CQMS Pty Ltd v ESCO Group LLC

[2024] APO 40

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2024] APO 40

Patent Application:             2018201714

Title:Wear part monitoring

Patent Applicant:                ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Greg Powell

Decision Date:  27 September 2024

Hearing Date:  6 March 2024, via 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 –motivation can only be supplied with hindsight – claims are inventive – support – claims encompass within them subject matter which is not, or clearly beyond what is, the technical contribution disclosed or define a materially different invention – claims not supported – clear enough and complete enough disclosure – description does not enable all things that fall within the scope of the claims – no clear enough and complete enough disclosure – utility – required features to achieve promise of the invention missing – claims lack utility – subsection 60(3) – opposition successful – opportunity to amend – costs awarded

Representation:                   Counsel for the applicant: Tom Cordiner KC

Patent attorney for the applicant: Shyama Jayaswal and Rebecca Dutkowski of Minter Ellison, Wayne McMaster, Intellectual property counsel

Counsel for the opponent: Amy Surkis

Patent attorney for the opponent: Alexia Mayer of James & Wells Intellectual Property

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2018201714

Title:Wear part monitoring

Patent Applicant:                ESCO Group LLC

Date of Decision:                27 September 2024

DECISION

The opposition is successful. Claims 1–12 lack support. The claims do not correspond to the technical contributions disclosed, extend to material that owes nothing to the disclosure, define a materially different invention and/or represent an undue burden on the PSA. Claims 1–12 do not comply with section 40(2)(a) as there is no clear enough and complete enough disclosure of the claimed invention. Furthermore, the claimed invention of claims 1–12 lacks utility as the claims do not have all the necessary features which would ensure that the promise of the invention is met.

The applicant has three (3) months from the date of this decision to file suitable amendments.

Costs are awarded against the applicant, ESCO Group LLC.

REASONS FOR DECISION

Background

1. Australian patent application 2018201714 (the application) in the name of ESCO Corporation, which later became ESCO Group LLC (the applicant), was filed on 9 March 2018 as a divisional of Australian application 2014262221 (the parent application).  The application ultimately claims a priority date of 25 November 2013.

2. A request for examination was made on 9 March 2018.  The application was accepted on 17 February 2020 and acceptance was advertised on 5 March 2020.

3. A Notice of Opposition was filed on 5 June 2020 by CQMS Pty Ltd (the opponent).  A Statement of Grounds and Particulars (SGP) was filed on 7 September 2020 (5 September 2020 being a Saturday).  Evidence in Support (EIS) was filed on 8 March 2021 following an extension due to the COVID pandemic. 

4. Following the filing of EIS, the applicant filed amendments on 1 June 2021, on 14 July 2021 following an adverse allowability report, and on 12 August 2021 following a further adverse allowability report.  The amendments were advertised, and the opponent opposed their allowance.  The amendment allowance opposition was dismissed on 31 January 2022, and the amendments were allowed on 4 February 2022.  This decision is in regard to the specification as amended. 

5. Evidence in Answer (EIA) was filed on 18 February 2022.  Evidence in Reply (EIR) was filed on 3 May 2022.  An amended SGP was filed on 2 June 2022 providing further particulars with respect to section 40, and manner of manufacture.  Following some correspondence between the Commissioner and the parties, the amendment was allowed on 28 April 2023.  Consequently, all the references in this decision to the SGP are to the SGP as amended.

6. On 2 June 2022, the applicant raised concerns that some of the EIR was not properly in reply and sought to have this evidence excluded from the opposition.  The matter on the appropriateness of some of the EIR was heard and a decision[1] issued on 11 May 2023 finding the EIR to be properly in reply.

   [1] CQMS Pty Ltd v ESCO Group LLC [2023] APO 28 (EIR decision)

7. The opponent filed a written summary of submissions (the opponent’s written submissions) on 21 February 2024.  The applicant filed their summary of submissions (the applicant’s written submissions) on 28 February 2024.  I have found these documents to be helpful.

8. Following the hearing I wrote to the parties on 17 May 2024.  I stated that, given the equivalence of evidence between the present opposition and the opposition to family member application 218201710, the findings that I had made that the claims under opposition in 2018201710 did not meet the requirements of section 40 and section 18(1)(c) of the Patents Act 1990 could be made for the claims under consideration for the present opposition.  I sought the parties’ advice on whether they wished to file further submissions.  Both parties indicated that they would file further submissions.  Consequently, I wrote to the parties with a timetable for submissions.  However, despite initially indicating that they would file submissions, the applicant advised me that they would provide no further submissions.  Consequently, no further submissions were filed.

   Family members – other oppositions

9. This application is one of several divisional applications that have been filed from the parent application.  The family is as follows:

10. The family history is somewhat fraught.  The parent application was subject to an opposition filed by the opponent.  Following a number of decisions[2], the parent application was granted in amended form.  Some of the evidence provided for the present opposition repeats some of the evidence supplied in the opposition to the parent application.

    [2] CQMS Pty Ltd v ESCO Group LLC [2020] APO 5 (CQMS 1), CQMS Pty Ltd v ESCO Group LLC [2020] APO 53, CQMS Pty Ltd v ESCO Group LLC [2022] APO 3 (CQMS 3)

11. Furthermore, each divisional application that has been accepted (and where the acceptance advertisement period has elapsed) has been opposed by the opponent, but, of those that have been opposed, two have had the opposition withdrawn by the opponent while three applications have been withdrawn by the applicant.  The present decision is simply one of a number that have been, and will be, made in relation to these oppositions. 

    Applicable law

12. The Application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  Thus, the standard of proof that applies in the present case is the balance of probabilities.

13. The opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to the grant exists.  If I am satisfied, I may refuse the application[3] or, where appropriate, give the applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition[4].  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[5].

    [3] The Act, subsection 60(3A)

    [4] The Act, subsection 60(3B)

    [5] The Act, subsection 60(3)

    Evidence

14. EIS consists of:

    ·A declaration of Dr Nicholas Hillier (Hillier 1) dated 8 March 2021, accompanied by exhibits NH-1 to NH-10

    EIA consists of: 

    ·A declaration of Mr Rodney Clarke (Clarke) dated 31 May 2021, accompanied by exhibit RKC-1

    ·A declaration of Mr Hezekiah (Ky) Holland (Holland) dated 17 February 2022, accompanied by exhibits HRH-1 and HRH-2

    EIR consists of:

    ·A declaration of Dr Nicholas Hillier (Hillier 2) dated 20 April 2022, accompanied by exhibits NH-11 to NH-18

    The person skilled in the art

15. 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.”[6]

    [6] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70].

16. 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.[7]  The experts providing evidence in an opposition are proxies for this PSA.

    [7] Ibid at [70]-[72].

    Experts

17. Dr Hillier is currently the Technology Development Manager at CR Digital, a business unit within CQMS Razer Pty Ltd, which is a related entity of the opponent.  He notes[8] that he has given evidence in the opposition to the parent application and in oppositions associated with the other divisional applications.  Dr Hillier comments[9] that, during his education as a mechanical engineer, he worked as an undergraduate student mechanical engineer for MIM Holdings and the Cooperative Research Centre for Mining, where he was involved in a project developing systems and algorithms for estimating bucket payloads in rope shovels.  While working towards his PhD, Dr Hillier continued working at the Cooperative Research Centre for Mining undertaking research and development in relation to the dynamics and kinematics of hydraulic excavators which was found to be useful for obtaining estimates of bucket payload in mining excavators.

    [8] Hillier 1 at [5]

    [9] Ibid at [11]–[12]

18. Dr Hillier also states[10] that, while completing his PhD and afterwards, he worked for VIPAC Engineers and Scientists in areas relating to vibration and acoustics analysis and the like, followed by a role in the Mining Robotics Team of the Autonomous Systems Lab of CSIRO researching applications in the mining industry in ranging sensors, localisation and mapping, and vehicle and manipulator path and trajectory planning for automatic systems.  This was followed by a stint at LC Engineering developing products that performed sensor-based monitoring and analysis of the operation and performance of excavating equipment, as well as ground engaging tool monitoring systems monitoring for tool loss and breakage.  LC Engineering merged with CQMS Razer Pty Ltd and Dr Hillier’s role in CR Digital focusses on products that involve noncontact sensing technologies.

    [10] Ibid at [13]–[16]

19. Mr Clarke is currently the General Manager of the Advanced Technology team at the applicant.  As with Dr Hillier, Mr Clarke has given evidence in the opposition to the parent application and in oppositions associated with the other divisional applications.  Mr Clarke notes[11] that the Advanced Technology team focuses on identifying upcoming technology trends in the mining industry, working to produce prototypes of new operational technology products.  Mr Clarke comments[12] that, prior to working for the applicant, he was Products Manager at P&H MinePro, where he was responsible for products including shovels, drills, draglines and electronical motors.  Prior to P&H MinePro, Mr Clarke worked as a Maintenance Manager for iron ore miner Mt Gibson Iron, and in the maintenance area for the Bloomfield Group, which mined coal in Australia.

    [11] Clarke at [2.2]

    [12] Ibid at [2.3]–[2.4]

20. Mr Clarke states that:

    “[d]uring my time at P&H MinePro, the company was, in part, working on sensing systems for monitoring fixed mining products, such as shovels.  I consider that sensing systems on fixed mining products have different considerations than sensing systems for ground engaging tools (GET), because fixed mining products are generally more stable and have access to running power.  However, as part of my duties in that role, I was aware or made aware by my team, of the monitoring systems that other companies supplying the mining industry were announcing or using, including sensing systems on GET.  Consequently, I consider that I have a very good knowledge of what monitoring systems were available in the mining industry in Australia prior to November 2013.”[13]

    [13] Ibid at [2.6]

21. Mr Clarke was provided with an extract of Hillier 1 and asked to provide answers.  The extract comprised paragraphs [17] and [21]–[49] of Hillier 1, which relate to the background to the invention set out in the application and the common general knowledge (CGK).

