Caterpillar Inc. v ESCO Corporation - [2016] APO 74

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Caterpillar Inc. v ESCO Corporation [2016] APO 74

Patent Application: 2013202355

Title:Wear assembly

Patent Applicant:                   ESCO Corporation
Opponent:  Caterpillar Inc.
Delegate:  R Subbarayan
Decision Date:  27 October 2016
Hearing Date:  10 August 2016, in Canberra;

Catchwords:  PATENTS - opposition to grant of patent – divisional application - whether claims are novel – whether claims are inventive - whether claims are clear - whether claims are fairly based - whether claims are to a manner of manufacture - whether claims are useful based on findings of Federal Court in an appeal against an earlier Office decision in respect of a grandparent application– some claims lack novelty – none of the other grounds made out - costs awarded against applicant

Representation: Counsel for the applicant: Adrian Ryan SC assisted by Tom Cordiner
Patent attorney for the applicant: Wayne McMaster and Rebecca Dutkowski of Minter Ellison
Patent attorney for the opponent: Bret Connor and Jonathan Schnapp of Freehills

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013202355

Title:Wear assembly

Patent Applicant: ESCO Corporation
Date of Decision: 27 October 2016
DECISION
Claims 1, 2, 3 and 5 are not novel. I allow the applicant two months from the date of this decision to propose amendments to overcome the adverse findings.
I award costs according to schedule 8 against the applicant.
REASONS FOR DECISION
BACKGROUND

