CQMS Pty Ltd v ESCO Corporation - [2014] APO 68

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Corporation [2014] APO 68

Patent Application: 2007241122

Title:Wear assembly

Patent Applicant:                   ESCO Corporation
Opponent:  CQMS Pty Ltd
Delegate:  R Subbarayan
Decision Date:  24 October 2014
Hearing Date:  9 September 2014, in Melbourne
Catchwords:  PATENTS - opposition to grant of patent – novelty – other grounds not pressed – claims are novel – costs awarded against opponent

Representation: Patent applicant: Stephen Burley of Counsel assisted by Stephen Worthley and Wayne McMaster of Minter Ellison
Opponent:Sean Cooper of Counsel assisted by Philipp Orth of Fisher Adams Kelly

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007241122

Title:Wear assembly

Patent Applicant: ESCO Corporation
Date of Decision: 24 October 2014
DECISION
The opposition is unsuccessful. The claimed invention is clear, fairly based, novel, inventive and a manner of manufacture. Costs according to schedule 8 awarded against the opponent. The application is to proceed to grant subject to any appeal within the prescribed period.
REASONS FOR DECISION
BACKGROUND

Patent application 2007241122 in the name of ESCO Corporation was filed as a PCT application (PCT/US2007/007872) on 28 March 2007 and claims priority from a US priority application filed on 30 March 2006. It was examined under section 48 of the Patents Act as a modified examination based on granted patent US 7882649. The application was accepted on 26 September 2011. On 13 January 2012, CQMS Pty Ltd filed a notice of opposition to the grant of the patent under section 59 of the Patents Act. The matter was heard in Melbourne on 9 September 2014.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars filed on 12 April 2012 stated that the opponent relies on the grounds of Novelty, Inventive Step, Manner of Manufacture, Clarity and Fair Basis in support of its opposition. However in their written submissions for the Hearing, the opponent advised that they do not wish to press the grounds of Inventive Step, Manner of Manufacture, Clarity and Fair Basis and that they would only be making submissions at the hearing in relation to the ground of Novelty.
EVIDENCE
The opponent’s evidence in support consists of various prior art documents filed as exhibits AL-1 to AL-10 and ADL-11 to ADL-12 and various Novelty Tables prepared in relation to these prior art documents and filed as exhibits ADL-1 to ADL-10 and ADL-13 to ADL-14. These exhibits were annexed to statutory declarations in the name of Adam Luxton, Patent Attorney for CQMS.
ESCO’s evidence in answer consists of a statutory declaration dated 10 October 2013 by Gene Ralph Klett.
CQMS did not file any evidence in reply.
ONUS OF PROOF AND WEIGHT OF EVIDENCE
The examination request for this patent application was filed on 9 September 2008. 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]).
In their written submissions filed before the hearing the opponent argued that while Mr Luxton is not a skilled addressee, he has a degree in Mining Engineering and that the evidence in support provided by him is therefore of a probative nature.
The applicant on the other hand submitted that Mr Luxton is clearly not a skilled addressee and that his declarations are devoid of any discussion on the critical aspects of expert evidence, such as claim construction, common general knowledge and obviousness. They also argued that the isolated novelty tables provided by the opponent are also devoid of any evidence on these issues and that they ignore the broader context of various features in the claims.
At the hearing, counsel for the opponent retracted their earlier submission and stated that their evidence in support were just the various prior art documents annexed to the declarations of Mr Luxton and that the Novelty tables annexed to his declaration were more in the nature of submissions rather than evidence.
I accept that. While Mr Luxton may have qualifications in Mining Engineering there is nothing to suggest that he has relevant experience in the industry to qualify him as a skilled addressee. I therefore intend treating the novelty tables as submissions and nothing more.
The applicant submitted that Mr Klett, their expert declarant is a qualified engineer with 40 years’ experience working for Caterpillar Inc with most of his experience being predominantly in the area of Ground Engaging Tools (GET) and that he therefore clearly qualifies as a skilled addressee. The opponent has not disputed Mr Klett’s credentials and I am also of the view that Mr Klett would clearly be considered a skilled addressee.
