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5.6.8.16 Combinations, Collocations, Kits, Packages, and Mere Admixtures

Date Published

Overview

Key points:

  • If an invention comprises a collocation in which one of the integers is new, then the invention will be a manner of manufacture;
  • where an invention consists of a collocation of known integers, the primary consideration in relation to manner of manufacture will be whether there is a working interrelationship or potential working interrelationship between the integers;
  • if the integers of a combination are defined to be in a physical arrangement that in, ordinary use, provides for such a working interrelationship (or the claim includes a limitation as to the use), then the combination will be a manner of manufacture (see Collocations below);
  • in the case of chemical combinations and the like, if the integers are in admixture, then a potential working interrelationship is provided and a manner of manufacture objection will generally not apply (see Admixtures below), however, there may be residual novelty and/or inventive step considerations;
  • in the case of “kits” of separate and known integers, a manner of manufacture objection should be taken if there is no feature defined that provides for the working interrelationship (for example, the kit is not limited to when it is used in a particular method). Additional considerations of novelty and inventive step will apply and objection under these grounds taken as appropriate. If an integer is only disclosed in a P, X, or E document, then a manner of manufacture objection should not be taken as the integer was not “known” at the priority date of the claim(s); and
  • an objection under s50(1)(b) (food or medicines being mere admixtures) should only be taken in the case of simple recipes. Where there is a reasonable basis for an inventive step objection, then this should be taken in preference.

Note that much of the judicial guidance in relation to collocations and mere admixture is old law. At that time, these concepts encompassed a variety of patentability considerations, including inventive step. With the introduction of the 1990 Act, the ground of inventive step was clearly distinguished from manner of manufacture.

As a consequence, some of the previous considerations of manner of manufacture or mere admixture are now more appropriately taken under inventive step. Certain types of collocations have been found by the courts to be unpatentable (see Collocations below). These are generally collocations in which each part performs its normal function and is not functionally dependent on any other part. In such cases, manner of manufacture is an appropriate objection.

Combinations

A patentable combination is a new combination of old integers having a working interrelationship or a potential working interrelationship. In British Celanese Ltd v Courtaulds Ltd 52 RPC 171 at pages 193 - 194, it was stated:

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."

In Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604; (1998) AIPC 91-401; 40 IPR 243, the High Court referred to Welch Perrin & Co Pty Ltd v Worrell (1961) 106 CLR 588 (1961) 106 CLR 588 on combinations as follows:

"Referring to the specification, their Honours [the court in Welch Perrin & Co Pty Ltd v Worrell] said:

'It was not seriously disputed that it is for a combination, in the sense that word bears in patent law. That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing.'

This notion of a 'new thing' includes a new result, 'that is, a new way of achieving an old purpose or the fulfilment of a new purpose' (Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 (1937) 59 CLR 30 at page67), and 'a new combination of features to obtain an improved result' (Meyers Taylor v Vicarr Industries Ltd (1977) 137 CLR 228 at page 249). The significance of the exclusion of a 'mere collocation of separate parts' appears from the statement by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 (1980) 144 CLR 253 at 266 that it is 'the interaction' between the integers which is 'the essential requirement'. It is this which supplies the inventive step and denies an allegation of lack of subject-matter in the case of a valid combination patent."

Thus, for a combination to be patentable, there has to be a working interrelationship or a potential working interrelationship between the component integers.

Collocations

A collocation comprises a number of known integers, process steps, or the association of materials or substances in such a way that no working interrelationship or potential working interrelationship exists between its various constituent parts. That is, each part performs its normal function and is not functionally dependent on any other part.

A collocation is only unpatentable if all its integers are known. In this context, "known" means publicly available. This situation relies on a "collocation" of items of prior art, rather than a "mosaic" thereof in the patent law sense (see Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd and Anor (1996) 34 IPR 256 (1996) 34 IPR 256. This meaning was not challenged in the appeal to the High Court). If an integer is disclosed only in a P, X, or E document, then a manner of manufacture objection should not be taken as the integer was not “known” at the priority date of the claim(s).