Patent application 2013202355 in the name of ESCO Corporation (ESCO) was filed on 3 April 2013 as a divisional application of AU2013200095 and AU2013200107. AU2013200095 is itself a divisional application of AU2011201135 and through this grandparent application the present application claims an earlier priority date of 30 March 2006. AU2011201135 was also the subject of opposition and the Commissioner’s decision was issued as Ronneby Road Pty Ltd et al. v ESCO Corporation [2015] APO 3. This decision was appealed to the Federal Court which recently issued its decision Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 (Ronneby Road) in which it held that all of the claims lack utility.
The present application was advertised as accepted on 2 October 2014. Grant of the patent was opposed under section 59 of the Patents Act 1990 by Caterpillar Inc. (Caterpillar) and CQMS Pty Ltd. CQMS Pty Ltd subsequently withdrew their opposition and hence the present decision relates only to the opposition by Caterpilllar.
ESCO proposed some minor amendments to the claims on 1 December 2014 which were advertised as allowed on 2 April 2015.
The matter was heard in Canberra on 10 August 2016.
GROUNDS OF OPPOSITION
Caterpillar’s Statement of Grounds and Particulars (SOGAP) filed on 2 April 2015 opposed the grant of the patent on the grounds of Novelty, Inventive Step, Clarity, Fair Basis and Manner of Manufacture. An amended SOGAP was filed on 3 July 2015 that included amendments to some of the particulars.
On 19 July 2016, Caterpillar filed another amended SOGAP which included the new ground of lack of utility based on the decision of the Federal Court in Ronneby Road. This amendment was allowed on 1 August 2016 under the provisions of regulation 5.16, despite submissions from ESCO that the Commissioner should not allow the amendments.
ONUS OF PROOF
The examination request for this patent application was filed on 3 April 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
EVIDENCE
Evidence in support comprises:
·Declaration by Bruce Alexander Leslie dated 5 June 2015 with exhibits BAL-1 to BAL-2 (Leslie 1).
·Declaration by Bruce Alexander Leslie dated 1 July 2015 with exhibits BAL-3 to BAL-13 (Leslie 2).
·Declaration by Bruce Alexander Leslie dated 2 July 2015 with exhibits BAL-14 to BAL-15 (Leslie 3).
Evidence in answer comprises:
·Declaration by Hezekiah Russel Holland dated 26 September 2015 with exhibits HRH-1 to HRH-3 (Holland 1).
·Declaration by Hezekiah Russel Holland dated 5 October 2015 with exhibit HRH-4 (Holland 2).
Evidence in reply comprises:
·Declaration by Bruce Alexander Leslie dated 7 December 2015 with exhibits BAL-HRH-EIA and BAL-HRH-3 (Leslie 4).
SPECIFICATION
The specification states that the invention pertains to a wear member that is commonly attached to excavating equipment, such as excavating buckets, to protect the equipment from wear and to enhance the digging operation.
Such wear members typically are elongate with an excavating tooth or point at a front end and a socket at a rear end. The socket is fitted over a nose of a base on the excavating bucket and releasably secured thereto with a locking member that is inserted into aligned apertures in the socket and base. The wear members are subject to very harsh conditions in use and consequently wear out and need to be replaced at regular intervals. The specification states that “Many designs have been developed in an effort to enhance the strength, stability, durability, penetration, safety, and/or ease of replacement of such wear members with varying degrees of success”.
Under the heading “Summary of the invention”, the specification states that the present invention pertains to an improved wear assembly that provides for “enhanced stability, strength, durability, penetration, safety and ease of replacement”. This is then followed by statements of 14 aspects of the invention in paragraphs [07] to [020], of which the first 8 relate to the configuration and geometry of the interface between the socket and the nose and the remaining 6 to the construction and arrangement of the locking member.
This is then followed by a detailed description of the preferred embodiments in which these various aspects of the invention are described with reference to a number of drawings.
The construction and arrangement of the interface between the wear member and the nose including the provision of various stabilizing surfaces is best shown in figures 3, 9 and 14 that are reproduced below with figure 9 showing a front view of the base and figure 14 showing a rear view of the wear member.
Wear assembly 10 includes a wear member 12 with a digging edge 44 and a base 15 that is fixed to the lip of an excavator bucket. The wear member has a rearwardly opening socket 16 that is adapted to fit on a nose 14 of the base and secured thereto by the locking member.
Front end 20 of the nose has a generally triangular shape with a lower surface 22 and a pair of transversely inclined upper surfaces 24. These surfaces are front stabilizing surfaces of the nose and extend substantially parallel to the longitudinal axis of the nose. Due to their inclined arrangement, the upper surfaces assist in resisting both downwardly applied vertical loads and side loads. The nose also includes upper and lower walls 31, 33 that converge towards the front thrust face 27 giving the nose a wedge shape. The nose transitions from the generally triangular front end 20 into a six-faceted body 18 at the rear end that comprises an upper central facet 34, a pair of inclined side facets 36, a lower central facet 38 and a pair of transversely inclined side facets 40. Lower side facets 40 define rear stabilizing surfaces and extend substantially parallel to the longitudinal axis of the nose. Base 15 also includes supports 42 for additional stabilization of wear member under upwardly directed loads.
The socket 16 of the wear member is formed to matingly receive the nose 14 and has a shape that corresponds to that of the nose. It includes a generally triangularly shaped front end 48 having a lower stabilizing surface 52 and a pair of transversely inclined upper stabilizing surfaces 54 each of which extends substantially parallel to the longitudinal axis of the wear assembly. The socket then transitions into a six-faceted main portion comprising upper facet 64, a pair of transversely inclined side facets 66, lower facet 68, and a pair of transversely inclined side facets 70. Side facets 70 define rear stabilizing surfaces and extend substantially parallel to the longitudinal axis. Facets 52, 54, 64, 66, 68 and 70 correspond to facets 22, 24, 34, 36, 38 and 40 on the nose. Shoulders 72 on the wear member bear against supports 42 of the base.
While these corresponding facets on the socket and nose may come into contact with each other depending on the load applied to the wear assembly, “stabilizing surfaces 22, 24, 40, 42, 52, 54, 70, 72 are intended to be the primary surfaces for resisting vertical and side loads that are applied to the wear member”. These surfaces extend “substantially parallel to longitudinal axis 26 to minimize forward urging of wear member 12. As a result, the wear member is stably supported on the nose to increase the strength and stability of the assembly, reduce wear, and enable the use of smaller locks”.
The specification states that the “term "substantially parallel" is intended to include parallel surfaces as well as surfaces that diverge rearwardly from axis 26 at a small angle (e.g., of about 1-7 degrees) for manufacturing or other purposes. A small divergence may also ease removal of the wear member from the nose”.
The arrangement of the locking member is best seen in figures 23, 25 that are reproduced below:
The locking member 17 is fitted within a through-hole 81 in the wear member 12 and cooperates with bulb 93 in the through-hole to pivotally swing about bulb 93 between hold and release positions. In the hold position it protrudes into the socket into an aligned cavity 83 in the nose 14 to secure the wear member to the base. In the release position, it still remains secured to the wear member but does not protrude into the socket thereby permitting the wear member to be removed from or fitted over the base. Latch formations provided in the locking member and the wear member ensure that the lock is securely held in the wear member in both the hold and release positions. The lock is moved between hold and release positions “without a hammer for ease of use and enhance safety” and in a preferred arrangement this is done using a prying tool T. The lock remains secured in the release position within the opening in the wear member even when the wear member is not fitted to the base of the excavator bucket and this is stated to provide benefits such as “less shipping costs, reduced storage needs, and less inventory concerns” and also reduced “risk of dropping or losing the lock during installation”.
The specification ends with 8 claims all of which are primarily directed to the geometry of stabilizing surfaces. Some of the claims in addition define the arrangement of the locking member. The claims read as follows:
1. A wear member for attachment to excavating equipment comprising a front end, a rear
end, a top side, a bottom side, a socket open in the rear end to receive a base fixed to the excavating equipment, the socket having a front portion, a rear portion and a longitudinal axis, the front portion of the socket including a plurality of front stabilizing surfaces, the rear portion of the socket including a plurality of rear stabilizing surfaces, the front portion including a first upward-facing front stabilizing surface extending laterally across the front portion, and a pair of second downward-facing front stabilizing surfaces facing generally toward the first front stabilizing surface, the second front stabilizing surfaces being on opposite sides of the socket and inclined in opposite directions transversely to the longitudinal axis to reduce the outward lateral extension of outer corners of the socket in the front portion along the top side, and each of the first and second front stabilizing surfaces axially extending at an angle of no more than about seven degrees to the longitudinal axis.
2. A wear member in accordance with claim 1 wherein the first and second front stabilizing surfaces are each generally planar.
3. A wear member in accordance with claim 1 or 2 including an opening for receiving a lock to releasably secure the wear member to the base.
4. A wear member in accordance with claim 3 wherein the opening communicates with the socket and has a lock secured therein for movement between a hold position where the lock projects into the socket to retain the wear member to the base, and a release position where the lock is retracted from the hold position so that the wear member can be released from the base.
5. A wear member in accordance with any one of claims 1-4 wherein each of the first and second front stabilizing surfaces axially extends at an angle of no more than five degrees to the longitudinal axis.
6. A wear member for attachment to excavating equipment comprising a mounting end, including:
a socket having a longitudinal axis, the socket including a front portion having a plurality of front stabilizing surfaces and a front thrust face, and a rear portion rearward of the front portion, the rear portion having a plurality of rear stabilizing surfaces, the front and rear stabilizing surfaces and the front thrust face bear against complementary surf aces on the base, each of the front and rear stabilizing surfaces axially extending at an angle of no more than about seven degrees to the longitudinal axis, and a plurality of each of the front and rear stabilizing surfaces being transversely inclined to resist both vertical and side loading;
a through-hole communicating with the socket; and
a lock secured in the through-hole for movement between a hold position where the lock can secure the wear member to the base, and a release position where the lock permits release of the wear member from the base, the lock being held in the through-hole in the hold position and the release position regardless of whether the base is received into the socket.
7. A wear member for attachment to excavating equipment comprising a mounting end including:
a socket defined by a top wall, a bottom wall and side walls extending between the top and bottom walls, the socket having a longitudinal axis, a front portion having a plurality of front stabilizing surfaces and a front thrust face, and a rear portion rearward of the front portion, the rear portion having a plurality of rear stabilizing surfaces, the front and rear stabilizing surfaces and the front thrust face bear against complementary surfaces on the base, each of the front and rear stabilizing surfaces axially extending at an angle of no more than about seven degrees to the longitudinal axis, and a plurality of each of the front and rear stabilizing surfaces being transversely inclined to resist both vertical and side loading,
a plurality of outer stabilizing surfaces outside of the socket to bear against complementary surfaces on the base, each of the outer stabilizing surfaces axially extending at an angle of no more than about seven degrees to the longitudinal axis,
a top side including a top wall and upper portions of the side walls, the top side overlapping with and extending from one of the outer stabilizing surfaces to the other of the outer stabilizing surfaces to support loads resisted by the outer stabilizing surfaces,
a through-hole communicating with the socket, and
a lock secured in the through-hole for movement between a hold position where the lock can secure the wear member to the base, and a release position where the lock permits release of the wear member from the base, the lock being held in the through-hole in the hold position and the release position regardless of whether the base is received into the socket.
8. A wear member in accordance with claim 6 or 7 wherein each of the front and rear stabilizing surfaces axially extends at an angle of no more than five degrees in the longitudinal axis.
CLAIM CONSTRUCTION
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.
In Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 Middleton J stated at [139]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
The requirement for clarity is understood to be satisfied if there would be “no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim” (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). While it is certainly possible to apply an overly meticulous, semantic analysis and come up with words or short phrases which are, strictly speaking, not perfect, I note it was said in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, 77 IPR 229 at [81]:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use”
Where a claim is capable of more than one construction, then an absurd construction should be rejected in favour of an alternative construction (Henriksen v Tallon [1965] RPC 434), EMI v Lissen Ltd [1939] 56 RPC 23).
I will now construe the following terms in the claims.
Extending laterally across the front portion
Claim 1 defines that the first upward facing front stabilizing surface extends laterally across the front portion. While ESCO submitted that this requires the front stabilizing surface to extend substantially across the entire width of the front portion, Caterpillar submitted that it only needs the front stabilizing surface to extend in a direction that runs between one lateral side and the other lateral side without any requirement for a minimum width in the lateral direction.
The plain meaning of the term ‘across’ is ‘from one side to another’ (Macquarie Dictionary) or ‘In a position or direction crossing the length of something, transversely’ (Oxford English Dictionary). Applying this plain meaning, the use of this term in the phrase ‘extending laterally across the front portion’ would require the stabilizing surface to extend from one side of the front portion to the other side. In my view such an interpretation is also consistent with the preferred embodiment shown in figure 14 where it shows the stabilizing surface 52 as extending from one side facet 70 to the other side facet 70 of the front portion of the socket. While it was argued that even in this figure the stabilizing surface 52 does not extend across the maximum width of the front portion of the socket, in my view this definition does not require that the surface has to extend exactly from one side extremity to the other. A purposive construction would only require this definition to mean that the surface should extend substantially from one side to the other and I am of the view that the surface 52 in figure 14 falls within such a purposive construction. Also as I noted earlier, the inclined facets 70 are referred to in the specification as side facets and clearly the surface 52 extends between these side facets even when it reduces in width from the front end towards the rear.
Stabilizing surface

