obviousness
39 This brings me to the issue which occupied much of the debate between the parties and their experts. It is accepted that s 100(1)(e) of the 1952 Act is the relevant provision, namely:
"… that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim."
40 The question is whether, at the relevant date, the claimed invention would have been obvious to the unimaginative and non-inventive skilled technician in the trade in Australia. That person is taken to have common general knowledge, namely, that which is known or is used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade. That state of common general knowledge in Australia at the priority date must be established by evidence (see generally, Graham Hart (1971) Pty Ltd v SW Hart & Co Pty Ltd (1978) 141 CLR 305 at 330-331 ("Graham Hart"); Minnesota Mining & Manufacturing Company v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292-295 ("Minnesota Mining"); The Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 270; and Advanced Building Systems at 181).
41 In the present case, the only evidence which was led which directly addressed the state of knowledge in Australia at the priority date were some literature searches and the evidence of Professor Alexander, to which I shall return. The cross-claimants also sought to establish that the relevant field was international, and that Australia was part of that international field, with the consequence that what was known in England or the United States, for example, would be taken to be known in Australia. On this basis, the cross-claimants called evidence from experts who were working at the relevant time in the United States and England, who referred to many publications from around the world. The cross-claimants tendered dozens, if not hundreds, of publications from around the world.
42 The effect of the evidence of Professors Hibbert, Guilbault and Turner is that there was sporadic and infrequent attendance of Australian academics at overseas conferences, and very limited knowledge of and discourse with Australian academics. There is no satisfactory evidence as to the particular activities of the Australian academics, apart from Professor Alexander. Professor Alexander adds little to that general picture save for his own efforts to keep up with international literature. I accept that persons such as he would refer to international textbooks and periodicals which were available in Australia and would be familiar with some of them as a matter of routine. I accept that there would also be a body of literature available in Australia available to be searched, although, as counsel for the cross-respondents point out, electronic searching techniques have improved enormously since 1983.
43 In my opinion, the evidence falls far short of establishing that Australian common general knowledge as properly understood included relevant knowledge throughout the world, or that it included all that could be gleaned by searching through all the international texts and periodicals in Australia at the time. Even if that approach were valid, counsel for the cross-respondents submitted, in my opinion correctly, that:
(a) it was never shown that there was a community of relevant people in Australia (of whom Professor Alexander was representative) integrated into the larger international community; and
(b) it was never established that such people as might have been in Australia and otherwise in the relevant art were exposed to some identifiable common fund of knowledge existing elsewhere.
44 The cross-respondents are correct in submitting that the addressee is a skilled but unimaginative non-inventive party wishing to construct a device or devices for the purposes disclosed in the patent in suit for clinical or consumer use. There was no commercial entity involved in that field in Australia at the priority date. There is no evidence of any other organisation working in that field at the time. Professor Alexander was then the Head of the Department of Analytical Chemistry at the University of New South Wales. His work was pure research, not related to constructing devices for clinical or consumer use. His most relevant work related to rapid flow analysis, which is quite distinct from the methodology in the patent in suit. Furthermore, his research interests had principally related to potentiometric rather than amperometric analysis.
45 In my opinion, Professor Alexander was not the required skilled but unimaginative non-inventive technician and was not representative of such a party. On the one hand, he was not skilled as a manufacturer or designer of devices for clinical or consumer use. On the other hand, he was not unimaginative and non-inventive. He was a research scientist. In my view, his knowledge at the time does not represent relevant common general knowledge. I do not think that it is legitimate to incorporate the knowledge of Professor Alexander as part of the knowledge of any party wishing to develop a relevant device on the basis that he could, or would, have been engaged as a consultant. That reasoning, apart from being speculation, simply elides the difference between common general knowledge properly understood and specialised knowledge contrary to the High Court authorities to which I have referred.
46 Therefore, the cross-claimants have failed to establish the relevant common general knowledge which is the baseline from which to judge the obviousness of the invention. This is not surprising in a field which was entirely theoretical in Australia at the relevant time. The statutory baseline is what was known or used, not potentially known or used.
47 It is worth noting that although Professor Alexander referred in his evidence to several commercial devices and electrodes in use in Australia prior to the priority date, no case has been made that any claim of the patent in suit is obvious when compared with any of those devices and electrodes. The same may be said in relation to devices which were undoubtedly constructed for the purpose of teaching and research. As the basic research was published in the 1950s and taught by Professor Alexander, and others no doubt, for many years prior to 1983, the absence of evidence of any similar devices being used in Australia by 1983 tells against obviousness.
