K E Developments Limited v ETP Semra Pty Ltd - [2003] APO 15

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 714501 in the name of K E Developments Limited

Title: Detector Devices

Action: Opposition under S59 by ETP Semra Pty Ltd

Decision: Issued 31 March 2003
Abstract

The opposition was unsuccessful on all grounds, which were non-compliance with section 40, lack of novelty, lack of inventive step and not being a manner of manufacture.
The section 40 particulars raised had no merit. All matters were easily understood when the specification was read as a whole.
The one document relied upon by the opponent for lack of novelty did not disclose an elongate light guide, or directing light along it. Thus, the claims were novel.
The claims had inventive step because the one prior art document relied upon taught away from substituting an elongate light guide for a lens in one particular arrangement shown in the document. This was notwithstanding the fact that elongate light guides were common general knowledge in the art.
The invention passes the "threshold of inventiveness" test and is a manner of manufacture. The invention is not obvious in light of what was known as set out in the specification.
Cost were awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 714501 by K E Developments Limited and opposition thereto by ETP Semra Pty Ltd under S59 of the Patents Act 1990.

BACKGROUND

Patent application 714501 was filed under the Patent Cooperation Treaty as International Patent Application PCT/GB97/01731 in the name of K E Developments Limited on 30 June 1997, and claimed priority from GB 9613728 filed on 1 July 1996.
Following examination, acceptance was advertised on 6 January 2000, and on 6 April 2000 ETP Semra Pty Ltd filed a notice of opposition. After various extensions of time allowed to both parties, all evidentiary matters were completed on 17 September 2002.
The substantive opposition was set down for a hearing in Sydney on 11 February 2003. Mr Robert Miller, patent attorney, assisted by Mr David Perkins, both of Spruson & Ferguson, Sydney, represented the opponent, whilst Mr Grant Adams, patent attorney, assisted by Mr Andrew Cale, both of Fisher Adams Kelly, Brisbane represented the applicant. Also in attendance were Dr Viv Robinson of ETP Semra Pty Ltd and Mr Grahame Wardall, Managing Director of K E Developments Limited.
GROUNDS OF OPPOSITION
The grounds for opposition alleged by the opponent were that the claimed invention was not a manner of manufacture, lacked novelty and inventiveness, and did not satisfy section 40(2) or (3) of the Act.
THE SPECIFICATION
The present invention relates to a detector device for detecting electrons emanating from specimens being examined by a scanning electron microscope.
In this art, instead of using light, electron microscopes use electrons to illuminate a very small specimen. Electrons are used because the wavelength of visible light is too large to be able to interact with these small specimens, while electrons, having a much smaller wavelength, can. The electrons are transmitted through, or reflected back from, the specimen, or, in some cases, "knock" an electron free from the specimen.
To be able to "see" the specimen, these emanating electrons need to be gathered and converted into a visible image. The usual way is to get the electrons to strike a scintillating material which gives off flashes of light when hit by the electrons. These flashes of light are then directed to a photomultiplier tube (PMT) which converts the flashes into large pulses of electricity to drive equipment such as television or cathode ray screens. The present invention is concerned with gathering the reflected (or "back scattered") electrons.
In the prior art, one detector system uses a solid, elongate ("finger-like") light guide on one end of which is a layer of scintillator material. The other end of the light guide is mounted at the input to a PMT. The scintillator layer is arranged to face the specimen, and any reflected electrons impinge upon the layer to cause it to emit light. This light then travels through the body of the light guide to its other end where it enters the PMT.
A problem with this type of arrangement lies in the thickness of the scintillator layer. The layer needs to be thick enough to capture, and generate light pulses from, most of the electrons that hit it. However, at the same time the layer needs to be thin enough to allow any generated light to pass through it and into the light guide.
The solution proposed is to place the surface of the layer of scintillator material at an angle "as though to reflect received electrons" (which have been back scattered from the specimen) along a light guide to the PMT. In this way, instead of being behind the layer, the light guide is located to the side of the layer. Thus, the PMT is "looking at" the "input side" of the scintillator layer, not the "output side" as in the prior art. Therefore, the light does not have to travel through the scintillator layer to get to the PMT, and is not attenuated by it.
