CQMS Pty Ltd v ESCO Group LLC

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2022] APO 3

Patent Application:             2014262221

Title:Wear part monitoring

Patent Applicant:                ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date:  24 January 2022

Hearing Date:  Written submissions filed on 27 October 2021

Catchwords:  PATENTS - section 59 – final determination – amendments overcome deficiencies identified in previous decision – application to proceed to grant – costs awarded against opponent

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2014262221

Title:Wear part monitoring

Patent Applicant:                ESCO Group LLC

Date of Decision:                24 January 2022

DECISION

The amendments to the specification overcome the deficiency identified in the first and second decisions in this s 59 opposition and do not introduce new deficiencies.

Subject to appeal, I direct that the application proceed to grant.

I award costs according to Schedule 8 against the opponent, CQMS Pty Ltd.

REASONS FOR DECISION

1. The matter relates to patent application 2014262221 (the Application) in the name of ESCO Group LLC (the Applicant).

2. 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 5 on 29 January 2020 (the first decision). The first decision found that claims 1, 6, 7, 15 and 18 lacked an inventive step. The Applicant was given the opportunity to propose amendments to overcome the identified deficiencies.

3. Subsequently, the Applicant proposed amendments which sought to overcome the first decision by:

   (a) deleting the word “fill” from claims 1 and 18; and

   (b) amending the words “determine the level of fill in the bucket” in claim 7 to read “determine a level of fill in the bucket”.

4. The Opponent requested a hearing on the basis that the amendments did not overcome the findings in the first decision. Following the hearing I issued a decision CQMS Pty Ltd v ESCO Group LLC [2020] APO 53 on 16 December 2020 (the second decision) finding that “the deletion of “fill” does not narrow the scope of the claim in any way” and that the finding of lack of inventive step was not overcome. The Applicant was given the opportunity to propose amendments to overcome the identified deficiencies.

5. On 27 January 2021 the Applicant proposed further amendments, which sought to overcome the first decision and second decision by:

   (a) amending claim 1 to read: “…making a determination of at least one of presence, health, wear and, impact, and performance of the bucket…”;

   (b) amending claim 18 to read: “…to monitor at least one of presence, health, wear and, impact, and performance of the bucket”.

   Applicable Law

6. 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 present amendments

7. The claims including the present amendments (with added words in underline,…