The Federal Court of Appeal has provided additional guidance on the framework for analyzing obviousness. In dismissing an appeal from the Federal Court, the Court of Appeal identified the search for an inventive concept as an “unnecessary satellite debate” and held that a more useful approach would be to construe the claims.

Case:  CIBA Specialty Chemicals Water Treatments Limited v SNF Inc, 2017 FCA 225

Nature of case: Action for a declaration that Canadian Patent 2,515,581 (the 581 Patent) was invalid

Successful party: SNF Inc.

Date of public reasons: November 17, 2017


The 581 Patent relates to processes for treating aqueous waste material from mining operations. The claimed processes involve treating the aqueous waste material with a water-soluble polymer that causes particulate matter in the waste material to aggregate. The processes allow the waste material to be transferred as a liquid, but also allow the particulate matter to solidify upon reaching a deposition area.

SNF Inc.’s action for a declaration of invalidity was brought on the basis of obviousness, anticipation, insufficiency, overbreadth and the presence of false and misleading statements in the application for the patent. The only successful ground of invalidity was obviousness.

Construing Claims Reduces Uncertainty Surrounding the Inventive Concept

As we reported, the Federal Court of Appeal recently addressed whether “inventive concept” was intended to change the definition of obviousness. Justice Pelletier was unwilling to find that the Supreme Court changed substantive law by implication to make inventiveness more or less likely and concluded that the “inventive concept” is not materially different from “the solution taught by the patent,” which has often been treated as synonymous with “what is claimed” or simply “the invention.”

In this case, Justice Pelletier stated that the “inventive concept” remains undefined and the search for it has brought considerable confusion into the law of obviousness. He observed that it may more prudent to avoid the “inventive concept” altogether. As the analysis requires determining the differences 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, construing the claim may be more useful than engaging in an “unnecessary satellite debate” to determine the inventive concept.

Inventive Concept or Claim as Construed to be Compared to the Prior Art

The Court of Appeal also commented on the correct comparison for identification of the differences between the inventive concept (or the claim as construed). Several recent decisions had compared the inventive concept to the common general knowledge; however, the Court of Appeal confirmed that the correct comparison is between the inventive concept (or the claim as construed) and the prior art relied upon by the person alleging obviousness.

Common general knowledge is relevant when deciding whether the difference between the inventive concept (or the claim as construed) and the prior art can be bridged by the skilled person, as the skilled person can have recourse to his or her common general knowledge supplemented by those pieces of prior art that could be discovered by a reasonably diligent search.

Remaining Grounds

The Federal Court of Appeal found that, despite the Federal Court’s error in the articulation and application of the obviousness analysis, it had arrived at the correct conclusion on the question of obviousness and that the claims at issue were invalid on the grounds of obviousness. The Federal Court of Appeal dismissed the appeal without addressing the other grounds of invalidity.

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