The Patents Act, 1970 (as amended) Section – 15, 25(1) (a) In the matter of Application No. 752/MUM/2004 filed on 14/07/2014 and In the matter of a representation by way of opposition under section 25(1 ) Applicant : 1. MAHINDRA & MAHINDRA LTD, Mahindra Towers, Worli , MUMBAI Maharashtra 2. M/s M.N.Rama Rao&Company 18,Victoria Road,Viveknagar P.O,Bangalore-560047, Karnatka ,INDIA. Opponent: 1. Kamalkishore C Vohra 6d3/3,Siddharth Nagar,PHASE 1,Aundh ,Pune-411007

Date of hearing (Pre grant representation) ...04/01/2010

2. Date of hearing (Section 14)……………………………………28/03/2012 Hearing attended by ………………………………………Nil Next date of hearing…………………24/07/2014 Hearing attended by following: 1) Vasudev G.Halbe Dy G.M(Engines) M&M,MRV Chennai(inventor). 2)Sahastrasashmi pund, manager-IPR , M&M Ltd. 3)Prafulla wange patnet agent (2058). 4)Ashif Lakhani Patent agent (2026). 5)Raktim Ganguly Examiner of Patents & Designs. Hearing attended by ………………………………………Nil Next date of hearing…………………26/09/2014

1)Prafulla wange patnet agent (2058). 2)Ashif Lakhani Patent agent (2026). 3)Raktim Ganguly Examiner of Patents & Designs Written submissions received in pursuance to hearing on 09/10/2014, 16/10/2014, 28/11/2014,26/12/2014 DECISION

1.

MAHINDRA & MAHINDRA LTD, and

M/s M.N.Rama Rao&Company

( herein after referred to as ‘applicant’) filed an application for Patent

entitled ‘An

improved air filter for automobiles ’on 14/07/2014 in Patent office Mumbai. The application was given serial no. 752/MUM/2004. An Indian national ,Dr Kamalkishore C vohra , on 21/07/2008 filed a representation u/s 25(1), The Patents Act,1970(as amended) to oppose the grant of Patent to this Patent Application. 2. The said application was examined under section 12 of the Patents Act,1970 (as amended) and First Examination report was issued vide this Office letter No.752/mum/2004 /1572 dt.17/02/2009 3. Office through letter 752/mum/2004 /1573 dt 17/02/2009 invited applicant to file reply statement and evidence as per Rule 55(4). 4. Reply of applicant in respect of above through their agent was received on 12/05/2009 5. This Office vide Office letter 752/MUM/2004 /12189-12190 dt 04/01/2010 invited applicant and opponent for hearing of pre grant representation u/s 25(1)(a)on 27/01/2010 at 15:00 hrs However The opponent Indian national ,Dr Kamalkishore C vohra , on 11/03/2010 intimated to this Office that he wants to with draw the representation u/s 25(1), The Patents Act,1970(as amended)

which he has filed to oppose the grant of Patent to Patent

Application752/mum/2004. 6. However in this order it will be appropriate to mention here on 28/11/2014 the first applicant submitted a declaration along with proof of right from all the inventors that due to non availability of signing of form 1 Mr Kamalkishore C vohra was not mentioned. However he has made equal contribution to the invention. And further on 26/12/2014 all the inventors and second applicant also submitted the same declaration Agent for the applicant has

submitted form 13 for adding inventor and also they have attached proof of right in applicant favour signed in single paper from all the inventors. This form 13 is allowed 7. As there were certain objections pending on record ,applicant vide Office letter 752/mum/2004/481 dt 12/03/2012 invited applicant for hearing , however no body appeared in hearing . 8. The objection letter was further revised and Office letter 752/MUM/2004/Mech/gr/4/384 dt 24/07/2014 invited applicant for hearing on 21/08/2014 at 11:30 hrs and

following

objections were communicated : 1. Para 4 objection of FER is not yet met. Complete reference numerals should be provided for all the features of claims for clarity purpose. It was found in the claim submitted some of the key features were not indiacted with reference numerals even while descring the invention in the description pages. the features of the claims should be provided with reference signs placed in parentheses to increase the intelligibility of the claims. Further typographical errors appearing in the claims should be corrected. For instance at para (a), line 4, "are of vehicle", para (d), line 2, "had has", line 4, "lip is base on", para (g), "number of ribs", para"s (i), (j), & (m), "FCPC", etc. Furthermore the claims features should contain proper antecedent bases (a, an , the). 2. Para 5 objection of FER is not met.Some of the features recited in the description as well as in claims were not indicated by reference numerals and is not clear where the said features are located in the drawings provided. Appropriate correction required. For instance, "rubber hose", "front grill", "small hole", "another vertical projections", "meshed strcuture", "peripheral lip", "FPCP media element", "screw clamps", "ribs", , etc. were not provided with reference nuemrals and the features are not clear for understanding the subject matter 3. Preamble of claim 1 is not properly worded. The term "the assembly" appearing in it should be deleted for clarity purpose as the claim is for air filter assembly rather than assembling method. 4. Objection 1 in FER with respect to lack of novelty and inventive step shall stand hold as the applicant fails to traverse the same with proper justification. The concern raised in FER in objection number 1 is to be explained clearly and the difference between claimed of the alleged invention and those cited document (D1: US 4631077, D2: US 6019809, D3: US 4093437, D4: US 6811588) are to be presented in tabular form both novelty and inventive step perspective. Further Principal claim 1 is not sufficiently defining the essential technical constructional features of invention which is required for clearly & succinctly. Claim 1 broadly lists common features found in cited documents. In view of this it is not clear with regard to the subject matter the applicant seeks to claim. Therefore the above claim should be worded properly to define the invention clearly by incorporating all the novel, inventive essential constructional technical features. Claims shall be cast into two part form, with those features which in combination are part of prior art being placed in preamble & Novel and inventive features shall be clearly brought out by words’

