PSITA is not omniscient, says Madras High Court. Overturns refusal order in favour of Microsoft.
The Madras High Court in a recent case upheld an appeal from Microsoft Technology Licensing LLC under section 117-A challenging the order of refusal issued in respect of the Patent Application bearing number 1783/CHENP/2012.
The patent office on 29th September 2020 had refused the patent application by Microsoft for an invention titled “”Message Communication of Sensor and other Data”, on the grounds that the invention lacked inventive step in view of one of the four prior art references cited during prosecution.
Claims of the patent application
The application contained two independent claims, one directed to “A method of providing information to an application” and another directed to “A machine for using sensor data”. The independent claims of the application read as follows:
“We claim:
- A method of providing information to an application (116), the method comprising:
receiving, from said application (116), a subscription request;
using a sensor interface (110) to obtain a reading from a sensor, said sensor interface that provides a mechanism through which sensor values are readable by application that use said sensor interface;
creating a message (114) based on a set of one or more readings, wherein said set comprises said reading; and
providing said message (114) to said application (116).
….
- A machine (108) for using sensor data, the machine comprising:
a processor (402);
a data remembrance component (404);
a sensor; and
a service component (112) that is stored in said data remembrance component and that is executable on said processor (402), said service component using a sensor interface (110) to obtain a reading from said sensor, said sensor interface being provided by an operating system that is present at said machine (108), said service component generating a message (114) based on information that comprises a set of sensor readings, said set of sensor readings (202-206) comprising said reading, said service component receiving a subscription request from an application that executes on said machine, said service component providing said message to said application based on said service component having received said subscription request from said application.”
Court’s analysis
The court analyzed the refusal order and in arriving at its decision in the matter underscored the centrality of the person skilled in the art (PSITA) as defined under Section 2(1)(ja) of the Patents Act. The court observed that the assessment of inventive step of a claimed invention is to be made by a two-step process:
- identification of feature(s), if any, that involve technical advancement over prior knowledge or having economic significance or both; and
- determination of whether the technical advance or economic significance or both of said feature(s) makes the invention not obvious to a person skilled in the art.
The court observed that, the obvious starting point in identifying PSITA is the field of invention and in the present case, the PSITA would be a software engineer with an understanding of hardware/computer electronics. The court referred to an earlier decision in Rhodia Operations v. Assistant Controller of Patents & Designs, 2024:MHC:6024;MANU/TN/0256/2024, to reiterate that, the level of skill of the PSITA is above average/good and that he/she possesses the skill set to do the job well. A PSITA is not omniscient and ingenuity or inventiveness cannot be attributed to him/her since the object of the exercise is to determine whether the claimed invention contains an inventive step.
Conclusion:
The Court analyzed the claims against the prior art D4 and concluded that though the claimed invention and the cited prior art deal with transmission of sensor data to a subscribing application, sensor service as used in the Applicant’s invention, does not form part of the cited prior art. Furthermore, D4 does not suggest or motivate, much less teach, the PSITA to arrive at the claimed invention. Arriving at the claimed invention from D4 requires ingenuity and not mere skill in the art.
Lastly, the court also opined that the width of the claims of the present application would need to be whittled down to confine the scope of the monopoly claim. Accordingly, the court stated that the application would proceed to grant subject to amendment of the independent claims.
Citation: Microsoft Technology Licensing LLC vs Assistant Controller of Patents and Designs, Madras High Court, 28th February, 2024, (T)CMA(PT) No.71 of 2023
Drafted by Mr. Gaurav Mishra, Patent Team, BananaIP Counsels.
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