SPECIFICATION
The present invention relates to a wear assembly for excavating equipment such as excavating buckets and comprises a replaceable wear member in the form of a ‘point’ or ‘tooth’ that is secured to a nose on the digging edge of the bucket. The wear member is typically elongated with a ground penetrating edge or point at a front end and a mounting portion at the rear end. The mounting portion includes a socket that opens into the rear end and this socket is fitted over the nose and secured in place using a locking mechanism.
In use such wear members are “commonly subjected to harsh conditions and heavy loading” and consequently wear out over a period of time and need to be replaced. The heavy loads experienced by the wear members include vertical loads, side loads and rearward loads and it is therefore important that the wear members are held reliably and stably on the nose. Known arrangements use various stabilizing surfaces at the interface between the socket of the wear member and the nose to stabilize the mounting of the wear member on the nose. It is stated that in one such known arrangement the front end of the nose and the socket are formed as mating parallelepipeds with rectangular shaped stabilizing surfaces.
The present invention is stated to provide an improved arrangement for securing wear members on the nose for “enhanced stability, strength, durability, penetration, safety and ease of replacement”. It achieves this objective through the use of different stabilizing surfaces in the mounting portion of the wear member which bear against complementary surfaces on the nose.
It then describes various arrangements of stabilizing surfaces in the mating interface between the socket and the nose. In most of these arrangements, at least two of the stabilizing surfaces extend axially substantially parallel to the longitudinal axis of the wear member and are at the same time angled to each other in a transverse direction. This arrangement of the stabilizing surfaces can be best seen in figure 14 which is reproduced below:
In the above figure, wear member 12 has a socket 16 with a front end 48 having a lower stabilizing surface 52 and a pair of upper stabilizing surfaces 54. Surfaces 52, 54 extend substantially parallel to the longitudinal axis. Socket 16 then transitions into a larger rear portion 56 defined by an upper surface 64, upper side surfaces 66, lower side surfaces 70 and a bottom surface 68. Side surfaces 70 are substantially parallel to the longitudinal axis. As can be seen in the figure, upper stabilizing surfaces 54 at the front end of the socket are transversely inclined to each other and similarly lower stabilizing surfaces 70 at the rear portion of the socket are transversely inclined to each other. As surfaces 54 and 70 are parallel to the longitudinal axis and also transversely inclined these stabilizing surfaces are able to resist loads acting in the vertical direction and also load acting in the side direction. Loads that shift between vertical and side loads are also better resisted by these surfaces. Making the surfaces parallel to the longitudinal axis is also stated to minimise forward urging of the wear member or in other words from slipping off the nose.
The specification also states that “substantially parallel” in the context of the invention is intended to include parallel surfaces as well as surfaces that diverge rearwardly from the longitudinal axis at a small angle (e.g., of about 1-7 degrees) for manufacturing purposes. This small divergence may also ease removal of the wear member from the nose.
The specification ends with 53 claims including 12 independent claims. Of these only 2 independent claims and some of their dependent claims were the subject of submissions at the hearing. These claims read as follows:
16.A wear member for attachment to excavating equipment comprising a front end to contact materials being excavated and protect the excavating equipment, a rear end, and a socket that opens in the rear end to receive a base fixed to the excavating equipment, the socket having a front portion, a rear portion and a longitudinal axis, the front portion of the socket including a plurality of front stabilizing surfaces, the rear portion of the socket including a plurality of rear stabilizing surfaces, each of the front and rear stabilizing surfaces axially extending substantially parallel to the longitudinal axis to bear against a complementary surface on the base, two of said front stabilizing surfaces being transversely angled to each other, and two of said rear stabilizing surfaces being transversely angled to each other, and each of the transversely angled front and rear stabilizing surfaces being angled so as to resist both vertical and horizontal loading.
17. A wear member in accordance with claim 16 wherein the front stabilizing surfaces transversely angled to each other face generally in one of an upward or downward direction, and the rear stabilizing surfaces transversely angled to each other face generally in the other of an upward or downward direction.
