The Madras High Court, in a ruling concerning an appeal filed by Hendrickson USA (producers of heavy-duty suspension systems), remanded their patent application for an invention entitled the “Axle Mount for Heavy-Duty Vehicle Brake System Components”, back to the Patent Office. The Court determined that the Patent Office had not sufficiently evaluated the “technical advancement” as claimed by the Appellant.

Factual matrix:
An Appeal was filed by the Appellant- Hendrickson USA seeking inter alia, an order to set aside the decision of the Respondent-Controller General of Patents and Designs. The Respondent had refused their patent application on the ground of lack of inventive step, relying on certain prior art documents.

Appellant’s submissions:
The Appellant pointed out that independent claim 1 addresses an axle mount for brake system components, wherein the peened portion extends through the entire length and width of the weld and onto adjacent surfaces of the axle or brake system component, reaching a distance beyond the boundary of stress concentrations in the axle or brake system component caused by the weld. The Appellant also explained the invention through a pictorial representation of the claimed invention. The Appellant, in support of its contention, had relied on Avery Dennison Corporation vs Controller Of Patents And Designs – to argue that an extended time gap between the cited prior art and the claimed invention would ordinarily lead to a conclusion that the claimed invention is not obvious. This argument was used because one of the prior art documents was published in 1969.

Respondent’s submissions:
The Respondent filed its rebuttal, maintaining its position which it had adopted previously while refusing said patent application.

Court’s decision:
The Court stated that the concerned prior art document neither provides a conclusive determination as to whether the “adjacent area” of shot peening extends beyond the heat-affected zone (HAZ) or stress regions, nor clarifies whether references to “adjacent areas” encompass regions beyond the stress areas as there is no explicit mention of such areas in the prior art. The judgment mentions the purported advantages of such peening as claimed by the Appellants. Notably, claim number 1 put forth by the Appellant asserts that the peened section will extend “beyond a boundary of stress concentration on the axle and the brake system caused by the weld.” The judgment upholds the Appellant’s argument that the contested order issued by the Controller did not adequately consider the undertaking peening beyond the boundary of stress concentration, thereby the impugned order ought to be set aside. Consequently, and the matter was remanded back to the Patent Office to be re-examined afresh by another Examiner.