Caterpillar Inc. v Esco Corporation - [2014] APO 66

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE
Caterpillar Inc. v Esco Corporation [2014] APO 66

Patent Application: 2008251647

Title:Wear assembly for excavating equipment

Patent Applicant:                   Esco Corporation
Opponent:  Caterpillar Inc.
Delegate:  R Subbarayan
Decision Date:  20 October 2014
Hearing Date:  8 September 2014, in Melbourne
Catchwords:  PATENTS – opposition to grant of patent – novelty, inventive step, clarity, fair basis, utility and manner of manufacture – several claims not novel and not inventive – other grounds not made out – costs awarded against applicant

Representation: Patent applicant: Stephen Burley of Counsel assisted by Stephen Worthley and Wayne McMaster of Minter Ellison
Opponent:Craig Smith of Counsel assisted by Bret Connor and Jonathan Schnapp of Freehills

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008251647

Title:Wear assembly for excavating equipment

Patent Applicant: Esco Corporation
Date of Decision: 20 October 2014
DECISION
The opposition is successful. Claims 1-6, 10, 12-15, 17, 18, 26, 32, 36 and 37 are not novel and lack an inventive step. I allow the applicant Esco Corporation two months to file amendments to overcome the adverse findings in this decision. I also award costs against Esco Corporation.
REASONS FOR DECISION
BACKGROUND

Patent application 2008251647 in the name of ESCO Corporation was filed as a PCT application (PCT/US2008/062724) on 6 May 2008 and claims priority from a US priority application filed on 10 May 2007. It was examined under section 48 of the Patents Act as a modified examination based on the granted patent US 8061064 and was accepted on 9 November 2012. The application was opposed under section 59 of the Patents Act by two parties, the first one filed on 4 March 2013 was by CQMS Pty Ltd and the second on filed on 6 March 2013 was by Caterpillar Inc. On 5 November 2013, CQMS withdrew their opposition after filing their evidence in support. The opposition by Caterpillar was heard in Melbourne on 8 September 2014.
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:
·Statutory Declaration of Bruce Alexander Leslie dated 3 September 2013 with exhibits BAL-1 to BAL-4.
Evidence in answer consists of:
·Statutory Declaration of Hezekiah Russel Holland dated 2 December 2013 with exhibit HRH -1
·Statutory Declaration of Hezekiah Russel Holland dated 12 December 2013
Evidence in reply consists of:
·Statutory Declaration of Bruce Alexander Leslie dated 21 March 2014 with exhibits
BAL-4 to BAL-8.
ONUS OF PROOF
The examination request for this patent application was filed on 27 February 2012. 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]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
SPECIFICATION
The invention relates to a removable tooth assembly for excavating equipment and is stated to be particularly well suited for use on a cutterheads of dredges. Dredges are excavators that are used for excavating underwater surfaces such as riverbeds and seabeds. They typically include a cutterhead that is moved in different directions whilst it is rotated about its central axis. The cutterhead is generally conical and includes a number of spirally extending arms each of which is provided with a plurality of digging teeth. Each digging tooyh includes a base or adaptor that is fixed to the arms and a point or tooth that is releasably attached to the base by locks. As the cutterhead rotates the teeth are driven into and through the river or sea bed to excavate the earth. The excavated material is directed into a suction pipe in the centre of the cutterhead. The teeth typically comprise an elongate slender digging bit that is attached to the adaptor through a wider mounting section. The specification often refers to the teeth assembly by the more general term “wear assembly”.
Under the heading “Background of the Invention” the specification discusses problems with typical dredge cutterheads. It states “considerable power is needed to drive the cutterhead, particularly when excavating in rock” and “as the bit becomes shorter due to wear, the mounting sections of the point will begin to engage the ground in the cutting operation. The mounting section is wider than the bit and is not shaped for reduced drag. On account of the resulting increased drag the mounting sections impose on the cutterhead, the points are usually changed at this time before the bits are fully worn away”.
Then in the opening paragraph under the heading “Summary of the invention”, the specification states as follows:
“In accordance with one aspect of the invention, a wear member for excavating equipment is formed with side relief in the working and mounting sections to minimize the drag associated with the digging operation and, in turn, minimize the power needed to drive the equipment. Reduced power consumption, in turn, leads to a more efficient operation and a longer usable life for the wear member”.
This side relief is provided by making the leading side of the tooth wider than the trailing side both in the digging end and also at least partially in the mounting end. With such an arrangement, the sidewalls that extend between the leading and trailing sides, converge from the leading side to the trailing side so that “the sidewalls of the wear member follow in the shadow of the leading side to decrease drag” and “the drag experienced by a worn wear member of the invention is less than that of a conventional wear member. Less drag translates into less power consumption and longer use of the wear member before it needs to be replaced”.
