Buxton Micrarium Limited v Optech International Limited

[1993] APO 55

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 601623 in the name of BUXTON MICRARIUM LIMITED

Title:    Microscope Viewing Arrangement

Action:    Opposition by OPTECH INTERNATIONAL LIMITED under section 59 (Patents Act 1952).

Decision:    Issued            . 

Claim 1 found to be not clear. Claims 1 and 2 not novel on the basis of an article in New Scientist. Inadequate evidence provided in relation to certain other alleged anticipations.

Applicant given an opportunity to amend.

In part as a result of the opponent's mode of providing the evidence in the opposition, no costs were awarded.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 601623 by BUXTON MICRARIUM LIMITED, and opposition thereto by OPTECH INTERNATIONAL LIMITED under section 59 (Patents Act 1952).

background

Patent Application 601623 was filed on 15 September 1988 under application no. 22234/88, claiming Convention priority from United Kingdom application GB8721878 filed on 17 Sept. 1987. Following examination, the application was advertised as accepted on 13 Sept. 1990.

The opponent filed a notice of opposition on 13 Dec. 1990, and subsequently served their evidence in support on 13 March 1992. The evidence in answer was served on 12 June 1992, and evidence in reply was served on 10 Nov. 1992.

On 25 November 1992, the applicant advised the opponent and the Commissioner that they wished to adduce further evidence, and supplied the opponent with a draft declaration intended to be served as the further evidence. Subsequently the matter of the further evidence was set for a hearing, and a delegate of the Commissioner issued a decision on 6 May 1993 allowing the further evidence to be adduced. The opponent, in accordance with the terms of that decision, filed evidence in reply to that further evidence on 23 June 1993.

The opposition as heard in Melbourne on 13 August 1993. The applicant was represented by Mr J Christiansen (patent attorney of Carter Smith & Beadle, Camberwell); the opponent was represented by Mr K Leslie (patent attorney of Davies Collison Cave, Melbourne).

As the application was both applied for, and advertised as accepted, before the commencement of the Patents Act 1952, the opposition is governed essentially by the provisions under the 1952 Act.

The notice of opposition lists all grounds available; at the commencement of the hearing the opponent stated that they sought to rely only on the grounds of prior publication, manner of manufacture, obviousness, novelty, and section 40. With reference to the ground of obtaining, the opponent noted that if certain amendments were to be made, they would want to argue the matter of obtaining. Following some discussion, the parties agreed that it was not appropriate to argue obtaining at this hearing. Finally, on the matter of anticipation, the opponent sought to rely on certain only of the documents raised in evidence.

The Specification

The specification commences as follows:

"This invention relates to microscope viewing arrangements.

Microscopes are fascinating but often delicate instruments that can help stimulate interest in matters scientific or biological in those who have no adequate training, or even responsibility, such as small schoolchildren, to be able to use them properly. To foster such interest has been developed the concept of the micrarium, which is essentially a museum or exhibition of microscopy. Despite supervision, however, the instruments are at risk, at least of becoming mis-adjusted and requiring constant attention.

The present invention provides a microscope viewing arrangement which avoids major risks, yet allows viewers to have control over the microscope."

Following thereafter is a consistory statement in the following terms:

"A microscope viewing arrangement adapted for exhibition use comprising a console enclosing a microscope arrangement and affording a viewing position, remote focussing means operable from the viewing position, and a lamp arrangement adapted to illuminate a specimen position, the focussing means, the lamp arrangement and the specimen position being, in use, inaccessible from the viewing position, and information display means adapted to display information relevant to a specimen mounted in the specimen position and to be changed with such specimen."

Shortly thereafter, the specification states:

"The arrangement may comprise specimen magazine means controlled from said viewing position and adapted to hold a plurality of specimens and position them individually in said specimen position. Said information display means  may be interconnected with said specimen magazine whereby to display information relevant to each individual specimen when located in said specimen position."

(My emphasis added.)

The specification then describes several embodiments of the invention.

The principal embodiment consists of a projection microscope located behind a panel, projecting an image onto a screen. Control means are provided adjacent the screen to focus the microscope, and to change slides within the microscope. The microscope, lamp, and the focussing means on the microscope, are physically inaccessible to the user. An information display panel is also adjacent the screen; the information on the display panel is changed in accordance with the slide being projected - such as by selectively illuminating parts of the display panel, by selectively projecting a film transparency, or by selectively displaying a video image.

