Aspirating Claims Lack Novelty and Inventive Step

Case: Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061

Judge:  Besanko J.


This case is an excellent example of how the novelty and inventive step tests are carried out in Australia.  It does not break new ground but provides good summaries of those two tests.  The issue of Entitlement is also covered, but is not worth considering in detail.  While the result of the case is probably of immense concern to the various protagonists, it is the useful round up of the principles of novelty and inventive step that interest me.

Outline of Proceedings

  • Vision filed a notice of opposition.
  • Commissioner's delegate found that various claims did not involve an inventive step.
  • Commissioner's delegate held there were problems with entitlement to the claimed priority date of one of the claims.  An amendment to bring the description of the invention in line with that claim would not remedy the situation and that claim was clearly flawed as it stood.
  • The delegate said that there was patentable subject matter in the specification and gave Airsense (as it then was) 60 days from the date of the decision to claim that subject matter in the claims.  If suitable amendments were not proposed within that time, the application would be refused.
  • Airsense appealed and sought orders that the decision of the delegate be set aside, that the appeal be allowed and that the opposition be dismissed.
  • The Commissioner allowed certain amendments and addition to the claims.
  • Airsense ended up in a position where the terms of the claims by reference to which it had filed its appeal differed from those which existed on the Commissioner's file.  Yet the Commissioner declined to proceed further with the claims on her file.  
  • Airsense applied by a notice of motion in its appeal for a direction that the trial and determination of the appeal and all evidence be directed to the patent application with the form of the specification as amended.

In Airsense Technology Ltd v Vision Systems Ltd (2007) FCA 828 the court said that the notice of motion should be dismissed.  The court had considerable reservations about an approach which had the practical effect of collapsing the distinction, well-recognised in the Act, between the role of the primary decision maker and the appellate role of the court.  As stated: "It is not for me to opine that that is a useful distinction: the fact is that it is one which has been made by the legislation, and must be respected. Neither should I assume, in the present case, that the resumed hearing before the delegate under s 60(1) of the Act would be tokenistic. To the contrary, I am bound to treat such a hearing as the primary means established by the legislation for resolving such grounds of opposition as are raised."

Subsequently, a delegate of the Commissioner decided that the patent application in question (which by that time was in the name of Aspirating IP Limited), together with each and every one of claims 1 to 20 should be refused. The delegate decided that, despite the amendments to the claims, the fact that claims 1 and 3 were in the same form as they were when they were before the delegate who made the decision on 2 March 2005, meant that the patent application had to be refused.

Aspirating appealed against the decision of the delegate and sought orders that the decision of the Delegate be quashed, the appeal be allowed , the opposition be dismissed and that the opposed application proceed to grant.

The broad issues were:

  • The Applicant was not entitled, or solely entitled, to the grant of a patent for the invention
  • The alleged invention was not a patentable invention in that, when compared with the prior art base as it existed before the priority date, none of the claims was novel or involved an inventive step

Onus on Vision Systems

It is well-established that an opposition will be upheld only where it is practically certain that the patent, if granted, would be invalid (Commissioner of Patents v Microcell Ltd [1959] HCA 71(1958) 102 CLR 232 at 244-245;Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742(1999) 92 FCR 106.

The court confirmed that the fact leading directly to a conclusion of lack of novelty or inventive step must be proved to the level of practical certainty.

Priority Date

S 43 of the Patents Act provides that each claim must have a priority date.  The priority date is either the filing date of the patent application in question or the date of filing an earlier application provided that earlier application was filed not more than 12 months before the application in question was filed.  Also, the claim must be "fairly based" on material disclosed in the earlier application.

Vision Systems relied on English law and said that Aspirating IP (the Applicant) bore the onus of proving that the claims were entitled to the earlier priority date.  However, there is nothing in the text or structure of s 43 of the Act that supports such a contention.

In Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27, Fullagar J said that fair basing required “a real and reasonably clear disclosure”. In Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23, Barwick CJ said that the question of whether the claim was fairly based was a narrow one and was whether the claim as expressed travelled beyond the matter disclosed in the specification. Both these ways of expressing the test were approved by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[2004] HCA 58. The High Court also made the point that the fact that something is a requirement for the best method of performing an invention does not make it a requirement of all claims; nor does the fact that material is part of the description of the invention mean that it must be included as an integer of each claim.

In CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 the Full Court said that it is wrong to proceed to isolate in the body of the complete specification, or in the provisional specification, ‘essential integers’ or ‘essential features’ of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question.  Also, the requirement of ‘fair basing’ on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification.  Rather, there must be ‘a real and reasonably clear disclosure’.

One of Vision Systems' contentions was that the claims in the specification "travel beyond" the specification in the earlier UK application because the terms "secondary duct means” and “secondary duct means communicating with said main duct means” in the claims are wider than the “branching out” and “branching from” terms in the UK application.

