CQMS Pty Ltd v ESCO Group LLC

IP AUSTRALIA AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2025] APO 7

Patent Application:                2017261340
Title:  A wear part for earth working equipment
Patent Applicant:                   ESCO Group LLC
Opponent:  CQMS Pty Ltd
Delegate:  Stephanie Howard

Decision Date: 3^rd March 2025

Hearing Date: 4^th December 2024 via video conference

Catchwords: PATENTS – opposition to the grant of patent – s 59 – clarity –
claims are clear – utility – clear enough and complete enough disclosure – claims comply with s 40(2)(a) – claims lack support – claims do not comply with s 40(3) – novelty – claims are novel – inventive step – claims are inventive – opposition successful – opportunity to amend – costs awarded

Representation: Counsel for the applicant: Tom Cordiner KC
Patent attorney for the applicant: Shyama Jayaswal, Rebecca Dutkowski, Naomi Hudspeth and Wayne McMaster of MinterEllison
Counsel for the opponent: Peter Creighton-Selvay
Patent attorney for the opponent: Joseph Garven of James & Wells
IP AUSTRALIA AUSTRALIAN PATENT OFFICE

Patent Application:                2017261340
Title:  A wear part for earth working equipment
Patent Applicant:                   ESCO Group LLC
Date of Decision:                   3^rd March 2025

DECISION

The opposition is successful. Claims 1-8 lack support as the claims are broader than justified by the description.

The Applicant has two (2) months from the date of this decision to file suitable amendments. I award costs according to Schedule 8 against the Applicant, ESCO Group LLC.

REASONS FOR DECISION

Background

This matter relates to patent application 2017261340 (the application), filed in the name of ESCO Corporation on the 5^th May 2017 then transferred to ESCO Group LLC (the Applicant) on the 25^th October 2018 via PCT Rule 92bis 1. The application derives an earliest priority date of 5^th May 2016 from convention application US 62/332,286.
Following two examination reports, the application was accepted and advertised as such on the 27^th of October 2022. CQSM Pty Ltd (the Opponent) filed a Notice of Opposition under section 59 of the Patents Act 1990 (the Act) on 27^th January 2023.
The Statement of Grounds and Particulars (SGP) was filed on the 27^th April 2023. The Opponent filed Evidence in Support (EIS) on the 27^th July 2023, which included a declaration from Dr John DeWit (DeWit1) dated 26 July 2023 with Annexures JDW-1 to JDW-13. The Applicant filed Evidence in Answer (EIA) on the 27 October 2023 which included a declaration from Donald Maurice Conklin (Conklin) dated 26^th October 2023. Evidence in Reply (EIR) was filed by the Opponent on the 22^nd December 2023 which included a second declaration from Dr John DeWit (DeWit2) dated 22^nd December 2023, thereby completing the evidence. The Opponent filed

written submissions on 20^th November 2024. The Applicant filed written submissions on 27^th November 2024.

Grounds of Opposition

The SGP identified lack of novelty, lack of inventive step, lack of clear enough and complete enough disclosure, failure to disclose best method for performing the invention, lack of clarity, lack of support, not a manner of manufacture, and not useful as grounds of opposition.
Notably, the Opponent did not pursue all the grounds set out in the SGP. In written submissions and at the hearing, the Opponent only pressed the following grounds:
·Clarity (s59(c)-s40(3))
·Novelty (s59(b) – s18(1)(b)(i))
·Inventive step (s59(b) – s18(1)(b)(ii))
·Clear enough and complete enough disclosure (s59(c)-s40(2)(a))
·Support for the claims (s59(c)-s40(3))
·Utility (s59(b) -s18(1)(c))

Applicable Law and Onus

The present application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (RTB Act) as the application was filed after 15 April 2013.
The Opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to the grant exists. Then, once satisfied, I may refuse the application or, where appropriate, give the Applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition, as per Section 60(3A) & (3B) of the Act.

The Invention as Described

The application relates to wear members and locks for securing wear members to earth-working equipment.¹ The specification outlines that wear assemblies typically include a base, a wear member and a lock, wherein the assembled base and wear member define a cavity into which the lock is received to releasably hold the wear member to the base.² Wear members for earth- working equipment are often subject to harsh conditions and/or heavy loading. Therefore, it is an object of the invention to provide a lock with sufficient strength to “retain the wear member to the equipment, resist ejection during use, and be easy to install and remove in the field when replacement of the wear part is needed”.³
The Summary of the Invention describes the various preferred embodiments. The preferred embodiments include a wear member with a lock retained to the wear member without the use of a resilient element, a wear member comprising a hole with retainers on each opposing wall for securing a lock in two distinct positions, a wear member including a hole with a retention feature

¹ Specification at [02].
² Specification at [03].
³ Specification at [04].

to engage and retain a hinged lock in a release or hold position during installation, and a wear member with a lock and an opening that has opposing walls each with a retainer assembly wherein the lock engages or disengages the opposing walls during installation.⁴

Further embodiments describe features of a lock for securing a wear member. This includes a lock made up of a plurality of bodies each with a slot and a tab and wherein the lock moves between an extended or folded position to engage or disengage the wear member. Another embodiment of the lock includes an insert and hinged members pivotally coupled together wherein the hinged members are interlocked by at least one tongue and groove configuration and wherein the insert prevents pivoting movement of the hinged once installed. The application then describes an embodiment which includes a lock having end walls that are shaped to cooperate with sides of an opening in the wear part to resist ejection of the lock during use, and two lock components having interlocks that are used to resist movement of the lock components relative to one another.⁵
Further embodiments of the lock include a lock having hinged members each with an inner face that are pivotally coupled together wherein a first hinged member includes a recess and a first bearing face and a second hinged member having a collar with a hole and a second bearing face adjacent the collar.⁶ Alternatively, the specification provides for a lock comprising hinged members wherein the hinged members each have an inner face, a recess in the inner face, a bearing surface adjacent the recess, a collar, and an insert.⁷
Another embodiment includes a method of securing a wear member to earth working equipment that involves installing the wear member on the earth working equipment while a lock is in a release position and then engaging the lock with an opening of the wear member in order to secure the wear member on the earth working equipment.⁸
Lastly, the embodiments describe generally frusta-conical bore portions defined along a split line separating lock components wherein a first and second portion of the frusta-conical bore is defined in a first and second lock component respectively. A frusta-conical insert is positioned in the frusta-conical bore to prevent relative movement of the two lock components. In one embodiment one bore portion is smaller than the received insert.⁹ In another embodiment, a frusta-conical insert has radius larger than a first channel of the frusta-conical bore and smaller radius than a second channel of the frusta-conical bore.¹⁰
The specification then expands on the details of the lock assembly. As illustrated in Figs. 2 and 3, provided below, one embodiment includes a wear part having a wear member 12 in the form of a shroud, although it could have other forms, and a lock 10 for releasably securing the wear member 12 to earth working equipment 14. The wear member 12 is secured to a lip 16 between two noses 18 of an excavating bucket by lock 10.¹¹ The lip 16 includes a base 25 that may be fixed into place via welding 32. The base 25 includes a boss 26 along the front edge 27 of the lip
16. Base 25 includes a rear bearing surface 40, a rear surface 60, a forward facing front thrust surface and side bearing surfaces. The bearing surface 40 and rear surface 60 define a step or

⁴ Specification at [05]-[10].
⁵ Specification at [11]-[12], [16]-[18].
⁶ Specification at [13]
⁷ Specification at [14].
⁸ Specification at [15].
⁹ Specification at [19].
¹⁰ Specification at [20].
¹¹ Specification at [44]-[45].

recess 64 for receiving the lock 10.¹² The wear member further includes a pair of legs 20, 22, and a wearable exterior surface 24. Top leg 20 includes a recess 34 and a hole 38 that, together with recess 64, defines an opening 39 to receive lock 10 and hold the wear member 12 to the earth working equipment 14.¹³

¹² Specification at [45].
¹³ Specification at [46], [51].

As shown in figures 12 and 14B below, the hole includes end walls 52 which each includes retainers 54 and 56 that interact with lock 10.¹⁴ In one embodiment, the first or outer retainer 54 is located proximate the outer surface 57 of wear member 12 and functions to secure the lock 10 in a release position shown in Fig. 12. The second or inner retainer 56 is located such that lock 10 is received in gap/pocket 66 wherein both retainers 54 and 56 secure lock 10 in the hold position as shown in Fig. 14B below.¹⁵ In the illustrated embodiments, retainers 54 and 56 are protrusions that extend inward from end walls 52 wherein the first retainer 54 protrudes a shorter distance into hole 38 than the second retainer 56.¹⁶ It is noted that the retainers 54 and 56 could have different constructions such as being formed as recesses or formed as a single retainer.¹⁷

¹⁴ Specification at [47].
¹⁵ Specification at [49], [52].
¹⁶ Specification at [47]-[48], [50].
¹⁷ Specification at [47]-[48].

The lock 10 may be configured in an unlocked, shown in Fig. 14A below, or a locked configuration, as illustrated in Fig. 14B above. Two bodies or components 70 and 72 of the lock 10 are pivotally coupled together via a hinge mechanism in order to change the configuration.¹⁸ Each body or component 70 and 72 may define a channel 90 and 92 respectively, that when aligned together form a tapered and partially or fully threaded passage 102 adapted to receive the insert 100, as shown in Fig. 9-10 below.¹⁹ The application noted that the passage 102 and insert 100 could be cylindrical.²⁰ Insert 100 is threaded into passage 102 to prevent relative movement between the two bodies or components 70 and 72.²¹

¹⁸ Specification at [53]-[55].
¹⁹ Specification at [56]-[57].
²⁰ Specification at [57].
²¹ Specification at [58].

