450c)A Study on the Patent Law Standard of Non-obviousness: Appendix 2

...the broom that Marchessault put on the market in the fall of 1955 was the embodiment of an invention in which Marchessault was the inventor. Leaving aside the element of the short outer skirt as a protection against the breaking of the sweeping straws at the bottom factory binding and as a support for the sweeping straws, in my opinion, the loose lower cord around the sweeping straws a substantial distance down the broom from the factory bindings (which I have already described), by virtue of its effect of keeping the sweeping straws in a compact bundle without interfering with the flexibility, created the curling broom which was substantially different from the brooms previously used by curlers and definitely more satisfactory to them. It was not anticipated in my view by any of the earlier patents or by Ken Watson's personal practice of putting a loose string an inch or so below the factory binding (Ken Watson himself admitted that Marchessault deserved the credit for getting the loose string "down there" although he thought his loose string involved the same principle). The new element was relatively simple, it is true. It resulted, however, in a radically different broom that was so much more useful (judged by the assessment of those who use curling brooms) that it immediately came into great demand. There was no doubt in my mind that it was an "invention" within the meaning of the Patent Act in the sense that it was "new" and "useful". It was an inventive step forward. I also find that the combination of the element of the loose lower binding and the element of the short outer skirt as a means of protecting a loose lower binding from where also constituted an invention for the same reasons.

In my view, the combination of a retractable cross conveyor with one-sided elevation of the root products making it possible to achieve storability of the cross conveyor thus narrowing the implement for transport so that it is in vertical alignment with the size of the main frame, discloses inventive ingenuity, not taught by the earlier patents, which is properly the subject manner of a patent.

It was alleged, in effect, on behalf of the defendant that the plaintiff's apparatus was not patentable, that its component parts were old, that their use in mine shaft sinking practice was well known and obvious, that such use required merely the exercise of mechanical skill and that, consequently, there was no invention.

I do not see how it could reasonably be contended that the plaintiff's combinations were obvious. If it had been, an apparatus for mechanized mucking would have been developed long before the plaintiff's apparatus was devised, for there had been many attempts to solve the problem that mucking by hand presented and they had not succeeded. The fact that the advent of the Riddell Mucker was hailed as a remarkable achievement is a strong indication that it was not a mere workshop improvement over the prior art. The problems involved in devising a mucking machine that could effectively and safely be used at the bottom of a mine shaft were difficult ones. Quite apart from the statutory presumption in favour of the validity of the plaintiffs patents, I have no hesitation in finding that there was inventiveness in the plaintiff's concept that the elements that he used could be combined for use down in a mine shaft in such a way as to accomplish the mechanization of mucking and his effect and safe embodiment of it.

The many disadvantages of rinse-added liquid softeners or any other types of dryer-added softeners such as aerosol spray, etc., have for some time been apparent to those in the industry and caused them certain concern, resulting in considerable research being made in an attempt to find better methods and products for home-fabric softening. The evidence, which I accept, as to the obvious added convenience for the housewife of the new method and product, as to their immediate acceptance by the domestic market and as to their being more effective at removing static electricity and only slightly less effective than the liquid softeners in imparting softness to fabrics in domestic washing and drying processes, all demonstrates most convincingly the inventive ingenuity of both the method and the product.

...all the prior art taught something different in principle from that disclosed by the invention. Different therefore from the prior teaching the invention discloses and teaches separation of the air flow, and the process by which the advantageous result of decreasing drag on the trailer in the tractor-trailer combination can be accomplished, namely, by what occurs in the gap or area between the area of tractor and trailer so that the air flow reattaches to the trailer top and sides at the trailer front.

Bearing in mind that the stated purpose of the use of dyes in these patented processes was not to yield a colour image but rather, in the first instance, to facilitate removal of the unhardened resist from the lithographic plate support and, in the second, to secure the adherence of the resist to the glass support, the possibility seen by Dr. Materazzi is not, in my view, so evident as to meet the test of obviousness. The possibility would not likely occur to an unimaginative technician however apparent it might have been to a man of Dr. Materazzi's skill, unaided by hindsight, had he directed his mind to developing what its commercial success has proved to be a useful process.

Any instructions given, which might direct one as to how to overcome the said limitations referred to above, by Semple, Nosik, Hervo patents and by other patents referred to in ex. D-1, in my view, would not have assisted in arriving at the solution afforded by the essential features of the Bellamy mechanism and therefore would not have led an ordinary skilled workman directly and without difficulty to the solution obtained.

As a consequence, the defence of obviousness or lack of inventive ingenuity has not been established.

Now although the defendant, as we have seen, asserts that the patent in suit is not a new combination, such is not the case. Indeed, it is a combination of a particular sealing method not entirely similar to those found in the prior art, whether that be the vehicle light or the enclosure art, transferred to the sealing together with two well-known parts, a slightly cupped lens and cupped housing, but in a different manner and with an entirely different purpose or object than it accomplished when sealing ... an enclosure. This, in my opinion, definitely make it a new combination.

