CQMS Pty Ltd v ESCO Group LLC - [2024] APO 29

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2024] APO 29
Patent Application: 2018201726

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Dr David Carberry

Decision Date: 28 June 2024

Hearing Date: 27 September 2023, by Video Conference
Further submissions filed 01 December 2023, 22 December 2023, and 12 January 2024

Catchwords: PATENTS – opposition to the grant of the patent under s 59 – regulation 5.23 – information provided by the opponent not considered – inventive step – claims have an inventive step with respect to evidence filed – lack of clarity – claims are clear – lack of support – claims contain subject matter not supported by the specification –– lack of complete enough disclosure – claims contain subject matter not disclosed by the specification – subsection 60(3) – lack of utility – whether claims meet promised benefit – whether omitted features may be added to the claims – omitted features are not part of common general knowledge – omitted features may not be added to the claim – promised benefit not met over whole scope of the claim – all claims lack utility – 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
Counsel for the opponent: Peter Creighton-Selvay and Amy Surkis
Patent attorney for the opponent: Alexia Mayer of James & Wells Intellectual Property

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018201726

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 28 June 2024

DECISION
The opposition is successful. Claims 11-13 and 15 lack support. These claims include sensors that are not supported by the specification. Claims 11-13 and 15 do not comply with section 40(2)(a) as there is not a clear enough and complete enough disclosure of the claimed invention. Claims 1-15 lacks utility as they do not have all the features necessary to ensure that the promise of the invention is met. All other grounds of opposition fail.
The applicant is given three (3) months from the date of this decision to file amendments that would overcome the adverse finding.
Costs awarded against the applicant, ESCO Group LLC.
REASONS FOR DECISION
Background

Australian patent application 2018201726 (the application) in the name of ESCO Corporation (the Applicant) was filed on 9 March 2018 as a divisional of Australian application 2014262221 (the parent application). The application ultimately has a priority date of 25 November 2013.
A request for examination was made on 9 March 2018. The application was accepted on 13 January 2020 and acceptance was advertised on 30 January 2020.
A Notice of Opposition was filed on 30 April 2020 by CQMS Pty Ltd (the Opponent). A Statement of Grounds and Particulars (SGP) was filed on 30 July 2020. Evidence in Support (EIS) was filed on 01 February 2021 following an extension due to the COVID pandemic. Evidence in Answer…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] APO 29
Decision Date: 28 June 2024

CaseChat Overview and Summary

The Australian Patent Office dealt with an opposition to Australian patent application 2018201726 in CQMS Pty Ltd v ESCO Group LLC [2024] APO 29. The Applicant, ESCO Group LLC, filed the application on 9 March 2018 as a divisional of Australian application 2014262221. The application has a priority date of 25 November 2013. The application was accepted on 13 January 2020 and advertised on 30 January 2020. The Opponent, CQMS Pty Ltd, filed a Notice of Opposition on 30 April 2020. The Applicant was given three months from the date of the decision to file amendments that would overcome the adverse findings. Costs were awarded against the Applicant. The invention relates to a system for monitoring earth working equipment, including a bucket secured to the earth working equipment, a ground-engaging wear part secured to the bucket, at least one electronic sensor secured to the bucket for detecting wear in the wear part and whether the wear part has detached from the bucket, and wirelessly transmitting such information, a remote device for receiving the transmitted information, and a programmable logic device using the transmitted information to cause an alert to be given when the wear part has detached from the bucket and/or when a degree of wear reaches a predetermined amount. The Opponent argued that the application was opposed on the basis of lack of novelty, lack of an inventive step, non-compliance with the requirements for clear enough and complete enough disclosure, lack of best method, and lack of manner of manufacture. The Opponent narrowed their case in the oral submissions to lack of an inventive step and non-compliance with the requirements for clear enough and complete enough disclosure, lack of best method, and lack of manner of manufacture. The decision found that the opposition was successful. Claims 11-13 and 15 lacked support as they included types of sensors within the scope that were not supported by matter in the specification. For the same reasons, claims 11-13 and 15 did not comply with section 40(2)(a). The invention of claims 1-15 also lacked utility as the promised benefit was not met over the entire scope of the claims. The specification contained content which could potentially form the basis for an allowable amendment to overcome these findings. The Applicant was given three months to propose suitable amendments to overcome these findings.

Orders