Bodenseewerk Perkin-elmer, Gmbh v Varian Australia Pty Ltd

[1995] APO 41

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 610956 in the name of BODENSEEWERK

PERKIN-ELMER, GMBH

Title:    Electrothermal Atomization Furnace

Action: Opposition under Section 59 of the Patents Act 1952 by VARIAN AUSTRALIA PTY. LTD.

Decision:    Issued            .

Abstract:    Opposition succeeds on the ground of novelty, but not section 40, prior publication or obviousness.  Opportunity to amend.  Half costs awarded against the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 610956 by BODENSEEWERK PERKIN-ELMER, GMBH and opposition thereto by VARIAN AUSTRALIA PTY. LTD. under section 59 of the Patents Act 1952.

background

Application 610956 for an invention entitled "Electrothermal Atomization Furnace" was lodged as a Convention application by Bodenseewerk Perkin-Elmer, GmbH on 16 December 1988, with priority claimed from application P37 43 286.9 made in the Federal Republic of Germany on 19 December 1987.  It was advertised accepted on 30 May 1991, and a notice of opposition was filed by Varian Australia Pty. Ltd. on 2 September 1991.

As the application was lodged before, but accepted after, the commencement of the Patents Act 1990, Section 59 of the Patents Act 1952 applies to the opposition, but Chapter 5 of the Patents Regulations 1991 applies in relation to these opposition proceedings.

The evidence in support, evidence in answer and evidence in reply were duly served, with the benefit of some extensions of time, on 26 October 1992, 29 June 1993 and 11 November 1993, respectively.

This matter was set down for hearing in Melbourne in the week of 8 to 12 August 1994.  Three other oppositions (in relation to applications 610689, 612742 and 613163) dealing with technically related subject matter and involving the same parties were also heard by me in the same week, the decisions of these three oppositions having the same date of issue as this decision.  The four oppositions were heard consecutively, the present matter being the second heard, but it was agreed between the parties that, in order to expedite the hearing of these matters, a party may, if it wished, need only make submissions on a point of law once, and, where applicable, "pick up" those submissions on later cases.  The applicant was represented by Mr Barry Hess of counsel, assisted by Mr Ian Scott, patent attorney of the firm Watermark, Melbourne, and the opponent was represented by Mr Terry Collins, patent attorney of the firm Phillips Ormonde & Fitzpatrick, Melbourne.

the specification

The present invention is concerned with furnaces utilized in atomic absorption spectrometers for analysing samples of substances whose chemical constituents are unknown.  These furnaces are not the massive structures that the term usually evokes, but rather their dimensions are of the order of several centimetres. 

The function of the furnace is to heat the sample sufficiently to convert it to a "cloud of atoms".  The furnace is typically a graphite tube and is heated by having electrical current passed through its wall or walls.  Two modes of passing electrical current through the walls of the tube are known from the prior art, namely, either having contacts at the ends of the tube and the current flowing longitudinally through the sidewalls, or having contacts on either side of the tube and the current flowing circumferentially around the tube.  This invention is concerned with either of these.  A measuring light beam of a line emitting light source which comprises the resonant spectral line of an element whose presence is being determined is passed through an aperture in the tube.  The presence of the element in the sample can be determined from the absorption of the measuring light beam.

Rapid deterioration of the graphite tube by oxidation at the high temperatures involved is prevented by enveloping it in a flow of inert gases.

Various means are known for locating the sample in the furnace tube.  This usually involves placing the sample on or in a holder.  The holder may be demountable from the furnace, in which case the sample is normally placed on or in the holder outside the furnace and then the holder plus sample is loaded into the furnace, or it may be permanently positioned within the furnace.  The present invention is concerned with the latter arrangement.

According to the specification, it is desirable to delay the atomization of the sample relative to the heating of the furnace wall.  An adequate atomization delay ensures that the components of the atomized sample do not precipitate on relatively cool wall portions and that the sample is atomized as abruptly as possible to generate a strong absorption signal.  To achieve this delay, it is essential to limit the heating effect of the sample holder on the sample, and to heat the sample predominantly by heat radiation from the furnace wall.  The present invention addresses this problem.

The specification describes two best methods of performing the invention, one concerned with furnaces heated by axial current flow, the other by circumferential current flow.  The specification concludes with twenty-one claims, of which two, claims 1 and 11, are independent and read as follows:

"1. An electrothermal atomization furnace comprising:

a tubular electrothermal furnace body adapted for passing a radiation beam therethrough, said furnace body having a centrally positioned lateral inlet aperture,

means for passing an electrical current through said furnace body to heat said furnace body sufficient to atomize a sample on a platform within said furnace body,

an elongated sample platform having a sample holding recess and being positioned centrally within said furnace body opposite said inlet aperture and integrally connected to said furnace body, and

web means for integrally connecting said platform to said furnace body, said web means being configured and positioned to maintain a substantially uniform electrical potential thereacross to substantially prevent a heat-generating current flow through said platform when current flows through said furnace body and to sufficiently impede heat conduction from said furnace body to said platform so that sample on said platform is thermally atomized substantially by radiation from said furnace body."

"11. An electrothermal atomization furnace comprising:

a tubular, electrically conductive furnace body having an interior wall and a central area, and a sample-holding inner body integral with said furnace body, said body being spaced from said interior wall of said furnace body by an interconnecting integral web,

said inner body being a hollow, generally semi-cylindrical shape and extending in an axial direction only through the central area of the furnace body,

wherein said web provides heat insulation between the furnace body and the sample-holding inner body so that the sample is substantially atomized by radiation from the furnace body."

grounds of Opposition

The grounds of opposition relied on are those laid down in paragraphs 59(1)(e),(g),(h) and (i) of the Patents Act 1952, namely, prior publication, obviousness, novelty and non-compliance with section 40 of the Act.

Evidence

The evidence in support consists of:

· several statutory declarations by Mr Collins for the purpose of placing in evidence a number of published documents

· a statutory declaration by Dr John B Willis, who is an independent expert in this field in Australia and provides evidence as to what was known and what was common general knowledge in Australia relative to the present invention; he also compares the present invention with the disclosure in a document in evidence, United States Patent 4111563 (hereinafter referred to as "the Tamm patent", after its inventor, who is also the inventor in the case in suit), which assumes considerable importance in this decision

· a statutory declaration by Mr Keith Brodie, who is an expert in this field in Australia employed by the opponent company and provides evidence as to what was known and what was common general knowledge in Australia relative to the present invention

· a statutory declaration by Peter Steven Doidge, who is an expert in this field in Australia employed by the opponent company and provides evidence as to what was known and what was common general knowledge in Australia relative to the present invention; he also compares the present invention with various items of prior art, including the Tamm patent

· a statutory declaration by Alan Wiseman, who is an employee of the opponent and who provides evidence on the way information in relation to patent literature and technical journals and the like is disseminated through his company,  and also provides evidence on a particular sample platform sold by the company

· several statutory declarations establishing publication dates of various documents.

The evidence in answer consists of:

· a statutory declaration by Rolf Tamm, who is the inventor  of the present invention and resides in Germany, addressing each of the items of prior art relied upon by the opponent

· a statutory declaration by James Peter Jordan, who is an employee of the opponent and, while he currently resides in Hong Kong, until recently resided in Australia and is an expert in the field in Australia, addressing aspects of the evidence of Collins, Willis, Brodie and Doidge.

The evidence in reply consists of a further statutory declaration by Willis in response to points in the Tamm and Jordan declarations.

I will discuss the evidence in more detail, where appropriate, in my decision.

Submissions

At the hearing, Mr Collins commenced by giving his analysis of the specification, along the way drawing attention to various inconsistencies and uncertainties in the specification.  His main points were:

· the specification clearly indicates that the invention required the device have a single web, but claim 1, by referring to web means, is not so limited

· the specification, in distinguishing the present invention from the Tamm patent relies on the inner body (the sample holder) being a hollow, generally cylindrical shape, open to the inner wall of the furnace body, but the claims are not so limited

· indications in the body of the specification and claims 1 and 11 that total exclusion of heat from the sample holder were not a requirement of the invention means that the manner of defining of the invention by claims 1 and 11 - defining by result - did not place any definite demand upon the position and location of the web.

In support of the grounds of prior publication and lack of novelty, Mr Collins relied on three of the thirty or more publications the opponent had placed in evidence: the Tamm patent, an article from Anaytical Chemistry, Vol. 58, No. 9, pp 1973-1977 and an article from Fresnius Zeitschrift für Analytische Chemie, Vol 323, No. 7, 1986, pp 748-753.

In support of the ground of obviousness, Mr Collins relied on the evidence of the opponent's declarants Willis and Doidge in arguing that everything in at least claims 1 and 11, with the possible exception of the integral connection, was common general knowledge at the priority date of the claims.  He contended that Tamm and Jordan had not contradicted most of the significant aspects of the opponent's evidence.  Finally, he stated that at the end of the day you are left with relativity: does one arrangement deter transfer of heat by conduction better than another?  He continued:

"If so, in order to justify the grant of a patent, the application must tell us how it gets that improved result.  It is not enough to say it gets that result by taking into account the very things that the person skilled in the art would have taken into account before the priority date anyway, namely, the shape and disposition of the connecting piece, whether or not it was integral."

Mr Collins then turned to the ground of section 40, and almost immediately Mr Hess objected that the issues Mr Collins was raising had not been particularized in the statement of grounds and particulars.  After taking submissions from both sides on the point, I directed that, for reasons I will detail in my decision, infra, Mr Collins should confine himself to matters which had been properly particularized.  He then proceeded to set out a few minor inconsistencies in the specification.

Mr Hess then put the case for the applicant.  He commenced by stating that the present invention is in a highly competitive field of technology, in which small but significant improvements constitute patentable subject matter.

Mr Hess pointed out that the claims in suit are of the type which "define by result".  He referred to the standard case on this subject - No Fume v Frank Pitchford and Co, 52 RPC 231, and stated that there was no requirement to specify the dimensions of the claimed device, but rather more to specify what is the invention delineated by the claims. According to Mr Hess, in the present case the claimed monopoly has been set out in accordance with the requirements of, for example, Electrical & Musical Industries v Lissen, 56 RPC 23, that the forbidden ground be clearly defined. He also referred me to two Australian court decisions which sanctioned claiming by result: Interlego v Toltoys, 130 CLR 461, and Dennison Manufacturing Company v Monarch Marking Systems, 1 IPR 431, and to the decision in Welch Perrin v Worrel, 106 CLR 588 as requiring that one should "look sensibly at the specification".

On the question of obviousness, Mr Hess claimed that each of the opponent's main declarants - Willis, Brodie and Doidge provided support for the contention that the problem of insulating furnaces of the type under consideration had been well known for some time, but had remained unsolved.  Mr Hess took issue with the way certain of the opponent's evidence was couched, referring to such phrases as "I would expect", "not surprised" and "such a person would have known".  He submitted that the opponent's declarants are over-qualified, and went on to state that small advances can be inventive, and even though the invention appears simple, it may be inventive, in which case a patent should issue.

Other points made by Mr Hess on the issue of obviousness are:

· mosaics are not allowed (see 3M Australia v Beiersdorf Australia, 144 CLR 253)

· here is a combination providing a new and useful result

· it is abundantly clear that the "Cripps question" (Sharp & Dohme v Boots Pure Drug Company, 45 RPC 153) has not been addressed.

On novelty Mr Hess referred briefly to several of the established authorities in this area: Hill v Evans, (1862) 6 LT 90, Canadian General Electric v Fada Radio, 47 RPC 69, Flour Oxidising v Carr, 25 RPC 428, Meyers Taylor v Vicarr Industries, 137 CLR 228, and Graham Hart v S.W. Hart, 141 CLR 305. He submitted that the Tamm patent, the closest of the three publications cited by the opponent in relation to lack of novelty, does not disclose all the features of the invention, and is only one part of the signpost on the path of the invention. He continued:

"In assessing novelty, each and every exhibit should be mentioned against each claim.  This has not been done.  The reverse infringement test should be applied.  When this is done it is assuredly the case that none of the bits of prior art would infringe those claims, because, as Tamm says, the Tamm patent completely fails to achieve a configuring and positioning 'to maintain a substantially  uniform potential thereacross to substantially prevent a heat-generating current flow through said platform when current flows through said furnace body and to sufficiently impede heat conduction from said furnace to said platform' as defined by claim 1.  In relation to claim 11, the Tamm patent does not provide heat insulation.  Meyers Taylor v Vicarr Industries and Hart v Hart clearly show that the Tamm patent is not anticipatory.  Close similarity is not sufficient - see Werner v Bailey Aluminium Products, 13 IPR 513."

In relation to section 40, Mr Hess considered that none of the issues raised by the opponent under this head were of any substance, and provided a brief rebuttal of each of these.

The final point addressed by Mr Hess concerned the number of documents particularized by the opponent, and the fact that there was no indication until the hearing that only a small proportion of these were to be relied on.  Mr Hess asked that this be taken into consideration when costs were apportioned in this matter.

In response, Mr Collins agreed that small differences may be important, inventive step-wise, but they must be identifiable and in the claims.  He said that the applicant appears to be saying that the invention is to position and configure the web to get a particular result: to eliminate heat flow to the sample platform and to have the sample on the sample platform thermally atomized substantially by radiation from the furnace body; that is what occurs in the three instances of prior art cited as anticipating the present invention - the word "substantially" is not enough to identify whatever differences exist between these disclosures and the claimed invention.

In relation to Hart v Hart, Mr Collins remarked that he had not been arguing that the invention is so simple as to be obvious, but rather that it is not defined with enough precision to identify the forbidden territory.

I will discuss the parties' submissions in more detail, where appropriate, in my decision.

Decision

Procedural Issue

At the hearing, Mr Hess challenged the right of the opponent to be heard in relation to certain section 40 issues that had not been adequately particularized.  The particulars he was concerned with read as follows:

"The specification of the application is generally ambiguous and fails to clearly and fully describe the invention because, inter alia:

(a)the objects of the invention as listed on pages 4 and 5 of the specification are not clearly satisfied by the invention as claimed, and

(b)the description of the invention on pages 5 and 6 of the specification is inconsistent with the definition of the invention provided in the claims, and

(c)the terminology used in the claims is not consistent with the terminology used in the body of the specification."

The requirements for particularizing section 40 matters have been set down in several Patent Office decisions, for example, L'Air Liquide v CIG, 24 IPR 77, in which the hearing officer stated:

"I do not consider a mere enumeration of the requirements of the Act to be sufficient statement of the particulars; rather, the statement of particulars should identify the specific deficiencies in the specification that give rise to the ground of objection.";

and in E.I. DuPont de Nemours v DowElanco, (1994) AIPC 91-067:

"the particulars should briefly and generally include:

·

·

·

· For section 40 matters, a brief description of the specific subject matter causing section 40 not to be satisfied, a clear statement of the specific statutory requirement and the identification of the deficient part of the specification (by reference to page and line and/or claim numbers)."

I think, in light of these decisions, the particulars complained of by Mr Hess are indeed a little short on detail, as a result of which they do not provide a basis on which the opponent is entitled to be heard.  The Australian Patent Office Manual of Practice and Procedure Volume 3 at paragraph 2.12.1 says, in relation to this:

"At the hearing, the opponent's submissions should be confined to matters within the scope of the statement of grounds and particulars - as stated in Part 11 of this volume at para 11.2.1, the opponent is bound by that statement, and confined to the issues raised therein.  At the hearing, the hearing officer will not monitor compliance, but will rule on the matter when and if the applicant objects."

Accordingly, I ruled in Mr Hess' favour, but noted that where section 40 issues arose indirectly, for example, when addressing aspects of the evidence in answer or in placing a construction on the specification, the opponent would not be constrained by the statement of grounds and particulars. I further observe that, in accordance with sub-section 60(2) of the Patents Act 1952 (as applying in this case), in deciding this matter I am not confined to a ground of opposition relied on by the opponent.

Construction of the Claims

In deciding this matter a convenient starting point is to construe the independent claims 1 and 11 of the specification in suit.  In this matter I am guided by the rules for construction which were summarised by Sheppard J in Decor Corp v Dart Industries, 13 IPR 385.

The first expression in claims 1 and 11 presenting some difficulty is the word "integrally" in claim 1 and "integral" in claim 11. Mr Collins and Mr Hess disagreed as to what this meant in the context of the specification.  There is some suggestion in the specification that these terms are to be taken to mean that the furnace body and the sample platform are formed from a single piece of material, the line taken by Mr Hess.  Mr Collins, on the other hand, asserted that they merely meant that the sample platform was fixed in place.  I am inclined to agree with the latter view, the addressee of the specification taking the word "integral" as simply differentiating the present device from those in which the sample platform is removable.

The next expression on whose interpretation Mr Hess and Mr Collins differed was "web means" in claim 1.  Mr Collins contended that this included within its scope any number of webs.  Mr Hess considered that it meant just a single web means, the word "means" being employed to cover the situation of where one of the embodiments contained a number of circular holes as perforations.  Once again, I must agree with Mr Collins: the plain meaning of "web means", without the indefinite article, is that it includes within its scope a plurality of webs.

On the face of it, the features in claim 1 of "impede heat conduction"  and in claim 11 of "provides heat insulation" are distinguishable from one another.  However, as far as I can tell, that distinctiveness is only illusory, and I will treat them as meaning one and the same thing.

Although Claim 11 overall is broader in scope than claim 1, in several of its integers it appears more narrow than claim 1.  In his submissions, Mr Hess allowed of the possibility that the limitation in claim 11 of the "elongated sample platform having a sample holding recess...... so that a sample on the platform is thermally atomized by radiation from the furnace body" (as defined by claim 1) being an inner body with a hollow, generally cylindrical shape is not an essential feature of the invention defined by claim 11.  This accords with my understanding of the specification.

The final issue of construction concerns the use in claims 1 and 11 of the drafting device of "claiming by result".  Although several of the opponent's declarants professed difficulty with this, as I understand the case put to me by the opponent it was not alleging that arising from this there was any failure to comply with section 40, but rather the use of such terms as "substantially" and "sufficiently" caused the claims to be of such scope that they were obvious and not novel. 

The word "substantially" is a device often employed in patent claims.  It simply requires that the word or phrase it qualifies not be given a literal construction, but rather be read with a generality its context in the specification demands.  In a practical sense, therefore, its presence often serves no real purpose.  In the case of Young and Neilson v Rosenthal and Co.,, 1 RPC 29, Grove J stated:

"That word [substantially] to my mind is an utterly and entirely useless word because the law gives it to him without using it.  The law says if a man, although not literally infringing the letter of a patent, yet substantially infringes it, it is an infringement.  But then you must apply the same words to the novelty".

In the present case the addressee of the specification would understand that absolute exclusion of heat generating current and conducted heat from the sample platform would be a physical impracticality.  The use of the expressions "substantially" and "sufficiently" merely make manifest what would be in any case understood.  Their presence does not impact on the scope of the claims.

Section 40

I think it follows from the above analysis of claims 1 and 11 that I do not perceive any shortcomings in the clarity of these claims.  The few clarity objections raised against the appended claims, such as the fact that these claims are directed to "The device" whereas claims 1 and 11 are directed to a furnace, do not warrant further mention.

I have also concluded that the claims are fairly based, although not without some hesitation on one point, namely whether it is an essential feature of the invention that the sample platform be of generally semi-cylindrical shape.  As I have already indicated, I have accepted Mr Hess' tentatively-expressed view that, as the specification reads, is not an essential feature, which leaves claim 1, which does not include this feature, fairly based.

It follows from the foregoing that I find the specification fully meets the requirements of section 40.

Prior Publication and Novelty

Turning firstly to the relevant law on novelty, it was accepted by both sides that the applicable law is the so-called "reverse infringement test", as set down in, for example, Meyers Taylor v Vicarr Industries, 137 CLR 228, in which Aickin J. stated

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would, if the patent were valid, constitute infringement."

In Rodi & Wienenberger v Henry Showell, (1969) RPC 367, it was held that infringement of a claim occurs where

"each and every one of the essential features of a claim has been taken".

Applying the reverse infringement test to the three documents relied upon at the hearing as anticipating the present invention, all but one may be disposed of on the basis that they do not disclose sample platforms connected to the furnace body by a web.  There is no question that the web is an essential feature of the invention.

The remaining document is the Tamm patent.  This discloses a furnace tube in which is located an inner body which constitutes a sample holder, this sample holder being attached to the inner wall of the furnace tube by webs.  In the preferred embodiment the sample holder is a cylinder, but the disclosure includes the passage:

"It will be appreciated that it is within the concept of this invention to provide inner bodies of configurations other than those describe[sic] hereinbefore in connection with the embodiments of FIGS. 1 and 3, such as a boat like configuration or even a flat shaped body, for example."

The cited document also states the following:

"A particular advantage of this device resides in the fact that the inner body is primarily indirectly heated and only directly heated to a small extent by the connecting webs to the graphite tube itself."

Nowhere is there any indication that preventing heat-generating current flow through the sample holder is a consideration in orienting the web,  and nowhere is there described an orientation of the web inherently capable of achieving this.  It is a quirk of the Tamm specification that it is impossible to tell definitely from the disclosure, including the drawings, whether or not the web is transverse to the current flow, although I have a slight impression that it is not.  The fact that the specification leaves open this option cannot, in my view be regarded as being tantamount to disclosing it.  This hardly seems a case of "clear and unmistakeable directions" - see, for example, General Tire & Rubber Company v Firestone Tyre and Rubber Co., (1972) RPC 457.

Consequently, I conclude that the invention defined by claim 1 is novel over the Tamm patent, by virtue of its feature of the web means being configured and positioned to maintain a substantially uniform potential thereacross.

Claim 11, on the other hand, seems able to have the prior art read directly on to it, when account is taken of the non-essentiality of the inner body being of "generally semi-cylindrical shape" over the disclosure in the Tamm patent of a "boat-like configuration".  I conclude, therefore, that claim 11 lacks novelty.  In the interest of completeness I should also state that this conclusion would not be affected if claim 11 were to be limited to arrangements where the inner body is spaced from the interior wall of the furnace body by only a single interconnecting web, as this would clearly be non-essential.

Of the claims appended to claim 11, claims 12 to 14, 16 and 17 define features explicitly or impliedly disclosed in the Tamm patent and are therefore anticipated by it.  Claims 15 and 18 differ from the Tamm patent in that they specify grooves in the sample holder as being a portion of a screw thread.  This feature does not materially effect the way the invention works, and accordingly these claims also are anticipated.  Claim 19 limits the invention to those devices employing circumferential current flow through the furnace body, something which is common general knowledge in the art.  The Tamm patent does not stipulate what type of current flow it employs, axial or circumferential, and I am satisfied that, read in the light of the common general knowledge, it anticipates claim 19.  On the evidence before me, claims 20 and 21 are not anticipated.

