CQMS Pty Ltd. v Esco Group LLC - [2018] APO 80

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd. v Esco Group LLC [2018] APO 80

Patent Application: 2013202351

Title:Wear assembly

Patent Applicant:                   Esco Group LLC
Opponent:  CQMS Pty Ltd.
Delegate:  R Subbarayan
Decision Date:  30 October 2018
Hearing Date:  9 August 2018, in Melbourne

Catchwords:  PATENTS – opposition to grant of patent – method of shipping wear member of excavating equipment – whether the claims are novel – whether claims are inventive – whether the claims define the invention – whether specification provides a full description – whether the claims are fairly based – whether the claims relate to a manner of manufacture – whether the claims are useful – none of the grounds made out – costs awarded against the opponent

Representation: Counsel for the applicant: Tom Cordiner SC
Patent attorney for the applicant: Minter Ellision
Counsel for the opponent: Sean Cooper
Patent attorney for the opponent: Fisher Adams Kelly Callinans

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013202351

Title:Wear assembly

Patent Applicant: Esco Group LLC
Date of Decision: 30 October 2018
DECISION
The opposition does not succeed. The claimed invention is novel, inventive, defines the invention, fully described, fairly based, a manner of manufacture and useful..
Subject to any appeal, the application is to proceed to grant.
Costs according to schedule 8 are awarded against the opponent.
REASONS FOR DECISION
BACKGROUND

