Inventive step/obviousness
158 Having regard to my conclusion that the patent is liable to be revoked under s 138(3)(f) of the 1990 Act on the ground that the specification does not comply with s 40(3), it is perhaps unnecessary to consider the respondent's alternative contention that the patent should be revoked under s 138(3)(b) of the 1990 Act on the ground of want of inventive step, or, to use the language of s 100(1)(e) of the 1952 Act, on the ground that the invention was obvious, and did not involve an inventive step having regard to what was known or used in Australia on or before the applicable priority date.
159 In order to address that question, having regard to my findings on s 40(3), some assumption needs to be made as to what the invention is. The issue of obviousness was argued upon the assumption that the product claims and method claims should be construed in the manner for which the applicant contends, and I will decide the issue on that assumption.
160 Inventive step is to be judged by reference to the state of common general knowledge in the industry in 1984: Advanced Building Systems Pty Ltd v Ramset Fasteners Ltd (1998) 194 CLR 171 [10]. Common general knowledge is "that which is part of the ordinary equipment of all persons engaged in the relevant art, ie part of their general background knowledge which they put to use in the exercise of that branch of industry or manufacture" (per Aicken J in Graham Hart (1971) Pty Ltd v S W Hart & Co Pty Ltd (1978) 141 CLR 305, 329. The question is whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge: Wellcome Foundation Ltd v V R Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, 270.
161 The process which I have referred to as strip lagging was well known in the industry prior to 1984. The applicant relied upon that fact in support of its submission as to the proper construction of the patent in suit. But the applicant contends that this patent is new and innovative in its combination of features, particularly the raised portions, plurality of cutting sipes and trim lines in lagging to be applied in strip form. Those features were not to be found in products which had been on the market at June 1984.
162 However, as Windeyer J pointed out in Sunbeam Corporation v Murphy Richards (Aust) Pty Ltd (1961) 180 CLR 98, 111, when want of subject matter, or lack of inventiveness is asserted, the thing or process claimed as an invention is assumed to be new. It is clear that the fact that something has not been done before is not an answer to a plea of obviousness: Preston Erection Pty Ltd v Speedy Gantry Hire Pty Ltd (1998) 43 IPR 74 at 85. As Cotton LJ said in Britain v Hersch (1885) 5 RPC 226 at 232:
"I do not agree with the view ... that when anything is done which has not been done before, that is sufficient to justify a patent being obtained for it. In my opinion, it must be a question of whether there is sufficient invention to justify a monopoly being granted by the Crown for the particular thing."
163 In Acme Bedstead Co Ltd v Newlands Brothers Ltd (1936) 58 CLR 689 a well designed bed containing new features compared with all known previous beds was a good and effective article, but not a patentable invention, since the plaintiff merely applied well-known things to an article to which they had not formerly been applied. At 709 Dixon J said, of the inventor:
"... he was not employed in invention but in supplying out of an embarrassing number of choices open to him that which in its practical application would prove most useful and commercially successful."
164 Invention means more than novelty. There must be an element of invention or inventive ingenuity, although even a very small advance over what is known may qualify as an inventive step: Winner v Ammar Holdings Pty Ltd (1993) 25 IPR 273, 280-281. An improvement which does not go beyond ordinary skilled designing work or mere workshop improvements cannot be considered as having required the exercise of any invention: Safveans Aktie Bolag v Ford Motor Company (England) Ltd (1927) 44 RPC 49, 61. However, in Samuel Parkes & Co Ltd v Cocker Bros Ltd (1929) 46 RPC 241 at 248 Tomlin J said:
"Nobody, however, has told me, and I do not suppose that anybody ever will tell me, what is the precise characteristic or quality the presence of which distinguishes invention from a workshop improvement ..."
165 The quantum of inventiveness required to establish that the invention is other than obvious has been expressed by various other formulations: the difference between the simple idea which really breaks new ground and an unimaginative extension of well-known techniques into a closely similar area: Elconnex (1991) 32 FCR 491 at 507 per Burchett J; whether the subject of the patent "was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end, or whether it required some invention to devise it": Vickers, Sons & Co Ltd v Siddell (1890) 15 AC 496 at 502; (to the same effect, whether if one wished to achieve a particular result, the means of doing so were obvious to persons skilled in the trade: Acme Bedstead; whether there is some difficulty overcome, some barrier crossed: R D Werner & Co v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 at 689 per Lockhart J; whether there is "such an addition to the stock of human knowledge as to entitle the patentee to a monopoly": Blakey & Co v Latham & Co (1889) 6 RPC 184 at 189 per Lopez LJ, cited with approval by Cooper J in Winner at 293; whether the invention was "beyond the skill of the calling": Allsop Inc v Bintang Ltd at 701. Something will be obvious (and hence the patent invalid) if it would appear to anyone skilled in the art but lacking inventive capacity, that to try the step or process would be worthwhile to solve some recognised problem or meet some recognised need: Coopers Animal Health Australia Ltd v Western Stock Distributors Ltd (1986) 6 IPR 545 at 565, and the cases there cited.
