THE SUPREME COURT OF APPEAL OF SOUTH AFRICA

JUDGMENT
Case No: 742/10

In the matter between:

AUSPLOW (PTY) LTD

Appellant
and
NORTHPARK TRADING 3 (PTY) LTD

First Respondent
THE REGISTRAR OF PATENTS

Second Respondent
MARAIS ENGINEERING (PTY) LTD

Third Respondent
MARAIS STEYN

Fourth Respondent

Neutral citation:  Ausplow v Northpark Trading (742/10) [2011] ZASCA 123 (7
September 2011)

Coram:
Harms AP, Ponnan, Snyders and Malan JJA and Plasket AJA
Heard:
18 August 2011
Delivered:
07 September 2011
Summary:  Patents – application to amend to cure invalidity - obviousness

___________________________________________________________________
ORDER
___________________________________________________________________

On appeal from: Court of the Commissioner of Patents (Murphy J sitting as court of
first instance):
A.
The appeal is upheld with costs (jointly and severally against the first, third
and fourth respondents), including the costs of two counsel.
B.
Paragraphs 3, 4 and 5 of the order of the Court of the Commissioner of
Patents are set aside and replaced with the following:
‗3 The application to amend the specification of Patent ZA 95/0812 is granted.
4 The provisional order of revocation lapses.
5 The parties are to pay their own costs.‘
___________________________________________________________________
JUDGMENT
___________________________________________________________________
HARMS AP (PONNAN, SNYDERS and MALAN JJA and PLASKET AJA concurring)
INTRODUCTION
[1] This is an appeal against a judgment by the Commissioner of Patents
(Murphy J) who dismissed an application by the appellant, Ausplow (Pty) Ltd, an
Australian company (the patentee), to amend its patent ZA 95/0812 entitled
‗Improvements in or relating to seeding machinery‘.1 The patent application was filed
on 2 February 1995 and proceeded to grant on 29 November 1995, claiming priority
from an Australian patent application. The appeal is with leave of the learned
commissioner.2

1 Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd & others (95/0812) [2010] ZACCP 5 (30 April
2010).
2 Ausplow Pty Ltd v Northpark Trading 3 (Pty) Ltd & 0thers (95/0812) [2010] ZAGPPHC 135 (5
October 2010).

[2] The background to the application for amendment is this. The patentee
instituted an infringement action against the first respondent, Northpark Trading 3
(Pty) Ltd, alleging infringement of ‗the claims‘ of the patent.3 The patent has 15
claims: claims 2 to 12 are directly or indirectly dependent on claim 1 while claim 13,
although based on claims 1 to 7, contains an added aspect that is, for the purposes
of this judgment, of special importance. Claims 14 and 15 are omnibus claims and
do not require consideration.
[3] Northpark, while denying infringement, counterclaimed for the revocation of
the patent on a number of grounds but for present purposes it is only necessary to
mention two, namely lack of novelty and obviousness. Southwood J, sitting as
Commissioner of Patents, was called upon to consider the issues of validity and
infringement in relation to claim 1 only. He concluded in a detailed judgment that
claim 1 was valid and infringed and issued a certificate of validity.4
[4] Northpark lodged an appeal to this court, which upheld the appeal on the
basis that the invention claimed in claim 1 was obvious.5 The judgment was marked
‗not reportable‘ and I shall refer thereto in the course of this judgment as the SCA
judgment. Because no other claim was in issue it was not necessary for the SCA to
express any view on the issue of infringement. It consequently upheld the
counterclaim and, subject to the following, the patent was revoked:
‗The order [for revocation] is provisional. It will become fully operative if the patentee does
not within one month file notice of an application to amend the patent, or, having filed such
application, withdraws it. If an application as aforesaid is made and not withdrawn, it shall be
decided at the hearing of such application whether or not the revocation order is to be put
into operation.‘

3 The second respondent is the Registrar of Patents who was cited for formal reasons and who did
not take part in the proceedings. The third respondent is Marais Engineering (Pty) Ltd, and the fourth
respondent is Mr Marais Steyn, the sole shareholder of the first and third respondents. The third and
fourth respondents were not party to the initial litigation. How they became involved in the amendment
proceedings is no longer of consequence but appears from Ausplow (Pty) Ltd v Northpark Trading 3
(Pty) Ltd 2009 BIP 37 (C of P).

4 Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd 2007 BIP 1 (C of P).

