Caterpillar Inc. v ESCO Corporation - [2016] APO 30

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Caterpillar Inc. v ESCO Corporation [2016] APO 30

Patent Application: 2012240099

Title:Hardfaced wearpart using brazing and associated method and assembly for manufacturing

Patent Applicant:                   ESCO Corporation
Opponent:  Caterpillar Inc.
Delegate:  R Subbarayan
Decision Date:  23 May 2016
Hearing Date:  8 March 2016, at Melbourne

Catchwords: PATENTS - section 59 – opposition to grant of patent – hardfaced wear part – claim construction – whether certain features are inessential - whether claims are clear and fairly based – whether claims are novel and inventive –whether claims are useful – whether claims are to a manner of manufacture – opposition successful – Claims 29, 30, 32 to 41 and 64 to 68 are not fairly based - Claims 64 and 66-68 are not novel - costs awarded

Representation: Patent applicant: Stephen Burley SC instructed by Stephen Worthley and Wayne McMaster of Minter Ellison
Opponent:Freehills Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012240099

Title:Hardfaced wearpart using brazing and associated method and assembly for manufacturing

Patent Applicant: ESCO Corporation
Date of Decision: 23 May 2016
DECISION
The opposition is successful. Claims 29, 30, 32 to 41 and 64 to 68 are not fairly based. Claims 64 and 66-68 are not novel over documents D6 and D8. I award costs according to Schedule 8 against the applicant ESCO Corporation.
REASONS FOR DECISION
BACKGROUND

