APO Manual Of Practice And Procedure

8.2.1.1

The Dictionary of Schedule 1 of the 1990 Act defines "invention" as:

"any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention" (emphasis added).

Section 18(1)(a) of the 1990 Act states:

"a patentable invention is an invention that, so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies."

The definition of "invention" in schedule 1 therefore incorporates both the aspect of newness and the aspect of manner of manufacture, whereas sec 18(1)(a) omits reference to the aspect of newness.

8.2.1.2

Nevertheless, in the decision of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 (which was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), the majority of the High Court concluded that "newness" was imported into sec 18(1)(a) to the extent that that sec 18(1)(a) should be interpreted as retaining the threshold requirement of "an invention" as excluding from a "patentable invention" any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles.

While, because of the particular circumstances of the matter decided, the ratio of the decision is restricted to situations where the lack of subject matter is apparent on the face of the specification, the court also expressed the view that "it would border on the irrational" if something could only be unpatentable according to traditional principles if, but only if, the facts that lead to that conclusion were disclosed by the specification itself.

8.2.1.3

Thus the expression "manner of manufacture" under the 1990 Act means the same thing and involves the same concepts as the expression "manner of new manufacture" under sec 35(1)(aa) of the 1952 Act.

As background information, the following are among the more significant cases in the development of the "traditional principles" underlying the concept of manner of manufacture:

Muntz v. Foster (1843) 2 WPC 93

The discoverer of a "hidden and concealed virtue" in something known before which enables him to apply the known thing to some useful manufacturing purpose to which it has not been applied before is entitled to patent the novel application. In this case the invention lay in the application of plates made from a particular known alloy for sheathing the bottom of ships, such alloys being found to prevent fouling.

Harwood v. Great Northern Railway Co. (1865) 35 LJQB 27

"You cannot have a patent for a well known mechanical contrivance merely because it is applied in a manner or to a purpose which is analogous to the manner, or for the purpose in or to which it has been hitherto notoriously used." (page 38)

Gadd & Mason v. The Mayor etc. of Manchester (1892) 9 RPC 516

The law on new use of old contrivances is set down at page 524 (and adopted by the High Court of Australia in Willmann v. Petersen, 2 CLR 1 at page 17).

"1. A patent for the mere use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad and cannot be supported. If the new use involves no ingenuity but is in manner and purpose analogous to the old use, although not quite the same, there is no invention; no manner of new manufacture within the meaning of the Statute of James. 2. On the other hand a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been first to see and overcome by some ingenuity of his own."

British Liquid Air Co. Ltd. v. British Oxygen Co. Ltd. (1909) 26 RPC 509

The principle underlying the doctrine of analogous use was stated at page 532:

"the application of a known device to its ordinary purpose under analogous circumstances is not good subject matter for Letters Patent, because it does not involve invention".

B.A.'s Application (1915) 32 RPC 348

When once a substance is known and its characteristics well defined, the mere use of the substance for purposes not previously known is not patentable. However, a substance cannot be "known" unless its characteristics are well defined; and using a substance because of a property hitherto unknown or unsuspected for a purpose to which it has not formerly been applied would indicate that the chemical was a "known" substance only partially and as far as the new property is concerned, it was unknown.

L. & G.'s Application (1941) 58 RPC 21

The use of a known material in the manufacture of known articles for the reason that it possesses a known property which renders it useful for that purpose is not a manner of new manufacture. Thus, an application for the manufacture of the parts of electricity meters, which are subject to wear, from oxide-coated aluminium was rejected, since it was known that the coating of aluminium with oxide rendered it resistant to wear.

G.E.C.'s Application (1943) 60 RPC 1

A test for assessing whether a method or process is a manner of manufacture was formulated by Morton J. He said:

"In my view a method or process is a manner of manufacture if it (a) results in the production of some vendible product or (b) improves or restores to its former condition a vendible product or (c) has the effect of preserving from deterioration some vendible product to which it is applied."

[It must be borne in mind that Morton's rules are only a guide to assessing whether or not a method or process is a manner of manufacture. The NRDC. case (below) has made it clear that where these rules are used as a guide, the words "vendible" and "product" should be given a broad interpretation. Thus, a product is "vendible" if the question "Is the significance of the product of economic value to the community?" can be answered affirmatively. Moreover, a "product" need not be something in the sense of a tangible article, it may be any physical phenomenon in which the end result of the method may be observed.]

Cementation Co. Ltd.'s Application (1945) 62 RPC 151

A fire quenched subterranean formation is a vendible product according to Morton's rules.

Rantzen's Application (1947) 64 RPC 63

A "product" under Morton's rules could well be an electrical oscillation.

Elton and Leda Chemicals Ld.'s Application (1957) RPC 267

A fog-free atmosphere is a vendible product under Morton's rules.

Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232

At page 251, (rocket projectors comprising tubes of reinforced synthetic resinous plastic material), the High Court held that there was:

"in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject-matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do".

National Research Development Corporation v Commissioner of Patents, (1959) 102 CLR 252, (1961) RPC 134, 1A IPR 63

The full bench of the High Court of Australia expanded the ambit of "manner of manufacture" by clarifying Morton J's definition of a vendible product:

vendible - "utility in practical affairs" product - "an artificially created state of affairs" "The effect produced by the appellant's method exhibits the two essential qualities upon which "product" and "vendible" seem designed to insist. It is a "product" because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage, indeed to the lay mind a sensational advantage, for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits." (CLR at 277, RPC at 146)

University of Sydney's Application (1970) AOJP 2438

A method of treating livestock with hormonal substances in order to regulate the ovulating period was considered to be of economic significance by aiding the control at the breeding season.

Bernhard Joos v Commissioner of Patents 126 CLR 611 and (1972) AOJP 3431

Barwick CJ decided that cosmetic processes or methods for improving or changing the appearance of the human body or any part of it which have a commercial application are proper subject matter for the grant of letters patent. The claim, the subject of the decision, was for a process for improving the strength and elasticity of keratinous material, especially human nails and hair, comprising applying thereto a particular composition.

