Perkin-elmer Corporation v. Varian Techtron Pty. Ltd.

[1985] APO 13

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 516147 for a Patent of Addition by PERKIN-ELMER CORPORATION - and - In the Matter of Opposition thereto under Section 59 by VARIAN TECHTRON PTY. LTD.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Application No. 516147 by Perkin Elmer Corporation is a Convention application based on a U.S. application lodged 22 May, 1978, and is for an invention entitled AN AUTOMATIC FLUID SAMPLING TRANSPORT SYSTEM. The application was lodged on 28 August, 1978 and was advertised as accepted in the Official Journal of 21 May, 1981. A Notice of Opposition under Section 59 to the grant of a patent was lodged on 20 August, 1981 by Varian Techtron Pty. Ltd.

A request to amend the complete specification under Section 77 was lodged on 26 May, 1982. Acceptance of that request was advertised in the Official Journal of 26 August, 1982. Notice of Opposition to the acceptance under Section 82 was lodged on 13 September, 1982 by Varian Techtron Pty. Ltd. This matter was heard by me in Melbourne on 8 February, 1983, and in May 1983, I issued a derision dismissing the opposition.

The opposition under Section 59 was heard by me in Melbourne in August 1983 and in November of that year I issued a decision determining that grounds had been made out under sub-sections 59(l)(e), (g), (h) and (i). The decision concluded with a statement to the effect that, as I believed the defects in the specification could be removed by amendment, I would allow the applicant 60 days in which to propose amendments for that purpose.

On 13 January, 1984, the applicant did propose such amendments under S.77, and these were subsequently allowed - unopposed - by the delegate of the Commissioner and have now been incorporated into the specification.

It is this latter specification which formed the subject of the present proceedings, the matter being heard in Melbourne in February 1985. At the hearing Mr. Wayne McMaster of Edwd. Waters & Sons, Patent Attorneys, Melbourne, represented the applicant, and Dr. J.MCL. Emmerson of Counsel instructed hy Mr. T.J. Collins of Phillips, Ormonde and Fitzpatrick, Patent Attorneys, Melbourne, represented the opponent.

The Practice of the Patent Office

Where there has been a hearing in accordance with sub-section 60(1), and the Commissioner (or his delegate) has decided the case by allowing the applicant to propose amendments to correct defects found in the specification, it is the practice of this Office, after amendment of the specification, to invite the opponent to be heard again before the fate of the application is @finally determined. If the opponent does wish to be heard, the applicant is, of course, invited to attend the hearing. The point is, that while the amendments proposed under Section 77 are opposable under Section 82, the only ground of opposition is that the amendment is not allowable under Section 78 on the other hand the specification as amended may be in a form such that it could not properly be said to have been the subject of argument by the applicant and opponent on the basis of one or more of the grounds of opposition under sub-section 59(1).

Formerly, an initial decision in accordance with sub-section 60(1) was styled as "interim", while the decision following amendment of a specification consequential upon the "interim" decision was styled as "final", whether or not preceded by another hearing. However it was held, inter alia, by Fullagar J. sitting on the Bench of the Supreme Court of Victoria, in the exercise of Federal jurisdiction that:

(i) the title "interim decision" was irrelevant to the characterization of the Commissioner's acts;

(ii) on a full examination of the Commissioner's "interim decision" in the case in question he had by it actually decided as much of the opposition proceeding as was susceptible of decision at the time, and had decided it once and for all, (my underlining) although at the same time deciding what things might be done in the future conduct of the opposition proceedings, and therefore he had carried out his duty to "decide the case" as it presently subsisted before him.

(See Broken Hill Pty. Co. Ltd. and Comalco v. American Can Co. 29 ALR 424).

