Caterpillar Inc v Esco Corporation - [2016] APO 76

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Caterpillar Inc v Esco Corporation [2016] APO 76

Patent Application: 2008251647

Title:Wear assembly for excavating equipment

Patent Applicant:                   Esco Corporation
Opponent:  Caterpillar Inc
Delegate:  O L Haggar
Decision Date:  1 November 2016
Hearing Date:  18 August 2016 in Canberra
Supplementary submissions completed on 17 October 2016

Catchwords: PATENTS – opposition under section 104 – whether the amendments contravene section 102(1) – specification as filed found to provide a substantial disclosure of the feature of a “generally planar extension” claimed in amended claims 45 to 48 –whether the amendments contravene section 102(2)(a) – scope of the claims immediately before amendment when compared with amended claims 1, 7, 8, 26, 27, 28, 45 and 47 found to be unchanged – whether the amendments contravene section 102(2)(b) – amended claims 45 to 48 found to be clear and fairly based – opposition does not succeed – amendments allowed – costs awarded against the opponent

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Wayne McMaster and Rebecca Dutkowski of Minter Ellison
Patent attorney for the opponent: Brett Connor and Jonathan Schnapp of Freehills

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008251647

Title:Wear assembly for excavating equipment

Patent Applicant: Esco Corporation
Date of Decision: 1 November 2016
DECISION
I make the amendment to the statement of grounds and particulars requested by Caterpillar Inc.
The opposition under section 104 does not succeed. I allow the amendments proposed by Esco Corporation.
I award costs against Caterpillar Inc.
BACKGROUND

Patent application 2008251647 in the name of Esco Corporation (Esco) was advertised as accepted on 6 December 2012. An opposition by Caterpillar Inc (Caterpillar) to the grant of a patent on the application was upheld on a number of grounds (Caterpillar Inc v Esco Corporation [2014] APO 66) (the original decision), and Esco was allowed time in which to propose suitable amendments to overcome the delegate’s adverse findings.
On 19 December 2014 Esco duly filed a request for leave to amend the specification and a first statement of proposed amendments. Esco filed a second statement of proposed amendments on 2 April 2015 in response to an adverse examination report as a result of which leave to amend was granted and advertised on 14 May 2015. On 14 July 2015 Caterpillar filed a notice of opposition under section 104 to the allowance of the proposed amendments followed by a statement of grounds and particulars (SGP) on 14 August 2015.
THE OPPOSITION UNDER SECTION 104
Grounds of Opposition
Simply put, Caterpillar has opposed the allowance of the proposed amendments on all available grounds under section 102. I will explain the reasons underpinning Caterpillar’s opposition later in this decision.
Esco requested leave to amend after 15 April 2013, but requested examination of the application well before that date. As a result, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply. These include the amendment to section 102(1) to preclude matter disclosed or claimed by the amended specification that extends beyond that disclosed in the specification as filed.
Amendment of the Statement of Grounds and Particulars
On 5 August 2016 Caterpillar filed a request to amend the SGP. The section 104 opposition commenced after 15 April 2013 and, accordingly, the request to amend the SGP is governed by regulation 5.16. The amendment sought by Caterpillar is confined to the wording of one of the particulars (particular (c)) listed under the ground specified in section 102(2)(a). As becomes apparent in the present context, the effect of regulation 5.16(4) is to disallow any objection to an amendment of this kind. I note nonetheless that the amendment is of a minor nature, and Esco has not expressed any concerns in relation to it.
As a consequence, I informed the parties at the hearing of my intention to make the amendment to the SGP.
The evidence
Caterpillar relies on a declaration made by Bruce Alexander Leslie on 5 November 2015 (Leslie) with exhibits BAL-Dec1, BAL-Dec2, BAL-9 to BAL-11, HRH-1 and HRH-2. Esco in turn relies on a declaration made by Hezekiah Russel Holland on 7 January 2016 (Holland) with exhibit HRH-1.
As advised by the patent attorneys for Caterpillar in a letter dated 9 November 2015, exhibits BAL-Dec1 and BAL-Dec2 to the Leslie declaration respectively correspond to the evidence in support and evidence in reply filed by Caterpillar in the opposition to grant. It is also of interest that exhibits HRH-1 and HRH-2 to the Leslie declaration correspond to the evidence in answer filed by Esco in the same proceedings.
Caterpillar has not filed any evidence in reply in the section 104 opposition.
The hearing
After an exchange of correspondence, a hearing to determine the section 104 opposition was eventually held in Canberra on 18 August 2016. Esco was represented by Tom Cordiner of counsel instructed by Wayne McMaster and Rebecca Dutkowski of Minter Ellison, and Caterpillar was represented by Brett Connor and Jonathan Schnapp of Freehills.
SUBJECT MATTER
The specification describes the field of the invention as pertaining to a wear assembly for securing a wear member to excavating equipment, and in particular to a wear assembly that is well suited for attachment and use on a dredge cutterhead.
In order to understand the competing views of the parties as to the allowability of the proposed amendments, it is firstly necessary to refer to the description of the invention as illustrated in the accompanying drawings, beginning with Figures 1 and 2 reproduced below. It is a matter for comment that in contrast to the general reference in the specification and claims to “wear members”, the illustrated embodiments are focussed on a dredging tooth adapted to be attached to a dredge cutterhead.
Figure 2 is a side view of the wear assembly 10 shown in Figure 1. The wear assembly includes a base 12 secured in use to a dredge cutterhead, a wear member 14, and a lock 16 to releasably hold the wear member to the base. Base 12 includes a forwardly projecting nose 18 onto which wear member 14 is mounted, and a mounting end (not shown) that is fixed to an arm of a dredge cutterhead.
When employed as a dredge tooth, wear member 14 is a point provided with a working section 21 and a mounting section 23 that defines a socket (not shown) to receive nose 18. Point 14 is rotated by the cutterhead such that it engages the ground in generally the same way with each pass during a digging operation. As a result, point 14 includes a leading side 25 and a trailing side 27. Leading side 25 is the side that first engages and leads penetration into the ground with each rotation (in the direction 34) of the cutterhead. As shown in the cross-sectional views of Figure 2 replicated below, trailing side 27 has a smaller width than leading side 25 along a plane perpendicular to the longitudinal axis 28 of point 14, and at least partially through mounting section 23. Trailing side 27 preferably has a smaller width than leading side 25 throughout the length of point 14.
Working section 21 of point 14 preferably has a generally trapezoidal transverse configuration with a leading side 25 that is wider than trailing side 27. The consequential tapering of sidewalls 29 and 31 preferably continues from front end 37 to rear end 47 of point 14. On account of this narrowing of the point, sidewalls 29 and 31 follow in the shadow of leading side 25 during digging and thereby create little drag on the digging operation. The leading side 25, trailing side 27, and sidewalls 29, 31 can be planar, curved or irregular. Moreover, transverse shapes of the working section other than trapezoidal can be used.
THE CLAIMS AS PROPOSED TO BE AMENDED
In essence, Caterpillar has opposed the amendments sought to be made by Esco in respect of two groups of claims: (i) claims 1, 7, 8, 26 to 28, 45 and 47, and (ii) claims 45 to 48.
Claims 1 et al
Claim 1 as proposed to be amended is in the following terms:
“A wear member for use on a dredge cutterhead comprising:
a working section and a mounting section generally aligned along a longitudinal axis, the mounting section including a socket for receiving a base fixed to the dredge cutterhead to mount the wear member on the dredge cutterhead, and the working section being that part of the wear member forward of the socket,
a leading side adapted to be a forward surface during advance of the wear member through the ground during a digging operation, and
a trailing side adapted to be a rearward surface during advance of the wear member through the ground,
the leading and trailing sides extending axially across the working and mounting sections, and the leading side having a greater width than the trailing side in transverse cross sections perpendicular to the longitudinal axis along at least part of the working section and at least part of the mounting section” (emphasis added).
Claims 7, 8, 26 to 28, 45 and 47 as proposed to be amended likewise specify that the width of the leading side is greater than that of the trailing side in transverse cross sections perpendicular to the longitudinal axis of the wear member along “at least part of the mounting section”.
Claims 45 to 48
Claim 45 as proposed to be amended reads as follows:
“A wear member for excavating equipment comprising
a working section and a mounting section generally aligned along a longitudinal axis, the mounting section including a socket for receiving a base fixed to the excavating equipment to mount the wear member on the excavating equipment, and the working section being that part of the wear member forward of the socket,
a leading side adapted to be a forward surface during advance of the wear member through the ground during a digging operation, and
a trailing side adapted to be a rearward surface during advance of the wear member through the ground,
the leading and the trailing sides extending axially across the working and mounting sections, and the leading side having a greater width than the trailing side in transverse cross sections perpendicular to the longitudinal axis along at least part of the working section and at least part of the mounting section, and
the leading side and the trailing side having a generally planar extension in each of the mounting section and the working section” (emphasis added).
The phrase “a generally planar extension” also appears in each of proposed claims 46 to 48. I note though that claim 48 differs from claims 45 to 47 in reciting that “the leading side and the trailing side each having a generally planar extension in each of the mounting section and the working section”. Nevertheless, I agree with Caterpillar that proposed claims 45 to 47 would be implicitly read in the same way.[1] Esco has not submitted to the contrary.
[1] Caterpillar outline of submissions at [24]
BASIS OF THE SECTION 104 OPPOSITION
Caterpillar has opposed the proposed amendments under sections 102(1) and 102(2). Those sections provide that an amendment is not allowable “if, as a result of the amendment” the specification would not meet the statutory requirements of section 102 and, consequently, direct attention to the effect of the amendment being considered.
Claims 1 et al
Caterpillar has pointed out in relation to this group of claims (with original emphasis) that:
“In the proposed claim set, new or amended claims 1, 7, 8, 26, 27, 28, 45 and 47 are based on claims 1 and 26 as accepted, but with an amendment to recite inter alia, the leading side having a greater width than the trailing side in transverse cross sections perpendicular to the longitudinal axis along at least part of the working section and at least part of the mounting section (underlined text indicates the amendment).”
Caterpillar consequently argues that the above group of proposed claims would not, as required by section 102(2)(a), in substance fall within the scope of the claims before amendment.[2]
[2] Caterpillar outline of submissions at [7(d)], [10], [11(e)]
Claims 45 to 48
As previously mentioned, this group of proposed claims introduces the feature of “the leading and trailing sides of the wear member each having a generally planar extension in each of its mounting section and working section”. Caterpillar asserts that as a result of the introduction of this feature, the proposed claims would contrary to section 102(2)(b) lack clarity and fair basis and, in contravention of section 102(1), would claim matter not in substance disclosed in the specification as filed.
Caterpillar has set out what it correspondingly views as the principle issues for determination[3]:
- Does the phrase “generally planar extension” lack clarity?
- Does the specification provide a real and reasonably clear disclosure that the tooth, having the precise shape illustrated in the drawings, is intended for use in applications other than dredging?
- Does the text of the specification teach away from the notion that the contour of the leading and trailing sides could be a feature of an invention?
- Taking into account the figures, is there a real and reasonably clear disclosure of a wear member having a leading side and a trailing side having a generally planar extension in a working section and a mounting section of the wear member?
- Would the proposed amendment result in a broadening of claims 1 and 26 as accepted?
[3] Caterpillar outline of submissions at [11]
The third issue can be readily dealt with here.
Caterpillar draws attention to the fact that the notion of a “planar” surface is only referred to in paragraph [50] of the specification where it is stated that “[t]he leading side 25, trailing side 27 and sidewalls 29, 31 can be planar, curved or irregular”. Caterpillar then argues:
“… reading this paragraph in the context of the specification, the paragraph in fact teaches that the contours of the leading side, trailing side and sidewalls of the working section are not important, as it will suffice to have essentially any contour (ie planar, curved or irregular) … It is therefore inconsistent with the specification to then claim a specific contour as being an invention.”[4]
[4] Caterpillar outline of submissions at [97], [99]
The position for which Caterpillar contends is to the effect that that the proposed claimed feature of a “generally planar extension” is merely an immaterial variant or arbitrary selection. This attack is tantamount to an assertion of parameteritis. I fail to see the relevance of such an assertion to the present proceedings. It is well settled that the concept of parameteritis only arises in respect of the grounds of invalidity specified in section 18 based on want of novelty or absence of an inventive step (Raychem Corp’s Patents [1998] RPC 31, Williams Advanced Materials Inc v Target Technology Co LLC [2004] FCA 1405; 63 IPR 645). Clearly, these grounds are far removed from the statutory requirements imposed by section 102.
I therefore do not intend to have any further regard to this issue. I will consider the remaining issues in due course.
ALLOWABILITY – SECTION 102(2)
Section 102(2) states:
“An amendment of a complete specification is not available after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).”
Section 102(2)(a) prescribes that for the purposes of section 102(2), “relevant time” means after the specification has been accepted. This is clearly the case here.
Caterpillar has initially objected to the proposed amendments on the basis that, if made, the specification would not satisfy the requirements of section 40(3) as they relate to the clarity and fair basis of claims 45 to 48. My consideration of these dual aspects of Caterpillar’s case under section 102(2)(b) now follows.
SECTION 102(2)(b) - CLARITY
Caterpillar submits that claims 45 to 48 would not be clear if they incorporated the feature of “a generally planar extension” as proposed.
Legal principles
The requirement for the claims to be clear does not mean that they must be couched in language which is precise or absolute. As noted for example in Flexible Steel Lacing Company v Beltreco [2000] FCA 890; 49 IPR 331 at [81] (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi [2008] FCAFC 121; 77 IPR 229):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suited to the intended use … the consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, common sense manner … Absurd constructions should be avoided … and mere technicalities should not defeat the grant of protection …”
This involves a practical determination, rather than a strictly literal exercise, of whether the skilled person can understand what acts fall within the scope of a claim.
Consideration
On my reading of its case, Caterpillar’s assertion of lack of clarity begins with the term “planar extension”. Esco has argued that this is a term of art,[5] but there is no expert evidence to demonstrate that anything other than its plain meaning should prevail. It seems from the Oxford English Dictionary that the most appropriate meaning to be assigned to the term “extension” is enlargement in the sense of an increase in length. I have therefore tentatively formed the opinion that when used in the context of proposed claims 45 to 48, the term “extension” is not completely free of ambiguity.
[5] Esco outline of submissions at [4.6]
However, a specification is to be construed “with a generous measure of common sense” from the perspective of the person skilled in the art (Eli Lilly and CompanyLimited v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451 at [139]). In this respect Mr Holland has expressed his understanding that the term “generally planar extension” means “a generally flat surface that extends on [the leading and trailing] sides of the wear member”.[6] Most relevantly, Mr Holland has directed attention to paragraphs [49]-[50] of the specification which he says clarify that these flat surfaces extend axially along the leading and trailing sides of the wear member.[7] I find this evidence persuasive. Consequently, I consider that the term “planar extension” as used in proposed claims 45 to 48 should be sensibly viewed in the same way as conveying the meaning of “axially extending”.
[6] Holland at [2.3]
[7] Holland at [2.5]
Caterpillar has also objected that the term “generally” is indefinite. However, although of itself imprecise, it is well recognised that this term indicates that some degree of variation from the specific (in this case, planar or flat) is intended. Indeed, Mr Leslie has himself acknowledged that “the term ‘generally planar’ has to be something which is essentially flat …”[8]
[8] Leslie at [54]
Based on the foregoing, this aspect of Caterpillar’s opposition under section 102(2)(b) does not succeed.
SECTION 102(2)(b) – FAIR BASIS
Legal principles
The leading authority as to the requirement of fair basing is Lockwood Security Products Pty Ltdv Doric Products Pty Ltd (No 1) [2004] HCA 58; 217 CLR 274 (Lockwood) which confirmed that the fair basis of a claim depends on whether the specification has made a real and reasonably clear disclosure of what is claimed by it. The relevant principles to be drawn from Lockwood were conveniently summarised by Bennett J in Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814; 87 IPR 816 at [36]-[37]:
“Fair basing requires a consideration of whether the claims are fairly based on the matter in the specification that describes the invention. The ‘invention’ means the embodiment which is described and around which the claims are drawn (Lockwood at [53]). The High Court noted in Lockwood at [68] that fair basis is not tested by isolating in the body of the specification ‘essential integers’ or ‘essential features’ of an alleged invention and then asking whether they correspond with the essential integers of the claim in question. The question is whether the subject matter of the claims is broadly described in the body of the specification. However, while the High Court pointed out that it was necessary to consider the whole of the specification, it warned against including ‘loose or stray remarks’ in determining the ‘real’ disclosure in the body of the specification. Coincidence of language, such as in a consistory clause, is insufficient, on its own, to provide fair basis if that is inconsistent with the description of the invention when considering the specification as a whole (Lockwood at [87], [91]). The inquiry is into what the body of the specification, read as a whole, discloses as the invention (Lockwood at [99])” (original emphasis).
Consideration

The issue that arises here for determination is whether the specification contains a real and reasonably clear disclosure of a wear member in which the leading side and the trailing side each have a generally planar extension in each of the mounting section and the working section.
As best as can be ascertained, Caterpillar has advanced three separate reasons why it says that the proposed introduction of this feature into claims 45 to 48 would, contrary to section 102(2)(b), result in the failure of the specification to meet the fair basis requirements of section 40(3).
The first reason
After discussing the background to the invention in terms of the problems associated with dredge cutterheads, the specification proceeds as follows at paragraph [06]:
“In accordance with the invention, the wear member has a transverse configuration where the width of the leading side is larger than the width of the corresponding trailing side so that the sidewalls of the wear member follow in the shadow of the leading side to decrease drag. This use of a smaller trailing side is provided not only through the working end but also at least partially into the mounting end. As a result, the drag experienced by a worn wear member of the invention is less than that of a conventional wear member. Less drag translates into less power consumption and longer use of the wear member before it needs to be replaced.”
The specification then briefly describes a number of different aspects of the invention. At paragraph [45] it states:
“The present invention pertains to a wear assembly 10 for excavating equipment, and is particularly well suited for dredging operations. In this application, the invention is described in terms of a dredge tooth adapted for attachment to a dredge cutterhead. Nevertheless, the different aspects of the invention can be used in conjunction with other kinds of wear assemblies (e.g. shrouds) and for other kinds of excavating equipment (e.g. buckets).”
According to Caterpillar, there is no suggestion by the specification as to which of the different aspects of the invention could be used in conjunction with a non-dredging wear member.
Esco complains that Caterpillar has in effect attempted to re-open its case on fair basis which was rejected by the delegate in the original decision.[9] Esco specifically relies on the view expressed by the delegate at paragraph [33] in response to Caterpillar’s argument that the independent claims in their accepted form lacked fair basis since they were not limited to dredge cutterhead wear members:
“… although developed in the context of wear members for cutterheads, there is no reason why the teachings of this invention cannot be extended to wear members for other types of excavators such as bucket excavators as contemplated by the specification ... I am satisfied that the invention has suitability to excavators other than just dredges …”
[9] Esco outline of submissions at [5.1]-[5.4]
Esco submits that this finding “was plainly made with respect to all embodiments of the invention described in the specification, and not limited to those embodiments in the claims as then under consideration.” I agree. From my reading of the original decision, it seems clear enough that the delegate had taken account of the specification as a whole before deciding the question of fair basis put before him.
It is not in dispute that the merits of the original decision cannot be revisited. As stated by Mason J in R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; 147 CLR 340 at 348-349:
“But clearly once a decision has been made under s. 60 the Commissioner cannot re-hear the proceeding and arrive at a different conclusion. If he could do so, an impossible situation would arise, with no statutory provision to indicate which of the two conflicting decisions was to prevail … the Commissioner had actually decided as much of the opposition proceedings as was susceptible of decision at the time and had decided it once and for all.”
Nevertheless, Caterpillar submits that the original decision on fair basis was confined to the question of whether the concept of having a leading side which is wider than a trailing side could be extended to wear members for excavators other than dredge cutterheads. It points out that the accepted claims did not include the feature of a generally planar extension, and nor does the specification expressly refer to this feature in relation to any of the variously described aspects or illustrated embodiments of the invention. Caterpillar consequently submits that the delegate was not called on to consider whether “there is a real and reasonably clear disclosure that applying the invention to other kinds of wear members [i.e. for non-dredging applications] should involve the leading and trailing side each having a generally planar extension in each of the working and mounting sections”.[10]
[10] Caterpillar outline of submissions at [79], [82]
This is strictly speaking correct, but the evidence on which Caterpillar now seeks to rely is once more directed to the broader contention that the “embodiment illustrated in the figures is not suitable for as a wear members for a bucket [sic]”.[11]
[11] Caterpillar outline of submissions at [83]
In this respect Caterpillar has set out the evidence given by Mr Leslie in the present proceedings as follows:
“a) The lock 16, which is on the trailing side 27, which be facing downward [sic], and underneath the nose, in use. This would make it difficult, time consuming and impractical to get access to the underside of a bucket to access the lock to mount or remove the teeth when servicing the bucket, such that it would be unacceptable in the industry. Also for heavy teeth, it would be harder to provide stable, safe conditions during servicing.[12]
b) The narrow shape of the bit 21 in is suited [sic] to breaking up the material (as is required for dredging operations), but would be very unusual on an excavator bucket because the main goal for a bucket excavator is to direct material into the bucket and a skinny tooth is not suited to doing that.[13]
c) If the illustrated tooth were used on a bucket for an hydraulic excavator, the tooth would not be expected to last a practical or acceptable length of time.[14] Firstly, the two points shown in Figure 6 would wear down very quickly. Secondly, it is very common to push the bottom of the bucket down into the ground in order to lift the front of the excavator off the tracks. This would likely bend or break shaft 130 (Fig 9) were it to bear such a load, resulting in an unacceptable vulnerability to failure.”[15]
[12] Leslie at [5]-[9], referring to BAL-Dec2
[13] Leslie at [10]-[18], referring to BAL-Dec2
[14] Leslie at [27]
[15] Leslie at [28], referring to BAL-Dec2
However, a fundamental shortcoming of this evidence is that it is totally unrelated to the proposed feature of a generally planar extension. It repeats the very evidence taken into account and ultimately dismissed by the delegate in the original decision. Mr Leslie has for present purposes gone on to briefly comment that “there is nothing to suggest that this should [sic] flat region should be maintained in designs for other types of wear members”[16], but this is hardly sufficient to disturb the delegate’s considered findings on fair basis. The only other concern voiced by Mr Leslie as regards the feature of a generally planar extension seems to relate to its “functional significance”[17] Clearly, this issue is irrelevant to the operation of section 102.
[16] Leslie at [63]
[17] Leslie at [55], [59]-[61]
I therefore agree with Esco that in pursuing its first line of reasoning Caterpillar has impermissibly attempted to re-agitate matters already decided against it.
The second reason
Caterpillar again notes that the only reference in the specification to the concept of a “planar” surface occurs at paragraph [50]:
“Bit 21 of point 14 preferably has a generally trapezoidal transverse configuration with a leading side 25 that is wider than trailing side 27 (Fig 5). The term ‘transverse configuration’ is used to refer to the two-dimensional configuration along a plane perpendicular to the longitudinal axis 28 of wear member 14 … The leading side 25, trailing side 27 and sidewalls 29, 31 can be planar, curved or irregular.”
Caterpillar submits that while this disclosure refers to the shape of the wear member 14 in the working section 21, it says nothing about the shape of the wear member in the mounting section 23.[18] This submission overlooks the fact that a drawing alone can provide fair basis for a feature of a claim (Leonardis v Sartas No 1 PtyLtd [1996] FCA 449; 35 IPR 23 at 35, and the authorities cited therein). I will have more to say on this later. All that needs to be said for the moment is that the cross-sectional views of the mounting section 23 depicted in Figures 4, 7 and 8 confirm that the disclosure at paragraph [50] of the specification also relates to the shape of this section of the wear member.
[18] Caterpillar outline of submissions at [95]
The third reason
As I have said, proposed claims 45 to 48 require the leading and trailing sides of the wear member to each have a generally planar extension in each of the mounting section and the working section. Caterpillar submits that these claims thus “set out four regions that are to have a generally planar extension: the mounting section of the leading side; the mounting section of the trailing side; the working section of the leading side; and the working section of the trailing side.”[19] This is not contested by Esco.
[19] Caterpillar outline of submissions at [29]
Caterpillar further submits that when proposed claims 45 to 48 are viewed in this manner, a number of different meanings can be ascribed to the phrase “having a generally planar extension”, none of which are consistent with the illustrated embodiments of the invention.
Caterpillar argues in the first instance that proposed claims 45 to 48 could be interpreted to mean that each of the four regions of the wear member mentioned above “is generally planar across their whole length”.[20] I am not convinced by this argument. Caterpillar has sought to interpret proposed claims 45 to 48 exhaustively in the same vein as if the wear member regions were said to “consist of” a generally planar extension. By contrast, the wear member regions are simply defined as “having” such an extension. When read in the overall context of the specification, it is clear that this term has been used in the proposed claims in a non-exhaustive sense. That is to say, the effect of the term “having” when properly construed is to exclude the possibility that the entirety of each of the wear member regions is generally planar.
[20] Caterpillar outline of submissions at [33], [63]
Caterpillar alternatively argues that “it could be understood that each region only needs to have a portion of its length being planar”, but that “the portion that needs to be planar” is either “required to span the entire width of the leading/trailing side, right up to the sidewalls”[21], or “there is no requirement on how long or how wide that [portion] needs to be”.[22] With regard to the former interpretation, Caterpillar refers to the marked-up version of Figure 8 reproduced below in which the leading side 25 of the wear member 14 is shown as extending between two circles.
[21] Caterpillar outline of submissions at [34]
[22] Caterpillar outline of submissions at [35]
As can be seen from the marked-up version of Figure 8, the leading side of the wear member includes rounded corners. Caterpillar asserts that this is “inconsistent with the notion of being generally planar”.[23] However, this assertion ignores the import of the term “generally” which, as discussed under the heading of clarity, permits a degree of variation.
[23] Caterpillar outline of submissions at [66]
Caterpillar additionally submits that both alternative interpretations outlined above teach “away from the [planar] surface having any functional purpose” in a non-dredging environment. As said earlier, this issue is of no relevance to the present proceedings.
Caterpillar has put forward a number of distinct possibilities of how the phrase “a generally planar extension” might be interpreted. However, in so doing Caterpillar not only raises the inconsequential issue of functionality, but has I think also engaged in an overly meticulous verbal analysis of the claims which is an approach that has long been repudiated by authority (Lockwood at [68], Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179 at [272], Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243). It has in the end not paid due regard to the central question of what disclosure can actually be derived from the drawings.
This brings me to the evidence of Mr Holland. After discussing what he would take from the disclosure of the body of the specification in connection with the feature of generally planar extensions, he states:
“Furthermore, the drawings also show these generally planar extensions. In particular, Figure 2 (depicting a side view of the tooth of the preferred embodiment) and Figures 3 to 8 (depicting cross sections of that tooth) show that both leading and trailing sides having [sic] generally planar extensions. Figure 2 shows that the central parts extend axially and are generally flat, with a transition section where the mounting section meets the working section of the tooth. Figures 3 to 8 show that there is some width to these flat areas on the leading side and trailing side. There are also curved transitions to the side walls 29, 31.
The location of the lock [16], in the trailing side of the mounting section, does mean that size [sic] of the generally planar extension is relatively smaller in that part of the tooth. However, I can still see a generally planar extension in the mounting section of the trailing side 27 (see also Figure 10).”[24]
[24] Holland at [2.6]-[2.7]
I accept this evidence. It is consistent with the alternative interpretations of proposed claims 45 to 48 posited by Caterpillar, and has not been seriously challenged by Mr Leslie. I note with interest here that despite the inference sought to be drawn by Caterpillar that the drawings are merely schematic in nature,[25] Mr Leslie has nevertheless recognised in common with Mr Holland that as made apparent by them a small region in the trailing side of the mounting section “at the very rear” of that section is generally planar.[26] However, Mr Leslie inappropriately persists with the notion that even if intentionally flat, this small region is of no functional significance to wear members not used in dredge cutterheads.[27]
[25] Caterpillar outline of submissions at [57]
[26] Leslie at [57]
[27] Leslie at [59], [63]
For the reasons set out above, this aspect of Caterpillar’s opposition under section 102(2)(b) also does not succeed.
ALLOWABILITY – SECTION 102(2)(a)
Legal principles
Consideration of the prohibition in this section requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. However, the comparison is not between a particular amended claim and that claim before amendment. The expression “within the scope of the claims” directs attention to all the claims (Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814; 87 IPR 516 at [40]). For this reason a long standing practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment (Fina Research SA v Halliburton EnergyServices Inc [2003] FCA 251 at [29]).
In the present case the claims immediately before amendment are the claims as they stood at acceptance.
Consideration
Claims 1 and 26 in their accepted form require the leading side of the wear member to be wider than the trailing side in “at least part of the working section and the mounting section”. If the claims were amended as proposed, claims 1, 7, 8, 26, 27, 28, 45 and 47 would now require that the leading side be wider than the trailing side in “at least part of the working section and at least part of the mounting section”.
Esco submits that the words “at least part of” in the accepted claims qualified both the working section and the mounting section of the wear member. It says this is consistent with the delegate’s findings in the original decision at paragraph [11] where he said that the invention required the leading side to be wider than the trailing side “at least partially in the mounting [section]”.[28] It also relies on the evidence of Mr Holland who says that “the addition of the words ‘at least part of’ before ‘the mounting section’ … simply reinforce my previous understanding of the [accepted claims]”.[29] Esco accordingly contends that the proposed addition of these words to the claims in question does not alter their scope or meaning.
[28] Esco outline of submissions at [6.2]-[6.3]
[29] Holland at [2.2]
Although by no means clearly expressed, it seems that Caterpillar’s primary objection to the proposed introduction of the phrase “at least part of the mounting section” is that it would impermissibly broaden the scope of the accepted claims. Caterpillar advances four different meanings (labelled as “options (a) to (d)”) that could purportedly be attributed to this phrase.[30] It is not necessary to repeat those options here. However, I agree with Esco that contrary to options (b) to (d):
“There was no requirement in the claims prior to amendment that the leading side be wider than the trailing side at the junction of the mounting section and the working section, nor that there be ‘one part’ spanning both sections which has the necessary width feature.”[31]
[30] Caterpillar outline of submissions at [114]-[118]
[31] Esco outline of submissions at [6.11]
Furthermore, the meaning accorded to the accepted claims under option (a) is that “at least part of the working section and at least part of the mounting section have a wider leading side than trailing side”. Esco submits, justifiably in my view, that this is in fact the correct interpretation of the claims both before and after amendment.
This ground of opposition therefore does not succeed.
ALLOWABILITY: SECTION 102(1)
Legal principles
Section 102(1) states:
“An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.”
Schedule 1 to the Act defines that “claim” when used as a verb means “to claim in a claim (including a dependent claim) of a complete specification”.
As well established, the question of whether matter is in substance disclosed is at least “very similar to” or has a “close relationship” with the test for fair basis (Gambro Pty Ltd vFresenius Medical Care South East Asia Pty Ltd [2000] FCA 1044; 49 IPR 21 at [18], ICI Chemicals & Polymers Ltd v Lubrizol Incorporation Inc [2000] FCA 1349; 106 FCR 214 (ICI Chemicals) at [118]). The Full Court in ICI Chemicals expressed the view that it would “be a rare case indeed where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification (and vice versa)”.
Caterpillar has asserted that the proposal to introduce the feature of a generally planar extension into proposed claims 45 to 48 would contravene section 102(1) as a direct consequence of the failure of these claims to satisfy the fair basis requirements of section 40(3) embraced by section 102(2)(b).[32] However, this argument is clearly not sustainable since I have previously found that, when properly viewed, proposed claims 45 to 48 are indeed fairly based.
[32] Caterpillar outline of submissions at [110]
This ground of opposition accordingly does not succeed.
CONCLUSION

I have found that the section 104 opposition does not succeed on any of the grounds relied on. I therefore allow the amendments proposed by Esco to the specification.
FATE OF THE APPLICATION
Towards the end of the hearing Caterpillar made submissions regarding the fate of the present application in the event that the proposed amendments were refused. Given that this issue had not been foreshadowed prior to the hearing, Esco contended, and I agreed, that the parties should be given an opportunity to further argue the issue by way of supplementary written submissions. This course of action was confirmed in a letter sent to the parties on 5 September 2016. In the event, the parties completed their written submissions on 17 October.
I have allowed the proposed amendments and so the issue raised by Caterpillar as to the fate of the present application is a moot point at this juncture. However, it is worth mentioning that as stated in the Australian Patent Office Manual of Practice and Procedure (the MPP[33]), the matter will now be set for final determination. Of particular relevance to the submissions made by Caterpillar, the MPP goes on to say that if it is considered that the amendments do not overcome all adverse findings in the original decision, or that the amendments introduce new deficiencies, it is open to the delegate, if deemed appropriate, to provide Esco with a further opportunity to amend.
[33] MPP at [3.8.8.1]-[3.8.8.2]
COSTS
Caterpillar has not been successful in its opposition to the proposed amendments, and I can see no reason why costs should not follow the event. I therefore award costs against Caterpillar.
O L Haggar
Delegate of the Commissioner of Patents