CQMS Pty Ltd v ESCO Group LLC - [2020] APO 14

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2020] APO 14
Patent Application: 2016253640

Title:Wear assembly

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date: 16 March 2020

Hearing Date: 29 October 2019, in Canberra

Catchwords: PATENTS - section 59 opposition to grant of a patent – grounds of novelty, inventive step, sufficient disclosure, clarity, support, manner of manufacture, and utility – ground of support considered under s 60(3) – claims 1-6 and 8 lack support – opposition to other grounds unsuccessful – no award of costs

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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016253640

Title:Wear assembly

Patent Applicant: ESCO Group LLC
Date of Decision: 16 March 2020
DECISION

Claims 1 to 6 and 8 lack support. No other grounds made out.
The Applicant is given 2 months from the date of this decision to propose suitable amendments to overcome this finding.
No award of costs is made.
REASONS FOR DECISION

Background

The matter relates to patent application 2016253640 (the Application) in the name of ESCO Corporation which was subsequently changed to ESCO Group LLC (the Applicant). The Application was filed on 3 November 2016. The Application is a divisional application from Australian patent application 2016200257 (the Parent Application) which is a divisional application from 2012281135 (the Grandparent Application). The Grandparent application is a convention application with two basic documents being US applications 61/507726 and 61/576929 with an earliest priority date of 14 July 2011.
The Application was advertised as accepted on 8 February 2018. A notice of opposition was filed on 8 May 2018 by CQMS Pty Ltd (the Opponent). The statement of grounds and particulars was filed on 8 August 2018.
Evidence in support was completed on 26 October 2018 and acknowledged by the Commissioner on 6 November 2018.
Evidence in answer was completed on 5 February 2019 and acknowledged by the Commissioner on 14 February 2019.
Amendments were proposed on 11 February 2019. A direction to stay the opposition (until two weeks after the amendments were allowed, refused or withdrawn) was made on 28 March 2019. The Commissioner notified the parties the amendments had been allowed on 13 June 2019.
Evidence in reply was completed on 27 June 2019.
The Opponent’s submissions were filed on 16 October 2019 (at 12:01am). The Applicant’s submissions were filed on 22 October 2019. The opposition was heard in Canberra on 29 October 2019.
Further submissions
Following the hearing on 1 November 2019 I wrote to the parties. The letter stated:
“The hearing of 2016253640 took place on 29 October 2019.
At the hearing I noted that the invention described included a mechanical device that held the holding component in either of a release position or a locked position, whereas the invention claimed was only limited to the holding component being in (and movable between) either the release position or the locked position.
I noted that claimed feature of the holding component being in the release position and locked position encompassed a mechanical device that acted to hold these positions (as described), but also might encompass things such as a visual indicator (for example alignment markings) of the release position and the locked positions. The claim may also include within its scope other things such as an electronic sensor system measuring for identifying pre-determined positions of the holding component.
I consider that this aspect of the claimed invention may not be supported by the description, since it encompasses non-mechanical means of identifying that the holding device is in a release position and locked position.
Although the ground of support (s 40(3)) was raised in the Statement of Ground and Particulars, this particular issue of the release position and locked position was not mentioned. Furthermore, the ground of support was absent from the opponent’s submissions to the hearing.
Under s 60(3) the Commissioner may take into account any ground, whether relied upon on by the opponent or not.
At the hearing, both parties asked to be given an opportunity to make submissions on this point.
I allow both parties three (3) weeks from the date of this letter to provide submissions on the issues raised in this letter.”
Both parties filed further submissions on 22 November 2019.
Evidence
The evidence consists of:
Evidence in Support:
·Declaration of Dr John De Wit with exhibits JDW-D1 to JDW-D3 and JDW-T1 to JDW-T3.
·Declaration of Benjamin Hughes with exhibits BH-1 to BH-6
Evidence in Answer:
·Declaration of Terry Briscoe with exhibits TLB-1 to TLB-5
·Declaration of Rebecca Dutkowski with exhibits RD-1 and RD-2
Evidence in Reply:
·Declaration by Dr John De Witt
APPLICABLE LAW
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
The statement of grounds and particulars contains the following grounds: novelty, inventive step, sufficient disclosure, clarity, support, manner of manufacture, and utility.