Another embodiment uses a traditional microscope arrangement having an eyepiece through which the user looks - but with all other parts of the microscope (apparently including the focussing mechanism) physically inaccessible to the user. Again, plural slides are viewed by the microscope, and the information on a display panel adjacent the eyepiece is displayed in accordance with the slide being viewed.

A third embodiment describes the use of a back-projection screen for a projection microscope.

The specification concludes by stating that:

The arrangements herein described ... generally provide interesting, controllable microscope displays with full facility for focussing and changing specimens while providing information about the same, without exposing delicate mechanisms or electrical connections or specimens to damage by untrained viewers and especially younger viewers."

Thereafter follows the statement of claims, consisting of one independent claim (in the terms of the consistory statement above), 17 dependant claims, and an omnibus claim.

There are three matters of particular note.

Firstly, neither the consistory statement, nor the introductory statements, indicate that the microscope is required to have a mechanism for selectively viewing one of several specimens; indeed, the first reference to provision for viewing plural specimens is in the context of an optional feature of the invention. I thus conclude that the invention includes microscopes displaying only one specimen and not involving any user selection of specimens to view.

Secondly, the display means is stated to be "adapted to ... be changed with such specimen". I observe that the nature of this adaption is inherently dependant upon:

whether the microscope provides for viewing one specimen only, or for the user to selective view several specimens; and

if the microscope provides for selective viewing by the user, whether there is a working interrelationship between the mechanism for selective viewing, and the arrangement for changing the display.

I note that both the description (in its most general sense) and the claim fail to require or define any working interrelationship between the display means and the remainder of the device. As a result I conclude that in the invention defined by claim 1 the display means does not materially affect the way the remaining features of claim 1 work; that is, the display means in claim 1 is not an essential feature of the invention claimed. Additionally (and by way of illustration) I note that an arrangement such as a blackboard adjacent the screen would appear to satisfy the requirements of this feature as claimed in claim 1.

Thirdly, having regard to the stated objects of the invention and the description as a whole, I consider the features of the microscope being enclosed by a console, and the specimen position, focussing mechanism on the microscope, and the lamp, all being located such that they are inaccessible to the user of the microscope, to be essential to the invention - for it is by these features that the objects of the invention are attained.

The Evidence

The evidence in support of the opposition consists of a declaration by F C L J Mestrom, and is accompanied by 10 exhibits (including a demonstration video). This declaration can at best be described as "hearsay"; many paragraphs include phrases such as "I am advised by ..." and "I have confirmed with...".

The evidence in answer consists of a declaration by Janet Carter (the widow of the inventor). There is also a declaration by her patent attorney drawing attention (inter alia) to the hearsay nature of the declaration in support, and to the fact that Mestrom declares that his association with the opponent began in February 1988, which is 12 months after the date of the death of the named inventor.

The evidence in reply consists of a further declaration by Mestrom, and declarations by Kerry Peter Spackman and Lannes Fullerton Johnson (directors and co-founders of the opponent). Spackman and Johnson both declare (inter alia) that:

"I have also read the Statutory Declaration of [Mestrom] filed in these proceedings, and agree with all the statements made in it, both as they relate to technical matters and to the history of matters relating to Microworld."

without necessarily declaring those relevant matters. The declarations include a number of exhibits, including an article in the 28 March 1985 issue of the magazine New Scientist.

Subsequently the applicant requested leave to adduce further evidence on the basis that the evidence in reply included for the first time declarations by Spackman and Johnson, and as a result it was considered essential to place in evidence a response. That response consists of a short declaration by Janet Carter, and includes the observation:

"Although all three of the witnesses state in their declarations that there was a public disclosure of the subject matter of the patent in suit before its priority date in Australia, neither Messrs Johnson, Spackman nor Mestrom provide any supporting evidence."