Ranks Hovis McDougall Ltd's Application (1976) AOJP 3915

The question of patents directed to living organisms was considered. The hearing officer decided that:

a) No objection can be taken to a claim to a new organism on the ground that it is something living; b) Any new variants claimed must have improved or altered useful properties and not merely have changed morphological characteristics which have no effect on the working of the organism; and c) Naturally occurring micro-organisms per se are not patentable as they represent a discovery and not an invention, but a claim to a pure culture in the presence of some specified ingredients would satisfy the requirement of a technical intervention.

Wellcome Foundation Limited v The Commissioner of Patents (1980) AOJP 2759

"The claims in dispute are package claims, i.e. claims to a container with its contents together with a set of written directions. The circumstances in which such package claims will be valid are limited. Novelty in the process for which the package may be used will not be sufficient." (at 2759)

International Business Machines Corporation v Commissioner of Patents (1991) 22 IPR 417

The use of a mathematical formula in a computer to produce an improved curve image was held to be patentable, since the production of the improved curve image is a commercially useful effect in computer graphics.

Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) AIPC 91-076, 28 IPR 383

The specification related to a method of treating snoring and/or obstructive sleep apnoea. The court decided that similar principles applied to methods of treatment of the human body for therapeutic purposes as for cosmetic purposes. It held that there was no justification in law or logic to distinguish a process of curative treatment of the human body from that of cosmetic treatment, and that both of these forms of treatment may constitute a manner of manufacture provided they have commercial application. In arriving at its conclusion the court commented that Parliament, having the opportunity to exclude matters from patentability under the 1990 Act, chose to limit the exclusions to those of sec 18(2).

This decision appeared to reinforce the practice adopted by the Office following the Joos decision that no objection need be taken to methods or processes for the treatment of human beings on that basis alone. However some doubt has been cast upon this Office practice by the decision in Bristol-Meyers Squibb Company v F H Faulding & Co Limited, FCA VG 109 of 1995 - refer to para 8.2.13, below.

NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449

The majority of the High Court concluded that "newness" was imported into sec 18(1)(a) to the extent that sec 18(1)(a) should be interpreted as retaining the threshold requirement of "an invention" as excluding from a "patentable invention" any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles. The court also expressed the (obiter) view that "it would border on the irrational" if something could only be unpatentable according to traditional principles if, but only if, the facts that lead to that conclusion were disclosed by the specification itself.

Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401)

The High Court upheld an appeal against a decision taken by the Federal Court in which that court held that an inventive step had to be present in a "combination" invention in order for it to be patentable under sec 18(1)(a). After commenting that:

"[`merit'] was used sometimes in reference to subject-matter, sometimes in reference to novelty. The phrase invites error through imprecision of legal analysis"

it concluded:

"In that respect the Full Court [of the Federal Court] was in error in considering under the ground of revocation in sec 100(1)(d) matters that could have arisen under other grounds, namely obviousness and lack of novelty, but which either did not arise or were put to one side".

The definition of "invention" given in the Dictionary of schedule 1 states that invention "includes an alleged invention". The High Court in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), explained the meaning of this as follows:

"The phrase `and includes an alleged invention' is directed to the inquiry at the stage of examination of an application before the decision as to acceptance."

In so doing the court followed the earlier decision of Commissioner of Patents v Microcell Ltd, (1959) 102 CLR 232 at page 236, in which Menzies J stated:

"... I regard the last words of the definition of "invention" (which have their origin in the Patent Design and Trade Marks Act 1883, sec 46) as intended to do no more than make clear that when an application is made it can proceed in accordance with the Act without the application having to establish as a pre-requisite to any step being taken that it is for an invention, ie. a manner of new manufacture and that the Commissioner is not bound by the applicant's allegation that his manner of manufacture is new any more than by the allegation that what is claimed is a manner of manufacture."

See also Rogers v Commissioner of Patents, (1910) 10 CLR 701.

Inventions which are in the realms of "the fine arts" have traditionally been considered non-patentable. "Fine arts" is normally taken to include those arts which are the product of human intellectual activity which seek expression through beautiful or significant modes, as painting, sculpture, music and other æsthetic creations. Consequently, in assessing the patentability of an invention which appears to embrace the field of fine arts it will be necessary to consider whether an æsthetic or artistic effect, as distinct from a technical feature, is involved. The pure æsthetic effect of an article will not be patentable but if the article also has a technical feature, it might be patentable, a tyre tread being an example of this. A process or means for creating an æsthetic affect may comprise a technical innovation and thus be patentable.

8.2.5.1

Discoveries having no means of carrying them into effect, mere ideas, scientific theories and mathematical algorithms (the last being dealt with in detail in para 8.2.7) have traditionally been regarded as not per se patentable, because they do not exhibit the requirements of a manner of manufacture.

The critical question for examiners is whether the claimed invention relates to non-patentable or patentable subject matter. This question can be answered by deciding whether the claimed invention lies in the intellectual or academic realm, or whether it lies in the technical or practical realm. Technical or practical matter is patentable.

8.2.5.2

In regard to 'discoveries', the High Court in the NRDC case, (supra), citing with approval the view expressed by Lindley LJ in Lane Fox v Kensington and Knightsbridge Electric Lighting Company (1892) 3 Ch. 424 at 428,429, stated:

".....a man who discovers that a known machine (his Lordship might equally have said a known substance) can produce effects which no one before him knew could be produced by it has made a discovery, but has not made a patentable invention unless he so uses his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old thing or result."

(See also Hayasibara Co.'s Patent, (1977) FSR 582 at 590), and Reynolds v Herbert Smith (1903) 20 RPC 123 at 126.)

But no general definition can be given as to what constitutes a discovery as opposed to an invention. The court in NRDC went on to say:

"The truth is that the distinction between discovery and invention is not precise enough to be other than misleading in this area of discussion. There may indeed be a discovery without invention - either because the discovery is some piece of abstract information without any suggestion of a practical application of it to a useful end, or because its application lies outside the realm of 'manufacture'."