Patent application 2013202351 in the name of Esco Group LLC (the applicant) was filed on 3 April 2013 as a divisional application of AU2013200095 and AU2013200107. It claims an earliest priority date of 30 March 2006 through a string of parent applications. Following examination, it was advertised as accepted on 20 October 2016. Grant of the patent was opposed under s59 of the Patents Act by two parties, namely Talon Engineering SDN. BHD and CQMS Pty Ltd. After the completion of the different evidentiary stages, the matter was set for a hearing on 9 August 2018. Three days prior to the hearing, Talon Engineering withdrew their opposition leaving CQMS Pty Ltd (the opponent) as the sole opponent.
Grandparent application AU2011201135 was the subject of Federal Court proceedings VID 83 of 2015 (Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 and ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46) and both parties relied on some of the Courts’ findings in these proceedings.
GROUNDS OF OPPOSITION
The opponent’s Statement of Grounds and Particulars was filed on 20 April 2017, but this was then amended by a Statement filed on 10 July 2017. The amended Statement indicates that the grounds under which the application is being opposed includes lack of novelty, lack of inventive step, failure to comply with subsections 40(2) and 40(3), not a patentable invention and not useful.
EVIDENCE
Evidence in support from the opponent comprises the following:
·Declaration of Bruce Alexander Leslie dated 17 July 2017 with exhibits BAL-1, BAL-2 and BAL-8 (Leslie).
·Declaration of Adam Luxton dated 20 July 2017 with exhibits AL-1, AL-2 and AL-8 (Luxton).
Evidence in answer from the applicant comprises the following:
·Declaration of Terry Lee Briscoe dated 19 October 2017 with exhibits Torq LokB-1 to Torq LokB-4 (Briscoe);
The opponent did not file any evidence in reply.
Mr Leslie has over two decades experience in the field of ground engaging tools (GETs) and is currently General Manager of Engineering at CQMS Razer, a related entity of the opponent. In his evidence he provides opinion on the scope of the claimed invention and whether it is anticipated by certain prior art information.
Mr Briscoe is a retired Mechanical Engineer who worked for ESCO from 1970 to 2013 in various engineering and product development roles. In his evidence he provides opinion on various hammerless GET locking systems including Torq Lok, the present invention and the evidence of Mr Leslie.
Mr Luxton is patent attorney with Fisher Adams Kelly Callinans and has provided copies of certain documents relied on by the opponent and this includes a copy of the Federal Court’s decision Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588.
APPLICABLE LAW
As a consequence of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. The date of effect of those changes was 15 April 2013. The application of the Raising the Bar Act in the present case depends on the date of the request for examination. The applicant filed its request for examination on 12 April 2013. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
This means the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted (F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Section 18 of the Patents Act 1990 relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step; and
(c) is useful; and .........
Subsections 40(2)(a), (b) and (3) at the relevant time were as follows.
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and ...
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
SPECIFICATION
The specification states that the invention relates to wear members that are commonly attached to excavating equipment, such as excavating buckets, to protect the equipment from wear and to enhance the digging operation. Such wear members are typically elongate with an excavating tooth or point at a front end and a socket at a rear end. The socket is fitted over a base or nose on the excavating bucket and releasably secured thereto with a lock that is inserted into aligned apertures in the wear member and base. The wear members are subject to very harsh conditions in use and consequently wear out and need to be replaced at regular intervals.
The specification describes a number of aspects of a wear member including the provision of various stabilizing surfaces in the wear member to resist the different loads that it is subjected to in use, the shape of the wear member and the structure and arrangement of the lock. However the claims of this divisional application are solely directed to the structure and arrangement of the lock within a through-hole in the wear member to form a wear assembly and then shipping this wear assembly.
Figures 23, 25, 31 and 32 that are reproduced below assist in understanding the claimed invention.
Wear member 12 is adapted to fit over nose 14 of a base 15 on the bucket of excavating equipment and secured thereto with a lock that is fitted within a through-hole 81 in the wear member 12. The lock comprises a body 110, a resilient member 112 and a shield 114 that are all bonded together. Through-hole 81 has a generally rectangular shape with end walls 85, 87, front wall 89 and rear wall 91. The lock includes a narrow end 103, a wide end 105, a front face 107 and a rear face 109. Narrow end 103 is formed as a pivot member 113 that cooperates with bulb 93 on end wall 85 of the through-hole to enable the lock to pivotally swing about bulb 93 between hold and release positions. In the hold position the lock protrudes into the socket and into an aligned cavity 83 in the base 14 to secure the wear member to the base. In the release position, it still remains secured to the wear member but does not protrude into the socket thereby permitting the wear member to be removed from or fitted over the base. Latch formations provided in the lock and the wear member and the compressibility of the resilient member ensure that the lock is securely held in the wear member in both the hold and release positions. In one embodiment latch formation 115 on the body engages stop 95 in an end wall of the through-hole to secure the lock in the release position. The lock is able to be moved between hold and release positions “without a hammer for ease of use and enhanced safety”[1] and in a preferred arrangement this is done using a prying tool T as can be seen in figures 23 and 25 that show the locking member 17 in the release and hold positions respectively.
[1] Specification at paragraph [18]
While in a typical wear assembly, the lock is a separate member that is inserted into the aligned openings in the wear member and base during installation of the wear member, the present invention is characterised by the fact that the lock is installed in the through-hole of the wear member and secured thereto in a so-called release position to form an assembled wear assembly which is then shipped to customers in this assembled state. This is stated to provide benefits such as “less shipping costs, reduced storage needs, and less inventory concerns”[2] and also reduced “risk of dropping or losing the lock during installation”[3]. While the lock normally remains integrally secured within the through-hole in the wear member, the specification also states that if required the lock can be completely removed for shipping, replacement or installation.
[2] Specification at paragraph [15]
[3] Specification at paragraph [16]
The specification ends with 5 claims of which the independent claims 1, 2, 3 and 4 are as follows:
1.A method of shipping an excavating wear assembly, the method comprising providing a
lock having a body and resilient member, providing a wear member having a socket adapted to receive a nose fixed to excavating equipment and a through-hole in communication with the socket for receiving the lock, inserting the lock with the body and the resilient member secured together as a unit into the through-hole such that the lock is integrally secured to the wear member and retained in the opening (i) in a first position for installation of the wear member on the nose of the excavating equipment, and (ii) for adjustment to a second position where the lock remains secured to the wear member and retains the wear member on the nose, and shipping the wear member with the lock retained in the through-hole in the first position.
2.A method of shipping a wear assembly comprising providing a wear member including a cavity for mounting on excavating equipment and a through-hole, providing a lock to releasably secure the wear member to the excavating equipment, securing the lock to the wear member in the through-hole so that (i) the lock can be adjusted between a hold position where the lock can hold the wear member to the excavating equipment and a release position where the lock can permit installation of the wear member on to the excavating equipment, (ii) the lock is positioned in the release position by a stop, and (iii) the lock and the wear member are a single integral component, and shipping the integral component with the lock secured in the release position.
3.A method of shipping a wear assembly comprising:
providing a wear member for use with excavating equipment, the wear member having a front end, a rearwardly-opening socket for receiving a base secured to the excavating equipment, and a through-hole extending through the wear member to intersect the socket;
securing a lock in the through-hole for movement of the lock in the through-hole without the use of threads between a hold position where the lock retains the wear member to the base, and a release position where the lock permits the wear member to be installed and removed from the base; and
shipping the wear member with the lock secured in the through-hole in an assembled condition in the release position whereby the wear member and the assembled lock can be received, stored and installed as a single component.
4.A method of shipping a wear assembly for excavating equipment, the method comprising:
forming a wearable body having a wear surface to contact the excavated materials during use and protect the excavating equipment, a cavity to receive a base fixed to the excavating equipment, and a hole extending from the wear surface to the cavity;
assembling a lock to the wearable body in the hole to form a wear assembly for use on excavating equipment such that the lock is movably secured to the wearable body between a hold position where the lock will engage the base when the wear member is mounted on the base to hold the wear member to the base and a release position where the lock permits installation and removal of the wear member onto and from the base, wherein the lock includes a lock body and a latch such that when the lock is assembled in the hole the lock body is positioned and retained in the release position by the latch; and
shipping the wear assembly with the lock assembled in the hole of the wearable body in the release position for installation on excavating equipment.
CLAIM CONSTRUCTION
The approach to the construction of claims was summarised by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”.
First/release position and second/hold position
Each of the independent claims defines first/release and second/hold positions for the movement of the lock within the through-hole in the wear member. The opponent submitted that the proper construction to be given to the references to the two positions of the lock in the through-hole is that it merely requires that the “lock is able to move relative to the wear member between a position where the lock can operate to secure the wear member to a base (the second/hold position), and a position where the lock permits the wear member to be installed on or removed from the base (the first/release position)”.
The applicant on the other hand submitted that the meaning of these terms has already been determined by the Full Court in the Federal Court proceedings and as the language used in the claims of the present application are similar to those in AU2011201135 I should adopt a similar interpretation of these terms.
Claim 1 of AU’135 that was before the Full Court read as follows:
A wear member for attachment to excavating equipment comprising a front end to contact materials being excavated and protect the excavating equipment, a rear end, a socket that opens in the rear end to receive a base fixed to the excavating equipment, a through-hole in communication with the socket, and a lock integrally connected in the through-hole and movable without a hammer between a hold position where the lock can secure the wear member to the base and a release position where the wear member can be released from the base, the lock and the through-hole being cooperatively structured to retain the lock in the through-hole in each of the said hold and release positions irrespective of the receipt of the base in the socket or the orientation of the member.
The Full Court held that the “hold position” and “release position” in the language of the claim should be construed as identifiable or predetermined positions that are determined only by the defined structural relationship between the lock, the through‑hole and the wear member.
[165] The terms “hold position” and “release position” are but two terms adopted by the authors of the Patent Application as part of a particular integer concerning the lock. The words in Claim 1, “a hold position”, and “a release position”, are naturally read as referring to identifiable or pre-determined positions. The words that follow each of those expressions, that is, “where the lock can secure the wear member to the base” and “where the wear member can be released from the base”, respectively, describe that which is able to be achieved when the lock is in each pre-determined position. In construing the two terms, the Court seeks to attribute meaning, according to the orthodoxy of the tests earlier described, to the language of the integer and the claim as a whole. In order to do so, it is necessary to have regard to all of the language of the claim that properly informs the construction of the integer and terms used within it, in the context of the claim itself and the Specification. The integer in question speaks of a lock integrally connected in the through‑hole in the wear member moveable between two nominated positions, a hold position and a release position. The lock and the through‑hole are cooperatively structured to retain the lock in the through‑hole in the wear member in each such position irrespective of the receipt of the base into the socket of the wear member or the orientation of the wear member. It would be contrary to accepted principles, with respect to the Primary Judge (and Ronneby), in seeking to understand what the notional addressee would have understood the authors to mean by using the two terms “hold position” and “release position” and thus attribute meaning to them, to only have regard to the particular language of the claim concerned with the relationship between the lock, the wear member and the base and ignore or dismiss the role and contextual significance of other language relating to the integer and the claim.
[166] It is important to recognise on the question of construction that Claim 1 comprises a lock integrally connected in the through‑hole and able to be moved between two (binary) positions such that the lock and the through‑hole are cooperatively structured to retain the lock in the through‑hole of the wear member in each binary position irrespective of the receipt of the base or the orientation of the wear member.
[167] As to the lock’s relationship with the through‑hole, the wear member and the base, when the lock is placed in one or other of the two binary positions, one of two functions is then made possible. If the lock is placed in the hold position when the wear member is on the nose of the base, and the through‑hole is relevantly aligned with the recess in the nose, the lock “can secure” the wear member to the base. If the lock is then moved to the other binary position, the release position, the wear member “can be released” from the base. If the lock is placed in the release position in the through‑hole of the wear member before any engagement of the wear member with the base, the wear member can be placed over the base and relevantly aligned. Moving the lock to the other binary position, the hold position, will then enable the securing function.
[168] In other words, the language “where the lock can secure the wear member to the base” and “where the wear member can be released from the base”, immediately following the respective terms “hold position” and “release position”, is important language descriptive of the functions enabled by placing the lock in the relevant binary position. However, each binary position is determined or set or identified only by reference to the relationship or structural cooperation between the lock, the through‑hole and the wear member. It should also be noted that the concluding words of Claim 1 are these: “… the lock and the through‑hole being cooperatively structured to retain the lock in the through‑hole in each of the said hold and release positions irrespective of the receipt of the base in the socket or the orientation of the wear member”. The words in italics quoted above also convey the notion that there is only one “hold position” and one “release position” in which the lock and the through‑hole are cooperatively structured to retain the lock “in the through‑hole” in each of the said positions. This notion that there is only one “hold position” and one “release position” is consistent with the earlier references in Claim 1 to “a hold position” and “a release position”.

