NOVELTY
46 Pursuant to s 18(1)(b)(i) of the Act, an invention is "a patentable invention" only if it is "novel". Pursuant to s 138(3) the Court may order revocation of a patent if the invention is not a patentable invention. Concerning novelty, s 7(1) of the Act provides:
(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) 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 would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
47 We note that, subject to s 7(1)(b), the question of novelty is to be determined by reference to each item of prior art information, taken in isolation from any other item. For present purposes the relevant prior art information is comprised of two patents:
GB 2,255,099 (the "UK Patent"); and
CH 665 665 (the "Swiss Patent").
48 Concerning novelty, the respondents cite the following passage from General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 485 - 486:
If the prior inventor's publication 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 patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated … if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented …
49 Concerning the UK Patent the primary Judge said at [92]:
The UK patent discloses an invention comprising a road marking composition containing glass beads, a synthetic resin and aggregate. In other words, the UK patent discloses an invention comprising a cementitious material providing a matrix for glass beads. The glass beads are preferably to be retained on a 1.18 mm sieve (that is, be larger than 1.18 mm) in specified weight ratios including up to 55% being so retained. Further, the glass beads may include larger glass beads in the size range of 1.5 to 3.5 mm, the proportion of larger glass beads to aggregate being in a specified weight ratio range wherein the larger glass beads exceed the weight of the aggregate. The UK patent also discloses the use of any suitable plasticiser, which from the evidence I infer must be understood to mean a polymer. As such, leaving aside my preferred construction of the patent it is clear that the UK patent discloses the combination of an aggregate and a polymer as well as glass beads.
50 At [93] the primary Judge observed that, concerning claim 1, the appellants had submitted that the UK Patent anticipated it, because, in the absence of a defined midpoint, … "any collection of beads including those in the UK patent will equally possess this feature or not." Her Honour said at [93], concerning that submission:
I disagree for the reasons already given. I consider that the UK patent does not literally disclose either the particular average particle size range or particle size distribution integers of the patent. I say "literally disclose" because there is a principle that something less than a literal disclosure may suffice (referred to as "enabling" disclosure). If the disclosure is not complete but it is sufficient to enable the skilled addressee, in the ordinary course and without invention, to add what is missing in the prior publication to obtain the claimed invention, then the invention is not novel (H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151; [2009] FCAFC 70 at [181]-[183]).
51 At [94] - [95] her Honour said:
The [appellants'] case is that the size range and particle size distributions in the patent are simply arbitrary and there is nothing inventive in the ranges and distributions claimed. I do not consider that this argument can be dismissed merely because the expert evidence in this case was not particularly helpful in disclosing the perspective of an uninventive person skilled in the art at the priority date. First, the UK patent discloses the use of glass beads in the size range of 1.5 to 3.5 mm. The only difference between that size range and the range claimed in the patent is the 1 mm at the upper end of the range (that is, 4.5 mm). Otherwise all of the size ranges claimed are within the disclosure of the UK patent. Given the nature of the invention, which involves relative proportions of large numbers of glass beads, the notion that there is anything inventive at all about adding one millimetre to the size range of the glass beads cannot possibly be accepted. The skilled addressee, in the ordinary course and without invention, would add what is missing in the prior publication to obtain the claimed invention. I cannot reach the same conclusion about the particle size distribution. The UK patent discloses a particle size distribution where more (55%) of the glass beads are larger than 1.18 mm. Hence, it discloses an invention where the major component of said beads within a relatively large incremental size range and a minor component of said beads is within a smaller incremental size range wherein the weight of beads in the large incremental size range is greater than the weight of beads within the small incremental size range, in accordance with the claimed invention. However, this does not relate to the larger glass beads. In so far as the larger glass beads are concerned what is disclosed is a relationship between the beads and the aggregate, not the larger and smaller beads themselves.
For these reasons the UK patent does not destroy the novelty of the invention claimed in the patent.
52 Concerning the UK Patent, amended appeal grounds 20 and 21 are:
20. Her Honour erred in finding that the UK Patent GB 2,255,099 (the UK Patent) did not anticipate claims 1, 2, and 3 of the Patent (Reasons at [94]) on the incorrect basis that the disclosure was limited to the relationship between large glass beads and aggregate.
21. Further, if claims 1, 2 and 3 of the Patent does not require a midpoint between the upper and lower bead particle sizes to define the boundary between the major and minor components, then her Honour should have found that the disclosure of the particle size distribution in the UK Patent anticipates claims 1, 2 and 3.
53 In effect, her Honour found that the UK Patent taught that there should be a larger proportion by weight of larger size beads than smaller size beads, but that it did not teach that there be a particle size distribution in which there were more larger size beads than smaller size beads.
