“To rationalize [the findings from the TEM investigations] with the above analyses of the kinetics of the surface oxidation of TiC, one has to conclude that it is very plausible that the nucleation resulting in α-Al 2O 3 does not occur on TiC but rather on a very thin titanium oxide film, e.g. Ti 2O 3 or Ti 3O 5 …, and hence, makes it impossible to develop [an] epitaxial relationship with the underlying TiC facet. However, since there is no evidence from the TEM investigations of any trigonal (Ti 2O 3) or monoclinic (Ti 3O 5) titanium oxide interface TiC with Al 2O 3, it must be assumed that a transformation back to the fcc TiO or TiCO phases has occurred during the fairly long deposition period. The volume contraction (25-30%) accompanying the phase transformations would then explain the observed interface porosity. In contrast, κ- … Al 2O 3 nucleate[s] directly on non-oxidised TiC facets which results in an epitaxial relationship between TiC/Al 2O 3 and the absence of interface porosity. The subsequent kinetics behind the phase transformation of the metastable κ- to α-Al 2O 3 is not clear. It is possible that small changes in the composition of the coating, or the influence of impurities, alter the phase stabilities. It should be pointed out, however, that only small rearrangements of the close-packed oxygen layers are needed to convert κ-Al 2O 3 to α-Al 2O3.”
“Generally, the κ-phase is fine-grained with a grain size in the range 0.5-2.0 μm and often exhibits a columnar coating morphology. Furthermore, κ-Al 2O 3 coatings are free from crystallographic defects and free from micropores or voids. The α-Al 2O 3 grains are usually coarser with a grain size of 1-6 μm depending upon the deposition conditions. Porosity and crystallographic defects are in this case more common.” 69.At page 2 lines 22-26 the specification states: “In commercial cutting tools, Al 2O 3 is always applied on TiC coated carbide or ceramic substrates … and therefore the interfacial chemical reactions between the TiC-surface and the alumina coating are of particular importance. In this context the TiC layer should also be understood to include layers having the formula TiCxNyOz in which the carbon in TiC is completely or partly substituted by oxygen and/or nitrogen.”
“Although the disclosed methods result in alumina layers tightly and adherently bonded to the cemented carbide body or to a refractory layer of e.g. TiC adjacent to the cemented carbide, they do not result in the particular α–polymorph of Al 2O 3 as disclosed in the present invention.”
“to provide, on a hard substrate or preferably onto aforementioned TiCxNyOz coating at least one single phase Al 2O 3 of the polymorph α with a desired microstructure and crystallographic texture using suitable nucleation and growth conditions such that said properties of the Al 2O 3 layer are stabilized.”
“to provide an alumina coated cutting tool insert with improved cutting performance in steel, stainless steel, cast iron and, in particular, in nodular cast iron.”
“A coated cutting tool in accordance with the present invention exhibits improved wear and toughness properties compared to prior art tools when used for machining steel or cast iron…”
“at least one of the layers in the coating structure comprises a fine-grained, preferentially textured layer of single phase α- Al 2O 3 having a thickness of d = 0.5-25 μm with a grain size (s) [within the ranges specified in claim 1]”
“The α-Al 2O 3 coatings according to the invention are dense and free of microporosity and crystallographic defects. This is in contrast to previous reports on α-alumina coatings.”
“Cemented carbide cutting inserts with the composition 5.5 % Co, 8.5 % cubic carbides and balance WC were coated with a 5 μm thick layer of TiCN. In subsequent process steps during the same coating cycle, a fine grained (1-2 μm), 7 μm thick layer of α-Al 2O 3 was deposited. The oxidation potential of the hydrogen carrier gas, i.e. the water vapour concentration, was explicitly set forth to a relatively low level, 10 ppm, prior to and during the Al 2O 3-nucleation. … A reaction gas mixture comprising CO 2, CO, and Al 2O 3 was sequentially added to the hydrogen carrier gas in given order. The gas mixtures and other process conditions during the Al 2O 3 deposition steps comprised: ”
“[1] Body at least partially coated with one or more refractory layers of which at least one layer is alumina, [2] said alumina layer having a thickness of d= 0.5-25 µm [3] and consisting of single phase α-structure [4] having a grain size(s): 0.5 µm < s < 1 µm for 0.5 µm < d < 2.5 µm and 0.5 µm < s < 3 µm for 2.5 µm < d < 25 µm characterized in that [5] said alumina exhibits a texture coefficient (TC) larger than 1.3, preferably larger than 1.5, for the (012) growth direction of the equivalent crystallographic planes defined as: 85. where 86. I(hkl) = measured intensity of the (hkl) reflection 87. I 0(hkl) = standard intensity of the ASTM standard powder pattern diffraction data 88. n = number of reflections used in the calculation (hkl) reflections used are: (012), (104), (110), (113), (024), (116).”
