Case Note & Summary
Background: This is an appeal filed under Section 117-A of the Patents Act, 1970 by the applicant against the order of the Controller of Patents rejecting patent application no.201617013577 for an invention titled “USE OF FERULIC ACID ESTERASE TO IMPROVE PERFORMANCE IN MONOGASTRIC ANIMALS”. The appellant, Kemin Industries, Inc., sought a direction to allow the application to proceed to grant and to permit amendments to the claim set. Facts: The respondent issued a First Examination Report (FER) on 27.09.2019, raising objections on grounds of lack of novelty and inventive step, citing prior art documents D1 and D2. The appellant replied on 27.03.2020, distinguishing the claimed invention from D1 and D2 by stating that those documents taught only the use of xylanase, not the other main chain degrading enzymes (cellulase, glucanase, amylase) used in the invention. A hearing notice was issued on 06.05.2021, and the hearing was held on 07.06.2021. The appellant filed written submissions along with an amended claim on 21.06.2021. The Controller passed the impugned order on 19.07.2022 rejecting the application. Legal Issues: The core question is whether the Controller correctly rejected the patent application for lacking novelty and inventive step in view of the prior art D1 and D2. Arguments: The appellant contended that the scope of the monopoly claim is a method of supplementing ferulic acid esterase (FAE) produced from bacteria with four main chain degrading enzymes (cellulase, xylanase, glucanase, amylase), which results in significant improvement in metabolizable energy, as evidenced by Table 1 and Table 7 of the complete specification. The appellant also argued that D1 and D2 are distinguishable because they only teach xylanase. Court's Analysis: Not available from the extracted text. Decision: Not available from the extracted text.
Issue of Consideration
Whether the Controller of Patents rightly rejected the patent application on grounds of lack of novelty and inventive step over prior art documents D1 and D2
Law Points
- Appeal under Section 117-A of the Patents Act
- 1970
- challenges to rejection based on lack of novelty and inventive step