The High Court took this matter somewhat further in their judgement in Ex parte Mole Engineerinq Pty. Ltd. (1981) 35 ALR 119. In that case a Hearing Officer had made an interim decision on a section 59 opposition, suggesting that certain amendments would probably be favourably considered. Shortly thereafter the Hearing Officer became unavailable for duty, and when amendments were proposed and opposed the resulting hearing was conducted by a different Hearing Officer. Before the decision was issued, the applicant sought a re-hearing of the section 59 matter, ab initio. The stated ground was that the officer hearing the amendments issue was not the original officer, but it was clear from the correspondence that the applicant considered that the section 59 issue had been wrongly decided - see the judgement of Wilson J. at page 127. The second Hearing Officer found that the amendments proposed were allowable, but the Commissioner directed that although that decision should issue, the amendments should not be allowed for 28 days, to give the applicant time to withdraw the amendments, whereupon the Commissioner would direct a re-hearing ab initio. The opponents sought a writ of prohibition which the High Court made absolute. In judgements delivered by Mason J. and Wilson J. (Murphy J. and Aickin J. concurring) the status of an interim decision was discussed, as was the power of the Commissioner in such matters as well as the course open to an applicant or opponent who considered an interim decision to be wrong. I take the Mole Engineering case to provide authority for the propositions (a) that the Commissioner has no power to direct a re-hearing in such circumstances, and (b) that an interim decision is a final decision in that it determines all issues of the opposition insofar as they are capable of final determination, and such decision cannot be re-heard or challenged except on appeal. It seems then that all decisions are "final" insofar as they determine all issues capable of determination at the particular stage of the proceedings to which they relate.

During the hearing of the present matter both Mr. McMaster and Dr. Emmerson drew my attention to the Mole Engineering case. In particular, Dr. Emmerson pointed out that it was his client's view that the most recent amendments did not remove the grounds of objection from the specification in accordance with the terms set out in my decision of November 1983, i.e. the "interim" decision.

The Specification (1)

The specification in the form in which it came to be heard in accordance with Section 60(1) in August 1983, i.e. prior to the most recent amendment, described the invention as relating to a fluid sampling apparatus wherein a sampling probe is moved into a vial containing a fluid sample. It discloses the admitted prior art as an arrangement in which the vials are in a single row around the periphery of a circular sample holding means located on a rotatable tray or turntable, the turntable being indexed one space at a time so as to align the sampling probe with successive vials. After each indexing operation the sampling probe is moved into the vial, and then retracted prior to the next successive indexing movement of the turntable.

In discussing the prior art, the specification states at page 2, lines 20-27:

"the access time for the probe to leave one vial and thereafter access a second vial should not be a limiting factor in the operation of the overall system. In other words, it should be the actual analysing instrument itself which controls the time for analysis and not the time required to access each successive vial . For example, in the field of atomic absorption spectroscopy, the analysis time for typically sized samples would be approximately 5 seconds. Therefore, the time between sample access should be less than this so that upon completion of a first analysis, the sampling equipment is ready to provide the subsequent specimen."

This passage indicates that the specification is directed to the fluid transport system, per se, and is not concerned with the analysis apparatus other than the means to introduce the sampling probe into the vials containing the material to be analysed.

The specification then states that a further advantage of the invention lies in its ability to enhance the so-called through-put of the system (the number of sample vials processed per unit of time) and thus the total analysis time is reduced if the vial density of each tray is increased, in this case, by the provision of at least two concentric rows of apertures to contain the sample vials (test-tubes), whereas the specification describes prior art trays having only a singular circular row of holes.

The specification sets out a number of objects of the present invention and a summary of the invention, and goes on to describe, with reference to four figures of drawings, how the invention is put into effect, ending with ten claims three of which are independent, namely, claims one, three and nine.

These claims read as follows:

1. An automatic sampling transport system for sample vials comprising:

(a) sample holding means including a plurality of openings disposed in at least two concentric circles of said openings, for depositing corresponding sample vials;

(b) means for rotating the sample holding means;

(c) sample probe carrying means;

(d) means for raising and lowering said sample probe carrying means;

(e) means for rotating said sample probe carrying means a predetermined arcuate length from a cooperating position with an opening in one of said concentric circles to a cooperating position with an opening in another of said concentric circles;

(f) means for synchronously engaging said means for rotating said sample holding means and said means for rotating said sample probe carrying means, whereby the rotation of each of said means occurs simultaneously; and

(g) means for synchronising said rotation to the raising and lowering of said probe carrying means.

