Mishan (T/A Emson) v Hozelock & Ors  EWCA Civ 871
Since Arnold LJ’s elevation to the Court of Appeal in 2019, he and Floyd LJ have heard about 11 cases together, spanning a mixture of areas of law, some patents cases and some not. In the majority of these cases, Floyd LJ (or a third judge) has given the leading judgment with which Arnold LJ has agreed. In those cases where Arnold LJ gave the leading judgment, Floyd LJ has always agreed. However, this changed on 8 July 2020, when the Court of Appeal handed down its judgment in the above appeal. This time Arnold LJ gave the leading judgment (dismissing the appeal against Nugee J’s judgment from first instance (for which see here)) and Floyd LJ strongly disagreed. Henderson LJ (whose background is in competition law rather than patents) had the unenviable task of deciding between these two highly respected patents judges. Whilst clearly conscious of the expertise of the other two members of the panel, he decided to side with the more junior of the two, Arnold LJ, providing clear reasons for doing so. In a nutshell, as discussed further below, the disagreement was about the approach that should be taken to a piece of prior art which was from a totally different field from that of the claimed invention.
At first instance, Emson (as exclusive licensee of UK Patent 2,490,276 and European Patent (UK) 2,657,585: “the Patents”) had brought infringement proceedings against Hozelock. The Patents protected an extendable hose, such as the ”XHose” manufactured by Emson. Emson successfully asserted that Hozelock’s “Superhoze” infringed the Patents; however, Hozelock was successful in its counterclaim to invalidate the Patents which were held to be obvious over a piece of prior art named “McDonald”, which was from the aerospace industry.
The first instance judgment was notable and widely reported, primarily due to the obiter comments about a potentially novelty-destroying prior disclosure by the inventor, Mr Berardi, who had been testing prototypes in his garden in Florida. This interesting aspect of patent law – which on the facts encouraged English patent lawyers to imagine the scenes in Mr Berardi’s garden, with blue skies and presumably a bright green, beautifully watered lawn – had the scope to alter the traditional test for what constitutes a public disclosure. However, this part of the case was only in issue on appeal by way of respondent’s notice, and unfortunately for connoisseurs of patent law, the appeal did not make it to that stage. Rather, the appeal judgment centered on the part of the case which was less likely to conjure up images of Mr Berardi’s Florida garden: the issue of whether Emson’s Patents were obvious over McDonald.
The Patents and the Skilled Person
In short, the patents disclosed a light weight, contractable and kink-resistant garden hose. This hose has an inner and outer tube, where the inner rubber tube expands (lengthways and radially) with incoming water pressure to the width and overall length of the outer nylon tube. The tube then contracts back to its small size on release from the pressurised water.
Notably, this was not the first time that the Patents had been considered by the English Courts. Birss J had held the Patents valid over McDonald in an attack brought by different parties in 2013. However, the attributes of the skilled person were held to be different in that case, based on the differing evidence in the two cases. In the present case, the skilled person had knowledge of technical hoses as well as garden hoses, whereas Birss J’s skilled person was only experienced in garden hoses. Of the four experts who had appeared in the two cases (one on each side for each outing), only one had actual experience in design and manufacture of hoses and therefore knowledge of both technical and garden hoses (a fact described as “remarkable” by Arnold LJ). This was the expert who was favoured by Nugee J at first instance and which therefore led Nugee J to a different conclusion from that of Birss J as to the attributes of the skilled person (and also ultimately the approach to the prior art).
The Prior Art
US Patent Application No. 2003/0000530 (“McDonald”) is titled “Self-elongating oxygen hose for stowable aviation crew oxygen mask”.
The abstract of McDonald describes an expanding hose with an inner and outer tube structure. As stated in the specification, the inventive feature is the space saving, self-elongating hose which axially expands when pressurised. A key factor that gave rise to discussion at appeal was that, although McDonald did become a granted patent in some countries, there was no evidence that McDonald was ever implemented or commercialised.