The opponent's evidence in reply to the further evidence consists of:

a declaration by a librarian establishing the publication date in Australia of the New Scientist article;

a declaration by a Mr Hugh White relating to an exhibition in Sydney in 1986;

a declaration by a Mr Ronald Jowett Oldfield, relating to the 35th and 36th editions of "Watsons Microscopes and Accessories" catalogues of circa 1930; and

a declaration by a Mr Fullerton, including (inter alia) a brochure concerning a 'Hematrack' device, and a letter from the manufacturer stating that several of these devices had been sold in Australia.

Evidence strictly in reply

At the commencement of the hearing the applicant submitted that the evidence in reply to the further evidence was not strictly in reply. In response, the opponent submitted that, because of the applicant's assertion in the further evidence that there was no supporting evidence by the opponent regarding public disclosures, they were entitled to produce the evidence provided.

In my view, the only material in the evidence in reply to the further evidence that is strictly in reply is the declaration establishing the publication date of the New Scientist article (which article had been referred to previously in the evidence). The other material has, in my view, been provided in an attempt to rectify deficiencies in the opponent's case which have been identified by the applicant, rather than to contradict the applicant's evidence. I do not believe that an assertion by an applicant that an opponent has not established their case entitles the opponent to reply with completely new evidence in the opposition, and in this respect I note the view expressed by Graham J in Ernest Scragg & Sons Ltd.'s Application [1972] FSR 219 - viz:

"To my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case. The applicant can then deal with the matter in the normal way, and a lot of time is saved, and the Office can get on with deciding the case. If the opponent does not do that and waits until he sees what the applicant says, then obvious difficulties will result and oppositions will inevitably be drawn out and never finished."

"So here, in my judgement, it should have been obvious to the opponents from the start that if they were going to succeed .... they must in the first instance put in the evidence which they are now seeking to put in reply"

and:

"When the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent's case, seek to adduce additional evidence to strengthen his own case.",

The exhibition, the Watson catalogue, and the Hematrack device (the relevant subjects of the evidence in reply) are nowhere alluded to in any of the previous evidence. They appear to have been provided in response to the applicant's assertion that there was no supporting evidence regarding alleged public disclosures. In my view the opponent ought to have known that to establish anticipation of the invention it would be necessary to prove relevant publication in Australia. The evidence in reply to the further evidence is in my view no more than an attempt to strengthen the opponent's case, rather than evidence to answer the evidence served in the further evidence. As a result I do not consider the evidence relating to the exhibition, the Watson catalogue, and the Hematrack device, to be strictly in reply.

At the hearing the applicant indicated that they preferred for all the evidence to be argued on its merits in the hearing, and that they did not wish to file any further evidence; the hearing proceeded on this basis. The applicant also requested that I take account of this matter in any award of costs.

Weight of certain evidence

As indicated above, the evidence by Mestrom filed in support of the opposition is a declaration which is fundamentally hearsay in nature. I note that in paragraph 4 of this declaration Mr Mestrom declares:

"MICROWORLD also printed a booklet ... which I am advised by Dr Lannes Johnson, one of the directors and co-founders of Microworld was printed in June or July of 1987 and was distributed internationally immediately including Australia."

which clearly imports an assertion that the booklet was distributed in Australia in July or August 1987 (which is before the priority date claimed by the present application - ie 17 Sept. 1987.)

However, in his declaration forming part of the evidence in reply (and following some material filed in the evidence in answer) Mestrom declares:

"... After further investigation, it is now clear that the booklet was not sent until November 1987 and this has been confirmed by Dr Lannes Johnson."

That is, distribution to Australia occurred several months after the claimed priority date.

Furthermore, both Messrs Johnson and Spackman declare, in declarations executed prior to Mestrom's second declaration (by 2 days, and 1½ months, respectively):

"I have also read the Statutory Declaration of [Mestrom] filed in these proceedings, and agree with all the statements made in it, both as they relate to technical matters and to the history of matters relating to Microworld."

That is, both Johnson and Spackman declare that they agree with Mestrom's initial assertion of the publication date of the booklet. Furthermore, Johnson has declared his agreement only 2 days before Mestrom declares that he has confirmed with Johnson that the distribution occurred at the later date.

