Patent examination is supposed to be a conversation: the Office raises objections, the applicant answers, amends, clarifies. What it is not supposed to be is an ambush, where the decisive objection appears for the first time in the refusal order, with no chance to reply. In Wirtgen GmbH v. Controller General of Patents [C.A.(COMM.IPD-PAT) 306/2022], the Delhi High Court set aside just such a refusal, and put the point crisply: a Section 10(4)(c) clarity objection “must be clearly communicated to the applicant at the examination stage.”
The claims, and an objection that arrived too late
The invention (application no. 2874/DEL/2010, “Bit Holder and Base Part for Receiving a Bit Holder”) concerned the geometry of a bit holder and base part in milling and mining machines, where an obtuse angle between certain axes was said to improve load distribution and durability under high stress. The Controller refused under Section 2(1)(ja) (no inventive step over D1–D4) and Section 10(4)(c) (claims allegedly failing to define the scope of the invention).
But when the Court compared the FER, the hearing notice and the refusal order, the clarity objections did not line up. Complaints about vague terms — “transverse central plane,” “extend locally,” “in front of the longitudinal axis” — and about claim overlap surfaced for the first time in the refusal. Merely reciting the claims in the hearing notice, the Court held, was not enough to count as putting those objections to the applicant.
Natural justice, and reading claims with the specification
Introducing decisive objections only at refusal, the Court held, deprived the applicant of the chance to respond, amend or clarify — a breach of natural justice and of audi alteram partem. Examination under Sections 12 and 14 is an interactive, structured process: objections travel through the FER and, where needed, a hearing notice; new grounds cannot debut in the final order. The Court also rejected the Controller’s habit of reading claims in isolation, reiterating that claims must be construed in light of the complete specification (Sections 10(4)(c) and 10(5)), citing AGFA NV and Resham Priyadarshini.
On inventive step, the order fared no better. Asserting that D4 “could be combined” with D1–D3 is not analysis: there was no five-step exercise, no feature-by-feature comparison, and no articulated motivation for why a skilled person would make the combination. Relying on F. Hoffmann-La Roche v. Cipla and Tapas Chatterjee v. Controller, the Court held a bare assertion of combinability cannot sustain an obviousness finding.
Why it matters
Wirtgen is a tidy, applicant-friendly restatement of two recurring themes: objections must be put before they bite, and obviousness must be reasoned, not asserted. For practitioners, the practical takeaway is to scrutinise refusal orders for any ground that never appeared in the FER or hearing notice — that alone can be fatal to the order. The matter was remanded with a direction to issue a fresh hearing notice demarcating all objections, including the new ones, and to let Wirtgen respond. The Office gets to raise its clarity points — it just has to do so out loud, and in time.
Sources & further reading: Wirtgen v. Controller; Section 10(4), Patents Act; F. Hoffmann-La Roche v. Cipla; AGFA NV v. Controller.
Educational note: This case summary is general information, not legal advice.