18. A wear member in accordance with claim 16 including an opening for receiving a lock to releasably secure the wear member to the base.
39. A wear assembly for attachment to excavating equipment comprising:
a base fixed to the excavating equipment;
a wear member including front end to contact materials being excavated and protect the excavating equipment, a rear end, and a socket that opens in the rear end to receive a base fixed to the excavating equipment, the socket having a front portion, a rear portion and a longitudinal axis, the front portion of the socket including a plurality of front stabilizing surfaces, and the rear portion of the socket including a plurality of rear stabilizing surfaces, each of the front and rear stabilizing surfaces axially extending substantially parallel to the longitudinal axis to bear against complementary surfaces on the base, two of said front stabilizing surfaces being transversely angled to each other, two of said rear stabilizing surfaces being transversely angled to each other, and each of the transversely angled front and rear stabilizing surfaces are angled to resist both vertical and horizontal loading; and
a lock to releasably secure the wear member to the base.
40. A wear assembly in accordance with claim 39 wherein the wear member includes front stabilizing surfaces transversely angled to each other that face generally in one of an upward or downward direction, and wherein the rear stabilizing surfaces transversely angled to each other face generally in the other of an upward or downward direction.
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".
Although no clarity issues were pressed in relation to independent claims 16 and 39, at the hearing it became clear that there was difference of opinion between the parties in relation to the meaning and scope of certain terms. I will try and resolve these first as they are likely to impact on the determination of the novelty issues.
Transversely angled to each other
The opponent appeared to take the view that as long as the two of said front stabilizing surfaces or two of the rear stabilizing surfaces were in some way angled to each other then this would fall within the scope of this term. For example if two of the stabilizing surfaces were to be angled so as to convergent towards the tip of the wear member, this could be considered as transversely angled to each other. A number of their novelty arguments were premised on such a construction as will become apparent later.
The applicant on the other hand argued that the term should be interpreted as the surfaces being angled to each other in a transverse or crosswise direction.
I agree with the applicant. The plain meaning of the term “transverse” is “lying or being across or in a crosswise direction” (Macquarie Dictionary) and in my view this term imposes the additional limitation that the two surfaces should be angled to each other in a crosswise direction and in the present instance that would mean in a direction that is crosswise to the longitudinal axis of the wear member. Such a construction is also fully consistent with the disclosure in the body of the specification. The opponent’s interpretation appears to not place any limitation on the term “transverse” and this is clearly not in line with the authority that I have stated above.
Horizontal loading
The opponent submitted that the term “horizontal loading” refers to any loading acting in a horizontal direction and therefore would include not only side loads on the wear member but also rearward loads that act on the wear member when the wear member is forced forwardly through the ground since these rear loads also act in a horizontal direction.
The applicant on the other submitted that “horizontal loading” refers only to loads on sides of the wear member and that it should be construed the same as “side loading”.
The reference to horizontal loading appears only in the claims. The body of the specification identifies three types of loads, namely vertical, side and rearward loads and it is made clear that the stabilizing surfaces that are both parallel to the longitudinal axis and transversely angled to each other are capable of resisting only vertical and side loads. Rearward loads are resisted by a dedicated surface at the front of the socket that cooperates with a complementary surface at the front end of the nose. However for some reason, the draftsperson has chosen to use in some of the claims the term “horizontal loading” instead of the term “side loading”.
Whilst I agree with the opponent that the rearward loading also acts in a horizontal direction, in my view this term needs to be interpreted in the context in which it appears in the claims. As both claims 16 and 39 define that each of the stabilizing surfaces are arranged substantially parallel to the longitudinal axis, it follows that these surfaces would not be able to resist any significant rearward loading i.e. horizontal loading acting from the front of the wear member. The claims then define that two of the stabilizing surfaces are transversely angled to each other and that each is angled to resist both vertical and horizontal loading. Having found that transversely angled refers to being angled to each other in a transverse or crosswise direction, this transverse inclination of each of these two surfaces would only be provide the capability to resist horizontal loads acting from the side. Therefore in my view when the term “horizontal loading” in the claims is read in context, the skilled addressee would clearly understand this to be a reference to side loading only and not also include rearward loading.