Patent application 2012240099 in the name of ESCO Corporation (ESCO) was filed as a PCT application (PCT/US2012/032410) on 5 April 2012 and claims priority from a US priority application filed on 6 April 2011. Following examination it was accepted on 23 July 2014. The application has been opposed under section 59 of the Patents Act by Caterpillar Inc. (Caterpillar). After the filing of evidence in support, evidence in answer and evidence in reply, the matter was set for hearing on 8 March 2016. On 16 February 2016, Caterpillar advised that they would not have representation at the hearing and also did not intend to file any written submissions for the hearing. The hearing went ahead in Melbourne on 8 March 2016 with only the applicant appearing. ESCO made their submissions addressing the Statement of Grounds and Particulars and the evidence filed by Caterpillar. Hereinafter when I make reference to submissions from Caterpillar, I am referring to their written submissions included in their Statement of Grounds and Particulars and/or the evidence of their expert witness.
GROUNDS OF OPPOSITION
Caterpillar has opposed the grant of the patent on the grounds of Novelty, Inventive Step, Manner of Manufacture, Utility, Clarity and Fair Basis.
EVIDENCE
Evidence in support consists of:
- Declaration of Dr Catherine Hewett dated 16 April 2015 with exhibits CH-1 to CH-3 (Hewett #1)
- Declaration of Dr Catherine Hewett dated 12 May 2015 with exhibit CH-1. (Hewett #2)
Evidence in answer consists of:
- Declaration of Dr Paul Graeme Huggett dated 4 August 2015 with exhibits PGH-1 to PGH-2. (Huggett #1)
- Declaration of Dr Paul Graeme Huggett dated 11 August 2015 with exhibit PGH-3. (Huggett #2)
- Declaration of Dr Paul Graeme Huggett dated 13 August 2015. (Huggett# 3)
Evidence in reply consists of:
- Declaration of Dr Catherine Hewett dated 9 October 2015 with exhibits CH3-1 to CH3-3. (Hewett #3)
Dr Hewett is a materials scientist with considerable experience in the research and development of ceramic wear resistant coatings for different applications including mineral processing equipment and earth engaging equipment.
Dr Huggett is also a material scientist with considerable experience in the manufacturing and mining industries. Since December 1996, he has been operating his own consultancy providing specialist materials selection, wear management and product guidance to clients.
ONUS OF PROOF
The examination request for this patent application was filed on 1 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]).
SPECIFICATION
The opposed application relates to a wear part that is provided with a wear resistant hardfacing. Wear parts such as digging points for ground engaging machinery such as an excavator work in harsh environments and wear away in use and need to be replaced on a regular basis. One of the known ways of improving the wear resistance of the wear part is to provide a hardfacing on the surface of the wear part using infiltration brazing.
As background, the specification states that wear parts produced by infiltration brazing are disclosed in a number of patent specifications and that “the present invention seeks to overcome certain limitations of these devices and other existing devices”, but does not state what these limitations are.
Under the heading “Brief Summary”, the specification then states “Economical and effective hardfaced wearparts are provided, formed from a substrate, a thin shell, hard particles held within a cavity defined between the substrate and the shell, and infiltration brazing material that binds these elements into a composite wearpart. The thin metal shell is expendable, because it typically erodes quickly during use of these hardfaced wearparts. Methods for making such wearparts using infiltration brazing and expendable thin shells also are provided.”
The specification then provides a number of consistory clauses including ones which essentially mirror the wording of each of the independent claims. This is then followed by the description of certain preferred embodiments.
What is the invention?
The invention in its broadest form is stated to be “the use of a metal shell in forming a composite material or other wear resistant material on the surface of a substrate, such as a wearpart, using brazing and/or infiltration techniques, as well as articles formed using such techniques and methods and equipment incorporating such techniques”.
The specification describes a number of embodiments that use a metal shell to form a hardfacing on the wear part through infiltration brazing. One such embodiment of the invention is shown in figure 22 that is reproduced below:
This figure shows a substrate of a wear part 312 in the form of a mining point that is to be hardfaced. An expendable metal shell 314 is attached to the substrate 312 by welding or brazing a conformal band 320 of the metal shell to the outer periphery of the substrate. The metal shell is shaped in a similar manner to the substrate but is spaced from the outer surface of the substrate so as to form a cavity 350 between the substrate and the shell. The shell also has a flared reservoir 318 to introduce hard particles and infiltrant brazing material into the cavity through an opening 317. In order to form a hardfacing on the substrate, hard particles 352 are first introduced into the cavity by pouring through the opening 317. An infiltrant brazing material 354 is then poured above the hard particles. The entire assembly is then placed in a furnace so as to heat the assembly to a temperature high enough to melt the infiltrant brazing material, whereby the molten brazing material then infiltrates the spaces between the hard particles. The temperature is then cooled to below the solidus temperature of the brazing material to allow the brazing material to solidify thereby forming a hard composite 324 that is permanently bonded to substrate 312 and to shell 314. The hardfaced point is then removed from the furnace. Reservoir 318 may be detached from the shell at this stage if required. The hardfaced point with the shell still covering the hardfacing is now ready for use in digging operations.
The expendable metal shell is typically formed of thin sheet metal so that it will quickly wear away during use exposing the hardfacing composite 324 to perform its wear resisting function. The use of thin sheet metal is also stated to provide other benefits such as the ability to easily form complex shapes from one or more parts, less expensive, easy to attach to the substrate by welding or brazing and the ability to penetrate the ground almost as well as a point without the shell.
Examples of hard particles are stated to be various carbides including tungsten carbide, chromium carbide, tungsten carbide and molybdenum carbide and mixtures thereof.
Examples of brazing material are stated to include pure metals such as copper or silver, various brazing alloys such as copper alloys and nickel alloys.
It is also clear from the consistory clauses that while the specification is primarily directed to the hardfaced wear part, an aspect of the invention also lies in the assembly comprising the wear part and the attached metal shell that is configured for forming a wear resistant coating on the surface of the wear part. This assembly is therefore an intermediate product comprising the wear part and the metal shell that forms a mould that can be filled with composite material for forming the hardfacing.
The specification ends with 69 claims including 8 independent claims, with independent claims 1, 12, 43 directed to a hardfaced wear part, independent claims 20, 52 directed to a method of making the hardfaced wear part and independent claims 29, 39 and 64 directed to an assembly that is configured for forming a wear resistant coating. The independent claims are reproduced below:
1. A wear part for earth engaging equipment comprising:
a substrate for attachment to the earth engaging equipment, the substrate having a surface;
a thin, expendable sheet metal shell connected to the substrate to define a cavity between the surface of the substrate and the shell; and
a composite material filling the cavity and forming a coating on at least a portion of the surface of the substrate, the composite material comprising a hard particulate material infiltrated with a metallic brazing material.
12. A hardfaced wearpart for abrasive applications comprising:
a tool to be attached to earth engaging equipment having a surface at a point of the tool and a bonding surface located proximate the surface;
a composite hardfacing material forming a coating on at least a portion of the suface, the composite hardfacing material comprising a hard particulate material infiltrated with a metallic brazing material, wherein the metallic brazing material is bonded to the surface to connect the composite hardfacing material to the tool; and
a sheet metal shell in contact with the composite material and surrounding the composite material, the shell having a conformal band in contact with the bonding surface of the tool, wherein the shell is connected to the tool by welding or brazing at least between the conformal band and the bonding surface,
wherein a cavity is defined between the surface of the substrate and the shell, and the composite hardfacing material fills the shell.
20. A method for making a wearpart for abrasive applications comprising:
providing a metal substrate having a surface;
connecting an expendable, thin sheet metal shell to the surface of the substrate to define a cavity between the shell and the surface;
placing a hard particulate material within the cavity, in close proximity to the surface;
placing a metallic brazing material in communication with the cavity;
heating the brazing material to a temperature above a melting point of the brazing material and holding the temperature for a time sufficient for the brazing material to infiltrate the particulate material in molten form and contact the surface of the substrate;and
cooling the brazing material to solidify the brazing material and form a wear resistant composite coating on the surface of the substrate.
29. An assembly to engage the ground during operation of ground engaging machinery
comprising:
a tool to be attached to the ground engaging machinery having a surface; and
a sheet metal shell connected to the tool and having a conformal band conforming to at least a portion of the surface to define a cavity between the surface and the shell, the shell further having an opening to an exterior of the shell,
wherein the shell is connected to the tool by welding or brazing the conformal band to the at least a portion of the surface.
39. An assembly to engage the ground during operation of earth engaging equipment
comprising:
a tool to be attached to the earth engaging equipment having a surface;
a sheet metal shell covering at least a portion of the surface and defining a cavity between the shell and the surface, the shell further having an opening to an exterior of the shell; and
a plurality of spacers engaging the tool and the shell and separating the tool from the shell.
43. A wear part for earth engaging equipment comprising:
a substrate adapted to secure to earth engaging equipment, the substrate having an outer operating surface to engage the ground during operation of the earth engaging equipment, the outer operating surface including a covered surface;
a thin, expendable sheet metal shell connected to the substrate to define a cavity between the covered surface of the substrate and the shell; and
a composite material filling the cavity and forming a coating on at least a portion of the covered surface of the substrate, the composite material comprising a hard particulate material infiltrated with a metallic brazing material.
52. A method for making a wearpart for earth engaging equipment comprising:
connecting a metal shell to a surface of a substrate to define a cavity between the shell and the surface;
placing a hard material within the cavity;
placing a metallic brazing material in communication with the cavity;
heating the brazing material to a temperature above a melting point of the brazing material and holding the temperature for a time sufficient for the brazing material to contact the hard material and the surface of the substrate in molten form; and
cooling the brazing material to solidify the brazing material and bond the hard material to the surface of the substrate.
64. An assembly for abrasive applications comprising:
a substrate to be attached to earth engaging equipment having a surface; and
a metal shell connected to the substrate to define a cavity between the surface and the shell, the shell further having an opening to an exterior of the shell.
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".
I will now construe the following terms that are present in the claims.
Shell
Neither party made any submissions in relation to the meaning of this term. While this term has a number of meanings, in my view the plain meaning of this term in the context of the invention is “an enclosing case or cover suggesting a shell” (The Macquarie Dictionary). In light of this definition, it is clear that the shell defined in the claims is a case or cover that has to enclose or surround at least a part of the substrate or tool.
Sheet metal
Dr Hewett states “Sheet metal is metal formed by an industrial process into thin, flat pieces. It can be cut and bent into a variety of shapes. It is usually thinner than 6mm thick. If it is thicker than this, then it is called plate. (Hewett #2 at 1.11)
Dr Huggett states “Typically sheet metal ranges from 1mm up to 3mm in thickness, or potentially up to 6 mm in thickness. Beyond this thickness, the material would be referred to as “plate metal”.” (Huggett #2 at 2.12)
It is clear that the experts generally agree that metal that is formed into thin sheets having a thickness of up to 6mm can be classified as sheet metal.
Expendable
The Macquarie Dictionary defines this term as follows
1. capable of being expended.
2. (of an item of equipment or supply) normally consumed in use.
3. (of personnel, equipment, etc.) capable of being sacrificed to achieve an objective.
In my view the meaning given in (2) should be ascribed to this term where it appears in the claims. This meaning is also fully consistent with the opposed specification where it states “The shell is expendable, performing no structural function in the finished product and usually wearing away quickly during use of the resulting hardfaced wearpart”.
Although Dr Hewett came up with slightly different interpretations for this term such as “of little significance to the overall function of the wear part or GET”, “not critical to the function of the final product” and “forms no role in the function of the finished product” (Hewett #2 at 1.16 to 1.18), I see no reason to depart from the plain meaning of this term that I have mentioned. I note that this plain meaning is also consistent with Dr Huggett’s interpretation of “consumed quickly during the use of the final product through either wearing away or tearing off” (Huggett #2 at 2.10).
Conformal band
This term appears in independent claims 12 and 29 and some of the dependent claims.
Dr Hewett states that this term refers to “a section of the shell, in this case a band, which conforms or fits exactly over part of the substrate” and that “fits and seals against the substrate so that the metallic brazing material doesn’t leak from the cavity during the brazing process”. (Hewett #2 at 1.50)
Dr Huggett states “A "conformal band" would be a part of a product that conforms to the profile of the substrate. The term "band" means that this part of the product essentially forms most or all of a loop to conform to the circumference or external shape of the substrate.” (Huggett #2 at 2.13)
It is clear that both experts agree that the term refers to a section of the shell that conforms to the profile of the substrate and I accept this. As I have construed the term “shell” as referring to a case or cover that surrounds a portion of the substrate, I agree with Dr Huggett that the band would need to substantially encircle or surround that portion of the substrate that it conforms to. Furthermore the term “band” requires that this section of the shell is in the form of a thin flat strip in line with its dictionary meaning of “a thin, flat strip of some material for binding, confining, reinforcing, trimming, or some other purpose” (Macquarie Dictionary).
I therefore interpret the term “conformal band” to mean a thin, flat strip of the shell that surrounds and conforms to the profile of a portion of the substrate. This interpretation is also consistent with the body of the specification which shows the conformal band 20, 320 as an annular flat strip that conforms to and encircles a portion of the substrate.
Opening
Independent claims 29, 39 and 64 define the shell as having an “opening” to an exterior of the shell. I construe this definition as requiring that the shell has a hole or aperture passing through the shell and extending from the interior to the exterior of the shell.
Metal shell