While the claims of the present application do not use the same language as AU’135 to define the first/release position and second/hold position, there are clearly similarities between the claims of the two applications. The claims of the present application relate to a method of assembling the lock within the through-hole in the wear member to form the wear assembly and then shipping the wear assembly to a customer where the wear assembly may then be installed on the nose of the excavating equipment. The claims are not about the method of installing the wear assembly on the nose and securing the wear member on the nose using the lock. Therefore the references to the first/release and second/hold positions are defined only by the structural cooperation between the lock, the through-hole and the wear member. Furthermore I can see no basis to conclude that the terms first/release position and second/hold position would not be naturally read as referring to identifiable or predetermined binary positions. While each of the independent claims refers to the lock in the second/hold position securing the wear member on the nose, this position of the lock is a predetermined position within the through-hole of the wear member that is not in any way dictated by whether the nose of the excavating equipment is received within the socket/cavity of the wear member or not.
Therefore in my view, the first/release position and second/hold position are to be construed as identifiable or predetermined binary positions of the lock within the through-hole of the wear member similar to the Full Court’s finding in AU’135.
The positioning of the lock in the release position by a stop
Claim 2 defines that the lock can be adjusted between a hold position and a release position and that the lock is positioned in the release position by a stop.
The opponent submitted that while the stop referred to in this claim “must function to position the lock in the release position, the claim imposes no further restrictions or limitations beyond that on the function or location of the stop or the form it may take”[4]. In particular they argued that this stop is not limited to being a component of the wear assembly as submitted by Mr Briscoe and it can well be a stop that is external to the lock or the wear member and that is used to initially position the lock in the release position.
[4] Opponent’s submissions at 5.18
I beg to differ. This claim defines that the lock is secured in the through-hole in such a manner that it can be adjusted between hold and release positions and that the lock is positioned in the release position by a stop. In my view, this definition naturally suggests that the stop is some kind of an abutment in the wear member that sets or places the lock in the release position rather than some external device or tool that is initially used to set the lock in the release position during assembly of the lock in the through-hole. Such a construction is entirely consistent with the disclosure in the body of the specification. Even if the construction submitted by the opponent is a valid construction, such a construction can only be an alternative construction and not the only construction, leading to ambiguity as to which construction should be adopted. In such a circumstance, it would be quite legitimate to refer to the body of the specification to seek clarity. By doing so, the skilled addressee would conclude that the stop is an integral part of the wear member rather than an external tool.
NOVELTY
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 (Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [147]). It is well setTorq Loked that the general test for anticipation or want of novelty is the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]), and 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; 16 IPR 545 at [19]).
To meet this requirement, the prior art must contain “clear and unmistakable directions” to produce the invention as claimed (Pfizer Overseas Pharmaceuticals v Eli Lilley and Company [2005] FCAFC 224; 68 IPR 1 at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the claimed invention, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-486; 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
"Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure which involves a determination about whether a prior document has ‘planted the flag’ as opposed to having provided merely ‘a signpost, however clear, upon the road’ or, perhaps, something less that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step".
The opponent relied on the following prior art information in support of its case on novelty.
D1: Torq Lok
The primary prior art information relied on by the opponent for both novelty and inventive step is the Torq Lok wear member locking system.
The Torq Lok is a locking pin for securing a wear attachment to an adaptor (base) on an excavator bucket without the use of a hammer. It was developed and manufactured by Quality Steel Foundries Ltd (Quality Steel) in Canada from at least the year 2000. The features of Torq Lok were comprehensively discussed in the Federal Court Proceedings based on the evidence of Mr Benjamin David Hughes, the R&D Manager for Talon Engineering, who observed samples of the Torq Lok product during a visit to Quality Steel in 2003 and Mr Desmond Erickson a Metallurgical Engineer who worked for Quality Steel.
The following three drawings made by Mr Hughes show a wear member with a Torq Lok locking pin in three configurations, namely (i) when not installed to the base, (ii) when installed over the base but still not secured to the base by the locking pin and (iii) when secured to the base with the locking pin.
(i)

