Newco Tank Corp. v. Attorney General of Canada, 2014 FC 287

This was an appeal of a decision of a Re-Examination Board cancelling three claims of Newco Tank Corp.’s (“Newco”) Canadian Patent No. 2,421,384 (the “ ‘384 Patent”). On appeal, Newco sought an order cancelling the Certificate of the Board confirming the patentability of the subject claims, or in the alternative, an order returning the ‘384 Patent to the Board for a new decision to redetermine the issue of obviousness.

The ‘384 Patent issued on December 15, 2009,  and on October 4, 2011, the Commissioner wrote to Newco to inform it that a re-examination of the ‘384 Patent had been requested. The requester had brought to the Board’s attention 11 U.S. patents and asked that the subject claims be disallowed. The Board ultimately found that the subject claims were novel, but rejected them as being obvious in view of certain of the U.S. patents.

On appeal, the Court considered five (5) issues, including certain questions related to the test for obviousness: (1) Was the Board’s selection of the POSITA reasonable? (2) Was the Board’s identification of the POSITA’s skill level reasonable? (3) Did the Board unreasonably base the decision on its perspective and not that of the POSITA? (4) Did the Board unreasonably conclude that the problem of inefficient heating formed part of the common general knowledge and prior art? and (5) Did the Board act unreasonably in applying the ‘obvious to try’ test?

With respect to the first two issues, the Court deferred to the Board’s expertise and found that its decisions were reasonable. With respect to the third issue, the Court noted that this argument was “unfounded” and amounted to a “complaint about the wording chosen by the Board to express its reasons for decision”. Reading the decision as  a whole, the Court concluded that the Board did not substitute its own perspective on the matter  for that of the notional skilled person, despite the Board’s use of words such as “we see…” and “our opinion…”. With respect to the fourth issue, Newco argued that the ‘problem’ statement (i.e. a solution to the inefficient heating method) was clearly presented as part of the invention rather than as part of the background; and as such, the Board based its rejection on an incorrect assumption that the ‘inefficient method’ was part of the prior art and common general knowledge. However, the Court concluded that it was reasonable for  the Board to consider the information found in the patent (i.e. under the “Summary of the Invention” heading) to be part of the background knowledge 
which the skilled person would have. With respect to the final issue, the Court found that the ‘obvious to try’ test was neither required nor used by the Board.

The Court held that Newco failed to meet its burden of establishing that the Board’s decision was unreasonable; the Court found “no palpable and overriding error”. The appeal was dismissed with costs on the normal scale.