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

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

The matter relates to patent application 2014262221 (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 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.
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”.
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.
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
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
The claims including the present amendments (with added words in underline, and deleted word in strikethrough when compared with the previously allowed amendments) are as follows:
1.A monitoring system comprising an excavating bucket having walls defining a containment portion for gathering earthen materials, and a digging edge, at least one wear part secured to the digging edge, at least one electronic sensor secured to one of the walls, and a programmable logic device receiving information from the at least one electronic sensor and making a determination of at least one of presence, health, wear and, impact~~, and performance~~ of the bucket and/or the at least one wear part.
2.A monitoring system in accordance with claim 1 wherein the programmable logic device receives information from the at least one electronic sensor to determine when the wear part has been worn to a state where the wear part should be replaced.
3.A monitoring system in accordance with claim 1 or 2 wherein the programmable logic device receives information from the at least one said electronic sensor to determine when the at least one wear part has been lost.
4.A monitoring system in accordance with claim 3 wherein the programmable logic device receives information from the at least one said electronic sensor to recognize special features on the wear part.
5.A monitoring system in accordance with any one of claims 1 to 4 wherein at least one said sensor is secured to the wear part and communicates with the programmable logic device so that information from the at least one electronic sensor secured to the bucket and the at least one electronic sensor secured to the wear part are used to make the determination.
6.A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one said electronic sensor to calculate an operational efficiency of the bucket and/or the at least one wear part.
7.A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one electronic sensor to determine a level of fill in the bucket.
8.A monitoring system in accordance with claim 7 wherein the programmable logic device receives information from the at least one electronic sensor and a database of fill profiles for the bucket to determine the level of fill in the bucket.
9.A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes one of a camera, a laser range finder, and an ultrasonic sensor.
10.A monitoring system in accordance with claim 9 including a vibration dampening device supporting and the at least one electronic sensor.
11.A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one said electronic sensor to determine a high impact event on the at least one wear part.
12.A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one electronic sensor to determine the cycle time of a digging cycle.
13.A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes one of a pressure sensor, a strain gauge, a load cell, and an accelerometer.
14.A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes an inclinometer and/or GPS device.
15.A monitoring system in accordance with any of the preceding claims wherein the programmable logic device generates an alert based on the information received from the at least one electronic sensor.
16.A monitoring system in accordance with any of the preceding claims wherein the programmable logic device receives information from a database to determine the type of wear part secured to the digging edge.
17.A monitoring system in accordance with any of the preceding claims wherein the programmable logic device receives information from a database with bucket and/or wear part geometry.
18.A bucket for use with excavating equipment, the bucket comprising:
a plurality of walls defining a containment portion for gathering earthen material;
a digging edge to contact the earthen material, the digging edge extending along one of the walls defining the containment portion;
at least one wear part secured to the digging edge; and
at least one electronic sensor mounted to one of the said walls of the bucket to monitor at least one of presence, health, wear and, impact~~, and performance~~ of the bucket and/or the wear part.
Meaning of the words “health” and “performance”
In the first decision at paragraph 129 I found:
“The meaning of the words “health” and “performance” (when construed as broadly as is reasonable) includes essentially every measurable characteristic of the bucket. This aspect of the claim does not lack clarity.”
In this paragraph of the first decision, I determined that “health” and “performance” includes essentially every measurable characteristic of the bucket. These are characteristics intrinsic to the bucket. Intrinsic characteristics would include things such as wear and damage on the bucket, the weight of the (empty) bucket, etc.
In the second decision I found at paragraph 22:
“(i) “performance of the bucket” is a phrase with a broad scope including, amongst other things, the presence, health, wear, impact and fill of the bucket within its scope;
(ii) that is, the presence of the words “presence”, “health”, “wear”, “impact” and “fill” in the claims is redundant in light of the phrase “performance of the bucket”;”
I found that performance of the bucket includes within its scope the health of the bucket, however it does not logically follow that health of the bucket necessarily includes within its scope the performance of the bucket.
In the first decision I found at paragraph 110:
“The specification teaches monitoring characteristics of the bucket (such as fill level) at paragraphs 50 to 52 which are considered measures of “performance of the bucket”. I consider this disclosure to provide sufficient information to provide a principle of general application for other possible measures of bucket performance.”
