CQMS Pty Ltd v ESCO Group LLC - [2022] APO 64

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2022] APO 64
Patent Application: 2018264149

Title:Wear assembly removal and installation

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date: 20 September 2022

Hearing Date: 19 July 2022, in Video Conference

Catchwords: PATENTS - section 59 – opposition to the grant of a patent – grounds of support – claims 1-10 lack support – the Applicant has 2 months from the date of this decision to propose amendments to overcome the lack of support – costs awarded against the Applicant from when Statement of Grounds and Particulars was amended

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Shyama Jayaswal and Gus Lightowlers of MinterEllison, and Wayne McMaster of Intellectual Property Counsel
Counsel for the opponent: Peter Creighton-Selvay
Patent attorney for the opponent: Adam Luxton of James & Wells.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018264149

Title:Wear assembly removal and installation

Patent Applicant: ESCO Group LLC
Date of Decision: 20 September 2022
DECISION
Claims 1-10 lack support.

The Applicant has 2 months from the date of this decision to propose amendments to overcome the lack of support.

Costs are awarded against the Applicant from the day after the Statement of Grounds and Particulars was amended for a second time (28 March 2022).
REASONS FOR DECISION

Background

Patent application 2018264149 (the Application) in the name of ESCO Group LLC is a divisional application of 2018232959 (the parent) which is a divisional application of 2014240371 (the grandparent). The Application has a priority date of 21 October 2013.
The Application was accepted on 26 August 2020 and advertised for opposition on 10 September 2020. A notice of opposition was filed on 10 December 2020 by CQMS Pty Ltd (the Opponent).
A Statement of Grounds and Particulars (the SGP) was filed on 10 March 2020. Evidence in support was filed on 9 June 2021. A request to amend the SGP was filed on 1 June 2021, and the amendment was allowed on 22 June 2021.
Evidence in Answer was filed on 8 September 2021. No evidence in reply was filed.
On 28 March 2022 the Opponent requested to amend the SGP again, and the amendment was allowed on 5 May 2022.
Regulation 5.23
On 11 May 2022 the Applicant filed documents (a declaration of Terry Lee Briscoe dated 5 May 2022 and accompanying annexure TLB-2) and requested that the documents be considered by the Commissioner under regulation 5.23.
On 26 May 2022 the Delegate informed the parties the Terry Lee Briscoe declaration and accompanying annexure would be considered under reg 5.23, and allowed the Opponent until 12 July 2022 to provide responding information.
On 7 July 2022 the Opponent filed responding documents (a declaration of Quintin Nienaber and accompanying annexure QN-11 and a declaration of Adam Luxton and accompanying exhibits AL-1 to AL-4).
The hearing took place on 19 July 2022.
The grounds of opposition
The grounds of opposition in the SGP amended on 28 March 2022 were: novelty, inventive step, clear enough and complete enough disclosure, and support. The grounds of opposition pursued in the hearing was limited to a single ground: support.
The Evidence
Evidence in support
The evidence in support comprises a declaration by Quintin Nienaber with Exhibits QN-1 to QN‑8.
Evidence in answer
The evidence in answer comprises a declaration by Terry Lee Briscoe with Annexure TLB-1.
Regulation 5.23
The information considered under regulation 5.23 comprises:
·a declaration of Terry Lee Briscoe and accompanying annexure TLB-2
·a declaration of Quintin Nienaber and accompanying annexure QN-11, and
·a declaration of Adam Luxton and accompanying exhibits AL-1 to AL-4.
The relevant legislation
The present application has a filing date of 16 November 2018 so substantive amendments to the Patents Act1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012, effective 15 April 2013, apply in the present case.
The invention
The description states at paragraph 8:
“The present invention pertains to a process for installing and removing various kinds of wear members used with earth working equipment including, for example, excavating equipment.”
The description states at paragraphs 3 and 4:
“In mining and construction, wear parts are commonly provided along the digging edge of excavating equipment such as buckets for dragline machines, cable shovels, face shovels, hydraulic excavators, bucket wheel excavators, and the like. The wear parts 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. During use, the wear parts typically encounter heavy loading and highly abrasive conditions. As a result, they must be periodically replaced.