At the hearing, in addition to the above problem, the applicant identified 3 other problems that they submitted the invention sought to overcome. While I have some doubts as to whether these "problems " would be considered as part of the inventive step considerations, they have no bearing on my decision and I will not consider them any further.
The specification ends with 10 claims, with one independent claim. This claim is as follows:
1.An electron-gathering light guide for attachment to a light magnifier, the guide comprising
an elongate light-guiding body mountable at one end at the magnifier, there being at the other end—the end to be inserted in use into the stream of electrons emanating from the specimen—an area-extensive electron receptor disposed so as to have a face angled as though to reflect received electrons along the body to the mounting end, and having on that face a scintillator layer at which, in operation, received electrons are converted to photons which are then radiated away from the input surface of the layer towards the light magnifier.
EVIDENCE
Evidence-in-support
The evidence in support consists of the following statutory declarations and accompanying exhibits:
·    A declaration by Dr Vivian Noel Edward Robinson, a director of ETP, with exhibitsVNER‑0 to VNER‑6
·    A declaration by Dr Clive E Nockolds of the Centre for Microscopy and Microanalysis in the University of Sydney, with exhibits CEN‑1 to CEN‑5
·    Two declarations by David Malcom Perkins of Spruson & Ferguson, with exhibits, DMP‑1, DMP‑1 and DMP‑2, putting into evidence declarations by librarians of the University of New South Wales and the University of Technology Sydney attesting to the availability of certain publications referred to by Drs Robinson and Nockolds.
Evidence-in-answer
The evidence in answer consists of the following statutory declarations and accompanying exhibits:
·    A declaration by Dr Alan Boyde, a professor in the Department of Anatomy and Developmental Biology at University College London, with exhibit AB‑1
·    A declaration by Michael John Cowham of Cambridge England, who is listed as the inventor of the present application, with exhibit MJC‑1
·    A declaration by Grahame Laurence Wardell of Cambridge England, managing director of K E Developments, with exhibit GLW‑1
·    A declaration by Andrew David Cale of Fisher Adams Kelly, with exhibits ADC‑1 and ADC‑2 putting into evidence two family members to the present application mentioned in the declaration of Mr Wardell.
Evidence-in-reply
The evidence in reply consists of the following statutory declarations:
· A second declaration by Dr Vivian Noel Edward Robinson
· A second declaration by Clive E Nockolds
DECISION
SECTION 40
At the hearing the opponent indicated that they would not make separate submissions on all the matters of clarity and fair basis, but, nevertheless, did press them as they were particularised.
The matters raised in the statement of grounds and particulars relate to fair basis, clarity and sufficiency. In each case, I cannot see any merit in the opponent's particulars. All are matters which are easily understood when the specification is read as a whole, as should be expected. While there may be some terms used that, strictly speaking, are not "industry standard", they present no problem overall. Indeed Dr Robinson, in his first declaration, makes the statement that these terms are "quite apparent to me from their described functionality, but may be unclear to a casual reader". This is an excellent statement of the level of disclosure required of a specification. It is addressed to people skilled in the art and not the "casual reader". I am of the opinion that the person skilled in the art would have no problem with the specification.
In saying this, I note that the submissions the opponent did make under this ground were in relation to the presence of some discussion in the evidence regarding the receptor face being defined as "angled as though to reflect received electrons along the body to the mounting end". It was raised that the applicant's declarants were inconsistent with their interpretation of this term depending on whether or not they were discussing the novelty citation(s). Inconsistent or not, reading the specification as a whole, I believe the meaning of this phrase is clear. I take this to mean that if the receptor face could reflect electrons, it is positioned so that any electrons that strike it would be directed down the elongate body to the other end. While I note that the opponent raised the fact that the drawings of the present application do not show "true" reflection (in the sense of the angle of incidence equalling the angle of reflection), it must be said that often in patent specifications the drawings are not to scale and not exactly correct in every detail. While my meaning is somewhat broader than the applicant's, from the specification as a whole it is my opinion that this is what the phrase means.