3. An automatic fluid sampling transport system for sample vials used in sample analysis instruments comprising;

(a) sample holding means including a plurality of openings disposed in at least two concentric circles of openings for depositing corresponding sample vials;

(b) means for rotating said sample holding means;

(c) sample probe carrying means;

(d) means for raising and lowering said sample probe carrying means;

(e) means for rotating said sample probe carrying means a predetermined arcuate length from a cooperating position with an opening of said concentric circles to a cooperating position with an opening in another of said concentric circles; and

(f) means for synchronising the rotation of said sample holding means and said probe carrying means, to the raising and lowering of said probe carrying means including:

(i) means for sensing when said probe carrying means is raised;

(ii) means, responsive to said sensing means detecting when said probe carrying means is raised, for initiating said rotation;

(iii) means for sensing when said rotation is complete; (

iv) means responsive to said sensing means detecting when said rotation is complete, for initiating the lowering of said probe carrying means; and

(v) means for sensing when the lowering of said probe carrying means is complete such that sample analysis can take place.

9. An automatic fluid sampling transport system for sample vials used in sample analysis instruments comprising:

(a) sample holding means including a plurality of openings disposed in at least two concentric circles of openings for depositing corresponding sample vials;

(b) means for rotating said sample holding means comprising:

(i) a geneva wheel assembly disposed about a first rotatable shaft; and

(ii) means for incrementally rotating said wheel assembly, including said shaft, said sample holding means positioned on said first shaft;

(c) sample probe carrying means;

(d) means for raising and lowering said sample probe carrying means; and

(e) means for rotating said sample probe carrying means a predetermined arcuate length from a cooperating position with an opening in one of said concentric circles to a cooperating position with an opening in another of said concentric circles.

The Decision of November 1983

This decision relates to the specification as set out above, and in brief makes the following conclusions:

(i) Claims 1 et al are anticipated by US Patent 3,252,330, and by the prior use of the opponent's product, the Varian Model 51;

(ii) Claim 9 is anticipated by US Patent 3,192,968;

(iii) The claims lack fair basis in that they are not restricted to the alternate movement of the probe carrying means between the circular rows of samples;

(iv) Clam 9, is not clear in its reference to "a geneva wheel assembly" and "means for incrementally rotating said wheel assembly" - thus a geneva mechanism (basically) comprises a detent wheel which is cam driven so that it is the geneva wheel per se and not the assembly which is incrementally rotated.

The Specification (2)

The specification in its current form is as amended by the applicant for the purpose of removing the above defects. The claims have been redrafted together with the corresponding description; in addition some changes have been made in the introductory part of the description with respect to the recognition of the prior art. Claims 1, 3 and 9 are the independent claims as before.

These claims read as follows:

1. An automatic sampling transport system for sample vials comprising:

(a) sample holding means including a plurality of openings disposed in at least two concentric circles of said openings, for depositing corresponding sample vials;

(b) means for rotating the sample holding means;

(c) sample probe carrying means;

(d) means for raising and lowering said sample probe carrying means;

(e) means for rotating said sample probe carrying means a predetermined arcuate length from a cooperating position with an opening in one of said concentric circles to a cooperating position with an opening in another of said concentric circles;

(f) means synchronously engaged with said means for rotating said sample holding means and said means for rotating said sample probe carrying means, whereby the rotation of each of said means occurs simultaneously; and

(g) means for synchronising said rotation to the raising and lowering of said probe carrying means so that said rotation occurs after each raising of the sample probe carrying means.

3. An automatic fluid sampling transport system for sample vials used in sample analysis instruments comprising:

(a) sample holding means including a plurality of openings disposed in at least two concentric circles of openings for depositing corresponding sample vials; (

b) means for rotating said sample holding means; (

c) sample probe carrying means;

(d) means for raising and lowering said sample probe carrying means; and

(e) means for rotating said sample probe carrying means a predetermined arcuate length from a cooperating position with an opening in one of said concentric circles to a cooperating position with an opening in another of said concentric circles;

(f) means synchronising the rotation of said sample holding means and said probe carrying means, to the raising and lowering of said probe carrying means including:

(i) means sensing when said probe carrying means is raised;

(ii) means, responsive to said sensing means detecting when said probe carrying means is raised, initiating said rotation;

(iii) means sensing when said rotation is complete;

(iv) means, responsive to said sensing means detecting when said rotation is complete, initiating the lowering of said probe carrying means; and

(v) means for sensing when the lowering of said probe carrying means is complete such that sample analysis can take place.

