Would the Person Skilled in the Art Have Used the Document to Solve the Problem?

Date Published

Note: The information in this part only applies to standard patent applications with an examination request filed before 15 April 2013.  For standard patent applications with an examination request filed on or after 15 April 2013, the requirement that the prior art information be ascertained, understood and regarded as relevant by the person skilled in the art does not apply.

In Tidy Tea Ltd v Unilever Australia Ltd 32 IPR 405 at 414, the court stated:

"The new provisions [that is, sec 7(2) and 7(3)] are limited by the words 'being information that the skilled person... 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.' And if a prior specification passes these tests, it must still be able to be said that, if that specification had been considered by the hypothetical skilled person together with the common general knowledge at the relevant time, 'the invention would have been obvious'."

As a result, documents cannot be considered in total isolation from the surrounding common general knowledge, nor in isolation from the teaching of other related documents. As was stated in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd [1972] RPC 457 at page 505:

"That leaves the final question as to whether a skilled addressee ... would by reason ... have come to regard the plaintiff's solution of the problem as obvious, despite the fact that his common general knowledge would have biased him against exploring the chances of oil-extended rubber providing a solution. In this behalf we agree with the approach adopted by the trial judge ...:

"It seems to me to be very dangerous and in law not permissible to assess obviousness in the light of carefully selected pieces of prior knowledge only"."

Thus, where the general art is heading in a completely different direction, an isolated document may not be considered relevant, even if that document would lead to the solution.  For example, in Fichera v Flogates Limited [1984] RPC 257 at page 275, the court commented:

"The patents show that, although the problems of the stopper rod and nozzle were well appreciated, the only solution of inventors in the art was to improve the stopper rod" [and not the nozzle].

Examiners must assess whether the solution to the problem was naturally suggested by the document (possibly in combination with one or more other documents) in the light of the common general knowledge at the priority date:

"The material question to be considered in a case like this is, whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject; it must not be the obvious or natural suggestion of what was previously known."

Savage v Harris [1896] 13 RPC 364 at page 370.