CQMS Pty Ltd v ESCO Group LLC
[2020] APO 5
•29 January 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2020] APO 5
Patent Application: 2014262221
Title:Wear part monitoring
Patent Applicant: ESCO Group LLC
Opponent:CQMS Pty Ltd
Delegate:Xavier Gisz
Decision Date: 29 January 2020
Hearing Date: 28 October 2019, in Canberra
Catchwords: PATENTS - section 59 opposition to grant of a patent – grounds of novelty, inventive step, support, full disclosure, clarity - claims 1, 6, 7, 15 and 18 lack inventive step – opposition to other grounds unsuccessful – costs awarded
Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Wayne McMaster and Rebecca Dutkowski
Counsel for the opponent: Chris Burgess and Edwina Whitby
Patent attorney for the opponent: Fraser Smith
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014262221
Title:Wear part monitoring
Patent Applicant: ESCO Group LLC
Date of Decision: 29 January 2020
DECISION
Claims 1, 6, 7, 15 and 18 lack an inventive step in light of D14.
The Applicant is given 2 months from the date of this decision to propose suitable amendments to overcome this finding.
Costs are awarded against the Applicant.
REASONS FOR DECISION
Background
The matter relates to patent application 2014262221 (the Application) in the name of ESCO Group LLC (the Applicant). The Application is a convention application filed on 12 November 2014 with the basic document being US application number 61/908,458 with a priority date of 25 November 2013.
The Application was advertised as accepted on 29 March 2018. A notice of opposition to grant was filed on 29 June 2018 by CQMS Pty Ltd (the Opponent). The statement of grounds and particulars was filed on 28 September 2018.
A request to amend the statement of grounds and particulars was made on 24 January 2019. The amendment was allowed on 20 February 2019.
Evidence in support was completed on 20 December 2018. Evidence in answer was completed on 8 April 2019. Evidence in reply was completed on 11 June 2019. The opposition was heard in Canberra on 28 October 2019.
Evidence
The evidence filed in the opposition consists of the following documents:
Evidence in support consisting of:
· A declaration by Dr Nicholas Hillier (1st declaration) with Exhibits NH-1 and NH-2, NH-D1 to NH-D15
· A declaration by Dr Nicholas Hillier (2nd declaration) with Exhibits NH-T1 to NH-T15
Evidence in answer consisting of:
· A declaration by Rebecca Dutkowski together with Annexures RD-1 to RD-3 (wherein annexure RD-1 is a declaration by Rodney Keith Clarke)
· A declaration by Hezekiah Russel Holland
Evidence in reply consisting of:
· A declaration by Dr. Nicholas Simon Hillier (3rd Hillier declaration) and Exhibits NH-EIR1 to NH-EIR8.
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 grounds of opposition relied on by the Opponent are as follows: novelty, inventive step, sufficiency, support, and clarity.
The invention
Paragraph 2 of the description states:
“The present invention pertains to a system and tool for monitoring the status, health, and performance of wear parts used on various kinds of earth working equipment.”
Two embodiments of the invention are shown in Figures 9 and 10:
The corresponding description states at paragraph 53:
“In accordance with one embodiment of the invention the monitoring system 25 having at least one electronic sensor is incorporated with the bucket 3 so that the sensor always has a clear line of sight to the digging edge or lip 5 of the bucket 3 regardless of how the operator orients the bucket 3 during the digging and dumping operation (Figures 9 and 10). The electronic sensor may be, for example, integrated with the shell 4 of the bucket (Figure 10), integrated between two interior plates of a bucket having a double wall shell (not shown), or installed on the bridge 29 or top of the bucket (Figure 9). The electronic sensors may be, for example, a camera, an ultra-sonic sensor, or a laser interferometer.”
Claims
The specification ends with 21 claims; 2 independent claims and 19 dependent claims:
l. A monitoring system comprising an excavating bucket having walls defining a containment portion for gathering earthen materials, and a digging edge, at least one wear part secured to the digging edge, at least one electronic sensor secured to one of the walls, and a programmable logic device receiving information from the at least one electronic sensor and making a determination of at least one of presence, health, wear, impact, fill, and performance of the bucket and/or the at least one wear part.
2. A monitoring system in accordance with claim 1 wherein the programmable logic device receives information from the at least one electronic sensor to determine when the wear part has been worn to a state where the wear part should be replaced.
3. A monitoring system in accordance with claim 1 or 2 wherein the programmable logic device receives information from the at least one said electronic sensor to determine when the at least one wear part has been lost.
4. A monitoring system in accordance with claim 3 wherein the programmable logic device receives information from the at least one said electronic sensor to recognize special features on the wear part.
5. A monitoring system in accordance with any one of claims 1-4 wherein at least one said sensor is secured to the wear part and communicates with the programmable logic device so that information from the at least one electronic sensor secured to the bucket and the at least one electronic sensor secured to the wear part are used to make the determination.
6. A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one said electronic sensor to calculate an operational efficiency of the bucket and/or the at least one wear part.
7. A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one electronic sensor to determine the level of fill in the bucket.
8. A monitoring system in accordance with claim 7 wherein the programmable logic device receives information from the at least one electronic sensor and a database of fill profiles for the bucket to determine the level of fill in the bucket.
9. A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes one of a camera, a laser range finder, and an ultrasonic sensor.
10. A monitoring system in accordance with claim 9 including a vibration dampening device supporting and the at least one electronic sensor.
11. A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one said electronic sensor to determine a high impact event on the at least one wear part.
12. A monitoring system in accordance with any one of the preceding claims wherein the programmable logic device receives information from the at least one electronic sensor to determine the cycle time of a digging cycle.
13. A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes one of a pressure sensor, a strain gauge, a load cell, and an accelerometer.
14. A monitoring system in accordance with any one of the preceding claims wherein the at least one electronic sensor includes an inclinometer and/or GPS device.
15. A monitoring system in accordance with any of the preceding claims wherein the programmable logic device generates an alert based on the information received from the at least one electronic sensor.
16. A monitoring system in accordance with any of the preceding claims wherein the programmable logic device receives information from a database to determine the type of wear part secured to the digging edge.
17. A monitoring system in accordance with any of the preceding claims wherein the programmable logic device receives information from a database with bucket and/or wear part geometry.