These wear parts usually comprise two or more components such as a base that is secured to the digging edge, and a wear member that mounts on the base to engage the ground. The wear member tends to wear out more quickly and is typically replaced a number of times before the base (which can also be a replaceable wear member) must also be repaired or replaced. One example of such a wear part is an excavating tooth that is attached to the lip of a bucket for an excavating machine. A tooth typically includes an adapter secured to the lip of a bucket and a point attached to the adapter to initiate contact with the ground. A pin or other kind of lock is used to secure the point to the adapter.”
The Opponent summarises the purpose of the invention in their submissions at paragraphs 11 to 13:
“The basic steps required to replace wear members on earthmoving equipment formed part of the common general knowledge (CGK) at the Priority Date. In short: (a) the wear member is unlocked; (b) the unlocked wear member is separated from its mounting surface, and (c) the wear member is lifted and moved away from the mounting surface. A new wear member is then installed, with these steps followed in inverse order.
The replacement of wear members was known in the CGK to present safety risks. At the point of installation, “the potential for the wear part to separate from the excavating equipment and fall or swing prior to implementing the locking mechanism places the installer in potential risk”. Similarly, at the point of removal, “[t]he uncontrolled falling of the wear part and the use of a hammer subject the operators to risks”, as does the “uncontrolled movement of the wear part which becomes a potential risk to the installer”.
The tool of the Application claims to address such risks by, inter alia, using “an adjustable multi-jaw gripper to secure a wear part from falling off of a base attached to excavating equipment”.”
I consider this to be a good summary of the invention and is also consistent with the Applicant’s view of the purpose of the invention.
The claims
The specification ends with 10 claims; 1 independent claim and 9 dependent claims:
Claim 1 is reproduced below:
1. A tool for removing a wear member secured to an earth working equipment, wherein the wear member has a front end, side surfaces and a rear surface in which a mounting cavity is defined, the tool comprising:
at least one auxiliary tool to hold the wear member mounted on the earth working equipment, wherein the at least one auxiliary tool includes a gripper with a pair of opposite arms that engage the side and rear surfaces of the wear member;
a manipulator movably supporting the at least one auxiliary tool; and
a controller to direct movements of the at least one auxiliary tool and the manipulator so they cooperate to hold the wear member and remove the wear member from the earth working equipment.
The decision on the allowability of amendments on the grandparent application (2014240371)
The grandparent application 2014240371 had a s59 opposition which resulted in a decision (CQMS Pty Ltd v ESCO Group LLC [2020] APO 24) where I found that some of the claims lack novelty and some of the claims lack an inventive step.
Amendments were proposed to overcome the deficiencies identified. The amendments were opposed and resulted in a decision (CQMS Pty Ltd v ESCO Group LLC [2022] APO 9) where I found that the amendments were not allowable.
The amendments were found not allowable because a single dependent claim (claim 36) added by amendment was found to be not supported by the description. Claim 36 defined that a pair of arms engaged with the side and rear surfaces of the wear member. I found that the specification did not disclose a pair of opposite arms engaging with the side and rear surfaces of the wear member, and instead disclosed a pair of opposite arms engaging with an intermediate surface (i.e. the surface intermediate of the front and side surfaces) and rear surfaces of the wear member.
The claims of the presently opposed application define the feature of “a pair of opposite arms that engage the side and rear surfaces of the wear member”. The decision on the allowability of amendments in the grandparent application (2014240371) is clearly relevant to the present opposition.
