
Patents Act and
ii. Claims do not sufficiently define the scope of the present
invention under Section 10(4)(c) of the Patents Act.

1. The Appellant thereafter filed a detailed response complying with all Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 2 of 21 Signing Date:25.03.2026 18:20 the requirements raised in the FER on 05.01.2018. Vide the said response, the Appellant clarified the following:

i. Lack of Inventive Step: The prior art documents fail to disclose
'a bit holder including a base part for receiving the said bit holder this
enables long-lasting and rigid bracing of the bit holder with respect to
the base part under high stress. The invention discloses a bit holder in
which the supporting and bearing surfaces are arranged at an angle to
each other. The longitudinal axis of the bit receptacle and the insertion
projection form an obtuse angle, creating a supporting region that helps
dissipate transverse loads during tool use.

ii. Unity of Inventions: the Claim 1 is directed towards a bit
holder, whereas Claim 15 recites a base part for receiving the said bit
holder and both sets of claims are linked with each other with a
common feature of 'bit holder'. Claim 20 describes the direction of the
supporting surfaces.

iii. Clarity and Conciseness, Definitiveness and other
requirements: the claims were amended to meet the requirements and
the dependency clause 'according to' appearing in the sub claim had
been replaced with 'as claimed in claim'.

1. Thereafter, a hearing notice was issued on 30.08.2019 for the official
   

   hearing of the Subject Patent Application on 18.09.2019. Certain objections
   were raised by Respondent No. 2 in the said hearing notice. The official
   deadline to file written submissions was 03.10.2019; however, pursuant to a
   telephonic discussion with Respondent No. 2, the Appellant filed a petition
   under Rule 138 along with the official fee on 30.09.2019, seeking an
   extension of the official deadline for filing the written submission by one (1) Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 3 of 21 Signing Date:25.03.2026 18:20 month. The fresh deadline was extended to 03.11.2019. In view of the
   extension, the Appellant filed a detailed written submission in response to
   the objections raised in the hearing notice on 01.11.2019.

2. Respondent No. 2 issued the impugned order on 25.11.2019, which
   

   was communicated to the Appellant on 27.11.2019. The Subject Patent
   Application was rejected on the ground that Claims 1 to 22 lack inventive
   step in view of prior art documents D1-D4 under Section 2(1)(ja) of the
   Patents Act, and that the claims are not definite and fail to clearly define the
   scope of the invention, contrary to Section 10(4)(c) of the Patents Act.
   SUBMISSIONS BY THE PARTIES
   Submissions by the Appellant

1. Mr. Rohit Rangi, learned counsel for the Appellant, states that the
                    present invention relates to a bit holder and a corresponding base part in
                    which said bit holder can be installed. The bit holder and the base part are
                    mounted on a milling drum of a machine used for removing road surfaces or
                    surface mining.
   

2. He states that Respondent No. 2 has rejected the subject application
                    for lack of inventive step in view of documents D1-D4. It is pertinent to
                    mention that the novelty and inventive step of the present invention lie in the
                    alignment and orientation of the support surfaces of the bit holder and the
                    base part. Therefore, Respondent No. 2 has clearly acknowledged that D1-
                    D3 does not provide any disclosure regarding the novel and inventive
                    features of the present invention.
   

3. He states that it is trite law that in order to lack novelty of a claim, all
   the features recited in the claim should be present in the cited document.
   Further, the prior publication should contain a clear description and provide Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 4 of 21 Signing Date:25.03.2026 18:20 clear instructions to do or carry out the same, which would infringe the
   claim in question. Therefore, the claimed invention is clearly distinguishable
   and not anticipated in view of D4.

4. He states that Respondent No. 2 has only made general statements
   about the disclosure of D4. Neither any analysis nor any mapping of features
   has been conducted. Respondent No. 2 has merely reproduced a part of the
   abstract of D4 in the Impugned Order and has not compared any feature
   recited in the claims of the subject application with the disclosure of D4,
   which was required for establishing lack of novelty.

