Technograph Printed Circuits Ltd. v.
copyright 1997 Donald M. Cameron, Aird & Berlis
"There is no dispute in the present case as to the documents which he must be supposed to have examined. But in view of some observations which have been made I desire to say that I am very far from being convinced that he must be supposed to have studied every specification or other document which would be relevant on an issue of novelty. I understand that it is now quite common for those seeking guidance to make extensive searches of British and foreign specifications and our hypothetical addressee must be supposed to have done as much research as such persons in fact do. But there may be documents which, although available, would never be looked at by anyone making such a search as our hypothetical addressee is supposed to have made. Attention was drawn to the fact that both heads (e) and (f) in section 32 contain the words "having regard to what was known or used... in the United Kingdom". I doubt whether they were intended to mean the same in each case, If they were there would not be little, if any, difference between novelty and obviousness. Obviousness would cover practically every case of lack of novelty. In head (e) these words are used in an artificial sense and are held to include matter which in fact no one in the United Kingdom ever knew or was likely to know, such as the contents of some foreign
At pp. 404-405:
"This is a mere question of fact. It used to be left to a jury to say whether the step is obvious and it is therefore not a matter for evidence or expert witnesses. If the invention consists in adapting an old method to a new use and making thus a new combination, the question depends on whether anyone would see that the old method could be so employed. In my judgment, in this case no-one reading O'Connell's specification would without ingenuity have foreseen that the method suggested could be used to make the required pattern adaptable to a network of conductors -+ useful upon a flat circuit system plate."
"The first and most manifest factor to be considered is the common general knowledge of the skilled worker in the relevant field of art. In the present case no one had commercially applied the relevant method to the production of any electrical component of any type whatsoever - as was conceded by Mr. Whitford. Nor have the researches made by the defendants revealed any professional or technical journals which adverted to any such use of that method. There was thus no evidence upon which to suggest the existence of any common general knowledge which could have led to the alleged discovery being obvious to the relevant worker."
At p. 408:
"Another potential factor has been stated both counsel in this court to be public knowledge. This I understand to include all such data as could upon exhaustive research be found in the shelves which house the patent specifications of this and other countries. That includes any piece of paper there, however old, however much discarded from a practical point of view, whatever its language, be in European or Asiatic, and however unlikely it is that it would come to the attention of the skilled worker in question. For the purposes of this judgment I have assumed that all such public knowledge is necessarily relevant - artificial though the concept seems in relation to assessing "what is obvious" as opposed to "what is novel". To my mind, to say that something reconditely submerged in the overflowing archives can of itself result in a discovery being obvious seems a contradiction in terms and one which might merit consideration one day by those who are not bound by the rule of stare decisis. The strangeness of potential results of the law as both counsel stated it is well exemplified by the instant facts: for not only is there no evidence that Dr. Eisler ever saw O'Connell's patent (round which the main disputation revolved), but form the intrinsic evidence of the way the provisional patent came to be amended arises a plain inference that he could not have seen it.
Examining the matter, however, upon the assumed basis above mentioned, I have sought to put myself in the position of the notional worker who wanted to solve the problem of replacing point-to-point wiring and in his attempts was not looking for any particular method of achieving his objective but wished to reach it by any practicable method that he could discover.
Upon the law as above assumed he would in practice be faced in due course by the presence of large numbers of specifications from many countries. In the present case this court was informed that these specifications would be numbered in hundreds as opposed to mere score. It has further to be assumed that amongst the pile was the O'Connell specification from the United States of America.
It would to my mind be hopelessly unrealistic to think of that typical worker as scrutinising every paragraph of this voluminous material, and I accept Mr. Gratwick's submission that he is not to be assumed to take that course. On the contrary, the notional jury should be directed to the effect that he would simply do his best to ascertain the pith of these specifications and would probably do no more than examine the claims at the end of the specifications and perhaps also the accompanying drawings. On that basis the worker would certainly discard the O'Connell specification upon finding that the claim only related to electrostatic shields and aerials to be made by a die-stamping method. Indeed from a practical point of view he might have stopped short at the opening words of the by no means brief claims paragraphs when coupled with the first sentences of the specification itself."
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