CQMS Pty Ltd v ESCO Group LLC - [2023] APO 7

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2023] APO 7
Patent Application: 2018201733

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date: 7 February 2023

Hearing Date: 16 November 2022, in Video Conference

Catchwords: PATENTS - opposition to the allowance of an amendment – allowability under s 102(2)(a) – claims as proposed to be amended in substance fall within the scope of the claims before amendment – opposition unsuccessful – amendments allowed – costs awarded against the opponent

Representation: Counsel for the applicant: Tom Cordiner KC
Patent attorney for the applicant: Shyama Jayaswal of MinterEllison, Wayne McMaster of Intellectual Property Counsel
Counsel for the opponent: Amy Surkis
Patent attorney for the opponent: Adam Luxton of James & Wells

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018201733

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 7 February 2023
DECISION
The amendments comply with s 102(2)(a).
I allow the amendments.
I award costs according to Schedule 8 against CQMS Pty Ltd.
REASONS FOR DECISION

Background

Patent application 2018201733 (the Application) in the name of ESCO Group LLC (the Applicant) is a divisional application of 2014262221. The Application has a priority date of 25 November 2013.
The Application was accepted on 10 January 2020 and advertised for opposition on 30 January 2020. A notice of opposition was filed on 30 April 2020 by CQMS Pty Ltd (the Opponent). A Statement of Grounds and Particulars was filed on 30 July 2020.
Amendments to the specification were proposed on 11 March 2020 (which merely deleted two claims). Leave to amend was granted and advertised for opposition on 2 July 2020. These amendments were not opposed and were thus allowed and incorporated into the specification.
On 26 October 2020 the Opponent requested a 3 month extension of time to file Evidence in Support. The extension of time was allowed. Evidence in Support was filed on 1 February 2021.
On 15 April 2021 the Applicant proposed amendments to the specification and requested that the opposition be stayed pending the determination of the allowability of amendments. Most notably, the amendments replaced the word ‘base’ with the word ‘bucket’ in the claims.
On 21 April 2021 a Delegate invited the Opponent to make an undertaking to not oppose the amendments. If such an undertaking was made, then the evidentiary stages of the opposition would continue on the presumption that the proposed amendments will be allowed. If an undertaking was not made, then the opposition would be stayed pending the determination of the allowability of the amendments. The Opponent did not make the undertaking, and so the opposition was stayed pending the determination of the allowability of the amendments.
On 11 May 2021 the Opponent provided comments about the allowability of the amendments.
On 13 May 2021 a report was issued where the Examiner provided reasons why the amendments were not allowable.
On 20 May 2021 the Applicant responded to the Examiner’s report and proposed further amendments. These amendments were minor - deleting the word ‘the’ when it appeared in front of the word ‘health’.
Leave for the amendments proposed on 15 April 2021 and 20 May 2021 was granted and advertised for opposition on 1 July 2021. The amendments were opposed by the Opponent on 1 September 2021. A Statement of Grounds and Particulars was filed on 5 October 2021 with an accompanying request for an extension of time under section 223. The extension of time was allowed. On 25 November 2021 the Opponent requested to amend the Statement of Grounds and Particulars (the amended Statement of Grounds and Particulars) and this was allowed on 15 December 2021.
On 10 November 2021 a Delegate set out the evidence timeframe for the amendment opposition, allowing the Opponent 2 months to file evidence in support, then the Applicant 2 months to file evidence in answer, then the Opponent 1 month to file evidence in reply.
The Opponent filed evidence in support on 5 January 2022. The Applicant filed evidence in answer on 4 March 2022. The Opponent filed evidence in reply on 4 April 2022.
The Hearing took place by video conference on 16 November 2022.
The relevant legislation
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act).
The relevant provision of the Act is subsection 102(2), which is set out below:
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2), (3) or (3A).
Subsection 102(2A)(a) states that the “relevant time” means after the specification has been accepted. As the present specification had been accepted when the amendments were requested, the requirements of subsection 102(2) apply.
Applicable Law
The standard of proof that applies to section 104 opposition proceedings under the Raising the Bar Act has not been expressly stated in the Act. However, as reasoned by the delegate in Cytec Industries Inc v Nalco Company [2018] APO 4 at [18]: “it is a logical inference that the standard required is the balance of probabilities (consistent with the amendment to section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists), and it is the opponent who carries the onus of proof.”
Relevant principles applying to s102(2)(a) are conveniently laid out by Yates J in Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [40]:
“Consideration of the prohibition in s 102(2)(a) requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. Once again the prohibition is conditioned on a state of affairs existing as a result of the amendment, namely that a claim would not in substance fall within the scope of the claims before amendment. Thus the identification of the amendment is, once again, an important first step. Moreover, the reference to “within the scope of the claims” before amendment is significant. The comparison is not between a particular amended claim and that claim before amendment. The expression “within the scope of the claims” directs attention to all the claims. For this reason a practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment…”
Relevant to determining the scope, claim construction was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (‘Lundbeck’) 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. Words used in a specification, including the claims, are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification… construction of a specification, including the claims, is ultimately a question of law for the Court… 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… However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification...”