22. Mr Holland states[14] that he is currently employed as a consultant at Holland Consulting and assesses new manufacturing enterprises in Alaska and recommends process design, product design and workforce preparation strategies.  Prior to his employment at Holland Consulting, Mr Holland was employed by the applicant as a Design/Project Engineer and then as a Marketing Manager in the light mining and construction wear products divisions respectively, and as a Site Manager in the applicant’s San Diego facility, being involved in the design of hydraulic hammers.  He notes that, while at the applicant, he was involved in projects involving the redevelopment of buckets for different types of excavating equipment.  He states:

    “[p]art of my work on these development projects involved assessing the operation of the bucket, including the stressors placed on different parts of the system.  For example, we coated certain parts to enable us to visually see which parts were subject to stress.”[15]

    [14] Holland at [2.4]

    [15] Ibid at [3.2]

23. Mr Holland also states[16] that, since leaving the applicant in 1999, he has been employed by the University of Alaska Anchorage as the Director of Applied Technologies, teaching courses in Technology and Career and Technical Education; by Frontier Sales Inc as a sales representative, representing manufacturers of petroleum and water products; by Envision CmosXray LLC (later QSA Global Inc) as General Manager and then as Operations Manager; by Alaska Pacific University as an Assistant Professor in the Business Administration Department, teaching business subjects; and by the University of Alaska Fairbanks as the Technology Commercialization Officer in the technology transfer and commercialization team.  He states that he has established a number of start-up companies (although I note that this experience is after the priority date) – iA3, which was an “internet of things” technology start-up which applied the process used in the development of a monitoring system for a water treatment system, including considering appropriate sensors for the particular application, and integration of those sensors together with appropriate electronics and software, to many different types of businesses; EncycloMEdia, which is involved in projects involving information from existing data sources, analysing that data and using it in new ways; and AlaskaV3, which is an Alaskan social impact start-up company.

    [16] Ibid at [2.5]–[2.13]

24. Mr Holland states that he was instructed to assume that the Clarke declaration:

    “comprises the common general knowledge of monitoring systems for earth working equipment available in the period up until November 2013.”[17]

    [17] Ibid at [10.6]

    Opponent’s submissions

25. The opponent submitted the Dr Hillier was well-placed to help in my understanding of the CGK.  They highlighted his employment in the period spanning the priority date and beyond in the development of electronic sensor systems for excavating equipment.  The opponent sought to contrast this with the experience set out in Holland and Clarke. 

26. With respect to Mr Holland, the opponent particularly noted that he left the applicant in 1999 and had not worked with wear parts or excavating equipment since then.  In the opponent’s opinion, as Mr Holland lacked experience in the design and engineering of excavation equipment, wear parts and related monitoring systems in the 13 years immediately before the priority date, this limited the weight that could be placed on his evidence.

27. The opponent had nothing specific to say about Mr Clarke, other than to note that his evidence was limited to matters of CGK, with no comment on the application or the prior art.

    Applicant’s submissions

28. The applicant submitted that Dr Hillier’s evidence “should be viewed with caution”[18] given his employment with CQMS Razor Pty Ltd.  The applicant believed, given the application concerned technology which was in direct competition with the technology that Dr Hillier was developing in his role, his evidence could not be considered independent and could not be accepted without “any corroborative documentary evidence”.[19]

    [18] Applicant’s written submissions at [5.7]

    [19] See ibid

29. Regarding Mr Holland, the applicant submitted that, in his employment with the applicant, he had:

    “extensive experience gained while employed by the Applicant in designing GET bucket systems, including the placing of data loggers, strain gauges and accelerometers on newly developed products to assist in redevelopment of buckets for different types of excavating equipment.”[20] 

    [20] Ibid at [5.8]

30. Noting the opponent’s criticism of him, the applicant submitted that, while Mr Holland’s work with the applicant ended in 1999:

    “there is nothing to suggest that, for the purposes of this Opposed Application, the mechanics of GET design and the environments in which they were used, materially changed before the priority date in November 2013.”[21]

    [21] Ibid at [5.9]

31. Given his employment after leaving the applicant, which involved, inter alia, designing systems that used various kinds of sensors in different environments, the applicant submitted that Mr Holland’s knowledge of the environment GETs were subject to and the considerations that go into the choice and location of sensors, were very relevant to the opposition.  They noted that Mr Holland did not provide any comment on what CGK in the art was, but relied on Mr Clarke’s evidence on what was CGK.

32. The applicant further noted that in CQMS 1, where the same experts gave evidence, the delegate stated:

    “Dr Hillier, Mr Holland and Mr Clarke have [sic] each have varying levels of experience in the field of mining.  They each provide expert evidence regarding the invention and common general knowledge at the priority date.  I am satisfied that all three have provided relevant evidence.”[22]

    [22] CQMS 1 at [35]

33. For Mr Clarke, while noting that he is employed by the applicant, the applicant submitted that the criticism they levelled at Dr Hillier could not be levelled at Mr Clarke because his evidence simply addressed what Dr Hillier said was known at the priority date, and did not provide an opinion on the invention in the application.  The applicant also noted Mr Clarke’s statements[23] that he was responsible for products including draglines and shovels, both of which would have GETs, and that he also worked in maintenance for products used for mining iron ore, which would include GETs.

    [23] Clarke at [2.3] and [2.4]

    Consideration

34. I agree with CQMS 1 in that Dr Hillier, Mr Clarke and Mr Holland each have varying levels of experience in the field of mining.  As is often the case, it is the weight attributed to the evidence that is important.  This was also recognised by the delegate in CQMS 1.  The sentence immediately after the passage quoted by the applicant (set out above) states:

    “I will assess the evidence according to its relevance to particular aspects of the analysis.”

35. When it comes to establishing the CGK, I note Mr Clarke’s statement that he stayed “knowledgeable on what was happening in the Australian mining industry in relation to these products”[24].  The products that he stayed knowledgeable about were disclosed in the sentence immediately preceding the quoted one.  Mr Clarke states that these were “a suite of products including shovels, drills, draglines and electronical motors.”[25]  It is not entirely clear from this statement alone what Mr Clarke was knowledgeable of for these products.  There is a question about whether he was aware of monitoring systems.  However, I note that Mr Clarke’s evidence addressing that of Dr Hillier includes statements such as:

    ·“Any monitoring system Identec Solutions had was not revealed to me by my prior and current employer’s market surveillance of monitoring technology before November 2013”

    ·“I was aware of Motion Metrics and its monitoring product in 2013”

    ·“I was only aware in 2013 of a smokebased system for electric rope shovels … I have not seen a smoke-based system in use, and do not believe such a system was ever used in Australia”

    ·“I consider that the main issue with the Motion Metrics monitoring system was that it produced a lot of false positives.  This was due to the way that the system detected the edge of the bucket.”

    ·“Dr Hillier refers to issues with RFID/radio based systems … I am aware of a product called the Tooth Fairy which was known to me prior to November 2013 … I was aware of the Tooth Fairy as ESCO was running a trial of the product with Rio Tinto in mid to late 2013.  I believe this was one of the first evaluation trials of this product.”[26]

    [24] Ibid at [2.3]

    [25] See ibid

    [26] All quotes are from Clarke at [3.3]

1. Mr Clarke also states:

   “… as part of my duties in that role [at P&H MinePro], I was aware or made aware by my team, of the monitoring systems that other companies supplying the mining industry were announcing or using, including sensing systems on GET.  Consequently, I consider that I have a very good knowledge of what monitoring systems were available in the mining industry in Australia prior to November 2013.”[27]

   [27] Ibid at [2.6]

2. Contrary to the opponent’s submission, to my mind, it seems clear that Mr Clarke, while being aware of the “shovels, drills, draglines and electronical motors” in use, he was also aware of monitoring systems for these products.  I do not believe I can necessarily discount his evidence.

3. As to Mr Holland, it has to be observed that the applicant’s submission (cited at [29] above) that he was involved in the placing of data loggers, strain gauges and accelerometers on newly developed products while employed by the applicant in designing GET bucket systems does not appear to have come from the evidence of Mr Holland. I could not find statements corresponding to this anywhere. Nevertheless, it is clear from his evidence that he was involved in monitoring systems for GETs up until 1999. There is also some force with regards to the applicant’s submission that it was not that well established that differences (if any) between when Mr Holland ceased employment with the applicant and the priority date would make Mr Holland’s evidence unreliable. In any event, his experience with sensors and monitoring systems can be of use to me in this decision. Consequently, his evidence cannot be dismissed.

4. Consequently, in line with the delegate’s observations in CQMS 1, I am satisfied that all three experts have provided relevant evidence.

   The invention as described

5. The specification states that the background to the invention concerns the possible loss of wear parts provided along the edges of excavating equipment and the deleterious effects that loss may have on the equipment itself, downstream excavating equipment, and production.  The specification is also primarily concerned with a system to detect wear, or loss, of wear parts.  However, the claimed invention does not address this event.  Beyond a requirement to monitor earth working equipment, there is no nexus between the background and the claimed invention.

6. To clarify, the independent claim (claim 1 – full claim set is in the Annex to this decision) is as follows:

   A system for monitoring an earth working equipment, the system comprising:

   electronic sensors detecting characteristics of an earth working operation in each of a plurality of operational cycles and wirelessly transmitting such as information, wherein the characteristics include detecting a beginning of an operational cycle and detecting by a line of sight earthen material received in the earth working equipment;

   a database of established fill profiles of a bucket and/or a truck tray;

   a programmable logic device, wherein the programmable logic device uses the transmitted information and fill profiles to determine the amount of earthen material received in the earth working equipment; and wherein the programmable logic device uses the transmitted information to determine the duration for the current operational cycle; and

   a human machine interface providing the determinations for the current operation cycle to an operator of the earth working equipment during use to allow for adjustment of the earth working operation.

7. This claim defines at least two sensors which detect characteristics of an earth working operation, not necessarily equipment.  As far as I can tell, the claims are based upon three paragraphs of the description and figures 19 and 20 showing one arrangement of the line of sight sensor, noting that the claim does not define where the sensor is mounted:

8. The three paragraphs the claims are based upon are as follows:

   “In another aspect of the invention, electronic sensors are used to determine the digging cycle time.  In one preferred construction, programmable logic may be programed (sic) to communicate the current cycle time and past cycle times for each digging cycle of the bucket to an operator or wireless device.  This allows the operator to adjust the digging operation for optimal performance.  As examples, an accelerometer and/or an inclinometer may be used to determine the beginning of a digging cycle.  This system may be a stand-alone system or may be integrated with another system such as a monitoring system for monitoring the presence and/or health of wear parts installed on the bucket.”[28]

   “In addition to monitoring the status and health of the wear members on the bucket, the monitoring system may monitor the performance of the bucket or other wear members.  For example, the monitoring system may determine how full the bucket is loaded during the digging cycle.  As the bucket is loaded, the material being excavated has a tendency to fill the bucket with an established profile.  Once the bucket 3a has been filled by the operator the electronic sensors 27 measure the distance D1 to the load 91 within the bucket 3a (Figure 19) and programmable logic uses the distance and a database of established fill profiles to determine the volume of the load within the bucket.  The electronic sensors 27 and programmable logic may also determine a percentage that the bucket has been filled.  The percentage may be determined by comparing the current fill of the bucket to the rated capacity of the bucket.  In an alternative embodiment, the electronic sensors 27 may measure the distance D1 to the load 91 within a truck body 3b (Figure 20) and programmable logic uses the distance and a database of established fill profiles to determine the volume of the load within the truck body.  Similar to the bucket the electronic sensors may be used to determine the percentage that the truck body has been filled.  The electronic sensor may be a camera, a laser range finder, an ultrasonic sensor, or another distance measuring sensor.  Programmable logic may determine the percentage the bucket is filled based on the distance to the load within the bucket and.  The results from the current digging cycle and past digging cycles may be communicated to the equipment operator or to other databases and computer systems.  This allows the equipment operator to adapt how the operator digs to optimally fill the bucket and truck body.  The monitoring system may, for example, use the same electronic sensors used for monitoring the status and health of the wear parts or may use separate electronic sensors to monitor the fill of the bucket.  The electronic sensors may be, for example, a camera, a laser range finder, or an ultrasonic sensor.  The camera may be, for example, a 3D camera capable of determining depth or may be a camera coupled with vision recognition software as outlined above.  It is also possible for the electronic sensors for determining the fill of the bucket to be separate components of the monitoring system and not be incorporated with the monitoring system.  The use of a monitoring system to monitor the filling of a bucket could be used as a stand-alone system, i.e., without a system to monitor the presence and/or health of the wear parts.  This type of monitoring system could also be used in non-bucket applications (e.g., such as truck trays) to monitor the efficiency or optimization of the operator.

   The monitoring system may be equipped with electronic sensors that are capable of determining the cycle time of a digging cycle.  For example, the monitoring system may be equipped with an accelerometer and an inclinometer (not shown).  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.  Programmable logic may determine the time from the start of one digging cycle to the start of the second digging cycle (i.e., time between peaks when inclinometer indicates that the bucket is at the appropriate digging orientation).  The results from the current cycle time and past cycle times may be communicated to the equipment operator or to a wireless device.  This allows the operator to adjust the digging operation for optimal performance.  It is also possible for the electronic sensors for determining the cycle time to not be incorporated with the monitoring system.  Monitoring the fill of a bucket or truck tray and/or cycle time can help mine operators (or the like) to better optimize its operations.  In an alternative embodiment, a pressure sensor may be used instead of an accelerometer to determine when the digging cycle has started.  The pressure sensor may be a hydraulic pressure sensor integrated with the boom of the earth working equipment.  In another preferred embodiment, a strain gauge or load cell is used to determine when the digging cycle has started.  The strain gauge or load cell may be located in the bucket or a wear member on the bucket.  In an alternative embodiment, GPS may be used to determine the orientation of the bucket.”[29]

   No further technical information is presented.

   [28] Description at [13]

   [29] Ibid at [50]–[51]

9. As such, and looking at claim 1, the characteristics that are detected in each of at least two operational cycles include the detection of the beginning of the cycle and, by a line of sight, detection of earthen material received in the earth working equipment.  The programmable logic uses this information to firstly, when taken with fill profiles stored in a database, determine the amount of material received in the earth working equipment and, secondly, the duration of the current operational cycle.  The determinations for the current cycle are provided to an operator of the earth working equipment via an interface so as to allow “adjustment of the earth working operation”.  As is clear, this system does not involve directly monitoring loss of wear parts.

   Grounds of opposition

10. The SGP sets out the application is opposed on the basis of:

    a)Lack of novelty;

    b)Lack of an inventive step;

    c)Non-compliance with the requirements for clear enough and complete enough disclosure (S 40(2)(a)), lack of best method (S 40(2)(aa)) and lack of clarity and support for the claims (S 40(3)); and

    d)Lack of manner of manufacture.

11. At the hearing, the opponent narrowed its case to:

    a)Lack of novelty;

    b)Lack of an inventive step;

    c)Non-compliance with the requirements for clear enough and complete enough disclosure (S 40(2)(a)), and lack of support for the claims (S 40(3));

    Principles of construction

12. The principles underpinning construction are well-established.  As noted by Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd:

    “It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense.  The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent.  From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[30]

    [30] [2013] FCA 214; 100 IPR 451 at [139].

13. The task of construing the specification is undertaken from the viewpoint of a PSA and the prevailing CGK at the priority date.  As already noted earlier, the PSA is a hypothetical non-inventive person or team likely to have a practical interest in the subject matter of the invention.

14. The Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc.[31] recently reiterated the principle that experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on any unusual or special meanings that would be given by skilled addressees to words which might otherwise bear their ordinary meaning, and 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.[32]  However, it is for the Court, not for any witness however expert, to construe the specification.[33]  A similar approach is taken in matters before the Commissioner.

    [31] [2023] FCAFC 7 at [48].

    [32] Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1 at [24].

    [33] Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1994] FCA 1529; (1994) 30 IPR 479 at [485]-[486].

15. In the present matter there were terms in the claims that should be clarified as they were, at first glance, unclear.  These were:

    (i)“operational cycle”;

    (ii)“detecting characteristics …, wherein the characteristics include detecting a beginning of an operational cycle and detecting … earthen material received”;

    (iii)“the transmitted information”; and

    (iv)“current operational cycle”

    “operational cycle”

16. Neither party engaged with what was covered by the scope of this term.  In the description the only cycle mentioned is a “digging cycle”.  As such, at first blush, an “operational cycle” could be taken as a reference to a digging cycle.  However, claim 3 states:

    “The system of claim 1 or 2 wherein the operational cycle is a digging cycle.”

17. Moreover, while claim 1 defines the system as seeking to “determine the duration for the current operational cycle”, claim 7 states:

    “The system … determines … a duration of the filling of the truck tray.”

18. These claims indicate that “operational cycle” is not limited to just a digging cycle.  Furthermore, given that it seemed to be agreed by the experts that:

    “A digging cycle is a type of operational cycle.  For a hydraulic excavator, this would take the form of the series of tasks ‘dig-swing-dump-return’”[34],

    and the “dump” part of this cycle is the filling of the truck tray, it also seems to be the case that an “operational cycle” could be referring to a part of another cycle.  All in all, it seems appropriate to take “operational cycle” as being inclusive of both individual process steps and overall processes taken for an earth working operation that include within them the individual process steps.

    “detecting characteristics …, wherein the characteristics include detecting a beginning of an operational cycle and detecting … earthen material received”

    [34] Hillier 2, NH-12, item 3

19. During the hearing I indicated that claim 1 seemed unclear to me because it required the detecting of characteristics, but then defined those characteristics as being “detecting a beginning of an operational cycle” and “detecting … earthen material received”.  I indicated that, upon a plain reading, the claim seemed to be saying that the system detected the detecting of a beginning of a cycle and/or detected the detecting of received material; that is, that the detection was a characteristic in and of itself rather than what I would call the “expected” position that the beginning was established based upon the detection of a characteristic.  I queried whether I could effectively read out both instances of the word “detecting” that occurred after “include”?

20. The applicant responded by noting that, while it was an interesting grammatical question, the case law emphasised the use of common sense and if I could give a common-sense meaning I should.  In their opinion, the second use of “detecting” simply made sure that there was no doubt that what was being detected was the beginning of a cycle and earthen material being received. 

21. To my mind, given both no confusion from the experts and no submission from the opponent, it seems that, properly understood in the context of an earth-working operation, this phrase would be readily understood if read in this common-sense way.  That is, whatever other characteristics that might be detected, the claims required the detection of the beginning of an operational cycle and (by line of sight) earthen material received.

    “the transmitted information”

22. Claim 1 requires that the system detects the beginning of an operational cycle and (by line of sight) earthen material received and transmits these characteristics as information.  The claim then specifies that a programmable logic device (PLD) “uses the transmitted information and fill profiles to determine the amount of earthen material received in the earth working equipment; and … uses the transmitted information to determine the duration for the current operational cycle.”  I queried at the hearing whether that required the PLD to use both pieces of information for each determination. 

23. Both the applicant and the opponent submitted that each determination only used the information that was relevant to the determination, and that the claim did not contemplate using all the transmitted information.  I am persuaded that this is a common-sense approach to place meaning on the claim, and I am reassured by the fact that this seems to be the approach of the experts.

    “current operational cycle”

24. The claim defines that, for each operational cycle, the beginning of that cycle is detected and this detection of a beginning is transmitted as information.  Consequently, the PLD uses this transmitted information to determine the duration for the current operational cycle.  No other information from the cycle is apparently used.  During the hearing I stated that “current operational cycle” seemed to be referring to the cycle that was occurring (but had not ended) at the time the detections were made.  I queried how the system could determine the duration of a current cycle before the cycle had ended?  If only the beginning point was used, I questioned how the system determined the length of a cycle with this?  The applicant submitted that “current” had various meanings and could be a reference to a cycle that had just been completed (i.e. the most current one that has occurred), or it could mean the duration up to the current point in time of the present cycle, thereby possibly allowing a user to monitor if they were going too slow.  To answer this, the applicant referred to the description where it was stated:

    “Programmable logic may determine the time from the start of one digging cycle to the start of the second digging cycle (i.e., time between peaks when inclinometer indicates that the bucket is at the appropriate digging orientation).  The results from the current cycle time and past cycle times may be communicated to the equipment operator or to a wireless device.  This allows the operator to adjust the digging operation for optimal performance.”[35]

    The applicant submitted that this passage indicated that, to allow the transmission of the information representing the time between inclinometer peaks, the correct interpretation of “current cycle” had to be the cycle that had literally just finished; otherwise, the information could not be referred to as “transmitted information”.

    [35] Specification at [51]

25. Be that as it may, this passage from the description clearly contemplates the use of information from other cycles.  The present claims do not seem to use information from other cycles.  As such, noting the specification and the words of the claim, I construe “current operational cycle” as referring to the operational cycle that began at the point in time that the beginning of the cycle was detected.

    Novelty

26. An invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of various kinds of prior art information.[36]  It is well established that the general test for anticipation is the reverse infringement test.  The classic formulation of this test is that given by Aickin J in Meyers Taylor v Vicarr Industries:

    “The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”[37]

    [36] Subsection 7(1) of the Act.

    [37] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at [235].

1. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed.[38]  To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented”.[39]  As noted in General Tire:

   “A signpost, however clear, upon the road to the patentee’s invention will not suffice.  The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”[40]

   [38] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at [549].

   [39] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 (“General Tire”) at [486].

   [40] Ibid.

2. The opponent also drew my attention to three further principles:

   “First, a relevant disclosure ‘may often … be implicit’ – this requires consideration of whether a claimed feature is ‘revealed to the person skilled in the art, implicitly, by the disclosure itself, based on that person’s understanding of the disclosure’.  Second, where the prior art discloses some, but not all, of the relevant integers, there will be anticipation ‘if the skilled addressee would add the missing information as a matter of course’.  Finally, for the purpose of anticipation, ‘the prior art merely need[s] to disclose, not teach, the invention’.”[41] (italics in original, footnotes omitted)

   [41] Opponent’s written submissions at [34]

3. In their submissions, the opponent stated that claims 1–3, 5–8, 11 and 12 were not novel in light of:

   (i)US 7,832,126 (D6)

   (ii)US 2013/0190966 (D8)

   (iii)AU 2005227398 (D9)

   US 7832126 – D6

4. D6 is directed to a system having a “bucket excavation controller”[42] which “can be adapted to control one or more digging functions of a mining excavator.”[43]  D6 speaks of automatic operator aides that allow operators to improve machine productivity and/or achieve desirable cycle times of an excavator.  D6 also mentions scanning an opening of the bucket and determining the volume of material inside the bucket.  In this regard, the opponent pointed to figure 10 of D6 which carries the words “Wireless Sensor mounted on handle detects bucket fill”.

   [42] D6 at col 1 line 29

   [43] Ibid at col 2 lines 8–9

5. The overall system of D6 is shown in figure 2:

6. In the system 2000 the mining excavator 2100 has several sensors 2200, 2225, and/or 2250 which could be measuring pressure, temperature, flow, mass, heat, light, sound, humidity, proximity, position, velocity, vibration, voltage, current, torque, capacitance, resistance, inductance, and/or electromagnetic radiation, etc.  The sensors 2200, 2225, and/or 2250 can be communicatively coupled to an information device 2300 in the mining excavator 2100, via a wired network interface, and/or a wireless transceiver 2400.  The information device 2300 has a user interface 2350 and a program 2325, along with a bucket excavation controller 2310, a material weight processor 2320, a mining haulage vehicle position processor 2330 and a mining haulage vehicle load processor 2340.  The information device 2300 is said to be “communicatively coupled to a memory device adapted to store programs and/or information related to machine 2100”.[44] 

   [44] Ibid at col 6 lines 26–28

7. The system 2000 is wirelessly coupled to a network 2600 which couples to other information devices.  One of those devices is a server 2700, which has a memory device 2750 that stores information regarding the mining excavator 2100 such as operation and/or maintenance of the mining excavator 2100, as well as information from the sensors 2200, 2225, and/or 2250.  Another coupled device could be an information device 2800, having a mining excavation simulator 2860 and a user interface 2880.  D6 notes that the simulator, in response to various detected conditions of a simulated mining excavator, automatically controls the simulated mining excavator.  D6 also notes that the simulator 2860 could be used to train an operator of a mining excavator to improve their performance on an actual mining excavator.

8. The applicant maintained that D6 did not disclose two features of claim 1:

   (i)a database of established fill profiles; and

   (ii)a human machine interface (HMI) providing the determinations to an operator of the earth working equipment to allow for adjustment of the earth working operation.

   database of established fill profiles

   Opponent’s submissions

9. The opponent submitted that D6 disclosed this feature at lines 26‑28 of column 6 where it stated:

   “Information device 2300 can be communicatively coupled to a memory device adapted to store programs and/or information related to machine 2100.”

10. The opponent submitted that, as the system was monitoring fill, it was implicit that the system would store fill profiles as, in the opponent’s view, this was key “information related to the machine”, and those words in D6 were broad enough to encompass a database to fill profiles.  The opponent pointed to the evidence of Dr Hillier where he stated:

    “Column 8 lines 36-39 states: “Certain exemplary embodiments can determine whether certain ‘bucket filling marks’ inside the bucket are covered or not.  Filling marks can be used to provide an estimate of a volume of earthen material in the bucket.”

    The material receptacle for earth moving equipment tends to fill in a heaped manner, with an angle of repose for the material.  This tendency means that there needs to be some relationship between any fill-marks or fill measurements that do not capture a 3D surface in order to account for this material heaping effect.

    D6 does not describe how this heaping is accounted for, but the system must encode some relationship between the fill marks and volume of material in the bucket to enable the use of fill marks to provide an estimate of a volume of earthen material in the bucket.  One method would be the use of a database as described at this integer.  Another method could be through an empirical relationship (e.g., a linear extrapolation based on the angle of repose).”[45]

    [45] Hillier 2, NH-14 at item 1(iv) (italics in original)

    Applicant’s submissions

11. The applicant submitted that the reference at lines 26‑28 of column 6 in D6 to “programs and/or information related to machine 2100” was a reference to information relating to the machine itself, or programs related to the machine, rather than information relating to bucket or truck fill of particular buckets or trucks.  The applicant noted that no expert had said that fill profiles were required to monitor fill, or that the disclosure of measuring fill meant a fill profile database was inherent.  They noted that Mr Holland had said that:

    “the functionality of being able to compare the actual earthen material to a database as described in the Opposed Application adds additional functionality not described in [D6].”[46]

    [46] Holland at [10.41]

12. Noting that Dr Hillier had not referred to the same passage in D6 as the opponent had, the applicant submitted that, nevertheless, Dr Hillier’s evidence that “the system must encode some relationship between the fill marks and volume of material in the bucket” went no higher than setting out two possible ways to do this (i.e. a database, or an empirical relationship) and did not explain why, if D6 was using a metric of whether filling marks are covered or not, why a fill profile was needed.

13. The applicant noted that Dr Hillier had stated that the earth moving equipment’s receptacle tended to fill in a heaped manner, and that this tendency meant that there needed to be some relationship between any fill marks or measurements (which did not capture a 3D surface) to account for this material heaping effect.  The applicant submitted that what was happening in D6 was an identification of fill marks inside the bucket, and not a sensor directed to the earthen material.  They stated that Dr Hillier, having identified the passage at column 8, went on to state that the difficulty with this identification was that the material could have a heaping, and that D6 did not describe how this heaping was accounted for.  The applicant submitted that D6 did not mention heaping at all and submitted that Dr Hillier had identified a problem which had not been identified in D6.  The applicant submitted that the fill marks in D6 were consistent with what was described as a particular volume, and fill profile was not mentioned in D6.

    Consideration

14. There is no effective disclosure of a database of fill profiles in D6.  While I accept the opponent’s point that a disclosure may be implicit, the evidence does not establish that such a database of fill profiles is necessarily present.  As noted by the applicant, whatever heaping of the material is present in the excavator of the system of D6, there is no mention of heaping.  In that circumstance, it is difficult to see why the PSA would seek to use a database to account for it.  There is no “hook” to hang the database feature on.  Moreover, even if it is assumed that heaping had to be accounted for, Dr Hillier’s evidence sets out two options.  Furthermore, in addition to the options as set out by Dr Hillier, and purely as an intellectual exercise, another way to encode the relationship between the fill marks and volume of material could be to place the markings on the bucket to correspond with expected fill profiles.  This would mean the determination would not require further reference to a database of fill profiles, the system could just read the markings that have already “encoded” that information.

15. In this respect, I am cognisant of the words in General Tire:

    “If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness.”

16. As such, I agree with the applicant. 

    HMI providing the determinations to an operator to allow for adjustment

    Opponent’s submissions

17. The opponent set out in their written submissions that D6 discloses an HMI, being the “user interface 2880”.  They submitted that, given the goal of the system of D6 was to increase productivity, the purpose of such an interface would be to allow real time determinations to be visible to the operator so that they could make adjustments to the earth working operation.  At the hearing, the opponent highlighted various references to the operator of the excavating equipment undertaking operations in response to prompts.  They noted column 2 which discussed:

    “automatic operator aides, which can make operation easier, more predictable, and/or allow less skilled mining excavator operators to improve relative machine productivity. … [and] automatic aides that help the operator of the mining excavator to achieve relatively desirable duty cycle times and/or increase productivity in relative terms”[47],

    [47] D6, column 2 lines 12–18

    column 3 which stated:

    “While the operator controls hoist motion, the crowd motion can be automatically modified to attempt to maintain the predetermined desired hoist speed while digging in the bank”[48],

    column 4 stating:

    “Based on possible trajectories the shovel bucket can take, a desired distance for crawlers of the mining excavator can be calculated and the operator can be automatically prompted to relocate the mining excavator to a desired location.

    …

    This method can provide a plurality of activities that can comprise providing a signal to the truck operator regarding how to move the mining haulage vehicle into a desired location for loading”[49],

    and column 18 disclosing:

    “user interface – a device and/or software program for rendering information to a user and/or requesting information from the user.  A user interface can include at least one of textual, graphical, audio, video, animation, and/or haptic elements … .”[50]

    [48] Ibid, column 3 lines 24–27

    [49] Ibid, column 4 lines 9–35

    [50] Ibid, column 18 lines 20–24

18. The opponent’s submissions were that the prompts to the operator come from the user interface, which was equated to the HMI of the claims, which then results in adjustment by the operator of the equipment.

    Applicant’s submissions

19. In the applicant’s opinion, there was no disclosure of an operator being able to adjust the earth working equipment on account of a determination through the HMI.  Responding to the opponent’s highlighting of various passages of D6, the applicant submitted that even reading these passages as saying that the operator still maintains control of, for example, hoist or crowd motion or the like was of no assistance, as there was nothing linking the display of cycle time or amount/volume of material in a bucket on the HMI to the operator then making a decision and adjusting what they did.  In the applicant’s opinion, as there was no clear enunciation of the type of information that was displayed on the HMI, it was just as likely that the information which was shown on the HMI had nothing to do with cycle times or volume, or, if it was, it did not enable the operator to make any changes.  That is, what was being displayed was just information as opposed to something allowing for operator adjustment, with the result that D6 disclosed an automatic system, where any feedback was fed to the system which automatically acted on that information. 

20. While the applicant noted the mention of operators improving productivity, they also noted that D6 discussed operators improving via operation of a simulation, which was not the claimed invention. 

    Consideration

21. Clearly the interface of D6 is an HMI.  It provides information related to the earth working equipment.  I do not agree with the applicant that D6 discloses a fully automatic system, and that the information provided on the HMI plays no part in adjustment being made to the earth working equipment.  Noting the passages highlighted by the opponent, D6 discloses an operator being prompted to control hoist motion, or relocate the equipment, in response to the determination that is provided by the interface.  These are clearly within the scope of “adjustments” as I have construed that term.

22. However, as noted by the applicant, D6 does not specify what determinations are displayed on its interface.  Certainly, D6 mentions duty cycles and increased productivity, but these do not necessarily “plant the flag” at D6 displaying determinations for the duration of the current cycle time or the amount of material received using a fill profile, as is claimed.

23. Consequently, I find that D6 does not disclose this feature.

    Conclusion

24. Claim 1 does not lack novelty in light of D6.  It follows that the dependent claims are novel in light of D6.

    US 2013/0190966 – D8

25. D8 is directed to system for monitoring a mining machine including by sensing the payload of the shovel and power consumption of the machine during a select time period in order to generate shovel efficiency data.  The overall system is shown in figure 2[51]:

    [51] I have taken figures from CA2803313, a family member of D8, as they are “cleaner”

26. D8 further elaborates on the monitoring system 300 in figure 3:

27. The system 200 has a controller 205 which receives input from operator controls 210 which it then sends to the dipper control 215 to operate various motors to control the mining machine.  The controller 205 is in communication with several sensors 220 which monitor the location and status of the machine’s shovel.  The user interface 225 provides information to the operator about the status of the mining machine using one or more of a display, illumination devices, a head-up display, speakers, or vibration devices.  The monitoring system 300 includes a monitoring module 305 (having a processor and memory), a power monitor 310, and a payload sensor 315.  The system senses power consumption of the machine and the material payload in the shovel, and computes shovel efficiency in terms of Tons/kWh.  The readings are processed by the monitoring system and the processed data can be output to the user interface 225 of the controller 205.  If the processed data indicates that there is an issue, the monitoring system 300 generates an alarm before proceeding to outputting the processed data.  D8 notes that, while the sensors of the monitoring system 300 are located on the mining machine, their measurements could be transmitted to a remote location via a network, and the shovel efficiency data could be calculated and displayed offsite.  The monitoring system 300 can track power consumption, payload and shovel efficiency data for a mining machine over time and generate graphs and tables. 

    Opponent’s submissions

28. The opponent relied upon its written submissions which, with respect to claim 1, was a table listing the relevant disclosures in D8 for the claim features as follows (italics and bolding match the original):

Integer	Claim feature	Exemplary disclosure in D8
1(i)	A system for monitoring earth working equipment, the system comprising:	[0004] “the invention provides a method for monitoring a mining machine”
1(ii)	Electronic sensors detecting characteristics of an earth working operation in each of a plurality of operation cycles and wirelessly transmitting such as information,	[0003] “a sensor sensing payload of the mining machine” [0031] “processed data 450 can further be broken down into specific aspects of a mining machine operation cycle (e.g, swing cycle, dig cycle, bank interaction, tuck cycle etc)” [0032] “in some embodiments, operator performance is one or more of average shovel dig cycle time”.  Such data could only be obtained with monitoring in each of a plurality of operation cycles. [0012] “electronic communications and notifications may be performed using any known means including direct connections, wireless connections, etc”.  Express reference to the wireless transmission of information is also provided at [0027].
1(iii)	wherein the characteristics include detecting a beginning of an operational cycle, and detecting by a line of sight earthen material received in the earth working equipment	[0032] discloses that calculations can be made based on “average shovel dig cycle time”.  Average shovel dig time can only be calculated if the system can detect a beginning of the digging cycle. D6 discloses the use of a payload sensor without further detail.  Dr Hillier’s evidence is that the skilled person was aware that a payload sensor could include a sensor operating using line of sight (Hillier 2 NH-16 integer 1(iii)).
1(iv)	a database of established fill profiles of a bucket and/or truck tray	[0023] “The monitoring system 300 includes a monitoring module 305, a power monitor 310 and a payload sensor 315.  The monitoring module 305 includes a processor and memory.  The processor executes instructions stored on the memory for analyzing and processing the received data from the power monitor 310 and payload sensor 315”.  In the context of a line of sight sensor measuring payload, this disclosure can be inferred to include a database (ie the memory) of established fill profiles from which the payload can be measured.
1(v)	A programmable logic device wherein the programmable logic device uses the transmitted information and fill profiles to determine the amount of earthen material received in the earth working equipment; and wherein the programmable logic device uses the transmitted information to determine the duration of the current operational cycle; and	The monitoring module (305) is a PLD. [0023] (as extracted above) discloses that the PLD receives transmitted information from the payload sensor.  In the context of a line of sight sensor, it is reasonable to infer that the PLD uses this information and the fill profiles to determine the payload. [0031] “processed data 450 can further be broken down into specific aspects of a mining machine operation cycle (e.g, swing cycle, dig cycle, bank interaction, tuck cycle etc)” [0032] “in some embodiments, operator performance is one or more of average shovel dig cycle time”.  Such data could only be obtained by the PLD using transmitted information to determine the duration of the current operation cycle.  Further, [0021] states “there are door latch sensors which, amongst other things, indicate whether the dipper door 145 is open or closed”.  Information from the door latch sensors can be transmitted to the PLD to determine the duration of the current operational cycle.
1(vi)	a human machine interface providing the determination for the current operational cycle to an operator of the earth working equipment during use to allow for adjustments of the earth working operation.	D8 discloses an HMI at [0022] which states “The user -interface 225 provides information to the operator about the status of the mining shovel 100.  The user-interface 225 includes one or more of the following: a display (e.g. a liquid crystal display (LCD)); one or more light emitting diodes (LEDs) or other illumination devices; a heads-up display … speakers for audible feedback (e.g. beeps, spoke messages etc.); tactile feedback devices such as vibration devices that cause vibration to the operator’s sweat or operator controls 210; or another feedback device.  Such feedback functionalities are necessarily provided to allow the operator to make adjustments to the earth working operation.

Applicant’s submissions

1. The applicant submitted that D8 did not disclose:

   (i)the use of a line of sight sensor to detect received earthen material;

   (ii)a database of established fill profiles; and

   (iii)a PLD that used the transmitted information and, where required, the fill profiles, to make the claimed determinations.

2. As to (i), the applicant submitted that D8 did not refer to measuring received earthen material, but only referred to measuring a payload, which was the weight of the excavated material.  They noted that Mr Holland had stated that:

   “[D8] only discusses determinations using weight which is typically measured using a load or strain sensor, neither of which measure by a line of sight.  If [D8] used a line of sight sensor then there would need to be discussion of the density of the earthen material before there could be conversion of the volume to a weight.”[52]

   [52] Holland at [10.46]

3. With regards to (ii), the applicant submitted that there would no use for such a database in D8 as it measured payload and there was no disclosure of a line of sight sensor in D8.  They noted that the memory disclosed in D8 stored “instructions … for analyzing and processing the received data from the power monitor 310 and payload sensor 315”[53] rather than storing information relating to fill.

   [53] D8 at [0023]

4. For (iii), the applicant noted that the table provided by the opponent (see above) stated for this point:

   “[0023] … [of D8] discloses that the PLD receives transmitted information from the payload sensor.  In the context of a line of sight sensor, it is reasonable to infer that the PLD uses this information and the fill profiles to determine the payload”.

   The applicant submitted that this statement required the acceptance of the existence in D8 of a line of sight sensor and a database of fill profiles, neither of which, in the applicant’s opinion, were disclosed in D8.

   line of sight sensor to detect received earthen material

5. There is no effective disclosure of a line of sight sensor.

6. The evidence relied upon by the opponent is the statement by Dr Hillier that:

   “D8 discloses payload sensors (see [0025] on page 3).  The document is written as though the payload sensor is an available component to the system, which I consider a fair approach given that there existed a number of publicly available methods for measuring payload on rope shovels at the Priority Date that could be used.  At the Priority Date, payload sensors could include some sensors which operate using a line of sight, for example, via volume measurement and conversion to weight via bulk density.”[54] (my emphasis)

   [54] Hillier 2 NH-16 at item 1(iii)

7. Dr Hillier does not point to any explicit reference in D8 of a line of sight sensor for determining payload.  His use of “could” makes this clear.  Furthermore, as Dr Hillier states, if a line of site sensor is to be used to determine payload, the sensor has to be used to measure a volume and that reading has to be multiplied by a bulk density value to determine a payload value.  Moreover, Mr Holland agrees with this (see [91] above).  D8 does not mention density at all. 

8. The opponent also agreed that there was no discussion in D8 of density.  However, they submitted that this did not, by itself, suggest that the skilled person would not be able to find information about the density of the earthen material such that a payload sensor using a line of sight could give a payload determination.  However, this, in my opinion, simply compounds the problem.  The opponent’s argument seems to be that the PSA could have selected a line of sight senor and could have found information about the density of the earthen material.  But novelty is not a “could have” situation.  At best, the disclosure in D8 might be said to be a “signpost … upon the road to the patentee’s invention” as per General Tire.

   database of established fill profiles

9. There is no effective disclosure of a database of established fill profiles.

10. The opponent’s case is that, if a line of sight sensor was used to measure payload, then a database of fill profiles would be used to determine the volume of earthen material in the equipment.  Be that as it may, as I do not believe that D8 discloses, implicitly or otherwise, a line of sight sensor, it follows that it cannot disclose, implicitly or otherwise, a database that would be required with a line of sight sensor.  As with D6, there is no “hook” to hang the database feature on.

    PLD making the claimed determinations

11. For exactly the same reasons, D8 does not disclose this feature.  Claim 1 requires the PLD to, inter alia, use the transmitted information, one of which was obtained using a line of sight sensor, and a database of fill profiles to determine the amount of earthen material received in the equipment.  As I have found that D8 discloses neither a line of sight sensor, nor a database of fill profiles, it cannot be said to disclose a PLD that functions in the way claimed.

    Conclusion

12. Claim 1 does not lack novelty in light of D8.  It follows that the dependent claims are novel in light of D8.

    AU 2005227398 – D9

13. D9 is directed to a method and apparatus for determining the load of a bucket by measuring the distance to the surface of material in the bucket and using the fixed geometry of the bucket.  The distance measuring apparatus of D9 is described generally as an “image ranger” which emits light signals in the spatial region to be measured and detects signals scattered back.  The distance measuring device could either scan the surface or be an array of sensors to measure line or surface profiles.

14. The system is shown in the figure of D9:

15. In the system, the distance sensor (i.e. image ranger), being a camera 3 having a certain field of view 12, is fixed to a holder 11 fixedly attached to the boom 6.  The bucket 2 is within the camera’s field of view 12.  The volume of the load is determined 13 from the position of the load surface and the position and shape of the bucket[55].  The position of the bucket is determined by measuring the distance to points of the upper bucket edge 2b.  The bucket can also have reflectors 2c to assist in this determination.  The distance values from the cameras can be transmitted by cable or wirelessly to a monitoring station for the mine area.  D9 also discloses that the same methodology can be applied to measuring the volume fill of a truck, or any other ‘holding region’[56].

    [55] D9 page 13 line 12-21.

    [56] Ibid page 11 line 28 to page 12 line 7

    Opponent’s submissions

16. The opponent, again, relied upon its written submissions, being another table listing the relevant disclosures in D9 for the claim features as follows (italics and bolding match original):

Integer	Claim feature	Exemplary disclosure in D9
1(i)	A system for monitoring earth working equipment, the system comprising:	D9 discloses a system for monitoring excavator buckets or other holding regions on earth working equipment
1(ii)	Electronic sensors detecting characteristics of an earth working operation in each of a plurality of operation cycles and wirelessly transmitting such as information,	See page 7 lines 16-17, “range imagers” or “image rangers” which operate as “distance measuring cameras” The object of the invention on page 3 line 24-27 is said to be to deliver information “in real time when handling material and without any need for interrupts”.  This necessarily requires a system in which the monitoring occurs over a plurality of cycles. Wireless transmission is disclosed on page 10 at line 30-31 which states that the “transmission of data is effective via a cable connection or via wireless link”.
1(iii)	wherein the characteristics include detecting a beginning of an operational cycle, and detecting by a line of sight earthen material received in the earth working equipment	Page 5 line 20-21 states that “bucket position can be measured by position determinations”.  Bucket position would give an indication of the beginning of an operational cycle (Hillier 2 NH-18 integer 1(iii)). Page 10 lines 12-21 state “In an evaluation step, a load volume is determined from the position of the load surface and the position and shape of the bucket 2 or of the holding region”.  This describes the use of a line of sight sensor to determine bucket fill.
1(iv)	a database of established fill profiles of a bucket and/or truck tray	Page 10 line 28 refers to “an evaluation control”, which would be capable of operating as a database to store fill profiles.  Further, page 4 line 16-19 provides that the volume of material filled can “be very accurately determined from the fixed geometry of the bucket interior and the surface of the material filled”.  This includes a system which works based on recognising the fill profile of the bucket and comparing that to known fill profiles stored in a database.
1(v)	A programmable logic device wherein the programmable logic device uses the transmitted information and fill profiles to determine the amount of earthen material received in the earth working equipment; and wherein the programmable logic device uses the transmitted information to determine the duration of the current operational cycle; and	The “evaluation control” disclosed on page 10, line 28 operates as a PLD (Hillier 2 NH-18 integer 1(v)). As above, the disclosure at page 4 line 16-19 suggests that fill profiles are used to determine the material in the holding region. Page 11 lines 6-8 provides “Of course a plurality of values determined on the basis of individual bucket loads can be used for statistical evaluations, in particular for mean value calculation”.  It can be reasonably inferred that such statistical evaluations are calculated from the PLD using various transmitted information, including to determine duration of each operational cycle.
1(vi)	a human machine interface providing the determination for the current operational cycle to an operator of the earth working equipment during use to allow for adjustments of the earth working operation.	Page 10 line 28-30 states “The evaluation control may be present in the excavator control or optionally at the monitoring station for the entire mining area”.  The excavator control or monitoring station each operate as HMIs to provide the determination in real time to enable adjustments of the earth working operation.  This is consistent with the object of the invention which is to “deliver more information on physical properties of the material and on production qualities, especially in real time when handling the material and without any need for interrupts” (page 3 lines 24-27).

Applicant’s submissions

1. The applicant submitted that D9 did not disclose:

   (i)a database of established fill profiles; and

   (ii)a PLD that used the transmitted information to determine cycle duration.

2. With regards to (i), the applicant noted that the opponent’s table referred to “an evaluation control” which “would be capable of operating as a database to store fill profiles.”  They submitted that something being capable of doing something does not mean that it does.  They noted Mr Holland’s evidence where he states:

   “There is no discussion in [D9] of the use of a database of established fill profiles being used to determine the amount of earthen material in a bucket or truck tray as required in claim 1 … [D9] only gathers information about the current surface or volume of material in the bucket or holding region.  There is no reference to characterisation of the fill profile of the material in the bucket or holding region.”[57]

   [57] Holland at [10.53]

3. The applicant further noted that the opponent drew attention to page 4, lines 16–19 of D9 which stated:

   “After the filling of a bucket, the volume of the material filled can be very accurately determined from the fixed geometry of the bucket interior and the surface of the material filled”,

   and had said in their table that this suggested the use of fill profiles to determine the amount of material in the bucket.  The applicant submitted that there was no support for this conclusion and that the opponent seemed to be suggesting a possible way to implement this feature of D9; however, possibilities were not the test for novelty.  The applicant also noted that Dr Hillier had provided no comment on this feature.

4. For (ii), the applicant noted that the table provided by the opponent (see above) stated for this point:

   “Page 11 lines 6-8 provides “Of course a plurality of values determined on the basis of individual bucket loads can be used for statistical evaluations, in particular for mean value calculation”.  It can be reasonably inferred that such statistical evaluations are calculated from the PLD using various transmitted information, including to determine duration of each operational cycle”,

   but submitted that D9 determined load and did not disclose any timing element that would allow calculation of cycle.  The applicant submitted that, while there might be a disclosure of determining individual bucket loads, that was not a disclosure of transmitted information which could be used by a PLD to determine the duration of an operational cycle.

   database of established fill profiles

5. There is no effective disclosure of a database of established fill profiles in D9.

6. As I understand it, the opponent’s case is that (i) D9 determines information about load volume from the position of the load surface, as stated by Mr Holland (see [107] above), (ii) “load surface” means that D9 determines the fill profile of the load and, (iii) to calculate the load volume from this measurement, the system of D9 must use a database of fill profiles, even though there is no explicit reference such a database in D9.

7. However, the use of such a database is not a given.  As noted by the applicant, D9 states:

   “In a second inventive step, it was recognized that a measuring method should be used which directly determines the respective filling volume of a holding region, in particular of an excavator bucket.”[58] (my emphasis)

   [58] D9 at page 4 lines 14–16

8. Then, as noted in the passage at [108] above (which follows immediately on from this passage), this determination uses “the fixed geometry of the bucket interior and the surface of the material filled”. As such, the volume determination is more or less an “area of the base times the height” calculation, which would not need to involve a fill profile database.

9. In my opinion, as was the case with D8, the disclosure of D9 might be said, at best, to be a “signpost … upon the road to the patentee’s invention” as per General Tire. 

   PLD determining cycle times

10. D9 does not disclose this feature.

11. I take the opponent’s point that mean calculations for bucket load requires a way to distinguish between individual bucket loads, however, I fail to see how this brings in any determination of a cycle duration.  As pointed out by the applicant, D9 is about calculating load.  There is no disclosure of calculating of how long it takes for a bucket to gather a load.  This is consistent with the objects of the invention set out in D9 which are to provide a solution which measures the load of the bucket and/or production quantities.  Cycle time is simply not contemplated.