In following the established 4-step Pozzoli test for obviousness, Nugee J found that the only difference between the prior art and the Patents was that McDonald was not a garden water hose assembly expanded by water but an aerospace hose expanded by air. Nugee J decided that, standing back, it would have been obvious to the skilled hose designer to take the McDonald hose and adapt it for use as a garden water hose: once presented with McDonald, the skilled person would appreciate how it worked, and the adaptations needed were routine.
On appeal, Emson argued that the judge erred in principle as he conducted a hindsight-based analysis and also failed to take commercial success into account when assessing obviousness.
Arnold LJ opened his analysis of whether the judge had erred in relation to hindsight with the statement that, on its face, this appeal seemed unpromising. This was because the judge had made repeated comments about the need to avoid hindsight. Arnold LJ also acknowledged that an aspect of Emson’s argument was slightly more nuanced: that the judge’s reasoning did involve hindsight despite all his attempts to avoid it. Arnold therefore stepped through each of the first instance judge’s findings in relation to McDonald. Two that were particularly relevant were as follows:
- First, that McDonald comes from an entirely separate field (aerospace), and the experts accepted that they would not review patents from this field. Relying on comments from Laddie J in Inhale v Quadrant , Emson submitted that the skilled person would dismiss the document as irrelevant to his work, due to it being from such a distant and unrelated field. This argument was rejected on the basis that, since the skilled person is a designer of hoses in general, even the title of McDonald which includes the words “self-elongating oxygen hose” would lead him to think it might be of interest. Further, relevant elements of the invention in the Patents are placed “up front and exemplified in the embodiments described” in McDonald. Arnold found no error in this approach, stating that the conclusion was one open to Nugee J given that the same hose is frequently used for multiple applications (such as transporting both gases and liquids) and no technical reason was identified as suggesting that McDonald’s hose might be unsuitable for use as a garden hose.
- Another was based on the lack of development in the field of garden hoses: Emson argued that since garden hose design had not changed in many years, the skilled person would be even less likely to make the leap from McDonald. Comparison was made to Dyson v Hoover  where the skilled person’s thinking was “bag-ridden” to the extent they were “blind” to the idea of using a cyclone instead of a bag, or at least prejudiced against it. Here, it was held that a hose designer would immediately have appreciated that McDonald was disclosing a new form of hose, but given there was no comparable evidence of “blindness or prejudice”, Arnold held that it was open to Nugee J to hold that the skilled person would make the necessary leap.
Emson also argued that the skilled person would find McDonald confusing in various different ways, and, for example, that the Judge had cherry-picked the parts of McDonald which support obviousness while ignoring all the inconvenient difficulties with the details, but these arguments were all also dismissed by Arnold LJ.
In the period between the first instance judgment and the appeal, the EPO Opposition Division handed down its decision on one of the Patents, which it found to be inventive over McDonald. Arnold J distinguished this decision on the grounds that the EPO was not faced with precisely the same arguments. Further, the short paragraph in the EPO decision, in his view, did nothing to cast doubt on Nugee J’s detailed reasoning. Indeed, Nugee J’s judgment was excluded from the OD’s assessment.
All of Nugee J’s findings were therefore upheld by Arnold LJ, with whom Henderson LJ agreed. The patent was therefore obvious over McDonald. Nevertheless, both judges were sympathetic to the inventor, Mr Berardi. Henderson LJ went as far as acknowledging that their decision was harsh and potentially even unfair on Berardi. Arnold LJ highlighted, as Nugee J had done, the underlying policy considerations. He accepted that in balancing the monopoly right of the patentee and the public’s right to do something disclosed in the prior art, it is an unfortunate consequence that, as in this instance, clever patents can sometimes be found invalid due to an obscure piece of prior art totally unknown to the inventor.