5. He states that Respondent No. 2 has also not explained how and
   which teachings of D1-D3, in combination with the features disclosed in D4,
   render the present invention obvious. Any combination of D1-D4 cannot
   render the present invention obvious since they fail to disclose or suggest the
   supporting segment comprising two (2) supporting surfaces arranged at an
   angle to one another, and the longitudinal centre axis of the bit receptacle
   and the longitudinal axis (L) of the insertion projection enclosing an obtuse
   angle. In view thereof, the refusal of the Subject Patent Application under Section 2(1)(ja) of the Patents Act is not tenable.

6. He states that Respondent No. 2 has erroneously and arbitrarily
   refused the subject application under Section 10(4)(c) of the Patents Act on
   the ground that the claims are not definitive. Several objections, including
   those relating to "transverse central plane", "extend locally", "in front of the
   longitudinal axis", and "at least locally with an offset", were not even raised
   in the FER or the hearing notice. The objection regarding multiple
   dependent claims is also untenable as neither the Patents Act nor the Manual
   of Patent Office Practice and Procedure prohibit such dependency, and the Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 5 of 21 Signing Date:25.03.2026 18:20 scope of the invention remains clear when read with the independent claims.
   Further, the alleged overlap between Claims 9 and 10 is incorrect since both
   claims relate to different embodiments concerning the orientation of the
   bearing surfaces. Accordingly, the claims are clear, definite, and fully
   supported by the specification and drawings. The refusal of the subject
   application under Section 10(4)(c) is, therefore, unsustainable and liable to
   be set aside.

Submissions by the Respondents

1.  Ms. Nidhi Raman, learned counsel for the Respondents, states that
                    Respondent No. 2's statement has been taken out of context. Respondent
                    No. 2's analysis did not stop at D1-D3. It was a multi-step argument that
                    must be read in its entirety. The argument is not that D1-D3 alone make the
                    invention obvious, but that they establish the background knowledge
                    available to a person skilled in the art. The lack of inventive step arises when
                    the teachings of D4 are combined with this background knowledge.
   

2.  She states that the purpose of citing D1, D2 and D3 was to establish
                    that the general concept of a two-part system, i.e. a base part attached to a
                    machine and a removable holder for a tool, was common knowledge in the
                    field.
   

3.  She states that the prior arts teach the following:
   

i. D1 explicitly teaches a holder with a base part for holding a
tool.

ii. D2 explicitly discloses a tool combination having a base part
and a bit holder.

iii. D3 explicitly discloses a cutting element with a base element
and a chisel holder.
Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 6 of 21 Signing Date:25.03.2026 18:20 17. She states that the very next part of Respondent No. 2's analysis
introduces the crucial teaching from D4. Respondent No. 2 found that D4
teaches a chisel holder and a base part where a bearing surface (profiles 27,
28.1) is supported on a supporting surface (profile 12-13) of the base part,
and the base part comprises a shoulder connected to the supporting surface.
This is precisely the concept of using multiple facets and dedicated
supporting surfaces that was missing from D1-D3.

1. She states that a person skilled in the art, starting with the well-known
   holder systems of D1-D3 and seeking to improve them, would naturally look
   to other solutions in the field. Upon finding D4, which explicitly teaches the
   use of multi-faceted support surfaces to improve durability and wear
   resistance, it would be obvious to apply that teaching to the systems in D1-
   D3. D4 teaches that a simple flat surface is insufficient and that adding
   angled geometry improves durability.

2. She states that an independent claim must be clear and define the
   invention on its own terms, not by relying on external clarification from the
   description or other claims to resolve its vagueness. The language of Claim
   1 is what defines the legal boundary, and as it stands, it fails to specify
   which of the possible obtuse angles is being claimed, rendering the scope of
   the monopoly sought indefinite.

3. She states that it is the case of the Appellant that the Respondent No.
   2 has introduced new terms in the impugned order. However, Respondent
   No. 2 has already mentioned the claims in the hearing notice within which
   these terms fall, and thus have not been introduced for the first time.

Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 7 of 21 Signing Date:25.03.2026 18:20 ANALYSIS

1. This Court has heard the learned counsel for the parties and perused
   the material on record.

2. The Subject Patent Application covers an invention that relates to a
   bit holder and a corresponding base part for cutting tools used in milling or
   mining machines, wherein angled supporting and bearing surfaces and an
   obtuse angle between the bit receptacle axis and insertion projection axis
   provide improved load distribution, rigid bracing, and secure mounting
   under high operational stresses.

3. This Subject Patent Application has been refused by the Respondent
   No.2 under Section 10(4)(c) and 2(1)(ja) of the Patents Act. The relevant
   parts of the impugned order are as follows:

"Scope of Invention

1. I have carefully considered the reply of the applicant and observe following part of the claims being not in accordance with section 10 of the Act:

i. Axes, L & M as per figure 6 intersect each other at an angle. The
form both acute and obtuse angle. The claim is however specific on
obtuse angle but does not refer properly.

ii. "transverse central plane" in claim 1, 12 is not defined.
iii. "at least locally in front of" in claim 3 is vague. Also directions of
the said surfaces and 'v' are not same as in figure 6.
iv. Claims 3-22 are multiple dependent and as such scope of the
invention can not be definitive under section 10 (4) (c) of the Patents
Act. For ex. : subject matter in claim 7 talks of the feature of
supporting surfaces 29. Said claim is dependent on claims 1-6.
Subject matters in claims 4-6 are not relating to supporting surface
but bearing surface or pressure surface etc.
v. Subject matter in claim 14 claims the angle between 'L' and 'M'.

Said claim is dependent on all preceding claims, where 'L' and 'M'
are not even referred to. In a similar manner it is difficult to identify
the scope of the claims.

vi. "at least locally with an offset" in claim 5 is vague.
Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 8 of 21 Signing Date:25.03.2026 18:20
vii. "supporting surfaces (29) face toward the free end" in claim 7 is
vague in meaning.

viii. "extend locally" in claim 9 is vague.

ix. Scope of subject matter in claim 10 overlaps with claim 9.
x. "in front of the longitudinal axis" in claim 18 is vague. "at least
locally with an offset" in claim 19 is vague.

B. Technical Analysis (with respect to the priori arts cited for Novelty
and Inventive Step)

1. After duly considering the reply of the applicant in written submissions (post FER and hearing), I do not find it persuasive to consider the instant patent application novel and inventive for the reason as below:

DE102005017760: D1 explicitly teaches of a holder with a base part for
holding a tool. Said holder being held in the box (base part) with the help of
a screw.

EP1761682: D2 explicitly discloses a tool combination having a base part
and a bit holder.

DE4322401:D3 explicitly discloses a Cutting element with a base element
and chisel holder.

Therefore, D1-D3 explicitly teaches a tool combination of base part and a
holder. Above documents however fail to disclose as if the base or older part
is made in multiple facets and having supporting surfaces.
CN101091037: D4 teaches that the chisel holder and a base part. A bearing
surface is supported on a supporting surface of the base part, and the base
part comprises a shoulder which is connected to the supporting surface. A
replacement chamber is formed between the shoulder and a facing end
surface of the chisel holder.

Therefore, considering the disclosure in D4, I am of the opinion that D4
alone would be able to destroy the novelty of the instant application for
patent. Also, instant application for patent discloses mechanically equivalent
components / parts of tool / features of the tool disclosed in D4. Therefore, a
person skilled in the art would be able to combine the teaching of D4 in D1-
D3 and reach to the instant invention to provide various supports as in
instant application for patent.

C. Decision
In view of my observations in the paragraphs 5 & 6,
i. I consider the subject matter in set of claims 1-22 submitted is not
inventive under section 2 (1) (ja) of the Patents Act, 1970.
Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 9 of 21 Signing Date:25.03.2026 18:20
ii. The drafted claims are not in compliance of the section 10 (4) (c) of
the Patents Act, 1970 for being not definitive in defining scope of the
claims.