I also note that claim 1 defines "the input layer" of the scintillator layer with no precise antecedent previously in the claim. While the opponent made no objection to this, I would clarify that this surface is that surface that is struck by the electrons emanating from the specimen.
SECTION 18
NOVELTY
Despite the number of documents particularised under this ground, the opponent indicated at the hearing that they would be relying on only one. This is an article entitled "Backscattered SEM Using CdS Layer Scintillator" by R. Takahashi from Scanning Electron Microscopy, 1977, Vol. 1, pp 71-78 (hereafter "the Takahashi paper"). There is in evidence a declaration by Ngaire Pettit-Young, librarian at the University of New South Wales, attesting that this document would have been available to the public on, or shortly after, 22 February 1978. There was no dispute as to this date by the applicant. It is a relevant document for the purposes of assessing novelty.
While this document is primarily concerned with a new scintillator material, at the end of the document there are shown two optical configurations that were used to carry the light from the scintillator material to the PMT. They are labelled, respectively, figure A-1 and figure A-2.
Figure A-2 could be said to show an arrangement that, in the present application, is labelled as the prior art. It is an elongate rod that is coated at one end with scintillator material. Any light produced by the scintillator layer travels through the layer and into the rod. The rod guides the light to the other end and into the PMT.
It was the arrangement shown in figure A-1 that was the centre of attention. Figure A-1 shows a specimen lying in a horizontal plane on a support. An electron beam is directed vertically from above onto the specimen. Some of the electrons that emanate from the specimen strike a layer of scintillator material that is positioned to the left of the specimen in a plane that is perpendicular to the plane of the specimen. Light produced by the scintillator layer travels across to the other side of the specimen and is collimated by a lens (shown in cross-section) positioned to the right of the specimen. The document notes that the lens is slightly coated with aluminium. This was the arrangement that the opponent submitted rendered the claims not novel.
The Federal Court of Australia has extensively reviewed the law regarding novelty in judgements. The judgements indicate that the basic test for anticipation is that set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235, that is:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement".
It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel‑Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183.
In this case there appeared to be no suggestion from either side that any of the features of the claims was not an essential feature.
Looking at claim 1, I note that following essential features:
(1)an electron-gathering light guide which has an elongate light-guiding body;
(2) the elongate body has one end which is mountable to a light magnifier;
(3)the other end of the of the elongate body has an area-extensive electron receptor, which is to be inserted into the stream of electrons emanating from the specimen;
(4)the receptor is disposed so as to have a face angled as though to reflect received electrons along the body to the mounting end;
(5)the receptor face has a scintillation layer; and
(6)the scintillation layer, in operation, receives electrons emanating from the specimen and converts them to photons, so that the photons radiate away from the input surface of the scintillation layer towards the light magnifier.
In my opinion, figure A-1 of the Takahashi document does not extinguish the novelty of claim 1. In particular, this document, at the very least, does not fully disclose essential features (1) and (4) listed above.
Feature (1) requires that the light guide have an elongate light-guiding body. Figure A-1 discloses a lens in cross section. To me, and drawing on my knowledge of high-school optics, I am of the opinion that the cross-section represents a lens with a circular periphery. I cannot see how a circular lens is elongate. It could be argued that the lens is elongate, because the cross-section shows that the body is much longer on one axis (the "long axis") than it is wide on another, perpendicular axis (the "short axis"). However, even if such an argument was made, feature (4) is not present. Feature (4) requires that the receptor be positioned as though to reflect electrons along the body. This clearly indicates that the light generated by the electrons travels in a direction generally coincident with the long axis of the light guide. In figure A-1, the light travels in a direction generally parallel to the short axis. Thus, it shows light travelling across the body. This is a different arrangement.
In coming to this decision I have noted that comments made by the declarants for the opponent on what this lens is meant to represent. I note that Dr Robinson at paragraph 28 of his first declaration makes the statement that "A lens is a device used in the industry to collect and direct light towards a PMT and is one form of a solid light guide", and that something similar is said at paragraph 26 of Dr Nockolds' declaration. However, while their purpose may be exactly the same, this does not make a lens an elongate light guide, as required by the claim.
I also note that in paragraph 2 of Dr Robinson's second declaration he states "A lens is used as a shorthand form for any suitable light guide that can be used for collecting photons for subsequent imaging". Paragraph 9 of Dr Nockolds' second declaration says something similar. However, the observation must be made that, if the lens is meant to represent any light guiding structure, why is the light guiding structure of figure A-2 shown as an elongate light guide? If a "shorthand" lens could represent this, why was a lens not drawn instead of the elongate body? I also note that in paragraph 3 of Dr Robinson's second declaration, when responding to comments by the applicant's declarants that the Takahashi paper teaches away from using the arrangement of figure A-1 in favour of figure A-2, he says:
"Mr Cowham states that Fig. A-2 has "improved efficiency" compared with the arrangement depicted in Fig. A-1. This reduction in efficiency arises because the lens used in the Fig. A-1 arrangement uses an aluminium surface to dissipate static charge" (my emphasis).
To me this further emphasises that the lens shown in figure A-1 is just that—a lens (furthermore, a coated lens), and it is not clear how a coated lens is meant to represent anything else.
Since a lens is not an elongate body, and any light generated by the scintillator layer travels across the body and not along it, features (1) and (4) are not disclosed in figure A-1 of the Takahashi paper. Therefore, claim 1 is novel. It follows that claims 2-10 are also novel.
INVENTIVE STEP
According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a)common general knowledge, or
(b)common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Despite the documents particularised, the opponent indicated at the hearing that inventive step would be argued on the basis of the Takahashi paper in combination with common general knowledge. That is, they would be using the latter of the above criteria.
Considering the latter of these above criteria, I do not think there is any doubt that the Takahashi paper, which the opponent has established as being in the public domain before the priority date, would be "understood" by the person skilled in the art. However, I believe some doubt surrounds whether this document would have been "ascertained" and "regarded as relevant". This is because, as noted by Dr Robinson in paragraph 6 of his second declaration, figure A-1 (and, in my opinion, figure A-2) is generally incidental to the main thrust of the Takahashi paper, which is primarily the use of a CdS scintillation layer in an SEM to obtain images with better contrast and topography. However, I note that the applicant did not strongly argue the position that the Takahashi paper would not have been considered. Therefore, I am prepared to accept that this document would have been ascertained, understood and regarded as relevant to solving the problem of better detection in SEMs.
In their submissions, the applicant did not dispute that the general nature of SEM detectors and their component parts formed part of the common general knowledge in Australia. I believe this also included the use of solid, elongate light guides in detectors. Their submission was, following Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Limited (1980) 144 CLR 253, that the claimed combination, when considered as a whole, was not obvious. Indeed this is the position of Mr Cowham as noted by paragraph 35 of his declaration where he says:
"while each individual feature from which the Invention is made may itself not be new, the combination of features as defined in Claim 1 is both novel and inventive."

As I understand them, the opponent's submissions were, essentially, that replacement of the lens in figure A-1 with an elongate light guide, which was common general knowledge in the art, would result in an arrangement that fell within the scope of claim 1. There are statements made in the declarations of the opponents (which I have quoted above in the discussion on novelty) to the effect that lenses and light guides are, more or less, the same thing. The opponent submitted that, on the evidence presented, the answer to the question "Would the person skilled in the art know to use equivalent light guiding structures?" could not be in doubt. They submitted the person skilled in the art would do this.
The applicant's submissions as to the Takahashi paper were that it leads the person skilled in the art away from the invention. In this respect they noted that the Takahashi paper showed in figure A-1 (I am quoting from the paper) "a device used in the early stage of the work", and that figure A-2 was noted as showing "an improved [detector]", whose "collection efficiency was increased by several tens [of] percent".
