CQMS Pty Ltd v ESCO Group LLC
[2020] APO 53
•16 December 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2020] APO 53
Patent Application: 2014262221
Title:Wear part monitoring
Patent Applicant: ESCO Group LLC
Opponent:CQMS Pty Ltd
Delegate:Xavier Gisz
Decision Date: 16 December 2020
Hearing Date: 17 November 2020, in via Video Conference
Catchwords: PATENTS - section 59 - final determination - the amendment does not overcome the grounds of opposition of inventive step - further opportunity provided to amend – costs awarded
Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Rebecca Dutkowski and Shyama Jayaswal of MinterEllison and Wayne McMaster
Counsel for the opponent: Chris Burgess
Patent attorney for the opponent: Fraser Smith of Spruson & Ferguson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014262221
Title:Wear part monitoring
Patent Applicant: ESCO Group LLC
Date of Decision: 16 December 2020
DECISION
The amendments to the specification do not overcome the deficiencies identified in the first decision.
The Applicant has six weeks from the date of this decision to propose amendments to the claims.
I award costs according to Schedule 8 against ESCO Group LLC.
REASONS FOR DECISION
The matter relates to patent application 2014262221 (the Application) in the name of ESCO Group LLC (the Applicant). The Application is a convention application filed on 12 November 2014 with the basic document being US application number 61/908,458 with a priority date of 25 November 2013.
Following an opposition by CQMS Pty Ltd (the Opponent), I, as a delegate of the Commissioner of Patents, issued a decision CQMS Pty Ltd v ESCO Group LLC [2020] APO 5 on 29 January 2020 (the first decision). The first decision found that claims 1, 6, 7, 15 and 18 lacked an inventive step.
The Applicant was given the opportunity to file amendments to overcome the lack of inventive step finding. The Applicant filed amendments on 24 March 2020. Leave to amend was advertised on 14 May 2020. The amendments were advertised as allowed on 6 August 2020.
The Opponent advised on 11 August 2020 that they wanted to be heard in relation to the final determination of the matter. The hearing on the final determination took place on 17 November 2020 via video conference.
Applicable Law
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision. Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the previous decision and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification. That is, pre-existing deficiencies are excluded (Iluka Midwest Ltd v Technological Resources Pty Ltd, [2002] FCA 1233 at [34]).
The outstanding issues to be decided in this decision is one of inventive step. The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; [1981] HCA 12; 148 CLR 262 at 286 as follows:
“The test is whether the hypothetical addressee 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, whether they be the steps of the inventor or not.”
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; [2002] HCA 59; 212 CLR 411 at [51]- [53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
I also note Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 (1980) 144 CLR 253 at page 293:
"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."
The first hearing and decision
In the first decision I found that claims 1, 6, 7, 15 and 18 lacked an inventive step. The paragraphs of the decision finding these claims to lack an inventive step are reproduced below:
The first decision at paragraph 48:
“I consider that the use of wear members for the digging edge of an excavator bucket is common general knowledge. I am satisfied that a person skilled in the art would, as a matter of routine, in applying the disclosure of D14 to the present problem to include wear members for the digging edge of the excavator bucket. Consequently, claim 18 lacks an inventive step in light of D14 (JPH 07-042201A).”
The first decision at paragraph 54 and 55:
“I consider that a person skilled in the art would, as a matter of routine, modify D14 such that it used a programmable circuit in place of the non-programmable circuit, since this would be rudimentary (and arguably easier) device to achieve the desired result with the equipment available to an electronic engineer at the priority date.
Consequently, I consider claim 1 to lack an inventive step in light of D14 (JPH 07‑042201A).”
The first decision at paragraph 59:
“I am satisfied that operational efficiency would include characteristics such as level of fill. D14 discloses the sensors to measure the level of fill. Therefore claims 6 and 7 lack an inventive step in light of D14.”
The first decision at paragraph 67:
“D14 discloses an alert based on the information received. Claim 15 lacks an inventive step in light of D14.”
The amendments
The amendments made to the claim are reproduced below (with added words indicated with underline and deleted words indicated with strikethrough):
1.A monitoring system comprising an excavating bucket having walls defining a containment portion for gathering earthen materials, and a digging edge, at least one wear part secured to the digging edge, at least one electronic sensor secured to one of the walls, and a programmable logic device receiving information from the at least one electronic sensor and making a determination of at least one of presence, health, wear, impact,
fill, and performance of the bucket and/or the at least one wear part.2.A monitoring system in accordance with claim 1 wherein the programmable logic device receives information from the at least one electronic sensor to determine when the wear part has been worn to a state where the wear part should be replaced.
3.A monitoring system in accordance with claim 1 or 2 wherein the programmable logic device receives information from the at least one said electronic sensor to determine when the at least one wear part has been lost.
4.A monitoring system in accordance with claim 3 wherein the programmable logic device receives information from the at least one said electronic sensor to recognize special features on the wear part.
5.A monitoring system in accordance with any one of claims 1 to 4 wherein at least one said sensor is secured to the wear part and communicates with the programmable logic device so that information from the at least one electronic sensor secured to the bucket and the at least one electronic sensor secured to the wear part are used to make the determination.
6.A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one said electronic sensor to calculate an operational efficiency of the bucket and/or the at least one wear part.
7.A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one electronic sensor to determine the
alevel of fill in the bucket.8.A monitoring system in accordance with claim 7 wherein the programmable logic device receives information from the at least one electronic sensor and a database of fill profiles for the bucket to determine the level of fill in the bucket.
9.A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes one of a camera, a laser range finder, and an ultrasonic sensor.
10.A monitoring system in accordance with claim 9 including a vibration dampening device supporting and the at least one electronic sensor.
11.A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one said electronic sensor to determine a high impact event on the at least one wear part.
12.A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one electronic sensor to determine the cycle time of a digging cycle.
13.A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes one of a pressure sensor, a strain gauge, a load cell, and an accelerometer.
14.A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes an inclinometer and/or GPS device.
15.A monitoring system in accordance with any of the preceding claims wherein the programmable logic device generates an alert based on the information received from the at least one electronic sensor.
16.A monitoring system in accordance with any of the preceding claims wherein the programmable logic device receives information from a database to determine the type of wear part secured to the digging edge.
17.A monitoring system in accordance with any of the preceding claims wherein the programmable logic device receives information from a database with bucket and/or wear part geometry.
18.A bucket for use with excavating equipment, the bucket comprising:
a plurality of walls defining a containment portion for gathering earthen material;
a digging edge to contact the earthen material, the digging edge extending along one of the walls defining the containment portion;
at least one wear part secured to the digging edge; and
at least one electronic sensor mounted to one of the said walls of the bucket to monitor at least one of presence, health, wear, impact,
fill,and performance of the bucket and/or the wear part.19.A bucket in accordance with claim 18 wherein the electronic sensor is mounted so that it has a clear line of site to the digging edge.
20.A monitoring system in accordance with claim 18 or 19 wherein the at least one electronic sensor includes one of a camera, a laser range finder, and an ultrasonic sensor.
21.A monitoring system in accordance with any of claims 18 to 20 wherein the at least one electronic sensor includes one of a pressure sensor, a strain gauge, a load cell, and an accelerometer.
I will consider whether the amended claims overcome the issues raised in the first decision, and also whether new issues arise as a result of the amendments.
Consideration
Does the term “performance of the bucket” include fill level within its scope?
The Opponent states in the submissions at paragraphs 3 and 4:
“The proposed amendments seek to overcome the Decision by:
(a) deleting the word “fill” from claims 1 and 18; and
(b) amending the words “determine the level of fill in the bucket” in claim 7 to read “determine a level of fill in the bucket”.
The opponent (CQMS) contends that the amendments do not overcome the Decision, because the amended claims:
(a) The bucket fill level is one measure of “performance of the bucket”;
(b) consequently, the amended claims continue to include within their scope embodiments in which the bucket fill level is monitored and/or determined; and
(c) monitoring and/or determining the bucket fill level is obvious in light of D14, on the Delegate’s findings.”
The Opponent goes on to state at paragraphs 9 to 12:
“Proposed amended claim 1 reads (amendment shown in red; bold added for emphasis):
A monitoring system comprising an excavating bucket having walls defining a containment portion for gathering earthen materials, and a digging edge, at least one wear part secured to the digging edge, at least one electronic sensor secured to one of the walls, and a programmable logic device receiving information from the at least one electronic sensor and making a determination of at least one of presence, health, wear, impact,
fill, and performance of the bucket and/or the at least one wear partAs shown in bold, amended claim 1 continues to claim embodiments in which the programmable logic device receives information from the electronic sensor(s) and makes a determination about the “performance of the bucket”.
These embodiments are obvious on the Delegate’s findings, because determining the bucket fill level involves making a determination about the “performance of the bucket”.
(a) The performance of a bucket is dictated by its fill level.
(b) Thus, the Delegate held that the bucket fill level was a measure of both the “performance of the bucket” (at [110]) and its “operational efficiency” (at [114]).
(c) Consistently with this, the example that the specification gives of monitoring “performance of the bucket” is determining “how full the bucket is loaded during the digging cycle”.
(d) See in particular [50], which states (bold added):
“In addition to monitoring the status and health of the wear members on the bucket, the monitoring system may monitor the performance of the bucket or other wear members. For example, the monitoring system may determine how full the bucket is loaded during the digging cycle.”
In other words, deleting the word “fill” does not relevantly narrow the scope of claim 1. Systems like D14 that determine how full the bucket is loaded are systems that make determinations about the “performance of the bucket” (i.e. bucket fill levels). It follows that the proposed amendments to claim 1 do not overcome the Decision.”
The Applicant states in their submissions at paragraphs 9 and 10:
“For the reasons set out at paragraphs [57] and [64] of the Decision regarding claims 2 to 5 and 11, it would not be obvious to modify D14 so that it measured presence, health, wear or impact of the wear member and/or bucket.
In relation to performance, while performance can include as a measurable characteristic, the fill of a bucket, “performance” is properly understood as something measured over multiple measurements, not a single measurement. That is, performance of the bucket in terms of fill of the bucket in the context of the Patent Application means how the bucket performs in terms of fill of the bucket over more than one instance of fill.”
In the first decision I stated at paragraph 110:
“The specification teaches monitoring characteristics of the bucket (such as fill level) at paragraphs 50 to 52 which are considered measures of “performance of the bucket”. I consider this disclosure to provide sufficient information to provide a principle of general application for other possible measures of bucket performance.”
In the first decision I stated at paragraph 114 (italics in original):
“I agree with Mr Holland to the extent the operational efficiency of the bucket or wear part would include level of fill. I disagree with Mr Holland to the extent that the operational efficiency defined in claim 6 relates to factors such as fuel use, since fuel use is not a characteristic of the bucket or wear part. I consider ‘operational efficiency’ in the context of the claim to be a measurable characteristic of the bucket or wear part that is compared to an optimal value; the operational efficiency being an evaluation of how close the characteristic is to the optimum. Overall, I am satisfied that a person skilled in the art would understand what ‘operational efficiency’ is in the context of claim 6, and that the specification provides sufficient information to satisfy the principle of general application.”
It is clear from these paragraphs in the first decision that I interpreted “performance of the bucket” to include fill level. I note that the construction of the claims is not open to re‑consideration in the final determination.
I consider that:
(i)“performance of the bucket” is a phrase with a broad scope including, amongst other things, the presence, health, wear, impact and fill of the bucket within its scope;
(ii)that is, the presence of the words “presence”, “health”, “wear”, “impact” and “fill” in the claims is redundant in light of the phrase “performance of the bucket”;
(iii)therefore, the deletion of “fill” does not narrow the scope of the claim in any way
In summary, the deletion of the word ‘fill’ from claims 1 and 18 does not change the scope of the claim, since the words “performance of the bucket” includes within its scope measuring the fill of the bucket. Consequently, the amendments do not overcome the lack of inventive step found in the first decision.
Should the Applicant be given a further opportunity to amend?
I have found that the amendments do not overcome the inventive step deficiencies identified in the earlier decision. This raises the question of whether the Applicant should be given a further opportunity to amend.
The Applicant has made amendments which are predicated on an interpretation of words of the claims which I have found is inconsistent with the interpretation given in the first decision. However, it is plausible that the Applicant believed that their interpretation of words of the claims was consistent with the first decision. Overall, I am satisfied that Applicant has made a genuine attempt to overcome the deficiencies identified in the first decision. I further note that there are clearly amendments that could be made which would overcome the inventive step deficiencies identified in the first decision.
Conclusion
I consider that the Applicant has made a genuine attempt to overcome the deficiencies identified in the earlier decision and these deficiencies can be overcome with suitable amendments. Therefore, I will allow the Applicant a further six weeks from the date of this decision in which to file further amendments to the claims.
Costs
Costs normally the follow the event and I see insufficient reason to depart from that practice in the present case. Costs in accordance with Schedule 8 are awarded against the Applicant, ESCO Group LLC.
Xavier Gisz
Delegate of the Commissioner of Patents
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