Not a lot of people know this but we have a patent agent in the our beautiful valley. And a very good one he is too. His name is David Lister and he practises in Honley. The reason I mention Mr. Lister is that I have just read one of his cases.
Re Owen's patent application BL 0/370/10 was a rubbish case. Literally. The invention lay in the field of scrapping goods and products that had come to the end of their useful life. It concerned a process which took the product in question, broke it up into pieces, separated out certain pieces or material for re-use, and then made a new composite material out of the remaining matter. The principal claim was
"A process for scrapping vehicles or white goods formed from two or more types of material comprising passing the vehicles or white goods in an assembled condition through a shredding machine which shreds, chops or fragments the products which are being scrapped into pieces, removing and recovering for re-use part of the pieces and mixing or coating the remaining pieces with an encapsulating material having adhesive properties to form a re-useable composite material wherein no pieces of the vehicles or white goods being scrapped remain to be disposed of by other means such as incineration or in land-fill sites."
The examiner objected to the application on the grounds that there was no inventive step. It was common ground that the Windsurfing/Pozzoli tests applied.
(1) Identify the notional “person skilled in the art”
(2) Identify the relevant common general knowledge of that person
(3) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it
(4) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed
(5) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
It was also common ground that the person skilled in the art was "a team of individuals involved in the recycling and disposal of waste mechanical equipment, such as vehicles and white goods."
Applying that test with reference to the prior art the hearing officer, Dr. Porter, could find only 2 claims that could possibly disclose an inventive step. He therefore remitted the application to the examiner for further consideration.
That's it really! But I couldn't resist blogging about a case from Summer Wine Country.
