Could the Person Skilled in the Art be Reasonably Expected to Have Combined the Prior Art Information to Solve the Problem?

Date Published

Note: The information in this part only applies to standard patent applications filed from 1 April 2002 and with an examination request filed on or after 15 April 2013.  For standard patent applications with an examination request filed before 15 April 2013, see Could the Person Skilled in the Art be Reasonably Expected to Have Combined the Documents to Solve the Problem?  

Note: As an additional or alternative consideration to a lack of inventive step on the basis of two or more pieces of information, examiners should also consider whether the invention falls into any of the categories of invention that do not meet the requirements of being a manner of manufacture according to "traditional principles" (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 and D’Arcy v Myriad Genetics Inc [2015] HCA 35 - see Legal Principles).

The combining of prior art information (which can be documents or information made publicly available through doing an act, including a prior use) is often referred to as "mosaicing".

In Technograph Printed Circuits Limited v Mills and Rockley (Electronics) Limited [1972] RPC 346 it was stated:

"It is not disputed that the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of a scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a 'mosaic' out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity."

Note:  The test of whether a person skilled in the art could be reasonably expected to have combined the prior art information is part of the overall consideration of whether the claimed solution is obvious.  Therefore, examiners should expect to deal with this issue as part of the overall obviousness consideration (what would the skilled worker have done given the problem at the relevant date?)

In determining whether the person skilled in the art could be reasonably expected to have combined two or more distinct pieces of information, examiners should focus on the problem faced by the skilled worker and whether, in light of that problem, there is a reasonable basis (or some motivation) for the skilled worker to combine the two disclosures.  Examiners should have regard to the following:

  • whether the nature and content of the documents are such as to make it likely or unlikely that the person skilled in the art would combine them – is there some suggestion or motivation either in the references themselves, or in the knowledge generally available to the person skilled in the art, to modify the reference or to combine reference teachings with a reasonable expectation of success?  Is there some expected advantage that would have been produced by the combination?
  • whether the documents (or information) come from similar, different or remote technical fields – would the problem have prompted a search in those technical fields?  Would the person skilled in the art have researched that technical field since the same problem was likely to have occurred in it?  For example, in Dow Chemical Company (Mildner's) Patent [1973] RPC 804, an invention residing in an electrical cable in which a plastics jacket was securely bonded to a metal shield using a specified copolymer was held to be obvious in the light of one document disclosing all the features of the cable, but not the adhesive copolymer, and other documents disclosing the copolymer.  Although these latter documents did not refer to cable manufacture, they did disclose the copolymer as having high moisture resistance and being suitable for bonding plastics to metal, both essential properties for adhesives used in cables.  It was therefore reasonable to expect the skilled person concerned with the problem of adhering plastics to metal in cables to have found and considered these documents.
  • whether the art would have taught away from a particular solution or combination at the priority date – do the disclosed features initially seem to have an inherent incompatibility?  Would the combination not have been expected from a person skilled in the art?  Does one piece of information have a tendency to lead away from the mosaic?  Answering yes to any one of these questions would point towards the claimed combination being inventive.

Consideration should also be given to whether the skilled worker, while deemed to be aware of and to have carefully read all the documents, would have appreciated the relevance of the documents to the problem.