8.2.5.3

A chemical substance or microorganism which is discovered in nature without any practical application is a "mere chemical curiosity" and not patentable subject matter.

More commonly in examination, the specification provides some practical application for the isolated substance or microbe. Although such subject matter is potentially patentable, examiners should consider whether the claims distinguish the microbe or substance from those forms which already exist in nature.

Thus, the discovery of a microorganism, protein, enatiomer or antibiotic in nature can be claimed in its isolated form or as substantially free of (perhaps, specified) impurities. Also, a gene can be claimed as the gene per se (as long as the claim does not include within its scope the native chromosome of which the gene forms part) or as the recombinant or isolated or purified gene.

See Ranks Hovis McDougall Ltd's Application (1976) AOJP 3915.

8.2.5.4

An example of something which would constitute a discovery and not an invention would be where a known material is found to have a hitherto unknown property. But if the discovery leads to the conclusion that the material can be used for making a particular article or in a particular process, then the article or process could be patentable. For example, finding out that a particular known material is able to withstand mechanical shock is a discovery and therefore unpatentable, but a claim to a railway sleeper made of the material would not be regarded as being a claim to a mere discovery. See also para 8.2.17 below.

8.2.5.5

Where a discovery is a new principle, and a practical application is invented, the inventor is entitled to broad patent protection. Care is necessary to distinguish between:

a) genuine new principles,

b) principles of which practical applications were known although the principle was unrecognized, and

c) solutions to problems.

Claims directed to a principle per se are not allowable. However claims directed to a "principle" coupled to a general method of manufacture may be allowable so long as it is new and there is described at least one mode of carrying it into effect.

See R.C.A. Photophone Ltd. v. Gaumont-British Picture Corporation, (1936) 53 RPC 167.

In David Kahn Inc. v. Conway Stewart, (1974) RPC 279, it was stated at pages 319 and 320:

"A patentee may rightly claim a monopoly wider in extent than what he has invented. If he has discovered a general principle or invented a general method and discloses one way of carrying it out, he may claim all ways of carrying it out, but 'he is not entitled to claim a monopoly more extensive than is necessary to protect what he has himself said is his invention'. He cannot claim all solutions to a problem unless invention lies in the identification of the problem."

See also para 10.8.13.3 of this Volume.

8.2.5.6

Similarly, a mere idea is not patentable subject matter. In Hickton's Patent Syndicate v Patents and Machine Improvements Co. Ltd., (1909) 26 RPC 339 at 348, it was said:

"No doubt you cannot patent an idea, which you have simply conceived, and have suggested no way of carrying it out, but the invention consists in the thinking of or conceiving something and suggesting a way of doing it.....I think you can have a Patent for an idea, which is new and original and very meritorious, if you suggest a way of carrying it out. If you do not so suggest, you cannot no doubt have a patent....".

See also Thomas & Anor v Chappell & Anor, (1991) AIPC 90-798.

8.2.5.7

These general principles applying to discoveries and ideas also apply to scientific theories - which are statements about the natural world, reasoned or otherwise - and to mathematical algorithms. Thus, scientific theories are themselves not patentable, no matter how radical or revolutionary the insights they provide may be, but if they lead to practical applications, these may well be patentable. Similarly, mathematical algorithms (see para 8.2.7) are not patentable but their application may well be patentable.

8.2.5.8

An invention whose inventive element resides solely in a discovery, idea, scientific theory or mathematical algorithm can still be patentable. Hence, it is necessary to consider the contribution made by the invention as a whole without regard for its individual parts and the individual contributions they may make. This point has been underlined by comments made by the EPO Technical Board of Appeal in Koch & Sterzel Decision T26/86 (OJEPO 1-2/88) where it is said that

"The Board holds that an invention must be assessed as a whole. If it makes use of both technical and non-technical means, the use of non-technical means does not detract from the technical character of the overall teaching. The [EPC] does not ask that a patentable invention be exclusively or largely of a technical nature; in other words it does not prohibit the patenting of inventions consisting of a mix of technical and non-technical elements."

Similar considerations to those indicated in para 8.2.5 apply to discoveries or principles of nature or science. In particular, a distinction needs to be noted between the discovery of laws or principles of nature or science and the application thereof to produce a particular practical and useful result. Mere discoveries have been treated as not proper patentable material. (See, for example, CCOM v Jiejing, 28 IPR 481 at 511 and IBM Corp v Commissioner of Patents, 22 IPR 417 at 423.)

For guidance in circumstances where the invention appears to an examiner to contravene a well-known law of nature (for example, perpetual motion machines), see para 10.8.5 of this volume.

8.2.7.1

The Full Federal Court decision CCOM v Jiejing, 28 IPR 481,

(1994) AIPC 91-079, is the most recent authority on the patentability of computer software related inventions in Australia.

8.2.7.2

CCOM v Jiejing emphasises that the basic law on patentability of any invention in Australia is as set out in the NRDC case (above). The NRDC case and International Business Machines Corporation v Commissioner, (1991) 22 IPR 417, both state that

"a process, to fall within the limits of patentability........., must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art......... - that its value is in the field of economic endeavour."

The particular statement of this test, formulated in CCOM v Jiejing, for determining the patentability of computer software related inventions is whether there is:

"a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour."

8.2.7.3

It is clear that each of the following will almost always be such a "mode or manner" as referred to in CCOM v Jiejing:

(a) source code for patentable computer software, irrespective of the material form in which that code is presented

(b) executable code for patentable computer software, which is in a machine readable form; and

(c) a computer, when programmed to achieve any result which has utility in the field of economic endeavour.

8.2.7.4

A mathematical algorithm is a procedure for solving a given mathematical problem. In the field of computer software related inventions, there will be cases in which it is not clear cut whether a mathematical algorithm is either or both of:

(a) "an artificially created state of affairs"; and

(b) "of utility in the field of economic endeavour"

A mathematical algorithm per se is neither "an artificially created state of affairs" nor is it something having "utility in the field of economic endeavour". It will not have "utility in the field of economic endeavour" until it has been implemented.