5 Northpark Trading 3 (Pty) Ltd v Ausplow (Pty) Ltd (278/07) [2008] ZASCA 46; 2008 BIP 14 (SCA).

[5] This order was, according to the judgment, justified on the following basis:
‗We were asked by counsel for the [patentee], if that were to be our finding, to postpone the
order of revocation to enable the patentee to effect amendments to the specification, as
contemplated by s 68 of the Act. The appellant‘s counsel advanced no adequate reason why
that should not be done.‘6
There may have been a misunderstanding between counsel and court because s 68
of the Patents Act 57 of 1978 could not underpin the eventual order.7 For s 68 to
have had application the SCA should, in addition, have found one or other claim
valid and infringed, something the court did not consider or hold.
[6] The reference to s 68 gave rise to a number of disputes, futile litigation and
unnecessary side issues, all mentioned in the judgment of Murphy J. It is not
necessary to revisit them because the answer appears to me to be as follows. In
cases where a patent is found to be invalid, whether partially or in the whole, and s
68 does not apply, it is customary for courts to afford the patentee an opportunity to
apply for an amendment which may save the patent. This court has, in the past,
relied on s 61(3) of the Act for justifying such an order: Ensign-Bickford (SA) v AECI
Explosives and Chemicals 1999 (1) SA 70 (SCA) at 84D-E. The provision gives the
commissioner, when dealing with an application for revocation of a patent, a
discretion to ‗decide whether the patent shall be revoked or whether and, if so,
subject to what amendments, if any, of the specification or claims thereof, the patent

6 Para 18.

7 Section 68:
‗Relief for infringement of partially valid specification—Where in any proceedings for infringement of a
patent, the commissioner finds that any claim in the complete specification in respect of which
infringement is alleged, is valid, but that any other claim therein is invalid, the following provisions
shall, notwithstanding anything contained in section 66 (5), apply, namely—
(a)  If a counterclaim for the revocation of the patent has been made in the proceedings on the ground
of the invalidity of any claim in the specification, the commissioner may postpone the operation of any
order issued thereon for such time as may be required to enable the patentee to effect any
amendment of the specification pursuant to the conditions imposed by the commissioner, who may
attach such other condition to any order to be issued on the counterclaim as he may deem fit; and
(b) when the specification has been amended in terms of paragraph (a), the commissioner may,
subject to such order as to costs as he may issue and as to the date from which damages shall be
calculated, grant relief in respect of any claim which had, before the amendment, been found to be
valid and infringed, and in exercising his discretion he may take into consideration the conduct of the
patentee in inserting in the specification those claims which had been found, before amendment, to
be invalid or permitting such claims to remain there.‘

shall be upheld‘. A party counterclaiming for revocation of a patent in terms of s
65(4) ‗applies‘ for all intents and purposes in a prescribed manner for its revocation
(s 61(1)). It is therefore not necessary to rely on the doubtful proposition put forward
by the respondents that the order under consideration could have been made with
reference to an inherent jurisdiction.
[7] If regard is had to the whole of the SCA judgment and not to the quoted
paragraph only, it is in my view clear that the reference to s 68 instead of s 61 was
an error which did not affect the clear language of the order: Firestone SA (Pty) Ltd v
Gentiruco AG 1977 (4) SA 298 (A) at 304D-H.
[8] In the general course of events, if issues of lack of novelty and obviousness
arise, courts as a matter of logic first decide the novelty issue and then obviousness:
Ensign-Bickford (SA) (Pty) Ltd at 80E-F. Furthermore, if courts find that a patent is
invalid on one ground, for instance, on the ground of lack of clarity (ambiguity) or, as
in this case, obviousness, they normally consider the other grounds of invalidity as
well for the sake of not only questions of costs but in relation to the suspension of the
revocation order and the later amendment application: Gentiruco AG at 645. The
court that subsequently has to deal with the amendment application has to know
what the trial or appeal court‘s findings in relation to the other aspects were. The
SCA did neither and this gave rise to an anxious analysis by Murphy J of the SCA
judgment in the light of that of Southwood J in an attempt to understand the scope of
the SCA findings and its reasons for overruling the latter. For reasons that will
become apparent it is not necessary for purposes of this judgment to revisit those
issues.
[9] The factual finding of the SCA that claim 1 in its unamended form is invalid on
the ground of obviousness stands and this judgment proceeds from that premise.
The issue in this case is accordingly whether the application to amend claims 1 and
13 should have been granted by Murphy J. This involves a number of distinct
inquiries: (a) whether the patentee complied with the order of the SCA quoted; (b)
whether the proposed amendments conflict with the provisions of s 51(6) or (7) of the
Act;8 (c) almost invariably, whether the patent as amended will be valid; and (d)

8 Section 51:

whether there are reasons why the court‘s discretion to refuse an amendment that is
otherwise in order should be exercised. It is not disputed that, as far as (a) and (b)
are concerned, the onus of compliance rests on the patentee and that, as far as (c)
is concerned, the onus of continuing invalidity rests on the objector: Water
Renovation (Pty) Ltd v Gold Fields of South Africa Ltd 1994 (2) SA 588 (A) at 593J-
594F. As to (d), the onus rests on the objector to establish the facts that would entitle
the court to refuse the amendment: compare Interfelt Products (Pty) Ltd v Feltex Ltd
1972 (3) SA 335 (T) at 342H-343A.
[10] The argument that the application for amendment had to be made to the
registrar of patents in terms of s 51 and not to the Commissioner was rightly rejected
by Murphy J and it was not argued that he had erred in that regard. There was
otherwise due compliance with the court order. As far as (b) is concerned, the
respondents in two affidavits filed on their behalf and sworn to by Mr Marais Steyn,
who is the managing director of the first and third respondents and who is, in his
personal capacity the fourth respondent, admitted unequivocally that the application
for amendment was not in conflict with the mentioned provisions. In spite of this the
respondents sought to argue in the context of invalidity that the new claims are not
fairly based on the matter disclosed in the specification. The respondents submitted
that they were entitled to do so because this question is a legal issue and not factual
and that the admission was accordingly not binding. Nicholas AJA disposed
comprehensively of an identical argument in Water Renovation (Pty) Ltd at 604J-
608B and the issue need not be revisited. Another submission, which was made in
the heads but not adverted to during argument, was that the patentee had failed to