Dissenting judgment of Floyd LJ
Floyd LJ was clearly more sympathetic to the inventor. He noted the harshness of a situation where an inventor is deprived of his monopoly in order to protect a right in the prior art which would never in fact be exercised. Whilst he acknowledged the policy justification for the rule that any prior art document which the skilled person can access can render a patent obvious, he suggested that the law has found ways of “mitigating against the penal nature of the rule”. Floyd LJ cited Jacob LJ’s comments from Inhale in this respect, that the more distant a prior art document is from the field of the patent, the greater the chance that the skilled person will fail to make the required leap. He indicated that he considered the aerospace field to be so remote, the skilled person would not make that leap. Further, Floyd LJ considered it an “unreality” that the skilled person would seize on an untested proposal from a “very particular and very distant field” when no changes had been made to garden hose design for decades.
Floyd LJ focused heavily on the relatively unknown and non-commercialised McDonald patent application being a “mere paper proposal”, a phrase used by Jacob LJ in the appeal of Grimme v Scott . Since it had not actually been implemented, he argued that McDonald is simply an untested proposal; a description of an idea. The skilled person would therefore be skeptical as to its use and whether it actually worked, and be even less inclined to adapt it to a different field. He thought it was principally this assumption – that McDonald was a real, practical machine – that infected the first instance judge’s mind with hindsight. In turn, Floyd LJ considered that Nugee J glossed over features of McDonald that the skilled person would otherwise have found confusing (such as precisely how the hose expanded and retracted – Floyd LJ “baulked” at the suggestion that all one is doing in taking McDonald’s idea into the field of garden hoses is transposing an application from one field to another; and he thought that it was “redolent” of hindsight that neither expert could fully understand the detail of how McDonald was supposed to work). He concluded that Nugee J had erred in principle in arriving at his finding of obviousness.
As noted above, the Court of Appeal also considered commercial success. Relying on Laddie J’s judgment in Haberman v Jackel  at , Arnold LJ dismissed the arguments quickly on the basis that McDonald was not something that was known to the skilled person. Commercial success could therefore not help to show that the invention was not obvious over McDonald. Floyd LJ and Henderson LJ agreed.
The difference of opinion between Arnold LJ and Floyd LJ shows that hindsight is an ugly subject matter which constantly needs to be grappled with. It is interesting that Arnold J (as he was until last year), was known for his commentary on avoiding hindsight in the instruction of experts (including his criticism of practitioners). Indeed he considered this issue very recently in Fibrogen v Akebia  EWHC 866 (Pat). Yet in this case he has found that there was no error of principle in relation to hindsight.
In this appeal, the majority judgment upholds the application of patent law in relatively strict terms, at the unfortunate expense of a genuinely good idea from an individual in his garden. In future, practitioners might seek to use Floyd LJ’s comments on unknown, “mere paper proposal” ideas (as opposed to real life, worked inventions) as weaker starting points for obviousness attacks, although this may be limited to unusual situations such as this one, where the prior art is from a completely different field.
The case also illustrates how influential the specific expertise of an expert can be in determining the identity of the skilled person, and in turn how the expertise of the skilled person can impact the outcome of a case.
Whatever practitioners think of the outcome, they will be comforted (whilst their clients may be dismayed) to know that even when two highly experienced patent practitioners are faced with exactly the same task and are allowed to review each other’s work, they can come to, and stick with, very different conclusions.
A link to the judgment can be found here.
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It comes as surprise to me that a criterion whether an apparatus was commercialised or not can de determining whether it belongs to the prior art or not. I refer to the sentence “there was no evidence that McDonald was ever implemented or commercialised.”
Patent documents nicely tucked in paper or digital collections are full of items which for one reason or another were never implemented or commercialised. I would claim that what is implemented and commercialised is the top of the iceberg and what has never seen the light of day is the lower part of the same iceberg.
