CQMS Pty Ltd v ESCO Group LLC

[2020] APO 24

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2020] APO 24

Patent Application:             2014240371

Title:Wear assembly removal and installation

Patent Applicant:                ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date:  22 May 2020

Hearing Date:  25 February 2020, in Canberra

Catchwords:  PATENTS - section 59 opposition to grant of a patent – grounds of novelty and inventive step – Claims 1 and 21 lack novelty – Claims 1, 4-12, 16, 17, 20-23, 25-30, 32 and 33 lack an inventive step – costs awarded

Representation:                   Counsel for the applicant: Tom Cordiner

Patent attorney for the applicant: Mr Wayne McMaster and Ms Rebecca Dutkowski of MinterEllison

Counsel for the opponent: Chris Burgess

Patent attorney for the opponent: David Müller-Wiesner of Spruson & Ferguson

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2014240371

Title:Wear assembly removal and installation

Patent Applicant:                ESCO Group LLC

Date of Decision:                22 May 2020

DECISION

Claims 1 and 21 lack novelty in light of Derycke. Claims 1 and 21 lack an inventive step in light of Derycke (US 2013/0045055).

Claims 1, 4-12, 16, 17, 20-23, 25-30, 32 and 33 lack an inventive step in light of Dietens (EP 1 522 636).

The Applicant is given 2 months from the date of this decision to propose suitable amendments to overcome this finding of lack of novelty and inventive step.

Costs are awarded against the Applicant.

REASONS FOR DECISION

Background

1. The matter relates to patent application 2014240371 (The Application) in the name of ESCO Group LLC (the Applicant). The Application was filed on 9 October 2014 as a convention application from US basic document number 61/893,833 and has an earliest priority date of 21 October 2013.

2. The Application was advertised as accepted on 12 July 2018. A notice of opposition was filed by CQMS Pty Ltd on 11 October 2018.

3. A Statement of Grounds and Particulars was filed on 11 January 2019. Evidence in support was completed on 8 April 2019. Evidence in answer was completed on 5 July 2019. Evidence in reply was completed on 30 August 2019. The Opponent proposed amendments to the SGP on 11 February 2020.

4. The hearing was held in Canberra on 25 February 2020.

   Evidence

5. The evidence comprises:

   Evidence in Support:

   ·A declaration by Quintin Nienaber dated 5 April 2019 and exhibits QN-1 to QN-7 and QN-T1 to QN-T4

   Evidence in Answer:

   ·A declaration by Terry Briscoe dated 1 July 2019 and exhibits TLB-1 to TLB-3

   ·A declaration by James Webster dated 3 July 2019 and exhibits JW-1 to JW-3

   Evidence in Reply:

   ·A declaration by David Müller-Wiesner dated 29 August 2019 and exhibit DMW‑1

   Amendments to the SGP

6. Amendments to the SGP were filed on 11 February 2020.

7. The purpose of the amendments was to replace US 9,429,016 Derycke et al (which was published after the priority date) with its preceding document – patent application US 2013/0045055 Derycke (published before the priority date).

8. On 12 February 2020 a Delegate of the Commissioner sent a letter stating:

   “An application to amend the Statement of Grounds and Particulars has been filed on 11 February 2020. A copy is attached for your reference.

   The applicant is invited to make comments on the allowability of the amendment as part of their submissions due 18 February 2020.

   If no comments are received the amendment will be allowed.”

9. The Applicant did not make any comments in the written submissions and stated at the hearing that they had no objection to the amendments being allowed.

10. I allow the amendments to the Statement of Grounds and Particulars.

    APPLICABLE LAW

11. The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) as the opposed application was filed after 15 April 2013. As a consequence the Commissioner may, under section 60(3A), refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.

    Grounds of Opposition

12. The Statement of Grounds and Particulars contains the following grounds: novelty, inventive step, utility, clarity, and support.

13. The Opponent confined the submissions to the hearing to the grounds of novelty and inventive step.

    The invention

14. The invention is a machine for removal and installation of wear members used in earth working equipment. The machine is a robotic device comprising an auxiliary tool to hold the wear member and a manipulator. The auxiliary tool and manipulator cooperate to: a) release a retainer and remove the wear member, and b) install a second wear member and secure a second retainer. The robotic device is controlled by a controller. The robotic device is mounted on a mobile base to move the robotic device from a first location to the earth working equipment.

15. A preferred embodiment of the invention is shown in figure 7:

16. The Application contains 33 claims; one independent claim and 32 dependent claims. The independent claim is reproduced below:

    1. A tool for replacing a wear member secured to earth working equipment operating in a mine, the earth working equipment including a base, a wear member mounted on the base, and a retainer to hold the wear member to the base, the tool comprising:

    at least one auxiliary tool to hold the wear member mounted on the earth working equipment, and to release the retainer;

    a single manipulator movably supporting the at least one auxiliary tool, wherein

    the manipulator and the at least one auxiliary tool cooperate to release the retainer and remove the wear member from the base of the earth working equipment, and cooperate to install a second wear member on the base and secure a second retainer to hold the second wear member to the base;

    a controller to direct the movements of the at least one auxiliary tool and the manipulator; and

    a mobile base to support and move the at least one auxiliary tool and the manipulator from a first location to the earth working equipment with the wear member.

17. The Opponent has split Claim 1 into integers. These integers of claim 1 will be referred to throughout this decision:

    1.1 A tool for replacing a wear member secured to earth working equipment operating in a mine

    1.2 the earth working equipment including a base, a wear member mounted on the base, and a retainer to hold the wear member to the base, the tool comprising:

    1.3 at least one auxiliary tool to hold the wear member mounted on the earth working equipment, and to release the retainer

    1.4 a single manipulator movably supporting the at least one auxiliary tool

    1.5 wherein the manipulator and the at least one auxiliary tool cooperate to release the retainer and remove the wear member from the base of the earth working equipment

    1.6 and cooperate to install a second wear member on the base and secure a second retainer to hold the second wear member to the base

    1.7 a controller to direct the movements of the at least one auxiliary tool and the manipulator

    1.8 a mobile base to support and move the at least one auxiliary tool and the manipulator from a first location to the earth moving equipment with the wear member

    Construction legal principles

18. The principles of construction of specifications are well established. The Full Court in Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178 laid out the principles succinctly:

    "When determining the nature and extent of the monopoly claimed, the specification must be read as a whole. But as a whole it is made up of several parts which have different functions. The claims mark out the legal limits of the monopoly granted. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document. It is legitimate, however, to refer to the rest of the specification to explain the background of the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. See Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331 at [73]- [75] (Hely J).

    Other more specific principles of construction collected in Flexible Steel at [81] are:

    • a specification should be given a purposive construction rather than a purely literal one;

    • the hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date;

    • the words used in a specification are to be given the meaning the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification;

    • as a general rule, the terms of the specification should be accorded their ordinary English meaning;

    • evidence can be given by experts on the meaning those skilled in the art would give to technical or scientific terms and phrases, and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning;

    • however, the construction of the specification is for the court, not for the expert. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way."

    Claim Construction

    Operating in a mine

19. The Applicant states at 6.7:

    “The Applicant submits that "operating in a mine" means operating on a site where the objective is to extract a valuable ore (such as gold, coal or copper) from the soil, consistent with the interpretation adopted by Mr Briscoe.”

20. Mr Briscoe states at 10.2(a):

    “Claim 1 describes a tool for replacing a wear member as follows:

    (a)It is a tool for removing wear members secured to earth moving equipment which is operating in a mine. I consider that a "mine" is a location in which an ore (such as gold, coal or copper) is being extracted from the soil.”

21. The Opponent states at paragraphs 33 and 34:

    “Claim 1 uses the words “operating in a mine”. However, claim 1 does not characterise the type of mine.

    Consequently, claim 1 includes within its scope tools that are suitable for wear part replacement on earth working equipment “operating in [any kind of] mine”. This includes any sort of open cut, underground (tunnelled) or underwater mine.”

22. The description states at paragraph 112:

    “The present invention pertains to a tool and a process for removing and installing various kinds of wear parts for earth working equipment including, for example, excavating equipment and ground conveying equipment. Excavating equipment is intended as a general term to refer to any of a variety of excavating machines used in mining, construction and other activities, and which, for example, include dragline machines, cable shovels, face shovels, hydraulic excavators, and dredge cutters. Excavating equipment also refers to the ground engaging components of these machines such as the bucket, blade, or the cutter head.”

23. The Applicant argued that although dredge cutters are mentioned in the description, dredging is not a type of mining and instead that dredging was merely removing submerged material without extracting any substance from the submerged material.

24. The Opponent noted that a publication called “The Edge” published by ESCO before the priority date states:

    “Dredging is used to mine underwater minerals, such as phosphate or unique sands. It is also being deployed with greater frequency for remedial purposes, to dredge and safely remove contaminated underwater materials.”

25. In light of this disclosure in “The Edge” publication I am satisfied that a dredging tool can be considered “earth working equipment operating in a mine”.