The amended Statement of Grounds and Particulars
The amended Statement of Grounds and Particulars opposes the amendments under subsection 102(2)(a) of the Patents Act 1990 (‘the Act’) wherein an amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment, a claim of the amended specification would not in substance fall within the scope of the claims of the specification before the proposed amendments.
The evidence
In support of its opposition to the proposed amendments, the Opponent relies upon the statutory declarations of Dr Nicholas Simon Hillier dated 24 December 2021 (Hillier #1) and 1 April 2022 (Hillier #2). The Applicant has filed a statutory declaration of Hezekiah Russel Holland dated 3 March 2022 (Holland).
Claims as amended on 11 March 2020
The amendments of 11 March 2020 are as follows:
1. A system for monitoring earth working equipment, the system comprising:
a ground-engaging product including a base supported by the earth working equipment and a wear part secured to the base;
at least one electronic sensor secured to the ground-engaging product for detecting the load resisted by and/or strain in the ground-engaging product during use by the earth working equipment, and wirelessly transmitting the load and/or strain data detected by the at least one electronic sensor; and
a programmable logic device using the load and/or strain data to provide an assessment pertaining to at least one of the status, health and/or performance of the base and/or wear part.
2. The system of claim 1 wherein the at least one electronic sensor includes a strain gauge to detect the strain in the ground-engaging product during use.
3. The system of either of claims 1 or 2 wherein the at least one electronic sensor includes a load cell to detect the load resisted by the ground-engaging product during use.
4. The system of any one of the preceding claims wherein the programmable logic device uses the load and/or strain data to determine impacts on the ground-engaging product.
5. A system for monitoring earth working equipment, the system comprising:
a ground-engaging product including a base supported by the earth working equipment and a wear part secured to the base;
at least one electronic sensor secured to the ground-engaging product for detecting impact on the ground-engaging product during use, and wirelessly transmitting impact data detected by the at least one electronic sensor; and
a programmable logic device using the impact data to provide an assessment pertaining to the health of the base and/or wear part.
6. The system of any one of the preceding claims wherein the at least one electronic sensor includes an accelerometer for detecting acceleration and wirelessly transmitting acceleration data detected by the at least one electronic sensor, and wherein the programmable logic device uses the acceleration data to provide the assessment.
7. The system of any one of the preceding claims wherein the at least one electronic sensor includes an inclinometer.
8. The system of any one of the preceding claims wherein the base is a bucket with a digging edge, and the wear part is secured to the digging edge.
9. The system of any one of the preceding claims wherein the at least one electronic sensor is secured to the base.
10. The system of any one of the preceding claims wherein the at least one electronic sensor is secured to the wear part.
These claims (incorporating the amendments of 11 March 2021) are the claims that the proposed amendments of 15 April 2021 and 20 May 2021 are compared with for the purpose of determining the allowability of the amendments.
Claims as proposed to be amended on 15 April 2021 and 20 May 2021
The combined effect of the amendments of 15 April 2021 and 20 May 2021 is shown in the following marked-up version (with words added in underline and words removed in strikethrough in comparison to the amendments of 11 March 2020):
1. A system for monitoring earth working equipment, the system comprising: a ground-engaging product including a bucket~~ase~~ supported by the earth working equipment and a wear part secured to the bucket~~ase~~;
at least one electronic sensor secured to the bucket ~~ground-engaging product~~ for detecting the load resisted by and/or strain in the bucket ~~ground-engaging product~~ during use by the earth working equipment, and wirelessly transmitting the load and/or strain data detected by the at least one electronic sensor; and
a programmable logic device using the load and/or strain data to provide an assessment pertaining to at least one of ~~the~~ ~~status,~~ health and/or performance of the bucket~~ase~~ ~~and/or wear part~~.
2. The system of claim 1 wherein the at least one electronic sensor includes a strain gauge to detect the strain in the bucket ~~ground-engaging product~~ during use.
3. The system of either one of claims 1 or 2 wherein the at least one electronic sensor includes a load cell to detect the load resisted by the bucket ~~ground-engaging product~~ during use.
4. The system of any one of the preceding claims wherein the programmable logic device uses the load and/or strain data to determine impacts on the bucket~~ground-engaging product~~.
5. A system for monitoring earth working equipment, the system comprising:
a ground-engaging product including a base supported by the earth working equipment and a wear part secured to the base;
at least one electronic sensor secured to the ground-engaging product for detecting impact on the ground-engaging product during use, and wirelessly transmitting impact data detected by the at least one electronic sensor while operating the earth working equipment; and
a programmable logic device using the impact data to provide an assessment pertaining to ~~the~~ health of the base and/or wear part.
6. A system for monitoring earth working equipment, the system comprising:
a ground-engaging product including a bucket supported by the earth working equipment and a wear part secured to the bucket;
at least one electronic sensor secured to the ground-engaging product for detecting impact on the ground-engaging product during use, and wirelessly transmitting impact data detected by the at least one electronic sensor; and
a programmable logic device using the impact data to provide an assessment pertaining to ~~the~~ health of the bucket and/or wear part.
67. The system of any one of the preceding claims wherein the at least one electronic sensor includes an accelerometer for detecting acceleration and wirelessly transmitting acceleration data detected by the at least one electronic sensor, and wherein the programmable logic device uses the acceleration data to provide the assessment.