Now the combination of old and commonly known items is regularly held to be patentable and, in fact, virtually most patents are combinations of elements which are well-known and old, the patent being for combining them for some new purpose and inventive ingenuity being used in combining and adjusting existing devices and thereby achieving new and valuable results. However, in the present case, we have this ingenious combining, but we have also something more, i.e., a completely different disposition of the component parts and these parts themselves are different.

It, therefore, is not permissable 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 ensued in a manner where its configuration will allow not only easiness of filing and maintenance, but will also give excellent cutting.

...

In my opinion, the mere fact here of flattening the toe and giving a dimension such as to provide guideposts for filing within itself would be sufficient to add the attribute of inventiveness.

The main attack on the validity of the patent was that the game lacked the essential elements of invention and that is was merely a workshop improvement over the prior art that would be obvious to any person skilled in it and that it did not involve the exercise of any inventive of ingenuity on the part of the alleged inventor. It was contended that the game was not an inventive advance over the prior art or the common knowledge of persons skilled in it.

I have no hesitation rejecting the submissions thus put forward on behalf of the plaintiff in finding that there was inventive ingenuity in Mr. Lohr's game.

The court examined the plaintiff's patent to determine the question as to whether it is invalid for lack of invention or lack of novelty as pleaded by the defendant and after consideration of evidence adduced considering the prior art in this field, considering the functions, uses, advantages and disadvantages of the invention disclosed in the plaintiff's patent and after consideration of the prior patents and prior publications cited in evidence, the court comes to the conclusion that the combination of elements shown by the specification and by the third claim of the patent would not be obvious to a person skilled in the art at the time the application for patent was filed, that the said combination constitutes a step in advance in the art and it was at the time and there is disclosed the necessary "scintilla" of invention required to support a patent.

The question whether an alleged invention was obvious or not is exclusively a matter for the Court. It is not within the competence of a witness, whether an expert or not, to express his opinion on the subject. Moreover, the question is on fact.

...

...the issue is not whether the alleged invention would have been obvious to him [the trial judge] but whether it would have been obvious to person of ordinary skill in the relevant art.

The issue is not whether the integers in a combination invention were obvious but whether the invention of the combination was obvious, or, to put it in other terms, a patent for the invention of a combination should not be found invalid for obviousness of the invention for which it was granted unless it is shown to the satisfaction of the court that it was obvious that the integers of the combination should be combined as specified in the claim defining the invention. The unobvious nature of one integer of a combination may be such as to establish the unobviousness of the combination.

...

Moreover, the practical utility and commercial success of an invention may be material in determining whether it involved the exercise of inventive ingenuity.

Although success on the marketplace is not by any means conclusive proof of inventive ingenuity, as that success may be attained notwithstanding a complete lack of inventive ingenuity regarding the product and may be due entirely to marketing ingenuity and effective sales promotion. However, commercial success can be good evidence of the inventive ingenuity involved in the creation of a device as well as of its practical utility: it may indicate a real need on the part of the public which had not been satisfied previously.

and, at page 34:

...the question then rises whether an engineer with the SM1 and Bowles shower head, and possessing a knowledge of the art as it existed immediately prior to the invention of the SM2, would have arrived directly in the normal course of events at the SM2 without exercising any inventive ingenuity.

...

...the SM2 patent represented more than a mere combination of the SM1 and the Bower patents.

It was known, it is said, that flakes could be produced by a cross-cut process; and interfelting of several layers of material was well known; resins had been used to make particle board; resin content was the most expensive cost factor; those in the field constantly tried by experiment to lower the resin content, yet still produce a satisfactory product.

With that background an ordinary skilled, but uninventive, workman in the field would, it is urged, have easily seen that thicker crosscut woody wafers with tapered ends could be made, then interfelted using a comparatively low resin content, with a commercially satisfactory board the result.

and at page 211:

All this learning, it is submitted when put together in light on the common knowledge in the field, leads readily to crosscutting, small and larger pieces (with the thickness in length ranges of the wafers here), binding by resin and interfelting into boards.

It is often fairly easy for a defendant in an infringement suit, in hindsight, to thoroughly search and selectively unearth pieces of prior art in various fields, interfelt them with common knowledge, then say it was all very plain: an ordinary skilled workman would easily and readily have been led to what the "inventor" of the patent in suit now asserts.

... it is relevant in this case to consider ... the surprise of the witness Garrett who as stated, was a practical expert in the wire drawing field for most of his lifetime, and also the commercial success of one product of the plaintiff's patent, the Ardox nail.

The late President of this Court, Mr. Justice MacLean in Lighting Fastener Co. v. Colonel Fastener Co. et al... wrote: "Every trifling improvement is not invention and the industrial public should not be embarrassed by patents for every small improvement. A slightly more efficient way of doing a thing, small changes in size, shape, degree or quality in a manufacture or machine, even assuming novelty, is not invention. Something further is necessary to justify a monopoly. ...There must be sufficient ingenuity to make a useful novelty into an invention. A small amount of ingenuity may be sufficient, but there must be some ...

and at page 100:

Though unglamorous this fruitful enhancement of the art brought daily relief to hundreds engaged in filing or indexing tasks, easing of some tedious and tiresome motions, while intrinsically improving the speciality's, accuracy and durability. The combination at issue evinces, in my mind, sufficient degree of inventive acumen to uphold the patent. A simultaneous upsurge in sales enhances this opinion.