The only way a piece meant to belong to the prior art should actually not belong to the prior art is when its disclosure in not enabling. Being not enabling has nothing to do with implementation or commercialisation.
I have not analysed the decision or Mac Donald, but at a glance there does not seem to be a problem of sufficiency with Mac Donald. So the argument that a person skilled in the art would not look at Mac Donald is not convincing. I would therefore side with Arnold LJ, may be for different reasons, but still.
I have another example: in order not to inject cold air into the lungs of a patient during artificial ventilation, the flexible breathing tube contains a heating spiral wound around it. If in the prior art, a flexible pipe carrying water is equipped with a heating spiral so that the water is tepid or does not even freeze, I would consider that the water pipe is novelty destroying for the breathing tube and vice versa.
I would not think twice whether the breathing tube or water pipe have been really implemented or commercialised. The respective disclosures are enabling, that it is enough.
If the difference lies in the way the end of the breathing tube or of the water pipe are built, or even in the material of the tube/pipe, those differences are most probably irrelevant and cannot justify inventive step. This would be a further reason to side with Arnold LJ.
The discussion here reminds me of a very old decision of a board of appeal of the EPO. It is T 176/84 relating to a pencil sharpener comprising a movable closing so that the shavings would not fall from the box. At the time the board considered that the skilled person would not have looked at the closure system of a money box which also hinders the money falling out of the box.
The discussion was centred on whether the skilled person building a pencil sharpener would be looking at a money box or not.
The decision was heavily commented, some approving it, some not.
This decision was a very early decision as the application was filed in 1980, but I would not think that the same decision would be issued nowadays. At least this decisions would support the dissenting view of Floyd LJ.
Overall, I would stay with Arnold LJ.
This is a great case for international comparisons of obviousness law. At the courts of England, an appeal (as here) on obviousness is a rarity. That is because the fact-finding at the court of first instance is more or less unassailable, and the judge at first instance seldom gets wrong the law that applies to those definitively found facts.
Here is a doubly surprising case. Not only did obviousness go all the way to a fully reasoned Decision of the Court of Appeal but also the two vastly experienced specialist patents judges on the 3-member “Board of Appeal” took directly opposed views on the obviousness question. It fell to the “legal member”, not a specialist patent law judge, to be the “tie-breaker”. How much more evenly balanced a case do you want, dear readers?
And the decisive core issues, what were they? First, hindsight (as flagged up in the post). Second, the definition of the PHOSITA (the person having ordinary skill in the art). What a shame that England doesn’t do obviousness the way the EPO does it, for then these two core issues are easily and predictably handled (thereby saving the market competitors any need go anywhere near a Court of Appeal to resolve their dispute).
By now, I have read the majority opinion and the dissent, and am left with the feeling that the crux issue is what the skilled person thinks of the disclosure of D1 “McDonald”. The claim is to a garden water hose but D1 teaches a hose for supply of oxygen to an aircraft pilot. So just what do garden hose designers make of patent publications of oxygen hoses for aircraft?
The common technical problem was how to save space. The solution was pretty much the same. So why wouldn’t the skilled garden hose person seize upon the teaching of D1, to solve the instant problem, and thereby end up with the claimed feature combination?
Why? Because space-saving with garden hoses is a very different problem from that with oxygen hoses in aircraft.
With garden hoses, the need for space-saving arises AFTER one has watered the garden. Conversely, after the oxygen hoses in aircraft have deployed, there is no need for any space-saving. Let them dangle, after the aircraft has landed and the occupants have disembarked. Who cares how much space the hoses occupy. They are going to be replaced with new ones anyway. The ONLY time that space-saving is of any interest is BEFORE the one-time use, in emergency, when the oxygen masks deploy.