Caterpillar has submitted as follows:
“The feature of the "sheet metal shell" as recited in independent claims 1, 12, 29, 39, and 43 (and corresponding dependent claims) and the feature of a "metal shell" as recited in claim 64 (and corresponding dependent claims) do not materially affect the way that the invention works.
Reference is made to at least paragraph (0083] on page 17 of the Opposed Application which states that:
"[t]he shell is expendable, performing no structural function in the finished product and usually wearing away quickly during use of the resulting hardfaced wearpart''.
The specification goes on to discuss that the shell is only relevant to the method of production. That is, the shell is only present as a vestige of the method, and provides no function that materially affects the way in which the product works.
Therefore, this feature is inessential and not relevant to the consideration of novelty.”
I find no merit in this argument. From my discussion under “What is the invention?” it is clear that the metal shell is critical to forming the hardfacing in that it forms the mould that holds the hard particles and the brazing material in place over the wear part while the brazing material is melted and infiltrates the hard particles. Whilst it is true that the metal shell is disclosed as being expendable in that it is meant to quickly wear away during use of the wear part, thereby exposing the hardfacing, that does not make it a non-essential feature of the invention. Each of the independent claims clearly define the metal shell as being connected to the substrate of the wear part and remains connected to the wear part even after forming the hardfacing composite. While it does not perform any structural function in the finished product, it certainly performs a significant role in acting as a mould in forming the hardfacing. It is an essential feature of each of the independent claims and should not be disregarded for consideration of novelty.
Sheet metal shell
Caterpillar has also submitted:
“The requirement that the metal shell is a "sheet metal shell" as recited in independent claims 1, 12, 20, 29, 39, 43, and 52 (and corresponding dependent claims) does not materially affect the way that the invention works.
Reference is made to at least paragraph (0080] spanning pages 16 and 17 of the
Opposed Application which states:
" ... the shell 14 may be made of a steel or other metallic plate having a thickness of approximately 0.25 inches, or may be cast, machined from bar stock, or formed in a different manner ... "
The specification discusses that the shell could be fabricated in a variety of different manners. The claims are generally directed to a product that has at least a wear part including a shell, or a method for making a wear part. Whether the shell is made from sheet metal, plate metal, cast, or machined from bar stock does not affect the way in which the alleged invention works. It is irrelevant to the product, assembly, or method of fabrication what the origin of the metal shell is, whether from sheet metal, plate metal, cast, or otherwise formed.
Therefore, this feature is inessential and not relevant to the consideration of novelty.”
Again I fail to find any merit in this submission. The fact that the specification states that the shell may be made of material other than sheet metal does not necessarily make sheet metal an inessential feature. Some of the preferred embodiments clearly use sheet metal and as submitted by ESCO the specification also sets out a number of advantages in using sheet metal including that sheet metal “may be formed easily, relatively inexpensively” and that “very little material is required to form an effective mould, even for relatively large substrates”. Clearly sheet metal is the preferred material and the applicant has chosen to make this an essential feature of the some of the claims. Sheet metal is an essential feature and should not be disregarded for consideration of novelty.
NOVELTY
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [147]). It is well settled that the general test for anticipation or want of novelty is the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd ([1977] HCA 19; 137 CLR 228 at [19]), and this test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co ([1990] FCA 40; 16 IPR 545 at [19]).
To meet this requirement, the prior art must contain “clear and unmistakable directions” to produce the invention as claimed (Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1 at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the claimed invention, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-486; 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
"Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure which involves a determination about whether a prior document has "planted the flag" as opposed to having provided merely "a signpost, however clear, upon the road" or, perhaps, something less that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step".
In relation to the specificity required in order for a prior art document to anticipate the claimed invention, the full court in AstraZeneca (supra) also quoted with approval the following quote from Gyles J in Apotex Pty Ltd and Another v Sanofi-Aventis and Another [2008] FCA 1194; (2008) 78 IPR 485:
"anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun".
At the hearing, ESCO submitted that it “does not press independent claims 52, or dependent claims 54, 56, 60-63 (when dependent on claim 52 or other noted dependent claims), in their current form. The Applicant also does not press independent claim 64, or dependent claims 65-69, in their current form. However, to avoid confusion, the Applicant does press dependent claims 67 and 68 when dependent on claim 65, and dependent claim 69 when dependent on either claim 67 or 68. The Applicant submits that, at least under those claim dependencies, the relevant claims define combinations of features which are novel and inventive over the cited prior art”. Accordingly Counsel for ESCO did not advance any submissions in relation to the claims they were not pressing.
The opponent relied on the following documents in support of their contention that the claimed invention is not novel.
D1: WO 2009/155655
This document relates to hardfacing of wear parts such as ground engaging tools. The method of forming the hardfacing includes providing an outer shell from a sacrificial material such as ceramic material. The substrate of the wear part is then located within the cavity of the shell. Constituents of a wear resistant alloy such as white iron are then provided around the substrate within the cavity. One of the constituents of the alloy is a primary binding constituent which has a lower melting point than the other constituent. The entire assembly is then placed in a furnace and heated to a temperature at which the primary binding constituent melts and mixes with the other alloy constituents. On cooling the assembly, the alloy solidifies and bonds to the substrate. Although not explicitly mentioned, it appears that the outer shell which is stated to be sacrificial would be removed.
Although the Statement of Grounds and Particulars states that D1 is novelty destroying of claims 1 to 38 and 43 to 69, Dr Hewett only states that D1 anticipates claims 64 and 65.
In my view claims 64 and 65 are clearly distinguished from D1. There is no clear teaching in D1 to connect the outer shell to the substrate. Although Dr Hewett states “I would expect that the step of locating the metal body portion within the outer shell would require some form of connection between the metal body portion and the outer shell. It is likely that a jig or spacers (described earlier in Sections 1.55 to 1.61) is used to form this connection between the components” (Hewett #2 at 2.11), I am not convinced. It could well be that the substrate is suspended within the cavity without the shell being connected to the substrate. Also the embodiment on page 7, lines 15 to 27 relied on by Dr Hewett uses a ceramic outer shell and not a metal shell.
The claimed invention is novel over D1.
D2: WO 2007/059568
This document relates to hardfacing of wear parts such as ground engaging tools (GET). The method of forming the hardfacing includes providing an outer shell mould made of steel and charging the cavity of the mould with matrix material. The substrate of the wear part is then arranged in the cavity and the entire assembly is then placed in a furnace and heated in an inert atmosphere whereby the matrix material melts, “fills the mould 26 and comes into intimate contact with the substrate 30 so as to fuse or partially fuse with the substrate 30”. On cooling the assembly, the matrix solidifies and bonds to the substrate. The mould is then removed and reused.
The matrix material can be chosen from a range of materials including iron, aluminium, nickel and titanium alloys and if required hard carbide or ceramic material can be substituted for a proportion of the matrix material to improve wear resistance.
Although Dr Huggett is of the view that the added hard carbide or ceramic material is not analogous to the hard particulate material of the claimed invention, as “the molten white iron alloy would be expected to dissolve a high percentage of this hard particulate material”, I can find nothing in the teaching of D2 to support this view. I find Dr Hewett’s discussion on the matrix materials of D2 and her view that hard carbide particles would not dissolve into the molten metal matrix at the lower end of the temperature range disclosed in D2 to be more persuasive. I am satisfied that D2 discloses the use of hard particulate material in a metallic matrix.
However there is no disclosure that the outer steel shell is connected to the substrate. Although Dr Hewett states that “during fabrication the substrate and the shell must be connected in order to form that cavity. One standard way would be to connect the shell and the substrate using a jig. Figure 6 illustrates that there is initially a cavity between substrate and shell” (Hewett #2 at 2.31), again I am not convinced. Dr Huggett who is the named as the inventor of D2 states that in use the substrate could be secured in place by simulating the mounting system used to mount the final GET to an excavator bucket, and positioning the mould underneath it. He further states that the GET was taken out of the mould after about an hour when it had cooled to about 1000°C and the mould could be reused after coating with a barrier coating. Furthermore the teaching to charge the matrix material into the mould and then arranging the substrate therein suggests that there is no attachment of the substrate to the mould. In my view, there is no clear and unmistakable direction in D2 to connect the outer shell to the substrate as required by each of the independent claims.
At least for this reason, the claimed invention is novel over D2.
D2 also does not disclose the following features of some of the other independent claims.
·The steel shell being formed from sheet metal.
·The outer steel shell which is removed after the moulding process being expendable in the manner that I have construed this term. As Dr Huggett notes “The mould 26 of D3 was simply not suitable for use as part of the final GET” (Huggett #2 at 3.4).
·The method of forming the hardfacing involving first placing the hard particulate material within the cavity, then placing the metallic brazing material in communication with the cavity and heating the brazing material to allow it to melt and infiltrate the particulate material.
D3: WO 02/13996
Both experts agree that the disclosure of D3 is very similar to that of D2 and Dr Huggett is again named as inventor. My findings in relation to D2 apply equally to D3.
D4: US 6571493
D4 relates to a cutting edge 10 for use in the blade of a construction machine and particularly in motor graders for scraping and removing ice and snow on the roads. To address the problem of chipping of the cutting edge and improved resistance to scratching wear, a hard member 1 is attached to the leading end of the cutting edge body 4. The hard member includes a protective member 2 made of steel and a hard material 3 that is disposed on the back of the protective member for improving wear resistance. The hard material comprises hard particulate material 5 and infiltrated metallic brazing material 6. This can be best seen in figure 1 that is reproduced below:
Although the protective member does not fully enclose or surround the substrate, it does act as a protective cover or case for at least two sides of the hard material. Caterpillar has also not refuted this. I am therefore satisfied that the protective member 2 falls within my interpretation of the term “shell” in paragraph 23.
One of the methods of forming the hard member comprises using a temporal container made of steel plate that temporarily encloses the peripheral faces of the resultant hard material except one side confronting the protective member. The hard particulate material is introduced into the cavity defined by the temporal container and then the brazing material is melted and injected into the hard particulate material and the mixture is allowed to solidify. After solidification, the temporal container is “got rid of”. The hard member is then attached to the edge body by welding. While Dr Hewett was of the view that this temporal container which is discarded after forming the hard member, is expendable as required by independent claims 1, 20 and 43, it is clear that the temporal container is never connected to the edge body 4 which constitutes the substrate. It is used to form the hard member separately which is then attached to the cutting edge body by welding or brazing. The feature of an expendable metal shell is not disclosed.
Caterpillar also relies on two other embodiments of D4 that are shown in figures 15(a), 15(b) and figure 15(c) respectively. These figures and the corresponding disclosure in the body of the specification are reproduced below:
As shown in FIG. 15(a), in this embodiment, a protective member 2C, which has been formed by bending a soft steel plate at an end to have a short leg portion 2a of which size corresponds to the thickness of the hard material 3 to be provided, is arc-welded to the front face of the leading end 4a of the edge body 4 through the short leg portion 2a, and a pocket having a specified width is formed in a widthwise direction. Then, the large diameter grains 5a and the small diameter grains 5b explained earlier are blended at a specified ratio and loaded into the pocket at high density. An appropriate amount of the metal 6 is then placed on the hard grains 5, the metal 6 being in the form of a bar and having a low melting point than that of the hard grains 5. Then, heat is applied from outside so that the low-melting metal 6 is melted, flowing into the pocket to infiltrate and solidify the loaded hard grains 5, thereby integrally combining the hard grains 5, the leading end 4a of the edge body 4 and the protective member 2C to form the cutting edge shown in FIG. 15(b).