Although success on the marketplace is not by any means conclusive proof of inventive ingenuity, as that success may be attained notwithstanding a complete lack of inventive ingenuity regarding the product and may be due entirely to marketing ingenuity and effective sales promotion. However, commercial success can be good evidence of the inventive ingenuity involved in the creation of a device as well as of its practical utility: it may indicate a real need on the part of the public which had not been satisfied previously.

and at page 34:

...the question then rises whether an engineer with the SM1 and Bowles shower head, and possessing a knowledge of the art as it existed immediately prior to the invention of the SM2, would have arrived directly in the normal course of events at the SM2 without exercising any inventive ingenuity.

...

...the SM2 patent represented more than a mere combination of the SM1 and the Bower patents.

It is clear, therefore, that it is my duty to determine, as a question of fact, whether or not the invention in the present case would be obvious as a workshop improvement to a person skilled in the art and did not involve any inventive step.

The evidence of professor Hooper is to the effect that it was not an obvious, rational step to a person skilled in the art, seeking to eliminate or reduce the loss of steam in a trap, to utilize a solid disc instead of one providing a bleeder duct between the upper and lower chambers of the trap. ... I have reached the conclusion that the plaintiff has failed to discharge the onus on it to satisfy me that the Midgette invention was obvious, and I find as a fact that it was an invention. It is easy for anyone to say in retrospect that the relatively slight change which was made in the disc was obvious but, in my opinion, all of the evidence leads to the conclusion that it was not obvious.

Even if it were assumed that it was obvious that the wrinkles in the plastic protective covering of the gasket could be removed by the application of heat and pressure, it does not follow that the substitution of the continuous plastic protective covering of the gasket of ex. 10 for the eight pieces of the Holland cloth protective covering of ex. 9 was obvious or that the improvement of the frost shield of ex. 10 over that of ex. 9 was obvious. No one had ever thought of making the substitution before Mr. Walz did so and no one had ever thought of the advantages that would result from the improvement before Mr. Waltz did so. Moreover, the invention made by Mr. Walz was not obvious. I accept his evidence that the effect of the wrinkles in the protective plastic covering on the underlying adhesive of the gasket presented a problem to him. Heat had never previously been applied to the adhesive of such a gasket. He had done considerable test such as cold tests and ageing tests. The adhesive was perishable. It was of a rubber base, really a rubber cement, with oils and solvents mixed with the rubber. The solution of the problem that faced him was certainly not an obvious one. I have therefore, no hesitation rejecting the contention that the difference between the frost shield of ex. 10 and that of ex. 9 involved only a step that was obvious.

In support of the plea that the alleged invention did not at the date thereof constitute proper subject-matter for the grant of a valid patent counsel for the defendant contended that all the changes that the plaintiff had made in its scraper could easily have been made by a mechanic. He relied on the evidence of Mr. Francis that the elements in the claims were individually not new and that the majority of them represented old, well-tried practices, and the evidence of Mr. Ross that the matter of buckets showed a long process of evolution, and the patents filed by him showing that all the buckets referred to by him were members of the same family.

The contention that the designing of such a scraper was obvious should be summarily rejected. The changes in the design from the drag scraper, to which I shall later refer, to the slusher scraper covered by the patent, with its resulting change of the character of the scraper was not obvious. It is not necessary, under the circumstances, to refer to the details of the changes that were made. The whole history of the plaintiffs slusher scraper, with its visits to mines, its discussions, the drawing of models, the experiments made, and the resulting achievement showed skill and imagination and a large measure of inventive ingenuity. The contention that the development could all have been made by a mechanic was wholly unjustified.

It is relevant in this case to consider ... the surprise of the witness Garrett who as stated, was a practical expert in the wire drawing field for most of his lifetime, and also the commercial success of one product of the plaintiff's patent, the Ardox nail.

The late President of this Court, Mr. Justice MacLean in Lighting Fastener Co. v. Colonel Fastener Co. et al... wrote: "Every trifling improvement is not invention and the industrial public should not be embarrassed by patents for every small improvement. A slightly more efficient way of doing a thing, small changes in size, shape, degree or quality in a manufacture or machine, even assuming novelty, is not invention. Something further is necessary to justify a monopoly. ...There must be sufficient ingenuity to make a useful novelty into an invention. A small amount of ingenuity may be sufficient, but there must be some ..."

and at page 100:

Though unglamorous this fruitful enhancement of the art brought daily relief to hundreds engaged in filing or indexing tasks, easing of some tedious and tiresome motions, while intrinsically improving the speciality's, accuracy and durability. The combination at issue evinces, in my mind, sufficient degree of inventive acumen to uphold the patent. A simultaneous upsurge in sales enhances this opinion.

Reverting to the evidence herein, it appears from Anderson's testimony that all he did to solve the unidentified customer's generator problem was go to his shed, pick up a piece of old stove-pipe, mold it to go around the generator and then flair out the rearward portion thereof in order to ensure that the holes would be protected or shielded from direct splashes or that oil could not directed fall in, or that oil fumes and particles in the ambient air would be restricted somewhat in being drawn in by the impeller into the air cooling stream of the generator.

