Petition — Marco Dental Products, Inc. v. Austin

—

MICHAEL RODAK, JR. CLERK

IN THE

SUPREME COURT OF THE UNITED STATES

October Term, 1977

v.77 1046

MARCO DENTAL PRODUCTS, INC.,

Petitioner,

v.

GEORGE K. AUSTIN. JR.,

Respondent,

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

J. PIERRE KOLISCH

Attorney for Petitioner

KOLISCH, HARTWELL, DICKINSON

& STUART

1004 Standard Plaza

Portland, Oregon 97204

Of Counsel

TABLE OF CONTENTS

I ů ũ

1. KkKKK —

Questions Presented. . 6

Constitutional and Statutory Provisions Involved

Statement of the Case . . . —

Reasons for Granting the Writ —

Conclusion 23 ꝗñ—A— —

Appendices:

A — Opinion of the United States Court

of Appeals for the Ninth Cireuit

Opinion of United States District

Court Judge Gus J. Solomon. . .

Opinion of United States District

Court Judge Gus J. Solomon on the

separate "on sale“ defense

The Constitution; Section 8, Clause 8,

Patents and Copyrigntss .

8 UBC. 6 ——(ñ!ñ,ñũ.ò

SE UBC. 8806„„„„„„4„„ł⸗„̈ .

United States Patent Re. 28, 649 to

pS 2.

Adee wholesale price list ‘effective

September 1, 198898 . .

Adee newsletter dated October 7,

2668 —

I

TABLE OF AUTHORITIES

Page

Cases:

Amphenol Corporation v. General Time

Corporation, 397 F2d 431 (7th Cir. 1968) 10

Anderson's-Black Rock, Inc. v. Pavement Salvage

Company, Inc., 396 US 57 (969) .. 6, 7

Bassick Mfg. Co. v. Hollingshead Co., 298 US

415 (1936) 266% %%%6„%6„% 2 „eee eeeeeeeee eeee 8

Electric Storage Battery Co. v. Shimadzu, 307

1 — U

Elizabeth v. American Nicholson Pavement Co.,

97 Us 126 6878) . — U

Great Atlantic & Pacific Tea Company v. Super-

market Equipment Corporation, 340 US 147

(1950) 626000 666% „ „„ „ „ „ 366% „ „ „ „„ „% „ „„ „„ „ „„ 6, 7

Holstensson v. V-M Corporation, 325 F2d 109

(6th Cir. 1963) 26 „%% „%6„%6„%6 „% 26% %% %%% %%% %%% %%% % %%% % %%% %% „% „ „„ „„ 9

Kamei-Autokomfort v. Eurasian Automotive

Products, 553 F2d 603 (9th Cir. 1977) 7

Lincoln Engineering Co. v. Stewart-Warner

Corp., 303 US 545 939 —ͥT .. 8, 9

MacDermid, Inc. v. Southern California Chemical

Co., ne., unreported, No. 74-2791, 9th Circuit

January 10, 1977 SSSSSSSSSSSSSSSESSESESSESESSESSSSSSSSESESOOCE ll

Robbins Company v. Lawrence Manufacturing

Company, 482 F2d 426 (9th Cir. 1973) .......... 10, II

II

Sakraida v. Ag Pro, Inc., 425 US 273 (976) 6

Schroeder v. Owens-Corning Fiberglass Corp.,

514 F2d 901 (9th Cir. 19739 8,9

Timely Products Corporation v. Arron, 523 F2d 288

(2nd Cir. 1975) SS „„%„%„%%% %%% %%% %%% %% %%% %%% %%% %%% %%% % „% „444% 10

Tucker Aluminum Products, Inc. v. Grossman,

312 F2d 293 (9th Cir. 1963) CS SSSSESESESESSSSESEEEOOE 10

Yarn Processing Patent Validity Litigation,

498 F2d 271 (Sth Cir. 197 10, U

Other Authorities:

28 U.S.C.

en 2

35 US.C.

Section 102(b) 36õ2*„⁵„v⁶̃ n «%%% „„ „464 2, 3, 9, 10, U, 12

Section 384 Ä4„ꝙ —— 2

Manual of Patent Examining Procedure

Section 706.030 )) — — 8

United States Constitution

Article I, Section 8, Clause ...... —— 2

EIIIIIIIIIIII TH

IN THE

SUPREME COURT OF THE UNITED STATES

October Term, 1977

No.

MARCO DENTAL PRODUCTS, INC.,

Petitioner,

V.

GEORGE K. AUSTIN, IR.,

Respondent,

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Petitioner Marco Dental Products, Inc. prays that a

Writ of Certiorari issue to review the judgment of the

United States Court of Appeals for the Ninth Circuit.

OPINIONS BELOW

The opinion of the Court of Appeals is reported at

195 USPQ 529 and is reprinted as Appendix A to this

petition. The opinion on the merits of the patent of the

District Court for the District of Oregon is unrepor ted,

and is reprinted as Appendix B. An earlier opinion of the

District Court on the "on sale“ issue is reprinted as

Appendix C.

1IIIIIIIIIIITIIIIT

2

JURISDICTION

The judgment of the Court of Appeals was entered

on September 12, 1977. A timely petition for rehearing,

and a suggestion for rehearing en banc, were denied on

November 8, 1977. The mandate of the Court of Appeals

issued on November 16, 1977 and a motion to recall the

mandate was denied on November 28, 1977. Jurisdiction

of this Court is invoked under 28 USC 512540].

QUESTIONS PRESENTED

I. Whether a lower court may nullify this Court's

requirement of finding a synergistic result in a mechan-

ical combination patent claim by holding one of the

claimed elements to be "new"?

2. Whether a claim may be upheld as valid which

is to an exhausted combination made up solely of

elements contained in other claims which claims the

patentee admitted were invalid in view of the prior art?

3. Whether a court may treat published offers to

sell a satisfactorily tested patented invention as not

being "on sale“ within 35 USC §102(b) by holding that a

commercial system which included the invention had not

been ready for delivery prior to the critical date?

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

This case involves Article I, Section 8, Clause8 of

the Constitution, Appendix D, and Sections 102(b) and 103

of the Patent Act of 1952, 35 U.S.C. §§102(b), 103,

Appendix E.

STATEMENT OF THE CASE

Respondent, George K. Austin, Jr. (Austin) sued

petitioner Mareo Dental Products, Inc. (Marco) for

TIITITIIIIIIIIIIII IT

3

infringement of his patent No. 3,638,310, entitled "Dental

Handpiece Control". The application for that patent was

filed October 24, 1969 and the critical date in connection

with the "on sale" defense under Section 102(b) is

October 24, 1968. After Marco filed its answer and

counterclaim alleging non-infringement and invalidity of

his patent, Austin filed for a reissue. The patent was

reissued as RE 28,649 which is the patent here in suit,

Appendix F.

A separate trial was held on the segregated issue of

whether the Austin invention had been "on sale" more

than one year prior to the date of the — of the

original patent application (October 24, 1969). The

District Court handed down en opinion holding that the

Austin invention had not been "on sale" more than one

year before the date of the patent application, and

denied Marco’s motion to enter an appealable order

concerning the "on sale" defense.

After a trial of the issues of validity and infringe-

ment, the District Court held that the Austin reissue

patent was valid, and that Marco had infringed claim 1 —

the only claim asserted against it. The Court of Appeals

affirmed the judgment of the District Court, and

petitioner seeks a review of that decision.

Austin's invention is a very simpie one. It is for the

use of a flexible diaphragm over ports in a block to

control the flow of air and water through the block. The

District Court said:

"The diaphragm is the heart of Austin's invention."

The Court of Appeals accepted that finding, and stated:

"The district court found that the Austin

diaphragm valve was different in structure and

function from that of the prior art references,

specifically the Davis patent and the Williams valve,

4

and thus was a new element."

That invention is disclosed in Fig. 6 of the Austin

patent (Appendix F) which Mr. Austin testified disclosed

his basic invention and was made over a weekend in June

or July of 1968. Mr. Austin took rough sketches of his

invention back to the plant of his company, Adec, and by

the end of July or the beginning of August 1968, the

control block with diaphragm had been built and satisfac-

torily tested. Mr. Austin testified as follows:

"A.

© rorer ©

Well, one cube which I — you can call a model;

it comes out of the model shop. You call it,

you know — it's a prototype, it's a model, and I

— I'm sure that we built just the one cube to

see where we were. This was completed

shortly after returning from the beach. I'd say

within a week.

So this would have been, in your present recol-

lection then, sometime ——

June, July

— June, July of '68?

M-hm (nodding head in the affirmative).

Did this work satisfactorily?

The cube — the block that we have in Figure 6,

[Austin patent] yes.

Did you know then that since you had one of

these blocks that worked you could arrange

them in series or cascade them and then it

would work satisfactorily in the completed

instrument?

M-hm (nodding head in the affirmative).

You've got to answer; she can't hear your head

nodding.

Yes, yes...

Well, what I'm trying to find out is, when was

the date ——

So I would have said the first model was com-

pleted in September, and that would be of this

1111111111111

5

(indicating) [Auto-Trol unit]; but, if you're asking

when the first block was completed from the

conceptual drawing, [ll have to go back and say

July. " (DX214, pp. 26-27, 39)

Austin's testimony was confirmed by his employee,

Mr. Parry, who actually designed, built and tested the

model of the first control block (DX217 pp. 8, 12-14). The

"model" Austin referred to is the complete control unit

known as Auto-Trol which includes three of the patented

control blocks connected in series.

On September I, 1968 Adee published and sent to its

dealers a price list which included four models of Auto-

Trol, Appendix G. Adec next sent its customers a

newsletter on October 7, 1968, Appendix H, showing a

picture of an Auto-Trol and alerting the customers to be

on the lookout for Auto-Trol at Adec's booth at the

meeting of the American Dental Association in Miami

Beach, Florida during the last week of October 1968.

During prosecution of Austin's reissue patent appli-

cation in the Patent Office, and after his attorney was

informed of the prior art Marco was relying on in this

suit, Austin cancelled claims 17, 18 and 19 of his original

patent as being invalid in view of such prior art. Those

claims broadly covered a control block with a flexible

diaphragm for opening and closing a pair of adjacent

ports on a face of the block. Cancelled claim 17 reads as

follows:

"In a control, a block having a fluid supply

passage and a fluid discharge passage therethrough,

the passages having adjacent ports at one face of

the block,

flexible diaphragm means covering the ad-

jacent ports,

and diaphragm cover means defining a dia-

phragm chamber opposite the adjacent ports

and adapted to selectively receive fluid

1111111111111T1T1

under pressure to press the diaphragm means

to a position elosing the ports.

At the beginning of the trial on the merits of the

Austin patent, June 14, 1976, Austin's attorney further

conceded that claims 7, 8 and 9 of the reissue were also

invalid in view of the prior art. Those claims were

cancelled in view of a Nielsen patent, which shows a

dental hand piece control made up of a plurality of

control blocks just like Austin's, except that Nielsen used

spool valves to control delivery of air and water rather

than diaphragm valves.

REASONS FOR GRANTING THE WRIT

L. This case squarely presents the issue of whether

a lower court may disregard this Court's synergistic

result test by simply stating that one of the elements

in a mechanical combination claim is "new".

The opinion of the District Court on the merits of

the Austin patent is completely silent on the test set

forth in Great Atlantic & Pacific Tea Com v.

Supermarket Equipment Corporation, 340 US 15 152

0), and . in — 2 Rocks Inc. v.

Pavement Salvage Com inc., 8 1

and Sakraida v. Pro, — 425 US 273, 282 (1976) that

in order to satisfy the non-obviousness requirement of

35 USC §103 a claim made up of a combination of old

elements must produce a synergistic result, i.e. one in

which the combination of elements produces "an effect

greater than the sum of the several effects taken

separately”.

The Court of Appeals sought to remedy the failure

of the District Court to apply the A&P test by stating:

"The District Court found that the Austin dia-

phragm valve was different in structure and function

from that of the prior art references, specifically

the Davis patent and the Williams valve, and thus

IA

I

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—

-

7

was a new element. No finding of unusual or

surprising results’ is required unless the patent

—4 ß &. Sena. — —

The allegedly "new element“ in Austin's combination

is the diaphragm valve according to both lower courts.

However, the diaphragm valve was admittedly old. It

was the subject of claims 17, 18 and 19 in the original

Austin patent which claims were cancelled from the

reissue patent because they were anticipated by the prior

art.

Anderson's-Black Rock, 396 U.S. at 59, is similar to

the present case, in that it was there urged on the Court

"... that the distinctive feature of the patent was the

element of a radiant heat burner. But it seems to be

conceded that the burner by itself was not patentable."

Likewise in the present case the patentee conceded that

the diaphragm valve by itself was not patentable when he

cancelled claims 17, 18 and 19 in his reissue patent.

I. The Court of Appeals ignored the decisions of this

Court that a claim to an exhausted combinatien is in-

valid for repategting.

In addition to conceding that claims17, 18 and 19

(diaphragm valve) were anticipated, Austin conceded

that claims 7, 8 and 9 (dental handpiece control without

limitation to diaphragm valve) were also invalid in view

of the prior art. This is recognized in footnotes 4 and 5

to the opinion of the Court of Appeals. However, the

Court of Appeals disregarded that the effect of those

admissions was that claim I was an attempt by Austin to

repatent the old dental handpiece control combination

shown in the Nielsen patent with the allegedly new

diaphragm valve substituted for Nielsen's spool valve.

PRRRARRRRREREEES

Ever since Bassick Mfg. Co. v. E 298

US 415, 425 6 * oes

Stewart-Warner * 1

deen 15 4 patentee may not repatent

an old combination by reclaiming it along with the im-

proved or new element substituted for the old element.

The Nielsen patent shows that it is old to have in

combination a control block for a dental handpiece

having passages for air and water and a valve in the

control block to control flow of air and water to a hand-

piece. Austin's alleged change or improvement over

Nielsen was that he substituted a diaphragm valve for a

spool valve in the block to control flow of air and water.

If this combination is an improvement over the prior art,

it is an improvement only because of the specific type of

valve used by Austin, i.e. a diaphragm valve. Instead of

just claiming the diaphragm valve Austin claimed it

along with the old control block mechanism. Of course,

it should be remembered that in cancelling claims i7, 18

and 19, Austin admitted that the diaphragm valve as such

was anticipated. When Austin cancelled claims 7, 8

and 9 in view of the Neilsen patent he admitted that the

rest of what he called for in claim I was also old.

The District Court erroneously disposed of the

exhausted combination — repatenting defense by saying:

" , .. Marco must show that a single prior art ref-

erence disclosed a combination of all of the same

elements in the same situation, united in the same

way, to perform the same function. Schroeder v.

Owens-C Fiberglass Corp., 514 F.2d 901, 903-

04 (Sth oe 9757 — 1 Patent Examining

Procedure, 58706. 0300 .

The District Court's statement is clearly not the law

and neither of the authorities cited support the state

9

ment. Schroeder was a summary judgment case which

was reversed on appeal because the case was not ripe for

summary judgment. The case had nothing to say

concerning exhausted combination or repatenting. The

citation to the Manual of Patent Examining Procedure is

in accord with Marco's position because it is based on

Lincoln Engineering.

The Court of Appeals simply ignored the exhausted

combination — repatenting defense which under the

uncontested facts of this case is a very substantial

defense. It has been almost thirty years since the Su-

preme Court addressed itself to this defense. For a

scholarly discussion of the opinions of the Supreme Court

on the subject, see Holstensson v. V-M Corporation, 325

F2d 109, 122-25 (6th Cir. 1963), cert. den. OT US. 966

(1964).

II. The Court of Appeals opinion holding that the pat-

ented invention was not "on sale" within 35 USC § 102(b)

is contrary to the statute.

35 U.S.C. §102(b) provides that a patent is invalid if

the invention, not a completed commercial system which

includes the invention, has been on sale in this country

more than one year prior to the date of the patent

application.

As previously mentioned, both the District Court

and the Court of Appeals found that the invention in the

Austin patent resided in the diaphragm valve shown in

Fig. 6 of the patent. This is only part of a complete

Auto-Trol unit which is made up of a plurality of such

valves plus other parts for controlling air and water to a

plurality of dental handpieces.

The Court of Appeals held that prior to the critical

date the Austin invention was still experimental and was

not on sale because only preliminary tests had been made

on an Auto-Trol prototype which had not been tested by

FrrrrrrrrriI ee ee ei

10

dentists and no devices had been sold. The Court said:

"After some preliminary tests with air and water

connections, a prototype was shipped to Miami about

October 22, 1968. It had not been used or tested by

dentists. In fact, suggestions were made at the

convention for significant design changes. As a

result Adec substituted a metal hinge block for a

plastic one and developed a "lock-out" device which

allowed the hand pieces to be engaged independent-

ly.

"No Auto-Trols were sold before the critical date

and pre-October 24 descriptions were of an undevel-

oped, untested and incomplete device."

It is unnecessary for a device actually to have been

"sold" in order for there to be a sale under §102(b). Price

lists and newsletters advertising a patented product are

offers to sell under the statute. Amphena! O ation

v. General Time C ati d BL 433

(7th Cir. 1968); Tucker Tae m Products, Inc. v. Gross-

man, 312 F2d 293, 295 (9th Cir. 1963).

In Timely Products C ation v. Arron, 523 F2d

288, 299-302 ind Cir. 1978) the Court reviewed the law

of the "on sale“ defense in various circuits and concluded

that a device was "on sale“ within §102(b) if (1) the

complete invention was embodied in or obvious in view of

the thing offered for sale; (2) the invention was tested

sufficiently to verify operability and marketability; and

(3) the offer was primarily for profit rather than for

experimental purposes. All of these conditions existed

with respect to the Austin invention.

In Robbins pete v. Lawrence Manufacturing

Company, t

any activity attempting to sell an invention to members

of the public places it on sale within the meaning of

30200), and that any such coffer tc sell places the

1

mn

in

om

.

*

—

1

invention on sale within the statute "unless there is the

express or clearly implied condition of experimentation"

482 F2d at 434).

In In re Yarn Processing Patent Validity Litigation

498 Fad ff th Cir 170 the Court reviewed he Fon

sale" law, and came to a liberal interpretation of what

amounted to experimental use of an invention such as to

avoid the invalidating effect of §102(b). The Fifth

Circuit expressly rejected the rule in the Robbins case as

being "excessively rigid" 498 F2d at 287. And in

MacDermid, Inc. v. Southern California Chemical Co.

Inc., unreported, No. 74-2791, decided January 10, 1977,

another panel of the Ninth Circuit questioned the rule of

the Robbins case as being too restrictive.

The conflicting views in various circuits concerning

the "on sale“ defense, particularly as to what comprises

"experimental use“ should be resolved. This Court has

not squarely dealt with the question of "experimental

use" for a hundred years, Elizabeth v. American Nichol-

son Pavement a 97 U.S. 126 (1878). In Electric Storage

Battery Co. - Shimadzu, 307 U.S.5 0 e Court

barely — on "experimental use“, because in that

case the use was an ordinary commercial one in a fac-

tory.

The fact that complete Auto-Trol units which in-

cluded the patented invention were not tested by dentists

was a deliberate choice on the part of Mr. Austin. He

testisfied that he did not consider evaluation and testing

by dentists necessary because he was experienced in the

field, and knew that his invention would work. (DX214,

pp. 6-7). The changes made to Auto-Trol as a result of

its exposure at the Miami convention, and referred to by

the Court of Appeals as "significant", had to do with

substituting met u for plastic in a hinge, and the addition

of a lock-out device. Neither of these changes are part

of the patented Austin invention, and in any event they

are clearly unpatentable changes made to Auto-Trol to

1111111111111111

12

improve its saleability. The device offered for sale by

Austin prior to October 24, 1968 was clearly covered by

claim 187 his patent. (TT 379-30).

35 U.S.C. §102(b) only requires that the "invention"

be on sale and there is no requirement that that

invention must have been embodied in an operable

prototype which had been used and tested when the

inventor considered that unnecessary.

It was error for the Court of Appeals to hold that

Austin had not engaged "in competitive exploitation of

his invention until after the critical date", because it is

uncontradicted that prior to that date the Austin

invention of a diaphragm valve in a control block had

been satisfactorily tested alone, and as a part of a

complete Auto-Trol which had been sent to Miami prior

to October 24, 1968, Furthermore, the price lists and

newsletters advertising Auto-Trol which had been sent to

customers in September 1968 had no restrictions or any

indication that the offers to sell were for experimental

purposes.

CONCLUSION

For the reasons stated, a Writ of Certiorari should

issue to review the judgment and opinion of the United

States Court of Appeals for the Ninth Circuit.

Respectfully submitted,

KOLISCH, HARTWELL,

DICKINSON & STUART

J. PIERRE KOLISCH tS

Attorneys for Petitioner

111111111111111I1

Appendix A

IN THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

GEORGE K. AUSTIN, JR.,

Plaintiff-Appellee, No. 76-3749

v. OPINION

MARCO DENTAL PRODUCTS, INC.

Defendant-Appellant.

Appeal from the United States District Court

for the District of Oregon

Sept. 12, 1977

— — —-—Tm — . — —— ——ͤê

WRIGHT, Circuit Judge:

This appeal raises issues concerning a patent's

validity and infringement: (a) the "on sale" proscription;

(d) nonobviousness; (e) combination of known elements;

(d) standards for reissuance and (e) intervening rights.

Appellee, George K. Austin, Jr., alleges that appel-

lant, Marco Dental P-oducts, Inc. (Marco Dental), in-

fringed Claim No. 1 in his patent [U. S. Patent No. Re

28,649] for a "dental handpiece control." His company,

Adec, Inc., manufactures it under the trade name "Auto-

Trol.“ Marco Dental sells a similar device.

Claim No. 1 describes a mechanism which automati-

cally controls the flow of air and water to a compact

dental handpiece. The device combines a dental hand-

piece, a control block assembly and a hanger valve

assembly. In operation it permits the automati¢ feeding

of drive air, cooling water and air, and chip air without

requiring the dentist to adjust for each of the three to

seven handpieces he may use with a typical patient.

Central to Austin's invention is the innovative use of

flexible diaphragms to regulate the flows, such as those

required in high speed drills. The district court

TREEITIREERR RR EEEE

A2

Appendix A

succinctly described their function:

piece. When the dentist uses an adjacent handpiece,

the air and water flow straight through the inter-

control block and into the control block

the handpiece being used. In this way, air

and water only flow across the diaphragm of the

particular control block connected to the handpiece

being used.

Austin conceived his invention on a summer weekend

in 1968 and by August of that year had constructed a

prototype of the control block. Adec issued a wholesale

price list effective September 1, 1968 giving prices of

four Auto-Trol models. A newsletter of October 7, 1968

sent to Adec customers introduced the new unit and

other items. The prototype was displayed at a dental

convention in Miami on October 27, 1968.

The orignial patent application was filed on October

24, 1969 and a patent was issued in February 1972 as No.

3,638,310. Three months later Austin sued Marco Dental

for infringement.

On September 27, 1974 Austin filed for a reissue of

his patent because the language of claims | and 4 was

defective. He later submitted an amendment requesting

that claims 17, 18 and 19 be cancelled, based on prior art

patents brought to his attention by Marco Dental.

Following the patent's reissue (No. Re 28,649) in Decem-

ber 1975, Austin filed an amended complaint for patent

infringement.

The "on sale" issue was segregated from others. The

district court held a trial in February 1976 on the issue of

whether the Austin invention had been "on sale" more

than one year prior to October 24, 1969, the filing date of

1111111111111

/

)

A3

Appendix A

the original patent application. The court held that it

had not been "on sale“ and denied Marco Dental's request

for interlocutory certification.

The remaining issues of validity and infringement of

the Austin reissue patent were tried later. Only claim 1

was at issue and the district court entered judgment for

appellee after determining that the Austin patent was

valid and infringed.

L

"ON SALE"

The "on sale“ provision, 35 U.S.C. § 102(b) states, in

pertinent part:

A person shall be entitled to a patent unless—

(b) the invention was patented or described... in

public use or on sale in this country, more than one

year prior to the date of the application for patent

in the United States.

The rule of this circuit in determining whether the

invention was "on sale“ more than one year before the

patent application was expressed in Robbins Co. v.

Lawrence Mfg. Co., 482 F.2d 426 (9th Cir. 1973), where

we said:

A sale or an offering for sale

precludes any inquiry into the experimental nature

of the sale unless the contract of sale or the

offering for sale contains an express or clearly

implied condition that the sale or offering is made

primarily for experimental use.

Thus the sale or offering would not ipso facto

invalidate the patent nor preclude further inquiry

into the experimental nature of the use where the

contract or the offer ... showed that the device

was still experimental and that no workable proto-

BEEEE

A4

Appendix A

type had been made (Americo [sic] Contract Plate

Freezers, supra);....

Id. at 433 (emphasis in original).

The invention must be completed before sales

efforts become a bar. Appellar* contends that Austin's

invention, the control block was fully completed by

August 1968, two months before the critical date of

October 24, 1968. To support its argument Marco Dental

points primarily to the Adec wholesale price list of

September l, 1968 and the October 7 Adee newsletter to

its customers with its brief description of the Auto-Trol

and the picture of a mock-up.

Amerio Contact Plate Freez Inc. v. Beit-Ice

a Slo F.2d 459 (oth Cir. 1969), aise involved drawings

and a mock-up of a freezing device shown to customers

prior to the critical date. We held that, unless there was

in existence a fully-operative device incorporating the

invention prior to the critical date, there could be no

"placing of the invention on sale in the sense intended by

the statute.” Id. at 464.

Ordinarily ... selling activity ... prior to the time

that a fully-operative article or apparatus incorpo-

rating the invention comes into existence, is not a

reliable indicium of competitive exploitation. Until

at least an operative prototype has been completed

and tested, the competitive effectiveness of such

activity, in all probability, will be impaired by the

aura of continuing developmental, experimental and

testing effort. Moreover, at this stage, such

activity is likely to be more for the purpose of

eliciting needed changes in design and testing

whether the market potential warrants continuance

of the project, than to launch full-fledged com-

mercial exploitation.

Id. at 465.

The annual price list was mailed to Adec dealers

after the conception of the invention and completion of a

11111111I1IIIIIIII

A5

Appendix A

test model embodying the underlying principle, but

before development of an operative Auto-Trol prototype.

The newsletter invited Adec customers to view the

company's new products at Adec's exhibition booth at the

American Dental Association convention in Miami on

October 27-29, 1968. Many manufacturers including

Adec previously had used dental conventions as a

sounding board to elicit suggestions from practitioners

for modifications and to measure possible acceptance of

planned products before production and sale.

After some preliminary tests with air and water

connections, a prototype was shipped to Miami about

October 22, 1968. It had mot been used or tested by

dentists. In fact, suggestions were made at the conven-

tion for significant design changes. As a result Adec

substituted a metal hinge block for a plastic one and

developed a "lock-out" device which allowed the hand-

pieces to be engaged independently.

No Auto-Trols were sold before the critical date and

pre-October 24 descriptions were of an undeveloped,

untested and inedmplete device.

An ination of the legislative history surround-

ing the on sale“ provisions reveals that Congress was

a — that, before an invention was considered

"fully completed" and the inventor was required to file to

avoid the one year bar, it must be reduced to practice.

The first conceptions of ingenuity, like the first

suggestions of science, are theories which require

something of experiment and practical exemplifica-

tion to perfect. Mechanical inventions are at first

necessarily crude and incomplete. Time is required

to develop their imperfections and to make the

improvements necessary to their adaptation to

practical uses.

S.Rep.No.338, 24th Cong., Ist Sess. 6 (1836) Cf.

S.Rep.No.876, 76th Cong., Ist Sess. (1939);

H.R.Rep.No.961, 76th Cong., Ist Sess. (1939).

—

A6

Appendix A

We believe the district court did not err in conclud-

ing that "Austin did not engage in the ‘competitive

exploitation of his invention’ until after the critical

date.”

I.

"NONOBVIOUSNESS"

A new patent must not only be new and useful, but it

also must be nonobvious. Section 103 provides:

A patent may not be obtained...

if the differences between the subject matter sought

to be patented and the prior art are such that the

subject matter as a whole would have been obvious

at the time the invention was made to a person

having ordinary skill in the art to which said subject

matter pertains....

The crucial question is whether the invention would

have been obvious to one of ordinary skill in the

pertinent art. Saf-Gard Products, Inc. v. Service Parts

Inc., 532 F.2d 1266, 1270 (9th Cir.), cert. deni 0

888, 97 S.Ct. 258, 50 L. Ed. 2d 179 (1976).

With the addition of Section 103 as part of the 1962

Amendments to the patent lays Congress reoriented the

focus of inquiry from novelty” to nonobviousness. Faced

with interpreting the meaning of nonobviousness the

Supreme Court articulated a three-pronged standard for

factual inquiry in Graham v. John Deere, Co., 383 U.S. 1,

86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

According to that case, a court must examine: (1)

the scope and content of the prior art; (2) the differences

between the prior art and the claims at issue; and (3) the

level of ordinary skill in the pertinent art. Id. at 17, 86

S.Ct. 684. See also Globe L Inc. V. City of of

Corvallis, 555

The Court Tecently reemphasized that in determi-

ning nonobviousness the proper measure is not "what

A7

Appendix A

would be obvious to a layman, but rather what would be

obvious to ‘one reasonably skilled in [the applicable]

art.'" Dann v. Johnston, 425 U.S. 219, 229, 96 S.Ct. 1393,

1398, (1976). The Graham inquiry,

moreover, must be made in the light of "the problem

allegedly solved by the invention and the efforts of

others to arrive at a satisfactory solution." Reeves

Instrument Corp. v. Beckman Instrument, Inc., 444 F.2d

Ten, PHT (0th Cir WT, crt. denied, 404 US, 951, 92

S.Ct. 283, 30 L.Ed.2d 268 "

The district court found the patent at issue nonobvi-

ous under the Graham standard. Its Graham findings are

determinative on appeal unless clearly erroneous. Saf-

Gard, 532 F.2d at 1272. Here the court examined the

prior art references, weighed expert testimony, and

applied the proper test to the evidence.

Appellants primarily rely on, and the district court

discussed at length, three prior art references: ( the

Nielsen patent (No. 3,466,749); (2) the Davis patent (No.

3 and (3) Williams' diaphragm valve (not paten-

ted).

As the district court noted in its opinion, the

development of high speed air driven dental handpieces

in the 1950's created a need for a more efficient system

to control the flow of air and water to handpieces. Many

control systems were developed but, before the Austin

patent, one used a flexible diaphragm valve. A

diaphgram valve system alone, however, was not new and

had been used in unrelated industries.

Marco Dental argues that the Williams valve, used in

truck scales, and the Davis patent, used in water

softeners, presaged the use of the diaphragm valve. The

trial court found these were large and bulky compared to

the Austin valve which was miniaturized and particularly

well suited for dental equipment.

The district court further distinguished the Austin

m valve on the basis that the Davis patent and

the Williams valve do not function to close all ports as

A8

Appendix A

does the Austin device. Testimony at trial indicated that

this feature is a significant advantage because it is more

effective in preventing leaks. b

Appellant argues that the Nielsen patent demon-

strates all ele megts of claim 1 except for the use of a

diaphragm valve. The district court found, however,

that the Nielsen patent also did not have a hanger for the

handpiece which moved vertically to control the opera-

tion of a hanger valve.

Whether the differences cited rise to the level of

patentability depends upon the level or ordinary skill in

the pertinent art. Such a determination must follow an

analysis of the problems purportedly solved by the

invention and the efforts of others to arrive at satisfac-

tory solutions.

The record shows that until 1940 drill speed was

relatively slow and heat generation was not serious. In

the early 1950's, however, dental handpieces were devel-

oped with an air turbine device which increased the

speed and generated more heat. Many manufacturers

developed dental handpiece control systems using a

variety of valves.

Generally the valves were large, required several

moving parts and often malfunctioned. Abundant

evidence exists in the record from which the district

court could find that the Austin invention would not have

been obvious to a researcher in the dental field in 1968.

The invention was a significant step forward in the art of

dental equipment.

Marco Dental's expert witness, Fishwood, testified

that the use of flexible diaphragm valves was well

developed and that persons of ordinary skill in valve

design knew diaphragm valves could be substituted for

spool, poppet and other types of valves. He concluded

that the use of such a valve would have been apparent to

an ordinary designer of dental equipment.

Fishwood's conclusion, however, is seriously under-

mined by the testimony of others. Fishwood'’s company

A9

Appendix A

developed the Williams valve and engaged in the manu-

faeture of dental equipment and other industrial items.

Its efforts over many years to develop an effective and

efficient dental handpiece control were unsuccessful. A

diaphragm valve, which has since become standard in the

industry, was never utilized or developed by persons of

"extraordinary skill" in the dental equipment field.

The district court's conclusion that the Austin

patent was nonobvious is supported by the evidence and

is not clearly errcneous as a matter of law.

III.

COMBINATION

The district court found that the Austin diaphragm

valve was different in structure and function from that

of the prior art references, specifically the Davis patent

and the Williams valve, and thus was a new element. No

finding of “unusual or surprising results" is required

unless the patent merely combines old elements. Great

Atlantic & Pacific Tea Co. v. Supermarket — ment

Ct. 9 . ;

* >. *

5 v. Eurasian Automotive Products,

7. Ir.

Our review demonstrates that the Austin patent was

more than just an improved product. It was an

innovatively different one. See Kamei-Autokomfort,

a. The substitution of a diaphragm valve in

combination with a hanger valve assembly was not

readily obvious to a person of ordinary skill in the field.

Miniaturization of the control block was realized,

and its simplicity markedly reduced manufacturing and

maintenance costs. Moreover, while secondary consider-

ations are not conclusive, Kamei-Autokomfort, supra,

circumstantial factors such as the resolution of a y

problem in the dental field and the device's subsequent

widespread use as a control mechanism buttress the

conclusion of nonobviousness. See Saf-Gard Products,

1IIIITTTITTITIIIIII

Alo

Appendix A

Inc., supra.

IV.

REISSUE

Marco Dental contends that the Austin patent was

illegally reissued because, although Austin submitted an

oath to support the reapplication for reissue, he did not

submit one to support the cancellation of claims 17, 18

and 19 in his amendment.

The district court found no merit in this contention

and we agree. The statute, 35 U.S.C. § 251, requires that

the provisions relating to applications for patents shall

be applicable to applications for reissue. An oath by the

inventor is required by 35 U.S.C. § Us and Austin

complied. Amendments not constituting new matter do

not require the supplemental oath of the inventor. See

as Aerosol Research Co. v. Scovill Manufacturing Cony

° Ir. ° e amendment in question

did not constitute new matter but rather eliminated old

matter, claims which Austin believed had been described

too broadly and, therefore, relied on prior art.

V.

INFRINGEMENT

Marco Dental concedes its product has all elements

recited in claim 1 of the Austin patent except for a drive

air passage and a cooling air passage extending "there-

through". Given our determination that the patent is

valid the question of infringement hinges on the meaning

of the word "therethrough" as used in claim l.

Appellant argues the term refers to a straight

passage through each control block by which fluid or air

passes from one block to another. It contends this

reading is compelled because the Austin invention always

contemplated multiple blocks instead of one and such

passages serve no purpose unless multiple block units are

used

EERE RERERERER RR EBEE

All

Appendix A

Austin asserts that "therethrough" refers to the

"circuitous" passage which leads from one port to and

from the diaphragm to another port. The appellant's

device also have a "circuitous" passage leading to and

from the diaphragm but has none carrying air and fluid

directly from one control block to another. In Marco

Dental's product, air and water are delivered by a

manifold block to an individual control block and do not

pass from one block to an adjacent one as in the Austin

invention.

The district court held that "therethrough" referred

to the indirect or "circuitous" passage for air or fluid

through the control block, to and fromthe diaphragm, and

out to the handpiece. The court stressed that Marco

Dental's interpretation ignores the language in claim 1

that the drive air passage and cooling fluid passage each

have a "pair of ports intermediate [to] the inlet and

outlet ... opening into ... the diaphragm chambers.

. . C. T. 40].

We believe the court's determination was not clearly

erroneous and claim Jof the Austin patent was infringed.

V.

INTERVENING RIGHTS

The patent law, 35 U.S.C. § 252, provides for

intervening rights of a manufacturer who does not in-

fringe a valid claim of the reissued patent which was in

the original patent. It also states that reissuance neither

affects any pending action nor abates any cause of action

existing to the extent that the claims of the orignial and

reissued patents are identical.

Appellant avers that claim | in the reissued patent is

substantially different from the original claim and

therefore it has acquired intervening rights. The district

court concluded that the modification of claim 1 was to

clarify and make more precise the language used without

substantive changes in the claims. The doctrine of

Al2

Appendix A

intervening rights is inapplicable where claims of a

reissue patent are substantially identical to those of the

original patent. See, e.g., Akron Brass Co. v. Elkhart

Brass Mfr. Co., 3535 F. Id 757 (7th Cir. 1965). Appellant's

1111111111111

arguments to the contrary are unpersuasive.

AFFIRMED.

FOOTNOTES

Drive air operates small turbine-like motors which

run the drills. Chip air blows away debris during

drilling.

Compare Kalvar Corp. v. Xidex C 556 F.2d

966, “Sth Cir. 1977), = it was held th that plaintiff

who sold and distributed samples of his product more

than a year prior to the date of filing had acted in a

commercial rather than experimental manner.

3. See, e.g. Hotchkiss v. Greenwood, 52 U.S. (ll How.)

248, 13 L.Ed. 683 (1851) (functional approach to

invention).

In a preliminary amendment dated March 7, 1975,

Austin requested cancellation of claims 17, 18 and 19

because prior patents disclosing fluid flow control

devices utilizing diaphragms made them invalid for

broadness. He maintained that claim 1 remained

valid because of athe arrangement of passages and

ports in the control block.

Austin conceded at the outset of trial that claims

7, 8 and 9 were invalid on the basis of the Nielsen

patent, which disclosed a plurality of control blocks.

111111111111IIIII

Al3

Appendix B

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

GEORGE K. AUSTIN, JR., )

Plaintiff, Civil No. 74-343

vs. OPINION

MARCO DENTAL PRODUCTS, me.)

Defendant.

SOLOMON, Judge:

This is an action for patent infringement.

Plaintiff, George Austin, contends that defendant,

Marco Dental Products, Inc. (Marco), infringed his patent

on a dental handpiece control mechanism. Marco denies

this contention and asserts in a counterclaim that

Austin's patent is invalid.

Austin's patent (U.S. Patent No. 3,638,310) was

issued in February 1972 upon an application filed in 1969.

Several months after this action against Marco was filed,

Austin applied for reissue of the patent with several

modifications to clarify the scope of claim l. In an

amendment to the application for reissue, Austin can-

celled claims 17, 18, and 19. The patent was reissued in

December 1975 (U.S. Patent No. Re. 28,649).

The patented device controls the flow of air and

water to a dental handpiece. The device vermits drive

air, cooling water and air, and chip air to be automati-

cally fed into the particular handpiece that a dentist

wants to use. When the dentist picks up handpiece #1, he

does not have to make any adjustments to get the air and

water to that handpiece.

Austin's device uses flexible diaphragms to regulate

11111111IIIIIII II.

—

Al4

Appendix B

the flow of air and water. Behind each handpiece is a

control lock. When a dentist uses a handpiece, the air

and water will flow into the control block, down a port to

the diephragm (which is flexed open when the handpiece

is picked up), up the adjacent outlet port, out to the

handpiece. When the dentist uses an adjacent handpiece,

the air and water flow straight through the interceding

control block and into the control block behind the

handpiece being used. In this way, air and water only

flow across the diaphragm of the particular control block

connected to the handpiece being used.

Before Austin's invention, manufacturers of dental

equipment did not have a control mechanism which

worked automatically, and which was both simple and

reliable. The available mechanisms were bulky, unreli-

able, and often expensive. Austin's invention has been

widely adopted in the industry.

A-dee, Inc., which is Austin's company, manufac-

tures and sells dental handpiece controls using Austin's

invention. Marco sells a similar device (the accused

device).

The principal issues are: (1) Is Austin's patent valid?

(2) Does the accused device infringe Austin's patent?

Marco also raises additional issues: (3) Was the

reissue of the patent properly granted? (4) Does Marco

have intervening rights as a result of the reissue?

In a previous trial, I found that Austin's invention

was not "on sale“ more than one year before the patent

application was filed and was therefore nat invalid by

reason of 35 U.S.C. § 102(b).

This case is now before me on validity and infringe-

ment. The issue of damages has been segregated.

lL VALIDITY

A. The Prior Art

The development of high-speed, air-driven dental

handpieces in the 1950's created the need for a more

Al5

Appendix E

efficient system to control the flow of air and water to

handpieces. Many control systems were developed which

used standard needle valves, poppet valves, or spool

valves operated by an electrical solenoid, air-driven

piston, or other mechanical means. Typically, the valves

used springs and required a number of moving parts.

They were bulky, and often malfunctioned. No system

used a flexible diaphragm to close ports to prevent the

flow of air and water.

The use of diaphragms was not new. They were used

in a variety of industrial mechanisms unrelated to dental

equipment: milk processing equipment, paint sprayers,

water softeners, and truck scales. 3

At trial, Marco introduced in evidence 2] patents or

devices as representing the art as it stood in 1968, the

time of the Austin invention. But Marco relied primarily

on three of those references.

The first patent Marco cites is the Nielsen patent

(U.S. Patent No. 3,466,749). Marco cites it as showing

all of the dental handpiece control mechanism in claim 1

of Austin's patent, except the diaphragm. Nielsen has a

console unit with trolley assemblies for retracting and

storing hoses leading to a dental handpiece. Flow of

drive fluid and cooling fluid to the handpiece is con-

trolled through a selector block having a number of spool

valves, one for each of the fluids to be controlled. When

a hose is pulled a certain distance, a pilot valve is opened

to pass air to a piston, which opens the spool valves, so

that air and water may flow to the selected handpiece.

When the hose is retracted, the air from the pilot valve

is cut off to permit the selector block valve spool to

close by a pair of biasing springs. Nielsen does not show

a hanger for the handpiece which moves up and down

when the handpiece is removed or replaced to control the

operation of a hanger valve, which in turn controls the

flow of fluid to the diaphragm chambers. This hanger is

shown in claim 1 of the Austin patent.

Marco cites the Williams valve WM-195B and the

1111IIIIIIIIII

Als

Appendix B

Davis et al. patent (U.S. Patent No. 2,677,390) as

teaching the use of diaphragm valves.

The Williams valve is used in built-in load weighing

scales on log trucks and for other industrial purposes.

The valve is large. It would require four Williams valves

assembled in a tree-like structure, standing approximate-

ly 8 to 10 inches high and 7 inches in diameter, to

perform the same function as Austin's control block,

which is a l-inch cube with a single diaphragm.

The Davis device, which is also very large, was

designed for use in a water softener. It is essentially

three Williams valves set side by side. A structure

approximately 7 to 8 inches long, 2 to 3 inches wide, and

2 to 3 inches high would be required to perform the four

functions of the Austin control block.

Both the Williams and Davis diaphragms function

differently from that of Austin. All three use air or fluid

under pressure to press against a diaphragm, closing inlet

or outlet ports in the opposite face of a control block.

But Austin uses ports coming to a flat surface opposite

the diaphragm so that all ports are closed by the

diaphragm. The Williams and Davis diaphragms do not

close all ports.

B. The Patented Device

Marco challenges the validjty of the Austin patent

on the ground of obviousness. Marco contends that

because of the prior art, Austin's device was obvious to a

person or ordinary skill in the art of making dental

equipment. Marco contends that the Nielsen device

contains all of the elements of Austin's device, except

the diaphragm, and that the Davis and Williams devices

show the diaphragm.

Even though the ultimate question of patent validity

is one of law, the obviousness issue requires me to

resolve the scope and content of the prior art, the

differences between the prior art and the claims at issue,

and the level of the ordinary skill in the pertinent art.

1111111111111IIII

Al7

Appendix B

Graham . John Deere Co., 383 U.S. 1, 17 (1966).

lece control systems were well known in the dental

equipment industry. Before Austin, the handpiece

controls used standard valve technology, including needle

valves, poppet valves, or spool valves; none used dia-

phragm valves. Diaphragm valves were known, but they

were used only in arts far removed from dental

equipment.

The diaphragm is the heart of Austin's invention.

The Nielsen device does not use the diaphragm. The

Williams and Davis devices are large and bulky; they are

used for truck scales and water softeners. Tiny

diaphragms had never been used, and their use in dental

equipment was not obvious. In addition, Austin's hand-

piece hanger fiinctioned differently from the Nielsen

device; Austin’s diaphragm functioned differently from

the Williams and Davis devices.

Many companies had tried to develop simple, reli-

able, and automatic dental handpiece controls; none of

then used or attempted to use diaphragms. They used

regular spool valves, poppet valvves, or other mechanical

means. In fact, the same company which made the

Williams valve for truck scales and other industrial

purposes also made dental equipment; but the company

did not use a diaphragm in its dental handpiece control.

Austin's device was a major step forward and

satisfied a long-felt need in the dental equipment

industry. The device has significant advantages over the

earlier dental handpiece control systems: greater reli-

ability, lower cost, more compactness, greater simplici-

ty, and ease of maintenance. It has been a great

commercial success; the industry has almost uniformly

switched to using devces like Austin's.

I find that Austin's device was not obvious in light of

the prior art.

C. Repatenting

Marco contends that Aust in, in addition to claiming

Als

Appendix B

a diaphragm valve, the apparent novelty of the invention,

has attempted to "repatent an old combination" of

elements consisting of a dental handpiece, hanger valve

assembly, and control valve. To establish this defense,

Marco must show that a single prior art reference

disclosed a combination of all of the same elements in

the same situation, united in the same way, to perform

the same function. Schroeder v. Owens-Cor Fiber-

las Corp., 514 F.2d 901, 903-04 (9th Cir. 1975); —.— of

Patent Examining Procedure, § 706.03(j). This Marco has

0 do.

I find that Austin has created a new handpiece

control mechanism; all the elements of the invention

were not disclosed in a single reference, and the

elements did not function in the same manner. There is

no merit in this contention of Marco.

II. REISSUE

Marco contends that the Austin patent was illegally

reissued because although Austin submitted an oath to

support the application for reissue, he did not submit an

oath to support the cancellation of claims 17, 18, and 19 in

an amendment to the application.

There is no merit in this contention. Marco cited no

authority for such a rule, and, in my view, there is no

need to file a supplemental oath when one disclaims a

claim in a patent. See 35 U.S.C. § 253.

Finally, Marco contends that it acquired intervening

rights because the reissue changed the substance of the

original claim L This contention is also without merit.

The reissue of a claim does not give rise to intervening

rights when the revisions do not enlarge or modify the

substance of the original claim. Akron Brass Co. v.

Elkhart Brass Mfg. Co. Inc., 353 F.2d 704, 708 (7th Cir.

1565). Here, the reissue merely clarified and tightened

the language of claim IJ. There was no enlargement or

modification of its substance.

Alg

Appendix B

III. INFRINGEMENT

Austin contends that Marco's dental handpiece con-

trol mechanism infringes claim 1 of the Austin reissue

patent. The patent, and particularly claim l, uses the

word "therethrough". Marco contends that its accused

device does not infringe Austin's patent because its

device does not have a passage "therethrough" as de-

scribed in the patent and as used in claim L

Claim 1 of the Austin reissue patent states in

relevant part:

L In a dental handpiece control, a

solid control block having a drive air passage

therethrough having an inlet and an outlet and

a cooling fluid passage extending therethrough

having an inlet and an outlet,

the drive air passage having a pair of ports

intermediate the inlet and outlet thereof and

opening into a portion of said first face

opposite one of the diaphragm chambers and

adapted to be closed by the diaphragm sheet,

the cooling fluid passage having a pair of ports

intermediate the inlet and outlet thereof and

opening into ... a portion of said first face

Ske 8 the diaphragm chambers and adapted

to be closed by the diaphragm sheet...

Reissue patent Fig. 6 is reproduced below. I have

marked some passages in solid black.

A20

Appendix B

Reissued Dec. 16, 1975

Sheet 3 of 3 Re. 28,649

GEORGE AUSTIN, A

INVENTOR

sy

BUCKWNORN, BLORE, KLARQUIST & SPARKMAN

ATTORNEYS

11111111111111III

A2

Appendix B

Marco contends that "therethrough" refers to a

straight passage through each control block which carries

fluid (og air) from one block to another) passage 1l4 in

Fig. 6). Austin contends that "therethrough" refers to

the passage which leads to and from the diaphragm (the

passage marked in black in Fig. 6). The Marco device has

passages like Austin's leading to and from the diaphragm

(marked in black), but no passage carrying air and fluid

straight through one control block to another (114 in Fig.

6).. If Austin is correct, it is admitted that the accused

device infringes. But if Marco's interpretation is

correct—that "therethrough" refers to the full length of

li4—there is no infringement.

The language of claim 1, when read with claims 2

and 3, confirms Austin's interpretation. The only

interpretation of "therethrough" which is consistent with

the language and the reference points in claims l, 2, and

3 shows that "therethrough" refers to the indirect

passage for air or fluid through the control block, to and

from the diaphragm, out to the handpiece. Marco's

interpretation ignores the language in claim 1 that the

drive air passage and cooling fluid passage each have a

"pair of ports intermediate the inlet and outlet ...

opening into... the diaphragm chambers... .”

I find that the accused device has this feature, as

well as every element of claim 1 of Austin's patent. I

therefore hold that plaintiff has established infringe-

ment.

I hold that the Austin reissue patent is valid and that

Marco infringed claim | of this patent.

This opinion shall constitute findings of fact and

conclusiolns of law pursuant to Fed. R. Civ. P. 52(a).

Dated this 12th day of October, 1976.

GUS J. SOLOMON

United States District Judge

111111111111111II

im

je

18

—

422

Appendix B

FOOTNOTES

Drive air operates the small turbine-like motors

which run the drills; chip air blows away debris

during the drilling operation.

Austin v. Marco Dental Products, Inc., Civil No.

73-343 (D.Or., March 19, 1976).

Marco also claims, on the same ground, that claims

2 to 6, 12 to 16, and 20 to 21 of the Austin patent are

invalid. Austin has conceded that claims 7 to 9 are

invalid. Claims 17 to 19 were cancelled in the

application for reissue.

35 U.S.C. § 103 states:

A patent may not be obtained though the

invention is not identically disclosed or de-

scribed as set forth in section 102 of this title,

if the differences between the subject matter

sought to be patented and the prior art are

such that the subject matter as a whole would

have been obvious at the time the invention

was made to a person having ordinary skill in

_the art to which said subject matter pertains.

Patentability shall not be negatived by the

manner in which the invention was made."

Claim 1 of the Austin reissue patent states:

I. In a dental handpiece control,

a solid control block having a drive air passage

therethrough having an inlet and an outlet and

a cooling fluid passage extending therethrough

having an inlet and an outlet,

A23

Appendix B

a diaphragm sheet positioned on a first face of

the control block,

cover means secured to the outer face of the

diaphragm sheet and the first face of the

control block and having a pair of diaphragm:

actuating chambers therein,

the drive air passage having a pair of ports

intermediate the inlet and outlet thereof and

opening into a tion of said first face

te one of the diaphragm chambers and

a to be closed by the diaphragm sheet,

the cooling fluid passage having a pair of ports

intermediate the inlet and outlet thereof and

opening into [the other of] a portion of said

first face opposite the diaphragm chambers

and adapted to closed by the diaphragm

sheet,

an air driven dental handpiece,

air supply means supplying drive air under pres-

sure to the inlet of the drive air passage.

cooling fluid supply means supplying a cooling

fluid under pressure to the inlet of the cooling

fluid passage,

air conduit means connecting the outlet of the

drive air passage to the handpiece,

cooling fluid conduit means connecting the outlet

of the cooling fluid passage to the handpiece,

second fluid supply means for suppl fluid

er pressure to m chambers,

valve means secon supply means for

to said dia-

to releasably support

tively connected to

valves and operable] when the handpiece is

positioned on the hanger means to open the

1111111IIIIIIIIII

1

A24

Appendix B

[valves;] valve means to permit fluid under

pressure to [low to 2 diaphragm chambers

us to cause said diaphragm sheet to be

pressed against said first face and prevent

Ow of & and cooling 0 ous the

r tive es therefor and able

wes the Ra lee is litted therefrom a to

close the valve means to shut off flow of fluid

F pressure to ™m chambers thus

to pen movement 57 a oben sheet

away from sal rst face and perm ow O

air ae fluid through the respective pas

es therefor. land means under the control

57 the hang

er means for supplying fluid under

pressure to the diaphragm chambers.]

Passage 114 carries fluid through the control block;

passage 134 carries air through the control block.

Marco contends that the "cooling fluid passage

therethrough" and the "drive air passage there-

through” in claim 1 refer to these two passages, 114

and 134. ‘A@stin contends that "cooling fluid passage

therethrough” and "drive air passage therethrough"

refer to the passages which pass through diaphragms

93 and 94 in Fig. 6. Because the same analysis

applies to both the fluid and air passages, I discuss

only one — the "cooling fluid passage therethrough".

Claims 2 and 3 of the Austin reissue patent state:

2. The dental handpiece control of claim 1

wherein the inlets open on a second face of the

block and the outlets open on a third face of

the block.

3. The dental handpiece control of claim 2

wherein the portions of the inlet passages on

A25

Appendix B

the inlet sides of the diaphragm sheet each is

T-shaped with the stem of the T leading to the

diaphragm sheet and the other portion leading

from the second face of the block to a fourth

face of the block.

1111111111111111

111111111111111II

26

Appendix C

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

GEORGE K. AUSTIN, JR.,

Plaintiff, Civil No. 74-343

)

)

)

)

vs. )

)

MARCO DENTAL PRODUCTS, )

INC., )

)

)

Defendant.

SOLOMON, Judge:

Plaintiff George Austin filed this action against

Marco Dental Products, Inc. (Marco) for infringement of

Austin's patent on a dental handpiece control (Patent No.

Re. 28,649). Marco, in its answer, asserts that Austin's

patent is invalid because the invention was "on sale“

more than one year before the patent application date.

This "on sale" defense was segregated for trial.

Section 102(b) of Title 35, United States Code,

provides that an invention cannot be patented if it was

"on sale in this country more than one year prior to the

date of the application for patent in the United States.“

Austin applied for his patent on October 24, 1969. The

issue here is whether Austin's invention was "on sale"

before October 24, 1968. I hold that it was not.

In 1965, Austin founded A-Dec, Inc., which designs

and manufactures dental equipment. A-Dec is the sole

licensee for the manufacture and sale of Austin's

patented invention—a mechanism for controlling the flow

of air and water to a dental handpiece. A-Dec

manufactures and markets a product called "Auto-Trol"

which utilizes the patented mechanism.

Austin conceived of the invention in June or July

A27

Appendix C

1968 while on vacation at the beach. He prepared a

sketch of it. Shortly thereafter, Austin and A-Dec

employees built a test model of the mechanism which

showed that the invention would work. A-Dee then

began to develop the Auto-Trol to utilize Austin's new

mechanism.

In late August or early September 1968, A-Dec sent

its annual price lists to its dealers. Although the Auto-

Trol had not yet been developed, several models of it

were listed.

In September and October 1968, A-Dec sent a

newsletter to its dealers inviting them to see several new

products, including the Auto-Trol, at A-Dec's exhibition

bocth at the American Dental Association convention in

Miami, Florida, on October 27-29, 1968. The newsletter

contained a brief description of the Auto-Trol and a

small picture of a mock Auto-Trol. The mock Auto-Trol

consisted of only a modified front plate from a different

piece of dental equipment; there was nothing behind the

front plate.

The prototype was shipped to Miami about October

22, 1968. It had undergone rudimentary tests with air and

water hookups; it had not been evaluated or used by any

dentists.

At the Miami convention, A-Dec gave its salesmen

and equipment catalog which included the statement that

the Auto-Trol would be available "after December 1968".

The Auto-Trol prototype was displayed to the public

for the first time on October 28, 1968, at the Miami

As with other new products, A-Dec planned to

exhibit the Auto-Trol at the convention to get the

reactions to it of dentists before it began to produce

and sell it. At earlier conventions, dentists made

suggestions which led to changes in products before

they went on sale.

111111111111111T1

A28

Appendix C

convention. Before displaying the prototype at the

convention, Austin changed some of its tubing and

fittings.

During the convention, dentists told Austin that the

Auto-Trol should be changed to allow a dentist to

operate one handpiece without engaging other hand-

pieces. Austin also discovered that a plastic hinge block

in the prototype was not strong enough. No Auto-Trols

were sold at the convention.

After the Miami convention, Austin made several

changes in the Auto-Trol. He added a "lock-out" device

to permit the handpieces to be engaged independently,

and he substituted a metal hinge block for the plastic

one

In December 1968, the modified Auto-Trol prototype

was displayed at a convention in New York City. In that

month, A-Dec began to produce Auto-Trols.

On these facts, I hold that Austin's invention was not

"on sale“ before October 24, 1968. Austin did not engage

in the "competitive exploitation of his invention" until

after that critical date. Amerio Contact Plate

ine. V. Belt-lee Corporation 18 Fd 180-485 (ih Cir

1963).

A-Dec did not put the Auto-Trol "on sale“ by

including it on the annual price lists issued about

September 1, 1968, when no Auto-Trols, not even a

prototype, existed. In addition, A-Dec expected to have

the Auto-Trol available after December. It including the

Auto-Trol on its September price lists to avoid preparing

new price lists when the Auto-Trol became available.

On the critical date, October 24, 1968, the Auto-Trol

was still being developed and tested. Some of its parts

were makeshift, and it had not been evaluated or used by

dentists. See Robbins Co v. Lawrence Manu-

fac Co 737 Fad 728 Tr. 1973);

e Freezers, Inc. v. Belt-Ice Corpora

on, supra. u pro to Was ved at

la

mi convention primarily to get feedback from

111111111111111I1

A29

Appendix C

potential users. Several changes were made as a result

of the convention exposure.

The defendant's "on sale" defense is denied.

Dated this 19th day of March, 1976.

GUS J. SOLOMON

A30

Appendix D

The Constitution

Section 8, Clause 8, Patents and Copyrights

To promote the Progress of Science and useful Arts,

by securing for limited Times to Authors and Inventors

the exclusive Right to their respective Writings and

Discoveries;

Appendix E

35 U.S.C. § 102(b) Conditions for patentability;

novelty and loss of right to patent

A person shall be entitled to a patent unless—

(b) the invention was patented or described in a

printed publication in this or a foreign country or in

public use or on sale in this country, more than one year

prior to the date of the appliication for patent in the

United States...

35 U.S.C. § 103. Conditions for Patentability;

Non-Obvious Subject Matter

A patent may not be obtained though the invention

is not identically disclosed or described as set forth in

section 102 of this title, if the differences between the

subject matter sought to be patented and the prior art

are such that the subject matter as a whole would have

been obvious at the time the invention was made to a

person having ordinary skill in the art to which said

subject matter pertains.

1111111111111111

31

Appendix E

Patentability shall not be negatived by the manner

in which the invention was made. July 19, 1952, c. 950,

SI, 66 Stat. 798.

A32

Appendix F

United States Patent

Austr, Jr.

A DENTAL HANDPIECE CONTROL

[76] \imvemor George K. Austin, Jr. P.O. Box

209. Ree. 2. Box 254. Newberg.

ON 97132

(IN. Sept. N. 1974

{2!) Appl. Ne. $10,042

Remeed — So — —[—

Remeve of

[66] Pues No: 34638510

— Fea. 1, 1972

Appl Me. * 088

Se Oc. 24, 1969

321 Usa 22

(Si) inc ASIC 9700

(58) Fietd of Seeret ..... 32/22, 222/74, 1 28/173.!;

251/331, 61, T4622, 137/994, 652, 635, 144

{36} —— —

UNITED STATES PATENTS

:

* 0 |«—Seoee

il) ¢ Re. 28,64‘

(48) Reissued Dec. 16, 197!

3.000205 8/196) ne IT

3.280.458 1qieee = Deciey —_—

3.514.171 5 | — McGabs 1222!

{$7}

A pturaiity of module comtrm hock *

rr

n . . e motors. and 2

EFRE

„ como! e

m serves between distribuung end blocks A hanger as

sembty normality adapeed © actuste a contro! bioct

amembly when a handmece = lifted from the hange

amembty has a munually operadie lockout lever which

prevents such actuapon to perma changing of burrs o

the handpeece or to mactivate that contro! block =»

e

8 meme — —

A33

—

Re. 28,649.

F

Sheet 1 of 3

Reissued Dec. 16, 1975

GEORGE AUSTIN JR

11111111111111III

A7

Appendix C

1968 while on vacation at the beach. He prepared a

sketch of it. Shortly thereafter, Austin and A-Dec

employees built a test model of the mechanism which

showed that the invention would work. A-Dec then

began to develop the Auto-Trol to utilize Austin's new

mechanism.

In late August or early September 1968, A-Dec sent

its annual price lists to its dealers. Although the Auto-

Trol had not yet been developed, several models of it

were listed.

In September and October 1968, A-Dec sent a

newsletter to its dealers inviting them to see several new

products, including the Auto-Trol, at A-Dec's exhibition

booth at the American Dental Association convention in

Miami, Florida, on October 27-29, 1968. The newsletter

contained a brief description of the Auto-Trol and a

small picture of a mock Auto-Trol. The mock Auto-Trol

consisted of only a modified front plate from a different

piece of dental equipment; there was nothing behind the

front plate.

The prototype was shipped to Miami about October

22, 1968. It had undergone rudimentary tests with air and

water hookups; it had not been evaluated or used by any

dentists.

At the Miami convention, A-Dec gave its salesmen

and equipment catalog which included the statement that

the Auto-Trol would be available "after December 1968".

The Auto-Trol prototype was displayed to the public

for the first time on October 28, 1968, at the Miami

As with other new products, A-Dec planned to

exhibit the Auto-Trol at the convention to get the

reactions to it of dentists before it began to produce

and sell it. At earlier conventions, dentists made

suggestions which led to changes in products before

they went on sale.

111111IIIIIIIIII

*

A28

Appendix C

convention. Before displaying the prototype at the

convention, Austin changed some of its tubing and

fittings.

During the convention, dentists told Austin that the

Auto-Trol should be changed to allow a dentist to

operate one handpiece without engaging other hand-

pieces. Austin also discovered that a plastic hinge block

in the prototype was not strong enough. No Auto-Trols

were sold at the convention.

After the Miami convention, Austin made several

changes in the Auto-Trol. He added a "lock-out" device

to permit the handpieces to be engaged independently,

and he substituted a metal hinge block for the plastic

one.

In December 1968, the modified Auto-Trol prototype

was displayed at a convention in New York City. In that

month, A-Dee began to produce Auto-Trols.

On these facts, I hold that Aust in's invention was not

"on sale" before October 24, 1968. Austin did not engage

in the "competitive exploitation of his invention" until

after that critical date. Amerio Contact Plate Freezers

Inc. v. Belt-Ice Corporation, 316 F.2d 459, 465 (9th Cir.

1963)

A-Dec did not put the Auto-Trol "on sale“ by

including it on the annual price lists issued about

September 1, 1968, when no Auto-Trols, not even a

prototype, existed. In addition, A-Dec expected to have

the Auto-Trol available after December. It including the

Auto-Trol on its September price lists to avoid preparing

new price lists when the Auto-Trol became available.

On the critical date, October 24, 1968, the Auto-Trol

was still being developed and tested. Some of its parts

were makeshift, and it had not been evaluated or used by

dentists. See Robbins Com v. Lawrence Manu-

Aer Company, 482 F.2d 128. 433 (Sth Cir. 1973);

merio Contact Plate Freezers, Inc. v. Belt-Ice C a-

tion a. e Auto- Trol proto was yed at

lami convention primarily to get feedback from

EERREREBRBESSSSESE

A29

Appendix C

potential users. Several changes were made as a result

of the convention exposure.

The defendant's "on sale" defense is denied.

Dated this 19th day of March, 1976.

GUS J. SOLOMON

1111111111111111

A30

Appendix D

The Constitution

Section 8, Clause 8, Patents and Copyrights

To promote the Progress of Science and useful Arts,

by securing for limited Times to Authors and Inventors

the exclusive Right to their respective Writings and

Discoveries;

Appendix E

35 U.S.C. § 102(b) Conditions for patentability;

novelty and loss of right to patent

A person shall be entitled to a patent unless—

(d) the invention was patented or described in a

printed publication in this or a foreign country or in

public use or on sale in this country, more than one year

prior to the date of the appliication for patent in the

United States...

35 U.S.C. § 103. Conditions for Patentability;

Non-Obvious Subject Matter

A patent may not be obtained though the invention

is not identically disclosed or described as set forth in

section 102 of this title, if the differences between the

subject matter sought to be patented and the prior art

are such that the subject matter as a whole would have

been obvious at the time the invention was made to a

person having ordinary skill in the art to which said

subject matter pertains.

EERE RR REREREEEEEE

A3l

Appendix E

Patentability shall not be negatived by the manner

in which the invention was made. July 19, 1952, c. 950,

SI, 66 Stat. 798.

EER RBPRRRPRRPROBSEEE

A32

: Appendix F

United States Patent 1 Re. 28.64

Austin. Ir. 48] Reissued Dec. 16, 197

[$4] DENTAL HANDPIECE CONTROL 3.049.205 8/1962 Lindberg et ah. —

761 Invemor. George 3 Austin, Jr. PO. Box 3.280.448 NE O ä —— 2 ar

209. Rie. 1. Box 254. } 3.514.171 S/1070 .. 32/22 |

Oe 97132 . » Geant

[22] Filed: Sept. 27, 1974 4 . Agent. or Firm—Kiarqust, Sparkman,

[2!] Appl. No. $10,042 Campbell. Leigh. Halli &2 Whinston

— 1371 ABSTRACT

[64] Patent No: 3,638,310 A pturality of module comin! hiock amembtics ind:

Feb. 1, 1972 viduaily comtro/ to 2 pturaixy of dental handpeeces th

Appl Me: 869,088 supplies of drive ar to the handmece motors, and 3i

Fe Oct. 24, 1969 and water coolants, and also suppty drive am pressur

© a gauge. The contro! block asserwiies are cu.

321 US a 32/22 m serves between distributing end blocks A hanger as

(Si) law Cut — A61C 9/00 rr normally adapted to actuate 4 contro! bioci

[58] Fleid of Searet ..... 32/22, 222/74; 128/173.1;

assembly

251/331, 61; 73/422; 137/994, 682. 635, 144 ey has a manually operadie loc er

prevents such actuation to pern changing of burrs o

136 treme — the handpiece or to inactivate that control ock

UNITED STATES PATENTS sembly.

3.036.904 5/1962 Staum 32/32 18 Clases, 6 Drawing Figures

BEST COPY AVAILABLE

1 1 1 1 1 1 1 g 111111 LE — 1

433

Reissued Dec. 16, 1975 Sheet 1 of 3 Re. 28,649.

GEORGE « AUSTIN JR

GEORGE *. aust)

BUCKHORN, SLOPE, K_ABOUST & SPAREMAN

ATTOPNEYS

A34

Reissued Dec. 16, 1975 Sheet 2 of 3 Re. 28,649

FIG. 5

‘Bae

U

' 0

1111111222222

a | | 2 1 2

1 AWE

f 1 N * 3 wey K pnd * ae

* . aa °

A35

—

Reissued Dec. 16, 1975

Appendix F

Sheet 3 of 3

Re. 28,649

igen 43

1 ee

) 21.7717; } 33 : 1513177

1 le 1 . h

i 11 13 45 4 11 351 whee 117 i

1115 1 11115 % ill 10 at

Heal ea Bl tot 1 1 e

5 i Hi 1e 1% : 10 it i125.

ll HE i ica 1 1

gh a 1 wtp ei rain 1 5

fi i ila Hiei yt Hu sae . ae

110 1 litt 10 f At Wl ae i 14125

Mi ii 10 1 6 it 1 1 1

e e %

5 II HE 146% i BEE il: 1

1 rere! sik f 1 |

lik Hi

I

EEE

11111111

A37

1 1112 16 j

Baan a mu eH eT | a Af Hf ilit |

eit acta 10 e i

I e e 1 Iii ities . I h

Ai fl f r f 1 =H] eit at i] 115 ij: Mid

, 1 rie ili He ir 10 at 1111 A f 1 ail a Lh

Wn iil ii ak 1 e 0 1

. LTTE 10 bid ‘Hitt 1 e l i ö ' 71 tt

11 il 1 1 inal il 1 (i 1 il i

Era

140% fte ! 1 FAIA ft f

, GT

Ae

TIITIIIIIIIII III

TCR ee

Hit 11 HH il 1 10 Palit a

1 e 1 0 iil nn Ht

ae il

. - e tH eee i

Figg yee ie a me id mi

(ie he a e

e 1

iini Ege . Wal?

fee e

A39

uſdlee

P.O. Box III

Newberg, Oregon 97132

§03-538-2113

WHOLESALE PRICE LIST

‘Appendix G

Effective September |, 1968

Prices are F.0.8. Factory

TRAY CART (Specify Color)

Mode! A e ff, e eee eee ee eeveae ee eeeeene

Medal 6 .cccccccccccccccccccccccccccces

Mode! 0 „ h’ mf „„ „ „ „„ „„ „„ „

Model 9 „eee

Mode! E „ „„ „ „„ „„ „% „„ „ „ „% „ „ „„ „ „ „ „6 „

Mode! F h t „*

Madel „„ „6 „666 „6666666666 „666666 „666 „6 6 66 6

Medel „„ „„ „„ „„ „„ „ „666

D

Medel ʒ⁴ʒAl „6

DD

Medel b . „ „„ „6666666 „„ „66666666666 26 2

D

D

D

Preme Gao „ „„ „„ „„ „ „„ „ „6 „„ ee

OENTA CARTS

Style | | S tenderre

Style 2 © CaViCrOM 2... sewer eeecesreneee

Style 3 360 (Encore) ).

Style 4 Seel

Style § = TwO dreh „„

Style 6 = Plain ooo

Style 7 = Plain Top = Two Orawer ......

Style 8 = Five r

Style 9 = Louvered ......- TT TTTITT TTT

BES CCW. — TTT

TR! FLO SYRINGE

AK

Custom Installation (Specify Unit)

Repair Kit ..... „eee 50 00000 °

VACUUM EQUIPMENT

Central Vacuum dle

Alr Vacuum System w/! Hose & $ f

Alr Vacuum System w/2 Hoses (..

Ster Vac (One Hose) ......... ;

Ster!! Vac w/! Hose & $ ae

Steril Vac (Two ese

Ster!! Vac w/2 Moses 6 S. 8 0

Ory Oral Cup (Central Vecum) . cee

Water Flush (Centra! Vacuum) ....

Ory Oral Cup (Air Vacuum —

Water Flush Cup (Air Vacuum) .

Waste Tan „eee *

$5.00 MINIMUM BILLING APPLIES

8 888888888

88

8888888

210,00

4

88

o

wn

7 + — * * — * — * * *

88888888888

UTILITY CONN

Cel

91

9-2

9-3

2—

99

9210

Pha

se

049<6 |

9.90

10-010

11

11-080

11080

11860

1147

11-180

11-200

11-220

_ 11-230

. 11-400

11-450

11290

11-600

11-610

11-700

11111111111111 211

A40

Appendix G

ECTIONS

12’ Umbilical ....

1 Umb il teal 5 0000

Removable elle

Ale Line & 28 oz. Water Tank .....

Water Heater ......

cos Tank

MANOPIECE CONTROLS

Ry TEOE F occccccccccccocoosoceoes

X

dee Trol 2

dee Troi 3

~ e*eeeeeevneeeaev eevee eae eeneanene

AGO VOL 3 cccccccccccccess

Aute Troi & ..

Auto Trol - .

or Universal Mounting Above ......

eenreeveeve eevee eeaeweaeaeveneene

eee eee ev eae eee eee eeense

PORTASLE HANDPIECE CONTROLS

neee eee ee eee e eee

dee Trol 2% yr se

CONTROL ACCESSORIES

x2 Tore Tre! „„ „ „„ „ % „% „646 eeeeeee

OX-2 Seveere BIGGER cccccceccecceese

513 Vitra dee with points & fittings

FILTERS ANO REGULATORS

E~| Standard Air & Water Fliters ..

1 beeeeee eee eee e bee

EVACUATOR ACCESSORIES (Sy Part Numer)

Standard Tip Srush (deze)

Surgical Tip Srush (desen)

Standard Til

Surgical Te 54645 6

Surgical Tilo 222

Surgical Te

Short Tre

Ole 7e...

one Saliva Ejector Tip ..

Saliva Ejector c toe

Rigid Plastic Tip (Dezen) ......

Disposable Tips (100 per pkg)

Ory Oral Cup (Air Vacuum) ......

Ory Oral Cup (Central Vacuum)

1000 Paper Liners for Ory Cup ——

Water Flush Cus (Central eee

Water Flush Sow! l/

water Flush Cup (Air Vacuum) ...

$5.00 MINIMUM SILLING APPLIES

@Ooreererrrrw

S8BB8888N48s8s8

10.

8883888

8388

oOwmws

8

84884

888888

oo

WN OO Pup nm nn nr

. . . * . *

333383333325 125521l

8

*

—

3

ia)

A4l

TT 10 W * N

Nil 2 * Lor 111, NEWBERG, OREGON ner PHONE (403) aut:

UVIPMENT

78 LETTER * 196

2

MIAMI BOUND

= >

„ ADEC will be exhibiting for the third year at the American dental Association

* Meeting at Miami Beach, Florida. ‘You are invited to visit our Booth No. 260

kor an Introduction to several new products, designs, and new concapts in dental

. @quipment and components.

Tbe Auta Iral is the newest innovation in alr.

operated automatic-selection handpiece controls.

ADEC has retained the simplicity and ease in

operation of our manual selector contro! while

incorporating a proven air and water spray coolant

' system and our simplified variable pressure foot

control. The automatic remote hanger assembly is

not limited to it's mounting position or location.

this universal mounted contro! Is designed to

accommodate amy number of handplecas lubricated or

non=lubricated. Further, each handplece may be

: limited In maximum pressure according to the manu=-

12 2 a facturer's recommendations. des ned for custom

‘ Installation or unit mounting, the Auto Trol is 2

- pellable control choice for your customer.

Another FIRST by “AOEC!

This portable handpiece contro! is designed for

hospital and operatory usage and for use by the

dental student. Two handpieces ere manually

selected and controlled with a variable pressure

foot control which may be colled with the handpiece

tubings within the cover. A complete spray coolant

system Is offered with recommended pressure indiv-

tdually controlled to each handpiece. The revers-

ible cover protects the face plate while carrying

the unit and the sturdy case encloses the air and

water quick disconnect supply tubings. The ADEC

Tri Fle syringe may be added as an optional feature

Air and water pressure regulators and filters nnd

_the portable control to be applied directly to ful

pressure plumbing. A completely functional unit to

keep in mind for these special customers.

BEST COPY AVAILABLE

A42

The Light Sase s a universal method for mounting

a new or used dental light. The base plate is

supported beneath a standard 24 Inch chair base.

Uniimited positioning Is offered right or left of

the chair. The Light Base Is constructed of rigid

steel with e heavy satin chrome finish and offers

the advantage of the ease of installation and main=

tenance. Oes!gned to be used with the elle unit

— concept or where the Installation of a calling or

: wall mount light Is not practical. The vertical

—— GGĩUvH— —— —U—U— 2

1 ‘support Is 50 high with a conventional duplex

ook ; outlet mounted at the base of the post.

— — — om ss

.

*

7

*

Enclosed you will find a sample stuffer featuring our new Tri Flo syringe. fe

e! Flo syringe Is a practical professionally proven contribution to work l-

“-fleation, AOEC Is proud to offer a syringe to the profession which Is unparalled

In simplicity, performance, and rigidity by any other syringe welle le on the dental

‘market. increase your sales dollars and decrease maintenance and service casts by

making the Tri Fle syringe your choice for your customers. Required repairs may be

_ accomplished by the doctor in the operstory. You may advise your customers of this

“product in your next aalling by ordering a supply printed with your company came

.and branch locations.

“* Look ing forward to seeing you In Miami Beach the week of October 28th. -

. Thank you for — and sett tag ADEC, the leader In custom manufactured denta!

F units. ey SF — —

Al Smith

Seles Manager

;

:

43

CERTIFICATE

I hereby certify that three copies of the above and

foregoing Petition for a Writ of Certiorari has this day

been served upon KennethS. Klarquist, Klarquist,

Sparkman, Campbell, Leigh, Hall & Whinston, 1000

Georgia-Pacific Building, Portland, Oregon 97204,

counsel for respondent, by placing three copies of the

same in the United States Mail, on this day of

January, 1978.

P KOLISC

Attorney for Petitioner