Still under the same heading it then recites various other “aspects” of the invention. Two such other aspects which are relevant to these proceedings are stated as follows:
“In accordance with another aspect of the invention, the wear member has a digging profile that is defined by the transverse configuration of that portion of the wear member that penetrates the ground in one digging pass and in the direction of motion through the ground. In one other aspect of the invention, side relief is provided in the digging profile to lessen the drag experienced during a digging operation”.
“In another aspect of the invention, the wear member includes a socket for receiving a nose of a base fixed to the excavating equipment. The socket is formed with a generally trapezoidal transverse shape that generally corresponds to the transverse trapezoidal exterior profile of the wear member. This general matching of the socket to the exterior of the mounting section eases manufacture, maximises the size of the nose, and enhances the strength to weight ratio”.
The specification then goes on to provide detailed description of the preferred embodiments. Under this detailed description, it defines the “digging profile” that is mentioned in one of the other “aspects” of the invention, as referring to “the cross-sectional configuration of the portion of the portion of point 14 that penetrates the ground along a plane that is (i) parallel to the direction of travel 34 at the centre point of a digging pass through the ground and (ii) laterally perpendicular to the longitudinal axis”. From my understanding of this term, the term digging profile arises from the fact that the tooth of the cutterhead does not traverse the surface that is being excavated exactly perpendicularly to the leading face of the tooth but rather at an angle. Mr Leslie defines the term quite succinctly as “the cross-section of the wear member parallel to the direction of motion of the wear member in the ground”. The specification states that the “digging profile is a better indication of the drag to be imposed on the point during use than a true transverse cross section”.
In all of the embodiments described, the tooth assembly has a trapezoidal cross-section with the leading side of the tooth corresponding to the wider side of the trapezoid and the trailing side of the tooth corresponding to the narrower side of the trapezoid. In all of these embodiments this trapezoidal cross-section is present both in the true cross-section and also in the “digging profile” cross-section.
The description also describes the mounting arrangement of the tooth on the adaptor. The mounting portion of the tooth has a rearwardly opening socket that is placed over a nose of the adaptor and is then secured thereto by a locking arrangement. The socket is also described as having a trapezoidal transverse configuration that generally follows the generally trapezoidal transverse configuration of the exterior of the tooth. Such “cooperative shaping of the socket 20 and exterior 97 maximises the size of the nose 18 that can be accommodated within point 14, eases the manufacturing of point 14 in a casting process, and enhances the strength to weight ratio”.
The description then describes some preferred locking arrangements to secure the tooth on the adaptor.
The specification ends with 44 claims including 6 independent claims. Of these, independent claims 1, 12, 26 and 32 are directed to the aspect of providing side relief to reduce drag and independent claims 19 and 39 are directed to the aspect of matching the socket shape to the exterior trapezoidal shape of the mounting section portion.
The independent claims read as follows:
1. A wear member for excavating equipment comprising
a working section and a mounting section generally aligned along a longitudinal axis, the mounting section including a socket for receiving a base fixed to the excavating equipment to mount the wear member on the excavating equipment, and the working section being that part of the wear member forward of the socket,
a leading side adapted to be a forward surface during advance of the wear member through the ground during a digging operation, and
a trailing side adapted to be a rearward surface during advance of the wear member through the ground,
the leading and trailing sides extending axially across the working and mounting sections, and the leading side having a greater width than the trailing side in transverse cross sections perpendicular to the longitudinal axis along at least part of the working section and the mounting section.
12. A wear member for excavating equipment comprising
a working section and a mounting section generally aligned along a longitudinal axis, the mounting section including a socket for receiving a base fixed to the excavating equipment to mount the, wear member on the excavating equipment, and the working section being that part of the wear member forward of the socket,
a leading side adapted to be a forward surface during advance of the wear member through the ground during a digging operation,
a trailing side adapted to be a rearward surface during advance of the wear member through the ground, and
sidewalls extending between the leading side and the trailing side,
the leading side, the trailing side, and the sidewalls extending axially across the working and mounting sections, and the sidewalls generally converging toward the trailing side throughout at least a front end of the mounting section.
19. A wear member for excavating equipment comprising a working section and a mounting section generally aligned along a longitudinal axis, the mounting section including a socket for receiving a base fixed to the excavating equipment to mount the wear member on the excavating equipment, the socket including a front end and a main portion rearward of the front end, wherein the front end has a front bearing surface generally transverse to the longitudinal axis, and the main portion of the socket and an external surface of the mounting section each has a generally trapezoidal configuration transverse to the longitudinal axis.