‗(6)  No amendment of a complete specification which becomes open to public inspection after the
publication of the acceptance of the specification in terms of section 42, whether before or after it so
becomes open to public inspection, shall be allowed if—
(a) the effect of the amendment would be to introduce new matter or matter not in substance
disclosed in the specification before amendment; or
(b) the specification as amended would include any claim not fairly based on matter disclosed in the
specification before amendment.
(7)  No amendment of a complete specification which has become open to public inspection after the
publication of the acceptance of the specification in terms of section 42 shall be allowed if the
specification as amended would include any claim not wholly within the scope of a claim included in
the specification before amendment.‘

provide full reasons for the amendment (as if everyone did not know what they
were). Since the submission was made with reference to a judgment that had been
overruled by this court in Kimberly-Clark of SA (Pty) Ltd (formerly Carlton Paper of
SA (Pty) Ltd) v Proctor & Gamble SA (Pty) Ltd 1998 (4) SA 1 (SCA) no more need
be said about the matter.
[11] The respondents submitted at the outset that Murphy J had exercised a
discretion by refusing the application and that this court is not entitled to interfere
with that exercise except in very limited circumstances. The first point is that the
learned commissioner did not purport to exercise his discretion. He found that the
amendments sought would not cure the invalidity of the patent. If an amendment fails
at hurdles (a) or (b), that is usually the end of the matter. Discretion does not arise.
The same (possibly subject to what van Dijkhorst J said in Deton Engineering (Pty)
Ltd v JP McKelvey 1997 BIP 113) applies at hurdle (c). It is only if that is passed that
the discretion to refuse can arise. Whether a court has a discretion in the strict sense
to refuse an amendment has not yet been decided and need not be decided: Media
Workers Association of SA v Press Corporation of SA Ltd ('Perskor') 1992 (4) SA
791 (A) at 797E-G; Knox D’Arcy Ltd v Jamieson 1996 (4) SA 348 (A) at 360D-362E.
THE INVENTION
[12] As the title of the specification indicates, the invention relates to
improvements to agricultural seeding machinery. For some background: the
conventional steel ploughshare, famously invented by John Deere, tills the soil by
turning it over and thereby cuts furrows for planting. More recently, a no-till farming
method has taken hold. Chisel ploughs in the form of elongated pointed chisels or
sharp prongs (referred to as tines in the specification) are mounted onto a frame
which is drawn behind a tractor. As appears from the prior art, seed planters and
fertilizer dispensers are often attached to the chisel plough sequentially, enabling
ploughing, fertilizing and planting to take place in a single operation.
[13] Under the heading ‗Object of the invention‘ the patentee stated:
‗It has been found in practice that tined seeding machinery and attachments have difficulty
in penetrating soil deeply whilst at the same time maintaining accurate placement of seed
and fertilizer.  Due to the undulating ground conditions nearly always encountered, and with
seeding depth controlled by widely spaced ground wheels, seeding depth cannot be

maintained, often with seed and fertilizer placed together on a hard impenetrable barrier
causing poor seed germination, loss of plant vigour, low yields, poor water infiltration,
waterlogging and fertilizer toxicity and a greater incidence of disease.‘
The object of the invention, the specification states, is to overcome or substantially
ameliorate these disadvantages. Nugent JA gave this description in the SCA
judgment:
‗The machinery is designed for planting seeds in untilled soil. It is essentially a frame that is
dragged behind a tractor on which a series of tools are mounted in a line one behind the
other each performing one of a series of functions. First in line is a tine (or share) that cuts a
slot in the untilled soil. Optionally, a tube might be mounted behind the tine, through which
fertilizer may be deposited in the slot. Behind the tube is a device of one kind or another that
collapses soil into the slot so as to partially fill it, which serves a dual purpose: the collapsed
soil separates the fertilizer (if fertilizer is used) from the seed and avoids the seed being
burnt, and it forms a suitable bed upon which to deposit the seeds. Behind that tool is
another vertically-mounted tube through which seeds are deposited on the bed. And behind
that is a wheel, wider than the slot, which dislodges more soil from the sides of the slot,
covering the seed, and simultaneously tamping it down to ensure that the seed is in good
contact with the surrounding soil.‘
THE PROPOSED AMENDMENT
[14] The patentee did not seek to effect any amendments to the body of the
specification but only to claims 1 and 13. In addition, the omnibus claims are to be
deleted but nothing turns on this. The object of the proposed amendments to claim 1
is to limit its scope through the introduction of an integer of the original claim 13 into
claim 1. The amended claim 13 is not much different.
[15] It is not necessary to quote the original claim 1 because its terms are
apparent from the proposed amended claim 1, which reads as follows (the insertions
are in bold and the deletion is indicated):
‗A seeding assembly to be used with a plough frame supporting at least one plough tine,
said assembly comprising:
(A)  a seeding tube (i) to extend downwardly into a slot formed in a soil layer by the
tine, (ii) said tube having a lower extremity through which seed is delivered into the soil layer;
(B) a closing tool (i) fixed with respect to said lower extremity and having a leading surface
forward thereof relative to the normal direction of travel of the frame over the soil layer, (ii)