The Opponent confined the submissions to the hearing to the grounds of novelty, inventive step and utility.
In response to my letter of 1 November 2019 the Opponent made submissions on the ground of support.
The invention
The invention is a lock that is used to secure a wear member to an adaptor base member best shown in Fig 1:
A preferred embodiment of the lock of claim 1 is shown in Figures 27 and 28:
The invention resides in the holding component being movable between a release position and a lock position. In the release position, the wear member can be installed or removed from the base. In the lock position the wear member is secured to the base.
In a preferred embodiment the holding component (pin 220) has a latching detent (252). In the release position the detent (252) is held in the outer pocket (256). When in the release position, and the detent and outer pocket engage, the holding component is held steadily in place. This is the position in which the component is shipped to the customer.
To install the wear member, the threaded holding component is screwed into the threaded collar (222). The holding component is rotated and the detent (252) slides out of the outer pocket (256) and follows the groove of the threaded collar. Eventually the detent is adjacent the inner pocket (260) and pops into the inner pocket (260). The detent popping into the inner pocket (260) provides haptic feedback to the user, indicating that the holding member is in the locked position.
The application (as amended) contains 8 claims; 3 independent claims and 5 dependent claims. The claims are reproduced below:
1.A wear member for attachment to earth working equipment to protect the equipment from wear during use, the wear member comprising a front end, an external wear surface to contact the ground during use of the earth working equipment in an earth working operation, a rearwardly-opening cavity to receive a base on the earth working equipment, a hole extending from the wear surface to the cavity, and a lock installed in the hole, the lock including a mounting component mechanically secured in the hole to resist movement of the mounting component in both inward and outward directions in the hole, and a holding component movable in the mounting component in both inward and outward directions between a release position where the wear member can be installed on and removed from the base and a locked position where the wear member is secured to the base.
2.A wear member in accordance with claim 1 wherein the mounting component and the holding component have complementary threads to effect movement of the holding component between the release and locked positions.
3.A wear member in accordance with claim 1 or 2 wherein the hole in the wear member includes a retaining structure with upper and lower oppositely-facing bearing surfaces, and the mounting component includes complementary bearing surfaces to contact the upper bearing surface and the lower bearing surface on the retaining structure.
4.A wear member in accordance with any one of claims 1 to 3 wherein the mounting component is a one-piece member.
5.A wear member for attachment to earth working equipment to protect the equipment from wear during use, the wear member comprising: a wear surface to contact the ground during operation of the earth working equipment,
a mounting structure for receiving a base on the earth working equipment,
a hole defined by a wall extending through the wear member and opening in both the wear surface and the mounting structure to receive a lock to hold the wear member to the earth working equipment, the wall including a retaining structure having an upper shoulder and a lower shoulder between the wear surface and the mounting structure,
a collar including lugs to straddle the retaining structure and contact the upper and lower shoulders to resist movement of the collar in both inward and outward direction in the hole, and a threaded opening, and
a threaded pin received in the threaded opening for movement between a release position where the wear member can be installed on and removed from the base, and a locked position where the wear member is secured to the base.
6.A lock for releasably securing a wear member to earth working equipment to protect the equipment from wear during use, the lock comprising:
a collar having a body adapted to fit within a hole in the wear member, a threaded opening extending through the body, and a pair of vertically spaced lugs projecting outward of the body to engage opposite shoulders of a retaining structure, the body and the lugs being formed as a one-piece member; and
a threaded pin received into the threaded opening for movement between a release position where the wear member can be installed on and removed from the earth working equipment, and a locked position where the lock retains the wear member on the earth working equipment; and
a retainer inserted in the hole of the wear member outside of the body adjacent the lugs to prevent disengagement of the lugs from the shoulders.
7.A lock in accordance with claim 6 which includes a biased detent on one of the collar and pin, and a pair of recesses on the other one of the collar and pin into which receive the detent, wherein the detent is received in one recess when the pin is in the release position and in the other recess when the pin is in the locked position.
8.A lock in accordance with claim 6 or 7, the pin including a head with a socket, the socket having angled facets for receiving a tool and an enlarged clearance space in lieu of at least one of the facets to enable better cleaning of the socket of earthen fines.