The manner in which the lock retains the wear member 12 to the earth working equipment 14 can be understood by reference to figures 7 (reproduced below) and 14A. As described in paragraph [64]:
“In use, when in the hold position, the outer sides of second retainers 56 contact the inner sides of the outer lobes 105, and the inner sides of the retainers 56 contact the outer sides of the inner lobes 107. In this way resistant or corrective forces can be exerted on the lock in both an upward and a downward direction. The forces can be exerted along any location along the lobes, i.e. at any spaced distance from a central axis 112 of the lock to the side surfaces 114 of the lock 10. In this way, forces can be resisted by the ends of the lock engaging either set of retainers 54, 56 that would otherwise cause the lock to be subjected to, for example, any, drop, ejection, roll, or longitudinal twist.”
To replace a worn wear member, lock 10 must first be removed. This is achieved by removing insert 100 and pivoting bodies or components 70 and 72 to the unlocked configuration shown in Fig. 14A.²² At least one body or component 70 or 72 is provided with a grip 120 to facilitate pivoting of the bodies or components and removal of the lock.²³
As can be seen from fig 7, lock 10 may include a pivot pin 84 and transverse interlocks 140 on each of the two bodies or components 70 and 72. Interlocks 140 may each have a tab 142 that compliments with an opposing retention slot 144 in an opposing interlock 140. . The interlocks 140 and the pivot pin 84 increase stability of the assembled lock components 70 and 72.²⁴

²² Specification at [67].
²³ Specification at [72].
²⁴ Specification at [68]-[69].

In an alternative embodiment, the interlocks include concentric walls 282 and 284. Each body 270 and 272 includes a tab or protrusion and a slot that interlock in a tongue and groove configuration as shown in Fig. 17 below.²⁵

An alternative construction of an articulated lock is illustrated in figures 18-20 provided below and described at paragraphs [74]-[75]:
“Fig. 20 is an exploded view of the lock 350. The bodies 370 and 372 are assembled so that the collar 374 with the threaded passage 375 and pin 380 are received by recess 382 and hole 380A respectively. The collar and the recess have complementary shapes to allow the lock bodies to pivot relative to each other about the pin and hole defining a pivot

²⁵ Specification at [71].

axis 274 with limited binding... Tabs 392 and 394 are received by slots 396 and 398 as the bodies pivot to an extended position…
… With the bodies 370, 372 in the extended position, threaded insert 300 is received in threaded opening 375. Threaded insert 300 preferably includes a head 300A with a recess 300B to receive a torque tool…”

Optionally, the threaded insert 300, as provided in embodiment of Fig. 20, can include a biasing latching tooth 308 which can engage a corresponding outer pocket recess 310 in a threaded opening 375 of the collar 374.²⁶
A final embodiment of lock 450 is provided in Fig. 21 below. This embodiment is described at paragraph [80], which states:
“Lock 450 is assembled by receiving collar 474 in recesses 482 and 484 with pins 486 and 488 in openings 482A and 484A. Lock bodies 470 and 472 then pivot about the pins and openings to an extended position with tabs 492 and 494 received by slots 496 and 498. In the extended position, upper circular bearing surface 497 is above collar 474. Lower circular bearing surface 499 is below collar 474. Insert 300 is received in the threaded collar and bearing surfaces 302 and 304 bear on or are adjacent to bearing surfaces 497 and 499. When installed, the insert limits pivotal movement of bodies 470 and 472 in relation to each other. Other embodiments are possible with only an upper bearing surface or only a lower bearing surface to bear on insert 300.”

²⁶ Specification at [76].

The Invention as Claimed

The application was accepted with 8 claims. The accepted claims include claim 1 as the only independent claim. The claims are directed to a wear member for earth working equipment and are provided in Annex A. Independent claim 1 is provided below:
Claim 1:
A wear member for earth working equipment comprising:
an exterior surface subject to wearing by engagement with the ground,
an interior surface for mounting the wear member on the earth working equipment, and a hole opening to the interior surface and the exterior surface, the hole including opposing walls each having retainers that are spaced apart from one another and
configured to secure a lock to the wear member in two distinct positions including release and hold positions, the release position of the lock secured to the wear member corresponding to the retainers retaining the lock outward from the interior surface to facilitate installation of the wear member on the earth working equipment, and the hold position of the lock secured to the wear member corresponding to the retainers retaining the lock inward from the release position to secure the wear member to the earth working equipment.

Person Skilled in the Art

As outlined in Root Quality Pty Ltd v Root Control Technologies Pty Ltd²⁷ at [70], a person skilled in the art (PSA) is defined as follows:

“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”

A PSA is not a real person, but an artificial construct used as a tool for analysis.²⁸ The PSA may be a person or team of people versed in the relevant subject matter and possesses the relevant common general knowledge. It is emphasised that a person skilled in the art is not a person of exceptional skill and knowledge.²⁹
The Applicant proposed that the PSA for the current application would be an engineer with experience in wear parts used for earth working equipment.³⁰ The Opponent did not comment on this characterisation, however presented Dr Dewit as proxy for the PSA.³¹

Experts

The Opponent relied on expert evidence provided by Dr DeWit. As summarised in the Opponent’s written submissions at [6]:
“Dr DeWit obtained a Bachelor of Engineering from the University of Queensland in 1997, and a PhD in Mechanical Engineering in 2003. Dr DeWit has substantial practical experience in relation to wear parts and locking assemblies. From 2001-2005, he was employed by Leslie Consulting Pty Ltd as an Engineer, then Senior Engineer, then Engineering Manager, during which time he worked on product development of ground engaging tools (GET), including locking systems for securing GET components. From 2005- 2008, he was a sole trading engineering consultant, and then from 2008-2012, he was a director of, and Principal Engineer at, Halico Pty Ltd, an entity which provides mechanical engineering consultancy services. In 2012, he consulted to CR Mining Pty Ltd, a related entity of CQMS, and undertook an independent review of its GET and lock/pinning systems, before being employed, later that year, in the role of Principal Engineer (a role which he still maintains today). Thus, it is clear that in the lead up to, and following, the Priority Date, Dr DeWit had considerable experience in relation to wear parts and locking assemblies.”
The Applicant presented evidence provided by Mr Conklin. I will now summarise only the experience relevant to the current opposition. Mr Conklin obtained a Bachelor of Science in Mechanical Engineering from the University of Arizona in 1982.³² Between 1994-2000 and between 2002-2004, Mr Conklin was a Design Engineer at ESCO working on GET systems.³³ Mr Conklin again returned to work for ESCO between 2005 and 2014 as a Senior Mechanical

²⁷ [2000] FCA 980; 49 IPR 225.
²⁸ AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23].
²⁹ Root Quality Control Pty.Ltd. V Root Control Technologies Pty.Ltd. [2000] FCA 980 at [70]-[71]; see also Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242-243.
³⁰ Applicant’s written submissions at [5.4].
³¹ Opponent’s written submissions at [5]-[6].
³² Conklin at [2.1].
³³ Conklin at [2.4].

Design Engineer.³⁴ In 2019, after a short five year retirement, Mr Conklin worked as a New Product Development Engineer for ESCO for 12 months before again retiring.³⁵ During his employment at ESCO, Mr Conklin gained extensive experience designing, testing and developing GET products including wear parts, adapters and locks.³⁶ Mr Conklin highlighted that during his employment at ESCO he researched competitor products via site visits, attending trade shows and reading literature and reports from ESCO staff who attended mining expos.³⁷

The Applicant noted in [5.12] of their written submissions:
“Although Mr Conklin was not working in GET systems precisely at the Priority Date, he worked in this area for a considerable period of time both before and after this date, and his work after the Priority Date did not suggest to him that there were any major changes to GET systems during that time. To the extent that any new products were released during his time away from the field, these were revealed to him as part of his work on his return to this field.”

Submissions

In their written submissions, the Applicant criticised the expert evidence given by Dr DeWit. They highlighted that Dr DeWit is a current employee, and Principal Engineer, of CR Mining Pty Ltd, which is a related entity of the Opponent.³⁸ They argued that this creates an obvious conflict of interest, and that Dr DeWit cannot provide unbiased evidence in this opposition.³⁹ In contrast, they emphasised that the Applicant’s expert, Mr Conklin, no longer works for the Applicant and has been retired since 2020; therefore they submitted that Mr Conklin would not have been influenced by his former employee when giving evidence.⁴⁰
At the hearing the Opponent submitted that the fact that Dr DeWit is an employee of the Opponent does not disqualify him from giving evidence. They argued it is clear that Dr DeWit has relevant experience based upon his work developing competitive technology. The Opponent then referred to CQMS Pty Ltd V Hensley Industries, Inc. [2024] APO 36, where a similar criticism against Dr DeWit was rejected by the delegate.
Lastly, the Opponent countered that if a conflict of interest was weighed against Dr Dewit, then it should be noted that Mr Conklin should also be found to have a conflict of interest. In particular, they highlighted that not only was Mr Conklin a former employee of ESCO, but he worked on much of the prior art discussed in this opposition. For example, in paragraph [6.1], [7.1] and [10.1] of Conklin, Mr Conklin mentions that he was a named inventor or worked on the products described in D1, D2 and D8.

Consideration

There is no doubt that both Dr DeWit and Mr Conklin have extensive experience in GET systems, including wear parts and locking assemblies. Therefore, both Dr DeWit and Mr Conklin

³⁴ Conklin at [2.6].
³⁵ Conklin at [2.8].
³⁶ Conklin at [3.1].
³⁷ Conklin at [3.1].
³⁸ Applicant’s written submissions at [5.8].
³⁹ Applicant’s written submissions at [5.9].
⁴⁰ Applicant’s written submissions at [5.10].

are well placed to provide evidence as to what a PSA knew or would have done at the priority date.