said closing tool being aligned in said direction with respect to said lower extremity so that it
engages soil adjacent said slot to dislodge the soil to partly close the slot and provide a seed
bed onto which seed leaving said lower extremity is delivered; and
(C) a first mounting means to attach the tube and closing tool to the frame to permit height
adjustment of the tube and the closing tool with respect to the frame; and
(D) ground engaging means operatively associated with the tube and closing tool to
engage the soil layer to cause said height adjustment; and
(E)    a second mounting means, which is adjustable for adjustably attaching the
ground engaging means to the tube and closing tool thereby enabling said ground
engaging means to effect said height adjustment.’
The numbering of integers has been added for the sake of convenience but is
simpler than that used by the previous courts and by counsel.
[16] The proposed claim 13 is in these terms:
‗In combination,  a plough tine having a lower extremity to which there is attached a digging
blade, a fertilizer tube and a seeding assembly to be used with a plough frame supporting at
least the plough tine, said assembly comprising:
a seeding tube to extend downwardly into a slot formed in a soil layer by the tine,
said tube having a lower extremity through which seed is delivered into the soil layer;
a closing tool fixed with respect to said lower extremity and having a leading surface
forward thereof relative to the normal direction of travel of the frame over the soil layer, said
closing tool being aligned in said direction with respect to said lower extremity so that it
engages soil adjacent said slot to dislodge the soil9 to partly close the slot and provide a
seed bed onto which seed leaving said lower extremity is delivered;
a first mounting means to attach the tube and closing tool to the frame to permit
height adjustment of the tube and the closing tool with respect to the frame;

wherein said first mounting means is adapted to be attached to the tine in order to be
attached to the frame;
ground engaging means operatively associated with the tube and closing tool to
engage the soil layer to cause said height adjustment
wherein the digging blade, fertilizer tube, closing tool, seeding tube and ground

9 The phrase ‗to dislodge the soil‘ was omitted by mistake from the draft contained in the notice of
motion. Since it had always been part of the claim and the patentee did not give notice of any
intention to delete the phrase, the omission is immaterial.

engaging means are aligned in that order in the intended direction of travel;
wherein said digging blade, closing tool and ground engaging means each have an
operative width, with the operative width of said digging blade being narrower than the
operative width of said closing tool and with the operative width of said closing tool being
narrower than the operative width of said ground engaging means;
a second mounting means, which is adjustable  for adjustably attaching the ground
engaging means to the tube and closing tool thereby enabling said ground engaging means
to effect said height adjustment; and
wherein the seeding assembly is directly attached to the tine, so as to be movable
relative thereto to provide said height adjustment.‘
OBJECTIONS TO THE AMENDMENT
[17] The main objections to the amendment are based on continuing obviousness
and, in the alternative, culpable delay and reprehensible conduct. Before dealing
with these it might be convenient to dispose of other allegations concerning
continuing invalidity.
[18] The first is that the invention as illustrated or exemplified cannot be performed
or lead to the advantages and results set out in the complete specification (s
61(1)(d)). This objection is based on the fact that in some countries integer C of
claim 1 of the corresponding claim contains at the end the words ‗and tine‘, reading
‗a first mounting means to attach the tube and closing tool to the frame to permit height
adjustment of the tube and the closing tool with respect to the frame and tine.‘
As a result of the omission of the tine the argument was that the amendment does
not include a limitation which permits height adjustment of the seeding tube and
closing tool relative to the tine but only relative to the frame.  What the argument
ignored is the fact that the plough frame supports the tine and that the first mounting
means attaches the tube and the closing tool with respect to the frame. As the tine is
supported by the frame, height adjustment of the tube and the closing tool with
respect to the frame will result in height adjustment of the tube and closing tool
relative to the tine. Simply put, the tine is attached to the frame and if the frame‘s
height is adjusted so is that of the tine.
[19] Other objections relate to lack of clarity (s 61(1)(f)(i)). A surprising aspect of
the objections under this heading is that what was clear at the time of the

