CQMS Pty Ltd v ESCO Group LLC
[2022] APO 5
•31 January 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2022] APO 5
Patent Application: 2016253640
Title:Wear assembly
Patent Applicant: ESCO Group LLC
Opponent:CQMS Pty Ltd
Delegate:Xavier Gisz
Decision Date: 31 January 2022
Hearing Date: 10 November 2021, in Video Conference
Catchwords: PATENTS - section 59 – final determination – amendments overcome deficiencies identified in previous decision – application to proceed to grant – costs awarded against opponent
Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Shyama Jayaswal of MinterEllison, Wayne McMaster of Intellectual Property Counsel
Counsel for the opponent: Peter Creighton-Selvay
Patent attorney for the opponent: Mr Adam Luxton of James & Wells
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016253640
Title:Wear assembly
Patent Applicant: ESCO Group LLC
Date of Decision: 31 January 2022
DECISION
The amendments to the specification overcome the deficiencies identified in the first and second decisions in this section 59 opposition and do not introduce new deficiencies.
Subject to appeal, I direct that the application proceed to grant.
Costs in accordance with Schedule 8 are awarded against the Opponent, CQMS Pty Ltd.
REASONS FOR DECISION
The matter relates to patent application 2016253640 (the Application) in the name of ESCO Group LLC (the Applicant).
Following an opposition by CQMS Pty Ltd (the Opponent), I, as a delegate of the Commissioner of Patents, issued a decision CQMS Pty Ltd v ESCO Group LLC [2020] APO 14 on 16 March 2020 (the first decision). The first decision found that claims 1 to 6 and 8 of the Application lacked support, and the Applicant was given two months to propose suitable amendments to overcome this finding. The Applicant filed an amendments on 17 April 2020.
Following a final determination hearing, I issued a decision CQMS Pty Ltd v ESCO Group LLC [2020] APO 54 on 16 December 2020 (the second decision) in which I found that the amendments did not overcome the deficiencies identified in the first decision.
On 27 January 2021, the Applicant filed a proposed amendment to overcome the deficiencies identified.
The Opponent advised on 15 June 2021 that they wanted to be heard in relation to the final determination of the matter, and the hearing took place on video conference on 10 November 2021.
Applicable Law
The law relevant to the final determination has been set out in the second decision. Put briefly, the only question for me to consider is whether the amendments have overcome the deficiencies identified in the previous decisions, and whether they introduce any new deficiencies.
The first and second decisions
In the first decision I found that claims 1 to 6 and 8 of the Application lacked support. The crucial paragraphs in the first and second decisions are reproduced below.
The first decision states at paragraph 81:
“I agree with the Applicant that the invention described provides that “the definition of those [locked and release positions] positions occurs mechanically”. Furthermore, I consider that a mechanical means for defining the locked and release positions to be the technical contribution of the invention. However, the invention defined in claims 1 to 6 and 8 does not contain such a restriction. As set out in my letter of 1 November 2019, I consider that claims 1 to 6 and 8 include within their scope non-mechanical means to determine if the holding device is in the release position and the locked position.”
The second decision states at paragraph 12:
“The claims now define that the holding component is mechanically secured in the release position and locked position. This immediately raises the question of whether the holding component can also be considered “mechanically secured” in any other positions (for example, in any intermediate position between the release position and the locked position) in the same way. If there is nothing to differentiate the threaded pin being “mechanically secured” on the one hand in the release and locked positions, and on the other hand in any intermediate position, then the words added by amendments do not change the scope of the claim and thus the claim would still lack support.”
The second decision states at paragraph 15:
“The claims prior to amendment were silent to whether the holding component would be “secured” in any position. I consider that the amendments defining that the holding component is secured in the release and locked position do not define (explicitly or implicitly) that the holding component moving into the release and locked positions is noticeably differently than when the holding component moves to any other position. Thus I consider that the amendments do not address the lack of support deficiency identified in the first decision.”
The second decision states at paragraphs 20 and 21:
“The Applicant has amended the claims such that they define the invention only in terms of physical features. Further amendments overcoming the deficiency in the first decision can be made in terms of physical features alone by defining how the holding device is “mechanically secured” in the release and locked positions relative to the other positions. For example, the claims could define that the holding device is significantly more firmly mechanically secured (but still releasably secured) in the release and locked positions than the other positions.
Alternatively, the claims could be amended to define the invention in terms of both physical features of the device and how the user interacts with the device. For example, the claims could define that the holding component moves into and out of the release position and locked position in a way which is noticeable to the user by way of a mechanical means.”
The present amendments
The amendments of 27 January 2021 result in the alteration of claims 1, 5 and 6 and the deletion of claim 8.
The Opponent states in relation to the amendments:
“The Opponent (CQMS) contends that the proposed amendments to claims 1 and 5 do not overcome the First Decision or Second Decision and are, in fact, inconsistent with the guidance provided by the Delegate in the Second Decision. In contrast, CQMS does not oppose the incorporation, within claim 6, of the text previously appearing within claim 7.”