Where one of the integers or steps is new and otherwise patentable, the inclusion of such an integer or step in a collocation is not objectionable under s18(1)(a). In B.U.S.M. v. Fussel 25 RPC 631 at page 649, Fletcher-Moulton LJ stated:

"......if a patentee could rightly claim a general grant, but he limits that grant in any way - limits it, not extends it - no such limitation can destroy the validity of his grant. Supposing the Patentee was entitled to claim this first group by itself, i.e., generally, and he chose only to claim it when used in combination with a special operating mechanism, his so claiming it has limited, and not extended, his grant; and no such limitation which amounts to a present to the public of his invention, excepting when used under such circumstances, can possibly injure the validity of the grant, though it may prevent doubts arising as to the validity of the grant."

On this basis, a claim was allowed to a shaving kit including amongst other items a novel razor, even though the other components of the kit did not co-operate to form a patentable combination. The applicant was entitled to claim the razor by itself, however the fact that the claim was limited to an environment defined by the kit did not detract from his right to a patent.

Examples of cases where the alleged invention merely comprised a collocation (all of which were refused) are:

  • Williams v Nye 7 RPC 62 (the sausage machine case. The alleged invention consisted of a well-known mincing machine which fed meat to a well-known filling machine such as to include in one apparatus two machines which had formerly been used separately. The mincing part performed no more than its already well-known functions and similarly with the filling part); 
  • Battig's Application 49 RPC 415 (sequence of three known steps in the treatment of coke furnace gases to maximise the yield of hydrogen);
  • Young's Application [1966] AOJP 1028 (bottle with a spoon detachably secured thereto);
  • W.R.'s Application 41 RPC 216 (gramophone record plus a chart for physical exercises);
  • F.M.C. Corporation's Application [1974] AOJP 1060 (warehousing system);
  • Huntington Hartford's Application [1975] AOJP 3869 (two tables and a net for playing a ball game); and
  • Unilever Ltd.'s Application [1976] AOJP 531 (container and contents).

Kits and Packages

Claims to kits, such as a "kit of parts..." or "a kit for use...", often fall into the category of combinations, as there may be a potential working interrelationship between the parts thereof, for example, construction sets as toys or for commercial use. When examining claims to kits, it is useful to consider whether the integers of the kit are defined in such a way which requires a particular working relationship between them if assembled or used. Where individual integers (even though they may be individually known) are so defined as to only be capable of assembly, used to form a new structure, or achieve a particular result embodying the inventive concept, then a potential working interrelationship should exist.

A kit of tools would not normally come into the category of a combination as there would be no potential working interrelationship between the various sized tools of the same type and the various tools of different types. Similarly, a set of golf clubs cannot qualify as a combination, irrespective of the game which might require the use of various clubs to play adequately.

Case Law 

In National Research Development Corporation's Application [1988] AIPC 90-495, the hearing officer found that a claim to a kit for use in an assay, which comprised three components in separate containers, did not define an aggregation of integers having a potential working interrelationship.

In Wellcome Foundation Ltd v Commissioner of Patents 30 ALR 510, the High Court decided that the association of written instructions with a known chemical composition in a container was not patentable subject matter, there being no novelty in the container or the chemical composition. The principle of that decision was followed by the hearing officer in Re Schering Aktiengesellschaft (1990) AIPC 90–649 in concluding that claims to a kit, such as in the form of a known type of blister pack, of known components and incorporating separate dosage units, were not limited to the inventive concept. Thus, the separate items of the kit could be used according to the novel method of inducing labour or an abortion which was described in the specification or could be used in an entirely different manner. By corollary, a kit will not lack patentable subject matter if its physical construction is such that it is only capable of normal use in such a way as to inevitably realise the concept of the invention. See also Ciba-Geigy AG (Durr's) Application [1977] RPC 83 and Organon Laboratories Limited's Application [1970] RPC 574, which were referred to in Wellcome.

In Bristol-Myers Company v L'Oreal (1988) AIPC 90-529, the inventive concept resided in a process for waving or straightening hair which included the in-situ formation on the hair of an insoluble complex which had a conditioning effect. The hearing officer held that as the components of the package claims could be used in other (known) hair treatment processes, such claims were not limited to the inventive concept. The hearing officer also considered a package claim which included instructions on how to employ the contents of the container for waving or straightening hair and found (following Wellcome) that mere writing cannot confer patentability.

Other Considerations

Difficulties may be experienced in relation to claims which define a package, container or the like, holding ingredients separately, or in non-reactive admixture. Examples are:

  • substances A and B individually are inactive, however when mixed together will produce a glue or coating; and

  • substance A is for treatment of a condition in humans (or other animals) and substance B is for alteration of a side effect caused by the use of A.