    Mobile base

26. The Applicant states at 6.14:

    “The Opposed Application refers to earth working equipment operating in remote locations, and the difficulties in getting new parts to the remote locations for installation. The Opposed Application seeks to address these difficulties by providing a "mobile base" that is movable "from a first location to the earth working equipment". The usefulness of the mobile base is explained by Mr Briscoe at paragraph 4.4 above [paragraph 10.2(f)].”

27. Mr Briscoe states at paragraph 10.2(f):

    “[The tool] is mounted on a mobile base to support the tool and move it from one location to another. This is a useful feature as it means the tool can be transported from the location of one earth working equipment to another, rather than the earth working equipment having to move to a central location where the tool is located. Large earth working equipment is only able to move very slowly (about 4miles/hr) and can only climb grades of about 4%. Moving the tool instead would save time and money, as an extended periods of downtime of the earth working equipment result in decreased production.”

28. The Opponent states:

    “The claim word “mobile” simply requires the support base to be movable.

    The claim words “a first location” mean any location that is not the location where the auxiliary tool and manipulator must be to perform the wear part replacement. Claim 1 places no limit on how close or far apart that first location may be. Any mobility from a location that is not where the auxiliary tool and manipulator must be present to perform the wear part replacement falls within the claim.”

29. During the hearing, the Applicant further explained their position on the construction of the term ‘mobile base’. The Applicant argued that the mobile base must move the robotic arm to the earth working equipment. The Applicant explained that if the robotic arm could reach part of the earth working equipment, then any movement is not to the earth working equipment. The Applicant argued that the use of the words ‘to’ and ‘from’ in the claims implies that the first location is away or remote from the earth working equipment.

30. The Opponent argued that since the ‘first location’ is not defined in the claims it does not mean the first location is necessarily remote or away from the earth working equipment.

31. I consider that the Applicant and Opponent’s arguments to be equally plausible and thus construing the claim on the basis of the words in the claim alone is inconclusive.

    Construing the term ‘mobile base’ in light of the specification

32. My attempt to construe the claim on the basis of the words in the claim alone is inconclusive. It is appropriate to refer to the specification as a whole where there is ambiguity in the construction of a term in the claims.

33. In the hearing, I noted paragraph 123 (with my emphasis in underline):

    “[00123] In an alternative embodiment (Figure 11), a service station 53 is equipped with a power source 35, at least one controller 31 in the form of a CPU with programmable logic, at least one manipulator 29, storage stalls 39, and auxiliary tools 41 to be used in conjunction with the manipulator 29. The service station 53 is similar in many ways to service vehicle 27 with many of the same benefits and purposes. The following discussion focuses on the differences and does not repeat all the similarities that apply to service station 53. A mining excavator 1 is brought to the service station 53 and located close enough to the manipulator 29 so that the manipulator 29 is able to reach the wear members 15 on the bucket 3. As with the service vehicle 27, the service station 53 may be equipped with rails (not shown) for the manipulator 29 to slide back and forth on. The manipulator 29 and auxiliary tools 41 in the service station 53 may be powered from a number of power sources 35. For example, the manipulator 29 and auxiliary tools 41 may be powered via a generator, batteries, or powered by an existing power system. Service station 53 is preferably located in a convenient location for the earth working tools to approach and for operators to access. Nevertheless, the service station can be located in the field and can include a mob[i]le base such as a trailer to be moved to different locations.”

34. I asked the parties whether the embodiment in paragraph 123 where the manipulator slides on rails in a ‘service station’ falls within the scope of the claims. The Applicant argued that this embodiment did not fall within the scope of the claims, whereas the Opponent argued that this embodiment did fall within the scope of the claims.

35. The broadest reasonable interpretation of the claim should generally include described embodiments of the invention if those embodiments are not clearly excluded by the words of the claim.

36. Overall, I am satisfied that the term ‘mobile base’ simply requires that the base is movable with respect to the earth working equipment; the distance the ‘mobile base’ travels is not defined in the claims.

    Clarity – Legal principles

37. Subsection 40(3) requires that the claims must be clear. A claim will lack clarity if a third party would be unable to ascertain whether an act would fall within the scope of the claim. Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59.

    Clarity

38. The Opponent states in their submissions:

    “Pending considering of how the Applicant argues its case, the opponent reserves its right to press lack of clarity/lack of support objections at the hearing.”

39. In the Statement of Grounds and Particulars the Opponent states:

    “Claim 18 recites ‘a tool in accordance with 17’. It is unclear to the skilled addressee whether ‘17’ is intended to indicate a single claim dependence or multiple claim dependence.

    Claim 20 recites ‘wherein the at least one auxiliary tool and the manipulator are operable to remove the retainer from the wear member to release the retainer’. It is unclear, having regard to the specification as a whole, what the difference is between ‘remove the retainer’ and ‘release the retainer’. It is also unclear how ‘remov[ing] the retainer’ leads to ‘releas[ing] the retainer’. The terms ‘remove’ and ‘release’ are used interchangeably throughout the specification. It is therefore impossible for the skilled addressee to determine the scope of the claim.

    Claim 33 recites ‘wherein the controller operates at least partially manually by a remote user.’ Firstly, it is unclear as to how a controller operates manually, unless the term ‘controller’ refers to a user. Secondly, claim 33 depends from any one of claims 1 to 29, and 31. However, claim 31 recites ‘wherein the controller operates on programmable logic to fully automate the use of the tool.’ It is unclear how the controller can both operate to fully automate the use of the tool, and operate at least partially manually by a remote user.”

40. During the hearing the Applicant conceded that these claims contained minor errors, with the corrections indicated in underline and strikethrough:

    Claim 18.
    A tool in accordance with claim 17 wherein the at least one auxiliary tool includes a third arm that contacts a surface of the wear member generally perpendicular to the first and second arms.

    Claim 20

    A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool and the manipulator are operable to remove the retainer from the wear member to release the retainer wear member.

    Claim 33
    A tool in accordance with any one of claims 1-29 and 31 wherein the controller
    operates at least partially manually by a remote user.

41. I consider that these errors are obvious mistakes. That is, both the error and the correction are obvious to the reader, thus these errors do not make the claims so ambiguous that the scope of the claims cannot be understood. The claims do not lack clarity under s 40(3).

42. The applicant may make these corrections (but is not required) when amending to overcome the grounds of novelty and inventive step.

    Novelty legal principles

1. A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 137 CLR 228 at 235:

   “The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”

2. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]).

   Novelty

3. The Opponent asserts the independent claim lacks novelty in light of: EP 1 522 636 ‘Dietens’ and US 2013/0045055 ‘Derycke’.

   US 2013/0045055 Derycke

4. The invention disclosed in Derycke is a method for replacing a disk cutter attached to the head of a tunnel boring machine.

5. The disk cutter is mounted in a casing attached to the cutting head of a tunnel boring machine. The disk cutter is attached to an element for locking into a housing. The method of replacing the disk cutter involves the first steps of removing a worn disk cutter from housing by: clamping a disk cutter handling device onto the housing; taking hold of the disk cutter, unlocking, extracting the disk cutter and, unclamping the device. The second step is fitting a replacement disk cutter in the reverse order of the first step.

6. Both parties accept that Derycke discloses the features 1.2-1.7. The only features in dispute are 1.1 and 1.8. That is, whether Derycke discloses: a) earth working equipment operating in a mine, and b) a mobile base.

   Is a tunnel boring machine ‘earth working equipment operating in a mine’?

7. Mr Nienaber states in QN-T4:

   “Companies and engineers working in tunnel boring and construction frequently visit the same conferences as I do and technology is shared between the technology areas, though tunnel boring is primarily used in infrastructure construction. However, I am aware of tunnel boring machines having been used in mines.”

8. Mr Briscoe states at paragraph 18.4:

   “Also at item 1.1 of QN-T4, Mr Nienaber states that he "is aware of tunnel boring machines having been used in mines". During my 43 years of work in the mining industry I have never seen or heard of a tunnel boring machine being used in a mine or in mining applications.”

9. I infer that using boring machines in mines before the priority date was rare, with only one of the two experts aware of this occurring. However, the presence rather than the frequency of occurrence is relevant in determining if a feature falls within the scope of the claim. I am satisfied by Mr Nienaber’s evidence that a tunnel boring machine can be considered ‘earth working equipment operating in a mine’.

   Does Derycke disclose a mobile base?

10. Mr Nienaber states in QN-T4:

    “I refer to col. 4 II. 18-21, and col. 9 II. 16-18 of document D [Derycke], which disclose that the handling device is supported by a robot or a pulley block to move the handling device in translation to "deliver" the handling device.

    I understand the term "deliver" to mean, to arrive at the intended destination where a job is to be performed. Usually this would be a location where the earth working equipment is located.”

11. Mr Briscoe states at 18.5:

    “At item 1.8 of QN-T 4, Mr Nienaber appears to conclude that the robot or a pulley block to move the handling device is a "mobile base". I consider that the disclosure in this document of the handling device being "delivered" is not sufficient for me to conclude that it is a mobile base in the manner of the Opposed Application.”

