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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Buxton Micrarium Limited v Optech International Limited

Details

AGLC: Buxton Micrarium Limited v Optech International Limited [1993] APO 55
Case: [1993] APO 55
Decision Date: 17 September 1993

CaseChat Overview and Summary

Buxton Micrarium Limited, the applicant, opposed a patent application by Optech International Limited on various grounds. The application concerned a microscope viewing arrangement, and the opposition was heard in Melbourne on 13 August 1993. The applicant was represented by Mr J Christiansen, and the opponent by Mr K Leslie. The applicant sought to oppose the application on the grounds of prior publication, manner of manufacture, obviousness, novelty, and section 40. The opponent, however, relied only on the grounds of prior publication, manner of manufacture, obviousness, novelty, and section 40. The opposition was governed by the provisions under the Patents Act 1952, as the application was applied for, and advertised as accepted, before the commencement of the Patents Act 1990.

The court found that claim 1 was not clear due to the ambiguous arrangement of the focussing means. The claim referred to both remote focussing means and inaccessible focussing means, which was contradictory. The opponent also criticized claim 1 for being unclear in other aspects, such as the enclosure of the microscope and the information display means. However, the court found that the claim was not unclear when interpreted in a purposive manner.

Regarding novelty, the court found that claim 1 was not novel due to an article in the New Scientist magazine published before the priority date. The article disclosed all essential features of the invention, including the remote focussing means and inaccessible microscope components. However, claim 3 was found to be novel as there was no evidence of interconnection between the display means and the specimen magazine in the New Scientist article.

As for the other grounds of opposition, the court found that the opponent had not provided sufficient evidence to establish anticipation through an offer for sale, the Hematrack device, the exhibition in Sydney, or the Watson catalogues. Additionally, the opponent did not argue the matter of obviousness, and the court found that there was no basis for a finding that the invention claimed was obvious.

In conclusion, the opposition was successful on the basis of the lack of clarity of claim 1 and the lack of novelty of claims 1 and 2 due to the New Scientist article. The applicant was directed to propose amendments within 60 days of the decision. The opponent was not awarded any costs due to their mode of providing evidence in the opposition, and each party was to bear their own costs.

Orders