CQMS Pty Ltd v ESCO Group LLC - [2023] APO 13

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2023] APO 13
Patent Application: 2014240371

Title:Wear assembly removal and installation

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date: 2 March 2023

Hearing Date: Written submissions filed on 2 November 2022, 23 November 2022, 5 December 2022

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: MinterEllison
Patent attorney for the opponent: James & Wells

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2014240371

Title:Wear assembly removal and installation

Patent Applicant: ESCO Group LLC
Date of Decision: 2 March 2023

DECISION
The amendments to the specification overcome the deficiencies identified in the first decision in this section 59 opposition and do not introduce new deficiencies.
Subject to appeal, I direct that the application proceed to grant.
I award costs according to Schedule 8 against CQMS Pty Ltd.

REASONS FOR DECISION
Background

This matter relates to patent application 2014240371 (the Application) in the name of ESCO Group LLC (the Applicant).
Following an opposition by CQMS Pty Ltd (the Opponent), I, as a delegate of the Commissioner of Patents, issued a decision CQMS Pty Ltd v ESCO Group LLC [2020] APO 24 (the first decision) on 22 May 2020. In the first decision, I found that some of the claims lacked novelty and an inventive step.
The Applicant was given two months to propose suitable amendments to overcome this finding. The Applicant filed amendments on 9 July 2020 (the first amendments).
The first amendments were opposed by the Opponent and on 16 February 2022, I issued a decision CQMS Pty Ltd v ESCO Group LLC [2022] APO 9 (the second decision) in which I found that the amendments were not allowable and I gave the Applicant two months to propose amendments to overcome the findings in the first decision.
On 15 March 2022, the Applicant filed amended claims (the second amendments). The second amendments were advertised on 19 May 2022 and, there being no opposition to them, the amendments were allowed on 1 August 2022.
The parties were notified that the opposition was due for final determination and were asked whether they wished to be heard. Both parties indicated that they wished to be heard, and both wanted the hearing on the basis of written submissions.
On 14 October 2022 a Delegate directed a timetable for submissions as follows:
·“The Opponent’s submissions in support are due three weeks from the date this direction is made;
·The Applicant’s submissions in answer are due three weeks from the date the Opponent’s submissions are filed; and
·The Opponent’s responding submissions are due two weeks from the date the Applicant’s submissions in answer are filed.”
The Opponent filed submissions in support on 2 November 2022. The Applicant filed submissions in answer on 23 November 2022. The Opponent filed responding submissions on 5 December 2022.
Further submissions
On 21 December 2022 the Applicant filed further submissions with an accompanying letter. The Applicant requested the following:
“To ensure that natural justice is preserved for the opposition to grant of the present application, the Applicant requests that the Commissioner give a direction in accordance with Reg. 5.22 that allows the Applicant to file submissions in reply to the Opponent's Submissions in Reply (Further Reply Submissions) that correct the Opponent's statements that are factually inaccurate.”
The direction requested by the Applicant was not made by the Delegate. I have reviewed the further submissions and I am not satisfied that the information conveyed is anything more than that which has already been articulated in the Applicant’s previous submissions. Consequently, I will not rely upon these further submissions.
Applicable Law
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision. Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the previous decision and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification. That is, pre-existing deficiencies are excluded (Iluka Midwest Ltd v Technological Resources Pty Ltd, [2002] FCA 1233 at [34]).
The first hearing and decision
In the first decision I found that:
·Claims 1 and 21 lacked novelty in light of Derycke. Claims 1 and 21 lacked an inventive step in light of Derycke (US 2013/0045055).
·Claims 1, 4-12, 16, 17, 20-23, 25-30, 32 and 33 lacked an inventive step in light of Dietens (EP 1 522 636).
Amendments
The amendments proposed on 9 July 2020 were found not allowable in the second decision because claim 36 was not allowable. Following the second decision the applicant filed amendments on 15 March 2022 which were essentially the same amendments of 9 July 2020 except that claim 36 was removed.
A marked-up version of the amendments proposed 15 March 2022 to claim 1 are as follows:
1. A tool for replacing a wear member secured to earth working equipment operating in a land‐based mine, the earth working equipment including a base, a wear member mounted on the base, and a retainer to hold the wear member to the base, the tool comprising:
at least one auxiliary tool to hold the wear member mounted on the earth working equipment, and to release the retainer;
