Saab Aktiebolag v. Australasian Training Aids Pty. Ltd.

[1983] APO 7

In the Matter of the Patents Act 1952

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In the Matter of Application No. 436959 by SAAB AKTIEBOLAG

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In the Matter of a Request to Amend the Complete Specification thereof under Section 77, Pursuant to Action under Section 59

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In the Matter of Opposition thereto by AUSTRALASIAN TRAINING AIDS PTY. LTD. under Section 82.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         A request to amend the specification of Application No. 436959 was lodged on 13 November, 1978 and the particulars of the request were advertised in the Official Journal on 30 July, 1981.   A Notice of Opposition under section 82 was lodged by Australasian Training Aids Pty. Ltd. on 2 February, 1982, the opposition being based on the grounds set out in sub‑sections 78(1), 78(2) and 78(4).
         A hearing to determine the opposition took place in Melbourne on 9 February, 1983.   The applicant was represented by Mr. G.J. Noonan, Patent Attorney of Davies & Collison, and the opponent was represented by Mr. N.T. Brett, Patent Attorney of Clement Hack & Co.
         The request to amend was lodged in response to an interim decision of the Deputy Commissioner of Patents, Mr. P.F. Kildea, dated 13 September, 1978,

in the matter of an opposition to the application, the subject of the present hearing, under section 59 of the Patents Act by the present opponent.   In that decision the Deputy Commissioner upheld certain of the grounds of the opposition and allowed the applicant sixty days within which to lodge a request to amend the specification to remove those grounds.
         The content of the specification was considered in detail in the course of the earlier hearing.   In brief, the specification describes the invention as relating to the detection and registration of projectiles scoring hits on a target.   When a projectile hits and penetrates the target plate, the shock creates vibrations in the plate which can be detected by a suitable transducer, such as a piezo electric accelerometer, and converted to an electrical output for subsequent processing.   The problem in the prior art is represented as being that the vibrations induced by each hit last for periods of the order of 15 to 30 milliseconds (depending, inter alia, on the material of the target plate); this places a corresponding limitation on the frequency of hits which can be reliably detected.   The invention is described as depending on the realisation that the transducer output has a very sharp initial rise; accordingly instead of operating directly on the transducer output, it differentiates the output with respect to time to generate an initial large voltage peak of a magnitude not subsequently repeated in the output signals from that particular hit.
         As at acceptance the specification contained 7 claims, as follows:

1.Device for registering the number of projectile scoring hits on a target comprising a target of substantially rigid vibration transmitting material and a signal transmitter which is vibration sensitively attached to the target and arranged to generate signals in response to the vibration shocks arising when projectiles penetrate the target, characterised in that the signal transmitter is of the kind which is capable of reproducing the vibration shock in close conformity and that the transmitter is associated with a derivating device which is arranged to derivate the signals in response to time by which a high voltage peak is obtained, and the derivating device is operatively connected to an indicating means that is arranged to be operated by the voltage peak to indicate hits in the target.

2.Device according to claim 1, characterised in that an electric means connected between the derivating device and the indicating means is arranged to receive the derivated signal and when this exceeds a predetermined value generate a pluse of a certain amplitude and duration which pulse operates the indicating means.

3.Device according to claims 1 and 2, characterised in that the transmitter is vibration sensitively attached to an edge of the target and is directionally sensitive with its axis of symmetry oriented substantially parallel to the plane of the target.

4.A method of registering the number of projectile scoring hits on a target comprising the steps of producing an electrical signal simulating the mechanical vibration produced in the target upon being struck by a projectile, producing a further electrical signal representative of the first derivative with respect to time of the first said signal and registering a hit when said further signal exceeds a predetermined value.

5.Apparatus for registering the number of projectile scoring hits on a target comprising sensor means sensitive to mechanical vibration in the target produced when the target is struck by a projectile and arranged to produce an electrical signal simulating said vibration, and means for producing a further electrical signal representative of the first derivative with respect to time of the first said signal whereby a hit can be registered when said further signal exceeds a predetermined value.

6.Apparatus as claimed in claim 5 including register means arranged to register a hit when said further signal exceeds a predetermined value.