I, therefore, refuse the application for grant of patent under section 15 of the
Patents Act, 1970."

[Emphasis supplied]
24. From the above extracted paragraphs made by Respondent No. 2 in
the impugned order, it is clear that the Subject Patent Application has been
refused since the claims of the Subject Patent Application do not define the
scope of the invention as per the requirement under Section 10(4)(c) of the
Patents Act. Also, the subject matter claimed in the Subject Patent
Application does not fulfil the inventive step requirement under Section
2(1)(ja) of the Patents Act. In order to determine that the said requirements
have been fulfilled by the Subject Patent Application, this Court deems it
appropriate to assess the aforesaid provisions in the facts of the present case. Section 10(4)(c) of the Patents Act

1. This Court shall first examine the objection raised by Respondent No.
                    2 in the impugned order under [Section 10(4)(c)](https://indiankanoon.org/doc/1418267/) of the Patents Act. During
                    hearing, as recorded in the written submissions dated 20.07.2023 which was
                    filed before this Court, the Appellant had raised serious concerns over the
                    impugned order over violation of the principles of natural justice since some
                    of the specific terms which Respondent No. 2 had determined in the
                    impugned order to be not fulfilling the requirement under [Section 10(4)(c)](https://indiankanoon.org/doc/1418267/) of the Patents Act was never raised before in the hearing notice or the FER.
                    Therefore, the Appellant had not received any opportunity to address the
                    objection before Respondent No. 2. However, the counsel representing
                    Respondent No.2 has argued that even though specific terms were not
                    referred to in the hearing notice, a reference to the claims that contain those Signature Not Verified Signed By:MOHIT          C.A.(COMM.IPD-PAT) 306/2022                                                          Page 10 of 21 Signing Date:25.03.2026 18:20 words was already there in the hearing notice.
   

2. The objection raised by Respondent No. 2 in FER under Section
   10(4)(c) is as follows:

"SCOPE:

(xvi) Claim(s) does/do not define the scope of invention for which the
protection is claimed for the following
reasons:

Not Applicable

CLARITY AND CONCISENESS:

(xvii) Claim(s) 1,4,5,7,10,15,17 and 19 are not clearly worded in respect
of:

Claims not clearly worded and in claim 1,4,5,7,10,15,17 and 19 the word
"comprises/comprising" should be replaced with word "consisting
of".

DEFINITIVENESS:

(xviii) Claim(s) 2-14 and 16-20 do not sufficiently define the invention
for the reasons as follows:

The word "according to" in the claims 2-14 and 16-20 is not
definitive; it requires amendment by replacing word "as claimed in
claim"."

[Emphasis supplied]
27. The objection raised by Respondent No. 2 in the hearing notice dated
30.08.2019 under Section 10(4)(c) is as follows:

"1. Subject matter in claims fails to define the scope of the invention
under section 10 (4) (c) of the Patents Act, 1970:

1. Direction 11 in figure 1 and 2 seem different.

2. Holding projection in claims should be replaced with "holder" or
   "holding part", since same is part of the insertion projection, which
   seem to be detachable and holding part seem not to be detachable.

3. "at least locally" in claim 2 is vague.
   Further supporting surfaces (29) does not seen to be in 'V' (which
   seems to be perpendicular to direction 11 in figure 1) direction in any
   of the figure but making some angle (<90 degree) to said direction.

"Substantially oppositely to the tool feed direction" in claim 3 is
vague. As per figure 5, surfaces 21.5 seem to be at an angle to feed
direction 'v' but not apparently opposite to the said direction.

1. "at least locally with an offset" in claim 4 is vague. Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 11 of 21 Signing Date:25.03.2026 18:20

2. "pressure surface", "being at an angle" in claim 5.

3. "face toward the free end of the insertion projection (21)" in claim 6.