The amendments to claims 1 and 5 which are shown below with words added by amendment (in comparison to the claims considered in the second decision) shown in underline:
1.A wear member for attachment to earth working equipment to protect the equipment from wear during use, the wear member comprising a front end, an external wear surface to contact the ground during use of the earth working equipment in an earth working operation, a rearwardly-opening cavity to receive a base on the earth working equipment, a hole extending from the wear surface to the cavity, and a lock installed in the hole, the lock including a mounting component mechanically secured in the hole to resist movement of the mounting component in both inward and outward directions in the hole, and a holding component movable in the mounting component in both inward and outward directions between a release position where the wear member can be installed on and removed from the base and a locked position where the wear member is secured to the base, wherein the holding component is mechanically secured in the mounting component in the release and locked positions to provide feedback to the user that the holding component is in the release and the locked positions.
5.A wear member for attachment to earth working equipment to protect the equipment from wear during use, the wear member comprising: a wear surface to contact the ground during operation of the earth working equipment, a mounting structure for receiving a base on the earth working equipment, a hole defined by a wall extending through the wear member and opening in both the wear surface and the mounting structure to receive a lock to hold the wear member to the earth working equipment, the wall including a retaining structure having an upper shoulder and a lower shoulder between the wear surface and the mounting structure, a collar including lugs to straddle the retaining structure and contact the upper and lower shoulders to resist movement of the collar in both inward and outward direction in the hole, and a threaded opening, and a threaded pin received in the threaded opening for movement between a release position where the wear member can be installed on and removed from the base, and a locked position where the wear member is secured to the base, wherein the threaded pin is mechanically secured to the collar in the release and locked positions with increased resistance in the release and locked positions.
Claim 1
Mechanical means
The Opponent states in their submissions:
“ESCO has proposed that claim 1 be amended to read: “…wherein the holding component is mechanically secured in the mounting component in the release and locked position to provide feedback to the user that the holding component is in the release and locked positions”.
It should be immediately apparent that ESCO has not, in proposing this amendment, sought to define “how the holding device is “mechanically secured” in the release and lock positions relative to the other positions”. Nor has ESCO, in proposing this amendment, sought to define “that the holding component moves into and out of the release position and locked position in a way which is noticeable to the user by way of a mechanical means”
In the first and second decisions I did not direct that the claims be amended to define how the holding device is “mechanically secured” in the release and lock positions relative to the other positions. Although the preferred embodiment of the invention describes the holding component to be mechanically secured in the mounting components using detents which pop into pockets in the release and locked positions, the invention extends beyond this embodiment. That is, I have found in the previous decisions that the claimed invention resides in the holding device being mechanically secured in the release and lock positions in a way that is noticeable to the user, and does not reside only in the specific type of mechanical securement of the preferred embodiment.
I have understood this part of the claim (with parsing in brackets) as follows:
“…, wherein the holding component is mechanically secured (in the mounting component in the release and locked positions) to provide feedback to the user that the holding component is in the release and the locked positions.”
That is, the holding component is mechanically secured to provide feedback to the user. By mechanically securing the holding component to the mounting component in the release and locked positions, the mechanical securement also provides feedback to the user.
Thus, the Opponent’s complaint about the absence of the words “mechanical means” from the claim is not persuasive.
Mechanical feedback
The Opponent states:
“…[P]roposed amended claim 1 encompasses any device wherein the holding component is mechanically secured in the mounting component in the release and locked position to provide feedback, irrespective of how that feedback might be provided or the nature of that feedback. For example, if the feedback was provided by alignment markings, a flashing light, some form of electronic communication, or a siren, the device would fall within claim 1, even though there is no disclosure of any such feedback in paragraph 88 of the Application (or elsewhere). It follows that claim 1, in the amended form proposed by ESCO, does not comply with s 40(3) of the Patents Act. It travels well beyond the technical contribution to the art disclosed in the Application, namely, “a mechanical means to provide feedback”.”
I have found above that it is the mechanical securement that also provides feedback to the user. Thus, I do not accept that the feedback provided to the user could be by something other than the mechanism which provides securement as there is no support for such an alternative or additional feedback in the description as filed (as discussed in the first and second decisions).
Haptic feedback
The Opponent states:
“Third, the amendment proposed by ESCO, to claim 1, also ignores the guidance of the Delegate that “The amendments should be consistent with the examples in paragraph 88”. In this respect, paragraph 88 of the Application refers, three times, to “haptic feedback”. In contrast, it does not refer, even once, to any other form of feedback.
The importance of haptic feedback is also reiterated in paragraph 94 of the Application, which identifies one of the benefits of the invention as being “a lock with clear visual and haptic confirmation of correct installation”. Put simply, the disclosure made in paragraph 88 is plainly limited to “haptic feedback”, whereas claim 1, in the amended form proposed by ESCO, is not.