...

Quite apart, however, from the prior art submitted by the defendant and merely looking at the problem to be solved, how it could be solve and how the patentee solved it, it appears to me evident that the solution of an outwardly flared band attached to the generator would have been obvious.

and, at pages 167 - 168,

From this I must conclude that a competent workman at the date of invention, knowing that a rearward extension of the casing would shield rearward holes from the entry of contaminants, with the knowledge also of the teaching of Schneider, that if one makes the air undergo a change in direction an aerodynamic principle of reduction of particles, of contaminants, going into the generator will be realized, would have easily come up with a unit such as the progen unit and, therefore, I have here further reason to hold that the patentee's unit was a perfectly obvious, logical and reasonable solution to whatever problem existed at the time and, finally, that there was no invention in so doing.

...it does indeed seem that the formulas appearing in [the patent], for the preparation of wire frame steel, do not depart from a standard technique known to the industry for well over three decades. Therefore the element of novelty, if any, the step forward in this particular fabrication, in a word, the "scintilla of invention" must be sought for elsewhere...

The evidence discloses, and it has moreover being admitted, which for brevity I will call the industrial kneader, has been widely known for many years. Defendant's counsel contends that reducing the size and capacity of the industrial kneader to make a domestic kneader suitable for private families and replacing the mechanism operated by electricity, steam, or other motive power by a crank, operated by hand, assuming these to be the only changes effected, does not constitute invention, that at most they are the result of the ingenuity of an experienced mechanic....

...

...When the domestic kneader made its appearance on the market it was well received, and the evidence shows that a considerable quantity were sold in a short time. The commercial success of the Olivier kneader is clearly established, but while the commercial success of a product may demonstrate its utility, utility alone does not suffice to constitute an invention and warrant a patent.

Besides the commercial success which a product may have acquired and the utility which it may possess, in order that it may be patentable it must have solved a problem.

and at page 71:

The St. Anselme Foundry's industrial kneaders were motor driven; in place of the hand-crank found on the plaintiff's kneader there was a pulley operated by means of a belt or by a motor attached directly to the kneader. Motor and pulley have been replaced in the Olivier domestic kneader by a hand-crank. Does this change constitute invention? A hand-crank which sets in motion a gear wheel and a pinion is a method universally known for a long time, and utilized in a multiple different machines. But contends plaintiff's counsel, the patent in question is one of a combination of elements, amongst the various elements the hand- crank is but one; and in a combination patent all the elements included are protected though if taken by themselves and one by one they may be known and in current use. I do not think that it can be concluded from that that a manufacturer may adopt all the elements of any machine in the public domain with the exception of one, replace this one by a different element, itself known and in current use, and obtained for his machine a patent of invention which is valid.

...

...I am inclined to think, however, that the machine produced by Hectorine Mercier constitutes an anticipation of the Olivier kneader. According to the witness, this machine, used in her family for 35 years, served only in the making of butter; it was a churn and not a kneader. It is evident nevertheless that this machine could readily transformed into a kneader; it was merely necessary to replace the wood roller with its paddles, and the container by a metal crankshaft, an operation which required no ingenuity or inventive faculty but which could be done easily and rapidly by a workman with at least a little experience.

The art of parking meters was new. The improvement made was a simple one constituting a better way of securing an old result. It required no skill beyond that of a mechanic to make the necessary changes. There was no evidence that knowledge of the alleged defect in the Magee meter, (namely, that a slight jar would release the latch and the control of the violation signal before the predetermined period had expired) had lasted for any period of time. There was no evidence of a search to remedy the defect. There was no evidence that the Magee meter was commercially unsuccessful or that the patented meter was a commercial success over the Magee meter.

Once the problem in the Magee machine became known to those skilled in the art the cause of the defect was obvious; namely, that the use of a spring urging the signal into view. The remedy was obvious, namely, the using of the spring urging the signal out of view. It was obvious that the improvement could be done and it was obvious to do it. Having regard to what was known and used in the art, there was no exercise of the inventive faculty. There was no invention or insufficient invention to support the patent which therefore lacked subject-matter and is invalid.

...it must also be shown that in addition to the combination being a novel one it required the exercise of inventive ingenuity to bring it about. In my opinion, this essential requirement is missing in the present case. The idea of adding weight last to an object in order to bring it up to a predetermined weight is an obvious one. That being so, it seems to me that any person skilled in the art and having the knowledge which such a person ought to have, including the knowledge of the process disclosed in the Snow patent, would in the course of working on the problem of producing shuttlecocks of uniform weight obviously adopt the Snow patent process and add the necessary weight last or almost last. Moreover, if Mr. Pollitt started with the idea of obtaining the desired uniform weight by adding the necessary weight last and knew of the other methods of applying weights, as a person skilled in the art should have done, it seems to me that he would obviously select the Snow patent process as one to adopt for the purpose of adding the necessary weight last or almost last.

Under the circumstances, I find no difficulty in concluding that claim 4 is invalid for the reason that it did not require any inventive ingenuity to devise the combination covered by it.