According to the above process of forming the hard material 3 integrally with the edge body 4, the hard member 1 is formed at the leading end 4a of the edge body 4 simultaneously with the formation of the hard material 3. Therefore this process has advantage over the process in which the desired hard material is separately produced and then attached to the edge body, in terms of secure attachment of the hard material and elimination of secondary processing, which leads to cost reduction and rationalization.
Apart from the above process, there is another method as shown in FIG. 15(c) according to which a stepped portion 4d having a specified dimension is formed at the leading end portion 4a of the edge body 4 as a position where the hard member 1 is to be formed. Then, a soft steel plate, that is, a protective member 2D is provided in front of the stepped portion 4d with its proximal end joined to the edge body 4 by arc welding such that the protective member 2D sufficiently projects further than the leading end of the edge body 4. Thus, a pocket extending in a widthwise direction is made by the stepped portion 4d and the protective member 2D. Then, the cutting edge is inclined at an appropriate angle with the protective member 2D facing down and the blended hard particles similar to those of the foregoing embodiments are loaded into the pocket at high density. Then, the bar-like metal 6 having a specified amount and a lower melting point than that of the hard grains 5 is placed on the prolonged portion of the protective member 2D that extends from the pocket. The low-melting metal 6 is subsequently heated from outside and melted so as to flow into the pocket to infiltrate and solidify the loaded hard grains 5, thereby integrating the hard material 3 with the edge body 4 and the protective member 2D. After the solidification, the excessive end portion of the protective member is cut off so that the hard member 1 in which the hard material 3 is protected by the protective member 2D is integrally formed with the edge body 4 at the front side of the leading end of the edge body 4. The same effect as that of the foregoing embodiments can be obtained by the cutting edge having the hard member 1 thus formed.
Unlike the earlier embodiment, it is clear that the hardfacing in this embodiment is “directly attached on the leading end of the edge body”. The protective member which constitutes a metal shell is connected to the substrate 4 to define a pocket or cavity and the composite material comprising the hard particulate matter 5a, 5b and the metallic brazing material 6 fills this cavity and forms a coating on the substrate with the shell remaining in place as a protective member during use of the cutting edge. D4 also discloses the steel plate of the protective member is formed of soft steel and has a thickness of 3mm.
Caterpillar has submitted that as the thickness is only 3mm, it can be considered to be sheet metal. This has not been rebutted by Dr Huggett. I am satisfied that the metal shell of these embodiments in made of sheet metal.
Caterpillar has also submitted that as the shell is made of soft steel, it would quickly wear away in use and therefore could be considered to be expendable.
While I accept that a shell made of soft steel is likely to wear away if it is used in digging operations, there is no such disclosure to that effect in D4. In fact D4 teaches that the “protective member has impact resistance” and “protects the hard material so that the hard material will not be chipped if impact is exerted thereon”. If it were to wear away in use, it would be unable to perform this function. While D4 makes a reference to construction machines, it is clear that its teaching is primarily in relation to motor graders or snow ploughs used for scraping snow and in particular to providing some kind of a protective member for the hardfacing on the scraper blades of such graders. I am not satisfied that there is clear and unmistakeable directions in D4 that the sheet metal shell is expendable in the way I have interpreted this term.

