Perkin-Elmer Corporation v Varian Techtron Pty Ltd

[1983] APO 39

IN THE MATTER of the Patents Act 1952

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IN THE MATTER of Application No. 516147 for a Patent by PERKIN‑ELMER CORPORATION

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IN THE MATTER of Opposition thereto 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 in Melbourne on 8 February 1983, and a decision of a Supervising Examiner of Patents, dismissing the opposition, issued on 9 May 1983.

The present matter was heard in Melbourne on 4 and 5 August 1983, the specification being considered in its amended form. 

Mr G. Johnston of counsel instructed by Mr W. McMaster of Edward Waters and Sons, represented the applicant and Dr J. McL. Emmerson of counsel instructed by Mr T.J. Collins of Phillips, Ormonde & Fitzpatrick, represented the opponent.

The Specification

The specification as amended describes 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 analyzing 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 describes a number of objects of the present invention and a summary of the invention as follows:‑

"The invention comprises sample holding means which includes a plurality of openings disposed in at least two concentric circles of said openings into which are disposed corresponding sample vials.  Means are disclosed for rotating the sample holding means.  Probe carrying means are provided which accommodate particular type probes used in atomic absorption spectroscopy and liquid chromatograph.  Means are described for raising and lowering the sample probe carrying means and for rotating said probe carrying means a predetermined arcuate length from a cooperating position with a sample vial in an opening on one concentric circle to a cooperating position with a sample vial in an opening in another concentric circle.  The means for raising and lowering the sample probe are synchronously operated with the means for rotating the probe carrying means so that the respective operations are performed sequentially.  Further, the raising and lowering and rotating are meshed with the rotation of the sample holding means so that the entire operation is automatic.  The synchronous movement is effected by a cooperative operation between a belt driven assembly for raising and lowering the probe carrying means; geneva wheel assembly for incrementally positioning the carousel; and a cam‑arm arrangement for converting the rotational movement imparted to the sample holding means to rotational movement of the sample probe carrying means so as to result in the positioning of the latter in cooperative relationship with sample vials in alternating concentric circles."

The specification 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 synchronizing 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; and,

(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,

(f)means for synchronizing 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 cooperative position with an opening in another of said concentric circles.

Grounds of Opposition

The grounds stated on the notice of opposition are those specified in Section 59, paragraphs (a) to (i) of the Act, however, the only grounds argued were those specified in paragraphs (e), (g), (h) and (i) thereof.  The most relevant evidence lodged in relation to these grounds comprises U.S. Patents Nos. 3,192,968; 3,252,330; and 3,567,393,  plus documentation relating to the construction and use of the opponent's sample analyser, the Varian Model 51.

Anticipation

Mr Johnston for the applicant presented a considerable amount of argument on the nature of the invention as defined in the independent claims, in particular he emphasised the contents of paragraphs (e), (f) and (g) of claim 1 which in his view distinguished the present invention from the systems disclosed in the three U.S. patents referred to above.  Dr Emmerson in reply, agreed with the proposition that those three paragraphs did define the inventive step, however, he advanced the argument that the applicant was construing them too narrowly.  He said that they were not limited in scope to the sequence of operations wherein, inter alia, the sample probe carrying means was rotated through an arc alternately between the concentric circles for each successive sampling but included a sequence of operations wherein the rotation of the sample probe carrying means occured only once, after completely sampling one circle of vials, whereby to be positioned to sample from a second circle of vials.

(i)  U.S Patent 3,252,330

The specification of this patent (to N.G. Kling) is entitled "Sample Supply Means for Analysis Apparatus" ‑ it is exhibit No. 11 to the first declaration of Neil Patrick Clark.  There is no doubt but that this specification discloses the features defined in claim 1, paragraphs (a) to (e) and (g).  Paragraph (f) of claim 1 reads as follows:‑

"(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;"

The two "means for rotating" are set out respectively in paragraphs (b) and (e) of claim 1, earlier in this decision.  In the Kling patent, the apparatus described samples from a complete circle of vials before moving the sample probe to a position from which it can thus sample from a second complete circle of vials.  This contrasts with the Perkin‑Elmer apparatus which moves the probe to sample alternately from vials in a pair of circles.  The question arises then, whether paragraph (f) is so limited.  In my view, it is not.  Firstly, the "means" defined are only "for ... engaging ... "  ie. suitable for engaging, but not necessarily always engaged, whereby to operate accordingly.  Secondly, the paragraph is, in any case, not limited to the alternate sampling sequence for every sampling action, but could equally be defining the operation that occurs with the Kling apparatus ie. the operation at the completion of sampling from one circle of vials, which involves the arcuate movement of the probe to the position for sampling from a second circle of vials.  Consequently, I find that claim 1 is prior published by U.S. Patent 3,252,330.

With respect to claim 3, paragraph (f) thereof defines a number of sensing means which do not characterise the Kling disclosure.  The apparatus of Kling is basically cam operated.  Dr Emmerson has tried to equate the cam operation to the "means for sensing" defined in the said paragraph (f).  I cannot agree with this view.  Cam operation of a mechanism does not normally (and certainly does not in this case) involve a sensing operation followed by a consequential control operation ‑ rather it is characterized by constraining of the controlled parts to move in a particular way.  Therefore, in my view claim 3 is not anticipated by the Kling specification.  Similarly, I conclude that claim 9 is not anticipated by Kling.

(ii)  U.S. Patent 3,192,968

The specification of this U.S. Patent (in the names of Hans Baruch and Dainy Travaglio) constitutes exhibit No. 2 to the second declaration of Mr T.J. Collins.  On a comparison with the independent claims, I find that the features of paragraph (f), as defined respectively in claims 1 and 3 are not disclosed in this patent specification.  However, all the features of claim 9 are quite clearly disclosed therein.  Claim 9 is therefore anticipated by U.S. Patent 3,192,968, but claims 1 and 3 are not.