Why is all this relevant? It goes to the assessment of D1’s teaching, by a reader who is a garden hose designer. The judges here supposed that deployment of the D1 hose is reversible: as soon as the above-atmospheric pressure inside the hose is relieved, the D1 hose will shrink back to its original length. Intuitively, I doubt that. The laminated wall of the D1 hose is, I think, NOT like a child’s party balloon. Once the thing has been inflated up to its working full length I think it will stay lengthy even after the excess pressure inside it is released. Why? Because the work needed to re-fold. to re-pleat, the outer lamination of the hose wall is, for me, intuitively greater than the work needed to un-pleat it up to its full working length. You can pull pleats out of a carpet easy enough. Is it just as easy to put pleats back in? My intuition tells me that it isn’t. For EVERY engineer, it is commonplace that materials are stronger in compression than in tension. If you doubt me just ask any civil engineer.
So my suggestion is that this asymmetry is all that is needed to disqualify the line of reasoning that D1 rendered the claimed subject matter obvious.
But if it wasn’t pleaded, the judges can’t use it to deny the obviousness attack. Hey ho.
PS. Queston to Attentive. Under EPO-PSA, do you start with McDonald or with a garden hose document? If you start with a garden hose and posit as the OTP the problem of how to stow away the hose in minimum space, after use, does McDonald render the claim obvious?
I just scanned “McDonald” and at the end of the description it states:
“Furthermore, given that the hose is secured to a connector within the box 16, after use the hose will “retract” itself and the oxygen mask back into the box 16. This aids significantly in restowage, since the hose does not require the extent of gathering and coiling typical of conventional hose assemblies.”
So, unless hidden somewhere in the description there is a contradiction, McDonald addresses the re-stowage in the same way. After all, it is not a mask for passengers, rather for crew members. AFAIK crew members would don the mask preemptively in certain situations.
Regarding the re-folding: it seems to work, using an elastic(?) outer garment (after all, the garden hoses are sold) so I would assume the same is true for McDonald.
Therefore, to me the decision hinges on 2 questions: 1) Garden hose designer or hose designer? 2) If garden hose designer: where would he look for solutions?
Dear Max Drei,
Irrespective of the problem-solution-approach, case law of the boards of appeal of the EPO has devised a much larger notion of the prior art to be taken into account when assessing inventive step
It is possible to distinguish the following aspects
– S specific field
– N neighbouring fields
– G general fields
For instance, in T 176/84, OJ 1986, 50, it was held that when examining for inventive step, a person skilled in the art would as well as considering the state of the art in
– the specific technical field of the application,
– look for suggestions in neighbouring fields
– or a broader general technical field
if the same or similar problems arose, and if he could be expected to be aware of such general fields. This would more side with Arnold LJ than with Floyd LJ..
A far as the person skilled in the art is concerned, it is interesting to look at all the decisions quoted in the Guidelines G-VII, 3. All those decisions go back to the early days of the EPO, well before the boards invented the problem-solution-approach.
The definition of the person skilled in art is also independent whether or not the problem-solution-approach is used in order to assess inventive step..
There is no absolute need to abide by the problem-and-solution-approach, but only those few decisions could help in defining the prior art to be taken into account and in defining the person skilled in the art.
Dear Max Drei,
The closest prior art can only be a water hose. Starting with an aerospace hose would be blatant hindsight.
In the light of what I have said with respect to the breathing tube an the water pipe both having a heating spiral, I would still side with Arnold LJ, even knowing T 176/84. The fluid transiting through the tube is irrelevant and cannot justify an inventive step.
Is it just me, or is the discussion of “commercial success” strange?
Has anyone ever considered the commercial success of a piece of prior art? How would you actually determine it – in most cases the public has no way of knowing whether a disclosed teaching is actually used, even less whether it is used with commercial success.
In very rare cases the commercial success of an application might be indicative of non-obviousness. But of course the success might be due to marketing or pure coincidence…
Two excellent comments from Fragender and another good one from Attentive really do tee up the obviousness question quite nicely. I should have found the para in McDonald and should also have grasped the point that re-stowing is a factor in the pilot’s cabin even if it isn’t where the passengers sit.