4. "consisting of a region that is cantilevered out beyond the
   insertion projection (21)", "on the cantilevered region" in claim 7

5. "wherein the supporting surface (29) or supporting surfaces (29)
   and the bearing surface (21.5) or bearing surfaces (21.5)
   respectively form slide guides" in claim 10. No technical meaning
   in claim 10 can be deduced.

6. A. Subject matter in 11 in respect of bearing surface(s) and
   supporting surface(s) are redundant with respect to claims 1-10. Said
   claims depicts out the way these surfaces are extended/arranged in
   the claimed invention. Therefore, these surfaces act as an antecedent
   basis to the bit holder (20).

In said claim 11 the said surfaces are presented in a way in which
they are arranged to bit holder of the invention, where no technical
change in the position / arrangement of said surfaces is apparent.
B. In a similar manner supporting surface 29 is presented to be
parallel to the longitudinal center axis 'M' in claim 12. It is noted that
the earlier claims 1-11 where the position / arrangement of these
surfaces were disclosed were vague. Therefore, the positioning of
supporting surface 29 should be discloses taking reference of 'M'
only. Any other claim is not able to bring clarity to the position of
surface 29 which otherwise intend to reveal or seek protection of
same position/arrangement.

C. Claims 2,4,8,10,11, 14 (without prejudice to any other claims)
disclose the position / arrangement of bearing surface(s) and
supporting surface(s). These claims are vague in respect to drafting
and fail to define the scope of the invention. The proper positioning
of these surfaces are required to be presented taking reference of 'L'
and 'M'. Further relation of these axes with '11', 'V' may be added in
same claim in order to bring clarity to the scope of the invention.

1. The multiple dependencies of the dependent claims 3-12 & 14, 17-19 (as claims X or Y, Claims X to Y, any of the preceding claim, etc.) makes it difficult to correlate the disclosed technical feature of said claims with other dependent / independent claims. The scope of said claims is not definite under section 10 (4) (c) of the Patents Act, 1970." [Emphasis supplied]

1. It is a settled principle of law that the examination process under the Patents Act is required to conform to the principles of natural justice, Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 12 of 21 Signing Date:25.03.2026 18:20 particularly the rule of audi alteram partem, which mandates that an applicant must be afforded a fair opportunity to meet the objections that may ultimately form the basis of refusal of the application. The Supreme Court in Assistant Commissioner. Commercial Tax Department v. Shukla and Brothers1 has held as follows:

"10. The increasing institution of cases in all Courts in India and its
resultant burden upon the Courts has invited attention of all concerned in
the justice administration system. Despite heavy quantum of cases in
Courts, in our view, it would neither be permissible nor possible to state
as a principle of law, that while exercising power of judicial review on
administrative action and more particularly judgment of courts in appeal
before the higher Court, providing of reasons can never be dispensed
with. The doctrine of audi alteram partem has three basic essentials.
Firstly, a person against whom an order is required to be passed or whose
rights are likely to be affected adversely must be granted an opportunity
of being heard. Secondly, the concerned authority should provide a fair
and transparent procedure and lastly, the authority concerned must apply
its mind and dispose of the matter by a reasoned or speaking order. This
has been uniformly applied by courts in India and abroad."
[Emphasis supplied]

1.   The scheme of the [Patents Act](https://indiankanoon.org/doc/1937976/) contemplates that objections are first
                    communicated through the FER as required under [Section 12](https://indiankanoon.org/doc/638928/) of the Patents
                    Act, and where necessary, clarified through a hearing notice, thereby
                    enabling the applicant to address the concerns of the controller through
                    written submissions or amendments as prescribed under [Section 14](https://indiankanoon.org/doc/231079/) of the
                    Patents Act.
   