9. An automatic fluid sampling transport system for sample vials used in sample analysis instruments comprising:

(a) sample holding means including a plurality of openings disposed in at least two concentric circles of openings for depositing corresponding sample vials;

(b) means for rotating said sample holding means comprising,

(i) a geneva wheel disposed about a first rotatable shaft; and

(ii) means for incrementally rotating said wheel, including said shaft, said sample holding means positioned on said first shaft;

(c) sample probe carrying means;

(d) means for raising and lowering said sample probe carrying means;

(e) means for rotating said sample probe carrying means a predetermined arcuate length from a cooperating position with an opening in one of said concentric circles to a cooperative position with an opening in another of said concentric circles; and

(f) means synchronously engaged with said means for rotating said sample holding means and said means for rotating said sample probe carrying means, whereby the rotation of each said means occurs simultaneously after each raising of said probe carrying means, said synchronously engaged means including:

(a) a motor including a second shaft, said means for incrementally rotating said wheel axially mounted to said second shaft;

(b) an actuator cam axially connected to said second shaft;

(c) a pivot arm connected to said means for rotating said sample probe carrying means; and

(d) a cam follower positioned on said pivot arm, said follower contracting said activator cam and responsive to the rotating movement thereof about said second shaft, said pivot arm pivoting in response to the cooperative action between said cam and cam follower, such that said probe carrying means is rotating simultaneously with the pivoting of said arm.

The Submissions

Mr. McMaster, for the applicant, initially drew my attention to the Mole Engineering case, referring to the judgement of Mason J. (see 35 ALR 119 at page 124), i.e. once a decision has been made, the matter cannot be reheard; so in the present instance what I have to do is to assess the November 1983 decision to see what it did, in fact, decide, and then to compare its requirements with the specification as it now stands. He submitted also that the question of the Section 40 defects was precluded from consideration at the hearing, as this was a question which could have been dealt with by the opponents had they chosen to contest the most recent amendments under Section 82.

As is obvious from the material which I have set out under the heading "The Practice of the Patent Office" (above), I do agree with the first part oF Mr. McMaster's submissions. As should be equally obvious from my comments in the same place, I do not agree with the second part of his submissions. The only ground of opposition under Section 82 is that the amendment is not allowable under Section 78. That section is restricted in its requirements for allowability by reference to the expression "... if, as a result of the amendment Thus there could be the situation where the amendments while allowable, do not remove the grounds of objection applicable under sub-section (1) - a good reason why provision ought to be made for a further hearing after amendment of the specification. It is also possible that such amendment could introduce problems not previously present. Consequently it would be wrong to force the opponent to two hearings where one would suffice; I conclude therefore that the opponent is quite entitled to raise the section 40 matters in the present circumstances.

Dr. Emmerson, for the opponent, made a number of submissions concerning the non-compliance of the present specification with the November 1983 decision. Firstly, he read out a list of minor defects, of which the following are examples:

(i) Claim 3 paragraph (f)(iv) and the equivalent statement of invention in the description differ in that whereas the description refers to "for initiating the claim simply refers to "... initiating ...";

(ii) Claim 9 paragraph (b)(ii) and the equivalent statement of invention in the description differ in that whereas the description refers to "wheel assembly" the claim refers only to "wheel".

Both Dr. Emmerson and Mr. McMaster were agreed that the listed matters were the result of drafting problems which could be readily remedied. However Dr. Emmerson submitted that there was no evidence by a person skilled in the art from which I could conclude that the listed matters would not affect the @validity of the specification.

I do not agree with this submission. The matters to which this submission relates are no more than drafting errors, clearly visible as such, and not affecting the fair basis of the claims or clarity of the claims and description In any way which could possibly lead to invalidity. Nor do I consider that the presence of these errors causes the specification to fail to meet the requirements of the decision.