“Body according to any of the preceding claims characterized in that said alumina layer is in contact with a TiCxNyOz layer”
“Body according to any of the preceding claims characterized in that said body is a cutting tool insert of cemented carbide, titanium based carbonitride or ceramics.”
“One might have thought there was nothing more to say on this topic after Kirin-Amgen Inc v Hoechst Marion Roussel Ltd[2005] RPC 9 . The judge accurately set out the position, save that he used the old language of Art.69 EPC rather than that of the EPC 2000, a Convention now in force. The new language omits ‘the terms of’ from Art.69. No one suggested the amendment changes the meaning. We set out what the judge said, but using the language of the EPC 2000: [182] The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. The principles were summarised by Jacob LJ in Mayne Pharma Pty Ltd v Pharmacia Italia SpA[2005] EWCA Civ 137 and refined by Pumfrey J in Halliburton Energy Services Inc v Smith International (North Sea) Ltd[2005] EWHC 1623 (Pat) following their general approval by the House of Lords in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd[2005] RPC 9 . An abbreviated version of them is as follows: (i) The first overarching principle is that contained in Article 69 of the European Patent Convention. (ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context. (iii) It follows that the claims are to be construed purposively - the inventor's purpose being ascertained from the description and drawings. (iv) It further follows that the claims must not be construed as if they stood alone - the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims. (v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different. (vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol - a mere guideline - is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory. (vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements. (viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context. (ix) It further follows that there is no general ‘doctrine of equivalents.’ (x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context. (xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.” [182] The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. The principles were summarised by Jacob LJ in Mayne Pharma Pty Ltd v Pharmacia Italia SpA[2005] EWCA Civ 137 and refined by Pumfrey J in Halliburton Energy Services Inc v Smith International (North Sea) Ltd[2005] EWHC 1623 (Pat) following their general approval by the House of Lords in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd[2005] RPC 9 . An abbreviated version of them is as follows: (i) The first overarching principle is that contained in Article 69 of the European Patent Convention. (ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context. (iii) It follows that the claims are to be construed purposively - the inventor's purpose being ascertained from the description and drawings. (iv) It further follows that the claims must not be construed as if they stood alone - the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims. (v) When ascertaining the inventor's purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different. (vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol - a mere guideline - is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee's territory. (vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements. (viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context. (ix) It further follows that there is no general ‘doctrine of equivalents.’ (x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context. (xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.”
“It is for the Court to construe the specification, but to do so it must adopt the mantle of the notional skilled man. In this case, that is particularly important as RI correction is not mentioned in the specification. If it did not form part of the common general knowledge, it could not form part of the way of determining the value of Mn indicated in the specification. The judge made certain findings of fact, but did not decide whether RI correction was part of the common general knowledge. It is therefore necessary to review the evidence on the matter. … The evidence did not establish that RI correction formed part of the common general knowledge at the time. In fact I believe the evidence established the contrary. … In general, persons who knew how to use GPC machines never corrected for RI divergence and it would not immediately have sprung to their mind that there was any need to do so. If they needed an accurate Mn measurement, VPO would be used. If GPC was to be used to obtain a measurement equivalent in accuracy to that derived using VPO then a correction, perhaps RI correction, would be considered. However as Dr Sims pointed out a GPC determination without RI correction produced an answer which was considered to be sufficient for the purposes of BP. That I believe was the stance taken by the specification. I believe the passage on page 5 of the specification, construed through the eyes of the notional skilled man, teaches that Mn and Mw values should be obtained using standard GPC techniques. RI correction is not mentioned …. The reader, if he thought about the effect of RI divergence, was entitled and right to conclude that the patentee must have known that the way to determine Mn using RI correction would not be known to the notional skilled man and therefore the patentee would have included appropriate instructions if he intended it to be carried out. The judge came to the wrong conclusion because he approached the issue incorrectly. The correct approach was to ask – What is the specification teaching? To answer that question it was necessary to put on the mantle of the notional skilled man and, having done so, to construe the passage on page 5 of the specification. The judge did not do that. He concluded, relying on the evidence of the witnesses called, that some people who were skilled in the art would use RI correction and some would not. Such people differed in experience and would have particular reasons which would cause them to act in a particular way. They would be skilled in the art, but not necessarily equivalent to the notional skilled addressee who only possessed common general knowledge.”
“The section requires the skilled man to be able to perform the invention, but does not lay down the limits as to the time and energy that the skilled man must spend seeking to perform the invention before it is insufficient. Clearly there must be a limit. The sub-section, by using the words, clearly enough and completely enough, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, as to whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result.”
“Even though a reasonable amount of trial and error is permissible when it comes to the sufficiency of disclosure in an unexplored field or—as it is in this case—where there are many technical difficulties, there must then be available adequate instructions in the specification or on the basis of common general knowledge which would lead the skilled person necessarily and directly towards success through the evaluation of initial failures or through an acceptable statistical expectation rate in case of random experiments. In the present appeal the sensitivity or inherent instability of the composition, or other unexplained circumstances are such that the skilled person can only reproduce the invention in a number of instances with some luck, if at all, in view of the unknown character of reasons which cause failure. For this reason, the patent is invalid in its entirety for not complying with the requirements of Article 83 EPC.” 111.Aldous J commented: “In that passage the Board contemplated that some experimentation may be necessary to perform an invention, but they suggested that the skilled man in that case had to be able to achieve success by evaluation and statistical analysis. That I believe is consistent with the view that I have expressed that the skilled man must seek success and must be able to achieve it by only carrying out the ordinary experiments or trials that are generally necessary in applying discoveries of the type with which the patent is concerned.”
“It is not enough if the instructions are such that a number of equally qualified notional addressees can arrive at completely different end points, some within the scope of the claimed invention and some not. If reasonable addressees can come to different conclusions there is a conundrum as to which is right. That is not enablement. This view appears to be consistent with the approach of the Technical Board of Appeal of the EPO in Unilever/Stable bleaches (Decision T226/855) [1988] OJEPO 336, which was referred to with approval by Aldous J and the Court of Appeal in Mentor Corp v. Hollister Inc.”
“In the Board’s judgment the criteria for determining the sufficiency of the disclosure are the same for all inventions, irrespective of the way in which they are defined, be it by way of structural terms of their technical features or by their function. In both cases the requirement of sufficient disclosure can only mean that the whole subject-matter that is defined in the claims, and not only a part of it, must be capable of being carried out by the skilled person without the burden of an undue amount of experimentation or the application of inventive ingenuity. The peculiarity of the ‘functional’ definition of a component of a composition of matter resides in the fact that this component is not characterised in structural terms, but by means of its effect. Thus this mode of definition does not relate to a tangible component or group of components, but comprises an indefinite and abstract host of possible alternatives, which may have quite different chemical compositions, as long as they achieve the desired result. Consequently, they must all be available to the skilled person if the definition, and the claim of which it forms a part, is to meet the requirements of Article 83 or 100(b) EPC. This approach is based on the general legal principle that the protection covered by a patent should correspond to the technical contribution to the art made by the disclosure of the invention described therein, which excludes that the patent monopoly be extended to subject-matter which, after reading the patent specification, would still not be at the disposal of the skilled person.… There cannot, of course, be a clear-cut answer to the question of how many details in a specification are required in order to allow its reduction to practice within the comprehensive whole ambit of the claim, since this question can only be decided on the basis of the facts of each individual case. Nevertheless, it is clear that the available information must enable the skilled person to achieve the envisaged result within the whole ambit of the claim containing the respective ‘functional” definition without undue difficulty, and that therefore the description with or without the relevant common general knowledge must provide a fully self-sufficient technical concept as to how this result is to be achieved.”