8.2.7.5

Although a mathematical algorithm per se is not a manner of manufacture, the presence of such an algorithm as one of the steps in an otherwise patentable method does not exclude the claim from patentability. The test for manner of manufacture has to be applied to the claim as a whole. See, for example, Diamond, Commissioner of Patents and Trademarks v Diehr and Lutton, (1981) 209 USPQ 1 at 9 where it was said:

"It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis."

See also in re Walter, (1980) 205 USPQ 397 at 406, CCOM v Jiejing, 28 IPR 481 and the comments of the EPO Technical Board of Appeal in Vicom Systems Inc's Application (1987) 2 EPOR 74.

(See also para 8.2.5.8).

8.2.7.6

Some illustrative instances where inventions involving mathematical algorithms would be patentable are:

(a) any otherwise-patentable process which uses a specific algorithm or mathematical formula, eg a claim to a method of annealing a tungsten alloy where:

the heating time (seconds) = 6.78 × mass of ingot/temperature (°C)

(b) an applied algorithm or mathematical formula, eg a claim to a method of determining the length of a road (L) in metres by applying the formula:

L = cos [theta] × N × g²



where [theta] is the gradient of the road;

N is the number of litres of fuel used by a car travelling on that road; and

g is the acceleration due to gravity.

[Note: The variables in the above formulae all describe physical entities in the real world.]

(c) a method of operating a computer which makes the computer faster or requires less hardware resources by using a mathematical algorithm, eg a claim to a computer that calculates frequency spectrum values using a new fast Fourier transform.

8.2.7.7

An illustrative instance where inventions involving mathematical algorithms would not be patentable is:

(a) a pure mathematical formula (unapplied), eg a claim to a method of calculating a value c, where:

c = e^x × sin (t)

[^Note that c, x, and t are pure variables with no defined significance to the real world.]

8.2.8.1

Another traditional principle has been that a patent cannot be obtained for a mere scheme or plan. The best known authority for this is Cooper's Application, (1902) 19 RPC 53, in which Sir Robert Finlay, A.G. said:

"You cannot have a Patent for a mere scheme or plan - a plan for becoming rich; a plan for the better Government of a State; a plan for the efficient conduct of business. The subject with reference to which you must apply for a Patent must be one which results in a material product of some substantial character. The Specification must show how some such material product is to be realised or effected by the alleged invention."

8.2.8.2

In general then, mere schemes (including business schemes) and plans are not, per se, manners of manufacture, and are therefore not patentable. They are analogous to mathematical algorithms in that they do not give rise to "an artificially created state of affairs", and therefore the approach to them should be the same as for mathematical algorithms, as explained in para 8.2.7, above.

8.2.8.3

Some examples of schemes or plans which, per se, are not manners of manufacture are:

Example 1

A method of raising funds, said method comprising,

seeking sponsors to donate products, and

conducting a raffle of those products. Example 2

A method of conducting a racing competition comprising the steps of:

causing each competitor to run the race alone,

timing each competitor's time for the race, and

designating the competitor with the fastest time as the winner. Example 3

A method of analysing the performance of an investment, the method comprising the steps of:

creating a benchmark, and

comparing the investment to the benchmark. Example 4

A method of improving a person's health, said method comprising,

doing six push-ups, and

walking ten kilometres each day. Example 5

A method of analysing a business, including:

providing a series of questions, and

applying respective preset values to the responses to those questions to obtain a value related to the performance of that business.

8.2.8.4

It should be noted that while a mere scheme or plan will not be patentable, the presence of such a scheme or plan within a claim to otherwise patentable subject matter (for example, a means for putting the scheme into effect), whether a method or device, does not exclude the claim from patentability.

8.2.8 5

When determining the overall validity of a claim which defines a scheme or plan the requirement for the invention as claimed to possess an inventive step must not be overlooked. Often the absence of an inventive step will be more clear-cut than any argument that the invention is excluded from patentability under traditional principles. A further consideration subsidiary to that of inventive step is that of sufficiency. If it is not clear where the invention lies within a collocation of integers constituting a claim, the specification should be objected to on the grounds of sufficiency. Once the applicant has been compelled (as they can be) to reveal where the invention lies, it is often less difficult to determine whether an inventive step exists and, if, that determination is in the negative, substantiate that determination.

8.2.9.1

Any presentation of information characterised solely by the content of the information has traditionally been not patentable. In Virginia-Carolina Chemical Corp's Application, [1958] RPC 35, this principle was explained as being that the intellectual or visual content of a paper, film or other medium related to the fine and not the useful arts. The court in Pitman's Application, [1969] RPC 646 took a similar approach, in observing that any matter having a purely intellectual, literary or artistic connotation is not patentable.

8.2.9.2

The mere fact that physical apparatus may be involved in the presentation of information will not suffice to avoid the exclusion. Thus the exclusion applies whether a claim is directed to:

(a) the presentation of the information per se (for example, by acoustical signals, spoken words or visual displays

(b) information recorded on a carrier (for example, books characterised by their printed subject matter, gramophone records characterised by the musical piece recorded, or magnetic computer tapes characterised by the data or programs recorded). [However see also para 8.2.7.3.]

(c) processes and apparatus for presenting information (for example, indicators or recorders characterised by the information indicated or recorded.

8.2.9.3

The exclusion will not take effect if the presentation of information is of a technical rather than an intellectual or visual character.

For example, in Moore Business Forms Application, [1979] AOJP 2521, a claim to a business form having printed transverse bars was allowed because the bars served the technical purpose of allowing the form to be printed with more lines of type per inch which would still be as easy to read as prior forms having the usual number of lines of type per inch.

8.2.9.4

Other examples include:

Cooper's Application (1902) 19 RPC 53 in which one or more spaces was left across the printed page of a newspaper where the paper was to be folded in order to enable the paper to be read when folded and was held to be patentable.

Fishburn's Application, (1938) 57 RPC 345, in which an arrangement of printing upon a ticket was found to serve a technical purpose in that information was not lost when the ticket was torn.

