An invention can comprise features or integers A + B + C. The question is whether it is essential that at least one of those features is novel and inventive or that it is allowable to still be a patentable invention even if the three integers A, B and C are known but form a novel and inventive combination.
The Courts have reaffirmed that a combination of known features can be novel and inventive and therefore patentable.
In a recent decision1 handed down by the Full Federal Court on appeal from a single judgement2, the issue of ‘inventiveness required to sustain a patent’ was reviewed.
The claims of the patent specification3 in suit were primarily directed to an apparatus for manufacturing multi-strand rock bolts having spaced apart bulbs formed therein characterised by:
(i) means for supplying a multi-strand cable from a rotatable supply reel;
(ii) a means for forming the cable with bulbs at spaced intervals; and
(iii) a means for determining the position of the cable to stop operation of the feed means to enable a further bulb to be formed.
In evidence, the primary judge made specific findings as to the state of common general knowledge (CGK) at the priority date of the patent in suit including:
- cable bolts could be made from multi-strand cable;
- bulbs could be formed in multi-strand cable by applying forces acting coaxially with the axis of the cable, to compress it;
- cable bolts, in the form of bulbed cable, could be supplied in precut lengths or in continuous lengths of cable in the form of a coil;
- the coils could be used in dispensers at mining sites; and
- position and location sensor devices in a variety of forms, including in the form of counter wheels and programme logic controllers, could be used as part of an apparatus to determine the position of the material within that apparatus and to control the sequence of processing or manufacturing steps to be carried out by that apparatus.
The primary judge concluded that the primary claim (claim 1), inter alia, was obvious in light of the CGK. This finding formed the basis of the appeal by the patent owner to the Full Federal Court.
On appeal, it was asserted by the patent owner that the primary judge erred in the approach to ‘obviousness’ by considering each integer separately and asking whether it was obvious to select or try that integer, rather than whether the combination of integers was obvious.
The Full Federal Court agreed with the primary judge’s reasoning and affirmed that in the case of a combination patent4, the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers – it is the selection of integers out, of perhaps many possibilities, which must be shown to be obvious.
The Full Court referred to comments by Lockhart J in Elconnex Pty Ltd v Gerard Industries Pty Ltd5 that ‘it is impermissible to determine inventiveness by a piecemeal examination integer by integer’. What is essential is that, equipped with an understanding of the way in which the combination works, the Court asks not whether the function performed by each individual integer is obvious, but whether the whole of the combination of which they form part is obvious.
On this basis the Full Court confirmed the primary Judge’s opinion that the combination of integers was obvious in light of CGK. Therefore the Courts have agreed in principle that a combination of known features can be novel and inventive and therefore patentable but have stated that on the facts in this particular case the combination is not inventive.
Another older Court Decision
While the outcome was different in 6Aktiebolaget Hässle v Alphapharm Pty Limited, for a pharmaceutical formulation of the drug omeprazole to enable delivery to the small intestines without degradation in the stomach, the approach taken to determining inventiveness of a combination patent remains a question of ‘whether the whole combination is obvious’ as opposed to whether it would be obvious to try.
- DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd  FCA 132
- Garford Pty Ltd v DYWIDAG Systems International Pty Ltd  FCAFC 6 (30 January 2015)
- AU Patent No. 770594
- Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited  HCA 9; (1980) 144 CLR 253 at 293
- Elconnex Pty Ltd v Gerard Industries Pty Ltd  FCA 556; (1992) 25 IPR 173
- Aktiebolaget Hässle v Alphapharm Pty Limited  HCA 59; (2002) 212 CLR 411