The court rejected this contention and said that the UK application must be read as a whole.  There was nothing in the relevant passage of the UK application that restricted the disclosure made in the UK application to a secondary duct which joins the main duct.

Claim Construction

It is convenient to list the various principles of claim construction mentioned in this case.  These would be well known to any practitioner that regularly provides opinions:
  • A specification is not to be read in the abstract.  It is to be construed in the light of the common general knowledge in the art before the priority date - Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited[2001] HCA 8.
  • When construing claims, a court is not construing a written statement operating inter partes, but rather a public instrument.  The validity of the instrument depends on it defining a monopoly in a way not reasonably capable of being misunderstood - Kimberly-Clark Australia.
  • A specification is made up of several parts and those parts have different functions. It is not legitimate to narrow or expand the boundaries of a monopoly as fixed by the words of a claim by reference to other parts of the specification. 
  • Where the words of a claim are clear they are not to be made obscure by reference to statements in other parts of the specification. However, where terms in a claim are unclear, those terms may be defined or clarified by reference to the body of the specification - Kimberly-Clark Australia.
  • The construction of claims in a specification is a matter of law and is to be determined by the court. However, the court must be put in the position of a reader skilled in the relevant art at the relevant date: General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited.
  • Specifications often describe preferred embodiments. It is not permissible to read into a claim the features of the preferred embodiments unless there is express reference to them in a claim, : Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd.
  • The hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date - Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890.
  • The words used in a specification are to be given the meaning the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification - Flexible Steel Lacing Co.
  • As a general rule, the terms of the specification should be accorded their ordinary English meaning - Flexible Steel Lacing Co.
  • Evidence can be given by experts on the meaning those skilled in the art would give to technical or scientific terms and phrases, and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning - Flexible Steel Lacing Co.
It is common practice for drafters to use the word "means" when attempting to describe an integer with a functional rather than a structural limitation.  Here, the court had this to say about "means": "That is a word of the broadest connotation. It directs attention to the result or effect achieved by something, not the reason it was designed and built. It enables one readily to reach the conclusion that an item of plant and equipment might be used for more than one purpose."


The test for anticipation that would render a patent invalid is the same as that for infringement.  The practice is to ask whether the alleged anticipation would, if the patent were valid, constitute an infringement - see Harwood v Great Northern Railway Co [1865] EngR 708. The prior art document or act must involve or incorporate all the integers of the claim being considered.

In another venerable matter - Hill v Evans [1862] EngR 365, it was held that: "the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful."

The court provided a useful summary gleaned from General Tire v Firestone:
  • It is necessary to compare the earlier publication with the patentee’s claim and the earlier publication is to be interpreted as at the date of its publication having regard to relevant surrounding circumstances.
  • Both the patentee’s claim and the earlier publication are to be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate. 
  • Regard is to be had to the state of knowledge in such art at the relevant date. 
  • The construction of the documents is a question of law.  
  • The Court may be assisted by evidence as to technical matters.
  • The question of novelty is a question of fact.
The patentee’s claim will not be novel where the earlier publication:
  • discloses the same device
  • contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s claim
  • contains directions which if carried out would inevitably result in infringement of the patentee’s claim where carried out after the grant of the patentee’s claim.
The patentee’s claim will be novel where there are two ways of carrying out a direction in a prior publication both equally likely and one resulting in infringement of the patentee’s claim and the other not; where the earlier publication does not contain clear and unmistakeable directions to do what the patentee claims to have invented.

As far as "prior use" is concerned, it must be strictly proved and uncorroborated evidence must be scrutinised with care - Commonwealth Industrial Gases Ltd v M.W.A. Holdings Pty Ltd [1970] HCA 38.  Some principles have been distilled in this matter:
  • The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it - PLG Research Ltd v Ardon International Ltd [1993] FSR 197  
  • It is immaterial whether or not the invention has become known to many people or a few people - Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98.
  • The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity - Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91.
  • In order to be ‘available’, information said to destroy novelty must ‘enable’ the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point.
  • It appears that a contractor can be a member of the public for the purposes of determining if information was made publicly available: Lux Traffic Controls Ltd v Pike Signals Ltd [1993] RPC 107
  • Disclosure within a company (that is, to other officers or employees of the company) may not involve making information publicly available. Wood v Westaflax (Aust) Pty Ltd (1990) 20 IPR 387

One of the witnesses gave evidence of a location in which a unit was located that embodied the integers of the claims in question.  This evidence was for the purpose of showing "prior use".  The site of the unit was dangerous and access was restricted.  At the time, there was a security fence around the site and a large gate at the entrance.  Small visitor groups were allowed on to the site, but access was limited.  Visitors were required to give prior notice of their intention to visit the site and to obtain permission.  They were supervised to some extent.  The unit was in a ceiling space and a box associated with the unit was on a wall.  Access to the ceiling space was restricted to qualified personnel.  The general public had no right of access.

