PATENTS – hearing de novo – common general knowledge of skilled addressee – claimed methods and apparatus for identifying and separating mined material on a bulk basis – upgrading low grade iron ore – meaning of “grade” and “direct assessment” in patent application – whether patent application involves a manner of manufacture pursuant to s 18(1)(a) of the Patents Act 1990 (Cth) – whether combination of integers produce a new and useful result – whether claimed invention was a mere scheme and/or mere working directions – whether claimed invention is novel when compared with the prior art base as it existed before the priority date pursuant to s 18(1)(b)(i) of the Patents Act – lack of novelty not proved – whether the claimed invention involved an inventive step when compared with the prior art base before the priority date pursuant to s 18(1)(b)(ii) of the Patents Act – claimed invention not obvious – appeal allowed
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
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Details
AGLC
Technological Resources Pty Limited v Tettman [2019] FCA 1889
Case
[2019] FCA 1889
Decision Date
CaseChat Overview and Summary
In the Federal Court of Australia, the case of Technological Resources Pty Limited v Tettman revolved around a dispute regarding the validity of a patent application for a method and apparatus designed to identify and separate mined material, specifically for upgrading low-grade iron ore. The appellant, Technological Resources, sought to overturn a decision by the delegate of the Commissioner of Patents that had rejected their patent application on the grounds of lack of novelty and inventive step. The respondent, Tettman, defended the rejection, arguing that the application did not meet the criteria for patentability under the Patents Act 1990.
The court was tasked with determining whether the claimed methods and apparatus constituted a manner of manufacture as required by section 18(1)(a) of the Patents Act, whether the combination of the claimed invention's components produced a new and useful result, and if the invention was more than a mere scheme or working direction. Additionally, the court had to assess whether the invention was novel and involved an inventive step when compared with the prior art base as it existed before the priority date. The court considered the common general knowledge of the skilled addressee and the specifics of the prior art, including the Kurth 2007 document.
The court concluded that the respondent had not successfully demonstrated that the patent would be invalid if granted. The claimed invention was found to involve a manner of manufacture, produce a new and useful result, and not be obvious or a mere scheme or working direction. The court held that the invention was novel and involved an inventive step when compared with the prior art base before the priority date. Consequently, the court allowed the appellant's appeal, setting aside the decision of the delegate of the Commissioner of Patents and directing that the patent application proceed to grant.
The court ordered that the appeal be allowed, the decision of the delegate be set aside, and Australian Patent Application 2011261171 proceed to grant. The respondent was also ordered to pay the appellant's costs of the appeal and the opposition before the Commissioner of Patents. The entry of these orders was governed by Rule 39.32 of the Federal Court Rules 2011.
Orders
Orders of the court
1. The appeal be allowed.
2. The decision of the delegate of the Commissioner of Patents given on 27 March 2018 be set aside.
3. Australian Patent Application 2011261171 proceed to grant.
4. The respondent pay the appellant’s costs of this appeal and of the opposition before the Commissioner of Patents.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
I also accept the appellant’s submissions (for the reasons given by the appellant) that the claimed invention, in any event, would not have been obvious in light of the common general knowledge and Kurth 2007 because Kurth 2007 is concerned generally with process control and does not disclose bulk sorting as that term is used in the 171 application. CONCLUSIONS The respondent has not discharged its onus of proving that the patent as sought in the 171 application would be invalid if granted. It follows that the appellant’s appeal should be allowed and consequential orders should be made enabling the 171 application to proceed to the grant of a patent.