I further found that the word “performance” also includes extrinsic characteristics such as fill level (consistent with what is described at paragraph 50 of the description). There is nothing in the description to support the interpretation that the “health” of the bucket would include extrinsic characteristics. The description draws this distinction between “status and health” on the one hand and “performance” on the other at the first two sentences of paragraph 50 which state:
“In addition to monitoring the status and health of the wear members on the bucket, the monitoring system may monitor the performance of the bucket or other wear members. For example, the monitoring system may determine how full the bucket is loaded during the digging cycle.”
Thus, the determination of fill level of the bucket falls within the scope of the “performance of the bucket”, but does not fall within the scope of the “health of the bucket”. This can be illustrated in the following Venn diagram:
Claim 7
The Opponent states in their submissions:
“The “fill” of a bucket is plainly a “measurable characteristic of” a bucket…
The foregoing is reinforced by claim 7, which ESCO has not proposed to amend. Claim 7 is dependent on claim 1 and concerns a monitoring system wherein the programmable logic device receives information from the electronic sensor to determine “a level of fill in the bucket”. This makes clear that the words in claim 1, “health…of the bucket”, encompass the “fill” of the bucket.”
Claim 7 could be construed in either of the following ways:
One construction is that the fill level falls within the scope of one of presence, health, wear and impact of the bucket. Using this construction, the fill level would fall within the scope of the word ‘health’ (since it would not make sense to fall within the scope of any of: presence, wear or impact).
The alternative construction is that claim 7 defines determining the fill level in addition to the determination of presence, health, wear or impact of the bucket and/or the wear part.
I have found above that the ‘health’ of the bucket does not include within its scope the fill level. It follows that claim 7 should be construed such that claim 7 defines determining the fill level in addition to determining the presence, health, wear or impact of the bucket and/or the wear part.
The first and second decisions
In the first decision I found that claims 1, 6, 7, 15 and 18 lacked an inventive step. Only claims 1, 6, 7 and 18 are relevant to the present matter. The paragraphs of the decision finding these claims to lack an inventive step are reproduced below:
The first decision stated at paragraph 48:
“I consider that the use of wear members for the digging edge of an excavator bucket is common general knowledge. I am satisfied that a person skilled in the art would, as a matter of routine, in applying the disclosure of D14 to the present problem to include wear members for the digging edge of the excavator bucket. Consequently, claim 18 lacks an inventive step in light of D14 (JPH 07-042201A).”
The first decision stated at paragraph 54 and 55:
“I consider that a person skilled in the art would, as a matter of routine, modify D14 such that it used a programmable circuit in place of the non-programmable circuit, since this would be rudimentary (and arguably easier) device to achieve the desired result with the equipment available to an electronic engineer at the priority date.
Consequently, I consider claim 1 to lack an inventive step in light of D14 (JPH 07-042201A).”
The first decision stated at paragraph 59:
“I am satisfied that operational efficiency would include characteristics such as level of fill. D14 discloses the sensors to measure the level of fill. Therefore claims 6 and 7 lack an inventive step in light of D14.”
In response to the first decision, the Applicant proposed the first amendments that deleted the word ‘fill’ from the claims. In the second decision I found that the amended claims still contained within their scope the ‘fill’ since the ‘performance of the bucket’ included it within its scope.
Do the amendments overcome the deficiency identified in the first and second decisions?
In the first decision I found (e.g. at paragraph 18) that D14 - JP 07-042201A discloses an excavation bucket with a fill level sensor.
I have found in the second decision that the word “performance” includes within its scope fill level. It is apparent from the second decision (and as discussed above) that “health” does not include within its scope fill level.
Prior art document D14 - JP 07-042201A only discloses a system for determining fill level of a bucket. Furthermore, the sensors in D14 are only suited for determining fill level. I cannot envision an obvious modification to D14 which would sense anything other than determining fill level. It follows that a person skilled in the art would not, as a matter of routine, modify D14 such that it would measure anything other than fill level. The independent claims are inventive in light of D14 - JP 07-042201A.
Claims 2-17 which are dependent upon claim 1 (and thus entirely within the scope of claim 1) are necessarily also inventive. This includes claim 7; D14 does not obviously suggest determining any of the claimed characteristics of presence, health, wear or impact of the bucket or wear part.
Thus, the deficiency identified in the first and second decisions has been overcome.
I note for completeness that the Opponent did not suggest that there are any new deficiencies arising from the amendments and I agree that there are none.
Conclusion
The amendments overcome the deficiency identified in the first and second decisions.
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