I find that the invention insofar as it is defined in claims 11 to 19 is not novel over the disclosure in United States Patent 4111563.  Claims 1 to 10 and 20 to 21 are not prior published by, nor lacking in novelty in light of, any of documents in evidence in this opposition.

Obviousness

In order to establish that the matter defined by a claim is obvious, it requires, since we are here dealing with obviousness under the Patents Act 1952, that every integer making up the claim be common general knowledge and that it would have been obvious to a non-inventive skilled worker in the field (that is, the person skilled in the art) to not only select the separate integers which make up the claim, but also to select the particular combination of integers, see Minnesota Mining and Manufacturing and 3M Australia v Beiersdorf Australia, 144 CLR 253

As to what constitutes the common general knowledge is largely determined by the evidence of experts in the field, see Mölnlycke AB v Proctor & Gamble, (1994) RPC 49. It is the background knowledge attributable to the person skilled in the art, who, as pointed out by Mr Hess, are variously described by the authorities on this as "the non-inventive skilled worker", "hypothetical skilled craftsman" and "unimaginative skilled technician". Mr Hess submitted that the opponent's experts Willis, Brodie and Doidge were over-qualified to give evidence on common general knowledge. I do not agree. This art is so specialized and technologically sophisticated, that the person skilled in the art must be assumed to have background knowledge and skills of a high order. If Willis et al are over-qualified to be persons skilled in the art, in my view they are only marginally so, but even so it will always be a question of what weight to place on their evidence.  In the event, I believe that the Willis evidence should carry considerable weight, the others less because of their non-independent status.

Mr Collins, in turn, questioned the value of the evidence of Jordan and Tamm on common general knowledge, given that both were located overseas at the time of making their declarations, and both are employees of the applicant and therefore not independent.  Jordan appears to have been in Australia at the time to which his evidence relates.  The situation with Tamm is more problematical, since he does not appear to have ever been in Australia, and I think his evidence on common general knowledge, at least, is of little probative value.  This does not necessarily apply to other aspects of his evidence - see W R Grace & Co V Asahi Kogyo, 25 IPR 481.

An aspect of the common general knowledge that the opponent placed some emphasis on was on whether it was well known in the art that it was important for the operation of these devices that the sample on the sample holder be heated as far as possible by radiated heat, and that as far as possible heat transfer to the sample holder be limited, both as regards heat conduction from the furnace body and heat generated by current leakage from the furnace body to the platform.  The applicant's declarants do not directly question this, and I am prepared to accept the opponent's position on it.

In my view the opponent's case on the common general knowledge (and thereby obviousness) founders at a more basic level, namely, the feature of the use of a web (or web means).  The only published document in evidence disclosing the use of a web as per the present invention is the Tamm patent.  None of the opponent's declarants profess to be aware of this patent, and there is no indication of its subject matter being present in any commercially available product.  The evidence of Willis seems, if anything, to point away from webs as being common general knowledge.  Willis states:

"I am not aware of the use in Australia before 19 December 1987, of a furnace in which the platform is integrally connected to the furnace body.  If any such furnace was in use, I would expect the integral connection to be effected through a web or other relatively small section.  That would be necessary to achieve the long recognized requirement that there be minimum conduction of heat from the furnace body to the platform and minimum electrical heating of the platform.

[The Tamm patent] is an example of a proposal prior to 19 December, 1987 to provide a furnace with an integral platform.  I think the reason why such proposals have not been adopted commercially before now, at least on a wide scale, is the complexity and expense of manufacturing such furnaces in comparison with a simple cylindrical furnace having a separately formed rectangular platform."