54 The appellants submit that her Honour mischaracterized the disclosure in the UK Patent. They submit that it discloses, "the addition of large beads to the known components of British Standard 3262 ("BS 3262"), substantially all of which are less than 1.18 mm". It is not clear whether, at trial, the appellants advanced such an argument. Her Honour does not refer to it. In their written submissions on appeal, the appellants do not expressly refer to s 7(1)(b), although it might not be difficult to conclude that the UK Patent and BS 3262 should, at least for some purposes, be read as one, given that the latter is expressly referred to in the former.
55 However, in their submissions the appellants mis-state the context in which BS 3262 is mentioned in the UK Patent and its effect. It is mentioned at p 1, l 18 and p 2, l 13. However that patent does not state that the invention involved the addition of large beads to the known components of BS 3262. It rather states that a composition is to be "made according to BS 3262", and that any aggregate is to be in accordance with that standard. BS 3262 provides for the inclusion of some glass beads. However, neither in that standard, nor in the UK Patent are beads treated as "aggregate". See the UK Patent at p 1, ll 7 - 10 and 15 - 17, p 2, ll 12 - 18 and claim 1. Thus it is clear that in those documents any comparison between larger beads and aggregate does not involve a comparison between larger and smaller glass beads. In any event, whatever may have been the composition of BS 3262, it would not follow that in any subsequent mixture with additional glass beads, there would necessarily be a particle size distribution as prescribed in the patent. We agree with her Honour that the UK Patent does not disclose the requirement that the number of larger particles exceed the number of smaller particles. Nor do we see any basis for concluding that the skilled addressee, in the ordinary course and without invention, could have supplied that missing integer.
56 Concerning the Swiss Patent, her Honour said at [96] - [99]:
96 The Swiss patent relates to road markings using glass beads embedded in the marking mass. The invention involves the use of glass beads at least 1.5 mm in diameter, preferably 2-3 mm, projecting from the surface of the marking mass. The specification identifies large glass beads as those of at least 1.5 mm in size, with conventional glass beads being smaller, between 0.15 and 0.8 mm. According to the specification the proportion by weight of the large glass beads can be between 25% and 60%, preferably 30% and 50%. The marking mass can be thermoplastic (that is, a polymer).
97 The difficulty for the [appellants] is that the Swiss patent identifies any glass bead of 1.5 mm or above as large, with those up to 60% (that is, the majority) by weight being large beads as opposed to smaller beads, such beads being between 0.15 and 0.8 mm. In other words, the combination of the size range and size distribution for the Swiss patent is different from the size range and size distribution for the patent in this case, the latter involving beads ranging from 1.5 to 4.5 mm with the particle size distribution wherein the weight of beads in the large incremental size range is greater than the weight of beads within the small incremental size range.
98 From the evidence I cannot be satisfied that the disclosure in the Swiss patent, as at the priority date, would be sufficient to enable the skilled addressee, in the ordinary course and without invention, to add what is missing in the prior publication to obtain the claimed invention.
99 The [appellants'] case in respect of the parent application cannot be understood as an argument to the effect that the parent application itself is a document that anticipates and thus destroys the novelty of the patent. This is because the [appellants] concede that the parent application does not disclose the particle size distribution integer of the patent. This is sufficient to reject the case to the extent that it involved a suggestion of lack of novelty by reason of the parent application. The role of the parent application in the [appellants'] case more concerns the arguments about prior use.
The "parent application" is, as we understand it, the parent application of the Swiss Patent.
57 Her Honour concluded that the Swiss Patent did not anticipate integers 7, 8 and 9. There were two bases for that conclusion. First, at p 4 of the Swiss Patent, the large glass beads are said to be at least 1.5 mm in diameter whilst "conventional size" beads are 0.15 to 0.80 mm in diameter. The proportion by weight of large beads is to be, "between 25% and 60%, preferably 30% and 50%". Claim 1 of the Swiss Patent provides that, "at least some of the large glass beads … have a diameter of at least 1.5 mm …". In the patent, the average particle size is to be within the range of 1.5 - 4.5 mm. It is difficult to reconcile this proposition with the Swiss Patent's treatment of beads with a diameter of 0.80 mm as large. The appellants submit that pursuant to the Swiss Patent it is possible to calculate the average particle size. That may be so, but such a process is not disclosed by that patent. Average particle size plays no part in it.
58 The appellants also submit that claim 5 of the Swiss Patent discloses larger beads in the range of 25% to 60%, without any dividing line. It is clear from p 4 (in the first full paragraph) that the proportion is by weight, not particle size. The absence of a "dividing line" simply demonstrates another integer of claim 1 not disclosed in the Swiss Patent. However one looks at it, the Swiss Patent does not disclose integers 7 and 8 and therefore does not anticipate claim 1.