18. A bucket for use with excavating equipment, the bucket comprising: a plurality of walls defining a containment portion for gathering earthen material; a digging edge to contact the earthen material, the digging edge extending along one of the walls defining the containment portion; at least one wear part secured to the digging edge; and at least one electronic sensor mounted to one of the said walls of the bucket to monitor at least one of presence, health, wear, impact, fill, and performance of the bucket and/or the wear part.
19. A bucket in accordance with claim 18 wherein the electronic sensor is mounted so that it has a clear line of site to the digging edge.
20. A monitoring system in accordance with claim 18 or 19 wherein the at least one electronic sensor includes one of a camera, a laser range finder, and an ultrasonic sensor.
21. A monitoring system in accordance with any of claims 18-20 wherein the at least one electronic sensor includes one of a pressure sensor, a strain gauge, a load cell, and an accelerometer.
Claim Construction
Bucket walls
The Applicant states at paragraph 7.6 of their submissions:
“The “wall” of the bucket is distinguished from other elements of the bucket. In particular, the walls in the claims “define a containment portion for gathering earthen materials”. That is, the “walls” define the portion of the bucket which will contain the earthen materials, not the part that will dig into the ground. This is made clear because the claim distinguishes between the walls and a “wear part” and the “digging edge”, neither of which are defined having the sensor secured to them. The same is true in claim 18 which requires the digging edge to extend along one of the walls – not being part of the wall, but extending along it.”
The Applicant is asserting that all containment portions of the bucket are walls of the bucket except the edge of the bucket. The front edge of the bucket is covered to some extent with wear members, and thus the edge of the bucket is not fully exposed. This is in contrast to the other parts of the bucket wall which are fully exposed. I accept the walls of the bucket are different from, and does not include, the front edge of the bucket.
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
The Opponent argues that the claimed invention lacks novelty in light of JP 07-042201A and US 2003/0112153A1.
D14 Japanese Patent Application Publication No. 07-042201A
D14 discloses an excavation bucket for a hydraulic excavator. The invention is illustrated in Figure 1:
The bucket has sensors (51, 52, 53) on the bucket to determine the fill level as illustrated in Figures 2 and 5:
Claim 1
The Opponent does not assert that claim 1 lacks novelty in light of this document, presumably because this document does not explicitly disclose the use of a programmable logic device. However, the Opponent does assert that claim 18 lacks novelty in light of this document.
Claim 18
The Opponent states:
“D14 discloses an excavator bucket having each feature of claim 18. Exemplary references are provided below.
Claim 18
IntegerClaim feature Example of disclosure in D14 18(i) A bucket for use with excavating equipment, the bucket comprising: Figs 1 and 2 of D14 disclose the excavator bucket. (ii) a plurality of walls defining a containment portion for gathering earthen material; The walls defining the bucket containment portion are visible in Figs 1 and 2. (iii) a digging edge to contact the earthen material, the digging edge extending along one of the walls defining the containment portion The bucket shown in Figs 1 and 2 has a digging edge that extends along one of the walls defining the containment portion (see the left hand wall in Fig 2). (iv) at least one wear part secured to the digging edge The jaggered [sic] line that is visible on the digging edge of Fig 2 illustrates bucket teeth, which will be secured to the digging edge. Alternatively, it is implicit to the skilled person that the bucket of D14 will have at least one wear part secured to the digging edge – the bucket would be abnormal if it did not: Hillier 3 at [47]. (v) at least one electronic sensor mounted to one of the said walls of the bucket to monitor at least one of the presence, health, wear, impact, fill, and performance of the bucket and/or the wear part Each pair of light transmitting and receiving devices comprises at least one electronic sensor mounted to one of the walls of the bucket to monitor the bucket fill level.
This document does not explicitly disclose a wear part secured to the digging edge of the bucket.
Hillier states in his 3rd declaration in the last 2 sentences of paragraph 47:
“The bucket of D14 would almost certainly have wear members. In fact, it would be abnormal if it didn't.”
The evidence that “D14 would almost certainly have wear members” is not considered an inherent disclosure of the wear members. It is plausible that the bucket of D14 would have a non‑replaceable edge. D14 does not disclose all the feature of claim 18, thus claim 18 is novel in light of D14. Furthermore, D14 discloses a fixed circuit (an ‘AND’ gate) to activate the buzzer; the ‘AND’ circuit is not considered a disclosure of a programmable logic, thus claim 1 is novel in light of D14.
D8 United States Patent Application Publication No. 2003/0112153A1
D8 discloses an excavator:
The digging edge contains a detector which detects when a tooth falls off:
The Opponent states in their submissions:
“The only dispute on lack of novelty and claim 18 appears to be whether the sensor of D8 is mounted to a bucket wall …”
The Applicant states in their submissions at paragraph 7.6:
“The “wall” of the bucket is distinguished from other elements of the bucket. In particular, the walls in the claims “define a containment portion for gathering earthen materials”. That is, the “walls” define the portion of the bucket which will contain the earthen materials, not the part that will dig into the ground. This is made clear because the claim distinguishes between the walls and a “wear part” and the “digging edge”, neither of which are defined having the sensor secured to them. The same is true in claim 18 which requires the digging edge to extend along one of the walls – not being part of the wall, but extending along it.”
I have found that the edge of the bucket is not a wall of the bucket. D8 discloses the sensor in the edge of the bucket. Therefore D8 does not disclose the invention defined in claims 1 and 18.
Novelty conclusion
The invention defined in claims 1-21 is novel in light of prior art documents D8 (US2003/0112153A1) and D14 (JPH 07-042201A).
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 argues that the claimed invention lacks inventive step in light of JP 07-042201A and US 2003/0112153A1, US 2010/0142759 (or when combined with D5, D6 and D7, which are three articles about the Motion Metrics system), US 2005/0261799, the “HoistCam YouTube Video”.
The person skilled in the art
The Opponent states:
“In the present case, the skilled addressee is an engineer who has experience working in the field of excavating equipment and wear parts, and more particularly, experience in relation to systems that can monitor such excavating equipment and wear parts.”
Dr Hillier, Mr Holland and Mr Clarke have each have varying levels of experience in the field of mining. They each provide expert evidence regarding the invention and common general knowledge at the priority date. I am satisfied that all three have provided relevant evidence. I will assess the evidence according to its relevance to particular aspects of the analysis.
The problem
The description provides in the ‘background to the invention’ at paragraph 6:
“Because the above systems [several different prior art inventions discussed] are located on the shovel boom, the systems only have a clear view of the wear members during a portion of the digging and dumping operation. As a result, there is potential for the systems to not immediately register that a wear member has been lost or needs replacement. In addition should the systems incorrectly register that a wear member has been lost, the systems may have to wait until the next digging and dumping cycle to confirm that the wear member is truly lost and that an object was not obstructing the systems view and registering a false alarm.”