Caterpillar submitted that the term ‘stabilizing surface’ has a specific meaning only in the context of a wear assembly comprising a wear member and the base wherein certain surfaces of the socket of the wear member bear upon corresponding surfaces of the nose in order to stabilize the wear member on the nose during digging operations. However as each of the independent claims of the present application are directed to the wear member per se as opposed to a wear assembly, no surface of the socket bears against any other surface and that “any surface (or part thereof) of a wear member could be a stabilizing surface merely by mounting the wear member on a base that contacts that surface (or part thereof) to bear load”.
In support of this contention they relied on the following evidence of Mr Leslie:
“For example, before February 2006, I became aware that Hensley Industries were producing wear members for retrofitting onto ESCO's Sidewinder bases. Some of the surfaces of the base that acted as stabilising surfaces when used with the Sidewinder wear member, as referenced to claims in AU'315, were not stabilising surfaces when used with the Hensley wear members. The Hensley wear members were designed to have a small clearance from these surfaces on the base. Conversely, there were top and bottom surfaces that were intended to be clearance surfaces (ie non-stabilising surfaces) in the Sidewinder base, but which became stabilising surfaces when used with the Hensley wear members”. (Leslie 1 at 59)
Whilst it is true that the claims are directed to the wear member per se, that does not necessarily lead to the conclusion that the term ‘stabilizing surface’ is not clear or cannot be properly construed. It is clear from the specification that the wear member is designed to be used with a specific base having a nose of a particular shape such that when the socket of the wear member is fitted over the nose, certain surfaces of the socket will bear against corresponding surfaces of the nose to stabilize the wear member under load. These are the surfaces that are then referred to as stabilizing surfaces in the claim.
I also find Mr Holland’s evidence on this issue persuasive when he states:
“I would observe that an enormous amount of time and effort goes into the design and development of these products, and into defining the shape of the parts to improve their function. This includes considering the effect of wear on the system, and also includes controlling and considering the manufacturing tolerances of all parts to ensure they fit together as they are designed to do. As a practical matter, a skilled person will consider which surfaces are bearing surfaces during the design process, and will be able to identify those surfaces in a practical environment”. (Holland 2 at 8.3)
I am satisfied that the socket of the wear member is designed not in isolation but rather in combination with the base such that the socket and nose can be provided with corresponding surfaces that can bear against each other to stabilize the wear member on the base and to resist the loads that are applied to the wear member during digging operations.
In my view, the term ‘stabilizing surfaces’ is clear and is to be construed as referring to those surfaces of the socket that are intended to act as stabilizing surfaces when fitted over a nose it is designed to be used with.
Front thrust face
Caterpillar submitted that similar to the term ‘stabilizing surface’ the term ‘front thrust face’ in claims 6, 7 is “either unclear or should be interpreted as meaning a surface, or portion of a surface, oriented to primarily resist rearward loads”.
When the claims are read in the context of the specification as a whole, it is clear that this term refers to the front face 29 of the socket that in use will bear against the front face 27 of the nose to resist rearward loads. This term is clear and is to be construed as a face in the front of the socket that in use will bear against a corresponding front face of the nose to resist rearward loads.
NOVELTY
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court noted (at [293]–[294]):
“The touchstone for determining whether a prior publication ... anticipates a claimed invention, is stated in General Tire at 485 to 486:
When the prior inventor’s publication and the patentee’s claim have respectively been construed by the Court in the light of all properly admissible evidence ... the question whether the patentee’s claim is new ... falls to be decided as a question of fact. If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor’s publications will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... a signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
The metaphor of planting the flag has been taken up in this Court. For example, in ICI Chemicals, the Full Court at [51], after noting the metaphor, remarked that, in that case, the appellant’s argument involved the skilled addressee rummaging through a “flag locker” to find a flag which the prior art document possessed and could have planted. In Apotex Pty Ltd and Another v Sanofi-Aventis and Another [2008] FCA 1194; (2008) 78 IPR 485 (“Sanofi-Aventis (2008)”), Gyles J at [91] adopted a different metaphor, remarking that “anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun”. Each metaphor underlines the importance of the specificity required in order for a prior art document to anticipate an invention as claimed.”
In relation to what reliance can be placed on dimensions shown in patent drawings, the Full Federal Court in Leonardis v Sartas No 1 Pty Ltd and Another (1996) 35 IPR 23 quoted with approval the following statement by Aldous J in Vax Appliances Ltd v Hoover Plc [1991] FSR 307 at 313:
"patent drawings are not designed to be used to denote precise measurements unless so stated. They are there to illustrate the concept and the overall relationship of the parts."
Caterpillar relies on the following documents in relation to the ground of novelty.
JP 55-13265 U and it’s verified translation (D11B)
Figures 6 and 8 of this document are reproduced below:
This document teaches a wear member 1 with a socket for fitting over a base 2 having a nose. As can be seen in figure 8, the nose has upper and lower tapered surfaces 5, right and left tapered side surfaces 6 and a front parallel part 7. This parallel part has upper and lower projecting surfaces 8 in the centre, inclined surfaces 9 on both sides of the projecting surfaces, recessed surfaces 10 joined to the inclined surfaces and side surfaces 11 joined to the recessed surfaces and a tip end surface 13. Surfaces 8, 9 and 10 are parallel to the longitudinal axis of the nose. The socket of the wear member has an internal shape that matches the parallel parts on the surfaces of the nose and “is formed in such a way as to interlock with the left/right side surfaces (6) and the surfaces (8), (9), (10), (11), (12) of the parallel part (7) with respective gaps having predetermined dimensional accuracy”. It is also further stated that “when a load in the transverse direction or a load in the vertical direction is exerted on the tip end of the point, said load is transmitted to the adapter by way of the interlocking surfaces of the projecting parallel parts of the nose-shaped projection of the adapter, and a large localized load is not applied in this case either”.
Caterpillar submitted that document D11B discloses all of the features of claim 1 including the first upward facing front stabilizing surface that extends laterally across the front portion (surface 8), a pair of second downward facing front stabilizing surfaces facing generally toward the first front stabilizing surface (upper inclined side surfaces 9), the second front stabilizing surfaces being on opposite sides and inclined in opposite directions to reduce the outward lateral extension of outer corners of the socket in the front portion along the top side because of the presence of the upper recessed surfaces 10 and that each of the first and second stabilizing surfaces extending axially parallel to the longitudinal axis.
ESCO argued that claim 1 is distinguished from D11B for the following reasons:
a.The first upward stabilizing surface 8 does not extend laterally across the front portion as it does not extend from one side of the socket to the other.
b.There is no clear and unmistakeable teaching that inclined surfaces are stabilizing surfaces that resist forces.
In relation to (a), clearly surface 8 does not extend from one side of the front portion to the other side in the manner I have construed the term ‘extending laterally across’. It is only the combination of the lower surface 8 and the two lower recessed surfaces 10 that spans the width of the front portion and clearly they do not constitute a (single) upward facing front stabilizing surface. This feature of claim 1 is not disclosed.
In relation to (b), ESCO relies on Mr Holland’s evidence where he states that while surfaces 9 have some inclination, these “would appear to have little if any stabilizing effect in resisting vertical loading” especially when “the area of surface 9 is clearly much smaller than that of surfaces 8 and 10” and that because of the respective gaps between the surfaces of the socket and the nose, “surfaces 9 may not engage with the wear member and bear any vertical loads at all”. (Holland 2 at 5.3)
I am not convinced. D11B clearly states that the surfaces of the socket are formed such that they interlock with left/right side surfaces (6) and the surfaces (8), (9), (10), (11), (12) and that when subjected to load, the load is transmitted to the adapter by way of the interlocking surfaces. Even Mr Holland admits that side loading could be carried by surface 11 and potentially by surface 9. While the document does mention respective gaps between the interlocking surfaces, in my view this is a reference to manufacturing tolerances that need to be provided to enable the socket to fit over the nose while at the same time allow the surfaces to bear against each other under load. In this respect I agree with Mr Leslie when he states:
“In the context of the specification and the purpose of the interlocking part, it is clear that the reference to "respective gaps having predetermined accuracy" is merely acknowledging that parts have tolerances which must be controlled in order for the interlocking to function correctly. A gap between a stabilising surface on the wear member and a corresponding stabilising surface on the nose, that may exist in an unloaded state, is closed up when the wear member is under load such that the corresponding stabilising surfaces are pushed together”. (Leslie 4 at 8)
I am satisfied that this feature of claim 1 is disclosed.
As the first upward stabilizing surface 8 does not extend laterally across the front portion, claim 1 is novel.
US 4751785 A (D16)
D16 is directed to a wear member that can be seated on the nose without play, is not loosened by vibrations and is very easy to replace.
Figures 2, 4, 6 and 7 of this document are reproduced below.
A wear member 5 with a socket 6 is configured for being press fitted over a nose 4 of a base 2. Both the socket and nose have a “largely parallel trapezoidal cross-section”, with the nose having a base edge 9, two inclined side edges 10, 11 and top edge 12 and the socket correspondingly having a base edge 13, two inclined side edges 14, 15 and top edge 16. The base edge and side edges “afford the press fit” with clearances 17, 18, 19 provided at the top and at the bottom corners respectively. In order to obtain a press fit, both the nose and the socket taper off forwards with a nose angle of around 5°-15°, preferably 10°. Two resilient locking means 20, 21 are fitted in locking apertures 26, 27 to prevent the press fit from vibrating loose.
Caterpillar submitted that surface 13 is a first upward facing front stabilizing surface, surfaces 14, 15 are second downward facing front stabilizing surfaces facing generally towards the first front stabilizing surfaces that are on opposite sides of the socket and inclined in opposite directions transversely to the longitudinal axis. They also submitted as the nose angle could be as low as 5°, it follows that each of the stabilizing surfaces 13, 14, 15 of the socket are about 2.5° from the longitudinal axis and that even with the preferred nose angle of 10°, the angle of the stabilizing surfaces would still be only 5° which is less than the 7° defined in claim 1.
ESCO on the other hand submitted that it is not clear whether the “nose angle” is referring to the taper angle of each side or to the combined taper angle between the tapering sides and that even if refers to the combined angle between the tapered surfaces, even in the preferred case of a 10° nose angle, this would still allows variations where the surfaces are tapered at different angles with for example one surface being tapered at 8° and the other at 2°.
It is clear from D16 that the stabilizing surfaces 13, 14 and 15 taper off forwards as they are the sides that “afford the press fit”. However while D16 refers to the socket tapering off to a nose/tip angle of about 5°-15°, there is no further explanation either in the body of the specification or in the figures as to whether this refers to the included angle between the tapering sides or to the angle made by each of the sides to the longitudinal axis.
Mr Leslie is of the view that the tip angle refers to the included angle between opposing sides of the socket and therefore the angle between each of the sides 13, 14, 15 to the longitudinal axis would be half the tip angle, ie about 2.5° to about 7.5°. He has also provided as evidence a CAD model of the nose that he generated based on the line drawings of D16. Using this CAD model he has determined the angles between each of surfaces 13, 14 and 15 to the longitudinal axis is around 3°. He further interprets the longitudinal axis of the socket in D16 to be the axis that “passes midway between the side stabilizing faces 14, 15 and the bottom stabilizing surface 13”
Mr Holland appears to be of the view that the tip angle refers to the angle that the sides make with the longitudinal axis, and does not dispute Mr Leslie’s interpretation of the longitudinal axis in D16. He also submits that the drawings of D16 would not be suitable for use in design analysis as proposed by Mr Leslie.
However I do not need to decide on this. Even if I were to adopt ESCO’s construction that it refers to the angle between each of the sides and the longitudinal axis, clearly D16 contemplates an angle as low as 5° and this would clearly fall within the scope of the “angle of no more than about 7°” defined in claim 1.
In my view claim 1 is not novel in light of D16.
The first and second stabilizing surfaces are generally planar and at the lower end of the range disclosed in D16, the angle is 5°. The wear member also has openings 26, 27 for receiving a lock. Claims 2, 3 and 5 are also therefore not novel.
Caterpillar did not press D16 against claims 4, 6, 7 and 8 and I am satisfied that these claims are novel over D16.
US 6047487, US 6393739, “Torq Lok” and US 2005/0274047
While Caterpillar’s written submissions for the hearing included the above mentioned documents under lack of novelty, at the hearing Caterpillar conceded that none of these documents disclose all of the features of any of the independent claims and did not therefore press these documents under the ground of novelty.
I am satisfied that none of these documents deprives the novelty of any of the independent claims.
INVENTIVE STEP
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base:
"The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of "perhaps many possibilities" which must be shown to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers." (Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [41])
An important consideration is also the impermissible use of hindsight. The High Court in Alphapharm (supra) also warned against the misuse of hindsight noting that the danger of such misuse will be "particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known". In that regard, the court referred with approval to Lord Diplock's comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (at 362):
"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."
The High Court in Alphapharm (supra) also noted that “It is important also to remember that in Australia, a "scintilla of inventiveness" will suffice: "no smallness or simplicity will prevent a patent being good"”.