Construction - Legal Principles
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385, 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”
Construction
The only embodiment of the invention that plausibly falls within the scope of claim 1 is shown in figures 19a-d:
The accompanying description states at paragraph 140 with my emphasis added:
“Alternatively, one manipulator with a first arm to secure the wear member 15 from falling and a second arm to disengage the wear member 15 from the excavator may be used (not shown). The first arm may use a multi-jaw gripper 95 to secure the wear member 15 to the manipulator (Figures 19a-19d). The multi-jaw gripper 95 can have two outer arms 97 that oppose each other. Each outer arm 97 has a wedge 99 that extends from an inner surface 101 and along the rear surface 103 of each arm 97. Each outer arm 97 has an inner wedge 105 that can slide along the inner surface 101. A cavity 107 extends between the outer arm 97 and the inner wedge 105. A sliding mechanism 109 is inserted into each cavity 107. The sliding mechanism may be, for example, a screw, a pneumatic cylinder, or a hydraulic cylinder. Each outer arm 97 is secured to a support 111 that extends between each opposed outer arm 97. A cavity 113 extends from one outer arm 97 through the support 111 and through the other outer arm 97. A sliding mechanism 109 is inserted into the cavity 113 so that the opposing arms are able to slide together and apart. To attach the multi-jaw gripper 95 to a wear member 15 the manipulator 29 slides the outer arms 97 apart from each other and the manipulator 29 slides the inner wedges 105 away from the from the rear surface 103. The manipulator places the multi-jaw gripper 95 over the wear member 15 and slides the opposed outer arms 97 together so that each rear surface 103 and each wedge 99 fits between the wear member 15 and the base 13. In this position each rear surface 103 abuts the base 13 and the wedge 99 abuts the wear member. Next the manipulator 29 slides each inner wedge 105 towards the rear surface 103 until the inner wedges 105 abut the front end 19 of the wear member 15. Wear member 15 is now secured and ready for the securement mechanism 21 to be removed from the wear member 15.”
The evidence
The Opponent has limited the present opposition to be based entirely on the particular added by amendment to the Statement of Grounds and Particulars (dated 28 March 2022) which was after the usual evidentiary stages were complete. It is only the information provided (under reg 5.23) to the hearing after the amendment was made which has relevance to the present consideration.
Key points in the Reg 5.23 Briscoe declaration can be summarised as follows:
·The ‘intermediate surface’ I refer to in the s104 ‘371 decision is actually part of the side surface.
·The wedges have a dual function; they hold the wear member steady both longitudinally and laterally.
·Different embodiments of the invention could be combined such that there is a disclosure of “opposite arms that engage the side and rear surfaces of the wear member”
Key points in the Reg 5.23 Nienaber declaration can be summarised as follows:
·‘intermediate’ is a term commonly used in the art to describe an element in between two other distinct elements
·In the embodiment of Figure 19a the wedges do not abut the side surfaces of the wear member
·Combining different embodiments of the invention would be difficult and it is not clear how the embodiments would be combined.
Names of Surfaces
The issue at the centre of the opposition is the definition of terms, in particular the scope of the “side surfaces” defined in the claims.
The word ‘side’ has several alternative definitions in the Macquarie dictionary. Of these definitions, in the context of the present invention only two of these definitions are potentially relevant:
“3. one of the two surfaces of an object other than the front, back, top, and bottom.
4. either of the two lateral (right and left) parts of a thing.”
In the broader sense, every object has a left and right side. However, the word ‘side’ is not used in this way in the present application. Instead, in the present application the description uses the word ‘side’ in the narrower sense, since it explicitly refers to the front, back, top and bottom of the wear member.
Consequently, I construe the word ‘side’ to accord with the definition in the Macquarie dictionary as “one of the two surfaces of an object other than the front, back, top, and bottom”.
Mr Briscoe states at paragraph 18 of his 5.23 declaration:
Commonly, the as-new shape of a wear member used for excavators and dragline buckets is trapezoidal when there are no worn edges. On occasion (typically for equipment that requires greater penetration), the front corners of the as-new 'point' are bevelled (as shown in Figure 1). Otherwise, the front corners of the as-new 'point' may be almost square. In other words, a typical as-new wear member is wider at the rear end relative to the front end, and the side walls of the wear member are tapered, such that the wear member is generally trapezoidal in shape (see Figure 3 below).
Mr Briscoe at paragraph 32 of his 5.23 declaration provides annotated a top view of the wear member in figure 19a:
The naming of the surfaces of a wear member should be simple. The surface at the top of the wear member is the top surface, the surfaces at the sides of the wear member are the side surfaces, the surface at the rear of the wear member is the rear surface, and the surface at the front of the wear member is the front surface.
The distinction between surfaces of the wear member is simple where there are sharp corners. So the distinction between the rear and each side surface in the embodiment of Figure 19a is clear. The difficulty arises in curved objects such as the wear member in Figure 19a where the exact point at which the side surface becomes the front surface in unclear. Thus, the distinction between the front and each side in figure 19a is not clear.