Although the background to the invention focuses on monitoring the wear member, I consider the problem is slightly more general including the monitoring of other aspects of the excavation bucket (e.g. fill level).
D14 - Japanese Patent Application Publication No. 07-042201A
Would it be obvious to have a wear part secured to the digging edge?
I have found that this document does not explicitly disclose a wear part secured to the digging edge of the bucket.
The Opponent states in their submissions:
“If (contrary to the opponent’s submissions on lack of novelty viz. claim 18) the feature of “at least one wear part secured to the digging edge” is not disclosed by D14, this would not assist the Applicant to avoid a finding that claim 1 (or claim 18) lacks an inventive step in light of D14, plus the CGK.
(a) Teeth and other wear parts were routinely secured to the digging edge of the CGK excavating buckets.
(b) “The bucket of D14 would almost certainly have wear members. In fact, it would be abnormal if it didn’t”: Hillier 3 at [47].
(c) Hence, it was (very) obvious to the skilled person to implement D14 using a bucket having teeth, or other wear parts, secured to the digging edge.”
The Applicant states in their submissions:
“There is no explanation why the person skilled in the art would be motivated to change D14 so as to:
(a) add a wear part when the excavator described in D14 is apparently being used for soil and earth rather than more abrasive environments, especially in circumstances where it appears that the wires to the sensors on D14 may be external to the bucket and thus would be prone to damage if used in harsh environs;”
D14 (the machine translation provided by espacenet) states at paragraph 3:
“However, in the case of underwater work such as scooping up the earth and sand on the riverbed, and in the case of excavation of earth and sand in a deep ditch, the operator cannot visually observe the inside of the bucket. Therefore, it is difficult to check the amount of soil that has entered the bucket, and more particularly, in the case of a long-boom arm that uses a work machine for a lifting ship or a dredger, it is more difficult to check. A decline in efficiency was unavoidable.”
And at paragraph 14:
“It is to be noted that the present invention can be applied to a bucket of a long boom arm which can not secure a 100% field of view like a lifting ship or dredging ship, in addition to a hydraulic excavator as a vehicle a similar effect can be obtained.”
Thus the invention in D14 is for various environments such as dredging and excavation.
The Applicant has drawn the inference that, since the wires extending from the sensor in the bucket to the cab of the vehicle are exposed, the disclosure of D14 could not be used in “harsh environs” and thus the bucket would not need to use wear parts.
The Applicant’s inference is not entirely persuasive for several reasons. Firstly, the ‘wire’ of D14 is kept concealed. Optic fibres 13 is concealed in the side lip (10) of the bucket which is described as ‘robust’ at paragraph 10:
“The actual light emission and reception are performed by transmitting and receiving light in the operator cab shown in FIG. This is performed by the device 12. This eliminates the need for a power source on the side of the side lip 10 of the bucket 2, and only stores one end of the optical fiber 13 in the slit 14 provided in the side lip 10, making the structure of this portion robust.”
The optic fibre then runs from the bucket to the arm of the excavator and then to the cab. How the fibre is run is not explained in D14. It is reasonable to assume that some care would be taken in protecting the optic fibre as it runs from the bucket to the cab (since care was taken to protect the optic fibre at the bucket).
Secondly, it is notable that the present invention itself also has wires running from the sensor in the bucket to the cab via the boom. Thus, there mere existence of wire does not in itself indicate that the excavator is only be used in a gentle environment. This point is made in the Opponent’s submissions at paragraph 61:
“Consistently with the feasibility of the D14 wiring, the Application itself teaches the connection of hard wires to the sensor(s) located on the bucket wall (at [54]). The Application does not disclose how the wires should be routed to avoid damage, because that is a matter that lies well within the skill of the calling.”
I consider that the use of wear members for the digging edge of an excavator bucket is common general knowledge. I am satisfied that a person skilled in the art would, as a matter of routine, in applying the disclosure of D14 to the present problem to include wear members for the digging edge of the excavator bucket. Consequently, claim 18 lacks an inventive step in light of D14 (JPH 07-042201A).
Would it be obvious for D14 to use programmable logic?
I have found that D14 does not explicitly disclose the use of a programmable logic device.
The Opponent states at paragraphs 57 and 58:
“D14 does not disclose that the logic device is “programmable”, as claim 1 requires. However, any skilled person reading D14 at the 2013 priority date would have recognised, as a matter of course, that the D14 monitoring system could conveniently be implemented using a programmable logic device, instead of an AND circuit.
In short: programmable logic devices were common at the priority date, and they were routinely used to make basic determinations of the kind required by D14. The use of a programmable logic device to implement D14 was a very obvious (indeed, trivial) design variation at the priority date: Hillier 3 at [53]. Accordingly, claim 1 lacks an inventive step in light of the CGK plus D14.”
The Applicant states at paragraph 9.27 and 9.28:
“It is not until his reply evidence that Dr Hillier finally asserts, baldly, that “by 2013 programmable logic devices were common and would be the expected way to implement a logic circuit”. But even that does not address a relevant test for inventive step and is not proper evidence upon which to invalidate a patent application.
There is no explanation why the person skilled in the art would be motivated to change D14 so as to:
…
(b) change the monitoring system so as to use a programmable logic device when there is no explanation as to what the logic device would be programmed to do, nor why it would be necessary to change what is disclosed to work in D14. In particular, D14 appears to have used the optical fibres as an on/off switch to detect when the bucket was full so that there would be no motivation to add a programmable logic device (and thus make it more complicated).”
I accept programmable logic such as microcontrollers were common general knowledge at the priority date as a means of processing inputs to activate outputs.
The Applicant’s argument that “D14 appears to have used the optical fibres as an on/off switch” and consequently has some bearing on the type of electronics used is an odd argument. D14 converts the signal from optic fibres into electronic signals with phototransistors. The fact that the signal was optical before it was converted to an electronic signal seems irrelevant to the type of electronic processing circuit used.
I consider that a person skilled in the art would, as a matter of routine, modify D14 such that it used a programmable circuit in place of the non-programmable circuit, since this would be rudimentary (and arguably easier) device to achieve the desired result with the equipment available to an electronic engineer at the priority date.
Consequently, I consider claim 1 to lack an inventive step in light of D14 (JPH 07-042201A).