(ii)
(iii)
While Talon Engineering is no longer a party to these proceedings, the following reproduction (iv) of the second drawing with some added reference letters that they provided in their written submission is very helpful in understanding the different features of Torq Lok.
(iv)
This drawing shows a wear member B including an exterior surface C, a front end D, a rear end E including a cavity F having opposing upper G and lower H walls and a front wall I extending between the upper and lower walls, the cavity opening rearward to receive a base J of the excavating equipment between the upper and lower walls for supporting the wear member on the excavating equipment, a through hole K extending from the exterior surface to the cavity and a Torq Lok L retained in the through hole in a position in which the wear member can be installed over the base J.
The Torq Lok L comprises a locking pin M that is threadably mated with a polymer retainer N. The installation of Torq Lok in the wear member involves first interference fitting the polymer retainer N in the through-hole from within the cavity of the wear member and then inserting the locking pin M into the through-hole from the outside by screwing it into the polymer retainer till the bottom of the pin is flush with the bottom of the retainer. To assist with ensuring that the pin was flush with the bottom of the retainer, a gauge would be placed in contact with the retainer and the pin was then screwed in until it touched the gauge. The wear members were normally shipped with the Torq Lok secured in this position so that the wear member could be attached to the base by merely sliding the wear member over the base and then screwing the locking pin further so that the bottom of the locking pin extends into an aligned opening in the base to secure the wear member to the base as seen in drawing (iii).
D2: US 6959506 (Adamic)
This patent document relates to the Torq Lok product and hence its disclosure is quite similar to D1. Figures 3 and 6 of D2 are reproduced below:
As can be seen from these figures, a resilient polymer retainer 9 is inserted in the pin retainer receiving opening 5 in the wear member 1 from within the cavity of the wear member and then the lock pin 13 is threadedly engaged with the retainer by screwing it in into the retainer from the outside. D2 states that “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.”[5]
[5] D2 at column 5, lines 13-18
However unlike the Torq Lok product, there is no clear disclosure that the placing of the retainer and the lock pin in the wear member occurs even before the wear member is shipped to the customer.
D8: US 6708431 (Robinson)
D8 relates to a wear assembly in which the wear member is releasably secured on the nose of an adaptor by a rotatable pin connector. Figures 8,10 and 11 of D8 are reproduced below:
As can be seen in these figures, a pin 18a with tapered tabs 82 at its opposite ends is rotatably received within a cartridge 20a that is fitted in a through-hole in the nose 24a. A pair of plugs 84 with slots 88 are rotatably disposed within inner portions of respective through-holes 36a in the wear member. Ledges 90 prevent the plugs from passing outwardly through the through-holes. By suitably orienting the plug slots and the tabs through rotation of the plugs and the pin respectively, the wear member can either be installed over/removed from the nose or secured on the nose.
There is no disclosure that the wear member is shipped with the plugs installed in the through-holes.
Discussion
The opponent submitted that each of the independent claims lacks novelty over each of D1 and D2 as all of the essential features of these claims are disclosed by these prior art.
However this submission appears to be predicated on the construction that in each of these claims the first/release position can be any position of the lock in which the wear member may be installed over the nose and the second/hold position can be any position of the lock in which it retains the wear member on the nose. However I have earlier found that these positions are to be construed as identifiable or predetermined binary positions similar to the Full Court’s construction in AU’135.
The Full Federal Court held that in Torq Lok the locking pin transitions “along a continuum from fully recessed to progressive engagement through the polymer retainer and into the cavity of the base (to a greater or lesser degree), to full rotation of the screw and corresponding extension of the distal end of the screw into the cavity”[6] and it “does not exhibit a binary “hold position” and “release position”. As the disclosure of D2 is substantially similar to D1, it also does not exhibit a binary “hold position” and “release position”. It follows that each of the independent claims is novel over D1 and D2.
[6]ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 at [171]
For completeness, I will also briefly discuss the other submissions made by the opponent.
Lack of Novelty: Claim 1
The opponent submitted that while D1 and D2 do not disclose the feature that the body and the resilient member are secured together as a unit before the lock is inserted into the through-hole of the wear member, this feature which relates to the order in which the components of the wear member are assembled, has no effect upon the method of shipping the wear member and is therefore not an essential feature of claim 1.
The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd(1982) RPC 183 at page 228:
"... I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim. But (3), all claims are not perfectly framed. Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly. In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it. (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger* all assume that a claim may include an inessential feature."
* Rodi and Wienenberger v Henry Showell Ltd(1969) RPC 367.
As I noted earlier when discussing the Specification, the lock comprises a body 110, a resilient member 112 and a shield 114 that are all bonded or otherwise secured together. It is also clear that this securing together of these 3 components occurs at the time of manufacture of the lock and is not a procedure that is carried out on site. Hence when the lock is assembled in the through-hole of the wear member, the lock will necessarily have the body and the resilient member secured together as a unit and this is reflected in claim 1. While this feature may have no material effect on the manner in which the wear assembly is ultimately shipped or transported from one location to another, it is clearly material to the way the lock is secured in the through-hole, which is the crux of the invention. Moreover the applicant has clearly limited the scope of the claim to include this feature and there is nothing to suggest that the applicant intended this feature to be anything other than an essential feature of the invention. The feature of the body and resilient member being secured together as a unit prior to installation in the through-hole is an essential feature of the claim that further distinguishes this claim from the cited prior art.
Lack of Novelty: Claim 2
The opponent submitted that the stop that is defined in this claim to position the lock in the release position can be an external tool and it was clearly established through the evidence of Mr Erickson that an external gauge was temporarily used to position the locking pin of Torq Lok in the release position prior to shipping and hence this feature is disclosed by Torq Lok.
I have already found that claim 2 requires the stop to be an integral part of the wear member. Hence this feature is not disclosed by Torq Lok.
In the alternative, the opponent submitted that this feature is not an essential feature as it does not have any material effect on the method of shipping.
The specification clearly highlights the feature of securing the lock in the release position before shipping so that the wear assembly can be straightaway installed on the nose at the site without any further adjustment. The lock assists in retaining the lock in the release position before and during shipping. The applicant has also clearly chosen to make this an essential feature by the language of the claim. I am not satisfied that this feature of claim 2 is an inessential feature.
Lack of Novelty: Claim 3
The opponent conceded that this claim is distinguished from Torq Lok by the feature that the lock is secured for movement in the through-hole without the use of threads, but again argued that this is an inessential feature as it does not have any effect on the method of shipping.
The use of a lock that is not threadedly engaged with the wear member and is still able to be retained in the through-hole in the release position without falling off during transportation is a key aspect of the wear assembly. The applicant has also clearly chosen to make this an essential feature by the language of the claim. I am not satisfied that this feature of claim 3 is an inessential feature.
Lack of Novelty: Claim 4
The opponent conceded that this claim is distinguished from Torq Lok by the feature that the lock has a latch that secures the lock in the release position but again argued that this is an inessential feature as it does not have any effect on the method of shipping.
Again I am not convinced. The latch is a part of the lock and ensures that the lock is retained in the release position during shipping and in that respect is a feature of the method of shipping the claimed wear assembly. The applicant has also clearly chosen to make this an essential feature by the language of the claim. I am not satisfied that this feature of claim 4 is an inessential feature.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) 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 in 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).
(3) 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;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
The Dictionary of the Act defines the prior art information for the purposes of subsection 7(3) to comprise
(i)information in a document that is publicly available, whether in or out of the patent area; and
(ii)information made publicly available through doing an act, whether in or out of the patent area.
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], 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."