7.Apparatus substantially as hereinbefore described with reference to the accompanying drawings.

In his decision the Deputy Commissioner, commenting on certain of the evidence which had been submitted, stated:

"Mr. Noonan submitted that, in the apparatus described with reference to the drawings and in the apparatus claimed by claim 3, only the compressive and not the flexural pulses are detected and that Mr. Bowyer's declaration is largely irrelevant to the apparatus so described and claimed.   Although I do not equate the apparatus described with refer‑

ence to the drawings and the apparatus claimed by claim 3, I agree with that submission by Mr. Noonan, if the apparatus is such that only compressive pulses are detected.

In his submission in support of claim 1, Mr. Noonan conceded that a blanking pulse may be necessary in some circumstances. The specification does not refer to the necessity for a blanking pulse and gives no information in respect of the circumstances in which such a pulse would be required.  Further explanation of this aspect of the invention is required if it is to be included within the scope of the claims.   However, the concession by Mr. Noonan is an indication that Mr. Bowyer's conclusions are not completely without foundation."

He went on to say, with reference to section 40 and its application to the claims:

"Claim 1 refers to a "signal transmitter which is vibration sensitively attached to the target and arranged to generate signals in response to the vibration shocks arising when projectiles penetrate the target" and later states that "the signal transmitter is of the kind which is capable of reproducing the vibration shock in close conformity".   According to the description, the signal transmitter is of the kind that generates electric signals.   Further, at least in the embodiment described, it is not coupled to the target so as to be receptive of all vibrations of the target, only to particular vibrations.   It appears that the signal transmitter produces an electric signal in close conformity with those particular vibrations.

In the embodiment described, a projectile striking the target plate produces a vibration which, initially, and for a very short period of time, is of high amplitude.   According to the description, the invention is primarily based on a utilisation of the first part of the compression shock.  The vibration is reproduced by the signal transmitter as an electric signal which also, initially, and for a very short period of time, is of high amplitude.   It appears that herein lies an important feature of the invention which is asserted to overcome the limitations of the prior art.

Claim 1 states that the transmitter is associated with "a derivating device which is arranged to derivate the signals in response to time".   That is not standard terminology.   It appears from the description that there is a different‑

iating device which differentiates the signals with respect to time.   I might add at this stage that Mr. Noonan conceded that, in Figure 3, the signal appearing on the right of the figure has not been differentiated.

From the differentiating device, a high voltage peak is obtained.   It appears from the description that the high voltage peak is a result of differentiating the initial short part of the electric signal that is of high amplitude and that there is only one high voltage peak for each projectile hitting the target.   It also seems important that the high voltage peak is higher than the threshold voltage required to operate the indicating means which, in turn, is higher than the voltage of the remainder of the differentiated electric signal produced as a result of a projectile hit.  The claim is incorrect when it refers to "an indicating means that is arranged to be operated by the voltage peak to indicate hits in the target".   Only one hit is alleged to be recorded for each voltage peak.

Further, claim 2 is not quite correct if it is suggesting that part of the differentiated signal, other than the high voltage peak, exceeding a predetermined value can generate a pulse.   Although the description provides support for the requirement that the pulse has a predetermined amplitude and predetermined duration, it is not explained why that is necessary and, in particular, why the duration of a pulse should be larger than the duration of the initial shock.   It also seems that, as no further hits can be registered during the existence of the pulse, it is essential that it be shorter in duration than the expected time between successive hits.

The reference to "axis of symmetry" in claim 3 is not clear and that claim is not fairly based on the description.  Further, it appears that the axis should be in the plane of the target, not merely parallel to it.

Claim 4 suffers from some of the deficiencies referred to above.   In addition, it is not fairly based on the description as it does not state that the target is made of rigid vibration transmitting material or that the electric signal is derived directly from particular vibrations of the target.   Further, the distinction between "simulating" and "in close conformity" has not been explained and neither of those terms are adequately defined in the specification.   Mr. Noonan stated that the applicant is prepared to restrict the target material and amend "simulating" to "in close conformity" in claims 4 and 5.

