CQMS Pty Ltd v ESCO Group LLC - [2022] APO 9

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2022] APO 9
Patent Application: 2014240371

Title:Wear assembly removal and installation

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date: 16 February 2022

Hearing Date: 17 November 2021, by Video Conference

Catchwords: PATENTS - opposition under section 104 – allowability under subsections 102(1), 102(2)(a) and 102(2)(b) considered – amendments do not comply with 102(1) and 102(2)(b) – opposition succeeds – costs awarded against the applicant

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Shyama Jayaswal of MinterEllison, Wayne McMaster of Intellectual Property Counsel
Opponent: James & Wells Intellectual Property

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2014240371

Title:Wear assembly removal and installation

Patent Applicant: ESCO Group LLC
Date of Decision: 16 February 2022

DECISION
The amendments do not comply with sections 102(1) and 102(2)(b).
The amendments are refused.

The deficiency (of novelty and inventive step) identified in the first decision still exists. The Applicant has two months from that date of this decision to propose suitable amendments.
Costs are awarded against the Applicant.

REASONS FOR DECISION
Background

In CQMS Pty Ltd v ESCO Group LLC [2020] APO 24 (First Decision), I held that claims 1 and 21 of Australian Patent Application No. 2014240371 (the Application) lacked novelty and claims 1, 4-12, 16,17, 20-23, 25-30, 32 and 33 of the Application lacked an inventive step.
As a result, ESCO Group LLC (the Applicant) filed a Statement of Proposed Amendments on 9 July 2020. On 27 August 2020, the Office issued correspondence indicating that the Delegate considered that the request for leave to amend was valid and that acceptance would be published in the Official Journal on 10 September 2020.
On 10 November 2020, the CQMS Pty Ltd (the Opponent) filed a Notice of Opposition (Notice of Opposition) opposing the Proposed Amendments and on 10 December 2020 it filed a Statement of Grounds and Particulars (SGP).
The Opponent filed, as evidence in support, a Declaration of Quintin Nienaber dated 10 March 2021, together with Exhibits QN-1 to QN-3 (Nienaber). The Applicant filed, by way of evidence in answer, a Declaration of Terry Lee Briscoe dated 27 April 2021, together with Exhibits TLB-4 and TLB-5 (Briscoe).
The hearing took place on 17 November 2021 by video conference. The Applicant made oral submissions at the hearing (in addition to their written submissions made before the hearing), while the Opponent did not attend the hearing and only provided written submissions.
Grounds of Oppositions
The Statement of Grounds and Particulars opposes the amendments under subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act. Under paragraph 102(2)(b), it is asserted that the proposed amendments would not comply with subsections 40(2) or 40(3).
The relevant law
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 RTB Act) since the application was filed after 15 April 2013. Therefore, amendments to sections 40 and 102 of the Act apply to the present opposition as a consequence of Schedule 1, items 55(1) and 55(9)(e) of the RTB Act.
The standard of proof that applies to section 104 oppositions proceeding under the RTB 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.
The relevant provisions of the Act in this matter are those of subsections 102(1) and 102(2), which are set out below:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
·     (a) the complete specification as filed;
·     (b) other prescribed documents (if any).
(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).
The ‘relevant time’ for the purpose of ss 102(2)(a)&(b) is after the specification has been accepted. Subsections 40(2) and 40(3) of the Act as they apply to the present case are set out below:
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent—end with a claim or claims defining the invention; and
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
(3A) The claim or claims must not rely on references to descriptions, drawings, graphics or photographs unless absolutely necessary to define the invention.
Subsection 102(1): “claim or disclose matter that extends beyond [the original disclosure]”
As explained in the Explanatory Memorandum at item 29:
“The item introduces a provision preventing amendment of a complete patent specification after filing to add new matter that would go beyond the disclosure contained in the specification at its filing date. An applicant would not be able to amend the specification to add any material that the hypothetical skilled person could not directly derive by reading the information in the specification as filed.”
Thus, the effect of subsection 102(1) is to prohibit an amendment to the specification which would not have met the disclosure and support requirements of section 40 at the time of filing the specification.
Paragraph 102(2)(a): In-substance Fall Within the Scope of the Claims Before Amendment
A useful test for considering the allowability of an amendment under paragraph 102(2)(a) is whether a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already. This view was expressed in AMP Incorporated v Commissioner of Patents (1974) 48 ALJR 278 where the High Court stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.”
I note that the allowability of an amendment under paragraph 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in-substance fall within the scope of every claim before amendment, rather it only need to in-substance fall within the scope of any of the claims before amendment.
Consideration of the prohibition in this section requires a comparison between the proposed new claims and the claims of the specification immediately before amendment.Thus the identification of the amendment is an important first step. However, 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 (Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814; 87 IPR 516 at [40]). For this reason, a long standing practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment (Fina Research SA v Halliburton EnergyServices Inc [2003] FCA 251 at [29]).
