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5.6.4.4 Single source of information, combination of documents

Date Published

Two or more documents considered Single Source of Information for Novelty

When assessing novelty, prior art information made publicly available in two or more related documents (other than "whole of contents" documents), or through doing two or more related acts, can be used 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. (s7(1)(b))

Prior art documents and documents referenced within them as prior art or otherwise related are unlikely to be sufficiently connected for the purposes of novelty based on a mosaic. However, this will depend on the nature of the art at the priority date and the degree of connection which is stated to exist in the documents themselves.

A single document may incorporate several distinct embodiments or disclosures. The above principles apply when deciding whether the features of one embodiment can be considered with the features of another embodiment as a single source of information.

Thus, the novelty of a combination of integers will not be destroyed by an earlier patent describing some of the integers, with reference to other patents that describe the other integers, unless there is a real link between the various earlier patents, as opposed to a mere reference. (See Martin Engineering Co. v Trison Holdings (1989) 14 IPR 330).

Legal Principles and relevant case law

Some guidance on when two or more documents constitute a single source of information is provided in Nicaro Holdings Pty Ltd v Martin Engineering Co. 16 IPR 545 at page 570 where Gummow J stated:

"What degree of lack of connection between two or more documents will make them 'independent' and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharpe & Dohme case*. Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here. Again, even where there is a further description of the prior publication, it may nevertheless be that the purpose of the reference is to direct the reader away from it, as disclosing something outmoded or defective. On the other end of the scale, the terms of the specification of the patent in suit in the Sharpe & Dohme case* indicated that the patentees themselves had been relying upon the prior publications in question; and the publications themselves formed what Astbury J called 'one consistent whole'."

*(1927) 44 RPC 367; (1928) 45 RPC 153.

The novelty of a combination of integers is not destroyed by a document disclosing some integers and referencing another document that discloses the other integers:

Martin Engineering Co. v Trison Holdings (1989) 14 IPR 330.

Combination of Documents for Inventive Step

When assessing inventive step, prior art information (which can be documents or information made publicly available through doing an act, including a prior use) can be combined and is often referred to as "mosaicking".

For 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. See 5.6.6.2 Information against which inventive step in assessed.

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?)

As an additional or alternative consideration to a lack of inventive step based on two or more pieces of information, examiners should consider whether the invention meets the requirements of being a manner of manufacture.

Legal principles and case law

Technograph Printed Circuits Limited v Mills and Rockley (Electronics) Limited [1972] RPC 346

Amended Reasons

Amended Reason Date Amended

Published for testing
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