NOVELTY
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], [1977] HCA 19; 137 CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement"
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full 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.”
At the hearing the opponent stated that they would only be pressing the ground of lack of novelty in relation to claims 16-18 and 39, 40 and that they do wish to press any of the other grounds or particulars that they had raised in their Statement of Grounds and Particulars.
I will now consider each of the prior art documents that the opponent relied upon in their written submissions and at the hearing.
D1: US 6321471
D1 discloses a wear member 17 for attachment to a base 1 of a bucket of an excavator. It includes a socket having a plurality of front stabilizing surfaces that mate with complementary surfaces of the rod 24 on the base. As the stabilizing surfaces of the rod appear to be substantially parallel to the longitudinal axis and at least two of these surfaces are also angled to each other (as seen in figures 17, 18), it follows that the wear member will also have a plurality of front stabilizing surfaces that are substantially parallel to the longitudinal axis and at least two of the surface will be transversely angled to each other and therefore will be able to resist both vertical and side loads. In relation to the plurality of rear stabilizing surfaces, the opponent relied on the surfaces of the internal ribs 55 as constituting the plurality of rear stabilizing surfaces extending parallel to the longitudinal axis. The applicant has not disputed the disclosure of the above mentioned integers in D1.

In relation to the integer of two of the rear stabilizing surfaces being transversely angled to each other, the opponent relied on figure 20 in which it appears that the upper and lower surfaces of the rib 55 may be not be parallel but instead may be angled to each other at a small angle. They submitted that when they measured the angle between these two surfaces, it was approximately between 4-8 degrees and that this angle would be sufficient to give the wear member the ability to resist horizontal loading in addition to vertical loading. Figure 20 is reproduced below:
I can find nothing in the body of the specification of D1 to suggest that the upper and lower surfaces of ribs 55 are angled to each other. The opponent admitted that they are solely relying on the way that the ribs are shown in figure 20 as the disclosure of this feature. While the rib on the right hand side denoted by the numeral 55 may appear to show some slight inclination of the upper and lower surfaces that cannot form the basis for me to conclude that this feature is disclosed.
As stated by Aldous J in Vax Appliances Ltd v Hoover Plc [1991] FSR 307 at 313 and which was quoted with approval by the Full Federal Court in Leonardis v Sartas No 1 Pty Ltd and Another (1996) 35 IPR 23:
"patent drawings are not designed to be used to denote precise measurements unless so stated. They are there to illustrate the concept and the overall relationship of the parts."
If I look at figure 6, the groove 22 which mates with rib 55 clearly shows the upper and lower surfaces as being parallel to each other. Even in figure 20, the upper and lower surfaces of the left side rib appear to be parallel to each other. Without some sort of written disclosure to support the opponent’s contention, I cannot be satisfied that the upper and lower stabilising surfaces of the ribs are transversely angled to each other. This integer is not disclosed in D1.
Claims 16, 39 and their dependent claims are therefore novel over D1.
D2: US 5709043
D2 discloses a wear member 12 with a rearwardly opening socket 16 for attachment to a base 13 of a bucket of an excavator. It includes a plurality of front stabilizing surfaces 68 that are substantially parallel to the longitudinal axis and would therefore be capable of resisting vertical loads. It also has a plurality of rear stabilizing surfaces 72 that extend parallel to the longitudinal axis and are also transversely angled to each other and because of this arrangement they would inherently be capable of resisting both vertical and side loads even though this is not explicitly stated in the body of the specification. The applicant has not disputed the disclosure of these integers. These surfaces can be best seen in figure 3 as shown below:
In relation to the integer of the front stabilizing surfaces being transversely angled to each other to resist horizontal loading, the opponent presented two different arguments.
Firstly they submitted that although front surfaces 68 extend substantially parallel to the longitudinal axis, D2 states that this is intended to include a construction where the surfaces diverge rearwardly at a small angle (e.g., of about 1-7 degrees) and with such a construction, the front surfaces would be able to resist both vertical and horizontal (rearward) loading.
I am not convinced. With such a construction, although surfaces 68 would be angled to each other, the subtended angle will not be in a transverse direction in the manner that I have interpreted this term earlier. Also it would not be capable of resisting horizontal side loads, again in line with my earlier interpretation of this term. This argument therefore fails.
Secondly the opponent submitted that D2 states that the stabilizing surfaces 68 need not be flat, but could also include bearing surfaces that are arcuate to have broad convex or concave shapes and with such a construction of the surfaces they would be transversely angled to each other.
Again I am not convinced. While it is possible that with a suitable arcuate curvature in the transverse direction, the surfaces could be considered to be transversely angled to each other, that does not amount to “clear and unmistakeable directions” to use stabilizing surfaces that are transversely angled to each other to resist both vertical and side loading. There is no teaching to that effect in D2. Mr Klett, the only expert declarant in these proceedings has also stated in paragraph 5.3 of his declaration that in his view “There are therefore no transversely inclined stabilizing surfaces located at the front portion of the socket, which could resist both vertical and side loads”.
Claims 16, 39 and their dependent claims are therefore novel over D2.
D3: US 4404760
D3 discloses a wear member 22 with a rearwardly opening socket 26 for attachment to a base 21 of a bucket of an excavator. The base has a nose 27 having a forward portion 32 which is stated to act as a stabilization surface. The major portion of the nose is constituted by rounded surfaces 31 lying on a surface of revolution which may have a inclination of 2 degrees towards the front of the nose. These rounded surfaces are separated by rails 29 which appear to be rearward extensions of the surfaces 32. The socket 26 of the wear member has corresponding surfaces to those of the base. The surfaces of the base can be best seen in a part of figure 2 and is reproduced below:
The opponent submitted that as the top and bottom surfaces of the portion 32 have a slight convergence towards the front of the wear member, they can be considered to be substantially parallel to the longitudinal axis and also transversely angled to each other and would therefore be capable of resisting vertical and rearward horizontal loads. They also put forth a similar argument in relation to surfaces 31 which correspond to the rear stabilizing surfaces.
Based on my interpretation of the terms “transversely angled” and “horizontal loading”, clearly the surfaces 32 and surfaces 31 are not transversely angled to each other to resist both vertical and horizontal loading. This is consistent with the views expressed by Mr Klett.
Claims 16, 39 and their dependent claims are therefore novel over D3.
D5: US 7100315
D5 discloses a wear member 12 with a rearwardly opening socket 53 for attachment to a base 18 of a bucket of an excavator. The opponent submitted that the front surfaces 78, 79 shown in figures 12, 13, correspond to the front stabilising surfaces. These surfaces because of their slight inclination towards the longitudinal axis can be considered to be both parallel to the longitudinal axis and transversely angle to each other and would therefore be capable of resisting both vertical and rearward horizontal loading. This argument is similar to that presented in relation to surfaces 68 of D2. For reasons already given in respect of D2, this argument must fail. The integer of at least two front stabilizing surfaces that extend substantially parallel to the longitudinal axis and are also transversely angled to each other to thereby resist both vertical and side loading is not disclosed. This is again consistent with the views expressed by Mr Klett.
Claims 16, 39 and their dependent claims are therefore novel over D5.
D6: US 6430851
D6 discloses a wear member 14 with a rearwardly opening socket 54 for attachment to a base 26 of a bucket of an excavator. The wear member has a broadly rhombus-shaped cross-section with front stabilizing surfaces 62, 72 and rear stabilizing surfaces 64, 66, 74, 76 that bear against complementary surfaces of the base. Based on the depiction of the base in figures 4-8, the opponent had measured certain angles of the base and using trigonometric equations derived that the rear surfaces converged toward the front at around 7 degrees and this they submitted fell within the scope of substantially parallel to the longitudinal axis. They also submitted that the front surfaces are also seen to be angled slightly towards the longitudinal axis although they admitted that there is no disclosure in the body of the specification to support this. Figure 6 showing the stabilizing surfaces in the base is reproduced below:
While the rear surfaces are transversely angled to each other, there is no teaching in the description that these surfaces are parallel to the longitudinal axis. On the other hand these surfaces are clearly shown as converging towards the longitudinal axis. While the opponent submitted that the convergence was less than 7 degrees, as discussed earlier, patent drawings are not designed to be used to denote precise measurements unless so stated. Without some clear and unmistakeable teaching in the document, I am not satisfied that the integer of the rear surfaces being substantially parallel to the longitudinal axis is disclosed. For the same reason the portions of the surfaces 64, 66, 74, 76 that are located in front part of the socket cannot also be considered to front stabilising surfaces that extend substantially parallel to the longitudinal axis. Also the stabilising lands 62, 72 are clearly not transversely angled to each other.
Claims 16, 39 and their dependent claims are therefore novel over D6.
D7: US 3675350
D7 discloses a wear member 12 with a wedge-shaped socket 56 for mounting over a base 10. The socket includes upper and lower central ledges 74, 76 with upper and lower flat surfaces 78, 80 extending parallel to the longitudinal axis. These upper and lower flat parallel surfaces have rounded surfaces at their lateral sides before they become vertical surfaces. This can be best seen in figure 4 that has been reproduced below. The opponent relied on the rounded or radiused surfaces as the disclosure of the front and rear stabilising surfaces that extend substantially parallel to the longitudinal axis and transversely angled to each other so as to have the capability to resist vertical and horizontal loads. In response to the applicant’s submission that these rounded surfaces do not bear against corresponding surfaces of the base as can be clearly seen in figure 4, they argued that that while this was true, these surfaces still had the capability to bear against corresponding surfaces of a suitably designed base and when used with such a base would inherently become stabilizing surfaces capable of resisting vertical and horizontal loads.
In my view this is not sufficient to satisfy the requirement for clear and unmistakeable direction to do what the claimed invention does. The clear teaching in D7 is for the surfaces 78, 80 and their rounded corners to be spaced from corresponding surfaces on the base. I can find nothing in D7 that would lead a skilled addressee to go against this teaching and use these surfaces as stabilizing surfaces. The integer of front and rear stabilizing surfaces that are transversely angled to each other and can bear against complementary surfaces on the base is not disclosed in D7. Mr Klett has also expressed similar views.
Claims 16, 39 and their dependent claims are therefore novel over D7.
D8: WO 2004/057117
D8 discloses a wear member 2 with a socket 7 for mounting over a base 3. The wear member and base include a plurality of stabilizing contact surfaces 10 that bear against each other. These contact surfaces include radial corners that extend longitudinally both at the front and at the rear and the opponent argued that these radial corners are transversely inclined to each other and would be therefore capable of resisting vertical and horizontal loads. These surfaces can be best seen in figures 2, 4a and 4b. Figure 2 that shows the stabilizing surfaces on the base 12 is reproduced below:
While the surfaces 10 at the front of the socket appear to be extending substantially parallel to the longitudinal axis, the same cannot be said of the surfaces 10 at the rear of the socket. As can be seen in figure 12, the stabilizing surfaces at the rear portion of the socket converge towards the front of the socket. While the opponent argued that the angle of convergence is low enough to be considered to be substantially parallel, I am not convinced. There is a clear disclosure in page 28, lines 12-19, that the mating interface between the wear member and the base is wedge-shaped or beak-shaped as seen in figure 2. I can therefore find no basis to conclude that this angle would be less than 7 degrees and could therefore fall within the scope of extending substantially parallel. The integer of rear stabilizing surfaces that are substantially parallel to the longitudinal axis is not disclosed.
Claims 16, 39 and their dependent claims are therefore novel over D8.