infringement action is no longer clear. Another amazing aspect is that the
respondents‘ expert, Mr Steyn, in his affidavit on behalf of Northpark apparently
understood the claims but when he filed his affidavit on his and the third
respondent‘s behalf some ten months later it all became opaque.
[20] Since patent cases are about construction and not deconstruction of a text it
might be useful to have regard to this statement:10
‗The board adds that the skilled person when considering a claim should rule out
interpretations which are illogical or which do not make technical sense. He should try, with
synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation
of the claim which is technically sensible and takes into account the whole disclosure of the
patent (Article 69 EPC). The patent must be construed by a mind willing to understand not a
mind desirous of misunderstanding.‘
[21] The first issue relates to the preamble of claim 13, which is in these terms:
‗In combination of a plough tine having a lower extremity to which there is attached a digging
blade, a fertilizer tube and a seeding assembly . . . .‘
The claim them proceeds to recite the integers of claim 1. The complaint is that it is
not worded as is the US claim:
‗a plough tine having attached to it a fertilizer tube  and seeding assembly of claim 1, as well
as a digging blade attached to the lower extremity of the tine.‘
I fail to see the difference between the two.
[22] Integer D is about ‗a first mounting means to attach the tube and closing tool
to the frame to permit height adjustment of the tube and the closing tool with respect
to the frame‘. The respondents say that they do not know where to find this mounting
means. The integer is in my view clear. It is a means to attach the tube and closing
tool to the frame in such a manner that they can be adjusted in relation to the frame.
Had there been evidence that the skilled person in the art could not, with reference
to the specification, construct such apparatus an argument of insufficiency could
have been made but not one of lack of clarity.

10 Boards of Appeal of the European Patent Office Case no T 0190/99 - 3.2.4. The statement that a
patent ‗must be read by a mind willing to understand, not by a mind desirous of misunderstanding‘
comes from Lister v Norton Brothers and Co (1886) 3 RPC 199 (Ch D).

[23] The last complaint relates to integer E:
‗a second mounting means, which is adjustable for adjustably attaching the ground engaging
means to the tube and closing tool thereby enabling said ground engaging means to effect
said height adjustment.‘
The case for the respondents is that it is not clear from the wording of this integer
exactly how the second mounting means enables the ground engaging means to
effect the height adjustment. This, too, smacks of an allegation of insufficiency
without evidence to sustain it. The patentee‘s response was that the second
mounting means allows for the attachment of a wheel (the ground engaging means)
to the tube and closing tool in such a manner that the relative position of the wheel to
the tube and closing tool is adjustable; and it is not the mere presence of the wheel
that enables height adjustment but the fact that the wheel is attached to the tube and
closing tool. Respondents‘ counsel did not deal with the response and I do not know
why it is wrong.
OBVIOUSNESS: SOME LEGAL CONCEPTS
[24] As mentioned, Murphy J held that the amendment could not be granted
because it would not cure the invalidity of the patent on the ground of obviousness.
Before dealing with the facts of the case it might be useful to restate some basic
legal principles that appear to have been overlooked and that impact on the case.
[25] As was explained in Roman Roller CC v Speedmark Holdings (Pty) Ltd  1996
(1) SA 405 (A) at 412H-413D, a patent may be granted ‗for any new invention which
involves an inventive step‘ (s 25(1)). (In what follows I am dealing in a simplified
manner with only those provisions that are relevant for this judgment.) A patent may
be revoked on the ground ‗that the invention concerned is not patentable under
section 25‘ (s 61(1)(c) and s 65(4)). There are, accordingly, two relevant
requirements for patentability. The first is that the invention must be new. This
means that the invention does not form part of the prior art (‗the state of the art‘). The
provision requires identity between the claimed invention and the state of the art.
The state of the art ‗comprises all matter (whether a product, a process, information
about either, or anything else) which has been made available to the public (whether
in the Republic or elsewhere) by written or oral description, by use or in any other
way‘ (s 25(6)). If the invention does not from part of the prior art, it is deemed to be
new (s 25(5)).

[26] The second requirement, which is based on the assumption that the invention
is new (an aspect alluded to earlier in this judgment), is that it must involve ‗an
inventive step‘. An invention is ‗deemed to involve an inventive step if it is not
obvious to a person skilled in the art, having regard to any matter which forms,
immediately before the priority date of any claim to the invention, part of the state of
the art‘  at the relevant time (s 25(10)). In other words, the issue is whether the
invention, which differs from the state of the art, has inventive merit.  This means that
the respondents had to prove that the patent as amended was not inventive, ie, ‗that
it was obvious and not due to any inventive ingenuity‘: B-M Group (Pty) Ltd v
Beecham Group Ltd 1980 (4) SA 536 (A) at 557D-E.
[27] The requirement of inventiveness was formulated differently in the repealed
Patents Act 37 of 1952 (s 23(1)(d)). The first difference is that in the past the
inventive step was measured against the ‗common knowledge in the art‘ only and not
against the more formally defined state of the art as in the current Act. This
difference does not impact on the present case.
[28] The second difference is that the 1952 Act simply asked whether the invention
was obvious in that it involved no inventive step and not, as the current Act does,
whether it was not obvious to a person skilled in the art. Against an identical
legislative backdrop, Sir Donald Nicholls VC said the following in Mölnlycke AB v
Proctor & Gamble Ltd [1994] RPC 49 at 112-113:
‗Under the statutory code (which is further confirmed in its completeness by sections 74 and
72) the criterion for deciding whether or not the claimed invention involves an inventive step
is wholly objective. It is an objective criterion defined in statutory terms, that is to say
whether the step was obvious to a person skilled in the art having regard to any matter which
forms part of the state of the art as defined in section 2(2). . . . The statute has laid down
what the criterion is to be: it is a qualitative not a quantitative test. . . .
The Act requires the court to make a finding of fact as to what was, at the priority date,
included in the state of the art and then to find again as a fact whether, having regard to that
state of the art, the alleged inventive step would be obvious to a person skilled in the art.
In applying the statutory criterion and making these findings the court will almost invariably
require the assistance of expert evidence. The primary evidence will be that of properly
qualified expert witnesses who will say whether or not in their opinions the relevant step
would have been obvious to a skilled man having regard to the state of the art. All other

