Newco Tank Corp v Canada (Attorney General), 2014 FC 287
Newco Tank Corp appealed a Re-examination Board decision invalidating claims 12, 13, and 14 of its Canadian patent no. 2,421,384 regarding an apparatus for using waste heat from an engine to heat the liquid in an oil well production storage tank. 
A crucial determining factor was that the person of ordinary skill in the art (POSITA) was determined to have background knowledge that there was a heat inefficiency problem that the invention seeks to address. The only evidence for this proposition is that it was discussed under the “SUMMARY OF THE INVENTION” heading of the patent.
The claims at issue were:
12. An apparatus for heating a liquid storage tank, comprising:
an oil well production storage tank having a peripheral sidewall that defines
an interior; an engine used to operate a drive head on a well head of an oil well; and
at least one conduit extending from the engine, into the interior of the tank
and back to the engine to circulate hot fluid from the engine through the conduit to
thereby heat the interior of the tank.
13. The apparatus of claim 12, wherein the hot fluid comprises at least one of
engine coolant, hydraulic oil and exhaust gases.
14. The apparatus of claim 13, comprising more than one conduit extending from
the engine to circulate more than one hot fluid. 
The prior art described in the patent was the use of a propane burner to heat the production tanks. 
The requester of the re-examination cited eleven U.S. patents as prior art which demonstrate that “waste heat from an engine had long been recognized as a heating source during oil production and that substituting engine coolant for exhaust gases as the hot fluid was not an invention.” 
The claims at issue were ultimately rejected for obviousness, first by a decision of the Board on December 6, 2011. After several requests for reconsideration, the Board issued its final decision issued October 29, 2012, also rejecting claims 12-14. [10-11]
In its final decision, the Board considered the POSITA to be “a technician skilled in the art of oil production,” and took the applicable common general knowledge of that person to be the background knowledge in the patent, which included the problem to be addressed: “to come up with a more efficient method and apparatus for heating a liquid storage tank at a well site.”  In light of the prior art disclosed in the U.S. patents that were cited and the background information of the POSITA, the Board determined that claims 12-14 were obvious. [16-17]
Newco Tank Corp appealed, seeking an order cancelling the Certificate rejecting the claims or returning the issue to Board. The issues on appeal were:
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?
5. Did the Board act unreasonably in applying the “obvious to try” test? 
Issue 1: Was the Board’s selection of the POSITA reasonable?
The Court determined that the Board selected the POSITA to be “a technician skilled in the art of oil production”, and that this selection was reasonable.  The appellant had argued that the Board had broadened its characterization of the POSITA throughout its decision, but the court rejected this argument, pointing to the Supreme Court’s mandate in Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61,  SCJ No 63 [Sanofi],to adopt a flexible approach to the obviousness inquiry. 
Issue 2: Was the Board’s identification of the POSITA’s skill level reasonable?
The appellant argued that the image of the POSITA adopted by the Board was closer to that of an engineer than a technician.  Rejecting this argument, the Court noted that the Board had determined the common general knowledge to be the background information found in the patent itself. This background would enable the POSITA to recognize the inefficiency problem and imagine a solution.  Without stating precisely why, the Court stated that although it may have reached a different conclusion, it must defer to the Board on the reasonableness standard. 
This issue is closely related to the fourth issue on appeal.
Issue 3: Did the Board unreasonably base the decision on its perspective and not that of the POSITA?
The appellant further argued that some of the Board’s writings indicated that the Board conducted the obviousness assessment from its own perspective and not the POSITA’s.  These arguments were summarily rejected by the Court as focusing too much on the wording of the Board’s reasons. Rather, the decision should be read as a whole. 
Issue 4: Did the Board unreasonably conclude that the problem of inefficient heating formed part of the common general knowledge and prior art?
The appellant argued that the Board should not have concluded that the problem of inefficient heating formed part of the common general knowledge, since the problem was presented as part of the invention under the “SUMMARY OF THE INVENTION” heading of the patent rather than as background information.  The only evidence the Board had cited for the proposition that the inefficient heating problem was known in the prior art was the patent itself.  The Court decided that it was reasonable for the Board to consider the inefficiency problem as part of the background knowledge of the POSITA even though it was included under the “SUMMARY OF THE INVENTION” heading.  To hold otherwise would be an elevation of form over substance. 
Issue 5: Did the Board act unreasonably in applying the “obvious to try” test?
The appellant argued that the Board appeared to apply the “obvious to try” test when it made the statement:
“[I]t is our view that the skilled person would not have, in light of its inherent advantages, simply dismissed the idea without verifying its feasibility[.]” 
The Court rejected that this statement, on its own, amounted to engaging the “obvious to try” test.  Rather, the Court was of the view that “[t]he skilled person would have had to confirm that the modification would provide sufficient heat, but would not have had to experiment to invent the concept.”  The Court seems to be saying that the POSITA can be expected to do some testing to verify that the invention works.
Independent Sub-issue: Is there an onus on the Board to provide countervailing evidence?
An issue arose at the hearing regarding s. 43(2) of the Patent Act, which reads:
(2) After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid and avail the patentee and the legal representatives of the patentee for the term mentioned in section 44 or 45, whichever is applicable.
The issue was whether the Board bears any onus to search for and consider countervailing evidence. The Court decided “that s. 43(2) of the Patent Act does not impose a burden on the Board to seek out and locate evidence independently to support its conclusions on the material before it.”  The Court, quoting Genencor International Inc v Canada (Commissioner of Patents), 2008 FC 608 (CanLII), noted that the re-examination process was intended to be a “relatively summary and inexpensive alternative to a full-blown impeachment process”.  The Court further held that it would be inappropriate to impose such a burden on an administrative re-examination board. 
Newco Tank Corp is appealing the decision.
This decision is an example of the high degree of deference that Courts may afford to the Re-Examination Board, especially with respect to how the common general knowledge of the POSITA can be gleaned from the patent at issue. The Court deferred to the Board’s finding that the POSITA would have in its common general knowledge the problem of inefficient heating of the liquid storage tank. The Board came to this conclusion solely based on the problem being posed in the “SUMMARY OF THE INVENTION” of the patent, which is usually where the invention is described – not the background information of the field. The Court commented that it would have been inappropriate to say that a matter was part of the invention and could not have been known to the POSITA simply because the matter was described under that heading. The Court seems to have elevated substance over form of the patent document.
The decision provides further clarification on what does and does not constitute the “obvious to try” test. The Court draws a distinction between “verifying” that a particular invention works and the “try” portion of the “obvious to try” test. The court states that considering that the POSITA would not have dismissed an idea without verifying its feasibility does not engage the “obvious to try” test. In this way, the Court may be saying that an invention may be obvious even if the POSITA would have to confirm that the inventive concept worked by some testing. The Court seems to be employing reasoning that is very similar to the “obvious to try” test without having to make all the requisite justifications for using the “obvious to try” test. The “obvious to try” test is only applicable in industries in which advancements are won by experimentation (Sanofi, supra at para 68). The Court may be employing a modified version of the “obvious to try” test for a field in which the “obvious to try” test would not normally be appropriate.
The Court also determined that the Board does not bear any onus to search for evidence that supports the conclusions that it reaches on re-examination proceedings. Such an onus would be elevating the re-examination process to something akin to long and expensive impeachment proceedings. This determination reinforces the trend towards reducing the length and expense of legal proceedings.