Case: Vickers, Sons &amp; Co Ltd v Siddell [1890] 15 App Cas 496
Outcome: referred to
An appropriate starting point is the decision of the Full Court of this Court in Allsop Inc v Bintang Ltd (1989) 15 IPR 686. After referring to the fact that there must be an inventive step, although it can be a small one, and the fact that the cases time and again have warned against the "seductive clarity of hindsight", the Court said (at 701): "But although a simple idea may be inventive, it is essential for validity that there be inventiveness. Though small, it must be present. As was said in Graham v John Deere Co, supra, at 15, there is a 'requirement that the subject matter sought to be patented must be beyond the skill of the calling'. The question, as Lord Herschell said in Vickers, Sons &amp; Co Ltd v Siddell [1890] 15 App Cas 496 at 502 is whether the subject of the patent 'was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end, or whether it required some invention to devise it'. In R D Werner &amp; Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 523; 85 ALR 679 at 689, Lockhart J said: 'There must ... be some difficulty overcome, some barrier crossed'. He cited a dictum of Cotton LJ that 'it must be a question of whether there is sufficient invention to justify a monopoly being granted by the Crown in the particular thing'. When the principles which surround that question have been stated, the question itself remains one of fact involving an evaluation of the claimed invention in the light of the evidence. It has been described as a 'jury question': Wellcome Foundation case at (CLR) 280." 155 In my opinion, having regard to the evidence before me as to the common general knowledge before the priority date it has not been established by the respondents that the invention embodied in the relevant claims in the Patent would have been obvious to a person skilled in the relevant art. Without necessarily indicating any preference for how the test as to obviousness should be expressed, it has not been established by the first and second respondents that the invention "was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end ..." ( Vickers, Sons &amp; Co Ltd v Siddell [1890] 15 App Cas 496 at 502 per Lord Herschell). In fact, had it been necessary to do so I would have found that the contrary was established. The idea of a matting impregnated with liquid termite resisting product and used to protect the cavity between masonry wall and concrete slab and thereby forming both a physical and chemical barrier to the entry of termites involved an inventive step having regard to the common general knowledge as I have found it to have been at the relevant time. 156 Although Mr Worthington expressed his conclusion in terms of novelty, it seems that his opinions address the question of obviousness. In addition to saying the invention described in the Patent was not a novel invention, he said that it was "merely an adaptation of an existing detail of construction using another type of material". That opinion appears to be based on the fact that the Termimesh system was in use and the positioning of a damp-proof course and flashing. Those matters do not mean that the invention in the relevant claims was obvious. Nor do the other matters he referred to such as Alcore (which is a roll of aluminium sheets), vapour barriers (which are impervious sheets laid under the slab and up the edge of the slab) and shower damp-proofing mean that the invention disclosed by the relevant claims was obvious. 157 Insofar as Mr Worthington expressed the opinion that the invention in the Patent was obvious, I reject that opinion.