evidence is secondary to that primary evidence. In the past, evidential criteria may have
been useful to help to elucidate the approach of the common law to the question of
inventiveness. Now that there is a statutory definition, evidential criteria do not form part of
the formulation of the question to be decided.‘
[29] This court, in Ensign-Bickford (SA) (Pty) Ltd at 81E-F, quoted the last
paragraph with approval but I believe that the preceding ones are necessary for
context and they, in addition, emphasize that one is concerned with a factual issue.
A court has ‗to find again as a fact whether, having regard to that state of the art, the
alleged inventive step would be obvious to a person skilled in the art‘. This conforms
to what Lord Reid tersely stated in Technograph Printed Circuits Ltd v Mills &
Rockley (Electronics) Ltd [1972] RPC 346 at 362:
‗But the question is not whether it is now obvious to the court (or to the jury) but whether at
the relevant date it would have been obvious to the unimaginative skilled technician.‘
[30] Dealing with the reliance in Ensign-Bickford (SA) (Pty) Ltd on the statement of
the Vice-Chancellor, this court in Schlumberger Logelco Inc v Coflexip 2003 (1) SA
16 (SCA) para 34 said, as far as is relevant for present purpose, this:
‗It is the technical evidence by expert witnesses in respect of the nature of the step claimed
to have been inventive, the state of the art as at the priority date relevant to that step and the
respect or respects in which the step goes beyond or differs from that state of the art, which
constitutes the primary evidence. It is clear from a reading of the Ensign-Bickford case, at
81D-83A, that the Court considered the question of obviousness on that basis. The technical
evidence of the witnesses was considered without any reference to their opinions as to
whether the invention was obvious. Expert witnesses who are either of the opinion that the
invention is obvious or that it is not obvious would almost invariably give the primary
technical evidence. In these circumstances it may sometimes be difficult to avoid them
expressing the conclusion that the step is either obvious or not obvious, but that would do no
harm so long as it is borne in mind that that conclusion is immaterial.‘
[31] The inventive step has often been referred to as a step forward but that term
is misleading. A new analgesic need not be as good as or better than the century-old
Aspirin in order to be inventive. The seeding apparatus of the patent in suit may do
the same as other seeding machines but provided it does it in a sufficiently different
manner it may be inventive: B-M Group (Pty) Ltd at 557A-D.

[32] The question whether an invention is new or inventive is determined with
reference to the invention claimed in each claim and not in relation to the description
of the invention in the body of the specification: compare Netlon Ltd v Pacnet (Pty)
Ltd 1977 (3) SA 840 (A) at 861H-862B; Ensign-Bickford (SA) (Pty) Ltd at 81C-D. A
particular claim may also embody more than one invention in which event the
question would be whether the particular embodiment lacks novelty or inventiveness.
[33] The Act does not require that the inventive step be stated in the body of the
specification or, if stated, that it should have been correctly stated. As was said in
Ensign-Bickford (SA) (Pty) Ltd at 82E-F:
‗Secondly the questions themselves were not properly directed to the invention defined by
the claims. The objection of lack of inventiveness is not an objection to "teaching" in the
body of the specification. It is the claims which must be considered . . .‘
[34] It is useful to quote in this regard from the judgment of Sir Robin Jacob LJ in
Nichia Corp v Argos Ltd [2007] EWCA Civ 741 (19 July 2007) paras 12-16:
‗The structured approach to considering obviousness is well-settled (see per Oliver LJ in
Windsurfing v Tabur Marine [1985] RPC 59 at 73). I recently restated it in Pozzoli [2007]
EWCA Civ 588 at [23]: (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 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?
For present purposes what matters is that this basic formulation does not involve expressly
what the inventor actually did or thought. Nor for that matter what his opponent did or
thought. The inventor may have thought that what he did was little short of, or actually, a
work of genius - that he was a latter day Edison. . . . No matter what it was, the test is not
what he did or thought but whether the step would have been obvious to the man skilled in
the art.
It is quite possible that what the inventor did was, given his particular circumstances, actually
very clever, yet his patent be held invalid for obviousness. . . .
The inventor can say what he thought was clever in his patent, though it is well-settled that
he need not do so – it is not an objection to validity that the patentee has failed to distinguish
what is new from what is old. But whether it actually was inventive depends on the expert