A simplified view of the top view of the wear member is shown below:
I have identified the areas where there is a clear distinction between faces thus the naming of surfaces is clear, and the areas where there is ambiguity between surfaces and the naming of the surfaces is less clear:
Six ways to resolve the front and side surface ambiguity
I can see six plausible ways to resolve the ambiguity in the identification of the front and side surfaces.
1. Arbitrary point separating the front and side surfaces
The first way to resolve this ambiguity is to arbitrarily define a point that separates the adjacent surfaces. For example, the point where the tangent of the surface is ±45 degrees (with respect to the horizontal) could be chosen as the point that separates the front surface from the side surfaces. I have illustrated this below, with the red lines indicating the side surfaces and blue line indicating the front surface:
2. Surface name deduced from its function
The second way to resolve this ambiguity is to adopt the Applicant’s proposal expressed at the hearing. Mr Cordiner proposed that the name of the surfaces can be deduced by its function. Mr Cordiner suggested that any point at which the wedge of the gripper could provide lateral force to secure the wear member should be considered a side surface. I have illustrated this below, with the red lines indicating the side surfaces and blue line indicating the front surface.
Mr Cordiner proposed that a ‘common sense’ approach should be taken, and such a point could be considered a side surface if it provided a sufficient lateral force.
3. Overlapping surface names
The third way to resolve the ambiguity is to have surface names that overlap in some areas. I have illustrated this below, with the red lines indicating the side surfaces and blue line indicating the front surface. The areas with both red and blue lines are simultaneously both front and side surfaces.
4. Intermediate surfaces
The fourth way to resolve this ambiguity is to name the ambiguous areas as ‘intermediate surfaces’. This is the approach I took in the ‘371 decision. I have illustrated this below, with the red lines indicating the side surfaces, green lines indicating the intermediate surfaces, and blue line indicating the front surface.
5. There is no front surface, only left and right side surfaces
The fifth way to resolve the ambiguity is to accept that there is no front surface. The Applicant noted in their submissions that the description does not use the term front surface. For example, at paragraph 6.8 the Applicant states:
“The “front end” might be distinguished from a “front surface” (which is not a term used in the Opposed Application).”
At paragraph 7.6 the Applicant states:
“There is no limitation on where the “side surfaces” must be but they would be distinct from the “rear surface” in the context of the claim and a “front surface” (if any) as opposed to a “front end” of the wear member.”
I have illustrated this interpretation below, with the red lines indicating the side surfaces:
6. Inadequate disclosure – indeterminate which surfaces the wedges contact
The sixth way to resolve the ambiguity is to simply accept that there is an inadequate disclosure of where the wedges actually contact the wear member. The name of the surface at which the wedges contact the wear member is simply indeterminate. Because there is an inadequate disclosure, there is no clear and unambiguous disclosure of the wedges contacting the side surfaces.
Which naming of surfaces should be adopted?
The first interpretation (arbitrarily defining a point) is a logical way of resolving the ambiguity. However, it there is no support for this approach in the specification.
The second interpretation (if a wedge provides lateral force then it is contacting a side surface) also has no support in the specification. It also introduces another ambiguity; how much is sufficient lateral force?

The third interpretation (surfaces can have two names at a particular point) is contrary to the expectation that patent specifications clearly distinguish and explain features.
The fourth interpretation (the intermediate surface) deals with the ambiguity by ‘cordoning off’ the area of ambiguity and renaming this area. However, this is not ideal because it does not actually resolve the ambiguity, merely renames the area of ambiguity.
The fifth interpretation (there is no front surface, only left and right side surfaces) deals with the ambiguity by not following the naming convention that all the other surfaces of the wear member follow.
The sixth interpretation simply accepts that an ambiguity exists and it is intractable to resolve. There is simply insufficient information in the disclosure to determine the name of the surfaces that contact the wedges.
The first five interpretations are predicated on the assumption that there is sufficient information in the specification to resolve the ambiguity. However, given the number of plausible interpretations, this suggests that there is insufficient information to resolve the ambiguity. I consider the only way to resolve this issue is by ‘cutting the Gordian Knot’ with the sixth interpretation. I will adopt the sixth interpretation.
