Bodenseewerk Perkin-elmer, Gmbh v Varian Australia Pty Ltd

[1995] APO 40

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 610689 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 obviousness, but not section 40, prior publication or novelty.  Opportunity to amend.  Three-quarters costs awarded against the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 610689 by BODENSEEWERK PERKIN-ELMER, GMBH and opposition thereto by VARIAN AUSTRALIA PTY. LTD. under section 59 of the Patents Act 1952.

background

Application 610689 for an invention entitled "Electrothermal Atomization Furnace" was lodged as a Convention application by Bodenseewerk Perkin-Elmer, GmbH on 1 February 1989, with priority claimed from application P38 02 968.5 made in the Federal Republic of Germany on 2 February 1988.  It was advertised accepted on 23 May 1991, and a notice of opposition was filed by Varian Australia Pty. Ltd. on 23 August 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 19 October 1992, 16 June 1993 and 23 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 610956, 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 first 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 the latter 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.

The invention addresses the problem of non-uniformity of temperature distribution along the tube.  Such non-uniformity of temperature has disadvantages in terms of the effective operation of the device.  To overcome this problem, the invention involves the strategic placement of areas of reduced cross-section within the wall or walls of the tube.  Two means of achieving this are disclosed: the first is a series of bores within the wall or walls parallel and transverse to the longitudinal axis of the tube, connected to a source of inert gas; and the second is a series of transverse bores and longitudinal grooves, these also being connected to a source of inert gas.  In the best methods of performing the invention described, the tube is constituted by a bore through opposite sides of a slab of graphite of roughly rectangular or octohedral shape on its major face.  The tube extends in the major plane of the slab, and only occupies a small portion of its overall volume.  The relatively massive portions of the graphite body on either side of the tube function as contact projections, the contact projections of the octagonally shaped body having a further projection, this being of cylindrical shape.

There are twenty-one claims in all, two of which, claims 1 and 16, are independent and read as follows:

"1. An electrothermal atomization furnace assembly for atomizing sample for analysis by atomic absorption spectrophotometry comprising

a tubular furnace member having a central portion,

contact projections disposed on opposite sides of said furnace member,

contact surfaces on said contact projections adapted for pressure mounting engagement between cooperating current-supplying contact surfaces for passing an electrical current through the furnace member,

said contact projections defining a cross-sectional area between said contact surfaces and said furnace member,

said contact projections containing void means for reducing said cross-sectional area, said void means being configured and disposed to provide a reduced cross-sectional area continuously along said central portion of said furnace member for uniform temperature distribution along said furnace member,

and wherein said contact projections further comprise an inert gas, said inert gas passageway being connected to said void means such that inert gas can flow through said void means."

"16. An electrothermal atomization furnace assembly for atomizing sample for analysis by atomic absorption spectrophotometry comprising

a tubular furnace member adapted for passing a light beam therethrough and having a central portion,

a pair of contact projections extending longitudinally on diametrically opposite sides of said furnace member and projecting outwardly therefrom,

said contact projections each having distal contact surfaces adapted for pressure mounting engagement between cooperating current-supplying electrodes for passing electrical current therethrough,

said contact projections having areas of reduced cross-section between said contact surfaces and said furnace member,

said areas of reduced cross-section extending continuously along said central portion of said furnace member, said areas being dimensioned and configured to reduce the cross-section for current supply along the central portion of the furnace member so as to produce uniform heat distribution along said furnace member, and

in which said tubular furnace member includes an inner body for receiving a sample to be analysed, said inner body being heated indirectly through the radiation of the furnace member."

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:

· a statutory declaration by Mr Collins for the purpose of placing in evidence a number of publications

· a statutory declaration by Dr John B Willis, who is an expert in the field in Australia and provides evidence as to what was known and what was common general knowledge in Australia, particularly as regards ensuring uniform temperature distribution in atomic absorption spectrometer furnace tubes

· a statutory declaration by Professor Dr Ing. Jaroslav Matousek of The University of New South Wales, who is an expert in the field in Australia and provides evidence as to what was known and what was common general knowledge in Australia

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

· several statutory declarations establishing publication dates of various documents.