Paragraph 102(2)(b): Compliance with subsection 40(3), clarity and support
I have already identified the relevant law with respect to support. In relation to clarity, 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 application of these rules 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."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
Specification
I summarised the invention in the first decision as follows:
“The invention is a machine for removal and installation of wear members used in earth working equipment. The machine is a robotic device comprising an auxiliary tool to hold the wear member and a manipulator. The auxiliary tool and manipulator cooperate to: a) release a retainer and remove the wear member, and b) install a second wear member and secure a second retainer. The robotic device is controlled by a controller. The robotic device is mounted on a mobile base to move the robotic device from a first location to the earth working equipment.
A preferred embodiment of the invention is shown in figure 7:
”
The amendments
Amendments have been made to alter claims 1, 18, 20, 33, and add claims 34, 35 and 36.
The amendments to claims 1 and 36 (the only amendments which the Opponent has taken issue with) are as follows (with additions in underline and removal in strikethrough):
1. A tool for replacing a wear member secured to earth working equipment operating in a land-based mine, the earth working equipment including a base, a wear member mounted on the base, and a retainer to hold the wear member to the base, the tool comprising:
at least one auxiliary tool to hold the wear member mounted on the earth working equipment, and to release the retainer;
a single manipulator movably supporting the at least one auxiliary tool, wherein the manipulator and the at least one auxiliary tool cooperate to release the retainer and remove the wear member from the base of the earth working equipment, and cooperate to install a second wear member on the base and secure a second retainer to hold the second wear member to the base;
a controller to direct the movements of the at least one auxiliary tool and the manipulator; and
a mobile base to support and have the capability to move the at least one auxiliary tool and the manipulator to different locations within a land-based mine, including from a first location away from the earth working equipment with the wear member to a second location suitable for replacement of ~~the earth working equipment with~~ the wear member.
36. A tool in accordance with any of the preceding claims wherein the at least one auxiliary tool includes a pair of opposite arms that engage the side and rear surfaces of the wear member.
Claim 1: “capability to move…”
The Opponent states:
“It was a requirement of claim 1, before the proposed amendments, that there was “a mobile base to support and move the at least one auxiliary tool and manipulator from a first location to the earth working equipment with the wear member”. That is, claim 1, before the proposed amendments, required a mobile base to “move” the at least one auxiliary tool and manipulator, to fall within the scope of claim.
The amendments proposed by ESCO remove the requirement that the mobile base “move” the auxiliary tool and manipulator. Instead, all that is now required, to fall within the scope of the claim, is a mobile base which has “the capability to move the at least one auxiliary tool and manipulator…”, irrespective of whether it actually does so.”
A hypothetical example of the distinction is made in Mr Nienaber’s declaration where he states at paragraph 11:
“…I would understand the two phrases which I have been asked to consider, to differ most notably in that a mobile base that is capable of moving the manipulator is not intended to do so in practice. For example, many vehicles in mining environments have a relatively small operating area due to factors such as their movement speed, their fuel range, their capability of navigating inclines or difficult terrain, and their load capacity. An example of such a vehicle is a small construction excavator. While such a vehicle might be able to carry a GET removal tool, generally, it would not be commercially or technically intended to transport the GET removal tool over large distances in a mine.”
The Applicant states:
“The claim both before and after the proposed amendment is a product claim, not a method claim. Each of the integers of the claim are themselves things (not methods) that have certain features or capabilities as recited in the claim. Prior to amendment one of those things was “a mobile base to support and move the at least one auxiliary tool and the manipulator…”. Accordingly, the word “to” in the phrase “to support and move” means “able to” or “suited to”. The claim was not a method claim where infringement could only occur where there was a mobile base which had been in fact been used to “support and move the at least one auxiliary tool and the manipulator”.”
The Applicant makes the assertion that:
“The claim was not a method claim where infringement could only occur where there was a mobile base which had been in fact been used to “support and move the at least one auxiliary tool and the manipulator”.”
The Applicant asserts that the claims, prior to amendment, did not require the mobile base to actually move from the first location to the second location, and instead only required that the mobile base had the capability to move from the first location to the second location.
I agree with the Applicant. The claim before the amendment was broad enough to be infringed without actually moving from one location to another. Having to prove a machine was actually used in the way that it was intended to be used to show anticipation or infringement is an unnecessary hurdle.
Thus, I consider the claims before amendment only required the mobile base to have a capability to move from the first to the second location. This aspect of the claims after amendment has the same scope. Consequently, this aspect of the amendment complies with s 102(2)(a) and also sections 102(1) and 102(2)(b).
Claim 1: “location suitable for replacement of the wear member”
The Opponent states:
“It was a requirement of claim 1, before the proposed amendments, that there to be a mobile base “to support and move the at least one auxiliary tool and the manipulator from a first location to the earth working equipment with the wear member”. That is, claim 1 required the mobile base to move the auxiliary tool and the manipulator “to” the earth working equipment.
The amendments proposed by ESCO delete this requirement. Instead, all that is now required is that the mobile base have “the capability” to move “to different locations within a land-based mind, including from a first location … to a second location suitable for replacement of the wear member”. That is, the effect of the proposed amendments is that:
(a) there is no longer any requirement that the mobile base actually move the auxiliary tool and the manipulator;
(b) there is no longer any requirement that the mobile base move the auxiliary tool and the manipulator “to” the earth working equipment; and
(c) all that is now required is that the mobile base have “the capability” move the auxiliary tool and the manipulator “to different”, unspecified, “locations within a land-based mind [sic]”.”
Claim 1, before amendment, required the mobile base to move the auxiliary tool and the manipulator from a first location to the earth working equipment. Claim 1, after amendment, is far broader – not only is it sufficient if the mobile base has “the capability” move, but it is sufficient if that capability exists between any “different locations within a land-based mine”.
Mr Briscoe has asserted, in his statutory declaration, that “a movement to the second location “suitable for replacement of the wear member” is a movement to the earth working equipment to which the wear member is secured”. Mr Briscoe has asserted this to be so because: “while the second location does not specifically refer to the earth working equipment, a location that is suitable for replacement of “the wear member” must be a location at the earth working equipment, because the wear member is in fact secured to that earth working equipment”.
This evidence should be rejected.
First, the construction asserted by Mr Briscoe simply does not reflect what claim 1, as amended, says. In essence, Mr Briscoe asserts that proposed amended claim 1 ought be confined, in its ambit, by some sort of implied limitation. However, the words of claim 1, in its amended form, are clear – all that is required is that the mobile base have “the capability” to move “to different locations”. Those locations may, or may not, include the location of the earth working equipment. It is trite that “it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification”.
Second, in seeking to justify his construction of proposed amended claim 1, Mr Briscoe asserts that “a location that is suitable for replacement of “the wear member” must be a location at the earth working equipment”.
That is both irrelevant and wrong.
It is irrelevant because claim 1, before amendment, never used the language “a location at the earth working equipment”. To the contrary, claim 1 required that the mobile base move the auxiliary tool and the manipulator “to the earth working equipment”. Claim 1, before amendment, was not satisfied by the mobile base moving the auxiliary tool and the manipulator to a location “at the earth working equipment”, whatever that might mean. Claim 1, before amendment, required the mobile base to move the auxiliary tool and the manipulator to the earth working equipment itself.
It is wrong because there is no requirement that a “location suitable for replacement of the wear member” be a location at which earth working equipment is present. It is self-evident that a location, such as “an on-site or off-site workshop”, might be a “location suitable for replacement of the wear member”, within the meaning of proposed amended claim 1. Indeed, Mr Nienaber has explained that a workshop might be a particularly suitable location for the replacement of a wear member because of “power availability, work space clearance, tools such as overheard cranes, as well as level and solid ground”.
A tool with a mobile device capable of moving to, or within, such a workshop, or a specified location in such a workshop, to which earth working equipment would then be [sic] move, would fall within proposed amended claim 1. That tool would have the capability to move to a “location suitable for replacement of the wear member”. This location “is no longer necessarily the earth moving equipment, but a site suitable for replacement of the wear member”. However, such a tool would not fall within claim 1, before amendment. It would not do so because it could not be said to “move the at least one auxiliary tool and the manipulator from a first location to the earth working equipment”.
Put another way, claim 1, before amendment, required the mobile base to move the auxiliary tool and the manipulator to the earth working equipment, whereas claim 1, after amendment, merely requires the mobile base to have the capability to move the auxiliary tool and the manipulator to a different location within a land-based mine, including a location suitable for the replacement of the wear member, to which earth working equipment might then be moved.
It follows that this proposed amendment also does not comply with s 102(2)(a) of the Patents Act.
Further, in circumstances where the Application makes no reference to, and involves no discussion of, what might constitute a “location suitable for replacement of the wear member”, the proposed amendment would result in the Application both claiming and disclosing “an entirely new integer, that is to say, a feature that had not been disclosed in the specification previously”, in contravention of s 102(1)(a), and for which there is no support, within the meaning of s 40(3). It simply cannot be said that “the unamended specification…contain[ed] a real or reasonably clear disclosure of what was claimed as a result of” the proposed amendments, namely, a mobile base with the capability to move the auxiliary tool and the manipulator to a location suitable for replacement of the wear member, rather than to the earth working equipment itself.”

The Applicant states:
“The Opponent submits at OS at [34] that the Patent Application “makes no reference to, and involves no discussion of, what might constitute a "location suitable for replacement of the wear member".
However, there is an implicit, if not explicit, disclosure of this feature. This defined movement is disclosed in paragraph [0009] of the Patent Application (copied below, emphasis added).
“In accordance with one aspect of the invention, a tool includes at least one auxiliary tool to hold a wear member, at least one manipulator to manipulate the auxiliary tool to engage and remove the wear member from earth working equipment, a controller, and a mobile base to move the tool to the earth working equipment. Such a tool can be used throughout a mine and/or moved to convenient locations to accommodate the removal of wear members from equipment that may be used in different locations or to service a number of different equipment operating at a mine.”
A “convenient” location which “accommodates the removal of the wear member” from equipment which may be in different locations or all in the one location is implicitly, if not explicitly, a “location suitable for replacement of the wear member”. The general location will be where the equipment is, or where the equipment can move to, and the specific location will be where the auxiliary tool and manipulator can remove the wear member from that equipment. For example, a location where one may service a “number of different equipment” is, as Mr Nienabar recognised, an on-site workshop and the movement may not need to be far at all. Where the location is where the equipment is working on site, the tool may need to move some distance.
Furthermore, the specification identifies, “the environment in which the wear parts must be replaced is varied and the environment is often difficult and/or unpredictable”, including for reasons such as the ground being “muddy, un-level and/or unstable”. Given that variation of environment on the field, there may be locations on the mine site where it is not suitable to place the tool for removal of the wear member.
Lest there be any doubt, the reference to "the wear member" in the phrase “second location suitable for replacement of the wear member” is a reference to the same wear member described with reference to the first location. It is also the same wear member that is "secured to" the earth working equipment described earlier in claim 1 (i.e., the earth working equipment having "a base, a wear member on the base, and a retainer to hold the wear member to the base"). As is explained by Mr Briscoe:
"In other words, while the second location does not specifically refer to the earth working equipment, a location that is suitable for replacement of "the wear member" must be a location at the earth working equipment, because the wear member is in fact secured to that earth working equipment."
Amended claim 1 therefore requires that the second location is not only at the earth working equipment with the wear member, but is also a location that enables the manipulator to replace the wear member on the earth working equipment.
Finally, it is apparent from the evidence filed by both Mr Nienabar and Mr Briscoe that neither expert had any difficultly [sic] determining what might constitute "a location suitable for replacement of the wear member" by reference to the body of the specification (which has not been amended). The Opponent's submissions to the effect that there is no relevant disclosure is not identified as being supported by any evidence.
Therefore, as a result of the amendment adding the requirement of movement of the tool to a second “location suitable for replacement of the wear member”, claim 1 does not extend beyond the subject matter disclosed (explicitly and/or implicitly) in the complete specification prior to amendment.”
The claims have changed the definition of the second location. Before amendment, the second location was at the earth working equipment. After amendment, the second location is a place suitable for replacement of the wear member.
The Opponent has argued that the amended claim includes within its scope the situation where the auxiliary tool and manipulator are moved to the second location and then the earth working equipment is moved to the second location. However, the claim before the amendment does not define the location of the equipment when the auxiliary tool and manipulator are moved to it. Hence the claim before the amendment was broad enough to encompass the Opponent’s example.