78. The system of any one of the preceding claims wherein the at least one electronic sensor includes an inclinometer.
89. The system of any one of ~~the preceding~~ claims 1 to 4 or 6 to 8 wherein the ~~base is a~~ bucket has ~~with~~ a digging edge, and the wear part is secured to the digging edge.
910. The system of any one of ~~the preceding~~ claims 6 to 9 wherein the at least one electronic sensor is secured to the bucket~~ase~~.
110. The system of any one of ~~the preceding~~ claims 5 to 9 wherein the at least one electronic sensor is secured to the wear part.
12. The system of claim 5 wherein the at least one electronic sensor is secured to the base.
13. The system of any one of claims 5 to 12 wherein the at least one electronic sensor includes a strain gauge.
14. The system of any one of claims 5 to 13 wherein the at least one electronic sensor includes a load cell.
The invention
The invention defined in independent claim 1 in the amended claims relates to a system for detecting the load resisted by and/or strain in the bucket. Claim 1 further defines that the data is then used to make an assessment of the health and/or performance of the bucket.
Independent claims 5 and 6 in the amended claims relate to a system for detecting impact on a ground engaging product. Claim 5 further defines that the data is then used to make an assessment of the health of the base and/or wear part. Claim 6 further defines that the data is used to make an assessment of the health of the bucket and/or wear part.
The parts of the specification relating to a sensing a strain, load or impact are as follows: The 3^rd and 2^nd last sentences in paragraph 51 state:
“In another preferred embodiment, a strain gauge or load cell is used to determine when the digging cycle has started. The strain gauge or load cell may be located in the bucket or a wear member on the bucket.”
Paragraph 52 states:
“The monitoring system may be equipped with electronic sensors that are capable of determining high impact events on the bucket digging edge (i.e., higher than experienced during normal digging operation). For example, the monitoring system may utilize an accelerometer, strain gauge, load cell, or pressure sensor to determine peak impacts (not shown). Programmable logic may record the time of the high impact event. The results of the high impact events may be communicated to the equipment operator or to a wireless device. It is also possible for the electronic sensors for determining the high impact event to be separate components from the electronic sensor for determining the digging cycle time or not be incorporated with the monitoring system.”
Paragraph 54 states:
“The electronic sensor(s) 27 may be housed in one or more enclosures 31 in one or more locations on the wear part that engages and moves the ground to be excavated to protect the electronic sensor(s) 27 from the harsh mining environment and to keep the aperture 33 of the housing of the electronic sensor 27 free of fines, dirt, or other material that may negatively impact the electronic sensor 27 (Figures 8 and 11). The enclosure 31 may have one or more mounting brackets 35 for mounting the enclosure 31 on the first wear part. The enclosure 31 may house additional electronic equipment (not shown) for controlling and processing the data from the electronic sensor 27. In an alternative embodiment, some or all of the additional electronic equipment may be housed on the excavating equipment or in a remote location (not shown). For example, one or more electronic sensors 27 may be located in one or more locations in/on the bucket and the electronic sensors 27 may communicate via a wire or wirelessly with other electronic sensors and/or the additional electronic equipment within the cab of the excavating equipment. In alternative embodiments, one or more electronic sensors 27 (shown in phantom lines in Figure 9) may be located on or in a second wear part(s) that are attached to the first wear part(s) that engages and moves the ground to be excavated. The first wear part(s) may be, for example, a bucket, a blade, a truck body, or the like and the second wear part(s) may be, for example, a point, an intermediate adapter, an adapter, a shroud, a nose, a lip, a wear runner, a truck liner, or the like. The electronic sensor(s) in the second wear part may communicate with electronic sensor(s) on the first wear part, the second wear part(s) and/or with the additional electronic equipment that may be located on the first wear part or located remote to the first wear part. As with the electronic sensor(s) in the first wear part, the electronic sensor(s) in the second wear part may communicate via a wire or wirelessly. The additional electronic equipment may be, for example, a controller, a power supply, a camera, and/or a wireless device. The controller may be, for example, an S7-1200 PLC sold by Siemens. The power supply may power just the electronic sensor or may also power the additional electronic equipment. In an alternative embodiment, two power supplies are provided. A first power supply to power the electronic equipment and a second power supply to power the additional electronic equipment. The power supply may be, for example, a power supply sold by TDK-Lambda and/or an SDC-5 Power Supply. The camera may be, for example, a Closed-Circuit Television (CCTV) camera. The CCTV camera may provide a HMI with a live feed of the lip of the bucket. Details of the HMI will be discussed in further detail below. The wireless device may be, for example a wireless serial device server sold by B &B Electronics (formerly Quatech).”
Section 102(2)(a)
Summary of the parties’ arguments

The Opponent’s main argument is that a base is a specific part of a bucket, thus an amendment to replace the word ‘base’ with the word ‘bucket’ is a broadening amendment.
The Applicant maintains that a bucket is a type of base, thus the amendment is narrowing.
Is a) the base a specific part of a bucket, or b) a bucket a type of base
Opponent’s submissions
The Opponent’s submissions at paragraphs 18 to 36 that the bucket is not a base are as follows:
“A bucket is not a base
The Application does not define the word “base”. Both Dr Hillier and Mr Holland have given evidence of their understanding of the meaning of the term as used in the Application.
Dr Hillier’s evidence is to the effect that a bucket (as that term is used in the specification and claims, both before and after the Proposed Amendments) is not a base. Mr Holland’s evidence is to the opposite effect.
There are three key reasons why a bucket does not fall within the meaning of “base”.
First, all substantive descriptions of a “base” in the Application are consistent with the definition provided by Dr Hillier (ie a component or assembly that allows for attachment between parts, of which its defining feature is that it has the appropriate mating geometry to which the wear part can be secured). In particular, the Application describes a “base” in the following terms:
(a) Paragraph [7] discusses examples of prior art systems used to monitor if a “wear member is secured to the base on an excavating machine”. One of the examples provided is a system which provides a signal when a “tooth” (the wear member) has fallen off or is about to fall off a “nose” (the base).
(b) Paragraph [37] describes Figure 16 as “a perspective view of a base with a unique feature and/or pattern in the top surface of the base so that the unique feature and/or pattern can only be seen when the wear member is not present in accordance with the present invention.” Figure 16 is:
It is apparent that figure 16 is a nose with appropriate mating geometry for a wear part.
(c) Paragraph [44] describes a mining excavator equipped with a bucket. In that context, the paragraph goes on to describe figure 5 which is:
Paragraph [44] describes item 13 of figure 5 as the base on which the wear member (item 15) is secured. There is no suggestion that the base is the whole of the bucket.
(d) Paragraph [44] also states that “[f]or ease of discussion the application generally discusses monitoring the presence and/or health of a wear member on a base secured to an excavating bucket (emphasis added).” The same distinction is made at paragraph [47] which refers to the “base on the bucket”. Evidently, in the context of an excavating bucket, the Application identifies the “base” and the bucket to be two distinct components.
Mr Holland states in his evidence that “there is nothing in the Opposed Application which indicates to me that a bucket does not fall within the meaning of “base”[”]. That assertion cannot be reconciled with any of the passages from the Application extracted above.
Secondly, it would be impractical and unworkable to construe “base”, before the Proposed Amendments, as including a bucket. Such a construction would render claim 1 uncertain, as the person skilled in the art (PSA) would have been unable to identify which components of the earth working equipment were the “base” for the purpose of claim 1.
Mr Holland gives evidence that an entire bucket is a base within the meaning of the Application. In arriving at this conclusion he states:
“the bucket is acting as a base because the lip is an integral part of the bucket and the bucket is supported by the earth working equipment. Further, I consider the term “base” to include a bucket regardless of the number of parts between the wear part and the bucket. For example, if a point is secured to an intermediate adaptor which is secured to an adaptor which is then secured to the lip of the bucket, I consider the bucket to be the base for all of the wear parts (i.e., the point, intermediate adaptor and adaptor), because the bucket is supported by the earth working equipment and the wear parts are directly or indirectly secured to the bucket.”
The extension of this interpretation is that several other (undefined) parts of the earth working equipment could also be considered the “base” because the entire machinery is ultimately a chain of parts attached to one another. Accordingly, the “base” could include a large portion of the equipment or, in fact, the entire equipment. This interpretation would not have enabled the PSA to identify which components of the equipment were the base.
Adopting Dr Hillier’s construction, in the context of a bucket, the “base” is that portion of the bucket which is suited geometrically to having the wear part connected to it, and not the entire bucket. Thus, where a wear part is an adaptor, which must be mounted to a nose with matching geometry on a bucket, it is the matching geometry on the nose of the bucket which is the base, and not other parts of the bucket which perform unrelated functional roles. As Dr Hillier has explained:
“A bucket has many parts which form the base for wear parts that protect those particular parts of the bucket. However, a bucket also has structural, containment and attachment portions that are not a base for attaching wear parts.”
The only practical and workable construction, of claim 1 before the Proposed Amendments, is that preferred by Dr Hillier. That construction would enable a PSA to identify which components of a system for monitoring earth working equipment are the “base”. In contrast, the construction preferred by Mr Holland would result in hopeless uncertainty, with any part of the earth working equipment potentially satisfying the definition of “base”.
Thirdly, a construction of “base” which includes a bucket should be rejected because the invention, before the Proposed Amendments, would not work.
The invention in claim 1 prior to the Proposed Amendments includes a system providing an assessment pertaining to the status, health and/or performance of the “base”.
If, applying Mr Holland’s broad interpretation, the “base” can be a large portion of the earth working equipment or, in fact, the entire equipment, then the invention would not work. There is no disclosure in the Application which explains how the system the subject of claim 1, before the Proposed Amendments, could use a programmable logic device to provide an assessment pertaining to the whole (or a large portion of) the earth working equipment, as opposed to the base and/or wear part forming part of, or attached to, that earth working equipment.
By contrast, Dr Hillier’s interpretation is consistent with the disclosure in the Application as to how the system is said to work. For example, the title of the Application emphasises that it is concerned with “[w]ear part monitoring” and the Abstract further emphasises that the Application is concerned with “A process and tool for monitoring the status, health and performance of wear parts used on earth working equipment” (emphasis added), thereby expressly distinguishing the parts being monitored from the underlying equipment.
Applying the well-established claim construction principles set out in part D above, Dr Hillier’s construction should be preferred. Otherwise, claim 1, prior to the Proposed Amendments, would encompass numerous embodiments which would not work.
Further, at paragraph 5.16 of his evidence, Mr Holland refers to dependent claim 8 (prior to the Proposed Amendments) in support of his view that the bucket is a “base”. Prior to the Proposed Amendments, claim 8 provided that:
“The system of any one of the preceding claims wherein the base is a bucket with a digging edge, and the wear part is secured to the digging edge” (emphasis added)
Claim 8 does not support Mr Holland’s construction because:
(a) the claim describes the base as “a bucket with a digging edge” not as the “bucket” per se; and
(b) the wear part is secured to the “digging edge” (not the bucket).
Further, claim 8 (before the Proposed Amendments) is dependent on the preceding claims (including claim 1), which require that the wear part be “secured to the base”. In context, claim 8 (before the Proposed Amendments) should be construed as identifying the “base” as the “digging edge” of the bucket.
Finally, the independent claims on which claim 8 (before the Proposed Amendments) depends are neutral as to the nature of the “earth working equipment”. As described in the specification, the term “earth working equipment” is very broad and includes excavating equipment and ground conveying equipment. None of the claims on which claim 8 (before the Proposed Amendments) depends use the word “bucket”. Therefore, the use of the word “bucket” in the phrase “bucket with a digging edge” is only to identify the nature of the earth working equipment – ie equipment which includes a bucket.”
Applicant’s submissions
The Applicant’s submissions at paragraphs 36 to 51 are as follows:
“Regarding OS paragraphs [18] to [36] and [75] to [80], ESCO does not agree that the term "base" in claim 1 before the Proposed Amendments did not encompass a bucket.
First, OS paragraph [21] identifies and contends for Dr Hillier’s definition of a “base” being “a component or assembly that allows for attachment between parts, of which its defining feature is that it has the appropriate mating geometry to which the wear part can be secured”. But the Patent Application provides no such definition of base. Then OS paragraph [21] refers to the disclosure in the Patent Application regarding prior art at paragraph [7] which does not say that the base cannot be a bucket. Next, OS paragraph [21] focusses on a preferred embodiment in the Patent Application at paragraphs [37] and [44] where, plainly enough, there is a distinction drawn in that embodiment between a bucket to which a base is secured, through an [sic] lip, an adapter and an intermediate adapter). But nothing in that preferred embodiment says that the term “base” cannot be used more broadly, as it is in the claims (in particular claim 8) prior to the Proposed Amendments.
Paragraph [44] of the Patent Application states "For ease of discussion the application generally discusses monitoring the presence and/or health of a wear member on a base secured to an excavating bucket. However, the invention could be used to monitor the presence and/or health of a wear member on a base on various types of earth working equipment and may monitor … a shroud, a lip, ….". Further, paragraph [60] of the Patent Application states "Although the above discussion has discussed the invention in connection with teeth on a bucket, the system can be used to sense the presence and/or health of other wear parts on a bucket such as shrouds, wings and/or runners."
Wear parts such as a lip, liners or runners are attached directly to a bucket such that the bucket is acting as a base. Accordingly, the disclosure in the body of the specification is not limited to embodiments in which a base is secured to a bucket and a wear member being a point or intermediate adapter is then secured to that base. With respect to OS paragraph [22], Mr Holland's evidence is consistent with paragraphs [44] and [60] of the Patent Application which refer to wear parts which may be directly attached to a bucket.
The term “base” is not used in a limited way as Dr Hillier and the Opponent would have it. For example, at paragraph [53] of the Patent Application it is explained that in a “nonbucket application, the monitoring system may be preferably mounted and or integrated to a base member supporting the wear part. The base member may be, for example, a truck tray or blade”. That extract makes clear that, what is important is only that the “base” supports the wear part.
Similarly, the Patent Application at paragraph [54] uses the term “wear part” in a broad way, giving an example of a bucket as a “first wear part” which has a second wear part attached to it, such as “a nose”. On CQMS’s construction, only the nose could be a base but here it is described itself as a wear part.
ESCO’s construction of claim 1 encompassing a system with a sensor being secured to the bucket (and therefore a bucket being a “base” within the meaning of claim 1 prior to amendment) is also consistent with the disclosure in the body of the specification at paragraph [54] at the end of page 19: “For example, one or more electronic sensors 27 may be located in one or more locations in/on the bucket …”.
Second, OS paragraphs [23] to [27] make an artificial distinction between a surface of a bucket acting as a base and the bucket as a whole being a base. For example, OS paragraph [26] refers to Hillier2 at paragraph [26] which states in full:
"I do not consider a bucket to be a base. A geometric element of a bucket may be the base for a particular wear part, but the bucket in its entirety is not a base. … One further example of this distinction between the base and the bucket itself is that where a bucket liner is the wear part, the base would be the surface area to which it attaches within the inner part of the bucket, as opposed to the base being the entire bucket (some surfaces being entirely unsuitable as a base for a particular wear part). A bucket has many parts which form the base for wear parts that protect those particular parts of the bucket. However, a bucket also has structural, containment and attachment portions that are not a base for attaching wear parts."
