CQMS Pty Ltd v ESCO Group LLC - [2020] APO 54

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2020] APO 54
Patent Application: 2016253640

Title:Wear assembly

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date: 16 December 2020

Hearing Date: 17 November 2020, in Video Conference

Catchwords: PATENTS – section 59 - final determination - the amendment does not overcome the grounds of opposition of support - further opportunity provided to amend – costs awarded

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Rebecca Dutkowski and Shyama Jayaswal of MinterEllison and Wayne McMaster
Counsel for the opponent: Chris Burgess
Patent attorney for the opponent: Fraser Smith of Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016253640

Title:Wear assembly

Patent Applicant: ESCO Group LLC
Date of Decision: 16 December 2020

DECISION
The amendments to the specification do not overcome the deficiencies identified in the earlier decision that claims 1-6 and 8 lack support.
The Applicant has six weeks from the date of this decision to propose amendments to the claims.
I award costs according to Schedule 8 against ESCO Group LLC.

REASONS FOR DECISION

The matter relates to patent application 2016253640 (the Application) in the name of ESCO Group LLC (the Applicant). The Application was filed on 3 November 2016. The Application is a divisional application from Australian patent application 2016200257 (the Parent Application) which is a divisional application from 2012281135 (the Grandparent Application). The Grandparent Application is a convention application with two basic documents being US applications 61/507726 and 61/576929 with an earliest priority date of 14 July 2011.
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 1-6 and 8 lacked support.
The Applicant was given the opportunity to file amendments to overcome the lack of support finding. The Applicant filed amendments on 17 April 2020. Leave to amend was advertised on 25 June 2020. The amendments were advertised as allowed on 17 September 2020.
The Opponent advised on 22 September 2020 that they wanted to be heard in relation to the final determination of the matter. The hearing on the final determination took place on 17 November 2020 via video conference.
Applicable Law
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision. Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the previous decision and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification. That is, pre-existing deficiencies are excluded (Iluka Midwest Ltd v Technological Resources Pty Ltd, [2002] FCA 1233 at [34]).
The first hearing and decision
In the first decision I found that claims 1-6 and 8 lacked support.
The finding of lack of support in the first decision is at paragraphs 81-83 reproduced below:
“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.
Consequently, claims 1 to 6 and 8 extend beyond the disclosure and thus lack support.
To overcome this ground of opposition the Applicant must amend the claims to restrict the scope of the claims to a mechanical means to provide feedback to the user that the holding device is in the release and locked positions.”
The Amendments
The amendments (with words added to the claims indicated by underline) are as follows:
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 release and locked positions.
2.A wear member in accordance with claim 1 wherein the mounting component and the holding component have complementary threads to effect movement of the holding component between the release and locked positions.
3.A wear member in accordance with claim 1 or 2 wherein the hole in the wear member includes a retaining structure with upper and lower oppositely-facing bearing surfaces, and the mounting component includes complementary bearing surfaces to contact the upper bearing surface and the lower bearing surface on the retaining structure.
4.A wear member in accordance with any one of claims 1 to 3 wherein the mounting component is a one-piece member.
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 in the release and locked positions.
6.A lock for releasably securing a wear member to earth working equipment to protect the equipment from wear during use, the lock comprising: a collar having a body adapted to fit within a hole in the wear member, a threaded opening extending through the body, and a pair of vertically spaced lugs projecting outward of the body to engage opposite shoulders of a retaining structure, the body and the lugs being formed as a one-piece member; and a threaded pin received into the threaded opening for movement between a release position where the wear member can be installed on and removed from the earth working equipment, and a locked position where the lock retains the wear member on the earth working equipment, wherein the threaded pin is mechanically secured in the release and locked positions; and a retainer inserted in the hole of the wear member outside of the body adjacent the lugs to prevent disengagement of the lugs from the shoulders.
7.A lock in accordance with claim 6 which includes a biased detent on one of the collar and pin, and a pair of recesses on the other one of the collar and pin into which receive the detent, wherein the detent is received in one recess when the pin is in the release position and in the other recess when the pin is in the locked position.
8.A lock in accordance with claim 6 or 7, the pin including a head with a socket, the socket having angled facets for receiving a tool and an enlarged clearance space in lieu of at least one of the facets to enable better cleaning of the socket of earthen fines.
I will consider whether the amended claims overcome the issues raised in the first decision, and also whether new issues arise as a result of the amendments.
Consideration
Does the inclusion of the feature of the “holding component is mechanically secured in the release and locked positions” overcome the deficiency identified in the first decision?
The Opponent states at paragraphs 17 and 18 of their submissions:
“Amended claims 1 to 6 and 8 continue to lack support, because they are not limited by any requirement for a mechanical means that:
(a) defines the locked and release positions; and
(b) provides “feedback to the user that the holding device is in the release and locked positions”.
Rather, the added claim 1 words “wherein the holding component is mechanically secured in the release and locked positions” merely require (any) form of mechanical securement. They do not require the mechanical means to define the locked and release positions and provide feedback to the user that the holding component is in the release and locked positions. Thus, amended claims 1 to 4 continue to lack support.”
The Applicant states in their submissions at paragraphs 13 and 14:
“The Opponent points to paragraph [83] of the Decision as requiring something in addition to the technical contribution identified by the Delegate, stating that this paragraph requires that the claim explicitly state that the mechanical means provide feedback to the user of the two positions. However, this is an unduly narrow reading of this paragraph, which in any event must be read in light of the decision as a whole, and in light of preceding paragraph [81], in which the Delegate identified the technical contribution of the invention. When read properly, it is clear that the purpose of paragraph [83] is to set out the result of limiting the claims to a mechanical securing, not a requirement that feedback be explicitly stated in the claims.
The holding component is generally moveable in the mounting component (as set out in
claim 1), and it is only in the locked position and the release position that it is
"mechanically secured" as amended. Movement into either the release or the locked positions will therefore inherently provide feedback to a user as the holding component will go from being moveable to being "mechanically secured" – i.e., resisting further movement in that discrete position.”
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 Applicant submissions are that the words “mechanically secured in the release and locked positions” were intended to mean that the threaded pin provides a resistance to “further movement”. However, the intention expressed in the submissions is somewhat unclear. Was the resistance to further movement intended to mean that the release and locked positions are terminating positions (i.e. the holding component cannot move beyond either of these positions)? Alternatively, was the resistance to further movement intended to mean that these positions provide more resistance to movement than when the threaded pin is in any of the other positions?
For the purposes of this decision I will assume that the Applicant meant the resistance to “further movement” was the second of these interpretations; that is, the release and locking positions provide more resistance to movement that any other position.
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.
This raises the question of whether the Applicant should be given a further opportunity to amend. I consider that the Applicant has made a genuine attempt to overcome the deficiencies identified in the earlier decision and these deficiencies can be overcome with suitable amendments. Therefore, I will allow the Applicant a further one month from the date of this decision in which to file further amendments to the claims
Potential amendments
In the first decision I noted that at paragraph 83:
“To overcome this ground of opposition the Applicant must amend the claims to restrict the scope of the claims to a mechanical means to provide feedback to the user that the holding device is in the release and locked positions.”
The words in paragraph 83 the first decision of “provide feedback to the user” as a suggestion for how the application could be amended.
I will not dictate the exact words that the Applicant must use in the amendment; instead, I will allow the applicant to provide their own wording in the amended claim. I provide the following guidance about the amendments that are required to be made.
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.
How the user interacts with the device is most clearly described at paragraph 88 of the description of the Application which provides examples of these positions being noticeable to the user by a mechanical means:
“Further application of torque to pin 220 will squeeze latching detent 252 out of outer pocket 256. An inner pocket or recess 260 is formed at the inner end of the thread of collar 222. 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. This haptic feedback results in more reliable installations of wear parts using the present combined collar and pin assembly, because an operator is trained to easily identify the haptic feedback as verification that pin 220 is in the desired position to retain wear member 10 on base 12. The use of a detent 252 enables pin 220 to stop at the desired position with each installation unlike traditional threaded locking arrangements.”
The amendments should be consistent with the examples in paragraph 88.
Do the claims need to specify what the holding component or threaded pin is secured to?
The Opponent states at paragraph 20 of their submissions:
“In addition, it should be noted that the amended claims do not specify what the holding component (claim 1) or threaded pin (claims 5 and 6) is “secured” to. This gives rise to a lack of clarity in the amended claims.”
The Applicant states at paragraph 23 of their submissions (with my emphasis in bold):
“At [20] of the Opponent's Submissions, the Opponent states that the claims lack clarity as they "do not specify what the holding component (claim 1) or threaded pin (claims 5 and 6) is "secured" to." CQMS was invited by IP Australia to file any comments it might have on the proposed amendment, which it did not do so. It was also invited to oppose the proposed amendment under section 104 of the Patents Act 1990 (the Act) if it did not consider that the proposed amendment met the requirements of section 102 of the Act, which it did not do so. Therefore, the time for raising any lack of clarity in the Amendment has passed.
In any event, the claims do not lack clarity. On a reading of the claim as a whole, it is clear that the mechanical securing of the holding component/threaded pin is necessarily a securing in the mounting component/collar at the relevant positions, as the holding component/threaded pin is said to be moveable in the mounting component/collar between the locked and release positions.”
The claims do not define what the holding component/threaded pin is secured to. It is plausible that the claims include within their scope that the holding component/threaded pin is secured to something other than the mounting component/threaded collar when in the locked and release positions. It is notable that the Applicant is of the view that the claims are already necessarily limited to the holding component/threaded pin being secured to the mounting component/threaded collar at the relevant positions. If the Applicant is unable to envisage how something within the scope of the claims defines the holding component/threaded pin secured to anything but the mounting component/threaded collar in the relevant positions, then this suggests that there exists a prima facie secondary support deficiency. However, since a primary support deficiency has already been found, and amendments are yet to be proposed to overcome that primary support deficiency, it is uncertain whether this secondary support issue will still exist when the amendments have been made.
I expect that the amendments to overcome the primary support deficiency will be made such that the potential secondary support deficiency will be obviated. I will defer determination of the secondary support issue until the amendments have been made.
Do the claims need to be restricted to the threaded pin arrangement?