In opposition matters the opponent bears a heavy onus to establish that the alleged relevant disclosures occurred before the relevant priority date. Having regard to the nature of the declarations provided by the opponent, and the matters I have noted above, I am not prepared to accept any assertions of publication dates in the declarations of Mestrom, Johnson and Spackman as proof of publication - unless there is confirmatory evidence provided independently of these three declarants.

Submissions

The opponent raised a number of matters relating principally to the interpretation of claim 1, and to certain dependant claims. On the matter of anticipation, the opponent argued that the invention claimed was anticipated:

-as a result of prior use in New Zealand, by way of disclosure through an offer for sale made in Australia;

-by a device called Hematrack, which was allegedly sold in Australia;

-    an exhibition in Sydney;

-by an article in the New Scientist magazine; and

-by certain entries in the 36th edition of Watson Microscopes and Accessories catalogue.

The applicant submitted that there were no section 40 problems with the claims, that the New Scientist article did not disclose the invention claimed, and that there was insufficient evidence of publication with regard to the other matters.

Decision

Section 40

The opponent submitted that claim 1, and certain dependant claims, were unclear.

The first matter of note is the arrangement of the focussing means. The claim first refers to focussing as:

"remote focussing means operable from the viewing position",

but subsequently refers to:

"the focussing means .... being, in use, inaccessible from the viewing position"

I note that the description refers to a 'remote focussing means 14' in the context of a module which focuses the microscope and which is remote from the viewing position. The remote focussing means is controlled by the user, by way of a control device adjacent the screen.

In my view, the phrase 'remote focussing means' is ambiguous in the sense of whether the focussing means is remote from the microscope or the viewing position. Furthermore, the two phrases above are contradictory, in that on the plain meaning if something is operable it is 'accessed' by that operation. Consequently I agree with the opponent that claim 1 is not clear.

The opponent also criticised claim 1 on the basis that:

-it states that the console encloses the microscope, but in the first embodiment the microscope is not 'fully' enclosed;

-although the claim refers to affording viewing position, it does not provide for anything being presented for viewing;

-with respect to the information display means, it was ambiguous as to whether the display means, or the information thereon, is to be changed with the specimen.

In my view, and following the principles of purposive construction, the claim suffers no lack of clarity in these matters - any lack of clarity derives solely from applying a purely literal approach to construing the relevant portion of the claim. Thus, in the context of the claim, I take 'enclose' to mean sufficiently surrounded such that the microscope is inaccessible to the user; there is nothing in the claim or specification to suggest anything other than the microscope image is viewed at the viewing position; and whether or not it is the display means, or the information on the display means, that is changed would not seem to matter in the context of the invention.

Similarly, I am satisfied that on a purposive construction there is no lack of clarity present in the dependant claims.

Anticipation by offer for sale

The opponent submitted that the invention had been anticipated as a result of an alleged offer for sale in Australia of a device being developed by the opponent in New Zealand. To this end, the opponent sought to establish the state of development of their device in New Zealand at the time the offer for sale was made, and the offer for sale.

The only evidence provided of the offer for sale is a letter to the opponent by a Mr. W M Burch of the National Science and Technology Centre in Canberra. The letter is dated 15 May 1991, and refers to:

-a colleague (Stuart Kohlhagen) learning of the opponent's developments sometime in June 1987;

-Kohlhagen visiting the opponent in Auckland early in July 1987;

-subsequently the Centre making a budget submission to a sponsor, for a possible purchase of the device;

and includes a statement that:

"there was never any doubt in our minds that .... we were negotiating to buy robotic microscopes whose visual display pathway was not by conventional optics, but by high resolution colour video."

With regard to this evidence, I observe:

-the information relied upon is contained in a letter to the opponent. The author of that letter has not provided the information by way of declaration;

-the letter was written some 4 years after the events referred to therein;

-the events referred to in the letter occurred no more than 3 months prior to the claimed priority date;

-there is nothing provided by the author of the letter by way of independent or documentary substantiation of the matters referred to therein;

-the statement by the author of what was offered for sale falls a long way short of correspondence with the features of the invention claimed;

-the author is not the person who undertook the visit, and no material has been provided that is in any way attributable to Kohlhagen (who made the visit); and

-although there is an alleged offer for sale, no documentary material relating to that alleged offer has been provided.