Caterpillar relies on the following documents under the ground of inventive step.
FR 2032575 and it’s verified translation (D13)
Caterpillar submitted that claim 1 lacks an inventive step over D13 when combined with the common general knowledge in the art.
D13 is directed to a wear member that is intended to improve the seat and rigidity of attachment on the nose under vertical and side loads. This is achieved by forming recesses on the engagement surface of the socket “such that bearing takes place necessarily on the external generatrices of the nose on the side of the excavation force and on the median generatrix on the side away from this force”. This is best seen in figures 7 and 9 reproduced below:
Recessed portions are provided in the central portion of the upper surface and in the lateral portions of the lower surface of the socket to form “enhanced segments” mn, pq and rs that extend longitudinally in the socket and constitute the exclusive bearing zones of the wear member on the nose. This three point contact arrangement is stated to provide for better clamping of the wear member on the nose even with a wedge shape nose having a nose angle of around 40° and to prevent lateral or angular displacement of the wear member.
Figure 9 shows a modified embodiment in which the cross-section of the socket has chamfers of a few degrees and this is stated to provide for even better avoidance of undesirable lateral displacement.
Caterpillar relies on this embodiment and has submitted that stabilizing surface rs extends laterally across the front portion of the socket and that because of the chamfer the upper stabilizing surfaces mn, pq located on opposite sides of the socket are inclined in opposite directions transversely to the longitudinal axis. They also submitted that the only difference between claim 1 and D13 is that in D13 there is no disclosure of these front stabilizing surfaces axially extending substantially parallel at an angle of no more than about 7° to the longitudinal axis. They however argued that according to the evidence of Mr Leslie it would have been obvious to provide such parallel extending stabilizing surfaces when trying to adapt the teachings of D13.
Before I decide on the obviousness question, I need to be satisfied that D13 is a document that the person skilled in the art would have ascertained, understood and regarded as relevant as per the requirement of s7(3). In this regard Mr Leslie has in his second declaration made a number of statements that support the view that the skilled addressee in this art would when starting a new design conduct patent searches including French and German patent documents.
“When starting a new design we would be wanting to know about a whole range of issues, including locking mechanisms and stabilising surfaces, but also other design considerations. We would want to know what anyone has come up with over the past 30 or 40 years, especially if it had to do with ways of securing wear members”. [32]
“When working for CQMS we did searches for patents and patent applications, and our patent attorneys also conducted such searches. The searches would cover both in-force patents and patents and patent applications that had entered the public domain (eg expired patents)”. [30]
“We would have been interested in French and German patent documents because there were French and German manufacturers working in this space and competing with us”. [38]
“The title of FR 2032575 A5 translated into English is ''Wear tooth adaptable to the nose of excavation or earth moving", which was spot on. If I were to read that title, it would bring that document right up into the central focus”. [39]
“If I'd have seen the figures in FR 2032575 A5, when I was considering how to make the tooth more stable on the nose I would have singled out this document for consideration. I would have thought this document was interesting because in the cross section there are three contact locations, and at 17 February 2006, I was not aware of such an arrangement”. [40]
Mr Holland does not dispute these statements. I am therefore satisfied that D13 is a document that the skilled addressee could have ascertained, understood and regarded as relevant to the problem of providing a wear member that has enhanced stability, strength, durability and penetration.
In my view the front stabilizing surfaces axially extending substantially parallel at an angle of no more than about 7° to the longitudinal axis is not the only difference between the claimed invention and D13. In D13 upward facing front stabilising surface rs covers only the central portion of the lower surface and does not extend from one side to the other of the lower surface of the socket in the manner that I have construed this feature. Caterpillar has provided no submissions in relation to this difference and to make the stabilizing surface rs extend from one side to the other would in my view go against the teaching of D13 which specifically calls for providing recessed portions in the lateral portions of this lower surface.
In relation to the feature of the front stabilizing surfaces axially extending substantially parallel at an angle of no more than about 7° to the longitudinal axis, Mr Leslie’s submissions can be summarized as follows:
·From figure 9 of D13, he would have extracted the principle that stability could be improved by using laterally angled stabilising surfaces on opposite sides of the top of the socket and a central stabilising surface at the bottom the socket.
·D13 states that the invention is concerned with any tooth and any adaptor nose to which they can be attached, regardless of their profile and regardless of the attachment locking wedge system.
·From the early 1990’s there was a strong drive in the industry to move away from using locking pins that required a sledge hammer to install the pin. The approach that was employed was to reduce or eliminate the forces borne by the pin during digging operations and this was achieved by having the stabilizing surfaces that bear vertical and transverse forces to be orientated substantially parallel to the longitudinal axis.
·If he had seen D13 and had been asked before priority date of the claimed invention to put the design of D13 into practice, he would have ensured that the front stabilizing surfaces were about 5° or less to the longitudinal axis as this was standard practice by February 2006 and was the only way he knew to reduce the load on the lock and that would enable the lock to be installed without a sledgehammer.
·ESCO’s ‘conical series’ Sidewinder wear assembly and CQMS’s EZY-LOCK wear assembly were dragline wear assemblies that were common general knowledge in Australia at the priority date and both these wear assemblies had upper and lower front stabilizing surfaces that extend parallel to the longitudinal axis.
·The easiest way to have implemented the concepts taught in D13 would have been to adapt the EZY-LOCK wear assembly because it was proven system that had a hammerless lock.
Even if I accept Mr Leslie’s assertion that there was a strong drive to move away from using locking mechanisms that required a sledgehammer and that wear assemblies that used substantially parallel stabilizing surfaces such as EZY-LOCK and Sidewinder were well known in the art, in my view that does not necessarily lead to the conclusion that the skilled addressee would have employed such parallel surfaces in the teachings of D13.
It is clear that the invention of D13 has been developed in the context of a wedge system in which the tooth is wedged onto the nose. In such a wedge system the contact surfaces need to be angled to the longitudinal axis and as noted earlier D13 even mentions a nose angle of around 40°. There is absolutely no teaching or suggestion in D13 of making the stabilizing surfaces substantially parallel to the longitudinal axis. While both the EZY-LOCK and the Sidewinder wear assemblies do have front stabilizing surfaces that are substantially parallel to the longitudinal axis, they are clearly not wedge systems. While Mr Leslie is of the view that it would have been obvious for him to adapt the parallel stabilizing surfaces of EZY-LOCK while implementing the teachings of D13, I remain unconvinced. Clearly his view has been given with the benefit of hindsight having knowledge of the claimed invention. While Mr Leslie states that his views would be the same regardless of whether he had been aware of the claimed invention or not, I cannot be practically certain that is what the skilled person would have done in the absence of hindsight. I am not satisfied that it would have been obvious to make the stabilizing surfaces of the embodiment of figure 9 of D13 substantially parallel to the longitudinal axis.
Even if I am wrong on this point, there is no evidence from Caterpillar that establishes that it would also have been obvious to make the lower stabilizing surface extend substantially from one side of the socket to the other.
Claim 1 dose not lack an inventive step over D13. Caterpillar did not press this document against the other independent claims 6 and 7 and I am satisfied that these independent claims are also inventive.
GB 1263030 (D11A)
The applicant of this document is the same as that of D13 and the disclosure of this document is also very similar to that of D13 with Caterpillar relying on the embodiment of figure 7 that is shown below:
As the submissions from Caterpillar are similar to those for D13, my findings in relation to D13 apply equally to the disclosure of D11A. The claimed invention is inventive over D11A.
MANNER OF MANUFACTURE
Caterpillar submitted that claims 4, 6 and 8 are not a manner of manufacture as they are for a mere collocation of separate parts. They submitted that while each of these claims recites certain combination of features relating to the stabilizing surfaces and certain combination of features relating to the lock, there is no working interrelationship between the stabilizing surfaces and lock as these claims “do not, in any way, tie together the function of the lock with the stabilizing surfaces” and “merely collocate two alleged inventions that are completely independent of each other”.
They further argued that the concepts of providing a transverse angle for front and rear stabilizing surfaces that are parallel to the longitudinal axis and providing a lock that is secured in the through hole of the wear member in the release position are known from one or more of the prior art they rely on and all that “the patent applicant has done is taken a known or obvious wear assembly (ie a wear assembly having the claimed configuration of stabilizing surfaces that are substantially parallel the longitudinal axis), and swapped the lock of that wear assembly with another lock design, which is a known lock design, and which does not functionally interrelate with the stabilizing surfaces”.
The issue of collocation was considered by the Full Federal Court in Smith & Nephew Pty Ltd v Wake Forest University Health Science [2009] FCAFC 142 (Smith & Nephew):
“A mere collocation of parts, each performing its own separate function, is not patentable”.
At [21], the Court in Smith & Nephew referred to Dixon J in Palmer v Dunlop Perdriau
Rubber Co Ltd (1937) 59 CLR 30 (Palmer):
“His Honour said (at 73):
… the characteristic which a combination of known integers must possess in order to afford subject matter is mutual relation in the operation of such integers. Separate elements may be brought together and yet each may continue to operate as it did before. In other words, all that the patentee may have done is assemble together things or ideas which apart from sequence, order, position and proximity of association continue to perform their known functions as before. He may in such a case have produced a more convenient and a better appliance or process but he has contributed nothing in doing so which amounts to invention”.
Based on this precedent it was then stated in Smith & Nephew at [24]:
“Thus, for the claim of a combination patent to remain valid, the integers must interact to bring about the desired result”.
Similarly, at [33] it was stated that:
“…it must interact purposefully and functionally with the other integers to produce the [result]”.
Each of the claims that is opposed under this ground is directed to a wear member for attachment to excavating equipment and then defines certain features relating to the geometry of stabilizing surfaces in the socket of the wear member and also certain features relating to a lock member that is secured in a through-hole that communicates with the socket. While these claims do not explicitly define the working interrelationship between the stabilizing surfaces and the lock, that does not necessarily lead to the conclusion that it is a mere collocation of parts, each performing its own function. Clearly the through hole communicating with the socket and the lock secured therein for movement between hold and release positions is provided for the purpose of securing the wear member on the base during digging operations and in that respect clearly contributes to the functioning of the wear member. Similarly the geometry of the stabilizing surfaces provides for more stable support of the wear member on the nose with greater resistance to rolling off the nose. This in turn reduces the load on the lock and enables the use of a smaller lock that can be installed without the use of sledgehammers. Clearly there is a functional relationship between the features of the stabilizing surfaces and those of the lock and they all contribute to the stable retention of the wear member on the base. The fact that each of the aspects of the geometry of the stabilizing surfaces and the lock may be known from one or more of the prior art does not affect this functional relationship or their contribution to the stable retention.
In my view, these claims are not to a mere collocation of parts as submitted by Caterpillar. This ground of opposition fails.
UTILITY
In Ranbaxy Australia Pty Ltd (ACN 110 781 826) v Warner-Lambert Company LLC [2008] FCAFC 82, the full Federal Court stated at [141]:
Under ss 138 and 18(1)(c) of the 1990 Act, it is a ground of invalidity if the claimed invention is not useful "so far as claimed in any claim". If the claimed invention does what it is intended by the patentee to do and the end obtained is itself useful, the invention is useful within the meaning of s 18(1)(c) (see Rehm Pty Limited v Webster’s Security Systems (International) Pty Limited (1981) 81 ALR 79 at 96; Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110 at 144; and Fawcett v Homan (1896) 13 RPC 398 at 405). As to the first aspect, the invention as claimed must attain the result promised by the patentee (Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Limited [1998] HCA 19; (1998) 194 CLR 171 at 187).
Caterpillar submitted that “to apply a consistent approach with the Court in Ronneby Road, the Patent Office must find that claims 1-5 lack utility”.
ESCO submitted that it has sought leave to appeal the Ronneby Road decision to the Full Federal Court and on that basis it is appropriate that I defer any decision in relation to utility until the decision of the Full Court is handed down.
Counsel for ESCO also submitted that Federal Court erred in concluding that paragraph 6 contains cumulative promises and that when, properly construed, paragraph 6 of both applications does not contain any such cumulative promises or any promises at all and that rather it is a statement of hope or expectation.
Alternately, Counsel also submitted that the Federal Court erred in concluding that where a specification lists a number of promises, it is necessary for all of the promises to be attained when attainment of any one of the stated advantages of paragraph 6 is sufficient to satisfy the test for utility.
Counsel further submitted that in Ronneby Road, the Federal Court relied on expert evidence as to whether something falling within the scope of the claims would achieve each of the six promises whereas in the present case no similar evidence has been filed by the opponent and hence I am not bound by the Ronneby Road decision insofar as it concerns a finding based on evidence.
When Caterpillar amended the SOGAP after the Ronneby Road decision was issued to include lack of utility as a new ground of opposition, the Commissioner offered to defer the hearing pending the decision of the Full Federal Court, however neither party wanted to defer the hearing, which then went ahead as scheduled. Having then heard the matter, I am of the view that any decision should be a complete decision covering all grounds rather than a partial decision that defers any findings on the ground of lack of utility. It is always open to the parties to appeal my findings on utility to the Federal Court. My decision therefore includes a finding on the ground of utility.
In SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8, the delegate was faced with a similar situation in that there was an earlier Federal Court decision where certain findings of fact had been made. The delegate stated at paragraph [52]:
I consider that I should start with the findings of fact made in the Federal Court decision, and then ask whether there is any evidence that contradicts those findings of fact. Where there is contradictory evidence I will need to decide how much weight to give to each. Further, to the extent that the present opposition raises a ground not considered in the Federal Court decision (that is, lack of inventive step), the evidence filed in the present opposition will assume greater significance.
I will adopt a similar approach in the present case.
As noted earlier the present application is a divisional grandchild of AU2011201135 which was the subject of the Ronneby Road decision. As is common with most divisional applications, the description of the present application appears to be identical to that of the grandparent application. Paragraphs 5 and 6 of both applications where the promise of the invention can be found read as follows:
[05] Such wear members are commonly subjected to harsh conditions and heavy loading. Accordingly, the wear members wear out over a period of time and need to be replaced. Many designs have been developed in an effort to enhance the strength, stability, durability, penetration, safety, and/or ease of replacement of such wear members with varying degrees of success.
[06] The present invention pertains to an improved wear assembly for securing wear members to excavating equipment for enhanced stability, strength, durability, penetration, safety, and ease of replacement.