166 Whether or not the claimed invention involves an inventive step is ascertained on an objective basis. Because the test is objective, it is irrelevant whether the invention was a matter of chance or luck or the result of long experiment or great intellectual effort.
167 An inventive step may lie in the choice and management of integers in a combination patent. However, where one starts with a known article or thing and merely substitutes or adds a known device or means to facilitate the better use of the thing, there is a risk of want of inventive step "unless the combination is substantially a new thing": see Winner at 294; Fallshaw Holdings Pty Ltd v Flexello Castors and Wheels PLC (1993) 26 IPR 565, 568. But it is the inventiveness of the combination as a whole that must be examined; it is impermissible to determine inventiveness by a piecemeal examination, integer by integer: Elconnex (1992) 25 IPR 173, 184.
168 The applicant contends that neither of the respondent's experts expresses an opinion that the invention claimed is obvious, or that it is a solution to a problem which a skilled worker would have reached as a matter of routine. It will be necessary to return to the expert evidence in due course. The respondent submits that such evidence would be inadmissible on the basis of the statement in British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171, 196 that whilst an expert witness is entitled to give evidence as to the state of the art at any given time, and is entitled to explain the meaning of technical terms, he is not entitled to say whether any given step or alteration is obvious, that being a question for the Court.
169 However, s 80 of the Evidence Act 1995(Cth) now provides that evidence of an opinion is not inadmissible only because it is about a fact in issue, or an ultimate issue. In Fallshaw expert evidence was received, and acted upon, to the effect that the solution to the problem which the patentee claimed to have solved would have been obvious to any competent workman in the field (at 570). Similarly, in Elconnex (1992) 25 IPR 173, 186-187 Lockhart J said that it was within the competence of an expert witness to state that the matter put forward as a claimed invention was merely a routine variation of known principles in the field. In Winner at 281 Davies J said:
"Expert evidence from persons skilled in the field of the alleged invention as to whether the step was obvious or inventive is relevant and helpful though not determinative of the issue."
170 In Blanco White, Patents for Inventions [5th Edn] at 4-228 it is said:
"Apart from evidence directed to establishing the technical facts and the conditions and circumstances of the art and industry concerned, it is customary to adduce upon the question of obviousness evidence from expert witnesses as to whether (had they been faced with the alleged inventor's problem) the invention would at the relevant date have been obvious to them. There is usually a conflict of evidence as to this ...".
It is, however, noted that the balance of the paragraph, which I have not quoted, suggests that this type of ad hoc expert evidence may have its problems and is not as useful or cogent as other evidence which might be called on the point, such as people being faced with a problem, and solving or failing to solve it.
171 In my view, whatever may have been the position when British Celanese was decided, expert evidence that a particular step or alteration would have been obvious to a skilled worker in the field, is admissible on the issue of inventive step. In some cases it may be difficult to reach a conclusion on that issue without evidence on that matter.
172 In British Celanese Ltd v Courtaulds Ltd (1933) 50 RPC 63, 90 (at first instance), Clauson J said:
"I have a man properly informed in the art who knows so and so. I can infer that everybody properly informed in the art will have some knowledge, because they have exactly the same opportunity as he has ... I must be satisfied that he has not an excess of any peculiar or special sort of knowledge, but that what he is telling me is what he has acquired in his ordinary practice as a man engaged in the art."
173 A body of evidence was placed before me as to the lagging products available in Australia prior to June 1984 and as to publications which described the features of those products. Of the products referred to in the evidence, those which assumed the greatest significance in submissions were:
Bandag Lagging : Exhibit GW4
Gortread : Exhibit GW5
ETR70 : Exhibit GW7
There was some evidence that skilled people in the field of conveyor systems regularly had recourse to certain publications before June 1984 (eg Norrish 6/12/99 at [33]), and there was evidence as to the general availability of some products. Except to the extent that specific reference is made hereafter, the common general knowledge amongst skilled people in the field of conveyor systems in 1984, was sought to be established by inference from the disclosures contained in the products and publications to which I have referred.