evidence establishing the common general knowledge of the person skilled in the art and the
teaching of the cited prior art.
And there are more reasons why that should be so. A patent is a public document. Any
member of the public ought in principle to be able to make his own assessment of not only
what the monopoly actually is, but whether that monopoly is valid. Obviousness is an
objective question. . . .‘
OBVIOUSNESS: THE FACTS
[35] To understand the factual issues surrounding the obviousness issue it is
necessary to begin with the judgment of Southwood J. He had to consider whether
four patent specifications anticipated claim 1. Two of these require mention. The first
is US patent 4, 726, 304 (Dreyer) and the second US patent 4, 691, 645 (Anderson).
He found that neither anticipated claim 1. The reason why Dreyer did not anticipate,
he held, was that integers A(i) and B(ii) were not disclosed. The reasons why
Anderson did not anticipate are not strictly speaking relevant but I mention Anderson
because it discloses integer A(i).
[36] Against that background Southwood J considered inventiveness. In that
context Northpark relied heavily on US Patent No. 5, 161, 472 (Handy). There was
also a reference to a Soilmaster implement but that has since been lost in the wash
and can be discounted. Northpark‘s case was (both in evidence and in argument)
that, except for one integer, the Handy patent disclosed all the integers of the claim
and that the skilled addressee would have combined integer A(i) from Anderson with
the Handy implement.  Southwood J rejected the argument.
[37] The SCA, as mentioned, did not consider novelty and all assume that it
thereby confirmed the finding of Southwood J in that regard. It differed, however,
from Southwood J‘s interpretation of Dreyer by holding (in the course of its
determination of the state of the art for purposes of obviousness) that Dreyer did
indeed disclose integer B(ii). The SCA then combined Dreyer and Anderson to
conclude that claim 1 lacked an inventive step.
[38] Building on that finding, the respondents‘ case is that the claims in their
amended form lack subject matter because they are obvious through a mosaicing of
Dreyer and Anderson. (On the subject of mosaicing: Simon Thorley et al Terrell on

the Law of Patents 16 ed para 7-62.) This presupposes, on the respondents‘
argument, that the added integer (E) ‗a second mounting means, which is adjustable
for adjustably attaching the ground engaging means to the tube and closing tool
thereby enabling said ground engaging means to effect said height adjustment‘ was
disclosed in Dreyer. It is fortunately not necessary to analyze Dreyer because
respondents‘ counsel, during argument, fairly conceded that this integer was not
disclosed by Dreyer. And it was not suggested that the integer could be found
elsewhere in the prior art.
[39] That leaves for consideration the issue of inventiveness: did the respondents
show that the invention claimed was not inventive? It should be borne in mind that
we are dealing with a mechanical apparatus and the invention claimed is the
combination of a number of elements that interact in a particular manner. In De
Beers Industrial Diamond Division (Pty) Ltd v Ishizuka 1980 (2) SA 191 (T) at 201C-
E, Nicholas J quoted with approval this statement from Albert Wood and Amicolite v
Gowshall Ltd (1937) 54 RPC 37 at 40:
'The dissection of a combination into its constituent elements and the examination of each
element in order to see whether its use was obvious or not is, in our view, a method which
ought to be applied with great caution since it tends to obscure the fact that the invention
claimed is the combination. Moreover this method also tends to obscure the fact that the
conception of the combination is what normally governs and precedes the selection of the
elements of which it is composed rather than that the obviousness or otherwise of each
active selection must in general be examined in the light of this consideration. The real and
ultimate question is: Is the combination obvious or not?'
[40] In Technograph Printed Circuits at 362, Lord Diplock said this:
‗Once an invention has been made it is generally possible to postulate a combination of
steps by which the inventor might have arrived at the invention that he claims in his
specification if he had started from something that was already known. But it is only because
the invention has been made and has proved successful that it is possible to postulate from
what starting point and by what particular combination of steps the inventor could have
arrived at his invention. It may be that taken in isolation none of the steps which it is now
possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is
improbable that this reconstruction a posteriori represents the mental process by which the
inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in

perceiving that the final result which it was the object of the inventor to achieve was
attainable from the particular starting point and in his selection of the particular combination
of steps which would lead to that result.‘
[41] The inventor‘s (Mr Ryan‘s) evidence that the invention solved the problems
set out under the quoted ‗Background‘ was met by what fairly may be called a bald
denial by Mr Steyn who was in any event not an agricultural engineer at the effective
date of the patent. Mr Ryan, furthermore, testified that the claimed combination
overcame a number of deficiencies of the prior art. In particular he mentioned the
following: The failure to create a deep root bed; the failure to create a compacted
seed bed directly above the root bed; the failure to create the seed bed at a relatively
constant depth; the failure to effect precision placement of the seed on the seed bed
directly above the root bed; the failure to effect closing of the seed with soil of a
relatively constant depth; the failure to compact the soil around the seed; the failure
to allow for independence in the working depth of the tine and the depth at which the
seed is placed; the failure to allow adjustment of the seeding depth independently
from the working depth of the tine; having broad faced working tools which increase
drag and caused wide and unnecessary soil disruption; and the failure to create a
deep root bed, a seed bed, the precision placement of seed and the closing of the
seed with soil which is compacted around the seed, at a relatively constant depth in
a single operation.
[42]  This evidence, too, was met with a bald denial from Mr Steyn. Murphy J
disregarded the evidence on two main bases. The first was ‗the important point that
many of the advantages Ausplow claims the invention has over the prior art are not
referred to in the specification‘. And the second was that ‗to read these advantages
into the specification would be to introduce new matter not in substance disclosed in
the specification before amendment‘. I have already pointed out the first point is
legally unsound. As Lord Hoffmann said in Conor Medsystems Inc v Angiotech
Pharmaceuticals Inc & Ors [2008] UKHL 49 para 19:
‗In my opinion, however, the invention is the product specified in a claim and the patentee is
entitled to have the question of obviousness determined by reference to his claim and not to
some vague paraphrase based upon the extent of his disclosure in the description.‘
A similar statement appears in Unilever v Chefaro [1994] RPC 567 at 580:

‗It is the inventive concept of the claim in question which must be considered, not some
generalised concept to be derived from the specification as a whole.‘
[43] The second is based, I fear, on a misconception. The objection to new matter
in the specification arises when an application for amendment is made in order to
introduce that matter into the specification (s 59(6)). The patentee did not seek to
amend the specification by introducing this evidence. The provision has nothing to
do with evidence in support of the inventiveness of a claimed invention. As was said
in McKelvey v Deton Engineeering (Pty) Ltd 1998 (1) SA 374 (SCA) at 379D-E:
‗The Act draws a clear distinction between ―matter‖ and the claimed invention. ―Matter‖, in
general, refers to the disclosure in the body of the specification that can support a claim,
whether or not there is a claim based thereon.‘
(Compare eg Bonzel v Intervention Ltd [1991] RPC 553.)
[44] The leaned commissioner also relied on part of the reasoning of the SCA
when it had to consider whether the invention claimed in the unamended claim 1 was
inventive. That reasoning cannot simply be made applicable to another invention
claimed in a different claim. The learned commissioner, I respectfully suggest,
should have decided the case on the facts before him and not with reference to the
reasoning of the SCA which was directed at something different.
[45] I therefore conclude that the respondents have failed to establish that the
invention claimed in the amended claims 1 and 13 did not involve an inventive step
because it was obvious to a person skilled in the art.
DISCRETION
[46] The respondents asked us, in the event of having found that the amendment
will cure the invalidity, to refuse the application in the exercise of this court‘s
discretion. The first ground advanced was the patentee‘s alleged culpable delay in
applying for the amendment. The argument was based on the fact that the patentee
had known of the Dreyer prior art and that it delayed to effect an amendment until
after the adverse judgment of the SCA. There are many answers to the point but
what follows suffices. Dreyer was quoted as an anticipation, which it is not. As far as
obviousness is concerned, not even Northpark had thought that it could be the basis
of a finding of obviousness. I have already indicated that its case before Southwood

J was based on a mosaic of Handy and Anderson. The SCA, however, based its
judgment on a mosaic of Dreyer and Anderson. How that should have been apparent
to the patentee before the SCA judgment has not been explained.
[47] One can dispose on more or less the same basis of the allegation that the
patentee was guilty of reprehensible conduct because, being aware of the invalidity
of the patent in the light of Dreyer, it sought to enforce its patent rights. Once again,
the premise on which the argument is based has not been established. It is also not
possible to dispose glibly of the fact that Southwood J had held in a fully reasoned
judgment that the patent was good. If he thought so after a lengthy trial it is difficult to
understand why the patentee should have thought differently, especially since it took
legal advice before it commenced litigation.
[48] The respondents did not ask us to consider the grant of the amendment
subject to conditions. The reason may be because Northpark is a property owning
company and the third and fourth respondents allege that they do not infringe the
amended claims. It would, accordingly, be wrong to impose conditions of which the
patentee had not been forewarned.
CONCLUSION
[49] This means that the appeal must be upheld to the extent that the order of the
court below dismissed the application to amend the specification and finally revoked
the patent. The orders not appealed against stand. Because of the partial success of
the respective parties in the court below the appropriate order would be that the
parties pay their own costs in that court. The appellant is entitled to its cost of appeal
including the costs of two counsel.
ORDER
A.  The appeal is upheld with costs (jointly and severally against the first, third and
fourth respondents), including the costs of two counsel.
B. Paragraphs 3, 4 and 5 of the order of the Court of the Commissioner of Patents
are set aside and replaced with the following:
‗3 The application to amend the specification of Patent ZA 95/0812 is granted.

4 The provisional order of revocation lapses.
5 The parties are to pay their own costs.‘

_____________________
L T C Harms
Acting President

APPEARANCES
For Appellant:

P Ginsburg SC (with him D R Harms)

Instructed by:

Adams & Adams, Pretoria

Lovius Block Attorneys, Bloemfontein

For Respondent:

C J vd Westhuizen SC (with him R B Engela)
DR Gerntholtz Inc, Pretoria

McIntyre & Van der Post, Bloemfontein

Second Respondent:
The Registrar of the Court of the Commissioner of
Patents Pretoria