Pitman's Application, [1969] RPC 646, in which variations in the visual significance of printed characters in order to assist in voice production by a recording machine or a human reader were held to be patentable. Compare this with Nelson's Application, [1980] RPC 173, relating to a medium carrying an instructional message in three parts: visual, verbal and humorous. This was found to be merely intellectual in nature.

Rhode's Application, [1973] RPC 243, in which a vehicle speedometer adapted to show "impact speed" was found to be patentable.

Ciba-Geigy AG (Durr's) Applications, [1977] RPC 83, in which a claim to a conventional package containing a known product and characterised solely by the instructions on the package for using the product was rejected. Compare this with Organon Laboratories Limited's Application, [1970] RPC 574, in which a claim was allowed to a package containing pills which were packed in a particular order together with directions for use.

8.2.10.1

As indicated in sec 13 of the 1990 Act, the effect of a patent is to give the patentee the exclusive right to exploit the invention. Thus, a patent covering an article may also provide protection for processes of producing or utilising that article. Frequently, however, a patent is sought expressly for a specified process. Generally speaking, processes are patentable; indeed, schedule 1 of the Act includes a definition of "patented process".

8.2.10.2

A test for assessing whether a method or process is a manner of manufacture was formulated by Morton J in G.E.C.'s Application, (1943) 60 RPC 1. He said:

"In my view a method or process is a manner of manufacture if it (a) results in the production of some vendible product or (b) improves or restores to its former condition a vendible product or (c) has the effect of preserving from deterioration some vendible product to which it is applied."

Examiners must however remember that Morton's rules are only a guide to assessing whether or not a method or process is a manner of manufacture. The NRDC case (above) has made it clear that where these rules are used as a guide, the words "vendible" and "product" should be given a broad interpretation. Thus, a product is "vendible" if the question "Is the significance of the product of economic value to the community?" can be answered affirmatively. Moreover, a "product" need not be something in the sense of a tangible article, it may be any physical phenomenon in which the end result of the method may be observed. Thus a "product" could well be an electrical oscillation (Rantzen's Application, (1947) 64 RPC 63), or an artificially created state which is discernible by observation such as a weed-free tract of sown land (the NRDC case (above)), a fog-free atmosphere (Elton and Leda Chemicals Ld.'s Application, (1957) RPC 267), or a fire quenched subterranean formation (Cementation Co. Ltd.'s Application, (1945) 62 RPC 151).

Thus in the NRDC case, the court concluded at page 146 that the process under consideration fell squarely within the true concept of a patentable process:

"The effect produced by the appellant's method exhibits the two essential qualities upon which "product" and "vendible" seem designed to insist. It is a "product" because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage, indeed to the lay mind a sensational advantage, for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits."

8.2.11.1

At one time it was Patent Office practice to treat methods of testing as not being manners of manufacture (based on Hartridge's Application,

(1945) 62 RPC 149). However since the NRDC case (above), IBM v Commissioner, 22 IPR 417 and CCOM v Jiejing, 28 IPR 481 have all latterly affirmed that

"a process, to fall within the limits of patentability,........must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art.......... - that its value is in the field of economic endeavour,"

A claim to a method of testing, being useful in the field of economic endeavour, is now not objectionable for being a method which does not produce a vendible product.

Similar considerations apply to methods of observation and measurement.

8.2.11.2

Although a claim to a method of testing is not, per se, objectionable, some of such claims may raise issues of

(a) the patentability of methods of treatment of human beings

(b) the patentability of mathematical algorithms.

These issues are considered in paras 8.2.13 and 8.2.7, respectively.

8.2.12.1

The mere variation in the manipulation of an existing apparatus or process to produce an identical product has traditionally been not patentable. This type of invention is commonly referred to as being a "working direction". A variation will be a "mere" variation only if it involves no inventive ingenuity. A variation which might arise in the exercise of the operator's judgement, even accidentally, will be a "mere" variation. See for example The Commissioner of Patents v Lee, 16 CLR 138, relating to a particular operation of a charcoal-burning kiln, where the specification itself admitted prior use of the kiln.

Often a claim to a mere working direction will also be susceptible to an objection that it lacks an inventive step, and this possibility should always be considered when dealing with claims of this type.

8.2.12.2

Difficulty may sometimes be experienced in distinguishing between a process (such as an industrial process) which is patentable and mere working directions which are not. In particular, chemical processes may sometimes specify directions for operating known machinery at certain temperatures and pressures under stipulated conditions and for determined periods of time. Where the result is new, or where an inventive selection is involved, such processes are patentable. Similarly, a process is patentable where the stipulated conditions are such that the person skilled in the art would have been content to apply them without bothering to experiment with them.

In general the mere optimization of a known process to more efficiently produce the old product or to more efficiently operate a known device to produce the old effect, amounts to no more than a working direction, provided that such could have been achieved without inventive ingenuity, that is, by trial and error or routine experimentation.

Note that the patentability of human beings and processes for their generation, which are specifically outlawed by sec 18(2) of the Patents Act, are dealt with in para 8.5, below.

8.2.13.1

It is Patent Office practice that no objection is to be taken to methods or processes for the treatment, medical or otherwise, of the human body or part of it, only on the basis that the human body is involved. [Note, however that the approach of the PCT and in some foreign jurisdictions, such as the EU, is to treat inventions of this type as non-patentable subject matter.] This practice is based upon the decision of the High Court in Bernhard Joos v Commissioner of Patents, 126 CLR 611 and (1972) AOJP 3431, in which Barwick CJ decided that cosmetic processes or methods for improving or changing the appearance of the human body or any part of it which have a commercial application are proper subject matter for the grant of letters patent. The claim, the subject of the decision, was for a process for improving the strength and elasticity of keratinous material, especially human nails and hair, comprising applying thereto a particular composition.

Prior to the Joos decision, processes for surgery and other treatment of human beings had been regarded as incapable of patent protection, because the whole subject was thought of as being essentially non-economic and "generally inconvenient". However, starting with Joos the more recent decisions of the Courts have significantly curtailed the area of unpatentable treatments of human beings.

8.2.13.2

The most significant of the decisions subsequent to Joos is that of the full bench of the Federal Court in Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) AIPC 91-076, 28 IPR 383, concerning a method of treating snoring and/or obstructive sleep apnoea in a patient, in which the court decided that similar principles applied to methods of treatment of the human body for therapeutic purposes as for cosmetic purposes. The court held that there was no justification in law or logic to distinguish a process of curative treatment of the human body from that of cosmetic treatment, and that both of these forms of treatment may constitute a manner of manufacture provided they have commercial application.

8.2.13.3

Recently, a single judge of the Federal Court in Bristol-Myers Squibb Company v FH Faulding & Co Ltd case number VG109 (issued 22 July 1998) concluded that the comments made by the Full Bench in Anaesthetic Supplies Pty Ltd v Rescare (supra) were only obiter dicta. Therefore, absent any binding precedent, the judge went on to conclude that, in his opinion, methods of treatment of humans were "generally inconvenient" and not patentable subject matter. However, the judge in the Bristol-Myers case had found the patent invalid primarily for other reasons and so his comments in relation to the patentability of methods of treatment can themselves be considered obiter dicta.

The Patent Office is obliged to accept patents unless these are clearly invalid (see Microcell Ltd's Application 102 CLR 232). Since there is no clear precedent to find that methods of treatment are invalid, the Patent Office will continue its long standing practice of accepting claims to methods of treatment.

Note that a full treatment of all aspects of this topic may be found in Part 6 of this volume.

8.2.14.1

In its judgement on the NRDC case (above), the full bench of the High Court of Australia expanded the ambit of "manner of manufacture" by clarifying Morton J's definition of a vendible product:

vendible - the requirement of "utility in practical affairs" product - is "an artificially created state of affairs"

Thus a biological entity may be patentable if the technical intervention of man (ie. manufacture) has resulted in an artificial state of affairs which does not occur in nature.

8.2.14.2

The question of patents directed to living organisms was considered in Ranks Hovis McDougall Ltd's Application, (1976) AOJP 3915. The hearing officer decided that:

a) No objection can be taken to a claim to a new organism on the ground that it is something living;

b) Any new variants claimed must have improved or altered useful properties and not merely have changed morphological characteristics which have no effect on the working of the organism; and

c) Naturally occurring micro-organisms per se are not patentable as they represent a discovery and not an invention, but a claim to a pure culture in the presence of some specified ingredients would satisfy the requirement of a technical intervention.

8.2.14.3

Patent Office practice is that the isolation and cultivation of naturally occurring micro-organisms which have some new use satisfy the requirement of a technical intervention. A claim to a biologically pure culture of the naturally occurring micro-organism without any specified ingredients is also acceptable provided the micro-organism has a new use.

8.2.15.1

Agricultural or horticultural processes are patentable, provided they satisfy the general rules for subject-matter. "Seeing that the promise which he offers is some new and useful effect, there must of necessity be some product whereby the validity of his promise can be tested" (NRDC case (above) at page 145). Thus "a method of eradicating weeds from crop areas containing a growing crop" is patentable. However, the reasoning given in the N.R.D.C. case cannot be used to support a view that the crop itself (resulting from a weed-free area) could be patented.

Agricultural and horticultural processes which have been considered patentable include:

a) preventing male gametes in grass from reaching maturity;

b) sterilizing male anthers in plants;

c) the production of genetic variations by exposing plants to applied magnetic or other force fields;

d) the asexual propagation of pineapple plants by tissue culture techniques; and

e) the production of male sterile maize by genetic selection.

8.2.15.2

Having regard to the decision in Ranks Hovis McDougall Ltd's Application, (1976) AOJP 3915, (see also para 6.1.2 and 6.3.3 of this volume) a new plant or animal (providing it is not one that is naturally occurring) can be regarded as a manner of manufacture if it:

a) involves the technical intervention of man; and

b) is useful in economic affairs.

Examiners should note that human beings are not patentable due to a specific exclusion under sec 18(2).

8.2.15.3

Treatment of animals is clearly capable of being patented in Australia, following the N.R.D.C. decision. Thus, for example, an application in which a claim was directed to a method of tenderising meat products by the introduction of enzymes into the vascular system of the animal before slaughtering has been considered patentable. An example of a method of treating animals which has been allowed involved the treating of cattle for anaplasmosis - see Wellcome Foundation Limited v. The Commissioner of Patents, (1980) AOJP 2759, although the High Court also considered in that case that a package and contents including written instructions was unpatentable.

8.2.16.1

A patentable combination is a new combination of old integers having a working interrelationship or, in the case of chemical combinations, having a synergistic effect (see para 8.2.16.4, below). In British Celanese Ltd. v. Courtaulds Ltd., 52 RPC 171 at pages 193-194, it was said:

"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."

Note that the use of words like "the combination" or "in combination" add nothing to the determination of whether the steps or integers as defined are such as to constitute a patentable combination.

8.2.16.2

In Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), the High Court referred to Welch Perrin & Co Pty Ltd v Worrell, (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 at 67), and 'a new combination of features to obtain an improved result' (Meyers Taylor v Vicarr Industries Ltd (1977) 137 CLR 228 at 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 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."

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

8.2.16.3

The working interrelationship between the integers of a combination may be "potential" rather than actual. The concept of a "potential working interrelationship" arose in the case of Cobianchi's Application, (1953) 70 RPC 199, concerning a pack of cards for playing "Canasta". The judgement of Lloyd-Jacob, J. at page 200 in part reads as follows:

"If, however, the aggregation into a pack is not of a number of copies, but of a number of differently printed sheets which in their association one with another have a potential working inter-relationship, the aggregation possesses something more than the sum of its individual parts, although it is to be noted that this something more is but a potentiality which requires for its translation into actuality not only the full collection of the parts but a conception or plan for their use, for example, a card game."

The invention was a pack of canasta cards and it was decided that there was a potential working interrelationship between the cards of the pack seen in the context of the rules of the game. As a result the pack of (new) cards was considered to be a manner of new manufacture.

Note that collocations falling fairly within the terms of sec 51 can be dealt with by means of a statutory objection under that section rather than under sec 18(1)(a).

8.2.16.4

A collocation comprises a number of known integers, process steps, or the association of materials or chemical substances in such a way that no working interrelationship nor 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.

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 34 IPR 256. This meaning was not challenged in the appeal to the High Court).

In International Paint Co. Ltd.'s Application, (1982) RPC 247 the question of collocations was dealt with at page 275, in the following terms:

"..... certain of the specific grounds included in the broad head of "no manner of new manufacture", of which collocation is one, are really cases which may be characterised as "so utterly obvious that the Comptroller can even consider them of his own motion in the absence of an opposition", and this fits in with the line of authorities. ............ .......... Such cases are the cases - but only those cases where the ingredients of a mixture, or the parts of an article each (to use the modern vulgarity) "do their own thing". That is to say, howsoever juxtaposed to the other ingredients of the mixture or parts of the article, each part performs its own function and would do so even in the absence of the other parts. The classic cases of collocation are those mentioned in Through the Looking Glass: "Mix sand with the cider, and wool with the wine". However novel and unobvious in practice such mixtures may be, they are mere collocations and cannot be allowed to be patented for the ingredients do not react with each other and the mixtures are obvious in law."

With chemical combinations, it can be difficult to determine at face value whether the components of the combination have any working interaction (rather than working independently from each other). One test is whether the combination has an effect which is greater than the effect of the sum of the individual components in the combination. This is known as synergism.

Synergism may be relied upon to distinguish a mixture of known substances from what would otherwise be a mere collocation. So long as there is some indication (by way of statements, examples or assertions) in the specification that synergism occurs, it is not appropriate at the examination stage for that to be questioned (unless there is a concrete reason to do so) or for corroborative data to be requested. See also para 8.7.4 below.

8.2.16.5

A collocation is only unpatentable if all its integers are known.

Where one of the integers or steps is new and otherwise patentable the inclusion of such an integer in a collocation is not objectionable under sec 18(1)(a). In B.U.S.M. v. Fussel, 25 RPC 631 at page 649, Fletcher-Moulton LJ states:

"......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 things, a novel razor. The claim was not deemed objectionable even though the other components of the kit did not co-operate to form a patentable combination. The applicant would have been entitled to claim the razor by itself, but the fact that he chose to limit his claim to an environment limited by the defined kit does not detract from his right to a patent.

8.2.16.6

Typically, objection may be taken on the ground that the alleged invention merely comprises a collocation. Examples of cases of this kind - (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 so 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, (1977) AOJP 3869 (two tables and a net for playing a ball game)

Unilever Ltd.'s Application, (1976) AOJP 531 (container and contents).

8.2.16.7

Claims to kits, such as a "kit of parts..." or "a kit for use...", often come into the category of combinations, as there may be a potential working interrelationship between the parts thereof, e.g. construction sets as toys, or for commercial use. In examining claims to kits it is useful to consider whether the integers of the kit are defined in 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 or use to form a new structure or achieve a particular result embodying the inventive concept, then a potential working interrelationship should exist.

8.2.16.8

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. A set of golf clubs cannot qualify as a combination irrespective of the game which might require the usage of various of the clubs to play adequately.

8.2.16.9

In National Research Development Corporation's Application (1988) AIPC 90-495, the hearing officer found that a claim for 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 relationship.

8.2.16.10

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.

8.2.16.11

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 Welcome) that mere writing cannot confer patentability.

8.2.16.12

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:

a) substances A and B will do nothing, but when mixed together will produce a glue or coating;

b) 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 use of A.

Generally, 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 relationship 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 occurred would constitute a true combination. Some guidance with alleged inventions of this kind may be gained from the discussions in Unilever Ltd's Application, (1976) AOJP 531, and Blendax-Werke's Application, (1980) RPC 491.

8.2.16.13

Other instances in which a claim to a kit may be regarded as constrained to the inventive concept, and consequently be considered to define patentable subject matter, are where one of the components is novel or by the inclusion of words of limitation to a novel method such as "when used" or "whenever used" (see 10.8.9.3).

8.2.16.14

It is possible for a board game to constitute an invention which is a manner of manufacture, as required by sec 18 of the Patents Act. Guidance on this question is given in an Official Ruling of the British Patent Office, which is published in 1926 [63] RPC Appendix A. The text of that ruling, which is followed by the Australian Patent Office, is as follow:

"Counter and board games considered in relation to the definition of an invention contained in Section 93 of the patents and designs Acts, 1907 and 1919. The question having arisen upon an Examiner's report, whether a patent for a game of the above character should be refused where the only novel feature (apart from the rules of the game) lies in the particular character of the markings upon the board, the following Ruling was given:- It may be stated generally, that where the claim made in cases such as this is to apparatus for playing a game, comprising one or more playing pieces and a board marked in a particular manner substantially as shown in drawings accompanying the Specification, the playing piece or pieces being moved in accordance with directions furnished in the Specification as to the manner in which the game is to be played, the requirements involved by the definition of an "invention" contained in Section 93 of the Acts will be held to be complied with, and the application will be subject only to such objection as may arise under Section 7^* or otherwise in the normal procedure of examination."

* This section of the UK Act is the requirement for novelty and non-obviousness

8.2.16.15

In order to be patentable, a board game must satisfy both the requirements of being a `manner of new manufacture', and also be novel. This is well illustrated in the case of Cobianchi's Application (1959) AOJP 2133 which related to a special pack of cards for playing canasta. The main novelty of that invention was that the symbols shown in two colours on conventional cards were replaced by pips or other markings in two colours. The Commissioner of Patents decided that there was a potential working interrelationship between the cards of the pack seen in the context of the rules of the game - and thus, consistent with the above Ruling, that the invention was considered to be a manner of new manufacture. However, the Commissioner also found that the invention was not novel and refused the application. (See also para 8.2.16.3.)