characterized by”. Therefore the said claim in the present format is not allowable u/s 10(5) of the Act for not being clear and succinct.Further, some of the advantages features and method features appearing in the claim should be deleted and appropriate correction required. Claim should be strictly in either "device" or "method" format but not as a mixture of two. 5. Abstract should be provided complying with all the provision of Rule 13(7) of The Patents Rule 2003 6. The expression like “improves pressure drop”, “good filtration efficiency” etc do not have any limiting effect and not allowable u/s 10(4)(c) of The Patents Act 1970. 7. Claims 1 is indefinite and contains ambiguous expressions like “which”, “provide”, “arrange”, “increases” etc, should be avoided to enhance the clarity of claims 8. Preamble of claim 1 should be made consistence with the title of the application 9. Claim 1 in the present format, is not allowable as it recite plurality of distinct inventions and may attract plurality of distinct invention u/s 10(5) of the Act 10. Typographical error is observed in line number 14 of claim 1 like “has has” should be corrected. 11. As in latest form 13 applicant is different due to change in address and ommission of one of the applicant it can be allowed if form 6 and again a form 13 is also filed alongwith all legal documents . 12. While amending the specification following care shall be taken :(a) The applicant is required to clearly identify/mark the amendments carried out (if any) in a separate copy (from the originally filed set at the time of filing); irrespective of either they concern amendments by addition, correction, replacement or deletion or any amendments in the specification; (b) The applicant should bring the description into conformity with the amended claims. Care should be taken during the revision, especially of the introductory portion & any statements of problem or advantage etc., not to add subject matter, which extends beyond the content of the application as originally filed. The applicant is requested to effect the amendments by filing replacement pages for only those pages, which have been amended. If any correction is made in any page of the specification that page should be freshly typed and filed in duplicate; (c) The applicant applicant/agent shall undertake that, “In amended pages of specification & drawings, there is no addition of matter or increase in scope of invention”. While filing any amendment, the applicant applicant/agent shall be noted that any addition of new matter into description & claims are not allowed under section 57/59 of The Patents Act, as amended. While filing the reply, amended claims should be submitted in-line with the original filed claims by strictly adhering to section 57/59 of The Patent Act, as amended, (d)Title does not appear to be sufficiently defining the subject matter of invention & it should be made consistent with claims & title should be corrected on Form 1 & Form 2 [refer section 10 (1) & rule 13(7) (a)], (e) Revised Abstract shall be provided along with title, figure, summery of invention including technical problem & solution to problem [read rule 13(7)(a) with section 10(4)(d) of The Patents Act/ Rules (as Amended)], (f)Preamble of claims does not clearly define the subject matter of invention shall be suitably corrected, (g)Preamble of description does not clearly define the subject matter of invention shall be suitably corrected,

(h)Revised statement of invention shall be incorporated into description to make it consistent with claims. (i) Kindly note that it may not be possible to repeatedly examine your amended specification; in order to expedite the examination of the application within stipulated timeline, applicant is requested to submit the documents after complying with the above requirements without any delay.

Brief Hearing details : Keeping brevity, considering agents submissions what has transpired in the hearing is summarized here as: In response to objection 1.: Applicant has amended the claims with appropriate corrections. In response to objection 2: Drafting requirement w.r.t reference numerals has been met. In response to objection 3: The claims has been amended. In response to objection 4, : Applicant has given detailed analysis w.r.t cited prior art which is found on persuasive. The assembly has been found novel and inventive over prior art. In response to objection 6,7,8 :Claim 1 has been amended and requirements has been met. In response to objection 9: Applicant submitted during hearing that invention results in combination air filter assembly and there is no plurality. In response to objection 10: Typographical error has been corrected. In response to objection 11:Form13 has been submitted and is allowed Order: After hearing agent for the applicant and on perusal of the written submissions received and the proposed amendments w.r.t objections raised in the hearing letter as mentioned

herein

above , application is found to be in order for grant.

Dated: 31/12/2014

( Vikash Sharma) Assistant Controller of Patents &Designs