The Opponent therefore submits that a bucket can only be a "base" if a wear part is designed such that the whole bucket is geometrically mated with the wear part. The Opponent also submits that where a wear part is directly secured to a part of a bucket, such as a liner welded to a wall of a bucket, that the bucket is not acting as a base, just that surface of the wall of the bucket is doing so. This approach to construction involves an over-meticulous verbal analysis which is inconsistent with the principles of claim construction and which is not required by the language in the Patent Application.
As to OS at paragraphs [24] and [25], Mr Holland does not state that the entire bucket is a base such that the whole bucket is geometrically mated with a wear part. Mr Holland at [5.11] clearly identifies that different wear parts attach to different parts of the bucket. Mr Holland at [7.7] points out that it is the bucket which is "supported by the earth working equipment" and thus the bucket to which different wear parts are attached at different parts of the bucket falls within the term "base" in claim 1 before the Proposed Amendments.
Regarding OS paragraphs [28] to [32], claim 1 before the Proposed Amendments requires only that the programmable logic device provides "an assessment pertaining to at least one of the status, health and/or performance of the base and/or wear part" (emphasis added). The words "and/or" mean that not every embodiment which fell into claim 1 before the Proposed Amendments required an assessment with respect to both the base and the wear part. In some embodiments, the assessment would be with respect to one of the base or the wear part as appropriate. Accordingly, if the skilled person knows that making an assessment with respect to the base was not appropriate, then the claim did not require an assessment for the base, an assessment with respect to the wear part would be sufficient.
CQMS only deals with claim 8 prior to the Proposed Amendments at the end of its analysis of the term “base”. The fact that claim 8 says “the base is a bucket with a digging edge” rather than the “base is a bucket” per se, makes no difference to the argument: cf OS[34(a)]. The term “base” in claim 1 still encompasses a “bucket” by operation of claim 8, whether that “bucket” has a digging edge, sides, a top, a bottom, etc. Next, the fact that the wear part in claim 8 is connected to the “digging edge” does not mean it is not connected to the “bucket”. The wear part is connected to the digging edge of the bucket. Notably, claim 8 does not say “wherein the base is a digging edge connected to, and distinct from, a bucket” which is the interpretation CQMS apparently contends for: cf OS[34(b)], [35]. CQMS’s interpretation of claim 8 is wrong.
Then OS paragraph [36] says “[n]one of the claims on which claim 8 (before the Proposed Amendments) depends use the word ‘bucket’. Therefore, the use of the word ‘bucket’ in the phrase ‘bucket with a digging edge’ is only to identify the nature of the earth working equipment – ie equipment which includes a bucket”. ESCO does not understand this submission. The claims on which claim 8 depends all include the word “base” which is qualified by claim 8 identifying that the base is a bucket with a digging edge. That is clear.
Finally, it is noteworthy that the Opponent does not seek to rely on Dr Hiller who in his second declaration said at [34].
In paragraph 5.16, Mr Holland expresses the view that the bucket in claim 8 of the 2020 Claims is the base as defined in claims 1 and 5 of the 2020 Claims. The wording of the claim 8 in the 2020 Claims specified that “the base is a bucket”. However, I do not consider this to be consistent with how the term “base” would be understood in the Field and the specification does not support this meaning of base. For example, in the Opposed Application, Figure 16 is described at paragraph [37] as a “perspective view of a base” and this is an image of a portion of a component. Paragraphs [44] and [58] describe Part 13 of Figures 2 to 5 as a base with reference to the intermediate adaptor. Similarly, paragraph [44] includes the phrase “wear member on a base secured to an excavating bucket”, which implies that the base is not the bucket, but rather the base is a component secured to the bucket.
First, it may be noted that Dr Hillier, contrary to the Opponent’s submissions, had no difficulty understanding claim 8 as clearly stating that “the base is a bucket”.
Second, Dr Hillier’s concern was that claim 8 did not accord with his narrow definition of what a base would be in the industry. However, Dr Hillier was not asked to explain his understanding of the claims "in the context of the Patent Application as a whole", and instead Dr Hillier was asked to explain the claims based only on his experience in the technical field of systems and tools for monitoring the wear parts used on various kinds of earth working equipment.
Third, his reference to the specification was, as noted above, limited to a preferred embodiment. Accordingly, his evidence was of the kind rejected by authority – an attempt to narrow the plain words of the claims by reference to specific embodiments in the specification.”
The word ‘base’ is used in two distinctly different ways throughout the specification
The word ‘base’ is used in two distinctly different ways throughout the specification. The parts of the specification highlighted by the Opponent are clear that the base is the part of the bucket to which wear members are attached. The parts of the specification highlighted by the Applicant are clear that the base is the entire bucket.
Using a word in two distinctly different ways in the specification can cause ambiguity in the scope of the claims, if it is not clear from the context of the claim which meaning of the word is being used in the claim. In this case, it is prima facie plausible that the word ‘base’ is being used in the claims with either of the distinct meanings.
Resolving the ambiguity with reference to the plain meaning of the word ‘base’
The Macquarie Dictionary relevantly defines ‘base’ as:
“the bottom of anything, considered as its support; that on which a thing stands or rests.”
In this case, the base supports the wear parts. However, it is not clear how far the base extends away from the area that supports the wear parts.
The base could be understood to only extend to the area and the immediate surrounds which supports the wear part. Thus, in the case of wear parts attached to the lip of a bucket, the base could be considered only the lip of the bucket.

The base could be understood to extend beyond the area supports the wear part such that anything integrally formed with that area is the base. Thus, in the case of wear parts attached to the lip of a bucket, the base could be considered the entire bucket, since a bucket is integrally formed with the lip of the bucket.
Considering the plain meaning of the word ‘base’ is insufficient to determine if the word ‘base’ in the claims includes within its scope only part of the bucket or the entire bucket.
Resolving the ambiguity with reference to the specification
Claim 1 is specific to detecting (with a sensor) load or strain and then wirelessly transmitting the data.
There are three types of sensors disclosed in the specification which I will call: remote sensors, indirect sensors and direct sensors.
Remote sensors are sensors such as a camera, ultra-sonic sensor, or a laser interferometer described in paragraph 53. These sensors measure characteristics from afar. There is no disclosure of how remote sensors could be used to measure load or strain.
The indirect sensors are sensors mounted on the parts of the machine that detect forces on the bucket indirectly. For example, accelerometers disclosed at paragraph 14:
“As an example, an accelerometer may be used to determine when a high impact event occurs.”
Another type of indirect sensor disclosed are the pressure sensors at paragraph 51:
“In an alternative embodiment, a pressure sensor may be used instead of an accelerometer to determine when the digging cycle has started. The pressure sensor may be a hydraulic pressure sensor integrated with the boom of the earth working equipment. In another preferred embodiment, a strain gauge or load cell is used to determine when the digging cycle has started. The strain gauge or load cell may be located in the bucket or a wear member on the bucket. In an alternative embodiment, GPS may be used to determine the orientation of the bucket.
These indirect sensors can measure load or strain.
The direct sensors are the sensors attached at or near the point where the measurement is being made described in paragraph 54. For example, paragraph 54 and Figure 9 shows an embodiment where the direct sensors are inside the wear member. Although not stated explicitly in the specification, it is clear that the direct sensors would be capable of measuring characteristics such as load and strain.
The corresponding description states at paragraph 54:
“For example, one or more electronic sensors 27 may be located in one or more locations in/on the bucket and the electronic sensors 27 may communicate via a wire or wirelessly with other electronic sensors and/or the additional electronic equipment within the cab of the excavating equipment. In alternative embodiments, one or more electronic sensors 27 (shown in phantom lines in Figure 9) may be located on or in a second wear part(s) that are attached to the first wear part(s) that engages and moves the ground to be excavated.”
Conclusion on understanding the claims with reference to the specification
The specification provides a disclosure of an assessment of the status, health and/or performance of the wear part or the part of the bucket to which the wear part is attached, from load or strain measurements (direct sensors). The specification also provides a disclosure of an assessment of the status, health and/or performance of the other parts of the bucket from load or strain measurements (indirect sensors). Because there are disclosures of the assessment of the status, health and/or performance of both: a) the part of the bucket to which the wear part is attached, and b) the entire bucket, the ambiguity is not resolved by reference to the specification.
Resolving the ambiguity with reference to the claims
Claim 8 before amendment
Claim 8 before amendment is as follows:
The system of any one of the preceding claims wherein the base is a bucket with a digging edge, and the wear part is secured to the digging edge.
Claim 8 is an appended claim. There are two alternatives in how claim 8 is appended to claim 1:
·It is appended such that it narrows the scope of claim 1 (i.e. dependent claim)
·It is appended such that it broadens the scope of claim 1
These alternatives are considered below.
Option 1: Claim 8 is an appended claim which narrows the scope of claim 1 (i.e., dependent claim)
If claim 8 is considered a dependent claim, then it must limit the scope of claim 1. Claim 8 states that “the base is a bucket”, thus (if claim 8 is a dependent claim) the ‘base’ in claim 1 must define a class of objects that includes a bucket.
Option 2: Claim 8 is an appended claim which broadens the scope of claim 1
If claim 8 was an appended claim with broadening scope, then claim 1 could define that the base is only part of the bucket (e.g. the lip of the bucket). Claim 8 could then define an alternative – wherein the base was the entirety of the bucket.
Is claim 8 broadening or narrowing?
A claim appended to another claim is narrower in scope (than the claim to which it is appended) unless there is an explicit or implicit exclusion in the appendency. In this case claim 1 defines a system and claim 8 (before amendment) defines “The system of any one of the preceding claims wherein the base is a bucket…”. There is nothing in claim 8 that explicitly or implicitly excludes a feature previously defined in claim 1. Thus, claim 8 is considered a narrowing amendment.
The ‘base’ defined in claim 1 (before amendment) must include a class of objects (ground-engaging products) that includes a bucket. The description lists some elements in this class of objects at paragraph 42: “…ground-engaging components of these machines such as the bucket, blade, or the cutter head”. Claim 8 then narrows the class of objects (ground-engaging products) to a single element of that class – the bucket.