Counsel for the plaintiff relied upon the commercial success of the shuttlecocks produced by the process covered by the patent as evidence of invention... In my opinion, the evidence of the commercial success of the plaintiff's shuttlecock falls far short of the kind of evidence required.

It has also been frequently held that a mere scintilla of inventive ingenuity is sufficient to support a patent. It has also been held that the practical commercial success of an article raises a strong presumption that inventiveness was necessary to product it for the first time. Furthermore, evidence of commercial success outside of Canada is admissible.

...

I have reached the conclusion on the evidence before me that the process in question and the type of cover achieved by the use of it was an obvious adaption of well-known principles and could have been done by anyone skilled in the art ... and hence that it was not properly patentable...

On appeal, the Federal Court of Appeal held at page 51, that:

Having regard to the history of the matter, in my opinion there was no "invention" in conceiving the idea that the way to eliminate the unsightly tear-seal edge of the thermoplastic tear-seal edge binder was to turn the outside vinyl covering over the filler boards and attach it on the inside. That was the traditional method of making book cases that it was desired to emulate. Similarly, in my opinion, there was no "invention" in conceiving the idea that the way to attach the outside cover on the inside was to have another piece of vinyl covering in the inside of the filler boards so that they two pieces could be fused together. That was the predominant feature of the tear-seal method which it was desired to improve.

Questions of invention and anticipation are questions of fact. No general rule can be laid down to determine whether any particular instance involves invention or not or whether any prior publication constitutes an anticipation or not. Each case must be determined on its own merits. After carefully perusing the evidence and argument of counsel, I believe that the specification of the Schleicher patent was liable to disclose to Benoit the material elements and features found in patent no. 282,214.

...

Although to a certain extent differently constructed, being more effectual and producing a complete carton instead of merely inserting partitions through the slots of a blank, it contains the same characteristics as those set forth in the said patent and reproduced in the plaintiffs machine.

Regarding the internal annular beads projecting inwardly from the face of the band, I have reached the conclusion, after a careful perusal of the evidence and attentive examination of the patents relied upon the defendants as anticipative, that the plaintiff made a new and useful invention. The plaintiffs invention, to my mind, involves ingenuity and novelty.

Having regard to the state of the art, at the time of the application of the respondent, we are unable to find in claim 6 that ingenuity and novelty which is essentially required to afford a good and valid subject matter for a patent of invention and validity to support the latter.

In our opinion there was no inventiveness in the article described by the respondent, at least in claim 6 of this patent. As there described, it is at most ... "an obvious development of something known".

In determining whether, in this case, it required inventiveness to conceive the article described in claim 1 of the plaintiff's patent I shall, therefore, disregard the presumption. Moreover, in making this determination I also intend to disregard the commercial success enjoyed by the plaintiff in the marketing of its tool caddy. Indeed, the tool caddy that was put on the market embodied many features which were not described in claim 1 of the patent so that it can be said that the article which found favour with the public was not the one described in the claim that is attacked by the defendant.

The evidence discloses, and it has moreover being admitted, that the kneader driven by motive power and used by bakeries and communities, which for brevity I will call the industrial kneader, has been widely known for many years. Defendant's counsel contends that reducing the size and capacity of the industrial kneader to make a domestic kneader suitable for private families and replacing the mechanism operated by electricity, steam, or other motive power by a crank, operated by hand, assuming these to be the only changes effected, does not constitute invention, that at most they are the result of the ingenuity of an experienced mechanic....

...

...When the domestic kneader made its appearance on the market it was well received, and the evidence shows that a considerable quantity were sold in a short time. The commercial success of the Olivier kneader is clearly established, but while the commercial success of a product may demonstrate its utility, utility alone does not suffice to constitute an invention and warrant a patent.

Besides the commercial success which a product may have acquired and the utility which it may possess, in order that it may be patentable it must have solved a problem.

and at page 71:

The St. Anselme Foundry's industrial kneaders were motor driven; in place of the hand-crank found on the plaintiff's kneader there was a pulley operated by means of a belt or by a motor attached directly to the kneader. Motor and pulley have been replaced in the Olivier domestic kneader by a hand-crank. Does this change constitute invention? A hand-crank which sets in motion a gear wheel and a pinion is a method universally known for a long time, and utilized in a multiple different machines. But contends plaintiff's counsel, the patent in question is one of a combination of elements, amongst the various elements the hand- crank is but one; and in a combination patent all the elements included are protected though if taken by themselves and one by one they may be known and in current use. I do not think that it can be concluded from that that a manufacturer may adopt all the elements of any machine in the public domain with the exception of one, replace this one by a different element, itself known and in current use, and obtained for his machine a patent of invention which is valid.

...

...I am inclined to think, however, that the machine produced by Hectorine Mercier constitutes an anticipation of the Olivier kneader. According to the witness, this machine, used in her family for 35 years, served only in the making of butter; it was a churn and not a kneader. It is evident nevertheless that this machine could readily transformed into a kneader; it was merely necessary to replace the wood roller with its paddles, and the container by a metal crankshaft, an operation which required no ingenuity or inventive faculty but which could be done easily and rapidly by a workman with at least a little experience.