Independent claims 29, 39 and 64 require that the shell has an opening to the exterior of the shell. While Caterpillar submitted that the gap between the edge body 4 and the protective member 2 is an opening to the exterior of the shell, I am not convinced. As discussed earlier under Claim Construction, this feature requires that the opening is provided in the shell extending from the interior to the exterior of the shell. Such an opening is not provided by the gap between the shell and the protective member. This feature is not disclosed.
Caterpillar submitted that that while a conformal band is not mentioned per se in D4, the short leg portion 2a of the embodiment of figures 15a, 15b could be considered as a conformal band and similarly in the embodiment of figure 15c, the portion of the protective member that extends over the surface of the substrate could be considered as a conformal band.
I am not satisfied that the short leg portion 2a in figures 15a, 15b could be considered as a flat strip of material that would constitute a band. In relation to the embodiment of figure 15c, while the portion of the shell 2D that contacts the edge body is in the form of a flat strip of material, unlike the embodiment of figures 15a, 15b, it does not enclose the substrate on at least two sides. The feature of a conformal band is not disclosed.
It is clear from the discussion above, that D4 does not disclose at least one feature of each of the independent claims. All of the claims are therefore novel.
D5: US 2603985
While the Statement of Grounds and Particulars states that this document is novelty destroying for claims 29 to 38 and 64 to 69, Dr Hewett has only made comments in relation to claims 64 to 68.
D5 relates to a method of repointing dipper teeth that are used in earth digging equipment. Figure 3 of D5 is reproduced below:
A worn out dipper tooth 2 is inserted into the cavity 5 of a moulded or cast wedge-shaped cap 4 and suspended therein. The space between the walls of the cavity and the worn tooth is then filled with molten zinc or similar metal 6. On cooling, the molten metal solidifies but does not weld itself to the tooth or to the walls of the cavity. The upper edges 8 of the cap are then welded 7 to the face of the tooth to securely fasten the cap to the tooth. The cap is made of the same material as the original tooth.
It is clear that the cap is not made of sheet metal as required by claim 29. Claim 29 and its dependent claims are therefore novel.
Claim 64 requires that the metal shell is connected to the substrate to define a cavity. In D4, the cavity is created by suspending the tooth in the cap. There is no disclosure of attaching the cap to the tooth at this stage. It is only after the cavity is filled with the metal that the cap is welded to the tooth. This is different to the requirement in claim 64. Claims 64 and its dependent claims are therefore novel.
D6: US 3168767
While the Statement of Grounds and Particulars states Caterpillar relies on this document as novelty destroying for claims 29 to 38 and 64 to 69, Dr Hewett has only made comments in relation to claims 29, 35 and 64 to 68.
D6 relates to a method of rebuilding worn tampers on compaction rollers that are used to pack road fill material. In use the tampers that project radially from a cylindrical drum get worn by the abrasive effect of the fill materials packed by the tampers and therefore need to be periodically rebuilt or recast. The method is best illustrated in figures 3-5 that are reproduced below:
A tamper ring 20 made from steel is disposed over the free end 15b of a worn tamper 15a with an inner wall 20b thereof in engagement with the tamper 15a. The tamper ring is then welded to the tamper. The annular flange 20d of the tamper ring is spaced from the free end of the tamper to thereby create a cavity 25 between the inner wall 20b of the tamper ring and the tamper 15b. A durable hardfacing material in a molten state is poured into the cavity and allowed to fill the cavity to the level of the annular flange 20d. On cooling, the hardfacing material hardens to form the rebuilt tamper.
As the tamper ring encloses a free end of the tamper, it can be considered as a shell. Dr Hewett accepts that there is no disclosure of the tamper ring being formed of sheet metal but states that the disclosure of a steel shell would encompass standard materials including sheet steel. I am not convinced. Both the outer wall 20a and inner wall 20b of the tamper ring are disclosed as having a frustoconical configuration and this can be seen in the above figures. As the wall 20a is clearly of varying thickness, I am not satisfied that it would be formed of sheet metal. The feature that the shell is made of sheet metal is not disclosed and therefore claim 29 and its dependent claims are novel.
In relation to claim 64, it is evident that the tamper ring when welded to the tamper forms an assembly that could be used for earth engaging applications in which a cavity is defined between the tamper ring and the tamper. Furthermore the upper end of the tamper ring defines an opening to the exterior of the shell. I am satisfied that all the features of claim 64 are disclosed which is therefore not novel.
As the tamper ring is welded to the tamper, claim 66 is also not novel.
In relation to the feature of the conformal band, the lower half of the tamper ring clearly surrounds and conforms to the free end of the tamper. While not of uniform thickness, I am satisfied that it is still a thin flat strip. Dr Huggett has not disputed this in his evidence. The feature of a conformal band is therefore disclosed. Claims 67 and 68 are therefore not novel.
Claim 69 requires that the assembly is configured for forming a wear resistant composite coating. While the cavity in D6 could be filled with hard particulate material, there is nothing to allow placing a metallic brazing material in communication with the cavity nor is there any teaching to heat the entire assembly. Dr Hewett has also not addressed this claim in her evidence. Claim 69 is novel.
D7: US 4529042
While the Statement of Grounds and Particulars states Caterpillar relies on this document as novelty destroying for claims 29 to 38 and 64 to 69, Dr Hewett has only made comments in relation to claims 29, 64 and 66 to 68.
This document relates to a hardfacing for a tillage tool in the form of an overcap. Figures 2, 4 and 5 of this document are reproduced below:
Overcap 20 comprising an overcap portion 22 and a leading edge lip 24 is fitted over the pointed end 18 of the tillage tool with the lip 24 overhanging the base plate 10 of the tillage tool. A gap formed between the side edge of the base plate 10 and the inner surface of the lip 24 is filled with weld metal 28. The overcap is an integrally cast element and is made of a high hardness metal alloy.
Clearly the overcap fits over the pointed end of the tool and covers the top and sides of the pointed end and in that respect could be considered to be a shell and the gap formed between the side edge of the base plate 10 and the inner surface of the lip 24 constitutes a cavity that is filled with weld metal. However the overcap is not formed of sheet metal. While Dr Hewett states that the weld is a conformal band, it is not a part of the overcap and does not constitute a “conformal band” in the manner that I have construed this term. Further there is no “opening” that passes through the overcap in the manner that I have construed this term. Claims 29, 64 and their dependent claims are therefore novel.
D8: US 5441121
Caterpillar has submitted that claims 64 and 66 to 68 lack novelty over document D8.
This document discloses earth boring drill bits that are assembled from two separately manufactured portions comprising a shell and a shank. Caterpillar has stated that they rely on the embodiments shown in figures 1, 2A, 2B, 4, 5, 6 and 8 and the corresponding description. Figures 2A, 5 and 8 are reproduced below:
The embodiment of figure 2 shows a drill bit in which one of the portions is a shank 12 for connection to a drill string and the other portion is a shell 14 on the external surface of which are mounted cutting elements. Shank 12 is received into the shell 14 and connected thereto by weld 37 about the circumference of the shank and shell. A plenum is formed between a radially inner surface of shell 14 and shank 12. The shell is provided with an opening into which a nozzle 44 can be inserted. Shell 14 is manufactured using tungsten carbide matrix powder and an infiltrant binding material. While this embodiment discloses a substrate and a shell connected to the substrate to define a cavity and the shell having an opening to the exterior of the shell, the shell is made of a composite material rather than a metal. Claims 64 and its dependent claims are therefore novel over this embodiment.
The embodiment of figures 5 and 8 shows a drill bit comprising a shank portion 70 for connection to a drill string and a shell 72 that is connected to the shank via a weld 74. Shell may be formed by infiltration moulding similar to shell 14 or may be machined from steel. An interior cavity 85 is formed between the shank and the shell. The shell has an opening defined by opposing edges 82, 84 that communicates with the interior cavity. Clearly the drill bit of this embodiment is an assembly for abrasive applications and has all the features of claim 64. Claim 64 is therefore not novel.
As can be seen from the figures, the upper portion of the shell is a fairly thin flat strip of the shell that surrounds the shank. In my view, this upper portion falls within my interpretation of the term “conformal band”. This conformal band is further connected to the shank by welding. The features of dependent claims 66, 67 and 68 are also disclosed and these claims are also therefore not novel.
INVENTIVE STEP
Under the provisions of subsections 7(2) and 7(3) of the Patents Act 1990, an invention is taken to involve an inventive step when compared with the prior art base unless it would have been obvious to a person skilled in the art. The invention must be obvious in the light of the common general knowledge as it existed in the patent area before the priority date, either on its own or together with information in a document, or combination of documents, that the person skilled in the art could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant and, where necessary, combined. Obvious means ‘very plain’ (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 72 IPR 447 at 461 [51] - [52]).
The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
"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."
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." (Alphapharm (supra) 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 Statement of Grounds and Particulars states that claims 1 to 69 lack an inventive step in light of the combination of any one of D1 to D4 with the common general knowledge, that claims 29 to 38 and 64 to 69 lack an inventive step in light of the combination of any one of D5 to D7 with the common general knowledge and that claims 64 to 69 lack an inventive step in light of the combination of D8 with the common general knowledge.
However Caterpillar has the onus to establish that the claims clearly lack an inventive step. In the absence of any submissions in relation to this ground I have only the evidence of Dr Hewett to rely on. While Dr Hewett has identified in her first declaration what she considers to be the common general knowledge in relation to hardfacing and the processes for applying hardfacing, her evidence does not address the issues of what is the problem that the claimed invention seeks to overcome, whether documents D1 to D8 would have been ascertained, understood and regarded as relevant and why the skilled addressee would have as a matter of routine combined the common general knowledge with any one or more of these documents to arrive at the claimed invention. Caterpillar has not satisfied this onus in relation to the requirements of section 7(3). Nevertheless I will briefly consider each of the documents in relation to lack of inventive step.
Ascertained, Understood and Regarded as Relevant
While ESCO submitted that “the opponent has not sufficiently established that patent documents could reasonably have been expected to be ascertained by the skilled person” and that “Dr Hewett’s evidence regarding patent searching is limited to searches conducted after an idea has already been conceived and to ensure that the idea was “new” for the purposes of obtaining funding”, I do not find these persuasive.
Hardfacing of wear parts appears to be a highly technical art that involves selection of the hardfacing method, choosing of materials for the hardfacing and the determination of the process parameters. It is quite distinct from sporting technology such as Rugby League or Australian Rules where the Full Court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; 67 IPR 488, found that a coach, referee, umpire or administrator would not have conducted a search in the United States Patent Office. I also note that ESCO’s expert Dr Huggett has not provided a contrary view on this. I am satisfied that the person skilled in the art would have searched patent documents. As each of documents D1 to D8 relate to hardfacing of wear parts used in earth engaging equipment I am satisfied that a diligent searcher would have ascertained these documents.
ESCO further submitted that “the Opponents have adduced no evidence as to the problem or long-felt need that the skilled person may have been addressing, and accordingly no evidence as to why they would have considered any particular document relevant to that problem or need. They have also submitted no evidence that any particular problem or long-felt need was commonly known. Accordingly, there is no basis on which to consider any piece of prior art information would be 'regarded as relevant' by the skilled person”.