I consider that a location that is suitable for replacement of "the wear member" must also be a location at the earth working equipment, since the wear member is secured to that earth working equipment. Thus, I consider that the location at the earth working equipment is the same as the location at the wear member. This aspect of the amendment complies with s 102(2)(a) and also sections 102(1) and 102(2)(b).
Claim 36: “pair of opposite arms that engage the side and rear surfaces…”
The Opponent states:
There is no disclosure, anywhere in the Application, of any auxiliary tool which includes a pair of opposite arms that engage the side and rear surfaces of the wear member, as described in claim 36.
Mr Briscoe asserts that such a disclosure is made in paragraph [00140] of the Application. Mr Briscoe asserts:
“An example of such a tool is described at [00140] with reference to Fig. 19a of the Opposed Application (copied below), where the tool includes “opposed outer arms 97” that include a “wedge 99” configures to engage the rear face of the wear member and “inner wedge 105” configures to engage the side surfaces of the wear member.”
However, Mr Briscoe misquotes paragraph [00140] of the Application. Whilst paragraph [00140] does disclose that “each rear surface 103 and each wedge 99 fits between the wear member 15 and the base 13”, it also explains that “inner wedges 105 abut the front end 19 of the wear member 15. Wear member 15 is now secured…”. That is, the pair of opposite arms engage with the front and rear surfaces of the wear member, not the side and rear surfaces. It is wrong for Mr Briscoe to assert that “”inner wedge 105” configures to engage the side surfaces of the wear member”. To the contrary, paragraph [00140] explains that ““inner wedges 105 “inner wedges 105 abut the front end”
Figure 19a is shown below:
Paragraph 140 states:
“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 multijaw 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 penultimate sentence of paragraph 140 states (with my emphasis in bold):
“… inner wedges 105 abut the front end 19 of the wear member 15.”
The Applicant states:
“The crux of the Opponent's submission is that paragraph [00140] of the Patent Application, to which Mr Briscoe refers when providing his evidence on construction for claim 36, does not explicitly state that the pair of opposite arms engage the side and rear surfaces of the wear member. This is correct. However, the Opponent ignores Figure 19a of the Patent Application (copied above at paragraph 14.6), to which paragraph [00140] refers. As Mr Briscoe explains, Figure 19a clearly discloses a tool that meets the requirements of claim 36 (i.e., where the opposite arms engage the side and rear surfaces of the wear member).”
In the hearing Mr Cordiner explained that, in addition to the longitudinal force, the wedges 105 must necessarily also provide a lateral force (as a result of the slanted faces of the wedge 105), and this force is inherently directed to the sides (rather than the front end) of the wear member.
The wear member in figure 19a has curved faces such that the front surface ‘blends into’ the side surface, with no distinct boundary between the front and side surfaces. The flat faces of the wedges 105 contact the wear member at the points where curved surface meets angled faces of the wedges. The Applicant’s argument is that those points of contact must be the sides of the wear member.
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 deficiency determined in the first decision
As I have found the amendments are not allowable and should be refused, the deficiency (of novelty and inventive step) identified in the first decision still exists.
It follows that as a result of the refusal, suitable amendments were not proposed by 22 July 2020 as required by the first decision. However, the Applicant has made a genuine attempt to overcome the findings of the first decision. Consequently, I consider it appropriate to allow the Applicant two (2) months from the date of this decision to propose suitable amendments.
Conclusion
The amendments do not comply with sections 102(1) and 102(2)(b). The amendments are refused.
The deficiency (of novelty and inventive step) identified in the first decision still exists and the Applicant has two months to propose suitable amendments to overcome the findings first decision.
Costs
The opposition is successful. I see no reason to depart from the usual practice that costs follow the event. I will accordingly award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Applicant, ESCO Group LLC.
Xavier Gisz
Delegate of the Commissioner of Patents