For reasons already given, claim 5 is also deficient and, in addition, purports to define "apparatus for registering the number of projectiles scoring hits on a target" but does not include any means for registering a hit, an integer only introduced in claim 6.

It is thus clear that the specification does not comply with the requirements of section 40.   Accordingly, I will give the applicant an opportunity of seeking leave to amend its complete specification within 60 days of this interim decision.."

As a result of these comments, the applicant lodged a statement of proposed amendments under section 77 on 13 November, 1978.   After the normal examination process under section 79, a modified form of these proposed amendments was advertised in the Official Journal on 30 July, 1981.   In essence these amendments consist of altered drawings and an amplified description with new consistory statements in line with a new set of claims.  The claims, five in number, are as follows:

1.Apparatus for use in registering a projectile hit on a target comprising:

a target plate of substantially rigid vibration transmitting material;

a signal transmitter vibration sensitively attached to the target plate and arranged to generate an electric signal in response to the vibration shock travelling substantially in the plane of the target plate when a projectile penetrates the plate, which electric signal constitutes an accurate reproduction of the shock and includes an initial step caused by said projectile hitting the surface of the target;

differentiating means arranged to receive said electric signal from the signal transmitter and to differentiate the signal with respect to time, whereby to obtain a further electric signal including a leading peak caused by said initial step and having an amplitude greater than a pre‑

determined value, which peak amplitude may be utilised to register a target hit by said project‑

ile; and

blanking means operable by said leading peak to blank subsequent peaks, if any, of the further signal having an amplitude greater than said pre‑

determined value, occurring during a predetermined time longer than the time (t ) the projectile takes to shear into the target and less than the time (t ) the projective takes to pass through the target plate.

2.Apparatus for use in registering a projectile hit on a target comprising:

a target plate of substantially rigid vibration transmitting material;

a signal transmitter vibration sensitively attached to the target plate and arranged to generate an electric signal in response to the vibration shock travelling substantially in the plane of the target plate when a projectile penetrates the plate, which electric signal constitutes an accurate reproduction of the shock and includes an initial step caused by said projectile hitting the surface of the target;

differentiating means arranged to receive said electric signal from the signal transmitter and to differentiate the signal with respect to time, whereby to obtain a further electric signal including a leading peak caused by said initial step and having a peak amplitude greater than a pre‑

determined value, which peak amplitude may be utilised to register a target hit by said projectile; and

register means arranged to receive said further signal and operable by said peak amplitude to register a target hit by said projectile and to thereby index by one a record of the number of hits on the target plate, said register means including blanking means operable by said leading peak to blank subsequent peaks, if any, of the further signal having an amplitude greater than said pre‑

determined value occurring during a predetermined time longer than the time (t ) the projectile takes to shear into the target and less than the time (t ) the projectile takes to pass through the target.

3.An apparatus according to claim 2 wherein the register means further includes a register device and said blanking means is arranged to receive said further signal from the different‑

iating means and is responsive to the leading peak to generate a constant voltage trigger pulse for said register device of a duration comprising said pre‑determined time.

4.A method of registering a projectile hit on a target plate of substantially rigid vibration transmitting material, the method comprising:

generating an electric signal in response to the vibration shock travelling substantially in the plane of the target when a projectile penetrates the plate, which electric signal constitutes an accurate reproduction of the shock and includes an initial step caused by said projectile hitting the surface of the target;

differentiating said signal with respect to time whereby to obtain a further electric signal including a leading peak caused by said initial step and having a peak amplitude greater than a pre‑

determined value;

blanking subsequent peaks, if any, of the further signal having an amplitude greater than said pre‑

determined value occurring during a predetermined time longer than the time (t ) the projectile takes to shear into the target and less than the time (t ) the projectile takes to pass through the target plate; and

utilising said peak amplitude to register a target hit by said projectile.

5.Apparatus according to claim 2 and substantially as herein‑

before described with reference to the accompanying drawings.