100. Whilst it is true that expert evidence may assist in identifying the problem that the claimed invention seeks to overcome, the problem can often be deduced from the specification itself without resort to expert evidence.
101. As I noted earlier, while the specification states that wear parts produced by infiltration brazing are disclosed in a number of patent specifications and that “the present invention seeks to overcome certain limitations of these devices and other existing devices”, it does not state what these limitations are.
102. In my view, the problem to be addressed can be therefore broadly stated as to provide improved methods for hardfacing wear parts by infiltration brazing. Dr Hewett has stated that there were a range of well-known techniques that could be used to apply hardfacing to a Ground Engaging Tool (GET) and that one such technique was through infiltration brazing. This is also quite clear from the prior art documents that I have discussed earlier. I am therefore satisfied that the problem that I have identified is part of the common general knowledge or prior art information in line with the requirements set out by the Full Court in AstraZeneca (supra).
103. It is clear from my discussion under Novelty that each of the documents D1 to D8 relate to hardfacing of wear parts using infiltration brazing. Hence I am satisfied that each of these documents would be regarded as relevant to solving the stated problem.
D2: WO 2007/059568 and D3: WO 02/13996
104. There is no clear disclosure in these two documents to connect the shell to the substrate. Dr Huggett who is the inventor of these inventions states, in use the substrate “could be secured in place by simulating the mounting system used to mount the final GET to an excavator bucket, and positioning the mould underneath it” (Huggett #1 at 4.9) and that “as a practical matter there was no connection (at least when developing D2). Connecting these components might have caused problems with removal of the mould” (Huggett #3 at 2.5). While I accept that it is possible to connect the shell to the substrate as noted by Dr Hewett, in my view her evidence falls well short of establishing that the person skilled in the art would have as a matter of routine utilised such a connection. The claimed invention is inventive over D2 and D3.
D1: WO 2009/155655
105. The evidence from Dr Hewett is only in relation to the novelty of claims 64 and 65. I have already found that there is no teaching to connect the outer shell to the substrate and to form the shell from metal. The evidence of Dr Huggett in relation to D2 and D3 indicates that it is indeed possible to locate the substrate within the shell without the shell and the substrate having to be connected to each other. Dr Hewett in her evidence does not discuss why it would have been a matter of routine to replace the ceramic shell with a metal shell. In my view, the evidence does not establish that the claim 64 is obvious in light of D1.
D4: US 6571493
106. Dr Hewett’s evidence in relation to lack of inventive step over D4 only discusses the use of a reservoir and the construction of the shell. It does not address the features that I have found are not disclosed in D4 such as the expendable shell, the opening in the shell and the conformal band. I cannot therefore be clearly satisfied that the invention defined in any of the independent claims lacks an inventive step over D4.
D5: US 2603985