Construction legal principles
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."
Relevance of ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 to the construction
The Applicant and Opponent made submissions on the relevance of the construction of the terms ‘hold position’ and ‘release position’ in ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46. The construction issue considered in that decision related to whether the hold position and release position are discrete or on a continuum. Because of the similarity of the construction issue considered in Ronneby Road and the construction issue presently under consideration, it appears prima facie highly relevant.
However, the inventions in Ronneby Road and the present opposition are significantly different. The invention in the Ronneby Road decision relates to a lock opened with a prying tool T as illustrated in figures 23 and 25:
Indeed, the only substantial similarity between the invention in the Ronneby Road decision and the present invention is that both inventions have a rotating locking member. Rotating locking members are a common feature in wear member securing means, and so this similarity is insufficient basis for reliance on the construction provided in the Ronneby Road decision.
Consequently, I do not consider the construction of those terms in that decision to be particularly relevant to the construction of the terms in the present opposition. To be clear, the construction issues decided in ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 have no influence on the construction in the present opposition.
Claim Construction
The construction of the terms “holding position” and “locked position” are central to the opposition. The Applicant is of the view that the ‘holding position’ and ‘locking position’ are singular discrete predetermined positions. The Opponent is of the view that there are multiple ‘holding positions’ and ‘locking positions’ which are on a continuum.
I will now consider the arguments as to whether there is a singular ‘holding position’ and a singular ‘locking position’ or if there are multiple ‘holding positions’ and multiple locking positions. The arguments are summarised as: 1) the positions are understood by their function, 2) grammatical analysis.
1) Positions defined by their function vs. positions as discrete positions
Mr Briscoe states in his declaration at 15.7:
“In my interpretation of claim 1 (as well as claims 5 and 6), the use of "a release position" and "a locked position" indicates to me that these positions are set positions. This is supported by my reading of the specification, in which there are distinct positions that the lock is located in relation to the wear member and at which a user can know that the lock is either in a position where the wear member can be installed on the base (i.e., the release position) or in a position where the wear member cannot be removed from the base (i.e., the locked position).”
Dr De Witt states in his second declaration at paragraph 34:
“The locked and release positions are well known in the art, as described in the claim (i.e. an unlocked 'release' position where a wear member can be installed on and removed from a base and a locked position where a wear member is secured to a base), and I see no reason to depart from this usual well known meaning. I also see no reason to expect an indication means or feedback at certain positions when that is not mentioned in the claim.”
The experts have provided two reasonable yet differing constructions of the terms. I note that where experts cannot agree on the construction of a term this suggests there may be ambiguity in the term. I cannot find any reason to discount either of the experts’ opinions, so I consider this avenue of inquiry inconclusive.
2) Grammatical analysis - ‘indefinite article’ vs. antecedent
The Opponent states:
“…[T]he use of the indefinite article in claim 1 (“a release position” and “a locked position”) means that the lock of claim 1 may be moveable between more than one release position, and more than one locked position.”
The Applicant states:
“…[T]he claims logically first recite the existence of “a locked position” and “a released position” with the indefinite article because that is the first time they are identified in the claims. That does not mean that, in and of itself, there may be multiple “locked” or “released” positions. Indeed, the definition that the Opponent relies on makes clear that the use of “a” does not require there to be more than one such element in the description, only that it should not exclude that possibility. The context will therefore override that “definition”, even if it applied to the claims.”
The Opponent argues that the use of “a” is an ‘indefinite article’ and implies that it is one of many, whereas the Applicant argues that “a” has been used only because there is no antecedent for the features earlier in the claim. I consider that each of these arguments to be equally plausible and thus the grammatical analysis is inconclusive.
Conclusion of 1) and 2)
My consideration of arguments 1) and 2) to determine whether the terms are singular discrete predetermined positions or multiple positions 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.
Construing the terms in light of the specification
On one hand, the preferred embodiment of the invention has a singular discrete ‘holding position’ and a singular discrete ‘locking position’. On the other hand, paragraph 97 of the description contains the provision that reference to singular items (e.g. “a first” element) in the description is intended to include a plurality of items.
