Benker v The Comptroller General of Patents

This is an appeal under section 97 of the Patents Act 1977. The appeal is brought by Mrs. Benker against the decision, dated 10^th June 2011, of a hearing officer, Mr. A. Bartlett, acting on behalf of the Comptroller General of Patents. On this appeal Mrs. Benker has appeared in person and the Comptroller has been represented by Mr. Douglas Campbell of counsel.

The history of the matter goes back to around 2006 when Mrs. Benker applied for a patent in relation to what was described in the patent application as a measuring container, which was further elaborated in the following description: “A container for measuring the alcohol content of an alcohol drink is provided. The container comprises an indicator that shows the volume of the alcoholic drink that would contain a given number of units of alcohol. The container may include a plurality of indicators for a plurality of different drinks for increased versatility. Alternatively a plurality of different containers with different indicators may be provided”.

The application was examined on two occasions by Mr. Robert Price. A number of points were made in his first examination report and Mrs. Benker sought to meet the points which had been raised. Mr. Price prepared a second examination report dated 7^th February 2011. In paragraph 2 of that report he expressed the view that the suggested invention as defined in the application was obvious in view of what had already been disclosed in three earlier citations. Those citations have been referred to in this case by the names of the patentee. They are namely, Giroux, Holloway and Christiaens. In addition, the examiner stated at paragraph 20 of his report that he “did not consider a measuring container which provided an indication as to the quantity of a fluid therein is, in itself, a new technical achievement and that the scales themselves indicating the alcohol content of volumes of fluids in the container appear to represent nothing more than the presentation of information appertaining to the actual contents. This would appear to be the same situation whether the scales were provided for one or a plurality of different fluids”.

Mrs. Benker, acting through a patent attorney, requested a hearing before a hearing officer, on behalf of the Comptroller, to decide the matter. It was arranged that the hearing would take place by way of a telephone conference, which duly occurred on 11^th April 2011. The examiner Mr. Price was also in attendance at the telephone conference. The hearing officer prepared the written decision dated 10^th June 2011. It is necessary to refer to a number of parts of that decision, although I will attempt to summarise it as much as possible.

The hearing officer referred to the relevant statutory provisions and in particular he referred to section 1(1)(b) of the Patents Act 1977, which provides:

“A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say —

…

(b)

it involves an inventive step.”

The hearing officer also referred to section 1(2)(d), which is in these terms:

“It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of —

….

(d)

the presentation of information;

but the foregoing provisions shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.”

The hearing officer then proceeded to describe the subject matter of the application. It is accepted by Mrs. Benker that his description is an accurate one, so I will quote rather more extensively from the description. It is in these terms:

“The application concerns a measuring container for alcoholic drinks. The container can be a glass for wine, beer or spirits or alternatively a jug or other vessel. As the description explains, conventional vessels and glasses tend to include an indication of volume, e.g. a line on a glass to denote a pint for beer or 175 ml for wine. Whilst these are of use in dispensing the correct quantity of liquid, they are of little assistance to a consumer who might be interested in monitoring their alcohol intake – for example to avoid health problems and to ensure they do not exceed the legal limit for driving. Medical guidance on safe levels of alcohol consumption are routinely quoted in terms of units of alcohol but the specification outlines that it is not easy for a consumer to convert the quantity of a drink of a particular strength into units of alcohol. To address this problem the containers of the present invention include an indication of the volume of a particular liquid that would contain a given number of units of alcohol. This indication can take the form of a line or mark on the side of the container such that if the container is filled to that level with a particular drink, the container is holding x units of alcohol.”

The hearing officer then referred to the 25 claims in the application in the form as it was before him. He stated that claim 1 was the only independent claim and I did not understand Mrs. Benker to challenge that on this appeal. Claim 1 in these terms:

“A measuring container for measuring the alcohol content of a plurality of alcoholic drinks of different strengths; wherein the container indicates the volumes of the alcoholic drinks of different strengths that would contain a given number of units of alcohol.”