100. In Ronneby Road, the Federal Court agreed with the applicant in those proceedings that the six named advantages of enhanced stability, strength, durability, penetration, safety, and ease of replacement are expressed cumulatively and that the relevant promise of the specification was that they were all delivered by the invention in so far as claimed in every claim. It also relied on a joint report from the experts to identify which of these six advantages were achieved by each of the claims and based on that joint report found that all of the claims of that application lacked utility as not all of the stated advantages were achieved by each of these claims.
101. Given the substantial identity of the specifications of the present application and that of the grandparent application, including the statements of the promised benefits of the invention in paragraphs 5 and 6, I can see no reason to not adopt the findings of Federal Court in relation to the promise of the invention being the attainment of all of the six stated advantages in paragraph 6. While ESCO argued that that the relevant promise of the result to be achieved by the wear members are contained in paragraphs 8 and 9 of the present application, I disagree. These paragraphs relate to certain specific aspects of the invention rather than the promise or benefits of the invention. I therefore accept the Federal Court’s findings as to the promise of the invention.

102. Similarly I can find no basis to not follow a superior authority’s interpretation of the law that where the specification promises a number of cumulative benefits then every claim needs to achieve all of those promised benefits. While it is possible that this interpretation of the law could be overturned by the Full Court on appeal, the law as it stands now is clear and should be applied.
103. However I do accept that as the claims of the present application are substantially different to those of the grandparent application, it does not necessarily follow that all of the claims of the present application are also lacking in utility. I need to assess whether each of the claims of the present application attains all of the six promised benefits. Whilst I do not have the benefit of expert evidence from either party in this regard, I am entitled to rely on inferences that can be readily drawn from the expert evidence relied on by the Federal Court in relation to this ground in Ronneby Road.
104. Claim 1 is the only independent claim that is submitted by Caterpillar to lack utility. This claim is limited to features relating to the geometry of the stabilizing surfaces and unlike the other independent claims does not include features relating to the integrally secured lock. Caterpillar argued that due to the lack of features relating to the integrally secured lock, claim 1 would not achieve the benefits of enhanced safety and ease of replacement and therefore this claim lacks utility.
105. Clearly I do not have expert evidence from Caterpillar in this regard. The claims in Ronneby Road were directed to the integrally secured lock and so the opinions provided by the experts in the joint report in relation to the benefits achieved by each of those claims are clearly of very limited relevance to claim 1 of the present application which is all about the geometry of the stabilizing surfaces.
106. While the opinion in the joint report in relation to the fourteen aspects of the invention indicated that the first seven aspects relating to the geometry of the stabilizing surfaces were stated to have benefits related to strength, stability, penetration and durability and further concluded that “All of the aspects of the invention would need to be combined together ... to allow all of the advantages of the invention described in paragraph [6] of the Patent Application to be obtained.”, clearly claim 1 of the present application is worded quite differently to any of those seven aspects referred to in that joint report.
107. Claim 1 requires that each of the first and second stabilizing surfaces axially extend at an angle of no more than about seven degrees to the longitudinal axis. ESCO submitted that this feature provides for ease of replacement of the wear member and referred me to paragraph [55] of the specification where it states as follows:
The term "substantially parallel" is intended to include parallel surfaces as well as surfaces that diverge rearwardly from axis 26 at a small angle (e.g., of about 1-7 degrees) for manufacturing or other purposes. A small divergence may also ease removal of the wear member from the nose. (my underlining)