Counsel for the plaintiff relied upon the commercial success of the shuttlecock produced by the process covered by the patent as evidence of invention... In my opinion, the evidence of the commercial success of the plaintiff's shuttlecock falls far short of the kind of evidence required.

In determining whether, in this case, it required inventiveness to conceive the article described in claim 1 of the plaintiff's patent I shall, therefore, disregard the presumption. Moreover, in making this determination I also intend to disregard the commercial success enjoyed by the plaintiff in the marketing of its tool caddy. Indeed, the tool caddy that was put on the market embodied many features which were not described in claim 1 of the patent so that it can be said that the article which found favour with the public was not the one described in the claim that is attacked by the defendant.

...

It was conceded by counsel for the plaintiff that none of these integers were new. He submitted, however, that their combination required inventiveness. With this submission I cannot agree. In my view, any skilled handy-man would have thought of modifying the two-tiered turntable that was already on the market so as to use it as a rotary tool caddy.

The trial judge correctly applied the law relating to the difference between an unpatentable aggregation and a patentable combination. The claims relate to an aggregation if each of the elements performs its own individual function, if any one element should be removed.

...

The trial judge made a proper analysis of the prior art. He did not make an objectionable post facto determination relating to obviousness.

We, therefore, have the situation where an alleged inventor has used a known method, latex masterbatching, not previously used for that purpose to soften a known product High Mooney cold rubber with oil. Latex masterbatching had been used to combine other ingredients. Oil had been widely used to soften GRS and to soften High Mooney cold rubber but by milling or in the Banbury machine or by solution incorporation. Was what Dr. Howland did a patentable invention?

In the present case Howland applied the known method of masterbatching to a known substance, an oil softener, with a new compound, High Mooney cold rubber, at a time when the process of making High Mooney cold rubber which resulted in the finished product being available to the market and immediately ready for processing into tires. Hitherto the tire manufacturer had had to soften his synthetic rubber whether GRS or the new High Mooney cold rubber in the Banbury machine or by one of the other two methods previous described.

In my opinion Gibson, J., was right in his finding that this was an invention and the evidence supports his finding.

As I understand it also, in order for the prior defence of obviousness to succeed there must be a finding that there is no inventive step, the defence evidence must establish that the solution sought which gave rise to the alleged invention was "very plain", evident to an unimaginative technician, and must not be based on ex post facto analysis.

Employing these tests from the cases, in my view, in respect to the whole of the evidence and particularly as commented upon heretofore and for the reasons given in respect to it, the solution sought prior to this alleged invention was not very plain and not evident to an unimaginative technician, speaking generally. And speaking specifically, it was not plain or evident to Dr. Hager, to the inventor Grom, or to the defendant's expert witness, Wilson, three especially competent persons in their respective disciplines, none of whom could be judged by any standards as only unimaginative technicians. Instead, the solution was put forward based on ex post facto analysis.

...the requirement of "inventive ingenuity" is not met in the circumstances of the claim in question where the "state of the art" points to a process in all that the alleged inventor has done is ascertain whether or not the process will work successfully.

Of especial importance here, and in all chemical patents, are the remarks of Pigeon J. of the Supreme Court of Canada in Farbwerke ... v. Halocarbon:

In my view this statement of the requirement of inventive ingenuity puts it much too high. Very few inventions are unexpected discoveries. Practically all research work is done by looking in directions where "the state of the art" points. On that basis and with hindsight, it could be said in most cases that there was no inventive ingenuity in the new development because anyone would then see how the previous accomplishments pointed the way.

Up until the date of the alleged invention, there was no solution to the serious and long standing problem of providing a herbicide to control grassy weeds and crops. As stated, up to that time the herbicides known and commercially used killed broad-leafed weeds; and the substantial and continued use of such herbicides cause an ecological shift so that the grassy weeds became the acute problem; and no adequate method of killing grassy weeds, except hand hoeing and using other unsatisfactory herbicides which also killed crops in whole or in part, had been found prior to the date of the invention as trifluralin.

As a consequence, prior to the date of the invention of trifluralin, there was a long standing need both in Canada and the United States for an effective selective grass herbicide. To satisfy this need, large companies ... had been actively searching for an effective herbicide for a number of years prior to the subject invention.

and at page 36:

... Soper had to make a choice out of selection of thousands of possible starting materials. He chose (and it would not have been obvious to a person skilled in the art to choose) the starting material that Yagupol'skii taught how to make. Soper chose that starting material because he had decided to make the compound later called trifluralin, which compound he later found to have the herbicidal functions desired.

Commercial Success

As the evidence indicates, commercial success of trifluralin has been outstanding and Eli Lilly has obtained a substantial percentage of the total market with the invented product trifluralin. This success and percentage has not been due primarily to extensive advertising or packaging or cosmetic effects of the product such as colour, packaging or price.

Inventive Step

Finally, from the evidence, it is patent that there was an inventive step at the material time when Soper made trifluralin. Soper, a chemist, having substantial experience both scientific and practical, with imagination chose this certain starting material from thousands of other possible starting materials, to make the formula which is trifluralin.