(iii)  U.S. Patent 3,567,393

This U.S. Patent Specification is in the name of Henry H. Welch and is exhibit No. 12 to the first declaration of Neil Patrick Clark.  Whilst the specification of this patent is the only citation which discloses the alternate sampling arrangement from one circle of vials to another, as described in the application in suit, it is otherwise not noteworthy as an anticipation and I dismiss it from further consideration.

(iv)  Varian Model 51 Automatic Sample Changer

The documentation on the model 51 comprises exhibits Nos. 2 to 5 to the first Clark declaration and exhibits Nos. 21 and 22 of the second Clark declaration.  In particular, some of the operation of the model 51 is explained in the earlier of these two declarations in paragraph (h) of clause 10 and in clause 21 at page 8 of the declaration.  These references disclose the simultaneous rotation of the sample holding means and the probe carrying means in an operation that occurs after all the vials in one circle have been sampled, whereby the probe carrying means is moved into position for sampling from the vials in a second circle, (in this case movement from the inner to the outer circle).  As I have stated in dealing with U.S. Patent 3,252,330, claim 1 paragraph (f) includes such an arrangement.  As the model 51 (on the evidence) clearly includes the features of paragraphs (a) to (e) and (g) of claim 1, that claim is anticipated thereby.

With respect to claim 3, all features are disclosed by the model 51 save those defined in paragraph (f), items (ii) and (iv).  With respect to these items, I make similar conclusions to those I made when considering claim 3, paragraph (f), in relation to U.S. Patent 3,252,330, and I dismiss Dr Emmerson's contentions in this regard for similar reasons.

Claim 9 is characterised by a geneva mechanism, and the model 51 is not.  Nevertheless, Dr Emmerson submitted that this claim should fail for want of novelty, as geneva mechanisms are well known.  It is true that geneva mechanisms are well known ‑ particularly in mechanical time pieces.  What is not clearly well known is the combination of a geneva mechanism in a sample analyser of the type claimed.  It is somewhat trite, as the opponent has suggested, that the geneva mechanism is a mere alternative (ie. involving no invention) to some other drive mechanism in the apparatus as defined in claim 9.  Not only has the opponent failed to produce any evidence that this is so, but of all the U.S. patent specifications tendered as part of the evidence in support, only one uses a geneva drive.  Therefore I dismiss this particular objection to claim 9.

The arguments put to me by Dr Emmerson to support this ground of opposition relied on the evidence contained in the U.S. patents and the docmentation relating to the Varian Model 51 sample changer and were basically the same as those concerning anticipation.  Mr Johnston presented considerable submissions in rebuttal of Dr Emmerson's arguments and it is these submissions to which I will direct my comments.

He submitted that before any document can be considered for the purposes of determining whether the invention defined in a patent application is obvious or not, it must be shown to be part of the common general knowledge of the art involved. In the present case he went on to say there is no direct evidence that the documents relied on by the opponent (the U.S. patents) for the ground of obviousness are part of the common general knowledge and in view of the comments made by Aikin J. in Minnesota Mining and Manufacturing Co. v. Beiersdorf (Aust.) Ltd., 144 CLR 253 at page 293, there is grave doubt as to whether these documents would have been consulted by a non‑inventive skilled worker in the field of sampling devices.

Mr Johnston also submitted that, with respect to the allegations of prior use as grounds for obviousness, the sales of the Varian Model 51 did not constitute evidence of common general knowledge.

The evidence of sales is found in exhibit No. 25 of the second declaration of Mr Clark and is in the form of copies of pages of a record book from Varian Techtron Pty. Ltd. which list the serial numbers of the Model 51 samplers and to whom they were sold.  A perusal of the sales record reveals that of some 190 model 51 samplers sold about 50 were sold in Australia, of which 9 went to Varian branches or subsidiaries.  In my view, this evidence is far from satisfactory in establishing that the model 51 could be said to form part of the common knowledge.

Consequently, there is no satisfactory evidentiary support for the ground of obviousness, and I dismiss this ground.

Section 40

In the course of his submissions, Dr Emmerson stated that, from a reading of the specification in suit, it was difficult to determine what the actual invention is.  In response, Mr Johnston submitted that the invention resided in, inter alia, the alternate movement of the probe carrying means between the circular rows of samples:  however, as I have stated earlier in this decision, that feature is not defined as a limitation of the claims and consequently I agree with Dr Emmerson's viewpoint.  I would point out, however, that the defect of the specification  in failing to clearly delineate the invention is more a consequence of viewing the description and claims in the light of the citations raised by the opponent, rather than the result of an inherent defect in the specification.  Nevertheless, the correction of this problem might require a substantive revision of the earlier part of the description, and, of course, the claims.

In addition, I draw the applicant's attention to paragraph (b) of claim 9, which in my view is inherently unclear.  Thus, a geneva mechanism basically comprises a detent wheel which is cam driven, the whole being referred to as a "geneva mechanism" or a "geneva drive".  In this instance item (i) of paragraph (a) refers to "a geneva wheel assembly", a feature, which, bearing in mind the reference in item (ii) to "means for incrementally rotating said wheel assembly", cannot be properly associated with the description. 
Decision

In my view the opposition succeeds, except on the ground of obviousness; I find that claims 1 et al are anticipated by U.S. Patent 3,252,330, and by the prior use of the Varian Model 51, and claim 9 is anticipated by U.S. Patent 3,192,968.  In addition, the specification contains Section 40 defects.

However, as I believe the foregoing problems may be removed by amendment, I allow the applicant 60 days in which to propose amendments for that purpose.

I award cost against the applicant.

J.L. ROVETA
Supervising Examiner of Patents