Inventive step of Dependent claims in light of D14 (JPH 07-042201A)
I have found the independent claims 1 and 18 lack an inventive step in light of D14 (JPH 07‑042201A). The dependent claims are considered below.
Claims 2-5
D14 discloses a fill level detection system. It is not clear how D14 could be modified such that it could determine the level of wear on a wear part (claim 2), determine when a wear part has been lost (claim 3), recognise special features on the wear part (claim 4), include a sensor secured to the wear part (claim 5). Claims 2-5 are considered inventive in light of D14.
Claim 6, 7
Mr Holland states at 22.17:
“Claim 6 refers to the programmable logic device being able to calculate "an operational efficiency of the bucket and/or the at least one wear part' using the information from the at least one electronic sensor. I consider that the operational efficiency would include factors such as the performance of the bucket, the level of fill and other factors such as fuel use.”
I am satisfied that operational efficiency would include characteristics such as level of fill. D14 discloses the sensors to measure the level of fill. Therefore claims 6 and 7 lack an inventive step in light of D14.
Claim 8
Mr Holland states:
“Claim 8 also relates to the "fill" aspect of the assessable criteria, but differs from claim 7 in that it uses a combination of the information from the electronic sensor and "a database of fill profiles for the bucket" to determine the level of fill. Buckets tend to fill in a predictable manner so it is possible to use previously established fill profiles to estimate the fill of a particular load.”
Mr Holland states at paragraph 25.7 and 25.8:
“Also at 1 (vii), Dr Hillier suggests that it is unclear how it would be possible to measure the level of fill of a bucket without comparison with a bucket fill profile. I do not consider that it is necessary to have a bucket fill profile to work out the fill level of a bucket. The specification of the Opposed Application provides a camera that is directed towards the bucket, and it would be straightforward to determine the fill of the bucket by using a number of predetermined reference points including the height of the material compared to the side walls, for example. This comment also applies to Dr Hillier's comments at 8 of NH-T1.
Also at 1 (vii) of NH-T1, Dr Hillier suggests that extensive experiments would need to be conducted in order to ascertain the bucket fill profile of a bucket. However, this information can generally be found in the relevant Standards for a bucket type. In my time at ESCO, we used the Standards produced by the Society of Automotive Engineers, which prescribed the fill profiles of different types of excavators and which could be used to calculate the capacity and fill of a bucket. I therefore disagree that extensive experiments would be required to determine the fill profile of a bucket.”
D14 does not disclose the use of a "a database of fill profiles for the bucket". Instead D14 merely discloses whether the bucket is full - that is, a full signal is provided when all light sensors are blocked by the contents of the bucket. The evidence suggests that for some sensor types such as cameras the use of a database of fill profiles to infer the level of fill would be a matter of routine to a person skilled in the art. However I am not satisfied that a person skilled in the art would, as a matter of routine, use a database of fill profiles to determine bucket fill level utilising the array of binary light sensors as disclosed in D14, since three binary sensors would provide insufficient information to map onto a database of fill levels. Claim 8 is considered inventive in light of D14.
Claims 9, 10, 20
D14 discloses a sensor which is a paired light source and photodetector. There is no evidence that a person skilled in the art would modify D14 such that it included a camera, a laser range finder, and an ultrasonic sensor. Claims 9 and 20 are considered inventive in light of D14. Claim 10 which is dependent on claim 9 is also considered inventive.
Claim 11
D14 does not disclose a sensor for recording movement (such as a high impact event). There is no evidence that a person skilled in the art would modify D14 such that it would sense movement. Claim 11 is considered inventive in light of D14.
Claim 12
D14 does not disclose a sensor for recording the cycle time of a digging cycle. There is no evidence that a person skilled in the art would modify D14 such that it would sense cycle time of a digging cycle. Claim 12 is considered inventive in light of D14.
Claims 13, 14, 21
D14 does not disclose a sensor is any of a pressure sensor, a strain gauge, a load cell, or an accelerometer, inclinometer or GPS. There is no evidence that a person skilled in the art would modify D14 to include these types of sensors. Claims 13, 14 and 21 are considered inventive in light of D14.
Claim 15
D14 discloses an alert based on the information received. Claim 15 lacks an inventive step in light of D14.
Claims 16, 17
D14 does not disclose receiving information from a database: a) to determine the type of wear part secured to digging edge, or b) with bucket and or wear part geometry. There is no evidence that a person skilled in the art would modify D14 to include such a database. Claims 16 and 17 are considered inventive in light of D14.
Claim 19
D14 does not disclose a sensor with a clear line of sight to the digging edge. There is no evidence that a person skilled in the art would modify D14 such that the sensor had a line of sight view of the digging edge. Claim 19 is considered inventive in light of D14.
Conclusion on D14
Claims 1, 6, 7, 15 and 18 lack an inventive step in light of D14.
D8 United States Patent Application Publication No. 2003/0112153A1
I have found above that D8 does not disclose the “sensor secured to one of the walls”, instead D8 discloses the sensor secured to the lip or edge which extends from the bucket wall.
The Applicant states in their submissions at 9.31:
“There is also no evidence that someone would be motivated to move the sensor to a wall from between the wear part and the digging edge in D8.”
I have found that the edge is the part of the bucket that is covered by the wear members. The invention of D8 can only operate when the sensor is enclosed by the wear members. Thus the mechanism of D8 cannot readily be modified such that it is not enclosed by the wear members. The invention is inventive in light of D8.
D2 - US 2010/0142759
D2 (US 2010/0142759) is titled “A system and method for detecting a damaged or missing machine part”. The abstract summarises the invention as follows:
“A system and a method for detecting a damaged or missing machine part. The system includes an image capturing device for capturing images of the machine and a processor for processing the captured images. The system may further include a sensible output for providing an indication of a damaged or missing machine part. The method includes capturing images of the machine against a background which moves relative to the machine over time, selecting a pair of time-separated images from the captured images, generating a displacement image from the pair of images, comparing the machine from the displacement image with a machine model, and identifying a damaged or missing machine part from the comparison of the displacement image with the machine model. The method may further include providing a sensible output which indicates a damaged or missing machine part.”
D2 discloses at paragraphs 82 and 83:
“The bucket tooth line of the bucket is analyzed on each upswing of the mining shovel and compared against a base-case scenario of a fully intact tooth line. When a tooth is partially or completely broken or missing, the system automatically alerts the shovel operator by a sensible output in the form of a visual alarm on a touch screen monitor.