Secondly, Dr. Emmerson made submissions about the fair basis of claim 3 which he said lacked two essential features, and consequently was not in a condition such that it met the requirements of the decision. These features are:

(i ) that after a sampling action has taken place, the probe carrying means and sample holding means should rotate simultaneously into position for the next sampling action; and

(ii) that the probe carrying means should move the probe alternately between the concentric circular rows of the sample holding means, so that successive sampling actions occur at different rows.

I agree with Dr. Emmerson that feature (i) is not a limitation of claim 3, and I will comment on this point further when I am considering feature (ii). However, in my opinion, feature (i) is not an essential feature of the invention as described, nor was it so represented in either of the two earlier decisions.

Dr. Emmerson's argument as I understand it amounts to this : the description is concerned with increasing the vial throughput capability of a sample analysis system, and this is clearly stated in the primary object of the invention; the specification indicates generally that the solution sought is obtained by the combinations of features (i) and (ii) in the sample apparatus, and as claimed in all other claims; U.S. Patent 3,567,393 (exhibited to the evidence in support of the Section 59 opposition) discloses alternate sampling from one circle of vials to another, so, in order to clearly define the invention in relation to the prior art in general, the inventive step in the claims of the present application should be more than merely the alternate sampling arrangement, and should in fact be the combination of features (i) and (ii).

In my view, the first part of Dr. Emmerson's argument fails. Nowhere does the specification state that simultaneous rotation of the two carrier means is essential to achieving the object of the invention. In fact, it implies the opposite. Thus there is a statement of invention in the description in substantially identical terms to Claim 3, and, like claim 3, lacking the feature in question. Further, while it seems from the specification that the combination of features (i) and (ii) would give the fastest vial throughput (cf. the preferred embodiment) there is no indication that the omission of feature (i) would result in failure of the apparatus to achieve the primary object of the invention. This argument appears to have more basis in the question of utility than in the requirements of Section 40.

As to the second part of Dr. Emmerson's argument, I note that U.S. Patent 3,563,393 was considered at the initial hearing of the section 59 opposition. In my decision of November 1983 I commented that "Whilst the specification of this patent is the only citation which discloses the alternate sampling arrangement from one circle of vials to another ... it is otherwise not noteworthy as an anticipation It is interesting to note that this comment was made in relation to claims of the specification in suit (prior to the most recent amendment) which I found to be not fairly based as they failed to define the alternate sampling arrangement as a limitation. Even so, I considered the U.S. patent to be not noteworthy.

Section 40 of the Act does not require that the inventive step defined by the claims of a specification be the same in relation to each citation of the prior art for each claim - if it did impossible situations could arise.

For example, where the elements of a combination type invention (of which the present invention is an example) were separately disclosed in a number of earlier specifications, it might be concluded on the basis of Dr. Emmerson's argument, that as the inventive steps defined by various claims were different in relation to different specifications or even the same specification of the prior art, the claims would be invalid for failing to define the invention. What Section 40 actually requires in this respect is set out in sub-section 40(l)(b): i.e. that a complete specification shall end with a claim or claims defining the invention - not, note, the inventive step. Finally there is a further matter which makes Dr. Emmerson's argument about feature (i) unacceptable. Dr. Emmerson implied during the course of his submissions that it was a requirement of the initial decisions in this matter that simultaneity of the two rotations (i.e. of the sample carrying means and probe carrying means), was an essential feature. This is not so. The first of those decisions (section 82 opposition, issued 9 May, 1983) at pages 9 and 10 refers to an argument by Mr. Collins (for the opponent), in which he submitted that:

"the invention must reside in the sampling from alternate rows and where this aspect is discussed in the specification the description implies that the synchronous rotation of the probe carrying means (movement between rows of vials) and rotation of the sample holding means (rotation of the turntable), means that those actions are performed simultaneously. Mr. Collins suggested that dictionary definitions of "synchronous" indicated that actions which were synchronous took place simultaneously."