2.   In the present case, an analysis of the FER and hearing notice in the
                    context of the impugned order shows that some objections under [Section
                    10(4)](https://indiankanoon.org/doc/1559634/) were raised for the first time in the impugned order. Consequently, the
                    applicant was not put on notice that these aspects would form the basis of 1 (2010) 4 SCC 785 Signature Not Verified Signed By:MOHIT          C.A.(COMM.IPD-PAT) 306/2022                                                          Page 13 of 21 Signing Date:25.03.2026 18:20 the final decision. The objections which appeared for the first time in the
                    impugned order are as follows:
   

i. "at least locally with an offset" in claim 19 is vague.
ii. "in front of the longitudinal axis" in claim 18 is vague."
iii. "Scope of the subject matter of claim 10 overlaps with claim 9."
iv. "extend locally" in claim 9 is vague
v. "transverse central plane" in claims 1, 12 is not defined.
31. The Appellant, during the course of the hearing, has endeavoured to
satisfy this Court on all of these specific terms, which are very well defined
and have been sufficiently backed by the drawings and detailed description
of the Complete Specification of the Subject Patent Application.

1. The submission made by the Appellant regarding these terms under Section 10(4)(c) of the Patents Act is as follows:

Terms/phrases from claims of Subject Explanation by Appellant under Section
Patent Application 10(4)(c)
"transverse central plane" in claims 1, 12 is "The Respondent No. 2 did not raise this
not defined objection in the First Examination Report
(FER) or the Hearing notice. Moreover, the
final claims 12 does not have term
''transverse central plane". Nevertheless,
the term "transverse central plane", finds
sufficient support from last para at page 4
and para 3 of page 11 of the specification.
The longitudinal axis of the insertion
projection and the bit receptacle
longitudinal centre axis define a transverse
central plane of the bit holder"

Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 14 of 21 Signing Date:25.03.2026 18:20

"extend locally" in claim 9 is vague The Respondent No. 2 did not raise this
objection in the hearing notice or the FER.

Nevertheless, it is clear from Figures 4 and
5 and their corresponding description
provided in the specification that the
bearing surfaces (21.5) extend locally, in
the direction of the longitudinal axis of the
insertion projection (21), beyond
supporting surfaces (29) as stated in claim 9. Scope of the subject matter of claim 10 The Respondent No. 2 did not raise this
overlaps with claim 9 objection in the hearing notice or the FER.

Nevertheless, Claim 9 recites that the
bearing surface (21.5) or bearing surfaces
(21.5) extend locally, in the direction of the
longitudinal axis of the insertion projection
(21), whereas claim 10 is directed towards
different embodiment of the present
invention, wherein the bearing surface
(21.5) or bearing surfaces (21.5) extend
parallel to the longitudinal axis of the
insertion projection (21) or extend
substantially in the direction of the
longitudinal axis. The aforesaid claims do
not have an overlapping scope.

"in front of the longitudinal axis" in claim The Respondent No. 2 did not raise this
18 is vague objection in the hearing notice or the FER.

Nevertheless, it is clear from Figure 7 in
combination of Fig. 3 and their
corresponding description provided in the Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 15 of 21 Signing Date:25.03.2026 18:20 specification that supporting surfaces
(18.1) are in front of the longitudinal axis
of the insertion receptacle (15) in the tool
feed direction (v) as stated in claim 18.

"at least locally with an offset" in claim 19 The Respondent No. 2 did not raise this
is vague. objection in the hearing notice or the FER.

Nevertheless, it is clear from Figure 7 and
its corresponding description provided in
the specification that supporting surfaces
(16.1) of the projection (17) consisting of
surface regions that are arranged at least
locally with an offset, transversely to the
tool feed direction (v), with respect to the
supporting surface (18.1) or supporting
surfaces (18.1) of the supporting projection
(12) as stated in claim 19.
33. This Court is of the view that the technical objections, particularly
those relating to the scope of claims under Section 10(4)(c) of the Patents
Act, must be clearly communicated to the applicant at the examination stage.
If Respondent No. 2 introduces new grounds for refusal for the first time in
the final order, the applicant is effectively deprived of an opportunity to
clarify the claims, amend the specification, or address Respondent No. 2's
concerns through submissions. Such a course of action runs contrary to the
fundamental requirement of fairness and transparency embedded in quasi-
judicial decision-making.