I consider the evidence of the alleged offer for sale falls well short of establishing that the invention claimed was anticipated by an offer for sale made before the relevant priority date. Additionally I specifically note that I am not prepared to accept the letter of Burch to the opponent, written in unknown circumstances and without any of the sanctions associated with a declaration, as establishing any material facts in this matter to a level that I can rely upon them.

The Hematrack Device

The opponent argues that the invention claimed is anticipated by the 'Hematrack' device, the evidence of which was raised for the first time in the evidence in reply to the further evidence. The evidence relating to the Hematrack device consists of:

-a technical brochure describing in some detail the Hematrak 480 device (several pages of which were referred to during the hearing as illustrating the features of the invention claimed); and

-a letter from the agent for the device stating that two devices were sold in Australia (in 1979 and 1982).

This evidence is particularly problematic. Firstly, no evidence has been provided to establish the date of publication in Australia of the technical brochure. As a result I do not consider that I can rely on that brochure per se to find that the invention has been anticipated.

Secondly, with respect to the alleged sales of the device, no evidence has been provided of the details of the machines actually supplied. Nor is there any evidence to the effect that the devices allegedly sold are in fact represented by the relevant portions of the brochure.

Thirdly, the evidence relating to the sale of the device consists of a letter to the opponent written by the agent, advising of the sales. The opponent has exhibited that letter, under oath stating that it is a letter from the agent. Similar to before, I am not prepared to accept the letter of the agent to the opponent, written in unknown circumstances and without any of the sanctions associated with a declaration, as establishing any material facts in this matter to a level that I can rely upon them.

As a result, I am not satisfied that the opponent has established that the information contained in the technical brochure was published in Australia before the relevant priority date of the claims, nor established that what was allegedly sold in 1979 or 1982 corresponds to the information contained in the brochure.

Consequently (and irrespective of its disclosures) I am unable to conclude that the claims are anticipated by this material; I therefore give no further consideration to this material.

The Exhibition in Sydney

The opponent's evidence in reply to the further evidence for the first time provided evidence in relation to an exhibition held in the Powerhouse Museum in Sydney, in late 1986. That evidence includes photographs of a microscope arrangement used at the exhibition.

The photographs clearly show that the focussing means is the normal focussing means of a microscope, and is in no sense remote. Furthermore the microscope is attached to a console and surrounded by a booth - there is not a console enclosing the microscope. Finally the specimens, although apparently located in a recess, do not appear to be inaccessible to the user. Consequently I find that not all the essential features of the invention have been disclosed in the device shown in this evidence - that is, this evidence does not anticipate the invention claimed.

The New Scientist Article

The applicant for the present invention operated a facility called a 'micrarium' in Buxton (United Kingdom) for many years prior to making this application. The 28 March 1985 issue of New Scientist featured the 'Buxton Micrarium' in a two-page article (pp 38, 39). Evidence has been provided that establishes publication of that article in Australia in 1985, well before the priority date.

The following extracts from the article are relevant:

"[Carter] is particularly incensed by the unimaginative attitude of museums, which might typically put a conventional microscope beneath a glass cover, without proper lighting, and invite people to rub their noses in the greasy patch left by previous visitors.

"To solve this problem, Carter set out to design a microscope that would throw a large image onto a screen ...

"You do not see the microscopes. They are tucked away overhead, behind the elegant wooden panelling. In each one, a 100-watt lamp directs light down onto a large, angled screen at waist level. Lenses giving magnifications of 50, 90, or 170 click in and out of the beam. A carousal carries up to eight conventional specimen slides and rotates them into the beam one by one. You can select a slide, change magnification, focus the picture and move it about, all by simple remote controls and without fear of damaging anything. The projected images are big, bright and clear. "

Comparing this disclosure with claim 1, I note:

-the wood panelling appropriately corresponds to a console;

-the microscope, lamp, specimens, and focussing means are all inaccessible to the user (being behind the panel); and

-the focussing is achieved with 'remote controls'.

Having regard to my conclusions above that the display means as not an essential feature of the invention of claim 1, I conclude that all the essential features of claim 1 have been disclosed in the New Scientist article.