a single manipulator movably supporting the at least one auxiliary tool, wherein the manipulator and the at least one auxiliary tool cooperate to release the retainer and remove the wear member from the base of the earth working equipment, and cooperate to install a second wear member on the base and secure a second retainer to hold the second wear member to the base;
a controller to direct the movements of the at least one auxiliary tool and the manipulator; and
a mobile base to support and have the capability to move the at least one auxiliary tool and the manipulator to different locations within a land‐based mine, including from a first location away from the earth working equipment with the wear member to a second location suitable for replacement of~~the earth working equipment with~~ the wear member.
Purpose of the amendments
The purpose of the amendments is to overcome the novelty and inventive step deficiencies identified in the first decision.
The purpose of adding the feature of the mine being “land-based” is to differentiate the claims from Dietens, since Dietens is a water-based mining tool.
The purpose of adding the feature of moving the “auxiliary tool and the manipulator” from a first location “away from the earth working equipment” to “a second location suitable for replacement…” is intended to differentiate from Derycke since Derycke has the “auxiliary tool and the manipulator” which moves an indeterminate distance.
Comments on the allowability decision (the second decision)
Prior to amendment of the claims the mobile base moved from a “first location” to the “earth working equipment”. It was not defined how far apart these locations were. Thus, the claims prior to amendment encompassed the locations being either close or far apart.
In the second decision I found that the inclusion of the feature of “capability to move…” did not change the scope of the claims. I also found that the feature of “location suitable for replacement of the wear member” did not change the scope of the claims from the previously defined “the earth working equipment”.
Although these two aspects of the claim remain unchanged as a result of the amendment, this does not mean all aspects of the claim remain unchanged. The amendments have added the feature that the locations which the mobile base moves from and to are “different” and “away from” one another.
Derycke
Are the locations which the mobile base moves in Derycke “different” and “away from” one another?
The Opponent’s submissions in support state at paragraphs 38 to 42:
“The Second Amendments Do Not Overcome the Deficiencies Based On Derycke
CQMS contends that the Second Amendments do not overcome the adverse findings in the First Decision based on Derycke and that claims 1 and 21 continue to lack novelty and an inventive step in light of the disclosure of Derycke.
In respect of the First Derycke question, the Second Amendments do nothing to disturb the Delegate’s findings of fact that the tunnel boring machine disclosed by Derycke is an earth working machine operating in a mine. In other words, the amendments do nothing to transformthe invention as claimed in claims 1 and 21 away from being directed to “earth working equipment operating in a mine.” The amendment of claim 1 to include the words “land-based” to the preamble has no effect on this assessment given that it was accepted by ESCO and CQMS, and more importantly the Delegate, that the invention disclosed in Derycke operates in a “land-based” environment as it is a tunnel boring device.
In respect of the Second Derycke Question, the amendment made to the “mobile base” of claim 1 do nothing to disturb the Delegate’s finding at [56] of the First Decision that the “‘handling robot’ or ‘pulley block’” disclosed by Derycke “is a mobile base” according to claim1 of the Application.
The finding of the Delegate in the 104 Decision was that identical amendments proposed by the First Amendments to the feature of the “mobile base” resulted in a claim to a “tool” having a “mobile base” having the same scope as the scope of the claim prior to that amendment. If the scope of the claim after the amendment is the same - not greater, not lesser and not different - when compared with the claim scope prior to the amendments, then the amendments can have no utility in curing the defects identified by the Delegate in this regard. Everything that infringed prior to the Second Amendment continues to infringe after the Second Amendment was entered in so far as the “mobile base” feature is concerned.
As a consequence, claims 1 and 22, as amended by the Second Amendments, still lack novelty and inventive step in light of Derycke.”
Derycke states at paragraph 74:
“The delivery of the handling device can be carried out in a semi-automated manner by means of a pulley block, or in a completely automated manner, through the use of a handling robot.”
Derycke states at paragraphs 166 to 171:
“In the example illustrated in FIG. 9 (as well as in FIG. 10A, where it is shown in perspective with the roller cutter), the case 31 of the handling device is surrounded by an arch 38 which is designed to be hooked to a pulley block (not shown).
This corresponds to a semi-automated embodiment, which can be implemented for example in degraded mode, during maintenance operations.