In assessing whether an invention was obvious, or whether it required the exercise of inventive ingenuity, a court must first of all define the nature of the invention claimed and then assess the whole of the prior art suggested as relevant to the invention, and assess its cumulative effect. ... Having done that, a court may then apply the test for obviousness. This test involves an assessment of whether a skilled and workmanlike technician would, in view of the state of the art as it existed at the time of the invention, have been led inescapably to the invention.

and concluded at pages 357 - 358:

Where there is unexpected usefulness for a particular purpose, then the combined effect of new substances and unexpected usefulness will satisfy the requirements of inventive ingenuity.

It was submitted on behalf of the defendant that there was not any inventive ingenuity in selecting fatty acids of linseed oil or linseed oil itself, since both have been put on an equivalent basis. The selection of linseed oil as the ingredient to modify the synthetic resin of Watson Smith was an accepted thing that a skilled worker in the art would do. It was urged on behalf of the plaintiffs that the selection of linseed oil or the acid thereof was not an obvious thing and that consequently its adoption constituted an inventive step.

and, at page 27:

The use of linseed oil must have been considered as the obvious thing to do by the skilled persons, familiar with commercial practise, who were working with Kienle at the General Electric Co. The company nor any of it's employee's made any attempt to obtain a patent on the new product or the process for making it. They did not produce it as an invention. They did nothing until it appeared that someone with the Dupont de Nemours Co. had filed an application for patent. In 1927 they made experiments and prepared the application for the patent ensued. This course of conduct does not indicate that these people in 1921 considered their deed as an invention.

The court at page 38, concluded:

This article shows that at the time under consideration therein it was the baked films that were sought for the purpose to which Callahan, Dawson, Arsem and Howell were directing their investigations and that, in case films were desired for other purposes where baking was not available, then linseed oil or somewhat similar ingredient would be used.

After careful perusal of the evidence and of the able and exhaustive argument of counsel I have reached the conclusion that there is lack of subject-matter in the patent in suit and that accordingly the said patent must be declared invalid, null and void and that it must be struck from the record.

There cannot be said to be any inventive ingenuity in discovering that the reaction to produce isohalothane can be brought about in the liquid phase. Mere confirmation or verification of what is indicated in a prior publication does not constitute an inventive step.

The learned trial Judge appears to have proceeded upon the assumption that the requirement of "inventive ingenuity" is satisfied unless the "state-of-the-art" at the time of the alleged invention was such that it would have been obvious to any skilled chemist..."that he would successfully produce isohalothane (assuming the monomer used here and hydrogen bromide) in the liquid phase"... I do not think that the learned trial judge's assumption is correct as a universal rule. I would not hazard a definition of what is involved in the requirement of "inventive ingenuity" but, as it seems to me, the requirement of "inventive ingenuity" is not met in the circumstances of the claim in question where the "state-of-the-art" points to a process and all that the alleged inventor has done is ascertain whether or not the process will work successfully.

A person is entitled to a patent for new, useful and inventive medical substance but to dilute that new substance once its medicinal uses are established does not result in further invention. The diluted and undiluted substance are but two aspects of exactly the same invention. In this case, the addition of an inert carrier, which is a common expedient to increase bulk, and so facilitate measurement and administration, is nothing more than dilution and does not result in a further invention over and above that of the medicinal itself.

Therefore, the primary error in the judgement of the Exchequer Court is two fold. The mixing of a patented chemical substance with a carrier is not new and it is not the result of inventive ingenuity.

In order to find here that [inventive ingenuity] is missing in Minieri I would have to come to the conclusion that the new process in Minieri, in view of Duggar at the date of the Minieri invention of 1953, was so easy that very little reflection would have been required to find it. This I am not prepared to say because, having regard to what was generally known at the date of the patent at suit, it was not obvious without considerable experiment and research that the new process invented by Minieri could give tetracycline by direct fermentation and consequently I must, and do, hold that the attack made on this basis must and does also fail.

The background against which I must judge whether there was inventive ingenuity in what Haydon did is, as I find it, that at the relevant period a skilled workman in the art would have known the physical laws of electrical and magnetic interactions but would not have known design procedures or have had design information that would permit him to design or manufacture the Haydon type motor with its rotor making use of printed circuit techniques.

Haydon combined the various parts to create a new operable and useful motor that was substantially different in construction and operation from what was on the market before that time. There was inventive ingenuity involved in what he did. It was more than merely the exercise of the skill of the art. If it was not a giant step forward, it was at least a significant step. I therefore find that Haydon made an invention within the meaning of the Patent Act...

There can be no doubt that it was obviously desirable that generally radio receiving tubes be operated, if possible, by commercial alternating current, and apparently that was an object that engaged the attention of prominent workers in the art prior to the date of Freeman. Freeman was the first to disclose a device which could use alternating current and at the same time eliminate the major alternating current hums or noises, and his device has been almost universally used for the purposes described and directed by him. ... My conclusion is that the Freeman patent is a true combination patent, a novel and useful device, almost universally used in all receiving and amplifying radio circuits using alternating current, and apparently it solved problems which were recognized, the solution of which was deemed desirable and sought for by others...

The patent does not fail on the basis of obviousness. In weighing all of the evidence, I have been influenced in large measure by the strong evidence of Beal [expert for the plaintiff].

There is no question that plaintiff's invention was not obvious. There is indeed evidence of unsuccessful attempts made by others, but particularly by the Sanborn Company of the Hewlett-Packard company to overcome the disadvantages of the pastes and jellies. There is also evidence of considerable commercial success of the plaintiff's cream which embodied these features and such success was not in any great measure due to the fact that more sophisticated machines were developed or produced.

The evidence also shows that after the introduction of EKG Sol (plaintiff's cream) the sales of the product increased very rapidly both in the United States and Canada and this occurred notwithstanding extensive publicity by Hewlett-Packard...

There is no merit in this complaint. ... What [the inventors] were seeking to accomplish was the maintenance of frequency stability in the case of the smallest motor that could provide adequate field strength and they accomplished the desired result, not by throttling the motor, but by tuning the transmitter coil so that it imposed a sharply rising load in the generator that was greater than the power that the motor could supply, and thereby utilizing the maximum power of the smallest motor that would give an adequate signal to the operator of the receiver coil. It was the discovery of the principle of load control by the transmitter coil of the frequency of the generator to effect its frequency regulation so that it would be substantially constant that was the essence of the invention. ... The discovery made by the inventors involved ... a radical departure from the prior teaching of the art and was certainly not obvious.

As to the inventiveness, it is at times difficult to distinguish between a true inventive step and a mere workshop improvement of an invention. To constitute an invention, there must be a substantial step forward. On the other hand, great care must be taken in examining an invention ex post facto to determine when there is that element of inventiveness required, for a very great number of extremely useful and truly ingenious inventions often appear to be perfectly obvious and devoid of originality when examined after they have been invented.

The simplicity of a device is not proof that it was obvious and that inventive ingenuity was not required to produce it and, if small differences create large results, then the scintilla of inventiveness required by law is in fact present...

In the case at bar, judging from the clear evidence of commercial success, a new tool was indeed invented.

and at page 8:

... The commercial success and the reasons therefore, other than mere sales promotion, were clearly established. Furthermore, there was no suggestion whatsoever in any of the evidence that sales promotion was in any way a governing factor of the success.

There is no question that plaintiff's invention was not obvious. There is indeed evidence of unsuccessful attempts made by others, but particularly by the Sanborn Company of the Hewlett-Packard company to overcome the disadvantages of the pastes and jellies. There is also evidence of considerable commercial success of the plaintiff's cream which embodied these features and such success was not in any great measure due to the fact that more sophisticated machines were developed or produced.

The evidence also shows that after the introduction of EKG Sol (plaintiff's cream) the sales of the product increased very rapidly both in the United States and Canada and this occurred notwithstanding extensive publicity by Hewlett-Packard...

I also find that, in light of the prior art above referred to, including ex. D-33 if I am wrong in concluding that it anticipated Fiandt's development of the battery case of claims 2, 9, 10 and 11, the discovery was obvious. The relevant prior art, set aside from ex. D-33 does not deal with automotive batteries. It does, however, deal with multi-cells storage batteries with plastic cases having, in all their members' thicknesses under 0.100 inches made by injection molding. They, as well as ex. D-33, points so clearly to the purported invention that a skilled unimaginative technician faced with the problem making an automotive battery case with all its members' thicknesses, under 0.100 inches would have been lead directly behind without difficulty to the solution offered by the case patent. He would have had to experiment only to find what, if any, of the available plastics would have the necessary properties for a viable battery case. He would need a functional mold. Neither the discovery of suitable plastic nor the mold design are the patented invention however; the case itself is. Commercial success is often very good evidence of inventive ingenuity but, in this instance, all that was needed was the right plastic to become available at a cost that would render the obvious economically attractive.

The question [to determine obviousness] is whether, having regard to the state of the art, the discovery of this bracket involved inventive ingenuity or whether it was what is sometimes described as a mere workshop improvement.

Indeed, I find the answer to the question of obviousness in the fact that McMurtrie, knowing that there were over-all advantages in shortening the suspension assembly, seemed to find it an obvious dictate of good design to ask for brackets that would put the conductors up by the insulators once it was decided to use a bundle conductor with the North American type of transmission line so that this was mechanically possible. If this were obvious to an engineer thinking of the principle that dictated keeping his suspension assembly as short as possible, I should have thought that it was equally obvious to an engineer thinking of the principle that dictated putting his conductors as close as possible to the lower insulators for the control of insulator corona.

The result in my opinion is that Freeman simply juxtaposed known contrivances, (the equipotential cathode, and the hair pin filament) to serve a known purpose, which is the elimination of the electrostatic, thermal and magnetic effects. It is on account of the use of alternating current that the necessity of juxtaposition arose; but it was common knowledge before, that this method was the proper and only one that could be used, when time came to heat cathodes with this additional source of current. Freeman's device may have the merit of having been the first to be assembled, but I do not think it is an invention within the meaning of the Patent Act.