Case Comment

Omark Industries v.
Gouger Saw Chain

citation(s): (1964), 45 C.P.R. 169 (Ex. Ct. per Noel, J.)

copyright 1997 Donald M. Cameron, Aird & Berlis




The Decision

At p. 218, 219:

"This now brings me to deal with defendants' attack on the patent in suit on the basis of lack of invention. Counsel for the defendants stated that he did not need Low-R to establish invalidity of the claims of the patent in suit by means of lack of invention. Indeed, he presented a chart on the other prior art in which he made a composite, showing that the elements are present to some and not in others, as the ordinary skilled workman is entitled to do, and that these charts indicate that whatever differences there are between the patent in suit and that of the prior art are not inventive differences and cannot form the subject of a valid patent.

Here again, I might point out, the defendants are not dealing with the invention of the patent in suit in a realistic manner by dissecting the invention as they have done in the prior art charts. Indeed, as I have already held, we are dealing here with an invention that lies in the combination. The combination here is in relation to a number of elements, the shank portion and the toe portion, and the bevel area of cylindrical surface which enables the unit to achieve ease of maintenance. Now, although it is permissible to mosaic in the matter of inventiveness, great caution should be used in dealing with a combination. In Albert Wood & Amcolite Ld. v. Gowshall Ld. (1936), 54 R.P.C. 37 at p. 40, Greene, L.J., stated:

"The dissection of a combination into its constituent elements and the examination of each element in order to see whether its use was obvious or not is, in our view, a method which ought to be applied with great caution since it tends to obscure the fact that the invention claimed is the combination. Moreoever, this method also tends to obscure the facts that the conception of the combination is what normally governs and precedes the selection of the elements of which it is composed and that the obviousness or otherwise of each act of selection must in general be examined in the light of this consideration. The real and ultimate question is: Is the combination obvious or not?"

It, therefore, is not permissible to characterize the invention as a series of parts because the invention lies in the fact that they were put together and I might even add here that the invention may well reside here in the very idea itself of arranging a tooth such as that of the patent in suit in a manner where its configuration will allow not only easiness of filing and maintenance, but will also give excellent cutting.

In Hickton's Patent Syndicate v. Patents & Machine Improvements Co. (1909), 26 R.P.C. 339 at p. 347, referred to in The King v. Uhlemann Optical Co., supra, invention in the idea alone was found sufficient to validate a patent.


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