Critical aspects of the prior use arguments included a conversation concerning the precise features of the unit. There was no corroboration of the conversation and no records thereof.

The court had problems with the evidence of this witness because it had to do with occurrences that were very old.  There were also inconsistencies and lack of corroboration, which did not help that witness.  It appeared that an element of "reconstruction" had crept in.  However, the court addressed the facts on the assumption that it accepted the evidence.

As far as the conversation was concerned, the court did not regard that as "prior disclosure" (Wood v Westaflax (Aust) Pty Ltd)

The installation by contractors (the witness) would have been regarded as "prior use".  The occupiers of the site did not "expressly or impliedly impose a fetter of confidence on contractors who visited the site".

Vision produced a witness who had viewed and taken photographs of a unit which anticipated the claims in question.  Such viewing and photographs where not in themselves anticipatory since they took place at CERN in Europe (Note:  They would be now since the Patents Act has been amended).  However, that witness gave a series of presentations in Australia based on that information.  The court found that those presentations anticipated the claims.

Inventive Step

Under the Patents Act as it stood at the relevant time, s 18 sets out that a patentable invention is an invention so far as claimed in any claim, that, when compared with the prior art base as it existed before the priority date of that claim involves an inventive step.

S7(2) sets out that an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.

S7(3) defines the kinds of information as:

(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.”

[The Act has now changed to increase the scope of information capable of being used for an attack based on inventive step.  However, it remains instructive to consider this aspect of the case.]

Issues that must be addressed when testing for inventive step include the meaning of "obvious", the "person skilled in the relevant art", "common general knowledge" and the meaning of "be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."

  • "Obvious" means very plain and the question of what is obvious is a question of fact - Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59.
  • A “scintilla of invention” remains sufficient in Australian law to support the validity of a patent (Woolworths Ltd v WB Davis & Son Ltd Inc (1942) 16 ALJ 57.
  • “The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” - The Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd [1981] HCA 12.
  • ‘An invention may, and usually does, involve three processes. Firstly, the definition of the problem to be solved or the difficulties to be overcome; secondly, the choice of the general principle to be applied in solving this problem or overcoming these difficulties; and thirdly, the choice of the particular means used. Merit in any one of these stages, or in the whole combined, may support the invention.’ - Fletcher Moulton, The Present Law and Practice Relating to Letters Patent for Inventions (1913) cited in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA .
  • Common general knowledge means - “... 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.” Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited [1980] HCA 9.
  • Information in a document, even if widely circulated, is not part of the common general knowledge merely because the skilled person could be expected to locate it.  The question is whether it is "generally accepted without question" or "generally regarded as a good basis for further action’ by the bulk of those in the art: Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315.
  • “The question of what a person skilled in the relevant art would regard as relevant, when faced with the same problem as the patentee, is to be determined on the evidence. The starting point is the subject matter of the invention to be considered together with evidence in respect of prior art, common general knowledge, the way in which the invention is an advance in the art, and any related matters. It should be mentioned that the starting point is not necessarily the inventive step as claimed, or even agreed between parties, because the evidence, particularly in respect of a combination of integers, may support a different inventive step.” -  Lockwood [No 2].
  • It is trite that Hindsight is not permitted.

Vision's case was that the invention did not involve an inventive step because the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before 30 July 1993 or in the light of the common general knowledge at that time and the information in a particular article.

While a number of the witnesses had actually seen the specification in question, the court nevertheless accepted their evidence as to developments in the industry before the priority date.  However, the court placed no weight on their opinions regarding obviousness.

In considering the evidence, the court came to the conclusion that developing a new "filter medium or mechanism" would have been time-consuming and costly.  However, the skilled worker would start with an existing system rather than commence development of an entirely new system.  The existing system in question was the most well known system in Australia at that time.  The court said that it seemed that it would "have been very plain" to a skilled worker that the problem could be solved by carrying out design and arrangement which was "a straightforward matter for designers and installers of smoke detection systems at the priority date".  So the court decided that the claims in question were obvious.

A published article was identified by Vision which they contended rendered one of the claims invalid for lack of inventive step.  The court heard evidence from a patent searcher who used the tools available in 1993 to search for the particular article.  It was not found.  Bearing in mind that the onus was on Vision, the court pointed out that there was no evidence as to how many titles or abstracts would have been found in the search.  Also, the abstract of the article did not contain any "teaching" of a solution to the problem solved by the claimed invention.  So the court concluded that even if the skilled person had found the abstract, there was insufficient basis to show that the skilled worker would have ascertained and regarded the associated article as relevant.


Popular posts from this blog

Amending Granted Patents

For the Record

Invention copied? That's a good thing