The hearing officer described that the focus of the discussion at the hearing before him was on the requirement that there be an inventive step. The hearing officer directed himself in relation to that requirement by reference to the decision of the Court of Appeal in Pozzoli SpA v BDMO SA [2007] FSR 37. The guidance given by the Court of Appeal in Pozzoli is well known, but in order to explain what the hearing officer later went on to decide I will read into this judgment the hearing officer’s own description of the test or steps identified in the Pozzoli case. He said this:

“The Pozzoli test comprises the following steps:

(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 hearing officer then referred to a number of matters that were raised in argument by the attorney on behalf of Mrs. Benker. The attorney had stressed that, in his approach, one should consider the invention as a whole, one should consider what was obvious at the priority date of the suggested invention and that this exercise should be carried out without the benefit of hindsight. Those matters having been raised by the attorney and recorded by the hearing officer, the hearing officer stated that he was in no doubt that a correct application of the Pozzoli test would meet all those concerns.

It can be seen that the Pozzoli test lays down a structured approach to deciding the ultimate question required by section 1(1)(b) of the 1977 Act, that is whether a suggested invention involves an inventive step.

The hearing officer then carefully set about following that structured approach. Step (1)(a) was to identify the notional person skilled in the art. After some discussion, the hearing officer described the matter in this way. He said: “In my view the skilled person is someone interested in making vessels used for measuring liquids”.

On this appeal Mrs. Benker does not seriously challenge the identification of the skilled person in that way. She did at one time in her submissions suggest that one might have chosen a more focused description of the skilled person by reference to a person who was interested in making vessels used for measuring liquids, not just in general but for the purpose of determining the alcoholic content in a particular alcoholic drink. As was pointed out by Mr. Campbell, that definition of the skilled person was likely to be less favourable to the way in which Mrs. Benker chose to put her case as compared with the identification settled upon by the hearing officer. At any rate, in my judgment the definition or identification selected by the hearing officer is not open to any real challenge on this appeal.

The hearing officer then considered step (1)(b), which required him to identify the relevant common general knowledge of the person skilled in the art. The hearing officer directed himself in relation to a number of matters. Mrs. Benker’s attorney had put forward a number of points with which the hearing officer entirely agreed. In particular the hearing officer directed himself that the skilled person was not necessarily aware of everything that has ever been disclosed in the relevant field. Common general knowledge of such a person does not necessarily extend to the contents of every patent specification that has ever been published. As I understand it, there was no challenge to what the hearing officer said in those respects. He next sought to identify, pursuant to step 2 of Pozzoli, the inventive concept behind the application in this case. He described that in his own words in these terms:

“… the inventive concept in claim 1 is the provision of a measuring container for measuring the alcohol content of a plurality of alcoholic drinks of different strengths which includes indicators of the volumes of different strength alcoholic beverages that would contain a given number of units of alcohol.”

Again there was no challenge to that way of describing the matter.

The third step pursuant to the Pozzoli test required the hearing officer to identify what, if any, differences existed between the matter cited as forming part of the state of the art and the inventive concept of the claim put forward by Mrs. Benker. I have already referred to the fact that the examining officer had referred to three citations of prior art, which I have described by use of the names Giroux, Christiaens and Holloway. The hearing officer then attended to those three citations in some detail. In the course of the hearing this morning, Mrs. Benker and Mr. Campbell have both taken me to the three citations and have drawn attention to, and indeed emphasised, a number of features of the citations. It is not I think necessary for the purpose of this judgment for me to read into it everything that was said by the hearing officer in relation to the detailed matters disclosed by the three citations. Having examined the citations myself, it appears to me that what the hearing officer said about those matters is accurate. Accordingly, I can attempt a summary of these detailed matters by referring to parts only of what the hearing officer said in his decision.

In relation to the Holloway citation he said this:

“… the difference between the invention in present claim 1 and the arrangements disclosed in Holloway is that the vessel in present claim 1 provides the alcohol content information for a plurality of drinks of different strengths whereas the Holloway vessel is specific to one particular strength drink.”

In relation to Giroux the hearing officer said this:

“… the difference between this disclosure in Giroux and the invention presently claimed is that in Giroux the alcohol content is indicated in grams of alcohol rather than ‘standard’ units of alcohol in present claim 1.”

Finally, in relation to Christiaens, the hearing officer said this:

“… the difference between the Christiaens device and that of present claim 1 is the unit in which the alcohol content is expressed.”

The hearing officer then addressed the fourth and final step identified in Pozzoli. The hearing officer repeated the description of the step which he had earlier given. To help him decide the answer to this question, the hearing officer put the question in two alternative ways. The first way he put it was as follows:

“… the question becomes is there any an inventive step in expressing alcohol content using a different unit?”

He was there referring to the fact that in the application before him the unit was a unit of alcohol rather than the measurement being by reference to some other unit or measure. The second way in which the hearing officer formulated the question was as follows:

“The question then becomes is it obvious to provide more than one scale of the sort disclosed in Holloway on the same vessel?”

It can be seen that in putting the questions that way the first way of approaching the matter was to consider the inventive concept of Mrs. Benker’s claim by reference to Christiaens and Giroux, whereas the second way of putting the question was to consider the inventive concept of Mrs. Benker’s claim by reference to Holloway.

The hearing officer set out detailed reasoning as to how he approached the two questions he had posed for himself and the answer to which that reasoning led him. The reasoning is detailed. I will not read it all, but I will read what I think are the principal parts of it. In paragraph 27 of his decision he sought to answer the first question which he had posed. He said this:

“I think it is entirely reasonable to expect that seeking a solution to the problem of providing information in a more understandable form than is done in either the Christiaens (the acknowledged prior art) or Giroux devices, the skilled man would become aware of the Holloway document. I have no doubt that its relevance would be immediately apparent to him and he would give it serious consideration. I do not consider that he would need to exercise any degree of invention to replace the units of measure employed in either of those documents with the ‘standard drink’ unit employed in Holloway. In arguing against this, Mr. White [that is Mrs. Benker’s attorney] suggested that if this were an obvious thing to do, why had no one previously use the familiar ‘unit of alcohol’ measure on a vessel in the way proposed in claim 1. Holloway of course shows that to be a flawed argument – it was indeed known at the priority date of the application to use that particular unit in this way. Thus when viewed in this way I consider that present claim 1 lacks the required inventive step – replacing the unit of alcohol indicated in either Christiaens or Giroux with a different one also known in the field of the invention does not require any degree of invention.”

That was the hearing officer’s conclusion in relation to the first question which he had posed for himself. He then turned to the second way he had put the question. He said this, and I will read selectively from rather more lengthy reasoning:

“Taking the alternative view of the problem to be solved by claim 1, Holloway is the closest piece of prior art and the problem to be solved is the provision of an indicator that enables the vessel to be used for multiple drinks of different strengths.”

Reading further in the reasoning, he said:

“In seeking a solution to that problem, I consider it entirely reasonable to expect the skilled person to become aware of the Giroux and Christiaens documents.”

I can go from there to a later part of the reason where he said:

“I consider it entirely reasonable to expect that in seeking to address the issue of providing a vessel that can be used to indicate alcohol content of multiple drinks of different strengths the skilled man would become aware of Giroux and Christiaens, would immediately appreciate their relevance and in light of their teachings would not need to exercise any inventive ingenuity to adapt Holloway to include indicators for more than one drink. Moreover, Holloway provides the motivation for looking for such a solution in that it acknowledges a shortcoming in the flexibility of the device it discloses. Thus when taking this second view of the problem to be solved, I do not consider the invention defined in claim 1 involves an inventive step.”