12. Derycke states at paragraph 74:

    “The delivery of the handling device can be carried out in a semi-automated manner by means of a pulley block, or in a completely automated manner, through the use of a handling robot.”

13. Derycke states at paragraphs 166 to 171:

    “In the example illustrated in FIG. 9 (as well as in FIG. 10A, where it is shown in perspective with the roller cutter), the case 31 of the handling device is surrounded by an arch 38 which is designed to be hooked to a pulley block (not shown).

    This corresponds to a semi-automated embodiment, which can be implemented for example in degraded mode, during maintenance operations.

    As for FIG. 10B, it illustrates an embodiment of the handling device 3 designed to be mounted on the terminal part of a robotic handling effector, which is preferentially used for the operation of the tunnel boring machine.

    Only a forward plate 42 of the handling robot is shown in this figure, which has a recess for receiving the handling device.

    Said robot is particularly moved in translation along the axis of the housing, and has means for controlling the handling device.

    The handling device 3 is connected with the plate 42 by a hexapod type jack assembly 41 which makes it possible to move the device 3 for the purpose of locking it on the housing, then withdrawing it.”

14. I am satisfied that the disclosed ‘handling robot’ or ‘pulley block’ is a mobile base.

15. Claim 1 lacks novelty in light of Derycke.

    Derycke - Dependent claims

16. The Opponent only asserted that claims 4, 17 and 21 lacked novelty in light of Derycke (US 2013/0045055), so only these claims are considered below.

    Claim 4

17. Claim 4:

    4. A tool in accordance with any one of the preceding claims including a database to provide the controller with information about at least one of i) the earth working equipment, ii) the wear members on the earth working equipment, and iii) the wear members that need replacement.

18. The Applicant states in their submissions:

    “In relation to claim 4, the Opponent states that this claim lacks novelty "for the reasons outlined by Mr Nienaber at Ex QN-T4". However, Exhibit QN-T4 does not refer to claim 4, and Mr Nienaber does not otherwise make any comments as to how claim 4 lacks novelty in light of Derycke. Derycke does not disclose all the features of claim 4.”

19. I agree there is insufficient basis to support the Opponent’s contention that claim 4 lacks novelty in light of Derycke. Claim 4 is novel in light of Derycke.

    Claim 17

20. Claim 17:

    17. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool includes first and second arms to contact opposite sides of the wear member.

21. In relation to claim 17 Mr Nienaber states in QN-T4:

    “I refer to Figs. 10A and 10B of document D, which show arms 38 attaching on either side of the wear member to grip and support the wear member. In my view, these figures disclose first and second arms contacting opposite sides of the wear member.”

22. Item 38 is described at paragraph 166:

    “In the example illustrated in FIG. 9 (as well as in FIG. 10A, where it is shown in perspective with the roller cutter), the case 31 of the handling device is surrounded by an arch 38 which is designed to be hooked to a pulley block (not shown).”

23. Figure 10A:

24. The arch 38 does not directly contact the wear member.

25. Claim 17 is novel in light of Derycke.

    Claim 21

26. Claim 21:

    21. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool and the manipulator are operable to unscrew at least a portion of the retainer to release the retainer.

27. Mr Nienaber states:

    “I refer to col. 6 II. 7-9 [paragraph 110] of document D [Derycke], which refers to unscrewing of the bayonet, or retainer, 4 to unlock or release the retainer. In my view this is a disclosure of the auxiliary tool, being the actuating member, being able to unscrew at least a portion of the retainer.”

28. Paragraph 110 of Derycke states:

    “With reference to FIG. 1D, the screws 5 which hold the bayonet 4 under load against the crossmember 6 are then unscrewed, so as to allow rotation of the bayonet.”

29. Paragraph 117 of Derycke states:

    “In the case illustrated in FIG. 1F, the screwdriver heads of the handling device tighten the screws 5 to the desired torque.”

30. Paragraph 158 of Derycke states:

    “These means include screwdriving heads 32 connected to screwdriver bodies 37 mounted in the actuating member 36 and designed to tighten or loosen the roller cutter preloading screws 5.”

31. Figure 9 shows the screwdriver heads 32:

32. I am satisfied that screwdriver heads (32) unscrew a portion of the retainer to release the retainer.

33. Claim 21 lacks novelty in light of Derycke (US 2013/0045055).

    EP 1 522 636 ‘Dietens’

34. The invention of Dietens is a robotic system for removing and replacing worn teeth from a dredger cutterhead.

35. When the dredger cutterhead needs servicing, the dredger cutter head is hoisted up by a pulley. This is shown in figure 1:

36. Once the cutterhead has been raised, there are two robotic arms; one for removing the worn teeth on the left hand side of figure 2, another for installing new teeth on the right hand side of figure 2:

37. The machine being serviced by the robots in Dietens is a dredging cutterhead. I have found in the construction of terms that a dredging cutterhead falls within the scope of the term ‘earth working equipment operating in a mine’.

38. Each robotic arm can move forward and backward on a table to allow the robotic arm access to different parts of the cutterhead. I have found in the construction of terms that a robotic arm moving on a mobile base falls within the scope of the words ‘move…from a first location to the earth working equipment’

39. The claims define a ‘single manipulator’ that removes worn wear members and installs new wear members. The preferred embodiment of Dietens discloses two robotic arms to perform these tasks.

40. The Opponent notes that paragraph 7 of Dietens states:

    “The present invention provides a dredger cuttertooth manipulator comprising at least one robotic handler, the manipulator comprising means for:

    1. removing a tooth from a dredger cutterhead; and
    2. replacing the removed tooth with a new tooth.”

41. At paragraph 9 Dietens states:

    “Preferably the manipulator comprises two robotic tooth handlers. The first removes worn teeth and the second fits new teeth to replace the worn teeth.”

42. The Opponent argues that, although the preferred embodiment has two robotic arms, the disclosure also includes a single robotic arm. The Applicant argued that Dietens does not provide an enabling disclosure of a single robotic arm.

43. The two robotic arms in Dietens perform different functions; the robotic arm used to secure the wear member can differ from the robotic arm used to remove the wear member. For example, Dietens states at paragraph 37:

    “Depending upon the form of connection between the tooth 48 and the spigot 12, the hand or hands of the cuttertooth manipulator, therefore, comprises a hand for gripping the tooth and either a pin driver for fitting/extracting the spigot pin, or a means for welding 35 or disconnecting the weld, or a means for gluing/disconnecting the glue between the tooth and the spigot, such as a welder/weld cutter or a gluing means and glue solvent dispensing means. If the tooth, however, has glue pre-applied to the aperture, such as is the case with Esco spherilok (RTM) teeth, then the gluing means (or a glue applier) will not be required.”

44. Other differences are discussed at paragraphs 55 and 58:

    “These arm sections and axles [on the second robotic arm] are generally the same as or similar to the first robotic tooth handler 64. However, the hand on the second robotic tooth handler 98, although generally similar in design, is for positioning a new tooth 48 onto the spigots 12 that have had a worn teeth 10 removed therefrom by the first robotic tooth handler 64.”

    “A significant difference between the second robotic tooth handler 98 and the first robotic tooth handler 64 is that instead of a waste bin 60, an array of new teeth 48 is provided. The array of new teeth 48 are positioned 5 on tooth benches 106 that extend parallel to the axis of the cutterhead 38. Three such tooth benches 106 are provided, each provided at a different height. This staggered effect enables the hand of the second robotic tooth handler 98 to grasp teeth 48 from the different 10 benches 106 more easily since the teeth 48 on other benches 106 will not interfere with the movement of the handler 98.”

45. I do not consider the mention of “at least one robotic handler” constitutes an enabling disclosure of one robotic arm that both removes wear members and installs wear members.

46. Claim 1 is novel in light of Dietens.

    Conclusion of novelty of claims

47. Claims 1 and 21 lack novelty in light of Derycke (US 2013/0045055).

    Inventive step legal principles

48. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:

    For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

49. Subsection (3) prescribes the information that may be considered as:

    The information for the purposes of subsection (2) is:
    (a) any single piece of prior art information; or
    (b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

50. Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available and information made publicly available through doing an act. Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 Aickin J stated:

    "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."

    Inventive step

51. The Opponent argued that the claims lacked an inventive step in light of: Dietens, Derycke, a combination of Dietens and Zrostlik, Demmler, and common general knowledge alone.

52. I have already found claims 1 and 21 lack novelty in light of Derycke, so it follows that these claims also lacks an inventive step in light of Derycke.

53. I will consider inventive step in light of Dietens, Demmler, and common general knowledge alone below. Consideration of the inventive step of the combination of Dietens and Zrostlik is most conveniently considered further in decision together with the consideration of dependent claims 2 and 3.

    Common general knowledge alone

54. The Opponent states:

    “Alternatively to the above submissions, claim 1 is also obvious in light of the CGK alone.

