India: Arguing Inventive Step Using Counter-Intuitive (CI) Approach

Background – The Inventive Step Objection

The Inventive Step Objection Most of the patent applications filed with the Indian Patent Office face substantial objections from the Controller regarding their patentability. The most common substantial objection associated with patentability pertains to lack of inventive step in the claimed subject matter. Generally, the controller rejects the claimed invention for "lacking inventive step" or "being obvious" in view of the asserted combination of the prior arts or common knowledge. When the controller asserts a combination of the prior arts to render the claimed subject matter lacking inventive step, it becomes difficult to persuade the controller that it would not be obvious for the person having ordinary skills in the art (PHOSITA) to exercise (practice) the combination of the prior arts, as asserted by the controller.

Introduction to Counter-Intuitive (CI) Approach

The CI approach is a way for strengthening the applicant's arguments based on the "Prior art Teachings and Motivation". The CI approach establishes the non-obviousness of the claimed subject matter based on known disadvantage(s) of the combination(s) of cited prior arts.

The Counter-Intuitive (CI) Approach – When and Why

Generally, while responding to the obviousness objections, the arguments are presented pointing out that the prior art(s) neither teaches about the asserted combination nor motivates to exercise the asserted combination, to the PHOSITA.

In case(s) when the controller asserts the combination the prior arts based on common sense or common general knowledge, it is difficult to present the evidence of lack of motivation in the prior arts for their combination or modification of the closest prior art in light of the other cited prior arts.

In such case(s), the CI approach can be helpful for strengthening the arguments pertaining to lack of teachings or motivation in the prior arts for their combination or modification of the closest prior art in light of the other cited prior art(s).

In the CI approach, the arguments are based on the well-known disadvantage(s) of the controller asserted combination of the prior arts. Such arguments help in convincing the controller that "for a person skilled in the art, it would not be obvious to go against the well-known facts and combine the prior arts". Further, presenting arguments based on the well-known disadvantage(s) of the asserted combination helps the applicant to traverse the common-sense reasoning for combining the prior arts provided by the controller.

Exemplar Implementation

In a hypothetical situation, the claimed subject matter relates to a hydroponic plant growth system for nutritional growth of the plant in highly humid conditions. Specifically, the novelty of the claimed subject matter resides in employing gaseous ozone as fumigating agent for preventing mould formation during the growth phase. When the controller will begin the search for prior arts, most likely, he would find document(s) describing hydroponic growth systems and document(s) describing the use of gaseous ozone as an anti-fungal fumigation agent for removal of mould from seeds prior to storage.

In this particular case, the claimed subject matter would be novel as none of the cited document(s) discloses about novel feature of "employing gaseous ozone as fumigating agent in the hydroponic system for preventing mould formation during the growth phase". However, the controller would issue an objection pertaining to lack of inventive step with the reasoning that it would be obvious for PHOSITA to combine the prior art documents describing hydroponic growth systems and use of gaseous ozone as an anti-fungal fumigant for seeds.

The controller might present the reasoning that "even though the evidence of specific hint or suggestion are missing in the cited documents for their combination, the PHOSITA when presented with the problem of mould growth in the hydroponic system would then consider using the gaseous ozone for fumigation, by using his/her common general knowledge in light of the second document". Therefore, it would be difficult to traverse the reasoning provided by the controller in support of the asserted combination.

Further, the situation would be more complicated in absence of any explicit evidence(s) of "teaching away" from the asserted combination in the prior art(s).

In this scenario, arguments based on the CI approach could be used to traverse the controller's assertion of combining prior arts. Specifically, in this example, the applicant could argue stating it is well known in the art that the ozone is a plant growth inhibitor and interferes with the process of photosynthesis.

Therefore, the PHOSITA would not be motivated to act against the well-known fact and combine the teachings of the prior art documents, as it would be counter-intuitive for him.

The applicant should also explain why the claimed subject matter is working without showing the disadvantages, which the applicant has mentioned earlier and what are the specific conditions or configurations described in the application which are responsible for eliminating the specific disadvantage(s). In this specific example, the claimed hydroponic system with gaseous ozone fumigation does not show the effect of plant growth inhibition due to the conditions of high humidity and nutritional growth.

Also, it is necessary to do not go overboard in describing the disadvantages as it might pursue the controller against the claimed subject matter. Further, for implementing the CI approach, the applicant should present the publicly available well known data to the controller in support of the arguments submitted. Additionally, the applicant may provide reference for the data presented in the response.

Conclusion

In a nutshell, it is always beneficial to strengthen the main line of arguments with technically supporting approaches while responding to objections of lack of inventive step. As discussed above, the CI approach can be used as the supporting approach. Using supporting approaches increases the chances of pursuing the controller for allowing the claimed subject matter to grant.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.