26. A wear assembly for excavating equipment comprising:
a base fixed to the excavating equipment;
a wear member including a working section and a mounting section generally aligned along a longitudinal axis, the mounting section including a socket for receiving a base fixed to the excavating equipment to mount the wear member on the excavating equipment, and the working section being that part of the wear member forward of the socket, the working section including a front end to generally initiate contact with earthen material to be excavated, a leading side adapted to be a forward surface during advance of the wear member through the ground during a digging operation, and a trailing side adapted to be a rearward surface during advance of the wear member through the ground, the leading and trailing sides extending axially across the working and mounting sections, and the leading side having a greater width than the trailing side in transverse cross sections perpendicular to the longitudinal axis along at least part of the working section and the mounting section; and
a lock to releasably secure the wear member to the base.
32. A wear assembly for excavating equipment comprising:
a base fixed to the excavating equipment;
a wear member including a working section and a mounting section generally aligned along a longitudinal axis, the mounting section including a socket for receiving a base fixed to the excavating equipment to mount the wear member on the excavating equipment, and the working section being that part of the wear member forward of the socket, a leading side adapted to be a forward surface during advance of the wear member through the ground during a digging operation, a trailing side adapted to be a rearward surface during advance of the wear member through the ground, and sidewalls extending between the leading side and the trailing side, the leading side, the trailing side, and the sidewalls extending axially across the working and mounting sections, and the sidewalls generally converging toward the trailing side throughout at least a front end of the mounting section; and
a lock for releasably securing the wear member to the base.
39. A wear assembly for excavating equipment comprising:
a base fixed to the excavating equipment;
a wear member including a working section and a mounting section generally aligned along a longitudinal axis, the mounting section including a socket for receiving the base to mount the wear member on the excavating equipment, the socket including a front end and a main portion rearward of the front end, wherein the front end has a front bearing surface generally transverse to the longitudinal axis, and the main portion of the socket and the mounting section each has a generally trapezoidal configuration transverse to the longitudinal axis; and
a lock for releasably holding the wear member to the base.
CLARITY
Although the Statement of Grounds and Particulars listed a number of clarity issues, at the hearing the opponent only pressed one of them.
The opponent submitted while the terms “leading side” and “trailing side” have a clear meaning for wear members used in dredge cutterheads, according to their expert Mr Leslie, these terms cannot be properly defined for wear members for excavator buckets and therefore those claims that are not limited to dredge cutterheads are unclear.
The applicant submitted that there is no disagreement between the experts about the meaning of these terms and that both agree that the concept of a leading side and a trailing side has application to a wear member for dredge cutterheads and to other wears members where the motion of the wear member has a significant transverse component. While there is disagreement between the experts about what kind of excavators operate in such a way as to move the wear member through the ground with a significant transverse component to their motion, this is an issue that is relevant to whether a prior art falls within the scope of the claims and not one of clarity of claims.
I agree. Independent claims 1, 12, 26 and 32 define a wear member for excavating equipment without any further limitation as to the type of excavating bucket. They define the wear member as having “a working section and a mounting section generally aligned along a longitudinal axis”. This definition clearly requires the wear member or tooth to be somewhat elongated thereby giving it a longitudinal axis, with one portion forming a working section and another portion forming a mounting section. It then defines “a leading side adapted to be a forward surface during advance of the wear member through the ground during a digging operation” and “a trailing side adapted to be a rearward surface during advance of the wear member through the ground”. The term “surface” by definition requires an area or extent and therefore the “leading side” cannot refer to just the edge at the tip of the wear member. The claim therefore defines the wear member or tooth as having a motion through the ground whereby it presents a surface which can be considered as forward facing and a surface which can be considered as rearward facing. This inherently requires the wear member to have a component of motion that is transverse to the longitudinal axis. If it had a purely longitudinal motion, it would not present a leading surface and a trailing surface as required by the claims.
It is also clear from Mr Leslie’s declaration at paragraph 31 that he has no problem in ascribing a clear meaning to the terms “leading side” and “trailing side” for a wear member of a dredge cutterhead or other excavators where the wear member moves through the ground with a significant transverse component to their motion.
In my view the skilled addressee would clearly interpret the wear member of the claims to have a fairly significant transverse component of motion and in that context would have no problem in identifying a leading side and a trailing side.
While the invention has been developed to overcome alleged deficiencies in the wear members of dredge cutterheads, the specification clearly states that the invention can be applied to wear members in other types of excavating equipment such as bucket excavators. While Mr Leslie may not agree with this statement, that cannot be a reason to require the applicant to specifically restrict their claims to dredge cutterheads. I do not see the lack of limitation to dredge cutterheads in the claims as being an issue of lack of clarity. It is an issue of fair basis if at all.
Independent claims 1, 12, 26 and 32 that define a wear member having a leading side and a trailing side are clear.