First, we must remember to do obviousness objectively, through the eyes of the notional skilled person, an entity with attributes not shared by any real person. Whether a “real life” search of the literature would have resulted in McDonald appearing in the list of documents found is (I think) irrelevant.
So, OK, let’s start from a garden hose disclosure and posing the OTP (compact stowage after use) what impression on the skilled person does McDonald’s hose teaching make, of how to achieve good stowability?
At the EPO, the OD maintained the patent. Perhaps Floyd LJ was striving for consistency with the EPO.
But wait. Opponent has appealed. TBA Rapporteur, I wonder, are you following this thread?
And meanwhile, I don’t know how to decide whether two fields are “neighbouring”. Will Attentive offer any thoughts on whether designing the wall structure of an oxygen hose for a pilot is a field “neighbouring” designing the wall structure of a water hose for his garden?
Water hoses certainly belong to a field remote from aerospace hoses, particularly when considering that the aerospace hose is disclosed in the prior art only as a component of a mask. Therefore it makes sense to relate the closest prior art and the skilled person to the field of water garden hoses.
It is noteworthy though that the initial wording of the claims referred to “hose assembly” and did not specify that the fluid was water. The limitation to a water hose was added during examination to overcome the objections based on the prior art. In addition, the presentation of the prior art in the introduction of the patent includes a document in which the fluid is air, not water.
The position of the patentee would perhaps have been stronger if the invention had been defined as a water hose from the outset.
That being said, I agree with the critical comments regarding the attention given to the (lack of)commercial use of the prior art, when the prior art belongs to a differet field.
Dear Max Drei,
I do maintain my point whereby I might slightly alter the sentence “if the same or similar problems arose, and if he could be expected to be aware of such general fields” in “if the same or similar problems arose, and if he could be expected to be aware of such fields”.
The comments introducing class F 16L clarify that
– “pipe” means a conduit of closed cross-section, which is specially adapted to convey fluids, materials or objects;
– “hose” means a pipe, as defined above, which has flexibility as an essential characteristic.
The class F 16L11/00 relates to hoses, i.e. flexible pipes irrespective of the fluid passing the hose. As far as the pipe is concerned it appears irrelevant whether air or water transits through it. See my previous comment on the hose with a heating spiral.
A look in Espacenet shows that US 2003/0000530 has received the following classification units.
International: A62B18/08; A62B25/00; A62B7/14; A62B9/04; (IPC1-7): A61M16/00; A62B18/02; A62B7/00
Cooperative: A62B18/08 (EP); A62B25/005 (EP); A62B7/14 (EP); F16L11/12 (EP)
The International classification appears to stem from the US and since the application is primarily about a breathing apparatus for airplane crews, the classification in A 61B or A61M appears justified.
As far as the cooperative classification is concerned, the EPO has also classified the item in F 16L 11, which is also correct.
The question whether the person skilled in the art would have looked for Mac Donald appears then to be moot.
After this quick query in Espacenet, I am even more in favour of the majority decision.
The decision of the OD deals at length with a possible prior use by the inventor, and sides with Floyd LJ when it comes to the possible combination of the CPA with D3. For the OD, the person skilled in the art would never take into account Mac Donald as the domains are too different.
In view of the class given by the EPO itself, I beg to disagree.
The field of garden hoses is clearly remote from that of aerospace hoses, especially considering that aerospace hoses are only a component of oxygen masks, so that the field of aerospace hoses does not really exist. Thus It makes sense to relate the closest prior art and the skilled person to the field of garden hoses.
It is worth noting though the initial wording of the claims had not recited the limitation to a garden hose and to water, it was directed to a “hose assembly” and the nature of the “fluid” was not specified. In addition, the presentation of the prior art in the introduction of the patent included a document in which the fluid was “air”.
The position of the patentee could perhaps have been stronger had the field of use been included in the claims from the outset.