In general, if A and B are both known and there is no novelty in the construction of the package, the claimed invention is a non-patentable collocation. However, there may be a potential working interrelationship where the components are to be used in a novel way and the construction of the package ensures they will be used in this way. Thus, where there is novelty in the sequential application of two compositions, a claim to a package of the two compositions so constructed as to ensure that in normal use such sequential application occurs, would constitute a true combination. Some guidance on alleged inventions of this type is provided in Unilever Ltd's Application [1976] AOJP 531 and Blendax-Werke's Application [1980] RPC 491.

Another situation in which a claim to a kit may be regarded as constrained to the inventive concept (and consequently considered to define patentable subject matter) is where one of the components is novel, or by the inclusion of words of limitation to a novel method, for example, "when used" or "whenever used" (see 5.5.4.7 "For Use", "When Used", etc).

Also to consider:

  • if the claims define both mixtures of known integers as well as kits/collocations of known and separate integers, then an inventive step objection should be taken to the mixture claims and a manner of manufacture objection to the kits/collocation claims;
  • if the claims define a mixture that is novel and inventive but also define kits/collocations of known and separate integers, then a manner of manufacture objection can be taken as the sole objection to the kit/collocation claims; and
  • an objection of mere admixture under s50(1)(b) is also a consideration. However, an inventive step objection should be taken in preference, unless the invention is a simple recipe. An objection under s50(1)(b) is likely to be taken only in exceptional circumstances.

Admixtures

Where the integers of a combination are provided in a form that provides a potential working interrelationship, then a manner of manufacture objection will generally not apply. In the case of mixtures and compositions, the integers may be considered as being in a form that has a potential working interrelationship. An objection under s50(1)(b) (mere admixture) should only be taken where the invention is a simple recipe (see 5.6.8.18 Food or Medicines, Being Mere Admixtures).

Where the integers are in a form that provides a potential working interrelationship, there may still be a residual inventive step issue as to whether it was obvious to combine the individual integers and whether the combination is simply the “predictable use of prior art elements according to their established functions”. If there is synergy, a potential working interrelationship or some other non-obvious advantage in combining the integers, then the admixture will not be obvious.

Thus, depending on the facts of the case:

  • if an integer of a mixture is novel and inventive, then the requirements of manner of manufacture and inventive step will be satisfied; or

  • if the claims clearly only define mixtures of known integers (that is, the claims do not include kits), then examiners can raise inventive step as the sole objection.

Note that where an inventive step objection is raised, mere assertions by the applicant of ‘synergy’ or similar advantage are unlikely to be sufficient without a credible basis. In such cases, examiners may ask for further evidence if they are not satisfied that a synergism or other advantageous effect has been demonstrated (see also 5.6.7.2 Section 40 Enabling Disclosures, ‘Synergism’).

Tips on Claim Construction

In some cases, it may not be readily apparent that a claim defines or includes a non-patentable collocation or kit of known integers, or whether the claim defines a patentable combination. Care should be taken to construe the claims and determine whether there is a patentable combination.

In general, the following will be considered patentable combinations, provided there is no indication in the specification that any terms are intended to be interpreted differently:

  • a composition comprising A and B;
  • a formulation comprising A and B;
  • a mixture comprising A and B;
  • a cell culture comprising cell A and cell B; and
  • a cell population comprising cell A and cell B, provided the cells are derived from different sources or tissues and are unlikely to be naturally occurring in this form (see 5.6.8.12 Micro-Organisms and Other Life Forms).

However, claims such as the following define non-patentable “kits” or collocations:

  • a pharmaceutical which includes combinations of known integers A and B for separate, sequential, or simultaneous use. This reference may be provided as an explicit definition in the claim or as a ‘dictionary’ in the description;

In this case, the definition of separate or sequential use clearly requires that the dosage forms are separate integers and, as a consequence, the pharmaceutical is a kit. Such kits may be referred to as a “composition”, “combination’, or ‘formulation”, however, this does not change their nature and a manner of manufacture objection should be taken.


  • a pharmaceutical composition comprising a solution of component A and a solution of component B; and

In this case, the definition of a “composition” suggests a single admixture, however the definition of separate solutions is indicative of a kit or collocation of separate integers.


  • similarly, wording such as an “article of manufacture”, a “package”, a “system”, a “kit of parts”, and a “free combination” indicates that the individual integers are merely collocated.

Amended Reasons

Amended Reason Date Amended

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