FAIR BASIS
The opponent submitted that all of the claims are not fairly based on the specification because “the only ‘real and reasonably clear’ disclosure in the specification, read as a whole, is of a wear member for a dredge cutterhead with a digging profile cross-section that has the side walls and trailing edge of the wear member pass through the ‘shadow’ of the leading edge” and “none of the claims is restricted to wear members having such features”.
When I read the specification as a whole, it is clear that the invention came about because of perceived drawbacks in the wear members of cutterheads in dredges. As discussed earlier under “Specification”, the wear members impose significant drag on the cutterhead, especially when they get worn out to an extent where the mounting portion, which is typically wider and not shaped for reduced drag, starts to engage the ground.

The solution to this problem is to make the leading side wider than the trailing side both in the working section and in the mounting section so that the side walls that extend between the leading and trailing sides will converge and follow in the ‘shadow’ of the leading side. This will provide what is termed “side relief” and helps to reduce drag imposed by the side walls.
In my view the provision of the side relief in the mounting portion is the crux of the invention. This is what enables the continued use of the tooth even after it is worn down to the mounting section rather than having to be replaced as with prior art tooth members.
The specification also then recognises the fact that the wear member does not pass through the surface being excavated in a truly transverse direction but rather in a direction that is inclined to the transverse direction and this is termed as the “digging profile”. It therefore then states that the side relief is provided also in the “digging profile” as the “digging profile is a better indication of the drag to be imposed on the point during use than a true cross section” (my emphasis).
Is the invention specific to dredge cutterheads
While the specification is primarily directed to wear members for dredge cutterheads, it also states “the different aspects of the invention can be used in conjunction with other kinds of wear assemblies (e.g., shrouds” and for other kinds of excavating equipment (e.g., buckets)”. Furthermore most of the consistory clauses under “Summary of the Invention” are directed to wear members for excavating equipment in general without any further limitation as the type of excavator. However I am mindful of what the High Court stated in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58, 217 CLR 274 in relation to consistory clauses.
“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. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification”.
In my view, although developed in the context of wear members for cuttherheads, there is no reason why the teachings of this invention cannot be extended to wear members for other types of excavators such as bucket excavators as contemplated by the specification. Mr Holland is of the view that wear members for bucket excavators have a transverse component of motion and therefore the invention would benefit wear members on these buckets. While Mr Leslie disagrees as to whether wear members on bucket excavators have a significant transverse component of motion, he clearly accepts that the invention would be applicable to other kinds of excavators where there is a significant transverse component of motion of the wear member. I am satisfied that the invention has suitability to excavators other than just dredges and the claims do not travel beyond the matter described in the specification.
Does the invention lie in the “digging profile”
While providing side relief in the digging profile is stated to provide better results than side relief in the transverse cross-section, there is nothing in the specification that would suggest that side relief in the transverse cross-section would not provide any benefit in solving the stated problem. The specification seeks to reduce drag in the mounting section and making the trailing side narrower than the leading side even in the transverse cross-section would provide side relief to reduce drag imposed by the side walls.
The opponent argued that the admitted prior art in paragraph [54] of the specification admits that it is known to have the leading side wider than the trailing side in the transverse cross-section and therefore this feature cannot be the characterising feature of the invention.
I disagree. While there might be a reference to a conventional point having a wider leading side, this is in relation to the working portion. The claimed invention is in relation to having a wider leading edge in the mounting section as well and there is nothing to suggest in the specification that this was known or that it would not provide some benefit in solving the problem identified. Also as noted in Lockwood (supra), fair basis “does not call for an inquiry into an ‘inventive step’, or inventive ‘merit’ or a ‘technical contribution to the art’.”
In my view the limiting of the claim to a transverse cross-section rather than a “digging profile” cross-section is fully consistent with the invention described. The claims do not travel beyond what is disclosed in the specification.
Independent claims 1, 12, 26, 32 and their dependent claims are fairly based on the specification.
Invention defined by independent claims 19 and 39
Independent claims 19 and 39 do not define that the leading side is wider than the trailing side to provide the side relief and in that respect do not correspond to the main invention described in the body of the specification. But as I noted earlier, the specification has a secondary invention relating to the matching of the shape of the socket to that of the exterior of the mounting portion.
Each of these claims clearly define that the main portion of the socket and the external surface of the mounting section each has a generally trapezoidal configuration in a transverses cross-section. There is a real and reasonably clear disclosure of this in the body of the specification.
Therefore although these claims are directed to a different invention, they are still consistent with another aspect of the invention described.
Independent claims 19 and 39 and their dependent claims are fairly based on the specification.
UTILITY
The opponent objected that the invention is not useful because it does not meet the promise of the invention. They ran several lines of argument on this ground. I have considered each of them below.
Digging profile
The opponent submitted that the specification clearly acknowledge that the relevant cross-section through the wear member, in terms of drag, is not a transverse cross-section , but rather a cross-section taken across the relevant digging profile. As the claims are not limited to such a ‘digging profile’ cross-section, they will not achieve the promise of reduced drag.
As already discussed under “Fair Basis”, while the use of a “digging profile” cross-section will give better results than a purely transverse cross-section, I think it is wrong on the part of the opponent to characterise the “digging profile” cross-section as the only cross-section that will achieve the object of the invention. Neither the evidence of Mr Leslie or Mr Holland suggests that the drag in the mounting section would not be reduced by having the trailing side narrower than the leading side in a transverse cross-section.
This argument fails.
Side walls
The opponent submitted that each of claims 1-3, 8-18 and 25-38 also lack utility as they do not include a limitation that the side walls travel ‘in the shadow’ of the leading side. By not including such a limitation, the side walls could have sections that are wider than the leading side and this would therefore not achieve the promise of reduced drag. They provided the following fictional cross-section to support their argument.
While such a construction could be possible, I am not convinced that is a sensible interpretation of the claims. It is a recognised tenet of Australian patent law that each claim must be read as part of the entire specification (Electrical and Musical Industries Ltd v Lissen Ltd 56 RPC 23 at 39), and thus the meaning of the words used in a claim may be affected by what is said in the body of the specification (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69).
In Welch Perrin & Co. Pty. Ltd. v. Worrel [1961] HCA 91; (1961) 106 CLR 588, the High Court stated:
“The lack of utility alleged did not go beyond the suggestion that the claims were so general that an unworkable machine could be made in conformity therewith. It was not suggested that a most useful rake could not be made within the limits of what was claimed. The principle that all within the scope of the claim must be useful if the claim is not to fail for inutility was invoked and reference was made to Norton and Gregory Ltd. v. Jacobs (1937) 54 RPC 271 and other cases which show that a claim is bad if it covers means that will not produce the desired result even if a skilful person would know which means to avoid. In the case cited, which concerned a chemical patent relating to reducing agents, Lord Greene M.R. (for the Court) said: "The fact that a skilled chemist desiring to use the invention would reject certain reducing agents as being unsuitable is one thing; it is quite a different thing to say that a claim must in point of construction be cut down so as to exclude those reducing agents because a skilled chemist would not use them. To adopt the latter proposition would not be to construe the specification but to amend it" (1937) 54 RPC, at p 276 . Here the principal argument was that although it is stipulated that the raking wheels should be "angularly displaced from the normal direction of movement of the frame" (claim 1) or "angularly related to the normal direction of movement of the frame" (claim 2), this would in either case permit the wheel to be mounted at an angle so near to a right angle that the forward movement of the rake would not turn the raking wheels. I consider, however, that no one reading the specification would so understand it and that a very ordinary person would know what was a workable angle. What I have quoted from the Master of the Rolls does not mean that a specification should be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning”.
In Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420, Bennett J generally accepted the proposition outlined in Norton and Gregory Ld v Jacobs (1937) 54 RPC 271 (the “Norton principle”) at 275-6 that a claim will fail for inutility if within its scope there is subject matter claimed which will not achieve the desired or promised result. However, she did not believe this extended to alternatives within the claim that any sensible person would appreciate would lead to unworkability (at [231]). In her view:
“The claims are not directed to readers in a vacuum, they are directed to and are to be understood by the skilled workers in the field. That is the person who construes them, in a common sense way (Populin at 476-477). It would be artificial to assess utility in a way that ignores the fact that a design that is theoretically or mathematically within the parameters of the claims would never be contemplated for use by the skilled naval architect wishing to design a hull for a multi hulled vessel capable of speeds greater than 30 knots. A design that no naval architect would adopt would not be the appropriate test on the question of utility”. [at 240]
From reading the specification as a whole, it is quite clear to me that the purpose of making the trailing side narrower than the leading side is so that the side walls extending between the leading and trailing sides will converge and provide “side relief”. I have been provided with no evidence to suggest that the fictional cross-section proposed by the opponent is a design that would be contemplated for use by a skilled addressee in this art.
Even if such a design construction were to be contemplated, there is no evidence to satisfy me that this would not have reduced drag compared to an equivalent member which had a trailing side wider than the leading side.
The opponent’s objection based on this issue also fails.
Leading face
The opponent argued that claims 19-24 and 39-43 lack utility because they do not define which side of the generally trapezoidal configuration has the greater width and without such a definition the claims could include within their scope a wear member which has the narrower side of the trapezoid as the leading face.
The applicant responded that these claims relate to a different aspect of the invention which has different advantages to the other aspects of the invention. They referred to paragraph [08] of the specification which talks of this advantageous aspect:
“In another aspect of the invention, the wear member includes a socket for receiving a nose of a base fixed to the excavating equipment. The socket is formed with a generally trapezoidal transverse shape that generally corresponds to the transverse trapezoidal exterior profile of the wear member. This general matching of the socket to the exterior of the mounting section eases manufacture, maximizes the size of the nose, and enhances the strength to weight ratio.”
As mentioned earlier, in my view the specification identifies different aspects of the invention and the applicant has then chosen to claim these as separate inventions. An applicant is entitled to do that. While it may lead to lack of unity of invention and therefore a non-compliance with section 40(4) of the patents act, that is a ground available during examination but not during opposition.
I have been provided with no evidence to establish that the promised benefits of this aspect of the invention would not be achieved and therefore this line of attack also fails.
MANNER OF MANUFACTURE
The opponent submitted that at paragraph [54], the specification states that “in one conventional point 14a, bit 21a has a trapezoidal transverse configuration with a leading side 25a that is wider than trailing side 27a” and that therefore there is an admission on the face of the specification that each of claims 1, 3, 10, 26 and 31 is not new and that therefore the invention is not directed to a manner of manufacture in line with the principles set out in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 at [9]; (1995) 183 CLR 655 at 655.
The reference to leading side 25a being wider than the trailing side 27a is in relation to the working section 21a of the wear member. There is nothing in this paragraph that clearly indicates that the wider leading side is provided in the mounting section 23a.
I am not satisfied that on the face of the specification the subject matter of the invention is not novel or lacks an inventive step.
The subject matter of the claimed invention is directed to a manner of manufacture.
NOVELTY
The basic test for novelty is the "reverse infringement" test as stated in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at pages 485, 486:
"If carrying out the directions contained in the prior inventor's publication 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".
In applying this test regard must be given to the level of disclosure in the prior publication. As stated in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR at 517:
"It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakeable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication."
D1: US 4949481
This is the primary prior art document relied on by the opponent. It is entitled “Digging Tooth Assembly” and discloses a digging tooth for a bucket excavator.
It discloses a backhoe bucket 10 provided with a plurality of digging teeth 12. Each tooth is elongated with a working section that converges to a cutting edge 28 at one end and a mounting section. The mounting section has a socket 18 that is mounted over a mounting shank projecting from the bucket and secured thereto using a flex pin 17. Being elongated, the tooth will have a longitudinal axis extending from the mid-point of edge 28 to the mid-point of the socket opening. It has a concave upper surface 20, a convex lower surface 22 and concave sidewalls 24, 26. As can be clearly seen in figures 3 and 5, the upper surface is wider than the lower surface in the transverse cross-section both in the working section and in the mounting section.
The only remaining consideration is whether the upper surface can be considered to be a forward surface and whether the lower surface can be considered as a trailing surface during advance of the tooth through the ground.
Mr Holland for the applicant has clearly stated that he considers that a tooth in a bucket excavator has a significant transverse component of motion through the ground. If I accept this, then clearly the upper surface can be considered a leading surface and the lower surface can be considered a trailing surface.
Mr Leslie for the opponent has stated that in his view the motion of the tooth in a bucket excavator is primarily longitudinal with no significant transverse component and that therefore the concept of a leading side and especially a trailing side is not meaningful when applied to such excavators. But when construing prior art document D1, he identifies upper surface 20 as a leading side as it is adapted to be a forward surface during advance of the tooth through the ground when the bucket is moved upward and in a leftward direction. He also states that to the extent that the tooth has a trailing side in the context of the claimed invention, the bottom surface 22 is a trailing side adapted to be a rearward surface.
The applicant submitted that there are clearly contradictions and inconsistencies in Mr Leslie’s evidence, whereas Mr Holland is consistent on this issue. They did not however press that Mr Holland’s evidence is to be preferred on this issue, but did accept that if I were to prefer Mr Holland’s evidence and find that the upper and lower surfaces of D1 represent a clear and unmistakeable disclosure of leading and trailing sides respectively, then claims 1, 12, 26 and 32 are likely to be not novel and that they would be prepared to amend these claims to recite that they are “for use in a dredge cutterhead”, in order to distinguish them over D1.
While in my view the operation of a bucket excavator is significantly different to that of a dredge cutterhead, that does not necessarily mean that the teeth in an excavator bucket do not have leading and trailing sides. Even if the motion of the teeth in excavator buckets is predominantly longitudinal as submitted by Mr Leslie, it certainly would include transverse components as well. When I look at Exhibit BAL-8 annexed to Mr Leslie’s second declaration and which show the teeth and bucket angles throughout filling, it is clear that the motion of the teeth through the earth is not purely longitudinal but also has components transverse to the its longitudinal axis. Furthermore in paragraph 57 of his first declaration Mr Leslie states that the “bucket 10 shown in Fig. 1 of US 4949481 is moved upward and in a leftward direction (as viewed in Fig 1) through the ground during a digging operation” (my underlining) and in my view this is a clear recognition even by Mr Leslie of the existence of both longitudinal and transverse components.
I am therefore of the view that the motion of the teeth even on excavator buckets will have a transverse component in addition to a longitudinal component and when referenced to such a transverse component of motion, the teeth can be seen to have a “a leading side adapted to be a forward surface during advance of the wear member through the ground during a digging operation” and a “trailing side adapted to be a rearward surface during advance of the wear member through the ground”. This is also consistent with the statements in the application in suit that the wear members can also be used in bucket excavators.

When I construe document D1 in this light, and if I had to identify a leading side adapted to be a forward side and a trailing side adapted to be a rearward surface during advance of the tooth 12 through the ground, they would inevitably be upper surface 20 and lower surface 22 respectively. As discussed earlier, the upper surface is clearly wider than the lower surface in both the working and mounting sections. Therefore all of the features of the claimed invention are disclosed in D1.
The applicant argued that D1 does not provide clear and unmistakeable directions to the claimed invention as it does not discuss the advantageous flow concepts identified in the opposed specification. I do not find this persuasive. D1 clearly states that “an object of the invention is to provide a digging tooth configuration that more easily moves through material thereby increasing the efficiency of the digging bucket to which it is attached”. There is a clear recognition in D1 of the flow concepts referred to by the applicant. Even if such a statement were absent in D1, the skilled addressee by following the teachings of D1 would inevitably arrive at the claimed invention and in that respect it would satisfy the requirement for clear and unmistakeable directions.
Independent claims 1, 12, 26 and 32 are not novel over D1.
The opponent also submitted that dependent claims 2-6, 10, 13-15, 17, 18, 36 and 37 are not novel as the additional integers of these claims are also disclosed in D1. They provided a novelty chart identifying the corresponding disclosure in D1 for these additional features. The applicant did not rebut these submissions. I am satisfied that these additional integers are disclosed by D1. Dependent claims 2-6, 10, 13-15, 17, 18, 36 and 37 are also therefore not novel.
D8: WO 2007/123653
Although document D8 was listed amongst various other prior art documents in the
Statement of Grounds and Particulars (SGP), this document was never formally filed as evidence to the Commissioner. Documents that have not been provided to the Commissioner as evidence cannot be relied upon; mere listing of a document in the SGP is not sufficient. The opponent did not offer any explanation as to why this was not done. I can only surmise that they did not consider this document to be very relevant and decided not to file it as evidence, but at the last minute changed their mind.
At the hearing I pointed this out to the opponent and said that they need to file this document as further evidence if they intend to rely on it and I gave the applicant an opportunity to file any submissions in relation to bringing this document into these proceedings. The applicant said that while they had been unaware of the opponent’s reliance on this document until they received their written submissions a few days prior to the hearing, they had no objection to bringing in this document at this stage in the proceedings as this was a “hopeless document” anyway.
I therefore agreed to bring this document into the proceedings and allowed the parties to make submissions in relation to this document.
D8 was published on 1 November 2007, which is after the priority date of 10 May 2007. It was filed on 28 March 2007 and claims a priority date of 30 March 2006. Accordingly it can be relied upon only as a “whole of contents” citation for Novelty purposes.
The opponent submitted that they relied on D8 only in relation to independent claims 19 and 39, both of which are directed to the second aspect of the invention which relates to the socket and the external surface of the mounting portion having a generally trapezoidal configuration. They relied on figures 12, 14-17 and paragraph [59] of D8 as a disclosure of the features of these claims.
Its fairly evident from D8 that it discloses a wear member having a working section and a mounting section, a socket in the mounting section for being secured over a base on the excavating equipment, the socket including a front end with a front bearing surface transverse to the longitudinal axis and a main portion rearward of the front end. The front end is shown to have a triangular configuration. In paragraph [59], it however then states “while front stabilizing end 20 preferably has a triangular shape formed by upper and lower surfaces 22, 24, other configurations with inclined side surfaces can be used to reduce the lateral projection of the upper front corners. In such a construction, the inclined sidewalls may define a generally trapezoidal shape”. This is the only reference to any trapezoidal configuration in the entire specification.
The applicant was of the view that firstly this reference to the trapezoidal configuration is specific to the front end of the socket and does not extend to the main portion and secondly D8 does not discuss the external shape of the mounting section in such an embodiment.
I am not totally convinced in relation to the first argument. Neither claims 16 or 19 is specific about where the front end finishes and where the main portion starts. It may be possible to notionally consider part of the ‘front end’ of the wear member of D8 which could have a trapezoidal configuration as actually being part of the main portion without such a clear demarcation. However I agree that D8 is totally silent on the integer of a trapezoidal configuration for the external surface of the mounting section. The opponent did not identify this integer either in D8. At least one integer is clearly not disclosed in D8.