Regarding criticism of Dr DeWit’s impartiality, it is important to note that it is not uncommon for opposition proceedings to involve evidence from experts with employment relationships with the parties. I also note that Dr DeWit’s declared that he read, understood and complied with the “Federal Court of Australia Expert Evidence Practice Note” as issued on the 25 October 2016, in preparation of his declarations; in effect acknowledging a duty to provide an objective and impartial assessment of an issue to assist the decision maker.⁴¹
Furthermore, while the Applicant has stressed that Mr Conklin has been retired from ESCO since 2020, it is evident he also has a potential for bias having worked for the Applicant. I also acknowledge that, as a current employee, Dr DeWit may have a higher stake in the success of his employer. While their employment history may form part of my consideration when weighing evidence, without more to support this assertion I am not satisfied that either expert has acted with the sort of bias that I must disregard their evidence or necessarily prefer one over the other. To the extent that it is necessary, where there is conflicting evidence, I will provide reasoning for which is preferred.

Clarity and Claim Construction

As provided for in s40(3) of the Act, the claims must be clear and succinct. As outlined in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag⁴² (Austal Ships)):

“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use … The consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, common sense manner … Absurd constructions should be avoided … and mere technicalities should not defeat the grant of protection …”

Further clarification regarding when the claims are considered to provide a workable standard can be obtained from Monsanto Company v commissioner of Patents (1974) 48 ALJR 59 (Monsanto). In particular, the claims are considered to provide a workable standard if a third party could, without difficulty, determine whether an act falls within the scope of the claim. See Monsanto at 60-61:

“There will, I think, in the present case be no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim … For these reasons I do not regard the use of the adjective ‘substantial’ as giving rise to any uncertainty.”

⁴¹ DeWit1 at [4].
⁴² [2008] FCAFC 121; (2008) 77 IPR 229.

Rules of construction have been provided by the authorities to assist in determining the ambit of claims. These have been conveniently summarised by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd⁴³ (Lundbeck) 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. Words used in a specification, including the claims, are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification… construction of a specification, including the claims, is ultimately a question of law for the Court… 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… However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification...”

“Retainers”

Opponent’s submissions

The Opponent sought to define the term “retainers” as used throughout the application and claims. The Opponent highlighted at [20]-[21] of their written submissions (original emphasis):
“First, starting with the language of claim 1, the retainers are required to form part of “opposing walls” of “the hole” and to be “spaced apart”. With the exception of these requirements, the retainers are defined in purely functional terms. In particular, the retainers are required to be “configured to secure a lock to the wear member in two distinct positions including release and hold positions”, whereby: (i) in the release position, the retainers are to retain the lock “outward from the interior surface”; and (ii) in the hold position, the retainers are to retain the lock “inward from the release position to secure the wear member to the earth working equipment”.
Second, the dependent claims then specify additional requirements in respect of the retainers. In particular:
(a) claim 2 requires that the retainers “include an inner protrusion and an outer protrusion on each of the opposed walls, where the inner protrusion is closer to the interior surface than the outer protrusion”;
(b) claim 3 requires the inner protrusions of claim 2 to be “spaced from the interior surface”;
(c) claim 4 requires “the protrusions on one opposing wall” to be “symmetrical with the protrusions on the other opposing wall”;
(d) claim 5 requires that each of the protrusions to include “at least a portion that has a convex curved configuration for engaging complementary end walls of the lock”; and
(e) claim 7 requires the retainers to be arranged “to secure the lock in the release and hold positions corresponding to generally parallel orientations of the lock in the hole”.”

⁴³ [2009] FCAFC 70.

The Opponent then referred to the Macquarie Dictionary, 8^th edition, which “defines a “retainer” as “something or someone that retains”. The Opponent argued that the term is exceptionally broad and that it is apparent that the Applicant intends to keep the scope of the term broad.⁴⁴
The Opponent further submitted that Mr Conklin, the Applicant’s expert, provided conflicting constructions of the meaning of “retainers”. At [11.14] of Conklin, Mr Conklin first asserted that paragraph [83] of the application was referring to part of the lock rather than the features of the lock hole. However, at [13.30] of Conklin, he states that he understands how the options in paragraph [83] would work if they were to replace the retainer protrusions located in the lock hole.⁴⁵ The Opponent noted that, while it would make engineering sense for the retainers described in paragraph [83] to be referring to features of the lock, there is no support for this construction in the specification as a whole.⁴⁶ In support of this assertion, the Opponent referred to Figures 12, 14A and 14B which clearly identify the retainers as forming part of the lock hole and at the hearing highlighted paragraph 47-48 which consistently used “retainers” to describe formations on the lock hole.⁴⁷ At the hearing, they further emphasised that paragraph [83] is specifically referring to “the present invention” as described in the current application, rather than any invention described by reference to other prior art.

Applicant’s submissions

The Applicant outlined at [6.13] of their written submissions:
“…As set out by Mr Conklin, while the word ‘retainer’ would generally be used to refer to a lock itself, ‘the term “retainer” is being used here to describe a feature that “retains” the lock in place. That “retainer” is not being used to refer to the lock itself is further reinforced by the reference to the retainers being configured to secure a lock that is, the retainer is not the lock.’ This is consistent with the evidence of Dr DeWit that: ‘[b]ased on the description in the specification, as per paragraph 47 it appears they are using “retainer” to refer to some kind of feature in the opposing walls themselves, such as protrusions or recesses… In summary I can see what they mean after referring to paragraph 47 and the drawings in the specification…’”.
The Applicant agreed with the Opponent’s dictionary definition of “retainer” being “something or someone that retains”. They also agreed that the claims defined both structural and functional features of the “retainers” and that paragraphs [47]-[48] of the application describes the various forms that the retainers may take.⁴⁸
Regarding the comments about paragraph [83] of the application, the Applicant disagreed that there is no support for the assertion that the paragraph was referring to retainers of the lock rather than the hole. The Applicant highlighted that paragraph [82] of the application incorporates by reference US 7,536,811 (US’811), which refers to the “inserts” of the lock as “retainers”, thus paragraph [83] is referring to “retainers” of the lock as disclosed in US’811. The Applicant further pointed out that it is clear that paragraph [83] is referring to features of the lock since the paragraph states, “the pivot axis or hinge may be defined in other ways that permit the desired movement of the bodies” and “folding of the locking component could also be achieved by other means”. The Applicant also noted that Dr DeWit recognised that paragraph [83] was extracted

⁴⁴ Opponent’s written submissions at [22]-[23].
⁴⁵ Opponent’s written submissions at [24].
⁴⁶ Opponent’s written submissions at [25].
⁴⁷ Opponent’s written submission at [29]-[29].
⁴⁸ Applicant’s written submissions at [6.14]-[6.16].

from US’811. ⁴⁹ Ultimately, the Applicant rejects the suggestion that “retainers” as claimed includes the “retainers” described in paragraph [83].⁵⁰

At the hearing, the Opponent rejected the assertion that Mr Conklin’s evidence in [13.30] was an obvious mistake. They emphasised that Mr Conklin made no attempt to correct his evidence after becoming aware of the Opponent’s submissions regarding this contradiction. The Opponent also maintained that Dr DeWit was unable to resolve the ambiguity, particularly with regards to whether or not the retainers described in paragraph [83] of the application were intended to be included in claim 1.

Consideration

The definition of “retainers” does not appear to be in dispute. Both the Opponent and Applicant agree with the definition from the Macquarie dictionary provided by the Opponent. To further expand on the meaning, the Macquarie dictionary defines “retain” as “to hold in place or position”.⁵¹ The scope and breadth thereof is clear; anything that is able to “retain” or “hold in place” is within the scope of “retainer”. Each retainer must be distinct, in that they each have their own functionality which at least contributes to holding something in place or position.
The dispute regards the breadth of “retainers” in the claims and what impact paragraph [83] when properly construed, has on the scope of the claims. Paragraph [83] states:
“The above-discussed embodiments are preferred embodiments of the present invention. Various alternatives could be used. For example, the retainers may be threaded rods or threaded wedges in any of the disclosed embodiments. The retainers may have considerably different constructions and include shifting plates, detents, latches, etc. The pivot axis or hinge may be defined in other ways that permit the desired movement of the bodies. Folding of the locking component could also be achieved by other means. In general, various other embodiments as well as many changes and alterations may be made without departing from the spirit and broader aspects of the invention.”
In my view, paragraph [83] has no meaningful impact on the scope of “retainers” in the claims. If the examples provided in [83] are retainers, in that they are able to “retain”, it follows that they would be included in the scope of “retainers” regardless of whether paragraph [83] was present or not.
I reject the Applicant’s assertion that the “retainers” defined in paragraph [83] are to be considered features of the lock. As argued by the Opponent, “retainers” is consistently used to refer to features of the hole throughout the specification, see for example paragraphs [08], [47]- [51], [53] and [61]-[64]. Furthermore, paragraph [83] refers to “the above-discussed embodiments”, which are those discussed in the current application and not those referred to in a cross-referenced citation.
Although not in dispute, I also note that “retainers” is plural and therefore must include at least two or more to be within the scope of the claims.

⁴⁹ Applicants written submissions at [6.19].
⁵⁰ Applicant’s written submissions at [6.20].
⁵¹ See of “retainers” as used in the claims

In light of the above, the Opponent argued that each of the claims 1-8 lack clarity because of the use of the term “retainers”. They submitted that neither Mr Conklin or Dr DeWit were able to provide a consistent definition of what is, or is not, a “retainer” or resolve the ambiguity of claim 1.52
In response, the Applicant argued that, while Dr DeWit had some initial confusion, they are of the opinion he was able to resolve any ambiguity.⁵³ Instead, they believe Dr DeWit was confused by Mr Conklin’s statements with regards to paragraph [83] of the application. Dr DeWit agreed with Mr Conklin’s first observation that it made sense for paragraph [83] of the application to be referring to features of the locks, however did not understand Mr Conklin’s later comments that contradicted this.⁵⁴ The Applicant submitted that paragraph [83] uses “retainer” in a manner which is distinct from the claims; this is not to disregard paragraph [83] but to appreciate the meaning of the term in the context in which it appears.⁵⁵

Consideration

As discussed above, the definition and scope of “retainers” is clear. Regardless of whether or not paragraph [83] introduces ambiguity, a claim that is clear cannot be obscured by reference to the body of the specification.⁵⁶
Claims 1-8 do not lack clarity.