    More particularly, claim 1 merely assembles four “functionally-described components” i.e. (1) the “single manipulator”; (2) the “auxiliary tool”; (3) the “controller” and (4) the “mobile base”. Each functionally described component is selected to “fulfil well-known and well-understood processing steps” i.e. unlocking a worn wear member; separating and removing the worn wear member; replacing the worn member with a new wear member; and transporting a tool to the location where it is used: cf Garford First Instance (2013) 100 IPR 19 per Yates J at [275].

    Claim 1 does not define the features of any of these components in a meaningful way. Rather, the claim is pitched at the level of a mere idea or concept: use (any kind) of computer controller, programmed in (any kind) of way, to direct (any kind) of auxiliary tool, supported by (any kind) of single manipulator, to replace a worn tooth, the manipulator and auxiliary tool being transported to the necessary location using (any kind) of mobile base.

    Similarly to Garford First Instance at [275], there is no invention in merely specifying (as claim 1 does) the presence of a controller, a single manipulator, an auxiliary tool and a mobile base, and then functionally-defining those components solely by reference to the CGK steps that must be performed. Such a claim is, in effect, a “wish list” of undefined components to perform well-known and well understood steps (Garford First Instance at [299]).

    The obviousness of the claim is reinforced by considering that the wish list can be implemented using entirely commercial, off-the-shelf parts: Garford First Instance at [259].”

55. The Applicant states:

    “In any event, the invention the subject of the claims of the Opposed Application is also different to the one in Garford for the following reasons:

    (a)   As was upheld by the Full Court on appeal in that case, it is appropriate to apply a problem and solution analysis when determining whether the claims are obvious. Unlike in Garford, the Opponent has not provided any evidence that the skilled addressee, when faced with the problem, would arrive at the precise invention by routine steps, let alone with any expectation of success.

    (b)   The Opposed Application describes a new and specific means of conducting wear member replacement with a mobile robotic manipulator handler. It is not common general knowledge that a mobile robotic handler can be used to do this. It is also not implicit or evident to those skilled in the art that such an apparatus must be used to do this. The use of a mobile robotic handling robot was not within the ordinary perception and competence of the person skilled in the art seeking to replace wear members on earth working equipment.

    (c)   Each of the integers described in Garford merely identified “needs” for an apparatus feature to carry out the very function that the apparatus was to perform. In stark contrast, the Opposed Application describes an apparatus which can install and remove wear members by a specific means, for example describing how the auxiliary tool and manipulator cooperate to conduct the desired function.

    (d)   The invention described in the Opposed Application does more than carry out a sequence of ordinary and readily-perceived processing steps. It solves the problem faced in a new and inventive way, including by reducing harm to operators by use of a robot, and being mobile.

1. Although the invention is essentially a combination of four known elements (a robotic arm, a tool to hold the wear member, a tool to remove and install a wear member, a mobile base), this does not necessarily imply that the invention is obvious. At some level, all inventions are a combination of known elements. The question is whether, without the benefit of hindsight, it was a matter of routine to: a) select those particular elements and b) combine those elements in a particular way.

2. In this case, the evidence does not support the contention that the claimed invention would be obvious to a person skilled in the art in light of the common general knowledge alone. I am not satisfied that the person skilled in the art would, as a matter of routine, have combined those elements as claimed.

   Demmler (DE 29902127U1)

3. Demmler discloses a robot for replacing worn drill bits on milling machine. Figure 2 best illustrates the robot in Demmler:

4. The translation of the description states at paragraph 59:

   “The robot arm 21 is fixedly connected to the floor via the base 22 and is rotatably mounted about the vertical axis of rotation 27.”

5. Demmler does not disclose the robot to be replacing wear parts on a mining tool. It also does not disclose the robot to be on a mobile base.

6. I am not satisfied that a person skilled in the art would, as a matter of routine, modify the invention in Demmler such that it would fall within the scope of the claims. The claimed invention is inventive in light of Demmler.

   Dietens (EP 1 522 636)

7. I have found that the claimed invention is novel in light of Dietens. Dietens does not provide an enabling disclosure of a single robotic arm to remove and install the wear members.

8. Mr Nienaber states in QN-T2:

   “The system shown in document B [Dietens] uses two robots, which I understand would be preferably in dredging operations as it could prevent double-handling and improve efficiency. I see no reason why a single robotic tooth handler could not be used. For example, one robotic tooth handler could be equipped with two hands and pin drivers, as disclosed at [0037], one set for removal and one for replacement.”

9. The specification suggests a single robotic arm, but does not provide an enabling disclosure of the single robotic arm. Mr Nienaber explains how modifications could be made to Dietens to enable a single robotic arm embodiment.

10. Although Mr Nienaber is commenting with the benefit of hindsight, this does not significantly diminish the value of his evidence. Dietens already discloses the use of a single robotic arm; Mr Nienaber only provides his expertise to enable that disclosure. I infer from Mr Nienaber’s evidence that enabling the single robotic arm in light of Dietens would be a matter of routine steps.

11. I am satisfied that a person skilled in the art would, as a matter of routine, modify Dietens such that it used only a single robotic arm. Claim 1 lacks an inventive step in light of Dietens.

    Dependent claims – Dietens

    Claims 2 and 3

12. Claims 2 and 3:

    2. A tool in accordance with claim 1 wherein the mobile base is a service vehicle drivable to a desired location for removing the wear member from the earth working equipment.

    3. A tool in accordance with claim 1 wherein the mobile base is a wheeled or tracked service station movable to a desired location for removing the wear member from the earth working equipment.

13. Claim 2 defines that the mobile base is a service vehicle; Claim 3 defines that the mobile base is a wheeled or tracked service station.

14. The question is whether a person skilled in the art would, as a matter of routine, modify Dietens such that the robotic arm was installed onto a vehicle that can travel to the earth working equipment.

15. The Opponent argues at paragraph 84 of the submissions:

    “…[T]he skilled addressee would, as a matter of routine, select a mobile base (as claimed integer 1.8) when adapting the Dietens tool for use in land mining. This was a very obvious design choice in land mining activities, because:

    (a) In land mining, there is no cutterhead platform upon which the tool can be mounted. Instead, the tool must be movable to the location of the earth working equipment.

    (b) See further Briscoe at [16.4(c)]: “…in a [land] mine, the wear member replacement tool would generally need to be designed with a base which can allow it to traverse across a mine site to service equipment across various locations in the mine”.

    (c) The transport of wear parts and their replacement tools using service vehicles (a form of mobile base) was known in the CGK, before the priority date: see Nienaber at [23]; Briscoe at [14.7]. No invention is required to recognise such service vehicles can be used to transport the tool of Dietens when adapted for use in land mining.”

16. The Opponent states at paragraphs 113 and 114:

    “Claim 2 limits claim 1 by requiring the mobile base to be a “service vehicle”. However, it was CGK that service vehicles, such as trucks, were used in wear part replacement, including to deliver the tools required to replace worn wear parts to the replacement site – see [83] above; consider also the 1975 disclosure in Zrostlik. Claim 2 cannot confer inventiveness.

    Claim 3 limits claim 1 by requiring the mobile base to be a “wheeled or tracked service station”. As per the specification at [00116], this feature would be satisfied by a trailer towed by a service vehicle, or a carriage on rail tracks. Such alternative forms of mobile base plainly are obvious; the skilled person knows that trailers and carriages can be configured to provide a level, mobile base for transporting tools.”

17. The Applicant states at 8.24:

    “In looking to develop a tool that can travel from a location away from the earth working equipment to the earth working equipment, the person skilled in the art would not look to a fixed system that was not capable of travelling to different locations to access different wear members. Additionally, there is no evidence that the tool in Dietens would be capable of withstanding the conditions in a mine, which have an extremely wide range of temperatures, uneven ground, and involve significant amounts of exposure to dirt and dust. There is no evidence that a person skilled in the art would be motivated to adapt the system in Dietens to have a mobile base for use in a mine. Even if so motivated, there is no proper evidence as to what steps would be taken, that they would be done as a matter of routine and with a reasonable expectation of success.”

18. Mr Nienaber states in exhibit QN-T2:

    “Having now reviewed document B [EP 1 522 636 ‘Dietens’], I suspect that the type of robotic arm used in document B [EP 1 522 636 ‘Dietens’] is substantially similar, at least in weight, to that proposed in the Opposed Application. If any difference exists, the robotic arm of document B [EP 1 522 636 ‘Dietens’] might be lighter, as the wear members being replaced are slightly smaller and there is not as much fine bite to deal with in dredging applications compared to mining operations, as the fines are washed out by the surrounding water.

    In light of this document, I still struggle to understand as to how such a robot could be fitted to a dual cab utility vehicle (the allowable GVM sometimes being less than the total weight of the manipulator alone) while having sufficient weight capacity on the vehicle to transport wear member sets.”