1. It is also pertinent to note that patent examination is inherently an
   interactive process, where deficiencies identified during prosecution are Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 16 of 21 Signing Date:25.03.2026 18:20 ordinarily cured through amendments or clarifications. When objections are
   raised for the first time in the impugned order without prior notice, the
   applicant is denied the procedural opportunity that the statute guarantees.

2.   In the present matter, while some objections relating to clarity of
                    claim language had indeed been mentioned in the FER and the hearing
                    notice, the impugned order proceeds to introduce additional technical
                    objections        and    interpretative   concerns   that   were   not   previously
                    communicated to the applicant. These newly introduced grounds appear to
                    have materially influenced the Respondent's conclusion that the claims fail
                    to define the scope of the invention. The reliance on such uncommunicated
                    objections renders the decision procedurally infirm.
   

3.   Thus, this Court is of the opinion that the objection under [Section
                    10(4)(c)](https://indiankanoon.org/doc/1418267/) of the Patents Act requires fresh analysis considering the
                    submissions of the Appellant. This Court also does not think it appropriate
                    to interfere with the compliance with the terms that were already raised in
                    the hearing notice. However, the argument of Respondent No. 2 that the
                    Appellant shall not rely on the description or drawings for claim
                    interpretation does not stand merit. It is now a settled legal principle, as a
                    Coordinate Bench of this Court and this Court has recently noted in [AGFA
                    NV v. Controller of Patents & Designs2](https://indiankanoon.org/doc/108749286/), and in Resham Priyadarshini v.
                    Controller of Patents & Designs3 and also as is evident from the reading of [Sections 10(4)(c)](https://indiankanoon.org/doc/1418267/) and [10(5)](https://indiankanoon.org/doc/1683474/) of the Patents Act, that the claims must be fairly
                    based on the disclosure made in the specification. Hence, the claims, or any
                    ambiguous terms in the claims, are to be read with the specification.
   

2 2023 SCC OnLine Del 3493 3 2025 SCC OnLine Del 9655 Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 17 of 21 Signing Date:25.03.2026 18:20 Therefore, Respondent No. 2 shall give a fresh opportunity to the Appellant
to respond to the objections to the satisfaction of Respondent No. 2 and
thereafter reconsider the claims in light of the Complete Specification and
the submissions of the Appellant.

Section 2(1)(ja) of the Patents Act

1. Now, this Court shall examine the objection of Respondent No. 2 that
   the Subject Patent Application does not have an inventive step as per Section 2(1)(ja) of the Patents Act.

2. The Court has considered the reasoning recorded by Respondent No.
                    2 in the impugned order, in relation to the findings on inventive step based
                    on prior art documents DE102005017760 (D1), EP1761682 (D2),
                    DE4322401 (D3), and CN101091037 (D4). Respondent No. 2 has
                    concluded that the claims of the Subject Patent Application lack inventive
                    step under [Section 2(1)(ja)](https://indiankanoon.org/doc/372733/) of the Patents Act when the teachings of D4 are
                    combined with those of D1-D3.
   

3. It is pertinent to note that the Subject Patent Application has two (2)
   independent claims, Claims 1 and 16. Claim 1 relates to a bit holder
   comprising an insertion projection and a holding projection, wherein the
   supporting segment includes two supporting surfaces arranged at an angle to
   one another, and further wherein the longitudinal centre axis of the bit
   receptacle and the longitudinal axis of the insertion projection enclose an
   obtuse angle. The claim further specifies that the supporting surfaces are
   arranged on both sides of a transverse central plane extending in the tool
   feed direction.

Independent Claim 16 relates to a base part configured to receive the
bit holder, wherein the base part includes supporting projections with prism-

Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 18 of 21 Signing Date:25.03.2026 18:20 shaped supporting surfaces arranged at an angle to one another, and wherein
these surfaces also form an obtuse angular relationship with the longitudinal
axis of the insertion receptacle.