“Article 83 EPC requires an invention to be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. As made clear in T 409/91 (OJ EPO 1994, 653, see in particular points 3.3 to 3.5 of the Reasons), the extent to which an invention is sufficiently disclosed is highly relevant whenconsidering the issue of support within the meaning of Article 84 EPC, because both these requirements reflect the same general principle, namely that the scope of a granted patent should correspond to its technical contribution to the state of the art. Hence it follows that, despite being supported by the description from a purely formal point of view, claims may not be considered allowable if they encompass subject-matter which in the light of the disclosure provided by the description can be performed only with undue burden or with application of inventive skill. As for the amount of technical detail needed for a sufficient disclosure, this is a matter which depends on the correlation of the facts of each particular case with certain general parameters, such as the character of the technical field, the date on which the disclosure was presented and the corresponding common general knowledge, and the amount of reliable technical detail disclosed in a document (see decision T 158/91 of30 July 1991 ). In certain cases a description of one way of performing the claimed invention may be sufficient to support broad claims with functionally defined features, for example where the disclosure of a new technique constitutes the essence of the invention and the description of one way of carrying it out enables the skilled person to obtain without undue burden the same effect of the invention in a broad area by use of suitable variants of the component features (see T 292/85 above). In other cases, more technical details and more than one example may be necessary in order to support claims of a broad scope, for example where the achievement of a given technical effect by known techniques in different areas of application constitutes the essence of the invention and serious doubts exist as to whether the said effect can readily be obtained for the whole range of applications claimed (see T 612/92 of28 February 1996 ). However, in all these cases, the guiding principle is always that the skilled person should, after reading of the description, be able to readily performthe invention over the whole area claimed without undue burden and without needing inventive skill (see T 409/91 and T 435/91 above). On the other hand, the objection of lack of sufficient disclosure presupposes that there are serious doubts, substantiated by verifiable facts, in this respect, see T 19/90 (OJ EPO 1990, 476, see point 3.3 of the Reasons).”
“1.8 The appellant argued in this respect that the determination of the optimal stirring speed in the preparation of the silica claimed would be arrived at without undue burden simply by varying the stirring speed during the reaction of silicate with sulphuric acid while reworking the two examples of the patent specification. The board can accept that such a trial and error experimentation might in the present case not be considered as undue burden as far as the silicas illustrated in the examples of the contested patent are concerned. However, this reasoning which can be accepted only for the two examples, does not hold good for the other claimed but non-exemplified amorphous silicas and in the absence of any specific recipe concerning the preparation of such silicas, the problems concerning the stirring speed still remain for silicas claimed over the whole range. 1.9 The skilled person is thus confronted with the uncontested fact that he has a lot of process variables affecting the claimed parameters, but once he has encountered failure in one parameter value, there is no clear guidance enabling him to adjust the multitude of process steps in order to arrive with certitude at silicas meeting the parameter requirements defined in claim 1 of both requests at issue. Even though a reasonable amount of trial and error is permissible when it comes to assessing sufficiency of disclosure, there must still be adequate instructions in the specification, or on the basis of common general knowledge, leading the skilled person necessarily and directly towards success, through evaluation of initial failures. This is not the case here, since the preparation of the amorphous silicas claimed is made dependent on the adjustment of different process parameters for which no guidance is given in the patent in suit, so that the broad definition of an amorphous silica as presently claimed is no more than an invitation to perform a research program in order to find a suitable way of preparing the amorphous silicas over the whole area claimed. 1.10 It follows from the above, that the principle underlying Article 83 EPC that the skilled person should be given sufficient guidance for performing the invention without undue burden over the whole range claimed is thus not fulfilled.”
“The heart of the test is: ‘Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?’”
“124. The claim appeared to assume that all uEPOs had effectively the same molecular weight, irrespective of source and method of isolation. This had been shown not to be the case. So which uEPO did the claim require to be used for the test? Simply to use the first uEPO which came to hand would turn the claim into a lottery. On the other hand, it would be burdensome to have to work one's way through several specimens of uEPO (which were, as I mentioned at the beginning of my speech, extremely hard to come by) and even then the result would be inconclusive because non constat that some untried specimen did not have a different molecular weight. 125. The judge decided that the lack of clarity made the specification insufficient. It did not merely throw up the possibility of doubtful cases but made it impossible to determine in any case whether the product fell within the claim. The invention was not disclosed ‘clearly enough and completely enough for it to be performed by a person skilled in the art’: s.72(1)(c). 126. The Court of Appeal disagreed. They said that it was sufficient that some uEPO could be tested against eEPO by SDS-PAGE. The fact that it did not specify which uEPO and that choosing one uEPO would bring the product within the claim and another would not was ‘lack of clarity dressed up to look like insufficiency.’ For my part, I do not think that can be right. If the claim says that you must use an acid, and there is nothing in the specification or context to tell you which acid, and the invention will work with some acids but not with others but finding out which ones work will need extensive experiments, then that in my opinion is not merely lack of clarity; it is insufficiency. The lack of clarity does not merely create a fuzzy boundary between that which will work and that which will not. It makes it impossible to work the invention at all until one has found out what ingredient is needed.”