Fourth, the “haptic feedback” disclosed in paragraph 88 of the Application is not haptic feedback per se. To the contrary, paragraph 88 states: “The combination of the increase in resistance, the decrease in resistance, and the “thunk” provides haptic feedback to the user that helps a user determine that pin 220 is fully latched in the proper service position”. The next sentence of paragraph 88 then refers to “This haptic feedback”, which is plainly a reference to the haptic feedback identified in the preceding sentence, and proceeds to explain that “an operator is trained to easily identify the haptic feedback”.
Put differently, the disclosure, in paragraph 88 of the Application, is not only limited to “haptic” feedback, but further, haptic feedback comprising “the combination” of, firstly, an increase in resistance, secondly, a decrease in resistance, and thirdly, “the “thunk””. Claim 1, in the amended form proposed by ESCO, is not so limited, and thereby travels well beyond the disclosure made in paragraph 88.”
The Applicant states in their submissions:
“Second, contrary to the Opponent's Submissions, the Delegate did not specify that the specific embodiment described in paragraph [88] of the Patent Application needs to be incorporated into the claims. The Delegate merely provided guidance that the "amendments should be consistent with the examples in paragraph 88" of the Patent Application of the release and locked positions being noticeable to the user by a mechanical means: Second Decision at [22] and [23].”
Paragraph 88 provides examples of the release and locked positions being noticeable to the user. The claims must be consistent with these examples, but I did not find that the technical contribution is limited to these examples, and so the claims need not be limited to those examples. I consider that claim 1 now provides that the release and locked positions is noticeable to the user, consistent with my previous finding as to the technical contribution to the art, thus claim 1 overcomes the deficiency of lack of support identified in the first and second decisions.
Claim 5
Increased resistance
The Opponent states:
“…[T]here is no support, anywhere in the Application, for a device in which the threaded pin has “increased resistance in the release and locked positions”. The only references to the resistance of the pin, in the Application, appear in paragraph 88. Relevantly, paragraph 88 of the Application states:
“Preferably, the thread 258 of collar 222 ends slightly before inner pocket 260. This results in an increase of resistance to turning pin 220 as pin 220 is threaded into collar 222, when latching detent 252 is forced out of thread 258. This is followed by a sudden decrease of resistance to turning pin 220, as latching detent 252 aligns with and pops into the inner pocket. In use, there is a noticeable click or "thunk" as pin 220 reaches an end of travel within collar 222. The combination of the increase in resistance, the decrease in resistance, and the "thunk" provides haptic feedback to a user that helps a user determine that pin 220 is fully latched in the proper service position.”
Paragraph 88 makes clear that “there is an increase of resistance” as the pin is threaded into the collar, by reason of the fact that the thread of the collar ends “slightly before” the inner pocket. That is, the increase in resistance occurs prior to the threaded pin being secured into a locked position. In fact, paragraph 88 explains that there is a “sudden decrease of resistance to turning pin 220, as latching detent 252 aligns with and pops into the inner pocket”. Of course, as depicted in Figure 30, it is when latching detent 252 aligns with and pops into the inner pocket 260 that the lock is in the locked position.”
As noted by the Opponent, the pin (holding component) undergoes several distinct stages as it moves from a position intermediate the release and locked positions to one of those positions. Once in the release or locked positions the Opponent acknowledges that:
“Of course, as depicted in Figure 30, it is [more firmly secured] when latching detent 252 aligns with and pops into the inner pocket 260 that the lock is in the locked position.”
Claim 5 only defines the “increased resistance” of the holding component once it is in the release and the locked positions. The fact that there is a decrease in resistance immediately before the holding component enters the release and the locked positions is not relevant.
The Opponent states:
“…[P]roposed amended claim 5 encompasses any device which has “increased resistance in the release and locked positions”, irrespective of the cause of that resistance. In particular, whilst proposed amended claim 5 requires the threaded pin to be “mechanically secured to the collar in the release and locked positions”, it does not require any increased resistance in the release and locked positions to be caused by mechanical means. For instance, if the increased resistance in the release and locked position was caused by magnetic, electromagnetic, pneumatic or hydraulic means, this would be caught by claim 5, even though there is no disclosure of any such resistance being used, to more firmly secure the pin in the release and locked positions, anywhere in the Application.”
I have parsed claim 5 as follows:
“…, wherein the threaded pin is mechanically secured (to the collar in the release and locked positions) with increased resistance in the release and locked positions.”
Thus, claim 5 defines that it is the mechanical securement (and not some other force) which causes the increase in resistance in the release and locked positions. I further note that there is no support in the description as filed for any other type of force to cause an increase in resistance. Claim 5 as amended does not exceed the technical contribution to the art I identified previously, and therefore overcomes the deficiency identified in the first and second decisions.
Conclusion
The amendments to the specification overcome the deficiencies identified in the first and second decisions in this s59 opposition and do not introduce new deficiencies.
Subject to appeal, I direct that the application proceed to grant.
Costs
Costs normally the follow the event and I see insufficient reason to depart from that practice in the present case. Costs in accordance with Schedule 8 are awarded against the Opponent, CQMS Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents
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