With the system of the invention, shovel operators are alerted to partial or complete tooth breakage as soon as the shovel comes into the viewing range of the camera.”
I understand from these paragraphs that the camera is not mounted directly on the bucket, and is instead mounted on the boom to with the bucket is attached.
Providing a different view of the wear members
The Opponent states at paragraph 69:
“More particularly, it would have been obvious to any skilled person reading D2 that if the camera was mounted to the shovel boom, the bucket teeth would sometimes lie outside the camera’s line of site.
(a) D2 itself discloses that the bucket teeth will sometimes lie outside the camera’s line of sight. See e.g.
(i) [0083]: “With the system of the invention, shovel operators are alerted to partial or complete tooth breakage as soon as the shovel comes into the viewing range of the camera”.
(ii) [0022]: this refers to the camera having “a clear image of the bucket tooth line” at “some” (not all) stages of the digging cycle.(b) The skilled person would be familiar with the geometry of the CGK excavating machines and understand why a camera mounted on the shovel boom would not always have a clear line of sight to the bucket digging edge.”
Dr Hillier states at 37:
“The most logical location for this [camera] would have been somewhere on the bucket itself, so that the sensor would always remain in the same (fixed) position and orientation relative to the bucket and always point towards the wear parts/GET. Alternatively, the camera or other sensor could have been mounted on a frame which was in turn mounted to the bucket. Such a frame mounted on the bucket might have allowed the camera/sensor to still remain fixed relative to the bucket and maintain a view of (or pointing towards) the wear parts at all times but without the camera/sensor being directly exposed ( or at least it may have been less exposed) to damage e.g. if the frame were to remain above and out of contact with the material being excavated at all times. A frame mounted to the bucket might also have allowed the wear parts/GET to be observed from a better angle, or an angle where the material in a full bucket may have been less likely to obscure or provide a line-of-sight obstruction between the wear parts and the camera/sensor.”
Positioning the sensor (camera) on the bucket may potentially maintain a view of the wear members for more of the digging cycle than a sensor (camera) mounted on the boom. However, it is notable that during the digging cycle there are points in time when a bucket-mounted camera would be obscured while a boom-mounted camera would not be obscured. For example, when the bucket is full of soil (to a level above the camera) a camera positioned on the bucket wall opposite the wear members would not be able to view the wear members whereas a camera positioned on the boom could potentially have better view of the wear members.
Extreme environment
The Opponent states:
“D2 discloses a monitoring system that has every feature of claim 1, apart from the claimed requirement that the sensor (a camera) is “secured to one of the [bucket] walls”. Instead, in the monitoring system of D2, the camera is “preferably” secured to the shovel boom.”
The Applicant states:
“The Opponent asserts that it would have been obvious to secure the camera of D2 to one of the bucket walls. However, as explained above, the person skilled in the art would not be directly led to move a sensor to the bucket walls from a boom because of significant concerns about the camera surviving and operating well in that position: see paragraphs 9.17 to 9.21, above.”
“9.17 Even if Dr Hillier’s starting point of knowing of the Motion Metrics system or the like was a valid one, his conclusion that the “most logical location for [the sensor] would have been somewhere on the bucket itself” is significantly qualified by his acknowledgement that “attempting to locate the camera/sensor in this way … would, I think have involved challenges, mainly because of the extreme environment in and around the bucket and the potential for damage to the sensor and/or its associated power and/or communication equipment, cables and the like”. Indeed, he was only tentatively dissuaded from this view when he was given D4, being a video that shows the HoistCam camera system produced by Netarus LLC (which he did not recall ever seeing or hearing of). As to that video he noted that it “suggests to me that placing a camera on the bucket of an excavator may have been more feasible than I might have thought, and perhaps more feasible than indicated by my previous comments above” (emphasis added).”
A camera mounted on bucket wall would readily be obscured by dirt and dust covering the window protecting the camera. Furthermore, the window could get scratched or broken.
The description discloses ways to overcome such problems such as positioning a nozzle close to the transparent wall to allow for the spraying of cleaning agent (paragraph 55). The description also discloses vibration dampening devices so that the vibrations of the digging and dumping operation do not negatively affect the electronic sensor.
Overall I am not satisfied that a person skilled in the art would, as a matter of routine, modify D2 such that the camera was positioned on the bucket wall rather than the boom for two reasons. Firstly, the sensor in the bucket wall would not necessarily provide a view of the wear members for more of the digging cycle than the camera positioned in the boom. Secondly, moving the camera to the bucket wall introduces problems such as vibration and the window to the camera getting dirty and scratched.
D2 combined with D5, D6 and D7
Documents D5, D6, D7 are screen captures of webpages. The resolution of the screen captures is so low that the text is unreadable. Going directly to the URLs provided in the second Hillier declaration, the webpages of D6 and D7 can be read. For the purposes of this decision I will assume that the content of the D6 and D7 websites have been unchanged since the apparent date of publication.
I was unable to open the URL of D5 and thus I am unable to ascertain what is disclosed.
The Opponent states:
“D5, D6 and D7 provide further prior art information that reinforces the obviousness of claim 1 in light of the CGK plus D2. For example, D6 and D7 disclose that the camera can be placed in a protective housing (D7) and mounted on “shock-absorbing camera brackets” (D6). D6 also references the use of algorithms that exclude images when the view of the teeth is blocked by dirt, and the use of an LED light to illuminate the shovel teeth during night operations.”
Although D6 and D7 would go some way to overcoming the problems associated with cameras and sensors on excavation equipment, they do not provide impetus for changing the position the camera.
D3 - US 2005/0261799
The Opponent states:
“80. D3 was published on 24 November 2005. It is titled “Method and apparatus to detect a change in a work tool”. Similarly to D2, the document discloses a monitoring system that can identify lost wear parts (such as bucket teeth), together with wear and deterioration. The system preferably uses a laser scanner: at [0023]. Mr Holland describes it as “a good example of a system aimed at trying to detect wear and deterioration. It identifies lost parts but is able to identify wear as well”: Holland at [8.3].
81. The monitoring system of D3 has every feature of claim 1, apart from the requirement that the sensor is secured to one of the walls of the bucket. Instead, D3 discloses that the sensor is positioned in front of the driver cabinet, at the location marked 12 in Figure 1 (reproduced below).