Although it is plausible that the described invention includes an embodiment where there are multiple outer pockets to enable multiple release positions, it is unclear how there could be multiple inner pockets to enable multiple locking positions – the locked position is essentially a terminating position, thus there can only be one discrete locking position. Understood in the context of the specification, I consider that this sentence in paragraph 97 does not apply to the words ‘a holding position’ and ‘a locking position’ defined in the claims.

On balance, I am satisfied that the terms ‘holding position’ and ‘locking position’ each define a discrete and singular position. I also consider that these two positions are clearly identifiable by a user through the existence of means for indicating when the holding element is in either of the two positions.
Novelty legal principles
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.”
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
D1 - US 6,959,506 “Adamic”
To the extent that the Opponent’s argument is predicated on the continuum construction of these terms, the Opponent’s argument is moot; I have construed the terms ‘holding position’ and ‘locking position’ as discrete, predetermined positions.
The Opponent also provided submissions on the basis of the ‘holding position’ and ‘locking position’ being discrete, predetermined positions. The Opponent states:
“If (contrary to the opponent’s submissions on claim construction) claim 1 did require one or more “discrete”, “defined” or “set” positions, this would not avoid anticipation.
(a) D1 discloses that one discrete, defined locked position is when the lock pin is fully inserted and flush with the external surface of the wear member.
(b) D1 discloses that one discrete, defined release position is when the inner edge of the pin is flush with the inside surface of the wear member.
(c) Another discrete, defined release position in D1 is when the pin is fully removed: De Wit 2 at [33].
(d) Each of the above positions can be “set” by screwing or unscrewing the lock pin.
(e) It follows that D1 anticipates claim 1, on ESCO’s own construction.”
The Opponent states in the submissions at paragraphs 52 to 59:
“D1 discloses an assembly for locking a wear member (e.g. tooth) to a base (e.g. adaptor). The assembly comprises a hole in the wear member that extends from the wear member’s external surface to its rear cavity; a threaded pin retainer (the mounting component or collar) mechanically secured within the hole; and a threaded lock pin (the holding component).
A basic representation of the hole (5) and the threaded pin retainer (9) ready for installation in the wear member (1) is provided by Fig 3 (reproduced below):
The pin retainer (mounting component) is mechanically secured in the hole to resist it moving in both inward and outward directions in the manner explained at Figures 8 and 9 and Col 4, line 41ff. Broadly, this is achieved by the pin retainer having an extended portion (10) that will “snap” fit into a corresponding groove within the hole. As shown in Fig 3, the pin retainer is fitted to the wear member before it is secured to the adaptor base.
The threaded lock pin (holding component) (13) is illustrated in Fig 5 (reproduced below):
The lock pin (holding component) is installed in the pin retainer (mounting component) by placing it into the pin retainer and screwing. D1 explains at col 5, line 12 (item nos. omitted):
The lock pin may be placed into the retainer prior to the installation of the wear member on the support structure [i.e. base] as long as the inner end of the lock pin is flush with the interior surface of the wear member or does not protrude into the anterior cavity of the wear member to interfere with the installation of the wear member on the support structure. The lock pin is tightened in the retainer by torqueing it down using a ratchet in the opening of the lock pin. When fully inserted into the retainer, the lock pin extends through the opening [i.e. hole] in the wear member and into the recess in the support structure. When fully [inserted] [flushed], the head of the lock pin will be flush with the external surface of the wear member. This locked position is shown in Fig 7.
The words underlined above are a disclosure of the lock pin (holding component) being moveable to “a locked position”, as claimed.
The specification continues at col 5, line 34 (item nos. omitted):
To unlock the wear member from the support structure, a ratchet is used to rotate the pin to loosen it from the pin retainer. The lock pin is unscrewed from the pin retainer either until its inner edge is flush with the inside surface of the wear member or it may be fully removed. The wear member may then be removed from the opening in the wear member by pushing it towards the internal surface of the wear member.
The words underlined above constitute a disclosure of the lock pin (holding component) being moveable to “a release position”, as claimed: De Wit 2 at [32].”
The sentence in Adamic at column 5 lines 13 to 18 states (with my emphasis in underline):
“The lock pin may be placed into the retainer prior to installation of the wear member on the support structure as long as the inner end of the lock pin is flush with the interior surface of the wear member or does not protrude into the anterior cavity of the wear member to interfere with the installation of the wear member on the support structure.”
This sentence describes at least two release positions: 1) the inner end of lock pin is flush with the interior surface of the wear member, and 2) the inner end of the lock pin does not protrude into the anterior cavity of the wear member.
When the locking pin is flush with the inner surface of the socket, I consider this to be a ‘minimum’ release position. When the locking pin is further removed from the wear member this provides a continuum of release positions. Adamic thus discloses a continuum of release positions starting at a minimum release position. Therefore, Adamic does not disclose a single discrete release position as defined in the claims.
The claims are novel in light of D1 (US 6,959,506 Adamic).
D2 - Torq Lok
The Opponent states at paragraphs 83-85:
“As with D1, the only issue in dispute appears to be whether the Torq Lok disclosed “a release position where the wear member can be installed on and removed from the base”.
The Torq Lok was in “a locked position” when the pin was fully screwed into the polymer retainer and the top of the screw was flush with the top surface of the wear member: see Drawing 4 in Ronneby Full Court at [107]. This constitutes “a locked position” within the meaning of claim 1 of the Application, applying the opponent’s construction.
The Torq Lok was in “a release position” when the pin was screwed or backed-off so that the inner (distal) end of the screw did not project into the cavity of the wear member: see Drawing 1 in Ronneby Full Court at [103]. This constitutes “a release position” within the meaning of claim 1 of the Application, applying the opponent’s claim construction.”
To the extent that D2 (Torq Lok) is essentially the same as D1 (US 6,959,506 “Adamic”), it similarly fails to disclose all the claimed features.
The Opponent states at paragraph 86:
“Alternatively, the opponent contends that the Torq Lok satisfies ESCO’s proposed construction. For example, taking into account the gauge component supplied with the Torq Lok, the release position was “defined”, “definite” and “set”.”
The only evidence in this case relating to the gauge is in Mr Briscoe declaration at paragraph 6.7 (with my emphasis in bold):
“I recall clearly that the plastic retainer was pre-installed in the wear member, but the pin was separate. In line with the decision of Justice Jessup, it appears that at some subsequent time Quality Steel began shipping the pin within the wear member. However, it appeared to me from what was provided to ESCO that this was not the case for all the locks or from the date that the locking system was first sold. I note from the decision that when Quality Steel started shipping the wear member with the pin in the base, they used a gauge to set the lock in the appropriate position so that the wear member could be installed on the base without backing out the lock.”
There is insufficient evidence about what the gauge is and how it works. Consequently, the claimed invention is novel in light of Torq Lok.
D3 - US 7,762,015
D3 is a US patent titled “Ground Engaging Tool System”. It was published on 27 July 2010.
An embodiment of the invention in D3 is shown in figures 4 and 5:
The view of the component in the unlocked (release) position is provided in figure 5:
And locked position in figure 9:
Close up in figures 21e and 22e:
The Opponent states at 95 to 97:
“Broadly, the locking mechanism of D3 operates as follows. The wear member is attached to the base (an adapter), and a portion of the base (e.g. steel shaft) slides into a slot that is provided on the lock. The lock is then rotated so that the entrance to the slot is blocked and the base portion cannot slide out of the slot. This is the locked position.
D3 discloses all of the features of claims 1, 3 and 4 of the Application, for the reasons explained by Dr De Wit in the claim chart at JDW-T3.
D3 is the prior art that apparently prompted the applicant to amend claim 1 by inserting the words “a holding component moveable in the mounting component in both inward and outward directions…” in February this year. However, this claim amendment does not avoid a finding of anticipation.”
The Opponent states at 98:
“More particularly, as Dr De Wit explains in De Wit 2 at [17]:
There is very clearly movement of the lock 200 (holding component) in the retainer bushing 300 (mounting component) but it is primarily a rotational movement. I also believe that there is inward and outward movement as now required by amended feature 1(viii). If you look at figures 21a to 21e of D3 there are bevelled surfaces adjacent surface 224 of the rotatable lock 200. As the lock 200 is rotated these bevelled surfaces would engage with “rib” 341 of the retainer bushing 300 shown in the figures 22a to 22e. The bevelled surfaces would engage with ‘ribs’ 341 during rotation between release and locked positions and would move the lock 200 in the inward/outward direction. This would “drive home” the lock 200, most likely to stop it moving about too easily in the retainer bushing 300 during use”.”
The Applicant states:
“The Opponent asserts that Smith discloses “a holding component moveable in the mounting component in both inward and outward directions”. Dr De Wit acknowledges that the movement of the lock 200 in retainer bushing 200 is “primarily a rotational movement”. However, he seeks to infer from the drawings of Smith that there is an element of translational movement in the movement of these parts, pointing to the interaction between “bevelled surfaces adjacent surface 224 of rotatable lock 200” in figures 21a to 21e and ribs 341 in figures 22a to 22e.
There is nothing in Smith that suggests that lock 200 moves in both inward and outward directions within retainer bushing 300. The references in the specification to the movement of the lock within the retainer bushing all describe the movement as rotational only, and Dr De Wit himself described the lock as being “rotated” within the retainer bushing. Mr Briscoe also considers that the lock “moves rotationally without any lateral movement when in the bushing”.
Dr De Wit also appears to mischaracterise the role of the ribs 341 in his description of how lock 200 moves laterally within retainer bushing 300, stating “[t]he bevelled surfaces would engage with the ribs 341 during rotation between release and locked positions and would move the lock 200 in the inward/outward direction. This would ‘drive home’ the lock 200, most likely to stop it moving about too easily in the retainer busing 300 during use.” However, the only purpose for the ribs 341 described in the specification is for “preventing lock 200 from unintentionally slipping out of retainer bushing 300”.”
I understand that the Opponent’s argument is that as the lock is rotated between the release and locked positions the bevelled surface of the lock slides against the rib 341.
The top surface of the lock is a flat horse-shoe shape. The two ends of the horseshoe shape are angled. The ends are presumably angled to guide the lock as it slides against the rib 341 as it rotates.
If the lock had a biasing means pushing it inwardly, then there would be a small yet distinct inward/outward movement as the lock rotated from an unlocked to locked position, with one angled end of the horseshoe shape acting like a ramp as it engaged with and slid along the rib 341. However, the document does not disclose a biasing means. D3 does not explicitly disclose a holding component moving in an inward or outward direction.
The claims are novel in light of D3 (US 7,762,015).
Novelty conclusion
The claims are novel in light of the prior art raised by the opponent.
Inventive step legal principles
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).
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.
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
The Opponent’s arguments with respect to inventive step in relation to D1 and D2 are predicated on the continuum definition of locked and release position. I have construed these terms to be singular and discrete, thus the opponent’s arguments are obviated. I note that the Opponent does not argue the claims lack an inventive step in light of D3.
There is no evidence or submissions explaining how or why the prior art would be modified by a person skilled in the art to include singular and discrete release and hold positions. Furthermore, I am not satisfied that a person skilled in the art would modify the inventions disclosed in the prior art documents such that they would include the discrete release and locking positions.
Consequently, the claims are not considered to lack an inventive step.
Support – legal principles
Section 40(3) states:
The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The requirement for support is intended to ensure that there is a basis in the description for each claim, and that the scope of the claims must not be broader than is justified by the extent of the description, drawings and the contribution to the art. There must also be consistency, or basis, for each claim in the description. This has been stated as meaning that “the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words ... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art” (Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [97] per Lord Neuberger quoting with approval from Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653).
The requirement of support can be summarised as the scope of the claims “should correspond to the technical contribution to the art” (Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon) at 659).
In Biogen Inc v Medeva plc [1996] UKHL 18; [1997] RPC 1 at [57], Lord Hoffman referred to Asahi Kasei Kogyo KK’s Application [1991] RPC 485 to iterate that, for matter to be capable of supporting an invention, it must contain an “enabling disclosure”. That is, it must disclose the invention in a way which will enable it to be performed by a person skilled in the art. Lord Hoffmann subsequently described (at [63]) a long-established principle of patent law in the UK:
“... namely, that the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms. The patentee need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them.”
Support
As foreshadowed in my letter of 1 November 2019, I will invoke s 60(3) to investigate whether the claimed invention is supported by the description.
Subsection 60(3) of the Act provides:
The Commissioner may, in deciding a case, take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not.
In this opposition, although the ground of support was in the Statement of Grounds and Particulars this ground of opposition was not pursued in the Opponent’s submissions. During the hearing I observed what I considered a significant support issue.

In the letter of 1 November 2019 I stated:
“At the hearing I noted that the invention described included a mechanical device that held the holding component in either of a release position or a locked position, whereas the invention claimed was only limited to the holding component being in (and movable between) either the release position or the locked position.
I noted that claimed feature of the holding component being in the release position and locked position encompassed a mechanical device that acted to hold these positions (as described), but also might encompass things such as a visual indicator (for example alignment markings) of the release position and the locked positions. The claim may also include within its scope other things such as an electronic sensor system measuring for identifying pre-determined positions of the holding component.”
The Opponent states in their further submissions:
“…[T]he Delegate is (with respect) correct to observe that claims 1 to 6 and 8 encompass within their scope “things such as a visual indicator (for example alignment markings) of the release position and the locked positions.” and “other things such as an electronic sensor system measuring for identifying pre-determined positions of the holding component”. By way of example only, other unsupported means might include: having interference members (such as protrusions that provide resistance to overcome), use of integrated or external alignment tools, having one or more frangible members that provide feedback through controlled breakage at particular positions, or indeed any one of a very large number of possible means that are clearly not supported by the disclosure provided in the specification.
In other words: so far as claims 1 to 6 and 8 encompass locks that have a “defined”, “discrete” or “set” release position and locked position, the claims place no limitation whatsoever on the means that is used to define or identify those positions.”
The Applicant states:
“As set out at paragraph 7.12 of the earlier submissions, the two positions of the lock "are pre-determined positions in the sense that they are predetermined to ease the lock's use by defining a specific "ready to install" release position…and a specific second, locked, position to retain the wear member for "more reliable installations"." The ability to secure the lock in the "ready to install" position is made possible by the mechanical securing of the lock, which enables the wear member to be shipped with the lock in this position. The ease of use set out in the Opposed Application would not be possible in the scenarios proposed by the Delegate.
At set out at paragraphs 7.13 and 7.14 of the earlier submissions, the two positions are referable only to the lock and wear member. There is no suggestion in the specification that the positions could be referable or identifiable only by something external to these two parts, including an electronic sensor.
For the reasons set out above, having regard to the context and language of the Opposed Application, the locked and release positions are intended to describe two positions in which the lock can be mechanically secured in the wear member and, accordingly, the definition of those positions occurs mechanically, not non-mechanically. If that construction is accepted, then on the basis of the Delegate’s concerns as expressed in 1(a) to (c) above, there is compliance with section 40(3).”
I agree with the Applicant that the invention described provides that “the definition of those [locked and release positions] positions occurs mechanically”. Furthermore, I consider that a mechanical means for defining the locked and release positions to be the technical contribution of the invention. However, the invention defined in claims 1 to 6 and 8 does not contain such a restriction. As set out in my letter of 1 November 2019, I consider that claims 1 to 6 and 8 include within their scope non-mechanical means to determine if the holding device is in the release position and the locked position.
Consequently, claims 1 to 6 and 8 extend beyond the disclosure and thus lack support.
To overcome this ground of opposition the Applicant must amend the claims to restrict the scope of the claims to a mechanical means to provide feedback to the user that the holding device is in the release and locked positions.
Utility legal principles
Section 7A of the Patents Act 1990 (Cth) requires that the invention (so far as claimed) is useful. In Ranbaxy Australia Pty Ltd v Warner-LambertCoLLC [2008] FCAFC 82 at [141] it was stated that "the invention as claimed must attain the result promised by the patentee".
In Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at [340], Beach J proposed a three-question test when considering utility:
i. What has the patentee promised for the invention as described in the relevant claim?
ii. Is the promise useful?
iii. Has that promise been met?
It was also established by the Full Federal Court in H LundbeckAJS v Alphapharm Pty Ltd [2009] FCAFC 70 that:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.”
The promise of the invention was recently considered in ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 which found that all the promises of the invention had not been achieved by the claimed invention.
Utility
The Opponent states:
“Paragraph [94] of the specification of the Application promises that:
[94] The use of a lock in accordance with the present invention provides many benefits: (i) a lock integrated into a wear member so that the lock ships and stores in a ready to install position for less inventory and easier installation; (ii) a lock that requires only common drive tools such as a hex tool or ratchet driver for operation, and requires no hammer; (iii) a lock with easy tool access; (iv) a lock with clear visual and haptic confirmation of correct installation; (v) a new lock provided with each wear part; (vi) a lock that is positioned for easy access; (vii) a lock with a simple intuitive universally understood operation; (vii) a permanent mechanical connection between components of differing geometric complexity creates a finished product with features and benefits extracted from specific manufacturing processes; (viii) a lock integration system built around simple castable feature where the integration supports high loads, requires no special tools or adhesives and creates a permanent assembly; (ix) a lock with a hex engagement hole elongated on one facet allowing easier cleanout of soil fines with simple tools; (x) a lock located with a central part of the wear assembly to protect the lock from wear and reduce the risk of lock ejection; (xi) a lock with reaction lugs on the lock collar to carry system loads perpendicular to bearing faces; (xii) a retaining clip installed at the manufacturing source that holds the collar into the wear member while also biasing the collar against the load bearing interface and taking slack out of the system; (xiii) a design approach that simplifies casting complexity while supporting expanded product functionality; (xiv) a design approach whereby critical fit surfaces in the lock area need only be ground to fit one part which [could act as a gage; and (xv) a design that fits within standard plant processes.]
The invention so far as claimed in every opposed claim lacks utility, because each opposed claim includes embodiments that will not achieve the above promises.
For example:
(a) None of claims 1 to 6 and 8 are limited by a detent/recess lock latch mechanism. However, the Application teaches that this feature is what achieves the promise of “a lock with clear visual and haptic confirmation of correct installation”: see the Application at [88]. Therefore, claims 1 to 6 and 8 lack utility for including embodiments that will not achieve promise (iv) above.
(b) None of claims 1 to 7 are limited by a hex hole facet elongation mechanism. However, the Application teaches that this feature is what achieves the promise of “easier cleanout of soil fines with simple tools”: Application at [85]. Therefore, claims 1 to 7 lack utility for including embodiments that will not achieve promise (ix) above.
(c) Claim 5 is not limited by any requirement for a retainer inserted into the hole of the wear member outside of the body adjacent to the lugs. However, the Application teaches that this feature is what prevents disengagement of the lugs from the shoulders: Application at [82]. Therefore, the invention claimed in claim 5 includes embodiments that will not work (i.e. embodiments where the collar lugs will disengage from the shoulders) and the claim lacks utility.”
The Applicant states:
“The Opponent asserts that the claims lack utility. In particular, it asserts that paragraph [94] of the Opposed Application amounts to the “promises for the asserted invention made by the Applicant”, and that not all of the “promises” are met by the claims. However, properly understood, and as Mr Briscoe explains, paragraph [94] simply “provides a number of benefits that might be provided by this lock.” Dr De Wit does not provide any comments (or respond to Mr Briscoe) on this paragraph.
In the circumstances, the Opponent’s case fails at the outset because paragraph [94] does not provide a list of promises, each of which must be met. That is, paragraph [94] does not set out a list of every advantage to be provided by every embodiment of the lock as claimed.”
The Ronneby Road (supra) decision found that all promises of the invention must be met. In this case, I am not satisfied that paragraph 94 are promises of the invention as (broadly) claimed. Instead, I consider paragraph 94 explains advantages of particular embodiments of the invention. For example, the advantage of only requiring common drive tools such as a hex tool which is listed as the second advantage in paragraph 94 is visible at item 280 in figure 28, whereas the claimed invention is silent to about the invention’s compatibility with existing drive tools.
The specification does not contain an explicit promise about the claimed invention. I consider it implied that the promise of the invention is simply to provide an alternative to known wear assembly securing means. As presently construed, I am satisfied that the invention fulfils this (implied) promise. I consider the claimed invention to meet the requirement of utility.
Conclusion
The claims are novel, inventive and useful.
Claims 1 to 6 and 8 lack support. The Applicant is given 2 months from the date of this decision to propose suitable amendments to overcome this finding.
Costs
The opposition is successful. However, the opposition is successful only on the basis of a ground raised by the hearing officer under s 60(3). Consequently, I consider it appropriate that no award of costs is made.
Xavier Gisz
Delegate of the Commissioner of Patents