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

[1983] APO 12

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 a Request to Amend the Application under Section 77

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In the Matter of Opposition thereto by VARIAN TECHTRON PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS;

1.Background

This matter arises from the following circumstances:

(i)Application 516147 by Perkin‑Elmer Corporation was advertised as accepted 21 May, 1981.

(ii)Section 59 opposition thereto was lodged 20 August, 1981 by Varian Techtron Pty. Ltd.

(iii)A request to amend under section 77 was lodged by the applicant on 26 May, 1982.

(iv)An Examiner's clear report upon the section 77 request issued and the request was advertised on 26 August, 1982.

(v)Varian Techtron Pty. Ltd. lodged a section 82 opposition to the allowance of the section 77 request on 13 September, 1982.

1. A hearing in respect of this section 82 opposition took place in Melbourne on Tuesday, 8 February, 1983 and that matter constitutes the subject matter of this decision.

1. At the hearing, the applicant was represented by Mr. D. Shavin of Counsel instructed by Edwd. Waters & Sons, Melbourne, and the opponent was represented by Mr. T.J. Collins of Phillips, Ormonde & Fitzpatrick, Melbourne.

2.  The Specification
         The specification as accepted described the invention as relating to a fluid sampling apparatus wherein a sampling probe is moved into a vial contain‑
ing 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.   The specification indicates that the disadvantage of this prior art lies in the single row of vials which permits only limited "through‑put" of the testing process and proposes that there be provided at least two concentric rows of vials in the sample holding means and that the sampling probe be arranged to sample sequentially from vials in successive rows, i.e. with 2 rows of vials sampling would take place, say, first on the outer row, then the inner row, then the outer row, etc. ‑ there being means provided to align the sampling probe with the successive rows of vials and preferably to synchronise this movement with indexing of the turntable.   In this way "through‑put" is enhanced since indexing time is reduced due to a shorter movement and the increased capacity of the sample holding means thus reducing the frequency of replacing the sample holding means with a different sample holding means loaded with untested vials.
         The specification ends with a set of twelve claims, of which claims 1 and 11 are independent, and claim 12 appends only to claim 11.
         Claim 1 reads as follows:

1.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 predetermied 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.

3.  The Proposed Amendments
         The applicant, in the Request, states the reason for the proposal to be "In view of prior art, which has come to our notice, we wish to restrict the claims".   This prior art is not identified.
         The statement of proposed amendments consists of the substitution of a new statement of claims for the statement as accepted.   There are ten claims in the new statement, of which claims 1, 3 and 9 are independent.   These 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 in one 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.

Before proceeding to the arguments presented it is convenient to compare the accepted and proposed claims.   It is clear that proposed claim 1 is identical to accepted claim 11, and proposed claim 9 is identical in expression to accepted claim 9 via its only appendancy to accepted claim 1 and therefore these proposed claims fall within the scope of the claims of the specification before the proposed amendment.
         Proposed claim 3 however, falls into a somewhat different category since its form of expression is in the same terms as accepted claim 6 when appended to claim 5 and having the features of claim 1.   However, while that claim 6 is appended to claim 5, claim 5 is not appended directly to claim 1 ‑ claim 5 is appended to claim 4 which is, in turn, appended to claim 1.   Accordingly, proposed claim 3 is a claim which can be said to be new.   In addition, in line with the reasons given for the proposed amendment (previously referred to), it is clear that claim 1 as accepted is proposed to be deleted and that as accepted claim 1 is broader in scope than any of proposed claims 1, 3 and 9, the scope of the monopoly overall would be reduced.   Accordingly from this point of view the amendment proposed is in accordance with the reason given ‑ i.e. to restrict the claims.
4.  Grounds of the Opposition
         Mr. Collins advised that the sole ground under section 78 upon which the opposition was based was that of sub‑section (4), i.e. that as a result of the amendment the specification would not comply with the requirements of section 40 of the Act.  However, in presentation of argument in respect of consideration of clarity and fair basis, he made submissions also on the question of the discretionary powers of the Commissioner provided under sub‑section 81(1).
         His arguments in regard to non‑compliance with section 40 of the Act are consequential on his assertion that the three proposed independent claims are not clear, or fairly based on the description: the matter of the Commissioner's discretion he argued broadly from the point of view that the proposed independent claims have been drafted such as to be novel over the prior art but each being novel for a different reason and he therefore raised the question of "good faith" of the applicant in proposing the amendments.
         Mr. Collins in presenting the opponent's case first discussed the matter of the prior art which had been lodged as evidence in support of this opposition and which comprises a single page brochure showing apparatus of the same nature as the apparatus of the present invention.   The apparatus of this brochure is a product of the opponent company.   The apparatus in question is known as a "Varian" Model 51 Automatic Sample Changer ‑ referred to hereafter as the "Model 51".   This apparatus also is the subject of a major part of the evidence in the pending section 59 opposition.   The brochure is dated in 1980 but in written evidence lodged by Mr. Collins, sales in Australia of the Model 51 apparatus prior to the priority date of the application in suit were established and this question was not pursued.
5.  Commissioner's Discretion
         T     he applicant, in its reason for proposing the amendments, did not identify the prior art which it sought to avoid, however Mr. Shavin conceded that the Model 51 apparatus was indeed that prior art.  
         In the brochure the Model 51 apparatus is stated to be suitable for use with "all Varian Atomic Absorption Spectrophotometers" allowing "an automated sample programme".   The particular apparatus comprises, so far as is relevant to the current matter, a circular table containing two concentric rows of vial receiving openings and a sample probe and carrying means therefor.   The brochure does not disclose, either specifically or in general terms, the mode of operation of the device but Mr. Collins suggested that, in view of its stating that operation could be automated, there was sufficient evidence in the disclosure to suggest that alternate sampling from vials in the inner and outer rows of vials was not novel over disclosures in the brochure.   He implied that the applicant conceded this viewpoint by not having contested it in the correspondence which occurred between the parties prior to this hearing.   (Copies of that correspondence form part of the evidence in support.)   He stressed that his point in pressing this view was to show that the only feature novel over admitted prior art in the specification as accepted, which was common to each of proposed claims 1, 3 and 9, was not novel over this Model 51 and therefore the amendment proposed would have the effect of continuing to present a bad specification: consequently, he said, the Commissioner should exercise his discretion and disallow the proposed amendments.  In support of this assertion Mr. Collins referred to, inter alia, paragraph 77.18 of the Examiners Manual in which reference is made to James Gibbon Ltd.'s Application where it was stated that:

"In my view it is the Comptroller's duty, before allowing a defective specification to be amended, to assure himself, so far as he can on the material before him, that the specific‑

ation does not remain defective after amendment."

Further support for this view was expressed, he submitted, in para 77.4 of the Examiners Manual and in the decision in E.I. Du Pont de Nemours & Co.'s Application (1952) 69 RPC 246. He went on to suggest that as section 81 provides a discretionary power of allowance for the Commissioner a compelling circumstance in this regard would be the failure of the proposed amendments to remedy a defect which the applicant has conceded to exist in the specification ‑ a concession evidenced in the present case by the very act of lodgement of a request to amend.
         Mr. Collins' view is, as I understand it, that since the Model 51 apparatus presents two rows of vials to be sampled the sample probe must necessarily move from the inner row to the outer row, or vice‑versa, he consequently implies that the feature of the present invention of alternate sampling from the inner and outer rows is inherently not novel.   His purpose in pursuing a line of this nature is to show that, as a consequence, each of the three proposed independent claims rely for their novelty on different features and therefore there is doubt as to the precise nature of the invention.   Mr. Shavin contradicted this assertion and strongly expressed the view that the operation of the Model 51 Apparatus would be the subject of exhaustive argument in the section 59 action and was not a matter for close scrutiny at this stage.
         Each of proposed claims 1, 3 and 9 and claims appended thereto are distinguished from the brochure disclosure of the Model 51 in at least the definition of the sampling movements specified therein.   Whether or not this distinction is such that proposed claims 1, 3 and 9 have a common element of novelty based thereon is a question which need not be pursued at this stage as the only matter to be presently decided is whether or not the Commissioner's discretion under section 81 should be exercised.   Thus I have already pointed out that with the proposed deletion of claim 1 as accepted the overall monopoly would be restricted, and this situation fairly accords with the reasons given with the section 77 request.   To show that this was not so would require a full argument on the novelty of the proposed claims in the light of more complete evidence than is before me now, i.e. as will no doubt take place at the hearing of the action under section 59.   Furthermore, the discretion under section 81 is not to be exercised lightly ‑ this was set out by the High Court of Australia in Sly v. United Development Corporation Pty. Ltd. 106 CLR 633 at p.640, in which Menzies J. said:

"It seems to me, however, that it would only be a rare case that an amendment should be refused which ... was not itself ambiguous and did not import ambiguity into the specification on the ground that the specification, whether amended or not was ambiguous."

(Menzies J. was commenting on the judicial discretion contained in section 76 of the Patents Act 1903 to disallow an amendment which was otherwise allowable insofar as sections 71 and 78 of the Act were concerned).
         In the present case I see no grounds for the exercise of the discretion, and I will not do so.
Section 40
         As regards the consideration in respect of section 40 Mr. Collins presented considerable argument regarding the clarity and fair basis of the proposed claims.
         He attacked fair basis on the ground that the invention suggested in the specification was aimed at increasing the throughput capability of a sample analysis system and that the "common thread" suggested in pages 2, 3 and 4 of the specification was increased vial density obtained by introducing 2 (or more) rows of vials on the sample support/carrying means.   However, he argued, since the Model 51 apparatus discloses the 2 vial rows, 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.   However Mr. Shavin referred to the McGraw‑Hill Dictionary of Scientific and Technical Terms (2nd Edition) for support of his contention that actions which were synchronised did not necessarily occur simultaneously but may occur sequentially.   If Mr. Collins' submission is correct, then proposed claims 3 and 9 would not be fairly based since simultaneity of the two rotations is not a limitation of those claims, such feature being introduced by claims 4 and 10, which are appended respectively to claims 3 and 9.
         On the other hand if the construction put forward by Mr. Shavin is correct, proposed claims 3 and 9 would be fairly based.   I conclude the latter construction to be correct in the circumstances of this consideration and do not find any reason to reject the proposed claims on the ground of not being fairly based.
         The question of clarity of the claims was also considered at length by Mr. Collins.   This matter arises only in respect of proposed claim 3 since that claim is the only claim which is new so far as the proposal to amend is concerned, as is discussed earlier in this decision.   Proposed claims 1 and 9 are not considered under the terms of section 78(4) since any matters of non‑compliance therewith cannot be conceived to arise as a result of the amendment.   This interpretation of section 78 has been consistently followed in Patent Office decisions; see for example: Renlita Products Pty. Ltd. v. T.J. Lees, B. Waters and R.M. Waters, Official Journal of 1 June 1967 p.1375 at p.1376; Roussel‑Uclaf v. Herchel Smith, Official Journal of 26 April 1974 p.1549 at p.1553 and W.A. Deutsher Pty. Ltd. v. General American Transportation Corp., Official Journal of 14 September 1978 p.3094 at p.3097.   All of these decisions follow the practice set out by the High Court of Australia in Sly v. United Development Corporation Pty. Ltd. (supra).
         Mr. Collins submitted that proposed claim 3 is unclear in that item (b) defines "means for rotating said sample holding means" (i.e. the turntable on which two vials are mounted) and item (e) defines "means for rotating said sample probe carrying means" (i.e. the arrangement to move the sampling probe between the rowsof vials) but in item (f)(ii), (iii) and (iv) reference is made to devices or means which initiate or are responsive to "said rotation".  Thus, he said it was not clear which of the previously defined rotation functions was being referred to in (f)(ii), (iii) and (iv): it could be items (b) and (e) respectively, or vice versa, or to the aggregation of the two rotation aspects.   In support of this stand he submitted that this ambiguity is not present in proposed claim 4 which reads:

"The system of claim 3 further comprising 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 said means occurs simultaneously."

As I understand that argument, he contended that by defining both rotational movements to occur simultaneously in proposed claim 4, the rotation referred to in claim 3 became, in effect, the aggregation of the two rotations but it left claim 3 in a state of uncertainty as to which of the two rotational movements was being referred to in claim 3 item (f)(ii), (iii) and (iv).   On this point Mr. Collins concluded that proposed claim 3 was not clear or fairly based, thus contravening of section 40.   He pointed out that, in his view, this fault was not present in the specification before amendment since the closest correspond‑
ing claim at the time of acceptance was claim 6 which was appended back through claims 5 and 4 to claim 1, claim 6 including the feature of simultaneity by virtue of claim 4.   Thus accepted claim 6 was equivalent to proposed claim 4 and therefore proposed claim 4 did not include the ambiguity present in proposed claim 3.
         Mr. Shavin (for the applicant) countered in saying that in proposed claim 3, in the passages in question, the construction defined is such that the rotation of the turntable is synchronised with the rotation of the probe carrying means (between concentric rows) and once both rotations are completed the lowering of the probe carrying means (into the vial) commences, establishing that the two rotation movements must happen prior to the commence‑
ment of the lowering of the sampling means ‑ similarly raising of the sampling means is complete prior to either of the rotation movements taking place.   In this sense the rotation movements and the raising/lowering movement are synchronised and the rotation movements are not necessarily simultaneous but may take place one after the other.  Proposed claim 4 introduces the simultaneous condition for the two rotary movements.   In other words Mr. Shavin suggested that in proposed claim 3 item (f)(ii), (iii) and (iv) the expression "said rotation" refers to the aggregation of both forms of rotation and that both are complete prior to lowering of the sample probe means and neither may start before the raising of the sample probe means.
         In considering these two views I am drawn to the opening statement of paragraph (f) of proposed claim 3 which defines "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:" (it then proceeds with, inter alia, the passages discussed above).   In this way, in my opinion, the proposed claim includes the two rotary movements in the one statement (i.e. the aggregation of the two).
         Consequently I conclude that proposed claim 3 is clear and there is therefore no contravention of the provisions of sub‑section 78(4).
         In summary therefore, the opponent has not made out any ground of opposition in relation to sub‑section 78(4) or on the matter of exercise of the Commissioner's discretion under section 81.   I therefore dismiss the opposition and award costs against the opponent.

(J.L. ROVETA)