Claims 19, 39 and their dependent claims are novel over D8.
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)
The specific problem that the invention sets out to solve is how to reduce drag on a wear member of a dredge cutterhead especially when it gets worn out to an extent where the mounting section of the wear member starts to engage the ground. However, as the specification itself states that the invention is applicable to other types of excavators and the claimed invention has not been limited to wear members for dredge cutterheads, in my view it is entirely appropriate to more broadly restate the problem so to apply to a wear member for any type of excavator where the wear member is elongate and has distinct working and mounting sections.
Mr Leslie states in his evidence that when developing wear members for excavating equipment, he would review competitors’ patents and also conduct patent searches for the purposes of confirming patentable features and identifying potential infringement. Mr Holland has not presented any contrary view on this issue. The applicant argued that Mr Leslie has only stated that he would consult patents for identifying potential infringement and freedom to operate but not with a view to working out what to design and that being an inventor himself, he would be unable to give assistance as to the steps taken by an uninventive person skilled in the art.
I am not persuaded by this argument. Mr Leslie does state in paragraph [7] of his first declaration that when reviewing earlier patents, he would review the document to gain an understanding of the engineering principles behind the design that was being protected and he would look to develop an alternate design incorporating the principle with information available to him from past experience and general knowledge. In my view this is a clear indication that the person skilled in this art would consult patents when trying to improve upon an existing product.
As mentioned earlier D1 states that it is directed to providing a tooth configuration that moves easily through the material being excavated and to thereby increase the efficiency of the bucket. There is clearly a reference to reducing drag in this statement and therefore in my view the person skilled in the art would consider this statement as being relevant to the stated problem.
In my view D1 is a document that a person skilled in the art would have ascertained, understood and regarded as relevant when trying to solve the stated problem.
As I have already found claims 1-6, 10, 12-15, 17, 18, 26, 32, 36 and 37 are not novel, it follows that these claims also lack an inventive step.
Claims 7, 11, 16, 28, 29 and 33
These claims require that at least one wall of the socket is either bowed inwardly or defines a projection that is received into a trough formed on the base.
The opponent argued that Mr Holland has stated that with the bowed sides there will be greater bearing area and that this means that the socket and point assembly will be more stable.
Whilst that it true, nowhere has Mr Holland or Mr Leslie for that matter stated that having bowed sides was common general knowledge in the art and that it would have been a routine thing to do.
Claims 7, 11, 16, 28, 29 and 33 are inventive over D1.
Claims 8 and 9
Claim 8 is dependent on claim 1 and defines that the socket has a generally trapezoidal transverse configuration.
Mr Leslie in paragraph 8 of his first declaration states that it is desirable to design the socket to follow the outside shape of the wear member so that the wall thickness was roughly the same along the length of the wear member. However in paragraph [9] he also states that if the wear member was being designed as a retrofit for an existing adaptor, the socket shape would need to be compatible with the existing adaptor shape.
While Mr Holland acknowledges that a design with a constant wall thickness may have manufacturing advantages, he is of the view that the socket is normally designed to follow the shape of the adaptor which may vary according to various design considerations, whereas the outside shape of the wear member is designed to account for factors such as aiding penetration, handling stress and optimising wear profile.
I consider that Mr Holland’s views to be more balanced than that of Mr Leslie. The outer shape of the wear member is clearly dictated by the conditions that Mr Holland refers to, otherwise you would just have a few standard designs. While as a general principle it may be desirable to design the socket to have a constant wall thickness, the design considerations for the socket would surely need to take into account other factors such as the stability of the mounting of the wear member over the nose, ability to handle stress and of course the shape of the adaptor.
In D1 while, the external shape of the wear member is trapezoidal, the shape of the socket appears to be rectangular as seen in figure 3. While Mr Leslie states that it is desirable to provide the socket with the same shape as the external shape of the wear member, he does not state that a person skilled in the art provided with the teaching of D1, would have realised that the rectangular socket shape shown in this teaching was in some way inadequate and would have as a matter of routine changed the shape to trapezoidal to match the external shape of the wear member.

100. Claims 8 and 9 are inventive over D1.
CONCLUSION
101. Claims 1-6, 10, 12-15, 17, 18, 26, 32, 36 and 37 are not novel and lack an inventive step. All the claims are clear, fairly based, useful and directed to a manner of manufacture.
102. As there is clearly patentable subject matter, I allow the applicant two months to file amendments to overcome the adverse findings in this decision.
COSTS
103. In proceedings such as these, costs normally follow the event. The opponent has been successful in this opposition. I therefore award costs according to schedule 8 against the applicant.
R Subbarayan
Delegate of the Commissioner of Patents