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Inventive Step

Combining disclosures (“mosaicing”) for inventive step

4.38 While any single disclosure forming the state of the art may be used for a consideration of inventive step, when combining two or more disclosures an assessment of whether the person skilled in the art would combine such disclosures must first be undertaken.

4.39 In ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and others [2009] SGHC 206, Tan J stated that:

“one is entitled to make a ‘mosaic’ out of relevant documents if it can be put together by an unimaginative man with no inventive capability (see Technograph v Mills & Rockely, [1972] RPC 346)”

4.40 Tay JC referred to the UK decision in Lowndes Patent [1928] 45 RPC 48:

“it is not open to you to take a packet of prior documents and by putting a puzzle together to produce what you say is a disclosure in the nature of the various elements which have been contained in the prior documents … it is necessary to point to a clear and specific disclosure of something which is said to be like the patentee’s invention.”

4.41 In Martek Biosciences Corporation v Cargill International Trading Pte Ltd [2012] SGHC 35, Tay J referred to an article by Ng-Loy Wee Loon in Law of Intellectual Property of Singapore (Sweet & Maxwell Asia, Rev Ed, 2009) at 30.1.50:

“… the skilled addressee assesses the obviousness of an invention by reference to the whole of the state of the art relevant to this invention, whereas he assesses the novelty of the invention by reference to each individual piece of prior art in this state of the art. There is, however, an exception to this scenario: ‘mosaicing’ is not permitted in the obviousness inquiry if it would not be obvious to the skilled addressee to ‘mosaic’ the different pieces of prior art.”

4.42 Tay J went on to consider whether it would have been obvious to the person skilled in the art to mosaic the documents. Notably, this “obvious to combine” does not necessarily require an express cross reference in the documents in order for an inventive step argument to be raised on the basis of a mosaic of documents. In this regard, the statements by Laddie J in Pfizer Ltd’s Patent [2001] FSR 16 may provide useful guidance:

“When any piece of prior art is considered for the purposes of an obviousness attack, the question asked is ‘what would the skilled addressee think and do on the basis of the disclosure?’ He will consider the disclosure in the light of the common general knowledge and it may be that in some cases he will also think it obvious to supplement the disclosure by consulting other readily accessible publicly available information. This will be particularly likely where the pleaded prior art encourages him to do so because it expressly cross-refers to other material. However, I do not think it is limited to cases where there is an express cross-reference. For example if a piece of prior art directs the skilled worker to use a member of a class of ingredients for a particular purpose and it would be obvious to him where and how to find details of members of that class, then he will do so and that act of pulling in other information is itself an obvious consequence of the disclosure in the prior art.”

4.43 In deciding whether it is obvious to combine the disclosure in two or more documents, the UK Manual of Patent Practice (April 2009) states that the following considerations are likely to be relevant:

(1) How the nature and the contents of the documents influence whether the person skilled in the art would combine them. For example where the disclosed features seem at first sight to have an inherent incompatibility or where one document has a tendency to lead from the mosaic, this would be a pointer towards the combinations being inventive.

(2) Whether the documents came from the same technical field or from neighbouring or remote technical fields.

(3) The presence of references in one document to another.

(4) The amount of selection required to isolate the separate disclosures from the surrounding documentary material.

(5) Whether the contents of one document are so well known that the person skilled in the art would always have them in mind in reading other documents.

4.44 Notably, Section 14(2) sets out that the state of the art comprises all “matter (whether a product, a process, information about either, or anything else)”. Section 15 states that the invention will involve an inventive step if it is not obvious having regard to any such matter. Thus for example a “mosaic” does not require a combination of separate documents – in particular, a mosaic of different pieces of information from within a single document may be appropriate.

4.45 If the invention can be produced by combining the teaching of one document with common general knowledge, there is a strong presumption that such a combination would be obvious to the person skilled in the art. In raising such an objection, the Examiner should clearly detail the basis for asserting that certain features are common general knowledge. This should be based on legal precedent as to what constitutes common general knowledge, but may also be taken from the application. For example, if the application refers to prior art as “conventional”, this may be taken to indicate that the prior art is common general knowledge (NEC Corporation’s Application BL O/038/00)

4.46 There is no limit to the number of pieces of information that may be combined for an inventive step objection. However, in general the greater the number of features to be combined the greater the chance of there being an inventive step. However, if the invention constitutes no more than a combination of separate entities, each performing its usual function, then the invention is likely to be a mere collocation.