Case: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253
Outcome: referred to
The Term-Seal FRM also contains the additional two integers in claim 5. The matting is fabricated from natural or artificial fibres. Dr Fredericks examined the samples and he concluded that the matting was fabricated into "a non-woven mat from synthetic (artificial) fibres". As to the second integer, I agree with counsel for the applicants that when the fibres are teased out it is apparent that long fibres have been woven into the fabric. It is permissible for me to draw conclusions from my own inspection of the alleged infringing product: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (" Minnesota Mining "). 93 The Term-Seal FRM also contains the additional integer identified in claim 6, namely, that the matting is woven fiberglass, polyester or polyethylene wadding, or geofabric. I accept the opinion of Dr Fredericks that the matting of the Term-Seal FRM can properly be described as such and, in particular, as polyester wadding or as geofabric. 94 The Term-Seal FRM also contains the additional integer identified in claim 9, namely, that the termite resisting product additionally includes a water-proofing compound, other additives and/or diluents. Dr Fredericks said, and I accept, that the Term-Seal Multi-Purpose largely comprises an acrylic resin (a polymer) which will, when cured, be waterproof. The Term-Seal Multi-Purpose does not contain as additives, creosote or orminoid, as referred to in claim 10, but the applicants do not allege an infringement of claim 10 and there is no reason to read down claim 9 by reference to claim 10. Claim 10 is a later claim with additional integers. 140 It follows from the above that the knowledge which is to be attributed to the person skilled in the relevant art is the "common general knowledge". That does not include a specification open for public inspection unless there is evidence that the disclosure in question was part of the common general knowledge before the priority date. Aickin J (with whom the other members of the Court agreed) made that point in Minnesota Mining . In this case there is no evidence that any of the prior disclosures identified for the purposes of the submissions as to novelty were part of the common general knowledge before the priority date. Indeed, Mr Christopher Langley, who I considered an impressive witness on the question of obviousness, had not seen many of the disclosures put to him in cross-examination before he began to prepare for this litigation. None of the prior disclosures advanced on the case as to novelty are relevant as such on the case as to obviousness because they are not part of the common general knowledge. 141 The common general knowledge is what is known or used by those in the relevant trade or field of endeavour. In Minnesota Mining , Aickin J said (at 292): "It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge." 145 In Elconnex , Burchett J said (at 507): "While the hypothetical skilled worker, against whose efforts the claimed invention is to be tested, may be taken to have extensive knowledge, he must be uninventive. Even a small inventive element is sufficient to sustain a patent. However, there is a great difference between the simple idea which really breaks new ground and an unimaginative extension of well-known techniques into a closely similar area. Of course, if the area is not closely similar, so that an imaginative leap (even perhaps a small one) is required to perceive that the techniques are applicable to it, there will be invention." (See also Tidy Tea at 413-415.) The particular question of the test of obviousness when faced with a patent involving what is said to be a new combination made up of old integers was discussed by Aickin J in Minnesota Mining . His Honour said (at 293): "In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter. An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."