19. Dietens discloses a robotic system which is fixed to the platform on a dredging ship. There is no evidence that a person skilled in the art (without the benefit of hindsight) would be motivated to modify Dietens such that is was installed on a land vehicle. Furthermore, Mr Nienaber notes the difficulty of fitting the robot of Dietens on a utility vehicle. I am not satisfied that a person skilled in the art would, as a matter of routine, modify the Dietens system such that it was mounted onto a) the back of a vehicle, or b) a wheeled or tracked service station. Claim 2 and 3 are inventive in light of Dietens.

    Combination of Dietens and Zrostlik (US 3,927,778)

20. The Opponent states:

    “Zrostlik discloses a tool for changing tires weighing several thousand pounds during land mining operations. A mobile base, in the form of a truck, supports and moves the tool from a first location to the location of e.g. an earth moving truck that requires a replacement tyre.

    The skilled person could reasonably be expected to have combined Zrostlik with Dietens, given that both documents refer to the use of large, power-assisted tools for replacing consumables on equipment used to move earth in mining. Zrostlik illustrates what is already obvious in light of the CGK i.e. the adaption of the Dietens tool for land mining would obviously involve mounting the tool on a mobile base, such as a truck.”

21. The Zrostlik document shows that robotic systems mounted on the back of a truck are known. However, this does not show how the difficulties in mounting the Dietens systems onto a land vehicle identified above can be overcome. I am not satisfied that a person skilled in the art would modify the Dietens system such that it was mounted on the back of a truck through only routine steps. Claims 2 and 3 are inventive in light of Dietens and Zrostlik.

    Claim 4

22. Claim 4:

    4. A tool in accordance with any one of the preceding claims including a database to provide the controller with information about at least one of i) the earth working equipment, ii) the wear members on the earth working equipment, and iii) the wear members that need replacement.

23. Mr Nienaber states at QN-T2:

    “I refer to [0052] of document B [Dietens] which discloses a computer control system. Any computer control system, in my understanding, requires a database to operate. Particular[ly] one for operating a robotic manipulator.”

24. The Applicant states at 7.20:

    “In relation to claim 4, Dietens does not clearly disclose a database, let alone a database to provide the controller with the information set out in claim 4.67 The Opponent relies on the evidence of Mr Nienaber, who simply asserts that a database is inherent because a computer control system is disclosed. This cannot amount to a clear disclosure of a database in the sense of that word in the Opposed Application. As Mr Briscoe explains (Briscoe at [16.8]):

    “There is no mention of a database in the document and I do not agree that the disclosure of any kind of computer control system necessarily discloses that there must be database containing the information about the earth moving equipment, wear members on the earth moving equipment, or wear members that need replacement.””

25. Paragraph 53 of Dietens states:

    “The software driving the hand positioning control system could also be programmed to recognise a worn tooth as opposed to an acceptable tooth and only replace those teeth which are worn. Image matching software can be used of this purpose, for example.”

26. The Opponent noted in the hearing that image matching software must necessarily have a database of wear members to match against. I am satisfied that Dietens inherently discloses a database.

27. Claim 4 lacks inventive step in light of Dietens.

    Claims 5, 6, 10

28. Claims 5, 6 and 10:

    5. A tool in accordance with any one of the preceding claims including an input device for receiving data regarding the earth working equipment to be used by the controller.

    6. A tool in accordance with claim 4 or 5 wherein the controller recodes the database details based on processes previously completed by the tool.

    10. A tool in accordance with claim 5 wherein the input device receives information from a wear part monitoring unit on the earth working equipment.

29. Claim 5, 6 and 10 relate to an input device for receiving data regarding the earth working equipment and processing that information.

30. Paragraph 53 of Dietens states:

    “The software driving the hand positioning control system could also be programmed to recognise a worn tooth as opposed to an acceptable tooth and only replace those teeth which are worn. Image matching software can be used of this purpose, for example.”

31. The Applicant states:

    “In relation to claims 5 and 10, Mr Nienaber relies on paragraph [0053] of Dietens, which describes that the robotic tooth handler may "recognise a worn tooth as opposed to an acceptable tooth and only replace those teeth which are worn" by use of "Image matching software", as well as [0057], which describes that "The optical control system may in addition be used to identify spigots without a tooth". Mr Nienaber points to at least one of these paragraphs as disclosing the following:

    (a) an input device for receiving data regarding the earth working equipment to be used by the controller (for the purposes of claim 5 of the Opposed Application); and

    (b) an input device which receives information from a wear part monitoring unit on the earth working equipment (for the purposes of claim 10 of the Opposed Application);

    However, there is no disclosure of an input device in Dietens. Mr Nienaber's interpretation of [0053] and [0057] involves him making assumptions about how the "image matching software" and "optical control system" operate. Such systems are not an "input device" such as a wear member monitoring device: Briscoe at [16.11], Exhibit TLB-1, item 5(b). Further, there is nothing in Dietens to suggest that the system can check that the wear member is installed correctly, nor can this be inferred from the software being able to differentiate between worn teeth, acceptable teeth and lost teeth: Briscoe at [16.19].”

32. The Applicant states:

    “In relation to claim 6, Dietens does not disclose a system wherein the controller recodes the database details based on processes previously completed by the tool. This cannot be assumed: Briscoe at [16.10].”

33. Mr Nienaber states at QN-T2:

    “I understand that the term "recoding ... based on processes previously completed" is entering a confirmation that the replacement was done, on a GET by GET basis, and successfully completed. I understand the term "recoding" to mean "updating, or readjusting the data". However, it could also mean that there is no history in the database, at least on the tool itself, and that the present data is entered for the first time.

    I understand the term "process" to refer to a confirmation of, for example, "GET A removed and GET B fitted ". The completion of a process, in my view, is a new GET present on the excavator.”

    “I refer to [0056] of document B, which discloses that the controller receives and enters information about teeth that have been removed, and which are to be replaced .

    I would assume that after completion of the installation process the information is also entered, given that the manipulator needs to know when the replacement is complete and it can move away.”

34. Mr Briscoe states at 16.10 to 16.11:

    “16.10 At item 6.1 of QN-T2 Mr Nienaber states that he "would assume that after completion of the installation process the information is also entered, given that the manipulator needs to know when the replacement is complete and can move away". I would not make this assumption as l do not consider that this would require a "recoding" of the database, as required by claim 6 of the Opposed Application.

    16.11 At item 10.2 of QN-T2, Mr Nienaber states:

    "I, again, refer to [0053] of [Dietens] which discloses the use of image matching software to recognise a worn tooth as opposed to an acceptable tooth. In my view, that process necessarily requires an image matching sensor, being an input device, that provides information about the wear part status to the controller. In my view, that is a disclosure of a wear part monitoring unit"

    I disagree that the image matching software discussed in Dietens is a wear member monitoring device. The image matching software is not disclosed as being used on the wear members of the dredge, and indeed I cannot see how such a system could be implemented to monitor wear members in real time on a dredge as, in use, the cutterhead is underwater and turning at high RPM, which creates a lot of debris and very low visibility.”

35. Paragraph 53 of Dietens clearly discloses the use of optical imaging to monitor the wear part. I consider optical imaging to be a type of input device. I have found above that Dietens inherently discloses a database. I further consider it inherent that the database would be updated with input information.

36. Claims 5, 6 and 10 lack inventive step in light of Dietens.

    Claim 7

37. Claim 7:

    7. A tool in accordance with any one of claims 4-6 including a device for accessing the database remotely.

38. The Opponent states:

    “Claim 7 requires a device for accessing the database remotely. This could be e.g. any personal computer. It was CGK that databases can be accessed remotely, and there is no inventiveness here. Demmeler at [0080], for example, discloses networked PCs i.e. remote access devices as claimed in claim 7.”

39. The Applicant states:

    “In relation to claim 7, while it may be known that databases can be accessed remotely, there is no evidence to suggest that it is obvious that the database of claims 4 to 6 of the Opposed Application could be accessed remotely. Claim 7 also has inventiveness by virtue of its dependence on claims 4 to 6, over that conferred by the features of claim 1.”

40. Mr Briscoe states:

    “Claim 7 provides a device for accessing the database remotely. This means that the tool can connect with the database while in the field (I expect that this could be by means such as WiFi or another wireless technology) ([0020]). The advantage of this system would be that the database can be stored centrally, receiving information from and delivering information to a plurality of sources of information.”

41. Mr Nienaber states:

    “I understand the term "device" to be a generic term for a computing device capable of accessing electronic databases, such as a fixed interface, a smartphone, a computer etc. The database and device must have some form of communication such as a modem, cellular antenna, or the like. I understand the term "access" to broadly refer to, at least, read-only access to the database. For example, this could be used for reading the data for reporting purposes. I understand the term "remotely", in the context of mining operations to refer to, at minimum, the mine site head office. Most likely, "remote" refers to a location at a further distance.”

42. Mr Briscoe states:

    “At item 7.2 of QN-T1 Mr Nienaber states "I understand the term "remotely", in the context of mining operations to refer to, at minimum, the mine site head office. Most likely, "remote" refers to a location at a further distance". I do not agree with this construction. In my opinion, the word "remote" means outside the immediate vicinity of the tool, but has no other upper or lower limit.”