1.   Thus, the claims of the Complete Specification of the Subject Patent
                    Application reveal that the invention lies in a specific geometric and
                    structural arrangement of supporting and bearing surfaces between the bit
                    holder and the base part, intended to create a stable support and guided
                    engagement between the two (2) components.
   

2.   According to the Respondent No. 2's reasoning in the impugned
                    order, a person skilled in the art would combine the teachings of D4 with
                    D1-D3 to arrive at the claimed invention.
   

3.   However, the impugned order does not follow the five-step test
                    prescribed by the Division Bench of this Court in [F. Hoffmann-La Roche
                    Ltd. v. Cipla Ltd.4](https://indiankanoon.org/doc/123231822/), as reaffirmed by another Division Bench of this Court
                    in [Tapas Chatterjee v. Controller of Patents & Designs5](https://indiankanoon.org/doc/121692947/).
   

4.   Patent law requires that the conclusion of lack of inventive step as
                    required under [Section 2(1)(ja)](https://indiankanoon.org/doc/372733/) of the Patents Act is to be supported by a
                    reasoned analysis demonstrating why the Person Skilled in the art would
                    have arrived at the claimed invention without inventive effort. The
                    impugned order merely states that such a combination would be possible,
                    without explaining why the skilled person would be led to modify the
                    structures disclosed in D1-D3 in light of D4 to produce the particular
                    angular and symmetric supporting surface arrangement claimed in the
                    present invention.
   

4 2015 SCC OnLine Del 13619 5 2025 SCC OnLine Del 6369 Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 19 of 21 Signing Date:25.03.2026 18:20 The conclusions recorded therein with respect to inventive step are
not supported by a proper feature-wise analysis of the claims vis-à-vis the
cited prior art, nor do they disclose a reasoned basis explaining how a person
skilled in the art would arrive at the claimed invention by combining the
teachings of the cited documents.

1. In the absence of such reasoning, the finding of a lack of inventive
   step cannot be said to satisfy the analytical threshold ordinarily required in
   patent examination.

2. In light of the above analysis, the Court finds that the impugned order
   suffers from both analytical and procedural deficiencies and cannot be
   sustained in law.

3. Therefore, the impugned order does not stand merit and is liable to be
   set aside. The matter is remanded back to Respondent No. 2 for a de novo
   consideration in accordance with the law, after affording the applicant an
   adequate opportunity to address the objections under Sections 10(4)(c) and 2(1)(ja) of the Patents Act.

4. This Court clarifies that it has not expressed any binding opinion or
   view on the issues dealt herein. No observation made in this judgment is to
   be understood as expressing any view in that regard, as would bind the
   adjudicating authority.

5. The Controller would afford a fresh opportunity of hearing the
   Appellant before deciding the Subject Patent Application after giving a
   hearing notice to the Appellant. If any new material comes to the knowledge
   of the Respondent, the same would be put to the Appellant in the hearing
   notice so that the Appellant has an opportunity to deal with the same.

6. Accordingly, the appeal is allowed, and the following directions are Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 20 of 21 Signing Date:25.03.2026 18:20 passed:

i) The impugned order is set aside, and the matter is remanded
back to the Patent Office for a fresh consideration of the objections
under Sections 10(4)(c) and 2(1)(ja) of the Patents Act.

ii) A fresh hearing may be issued for the Appellant, demarking all
the objections, including those which were freshly mentioned in the
impugned order.

iii) The applicant shall have the liberty to file fresh written
submissions along with an amended set of claims, if required.

iv) The Patent Office shall endeavour to decide the subject
application in an expeditious manner, preferably within four (4) months
from today.
50. The appeal stands disposed of in the aforesaid terms.

1. Pending application stands disposed of.

2. The Registry is directed to supply a copy of the present order to the
   office of the Controller General of Patents, Designs & Trade Marks of India
   on the e-mail- [email protected].

MANMEET PRITAM SINGH ARORA, J
MARCH 23, 2026/aa/fv Signature Not Verified Signed By:MOHIT C.A.(COMM.IPD-PAT) 306/2022 Page 21 of 21 Signing Date:25.03.2026 18:20