Case: Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491
Outcome: referred to
In this case there is no information which falls within the terms of s 7(3). None of the witnesses who gave evidence relevant to the question of obviousness identified prior art information, either a single piece or a combination, which they said a person skilled in the relevant art could before 21 December 1998 (that is, the priority date of the Patent) be reasonably expected to have ascertained, understood and regarded as relevant (or, in an appropriate case, combined). In those circumstances it is not necessary to consider the extent of the relaxation of the rules under the repealed s 100(1)(c) of the Patents Act 1952 (Cth) effected by s 7(3): Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 (" Elconnex "); Tidy Tea Ltd v Unilever Australia Pty Ltd (1995) 32 IPR 405 (" Tidy Tea "); Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway) [2002] HCA 21 ; (2002) 76 ALJR 816 at 821-823 [31] - [36] (" Firebelt "). 142 The attributes of the person skilled in the relevant art for the purposes of s 7(2) have been referred to in a number of authorities. For present purposes it is enough to say that the hypothetical worker must be taken to be non-inventive, although skilled in the relevant art. By reason of the conditions which prevail in modern industry, he or she may be part of a sophisticated research team, with a great amount of information available to it ( Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262 at 270 per Aickin J (with whom the other members of the Court agreed); Elconnex at 507 per Burchett J). 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."