108. Clearly there is a specific reference to the small angle of the stabilizing surfaces contributing to ease of removal of the wear member. As noted by the Federal Court at paragraph [71] in Ronneby Road, even a ‘minor advantage’ is enough to satisfy the requirement for utility. I am therefore satisfied that claim 1 also provides the benefit of ease of replacement.
109. In relation to enhanced safety, ESCO argued that there is clear reference in the specification to the geometry of the stabilizing surfaces providing this benefit and referred me to paragraph [71] of the specification which reads as follows:
[71] The engagement of stabilizing surfaces 40, 70 provides more stable support for the point as compared to the use of conventional converging surfaces, with less reliance on the lock. For instance, if load LI is applied to a tooth with a nose and socket defined by converging top and bottom walls without stabilizing surfaces 40, 70, the urge to roll the wear member off the nose is resisted in part by the abutting of converging walls at the rear ends of the nose and socket. Since these converging walls are axially inclined to the longitudinal axis, their abutment with each other urges the point in a forward direction, which must be resisted by the lock. Accordingly, in such known constructions, a larger lock is needed to hold the point to the nose. A larger lock, in turn, requires larger openings in the nose and point, thus, reducing the overall strength of the assembly. In the present invention, stabilizing surfaces 40, 70 (in conjunction with stabilizing surfaces 24, 54) are substantially parallel to longitudinal axis 26 to minimize forward urging of wear member 12. As a result, the wear member is stably supported on the nose to increase the strength and stability of the assembly, reduce wear, and enable the use of smaller locks. (my underlining)