Before I read further from the decision of the hearing officer, I ought to explain that the process of legal reasoning which he has adopted in the citations I have just given involved him starting with Giroux and/or Christiaens and then moving from there to bring in the relevance of Holloway. In the second citation he did a similar exercise starting with Holloway and moving from there to bring in the relevance of Giroux and Christiaens. This process of reasoning appears to me to be the process of reasoning which was identified in the decision of the Court of Appeal in Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd [2009] RPC 23, in particular in the judgment of Jacob LJ at paragraphs 25 to 27. In paragraph 27 Jacob LJ made it clear that even if the person skilled in the art is aware of citation A and is also aware of citation B, what one can derive by putting A and B together may involve the person skilled in his art reacting to the information he has and he can be expected to react so as to put the information together if it is obvious that they can be put together in that way. That appears to me to be the process that the hearing officer embarked upon in the passages which I have read.

Having set about the task that way and expressed those conclusions, his overall conclusion was that the subject matter of the application lacked an inventive step and the application for a patent for the subject matter was refused. It will be remembered that the examiner had raised a further point as potentially arising under section 1(2)(d) of the 1977 Act. The hearing officer indicated he did not consider it necessary to decide that point in this case.

Mrs. Benker has appealed the decision of the hearing officer. Her appellant’s notice was a little out of time but I extended time earlier today for her to rely upon that appellant’s notice. The appellant’s notice contains grounds of appeal. I will seek to summarise the grounds of appeal to bring out the principal points. Mrs. Benker says that the decision in question is based on hindsight, which is impermissible. She also raises the point about section 1(2) (d), but I need not deal with that, at any rate, at this stage. It is then contended that there was not a logical link between the Giroux citation and the Holloway citation. Mrs. Benker makes a number of points about both of those citations, bringing out different features of the application and the grants in those cases. In her grounds of appeal she also refers to the dates of the grants in Christiaens and Giroux, and so on. She raises a separate point about the importance of being able to determine how many units of alcohol are in a particular drink, stressing the utility of the matter which she says is her invention. So those in summary are the essential points which she wishes to raise in relation to the decision of the hearing officer.

I think I can summarise the main thrust of the appeal in this way. Adopting the structured approach in Pozzoli, Mrs. Benker criticises the analysis of the hearing officer as regards what is disclosed by the prior art and further, and most importantly, she joins issue with the hearing officer on his decision as to obviousness, pursuant to the fourth step in the Pozzoli test.

Before reacting to those grounds of appeal I need to mention that the respondent to the appeal has submitted a respondent’s notice seeking to uphold the decision of the hearing officer on additional grounds. The grounds put forward in the respondent’s notice are in these terms:

“The Decision of the Hearing Officer, A. Bartlett, should be upheld on the following different or additional grounds:

(a)

The application in suit lacked any inventive step having regard to each of (i) Christiaens and (ii) Giroux, when each of these documents was read individually and in the light of the common general knowledge.

(b)

The application in suit lacked any inventive step having regard to Holloway, when read individually and in the light of the common general knowledge.

(c)

The application in suit is excluded from patentability as relating to the presentation of information as such.”

Those various grounds in the respondent’s notice are self-explanatory. The third ground seeks to bring forward for a decision, if necessary, the point arising under section 1(2)(d) of the Act. The first and second grounds in the respondent’s notice focus upon a comparison of the prior art taking each citation individually and assessing whether the application in suit involves an inventive step.

Returning to the grounds of appeal, the essential question before the hearing officer, and again raised on this appeal, is whether the subject matter of the application involved an inventive step, as that is described in the statutory provisions, or, putting it another way, was the step taken by Mrs. Benker obvious if one took account of the relevant prior art?

Before discussing that matter further, I remind myself that this is an appeal which is governed by rule 52.11 of the Civil Procedure Rules. Without reading out the full text of that rule, the point is that this appeal should normally be a review of the decision of the hearing officer rather than a hearing afresh of the underlying point in dispute. I also remind myself of what was stated in particular by Lord Hoffmann in Biogen Inc v Medeva plc [1997] RPC 1, 45. The comments I am about to read relate to the approach of an appellate court where the matter has been decided by a lower court and the issue in question is as to obviousness. What Lord Hoffmann said is this (I will omit irrelevant material):

“The question of whether an invention was obvious had been called ‘a kind of jury question (see Jenkins LJ in Allmanna Svenska Elektriska A/B v The Burntisland Shipbuilding Co. Ltd. (1952) 69 RPC 63, 70) and should be treated with appropriate respect by an appellate court.”

Breaking off there, Lord Hoffmann then referred to an earlier case of Benmax v Austin Motor Co. Ltd. as to the attitude of an appellate court to certain findings at first instance. Lord Hoffmann continued:

“The need for appellate caution in reversing the judge’s evaluation of the facts is based upon much more solid grounds than professional courtesy. It is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge’s overall evaluation. It would in my view be wrong to treat Benmax as authorising or requiring an appellate court to undertake a de novo evaluation of the facts in all cases in which no question of the credibility of witnesses is involved. Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge’s evaluation.”

I can immediately comment on that passage by saying that the issue in this case is the issue of obviousness. That raises here no question of principle. It is here a matter of degree and it is a matter which has been considered in detail and decided by the hearing officer.

I go back to the way in which the hearing officer went about his task. He directed himself that he should apply the approach identified by the Court of Appeal in Pozzoli. There has been no criticism on this appeal of the hearing officer adopting that approach. Similarly, as I described when I went through the various steps pursuant to Pozzoli, there has been no criticism, and in my judgment there can be no criticism, of the answers which the hearing officer gave as regards the notional person skilled in the art, the relevant common general knowledge or the inventive concept of the claim in this case. At step 3 the hearing officer had to consider in detail what was disclosed by the earlier citations. He carried out that exercise and in so far as Mrs. Benker criticises some parts of the approach of the hearing officer, I find that those criticisms are not made out. I find that his description of what is disclosed by the citations is even-handed and appropriate. That takes one to the final and critical step as to whether the new feature of the application in suit is something which would have been obvious in the circumstances I have already described.

The hearing officer approached this in two ways. He gave detailed reasons why each way led to the same conclusion. Mrs. Benker says on this appeal that he got the wrong answer. He should have held that the correct answer was that the step in question was not an obvious step, it was an inventive step. She also submits that in answering the question he impermissibly used hindsight. I think that what is meant in that submission by reference to hindsight is it is said the hearing officer knew of the application in suit, knew of the step which Mrs. Benker had taken and with that knowledge came to the conclusion that the step was obvious. Whereas it is said he ought to have put that out of his mind and asked whether the taking of such a step would be obvious if it had not already been taken. If that is a criticism of the hearing officer, I do not accept it. I do not see any sign in his reasoning that he went about his task in the wrong way.

Standing back, it is clear from the authorities that this question of obviousness is a matter of degree and has been described as a jury question. I can find no error of principle in the approach adopted by the hearing officer. In particular I reject the submission that he used hindsight in answering the questions which were before him. In my judgment the conclusion he reached was well within the range of permissible decisions on this question of degree. On that basis the result must be that the appeal should be dismissed.

The point before the hearing officer was a relatively short one. I have of course myself considered the question and if it had been for my decision I would have been in a position to express my view as to the answer that would have appealed to me. My conclusion would have been the same as the hearing officer, but I stress that is not the function of this court on an appeal. I have already discharged that function by holding that there is no permissible ground of challenge to the reasoning of the hearing officer.

That conclusion means that it is unnecessary to approach the matter by reference to the arguments in the respondent’s notice. In particular in relation to the argument that the application in suit merely involves the presentation of information, I do not intend to address that question. I do not regard it as completely straightforward and as it is unnecessary for my decision to deal with it I intend to say no more about it.

The result therefore is that the appeal must be dismissed.