43. I am satisfied that placing the computer database remotely from a robotic tool to be common general knowledge. Thus I consider locating the database of Dietens ‘outside the immediate vicinity of the tool’ to be a matter of routine to a person skilled in the art.

44. Claim 7 lacks an inventive step in light of Dietens.

    Claims 8 and 9

45. Claims 8 and 9:

    8. A tool in accordance with any one of claims 4-7 including an encoding element for providing data for the database.

    9. A tool in accordance with claim 8 wherein the encoding element is an RFID or barcode.

46. The Opponent states:

    “Claims 8 and 9 require an encoding element (narrowed by claim 9 to RFID or a barcode) for providing data for the database. This was obvious. The fitting of wear parts with RFID was already under investigation before the priority date: Nienaber at [44]-[45], Briscoe at [14.14]. Further, Demmeler at [0042] discloses the analogous use of barcodes and transponders for providing data about the wear parts on machinery tools.”

47. The Applicant states:

    “In relation to claims 8 and 9, at the priority date, the use of RFID on wear members was only in the development phase according to one expert and often unreliable according to the other. It would therefore not be obvious to use an RFID in this situation.”

48. Mr Nienaber states at paragraph 45:

    “We drilled holes into our GET for the contractor to receive a RFID chip. RFID readers were installed on the excavator that periodically 'pings' the RFID to verify it is still in position. There is a further RFID reader on the mine site gates to ping the RFID should it be in a pile being moved. The RFID part was used to identify that the GET was in a position it should not be in and raise an alert. This was one approach to the problem of GET being lost and causing damage to downstream crushers and grinders.”

1. Mr Briscoe states at 14.14:

   “At paragraphs 44 and 45 of his declaration Mr Nienaber describes his experience in the use of RFID-based identification and tracking systems for wear parts. I consider that embedding an RFID into a wear part is difficult but am aware of it being tested. In my experience, the problem with RFID identification and tracking systems on the wear members is that the high impact of digging, deformation of wear members, and the high volumes of dirt and minerals which lost wear members may become buried in, often makes these systems unreliable in identifying lost wear members.”

2. Both experts provide evidence that embedding RFID into a wear part is known. I am satisfied that adding an encoding element (such as an RFID tag) on the wear members to provide data for a database would be considered a matter of routine to a person skilled in the art. Consequently claims 8 and 9 lack an inventive step.

   Claims 11, 15 and 16

3. Claims 11 and 16:

   11. A tool in accordance with any one of the preceding claims including at least one sensor to determine a location and orientation of the wear member to be removed.

   15. A tool in accordance with claim 11 wherein the at least one sensor includes a digital inclinometer and a digital compass.

   16. A tool in accordance with claim 11 wherein the sensor is at least one camera.

4. The Opponent states:

   “The alternative sensing means in claims 12 to 15 are CGK sensors. They are either obvious alternatives to using a camera, or are anticipated by Dietens’ disclosure of an optical tooth sensing system as understood by the PSA.”

5. The Applicant states in their submissions:

   “Additionally, the Opponent has not filed evidence that supports its contention that the sensors described in these claims are common general knowledge for use with tools for replacing wear members on earth working equipment operating in a mine.”

6. Mr Briscoe states in TLB-1:

   “Dietens discloses the use of an optical sensing system (which I understand to be a camera) that helps orient the manipulator and the tool to access the retainer and remove the retainer. This is a means of inputting data into the system. Paragraph [0052] discloses the use of a sensing system to control and position the robotic tooth handler to remove the worn teeth.”

7. I am satisfied that Dietens discloses the features of claims 11 and 16. Claims 11 and 16 lack an inventive step in light of Dietens.

8. There is no evidence that an inclinometer and compass would be used to determine a location and orientation of the wear member to be removed. Claim 15 is inventive in light of Dietens.

   Claims 12, 13 and 14

9. Claims 12, 13 and 14:

   12. A tool in accordance with claim 11 wherein the at least one sensor includes an electromagnetic wave receiver and an electromagnetic wave transmitter.

   13. A tool in accordance with claim 11 wherein the at least one sensor includes a mechanical wave receiver and a mechanical wave transmitter.

   14. A tool in accordance with claim 11 wherein the at least one sensor includes a laser receiver and a laser transmitter.

10. The Applicant states:

    “In relation to claims 12 and 14, Mr Nienaber relies on paragraph [0052] of Dietens, which describes "…an optical tooth sensing system…to enable the computer control system to control and position the robotic tooth handler". "Optical tooth sensor" is a broad term for many different sensors, and does not amount to a clear disclosure of a sensor which is "an electromagnetic wave receiver and an electromagnetic wave transmitter" (as described in claim 12) or "laser receiver and a laser transmitter" (as described in claim 14). The reasons for this include because many possible optical sensors, such as a camera, may receive but do not transmit electromagnetic waves: Briscoe at [16.12] and [16.13].”

11. Mr Briscoe states at 16.12 and 16.13:

    “At item 12.2 of QN-T2, Mr Nienaber states "I, again, refer to [0052] of document B, which discloses an optical tooth sensing system. An optical sensor uses electromagnetic waves". I do not agree that the disclosure of an optical tooth sensing system is a disclosure of an electromagnetic wave receiver and an electromagnetic wave transmitter. I do not consider that an optical sensor would necessarily be an electromagnetic wave receiver/transmitter system as many optical sensors, such as a camera, do not transmit electromagnetic waves.

    At item 14.2 of QN-T2, Mr Nienaber states"/, again, refer to [0052] of document B which discloses an optical tooth sensing system. In my view, as explained above, such systems include LIDAR systems, being systems based on laser receivers and laser transmitters." I do not agree that the disclosure of an optical tooth sensing system in Dietens, which is a broad term for many different types of sensors, necessary discloses a laser-based sensing system.”

12. The Opponent states:

    “Claims 11 to 16 require the tool to have at least one sensor to determine a location and orientation of the wear member to be removed (claim 11), where the sensor includes an electromagnetic wave receiver and an electromagnetic wave transmitter (claim 12); a mechanical wave receiver and a mechanical wave transmitter (claim 13); a laser receiver and a laser transmitter (claim 14); a digital inclinometer and a digital compass (claim 15) or at least one camera (claim 16).”

13. Mr Nienaber states in QN-T1:

    “I am not familiar with the use of "electromagnetic wave receivers" or "electromagnetic wave transmitters" to determine locations and orientations of GET in a mining environment. Operating in iron ore mines could severely affect the ability for this type of sensor to function. Referring to the specification, I understand that the mentioned infrared sensor would be similar to photogrammetry. If a broader reading of "electromagnetic wave" (EM) is applied, rather than only referring to the visual spectrum, I have doubts as to whether the effect a difference in orientation of the GET has on non-visual electromagnetic waves would be sufficient to determine a location and orientation of the GET. In any case, the description does not provide me with any instructions as to how a non-visual EM receiver or transmitter should be designed or operated in a mining environment.”

14. I consider sensors to determine a location and orientation of a device using wave transmitters and wave receivers wherein the wave is visible light to be well known. Illuminating the subject being photographed or video recorded is ubiquitous in the art of sensors. Consequently claim 12 lacks an inventive step in light of Dietens.

15. There is no evidence to suggest that using a mechanical wave transmitter and receiver to determine a location and orientation of a device is common general knowledge. There is also no evidence to suggest that using a laser to determine a location and orientation of a device is common general knowledge. Thus claims 13 and 14 are considered inventive in light of Dietens.

    Claim 17

16. Claim 17:

    17. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool includes first and second arms to contact opposite sides of the wear member.

17. The Applicant states:

    “In relation to claim 17, Dietens does not disclose how the "hand" (auxiliary tool) works, nor how it may contact the wear member (see eg, [0049] of Dietens). Mr Nienaber's assumption that it has first and second arms to contact opposite sides of the wear member (as described in claim 17) cannot be sustained: Briscoe at [16.1[4]].”

18. Mr Briscoe states at paragraph 16.14:

    “At item 17.2 of QN-T2, Mr Nienaber states "Hand is "gripping" to contact and hold. This is not possible without at least two members contacting. And if only two members are contacting, contracting [sic] at opposite sides." I do not agree. The Dietens document does not disclose any details about how the "hand" works, nor how it may contact the wear member. Therefore I do not agree with Mr Nienaber's assumption that the auxiliary tool includes first and second arms to contact opposite sides of the wear member.”

19. I consider it inherent that the hand in Dietens must have arms on opposite sides of the wear member to allow gripping; if the arms were on the same side it would be impossible to grip the wear member.

20. Claim 17 lacks inventive step in light of Dietens.

    Claim 18

21. Claim 18:

    18. A tool in accordance with 17 wherein the at least one auxiliary tool includes a third arm that contacts a surface of the wear member generally perpendicular to the first and second arms.

22. The Opponent states:

    “Claim 18 requires a third arm that contacts the surface of the wear member generally perpendicular to the first and second arms. That is an obvious mechanical variation to the two arm embodiment of claim 17, discussed above.”

23. Mr Nienaber states:

    “I understand the third arm to substantially similar to the first and second arms.

    I understand that the third arm is intended to support the weight of the adaptor or shroud to support the weight of the GET, if necessary, given that adapter or shrouds can pivot or fall on release. I thus believe that the third arm embodiment is only necessary when the first and second arm contact on the left and right sides, thus leaving the bottom side empty, save for the third arm. I understand "contact" in the is context to mean "support", rather than "gripping", as discussed at 17.2, given the clearly intended function of the third arm.”

24. The description states at paragraph 29:

    “In accordance with another aspect of the invention, a tool includes a plurality of arms that are used to secure at least two opposing sides of the wear member. In one preferred construction, the multi-arm tool has at least two arms. In another preferred construction, the multi-arm tool has at least three arms. Two arms contact the sides of the wear member and one arm contacts the bottom of the wear member to secure the wear member to the tool.”

25. If the third arm is generally perpendicular to the first and second arm, this appears to correspond to the embodiment where “two arms contact the sides of the wear member and one arm contacts the bottom of the wear member to secure the wear member to the tool”.

26. The applicant states:

    “In relation to claim 18, there is no suggestion that it would be necessary to have three separate arms in order to grip the tooth. Where the part can be held securely with two arms, or two parts of the same arm, there is no motivation to add a third arm.”

27. I consider the third arm perpendicular to the first and second arms to be not a routine variation to the robotic arm disclosed in Dietens. Claim 18 is inventive in light of Dietens.

    Claim 19

28. Claim 19:

    19. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool and the manipulator are operable by the controller to secure a gripping piece to the wear member and engage the gripping piece on the wear member to hold and remove the wear member from the earth working equipment.

29. The Opponent states:

    “Claim 19 requires the auxiliary tool and gripper to be operable to secure a gripping piece to the wear member and engage the gripping piece to hold and remove the wear member. This would be satisfied by an arrangement where, for example, the auxiliary tool has a stud welder that welds lifting eyes/lugs onto the wear part: Application at [0048], [00146]

    The practice of welding lifting eyes/lugs onto the wear part to facilitate its removal was part of CGK – see 71(f)(iii) and (iv) above. It was obvious that this task could be performed by the manipulator and a suitable auxiliary (welding) tool.”

30. The Applicant states:

    “In relation to claim 19, it would not be obvious to use a gripping tool with a gripping piece in the present invention as previous systems (such as welding lifting eyes) because of the issues with that form of securing the wear member for removal, including the difficulties in the weld holding up as a result of the hardness of the steel.”

31. Mr Briscoe states at 4.20:

    “I was aware prior to 2013 of mine operators attempting to overcome this issue [of lifting eyes being worn off] by welding a new lifting eye onto the wear member when it is to be removed. However, this is time consuming because it requires the crew to shut the excavating equipment down, weld a lifting eye onto the worn wear member, then use a hook to attach to that lifting eye and take off the wear member. It is also very challenging for operators to weld a temporary eye to a very hard, worn and soiled material of the wear member in the field. For example, typically welding requires pre-heating of the target surfaces, however this is usually not viable on the mine site due to the time demands and costs of down time. This can make the weld far more unreliable and prone to breakage. For this reason I understand that welding of temporary lifting eyes to the wear members is usually not permitted by regulators for safety reasons, however in my experience it continues to be practised in the field at times because it is often the best ad-hoc solution available.”

32. The modification of Dietens to include welding eyes onto the wear member is not a matter of routine. Claim 19 is inventive in light of Dietens.

    Claim 20

33. Claim 20:

    20. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool and the manipulator are operable to remove the retainer from the wear member to release the retainer.

34. Dietens discloses the manipulator to remove the retainer to release the wear member, for example at paragraph 37. Claim 20 lacks an inventive step in light of Dietens.

    Claim 21

35. Claim 21:

    21. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool and the manipulator are operable to unscrew at least a portion of the retainer to release the retainer.

36. The Opponents states:

    “Claims 21 and 22 claim obvious mechanical ways of removing the retainer i.e. unscrewing at least a portion of the retainer (claim 21) or cutting out at least a portion (claim 22). Again, this is disclosed in Dietens at [0037], which provides auxiliary tools in the form of a pin driver for extracting the pin of the wear member (claim 21) and a weld cutter for cutting steel in order to release the retainer (claim 22).”

37. The Applicant states:

    “In relation to claims 21 and 22, as set out at paragraph 7.26 above, Dietens does not disclose that the robotic tooth handler can unscrew at least a portion of the retainer, or cut out at least a portion of the retainer to release the retainer to release the retainer, and this cannot be assumed: Exhibit TLB-1, item 21(b), Briscoe at [16.15] and [16.16]. There is also no evidence that existing systems were capable of this functionality. Additionally, there is no evidence that in existing systems the retainer is cut in order to release it.”

38. Mr Briscoe states:

    “At item 21.2 of QN-T2, Mr Nienaber states "Although not explicitly disclosed, the tooth handler is a multi-axis tool that could easily be adapted to unscrew a retainer, rather than drive it with a pin driver. The manipulator shown in Fig. 3, for example, has a number of rotational axis of movement that would be able to perform an unscrewing motion." I agree that this feature is not disclosed.”

39. Dietens discloses a spigot to hold the wear member in place. I consider that the person skilled in the art would as a matter of routine modify Dietens such that the robotic arm could install and remove threaded locking means to secure the wear members when used with equipment where the wear member is secured with a threaded locking means.

40. Claim 21 lacks an inventive step in light of Dietens.

    Claim 22

41. Claim 22:

    22. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool and the manipulator are operable to cut out at least a portion of the retainer to release the retainer.

42. The Applicant states:

    “In relation to claims 21 and 22, Dietens does not disclose that the robotic tooth handler can unscrew at least a portion of the retainer, or cut out at least a portion of the retainer to release the retainer to release the retainer, and this cannot be assumed: Exhibit TLB-1, item 21(b), Briscoe at [16.15] and [16.16].”

43. Mr Nienaber states in relation to claim 22:

    “I, again, refer to [0037] of document B, which discloses the use of a welder or a weld cutter, which I understand to mean that steel is being cut. The context of the paragraph leads me to believe that they are referring to cutting the steel in order to release the retainer. The weld would be part of the retainer because it at least assists in retaining the wear member to the base.”

44. I consider paragraph 37 discloses that the welder is cutting the retainer. Claim 22 lacks an inventive step in light of Dietens.

    Claims 23

45. Claim 23:

    23. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool includes a nozzle to spray pressurized fluid to remove fines from the wear member and/or retainer.

46. The Opponent states:

    “Claim 23 requires the at least one auxiliary tool to include a nozzle to spray pressurised fluid to remove fines. Mr Nienaber understands Dietens to disclose an alternative embodiment in which the auxiliary tool has a nozzle that dispenses glue solvent to facilitate the removal of the tooth: see Nienaber Ex QN-T2, Integer 23.2. Glue solvent is an example of a pressurised fluid. In the context of land mining equipment, an obvious adaptation of the Dietens nozzle would be to dispense pressurised water to remove fines. Alternatively – as per Claim 24 – the auxiliary tool could have a vibrator that dislodges the fines.”

47. The Applicant states:

    “In relation to claim 23, as set out above at paragraph 7.27 above, Dietens' disclosure of a glue solvent is not a disclosure of at least one auxiliary tool including a nozzle to spray pressurized fluid to remove fines from the wear member and/or retainer because a glue solvent is specifically directed to dissolve glue and would not remove fines: Exhibit TLB-1, item 23(b), Briscoe at [16.17]. It would not be obvious from the disclosure of a glue solvent to provide pressurized fluid to remove fines because they are completely different things. It would also not be obvious from the disclosure of a glue solvent to have a vibrator that dislodges the fines, as required by claim 24.”

48. Mr Nienaber states:

    “I also recall a South American project conducted from 2011, where high pressure steam was used to blow out the dirt from between the adaptor and the cast lip after the retainer was removed to facilitate separation of the adapter from the cast lip. We decided not to use the system in Australia due to the capital expenditure required to purchase the steam guns and the water hazards that would be created in a mining site proximate electrical welding equipment.”

49. Spraying pressurised fluid to remove fines from the wear member and/or retainer appears to have been known.

50. I consider it would be a matter of routine to modify Dietens to include a nozzle to spray pressurised fluid. Claim 23 lacks an inventive step in light of Dietens.

    Claim 24

51. Claim 24:

    24. The tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool includes a vibrator to remove fines from the wear member prior to disengaging the wear member from the earth working equipment.

52. Mr Nienaber states:

    “I understand a "vibrator" to mean anything that causes vibrations.

    An example of this would be hitting the GET with a hammer. I find it hard to believe that a vibrator actually "removes" fines from the GET. It would merely break the interlocking fines on the mating surfaces between the wear member and the base to facilitate removal of the GET from the nose.”

53. There is no evidence to suggest that a vibrator to loosen or remove fines is known in the art. Mr Nienaber expresses doubt that a common method of causing a vibration – hitting with a hammer – would be effective in removing fines from the GET. Consequently, I consider claim 24 is inventive in light of Dietens.

    Claim 25

54. Claim 25:

    25. A tool in accordance with any one of the preceding claims including storage stalls for receiving the wear member after removal from the earth working equipment and the second wear member prior to installation on the earth working equipment.

1. The Mr Briscoe states in TLB-1:

   “The dredge cutter has specific bins for the retainer pins and the worn wear members which I would consider to be a stall (items 60 in Figure 3) because they have the functionality of a stall, in that they are making sure the parts are in the right place for easy installation and removal. I also consider the tooth bench (eg, item 106 of Figure 5) to be a storage stall.”

2. I consider Dietens discloses the storage stall defined in claim 25. Claim 25 lacks an inventive step in light of Dietens.

   Claims 26 and 27

3. Claims 26 and 27:

   26. A tool in accordance with any one of the preceding claim wherein the controller is programmable with the geometry of the wear member and the location of the retainer in the wear member to release the retainer and remove the wear member from the earth working equipment.

   27. A tool in accordance with any one of the preceding claim wherein the controller is programmable with the geometry of the second wear member and with where to place a retainer in the second wear member to secure the second wear member to the earth working equipment.

4. Mr Briscoe states in TLB-1:

   “I understand that the system has a means by which it can grasp the tooth and remove the retainer ([0043], [0052]). I consider that it must know what the part looks like and has to know how to change the retainers. Therefore I assume it is programmable with the geometry of the wear member and the location of the retainer.”

5. I consider Dietens discloses a programmable controller. Claims 26 and 27 lack an inventive step in light of Dietens.

   Claims 28 and 29

6. Claims 28 and 29:

   28. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool verifies that the second wear member is fully installed on the earth working equipment by comparing a location of the second retainer in the second wear member with a previously established location of the retainer on the removed wear member.

   29. A tool in accordance with any one of the preceding claims wherein the at least one auxiliary tool includes camera to verify that the second wear member is fully installed on the earth working equipment by performing a visual check.

7. The Opponents states:

   “Claim 28 requires the tool to “verify” that the second wear member is “fully installed” on the earth working equipment by comparing a location of the second retainer in the second wear member with a previously established location of the retainer on the removed wear member. Claim 29 requires this verification to be done using a camera that performs a visual check.

   The need to verify that the second wear member was correctly installed when replacing wear parts was known in the CGK: see Nienaber at QN-T2 item 29.2. There is no invention in merely specifying that the verification process is performed in an automated fashion using a camera. The skilled addressee would, for example, have routinely recognised that the camera and “image matching software” of Dietens could perform the CGK verification task in an automated manner.

   Indeed, Mr Nienaber explains: “The image matching software [of Dietens] is disclosed to differentiate between worn teeth and acceptable teeth, as well as … recognizing tooth loss. Thus, in my view, these systems check for “fully installed” wear members” as claimed in claims 28 and 29: Nienaber at QN-T2 item 29.2.”

8. The Applicant states:

   “In relation to claim 28, while the need to verify that a wear member was correctly installed might be common general knowledge, there is no evidence to suggest that the use of a tool to do the verification (as compared to a visual verification by an operator) was common general knowledge. In relation to claim 29, as set out above at paragraphs 7.28 and 7.29, it is clear that there is no specific disclosure of a camera to verify that a wear member is fully installed on the earth working equipment. Mr Nienaber's interpretation of [0053] and [0057] involves him making assumptions about how the "image matching software" and "optical control system" operate. However, there is nothing in Dietens to suggest that the system can check that the wear member is installed correctly, nor can this be inferred from the software being able to differentiate between worn teeth, acceptable teeth and lost teeth: Briscoe at 16.19. There is also nothing to suggest that such a thing was obvious.”

9. Mr Nienaber states:

   “I, again, refer to [0053] of document B, which discloses the use of image matching software, which necessarily involves the use of a camera to provide images to perform the visual check. The image matching software is disclosed to differentiate between worn teeth and acceptable teeth, as well as, according to [0057], recognising tooth loss. Thus, in my view, these systems check for "fully installed" wear members, as "worn" wear members, or "lost" wear members are differentiate from this category by those systems.”

10. It is not necessarily the case that the camera in Dietens is an auxillary tool of the robotic arm. Instead, the camera could be mounted on a different part of the system. I consider that it would be a matter of routine to a person skilled in the art to modify Dietens to verify the wear member is fully installed. Claims 28 and 29 lack an inventive step in light of Dietens.

    Claim 30

11. Claim 30:

    30. A tool in accordance with any one of the preceding claims wherein the manipulator includes a hydraulic manipulator.

12. Mr Nienaber states:

    “I refer to [0046] of document B, which discloses that the moving parts of the
    robot may be caused by belts, gears, pneumatic, or hydraulic means. I understand this to mean that the manipulator may be of any number of possible constructions, including hydraulic.”

13. Mr Briscoe also notes that there is a disclosure of hydraulics at paragraph 16. Claim 30 lacks an inventive step in light of Dietens.

    Claim 31

14. Claim 31:

    31. A tool in accordance with any one of the preceding claims wherein the controller operates on programmable logic to fully automate the use of the tool.

15. The Opponent states:

    “Claims 31 to 33 require the controller to operate “on programmable logic to fully automate use of the tool” (claim 31); or “programmable logic to at least partially automate the use of the tool” (claim 32); or “at least partially manually by a remote user” (claim 33). Each of these are obvious alternatives, including when implementing each piece of s 7(3) prior art.

    By way of example, each of the controllers in the s 7(3) documents would be operated using programmable logic. The skilled person would recognise from the description of each document that the tools they disclose can be fully automated. Partial automation or part manually operation are obvious alternatives.”

16. Mr Nienaber states in QN-T2:

    “I understand the term "full automation" to include the tool arriving at the earth moving equipment, fitting and removing GET as required, the tool being controlled by a digital processor, with no human interaction.

    On the face of the specification, I am not able to contemplate how that should be performed. There is no disclosure as to how pathfinding across a mine site should be performed. While automated mining trucks exist, they operate primarily along predetermined transport routes, rather than on-demand to excavators requiring GET replacement.

    There is no specific information in the specification as to how close the tool should be positioned to the excavator, how to position the tool in relation to the machine and the bucket. How would a determination be made that a GET requires removal, would each tooth be scanned periodically, or is there a device on the earth moving equipment?

    Although the specification and claims appear to be restricted to teeth, if all GET are intended, there are significant GET removal issues in relation to adapters and shrouds, for example, that still require to be addressed. The geometry of these GET may require more axis of movement than provided by the disclosed manipulators.”

17. Mr Briscoe states:

    “The document does not adequately describe whether the controller operates on fully programmable logic. It could be partially controlled by a human remotely, by a joystick or some other means.”

18. I consider that Dietens does not disclose the robotic arm to be fully automated.

19. On one hand, fully automating the process is desirable since it lowers the amount of labour necessary to do the job. On the other hand, fully automating processes can be difficult as noted by Mr Nienaber.

20. I consider fully automating the process to require more than mere routine steps to achieve. Consequently I consider claim 31 to be inventive in light of Dietens.

    Claim 32 and 33

21. Claims 32 and 33:

    32. A tool in accordance with any one of claims 1-29 wherein the controller operates on programmable logic to at least partially automate the use of the tool.

    33. A tool in accordance with any one of claims 1-29 and 31 wherein the controller operates at least partially manually by a remote user.

22. Mr Briscoe states:

    “The "manipulator has a "computer control system" (see 1(h)). Th is would seem to me to necessitate at least partial automation.”

23. I am satisfied that Dietens discloses the partial automation of the tool. Partial automation implies that it must also have partial human (remote) control. Claims 32 and 33 lack an inventive step in light of Dietens.

    Conclusion on inventive step

24. Claims 1, 4-12, 16, 17, 20-23, 25, 26-30, 32 and 33 lack an inventive step in light of Dietens (EP 1 522 636).

25. Claims 1 and 21 lack an inventive step in light of Derycke (US 2013/0045055).

    Conclusion

26. Claims 1 and 21 lack novelty in light of Derycke (US 2013/0045055). Claims 1 and 21 lack an inventive step in light of Derycke (US 2013/0045055).

27. Claims 1, 4-12, 16, 17, 20-23, 25-30, 32 and 33 lack an inventive step in light of Dietens (EP 1 522 636).

28. I am of the view that this matter may be overcome by amendment and consequently the applicant is allowed 2 months from the date of this decision to propose suitable amendments.

    Costs

29. Costs typically follow the event. I see no reason to depart from this practice. The Opponent has been successful in the Opposition. Costs are awarded according to Schedule 8 against the Applicant.

    Xavier Gisz

    Delegate of the Commissioner of Patents