As you point out, Francis, the application as filed announced the technical field as hoses for fluids. In the section under the sub-title “Summary of the Invention” I could find no restriction to water or garden. The OTP is not peculiar to garden water hoses.
The situation reminds me of those chemical cases in which the application as filed announces that a class of molecules solves the technical problem. Then the EPO finds novelty-destroying art within that class so Applicant, to get novelty, narrows the claim to a narrow selection within that class. But what about inventive step? In the application as filed, it was presented that all molecules in the class solve the problem. But with the narrowing, it becomes necessary to explain to the OD how the selected molecules solve a modified problem, which those problem-solving molecules which are within the originally-claimed class but nevertheless outside the selection do not solve. Often, this is not a happy position for the Applicant.
Dear Mr Hagel,
It is not for no reason that the classification unit F 01L11 deals with hoses in general and does not provide separate sections according to the fluid transiting through the hose.
Even if the claims would have originally been limited to water hoses, the patentee would not have had a stronger stance.
In that he envisaged himself other uses as just water hoses, shows that it is acceptable to also take into account hoses not only carrying water.
Most of the hoses disclosed as background art in the introductory part of the original description and in the patent do not relate to water carrying hoses.
it is a pity that the during the supplementary European search Mac Donald was not found as it bears the same classification unit, F 16L 11/12 as the patent.
Dear Attentive Observer,
Thanks for your insights on the classification. I do not quite agree that this should be a controlling factor. What I think should be the prevailing consideration is whether a hose disclosed as a component in an oxygen mask could be considered by a person skilled in the field of garden hoses, taking into account the specific problems pertaining to water garden hoses. This seems far-fetched. The patentee’s representative has provided arguments during the prosecution which I find persuasive (large length, storage conditions, kinking prevention). However, some of the statements in the patent specification itself may run counter to this stance. For example,  states that “All patents and publications mentioned in this
specification are indicative of the levels of those skilled in the art to which the invention pertains.” and some of those patents relate to air hoses. If this is followed, the skilled person could arguably be defined as knowledgeable in all kinds of hoses regardless of their field of use and of the fluid intended to be flowed.
The Opposition Division of the EPO has upheld the patent and an appeal has recently been lodged, so it will be interesting to monitor how the BOA will handle the issues.
I cannot add anything to this interesting discussion, but I come here to thank you all for sharing your thoughts. I learn a lot every time I read the post and comments.
Once again, good stuff from Attentive, this time on fixing the relevant technical field. Spurred on by EQE Student (BTW do not belittle yourself with “mere”. You are starting in this profession later than me but I hope you will get further along the path than my high point)
Suppose the inventor/Applicant/patent attorney drafter had got a patentability search done prior to filing, and had found McDonald. What next? If I were being paid to do the drafting, I would then make it my business to confect a story of problem addressed, and problem solved, in the specific field of garden water hoses, and draft my patent application around that. Close conferring and careful discussion with my client, all the while, would be imperative.
How about this, for example.
Garden hoses are of substantial length, anything up to 100m or so. If their free end is not tightly held, high pressure water issuing from that end can cause the hose to lash around uncontrollably. What is needed is a hose that will expand, lengthwise, but in a controlled way, from its short storage disposition to its full-length working disposition. Water, being incompressible can expand the length gradually, if the inflow of water at the supply end is controlled or if water is controllably released by a manually-operated fluid bleed valve at the free end, during the hose length expansion phase.
Then the way is free to claim the invention and swat away McDonald because i) its remote from the field of endeavour and anyway ii) it does not address the problem, peculiar to garden hoses, solved by the claim in suit.
Remember, for the sake of objective assessment of patentability, the skilled person is blessed with the knowledge given by an exhaustive patentability search. Ideally, the drafter is too.
But, Attentive, you will surely have a counter-argument, or at least a further thought. I hope so, and if so, I hope you will share it with us here.
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