Prior to the amendments, the meaning of the word ‘base’ in the claims is resolved. Furthermore, the meaning of the word ‘base’ is not altered by the amendments. Thus, the meaning of the word ‘base’ in the claims is fully resolved.
Conclusion on the construction of the word ‘base’
I have been unable to resolve the how the word ‘base’ should be construed by reference to: a) the plain meaning of the word ‘base’, b) the embodiments of the invention, or c) how the word ‘base’ has been used throughout the description. However, analysis of the claims (and, in particular, the appended claims) reveals that a bucket is a type of base, thus the term ‘bucket’ falls within the scope of the term ‘base’.
Consequently, I consider that a bucket is a type of ‘base’. The amendment to replace the word ‘bucket’ with the word ‘base’ narrows (and does not expand) the scope of the claims. Thus, this aspect of the amendment to claim 1 is considered allowable.
Opponent’s other arguments
Is the bucket a wear part?
The Opponent’s written submissions (at paragraphs 37 to 60) contain arguments that a bucket is not a wear part. Although the Applicant’s written submissions contain arguments (at paragraph 52) that the bucket is a wear part in some embodiments of the invention disclosed in the specification, the Applicant also notes that “it is not necessary for this construction point to be determined, as the term wear part as used in claims 1 and 6 as amended does not include buckets.” In their oral submissions the Applicant conceded that a bucket is not a wear part for the purposes of construing the claims.
The specification is equivocal as to whether the bucket can be considered a wear part. Support for the bucket being a wear part can be found in the specification states at paragraph 54:
“The first wear part(s) may be, for example, a bucket, a blade, a truck body, or the like and the second wear part(s) may be, for example, a point, an intermediate adapter, an adapter, a shroud, a nose, a lip, a wear runner, a truck liner, or the like.”
Support for the bucket being distinct from a wear part (and thus not being a wear part) can be found at several places in the specification, for example, at paragraph 3:
“In mining and construction, wear parts (e.g., teeth, shrouds, and lips) are commonly provided along the edges of excavating equipment to protect the underlying equipment from undue wear and, in some cases, also perform other functions such as breaking up the ground ahead of the digging edge. For example, buckets for dragline machines, cable shovels, face shovels, hydraulic excavators, and the like are typically provided with multiple wear components such as excavating teeth and shrouds that are attached to a lip of a bucket.”
If the bucket was construed to be a wear part, then it would lead to claim 1 defining “…a wear part [which includes within its scope a bucket] secured to the bucket…”. Although a bucket secured to another bucket is plausible it is not a scenario supported by the specification, which weighs against that interpretation being adopted.
Furthermore, the Applicant and the Opponent both agree that the bucket is not a wear part. Overall, I consider it sensible to adopt the interpretation that the bucket is not a wear part. Consequently, the Opponent’s argument about of the allowability of this aspect of the claim is rendered moot.
Is the “ground engaging product” the whole excavator?
The Opponent argues that the amendments expand the meaning of “ground engaging product” to include the whole excavating machine.
The Opponent’s submissions at paragraphs 65 and 66 state:
“However, for claim 1 as proposed to be amended, Dr Hillier and Mr Holland also disagree on whether the term GEP includes the whole excavator.
(a) Dr Hillier explains that if the GEP is to “include” a bucket (pursuant to proposed amended claim 1), then the GEP must be a “whole excavator including a bucket, or other similar whole machine that engages with the ground and includes a bucket.”
(b) Mr Holland disagrees and says that the GEP is the bucket. Mr Holland explains this as follows:
“I agree with Dr Hillier that ‘generally’, a ‘bucket’ is itself regarded as a ‘ground engaging product’. Consistent with this, I understand ‘a ground engaging product including a bucket supported by the earth working equipment and a wear part secured to the bucket’ in amended claim 1 to mean a ground engaging product which is in this instance a bucket (which is a subset of what was a “base” in original claim 1) and which has wear parts secured to it.”
Mr Holland’s interpretation should be rejected. In effect, Mr Holland seeks to rewrite claim 1, so that “including” is to be read as “constituting”.”
The Applicant states in the last sentence of paragraph 53:
“With respect to OS paragraphs [83] to [85], ESCO does not accept that ground engaging product refers to the whole earth working machine.”
The Opponent’s argument (which rely upon the interpretation provided in Dr Hillier’s evidence) – that, as a result of the amendment, the ground-engaging product is the whole excavator – is unpersuasive. The argument appears to be based on the contention that the word “including” has radically changed the scope of the claim. However, the word “including” was present in the claim both before and after amendment.
I further note that claim 1 (before and after amendment) refers to the ground-engaging product is supported by the earth working equipment. Thus, it cannot be the case that the ground-engaging product is the earth working equipment.
For these reasons I reject the Opponent’s argument that, as a result of the amendment, the “ground engaging product” is the whole excavator. Consequently, the Opponent’s argument that this aspect of the amendment broadens the meaning of “ground-engaging product” is not persuasive.
Conclusion
The amendments comply with s 102(2)(a). I allow the amendments.
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