The opponent also placed considerable reliance on the Fresnius Zeitschrift für Analytische Chemie article as establishing obviousness on the part of the present invention.  Insofar as it is relevant to this matter, this document discloses a furnace tube having a sample platform located within it, in which the sample platform is supported by a so-called "pin", which may best be described as a centrally positioned column under the platform, between it and the inner wall of the furnace tube.  The wall of the furnace tube, the column and platform itself thus form a pedestal-like arrangement.  While the disclosure is vague on this point, it appears that the pin-platform part is removable from (that is, non-integral with) the furnace member.  As I understand it, the opponent argues that the prior art pin is common general knowledge, and the web of the present invention is comparable with, and a non-inventive adaptation of, it.  For example, Mr Doidge states:

"It would have been understood to be desirable to have the platform contact the tube at one point only, as in the "pin" platform design of [the Fresnius Zeitschrift für Analytische Chemie article], to minimise this potential drop.  If the platform was to be connected to the tube through a piece of graphite other than the "pin" referred to above, it would have been well understood in Australia before December 1987, that such a piece of graphite should have a minimum cross-sectional size in the axial direction of the tube if the tube was to be heated by end contacts, or in the transverse direction of the tube if the tube was to be heated by side contacts." (emphasis added)

Also, Mr Willis says the following:

"Ideally, the platform should be connected to the furnace body through a very small pin or pillar so as to minimize heating of the platform by current flow and heat conduction.  That form of manufacturing would clearly present manufacturing problems and would not have substantial mechanical strength.  I am therefore not surprised that Perkin-Elmer has chose[sic] to use a web for the connection between the furnace body and the platform, since such an element offers a reasonable compromise in terms of size and strength."(emphasis added)

Once again there is but a single disclosure in a document published before the priority date of the present claims of what is said to be the common general knowledge (the Fresnius Zeitschrift für Analytische Chemie article), and there is no indication that Willis or Doidge were aware of it or that devices in accordance with this disclosure have been exploited commercially.  Moreover, while Willis and Doidge have sought to convey the inference that pin platforms were common general knowledge at the priority date of the claims, their evidence is couched in such a way (see, for example, the emphasised portions of the above quotes) as to be far from convincing.

So, whatever the merits of the allegation of obviousness based on pin-platforms as common general knowledge, once again that case is still-born by the inability of the opponent to establish a convincing case for the existence of the common general knowledge upon which that allegation is based

Accordingly, I find that there is insufficient evidence to justify a finding that the invention is obvious and lacking in an inventive step.

Conclusion

I have found that this opposition succeeds on only one ground, namely, that the invention defined in claims 11 to 19 is not novel.  It will be a straightforward matter for the applicant to amend its specification to overcome its present shortcomings.  Consequently, I allow Bodenseewerk Perkin-Elmer, GmbH sixty days from the date of this decision to propose amendments to that effect.

costs

On the issue of costs, the applicant has drawn attention to the fact that the opponent particularized and placed into evidence a relatively large number (more than thirty) of documents in relation to the ground of novelty, but only at the hearing did it eventuate that less than one tenth of them were to be relied upon, resulting in much unnecessary effort on the part of the applicant.  The applicant asked that this be taken into account when determining costs.

I am sympathetic to the applicant's position on this.  However, this sympathy is tempered somewhat by the fact that it was open to the applicant to ask for further and better particulars: see ICI v Irenco, 26 IPR 154. While ICI v Irenco came some time after the present statement of grounds and particulars, the principles upon which it is based pre-existed.

The main factor bearing on costs is the degree of success of each party.  In this case, the opponent was only partially successful, but did succeed in reducing the scope of the claims.  In all of this, the public interest role served by an opponent in successfully opposing the grant of a patent which would be invalid needs to be recognized.

Having regard to all the circumstances of this matter,  I award one half of the opponent's costs against the applicant.

E. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Watermark, Melbourne

Patent attorneys for the opponent   :  Phillips, Ormonde & Fitzpatrick, Melbourne