"The dissection of a combination into its constituent elements and the examination of each element in order to see
whether its use was obvious or not is,
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in our view, a method which ought to be applied with great caution since it tends to obscure the fact that the invention
claimed is the combination. Moreover this method also tends to obscure the fact that the conception of the
combination is what normally governs and precedes the selection of the elements of which it is composed rather than
that the obviousness or otherwise of each active selection must in general be examined in the light of this
consideration. The real and ultimate question is: Is the combination obvious or not?"
[40] In Technograph Printed Circuits (supra) at 362, Lord Diplock said this:
"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor
might have arrived at the invention that he claims in his specification if he had started from something that was
already known. But it is only because the invention has been made and has proved successful that it is possible to
postulate from what starting point and by what particular combination of steps the inventor could have arrived at his
invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation,
appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental
process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving
that the final result which it was the object of the inventor to achieve was attainable from the particular starting point
and in his selection of the particular combination of steps which would lead to that result."
[41] The inventor's (Mr Ryan's) evidence that the invention solved the problems set out under the quoted
"Background" was met by what fairly may be called a bald denial by Mr Steyn who was in any event not an
agricultural engineer at the effective date of the patent. Mr Ryan, furthermore, testified that the claimed
combination overcame a number of deficiencies of the prior art. In particular, he mentioned the following: The
failure to create a deep root bed; the failure to create a compacted seed bed directly above the root bed; the
failure to create the seed bed at a relatively constant depth; the failure to effect precision placement of the
seed on the seed bed directly above the root bed; the failure to effect closing of the seed with soil of a
relatively constant depth; the failure to compact the soil around the seed; the failure to allow for
independence in the working depth of the tine and the depth at which the seed is placed; the failure to allow
adjustment of the seeding depth independently from the working depth of the tine; having broad faced
working tools which increase drag and caused wide and unnecessary soil disruption; and the failure to create
a deep root bed, a seed bed, the precision placement of seed and the closing of the seed with soil which is
compacted around the seed, at a relatively constant depth in a single operation.
[42] This evidence, too, was met with a bald denial from Mr Steyn. Murphy J disregarded the evidence on two main
bases. The first was "the important point that many of the advantages Ausplow claims the invention has over
the prior art are not referred to in the specification". And the second was that "to read these advantages into
the specification would be to introduce new matter not in substance disclosed in the specification before
amendment". I have already pointed out the first point is legally unsound. As Lord Hoffmann said in Conor
Medsystems Inc v Angiotech Pharmaceuticals Inc and others [2008] UKHL 49 at paragraph [19]:
"In my opinion, however, the invention is the product specified in a claim and the patentee is entitled to have the
question of obviousness determined by
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reference to his claim and not to some vague paraphrase based upon the extent of his disclosure in the description."
A similar statement appears in Unilever v Chefaro [1994] RPC 567 at 580:
"It is the inventive concept of the claim in question which must be considered, not some generalised concept to be
derived from the specification as a whole."
[43] The second is based, I fear, on a misconception. The objection to new matter in the specification arises when
an application for amendment is made in order to introduce that matter into the specification (section 51(6)).
The patentee did not seek to amend the specification by introducing this evidence. The provision has nothing
to do with evidence in support of the inventiveness of a claimed invention. As was said in McKelvey and others
v Deton Engineering (Pty) Ltd and another 1998 (1) SA 374 (SCA) at 379DE [also reported at [1997] 3 All SA
569 (A) Ed]:
"The Act draws a clear distinction between 'matter' and the claimed invention. 'Matter', in general, refers to the
disclosure in the body of the specification that can support a claim, whether or not there is a claim based thereon"
(Compare, for example, Bonzel v Intervention Ltd [1991] RPC 553).
[44] The learned Commissioner also relied on part of the reasoning of the SCA when it had to consider whether
the invention claimed in the unamended claim 1 was inventive. That reasoning cannot simply be made
applicable to another invention claimed in a different claim. The learned Commissioner, I respectfully suggest,
should have decided the case on the facts before him and not with reference to the reasoning of the SCA
which was directed at something different.
[45] I, therefore, conclude that the respondents have failed to establish that the invention claimed in the amended
claims 1 and 13 did not involve an inventive step because it was obvious to a person skilled in the art.
Discretion
[46] The respondents asked us, in the event of having found that the amendment will cure the invalidity, to refuse
the application in the exercise of this Court's discretion. The first ground advanced was the patentee's alleged