The conclusion would be of course that the claims in question would not be fairly based as they were not limited to the said simultaneous rotation. However the decision goes on to conclude that the requirement of synchronisation of the rotations was not the same as the requirement for simultaneity thereof and consequently the claims were fairly based. In the second decision (Section 59, issued 18 November, 1983) the question of fair basis of the claims was again canvassed and whereas it decided that the claims lacked fair basis as they were not limited to alternate movement of the probe carrying means between the circular rows of samples (i.e. feature (ii) above), it made no such comment about the simultaneous rotation of the two carrying means. Consequently it @cannot be said that claim 3 does not satisfy the requirements of the initial decision of the Section 59 opposition, by omission of this feature. Nor is this conclusion in any way contradictory to anything in the decision from the Section 82 opposition.

I turn now to a consideration of the second feature which the opponent says is not a limitation of claim 3, i.e. that the probe carrying means should says 0 move the probe alternately between the concentric circles of the sample holding means, so %hat successive sampling actions occur at different circular rows. Claim 3 is directed to an automatic fluid sampling transport system for sample vials used in sample analysis instruments, which comprises a number of features, identified by paragraphs as follows:

(a) sample holding means including a plurality of openings disposed in at least two concentric circles of openings for depositing corresponding sample vials;

(b) means for rotating said sample holding means;

(c) sample probe carrying means; (to carry the probe which in use takes samples from the vials);

(d) means for raising and lowering said sample probe carrying means; (to enable the probe to enter and exit a vial during a sample taking operation);

(e) means for rotating said sample probe carrying means a predetermined arcuate length from a cooperating position with an opening in one of said concentric circles to a cooperating position with an opening in another of said concentric circles, (i.e. this rotating means, in use of the system, moves the probe from a sampling position over one row of vials to a sampling position over another row of vials. As Dr. Emmerson pointed out, this feature does not provide necessarily for successive sampling actions to be in different rows, but might simply be the shift to a second row after a first complete row has been sampled).

(f) means synchronising the rotation of said sample holding means and said probe carrying means, to the raising and lowering of said probe carrying means; (this means ensures that the means defined in paragraphs (b), (d) and (e) cooperate so that for example in use the probe would not be lowered except over a correct sampling position).

Paragraph (f) of the claim includes five sub-paragraphs characterising the synchronising means. They read as follows:

(i) means sensing when said probe carrying means is raised;

(ii) means, responsive to said sensing means detecting when said probe carrying means is raised, initiating said rotation;

(iii) means sensing when said rotation is complete;

(iv) means, responsive to said sensing means detecting when said rotation is complete, initiating the lowering of said probe carrying means; and

(v) means for sensing when the lowering of said probe carrying means is complete such that sample analysis can take place.

Items (ii), (iii) and (iv) refer to "said rotation". The claim defines two means for producing rotation, in paragraphs (a) and (e), i.e. relating respectively to the sample holding means (S) and to the probe carrying means (P). Paragraph (f) refers to means synchronising the rotation of the latter two means. Consequently, I read the references to "said rotation" as encompassing the rotation of both S and P. That is, "initiating said rotation" (item (ii)) does not necessarily mean that P and S commence to rotate simultaneously, nor does "said rotation is complete" (items (iii) and (iv) necessarily mean that both cease to rotate simultaneously. This view receives support from a consideration of claim 4 which is appended only to claim 3, and specifically provides that P and S rotate simultaneously.

From paragraphs (e) and (f) of the claims, it is clear that each time P rotates it goes to a new sampling position, but each rotation of P takes it to a position over the sample holding means at a different one of the concentric circles of openings (for holding the sample vials). Thus each sampling action takes place at a different one of the circular rows of sampling positions from the preceding sampling action. Consequently claim 3 is fairly based and does meet the requirements of the initial decision of the opposition under section 59.

Conclusion

The specification in its present form meets the requirements of my decision of November 1983 and there is no conflict with the terms of the decision of May 1983. Consequently I dismiss the opposition and award costs against the opponent. I shall direct the application to sealing, subject to lodgement of any appeal.

(J L Roveta)Supervising Examiner of Patents

10 JUL 1985