Support - Legal principles
Section 40(3) states:
The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [115], the delegate took the following approach to determine whether the claimed matter is supported by the matter disclosed in the specification:
(a)Construe the claims to determine the scope of the invention claimed.
(b)Construe the description and the technical contribution to the art, that is how far the concept has carried forward the state of the art.
(c)Decide whether the claims are supported by the technical contribution to the art.
The Federal Court has approved of this approach in Cytec Industries Inc v Nalco Company (2021) FCA 970 at paragraph 146.
The requirement for support is intended to ensure that there is a basis in the description for each claim, and that the scope of the claims must not be broader than is justified by the extent of the description, drawings and the contribution to the art. There must also be consistency, or basis, for each claim in the description. This has been stated as meaning that “the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words ... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art” (Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [97] per Lord Neuberger quoting with approval from Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653).
The requirement of support can be summarised as the scope of the claims “should correspond to the technical contribution to the art” (Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon) at 659).
In Biogen Inc v Medeva plc [1996] UKHL 18; [1997] RPC 1 at [57], Lord Hoffman referred to Asahi Kasei Kogyo KK’s Application [1991] RPC 485 to iterate that, for matter to be capable of supporting an invention, it must contain an “enabling disclosure”. That is, it must disclose the invention in a way which will enable it to be performed by a person skilled in the art. Lord Hoffmann subsequently described (at [63]) a long-established principle of patent law in the UK:
“... namely, that the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms. The patentee need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them.”
In Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd (Jusand) [2022] FCA 540 at 497 Rofe J approved of the approach in Biogen of determining if claims exceed the technical contribution.
Support
Combined embodiments
The Applicant states at paragraphs 6.23 to 6.26:
“Even if the Applicant were wrong to contend that the embodiment at [140] and in Figure 19a discloses a tool with two arms that engage the side surfaces and rear surfaces of the wear member, it contends that the statement at [0157] assists it.
As noted above, paragraph [0157] of the Opposed Application states that "[t]he features in one embodiment can be used with features of another embodiment. The examples given and the combination of features disclosed are not intended to be limiting in the sense that they must be used together." Accordingly, the Opposed Application teaches the person skilled in the art that features of one embodiment (such as that described with reference to Figures 27a to 27b) can be used with features of another embodiment (such as that described with reference to Figures 19a to 19c). Figures 27a and 27b of the Opposed Application, as Mr Briscoe describes, demonstrates a multi-arm tool 191 that includes arms (191b-c) that engage the side surfaces of the wear member part towards the rear of the wear part (Figure 9 of Briscoe #2 copied below).
Mr Briscoe explains that the arms (191b-c) of the embodiment described with reference to Figures 27a to 27b may include the feature of the rear wedges 99 described with reference to Figures 19a to 19c. This provides another example of a two arm gripper that includes opposite arms that engage the side and rear surfaces of the wear member.
While Mr Neinaber asserts that he sees great difficulty in using this combination “without extensive time consuming and costly testing and research”, he gives no example of what that would entail. That evidence is hopeless and may be met simply with the observation that there is no lack of sufficiency attack on the claimed invention. There would be no apparent difficulty in adding the wedges 99 to the arms of the device in Figure 27a. Next Mr Neinaber asserts that he is “not even sure that I would want to combine the features of those tools” but that is what paragraph [0157] of the Opposed Application invites. He then says there is “no problem disclosed in the specification that would motivate me to combine the features” but the specification indicates that fines might make removal of the wear member difficult and he agrees that the wedges 99 in Figure 19a would assist in pulling the wear member off the nose. There is no such express feature in Figure 27a which therefore invites the combination as invited at paragraph [0157].”
The Applicant asserts:
“There would be no apparent difficulty in adding the wedges 99 to the arms of the device in Figure 27a.”