“(5) It would seem to follow, if points (3)–(4) are accepted, that the meaning of the words ‘solvate” and ‘anhydrate’ are truly ambiguous—are words which do not just have a ‘fuzzy boundary” (per Lord Hoffmann in Kirin-Amgen ([126]). One just does not know what the patentee meant at all. If this logic is right, then not only can there be no infringement … but the claims would be truly ambiguous and thus insufficient on the principles laid down by Lord Hoffmann in Kirin-Amgen.”
“In my opinion there is nothing difficult or mysterious about it. It simply means an element of the claim which is stated in general terms. Such a claim is sufficiently enabled if one can reasonably expect the invention to work with anything which falls within the general term.”
“Q. If you were an ordinary person in 1992 and you were given this patent to work with and you had a first stab at example 1 looking for a texture in the (012) direction of say 1.3, and it did not work, you would have absolutely no idea why not, would you? A. No, there is no conclusion you can draw from this that would drive you other than to do an experimental matrix and say ‘What is the critical set of parameters?’ and then do high/low and so on around it. That is a well-known and very efficient method of zeroing in process parameters. Q. It may be, but it is a tremendous amount of work, is it not? A. No, I mean, there are well-known ways of doing it and, you know, if you go through four or five repetitions you usually get very close.”
“We still have no indication as to [why] our new alpha-alumina has a preferential growth in the 012 direction. The reason for this may lie either the nucleation stage, or in the fact that the layer studied was relatively thick…”
“… varying results was achieved. Brazil have inserts with 104 texture. Also Japanese have 104 texture, but 012 in the bottom of the charge. India had weak 104 and the 012 in the bottom. England showed strong 012 in the whole charge.”
“(1)(a) Identify the notional ‘person skilled in the art’; (b) Identify the relevant common general knowledge of that person; (2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; (3) 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; (4) 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?”
“The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.”
“According to the invention there is thus now available a body such as e.g. a cutting insert for chipforming machining coated with at least one layer of Al 2O 3 + TiC in which the Al 2O 3-layer is in epitaxial contact with adjacent TiC-layer and consists of kappa- or theta-Al 2O 3. In general the Al 2O 3-layer consists of at least 90 %, preferably at least 98 % alpha-Al 2O 3 which has been initially nucleated as kappa- or theta-Al 2O 3 and which has been obtained by a subsequent heat treatment. By this measure a dense and wear resistant alpha-Al 2O 3 is obtained which is fine-grained and has a good bond to the underlying TiC-, TiN- or TiO-layer. The fine grain size and the good bond are caused by the excellent nucleation properties of the initially nucleated kappa-Al 2O 3-layer. In said respect the invention can be described as alpha-Al 2O 3 with kappa-Al 2O 3-morphology.”
“… there is no invention in stipulating a feature which is arbitrary and serves no useful purpose. It has long been established that a patent cannot be used to prevent a person from doing what is merely an obvious extension of what has been done or was known in the art before the priority date. The public are entitled to make obvious products using obvious and and ordinary techniques. The selection of a number of these products by reference to an arbitrary parameter which has no technical significance does not involve an inventive step and does not create a patentable invention. It involves no technical ingenuity and solves no technical problem.”
“50. … The EPO jurisprudence is founded firmly around a fundamental question: has the patentee made a novel nonobvious technical advance and provided sufficient justification for it to be credible? That is the basis of all the reasoning – see e.g. [2.4.2] of AgrEvo. A ‘selection’ (by which I mean the later claimed compound or sub-class) which makes a real technical advance in the art is patentable. 51. More specifically Mr Carr contended that a sub-class or individual member of a prior art published class was taken to be obvious if it was a random selection from the earlier published class. I have no difficulty with that. Such a ‘selection’ provides no technical contribution. Mankind can learn nothing from it. Nor indeed does Lilly dispute that proposition. It said in its skeleton argument: ‘Lilly does not dispute that in relation to obviousness a selection from the prior art cannot be merely arbitrary.’ 52. Of course one has to consider here what is meant by an ‘arbitrary selection’. The answer is to be found in the guiding principle – is there a real technical advance?”
“... the Board's approach in cases such as these is consistent and clear, and it is based on its general approach to patent validity on novelty and obviousness. There is nothing in the 1977 Act (any more than there was in the 1949 Act, it is fair to say) which recognises, or even implies, a special approach to, or even the existence of, selection patents as a special category of patent, which require a different approach when determining validity from other patents… ”
“The texture claimed in the Patent is a red herring. I believe that grain size control and adhesion control are still the most important values in tool coating production.”