48 This conclusion is strengthened when the existence of the other commercial devices, particularly the colourmetric strip with which Professor Alexander was familiar, referred to in the specification of the patent in suit, shows that there was a market. Commonsense would also indicate that there would be a market for a device suitable for use by lay persons or for clinical use without extensive technical back-up services. The commercial success of the products of each of the parties, albeit in later years, bears this out. The need served in those later years no doubt existed before the priority date.
49 In relation to a purely paper case, it is necessary to recall the caution of Aickin J in Minnesota Mining at 293:
"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."
That caution was given in the case of a combination patent. It has even more force here, as although the cross-claimants submit that the patent in suit is a combination patent, it can only be so described in a strained fashion.
50 Prior art does not equate to common general knowledge. A publication is not part of common general knowledge unless evidence establishes that it is (Minnesota Mining at 292). It is not appropriate to make a mosaic of prior publications to compare with the invention in order to test obviousness (Minnesota Mining at 293). Indeed, as Aickin J pointed out (at 294):
"It may be observed that in the cases where obviousness is in issue very often the larger the number of prior publications which are relied upon as together establishing absence of an inventive step, the more likely it is that the alleged invention was not obvious for the wider one has to look to find all the integers the less likely it is that it would have been obvious to put them together in the particular manner in which the inventor did.
It may be noted that even in England where the process of making a mosaic out of prior publications is regarded as permissible under the Patents Act 1949 it is still necessary that the mosaic must be one which "can be put together by an unimaginative man with no inventive capacity"."
51 Even if, contrary to my opinion, the knowledge of Professor Alexander were to represent Australian common general knowledge, he identified a much smaller number of published sources than has been tendered in evidence and were referred to by others. It is to be noted that he referred to no patent specification. There is, therefore, no evidence that any specifications formed part of common general knowledge, and are thus irrelevant on the issue of obviousness.
52 I can deduce from the evidence of Professor Alexander as to his undergraduate lectures that there would be a number of graduates who would have had a basic understanding of the applicable principles of electro-chemistry. I am also prepared to assume that there would have been a number of those graduates who would know of at least some of the seminal papers, such as that by Clark and that by Updike & Hicks, and would be aware of the principles behind two and three electrode amperometric analysis. Such persons are closer to the skilled but non-inventive worker than Professor Alexander.
53 I cannot be satisfied that it would be a routine non-inventive exercise for such a person to proceed from that knowledge to any of the devices claimed. I am not even satisfied that it would have been a routine, non-inventive exercise for Professor Alexander to have done so. His evidence to that effect, if admissible, has little weight. He said in cross-examination that it was speculation. That is a fair description. Amperometric analysis was not his primary field of work or interest and he had done no research to speak of in connection with it. In cross-examination, he was taken through the prior art which he had identified and was unable to point to any embodiment with the features of the patent in suit. Furthermore, although there was some equivocation, I find from the whole of his evidence that there would have been serious contraindications at the time in relation to choice of a two-electrode system and in relation to the electrodes being in direct contact with the solution to be analysed, particularly blood and particularly if the electrodes were on the one support member of roughly the same size. Even in the case of Claim 3, I am not satisfied that the choice of a two-electrode system was obvious, that having two electrodes of roughly the same size was obvious, that having the two electrodes on the same support member was obvious, or that having both electrodes in direct contact with the solution (particularly blood) was obvious. It is also fair to say that his speculation was carried out in the full glare of hindsight. I share the scepticism of Aickin J and other judges as to evidence of this character (see Minnesota Mining at 294; Graham Hart at 332).
54 Counsel for the cross-claimants sought to persuade me that I could find obviousness by comparing the prior art with the patent in suit. He particularly suggested that Claim 3 was vulnerable, without limiting himself to that claim. He argued that if I construed the invention as relating to devices and apparatus rather than electro-chemistry, as I have, so that the electro-chemistry was a given, I could conclude that the arrangement claimed in Claim 3 was perfectly obvious. He drew attention to the lack of dimensions or size limitations, in addition to lack of information concerning the particular substances involved in the analysis. He drew attention to the diagram in a paper by P Schlapfer, W Mindt and PH Racine titled "Electrochemical Measurement on Glucose Using Various Electron Accepters". Such an invitation is seductive, but dangerous. A judge is not a skilled but non-inventive technician. In my case, I have no independent scientific or industrial qualifications, knowledge or experience. In fact, having considered the whole of the evidence of Professor Alexander, including cross-examination on the Schlapfer publication, I have held that a two-electrode system, with both electrodes of roughly equal size in direct contact with the solution on the one support, was not obvious. The dimensions do not matter.