D9: WO 2005/080695
D9 discloses a wear member 13 with a wedge-shaped socket 16 for mounting over a base 12. Upper and lower faces of the socket include bearing surfaces that bear against corresponding surfaces on the base. Some of the surfaces on the upper face appear to be transversely angled to each other as can be seen from figure 8 and also from the shape of the nose as shown in figure 4. In relation to the integer that the front and rear stabilising surfaces extend substantially parallel to the longitudinal axis, the opponent submitted that as the fins 19 extend rearward of the socket 16, the longitudinal axis would be a line passing through the tip of the wear member and through the centre of the housing seating 20 for the pin 17 as seen in figure 3. With such a longitudinal axis, it was their view that the upper stabilising surfaces would be inclined at an angle less than 7 degrees and therefore these could be considered to be extending substantially parallel to the longitudinal axis. Figures 3 and 4 are reproduced below:
Given that the fins 19 are not part of the socket, it is my view that the longitudinal axis of the socket would be the line passing through the tip and the mid-point of section CC shown in figure 3. But even if I were to accept the opponent’s view, I am still not satisfied that the upper surfaces could be considered substantially parallel to this axis. In line with the authorities that I have quoted earlier, patent drawing are for the purpose of depicting the overall relationship of parts and not for denoting precise measurements unless so stated. There is no such statement in D9.
Claims 16, 39 and their dependent claims are therefore novel over D9.
D10: AU 2007218013
This document in the name of ESCO Corporation was filed on 14 February 2007 and published on 30 August 2007, both of these dates being after the priority date of the application in suit. However it claims a priority date of 17 February 2006 which is earlier than that of the application in suit. The opponent therefore submitted that this document was relevant prior art for “whole of contents” novelty.
The applicant submitted that the opponent’s attack relying on D10 must fail because they have failed to establish the essential requirements of the definition of the prior art base for D10, namely that D10 has information that could be the subject of a notional claim having priority over the claims under consideration. As the opponent has failed to file a copy of the priority document of D10, there is no way to establish that any notional claims of D10 would be entitled to an earlier priority.
I agree. This entitlement to an earlier priority is critical to the issue of “whole of contents” novelty. Unless I am satisfied that any notional claims of D10 are entitled to this earlier priority I cannot find that D10 anticipates claims 16 and 39 even if it does disclose all of the features of these claims. The Commissioner has not been provided with a copy of the priority document and despite the applicant’s submissions on this issue, the opponent provided no explanation as to why they haven’t done so. They also did not make any attempt at the hearing to file this priority document as further evidence. The opponent would be well aware that they need to file copies of documents that they intend to rely on. In this case, they needed to file the priority document and establish that the information in D10 that they intend to rely on is entitled to an earlier priority. I can only surmise that they did not do this as they did not think that their case in relation to D10 was strong, but at the last minute changed their mind. Whatever the reason may be, the fact remains that the opponent has not established that the relevant information in D10 is entitled to an earlier priority.
The applicant also made an issue of the fact that the opponent had not presented any notional claims based on the relevant information in D10, which would be fairly based on the body of the specification. They referred to E I Du Pont de Nemours and Company v ICI Chemicals & Polymers Limited [2005] FCA 892 in which they stated Emmett J had held that it was necessary to formulate a notional claim which would then stand as the point of reference for considerations of novelty of the relevant claim in the patent presently of interest.
Although the opponent did not present any notional claims, I do not need to decide on this point, as I have already found that the opponent has failed to establish that the relevant information in D10 would be entitled to an earlier priority.
I therefore necessarily find that claims 16 and 39 are novel over D10.
Notwithstanding this, I will still consider whether D10 discloses all of the features of claims 16 and 39. Such a determination will assist the Commissioner to decide whether, in the public interest, she should consider re-examination of this application based on the disclosure of D10, if and when the application proceeds to grant.
As mentioned earlier D10 is also in the name of present applicant and some of passages in this document have fairly strong similarities to those in the specification of the present application. It discloses a wear member 12 with a socket 70 that is secured over a base 14. The rear portion of the socket includes stabilizing surfaces 110-117 that bear against complementary surfaces 40-47 on the base and are also explicitly stated to extend substantially parallel to the longitudinal axis. Also some of these surfaces are transversely angled to each other. For example surfaces 110, 111 at the top of the socket and surfaces 112, 113 at the bottom of the socket are clearly transversely angled to each other as can be seen in figure 7. There is also an explicit disclosure in paragraphs 34, 35 that these surfaces resist both vertical and side loads.