The evidence in answer consists of:

· a statutory declaration by Rolf Tamm and Günther Roedel, who are the inventors of the present invention and reside 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, this declaration addressing aspects of the evidence of Collins, Matousek and Willis

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

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

Submissions

At the hearing Mr Collins commenced by construing claims 1 and 16 in suit, and then proceeded to give a detailed analysis of the evidence in this matter.  The opponent has placed over thirty published documents in evidence, but Mr Collins indicated that only a small number of these would be relied on as prior-publication and/or novelty citations.  The remainder were for the purpose of establishing the common general knowledge in the art.  Mr Collins went through each relied-on prior-publication/novelty citation in turn, comparing them with the claims 1 and 16.

Mr Collins next discussed the evidence in support from the opponent's experts, Mr Willis and Dr Matousek, and drew attention to its salient aspects, many of which, according to Mr Collins, were not disputed by the applicant.

Mr Collins then turned to the applicant's evidence in answer.  He submitted that Tamm and Roedel would not have been conversant with the art in Australia, despite evidence from Mr Jordan that, in this art "the world scientific community is well aware of what Australian scientists are working on".  He also observed that Tamm and Roedel, as the inventors, were not independent in this matter.  He then went on to analyse the Tamm and Roedel evidence, drawing attention to a number of instances where, according to Mr Collins, they were in error.  These instances mainly arose from the construction they had placed upon various documents in evidence, including their own specification.  As regards Mr Jordan's evidence, Mr Collins also called into question his ability to give evidence on the Australian situation, since it was not clear if he had been resident in Australia at the appropriate time, and went on to criticize his evidence on much the same grounds as he had the evidence of Tamm and Roedel.

After touching on what was said in the evidence in reply, Mr Collins summed up the opponent's case on novelty by saying that the evidence clearly demonstrates lack of novelty in claims 1 to 16; the devices disclosed in the prior art use the same means - cavities and voids - for the same purpose as the present invention; the only possible dispute may be as to whether inert gas passes through contact projections to the voids, but Mr Willis has dealt with this effectively: inert gas will enter the cavities in the prior art arrangements.

Mr Collins then listed the seven documents that are said to deprive the main claims of their novelty, and then submitted that, in the alternative, the claims fail for obviousness in the light of the common general knowledge and standard techniques admitted by the experts for the applicant and upon which evidence had been provided by opponent.

Mr Collins criticized the specification for failing to clearly describe what the invention is, and referred to evidence from Willis and Matsoutek in this regard.  Despite this uncertainty in the specification, the evidence was said to establish there was no inventive step in what was claimed.

On the issue of non-compliance with section 40, Mr Collins drew my attention to a number of instances of inconsistency between the description and claims, which he contended resulted in a lack of fair basis in the claims.

Mr Hess then put the case for the applicant.  He commenced by stating that the present invention is in a highly technical field, in which the present parties are the major players; it is a rapidly advancing and highly competitive technology, but the present invention is not a "breakthrough invention", and consequently there is a lot of known art; however, no publication discloses all the features and hence there is no lack of novelty.  Also, the invention is not obvious, when ex-post facto analysis is allowed for.

Mr Hess then outlined the present law on novelty and obviousness.  This law is well established, so Mr Hess, as he himself pointed out, was going over well-trodden pathways.  He referred to Hill v Evans, (1862) 6 LT 90, Allmanna Svenska Elektriska v Burntisland Shipbuilding, 69 RPC 63, General Tyre and Rubber Co (Frost's) Patent, (1972) RPC 259, Meyers Taylor v Vicarr Industries, 137 CLR 228, Graham Hart v S.W. Hart, 141 CLR 305, Minnesota Mining and Manufacturing Company v Beiersdorf (Australia), 144 CLR 253, Werner v Bailey Aluminium Products, 13 IPR 513, Nicaro Holdings v Martin Engineering, 16 IPR 545, Winner v Ammar Holdings, 25 IPR 273, and W R Grace v Asahi Kasei Kogyo 25 IPR 481.