174 From about 1970, Bandag lagging was applied in strips side by side along the face of the pulley. The lagging has a series of relatively deep channels, and a series of small shallow grooves in the treads. The deep channels are not straight but they run the length of the strip.
175 There is a dispute as to whether the respondent has established either that the Gortread product, or its method of use, was part of the common general knowledge. Gortread was used extensively in the Newcastle/Hunter Valley region after Mr Wilson's company commenced to manufacture it in 1973. Gortread is lagging in strip form with a tread pattern formed into the surface of the specially compounded abrasion resistant rubber. Gortread was applied so that its longitudinal length ran along the face of the pulley, and the strips were applied side by side around the circumference of the pulley. The tread pattern was designed to expel water from between the conveyor belt and the pulley. Gortread was usually applied by a hot bonding process but was also applied using cold bonding. The strips were sometimes butted side by side with the edges of the neighbouring strips touching. On other occasions the strips were spaced-apart. Mostly a point would be reached where there was insufficient gap for a further full width of strip to be laid. In the experience of Mr Upton, then of BHP Newcastle, the gap would be filled with rubber filler, or the last strip cut to the required width by placing a straight edge along the back of the strip and cutting along the straight edge with a knife.
176 In my view, the evidence enables an inference to be drawn, and I do infer that the features to be found in the Gortread product were part of the common general knowledge of persons engaged in the industry in 1984. Gortread had been on the market for a long time, and was used by large, well-known Australian companies. It is true that Mr Norrish did not mention Gortread in any of his affidavits, but that does not mean that the features to be found in the product were not part of the common general knowledge. The thrust of Mr Norrish's evidence is that they were. Mr Masters, was aware in June 1984 of the technique of applying lagging in strips across the face of a pulley, and in his expectation people who had knowledge of the use and application of lagging materials would have been similarly aware. One cannot infer from the fact that Messrs Langford, Pansini, Johnson, Gollen, Newnham, Sineick and Kurosinski did not refer to Gortread in their affidavits that the features to be found in the product were not part of the common general knowledge of skilled people in the field of conveyor systems, when those who were called (Messrs Langford and Pansini) were not asked any questions on the topic, and when the evidence of all of these men was directed to different subject matter. Messrs Clack, Barnes, Masters, Upton and Renfrew and (necessarily) Mr Wilson, were all aware of Gortread.
177 ETR70, now known as Remagrip diamond, has been supplied by the respondent since the 1970's. ETR70 was supplied in long rolls, 10 m x 2 m, and has a predetermined diamond shaped pattern formed into the cured rubber. ETR70 was normally applied to a pulley in a single piece having been cut to fit.
178 At least since 1978 one of the ways in which ETR70 was used was for the lagging to be cut in strips applied across the face of the pulley in situ. The pattern is normally matched such that the grooves continue uninterrupted around the face of the pulley. Mr Pansini was the Production Manager of the respondent in 1978. He gave evidence that from 1978 onwards, he and others employed by the respondent used a Rillfit machine to cut grooves in ETR70 to reduce the thickness of the rubber along the groove, and then cut the lagging in the middle of the groove. Mr Langford, the managing director of the respondent, lagged pulleys on site with strips of rubber from 1973 onwards.
179 The evidence of Messrs Pansini and Langford establishes that people who were involved in lagging had perceived since at least 1978 that lagging with a prepared pattern could be applied in strips to a pulley on site with a grooved channel to assist in cutting.
180 There was evidence from which an inference could be drawn, and I do infer, that it was not generally known in the industry in 1984, that ETR70 had been supplied in strip form or that it was installed in strips across the pulley face. Similarly, I infer that it was not generally known in the industry in 1984 that it was Mr Pansini's practice to cut lateral grooves in the lagging to reduce the thickness of the rubber along the grooves, and then cut the lagging in the middle of the grooves. However, it does not follow that lagging in strip form, and the use of grooves for cutting purposes, were not part of the common general knowledge in the industry in 1984 (see par 194 below).
181 Counsel for the respondent helpfully prepared a schedule of lagging material known before 20 June 1984. That schedule is reproduced hereunder:
182 A consideration of the evidence leads me to conclude that it was well known amongst skilled people in the field of conveyor systems in June 1984 that material for lagging pulleys could, and did include a variety of combinations of features including:
- lagging made from rubber, or rubber based material;