The Opponent states at paragraph 25 of their submissions:
“No non-threaded mechanical securement arrangement is disclosed in the specification, and the threaded pin construction is plainly part of the technical contribution to the art. Thus, amended claims 1, 3 and 4 exceed the technical contribution to the art for the further reason that they are not limited to require the claimed mechanical securement by a threaded pin arrangement.”
The Opponent has argued that because the claims (claims 1, 3 and 4) define mechanically secured release position and locked position, this now requires that the holding component must be a threaded pin. Thus, the Opponent argues, that the absence of the threaded pin in these claims now introduces a support deficiency that previously did not exist.
In the first decision I did not find that the claims defining a holding component (claims 1, 3 and 4) lacked support for failure to provide the limitation that the holding component was a threaded pin. The claims (claims 1, 3, and 4) now further define that the holding component is mechanically secured in a release position and locked position. I do not consider that the introduction of this feature opens up a new support issue with regard to the breadth of the scope of the holding component. Instead, it is the same support issue which was open for to me to consider in the first decision. As I found no deficiency with this aspect of support in claim 1 in the first decision, I will not re-open this issue in the final determination.
Conclusion
I have found that the amendments do not overcome the support deficiencies identified in the earlier decision. I will allow the Applicant a further six weeks from the date of this decision in which to file further amendments to the claims.
Costs
Costs normally the follow the event and I see insufficient reason to depart from that practice in the present case. Costs according to Schedule 8 are awarded against the Applicant, ESCO Group LLC.
Xavier Gisz
Delegate of the Commissioner of Patents