To my mind, the applicant's argument is to be preferred. The Takahashi paper clearly notes that the arrangement shown in figure A-2 was an improved device. In this sense, I cannot see why a person skilled in the art would be motivated to select another arrangement that was, by the author's own admission, an inferior device. The opponent's evidence in this regard was not helpful. There was no statement as to why the person skilled in the art would opt for the arrangement of figure A-1 over the arrangement of figure A-2—particularly in light of the paper's assertion of better performance of the arrangement of figure A-2. Furthermore, there is no evidence that the person skilled in the art would then believe that the arrangement of figure A-1 would work better if the coated lens was replaced by an elongate light guide. Because of this, and in spite of the opponent's submissions, to my mind there is considerable doubt that the person skilled in the art would make the substitution.
The paper clearly teaches that, to obtain improved results vis-à-vis signal strength, it is better to place the scintillation layer on the end of an elongate light guide. The photons produced in the scintillation layer then travel through the layer and into the light guide. Thus, while elongate light guides were common general knowledge in the art, there is no motivation in this paper to use one in place of the lens shown in arrangement of figure A-1. Rather the motivation is that, if elongate light guides are used, the scintillation layer is to be placed on one end.
As I noted in the novelty discussion above, Dr Robinson attributed the reduced efficiency of the arrangement of figure A-1 merely to the use of an aluminium-coated lens. This statement does not seem to support the opponent's case because it suggests that when using an arrangement where the input side of the scintillation layer is looked at by the light guide, some sort of construction to dissipate static charge is needed. In this sense, the replacement of a coated lens with an elongate light guide does not seem to be as straightforward as the opponent suggests. There seems to be nothing in the Takahashi paper and nothing in the opponent's evidence that suggests this.
In my opinion the Takahashi paper teaches away from combining the common general knowledge of elongate light guides with the detector arrangement shown in figure A-1. Claim 1 has an inventive step. It follows that claims 2-10 also have an inventive step.
MANNER OF MANUFACTURE
The opponent submitted that the invention was not for a manner of manufacture because it did not pass the "threshold of inventiveness" test as set out in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449, which was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401.
The High Court in NV Philips Gloeilampenfabrieken v Mirabella International Ltd (supra) stated that manner of manufacture can be a threshold question:
"if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further"
In Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 46 IPR 553, the majority summarised the effect of the Philips case as:
"Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non- inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met."
The opponent's arguments under this ground appeared to be that the specification did not fully explain why the "invention" of viewing the input side of the scintillator (thus leading to improved performance) supposedly improved the performance. Therefore, the opponent submitted, there was no feature which could be highlighted as the feature that caused the improvement. Thus, in the opponent's opinion, no invention was disclosed on the face of the specification.
I am not convinced by the opponent's arguments.
As noted above in Bristol-Myers an invention does not pass the "threshold of inventiveness" test if, in light of what was known in the art "as revealed on the face of the specification", the invention is obvious. That the specification does not explicitly state the particular feature(s) which improve(s) upon the prior art may be an inconvenience to the reader, but I know of no law that requires such a statement to be made. It is possible that, in this case, it is the whole combination of features that give the improvement. In any event, the fact that the application does not explicitly state which feature gives the benefit is, as far as I understand the case law, completely irrelevant to the question of manner of manufacture. The question is whether the invention is obvious on the face of the specification. There is nothing in the specification, as far as I can ascertain, that even hints that looking at the input side of scintillator layer was known in the art. There is no mention of the Takahashi paper or anything similar. The prior art exemplified is that in which the photons pass through the scintillator layer and exit from the side opposite the input surface. I cannot see how a disclosure of light passing out from an output surface naturally suggests that the person skilled in the art should try looking at light which exits from the opposite side.
Taking only what is described in the application as "known" I cannot find any lack of inventiveness. The application thus passes this "threshold of inventiveness" test as developed in the above cases. Therefore, it is directed to a manner of manufacture.
CONCLUSION
The opposition fails on all the grounds which were relied on.
Unless the Commissioner is served with a notice of appeal within 28 days of the date of this decision, I direct that the application proceed to sealing.
COSTS
In proceedings such as these it is usually the case that costs follow the event. I see no reason to vary that approach on this occasion. I therefore award costs against ETP Semra Pty Ltd.
GREG POWELL
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Fisher Adams Kelly, Brisbane
Patent attorneys for the opponent : Spruson & Ferguson, Sydney