In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99, the court held at [203] that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art (PSA) either as common general knowledge (CGK) or information available under subsection 7(3).
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59 the High Court stated at [41]:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
D1, D2 and D8 as Section 7(3) Information
The opponent submitted that the “public display, oral description, sale and supply to the public, and public use, of the “Torq Lok” product produced by Quality Steel Foundries Ltd”[7] was found to have occurred by the Primary Judge in Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588.
[7] Opponent’s submissions at [5.5]
While the Federal Court found that prior use of Torq Lok had been established by the display of Torq Lok at Quality Steel, that was in respect of novelty. As the opponent relies on Torq Lok to establish that the claimed invention is lacking an inventive step, I need to be satisfied that the Torq Lok product is prior art information under section 7(3) for assessing inventive step, i.e. it is a product that the person skilled in the art in Australia could be reasonably be expected to have ascertained, understood and regarded as relevant.
While the section 7(3) ascertainment of published documents can generally be established through publication information of the document and what kinds of sources that a person skilled in the art in Australia would normally consult when trying to develop a new product, the ascertainment of a product that is allegedly available in the market for purchase is more problematic. There appears to be very little authority on this. However in my view the general principles are the same in that it needs to be clearly established through evidence that (a) the product was indeed available to a member of the public without any fetter of confidentiality, (b) the person skilled in the art could be reasonably be expected to have found this product when trying to develop a new product in the field of locking systems for GETs.
The onus lies with the opponent to establish that the PSA in Australia could reasonably have been expected to ascertain Torq Lok before the priority date and their evidence falls well short of establishing this.
The opponent’s expert Mr Leslie does not make any comment on whether he was aware of Torq Lok before the priority date.
Mr Briscoe on the other hand states that while he became aware of the Adamic patent in 2005, he became aware of the Torq Lok product only in 2006 when he saw it in operation in a coal mine in Canada.
In the Federal Court proceedings evidence in relation to Torq Lok was provided by Mr Benjamin David Hughes and Mr Desmond Erickson.
Mr Erickson who was employed by Quality Steel as a metallurgical engineer has stated that Quality Steel sold approximately 600 Torq Lok per month to customers for the purpose of connecting wear components such as teeth and shrouds. However there is no information on who these customers were and whether any of them were in Australia.
Mr Hughes who was employed as a design engineer with Shark Abrasion Sytems Pty Ltd has stated he became aware of the Torq Lok product as a result of a visit to Quality Steel in September 2003. There is nothing to suggest that there was a general awareness of this product within the industry before the priority date.
Based on the opponent’s evidence, I cannot be satisfied that the PSA in Australia could be reasonably be expected to have ascertained the Torq Lok product before the priority date.
Torq Lok is therefore not prior art information for assessing inventive step. The opponent’s case on obviousness based on D1 therefore fails.
While the opponent did not specifically provide submissions in relation to the ascertainment of D2 and D8, these are patent documents that were published before the priority date. They relates to a lock for a wear member that can be installed in the wear member and/or the nose prior to installation. I am therefore satisfied that these are documents that the PSA would have ascertained, understood and regarded as relevant.
Inventive Step Considerations
The opponent only provided submissions on the features that they accepted were not disclosed by D2. I have found that in each of the independent claims of the present application the first/hold position and the second/release position are predetermined binary positions of the lock within the through-hole and this feature is not disclosed in D2. The opponent did not provide any submissions as why it would have been obvious or even possible to provide predetermined hold and release positions in D2. In the absence of such submission or evidence, I cannot be satisfied that this would have been an obvious thing to do. The claimed invention is therefore non-obvious for at least this reason and consequently I do not need to address the other submissions made by the opponent in relation to the other features not disclosed in D2.
The opponent submitted that claim 3 lacks an inventive step over D8. They submitted that plug 84 is the lock that can be secured in the through-hole for movement between hold and release positions without the use of threads. While they accepted that there is no disclosure that the wear member is shipped with the plug secured in the through-hole, they submitted that it was well known for locks to be secured to the wear member using tape or a zip tie, and it would have been a matter of routine to carry out this taping or tying with the plug inserted in the through-hole.
As submitted by the applicant, the plug is just one part of the lock which also includes the pin and the cartridge. The pin and the cartridge are assembled in the through-hole of the nose and not in the through-hole of the wear member. Furthermore there in nothing in the wear member to prevent the plug from falling out of the through-hole when the wear member is not installed over the nose. Even if I accept that it was known to secure locks to the wear member by tape or zip tie to prevent the loss of the lock during transport, there is no suggestion in D8 or any evidence to establish that it would have been obvious to secure the plugs 84 within their respective through-holes 36a and also in the release position. Mr Leslie’s evidence on this issue has clearly been made with the benefit of hindsight.
I am not satisfied that claim 3 lacks inventive step in light of D8 and the CGK in the art.
DEFINE THE INVENTION (Subsection 40(2)(b))
The opponent submitted that each of the independent claims does not comply with subsection 40(2)(b) as they do not define the invention described.
They submitted that all of the claims of the Opposed Application are said to define "a method of shipping” a wear assembly, namely a method of transporting a wear assembly from one location to another. While each of the claims includes a step of “shipping” the wear assembly, none of the other steps of the claims define steps or procedures that cause the wear assembly to be transported from one location to another. Consequently the claims do not define a method of shipping.
I fail to see the rationale behind this submission. The essence of the present invention lies in assembling a wear member and its lock to form a wear assembly and then shipping this assembly as an integral component in this assembled state. This is stated to have advantages such as reduced risk of losing the lock, reduced storage needs, reduced shipping costs and easier installation procedure as the lock is already pre-set in the release position. The invention clearly does not lie in the mode of transport or the steps involved in loading or unloading the wear assembly on to the transportation vehicle or vessel.
As argued by the applicant, each of the independent claims does include a step of shipping the wear member and the lock in the assembled state. While this is in general terms as noted above, the mode of transportation is not critical to the invention. I see no reason why a method of shipping a wear member and its lock should not include steps on how these two components are arranged or fitted together in order to facilitate their transport.
I am satisfied that each of the independent claims define the invention.
FULL DESCRIPTION (Subsection 40(2)(a))
The legal test for full description or sufficiency is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd ( 2001) HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 at [25]:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"
The opponent submitted that each of the independent claims does not comply with subsection 40(2)(a) as they do not describe the invention fully including the best method known to the applicant of performing the invention.
The reasons behind this assertion are similar to that of the failure to define the invention, namely each of the claims define a method of shipping a wear assembly but the description does not provide sufficient details in relation to the steps or procedures that would cause or result in the wear assembly being transported.
As I noted earlier, the mode of transport or the steps involved in the actual transportation are not critical to the invention. It is quite clear that any mode of transportation may be used as long as the wear member and the lock are in an assembled state. In terms of assembling the wear member and the lock there is no evidence to suggest that this is not fully described.
I am satisfied that each of the independent claims is described sufficiently to perform the invention.
FAIR BASIS
Subsection 40(3) requires that the claim or claims in a patent specification be fairly based on the matter described in the specification. As the test for fair basis, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274 (Lockwood) at [69] approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
“... the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
The opponent submitted that although the claims are directed to a method of shipping a wear assembly, the specification does not disclose any actual steps or procedures that would cause or result in the wear assembly being transported. They argued that references to shipping in the consistory clauses and other incidental references to shipping in the body of the specification do not provide a real and reasonably clear disclosure of a method of shipping a wear assembly and hence the claims are not fairly based.
Again as I have discussed earlier, the essence of the invention lies in installing the lock in the wear member to form a wear assembly in a condition in which it is to be shipped or transported. All of this assembling is done prior to shipping and hence most of the body of the specification relates to the construction of the wear member and the lock and how the lock is installed within the wear member. However that does not mean that the claims directed to a method of shipping a wear assembly involving the steps in installing the lock in the wear member to form the wear assembly and then the final step of shipping the wear assembly travel beyond the subject matter described. As argued by the applicant, the mode of transportation or the physical steps taken in the transport are not the thrust of the invention.
In my view, there is a real and reasonably clear disclosure of the claimed invention within the body of the specification. All of the claims are fairly based.
PATENTABILITY
The High Court in NV Philips Gloeilampenfabrieken v Mirabella International Ltd (1995) 183 CLR 655 (Philips) stated that manner of manufacture can be a threshold question:
“if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.”
In Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316; (2000) 46 IPR 553, the majority summarised the effect of the Philips case as follows:
“Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.”
The opponent submitted that the independent claims are not directed to a manner of manufacture. Again they argued that although the claims are directed to a method of shipping a wear assembly, none of the other features recited in the claims cause or result in the wear assembly being transported. The method of shipping the wear assembly involving nothing more than “shipping the wear assembly” does not meet the threshold requirement for being an invention.
While an undefined mode of shipping per se may not meet the threshold requirement for being an invention, the present invention relates to shipping the wear member with the wear member and the lock assembled in a particular condition that I have found is both new and inventive. Furthermore the securing of the lock in the release position involves a patentable artificially created state of affairs.

100. I am satisfied that the claims meet the threshold requirement for a manner of manufacture.
UTILITY
101. The principles for determining whether a claimed invention is useful for the purposes of s. 18(1)(c) are as follows:
“If the claimed invention does what it is intended by the patentee to do and the end result obtained is itself useful, the invention is useful within the meaning of s 18(1)(c) ... As to the first aspect, the invention as claimed must attain the result promised by the patentee” (Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82 at [141]; 77 IPR 449 at [141])

“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.” (H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [81], [217]; 81 IPR 228)

102. The opponent submitted that claims 1 to 5 lack utility as they do not meet any of the promises of “enhanced stability, strength, durability, penetration, safety, or ease of replacement” recited in paragraph [06] of the specification.
103. The issue of promises of the invention was considered by the Full Court in relation to AU’135 where it was held:
"…the language of para 6 consisting of a single sentence under the heading “Summary of the Invention” is not, properly construed, the language of “promises”… The language of para 6 resonates with para 5 and seems to be used in the sense of reciting those things to which the invention relates having regard to the design efforts that went before, and thus the relationship between “the invention” and those things recited in para 6 is one of identifying the topics or subject matter to which the invention relates (rather than “promises” for the invention)…"[8]
[8] ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 at [291]

104. In the present case, where the claims relate to a method of shipping a wear assembly, the promises of the invention can be found in paragraphs [15] and [16] of the specification (with my underlining).
[15] In one other aspect of the invention, the lock is integrally secured to the wear member for shipping and storage as a single integral component. The lock is maintained within the lock opening irrespective of the insertion of the nose into the cavity, which results in less shipping costs, reduced storage needs, and less inventory concerns.

[16] In another aspect of the invention, the lock is releasably securable in the lock opening in the wear member in both hold and release positions to reduce the risk of dropping or losing the lock during installation. Such an assembly involves fewer independent components and an easier installation procedure.

105. It is quite evident that pre-assembling the wear member and the lock prior to shipping will lead to one or more of the highlighted benefits and there is no evidence from the opponent to suggest otherwise.
106. I am satisfied that the claimed invention is useful.
CONCLUSION
107. None of the grounds of opposition have been made out. I find that the claimed invention is novel, inventive, defines the invention, fully described, fairly based, a manner of manufacture and useful.
108. I therefore direct that, subject to any appeal of this decision, the application should proceed to grant.
COSTS
109. The opposition does not succeed. As costs normally follow the event, I award costs according to schedule 8 against the opponent.
R Subbarayan
Delegate of the Commissioner of Patents