As for FIG. 10B, it illustrates an embodiment of the handling device 3 designed to be mounted on the terminal part of a robotic handling effector, which is preferentially used for the operation of the tunnel boring machine.
Only a forward plate 42 of the handling robot is shown in this figure, which has a recess for receiving the handling device.
Said robot is particularly moved in translation along the axis of the housing, and has means for controlling the handling device.
The handling device 3 is connected with the plate 42 by a hexapod type jack assembly 41 which makes it possible to move the device 3 for the purpose of locking it on the housing, then withdrawing it.”
In their submissions to the s 59 opposition, the Opponent stated in relation to the last feature of claim 1:
“Derycke discloses that the handling device is ‘delivered’ to the location where the wear part must be replaced: Col 4 lines 18-21.
For such delivery to occur, the handling device must sensibly be supported by some form of mobile base.”
I consider that the first location being “different” and “away from” the second location must mean that the locations cannot be on or in the same earth working equipment. In other words, the first location must not be at the earth working equipment, while the second location must be at the earth working equipment.
I consider that Derycke is not explicit about the initial location of the wear part before it is moved to replace the wear part on the earth working equipment. That is, the delivery of the wear part by the handling device could occur from one end of the earth working equipment (the back (maintenance) end) to the other end (the front (digging) end). I consider that there is no disclosure in Derycke that the first location is not at the earth working equipment. Thus, the amended claims are novel in light of Derycke.
It is plausible that the handling robot disclosed in Derycke could potentially be modified such that it is part of a transport module that moves the “auxiliary tool and the manipulator” from one location that is not at the earth working equipment to the earth working equipment. However, there is no evidence to show that a person skilled in the art would, as a matter of routine, have modified Derycke to include such a transport module. Consequently, the amended claims are considered inventive in light of Derycke.
Dietens
How do the words “land-based” in the preamble limit the claim?
The Opponent’s submissions in support state at paragraphs 54 and 55:
“The amendment to claim 1 to include “land-based” to the pre-amble has no utility in limiting the ambit of the claim nor does the amendment remove the deficiencies identified by the Delegate based upon Dietens. As a result of the Second Amendments, claim 1 relevantly reads: “A tool for replacing a wear member secured to earth working equipment operating in a land‐based mine…” (emphasis added).
It has long been held that a claim framed as such should be construed as “A tool” per se with the language that follows being merely indicative, but not limiting, of the environment in which there is intended to use the tool (see for example Thurston Catton’s Application (1978) AOJP 3666). As a consequence, the Second Amendments made to claim 1 in this respect cannot hope to cure the defects identified by the Delegate on the basis of the disclosure of Dietens.”
The Applicant’s submissions state at paragraphs 5.7:
“Claim 1 of the Opposed Application now defines "earth working equipment operating in a land-based mine". As is discussed above at paragraph 3.3 the term "land-based mine" simply means a mine that is on land, as opposed to a water-based environment. Therefore, the tool defined in claim 1 must be suitable for "replacing a wear member secured to earth working equipment operating" in a mine that is on land.”
The issue of “for” in the preamble of a claim was considered in Garford Pty Ltd v DYWIDAG Systems International Pty Ltd [2015] FCAFC 6 (“Garford”) at paragraph 122:
“A claim to an apparatus for a particular purpose is a claim to an apparatus that is suitable for that purpose: see, for example, Bühler AG v Satake UK Ltd [1997] RPC 232 (Jacob J); Insituform Technical Services Ltd v Inliner UK Plc [1992] RPC 83 at 102 (Aldous J). To establish infringement of such a claim it is not necessary for the patentee to establish that the apparatus is intended to be used for that purpose. The patentee need only show that the apparatus is suitable for that purpose. The fact that the apparatus could be modified to make it suitable for a specified purpose does not put it within the scope of the claim unless it has been so modified.”
The guidance in Garford is in relation to construing claims for the purposes of determining infringement. However, the same guidance presumably follows when construing claims for the purposes of determining novelty. A device being defined for a particular purpose must be suitable for that purpose without modification.
Thus, it needs to be determined if Dietens would be suitable for land-based use without any modification.
Would Dietens need to be modified to make it suitable as a “land-based” mining tool?
The Applicant’s submissions state at paragraphs 5.10-5.14:
“Dietens does not disclose how the tool could get to the earth working equipment in a land-based mine. The system in Dietens would not be suitable, without modification, for replacing a wear member secured to earth working equipment operating in a land-based mine. That modification would be required is further reinforced by Mr Briscoe who in Briscoe #1 (summarised below) discusses the difficulties in adapting the system disclosed in Dietens for use with earth working equipment operating in a land-based mine.
It would also not be a matter of routine to adapt the tool shown in Dietens for use with earth working equipment operating in a land-based mine, even if one was inclined to think of doing so (which is not accepted would be the case). Rather, as explained by Mr Briscoe in Briscoe #1, it would be difficult to adapt the system disclosed in Dietens for use in a land-based mine, including for the following reasons (Briscoe #1 at [16.4]):
…the system described in Dietens is not mobile. It is a stationary platform where the cutterhead is hoisted to the surface and brought between the two robots, for replacement operations to be conducted. By contrast, in a mine, the wear member replacement tool would generally need to be designed with a base which can allow it to traverse across a mine site to service equipment across various locations in the mine.
In Nienaber #1, Mr Nienaber contends that the modification of Dietens for use with mining teeth (being wear members used in a land-based mine) could be done without undue burden because the teeth used on dredge cutterheads are similar to mining teeth and there is "little difference between replacing this type of equipment in dredging and mining applications". This is incorrect.
Wear members are available in a wide variety of sizes, types and configurations and wear members used in one situation will not be suitable for use in another. It is also easier to replace a wear member on a system that uses smaller wear members that can be carried by one or two people, compared with those for the largest excavators. For example, Dietens discloses at [0003] that cutterhead teeth weigh "perhaps 20kg", whereas the wear members on excavating equipment operating in a mine can weigh much more than this, as much as 450kgs. Replacing a wear member that has been used for land-based mining will also have different considerations to replacing a wear member that has been used only for dredging. As set out by Mr Briscoe:
“The types of wear members used in quarries, in construction and in dredging are specific for the conditions and machinery used in those situations and I would not generally expect them to be suitable for use in a mine.”
Additionally, the process of replacing teeth on land-based mining equipment (e.g. an excavator) is less straightforward than replacing teeth on a dredger. For example, the tool in Dietens is meant to replace teeth that are always in a set place because the cutterhead is set at a specific location and orientation on the platform. In a land-based mining environment, the tool has to replace teeth of an excavator (e.g. on a bucket) that is placed at many different orientations, heights, etc.”
Mr Nienaber states in Exhibit QN-T2 accompanying his declaration of 5 April 2019:
“Having now reviewed document B [Dietens (EP 1 522 636)], I suspect that the type of robotic arm used in document B is substantially similar, at least in weight, to that proposed in the Opposed Application. If any difference exists, the robotic arm of document B might be lighter, as the wear members being replaced are slightly smaller and there is not as much fine bite to deal with in dredging applications compared to mining operations, as the fines are washed out by the surrounding water.
In light of this document, I still struggle to understand as to how such a robot could be fitted to a dual cab utility vehicle (the allowable GVM sometimes being less than the total weight of the manipulator alone) while having sufficient weight capacity on the vehicle to transport wear member sets.”

Mr Nienaber states that he “…struggle[s] to understand as to how such a robot [disclosed in Dietens] could be fitted to a dual cab utility vehicle…”. Thus, it is not entirely clear what modifications would need to be made to Dietens such that it was suitable for use in a land based mine however it is clear that some type of modifications would be needed. Consequently, I find that the invention disclosed in Dietens is not suitable for land-based mining as defined in the pre-amble of the claim.
Furthermore, the evidence shows that the modifications to Dietens that would be necessary to address the features added by amendment (e.g. the first and second locations being “different” and “away from” one another) are significant and not obvious.
Consequently, I am not satisfied that it would be obvious to a person skilled in the art to make modifications to Dietens such that the result fell within the scope of the present claims. The amended claims are inventive in light of Dietens.
Conclusion
The amendments to the specification overcome the deficiencies identified in the first decision in this s 59 opposition and do not introduce new deficiencies.
Subject to appeal, I direct that the Application proceed to grant.
Costs
I see no reason to depart from the usual practice that costs follow the event. Costs are awarded according to Schedule 8 against CQMS Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents