Mosaicing

1Unlike the case of novelty, in determining obviousness it is permissible to make a mosaic out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity. (See Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd (1972) RPC 346, p 355 (HL).) However, if the information about the patent involves combining two documents, the separate contents of which are not common general knowledge, carrying out an experiment on one of them will not make an illegitimate mosaic legitimate. (See SmithKline Beecham Plc v Apotex Europe Ltd [2005] FSR 23, paras 96-100 (CA).)

2In Raj Parkash v Mangat Ram Chowdhry (1977) the Division Bench of the Delhi High Court held, on anticipation, that “it had to be proved by the defendants that in some prior publication there is found information about the alleged invention more or less similar to what is claimed by the plaintiff. Mere possibility of such a thing being made is of no consequence. A new invention may consist of a new combination of all integers so as to produce a new or important result or may consist of altogether new integers. (para 22) It set out from the House of Lords in Martin and Biro Swan v H Milwood that “It is not enough, to use the familiar metaphor which has perhaps been run to death, to make a mosaic of prior publications and to say that thus the whole invention has been already disclosed.” (para 22)

3In Bristol-Myers Squibb Holdings Ireland Unlimited Company v BDR Pharmaceuticals International (2020) the Court, summing up the principles on obviousness, held, “Though mosaic of prior art documents may be done in order to claim obviousness, however, in doing so, the party claiming obviousness must be able to demonstrate not only the prior art exists but how the person of ordinary skill in the art would have been led to combine the relevant components from the mosaic of prior art.” It further held that “Though it would be tempting to put together a combination of prior arts but this requires a significant degree of hindsight, both in selection of relevant disclosures from these documents and also in disregarding the irrelevant or unhelpful teachings in them.” (para 36) On the facts it held that “even by mosaicing the relevant documents by an unimaginative man with no inventive capacity they do not lead to the suit patent being obvious.” (para 37)

4In Microsoft Technology Licensing v Assistant Controller of Patents (2024) the Madras High Court recorded from In re Bigio “two separate tests to determine whether a reference qualifies as ‘analogous prior art’- (1) the reference is from the same field of endeavour as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor” (para 40). Applying them, it held that D1 “qualifies as an analogous prior art” (para 41), that “D2 is not analogous prior art and does not constitute a relevant reference in deciding whether the claimed invention lacks inventive step” (para 43), and “that D4 is a non-analogous prior art in the obviousness analysis.” (para 45)