82. Self-evidently, the sensor position (12) will not work for excavators that dig away from the cab of the operator. At least for excavators that dig away, it would have been obvious to any skilled person implementing D3 that the sensor could be mounted on the top wall of the excavator bucket: see Holland at [4.11] and Hillier 3, [35] and [41]. In that event, the monitoring system would have every feature of claim 1.
The argument that if the invention was used on a different type of excavator than is disclosed, then a person skilled in the art would need to modify the invention is tenuous at best. I am not satisfied that a person skilled in the art would, as a matter of routine, make such modifications to the invention disclosed in D3.
D4 - The HoistCam YouTube Video
The opponent states:
“83. D4 was published on YouTube on 2 October 2013. It discloses a camera called the HoistCam. This is mounted to the head portion of an excavator clam shell bucket. The video footage is transmitted back to the operator’s cabinet. This enables the operator to monitor the bucket’s performance during use.”
The camera on hoist cam is not mounted to the wall of the bucket, instead being being attached to a frame which the buckets pivot relative to. I am not satisfied that a person skilled in the art would, as a matter of routine, modify D4 so that the camera was mounted directly to the bucket wall.
The remaining s 7(3) prior art
The Opponent states:
“86. The remaining prior art variously discloses the use of sensors to monitor the damage or loss of bucket wear parts, bucket performance (payload) and (in the case of D13) the performance and condition of a bulldozer blade. Claim 1 is obvious in light of these prior art documents too.
87. Consider, for example, D9 (US Patent 6,518,519 published February 2003). This discloses the use of multiple sensors for monitoring the payload in an excavation bucket. The sensors are coupled with a processor (programmable logic device) that applies algorithms to determine the bucket payload. One of the sensors is an angular sensor (e.g., a rotational position sensor) “coupled with the bucket 20” (col 19, line 5).
88. Plainly, one obvious way of coupling a rotational position sensor with a bucket was to secure the sensor to one of the bucket walls. Because the bucket payload is a measure of bucket “performance” (Holland at [14.3]), this obvious implementation of D9 involves a monitoring system that would have all features of claim 1.”
The Applicant states:
“The Opponent next, and faintly, asserts a lack of inventive step in light of the remaining prior art, but only refers to D9. There is no motivation for moving any of the sensors described in D9 to the wall of a bucket of an excavator, putting aside the other problems with D9 identified by Mr Holland at [24.12] of his declaration.”
D9 discloses the third sensing device ‘coupled with the bucket’ however it is unclear whether how this coupling takes place. A simple rotational sensor would be positioned at the joint of the bucket. A rotational sensor at the joint is not considered to be secured to the wall of the bucket. I am not satisfied that a person would, as a matter of routine, modify the location of the rotational sensor such that it was directly on the bucket. Consequently, the claims are considered inventive in light of D9.
Sufficiency legal principles
Section 40(2)(a) states:
(2)A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;
In order to comply with sec 40(2)(a), the complete specification must provide sufficient information to enable the skilled person to perform the invention over the whole width of the claims, without undue burden or the need for further invention. (The Explanatory Memorandum and Biogen Inc. v Medeva PLC [1997] RPC 1 at 48).
Sufficiency
The Opponent states:
“100. If (contrary to the opponent’s submissions) any claim of the Application involves an inventive step, the specification fails to enable the skilled person to perform the invention across the full claim breadth without prolonged research, enquiry or experiment, or further invention.”
Challenges to putting sensor on wall of bucket
The Opponent states:
“101. More specifically – so far as the applicant asserts that the claimed invention involves an inventive step because the skilled reason would need to overcome the “challenges” of placing a sensor on a bucket wall – the only teaching in the Application of how to address such challenges is the disclosure of a protective camera housing with a vibration dampening device: at [54]-[56] and Figs 9 and 10.
102. That teaching concerns camera sensors, and it fails to address various alleged “challenges” that the applicant’s evidence seeks to raise to avoid a finding of inventive step.”
The Applicant states:
“10.7 The Opponent asserts that, to the extent the claimed invention is inventive, then the specification fails to “address the various alleged “challenges” that the applicant’s evidence seeks to raise [in placing the sensor on the bucket wall] to avoid a finding of [lack of] inventive step”: OS[100]-[102]. The Opponent has not raised such an allegation in its ASoGP and therefore cannot now run it.
10.8 In any event, the evidence the Applicant relies on goes to the question of motivation of the person skilled in the art and, in particular, that such persons would not be motivated to place a camera on the wall of the bucket because of concerns regarding the harsh conditions the camera would therefore be exposed to. The claimed invention is inventive (at least with respect to that integer) because the inventors realised that concern could be addressed, and explained how to do so at paragraph [54]-[56] of the Opposed Application.”
I am satisfied that the ‘challenges’ relating to locating the sensor on the bucket wall have been solved as provided in the description. For example, placing the sensor in a protective housing with a vibration dampening device.
Challenges in using an accelerometer
The Opponent states (with my emphasis in bold):
“… Mr Clarke asserts that it would have been “highly problematic” to locate an accelerometer on a bucket wall at the priority date. In support of that position, Mr Clarke asserts that “there were issues with the reliability of accelerometers, particularly in the harsh environment an accelerometer would be subject to on or near a bucket. Accelerometers at the time were also quite large. There were also issues with battery life … and with permanently hard-wiring accelerometers with long cables back to the power source or data logger, as the likelihood of damage to the wires was high” (at [3.17]).
104. The opponent and Dr Hillier dispute such assertions. But if they are accepted, the inexorable consequence is that the invention claimed in at least claims 1, 6, 11-13, 18 and 21 is not completely described:
(a) All of the aforementioned claims include within their scope embodiments where the sensor is an accelerometer.
(b) The specification contains no teaching viz. how to address any of the above “challenges” when an accelerometer is used.
(c) If (contrary to the opponent’s submissions) it was not within the skill of the calling to overcome the alleged “challenges” associated with placing an accelerometer on a bucket wall, the invention claimed in all claims that encompass an accelerometer sensor would not be completely described, as required by s 40(2)(a).
(d) The same position applies to other alleged “challenges” that are asserted in the Applicant’s evidence, but not solved or otherwise addressed in the complete specification.”The Applicant states:
“10.9 The Opponent next asserts that, if Mr Clarke is right that the use of accelerometers were problematic as at the priority date, then the specification fails to enable the person skilled in the art to address his concerns: OS[103]-[104]. However, the Opponent does not raise this point in its ASoGP and therefore cannot now raise it. In any event:
(a) Mr Clarke’s concern about the battery life in the “Tooth Fairy” product arose because the product needed to emit a signal continuously and the answer to that would be to only emit a signal when a sufficiently strong impact was detected.
(b) In any event, the specification explains that the camera sensor could be wired and there is no reason why that could not have been applied to the accelerometer (both in terms of wiring to avoid battery issues and placement).
(c) Mr Clarke’s statement that “there were issues with the reliability of accelerometers” does not mean that they would not work, only that they might not always work well.
(d) Finally, neither Mr Holland or Dr Hillier expressed any concerns about the use of accelerometers.”
Interestingly, the Opponent does not agree with the Mr Clarke’s assessment that it would be difficult to attach an accelerometer on a bucket wall (presumably because Mr Clarke’s assessment can be used to support another ground of opposition, e.g. inventive step). Although there may be challenges in using an accelerometer (such as reliability and batter life), these challenges are the kind of minor difficulties that a person skilled in the art would be expected to overcome in implementing the invention through routine steps.
Software for optically assessing the wear on wear members
The Opponent states:
“First, the specification discloses the use of a particular vision integration software program (“In-Sight sold by Cognex”) that functions to determine the wear of bucket teeth by counting the number of pixels between a superimposed reference line, and the leading edge of the excavation bucket: Application at [46]. However, the In-Sight software was not part of the CGK at the priority date, and the specification does not disclose the information that would be necessary to enable the skilled person to replicate the software method, without prolonged research, enquiry and experiment: Hillier 2 NH-T2 Integer 1(vii). For at least this reason, all claims that embody the making of a determination about the wear of a bucket wear part are not supported by an enabling disclosure across the claim breadth (refer claims 1, 2, 5, 9, 10, 13, 14, 15, 16, 18, 19, 20, 21).”
The Applicant states:
“10.10 The Opposed Application describes the use of a particular vision integration program called “In-Sight sold by Cognex”. The Opponent next complains that this disclosure is not sufficient to enable the skilled person to “replicate the software method”. In particular, the Opponent asserts that the In-Sight software was not part of the CGK and does not allow the skilled addressee to replicate it: OS:[106]. However, it is not a requirement under section 40(2)(a) of the Act that the disclosed method be common general knowledge. All that is required is sufficient detail to enable the person skilled in the art to work the invention across the breadth of the claim.
10.11 Dr Hillier simply states at Exhibit NH-T1 integer 1(vii) that “if this software was/is not available to achieve this, or if it was/is not available to be used for some reason … I would need to do a great deal of testing and trials”. First, that is not evidence that the software was not available as at the priority date or the date of the application being filed (whichever date is relevant). The onus here rests on the Opponent and it has failed to establish the software was not available. In any event, as Mr Holland explained at [25.5]:
“If a system was being developed from scratch, a level of testing would certainly be required. However there were in November 2013 (and are) a number of different pieces of software available that are able to be used for determining the edge of a wear part. For example, I used software produced by National Instruments in the period between 2007 and 2009 … for determining similar types of information from images provided by sensors. National Instruments still sells this software today. To use existing systems for this particular purpose, there would be some time required to configure the software to look for reference points, but this would be a straightforward process for someone familiar with the software."
10.12 Dr Hillier in reply simply says “Back in 2013 I don't believe there were many 'out of the box' systems suitable for real-time application on a machine in the field as suggested … I maintain that a great deal of testing and trials would be required.” This evidence suggests that there were at least some “out of the box” systems suitable for use. Finally, it does not matter that a “great deal of testing and trials” would be required as that does not mean the claims are not enabled. Notably, Dr Hillier does not say such testing and trials would not be routine, or overly burdensome, or out of the ordinary, or require any inventive ingenuity.”
I accept Mr Holland’s assertion that software produced by National Instruments (and infer from Dr Hillier’s statement) that software for optically assessing the wear on wear members was available before the priority date. The evidence does not establish that the level of testing and trials, while perhaps substantial, would be beyond what would be undertaken as a matter of routine and without invention.
Performance of the bucket
The Opponent states:
“Secondly, the only determination of “performance of the bucket” that is disclosed in the specification is the making of a very basic determination about the bucket cycle time – see [51]. The Application does not disclose the making of other, more sophisticated determinations that [sic] about bucket performance, let alone enable the skilled person to program a programmable logic device to make such determinations based upon the output of a sensor that is located on a bucket wall.”
The Applicant states:
“10.13 The Opponent next complains that the only determination of “performance of the bucket” that is disclosed in the specification is “the making of a very basic determination about the bucket cycle time” and that the specification does not disclose the making of other, more sophisticated determinations about bucket performance “let alone enable the skilled person to program a programmable logic device to make such determinations based upon the output of a sensor that is located on a bucket wall”: OS[107].
10.14 First, the specification here provides a principle of general application and reasonably expects the person skilled in the art to identify those performance features of the bucket that he or she may want to measure and determine how they may be measured. The measurement of those features may be simple or complex, as required by the particular designer.
10.15 In any event, Dr Hillier, in the evidence that the Opponent relies on, does not support the assertions it makes in OS[108]. As to the “performance” integer he does not state, for example that “quite complex determinations about other aspects of bucket performance” would need to be made: See Exhibit NH-T1 at integer 1(vii) under “Performance”. Unsurprisingly, Mr Holland therefore does not address the point now raised by the Opponent by way of submission.”
The specification teaches monitoring characteristics of the bucket (such as fill level) at paragraphs 50 to 52 which are considered measures of “performance of the bucket”. I consider this disclosure to provide sufficient information to provide a principle of general application for other possible measures of bucket performance.
Claim 6 – operational efficiency
The Opponent states:
“So far as claim 6 refers to the electronic sensor calculating “an operational efficiency of the bucket and/or the at least one wear part”, there is no disclosure at all of what “efficiency” is calculated nor how.”
The Applicant states:
“10.16 The Opponent next complains that there is no disclosure at all of what “efficiency” in claim 6 is calculated now how: OS:[109]. Mr Holland at [22.17] sets out factors that he considers would be included in the calculation of operational efficiency. A person skilled in the art would understand how a calculation of this type could be done, and there is no requirement for a set formula. Dr Hillier does not reply to this evidence, and so this ground is not made out.”
Mr Holland states at 22.17 (with my emphasis in bold):
“Claim 6 refers to the programmable logic device being able to calculate "an operational efficiency of the bucket and/or the at least one wear part" using the information from the at least one electronic sensor. I consider that the operational efficiency would include factors such as the performance of the bucket, the level of fill and other factors such as fuel use.”
I agree with Mr Holland to the extent the operational efficiency of the bucket or wear part would include level of fill. I disagree with Mr Holland to the extent that the operational efficiency defined in claim 6 relates to factors such as fuel use, since fuel use is not a characteristic of the bucket or wear part. I consider ‘operational efficiency’ in the context of the claim to be a measurable characteristic of the bucket or wear part that is compared to an optimal value; the operational efficiency being an evaluation of how close the characteristic is to the optimum. Overall, I am satisfied that a person skilled in the art would understand what ‘operational efficiency’ is in the context of claim 6, and that the specification provides sufficient information to satisfy the principle of general application.
Claim 7 – Bucket fill level
The Opponent states:
“Further, the specification discloses only one method of making determinations about the bucket fill level. The disclosed method requires both determining the distance to the load, and referencing a database of bucket fill profiles – see the Application at [50]. However, no bucket fill profiles are disclosed in the specification. Extensive experimentation would be required to determine the appropriate bucket fill profiles alone: Hillier 2 NH-T2 Integer 1(vii). Further still, claims 1, 5, 7, 13, 14, 18, 19, 20 and 21 include within their scope monitoring systems that use any other method of making determinations about the bucket fill level. No teaching at all is provided in respect of other methods for determining the fill level.”
The Applicant states:
“10.17 The Opponent next complains that there is only one disclosure of making determinations about the bucket fill level: OS:[110]. First, the specification here provides a principle of general application regarding bucket fill level and reasonably expects the person skilled in the art to adopt or modify the system disclosed to best suit their desired application of sensor and fill level determination.
10.18 In any event, as Mr Holland explains at [25.7]:
“Also at 1(vii), Dr Hillier suggests that it is unclear how it would be possible to measure the level of fill of a bucket without comparison with a bucket fill profile. The specification of the Opposed Application provides a camera that is directed towards the bucket, and it would be straightforward to determine the fill of the bucket by using a number of predetermined reference points including the height of the material compared to the side walls, for example.”
10.19 And then at [25.8] of his declaration, Mr Holland states:
“Also at 1(vii) of NH-T1, Dr Hillier suggests that extensive experiments would need to be conducted in order to ascertain the bucket fill profile of a bucket. However, this information can generally be found in the relevant Standards for a bucket type. In my time at ESCO, we used the Standards produced by the Society of Automotive Engineers, which prescribed the fill profiles of different types of excavators and which could be used to calculate the capacity and fill of a bucket. I therefore disagree that extensive experiments would be required to determine the fill profile of a bucket.”
10.20 Dr Hillier gives no substantive response to the evidence of Mr Holland and so this ground is not made out.”
On the basis of the evidence I am satisfied that a person skilled in the art would, through routine steps, be able to design software that estimates fill level from camera data of the bucket.
A sensor secured to the wear part
The Opponent states:
“Claim 5 claims embodiments where, in addition to at least one sensor secured to a wall of the bucket, at least one (second) electronic sensor is “secured to the wear part and communicates with the programmable logic device so that information from the at least one electronic sensor secured to the bucket and the at least one electronic sensor secured to the wear part are used to make the determination”. However, the specification contains no teaching viz. how such a “dual sensor” system is configured or operates, including what logic is used to make the “determination” about any “one or more of” presence, health, wear, impact, fill and performance of the bucket and/or the at least one wear part, based upon the output from both sensors.”
The Applicant states:
“10.21 Finally, the Opponent complains that claim 5 is not enabled (OS[111), but there is no such allegation in its ASoGP and so it cannot make that argument.
10.22 In any event, the Opponent does not rely on any evidence in support of this ground. Dr Hillier did not appear to have any difficulties with this claim, merely stating that both sensors (the sensor on the bucket and the sensor on the wear member) would be used to make the relevant determination. Mr Holland also does not raise any issues with this claim. This is unsurprising, including in light of Mr Holland's previous experience with systems that use a number of different sensors. This supports the position that it would be a straightforward matter for a person skilled in the art to implement a system that uses more than one sensor to make a determination. Therefore, this ground could not succeed.”
I consider that a person skilled in the art would readily understand how an additional sensor on the wear part could be used in the monitoring of the bucket.
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).
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.”
Section 40(3) - Support
The Opponent states:
“For essentially the reasons submitted on the s 40(2)(a) ground, the very broad scope of the claimed invention does not correspond to any technical contribution to the art. In short: the very broad claims adopt a “reach through” style that would capture almost every excavation bucket monitoring system that uses a sensor secured to one of the bucket walls. As such, they travel well beyond the supporting description and purported technical contribution in conceiving that a sensor could be secured to one of the bucket walls.”
The Applicant states:
“The Opponent simply relies on what it has said in relation to section 40(2)(a) and its attack on clarity. Accordingly, the Applicant relies on its submissions above on those grounds, here.”
The test for support is to identify the technical contribution to the art and to then assess whether the claim width exceeds the technical contribution. The contribution to the art in this case is mounting a sensor on the bucket wall, to measure characteristics of the bucket or wear member. The claim does not exceed this technical contribution. It follows that the claimed invention is supported.
Clarity – Legal principles
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
The Opponent states:
“In addition, at the least the claim words “health” and “performance” in claims 1 and 18 lack clarity, on the basis that the scope and boundary of what those terms encompass is not clear: see Hillier 2 NH-T2 Integer 1(v)(ii).”
The meaning of the words “health” and “performance” (when construed as broadly as is reasonable) includes essentially every measurable characteristic of the bucket. This aspect of the claim does not lack clarity.
Minor clarity issues
Claim 19 contains a typographic error with the term “clear line of site” should read “clear line of sight”.
Claim 20 contains an antecedent issue, stating “a monitoring system in accordance with claim 18 or 19” whereas claims 18 and 19 define a bucket. Thus, the correct antecedent is “a bucket in accordance with claim 18 or 19”.
These are considered minor errors and the intended meaning is obvious, thus these are not considered to offend s 40(3). The Applicant may choose (but is not required) to amend these claims when filing amendments overcoming the inventive step ground of opposition.
Conclusion
Claims 1, 6, 7, 15 and 18 lack an inventive step in light of D14 (Japanese patent number 07‑042201A).
Costs
The opposition is successful. Costs are awarded according the Schedule 8 against the Applicant, ESCO Group LLC.
Xavier Gisz
Delegate of the Commissioner of Patents
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