107. Dr Hewett does not discuss D5 in her evidence in relation to lack of inventive step. Consequently there is no evidence that clearly establishes that it would have been obvious to connect the cap to the tooth before the cavity is filled with molten metal. Claim 64 is not obvious in light of D5.
D6: US 3168767
108. I have already found that claims 64 and 66-68 are not novel over D6 and that D6 is a document that would have been ascertained, understood and regarded as relevant. Therefore I am satisfied that these claims also lack an inventive step.
109. Dr Hewett’s evidence in relation to lack of inventive step over D6 only discusses the use of sheet metal to form the tamper ring as defined in claim 65. While she states that she would consider using sheet metal as a standard approach when looking to form a component such as the tamper ring, she fails to explain why she would consider the use of sheet metal when the teaching in D6 is to form the tamper ring with a tapered wall so that it is self-adjusting. In my view the use of sheet metal would not allow the taper ring to be formed with such a tapered wall. Claim 65 is not obvious.
110. There is no evidence from Dr Hewett in relation to lack of inventive step of claim 69. I am not satisfied that Caterpillar has established that this claim lacks an inventive step.
D7: US 4529042
111. There is no evidence from Dr Hewett in relation to lack of inventive step based on this document. In the absence of such evidence I am not satisfied that the person skilled in the art would have as a matter of routine included in the teachings of this document the missing features of independent claims 29 and 64. The claimed inventive is not obvious over D7.
D8: US 5441121
I have already found that claims 64 and 66-68 are not novel over D8 and that D8 is a document that would have been ascertained, understood and regarded as relevant. Therefore I am satisfied that these claims also lack an inventive step.
There is no evidence from Dr Hewett in relation to lack of inventive step of claims 65 and 69. I am not satisfied that the Caterpillar has established that these claims lack an inventive step.
CLARITY
112. Caterpillar has submitted that claims 1 to 11, 20 to 28 and 43 to 51 lack clarity as the term "thin" as an adjective to describe the metal shell is a relative term that has no meaning within the context of the claims.
113. While I accept that the term “thin” is a relative term, that does not in itself make the term unclear. What is important is whether the skilled addressee can understand the scope of this term in the context of the claimed invention. As discussed earlier, sheet metal is metal that is formed into thin sheets having a thickness of up to 6mm. Neither of the experts has expressed any difficulty in understanding this term in the context of sheet metal. This term is clear.
114. Caterpillar has submitted claims 1 to 11, 29, 31 and 40 to 51 lack clarity “as the term "cavity" within the context of the claims is unclear. These claims are product claims that define a wear part that has a "cavity between the surface of the substrate and the shell". The claims later define "a composite material filling the cavity". Thus, the claims define two features which are in contradiction. If the cavity is filled, then the product or assembly has no cavity. Thus, it is unclear whether the product or assembly includes or does not include a cavity”.
115. I can find no clarity issue with the use of this term when the claim is read in a commonsense way. Clearly there is a cavity initially formed between the surface of the substrate and the metal shell, which cavity is then subsequently filled with composite material to form the hardfacing.
116. Similarly in relation to claim 12, I can find no clarity issues with the definition that the composite material fills the shell. The skilled addressee would readily understand that filling the shell is a reference to filling the cavity.
117. Caterpillar has submitted that claims 43 to 51 lack clarity and/or are not fairly based on the specification as these claims define a substrate having an outer operating surface to engage the ground during operation of the earth engaging equipment, but then later define a thin, expendable sheet metal shell and a coating over the covered surface and thus it is not clear how the outer operating surface can engage the ground if covered by a coating and/or a sheet metal shell. Alternatively, the claims lack fair basis if a non-coated or shell-external portion of the substrate surface engages the ground during operation.
118. Any earth engaging tool will have a surface that normally engages the ground. The present invention provides a hardfacing for this surface to prolong the life of the tool and the process of providing the hardfacing involves the use of an expendable sheet metal shell to define a cavity which is filled with the hardfacing materials. So while the original ground engaging surface is covered by the hardfacing, I do not see any clarity or fair basis issue in defining this original surface as a ground engaging surface.
119. Caterpillar has also submitted that claims 1-12 and 43-51 lack clarity as it is not clear whether these claims are product claims per se, or product-by-process claims. As the applicant submitted, regardless of the classification of these claims as product or product-by-process claims, the scope of these claims is clear.
120. Caterpillar has submitted that claim 6 lacks clarity as there is no antecedent for the term “the conformal band” when appended to claims 1-4. ESCO conceded that there is an error and that they are prepared to amend the claim to depend on claim 5 where the feature of the conformal band is first defined.
121. While I accept that there is an error in the dependency, in my view the error and its correction would be clear to the skilled addressee. This claim does not suffer from any serious lack of clarity.
122. Caterpillar has submitted that claims 29, 30, 64 and 69 lack clarity and the scope of these claims cannot be readily determined because while they are directed to an assembly that is used to engage the ground during operation of ground engaging machinery, in reality they appear to relate to a precursor or intermediate formation of this assembly which is not suitable for ground engaging operations.
123. ESCO accepted that these claims are directed to an intermediate assembly in the formation of the hardfacing and that the scope of these claims can be readily determined.
124. On the face of it, each of these claims are clear as they define an assembly having a tool/substrate and metal shell connected to the tool/substrate and which is capable of being used in ground engaging operations. The scope of each of these features and their working relationship is clear. As such no clarity issues arise.
125. However when these claims are read in the context of the specification as a whole and in particular to the consistory statements in paragraphs [0028], [0029], [0034] and [0035], it becomes apparent that each of these claims is in fact directed to an intermediate assembly or precursor that acts as a mould for forming the hardfacing and not to the final product that is used in earth engaging operations. The consistory statements in paragraphs [0028], [0029], [0034] and [0035] suggest that it may well be that the phrase “to engage the ground” should qualify the term “tool” rather than the term “assembly”. However the authorities have made it clear that while the specification must be read as a whole it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Any inconsistency between the scope of the plain meaning of the claim and the body of the specification is a matter of fair basis rather than clarity.
126. It has also been submitted that the term “reservoir” in claims 32, 33 and 45 lacks clarity and/or fair basis as there is no indication as to what the reservoir retains.
127. I can find no issue with the use of this term. As ESCO submitted, it is clear from the specification that the reservoir is intended to retain the brazing material and there is no requirement for the claims to explicitly define this.
128. Caterpillar has also submitted that claims 39 to 42 lack clarity and/or fair basis as they do not define that the spacers actually connect the shell and the tool. I fail to understand this submission. It is clear from the specification that the spacers (pins 782) are used to suspend the substrate within the metal shell and to keep the shell and the substrate spaced apart until the cavity is filled with hard particles. These claims are clear.
129. While Caterpillar has also submitted that the “terms "connected", "infiltrated", "communication" and "conformal band" as generally recited throughout the claims lack clarity”, the basis for this contention is not apparent. I have alreadly discussed the term “conformal band” under claim construction. In relation to the other terms, I am of the view that the skilled addressee would not have any problem in understanding the scope of these terms.
FAIR BASIS
130. It is a requirement of subsection 40(3) of the Act that the claims must be fairly based on the matter described in the specification:
The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

131. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69]; 217 CLR 274 at 300 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"

132. The High Court further held at 99:
“the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention”

133. Caterpillar has submitted that the following claims lack fair basis:
Claims 28-38
134. Caterpillar’s submission in relation to fair basis of claims 29 to 38 reads as follows:
“Claims 29 to 38 are not fairly based on the specification. These claims define an assembly to engage the ground during operation of earth engaging machinery. However, claim 29 only defines an assembly that includes (i) a tool having a surface and (ii) a sheet metal shell connected to the tool defining a cavity between the surface and the shell.