The socket includes a front end 94 having top and bottom stabilizing surfaces 90, 92 that are curved and join each other at their sides to form a generally elliptical surface that extends around the entire front end. These surfaces 90, 92 are stated to extend substantially parallel to the longitudinal axis and to be capable of resisting vertical loads (paragraph 34). Also similar to the application in suit, it further states that these surfaces while being substantially parallel, can also be slightly forwardly convergent. The side portions of surfaces 90, 92 are also clearly stated to be capable of resisting side loads (paragraph 42). Figure 7 that shows these stabilizing surfaces is reproduced below:
Therefore the only integer that is not explicitly disclosed in D10 is the feature that two of the front stabilizing surfaces are transversely angled to each other. The opponent argued that this feature is disclosed in D10 and provided two alternate reasonings in support.
Firstly they argued that as the surfaces 90, 92 are slightly forwardly convergent, they are transversely angled to each other as required by the claims. However as discussed under claim construction, I do not consider this as being transversely angled and therefor this line of attack fails.
Secondly they provided a new argument at the hearing that it is possible to notionally split the surfaces 90, 92 into two halves by a vertical plane extending through the longitudinal axis and that each of the halves in each of surfaces 90, 92 could then be considered to be transversely angled to each other. While they accepted that each of these halves would still be arcuate or curved rather than planar, they were of the view that this would still be within the scope of the claims as even the application in suit contemplates such a curvature for the front stabilizing surfaces. In particular they referred me to paragraph 59 of the specification in suit where in relation to the front stabilizing surfaces, it states “In another example, although planar surfaces are preferred, the inclined surfaces may be curved to define, for example, a generally hemispherical shaped front end”. It was their view that this was a clear teaching that a plurality of curved surfaces would constitute a single continuous surface and therefore it is legitimate to dissect each of the curved stabilising surfaces 90, 92 in D10 into at least two notional curved surfaces.

D10 refers to only two front stabilizing surfaces, an upper one 90 and lower one 92 and while they could be considered to be angled to each where they meet at the sides, I do not consider that this falls within the meaning of “transversely angled” that I have discussed earlier. Although it may be possible to notionally bisect at least one of these surfaces into right and left stabilising surfaces which could be considered to be transversely angled to each other in the sense of the present application, that is not what this document teaches. While there is a clear teaching in D10 that each of the upper and lower front stabilising surfaces extends substantially parallel to the longitudinal axis and is capable of resisting both vertical and side loads, such clear teaching does not extend to the notion of having two front stabilizing surfaces that are transversely angled to each other. Mr Klett is also of the same view.
In relation to paragraph 59 of the application in suit, while there is a reference that the front stabilizing surfaces could be curved, that is only stated to be a configuration of one non-illustrated embodiment. Almost all of the other examples described and illustrated in the specification show the front transversely inclined stabilizing surfaces as being substantially planar surfaces and in my view that is the way a skilled addressee would interpret the front stabilizing surfaces in the context of the requirement in the claims for the two front stabilizing surfaces to be angled to each other..
In my view D10 does not give clear and unmistakeable directions to do what the applicant has done. It would not anticipate claims 16 and 39 even if the relevant information in D10 would be entitled to a priority earlier than the claims under consideration.
INVENTIVE STEP
No inventive step submissions were made in relation to any of the claims and nor has the opponent filed any expert evidence in relation to this ground. Mr Klett is of the view that the claims are inventive. I have no basis to find that any of the claims lack an inventive step.
CLARITY, FAIR BASIS AND MANNER OF MANUFACTURE
The opponent stated at the hearing that they do not wish to press these grounds of opposition any longer. They have also not filed any evidence or submissions in relation to these grounds. I find that the claims are clear, fairly based and for a manner of manufacture.
CONCLUSION
None of the grounds of opposition have been made out. The claimed invention is clear, fairly based, novel, inventive and a manner of manufacture. I direct that the application proceed to grant subject to any appeal within the prescribed period.
COSTS
Costs normally follow the event and I see no reason to depart from this practice. I award costs according to schedule 8 against the opponent CQMS Pty Ltd.
R Subbarayan
Delegate of the Commissioner of Patents