The relevant test for novelty is the "reverse infringement test" of Meyers Taylor Pty Ltd v. Vicarr Industries Ltd, ( 1977) CLR 228 where Aiken 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 anticipation would, if the patent were valid, constitute an infringement."

I note that it is well known in patent law that the test for infringement requires that all essential integers of the claimed invention must be taken by the alleged infringing article. As I have found all the essential feature of claim 1 were disclosed in this citation, claim 1 is not novel.

Having found that claim 1 is not novel, I now consider the dependant claims. In this respect I note:

-claim 2 adds the feature of a specimen magazine, controlled by the user. This feature is disclosed in the citation, and the invention claim is likewise not novel;

-claim 3 provides for interconnection between the display means and the specimen magazine of claim 2. That is, claim 3 provides a working interrelationship between the display means and the remainder of the microscope.

Although the New Scientist article clearly shows display means in an accompanying picture, there is nothing that suggests any interconnection between the display means and the selection of specimens.

Consequently I am satisfied from the material before me that the invention claimed in claim 3 is novel.

I note here that in the evidence in answer, the applicant included a copy of a letter from the opponent to the inventor (exhibit JC3), which includes material relevant to the opponent's devices. The letter is dated 12 Dec. 1986 - well before the priority date. At the bottom of the first page of an accompanying document entitled INTRODUCTION & OVERVIEW TO THE MICROWORLD OF INNER SPACE LTD it is stated:

"The operator selects [the specimen] ... The image from this is then sent to the right-hand screen on this console, which is a very high resolution colour monitor....

"At the same time, on the left-hand screen ... the textual information associated with the slide will be presented ..."

which appears to disclose the linking of the microscope image (albeit a video image) with the information display.

However this document is not shown to have been published in Australia before the priority date. Nor in any case is there any basis for reading the New Scientist article in combination with this document. Thus the document is not relevant to the novelty of claim 3.

-claims 4 to 18 have, in the main, a generic dependancy on the preceeding claims through to claim 1. If the features of claims 2 and 3 are not relied upon to establish a novel claim, it is not readily apparent to me which of the features added by claims 4 to 18 might be promoted to be an essential feature of the invention. Consequently I will not consider the novelty of these claims any further at this time.

-having regard to my conclusions in respect of claim 3, I am satisfied that omnibus claim 19 is novel.

The Watson Catalogues

In the evidence in reply to the further evidence, the opponent sought to rely on two entries in a commercial catalogue entitled Microscopes and Accessories, by W. Watson & Sons, Ltd, London.

The catalogue was apparently an annual catalogue. The opponent seeks to rely on the 36th edition of this catalogue. A Mr Oldfield declares that "it is impossible for me to prove the date of receipt of the 36th edition", but presents circumstantial and inferential evidence to the effect that the 36th edition was publicly available in Australia well before the relevant priority date (the probable date of printing being in the 1930's). I also note that the introductory pages of the catalogue give the addresses of 6 agencies in Australia. I accept that the 36th edition was publicly available in Australia before the earliest priority date of the present application.

The opponent seeks to rely on two forms of a 'Museum Microscope' - the 'Waterhouse Pattern' as shown on page 98, and the 'No. 3 Pattern' on page 99.

With respect to the Waterhouse pattern I note the catalogue states "The Eyepiece of the Microscope projects outside the case, and fine focussing is effected by rotating the eyepiece in a spiral slot". This focussing arrangement cannot be said to be remote from either the viewing position or the microscope. Also, the location of the light source is not indicated, although there is a mirror at a conventional location to reflect light into the microscope. There is nothing in the catalogue entry to indicate that the light source was inaccessible to the user; indeed the arrangement would seem most consistent with the user having to position it to obtain proper illumination through the microscope. Thus two of the essential features of the claimed invention are not disclosed in this citation - that is, (and applying the reverse infringement test for novelty) the Waterhouse Pattern microscope does not anticipate the invention claimed.

The 'No. 3 Pattern' is described in the following terms:

"... the Microscope consists of a teak (or mahogany ..) containing case having at the back an aperture to admit light from a lamp mounted exterior to the case. Inside ... the case is mounted a substage ... . Mounted on a central pivot ... is a revolving wheel carrying at its periphery ... prepared specimens ... ."