In the present matter, Mr Hess questioned the qualifications of Mr Willis and Dr Matousek to give evidence on common general knowledge: they are said to be over-qualified.  He also disputed whether Mr Wiseman's evidence was enough to establish that the patent specifications in evidence are common general knowledge. The opponent's evidence on prior-publication and novelty was said to be ineffective because no expert evidence had been put forward analysing each publication to check whether each and every integer of the claims in suit had been disclosed.  In this regard he drew my attention to Meyers Taylor v Vicarr Industries, 137 CLR 228, Werner v Bailey Aluminium Products, 13 IPR 513, Nicaro Holdings v Martin Engineering Company, 16 IPR 545, where evidence of this kind had been relied on by the courts. According to Mr Hess, without such evidence, the opponent could not establish its case; simply putting publications in the evidence and then discussing them at the hearing was not sufficient.

Mr Hess stated that the final question to be asked in determining obviousness was the so-called "Cripps question" formulated by Sir Stafford Cripps in Sharp & Dohme v Boots Pure Drug Company, 45 RPC 153, namely,

"The real question is: Was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent, which consists of the chemical literature available ...... and his general chemical knowledge, that he could manufacture valuable therapeutic agents by making the higher alkyl resorcinols ....".

Mr Hess' submissions in relation to the section 40 issues raised by the opponent were directed to those set down in the statement of grounds and particulars.  These are fairly numerous, and only some of them had been addressed by Mr Collins in his submissions.  They go to clarity and fair basis, and it was Mr Hess' contention that none are of any substance.

In response, Mr Collins firstly replied to Mr Hess' criticism of there being a lack of expert evidence from the opponent supporting lack of novelty.  He argued that this tribunal has expertise in the interpretation of specifications, as have patent attorneys; expert evidence is only required before a tribunal of this type in instances where there is a clear contradiction in the understanding of certain terms or where workshop improvements are required to be assessed, but this is not the case here; this tribunal only needs expert assistance in circumstances such as special terminology for the particular art or ascertaining the common general knowledge.  He then went on to explain the evidence of Mr Willis and Dr Matsoutek on that basis.

Mr Collins reiterated that he was still having trouble coming to grips with what the invention is.  Despite what Tamm and Roedel say, the invention according to the specification lies in a cavity of any kind - including a groove cut into the external surface for the purpose of promoting uniform temperature distribution along the body.  There doesn't appear to be anything else, despite the add ons such as the platform and inert gas.

Mr Collins drew my attention to several cases on the point of whether to sustain an objection of lack of novelty there has to be a complete disclosure in the prior art: Stevelift v Formark and Macdonald Johnston Engineering Company, 29 IPR 154, Braas & Co v Humes Limited, 26 IPR 273, Martin Engineering v Trison Holdings, 14 IPR 330, and Re Application by NRDC, 24 IPR 123. Mr Collins said that it is apparent from these cases that prior art documents are to be read in the light of the common general knowledge at publication, that an improvement that any competent workman may be expected to make will not confer novelty, nor will an arbitrary feature provided to avoid prior art, and that a feature that avoids infringement may not avoid novelty.

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

Decision

In deciding this matter a convenient starting point is to construe the independent claims 1 and 16 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 16 occasioning some difficulty is "a central portion" of the tubular furnace member.  Mr Collins and Mr Hess seemed to concur that this means the lengthwise centre of the tube axis, and I agree.  Mr Collins contended that there is lack of clarity as to the extent of the central portion, but I do not agree with this - the words are broad in scope, but they are not indefinite.

The next expression to note is "contact projection".  There was disagreement between the parties as to whether claims 1 and 16 are limited in scope to structures where the contact projections are integral with the tubular furnace member.  In particular, when describing the invention in the body of the specification, a reference is made to "integral contact projections", and in claim 11 the word "integral" is used in relation to another feature, not being a projection.  From this, Mr Collins argued, it should be inferred that the contact projection, as such, in claims 1 and 16 is not necessarily integral.  My view on this, based on the most applicable dictionary meaning of "projection" as a jutting out or an extension (Webster's Third New International Dictionary, 1976 edition) is that "projection" has implicit in it that the projection is integral with that from which it projects. The qualification of the projection as integral in the body of the specification may simply be to emphasise that aspect of its meaning.

The contact projections are defined in claim 1 as being "disposed on opposite sides of the furnace member".  Mr Collins interpreted this as meaning that the electrodes could be anywhere and of any number.  Once again, the applicant has cast its net widely, but not, in my view, as widely as Mr Collins has suggested.  I believe the wording used excludes from the scope of the claim those electrothermal atomization furnaces having contact electrodes located at each end of the furnace, notwithstanding that such electrodes may be present on the end portions of the side wall of the tube.  Such electrodes cannot be considered as being on opposed sides of the tube.  Similar comments apply to claim 16, which in any case is more limited in this aspect.

Claims 1 and 16 go on to define the existence of a cross-sectional area between contact surfaces on the contact projections and the furnace.  Its disposition is further defined, and its configuration is defined, by reference to result, namely it provides a reduced cross-sectional area along the central portion of the furnace member.  The word "reduced" is to be read as relative to the non-central portion or portions of the furnace member, not, as may appear at first glance, as relative to what the cross-section would have been had the reduced cross-section not existed, since this would be stating the obvious and hence be redundant.  My only possible qualm about adopting this construction is that when describing one of the preferred embodiments there is some slight suggestion that bores extending the full length of the furnace member may accomplish the so-called reduced cross-section, but this has not been sufficient to dissuade me from the approach I have adopted.

In relation to the word "reduced", I think that various dictionary meanings for it, such as "consolidate", "condense", "lessen" and "shrink" (Webster's Third New International Dictionary, 1976 edition) all convey the sense when something is reduced, it is not eliminated completely; that is, there is some residuum.

Ordinarily, every feature of a combination claim (which these are) would be considered as essential.  However, claims 1 and 16 each conclude with a feature that is not present in the other.  It would seem then that, prima facie, neither feature is an essential feature of the invention.  This is consistent with the remainder of the specification, in that nowhere is reliance placed on these features as being essential.  My feeling is, therefore, that these features ought properly be regarded as non-essential.  However, as shall be apparent, this has no ramifications for this decision.

Section 40

It follows from the fact that I have not encountered any insurmountable difficulties in placing a construction on claims 1 and 16, that I do not regard these claims as lacking in clarity.  The remainder of the opponent's section 40 criticisms of the specification relate to uncertain meanings of various words and phrases, and inconsistencies within the specification.  On no occasion does it appear to me that any doubt arises as to what the specification conveys, and the inconsistencies appear superficial rather than real.  The inconsistency most emphasised by Mr Collins concerned the disconformity between the invention defined by the independent claims and the paragraph bridging pages 6 and 7 of the specification and commencing

"Accordingly, it has been found that the foregoing and related objects are attained in an electrothermal atomization furnace having .........."

Despite this paragraph having some of the livery of a so-called consistory statement, on my reading of it it should not be taken as stipulating any of the features in it to necessarily be essential features of the invention.  There is no strict requirement for a specification to contain a consistory statement - see Welch Perrin & Co v Worrel, 106 CLR 588.

I have already dealt with one apparent inconsistency raised by Mr Collins, that of the integral projection electrode.  Another concerned the use in this paragraph of "furnace body" rather than "furnace member", particularly its use in conjunction with the expression "central portion", which has also been dealt with previously.  Also, "central portion" appears to be used in a somewhat different sense in the description of the preferred embodiments.  These appear at the very most to be no more than instances of slightly careless drafting.  Certainly, I see no basis for Mr Collins' assertion that "the specification is abysmal in its ability to inform the instructed reader".

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

Prior Publication and Novelty

Before considering the specifics of the case put forward by the opponent in relation to this ground, it is necessary to first consider an issue of more or less procedural nature raised by the applicant in relation to the type of evidence adduced by the opponent on publication and novelty.

The opponent has put in evidence a number of documents upon which it relies as anticipating the present invention, but has not provided expert evidence as to the meaning or relevance of those documents as citations.  The applicant argues that without such evidence, the opponent cannot establish its case.  Mr Collins, on the other hand, contended that a tribunal of this type, once informed of the state of the common general knowledge and the meaning of technical terms in the art, is competent to place its own construction on patent documents.

The construction of documents is always ultimately the responsibility of the hearing officer.  To quote from Blanco White, Fifth Edition, 4-105:

"The question whether a claim has novelty over what is disclosed in an earlier document is primarily one of construction of the two documents, once the court has been put by evidence of the state of the art into the position of a skilled reader of them.  For this purpose the earlier document must be construed in the usual manner, but as of its own date; that is to say, its meaning must be the meaning it bore at the date when it was written.  Just as in the case of infringement, however, the further question, whether or not what the prior document ought to be regarded as disclosing is or is not substantially within the claim, is a question of fact."

This also holds true in case of a tribunal.

The amount of evidence put forward by the opponent as to the state of the art may not be particularly voluminous, but it is ample for the purpose of a proper determination of the novelty of the present invention against the cited publications.  While the present invention is in a technically sophisticated art, the subject matter of the invention is not technically demanding and may be readily understood by anyone having only a basic scientific or engineering background.

Turning now to the 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 this test to the documents cited by the opponent, all bar two may be disqualified on the basis that they are end contact devices, and hence lack the essential feature of contact projections on opposite sides of the furnace member.  The two which do not belong to that category are United States Patent 4407582 and Australian patent application 63188/86, both of which were published before the priority date of the claims in suit.

United States Patent 4407582 in one embodiment has two fork-like electrodes located on opposite sides to one another of a tubular furnace member.  The prongs of the forks form gaps at the axially central region of the furnace member.  A second embodiment has an electrode which extends almost, but not completely, around the furnace tube along its whole extent, but only contacts the furnace tube at its ends.  In my view, this disclosure fails to anticipate the opposed claims, because while the claims require, as an essential feature, a reduced continuous cross-sectional area at the central area (that is, some cross-sectional area at the central portion), the disclosure has no cross-sectional area here at all, unless one is a sufficient distance from the furnace tube, in which case there is no reduced cross sectional area.  US 4407582 teaches away from there being a continuous cross-sectional area at the centre portion of the furnace member, as exemplified by the following quote:

".....the electrode support holders support the graphite furnace tube 12 at the ends thereof rather than at the sample containing center......"

Clearly, rather than meeting the "clear and unmistakeable directions" criterion set down in the various authorities, this disclosure leads away from the invention.

Australian patent application 63188/86 is regarded by the opponent as being its most telling piece of prior art.  In one of its embodiments it discloses a furnace tube having contact pieces on either side of it.  The side of each contact piece contacting the tube may be described as being crenellated, so forming equi-sized, equi-spaced gaps along each side of the furnace tube.  As with US 4407582, this document seems not to disclose an arrangement having a reduced cross-sectional area continuously along the central area, this being an essential feature of the invention defined by the claims in suit.  I am unable to perceive any cross-section that is either continuous or reduced in a central portion of the device.  If one takes the central gap as being co-extensive with the central portion, then there is either no cross-section or else no reduced cross-section relative to the non-central portion(s), depending on distance from the furnace tube.  If one regards the central portion as being of greater axial extent, then because the gaps are equi-sized and eqi-spaced along the furnace member, then no reduced central portion relative to the non-central portions is discernible.

I find that the invention is not lacking in novelty over the prior published documents in the 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 and Matsoutek 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 and Matsoutek 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 the evidence of Jordan and Matsoutek to carry considerable weight.

Mr Collins, in turn, questioned the value of the evidence of Jordan and Tamm and Roedel on common general knowledge, given that all three were located overseas at the time of making their declarations, and all 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 and Roedel is more problematical, since they do not appear to have ever been in Australia, and I think their evidence on common general knowledge, at least, is of little probative value.  This does not necessarily apply to other aspects of their evidence - see W R Grace & Co V Asahi Kogyo, (supra).

In the upshot, the parties' positions on the state of the common general knowledge, at least insofar as it impacted on this matter, did not differ greatly.  In claim 1, there seems no question that every integer was well known.  Indeed, the entire combination of integers except for there being a void means providing a reduced cross-sectional area continuously along the central portion of the furnace member seems to have been common general knowledge, since each integer serves a role well-recognized as being important in the overall operation of the device claimed.  Moreover, it appears from the evidence in this matter that temperature distribution along the furnace member was a long recognized problem, as was the solution of shaping the contact electrode carrying the heating current to achieve a desired result.  It seems that what the invention defined by claim 1 does is select from a range of possibilities which would present themselves to the skilled workman in the field, if not immediately at least after some routine trial and error (Van der Lely v Ruston's Engineering, (1985) RPC 461). Therefore, I am lead to conclude that the invention defined by claim 1 is obvious.

Claims 2 to 15 appended to claim 1 more narrowly define the configuration and disposition of the contact projections.  As in the case of claim 1, I do not perceive anything defined in these claims which would not be obvious to the skilled workman in the field.  Claim 4 introduces the concept of the voids being constituted by bores in the contact projections, and it appears this approach may have advantages in terms of the manufacturing of the device.  However, the use of internal voids appears well known in the prior art, and to produce these by boring would once again appear to be something which would readily occur to the skilled workman as being among the possibilities open to him.  For example, in application 63188/86 (supra) it is stated:

"The apertures are worked into the contact pieces as appropriate by boring, sawing or milling."

Independent claim 16 introduces an additional feature over claim 1 of:

"in which said tubular furnace member includes an inner body for receiving a sample to be analyzed, said inner body being heated indirectly through the radiation of the furnace member."

The evidence establishes that the use of such inner bodies in the environment of the claim is common general knowledge.  For example, Mr Jordan states:

"As he [Dr Matousek] rightly points out, Perkin Elmer were the first manufacturer to release a commercially available platform and this technique is now in common use."

That the inner bodies receive at least some heat through the radiation of the furnace member is, I think, an intrinsic characteristic of their physical form.  The additional feature of claim 16 does not seem to add anything inventive over what I have already determined is obvious, and therefore claim 16 is also obvious.

The comments above in relation to claims 2 to 15 are also applicable to claims 17 to 21.

I therefore find that every one of the claims 1 to 21 of the specification is obvious and lacking in an inventive step.  I do so taking full account of the perils of ex-post facto analysis drawn to my attention by the applicant.  While it seems the inventors may have devised an elegantly designed piece of equipment, it is not as though they were starting with a blank canvas (assuming the inventors to be persons skilled in the art).  Mr Hess has conceded that there is a lot of known art: so much so, it would seem to me, as to render the combination of integers claimed "very plain", and therefore obvious (General Tire & Rubber Company v Firestone Tyre and Rubber Company, (1972) RPC 457).

Conclusion

I have found that this opposition succeeds on only one ground, namely, that the invention is obvious and does not involve an inventive step.  However, I am not certain that there is no patentable subject matter disclosed in the specification, and it may be possible for the applicant to amend its specification in such way that it is no longer subject to its present short-comings.  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 a quarter 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 in terms of the grounds established, but was completely successful in terms of the proportion of claims in relation to which the opposition was upheld.  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 three quarters 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