55 This means that it is not possible to be satisfied that the solutions reflected in Claims 1 and 3 would have obviously been chosen at the time. I should add that the assessment of obviousness in relation to Claims 1 and 3, as I have construed them, has not been made any easier by the natural concentration of the parties (and myself) during the hearing upon a miniaturised external flat strip embodiment along the lines of the present commercial products of the parties.
56 It follows from my view as to Australian common general knowledge that I regard the evidence of the experts, apart from Professor Alexander, as essentially irrelevant, as none of them can assist as to the Australian position at the priority date. There is no real debate about the underlying scientific principles. In any event, I regard Professor Guilbault as quite unlike any person in Australia for the purposes of this case. He is, and was at the priority date, a real expert in the field. What may have been obvious to him gives no indication as to what would be obvious to the ordinary skilled but non-inventive worker, even leaving aside geographical considerations.
57 I regard the evidence of Professor Turner with some reserve. He puts himself forward as a member of the team of inventors, or at least as a member of part of the team, albeit junior member. His evidence establishes that apparently highly powered teams from two English universities and an American corporation were working on the project which led to this (among other patents) for some years. This does not make it easy to trivialise what was done, as he now seeks to do. He retained commercial links with the American corporation until the takeover by one of the present cross-respondents and now has commercial links associated with the cross-claimants. He was junior at the time and cannot help as to Australia.
58 Professor Hibbert was a lecturer in chemistry in the United Kingdom at the priority date, with little real association with the precise field and none with Australia. His evidence is very much the product of hindsight.
59 Professor Bartlett has had long-standing links with the cross-respondents. However, if it were considered relevant, I would accept the substance of his evidence. The gist of this evidence was that the solutions in Claims 1 and 3 of the patent in suit were counter-intuitive at the time because:
(1) the three-electrode system had taken over from the two-electrode system as the received wisdom, and
(2) this was certainly so if the electrodes were to be in direct contact with the solution to be tested, particularly if it was whole blood.
In the first place, the views he expresses now are consistent with views he expressed in a memorandum in 1984, when he was actually confronted in real life with the kind of exercise that others are now attempting, some seventeen years after the event, with litigation on foot. At the time, he was more like the skilled but non-inventive worker than he and the other experts are today. In the second place, Professor Alexander was not, in the end, able to give any satisfactory answer to the points made by Professor Bartlett. Whether he, or any expert, would have made the counter-intuitive choice is a matter of conjecture. It would not have been routine to do so. In the third place, in my opinion, his specialty as a physical electro-chemist is the most apt of the experts in dealing with the design of devices and apparatus.
60 Dr Sanghera is closest of the experts to the commercial "coalface", but he has a strong commercial interest and no direct knowledge of the state of the art in Australia at the priority date. He obtained his undergraduate degree in the United Kingdom in 1983.
61 I should deal with one aspect of the matter relied upon by counsel for the cross-claimants at various points during the hearing and in address, namely, the difficulty of discerning from the complete specification of the patent in suit what the inventive step was claimed to be and the reluctance of the cross-respondents to commit themselves to a position on that matter. While there is a sound foundation for the argument, it leads nowhere.
62 It is helpful to go back to the analysis of the various meanings of "invention" in Kimberly-Clark (at pars 20 and 21) and of "inventive step" and "inventive merit" in Advance Building Systems (at 186-187 and 191-192). If the complaint is, in substance, encompassed by the s 40 arguments, then I have dealt with it. It may be that the complaint is that the specification does not clearly identify precisely how the "invention" differs from, and improves upon, what went before: what is unique about it. In one sense that is correct. The specification refers to the prior art (some of it by incorporation), states objectives and describes the various embodiments of the invention. If there is, in fact, no advance, then the patent will be invalid on the grounds of lack of novelty or obviousness. The fact that the "advance" is not expressly identified does not lead to invalidity.
63 It may be that the complaint was directed to the forensic difficulty of establishing obviousness or lack of novelty without a statement of the "advance" in the specification or in the pleadings. I can see that point but, forensically, it could cut both ways, as it could make it more difficult for a patentee to rebut attacks upon lack of novelty and obviousness. The issue simply reflects the fact that the party seeking revocation carries the onus.