"... within the case is mounted a microscope body, fitted with rackwork coarse and lever fine adjustments. On the front surface of the case will be seen the handle controlling rotation ..., also a roughened surface ivorine plate (easily washed) upon which may be written the names of the specimens mounted within and their order of examination."

"To set up for use:- ... The fine adjustment only is available to the observer after the case has been closed."

In my view, the "No. 3 Pattern microscope" discloses all but one of the essential features of the invention claimed in claim 1 - in particular I consider the box to constitute a 'console', and the arrangement of the lever fine adjustment (only) being available when the box is closed is consistent with the focussing arrangement as claimed.

However the arrangement of the device is such that the lamp is external to the box; the diagram appears to show the socket for the lamp attached to the top rear of the box. The location of the lamp, and/or the size of the box, cannot be said to be such that the lamp is inaccessible to the user. As I have noted above, I consider the placement of the lamp such that it is inaccessible to the user, to be an essential feature of the invention. Consequently, and following the reverse infringement test for novelty, claim 1 is not anticipated by the 'No. 3 Pattern' microscope.

Obviousness

At the hearing the opponent did not press the matter of obviousness. However it is appropriate for me to observe that the common general knowledge in the art in Australia at the relevant date has not been established - and in particular it has not been shown that any of the citations were part of the common general knowledge. That is, there is no basis for a finding that the invention claimed is obvious - Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253.

Manner of New Manufacture

Although the opponent did not argue the matter, they submitted that the invention claimed was not a manner of new manufacture. This approach has been followed by the Federal Court in a number of recent cases, most recently in the decision of the full bench of the Federal Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (unreported, issued 26 Aug 1993). In that decision, Lockhart J (with Northrop J concurring) stated:

"Although grounds of objection in patent law sometimes overlap, objections of want of novelty and obviousness are nevertheless essentially distinct from each other. Likewise, the requirement that a patentable invention be a manner of new manufacture is inherently distinct from the requirements of novelty, lack of obviousness, involving an inventive step and utility .."

and:

"As mentioned earlier the expressions "manner of new manufacture" and "manner of manufacture" in this branch of the law under the 1990 Act mean the same thing and involve the same concepts as they have been understood and developed since 1623 when the Statute of Monopolies was passed."

The opponent made no submissions (either based on any of the well-known concepts previously understood, or otherwise), that the invention claimed was not a manner of new manufacture. Additionally I do not consider the subject matter of claim 1 to be such that it is manifestly not a manner of new manufacture. Consequently I do not uphold the opposition on this point.

Conclusion

I have found the opposition succeeds on the basis of lack of clarity of claim 1, and lack of novelty of claims 1 and 2 on the basis of an article in New Scientist. As I believe these objections may be overcome by amendment, I direct the applicant propose amendments within 60 days of the date of this decision.

As I mentioned at the commencement of this decision, the opponent foreshadowed the possibility of an objection of obtaining arising if certain (unspecified) amendments were proposed. The opponent will have an opportunity to raise this issue (if relevant) with the applicant by providing comments pursuant to regulation 10.2(7) to any propposed amendment - although obtaining is not a criterion for allowability of an amendent under section 102 of the Act. They will also be entitled to be heard on the matter (if relevant) after any amendments are allowed, before any decision to seal the application is made.

Costs

In actions before the Commissioner, costs usually follow the event.

In the present case however, the presentation of the evidence by the opponent has been less than desirable. The evidence in support was little more than hearsay, with the persons who perhaps ought to have provided the evidence in support doing so in the evidence in reply. Also, two declarants (at least one of whom was apparently in a position to know of the correct facts) concurred with an earlier hearsay declaration containing a significant error. Furthermore, the evidence in reply gave justifiable reason for the applicant to seek leave to adduce further evidence. Finally, the evidence in reply to the further evidence was in the main new evidence, and not evidence in reply to the further evidence.

I am of the view that the opponent, by their mode of providing evidence in this opposition, are not entitled to any award of costs in respect of evidence; indeed in many respects should have costs in respect of the evidence awarded against them.

Combining this with the usual situation that costs normally follow the event, I consider that I should make no award of costs - each party bearing their own costs.

D. HERALD

Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Carter Smith & Beadle, Camberwell

Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne