CQMS Pty Ltd v ESCO Group LLC - [2024] APO 43

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2024] APO 43
Patent Application: 2018201720

Title:Wear part monitoring

Patent Applicant:                   ESCO Group LLC
Opponent:  CQMS Pty Ltd
Delegate:  Andrew Burgess
Decision Date:  28 October 2024
Hearing Date:  19 December 2023, by Video conference

Catchwords: PATENTS – opposition to the grant of the patent under s 59 – novelty – no clear and unmistakeable directions - claims have novelty – inventive step – common general knowledge combined with prior art – claims do not comprise an inventive step – support – claimed invention extends beyond the technical contribution to the art – claims not supported – clear enough and complete enough disclosure – claims not enabled across whole scope – subsection 60(3) – opposition successful – opportunity to amend – costs awarded

Representation: Counsel for the applicant: Mr. Tom Cordiner KC
Patent attorney for the applicant: Shyama Jayaswal and Rebecca Dutkowski of Minter Ellison
Counsel for the opponent: Mr. Peter Creighton-Selvay and Ms Amy Surkis
Patent attorney for the opponent: Alexia Mayer of James & Wells.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018201720

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 28 October 2024
DECISION
The Opposition is successful. Claims 1-11 lack support and do not comply with subsection 40(3). The invention of claim 1-11 has not been disclosed in a clear and complete enough manner and does not comply with subsection 40(2)(a). Claims 1, 5, 6, and 9 do not involve an inventive step.
The applicant has three (3) months from the date of this decision to file suitable amendments.
I award costs according to Schedule 8 against the Applicant, ESCO Group LLC.
REASONS FOR DECISION
Background

Patent application 2018201720 (the application) was filed by ESCO Group LLC (the Applicant) on 9 March 2018, being a further complete application under s 79B of the Patents Act 1990 (the Act) claiming priority from AU2014262221, itself having an earliest priority date of 25 November 2013 (the priority date or relevant date).
Acceptance of the application was advertised on 2 April 2020. CQMS Pty Ltd (the Opponent), filed a notice of opposition under section 59 the Act on 2 July 2020. Concurrently with the opposition to the present application, the Opponent also filed notices of opposition to eight other applications, being 2018201710, 2018201714, 2018201733, 2018201634, 2018201633, 2018201735, and 2019201394 (collectively, the other opposed applications/other oppositions). Subsequently, the oppositions against 2018201733 and 2018201735 were withdrawn, and applications 2018201633, 2018201634, 2018201635, and 2019201394 were withdrawn.
The first statement of grounds and particulars (SGP) was filed on 2 October 2020. On 8 March 2022 the Opponent requested to amend the SGP, which was allowed on 28 April 2022. All further references to the SGP in this decision are to the SGP after amendments.
On 5 July 2021, the Applicant filed amendments to the claims under S104, and requested a stay of the opposition pending determination of the amendments. On 28 July 2021 the Commissioner stayed the opposition until two weeks after the resolving of the amendments. The amendments were allowed and incorporated into the application on 5 November 2021. In this decision, where I refer to the claims, I am referring to the claims as they stand after amendment, unless explicitly stated otherwise.
In the process of writing this decision, I identified that certain points of the Opponent’s arguments regarding lack of support for dependent claims 9-11 may apply also to the independent claims. Since that was not the case which the Opponent brought to the hearing, I exercised my power under section 60(3) of the Act to take into account grounds of opposition not relied upon by the Opponent, and wrote to the parties on 12 September 2024 with a timetable for further submissions. On 26 September 2024, the Applicant advised that they had elected not to file any further submissions. As such, further submissions from the Opponent were unnecessary.
The Grounds of Opposition
The SGP sets out the following grounds for opposing the grant of the patent:
1.Lack of novelty;
2.Lack of inventive step;
3.Failure to comply with S40(2) and S40(3); and
4.Not a manner of manufacture.
At the hearing, the Opponent’s submissions narrowed the grounds to:
1.Lack of novelty;
2.Lack of inventive step;
3.Lack of support/Failure to comply with S40(3); and
4.Lack of full description/Failure to comply with S40(2);
Onus
The substantive amendments to the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act) apply to the present case. The standard of proof in opposition proceedings is the balance of probabilities. The opponent bears the onus of proof.
If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application. Under section 60(3B), I must not refuse the application without, where appropriate, allowing the Applicant a reasonable opportunity to amend the application to overcome the ground(s). In addition, when deciding a case, I may take into account any ground on which the grant of a patent may be opposed, whether relied upon or not[1].
[1] The Act, subsection 60(3).
Evidence
On 30 March 2021, the Opponent filed EIS comprising a declaration from Dr Nicholas Simon Hillier (Hillier#1) and exhibits NH-1 to NH-12.
On 6 July 2021, the Applicant filed a first part of the Evidence in Answer (EIA) comprising a declaration from Rodney Keith Clarke (Clarke) and annexure RKC-1. On 19 November 2021, the Applicant filed a second part of the EIA comprising a declaration from Hezekiah Russel Holland (Holland) and annexures HRH-1 and HRH-2.
On 21 January 2022 the Opponent filed Evidence in Reply (EIR) comprising a second declaration from Dr Hillier (Hillier#2) and exhibits NH-13 to NH-18.
On 22 February 2022 the Applicant raised concerns about the EIR including material not properly in reply. This ultimately led to CQMS Pty Ltd v ESCO Group LLC[2], which concluded that the material was properly in reply.
The Specification
[2] [2023] APO 28 (the EIR decision)
Background
The present application is one of eleven related Australian applications, all with essentially the same specification. The family is as follows:
The main focus of the specification is on a system for monitoring the health of wear parts, exemplified as wear and/or loss of the teeth on the digging edge of an excavator bucket. In addition, the specification discloses detecting information about an operation of an earth working equipment, such as the amount of earth in a digging bucket or truck tray. The specification uses the general term “monitoring system” to refer to any of these systems in isolation, or when combined as a gestalt overall monitoring system.
The background section of the specification describes limitations with existing systems for monitoring for wear or loss of teeth, such as only monitoring the wear members for a limited portion of the digging operation. The prior art systems referenced were the “Motion Metrics” system, which used an optical camera mounted on a shovel boom for detecting worn or damaged ground engaging teeth (“GET”) [3], a mechanical/electrical switch and a smoke cannister to detect/signal the detachment of GET[4]. The background does not describe any existing “performance” monitoring systems, or any limitations in this area.
[3] Specification at [06].
[4] Specification at [07]
I have the advantage of having the decisions[5] on the related applications available to me, each of which provide summaries of the description of the specification. The solution described relates to the use of a sensor for monitoring the status, health, and/or performance of wear parts used on various kinds of earth working equipment including excavating equipment, such as dozers, loaders, dragline machines, etc, and ground conveying equipment such as chutes and mining truck beds or bodies. In the related decisions, the embodiment that was of most interest was directed towards aspects of the health of the bucket, such as detecting amount of wear on GET or the loss of GET. This was done by way of analysis of images taken of the GET taken by sensors attached to the bucket. In addition to the comments made in the related decisions, I would add some additional details about the embodiment exemplified in Figures 19 and 20, reproduced below.
[5] CQMS Pty Ltd v ESCO Group LLC [2024] APO 17, CQMS Pty Ltd v ESCO Group LLC [2024] APO 29, and CQMS Pty Ltd v ESCO Group LLC [2024] APO 40, collectively the related decisions.
Figure 19 shows a bucket 3a of an earth working equipment, to which is mounted an electronic sensor 27. This is exemplified as a camera or laser rangefinder. In use, the bucket will hold an amount of earthen material 91, piled up in the bucket. The description states that this material tends to fill the bucket with “an established profile”. I take the reference to the profile as being “established” implies that the behaviour of the material and bucket have been previously investigated, and the typical or average profile found from theoretical or practical experiments. The electronic sensor measures the distance D1 between the sensor and some point on the surface of the piled earthen material 91. The description states that the amount of earthen material in the bucket may be calculated using the measurement D1 and the established fill profiles. Again, the specification does not provide any specific details about this calculation, but from the embodiment shown in Figure 19, I understand that where the geometry of the bucket, location and orientation of the electronic sensor relative to the bucket, and the established or expected profile of the pile of earthen material 91 are all known, a measure to a single point of the heap may be sufficient to estimate a volume of the pile. The amount of fill may be expressed as a volume or percentage of the rated bucket capacity. The specification also briefly mentions the use of a “3D camera capable of determining depth”, but does not elaborate on how this is used.
Figure 20 shows a truck provided with a truck body 3b. It is similar to Figure 19, with a truck body 3b, an attached electronic sensor 27, and truck body 3b filled with an amount of earthen material 91. The description sets out, in almost identical language to Figure 19, a method for determining a distance D1 from the sensor to the earthen material 91, which is then used along with established fill profiles of the truck tray to calculate the fill amount of the truck tray.
While the description does not provide details where the electronic sensor 27 may be situated, in Figures 19 and 20 electronic sensor 27 is clearly shown attached to the respective equipment being monitored. Elsewhere, the specification states that (emphasis added):
“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…
Nevertheless, the monitoring system could be mounted or integrated with, for example, a boom or other support of the excavating equipment, or to the body of the excavating equipment…
[6] Specification at [53].
In a non-bucket application, the monitoring system may be preferably mounted and or integrated to a base member… for example, a truck tray”[6]
In addition, the specification refers[7] to detecting the cycle time, from the start of one digging cycle to the start of the next digging cycle, using sensors such as an accelerometer, inclinometer, hydraulic pressure sensor integrated with the boom, strain gauge, or load cell. The specification states:
“The inclinometer provides the orientation of the bucket and the accelerometer registers a spike in force when the bucket is at the appropriate digging orientation and thus indicating that the digging cycle has started.”[8]
[7] Specification at [51].
[8] Ibid.
No additional details of the spike in force are provided, but my understanding of this passage is that it is referring to the impact on the bucket as the teeth first contact the ground in a digging movement. The cycle times for the current and past digging cycles may be communicated with the operator to “[allow] the operator to adjust the digging operation for optimal performance.”
The specification also describes an enclosure which may be attached to a bucket or similar ground engaging wear part and which:
“protect[s] the electronic sensor(s) 27 from the harsh mining environment and to keep the aperture 33 of the housing of the electronic sensor 27 free of fines, dirt, or other material that may negatively impact the electronic sensor 27 (Figures 8 and 11). The enclosure 31 may have one or more mounting brackets 35 for mounting the enclosure 31 on the first wear part.”[9]
[9] Specification at [54].
The enclosure is, broadly, a box-like construction with apertures allowing sensors to have a line of sight on the objected monitored (in the exemplary form, the inside of a bucket). The enclosure may be integral with the wear element, or formed separately, exemplified by Figure 10 and 11 respectively.
The aperture may be covered with a transparent wall[10], or said transparent wall may be integrated with the sensor. The specification describes keeping this transparent wall clean by means of spray nozzles, wipers, or rolling transparent sheet[11].
[10] Specification at [55].
[11] Ibid.
As an observation, the specification never details what an operator needs to do or could do to improve performance. I read from this that the actual steps of improving performance are outside the scope of this application, which is instead merely seeking to determine current (or past) performance.
Claims
The amended claims comprise eleven claims, of which claims 1 and 7 are independent. A full set of claims are included as an annex to this decision. The independent claims are (with feature reference numerals/formatting added):
Claim 1: A system for monitoring earth working equipment, the system comprising:
(a)   at least one electronic sensor for
(i)detecting, by a clear line of sight into a bucket secured to the earth working equipment, a first set of information pertaining to an amount of earthen material gathered in the bucket during each of a plurality of digging cycles,
(ii)detecting, by a clear line of sight into a truck tray being loaded by the bucket, a second set of information pertaining to an amount of earthen material loaded in the truck tray by the bucket during each of the plurality of digging cycles, and
(iii)wirelessly transmitting the detected first and second sets of information;
(b)   a database to store the transmitted first and second sets of information for each of the plurality of digging cycles, and
(c)   a programmable logic device using the transmitted first and second sets of information from the at least one electronic sensor from one or more of the plurality of digging cycles to determine performance of an operation of the earth working equipment.
Claim 7: A system for monitoring earth working equipment, the system comprising:
(a)   at least one electronic sensor for
(i)detecting, by a clear line of sight into a truck tray, information pertaining to an amount of earthen material gathered in a truck tray by earth working equipment,
(ii)detecting information pertaining to the duration of an operational cycle to fill the truck tray, and
(iii)wirelessly transmitting such information;
(b)   a database to store the transmitted information for a plurality of operational cycles, and
(c)   a programmable logic device using both of the transmitted information from a current operational cycle and past operational cycles to determine a performance for the filling of the truck tray.
For brevity, I will sometimes refer to the features identified by roman numerals above as “the sub-features”.
The person skilled in the art
It is well established that many of the issues in an opposition are answered by reference to the person skilled in the art (PSA):
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”[12]
[12] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70].
The hypothetical skilled person works in the field with which the invention is connected and is a non-inventive person or team likely to have a practical interest in the subject matter of the invention.[13]
[13] Ibid at [70]-[72].
The Applicant submits that the person skilled in the art in this case will be:
“an engineer with experience in wear parts used for earth working equipment and methods by which the health and performance of such wear parts can be assessed or monitored over time.”[14]
[14] Applicant’s written submissions (AS) at 4.4.
The Opponent does not directly state who they believe would be the PSA, but they do submit that Dr Hillier may be representative[15], so I take it the Opponent believes the relevant skills of the PSA relate to mechanical engineering in the mining industry with knowledge of sensor based monitoring (i.e., matching Dr Hillier’s experience, see below). The Applicant argues that at the relevant date, there was no commercial development or use of sensors to monitor wear parts, and as such the PSA would not have knowledge of sensor based monitoring.[16]
[15] Opponent’s written submissions (OS) at 12.
[16] AS at 4.5
The Applicant’s proposed PSA is directed more to the PSA for the health monitoring system than to performance monitoring more generally. While I agree a person with the skills and knowledge the Applicant suggests may be part of the team, the PSA would also need broader knowledge of performance of digging operations as a whole.
Regarding sensor-based monitoring, I think the Applicant is putting the cart before the horse. The role of the PSA is to guide me as to what was known at the relevant time. I cannot start with the assumption something was unknown and then exclude any evidence or expert that contradicts my assumption. It will fall to the experts to show to what extent sensors were known or used in the relevant art at the relevant date.
The Deponents
The Opponent has presented Dr Nicholas Simon Hillier as their expert witness. Dr Hillier completed his Bachelor of Engineering from University of Queensland in 2001[17], concurrently working with CRC Mining (which went through various name changes to become Mining3) on projects “related to” algorithms for estimating bucket payloads in rope shovels[18]. He followed this with his PhD studies, largely involving the kinematics and dynamics of hydraulic excavators[19] and vibration analysis[20]. After completing his PhD in December 2007, he became a research scientist with the CSIRO, conducting research related to robotic algorithms, and in particular ranging sensors[21]. From 2011 until the priority date, Dr Hillier worked for LC Engineering as a Senior Engineer involved in the development of software for monitoring the operation and performance of excavating equipment[22]. In 2017 (after the priority date), Dr Hillier became Technology Development Manager at CR Digital, a related entity of the Opponent[23].
[17] Hillier#1 at 10.
[18] Ibid. at 11.2.
[19] Ibid. at 12-12.2.
[20] Ibid. at 13-13.4.
[21] Ibid. 14-14.3.
[22] Ibid. 15-15.2.
[23] Ibid. at 9 and 16
The first witness for the Applicant is Mr Rodney Keith Clarke, the current General Manager of the Advanced Technology team at the Applicant. Mr Clarke has Certificates of Mechanical Engineering Technology and Business Management from the 1990s[24], and has been involved in the Australian mining industry generally for over 35 years[25]. More recently, he was Maintenance Manager for Mt Gibson Iron from 2006-2007 and Products manager at P&H Mine Pro from 2007 to 2011, before joining the Applicant as Corporate Sales Manager in 2011, and took up his current role in 2015[26].
[24] Clarke at 2.5
[25] Ibid. at 2.4.
[26] Ibid. 2.2-2.3.

The second witness for the Applicant is Mr Hezekiah Russel Holland. Mr Holland completed a Bachelor of Science in Mechanical Engineering at Oregon State University in 1985, and an MBA from the University of Phoenix in 2000[27]. From 1985 Mr Holland worked for the Applicant in a range of roles related to wear products and especially ground engaging teeth[28], until forming his own consultancy business Holland Consulting in 1999[29]. From 2000 to 2003 he was Director of Applied Technologies at the University of Alaska Anchorage, followed by working at Frontier Sales Inc as a sales representative from 2004 to 2007[30]. From 2007 to May 2013, Mr Holland was General Manager at Envision CmosXray LLC (later QSA Global Inc)[31], where he had a focus on the development of x-ray inspection systems for a range of customer needs[32]. Mr Holland’s background section makes some comments related to a project he was involved with at Envision CmosXray related to space shuttle wing components. This project involved the creation of 3d images and feature detection[33].
[27] Holland at 2.1.
[28] Ibid. 2.2, 3.1.
[29] Ibid. 2.4.
[30] Ibid. 2.6.
[31] Ibid. 2.7.
[32] Ibid. 3.6.
[33] Ibid. 3.7
For completeness I note that Mr Holland also has additional experience related to data collection and processing in the area of the “internet of things”, but this experience appears to have been largely related to his work at iA3, a technology start-up Mr Holland established after the relevant date[34].
[34] Ibid at 2.10 and 3.8.
While not relevant experience in the normal sense, it must be noted that all of the experts from the parties are now intimately familiar with the evidence procedures before the Commissioner, having given evidence in a raft of other opposition matters between the parties. In places, each expert reproduces or refers to some of these other declarations and proceedings. This is not a problem by itself, but it does mean that some portions of the declarations are not squarely directed to issues of the current opposition.
The Opponent submitted that Mr Holland’s experience after leaving the Applicant in 1999 was not in the field of earth working equipment, and therefore I should prefer the evidence of Dr Hillier[35] (especially regarding the intervening 13 years from 1999 to the priority date). The Applicant responds by saying that there is no reason to think the “mechanics of GET design and the environments in which they were used” have significantly changed between 1999 and the priority date, and further that while Mr Holland may not have been working with GET in that time, he was working on other industrial sensor systems[36].
[35] OS at 15.
[36] AS at 4.9.
Regarding Mr Holland, his experience prior to 1999 is clearly of significant value to this opposition. To the extent that there is dispute between the experts in specific relation to material after that date, I will take into account Mr Holland’s experience when weighing his evidence.
As an observation, Mr Clarke’s experience paints a picture of someone well acquainted with the commercially available products and solutions in the art, and his declaration is framed in that language. This is relevant experience, but may not be as comprehensive in respect to the challenges in developing new products.
The Applicant submits that Dr Hillier, by virtue of his employment with a related entity of the Opponent, may not be an independent witness. They suggest that the opposed application is directly competitive with the Opponent and with Dr Hillier’s work in particular. Pre-emptively, the Applicant also noted that while Mr Clarke had a similar employee relationship with the Applicant, they considered that his testimony should not be viewed with the same scepticism because he simply addresses Dr Hillier’s evidence and the CGK, which the Applicant argues is not “opinion evidence regarding the Opposed Application.”
The Commissioner is not bound by the same rules of evidence as the court and may take account of any material of probative value[37] that has been legitimately filed into evidence. It is not uncommon for proceedings before the Commissioner to involve experts with employment relationships with the parties. This alone is not generally enough to discredit an expert, although it forms part of my consideration when weighing the expert declarations. In the case of Dr Hillier, he has read and is familiar with the Federal Court of Australia Expert Evidence Practice Note and has declared that he has complied with it[38], which includes (amongst other things) that he is to provide impartial evidence and not mislead[39]. In the case of Mr Clarke (who I note has not declared he has complied with the practice note), I think the Applicant is overstating the difference with Dr Hillier. While Mr Clarke does not comment on the Application directly, his extensive involvement with the other opposition proceedings makes it exceedingly likely he is at least generally aware of the points in contention in the current opposition. He has as much potential for bias as Dr Hillier. Having said that, each of Dr Hillier and Mr Clarke (and Mr Holland, who has previous connection with the Applicant) are experienced professionals and there are no obvious signs they have engaged in biased declarations. I will take Dr Hillier and Mr Clarke’s current employment into my consideration when weighing the evidence, but I am not satisfied either have acted with bias of the sort that I must necessarily disregard their respective evidence.
[37] Minister for Immigration and Ethnic Affairs v. Pochi [1980] FCA 85, Deane J at [23]-[24]
[38] Hillier#1 at 4.
[39] Expert Evidence Practice Note (GPN-EXPT) at 4.1.
Construction Principles
There are several phrases used in the claims which warrant a closer inspection. The rules of construction are well established. As a useful summary, Jupiters v Neurizon[40] provides:
“There is no real dispute between the parties as to the principles of construction to be applied in this matter although there is some difference in emphasis. It suffices for present purposes to refer to the following:
(i)the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;
(ii)a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24];
(iii)the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corp Pty Ltd at 391;
(iv)while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 at 39;
(v)experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and
(vi)it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485–486.”
[40] [2005] FCAFC 90; 222 ALR 155 (Jupiters) at [67].
A similar summary was provided in Novozymes A/S v Danisco A/S[41]:
“it is for the Court, not any witness, however expert, to decide the questions of construction in accordance with the meaning of the language used; evidence can be given by experts to enlighten the primary judge on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning; in reading the specification as a whole, the different functions of the claim and the rest of the specification should be observed; the claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent: and ‘what is not claimed is disclaimed’; although the claims are construed in the context of the specification as a whole, it is not permissible to restrict, expand or amend the clear language of a claim by reference to a limitation or gloss in the language used in the earlier part of the specification but not repeated in the claim itself; it is legitimate however to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of the technical terms and resolve ambiguities in the construction of the claims.”
[41] [2013] FCAFC 6; 99 IPR 417 (Novozymes) at [14]
The Applicant also directs my attention to Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2)[42], which the Applicant took to stand for the need to construe a claim in light of the “objects or end in view”. I note that what Bennet and Yates JJ said in that decision was (my emphasis):
“That description shows that the object or end in view of the claimed method is the prevention or treatment of psoriasis by the administration of leflunomide … the specification discloses that leflunomide was already known to have anti-inflammatory and immunomodulation properties that made it suitable as a pharmaceutical agent for the treatment of other disorders. Importantly, however, the new result that is promised, and which purports to provide a patentable invention, is the use of leflunomide in an amount that is effective to prevent or treat psoriasis… This new method of treatment, as a patentable invention, can only be realised or expressed through the deliberate administration of leflunomide to prevent or treat psoriasis… To construe the claim as simply requiring the administration of leflunomide that achieves a therapeutic or biological result that includes the prevention or treatment of psoriasis is, in our view, effectively to ignore the governing characteristic incorporated into the express words of the claim that the invention is a method directed to preventing or treating psoriasis – the claimed advance in the art.”[43]
[42] [2012] FCAFC 102 (Apotex No 2)
[43] Ibid at 125.
Relevantly, the claim under consideration was:
“A method of preventing or treating a skin disorder, wherein the skin disorder is psoriasis, which comprises administering to a recipient an effective amount of [leflunomide]”[44]
[44] Ibid at 107.
I think what their Honours were suggesting was that where the claim specifies an object or end, and the specification itself makes clear that it is that object or end that is the contribution to the art, that object or end is inextricably linked with the technical contribution of the invention.
More generally however, the Apotex No 2 analysis is simply a specific example of the general rule that the claims are read in light of the specification as a whole (i.e. item iv from Jupiters v Neurizon). I note the Applicant prefers the formulation from Rosedale Associated Manufacturers Ltd v Carlton TyreSaving Co Ltd[45], but they stand for the same principle. Similarly, the Applicant agrees with item ii from Jupiters v Neurizon but prefer the wording from Catnic Components Limited v Hill and Smith Limited[46]. However, again, I understand them to be the same principle of purposive construction.
[45] [1960] RPC 59
[46] (1981) FSR 60
While I am in full agreement with these principles, regarding the application of the purposive approach, I am mindful that it is not without limit. As stated by Emmett J in H Lundbeck A/S v Alphapharm Pty Ltd[47] at [60]:
“There is no warranty for adopting a method of construction that gives a patentee what it might have wished or intended to claim, rather than what the words of the relevant claim actually say. While such an approach may be appropriate where there is a genuine ambiguity, it is not permissible to read an entire limiting integer into the claim as written, when the claim clearly does not contain it.”
[47] [2009] FCAFC 70; 177 FCR 151 (Lundbeck).
The Applicant also directs me to the words of Middleton J from Ranbaxy Laboratories Ltd v AstraZeneca AB[48]:
“Above all, the Court should approach the task of patent construction with a generous measure of common sense.”
[48] [2013] FCA 368; 101 IPR 11 at [108]
Construction – Application
The language used in the claims is, to be mild, challenging. In order to find solid footing from which to answer the substantive grounds of opposition, I have found it necessary to consider certain terms in depth.
Feature (a): At least one electronic sensor for
Both independent claims include the phrase “at least one electronic sensor for” followed by three sub-features. In submissions at the hearing there was much discussion as to whether or not this relates to a single sensor capable of all three sub-features, or a set of sensors collectively capable of all three sub-features. Most of the submissions are framed in the context of claim 1, and it is convenient to follow that framing here.
As a first, possibly unnecessary, point: it is typical in patent claims that the word “for” is interpreted as requiring suitability, rather than limited to the specific use. However, in the present claims, the sub-features define the first and second sets of information, which are later positively defined as being used as part of the determining of performance, as I will discuss more below. The practical upshot of this is that the first and second sets of information must be detected by the sensor(s) in order to be available for the later features of the claim. Consequently, in the present claim, feature (a) is read as “at least one sensor used for” or equivalently “at least one sensor configured to”. There was no real disagreement on this point.
As noted by Novozymes, the function of the claim is to define the limits of the monopoly, by way of precise language. The claim encompasses anything that has the defined features, regardless of what other extraneous features may also be present. The relevance to my present point is that the claim requires at least one sensor according to feature (a), but may, separately and unrelatedly, also include any number of other sensors for whatever other purposes.
To me, the plain meaning of this phrase is reasonably clear: the claim requires one or a plurality of sensors, which cumulatively are used to perform the functions of the sub-features. There may be a single sensor used to perform all of the sub-features, or multiple sensors each performing at least one of the sub-features, such that the multiple sensors collectively perform all of the sub-features.
Feature 1(b): A database to store the transmitted first and second sets of information for each of the plurality of digging cycles
The Opponent’s written submissions suggest there is some point of issue here, related to an argument with where the database may be located[49]. The comment is brief and was largely addressed as a support issue. The Applicant notes[50] that the Opponent’s issue here seems associated with comments from Dr Hillier that the use of “transmitted” rather than “received” causes some confusion.
[49] OS at 25.
[50] AS at 5.14-5.16.
When Dr Hillier’s comments[51] are read in the context of the claim, his complaint may more naturally be phrased as being that the claim does not define where or to what the first and second information sets are transmitted to. The claim simply says the information is transmitted, and separately that there is a database/programmable logic device (PLD) which stores/uses the transmitted information, and Dr Hillier says it is not clear whether the database/PLD is part of the transmission side or part of the receiving side of the system.
[51] NH-14 at 1(vi)
While I share Dr Hillier’s frustration at the imprecision of the claim, this particular point is reasonably straight forward (at least as far as construction is concerned). I am largely in agreement with the Applicant. “Transmitted” is the past tense, and clearly references the action of “transmitting” from feature (a)(iii). This means that while it has not been expressly stated by the claim, it is a requirement that the first and second information be wirelessly transmitted from the electronic sensor and that the information is ultimately received by the database and PLD. For completeness, I will note that there implicitly is also a wireless receiver (or multiple), which may have wired or wireless communication with the database and PLD. That is, it is not required that the communication is wireless at all points between the sensor and the database or PLD; just that the sensor(s) are configured to wirelessly transmit the information to somewhere.
For the avoidance of doubt, I am of the opinion that the claim places no limitation on the location of the database or the PLD. It hypothetically could be internal within the sensor housing, so long as the sensor transmits the information by a wireless method. Since that arrangement is exceptionally unlikely, in practice the database and PLD will be physically remote from the sensor, but there is no particular location required. The database could reside within the earth working equipment, a box adjacent the electronic sensor, or a server on the other side of the planet. Similarly, the database and PLD may or may not be co-located.
Feature 1(c): performance of an operation of the earth working equipment
The Opponent submits that this is an “exceptionally broad” phrase. Dr Hillier had concerns that the claim was unclear, as “there was no commonly agreed on metric(s) for assessing “performance” in relation to earth working equipment.”[52] The Opponent notes that Mr Holland does not provide an independent construction of this term, but rather was given a construction to follow[53]:
“‘Performance of the operation of the earth working equipment’ is a phrase with a broad scope including, amongst other things, the presence, health, wear, impact and fill of the bucket and/or truck tray within its scope.”
[52] NH-14 at 1(vii)
[53] Holland at 5.15
The Opponent notes this appears to be based on the construction arrived at by the Hearing Officer for CQMS Pty Ltd v ESCO Group LLC[54] at 22. The Opponent argues that this is of no assistance, as the phrase under consideration in this case is different – it is the performance of an operation, not performance of a bucket.
[54] [2020] APO 53 (the ‘parent decision’)
The Applicant notes that breadth of a term is not of itself objectionable, and also notes that Dr Hillier also said “it was commonly understood … that ‘performance’ is a measure of how well something does what it is designed to do.”[55] Regarding Mr Holland’s use of the definition provided, the Applicant submits that where an earlier decision has considered the matter and arrived at a definition of performance, it is not unreasonable to rely upon it. They also note that while Mr Holland accepted the definition, he did provide some additional comments, specifically that “the term ‘performance’ has a clear meaning being a reference to the amount of material being moved over a period of time.”[56]
[55] Ibid. Note that AS at 5.18 quote Dr Hillier with very similar but slightly different words, I am not sure where the Applicant’s quote is sourced.
[56] Holland at 5.16.

As an observation, Mr Holland’s definition of “performance” as “material… over a period of time” is quite a bit more limited than the definition that he was told to assume. To the extent that any of his submissions may have been biased by being given a definition to follow, since he then immediately does not follow that instruction, it seems likely he did not allow the instructions to impair him from providing his honest commentary. Having said that, construction is not the role of experts.
The correct approach to claim construction is to begin with the plain meaning of the claims, and to the extent there is ambiguity to read the claim in light of the specification as a whole. Looking to the Macquarie Dictionary, several definitions of “performance” are provided, the most relevant to the present matter being:
“7. the way in which something reacts under certain conditions or fulfils the purpose for which it was intended”[57]
[57] Macquarie Dictionary (online at 9 April 2024) ‘performance’ <>
This is in agreement with the definition provided by Dr Hillier: a measure of how well something does what it is designed to do. In this case, the “something” is any operation of the earth working equipment. In the event I thought there was any ambiguity here, my reading of the specification confirms this meaning of performance, as the most detailed descriptions at [50]-[51] describe that the fullness of the bucket is used as a metric for how well it digs material. This is not read as the only possibility, but as an example of performance. I see no reason to diverge from the plain meaning of the word to the narrower meaning suggested by Mr Holland.
Feature 1(c): using the transmitted first and second sets of information from… one or more of the plurality of digging cycles
During the hearing it became apparent that there was divergence about this phrase. The dispute arose out of the Opponent’s submissions to the effect that the invention was using a “generic database” which determined performance of an operation by unspecified means[58]. The Applicant submitted this was an oversimplification, that failed to account for (among other things) “how the combination of the information gathered from both the bucket… and the truck tray… can be used to determine the performance of an operation.”[59]
[58] OS at 106.
[59] AS at 7.18.
The word “using” has some significance here. It can be deployed in a range of ways, and the Macquarie Dictionary provides a range of definitions, but in the present context I consider the most relevant to be:
“1. to employ for some purpose; put into service; turn to account…
[60] Macquarie Dictionary (online at 31 May 2024) ‘use’ < to avail oneself of”[60]
The significance here is that the PLD does not merely have access to the stated information and separately make a determination of performance, but rather the defined information is employed in the purpose of determining the performance. More simply, the determination involves some calculation from, or logical assessment of, the defined information. Any determination which does not actually employ the defined information is not a determination according with the claim. That is, I consider that the phrase “using the transmitted first and second sets of information” does properly limit the scope to one where both defined sets of information are relied upon to make the determination of performance.
The wording of the corresponding feature in claim 7 is slightly different, but the same conclusion applies; “using both of the transmitted information from a current operational cycle and past operational cycles” plainly requires using both types of information detected from both current and past operational cycles in determining performance.
Feature 1(a)(iii): wirelessly transmitting the detected first and second sets of information
As noted above, the parties had some comments directed to alleged ambiguities arising from “wirelessly transmitting” information and what that implies about the location of the database and PLD. Briefly however, I want to draw full attention to the fact that this is the third sub-feature of the electronic sensor. That is, the claim requires a sensor(s) to wirelessly transmit the specified information, not merely that the data is wirelessly transmitted at some point by some other device. So, for example, a sensor with a wired connection to a PLD, with the PLD then having a connection to a wireless transmitter for communicating with a remote database, does not fall within scope of the claim.
Claim 7 includes a similar feature, and the same comments apply.
Claim 7: operational cycle to fill the truck tray
While the parties’ written submissions did not engage with this directly, I want to clarify this term at this stage, as other matters depend on the phrase. As noted above, most of the debate around construction was framed in the language of claim 1, but there are a couple of significant differences with claim 7. In claim 1, the relevant cycle was a digging cycle, which by plain language involves a bucket (or equivalent tool) scooping earthen material, moving the material to a truck (or equivalent), dumping the bucket load, and returning to begin a new cycle. In contrast, claim 7 refers to “an operational cycle to fill the truck tray”.
“Operation” has a broad scope. The Macquarie Dictionary provides a range of definitions, but in the present context I consider the most relevant to be:
“noun 1. the act, process, or manner of operating.
2. the state of being operative: a rule no longer in operation.
3. the power of operating; efficacy, influence, or virtue.
4. exertion of force or influence; agency.
5. a process of a practical or mechanical nature in some form of work or production: a delicate operation in watchmaking.
6. a course of productive or industrial activity: building operations.
7. a particular course or process: mental operations.”
That is, an operation is any action or process, or course of such actions or processes. The claim limits this broad scope to being “to fill the truck tray”. “To” is a versatile word, with the Macquarie Dictionary providing 28 definitions[61]. Relevantly to this matter, the definitions include
“4. expressing a point or limit in time: to this day.
[61] Macquarie Dictionary (online at 7 August 2024) ‘to’ < expressing aim, purpose, or intention: going to the rescue.”
This leaves me with the nominal choice of an operational cycle extending until the truck tray is filled, or an operational cycle for the purpose of filling the truck tray. Looking to the description does not resolve the ambiguity, as it includes no equivalent phrase. The only relevant example discussed in detail relates to digging cycles, so it is perhaps implied the phrase refers to the second option. However, in the context of the claim, what is defined is detecting the duration of the operational cycle, which lends itself more to the first option.
Neither expert advanced any specific technical meaning for the phrase, but each offer insights on how the person skilled in the art might read the phrase. Dr Hillier advanced that, in context, “operation” “refers to a component part of a digging cycle (e.g. the operation of digging, swinging, dumping, returning to dig again, etc)”[62] (emphasis added). In the context of claim 7, he further commented that (emphasis added):
“I interpret ‘the duration of an operational cycle to fill the truck tray’ as meaning that the electronic sensor(s) detects information relating to how much time a single operational cycle to fill the truck tray takes. If the truck tray is being filled by a conveyor belt in a continuous stream, then the single operational cycle to fill the truck tray would be the time from turning the conveyor on when the truck is empty to the time of turning it off when the truck is full. If the truck tray is being loaded by an excavator, then a single operational cycle to fill the truck tray would be one digging cycle (i.e., ‘dig-swing-dump-return’) and multiple operational cycles of this type are required to fill the truck tray.”[63]
[62] Hillier#1 at 74.
[63] Hillier#1 at 96
That is, Dr Hillier seems to imply that the operational cycle in question depends on the operational means used to fill the truck tray. He reads a digging cycle as being for filling the truck tray, and so equates the digging cycle to an operational cycle to fill a truck tray. Dr Hillier seems aware of both possible constructions I identified above, and considers either appropriate, but would use the second option where it is possible.
Mr Holland appears to have a similar understanding for an operation of a bucket[64], but in the context of claim 7, he refers to the “time taken to fill the truck tray with earthen material”[65]. Taken together, I understand Mr Holland’s comments as being that an operation may refer to a single step in a process, or all of the steps, and in claim 7 he reads it as being all of the steps of filling the truck. That is, Mr Holland seems to consider the first possible construction to be the correct choice.
[64] Holland at 5.9.
[65] Holland at 5.25.
All else being equal, I consider I should not limit the scope of the claim any more than necessary, so I prefer the broader interpretation that operational cycle is inclusive of both individual process steps and overall processes, so long as they are processes/steps taken in or for the purpose of filling the truck.
S40(2)(a) enablement - principles
Subsection 40(2)(a) of the Act provides:
“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.”
The relevant principles were well summarised by Burley J in Cytec Industries Inc v Nalco Company[66]at [143]-[144]:
[66] [2021] FCA 970 (“Cytec”).
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker considered at [95] that it involved the following three steps:
(1)Construe the claims to determine the scope of the invention as claimed;
(2)Construe the description to determine what it discloses to the person skilled in the art; and
(3)Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
In the present case, the delegate (at [54]) added to these the further questions to be considered, citing Evolva SA [2017] APO 57 at [45]:
(1)Is it plausible that the invention can be worked across the full scope of the invention?
(2)Can the invention be performed across the full scope of the claims without undue experimentation?”
The Applicant also draws my attention to the office’s decision in Grant Fisher v ToolGen Incorporated,[67] which the Applicant quoted from extensively[68]. I am in general agreement with Toolgen, but I note it is essentially following the test from Cytec.
[67] [2018] APO 65 (Toolgen).
[68] AS at 9.3-9.4.
S40(2)(a) enablement - application
Both parties’ submissions for enablement rely entirely on their submissions for support[69]. While it has been said that they are “two sides of the same coin”[70], and there are significant overlaps between the relevant considerations, in the present case, it will be convenient to address some of the arguments under enablement first, and then return to the remaining issues under support.
[69] OS at 167, AS at 9.5.
[70] Merck at 543.
Claim 1: Detecting bucket fill and truck fill with the same sensor
At the hearing, the Opponent submitted that the claims included the situation where a single sensor was used to detect both sets of information, which, they argued, was not supported or enabled.
Regarding construing the claims, as discussed in the construction section above, I have come to the construction that the claim requires at least one sensor for detecting bucket fill information and truck fill information. While this may include two or more separate sensors which individually measure bucket fill and truck fill respectively, it also includes where a single sensor detects both sets of information.
Regarding construing the specification, the Applicant directed me to a portion of the specification disclosing a monitoring system “mounted or integrated with, for example, a boom or other support of the excavating equipment”[71], and argued that a sensor in this position would be able to detect both bucket fill and truck fill. However, this paragraph needs careful consideration. The surrounding sentences are in reference to cameras positioned to have line of sight to the wear members, so this paragraph appears mostly directed to the wear monitoring system. Having said that, there is also disclosure that the performance monitoring system “may, for example, use the same electronic sensors used for monitoring the status and health of the wear parts”[72]. Taken together, there is a disclosure of mounting a sensor on the boom. However, I do not read this combined disclosure as being a disclosure that such a location would be suitable for detecting everything, but merely that it is one of the locations considered suitable for certain (unenumerated) embodiments.
[71] Specification at [53]
[72] Specification at [50].
The Applicant also drew my attention to passages such as:
“The above disclosure describes specific examples for a bucket wear monitoring system. The system includes different aspects or features of the invention. The features in one embodiment can be used with features of another embodiment. The examples given and the combination of features disclosed are not intended to be limiting in the sense that they must be used together.”[73]
[73] Specification at [61].
With respect to the Applicant, this general averment that some unspecified features may be used with other unspecified features does not necessarily amount to a workable disclosure of any particular combination. I read it as merely a boilerplate expression intended to capture any combination of disclosed features where it was already clear to the reader that said features could be combined, and how to do so. It does not add to the disclosure in any meaningful way.
In addition, the Applicant noted that the specification stated (emphasis added) “The electronic sensors may be, for example, a camera…”[74]. The Applicant submitted that this showed the specification envisaged the plurality of sensors discussed in the paragraph may be a single camera (or other sensor). The relevant paragraph should be treated with care, in that it refers to multiple independent embodiments, which may optionally be combined, and then includes statements that may refer to individual embodiments, certain combinations of embodiments, or any combination of embodiments. However, even giving the Applicant the full benefit of the doubt, all that is provided is a simple averment that one sensor may be used to perform some non-specific embodiments of the invention. There is no disclosure in the specification which teaches how this is to be achieved, such as what locations may be suitable, or how the single set of data from the one sensor is distinguished into the two separate sets of information defined by the claim.
[74] Specification at [50].
I consider that the solution disclosed involves detecting bucket fill information using a sensor directed to the bucket, and/or detecting truck fill information using a sensor directed to the truck. The general statement that embodiments may be combined may lead to disclosure of a first sensor directed to the bucket and a second sensor directed to the truck. I am not satisfied there was a disclosure of a single sensor directed to both objects.
As to whether it is plausible to work the invention across the scope, including where a single sensor is used, the Applicant submits that it may be “easily envisaged”[75] how a single sensor may be able to detect both things. The Opponent argued the Applicant’s position was predicated on the following statement from Mr Holland:
“I consider that there are possible positions for a single sensor which could detect both sets of information, for example, on the boom of the earth working equipment or an independent location. For example, figures 1 and 3 in [D4] illustrate that this is possible.”[76]
[75] AS at 5.13.
[76] Holland at 11.26.
Mr Holland’s comments indicated that he thought D4 was an example of where both sets of information were detectable by the same camera. I note that Dr Hillier was in agreement that it is plausible that a sensor mounted on the boom may be used to observe both sets of information[77]. As will be seen later, I think the experts may have been allowing their knowledge of the present application to influence their reading of D4, which I do not accept to be an example of detecting both sets of information with a single sensor. Regardless, the disclosure of D4 is not relevant to deciding if the specification enables the claimed scope.
[77] Hillier#2 at 70.
Mr Holland and Dr Hillier appear to agree that there may exist plausible locations on the boom where the sensor may be mounted such as to be able to detect both sets of information. However, the scope of claim 1 is not limited to a sensor mounted to the boom, or any other particular location. This suggests to me that the claim extends to a wide range of locations, including where the sensor would not plausibly be able to detect both sets of information.
At the hearing, the Applicant made reference to the purposive rule of construction, essentially arguing that any location which would not plausibly be suitable for detecting both sets of information must be excluded from the scope of the claim as absurd constructions. I think that the Applicant is overextending the purposive rule. They are correct in that some locations may be the type of location which would be discarded from the scope as absurd (e.g., inside the cab facing the operator). However, other locations, such as mounted to the truck, are inherently non-absurd locations for placing a sensor (it is, after all, one of the preferred locations when multiple sensors are used) but do not match the locations which the experts offered as “plausible” locations for detecting both sets of information. Even if I was persuaded by the Applicant’s approach to limiting the scope to only those locations which are plausible for detecting both sets of information, the question becomes whether the specification has provided sufficient guidance so that a PSA can identify such plausible locations for everything that falls within the scope of the claim and utilise these so as to work the invention without an undue burden.
Regarding undue experimentation, the evidence presented is relatively limited, but there are some points that can be made. In the present specification, the disclosed solutions for monitoring the bucket fill and truck fill involve separate sensors mounted fixedly and directly pointed at the object to be monitored. Given that the truck and bucket may move relative to each other in essentially arbitrary ways, e.g., the bucket may not dump over the exact same location of the truck on each pass, I cannot envision any location suitable for both objects which would result in a similar fixed relation between sensor and monitored objects as the disclosed embodiments. As such, any single-sensor solution would require the PSA to extend the teachings of the specification to arbitrary sensor-object relative position and orientations. This would involve considerable knowledge of sensor systems, earth working equipment, and sophisticated computer vision tools.
However, when it comes to this knowledge, the Applicant submitted that the PSA would not have had detailed knowledge of the use of sensor systems in this art[78], and Mr Holland considered the specific example of detecting earthen material fill by means of a line of sight sensor was already a unique concept[79]. Moreover, Dr Hillier referred generally to “many difficulties”[80] in terms of locating sensors, and certain difficulties related to image data analysis[81], although these comments were not specific. Additionally, Dr Hillier also commented on a range of problems that would need to be solved when generalising the disclosed method to multi-dimensional data[82], which he thought would involve further invention.
[78] AS at 4.5.
[79] Holland at 11.15.
[80] Hillier#1 at page 20, paragraph 41, being a quote from prior evidence.
[81] Hillier#2 at 45.
[82] Hillier#2 at 69.

Taken together, I consider this sufficiently establishes that there would be a considerable undue burden on the PSA when trying to extend the teachings of the specification from the specific case, where the sensor is fixed relative to the object monitored, to a more general case, where the sensor and object move relative to each other in potentially arbitrary ways. Nor does the specification provide any guidance on where to locate a single sensor so as to have a suitable line of sight on both the bucket and truck tray. It follows that the invention is not enabled for a single sensor monitoring both receptacles.
Claim 1: Determining performance of an operation of the earth working equipment.
The Opponent argued that “determining performance” is an “exceptionally broad”[83] term, and that the specification provides no examples of the types of determinations described by Mr Holland, and the claim “encompasses any performance metric of any operation that can be performed by earth working equipment”[84].
[83] OS at 151.
[84] Ibid.
The Applicant rejects the Opponent’s characterisation[85], with reference to the points they made regarding construction. The Applicant submitted that
“A person skilled in the art would know, based on the information being collected, that the ‘performance of an operation of the earth working equipment’, would be reasonably limited to metrics that are capable of being determined by the claimed sensors (being sensors that use line of sight) and which could be reasonably determined by a person skilled in the art using the information collected (being the specific first and second information of each of the claims).”[86]
[85] AS at 8.17.
[86] AS at 5.25.
At the hearing, they elaborated that the term “performance” is of broad applicability but still limited by what can logically be done with the information, such as, for example, something like dividing the capacity of the truck tray into a certain number of efficient bucket loads.
I have considered the construction of the claim above. “Performance” encompasses any measure of how well the earth working equipment performs an operation. I do not accept the Applicant’s construction. To me, the Applicant’s argument appears to be circular reasoning; that is, they are arguing the scope of the claim does not extend to unenabled or unsupported performances, because performance is read to be limited to only those enabled and supported. This extends beyond purposive construction into the category of construing with a view to what the applicant may have wanted, which was warned against by Emmet J in Lundbeck, as discussed above.
The Opponent referred to a statement from Mr Holland (emphasis added):
“In the context of the Opposed Application, I understand the PLD to be collecting and assessing the information received from the at least one electronic sensor. Paragraph [50] of the Opposed Application describes some of the functions of the PLD with respect to performance. At least one of the functions of the PLD is to make a ‘determination’, for example, regarding whether the amount of earthen material received during each of a number of digging cycles by each of the bucket and truck tray is within the performance criteria, expectations or objections for that earth working equipment.”[87]
[87] Holland at 5.17.
The Opponent says the specification provides no examples of this type of determination or performance criteria. The Applicant argues that:
“That does not involve a common sense reading of the disclosure. If one can measure the volume of the load and/or the percentage of the bucket that has been filled at one point in time, one can necessarily do so over a period of time. Those metrics are inputs into the determination of the performance of an operation of the earth working equipment. This is clear from claim 1 itself, in which the two sets of information gathered by the sensors is ‘information pertaining to an amount of earthen material gathered in the bucket during each of a plurality of digging cycles’ and ‘information pertaining to an amount of earthen material loaded in the truck tray by the bucket during each of the plurality of digging cycles.’”[88]
[88] AS at 5.24.
I think the Applicant is misapplying the “common sense” rule of construction. The rule supports that common sense is used to understand what has been disclosed or claimed, without applying overly literal interpretations to the words of the document. The common sense rule is not used to add common sense to the disclosure.
With that in mind, I am inclined to agree with the Opponent. The specification simply does not disclose Mr Holland’s “material over time” concept, or any other example that I would say is analogous. The only examples disclosed by the specification that might be said to relate to how well the bucket digs are determinations of the amount of material in the bucket from distance measurements of material in the bucket, and determining digging cycle times.
Having said that, it may be common general knowledge that fill amounts and duration measurements could be used to further determine some material over time metric. That does not mean such a further determination was disclosed, only that this metric would be one form of the invention which plausibly worked without undue burden.
However, as noted above, the relevant question is not whether there is something falling within scope that may be worked without undue experimentation. The question is, can the invention be worked across the whole scope without undue experimentation? The claims extend to determining any “performance of an operation of the earth working equipment” by using the bucket fill and truck fill information. This would include performance measures disclosed by the specification, such as bucket and truck fill, and some reasonably simple examples like material over time. It also may include wear or loss of the wear members, as this is reasonably a measure of how well the earth working equipment does what it is designed to do (in this example, resist wear). There is no disclosure of how to determine wear from bucket or truck fill information, and there is nothing available to me which even hints at how this could be done. This, to me, indicates it is implausible that health-type performance can be determined from the first and second sets of information, or at the very least, that extensive experimentation would be required.
At the hearing, there was some brief discussion about some other performance measures like fuel efficiency. The Applicant’s answer to this was the same as I described above; that this type of performance should be excluded from the scope of “performance determined using the first and second sets of information” as it cannot be logically derived from bucket fill and truck fill. While I understand the Applicant was making the comment in the context of construction, as I said above, such an approach is circular. I see no reason why the words of the claim should be read to exclude fuel efficiency from the scope of “performance”. The inescapable conclusion is that to the extent the claim encompasses such types of performance, it is not enabled.
Overall, I consider the specification does not provide an enabling disclosure across the whole scope of determining performance of the earth working equipment using the first and second sets of information.
Claim 1 summary
I consider that the invention defined by claim 1 includes material which has not been enabled by the specification. Specifically, the specification does not enable the invention across the whole scope of “at least one sensor for” sub-features 1(a)(i)-(iii), nor across the whole scope of determining a performance of an operation of the earth working equipment using the first and second sets of information.
Claim 7: “at least one sensor” and “determining performance”
Both parties’ submissions[89] regarding this aspect of claim 7 rely entirely on the corresponding submissions for claim 1. I am in agreement. While claim 7 differs in respect to what the first and second sets of information are, the claim still requires “at least one sensor” for detecting both sets of information, and requires determining “performance” across its whole scope. This is not enabled for essentially the same reasons discussed above.
[89] OS at 159, 167; AS at 8.26, 9.6
Dependent claims
Given the above points, I will first briefly note that none of the dependent claims appear to resolve the issues of the independent claims. Claim 11 does at least partially resolve the issue associated with “at least one sensor” as it defines first and second sensors, but it does not resolve the issue of “performance”. The disclosure of the specification does not sufficiently enable any of claims 1-11.
S40(2)(a) summary
The specification does not provide an enabling disclosure for the invention defined by claims 1-11. Independent claims 1 and 7 lack support because the specification does not enable the invention across the whole scope of “at least one sensor for” sub-features 1(a)(i)-(iii), nor across the whole scope of “determine a performance of an operation of the earth working equipment” using the first and second sets of information.
S40(3) support - principles
Subsection 40(3) as amended by the Raising the Bar Act requires that the claims must be supported by matter disclosed in the specification. In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[90], Burley J explored the requirement of support at [546]-[547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
‘...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.’
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed.”
[90] [2020] FCA 1477 (Merck)
In CSR Building Products Limited v United States Gypsum Company[91] that was referred to with approval in Merck, the delegate, Dr Barker, formulated the following test in order to determine whether a claim is supported by the description:
o   Construe the claims to determine the scope of the invention as claimed,
o   Construe the description to determine the technical contribution to the art, and
o   Decide whether the claims are supported by the technical contribution to the art.
[91] [2015] APO 72 (CSR)
The parties appear to be broadly in agreement with these principles[92]. The Applicant also directs my attention to the recent case of Toolgen Incorporated v Fisher (No 2)[93] which quoted Merck as I have above and further highlighted the need to weigh the contribution to the art against the scope of the claims.
[92] OS at 139-140, AS at 8.5-8.6.
[93] [2023] FCA 794
The Applicant also directs my attention to Encompass Corporation Pty Ltd v InfoTrack Pty Ltd[94], where Perram J made clear that the former law about fair basis has no relevance to the question of support[95].
[94] [2018] FCA 421; 130 IPR 387 (Encompass FCA)
[95] Ibid at [170]-[171].
The Applicant argues that Encompass FCA stands for the proposition that a specification may provide support even where there is “no strict ‘disclosure’ of the invention”[96]. It involved a situation where the specification was “agnostic” as to whether the data sources must be remote or not, but the claims define that the data source must be remote. If the Applicant meant that there was no requirement for the specification to identify the invention, then I agree[97], but as per CSR and Merck, the claims must be supported by the technical contribution to the art disclosed by the description.
[96] AS at 8.5.
[97] C.f. Encompass FCA at [155].
To that point, it is useful to consider TCT Group Pty Ltd v Polaris IP Pty Ltd[98]:
“In Fuel Oils/Exxon, (T409/91) [1994] OJ EPO 653 the EPO Boards of Appeal said, in a passage at 3.3 that has been often cited, including by Lord Neuberger in Generics UK at [97], that: (emphasis added):
‘…[there is a] general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified… This means 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.’
The language of ‘at the disposal of the person skilled in the art’ should be understood to mean that the patent must enable the invention to be performed by such a person.
In [Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540; 167 IPR 1], Rofe J observed that one way for the claim impermissibly to exceed the technical contribution to the art is for the claim to cover ways of achieving the desired result which owe nothing to the patent or any principle that it discloses: at [483].”
[98] [2022] FCA 1493; 170 IPR 313 (“TCT Group”) at [243]-[245]
In identifying the technical contribution to the art, it may be useful to consider the following from CSR[99]:
[99] CSR at [111]-[113]
“The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. The distinction was explained by Lord Walker in Generics at [30]:
‘The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. ‘Inventive concept’ is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 9 paras 112-113) which entitles the inventor's achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.’
In the same case Lord Neuberger of Abbotsbury described the technical contribution at [95] as:
‘in the context of a simple product claim such as the present (especially where the claim is to a single chemical product), the technical contribution is (at least in the absence of special factors) the product itself. As I have suggested, the technical contribution can often be equated with non‑obvious novelty – what is new to the art and not obvious is really another way of identifying the technical contribution.’
An important question will often be whether the technical contribution to the art is a general principle or the specific examples in the specification. Lord Hoffmann gave some examples in Biogen at page 49:
‘Thus if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect. On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them.’” [citations omitted]
Taken as a whole, I understand the correct approach to be that laid out by CSR, as modified by Merck:
o   Construe the claims to determine the scope of the invention as claimed,
o   Construe the description to determine the invention described,
o   Ascertain the technical contribution to the art, and
o   Decide whether the claims are supported by the technical contribution to the art.
In ascertaining the technical contribution to the art, I will be considering the specific products (and/or methods) disclosed by the specification, how and to what extent they advance the state of the art, and to what extent (if any) they demonstrate a broader principle of general application (CSR). In deciding whether the claims are supported by the technical contribution to the art, I will be assessing what (if anything) falling within the scope of the claims owes nothing to the invention and is not at the disposal of the PSA (TCT Group).
S40(3) support – application
In applying the approach from CSR, the first steps are to construe the claims and description, which I have done as set out above. The next step is to determine the technical contribution to the art.
The technical contribution to the art
Above, under “The Specification”, I set out my understanding of the invention described. The invention described, in very broad terms, relates to two (or possibly three) classes of monitoring system, which may overlap.
The first is the class that was discussed in depth in the related decisions, and relates to the monitoring of the health of the bucket and/or attached wear parts, such as GET. It will suffice for now to say that this was exemplified by the “pixel counting” method, where images of the GET were analysed in the form of measuring the length of the GET by way of counting the number of pixels relative to a reference line, and gauging wear by a change in length over time.
The second class relates to amounts of earthen fill and the cycle time of the digging operation. For the amount of fill, only two examples were provided, and they are relevantly the same: an earth holding portion of the earth working equipment (bucket, tray) has an attached electronic sensor for measuring distance between the fixed sensor and a pile of gathered earthen material, and the system calculates the volume of earthen material using the distance and “established fill profiles.” As noted above, there is brief mention of a 3D camera, but no details of how it is to be used, which I take to mean it is intended to be used in a manner analogous to the other distance sensing devices.
The third class relates to cycle time. The only example provided was in respect of detecting the digging cycle time from registering the start of a new digging cycle by a spike in force felt by the bucket and the orientation of the bucket. The spike in force is to be detected using an accelerometer, pressure sensor, strain gauge, or load cell, and the orientation by an inclinometer or GPS[100].
[100] Specification at [51]
As noted by CSR above, a question arises as to whether the technical contribution comprises these products, or some general principle that can be derived from them and the rest of the specification.
Regarding fill amounts, there does not appear to be a great disagreement between the parties about what is disclosed. The preferred forms of the description use a PLD and a database of established fill profiles to convert distance measures into fill amounts. Instead, the argument seems to be about what principle(s) of general application arise from this disclosure – the Opponent says none at all[101], and, as I understand it, the Applicant treats computer vision and analysis as the relevant principle of general application.
[101] OS at 149

Claim 3 is appended to claim 1 (or 2), and adds the limitation of
“a database storing fill profiles for the bucket, wherein the at least one electronic sensor detects a distance between the at least one electronic sensor and the earthen material in the bucket along the line of sight, and wherein the programmable logic device uses the distance and the fill profiles to assess the amount of earthen material in the bucket.”
The Opponent argues that D9 implicitly discloses the use of a database of stored fill profiles[310], citing comments from Dr Hillier who stated that:
“The position of the load surface is determined in a 1D or 2D sense (see page 10, paragraph 2 [of D9]) and these would fit the definition of a fill profile that I have interpreted as the meaning in my feature construction for this integer.”[311]
[310] OS at 91.
[311] NH-18 at row 3(ii).
This, however, mischaracterises claim 3. Dr Hillier is essentially reading claim 3 as saying that the sensor detects the current shape of the surface of the load, then records this shape, and then these recorded shapes are used to calculate the load in the bucket. I broadly agree that this is what D9 discloses. However, it implies Dr Hillier construes the fill profiles as being the measured shape of the surface of gathered material in the bucket at the time of sensing. I do not agree with that construction of claim 3. As I have construed the term in respect of this application, fill profiles are the shape which earthen material tends to form as it is gathered in the receptacle. A tendency is more than what happens on a given digging operational cycle, it relates to what may be typically expected. That is, it is an established fill profile. D9 does not disclose the use of established fill profiles. I also note that since D9 measures the shape of the surface of the gathered earthen material, and uses this shape in conjunction with the known geometry of the bucket to determine a volume of the load, it essentially bypasses any need for reference to established fill profiles. Consequently, the Opponent has not demonstrated any motivation to alter D9 to arrive at the invention claimed. Based on the evidence available, I cannot find claim 3 lacks an inventive step.
Claim 4
Claim 4 is appended to claim 1 (or any of 2-3) and adds the additional feature of
“wherein the programmable logic device uses the transmitted first and second sets of information from a current digging cycle and past digging cycles to make the determination” (emphasis added).
The requirement of using current digging cycle data essentially requires that determinations happen live, and as such the Opponent’s case for essentially the same reasons as discussed for claim 7. Based on the evidence available, I cannot find claim 4 lacks an inventive step.
Claim 5
Claim 5 is appended to claim 1 (or any of 2-4) and adds the additional feature of
“wherein the programmable logic device assesses the duration of each of the digging cycles to make the determination.”
As an initial observation, while there are some aspects in common with feature 7(a)(ii), claim 5 is distinct in that a) it relates to digging cycle duration rather than operational cycle duration, and b) it does not require that the determination use current cycle data, so need not occur live.
The Opponent submits that assessing duration of each digging cycle would have been a routine modification of D9[312], citing Dr Hillier, who stated that:
“The system disclosed in D9 collects all the information that would be required in order to determine the duration of a current operational cycle. At the Priority Date, it would not have been particularly complicated to modify D9 to do so. For example, if a sensor were mounted so as to always be able to see the bucket, then the duration of the cycle could be detected by detecting that the bucket is empty, then the bucket contains material (including the continuous transition as it fills), and now the bucket is empty again. Alternatively, if the disclosed sensor were mounted at the top of the boom, the duration of an operational cycle could be detected based on the sensor seeing the bucket (including where it sees the bucket), not seeing the bucket, and then seeing the bucket again.”[313]
[312] OS at 130.
[313] NH-18 at row 5.
The Applicant does not seem to dispute that D9 could be modified in such a way, but instead submits that the Opponent has not established any motivation to do so[314].
[314] AS at 7.47.
At first instance, the Applicant appears correct, that Dr Hillier’s comments do not identify any motivation for the modification, such that it appears his logic was largely ex post facto. Having said that, it was accepted that a common metric for performance in the art was amount of material moved over time. This would provide sufficient inciting motivation. Given that motivation and given that there is no real dispute that the PSA could modify D9 in such a way, on balance I consider that it would have been obvious to the person skilled in the art to arrive at the solution claimed by claim 5.
Claim 6
Claim 6 is appended to claim 1 and adds the additional feature of
“wherein the at least one electronic sensor further detects and transmits information pertaining to the duration of an operational cycle to fill the truck tray, and the programmable logic device uses the duration to fill the truck tray in making the determination.”
The Opponent submits that this is implicitly disclosed by D9 because the system of D9 continuously monitors truck fill[315]. I do not agree with that statement for the reasons discussed above under Novelty.
[315] OS at 93.
As an alternative, the Opponent also submits that there was a CGK motivation to monitor truck fill duration[316]. The Applicant says that there is no evidence to establish this[317]. While I understand the Applicant was protesting that the Opponent had not provided reference to the evidence in respect of their argument against claim 6, as I have gone over above the evidence does establish that a general measure of performance that was CGK in the art is material over time. To me, that reasonably clearly motivates towards monitoring the duration of the relevant operational cycle, and using that information in combination with determined fill amounts to determine an amount-over-time performance measure. On balance, I consider claim 6 lacks an inventive step.
Claim 8
[316] OS at 115.
[317] AS at 7.23.
Claim 8 is appended to and narrows from claim 7, and given my finding above, need not be considered any further.
Claims 9 and 10
Claim 9 is appended to claim 1, and adds to limitation
“wherein the at least one electronic sensor further detects the presence and/or wear of wear parts on a digging edge of the bucket” (emphasis added)
Claim 10 is appended to any of claims 1-9 (i.e., to either independent claim), and adds
“wherein the at least one electronic sensor further detects the presence and/or wear of wear parts secured to the truck tray” (emphasis added).
The Opponent submits that this would have been an obvious addition to D9 given “the known importance of monitoring wear parts and the established use of sensors for that purpose.”[318] The Applicant does not appear to dispute that there was a known “importance” of monitoring wear parts, but seems to submit that this does not translate to a motivation to modify D9 in such a way, given that D9 is directed to a different purpose[319].
[318] OS at 131.
[319] AS at 7.48.
As a first observation, the claims do not require that the detected presence and/or wear of the wear parts (for brevity, wear detection) is used in the determination of performance. Secondly, consistent with my construction of “at least one electronic sensor”, while the claim includes in scope the circumstance where wear detection is performed by the same sensor as used for detecting fill amounts, it is not limited to a single sensor. In light of these observations, it appears that the wear detection defined by claims 9 and 10 is not limited to any specific working interaction with any of the other integers of claims 1-8.
Briefly referring back to the list of accepted CGK, the last two items were:
“(g) It is important to monitor the condition of wear parts so they can be replaced before they no longer protect the machinery on which they are mounted.
(h) Sensors were known in relation to monitoring GET (ground engaging tools) from a safe distance during normal commercial operation of the GET, such as being mounted on a boom.”
Regarding claim 9, I agree with the Opponent. If it is accepted that the PSA is interested in monitoring the condition of wear parts, and there were available sensors for monitoring GET, it would appear obvious to use said sensors for said purpose. To me, this does not change just because the PSA is, separately and unrelatedly, also interested in monitoring fill amounts. The Applicant’s arguments would have carried more weight if the two systems were integrated in some way, but on my reading of the claim they are not. Claim 9 does not involve an inventive step.
Regarding claim 10, it was not part of the agreed CGK that there were any known sensors for detecting presence or wear of wear parts secured to truck trays. In much of the evidence, the experts refer to wear parts fairly generally[320], and in general it seems at most points of the evidence wear parts are read as synonymous with GET[321]. Dr Hillier does acknowledge wear liners attached to trucks[322], but then does not appear to ever elaborate on truck wear members. The lack of specificity about what wear members are monitored means that, on balance, I consider the evidence does not establish that there were any known, available sensors for detecting presence or wear of wear parts secured to a truck tray. It follows that the Opponent has not demonstrated that claim 10 lacks an inventive step.
Claim 11
[320] See for example Hillier#1 at 18, quoting evidence from prior proceedings.
[321] Hillier#1 at 22.
[322] Hillier#1 at 24.
Claim 11 is appended to “any one of claims 1 to 6, 9, or 10”, but given that claim 10 is appended to “any preceding claim” it follows claim 11 is appended (directly or indirectly) to any other claim. It adds the further limitation of
“wherein the at least one electronic sensor includes a first electronic sensor secured to the bucket and a second electronic sensor secured to the truck tray.”
The Opponent acknowledges that D9 teaches that the sensor is to be mounted on the boom of the excavator, but argues that
“As claim 11 requires that the sensor provide ‘a clear line of sight’ into the bucket or the truck tray, it would have been obvious to shift the sensor from the boom to the bucket itself and to use a sensor on the truck itself.”[323]
[323] OS at 132.
At face value, this is a fairly direct example of ex post facto reasoning, where the motivation for the modification comes from the claim itself. The Opponent attempts to bolster this reasoning by reference to a statement by Mr Holland[324], but that reference should be read in context. It appears in a portion of Mr Holland’s evidence where he quotes his evidence from a previous proceeding, and was drafted in the form of Mr Holland solving a hypothetical design problem regarding a sensing system for determining at least one of presence, health, wear, impact, fill, and performance of a bucket and/or wear member. The relevant paragraph is
“The operation of the excavators would also affect the type and location of the sensors. For some types of excavators, a sensor located on the cab may provide appropriate information for monitoring a bucket and/or wear part. Sensors could also be located on the stick or boom of the excavator, or on the connections between those parts. These sensor locations could provide useful information on the performance of the system, as well as providing a good line of sight to the bucket and/or wear member. Alternatively, the sensors could be located on the bucket itself. This would be useful particularly for excavators that dig away from the cab of the operator and which therefore have limitations in what an operator can see. However, such a sensor would be exposed to harsh conditions, so would need to be capable of surviving those conditions. The sensor would also need to capable of operating in this conditions. As such, that approach would pose particular challenges not present with remote sensors. For example, a camera may not be able to effectively operate in that environment due to the level of dust interfering with its operation. I would therefore need to carefully consider the aims of the system, the environment and the types of sensors when ascertaining the type and location of sensors to assess the conditions of a bucket and/or wear parts”[325] (emphasis added).
[324] OS at 117.
[325] Holland at 11.3, page 22.
As a first observation, while Mr Holland’s comments identify a possibility of locating sensors for detecting wear on a bucket, he immediately identifies a number of challenges with such a location. That does not give much confidence that such a location would have been obvious. But, more importantly for the current claim under consideration, he is entirely silent on sensors located on a truck tray, let alone the combination of a first sensor on a bucket and a second sensor located on the truck tray. It follows the Opponent has failed to demonstrate claim 11 lacks an inventive step.
Inventive step summary
For the reasons set out above, I find claims 1, 5, 6, and 9 do not involve an inventive step in light of the combination of the CGK and D9. Based on the evidence available to me, I cannot find any of claims 2-4, 7-8, or 10-11 lack an inventive step.
Other issues
During the hearing, I raised the prospect that, given the language of “at least one sensor” for detecting both truck and bucket fill (or truck fill and duration) exists only in the amended claims, and not the specification as filed, there could be the possibility that the amendment contravened s102(1), which would result in the claimed invention having a priority date determined under s114 and Reg. 3.14, i.e., the date the amendment was filed, being 8 July 2021. At the time, I said that if I thought it necessary to investigate this further, I would invoke s60(3) and request further submissions from the parties. However, since I have come to the conclusion that this feature is not enabled or supported by the specification, the result is that the claim cannot proceed while it includes a single sensor detecting both sets of information. Any change in priority date of the claim associated with such a feature is therefore a moot point.
Finally, I am also aware that in the concurrent oppositions there were issues associated with inutility. The Opponent refers to these briefly[326]. These issues were explored in depth in the concurrent oppositions, ultimately leading to findings of inutility[327]. Since this does not form part of the Opponent’s SGP, it would only arise here if I invoked s 60(3) to consider the ground. The present claims differ from those considered in the concurrent oppositions; however, it appears to me that, if it applies here at all, the putative utility issue only arises for essentially the same underlying reasons as the s40 grounds already discussed for claim 11. As such, any amendment which resolves the s40 grounds would almost certainly resolve the putative inutility.
[326] OS at 166.
[327] CQMS Pty Ltd v ESCO Group LLC [2024] APO 17 at 270-309 and CQMS Pty Ltd v ESCO Group LLC [2024] APO 29 at 180-233.
Given my conclusions above, I consider that expanding this already protracted decision to investigate utility or priority date issues would serve no useful purpose.
SUMMARY
For the reasons set out above, the opposition has been successful. The invention defined by claims 1-11 lack support under S40(3). Claims 1-11 are also not sufficiently enabled under S40(2)(a). In addition, for the reasons above, claims 1, 5, 6, and 9 do not involve an inventive step.
It is not entirely clear to me whether or not these matters can be overcome by amendment. Nevertheless, I will allow the Applicant three (3) months from the date of this decision to propose suitable amendments.
COSTS
It is usual for costs to follow the event, and I see no reason to depart from that here. Consequently, I award costs according to schedule 8 against the Applicant, ESCO Group LLC.
Andrew Burgess
Delegate of the Commissioner of Patents
ANNEX: Claims
Claims:
1. A system for monitoring earth working equipment, the system comprising:
at least one electronic sensor for
(i) detecting, by a clear line of sight into a bucket secured to the earth working equipment, a first set of information pertaining to an amount of earthen material gathered in the bucket during each of a plurality of digging cycles,
(ii) detecting, by a clear line of sight into a truck tray being loaded by the bucket, a second set of information pertaining to an amount of earthen material loaded in the truck tray by the bucket during each of the plurality of digging cycles, and
(iii) wirelessly transmitting the detected first and second sets of information;
a database to store the transmitted first and second sets of information for each of the plurality of digging cycles, and
a programmable logic device using the transmitted first and second sets of information from the at least one electronic sensor from one or more of the plurality of digging cycles to determine performance of an operation of the earth working equipment.
2. The system of claim 1 further comprising a human machine interface making the determination accessible to an operator of the earth working equipment during use to allow the operator to adjust the digging on account of the determination.
3. The system of claim 1 or 2 further comprising a database storing fill profiles for the bucket, wherein the at least one electronic sensor detects a distance between the at least one electronic sensor and the earthen material in the bucket along the line of sight, and wherein the programmable logic device uses the distance and the fill profiles to assess the amount of earthen material in the bucket.
4. The system of any one of claims 1 to 3 wherein the programmable logic device uses the transmitted first and second sets of information from a current digging cycle and past digging cycles to make the determination.
5. The system of any one of the preceding claims wherein the programmable logic device assesses the duration of each of the digging cycles to make the determination.
6. The system of any one of the preceding claims wherein the at least one electronic sensor further detects and transmits information pertaining to the duration of an operational cycle to fill the truck tray, and the programmable logic device uses the duration to fill the truck tray in making the determination.
7. A system for monitoring earth working equipment, the system comprising:
at least one electronic sensor for
(i) detecting, by a clear line of sight into a truck tray, information pertaining to an amount of earthen material gathered in a truck tray by earth working equipment,
(ii) detecting information pertaining to the duration of an operational cycle to fill the truck tray, and
(iii) wirelessly transmitting such information;
a database to store the transmitted information for a plurality of operational cycles, and
a programmable logic device using both of the transmitted information from a current operational cycle and past operational cycles to determine a performance for the filling of the truck tray.
8. The system of claim 7 further comprising a human machine interface providing the determination to an operator of the earth working machine during use of the earth working equipment to allow the operator to optimize the operation of the earth working equipment on account of the determination.
9. The system of any one of claims 1 to 6 wherein the at least one electronic sensor further detects the presence and/or wear of wear parts on a digging edge of the bucket.
10. The system of any one of the preceding claims wherein the at least one electronic sensor further detects the presence and/or wear of wear parts secured to the truck tray.
11. The system of any one of claims 1 to 6, 9 or 10 wherein the at least one electronic sensor includes a first electronic sensor secured to the bucket and a second electronic sensor secured to the truck tray.