    Conclusion

12. Claim 1 does not lack novelty in light of D9.  It follows that the dependent claims are novel in light of D9.

    Conclusion – novelty

13. The opponent has not established its case.  On the evidence before me, I cannot find any claims lack novelty.

    Inventive Step

14. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a PSA in light of the CGK (whether in or out of the patent area) before the priority date of the relevant claim when considered alone or together with the information mentioned in subsection 7(3). 

1. Subsection 7(3) defines the relevant information as:

The information for the purposes of subsection (2) is:

(a)any single piece of prior art information; or

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

1. The test for obviousness was stated by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd[59],and restated by in Aktiebolaget Hassle v Alphapharm Pty Ltd:

   “The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”[60]

[59] [1981] HCA 12; (1981) 148 CLR 262

[60] [2002] HCA 59; (2002) 212 CLR 411 at [50]

1. Nicholas J provided a succinct statement of principles relevant to assessing inventive step in Hood v Bush Pharmacy Pty Ltd:

   “Section 7(2) of the Act uses the word ‘obvious’ in the course of describing what must be established before an invention can be held not involve an inventive step. Something may be ‘obvious’ in light of the common general knowledge, or the common general knowledge coupled with the relevant s 7(3) information, if it is ‘plain or open to the eye or mind, something which is perfectly evident to the person thinking on the subject’ or something which ‘would at once occur to anyone acquainted with the subject and desirous of accomplishing the end’.

   An invention may also be obvious in light of the common general knowledge if the person skilled in the art faced with the same problem as the inventor would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not or (using the language of the ‘modified Cripps question’) if the person skilled in the art would be directly led as a matter of course to take such steps in the expectation that doing so might well produce a useful or better alternative to the prior art.  However, a claimed invention is not obvious merely because the person skilled in the art would consider that it was ‘worthwhile to try’.”[61]

   [61] [2020] FCA 1686 at [116]-[117] (citations omitted).

2. The opponent submitted that the claims lacked an inventive step in light of CGK only, or, in the alternative, in light of CGK when combined with the disclosure of any one of D6, D8 or D9.

   Problem

3. In their written submissions, neither the opponent nor the applicant put forward what they considered was the problem to be addressed by the invention.  As I noted above, the invention as claimed is based upon three paragraphs of the description and two figures, and these paragraphs do not have any nexus to what is discussed as the background to the invention.

4. These paragraphs and figures discuss providing a system to monitor parameters related to performance of an earth working machine, so as to allow an operator to adjust the machine’s operation to improve performance.  I also note the following statement from Mr Holland when discussing D6:

   “[D6] and the Opposed Application both address the productivity of earth working equipment.

   …

   [D6] thus has the problem of not achieving its goal of efficient use of the earth working equipment and fuel because fuel would be wasted if the bucket is only partially filled or in moving an overfilled bucket.”[62]

   [62] Holland at [10.41]–[10.42]

5. As such, it seems appropriate to proceed on the basis that the problem to be addressed is a system to monitor parameters related to performance of an earth working machine, so as to allow an operator to adjust the machine’s operation to improve performance.

6. I do note that Dr Hillier does not address this problem in his evidence for this opposition, so it is difficult to ascertain his view on the matter.  This would seem to create difficulties for the opponent.

   Common general knowledge (CGK)

7. CGK is the background knowledge and experience available to all those working in the relevant art:

   “The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”[63]

   [63] Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at 293.

1. The requirement for the claims to be supported by the technical contribution to the art includes within its ambit a requirement that the claims be enabled, in the sense understood under s40(2)(a), by subject matter in the description and drawings. This is due to the fact that a failure to do so would, in the parlance of Generics UK, result in the claim extending “…to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.” Hence a claim which is not supported due to it extending beyond the technical contribution to the art is not enabled across its full scope by the description, and therefore does not meet the requirements under s40(2)(a).

   Submissions

2. The opponent submitted that, for essentially the same reasons as those they put forward in respect of support, the claims did not comply with s 40(2)(a). The opponent submitted that there was no enabling disclosure of all things falling with the scope of these claims. The applicant submitted that the opponent’s case failed for the same reasons they had put forward under the ground of support.

   Consideration

3. I have found that the claims lack support due to a lack of enablement.  As such, the claims, prima facie, define an invention that fails under s40(2)(a). It may well be the case, as alluded to by the applicant, that CGK may have a role in determining a lack of disclosure. However, the evidence establishes that “ingenuity” is required to implement the claimed invention, which, by its very nature is not CGK. As such, to the extent that it is permitted, the addition of CGK does not overcome this finding.

4. I am of the opinion that the claims that lacked support also do not meet the requirements of section 40(2)(a). I will briefly discuss why for those points where I found the claims lack support.

   detecting bucket fill or truck fill using a line of sight sensor

5. As discussed, claim 1 goes no further than a line of sight sensor providing any type of line of sight data.  What is described in the specification is that the sensor provides data about the distance between the earthen material and the sensor, which is then processed in conjunction with established fill profiles to obtain fill level information.  The claim defines any line of sight sensor providing a (undefined) something which then is used in any manner with established fill profiles.  The description clearly does not enable everything within the scope of this claim.

   detecting truck fill duration was not fully explained

6. As is clear from my discussion for support, to the extent that there might be said to be a disclosure of determining duration of a digging cycle of a bucket, there is no analogous disclosure for determining the duration of filling a truck.  The disclosed method involves detecting orientation of the bucket (not the truck) and a spike in force as the bucket (not the truck) begins the digging cycle.  Clearly, a different method must need to be used to determine truck fill duration.  That method is not disclosed.  The description clearly does not enable everything within the scope of this claim.

   sensor located on a bucket or a truck tray in any manner, with no damage prevention or obscuration prevention

7. Given the distinct lack of detailed discussion in the specification, the reader is led to believe that there were apparently no challenges to mounting the sensor.  However, as is clear from the applicant’s evidence at least, there were challenges in mounting a sensor on a bucket (which went against conventional thinking) and, given that it exists in the same environment, a truck tray, and those challenges required ingenuity to meet them.  Arrangements that are “ingenious” cannot be things that are CGK.  In that situation, the specification must “fill in the gap”.  This is not the case with this specification.  The level of detail leaves a lot up to the PSA to achieve what is shown.  If CGK does not supply answers to questions that the PSA may have in achieving the desired outcome, it cannot be said that the process of finding the answer outside of CGK can be considered to be “routine experimentation”.  An invention cannot be fully enabled if all means of achieving something have been claimed when there is specific evidence that states that such an outcome was “not straightforward”, “would have been, and still is, challenging”, was not “achievable”, was “not routine”, and required “ingenuity” in overcoming the challenges that would arise in doing so.

   Conclusion – sufficiency

8. The specification does not provide an enabling disclosure for the invention defined by claims 1, 7, 9 and 10.  There is no clear enough and complete enough disclosure of detecting bucket and truck fill using any line of sight sensor producing any output which is combined in any manner with established fill profiles.  There is also no disclosure of determining the duration of truck fill at all; there is only broad disclosure of using specific types of sensors with respect to a bucket.  Furthermore, any attempt by the PSA to implement an arrangement of a sensor on a bucket and/or truck as claimed would require more than routine experimentation to achieve.

9. As with support, none of the remaining dependent claims appear to define the invention in such a manner as to meet the requirements of section 40(2)(a).

   Subsection 60(3) – lack of clear enough and complete enough disclosure

10. While writing this decision, I developed concerns that reasons advanced by the opponent for lack of enablement of claims 9 and 10 could apply equally to claims not referred to by the opponent. On 17 May 2024 I exercised my power under section 60(3) of the Act to take into account grounds of opposition not relied upon by the opponent in their SGP. I invited the parties to provide comment in regard to non-compliance with Section 40(2)(a).

11. While only claims 9 and 10 of the present application explicitly defined an attachment point for the sensors with no further constraints, given the dependent nature of these claims it must be the case that the finding I make for s40(2)(a) should be made for the claims of the present application that do not constrain the manner of attachment and/or protection of the sensors to the earth working equipment. This is all claims.  In my invitation I noted that, as it presently stands, I could not see any reason why such a finding could not be made.

    Consideration

12. In response, the applicant stated that they did not agree with the comments in my invitation.  Nevertheless, the applicant stated that they had decided “for commercial reasons” to not provide any further submissions.  As such, there was no need for submissions from the opponent. 

13. While not seeking to characterise the applicant’s position as a concession, it would appear to me that the applicant does not wish to argue with my opinion.  In such circumstances, I do not have persuasive refutations to my stance.  As such, absent any definition of features which constrain the manner of attachment and/or protection of the sensors to the earth working equipment, the claims include within their scope mounting arrangements that have not been enabled.

14. As none of the claims include such features, claims 1–12 are not fully enabled over their whole scope.

    Section 60(3) – lack of utility

15. In my invitation of 17 May 2024, I relied upon reasoning that had been set out in my previous decision in relation to related application 2018201710 to suggest that the claims were not useful.  To my mind, the claimed invention did not attain the promised benefits of the specification.

    Utility – legal principles

16. Section 18(1)(c) requires a claimed invention to be “useful”.  The meaning of “useful” is found in section 7A, which was introduced with the Raising the Bar Act.  Section 7A defines the meaning of “useful” as follows:

    “(1)For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.

    (2)The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.

    (3)Subsection (1) does not otherwise affect the meaning of the word useful in this Act.”

17. Noting section 7A(3) the insertion of section 7A added the specific, substantial and credible use criteria to the existing case law on utility, rather than displacing it.  This is explicitly stated in the Explanatory Memorandum to the Raising the Bar Act:

    “The specific, substantial and credible use test is not intended to displace the existing Australian case law on usefulness.  An invention must have both a specific, substantial and credible use that is disclosed in the patent specification and meet the requirements of the existing case law (broadly that the invention must achieve the promised benefit).

    …

    The item bolsters the existing requirement that the claimed invention be useful with the requirement that the invention has a specific, substantial and credible use.  The intent is that specific, substantial and credible be given the same meaning as is currently given by the US courts and the United States Patent and Trade Mark Office (USPTO).

    Currently, the US courts interpret the terms as follows:

    ·     ‘specific’ means a use specific to the subject matter claimed and can ‘provide a well-defined and particular benefit to the public.’

    ·     ‘substantial’ means the claimed invention does not require further research to identify or reasonably confirm a ‘real world use’. ‘An application must show that an invention is useful to the public as disclosed in its current form, not that it prove useful at some future date after further research’

    ·     an asserted use will be ‘credible’ ‘unless there is evidence that the invention is inoperative (i.e. does not operate to produce the results claimed by the patent application) or there is reason to doubt the objective truth of the statements in the specification.’” (At pages 44 to 45, emphasis in original, footnotes removed)

18. Turing to the case law, in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd, Greenwood J said (with the assent of Rares J):

    “The ‘basic principle’ of inutility is that if an invention ‘does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention’: Fawcett v Homan (1896) 13 RPC 398, Lindley LJ at 405, adopted by Gummow J as a correct statement of principle in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162; (1988) 81 ALR 79 at 96 (‘Rehm’).  What the invention is ‘intended’ to do is a matter to be gathered from ‘title and the whole of the specification’: Rehm, Gummow J at 96.

    Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 394 (‘Décor v Dart’), Lockhart J (in the Full Court); Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110 at 144 [160], Heerey J; H Lundbeck A/S v Alphapharm Pty Ltd … [2009] FCAFC 70; (2009) 177 FCR 151 at 198 [217] (‘Lundbeck’), Bennett J; Ranbaxy Australia Pty Ltd v Warner-Lanbert Co LLC [2008] FCAFC 82; (2008) 77 IPR 449 at 479 [141], Emmett, Weinberg and Bennett JJ. Further, ‘everything’ that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee: Lundbeck at 172 [81], Emmett J.”[128] (my emphasis)

    [128] [2016] FCAFC 29 at [120]-[121]

    The promised benefit

19. In my invitation I noted that the descriptions for 2018201710 and the present application were identical, and the claims of the present application were, like the claims of 2018201710, directed to a monitoring system.  It seemed clear to me that the promises of the invention of the present application were similar to, but not the same as, 2018201710.  

    In my opinion, the promises of the present application include:

    ·Monitoring performance of earth working equipment by:

    oA monitoring system having a line-of-sight sensor which detects material received in the earth working equipment and;

    oThe same monitoring system also having a sensor to detect the beginning of an operational cycle;

    ·Improved performance of the earth working equipment via the supply of timely indications to allow the operator to adapt how they dig to optimally fill the bucket and truck body; and

    ·Optimisation of earth working operations.

    Does the invention deliver the benefit?

20. To the extent that the claims include within their scope an arrangement where the sensors used are mounted on buckets and truck trays, it seems that there are elements of durability and operational frequency which have to also be considered.  The promise of optimisation of earth working operations implies that the system has to monitor frequently enough, and preferably continuously, to allow for these optimisation efforts to be monitored and assessed.  Given that earth working equipment will be used for up to and including a full work shift, it follows that the monitoring system has to be robust enough to operate without interruption throughout at least a full work shift.

21. Similarly, the promise of providing timely indications to allow the operator to adapt how they dig to optimally fill the bucket and truck body implies that the monitoring system has to be robust enough to allow the operator to operate optimally.  To allow for any meaningful optimisation of efforts, and maintenance of such optimal working, it is logical to assume that the system is being used to allow the operator to always work in the best way at all times.  As such, the time period the system must remain operational is clearly going to be the operator’s work shift. 

22. I note that Mr Holland states:

    “Another consideration would be the working environment.  I would want to understand whether the equipment (and therefore the monitoring system) would be exposed to extreme temperatures (and whether they were very hot or very cold), what level of dust and fines the system would be exposed to, whether it was to be used underwater or in very dry environments and the level of uniformity in the digging environment (the material to be excavated).

    Ideally, any sensors used would be non-mechanical (so not reliant on moving parts which can get clogged up by fines).  They would also need to be attached securely, preferably with a welded base (so no need for screwed attachment) and potted (surrounded by electrical potting mixture) so they were not subject to excessive vibrations.  The sensors used would need to be tolerant to dirt.  Some kind of shielding would also be required to limit the risk of damage to the sensor.  If the sensor was to be away from the cab, systems that avoided wires would be needed as there is a high risk of them coming loose or breaking if subject to damage from the digging environment.

    …

    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.”[129] (my emphasis)

    [129] Holland at [10.3]

23. Dr Hillier stated:

    “In paragraphs 37 and 38 of my First '221 Declaration (reproduced in paragraph 18 above), I explained that attempting to locate the camera (or similar line-of-sight sensor) on the bucket itself or on a frame mounted to the bucket would have involved challenges, mainly because of the extreme environment in and around the bucket and the potential for damage to the sensor and/or its associated power and/or communication equipment, cables, and the like.  If a camera or other similar sensor were to have been mounted on the bucket itself, or on a frame mounted on the bucket, the hardware employed in the system would need to have been made robust in order to endure the extreme environment.”[130] (my emphasis)

    [130] Hillier 1 at [30]

24. This evidence indicates the high potential for damage and other factors to interfere with the operation of the monitoring system.  The evidence also notes that, in the harsh environment, “some kind of shielding would be required” or “the hardware employed in the system would need to have been made robust”.  Moreover, the sensor in the claims is one which uses line of sight in operation.  Excess dust or other debris obscuring these types of sensors would seem to impede their ability be able to function. 

25. It seems clear from the evidence that a system which included a sensor which is protected and has features that address issues of excess dust or debris (when needed) would satisfy the above promises.  It also seems clear from the evidence that, when a system has no form of protection or obscuration prevention (for line of sight sensors), it is more likely than not that sensor damage or obstruction will occur within a relatively short time interval and the monitoring system will be rendered non-functional.  The harsh, extreme environment noted by the experts strongly indicates that this time frame would be less than the operator’s work shift.  It follows that, without defining attachment and protective arrangements for sensors, the claims will encompass arrangements that will not meet the promises of the invention, and will lack utility. 

    Consideration

26. In response the applicant (again) stated that they did not agree with the comments in my invitation, but had, “for commercial reasons”, decided to not provide any further submissions.  As such, there was no need for submissions from the opponent. 

27. As have already stated at [277] above, I am left in a position where I do not have persuasive refutations to my stance. As such, the claims encompass arrangements that will not meet the promises of the invention.

28. It follows that independent claim 1 lacks utility.  The dependent claims do not add any features which would ensure that the promise is met.  The invention of claims 1–12 lacks utility.

    Conclusion

29. The opposition is successful. Claims 1–12 lack support. By not corresponding to the described technical contribution of detecting distance between the electronic sensor and the earthen material, the claim extends to material that owes nothing to the disclosure. Additionally, a different method to the one described would be required to determine the duration of truck fill. Moreover, the claims define a materially different invention. Furthermore, it would be an undue burden on the PSA to devise a means of securing the sensors to the bucket and truck tray so as to maintain integrity in the harsh environment. Claims 1–12 do not comply with section 40(2)(a) as there is no clear enough and complete enough disclosure of the claimed invention. Furthermore, the claimed invention of claims 1–12 lacks utility.

30. It is not entirely clear to me whether these matters can be overcome by amendment. Nevertheless, and noting that some of my findings arise as a result of subsection 60(3), I will allow the applicant three (3) months from the date of this decision to propose suitable amendments.

    Costs

31. The normal approach is that costs should follow the event.  I see no sufficient reason to depart from this approach for this matter.  Accordingly, I award costs in accordance with Schedule 8 against the applicant, ESCO Group LLC.

    Greg Powell

    Delegate of the Commissioner of Patents

    Annex

    1.        A system for monitoring an earth working equipment, the system comprising:

    electronic sensors detecting characteristics of an earth working operation in each of a plurality of operational cycles and wirelessly transmitting such as information, wherein the characteristics include detecting a beginning of an operational cycle and detecting by a line of sight earthen material received in the earth working equipment;

    a database of established fill profiles of a bucket and/or a truck tray;

    a programmable logic device, wherein the programmable logic device uses the transmitted information and fill profiles to determine the amount of earthen material received in the earth working equipment; and wherein the programmable logic device uses the transmitted information to determine the duration for the current operational cycle; and

    a human machine interface providing the determinations for the current operation cycle to an operator of the earth working equipment during use to allow for adjustment of the earth working operation.

    2.        The system of claim 1 wherein the programmable logic device determines the amount of earthen material gathered in a bucket secured to the earth working equipment.

    3.        The system of claim 1 or 2 wherein the operational cycle is a digging cycle.

    4.        The system of claim 3 wherein the programmable logic device determines the percentage of the bucket that is filled during each digging cycle.

    5.        The system of claim 3 or 4 wherein the programmable logic device determines the volume of earthen material gathered in the bucket during each digging cycle.

    6.        The system of any one of claims 2 to 5 wherein at least one of the electronic sensors detects a distance between the respective one of the electronic sensors and the earthen material in the bucket along the line of sight, and the programmable logic device uses the distance and the fill profiles to make the determination of the amount of material in the bucket.

    7.        The system of claim 1 wherein the programmable logic device determines the amount of earthen material gathered in a truck tray, and a duration of the filling of the truck tray.

    8.The system of claim 7 wherein the adjustment of the earth working operation includes adjusting the filling of the truck tray.

    9.        The system of claim 1 wherein the electronic sensors include a first electronic sensor secured to a bucket and a second electronic sensor secured to a truck tray, and the programmable logic device determines an amount of material received in the bucket and the truck tray.

    10.      The system of claim 7 or 8 wherein the at least one of the electronic sensors is secured to the truck tray.

    11.      The system of any of claims 7, 8 or 10 wherein at least one of the electronic sensors detects a distance between the respective one electronic sensor and the earthen material in the truck tray along the line of sight, and the programmable logic device uses the distance and the fill profiles to make the determination of the amount of material received in the truck tray.

    12.      The system of any one of claims 1 to 11 further comprising a database to store the transmitted information for each of the operational cycles.