“Protrusion”

The Opponent sought to define the term “protrusion”, as introduced in claim 2, in their written submissions. They noted that the application uses the term “protrusion” broadly and there is no limitation on the nature of the protrusions described in claim 2. As described in paragraph [77] of their written submissions:
“The only requirement (in dispute) in claim 2 is that the retainers include ‘an outer protrusion’. The Macquarie Dictionary, 8th edition, defines a ‘protrusion’ as ‘1. The act of protruding. 2. The state of being protruded. 3. That which protrudes’.”
At [6.21] of the Applicants written submissions, they outline their construction of the term “protrusion”:
“As set out at paragraph 12.15 of the Conklin Declaration, Mr Conklin considers that ‘a protrusion is a feature that consists of added material over and above the parent surfaces around it.’ Dr DeWit considers that a protrusion is ‘something that extends outwardly from a body.’ This interpretation of Dr DeWit, although expressed in different terms, appears consistent with that of Mr Conklin…”⁵⁷

⁵² Opponent’s written submissions at [161]-[162].
⁵³ Applicant’s written submissions at [6.28].
⁵⁴ Applicant’s written submissions at [6.28].
⁵⁵ Applicant’s written submissions at [6.29].
⁵⁶ Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 at [249].
⁵⁷ Applicant’s written submissions at [6.21]; citing JBW-8 at 2(ii)

At the hearing, the Opponent rejected Mr Conklin’s definition of “protrusion” which included “added material over and above the parent surfaces around it”. They argued that the retainers 52 and 56 of the application are part of the wall and are not made from any different or additional material. Therefore, they submitted that the retainers are only required to be something that protrudes and can be part of a continuous wall that extends inwardly of other parts of the wall.

Consideration

Further expanding on the definition provided by the Opponent, the Macquarie Dictionary defines “protrude” “protruded” or “protruding” as “1. To project. 2. To thrust forward; cause to project”.⁵⁸ In the context of the current invention, as defined in claim 2, I consider this to mean that “a protrusion” is a distinct projection from each of the opposing walls. In other words, a “protrusion” would jut out or extend beyond the main body or line. This definition is consistent with the use of “projection” within the description. For example, retainers 54 and 56 are described as “protrusions” in paragraph [47]. It is clear from figure 12 that retainers 54 and 56 are distinct projections extending from the opposing walls of the hole.

“Spaced apart” and “spaced from”

Claim 1 requires that the retainers on each opposing wall are “spaced apart from each other”. The Applicant is of the view that this requires that there is some “space” between them. In support, they refer to Conklin at [12.11], where Mr Conklin states that “on each of the walls, there are two or more retainers, and on each wall the individual retainers are apart from one another”.⁵⁹
The Applicant presented similar arguments for claim 3 which requires that “the inner protrusions are spaced from the interior surface”. In particular they referred to Conklin at [12.16], which observed that “the inner protrusion is not flush with the interior of the wear part and is instead pulled back or up from that surface”.⁶⁰
At the hearing, the Opponent put forth an alternative construction of claim 1. They suggested that an equally credible construction of claim 1 was that, rather than the retainers being spaced apart, the walls were required to be spaced apart. Additionally, they argued that the phrase “spaced apart” is used in the application to refer to features of the lock, therefore the detailed description does not provide any insight into how the phrase should be construed.

If the Opponent were to accept it is the retainers, as opposed to the walls, that are to be “spaced apart”, they argued it is unclear how retainers 52 and 56 of the application fit the Applicant’s definition. They argued retainers 52 and 56 form part of a single continuous surface and there is no space between them as they are simply both parts of the same wall. Noting that retainers could be recesses according to paragraph [47] of the application, they pointed to figure 14A and identified four potential retainers 52, 66, 56 and 68, all forming part of a single wall and immediately adjacent each other. In summary, they submitted that it would be sufficient for the retainers to be located in a different space even if immediately adjacent.

⁵⁸ See Applicant’s written submissions at [6.22].
⁶⁰ Applicant’s written submissions at [6.23].

Consideration

As a starting point, according to the Macquarie dictionary “spaced”, within the context of the current invention, is said to mean “placed at specific distances apart”.⁶¹ Additionally, “apart” is said to include “separately or aside in motion, place or position”.⁶² It is thus clear that “spaced apart”, as defined in claim 1, requires that there is some distance between specified features. This is obviously incompatible with the Opponents proposition that the features may be “adjacent” each other. The definition provided above, is consistent with the application. In particular, where features are preferably adjacent or “contact each other”, the specification describes them as such, see for example paragraph [54]. Therefore, there is a clear distinction between features that are adjacent or spaced apart in the specification.
Turning the Opponent’s construction of claim 1, where they state that it may be the opposing walls that are spaced apart, rather than the retainers. The relevant part of claim 1 recites:
“…the hole including opposing walls each having retainers that are spaced apart from one another and configured to secure a lock to the wear member in two distinct positions including release and hold positions…”
While I can see how the Opponent arrived at this construction, I consider any ambiguity caused by this to be resolved by looking at the claim as a whole. It is apparent that the features, following on from “retainers”, are attributed to the retainers rather than the walls themselves. According to the application it is the configuration of the “spaced apart” retainers, rather than the walls themselves, that “secure a lock to the wear member in two distinct positions”, see for example paragraphs [47], [49] and [62]. Furthermore, opposing walls would already be considered “spaced apart” and such a characterisation would be redundant.
Furthermore, I reject the assertion that retainers 54 and 56 cannot be considered “spaced apart” since they are part of a continuous surface. They are retainers on each of the opposed walls and therefore are spaced apart with regards to their position on each wall.
Similar logic can be applied to the use of “spaced from” in claim 3. I consider “spaced from” to require some distance between the features specified.

“Generally parallel orientation”

Claim 7 requires that “the retainers are arranged to secure the lock in the release and hold positions corresponding to generally parallel orientations of the lock in the hole”. As described in paragraph [6.25] of the Applicant’s written submissions:
“Mr Conklin’s interpretation of what it means for “the lock to be in generally parallel orientations of the lock in the hole” is informed by the disclosure of this feature in the description. It is clear in the description that the lock moves linearly. In such a scenario, the overall orientation of the lock is parallel in the two positions. Therefore, it is Mr Conklin's view (to which ESCO agrees) that ‘generally parallel orientations’ should be interpreted in this way.”
The Applicant further suggested that the orientation of the lock is also parallel to both the wear member and the base. In support, they point to paragraph [55] of the application which states that

⁶¹ See See pivot axis of the lock is “generally parallel to longitudinal axis 44 of wear member 12”. They consider this to contrast with existing systems that move about a pivot in which the orientation of the lock in one position would not be generally parallel with the orientation of the lock in the other.⁶³

At the hearing the Opponent, criticised Mr Conklin’s definition. They emphasised that there is no reference to linear or rotational movement of the lock in the claim. Rather, the claim requires that the lock have an orientation in two positions and those orientations are to be generally parallel. In particular, there is no requirement in the claim that the pivot axis be generally parallel to the longitudinal axis of the wear member.

Consideration

The Opponent and Applicant appear to agree that the hole needs to facilitate a lock in two positions, wherein the orientation of the lock in the two positions are parallel to each other; I agree with this construction of claim 7.
The Applicant appears to introduce further limitations into the claim. This included that the lock is parallel to the longitudinal axis of the wear member and that the lock moves linearly between the two positions; none of these are defined in the claim. Therefore, the breadth of the claim is not limited by the additional features described by the Applicant.

Clear Enough and Complete Enough Disclosure

As introduced with the RTB Act, s40(2)(a), requires that “a complete specification must disclose the invention in a manner which is clear enough and compete enough for the invention to be performed by a person skilled in the relevant art”.

According to the Explanatory Memorandum (EM) to the RTB legislation at Schedule 1, item 8, enablement amounts to a requirement that “...sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention”. The intention, as per Schedule 1, item 8, of the EM, is for s40(2)(a) be given the same effect as corresponding provisions of UK legislation and the European Patent Convention.
In Cytec Industries Inc. v Nalco Company⁶⁴ (Cytec) at [143]-[144], Burley J confirmed the approach taken by the delegates of the Commissioner in both CSR Building Products Limited v United States Gypsum Company⁶⁵ (CSR) and Evolva SA⁶⁶ (Evolva):

“In CSR Building Products Limited v United States Gypsum Company [2015] APO 72, Dr S D Barker considered at [95] that is involved the following three steps:

1.construe the claims to determine the scope of invention as claimed,

⁶³ Applicant’s written submissions at [6.24].
⁶⁴ [2021] FCA 970.
⁶⁵ [2015] APO 72.
⁶⁶ [2017] APO 57.

2.construe the description to determine what it discloses to the person skilled in the art, and
3.decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.

Cytec at [144] further stated:

“In the present case, the delegate (at [54]) added to these further questions to be considered, citing Evolva SA [2017] APO 57 at [45]:

1.Is it plausible that the invention can be worked across the full scope of the claim?
2.Can the invention be performed across the full scope of the claim without undue burden?”

I further note, as discussed in GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited ⁶⁷ at [I87]:
“Whether there has been a failure to make the required disclosure is essentially a question of fact. Every case will depend on its own facts including the nature of the invention, and the significance of what is and what is not disclosed.”
The Opponent argued that the claims lacked clear enough and complete enough disclosure for the following reasons:
a. The claims do not require and are not limited to any form of lock; and
b. The claims extend to a myriad of (undisclosed) retainers.
I will consider each of the above in turn.

The claims do not require and are not limited to any form of lock Opponent’s submissions

At the hearing, the Opponent argued that it is apparent from the application, see for example paragraph [5], that the invention is directed to a locking assembly, which includes both a lock and a lock hole. The Opponent submitted that it is apparent from the description “that the design of the lock and its interrelationship with the hole into which it is inserted, is critical to the efficacy of the locking arrangement”.⁶⁸ In particular, at [141] of their written submissions (original emphasis):
“The Application makes clear that it is the lock (and not the hole) which ensures that ‘the wear member cannot be pulled from the lip’ and which functions as ‘a strong, integral pin to resist heavy loading and prevent release of wear member 12 from lip 16’. Further, it is the ‘engagement or gripping’ of the retainers [of the hole] by the lock [which] improves resistance against loss or ejection of the lock”.
At [143] of the Opponent’s written submissions they referred to DeWit1 at [58]-[60], which states (original emphasis):

⁶⁷ [2018] FCAFC 71.
⁶⁸ Opponent’s written submissions at [140].

“The lock is central to the invention. The specification at pages 1 to 16 describes a special lock, not just any lock. It’s a lock that is specially designed to hold itself against the ‘retainer’ features of the hole in two different positions. The way the lock works is central to the invention as described in the specification. The multiple parts that hinge and can be locked together are central to how the lock works to engage the retainers and secure itself, as are the features on the ends of the lock that are specifically designed to engage the retainers…
To summarise, I would say that the specially designed lock and the relationship between the lock, wear member and whatever the wear member is attached to, are central the invention yet are not included in claim 1.”

At the hearing, the Opponent further argued that while the claim is not to the lock itself, the claim requires that the lock used with the lock hole will be one that interacts with the defined retainers in a manner that is secure. They submitted that the application neither enables nor discloses a hole which is able to secure or achieve the stipulated functional outcomes with an infinite range of locks.
In summary, the Opponent submitted that there is not clear enough or complete enough disclosure of all things falling within the scope of the claims since they include within their scope the use of any lock when there is no disclosure of how the locking hole, as claimed, may be used effectively with a lock other than those described in Figures 1-3 and Figures 11-22.⁶⁹

Applicant’s submissions

At the hearing, the Applicant first highlighted that paragraph [2] states “the present invention pertains to wear members and locks for securing wear members to earth-working equipment”; wherein they submitted “pertains” means the invention is related to but not confined to all the described features.
The Applicant contended that, although the lock and lock hole relate to each other, there is no requirement that the lock be disclosed in order to enable the functionality of the lock hole as claimed. They stated that the lock must be able to interact with a lock hole with the claimed features, but beyond that there is no specific design otherwise required.⁷⁰
Regarding the Opponent’s assertion that it is the lock that confers the benefits outlined in [54] of this decision, the Applicant submitted that the features of the lock hole help the lock achieve some of the stated benefits. They further argue that it is not a requirement that all advantages apply equally to all aspects of the invention.⁷¹
Lastly, the Applicant submitted that the claims do not seek to claim a monopoly over a range of products that extend beyond the disclosure of the Application. At [9.20] of the Applicant’s written submissions they state:
“…The claims do not seek a monopoly over a lock, because they are not directed to the lock, or to a locking system with a hole and a lock. Instead, they are directed to a wear

⁶⁹ Opponent’s written submissions at [146]-[147].
⁷⁰ Applicant’s written submissions at [9.14].
⁷¹ Applicant’s written submissions at [9.15].

member with a locking hole. Therefore, the monopoly sought is in relation to the locking hole, which is clearly within the extent of the disclosure made in the Application.”

Consideration

In the passages of DeWit1 provided by the Opponent, Dr DeWit asserts that it is the relationship between the lock and the hole that is essential to the working of the invention. Accordingly, the Opponent’s position is that the application does not provide clear enough and complete enough disclosure of a hole which is able to achieve the functional outcomes with an infinite range of locks.

With regards to whether the claimed invention can provide clear enough and complete enough disclosure without explicitly including the lock, of note is paragraph [54] of Dewit1 (my emphasis added):

“I find the term ‘retainer’ to be unusual in this context. I consider a retainer to be a component that is inherently for retaining something to something else. I wouldn’t look at a hole and identify protrusions or recesses on the walls of the hole as ‘retainers’. Whether they retain something depends on how something else may engage them. It sounds like a retainer could be anything as long as a lock could correspond to it or engage it in some way so as to be retained. It’s very much the relationship between the features of the wall and lock that retains the lock, rather than the features of the wall inherently being retainers.”

Dr DeWit seems to suggest that, in order for the retainers in the wall to be able to secure a lock to the hole, there needs to be a defined relationship or engagement between the features of the lock ends and the features of the retainers of the hole. Turning to claim 1, I consider the necessary functional relationship between the lock and the hole, as stipulated by Dr DeWit, to be claimed. According to claim 1, the lock hole and, in particular, the retainers need to be “configured to secure a lock to the wear member”. Put simply, the lock hole needs to be designed with this relationship in mind. In my opinion it is not necessary to explicitly include a lock as a feature, it is sufficient to limit the scope to the functional relationship, as has notionally been done by the present claims, provided there is enabling disclosure across the whole scope.
I would also like to draw attention to a further portion of DeWit1 at [58] which states “the multiple parts that hinge and can be locked together are central to how the lock works to engage the retainers and secure itself”.

In response to the above, Mr Conklin states the following at paragraph [13.33] of Conklin (my emphasis added):

“At paragraph [58] of the DeWit1 declaration, Dr De Wit states "the specification at pages 1 to 16 describes a special lock, not just any lock." As above, I consider that the Opposed Application describes a few different types of locks. Once you have a wear part with the retainers of claim 1 in place, whether the lock is folding or is extensible or is otherwise able to achieve a greater length in the extended position, any lock of that general description can be used. I consider that the action of the lock can be separated from the invention of the locking hole.”

Dr DeWit then made the following observations at paragraph [8] of DeWit2 (my emphasis added):

“…In response I note that the ‘number of different locks’ all share some very specific features. The lock hole cannot be completely separated from the design of the lock because the lock must have certain features in order to be retained in the lock hole, at least according to the Opposed Application. For example, all of the locks described in the Opposed Application are formed by two bodies which move relative to each other to enable the lock to be installed and removed from the lock hole… The examples shown in the drawings have two parts which pivot with respect to each other, and at paragraph
[61] the Opposed Application suggests a lock which ‘could have an end that telescopes inward and outward to engage or release retainers 54, 56’… The Opposed Application describes a lock hole suitable only for a subset of locks, the subset being limited to locks having the specific features above.”

It is evident from the expert evidence and the teachings of the specification at paragraph [61], a locking hole having spaced apart retainers in each opposing wall, as claimed, can secure a lock in the release and hold position if said lock is extendable or foldable via some means such as hinging, pivoting or telescoping of the lock body. The question then being whether there is undue burden in extending the teaching to any kind of lock/retainer that falls within the scope of the claims; in this regard the evidence falls short. The evidence of Dr DeWit’s and Mr Conklin, as outlined above, focuses on what is disclosed in the description. There is no discussion about whether there would be undue burden when configuring a lock hole, as claimed, to facilitate insertion and securing of a non-extendable/foldable lock.
Therefore, there is insufficient evidence to conclude a lack of clear enough and complete enough disclosure of everything falling within the scope of the claims when the lock is not a claimed feature.

The claims extend to a myriad of (undisclosed) retainers Opponent’s submissions

Claim 1 requires the use of “retainers that are spaced apart from one another and configured to secure the lock”. The claim further requires that the “retainers” are “spaced apart” and “configured to secure a lock to the wear member in two distinct positions including release and hold positions”.
The Opponent submits that, beyond the limitations outlined above, the claims encompass all types of retainers regardless of whether they are disclosed in the application of not.⁷² They argued “The Application discloses specific examples of locking arrangements, featuring particular locks which interact with particular retainers in the lock hole. There is no disclosure of the manner in which different types of retainers might be used, with different locks, to secure a wear member to earth working equipment.”⁷³ For example, as discussed at [47] and [83] of the application, retainers broadly encompass “threaded rods”, “threaded wedges”, or may include “shifting plates, detents latches etc”, however they argued that there is no enabling disclosure of

⁷² Opponent’s written submissions at [149].
⁷³ Opponent’s written submissions at [153].

how such retainers might be used in the lock hole of claim 1 to retain the lock in the release and hold positions.⁷⁴

Furthermore, the Opponent submitted that there is no support for Mr Conklin’s assertion that “the Application at [83] is referring to features of the lock, rather than the lock hole. This may make engineering sense but is not supported by the disclosure”.⁷⁵

Applicant’s submissions

In response, the Applicant submitted that as long as there is a retainer that is capable of retaining the lock, there is no range in which utility of such a feature is dependent on its particular form.⁷⁶ Furthermore, they argued that “retainers”, as claimed, is a principle of general application and a PSA would be able to work the invention across the full scope.⁷⁷
The Applicant further asserted that paragraph [47] of the application provides sufficient examples of the form retainers may take. The Applicant again noted their previous position that paragraph
[83] does not describe examples of retainers in the lock hole and therefore emphasised that threaded rods, threaded wedges, shifting plates, detents and latches do not fall within the scope of claim 1.⁷⁸

Consideration

In order to be convinced that the principle of “retainers” cannot be applied broadly, there needs to be some evidence, whether in the specification or from expert evidence, that convinces me that in order for the retainers, as claimed, to perform the outlined function, they must have specific features. There is no question that a retainer must be capable of retaining, however, there can be some debate about whether everything falling with the scope is capable of retaining a lock in a release and hold position wherein the release position retains the lock outward from the interior surface and the hold position retains the lock inward from the release position. In this respect, the evidence falls short.
In Dr DeWit’s declarations, he asserts some retainers, and in particular some examples in paragraph [83] of the specification, would not work.⁷⁹ He does not go into detail about why. Would there be considerable, or inventive, re-design of the claimed wear member hole to facilitate the use of some of these examples? Would some examples not be capable of securing a lock in the release and hold positions as claimed?
With regards to the retainers described in paragraph [83], Dr DeWit says the following at paragraph [33] of Dewit2 (my emphasis added):

“…In any case, I can see what Mr Conklin is suggesting with the example of driving rods through a casting to create protrusions, but I don’t know why you would do that or what any benefit would be. You are already casting a part and I can’t think of any reason not to simply cast the protrusions as features of the hole. Also, paragraph [83] doesn’t refer to rods being “driven” and also specifically refers to threaded rods and wedges,

⁷⁴ Opponent’s written submissions at [150], [157].
⁷⁵ Opponent’s written submissions at [156].
⁷⁶ Applicant’s written submissions at [9.22].
⁷⁷ Applicant’s written submissions at [9.23].
⁷⁸ Applicant’s written submissions at [9.23], [9.27].
⁷⁹ See for example DeWit1 at [53] and DeWit2 at [33]-[35].

which leads me to doubt that what Mr Conklin suggested is what was intended in paragraph [83]. As there is no reason for the lock hole retainers to be threaded, the rods or wedges being threaded only makes sense in the context of the insert 100, which is what Mr Conklin originally thought paragraph [83] is referring to. Mr Conklin also does not comment on any other options in paragraph [83], such as ‘shifting plates, detents, latches etc.’ I still don’t see from the Opposed Application how those could be options for retainer features of a lock hole.”

It is important to note that Dr DeWit does not claim that the retainers described in paragraph [83] of the specification could not achieve the desired functional outcome. Rather, he questions why these options would be chosen over more convenient solutions such as protrusions. An option that would be avoided because it is not the easiest or simplest option, is not the same as arguing that it would not serve the desired functional purpose. Having reviewed other parts of Dr DeWit’s evidence, there is nothing beyond mere speculation that the retainers described in paragraph [83], and those within the scope of the claims, would not work. Therefore, there is no evidence that convinces me that “retainers” as a principle cannot be applied broadly.
On the evidence, I cannot conclude that there is a lack of clear enough and complete enough disclosure of everything falling within the scope of “retainers” as claimed.

Conclusions

There is insufficient evidence to conclude that claims 1-8 lack clear enough and complete enough disclosure.

Support for the Claims

According to sub-section 40(3) as amended by the RTB Act the claims must be supported by matter disclosed in the specification. As discussed in the EM to the RTB legislation at Schedule 1, item 9, the objective of the amendment is to align the requirements with those of overseas jurisdictions like the United Kingdom and Europe. TCT Group v Polaris⁸⁰ expressly endorsed European patent decision Fuel Oils/EXXON (T409/91)⁸¹ (Exxon). Exxon provided guidance regarding the requirements for “support” at [659]:

“the claims must be supported by the description, in other words it is the description of the invention in the claims that needs support. In the Board’s judgment, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see T 133/85, OJ EPO 1988, 441). This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, as was stated in decision T 26/81 (OJ EPO 1982, 211, point 4 of the reasons), the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.
Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention” (emphasis in the original).

⁸⁰ [2022] FCA 1493.
⁸¹ [1994] OJ EPO 653.

To summarise, support requires “the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.”⁸² This means that, as quoted above, “the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.”⁸³

The approach to assessing support of the claims is summarised in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)⁸⁴ (Merck Sharp) at [546]-[547]:

“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):

‘... to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.’

That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained.
Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.

It is important to recognise that a lack of support may arise, not because a claim is too broad, but because the claim defines an invention that is materially different to what is described in the body of the specification. In this instance, a lack of support exists even if the claims are enabled. As Nicholas J outlined in Calix Limited v Grenof Pty Ltd⁸⁵ at [128]:
“Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed.”

⁸² Schering Biotech Corp.’s Application [1993] RPC 249
⁸³ Exxon at 659.
⁸⁴ [2020] FCA 1477.
⁸⁵ [2023] FCA 378.

Submissions

The Opponent argued that the claims lacked support for the same reasons discussed above under the heading ‘clear enough and complete enough disclosure’.⁸⁶ To further expand on this, the Opponent claimed that the technical contribution to the art disclosed in the application is a new and useful locking arrangement, in which the lock is a central feature.⁸⁷
The Applicant disagreed with above characterisation, instead they submitted that there is more than one technical contribution, one related to each of the lock or the lock hole.⁸⁸
As stated in the Applicant’s written submissions at [9.18]:
“The claims are not directed to, or include, a lock. They are to one of the two aspects of the invention, being the locking hole. It is not unusual in mechanical patents to claim one but not all of the aspects of the invention in a single claim or patent. The technical contribution, as it relates to the claimed invention, is to the locking hole, and in relation to that aspect, the claimed invention does not exceed the technical contribution to the art.”

Consideration

The invention, as specified in the claims, is directed to a wear member having a hole for securing a lock. The specification notes that wear members “are commonly subject to harsh conditions and/or heavy loading”.⁸⁹ Accordingly, the object of the invention is to provide a locking arrangement that is strong, durable, resistant to ejection, easy to manufacture, convenient to inventory and ship, and is easy to install and remove when replacement of the wear part is needed.⁹⁰
Relevant to solving the specified problems, the specification describes a wear assembly wherein a lock can be secured in a hold and release position.⁹¹ The release position of the lock is designed to permit easy installation of the wear member on the earth work equipment.⁹² The hold position of the lock is designed to secure the wear member to the earth working equipment.⁹³ This is achieved via the use of a lock that is adjustable between a locked condition where the lock engages retainers in the opposing walls to an unlocked condition where the lock disengages with the retainers in the opposing walls for repositioning from the release position to the hold position.⁹⁴ The specification describes the lock as being adjustable via a hinged, folding, pivoting or telescoping mechanism.⁹⁵
In light of the above I consider the technical contribution to be directed to a wear assembly having a hole with retainers configured to secure a lock in a release and hold position.
Neither the claims nor the technical contribution requires the lock to be a feature of the claims. Rather, there needs to be a defined relationship between how the wear member hole is to interact

⁸⁶ Opponent’s written submissions at [137]-[159].
⁸⁷ Opponent’s written submissions at [142].
⁸⁸ Applicant’s written submissions at [9.16].
⁸⁹ Specification at [04].
⁹⁰ Specification at [04]-[05].
⁹¹ Specification at [06]-[16].
⁹² Specification at [08].
⁹³ Specification at [08].
⁹⁴ Specification at [10]-[12].
⁹⁵ Specification at [11]-[14] and [61].

with a lock. I consider this functional relationship to be claimed in claim 1, as per comments under s40(2)(a).

Additionally, as discussed previously, there is no evidence to suggest that retainers cannot be applied broadly or that there would be undue burden in doing so. I also note that the specification, for example at paragraph [47]-[49], provides for a range of alternative forms of retainers.
Of particular note is the expert evidence about the form of the lock, as disclosed in the description. Both Mr Conklin and Dr DeWit observed that the description only provided for the use of extendable or foldable locks when there were at least two or more spaced apart retainers in each opposing wall of the hole.
In particular, [13.33] of Conklin states:
“As above, I consider that the Opposed Application describes a few different types of locks. Once you have a wear part with the retainers of claim 1 in place, whether the lock is folding or is extensible or is otherwise able to achieve a greater length in the extended position, any lock of that general description can be used.”
Additionally, paragraph [8] of DeWit2 says:
“…all of the locks described in the Opposed Application are formed by two bodies which move relative to each other to enable the lock to be installed and removed from the lock hole.”
Relevantly, it is clear from the Application that the disclosed embodiments need the lock to fold or pivot in order to move between the release and hold positions, and also to permit removal or installation of the lock in the wear member.⁹⁶ In particular, paragraph [61] states:
“…the lock could comprise a foldable element, but not consist of two components joined by a pivot pin. Other arrangements could be used to present a firm, secure lock in the retaining position, but which permits folding of the lock to the release position. For example, lock 10 could have multiple hinges formed by three or more components. As another example, lock 10 could be foldable by a resilient hinge portion. Moreover, lock 10 could be formed without a hinge or a foldable portion; lock 10 could, rather, have different means for being releasably secured to retainers 54, 56. In one example, the lock could have an end that telescopes inward and outward to engage or release retainers 54, 56.”
It is apparent from a plain reading and construction of the specification that the Application teaches towards a wear member hole configured for an extendable or folding lock. A lock hole, as claimed, configured to secure a non-extendable/foldable lock would not be at the disposal of a person skilled in the art upon reading the description nor is it apparent that the stated benefits could be achieved when used with such a lock. Additionally, it appears that the experts agree that the plain language of the specification indicates that the device, as disclosed, is only configured for an extendable or folding lock, noting that the claims are not limited to the use of such locks.

⁹⁶ Specification at [53] and [61].

Therefore, the claims lack support as they define an invention that is materially different to what is described in the body of the specification since the claims omit that the spaced apart retainers are configured to secure an extendable or folding lock.

Conclusion

Fo the reasons outlined above, claims 1-8 lack support according to s40(3) of the Act. The Opposition succeeds on this ground.

Utility

According to subsection 18(1)(c) of the Act, the invention, so far as claimed in any claim, must be useful. Section 7A was introduced in the RTB Act and is intended to co-exist with existing case law on utility.⁹⁷

Section 7A is as follows:

“Meaning of useful

1. For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.
2. The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the art.

Subsection (1) does not otherwise affect the meaning of the word useful in this Act.”

Therefore, an invention must have a specific, substantial, and credible use that is disclosed in the patent specification and meet the requirements of the existing case law.

Existing case law on utility required that the invention must achieve the promised benefit. To assist in determining whether the invention achieves the promised benefit, the Court in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd⁹⁸ (Artcraft) at [121] proposed two questions:

“Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?...Further, ‘everything’ that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee: Lundbeck at 172 [81], Emmett J.”

As was noted in Apotex Pty Ltd v AstraZeneca AB (No 4)⁹⁹ (see [352]):

⁹⁷ Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012] 44.
⁹⁸ [2016] FCAFC 29.
⁹⁹ [2013] FCA 162.

“Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification.”

Opponent’s submissions

The Opponent outlined the object of the invention at paragraph [166]-[167] of their written submissions (original emphasis):
“The promise of the Application is encapsulated in [5], the first paragraph appearing under the heading ‘Summary of the Invention’: ‘The present invention pertains to wear parts for earth-working equipment, and in particular to a locking arrangement that is strong, durable, resistant to ejection, easy to manufacture at reduced costs, convenient to inventory and ship, and/or simple and safe to use’”.
Put simply, the promise of the invention, consistent with the disclosure in the Application more generally, concerns various, asserted benefits, of a ‘locking arrangement’.”
The Opponent emphasised that the design of the lock, and its interrelationship with the hole into which it is inserted, is critical to the efficacy of the locking arrangement.¹⁰⁰ They argued that the claims are inconsistent with the object of the invention since they are not confined to the use of any particular type of lock, instead the claims define features of the “hole” for the lock located in the wear member.¹⁰¹ The Opponent submitted that the claims lacked utility for the following reasons:
a.   Whether claim 1 achieves the promise of the invention depends upon the design of the lock. Since claim 1 does not impose a limitation on the design of the lock it therefore includes locks which would not achieve the promised benefit.¹⁰² At the hearing the Opponent pointed to paragraphs [58] and [60] of Dewit1 and paragraph [37] of Dewit2 in support of this assertion.
b.   Mr Conklin asserts that any lock that can generally be described as “folding or is extensible or is otherwise able to achieve greater length in the extended position” can be used.¹⁰³ However, the Opponent argues that none of the claims are confined to the use of the lock hole in conjunction with a folding or extensible lock.¹⁰⁴
c.   The Opponent argued that any wear member product with “a ‘hole’ with stipulated characteristics...would fall within the scope of the exclusive rights conferred upon ESCO”. The usefulness of the such products depends on the lock used. Since the claims do not define the lock, the scope of the claims includes products that are useful and also those that are not.¹⁰⁵
d.   Retainers, as construed at paragraph [83] of the application, would extend to configurations that would not work. For example, they argued shifting plates, detents and latches as retainers would not work with the claimed invention.¹⁰⁶ In support, the Opponent referred to paragraphs [53] of Dewit1 and [33]-[34] of Dewit2 at the hearing.

¹⁰⁰ Opponent’s written submissions at [168].
¹⁰¹ Opponent’s written submissions at [169].
¹⁰² Opponent’s written submissions at [171].
¹⁰³ Conklin at [13.33]
¹⁰⁴ Opponent’s written submissions at [172].
¹⁰⁵ Opponent’s written submissions at [173].
¹⁰⁶ Opponent’s written submissions at [174].

Applicant’s submissions

In their written response at [10.10] the Applicant states:

“…the Opponent refers to what it says is ‘the promise of the invention’, being that it ‘concerns various, asserted benefits of a “locking arrangement”.’ …the Opposed Application is directed to two aspects of that locking arrangement – a lock aspect and a locking hole aspect. Various benefits, including those set out in paragraph 5 of the Opposed Application, may but need not be provided by one or both of the lock aspect and the locking hole aspect.”

At the hearing, the Opponent directed attention to Conklin at [16.3] which says:
“…Without some additional contour or undercut on the lock hole, I do not consider that such a system [as disclosed in D2] would be robust enough to be secured in [a release] position, particularly during shipment of the part when the wear part is subject to a range of forces.”
Since, according to the Opponent, both experts identified the claimed solution when prompted about what changes to D2 would be required to secure a lock in the release position, they submitted that the solution was obvious. They also noted that Mr Conklin did not suggest that there would be any difficulty in implementing this solution.

The Applicant reiterated their previous comments made against D1. They maintain that the number of retainers on each opposing wall is not arbitrary.²⁰³

At the hearing the Applicant emphasised that, while it may have been known to ship locks with a wear member, this did not mean that it was well known to ship locks secured in a release position. For example, they submitted that sometimes the lock can be shipped in a hold position or attached by some other means. On this point, the Applicant made the following submissions at [8.24] of their written submissions (original italics):

“The Opponent has not established, and [Opponent’s Submissions] [84] does not suggest, that there was a ‘need’ to ensure this capability. As set out in Mr Conklin's declaration, ‘only ESCO was producing teeth with locks in them at [the Priority Date]’ and that while ‘other people in the industry would have been thinking about [integral locks] as they would have seen ESCO's successful products’, it was not the case that, as stated by Dr DeWit, it was known in the industry ‘for a long time that it is important that components that will be shipped together are securely attached’. Even Dr DeWit, who was aware of the relevant ESCO products at the Priority Date, only made comments on making the lock of D2 more secure on prompting by James & Wells. There is nothing to support the Opponent's statement that this was a ‘need’ that would be ‘immediately recognise[d]’ by a PSA.”²⁰⁴

The Applicant also rejected the Opponent’s assertion that it would be obvious to modify D2 to include retainers to secure a lock in a release position. At the hearing the Applicant referred to Conklin at [13.25]. As stated by Mr Conklin, they noted that the lock of D2 is partially folded when it is in a release position, as per Figure 6, therefore the lock is not designed to be secured in the hole while in its release position. In other words, they submitted that D2 does support the use

²⁰² Opponent’s written submissions at [85]; citing DeWit1 at [42] and DeWit1 at [40].
²⁰³ Applicant’s written submissions at [8.23].
²⁰⁴ Applicant’s written submissions at [8.24]; citing Conklin at [13.20]-[13.21] and DeWit1 at [39] and [41].

of a secure release position by virtue of the formation of the lock. Mr Conklin also observed that the lock is only secure in the hold position and, even then, the lock must be assembled on the base to be secured in place, therefore, he states that it would not be obvious to make these changes.
The Applicant also noted that D2 does not suggest that you should or could ship the lock together with the wear member.

The Applicant rejected Dr DeWit’s comments that D2 discusses modifying features of the opposed walls at paragraph [0044]. At the hearing they pointed out that paragraph [0044] was, instead, referring to modifications that could be made to the walls of the lock. They suggested this was evident as [0044] specifically refers to modifications made to end walls 86 and 88 of the lock, see Figures 5-6.

In summary, the Applicant argued that the Opponent has not established that a PSA would be motivated to modify the disclosure of D2 to add retainers on each wall that are configured to secure a lock in a release position, even when faced with the problem of securing a lock to a wear member during shipping. They further submitted that, even if the changes presented by Dr DeWit were made, there is no suggestion that the opposed walls would have all the features of claim 1. Finally, they submitted that the evidence falls short of establishing inventive step.²⁰⁵

At the hearing the Opponent responded to comments about whether Dr DeWit was led to the solution by the Opponent. They highlighted paragraph [39] of DeWit1, where Dr DeWit identifies that the importance of components being securely attached for the purposes of shipping was well known at the priority date. This was addressed prior to reviewing D2 at [40] of DeWit1. At [40] of DeWit1, Dr DeWit identified that D2 did not disclose that the lock was held securely in the release position. It was not until Dr DeWit identified D2 did not meet the need discussed in
[39] of DeWit1, was he then prompted to discuss what modifications would or could be made.

The Opponent also submitted that it is irrelevant whether [0044] of D2 is referring to features of the lock. They argued that it would be obvious that corresponding modifications would be made to the opposing walls in order to accommodate the various changes to the ends of the lock. They argued that this would be necessary in order to maintain a functional relationship between the components wherein the lock could be secured in place.

Consideration

Based on the evidence provided, I consider selling or shipping wear members with locks already in them was known in the art. DeWit1 at [37] states “it was known to me and I believe known more generally in the industry that some systems for smaller machines included teeth sold with locks in them”. DeWit1 at [39] adds “we’ve known for a long time that it is important that components that will be shipped together are securely attached so that they don’t fall apart while on the back of a truck etc. and this was known widely in the field before the Priority Date”. Additionally, Mr Conklin described a well-known Ultralok system that was released in 2008 which could be shipped with the lock in the “shipping” or “release” position.²⁰⁶ This was a desirable arrangement because there were “fewer components to order and keep track of”²⁰⁷ and meant a user “could slide the tooth onto a nose without having to do anything with the lock”²⁰⁸

²⁰⁵ Applicant’s written submissions at [8.25].
²⁰⁶ Conklin at [4.7].
²⁰⁷ DeWit1 at [37]
²⁰⁸ Conklin at [4.7]

However, the Opponent has not established that it was well-known, or common general knowledge at the priority date, that locking assemblies needed to enable shipping of the lock in a secure release position; neither Mr Conklin nor Dr DeWit declared that this was known. It is just as possible that the benefits identified by Dr DeWit, including reducing the number of components to “keep track of” during shipping,²⁰⁹ could be achieved by shipping a lock secured to a wear member in the hold position. The Opponent also referred to Conklin at [4.7] where Mr Conklin describes a well-known system released before the priority date which includes a lock that can be secured to a wear member in a hold and release position. This falls short of establishing that this problem was well-known; at most, it points to a known product and the specific features thereof.

Although not pointed out by the Opponent, it is important to recognise that D1, D3 and D8 each disclose a locking assembly wherein a lock can be secured in a release position and a hold position. However, D1, D3 and D8 are directed to a locking assembly where the lock does not extend or fold and where the lock pivots about a single retainer in one of the opposing walls. There is no evidence to suggest that it was known to use multiple retainers on each of the opposing walls of the wear member hole.

The Opponent attempted to infer from Dr DeWit’s evidence that it is common general knowledge to add additional retainers on each opposing wall in order to secure a lock in a release position. This is not what was said by Dr DeWit. After Dr DeWit was specifically asked how to make the lock more secure in the release position such that it could be shipped with the shroud, he asserts that:

“…you could add an additional component such as a plastic cap or other insert to hold the lock in the hole… Otherwise you could make changes to the GET. The lock just needs something to bear against to hold it in place in the release position, so it doesn’t fall out in either direction. You could add ledges or some other features to the hole of the GET for the lock to engage in the release position. You would also make some changes to the lock as well so that it engages the ledges or features you’ve added to the hole…”²¹⁰

In my view, Dr DeWit’s solution above does not establish that it was common general knowledge to add additional retainers on each opposing wall. While it could be assumed Dr DeWit intended to include additional retainers, or ledges for example, on each opposing wall of the wear member hole, he does not explicitly say that is the solution. In light of what was established from the evidence, it could also be inferred he intended to align D2 with the Ultralok system disclosed in D1 such that additional retainers were added to only one of the opposing walls to permit pivoting of the lock between a hold and release position.

Lastly, after viewing the claims, Dr DeWit discusses various changes you could make to the lock of D2 in order to allow the lock to be secured to the wear member in a release position.²¹¹ In Exhibit JDW-10 Dr DeWit was asked “if a suitably designed lock could also be retained in the opening 38 in the release position”. He described how someone could modify the ends of the lock such that the upper corners of the wear member hole would function as retainers that secure

²⁰⁹ DeWit1 at [37].
²¹⁰ DeWit1 at [42].
²¹¹ See DeWit2 at [31] and Exhibit JDW-10

the lock in a release position. More specifically, “you might put internal corners on the ends of the lock to match the external corners at the top of the opening 38”.²¹²

Regarding the comments above, I am sceptical that Dr DeWit would have arrived at that particular solution without the benefit of the claims. Additionally, I share the same concerns raised at [16.3] of Conklin, cited at [218] above. Based on the configuration of D2, I find it difficult to see how you could secure a modified D2 lock in a release position without also modifying walls 90 and 92. Therefore, I am not convinced Dr DeWit has demonstrated that it would be obvious to turn the upper corners of walls 90 and 92 into retainers by modifying the configuration of the lock.

Consequently, on a balance there is insufficient evidence to suggest that it was common general knowledge to provide multiple retainers on each opposing wall of a wear member in order to secure to a lock in a release and hold position. It is also unclear if it was common general knowledge to secure a lock to a wear member in a release position.

Relevantly to the undisclosed features, the opposed application attempts to provide a locking assembly that is convenient to inventory and ship and is easy to install and remove in field when replacement of the wear part is needed.²¹³

The problem that D2 attempts to solve is best summarised at [0003]:

“Wear members for earth-working equipment are commonly subjected to harsh conditions and/or heavy loading. Accordingly, it is desirable for the lock to be strong to effectively retain the wear member to the equipment, resistant to ejection during use, and easily removed in the field when replacement of the wear part is needed...”

Notably, D2 does not attempt to improve factors that make the assembly convenient to inventory and ship. Therefore, in light of the problem of improving inventory, shipping and assembly would a PSA arrive at the claimed invention based on established common general knowledge. As observed previously, the Opponent has not established that it is common general knowledge to secure a lock to a wear member in a release position to improve shipping nor have they established that it would be common general knowledge to provide multiple retainers in each opposing wall of the wear member hole to achieve this. Therefore, it is unclear if a PSA faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention.²¹⁴

In light of the above considerations, I conclude that there is insufficient evidence to suggest that the claims lack an inventive step in light of D2.

Conclusion

There is insufficient evidence to conclude that claims 1-8 lack an inventive step in light of the disclosure of D2 and common general knowledge in the art.

²¹² Exhibit JDW-10.
²¹³ Specification at [04]-[05].
²¹⁴ Wellcome Foundation at [45].

D3: WO2007127288A2

D3 does not disclose “the hole including opposing walls each having retainers that are spaced apart from one another”.

The Opponent argued claim 1 was not inventive in light of D3 and common general knowledge for the same reasons they advanced with regards to D1 and D2.²¹⁵ The Applicant also relied on their D1 and D2 submissions.²¹⁶

D3 pertains to a non-extendible/folding lock that pivots about pivot member 244 between a secured release and hold position. Therefore, for similar reasons discussed with regards to D1, the claims are considered inventive. As discussed previously, it is unclear what motivation a PSA would have to add additional retainers along a wall designed to permit pivoting motion of the lock.

Therefore, in light of the disclosure of D3, I cannot see why it would be obvious to add an additional retainer alongside the pivot member 244.

Conclusion

Claims 1-8 involve an inventive step when compared with the disclosure of D3 and common general knowledge in the art.

D7: WO2012075531A1

As discussed previously, D7 does not disclose “retainers…configured to secure a lock to the wear member”, as required in claim 1.

The Opponent argued that, for essentially identical reasons to those set out in respect of D1-D3, the claims do not involve an inventive step in light of D7 and common general knowledge in the art. To briefly summarise, the Opponent argued:

“To the extent that D7 might not disclose any particular feature of the retainers in the lock hole, the Application admits that there is nothing inventive, unusual or otherwise significant about the number construction or shape of such retainers. Thus, to the extent that any missing integer relates to such matters, it is merely an instance of parameteritis, which cannot give rise to an inventive step.”²¹⁷

The Applicant also relied on their previous submissions with respect to D1-D3, to argue that the claims are inventive in light of D7.²¹⁸

²¹⁵ Opponent’s written submissions at [96].
²¹⁶ Applicant’s written submissions at [8.28].
²¹⁷ Opponent’s written submissions at [109]; citing Specification at [47]-[48].
²¹⁸ Applicant’s written submissions at [8.29]-[8.30].

Consideration

The Opponent has not provided sufficient evidence to convince me that a person skilled in the art would be motivated to modify the disclosure of D7 such that retainers in the walls of the wear member hole are configured to secure the lock to the wear member. There is no evidence directed to why it would be obvious to modify the retainers, as identified by Dr DeWit, such they secure the lock rather than the toothed ring in D7.

D8: WO2013078101A1

D8 does not disclose “opposing walls each having retainers that are spaced apart from one another” nor is there disclosure of retainers configured to secure the lock to the wear member in a release position wherein “the release position of the lock secured to the wear member corresponding to the retainers retaining the lock outward from the interior surface”.

The Opponent relied on their submissions for D1-D3 and D7. They reiterated that the opposed application admits that there is nothing inventive, unusual or otherwise significant about the number, construction or shape of the retainers.²¹⁹

The Applicant relied on their D1-D3 and D7 submissions.²²⁰ They also highlighted that neither expert has made any comments about modifying D8 or what difficulty there would be in doing so.²²¹ Lastly, the Applicant argued that the Opponent has not provided sufficient evidence to explain why a person skilled in the art would be motivated to modify the lock of D8 to add the missing features.²²²

Consideration

Firstly, the Opponent has not provided any evidence about why it would be obvious to modify the disclosure of D8 such that the retainers could be configured to secure a lock in a release position “corresponding to the retainers retaining the lock outward from the interior surface”. There was also no expert evidence directed to this. Therefore, the inventive step with regards to D8 fails.

The inventive step also fails for similar reasons applied against D1 and D3. D8 relates to a non- extendable/folding lock that pivots between a secure release and hold position via support 64. Therefore, it would not be obvious to add additional retainers in the upper wall of D8 to arrive at the claimed invention given the lock is designed to pivot and there would be no motivation to add an additional retainer.

Conclusion

Claims 1-8 are inventive in light of D8 and common general knowledge in the art.

²¹⁹ Opponent’s written submissions at [124].
²²⁰ Applicant’s written submissions at [8.31]-[8.32].
²²¹ Applicant’s written submissions at [8.33].
²²² Applicant’s written submissions at [8.34].

Conclusion and Costs

The opposition is successful. Claims 1-8 lack support as the description only discloses how to configure a wear member hole having spaced apart retainers on each opposing wall to secure an extendable or folding lock in the release and hold positions as claimed.

I will allow the applicant two (2) months from the date of this decision to propose suitable amendments.

The normal approach is that costs follow the event, and I see no reason to depart from this. I will award costs, according to Schedule 8, against the Applicant, ESCO Group LLC.

Stephanie Howard
Delegate of the Commissioner of Patents

ANNEXURE A – Claims as accepted

1. A wear member for earth working equipment comprising: an exterior surface subject to wearing by engagement with the ground, an interior surface for mounting the wear member on the earth working equipment, and a hole opening to the interior surface and the exterior surface, the hole including opposing walls each having retainers that are spaced apart from one another and configured to secure a lock to the wear member in two distinct positions including release and hold positions, the release position of the lock secured to the wear member corresponding to the retainers retaining the lock outward from the interior surface to facilitate installation of the wear member on the earth working equipment, and the hold position of the lock secured to the wear member corresponding to the retainers retaining the lock inward from the release position to secure the wear member to the earth working equipment.

2. The wear member of claim 1 wherein the retainers include an inner protrusion and an outer protrusion on each of the opposing walls, where the inner protrusion is closer to the interior surface than the outer protrusion.

3. The wear member of claim 2 wherein the inner protrusions are spaced from the interior surface.

4. The wear member of either one of claims 2 or 3 wherein the protrusions on one opposing wall are symmetrical with the protrusions on the other opposing wall.

5. The wear member of any one of claims 2 to 4 wherein each of the protrusions includes at least a portion that has a convex curved configuration for engaging complementary end walls of the lock.
6. The wear member of any one of the preceding claims including two spaced rearward extending legs that define a rearward opening cavity with the interior surface for receiving a portion of the earth working equipment.

7. The wear member of any one of the preceding claims wherein the retainers are arranged to secure the lock in the release and hold positions corresponding to generally parallel orientations of the lock in the hole.

8. The wear member of any one of claims 1 to 7 wherein the hold position is deeper in the hole than the release position.

[2025] APO 7

3rd March 2025