CQMS Pty Ltd v ESCO Corporation - [2019] APO 24

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Corporation [2019] APO 24

Patent Application: 2013200095

Title:Wear assembly

Patent Applicant:                   ESCO Corporation
Opponent:  CQMS Pty Ltd
Delegate:  R Subbarayan
Decision Date:  21 May 2019
Hearing Date:  Written submissions completed 22 January 2019

Catchwords:  PATENTS – section 59 – final determination – amendments overcome deficiencies identified in previous decision – application to proceed to grant – costs awarded against opponent

Representation: Patent attorney for the applicant: Minter Ellison
Patent attorney for opponent: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013200095

Title:Wear assembly

Patent Applicant: ESCO Corporation
Date of Decision: 21 May 2019
DECISION
The amendments to the specification overcome the deficiencies identified in the first decision in this s59 opposition and do not introduce new deficiencies.
Subject to an appeal of this decision, I direct the application proceed to grant.
Costs according to Schedule 8 are awarded against CQMS Pty Ltd.
REASONS FOR DECISION
BACKGROUND

Patent application 2013200095 in the name of ESCO Corporation (ESCO) was filed on 8 January 2013 as a divisional application of AU 2011201135 and through this parent application claims an earlier priority date of 30 March 2006. It was advertised as accepted on 2 October 2014.
Grant of the patent was opposed under section 59 of the Patents Act 1990 by CQMS Pty Ltd (CQMS) and Caterpillar Inc. (Caterpillar). The matter was heard and in the decision published on 19 December 2016[1] (the first decision), I found that claims 7-10 were not novel and lacking in inventive step in light of the opposition by CQMS. As is usual in such matters before the Commissioner, Esco was allowed a period of time to propose amendments to the claims to overcome this deficiency. ESCO did so and following an unsuccessful opposition to the proposed amendments by CQMS, the amendment was allowed and the details of the allowance were advertised on 31 May 2018.
[1] CQMS Pty Ltd v ESCO Corporation; Caterpillar Inc. v ESCO Corporation [2016] APO 87
CQMS requested to be heard before the s59 opposition was finally determined and the hearing took place by way of written submissions that were filed on 20 December 2018 and 22 January 2019.
The First Hearing and Decision
In the first decision I found that independent claim 7 and its dependent claims 8-10 lacked novelty over prior art document US 2397521 (Askue).
Claim 7 was as follows:
7. A wear member for attachment to excavating equipment comprising a socket to receive a base fixed to the excavating equipment, the socket having a front portion, a rear portion and a longitudinal axis, the front portion of the socket including a plurality of front stabilizing surfaces, the rear portion of the socket including a plurality of rear stabilizing surfaces, each of the front and rear stabilizing surfaces axially extending at an angle of no more than about seven degrees to the longitudinal axis to bear against a complementary surface on the base, wherein two of said front stabilizing surfaces face downward and are transversely angled to each other to resist both vertical and horizontal loading, and two of said rear stabilizing surfaces face upward and are transversely angled to each other to resist both vertical and horizontal loading.
US 2397521 (Askue)
Figures 3, 4, 5, 7, 8 and 10 of Askue are reproduced below:
Askue discloses a wear member 30 (figure 4) that is fitted over a shank or nose 23 of the tooth base (figure 3) and held thereon by frictional engagement. The assembled wear assembly is shown in figure 5 with figures 7 and 8 showing cross-sections of the assembly taken along lines 7-7 and 8-8. The upper and lower walls 24 and side walls 25 of the shank are tapered at an angle A in the range 4°-10°. Similarly the upper and lower walls 34 and side walls 35 of the socket 31 of the wear member are tapered at an angle B which is ½-2° less than the angle of the shank. The sidewalls of the shank are tapered or bevelled inwardly and toward the upper and lower walls while the side walls of the socket are arcuate as can be seen in figures 3 and 4 respectively. The widths of the shank and the socket are so related to “insure contact between all four corners of the shank and the walls of the socket prior to engagement of the top and bottom surfaces thereof”. This contact between the corners and the walls can be clearly seen in figure 8.
While not illustrated, Askue states that the side walls of the socket can also be inwardly tapered similar to the shank. If one were to adopt this teaching of Askue and make the side walls of the socket also to be inwardly tapered similar to the shank, the socket would have upper side walls that face downward and are transversely angled to each other and lower side walls that face upward and are transversely angled to each other with each of these upper and lower side walls extending at an angle of no more than 7° to the longitudinal axis.
While it would appear that the contact with the corners of the nose would only be a line contact, there is clear teaching in Askue that because of this initial contact between the corners and the walls of the socket, the “tip is held firmly against rocking movements on the shank”. Therefore the inwardly tapered sidewalls 35 in the front half of the socket clearly act as front stabilizing surfaces that bear against a complementary surface on the nose.
It is furthermore clear that the corners of the shank also contact the side walls of the socket in the rear portion of the socket. Therefore the lower inwardly tapered sidewalls in the rear portion of the socket constitute rear stabilizing surfaces that face upwardly and are transversely angled to each other.
While there is no clear teaching in Askue that the inwardly tapered side walls of the socket would resist both vertical and horizontal loading, it is inherent with such a tapered construction, that the side walls would resist at least a part of both vertical and horizontal loading.
I was therefore satisfied that following the teachings of the tapered sidewalls alternative of Askue, one would inevitably arrive at the invention of claim 7, which was therefore not novel.
The Amendments to Claim 7
In response to the adverse finding in my first decision ESCO amended claim 7 by adding a new feature. Amended claim 7 is as follows with the new feature underlined:
7. A wear member for attachment to excavating equipment comprising a socket to receive a base fixed to the excavating equipment, the socket having a front portion, a rear portion and a longitudinal axis, the front portion of the socket including a front surface to bear against a front surface on the base and a plurality of front stabilizing surfaces, the rear portion of the socket including a plurality of rear stabilizing surfaces, each of the front and rear stabilizing surfaces axially extending at an angle of no more than about seven degrees to the longitudinal axis to bear against a complementary surface on the base, wherein two of said front stabilizing surfaces face downward and are transversely angled to each other to resist both vertical and horizontal loading, and two of said rear stabilizing surfaces face upward and are transversely angled to each other to resist both vertical and horizontal loading.
Is Amended claim 7 novel and inventive over Askue?
Amended claim 7 includes the new feature that the front portion of the socket includes a front surface that can bear against a front surface on the base when it fitted over the base.
The opponent accepted that this feature is not disclosed in Askue, but submitted that amended claim 7 still lacks novelty over Askue on the basis that this new feature is not an essential feature of the claim. Their submissions in support of this contention can be summarised as follows:
·The primary focus of the invention is related to the way particular surfaces on the wear member interact with particular surfaces on the base, to bear vertical and side loads that the wear member is subjected to during use.
·Only features that materially affect the ability of the surfaces in the wear member socket and on the base to bear vertical and side loads can be considered to be "essential" features of the invention.
·The two front stabilising surfaces that face downward and transversely angled to each other and the two rear surfaces that face upward and are transversely angled to each other are the surfaces that operate to resist both vertical and side loading. These are therefore essential features of the claimed invention
·On the other hand, the front surface in the socket interacts with a front surface on the base only for the purpose of bearing rearward/axial loads. This front surface therefore does not materially affect the ability of the wear member to bear vertical and side loads.
·The front surface is therefore not an essential feature of the claimed invention.
·This is further supported by the fact that claim 1 does not include this feature.
The applicant’s submissions in rebuttal can be summarised as follows:
·A proper reading of the specification makes clear that the invention is not limited to addressing vertical and side loads.
·The Opposed Application describes a number of design aims for the wear members such as strength, stability, durability, penetration, safety, and/or ease of replacement (paragraph [05]).
·While the provision of the front and rear stabilising surfaces is intended to improve the bearing of vertical and side loads, these features are part of an overall system that seeks to provide an improved wear member.
·The specification makes it clear that “the primary directions in which excavating teeth are commonly loaded are rearward and downward”[2]
·It is the bearing between the front surface of the wear member and the front face of the nose that primarily resists these rearward loads.
·Therefore, the front surface of the wear member and front face of the nose have an important role to play in the overall stability of the wear member in operation.

·It is not the case that a feature which is essential to one claim must necessarily be essential to all of the claims.
[2] Specification at [56]
The law in relation to what makes a feature an essential feature of the claimed invention is set out in Catnic Components v Hill & Smith Ltd (1982) RPC 183 at 228 where it was stated:
“I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) if the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim. But (3), all claims are not perfectly framed. Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly. In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it. (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger all assume that a claim may include an inessential feature”.
While I accept that the two front surfaces and the two rear surfaces are defined as being provided to resist vertical and horizontal (side) loading, as noted by the applicant, one of the objects of the invention is to more broadly improve the stability of the wear member as a whole on the base[3]. Such stabilising would require not only the ability to resist vertical and side loads but also axial loads as during operation the wear member will be subjected to all three types of loading.
[3] Specification at [06]
Furthermore, it would be well understood, that the loads on the wear member do not always act exactly along the three coordinate axes i.e. vertical, horizontal (side) and axial. For example, the wear member could be subjected to a load which is angled slightly forward of vertical. Such a load, while being predominantly vertical, would also include a component that is axial. The bearing of the front surface of the socket on the front surface of the base will assist in resisting such axial loading. I do not therefore accept the opponent’s argument that the newly added feature of the front surface will have no role in resisting vertical and side loads. The applicant has clearly chosen to include this feature in claim 7 and there is also nothing in the specification that would clearly suggest that this is not an essential feature of the invention.
The fact that this feature is not defined in claim 1 is not in my view relevant when assessing the essential features of claim 7. Different independent claims can often be directed to different aspects of the invention. For example, claim 1 of the present application, requires first stabilising surfaces located outside of the socket to provide additional stabilisation, but this does not mean that this feature should also be present in claim 7.
In my view, the newly added feature of front surface that is configured to bear against a front surface on the socket is an essential and limiting feature of claim 1.
In Askue, the front surface of the socket is not designed to bear against the front surface of the base as can be clearly seen from figures 5 and 10 reproduced earlier. This new feature of claim 7 is clearly not disclosed in Askue. Claim 7 and its dependent claims are therefore novel over this document.
The opponent did not file any submissions as to whether claim 7 would lack an inventive step over Askue, if I were to find that claim 7 is novel. There is also nothing in the evidence filed in relation to the first decision that would lead me to conclude that the provision of the front surface to bear against the front surface of the base was common general knowledge and would have been an obvious thing to do in the teachings of Askue. I have therefore no basis to find that amended claim 7 lacks an inventive step.
CONCLUSION
The amendment to claim 7 overcomes the lack of novelty finding in my first decision. I therefore direct that the application proceeds to grant.
COSTS
Costs normally follow the event and I see no reason to depart from this normal practice. I award costs as per schedule 8 against CQMS.
R Subbarayan
Delegate of the Commissioner of Patents