The opponent's attack on these amendments can be divided into two main categories.   The first embraces a number of detailed points of criticism whereby it is alleged that grounds of opposition under sub‑sections 78(1) and/or 78(4) are established.   The second category corresponds to the entire evidence‑in‑support which takes the form of a Statutory Declaration by a Dr. Cash, an employee of the opponent company.   In his declaration Dr. Cash describes tests performed using equipment allegedly constructed in accordance with the amended specification.   The results obtained are presented in the form of oscilloscope traces, and purport to show that the declarant was unable to "relate the results obtained to the promise of the invention" and that "accordingly the specification must be regarded as not disclosing the best method known to enable the invention to be practiced".
         Although this second line of attack may be regarded as potentially the more serious of the two, it will nevertheless prove more convenient to deal initially with the first category, because as will be seen, several of the points thereof may have a bearing on the significance of the Cash evidence.
         The first point at issue in amended claim 1 is the reference at line 7 thereof to the "vibration shock" travelling substantially in the plane of the target plate.   The question of the nature of the shock wave generated by the impact of a projectile was discussed in the earlier section 59 Opposition, resulting from the Statutory Declaration of Bowyer.   While it is apparent that the Deputy Commissioner was not prepared to accept the Bowyer evidence in its entirety, nevertheless he indicated that further qualification of the term "vibration shock" was required.   As the opponent pointed out in the present proceedings, the amended specification at page 4 lines 24 and 26 uses the term "compression shock", a usage which the applicant argued was merely "generic".  It should be noted that the accepted claims also referred only to "vibration shock".  Although the amended claim may not strictly offend against sub‑
section 78(4) it does, however, fall short of the qualification which the Deputy Commisioner in his Interim Decision indicated was necessary.
         At the end of claim 1 the time of operation of the blanking means is qualified by reference to its duration being less than the time t  that the projectile takes to pass through the target plate.   The applicant has conceded that the specification as lodged contained no explicit reference to this upper limit, but has sought to rely on original figure 4, which, he has submitted, must be assumed to have the same time scale as figures 1 and 3 located on the same sheet above it, and that accordingly figure 4 shows a blanking pulse whose duration is less than the value t  indicated in figures 1 and 3.   It is by no means certain that this submission is correct, but even if so, it does not assist the applicant.  At best, figure 4 indicates one particular value for the blanking pulse duration which happens to be less than t ; it also happens to be less than 1/2 x t , or 2 x t .   There is no suggestion that the duration of the blanking pulse is related in any way to the time t .   Accordingly I find that in this respect amended claim 1 is directed to matter not in substance disclosed in the specification as lodged, thus contravening sub‑section 78(1).
         This item of amendment involves the introduction of the entire new set of claims.   Consequently the whole item must be disallowed, regardless of the merits or otherwise of individual changes.   However, in order to assist both parties regarding their future actions, I will offer brief comments on those other aspects of the claims which have been the subject of argument during the present proceedings.  

         In claim 1 I see nothing wrong with the term "may be utilised" at lines 18 and 19; this appears to be nothing more than normal drafting practice in an apparatus claim to indicate a capability.   It does not introduce any ambiguity into the claim.
         At line 20 the claim refers to "blanking means operable by said leading peak".   The opponent has expressed concern that the term "blanking means" per se has connotations which go beyond the disclosure in the specific‑
ation as lodged.   However the Deputy Commissioner in his Interim Decision appears to be satisfied that there is sufficient foundation, in that he does indicate qualified approval to the introduction of this term in a new set of claims.   The term "operable by" embraces both directly and indirectly operable, and I am satisfied that the specification as lodged provides an adequate basis for both forms.
         Claim 2, inter alia, defines a register means comprising (a) hit register means to record hits, and (b) blanking means.   The opponent has alleged that the specification as lodged did not contemplate or disclose a "register means" which included both integers (a) and (b) as sub‑units thereof, but only disclosed integers (a) and (b) as separate units; and that as a consequence claim 2 claims matter not in substance disclosed in the specific‑
ation as lodged, offending against sub‑section 78(1).   I do not consider this argument to have any substance.   Different persons might well employ different language to describe what the specification as lodged conveyed to them, but there is no doubt that the two functional items (a) and (b) were in substance disclosed.   The applicant is free to combine these integers under one appropriate generic title in the claim; the chosen generic title "register means" is, in my opinion, quite appropriate to define the sub‑combination of units (a) and (b).
         Of equally little substance, in my opinion, is the criticism that in claim 3 the reference at lines 4 and 5 to "responsive to the leading peak" should more correctly be a reference to "responsive to the leading peak amplitude".   Claim 3 is appended to claim 2 which contains the antecedent reference "a leading peak ... having a peak amplitude greater than a pre‑determined value".   While it may be true that in claim 3 the response is strictly to the peak amplitude, it would appear that this feature is inherent in this claim by virtue of the qualification contained in claim 2.
         The second major line of attack from the opponent relates to the Statutory Declaration by Dr. Cash.   As indicated earlier, Cash, an employee of the opponent company, describes tests performed using equipment allegedly constructed in accordance with the amended specification.   The results obtained with such equipment are presented in the form of oscilloscope traces which appear to show a plurality of large peaks, in magnitude equal to, or greater than the initial peak, occurring after the time t .   Although during these experiments blanking pulses were not applied, the effect is readily simulated by "blanking out", or otherwise ignoring, that part t  of the oscilloscope trace where
  t   < t   < t ,
t , t   and t  being as defined in the specification.   The upper limit t  is readily calculable from the experimental data, and the traces appear to show the occurrence of large peaks beyond this time.   Accordingly the declarant is unable "to relate the results obtained to the promise of the invention".
         The applicant has attempted to counter this evidence in three ways:

(1)he contends that the evidence, to whatever extent it is otherwise relevant, applies equally as much to the specific‑

ation as at acceptance as it does to the specification as proposed to be amended.   According to sub‑ section 78(4) the section 40 defect has to arise as a result of the amendment and in the case in suit, even if a defect were established to exist, it is not as a result of the amendment.   Accordingly the issue is not appropriate to the proceedings under section 82, but rather to the main opposition proceedings under section 59.

While the applicant's interpretation of sub‑section 78(4) is undoubtedly correct, there is in fact an argument that on the evidence in this particular case the defect does arise as a result of the amendment.   A fair reading of the specification as at acceptance might suggest an implied upper limit for time t  which would be compatible with the sought‑after improvement in detectable firing rate.   The prior art firing rate was stated to be limited to 50 hits per second.   A worthwhile improvement might be, say, a factor of 10, giving a detection rate of 500 hits per second which would correspond to a time between hits of 2 milliseconds; i.e. it could be inferred from the specification as at acceptance that the duration of the blanking pulse might be of this order.   Turning to the Cash results if the "test 1" trace, for example, is studied it can be seen that the last of the high voltage peaks occur at approximately 0.83 milliseconds.   Accordingly these peaks only constitute a "section 40 defect" when the time t   is restricted from the previously inferred figure of around 2 milliseconds to the proposed figure of t  which in the specification is 0.13 milliseconds and in the particular Cash experiment is even lower at 0.043 milliseconds.   In other words, the "defect" does arise as a result of the amendment.

(2)in the course of the Hearing the applicant produced an extract from the catalogue of the transducer manufacturer, which allegedly shows that the particular model or type number of the transducer utilised in the Cash experiments was unsuitable for the task.   The oscilloscope traces exhibited as test results do appear to indicate a characteristic frequency of approximately 18 HKz, while the catalogue indicates that, for the particular transducer used (type 4366) the operating frequency range is apparently 0.2 to 9000 Hz, and, further, that there is a resonance peak at 27 KHz.   The opponent has had no opportunity to rebut this criticism which prima facie appears to be of some substance.

On a somewhat similar theme I would add the comment that the specific‑
ation stresses the need for the transducer or signal transmitter to be "capable of reproducing the vibration shock in close conformity" (in the language of the specification as at acceptance) or for the electric signal to be "an accurate reproduction of the shock" (the wording of the amended specification).   A suitable arrangement for accomplishing this is described in detail in the body of the specification and illustrated in Figure 2.    Cash, on the other hand, in describing his test equipment at paragraph 6 of his declaration refers to a system "generally" in accordance with the disclosure of the preferred embodiment.   Further on in the same paragraph he describes an aluminium rod "extending from the bottom of the clamp and connected with" the signal transducer, but this effectively represents the total extent of the detail provided to describe how the vibration shock is reproduced.   This rather meagre information, allied with the doubts raised (supra) regarding the choice of transducer or signal transmitter, does not satisfy me that the apparatus built by Cash was fully in accordance with the specification in suit.

(3)the final point made by the applicant in response to the Cash declaration is that, even if this evidence is totally accepted at its face value, then what it is in fact saying is that equipment or apparatus, built according to the specific‑

ation, does not then perform to expectations; but that this is an issue of inutility, rather than insufficiency, and as such has no place in proceedings under section 82 (or, for that matter, under section 59).

The dichotomy between insufficiency and inutility was recognised by the Court of Appeal in Britain in Tetra Molectric Ltd.'s Application 1977 RPC 290. Roskill L.J. acknowledged that these may be difficult to distinguish, but stated:

"In my view, a dividing line can fairly be drawn thus: If you cannot achieve the promised result because of deficiencies in the information given in the specification, there is insufficiency.  But if, following that information and having achieved mechanically that which the specification promises you will achieve by so following it, the end product will not of itself achieve that promise, then that is inutility.   I do not pretend that that suggested dividing line is exhaust‑

ive, but it will in many cases ‑ and perhaps in the majority of cases in which this question arises in opposition proceed‑

ings ‑ point to the right approach in determining which side of the line a particular case falls."

The same view was expressed, perhaps more clearly, by Browne L.J. in his concurring judgement:

"As to the other point, the objection under sub‑paragraph (g) of section 14(1) of insufficiency, I again agree entirely with what my Lord, Lord Justice Roskill has said.   Plainly one has got to contrast the wording of section 14 with the wording of section 32, and it is quite clear that there is there the dichotomy, as my Lord has called it, between insufficiency and inutility.   I agree with the way in which my Lord drew the line between them.   In my view, the object‑

ion of insufficiency which can be raised under section 14 is that the specification does not tell the addressee enough to enable him to make the article or carry out the process which is the subject of the specification.   That I think is plain from the actual wording of the sub‑paragraph, "(g) that the complete specification does not sufficiently and fairly describe the invention or the method by which it is to be performed".   On the other hand, if you can from the specification make the article or carry out the process, the objection that it then will not work or will not achieve the result claimed for it is one of inutility which can be raised under section 32 but not under section 14.   As I understand it, this was the distinction formulated and applied by the Patents Appeal Tribunal at pages 103 to 105 of the judgment and I think also by the superintending examiner at page 76.  In my opinion, the superintending examiner and the Patents Appeal Tribunal applied the right test and came to the right conclusion on the facts of this case.   As I say, I would dismiss the appeal."

Cited before me on this point was a British decision by a Hearing Officer in the case of Udylite Corporation's Application 1968 FSR 225. This decision acknowledges, but contains no clear discussion of, the distinction between insufficiency and inutility. It is of lesser authority and I do not consider it to be of much assistance. It seems to me that the test enunciated in Tetra Molectric is appropriate, the only problem in applying it being that in some cases it may be difficult to distinguish between that which is the immediate subject of the claim, and the promise of the invention which may or may not be readily separable therefrom. In the present case no such difficulty arises, and following the authority of the Court of Appeal I am of the opinion that the issue raised by Cash is one of inutility rather than insufficiency, and therefore not appropriate to the present proceedings.
         In summary I have found that the opposition has been successful to the extent that in some detailed respects the amended claims are contrary to the requirements of sub‑sections 78(1) and 78(4).   The single item of amendment proposing the entire set of amended claims is therefore not allowable.   No submissions have been made regarding the other items of amendment relating to the description and the drawings; however whether or not they contain anything which is, strictly, not allowable under section 78 they do substantially correspond to the rejected claims, and I further assume them to be of no value to the applicant on their own.   Consequently I refuse the request in toto, and award costs against the applicant.
         However the complete specification would appear capable of amendment to overcome the deficiencies found by the Deputy Commissioner in his interim decision under section 59.   Accordingly I will permit the applicant a further opportunity of seeking leave to amend the complete specification within 60 days of this decision, before finally resolving the main opposition under section 59.

(J.L. ROVETA)