The wedges 99 in Figure 19a move laterally to slide between the rear surface of the wear member and the front surface of the base. The arms (191a and 191b) in figure 27a pivot as they open and close to release and engage (respectively) with the side surfaces. If the wedges 99 were fixedly attached to the arms (191a and 191b) then the wedges would not move between the rear surface of the wear member and the front surface of the base as the arms rotated. It is plausible that the combined disclosure of the embodiments could be further modified such that the wedges could be attached by another means (e.g. a linkage mechanism or sliding cam mounting) to the arms (191a and 191b) such that the wedges would move between the rear surface of the wear member and the front surface of the base. However, hypothesizing about the additional features that would be required such that two embodiments could be combined extends far beyond what could reasonably be considered to be supported by the specification.
I am not satisfied that embodiments of the invention disclosed in the specification could be combined such that they provided support for the feature of “a pair of opposite arms that engage the side and rear surfaces of the wear member”.
The Opponent’s arguments
The Opponent provides five arguments as to why the claims lack support, and the Applicant in turn responds to each of the five arguments. An abridged version of the Opponent’s first four arguments are as follows:
“First, it is important to have regard to the structure of claim 1. The preamble to claim 1 describes a wear member which has “a front end, side surfaces and a rear surface”. This makes plain that the “front end” of the wear member is distinct from the “side surfaces”. Accordingly, it will not be sufficient for there to be a disclosure, in the Application, of an auxiliary tool which engages the front end and rear surfaces. Claim 1 will only comply with s 40(3) of the Patents Act if there is a disclosure of an auxiliary tool which engages the side surfaces and rear surfaces.
Second, there is no disclosure, anywhere in the Application, of any auxiliary tool which includes a gripper with a pair of opposite arms that engage the side surfaces and rear surfaces of the wear member. In Briscoe 7/9/21 at [6.12], Mr Briscoe asserts that:
“An example of such a tool is described at [00410] with reference to Fig. 19a of the Opposed Application (copied below), where the tool includes “opposed outer arms 97” that include a “wedge 99” configured to engage the rear face of the wear member and “inner wedge 105” to engage the side surfaces of the wear member.”
However, neither paragraph [0140] of the Application, nor Figure 19a, involve any such disclosure.
…
Third, and by way of contrast, whereas paragraph [0140] and Figure 19a plainly disclose that the inner wedges 105 “abut” the front end of the wear member and the wedges 99 “abut” the rear surfaces of the wear member, there is no disclosure that the inner surfaces 101 of the outer arms 97 “abut” the side surfaces of the wear member. To the contrary, it is readily apparent, from Figure 19a, that there is a significant gap between the side surfaces of the wear member and the inner surfaces 101 of the outer arms 97.
Fourth, it is not at all clear how the gripper described in paragraph [0140] and disclosed in Figures 19a – 19d could be configured to engage the side surfaces of the wear member. To the contrary, when regard is had to:
(a) the (triangular) geometry of both the inner wedges 105 and wedges 99, as depicted in Figure 19b; and
(b) the geometry of the wear members 15 repeatedly depicted in Figures 4, 5, 13, 16, 18a, 18b, 18e, 18f, 19a, 20a, 20b, 20c, 22a, 22c, 24, 25a, 25b (whereby the front portions of those wear members are repeatedly depicted as narrowing in width);
it is not at all clear how it would be possible to construct a gripper in which inner surfaces 101 engaged the side surfaces of the wear member 15 at the same time as inner wedges 105 abutted the front end of the wear member and the wedges 99 abutted the rear surfaces of the wear member.”
The Applicant’s response to these arguments are as follows:
“Firstly, the Opponent asserts that claim 1 of the Opposed Application lacks support as the “front end” of the wear member is distinct from the “side surfaces” and accordingly, it is not sufficient for there to be disclosure in the Opposed Application of an auxiliary tool which engages only the front and rear surfaces. The Applicant contends that is wrong for the reasons set out above – the “front end” can include “side surfaces”.
Secondly, the Opponent asserts that there is no disclosure in the Opposed Application of any auxiliary tool which includes a gripper with a pair of opposite arms that engage the side surfaces and rear surfaces of the wear member. In particular, the Opponent states that neither paragraph 140 of the Opposed Application nor Figure 19a involves such disclosure. That is wrong for the reasons set out above.