110. Clearly there is a specific disclosure in this paragraph to the substantial parallelism of the stabilizing surface to the longitudinal axis contributing to the resistance to rolling off of the wear member from the nose and this in turn permitting the use of smaller locks. The use of smaller locks would avoid the need for the use of a sledgehammer to insert the lock and thereby improve the safety of the operator during installation and removal of the wear member. I am satisfied that the feature of the stabilizing surfaces extending at an angle of no more than about seven degrees is highly likely to lead to the benefit of enhanced safety.
111. I have been provided with no evidence or submissions from Caterpillar to satisfy me that the benefits of strength, stability, penetration and durability would not be achieved with the invention of claim 1.
112. The evidence does not establish to the level of practical certainty that all of the six stated benefits of paragraph [006] would not be achieved by the invention of claim 1. Claim 1 and its dependent claims do not therefore lack utility.
FAIR BASIS
113. Subsection 40(3) requires that the claim or claims in a patent specification be fairly based on the matter described in the specification. As the test for fair basis, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274 (Lockwood) at [69] approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
“... the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”

114. The High Court in Lockwood also provided the following principles:
·“the requirement in s 40(3) that the claims be fairly based on the matter described in the specification is a requirement that they be fairly based on the matter in it that discusses the “invention” (an expression which includes the “alleged invention”)”. (Lockwood at [53])

·“Even if s 40(3) did not impliedly refer to an invention, the language points to a comparison between the claims and what is described in the specification only, and again it does not call for any inquiry into an ‘‘inventive step’’, or inventive “merit” or a “technical contribution to the art”. (Lockwood at [54])

·“It is wrong to seek to isolate in the body of the specification ‘‘essential integers’’ or ‘‘essential features’’ of an alleged invention and to ask whether they correspond with the essential integers of the claim in question” (Lockwood at [68])

Claims 4, 6 and 8
115. Caterpillar submitted that claims 4, 6 and 8 are not fairly based because these claims define features of the geometry of the stabilizing surfaces and of the lock and there is no real and reasonably clear disclosure in the body of the specification that an invention lies in the combination of the features of the lock and the geometry of the stabilizing surfaces. In particular they highlighted that there is no consistory statement or any other statement in the specification that there may an invention in such a combination.
116. It is true that there is no consistory statement that mirrors these claims. But that does not mean these claims are not fairly based. The authorities have clearly held that there is no requirement for a consistory clause and even if there is one, it is considered in light of the rest of the specification to determine what is the invention. The specification clearly describes two broad aspects to the invention, one being the geometry of the stabilizing surfaces and the other being the arrangement of the lock. It is also clear from the specification that both these aspects relate to the wear member and contribute to the secure retention of the wear member on the nose. So I fail to see why the lack of any specific statement in the specification that identifies this combination as ‘an invention’ should make such a combination in the claims not fairly based. I am satisfied that there is real and reasonably clear disclosure of this combination and these claims are fairly based.
Claims 6 and 8
117. Caterpillar submitted that the definition in claim 6 that “a plurality of the …rear stabilizing surfaces being transversely inclined to resist both vertical and side loading” covers a situation in which there exists rear stabilizing surfaces that are axially extending at an angle of no more than about seven degrees to the longitudinal axis, but which are not transversely inclined and such a situation travels beyond the matter disclosed in the specification and is therefore not fairly based. A similar reasoning was also submitted for claim 8.
118. I disagree. Clearly there is a real and reasonably clear disclosure of two (plurality) rear stabilizing surfaces being transversely inclined and as argued by ESCO there is nothing in the specification that would suggest that more than two rear stabilizing surfaces would not work or was not contemplated.
119. Claims 6 and 8 are fairly based.
Claim 8
120. Caterpillar submitted that claim 8 is not fairly based as it states that the rear stabilizing surfaces axially extend at an angle of no more than five degrees in the longitudinal axis as the only reference to five degrees in the body of the specification is in relation to the front stabilizing surfaces.
121. Again I disagree. While paragraph [55] relied on by Caterpillar may mention surfaces 22, 24 that correspond to the front stabilizing surfaces, it is clear from reading the specification as a whole, that the rear stabilizing surfaces are also ‘substantially parallel’ and the definition of this term provided in paragraph [55] is intended to cover both front and rear stabilizing surfaces. In any event, as argued by ESCO the angle of five degrees is plainly within the seven degrees defined in claim 7.
122. Claim 8 is fairly based.
CONCLUSION
123. Claims 1, 2, 3 and 5 are not novel. None of the other grounds have been made out.
124. I allow the applicant two months from the date of this decision to propose amendments to overcome the adverse findings.
COSTS
125. Both parties claimed costs in the opposition. The opposition is successful in relation to the ground of novelty. I therefore award costs according to schedule 8 against ESCO.
R Subbarayan
Delegate of the Commissioner of Patents