Note that where a novel piece of apparatus is devised for playing a game, and is claimed in a games set, there would normally be no objection on the basis of manner of manufacture. See also para 8.2.16.5, above.

8.2.16.16

Examples of applications for games "kits" or apparatus for playing a new game which have been refused (including on novelty grounds) are:

Ariel Productions Limited's Application, (1957) AOJP 1642 (for a number of grading devices - cards bearing printed information - and a number of dice for playing a new game);

Fortuna Agencies Ltd.'s Application (1977) AOJP 2138 (board game with tile pieces marked with mathematical symbols, similar to "Scrabble");

Kent & Thanet Casino's Application, (1968) AOJP 318 (roulette wheel for use in conjunction with a surface having areas marked out for reception of stake money).

8.2.17.1

A new use of a known substance is patentable provided the use takes advantage of a previously unknown property.

It must be emphasised that the process, and not the article, constitutes the invention in these cases. For example, a flux known for soldering and found to be useful for welding aluminium could not be claimed as a flux for welding aluminium, but a claim to the process of welding aluminium which consists in employing the known material as flux would be allowable (Aktiengesellschaft fur Autogene Aluminium Schweissung v. London Aluminium Co. Ltd., (No. 2), (1922) 39 RPC 296). The same considerations arise when claim is made to a known composite material to be used for a new purpose. The idea of using an old material for an entirely new purpose does not justify a claim for the material itself.

See Adhesive Dry Mounting Co. Ltd. v. Trapp and Co., (1910) 27 RPC 341 at page 353,

G.E.C.'s Application, (1943) 60 RPC 1 at page 3,

Wellcome Foundation Ltd. v. Commissioner of Patents, (1980) AOJP 2759,

NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 24 IPR 1 (later appealed on other grounds - see 26 IPR 513 and 32 IPR 449).

The NRDC case also contains an excellent discourse on this subject, see (1959) AOJP at page 2762 (Column 2) and 2763.

8.2.17.2

The use of a known material in the manufacture of known articles for the reason that it possesses a known property which renders it useful for that purpose is not a manner of new manufacture. Thus, an application for the manufacture of the parts of electricity meters, which are subject to wear, from oxide-coated aluminium was rejected, since it was known that the coating of aluminium with oxide rendered it resistant to wear, (L. & G.'s Application, (1941) 58 RPC 21). Again, claims for a safety razor having a handle made entirely of soft rubber were refused, it being known to provide flexible handles for such devices, (Axien's Application, 53 RPC 127); similarly, claims were refused for spinning jets formed of a known alloy, for making artificial silk, the qualities relied upon being set out in another specification as being the qualities of the class of alloy in question.

But conditions inherent in the above general statements must be fully satisfied to justify refusal, and the application may be allowed to proceed in such circumstances as the following (from L. & G.'s Application, (1941) 58 RPC 21 at page 24):

"(1) where a change or variation in the construction of the apparatus is rendered necessary by reason of the use of a particular kind of material not previously used for that purpose, or (2) where the use for a particular apparatus of a known material not previously used for that purpose is due to a hitherto unknown or unsuspected property of the material, or (3) where the adaption of the known material to the particular piece of apparatus leads to a new departure in the technique of the production of the apparatus."

Thus, it was held to be a manner of new manufacture to make parts of a known apparatus, for handling flowing molten glass, of a particular known alloy, on the ground that an unsuspected property of the alloy was utilised. (Baker and Company's Patent, (1942) 59 RPC 138.)

See also NRDC case (above).

On the other hand, in the case of Commissioner of Patents v. Microcell Ltd., 102 CLR 232 at page 251, (rocket projectors comprising tubes of reinforced synthetic resinous plastic material), the High Court held that there was "in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject-matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do".

8.2.17.3

The law on new use of old contrivances is set down in Gadd & Mason v. The Mayor etc. of Manchester, (1892) 9 RPC 516 at page 524, and was adopted by the High Court of Australia in Willmann v. Petersen, 2 CLR 1 at page 17. In the former case Lindley LJ stated

"1. A patent for the mere use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad and cannot be supported. If the new use involved no ingenuity but is in manner and purpose analogous to the old use, although not quite the same, there is no invention; no manner of new manufacture within the meaning of the Statute of James. 2. On the other hand a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been first to see and overcome by some ingenuity of his own."

See also Schwer v. Fulham & Robinson, 11 CLR 249 and Lister's Application, (1966) RPC 30

Note that because reg. 3.18(1) precludes examiners, for the purpose of examination, from having regard to prior use, only information publicly available in documentary form may be used for examination purposes to establish that a contrivance is known (see also para 8.2.17.6, below).

8.2.17.4

The principle underlying the doctrine of analogous use was stated in (e.g.) British Liquid Air Co. Ltd. v. British Oxygen Co. Ltd., (1909) 26 RPC 509 at page 532:

"the application of a known device to its ordinary purpose under analogous circumstances is not good subject matter for Letters Patent, because it does not involve invention". In Harwood v. Great Northern Railway Co., 35 LJQB 27 at page 38 it was stated: "You cannot have a patent for a well known mechanical contrivance merely because it is applied in a manner or to a purpose which is analogous to the manner, or for the purpose in or to which it has been hitherto notoriously used."

8.2.17.5

There are three prerequisites in establishing analogous use. They are:

a) user (i.e. the use of the device and not a mere description thereof) must be proved or admitted.

See Pope Appliance Corporation v. Spanish River Pulp Paper Mills Ltd., 46 RPC 23, at page 56.

b) The device must be used for its ordinary purpose.

See Morgan v. Windover, (1890) 7 RPC 131.

c) The circumstances of the use must be truly analogous.

See British Liquid Air Co. Ltd. v. British Oxygen Co. Ltd., 26 RPC 509.

Because reg. 3.18(1) precludes examiners, for the purpose of examination, from having regard to prior use - the first one of these prerequisites - this doctrine has no application in examination work.