Thirdly, the Opponent states that there is no disclosure that the inner surfaces 101 of the outer arms 97 abut the side surfaces of the wear member. The Opponent asserts that it is readily apparent from Figure 19a that there is a significant gap between the side surfaces of the wear member and the inner surfaces 101 of the outer arms 97. This is a moot point because, the engagement of the opposing arms of this embodiment on the side surfaces of the wear member of the tool is provided by the inner wedges 105. While not necessary for the Applicant to win its case, that is not to say that the inner surfaces 101 could not abut the side surfaces of the wear member. For example, if the depth of the wedges 99 were shortened then the inner surfaces 101 of the arms could very well abut the side surfaces of the worn wear member. This would depend on the shape of the wear member but the wear member disclosed in the figures tapers in such a way that the inner surfaces 101 of the arms would likely abut the rear side surface of the wear member if the wedges 99 were shortened sufficiently. This would provide another basis of support for the integer in question.
Fourthly, the Opponent states that it is not at all clear how the gripper described in paragraph [0140] and disclosed in Figures 19a to 19d could be configured to engage the side surfaces of the wear member.46 In particular, the Opponent asserts that, with regard to the geometry of the inner wedges 105 and wedges 99 and wear members 15, it is not clear how the gripper in which inner surfaces 101 engaged the side surfaces of the wear member 15 at the same time as inner wedges 105 abutted the front end of the wear member and the wedges 99 abutted the rear surfaces of the wear member. For the reasons set out above, the Opponent has misunderstood the disclosure. The gripper does engage the side surfaces of the wear member already – it does not need any change to do so. Regardless, as above – it would be a simple matter for the wedges 99 to be shortened so that the rear side surfaces abutted the inner surfaces 101 of the arms.”
The first four arguments by the Opponent and Applicant highlight the difficulty in resolving the ambiguity in the disclosure and reinforce my view that the ambiguity in the disclosure is intractable.
By adopting the sixth interpretation it essentially renders moot the first four arguments in the Opponent’s submissions (and Applicant’s responding submissions). The only argument that needs to be addressed is the Opponent’s fifth argument regarding whether I can come to a different conclusion in this decision than I did in the Second 371 Decision.
Fifth argument – whether (and to what extent) this decision is bound to conclusion reached in the Second 371 Decision
The Opponent states:
“Fifth, and reflecting the foregoing, the Delegate in the Second 371 Decision held that there was no disclosure, in the 371 Application, of a “pair of opposite arms that engage the side and rear surfaces” of the wear member. After recounting the submissions of the parties, the Delegate in the Second 371 Decision held at [40] – [42] that:
“I consider that this embodiment shows that the inner wedges engage at the front end of the wear member, but actually engages with neither the front nor the side surfaces of the wear member. Instead, the wedges engage with an intermediate surface that is in between the front and the side surfaces of the wear member.
It is not clear how the embodiment of the invention given in paragraph 140 could be constructed such that the longitudinal movement of the wedge members (as described in the penultimate sentence in paragraph 140) would engage with the side surfaces (rather than an intermediate surfaces) of the wear member. I consider that the proposed amendment to the claims such that the opposite arms engage with the side surfaces of the wear member is an encroachment beyond what is disclosed.
I am not satisfied that there is disclosure of the feature of the opposite arms that engage with the rear and side surfaces of the wear member as defined in proposed claim 36. Consequently, this aspect of the amendment is introducing new matter and it is also introducing a claim that is not supported by the description, and thus does not comply with s 102(1) and s 102(2)(b).
The nature of the disclosure made in the 371 Application in respect of this feature was relevantly identical to the nature of the disclosure made in the Application. In particular, paragraphs [002] – [0159] of the specification of the 371 Application and the Application are identical, as are Figures 1 – 27b. That is unsurprising, given that the Application is the “grand daughter” of the 371 Application.
The only relevant difference, between the disclosure in the 371 Application and the Application, in respect of this feature, is contained in the drafting of claim 1 of the Application. Put simply, whereas proposed new claim 36 of the 371 Application referred to an auxiliary tool which includes “a pair of opposite arms that engage the side and rear surfaces of the wear member”, without any prior reference to those (or other) surfaces of the wear member, claim 1 of the Application contains a preamble which expressly distinguishes the “front end, side surfaces, and a rear surface” of the wear member before describing the features of the gripper claimed. This preamble reinforces that each of the front end, side surfaces and rear surface of the wear member are different areas, such that an opposite arm of the gripper which engages the “front end” cannot, by reason of that fact alone, also be described as engaging the “side surfaces”.
It follows that the reasoning of the Delegate, in the Second 371 Decision, applies with even greater force to the Application. That reasoning should be applied in construing the nature of the disclosure made by the Application and in analysing the question of support which arises in this opposition proceeding.
In this respect, “[i]t is a general principle, founded in efficiency and fairness, that a matter arising between parties should be decided once and for all”. Whilst principles of estoppel cannot “stand in the way of [the Commissioner] considering the opposition fully” pursuant to s 60 of the Patents Act, that “does not mean that the matter is heard without regard to” any relevant prior decision. The correct approach is to “start with the findings” previously made “and then ask whether there is any evidence that contradicts those findings”. This applies not only to findings of fact, but also questions of construction. Thus, in Neurizon v Jupiters, Kiefel J quoted with approval the statement in Terrell on the Law of Patents that “the court will usually hold itself bound by previous decisions on the question of the construction of the specification” and held that “[a]s a matter of judicial comity the earlier decision will usually be followed, unless the second judge is convinced that it is wrong” and that “[t]his rationale seems particularly appropriate, in my view, where the construction of a public document defining a monopoly is involved”.
The Delegate in this opposition proceeding should follow and apply the reasoning of the Delegate in the Second 371 Decision. The nature of the disclosure made in the 371 Application and the Application is almost identical. To the extent that the drafting of claim 1 of the Application varies to proposed new claim 36 of the 371 Application, the structure of claim 1 of the Application provides further support for the reasoning of the Delegate in the Second 371 Decision. ESCO has not appealed the finding of the Delegate in the Second 371 Decision as to the lack of support of claim 36.
The Applicant states:
“Fifthly, the Opponent states that the Delegate in the CQMS Pty Ltd v ESCO Group LLC [2022] APO 9 (Second 371 Decision), held that there was no disclosure in the Australian Patent Application No. 2014240371 (371 Application) of a "pair of opposite arms that engage the side and rear surfaces" of the wear member. The Opponent asserts that the reasoning of the Delegate in the Second 371 Decision applies to the Opposed Application and the reasoning should be applied in construing the nature of the disclosure made by the Opposed Application and in analysing the question of support. However, the Delegate there did not have the assistance of the evidence and submissions filed in this case. The Opponent also notes that the Applicant did not appeal from the decision regarding the 371 Application, but the Applicant did not need to do so, as it has amended the claims of that application to remove the issue.”

The Applicant provides a succinct analysis of when it would be appropriate to depart from an earlier decision. In deciding the Second 371 Decision I did not have did not have the assistance of the evidence and submissions filed in this opposition. With this information at hand, I now have come to a different view, albeit with rather similar effect as the earlier decision.
Conclusion on support
I have found that there is inadequate support for the feature of a pair of opposite arms that engage the side and rear surfaces of the wear member. Consequently, claim 1 (and all claims dependent thereon claims 2-10) lack support from the specification.
Should the Applicant be given the opportunity to make amendments?
I cannot see how allowable amendments could be made to overcome the lack of support. Post acceptance amendments must fall within the scope of the claims accepted, however all the claims accepted have been found to lack support because they include the feature of the opposite arms engaging with the side surfaces. To overcome the support issue the Applicant would need to either: a) remove from the claim the feature of the opposite arms engaging with the side surfaces or b) insert a clear disclosure of what is meant by side surfaces. However, either of these options does not appear to be an allowable amendments.
Although I am unable to see how allowable amendments could be made to overcome the support deficiency, it is possible that the Applicant could find a way that an allowable amendment could be made. Consequently, I allow the Applicant 2 months from the date of this decision to propose amendments to overcome the deficiency.
Costs
Costs typically follow the event, however there is one relevant atypical aspect of this opposition.
The Statement of Grounds and Particulars was amended to include the (successful) ground of opposition on 28 March 2022.
I award no costs up to the date the SGP was amended (28 March 2022). Costs are awarded against the Applicant according to Schedule 8 from the day after the Statement of Grounds and Particulars was amended.
Xavier Gisz
Delegate of the Commissioner of Patents