There is no disclosure in the specification of an assembly to engage the ground during operation of earth engaging equipment absent the feature of a composite material coating at least a portion of the surface of the tool. As such, claims 29 to 38 omit an essential feature of the invention and lack fair basis”.

135. ESCO argued that these claims are directed to “an intermediate product utilised during the manufacture of a hardfaced wear part” and hence there is no requirement for these claims to define the composite material that fills the cavity between the surface of the tool and the sheet metal shell. They also submitted that even this intermediate product will provide a ground engaging functionality as noted by Dr Huggett in his evidence.
136. As discussed under “Clarity”, I have construed claim 29 as being directed to a ground engaging assembly having a substrate and an attached metal shell and not an intermediate assembly or precursor in the formation of this ground engaging assembly. While it may still be suitable for engaging the ground, there is no real and reasonably clear disclosure in the body of the specification for a ground engaging assembly comprising the substrate and the attached shell without the composite material filling the cavity between the substrate and the shell. Claim 29 is therefore not fairly based. All of its dependent claims apart from claim 31 also suffer from the same deficiency and therefore claims 30 and 32-38 are also not fairly based.
137. Claim 31 defines the cavity being filled with a composite material that constitutes the hardfacing. This claim is therefore fairly based.
Claims 39-42 and 64-69
138. Caterpillar has also submitted that claims 39-42 and 64-69 lack fair basis for similar reasons as claim 29.
139. Again while ESCO argued that independent claims 39 and 64 are directed to an intermediate assembly in the formation of the ground engaging wear part, I have construed these claims as being directed to a ground engaging assembly. Both of these claims fail to define a composite material filling the cavity between the substrate and the metal shell and as such are inconsistent with what the body of the specification asserts is the invention in relation to the ground engaging wear part. These claims are not fairly based.
140. Dependent claims 40, 41 and 65-68 also suffer from the same deficiency and are also therefore not fairly based. Dependent claims 42 and 69 define the cavity being filled with a composite material that constitutes the hardfacing. These claims are therefore fairly based.
UTILITY
141. Caterpillar has submitted that claims 39 to 42 and claims 64 to 69 lack utility because while they define an assembly to engage the ground during operation of the operation of earth engaging equipement, they are actually not useable to engage the ground during operation. Although Caterpillar did not raise a similar objection to claim 29 it is clear that the findings in relation to independent claims 39 and 64 would equally apply to claim 29.
142. The basis for this submission appears to be that each of independent claims 39 and 64 fail to define that the cavity between the shell and the surface of the substrate is filled with composite material comprising hard particles and infiltrant brazing material and that in the absence of such a composite material the assembly would not be suitable for ground engaging operations. In that respect, this ground is very similar to the ground of lack of fair basis that I have earlier found to have been made out.
143. Similar to their submissions in relation to fair basis, ESCO argued that these claims are directed to an intermediate assembly and not to a ground engaging wear part and that the objection to these claims lacking utility falls away “as a matter of construction”. ESCO further submitted that even this intermediate assembly, would still be capable of engaging the ground even in the absence of the hardfacing as stated by Dr Huggett:
“Firstly, if an assembly had only the substrate and the shell, it would actually still be suitable for engaging the ground. For example, in the preferred embodiments of the Opposed Application, the substrate itself is a bucket tooth, and it could still provide abrasion resistance and function to engage the ground without the hardfacing material”. (Huggett #3 at 2.3)
“In context, when the Opposed Application describes a wear part engaging the ground, it is clear that the part would implicitly have properties making it suitable for that function”. (Huggett #3 at 2.3)

144. ESCO’s first argument fails as I have construed the plain meaning of these claims as being directed to a ground engaging assembly. The question remaining is whether such a ground engaging assembly in which the substrate is enclosed by a metal shell to define a cavity between the substrate and the shell would be capable of being used as a ground engaging tool.
145. Dr Hewett disagrees with Dr Huggett and states:
“The device outlined in claims 29, 39 or 64 when used to engage the ground would crush the shell onto the tool thereby removing the cavity, The shell and cavity are superfluous to the operation of the tool or substrate without completing the infiltration, brazing or hardfacing. In addition to crushing the shell, a substrate formed from soft steel would wear away and make the overall assembly unsuitable for a GET”. (Hewett #3 at 4.8) and that “……this assembly is practically useless for engaging the ground without any hardfacing”. (Hewett #3 at 4.10)

146. Hardfacing of wear parts of ground engaging machinery is the provision of a coating on the surface of the wear part that increases the resistance of the wear part to abrasive wear encountered during earth digging operations. But that is not to say that the wear part cannot function without the hardfacing. While I accept that the metal shell that encloses a substrate of the wear part would get crushed without the composite material that would not prevent it from being used as an earth engaging tool. Even with a composite material the metal shell is meant to wear away quickly exposing the hard wearing composite material. In the absence of the composite material, the crushed metal shell would still wear away quickly and expose the substrate of the tool. While the tool would also wear away quicker than if it had the composite hardfacing, it is still very much capable of being used as a ground engaging tool. I am in agreement with the views of Dr Huggett in this respect.
147. Claims 29, 39 and 64 and their dependent claims do not lack utility.
MANNER OF MANUFACTURE
148. Caterpillar has submitted that the claimed invention is not a manner of manufacture for the following reasons:
a) Claims 1 to 69 do not define patentable subject matter as the alleged invention resides in the presence (or use) of a sheet metal shell and the use of a sheet metal shell, in addition to generally lacking novelty and inventive step, is nothing more than a mere variation in the known methods of forming a wear part for abrasive applications and it is irrelevant to the product or assembly what is the origin of the metal shell.
b) Claims 1 to 69 do not define patentable subject matter as each of the features recited in these claims is known in light of the common general knowledge in the art in Australia and the alleged invention consists of nothing more than a collocation of known integers as there is no working interrelationship or potential interworking relationship between these integers.
149. In relation to reason (a), even if the use of sheet metal is only a variation, I fail to understand why that should make the claimed invention not a manner of manufacture. There is nothing to establish that the claimed invention lacks an inventive step on the face of the specification. In any event, as argued by ESCO, the opposed application sets out a number of advantages of the use of sheet metal including that the shell “may be formed easily, relatively inexpensively” and “very little material is required to form an effective mold, even for relatively large substrates”.
150. In relation to reason (b), there is no evidence from Caterpillar that clearly establishes that each of the features is known in light of the common general knowledge. Each of the claims in my view defines a working relationship between the various integers.
151. This ground of the opposition has not been made out.
CONCLUSION
152. The opposition succeeds on some of the grounds. Claims 29, 30, 32-41 and 64-68 are not fairly based. Claims 64 and 66-68 are not novel over documents D6 and D8.
153. As I am of the view that these adverse findings could be overcome by amendment, I allow ESCO two months from the date of this decision to propose suitable amendments.
COSTS
154. The opposition succeeds on some of the grounds. While the opponent Caterpillar Inc. chose not to participate in the hearing, I do not see that as a reason to adopt a different approach to the Commissioner’s practice of awarding costs to the successful party. I therefore award costs according to Schedule 8 against the applicant ESCO Corporation.

R Subbarayan
Delegate of the Commissioner of Patents